Reported Trade Mark Cases for February 2002

23 February 2002

Katharine Stephens

Trade Marks

Decisions and opinions of the ECJ are available on http://curia.eu.int/en/jurisp/index.htm. All decisions of the Trade Marks Registry and the Appointed Person are available on the Patent Office web site www.patent.gov.uk/tm/legal/decisions/index.htm.












































































 BL No.


 Application


 Earlier Mark


 Goods/Services 1


 Comment


O/108/01


Device mark (Square with single piece of jigsaw at an angle in one quarter)

Device mark (4 piece square jigsaw with one piece at an angle) (consultancy in relation to employment agencies and personnel management (35))

Employment services (35)


Opposition succeeded under section 5(2)(b). It was accepted that the specifications for each mark were distinct, however they were sufficiently close as to be considered similar. On the basis of imperfect recollection it was likely the public would wrongly believe the respective services originated from the same or economically linked undertakings.


O/133/01


PURE PLATINUM


Nightclub entertainment services (41)


Application for revocation succeeded under sections 46(1)(a) and (b). The mark was the name of a nightclub in the US. Use on web site only related to the US premises and prices were only in US dollars. This did not of itself constitute use in the UK. Otherwise, simple creation of a web site would provide use in every country in the world on the basis that it could be accessed globally. Negotiations for franchises and efforts to find premises were preparations for use rather than actual use and were not proper reasons for non-use. It should be expected that such negotiations might take time and not be fruitful.


O/134/01


COLLEGIATE COLLIGIATE COLEGIATE


COLGATE


Cosmetics and pharmaceutical cleaning preparations for mouth, face, hand, skin and teeth (3, 5)


Opposition succeeded under section 5(2)(b) in relation to COLEGIATE on a mark for mark comparison and failed in relation to the remaining marks in the series.


O/139/01


REFRESHINGLY STRAIGHTFORWARD INSURANCE & device

 

Insurance services (36)


Application by opponent to cross-examine witness refused under Rule 55 of the Trade Marks Rules 2000. In order for cross-examination to have been appropriate, it was necessary that the opponent knew the answers to the questions they intended to ask. The purpose of cross- examination was to establish clear facts rather than to fish for facts to support a case.


O/146/01


AIRE ALPINO LD & device


MAGIC TREE & device


Air freshening products, deodorants (5)


Opposition succeeded under section 12(1) of the 1938 Act. The most significant aspect of the trade marks was their shape. The goods involved were low cost, potentially impulse, purchases. The opponent's mark was in the shape of a pine tree. The applicant's mark included pictures of pine trees and was therefore likely to be perceived as the abstract shape of a pine tree. On a side by side comparison, the marks were distinguishable. However, on the basis of imperfect recollection, confusion was likely to arise and the opposition therefore succeeded.


O/154/01


SARANTOS CHARDONNAY& device


SARAN


Alcoholic beverages (33)


On appeal to the appointed person (Thorley QC) opposition failed under section 5(2)(b). Although the marks were very similar, the marks were aurally dissimilar and there was no conceptual confusion. There was a difference between likelihood of confusion in a trade mark sense and a mere likelihood of association. The likelihood of confusion was not sufficient to merit the opponent's appeal being allowed.


O/158/01


THE SUPREMES


THE SUPREMES (unregistered)


Sound recordings, printed matter, clothing, entertainment (9, 16, 25, 41)


Opposition succeeded under sections 5(4)(a) and 3(6). The application by one member of a band which had split up more than 20 years previously was in bad faith. The earlier mark, although unused for a period of 8 years from 1977 to 1985, had been put back into use after that date by the opponents. The relevant date for considering goodwill was the date of the application. The opponents had maintained use of the mark from 1985 up to the date of the application (1995), and the applicant had evidenced no bona fide intention to use the mark.


O/164/01


DAWN


DAWN (unregistered)


Printed matter, newspapers (16)


Opposition succeeded under sections 5(4)(a) and 3(6). Although the opponent's mark, which had been used since 1947, was mainly used in Pakistan, the reputation of their paper extended worldwide among the Pakistani community in particular. The common law rights arose in the UK from circulation of the paper, Internet readership and advertising revenues generated from the UK. The slight but longstanding use of the mark was sufficient to allow the opposition to succeed.


O/179/01


VITALITY & device


VITALITE


Dietary supplements and vitamin products (5)


Opposition failed under section 5(2)(b). The opponent's mark did not have sufficiently distinctive character to prevent registration of applicant's mark. Superficial similarities were more than counterbalanced by differences and there was no likelihood of confusion on that basis.


