February 2011 

• Häfele GmbH & Co. KG v OHIM; Topcom Europe NV
• Chocoladefabriken Lindt & Sprüngli v OHIM
• Media-Saturn-Holding GmbH v OHIM
• Mo-Hwa Park v OHIM; Chong-Yun Bae
• BSH Bosch & Siemens Hausgeräte GmbH v OHIM
• Advance Magazine Publishers, Inc v OHIM;
• Galileo International Technology LLC v European Union
• Edwin Co. Ltd v OHIM; Elio Fiorucci
• Bavaria NV v Bayerischer Brauerbund eV
• 32Red Plc v WHG (International) Ltd & Ots
• Filtco Inc & Air Science USA LLC v Air Science Technologies Ltd
• BAFF (2006) Ltd v David George Robson
• Converse Inc. v Nowhere Co. Ltd
• La Chemise Lacoste SA v Baker Street Clothing Ltd
• Re Easistore Limited’s application
• Euro Gida Sanayi Ve Ticaret Ltd v Gima (UK) Ltd
• Re Solomon Telekom Company Limited’s Applications
• Chevron Cars Ltd v Chevron Racing Team Ltd
• Back Beat Inc v L.A. Sugar (UK) Ltd
• Evonik Degussa GMBH v L G Chem Ltd
• El Corte Inglés S.A. v Tuzzi Fashion GmbH (Anna Carboni sitting as an Appointed Person
• Beko Plc v Socks World International Ltd
• Re Fresh Direct Holdings Ltd
• Guillaume Margel v EGL Gem Lab Ltd
• Flos SpA v Semeraro Casa e Famiglia SpA; Assoluce–Associazione nazionale delle Imprese degli Apparecchi di Illuminazione

Decisions of the CFI) and CJ (formerly ECJ)

Genuine use

Advance Magazine Publishers, Inc v OHIM; J. Capela & Irmãos, Lda (GC; T-382/08; 18.01.11)

Advance Magazine applied to register as a CTM the word mark VOGUE for, inter alia, clothing in Class 25. J. Capela & Irmãos opposed the registration under Articles 8(1)(b) and 8(4) on the basis of its Portuguese mark for VOGUE registered for footwear in Class 25 and the registered business name VOGUE-SAPATARIA. Advance Magazine requested proof of genuine use of the earlier trade mark under Articles 43(2) and (3).

The GC overturned the second BoA’s conclusion that the mark had been put to genuine use (the case had previously been before the GC in relation to the construction of Article 76(2), reported CIPA Journal, October 2007).

It was not sufficient for genuine use of the mark to appear probable or credible; actual proof of that use must be given. The GC criticised the reasoning of the Opposition Division, endorsed by the second BoA, in so far as it was based on presumption and suppositions.

The GC noted, inter alia, that, although photographs of footwear models and insoles bearing the mark VOGUE may substantiate the ‘nature’ of the earlier mark (i.e. footwear), they did not provide any evidence to substantiate the place, time or extent of the use as required by Rule 22(3) of Regulation 2868/95 (the Implementing Regulation). The evidence adduced before OHIM, when assessed overall, did not establish to the requisite standard the genuine use of the earlier mark in Portugal during the relevant period.

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Galileo International Technology LLC v European Union* (Floyd J; [2011] EWHC 35 (Ch); 20.01.11)

Subject to a very limited point on the extent of the reduction to the specification of one mark, Floyd J dismissed Galileo’s appeal from the Hearing Officer’s decision to revoke one of Galileo’s marks in its entirety and to revoke two other of its marks in part under Section 46(1)(a).

Galileo was the proprietor of three trade marks for the word GALILEO for computer hardware in Class 9 (the “477 mark”), computers and related goods in Class 9 (the “333 mark”) and computer services in Class 42 (the “651 mark”). The EU sought to revoke the mark on grounds of non-use, Galileo also being the name of the European satellite navigation research program.

The Hearing Officer, Mr David Landau, held that Galileo’s evidence of use in relation to computer hardware effectively boiled down to some pictures of PCs bearing the Galileo name and device, a computer mouse bearing the Galileo name and invoices referring to Galileo PCs. In relation to software, the Hearing Officer held that Galileo had shown use in relation to travel and accommodation reservations. Accordingly, the Hearing Officer revoked the 477 mark and reduced the specifications of the other marks to computer software for travel and accommodation reservations (333 mark) and rental of computer hardware, rental and leasing of computer software, installation, maintenance and updating of computer software, all for use in relation to travel and accommodation reservations (651 mark).

On appeal, Galileo contended that the Hearing Officer had applied the wrong legal standard in assessing the evidence of genuine use because he had relied on the decision of the General Court (then the CFI) in Anheuser–Busch Inc v OHIM (T-191/07), which was a decision under the Community Trade Marks Regulation rather than the Trade Marks Directive. Instead, the Hearing Officer should have followed Ansul BV v Ajax Brandbeveiliging BV (C-40/01), which laid down less strict evidential requirements for genuine use than Anheuser–Busch. Floyd J held that there was no difference between the approaches adopted by the courts save that Anheuser–Busch did not expressly mention that there was no quantitative threshold. This did not, however, mean that it was suggesting that there was a quantitative requirement. In any case, the Hearing Officer had not imposed a quantitative threshold in his assessment of the evidence. 

Galileo’s second ground of appeal was that there was procedural unfairness because the EU had pleaded only that the mark be revoked in its entirety, and had not mentioned Section 46(5). Nevertheless, the Hearing Officer had partially revoked the 333 and 651 marks. Floyd J was unimpressed by this point. An applicant could plead that the mark had not been used at all in relation to any of the goods or services for which it was registered and it was then for the proprietor to plead the use that had been made of the mark.

