Reported TradeMarkandCopyrightCasesforAugus2003

18 August 2003

Katharine Stephens

TRADE MARKS

Appeals from UK Registry and OHIM decisions

Ref. No.

Application (and, where relevant, earlier mark)

Comment

O/168/03*FOIA CENTRE – business research services, in particular reviewing data under the Freedom of Information Act 2000 (35)Appointed Person, S. Thorley Q.C., dismissed the appeal. The application was refused under s. 3(1)(c). The acronym "FOIA" (Freedom Of Information Act) was in common use as an abbreviation at the time of the application and a propensity existed for such formal expressions to be referred to by an acronym. The Appointed Person found that it was inherently likely that the initials would be used to indicate the Act and related activities would be therefore contrary to s. 3(1)(c). The effect of the addition of the word “centre” was not argued and was therefore not considered.
O/187/03*“a pictorial representation of a pig…presented generally in profile” series of 16 marks – various goods and services (1, 4, 9, 36, 38 and 39)Appointed Person, G. Hobbs Q.C., dismissed the appeal. The application was refused under s. 32(2)(d) for lack of certainty, precision and singularity of representation. While visual descriptions could be sufficient under s. 32(2)(d), this application left room for differing perceptions of different individuals to be equally applicable bench marks with which to judge whether a given representation would fall within the relevant wording.
O/188/03*

K2 – clothing, footwear, headgear and gloves (25)

K-footwear (25)
Appointed Person, S. Thorley Q.C., dismissed the appeal. The application was refused under s. 5(2)(b). While the marks K and K2 were not confusingly similar in isolation, there was evidence of a sufficient reputation in the combinations of K used with other marks (such as sub-branding with the numeral 2), to lead to the belief that a significant proportion of consumers would confuse the origin of the products.
O/168/03*“the colour red as applied to a thread of fastener or threaded shank of a component” – locking, sealing and stabilizers (40)Appointed Person, D. Kitchin Q.C., refused to allow new evidence to be adduced on appeal. The new evidence added nothing new of substance, although, some parts sought to correct evidence of fact already given. There was no suggestion that the evidence could not have been sooner obtained with reasonable diligence and it was unlikely that it would have an important influence on the result.
O/198/03*

JCB + logo – financial and similar services (36)

JCB + logo – credit card services (36)
Before the Hearing Officer, the opponent was partially successful under s. 5(2) in that the specification was restricted to services relating to construction and agricultural machinery. The applicant appealed and at the same time applied to partially revoke the opponent’s mark for non-use. If the revocation were successful, the applicant submitted its appeal would succeed. It applied to stay the appeal pending the outcome in the revocation proceedings. Appointed Person, Professor Ruth Annand, dismissed the request for a stay and the appeal. The stay was refused because the applicant had originally made a deliberate decision to fight the opposition without seeking revocation and now must abide by that choice. The grant of a stay would also cause further delay and expense. If the revocation proceedings should ultimately be successful, the applicant could then make a new application for a wider specification – though any loss of priority in those wider services would be the applicant’s just desserts. As the revocation proceedings were the only ground of appeal, the appeal itself was dismissed.
CFI; T-156/01*

GIORGIO BEVERLY HILLS – soap, perfumery (3)

Four Spanish marks (figurative) containing J GIORGI, GIORGI LINE and MISS GIORGI – perfume, cosmetics (3)
Before OHIM, the opposition failed under Art. 8(1)(b). The CFI dismissed the appeal. Although the application contained the work GIORGI, the differences between the opponent’s marks and the application were such that there was unlikely to be any confusion in Spain. The overall impression created was different. There were also significant differences phonetically and conceptually.
CFI; T-156/01*

GIORGIO AIRE – toiletry, soap, perfume (3)

GIORGI LINE and MISS GIORGI (see above reported decision)
The Cancellation Division originally declared the CTM invalid under Arts. 52 and 8(1)(b). The Board of Appeal annulled the decision which was upheld by the CFI for similar reasons to those in the above report. The applicant for the declaration of invalidity failed to establish genuine use of the mark GIORGI AIR in the relevant period. The sales figures were very low (2,500 between 1994-1996), and were almost or totally non-existent in four of the five years. Therefore, the mark was not “consistently present".

