Reported Trade Mark Cases for September 2002

15 September 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

  BL No.


 Earlier Mark


 O/449/01*GTNet and device (telecommunication services, 38,42)TNET (telecommunication services, 38, 42)Application refused under s 5(2)(b) as marks were dissimilar.  Appeal to appointed person dismissed.  Hearing officer rightly looked at the marks in total, but was also right to give different weight to arbitrary as opposed to descriptive features, such as the word “net”.


(printed materials, 16)
  Application refused under s 3(1)(c).  Appeal heard before ECJ’s decision in BABY-DRY.  Appeal to appointed person dismissed.  Although there was extensive use, it did not indicate that the mark had become an indication of origin as opposed to an indication of the educational value of the publications.


[2002] RPC 260
Series of 2- & 3-D marks depicting a slug of toothpaste with 2 or 3 longitudinal stripes in different colours, some having speckles (toothpaste, 3)  Application refused under s 3(1)(b).  Appeal heard before ECJ’s decision in BABY-DRY.  Appeal to appointed person dismissed.  It was common ground that the get-up was novel, but there was no evidence of how it would be perceived and remembered by the consumer.  None of the colour combinations were sufficiently arresting to be distinctive.  Rather, they would be seen as an arrangement of the product itself, decorative or possibly indicating different ingredients.



Eleven Inc v. Helshaw Food Products Ltd (Pumfrey J.; 17.5.02)

Pumfrey J. upheld the decision of the hearing officer (O/580/01) who, in turn, had rejected the opposition to the application to register, in classes 29, 30, 32 and 42, a device mark comprising an oval device within which a large 7 appeared, on top of which appeared the words TWENTY-FOUR.  Following BABY-DRY [2002] RPC 349, the hearing officer had held that the application should not be refused under sections 3(1)(b) and (c) because the material, over and above the numerals 24-7, was sufficient to distinguish the mark (the numerals themselves being an entirely normal way of designating takeaway goods and services and thus not being distinctive).  In this, Pumfrey J. held that the hearing officer could not be criticised.  Indeed, he could not have been criticised whatever decision he had come to since, having followed the law correctly, the matter was essentially one of experience.

Pumfrey J. also upheld the hearing officer’s decision in relation to section 5(2)(b), despite the fact that he had erred in stating that there was no evidence of use of the opponent’s mark.  The opponent’s mark comprised a square device with the numeral 7 and the word ELEVEN written across it registered in numerous classes.  The evidence, although demonstrating use of this mark, did not demonstrate substantial use and, therefore, the decision that the marks were unalike and that there would not be a likelihood of confusion should not be disturbed.  Absence special circumstances, the hearing officer was right to reject the opposition under section 5(4) having rejected the opposition under section 5(2).  Finally, Pumfrey J. held that where both parties had consented to a decision being made without an oral hearing before the Registry, the fact that no hearing had taken place could not be a ground of appeal.  

DKV Deutsche Krankenversicherung AG v. OHIM* (A.G. Colomer for the ECJ; C-104/00 P; 14.5.02)

Report provided by Celine de Andria of Bird & Bird (opinion not in English)

The CFI rejected an appeal from OHIM on the basis that the application for COMPANYLINE in class 36 for insurance services and financial affairs was devoid of any distinctive character ([2000] ETMR 271).  The applicant appealed to the ECJ. The A.G. was of the opinion that the appeal should be dismissed, stating that:

  • The grounds of refusal set out in Articles 7(1)(b), (c) and (d) must be considered separately. Accordingly, absence of descriptive character does not necessarily mean that a sign is distinctive.

  • A combination of words, each lacking distinctive character, can be distinctive provided it amounts to something more than the mere adding of its composite parts. According to BABY-DRY  [2002] RPC 349, this will be the case where there is “a perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics”.  The A.G. was of the opinion that “perceptible” did not mean “minimal”. He suggested, as in the Postkantoor case ([2002] CIPA 408), that “perceptible” should be understood to mean “a difference that affects important elements of the shape of the sign or its meaning”.  Applying this test, the A.G. concluded that a combination of two descriptive words (such as COMPANY and LINE) would not amount to a “perceptible difference”.  The A.G. further suggested that the same reasoning should be applied when considering Article 7(1)(e).

