Reported Trade Mark, Copyright and Confidential Information Decisions for April 2002

27 April 2002

Katharine Stephens

Registry Decisions

(available at the Patent Office web sitewww.patent.gov.uk/tm/ legal/decisions/index.htm). 



















































 BL No. Later Mark Earlier Mark Goods/Services  [1] Comment
 O/275/01 REZACTRA RESACTPharmaceutical and medicinal preparations and substances (5)Application for a declaration of invalidity succeeded under ss 47(2)(a) and 5(2).  On a side by side comparison, there was no direct confusion.  However, on the basis of imperfect recollection, the similarity was such that at the very least, the goods might be thought to emanate from the same trade source.  The applicant for invalidity argued that since RA was seen as an abbreviation for rheumatoid arthritis, the later mark could be seen as REZACT.  Alternatively, the earlier mark might be used with the RA suffix. This was rejected as it required speculation about future use of the mark.
 O/276/01 BLUE Catering, restaurant, café and bar services (42)Opposition failed under ss 3(1)(b) and (c). BLUE was not descriptive of the relevant services and its allusion to “cool” or “refreshing” did no more in creating an image than many other similar words.
 O/304/01 SUREFIRE (stylised word) SUREFIRE (unregistered) Fuels (4)Application for a declaration of invalidity succeeded under ss47(2)(b) and 5(4)(a). It failed under ss3(1)(b) and (c). In relation to the latter, although the mark alluded to the capability of the goods, it was not descriptive of them.  The use by the registered proprietor of the dictionary meaning of the word to promote the goods did not automatically render the mark open to objection.
 O/313/01 Smiley face device (series) Smiley face device (unregistered) Clothing and footwear (25)Appeal to the appointed person, G. Hobbs Q.C.  Opposition successful under s3(1)(b), but not under ss3(6) or 5(4).  That the applicant had made its application following an attack on its use of the mark in France by the opponent, did not indicate that the application was made in bad faith (s3(6)).  The use of the smiley face by rival suppliers of the relevant goods at the date of application would not have given rise to any likelihood of deception.  The mark was therefore unobjectionable under s5(4), but equally was unacceptable for registration under section s3(1)(b).
 O/315/01 TEQUILATEQUILA (unregistered, alcoholic drinks)Paper, printed matters, advertising and business services  (16, 35)Opposition failed under ss 3(1)(d), 3(3)(b) and 5(4)(a).  The services and goods of the parties were too far removed to give rise to any confusion.  The mark was not customary in the language of the trade for the goods or services specified by the applicant and was therefore capable of registration.
 O/323/01 FROSTBITES (series) FROSTIES Breakfast cereal (30)Opposition failed under ss 5(2)(b) and 5(4)(a).  The word “frosted” in relation to cereals and confectionery was a generic term.  It was accepted that the opponent had a very strong reputation in their mark.  However, the applicant’s mark consisted of an ordinary dictionary word and that word was not descriptive of the goods in question.  The opponent’s mark on the other hand was made up.  That the applicant’s mark would possibly be reminiscent of the opponent’s mark was not enough to give rise to a likelihood of confusion.
 O/324/01 AWEARA-WEAR (clothing, footwear, headgear (25))Printed publications, charitable fundraising, provision of fashion and clothing related training courses, inspection of buildings related to fashion and clothing industry (9, 16, 36, 41, 42)Opposition failed under s5(2)(b). There were clear visual and aural similarities between the marks.  However, the opponent only had dealings with manufacturers and suppliers in the UK, and not direct dealings with consumers.  In effect, the opponent had no customers in the UK that were relevant for considering a likelihood of confusion.  The uses of the goods and services were different.  Even though the applicant’s services might be used by manufacturers and suppliers, as well as individuals, there was no likelihood of confusion in this potential occurrence.

 [1] Indicates goods or services of the applicant only, unless those of the opponent are identical or so close as to be considered identical.

