Reported Trade Mark Cases for July 2003

23 July 2003

Katharine Stephens

 

Trade Marks

Appeals from Registry decisions



















Ref no.  T-122/01*
Application (and where applicable, earlier mark) BEST BUY and device – business management and technical consultancy, installation and maintenance of audio equipment (35, 37, 42)
Comment Appeal from OHIM dismissed by the CFI under Art. 7(1)(b).   The mark when examined as a whole or as individual elements lacked distinctive character, as it would be perceived as merely a promotional formula or slogan.
   


















Ref no. [2003] EWHC 185 (Pat)
Application (and where applicable, earlier mark) SAAB – garments (25)
Comment Application by the proprietor, Saab Motors, to adduce further evidence in invalidity proceedings refused as the evidence had been available from the outset.   Jacob J. commented aversely on the number of such applications which had recently been made.  A party advancing evidence before the Registrar should ensure that it was precise and complete.
   


















Ref no. [2003] EWHC 1334 (Ch)
Application (and where applicable, earlier mark) OMEGA – nautical, surveying, measuring, signalling instruments and apparatus etc.   (9)
Comment Jacob J. upheld the decision of the hearing officer who had ordered partial revocation for non-use, the specification being limited to “measuring and signalling apparatus and instruments, all for use in sport…”:   Use on display boards and screens and associated technical equipment for information boards on railway stations and scoreboards at sports grounds was not encompassed in the amended specification. As it had not been specifically pleaded, Jacob J. refused the application under s. 46(6)(b) to partially revoke the mark from a date earlier than that of the application.
   


















Ref no. Cardiff Civil Justice Centre 26.3.03
Application (and where applicable, earlier mark) 

MEZZACORONA + device – wines spirits and liqueurs (33)

 

CORONAS – red wines (33)

Comment Neuberger J. dismissed the appeal from the Registrar's decision to reject the opposition.   Under ss. 5(2)(b) and (4)(a), the differences in the marks outweighed the commonality.  The attack under s. 3(4)(a) was based on Council Reg. 2392/89 which provided that “trade marks should be abolished which contain wording that is identical to a geographical name used to describe a table wine”.  The judge accepted that the mark should be treated as identical to the name of the wine growing village, Mezzocorona (although it differed by one letter).  However, it was also a brand name and the exception in the Regulation to brand names which did not mislead or cause confusion applied.  Consequently, the s. 3(6) ground based on the applicant's intention to circumvent the Regulation by changing one letter in Mezzocorona also failed. 
   


















Ref no. [2002] EWHC 3009 (Pat) 
Application (and where applicable, earlier mark) CHINA WHITE – beers, non-alcoholic and alcoholic drinks including cocktails (32, 33)
Comment Pumfrey J. dismissed the appeal from the decision of the Registrar under s. 3(6).   He accepted the test for bad faith in Gromax v. Don & Low [1999] RPC 367.  The applicant had been approached by the bar manager of the opponent, who with others, had developed a signature cocktail called CHINA WHITE for the opponent’s nightclub of the same name.  From what he was told, the applicant believed that the drink and the name was under the sole proprietorship of the bar manager.  Nevertheless, in filing the application, he fell below the objective standards of acceptable commercial behaviour.  Pumfrey J. also dismissed the cross appeal under s. 5(4)(a).
   


















Ref no. [2003] EWHC 2911 (Ch)

 

and

 

[2003] EWHC 970 (Ch)

Application (and where applicable, earlier mark) PURE SMIRNOFF THE DIFFERENCE IS CLEAR and 13 other marks containing the word SMIRNOFF – wines, spirits (33)
Comment Pumfrey J. refused to allow further evidence to be adduced on appeal from the decision of the Registrar in this revocation action.   The evidence in question had been available and could have been filed earlier. An attempt should have been made to put the evidence in in reply.  Had it been relevant it would have been admitted and could have been properly put to the other side. If excluded, the Applicant would have had the opportunity at the appeal to say the evidence was wrongly excluded.   To sit on their hands, as the Applicant had done, was fatal.

