Reported Trade Mark Cases for June 2003

23 June 2003

Katharine Stephens

Trade Marks

Appeals from UK Registry decisions

Ref no.  O/77/03
Application (and where applicable, earlier mark)  

REVERIES – foodstuffs (30)


REVELS – foodstuffs (30)

Comment Appointed Person, Professor Annand, dismissed the appeal. The opposition under s. 5(2)(b) was unsuccessful. Although he had relied upon his own assessment of the visual impact of the marks and not, as the opponent submitted, on the evidence of how such low priced consumer items were picked off the shelves, the Hearing Officer had not made an error of principle in coming to his conclusion.

Ref no.  O/106/03
Application (and where applicable, earlier mark)  3-D representation of a triangle in relief (no colour claimed) – chocolate and products containing chocolate (30)
Comment Appointed Person, Geoffrey Hobbs Q.C., dismissed the appeal.   The mark was not registrable under s. 3(1)(b). The application was ambiguous as to whether the mark consisted of the shape of the goods and/or the packaging so it was treated as an application for both. Survey evidence showed that members of the public were reminded of TOBLERONE by the application.  However, this was too nebulous to be authoritative. The case based on “distinctiveness by proxy” failed, as there was no evidence to substantiate the claim that the mark should be assimilated to the generally well-known shape of TOBLERONE confectionery because of the similarity in its cross-section.  Finally, the mark was insufficiently arresting to impact upon people in a sector of the market where well-informed and reasonably observant and circumspect consumers would appreciate, at a general level, that variations of shape might not be consistent with the goods emanating from a specific origin.

Ref no.  O/125/03
Application (and where applicable, earlier mark)  DIANA PRINCESS OF WALES MEMORIAL FUND – wide variety of goods and services (3, 14, 25, 28 and 36)
Comment Appointed Person, Geoffrey Hobbs Q.C., dismissed the appeal. The opposition under ss. 3(1)(b), (c) and (6) was unsuccessful. The Hearing Officer had properly held that the mark was sufficiently distinctive. While it was accepted that the mark could be taken, from a legal and linguistic perspective, to apply to any one of an expanding number of funds independently established, the average consumer would have linked the marketing of the relevant goods to the activities of the Fund which “represented” the late Princess.    The fact that the shorter designation DIANA PRINCESS OF WALES was held previously to be insufficiently distinctive did not detract from this conclusion.  The objection under s. 3(6) based on the width of the specifications was rejected as the presumption that the declarations regarding intended use of the mark were duly and properly made, remained unrebutted.


Bongrain SA v. The Registrar of Trade Marks (Pumfrey J.; 21.3.03) 

Bongrain is the manufacturer of various cheeses amongst them the SAINT ALBRAY which is sold in a six-lobed shape, similar to a flower. In 1997 they applied to register two 3-D marks as a series for cheese and dairy products. The Registrar refused the application under sections 3(1)(a) and (b). Pumfrey J. dismissed the appeal and held that the marks were not inherently distinctive and had not acquired distinctiveness through use.

Pumfrey J. stated that, for a shape mark to be registrable per se in the absence of use, it must have the capacity to communicate information about its source or origin. The Hearing Officer had concluded that as cheese and other diary products were available in a variety of forms and shapes there was nothing strikingly unusual about the shape in question to suggest that that particular shape worked as an indication of origin. Pumfrey J. agreed with the Hearing Officer that the shapes were neither striking nor memorable. He stated that it is up to the proprietor of a trade mark to educate the public as to the significance of the shape as indicator of origin before the marks could be accepted for registration.

Pumfrey J. held that the evidence of acquired distinctiveness filed by Bongrain failed to prove that the shape had become distinctive of its cheese. The evidence showed that the SAINT ALBRAY mark was written on each segment of the cheese. Thus, the public was likely to rely on the word mark rather than the shape when identifying the goods. Pumfrey J. maintained that despite the BABY-DRY decision (C-383/99) distinctiveness through use was proved only if a substantial proportion of consumers recognised the shape of the product as designating origin. He dismissed the appeal on the basis that the public might understand that the shape was a characteristic of the type of cheese but they would not see the shape of the product as a badge of origin.

Dyson Ltd v. The Registrar of Trade Marks* (Patten J.; 15.5.03) 

This was an appeal from a decision of the Registrar of Trade Marks refusing Dyson’s application for registration of two marks consisting of a drawing of a bagless vacuum cleaner and a description that the mark consisted of the “transparent bin or collection chamber”. The Registrar determined that the marks were devoid of distinctive character and were merely descriptive (sections 3(1)(a) to (c)). Furthermore, in the Registrar’s opinion Dyson had not proved that the marks had acquired distinctiveness as a result of the use prior to the application. Dyson claimed that the transparent bin was so unusual and eye catching that consumers identified the vacuum cleaners with the transparent bin with Dyson and that, therefore, the marks acted as indications of origin. Patten J. would have dismissed the appeal, but referred the question of acquired distinctiveness to the ECJ. 