  • A combination of words that has a descriptive character in one of the linguistic area of the EC will be unfit for registration as a CTM.  The A.G. was of the opinion that the ECJ had rightly reiterated in BABY-DRY that Article 7(1) would apply even if the grounds for refusal existed in parts of the EC only. 

  • The ECJ should not give its opinion on elements of fact. It should merely provide lower courts with principles of general application and leave the application of those principles to those courts.  The A.G. disagreed with BABY-DRY in that respect. If the ECJ embarked on reviewing all points of law and facts considered by the lower courts then many claimants who lost in the lower courts would seek to appeal to the ECJ, which would have serious consequences on the good administration of justice.


Philosophy Inc v. Ferretti Studio SRL  (Peter Gibson & Brooke L.JJ.; 13.6.02; BL C/30/02)

The Court of Appeal allowed the appeal from the decision of Master Bragge and ordered that the mark PHILOSOPHY DI ALBERTA FERRETTI registered for soaps, perfumery etc should be revoked under section 46(1)(a) for non-use.

The Master appeared to have found genuine use through a licence agreement and the supply of 500 bottles of perfume into the  UK.  The Court of Appeal held that the licence was plainly inadequate for such use.  Further, there were too many suspicious and unexplained features surrounding the supply of the 500 bottles of perfume.  Therefore, the Master had been wrong to find that there had been genuine use of the mark within the relevant period.  Furthermore, there had been no proper reason for non-use.  The proprietor had done nothing for most of the five year period and then had embarked on negotiations with Proctor & Gamble a course which, as the evidenced showed, was likely to lead to further and extensive delays before a product falling within the specification could be sold in the  UK.  Such ordinary commercial delays could not amount to proper reasons for non-use, indeed, they were not abnormal at all.

Finally, a question arose as to the period of non-use before an application for revocation could be made.  The defendant submitted that it was five years and three months taking section 46(1) together with (3).  The Court of Appeal rejected this argument holding that the period of five years was clearly the governing period for non-use.  

Viacom International Inc v. Nottingham Group Ltd*  (Appointed Person Prof. R. Annand; 17.10.01; O/474/01)

An application was made to revoke the mark ARNOLD registered in class 9 for a variety of goods on the basis of non-use under section 46(1)(b).  The application succeeded before the Registry and the decision was upheld on appeal.  The proprietor submitted that its use of the mark “NES Arnold and bird device” was sufficient under section 46(2) to preserve the registration.  This submission was rejected.  The mark used was a composite mark, not a collection of independent marks used together. Its use did not, therefore, constitute use of the word ARNOLD alone.  Further, taking into account the likely overall impression of the mark used, the differences between it and the registered form were such that it changed the distinctive character of the mark (ELLE  [1997] FSR 529 followed).

Time extension for filing evidence at Registry

Style Holdings plc v.  Wilson Sporting Goods Co.*  (Appointed Person G. Hobbs Q.C.; 18.9.01; O/464/01)

In opposition proceedings, the opponent applied for a second time extension to serve its evidence.  After the first extension had been granted, the opponent had been told that only on detailed and compelling reasons would a further extension be granted.  The written application for a further extension did not contain such reasons.  However, after an oral hearing, a further extension was granted.  The appointed person regarded with regret the fact that the opponent had been allowed to use the oral hearing to amplify its reasons for requesting the second extension without having first reduced its reasons to writing.  However, he reluctantly held that he could not interfere in the decision of the hearing officer in this matter.  The appeal by the applicant for the trade mark was dismissed.


AAH Pharmaceuticals Ltd v. Vantagemax plc  (Pumfrey J.; 18.4.02)

The claimant was the proprietor of the mark VANTAGE registered in class 35 in respect of the operation of incentive schemes, advice and information.  The defendant operated a multi-collection point loyalty card scheme.  The claimant commenced proceedings under section 10(1) and the defendant counterclaimed for non-use under section 46(1)(a).  Pumfrey J. held that there was trade mark infringement.  But, because the interests of justice required a trial of the counterclaim to be had, he did not grant summary judgment.  

On infringement, the defendant submitted that they did not use their sign in relation to services identical to that in the specification which, in any event, was so wide as to be unclear.  The judge held that the meaning of the specification was readily identifiable and that there was no need to seek expert evidence on its construction.  An incentive scheme was one whose purpose was to provide rewards to encourage performance of some description.  The activities of the defendant fell within that description.  Further, following the opinion of A.G. Jacobs in S.A. Société LTJ Diffusion v. SA SADAS  [2002] ETMR 441 (the ARTHUR ET FELICIE case), Pumfrey J. held that the marks were identical.  The words “points” and “reward” with which the defendant used the sign “vantage” were wholly descriptive.

