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European Patent Attorneys • Chartered Patent Attorneys • Trade Mark Attorneys

Make Your Mark

Issue No.32

Autumn 2013

INTRODUCTION

EUROPEAN PERSPECTIVES

INTERPRETING BAD FAITH

Resolving Brand Disputes on the Fast Track

S

treamlined procedures are enjoying a new and rather vibrant lease of life on the English legal scene. The launch of simplified procedures in the Patents County Court (PCC) in 2010 made it possible for parties of all sizes and means to enforce and defend IP rights cost-effectively and with limited costs exposure. Now, the PCC is moving up the ladder to the High Court, and the UK-IPO is stepping in with its own fasttrack trademark opposition procedure. The PCC’s promotion reflects its impressive success as a forum for resolving lower-value IP disputes since its new procedures were introduced in October 2010. On 1 October 2013 the PCC will be reconstituted as a new specialist list in the High Court with a new name, the Intellectual Property Enterprise Court (IPEC), that more properly reflects its ability to hear all types of IP disputes. This long-awaited change in status puts the court at last on an equal footing to the rest of the High Court and resolves minor jurisdictional problems that had arisen from its former status as a county court. The cost benefits and procedures that have made the PCC so attractive remain essentially unchanged, and the IPEC’s launch marks a welcome new phase in making the enforcement and defence of IP rights possible for smaller and mediumsized entities, in particular.

iN THIS ISSUE European Perspectives Interpreting Bad Faith - A Pan European Concept?

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How to bag a CTM registration

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It’s the facts, stupid

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NEWS Snippets

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W

hat should a trade mark owner do if he believes a third party knowingly has applied for an identical trade mark to his own mark in an EU member state where he does not have any earlier rights? Should the trade mark owner assert that the application filed by the third party was made in ‘bad faith’ and thereby apply to cancel the mark? As set out in Malaysia Dairy Industries Pte Ltd v Ankenævent for Patenter og Varemærker (Case 320/12), it is not necessarily that simple. Background Yakult is a probiotic dairy product made by fermenting skimmed milk with a strain of Lactobacillus casei. The product was developed by a Japanese scientist Minoru Shirota in the 1930s. The name is said to be derived from an old Turkish word for yoghurt. After initially selling the Yakult product in Japan and Taiwan, the Japanese producer began retailing the drink more widely in the 1960s. During that expansion, the packaging for the product was changed from a glass bottle to a distinctively shaped plastic bottle (see page 2). This novel packaging was protected by design rights in Japan in 1965 and was subsequently registered as a trade mark in a number of other countries, including some member states of the EU. In 1977, a Malaysian company, Malaysian

Dairy Industries, began selling a competing fermented milk drink under the trade mark Vitagen. This competing product was sold in a plastic bottle that was strangely reminiscent of the Yakult bottle, see page 2. In 1993, Yakult and Malaysia Dairy entered into an agreement which purported to set out their rights and obligations in relation to the registration and use of their respective bottles. If they thought that this was the end of the matter, it wasn’t. In 1995, Malaysia Dairy applied to protect its bottle shape as a 3D mark in Denmark. This application proceeded to registration in 2000. However, under Danish trade mark practice, opposition takes place after registration and Yakult duly opposed. The opposition was based on Section 15(3) (iii) of the Danish Trade Marks Act which states, “A trade mark is also excluded from registration if: …it is identical to or differs only insubstantially from a trade mark which at the time of the application, or as the case may be the time of priority claimed in support of the application, has been brought into use abroad and is still used there for goods or services of the same or similar kind as those for which the later mark is sought to be registered, and at the time of the application the applicant knew or should have known of the foreign mark”. Continued overleaf

UK COURT DIARY “Fine” vs “Fine & Country” - how close is too close? 18 OUT AND ABOUT

– A Pan European Concept?

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Introduction... continued The UK-IPO, too, has been looking for ways to make dispute resolution quicker and cheaper for parties, and to that end has introduced a new fast-track trade mark opposition procedure. Effective from 1 October 2013, fast-track oppositions will allow earlier right owners to oppose new UK trade mark applications based on claims to identity or confusing similarity with up to three prior registered or pending marks. Hallmarks of the new procedure are its default preference for decisions based on written submissions, without evidence or a hearing. Fast-track oppositions are uncharted territory, however, and the UK-IPO’s procedure is much more restrictive than the streamlined procedures applied by the former PCC and the new IPEC. Procedural questions are likely to abound. Moreover, while a fast-track opposition may well suit an opponent with limited means, it is unclear how many applicants will be content to allow a case to be decided without the benefit of evidence or an oral hearing when an important new brand is at stake. Satellite disputes about the need for evidence and hearings, and all the concomitant costs arising from such ancillary disputes, are likely to arise. Parties with the means to pursue an ordinary opposition based on proportionate evidence and the benefit of an oral hearing before the decision-maker (an option ruefully unavailable in practice before OHIM) may not see much benefit in the fast-track, which some might see as unnecessarily hamstringing their options. Regardless of the take-up for fast-track oppositions, these reforms nonetheless reflect a welcome trend in the UK and Europe for proportionate, cost-effective procedures for resolving IP disputes. The availability of high-quality simplified procedures for use in appropriate cases encourages innovation, since smaller, less well-funded right owners will know that there is a means by which they can still enforce and defend their rights. Streamlined procedures will never be appropriate for all cases; “bet the farm” disputes and more complex matters may be better contested on normal procedures, whether in court or before the UK-IPO. However, the availability of proportionate alternatives for the right cases is unarguably sensible; when properly applied, they can mean that everyone wins.

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EUROPEAN PERSPECTIVES Interpreting Bad Faith.. continued This provision was derived from an optional part (Article 4(4)(g)) of the EU Trade Mark Harmonisation Directive (now 2008/95/EC). In 2005, the Danish Patent and Trade Mark Office rejected the opposition, finding that, since Malaysia Dairy owned an earlier (1980 dated) Malaysian trade mark registration for the same bottle shape, they had not acted in bad faith when filing their Danish trade mark application, even though they (Malaysia Dairy) knew about Yakult’s foreign use of their (Yakult’s) bottle shape. Yakult appealed to the Danish Appeal Board who annulled the original decision and cancelled Malaysia Dairy’s trade mark registration. In the Board’s view, Malaysia Dairy’s knowledge of Yakult’s foreign use was sufficient to establish their (Malaysia Dairy’s) bad faith. This decision was confirmed by the Maritime and Commercial Court. This led Malaysia Dairy to appeal still further in 2009, this time to the Danish Supreme Court. The Supreme Court sought guidance from the European Court of Justice. Essentially they asked the (European) Court to decide whether the Danish Patent and Trade Mark Office or the Danish Appeal Board had taken

the correct position on Section 15(3) (iii) and Article 4(4)(g). They also asked for guidance on the concept of bad faith under the Harmonisation Directive; should the concept be interpreted at a national level or was it an EU concept that must be interpreted uniformly throughout the EU? The Decision The Court began by confirming that a provision of EU trade mark law, such as Article 4(4)(g) of the Directive, should be interpreted uniformly throughout the EU, and not separately (and differently) at national level. The Court then ruled that the mere fact that Malaysia Dairy knew of Yakult’s use of a similar 3D mark outside Denmark, when they filed their Danish trade mark application for their bottle shape, did not, in itself, show that the (Danish) application was made in bad faith. When considering the issue, it was necessary to take into account all of the relevant factors specific to the case, presumably including, although not stated by the European Court, the fact that Malaysia Dairy had registered their bottle shape (in Malaysia) in 1980 and had been using it since 1977.


EUROPEAN PERSPECTIVES Interpreting Bad Faith.. continued The case now goes back to the Danish Supreme Court for a decision. The outcome is important to the parties not only at a national (Danish) level but also at an EU level. This is because Yakult owns a CTM application for their bottle shape (CTM 111138 in classes 29, 30 & 32) which was filed on the day OHIM opened (1 April 1996) and is still the subject of opposition proceedings brought by Malaysia Dairy. Since this opposition now relies exclusively on the opponent’s Danish trade mark registration for their (Malaysia Dairy’s) bottle shape, the importance of the Danish Supreme Court’s decision can be seen.

Comment This case not only confirms that the level of evidence required in order to substantiate a ‘bad faith’ claim is higher than most brand owners might often expect, but also highlights the importance of being the ‘first to file’. In a case like this, where two entities have similar trade mark interests and multiple rights in the same jurisdiction as each other, it is prudent for brand owners to be the ‘first to file’ in those jurisdictions of particular importance, in order to be able to ensure the protection of their brands. It is important that brand owners secure registered protection, as

soon as possible, in markets of actual or likely commercial interest.

applicant offered to sell back the mark for a

Where a competitor obtains rights in an identical or confusingly similar mark then, if there is no genuine interest in that jurisdiction, brand owners should seriously consider whether or not it is worth bringing a ‘bad faith’ claim, as this case illustrates that it will take more than just the mere knowledge of an earlier right abroad in order to be able to cancel a mark on the ground of ‘bad faith’. The burden is on the trade mark owner to prove ‘bad faith’, not the other way around.

This case also highlights the importance of

In a ‘bad faith’ claim, the Court will need to carry out an overall assessment, taking into account all the factors relevant to the case which existed at the time of filing the application. For instance, the Court will consider whether the applicant knew, or should have known, that a third party was using an identical or similar sign for an identical or similar product. More importantly, however, regard will be given to the applicant’s intention at the time of filing his application. For instance, does the applicant have a history of applying for third parties’ marks, was the applicant a former employee of the rights’ holder, was there a breakdown in a business relationship, has the

has been a European Commission proposal

substantial amount of money? future-proofing settlement agreements. In order to have commercial certainty that a competitor is unable to file an application in a jurisdiction of potential interest to your business, it is prudent to identify those jurisdictions from the beginning. Otherwise, it’s a race around the world to be the ‘first to file’, which can have disappointing consequences, as in this case. Lastly, it may be helpful to note that there to include a limited bad faith ground of opposition based on the ownership of a relevant foreign registration abroad in CTM proceedings. Hope remains that perhaps this case is the first step towards the CJEU harmonising other trade mark concepts, such as the likelihood of confusion. Watch this space! For the benefit of trade mark anoraks, you know who you are, Yakult’s CTM application is one of only five CTMs that were amongst the nearly 22000 applications filed on 1 April 1996 and that remain pending at the time of writing.

How to bag a CTM registration T wo recent European Court decisions (T-409/10 and T-410/10), involving the

Italian fashion house, Bottega Veneta, give useful guidance as to the way in which a

party should approach filing an application for a non-traditional mark, and also to the way in which a CTM applicant should consider dealing with any objections raised. On 1 February 2008, Bottega Veneta filed three Community Trade Mark applications (CTM 6632624, CTM 6632566 and CTM 6632608) for marks consisting of the shapes of purses and handbags. Two of those were rejected, and the third (CTM 6632624, see the purse illustrated on this page) sailed

through to registration, without an objection being raised, by the end of the same year. What was it, then, that held up two of the applications, and, indeed, continues to prevent them from being registered, when the third of the trio encountered no difficulties?

