Reported Trade Mark Cases for January 2001

25 January 2001

Katharine Stephens


 BL No.


 Earlier Mark



 O/248/00 BLUELEAF BROWNLEAFClothing and footwear (25)Objection under s 5(2) maintained. Imperfect recollection of the marks was likely to lead to confusion among the relevant public.
 O/260/00SUPER COFFEEMIX  Coffee and confectionary (30)Opposition filed out of time due to delay in postal service. There was no two day postal rule in relation to filing of trade mark oppositions. The date of receipt by the Patent Office was the filing date, regardless of any delay in the postal system unless an exceptional reason such as industrial action by postal staff arose. No such delay could be found here. Delays near the Christmas bank holidays were to be expected.
 O/262/00JET-TEK + deviceTEC - registered for adding machines, bar code printers, cash registers (9)Chemicals used in photocopying, photographic related equipment, stationery and office requisites (1, 9, 16)Opposition failed under s 3(1)(a). There was no likelihood of confusion even in relation to identical goods. The first syllable was of particular importance and TEC had limited protection because it had a certain descriptive meaning.
 O/266/00TAKE CONTROLTAKE CONTROL & device Electrical and audio devices and equipment and remote control devices for operating such equipment (9)Objections under ss 3(1)(b), (c), 3(6) and 5(2) maintained. Under s 3(6), the specification was held to be too wide. The applicant had no bona fide intention to use the mark in relation to all the goods that would fall within the specification.
 O/268/00PRIMA N!INA PRIMARK PRIMAClothing, excluding footwear (25)Opposition failed under s 5(2)(b). There was no aural or visual similarity and therefore no likelihood of confusion.

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

Cendant Business Answers (Europe) plc v. Autofax Ltd (A. James; BL O/257/00)

The application to invalidate the trade mark AUTONET registered in class 35 for the provision of advertising and business information in relation to the automotive industry failed. The grounds of invalidation were that, in breach of section 3(6), Autofax had no intention of using the mark in respect of all the services for which it was registered. Alternatively, the mark was partially invalid in relation to all services other than "the advertisement of second-hand cars for sale on the Internet." Mr James held that:

  • Every application for registration must contain a statement pursuant to section 32(3);

  • The statement must be truthfully made in respect of the goods and services listed in the application;

  • A literally true statement may still give rise to a finding of bad faith where (or to the extent that) a reasonable person with knowledge of the applicant's actual or intended trade under the mark would say that the terms used in the description of goods/services exaggerated the scope of the actual/intended trade to the point where the supporting statement under section 32(3) was not made in good faith;

  • There was presumption of good faith and it was for an attacker to establish otherwise.

It also appeared to Mr James that, from section 47(5) and section 3(6), an application could be made partly in good faith and partly in bad faith. Where the application was found to have been made partly in bad faith, the registration must be declared invalid to that extent.

On the facts of this case, Cendant was unable to make out a prima facie case of bad faith. However, in the event that he was wrong, Mr James considered the position where the evidential burden shifted to the proprietor and examined the proprietor's evidence. There was no dispute that the proprietor intended to provide an advertising service. Even if this has been a non-revocation case, Mr James would have regarded the distinction between advertising new and used vehicles as drawing too fine a line to succeed. In addition, the omission of the intended advertising information medium (the Internet) could not be said to affect the nature of the proposed services to the extent that, without that reference, the specification and supporting statement were made in bad faith. Similarly, points were made in relation to the proprietor's intention to provide business information. Therefore, the application for partial invalidation also failed.

Application to register DIANA, PRINCESS OF WALES (A James; BL O/261/00)

The executrices of the estate of Diana, Princess of Wales applied to register DIANA, PRINCESS OF WALES as a trade mark in a wide variety of goods and service classes. The application failed under section 3(1)(a). The use of the name as a mark did not indicate that the goods/services originated from a single undertaking. The application also failed under section 3(1)(b). In a trade mark sense, the name was devoid of any distinctive character.

