Reported Trade Mark Cases for July 2002

26 July 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 are available on the Patent Office web site www.patent.gov.uk/tm/decisions/index.htm.

Oppositions

































 BL No. Application Earlier Mark Comment
 O/361/01   

SPREDIOL

Pharmaceutical products (5)

   

SUPREDOL

Pharmaceutical products (5)
Opposition failed under s 5 (2)(b).  Medication, even if purchased over the counter, would be purchased with care and attention.  Even allowing for imperfect recollection, the average consumer would not likely be confused.
 O/366/01RADIO CITY Organisation of sporting events and parties (41)RADIO CITY Entertainment services for dance, theatre, musical and cinematic shows and performances (41) Opposition failed under ss 5(2)(a) and (b) as the services were considered different such that there would be no confusion.
 O/367/01  

RADIO CITY

Radio entertainment services, interactive information relating to radio (41)
  

RADIO CITY

Entertainment services for dance, theatre, musical and cinematic shows and performances (41)
Opposition succeeded in part only under s 5(2)(b). The specification, if cut down to interactive and on-line services, would be allowed.
 O/376/01  

KKK KASHMIR

Perfumes (3)
  

CAŠMIR

Perfumes (3)
Opposition failed under s 5(2)(b).  Without the benefit of evidence of how the application would be perceived by the public, the hearing officer considered KASHMIR to be the dominant element.  Although a place name, it would be protectable as it had no obvious connection with perfumes.  Even though there was some aural similarity between the marks and there might be circumstances in which confusion was possible, there was no likelihood of confusion.
 O/385/01  

MAXI-MIX (series)

Food processors (7)
  

MAGIMIX

Food processors (7)
Opposition succeeded under s 5(2)(b).  The opponent relied upon reputation and enhanced distinctive character in their mark, but failed to file evidence showing the perception of their mark in the relevant marketplace.  The only evidence was a small “survey” of salesmen who were not the relevant public, i.e. consumers.  The marks were therefore compared on the basis of normal and fair, but were nevertheless considered confusingly similar.

3-D Shape Marks

Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd (ECJ; C-299/99; 18.6.02)

Philips sued Remington for trade mark infringement in relation to its sale of a three‑headed rotary shaver.  Remington counterclaimed for revocation of Philips’ trade mark which depicted the face of a three-headed rotary shaver with the circular blade heads arranged in an equilateral triangle registered in class 12 for shavers.  The Court of Appeal ([1999] RPC 809) provisionally concluded that the mark was invalid under sections 3(1)(a), (b), (c) and 3(2)(b), equivalent to Articles 3(1)(a), (b), (c) and (e) of the Directive, and referred a number of questions to the ECJ.

Question 1: Is there a category of marks which is not excluded from registration by Articles 3(1)(b), (c) and (d) and Article 3(3) (acquired distinctive character over objection under Article 3(1)(b), (c) or (d)) which is nonetheless excluded from registration by Article 3(1)(a) (as being incapable of distinguishing the goods of the proprietor from those of other undertakings)?

Following its own decision in Windsurfing Chiemsee [1999] ECR I-2779, the ECJ observed that, just as distinctive character was one of the of the general conditions for registering a trade mark under Article 3(1)(b), distinctive character acquired through use meant that the mark also served to identify the product as originating from a particular undertaking and thus distinguishing the product from goods of other undertakings.  Article 3(1)(a), like Articles 3(1)(b), (c) and (d), precluded the registration of signs not meeting the criteria in Article 2 i.e. signs which were not capable of graphical representation or were not capable of distinguishing the goods or services of one undertaking from those of another.  Thus, it followed that there was no class of marks which had or had acquired distinctive character either by their nature or by the use made of them which was not capable of distinguishing goods or services within the meaning of Article 2.

Question 2: Is the shape of an article only capable of distinguishing for the purposes of Article 2 if it contains some capricious addition to the shape?

The ECJ held that assessment of registrability of shape marks was made on the same basis as for any other type of mark.  No capricious addition, such as an embellishment which had no functional purpose, was necessary in order for the mark to be registrable.

Question 3: Where a trader has been the only supplier of particular goods to the market, is extensive use of a sign, which consists of the shape of those goods and which does not include any capricious addition, sufficient to give the sign a distinctive character for the purposes of Article 3(3) in circumstances where as a result of that use a substantial proportion of the relevant trade and public:

(a)  associate the shape with that trader and no other undertaking;

(b)  believe that goods of that shape come from that trader absent a statement to the contrary?

Under the Directive, if a mark is refused registration under Article 3(1)(e), it cannot be registered by virtue of Article 3(3).  However, the ECJ held that if a trader had been the only supplier of particular goods to the market, extensive use of a sign which consists of the shape of those goods might be sufficient to give the sign a distinctive character under Article 3(3) in circumstances where, as a result of that use, a substantial proportion of the relevant class of persons associated that shape with that trader and no other.  However, it was for the national courts to decide whether the identification by the relevant class of persons of the product as originating from the particular undertaking resulted from use of the mark as a trade mark.

