Reported Trade Mark Cases for November 2002

16 November 2002

Katharine Stephens

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


High Court:

Appointed Person:

Appeals from Registry decisions (OHIM and UK)

Ref no.  T-36/01*
Application (and where applicable, earlier mark) a design or pattern conveying the impression of fur applied to the surface of goods (glass building materials e.g. shower walls, kitchen shelves; 11, 19, 21)
Comment The CFI upheld decision of the Board of Appeals in so far as the Board held that the mark lacked distinctive character under Art 7(1)(b).  The design was intended to be applied to the whole of the surface of the area of the glass rendering it opaque.  There was nothing to attract a consumer’s attention to it as an indication of origin or to make it memorable.  However, the Board’s decision was annulled because it had not allowed the applicant to submit argument relating to the evidence of use and on which the Board had based it decision.

Ref no. T-360/00*
Application (and where applicable, earlier mark) UltraPlus (plastic ovenware; 21)
Comment  The CFI annulled the decision of the Board.  The sign evoked, rather than designated, the character of the goods under Art 7(1)(c).  Under Art 7(1)(b), the sign comprised a syntactically unusual juxtaposition of words, was instantly memorised and was not descriptive.  The examples of third party use given by the Office related to plastic goods in general and did not constitute the reference sector of plastic ovenware.

Ref no. T-173/00*
Application (and where applicable, earlier mark)  The shade of orange with reference HKS7 (seeds, agricultural products, plant cultivation consultancy services therefor; 7, 11, 31, 42)
Comment The CFI annulled the decision of the Board in relation to the class 42 mark, but dismissed the remainder under Art 7(1)(b).  Colours and colour combinations per se could constitute trade marks.  In this case, coloured coatings for seeds were commonly used to show e.g. that they had been treated.  Therefore, the relevant pubic, although specialists, would not think that the colour indicated commercial origin of the seeds.  Similar points were made re the class 7 and 11 goods.  However, in relation to the class 42 services, since colour did not attach to the goods themselves, it could not be said to be decoration, but indicated commercial origin.

Ref no. T-104/01*
Application (and where applicable, earlier mark) 

FIFTIES (denim clothing; 25)


MISS FIFTIES + device (clothing; 25)

Comment The CFI upheld the Board’s decision – the opposition was successful under Art 8(1)(b) as the goods were identical and the marks, taken as a whole, were similar.  The device element in the earlier mark was held to be secondary to the dominant element, MISS FIFTIES.  Since the earlier mark was registered in Spain, the relevant public was made up of average consumers in Spain.  The Board had held that the average consumer would not regard the English word “fifties” as descriptive and unremarkable.  In contrast, the Court held that it did not matter whether the average consumer understood the word.  Such a person would simply regard the term “miss fifties” as a feminine variant of an English word.

Ref no. T-388/00*
Application (and where applicable, earlier mark)  

ELS (books, educational services; 16, 35, 41)


Figurative mark containing ILS (data carriers, printed materials, running of correspondence courses; 9, 16, 41)
Comment The Board, rejecting the opposition under Art 8(1)b), held that (1) certain of the opponent’s evidence of use could not be admitted as filed late (2) that the evidence before it showed the opponent had only used its mark in relation to the class 41 services (3) there was no likelihood of confusion between the marks.  The CFI upheld the Board on points (1) and (2) and annulled the decision in relation to point (3).  The goods and services were similar, as were the marks.  Since the target public were German, the earlier mark being registered in Germany, they would pronounce “I” and “E” similarly.

Ref no.  T-388/00*
Application (and where applicable, earlier mark)  

ELS (books, educational services; 16, 35, 41)


Figurative mark containing ILS (data carriers, printed materials, running of correspondence courses; 9, 16, 41)

Comment The Board, rejecting the opposition under Art 8(1)b), held that (1) certain of the opponent’s evidence of use could not be admitted as filed late (2) that the evidence before it showed the opponent had only used its mark in relation to the class 41 services (3) there was no likelihood of confusion between the marks.  The CFI upheld the Board on points (1) and (2) and annulled the decision in relation to point (3).  The goods and services were similar, as were the marks.  Since the target public were German, the earlier mark being registered in Germany, they would pronounce “I” and “E” similarly.

