Reported Trade Mark Cases for January 2003

15 January 2003

Katharine Stephens

Websites at which those decisions/opinions marked with an asterisk can be found are as follows:


High Court:

Appeals from Registry decisions (OHIM and UK)

Ref no.  [2002] EWHC 26902 (Ch)
Application (and where applicable, earlier mark)  

LAZYBONEZ (furniture, 20)


LA-Z-BOY, LAZY BOY (chairs, 20)

Comment Pumfrey J. dismissed the appeal and upheld the decision of the hearing officer.  The opposition under s 5(2)(b) was rejected – although there were similarities between the marks, any association would be no more than of a superficial nature.

Ref no. [2002] EWCA Civ 1888*
Application (and where applicable, earlier mark) GERBER, GERBER + dev (baby foods, 5)
Comment The Court of Appeal upheld the decision of the Vice Chancellor.  The application to revoke the mark for non-use under the 1938 Act failed.  A short and limited test marketing exercise amounted to bona fide use.  The key to the test of bona fide use is whether (1) there has been some use; and (2) it is not “pretended use” - which necessarily requires an examination of intention.  There was no separate or additional test of “objective genuineness”, whether by reference to ordinary commercial standards or substantiality of use by reference to such standards.

Ref no. T-39/01*
Application (and where applicable, earlier mark) 

HIWATT (amplifiers, 9)


HIWATT (German, French, Italian registration – electronic apparatus, 9)

Comment The CFI upheld the decision of OHIM which had dismissed the opposition – the opponent’s evidence (a catalogue said to be distributed at a trade fair) was insufficient to demonstrate genuine use of its mark.  The CFI held that “if the trade mark is not objectively present on the market in a manner that is effective, consistent over time and stable in terms of the configuration of the sign, so that it cannot be perceived by consumers as an indication of the origin of the goods …, there is not genuine use”.  Further, the mark has to be present in a substantial part of the territory where it is protected by registration.

Ref no. T-6/01*
Application (and where applicable, earlier mark) 

MATRATZEN MARKT CONCORD + device of a man carrying a mattress (mattresses, beds, blankets, 10, 20, 24)


MATRATZEN (Spanish registration - furniture, beds, mattresses, 20)

Comment The CFI dismissed the appeal and upheld the decision of OHIM - the application was refused under Art 8(1)(b) as the marks, in Spain, would be seen as confusingly similar.  The CFI held that a complex mark will not be similar to a mark which is identical or similar to one of it components, unless that component forms a dominant element within the overall impression created by the complex mark.  An element or elements dominate when all other components are negligible in the overall impression.  Account has to be had to the intrinsic qualities of each element and its relative position.  In this case MATRATZEN was the dominant element of the mark applied for (not being descriptive in Spanish).

Ref no. T-63/01*
Application (and where applicable, earlier mark) 3-D soap bar shape (soap, 3)
Comment This application had been before the CFI ([2002] ECR II-265) and had been remitted back to OHIM on the basis that the Board of Appeal had exceeded it jurisdiction in not allowing the applicant to submit observations on new grounds of refusal.  OHIM then refused the application under Art 7(1)(b) and that decision was upheld by the CFI.  There was nothing distinctive about the shape – the concave sides would be seen as making the soap easier to grip or as an aesthetic feature, not as having trade mark significance.

Ref no. T-247/01*
Application (and where applicable, earlier mark) ECOPY (software etc enabling electronic distribution of documents over networks, 9)
Comment The CFI upheld the decision of OHIM to refuse the application under Arts 7(1)(b) and (c).  The Board of Appeal had been right in refusing to consider evidence of use post dating the date of the application – under Art 7(3) the mark had to have become distinctive before the application was filed.  Yet further evidence of use filed before the CFI was not considered because it did not call into question the legality of the Board’s decision.

Olfactory marks

Sieckmann v. Deutsches Patent und Markenamt* (ECJ; 12.12.02; C-273/00)

The German patent office rejected an application to register an olfactory mark in classes 35, 41 and 42.  The application was made up of (1) the chemical formula, C6H5-CH = CHCOOCH3, methyl cinnamate; (2) a description, being “balsamically fruity with a slight hint of cinnamon”; and (3) a sample.  On appeal, the Bundespatentgericht referred two questions to the ECJ.  

