Reported Trade Mark and Copyright Cases for January 2002

20 January 2002

Katharine Stephens

Court decisions marked with an asterisk are available on the Court Service website www.courtservice.gov.uk/judgments/judg_home.htm. 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.

Registry Decisions







































 BL No.


 Application


 Earlier Mark


 Goods/Services


 Comment


O/059/01


LANDROVER OWNER INTERNATIONAL (stylised word)


LAND ROVER


Magazines (16)


Opposition succeeded under s5(2)(b) and 5(3). The marks were prima facie confusingly similar. However, the application had been made on the basis of honest concurrent use. No instances of confusion had been shown and the likelihood of confusion was not proven. The applicant’s mark rather than proving detrimental to the opponent’s mark, had positively benefitted the opponent.


O/069/01


EUMOGEL


EUMOVATE


Topical corticosteroids


Opposition succeeded under ss5(2) and 5(4)(a). The type of goods to which the marks related were common prescribed treatments rather than highly specialised ones. The identical prefixes to the marks were very different to others for goods in the same market and there was therefore a likelihood of confusion.


O/082/01


PQASSO


PICASSO (Unregistered)


Printed matter; training related to quality assurance systems (16, 41)


Opposition failed under ss3(1)(b), (c), (d) and 3(6). The artist’s name and the applicant’s mark were visually different. The misspelling of the artist’s name would not lead the public to have cause to think that the use was descriptive of him as the correct spelling would be expected when referring to the artist. In terms of aural similarity, the most that the name PICASSO could provide would be a convenient reference point for pronunciation of the applicant’s mark.


O/084/01


SEGALIGHT (stylised word)


SEGA (electronic equipment and software (word, 9) (stylised word 9, 16, 28, 38, 41, 42))


Chocolate and coffee beverages (30)


Opposition failed under ss5(2)(b), 5(3) and 5(4). The use made by the opponent in the relevant period in relation beverages was only for promotional purposes, not as trade marks for beverages per se.


O/087/01


CIGAR

 

Confectionery, biscuits (30)

Application refused under s3(1)(b) and (c). The mark was refused on the basis that it should be open to other traders to make novelty confectionery in the shape of a cigar and be able to refer to and advertise the product as such. The public would need to be educated that the mark was a badge of origin.


Appeals from Registry Decisions

* Reliance Water Controls Ltd v. Altecnic Ltd (Kennedy, Mummery, Sedley LL.J.; 12.12.01)

The applicant, Altecnic, sought to register the mark CAREMIX in relation to "valves; valves for use in water circulation; blending valves" in class 11. They had originally sought to register the mark in class 7 with the same specification, but had requested an amendment to class 11 pursuant to section 39. The request was granted by the Registrar. The opponent, Reliance, submitted that the application to correct the classification was not correcting an obvious mistake under section 39(2)(c), but was changing the specification to cover different goods. Further, if that was the case, the applicant had no intention of using the mark on class 7 goods and therefore the application was made in bad faith and should be refused under section 3(6). Both the Hearing Officer and Laddie J. rejected this last point and the Court of Appeal did not wish to hear argument on it.

Before the Hearing Officer, the opposition succeeded (13.7.00; BL O/244/00). An appeal from this decision was allowed by Laddie J. (12.12.00). The Court of Appeal allowed the appeal from that decision. Mummery LJ, giving judgment for the Court, held that the class number 7 was part of Altecnic' s application in the context of the "specification of goods". Therefore the request to amend the application was not permissible because it did not fall within section 39(2). It could not be said to be a case of an "obvious mistake" under sub-section (c), as valves fall within class 7. The position might have been different if none of the particular goods expressly described in the application fell within the goods contained in the class number given in the application. Even in those circumstances, however, the amendment of the application could only be made under section 39(2) and not simply by virtue of a determination under section 34 (under which any question arising as to the class within which any goods or services falls would be determined by the Registrar exercising his discretion). In reaching this decision, the Court of Appeal had regard to the fact that the system of classes of goods was for the purpose of administrative convenience. The decision reached by the Court of Appeal was not inconsistent with the approach in the current general practice of the Registry, nor with the general practice of OHIM.