Ref no. O/45/02*
Application (and where applicable, earlier mark) 

TORRELONGARES + device (wine; 33)


TORRES (wine; 33)

Comment The appointed person, Prof Annand, upheld the decision of the hearing officer under ss 5(2)(b) and 5(4)(a).  The marks were not confusingly similar and the opposition was dismissed.

Ref no.  O/207/02*
Application (and where applicable, earlier mark) 

TORREMAR + device (wines, spirits; 33)


TORRES (wines, brandy; 33)
Comment The appointed person, Mr Hobbs, upheld the decision of the hearing officer under ss 5(2)(b) and 5(4)(a).  The marks were not confusingly similar and the opposition was dismissed.

Ref no. O/68/02*
Application (and where applicable, earlier mark)  



POLO + device (perfumery; 3)
Comment The appointed person, Mr Kitchin, upheld the decision of the hearing officer under s5(4)(a) (s5(2) was not under appeal).  Although the marks both contained the word POLO and the devices were similar, taken as a whole, the marks were dissimilar.  The opposition was therefore rejected.

Ref no.  O/69/02*
Application (and where applicable, earlier mark) 

DONUTS & COMPANY + device (bakery products, snack bar services; 30, 32, 42)


DUNKIN’ DONUTS (unregistered)

Comment The appointed person, Mr Kitchin, upheld the decision of the hearing officer who dismissed the opposition under ss3(6) and 5(4)(a).  The applicant had held a franchise under the opponent’s mark which then terminated.  He then applied to register the mark.  Because there was no intention to deceive, and the marks were not similar enough to give rise to a likelihood of confusion or deception, the bad faith objection could not succeed.  Mr Kitchin echoed the having officer in criticising attempts to lower the requirements under ss5(2) and 5(4)(a) by opponents basing their case on s3(6) because the marks bore some similarities.

Colour marks

Linertel Groep BV v. Benelux-Merkenbureau* (A.G. Leger for the ECJ; C-104/01; 12.11.02)

The question asked of the A.G. by the Hoge Raad was whether a single colour, without any defined shape or contour, could constitute a trade mark for certain products and services within the scope of the Directive.  If so, what, if any, conditions apply?  In this case, the mark in issue comprised the colour “orange” for telecoms products and services in classes 9, 35 and 38.

The A.G. reached the conclusion that Article 2 should be interpreted such that a colour in itself, without shape or contour, does not constitute a sign that is capable of sufficient graphic representation to distinguish the products and services of one enterprise over those of others.

This opinion was reached having considered a number of factors.  The A.G. stated that colour is a notion understood on the basis of intuition, but it is difficult to define.  However, it is understood that colour is a sensation that is perceived through the visual senses alerting the brain of the effect of light on a given surface.  It does not have a pre-existing objective reality.  Colour depends, in part, on the nature and intensity of the light and, in part, on the visual senses of the observer.  Colour is an object that changes according to light and the distance from which it is observed and equally it may vary according to individuals.  

A number of aspects of the Directive were considered but the key point was Article 2.  Article 2 sets out certain features that trade marks may contain, namely, words, drawings, letters, figures, the shape of a product or its condition; colour has no such autonomous existence.  The interpretation given to Article 2 is that it excludes categories of signs or indications that are intrinsically incapable of have a distinctive character and colour falls within such category.

Use as a trade mark

Arsenal Football Club plc v. Matthew Reed* (ECJ; C-206/01; 12.11.02) 

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 question for the ECJ was whether Article 5(1) entitled the trade mark proprietor to prohibit any use by a third party in the course of trade of an identical mark on identical goods, or whether the use by the third party must affect or be liable to affect one of the specific functions of the trade mark.  The ECJ held that the exclusive right under Article 5(1) conferred on the proprietor the latter right.  Not all use would infringe the trade mark – see for example the uses allowed under Article 6 and the descriptive use made of the mark in the Hölterhoff case [2002] ECR I-4187.