Colour marks

Andreas Stihl AG & Co. KG v. OHIM* (CFI; T-234/01; 9.7.03) (decision not in English)

This decision is very curious in that it makes no reference at all to the ECJ’s decision in Libertel (Case C-104/01, [2003] CIPA 271). It affirms the decision of the OHIM Board of Appeal (R 477/2000-1), in refusing to accept an application to register a combination of two colours, orange and grey with specified Pantone™ numbers, for a range of machines and tools in class 7. The application consisted of a vertical oblong divided into two halves, orange on top and grey below.

The CFI decision accepts that in principle colours or combinations of colours are capable of constituting a CTM to the extent that they are capable of distinguishing the goods or services of one undertaking from those of another, and cites the somewhat similar earlier case Viking-Umwelttechnik v. OHIM ("Green and grey", Case T-316/00 [2002] ECR II-3715).

The CFI then goes on to repeat its own formulation of the objection under Article 7(1)(b) of the Regulation, "devoid of distinctive character". Such marks are those that do not permit the identification of the original of goods or services and thus do not permit the relevant public to repeat a positive purchase experience or to avoid a negative purchase experience when considering a subsequent purchase for the goods or services in question, see Rewe-Zentral v. OHIM (trade mark LITE, Case T-79/00, [2002] ECR II-705).

Once again, the CFI emphasises that Article 7(1)(b) does not distinguish between different types of marks but confirms its holding that the perception of the relevant public is not necessarily the same for all types of marks; in particular, there is a big difference between colour marks and word marks because colour marks are not normally used to identify origin, see the Viking case.

Given that distinctiveness must be related to the goods in question, here mechanical tools, some of which are destined principally for professional usage but there are also tools included in the specification destined for the end user or ordinary consumer. Hence, it is the ordinary consumer and his/her appreciation that is relevant in the present case. The verbal formula of the Lloyd Schuhfabrik case, (Case C-342/97, [1999] ECR I-3819), according to which the average consumer’s attention is not perfect and varies as a function of the category of the goods in question, is referred to.

With regard to combination of colours, the CFI recalls what it has said in the "green and grey" case (Viking), namely that, although the mark must be considered as a whole, that does not mean that examination should not also extend to scrutinising each element of which the whole is composed. On that basis, the colour orange serves naturally and generally to warn of danger with regard to use of the tools and therefore that colour does not confer an origin identification function for the goods in question. The particular Pantone™ shade specified, 164C, does not present a perceptible difference for the relevant public from other commonly-utilised orange colours and in any event the consumer’s memory would not retain any such difference.

With regard to the colour grey, the CFI agrees with the Board of Appeal that this is often used as the colour of metal or plastic of which tools are commonly composed. When it comes to the combination, it is observed that it is represented as a pure colour combination without reference to where precisely or how precisely it would be applied to the surface of a product or its packaging, without providing a concrete example of the "distribution" of the two colours. As the Board of Appeal had put it, in the most probable scenario for a consumer is to gain an impression that we are concerned here with orange on a grey background and not that there is a "fantasy" orange/grey colour combination.

The CFI also states that the particular combination of colour will not be recognised as a sign because the distribution of the two components is not given systematically on the products and could be used in very numerous different arrangements, which would not permit the consumer to apprehend and memorise a particular combination that would then be utilised to re-iterate and repeat a purchase experience, in an immediate and certain manner, see paragraph 34 of the Viking "green/grey" decision.

The CFI then refers to the products presented at the oral hearing. It appears that in reality it would not always be possible on the particular tools to maintain the approximate equality of surface areas that are orange with those that are grey and therefore it would be impossible for the relevant public to recognise the combination as a badge of origin.

The CFI also rejected an argument based on the effect of a range of products suggesting to the consumer that various products have the same commercial origin because they are generally presented in a common colour "dress". Such an analysis proceeds from a concept of commercialisation that has nothing has to do with the appreciation of registrability, as already decided by the CFI in DaimlerChrysler v. OHIM (trade mark TRUCKCARD, Case T-358/00, [2002] ECR II-1993, paragraph 47), since one must look at a single product in isolation so that the effect of a range is not then present.

The CFI concludes that the relevant public would not consider the particular colour combination here as a sign indicating that thus-coloured products have the same provenance of a particular enterprise but rather would consider it to be a simple element of finish of the products. Hence the rejection under Article 7(1)(b) is amply justified.

