Reported Trade Mark Cases for October 2002

17 October 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:  post BABY DRY

Ref no.  O/497/01*
Application (and where applicable, earlier mark)  CIGAR (chocolate, biscuits, wafers, cookies, confectionery, 30)
Comment Appointed person, Prof. Annand, overturned decision to refuse application under s 3(1)(c).    CIGAR is fanciful in relation to the goods (whether cigar-shaped or not) as the goods have nothing to do with tobacco or smoking.  Further the mark is possessed of sufficient individuality that it qualifies for registration as an unused mark.

Ref no.  


[2002] RPC 628
Application (and where applicable, earlier mark) TINY PENIS (clothing, footwear, headgear, 25)
Comment Application refused under s 3(3)(a).  Appointed person, S. Thorley Q.C., dismissed appeal.  The matter should be approached by invoking the concept of a right-thinking member of the public and whether, objectively, such a person would find the mark calculated to cause “outrage” or “censure” amongst a relevant section of the public as opposed to offence  which would only amount to distaste.  This mark would cause greater offence than mere distaste. A social and family value would be undermined in that such words should be reserved for serious use and not debased by use as smutty trade marks for clothing.

Ref no. O/556/01*
Application (and where applicable, earlier mark) BAGS OF STYLE (grooming products, 3, 8, 11)
Comment Appointed person, S. Thorley Q.C., upheld decision to refuse application under ss 3(1)(b) and (c).  The word “style” is often associated with the products in the specification.  The mark as a whole comprises a commendatory expression which has entered the vernacular.

Ref no. O/573/01*
Application (and where applicable, earlier mark) WHERE ALL YOUR FAVOURITES COME TOGETHER (confectionery in the form of packages, the products in each having the same recipe, 30)
Comment Appointed person, S. Thorley Q.C. upheld decision to refuse application under ss 3(1)(b) and (c).  If the specification did not contain the restriction, the application would have been entirely descriptive, being an abbreviation of “this is where all your favourites come together in one box”.  Nevertheless, the restriction did not go far enough to protect third parties under s 10(2).

Ref no. O/574/01*
Application (and where applicable, earlier mark) 

MEDISON + device (computers, apparatus for medical purposes, 9, 10)


MEDICON (medical apparatus and instruments, 10)
Comment Opposition failed under ss 3(6), 5(2) and (3).  Appointed person, D. Kitchin Q.C., upheld decision.  An allegation that the applicant should have been aware of the earlier mark and that the opponent would consider the application similar to it, did not amount to bad faith.  Under s 5(2), the hearing officer did not fall into error in considering that the similarities in the marks were more than counter-balanced by the differences such that there would not be a likelihood of confusion.

Ref no. O/583/01*
Application (and where applicable, earlier mark) 

MAGIGROW, MAGI-GROW, MAGI-GROW + coloured circular device (fertilisers for plants, 1)


MIRACLE-GRO, Miracle-Gro + circular device (chemical products for use in horticulture, 1)
Comment Opposition rejected under ss 3(6), 5(2)(b) and 5(4)(a).  Appeal to appointed person, Prof. Annand, dismissed.  The hearing officer had given due weight to the reputation of the opponent’s mark and had applied the correct test under s 5(2). Under s 5(4), the hearing officer’s attention had not been drawn to OPEN COUNTRY [2000] RPC 477, a decision under s 11 TMA ’38, but whose ratio was applicable, that is, the way in which the applicant’s mark was used in practice was illustrative of the normal and fair use of the application.  Nevertheless, the hearing officer was correct in holding that the evidence did not demonstrate that the applicant’s “get-up” amounted to a misrepresentation or would cause confusion.

Ref no. O/589/01*
Application (and where applicable, earlier mark) BAR MAMBO (restaurant services, 42)
Comment Appointed person, G. Hobbs Q.C., upheld decision to refuse application under ss 3(1)(b) and (c) because descriptive qualities of words were not lost in combination.

