Make Your Mark

Transcription

Make Your Mark

Chartered Patent Attorneys
Tr a d e M a r k A t t o r n e y s
Section Head
10th
Anniversary
Make Your Mark
Edition
Trade Mark Newsletter
EUROPEAN PERSPECTIVES
ON Business Names,
Make Your Mark
10th
Anniversary
ECJ Says “Shop Around”
B
usinesses often search new brand
names prior to launch. Less often
do they search their shop and company
names for conflicting earlier rights. Yet,
it is clear from the recent ECJ decision
in Céline SARL v Céline SA (C-17/06)
that conflicts can and do arise between
iN THIS ISSUE
European Perspectives
On Business Names, ECJ Says “Shop Around”
1
Alicante Abstracts
Ikea Furnishes Uncomfortable Outcome
4
New CTM Search System Launched
5
Geography 101: Surveying Reputation in an
Expanding E.U.
6
Perfume Challenge to Clothing Fails,
But Others May Fare Better
8
Restricting CTMs: Knowing When and How to
Push the Limits 10
ODA and RODA Wine Battle
Leaves Some with Aching Heads 11
In the U.K. Office
Gone But Not Forgotten:
How to Combat Phantom Rights 13
UK-IPO Fast-Tracks Changes 14
Target Stores Stung on Costs in Bull’s-Eye Case 15
U.K. News
Snippets 17
U.K. Court Diary
World Cup Willie Wins in Extra Time 25
“Hidden Use” Claim Dissected in Vet.local 27
Handling Parallel English and OHIM Proceedings 29
Perils of a Weak Mark in Just Employment 30
About Our Firm 32
business names and trade marks.
When should a business search its
own prospective name? In the event
of a conflict, how can infringement be
avoided?
Vive la Différence
The risks involved in choosing a business
name are often assumed to be low. As
a result, business names are frequently
selected without legal advice. E.U. law
recognises that business names carry out
a different function than brand names
(distinguishing a trader as opposed to
his goods), and consequently honest use
of one’s own name, including a business
name, is shielded from infringement
under Article 6 (1) of the Harmonisation
Directive.
The decision in Céline shows, however,
that this defence is hardly absolute. There
has long been a debate, in particular,
as to the nature of “honesty” under the
defence, and the ECJ’s approach in Céline
has further dented the shield.
Céline
The facts of Céline illustrate how trade
marks and business names can come into
conflict, even after many years of use.
In that case, Céline S.A. owned a French
trade mark registration for CÉLINE for
Continued overleaf
Issue
W
ith this issue, Make Your Mark
celebrates its 10th anniversary.
Our first issue hit the presses in spring
1998. The 10 years since have seen
massive growth in brand protection
and landmark changes in trade mark
law and practice.
The number of CTM filings has
skyrocketed beyond all expectations, and
the boundaries of the system have been
forcefully tested in areas ranging from
registrability to conflicts, infringement
and enforcement. In line with OHIM, the
UK-IPO has ceased refusing applications
based on prior rights unless opposition is
filed. The E.U. itself has nearly doubled in
size, and OHIM is at last making national
office searches optional.
Ten years of practice and precedent have
left many helpful markers by the wayside.
However, navigating the unremitting
flow of relevant cases, practice edicts
and guidance notes is a challenge for
professionals and brand owners alike.
Distilling the practical know-how and
impact from these prolific materials is
what Make Your Mark sets out to achieve.
The next 10 years promise to be as
exciting as the last. We hope you will
continue to find Make Your Mark a
trusted and reliable guide.
Spring 2008
European Patent Attorneys
On Business Names... continued
Advertising the fact that there is no
the costs and inconvenience of re-
link is likely only to draw the conflict
branding.
to the attention of the brand owner. It
Once a clear name is adopted, company
is unlikely to be effective in avoiding
name registration does not, on its
continued confusion if the reason
own, protect against encroachment by
for the link is inherent in the shop or
competitors. Businesses should not only
business name.
look around, but look forward, and
customers who know that the shop
So what should a business do if it learns
take advice on protecting their names
sells certain goods. Moreover, it is not
that confusion is developing between
as registered trade marks.
clear what kind of “affixing” amounts
its name and a prior trade mark? That
to use in relation to the goods. The
awareness may well mean that an
shop name may not appear on sewn-
“own-name” defence is unlikely to be
in or other integral labels, but if it
available if an infringement action is
appears on a sticker or swing tag with
brought. Certain actions may reduce
the price, or on a shopping bag, will
the risk, including ensuring, as far as
that amount to use in relation to the
possible, that the shop name is not
goods, as opposed to use in relation
being used “in relation to goods” in
to the business where the goods were
the legal sense. This is problematic,
purchased?
though, and ultimately it may become
clothes and shoes, in force since 1928.
When is Use of a Conflicting
not affixed to the goods, provided it
Céline SARL, a local shop in Nancy
Shop Name “Honest”?
is used in such a way as to establish a
trading since 1950, also operated under
Céline SARL further argued that it
link in the public mind between the
enjoyed a defence to infringement
shop name and the goods. However, it
because it had merely used its own name
is difficult to understand what kind of
in accordance with honest business
shop name would not establish such
practices.
a link, at least in the minds of actual
the name Céline in the sale of men’s and
women’s clothing. Decades later, Céline
S.A. learned of the conflict and sued for
trade mark infringement. It won at first
instance on the basis that the trade mark
and shop name were identical, as were
The ECJ had already affirmed in Anheuser-
the goods for which the trade mark was
Busch ([2004] ECR I 10989) that use of a
registered and the shop name was in use.
business name falls within the Article 6 (1)
Under Article 5 (1) (a) of the Directive,
(a) “own-name” defence. The question,
there was no need to prove a likelihood of
therefore, was how the national court
confusion in such cases of double-identity.
should interpret the requirement that
The case was not as clear-cut as it seemed,
the use be “in accordance with honest
however, and on appeal questions were
practices.”
referred to the ECJ on when a shop name
On this, the ECJ had already defined
could conflict with a registered trade mark
“honest practices” as a “duty to act fairly
in light of the own-name defence, and
in relation to the legitimate interests of
the circumstances in which the defence
the trade mark proprietor” (Anheuser-
should apply.
Busch, para. 82). In Céline, the ECJ went
Is Use of a Shop Name “Use in
further and outlined the factors to take
Relation to Goods”?
into account in assessing such honesty. In
Despite the identity of the marks and
particular, it identified the extent to which
goods, Céline SARL argued that its shop
the shop name may have come, wrongly,
name could not infringe regardless
to indicate a link with the brand owner,
whether the own-name defence applied,
and whether the shop owner was aware
because Article 5 (1) (a) required “use
of that. The extent to which the brand
in relation to goods.” Céline SARL
enjoyed a reputation from which the shop
contended that it was using Céline only
owner might profit was also relevant in
to denote its shop and business - not the
determining whether use of a business
goods sold within it.
name was “honest” under the defence.
The ECJ hedged its answer. It held that
Comment
where the use of a shop name does
In spite of these shortcomings,
though, the ECJ’s gloss on how to
construe “honesty” under the ownname defence is helpful. Confusion in
the shop owner is aware of it, are
of a conflict and failing to conduct a
now clearly relevant when assessing
trade mark search before adopting a
whether a later conflicting shop name
business or shop name may scupper
is shielded from infringement. It will
an “own-name” defence. Indeed, a
not be enough for a business to say
general finding of that nature would
that it did not encourage such a link, or
that there was no such link when the
name was first adopted. It seems clear
Although it sets out a clear 4-part
was adopted, but also throughout the
test for infringement (see this issue,
period of use.
“Hidden Use Claim Dissected in
Consequently, if a business becomes
Vet.local”), it gives rather little
aware that its name is being wrongly
name was affixed to the goods, or was
guidance on how to apply it.
associated with a prior trade mark, it
used in such a way as to establish a link in
In particular, on the question of
is not in its interest to ignore it or to
the public mind between the name of the
whether use of a shop or business
regard any resulting sales as a windfall.
shop and the goods.
name constitutes use in respect of
Merely denying the association to
The ECJ held that it was for the national
goods or services, the ECJ’s clarity
individual customers is unlikely to
court to determine whether a shop name
begins to dim. The judgment suggests
be enough to avoid infringement,
was used in relation to goods, taking these
that a shop name might be used in
particularly as not all the relevant
factors into account.
relation to the goods even where it is
public can be reached in this way.
in which a shop name could be used in
relation to goods, such as where the shop
2
Jenkins Trade Mark Newsletter
business name are warranted.
turning a blind eye to the possibility
honesty is not just when the name
However, there were certain circumstances
whether changes to the shop or
trade mark, and the extent to which
represents a missed opportunity.
not, indeed, “use in relation to goods.”
rights of the parties and determine
The ECJ offered no view on whether
that the material time for assessing
being carried on, then the use was
necessary to weigh up the respective
practice between a shop name and a
For many, the Céline judgment
nothing more than denote the business
On Business Names... continued
probably go too far, since very small
businesses may not have the resources
at the outset to support exhaustive
legal enquiries. Nonetheless, in cases
where the resources were available
and enquiries at the outset would have
been reasonable, failure to make them
could become a relevant factor.
There is, however, no doubt that
conducting a trade mark search
prior to using and investing in a new
business or shop name is the best
protection against possible conflicts
with registered brands. This can help
businesses avoid adopting names with
potential problems and substantially
reduce the scope for conflict and
Make Your Mark
3
Alicante abstracts
Alicante abstracts
Ikea Furnishes... continued
Ikea Furnishes
Comment
Certain elements of this decision are
surprising, to say the least.
Uncomfortable
Outcome
S
wedish furniture giant Ikea
suffered a blow in January, when
the CFI upheld a CTM for an IDEA
Logo for furniture in the face of the
well-known IKEA mark (Case T-112/06,
Inter-Ikea Systems BV v OHIM).
The decision underlines the often
subjective nature of the comparison
between word and composite marks,
and reinforces the need for caution
when weighing conflicts between
them.
Getting the Idea
Ikea owned a CTM and national
registrations for the IKEA word and IKEA
against a white roundel, surrounded by a
black rectangle. The registrations covered
furniture.
Based on these, IKEA applied to cancel
a later CTM for IDEA Logo of Walter
Waibel, in which the word appeared inside
white cubes making up a rectangle, with
the top left corner shaded in and tipped
up away from the rest of the cubes. Waibel
also claimed furniture.
Ikea argued that the marks were
similar and that, taking account of its
international reputation, there was a
likelihood of confusion between the IDEA
Logo and the IKEA marks. It asserted that
the words IKEA and IDEA were dominant
in the composite marks, in particular, and
that the marks were visually and aurally
similar.
Tables Are Turned
The Cancellation Division found for Ikea,
but Ikea’s victory was short-lived. The
Board of Appeal overturned it, holding
that the IDEA Logo was visually and
conceptually different to the IKEA marks.
Any aural similarities were likely to be
inconsequential since furniture purchases
were normally made visually. The Board
took into account that furniture tended to
4
be expensive and the average consumer
took time and care over such purchases.
Ikea appealed to the Court of First
Instance, which handed down its
judgment in January. In it, the Court
rebuffed Ikea’s arguments and upheld the
BoA.
It held, first, that the BoA had been
right to regard the attention span of the
average furniture consumer as relatively
high. Even if not all furniture is expensive
(Ikea’s furniture in particular was often
aimed at modest budgets) and a purchase
can be made quickly, nonetheless the
average consumer typically takes time
to consider whether the item will fit
in with existing furnishings and décor.
Moreover, furniture is not something
that a consumer buys every day. Unusual
purchases tend to involve a greater level
of attention than normal (see also Case
T-147/03 Devinlec v OHIM, TIME ART
(QUANTUM) [2006] ECR II-11, para. 63).
On the comparison of marks, the CFI
noted that a complex mark and another
mark that is identical or similar to one of
its components will not be regarded as
similar overall unless the shared element
is dominant in the complex mark. Such
dominance is likely where the shared
component dominates the image of the
complex mark in the public mind, such
that the other components are negligible
in the overall impression (Case T-6/01
Matratzen Concord v OHIM – Hukla Germany
(MATRATZEN) [2002] ECR II-4335, para.
33).
The CFI observed that in a composite
mark, the word element is not necessarily
dominant (Case T-3/04, Simonds Farsons
Cisk v OHIM – Spa Monopole [2005] ECR
II-4837, para. 45). In this case, the CFI
found that the word IDEA was not the
dominant element in the later mark,
despite its visual prominence, since IDEA
was an “international expression” with
similar equivalents in almost all E.U.
languages. Its distinctiveness was therefore
low by comparison with what the Court
regarded as an “unusual” and intrinsically
distinctive figurative device of cubes.
The word element appeared within the
cubes in the centre and was therefore
dependent on the figurative device. The
CFI regarded the cubes as being at least as
important as the word IDEA in the overall
representation.
Despite the clear similarities between the
IKEA and IDEA words, the CFI regarded
the figurative elements of the IDEA Logo
as sufficient to avoid visual similarity, even
between the IDEA Logo and the IKEA
word mark.
The CFI acknowledged some aural
similarity, but considered it minimal
because of the different sounds produced
by the consonants “d” and “k”.
Finally, the CFI upheld the BoA’s finding
that the marks were conceptually
different. “Idea” was a basic English
word that was likely to be understood
throughout the E.U., whereas IKEA was
a coined word with no meaning other
than to denote the appellant. Accordingly,
applying Mühlens v OHIM – Zirh
International (ZIRH) (Case T-355/02, para.
46), the Court found that the marks were
distinguishable on a conceptual level.
Ikea’s overarching reputation in the
furniture field did not avail it in this case.
Reputation, the CFI held, was relevant to
assessing whether there was a greater or
lesser likelihood of confusion, but this
question only arose once it was established
that the marks in question were identical
or similar. The low degree of aural
similarity was not regarded as sufficient to
give rise to similarity between the marks,
and consequently Ikea’s reputation never
came into play.
The CFI was no doubt correct in
observing that furniture purchases
generally require a high level of
attention. Anyone who has ever
visited an Ikea store will know that the
process is often not simple or quick,
and Ikea itself emphasises style and
décor, elements that require thought
and planning.
However, the IKEA brand is
internationally famous and although
the word is a neologism, it is so
strongly associated with the Swedish
furniture retailer that, where furniture
is concerned, it could plausibly be
brought to mind by a logo prominently
featuring a word such as IDEA, which
differs by only a single middle letter.
Arguably, even the low level of aural
similarity found should have been
enough to allow the Court to consider
the effect of the retailer’s reputation
on the public’s perception of the later
mark. If this had been done, then the
weight attributed to the visual and
conceptual differences might have
been more limited.
Moreover, although the CFI was
following a previous ruling in holding
that reputation was not relevant to
determining whether marks or goods
were similar, this logic seems strained.
It has long been acknowledged that
strong inherent distinctiveness or a
reputation entitles marks to broader
protection (Canon Kabushiki Kaisha v
Metro-Goldwyn-Mayer Inc., Case 39/97,
para. 18). If that broader protection
is not invoked until after it has been
decided that marks and goods are
similar, then its effect would be muted
indeed.
On a more general level, though, this
decision shows that the impact of
figurative devices when comparing
word and composite marks is highly
subjective. A further recent CFI
decision involving the composite mark
OMEGA3 and Rainbow Device found
the figurative element to be more
or less inconsequential, when many
might have regarded it as at least as
distinctive as the IDEA cube device
(Ekabe International SCA v OHIM,
Case T-28/05). Clearly, the impact of
figurative elements in the comparison
of marks can be hard to predict.
If there is a take-home message from
Ikea, it must be that when considering
conflicts between word and composite
marks, the words in the composite
mark should not automatically be
assumed to dominate. Unless the goods
are of a type generally requested
orally, a substantial figurative element
may be regarded as equally or more
prominent in the overall impression.
Where purchases are made visually,
then the more care taken in the
purchase, the more important the
figurative element is likely to be. In
OMEGA3, the goods were everyday
foodstuffs, but in Ikea they were
less frequently purchased items
whose selection involved more care.
In assessing a possible conflict, the
average consumer’s attention span
is something that even a famous
challenger cannot afford to ignore.
New CTM Search System LAUNCHED
O
n 10 March 2008, the national
searches conducted in respect of
CTM applications became optional.