Bottega Veneta appealed and filed two

The rejected marks each consisted of applications for the shape of handbags. These were referred to as the “tote” and the “hobo” bags by the Applicant. The bags did not appear to be hugely original and, unsurprisingly, OHIM refused their registration on the basis of Article 7(1)(b) of the CTM Regulation (CTMR), that is, the marks were devoid of distinctive character.

then argued that the “plaited surface”,

different strands of argument to overcome the objection. Firstly, it argued that the marks were distinctive, but interestingly backed this up by saying that its original representations were defective and filed new representations to replace them. It clearly visible on the new representations, but not on the original filings, was distinctive and that the applications should therefore be accepted on that basis. Alternatively, Bottega Veneta argued that its marks had acquired distinctiveness through use and thus should be accepted on the back of that use. Continued overleaf

Make Your Mark

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EUROPEAN PERSPECTIVES How to bag a CTM registration.. continued The Board of Appeal, and then the General Court, rejected Bottega Veneta’s arguments. No objection had been made to the quality of the representations of the handbags by the OHIM examiner, in the first instance, and so it was not open to Bottega Veneta to decide, later in the proceedings, that its own representations were retrospectively defective. As the new representations, bearing the “plaited surface,” could not be accepted, the argument relating to the distinctive character of that plaited surface could not apply. On a consideration of Bottega Veneta’s evidence of acquired distinctiveness, both the Board and the Court found that the vast majority of the evidence related to the plaited surface of the bags, and not to the shape of the bags being distinctive. The appeals were therefore dismissed and the applications were refused.

Comment Where did Bottega Veneta go wrong? Even if the handbags were not hugely distinctive inherently, could registrations have been obtained? We turn now to the third application (CTM 6632624), also for the shape of a purse/bag, and covering “purses and handbags”, which was registered with no difficulties. Unlike the two refused applications, the third, accepted CTM application contains a description, which reads “A pochette bag with a rigid structure distinguished by an

original fastener in the shape of a knot and by a covering of interlaced textile or animal skin with a 45 degree angle to the base of the bag”. This seems to go to the heart of Bottega Veneta’s claims in its other two cases, that the “interlaced textile or animal skin”, or “plaited surface” was, in fact, a distinguishing factor in the bags themselves, and was to be considered an important feature. Why didn’t Bottega Veneta include a similar description in the CTM applications for the two refused bags? Indeed, the General Court comments “The Appellant, in its application, has filed no description of the mark applied for, and has therefore deprived itself of a means of ensuring …. that the exact coverage of the application mirrored its intention at the time of filing the application”.

support the claims of acquired

Lesson 1, therefore, must be that applicants wishing to protect unusual marks should consider, before filing, exactly what it is that they wish to protect and ensure that the application is worded accordingly. The accepted mark does not appear particularly distinctive, and, in fact, is more than somewhat reminiscent of a purse and spectacle case combination owned by this writer’s maternal grandmother. However, the description seems to have been sufficient to help the application proceed to registration.

instance, the Applicant was clearly trying to

Even if Bottega Veneta should have considered filing a description with its refused CTM applications, it clearly did not, and so consideration should be given as to the quality of evidence that was filed to

These cases show that continuing focus on

distinctiveness. As is well known, filing evidence of acquired distinctiveness, to overcome objections to CTM applications for device or shape marks, is a hugely onerous exercise. Bottega Veneta was clearly facing a difficult task. However, it did not help itself in any way by filing evidence which did not show acquired distinctiveness of the bags themselves, but rather of the “plaited surface”. Unsurprisingly, given that the evidence showed little use of the bags, it was rejected. Lesson 2, therefore, starts from where Lesson 1 finishes. A CTM applicant must always consider what it is trying to protect and what is needed to do that. In the first protect the outward appearance of handbags, with a plaited surface. However, no reference was made to this. Thereafter, rather than filing evidence relating to the shape of the bags in question (which were, after all, the focus of the refused CTM applications), the applicant instead concentrated on the plaited surface of the bags which was not graphically represented in an adequate manner in the representations filed. the case in hand is vital, rather than allowing attention to drift. The existence of Bottega Veneta’s third, accepted application shows that such focus can reap rewards.

It’s the facts, stupid.

I

n a recent European (General) Court case (T-579/10, macros consult GmbH

The CTM Regulation (CTMR)contains

the filing date of the CTM application or

some extremely powerful provisions which

registration under attack, and the earlier

– Unternehmensberatung fur Wirtschafts

may be relied on by parties in opposition

right relied on confers, under the relevant

und Finanztechnologie v MIP Metro Group),

and post-registration cancellation

national law, the right to prohibit the use

macros consult failed in its cancellation

proceedings. These include the ability, (as

of a subsequent later trade mark.

here), to rely on an earlier “non-registered

In some national jurisdictions, the “non-

trade mark” or “other sign used in the

registered trade mark” or “other sign used

course of trade of more than mere local

in the course of trade” can sometimes be

significance”. This is subject to the test

seen as a sign of relatively low importance,

that the rights were acquired earlier than

when compared with the scope of, for

proceedings (brought against a CTM registration owned by MIP Metro), due to a failure to file basic factual information about earlier rights.

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EUROPEAN PERSPECTIVES It’s the facts, stupid... continued example, a national or Community trade mark. Examples include company names and personal names.

have been relied on in the invalidity

However, in order to rely on such a right, the opponent or applicant to cancel must prove that national law does permit it to prohibit later use, rather than assuming that OHIM will automatically recognise what earlier rights may be relied on in all member states.

the General Court, rather than before the

Unfortunately, the applicant for invalidity in this case (macros consult) failed to file the most basic information showing that its company name existed, and that the existence of this name, under German law, gave it the right to invalidate the later CTM registration for MAKRO.

This result must be somewhat annoying for macros consult, but they only have themselves (or their advisors) to blame. The Regulation is clear on the requirements, and those in respect of which macros failed were basic factual points, namely,

In the current case, it is clear that macros consult did probably have a suitable amount of information which could

T

he above case should be contrasted with the very different decision made by the European (General) Court in Peek & Cloppenburg (Hamburg) v Peek & Cloppenburg (Düsseldorf), T-507/11. In this case Peek & Cloppenburg (Hamburg) had used its company name since 1911 in respect of clothing department store services. It then objected to Peek & Cloppenberg (Düsseldorf)’s CTM application for the trade mark PEEK & CLOPPENBURG, in Classes 25 and 35, on the basis of its earlier, unregistered rights. Unlike the macros consult case, the Opposition Division here was in no doubt that, on the evidence before it, Hamburg was able to exercise its earlier rights, and confirmed that it had filed sufficient evidence to prove that its rights fell within the earlier (German) law, and that German law enabled it (Hamburg) to prohibit use of a later mark by the Düsseldorf based CTM applicant. Düsseldorf, however, objected to this finding, and appealed on the basis that Hamburg had tolerated its (Düsseldorf’s) use for more than five years and thus was

proceedings. However, the majority of the relevant material was filed only before OHIM Cancellation Division or before the Board of Appeal. Under OHIM practice, filing material for the first time before the Court ensures that it will not be taken into account.

Comment 1

the CTM (here, a German company name); 2. That the sign conferred on its proprietor the right to prohibit the use of the subsequent trade mark under the law of that member state. These are generally not difficult points to prove, relating as they do to basic tenets of German law. Macros consult merely needed to show what was required under German law to be able to act, and then to file this information at OHIM. Unfortunately, however, it did not do this, and as a result its invalidity action against the mark MAKRO was dismissed on technical grounds, before any substantive issues could be considered.

1. That the right to the sign was acquired in accordance with the law of the member state in which the sign was used prior to the date of application for registration of

no longer able to challenge its later filed application. On a review of the relevant German law, it became clear that the “tolerance” referred to by Düsseldorf had to be in the use of a registered mark. As Düsseldorf’s mark had not yet proceeded to registration (in that it was the subject of opposition proceedings), it had not been registered for a period of five years, and so the co-use of that mark (which seems to have extended for more than five years) was of no relevance.

unregistered right of more than mere local

Düsseldorf also appealed on the basis that Hamburg’s use was merely local use and thus insufficient to be able to be used as a basis for an opposition under Article 8(4) of the CTM Regulation. However, the First Board of Appeal disagreed with this view, on the basis of the long standing use of the name by Hamburg, since 1911, and in more than one part of Germany.

opposition, even if those rights were

Comment 2 The General Court in this case does appear to be emphasising that the most important point to be considered, when an opposition/ invalidity action does rely on an earlier

significance, is the question of whether the use made is merely “local”. This should be considered carefully, if a party wishes to base an opposition on earlier unregistered rights. Although the rights granted under Article 8(4) CTMR are potentially very strong, OHIM appears to be indicating that a “local” right (perhaps a well known name in only one or two localities of an EU country) would not be sufficient to form the basis for a successful technically enough to object to the later use in the country concerned. This is the overlap between the various requirements of this Article – although an opponent/applicant for invalidity must prove the facts of its rights on a national basis, the effect on the later filed application/registration is then judged on an EU-wide basis. Given the importance of this case to the companies concerned, as well as the difficult questions raised by the facts, it is no surprise that it has now been appealed further to the full European Court of Justice.

Make Your Mark

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Snippets Specsavers is a well-known chain of opticians that operates in the UK. It employs a logo in which the word Specsavers appears in white lettering within two “kissing”, dark green coloured ovals (see below). The company owns CTM rights protecting the word mark, the logo in black and white and the two “kissing” ovals, again in black and white, but without the word Specsavers. Asda is one of the UK’s most successful food supermarkets. As one of its “added extras”, it offers an in-house optician service. In 2009, it decided to re-launch this service with a new marketing campaign. Following a long tradition amongst British supermarkets, Asda looked to the market leader for “inspiration”. As a result, the campaign centred upon a green and white logo (see above) that featured the words ASDA and Opticians in two (nearly kissing) ovals, as well as two slogans, “Be a real spec saver at Asda” (the first slogan) and “Spec savings at Asda” (the second slogan). All of these three elements were employed together, in order to achieve Asda’s desired effect. It should be noted that the lighter green chosen by Asda for their campaign was the corporate colour employed by, and associated with, Asda. Even so, Specsavers were less than enamoured with this campaign and they brought trade mark infringement proceedings based on its CTM rights in the English High Court. The grounds were a likelihood of confusion (Article 9(1)(b) CTM Regulation) and taking an unfair advantage (Article 9(1)(c)). In a 2010 dated decision, the High Court rejected all of Specsavers’ claims except one. The only exception was a finding that the first slogan (Be a real spec saver at Asda) took unfair advantage of Specsavers’ reputation in its registered word mark and logo (containing the word mark). This ruling was made in the face of clear evidence that Asda had targeted Specsavers’ advertising when designing its (Asda’s) campaign, one internal Asda comment on a proposed design stating “Asda version of Specsavers – rip off”. To add salt to Specsavers’ wounds,

the High Court Judge also revoked Specsavers’ CTM registration for the two “kissing” ovals without the word Specsavers on the ground of five years non-use, deciding that use of the logo with the word Specsavers did not save a registration for the logo without the word. Specsavers appealed to the Court of Appeal who, in a 2012 ruling (Specsavers International Healthcare v Asda Stores), took a rather different view. First of all, the Appeal Court generally agreed with the lower Court’s finding that there was no infringement under Article 9(1)(b) CTMR (likelihood of confusion). In the Appeal Court’s opinion, the prominent use of the trade mark ASDA served to avoid confusion. There was nothing inherently wrong with “living dangerously”, as Asda had done, provided the end result was a sign (or signs) that was a safe distance away from the original. The questions that clouded this view were whether Specsavers’ enhanced reputation in the colour green (of their logo) should be taken into account when making a global assessment of the likelihood of confusion, even though their CTM registration protected the “kissing ovals” in black and white, and whether Asda’s use of its light(er) green corporate colour should form part of the global assessment. The High Court Judge had decided that, because Specsavers were relying on a black and white version of their logo, they could not rely on an enhanced reputation in the colour green. The Court of Appeal put a question on this important point to the Court of Justice (CJEU). In doing so, one of their Lordships (Kitchin LJ) did express the views that a registration of a mark in black and white covered that mark in all colours and further that, in the case of such a black and white registration, use of the mark in just one colour should be taken into account in a global assessment of a likelihood of confusion. Turning to the issue of “unfair advantage” (Article 9(1)(c) CTMR), the Appeal Court disagreed with the position taken by the High Court. In the Appeal Court’s

