Reported Trade Mark Cases for October 2001

25 October 2001

Katharine Stephens

Court decisions marked with an asterisk are available on the Court Service website Decisions and opinions of the ECJ and CFI are available on All decisions of the Trade Marks Registry and the Appointed Person are available on the Patent Office web site

 BL No.


 Earlier Mark





 Colour and flavour extracts from fruit and plants (2, 3, 29, 30, 32)Opposition failed under s 3(1)(b). Use of 'TECH' was acceptable use of the abbreviation from 'TECHNOLOGY' and when used with the name of certain non-technical goods, the whole mark was rendered distinctive.




Horological and chronometric instruments (14)Opposition failed under s 5(2)(b). The marks were not confusingly similar, given that watches were not the sort of goods purchased on a regular basis and consumers were likely to be circumspect about their purchases. This was particularly so with the luxury end of the market into which the opponent's watches fell as they were priced on average at £3,000.



GLEN MORAYWines, spirits, liqueurs (33)Opposition failed under s 5(2)(b). The GLEN prefix was commonly used and indicative of Scottish origin. It was held that confusion was very unlikely between the second part of the marks. In particular, the double versus single syllable served to distinguish them.



PEPCIDAC / PEPCID ACPharmaceutical preparations for treatment of gastro-oesophageal disorders (5)Opposition succeeded under s 5(2)(b). The marks had identical prefixes and suffixes and that visual similarity was enforced by the aural similarity. A licence by the MCA to use a particular mark for a particular product had no bearing on such an opposition. The MCA and Registry had separate functions and applied different legislation.



MAN.U.CAN / MANCHESTER UNITED FOOTBALL CLUB (Non-alcoholic drinks (32))Bottled beer, non-alcoholic drinks (32)Opposition failed under s 5(2)(b). The request by the opponent for the examiner to consider actual use of the mark, for example, on a label in the colours of the Manchester United Football Club, required too many inferences to be drawn which were not part of the application. Such considerations were only appropriate for a passing off action.


Shape mark - round bevelled edged tablet in two layers, one green, one white Chemical and cleaning preparations (1, 3)Appeal to the appointed person. Application refused under s 3(1)(b), appeal dismissed. Tablets in three colour combinations might be accepted prima facie for registration if the colour combination could be regarded as arbitrary and striking. Acceptance would be all the more likely if the tablet was not a standard geometric shape, but had some particular feature. None of these considerations applied in this case.

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 the Registry

Financial Software Systems, Inc v. Financial Systems Software (UK) Ltd (G. Hobbs Q.C.; BL O/473/00; 06.11.00)

The applicant applied through its predecessor for a mark FSS for consultancy services in the field of financial service in class 42. The opponent, who had a prior application to register a mark FSS and device in classes 9 and 42 for computer software for analysing financial markets, was unsuccessful in its opposition, inter alia, under Section 3(1)(a), on the basis that it did not satisfy the requirements of Section 1(1). Mr Hobbs held that it was not possible to argue under Section 3(1)(a) that the later application was not capable of distinguishing due to the existence of the prior application. That was an attempt to argue relative grounds in relation to a test of absolute grounds.

In addition, a question arose regarding whether a prior application in a convention country could be relied upon if that application subsequently failed. Mr Hobbs held that if a priority filing is subsequently shown to be procedurally irregular, the claim to convention priority may be disallowed and the acceptability of the relevant application for registration will, in that event, be assessed as of the date upon which it was filed in the UK. Substantive validity of an application in a convention country was not something which it was appropriate for the UK Registry to consider (for example, whether the application had been made in the right class).

(Reporters' note: It will be recalled that the Court of Appeal refused the application for the same mark under the 1938 Act; [2001] CIPA 426)

South Cone Inc. v. Bessant & others (a partnership) trading as REEF (Pumfrey J.; BL C/43/01; 25.7.01)

Pumfrey J. allowed the appeal from the Hearing Officer who had dismissed the opposition to the application for the word REEF for T-shirts etc. (class 25) and badges etc. (class 26). The opponent's mark REEF BRASIL was registered in class 25 in respect of footwear. The appeal was successful under Section 5(2)(b), but unsuccessful under Sections 3(6) and 32(6) and Section 5(4).