Applicants who want to receive the
customary national search reports, which
identify potentially conflicting marks in
the participating E.U. member states,
must now request them on filing and pay
a fee. CTM search reports, highlighting
earlier CTMs, will continue to be issued
for all applications.
Applicants requesting national searches
must pay for searches in all participating
countries1. This is disappointing given
the past disparities in the usefulness
of different countries’ search reports.
However, the new reports are expected
1
to share a common format, which may
resolve some of these concerns. The
reports will provide application, priority
and registration dates, holder name and
contact details, representations of the
marks and the classes claimed.
The search fee is €192.
Making the national searches optional
could hand a small costs advantage to
many applicants, who often do not need
them because they have already searched
the countries of actual commercial
interest. However, the attractiveness of
the searches is diminished by the fact that
some of the most commercially important
countries, such as France, Germany and
Italy, continue to refrain from searching.
Moreover, the extent to which the new
harmonised search reports will make up
for the shortcomings of the old reports
will not be clear until the reports begin to
be issued.
For now, subscribing to the national
searches is probably worthwhile as a lowcost means of obtaining basic information
on third-party rights. Unless national
searches have already been conducted, we
therefore recommend including searches
in new CTMs until the system has been
tried and its usefulness assessed.
We will report further details of the new
system on our website, www.jenkins.eu, as
they become available.
Austria, Bulgaria, Czech Republic, Denmark, Finland, Greece, Hungary, Ireland, Lithuania, Poland, Portugal, Romania, Slovak Republic, Spain, Sweden and the U.K.
Make Your Mark
5
Alicante abstracts
Geography 101:
Surveying Reputation
in an Expanding E.U.
S
ecuring a CTM or defeating one
may require proof of a reputation
in one or more E.U. states. In a region
of 27 countries, however, it can be
costly if not impossible to prove
reputation across the entire E.U. or,
in the case of a small business, even
across a member state. In two rather
different cases, the ECJ recently
pondered how far parties must go to
prove this point on both an E.U. and a
member state level.
declarations represented some 90% of the
Community Level
services (Case C-25/05 P, Storck v OHIM
“Reputation” in the first case took the
form of acquired distinctiveness, and the
question before the CFI was the extent to
which it needed to be proved across the
E.U. where the mark in question was a
CTM (Glaverbel SA v OHIM (T-141/06).
[2006] ECR I-5719, para. 83).
In that case, the applicant sought
protection for a figurative mark consisting
of a patterned sheet of glass in respect
of glass and glass sheets in Classes 19
and 21. OHIM rejected the mark on the
basis that it was devoid of any distinctive
character. On appeal to the CFI, the
applicant argued, inter alia, that the mark
had acquired distinctiveness “in the
Community” under Article 7 (3) of the
CTMR.
short shrift to the supporting sales figures
In support, Glaverbel filed declarations
from trade journalists, glass processors,
wholesalers and competitors in 10 of the
15 countries that were E.U. member states
on the date the application was filed. The
declarants stated that they immediately
recognised the mark as denoting a glass
design produced by Glaverbel. The
only member states not covered were
Denmark, Finland, Sweden, Greece and
Ireland. The territory covered by the
6
E.U. population, and Glaverbel submitted
that they were representative of the E.U.
as a whole.
Despite this impressive showing, the CFI
upheld OHIM’s rejection of the CTM. It
held that to prove acquired distinctiveness
under Article 7 (3), an applicant must
show that at least a significant proportion
of the relevant public in the member states
where the objection applies identify the mark
as denoting the applicant’s goods or
In this case, the mark was a figurative
mark without any words, which was likely
to be perceived in the same way in all
member states. The objection therefore
applied to the E.U. as a whole. Giving
and advertising material filed in respect of
the missing 5 countries, the CFI observed,
“proof of distinctive character acquired through
use cannot be furnished by the mere production
of sales volumes and advertising material.”
As Glaverbel had not shown acquired
distinctiveness in all 15 member states, the
CFI upheld the rejection.
Member State Level
On a comparatively microcosmic level, the
ECJ recently examined a similar issue of
geographical extent in Alfredo Nieto Nuño
v Leonci Monlleó Franquet (Case C-328/06),
a reference from the Spanish national
court.
Here, the issue was whether Monlleó
Franquet could invalidate a Spanish
registration for FINCAS TARRAGONA,
registered for property services in Class
36, on the basis of prior use of FINCAS
TARRAGONA for estate agent services in
Spain since 1978.
Monlleó Franquet pleaded that his
earlier mark was a well-known mark in a
member state on the date of application
for registration of Nieto Nuño’s mark,
under Article 8 (2) (d) CTMR, and given
the identity of the marks and the services
at issue, invalidation should be granted
under Article 8 (1) (a) CTMR.
The use by Monlleó Franquet, however,
had been restricted to the city of
Tarragona and its surrounding area. The
question before the ECJ was whether a
well-known mark “in a member state”
under Article 8 (2) (d) could include one
that was well-known only in a city and its
surrounding area.
The ECJ drew an analogy between this
case and the 1999 decision in General
Motors Corporation v Yplon S.A. (Case
C-375/97 [1999] ECR I-5421, para. 28).
That case concerned the question of
“reputation” in a member state under
Article 5 (2) of the E.U. Harmonisation
Directive in the context of infringement
proceedings. Following similar reasoning,
the ECJ in Nieto Nuño held that in the
absence of specific wording requiring
such an interpretation, the words “in a
member state” could not be construed
as meaning “throughout a member state.”
They instead meant either throughout a
member state or in a substantial part of it.
Applying this reasoning, the ECJ held that
the customary meaning of “in a member
state” precluded a finding under Article 8
(2) (d) CTMR that a mark was well-known
if the reputation extended only to a city
and its surrounding area, as these were
not “a substantial part” of a member state.
Alicante abstracts
Geography 101... continued
Comment
These cases are especially interesting
for smaller businesses active in the E.U.
To some extent, the questions raised
had been considered before. The
decision in General Motors presaged
the outcome in Nieto Nuño, for
example. However, the ECJ’s dismissal
of “a city and its surrounding area” as
capable of representing a substantial
part of a member state is notable,
first because it is essentially a finding
of fact, when the ECJ’s normal role
under the reference procedure is to
provide guidance on E.U. law, and
second, because it is so categorical.
Instances may be rare, but in a diverse
and expanding E.U. there may well be
countries that are sufficiently small, or
in which most of the population lives in
one or two main cities, that a different
finding of fact in another case might
be warranted. If such cases arise, a
further reference might well be made.
In general, though, it is clear that
smaller businesses trading in limited
geographical areas will find it
challenging to assert unregistered
rights in their brands and names
against later comers. National laws
may permit actions based on passing
off or unfair competition and national
registrations may be challenged
on the same basis under Article 4
(4) of the Directive. However, such
actions are generally more costly
and evidence-intensive than a trade
mark infringement action, and the
outcome is often less predictable. It
is normally a better investment to
obtain a registered trade mark at the
outset, even if activities are likely to be
geographically limited.
end-users, and it failed to specify its
market share in each member state.
Nonetheless, the declarations it filed
seemed persuasive as far as they went,
and the outcome may have been
different had it supplied declarations
for all 15 countries.
More problematic is what would
have happened if Glaverbel had filed
declarations for 13 or 14 member
states, or where the omissions related
to countries where the relevant goods
or services were commercially minor
for all businesses in the relevant sector.
Rejecting a CTM in such circumstances
would seem unduly harsh, but the CFI’s
reasoning could permit it.
Glaverbel emphasises the critical
importance of tailoring evidence
for the case and of supporting sales,
advertising and market share figures
with evidence that the relevant public
recognises the mark in every member
state in which an objection applies.
Building such a case for nondistinctive
non-verbal marks may pose a
formidable challenge in a region that
now embraces 27 member states.
English-language word marks present
similar challenges given the extent
to which English is understood and
spoken internationally.
An early assessment of rights and
prospects and a realistic approach
are essential. In cases where evidence
would not support a CTM filing,
national protection may be the better
option. With lateral thinking and
creative advice, however, smaller
businesses can rise to the geographical
challenges of an expanding E.U.
As for businesses who seek CTMs based
on acquired distinctiveness, Glaverbel’s
experience is disconcerting. There
were, to be sure, other weaknesses
in its case apart from the mere lack
of 5 declarations. In particular, the
declarations it did file emanated
only from professionals rather than
Make Your Mark
7
Alicante abstracts
Perfume Challenge... continued
Alicante abstracts
Perfume Challenge
to Clothing Fails,
But Others May Fare Better
O
ppositions based on dissimilar
goods or services present special
challenges. The CFI examined some
of those recently when it rejected an
appeal by a perfume house opposing
a CTM for clothing and leather goods
(Mühlens GmbH & Co. KG v OHIM,
Case T-150/04). Although the judgment
shows that the perfumier in question
was clearly off the scent, others may
fare better by heeding the Court’s
guidance.
TOSCA v TOSCA BLU
Mühlens involved a CTM application for
TOSCA BLU for clothing and leather
articles in the name of Minoronzoni Srl.
Mühlens, a German perfumier, opposed
on the basis of unregistered rights in
TOSCA for fragrances, soap and the like.
Mühlens claimed that there was a
likelihood of confusion under Article
8 (1) (b) CTMR, and that, if the goods
were regarded as dissimilar, Mühlens’
mark enjoyed a reputation in Germany
and the use of TOSCA BLU would give
rise to unfair advantage or detriment to
the distinctive character of TOSCA under
Article 8 (5) CTMR.
Although OHIM and the Board of
Appeal regarded the marks as similar
and found that TOSCA was well-known
for perfumes in Germany, they rejected
the opposition on the grounds that there
was no similarity of goods, and therefore
no likelihood of confusion. They further
held that the opposition under Article
8 (5) was unfounded because that
provision required the earlier mark to be
registered and therefore did not extend to
unregistered marks, however well-known.
Arguments on Appeal
On appeal to the CFI, Mühlens argued
that fashion houses often licensed their
marks for use in the perfumery field, and
that the public was therefore accustomed
to seeing the same marks in use for
perfumes, clothing and leather goods. All
these goods related to image, and were
therefore complementary.
Mühlens also argued that Article 8 (5)
covered unregistered “well-known” marks,
since well-known marks were expressly
recognised as “earlier marks” under
Article 8 (2) (c). Mühlens further argued
that the phrase “for which the earlier
mark is registered” in Article 8 (5) was
a drafting error, and that the wording
intended was, “for which the earlier mark
is protected.” It pointed to German national
8
law, which protected well-known marks in
respect of dissimilar goods and services,
and argued that Community law should
be interpreted likewise.
“Aesthetic Complementarity”
On the question of similarity of goods,
the CFI was unmoved by Mühlens’
submissions.
It accepted that certain goods, particularly
in the fields of fashion and body care,
were “aesthetically complementary” in
the eyes of the relevant consumer despite
having a different nature, purpose and
method of use. However, it held that
mere “aesthetic complementarity” was not
enough to give rise to similarity of goods.
A party must prove that there was also “a
genuine aesthetic necessity, in that one product
is indispensable or important for the use of
the other and consumers consider it ordinary
and natural to use these products together…
Consumers must consider it normal that the
goods are marketed under the same trade mark,
which normally implies that a large number of
producers or distributors of these products are
the same” (paras. 36 and 37).
In this case, despite the common
relevance of the products to personal
image, Mühlens failed to show that
perfumery and clothing and leather goods
are indispensable or important for each
other’s use or that the average consumer
would regard the use of the products
together as normal and natural. The
appeal on similarity of goods therefore
failed.
Well-Known Marks and
Article 8 (5)
Mühlens could still have prevailed if it
had persuaded the CFI that Article 8 (5)
extended to well-known unregistered
marks. The clear wording to the contrary
in the provision, however, meant that this
was always an unlikely outcome.
It was no surprise, therefore, that
Mühlens’ arguments on this point also
failed. The CFI held that well-known
marks were indeed recognised as a form
of earlier mark for the purposes of Article
8 generally, but that to succeed under its
sub-provisions the express requirements
of the relevant sub-paragraphs had to
be met. In Article 8 (5), one of those
requirements was that the earlier mark
with a reputation had to be registered.
The CFI saw no divergence between
the CTMR and the Paris Convention on
this point. It noted that under the Paris
Convention, well-known marks were
protected against the use of identical or
similar later marks for identical or similar
goods, where there was a likelihood
of confusion. They did not receive
extended protection against later marks
for dissimilar goods or services of the
type accorded by Article 8 (5) CTMR.
Therefore, it was not surprising that
Article 8 (5) itself did not grant such
extended protection to unregistered wellknown marks.
The CFI rejected Mühlens’ assertion
that the requirement of registration in
Article 8 (5) was a drafting error, and
dismissed the suggestion that Community
law should be interpreted in accordance
with German national law on the extent of
protection accorded to well-known marks.
In the CFI’s view, the wording of Article 8
(5) was clear, and Mühlens’ case failed to
rise to it.
unregistered marks. The ambiguity had
to be resolved, and Mühlens dispels
all doubt that a registered mark is
needed to succeed in an opposition or
invalidation under Article 8 (5).
That an earlier registered mark is
required for success, however, does
not necessarily mean that it must be
registered at the time the opposed
application was filed. Since Article 8 (5)
defines “earlier mark” by reference to
Article 8 (2), which includes pending
earlier applications, an Article 8
(5) challenge based on a pending
application can still be a winning
formula provided the prior application
is ultimately registered. Suspension
of proceedings may be appropriate in
such cases.
On similarity of goods, Mühlens
could have attempted to prove
that certain items of clothing were
normally and naturally used together
with perfumes, such as cocktail
dresses or ladies’ suits. Whether such
an argument would succeed will have
to await consideration by another
court, but some evidence could
have been mustered in support of it
and, moreover, common experience
points to its accuracy. Without any
comparable arguments or evidence,
Mühlens were never likely to carry the
appeal under Article 8 (2) (b).
The real importance of Mühlens may
be in showing how a challenge to
a later mark for dissimilar goods or
services can succeed where the earlier
mark is not registered or has no
reputation, or where unfair advantage
or detriment cannot be proved. In
such cases the concept of “aesthetic
complementarity” could be a powerful
tool. If it can be shown that goods are
normally and naturally used together,
even goods that appear different
might be brought under the wing of
Article 8 (1) (b), requiring only proof of
similarity of marks and a likelihood of
confusion.
Toothbrushes and toothpaste might
be one such example, and the fashion
and body care fields, in particular,
are full of others. In the wake of this
judgment, parties in these fields and
others may well see better prospects
for defending a broader patch.
Comment
Mühlens’ appeal may always have
been likely to fail in light of the
clear wording of Article 8 (5).
There was, however, a credible
basis for Mühlens’ challenge.
Article 8 (5) refers to goods or
services for which the earlier mark
is “registered,” but at the same
time defines “earlier marks”
by reference to Article 8 (2),
which includes well-known
Make Your Mark
9
Alicante abstracts
Restricting CTMs:
Knowing When and How to
Push the Limits
W
hen CTMs are attacked, brand
owners often seek to defuse the
conflict by restricting their goods or
services. However, not all restrictions
are equal, and OHIM can and does
reject proffered limitations for a
variety of reasons. Moreover, timing
can be key: a limitation entered too
early might prove a concession too
much, but one entered too late might
be rejected altogether. It can be hard
to judge how much to rule out and
when to do it, but careful drafting and
strategising can help gain the edge.
The power of positive wording is clear,
Timing is Everything
therefore, but it is not always obvious how
Purely positive restrictions avoid the
POSTKANTOOR trap, but even those
sometimes face special difficulties, as
highlighted by the CFI’s decisions in
Tegometall and Georg Neumann GmbH v
OHIM (Case T-358/04).
Be Positive
the CFI considered its compliance with
Restrictions typically involve either
deleting items from a specification, or
expressly excluding items or categories
of items. Normally they are entered
in an effort to overcome an objection
that a mark is descriptive or devoid of
distinctiveness, or that it conflicts with
third-party rights. Deletions are positive
restrictions; exclusions are negative ones.
OHIM’s approach to each is different.