The ECJ held, firstly, that Art 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 the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.  Secondly, the ECJ held that, in respect of an olfactory sign, the requirements of graphic representability were not satisfied by:

1.  a chemical formula – not sufficiently intelligible, does not represent the odour, but the substance, and not sufficiently clear and precise;    

2.  a description in written words – not sufficiently clear, precise and objective;    

3.  the deposit of an odour sample – not a graphic representation and not sufficiently stable or durable; or    

4.  a combination of 1 to 3 above.  

Shape Marks

Société de Produits Nestlé SA v. Unilever plc* (Jacob J.; 18.12.02)

Unilever applied to register two shapes for its ice cream dessert product Viennetta: the “white mark” and the “dark mark”.  The dark mark was similar to the white mark but with dark chocolate on top; the layers were also different in number and arrangement.  The dark mark product was the original form of Viennetta that had been in use since 1982.  The white mark product was launched in the mid 1990s.  The hearing officer rejected Nestlé’s opposition to the dark mark, but upheld the opposition in relation to the white mark.  Both sides appealed.

Nestlé submitted that Viennetta had always been sold under the marks “Viennetta” and “Wall’s” and that the product was three-dimensional ice-cream with chocolate got up in a fancy way.  The shape therefore arose from the nature of the goods and was not registrable under Art 3(1)(e)(i) of the Directive.

Jacob J. considered the three formulations for applying the test under Art 3(1)(e)(i) which had been put forward in Philips:  (1) “the goods” meant the goods in the specification (Aldous L.J.); (2) “the goods” referred to how the goods were perceived as articles of commerce (Jacob J.); and (3) naturally occurring shapes rather than artificially created shapes such as a Viennetta (A.G. Colomer).  Jacob J. held that on any of these formulations Nestlé’s opposition would fail, but that the matter was sufficiently uncertain to refer a question on it to the ECJ (see post).

Given the strong promotion of the Viennetta product it was not surprising that the survey evidence showed that a significant number of people recognised the product (the dark mark) as Viennetta.  The question was whether recognition of itself was enough to show distinctive character or whether a consumer had to identify the shape as a badge of origin.  Jacob J. held that, for 3-D signs to qualify as trade marks, mere recognition was insufficient.  Therefore, he would refuse registration of the dark mark and also the white mark (where there was no evidence of recognition).

Jacob J. further noted that while 67% of the pollees identified Viennetta as a Wall’s product, 15% thought that one or more other ice-cream products were Viennetta.  Thus, he held that he would also refuse registration of the dark mark because a minor, but nonetheless significant, proportion of the public would take other shapes in use by other traders as the shape mark applied for and therefore it had not acquired distinctive character.

Jacob J. held that these were uncertain points of law and referred various questions to the ECJ (paraphrased below):

1.  What is meant by “the nature of the goods themselves” in Art 3(1)(e)?    

2.  Where the shape of a product is merely shown to be recognised is that sufficient to prove that it has acquired a distinctive character?    

3.  If that is insufficient, must it also be proved that the shape is used and relied upon by the relevant public as a guarantee of trade origin?    

4.  If the public recognise a shape as the product of one trader, but a significant minority also regard other shapes in use by other traders as the shape applied for, has the shape mark acquired a “distinctive character”?


Davidoff & Cie SA & Anr v. Gofkid Ltd (ECJ; 9.1.03; C-292/00)

DAVIDOFF is registered in Germany in classes 14 (jewellery etc) and 34 (cigars etc).  Davidoff sought to annul Gofkid’s mark, DURFFEE, also registered in classes 14 and 34. The Bundesgerichtshof, in making the reference to the ECJ, considered the two marks to be similar (thus disagreeing with the appeal court below it), but that further findings of fact were necessary in order to determine whether there was a likelihood of confusion.

The ECJ held that Arts 4(4)(a) and 5(2) of the Directive (use which, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the earlier mark) are to be interpreted as entitling the Member States to provide specific protection for well-known registered marks in cases where a later mark, which is identical with or similar to the registered mark, is intended to be used or is used for goods or services identical with or similar to those covered by the registered mark.