Galileo also pleaded that there was procedural unfairness because it had not had adequate opportunity to deal with the limitations to the specifications proposed by the Hearing Officer. Floyd J considered this objection in relation to the individual marks. In relation to the 477 mark, Floyd J held that the crucial documents were the invoices which referred to maintenance and rental charges for GALILEO PCs. The Hearing Officer had concluded from this that the term GALILEO PCs in the context of the rental of computers belonging to Galileo and bearing well known manufacturers’ marks could equally be an indication of ownership rather than trade origin. Although the terms and conditions left open the possibility of selling equipment as part of the package, no actual sales were established on the facts. Floyd J held that there were no grounds for criticism of this conclusion. In relation to the 333 mark, Galileo argued that its software had extra functionality which was excluded by the restricted specification proposed by the Hearing Officer. However, Floyd J held that the Hearing Officer was clearly aware that not every aspect of the Galileo system was exclusively directed to the actual process of making travel and accommodation reservations. Whilst it was true in a technical sense that Galileo was selling software for calendars and document management, the Hearing Officer was entitled to conclude that the average consumer would not have perceived the use in this way. However, in relation to the 651 mark, Floyd J held that there was some evidence of use in relation to installation and maintenance of hardware, albeit within the travel and accommodation limitation. This was sufficient to allow a minor addition to the Hearing Officer’s reduced specification in the form of “consultancy in the field of computer hardware”. 

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Personal names; interpretation of national law on an application to invalidate a CTM

Edwin Co. Ltd v OHIM; Elio Fiorucci (AG Kokott for the CJ; C-263/09; 27.01.11)

Elio Fiorucci was a fashion designer who achieved certain renown in the 1970s in Italy. Following financial difficulties, an administrator was appointed in respect of his company, Fiorucci SpA, and the entirety of the company’s assets were transferred to Edwin Co. Ltd. For several years Fiorucci and Edwin collaborated.

Edwin registered ELIO FIORUCCI as a CTM for a range of goods in Classes 3, 18 and 25 and some years later Fiorucci applied for revocation of the mark under Article 51(1)(c) and a declaration of invalidity under Article 53(2)(a). The cancellation division allowed the application under Article 53(2)(a) without finding it necessary to rule on Article 51(1)(c). Edwin successfully appealed to the BoA which held that Article 53(2)(a) did not apply. The alleged infringement under Article 51(1)(c) was also rejected. Fiorucci appealed to the GC. The GC rejected the appeal under Article 51(1)(c) but allowed the appeal under Article 53(2)(a) (reported CIPA Journal, June 2009).

Edwin then appealed to the CJ, submitting primarily that the GC erred in its interpretation of the Italian provision relevant to Article 53(2)(a). The AG recommended that the CJ should dismiss the appeal on all grounds.

Under Article 53(2)(a) a CTM may be declared invalid if its use can be prohibited pursuant to another earlier right under national law. The relevant national law in this instance, Article 8(3) of the Italian Industrial Property Code (Codice della Proprieta Industriale “CPI”), provided that, if they are well known, personal names may be registered as trade marks by the proprietor or with his consent.

The AG firstly concluded that Article 53(2) would be applicable provided that the right under Article 8 of the CPI on which Fiorucci relied existed. In reaching this conclusion, the AG noted that the scope of Article 53(2) was extremely wide and should not be interpreted restrictively.

The AG then considered how Article 8 of the CPI should be taken into consideration when applying Article 53(2) and whether (and, if so, to what extent) a complaint of a legally incorrect interpretation of Article 8 of the CPI may be advanced before the EU courts.

According to Rule 37 of the Implementing Regulation (Regulation 2868/95), it was the applicant’s obligation to present the facts and establish before OHIM that the right on which it relied could prohibit the use of a subsequent mark. The AG noted that on first inspection this may appear strange, as it shifted the national legal position towards submissions on facts. However, there are no procedures available to the EU courts to refer to the national courts for a binding ruling, nor does EU law require proceedings to be stayed whilst the parties seek a declaration before the national courts. The AG concluded that, although the mere reference to national law in the Trade Marks Regulation does not transform the national law into EU law, where it is relevant for establishing Article 53(2)(a), an incorrect assessment of national law may result in a finding incorrectly establishing or denying the existence of a criterion (such as a right to a name) prohibiting the use of a subsequent mark.

Although an incorrect interpretation of national law may be challenged before the General Court, the AG concluded that there was only a narrowly-defined possibility of review on appeal, namely if it clearly followed that the first instance findings were incorrect or if the GC distorted the clear sense of the evidence submitted.

In this case, an allegation of distortion against the GC could not be maintained; the GC engaged in a detailed analysis of the wording of the Italian provision and assessed in a logical and consistent manner the Italian legal literature submitted to the BoA and to itself. The AG therefore recommended that the CJ reject Edwin’s appeal.

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Conflicts between protected geographical indications (PGIs) and later trade marks

Bavaria NV v Bayerischer Brauerbund eV (CJ (Third Chamber); C-120/08; 22.12.10)

The CJ considered a reference from the Bundesgerichtshof (German appeal court) concerning Bavaria’s right to the continued use of an International trade mark containing the word ‘Bavaria’ protected in Germany from April 1995, in view of the fact that the name ‘Bayerisches Bier’ was registered as a PGI in accordance with the simplified procedure provided for under Article 17 of Regulation 2081/92. Under the simplified procedure there was no requirement to publish details of proposed PGIs before registration. The priority date of Bavaria’s trade mark fell after the submission of the application for the PGI, but before the PGI was finally registered and published.

Bayerischer Brauerbund is a German association set up to protect the interests of Bavarian brewers. It is the proprietor of the various collective trade marks, including Genuine Bavarian Beer and Bayerisches Bier. Bavaria is a Dutch brewing company which began using the word Bavaria in 1925. It is the proprietor of several registered trade marks containing the word Bavaria (but not in Germany).

The questions referred essentially asked (i) whether Regulation 2081/92 or Regulation 510/2006 (which replaced Regulation 2081/92 and abolished the simplified procedure) was applicable for resolving the conflict between a name validly registered as a PGI in accordance with the simplified procedure under Article 17 of Regulation 2081/92 and a trade mark the application for registration of which was submitted before the registration and publication of the PGI but after the submission of the application for the PGI; and (ii) which date should be used to determine the primary of such PGIs.