NEWS

opinion, Asda’s marketing campaign could not be viewed as comparative advertising since it was not an “objective comparison of verifiable and representative features of the parties’ goods and services”. Further, when assessing the issue of “taking unfair advantage”, Asda’s advertising campaign had to be considered as a whole when considering the impact of each individual aspect of that campaign. It was not correct to look at each aspect in isolation. Bearing the above in mind, the Court of Appeal found that the ASDA Opticians logo, as well as both the First and Second Slogan, benefited from the “power of attraction, reputation and prestige” of the Specsavers marks. The intention of Asda to try to form a link with Specsavers was clear and they had succeeded in that intent; consumers would form such a link between Asda’s logo and slogans and Specsavers’ marks and reputation. The combined use of the ASDA logo and the slogans served to reinforce the link and to ensure that unfair advantage would be taken. It followed that Asda’s logo and their two slogans all infringed Article 9(1) (c) of the CTM Regulation. Finally, the Court of Appeal turned to the High Court Judge’s finding that Specsavers’ CTM registration for the “kissing” logo without the word mark should be revoked on the ground of non-use. This issue was also put to the European Court (CJEU) for a ruling. To paraphrase the questions; first, does use of a logo which consists of a word mark and a graphic device (e.g. “kissing” ovals) save a CTM registration for the graphic device alone? Further, if so, does that also apply where the word mark is superimposed on the graphic device (as in the Specsavers case)? The case therefore moved to the European Court of Justice (ECJ) to consider two important issues of trade mark law and practice, namely i) Did use of the Specsavers logo (with the word Specsavers) superimposed on the “kissing” ovals constitute use of their (Specsavers’) CTM registration for the (wordless) “kissing” oval mark (in black & white)?; and ii) Was Specsavers’ and Asda’s use of their respective (dark and light) green colours relevant to the consideration of the likelihood of confusion and the taking of unfair advantage, bearing in mind that Specsavers’ “kissing” oval logo was registered in black & white?

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NEWS

Snippets continued

The (European) Court addressed the question of genuine use first. Essentially they followed their recent ruling in the Colloseum case (C-12/12), in which the Court found that use of the well-known Levi’s tab attached to the pocket of Levi’s jeans could constitute genuine use of a CTM registration covering the tab attached to the pocket but without the word Levi’s appearing in the tab, provided the CTM mark (without the word mark) is seen as distinctive in its own right.

Further, in the Court’s view, the fact that Asda was itself associated with a light(er) shade of green, amongst a large proportion of the relevant UK public, was also relevant to the question of a global assessment.

infringement proceedings against Pura Raza before the Alicante Commercial Court in Spain. They (Cynologique) also sought the cancellation of the Pura Raza owned CTM 7597529, based on a likelihood of confusion with their earlier CTM 4438751.

The case now goes back to the Court of Appeal to pick the bones out of these rulings and to complete the judgment published in January 2012.

Pura Raza denied any likelihood of confusion and brought a counterclaim seeking the cancellation of Cynologique’s CTM (no. 4438751) on the basis that it was filed in bad faith and also that the CTM mark was confusing with Pura Raza’s earlier Spanish trade mark registration for the word mark FEDERACIÓN CANINA INTERNACIONAL DE PERROS DE PURA RAZA – F.C.I.

• The existence of a CTM registration for the composite trade mark consisting of the “kissing” ovals mark and the word Specsavers did not affect the position on genuine use.

The ECJ’s findings on genuine use in the Specsavers’ case (and earlier related cases) are important. Any other ruling would have cast severe doubt over the validity of numerous CTM and EU national trade mark registrations for colour, shape and get-up trade marks. Such marks are inevitably used with word marks and, if they were not to be seen to have a life of their own, the validity of trade mark registrations protecting them would immediately be put into question once those registrations come out of their five year non-use grace periods.

• The use of the composite mark, which involved use of the word Specsavers superimposed on the “kissing” ovals mark, and therefore hiding part of that mark, could constitute use of the “kissing” ovals mark itself, provided that

As a result of a recent ruling of the European Court of Justice, a long-cherished defence against trade mark infringement, that was available to the owners of UK trade mark registrations, may be about to disappear.

In the Levi’s case, it was found that the above situation applied even if the composite mark (tab plus word mark Levi’s) was also a registered trade mark. In the Specsavers case, this meant, according to the Court, that

- The national Court considering the case finds that the “kissing” ovals mark (without the word Specsavers), identifies Specsavers’ product; and - The national Court also finds that superimposing the word Specsavers over the kissing “ovals” mark does not alter the distinctive character of that (kissing “ovals”) mark. Turning to the effect of Specsavers’ and Asda’s widespread use of different shades of green on the global assessment of a likelihood of confusion and taking unfair advantage (and therefore on the issue of trade mark infringement), the Court confirmed that both usages were relevant to the issue, even though Specsavers’ “kissing” ovals mark was registered in black and white. According to the Court, since Specsavers had used the registered “kissing” ovals mark in a particular colour (dark green) and had, amongst a significant portion of the relevant public, become associated with that colour, the colour that Asda employed in its allegedly infringing sign was relevant to the global assessment (of likelihood of confusion and unfair advantage).

The ECJ case (Federation Cynologique Internationale v Federación Canina International de Perros de Pura Raza, C-561/11) involved a number of FCI logo marks. Cynologique owned a CTM registration (no. 4438751) dated June 2005 for the logo below covering dog breeding, training and related services in Classes 35, 41, 42 and 44. Pura Raza owned three Spanish and CTM registrations for similar marks, one of which, a word mark FEDERACIÓN CANINA INTERNACIONAL DE PERROS DE PURA RAZA – F.C.I., pre-dated Cynologique’s CTM registration. The others, all FCI logos, postdated Cynologique’s CTM. Pura Raza’s CTM registration (no. 7597529, dated 12 February 2009) is depicted below. All of Pura Raza’s national and CTM registrations also claimed dog related goods and services, including competition and accreditation services, as well as advice on dog breeding. Cynologique brought trade mark

Under a former Spanish trade mark practice, the owner of a later Spanish trade mark registration had a complete defence against a trade mark infringement action brought by the owner of an earlier Spanish trade mark registration until the later (Spanish) registration had been declared invalid. This practice now appears to have been modified. However, it still coloured the Alicante Court’s view of the Cynologique case. As a result, they (the Spanish Court) sought a ruling from the ECJ on whether or not Pura Raza’s ownership of a CTM (no. 7597529) gave them a defence, in relation to their use of the FCI logo covered by that CTM registration, against the trade mark infringement action brought by Cynologique (based on their earlier CTM (no. 4438751)), until (or unless) Pura Raza’s CTM 7597529 was declared invalid. In a very clear ruling, the ECJ decided that it was not necessary for Cynologique to invalidate Pura Raza’s CTM registration (no. 7597529) before it could enforce its earlier CTM (no. 4438751) against Pura Raza’s use of the mark protected by CTM 7597529. In other words, Pura Raza’s later CTM registration did not provide a defence against Cynologique’s trade mark infringement action based on their earlier CTM registration. Given the time that it can take to invalidate CTM registrations, particularly before OHIM, this is a sensible and practical decision, although it is unfortunate that the Court did not take the opportunity to rule whether or not Pura Raza’s later national (Spanish) trade mark registrations could provide a defence against trade mark infringement in Spain (at

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least until invalidated). The writer believes however that it is a fair assumption that Pura Raza’s later Spanish trade mark registrations would not provide such a defence against trade mark infringement. Which brings us to the UK. Under Section 11(1) of the UK Trade Marks Act 1994, a registered trade mark is not infringed by the use of another (later) registered trade mark in relation to the goods or services for which that other (later) mark is registered. As in Spain, this defence was always subject to the later registration being declared invalid. Further, it does not apply to a trade mark infringement action based on a CTM registration. However, it was like an old friend, always present in the background and always reliable. This makes it particularly strange that the UK Government does not appear to have filed any observations in the Cynologique case. This gives the clear indication to the writer that the well loved Section 11(1) defence in UK trade mark law is on its death bed and that the UK Government is in the process of reading the last rites, rather than trying to resuscitate the patient. The shape of the Kit Kat four fingered chocolate wafer product is one of the most instantly recognisable features of the UK’s confectionery market; a design icon. It has been sold on a substantial scale in this country since the 1930s. A recent UK trade mark opposition, in which the Kit Kat shape was refused registration, except for cakes and pastries, shows the almost impossibly high standards that are demanded by the trade mark authorities in order to allow such 3D marks. Société des Produits Nestlé applied to register the Kit Kat shape for a variety of Class 30 products including “chocolate coated wafer biscuits” (UK 2552692; mark applied for without any word mark) in July 2010. The application was opposed by Cadbury UK Limited on a number of absolute grounds of the Trade Marks Act 1994 including, • Section 3(2)(b); The mark consists exclusively of the shape of goods which is necessary to obtain a technical result; and • Section 3(1)(b); The mark is devoid of any distinctive character, even taking into account the use that has been made of it by Nestlé.

