Reported Trade Mark Cases for December 2003

29 December 2003

Katharine Stephens


Joint Cases - Henkel KGAA v Office for Harmonisation in the internal market (OHIM) and Proctor & Gamble C v Office for Harmonisation in the internal market (OHIM) (A.G. Opinion; Cases 456/01 and 468/01; 6.11.03)

In his opinion A.G. Ruiz-Jarabo Colomer recommended the ECJ to dismiss the appeals and to uphold the decision of the CFI.  

Appellants, Henkel and Procter & Gamble filed 3-dimensional Community trade marks for their respective washing up tablets. In the case of Henkel their tablets were rectangular, each composed of two layers, white and red, white and green etc. Procter & Gambles' tablets were square with slightly rounded edges and corners, also with two layers in white and pale green, white with yellow and blue speckles and other colours combinations together with rectangular tables with chamfered edges and slightly rounded corners and with speckles and a dark depression in the centre of the upper surface.    

The applications were refused on the ground that the signs were devoid of distinctive character required by Art.7(1)(b) Council Regulation No 40/94. The decisions were first appealed to OHIM's Boards of Appeals and then to the CFI.    

The CFI concluded that the Board of Appeal was right to hold that the three-dimensional mark at issue was devoid of any distinctive character. The CFI reiterated that a mark has distinctive character if it enables the goods or services in respect of which registration of the mark has been sought to be distinguished as to their origin. For that purpose a minimum degree of distinctive character is sufficient to render the ground for refusal set out in Article 7(1)(b) inapplicable. On the other hand, Art 7(1)(b) does not distinguish between different categories of trade marks in particular three dimensional. Nevertheless, account must be taken of the fact that in contrast to other categories of trade mark, the public is not necessarily used to recognise three-dimensional trade marks consisting of the shape and colours of the product itself as signs identifying the product’s commercial origin.

The CFI also maintained that the distinctive character of the mark should be assessed from the point of view of an average consumer who was reasonably well informed and reasonably observant and circumspect. The CFI held that a rectangular or round tablet were basic geometrical shapes and were obvious for a product intended for use in washing machines or dishwashers. In respect of the coloured superimposed layers the CFI pointed out that the relevant public were used to detergents containing different coloured components to indicate the presence of various active ingredients, so the argument that consumers may get into the habit of recognising the product from its colours is not enough. The differences in their appearance were not sufficient to act as an indication of the product’s origin.

The AG agreed with the CFI in that a three-dimensional sign is distinctive when it stands out from the usual get-up of the goods or when the consumer, on looking at it, does not necessarily have the impression that he is perceiving it as an example of the relevant category or quality.

The AG noted that nothing in Article 12 of the Regulation allows the assessment of the distinctive character of a trade mark to be transferred from the Office, on registration to the courts responsible for ensuring that the rights conferred by the mark are exercised in practice.

He also concurred with the CFI in that when assessing distinctiveness what is decisive is not the number of products on the market but the way in which the average consumer perceives them. The AG accepted that although the definition of the person by reference to whom the distinctive character of a sign is assessed is a matter of law, the precise way in which it is assumed that a given category of products is perceived or the precise qualification warranted by the products, are matters of fact, which may not be reviewed on appeal. He concluded that therefore, the finding made in this respect by the Court of First Instance could not be re-examined.

On the point of actual distinctive character, both Appellants submitted that the Court of First Instance applied an incorrect test of their distinctive character. They submitted that the fact that the sign takes the form of a basic geometric shape is of no significance, provided that the shape is unusual for the product to which it relates.

However, in the AG's opinion the test used by the Court of First Instance was correct: It is of course, in the general interest to prevent certain operators from appropriating to themselves three-dimensional shapes which are useful from an aesthetic or technical point of view, or from monopolising certain signs apt to describe the product per se.

Shield Mark BV v Joost Kist h.o.d.n. Memex (ECJ (Sixth Chamber) Case C-283/01; 27.11.03)

In this decision the ECJ finally confirmed that sounds are registrable as Community trade marks and clarified how sounds marks should be represented when applied for.

Shield mark is the registered proprietor of 14 Benelux trade marks for various products and services in classes 9 (computer software), 16 (magazines, newspapers, etc) 35 (publicity business management etc.) 41 (education training, organisation of seminars on publicity, marketing intellectual property and communications in the business sector etc) and 42 (legal services).

Four of those trade marks consist of a musical stave with the first nine notes of the musical composition Fur Elise by Ludwig van Beethoven. Two of them also state: Sound mark. Consists of the representation of the melody formed by the notes (graphically) transcribed on the stave, plus in one case, played on a piano.

Four other trade marks consist of the first nine notes of Fur Elise. Two of them also state: Sound mark. The trade mark consists of the melody described, plus in one case, played on a piano.

