Reported Trade Mark and Copyright Cases for December 2001

20 December 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

The following two cases reported in CIPA (October and November editions respectively) have now been placed in the British Library: WWF (C/48/01) and Asprey & Garrard (C/49/01).

Registry Decisions

 BL No.


 Earlier Mark




MEDISON & device


Medical work stations and apparatus (9, 10)

Opposition failed under sections 3(1)(b), 3(6) and 5(2)(b). Aural confusion was not a factor of any importance as the goods were not ones which were likely to be selected purely by word of mouth. The goods were specialist medical goods for use by hospitals. They would not be purchased by the man in the street and the single letter difference and inclusion of the device was sufficient, given the care with which the goods would be purchased, to differentiate the marks and avoid confusion.


X (stylised - disclaimer to letter X)

X (stylised)

Copier, computer, telecoms apparatus (9

Opposition under sections 11 and 12 of the 1938 Act failed. As a single letter cannot denote one trader, the marks had to be compared on the basis of the stylisation rather than the letter itself. On that basis, the marks were sufficiently different that no deception or confusion would be caused.



LA MEXICANA & device

Food and drink (29, 30)

Opposition succeeded in part under section 5(2)(b). The marks were to be used on relatively low value foodstuffs and the average consumer would not therefore be over vigilant. Words spoke louder than devices and the aural similarity between the marks was sufficient to give rise to a likelihood of confusion. The applicants were therefore ordered to restrict their specifications to goods which were dissimilar to those which the opponent had registered.


3-D device (photo of red & white particles on black background in circular shape)


Chemical products, soaps and laundry preparations (1, 3)

Application refused under section 3(1)(b) as being devoid of any distinctive character. The sign consisted of a mix of coloured particles and as they were not bound together or housed within a transparent container, the rights would extend to any presentation.

 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 to the Appointed Person

John Lewis of Hungerford plc's application (G. Hobbs QC; BL O/024/01; 19.12.00)

The applicant applied to register a mark in class 20 for furniture and parts and fittings therefor which consisted of "the smell, aroma or essence of cinnamon". Before the Registry, the application failed under sections 3(1)(a) and 1(1) and the applicant appealed. Mr Hobbs dismissed the appeal.

Mr Hobbs held that generally a description of the smell was sufficient. Otherwise, the applicant would have been required to perform the impossible task of filing a visible representation from which an invisible sign could be directly perceived. However, that description had to be sufficiently unambiguous that it satisfied the requirements for registrability set out in sections 1 and 3(1)(a). Mr Hobbs would have been prepared to accept an application to register the smell of cinnamon as emitted by x (with the nature and condition of x clearly and unambiguously defined). However, the wording of the description provided by the applicant lacked sufficient precision. Mr Hobbs therefore held that the notice of deficiency had been correctly issued and the appeal was dismissed.

Laboratories SIPA v. Wella Aktiengesellschaft (S. Thorley QC; BL O/050/01; 11.12.00)

An application for TONALITE HENNE for cosmetic hair toiletries in class 3 was refused by the Mr Thorley under section 3(1)(c) on the basis that it was obvious to the relevant class of persons that the translation from the French of TONALITE HENNE was "henna hue" which was not registrable for the goods specified as it was descriptive. Mr Thorley stated that there were three questions which had to be answered:

1. What was the correct translation;

2. What was the relevance of that translation in law; and

3. What weight was to be attached to the fact that the mark had been registered in France?

As stated above, the correct translation was held to be "henna hue". The onus of proving the answer to the second question lay primary with the respondent/opponent. They had discharged the onus sufficiently in this case by reference to dictionary definitions and translations showing that the translation would be "henna hue". In turn this transferred the onus on to the appellant/applicant to show that the actual meaning in translation would be lost on the average consumer. This could be done by indicating ignorance of the foreign language in general; ignorance of the translated word; or possibly showing that the translation was so dissimilar to the original word that one would not evoke an image of the other. In the present case this had not been done.

In relation to the third question, Mr Thorley held that the bare fact of registration in other countries was not sufficient to establish that a sign was registrable in the UK.

Parallel imports

Zino Davidoff SA v. A & G Imports Ltd; Levi Strauss & anr v. Tesco Stores Ltd & anr; Levi Strauss & anr v. Costco Wholesale UK Ltd (ECJ; C-414/99 to C-416/99; 20.11.01)

Questions in two cases were referred to the ECJ by the High Court of England and Wales. Article 7 of the Trade Marks Directive provides for exhaustion of trade mark rights inside the EEA and for the proprietor to market his goods outside that area without exhausting his rights within the EEA. Silhouette [1998] FSR 474 and Sebago [2000] RPC 63, established that, firstly, Article 7(1) precludes national rules that provide for the international exhaustion of trade mark rights. Secondly, Sebago added that the legal consequence of exhaustion can arise only if consent to first marketing extends to each individual item of the goods. However those cases did not address what constituted 'consent' under Articles 5(1) and 7(1). By its questions, the High Court sought to determine the circumstances in which a proprietor could be taken as having consented to the importation into the EEA by third parties of goods bearing the his mark, those goods first being put on the market outside the EEA by him or with his consent.