POSTKANTOOR, the outcome would
Negative restrictions have long been
problematic. Although excluding specific
goods may be clear enough, excluding
categories of goods or goods with certain
characteristics may result in a specification
that is ambiguous as to scope. In line
with the ECJ’s ruling in Koninklijke
KPN Nederland (POSTKANTOOR) (Case
C-363/99, [2004] ECR I-1619), negative
restrictions are not acceptable where they
would result in registration “only in so far
as the goods or services concerned do not possess
a particular characteristic” (POSTKANTOOR,
para. 114). The ECJ reasoned that
such restrictions would leave third
parties uncertain as to the scope of the
registrations and whether proposed use
could infringe.
to achieve it. This point was underlined
in a recent CFI appeal, Tegometall
International AG v OHIM (Case T-458/05),
in which a registrant sought to deflate a
challenge to its CTM by restricting it to
“shelves and parts of shelves, in particular
hanging baskets for shelves, all the aforesaid
goods of metal and not of imitation wood.”
The restriction was offered for the first
time on appeal to the CFI, and was
rejected as out of time. However, had
probably have been the same. While the
restriction to “goods of metal” is positive,
“not of imitation wood” arguably excludes
a characteristic of certain types of metal
shelving, namely those that imitate the
look of wood.
It is difficult to imagine a fully positive
wording that would have achieved the
same result. However, with careful
drafting, it is not impossible. One might,
for example, restrict one’s goods to “all
being of metal and in metallic finishes.”
Where the challenge is mounted by a
third party, an applicant or registrant
could, as a private matter, undertake in a
settlement agreement to refrain from use
in imitation-wood finishes.
By remaining positive on the register
and leaving the negative for private
agreements, a party can achieve a
restriction that gives an adversary
adequate comfort, while at the same time
strengthening the restricting party’s hand
in the proceedings in case settlement
ultimately fails.
In Tegometall, the registrant saw its
restriction rebuffed as too late. It may
have been considered had it been
offered before OHIM or OHIM’s
Board of Appeal. However, the CFI
held that restrictions offered for the
first time before the Court could only
be considered if they amounted to a
withdrawal or surrender of protection in
respect of certain goods or services, or to
a withdrawal of the appeal in relation to
the excluded items. They would not be
considered where they sought instead,
as in Tegometall, to alter a characteristic
of the goods or services claimed. Such
restrictions would effectively change the
subject matter of the appeal and, as the
CFI’s role was to review the legality of
OHIM Board of Appeal decisions, could
not be considered.
In Georg Neumann, another restriction
entered before the CFI was rejected
on grounds of timing. In this case, an
application to register the shape of a
microphone head for “microphones, in
particular studio microphones, condenser
microphones, pressure-gradient microphones
and their parts” in Class 9 met with a
nondistinctiveness objection. The CFI
rejected the applicant’s argument that
the goods were directed at a specialist
audience, finding (in line with OHIM’s
practice) that the words “in particular”
were exemplary rather than limiting.
The applicant then attempted to limit
Alicante abstracts
Restricting CTMs:... continued
to “studio microphones and their parts”
to remove the doubt as to the specialist
nature of the relevant consumer.
Although the restriction was positive and
clear, the CFI rejected it. It held that
its effect would be to alter the relevant
public for the purpose of assessing
distinctiveness. As such, it would alter the
subject matter of the appeal and could
not, therefore, be allowed.
Comment
Well-worded restrictions can add punch
to an argument for registrability and
strengthen a defence when a CTM is
challenged. However, the outcomes in
POSTKANTOOR, Tegometall and Georg
Neumann highlight the pitfalls that
lurk.
It is clear from POSTKANTOOR that
better restrictions will almost always be
positive ones. Negative restrictions, if
necessary, should take their place in a
private undertaking if settlement is on
the table. If settlement fails or is not an
option, an accepted positive restriction
at the right stage might secure the
desired result for the restricting party
and avoid the need for further appeals
and the associated costs and uncertainty.
It is also imperative that restrictions,
to be effective, must be entered at the
right time. Most critically, they should
be offered before OHIM or OHIM’s
Board of Appeal, and not for the first
time before the CFI. Unless a restriction
is purely a withdrawal of certain goods
or services, chances are good that it will
be regarded as altering the scope of
the proceedings under appeal. Georg
Neumann shows that even the mere
deletion of certain goods or services
before the CFI can be risky if it has the
potential to alter the relevant public.
Restrictions intended to overcome
distinctiveness or descriptiveness
objections will often have this effect.
Determining when the time is right
to offer a restriction is frequently a
matter of fine judgment. A restriction
may avoid a negative outcome, but if
there is a chance of success without
it, it is tempting to press on with the
broader claim in the hope of achieving
better protection. These conflicting
desires must be balanced by realism:
while it may be reasonable to withhold
a restriction at first instance, holding it
back before the Board of Appeal can
involve real risks. When the stakes are
high, it may often be better to secure a
partial victory than lose everything by
restricting too late.
ODA and RODA Wine Battle
Leaves Some with Aching Heads
V
intners throughout Europe are
puzzling over the implications
of the recent Court of First Instance
finding in Castell del Remei SL v OHIM
(Case T-101/06). They are not the
only ones: brand-owners in general
are struggling with an approach that
allowed the Court to telescope the
composite mark CASTELL DEL REMEI
ODA and Castle Device to the mere
word ODA, then ruling it similar to
RODA.
The outcome highlights the
unpredictability of decisions involving the
comparison of word and composite marks,
and the scant weight the Court may
accord to national decisions on similar
issues. On a practical level, it also signals
the importance of backing up claims to
peaceful coexistence with substantive
evidence.
Wine Wars
The Opposition Division upheld the
Castell del Remei SL (“Remei”) was a
wine producer, who applied to register the
below composite mark as a CTM for goods
including alcoholic beverages.
opposition, finding that ODA was
dominant in the CTM and that there was
a likelihood of confusion due to its visual
and phonetic similarity to RODA and
the identity of the goods. The Board of
Appeal spurned Remei’s appeal.
Remei, however, persevered. Before the
CFI, it argued vigorously that OHIM’s
decisions were flawed. It pointed to the
visual differences between the marks,
including the presence in its mark of the
prominent words CASTELL DEL REMEI
A rival producer, Bodegas Roda S.A.,
opposed on the basis inter alia of an
International Registration for RODA for
wines and liqueurs, extending to Austria,
the Benelux, Denmark, Finland, France,
Germany, Italy, Sweden and the U.K.
and a castle device. It contended that
these visual differences necessarily led
to phonetic ones. It pointed to different
meanings of ODA and RODA in Italian
and German, which distinguished the
marks conceptually.
Continued overleaf
10
Make Your Mark
11
Alicante abstracts
ODA and RODA... continued
Remei also drew support from its claim
“R” was not strongly emphasised.
that the marks had co-existed peacefully
for many years. Further, it highlighted a
Spanish court decision rejecting a claim
that the marks were confusingly similar.
Taking all these factors into account,
Remei argued, the CFI should overturn
the decision upholding the opposition.
The Court appeared indifferent to Remei’s
claim that the marks had coexisted
peacefully for many years. In its view,
Remei had waited too late to file evidence
in support of that claim. Relevant
evidence had been offered for the first
time before the CFI and could not,
therefore, be taken into account in line
with the ECJ’s decision in OHIM v Kaul
GmbH (Case C-29/05 P). Moreover, the
Court remarked that, in any event, the
mere fact that no objection was raised to
actual use did not necessarily mean that
there was no likelihood of confusion.
Clear Heads Prevail at CFI?
In its decision, not yet available in English,
the CFI roundly rejected Remei’s claims.
In an outcome that surprised many, it
upheld the finding that the marks were
visually and phonetically similar. The
Court reasoned that the words CASTELL
DEL REMEI and the castle device were
half the size of the word ODA in the CTM,
and were separated from ODA by a wide
swathe of blank space. CASTELL was likely
to be understood, in the context of wine
and the image of a castle, as denoting
a chateau or castle at which vineyards
were cultivated. DEL REMEI was likely
to be perceived as merely denoting the
geographical area from which the product
or producer emanated.
As a result, the Court concluded that the
average consumer was likely to accord
only secondary importance to CASTELL
DEL REMEI and the castle device.
Consequently, it held that it was legitimate
to compare only the elements ODA and
RODA.
Once the comparison was reduced to
this level, affirmation of OHIM’s decision
had a depressing inevitability. Although
there were clear initial visual and phonetic
differences between ODA and RODA,
the Court considered them outweighed
by the remaining similarities in these
short marks. Conceptual differences in
Germany and Italy did not avoid potential
confusion in other member states to
which the earlier IR extended. Moreover,
the CFI dismissed the decision of the
Spanish court on similarity, noting that
Spain was not a relevant territory in the
opposition.
The CFI gave particular weight to the
phonetic similarity between ODA and
RODA, noting that in some member states
where English was spoken, an initial letter
12
Comment
For many, the finding that these marks
were similar simply does not stack up.
Treating Remei’s composite mark as
effectively simply ODA was, to say the
least, a surprising approach. The words
CASTELL DEL REMEI and the castle
device were slightly smaller than the
word element ODA, but they were still
visually quite prominent and appeared
above the word ODA, albeit separated
by some blank space.
The CFI justified disregarding these
elements primarily on the basis that
they were non-distinctive in respect of
wines. However, even non-distinctive
matter can have a visual and phonetic
impact. Moreover, elements that are
non-distinctive on their own may,
when combined in a certain visual
presentation, give rise to a distinctive
whole, as the CFI itself affirmed
recently in Koipe Corporación SL v
OHIM (Case T-363/04, para. 85), in
which two ostensibly non-distinctive
olive oil labels combining agricultural
scenes and seated women were held to
be distinctive as a whole.
The CFI’s indifference to the Spanish
court’s decision on likelihood of
confusion is noteworthy. Certainly
Spain was not a relevant territory
in the appeal, and the letter “R”
is enunciated differently, and with
greater emphasis, in Spanish than
in English and certain other E.U.
languages. However, if the issues
before the Spanish court had been
identical and the visual comparison
had been the same, then it is hard
to see why its reasoning should not
have been considered. Parties in OHIM
proceedings who rely on national court
decisions should note the importance
of explaining the extent to which the
issues mirror each other, and should
not expect too much.
The most serious practical lesson,
however, is that where peaceful
co-existence is cited in defence, it
is essential to back it up with hard
evidence at first instance. Evidence
adduced for the first time before the
Boards of Appeal may or may not be
considered; it is a matter of discretion,
not of right. No discretion exists at all if
evidence is only introduced before the
CFI or later: it will be disregarded.
What is more challenging is the
implication that it is not enough to
prove mere co-existence without an
adversary’s objection. A party must
also show, as far as possible, that the
peaceful co-existence arose because
there was no likelihood of confusion.
Proving a negative is a logical
impossibility, and one hopes that OHIM
will bear this in mind when assessing
evidence in support of such claims.
However, an applicant can strive to
prove the existence of measures, such
as good contacts with distributors and
vendors, which would allow OHIM to
infer that confusion, had it occurred,
would have been reported. Lateral
thinking is essential, and the best
evidence is likely to be highly casespecific.
IN THE U.K. OFFICE
Gone But Not Forgotten:
How to Combat Phantom Rights
W
hen an infringement risk looms,
it pays to cover all bases in
planning how to minimise or avoid it.
A revocation action may remove the
rights, but the vestiges that remain
can still pose a very real threat.
Invalidation actions, which leave no
vestigial rights, may prove a safer
option.
O2 Holdings v T-Mobile
In a recent UK-IPO appeal, O2 Holdings
Ltd. v T-Mobile (U.K.) Ltd. (O-364-07), the
tribunal reversed the IPO’s decision to
reject an application by O2 to invalidate
trade mark registrations in the name of
T-Mobile. As reported in our Autumn
2007 issue (“Snippets”), O2 had already
succeeded in revoking the registrations,
and the IPO concluded that there was
nothing left to invalidate.
O2 appealed on the basis that the
revoked registrations were still deemed to
constitute valid rights up to the revocation
date. Consequently, T-Mobile could
sue now for infringement and damages
relating to that pre-revocation period.
In contrast, if the registrations were
invalidated, they would be deemed never
to have been granted and no such claim
would be possible.
On appeal, the tribunal overturned the
IPO’s decision, holding that the IPO could
declare revoked registrations invalid. It
would be inequitable for T-Mobile to be
able to sue for infringement and damages
for the pre-revocation period, but for O2
to be unable to counterclaim that those
rights were invalid.
Comment
This case makes it plain that phantom
rights are a real threat. When
attempting to clear an infringement
risk, a revocation action on non-use
or other grounds may be an attractive
(and sometimes the only) option.
However, if there are grounds for
invalidation, it may be sensible to
plead this too in order to ensure that
the rights are well and truly gone.
Fully-fought invalidations often
cost challengers more than non-use
revocations, as the challenger bears
the burden of proving invalidity.
However, if a U.K. invalidity action is
not defended, costs would now be very
low since under a new IPO practice
(reported in this issue) undefended
invalidity actions are now granted by
default provided the grounds if true
would provide a basis for invalidation.
In this case, O2 gambled on a simple
revocation which later proved not to
be enough. Its miscalculation resulted
in the need to fund an IPO action and
appeal to enable it to mount a further
invalidity challenge in order to protect
itself from T-Mobile’s phantom rights.
O2 ultimately succeeded, but other
challengers may not lead such charmed
lives. It is not at all clear, in particular,
that OHIM would follow O2 and allow
an invalidation against a revoked
CTM. The same logic which it already
employs to disregard unrenewed rights
in oppositions, even where live on the
opposed mark’s filing date, can be
extended to show that a revoked CTM
cannot be the subject of a challenge.
The mere fact that “gone” rights may
not be forgotten by the courts may not
be enough to force OHIM’s hand unless
the issue reaches the CFI or ECJ.
The importance of clearing conflicting
rights once and for all is therefore
of prime importance. With the right
actions at the right time, the cost
of clearance can be controlled, and
phantom rights may turn out to be
only vapour.
On the overall issue of similarity,
however, the CFI’s ruling reflects
how unpredictable the outcome can
be when a finding depends on the
dominance of certain elements in a
composite mark. That the presence
of certain elements should blind a
tribunal to the presence of others
seems misjudged and, to many, not in
accordance with the law as developed.
In future, clearer thinking will
hopefully prevail.
Make Your Mark
13
IN THE U.K. OFFICE
IN THE U.K. OFFICE
UK-IPO Fast-Tracks
Changes
Target Stores Stung on Costs
T
C
he UK-IPO, already one of the most
efficient IP offices in the world, is
set to become even speedier in April
2008, when a new trade mark fasttracking procedure is launched.
From 7 April 2008, applicants can request
expedited examination of U.K. trade mark
applications for an additional fee of £300.
Fast-track applications will be examined
within 10 business days of filing. If
no objections are raised, fast-tracked
applications will proceed to publication
and the statutory 3-month opposition
term. In the absence of objections or
oppositions, a fast-track application may
be registered within 5 months or less.
Fast-tracking can only be requested on
filing and will not apply to series marks.
Fast-track is likely to have limited appeal
in a jurisdiction where examination
normally occurs within a month.
Nevertheless, the procedure can provide
essential extra speed where urgent
protection is needed due, for example, to
an imminent launch or potential thirdparty conflicts.
Undefended Invalidity Actions
The IPO has amended its procedures so
that undefended invalidity actions against
U.K. registered trade marks are granted
by default.
Previously, a challenger had to prove
invalidity, even if the registered proprietor
did not defend. This normally meant
incurring costs in evidence preparation.
Under the new practice, a U.K.
registration will be declared invalid
automatically where a proprietor fails
to respond to an action, provided the
grounds pleaded would, if true, form a
legal basis for invalidation. The IPO will
send notice to the proprietor’s address
for service giving 14 days for submissions
or a request to be heard on the proposed
default judgment.
The change will result in substantial costsavings in undefended invalidity actions
before the IPO. This is in contrast to the
OHIM procedure where costs are still
front-loaded, with evidence falling due
when the action is filed.
A protective measure is planned to allow
the IPO to set aside default decisions
in appropriate cases, such as where a
proprietor did not receive actual notice
of the action. Details are still under
consideration, however, and set-aside may
not be available where it is sought very
late or where third parties have acted in
reliance on a registration having been
declared invalid.
Consequently, for brand owners it
remains critical to update the U.K.
Register promptly with changes of
address and attorney. The CTM Register
should be likewise updated to avoid
OHIM proceedings being undertaken
and concluded without a proprietor’s
knowledge or involvement.
Costs in Undefended Actions
Until recently, parties who won an
undefended opposition, revocation or
invalidity action before the UK-IPO were
entitled to an award of costs.