The CFI does not exclude the possibility that such a colour combination could eventually qualify for registration when it has acquired sufficient distinctiveness under Article 7(3) of the CTMR.

[Reporter’s Note: I am most grateful to the Editor who has provided this summary which he tells me was prepared from the French translation, although the original decision is in German, because French is a shade easier for him to read. As a "monoglot" I can only express my admiration and thanks.]

Slogans

Société des Produits Nestlé S.A. v. Mars UK Ltd (Sir Andrew Morritt V-C, L.JJ. Mummery & Sedley; [2003] EWCA Civ 1072; 25.7.03)

The Hearing Officer refused, under Section 3(1)(b), to register HAVE A BREAK in class 30 in respect of chocolate and confectionery. On appeal, Rimer J. upheld his decision ([2003] CIPA 37). The Court of Appeal, the V-C giving judgment, upheld Rimer J. on the question of inherent distinctiveness but referred the following question to the ECJ on the question of acquired distinctiveness:

"Whether the distinctive character of a mark referred to in Article 3(3) [of the

Directive]…maybe acquired following or in consequence of the use of that mark as part of or in conjunction with another mark?"

The Court of Appeal, in its decision on inherent distinctiveness, emphasised the need for a mark to identify a product as originating from a particular undertaking. The Hearing Officer had been correct in holding that HAVE A BREAK would be seen by most consumers as a neutral invitation to consume a snack when used in the course of promoting snack food products.

The key point in relation to the question of acquired distinctiveness was whether, through Nestlé’s use of the slogan "Have a break…Have a KitKat", the application had acquired distinctive character. Nestlé submitted that the word "it" in the context of the proviso to Section 3(1) did not necessary connote a use of the application separate and distinct from any other mark. If such use was sufficient, then the conclusions of the Hearing Officer and Rimer J. were based on a wrong view of the law. In this respect, the Court noted that in Ringling Bros-Barnham & Bailey Combined Shows Inc. (Case R111/2000-2) the OHIM Board of Appeal stated that with slogan-like phrases associated with a particular mark, repetition over time could create a separate and independent impression from the mark. The discrepant approaches to the issue of acquired distinctiveness between that case and this necessitated the need for the reference.

Infringement: Article 5(2)

Adidas-Saloman A.G. & Anr v. Fitnessworld Trading Ltd* (A.G. Jacobs for the ECJ; C-408/01; 10.7.03)

Adidas is the proprietor of a Benelux mark comprising three vertical stripes of equal width registered for a number of types of clothing. It is a strong mark and enjoys general recognition. Fitnessworld’s sports clothes bear a double-stripped motif. The Gerechtshof dismissed Adidas’ claim of trade mark infringement. The Court held that there was no likelihood of confusion (Article 5(1)) and no dilution (Article 5(2)) since the double-stripped motif was used for embellishment or decoration. The Hoge Raad referred various questions on the interpretation of Article 5(2) to the ECJ. A.G. Jacob, in giving his opinion, stated that Article 5(2) was intended to prevent the following three types of behaviour:

1. Dilution (expressed in Article 5(2) as detriment to the mark’s distinctive character): the essence of dilution is the blurring of the distinctiveness of the mark such that it is no longer capable of arousing immediate association with the goods with which it is registered.

2. Degradation or tarnishment (in Article 5(2), detriment to the trade mark’s repute): here the trade mark’s power of attraction is affected because of the way the infringing sign is used to appeal to the public.

3. Free-riding (in Article 5(2), taking unfair advantage of the mark’s distinctive character or repute): the concept of free-riding encompasses instances where there is clear exploitation and free-riding on the coat tails of a famous mark or an attempt to trade upon its recognition.

Adidas’ claim was to both free-riding and dilution.

A.G. Jacobs was of the following opinion. Firstly, Article 5(2) was not correctly implemented unless it not only covered dissimilar goods and services but also identical and similar goods and services (following Davidoff II (Case C-292/00; [2003] CIPA 38). He did not accept the UK’s submission that that judgment was merely permissive.

