Reported Trade Mark Cases for December 2002

15 December 2002

Katharine Stephens

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

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

Appointed Person: www.patent.gov.uk/tm/legal/decisions/index.htm

Appeals from Registry decisions




















































Case No.


 Application (and, where relevant, earlier mark)


 Comment

 O/146/02*Application for a declaration of invalidity in respect of mark ARMANDO POLLINI (luggage and clothing, 18, 25)Appointed person, Prof Annand, dismissed the appeal from the decision of the hearing office in which he refused the application under ss 47, 3(6) and 5(4)(a).  The allegation of bad faith was based upon breach of an agreement settling Italian litigation over the same mark.  This was held to be limited to Italy and, in consequence, there was insufficient to discharge the onus on the applicant.
 O/165/02*3-D mark in the form of a cylindrical tablet, consisting of two layers, the upper being green, the lower white (washing and dishwashing preparations, 3)Appointed person, S Thorley QC, refused to stay this appeal pending the decision of the ECJ in Henkel’s appeal from the CFI re its CTMs.  The public interest in achieving certainty with respect to this mark outweighed Henkel’s interest in maintaining the application.  Henkel admitted that, but for the ECJ’s decision in BABY DRY, the appeal would fail.  Mr Thorley held that ECJ’s decision in BABY DRY was not at variance with the CFI’s decision in relation to Henkel’s tablets – the question of whether a mark was registrable was one of fact and degree.  The application had been correctly refused under s 3(1)(b).
 O/198/02* 

TOMMY CASUAL (clothing, 25)

 

TOMMY SPORT, TOMMY JEANS (clothing, 25)
Appointed person, S Thorley QC, upheld the decision of the hearing officer.  The application was refused under s 5(2)(b).  The applicant/appellant had put in grounds of appeal but did not appear at the oral hearing, nor seek to withdraw the appeal prior to the hearing.  In consequence, he was ordered to pay a contribution towards the opponent/respondent’s costs of the appeal.  Mr Thorley stressed that if a party wished to withdraw an appeal, it should do so at the earliest possible time.
 O/201/02* Stylised mark comprising a line drawing of a pestle and mortar surrounded by a circle (goods which would be sold in a chemist’s shop, pharmacy services, 3, 5, 42Appointed person, S Thorley QC, upheld the appeal from the decision of the hearing officer who had held that the mark was not registrable under s 3(1)(b).  Since the hearing, the ECJ had given its decision in BABY DRY.  Mr Thorley referred to the question of whether the application was the normal way of referring to the goods/services (see para 42 of BABY DRY).  He did not think that this changed the approach to testing for distinctiveness, but conceded that on the facts of a particular case a mark which previously would not have been registrable might now be so.  Each case was one of fact and degree.  Although a pestle and mortar were indicative of pharmaceutical services, the representation of the mark was not the normal way of referring to such services.  Relevant to this decision was the stylisation of the mark – it was not merely a pestle and mortar.
 O/203/02* 

dELiA*s, DELIA’S (personal care goods, 3)

 

DELIAL (personal care goods, 3)
Appointed person, S Thorley QC, upheld the decision of the hearing officer that the application be refused under s 5(2)(b).  The parties had asked the hearing officer to consider the two marks comprising the application together, which he did.  Mr Thorley was concerned by this – if he had come to the view that the decision in relation to the DELIA mark was open for review, he would have treated the marks separately as they were different.
 O/208/02* 

OROPRAM (medicinal products for human therapy, 5)

SEROPRAM (medicinal preparations, 5)

Appointed person, Prof Annand, upheld the appeal against the decision of the hearing officer who had dismissed the opposition under s 5(2)(b).  The nature of any association the relevant public (doctors, pharmacists and the public at large purchasing over the counter pharmaceuticals) would make between the marks and the effect on the likelihood of confusion had not been taken into account.  The prefix of OROPRAM suggested oral delivery.  That coupled with the degree of similarity in the marks, the identity of the goods and the high distinctiveness of SEROPRAM led Prof Annand to the conclusion that the marks were confusingly similar.  In reaching this decision, she did not engage in the debate as to whether a higher or lower threshold needed to be reached before confusion could be established in conflicts been pharmaceutical marks.    For her part, she did not think that a different standard existed or needed to exist.
 O/218/02*TOOLS & MIDDLEWARE (magnetic data media, optical disks etc, 9)Appointed person, G Hobbs QC, dismissed the appeal.  The hearing officer had been right to refuse the application under s 3(1)(b) and the ECJ’s subsequent decision in BABY DRY did not alter that fact.  Referring to the Oxford Dictionary of Computing, it was clear that the application was not likely to trigger any origin specific perceptions in the mind of the average consumer.
 O/293/02* 

