Reported Trade Mark, Breach of Confidence and Human Rights Cases for February 2001

25 February 2001

Katharine Stephens


 BL No.


 Earlier Mark



 O/271/00 MOKKERS KICKERS Footwear (25)Opposition failed under s 5(2)(b). There was no likelihood of confusion between the two marks. The difference in prefix was sufficient to distinguish.
 O/291/00 PANACELL PANASONICVarious electronic and related equipment and parts (9)Prior to an opposition hearing, a request for cross-examination of the applicant was refused. The potential benefits of cross-examination were outweighed by the cost, time and expense that would be incurred. It could only be justified if it would be positively helpful to the Registrar in reaching a decision.


 AMPLIFIBERAMP (and other marks all with an AMP prefix)Electric, telecommunica-tions and optical devices and equipment (9)Opposition failed under ss 5(2)(b) and 5(4). A family of marks should be ignored for the purposes of s 5(2)(b). Each mark should be treated separately. There was no likelihood of confusion between the marks. A possibility of confusion was not sufficient.
 O/302/00 PRO SPORT PRO SPORTS BY HEIN GERICKE + device Clothing (25)Opposition succeeded under s 5(2)(b). The opponent's mark was not registered at the date of the opposition, but was subsequently registered. There was a strong likelihood of confusion as the dominant part of the earlier mark was almost identical to the applicant's mark.
 O/305/00 ZOOM Sensitized photographic films (1Opposition succeeded under ss 3(1)(b) and 3(1)(c). The mark was a common term of the trade. Opposition failed under ss 1(1), 3(1)(a), 3(3)(b) and 3(6).


Computer and telecommunica-tion and related equipment (9)Opposition failed under ss 3(3)(b) and 5(4)(a). "Mobile" could be taken to mean "portable" or "moveable" and the mark was not therefore deceptive under s 3(3)(b) in relation to non-telecommunication equipment. Under s 5(4), "warehouse" was held to be a non-distinctive element of the mark. The terms "mobile" and "carphone" were not synonymous and were insufficiently similar to give rise to a belief that there was a trade connection or other association between the parties.
 O/308/00 McBAINMcCAIN registered for all goods in class 32, including alcoholic beerSpirits and Scotch whisky (33)Opposition failed under s 5(2)(b). Both marks were surnames where the difference of a single letter was therefore of considerable importance. There was no likelihood of confusion between the marks.
 O/314/00 BARMAMBO 

Restaurant, catering, nightclub and bar services (42)

Opposition succeeded under s 3(1)(b). "Mambo" was accepted by the applicant to be a type of music. The mark was equivalent to, say, "JAZZ BAR" and was a sign that might serve in the trade to designate the kind or quality of the services. It was therefore devoid of distinctive character.


BENZ BOOM ROCK SOUL + deviceMERCEDES BENZ registered for, among other things, audio goods, leather goods, clothing and entertainmentPhotographic and recording discs; leather goods; clothing; entertainment services (9, 18, 25, 41)Opposition failed under ss 5(2)(b), 5(3) and 5(4). It was not appropriate to skew the test for reputation of a mark by relying on a particular section of the relevant public unless it could be shown that those persons were likely to be average consumers. In this case, there was no evidence of reputation in the word BENZ solus and, even if there had been, it was only in relation to vehicles in class 12.
 O/319/00IPRATOPIOV-ENTATROVENT / DUOVENT / OXIVENT / COMBIVENTPharmaceutical preparations and substances all containing ipratropium (5)Application for declaration of invalidity failed under ss 3(1)(b), 5(2)(b) and 5(4)(a). The applicant was unable to prove a monopoly in -VENT marks and consequently a conceptual confusion between drugs containing ipratropium. A survey sent by mail to respondents had to be treated with caution as the normal control mechanisms were not present.
 O/320/00SARANTOS CHARDONNAY + device SARAN Wines (33)Opposition failed under ss 3(6), 5(2)(b). There was insufficient likelihood of aural or visual confusion for opposition under s 5(2)(b) to succeed. Wine buyers tended to be discerning purchasers.
 O/322/00Device mark portraying round white tablet within round blue tablet Chemical products for industrial purposes; soaps, cleaning agents (1, 3)Objections maintained under ss 3(1)(b). The public would first have to be educated that the mark was a trade mark. As no evidence of use was filed, the application was refused.