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Having noted the significant quantities of evidence put in by both parties, including a technical analysis of the Kit Kat shape that would have done justice to a Ph.d. in food production engineering, the Hearing Officer (Mr James) was more persuaded by the Cadbury funded experts that he was by those funded by Nestlé. Addressing the Section 3(2)(b) ground of opposition first, the Hearing Officer found that i) The basic rectangular “slab” shape represented by the mark is a shape which results from the nature of moulded chocolate bars or moulded chocolate biscuits sold in bar form; ii) The presence of breaking grooves is a feature which is necessary to achieve a technical result; iii) An angle of more than 8-10 degrees for the sides of the product, and for the breaking grooves, results from the nature of moulded chocolate products and the depth of the grooves is necessary to achieve a technical result; iv) The number of breaking grooves and fingers is determined by the desired portion size. On the basis of these findings, Mr James refused Nestlé’s UK trade mark application on the basis that the mark applied for consisted of a functional shape (Section 3(2)(b)); none of the essential features of the shape were arbitrary, decorative or imaginative. In the Hearing Officer’s view, the shape at issue was not an aesthetic design, but a functional one. This view was said to be confirmed by the facts that • The goods were usually sold wrapped in such a way that the shape cannot be seen until after purchase; • The product was designed to be broken up and consumed; and • Nestlé’s marketing of the product emphasised the breakability of the fingers of the (Kit Kat) bar (e.g. Have A Break, Have A Kit Kat). It followed that the opposition succeeded under Section 3(2)(b) of the Act and Nestlé’s UK trade mark application was rejected for all of the Class 30 goods claimed, except cakes and pastries. That should have been the end of the matter, since a Section 3(2)(b) objection cannot be overcome by showing evidence of acquired distinctiveness. However, Mr James also took the chance to put the boot in with regard to the distinctiveness

of Nestlé’s mark (inherent and acquired). He began by finding that, on the evidence before him, the shape applied for was devoid of inherent distinctiveness. Turning to Nestlé’s evidence of acquired distinctiveness, including survey evidence, Mr James accepted that Nestlé had shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery. As the Hearing Officer stated, “That is not really surprising given that the product has been sold in the same shape in the UK in substantial volumes since the 1930s. Most people will therefore have eaten one at one time or another”. Unfortunately for Nestlé that was not enough to satisfy Mr James. In his view, based on an analysis of earlier case law, it was also necessary for Nestlé to show that consumers had come to rely on the shape to identify the origin of the goods. Nestlé, according to Mr James, had not done this because: “i) There is no evidence that the shape of the product has featured in the applicant’s promotions for the goods for many years prior to the date of the application; ii) The product is sold in an opaque wrapper and (until a few months before the filing of the application – and then only for a subset of the goods placed on the market), the wrapper did not show the shape of the goods; iii) There is no evidence – and it does not seem likely – that consumers use the shape of the goods post purchase in order to check that they have chosen the product from their intended source. In these circumstances it seems likely that consumers rely only on the word mark KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KIT KAT (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish


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the trade source of the goods at issue, the claim of acquired distinctiveness fails.” The fact that Nestlé had successfully defended its equivalent CTM registration (no. 2632529) from an attack by Cadbury on the same grounds as the Hearing Officer relied on in the UK trade mark opposition (see Make Your Mark, Spring 2013, page 13), was not found persuasive by Mr James. He noted that: “i) The CTM was not registered for chocolate, chocolate products, chocolate confectionery or wafers (although it was registered for biscuits); ii) It is not clear that the Board of Appeal had the expert evidence that has been filed in these proceedings; iii) The Board of Appeal did not have the benefit of hearing cross examination of experts on their evidence about the functionality and manufacturing considerations related to various aspects of the shape”.

and that the evidence of use should have been deemed inadequate to overcome these absolute grounds of rejection. The Cancellation Division agreed and declared the CTM registration invalid (Articles 7(1)(b) and (c) CTMR). Donaldson appealed and the Fourth Board of Appeal annulled the Cancellation Division’s decision. According to the Board of Appeal the invalidity action had to be rejected as inadmissible because it constituted an abuse of rights. In the Board’s view, this was because •

The applicant (to invalidate) was in reality seeking to use the designation ultrafilter itself as a trade mark;

The action had therefore not been brought in the public interest but for other reasons;

The real intentions of the applicant to invalidate (Ultra.air), namely to pursue its own private interests rather than the public interest, were further evidenced by the fact that, in 2003, the former manager of Donaldson, who was now the manager of Ultra.air, had personally defended the distinctive character that the CTM mark (ultrafilter international) had acquired through use;

In other words, “Fog in Channel, Continent isolated”. Given the annual sales of Kit Kat bars in the EU, and given the adverse effect that numerous four fingered chocolate wafer products sold by third parties would have on that market, the decisions in both the UK trade mark opposition and the CTM cancellation action are likely to be appealed; indeed the CTM cancellation action already has been (see case number T-112/13). The outcome of both appeals is awaited with interest. A recent decision of the (European) General Court considered the issue of the abuse of rights in contentious proceedings before OHIM. In 1999 a German company, Donaldson Filtration Deutschland (formerly Ultrafilter GmbH) filed a CTM application for ultrafilter international covering goods and services in Classes 7, 11, 37, 41 and 42. The application was rejected by the CTM Examiner as non-distinctive and descriptive (Articles 7(1)(b) and (c) CTMR). The CTM applicant appealed and, on the basis that the mark had become distinctive through use, the Second Board of Appeal annulled the Examiner’s rejection. This led to the grant of Donaldson’s registration in September 2005. Three years later, another German company, Ultra.air GmbH, applied to invalidate the CTM registration on the grounds that the mark was inherently non-distinctive and descriptive

Since an abuse of rights constitutes a “general obstacle to the procedure”, abusive applications and actions which amount to procedures designed to attain objectives other than those which are legitimate under trade mark law are not admissible. For this reason, the invalidity action was rejected by the Board.

Consequently, contrary to what the Board of Appeal found, such conduct cannot amount to an abuse of rights in any circumstances. •

The rejection of the application for a declaration of invalidity on the ground of an “abuse of rights” thwarts the objectives pursued by Article 7(1)(b) and (c) of Regulation No. 209/2007, since such a rejection prevents the examination of the substance from being carried out.

The fact that the manager of the applicant for a declaration of invalidity was the manager of the proprietor of the mark at the time when the application for registration of the mark was lodged in no way affects the rights of that applicant to bring an action before OHIM under Article 56(1)(a) of Regulation No. 207/2009.

The same conclusion must be reached in relation to the intervener’s (Donaldson’s) arguments alleging that the applicant has engaged in unfair competition against it. In that regard, the Court points out that Article 56(1)(a) of Regulation No. 207/2009 does not make the admissibility or validity of an application for a declaration of invalidity subject to good faith on the part of the applicant for such a declaration.

Even supposing that an application for a declaration of invalidity does form part of an overall confrontational commercial strategy, involving acts of unfair competition, the removal from the register of a mark which is either descriptive or devoid of distinctive character is a consequence of trade mark law, laid down in Article 57(5) and (6) of Regulation No. 207/2009, and the trade mark proprietor does not gain the right to retain its registration on the basis that the applicant for a declaration of invalidity has also engaged in unfair competition.

Article 54 of Regulation No. 207/2009 concerns cases where the proprietor of a mark has acquiesced, for a period of five years, in the use of a subsequent mark, which bars him of his entitlement to apply for a declaration of invalidity of the subsequent mark on the basis of the earlier mark. However, that provision regulates situations concerning two lawfully registered marks and provides that, under certain conditions, a mark cannot be removed from the register as a result of the existence of another identical or similar mark.

Even by the standards of the Fourth Board of Appeal, this was an eccentric decision based on extraordinary reasoning. Sometimes such decisions are allowed to stand, given that those in receipt of them are unwilling to take the matter to the European Court. Luckily for good CTM practice, Ultra.air was not one of those companies; they appealed to the General Court. The Court spent little time in overturning the Fourth Board’s decision and reasoning. The Court ruled as follows: •

The fact that the applicant for a declaration of invalidity may file an application with a view to subsequently affixing the sign in question to its own products is perfectly in line with the public interest safeguarded by Article 7(1)(c) of Regulation No. 207/2009 of keeping signs freely available.

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This rule in no way concerns the possibility of having a mark removed from the register, not because of a likelihood of confusion with an earlier mark, but because of its descriptive character or lack of distinctive character, that is, the absolute grounds for refusal established in the public interest, which vitiate registration from the outset and which, in accordance with Article 52(2) of Regulation No. 207/2009, are rendered inapplicable only if the mark in question has acquired a distinctive character after its registration. It follows from the foregoing that the Board of Appeal erred in law by annulling the decision of the Cancellation Division and by rejecting the application for a declaration of invalidity as inadmissible on the basis of an alleged “abuse of rights”.

If Donaldson decides to appeal this decision, it is sincerely to be hoped that the European Court of Justice will confirm the General Court’s decision and reasoning. It is difficult enough as it is to predict the outcome of OHIM examination and appeal proceedings. If the Fourth Board’s decision and reasoning were to become part of the fabric of OHIM’s practice, it would make such predictions even more difficult. The Fourth Board’s decision seems to show a complete misunderstanding of the cut and thrust of trade mark disputes. As if to prove the point, the above case is part of a wider dispute between the parties over the trade mark ultrafilter. In relation to that dispute, Donaldson has applied to cancel a CTM registration for ultra.air ultrafilter owned by Ultra.air (in Classes 7, 9, 11, 39 & 42) on the grounds of non-distinctiveness and descriptiveness (Article 7(1)(b) and (c) CTMR). Understandably this action was rejected by the Cancellation Division. Donaldson appealed that decision and, unfortunately for Ultra.air, the appeal was referred to the Fourth Board of Appeal. Readers will perhaps not be surprised, given the Court decision reported above, that the Fourth Board has recently overturned the Cancellation Division’s decision, finding the trade mark ultra.air ultrafilter to be nondistinctive and descriptive for all of the goods and services protected. We can expect this decision to be appealed to the Court; after all what exactly is ultra.air? Finally, Ultra.air has also applied to revoke Donaldson’s CTM registration for a combination mark (ultrafilter international & device) in Classes 7, 11 & 37 on the ground of five years non-use in the EU. Once again, the Cancellation Division ruled in favour

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of Ultra.air and revoked Donaldson’s CTM registration. Donaldson has appealed that decision and, unfortunately for Ultra.air, the case has again been sent to the Fourth Board of Appeal, so we probably know where that is going. The bigger point though is that the case that was appealed to the General Court, and overturned by that Court, is part of a wider dispute over the registration and use of the trade mark Ultrafilter. It follows that Ultra.air’s application to cancel that CTM registration was simply part of that dispute. It was certainly not an “abuse of rights”. If it had been, then there are simply dozens, if not hundreds, of CTM disputes that constitute such an abuse. Another important issue that occurs to the writer in this broad dispute is why have all of the appeals been referred to the Fourth Board of Appeal? Certainly, if the writer were representing Ultra.air, he would be asking for an explanation from OHIM on this clearly important point and demanding that the appeal in the revocation action, brought against Donaldson’s CTM registration for the ultrafilter international & device combination mark be transferred to a different Board of Appeal for a decision. At the beginning of the Second World War, when the threat of a German invasion was all too real, the British wartime Government produced a number of poster designs in order to keep the collective upper lip stiff. One of these posters, which bore an image of a Royal crown, as well as the phrase Keep Calm And Carry On was poorly received by the public and so it was never widely distributed. Indeed, nearly all of the posters that had been published were quietly pulped. Not quite all though; one that escaped destruction turned up in a book store, known as Barter Books, situated in the North East of England in 2000. Having put it on general display, the poster generated some local interest and Barter Books began making copies to meet a limited demand. In 2005 however, as a result of an article about the history of the poster (and phrase) in the national Guardian newspaper, demand for “Keep Calm” posters and other “Keep Calm” merchandise began to increase exponentially,

both in the UK and elsewhere. This increased demand was met by both Barter Books and a number of unrelated companies, most of whom acknowledged Barter Books’ contribution in igniting the renewed interest in the “Keep Calm” poster and design. In 2007, a Surrey based businessman, Mr Mark Coop, began to sell t-shirts and a range of other merchandise bearing the Keep Calm and Carry On poster design. How Mr Coop began his business is a matter of some dispute. The owners of Barter Books claim that he bought some “Keep Calm” posters from them and then copied the image onto his merchandise. Mr Coop denies this. What Mr Coop did do however, which Barter Books did not, was file a UK trade mark application for the Keep Calm and Carry On poster design covering goods in Classes 16, 20 and 25. This application was rejected by the UK Trade Mark Office however, presumably because the design contains an image of a Royal crown, which is not allowed (without permission) under Section 4 of the UK Trade Marks Act 1994. Undeterred, in February 2009, Mr Coop set up a trading company called Keep Calm and Carry On Limited. The following year, this company filed a CTM application for Keep Calm And Carry On covering a wide variety of goods in eight classes. Unopposed, this CTM application proceeded to grant in March 2011. Once in possession of this right, Mr Coop began to wield it against third parties by issuing Take-Down Notices to eBay. This didn’t go down well with many internet users who began an on-line, anti-Coop campaign. In response to this, Mr Coop’s company filed a new CTM application for the phrase, this time in three classes. This finally prompted an official reaction from Barter Books who opposed the new application on the basis of prior unregistered UK trade mark rights (Article 8(4) CTMR). Unfortunately for the opponent, the only real evidence of use that they could produce was the sale of 50 Keep Calm posters in 2006. They also failed to produce any information regarding the relevant law (of passing-off) in the UK. When this was pointed out by the CTM applicant, the opponent commented that since “this is a CTM, there is no action for passing-off initiated against the applicant, nor does there need to be”. In view of this, it is perhaps not surprising that the opposition was rejected, the Opposition Division stating that the