 

In hearing the substantive appeal, Jacob J. dismissed the appeal for invalidation of the SMIRNOFF marks. The marks were not deceptive under s. 3(3)(b) when registered and had not become deceptive by the actions of the proprietor under s. 46(1)(d), as the evidence showed that the public had no misunderstanding as to the origin of the product, geographically or otherwise.

   


















Ref no. [2003] EWHC 970 (Ch)
Application (and where applicable, earlier mark) 

SMIRNOFF (in Cyrillic) and device (label for a bottle) – paper (16)

and TRADING COMPANY AND SUPPLIER TO THE COURT OF HIS IMPERIAL MAJESTY, PA SMIRNOFF AT THE CAST IRON BRIDGE IN MOSCOW (in Cyrillic) – alcoholic beverages (33)

Comment Jacob J. allowed the appeals from the decision of the Registrar.   The two applications were successfully opposed under ss. 5(2)(b), 5(3) and 5(4).  The Opponent’s SMIRNOFF mark (see above report for details of registrations) was a strong mark.  If either application were written in Roman script, people would be likely to be deceived or confused.  Although, the applications were in Cyrillic script, those who could read such script should not be disregarded.  In practice, if used, the applications were bound to be translated.  Therefore the Cyrillic script did not change the conclusion.
   


















Ref no. O/111/03*
Application (and where applicable, earlier mark) GOLF COURTS + device – golf-related score cards, booking forms, equipment and accessories, business management, course construction and design (16, 28, 35, 37, 41, 42)
Comment Appointed Person, Professor Annand, allowed the appeal and the Register was rectified to substitute the Applicant’s name as the proprietor of the marks. The conditions of s. 60(1) were satisfied at the date of application insofar as the originally-registered proprietor had been authorised to act as the Applicant’s representative or agent with respect to all IP rights in the business concept. As no there was no plea of justification (of the agent’s action) for the purposes of s. 60(5), the Applicant was entitled to rectification of the register under s. 60(3)(b).
   


















Ref no. 0/136/03*
Application (and where applicable, earlier mark) 

SMOOTH NATION – records, tapes (9)

 

and 15 other applications containing the word NATION

Comment Appointed Person, G. Hobbs Q.C., dismissed the appeal from the decision of the Registrar in which she had granted an extension of time for filing of the appeal to the Appointed Person under Rule 68(1).   The Hearing Officer held that Form TM9 did not provide sufficient basis for exercising the relevant discretion but that, in knowing whether the marks were registerable, the public interest was best served in granting the extension.  The Hearing Officer was entitled to raise this point of his own volition and come to the conclusion that he did.
   


















Ref no. O/137/03*
Application (and where applicable, earlier mark) 

SUN and THE SUN – business, publicity, advertising and financial services (35, 36)

 

SUN SITE – business management services, database management (35)

Comment The Registrar had allowed the opposition under s. 5(2)(b) in relation to the class 35 services, but it failed in relation to the class 36 services.   Appointed Person, D. Kitchin Q.C., allowed the appeal for the mark THE SUN in relation to some services (e.g. publicity and advertising but not relating to data processing services) but dismissed that appeal in relation to the remaining services.  The Hearing Officer had not taken into account all relevant factors in assessing the likelihood of confusion across the range of services in the applications. SUN SITE would be perceived, in light of the specifications, as a reference to a location or a website.   This had a bearing on the likelihood of confusion given that data processing services were excluded from the Applicant’s list of services.  Further, the aural and visual impart of the words SITE and THE were relevant.   Hobbs Q.C. dismissed the appeal re the mark SUN in its entirety.
   


















Ref no.  O/140/03*
Application (and where applicable, earlier mark)  XAROCID – pharmaceutical preparations and substances, diagnostic preparations and reagents for medical use (5)

 

TARGOCID – pharmaceutical preparations (5)

Comment Appointed Person, G. Hobbs Q.C., dismissed the appeal and the opposition to registration, under ss. 5(2)(b) and 5(4)(a), failed. Both marks were invented words with no obvious meaning. The similarities in terms of length, structure and lettering were not sufficient to render them distinctively similar from a visual, phonetic or conceptual perspective. Whilst due weight was given to the use of the TARAGOCID mark, the Opponent had done no more than to capitalise on the distinctiveness already possessed by such an invented word. Hobbs Q.C. stated that there was room for more than one view. That being so, the Hearing Officer’s decision should not be disturbed.
   


