1 Indicates goods or services of the applicant only, unless those of the opponent are identical or so close as to be considered identical.

Bad faith

Zeta Espacial S.A. v. Societé des Produits Nestlé S.A. (S. Thorley Q.C.; BL O/297/00)

Nestlé had applied to revoke two of Zeta's trade marks registered for MAGIC BALL on the grounds of non-use. (The marks survived the attack in relation to lollipops see [2000] RPC 439). Zeta made this application for MAGIC BALL in class 30 for confectionary and similar products at much the same time that Nestlé started revocation proceedings against the earlier marks. The Hearing Officer had held that Zeta had no intention of using the mark for any goods other than lollipops, that he could take no other view but that the application was filed, amongst other things, to frustrate the intentions of Nestlé and accordingly, the objection was made out under section 3(6). Zeta appealed to the appointed person.

Mr Thorley compared Lindsay J.'s conclusion on bad faith which "included acts of dishonesty and also dealings which fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the area being examined" (Gromax Plasticulture v. Don & Low Non-wovens [1999] RPC 367) with the First Cancellation Division's statement before OHIM inHarte-Hanks Data Technologies v. Trillium Digital Systems (unreported, 28.3.00). In summary, the First Cancellation Division stated that bad faith could be interpreted as unfair practices (not being limited to actual or constructive fraud) involving lack of any honest intention on the part of the applicant at the time of filing.

Mr Thorley stated his belief that Lindsay J.'s test was more disadvantageous to the applicant than that proposed by the First Cancellation Division. However, he did not resolve the issue on appeal as, even if the law was as stated by Lindsay J., he was satisfied that Nestlé (who did not appear at the hearing and had indicated their consent to the application as amended) had not made out their case. Mr Thorley held that Zeta had not only an intention to use the mark on lollipops, but also in relation to other confectionary. He did not see Zeta's tactics of applying for a new mark in the face of revocation proceedings as anything but prudent commercial behaviour when coupled with a bona fide intention to use the new mark.

3-D trade marks

Philips Electronics NV v. Remington Consumer Products Ltd (Advocate General Ruiz-Jarabo Colomer for the ECJ; 23.1.01)

Philips sued Remington for trade mark infringement in relation to its sale of a three-headed rotary shaver. Remington counterclaimed for revocation of Philips' trade mark which depicted the face of a three-headed rotary shaver with the circular blade heads arranged in an equilateral triangle registered in class 12 for shavers. The Court of Appeal provisionally concluded that the mark was invalid under sections 3(1)(a), (b), (c) and 3(2)(b), equivalent to Articles 3(1)(a), (b), (c) and (e) of the Directive, and referred a number of questions to the ECJ.

The A.G. opined that only one of the questions need be answered for the disposal of the matter; that relating to Article 3(1)(e)(ii) which provides that a sign cannot be registered if it "consists exclusively of the shape of goods which is necessary to obtain a technical result". He concluded "that any shape the essential features of which serve the achievement of a technical result must be regarded as a sign which [is excluded under Article 3(1)(e)(ii)], irrespective of whether it is possible to achieve that result using other shapes. If a sign meets those conditions, there is no need to consider whether it has any distinctive character". Indeed, it was altogether otiose - as well as contrary to the scheme of the Directive - to do so. However, commenting on one of the other questions, the A.G. stated that if a sign consisted of a shape which contained an arbitrary or capricious addition such that it contained an element the essential features of which did not seek to achieve a technical result, it would be appropriate to consider whether that shape had acquired distinctive character.