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evidence filed had failed to show use that was “of more than local significance”. The story does not end there though. One of the eBay users that attracted Mr Coop’s attention was Simply Printing 4U run by Kerry Cade, the wife of a serving British Army Officer, Jason Cade. This Dorset based company had been producing Keep Calm And Carry On mugs, mouse mats and posters and selling many of them on eBay. As a result of Mr Coop’s action, this eBay activity stopped. Mrs Cade may have lost this battle but she decided to try to win the war. She persuaded her husband, Jason Cade, to apply to cancel Keep Calm and Carry On’s CTM registration (covering eight classes), this time on the basis that the phrase (Keep Calm And Carry On) was non-distinctive and/or in common use in the trade (Articles 7(1) (b) and 7(1)(d) CTMR). Whilst Mr Cade has filed plenty of evidence of third party decorative use of the phrase on goods, prior to the filing date of Keep Calm And Carry On’s CTM registration (18 October 2010), it remains to be seen whether this, together with the argument that the phrase is inherently non-distinctive, will be enough to persuade the Cancellation Division to cancel the registration. If Mr Coop succeeds in resisting Mr Cade’s cancellation action, it will be interesting to see if any third party user of Keep Calm And Carry On, in a decorative manner, in relation to goods protected by Mr Coop’s company, for example posters, mugs or t-shirts, will be brave enough to resist a threat of an infringement action by Mr Coop. One feels that an English Court might not be entirely sympathetic to Mr Coop’s case. Further, an adverse High Court judgment, allowing such decorative use of the phrase, might re-open the floodgates. In the meantime, a number of other companies and individuals have been following Mr Coop’s trade mark lead, although with much less adverse comment. A company called Keep Calm And Carry On Beverage Company has obtained UK trade mark registrations for the phrase covering, amongst other goods, certain alcoholic beverages in Class 33 and contraceptives in Class 10. Well, one thing can lead to another. And having done so, it may provide customers for Ms Ailish McDonnell’s Keep Calm and Marry On wedding planning services registered in 2012. Unfortunately, the happy couple may not be able to rely on New English Tea’s Keep Calm And Put The Kettle On products or Thomas Heffernan’s

Keep Calm And Curry On merchandise or Mr and Mrs Richardson’s Keep Calm and Caravan retail services, since UK applications for these marks were all abandoned in 2012. The danger of failing to sort out the ownership of the copyright in a design has been illustrated by two recent CTM cancellation actions (Deepend Fresh Recovery v Fresh Trading). Innocent Drinks, a company owned by Fresh Trading Limited, sells smoothies, juice and similar under the Innocent trade mark. They also use a (now) well-known “halo” logo. The company was founded by three Cambridge University graduates in 1998. From modest beginnings, the company became extremely successful, so much so that they were able to sell a stake in the company to Coca Cola in 2009. Innocent’s “halo” logo was created in early 1999 by David Streek, in the course of his employment with a UK design agency, Deepend London Ltd. Although there was discussion between the parties about payment for Deepend’s services, it appears that no such payment was ever made. Furthermore, there was no evidence of any written agreement executed by the parties and therefore no evidence of the assignment of the copyright in the “halo” logo to Innocent. Deepend London went into liquidation in 2001. According to the applicant to invalidate (Deepend Fresh Recovery), the ownership of the copyright (in the “halo” logo) was assigned from the liquidator to Mr Andrew Chappell who, in turn, assigned the rights to Deepend Fresh Recovery. This account was disputed by Fresh Trading (on behalf of Innocent) who claimed that, although there was no formal agreement between the parties, there was enough evidence to imply an equitable assignment of the copyright from Deepend London to Fresh Trading before Deepend London’s liquidation. These issues came to a head when Deepend Fresh Recovery applied to cancel two CTM registrations for the “halo” logo owned by Fresh Trading (CTM 1815612 (Classes 29, 30 & 32) and CTM 4769832 (Classes 3, 25 & 43)). In both cases, the cancellation action was brought under Article 53(2)(c) CTMR, namely that the use of the CTM may be prohibited because of the applicant to cancel’s right to a copyright in the UK. In both actions the Cancellation Division favoured Deepend Fresh Recovery’s version of events. In the Cancellation Division’s view,

the absence of any document signed by Deepend London, assigning the copyright in the “halo” logo to Fresh Trading, inevitably led to the conclusion that no such assignment had taken place and that therefore the line of title to Deepend Fresh Recovery (the applicant to invalidate) was the legitimate one. The Cancellation Division also dismissed Fresh Trading’s claim to equitable ownership of the copyright. In this case, the fact that Fresh Trading had not put forward any evidence of their use of (and reputation in) the “halo” logo was held against them. Without such evidence, Fresh Trading could not argue successfully that Deepend Fresh Recovery was not in a position to prevent the use of the “halo” logo by Fresh Trading in the UK. Since Deepend Fresh Trading was found to be the owner of the copyright in the “halo” logo and were therefore, in the Cancellation Division’s view, in a position to prevent the use of Fresh Trading’s registered trade mark in the UK, the two CTM registrations for the “halo” logo were cancelled under Section 53(2)(c) of the CTM Regulation. Given that the annual sales of Innocent Drinks now exceed £100 million, it is perhaps not surprising that Fresh Trading has appealed these adverse decisions (and obtained a new CTM registration (no. 11350196)) for their logo. Whatever the outcome of these appeals, further appeals can be expected. Even if Fresh Trading can finally manage to persuade the authorities to reject these cancellation actions, they provide a salutary reminder to all companies that, when they commission an agency to design a new logo, they must ensure that a fully executed, written agreement is in place transferring ownership of the copyright to the commissioner. Otherwise, if the company becomes an overnight success, like Innocent Drinks, they may live to regret it. The Diary of a Young Girl, more widely known as The Diary of Anne Frank, is one of the most celebrated works of literature documenting events during the Second World War. Written by the teenage Anne Frank, it records the lives of two Jewish families, as they lived in hiding in German occupied Holland, from the summer of 1942 until their betrayal two years later. Anne died in the Bergen-Belsen concentration camp in March 1945. However, her diary was discovered and published (in Dutch) to wide acclaim in 1947. An English language version was subsequently published in 1952 and this Continued overleaf

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was followed by a play and a film. The enduring popularity of the book was reflected in its appearance in various lists of the top books published in the 20th Century. The Anne Frank Fonds (Foundation) was set up by the author’s father, Otto Frank, the only family member known to have survived the Holocaust. The original aim of the Foundation was to save and restore the building in which the Frank family hid during the War. This successful campaign led to the building being opened as the Anne Frank Museum in 1960. After that the Foundation used its income from the sale of books and the grant of licences (to use the Anne Frank name) for a range of charitable and educational projects. In order to reinforce and maintain its rights, the Foundation has also protected Anne Frank with trade mark registrations on a worldwide basis. In the UK, the name is protected in Classes 9, 16, 41 and 42 by UK trade mark and CTM registrations. These rights claimed inter alia recorded data media, printed matter and entertainment services. In 2011, the Foundation decided to take the additional step of protecting the book titles, The Diary of a Young Girl and The Diary of Anne Frank, as trade marks in the UK. To this end, they filed two UK trade mark applications covering a wide range of goods and services including recorded data media in Class 9, printed matter in Class 16 and theatre productions and the showing of films in Class 41, all goods and services that were protected by their earlier trade mark registrations for Anne Frank.

of a UK trade mark application for the name of the famous actress Emma Watson, the application being refused for certain goods. It now seems to be being applied to the titles of well-known books. Both of the Foundation’s UK trade mark applications were refused as inherently non-distinctive for and/or descriptive of the Class 9, 16 & 41 goods and services claimed. The applicant sought to overcome these objections by providing evidence of their use of the titles in the UK over many years. This evidence showed the significant sales of the books in the UK by publishers such as Anchor, Penguin and Puffin, as well as adaptations of the books into a film, television dramas and theatrical productions, all under the control of the Foundation. Even in the face of this evidence, the UK Hearing Officer maintained the objections on the basis that • The marks had been used by a number of publishers to indicate the title of the works. • This was not trade mark use but use to indicate the subject matter of the book. • The title was not being used to distinguish the goods or one publisher from those of another. • The average UK consumer had not been educated into seeing the sign as indicating the trade origin of the goods and services.

Unfortunately for the Foundation, during the past few years, the UK Trade Mark Office has developed a rather odd, some would say a very odd, practice in respect of trade marks which are, or contain, famous, real or fictional names, including the names of famous actors or actresses and pop groups. This practice leads to such marks being refused for certain goods and services as non-distinctive or descriptive (Sections 3(1)(b) and (c) of the UK Trade Marks Act 1994) since (for such goods and services), and according to the Office practice, these marks will be seen as nothing more “than a description of the subject matter of the goods/ services”.

Whilst it could be argued that “The Diary of a Young Girl” is inherently non-distinctive and/or descriptive in relation to recorded media, printed matter and entertainment, given the clear meaning of the phrase, the same is not true of the phrase “The Diary of Anne Frank”. Anne Frank is a distinctive trade mark. Indeed it is registered in the UK for printed matter and entertainment services. It follows, in the writer’s view, that The Diary of Anne Frank is also a distinctive trade mark for such goods and services, as well as for recorded media. The widespread use of the phrase, all apparently under the control of the Anne Frank Foundation, ought, if anything, to reinforce that distinctiveness. Yet, under the misconceived policy being followed by the UK Trade Mark Office, such use counts against the mark applied for and leads to its rejection (at least for key goods and services in Classes 9, 16 and 41).

