Reported Trade Mark Cases for August 2002

15 August 2002

Katharine Stephens

Websites at which those decisions/opinions can be found which are marked with an asterisk:

ECJ and CFI: http://curia.eu.int/en/jurisp/index.htm

High Court: www.courtservice.gov.uk/judgments/judg_home.htm

Court of Session (Scotland): www.scotcourts.gov.uk/search/supreme_opinions.htm

Trade Marks Registry and Appointed Person: www.patent.gov.uk/tm/legal/decisions/index.htm

Applications/Oppositions






































 BL No.


 Application


 Earlier Mark


 Comment

 O/364/01*CANON (broad range of goods including photographic instruments etc (9))CANNON (production and distribution of films and video tapes (41))Opposition successful under s5(2)(b) in relation to video tapes – otherwise unsuccessful.  The attack on the broad specification of goods under s3(6) failed.  The applicant had not merely used the Nice classification headings but had sought to cover the whole of its range of goods.
 O/386/01*

VICTORIA

(tobacco and smokers products including cigarillos (34))
VICTORIA WINE (alcoholic beverages (32, 33))Opposition partially succeeded under s3(6).  There was no bona fide intention to use the mark for the full range of goods.  The specification was therefore restricted to cigarillos.  Under s5(4)(a),  although off-licences were a well known source of tobacco and smokers products, the opponent’s goodwill was not in such products, but in associated retail services.  The use by the applicant of the mark on cigarillos would not therefore amount to a misrepresentation.  The opposition also failed in relation to s5(2) and s5(3).
 O/401/01*ADPRO (proteins of vegetable origin and in liquid or powder form (29))ALPRO (milk, dairy products, edible oils and fats (29))Opposition succeeded under s5(2)(b).  Some goods were identical e.g. milk and soya milk.  Other goods were similar.  The applicant’s suggestion of limiting its application by excluding sale to retail customers was of no assistance.  The opponent’s mark was sufficiently distinctive and long-standing that there was a real likelihood of confusion.
 O/411/01*Device of a monkey eating a nut (nuts (29, 31))MONKIES + device of a monkey holding a peanut (roasted peanuts (29))The appointed person upheld the decision of the Registrar dismissing the opposition under s5(2)(b) – there was no likelihood of confusion between the marks.
 O/414/01*MIRAGAN (pharmaceutical preparations for treatment of glaucoma (5))IMIGRAN (pharmaceutical preparations (5))Opposition failed under s5(2)(b).
 O/416/01*HYPER BLASTER (various computer related goods and toys (9, 28))A number of marks including SOUND BLASTER, VIDEO BLASTER, DATA BLASTER (various computer related goods and toys (9, 28))Opposition succeeded in part under s5(2)(b).  There would be confusion if the application was used on identical goods.  The hearing officer said, obiter, that merely having a number of marks on the register with a common element was not sufficient in order for the “family of marks” argument to be considered.  The argument could be used, but the marks had to be in use and known to the public.

 

Post BABY-DRY

Nichols plc’s application* (Jacob J.; 23.7.02)

This was an appeal from the decision of the Registrar (O/228/01) who refused the application to register NICHOLS for various foods and drinks in classes 29, 30 and 32 but allowed the application in class 9 in relation to vending machines, being a specialist market.  The decision followed the Registry’s practice in relation to surnames.  

The question before Jacob J. was whether a fairly common surname should be regarded as “devoid of any distinctive character” unless and until it acquired a distinctive character.  He sought guidance from the ECJ without expressing his own opinion (the precise form of the questions has yet to be decided).  In so doing, Jacob J. commented that the decision of the ECJ in BABY-DRY  [2002] RPC 349 shifted the balance towards trade mark proprietors and against the public and third parties.  In that respect it appeared to be in conflict with the ECJ’s decision inChiemsee  [1999] ETMR 585.  Again, and somewhat to his surprise, the ECJ in BABY-DRY had had regard to potential defences when considering whether a mark, without proof of actual distinctiveness, was registrable.  This was to be compared to the ECJ’s decisions in Lloyd [1999] ETMR 690 and Philips [2002] CIPA 355 where the court had emphasised the need for a trade mark to identify goods or services as coming from a particular undertaking and had made no reference to potential defences.  If the scope of potential defences was relevant in this case, the ECJ might have to consider whether the own name defence applied to companies as well as natural persons and what was the meaning of “honest practices”.