In the opinion of the A.G., the Directive excludes all shapes "necessary", in the sense of ideally suited, to achieving a technical result. This was to be compared to the wording of the Designs Directive which states that shapes "dictated by" technical function, in the sense of being essential, could not be protected. Under design law, this would allow protection for functional designs if the same function could be achieved by a different design. The bar was set at a different level for good policy reasons.

The A.G. also opined that there was no category of marks which possessed distinctive character such that they would not be excluded under Article 3(1)(b) to (d) (whether distinctive character had been acquired through use or otherwise), and which, none the less, were invalid under Articles 3(1)(a) because they were incapable of distinguishing the goods/services of one trader from those of another.

Copyright, Breach of Confidence and Human Rights

Douglas & Ots v. Hello! Ltd (Brooke, Sedley, Keene L.JJ.; 21.12.00)

Hello! magazine appealed against an injunction at first instance prohibiting the publication of photographs of the Douglas / Zeta-Jones wedding. The couple had entered into exclusive arrangements with co-plaintiff, OK! magazine, for the publication of photographs and had implemented extensive measures to ensure that "unauthorised" pictures were not taken at the ceremony. In spite of these arrangements Hello! magazine obtained and published pictures of the wedding.

The Court of Appeal agreed to lift the injunction, but in reaching their determination, considered a number of important new principles:

1.   Where injunctive relief is sought the Court must bear in mind, in addition to the equitable principles set out in American Cyanamid Co. v. Ethicon Ltd [1975] AC 396, the provisions of the Human Rights Act 1998, in particular, section 12. This requires the Court to refrain from granting injunctive relief against a party where that party's right to free expression under Article 10 of the European Human Rights Convention was affected, unless the Court is satisfied "that the applicant is likely to establish [at trial] that publication should not be allowed".

The HRA effectively provides an additional limb to the balance of convenience test established in American Cyanamid, requiring the Court, prior to granting an application for injunctive relief, to assess the merits of the applicant's case and to refuse an injunction unless it can be satisfied of a successful outcome for the applicant.

Although the Court of Appeal found that the claimants' claim was likely to succeed at trial, the balance of convenience test could not be satisfied. The appeal was therefore allowed.

2.  English law has traditionally refused to acknowledge the existence of a tort of privacy (see Kaye v. Robertson [1991] FSR 62). Individuals have however been offered protection through an extension of the law of confidence. In Attorney-General v. Guardian Newspapers (No.2) [1990] 1 AC 109 it was acknowledged that a confidence could arise "in equity" by a party's mere knowledge of a general restriction that the defendant had imposed on the use of particular photographs and a tort committed even though there was no contractual or special relationship between the parties.

L.J. Keene recognised that it was impossible to distinguish between the law of confidence as it now stood and a separate right to privacy. In particular, as the English courts were now required, when interpreting the common law, to take account of the right to respect for private and family life under Article 8 of the Convention it was probable that was now an actionable right in English law for privacy.

Reporter's note: We are grateful to our colleague Andrew Dyson for providing the above report. The Court of Appeal's decision in relation to interim injunctions should be compared to theImutran decision reported below which differs slightly in its approach to the impact of the Human Rights Act 1998 on the American Cyanamid test.

Imutran Ltd v. Uncaged Campaigns Ltd & Anr (The Vice-Chancellor, Morritt J.; 11.1.01)

The Vice-Chancellor upheld an application for extension of an interim injunction preventing the defendants from publishing illicitly obtained confidential documents or information derived from those documents until trial or further order. The test set out in American Cyanamid Co v. Ethicon Ltd [1975] AC 396 that in order for interim relief to be available, the claimant had to show that there was "a serious question to be tried" or "a real prospect of succeeding in [a] claim to a permanent injunction at the trial" was altered by the Human Rights Act 1998. Section 12(3) HRA states that "no relief is to be granted [where such relief might affect the exercise of the right in the European Convention to freedom of expression] so as to restrain publication before trial unless the Court is satisfied that the applicant is likely to establish that publication should not be allowed". Although the latter test of "is likely to establish" was moderately more stringent than theAmerican Cyanamid test, there were few, if any, cases, in the judge's opinion, in which the outcome would be different.

