Reported Trade Mark Cases for July 2001

25 July 2001

Katharine Stephens

































 BL No.


 Application


 Earlier Mark


 Goods/Services1


 Comment

 O/372/00 CODAS CODA (classes 9, 42 in relation to computers)

CODA OAS (classes 9, 41, 42, computers)

Computers in the oil distribution industry related goods and services (9, 37, 41, 42) Opposition succeeded under ss 3(6) and 5(2) with the exception of certain goods in class 9 - which would be allowed in relation to a more restricted specification - thus satisfying s 3(6). The evidence showed that there would be no confusion in relation to these goods as the marks had co-existed for some time without confusion.
 O/381/00[Cartoon style drawing of a monkey, series mark]MONKIES (both with and without monkey device)Nuts including ground nuts and peanuts (29, 31)Opposition failed under s 5(2)(b). The applicant's mark was not a standard representation of an identifiable animal such as a cat or a dog and there was therefore no phonetic equivalent - it could have been chimpanzee, general primate or monkey. The earlier mark was deemed to have a lower level of distinctiveness because MONKEY was a generic term for ground nuts or peanuts. There was therefore not sufficient similarity between the marks to give rise to a likelihood of confusion.
 O/387/00AARP (abbreviation for American Association of Retired Persons ARP OVER 50 (abbreviation for Association for Retired Persons over 50)(class 42)

ARP (unregistered)

 Printed matter, teaching materials, excluding computer software (16, 41)Opposition failed under ss 5(2)(b) and 5(4)(a), but suceeded under s 3(6). Under s 5(2)(b), the marks were borderline in terms of similarity, but this was more than offset by the differences. Under 5(4)(a), as those people with whom goodwill had been generated were members of the association, and therefore less likely to be confused as they would be aware of the difference between the acronyms. The opposition succeeded under s3(6) as the purpose of the application was for no other purpose than to pre-empt an application by the opponents.
 O/391/00THE INN ON THE GREENTHE INN ON THE GREEN (unregistered)Restaurant and café services (42) Opposition failed under ss 3(1)(a), (c), (d) and 5(4). The mark could function as a trade mark. It was not common to the trade, albeit that there were other pubs of the same name elsewhere in the UK. The opponent failed to show that it had sufficient reputation in the UK to prove passing off.

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

Appeals from OHIM

Deutsche Krankenversicherung AG v. OHIM (CFI; 7.06.01)

The application to register EUROHEALTH in class 36 for insurance services and financial affairs had been refused by the First Board of Appeal under Articles 7(1)(b) and (c). The CFI dismissed the appeal in relation to insurance services under Article 7(1)(c), but annulled the decision in relation to financial affairs. The CFI held that the mark was descriptive of health insurance services. The prefix "euro" only indicated that the services had a European character. Since the applicant did not distinguish between the different types of insurance services in its specification, it was appropriate to refuse the application as it related to those services as a whole. However, in relation to financial services, the CFI held that EUROHEALTH was not descriptive, the relationship between the mark and the services being too indeterminate and vague to be caught by the prohibition in Article 7(1)(c). Furthermore, since the Board of Appeal had not provided any additional reasons as to why the mark was not registrable under Article 7(1)(b), it was appropriate to annul that part of the Board's decision as well.

Telephone und Buch Verlags GmbH v. OHIM (CFI; 14.06.01)

The CFI held that UNIVERSALTELEFONBUCH (universal telephone directory) and UNIVERSALKOMMUNIKATIONSVERZEICHNIS (universal communications directory) were descriptive of the following goods and services: recorded memory media for data processing installations and apparatus, in particular tapes, disks, CD-ROMs (class 9), printed matter, reference works (class 16), publishing services, in particular the publication of texts, books, magazines, newspapers (class 41) and editing of written text (class 42). Therefore, the decision of the third Board of Appeal to refuse the applications in relation to the above goods/services under Article 7(1)(c) was upheld.

Ruf & Stier v. OHIM (CFI; 20.06.01)

The applicant for the trade mark DAKOTA paid the application fee 10 months late. The application was awarded a filing date on the date the fee was paid. The applicant applied for restitutio in integrum under Article 78 which was refused and the appeal dismissed first by the First Board of Appeal and then by the CFI.