O/212/01


ROY OF THE ROVERS


Protective clothing, printed matter and wide range of goods in classes 9 and 16


Application for revocation succeeded. Use of the mark sponsoring a football shirt in a cartoon strip was not use of the mark for the purposes of the Act for protective clothing and football shirts were not protective clothing in any event. Mere assertion of use by the registered proprietor was not sufficient to show use. The Registrar would normally expect details of turnover, profit from sales or similar.


O/218/01


AIRMASTER & device


AIRMASTER (unregistered


Air pressure stabilisers, relief vents and monitoring equipment (11)


Opposition succeeded under sections 3(1)(b), (c) and 3(6). The word part of the mark was prima facie acceptable and even more so in combination with the device. However, the applicant attempted to apply to register the mark prior to the rights to it being fully assigned and therefore the opposition under section 3(6) succeeded.

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

Revocation

David West t/a Eastenders v. Fuller Smith & Turner plc (Floyd Q.C.; 25.1.02)

Mr West applied to revoke the trade mark E.S.B. registered in class 32 for beer on the basis that, under sections 3(1)(b), (c) and (d), it had not been validly registered at the date of application in 1988. The application was unsuccessful in relation to bitter. However, the attack based on non-use in relation to non-bitter beers, e.g. lager, was successful since there was a distinct difference bitter and other beers.

This was the first case before the High Court to consider the decision in BABY DRY ([2001] CIPA 526). In relying upon the defence in Article 12 (section 11) when considering the absolute grounds for registration, the ECJ marked a departure from previous English law. From BABY DRY and also the DOUBLEMINT decision of the CFI [2001] ETMR 623, Mr Floyd noted:

  • sections 3(1)(b), (c) and (d) are not designed to exclude from registration marks which merely possess an indirect descriptive connotation: the words "devoid of any" in (b) and "exclusively" in (c) and (d) had to be given effect;

  • registerability might be assisted by the need for some mental activity in order to discern a reference to the quality or a characteristic of the goods;

  • likewise, uncertainty as to the precise nature of the reference to the quality or character of the goods will assist;

  • marks which only refer directly to the quality or character of the goods must be refused registration.

Mr Floyd held that E.S.B. would be seen as having trade mark meaning by the average consumer, despite its normal use in combination with the house mark "Fullers". Furthermore, it was prima facie distinctive. The consumer would have to work out what the letters stood for as it was not immediately apparent that they stood for Extra Special Bitter.

Mr West was unable to counter this finding by showing that E.S.B. had no distinctive character in 1988. Mr Floyd held that neither the evidence of others' use of E.S.B. (localised and limited) nor the expert evidence was sufficient to show that E.S.B. was generic of a particular kind or quality of beer in 1988. If he was wrong, the additional use of E.S.B. since 1988 might have displaced the assumption (contrary to his findings) that the mark was not distinctive in 1988.

Infringement

S.A. Société LTJ Diffusion v. SA SADAS (A.G. Jacobs for the ECJ; 17.1.02; C-291/00)

In a reference from the Tribunal de Grande Instance, A.G. Jacobs opined that the word "identical" in Article 5(1)(a) of the Directive had to be interpreted strictly. Thus the sign had to be identical to the mark without any addition, omission or modification other than those which were either minute or wholly insignificant.

This approach was consistent with the scheme of the Directive. Where there was identity of marks and goods, proving the likelihood of confusion was be superfluous. The line between what was identical and what was similar should take this into account. Thus, two marks would be identical where the average, well-informed, observant and circumspect consumer would not find any noticeable difference between the two. In making the comparison, the global impression created by the marks and the dominant and distinctive components should be taken into account as well as any differences between the marks.

The facts in the case were as follows. LTJ Diffusion's mark, ARTHUR, was a figurative mark written in a distinctive, handwritten form with a dot below the initial "A". LTJ Diffusion brought an infringement action against SADAS for use of ARTHUR ET FÉLICIE which did not reproduce the handwritten form of LTJ Diffusion's mark. A.G. Jacobs went as far as suggesting that reproduction of LTJ Diffusion's mark in the same distinctive script but without the dot under the initial "A" might be perceived by the average consumer as identical to the original (the change being minute and wholly insignificant). However, the use of a noticeably different script and/or the addition of another name might be seen as only similar (such changes, at least taken together, being substantial).

Written by Katharine Stephens and Rebecca Harrison.