Reported Trade Mark Cases for June 2002

23 June 2002

Katharine Stephens

Trade Marks

Decisions and opinions of the ECJ and CFI 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.

Applications/oppositions

































 BL No. Application Earlier Mark Goods/ServicesComment 
 O/331/01 HERMES Business consultancy, market research (35)Application for revocation succeeded under s 46(1)(b).  There had been no genuine use of the mark in relation to the services.  What use there had been was merely of the nature of intra company arrangements and as an adjunct to the business of selling luxury goods.
 O/332/01 HYDROCROP HYDRO & deviceChemicals for use in agriculture and horticulture, manure (1)Opposition succeeded under s 5(2)(b).  The applicant’s argument that their intended use was restricted to types of fertilisers not covered or sold by the opponents was not accepted.  The application contained no restriction excluding the opponent’s goods. Therefore, taking a notional and fair use of the applicant’s mark for the full range of goods covered in the specification, the marks were held to be similar.
 O/340/01ARMATIC & diagonal line in an incomplete square deviceDiagonal line in a square deviceMachines, games, credit and debit card services, lotteries, legal services and wide variety of goods and services in classes 9, 28, 36 and 42Opposition failed under ss 5(2)(b), 5(3) and 5(4)(a).  The word element of the application was “how the mark would be referred to and become known”, even though the device was represented before the mark.  The word was thereby detracting from any possible confusing similarity between the device parts of the marks. There was therefore no likelihood of confusion. In addition, the opponents did not have a reputation in the device alone because they had only used it in conjunction with group corporate names.
 O/344/01 FUNDERPANTS WUNDERPANTS Pants, knickers (25)Opposition succeeded under s 5(2)(b).  Neither mark had been used.  Given that the goods were identical, the marks were sufficiently aurally similar to give rise to a likelihood of confusion.

Unilever Plc v Société de Produits Nestlé (Mr MacGillivray; O/341/01; 9.8.01)

The applicant had applied to register two 3 dimensional marks for the shape of VIENNETTA ice-cream for ice cream products in class 30.  Both marks were in black and white.  The first mark had a black topping, the second had a white topping.  The hearing officer gave a combined decision in relation to both applications. 

The hearing officer rejected the opponent’s argument that the shape was generic for cakes, in that the product was based on the traditional Mille Feuilles where the pastry and cream was substituted by chocolate and ice cream.  He also rejected the argument by the opponent that this was an attempt by the applicant to extend the monopoly they had by virtue of the patented process for manufacturing the VIENNETTA ice cream product. 

However, only the mark with the black topping (indicating dark chocolate topping) was entitled to protection as that was the only one of the two marks in relation to which evidence of distinctiveness had been adduced and proved.  The applicant had conducted a survey in which the interviewees were asked if they recognised frozen dessert products in 4 photographs, one of which was the VIENNETTA product.  If they recognised the product as VIENNETTA, they were then told that they had “correctly identified 3 as VIENNETTA” and asked “why did you say that?”.  Over 50% of respondents gave VIENNETTA in their first answer. 

Therefore the opposition failed under sections 3(1)(a) and 3(2)(a).  In relation to section 3(2)(a), the shape of the mark did not result from the nature of the goods themselves.  In relation to the mark with the black topping, the opposition also failed under section 3(1)(b).  But, in relation to the mark with the white topping, the opposition succeeded under section 3(1)(b).  This decision has been cross appealed to the High Court and Mr Justice Jacob has indicated that a reference to the ECJ may be necessary.

Appeals against office decisions

Nature of appeals/Introduction of new evidence

Joop v. Canadelle Ltd (Pumfrey J.; C/65/01; 28.11.01)

Pumfrey J. upheld the decision of the hearing officer (O/358/01).  The hearing officer held that the opposition to the application WUNDERKIND in class 25 succeeded in part under section 5(2)(b) in the light of the marks WONDERBRA, registered in class 25 for bras and swimwear, and WUNDERPANTS, registered in class 25 for pants and trousers.  The application’s specification was modified to exclude those goods for which the opponent’s marks were registered.

Pumfrey J. held that the appeal from the Registry was by way of review, not a rehearing, thus adhering to his decision in South Cone v. BessantREEF trade mark [2002] RPC 19. (This is to be contrasted to appeals from the decision of the Comptroller of Patents which are rehearings.)  In consequence, since the decision of the hearing officer in this case was neither irrational nor obviously wrong, but for the application to adduce new evidence, the appeal would be dismissed. 