Question 4: 

(a) Can the restriction imposed by the words if it consists exclusively of the shape of goods which is necessary to achieve a technical result appearing in Article 3(1)(e)(ii) be overcome by establishing that there are other shapes which can obtain the same technical result; or 

(b) is the shape unregistrable by virtue thereof if it is shown that the essential features of the shape are attributable only to the technical result; or 

(c) is some other and, if so what, test appropriate for determining whether the restriction applies? 

The purpose of this provision was to preclude trade registration for technical solutions or functional characteristics. In relation to signs which consisted of shapes “necessary to obtain a technical result”, there was a risk that the exclusivity inherent in the trade mark right would limit the possibility of competitors supplying a product incorporating such a function, or at least limit their freedom of choice in regard to the technical solution they wish to adopt in order to incorporate such a function in their product.  The ECJ held that where the essential functional characteristics of the shape of a product were attributable solely to the technical result, Article 3(1)(e)(ii) precluded registration of a sign consisting of that shape, even if that technical result could be achieved by other shapes. 

Use As A Trade Mark

Arsenal Football Club plc v. Matthew Reed (A.G. Ruiz-Jarabo Colomer for the ECJ; C-206/01; 13.06.02) 

The claimant, the well-known football team, was the proprietor of the marks, ARSENAL, GUNNERS, a crest device and a cannon device, registered in many different classes (the “Marks”).  The defendant had traded for 31 years as a vendor of football souvenirs and memorabilia, particularly relating to Arsenal FC.  The defendant had a number of stalls near Arsenal’s ground at Highbury at which he sold unlicensed merchandise e.g. scarves bearing the Marks.  Laddie J. ([2001] RPC 46) was of the opinion that there was no trade mark infringement under section 10(1)/Article 5(1).  The defendant’s use of the Marks on the goods was not use as a trade mark because their use was not indicative of trade origin, being rather badges of support, loyalty or affiliation.  Since this area of the law was unclear, he referred two questions to the ECJ.

The A.G. made the following observations.  Firstly, under Article 5(1), a proprietor can object to the use of a sign identical to the mark when used on identical goods or services in the course of trade i.e. use of a trade mark as such.  But this is not an absolute rule, being subject to Article 5(5) which provides that conduct consisting in the use of a sign for purposes other than distinguishing a product or service from other products or services is not covered by Articles 5(1) to (4).  In interpreting this, the A.G. considered the function of a trade mark and the protection which should be given to it.  Looking at it from the point of view of ensuring competition in the internal market and also what was strictly necessary to protect the proprietor, he was of the opinion that protection should extend, not only to protecting marks as indications of origin, but also marks acting as emblems of prestige or guarantees of quality.  He believed that this was consistent with the way in which consumers in today’s market regard marks.  In most cases, consumers are unaware of who produces the goods they consume. The mark, instead, can take on a life of its own, making a statement about quality, reputation and sometimes a way of seeing life.

Therefore, in response to the first question, the A.G.’s opinion was as follows: 

1.  Under Article 5(1)(a), the proprietor of a registered mark is entitled to prevent third parties from using, in relation to the same goods or services, identical signs which are capable of giving a misleading indication as to their origin, provenance, quality or reputation.  Looked at from the other way around, it is a defence to claim that the defendant’s use of the proprietor’s mark does not indicate the origin of the goods or of the services or give rise to confusion over their quality and reputation. 

2.  Where such identity exists, there is a rebuttable presumption that the use by a third party of the trade mark is use of the mark as such. 

3.  The determination of when a third party uses a distinctive sign “as a trade mark” is a question of fact which falls to the national court to determine. 

The A.G. then considered what would amount to a defence under point (1) above.  Whether a mark was used as a trade mark did not depend upon the reasons why the consumer purchased the goods.  It would be irrelevant if the purchaser was an Arsenal fan who wanted to buy a T-shirt to demonstrate his loyalty, or a fan of a rival club who wanted to burn it.  Therefore, the debate had to shift to the person, not the proprietor, placing the goods on the market or providing the services i.e. in this example, the seller of the T-shirt. If, regardless of his motive, he attempted to exploit the mark commercially, then he could be said to be using it as a trade mark.  The decisive factor was that the persons for whom the goods were intended, acquired or used them because they incorporated the distinctive sign.  In the example of the football fans, both wanted to buy the T-shirt because of its identity with Arsenal’s trade marks.  

Thus, in response to the second question, the A.G. was of the opinion that the use which the proprietor is entitled to prevent third parties from making is use for the purposes of commercial exploitation.  This includes use of the distinctive signs which the undertakings which own football clubs have registered as trade marks for the purpose of marketing articles of clothing and other articles connected with the team. 

Written by Katharine Stephens and Rebecca Harrison.