As a preliminary issue, Pumfrey J. had to decide whether the appeal should be conducted as a review or a rehearing of the original decision. Pumfrey J. held that his approach would be as follows: findings of primary fact would not be disturbed unless the Hearing Officer made an error of principle or was plainly wrong on the evidence. His inferences from the primary facts could be reconsidered, but weight would be given to his experience. In this way, error would be corrected, but a different appreciation would not be substituted for that of the Hearing Officer if he arrived at a conclusion without error.

The opposition, on the grounds that the applicant did not have any bona fide intention to use the trade mark as a trade mark was dismissed. As Pumfrey J. had already held in Decon v. Fred Baker [2001] RPC 293, that lack of bona fide intention to use a mark on the date of application did not provide a ground for revocation of a CTM. However, the provision in Section 32(6) was "home-grown" and had no parallel in the Trade Marks Directive. Although he considered the meaning of bona fide, he was content in this situation to assume (without deciding) that the old criterion that the applicant's conduct had to be reprehensible was enough. He also assumed that the Hearing Officer was correct in this view that use had to be trade mark use, since he thought it the preferable view (the point is before the ECJ and is not decided). The applicant, a rock band, exhibited a T-shirt with the word REEF over the left breast. This evidence was equivocal; but the Hearing Officer's conclusion that if this was the intended use, it could not be regarded as an example of use which was clearly not a trade mark use, could not be challenged.

Under Section 5(2)(b), Pumfrey J. held that the Hearing Officer failed to properly consider the channels of trade and the users of the goods and in doing so had fallen into error. It was clear, from the decision in Canon v. MGM [1999] RPC 117, that the factors which Jacob J. had set out in TREAT [1996] RPC 287, as indicating whether the goods of conflicting marks were "goods of the same description" (to use the old term), were directly relevant. In this case, there was substantial overlap in the group of potential customers targeted by both the applicant and opponent. The applicant's rock band was promoted to surfers and the opponent's sandals were directed primarily at surfers. Secondly, the applicant's mark consisted of a prominent, and potentially distinctive, part of the opponent's mark. Thirdly, fair use of the applicant's mark included use on the front of the T-shirt as well as on the swing ticket. Thus, the former use would include use on the parts of a garment which traditionally indicated trade origin. Fourthly, the goods might be found in the same shop and, while not cheap, were not the sort of goods which called for an extensive examination by the averagely intelligent and perspicacious purchaser. Therefore, there was a likelihood of confusion between the marks and the decision of the Hearing Officer should be reversed in this respect.

Finally, under Section 5(4), the appeal was dismissed. Pumfrey J. referred to the difficulty in judging the issue of passing off in opposition proceedings. However, the Registrar was entitled to be presented with evidence which raised at least a prima facie case that the opponent's reputation extended to the goods comprised in the applicant's specification. The requirements were considerably more stringent that the enquiry under Section 11 of the 1938 Act. Thus, the evidence would include evidence from the trade as to reputation including evidence as to the manner in which the goods were traded or the services supplied. Evidence of such reputation would primarily come from the trade and the public and would be supported by evidence of the extent of the use. To be useful, the evidence should be directed to the relevant date. Once such an objection was raised, the applicant had to rebut the prima facie case. Obviously, he would not need to show that passing off would not occur, but he would have to produce sufficient cogent evidence to satisfy the Hearing Officer that it was not shown, on the balance of probabilities, that passing off would occur.

