Now that the Office of Harmonisation of the Internal Market (OHIM) has started to grant community trade marks (CTMs), some of the first instances of trade mark owners seeking to enforce these have started to appear in judgments in the UK.

The CTM is governed by the laws set out in EC Regulation 40/94/EEC and, unlike the Directive referred to above, is directly enforceable in EC member states without the need for domestic legislation. Cases such as the present one provide an insight into the way the UK courts will deal with these and the way in which the treatment of CTMs will compare to the treatment of UK trade marks, which is governed by the UK Trade Marks Act 1994. This was passed in order to bring the laws of the UK into compliance with European Community (EC) Directive 89/104/EEC, the trade mark harmonisation directive.

Decon Laboratories Ltd owned two UK trade marks and one CTM, all for the word mark "DECON" in relation to various cleaning and disinfecting products in classes 3, 5 and 7. Specialist cleaning products for technical/industrial use were manufactured and sold under a variety of sub-brands: DECON 75; DECON 90; DECON-MATIC; and other variations that included the mark. There was evidence produced at the trial to show that the claimant s product was use in laboratories for cleaning.

The defendants manufactured and imported sterile cleaning materials for use in clean rooms, i.e. rooms in which the degree of contamination by organisms and by dust is strictly controlled. These were marketed under various names including DECON-AHOL and DECON-CLEAN. In order to qualify for clean room use, the defendants products were prepared to strict quality control standards that also required each batch to be traceable. Each bottle was supplied individually wrapped in two plastic bags.

It was clear that the claimant's product could not be used for the same purpose as the defendants' product, and the two products were sold through different channels: the claimant's through a catalogue and the defendants' via a website.

Pumfrey J. held that there was infringement under section 10(1) of the UK Trade Marks Act 1994 as the two marks were the same and registered in respect of goods which he decided were the same. The suffixes did not add anything other than a descriptor of the goods in question and did not change the principal sign which was the DECON mark. In the event that he should be considered to have applied section 10(1) inappropriately, the judge held that there was infringement under section 10(2) which allows an action for infringement to succeed where there is sufficient similarity between the goods and services to cause a likelihood of confusion.

The defendants counterclaimed for partial revocation of the UK marks on the basis that the claimant had not in the last 5 years used the marks on goods across the whole width of the specification. The judge was concerned by the presence of the words "sanitary substances" in each of the specifications. This was on the basis that it was a word that denoted a potentially wide class of substances, not all of which were used by the claimant, in other words the specification was too broad and the defendant was using goods that could be covered by that broad definition.

Both sides advanced alternative specifications for the trade marks: the claimant making the specifications wide enough to catch the defendant; and the defendants trying to exclude disinfectants that were not compliant with the US government standards which allowed their product to be used in the preparation of clean rooms. The judge held that when limiting a specification there where two considerations to keep in mind. First, the start point for the court would be that the trade mark owner would be limited to a description of the goods that they actually used. Second, the court should also be aware of the provisions of the UK Trade Mark Act which allow an action for infringement where there are dissimilar goods so long as there is proof of confusion amongst consumers. Having decided this, the judge amended the specification of each of the marks so that they were limited to disinfectants for "non-domestic use". The judge held that even on the amended definition there was infringement.

The counterclaim for revocation on the grounds of non-use could not be made against the CTM as the provision on non-use only applies where a mark has not been used at all for a complete five year period. Accordingly, as the CTM had only been granted on 1 April 1996, it was not yet possible to revoke it for non-use. The defendant therefore attempted to attack the registration on the basis that the trade mark owner had never had any bona fides intention to use the mark across the entire specification, even when they applied for the mark. Article 51(1)(b) of the Regulation prohibits registration of a mark if the application was made in bad faith. However, Pumfrey J. held that this ground for revocation was only available in limited circumstances, for example, "actual or constructive fraud or a design to mislead or deceive another or any other sinister motive". This followed the approach adopted by OHIM. In this case, no dishonest intention had been shown and the objection on bad faith failed.

The case illustrates that the UK court will recognize authorities issued by OHIM when interpreting the Regulation that governs the CTM. Another important point, following a number of earlier High Court decisions, is the importance of achieving the correct specification at the outset in order to avoid rectification to a narrower specification at a later date.

First published in WIPR in February 2001.