Koninklijke KPN Nederland NV v. Benelux-Merkenbureau*  (A.G. Colomer for the ECJ; C/363/99; 31.1.02)

Report provided by Celine de Andria of Bird & Bird (decision not in English).

The Benelux Trade Mark Registry refused to register the application POSTKANTOOR (meaning Post Office in Dutch) for paper goods and various services, despite the offer by the applicant of a disclaimer. The applicant appealed to the Court of Appeal of The Hague, which referred various questions to the ECJ.  The A.G. gave the following opinion: 

1.  When considering the capacity of a sign to constitute a trade mark, all facts and surrounding circumstances should be taken into account, particularly whether the sign had acquired a distinctive character through use or whether there was a risk of confusion in the minds of the consumers in relation to the products or services.    

2.  The absence of descriptive character did not necessarily mean that the sign was distinctive. The distinctive, descriptive or generic character of a sign may only be assessed in relation to the relevant products. 

3.  It is not contrary to the Directive for a national law to enable an applicant to give up the protection afforded by the trade mark in relation to certain products. 

4.  Article 3(1)(c) does not only prohibit the registration of descriptive signs as trade marks which are currently used in the relevant trade but also signs which may reasonably be expected to be used in the future. 

In Chiemsee [1999] ETMR 585, the ECJ had observed that Article 3(1)(c) pursued an aim which was in the public interest, namely that descriptive signs or indications may be freely used by all.  This was to be compared to the decision in BABY-DRY [2002] RPC 349 where the ECJ did not mention considerations of public interest. It was merely said that registration of purely descriptive signs or indications as trade marks was prohibited because such signs/indications were no different from the usual way of designating the relevant goods or services or their characteristics and therefore could not fulfil the function of a trade mark. The A.G. suggested therefore that the Court should reiterate its jurisprudence in the Chiemsee  case.   

5.  In relation to combination marks, the A.G. was constrained to follow BABY-DRY although he disagreed with, in particular, the following:

the case introduced some uncertainty as to whether considerations of public interest applied to Community trade mark law (see above);

  • it presupposed that the average consumer was an English native speaker. (The A.G. was of the opinion that if the grant of a trade mark was to be effective in a number of different linguistic areas then the descriptive character of a sign should be assessed in relation to each linguistic area.)

  • the ECJ had given its opinion on elements of fact (such as how potential consumers would understand the combination of words), which did not fall within its competence and which it is not equipped to deal with;

  • he did not agree with the “any perceptible difference” test. He felt that this test was not sufficient to guarantee that trade marks were not merely descriptive.  

In relation to the last point, he suggested that the ECJ should add the following sentence to the test: “a difference shall be deemed to confer distinctive character where it affects important elements of the shape of the sign or of its meaning”.  As for the shape, this difference would be deemed to occur when, because of the unusual or eccentric character of the combination, the new combination represented something more than the mere adding of all the composite parts.  As for the meaning, the difference would be perceptible if the combination meant something different over and above the meaning ascribed to the individual words/elements.

Appeals from Registry are by way of rehearing

Bessant & ors v. South Cone Inc  (Robert Walker, Buxton and Clarke L.JJ.; 25.5.02)

The Court of Appeal allowed the appeal from the decision of Pumfrey J. [2002] RPC 387 and restored the decision of the hearing officer.  In summary, the facts were as follows:  the application was for the word REEF for T-shirts etc (class 25) and badges etc (class 26).  The opponent’s mark REEF BRAZIL was registered in class 25 in respect of footwear.  The hearing officer dismissed the opposition under section 5(2)(b).  The Court of Appeal held that, although the evidence before the hearing officer was very unsatisfactory, it would have been wrong for him to fill the gaps in the evidence by some sort of intuition.  In reaching his decision, the hearing officer did not err in principle, nor was he clearly wrong.  