Ref no.  O/154/03*
Application (and where applicable, earlier mark)  

MICHAEL VAN CLARKE GREAT HAIR DAYS – hair and hair treatment products and hairdressing and hair care services (3, 42)

 

NICKY CLARKE – perfumery, hair care products, hair driers, hair dressing (3, 8, 9, 11, 42)

Comment Appointed Person, D. Kitchin Q.C., dismissed the appeal and the opposition to registration failed. The first ground under s. 3(6) failed because, although the applicant had not provided his legal name, he was in fact known by the name supplied without any doubt of identity. Under s. 5(2)(b), the surname CLARKE was found to be very common and there was no evidence that the surname had been highlighted or received particular recognition within the context of the Opponent’s mark. The distinctive character lay in the full name.   On that basis, there was no likelihood of confusion.   Moreover, despite a period of side by side trade, no instances of actual confusion had come to light. For the same reasons, opposition under s. 5(4) also failed.
   

Infringement and passing off

Associated Newspapers Ltd v. Express Newspapers (Laddie J; [2003] EWCH 1322 (Ch); 11.6.03)

Associated Newspapers (the proprietor of the Daily Mail and The Mail on Sunday) sought to prevent the proposed launch by Express Newspapers (proprietor of the Daily Express and the Sunday Express) in the London area of a free evening paper to be titled Evening Mail or London Evening Mail. Associated relied on its common law and trade mark rights in The Mail, Daily Mail and The Mail on Sunday. The passing off claim succeeded as did most of the claim for trade mark infringement. The counterclaim by Express for invalidity of Associated’s trade mark for THE MAIL failed.

Passing Off

One argument run by Express Newspapers against the existence of a protectable reputation in The Mail or the word “mail” was based on the existence of a number of other regional newspapers on the market which contained the word “mail” in their title. The thrust of this argument was that, in light of these publications, the word “mail” had ceased to be capable of performing a trade mark function. As the Judge put it, “Familiarity has bred contempt”.

On this argument, the Judge observed that there is no requirement in the law of passing off that the Claimant’s reputation must be exclusive. If a newcomer adopts a mark which is employed by a number of competitors and thereby deceives the public, the newcomer harms each of the competitors. The Judge was careful to distinguish between a finding that such a group of traders could have protectable (albeit shared) reputations in their marks and the issue as to misrepresentation by the newcomer. Where a number of traders use a similar name, the Judge recognised that the public could become more discerning about small differences and it might therefore be more difficult to prove the requisite misrepresentation. As a matter of principle therefore the Judge decided that if Associated had a reputation in The Mail, Daily Mail and The Mail on Sunday as an indication of newspapers from a particular source, it would not be deprived of the right to protect that reputation by the existence of other reputations in other newspaper titles incorporating the word “mail”. 

In any event, the Judge found that the Express argument in this respect also failed on its facts.   

Trade Marks Issues

Express Newspapers attacked THE MAIL trade mark registration on a number of grounds, all of which were rejected. Express argued, among other things, that THE MAIL registration was devoid of the requisite distinctive character. It referred to Nestle v Unilever [2002] CIPA 37 (the Viennetta case) in which Jacob J has said that he did not consider the shape of the Viennetta ice cream as sufficiently distinctive because 15% of consumers surveyed thought one or more other ice creams were Viennetta.

Express argued therefore that THE MAIL must be a unique identifier and that, like Viennetta, it failed on this count because of the number of newspapers which incorporated the word “mail” in their title.

Laddie J. commented that he had difficulty in seeing how a sign which had trade mark significance to 85% of the relevant public could be said to be devoid of any distinctive character. He also referred to the provisions in the Trade Marks Act contemplating the co-existence of competing rights in the same mark such as provisions for allowing registration in situations of honest concurrent use. In such cases there could not be a unique identifier. In any event, although this raised an interesting point of law, the Judge noted that he did not need to resolve it because there was no evidence that, taken across the length and the breadth of the United Kingdom, the mark THE MAIL was not overwhelmingly distinctive in a trade mark sense of the Claimant. He accepted that there may be areas, such as Birmingham, where the trade mark significance is shared with another trader. This would not, however, result in invalidity but simply the possibility that the other trader may be able to register its mark on the basis of honest concurrent use and rely on section 11(3) in defence to an infringement action.