The practice was applied by the UK Trade Mark Office, for example, in the case

The short term solution to the rejection of these marks by the UK Office is simple;

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file CTM applications for the marks. OHIM will certainly allow The Diary of Anne Frank for all goods and services and, given their inconsistent examination practices, they may also allow The Diary of a Young Girl. This can be deduced by OHIM’s earlier acceptances of well-known book titles such as Alice in Wonderland, Fifty Shades of Grey, the Harry Potter series of books, The Da Vinci Code, The Chronicles of Narnia and The Hobbit. The enforcement of such rights against third parties in the UK may be a trickier matter, given that the UK Office’s perverse practice on famous names has developed in the light of a number of prior English Court decisions (Tarzan 1970 RPC 450; Elvis Presley, 1999 RPC 597 and Linkin Park, O-035-05). However, in the world of trade marks, the number one rule is get the registration first and worry about the enforcement later. The difficulty in predicting the outcome of CTM opposition and cancellation proceedings continues to be a major issue for EU trade mark practitioners and their clients. The problem is illustrated by a number of recent cases heard by the (European) General Court. In the first case, Julius-K9 v Rocket Dog Brands (T-338/12), the CTM mark was a stylised form of K9 PRODUCTS (CTM 5966031). This mark was registered for a wide range of goods in Classes 18 and 25 by the Hungarian company Julius-K9 in February 2009. Just over a year later, an American company (Rocket Dog Brands) applied to cancel Julius-K9’s CTM registration on the basis of an earlier CTM registration (no. 3933256) for the mark K9 plus a Dog Device covering footwear in Class 25. The Cancellation Division upheld Rocket’s action, cancelling Julius-K9’s CTM registration for all of the Class 25 goods and some of the Class 18 goods. Julius-K9 appealed. The Fourth Board of Appeal annulled the original decision and rejected the cancellation action. In the Board’s opinion • The dominant feature of the earlier CTM mark was the Dog Device, whilst the dominant feature of Julius-K9’s mark was the element K9. It followed that the two marks had a low degree of visual similarity but a high degree of phonetic similarity. • Given that the goods at issue were primarily chosen by visual means, the low degree of visual similarity should therefore carry greater weight in the global assessment of a likelihood of confusion.


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• On that basis, in spite of the identity or close similarity of the two sets of goods and the phonetic identity of the two marks, this was overwhelmed by the visual differences between the marks. There was therefore no likelihood of confusion. The likely conceptual similarity between the marks (particularly amongst the English speaking public), associated with the common presence of the alphanumeric K9 and the phonetic equivalence of this (K9) to the English word “canine”, was dismissed (and ignored) by the Board, on the basis that it was very unlikely that K9 would be associated with a dog, in the absence of a graphic link to such an animal, and that the English pronunciation of “canine” and “K9” were sufficiently distinct that the relevant public would not link the two terms. The members of the Board are clearly not devotees of the British science fiction tv series, Doctor Who, in which several robotic canines were known for over thirty years as K-9 or of Transformers in which K-9 is a German shepherd dog. Perhaps not surprisingly, Rocket appealed to the (European) General Court. However, the Court dismissed the appeal and agreed with the Board’s analysis. In relation to the issue of conceptual similarity the Court ruled that • The evidence put forward by Rocket regarding the connection between K9 and dogs would be disregarded since it comprised only of articles taken from Wikipedia and Wiktionary which are both unreliable sources. • The evidence put forward by Rocket, regarding the use of K9 in the Doctor Who series, would be disregarded as it had only been presented, for the first time, before the General Court.

Hultafors (previously known as Snickers Workwear) had applied to register a stylised form of Snickers for goods in Classes 8, 9 and 25. This CTM application was opposed, in so far as it claimed Class 25 goods, by Calzatura, the Italian producer of Kickers footwear, on the basis of an earlier Italian trade mark registration for that mark (Kickers) covering identical Class 25 goods. The opposition was upheld by the Opposition Division and, on appeal, by the Fourth Board of Appeal. In the Board’s view, the two marks had an average degree of visual and phonetic similarity and, given the lack of meaning of either mark in Italy in respect of Class 25 goods, a conceptual comparison could not be made. The Swedish CTM applicant appealed to the General Court who rejected the appeal and the opposed CTM application. According to the Court, • When a mark is composed of word elements and figurative elements, the former should, as a rule, be considered more distinctive than the latter, since the average consumer will more easily refer to the goods by citing the name than by describing the figurative element. (Well, tell that to Rocket Dog Brands). • The dominant feature of the opposed CTM mark was the word Snickers. • The two word elements were only differentiated by their first letters Sn- and K-. • The argument that the beginning of a mark is more important than the end, when considering an overall impression, cannot apply in every case.

• A consumer when confronted with K9 in a clothes shop would not immediately perceive that term as a reference to dogs.

• There was therefore an average degree of visual and phonetic similarity between the two marks.

On that basis, and following the reasoning of the Board of Appeal, the Court rejected the appeal and, with it, Rocket’s cancellation action.

• Given that Italy contains a significant number of consumers who cannot speak English, this (large) group would not understand the (English) meaning of Kickers. It followed that these Italian consumers would not be able to make a conceptual comparison between the two marks.

It will come as no surprise to learn that Julius K-9’s products are dog related and that their clothing range is aimed primarily at dog handlers (see the website www.julius-k9. co.uk). The above case should be contrasted with the CTM opposition between Hultafors Group and Società Italiana Calzatura that also recently reached the General Court.

• Bearing all of the above in mind, the Court found that there was a likelihood of confusion and rejected the CTM application for Snickers (stylised) under Article 8(1)(b) CTMR.

Given the flourishing nature of the Italian fashion market, given the wide variety of clothing and footwear products found in that market and given the importance of a visual comparison, when assessing the similarity of marks for Class 25 goods, can it really be true that Italian consumers are so unsophisticated that they cannot differentiate between Snickers and Kickers fashion items yet, by contrast, they are sophisticated enough to discern between two sets of goods labelled with the common element K9? As an aside on the second case, it is clear that the word Snickers does have a well-known meaning, namely as a brand of chocolate bar. However, given that the Hultafors owned CTM application was also opposed by Mars, the producer of Snickers confectionery, it was probably difficult for them (Hultafors) to run that argument. At least in relation to Class 25 goods the European trade mark authorities have finally recognised the importance of the visual comparison of goods (when compared with the phonetic comparison). Unfortunately this does not apply in other commercial areas which can lead to very poor decisions such as the one the General Court gave in the CTM opposition between Fasel Srl and Aventis Pharmaceuticals (T-142/12). Fasel applied to register the stylised trade mark Cultra for the following Class 10 goods, “Skin rejuvenation equipment for beauty, cosmetic and medical purposes; ultrasonic cavitation equipment for beauty, cosmetic and medical purposes; pulsed light equipment for beauty, cosmetic and medical purposes; radio-frequency equipment for beauty, cosmetic and medical purposes; mechanised massage equipment for beauty, cosmetic and medical purposes; surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials”. This CTM application was opposed by Aventis on the back of earlier EU national trade mark registrations for the trade mark SCULPTRA covering identical and similar goods and services in Classes 5, 10 and 44. Amongst the earlier rights relied on were Czech and Hungarian registrations. The opposition was quite rightly rejected by both the Opposition Division and the First Board of Appeal on the grounds that the relevant public would have a relatively high level of attention and that the two marks had a low degree of visual, phonetic Continued overleaf

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and conceptual similarity. No doubt having been advised that, in CTM opposition practice, “you never know”, Aventis appealed to the General Court who, in a decision that confirms the view that “you never know”, annulled the Board of Appeal’s ruling and rejected the CTM application. The Court’s “reasoning” was as follows, • The two sets of Class 10 goods were identical or similar. • There was, as the Board of Appeal found, only a very low degree of visual similarity between the two marks. • However, the relevant public in the Czech Republic and Hungary could pronounce the two marks in a similar way which meant that, in those two countries, there was a phonetic similarity. • It could not be excluded that there was some conceptual similarity given that the two marks could be associated with culture and sculpture and there was a link between these two concepts. • It followed that overall the two marks had at least an average degree of similarity and that a likelihood of confusion existed. On that basis, the Court allowed the opposition and rejected the CTM application. So, let me get this straight. If the goods at issue here had been clothing, footwear or headgear, then, almost certainly, because of the low degree of visual similarity between the two marks, there would have been no likelihood of confusion and the opposition would have been rejected by the Court. However, because the goods are, for example, ultrasonic cavitation machines, goods that cost upwards of £200 each, the fact that relevant consumers in the Czech Republic and Hungary might (emphasise might) pronounce the two marks in a similar manner, and might make an extremely tenuous link first between Cultra and culture and Sculptra and Sculpture and then between culture and sculpture, will overwhelm the clear and significant visual differences between the two marks. This perverse judgment, which shows that the entirely formulaic approach of the European Court omits one crucial factor, namely common sense, illustrates perfectly the considerable difficulties faced by EU trade mark practitioners when trying to clear trade marks for registration and use in the EU.

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Another problem faced by EU trade mark practitioners when comparing trade marks, is deciding whether or not to discount nondistinctive features of a mark, when making the comparison. The difficulty was illustrated by the General Court case between Alkalon ApS and McNeil AB (T-580/11). Alkalon applied to register the trade mark Nicorono for a range of Class 5, 10 and 30 goods, including smoking cessation products. The CTM application was opposed by McNeil on the basis of an earlier CTM registration for the trade mark Nicorette covering identical or similar goods (in Classes 5, 10 and 30). The opposition was upheld by the Opposition Division, a decision that was overturned by the Second Board of Appeal. According to the Board of Appeal, the relevant public would have a higher than average level of attention, given the nature of the goods involved. Further, given the widespread knowledge of the word “nicotine” amongst relevant EU consumers, the common element, “Nico-”, that appeared in both marks, had a weak distinctive character. It followed that the attention of EU consumers would be drawn to the end of each mark. Given the differences between the suffixes –rono and –rette, there was no likelihood of confusion. McNeil appealed to the General Court, which annulled the Board’s decision and upheld the opposition. The Court began by agreeing with the Board of Appeal in relation to the high level of attention shown by the relevant EU consumers, the common knowledge (amongst those consumers) of the meaning of nicotine and the weak distinctive character of the prefix Nico-. After that however, it was all downhill for the CTM applicant. Turning those findings of fact on their head, the Court went on to find that • The fact that the common element Nico- has a weak distinctive character is offset by the fact that it represents two of the three syllables in the earlier mark (Nicorette) and two of the four syllables in the opposed mark (Nicorono).

It (Nico-) is therefore longer than the final part of the earlier mark (Ed: 2-1 in syllables, but 4-5 in letters; a draw surely) and as long as the final part of the mark applied for.

• (Based on this reasoning and in spite of the weak distinctive character of the common prefix), the Court continued that it must be concluded that Nico- makes a significant contribution to the overall impression produced by the two marks. It followed that the relevant public would attribute as much importance to Nico- as

to –rono and –rette in the opposed marks and their attention would be attracted to the common element Nico- at least as much as to the two suffixes –rono and –rette. • Given the similar length of the two marks, as well as the coincidence of Nicor- at the beginning of both marks, the visual similarities outweighed the differences. • The fact that the mark applied for had four syllables, whilst the earlier mark had only three, did not prevent a phonetic similarity being found. • The common presence of the (weak) prefix Nico- evoked “nicotine” and led to the conclusion that the two marks were conceptually similar. • Nicorono and Nicorette were therefore visually, phonetically and conceptually similar. When this finding was added to the identity of the two sets of goods, a finding of a likelihood of confusion was inevitable. It is no surprise to note that the smoking cessation market in the EU already contains a number of products identified by brands beginning with the prefix Nico-. See, for example, Nicobloc, Nicobrand, Nicosmart and Nicotinell, as well as Nicorette. No doubt there are others. This is entirely predictable given that Nico- is a natural prefix for any such mark, being closely associated with “nicotine” and, in the present context, with smoking cessation. The writer has no doubt that Nicorono could, and probably will, also quite safely coexist with all of these marks, including Nicorette, on the EU market. What the General Court has said here is essentially that McNeil should have a monopoly on the CTM register for three or four syllable words, between about seven and ten letters long, that begin with Nico- for smoking related products. This, in spite of the fact that the Court stated that it recognised the weak distinctive character of Nico- in relation to the claimed goods and the discerning nature of the relevant public. Well, it didn’t in practice because, if it had, it would have allowed the readily distinguishable marks Nicorono and Nicorette to coexist on the CTM register. Giving CTM proprietors overly broad rights in non-distinctive/borderline distinctive elements is a regular outcome of General Court decisions in CTM oppositions. This is yet another aspect of EU trade mark practice that makes clearing trade marks for registration and use a challenge.