Copytight - Damages  

The following cases all relate to the issue of assessing damages for copyright infringement. Each case (with the exception of MCA Records v. Charly Records) takes as its starting point the principles stated by Lord Wilberforce in the patent case General Tire v. Firestone [1975] 1 WLR 819. 

Ludlow Music Inc v. Robbie Williams & Ors (Pumfrey J.; 14.2.02)

In summary proceedings, Robbie Williams was held to have infringed copyright in the lyrics to the song “I am the Way (New York Town)” in his song “Jesus in a Camper Van” – copying had been “substantial, but only just”, [2001] FSR 271.  At the trial of the remaining issues, Pumfrey J. held that the claimant was entitled to a final injunction and damages at a rate of 25% royalty share, but not to additional damages under section 97(2) of the CDPA 1988.

General Tire did not deal with the question, common in copyright cases, of derivative works which themselves attract copyright.  Furthermore, it was common in the trade for the copyright owner to demand a share of the copyright in the derivative work as well as a payment.  The two issues were inseparable and had to be considered together.

Pumfrey J. held that where, as here, it was accepted that some form of royalty or profit share was an appropriate basis for damages rather than a claim on the basis of the claimant’s lost profits caused by the defendant, he should look to the royalty rate which would be agreed between a willing licensor and licensee. The claimant wanted 50% of the income, the defendant offered 12%.  Pumfrey J. awarded damages at a 25% royalty share since not only was the amount copied relevant to the question of damages, but it had also been of assistance to Mr Williams.  In not awarding additional damages, Pumfrey J. found that as the defendants genuinely and reasonably expected to be able to reach a licensing agreement with the claimant and that they had not acted cynically or flagrantly in choosing not to delay the release of the album containing the infringing lyrics. 

In granting the final injunction, Pumfrey J. emphasised that, in the case of opyright infringement, the presumption is that a successful claimant should be entitled to a final injunction unless it had in any way disentitled itself to injunctive relief.  The injunctive relief granted would apply to all future pressing of “Jesus in a Camper Van” and would put the claimant in the position of owning a joint share in the copyright in the lyrics.

Blayney (t/a Aardvark Jewellery)  v. Clogau St Davids Gold Mines Ltd & Ors (Lewison Q.C.; 20.7.01; C/39/01)

The defendants, owners of a Welsh gold mine, admitted infringement of copyright in a ring design called “Lovers’ Twist”.  The claimant elected an inquiry as to damages. The claimant submitted that the burden of proof was on the defendant in relation to the claim to lost profits such that it should be presumed that any sales made by the defendants would have been made by the claimant unless the defendants proved to the contrary.  Mr Lewison held that this was not correct.  At all times, the burden of proof was on the claimant to prove his loss.

The claimant submitted, and Mr Lewison accepted, that during the period of infringement, the claimant would have sold to retailers and direct to the public in the same way as the defendants had done.  However, during the period where the claimant did not incorporate Welsh gold into his design (Welsh gold being a selling point), Mr Lewison held that the claimant would only have made 10% of the sales made by the defendant to retailers.  This rose to 25% when the claimant incorporated Welsh gold into his ring design.  Finally, the deputy judge held that just under 10% of sales which the defendants made directly to the public would have been made by the claimant. The claimant was awarded his notional profit for these lost sales amounting to approximately £18,500.

Under normal circumstances, a notional royalty would have been payable on the defendants’ remaining sales.  However, Mr Lewison held that in this case, there was no evidence as to what royalty rate should be applied and therefore the claimant had failed to discharge the burden of proof on this part of the case.  He awarded nothing under this head.  Finally, the case on flagrancy failed – no additional damages were awarded under section 97(2) CDPA.

Nottinghamshire Healthcare National Health Service Trust v. New Group Newspapers Ltd (Pumfrey J.; 14.3.02)

The defendant infringed the copyright in a photograph of a patient admitted to the claimant’s hospital.  The photograph had been taken from the patient’s medical records and had been leaked to the newspaper.  The defendant had published a copy in The Sun newspaper.  Under section 96 CDPA, Pumfrey J. assessed damages at £450, being the sum which would be negotiated between a willing copyright owner and the newspaper.  Under section 97(2), he awarded additional damages to bring the total award up to £10,000.