The old law in relation to adducing new evidence on appeal had been overturned by CPR 52.11. Permission to adduce new evidence was still needed, but “special grounds” were not. Thus, the principles in Ladd v. Marshall [1954] 1 WLR 1489 were still relevant, not as rules, but as matters which must necessarily be taken into account by the court when deciding to exercise its discretion. Pumfrey J. therefore had regard to the Ladd v. Marshall factors as altered for appeals from the Registry (see Hunt-Wesson’s Application, SWISS MISS trade mark [1996] RPC 233). The application to adduce further evidence went to the question of how WUNDERKIND would be regarded by the average consumer.  Pumfrey J. held that the new evidence should not be adduced because, most importantly, it would be inconclusive and would not have affected the hearing officer’s decision.

Etat Française Representee par la Ministere de l’Agriculture de la Foret v. Bernard Matthews plc (Lawrence Collins J.; 18.2.02)

This was an application to allow in further evidence following the decision of the hearing officer, dismissing, under section 3(6), the opposition to the application to register LABEL ROUGE.  The opponent, the French Ministry of Agriculture, stated that the mark had been used as a quality mark since 1960 and argued that the application to register it was a “spoiling tactic” and that Bernard Matthews had no motive to use the mark.  In coming to his decision (O/397/01), the hearing officer held that there was nothing to establish that Bernard Matthews knew of the mark prior to making the application and therefore rejected the “spoiling tactic” submission.  The application to adduce further evidence went to this question of knowledge, including information that a Bernard Matthews representative had attended a conference in 1990 where there was a presentation on the LABEL ROUGE scheme.  In allowing the application to adduce the new evidence, Mr Collins followed Pumfrey J.’s decision in Joop v. Canadelle (see above). The new evidence would have had an important influence of the result of the hearing.  Although it could possibly, with hindsight, have been obtained earlier, the opponent had used reasonable diligence when making enquiries about attendees at the 1990 conference.

Stay of appeal

American Home Products Corp. v. Knoll Aktiengesellschaft (Kitchin Q.C.; 8.2.02)

The application for a device in class 5 in respect of pharmaceutical preparations for use in hormone replacement therapy was refused by the Registrar under section 5(2)(b) in the light of Knoll’s device mark, also registered in class 5 for pharmaceutical preparations (O/354/01).  Both devices, although different, were a stylistic representation of a moving person against a circular background, with the limbs and body of each person consisting of single lines and their heads solid dots.  On appeal, Mr Kitchin held that the hearing officer had approached the matter correctly and he rejected all AHP’s criticisms of the decision. 

AHP commenced the hearing of the appeal by applying for a stay pending the outcome of invalidity proceedings against Knoll’s mark which it, AHP, had commenced just under one month prior to the hearing of the appeal.  Mr Kitchin held that he had jurisdiction to stay the proceedings, but to do so in this case would be an incorrect use of his discretion.  His reasons for rejecting the application were:

  • There is a general principle that the parties must bring before the court the case they wish to rely upon so that litigation is carried out expeditiously and fairly.  The proceedings for invalidity could have been commenced earlier and the application made before the Registrar for a stay prior to the hearing of the opposition. 

  • Secondly, AHP could provide no satisfactory explanation for the delay.  Indeed, it looked as if a deliberate decision had been made to fight the case before the Registrar as had been done. 

  • Thirdly, the stay would result in further expense and delay. 

  • Fourthly, although there might be some prejudice to AHP if, on appeal, the Registrar’s decision was upheld (because AHP would have to apply again for the mark, thus losing its priority date), AHP had brought it upon itself.  Thus AHP would have to bear the consequences of its actions.

Bad faith/Broad specifications

Wyeth (formerly American Home Products Corp) v. Knoll Aktiengesellschaft (Neuberger J.; 9.5.02)

The background to this application is noted in the above summary. Knoll’s device mark was registered in classes 5, 16 and 41.  Key to this dispute was the registration in class 5 for “pharmaceutical preparations and substances ... dietetic substances adapted for medical use …”.  Wyeth claimed that, with the exception of pharmaceutical preparations and substances for the treatment of obesity, the registrations were invalid under sections 3(6) and 32(3) because Knoll had had no intention of using the mark in respect of any other goods or services at the date of the application.  Wyeth based its claim on evidence which Knoll had given in the opposition proceedings (see above) that it intended to use the mark primarily on obesity products but that, if it proved successful, it might use it with other pharmaceutical products.  Knoll applied to strike out the claim and was successful in relation to the key class 5 products.  Neuberger J. held that it was not appropriate at the summary stage to decide on the other products/services.