As part of its campaign to encourage
parties to settle disputes, however, the
IPO recently changed its cost rules so that
parties who do not give prior notice of an
intended action will lose their entitlement
to costs if the rights are withdrawn or
surrendered.
Where possible, sending prior notice
is often not only good practice for the
protection of costs awards, but can also
save parties money. It may secure an early
withdrawal or surrender and thus enable a
challenger to avoid the cost of preparing
an action at all.
The IPO recognises that it may not
always be possible to send reasonable
prior notice, particularly in oppositions
where the deadline is inextensible
or in revocation actions where it is
commercially vital to get the action on
file. In such cases, the IPO has a discretion
to consider granting costs despite the
absence of notice.
It is arguable whether this measure was
really appropriate, since an applicant or
proprietor may be taken to have assumed
the risk of a challenge and resulting costs
order. After all, the mere existence of
registered rights causes others to incur
costs in legal advice on their relevance in
searches. Nonetheless, the new rule is in
line with the IPO’s efforts to encourage
mediation and settlement, and its
introduction is no surprise.
in Bull’s-Eye Case
osts in UK-IPO actions are typically
lower than before the courts. Costs
awards tend to reflect this. However,
a UK-IPO hearing officer recently
awarded costs of £112,000 in a failed
invalidation and opposition (Target
Brands Inc. v Music Choice Ltd., Case
O-281-07). The circumstances that
led to this astonishing award make
compelling reading for those who are
or may become involved in UK-IPO
actions.
music choice targeted
Target was the owner of a CTM
registration for TARGET and Bull’s Eye
Device for business and retail services in
Classes 35 and 42. It operated a vast and
highly successful chain of discount retail
stores in the U.S., selling a wide range of
Music Choice was the owner of a laterfiled U.K. trade mark registration for
MUSIC CHOICE and Bull’s Eye Device for
entertainment-related electronic goods in
Class 9, communications services in Class
38 and various entertainment-related
services in Class 41. Its business was in
the provision of digital television music
channels and broadband music delivery. It
did not trade in the U.S.
Target applied to invalidate Music
Choice’s registration, claiming that it had
been made in bad faith because Music
Choice knew of, and copied, Target’s
Bull’s Eye Device, and had in any event
no bona fide intention to use in respect
of all the goods and services claimed.
Target asserted moreover that there was
a likelihood of confusion between the
marks.
Music Choice denied all the claims, and
filed voluminous witness statements and
evidence designed to show that it had
not known about nor copied the Target
logo. Much of its evidence concerned the
design of its own device, which it claimed
was intended to represent concentric
circles reminiscent of a spinning disc, and
the extent to which the employees and
designers involved in the creative process
had any knowledge of the Target logo.
It also filed evidence that Target had not
traded in the U.K. and had only a meagre
reputation, if any, here.
music choice
questions?
We are happy to advise on the implications
of the changes either generally or for
specific cases. Please contact the trade
marks team at Jenkins.
merchandise. It did not, however, trade
in the U.K., and although its website was
accessible here, purchases could not be
made for delivery outside the U.S.
In all, Target filed 5 witness statements as
evidence in chief, to which Music Choice
responded with 8. In reply, Target filed
a further 12 witness statements. Two
further witness statements from Music
Choice were then admitted as additional
evidence. At a case management
conference Music Choice applied for
much of Target’s evidence to be redacted
as irrelevant, but the hearing officer
declined on the basis that reviewing the
evidence at the CMC would be too timeconsuming.
At the skeleton arguments stage, Target
dropped its reliance on three of its witness
TARGET
statements and its claim that the TARGET
and Bull’s Eye Device mark was a famous
mark under Article 6bis of the Paris
Convention. It also dropped its claim to
a likelihood of confusion and passing off
in the invalidity case, and restricted those
claims to Class 35 services in a related
opposition intended to be heard together
with the invalidation.
Later, after extensive cross-examination
of 6 witnesses by Music Choice, Target
also withdrew its claim that Music Choice
had applied for its mark in bad faith in
the knowledge of, and having copied, the
Target device.
Outcome
The hearing officer found for Music
Choice on every point that remained.
In his view, the evidence did not support
Target’s claim that Music Choice did not
have a bona fide intention to use its mark
in connection with all the claimed goods
and services. He held that a finding for
Target would require evidence of “a
calculated attempt” to “clog the Register”
by claiming goods or services not related
to Music Choice’s field of activity. Target
had no such evidence.
Moreover, Music Choice itself had filed
Continued overleaf
14
Make Your Mark
15
IN THE U.K. OFFICE
Target Stores... continued
a copy of an investment prospectus
pre-dating its filing showing that its
interests extended to most of the claimed
specification. The hearing officer was
satisfied that the specification overall had
been carefully drafted to reflect the goods
and services that might reasonably interest
Music Choice at the time of filing or in
the future.
The hearing officer further found that
Target had not made out its case that its
earlier mark enjoyed a reputation in the
U.K., and that the use of Music Choice’s
mark would give rise to detriment or
unfair advantage. In particular, Target’s
evidence of activities in the U.S. only,
without promotion in the U.K. apart from
meetings with potential investors, did not
rise to the level of proving a reputation
here. Moreover, he regarded the word
elements of each mark as dominant,
and held that the marks were not similar
overall.
Costs
Music Choice claimed actual costs of
£168,358.36 in dealing with the actions,
arguing that the award should climb well
above that UK-IPO’s standard scale, which
normally limits costs awards to pre-set
levels.
It pointed out that although initially the
actions had included 6 grounds, only 2
were actually pursued in the invalidation
case. The grounds in a related opposition,
heard at the same time, were similarly
winnowed. The grounds, and reliance on
a number of witness statements alleged
to support them, were dropped at a very
late stage, after evidence had been filed
and, in the case of the claim to knowledge
and copying, after cross-examination,
although it was evident at a much earlier
stage that the grounds were unsustainable.
Consequently, Music Choice had incurred
substantial costs in addressing evidence
that was not relevant or on which Target
did not ultimately rely.
The hearing officer agreed. In the case
of unreasonable or vexatious conduct by
one party, he considered himself entitled
to award costs off the standard scale. In
his view, it was unreasonable to plead or
maintain a ground that clearly had no
foundation or became unsustainable in
the light of evidence. He considered that,
where grounds were clearly unfounded
from the outset, pursuing them through
the evidence rounds could even be
regarded as vexatious. That was the case
here, particularly with regard to the claims
as to knowledge and copying, reputation
in the U.K., a likelihood of passing off
and ownership of a famous mark. These
grounds should have been dropped at a
much earlier stage when it became clear
that they were fatally flawed.
The hearing officer reduced the actual
costs claimed by Music Choice by 33% to
account for work in relation to grounds
that he considered were not vexatious or
unreasonable when pleaded, and arrived
at a final award of £112,000.
Comment
Awards of this magnitude are virtually
unknown before the UK-IPO, and the
Music Choice case has aroused much
comment and controversy.
No doubt the evidence involved
was unusually heavy for both sides.
Music Choice’s actual costs of around
£168,000 are exceptionally high for
a UK-IPO proceeding. However, the
hearing officer carried out no detailed
assessment of whether the costs were
reasonably and necessarily incurred.
Rather, he accepted the bill of costs at
face value and awarded costs on an
effectively punitive basis.
Whether it was reasonable to do this
is highly arguable. Before the courts,
where bills of costs on this order
and higher are regularly considered,
some assessment would have been
made as to whether the costs were
proportionate to the issues as well as
reasonably incurred and reasonable in
amount. Even if costs were awarded
on an indemnity basis, some enquiry
as to reasonableness would have been
made. The hearing officer in this case
carried out no such enquiry.
Arguably, the hearing officer also gave
insufficient weight to his own decision
at the CMC to reject Music Choice’s
application to redact much of Target’s
evidence, which later proved irrelevant
or was not relied upon. The hearing
officer maintained that his decision
was intended to keep costs down for
the parties; unfortunately, it appears to
have had quite the opposite effect.
The award was not appealed. This
is a shame; if it had been, valuable
guidance might have been given on
the criteria relevant to assessing the
level of costs to award when actual, or
close to actual, costs are claimed. As
things stand, the decision stands more
as a warning of ostensibly arbitrary,
off-scale costs awards than as a useful
indicator of how the level of an award
is determined.
On a more general level, it is clear that
pleading or maintaining unsustainable
grounds may have costs consequences.
Dropping such grounds at too
late a stage may not avoid those
consequences where their presence
has already caused expense to an
adversary. It is therefore important
for a case to be assessed candidly and
realistically not only at the outset, but
also as the case develops and when
evidence is filed. In too many cases,
this assessment only takes place just
before a hearing, as it apparently did
in Music Choice. However, at that stage
the vast majority of costs have already
been incurred and a costs penalty may
already have become likely.
Where grounds still have an arguable
chance after evidence is filed, no costs
penalty should follow even where the
grounds fail at the hearing. A costs
award may be made, but it should not
be made on a punitive or indemnity
basis.
Time will tell whether the staggering
costs awarded in Music Choice
represent the start of a pattern, or
whether they are an aberration. Its
chilling effect, however, will no doubt
encourage parties and their advisors to
aim to hit the mark.
U.K. news
Snippets
In a recent decision, the CFI has
confirmed that, according to its wellestablished practice, the average Spanish
consumer is incapable of differentiating
between two quite different trade marks.
The case (Hoya KK v Indo Internacional)
involved a CTM application for the trade
mark Amplitude covering “eyeglasses;
lenses and frames for eyeglasses;
sunglasses and contact lenses”. The
application was opposed on the basis of
an earlier Spanish trade mark registration
for a stylised form of the word Amply coloured
turquoise-blue covering identical or very
similar goods.
The CFI found that the average Spanish
consumer, paying an average degree of
attention to the matter, would find the two
marks confusing. Taking its usual, highly
formalistic, approach, it decided that:
- The marks were visually similar given
that the suffix –tude was insignificant
and that the beginning of the marks
would determine the consumer’s visual
perception of them;
- Contrary to the finding of the Board
of Appeal, the marks did however have
quite clear phonetic differences; and
- Although neither mark was a Spanish
word, they were both quite close to
Spanish words, namely amplitud,
meaning breadth, width, fullness or
spaciousness, and amplio, meaning
extensive or large. It followed that both
marks belonged to the same semantic
family. Further, in relation to the goods
claimed, the average Spanish consumer
would note that all the (Spanish) words
associated with the common root
(ampli-) of the two marks allude to
intensification, magnification, space or
extensiveness, qualities that are relevant
to the goods concerned.
The CFI therefore confirmed the refusal
of the CTM application.
Can it really be
true that the
average Spanish
consumer is
so lacking in
discernment or observation that he or
she could not distinguish between Amply
(written in turquoise blue) and Amplitude
eyeglasses and sunglasses? One mark
being five letters long and containing
two syllables, the other being 9 letters
long and containing three syllables? One
mark being very close to a Spanish word
(amplitud), the other not being close at
all to another Spanish word (amplio)?
One ending –litude, the other –ly? The
writer finds this alleged inability to
differentiate between quite distinct trade
marks hard to accept. In the writer’s
opinion, the problem does not lie with the
Spanish consumer, but with the unrealistic
and formalistic manner in which both
OHIM and the CFI/ECJ compare trade
marks. The process is established in case
law and requires a stepwise approach
leading to a final, global assessment
which is significantly coloured by the
earlier steps. What it lacks is common
sense, together with an acknowledgement
that, in increasingly crowded markets,
European consumers are now quite
sophisticated and perfectly capable of
telling the difference between quite
similar trade marks, let alone marks as far
apart as Amplitude and Amply.
Another example of the special
treatment given to Spanish trade mark
owners under CTM practice can be
seen in the Ekabe International v Ebro
Puleva opposition decision given by the
Court of First Instance in October last
year.
The CTM application
was for a combination
mark that consisted of the phrase
Omega 3 (written in green letters)
together with a device which consisted
of a red heart and part of a rainbow.
The application covered margarine.
The CTM application was opposed on
the basis of an earlier Spanish trade
mark registration for Puleva-Omega 3
covering, amongst other goods, edible
oils and fats.
The applicant argued that the term
Omega 3 was descriptive in relation
to margarines, being a well-known
polyunsaturated fatty acid found in
such spreads. They backed this up
with printouts from various websites,
attesting to the generic nature of the
phrase. (Ed. Note: For confirmation of
this position go to http://es.wikipedia.
org and type in Omega 3).
In spite of this evidence, the
Opposition Division and the Board of
Appeal both decided that the marks
were confusingly similar and that the
CTM application should be rejected.
According to the Board, “It is unlikely
that the average Spanish consumer
will be aware of the term “Omega 3”
as referring to polyunsaturates whose
nutritional value helps to prevent
cardiovascular diseases”.
The applicant appealed to the CFI. The
Court confirmed the rejection of the
CTM application. The CFI ruled that
the green Omega 3 element was the
dominant part of the mark applied
for. By contrast, the rainbow and heart
device had little distinctive character.
It followed that, if the arguments put
forward by the applicant regarding the
descriptiveness of the phrase Omega-3
were correct, the CTM application
would have to be returned to the
Examining Division
to be rejected on
Continued overleaf
16
Make Your Mark
17
U.K. news
Snippets continued
absolute grounds. As this was not in
the interests of procedural efficiency,
the case should be decided on the basis
that Omega-3 was not descriptive. If
that were assumed, then Omega-3
was the dominant feature of the
mark applied for and was equal in
dominance to Puleva in the earlier
mark. The degree of similarity between
the marks was therefore such that,
bearing in mind the identity of the
goods, a likelihood of confusion was
inevitable.
This case follows a long line of OHIM
cases that have reached the CFI or
ECJ where a Spanish company, having
monopolised an ordinary, descriptive
word taken from another European
language on the Spanish trade mark
register has then successfully enforced
that right against a CTM applicant.
We can now add Omega 3 to Donut,
Matratzen and Limonchelo. In the
writer’s view, it is difficult to see how
such a position can be maintained in a
European Community that is meant to
require the free movement of goods
and services across national boundaries
and across language barriers.
Having said that, the CTM applicant
did not do itself any favours in the
Omega 3 case. It did not disclaim
Omega 3 in its mark to emphasise
the descriptiveness point. Further, it
only produced the most compelling
evidence of descriptiveness of the
phrase Omega 3 in Spain (in the form
of Omega 3 products on the Spanish
market, Spanish newspaper articles
and relevant Spanish Court decisions)
on appeal to the CFI. It is now well
established that, in appeals relating
to CTM applications, the CFI will not
consider evidence produced for the
first time before the European Court.
In spite of all this, however, this
decision should have gone the
other way. Omega 3 is clearly a
descriptive term in Spain in respect of
margarines. The CTM applied for is
and was distinctive, the device element
providing enough value to get it
home. (If it were not, then there must
be many thousands of invalid CTM
registrations.) The dominant features
of the two marks are the heart and
rainbow device in the CTM application
and Puleva in the Spanish registration.
name in trade or commerce (to establish
common law rights). In the panel’s view,
merely being well-known and thereby
having a famous name did not equate to
owning unregistered trade mark rights.
On this basis, the panel ruled in favour of
Information 360.
Alan Bond is a well-known Australian
businessman whose rise and fall has been
well-documented. Starting out in property
development, he became extremely
successful (and rich). This allowed him to
bankroll a number of Australian attempts
in the 1970s and 1980s to wrest the
America’s Cup yachting trophy from the
firm grip of the USA, who had held the
Cup continuously since 1851. Eventually,
in 1983, a Bond-backed Australian crew
won the Cup in dramatic circumstances.
In a decision (Koipe Corporacion v
Aceites del Sur) which might offer help
to brand owners in their fight against
look-alike products, the CFI found a
likelihood of confusion between two
labels which had completely different
word marks but quite similar device
elements.
After that, Mr. Bond moved into the world
of the media, and this proved to be his
undoing. In 1987, he paid in the region
of $1 billion dollars for Kerry Packer’s
Channel Nine television network, only
to sell it back to Packer at a quarter of
that price three years later, when Bond’s
business empire collapsed. Mr. Bond’s
fall from grace was complete when he was
declared bankrupt and jailed for fraud.