MIRAGAN (pharmaceutical preparations for the treatment of glaucoma, 5)

IMIGRAN (pharmaceutical preparations, 5)

Appointed person, Prof Annand, dismissed the appeal against the decision of the hearing officer who had held that the opposition under s 5(2)(b) failed.  The hearing officer had shown a reluctance to enter into the debate about the threshold of confusion needed in cases of pharmaceutical marks (see O/208/02 above).  He had correctly considered the likelihood of confusion in this case, not closing his mind to any relevant circumstances.
 

CFI

T-79/01 & T-86/01*
 KIT PRO, KIT SUPER PRO (parts for repairing drum brakes in land vehicles, 12)The CFI dismissed the appeal and upheld the decision of OHIM refusing the application under Arts 7(1)(b) and (c).  The distinctive character of the sign should be appraised, first, by reference to the goods and, second, by reference to the way in which the relevant public would perceive the sign – here, those working in independent repair shops and private individuals wishing to repair their vehicles, all being English speakers.  Although a compound sign had to be considered as a whole, it was relevant to consider each element in turn which, here, lacked distinctive character.  Absent concrete evidence that the sign was greater than the whole, this justified the conclusion that the sign lacked distinctive character.
 

CFI

T-130/01*
REAL PEOPLE, REAL SOLUTIONS (telemarketing, computer maintenance, computer services, 35, 37, 42)The CFI dismissed the appeal and upheld the decision of OHIM refusing the application under Art 7(1)(b).  The sign would be perceived by the relevant public (users of IT goods and services) primarily as a promotional slogan, based on its inherent meaning, rather than a trade mark.  It was noted that the sign, or very similar variations thereof, were commonly used in the IT industry.
 

CFI

T-91/01*
Figurative mark containing the abbreviation BioID (computer software and services, security services, telecommunications all relating to the identification of live organisms based on biometric characteristics, 9, 38, 42)The CFI dismissed the appeal and upheld the decision of OHIM refusing the application under Arts 7(1)(b) and (c).  The reasoning in this decision was very similar to that in joined cases T-79/01 & T-86/01 (see above).  The relevant public would understand the abbreviation BioID as meaning “biometrical identification”.  Therefore that element of the sign was not distinctive.  As the other elements were not distinctive and there was no evidence that the whole was greater than the sum of the parts, the application had been correctly refused.

Bad faith

LT Overseas Ltd v. A1 Trading Ltd* (Appointed person G Hobbs Q.C.; 10.6.02)

A1 applied for a declaration that the trade mark, DAAWAT registered in class 30 for inter alia biscuits, coffee, maize, rice and tea was invalid because it had been registered in bad faith under section 3(6).  Mr Allan James, the Principal Hearing Officer, held that the mark was invalid in respect of rice and similar products, but not in relation to biscuits, coffee and tea [2002] RPC 12, p. 297.  In so holding, he answered the following three questions in the affirmative:

1.  Did LT Overseas know, prior to making the application, that A1 used the mark in India? 

2.  Did LT Overseas have reasonable grounds to believe that A1 was intending to enter the UK market for rice under the mark? 

3.  Did LT Overseas apply for the mark in the UK in order to take unfair advantage of its knowledge of A1’s plans?

Mr Hobbs upheld Mr James’s decision and dismissed the appeal.

LT Overseas submitted that the evidence before Mr James was too inconclusive and unsatisfactory to come to allow him to come to a conclusion of bad faith.  Mr Hobbs noted that neither party had applied to cross-examine the other’s witnesses, a situation which was less than ideal in a case in which:  the registration was prima facie valid; bad faith had to be proved by A1; LT Overseas was entitled to a rebuttable presumption of innocence; the written evidence of the parties conflicted in various respects; and the documents selected for use as exhibits to the statutory declarations provided incomplete support for the statements made.  Although Mr Hobbs allowed in additional evidence (it corrected some of the contradictions), he held that Mr James was entitled to come to the conclusion which he had done.  