The CJ agreed in part with the AG’s opinion (reported CIPA Journal, October 2010) that it was not apparent from the terms, objectives or general scheme of the later Regulation that it should have retroactive effect and therefore concluded that Article 14(1) of Regulation 2081/92 in its original version must govern the conflict in the present case.

However, the CJ disagreed with the AG’s conclusion that the material date for determining the primacy of PGIs registered in accordance with the simplified procedure was the date of publication of the registration. The CJ stated that Regulation 2081/92 must be regarded as a complete system which did not give Member States the power to fill in a lacuna by utilising national law. It was therefore proper to seek a solution in the light of the scheme, aims and objectives of the provision and Regulation at issue.

The CJ concluded that the date of the entry into force of the registration of such PGIs constituted the reference date for the purposes of Article 14(1) of Regulation 2081/92. In reaching this conclusion, the CJ observed that this date both satisfied the requirements of legal certainty and was consistent with the general scheme of the system introduced by Regulation 2081/92.  

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Trade mark infringement in the context of use by two casinos of signs incorporating the number 32

32Red Plc v WHG (International) Ltd & Ots* (Henderson J; [2011] EWHC 62 (Ch); 21.01.11)

32Red succeeded in its claims for infringement under Articles 9(1)(b) and (c) against WHG (part of the William Hill business). 32Red was a medium sized online casino which had operated since 2002. 32Red was the proprietor of CTMs for the word mark 32RED and the figurative mark depicted on the left below for a range of goods and services in Classes 9, 16 and 41 including computer software relating to games, gaming and gambling and casino services. 32Red was also the proprietor of a UK trade mark for “32”, registered for casino, betting and gambling services in Class 41.

In 2006, an online casino started operating under the name “32vegas.com”. WHG was later granted a licence to the 32vegas.com domain name and associated trade marks and actively operated a casino under the 32Vegas brand for a period of eight months.

32Red claimed that WHG was infringing its CTMs and UK mark under (respectively) Articles 9(1)(b) and (c) and Sections 10(2) and (3) by its use of the three text signs “32vegas.com”, “32vegas” and “32v” and three devices, the largest of which is depicted on the right above.

CTMs: use and reputation
Henderson J accepted that the 32Red name was chosen because it had a strong connection with the game of roulette and a British flavour. When 32Red started trading, the number 32 was not featured in the brand or URL of any other gaming or gambling website in the UK.
 
CTMs: infringement
Henderson J held that the goods and services covered by the 32vegas signs were identical or virtually identical to those covered by the CTMs. Furthermore, the similarity of the 32vegas signs to the CTMs was undeniable owing to the presence of the initial 32 followed by a single word having a gaming connotation (or a single letter ‘v’ which plainly alluded to the word “Vegas”). In assessing the likelihood of confusion under Article 9(1)(b), through the eyes of the average consumer of online gaming services, Henderson J observed that the online gambling market was a crowded and volatile one, with a large number of brands competing for customers’ attention, and generally low levels of brand loyalty. It was also relevant that 32Red was a strong brand with an excellent reputation which had always been promoted alone. 32vegas had been marketed as part of a family of brands in common ownership, where the reputation of the particular casino brand was relatively unimportant. Accordingly, the CTMs were likely to have made a stronger and more positive impression on the online gambling community than the 32Vegas signs.

Henderson J found that there was a likelihood of confusion because the overall impression created by the parties’ marks would have been very similar. They consisted of the same number in the dominant position followed by a single word, which in both cases had a general gaming flavour. It would be natural to draw the conclusion that the two casinos were under common ownership or economic control. Henderson J held that the allusion to roulette in the CTMs did not turn the marks into purely, or even partly descriptive ones. It merely added a layer of reference and increased the distinctiveness and memorability of the marks.

As regards Article 9(1)(c), Henderson J held that given his Article 9(1)(b) findings, the requirements of similarity between the marks, the existence of a link between them in the mind of the relevant pubic and a reputation in (at least) the UK had been satisfied. On a global assessment, use of the Vegas signs was detrimental to the distinctive character of the CTMs due to the risk of a false association with 32Vegas, which was a brand with an inferior reputation which was operating in the same marketplace. Furthermore these considerations coupled with evidence of the volume of complaints made about 32Vegas also caused detriment to the repute of the CTMs. Henderson J declined to consider “tarnishing”, preferring to leave the question open.

CTMs: Validity
Henderson J held that the CTMs were not invalid under Article 7(1)(c). The combination “32Red” did not describe or designate any feature or characteristic of the goods or services supplied by an online casino and for those reasons was inherently distinctive. The fact that the mark could be read as describing a particular result in roulette did not designate a characteristic of the game roulette and the association with roulette was no more than an association with one of the games offered by 32Red casino. 

Henderson J also held that the CTMs were not invalid under Article 7(1)(b), being entirely satisfied that the CTMs had at all material times functioned as a badge of origin and that the combination of “32” and “Red” had a clear distinctive character. For similar reasons, the Judge held that the challenge under Article 7(1)(d) was equally hopeless.

WHG also contended that 32Red had created confusion in the minds of the public by the use of other signs incorporating the figure 32 as Google Adwords; furthermore, this also rendered the marks non-distinctive. The CTMs should therefore be revoked under Article 51(1)(c). Henderson J held that although there was superficial attraction in this submission it must be rejected as any consumer clicking on a 32Red sponsored link would be in no doubt about the identity of the casino whose services were on offer.

The UK mark
Henderson J rejected WHG’s challenge to the validity of the UK mark under Section 3(1)(b), holding that there was no reason in principle why a two digit number could not be sufficiently distinctive to act as a badge of origin for a specific category of goods or services. The claims under Sections 3(1)(c) and (d) failed for the same reasons as the challenges to the CTMs. The claim under Section 46(1)(c) that the sign 32 had become the common name in trade for the provision of online casino products or services was also held to be hopeless.