On infringement, the Judge found that use by Express of the Evening Mail as the title of its newspaper would amount to infringement of THE MAIL, DAILY MAIL and THE MAIL ON SUNDAY registrations under section 10(2). In relation to the London Evening Mail back-up title, he decided that its use would infringe THE MAIL trade mark registration but not the other two registrations.

Although somewhat academic in light of the decision on infringement under section 10(2), Express Newspapers did, however, make out its defence to the claim under section 10(1) on the basis that its proposed newspaper was to be free and was not therefore identical goods to “newspapers for sale” as in the specification of goods for THE MAIL mark. Associated’s argument that a purposive construction should be adopted was rejected. It was not permissible to downplay the significance of the word “sold” in the specification of goods.

Reporter’s note: This may not be an end to the matter as Express Newspapers have been granted permission to appeal to the Court of Appeal.

Weight Watchers (UK) Ltd & ots v. Tesco Stores Ltd (Lindsay J.; [2003] EWHC 1109 (Ch); 16.4.02)

Since 1996, Weight Watchers have used their POINTS programme as a simple system for ascribing calorific values to numerous foods. Tesco started a “healthy living” range of products on which the number of “serving points” were displayed with the statement “These points have been calculated using a standard Weight Watchers’ calculator. They are for customer information only. This product is not endorsed by Weight Watchers …”. In this passing off action, Lindsay J. refused to grant an interim injunction restraining Tesco’s use of “points”.

Lindsay J. firstly held that the evidence of deception was insufficient to found an injunction. POINTS was not a brand name and not a word that signified endorsement or license from Weight Watchers, but was a word which described an evaluation system intended to be objective, simple and universal in its applicability to all foods and which Weight Watchers itself applied to hundreds of foods, including those made by Tesco. In this unique situation, the claimant had failed to prove deception; the survey evidence was far too unsubtle and un-neutral to provide any real guide at all. Secondly, since Weight Watchers allowed licensees to feature the POINTS system on packaging, damages would have been a sufficient remedy. 

Inter Lotto (UK) Ltd v. Camelot Group plc* (Laddie J.; [2003] EWHC 1256 (Ch); 6.6.03)

Inter Lotto brought proceedings for trade mark infringement and passing off against Camelot for use by Camelot of HOTPICKS – being an infringement of Inter Lotto’s HOT PICK. Both parties used the marks in relation to running lotteries. Inter Lotto commenced its use on 4 August 2001. On 17 October 2001, Camelot caused the National Lottery Commission (“NLC”) to apply to register the name HOTPICKS as a trade mark (application no. 2,283, 392). Inter Lotto opposed the application which had been stayed pending the outcome of the current proceedings. Camelot was exclusively licensed by NLC and commenced using the ‘392 mark on 7 July 2002. A preliminary issue came before Laddie J. as to the relevant date at which the claimant’s reputation and goodwill for its claim in passing off fell to be assessed. Laddie J. held that it was the date upon which Camelot started using its mark in relation to its lottery product, i.e. 7 July 2002.

Camelot submitted that, based upon the provisions of section 9(1), it had an overriding statutory right to use the ‘392 mark and, therefore, a defence to the passing off action. Laddie J. held that section 9(1) did not give a proprietor an exclusive right to use the mark, it merely gave him the right to exclude others from using or infringing the mark. Therefore, Inter Lotto could seek to protect their goodwill and reputation against Camelot, despite the presence of the ‘392 mark. Secondly, Camelot submitted that Inter Lotto was precluded from relying on reputation and goodwill built up since 17 October 2001 (i.e. the date of the ‘392 mark) because after that date, Camelot had exclusive use of the ‘392 mark and, as such, Inter Lotto’s use was an infringement and unlawful. The claim for passing off should therefore fail: ex turpi cause non oritur actio (no right of action arises from a base cause). Laddie J. held that it was unarguable that trade mark infringement, without more, amounted to wrongdoing of such a level of depravity as to engage the doctrine. There might be cases where the nature of the infringement was so flagrant that the claimant could not rely on it to prove goodwill and reputation. This was not such a case. In the result, Inter Lotto would be able to rely on its use from 4 August 2001 to 7 July 2002 to prove reputation and goodwill at trial.