Neuberger J.’s reasoning was as follows.  Just on the wording of section 3(6) and the evidence, he had considerable difficulty in accepting that Knoll had acted in bad faith.  Knoll had had a firm intention to use the mark in relation to products for the treatment of obesity and contemplated that it might use the mark on other products; the products on which it intended to use the mark fell within the specification; and it had not claimed all products in class 5.  Therefore, as a matter of ordinary English, it appeared impossible to reasonably argue that Knoll had been inaccurate in its statement made under section 32(3), let alone that it had acted in bad faith. The precise meaning of “bad faith” could vary depending on the linguistic context and purpose but involved a degree of dishonesty or something approaching dishonesty.  To say that an applicant intended to use a mark in connection with “pharmaceutical substances” when only intending to use it with a specific category of pharmaceutical substances did not amount to a want of good faith.  There was no requirement in the Act that the intention concerned had to apply across the whole range of goods and services in the specification. Neuberger J. also noted that there was no equivalent to section 32(3) in the Directive and therefore, without considering the validity of section 32(3), he stated that he should not be too eager to revoke the registration under this provision. 

Appeal from OHIM

DaimlerChrysler AG v. OHIM* (CFI; T-356/00; 20.3.02)

The refusal by the hearing officer under Articles 7(1)(c) and (b) of the application for CARCARD in classes 9, 37, 38, 39 and 42 was upheld by the Board of Appeal, but annulled in part by the CFI.  The CFI held that a sign’s descriptiveness must be assessed individually by reference to each of the categories of goods or services listed in the application.  Therefore, for those goods/services which had a direct connection with the operation and use of a car, registration of a mark meaning “a card for or relating to a car” could not be allowed.  However, registration was allowed for inter alia stationary and transportable data processing equipment (class 9), arranging and processing of the payment of charges, namely telephone charges (class 36) and arranging of services and guarantees within class 37.

Infringement

Hölterhoff v. Freiesleben* (ECJ; C-2/00; 14.5.02)

This was a reference from the Oberlandesgericht Düsseldorf, which held as follows: Dr Freiesleben owned two German trade marks: SPIRIT SUN and CONTEXT CUT registered in respect of diamonds and precious stones respectively. In selling gems to a third party, Mr Hölterhoff orally described gems produced by his own cutter as the “spirit sun cut” and in the “context cut style”.  There was no use of either trade mark on any packaging, invoice or other document related to the gems sold that could have misled a third party. 

  • The ECJ held that where:

  • the defendant referred to the trade marks in the course of commercial negotiations with a potential customer; 

  • the reference to the trade marks was made purely for descriptive purposes in order to reveal to the potential customer the characteristics of the products offered for sale; and 

  • the reference to the trade marks could not be interpreted by the potential customer as indicating the origin of the product,

there was no infringement under Article 5(1)(a).  The use of the trade mark by the defendant did not infringe any of the interests which Article 5(1) was intended to protect.  The court did not go on to consider any further what constituted “use of a trade mark” within Article 5(1).

Davidoff & Cie SA v. Gofkid Ltd* (A. G. Jacobs for the ECJ; C-292/00; 21.3.02)

DAVIDOFF is registered in Germany in classes 14 (jewellery etc) and 34 (cigars etc).  Davidoff sought to annul Gofkid’s mark, DURFFEE, also registered in classes 14 and 34. The Bundesgerichtshof, in making the reference to the ECJ, considered the two marks to be similar (thus disagreeing with the appeal court below it), but that further findings of fact were necessary in order to determine whether there was a likelihood of confusion.

In answer to the Bundesgerichtshof’s questions, A.G. Jacobs expressed the following opinion:

  • Articles 4(4)(a) and 5(2) (use which, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the earlier mark) only relate to situations where the goods/services in question are not similar; 

  • The grounds specified in Articles 4(4)(a) and 5(2) are exhaustive and may not be supplemented by national rules protecting well-known marks e.g. unfair competition rules.

A.G. Jacobs did not consider that there was a gap in protection between, on the one hand, Articles 4(1) and 5(1) and, on the other, Articles 4(4)(a) and 5(2).  His reasoning was as follows:  The normal protection conferred on trade marks is against the existence of a likelihood of confusion.  Articles 4(1) and 5(1) provide for protection over a continuum, progressing from absolute identity of marks and goods/services, to similarity of both.  In this scheme, protection cannot be extended to situations where there is no similarity at all between marks however similar the goods/services.  In contrast, where there is similarity between marks, there may be instances where it is justifiable to extend protection to dissimilar goods/services.  Such instances occur where a mark has a reputation in itself, as opposed to being just a guarantee of origin.  It is these marks with which Articles 4(4)(a) and 5(2) are concerned.  Thus, there is no gap in the protection afforded to marks with a reputation. Rather, where it extends beyond the point of similarity of products (where protection for other marks ceases), the criteria for protection changes.

A.G. Jacobs was further of the opinion that the ECJ’s decisions conferring broad protection under Articles 4(1) and 5(1) on marks with particularly distinctive characters reinforced the bridge over what otherwise might be perceived as a gap. A strict interpretation of Articles 4(4)(a) 5(2) was consistent with the legislative intent.  It would also provide a fairer protection for defendants than would be afforded if the lines between Articles 4(1) and 5(1) and Articles 4(4)(a) and 5(2) were blurred.