Applying the guidance on Section 3(6) given by Arnold J in Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd ([2008] EWHC 3032 (Ch), reported in the CIPA Journal, December 2008) and by the CJ in Lindt (Case C-529/07, reported in the CIPA Journal, July 2009) Henderson J did not accept that 32Red’s application to register the UK mark for tactical reasons amounted to bad faith.

The claim for infringement of the UK mark under Sections 10(2) and 10(3) failed because 32Red had not yet acquired a separate reputation in the 32 mark in the two months after registration during which WHG was trading under the 32Vegas signs.  

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No summary judgment to dismiss claims for breach of contract and passing off

Filtco Inc & Air Science USA LLC v Air Science Technologies Ltd (“AST”) & John Haugh* (Judge Birss; [2011] EWPCC 001; 06.01.11)

Judge Birss refused John Haugh’s application for summary judgment that the Claimants’ breach of contract claim be dismissed and Air Science USA’s claims be dismissed.

Filtco manufactured fume cupboards in the USA which were sold under Air Science USA’s US trade mark, AIR SCIENCE.  AST purchased cupboards from Filtco and distributed them in the UK.  Filtco and Air Science USA claimed that the distribution was pursuant to an oral agreement, the terms of which granted AST permission to use the AIR SCIENCE mark provided that all goodwill accrued to Filtco. 

The Claimants contended that AST had breached the distribution agreement by cancelling all purchase orders and stating that the cupboards would be sourced from elsewhere. Furthermore, for six weeks thereafter, AST continued to use the AIR SCIENCE mark which, the Claimants contended, amounted to passing off.  The Claimants claimed that John Haugh, a former director of AST, was jointly liable as a joint tortfeasor on the basis of a common design. The claims against AST were subsequently settled so the only remaining claim was against Mr Haugh. Mr Haugh applied for summary judgment on the basis that no distribution agreement existed and no breach had occurred. Mr Haugh also contended that Air Science USA had no claim to the UK goodwill in the AIR SCIENCE mark and as such the claims brought by Air Science USA against Mr Haugh should be dismissed summarily.

Judge Birss refused to dismiss either of the claims. Although the Claimants’ evidence on the distribution agreement was terse, summary judgment required an absence of reality which was not present in this case. Furthermore, there was a clear conflict of evidence between the parties, which should be explored further at trial.

As to the passing off claim, although the Claimants’ primary case was that the goodwill belonged to Filtco, they maintained an alternative plea that the goodwill belonged to both Filtco and Air Science USA together. Judge Birss held that a finding at trial that the goodwill was held by both companies was perfectly realistic in the circumstances.  It was pointless to remove Air Science USA at this stage if there remained a prospect of a finding that the goodwill was jointly held and for the court then to have to make a special order that Air Science USA, a non-party, be entitled to a remedy.  The Judge also added that there was a severe risk that the costs of an action for passing off that lasted six weeks would dwarf the value of the outstanding issues and advised the parties to consider alternative dispute resolution.

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Selected decisions of the Appointed Person: July 2010 – December 2010

Case		O-254-10 BAFF (2006) Ltd v David George Robson (15.07.10)
Application (and where applicable, earlier mark)		- printed materials (16) - advertising; office functions (35) - insurance; financial affairs; real estate affairs (36) - telecommunications (38) - transport (39) - education; entertainment (41) - scientific and technological services (42)
Comment		Ms Carboni dismissed Mr Robson’s appeal from the HO’s decision to allow BAFF’s opposition under s 3(5) (based on ss 4(1)(d) and 4(2)(a)). The HO had held that the mark applied for comprised three elements: the Union Jack Flag; the words “the Combined Armed Forces Federation UK”; and a crown which bore a passing resemblance to (although perceptibly was not) a Royal Crown. All three elements had state and Royal annotations and taken together would lead the average consumer into thinking that the proprietor of the mark had Royal Patronage or was an organ of the state. Ms Carboni held that the HO had not erred in reaching this conclusion and thus the opposition under s 4(1)(d) should be upheld. The fact that the mark contained a representation of the Union Jack and as a whole was misleading meant that s 4(2)(a) was also made out and the HO had been right to allow the opposition under s 3(5). Ms Carboni held that contrary to Mr Robson’s submission that the word “Federation” informed consumers that there was no official endorsement since federations play no part in Government, the inclusion of the term was in fact more likely to contribute to the perception of official authorisation than to detract from it. Ms Carboni also held that the fact that the Combined Armed Forces Federation UK (of which Mr Robson was Secretary) was recognised by The Queen’s Regulations 5th Edition did not mean that it was endorsed by the Government or Her Majesty for the purposes of s 4(1)(d).