In his judgment, Patten J. held first that the appeal (despite being from ex parte proceedings) should be heard by way of review without the need for a rehearing as had been requested by Dyson.

On the point of registrability, the Judge noted that the ECJ had accepted that Article 3(1)(a) of the Directive imported both limbs of Article 2 (Philips v. Remington C-299/99). Thus, to be registered, a mark must be capable of distinguishing the goods or services of the undertaking from those of another and, by doing so, be an effective badge of origin under both sections 3(1)(a) and (b). The Judge observed that marks which consist of nothing more than a description of some physical or factual characteristic of the goods are unlikely to be distinctive and to serve as an indicator of its commercial origin, absent user. He then held that, despite the novelty of the transparent bin, the application did not indicate the commercial origin of the product and did not prevent it from being descriptive of a bagless vacuum cleaner. Further, the transparent surface of the collection chamber was an indication which merely served to designate the kind of goods in question (i.e. a bagless cleaner).

Finally, when considering the claim of acquired distinctiveness, the Judge held that despite the fact that at the date of the application the Dyson vacuum was the only one with a transparent bin and Dyson had filed evidence that members of the public continue to associate the transparent bin with Dyson products even when other manufacturers started to use it as well, it did not indicate commercial origin. Furthermore, Dyson had not actively promoted the clear bin as a trade mark. On the basis of the above, the Judge would have dismissed the appeal. However, since the test laid down in Philips might encompass circumstances in which a de facto monopoly leading to the recognition of goods as those of a particular trader, even absent actual promotion of the sign as a trade mark, nonetheless produces the necessary degree of distinctiveness, Patten J. referred a question on acquired distinctiveness to the ECJ for guidance.

“Use as a trade mark”

Arsenal Football Club plc v. Reed* (Aldous, Clarke & Jonathan Parker L.JJ.; 21.5.03)

To recap: Arsenal claimed trade mark infringement and passing off in respect of the sale by Matthew Reed of unauthorised merchandise bearing the ARSENAL name and logo. In his first judgment, Laddie J. rejected the passing off claim and indicated that he thought Arsenal should lose the infringement case because there was no evidence that the use of the marks by Mr Reed indicated to purchasers that the products were "official" merchandise i.e. there was no use of the marks as trade marks. Instead, purchasers saw the marks as badges of allegiance. Laddie J. referred the matter to the ECJ. The ECJ (C-206/01) appeared to find in favour of Arsenal holding that there was infringement where a mark identical to a registered mark was used on identical goods and the use was not descriptive. It was irrelevant that a mark was perceived as a badge of allegiance. In the light of that decision, Arsenal invited Laddie J. to make an order in its favour disposing of the action. But instead of doing so, Laddie J. held that the ECJ had exceeded its jurisdiction, consequently he was not bound by its conclusion. He then applied the ECJ's guidance on the law to his findings of fact and therefore held that the defendant had not infringed Arsenal's trade marks. Arsenal appealed. 

The Court of Appeal, Aldous L.J. giving judgment, allowed the appeal. The ECJ decision was not based on whether the use complained of was trade mark use. Instead, the relevant consideration was whether the use complained of was likely to jeopardise the guarantee of origin which constituted the essential function of the mark. That involved a consideration of the proprietor's rights, not the defendant's use. The Judge had not come to any conclusion on the question of whether Mr Reed's use was liable to jeopardise Arsenal's rights because that was not the question before him. Nevertheless, since the conclusions of the ECJ were not inconsistent with his findings of fact, the Court of Appeal held that Laddie J. should have followed the ruling of the ECJ and decided the case in Arsenal's favour.

In its decision, the ECJ had given two examples of how Mr Reed's use jeopardised the essential function of Arsenal's marks. Firstly, consumers who obtained or were given the product away from the environs of Mr Reed's stall could believe that there was a link between the goods and Arsenal. Secondly, the goods were placed on the market outside the control of Arsenal. This undermined the guarantee that all goods designated by the marks were manufactured or supplied under the control of a single entity. Clearly, unchecked use of the marks by a third party which was not descriptive use was likely to damage the function of the marks because the registration would no longer be able to guarantee origin. The Court of Appeal added that the wider and more extensive the use, the less likely that the marks would be able to perform their function.

Although not necessary because of the finding above, the Court of Appeal found that the use by Mr Reed of the marks designated origin of the goods to a substantial number of consumers. Mr Reed had gone to great pains to inform customers that his goods were not official. Therefore, the Court of Appeal reasoned, if the use of the marks did not carry with them an indication of origin, there would have been no need for Mr Reed's efforts. 