All entrepreneurs have a permanent sense
of self-worth, however, even convicted
fraudsters. It is therefore not entirely
surprising that, when a company called
Information 360 Limited applied to
register the domain names alanbond.net
and alanbond.tv, Mr. Bond objected under
the Uniform Domain Name Dispute
Resolution Policy (UDRP). Unfortunately,
Mr. Bond’s run of bad luck continued
when his objections were rejected. The
WIPO panel noted that Mr. Bond did
not own a trade mark registration for
his name, nor had he shown use of his
Aceites del Sur filed CTM application
no. 236588 for a label which consisted
of the phrase La Española together
with a picture of a woman sitting in
an olive grove. The goods at issue
were edible oils and fats in Class 29,
especially olive oil. The opponent relied
on CTM no. 338681 and Spanish trade
mark registrations for a label consisting
of the phrase Aceite De Oliva (Spanish
for olive oil), the word mark Carbonell
and a picture of a different woman
sitting in a different olive grove.
Both the OHIM Opposition Division
and the Appeal Board rejected the
opposition, finding that the figurative
elements had only a weak distinctive
character and that therefore the
comparison should focus on the word
elements. As these were completely
different, there was no likelihood of
confusion.
The opponent appealed to the CFI
who overturned the Board of Appeal’s
decision and rejected the CTM. From
the evidence put before it of the
Spanish olive oil market, the Court
concluded that the figurative element
of a woman, found in both marks,
was unusual for olive oil products sold
in Spain. It followed, in the Court’s
opinion, that the device aspect of the
opponent’s mark did not have a weak
distinctive character.
U.K. news
Snippets continued
By contrast,
the evidence
before the
CFI, which
pointed to the
widespread
use of the term
La Española for
food products
in Spain, led
the Court to
find that that phrase, which featured in
the applicant’s mark, did have a weak
distinctive character. Bearing the above
in mind, together with the identity of
the goods and the speed at which a
consumer was likely to choose an olive
oil product in a Spanish supermarket,
the Court decided that there was a
likelihood of confusion.
Although an English Court would be
extremely unlikely to reach the same
decision as the CFI in relation to the
similarity of the marks involved in this
CTM opposition, this decision does
offer hope to brand owners wishing
to place limits on the notorious lookalike activities of U.K. supermarkets.
Certainly, unless this decision is
overturned by the ECJ, it will become
a precedent that should cause the
supermarkets to be slightly more
cautious when imitating successful,
branded food and drink products.
Two recent opposition decisions by the
UK-IPO show that, where there are clear
conceptual differences between two trade
marks, even minor visual and/or phonetic
differences can lead to a finding that
there is no likelihood of confusion.
In the first case (Lois Levy v Amor KG),
the marks were DiViNE (stylised, with two
gemstones as dots on the letters i), and DIVINA
and the goods were jewellery. The hearing
officer accepted that such goods would
be bought with care, whatever their
price, and that therefore even minor
differences in
the respective
marks should
avoid confusion. She then noted the visual
and phonetic differences between the
two marks, particularly the latter, but was
most taken by the conceptual differences.
Whilst the earlier mark was an invented
word with no meaning, although close to
the girl’s name Davina, the mark applied
for was a combination of a well-known
English word with gemstone devices,
which would bring to mind a jewel which
would give great pleasure. This significant
conceptual difference, when combined
with the less significant visual and
phonetic differences, was enough to get
the application home. The opposition was
rejected.
The second opposition (Pelgar
International v FMC Corporation)
involved quite different goods, namely
preparations for destroying vermin in
Class 5. The marks at issue were Brigand
(the mark applied for) and Brigade (the
earlier mark). Once again, the hearing
officer took the view that, given the
nature of the goods claimed, the average
consumer, who could be a member of
the general public, would take great care
when making a purchase. Turning to the
marks, the hearing officer accepted that
there was a high degree of visual and
phonetic similarity, but he found that
they had completely different and wellknown meanings. Relying on ECJ case law
(Phillips-Van Heusen v Pash Textilvertrieb)
which established that different
conceptual meanings could be enough to
counteract significant visual and phonetic
similarities, the hearing officer found for
the trade mark applicant and rejected the
opposition.
These decisions should be contrasted
with some of the CFI and ECJ decisions
discussed elsewhere in this issue of Make
Your Mark. Even taking into account
the question of language, it is submitted
that the European Court often gives
consumers in some EU countries little
credit for being able to differentiate
between quite
different
marks. Given
the number of products that now vie for
EU consumers’ attention, this seems to
the writer to be an entirely unrealistic view
of what can quite happily coexist, without
any possibility of confusion, both on the
trade mark register and in the market and
is a view that serves to inhibit perfectly
legitimate competition.
Rather astonishingly, to the writer
at least, Formula One Licensing B.V.,
the licensing arm of the Formula One
Administration Group, owns CTM
registrations for both Formula 1 and
Grand Prix covering a wide range
of goods and services, including the
arrangement of sporting events in Class
41. In neither case was any evidence
of acquired distinctiveness required to
obtain the registration.
The licensing company recently
attempted to rely on these trade mark
rights before the UK-IPO to prevent
the registration of two conflicting
marks, March Formula One and
March Grand Prix, both of which had
been filed for motor racing related
services in Class 35, and motor racing
related merchandise in Classes 9, 16
and 25. In both cases, the hearing
officer was rather sceptical about the
distinctiveness of the earlier marks,
even though the CTM registrations
enjoyed a presumption of validity,
which was backed up by evidence of
use of the two marks provided by the
opponent. In the case of Formula 1,
the hearing officer rather hesitantly
decided that, on the evidence before
him, the mark was distinctive of the
opponent and that therefore the
opposition succeeded. In the case of
Grand Prix, however, not even the
presumption of validity could get the
opponent to the finishing line. The
hearing officer found that, except for a
narrow range of Class 16 goods (paper,
cardboard and goods made from these
materials), the mark Grand Prix could
only be viewed as having the minimum
level of distinctiveness. On that basis,
Continued overleaf
18
Make Your Mark
19
U.K. news
Snippets continued
he found that, except for the Class 16
goods mentioned above, the distinctive
character of the trade mark March
Grand Prix lay in the word March, the
words Grand Prix merely creating the
desired association with the sport.
It followed that the
two marks were not
confusingly similar and
that the application
was allowed to
proceed for all
the goods and
services claimed,
other than paper,
cardboard and goods made
from these materials.
In another round in the Budweiser title
fight between the U.S. slugger, AnheuserBusch, and the Czech contender,
Budejovicky Budvar, the American
pugilist emerged victorious on a technical
knockout.
Both companies owned U.K. trade mark
registrations for Budweiser covering beer,
the later Czech-owned right having
proceeded to grant on 19th May 2000
under the old 1938 Trade Marks Act’s
honest concurrent user provisions.
One day before the Czech-owned
registration had been granted for
five years, namely on 18th May 2005,
Anheuser-Busch came in with a solid
blow to the solar plexus when it applied
to invalidate Budvar’s registration on the
basis of its prior U.K. right. The Czech
battler responded gamely by pointing
to its use of the trade mark Budweiser on
Czech beer in the U.K. since 1974 and
then claiming foul in the form of the
American prize fighter’s acquiescence.
Under the Marquess of Queensbury’s
rules that govern registered trade marks
in the U.K. (otherwise known as the
Trade Marks Act 1994), a registered
trade mark proprietor (in this case
Anheuser-Busch), who acquiesces in the
use of a later registered trade mark for a
continuous period of five years loses the
right to invalidate the later registration.
The decision that the referee, hearing
officer Mike Foley, had to make was, when
does the five year period of acquiescence
begin? Was it from the date of application
or from the date of grant? In spite of
good shots being laid on by each party’s
respective Counsel, Mr. Foley gave this
round to the U.S. scrapper. He decided
that the statutory period of acquiescence
only began at the date of grant, that the
Czech fighter’s registration had therefore
not been registered for five years on the
date the invalidation action was filed,
and it followed that acquiescence did not
apply.
Seeing its rival stagger, Anheuser-Busch
moved in for the kill. Unlike the 1938
Act, under which it was possible for
identical marks to coexist on the trade
mark register for identical goods subject
to certain conditions or limitations
being imposed, provided this reflected
the reality of the market, the 1994 Act
allows no such common-sense decisions.
Under the 1994 Act, if an application
to invalidate a trade mark registration
is made under Section 5(1), requiring
identity of marks and goods, then the
action must succeed. This was the position
here and so the referee had no choice but
to stop the fight to save the plucky Budvar
from taking more punishment, and give
the decision, on technical grounds, to the
American giant.
No doubt there are many more trade
mark fights to look forward to between
these very experienced bruisers before
they reach retirement. As Shakespeare
once (nearly) wrote, this is truly a snarling
Buds affray.
One of the major problems for the
CTM Office is the independence of
the various Appeal Boards which
allows them to go their own way on
important issues that have not been
the subject of ECJ rulings. This has
been highlighted again in two recently
reported opposition decisions.
In the first case (Mastellone Hnos v M.F.
Bonants Beheer), the CTM application
was for the trade mark Serenissima
and the goods at issue were wines.
The opponent owned an earlier CTM
registration for La Serenisima (stylised)
covering foodstuffs in Classes 29 and
30. The Opposition Division found that
the goods were dissimilar and rejected
the opposition on that basis. The
opponent appealed.
The First Board of Appeal noted that
the opponent’s earlier CTM registration
covered vinegar in Class 30 which could
be viewed as having some relation to
wine (e.g. wine vinegar). OHIM had
therefore been wrong not to consider
the similarity (or otherwise) of the
signs and apply a global assessment.
The Board therefore sent the case back
to the Opposition Division for further
assessment.
In the second opposition (Johnson &
Johnson v Avena), the CTM application
was for the trade mark Avena and
covered retail services at large. It was
opposed on the basis of an earlier
German trade mark registration for
Aveeno covering goods in Classes 3
and 5. The Opposition Division rejected
the opposition primarily because the
retail services claimed were found to
be dissimilar to the earlier Class 3 and 5
goods. The opponent appealed.
The Fourth Board of Appeal confirmed
the Opposition Division’s findings on
the dissimilarity of the goods and,
unlike the First Board, decided that
it was not necessary to assess the
similarity of the two signs. Based on
the differences between the retail
services applied for and the earlier
Class 3 and 5 goods, it rejected the
opposition.
The creation of the Grand Board of
Appeal by the CTM Office, a body
given the task of overseeing the
activities of the Boards of Appeal,
was meant to ensure a consistency of
practice in CTM appeals. However, the
Grand Board appears to meet only
rarely and seldom addresses key issues
U.K. news
Snippets continued
such as whether the Boards of Appeal
or Opposition Division should always
consider the similarity of signs in CTM
oppositions.
(Ed. Note: In a CFI appeal (El Corte Inglés
v. Juan Bolaños Sabri) involving the trade
marks Pira ÑAM logo (CTM application)
and Piranha (earlier Spanish trade mark
registration) and Class 25 and Class 18
goods (respectively), the Court ruled that the
First Board of Appeal was wrong to reject
the opposition simply on the basis that the
goods were dissimilar without conducting an
assessment of the similarity of the two marks.
Perhaps this will force a consistent approach on
the Boards even if the Grand Board does not).
Fianna Fail (translated variously as
Soldiers of Destiny or Soldiers of Ireland)
is Ireland’s largest political party. It was
founded in 1926 by Eamon de Valera
during the ferment that followed the
creation of the Irish Free State in 1921
and the Irish Civil War. Fianna Fail has
formed seven Irish governments since its
foundation and has been in power for
much of Ireland’s short, independent
history.
For reasons best known to himself, a Mr.
Patrick Melly decided to file a U.K. trade
mark application for Fianna Fail covering
fresh Irish food products in Class 31, as
well as lemons and bananas which may
not be native to Ireland. The application
also covered business administration and
similar services in Class 35.
The Irish political party filed an
opposition claiming that the application
was filed in bad faith under Section 3(6),
its use for the Class 35 services would be
deceptive under Section 3(3)(b), its use
would infringe the opponent’s common
law rights under Section 5(4)(a), and the
mark was identical to the opponent’s wellknown trade mark under Section 56.
The opposition failed on all grounds and
the application was allowed to proceed.
In relation to bad faith, the hearing
officer found that the political party had
never exploited its name in a commercial
sense in Ireland, let alone the U.K. The
applicant was therefore not depriving the
opponents of their name or their right
to use it for political ends. Turning to the
question of deceptiveness, the opponent
had argued that, when supplied under
the Fianna Fail banner, the U.K. consumer
of the Class 35 services would expect
them to be either of a political nature or
in some way affiliated with the political
party. Once again, the hearing officer was
persuaded to dismiss the ground simply
because political parties were not known
for offering business administration and
similar services. In relation to Fianna
Fail’s claim to common law rights, the
hearing officer noted that being known
was not the same as possessing goodwill.
The political party had provided no
evidence pointing towards the commercial
exploitation of its name in the U.K.
No evidence had been provided of
publications sent to the U.K. or of fund
raising in this country or even of a single
U.K.-based member of the party.
Finally, the hearing officer, whilst
accepting that the name Fianna Fail was
well-known in Ireland, had no hesitation
in deciding that the evidence came
nowhere near establishing that the Irish
political party’s name was a well-known
trade mark for the purposes of Section 56
of the 1994 Act.
If it is any consolation to Fianna Fail, the
writer has noted that the same applicant,
Mr. Patrick Melly, also applied to register
the name of another Irish political party,
Fine Gael, although only for Class 35
services. Once again the application was
opposed, in this case by Fine Gael, and
once again the opposition failed.
Just prior to going to press, it was reported that
both of these decisions have been overturned on
appeal. The Appointed Person decided that both
applications had been filed in bad faith. A full
report will appear in the next issue.
Two recent U.K. oppositions involving
Pucci trade marks for pet-related goods
led to different outcomes and showed
the importance of filing adequate
evidence in proceedings before the IPO.
In the first case (Caroline Kavanagh v
Emilio Pucci), the mark applied for was
a stylised form of the word Pucci, with
the letter “i” in the form of a bone.
The goods claimed were materials for
the grooming of pets and similar pet
products in Class 3 and leather goods
for pets and similar goods in Class 18.
The application was opposed on a
number of relative grounds by the
Italian fashion house, Emilio Pucci
S.R.L., on the basis of its earlier U.K.
trade mark registration for Emilio Pucci
covering women’s outerclothing. The
opponent also relied on its goodwill
and reputation in its mark acquired
through use in the U.K. since at least
the 1970s. In 2003, its U.K. sales were
£835,000.
The hearing officer first considered
the similarity of the two marks and
found them not to be similar. He took
the view that, whilst the opponent’s
mark would be seen as a man’s name,
the applicant’s mark would be seen
as a play on the word “pooch”, a
slang word for a dog. In addition,
the hearing officer decided that the
applicant’s goods were dissimilar to
those of the opponent and that the
opponent’s evidence was inadequate
to establish a reputation in its mark in
the U.K. The hearing officer therefore
rejected the opposition. As a parting
shot, he commented that even if the
opponent had shown the necessary
reputation he did not believe that the
use of Pucci (stylised) for pet-related
products would “affect consumers’
economic behaviour or damage the
opponent’s
mark by
tarnishing or
blurring”.
This
decision was
confirmed
on appeal
by the
Appointed
Person (Mr. Arnold QC).
Continued overleaf
20
Make Your Mark
21
U.K. news
Snippets continued
In the second opposition, the applicant
was Pucci Petwear (a company owned
by Caroline Kavanagh, the applicant in
the opposition discussed above), whilst
the opponent was again Emilio Pucci.
In this case, the trade mark application
was for a Pucci designer petwear logo,
in which there was no bone in the
word Pucci. The goods at issue were
identification tags, feeding bowls,
beds and pet carriers for animals in
Classes 6, 20 and 21. The opponent
once again relied on its earlier U.K.
trade mark registration for Emilio
Pucci in Class 25, as well as its goodwill
and reputation in that mark in the
U.K. Although the sales figures for
the Emilio Pucci brand remained
the same as in the first opposition
(with one year’s sales added), in this
second opposition the opponent filed
much more evidence of goodwill and
reputation in both the marks Emilio
Pucci and Pucci in the U.K., including
the presence of the mark in numerous
glossy women’s magazines published
in this country, information on the
famous women who had worn Emilio
Pucci clothing (for example Jacqueline
Onassis and Marilyn Monroe), evidence
that the names of well-known fashion
designers tended to be shortened
to their surnames and evidence that
fashion brands are often stretched into
products for pets.