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Case		O-308-10 Converse Inc. v Nowhere Co. Ltd (20.08.10)
Application (and where applicable, earlier mark)		- bags (18) - shoes; clothing; headwear (25) - sports bags (18) - footwear (25) - clothing (25) - footwear (25)
Comment		The HO had not erred in allowing Converse’s opposition under s 5(4)(a). Professor Ruth Annand found that Converse had established goodwill in its “star” device simpliciter since the evidence showed that the star device was the focal point of Converse’s branding and appeared in places where the consumer would expect to see branding e.g. on the side of training shoes, on neck labels and breast pockets of clothing and on packaging and tags. Nor had the HO erred in holding that there would be a misrepresentation when the mark applied for was used in relation to identical goods because both parties were effectively using simple star devices. Professor Annand also held that the HO had not erred in allowing the opposition under s 5(2)(b). The HO had taken into account evidence of Nowhere’s actual use, including use on training shoes where the lightening device was extended so that the mark appeared to comprise a star element placed atop a stripe. The HO was entitled to take this into account and it had not caused her to compare the wrong marks.
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Case		O-333-10 La Chemise Lacoste SA v Baker Street Clothing Ltd 16.09.10
Application (and where applicable, earlier mark)		ALLIGATOR - sports clothing; headgear (25) - bringing together  clothing and headgear to enable customers to view and purchase the goods from a retail store, catalogue or on-line (35) - clothing, footwear, headgear (25)  - clothing, footwear, headgear (25) - sports clothing, clothing and underclothing (25)
Comment		Geoffrey Hobbs QC allowed Baker Street’s appeal from the HO’s decision to allow Lacoste’s opposition under Section 5(2)(b). The HO had based his finding of a likelihood of confusion on the presumed existence of a conceptual link between the marks in the mind of the average consumer. However, as the name most likely applied by the average consumer to the Lacoste marks was LACOSTE rather than alligator or crocodile whilst ALLIGATOR would clearly be perceived and remembered as an allusion to alligators in general, consumers would be unlikely to pair and match the marks. Accordingly, Mr Hobbs held that the marks were not linkable by any conceptual similarity of which the average consumer was likely to take cognisance. Furthermore, the HO was wrong to have held that the word and figurative marks were equally distinctive. Mr Hobbs held that the decision in Osotspa v OHIM (Case T-33/03, reported in the CIPA Journal, April 2005), where a shark device made up of the letters SHARK and HAI meaning shark in German were compared, did not support the proposition that a figurative mark and a word mark describing the figure should be deemed to have the same significance to the average consumer. The word mark ALLIGATOR did not have the power to trigger perceptions and recollections of the distinctively depicted imagery of any of Lacoste’s figurative marks and thus there was no likelihood of confusion. Mr Hobbs could see no basis for regarding the marks as sufficiently similar to result in anything more than a loose, general and non-confusing association between them.
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Case		O-342-10 Re Easistore Limited’s application 21.09.10
Application (and where applicable, earlier mark)		WE CREATE SPACE - storage of goods in a warehouse; provision of packaging materials for storage (39)
Comment		Geoffrey Hobbs QC dismissed Easistore’s appeal from the HO’s decision to refuse to register the mark under ss 3(1)(b) and 3(1)(c). As regards s 3(1)(b), the mark was a statement which would not be perceived as an indication of trade origin but rather as a statement about creating space for Easistore’s users. There had been no verbal manipulation or engineering of the kind sufficient to turn explanatory phraseology into a sign possessed of distinctive character. As regards s 3(1)(c), “any other characteristics” meant characteristics regarding what a trader supplied, as well as when, where, why and how the goods or services were supplied. It followed that a mark could be objectionable under s 3(1)(c) without being descriptive in every context in which it could be used in relation to the goods or services. WE CREATE SPACE was sufficiently direct and specific to be classed as a statement about the kind of services Easistore provided, thus the mark was descriptive under s 3(1)(c). The evidence did not support a finding of acquired distinctiveness.
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Case		O-345-10 Euro Gida Sanayi Ve Ticaret Ltd v Gima (UK) Ltd (23.09.10)
Application (and where applicable, earlier mark)		MELIS - meat, fish, poultry and game, dried and cooked fruits, vegetables, eggs, milk and milk products, cheese, edible oils and fats, salami and sausages (29) - rice, coffee, tea, bread, pastry, confectionery, sauces, spices, pasta (30) - agricultural, horticultural and forestry products and grains, fresh fruit and vegetables (31) - non-alcoholic drinks (32)
Comment		Geoffrey Hobbs QC dismissed Gima’s appeal from the HO’s decision to revoke its registration save in respect of cheese, salami and sausages in Class 29. Gima submitted that use in relation to goods or services of species X was sufficient to enable a trade mark proprietor to maintain a registration for goods or services of the genus to which species X belonged, with the test for identification of the genus being one of consumer perception based on conceptions of nearness and relatedness. Mr Hobbs held that this approach was not correct since it enlarged the concept of fair protection so as to relate it far too closely to the test for assessing whether goods or services were similar for the purposes of likelihood of confusion. The correct test for determining the scope of a reduction in the specification under s 46(5) required identification of the categories of goods or services in to which the particular examples of goods or services for which there had been genuine use fell. For that purpose the terminology of the resulting specification should accord with the perceptions of the average consumer of the goods or services concerned. The HO had carried out the correct exercise and the appeal should be dismissed.
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Case		O-353-10 Re Solomon Telekom Company Limited’s Applications 24.09.10
Application (and where applicable, earlier mark)		BRING THE WORLD CLOSER - promotional, advertising and marketing services (35) - telecommunications services (38) - entertainment services (41) NO WIRE, NO WORRIES - telecommunications services (38)
Comment		Geoffrey Hobbs QC dismissed Solomon Telekom’s appeal from the HO’s decision to refuse to register BRING THE WORLD CLOSER under s 3(1)(b). Mr Hobbs held that the expression, taken as whole, looked and sounded like a statement about an advantage flowing from the use of the services on offer. The advantage, and the methodology by which that advantage was delivered were not explained; however, a narrative statement could be uninformative in relation to an aspect of the services to which it referred without necessarily being apt to serve as an indication of trade origin. Thus, the expression was nothing more than an origin-neutral statement about the services concerned and registration should be refused under s 3(1)(b).  The HO had also refused to register NO WIRE, NO WORRIES under s 3(1)(b) on the basis that average consumers would understand the phrase to be one which advised consumers that the undertaking provided wireless, worry free telecommunications. The phrase was plain, unambiguous and without alternative meanings. Mr Hobbs held that the HO’s reasons for reaching this decision were correct and dismissed the appeal.
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Case		O-354-10 Chevron Cars Ltd v Chevron Racing Team Ltd (04.10.10)
Application (and where applicable, earlier mark)		CHEVRON B8 CHEVRON B16 CHEVRON B19 - vehicle; apparatus for locomotion by land, air, water, road and racing vehicles; parts and fittings for the aforesaid goods excluding brake linings and fans for motor vehicles (12) CHEVRON (unregistered)
Comment		Professor Ruth Annand dismissed Chevron Racing’s appeal from the HO’s decision to allow Chevron Cars’ opposition under s 5(4)(a). The HO had followed the decision of Mr Geoffrey Hobbs QC sitting as an Appointed Person in Croom’s Application [2005] RPC 2 where he held that when rival claims are raised as to the right to use a trade mark, the rights of the senior user prevail over the rights of the junior user. The HO held that Chevron Racing’s use of the marks applied for commenced in about 2000. At that time, although Chevron Cars’ UK business was in decline, the HO nevertheless held that it was likely to have had sufficient goodwill under the Chevron marks amongst its customers for racing car parts and associated restoration services that it would have succeeded in a passing off action brought at that time. Accordingly, Chevron Cars was the senior user of the Chevron marks. Chevron Racing’s main criticism was that the HO got the date wrong as to when its use commenced, which was at least in 1989, if not earlier. Chevron Racing relied on correspondence between it and Chevron Cars between 1989 and 1991 and proceedings commenced by Chevron Cars against Chevron Racing for copyright infringement and passing off in 1991. This evidence had been before the HO who held that Chevron Racing’s use of the mark was not use of Chevron as a trade mark but rather for the purposes of designating the cars as replicas of the original Chevron racing cars. Professor Annand held that the HO not erred in this finding. Chevron Racing also had submitted that the HO had erred in finding goodwill in the absence of actual sales in the UK by Chevron Cars and in omitting to find that there had been a fatal break in the chain of goodwill due to an assignment. Professor Annand held that the HO had considered the relevant evidence  and thus both submissions failed.
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Case		O-375-10 Back Beat Inc v L.A. Sugar (UK) Ltd (20.10.2010)
Application (and where applicable, earlier mark)		- Women’s clothing, men’s clothing (25) 26 RED SUGAR - Clothing, namely jackets, sweaters, vests, sweat shirts, sweat pants, shirts, blouses, t-shirts, pants, shorts, skirts, shorts, dresses, swimwear, hats and shoes (25) (CTM)
Comment		Iain Purvis QC allowed the appeal from the HO’s decision that there was a likelihood of confusion between the marks under s 5(2). The HO’s view that the number 26 and word RED appearing in the earlier mark could refer to the size and colour of particular items was wholly unrealistic. Instead, Mr Purvis held that these elements were extremely significant and played a critical role in establishing the distinctive character of the mark, which lay in the striking and unusual combination of the three words. Even assuming that the average consumer recognised the common element SUGAR, this was not so striking that one would assume that only the owner of 26 RED SUGAR would use it in a trade mark for clothing. The absence of the words 26 and RED, combined with the presence of the letters ‘L.A’ (together with the device), gave rise to a mark which created a completely different impression; the quirky and dissonant character of the earlier mark was lost, to be replaced with a much more conventional mark conveying the impression simply of something sweet from Los Angeles. In these circumstances, there was no likelihood of indirect confusion as found by the HO.
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Case		O-399-10 Evonik Degussa GMBH v L G Chem Ltd (10.11.10)
Application (and where applicable, earlier mark)		SEPARODE - electrodes; batteries; capacitors; fuel cells; battery separator membranes; separator plates (9) SEPARION - apparatus and instruments for the supply, distribution, transformation, accumulation, regulation or control of electric current (9) - membrane films to separate anodes and cathodes (17)
Comment		Geoffrey Hobbs QC allowed the appeal from the HO’s decision.  The HO had rejected the application for batteries but accepted it for the other goods in Class 9. The HO had wrongly held that the goods with the exception of batteries (in relation to which there was no appeal) were of a kind that would be bought with the utmost care and attention by people making every effort to make sure that there was no mistake in the purchase. This went beyond that which ought realistically to be attributed to people dealing with industrial products of the kind in issue. Accordingly, the opposition should have been determined consistently with the degree of perspicacity envisaged by the HO’s assessment of similarity, which had been correct. The application should therefore be refused in full under s 5(2)(b).
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El Corte Inglés S.A. v Tuzzi Fashion GmbH (Anna Carboni sitting as an Appointed Person; O-250-10; 12.07.10)