ECJ holds BABY-DRY registrable

Procter & Gamble v. OHIM* (ECJ; C-383/99; 20.9.01)

In the first appeal from the CFI to the ECJ under the CTM Regulation, the ECJ held that the decisions of the CFI ([1999] ETMR 767) and Board of Appeal ([1999] ETMR 240) should be annulled and that OHIM should pay P&G's costs. The CFI had previously held that the application for the mark BABY-DRY in classes 16 and 25 for disposable diapers should be refused under Article 7(1)(c) of the CTM Regulation, thus upholding that part of the decision of the Board of Appeal.

The ECJ considered that Articles 7(1)(b) and (c), together with Article 12 (which provides that a trade mark is not infringed by indications concerning the kind, quality, quantity etc of goods or services), prevented the registration of signs which were no different from the usual way of designating goods and services or their characteristics. Thus, Article 7(1)(c) was intended only to prevent registration of those signs which served in normal usage (from a consumer's point of view) to designate, either directly or by reference to, one of the essential characteristics of the goods or services for which registration was sought: A mark should not be refused registration unless it comprised no other signs or indications and, in addition, the purely descriptive signs or indications of which it was composed were not presented or configured in a manner that distinguished the resultant whole from the usual way of designating the goods or services or their essential characteristics. Marks composed of two words had to be considered as a whole. A perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics was apt to confer distinctive character on the word combination.

In this instance, the Court had to put itself in the shoes of an English-speaking consumer when considering the application BABY-DRY. It held that the combination of words did not unquestionably allude to the functions of the goods; the unusual juxtaposition of the two words not being familiar in the English language. Therefore the application as a whole should not have been refused under Article 7(1)(c).

Applications for dishwashing tablets refused by CFI

Henkel KGaA v. OHIM*; Procter & Gamble Co v. OHIM* (CFI; T-335/99 to T-337/99; T-30/00; T-117/00 to T-121/00; T-128/00 and T-129/00; 19.9.01)

Eleven similar judgments were given by the CFI relating to applications by Henkel and P&G. The Boards of Appeal had refused all 11 applications. The CFI dismissed all the appeals, with the exception of T-128/00 and T-129/00 where, because no explanation had been given for refusal of the marks in relation to essential oils, cosmetics and dentifrices, those parts of the Boards' decisions were annulled. The fact that the Italian Registry had registered the Henkel applications was only one factor that had to be taken into account and was not determinative.

All the judgments are dealt with together in this report. The details of the individual applications are set out below.

Case number






3-D rectangular tablet with rounded corners comprising 2 layers; red (upper) and white (lower)washing and dishwashing preparations in tablet form in class 3


3-D circular tablet comprising 2 layers; green (upper) and white (lower)washing and dishwashing preparations in tablet form in class 3



3-D circular tablet comprising 2 layers; red (upper) and white (lower)washing and dishwashing preparations in tablet form in class 3



figurative mark comprising a rectangular tablet comprising 2 layers; red (upper) and white (lower)

washing and dishwashing preparations in tablet form in class 3

research in the field of laundry and dishwashing preparations in class 42



3-D square tablet with rounded corners, comprising 2 layers; white (upper) and pale green (lower)

washing, bleaching and cleaning preparations; soaps in class 3



3-D square tablet with rounded corners, comprising 2 layers; white with green speckles (upper) and pale green (lower)

washing, bleaching and cleaning preparations; soaps in class 3



3-D square tablet with rounded corners being white with blue and yellow speckles

washing, bleaching and cleaning preparations; soaps in class 3





3-D square tablet with rounded corners being white with blue speckles

washing, bleaching and cleaning preparations; soaps in class 3



3-D square tablet with rounded corners being white with blue and green speckles

washing, bleaching and cleaning preparations; soaps in class 3



3-D square tablet with rounded corners, speckles and a square depression in the top surface (no colour restriction)

washing, bleaching and cleaning preparations; soaps; perfumery, essential oils, cosmetics, dentifrices in class 3



3-D square tablet with rounded corners, speckles and a triangular depression in the top surface (no colour restriction

washing, bleaching and cleaning preparations; soaps; perfumery, essential oils, cosmetics, dentifrices in class 3

The CFI held that all the applications were capable of being registered as trade marks. The question was whether they had distinctive character under Article 7(1)(b) of the CTM Regulation i.e. did the applications enable the goods or services to be distinguished as to their origin? A minimum degree of distinctive character would allow the objection to registration to be overcome. However, the exception under Article 7(1)(b) could still apply even if consumers were used to recognising the product from its colours.