As a preliminary issue, Pumfrey J. had had to decide whether the appeal from the hearing officer should be conducted as a review or a re-hearing of the original decision.  His conclusion that it was a review was upheld by the Court of Appeal.  The Court of Appeal asked itself “How reluctant should an appellate court be to interfere with the trial judge’s evaluation of, and conclusion on, the primary facts?”.  It concluded that there was no single standard which was appropriate to every case.  The important variables included the nature of the evaluation required, the standing and experience of the fact finding judge or tribunal and the extent to which the judge or tribunal had assessed oral evidence.  In respect of this last point and in relation to decisions of the Registry, the Court of Appeal stated that, although an appellate court should show a real reluctance to interfere in the absence of a distinct and material error of principle, since the hearing officer did not hear any oral evidence it did not have to show the very highest degree of reluctance.

Appeals from OHIM

Hershey Foods Corp v. OHIM  *(CFI; case T-198/00; 5.6.02)

The application was for a figurative mark referred to as “kiss device with plume” but which represented the shape of a confectionary product wrapped in foil.  The application was made for a broad range of goods in class 30.  The CFI upheld the decision of the Board of Appeal to remit the application back to the examiner for further investigation under Article 7(3).  There had been no infringement of Article 73 as the applicant had had a full opportunity to present his comments before the Board of Appeal.

Chef Revival USA Inc v. OHIM*  (CFI ; case T-232/00; 13.6.02)

The application to register a figurative mark consisting of the words CHEF REVIVAL had been opposed by Joachin Massague Marin on the basis of an earlier Spanish registration for a figurative mark consisting of the word CHEFF.  The language of the opposition proceedings became English.

OHIM asked Marin pursuant to Rules 16(3), 17(2) and 20(2) to present the evidence and arguments to be relied upon in support of the opposition including in particular a copy of the registration certificate of the mark on which the opposition was based.  OHIM also asked for translations of the evidence and arguments to be presented in the language of the proceedings within 2 months.  Marin filed a copy of the Spanish registration certificate but failed within the 2 month period to file an English translation.

The Opposition Division rejected the opposition on the ground that Marin had failed to prove the existence of the earlier trade mark on which the opposition was based.  Marin appealed to the Board of Appeal.  The Board of Appeal allowed the appeal primarily on the ground that, pursuant to Rule 18(2), the failure to file the translation of the Spanish registration certificate was a deficiency in the notice of opposition the existence of which OHIM was obliged to notify to the opponent and call upon him to remedy within 2 months.  Chef Revival appealed to the CFI.  Before the CFI, Marin did not intervene and OHIM contended that the decision of the Opposition Division was correct and the appeal should be allowed.

Annulling the decision of the Board of Appeal, the CFI held that:

  • If the opponent fails to file the evidence in support of the opposition and a translation of it into the language of the opposition within such period as originally specified by OHIM or any extension thereto, then OHIM may decide the opposition on the basis of the evidence (or lack of it) before it. 

  • The translation of the Spanish registration certificate was a matter of evidence and there was therefore no requirement on OHIM under Rule 18(2) to allow a party a further period in which to rectify the deficiency. 

  • Accordingly, Marin’s failure within the specified 2 month period to submit a translation in the language of the opposition entitled the Opposition Division to give a ruling without taking the Spanish registration certificate into account as evidence.

The CFI expressly left open the issue as to whether and if so, in what circumstances, OHIM should take into account evidence and arguments submitted after any specified time limit i.e., grant retrospective time limits despite the express wording of Article 74(2).  Note: As Marin did not appear in the appeal and both of the other parties argued against the decision of the Board of Appeal, this decision is effectively a final one.  