The ECJ held that consent, being tantamount to the proprietor's renunciation of his exclusive rights under Article 5, was the decisive factor in the extinction of the proprietor's right to stop parallel imports into the EEA. Therefore, the parallel importer would have to show unequivocally that the proprietor had intended to renounce his right to oppose placing of the goods on the market within the EEA. Such consent would probably be express; but it could also be implied.

It therefore followed that implied consent could not be inferred from:

  • the fact that the trade mark proprietor had not communicated to all subsequent purchasers of the goods placed on the market outside the EEA his opposition to marketing within the EEA;   

  • the fact that the goods carried no warning of a prohibition of their being placed on the market within the EEA; or   

  • the fact that the trade mark proprietor had transferred the ownership of the products bearing the trade mark without imposing any contractual reservations and that, according to the law governing the contract, the property right transferred included, in the absence of such reservations, an unlimited right of resale or, at the very least, a right to market the goods subsequently within the EEA. Furthermore, it was not relevant that those further down the contractual chain such as authorised retailers and wholesalers had not imposed on their own purchasers contractual reservations setting out the proprietor's opposition to resale in the EEA, even though they have been informed of it by the proprietor.

Finally, the Court held that ignorance on the part of the parallel importer to the fact that the proprietor objected to the goods being placed on the market in the EEA or sold there by traders other than authorised retailers was no defence.

Comparative advertising

Toshiba Europe GmbH v. Katun Germany GmbH (ECJ; C-112/99; 25.10.01) 

The Landgericht Düsseldorf referred various questions to the ECJ relating to the interpretation of Directive 84/450/EEC concerning misleading and comparative advertising, as amended by Directive 97/55/EC. The questions related to Katun's catalogue which set out Katun's spare parts and consumable items for particular models of Toshiba photocopiers. In one example, each list of spare parts and consumable items was made up of four columns. In the first column, headed "OEM product number" was Toshiba's order number (i.e. the Original Equipment Manufacturer's number). The second column headed "Katun product number" contained Katun's order number. The third column contained a description of the product. The fourth column referred to Toshiba's photocopier model number for which the spare part was intended.

The ECJ pointed out that the Directive made little sense if it was interpreted as meaning that any reference to a competitor or his goods or services was unlawful unless such reference fell within the meaning Article 3a (which sets out the conditions under which comparisons are permitted). Therefore, and by reference to the Trade Marks Directive and case law such as BMW [1999] ECR I-905, the ECJ held that comparative advertising must be interpreted in the sense most favourable to it.

On the facts, therefore, Katun's catalogue amounted to comparative advertising because of the use of OEM numbers alongside its product numbers (Article 2(2a)). Such an indication constituted a positive statement that two such products had equivalent technical features, i.e. it amounted to a comparison of material, relevant, verifiable and representative features of the products within the meaning of Article 3a(1)(c).

The ECJ held that the national court would have to decide whether the OEM numbers were distinguishing marks for the purposes of Article 3a(1)(g). However, in pointing to Lloyd Schuhfabrik Meyer [1999] ECR I-3819 in which the definition of a distinguishing mark for the purposes of the Trade Marks Directive was set out, the ECJ strongly suggested that OEM numbers could not function as distinguishing marks. However, if they were, under Article 3a(1)(g), the use of such OEM numbers in Katun's catalogues would enable Katun to take unfair advantage of the reputation attached to those marks only if the effect of the reference to them was to create, in the mind of the persons at whom the advertising was directed, an association between Toshiba and Katun, in that those persons would associate the reputation of Toshiba's products with the products of Katun. In order to determine whether that condition was satisfied, account would have to be taken of the overall presentation of the advertising and the type of persons for whom the advertising was intended.

1938 Act

Frank Yu Kwan Yuen v. McDonald's Corporation & anr (Neuberger J.; 27.11.01)

The applicant sought to register the mark McCHINA in classes 29, 30, 31 and 42 for various foods and drinks as well as restaurant services. Before the Registry, the opponents, McDonald's, were successful under section 11, but not under section 12. The applicant's appeal (case heard by way of a rehearing) was successful.

Neuberger J. held that it was inappropriate for the hearing officer to have relied upon a survey which had been used in relation to another mark, McINDIANS, opposed some years previously by the opponents. It was not relied upon or brought into the evidence by the opponents in this case and the applicant had not had a chance to review or file evidence in relation to that survey.