In doing so, the ECJ did not follow A.G. Jacobs’ opinion ([2002] CIPA 303) that Arts 4(4)(a) and 5(2) are exhaustive and may not be supplemented by national rules protecting well-known marks.  Unlike A.G. Jacobs, who did not consider that there was a gap in protection between, on the one hand, Arts 4(1) and 5(1) and, on the other, Arts 4(4)(a) and 5(2), the ECJ took note of the fact that where there is no likelihood of confusion, Art 5(1)(b) could not be relied on by the proprietor of a well-known mark to protect himself against impairment of the distinctive character or repute of the mark.

Arsenal Football Club plc v. Reed (Laddie J.; 12.12.02)

In the light of the decision of the ECJ ([2002] CIPA 557), Arsenal invited Laddie J. to make an order finally disposing of this action, including the grant of a permanent injunction against Mr Reed.  However, Laddie J. accepted the defendant’s arguments that the ECJ had overstepped its jurisdiction and held that the defendant won on the issue of trade mark infringement.

In his original decision, Laddie J. held that the Arsenal signs on Mr Reed’s products, such as scarves, would be perceived as a badge of support, loyalty or affiliation.  They would not be perceived as indicating trade origin.  One of the questions he referred to the ECJ was whether, in these circumstances, Mr Reed had a defence to trade mark infringement.  On the law, the ECJ held that the essential function of the trade mark  was to guarantee the identity of origin of the goods or services and the exclusive right under Art 5(1)(a) was conferred for the purpose of protecting that essential function, but only for that purpose.  From such analysis, Laddie J. concluded that, where the defendant’s use of a mark was not intended by him, or understood by the public, to be a designation of origin, there could be no trade mark infringement because such use did not prejudice the essential function of the mark.  If that was correct, the ECJ should have answered his question in the affirmative.  However, the ECJ did not do that.  The ECJ only stated that in the circumstances of the case, Arsenal should succeed.  In doing so, it disagreed with the conclusions of fact that Laddie J. had reached a trial, indicating that Arsenal should win because Mr Reed’s use was such as would be perceived by some customers or users as a designation of origin.

As the ECJ had exceeded its jurisdiction, Laddie J. was not bound by its final conclusion.  The ECJ, on a reference, could not make findings of fact, nor reverse the national court on them.  Only the Court of Appeal had the jurisdiction to overturn or to make alternative or supplementary findings of fact from a decision of the High Court.  Therefore, the only course open to the judge was to apply the ECJ’s guidance on the law to the findings of fact which he had made.  In consequence, the defendant won on the issue of trade mark infringement.

Thomson Holidays Ltd v. Norwegian Cruise Line Ltd (Aldous, Waller & Scott Baker L.JJ.; 17.12.02)

Thomson was the proprietor of two trade mark FREESTYLE, registered in classes 39 and 42, for the provision of services relating to travel and tourism.  Thomson alleged that Norwegian had infringed the marks by promoting its cruises under the name FREESTYLE.  Norwegian denied infringement alleging that the marks, in so far as they covered cruise services, were invalid for five years non-use.  D. Young Q.C. sitting as a deputy judge held at first instance ([2002] CIPA 160) that the trade marks were invalid as they stood and amended their specifications to exclude services in relation to cruises on a cruise ship.  The judge found that there was no infringement of the amended specification.  The Court of Appeal overturned the decision.  The specifications were amended, but not in the same manner as at first instance, and it was held that the use by Norwegian was infringing use.

The case turned on the interpretation of section 46(5) and the construction of the specification of the marks.  At first instance Norwegian submitted and the judge found that cruises were a subset of holidays thus finding that it was necessary to “dig deeper” into the word holidays and extract the subset of cruises.  

Aldous L.J., giving judgment for the Court of Appeal, rejected the approach in Premier Brands [2000] FSR 767 and agreed with the decision of Pumfrey J. in Decon [2001] RPC 293.  The starting point for the Court was to find, as a fact, what use has been made of the mark.  The next task was to describe how the goods or services should be described in the specification.  Aldous L.J.’s view was that the specification should be limited so that it reflected the circumstances of the particular trade and the way that the public would perceive the use.  Aldous L.J. noted that the attitude of the reasonably informed consumer of the products was the test for confusion under section 10(2) and that the same attitude should be adopted when the Court decided the fair way to describe the use that a proprietor had made of the mark.  Although it was appropriate to “dig deeper” into the specification where the wording was very wide, here it did not follow from the fact that tourism has distinct segments that the specification of services should be so divided.  Thomson’s holidays would be referred to using a more general description such as “package holidays” which was in consequence added to both specifications.