Whilst this was not enough to persuade
the (different) hearing officer that the
opponent could claim a reputation
in its registered mark Emilio Pucci
for dilution purposes under Section
5(3) of the 1994 Trade Marks Act, it
was enough for him to find that the
opponent had goodwill in the trade
mark Pucci for women’s clothing.
Bearing in mind the possibility of
brand-stretching into the pet domain
and the possibility that the opponent’s
goodwill could be damaged if there
were failings in the applicant’s
products, the hearing officer decided
that the use of Pucci Petwear’s mark
would be likely to substantially damage
the opponent’s goodwill in its trade
mark Pucci. He therefore rejected the
application under Section 5(4)(a) of the
Trade Marks Act 1994.
In a rather intriguing decision, the Court
of First Instance has recently refused
a CTM application for the trade mark
WinDVD Creator covering specific types of
computer software in Class 9.
The court noted the well-known and
descriptive English-language meanings
of “DVD” and “Creator” in relation to
the goods claimed. However, as far as the
element “Win” was concerned, it relied
on the definition found in the on-line
dictionary, www.acronymfinder.com, which
states that “Win” is an abbreviation of
Windows, Microsoft’s operating system.
In the Court’s view, it followed that the
relevant E.U. public would immediately
see that the mark referred to software
that allowed DVDs to be created using the
Windows operating system. On this basis,
the mark was rejected as non-distinctive
and descriptive in relation to the Class 9
goods claimed (Articles 7(1)(b) and 7(1)
(c) CTM Regulation).
The writer finds this decision intriguing,
in particular the rejection of the
mark because it contained, in part, an
abbreviation of a registered trade mark
(Windows). The assumption must be that
Win has become a generic term because
of Microsoft’s failure or inability to protect
it. By contrast, the abbreviated forms of
well-known marks such as Mercedes (Merc)
and Budweiser (Bud) are protected as
registered trade marks. Presumably, this
would mean that third party applications
for marks such as MercTyre Repairer or
BudBar Services would be accepted as
inherently distinctive, or would they?
We leave it to the reader to consider the
point.
OHIM operates a rather liberal practice
when it comes to the registrability of
geographical names. However, it would
be wrong to assume that all such
names are accepted for registration. A
recently reported invalidation action
confirms this.
The case (Aalborg Engineering v
Aalborg Industries) involved an
application to invalidate a CTM
registration for Aalborg covering
boilers in Class 7 and related goods
and services in Classes 9, 11, 37 and 42.
Aalborg is the fourth largest town in
Denmark with a population of about
165,000.
The Cancellation Division rejected
the action on the basis that the word
Aalborg would not be perceived as a
geographical indication but rather as
an arbitrary and fanciful term when
used in relation to the goods and
services claimed. The applicant to
invalidate appealed.
The Board of Appeal noted the
following key points of evidence:
- Aalborg should be considered
well-known as a geographical
designation in Denmark and will
also be known by some relevant
consumers outside Denmark;
- The Danish Supreme Court had
rejected a Danish trade mark
application for Aalborg covering
boilers in Classes 7 and 11;
- A Danish trade organisation had
provided a declaration stating that,
in Denmark, Aalborg was a wellknown trade mark belonging to the
CTM proprietor; and
- A Danish on-line encyclopaedia
referred to the iron and metal
industry situated in the town of
Aalborg.
Taking all of this into account, the
Board of Appeal decided that Aalborg
designated a place that may be
associated by relevant consumers
with most of the goods and services
covered by the CTM registration,
either now or in the future. There was
therefore a public interest in Denmark
in keeping Aalborg available for use
U.K. news
Snippets continued
by others, particularly those operating
in the stainless steel industry. On this
basis they found the CTM registration
invalid under Article 7(1)(c) of the CTM
Regulation in relation to all of the
goods and services claimed except a
narrow range of Class 42 services.
In reaching this decision, the Board
rejected the proposition that the names
of all places above a certain size where
it is possible to produce the goods in
question, should be unregistrable as
CTMs. It was necessary to assess the
geographical name by reference both
to the nature of the goods/services
concerned (and to any present or
future association of the place with
those goods/services) and by reference
to the understanding which relevant
consumers have of the name, including
its degree of familiarity.
The Aalborg story may not yet be over.
The case has been remitted to the
Cancellation Division to consider the
evidence of acquired distinctiveness
claimed by the CTM proprietor.
A number of recent oppositions before
the UK-IPO have shown that, in cases
where the opponent can establish
either an existing or a previous business
relationship with the applicant, then
it is possible to run a successful claim
for bad faith. By contrast, it has been
confirmed that a pleading of bad faith
is unlikely to prevent the registration of
a broad specification of goods/services.
The first case involved an application
for the trade mark Pink Ribbon for,
amongst other goods, printed matter and
printed publications in Class 16. Pink
ribbons and the phrase Pink Ribbon
have both become closely associated
with breast cancer awareness and charity
work in the breast cancer area and the
application at issue was filed by three such
charities, Breakthrough Breast Cancer,
Breast Cancer Care and Breast Cancer
Campaign. The opposition was filed by
Gerard Dugdill, the owner of a publishing
company, Blue Moon Publishing.
Mr. Dugdill’s company, together with
its successors in title had published an
annual Pink Ribbon magazine for four
years prior to the filing date of the
opposed application. This magazine was
published to coincide with Breast Cancer
Awareness Month (October each year).
There was evidence that the first edition
of the magazine had been published
in collaboration with the three joint
applicants and that they had remained
aware of its continued annual publication.
Although the three charities argued
strongly that the phrase Pink Ribbon
was closely associated with Breast Cancer
charities and that any goodwill in the
phrase must belong to them, the tribunal
found otherwise. In the hearing officer’s
view, the goodwill in the Pink Ribbon
publication resided with the opponent
and, in view of that fact, and the fact
that the applicants were aware of the
continued existence of the opponent’s
magazine, the U.K. trade mark application
had been filed in bad faith in so far as
it covered printed matter and printed
publications.
In the second case (Francisco Toju Da’Silva
v Travelocity.Com), the mark opposed
was Travelocity International Magazine
filed for magazines in Class 16, as well
as advertising and publishing services in
Classes 35 and 41. The opponent owned
an earlier CTM registration for the trade
mark Travelocity in Classes 9, 38 and 39
and established a substantial goodwill and
reputation in the mark in respect of travel
services, but only in the U.K.
Although the hearing officer did not rule
on the objections raised by the opponent
on relative grounds (similarity of marks
and goods/services under Section 5(2)
(b) of the Trade Marks Act 1994 and
dilution under Section 5(3)), it is likely
that he would have found against the
opponent. In the case of the dilution
objection, in particular, the opponent
had relied on a CTM registration but
had only established a local U.K., rather
than a regional E.U., reputation. It was
fortunate for the opponent, therefore,
that the bad faith objection succeeded.
In this case, the hearing officer accepted
that the opponent had a substantial
goodwill and reputation in the mark
Travelocity in the U.K., and noted that the
opponent had claimed that Mr. Da’Silva
was aware of this goodwill and reputation
when he filed his trade mark application.
Although this claim does not appear to
have been backed up by any evidence,
the applicant did not deny it. Further, he
did not explain how he chose his mark.
On this basis, the hearing officer found,
as a question of fact, that Mr. Da’Silva
had been aware of the opponent’s
goodwill and reputation in the trade
mark Travelocity at the relevant date. The
hearing officer therefore decided that the
trade mark application had been made in
bad faith in respect of all the goods and
services applied for.
In the next case, a South African company,
Alien Systems & Technologies, applied
to register the trade mark Pyrogen in
respect of fire-extinguishing apparatus.
The opponent was a Malaysian company,
Pyrogen Technologies.
The opponent had sold its Pyrogen fire
extinguishers in the U.K. through a U.K.
subsidiary, Pyrogen Ltd, from 1998 to
2002, at which point supplies to the U.K.
ceased, the U.K. company being wound
up in 2004. During the period 1998 to
2002, the U.K. subsidiary had supplied
the South African applicant company
with Pyrogen branded products for sale in
Africa. It was some time after supplies of
Pyrogen from the U.K. had dried up that
Alien Systems decided that no one owned
trade mark rights in the mark in the U.K.
any longer and it decided to register the
mark itself in June 2005.
Unfortunately for the applicant, and
apparently unknown to it, Pyrogen
Technologies had resumed supplies of
Pyrogen fire extinguishers to the U.K. as
early as February 2004, to a company
called Pyroshield Ltd.
The hearing officer decided that the
trade mark application had been filed
in bad faith. He found, on the facts,
Continued overleaf
22
Make Your Mark
23
U.K. NEWS
Snippets continued
that the South African company had
been an agent or representative of the
parent Malaysian company and not
just a distributor appointed by its U.K.
subsidiary. He also decided that simple
enquiries would have established that the
opponent had not abandoned its interest
in the mark in the U.K. He therefore
rejected the trade mark application.
Rather intriguingly, a CTM application
filed by Pyrogen Technologies for the
trade mark Pyrogen & Device has been
opposed by both Alien Systems and
Pyroshield, who were said to be the new
distributor of Pyrogen fire extinguishers in
the U.K.
In two more oppositions based on bad
faith, In 2 Garden Products v P.W. Circuits
and Global Baby Marketing v National
Childbirth Trust, the unsuccessful applicant
and the opponent had both been involved
in failed joint ventures. In both cases, the
trade mark application filed by only one
party to the joint venture was rejected
under Section 3(6) of the 1994 Act.
Turning to the role of a bad faith
objection when faced with an unjustifiably
broad specification of goods and services,
it is a cornerstone of U.K. trade mark law
that the applicant must state that he has
a bona fide intention to use his mark in
relation to the goods and services applied
for or state that he is in fact using the
mark in respect of them at the date of
application. If the applicant does not have
such use or an intention to use, then he
has made the statement in bad faith and
the application is invalid under Section
3(6). It was thought that these provisions
might prevent the acceptance of broad
specifications of goods and services filed
by a U.K. applicant, but this appears to
be increasingly unlikely. The latest nail in
the coffin for this theory is the recently
reported opposition between Future SM
TM and Future Publishing. The applicant,
Future SM TM, applied to register the
trade mark Future for goods and services
(class headings) in Classes 1 to 8, 10 to
34, 39 and 40. There was no evidence
24
that the applicant traded in the U.K. or
even intended to do so, except by way of
licensing its trade mark rights. Even in
such a case, the hearing officer could not
bring himself to make a bad faith finding.
He ruled that the private interests of the
applicant to seek to develop his business
ideas through licensing of IP rights,
outweighed the public interest in refusing
to grant unjustifiably wide monopolies to
companies or individuals.
Finally, elsewhere in this issue we refer to
the extraordinary award of costs by the
UK-IPO in the Music Choice opposition
and cancellation case. The hearing officer
sought to justify the level of costs awarded
(£112,000) to a large degree on the basis
that the challenger had maintained bad
faith grounds of objection after it had
become clear, to the hearing officer at
least, that it had no hope of succeeding.
This salutary tale shows that, although,
in the right circumstances bad faith
objections can be run successfully before
the UK-IPO, they should always be viewed
with caution and only maintained if there
is a real prospect of victory.
Under Section 60 of the Trade Marks
Act 1994, the proprietor of a trade
mark in a Convention country can
apply to rectify the U.K. Trade Mark
Register so as to substitute its name
for that of an agent or representative
who has registered that mark in the
U.K. without consent. Under Section
55 of the Act, a Convention country
is defined as a country, other than
the U.K., which is a party to the Paris
Convention.
Thailand is not a member of the Paris
Convention. However, it is a member
of the World Trade Organisation
(WTO) and a signatory to the TRIPS
Agreement. Further, because of this it
is implementing Articles 1-12 and 19
of the Paris Convention. On this basis,
the UK-IPO has recently ruled (Checker
Leather v Sribhan Jacob Company) that
a Thai company can use the provisions
of Section 60 to regain ownership of a
U.K. COURT DIARY
World Cup Willie
U.K. trade mark registration filed by its
sole U.K. agent and distributor.
Another avenue open to the Thai
proprietor in the above case would
have been to seek a declaration of
invalidity of the agent’s U.K. trade
mark registration. There is a similar
provision in the CTM Regulation (Article
8(3)), except that the right of redress
is not limited to proprietors based in
Convention countries. In a recently
reported invalidation action before OHIM
(Laurence E. Gordon and Gayle Gordon v
Sotorock Holding), two U.S. individuals
successfully employed this ground for
invalidity.
The mark at issue was G&S (stylised),
registered for goods in Class 25. The
applicants to invalidate owned a U.S. trade
mark registration for a similar G&S mark
and provided evidence that the CTM
proprietor had been their distributor in
Europe for a number of years, at least
until the business relationship between
the parties deteriorated in the late 1990s.
The Cancellation Division decided that
the term “agent” in Article 8(3) of the
CTM Regulation should be interpreted
broadly and, on that basis, covered the
relationship between the Gordons and
Sotorock Holding. Further, it accepted
that the CTM did not have to be identical
with the mark registered in the U.S. by
the applicants to invalidate, but could
exhibit slight modifications, additions
or deletions which did not substantially
affect its distinctiveness. This finding
was important because Sotorock’s CTM
registration covered G&S in a stylised
form, while the Gordons’ U.S. trade mark
registration protected G&S in plain
lettering. Finally, the goods of the two
registrations were essentially identical.
On the basis of these facts, the
Cancellation Division upheld the
Gordons’ invalidity action under
Article 8(3) of the CTM Regulation and
cancelled Sotorock’s CTM.
Wins in Extra Time
for the word WILLIE
(the words WORLD CUP
having been omitted as
the property of FIFA, the
World Cup governing
body) expired in 1986.
P
eople of a certain generation may
still remember when England
won the football World Cup in 1966.
Enough people evidently do that the
Football Association (“FA”) recently
succeeded in striking down a U.K.
trade mark registration for a cartoon
lion resembling World Cup Willie, the
1966 English World Cup mascot, on
grounds including passing off and
bad faith (Jules Rimet Cup Ltd. v The
Football Association Ltd., [2007] EWHC
2376 (Ch) ).
The decision is newsworthy because of
the strong association many still make
between World Cup Willie and the historic
English victory. However, the decision
also contains interesting observations on
bad faith and the nature and ownership
of residual goodwill in a merchandising
business, and merits a read even by those
less athletically inclined.
The Lion Sleeps Tonight…
The original World Cup Willie was
introduced by the FA as the official mascot
of the 1966 World Cup, which England
hosted. The cartoon lion wore a Union
Jack t-shirt and appeared in a variety
of poses, including kicking a football.
For a time he was actively licensed by a
third company acting as agent for the FA
for use in connection with a variety of
merchandise.
After the World Cup, Willie gradually
disappeared from the scene and the last
of the FA’s U.K. trade mark registrations
In or around 2005, Jules
Rimet Cup Ltd. became aware that no one
owned a registered trade mark for World
Cup Willie or his image. They determined
to modernise the lion and license him
for use on merchandise. On Rimet’s
instructions, a graphic designer drew a
lion based on the original World Cup
Willie designs with some modifications,
including a cross of St George t-shirt
instead of a Union Jack. The new
modernised lion was shown kicking a
football. Jules Rimet applied to register
the figurative device and the words
WORLD CUP WILLIE as trade marks.
When the FA learned of the applications,
it threatened to oppose them and
wrote to one of Jules Rimet’s licensees,
threatening legal proceedings. As a result,
the licensee ended its agreement with
Jules Rimet, who then sued the FA for
unlawful interference with its business
and for a declaration that the FA could
not successfully oppose its applications.
The FA counterclaimed for refusal of
the applications, arguing that they were
filed in bad faith and that it could, as of
the filing dates in 2005, have brought a
successful passing off action against use of
the marks by Jules Rimet or its licensees.
…or Does He?
Jules Rimet attacked the FA’s claim under
passing off on the basis that the FA had
never owned the goodwill in World Cup
Willie and that, if it did, no goodwill
survived by 2005 when Jules Rimet filed its
applications.
Jules Rimet pointed out, in particular, that
the FA had never itself had any business
in connection with World Cup Willie, but
rather had only licensed the mark to third
parties. Moreover, the actual licensing was
undertaken by a third company, Walter
Tuckwell Associates Ltd. (“Tuckwell”), and
there was no evidence that the FA and
Tuckwell had agreed that goodwill should
accrue to the FA rather then Tuckwell.