A further survey commissioned by the opponents was heavily criticised. The first question asked "what would be your immediate reaction or first thought on hearing that a restaurant had recently opened in your area called McChina?" 11 answers could be recorded by the interviewers. This technique was criticised as the answers recorded by the interviewers were selected from a preprinted list, rather than recorded verbatim which left it open to error. The remaining questions were criticised because they referred to chains of restaurants. In view of the number of McDonald's chain restaurants in the UK, these questions were seen as leading. Therefore, the best that could be gleaned from the survey was that 10% of those questioned thought that there was some link between McCHINA and McDonald's restaurants.

Under section 12, Neuberger J. held that although some of the relevant public might have had cause to wonder whether there was an association between the applicant and the opponents, there was no real tangible risk of confusion or deception among a significant, let alone substantial, group of persons. In particular, on direct comparison of the marks, other than the first syllable, there was no similarity between the marks.

Under section 11, Neuberger J. pointed out that the opponents' arguments as to their rights in the prefixes 'Mc' and 'Mac' brought them "close to concluding that any user of a name beginning 'Mc' or 'Mac' in the fast food or take away business would almost ipso facto be at severe risk of being guilty of passing off." The results of the survey evidence did not support this at all.

Revived copyright and passing off

Sweeney & Camps (Suing as Trustees of the Estate of James Joyce) v. Macmillan Publishers Ltd & Rose (Lloyd J., 22.11.01)

Lloyd J. granted an injunction for copyright infringement in respect of the work entitled 'A Reader's Edition' of Ulysses by James Joyce edited by Danis Rose and published by Macmillan ("RE"). He rejected the Estate's claim in passing off.

The Estate claimed that RE infringed copyright in:

(a) editions of Ulysses published during Joyce's lifetime (chiefly the first edition published in 1922); and

(b) the manuscripts, typescripts and proofs of Ulysses which were published in the 1970s (the "Working Papers").

Under (a), Mr Rose admitted that RE copied the 1922 Edition. The 1922 Edition went out of copyright on 1 January 1992 and was revived on 1 January 1996 by EC Directive 93/98/EEC implemented in the UK by the Duration of Copyrights and Rights in Performances Regulations 1995 SI 1995/3297. However, the defendants sought to rely on the defence in Regulation 23. Specifically, Mr Rose claimed that he had carried out the bulk of the work on RE (i.e. in the language of Regulation 23 he made arrangements for the exploitation of RE) when the 1922 Edition was out of copyright and therefore was not infringing copyright by publishing RE. Lloyd J. held that, although "arrangements" were not necessarily limited to a contract, "some degree of solidity or certainty" was required such that later acts could be said to be done in pursuance of them. Mr Rose had only had discussions with publishers during the window and had not entered into a contract with Macmillan - this was insufficient to constitute arrangements. A concept of arrangements based on work done would be too wide because it would be very difficult to say that someone who had only done a little work in the window had not also made arrangements. The defence under Regulation 23 failed.

However, RE fell within Regulation 24 and could therefore be published subject to the payment of a compulsory licence. The provision that reasonable notice should be given had been complied with and did not require that a copy of the proposed text be supplied with the notice. Furthermore, a short period of notice (in this case about 3 months) was reasonable as was notice given on a contingent basis.

Under (b), because of the way in which Joyce worked, continually amending and adding text at successive stages in the production process, the text underwent a series of changes from one stage to the next. The Judge held that each working paper was the subject of a separate copyright. The publication of the 1922 Edition only published the whole text set out in that edition and not earlier versions. Although Lloyd J. concluded that the bulk of the text copied in RE was the 1922 Edition he held that what Mr Rose had done with the Working Papers amounted to copyright infringement. It was not sufficient for the defendants to say that what was taken constituted just a few lines, particularly because the restoration of the unpublished material to the text was of importance in qualitative terms.

The case in passing off was founded on the fact that in RE Mr Rose corrected what he believed to be mistakes in Ulysses and inserted capitals and punctuation into the text and hyphenated many compound words. The total number of changes made has been estimated to be in the region of 8,000-10,000. The Estate argued that this deprived Ulysses of certain essential characteristics, such as the use of compound words, stream of consciousness dialogue and nuances of meaning for which Ulysses is famous.

Lloyd J. was prepared to assume (without deciding) that the Estate could potentially be protected by passing off on the grounds that it received royalties and therefore had an interest in maintaining the value of Ulysses. However, the class of products in respect of which one claimed passing off had to be clearly defined because the trade name must distinguish in the minds of the public goods of that class from other goods not of that class. He held that a definition of class hinging on the Estate's approval would be unworkable because it allowed the Estate to control admittance to the class on a subjective basis. Lloyd J. held that the definition of Ulysses by reference to essential characteristics depended on academic opinion and was equally uncertain and unworkable. Therefore, as the class could not be defined objectively such that a given work could be said to be inside or outside it, the case in passing off failed.

The reporters are grateful to their colleague Jacqui Irvine for submitting the summary of this case.