Anna Carboni dismissed the appeal from the Hearing Officer’s decision to reject the opposition. 

Tuzzi Fashion sought protection in the UK for the international trade mark TUZZI for “clothing” in Class 25.  El Corte filed an opposition under Section 5(2)(b), relying on an earlier CTM application and an earlier international trade mark registration, both of which included “clothing” in their specifications (shown below).

CTM                                                       IR (UK)

Ms Carboni first noted that in separate proceedings regarding El Corte’s CTM application, the roles and arguments of the parties were the opposite of those in the present case. While this did not lead to any form of estoppel, Ms Carboni accepted that if she were to uphold the present appeal based on the CTM, TUZZI should not be rejected unless and until the CTM was registered.

The Hearing Officer’s starting assumption in the analysis of visual similarity was open to criticism in that he assumed a consumer would see the earlier CTM as EMIDIO TUCCI, when he had previously identified the difficulty in discerning the word EMIDIO due to the stylised script. However this did not affect his analysis since he looked closely at the TUCCI element and made a direct comparison with TUZZI. There was no further error in the Hearing Officer’s assessment and it was clear that he appreciated that his conclusion on lack of visual similarity was not determinative, even in a case about clothing, because aural and conceptual similarity also had to be assessed.

Given that no evidence was presented as to the correct pronunciation of TUZZI, it was entirely appropriate for the Hearing Officer to consider the most likely possibilities and assess aural similarity with the earlier marks in each case. In any event, the Hearing Officer considered the phonetic comparison which El Corte submitted was the closest (TUZZI pronounced “tutzee” and TUCCI pronounced “tootchi”) but concluded that the presence of the word EMIDIO in front of TUCCI meant that the marks as a whole were not aurally similar. The HO made no error in reaching that conclusion.