Budejovicky Budvar Narodni Podnik v. Anheuser-Busch Inc (S. Thorley Q.C.; 3.12.01)

Three appeals from the Registry were heard together. In the first, Anheuser-Busch ("AB") applied to revoke, on the grounds of non-use, Budejovicky Budvar Narodni Podnik's ("BB") mark BUDWEISER BUDBRÄU (in stylised form) registered in class 32. Secondly, AB applied, also on the grounds of non-use, to revoke BB's trade mark BUD (in stylised form) registered in class 32. Finally, AB applied to revoke the second of these two marks under section 47. All AB's applications were refused in the Registry and AB appealed. The appeal was successful in relation to the first application and unsuccessful in relation to the second. In relation to the third, AB abandoned its appeal the day before the hearing, but BB pressed for, and was allowed, costs off the normal scale.

Under section 46(2), a mark can remain on the Register if use has been made of a form of the mark which differs in elements which do not alter the distinctive character of the mark. Mr Thorley held that he first had to assess of the distinctive character of the mark. In the case of a word mark in stylised form, it was probable that the meaning and impact of the word would not only be an element of the distinctive character, but one of the most important elements. It was, however, unlikely to be the only distinctive element, since it was to be presumed that the stylisation was there for a purpose, to enhance the distinctiveness of the mark. Once the tribunal had decided on the elements that, in combination, contributed to the distinctive character of the mark, it should enquire whether any alteration to the elements was of sufficient immateriality as not to alter the overall distinctive character. Irrelevant to section 46(2) was whether the alteration "substantially" affected the distinctive character of the mark. The test under section 46(2) was of narrow scope.

In applying this test, Mr Thorley held that the elements that contributed to the overall distinctiveness of the first mark were:

1.  the word Budweiser; 

2.  the word Budbräu; 

3.  the specific fonts used for the two words and the contrast in the fonts; and 

4.  the interrelationship of the two words, one being above the other and following behind the enlarged "B" of Budbräu.

BB had only used the words in uppercase. Thus, features 3. and 4. set out above, being elements which contributed to the overall distinctive character of the mark as registered, were missing. Mr Thorley held that these two elements each contributed a part to the distinctive character of the mark. Therefore, BB had used the words Budweiser Budbräu in a form differing in elements which altered the distinctive character of the mark. AB's application was successful. In relation to the second mark, BB had used the words Bud-Budweis-Budweiser on a beer mat. The stylisation of the word Bud and the mark as registered were the same. Mr Thorley had to consider whether use on the beer mat was therefore "genuine use". He concluded that it was. Although the use was small in comparison with the amount of beer sold, it was used in the course of a genuine trade, to promote that trade. AB's application was unsuccessful.

Finally, Mr Thorley allowed BB's appeal against the costs awarded by the Hearing Officer. The Hearing Officer had held that, because BB had acted unreasonably in not admitting one point, he declined to exercise his discretion to award costs off the usual scale. Mr Thorley held that the fact that BB behaved unreasonably in a minor way did not deny them the right to seek an order off the usual scale because the conduct of AB had been unreasonable to a significantly greater degree in that AB had unnecessarily burdened the case with a large amount of irrelevant evidence.

Imperial Tobacco Ltd v. Berry Bros & Rudd Ltd (Jacob J.; 31.10.01)

Jacob J. dismissed the appeal from the Registrar who had refused the application for the mark CUTTY SARK in class 34 (tobacco) in the light of the opposition by Berry Bros. The opponents were the proprietors of a registered trade mark comprising the words "Cutty Sark", a picture of the well-known ship and the words "blended Scots whisky" all in a picture frame. This trade mark was registered in class 34 for smokers' articles.