SAT.1 SatellitenFernsehen GmbH v. OHIM  *(CFI; case T-323/00; 2.7.02)

The CFI held that the application was devoid of distinct character in relation to broadcasting by satellite and similar services.  The CFI held that if each element of a mark comprising a combination of elements was devoid of distinctive character, as here, it justified the conclusion that the whole was capable of being commonly used in the trade for the presentation of the services concerned.  That conclusion would not apply only if concrete evidence, such as, for example, the way in which the various elements were combined, were to indicate that the compound trade mark was greater than the sum of its parts.  Further, the CFI held that it was irrelevant to the question of registrability whether the applicant was using or intending to use a particular marketing concept involving the mark.  Finally of note, the CFI held that, in relation to class 42 services, the relevant public could be held as consisting essentially of professionals in the film and media industries.  This was to be compared to the services in the other classes which were intended for general consumption.  In the result, the CFI upheld the Board of Appeal in relation to services relating to broadcasting by satellite and similar services under Articles 7(1)(b) and 7(1)(c) and annulled its decision in relation to the other services making up the application.

Parallel imports

Levi Strauss & Co & anr v. Tesco Stores Ltd & ors*  (Pumfrey J.; 31.7.02)

Following the decision of the ECJ in the combined reference from Zino Davidoff  and this case ([2002] RPC 403), Levi sought and was granted summary judgment.  Thus, Tesco, by importing into the UK Levi jeans acquired from outside the EEA, was infringing Levi’s trade mark.  In so holding, Pumfrey J. dealt with Tesco’s submissions as follows:

  • Section 10(6) should not be interpreted as permitting the marketing by a defendant of goods marked by the proprietor and placed on the market elsewhere i.e. permitting international exhaustion.  If section 10(6) was construed as Tesco submitted it should be, it would make section 12 redundant and would be incompatible with Articles 5 to 7 of the Directive and so unlawful under Community law.  Pumfrey J. held that section 10(6) should be limited to the comparative advertising context only. 

  • Section 3 of the Human Rights Act did not require section 10(6) to be interpreted to allow international exhaustion.  In relation to the right to own and dispose of property, it had to be remembered that there were two property rights in issue – Levi’s interest in its trade mark and Tesco’s interest in the jeans.  Similarly, in relation to the right to freedom of expression, Tesco’s right to tell the public that the jeans were Levi’s had to be balanced against Levi’s rights in their trade mark.  The balance which the legislature had decided to hold in each case went against international exhaustion. 

  • Article 7(1) of the Directive was consistent with the principle of free movement of goods within the Community (Articles 28 – 30 of the EC Treaty).  Such a principle could not be transposed to prevent imports from countries outside the EEA.

Jurisdiction in Internet Disputes

Bonnier Media Ltd v. Greg Lloyd Smith & anr*  (Court of Session, Outer House, Lord Drummond Young, 1.7.02)

Report provided by Gill Grassie of Maclay Murray & Spens.

In this recent Scottish decision the two defenders, despite being based abroad, were prohibited from using domain names similar to the pursuer’s registered trade mark and business name for website purposes or otherwise passing themselves off as the pursuer or infringing the pursuer’s trade mark.

The owners and publishers of the “Business AM” newspaper owned a registered trade mark which had the words “Business AM” on a rectangular background.  Above this in small letters were the words “Scotland's business financial and political daily”.  They operated a “Business AM” website in addition to the newspaper.  The defenders were alleged to have registered a number of domain names incorporating the word “Business AM”, allegedly for the purposes of setting up an “online business advisory service”.  Bonnier had successfully obtained an interim interdict (injunction) in the defenders’ absence preventing the defenders from registering, setting up and operating websites, making use of the name “Business AM”, or with domain names using that name.

The defenders argued that the interdict should be cancelled.  Firstly they argued that the Scottish Court had no jurisdiction as the first defender was based in Greece and the second defender was incorporated in Mauritius.  Lord Drummond Young decided that the Scottish courts could hear the dispute as when someone sets up a website and this causes harm, the court which can hear the dispute is the court where the harmful act is felt.  The judge stated “it is frequently of vital importance that the courts of a country should be able to take effective action against any civil wrong that is threatened there.”  The crucial question then was whether a wrong was in this case being threatened in Scotland.  The judge took the 800–FLOWERS [2002] FSR 191 and Crate & Barrel  [2001] FSR 288 decisions into account and further refined their application in Scotland stating “a person who sets up the website can be regarded as potentially committing a ‘wrong’ in any country where (it) can be seen, in other words in any country in the world.  It does not follow that he actually commits (a wrong) in every country in the world however.”  The test was held to be whether looking at the content of the website and at the commercial or other contexts in which it operated, its impact was significant in the relevant country.  Here the anticipated acts of the defenders using the domain name to set up a potentially overlapping business on the web were clearly aimed at the pursuer’s business in Scotland and so there was a threatened wrong there.

