Reported Trade Mark, Design Right and Database Right Cases for March 2001

25 March 2001

Katharine Stephens


Note: The following judgements, reported previously in CIPA December 200 and January 2001 have now appeared in the British Library (BL) collection as follows:  Decon Laboratories Ltd v. Fred Baker Scientific Ltd & anr  (C/44/00);  British Airways plc v. Ryanair Limited (C/52/00).

Appeal to the Appointed Person: Section 5(3)

Valucci Designs Ltd v. IPC Magazines Ltd  (S. Thorley Q.C.; BL C/50/00)

Mr Thorley allowed an appeal from the Hearing Officer. The application to register LOADED in class 25 in respect of clothing was successfully opposed under section 5(3) by IPC, the proprietors of the mark LOADED registered in class 16 and the magazine of the same name. The law was correctly stated in General Motors [2000] RPC 572, Pfizer v. Eurofood [2000] ETMR 896 and Premier Brand v. Typhoon [2000] FSR 767. Mr Thorley therefore did not rehearse the law. However, he accepted IPC's contention that, although it was not necessary to prove confusion under section 5(3), it was appropriate to have regard to questions of "origin confusion" and of association of a lesser nature and to the resulting prejudice, or otherwise, arising from that confusion or association. In the case of confusion, the likelihood of prejudice would, in a normal case, be obvious. However, the same could not be said of association where there may or may not be prejudice, depending on the facts of each case.

IPC submitted that the onus of satisfying the tribunal that the mark should be registered was upon the applicant for registration. Mr Thorley held that the onus of proving any assertion lay on the party asserting it. Therefore, the onus of proving both the reputation and detriment/unfair advantage lay upon IPC.

On the evidence, Mr Thorley held that, at the date of application, IPC had established a significant reputation in the mark LOADED as used as the title of a magazine. However, the penumbra of protection was not wide enough to satisfy Mr Thorley that "origin confusion" was proved. However, the possibility of association was manifest. The marks were the same. Anyone familiar with LOADED magazine, a significant proportion of which was devoted to the fashion industry, seeing clothing marketed under the mark LOADED would inevitably call to mind the magazine. Indeed, once IPC had proved reputation, Mr Thorley did not believe he needed evidence to reach this conclusion.

However, the more troubling question was whether such "calling to mind" would lead to any significant detriment to IPC or benefit to Valucci. IPC submitted that there was detriment in this case by reason of dilution, blurring, tarnishing and, added to the list, inhibition. This last point arose as follows: LOADED magazine had distributed a few T-shirts. Although the number was small, it was contended that, if the mark opposed was registered, it would be open to Valucci to oppose any further marketing of that clothing on the grounds of infringement. Since it was natural and proper for IPC to promote the magazine through clothing, IPC submitted that allowing the application to succeed would be an unfair fetter on them and hence cause detriment. In Mr Thorley's judgment, there was substance to this argument. However, the weight attached to it had to be tempered by reference to section 11(3) which gives a defence to traders in possession of earlier rights.

This was a borderline case. In the end, however, the opposition succeeded. Mr Thorley thought it inescapable that some of the kudos of the magazine would accrue to clothing sold under the LOADED trade mark. Registration of Velucci's application could also materially affect the ability of LOADED magazine to obtain advertisements from others for their clothing in the magazine. IPC therefore just succeeded in discharging the onus upon them.

Infringement

Daimlerchrysler AG v. Javid Alavi t/a MERC (Pumfrey J.; 26.1.01)

The claimant was primarily known as the manufacturer of Mercedes Benz cars. The defendant was sued for trade mark infringement and passing off for his use of MERC for clothing and related goods. The defendant had been selling clothing for more than 30 years and exporting clothing for more than 24 years under the mark. The claimant had also, in separate actions, opposed the defendant's application for a CTM for MERC for clothing, footwear and headgear in class 25 and had opposed the defendant's UK application for clothing, footwear and headgear in class 25. The defendant counterclaimed for revocation of the claimant's registrations for MERCEDES and MERCEDES-BENZ as far as they covered class 25.