Following recent judgments of the ECJ, Jacob J had to take into consideration the reputation of the mark when considering the opposition. Berry Bros own a brand of whisky called Cutty Sark. In support of their opposition, they put in evidence which, somewhat to Jacob J.'s surprise, did not directly address the issue of reputation or goodwill in the UK. Despite this, Jacob J. held that, although Cutty Sark whisky is hardly sold in the UK, the evidence showed that it was so extensively promoted and sold abroad that it prima facie must have a significant reputation in the UK by virtue of spillover. This was sufficient to shift the burden to the defendant to show that, not withstanding the massive external user, there had been no effective use in the UK. Furthermore, the mark was highly distinctive per se for whisky or cigarettes. Because of this and the natural association between smokers' articles and tobacco and spirits and tobacco, the opposition succeeded.

Appeals from OHIM

Signal Communications Ltd v. OHIM (CFI; 15.11.01)

The applicant applied to register TELEYE in class 9 for video systems. The application claimed priority from a US application TELEEYE. The claim to priority was refused because of the differences in the marks. The applicant then applied to amend the application to TELEYE. This was refused because the application to amend substantially changed the mark. The Board of Appeal upheld this decision.

The CFI allowed the appeal from the Board of Appeal. The CFI held that an application for a CTM accompanied by a claim of priority would not automatically be accepted, but was subject to examination by the Office to ascertain whether all the requirements had been satisfied. In this case, it must have been evident to the Office that a typographical error had been made and that the applicant's intention was to register its earlier mark TELEEYE. When considering the application to amend, therefore, the Office should have had this in mind. The request for correction was directly linked to the claim of priority. The correction sought was in no way abusive and did not entail substantial alteration to the trade mark. Therefore, the Board of Appeal was wrong in refusing the application to amend and, in consequence, the claim to priority.

Erpo Möbelwerk GmbH v. OHIM (CFI; 11.12.01)

The CFI annulled the decision of the Board of Appeal, which had refused to allow registration of DAS PRINZIP DER BEQUEMLICHKEITE (in English "the principle of comfort") in classes 12 (land vehicles) and 20 (household furniture) under Articles 7(1)(b) and (c) of the Regulation. The CFI held that, under Article 7(1)(c), even if the "Bequemlichkeite" element designated, on its own, a quality of the goods concerned, the mark as a whole when considered on the basis of all its elements and read in its entirety could not be regarded as consisting exclusively of signs or indications which might serve to designate the quality of the goods concerned. Since the Board of Appeal has based its decision under Article 7(1)(b) on the same basis as its position under Article 7(1)(c), that too was annulled.

Infringement

PAG Ltd v. Hawk-Woods Ltd (Pumfrey J.; 18.10.01)

The proprietor of the trade mark PAG registered in class 9 in respect of electric batteries etc was successful in an application for summary judgment. The claimant sold batteries with a PAG LOK for attaching the batteries to certain apparatus. When the batteries were spent, the defendants opened the cases manufactured and sold by the claimant and replaced the cells, returning the batteries to the customer. In doing so, the defendants either replaced the casing or over-stickered the trade mark PAG appearing on the casing. However, the trade mark PAG appeared twice on the PAG LOK both on the original and the reconditioned batteries.

Pumfrey J. held that this amounted to an infringement of section 10(1) and that there was no defence under section 10(6) because the word PAG as it appeared on the reconditioned cells was plainly not used in relation to the PAG LOK alone. The reconditioned cells were substantially new cells and were not "those of the proprietor". (Pumfrey J. referred to the patent case United Wire v. Screen Repair Services HL [2001] RPC 439 in holding that a battery which had been recelled by the defendants was a new battery.) Finally, Pumfrey J. held that there was no defence under sections 11(2)(b) and (c). The two PAG trade marks appearing on the LOK on the reconditioned battery referred not only to the LOK itself but also to the battery. There was nothing in the evidence that suggested it was necessary to use the word PAG on the battery at all for any purpose.

Co-written with Rebecca Harrison.