Pumfrey J. considered the question of whether, under section 97(2), he should, in awarding additional damages, make an award of both exemplary damages (to compensate the claimant for his loss and punish the defendant) and aggravated damages (to compensate for the injury to the claimant’s proper feelings of pride and dignity, humiliation, distress, insult or pain caused by the defendant).  He decided that additional damages were supposed to be compensatory, not punitive, and did not involve the imposition of a penalty.  Despite this, he held that section 97(2) is drafted in the widest terms and permits an award of damages upon a basis far wider than the factors admitted as aggravation at common law. In particular, it permitted an element of restitution having regard to he benefit gained by the defendant.  Consideration also had to be given to the flagrancy of the infringement, with its overtones of dishonesty and intentional wrong-doing.

MCA Records Inc v.  Charly Records Ltd (Simon Brown, Chadwick and Tuckey L.JJ.; 5.10.01; [2002[ EMLR 1)  

This was a long and complex judgment and only one aspect is reported in this summary.  The Court of Appeal dismissed the appeal from Rimer J. [2000] EMLR 743 who had directed that there be an inquiry as to damages, “including additional damage pursuant to section 97 [CDPA] for the period after 11.9.92 [the date on which the defendant had knowledge of the judgment in the action brought by the first claimant in California]”.  The judge was entitled to hold that continued infringement from this date was flagrant.  However, the order would have been better drawn had it stated that “in considering whether the justice of the case requires an award of additional damages under section 97(2), the court taking the inquiry should have particular regard to the findings as to the flagrancy of the infringement made in the judgment”.  Thus the trial judge could indicate to the court hearing the inquiry his views on flagrancy, while not determining something outside his jurisdiction, that is, not determining whether the flagrancy of the infringement, taken together with all the other circumstances to which the CDPA requires the court to have regard, was such as to lead to the conclusion that “the justice of the case” required an award of additional damages.  That was something for the judge hearing the inquiry to decide. 

Confidentiality 

Inline Logistics Ltd v. UCI Logistics Ltd (Kennedy, Mummery, Sedley L.JJ.; 11.10.01)

Inline provided a design drawing to UCI for the design of a warehouse belonging to UCI.  UCI intended to include the drawing in a tender to Kimberley-Clark.  A week before the tender had to be submitted, Inline either refused to complete the drawing or was unable to do so.  UCI therefore used the services of a third party and inserted that third party’s drawing into the tender.  Inline claimed that, by using its drawing, UCI had used its confidential information. Before Ferris J. (unreported, 31.7.00), the claim failed.  The Court of Appeal dismissed the appeal.

The Court of Appeal upheld the judge’s finding that confidential information resided in a combination of six design elements, but did not reside in each element individually, nor did it reside in the drawing as a whole.  The combination was not “a non-selective list of publicly available information” (an echo of Laddie J. in Ocular Sciences [1997] RPC 289).  However, it was on the borderline of what the court would protect. By a majority, the Court of Appeal upheld the judge’s decision that the combination was not used by UCI and the third party.  Since it was the combination which was confidential, only use of all elements of the combination together would be use of Inline’s confidential information.  Finally, the Court of Appeal upheld the judge’s finding that Inline had provided the drawing to UCI for inclusion in the tender and therefore had impliedly consented, or if not, acquiesced, to UCI’s use of it for that purpose.

B & C v. A (The Lord Chief Justice, Laws, Dyson L.JJ.; 11.3.02)

The Court of Appeal allowed the appeal.  The interim injunction awarded to footballer A preventing newspaper B publishing details of his affairs with women C and D was set aside.  The law of confidentiality protects facts concerning sexual relations in marriage, Argyll v. Argyll [1976] Ch 302, and this could be extended to other relationships.  In this case, however, the degree of confidentiality to which A was entitled was very modest, as C and D did not wish their relationship with A to be confidential.  In the circumstances, preventing publication was an unjustified interference with the freedom of the press.