Mr Reed’s use of the sign was such as to create the impression that there was a material link in the course of trade between the goods concerned and the Arsenal football club.  The disclaimer on Mr Reed’s stall did not affect this finding.  Moreover, Mr Reed’s use of the sign was liable to jeopardise the guarantee of origin constituting the essential function of the trade mark.  Therefore, once it had been found that use of the sign was liable to affect the function of the trade mark and that the trade mark proprietor must be able to prevent this, it was immaterial in the context of that use, that the sign would be perceived as a badge of support for, or loyalty, or affiliation to the proprietor of the mark.

Revocation for non-use

Clintec Benelux SA v. Cernitin SA* (Appointed Person G. Hobbs Q.C.; 29.10.01; O/475/01; [2002] RPC 585)

The hearing officer had allowed the application to revoke, for non-use, the trade mark CERNIVET registered in class 5 for pharmaceutical and veterinary substances.  Mr Hobbs upheld that decision.  The evidence failed to show that there had been any use of the trade mark in connection with the products in the specification.  Further, there had been no “proper reasons” for non-use (or “obstacles” to use – Article 19(1) TRIPS).

Mr Hobbs held that loss of protection for non-use was to be regarded as the rule and not the exception.  Therefore, in the absence of an ECJ decision on the interpretation of “proper reasons”, Mr Hobbs would only say that the 5 year rule should not be relaxed in cases where it was not unreasonable to expect genuine use of the trade mark to have occurred.  Mr Hobbs rejected the suggestion that sales had not been made because full regulatory approval had not been granted, the transitional regulatory approval being insufficient to win consumer confidence.  Sales of CERNIVET products had not been made in the UK because it had not been commercially viable.

In this case, the counterstatement had not been filed “by the proprietor” (Rule 31(3)) as the proprietor, a company, had ceased to exist and the company filing the counterstatement had taken no steps to register itself as the proprietor.  Therefore, although this was not part of the application before Mr Hobbs, he noted that the application for revocation was liable to be granted for lack of a duly filed counterstatement (Rule 31(4)).

Dialog ABC Ltd v. Publicis Ltd (Appointed Person D. Kitchin Q.C.; O/84/02; 15.2.02)

The hearing officer held that the application for revocation failed in relation to the mark DIALOG registered in class 35 for, inter alia, advertising services.  The decision was upheld on appeal.  Firstly, use of the mark, THE DIALOG AGENCY, was use of the mark in a form differing in elements which did not alter the distinctive character of the mark under section 46(2).  Secondly, the mark THE DIALOG AGENCY, took place with the consent of the proprietor.  The applicant for revocation submitted the meaning of “consent” in section 46(1) must have the same meaning as consent in Article 7(1) of the Directive following the Zino Davidoff case [2002] RPC 403 in that it must be an unequivocal demonstration of consent.  Mr Kitchin was sympathetic to this submission, but came to the conclusion that he did not have to reach a final decision on this point.  However, he was prepared to assume that consent must be unequivocally demonstrated.  Although the decision of the hearing officer could be criticised, he had come to the right conclusion in the light of the clear evidence given on behalf of the proprietor on the one hand and the user of the mark on the other, that consent, although unwritten, had been given.  Finally, the applicant’s argument that the mark had only been used for public relations services and not in relation to the whole width of the specification, failed on the evidence.