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A warning to anyone working in the financial area who is thinking of devising a brand containing either the euro symbol or a logo close to the euro symbol; tread carefully. This has been confirmed by a recent case before the (European) General Court. A German individual, Heinrich Kreyenberg, obtained the figurative mark set out above (CTM 6110423) for goods and services in Classes 9, 16, 35, 36, 39, 41, 42, 44 and 45. Having unsuccessfully filed observations to prevent the registration of Mr Kreyenberg’s mark, the European Commission then applied to cancel the registration, under Article 52(1)(a) of the CTM Regulation, relying inter alia on Article 7(1)(i) CTMR. This absolute ground for refusal states “7(1)(i) trade marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest” shall not be registered as CTMs “unless the consent of the competent authority to their registration has been given”. The Cancellation Division rejected the application (to invalidate) on the basis that the registered trade mark did not contain a sign that was identical to the euro symbol. The Commission appealed and the Second Board of Appeal annulled the Cancellation Division’s decision and cancelled Mr Kreyenberg’s registration. In the Board’s view, the differences between the relevant feature in the CTM mark and the euro symbol were imperceptible. Given the wide variety of activities conducted by the EU’s institutions and other bodies, it could not be ruled out that the relevant public would believe that there was a connection between the CTM proprietor and those (EU) institutions/bodies. The other elements in the CTM mark would also suggest the idea of the EU. It followed that Mr Kreyenberg’s mark would mislead the EU public into believing that there was a connection between the goods and services provided under the CTM mark and the European Union, the body responsible for the use of the euro and the euro symbol. Mr Kreyenberg appealed to the General Court arguing inter alia that the euro symbol was not a protected emblem (under Article 7(1)(i) CTMR) and that the relevant public would merely see the sign as a reference to a currency. The Court disagreed. In the Court’s view

• The euro symbol was an emblem of particular public interest in the EU and was not excluded from protection under Article 7(1)(i) CTMR; • Signs that were identical with and similar to protected emblems were barred from registration under Article 7(1)(i); • The differences between the relevant feature of the CTM mark and the euro symbol were unlikely to be noticed by the average EU consumer; • Article 7(1)(i) applied to the symbols of international intergovernmental organisations. In order to fall foul of this provision, it was merely necessary that the EU public could believe that the relevant goods or services are endowed with the approval or guarantee of the body to which the emblem refers (in this case the European Union and the euro symbol). • Given the breadth of the EU’s activities and interests, the possibility could not be excluded that the relevant public would assume that goods and services claimed by Mr Kreyenberg, if provided by reference to the CTM mark, belonged to an area in which the EU had become active. The verbal element “MEMBER OF euro experts” served to create the impression that there is a limited circle of Euro specialists that have been officially recognised and approved by the EU. It seems to follow from this decision that the mere use of the euro symbol in a CTM mark, as in the EASY mark opposite (CTM 6374532), may not cast a shadow over its validity (and provoke the ire of the European Commission) but that, if that use is combined with other elements that might mislead the EU public, such as in the CE mark opposite (CTM 6697205), then watch out. The ability of the energy drinks company, Red Bull, to resist the registration and use of trade marks that come even remotely within their penumbra of protection is legendary. A good example is the UK opposition to Mr Jonathan Bryan Thornes’ UK trade mark application for Cool Cow and Device covering a variety of dairy and dairy farm related services in Class 35. Mr Thornes applied to register his Cool Cow logo for such (Class 35) services to supplement his Cool Milk campaign aimed at providing free and subsidised school milk to pre-school children in the UK.

The application was opposed by Red Bull GmbH under Section 5(2)(b) of the UK Trade Marks Act on the basis of its well-known “Two Charging Bulls device” (IR (UK) 971408) registered for advertising related services (again in Class 35). The Hearing Officer sensibly found that the differences between the two marks were such that a likelihood of direct confusion in the sense that one mark would be mistaken for the other had not been established. However, as so often in Red Bull cases, it was accepted that the average consumer would assume that Mr Thornes’ services would emanate from either Red Bull or a body associated with Red Bull. On this basis, a likelihood of confusion was found and Mr Thornes’ trade mark application was refused. Red Bull owns CTM rights that protect the trade marks Red Bull and the Charging Bulls device in all 45 classes. They also own CTMs for Bull per se in Classes 32, 33 and 42 and Red per se in Classes 18, 25, 28, 32 and 33 including, I kid you not, beers in Class 32 and wines in Class 33. The company appears to have OHIM in its thrall. Although some of these CTM rights are the subject of cancellation proceedings, it would be a brave man indeed who decided to register or use •

Any trade mark similar to Red Bull or the Charging Bulls Device for any goods or services, or

Any trade mark containing Red, Bull, an aggressive animal or anything similar for beverages in Classes 32 or 33.

The ruthlessness of the Red Bull sponsored Formula 1 driver, Sebastian Vettel, on the race track merely reflects a similar legal attitude to competitors (and even noncompetitors) who stray too close to the very wide penumbra of Red Bull trade mark influence. Another trade mark area that UK traders would be sensible to avoid is the choice of a brand containing the string –opoly for games. In Class 28 at least, Hasbro, the owner of the trade mark Monopoly, and the manufacturer of the well-known board game of the same name, appears, rather satisfyingly, to have a monopoly in such (-opoly) trade marks. Their latest success in maintaining that position involved a UK trade mark application for the trade mark Galatopoly for “games and playthings; playing cards” in Class 28 filed by Mr Olusegun Victor Ibitoye. This application was published in Continued overleaf

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Snippets continued January 2012 and was opposed by Hasbro on the usual relative grounds based on prior registered trade mark rights and their reputation in the prior use of the trade mark Monopoly, (Sections 5(2)(b), 5(3) and 5(4)(a)) of the Trade Marks Act 1994. The Hearing Officer concentrated on Hasbro’s trade mark rights in Monopoly, including a CTM registration that protected “toys, games and playthings” in Class 28, as well as a UK reputation in the mark that was accepted to be very high, “a household name”. Bearing this in mind, the Hearing Officer first decided that there was “a very low degree of similarity between Galatopoly and Monopoly” and that direct confusion between the marks was therefore unlikely. However, under UK trade mark practice, an indirect confusion between trade marks, that is a situation in which the average consumer would believe that the respective goods came from the same or economically linked undertakings, can also act as the basis for a successful opposition. In the Hearing Officer’s opinion, that was the case here. He took the view that the common element (-opoly) in both marks was so strikingly distinctive that the average consumer would assume that only Hasbro would be using it in a trade mark for games (and similar). This applied even where the other element in the later mark (Galat-) was distinctive in its own right. On this basis, and bearing in mind the identity and/or similarity of the two sets of Class 28 goods and the reputation of Hasbro in the trade mark Monopoly, the opposition brought under Sections 5(2)(b) and Section 5(3) succeeded, in the latter case because Mr Ibitoye’s use of the trade mark Galatopoly would be detrimental to the distinctive character of Hasbro’s trade mark Monopoly. It had been Mr Ibitoye’s intention to use his trade mark for a Christian board game focussing on the Life by the Spirit, a concept taken from the book of Galatians in the Bible. Perhaps when choosing his next trade mark, Mr Ibitoye should consult a less higher authority, a trade mark attorney, before proceeding. Another Premier League season begins and with it the prospect of controversial

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refereeing decisions. These usually go in favour of the bigger, better funded clubs such as Arsenal, Chelsea, Liverpool and Manchester United. However, in a recent match that took place on a neutral ground (the UK Trade Mark Office in Newport), Chelsea came off second best as a result of a goal that appears to have been yards offside. Chelsea Football Club applied to register the trade mark Chelsea for a variety of, mostly sporting, goods in Class 25. The application was opposed by a Mr George who owned a 30 year old UK trade mark registration for the trade mark Chelsea Man covering a selection of men’s and boys’ clothing and footwear (again in Class 25). Mr George, and his father before him, had used and also licensed the use of his trade mark for nearly 40 years. The Hearing Officer had no difficulty in finding that the two sets of goods were either identical or highly similar and that the two marks had a high degree of similarity. It inevitably followed from this that there would be a likelihood of confusion and the trade mark application was refused under Section 5(2)(b) of the 1994 Act. However, when this decision is reviewed again in slow motion, it would seem that the official got it wrong. The difficulty lies in the fact that Mr George’s UK trade mark registration for Chelsea Man was registered subject to separate disclaimers to the words Chelsea and Man. Further, according to the practice followed by the UK Trade Mark Office, (as set out in its Manual), “Where the only component of the earlier trade mark which could be regarded as creating a similarity with a later trade mark is the subject of a disclaimer to any exclusive right, the examiner will not consider the marks to be similar enough to create a likelihood of confusion. The registrar will treat a disclaimer as an admission that the disclaimed component of the earlier mark is not, by itself, distinctive of the proprietor’s goods and/or services. In that case, its presence in another party’s trade mark cannot give rise to a likelihood of confusion”. Thus, for example, in the earlier UK trade mark opposition between Cooper Tire and Rubber and Norhead, a UK trade mark application for the trade mark Gripster was allowed to proceed in the face of an earlier UK trade mark registration for Avon Gripster (stylised) covering identical/similar goods because Avon Gripster had been registered with a disclaimer to Gripster. This UK Trade Mark Office decision reflected an earlier English High Court decision, General Cigar v Partegas, which involved the

disclaimed name Cifuentes. So, for once, Chelsea FC appears to have been hard done by and a replay before the Appointed Person or the High Court may lead to a different result. Given that Mr George has recently refiled for his trade mark Chelsea Man in Class 25, and given that, if this new UK trade mark application is granted, it will be without any disclaimers, Chelsea needs to hope that this is a game of two halves. In the writer’s view, they need to set out their stall early doors, park the bus and press in midfield. Because, at the end of the day, this is a potential banana skin which, if they lose, will mean that they will have to focus on the league. Sometimes, what appeared to be a very good idea on the drawing board turns out to be a very bad idea in practice. The Chartered Institute of Patent Attorneys’ UK trade mark application for IP Translator claiming the Class 41 class heading, which was designed to be a test case to decide once and for all whether class headings should be interpreted as covering all goods and services in a class (OHIM’s former practice), falls into this category. As a result of this case and the usual Delphic utterances of the European Court of Justice on the matter (C-307/10), a new practice has developed, at least at OHIM, that regularly leads to huge specifications of goods and services, including every term in the relevant Nice classification, being published both on acceptance and on registration. CTM registration certificates containing upwards of 100 pages are now regular occurrences. It gets worse. There is a serious proposal being put forward by the European Commission that the new CTM Regulation (see draft Article 28) should allow the owners of existing CTMs to broaden their specifications beyond their literal meaning so they can have what they thought they had, namely a CTM covering the full list of goods or services in a particular class. Given that there are hundreds of thousands of such CTMs, the administrative nightmare that is likely to be caused by this provision, if enacted, can only be imagined. Here’s a thought, the writer throws it out there merely to allow it to be shot down; if the European authorities are so determined that trade mark owners should be allowed to continue to claim unjustifiably broad specifications of goods/services, why not simply allow


Home

them to claim “All goods or services in a particular class”? This would be a solution that would lead to specifications that were simple, clear and very cheap to translate. Whatever its drawbacks, such a practice would be infinitely preferable to the chaotic position that we now face in the EU.

