Reported Trade Mark and Design Right Cases for May 2001

25 May 2001

Katharine Stephens

Note: The following judgment, reported previously in CIPA March 2001, at page 156 has now been placed in the British Library (BL) collection as follows: Daimlerchrysler v. Javid Alavi t/a Merc (C/63/00).

Oppositions etc.








































 BL No.


 Application


 Earlier Mark


 Goods/Services1


 Comment

 O/328/00THE GATEHOUSE THEATREUPSTAIRS AT THE GATEHOUSE

(unregistered)

Theatre entertainment services (41) Opposition failed under ss 5(4)(a) and 3(3)(b). Use of the word 'theatre' within the trade mark did not mean that the mark was misrepresentative if the applicant did not apply the mark to a particular building. It could also apply to a theatre company.
 O/345/00HDT HERBAL DIGESTIVE TEA THE NATURAL AID TO DIGESTION & 'Maltese Cross' device (registered)CRUZ DE MALTA & 'Maltese Cross' device

(unregistered)

 Herbal tea (5)Application for a declaration of invalidity upheld under ss 47(1) and 3(6). The registered proprietor was aware of the applicant's trade mark use of the 'Maltese Cross' and had had dealings with the applicant prior to filing its trade mark application. The fact that the applicant had not made trade mark use of its mark in the UK prior to the date of the registered proprietor's filing was not relevant. The registered proprietor's actions "[fell] short of the standards of acceptable commercial behaviour observed by reasonable and experienced men".
 O/346/00 DAVID PAGE DAVID PAGE

(unregistered)

 Clothing, footwear, headgear (25)Opposition succeeded under s3(6). The applicant was aware that his name had been adopted by the opponent as a trade mark whilst he was working for them and his subsequent application for a trade mark in his own name in relation to identical goods was therefore in bad faith.
 O/367/00 NONOGRAM NONOGRAM

 (unregistered)

 Gaming machines including computer games, toys, electronic games (9, 28)Opposition succeeded under ss3(6) and 5(4)(a). Even if the circumstances under which an application had originally been made in bad faith had been cured, for example, by an assignment, the application still had to be declared invalid. The reason for this was that the date of the registration could not be amended to the date after the bad faith was cured. Again, ignoring subsequent events, at the date of application, the opponent could have succeeded under s5(4).
 O/380/00 ORACLE ORACLE

(registered in a variety of classes for computers, software, data processing services etc.)

Variety of surveillance apparatus except in relation to monitoring of traffic (9)Opposition failed under ss 3(6), 5(1), (2), (3) and (4). Even though dilution might result from the applicant's registration, the degree of dilution would be negligible because the parties' trade marks were for sufficiently different goods and the opponent's reputation was sufficiently specific (in relation to IT services) that it was not appropriate to uphold an opposition against an application for use in relation to a specifically different set of goods.

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

Shape Mark

Kabushiki Kaisha Yakult Honsha's application (Laddie J.; BL O/008/01)

Laddie J. upheld the decision of the hearing officer (reported [1999] CIPA 246) who had refused the application to register the shape of the Yakult bottle in classes 29 and 32. The shape of the bottle was not inherently distinctive under section 3(1)(b). The fact that a container was unusual or attractive did not, per se, mean that it would be taken by the public as an indiction or origin. The question was not whether the container would be recognised on being seen a second time, but whether by itself its appearance would convey trade mark significance to the average customer. Laddie J. could not see anything in the design which would convey to someone who was not a trade mark specialist that the bottle was intended to be an indication of origin or proclaimed that it had trade mark significance.

Laddie J. rejected the submission that the bottle shape had acquired distinctiveness under the proviso to section 3(1). Prior to and at the date of the application, sales had not been great and no effort had been made to promote the shape as having any trade mark significance. Laddie J. placed no weight on a survey. It had been conducted some two and a half years after the date of the application. Furthermore, the questions were far too leading to be accepted as reliable evidence. They first asked about the shape of the Coca Cola bottle and therefore would lead the respondents to realise that some sort of trade mark significance in relation to containers was the subject of the survey.