The Consortium of Bicycle Retailers Ltd v. Halfords Ltd* (Appointed Person G. Hobbs Q.C.; 28.11.01; O/561/01; [2002] RPC 729)

The Hearing Officer refused the application to register “Cycling IS…” in classes 25 and 35 for clothing and advertising respectively.  Mr Hobbs upheld the decision.  The mark was not objectionable under section 3(1)(c) because it did not exclusively (i.e. simply and solely as per BABY DRY [2002] RPC 349) consist of descriptive matter.  However, it was objectionable under section 3(1)(b) because it would be perceived as identifying cycling as the raison d’être for marketing the goods and services and would not trigger origin-specific perceptions or recollections in the mind of the average consumer.

Taken out of context paragraphs 39 and 40 of the ECJ’s judgment in BABY DRY, might be thought to indicate that signs which were not wholly descriptive should be regarded as distinctive.  But Mr Hobbs did not believe this to be the position for the following reasons:

1.  It was not a position which the ECJ could have adopted without deciding that Article 3(1)(b) was largely otiose in relation to signs and indications which were free from objection under the provision of Article 3(1)(c). 

2.  The ECJ was not seized of any questions under the former provision and therefore it would have been remarkable if it had come to that decision (the more so in the light of Windsurfing [1999] ETMR 585 where the Court had decided that distinctive character of a sign was one of the general conditions for registering a trade mark under Article 3(1)(b)). 

3.  To hold otherwise would be to ignore the reality of every day experience; distinctiveness being a matter of fact and degree and signs which were not wholly descriptive do not always or necessarily possess distinctive character. 

4.  In BABY DRY the ECJ had evidently wished to emphasise that the word “exclusively” placed limits upon the operation of Article 3(1)(c) that had not previously been recognised in Windsurfing.  (NB: earlier in his judgment, Mr Hobbs had noted that the use of the word “may” in Article 3(1)(c) (as in “may serve to designate…the characteristics of the goods or services”) allowed for a degree of foreseeability in Article 3(1)(c) in that it required a degree of foreseeability to decide whether a mark would be understood as purely descriptive or not.)

For the above reasons, Mr Hobbs held that the statements in BABY DRY relating to Article 3(1)(c)/section 3(1)(c) were not determinative of the independent operation of Article 3(1)(b)/section 3(1)(b).  

In setting out the test for distinctiveness, and in the present unsettled state of affairs, Mr Hobbs held that it was relevant to bear in mind that the likelihood of confusion could be presumed where there was identity of marks and identity of goods/services under section 10(1).  It was therefore legitimate to consider, when assessing whether a sign was insufficiently distinctive to qualify for registration, whether it could indeed be presumed that independent use of the same sign by different suppliers of goods or services of the kind specified in the application for registration would be likely to cause the relevant class of persons, or at least a significant proportion thereof, to believe the goods or services came from the same undertaking or economically linked undertakings.

Distinctiveness could not be assessed in the abstract.  It had to be assessed in relation to the goods or services for which registration was sought.  Further, the application had to be considered capable of registration by a significant proportion of the relevant class of person, made up of the trade and average consumers of the specified goods and services in the territory covered by the application for registration.  The average consumer of the goods or services would be reasonably well-informed and circumspect and would regard the mark as a whole, not analysing its detail.  The level of attention paid by such persons could vary with the goods.  At all times, the Court was to have regard to the realities of the marketplace.  (See ECJ’s judgments in Windsurfing, Lloyd Schuhfabrik [2000] FSR 77 and Merz & Krell (the BRAVO mark) [2002] ETMR 231).