Pumfrey J. held that the claim to trade mark infringement under section 10(2) was hopeless. The defendant had built up goodwill in the trade mark MERC in relation to clothing to sufficient extent to be entitled solely to the benefit of the goodwill in the trading name in relation to clothing. He held that there was no convincing evidence that MERC as used by the claimant, although commonly used as a short form for MERCEDES, had a reputation which extended to cover clothing, or that the public would be confused.

Pumfrey J. held, in relation to the claimant's trade mark for MERC as registered in relation to vehicles, that there was no infringement under section 10(3). Under section 10(3), confusion was not necessarily required. Therefore, following Advocat General Jacobs' opinion in Canon v. MGM [1999] RPC 117, Pumfrey J. formulated the test as follows:

"1. Does the proprietor's mark have a reputation?

2. If yes, is the defendant's sign sufficiently similar to it that the public are either deceived into the belief that the goods are associated with the proprietor so that the use of the sign takes unfair advantage of the mark, or, alternatively, cause detriment in their minds to either (a) the repute; or (b) the distinctive character of the mark; or

3. Even if they are not confused, does the use of the sign nonetheless have this effect; and

4. Is the use complained of nonetheless with due cause."

Even though use of MERC alone, divorced from any commercial context, might be recognised as an abbreviation of the claimant's marks, no advantage was demonstrated as derived from this recognition. No detriment was caused to the reputation of the claimant's mark.

In relation to passing off, there was no evidence of a misrepresentation having been made at any time by the defendant and the action therefore failed.

The defendant's counterclaim for revocation on the basis of non-use succeeded except in relation to "sweaters, anoraks, polo-shirts, scarves, T-shirts and baseball caps". The reduced specification offered sufficient protection to the claimant insofar as it applied its marks to clothing for promotional purposes.

Revocation

Minerva Trade Mark  (Jacob J.; [2000] FSR 734)

This reported decision is drawn to the reader's attention. Partial revocation of the trade mark MINERVA in so far as it was registered for printer matter other than stationery was ordered under section 5(4)(a).

Appeals from OHIM to the Court of First Instance

Messe München GmbH v. OHIM (CFI; 5.12.00)

The refusal to register the stylised word ELECTRONICA in relation to goods and services relating to the supply of electronic components in classes 16, 35 and 41 under Articles 7(1)(b) and (c) was upheld by the CFI on appeal. The Court held that, for the purposes of considering distinctiveness, an application for a mark in stylised script should be considered as a simple word mark application. ELECTRONICA was almost identical to the Spanish and Portuguese words "electrònica" and the lack of accent was not something that the average Spaniard or Portuguese person would be likely to notice. Electronics was the basic subject area or context in which the mark would be used which further reduced the likelihood of its being able to distinguish one undertaking from another whilst also describing an essential characteristic of the goods/services.

The Sunrider Corp v. OHIM (CFI; 31.1.01)

The CFI allowed in part the appeal from the decision of the Board of Appeal. VITALITE was not prevented from registration in relation to "food for babies" or "mineral and aerated waters" under Articles 7(1)(b) and (c) i.e. in relation to these goods, the mark was not devoid of distinctive character nor was it descriptive. However, the CFI upheld the decision of the Board in refusing, under Article 7(1)(c), registration for goods in classes 5, 29 and 32 which had a specific medical, nutritional or dietetic purpose. Despite the lack of accent, which was not required when using capital letters, the mark could be understood by French speakers as the word "vitalité" and therefore would serve to designate one of the intended purposes of such goods.

Wm. Wrigley Jr. Co. v. OHIM  (CFI; 31.1.01)

The CFI allowed the appeal from the decision of the Board of Appeal and allowed the application to register DOUBLEMINT for a wide range of goods in classes 3, 5 and 30. The mark was not exclusively descriptive under Article 7(1)(c). Instead, for an English speaker, it was ambiguous and open to various interpretations, for example, it could mean twice the usual amount of mint or flavoured with two varieties of mint. For a non-English speaker, it would have a vague and fanciful meaning.