Aldous L.J. held that there was infringement under sections 10(1) and (2).  In relation to the latter, Aldous L.J. stated that in Canon [1999] RPC 117 the test for the likelihood of confusion was stated in terms of a risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings.  The judge had adopted the higher test of whether the public would believe that the product was that of the proprietor or an associated product.  Further the judge failed to make an allowance for imperfect recollection.  In this case, since the marks were identical and were both used in relation to package holidays (although admitted different types of holiday) and were provided through the same trade channels, there was a risk that the average consumer, with imperfect recollection of the normal and fair use by the proprietor of FREESTYLE, would conclude that Norwegian’s cruises came from the same company or from an economically linked company.  

The Fund-Worldwide Fund for Nature (formerly World Wildlife Fund) & Anr v. World Wrestling Federation Entertainment Inc v. THQ/Jakks Pacific LLC (Jacob J.; 26.6.02)

THQ are licensed by the Federation to make computer games using the Federation’s name and trade marks and the characters who take part in the Federation’s TV broadcasts.  In particular, the WWF logo was deeply embedded in a number of the computer programs, the evidence being that, as a practical matter, it was almost impossible to get them out.  Following the decision of the Court of Appeal upholding the settlement agreement between the Fund and the Federation ([2002] FSR 33), THQ were concerned that if they continued to sell their product with the embedded WWF logo, they would be in breach of the Order granting an injunction to the Fund and liable for contempt of court.  Therefore, they sought a declaration that they were not in breach or, in the alternative, they applied for a stay.

Jacob J. held that, whilst normally injunctions bound only the defendant (in this case the Federation), this was an exceptional case.  The Federation had undertaken an absolute obligation in the settlement agreement not to use the WWF logo and was bound by that obligation.  The injunction reflected this absolute obligation.  Accordingly, if its licensee THQ used the initials WWF, the Federation would be in breach and in contempt of court.  Thus, if THQ continued to use the WWF logo, they would be aiding and abetting that breach.  Accordingly, continued marketing of the video games would amount to contempt by THQ.

Reed Executive plc & Anr v. Reed Business Information Ltd (Pumfrey J.; 19.12.02)

Pumfrey J. held that following his judgment ([2002] CIPA 453), there be an order for an inquiry as to damages for:

1.  the so-called visible use of REED on the defendant’s website (which the judge anticipated would be assessed globally on the user basis i.e. how much should the defendant have to pay for the use he made of the sign as opposed to damages for lost sales or loss of business);    

2.  the isolated case of the Yahoo! banner advertisement triggered by use of REED as a search term;    

3.  the invisible use of REED on the defendant’s website, the damages to be fixed on the basis of a reasonable payment between willing licensor and willing licensee on the footing that click-throughs on the search results using REED were vanishingly small and that any benefit accruing to the defendant arose only from the juxtaposition of REED and the link to on search engine response pages.

The inquiry was to be at the risk of the claimants as to costs and was reserved to Pumfrey J.  It was stay pending any appeal.

Names For Pharmcaeutical Products

Dr Karl Thomae GmbH v. Commission of the European Communities (ECJ; 10.12.02)

The applicant was a company in the Boehringer Ingelheim pharmaceutical group.  It made an application to the European Agency for the Evaluation of Medicinal Products (EMEA) for a Community marketing authorisation (MA) for a product used for the treatment of Parkinson’s disease.  The application was made under the name DAQUIRAN.  Later, because of an objection by a third party, the applicant applied for a variation of its MA to include two other names.  The EMEA rejected the application on the basis that the granting of the single MA under the Centralised Procedure required one single name for the medicinal product being authorised.  The ECJ annulled the decision and held that, although the letter and spirit of Regulation No. 2309/93 suggested that a MA should contain, as a general rule, only one name, there were no grounds for concluding that in the absence of any express provision in that Regulation that that name could not be varied by the addition of other names where the holder of the MA demonstrated that such variation was necessary because of exceptional circumstances and the EMEA had ascertained that the variation applied for satisfied the criteria of quality, safety and efficacy of the medicinal product.