In relation to the counterclaim, the scope of use was not clear.  The evidence all related to use by the previous owner of the mark.  The use was 5 years old, was not on any view extensive and had led to the previous owner assigning the mark to the proprietor and thereafter discontinuing use of the mark.  Therefore, it was not appropriate to adjudicate on this matter in summary proceedings.  Obiter, the judge added that he did not think that the specification was so wide as to render it susceptible to further restriction having regard to the use which had taken place.

Reed Executive & anr v Reed Business Information Ltd & ors (Pumfrey J.; 2.5.02)

The actions for trade mark infringement and passing off succeeded.  The mark in issue was REED registered in class 35 for employment agency services.  

The defendants had long been involved in publishing.  An important part of their publications was the jobs section.  With the advent of the Internet, the defendants decided to move into recruitment advertising on the Internet and set up  Their website went through a number of changes.  Version 1, which was not actively promoted, used the RBI (Reed Business Information) and Reed Elsevier logos.  There was some evidence of confusion between and the claimants which was apparent from user surveys.

Much evidence was given about the use of metatags and directories by search engines.  It was common ground that search engines have secret and complex criteria to rank responses.  They also create and store vast indexes of words and web pages using programs called spiders – but these can quickly go out of date.  Website owners therefore often ask search engines to include their website in a directory that will not be affected by the operations of the spiders.  

Version 2 of had a long series of metatags.  They included a whole list of job types and also “Reed Business Information”.  Further, used banner advertising extensively which was triggered by a long list of reserved words including “job”, “careers” and “recruitment”, but not REED.  There was one exception to this.  For 12 months, REED was reserved with Yahoo! because it had been offered free of charge to the defendants.  

Version 3 of the website was launched in January 2002.  In this version, the metatags remained and the RBI branding was more prominent than before.  There was some evidence of actual confusion between the claimants and defendants caused by the references to REED in Version 3, but the numbers were small.

Later, much of the REED branding and the RBI logo were removed, leaving the copyright notice.  Metatags including “Reed Business Information” also remained.  The website continued to be updated and went through several more versions.  By the time of the trial, it seemed that references to REED (in all forms) had been deleted – but only by “commenting out” the relevant lines of code.  This meant that the code remained but it would be unlikely that a search engine would find any lines which had been “commented out”. 

Pumfrey J. decided the issue of infringement under section 10(2)(b) (and not section 10(1) because of the awaited decision of the ECJ in S.A. Société LTJ Diffusion v. SA SADAS  (the ARTHUR ET FELICIE case)).  He held that there was infringement where there was visible use of REED on as its use was capable of causing relevant confusion.  In so holding, he held that the specification of services had to be construed at the date when the acts complained of started and not at the date of registration.  On balance, he was of the opinion that the services provided by the defendants were those of an employment agency as it acted as an intermediary between clients and candidates, despite the fact that there was no subjective assessment of the individual candidates.

The own name defence under section 11(2) failed because the defendants could not take advantage of the proviso.  The word “practices” in the proviso required an objective view to be taken.  Therefore, it mattered not that the defendants did not intend to cause confusion.  What was key was the fact that the visible use of REED on  gave rise to a more than negligible risk of causing confusion among candidates.

The next question was whether the invisible use of REED (i.e. use of REED in the metatags, in the directories and in list of reserved words for the purpose of banner advertising) was use as a trade mark.  Pumfrey J. took this to mean that the sign was to be used for business purposes.  The concept was wide enough to cover invisible use of the word REED in the metatags.  Thus, where such use brought up a search result in which the word REED appeared, there would be infringement, subject to the own name defence.

Where no visible use of REED was returned by the search engine was a more difficult question.  Firstly, was it possible to improve on a ranking by including in the metatags a name for which an own name defence might be available?  It if remained invisible, it would appear not to benefit from the section 11 defence as no-one would normally see it.  Moreover, to use a name or address in that way might well not satisfy the proviso.  Secondly, did this use fall within section 10?  Answer, yes, as ultimately its purpose was to use the sign to suggest a connection which did not exist.  The sign in a metatag was being used to suggest that the website was to be treated in a manner appropriate to the way in which the trade mark owner’s site should be treated.  This was infringement.  In short, the sign did not tell the truth about the website.  