The Court held that 3-D marks and figurative marks depicting the design of a product had to be considered in the same way as word marks. Nevertheless, the Court could take into consideration the fact that the relevant section of the public easily recognised words as trade marks, but looked on shapes differently. The Court also had regard to the fact that the level of attention given by the average consumer to products such as dishwashing tablets was not high.

In relation to each specific application, the Court had regard to the overall impression made. It then broke each application down into its elements:

  • Each shape (circular, square, rectangular) was considered obvious for use as a dishwashing tablet.    

  • The coloured particles or layers indicated no more that different active ingredients in each tablet. The applicants had encouraged this perception in their own advertisements.    

  • The concentration of coloured particles in one layer was insufficient to indicate origin.    

  • Depressions or in-lays in the upper surface, whether triangular or square, did not make the applications distinctive because, where ingredients had to be combined in a tablet, this was an obvious solution.    

  • The combination of the shape of the in-lay and of the tablet was merely the combination of two obvious geometric shapes.    

  • The colours used (blue, green) were commonplace amongst detergents. The use of other basic colours (red, yellow) was an obvious variation on the typical design. The combination of white or grey with such colours was also commonplace.

It followed that, with the two exceptions noted above, the applications all comprised combinations of obvious features typical of the products concerned and could not act as indications of origin, irrespective of the use made of them. Consequently, the CFI did not have to consider at what date each application was considered non-distinctive (the date of application or the date of registration), nor did it have to consider whether there were similar marks on the market.

In relation to the P&G applications, the Board of Appeal had given consideration to the need to keep such geometric shapes available for use by competitors. This was not in itself a separate ground of refusal. Consideration had been given by the legislature to this issue and Articles 7(1)(b) to (e) provided the necessary safeguards.

Infringement: use as a trade mark

Hölterhoff v. Freiesleben* (Advocate General Jacobs; C-2/00; 20.9.01)

The facts of the this case were somewhat confused. However, the Oberlandesgericht Düsseldorf held as follows: Dr Freiesleben owned two German trade marks: SPIRIT SUN and CONTEXT CUT registered in respect of diamonds and precious stones respectively. He also owned two patentsfor the specific cuts to which he applied his trade marks. In selling gems to a third party, Mr Hölterhoff orally described gems produced by his own cutter as the "spirit sun cut" and in the "context cut style". There was no use of either trade mark on any packaging, invoice or other document related to the gems sold that could have misled any third party.

AG Jacobs was of the opinion that, in these circumstances, there was no trade mark infringement. Critical to this decision was the fact that the use of the trade mark had been made orally. It was clear that Mr Hölterhoff had produced the gems and not the trade mark proprietor and there was no question of the mark being perceived in trade, whether at the stage that the trade mark was used or subsequently, as indicating the origin of the goods offered for sale. In his view, use of this kind was simply too far removed from the essential function of the trade mark. As such, the trade mark proprietor was not entitled to prevent such use. However, AG Jacobs stressed that his view in this case should not be taken to prejudice the issue in other factual circumstances. He was aware of the reference to the ECJ in the Arsenal Football Club case and did not think it appropriate to express a view on it.

If, contrary to AG Jacobs' view, the trade mark proprietor was successful under Article 5(1) of the Trade Marks Directive, Article 6(1) would preclude the exercise of that right if the defendant's use of the trade mark was for the purpose of indicating the characteristics of the goods in question, unless such use was not in accordance with honest practices in industrial or commercial matters. It was up to the national courts to determine whether the proviso was satisfied. The ECJ in the BMW case [1999] ETMR 339 described the concept as a duty to act fairly in relation to the legitimate interests of the trade mark owner. If, in this case, Mr Hölterhoff had infringed Dr Freiesleben's patents, or his statement that the "spirit sun cut" had been used from time immemorial was false, he could not have been said to have acted in accordance with honest practices.