Taurus-Film GmbH & Co. v. OHIM (CFI; 31.1.01)

The CFI allowed in part the appeal in relation to the mark CINE ACTION. In agreeing with the Board of Appeal, the CFI held that the mark could serve to designate certain characteristics of a given category of films, namely action films. It was therefore not registerable under Articles 7(1)(b) or (c) in relation to the majority of the services forming the application, particularly those which were concretely and directly concerned with the production or transmission of action films. However, in relation to the supply of other services, particularly technical, legal, management or organisational services, the same objections did not apply. Therefore the application was allowed for a much reduced list of services in classes 38, 41 and 42.

Taurus-Film GmbH & Co. v. OHIM (CFI; 31.1.01)

On a very similar set of facts and in a very similar decision to the one summarised above, the CFI allowed in part the appeal in relation to the mark CINE COMEDY and allowed registration to a limited list of services in classes 38, 41 and 42.

Mitsubishi HiTec Paper Bielefeld GmbH v. OHIM (CFI; 31.1.01)

The CFI dismissed an appeal from the decision of the Board of Appeals to reject an application to register GIROFORM in class 16 for paper goods. The word "giro" is commonly used in the banking world to designate the transfer of money between banks. The mark would therefore designate a form to be used in relation to bank payment transactions (under Article 7(1)(c)) and the combination of the two words did not amount to evidence of any creative aspect (under Article 7(1)(b)).

Design Right

A Fulton Co Ltd v. Grant Barnett & Co  (Park J.; 5.10.00)

Fulton claimed design right in the handle and case for a compact umbrella. Park J. held that if a design differed only by small shifts in for example, lines, angles and arcs, the court did not have to form a view about whether the resulting design "worked" or not, in particular, in the sense that it was commercially successful. A design could still be considered not to be commonplace. Here, the design did not fail the test of originality under section 213(4) CDPA 1988.

Fulton's Chief Executive had taken an active role in the design of both the handle and case of the compact umbrella which was manufactured on its behalf by a Far Eastern manufacturer. In particular, the umbrella case differed from other umbrella cases because it did not lose its shape when the umbrella was removed from inside it, in particular because of the way it was seamed.

The "must fit" exclusion in section 213(3)(b) did not apply. It was not acceptable to construe the provision as meaning that any article which was shaped so as to cover or contain another article could not qualify for design right. Unlike spare parts for cars, the particular features of the umbrella case were not designed to enable it to perform the function of the umbrella. Any case of approximate dimensions would do that. The shape or configuration of the umbrella case here was designed to perform the function of looking attractive and promoting sales, not to perform the function of enabling the case to be placed around the umbrella.

The exclusion in section 213(3)(c) relating to surface decoration also did not apply. Although the outward facing seams were only in a third dimension in a small way, this did not mean that they should automatically be considered to be surface decoration. In this case, they did not constitute surface decoration.

Pursuant to section 227, Grant Barnett was found to have committed secondary infringement by importation and marketing of a product which infringed the Fulton's rights. The differences between the handles and cases were not sufficient to prevent infringement. Under section 227, the defendant was required to know or have reason to believe that their product infringed the claimant's product.

In relation to the umbrella case, even though at the time of the defendant viewing samples of its Far Eastern manufacturer, it was not aware of the claimant's product, by the time that the products were imported, the defendant would or should have been aware of other products in their home market and that the product they were importing from their Far Eastern manufacturer was a copy of the claimant's product. This was evidenced by the fact that two directors of the defendant were made aware by the defendant's solicitors that a registered design existed for Fulton's umbrella case. In addition, the directors of the defendant must have been aware of the infringement or they would not have given instructions to its manufacturer to make minor changes to the design of the case in order to prevent it infringing.