In earlier editions of Make Your Mark, we have highlighted UK trade mark revocation actions in which the use of not very stylised versions of the trade marks AlfaD and CATWALK did not prevent the non-use revocation of UK trade mark registrations for the marks (ALFAD and CATWALK) registered in capital letters. A recent UK trade mark opposition (Thomas Plant (Birmingham) v 151 Products) confirmed the rather harsh practice now being followed by the UK Trade Mark Office. Thomas Plant applied to register a series of two marks (HOME MADE (words) and Home Made (stylised)) for a range of goods in Classes 8 and 21. 151 Products opposed the application, under Section 5(2)(b) of the UK Trade Marks Act, on the basis of an earlier UK trade mark registration for HOME MAID claiming similar goods and services in Classes 8 and 21. The opponent’s registration had been granted for over five years by the date of publication of Thomas Plant’s application, so, under UK trade mark opposition practice, 151 Products had to establish genuine use of its trade mark (HOME MAID) in the UK in relation to the registered goods in the five years prior to the publication date of the opposed trade mark application. 151 Products provided evidence of use of the two marks set out above, in relation to numerous registered products in the UK, during the relevant period. The Hearing Officer therefore needed to decide whether the use of these logos was “use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered”. If it was, 151 Products’ earlier registration would survive for the goods sold and the opposition would continue on that basis. The Hearing Officer decided that 151 Products’ use could not sustain their registration for the purposes of the opposition. In his view, in the case of the upper mark shown above, the presentation of the word “Home” in significantly larger letters than the word “MAID” changed not only the visual appearance of the trade mark as registered (to one in which the word Home was clearly the dominant visual element), but also was likely to alter the average

MAID

consumer’s perception of the trade mark from one which brought a female home help to mind to one which did not. The addition of a device of a spoon to the (upper) logo led the Hearing Officer to conclude that the distinctive character of 151’s registered trade mark was altered. Turning to the second (lower) logo, the Hearing Officer considered this to contain even more significant differences (when compared with HOME MAID in capital letters), in particular the device of a spoon replacing the letter “i”. He therefore again concluded that use of this (lower) logo did not establish genuine use of the registered mark HOME MAID. Since no genuine use of the registered mark had, in the Hearing Officer’s view, been established, the opposition, which had been solely based on Section 5(2)(b), was dismissed. Although this decision is perhaps not quite so harsh as the earlier decision in the Catwalk case, given the more significant stylisation of the marks in use, it does show that the UK Trade Mark Office is setting a pretty strict standard in relation to proof of use, perhaps a little too strict. Most companies, if they register their trade marks at all, register just one mark in their lifetime. On advice, this is almost always their house mark or their principal brand registered in capital letters. Placing a question mark over the validity of such a right by setting a particularly high standard for proof of genuine use in oppositions and revocation actions, is not a great encouragement to companies to register their trade marks, given the resistance that many companies have to the idea in the first place. When the well-known UK Sunday newspaper, The News of the World, finally closed its doors in July 2011, in the wake of the mobile phone hacking scandal, it was swiftly replaced by the introduction of a Sunday edition of News Group’s flagship newspaper, The Sun. The Sun On Sunday must have seemed like a low-risk choice of name for the new title, given the proprietor’s significant rights in The Sun. Well, it never rains but it pours. Two UK trade mark applications for The Sun On Sunday (and Sun On

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Sunday) filed by News Group on 8 July 2011 (just prior to the publication of the last edition of The News of the World, in fact), were both opposed by NCJ Media, the owner of the North East of England based regional newspaper, the Sunday Sun. The regional newspaper had been published since 1919, with associated website activities running since 2000. The News Group trade mark applications, which both claimed a wide variety of goods and services, including electronic publications in Class 9, newspapers in Class 16 and providing on-line electronic publications in Class 41, were said to be confusingly similar to the opponent’s earlier registered trade mark Sunday Sun covering “newspapers for sale in the counties of Cleveland, Cumbria, Durham, Northumberland, North Yorkshire and Tyne and Wear” in Class 16. (Section 5(2) (b) of the UK Trade Marks Act). NCJ Media also relied on their passing-off rights in the title Sunday Sun, acquired through nearly a century’s use, under Section 5(4)(a) of the Act.

SUNDAY

The Hearing Officer (Mr James) found that the two marks ((The) Sun on Sunday and Sunday Sun) were very similar and that the opponent’s mark had an above average level of distinctiveness, at least in the North-East of England, acquired through its long period of use. A detailed analysis of News Group’s goods and services led to the conclusion that there was a likelihood of confusion between the opponent’s Sunday Sun Class 16 goods and some, though not all, of News Group’s (The) Sun On Sunday claimed goods and services. The Section 5(4)(a) ground of opposition run by NCJ Media, based on their goodwill in the trade mark Sunday Sun, was also successful in part. Overall, this led to the refusal of News Group’s two UK trade mark applications for a wide list of goods and services including core products such as electronic publications, newspapers and providing on-line electronic publications, blowing a big hole in the UK applicant’s plans for (The) Sun On Sunday title in the UK. Ever pragmatic, it appears that News Group has taken the hint with regard to its (The) Sun On Sunday title, given the close attentions of NCJ Media, and has now rebranded to the name (The Sun Sunday) set out below in which the well-known The Sun title dominates and the word Sunday appears almost as an afterthought. Whether this will be enough to satisfy NCJ Media remains to be seen.

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UK COURT DIARY

“FINE” vs “FINE & COUNTRY” -how close is too close? Under Articles 9(1)(b) & (c) of the CTM Regulation and Sections 10(2) & 10(3) of the UK Trade Marks Act, a trade mark owner has a right to prevent all third parties, not having his consent, from using a sign which is identical with or similar to his mark in relation to goods and/or services covered by his registration, where there exists a likelihood of confusion, including the likelihood of association between the signs, or where his mark has a reputation in the Community and where use of the later sign would, without due cause, take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. In the case of Okotoks Ltd v Fine & Country Ltd ([2013] EWCA Civ 672), the Court was asked to consider how close is too close to a competitor’s brand. Since 2001, Fine & Country Ltd (F&C) provided licences to independent estate agencies to use the name FINE & COUNTRY, alongside their own business names, to market upper end real estate properties. F&C had seventy nine licensees using its FINE & COUNTRY brand in forty one stand-alone F&C offices, as well as fifty six dual branded offices, in the UK. In addition, it also had fifty seven offices overseas. The company had won numerous professional awards and had ranked consistently at the top of the list of UK real estate agents, with the largest number of sales of upper end

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Jenkins Trade Mark Newsletter

properties, and the largest number of these types of listings on its books. By contrast, Okotoks (who were better known under the name haart) historically targeted lower end real estate properties. However, in 2009, Okotoks decided it wanted to break into the upper end real estate market and launched a brand called finehaart. This was ultimately abandoned, since the new name still had an association with haart and the sale of low end properties. Having been aware of the success of the FINE & COUNTRY brand, and working with a former employee of F&C, Okotoks decided instead to adopt the name FINE, together with the strap line Selling fine homes throughout the country. At the time of adopting the FINE brand, Okotoks were well aware of the reputation of the FINE & COUNTRY brand, as well as the risk associated with “living dangerously” close to F&C’ s brand. When you live dangerously, you can get burnt, so it was no surprise that F&C sued Okotoks, claiming that their use of the word FINE, in relation to estate agency services, constituted passing off and/or trade mark infringement of F&C’s CTM and UK trade mark registrations for FINE & COUNTRY. On passing off, Okotoks argued in its defence that the claimant did not meet

the first requirement of a passing off action, namely, that F&C did not own the goodwill in the FINE & COUNTRY mark, as it was a dormant, non-trading company. However, on the basis that the parent company of F&C, GPEA Ltd, was, in substance, the entity granting the licences to use the FINE & COUNTRY brand, the High Court held that the goodwill in the mark had attached to the business (rather than to the individual licensees). By being a franchisee, F&C was not entitled to a share in the goodwill which attached to the FINE & COUNTRY name. So long as the relationship existed between F&C and GPEA Ltd, and GPEA Ltd had not abandoned control of the business, the goodwill attached to GPEA Ltd. The Court further found that the FINE marks were likely to confuse and deceive the public and that there was a realistic risk of damage in the future to the FINE & COUNTRY marks. It was further argued by Okotoks that the word “fine” was commonly used in the real estate field and that the word should be free for all traders to use. The Court did recognise here that, if a common word in the trade were adopted, there would need to be a tolerated level of deception. However, in the present case, passing off was established, based on the fact that the Judge found that Okotoks’ use of FINE contained similar


Section Head UK COURT DIARY

“Fine” Vs “Fine & Country”... continued font, capitalisation and underlining. The additional use of the strapline ensured that Okotoks’ use gave a similar overall impression to that of F&C’s FINE & COUNTRY mark. In relation to trade mark infringement, Okotoks raised a defence under Article 12(b) of the CTM Regulation (the equivalent of Section 11(2)(b) of the UK Trade Marks Act), claiming that F&C was trying to monopolise a descriptive word (‘fine’), and counterclaimed for the invalidity of the registered mark. They considered that the FINE & COUNTRY mark was primarily descriptive of the kind of properties on offer or was laudatory of the quality of those properties, or both. Again, the Court found in favour of F&C and held that the registered mark was distinctive, both inherently and on the basis of acquired distinctiveness. It followed, in the Court’s view, that the mark was “sufficiently distinctive to have warranted and continue to warrant registration”. In addition, the Court held that the registered mark had a “recognised separate existence apart from the descriptive and laudatory nature of the words themselves”. In the end, the Court was not swayed by Okotoks’ arguments and held that their use of the word FINE amounted to passing off and trade mark infringement. Okotoks appealed to the Court of Appeal.

Comment This decision reminds us that a licensor (or even a franchisor) can bring a passing off claim, despite the fact that they are providing related services to those of their licensee (franchisee). Ultimately, if there is damage or potential damage to the image of a brand, it follows that the ability to attract licensing fees will also be damaged. Instead of letting a Court decide, it is clearly far better to state explicitly in a license agreement which entity shall own the goodwill. This point may also be relevant when conducting trade mark availability searches and considering the ongoing validity of the registrations identified. It seems, from this case, that it will not be as easy to discount a licensor’s and/ or franchisor’s rights in a registration and, as such, great care should be taken before giving the “all clear” signal. It is also noteworthy to mention that, although the word “fine” could be seen as descriptive and laudatory, since the FINE & COUNTRY mark had acquired distinctiveness through use, the scope of protection was wider than it would normally be for descriptive terms. The lesson here is not to live dangerously close to a competitor’s brand. Find your own distinctive name and build your own reputation. By doing so, you won’t face the damaging and expensive consequences faced by Okotoks in this case.

After an assessment of whether or not the High Court had erred in interpreting the law, the Court of Appeal dismissed all of Okotoks’ grounds of appeal and upheld the decision that Okotoks’ use of FINE for estate agency services was indeed both passing off and trade mark infringement of Fine & Country’s rights in the FINE & COUNTRY mark. The main issues dealt with in the Court of Appeal’s decision merely served to confirm the judgment of the High Court.

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