The Rugby Football Union (“RFU”) & ors v. Cotton Traders Ltd (Lloyd J.; 26.3.02)

The action related to the rose design (the “English Rugby Rose”) which, between 1920 and 1998, the English rugby team had worn on their white jerseys (the “classic English rugby jersey”).  Between 1991 and 1997, the defendant had been the official licensee of the RFU.  Thereafter, another company was appointed exclusive licensee and both the rose and strip were redesigned. After termination of the agreement, the defendant manufactured and sold classic English rugby jerseys.  The claimants brought an action for breach of agreement, infringement of a CTM and passing off.  The claims failed.

The licence agreement between the RFU and the defendant had been superseded by a termination agreement.  The defendant was not in breach of this termination agreement because, although there was a provision that the defendant would not, in future, manufacture “products”, the classic English rugby jersey did not fall within the definition of “products”.

The defendant attacked the validity of the CTM under Articles 7(1)(a) to (d) ofthe Regulation. The CTM, registered in classes 25, 41 and 42 comprised a rose design which differed from the English Rugby Rose.  Lloyd J. placed no weight on the distinction.  Under Article 7(1)(a), the case turned on the public’s perception of the rose design which, in turn, was affected by the use made of it. Survey evidence was submitted.  This was open to criticism.  In particular, the judge criticised the use of the word “logo” in questions such as “what does this logo mean to you?” because some of the witnesses understood the word “logo” to mean “trade mark”.  Some of the questions were also leading.  However, Lloyd J. drew the following conclusion from the survey.  Unprompted, the rose design was primarily taken by members of the public to be a national emblem or symbol denoting the English rugby team.  Any association with the RFU was much less widespread and of secondary significance.  Therefore, the defendant succeeded under Article 7(1)(a) and (b).  The sale of the classic English rugby jerseys had not been stopped by the RFU and therefore it had become customary in the trade to use the rose by way of association with the English rugby team.  Article 7(1)(d) was therefore satisfied.  Article 7(1)(c) was not satisfied because the use of the rose was not an indication showing the sale of jerseys as historically worn by the English team, it was an inherent part of the replication of the historic strip.  Consistent with this finding, the defendant did not satisfy Article 12(b). Finally, the claim in passing off failed because the English Rugby Rose was not distinctive of the RFU.

Criminal proceedings

R v. Johnstone & ors (Tuckey L.J., Pumfrey and Burton J.J.; 31.1.02)

The Court of Appeal held that the defences available in a civil trade mark actions were also available in criminal proceedings.  The Court of Appeal’s reasoning was as follows.  It could not be said that section 92 applied only to cases relating to counterfeit goods.  Therefore, unless the civil defences applied to criminal proceedings, section 92 would embrace behaviour which could not be the subject of a successful civil action.  This was not what Parliament intended.  Section 92(5) (“it is a defence for a person … to show he believed … that use of a sign … was not an infringement of a registered trade mark”), presupposed that the defendant’s illegal unauthorised use amounted to a civil infringement.  In consequence, unless there was a civil infringement, there could be no criminal offence.  In order to stem any possible flood following this decision, the Court made the following observations:

  • The phrase “use in the course of trade” had a wide meaning. 

  • There were strong reasons for supposing that in every bootlegging case use of a registered trade mark consisting of the name of the performer on a disk or tape would be a trade mark infringement since it indicated the origin of the performance (thus preferring the minority judgment in the Australian case Musidor BV v. Tansing (1994) 123 ALR 593). 

  • The defences in section 11(2) were negatived by a showing of dishonesty. 

  • There would be few cases where the question of “trade mark use” would be an issue.  But if it were, it would be a question of fact to be left to the jury. 

  • The validity of the trade mark could be challenged, but not in the criminal court.  An application to stay the criminal proceedings may be necessary pending the outcome of any decision of the Registry or High Court.

Further, section 92 (5) could act as a defence.  However, where the defendant had not paid any attention to the existence of the mark, or if he had been reckless as to its existence, or if he had thought (mistakenly) that it was not an infringing manner of use, he could not bring himself within section 92(5) (following R v. Torbay Council ex p. Singh [1999] 2 Cr App R 451 and R v. Keane CA, 18.2.00, unreported).  The burden on the defendant under section 92(5), being an evidential burden and not a legal onus to prove the defence beyond the balance of probabilities, was compatible with the European Convention on Human Rights.

Had the defences in civil proceedings not been available to a defendant in criminal proceedings, there would have been a possibility of inconsistency between section 92 and the Directive.  As it was, there was no such incompatibility and the penalties were proportionate to the seriousness of the offence.

Written by Katharine Stephens and Rebecca Harrison.