A1 submitted that Mr James’s findings were insufficient in point of law to justify a holding of bad faith.  Although Mr Hobbs was of the opinion that direction was needed from the ECJ on this point, he proceeded since both parties requested that he do so.

In Mr Hobb’s own decision in Demon Ale [2000] RPC 345, he referred to Royal Brunei Airlines Sdn Bhd v. Philip Tan [1975] 2 A.C. 378 (PC) in which an objective standard of dishonesty was adopted such that “if a person knowingly appropriates another’s property, he will not escape a finding of dishonesty simply because he sees nothing wrong in such behaviour”.  Since then, the House of Lords had considered the requirements for liability for acting as an accessory to a breach of trust (Twinsectra Ltd v. Yardley [2002] UKHL 12 (21 March 2002)).  By a majority, it was held that dishonesty for that purpose required knowledge by the defendant that what he was doing would be regarded as dishonest by honest people, although he should not escape a finding of dishonesty because he set his own standards of dishonestly and did not regard as dishonest what he knew would offend the normally accepted standards of honest conduct i.e. a combined objective/subjective test.

The question was whether this combined test applied to section 3(6).  The question arose because Mr James held that A1 thought that they were engaging in acceptable commercial behaviour, but that objectively, it was unacceptable.  

Mr Hobbs held that an applicant under section 3(6) did not have to satisfy the combined test.  Section 3(6) (and the equivalent provisions in the Directive and Regulation) existed for the purpose of ensuring that the opportunity to apply for registration was not abused by applicants claiming protection which they could not in good faith request or invoke at the date of application.  This approach was consonant with the approach of OHIM.  Section 3(6) therefore did not require conscious dishonesty of the kind envisaged by the House of Lords in Twinsectra.

It was further contended that A1 should not be held to have acted in bad faith because nothing in its dealings with LT Overseas could properly be said to restrict its freedom of action in any relevant respect.  This called into question the significance of the fact that the relative ground of objection in Article 4(4)(g) of the Directive was not available as a relative ground of objection in section 5 of the Act (i.e. “where and to the extent that … the trade mark is liable to be confused with a mark which was in use abroad on the filing date of the application and which is still in use there, provided that at the date of the application the applicant was acting in bad faith”).

Mr Hobbs therefore had to consider the question of whether conduct of the kind in this case was intended to be objectionable under the Act.  He noted that Article 4(4)(g), if it had been adopted, would add to the operation of section 3(6) and the “well known mark” objection in section 6(1)(c).  By not enacting this Article, Parliament appeared to confirm that no extra protection should be given to foreign interests, thus restricting section 3(6) to the domestic arena.  However, that did not restrict section 3(6) to matters arising merely between the applicant and the Registrar.  Objection could be taken in relation to matters arising between the applicant and third parties as well.  Thus, the expression “bad faith” was broad enough to cover conduct of the kind in issue in this case and could be taken to do so without depriving any other provision of the Act of its intended scope and effect.

3-D marks

Linde AG, Winward Industries Inc & Rado Uhren AG* (AG Colomer for the ECJ; C-53/01 to C/55/01; 24.10.02)

The Bundesgerichtshof referred questions in relation to three 3-D applications which had all been refused by the Deutsches Patentamt because they lacked any distinctive character under the national equivalent to Article 3(1)(b) of the Directive.  The applications were for the shapes of a fork lift truck, a torch and a wristwatch respectively.  The Bundesgerichtshof asked:

1.  whether a stricter criterion applies to 3-D marks under Article 3(1)(b) than to other marks; and 

2.  in the case of 3-D marks which depict the shape of the product, does Article 3(1)(c) have any significance independently of Article 3(1)(e)?  If so, when considering Article 3(1)(c), or alternatively Article 3(1)(e), must regard be had to the interests of the trade in having the shape available for use, so that in principle, registration is ruled out and is possible only in cases where trade marks meet the requirements of Article 3(3)?