The Hearing Officer’s analysis of conceptual similarity was strange, since he noted that both marks might be perceived as family names but then concluded there was no conceptual similarity. Ms Carboni therefore reconsidered the question. She held the earlier marks were likely to be perceived as a person’s signature. This, together with the general awareness of UK consumers of high profile Italian fashion labels such as GUCCIO GUCCI, meant that the average consumer would perceive the CTM as an Italian name. This was not the case for TUZZI, which was more likely to be seen as an invented word. Therefore Ms Carboni agreed with the Hearing Officer’s conclusion of lack of conceptual similarity.

Ms Carboni did not think it appropriate to substitute her own overall assessment of the matter. However in case it might be said that she should have done so, despite having found some errors in the Hearing Officer’s decision, she confirmed that she would have reached the same conclusion.

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Beko Plc v Socks World International Ltd (Daniel Alexander QC sitting as an Appointed Person; O-307-10; 20.08.10)

Daniel Alexander QC allowed the appeal on the basis of the Section 5(3) objection.

Beko owned three trade marks for the word BEKO, registered for goods in Classes 5 (washing machines and dishwashers), 7 (sound and video recording) and 11 (freezers and ovens).  It used the mark in a stylized form with a distinctive font, as shown below.

Socks World applied to register the mark BEKO SPORT in stylised form in Class 25 in respect of “clothing footwear and headgear” (see below). Before the Hearing Officer, Beko unsuccessfully opposed the application on grounds under Sections 5(3) and 3(6).

Facts
There was ample evidence that Beko’s mark had been extensively used in the UK, at least for a range of white goods, although there was nothing to suggest that the marks had a reputation associated with luxury or high quality goods.  There was no evidence from Socks World which challenged the claim that the director of Socks World was aware of the reputation of BEKO or that the font was chosen to mimic Beko’s mark. In the circumstances, Mr Alexander concluded that Socks World chose the mark in full knowledge of Beko’s mark, intending to replicate it as closely as possible albeit with an intention of applying it to goods in which Beko had no apparent or direct commercial interest.  However, Mr Alexander was not satisfied that the mark was adopted with the intention of damaging the BEKO brand, and on the evidence it was difficult to see how Socks World’s use would do so. Nonetheless, Socks World applied for the mark intending to take advantage of the connection which it would signal with BEKO and its goods and services. Although it was impossible to be sure, it was likely that this application was related to the fact that BEKO was the shirt sponsor of Millwall football club and that its mark featured prominently on shirts.

Mr Alexander noted that this case was an example of a situation where an undertaking adopted the (more or less well known) mark of another undertaking for trade in unrelated goods and services.  The Trade Marks Act potentially addressed a situation of this kind under two heads, Section 5(3) and Section 3(6). The starting point was that this should be allowed unless the specific conditions preventing registration were satisfied.

Section 5(3)
There was no appeal against the Hearing Officer’s finding that there was no relevant detriment as a result of the mark applied for.  Therefore, the argument was purely focussed on unfair advantage.  The Hearing Officer made his decision before the CJ handed down judgment in L’Oreal v Bellure (Case C-487/07, reported in the CIPA Journal, July 2009) in which it gave guidance on the requirement to show unfair advantage.  In that case the CJ held that the court should take particular account of whether the use of the sign was intended to take advantage of the distinctive character and repute of the earlier mark in such a way as to ride on the coat tails, thereby exploiting the marketing effort of the proprietor. Where it was shown that the defendant was attempting to do so, that would constitute unfair advantage.

Mr Alexander commented that a difficulty with the L’Oreal approach was that it focused considerable attention on the objectives of the user of the sign, and not just on its impact on the proprietor’s mark.  Further, the concept of intentional coat-tail riding left considerable latitude to tribunals to decide where the boundary lay in any given case. However Mr Alexander was not as persuaded as Jacob LJ had been in L’Oreal SA v Bellure NV ([2010] EWCA Civ 353, reported in the CIPA Journal, June 2010) that the CJ intended in its judgment to delete the requirement that the use in question should be unfair. For example, the user of a mark might intend other results such as signalling that their goods are similar or have similar characteristics. In this situation the concept of unfairness may exclude from liability free riding which in fact takes place but which was an unintended consequence.  There was nothing in either L’Oreal or Whirlpool v Kenwood ([2009] EWCA 753) which suggested that as a matter of policy Section 5(3) should be given an expansive interpretation.  Section 5(3) is not intended to have the sweeping effect of preventing the registration of any mark which is the same or similar to a trade mark with a reputation nor to make it automatically objectionable for the use of one mark to remind people of another.  In general the touchstone of liability is a finding of a clear exploitation on the coat tails of the earlier mark.

The Hearing Officer was entitled to conclude that, while Beko had advertised in a sporting context, this did not itself create any particular sporting image for the brand.  However Beko’s argument was not based only on its positive sporting image but on its reputation more generally.  Beko was justified in saying that the case based on the reputation enjoyed by it in respect of its household goods was not sufficiently analysed by the Hearing Officer. 

The Hearing Officer could not have undertaken his assessment on the basis of the approach set out in the L’Oreal judgment which, at the time, had not been given. That decision entitled the tribunal to give greater weight to the evidence relating to an intention on the part of the applicant to benefit from the reputation of the earlier mark. In those circumstances it was right to adopt somewhat more latitude as an appellate tribunal in the review of the decision than would be the case had the law remained unchanged.

Mr Alexander found that Socks World would obtain an advantage from use of the mark by benefitting from the power of attraction, reputation and prestige of Beko’s mark and exploiting Beko’s marketing effort without compensation.  The key factor in reaching this conclusion was the virtual identity of the respective marks having particular regard to the specific font chosen which was inadequately explained. Secondly, it was not possible to think of any other reason for adopting the mark other than to signal a connection with BEKO.  This was not therefore a case where the applicant provided an alternative plausible explanation for the application for the mark in precisely the form in question. Moreover, while the fields of clothing and white goods were remote, the specific association of the BEKO mark with sports clothing by way of its acting as the shirt sponsor of Millwall brought those fields closer together.  Notwithstanding the clear and careful reasoning of the Hearing Officer, it was right to allow the appeal on the basis of Section 5(3).