In relation to the handle, which was not protected by design right, the defendant was put on notice of infringement by way of an amended writ and, therefore, they were deemed to have "reason to believe" they were infringing, as required by section 227, three weeks later. By this point, the defendant would have had a chance to make sufficient investigations to establish that infringement had occurred. Even though this cause of action effectively did not arise until after the action had been commenced, requiring Fulton to issue a new claim was a waste of time and expense. However, for the purposes of damages, the calculated date at which "reason to believe" arose, 3 weeks after the amended writ was served, was the relevant one.

Copyright

A v. B (Lloyd J.; 31.7.00)

There was no copyright infringement where two pages from a private and personal diary taken for the purposes of divorce proceedings (section 45 CDPA; exception to copyright infringement for judicial proceedings). The copies were taken after the respondent had been informed that the applicant intended to institute divorce proceedings. Even though the copying was anticipatory, it was foreseeable that proceedings were likely and that the documents in question might provide evidence on a point which might be at issue. The question of whether the defence was available for anticipatory copying for proceedings which were not instituted subsequently was not addressed.

In relation to confidentiality, the respondent contended that his only purpose in obtaining the copies was for the purpose of the judicial proceedings. It was held that it was therefore appropriate to make an order whereby all the copies held by the respondent were to be lodged with his solicitors to be held subject to an undertaking which would ensure that they were only used for the purposes of proceedings between the parties. The diary content did not fall within the defence of public interest set out in Hyde Park Residence Ltd v. Yelland [2000] 3 WLR 215 at 236 where Aldous L.J. held that "a court would be entitled to refuse to enforce copyright if a work was immoral, scandalous or contrary to family life."

Database Right

British Horseracing Board Ltd ("BHB") v. William Hill Ltd ("WH")  (Laddie J.; 9.2.01)

Summary

In the first case to be decided under the Regulations based on the Database Directive, the Court held that use by WH of horse racing information supplied to it by a third party amounted to a breach of BHB's database rights in that information.

Facts

BHB is the governing authority for the British Horseracing Industry. BHB maintains a computerised collection of information relating to horse races to be run in Great Britain. BHB makes this information available under licence to third parties for onward transmission to customers by means of a raw data feed. However, the third party (the intermediary) has no right to sub-license the use of the information supplied to it under the licence.

BHB alleged that WH's use of the data taken from the raw data feed was an extraction or re-utilisation of a substantial part of BHB's database and/or that even if the individual extracts were not substantial, nevertheless WH was repeatedly and systematically extracting and/or re-utilising insubstantial parts of the database.

What is a database?

Laddie J. held that the word "database" should be interpreted very broadly such that "any two or more pieces of data put side by side could be said to be a collection and, therefore, a database." He went on to say that the expression "database" has a very wide meaning "covering virtually all collections of data in searchable form."

Furthermore, the content of a database is almost without limit. Recital 17 of the Directive specifically cites works normally protected by copyright as well as "numbers, facts and data". The content may also include collections of independent works, data or other materials that are systematically or methodically arranged. However, this does not mean that the materials themselves have been physically stored in an organised manner.

It is clear that Laddie J. wanted to reflect the very broad terminology and definitions used in the Directive in interpreting what constitutes a database and what the contents of that database may comprise.

What does a database right protect?

The Directive refers repeatedly to protecting and encouraging investment in database creation. Thus, Article 7(1) states that a database will be protected if the maker of the database shows that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents of the database. Even in this regard, Laddie J. thought that the qualifying level of investment is "fairly low". However, the most important aspect of this point is that the database right does not protect the information or contents of the database; the right protects the investment in obtaining or verifying or presenting those contents. Furthermore, and logically, the database right applies irrespective of the eligibility of the contents for protection by copyright or other intellectual property rights.

Thus, one looks to the amount of effort that the database maker has expended in gathering all the data together. One also looks at the investment in verifying the accuracy of a collection of data. Finally, the Court will consider the effort and resources put into making the data more readily accessible by the user. This will include effort put into the design of the layout of the information.