A survey was conducted by the applicants to provide supporting evidence of indication of origin. It was conducted in two parts - the first in nationwide city offices of solicitors, bankers and accountants, the second part on a housing estate in London. There was a significant percentage of people who assumed that the mark indicated that there was a connection with a "Diana charity" or with the Memorial Fund or similar. However, the survey was found to be leading in that it encouraged respondents to guess, and it was restricted to goods whereas service classes were included in the application. The first question asked of respondents, whilst showing them a rectangular label depicting the words DIANA, PRINCESS OF WALES was "If you saw this on a label on a product who would you expect to receive some or all of the proceeds of sale?". Use of the words "proceeds of sale", Mr James held, effectively gave people a clue that the answer should be some sort of charitable foundation. There had been actual use and that had not depicted the mark in such a plain format and so there was no reason why it was shown to respondents in that way. In addition, it was held that to the extent to which the public had been misled by inaccurate media coverage reflecting statements by the applicants in relation to ownership of the intellectual property rights in the Princess of Wales' name, evidence supporting these erroneous beliefs should be ignored.

The applicants declined an invitation by Mr James to draw a distinction between those goods which the applicants believed had the best chance of registration and those for which the mark was more likely to be considered descriptive. Mr James indicated that in relation to the former, this might include, for example, radios and pushchairs. In relation to the latter, this was likely to include memorabilia or commemorative articles (e.g. badges, candles, calenders) as well as articles for which the mark would be entirely descriptive because they bore the Princess's image (e.g. figurines, posters, video recordings). By declining this invitation, and consistent with the evidence, the applicants indicated that all goods/services in the application had potential for exploitation for memorabilia or commemorative articles. Mr James held that at the time of the application (March 1999), the average consumer would not have "expected all commemorative articles bearing the Princess's name to be commercialised under the control of a single undertaking". In relation to services, it was highly unlikely that the use of the Princess's name would indicate to the public that it was being used as a trade mark in connection with a single undertaking, particularly in relation to charities as she supported so many and they were all separately controlled. The application therefore failed under section 3(1)(a).

Appeals to the Appointed Person

Raleigh International Trust v. Derby Holding Ltd (G Hobbs QC; BL O/253/00)

Raleigh International Trust sought to register a stylised word and device mark RALEIGH INTERNATIONAL (the dot on the "I" of RALEIGH being a globe) for a wide range of goods and services falling into classes 16, 21, 25, 26, 36, and 41. The opponent, Derby Holding Ltd, was a manufacturer (and licencor) of a variety of goods and was most widely known for its bicycles. It had 13 registrations for the word mark RALEIGH. Relevant registrations included specifications relating to bicycles, protective clothing for cyclists, cycle helmets and various related goods and parts.

The hearing officer held that the opposition succeeded in part in that the specifications in classes 25 and 26 should be amended to exclude goods such as clothes and badges for cyclists ([2000] CIPA 297). The opponent appealed to the appointed person, contending that the application should be refused under section 5(2) in relation to all goods specified in classes 16, 21, 25 and 26. Mr Hobbs dismissed the appeal. The specifications of the earlier marks would not, if the hearing officer's decision to specifically exclude products identifiable as cyclists' paraphernalia, cover similar goods. It was not appropriate for the purposes of section 5(2) (and therefore section 10(2)) to consider broader protection than that indicated in the specifications.

Comparative Advertising

British Airways plc v. Ryanair Limited (Jacob J.; 5 December 2000)

BA brought an action for trade mark infringement and malicious falsehood against Ryanair for the publication of two advertisements, one headed "Expensive Bastards", the other "Expensive BA". The ASA had already upheld a complaint against the first of these advertisements - but there was no evidence of anyone being misled by the statements made. BA's complaint was that the former was offensive and that, in both, Ryanair exaggerated in suggesting BA's fares were five times more expensive when they were only three times more expensive than Ryanair's fares. Jacob J. held that Ryanair had a defence under both section 10(6) and 11(2)(b) and that the case of malicious falsehood did not get off the ground.

BA listed four reasons for bringing the malicious falsehood claim as well as the claim to trade mark infringement. Jacob J. held that none of these points was good:

  • Ryanair could drop BA's trade mark from the advertisement but still produce one that was misleading; 

  • if BA was successful it would be able to claim (more) damages;

  • there was doubt surrounding the legal status and effect of section 10(6); and 

  • the meaning of the word "honesty" in section 10(6) had not been decided by a higher court.

Jacob J. rejected BA's submission that section 11(2)(b) did not protect honest comparative advertising. The defence under section 11(2)(b) (with the addition of the words "in accordance with honest practices") corresponding to the grounds of refusal in section 3(1)(c), indicated to Jacob J. that although to be registered a mark had to be distinctive, any honest descriptive use was permitted under section 11(2)(b). If Jacob J. was wrong on this point, comparative advertising would not be permitted by the Trade Marks Directive and section 10(6) would be a non-permitted derogation from the Directive.

