Reported Trade Mark and Copyright Cases for November 2001

10 December 2001

Katharine Stephens

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

 BL No.


Earlier Mark

Goods/Services 1



O/325/00 (N.B. not available on web site)

TASTE! (stylised word mark)  Food, drink (30)Application succeeded before the appointed person under section 3(1)(b) in relation to coloured version of mark, but failed in relation to black and white version of the mark. There was sufficient elaboration of the mark as a whole as to give it the 'look and feel' of a trade mark. The mark had to be visually distinctive sufficient to indicate that the goods came from one and the same undertaking. It was necessary to answer that question by reference to what were believed to be the perceptions of the average consumer.




Non-medicated toilet preparations (3)

Opposition failed under sections 5(2)(b) and 3(6). It partially succeeded under section 5(4)(a). Only the opponent's use of their mark in relation to hair products was sufficient to sustain an allegation of passing off. The first words in the marks were entirely different and therefore (with the exception of hair products), in normal and fair use there would be no confusion between the marks.




Clothing, footwear, headgear (25)

Application refused under section 3(3)(a). The words were offensive as the goods for which the mark was sought to be registered would be on display in public places. Section 3(3)(a) was not restricted to what were regarded as the most shocking and outrageous of expletives.



THE FLYING SCOTSMAN (Alcoholic beverages, transportation and related services (33, 39, 42))

Videos, stationery, advertising and promotional services, all relating to the Flying Scotsman, leather articles, glassware, clothing, games, sporting articles (9, 16, 18, 21, 25, 28, 35)

Opposition failed under sections 3(3)(b), 3(6), 5(2)(b), 5(4)(a) and 5(4)(b). The applicant was the owner of the Flying Scotsman locomotive. Under section 5(2)(b), the specifications for each of the marks were significantly different. The presence of other FLYING SCOTSMAN marks on the register for unrelated goods supported the conclusion that there was no likelihood of association arising out of the applicant's use of their mark.

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

Abbreviation equivalent to word mark

Second Skin Pty Ltd v. Spenco Medical Corporation* (S Rowan; BL O/3/01 and O/4/01; 5.1.01)

In the first decision, Spenco Medical was the proprietor of SECOND SKIN registered in class 5 for bandages, plasters and dressings for medical or surgical use. Second Skin Pty Ltd applied to revoke the mark on the basis that it had not been used; instead the registered proprietor had only used the mark 2ND SKIN in relation to dressings. The application was successful in relation to bandages and plasters, but not in relation to dressings.

Mr Rowan held that the stylised mark was intended to look different and that there was a difference between the stylised mark and the word mark in this case. However, if a member of the public saw 2ND SKIN, they would immediately translate that into SECOND SKIN. They would write 2ND or SECOND interchangeably as one was a recognisable alternative to the other in everyday use and could be used in place of the other without any loss of meaning or understanding. The application for revocation therefore failed insofar as it sought to argue non-use by replacement of SECOND with 2ND.

In the second decision between the same parties, Mr Rowan refused the application by Second Skin Pty Ltd to register the mark SECOND SKIN in class 10 in relation to splints, not including elasticated bandages and elasticated socks under section 5(2)(a). The question arose as to whether it was appropriate to take into account the first decision. Mr Rowan held that it was and, therefore, the cut down specification of Spenco Medical's mark was the only one considered.

Test for marks customary in current language

Merz & Krell GmbH & Co.* (ECJ; C-517/99; 4.10.01)

The German Patent Office refused to register BRAVO for writing implements under the national equivalent to Article 3(1)(d) of the Directive. The ECJ held that this Article should be interpreted in the light of the essential function of a trade mark as set out in the recitals to the Directive. Although it did not refer to the goods or services for which trade mark registration was being sought, Article 3(1)(d) could not be interpreted without taking them into consideration. Therefore, Article 3(1)(d) was interpreted as only precluding registration of a trade mark where the signs or indications of which the trade mark was exclusively composed had become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that mark was sought (words in italics being added to the wording of Article 3(1)(d)). However, to be effective when taking Article 3(1)(c) into consideration, it was immaterial whether the trade mark in question was descriptive of those goods or service.

Given this narrow interpretation, it followed that under Article 3(1)(d), a generic sign or name which was used as an advertising slogan, indication of quality or incitement to purchase etc. but did not directly describe a specific characteristic of the goods or services in respect of which registration was sought, was not excluded from registration "as such by virtue of such use". It was up to each national court to decide whether the application fell foul of Article 3(1)(d) or not.

NEW BORN BABY not descriptive

Zapf Creation AG v. OHIM* (CFI; T-140/00; 3.10.01)

The CFI annulled OHIM's refusal to register NEW BORN BABY in class 28 for dolls to play with and accessories for such dolls in the form of play things. Firstly, under Article 7(1)(c) of the Regulation, the CFI did not agree with the Board of Appeal's finding that without further information, the relevant persons would understand that the dolls would look like new-born babies. Indeed, the Court went further and stated that, even if NEW BORN BABY could be regarded as descriptive of that which the dolls represented, it would not be sufficient to prove that the sign was descriptive of the dolls themselves. The CFI did not believe that purchasers of the toys, conflated the toys and what they represented. Secondly, in relation to the application to register NEW BORN BABY in relation to dolls' accessories, the CFI held that such accessories did not represent new-born babies, but other items such as miniature clothes and shoes, nor were they intended for new-born babies. Finally, since the Board of Appeal's decision under Article 7(1)(b) was based on the same reasoning as its decision under Article 7(1)(c), it was also annulled.

Domain names - passing off

Tropical Resorts Management Ltd and others v. Morgan (Ferris J.; 3.7.01)

The claimants owned luxury hotels, spas and resorts in the Far East which traded under the name BANYAN TREE. A significant proportion of their clientele originated from the UK. In particular, the claimants marketed their services through the web sites and The defendant registered the domain name The claimants became aware of this and requested a transfer of the domain name to them in November 2000 and suggested they make a payment to the defendant to cover his costs. At this point, the defendant attempted to 'up the offer'. At this point there was no active web site at the domain name address. When this was not successful, the defendant threatened to auction the domain name.

It then came to the attention of the claimants that an explicit pornographic web site had been linked to the defendant's domain name which was likely to be accessed by anyone seeking information through the Internet on the Banyan Tree hotels, resorts, spas and other services. Following a formal complaint by the claimants, the link to pornography was removed. The claimants brought proceedings against the defendant in passing off and made an application for a mandatory interim injunction and immediate transfer of the domain name to the first claimant pending judgment. The defendant contended that he had not registered the domain name in bad faith to damage the claimants' business and offered to surrender it to the claimants.

Ferris J. held that he would approach the case from the perspective that the defendant had registered the domain name innocently, regardless of whether this was the case. However, Ferris J. held that maintenance of the domain name was an act of passing off in view of the evidence that BANYAN TREE was the name under which the claimants traded in the UK.

Own name defence

Asprey & Garrard Ltd v. WRA (Guns) Ltd. & William Asprey* (Peter Gibson, Chadwick & Kay L.JJ.; 11.11.01)

The Court of Appeal held that, subject to the own name defence, there was passing off and trade mark infringement of the mark ASPREY by both Defendants. The tort was committed by the First Defendant trading as William R. Asprey Esquire and, because of his prominent role in the First Defendant, Mr Asprey, the Second Defendant, was a joint tortfeasor. For the facts of the case, see the report of the decision of Jacob J., [2001] CIPA 471.

The Court of Appeal dismissed the appeal by the First Defendant. The First Defendant company could not shelter under the own name defence. The First Defendant's name was WRA (Guns) Ltd. The fact that it had chosen to adopt the trading name of William R. Asprey Esquire did not entitle it to rely on the own name defence. Such defence had never been open to new companies otherwise a route to piracy would be obvious. For the same reasons, the First Defendant did not have a defence under section 11(2)(a).

However, the Court of Appeal varied the order in relation to Mr Asprey himself. Jacob J. had, in a pragmatic way, treated the two Defendants as one. Therefore Mr Asprey was subject to the same wide injunction as the First Defendant which effectively prohibited him from carrying on business at all under his own name in the luxury goods specified in the Order. Even though it might appear pedantic, the Court of Appeal was not content to support this approach. The Court of Appeal pointed out that the own name defence as set out by Romer J. in Rogers v. Rogers [1924] RPC 277 was subject to a limited exception: a man is entitled to carry on business in his own name but he must not do anything more than that to cause confusion with the business of another and he must do it honestly. Given the prima facie entitlement to carry on business in his own name, the Court was entitled to know precisely what a defendant had done or threatened to do. In the present case, the Court did not know how Mr Asprey would trade in his own name. Jacob J. had assumed that there would be no difference, but he had made the assumption in answer to a hypothetical question. On an application under Part 24 (summary judgment), it was inappropriate to grant the Order that had been made against Mr Asprey.

Finally, Mr Asprey did not have a defence under section 11(2)(a) because he was not trading. Peter Gibson L.J., giving judgement for the Court, added that however honest a defendant's subjective intentions might be, any use of his own name which amounted to passing off could not be in accordance with honest practices in industrial or commercial matters.


The Right Honourable Paddy Ashdown MP PC v. Telegraph Group Ltd (Lord Phillips M.R.; Robert Walker and Keene L.JJ.; BL C/38/01; 18.7.01)

The Court of Appeal dismissed the appeal from the judgment of Sir Andrew Morritt V.C. [2001] 2 WLR 967. The Telegraph Group had published substantial parts of a minute made by Paddy Ashdown recording a meeting which took place between himself, the Prime Minister and three others at 10 Downing Street during which the Prime Minister discussed his serious intentions to form a coalition Cabinet. The Telegraph Group conceded copyright infringement subject to the defence of fair dealing (section 30 CDPA), the public interest defence (section 171(3) CDPA) and the defence of freedom of expression (sections 3, 6 and 12 of the Human Rights Act (HRA) taken together with Article 10 of the European Convention on Human Rights).

On this Part 24 application (summary judgment), the Court of Appeal held that the defences under the CDPA did not succeed. Under section 30(1), the purpose of publication was not to criticise or review the minute, but to criticise those attending the meeting. Under section 30(2), it could be said that the purpose of the publication was to report current events, even though the meeting had taken place some two years previously. However, what the Telegraph Group had done could not be said to be fair dealing. The Court of Appeal in considering the question of what was fair dealing adopted the three criteria suggested in Laddie, Prescott & Vitoria (para 20:16):

1. Commercial competition: The publication of the articles in the Sunday Telegraph could be said to damage the value of Paddy Ashdown's memoirs. Copying parts of the minute also added value to the articles.

2. Prior publication: The minute had not been published before and had been obtained in breach of confidence.

3. Amount/importance of what had been taken: A substantial and import part of the minute had been taken.

The Court of Appeal then raised the question of whether, when considering copyright infringement, the Court should also take into consideration the right to freedom of expression. The Court held that it was import to stress that it was only the form of a copyright work which was protected by copyright and not the information it contained. Therefore, copyright did not normally encroach on the right to freedom of expression. However, Strasbourg jurisprudence demonstrated that, in certain cases, the right to freedom of expression would only be fully effective if the defendant was able to reproduce the exact words of the claimant. Although the CDPA provided defences in many cases, for example, the fair dealing defences, the Court of Appeal could envisage certain, very rare circumstances in which these defences might not apply. In such circumstances, the Court was bound to apply the CDPA in a manner which accommodated the HRA.

It therefore followed that when considering the public interest defence, the Court of Appeal refused to give section 171(3) the narrow interpretation which Aldous L.J. had done in Hyde Park v. Yelland [2001] Ch 143. The Court held that there was a clear public interest in giving effect to the right to freedom of expression under section 171(3) in those rare cases where the HRA would trump the rights conferred by CDPA.

Although it was unnecessary in the circumstances, the Court of Appeal considered the impact of the public interest defence on the test of fair dealing. It held that it was not necessary for the Telegraph Group to have quoted verbatim such large parts of the minute, although there was scope for arguing that a smaller quote would have been justified. In this case, the Telegraph Group had overstepped the line since the minute was deployed in an essentially journalistic manner in furtherance of its commercial interests.

Written by Katherine Stephens and Rebecca Harrison.