The Court of Appeal commented adversely on the number of authorities before it and sought to establish guidelines for the hearing of interim applications for breach of confidentiality.  They are as follows:

1.  Whether an injunction is granted is a matter of discretion for the judge; 

2.  The importance of the injunction to the claimant has to be weighed against the defendant’s right of freedom of expressions (Article 10 of the European Convention on Human Rights and section 12 of the Human Rights Act 1998); 

3.  Section 12(3) of the 1998 Act provides that no relief is to be granted “so as to restrain publication before trial unless the court is satisfied that the applicant is likely to establish that publication should not be allowed”.  “Likely” is slightly higher in terms of probability than the American Cyanamid test of “a real prospect of success”, but nothing much appears to turn on it (Imutran Ltd v. Uncaged Campaigns Ltd [2002] FSR 20).  There is no conflict between section 12(3) and the Convention; 

4.  The common law considerations of freedom of expression and freedom of the press were underlined by section 12(4) of the 1998 Act.  Any interference with the press’ freedom must be justified

5.  The fact that the court under section 12(4) has to have regard to whether it is in the public interest for the material to be published does not alter guideline 4 above; 

6.  At first instance, the vexed question of whether a separate right of privacy exists need not be tackled. In the great majority of situations, if not all, an action for breach of confidence will, where appropriate, provide the necessary protection; 

7.  Detailed argument on whether there is an interest capable of being the subject of a claim for privacy should not be allowed - if it exists, it should be obvious; 

8.  The same is true of the public interest - if it exists to strengthen the case for not granting the injunction, it should be obvious. In the grey areas, it is unlikely to be decisive; 

9.  A duty of confidence will arise whenever the party subject to the duty is in a situation whether he either knows or ought to know that the other person can reasonably expect his privacy to be protected.  The existence of such a relationship is a question of fact, not law; 

10.  If there is an intrusion in a situation where a person can expect privacy (e.g. bugging someone’s home), then the intrusion can give rise to liability in an action for breach of confidence, unless it can be justified; 

11.  More difficult is the situation where one party to the relationship giving rise to a duty of confidentiality (such as a marriage) wishes to exercise their right to freedom of expression without consent of the other.  The right of the first party to freedom of expression does not extinguish the other party’s right to confidentiality; 

12.  Public figures have a right to privacy.  However, if someone has courted publicity, they have less grounds to complain of intrusion.  Guidance in finding the right balance is provided by the Council of Europe Resolution 116 5 of 1998; 

13.  The court should not be censors or arbiters of taste; 

14.  Section 12(4) of the 1998 Act provides that the court should take into consideration any relevant privacy code - but these codes are only one of a number of factors to be taken into account.

Naomi Campbell v. Mirror Group Newspapers* (Moreland J.; 27.3.02)

Ms Campbell’s claim to breach of confidentiality and breach of the Data Protection Act 1998 was successful.  She was awarded £2,500 in damages and £1000 in aggravated damages.  

It was not disputed that The Mirror was entitled to print that Ms Campbell, contrary to her previous assertions, was a drug addict and was having therapy.  But, details and photographs of her attendance at Narcotics Anonymous (“NA”) had the necessary quality of confidence as they bore the badge of confidentiality and were obtained surreptitiously.  They were imparted through a source at NA or in Ms Campbell’s entourage in circumstances importing an obligation of confidence and The Mirror journalists were therefore clothed with the duty of confidentiality.  Finally, publication was to Ms Campbell’s detriment. 

1Under the Data Protection Act 1998, section 1(1), Ms Campbell was the “data subject”; the details of her therapy and the photographs were “personal data”; The Mirror was the “data controller” and the obtaining, preparation and publication of the personal data was “processing”.  Since the details and photographs related to Ms Campbell’s drug addiction i.e. her physical or mental health or condition, the personal data was “sensitive personal data”.  This sensitive personal data had not been processed fairly by The Mirror under the First Data Protection Principle as it had not been obtained fairly and its processing did not fall under any one of the conditions in either Schedule 2 or 3 of the Act.