Trade mark settlement agreement

WWF - Worldwide Fund for Nature (formerly World Wildlife Fund) & another v. World Wrestling Federation Entertainment Inc* (Jacob J.; 1.10.01)

Jacob J. granted the Fund an injunction enforcing a contract settling a dispute between it and the Federation over the initials WWF. In the contract, the Federation had agreed to cease using the initials WWF, save that it could use its logo and the name World Wrestling Federation. The Federation was in breach of this agreement by, among other things, changing its logo and owning the domain name

The Federation claimed that the terms of the settlement agreement were a restraint of trade and therefore unenforceable. Jacob J. held that a restraint imposed by an intellectual property dispute settlement should only be regarded as falling within the restraint of trade doctrine if the restrained party was able to show that:

a)  The restraint actually imposed a real fetter on his trade; and

b)  the restraint went beyond any reasonably arguable scope of protection of the intellectual property right in issue.

However, if the restrainee was able to show that the above two conditions existed, the restrainor could nonetheless justify the restraint by showing that: 

c)  the restraint nonetheless provided protection which he reasonably needed.

Jacob J. added (c) because there could be cases where the restrainor could justify the restraint independently of, or in conjunction with any intellectual property rights. The ultimate question was whether the restraint was reasonable in all the circumstances. The restrainor's intellectual property rights were not necessarily the sole determinant of this.

In the circumstances of the case, the settlement agreement posed limits on what the Federation could do in the future and therefore it amounted to an actual fetter on the Federation's trade. However, the restraint was justified. At the time of the agreement (1994) the Federation had an insalubrious image. Therefore, the Fund had a legitimate reason for wanting the restraint to distance itself from any injurious association with the Federation.

TRIPs Agreement

Schieving-Nijstad vof & others v. Groeneveld* (ECJ; C-89/99; 13.9.01)

Mr Groeneveld is the proprietor of the device mark ROUTE 66, registered for amongst other things, restaurant services. The defendants are the proprietors of a disco called "Route 66". The disco includes a café. Mr Groeneveld was successful in bringing proceedings for summary judgment (kort geding) in the Netherlands court of first instance and court of appeal. However, on appeal to the supreme court, questions on Article 50 of TRIPs were raised which were referred to the ECJ.

Article 50 TRIPS provides:

(1) The judicial authorities shall have the authority to order prompt and effective provisional measures ... to prevent an infringement of any intellectual property right from occurring ...

(2) The judicial authorities shall have the authority to adopt provisional measures ... where appropriate ...

(6) ... provisional measures taken on the basis of paragraphs 1 and 2 shall, upon request by the defendant, be revoked or otherwise cease to have effect, if proceedings leading to a decision on the merits of the case are not initiated within a reasonable period, to be determined by the judicial authority ordering the measures where a Member's law so permits or, in the absence of such a determination, not to exceed 20 working days or 31 calendar days, whichever is the longer.

The ECJ held:

  • Even though the pleadings were closed before TRIPs became applicable in the Netherlands, Article 50 was applicable because the infringement was ongoing.    

  • Article 50 of TRIPs does not have direct effect. However, in a field to which TRIPs applies and in respect of which the Community has already legislated, such as in the field of trade marks, the judicial authorities in each Member State are required to interpret their national law consistently with Article 50 so far as possible.    

  • Article 50(6) is to be interpreted as meaning that a request from a defendant is necessary before the provisional orders can lapse as a consequence of no substantive action being commenced.    

  • It is for domestic procedural law to state when the time limits mentioned in Article 50(6) commence.    

  • Where Article 50(6) is silent and in the absence of any Community rule, the scope of determining the powers of national courts falls within the competence of each Member State.

Written by Katharine Stephens and Rebecca Harrison.