Where a banner advertisement was triggered by use of REED by the defendants, then that use was an infringement.  It was different if the defendants had reserved “jobs” with a search engine website and then the defendants’ name happened to turn up in a search for “reed jobs”.  This was nothing to do with an infringing use of REED but was a function of how searches were conducted.

Pumfrey J.’s conclusions on passing off echoed his decision on infringement.  Having regard to the changes made to the website, he was doubtful whether this was a case for an injunction.

False Statements

DSG Retail Ltd v. Comet Group plc  (Owen J.; 8.2.02)

Currys (the claimant) made out their case in malicious falsehood and successfully applied to continue an interim injunction, previously ordered, to stop Comet from publishing certain posters.  

Currys ran two promotions.  In the first, they offered 10% off the price of selected goods.  In the second, they offered to beat any Comet price offered at the same retail park by £10 on any product over £300.  This led Comet to publish posters, one of which stated: “The Comet price is lower than competitors 10% off promotions and £10 price-cuts.  That’s Comet sense.”  Another poster carried a similar message and had been embellished by someone taping three of Currys’ advertisements to the bottom of the poster.

Owen J. held that the single meaning of the poster was as follows:  Comet’s marked prices were invariably lower than the prices for Currys’ equivalent goods.  This statement was false, a finding which was reinforced by the fact that Comet’s staff had been told only to make the deduction in their prices when challenged by a customer.  Further, this statement was actionable in that it was more than a mere advertiser’s puff.  There was a clear distinction between saying  “my goods are better than yours”  which was not actionable and “I charge less than X for the same goods”  which was.  Comet’s statement fell into the latter category.  Finally, not only did Comet know that the statements were false and therefore Owen J. held that they were made maliciously, but there was also a likelihood that they would cause damage.

The Director General of Fair Trading v. Planet Telecom plc & ots (The Vice-Chancellor, Sir Andrew Morritt; 6.3.02); British Telecommunications plc v. Planet Telecom pls & ots  (Patten J.; 14.3.02)

These two actions arose from the same set of facts.  The defendants were the suppliers of an internet business directory using, amongst others, the domain name  They had taken a licence to use BT’s database of names, telephone numbers and addresses.  The information was then supplemented by the defendants’ information and made available to the defendants’ customers through their website. The supplementary information was acquired by sending unsolicited faxes and requesting recipients to check and confirm or alter the details and fax them back to the sender.  These faxes were the subject of the two actions.

The history behind the actions was as follows.  The Advertising Standards Authority upheld a complaint in relation to the unsolicited faxes following which the defendants refused to stop the practices of which complaint had been made.  Thereafter, the Director General commenced proceedings under the Control of Misleading Advertisements Regulations 1988 (implementing the Comparative Advertising Directive 97/55/EEC).  At much the same time, BT commenced proceedings for passing off and trade mark infringement.  

In the first of these actions the Vice-Chancellor held that an interim injunction should be granted preventing the publication of the faxes or similar faxes as they falsely conveyed the impression that the sender was connected with or acting for a public telecommunications operator running a public telephone system.  No liberty to apply was given as the Court was not to be used as an advisor on what or what not an advertiser was allowed to do.

In the second action and in relation to the issue of passing off only, Patten J. granted a final injunction.  Patten J. held that it was seriously arguable that the forms to be returned by fax had been deliberately designed in order the give the impression that the details were to be used to maintain the accuracy or BT’s records.  It did not matter whether BT retained goodwill in “192” following de-regulation.  It was sufficient that the defendants had taken the view commercially that their business depended upon forging an apparently link with BT.  The injunction was granted together with an order that no fax was to be sent without the following disclaimer “This fax is not from BT.  We have nothing to do with BT’s 192 directory enquiry service”.  


R v Qamar Zaman (Longmore & Wright L.JJ., Goddard J.; 1.7.02)

The Court of Appeal dismissed an appeal based on the Judge’s summing up.  Section 92(1) commences “A person commits an offence who with a view to gain for himself or another…”.   The Court of Appeal held that the Judge was correct when stating of the phrase “with a view to gain…”  that it  simply means that the defendant had something in his contemplation, not necessarily something that he wanted or intended to happen but something which might realistically occur.