Jacob J. further rejected BA's submission that the Trade Marks Act had to be interpreted in accordance with the later Comparative Advertising Directive. The Directive stated that it could be applied in any manner and in the UK had been implemented by a Regulation which did not amend the Trade Marks Act and did not confer or extend any private rights such as those given by the registration of trade marks. Furthermore, the Directive was much later in date than the Act. In consequence, section 10(6) was unqualified by the Comparative Advertising Directive.

Jacob J. therefore applied the 13 point test set out in C&W v. BT [1998] FSR 383 when considering the application of section 10(6), looking at the advertisement through the eyes of the "average consumer". The first advertisement was vulgar, but was a just use of the mark in relation to BA. It was not malicious. In relation to the price comparisons which were made, Ryanair used BA's most expensive flight available for the route, in other words a mid-week return flight which was five times more expensive that Ryanair's flight. BA argued that the flight that should be compared was the Saturday night stay flight which was only three times more expensive. Jacob J. held that the average consumer would expect Ryanair to take BA's most expensive fare as a comparison with their own in order to make their own product look more attractive, but would also be aware that a Saturday night stay would reduce the price. The omission of other information about the flights did not make the comparison misleading.

Copyright v. Rodney Fitch & Co Ltd (Neuberger J.; 10.7.00; BL C/33/00)

The action between the parties arose out of a written agreement under which the defendant agreed to carry out design and consultancy work in connection with the design and branding of the claimant's proposed web site, business cards, advertising literature and logos. The claimant's business was that of advertising and selling antiques over the Internet. The claimant claimed that the defendant provided design materials which infringed a third party's copyright that, in consequence, it was entitled to terminate the agreement and demand repayment of monies already paid. The defendant counterclaimed for monies owing to it. The Judge gave summary judgment for the defendant which included the following points:

1.  Neuberger J. held that an implied term should be read into the agreement that the defendant was under an obligation to carry out that design work with reasonable care and skill which would include a duty to use reasonable care not to include material knowingly copied from a third party without obtaining the necessary consent. Alternatively, the defendant was obliged to provide the claimant with design work fit for the purpose for which it was commissioned. Potentially infringing material included in the design work supplied would be in breach of this term. In practice, the Judge thought that the two implied terms would lead to the same result.

2.  Neuberger J. had to decide whether copyright existed in photographs of antiques which the defendant had allegedly copied. He considered the text books on copyright as there was no authority on this point. Although the threshold for originality was not high, nevertheless, some spark of originality had to be shown for copyright to exist in photographs. He decided that, in the case of photographs of three-dimensional objects (with which he was concerned), it could be said that the positioning of the object, the angle at which the photograph was taken, the lighting and the focus, could all be matters of aesthetic or even commercial judgment, albeit in most cases at a very basic level. In this case, the photograph appeared to have been taken with a view to exhibiting the particular qualities including colour and details of the antiques. This was sufficient for copyright to attach to the photographs.

3.  Some of the photographs used by the defendant on the web site as navigation buttons were held to be infringing copies as they were merely small reproductions of the original photographs. However, certain logos, which were the result of tracing the outline of various objects shown in various photographs were not. The logos were roughly drawn, did not show any of the detail in the photograph and certainly did not reproduce those aspects, for example, lighting, which characterised the photograph as a work capable of copyright protection.

4.  The fourth issue before the Judge related to whether the defendant had supplied the infringing works to the claimant for public distribution. There was evidence in support of the defendant's contention that the photographs were merely "dummy copy" and that the defendant reasonably expected the claimant to replace them with its own choice of photographs of antiques. The Judge did not decide this point on summary application so that, subject to this point, the defendant was found to be in breach of the implied term in relation to the infringing copyright works.

Neuberger J. then went on to hold that, even if the defendant had breached the implied term in the contract, this did not entitle the claimant to terminate the contract. Indeed, in this case, the claimant was not entitled to do so as it had received good consideration for monies paid under the contract (i.e. most of the design work was usable) and the defendant's action did not amount to a repudiatory breach. Therefore, the claimant had to pay the monies owing to the defendant (subject to any set off for sums of money which the claimant could prove it had expended in removing the infringing logos from the web site) and was not entitled to repayment to any of the monies already expended. The Judge ordered an interim payment of certain monies with the matter being remitted to a master for settlement of the final sum.