Secondly, the defenders argued that Bonnier had not proved that their “Business AM” trade mark was being infringed as there was no similarity or confusion.  Such confusion as there was inherent in the nature of the internet where similar domain names were commonplace.  Lord Drummond Young decided that the words “Business AM” were the “essence” of Bonnier’s trade mark and were how the newspaper was known by the public.  Despite the Registry Manual guidance to the contrary, the words “Business AM” as a whole were sufficiently distinct for registration.  The defenders’ acquiring of domain names very similar to it to be used in setting up an online business advisory service could potentially be seen as trade mark infringement.  The defenders’ actions could be argued to be using the same mark in a similar line of business thus potentially confusing the public and thereby infringing Bonnier's trade mark.  The judge also followed the One in a Million  case instrument of fraud doctrine, [1995] FSR 265.

Thirdly, the defenders argued that Bonnier had not proved that the public were likely to be confused into thinking the defenders’ websites were linked to Bonnier.  Again the judge held that it seemed likely that there was potential for confusion in the minds of the public about whether the defenders’ proposed service was linked to Bonnier's newspaper.  Given this and looking at the similarity of the names and the types of businesses and also at the fact that the first defender Mr Smith had allegedly registered other domain names similar to those of other companies and organisations, it seemed highly likely that the defenders may attempt to pass their websites and business off as linked to the business of Bonnier.  Lord Drummond Young therefore allowed the interim interdict to stand.

Copyright

By-passing copy-protection devices

Sony Computer Entertainment v. Paul Owen & ors  (Jacob J.; 23.1.02)

Jacob J. held that it was an infringement under section 296 CDPA to sell devices (called Messiah devices) which were able to by-pass specially designed codes used by Sony in its PlayStation 2 to prevent, among other things, copy games being played.  Jacob J. held that section 296 was not confined to devices which were only designed for circumventing forms of copy-protection.  Therefore, it did not matter that the Messiah device also enabled the PlayStation 2 to be used with non-infringing material.  It was sufficient that the Messiah device was designed to circumvent Sony’s copy-protection codes.

Obiter, Jacob J. stated that the fair dealing provisions in relation to computer programs allowing for certain copying, adapting or the making of backup copies (sections 50A and 50C) did not make use of the Messiah device lawful.  Indeed, he stated that although section 50A allowed the making of necessary backup copies, this did not include making copies of CDs carrying music or games.

Finally, the defendant was in breach of the court’s injunction by selling Messiah devices.  Although damages were not a remedy for contempt, under the CDPA, additional damages pursuant to section 97(2) could be and were awarded.

Damages

Blayney (t/a Aardvark Jewelry) v. Clogau St. David's Gold Mines Ltd & ors*  (Rix and Jonathan Parker L.JJ.; 16.7.02)

The appeal from the decision of Mr Kim Lewison QC, [2002] FSR 233, was allowed in part.  Damages for infringement of copyright in a ring design called “Lovers’ Twist” were increased from £18,500 to £36,280.

At first instance, Mr Blayney had only been awarded damages for lost profits on those sales made by the defendant which had been lost to him.  He had not been awarded a royalty on the defendant’s other sales because he had not discharged the burden of proof on him as to what royalty rate should be applied.  The Court of Appeal followed the patent cases on damages; and held that damages in relation to copyright were recoverable in respect of all infringements whether proved to have resulted in lost sales or not.  Although the evidence left the court short of information, the Court of Appeal noted that the defendant had conceded in its defence that the minimum royalty would be 2% of the claimant’s net selling price.  When this rate was applied to the figures and cross checked against the average profit to the claimant, it gave “too low” a figure.  Therefore, doing the best it could in the circumstances, the court set the rate at 5% of the claimant’s net selling price.