Ownership

Jonathan Ball v. The Eden Project Ltd & anr (Laddie J.; 11.04.01)

The defendants succeeded in an application for summary judgment on their counterclaim. Laddie J. ordered the trade mark THE EDEN PROJECT to be assigned to the defendants as the claimant had been in breach his fiduciary duty as a director of The Eden Project Ltd (the "company") when he had applied to register the mark in his own name without either the knowledge or the consent of the company. Although the claimant had been one of the two major early contributors to the project, once the company had been formed, he knew that all efforts to realise the project would be channelled through the company and that it was intended that it would generate the future goodwill in the name THE EDEN PROJECT. The name was a fundamental part of the company's business and to the extent that the registration was retained by Mr Ball, the company was deprived of the opportunity to benefit from the goodwill generated by its own efforts. Therefore, as a director of the company, his application for the trade mark was for his personal interest and conflicted with the interests of the company he was bound to protect.

Protected geographical indications/Protected designations of origin

Schutzverband gegen Unwesen in der Wirtschaft e.V. v. Warsteiner Brauerei Haus Cramer GmbH & Co. KG (ECJ; 7.11.00)

This case related to a beer brewed by the defendant at its Paderborn brewery, situated not far from Warstein. It was common ground that the name Warsteiner (registered by the defendant as a German trade mark), being the adjectival form of the place name, was a geographical indication of source in the sense of simply being a place name and there being no link between the characteristics of the product and that place name. However, the applicant, an association whose object was to combat unfair competition, considered that the use of the name Warstein on beer from Paderborn was misleading. At first instance, the application for an injunction was upheld. On appeal, this was quashed on the basis that a survey showed that the designation did not mislead a significant number of consumers.

On further appeal, the Bundesgerichtshof was asked to consider the interaction between Regulation (EEC) No. 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs and national trade mark and unfair competition law. Accordingly, the Bundesgerichtshof referred the following question to the ECJ: "Does the Regulation ... preclude application of a national provision which prohibits the misleading use of a simple geographic designation of source, that is, an indication in the case of which there is no link between the characteristics of the product and its geographical provenance?"

The ECJ held that the Regulation does not preclude national legislation which protects simple geographical indications of source. Unlike A.G. Jacobs, the ECJ did not comment on whether the German unfair competition law was lawful if it protected geographical indications where there was no risk of misleading the public (see [2000] CIPA 347). Instead, the ECJ held that there was nothing in the Regulation to indicate that such geographical indications cannot be protected under the national legislation of a Member State. In principal, it is for Member States to regulate all matters relating to the marketing of products in their own territory, subject to any Community measures adopted. The Regulation was specifically limited to the protection of designations where there was a link between product or food stuff characteristics and geographical origin. In so holding, the purpose of the Regulation was not undermined.

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.

TRIPs Agreement

V.O.F. Schieving-Nijstad & ots v. Groeneveld (A.G. Jacobs, 15.02.01)

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 courts 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.

A.G. Jacobs gave the following opinion:

  • 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. 

  • The provisional measures in Articles 50(1) and (2) do not automatically lapse if substantive proceedings are not started within the prescribed time; there has to be a request by the defendant. 

  • It is for domestic procedural law to state when the time limits mentioned in Article 50(6) commence. Where there is no readily ascertainable practice, time will start running from either the date of the decision or from the date of service of that decision (or in either case, from the day after the relevant date). 

  • It is a matter for domestic procedural law whether a court fixes a date for the initiation of substantive proceedings either of its own motion or on application. 

  • If permitted by national law, an appellate court can fix or vary a time limit for the commencement of substantive proceedings where the lower court did not do so. 