Three further marks consist of the sequence of musical notes, E, D#, E, D#, E, B, D, C, A. Tow of them also state: Sound mark. The trade mark consists of the reproduction of the melody formed by the sequence of notes as described plus in one case played on a piano.#

 Two of the trade marks registered by Shield Mark consist of the denomination Kukelekuuuuu (an onomatopoeia suggesting, in Dutch, a cockcrow. One of them states: Sound mark, the trade mark consists of an onomatopoeia imitating a cockcrow.

Finally, one mark consists of a cockcrow and also states: Sound mark, the trade mark consists of the cockcrow as described.

Shield Mark used the first nine notes of Fur Elise in an advertising campaign. Similarly, they also published software for lawyers and marketing specialists and each time the disk containing the software started up a cockcrow was heard.

On the other hand, Mr Kist who operates as a communications consultant in particular in advertising law and trade mark law, organises seminars on intellectual property and marketing and publishes a review dealing with those matters. In one of its advertising campaign Mr Kist used a melody consisting of the first nine notes of Fur Elise and also sold a computer program which, when starting up, emits a cockcrow.

Shield Mark sued Mr Kist for trade mark infringement and unfair competition.

In May 1999 the Gerechtshofte’s Gravenhage found for Shield Mark in respect of the unfair competition claim but dismissed trade mark infringement on the ground that sounds were not registrable as trade marks within the Benelux.

Shield Mark appealed to the Hoge Raad der Nederlanden which stayed the proceedings and to refer questions to the Court concerning the interpretation of Article 2 of the Trade Marks Directive in relation to sounds or noises registered as trade marks.

The Court held that Article 2 does not contain an exhaustive list of signs of which a trade mark may consist. All signs capable of serving to distinguish an undertaking’s products or services from those of other undertakings may, in principle, serve as trade marks. Article 2 of the Directive must be interpreted as meaning that sounds may constitute a trade mark, on condition that they may also be represented graphically.

The Court was also asked to state the conditions on which a sound sign is capable of being represented graphically within, whether musical notes, a written description in the form of an onomatopoeia, a written description in some other form, a graphical representation such as a sonogram, a sound recording annexed to the registration form, a digital recording accessible via the internet, a combination of those methods, or any other form meet the requirements of graphical representation.

On the basis that Shield Mark had not filed any applications in the form of a sonogram, a sound recording or a combination of those methods, the Court declined to rule on a question referred by a national court for a problem is hypothetical. An answer cannot be provided to the question in so far as it relates to those modes of representation.

Drawing a similarity with olfactory signs, The Court held that Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. Those conditions are also binding on sound signs.

As regards the representation of a sound sign the Court concluded that a graphical representation such as the first nine notes of Fur Elise or a cockcrow lacks precision and clarity and therefore does not make it possible to determine the scope of the protection sought.

The Court concluded that in an onomatopoeia, there is a lack of consistency between the onomatopoeia itself, as pronounced, and the actual sound or noise, or the sequence of actual sounds or noises, which it purports to imitate phonetically. Therefore, it is not possible for the competent authorities and the public, to determine whether the protected sign is the onomatopoeia which may be perceived differently, depending on the individual or from one Member State to another. A simple onomatopoeia cannot without more constitute a graphical representation of the sound or noise of which is purports to be the phonetic description.

Musical notes which are a common method of representing sounds a sequence of notes without more such as E, D#, E, D#, E, B, D, C, A, does not constitute a graphical representation for the purposes of Article 2. Such a description is neither clear nor precise nor self-contained, does not make it possible to determine the pitch and duration of the sounds forming the melody in respect of which registration is sought.

The Court concluded that a stave divided into bars and showing in particular a clef, musical notes and rests whose form indicates the relative value and where appropriate accidentals – may constitute a faithful representation of the sequence of sounds forming the melody in respect of which registration is sought. This mode of graphical representation of the sounds meets the requirements of the case-law of the Court that such representation must be clear precise self-contained, easily accessible, intelligible, durable and objective.

Even if such a representation is not immediately intelligible, the fact remains that it may be easily intelligible, thus allowing the competent authorities and the public in particular traders, to know precisely the sign whose registration as a trade mark is sought.

Heron Robotunits GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Court of First Instance (Fourth Chamber) Case T-222/02; 26.11.03)

This was an appeal against the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) refusing to register the word mark ROBOTUNITS as a Community trade mark on the basis that the word was descriptive of goods concerned.

The applicant Heron filed at OHIM an application for a Community word mark for ROBOTUNITS in respect of classes 6, 7 and 9 in particular: Profiles of metal guide rails of metal, shaped static elements, shaped connecting elements, guides for machines, straight-line and longitudinal guides, pressure cylinders, linear cylinders with various types of drive system shaped pneumatic elements, conveyor belts, striking systems with position controls.

The applicant appealed the examiner's refusal but proposed to limit the goods to profiles of metal, shaped static elements, shaped connecting elements.