Secondly, he was of the opinion that the notion of similarity between a mark and a sign for the purpose of Article 5(2) was to be assessed upon the basis of a degree of sensory (following Seickmann (Case C-273/00, [2003] CIPA 37) or conceptual (following SABEL [1997] ECR I-6191 and Lloyd [1999] ECR I-3819) similarity between them. However, it was not necessary to show that similarity gave rise to a likelihood of confusion. Article 5(2) did not explicitly require that similarity caused a given state of mind on the part of the public. Instead, the provision focused of the effect of the use against which protection was given. Of course, there would be no relevant effect unless the sign brought the mark in some way to the mind of the relevant public. It would be sufficient if there was a sufficient degree of knowledge of the mark that the public, when confronted by the sign, would possibly make a connection between the two and that the mark might consequently be damaged (following General Motors, Case C-375/97, [1999] ECR I-5421).

Finally, A. G. Jacobs stated that, in his opinion, it is a condition of Article 5(2) that the allegedly infringing sign be used as a trade mark. That would not be the case where the sign was viewed purely as decoration or embellishment by the relevant section of the public because it would not then be regarded as being used for the purpose of distinguishing those goods. A.G. Jacobs added that, by analogy with other recent cases, such a decision was in the public interest

[Reporter’s Note: compare this requirement for "trade mark use" of a sign under Article 5(2) with the recent conflicting decisions of the Court of Appeal in Arsenal [2003] CIPA 340 and the House of Lords in Rv. Johnstone [2003] CIPA 341.]

Infringement: inter-relationship with passing off

Inter Lotto (UK) Ltd v. Camelot Group plc (L.JJ. Pill, Keene & Carnwarth; [2003] EWCA Civ 1132; 30.7.03)

Inter Lotto brought proceedings for trade mark infringement and passing off against Camelot for use by Camelot of HOTPICKS – being an infringement of Inter Lotto’s HOT PICK. Both parties used the marks in relation to running lotteries. Inter Lotto commenced its use on 4 August 2001. On 17 October 2001, Camelot caused the National Lottery Commission ("NLC") to apply to register the name HOTPICKS as a trade mark. Camelot was exclusively licenced by NLC and commenced using the mark on 7 July 2002. As a preliminary issue, Laddie J. ([2003] CIPA 395) held that Inter Lotto’s reputation and goodwill for its claim in passing off fell to be assessed on 7 July 2002. The Court of Appeal, Carnworth L.J. giving judgment, dismissed the appeal.

Camelot submitted, that based upon the provisions of Section 9(1), any use of its mark after the date of application was unlawful, although this would only be established retrospectively once the trade mark had been registered. Therefore, Inter Lotto’s reputation and goodwill for its claim in passing off fell to be assessed on 17 October 2001 as infringing use after that date should be ignored.

The Court of Appeal noted that the 1994 Act was not a comprehensive legislative scheme governing the relationship between registered trade marks and passing off. Section 2(2) was clear in its confirmation that the law of passing off was preserved, notwithstanding any apparent conflict or overlap with the provisions with the Act. Therefore, the Act did not override the general rule in passing off that the date of the defendant’s first use of the mark was the date at which the claimant’s goodwill and reputation was judged. The Court acknowledged that this left open difficult questions arising from the retrospective effect of trade mark registrations.

Parallel imports

Paranova AS v. Merck & Co. Inc. & Ots (EFTA Court; 8.7.03)

The Supreme Court of Norway asked whether, in this case where it had been established that the packaging of a pharmaceutical product was necessary to allow a parallel importer effective access to the market, "legitimate reasons…to oppose further commercialisation of the goods" within the meaning of Article 7(2) of the Directive existed on the grounds that the parallel importer had marked the new packaging with coloured stripes, that colour scheme being protected as a CTM.

The Court in its advisory opinion held that where, as in the present case, the right to repackage was beyond doubt and the parallel importer had, in exercising it, achieved effective access to the market, the ECJ’s "necessity test" (i.e. the requirement that the repackaging undertaken by the importer was necessary in order to market the product in the Member State of importation) was not decisive when interpreting the term "legitimate reasons". The national court was not to apply such test mechanically, but had to carry out a comprehensive factual investigation leading to a careful balancing of the competing interests of the parties. The repackaging had to be done in such a way that it did not impair the reputation of the trade mark and thus its owner. Thus, the following could constitute "legitimate reasons":

  • Defective, poor quality or untidy packaging;
  • Inappropriate presentation in e.g. advertisements (following Parfums Christian Dior v. Evora [1997] ECR I-6013);
  • Use of a trade mark giving rise to the impression that there was a commercial connection between the reseller and proprietor (following BMW v. Deenik [1999] ECR I-905).