The defendants had received, anonymously, copies of a number of confidential documents relating to research on xenotransplantation carried out by Huntingdon Life Sciences on behalf of Imutran. The defendants sought to publicise information derived or quoted from the documents in the knowledge that they were confidential and highly sensitive. Nevertheless, they claimed that it was in the public interest and their democratic right to publish. The Vice-Chancellor held that Imutran was likely to succeed at trial in their claim to breach of confidence and that, paying particular attention to the freedom of expression in considering the balance of convenience, the latter favoured granting the injunction.

Imutran also claimed that their copyright in the documents would be infringed if they were published. The defendants claimed that disclosure was in the public interest (section 171(3) CDPA). Further, they submitted that the Court was no longer bound by the decision of the Court of Appeal in Hyde Park Residence v. Yelland [2000] 3 WLR 215 because, since that decision, the HRA had come into force. The Vice-Chancellor rejected this argument referring to his decision inAshdown v. Telegraph Group (reported below). There was no public interest defence in this case such that Imutran was not likely to succeed at trial.

Ashdown v. Telegraph Group Ltd (The Vice-Chancellor, Morritt J.; 11.1.01)

The Vice-Chancellor gave summary judgement for Paddy Ashdown in a claim to infringement of copyright in a minute of a meeting which he had prepared, the meeting being held between him, the Prime Minister and others. The minute had been leaked to the Sunday Telegraph which had published various articles based upon it.

The Sunday Telegraph sought to rely on Article 10 of the European Convention on Human Rights as part of a claim pursuant to the Human Rights Act 1998. The Sunday Telegraph submitted that it was entitled to the right of freedom of expression as provided for in Article 10 and that the Court could and should interpret and apply the provisions of the CDPA to give effect to it. In other words, Article 10 provided them with a new defence to copyright infringement in a manner not included in the CDPA. Although the judge held that Article 10 was relevant to intellectual property rights in general and copyright which, in particular, constituted a restriction on the exercise of the right to freedom of expression, it did not create a new defence over and above those already provided in the CDPA. The Vice-Chancellor held that the balance between the rights of the owner of the copyright and those of the public have been struck by the legislative organ of the democratic state and there was no room for any further defences outside the CDPA.

In the circumstances of this case, the Vice-Chancellor held that neither the fair dealing defence in section 30 nor the public interest defence in section 171(3) had a reasonable prospect of success. His conclusions were consistent with the Court of Appeal's decision in Hyde Park Residence v. Yelland [2000] 3 WLR 215. It was submitted that this decision was no longer binding on the Vice-Chancellor as judgment was given before the HRA came into force. This submission was rejected. The Vice-Chancellor had already held that the HRA was not a reason for interpreting the CDPA any differently. It followed that the decision of the Court of Appeal on the scope of section 171(3) was binding on him. Accordingly, he concluded it did not afford any defence to the copyright claim.

Additional damages

MCA Records Inc & Anr v. Charly Records Ltd & Ots (Rimer J.; BL C/13/00 ) 

In a long and complex judgment (of which only one aspect is reported in this summary), Rimer J. held that when considering the award of additional damages for copyright infringement under section 97(2) CDPA 1988, flagrancy implied the existence of scandalous conduct, deceit and such like and included deliberate and calculated copyright infringements. However, both features of section 97(2), flagrancy and benefit to the defendant as a result of the infringement, did not need to be present in order for additional damages to be awarded. In this case, Rimer J. directed that there should be an enquiry as to damages with a discretion to award flagrancy damages as the defendants' conduct was found to flagrantly infringe the claimants' copyright.

Written by Katharine Stephens and Rebecca Harrison.