Ansul BV v. Ajax Brandbeveiliging BV* (A.G. Colomer; C-40/01; 2.7.02)

Ansul and Ajax are both Dutch entities operating in the fire protection market.  Ajax is a subsidiary of the German company, Minimax GmbH.  The history of the trade mark MINIMAX is as follows.  After World War II, the rights in the trade mark were appropriated “as goods of the enemy” and became divided between the predecessor of Ansul (in The Netherlands) and, in Germany, Minimax GmbH.  In 1971, Ansul registered MINIMAX in the Benelux for, inter alia, fire extinguishers.  In 1992, Ajax became the owner of and used the composite mark MINIMAX in The Netherlands.  In 1995, Ajax applied to revoke Ansul’s 1971 registration for non-use.  The Hoge Raad referred various questions to the ECJ on the issue of genuine use and, in particular, on the question of whether Ansul’s activities could qualify as true exploitation of the trade mark (in the sense of Article 12).

The A.G. referred to his decision in Arsenal [2002] ETMR 82.  He was in no doubt that the two legal notions of “use as a trade mark” (Article 5) and “genuine use” (Article 12) were the same.

The A.G. stated that trade mark registries are not simply storage houses where one waits, in the pretence of using trade marks and which are invoked only with speculative, money-making, intentions.  The registries should, in contrast, reliably reflect the true state of affairs with respect to the marks used by businesses to distinguish their products and services within the market place.  Only those trade marks which were going to have an economic role should be registered.

In the view of the A.G., nominal use of a trade mark is insufficient.  Similarly, fictional, formal or rhetorical use is insufficient where such use is designed simply to avoid revocation for non-use.  Teleological interpretation of Article 12 must be used, thereby taking account of the functions of a trade mark; whether it allows the proprietor to distinguish his products and services within the marketplace; and whether the proprietor’s trade mark is being used to generate an outlet in a free, open market.  Genuine use in the sense of Article 12 means “sufficient” use or “suitable” use or “appropriate” use.  It must consist of the exploitation of the mark in relation to the products for which it has been registered.  The use of the mark must be that which is authorised and for which it is registered.  There is an obligation to use the mark publicly.  Conversely, private use which is to say use which does not go beyond the private sphere of the proprietor, has no relevance in this field.

The conclusion arrived at was that one can only speak of a “genuine use” in the sense of Article 12(1) where the trade mark, being a trade mark that has been registered and maintained, (or which may have been modified but not so as to alter its distinctive character) is used continuously and publicly in order to provide an outlet for products or services which the trade mark represents, and not with the sole objective of maintaining the trade mark.

It is for the judge in the relevant national courts to determine whether the use made by the proprietor of the trade mark is at all suited to this objective, taking into account all the circumstances of each case, and in particular, the nature of the goods or services, the structure of the market in question, and further, the perception of the average consumer of such products or services in question in relation to the trade mark.

Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc (L.J. Pill, Lord Walker, Sir Martin Nourse; 29.10.02) 

Two appeals from the Registry were heard together before Mr Thorley Q.C. sitting as a deputy High Court Judge [2002] RPC 38.  In the first Anheuser-Busch (“AB”) applied to revoke, on the grounds of non-use, Budejovicy Budvar Nadroni Podnik’s (“BB”) mark BUDWEISER BUDBRÄU (in stylised form) registered in class 32.  Secondly, AB applied, also on the ground of non-use, to revoke BB’s trade mark BUD (in stylised form) registered in class 32.  AB’s applications were refused by the Registry and AB appealed.  Before Mr Thorley, the appeal was successful in relation to the first application and unsuccessful in relation to the second.  On further appeal, the Court of Appeal restored the verdicts of the hearing officers in both matters.

The Court of Appeal stated that its function in an appeal from the Registry was one of review rather than re-hearing.  Therefore providing that the hearing officer had not erred in principle, his decision should not be interfered with unless it was unreasonable.

First Appeal concerning “use in a form differing in elements which do not alter the distinctive character of the mark”

Mr. Thorley at first instance held that section 46(2) had been incorrectly applied by the hearing officer stating that the test did not require consideration of what the average consumer’s reaction to a mark is or a consideration of the “central message” of the mark.  He stated “The section requires the determination of the elements that make up the distinctive character of the mark and this is a matter which is to be viewed, in my judgment, through the eyes of the Registrar in assessing whether or not the mark should be registered.”