In the AG’s opinion, following the ECJ’s decision in Philips v. Remington [2002] ETMR 89 p. 955, the first question should be answered “no”

In relation to the second question, the ECJ had made it clear in the Philips case that, whilst a trade mark’s function is primarily a guarantee of origin, other underlying considerations of general interest could be taken into account when considering registrability.  Thus, under Article 3(1)(e), shapes which are necessary to produce a technical result should be refused, because to hold otherwise would hinder competitors from offering products which included that function.

This reasoning could logically be extended to the remainder of Article 3(1)(e).  The purpose of excluding from protection 3-D marks that exclusively obey the nature of the product itself, produce a technical result or add substantial value, was in answer to the prevailing concern not to allow individuals to resort to trade marks to perpetuate exclusive rights over natural forms, technical solutions or aesthetic (ornamental) designs.  In line with this logic, such marks cannot acquire distinctiveness through use.  In so opining, the AG realised that many 3-D signs would not overcome the obstacle of Article 3(1)(e).  Only once the sign had been examined under Article 3(1)(e), would Article 3(1)(c) come in to play and the possibility of proving that the mark had become distinctive through use under Article 3(3).

Slogans

Société des Produits Nestlé  SA v. Mars UK Ltd (Rimer J.; 2.12.02)

Mr Allan James, the Principal Hearing Officer, refused the application to register HAVE A BREAK in class 30 in respect of chocolate, chocolate products, confectionery, candy and biscuits under section 3(1)(b).  He regarded the application as a slogan and noted that consumers would be aware that slogans were commonly used in trade for purely advertising purposes and therefore may not accept them as indications of source as readily as they would accept words, logos and figurative marks.  The mark would be seen by most consumers as an exhortation to “have a break”, which would be readily understood by the average consumers an exhortation to use the associated goods.

Rimer J. dismissed the appeal from this decision.  He held that, although the mark HAVE A BREAK was not referable to the relevant goods, or representative of their essential characteristics, it did not have the necessary character to be inherently distinctive.  In so holding, he noted that section 3(1)(b) had an independent role of section 3(1)(c), agreeing with Mr Hobbs’ comments on BABY DRY [2002] ETMR 3 in CYCLING IS… [2002] RPC 37 p.729.

Although Nestlé had made minimal use of the mark itself, it submitted that it had acquired distinctiveness through use of the slogan “Have A Break…Have A Kit‑Kat”.  Nestlé sought to show by way of a survey that a significant proportion of the public regarded use of “Have A Break…Have A Kit‑Kat” as an indication that HAVE A BREAK had trade mark significance.  Rimer J. held that the survey only went as far as showing that most of the respondents were only reminded of Kit-Kat when presented with the mark.  That association was insufficient to show that HAVE A BREAK had acquired distinctiveness.  Indeed, he criticised the survey as being somewhat pointless.  Since the mark had only been used independently to a minimal extent, the answer as to whether it could have acquired distinctiveness through use could only be a negative one.

1938 Act – Allowing new arguments 

S.T. Dupont v. E.I. du Pont de Nemours & Co. (Neuberger J.; 22.11.02; The Times 28.11.02)

The Hearing Officer, Mr Knight, dismissed the opposition under sections 9, 10, 11 and 12 of the 1938 Act to the application to registered DU PONT in class 25 for clothing.  The opponent (E.I. du Pont de Nemours) appealed the decision under sections 9, 10 and 11.  Rimer J. allowed the appeal holding that the surnominal objection under sections 9 and 10 (i.e. that Du Pont was a very common surname in France) succeeded and that there was a risk of confusion under section 11.  Rimer J. also held that the Hearing Officer should have allowed the surnominal objection to be pleaded, despite the fact that it was only first raised in the skeleton argument.  In the alternative, Rimer J. would have allowed the application to add the argument at the appeal.  Finally, he allowed the opponent to adduce evidence in support of the argument.

1.  The Hearing Officer had refused to allow the new argument because:

2.  the opponents were professionally represented; 

3.  the lateness of the application; and 

there was the likelihood of a need for an adjournment if he allowed the amendment.

Rimer J. noted that appeals under the 1938 Act were by way of rehearing.  If the appeal had been by way of a review, he might not have overturned the decision.  As it was, he did not give much weight to the hearing officer’s first point and, although the application was late, it should have been allowed since there was no need for an adjournment and the public interest was best served in allowing it to be made.  