Protected Designations of Origin

Borie Manoux Sarl v. Directeur de l'Institute National de la Propriete Industrielle (INPI)* (ECJ; C-81/01; 24.10.02)

This was a case referred to the ECJ by the Cour de Cassation on the question of whether Article 40 of Regulation 2392/89 prohibited the use of a geographical reference as a national brand name to describe wines. Regulation 2392/89 lays down general rules for the description and presentation of wines and grape musts. The ECJ held that Article 40 was to be interpreted as not prohibiting the use of a trade mark which contained a geographical reference and was intended for use in connection with the sale of wine, unless the national court decided that there was a real risk that use of such a mark would mislead consumers and, as a result, alter their economic behaviour.  For full details the reader is referred to [2003] E.T.M.R. 29.

Consorzio del Prosciutto Di Parma v. Asda Stores Ltd* (ECJ; C-108/01; 20.5.03)

The House of Lords referred to the ECJ the question of whether Regulation 2081/92 excluded the determination of special rules regarding operations for the presentation of the product in the market such as slicing and packaging and whether such conditions restricted the free movement of goods throughout the ECJ.

Prosciutto di Parma (“Parma ham”) was protected under Italian law as a Protected Designation of origin (“PDO”). A PDO designation could only be used if the product complied with certain requirements laid down in the specification. One of the conditions set out in the specification for Parma ham under Italian law was that the slicing and packaging of Parma ham must take place in the production area of Parma.

The Consorzio del Prosciutto commenced proceeding in the UK against Asda Stores Limited (“Asda”) to stop them from selling Parma ham which had been sliced and packaged in the UK. Asda’s supplier, Hygrade Foods Limited, was supplied with Parma ham which had been acquired from an Italian company belonging to the Consorzio.

The ECJ concluded that the slicing and packaging of Parma ham were important operations which could affect the quality and reputation of Parma ham. The specification of PDO Parma ham clearly provided for the slicing and packaging to be provided in the Parma region. In the ECJ’s view the reputation of the PDO for Parma ham would not be protected in the same way by an obligation imposed on operators outside the region of production to inform consumers that the slicing and packaging had taken place outside the production region.

On the point of whether the restrictions on the slicing and packaging of the ham in the region of production restricted the free movement of goods, the ECJ concluded that, as the conditions intended to guarantee that the product in question came from a specific geographical area and displayed certain particular characteristics, they were justified and did not restrict the free movements of goods.
 

Ravil Sarl v. Bellon Import Sarl* (ECJ; C-469/00; 20.5.03)

The Cour de Cassation referred to the ECJ the question of whether Regulation 2081/92 excluded the determination of special rules regarding operations for the presentation of the product in the market and whether such conditions restricted the free movement of goods throughout the ECJ.

Grana Padano was protected under Italian law as a PDO. Part of the conditions relating to the PDO for Grana Padano under Italian law was that grated Grana Padano had to be grated in the region of production and under certain specified conditions.

Ravil Sarl was licensed by the Grana Padano Producer’s Association to distribute Grana Padano in France. It imported whole cheeses from Italy and grated and distributed them in France. Bellon Import brought proceeding against Ravil to stop these actions.

The ECJ published its decision in this case on the same day as the Parma ham decision. The reasoning was identical. The grating and packaging of Grana Padano were important operations capable to affecting the quality and reputation of the cheese. The reputation of Grana Padano would not be protected in the same way if grating and packaging was allowed outside the region of production.
 

Reporter’s Note

1.  I am most grateful to my colleagues from Bird & Bird for reporting the following cases: Associated Newspapers v. Express Newspapers – Anna Duffus; decisions of the Appointed Persons – Tom Frederikse; cases on protected designations of origin – Cristina Garrigues.


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