Bad Faith: Section 3(6)
Mr Alexander outlined the law relating to bad faith, noting that the CJ judgment in Lindt (Case C-529/07, reported in the CIPA Journal, July 2009) only provided guidance to national courts at a relatively high level of generality as to what factors may be taken into account.  Knowledge was an important factor, and the evidence showed that Socks World knew of Beko’s mark and, specifically, that it appeared on sports clothing.  Although it was not established that Socks World intended to prevent Beko from using the sign itself or to extract money from Beko, there was evidence, which was not adequately answered, that Socks World adopted the mark with the intention of trading off Beko’s reputation.  However Mr Alexander was not persuaded that this was sufficient for a finding of bad faith under Section 3(6).  Since the Section 3(6) objection did not add to the Section 5(3) objection, he did not disturb the Hearing Officer’s conclusion on that issue.

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Re Fresh Direct Holdings Ltd (Iain Purvis QC sitting as an Apppinted Person; O-367-10; 06.10.10)

Iain Purvis QC held that the Hearing Officer was right to refuse to register the word marks FRESH DIRECT and FRESH DIRECT LOCAL for goods and services in Classes 29 and 31 but wrong to refuse to register the device marks for goods in Class 31.
 
Fresh Direct applied to register the trade marks depicted below for goods in Classes 29 and 31 and for transport, packaging and storage of food in Class 39. The Hearing Officer refused the marks in their entirety under Sections 3(1)(b) and 3(1)(c). Fresh Direct then filed two further identical applications, this time relying on distinctiveness acquired through use. The applications succeeded in part, with the FRESH DIRECT device being allowed for goods and services in Classes 29 and 39 and for fresh fruit and vegetables in Class 31 and the FRESH DIRECT LOCAL device being allowed in respect of goods and services in Classes 29 and 39 but refused in respect of goods in Class 31 on the basis that the device bolstered the idea that the goods were fresh and locally produced, which was descriptive of goods in Class 31. 

In relation to the FRESH DIRECT LOCAL device marks, Mr Purvis held that there was no basis for the distinction between goods in Class 31 and goods in Class 29, since meat, fish, poultry, eggs and milk were all products which could be fresh and locally produced, and all fell within Class 29. Furthermore, the device comprising, a gate in a hedgerow, alluded to a rare kind of local producer of fruit and vegetables, as a result of which consumers would consider the mark to be origin-specific. The application should be allowed for goods in Class 31. Mr Purvis held that his findings on the inherent distinctiveness of the FRESH DIRECT LOCAL device marks applied equally to the FRESH DIRECT device marks. Accordingly, registration should be allowed across the whole scope of Class 31.

However, Mr Purvis held that the Hearing Officer was right to refuse to register the FRESH DIRECT word mark under Section 3(1)(c) since the words were individually descriptive of the goods applied for and the impression created by the combination of words was no more than the sum of its parts. Although the mark had acquired distinctiveness in the field of fruit and vegetables amongst trade customers, this was not sufficient to conclude that the mark was well-known to the public in general (the average consumers of fruit and vegetables). The Hearing Officer was also right to refuse to register the FRESH DIRECT LOCAL work mark under Section 3(1)(c) since the addition of the word “LOCAL” did not assist the case on inherent distinctiveness or acquired distinctiveness, with the latter actually being weaker since the mark had been used for less time.

DESIGNS

Copyright in Designs under the Designs Directive

Flos SpA v Semeraro Casa e Famiglia SpA; Assoluce–Associazione nazionale delle Imprese degli Apparecchi di Illuminazione (CJ (Second Chamber); C-168/09; 27.01.11)
Flos SpA brought copyright infringement proceedings in Italy against Semeraro in respect of its ‘Arco’ lamp.  Semeraro had imported its ‘Fluida’ lamp into Italy from China and it was held in interim proceedings that the Fluida lamp slavishly imitated the stylistic and aesthetic features of the Arco lamp.  The Tribunale di Milano stayed the proceedings and referred three questions to the CJ regarding designs which were eligible for copyright protection under Article 17 of Directive 98/71 (the Designs Directive) but were in the public domain before 19 April 2001, the date on which the national legislation implementing Directive 98/71 entered into force in Italy.
 
The first question asked whether Article 17 must be interpreted as precluding national legislation which excluded from copyright protection such designs if they were:
 
(i) unregistered designs; or
(ii) registered designs, however, the protection deriving from their registration had ceased to be effective as at 19 April 2001.
 
The CJ held that only a design protected by a design right may be eligible for protection under copyright law by virtue of Article 17.  As such, unregistered designs falling into category (i) did not fall within the scope of Article 17.  However, Article 17 precluded any national law which excluded copyright protection of a design falling into category (ii).
 
The second and third questions asked, in essence, whether Article 17 precluded national legislation which provided an exemption from copyright infringement, for a period of 10 years or completely, for third parties which had exploited the design before the national legislation had come into force, where the design was eligible for protection under Article 17 and where the design entered the public domain before implementation of the national legislation.
 
The CJ held that Article 17 must be interpreted to preclude such national legislation.  The general principle of legitimate expectations applied and, as such, acts legitimately performed by a third party before the date of entry into force of the legislation were not affected.  However, a third party’s right to continue exploitation after entry into force of the legislation would be affected where copyright is revived.  Although a transitional period required to safeguard that third party would be permitted, this would be limited to a period sufficient to sell off stocks of the now infringing products.  An indefinite or 10 year moratorium on copyright protection would not be justified to safeguard the economic interests of those third parties.

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Katharine Stephens, Zoe Fuller and Gina Brueton

Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Alice Sculthorpe, Chelsea Roche, Claire Barker, Emily Peters, Luisa Zukowski, Nick Boydell and Victoria Dearson.

The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the GC’s and CJ’s decision can be found at http://curia.europa.eu/jcms/jcms/j_6/home

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