The Court of Appeal adopted a different analysis.  While it accepted that the Court should view the distinctiveness of the mark through the eyes of the Registrar, a necessary factor in the Registrar’s analysis was the impact of the mark on the average consumer.  Although it could have been better expressed, the Court of Appeal was of the opinion that this exercise had been duly carried out by the hearing officer and the original decision had to stand.

It was accepted by the Court of Appeal that the “central message” of the mark is not the statutory test under section 46(2) but concluded that this was not what the hearing officer meant.  It was accepted that this phrase could be used to refer to the “essential visual, aural, and conceptual qualities which combine to give a mark its distinctive character”.  The Court of Appeal held that all the hearing officer had done was to identify the parts of the mark that gave it its distinctive character.

Second Appeal concerning  “genuine use”

The two uses considered were the use of the mark on beer mats and on packaging.  In relation to the packaging the mark was applied in a dot-matrix print on the top of boxes of beer in the form ‘BUD-BUDVAR-BUDWEISER’.

Both the hearing officer and Mr Thorley held that use on the beer mat was genuine use.  In relation to the packaging, Mr Thorley stated that since the use on the beer mats consisted of the use of the mark in the form it was registered, this use should be considered first and having found it to be genuine use it was unnecessary to consider section 46(2).  He indicated that if he had considered the packaging he would have been unlikely to hold that this amounted to use of the mark.

The hearing officer held in relation to the packaging that use of the word BUD, either in block capitals or dot matrix print was use of the registered mark within section 46(2); second, that it was use as a separate mark and not as part of a composite mark; third, that the use amounted to genuine use.

The Court of Appeal upheld the hearing officer’s decision.  In considering the test for “genuine use” the Court referred to the test adopted by Jacob J. in Euromarket Designs Inc v. Peters [2001] FSR 20 and also the test proposed in the Minimax case (see above).  On the application of either of these tests the packaging amounted to “genuine use”.

Confidential Information

Naomi Campbell v. MGN Ltd (Lord Phillips, Chadwick & Keene L.JJ.; 14.10.02)

The Court of Appeal allowed an appeal by MGN Ltd against the decision of Morland J. [2002] EMLR 30 who had awarded damages and aggravated damages to Miss Campbell for breach of confidence and breach of the Data Protection Act 1988.

The Mirror newspaper was entitled to set the record straight in relation to Miss Campbell’s use of drugs. In doing so it was entitled to substantiate the facts with other information. The Court of Appeal found that the photographs accompanying the articles did not in themselves constitute confidential information and did not convey any confidential information. The information over and above that stating that Miss Campbell had a drug abuse problem was (a) not offensive (applying Australian Broadcasting Corporation v Lenah Games Meats Pty Ltd, [2001] HCA 63) (b) not significant enough to justify intervention of the court and protection under the law of confidentiality (applying A.G. v Guardian Newspapers [1990] 1 AC 109) and (c) part of the overall journalistic package and thus disclosure was in any event justified in the public interest. There was therefore no breach of confidential information.

The Court of Appeal also found no breach of the Data Protection Act 1988 (the “Act”) allowing the publication to take the benefit of the exemption provided for in section 32 of the Act.  The Act implemented the Data Protection Directive, the main purpose of which was to protect individuals.  Application of the Act should not be at the expense of the right of freedom of expression.  The Court of Appeal concluded that the Act covered publication of data (here details of Ms Campbell’s drug addiction) in newspapers or other hard copies.  The Court of Appeal further held that publication of the data in the articles in issue was in the public interest and as such section 32 of the Act applied (the exemption provided to the processing of data by journalists with a view to publication if they believed publication would be in the public interest).

I am grateful to my colleagues from Bird & Bird for assisting me in the preparation of this report:  Charlotte Forrester (the colour ORANGE and MINIMAX opinions, neither being in English), Matthew Teather (BUDWEISER BUDBRÄU/BUD) and Kerry Griffin (Naomi Campbell).