In relation to the first two points, the Court was not aware of anything that would indicate that the coloured stripes used by the repackager could damage the reputation of the trade mark. In relation to the third point, in assessing confusion, the Court would have to take into account the manner in which these coloured stripes on packaging were perceived in the pharmaceutical and medical trades. The use of the coloured stripes alone would not constitute "legitimate reasons" provided that the name of the manufacturer and parallel importer were adequately stated. The fact that Paranova were pursuing the goal of generating its own "product range" by use of certain graphic designs, was, in itself, immaterial. Finally, Merck argued that the use by a number of parallel importers would risk denigrating the trade mark. The Court observed that the use by more than one undertaking was an inevitable consequence of the privilege conferred on parallel importers in recognition of their contribution to free trade.

Revocation

H. Young (Operations) Ltd v. Medici Ltd (Jacob J.; [2003] EWHC 1589 (Ch); 14.7.03)

The claimant’s mark ANIMAL was registered in, among others, class 25 for "clothing, footwear, headgear and T-shirts". The defendant submitted that, in its application for partial revocation for non-use, the specification in class 25 should be limited to "casual surf-type wear" with a possibly further qualification "for women aged under 30", since this was the claimant’s target market. Jacob J. did not accept this limitation to the specification. The defendant was urging an exercise in pigeon-holding which the ordinary consumer would not undertake if asked to form, for trade mark purposes, a fair description of the goods for which the mark had been used. The limitation to "casual clothing" was not fair because of the different purposes to which consumers would put clothes in their daily wear. The restriction in relation to an age range was also not fair because "today’s girl surfer is tomorrow’s wearer of elegant ANIMALE". He therefore decided that "clothing" was appropriately fair. In relation to footwear, the specification should be cut down to "casual footwear" because there was not the same breadth of use as for items of clothing. Thus, in the result and on the question of infringement, use of ANIMALE on the defendant’s clothing (elegant ladies’ fashion aimed at ladies 30-35 plus) was an infringement under Section 10(2).

COPYRIGHT

The Football Association Premier League Ltd & ots v. Panini UK Ltd (L.JJ. Brooke, Mummery & Cadwick; [2002] EWCA Civ 995; 11.7.03)

An interim injunction was granted by Smith J. ([2003] CIPA 95) against the sale of a Football 2003 Album with stickers of football players containing a substantial reproduction of the Premier League’s lion logo or the players’ own club badge logo. The Judge found that the copyright in the designs of the badges had been infringed by their reproduction in the photos of the professional footballers wearing the 2003 season’s kit. The Court of Appeal, Chadwick L.J. giving the main judgment, dismissed the appeal.

The only question before the Court was whether Panini had a defence under Section 31(1) CDPA (copyright in a work is not infringed by its incidental inclusion in an artistic work). The Court held that although the word "incidental" was not defined in the CDPA, as it was an ordinary descriptive English word, references to dictionary and Hansard would not assist. Further, the question was not to be answered by considering any subjective intentions on the part of the photographer. The question was to be answered by considering, objectively, the circumstances in which the artistic work (the image of the player as it appeared on the sticker or in the album) was created, which included the commercial reasons as to why the image had been taken. The Court then had to ask the question of why work A (the badge or logo) had been included in work B (the photograph of the footballer). In this case, the answer was self-evident. The objective was to produce something which would be attractive to a collector. There was no doubt that it was important, in order to achieve that objective, that the player should appear in the appropriate club strip. Thus, the inclusion of the individual badge or logo was an essential object for which the image of the player as it appeared on the sticker or in the album was created.

Mummery L.J. further expressed the opinion that the album was a "compilation" within Section 3(1)(a) CDPA. If this were the case, the defence in Section 31(1) would not apply. However, this point could only remain provisional because the Court had not had the benefit of any detailed legal argument on the point from either side and, further, it was possible to dispose of the appeal without deciding the point.

Reporter’s Note:

1. I am most grateful to my colleague from Bird & Bird Tom Frederikse for reporting the decisions of the Appointed Persons.

2. Websites at which those decisions marked with an asterisk can be found are as follows: