Court decisions marked with an asterisk are available on the following ECJ web site at http://curia.eu.int/en/jurisp/index.htm. All decisions of the Trade Mark Office reported this month are available on the Patent Office web site www.patent.gov.uk/tm/legal/decisions/index.htm.
PLANTEX (class 30, sauces, aromatic preparations and substances, farinacious products, vermicelli) (registered mark revoked in separate action)
Colour and flavour extracts from fruit and plants (2, 3, 29, 30, 32)
Opposition failed under sections 3(1)(b) and 3(6). Use of 'TECH' was acceptable use of the abbreviation from 'TECHNOLOGY' as it was used in combination with the name of non-technical goods.
PROFESSIONAL SOLUTIONS (Unregistered)
Nail care products (3)
Opposition succeeded under section 5(4)(a). Even though the mark could be taken to indicate that the goods were of a standard used or for use by professionals, it was open to other interpretations. Although the marks did not have much in the way of distinctiveness, as they were identical for identical goods, a small degree of distinctiveness was sufficient.
GLOBERISK (class 9, computer software)
Business and financial consultancy services (35, 36)
Opposition succeeded under section 5(2)(a). Even though the applicants had established a reputation in their mark and the opponent had yet to put its mark into use, goods of the opponent marketed under its mark would be likely to be associated with those of the applicant and there was a real risk of confusion.
Single colour mark
BP Amoco plc v. John Kelly Ltd & anr (Northern Ireland Court of Appeal, Carswell LCJ., Nicholson, McCollum L.JJ.; 2.2.01)
BP owned two trade marks for the colour green (Pantone 348c) when applied to the exterior surface of a garage forecourt as depicted in the registration. The marks were registered for oils, fuels and vehicle maintenance etc. in classes 4 and 37. The defendants applied a slightly darker shade of green (Pantone 341c) to their garage forecourts. The judge at first instance held that the marks were valid, but not infringed and that there was no passing off ( FSR 307). The Court of Appeal allowed the appeal, finding that the marks were infringed under section 10(2), but that the allegation of passing off could not be sustained.
On the issue of validity, the Court held:
the definitions of the marks in the application forms were not confused and meaningless;
the colour was sufficiently defined, but the mark was not limited to the precise layout of premises shown in the registration;
the application was not made in bad faith since BP had intended to use and had used the marks without the BP logo; and
the marks were distinctive.
On this last point, the Court held that a single colour could be registerable. On the evidence, BP was able to prove that the particular colour green of the registration indicated its service stations to the exclusion of all others. The Court doubted that BP's marks had the necessary distinctiveness when the registrations were made, but they had certainly acquired such character by the time they were challenged.
On infringement, the judge had held that there was no infringement because the marks were intended to be used on a particular format and layout of a service station. As stated above, the Court of Appeal did not consider the mark to be so limited. Therefore, when considering the relevant factors globally, including the degree of distinctiveness of BP's marks, the similarity in the shades of green and the evidence of actual confusion, the Court held that there was infringement. However, there was no passing off because of the prominent use of the word TOP by the defendants on their service stations.
Asprey and Garrard Ltd v. (1) WRA (Guns) Ltd (t/a William R. Asprey Esquire) and (2) William Asprey (Jacob J.; 18.5.01)
Jacob J. granted summary judgment in this case of passing off and trade mark infringement. The second defendant used his full name "William R. Asprey Esquire" above his shop selling, among other things, guns, from a premises close to the world famous Aspreys. There were a number of instances of confusion caused by the use by the second defendant of his name and, although there was no intention to pass off, subject to the own-name defence, he was doing just that.
The own-name defence did not succeed. Jacob J. held that, in such cases, there was no special rule; the Court would not tolerate more deception than is normally necessary to establish passing off. The basis of the exception was necessity (Rogers v. Rogers (1924) 41 RPC 277). There was nothing necessary about the way the second defendant was actually trading. If the first defendant company had a different name and the second defendant simply indicated that he was the managing director, that would have been a very different matter because a man must use his name.
For the same reasons, the own-name defence to the action of trade mark infringement under section 10(1) did not succeed. Furthermore, the judge did not accept that the defendants were not using an identical sign to the mark ASPREY because they were using the whole name William R. Asprey Esquire.
Exhaustion of rights
Merck, Sharp & Dohme GmbH v. Paranova Pharmazeutika Handels GmbH; Boehringer Ingelheim KG & ots v. Swingward Ltd & ots* (Opinion of Advocate General Jacobs for the ECJ; 12.07.01)
These two cases relate to the repackaging of authentic drugs and their importation into Austria and the UK respectively. Some of the products had been overstickered by the defendants, some had been reboxed, sometimes using the registered trade mark for the product on the outside of the box and sometimes not. The claimants in both cases claimed that these activities infringed their trade marks. There was no question that the quality of the goods had been affected by what the defendants had done.
Laddie J. had referred the case from the UK. At first instance ( FSR 529), he held that the defendants had not harmed or put at risk the specific subject matter of the trade mark rights and, therefore, since reboxing was necessary to overcome the resistance of the market to overstickered products; what the defendants had done was necessary to secure the free movement of goods. The reference was made because (i) there appeared to be a conflict between the various ECJ cases on the packaging of products (in particular between the Hoffmann La Roche case  ECR 1139 and the Bristol Myers Squibb case  ECR I-3457) and (ii) Laddie J. considered that the requirement of advanced notice of repackaging to be intellectually unsound. The court in the Austrian case also queried the apparent inconsistencies in the ECJ case law.
A. G. Jacobs expressed the following opinion. First, a trade mark owner is prima facie justified under the first sentence of Article 30 EC or under Article 7(2) of the Trade Marks Directive in opposing the unauthorised reaffixing of his trade mark after repackaging. In his view, that principle applied to all types of repackaging at issue in these cases because (i) each of those repackaging operations was in principle liable to prejudice the guarantee provided by the trade mark that a product bearing that mark had not been affected by a third party without the trade mark owner's authorisation; and (ii) the specific subject matter of the trade mark included the right to prevent any use of it which was likely to impair that guarantee of origin and each of those repackaging operations was likely to do so.
However, A. G. Jacobs was of the opinion that if the exercise of that right constituted a disguised restriction on trade between Member States then, by virtue of the second sentence of Article 30 EC, it would not be justified. The trade mark owner was consequently not able to oppose repackaging if use of his trade mark rights contributed to the artificial partitioning of the markets. Preventing a parallel importer from necessarily repackaging contributed to such artificial partitioning. This was the inescapable conclusion of the case law which, in A. G. Jacobs view, was not inconsistent.
A. G. Jacobs then went on to consider the meaning of the word "necessary" (which had first appeared in the Bristol Myers Squibb case). Accordingly, he concluded that a parallel importer would be justified in repackaging pharmaceutical products insofar as such repackaging was reasonably required to enable the importer to obtain effective access to the market of the importing Member State (or a significant part of it) and insofar as other, less intrusive, methods of repackaging would not enable him to obtain effective access to that market (or to a significant part of it). For that purpose, account had to be taken, not only of obstacles which existed in law, such as the regulatory requirements of the importing Member State, but also obstacles which existed in fact, including the resistance of consumers, for example, to overstickered boxes, which was such as to affect prescription or dispensing practice.
Finally, on the question of prior notice, A.G. Jacobs stated that such requirement had a solid pedigree and was based on cogent reasons. He concluded that a parallel importer intending to market repackaged goods bearing a trade mark had to, in all circumstances, give the owner of the trade mark reasonable advanced notice. Three to four weeks' notice would normally be regarded as reasonable. Should the parallel importer fail to give such notice, he would not be able to rely on Article 30 EC or on Article 7(2) of the Directive in proceedings brought against him for infringement.
The reader's attention is drawn to the following reported decision:
Primark Stores Ltd v. Lollipop Clothing Ltd (J. Martin Q.C.;  ETMR 334)
Summary judgment for trade mark infringement and passing off was granted in this case of suspected sale of grey market goods. The deputy judge held that if Lollipop had sourced the jeans from Primark's suppliers, Primark could not be said to have adopted those jeans, to be their source, or, indeed, to take any responsibility for them as it had not taken delivery of them.
Language regime at OHIM
Christina Kik v. OHIM* (CFI; 12.7.01)
The applicant applied to register KIK as a CTM. The application was in Dutch and indicated Dutch as a second language, contrary to Article 115(3). The application was dismissed by the examiner and appeals to the Board of Appeal and CFI were also dismissed. The CFI held that Article 115(3) was not an infringement of the principle of non-discrimination. A second language, being a language of the Office, was required in relation to opposition, revocation, or invalidity proceedings. It followed that, so long as the applicant was the sole party to the proceedings before OHIM, the language used for the filing of the application remained the language of the proceedings. Furthermore, the language regime was adopted for the legitimate purpose of reaching a solution on languages in inter partes proceedings.
easyJet Airline Co. Ltd v. Tim Dainty (t/a easy Real estate) (B. Livesey Q.C.; BL C/9/01)
In this passing off case, the deputy judge gave summary judgment against the defendant. The defendant's domain name, easyRealestate.co.uk did not inherently lead to passing off. However, the defendant used it with the distinctive delivery of the easyJet group of companies, namely:
use of the word "easy" together with another word alluding to the service in question being offered so as to form one new word;
use of the word "easy" in lower case;
use of a capital letter to begin the second word, e.g. easyJet, easyEverything and easyRentacar; and
use of a bright orange background with plain white lettering.
In so doing, the design of the defendant's website was calculated to take advantage of as close an association with easyJet as the defendant could devise. From the evidence, it was clear that this was no accident. The defendant had sought funds from easyJet and, when this did not succeed, put the domain name up for auction.
The judge awarded an injunction and ordered the transfer of the domain name to the claimants. However, he did not award an inquiry as to damages or an account of profits. To do so in this case would have been oppressive. It was clear that the defendant had not made any profit out of the site as he had minimal, if any, business. The damage done to the claimants was probably also minimal.
Local Sunday Newspapers Ltd v. Johnson Press plc (Neuberger J.; BL C/27/01)
In an action for passing off, Neuberger J. refused to grant an interim injunction to prevent the defendant from publishing a free newspaper to be called "Northants on Sunday". The claimant was the publisher of a number of free local newspapers under the titles "[area name] on Sunday". The claimant failed because of the descriptive title of their newspapers, the lack of goodwill in their newspapers in Northamptonshire and the failure to prove that there was a realistic likelihood of confusion.
TeleWorks Ltd v. TeleWork Group plc (C. Floyd Q.C.; 27.4.01)
At trial, the claimant, TeleWorks Ltd, failed in its action for passing off against TeleWork Group plc. The claimant had limited goodwill and could not show that the confusion which had occurred arose amongst those who knew of the claimant. As in HFC Bank v. Midland Bank plc  FSR 176, there could therefore be said to be no actionable misrepresentation. In coming to this decision, the fact that the claimant's name was descriptive (although relatively new) was relevant, as was the fact that the services offered by each company were not the same (although both were in the computer telecommunications industry).
Newspaper Licensing Agency Ltd v. Marks & Spencer Plc (House of Lords; 12.7.01)
The House of Lords, Lord Hoffman giving the opinion, held that by photocopying copies of press cuttings from national and daily newspapers, M&S had not infringed the copyright in the typographical arrangement of the published editions of those newspapers. The House of Lords held that a newspaper constitutes a separate "published edition" for the purposes of section 1(1)(c) CDPA. Therefore, it was not correct to say that the same newspaper also contained "published editions" of the individual literary works contained in it (as per the dissenting judgment of Chadwick L.J. in the Court of Appeal  RPC 76).
On considering infringement, the House of Lords pointed out the difference between the protection afforded by artistic copyright and typographical copyright. In relation to the latter, sections 16(3) and 17(5) CDPA provided that nothing less than a facsimile copy of all or substantially all of the arrangement would be an infringement. What was protected by this right was the skill and labour devoted to the typographical arrangement which, in the case of a modern newspaper, was principally expressed in the overall design. It was a combination of typeface, width of column, relationship of headlines and straplines to other text, the number of articles on the page and the distribution of photographs and advertisements giving the newspaper as a whole its distinctive appearance. The test of whether a substantial part of this had been copied was both quantitative and qualitative: quantitative in the sense that a facsimile copy of enough to amount to a substantial part was made; and qualitative depending on whether the copy appropriated the presentation and layout of the edition. On this basis, M&S had not taken a substantial part of each newspaper.
Cotton Productions v. Boncrest Ltd (Steinfeld Q.C.; BL C/14/01)
The issue of whether copyright existed in colour charts for bedspreads and cushions had been decided as a preliminary issue by Evans-Lombe J.  CIPA 406. Therefore, this decision dealt merely with the issues of infringement and relief. The deputy judge held that, on the facts, there was no primary infringement. Therefore, the claimant had to prove secondary infringement which required proof that the defendant knew or had reason to believe that the article complained of was an infringing copy of the work (section 23 CDPA). This the claimant failed to do.
The claimant and the defendant shared a supplier in India. Two days before issuing proceedings, the claimant had written to the defendant asserting his rights. However, that letter did not identify quite what the works were in which he was claiming copyright. Furthermore, exaggerated and confusing claims had been made orally. When the defendant sought to investigate the claims by asking its Indian supplier, it was assured that there had been no copyright infringement. Therefore, the defendant wrote asking for further particulars. This letter was not answered. Instead proceedings were issued on the same day. Because the claimant's letter failed to sufficiently particularise the claim and the claimant failed to allow sufficient time (two days) for the defendant to investigate it, he was no entitled to relief. The proceedings had been issued prematurely which resulted in their lacking a cause of action.
British Horseracing Board Ltd v. William Hill Ltd (Gibson, Clarke & Kay L.JJ.; 31.7.01)
In the first case to come before the Courts under the Regulations based on the Database Directive, the Court of Appeal stated that it will refer various questions to the ECJ. If it had not had this luxury, it would have been likely that the Court would have supported the conclusions of Laddie J. ( RPC 612) for the reasons which he gave. The questions are yet to be decided. Once they are, they will be reported.
1. Indicates goods or services of the applicant only, unless those of the opponent are identical or so close as to be considered identical.
Written by Katharine Stephens and Rebecca Harrison.