Article 78 provides that an applicant "who, in spite of all due care required by the circumstances having been taken, was unable to observe a time-limit vis-à-vis the Office, shall upon application have his rights re-established ....". The CFI considered the evidence - but held that the oversight of one employee could not alone have accounted for the delay. The systems in place in Stier's office would normally have resulted in that error being noticed. Thus, not all due care within Article 78 had been taken.

The applicant also criticised the Office for not warning it of the time limit for payment of the application fee (Article 27). The CFI held that the agent, Stier, was well aware of the time limit and therefore the alleged defect, even if proven, was irrelevant. Finally, the rules (Rules 9(1) and (2)) relating to filing requirements were not relevant since this was a case under Article 78.

Passing off

Impact Plus Plc v. Impact Executives Ltd (Jacob J.; 17.05.01)

Impact Plus, a management consultancy, failed in its case of passing off against Impact Executives Ltd, an agency providing executives with temporary jobs. Jacob J. stressed that the law looks with a little more suspicion on a laudatory name. Therefore, since there was no evidence of actual confusion, the nearest the evidence came was that some of the witnesses were caused to wonder whether there was a connection between the parties, and further, there was no evidence of any confusion caused by third parties which used the name "Impact", the claim failed.

Protected geographical indications/Protected designations of origin

Consorzio Del Prosciutto Di Parma v. Asda Stores Ltd (Lords Nicholls, Hoffmann, Hope, Clyde and Scott; 8.2.01)

Asda sold packets of Parma ham, bought from a genuine source, but sliced and packaged in the UK. Under Italian law, sliced Parma ham could only be described as such if sliced and packaged in Parma under the supervision of the claimant. The claimant brought an action under EC Council Regulation 2081/92 (on the protection of designations of origin and geographical indications) and Regulation 1107/96 (which lists protected names, including, Prosciutto Di Parma. Under the Regulations, the claimant submitted a specification giving details of the method by which the ham should be produced before it could qualify as Parma ham. The claimant submitted that the Regulations and specification had direct effect in the UK and sought an injunction to stop Asda's activities. The Court of Appeal ([1999] FSR 563), upholding the decision at first instance ([1998] FSR 697), refused the application. The House of Lord was of the opinion that the matter was not acte claire. They referred to the ECJ the question of whether the Regulations, together with the specification, created a valid and directly enforceable Community right to prevent what Asda was doing.

Lord Hoffmann was of the opinion that the matter was straight forward and the Regulations did prevent what Asda's practice. Firstly, the Regulations set up a framework of Community rules, not principles, as the Court of Appeal concluded. Secondly, the specification made it clear that to be called Parma ham, the slicing and packaging could only be done in the Parma region and in the presence of the claimant. These rules were in place to guarantee to the consumer that the product was genuine. Thirdly, the Regulations were transparent. Although the specification was not published in the Official Journal and was in Italian, an interested party could easily find out that Prosciutto Di Parma was a PDO and then apply to the Commission or the claimant for a copy of the specification. Finally, the Regulations were valid. They were not a disguised restriction on trade as they were protecting the consumer by providing a guarantee of origin.

However, Lord Scott did not agree. He did not read the specification as barring Asda's practice. Once genuine Parma hams had been approved by and left the control of the claimant, there was a fair argument that the claimant's role had been discharged and it should not be able to control the manner in which the purchasers of such ham chose to sell to their purchasers. Secondly, it was not clear at what point in the history of a PDO the prohibition in article 4 of Regulation 2081/92 ceased (article 4 provides that "to be eligible to use ... a [PDO] ... an agricultural product or foodstuff must comply with a specification"). The ECJ decisions on exhaustion of trade mark rights and in the repackaging cases had to be relevant to this question due to the obvious similarity in the shared purpose of trade marks and PDO. It was not clear, but there must be a point at which a product marked with a PDO could be re-packaged and re-marketed. Finally, Lord Scott did not agree with Lord Hoffmann's conclusion that the Regulations were transparent. If prohibitions in a Regulation were to have wide effect, they should be published.

Written by Katharine Stephens and Rebecca Harrison.