Design Right

L Woolley Jewellers Ltd v. A & A Jewellers Ltd & Anr  (Thorpe, Robert Walker & Arden L.JJ.; 31.7.02; O/41/02)

The Court of Appeal remitted the issue of design right infringement to Judge Fysh who having dismissed a claim for copyright and patent infringement held that the design right in the claimant’s piece of jewellery, a pendant, had been infringed. 

The Judge had held that it was the combination of the various components of the pendant, i.e. the bail and a repeating heart shaped motif together which enjoyed design right protection, as this combination was original and non commonplace in the design field in question. He then established that although it was only the bail that had been copied, this single element constituted a substantial part of the pendant and that therefore the design right in the claimant's piece of jewellery had been infringed.   

The Court of Appeal, however, held that the infringement test applied by the Judge was incorrect. Under copyright law a work is infringed if the work or a substantial part of the work is copied whilst under design right, there will only be infringement if the design is copied so as to produce an article exactly or substantially to the design. The Court of Appeal maintained that there is a difference  between establishing whether the item copied forms a substantial part of the copyright work and whether the whole design containing the element which has been copied is substantially the same design as that which enjoys design right. Under design right it may not be enough to copy a part, even if the part copied is a substantial part of the design.  

Ultraframe UK Ltd v. Clayton & Ots* (Laddie J.; 3.10.02; C/47/02 and 12.12.02)

Laddie J.  held that design right subsisted in most of the components used in the construction of conservatory roofs which form an easily assembled system known as “Quickfit”. Only two components were excluded under the must fit, must match and commonplace provisions. He held that the fact that a component for a composite article is functional does not per se, mean that its features fall within the must fit provision. 

Regarding ownership of the design right in the components, Laddie J. held that the creator had been at all material time an employee of one or another Quickfit company. He had designed the components in the course of his employment and therefore the designs belonged to the company for which he was working at the time of their creation. The fact that the creator was a director of these companies was not a determining factor. Whether someone is employed by a company is a matter of fact to be derived from all circumstances. In this case, the director’s design work was carried out in the course of his employment and he was paid wages as an employee. Therefore, all the designs created under those circumstances were owned by whichever Quickfit company existed at the time the design came into existence.  He also dismissed the argument that the relevant employing company owned the designs, but that the designs were held by the company on trust for its employee.

On the issue of infringement of one of the components “The External Ridge Cover”, Laddie J. concluded that the defendants’ article had been made substantially to the Quickfit design and that therefore it infringed the claimant’s design right in that component.

Finally, in a supplementary judgment dealing with the ownership of one of the designs which the defendants claimed was just an amendment of an earlier design, adding nothing to the original design, Laddie J. confirmed that design right subsisted in all but two of the designs and confirmed ownership by the creator’s employer.

Tyco European Metal Framing Ltd v. New Systems Ltd & ots et al (Laddie J.; 7.12.02)

In an enquiry as to damages arising out of the enforcement of a cross undertaking given to support an interlocutory injunction, Laddie J. held that the defendants/applicants failed to support their claims as they failed to prove any loss.

In January 2001 Laddie J. found that the defendants’ drawings for a fixing device for hollow structures were original, had been independently created and did not infringe the claimant’s copyright or design right in its metal fixing device [2001] CIPA 324. The interlocutory injunction which had been granted by Rattee J. in March 1999 was accordingly lifted. The defendants also obtained an order for an enquiry as to damages on the cross undertaking for the period in which they have kept their product (“Spiderbolt”) off the market following the injunction.  

In his judgment, Laddie J. confirmed that, in such an enquiry, it is for the defendant to prove that he has suffered loss and the scale of that loss.  The defendants claimed damages of nearly £1million plus costs arguing that Spiderbolt had massive profit margins and could be sold easily and in very large numbers. However, Laddie J. found that the claims were unrealistic and the limited evidence filed in support was misleading and unreliable. In particular Laddie J. concluded that the decision to suspend the marketing of their product was due to commercial reasons and not to the injunction. Laddie J. also concluded that as the defendants elected to seek a completely unrealistic claim, it was not for the court to change the claim and dig out a much smaller claim. He also expressed his concern about making claims which bear no relationship to reality and without regard to that which is reasonably arguable.

I am grateful to my colleagues from Bird & Bird for assisting me in the preparation of this report:  Cristina Garrigues (the design right cases) and Matthew Teather (Viennetta, Thomson Holidays).