(Copyright reports provided by Edward Barker of Bird & Bird)

SPE International Ltd v. Professional Preparation Contractors (UK) Ltd & anr  (Rimer J.; 10.3.02)

Rimer J. held that when assessing damages for copyright infringement by reference to a notional royalty rate between a willing licensor and a willing licensee, the absence of positive evidence as to a comparable licensing arrangement should not preclude damages being awarded under this head of claim.  For the court to refuse compensation, simply because there was no evidence of industry practice that property of the type in question had ever been licensed, would involve a denial of justice.  However, where there was uncertainty in the calculation made by the court caused by the lack of evidence, the benefit of any doubts caused by such uncertainty should be given to the infringer.

The defendants had infringed the claimant’s copyright in a design drawing for a mobile shotblast cleaning machine.  Four infringing machines had been made by the first defendant.

Rimer J. held that under no circumstances would the claimant have sold machines to the first defendant, and so the claim for damages for lost profits on the sale of the machines failed.  Rimer J. also rejected the claimant’s claim to lost profits from its shotblasting services, based on the fact that the first defendant used the machines to provide shotblasting services to third parties who would otherwise have used the services of the claimant, because the claimant failed to show that any work was so diverted.  In considering this head of claim, the judge held that the expert evidence adduced by the claimant to show its loss was inadmissible.  The expert “had no relevant expertise”, expressed views on the shotblasting industry that he was “not qualified to express”, and was “simply chosen by [the claimant] to act on its behalf as an advocate of its case”.  Finally, the judge was unimpressed by the claimant’s evidence in relation to the claim to damages based on a reasonable royalty rate.  Having had its expert’s evidence held inadmissible, the claimant was “seriously short of material by way of proof of its loss”.  However, the defendants’ submission that, in the absence of any evidence no damages should be awarded, was rejected.  On what little evidence there was, the judge, adopted a “rough and ready” approach and awarded the claimant £40,000.

Nabavi & Eskandar Ltd v. Shirin Guild*  (The Vice-Chancellor, Robert Walker & Rix L.JJ.; 10.5.02)

The defendants successful appealed from the decision of Rimer J. ([2001] CIPA 274).  At first instance, Rimer J. held that the defendants infringed Ms Guild’s unregistered design right in three garments based on a “big square” design of unusual width and that the garments were original, despite the fact that the core of their design was based on a third party’s design. The elements of the designs which conferred the necessary degree of originality were (a) the increase in width of the garments from 88cm to 100cm, (b) the design of a cross-over collar (on the sweater), and (c) the design of other details (ribbed cuffs and hems) on the other two garments.

The defendants contended that the judge’s conclusions on originality were wrong on two grounds.  Firstly, the width of 100cm adopted for all three garments arose from a mistake by the third party designer.  On this basis it was submitted that the feature could not contribute to any originality in the garments in issue, because it was accidental and not designed.  The Court of Appeal rejected this submission.  Although the feature originated by mistake, it was perpetuated on purpose.  The adoption of a mistake did not contribute much by way of labour, but it could certainly be the product of skill (per the Vice-Chancellor).  Secondly, the defendants submitted that the features identified by Rimer J. were inherently insufficient to give rise to the necessary quality of originality.  The Court of Appeal held that the features had to be considered together, rather than in a piecemeal fashion, when determining originality.  However, some individual consideration of each feature was inevitable.  Rimer J. had erred in principle, in that there was no evidence to support his conclusion that the features, other than the increase in width, were not commonplace in knitwear.  In fact there was clear evidence that they were commonplace.  Given this, together with the finding that the decision to adopt the width of 100cm was not attributable to Ms Guild alone, the Court of Appeal held that the garments were not original.  

Notwithstanding the above, the Court of Appeal also went on to consider the issue of copying.  The Court held that Rimer J.’s finding of copying was wrong for the following reasons: (a) the judge had compared the wrong garments in that he had used later designs created by Ms Guild for the comparison with the defendants’ designs; (b) the inconsistent finding that, in relation to the width of the garments, the difference between the defendants’ designs and Ms Guild’s designs was greater than between Ms Guild’s designs and the third party designs – the latter being held by the judge sufficient to confer originality; and (c) the judge had not sufficiently explained his reasoning in reaching his conclusion that copying had occurred.