Jules Rimet further argued that if indeed
goodwill had vested in the FA, the FA had
abandoned that goodwill by ceasing to use
World Cup Willie without any intention to
resume use.
The FA resisted all these points, asserting
that it had always intended to resume
use of World Cup Willie and had in fact
received several expressions of interest
in licenses to use the lion in recent years,
which it had declined to grant for business
reasons. It could not, however, prove the
existence of an agreement governing
ownership of goodwill as between it and
Tuckwell as a fire at the FA’s offices in
1998 had destroyed a large number of
records.
On the existence and ownership of
original goodwill, the Court nonetheless
found for the FA. It held that, at the
outset, the wide range of different
merchandise in connection with which
the lion had been licensed would have led
people to conclude that its use had been
authorised by the World Cup organisers,
and that the individual manufacturers
of the merchandise had been licensed
accordingly. The goods were likely to
have been bought on the strength of
the presence of World Cup Willie, which
further increased the probability that
goodwill had accrued to the FA as the
ultimate licensor.
Continued overleaf
Make Your Mark
25
U.K. court diary
U.K. court diary
World Cup Willie.. continued
The Court also found that the FA had
not abandoned its goodwill. The fact
that it had dropped the words WORLD
CUP from the mascot’s name signalled
an intention to continue to use the lion
thereafter, and the Court accepted the
FA’s evidence that it intended to use the
lion again when it eventually hosted a
future World Cup.
Did Goodwill Survive in 2005?
Despite the passage of nearly 40 years
since Willie’s launch, the Court was
persuaded that the FA’s goodwill had
survived, at least in part.
It noted sales literature from Jules Rimet
referring to World Cup Willie as “some
of the most valuable sports rights in the
U.K.,” and an internal email observing
that, “World Cup Willie is what people
associate with.” The Court also noted a
newspaper article quoting Jules Rimet
employees as saying, “Back in 1966,
football wasn’t big business like it is
today and it seems no one thought to
register World Cup Willie. We have put
him in a St George’s cross and think
England fans will love him,”
and “Everyone remembers
World Cup Willie and
he is closely linked
to the 1966 success.
No one, not even the
Football Association, had
registered his image so
we just added him to our
collection.” Other sales
literature read, “We are
going to make World Cup
Willie famous again. He is
already known and loved by
older generations, and now
younger generations will come to
know and love him too.”
The Court was persuaded that this
evidence, and other occasional
references to the lion in the press
over the years, together with the
occasional approach to the
FA by prospective licensees,
proved that goodwill had
survived as of 2005.
26
The Court further found that this goodwill
would have enabled the FA to succeed in
a passing off action against Jules Rimet.
It noted that Jules Rimet’s applications
covered merchandise of the type that
would ordinarily be licensed for use in
connection with a football mascot. As the
lion device was associated with the FA, the
use was therefore likely to constitute an
actionable misrepresentation.
was not disclosed, and the court could
not assess the extent to which the advisor
was aware of the relevant facts. Although
Jules Rimet did not appear to believe it
was doing anything wrong, nonetheless
appropriating a mark that was clearly
the subject of someone else’s goodwill,
whoever it might have been, was not in
accordance with acceptable commercial
behaviour.
Bad Faith
Comment
Although the finding on passing off
was sufficient to spell the end for Jules
Rimet’s applications, the Court went on
to consider the FA’s allegation that the
applications had been filed in bad faith.
The judge’s finding on bad faith in this
case could have gone either way.
It noted that the test to be applied was
whether a reasonable person with the
knowledge held by Jules Rimet at the
time the applications were filed would
regard the filings as proper in accordance
with acceptable commercial behaviour
observed by reasonable and experienced
persons in the trade.
The Court found that Jules Rimet had
knowledge of a continuing valuable
goodwill in World Cup
Willie, even if it did
not know to whom
it belonged. The
judge was persuaded,
however, that Jules
Rimet had genuinely
concluded that
the FA had no
continuing interest
in World Cup Willie,
in part because a
telephone call to the
FA to enquire whether it
had rights in the lion was
not returned. Moreover, Jules
Rimet had sought legal advice
from a trade mark attorney prior
to filing its applications.
Nonetheless, by the standards
of honest people in the trade,
the judge considered that
Jules Rimet had acted in
bad faith. The legal advice
obtained prior to the filings
The factors in play were almost evenly
balanced: on the one hand, Jules
Rimet thought it was doing nothing
wrong, made an attempt (albeit halfhearted) to establish whether the FA
claimed rights in World Cup Willie,
and sought legal advice before filing
the applications. On the other, it knew
that there was valuable goodwill in the
property it was seeking to appropriate,
did not disclose what its trade mark
attorney knew or was told about that,
and did not make any serious attempt
to identify any possible right-holder
prior to filing. In the event, it did
too little to show that what it had
done was honest in accordance with
prevailing standards.
The judge’s confirmation that
goodwill in a merchandising brand
accrues to the ultimate licensor in
the absence of any agreement to
the contrary is helpful for businesses
who make money through licensing
arrangements. Smart licensors will still
specify who is to own any goodwill
arising from the use in a licensing
agreement, however, to avoid potential
traps later if the goodwill ever needs to
be relied upon in a passing off claim.
For World Cup Willie, the match is
over for now. Time will tell whether he
makes a reappearance in line with the
assurances given by the FA. Given the
costs invested in the case, the FA no
doubt believe they have a winner on
their hands. England fans may yet see
him back on the field soon.
“Hidden Use”
Claim Dissected in Vet.local
I
n textbook infringement cases, the
mark at issue is normally displayed
on goods or labelling. However, in this
technological age, content-bearing
media such as CD-ROMs, software
and DVDs contain words and images
not visible on the packaging, and
sometimes not even easily accessible
to users. Is such “hidden use” capable
of infringing?
This question was at the heart of the
recent High Court decision in RxWorks
Ltd. v Dr Paul Hunter (trading as Connect
Computers) [2007] EWHC 3061. The
answer, the deputy judge found, depends
on a range of factors including the
perception of the average consumer and
the impact of the use on the registered
mark. The judgment contains valuable
leads on how infringement should be
assessed not just in “buried use” cases,
but in all cases in the wake of the ECJ’s
decision in Céline SARL v Céline SA (Case
C-17/06; see this issue, “On Business
Names, ECJ Says ‘Shop Around’”).
Vet.local
The claimant, RxWorks, supplied specialist
computer systems for the administration
of veterinary practices. Since 2002, it
supplied a system that used the term
“vet.local” as a directory folder name, a
file folder name, a local domain internal
to the system and as a Primary Dns Suffix.
The “vet.local” domain followed the
standard Microsoft systems domain
naming convention involving “.local”
domains preceded by other words chosen
by the business user. The “vet.local”
term was “buried in the workings of the
system,” only likely to be seen by chance
in very minor capacities on-screen when
the system was used by vets and, in some
cases, only ever likely to be encountered
by specialist systems administrators.
The defendant, Dr Hunter, was the
owner of U.K. trade mark registration no.
2397695 for VET.LOCAL in Classes 9, 16,
41 and 42 for inter alia computer software,
hardware and firmware.
In February 2007, Hunter wrote to a
veterinary practice that had purchased
a system from RxWorks, threatening to
sue it for trade mark infringement in
respect of use of the term “vet.local” on
the system. In April 2007, RxWorks sued
Hunter for making unjustified threats of
trade mark infringement proceedings.
Hunter counterclaimed for infringement.
The Four-Part Test in Céline
In the summary judgment disposing of
the case, the deputy judge recited the
four-part test formulated by the ECJ in
Céline for determining whether use of the
identical sign “vet.local” on the RxWorks
system infringed:
1. Was the use in the course of trade?
2. Was the use without the consent of the trade mark owner?
3. Was it use in relation to the goods for which the earlier mark was registered?
4. Was the use capable of affecting the essential function of the trade mark, namely its ability to denote the origin of the brand owner’s goods?
Part 1: Use in the Course of
Trade
The deputy judge succinctly dismissed the
claim that vets who bought the RxWorks
vet.local
system were using the VET.LOCAL sign.
Any infringement claim against them,
therefore, must fail.
As the architect and vendor of the system,
however, RxWorks was undoubtedly
using the sign, and the first question was
therefore whether its hidden and minor
use amounted to use in the course of
trade.
The deputy judge held that it was. In his
view, the question was not whether the
sign was visible at the point of purchase,
which was not an essential element
for infringement given the vast scope
for books and other content-bearing
media to contain signs only visible to
an end-user after purchase. Rather, the
question was whether the use was private
or commercial. In this case, the use was
clearly commercial, and was therefore use
in the course of trade.
The mere fact that some of the use
involved “embedding” the sign into the
goods such that it would not normally
become visible at all did not avoid a
finding that such use, too, was use in the
course of trade. However, the deputy
judge noted that such use might not be
capable of affecting the essential function
of the trade mark.
Part 2: Use Without Consent
There was no argument or analysis on this
point; it was agreed between the parties
that the use was without Hunter’s consent.
Part 3: Use in Relation to the
Registered Goods or Services
In this respect, the deputy judge noted
as a preliminary point that the four-part
test in Céline was applicable not only
to identical marks for identical goods
or services, but also (with appropriate
modifications to step 3) to cases of
Continued overleaf
Make Your Mark
27
U.K. COURT DIARY
“Hidden Use”.. continued
similarity of marks or goods or services,
which required in addition a likelihood of
confusion.
The deputy judge ruled that “use in
relation to goods or services” includes
use on, or embedded within, the goods.
He rejected the argument that whether
use was in relation to goods or services
depended on how the average consumer
would understand the mark to be
used. In his view, the language of the
Harmonisation Directive, from which
the relevant provision was drawn, did not
argue for any special gloss on the words
“in relation to.” Whilst the perception
of the average consumer might be
relevant to whether the use was capable
of affecting any of the functions of the
trade mark, it was not relevant to the
simpler question of whether the use was in
relation to goods or services.
In this case, the use was of the sign
embedded within the computer system,
and was therefore use in relation to
Hunter’s registered goods.
Part 4: Use Capable of
Affecting the Functions of the
Trade mark
The deputy judge reserved his most
detailed analysis for this point. He
affirmed that a trade mark monopoly
did not entitle the owner to an absolute
monopoly over all possible uses of
the mark. Rather, he was entitled to
protection only against those uses that
affected, or were liable to affect, its origindenoting message.
In assessing whether use would have this
effect, the perspective of the average
consumer was key.
Having already found that RxWorks
were using an identical sign to Hunter’s
registered mark in the course of trade
in identical and similar goods, without
consent, the only question that remained
was whether the use was, in the eyes of the
average consumer, capable of affecting the
ability of Hunter’s mark to denote trade
origin.
In this case, the average consumers were
28
not just veterinarians, but also specialist
systems administrators called upon by
vets to install and maintain the RxWorks
computer system. With such users, the
deputy judge cautioned, expectations
must not be set too low: many such users
were likely to know about the Microsoft
“.local” domain naming convention and to
understand the technical significance of
“vet.local” in the ways in which it appeared
on-screen.
judge, may often be inappropriate to
RxWorks claimed that it had adopted the
“.local” domain in line with the Microsoft
convention, and had chosen “vet” as a
relevant descriptive term for the ultimate
users.
the market for 5 years, Hunter was
The deputy judge accepted this and
considered it unlikely that the average
user encountering “vet.local” on the
RxWorks system would think that the
sign was anything more than a technical
setting. Hunter adduced no evidence that
users would perceive the mark differently,
and the deputy judge found that the use
was not, therefore, capable of affecting
the origin-indicating function of Hunter’s
trade mark.
resolve on an application for summary
judgment.
In this case, the issues were sufficiently
straightforward and the likelihood
of further relevant evidence at trial
so remote that it was appropriate to
dispense summary relief. Influential,
no doubt, was the fact that although
the RxWorks system had been on
unable to point to a single instance of
confusion, or to any statements from
vets that they had perceived “vet.local”
as denoting origin.
In other cases, however, the issues
may be more complex, and, given the
widespread potential for embedded
use in software and other electronic
media, are unlikely to go away. The
deputy judge’s affirmation that
embedded use can amount to use
in the course of trade is therefore
of critical importance. The mere fact
Summary judgment for unjustified threats
was granted, and Hunter’s counterclaim
for infringement failed.
that a sign is not visible at the point
Comment
capable of undermining a registered
This was the first English High Court
decision to analyse the impact of
Céline in detail, and its firm lead
on the principles to be applied is
extremely helpful. Useful, too, is the
deputy judge’s observation that similar
principles apply also to infringement
involving elements of similarity rather
than pure identity of marks, goods and
services.
mark’s ability to denote origin.
This seems right, and the structured
approach advocated by the deputy
judge may help to avoid errors as a
result of eliding separate and distinct
elements of the infringement test.
becomes visible at all except in code
Not even the structured Céline
approach, however, can avoid some of
the difficult issues posed by hidden
use which, as noted by the deputy
of purchase will not in itself avoid a
finding of infringement, provided it is
This last point is key: whether
embedded use can affect the functions
of a registered mark depends very
much on the nature of that use. A
mark that appears on the screen when
a piece of software is installed may
have a very different impact on the
average consumer than one that never
accessible only by engineers repairing
or modifying the system.
The issue is highly fact-dependent and
the answer will vary from case to case.
The prevalence of electronic media,
however, is likely to ensure that this
issue is examined again soon.
U.K. COURT DIARY
Handling Parallel English
and OHIM Proceedings
W
hen a CTM is challenged both
before OHIM and a national
court, parties often differ as to which
body they would prefer to decide the
case. Both OHIM and the national
court have the power to suspend
proceedings pending the outcome
of the action before the other, but
the factors to be considered and the
general approach have until now
escaped careful scrutiny. With the
recent High Court decision in Kitfix
Swallow Group Ltd. v Great Gizmos
Ltd. [2007] EWHC 2668 (Ch), however,
the issues have finally had a proper
airing.
The Cross-Actions
In the action, Kitfix owned CTM
registration no. 3850039 for SEQUIN
ART for craft and hobby kits. Great
Gizmos, acting on behalf of a Hong Kong
company, 4M Industrial Development
Ltd., began distributing craft kits in the
United Kingdom under the identical
mark, SEQUIN ART.
Kitfix sued Great Gizmos, the U.K.
distributor, for trade mark infringement
and passing off in the English High Court.
Great Gizmos counterclaimed that the
CTM was invalid for non-distinctiveness
and descriptiveness under Article 7 (1)
(b) and (c) CTMR.
About 8 months later, the Hong Kong
source, 4M, brought a separate invalidity
action before OHIM challenging Kitfix’s
CTM on the same grounds raised by Great
Gizmos in court, as well as claiming that
the mark was not a trade mark, was in
common use and was in fact deceptive
under Article 7 (1) (a), (d) and (g).
OHIM Equivocates
Under Article 100 (2), in the absence of
“special grounds” OHIM must suspend
invalidity proceedings at the request of
one or both parties where an invalidity
action relating to the same CTM has
already been brought before a national
court.
Consequently, at the request of Kitfix,
OHIM suspended the 4M action pending
a decision by the High Court in the Great
Gizmos counterclaim. Subsequently,
for reasons that were never made clear,
OHIM lifted the suspension and stated
that OHIM was not bound to await a
decision of a national court where the
request for invalidity was based on Article
7. OHIM determined to decide the 4M
action.
Suspense in the Court…
If the 4M action succeeded, the Kitfix
infringement claim against Great Gizmos
would fail. Great Gizmos therefore
petitioned the High Court to suspend the
English proceedings pending OHIM’s
decision. It argued that it would be
inequitable for it, as distributor, to have to
incur the much greater costs of defending
a High Court action when an action
involving the source of the goods and
most of the same issues could be decided
before OHIM instead at much lower costs,
thereby probably dispensing with most
of the issues on the counterclaim in the
High Court case.
In reply, Kitfix contended that to suspend
the High Court proceedings would be to
delay a decision in the case for at least
3-6 months, since it was common ground
that OHIM would not decide the 4M case
until, at the earliest, January 2009. Kitfix
vigorously challenged the appropriateness
of OHIM’s own stay and argued that
the English action, filed some 8 months
before the OHIM claim, should be
decided expeditiously.