DKV Deutsche Krankenversicherung AG v OHIM* (ECJ; 19.9.02; C-104/00 P) 

The ECJ dismissed an appeal by DKV, brought against the judgment of the CFI ([2000] ETMR 271) which in turn had that dismissed an appeal from the decision by OHIM to refuse registration under Article 7(1)(b) of the word COMPANYLINE for insurance and financial affairs in class 36.  DKV appealed on the following grounds:

1.  That the CFI had interpreted the conditions for registration of a trade mark too strictly under Article 7(1)(b).

Held - The CFI had not erred in law when holding that two generic terms when coupled together did not possess, as a whole, any distinctive character.  The decision was therefore consistent with BABY DRY [2002] RCP 349.  Further, this was a case involving findings of a factual nature.  Therefore, unless there were substantive inaccuracies in the factual findings of the CFI, the ECJ did not, on appeal, have jurisdiction to review the decision.

2.  That the CFI refused to assess the application under Article 7(1)(c).

Held - Article 7(1) quite clearly states that a finding of registrability under one of the absolute grounds for refusal is sufficient.  Only Article 7(1)(b) had been considered by OHM and the CFI was right to confine itself accordingly.

3. That the CFI had failed to take into account Article 12(b), which constitutes a corrective to the restrictive interpretation of Articles 7(1)(b) and (c).

Held - Only Article 7(1)(c) should be interpreted in the light of Article 12(b).  Since only Article 7(1)(b) was in issue, it was not necessary to consider the point further.

4.  That in applying Article 7(2), the CFI had failed to take into account the decisions of national authorities regarding similar registrations.

Held - There was no obligation on OHIM to come to the same conclusion as national courts in similar circumstances and therefore it had not erred in law in that respect.  Having found the application lacked distinctiveness to those familiar with English, it was not necessary to consider the effect of the application on other speakers of the Community.

5.  That OHIM has misused its powers by registering other signs incorporating the suffix “line”.

Held - The Court refused to hear the same factual assertions that DKV had used before the CFI. DKV was seeking nothing more than a re-examination of the application before the CFI.

Viking-Umwelttechnik GmbH v. OHIM* (CFI; 25.9.02; T-316/00) 

The CFI dismissed an appeal from the decision of the First Board of Appeal which had, in turn, dismissed an appeal from the decision to refuse registration of the application in class 7 for garden choppers, lawn mowers and similar garden equipment on the grounds that it was devoid of any distinctive character and was descriptive of the goods in question within the meaning of Article 7(1)(b) and (c).  The sign in question consisted of the juxtaposition of a particular shade of green and a shade of grey.

The CFI held that colours and colour combinations per se are registrable, but only insofar as they are capable of distinguishing the goods or services of one undertaking from another.  However, in this case, the Court noted that green is commonly used for the type of goods in question and the shade sought to be registered was not perceptibly different from the shades of green in common use.  Further, the grey colour used had no particular attribute to suggest anything other than that it was the natural colour of the material, or a particular finish.  Therefore, assessing the two colours (when juxtaposed) as a whole, the Court was of the opinion that a sign consisting of two indistinct colours with no particular arrangement, would not enable consumers to take in and commit to memory a particular combination on which they could draw to make a repeat purchase directly and with certainty.  The consumer would not see the juxtaposition of the colours as a sign indicating that the goods came from a particular undertaking, but would simply regard it as a feature of the finish of the goods in question.

Security for Costs

Sun Microsystems Inc v. Viglen Ltd* (Appointed Person G. Hobbs Q.C.; 28.12.01; O/585/01)

Sun applied to register the word JINI in classes 7, 9, 38 and 42 and was opposed by Viglan on the basis on the prior registered mark GENIE.  Viglan applied for security for costs.  The Hearing Officer held that he had power to make the order, but refused to do so in the exercise of his discretion [2001] RPC 461.  Mr Hobbs upheld that decision.

The Registrar has power to order security under section 68(3) of the Act and Rule 61.  Viglan’s application was based on Sun’s foreign residence.  However, it was clear that, although foreign residence was the beginning of the enquiry as to whether security should be awarded, it was not the end of the question, Nasser v. United Bank of Kuwait [2001] EWCA Civ 556.  Here, Sun had substantial assets in the jurisdiction against which Viglan could enforce an order for costs in the unlikely event that steps had to be taken to enforce payment.