  • Article 50 is applicable where the TRIPs Agreement enters into force in the Member State concerned on a date following the close of proceedings at first instance but before the court seized of the first instance proceedings had delivered its decision, provided that the act of infringement in respect of which a provisional measure within the meaning of Article 50(6) is ordered, is committed or continues after the TRIPs Agreement has entered into force.

DESIGN RIGHT/COPYRIGHT

Scholes Windows Ltd v. Magnet Ltd (Gibson, Mummery and Rix L.JJ.; 11.04.01

The Court of Appeal upheld the decision of the deputy judge [2000] FSR 432; the horn on the claimant's PVC windows (mimicking a feature of Victorian sash windows, being the projection from the sides of an upper window below the rail between it and the lower window) was not protected by design right since it was commonplace.

The Court of Appeal followed the directions given in the House of Lord's decision Designers Guild v. Russell Williams [2001] FSR 113. The court of first instance was in a better position to decide the issue of what was commonplace and the Court of Appeal would confine itself to the issue of whether the deputy judge had misdirected himself in deciding the design field and whether the design was commonplace "at the time of creation" of the claimant's design.

The deputy judge had correctly held that the relevant design field covered all windows and not just PVC windows as argued by the claimant. Design right is a right in the design of any aspect, shape or configuration of an article. It is not a right in the article itself nor is it a right in the idea of a particular construction, use or application of the article itself. Thus the fact that the article in this case was made out of PVC did not make that material part of the design. Therefore as the material is irrelevant to the design, the material is also irrelevant to delineation of the design field.

The Court of Appeal also held that the deputy judge was correct in including in his comparison with the claimant's design, designs which were old or historical in the sense that they were first produced many years ago, though still to be seen, particularly on Victorian houses. There was nothing in the provisions of the CDPA which excluded from consideration existing designs which were first produced at an earlier time than the design in suit, if they can be fairly and reasonably regarded as included in the design filed in question at the time of the creation of the design in suit.

Guild v. (1) Eskandar Ltd & (2) Nabavi (Rimer J.; BL C/004/01)

This was a factually complex dispute relating to the design of three garments based on a "big square" design of unusual width. Mrs Guild claimed that Mr Nabavi infringed both copyright and design right in the garments. The first claim failed. The second succeeded.

Rimer J. held that the garments were original, despite the core of their design based on a third party's design. Sufficient independent skill and labour had been expended in modifying the third party's design (e.g. altering the dimensions, reworking the collar and cuffs) that the totality of the modified design qualified as original for both copyright and design right purposes. Mrs Guild's garments were, however, not works of artistic craftsmanship under section 4(1)(c) CDPA. Following Merlet v. Mothercare [1986] RPC 115, Rimer J. had to be satisfied that, firstly, their creation reflected an exercise of craftsmanship, being a manifestation of pride in sound workmanship and, secondly, that they were, as a matter of evidence, works of art. The primary, but not the only, consideration in relation the latter was whether the maker had the conscious purpose of creating a work of art. If he did, and provided he did not manifestly fail, it would be a work of art. Rimer J. held that the sample garments - made as they were as prototypes for mass production - and being machine made garments which could not come much simpler, were not works of craftsmanship. There was no evidence of any special elements of craftsmanship going into their manufacture, nor was there any evidence that Mrs Guild intended to create works of art, or even regarded herself as an artist. That the garments appealed to Mrs Guild and she hoped to the buying public would not by themselves justify an inference that the garments were to be regarded as works of art. Furthermore, Rimer J. preferred the evidence of the defendants' expert who was of the opinion that Mrs Guild's designs were not works of art.

Rimer J. held that design right existed in the garment designs as they were not common place in the field of ladies luxury fashion, comprising luxury knitwear and shirts. Considering the evidence, although Mrs Guild was not the only designer to favour the wide look, by the time she was creating her designs, their essential features were not common place. Finally, Rimer J. held that the elements of similarity between Mr Nabavi's garments and Mrs Guild's designs were "so remarkable" that, despite admitted design differences, there was an inevitable inference of copying.