The High Court agreed. It found no
presumption that English invalidity
proceedings should be stayed pending
the outcome of later-commenced OHIM
proceedings. Indeed, it considered that
if a presumption existed at all, it was that
OHIM should suspend the proceedings
before it under Article 100 (2). The court
was mystified as to why OHIM had lifted
its initial suspension order, as the mere
fact that an invalidity action was based
on Article 7 (a common basis for such
a claim) did not appear to constitute
“special grounds” to refuse suspension
under Article 100 (2).
Since there was no presumption that
the High Court should suspend its own
proceedings, the judge considered
that each case had to be weighed
independently.
In this case, the judge noted that
costs in the OHIM proceedings would
undoubtedly be lower than those before
the High Court, although he raised an
eyebrow at Great Gizmos’ OHIM estimate
of only £5,000. Nonetheless, the 3 – 6
month delay in a decision by OHIM
was significant from the point of view of
business certainty, and there was potential
for further uncertainty for several years if
an OHIM decision were appealed first to
the CFI and then to the ECJ. From OHIM,
the court noted, an appeal lay as of right,
whereas before the High Court, an appeal
required leave.
The judge took into account that
Kitfix had not sued Great Gizmos, a
mere distributor, in order to attain any
advantage, but rather because only Great
Gizmos was in the jurisdiction. Moreover,
he noted that the English action included
a passing off claim, which was separate
to the infringement and validity issues.
Finally, he gave weight to the fact that 8
months had passed before 4M brought
its invalidity claim before OHIM. The
judge considered it unlikely that Great
Gizmos had not notified 4M at an early
stage about the action in the U.K. Kitfix,
having relied all that time on the matter
being disposed of in the U.K., was entitled
to have the proceedings continue on that
footing.
The judge ordered the English
proceedings to continue.
Continued overleaf
Make Your Mark
29
U.K. COURT DIARY
Handling Parallel English.. continued
Comment
When judgment was handed down,
the court’s attention was drawn to a
new order by OHIM reinstating the
suspension of the proceedings before
it. OHIM did not explain its volte-face
other than to cite the prior decision
as an error. Had that error not been
made, the parties would have been
spared a great deal of expense in the
English proceedings.
Nonetheless, the judgment in Kitfix
is a useful guide to the factors that a
national court may take into account
in considering whether to suspend its
own proceedings pending the outcome
of a case before OHIM. They are also
relevant to both national courts and
OHIM in determining whether there
are special grounds for refusing a
suspension in cases where the matter
has already been placed before
another tribunal.
Where concurrent actions are running
before a national court and OHIM, it
is clear that the widely divergent costs
and timescales may make suspension
of the national procedure attractive
to one party, and unattractive to the
other. These are factors that are clearly
relevant to any decision on whether,
and where, to suspend. However, lower
costs will not always win out: factors
such as how quickly the national
court can resolve the matter, whether
the national claim includes issues
not before OHIM, and any delay in
bringing either proceeding will also
affect the decision on whether to
suspend.
The Kitfix scenario is likely to be
unusual, as OHIM is unlikely often
to have special grounds to decline
to suspend proceedings commenced
before it after a national action has
been filed. However, similar factors
may well be relevant to whether
there are special grounds to refuse
suspension.
The court’s guidance on this important
tactical issue is welcomed. Parties
seeking the edge in concurrent actions
should keep the Kitfix criteria in mind.
Perils of a Weak Mark in
JUST EMPLOYMENT
D
escriptive brands cost more to
protect, and are typically harder
to enforce. An English law firm
learned this lesson the hard way
recently, in Francis Geoffrey Bignell
t/a Just Employment (a Firm) v Just
Employment Law Ltd. [2007] EWHC
2203 (Ch).
The judgment is a salutary reminder
of the importance of choosing a strong
brand at the outset. As the decision makes
clear, marks that convey a double-meaning
are not necessarily as strong as one might
think, and a multidimensional play on
words is not likely to be registrable if one
possible meaning is descriptive.
Just Starting Out
The claimant, Mr Bignell, was an English
employment law specialist based in the
town of Guildford. He founded his local
practice in 1997 under the name JUST
EMPLOYMENT. He chose it because of its
dual connotations, denoting both that his
practice focused on employment law, and
that employment should be fair.
Mr Bignell’s practice was modest,
consisting only of him and an assistant
30
solicitor, and was limited to Guildford and
the surrounding area. He spoke and wrote
on employment law issues and enjoyed a
reasonably high local profile and a good
reputation. He typically advised employees
rather than employers.
In 1999, Mr Bignell applied for, and
was later granted, a U.K. trade mark
registration for the word mark JUST
EMPLOYMENT for inter alia legal services
relating to employment matters.
The defendant, Just Employment Law
Ltd. (“JEL”), was a Glasgow-based
Scottish company incorporated in 2004.
It offered employment law advice and
representation, primarily to employers, on
a fixed-fee annual retainer basis. Although
larger than Mr Bignell’s practice, it was
still comparatively modest and its activities
were mainly limited to Glasgow and the
surrounding area.
Mr Bignell became aware of JEL in 2005
through an Internet search, but it was
not until the following year that the first
hint of a conflict emerged. That year, in
November 2006, JEL ran a short radio
campaign broadcast in the London area
promoting its Glasgow-based business
in employment law representation. The
advertisement ended with the statement,
“For a fixed annual fee, your business can
retain our team of experts for unlimited advice,
24 hours a day, for all your employment law
needs. Budget with certainty; call us on 020 7
890 3167. Just Employment Law, employment
law specialists.”
The telephone number in the ad text was
a London number, but in evidence JEL
clarified that its Glasgow number had
been given in the actual ad.
Shortly after the advertisement aired, Mr
Bignell received at least 6 enquiries from
individuals seeking to contact JEL. Other
minor instances of confusion also arose,
when a marketing company invoiced Mr
Bignell for services it had provided to JEL,
and a broker contacted Mr Bignell in an
effort to put his client in touch with JEL.
Just a Shade Too Close
Based on these instances of confusion,
Mr Bignell sued JEL for trade mark
infringement and passing off. JEL denied
passing itself off as Mr Bignell’s practice
and counterclaimed that the registration
U.K. COURT DIARY
Perils of a Weak Mark..continued
was invalid because the mark was
descriptive.
Just NOT GOOD ENOUGH
Mr Bignell’s action did not prosper. The
High Court upheld the counterclaim for
invalidity on the basis that the average
consumer would understand the words
JUST EMPLOYMENT as denoting that
the legal services provided related only
to employment law. The mere fact that
“just” had a double-meaning in respect
of “employment” was not sufficient to
confer registrability, since in line with the
ECJ’s judgment in DOUBLEMINT (Case
C-191/01 P), multiple meanings did not
avoid a finding of descriptiveness if at least
one of those meanings was descriptive.
The registration might have survived
and JEL’s activities been squashed
had the judge been satisfied that
JUST EMPLOYMENT had acquired
distinctiveness as a result of the use made
of it by Mr Bignell. However, Mr Bignell
failed on this point as well. The judge held
that since a U.K. registration extended
to the whole of the U.K., acquired
distinctiveness had to be assessed on a
national basis.
The judge drew support from the ECJ’s
decision in Bovemij Verzekeringen NV v
Benelux-Merkenbureau [2006] ECR I-7605
(see Make Your Mark Autumn 2007), in
which the ECJ confirmed that acquired
distinctiveness must be proved throughout
the part of a member state in which an
objection applied. This position has
since been bolstered by the more recent
decision in Alfredo Nieto Nuño v Leonci
Monlleó Franquet (Case C-328/06), on
the meaning of “reputation in a member
state” (see “Geography 101: Surveying
Reputation in an Expanding E.U.” in this
issue.
Even if JUST EMPLOYMENT were
understood as denoting Mr Bignell’s
business in and around Guildford, the
mark would be understood descriptively
throughout the U.K., and Mr Bignell’s
mark had not come to denote his business
to a significant proportion of consumers
of employment law services throughout
the country. No evidence of market share
was provided, but it was clear that Mr
Bignell’s business was small and there
was no independent evidence that it was
known outside of Guildford.
The judge found that the mark was
descriptive throughout the U.K., had not
acquired distinctiveness for the whole
territory, and was therefore invalid.
On the passing off claim, the judge
acknowledged that goodwill could be
local, and Mr Bignell’s goodwill was
held to be very local indeed, extending
no further than Guildford and its
surrounding area.
The judge was not, however, persuaded
that JEL had misrepresented itself as Mr
Bignell’s firm or somehow connected to
it. The words comprising both practices’
names were descriptive and it was not
surprising that some minor instances
of confusion had arisen from the radio
advertisement given the parties’ common
field of activity. Even that confusion could
not be attributed to individuals thinking
that JEL was Mr Bignell, but rather to an
assumption that Mr Bignell was JEL.
The judge considered that no damage
had arisen from the minor instances
of confusion and was satisfied on the
evidence that JEL did not intend to run
any similar advertising campaigns in
the future. The passing off claim was
therefore denied, although the judge was
careful to note that a future action might
yield a different outcome if either party
changed or extended its activities, or if
JEL were to re-run its radio advertisement.
Comment
Mr Bignell failed in his attempt to force
JEL to change its name, and in the
process lost his trade mark registration.
In truth, Mr Bignell’s registration
was not worth much. Registrations
for descriptive marks may ward off
competitors just by their presence on
the register, but if competitors ever
push back, enforcement is likely to be
so hemmed about with risk as to be
simply not worthwhile. Competitors
may beat back enforcement actions
with counterclaims for invalidity, and
the cost of trying to rescue the rights
by proving post-registration acquired
distinctiveness can be high, and the
prospects dim.
Had Mr Bignell registered his mark in
a logo form or with other distinctive
matter, he may have retained his
rights. This would, however, have
been a double-edged sword, for any
potential claims based on the words
JUST EMPLOYMENT would have been
weakened by the presence of other
matter. Nonetheless, some such matter
may at least have allowed him to
retain rights that could, in principle,
be asserted against others without the
fear of a retaliatory invalidity claim. For
Mr Bignell, this would have been an
improvement.
The judge’s views on the registrability
of marks with a double meaning accord
with recent ECJ jurisprudence. If even
one potential meaning is descriptive,
the mark will not be registrable. This
mechanical approach is a continuing
disappointment to those investing
substantial sums in creating brands
that play on words and meanings
relevant to a product or service. The
inherent appeal and memorability
of such brands often resides in their
ability to communicate more than one
message, and there is no doubt, for
the average consumer at least, that
multidimensional meanings can create
a distinctive mark. Unfortunately, the
mechanical DOUBLEMINT approach
takes no account of distinctiveness
arising from layers of meaning, and is
likely to remain the law across the E.U.
for some time to come.
It is interesting to note that the UKIPO’s published manual of practice
approves “JUST” marks as registrable
where combined with the name
of goods or services and denoting
specialism in them. This practice
appears to conflict with the English
court’s approach in JUST EMPLOYMENT
and the ECJ’s ruling in DOUBLEMINT,
and may well have to be changed.
For businesses just starting out, the
lesson from Mr Bignell’s experience
is clear: choose a strong brand at
the outset that does not describe
the business’ intended activities. The
investment in creativity will be repaid
many times over by the expense
avoided in pursuing, and potentially
losing, rights in marks that are not
enforceable.
Make Your Mark
31
Section
Head
ABOUT
OUR FIRM
OUT AND ABOUT
Tim Pendered attended the INTA
Leadership Meeting in November 2007.
Nina Hurley will be at the ECTA
Conference in Killarney, Ireland in June.
Hazel Buckley, Roger George, Stephen
James and Tim Pendered will attend INTA
in Berlin in May. Please join us at our
hospitality suite; details to be announced
soon on our website, www.jenkins.eu.
OHIM’s Alicante News recently published
an interview with Jenkins partner and
leading designs expert David Musker. The
full text can be found in the January 2008
issue at http://oami.europa.eu/en.
Roger George chaired CIPA’s Trade
Marks Committee and addressed a visiting
delegation from the Korean Patent
Attorneys Association in September.
Katie Cameron spoke at the Minnesota
Continuing Legal Education Conference
on the overlap between trade marks and
designs in September. In November,
she spoke on designs at a Hawksmere
IP Update Conference in London, as
well as ITMA seminars in London and
Manchester. In December, she addressed
an InterLaw Conference in Brussels on
the subject of parallel imports. She will
attend PTMG in Dublin and the Design
Week Awards Dinner in March.
Cara Baldwin and Joanne Ling attended
the ITMA Autumn Conference in Treviso,
Italy in September 2007.
Hazel Buckley, Roger George, Joanne
Ling and Jennifer Pratt will attend the
ITMA Spring Conference in London in
March.
If we can offer you advice on the topics discussed in this Newsletter or any other
intellectual property matter, please contact us at:
R.G.C. Jenkins & Co., 26 Caxton Street, London, SW1H ORJ.
Tel: +44(0)20 7931 7141 Fax: +44(0)20 7222 4660
e-mail: [email protected]
Internet: www.jenkins.eu
If you would like extra copies of this Newsletter or one of our other publications, please either return a copy of this
page to Roger George or Stephen James at our Caxton Street address or send an email to: [email protected]
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The information contained within this Newsletter is not intended to provide an exhaustive or comprehensive statement of current law or practice.
No reliance should be placed upon it as a basis for any legal action or commercial decision and for any individual case specialist professional advice
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.
Jenkins Scores IN ratings
Respected industry observers Chambers
& Partners have confirmed Jenkins’
top-tier status, writing,
“A class outfit, this firm is well placed
to deal with international work, with
offices in London, Alicante and Munich,
and the quality of its individual names
alone often attracts work. Of the team,
‘wise old man of the trade mark world’
Stephen James is a well-respected
figure. ‘His background at Glaxo is
a real plus, as is his personal touch,’
sources remark.”
Autumn 2007
What “ales” our readers? Our
spirited Cryptic Drinks quiz
sadly produced no winners.
We’ll roll over the prize until next time. Meanwhile,
for those who can “beer” it , the clues with their
answers follow:
1. Perambulation aid for “Man in Black”.
(2 words, 6 + 6) Johnny Walker
2. Some feel this about 2012 Olympics.
(2 words, 6 + 5) London Pride
3. Wodehouse’s racing recommendations.
(2 words, 2 + 4) PG Tips
4. Communist rubbish gives you wings.
(2 words, 3 + 4) Red Bull
5. Friend is more knowledgeable.
(1 word, 9)Budweiser
6. Mixed-up trade block slakes your thirst.
(1 word, 5) Fanta
7. The notorious complaint (or, quite a well-known
game bird). (3 words, 3 + 6 + 6)
The Famous Grouse
8. The 55th English winner.
(2 words, 7 + 2)Britvic 55
9. Muddled French tome has an umlaut.
(1 word, 4) Moët
10. I hear you’re ordering pear cider, eh?
(1 word, 7) Perrier
11. Mispronounce this fish and you’ll play second fiddle. (1 word, 4) Bass
12. Sounds good if you need to post bond.
(1 word, 7) Baileys
13. In Moscow, this is иEиCH. (1 word, 5) Pepsi
14. Endless storm in a teacup. (1 word, 6)Typhoo
15. Sounds like Scotland’s national sport.
(1 word, 7) Carling
16. Succour to a rebel.
(2 words, 8 + 7)Southern Comfort
Jenkins, the Jenkins logo, R.G.C. Jenkins & Co., and
Make Your Mark are trade marks.
TM
© R.G.C. Jenkins & Co. 2008
Jenkins is the trading name of R.G.C. Jenkins & Co
32
32
Jenkins Community Design Newsletter
Munich
London
Martiusstrasse 5
26 Caxton Street
80802 Munich
London SW1H 0RJ
Germany
Tel: +44 20 7931 7141
Tel: +49 (0)89 340 77 26 - 0
Fax: +44 20 7222 4660
Fax: +49 (0)89 340 77 26 -11
E-mail: [email protected]
E-mail: [email protected]
Internet:www.jenkins.eu
Jenkins
Community
DesignDesign
Newsletter
32 Jenkins
Community
Newsletter
European Patent Attorneys, Chartered P
Alicante
Edificio Marina
Ave Maisonnave 41-6C
E-03003 Alicante Spain
Bristol
Broad Quay House
Prince Street
Bristol
BS1 4DJ
Tel: +44 (0) 117 975 8642
Fax: +44 (0) 20 7222 4660
32
a t e n t A t t o r n e y s , Tr a d e M a r k A t t o r n e y s
32

Make Your Mark

Transcription

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