Van Doren + Q. GmbH v. Lifestyle Sports + Sportswear Handelsgesellschaft mbH & anr* (A. G. Stix-Hackl for the ECJ; 18.6.02; C-244/00) (Report by Ingo Gehring of Bird & Bird (opinion not yet in English)) 

The following question was referred to the ECJ by the Bundesgerichtshof:

“Are Articles 28 and 30 EC to be interpreted as meaning that they permit the application of national legislation under which an infringer against whom proceedings are brought on the basis of a trade mark for marketing original goods, and who claims that the trade mark right has been exhausted within the meaning of Article 7 [of the Directive] has to adduce evidence and, in appropriate cases, prove that the goods marketed by him have already been put on the market in the EEA for the first time by the trade mark owner himself or with his consent?”

In summary the facts were as follows: Van Doren + Q. GmbH, a clothes wholesaler and retailer, is the exclusive distributor of STUSSY Inc. goods in Germany. Van Doren stated that there is only one exclusive distributor for each EEA country, and that distributors are contractually bound not to sell STUSSY Inc.’s goods to intermediaries for resale outside their contractual territory. Lifestyle Sports + Sportswear markets goods bearing the STUSSY trade mark, not acquired from Van Doren, in Germany. Van Doren sued the defendants in Germany for an injunction, damages and disclosure of information. Van Doren maintained that the offending goods were first put on the market in the USA, and that the trade mark owner did not consent to their distribution in Germany or any other EU Member State. Lifestyle Sports argued that the rights in the trade mark had been exhausted, because the goods were sourced in the EEA, where they were put on the market by the trade mark owner or with its consent.  The case therefore turned on where the products were first put on the market with the trade mark owner’s consent and the question of who has the burden of proof.

German law imposes the entire burden of proof on the party alleging exhaustion of trade mark rights.  If a dealer in such a case discloses his sources he might cause his supply source to dry up. Imposing the entire burden of proof on the alleged infringer would place him in a dilemma because he would have to choose between the possibility of losing his future supply and losing the case, even if the trade mark rights were exhausted.  Such a national rule could constitute a barrier to the free movement of goods, because trade mark rights are not there to make it possible for trade mark owners to partition national markets.

The Advocate General was of the opinion that the burden of proof should be shared, to reflect a duty of cooperation on the part of the trade mark owner. Imposing the entire burden of proving exhaustion on the reseller was contrary to Community law.  Therefore, the trade mark owner should first have to prove that there were no gaps in his distribution system within the EEA. If he succeeded, the conclusion would be that the parallel importer must have sourced his goods from elsewhere. The cooperation could also be displayed by marking the goods exported to the EEA in a special way. The duty of cooperation should not, however, go beyond what is necessary to avert the risk of market partition.  Each decision should be based on the individual case and detailed rules should remain a matter of national procedural law.

Infringement – lis pendens

The Prudential Assurance Company Ltd v. The Prudential Insurance Company of America (Laddie J; 11.4.02)

The claimant, P-UK, commenced proceedings seeking to prevent P-US from using the trade marks PRUMERICA and PRUDENTIAL-BACHE in the UK and Europe on the basis that P-US was in breach of a co-existence agreement and, secondly, was infringing its CTMs and UK TMs for PRUDENTIAL and PRU.  In this interim application, P-US unsuccessfully challenged the jurisdiction of the Court on the basis that P-UK did not have a sufficiently arguable case to justify leave to grant service out of the jurisdiction.

The first issue Laddie J. had to decide was whether there was an incurable procedural bar preventing P-US from arguing that it had submitted to the jurisdiction of the Court.  Laddie J. held that there was nothing in this point.  P-US had objected to the jurisdiction at the very outset (by checking the tick box on the acknowledgment of service form) and had maintained that objection consistently thereafter.  Just because P-US had also raised questions of substance as well as of jurisdiction, it could not be said that it had shown a willingness to have the English Court resolve the dispute.