Infringement by extraction or re-utilisation of a substantial part

Because the database right protects the investment in obtaining, verifying or presenting the contents of the database, a defendant does not avoid infringement by taking the contents and rearranging them. Although this may amount to a defence for breach of copyright, Laddie J. distinguished database right infringement saying that what has to be protected is not the form in which the contents are expressed but the investment which went into "obtaining, verifying or presenting the contents in which the data is expressed". A defendant will therefore infringe the database right if he takes advantage of the relevant investment by making use of the data, not because he necessarily takes it in a particular form. It should also be noted that the advantage taken of the investment need not result in the creation of a competing database. Anybody who takes advantage of the investment of the database maker will have infringed the database right.

As with copyright, the test of infringement involves an analysis as to whether a substantial part of the database has been extracted or re-utilised. In this regard, substantiality is to be assessed by looking at the quantity and quality of what is taken. In this case, the core business of BHB and the purpose of creating the database was to compile and store information relating to horseracing. Data relating to horse races therefore represents the ultimate and crucial information within the database. WH was therefore making use of the most recent and "core information" in the database and was relying on, and taking advantage of, the completeness and accuracy of that information.

Extraction

Extractionis defined in Article 7(2) to mean: "the permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any form".

Laddie J. held that the Directive does not require that "extraction" should be direct rather than indirect, nor does the definition involve the concept of taking away. WH argued that extraction must involve the physical removal or taking away of the contents of the database. Laddie J. rejected that argument saying that if someone takes a copy of the contents of a

database and loads it onto a new medium, it is no less transferred to the new medium because the same data are left on the original database.

Re-utilisation

Re-utilisation is defined in Article 7(2) to mean: "any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by online or other forms of transmission."

Laddie J. held that any use which transmits or makes available the extracted information to the public is covered by the database right and can be restrained. Furthermore, the fact that some or all of the data are available to the public from another source is irrelevant. This is because the database right is concerned with prohibiting the unlicensed use of data that has been derived without permission from a database. Thus, the right to prevent re-utilisation is not restricted to confidential or secret data on the database.

Infringement by repeated use of insubstantial parts of the database

Article 7(5) provides that it is an infringement of the database right to make repeated and systematic extraction and/or re-utilisation of insubstantial parts of the contents of a database if such extraction and/or re-utilisation conflicts with a normal exploitation of that database or which unreasonably prejudices the legitimate interests of the maker of the database.

An issue arose in this case because the BHB database is never static as it is constantly being modified and updated. WH therefore argued that it never repeatedly or systematically extracted or re-utilised data from the database because the database was so dynamic that each extraction/re-utilisation was of data from a new (or at least different) database.

This rather ingenious argument on behalf of WH was rejected by Laddie J. who said that the law should apply to dynamic databases in the same way as it applies to ones that are built and modified in discreet well-defined steps. He said that the BHB database should be regarded as a single database, albeit that it is in a constant state of refinement. He said that it would be wrong to split the database into a series of discreet databases because not only would this be impossible to do, it would not reflect reality. Thus, WH's extraction and re-utilisation of the contents of the database on a day-to-day basis should be regarded as a repeated and systematic exercise.

Manipulating the data

WH asked the Court to consider whether two modifications could be made such that it avoided infringing BHB's database right. WH suggested that instead of publishing the time of a race, the number of the race could be used, for example, instead of the race being described as the A3.45 at "scot", it would be described as "Race 2 at Ascot". Secondly, WH suggested that instead of the horses being identified by name, they could be identified by their number.

Laddie J. held that both suggested modifications would be an infringement as they were merely the manipulation of the same information but presented in a different manner. In the same way, the unauthorised extraction or re-utilisation of a database written in English by a defendant who converted or translated the contents into another language would not avoid infringement because the same acts of extraction and re-utilisation would have taken place. This follows from the reasoning above that it is not the contents that are protected (whether in English or in any other language), it is the extraction and/or re-utilisation of those contents by a defendant who is taking advantage of the database maker's investment in obtaining, verifying or presenting the contents. As long as substantially the same information is published then the defendant will not avoid infringement.

Written by Katharine Stephens and Rebecca Harrison.