Infringement - Domain Names

Musical Fidelity Ltd v. David Vickers (t/a Vickers Hi-Fi) (Rimer J.; 8.5.02)

Rimer J. gave summary judgment, holding that the defendant, by use of the domain namewww.musicfidelity.co.uk had infringed the trade mark MUSIC FIDELITY registered in class 9 for, inter alia, loudspeakers and compact disc players.  There was also a finding of passing off and copyright infringement.

The defendant had been an authorised distributor of the claimants until June 2001.  He had registered the domain name while still an authorised distributor, but without the claimant’s permission or knowledge.  The website accessed by the domain name was headed “Vickers’ Hi-Fi”, above which were the words “Welcome to the website of one Music Fidelity’s oldest retailers”.  Rimer J. held that this was part of a deliberate policy to divert internet users in the relevant market from the claimant’s website.  Use of the domain name would result in conveying to the internet user that the defendant still enjoyed a trade association with the claimant as one of its authorised suppliers and as such was obviously misleading and likely to confuse.  Consequently, there was a finding of passing off and trade mark infringement – there being no defence to the infringement action.

Mr Vickers was also infringing the claimant’s copyright by publishing the claimant’s solicitor’s letters on his website.  The claimant had at least equitable title in the works, entitling it to interim relief. As the claimant had given an undertaking to the Court with regard to the assignment of the legal title, it was also entitled to final judgment.

Infringement - Article 5(5) of the Directive

Robelco NV v Robeco Groep NV (ECJ; C-23/01, 21.11.02)

Robeco was a Dutch group which markets financial products and services.  It had registered ‘Robeco’ in 1987 as a word and figurative mark at the Benelux Trade Mark Office in class 36 (financial and monetary matters, including services relating to saving and investing).  Robelco was a Belgian company established in 1996 and its main activity involved property promotion (including purchases, sales, exchanges, leases, the supply of loans and the financing of property projects), particularly in the sphere of business parks and tailor-made projects.  Robeco brought an action against Robelco for infringement of Article 13A(1)(d) of the Uniform Benelux Law on Trade Marks (equivalent to Article 5(5)) which entitles a trade mark proprietor to oppose:

“any use, in the course of trade and without due cause, of a trade mark or of a similar sign other than for the purposes of distinguishing goods, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”

The national court asked whether the protection that member states could give to marks under Article 5(5) of the Directive afforded protection only against signs identical to the trade mark or whether it could also afford protection against signs similar to the trade mark.  Article 5(5) itself only refers to a ‘sign’ and does not state whether it is similar or identical.

The ECJ held that it is clear from Article 5(5) that the harmonisation brought about by Articles 5(1)-(4) of the Directive does not affect national provisions relating to the protection of a sign against use other than for the purpose of distinguishing goods or services.  It followed that reinforced protection of a trade mark’s distinctive character or reputation against certain uses of a sign, other than for the purpose of distinguishing goods or services, is not covered by Community harmonisation.  Member states in this context are free to “require that the sign and the trade mark be either identical or similar, or that there be some other connection between them”.

There is no reference in the judgment as to what the detrimental use of the mark (other than for the purpose of distinguishing goods and services) actually means, nor does the ECJ give any guidance as to examples of such use.

(Reporter’s note:  I am grateful to my colleague, Matthew Teather, for providing the above report.)

Presumption of innocence in criminal proceedings

Roger Sliney v. London Borough of Havering (Rose L.J., Hughes & Davis JJ.; 20.11.02; The Times 2.12.02)

Trade Marks Act 1994 section 92 (5) provides: “It is a defence for a person charged with an offence under this section to show that he believed on reasonable grounds that the use of the sign in the manner in which it was used, or was to be used, was not an infringement of the registered trade mark.”  In an interlocutory appeal during a prosecution, the Court of Appeal (Criminal Division) affirmed that section 92(5) imposed the legal burden of proof [of innocence] on the defendant.  In a reasoned judgment, the Court of Appeal also ruled that this reversal of the normal burden is compatible with the European Convention on Human Rights and the Human Rights Act 1998.

Rose L.J. stated that nowhere in section 92 was there indicated any requirement of dis honesty or bad faith on the part of the accused as an element of the of fence. The whole emphasis was on the unauthorised sale, for profit, of goods bearing a purported registered mark.

(Reporter’s note:  I am grateful to Michael Berkson for providing me with the summary of this case.)