In order to justify leave to serve out of the jurisdiction, P-UK had to show that it had a good arguable case in respect of the claims made.  

The first claim was the breach of the contract claim.  The agreement between P-US and P-UK, in broad terms, split the world up into different spheres of influence, with each company having the right to use PRUDENTIAL in some countries to the exclusion of the other.  P-US said that this was merely a gentleman’s agreement, binding in honour only, and that the parties did not intend thereby to create legal relations.  P-UK said it was a legally binding contract.  Laddie J. held that despite the document suggesting it was a gentleman’s agreement, P-UK’s case on this point was sufficiently arguable to justify service out of the jurisdiction.

The second claim was the trade mark infringement claim.  P-UK alleged infringement of two CTMs and seven UK TMs.  P-US’s defence fell into two parts.  Firstly, P-US said that PRUMERICA was not confusingly similar to either PRU or PRUDENTIAL and that it was not open to P-UK to argue otherwise because of the rules on related actions (lis pendens) in the Brussels Convention and Brussels-like provisions in the CTM Regulation.  Secondly, P-US argued that P-UK had consented to the use the mark PRUDENTIAL-BACHE.  In relation to this second point, the argument turned on the scope of the agreement referred to above.  Since its scope was difficult to discern and could not be resolved in summary proceedings, P‑US’s application failed in this regard.

Laddie J. also held that P-US’s lis pendens argument failed.  P-US’s submissions were as follows.  P-US had applied to register PRUMERICA in France.  The French Trade Mark Registry had considered whether the mark was confusingly similar to PRUDENTIAL and PRU and held that it was not.  This decision was upheld by the Cour d’Appel.  P-US submitted that this decision was binding on all state signatories to the Brussels Convention under Articles 21 and 22 and all Member States under similar rules in the CTM Regulation, specifically Article 105.  The argument centred on the latter.

P-US submitted that Article 105 should be construed in the following manner.  The provisions in Article 105(1) were to prevent parallel infringement actions on corresponding CTM and national marks and successive claims in the same cause or action in relation to corresponding CTM and national marks (sub-paragraphs 2 and 3).  The same cause or action arose whether the question was raised in infringement proceedings, or in the context of preventing registration.  Indeed, opposition proceedings could be styled as proceedings in which the applicant for the mark was seeking “registration on the grounds of non-infringement” and, therefore, oppositions could be treated as if they were infringement actions.  This meant that once an issue on whether marks were confusingly similar was decided in opposition proceedings, it could not be re-opened in infringement proceedings.

Laddie J. did not accept these submissions.  Although the same factual issues might arise in infringement and opposition proceedings, if P-US was right, some strange results would follow.  For example, the existence of a CTM opposition would prevent similar, parallel oppositions in national offices.  Further, if national oppositions were to give different answers, which one should be followed in the opposition at OHIM, or indeed in subsequent infringement actions?  Finally, where a situation arose, as here, it would mean that a CTM could not be enforced at all.  Laddie J. held that the construction of Article 105 was much simpler.  Sub-paragraph 1 was designed to prevent concurrent actions for infringement proceedings concerning CTMs and equivalent national trade marks.  Sub-paragraphs 2 and 3 achieved the same effect, but in sequential proceedings. Trade mark registration proceedings were not equivalent to infringement actions, indeed they were nothing of the sort.  A prior judgment for the purposes of sub-paragraphs 2 and 3 of Article 105 had to be in respect of a granted trade mark in an infringement action and did not apply to opposition proceedings.

Therefore, Laddie J. held that the outcome of the opposition in the French Trade Mark Registry did not preclude P-UK from suing on its CTMs and, for the same reasons, it did not prevent P-UK from suing on its UK TMs.