The First Board of Appeal dismissed the appeal on the ground that Article 7(1)(c) prevented the registration of the word mark ROBOTUNITS as it could serve to designate the intended purpose of the goods in respect of which registration was sought. It held that the noun ROBOTUNITS taken as a whole is robot unit or robot part and there is a direct and immediate relationship between the goods covered by the trade mark applied for and that mark, which thus unequivocally describes the intended purpose of the goods namely the fact that those goods may be used for the assembly of automated and programmed machines or the fact that they are installed in assembled machines.

The Court held that the goods covered by the trade mark application include in particular components of machines or assembled machines which may operate automatically or be programmed. It noted that it is also generally known that machines of that type are nowadays used in all sectors, whether in factories for the assembly of motor cars or for the transport of goods, in which case conveyor belts may be involved.

The Court concluded that the target public in respect of which it is necessary to assess the absolute ground for refusal is a specialised English-speaking public. It also established that the sign would not be perceived as unusual by the consumer concerned as ROBOTUNITS is composed of two English nouns and there is nothing unusual about its structure. 

The Court found that the sign ROBOTUNITS taken as a whole may serve to designate one of the possible intended purposes of all the goods covered by the application for registration. The Court acknowledged that the goods designated may be in parts unconnected with an automated machine and that ROBOTUNITS is not therefore descriptive of all the goods within the categories of goods in respect of which registration is sought. However, since the applicant did not limit its application by excluding the use of the goods referred to as robot parts, the fact that the sign in question may serve to designate one of the possible intended purposes of the goods covered by the trade mark application is the sufficient basis for refusing registration and it therefore dismissed the action.

Appeal: 1938 Act

E I Du Pont de Nemours v S T Dupont [2003] EWCA Civ 1368 Court of Appeal (Aldous LJ, May LJ, Keene LJ) 10 October 2003

This was an appeal by E I Du Pont (EIDP) from the decision of Neuberger J, upholding the opposition of S T Dupont (STD) and allowing STD to register its trade mark against EIDP’s opposition. STD had opposed EIDP’s application to register the mark DU PONT in Class 25 for clothing on the ground the mark was not distinctive and was incapable of being distinctive.

Reversing the Hearing Officer’s decision, the Judge had allowed STD’s amendment to plead that DU PONT (as one or two words) was a common French surname capable of being distinctive under s.9 and s.10 of the Trade Marks Act 1938. Neuberger J had also upheld the surname point as a ground of opposition. The Judge also reversed the Hearing Officer’s rejection of STD’s argument under s.11 of the 1938 Act that, due to STD’s long use of the name DU PONT in relation to clothes, EIDP’s proposed registration should not be permitted on the ground it would be likely to deceive and cause confusion.

The Court of Appeal held that the Judge had been wrong to allow STD’s amendment to plead the common surname objection, because the late amendment tended to prejudice EIDP. As a result the s.9 and s.10 objections failed.

Aldous LJ held that in any event the Judge had been wrong to hold that the fact the name DU PONT appeared in the Paris telephone directory more than 800 times was conclusive as regards whether the trade mark DU PONT was capable of distinguishing EIDP’s clothes in the UK. While Registry Guidelines were useful to help practitioners as to the general attitude of the Registry, they could not provide a shortcut to avoid considering the test laid down in section 10. The Hearing Officer had been right in holding that if the mark was distinctive of EIDP when used in relation to fibres and fabrics, then it was capable of distinguishing clothes produced by EIDP.

The Court of Appeal also found that the s.11 objection failed. The questions to be considered were firstly, whether at the date of the application use of the trade mark would be likely to deceive or cause confusion, and secondly whether as a result of that, the mark would not have been entitled to protection in a court of law. The extent and type of user by an opponent such as STD of a mark such as a surname which was not distinctive was relevant to deciding whether the mark would be disentitled to protection in a court of law. EIDP would not have been disentitled to protection of the DU PONT name on menswear against a rival trader. It had used the DU PONT mark for many years for fabrics and it was distinctive. STD’s use of a similar name on menswear was in only two outlets and had started after the DU PONT mark had become distinctive of EIDP’s fabric. Such use by STD was so limited in extent and area that use of DU PONT by EIDP in relation to menswear would not be reasonably likely to cause deception or confusion.

There was also a second appeal. STD had also applied to register DU PONT in Class 25. The Judge had rejected EIDP’s opposition to that registration. The Court of Appeal also reversed that decision, holding that, since STD’s use of the trade mark in the UK would be liable to be prevented by the law of passing off registration should be refused under s.5(4)(a) of the Trade Marks Act 1994.

The Court of Appeal also held (again reversing Neuberger J) that an appeal under the 1938 Act was subject to the provisions of CPR 52.11 including the rules relating to fresh evidence. A “rehearing” in CRP 52 had a range of meanings, including a “review” function.