Finally, even though it was not the subject of an appeal by Arsenal, the Court of Appeal cast doubt on Laddie J.'s reasoning on passing off. Aldous L.J. said that the traditional ambit of passing off (which was best referred to as unfair competition) as enunciated in the Victorian cases was no longer definitive.

R. v. Johnstone* (Lords Nicholls, Hope, Hutton, Rodger & Walker; 22.5.03)

Mr Johnstone sold CDs of bootleg recordings made of performances by well-known performers, e.g. Bon Jovi, whose names were registered as trade marks. He was charged with having committed various criminal offences until section 92. He submitted that, before the Crown could establish an offence under section 92, it had to prove a civil infringement of the trade mark in question (his reason being that he wished to rely on the defence in section 11(2)(b), i.e. that the use of the performer’s name on each of the CDs was not an indication of trade origin, but merely an indication of who was the performer). In the alternative, he submitted that he had an honest and reasonable belief that his use was not an infringement of the trade mark under section 92(5). Judge Mitchell rejected these submissions; section 92 provided a self-contained code. The Court of Appeal allowed the appeal, holding that section 92(5) presupposed that illegal unauthorised use amounted to a civil trade mark infringement. The House of Lords dismissed the appeal from the decision of the Court of Appeal.

The first question was whether “trade mark use” was a necessary ingredient in sections 10(1) to (3). The House of Lords answered this in the affirmative. In doing so, reference was made to the ECJ’s decision in Arsenal v. Reed (C-206/01). The House of Lords emphasised those parts of the ECJ’s decision where the court stated that Mr Reed’s use was such as to create the impression that there was a material link the course of trade between his goods and Arsenal. In doing so, Lord Walker commented that the effect of the ECJ’s decision was to annex a significant part of the no man’s land between the opposite extremes of distinctiveness and descriptiveness.

In relation to section 92, Parliament could not have intended to criminalise conduct which would not have been objectionable under the civil provisions. Therefore, trade mark use was also a necessary ingredient of criminal liability under section 92. The test was how the use of the sign would be perceived by the average consumer of the type of goods in question (Sabel v. Puma C-251/95). This was a question of fact. In relation to this case, the question was whether the name of the artist would be seen as exclusively an indication of the name of the performer whose performance was recorded on the CD, i.e. purely descriptive use. The House of Lords (Lord Walker dissenting), while emphasising that the issue was one of fact in every case, preferred the dissenting judgment of Davis J. in Musidor B.V. v. Tansing (t/a Apple Music House) [1994] 123 ALR 593. In this case, the Federal Court of Australia held that CDs bearing the name “Rolling Stones”, which was registered as a trade mark for CDs, did not infringe that trade mark because it was not use as a trade mark. Davis J. held that the use included informing the public that the CD’s release had been organised by the group or their organisation, i.e. indicating trade origin.

On the issues specifically relating to section 92(5), the House of Lords was of the opinion that the defence did not depend upon whether the defendant believed the trade mark was registered or not. Further, by the presumption of innocence in Article 6(2) of the European Convention of Human Rights, the burden of proof under section 92(5) was on the defendant.

[Reporter’s note: this opinion of the House of Lords appears to have been given without knowledge of the decision of the Court of Appeal in Arsenal v. Reed. Mr Reed is widely reported as intending to appeal to the House of Lords. The different emphasis given to the ECJ’s decision in Arsenal v. Reed by the Court of Appeal and House of Lords makes it more likely that leave will be given for such an appeal.]


Michael Douglas, Catherine Zeta-Jones and Northern & Shell Plc v. Hello Ltd & ors* (Lindsay J; [2003] EWHC 786 (Ch); 11.4.03)

Catherine Zeta-Jones, Michael Douglas and Northern & Shell Plc brought proceedings against Hello! Limited and others over the publication of wedding photographs taken without the couples' consent during their wedding at the Plaza Hotel in New York on 18 November 2002. The substantive action had been preceded by an application for an interim injunction to prevent the publication of the photographs in Hello! Although the application for interim relief had succeeded at first instance, it had been over turned by the Court of Appeal, ostensibly on the grounds that the balance of convenience favoured the Defendants. The Court of Appeal, in particular Lord Justice Sedley, had referred extensively to the arrival of a defined right of privacy and therefore this judgment now reported was anticipated with interest.

The couple had made plans to wed in private before a select group of family and friends. The Dougalses had initially taken the view that there would be no photographs at the wedding. This strategy was abandoned as unrealistic as a number of celebrities' weddings had become the subject of unwanted intrusion and unauthorised photographs. The Dougalses had come to the view that if they arranged to release one set of approved photographs in one chosen magazine then other magazines would leave them alone. The evidence showed that both OK! magazine and Hello! magazine had made unsolicited requests to the couple for the exclusive rights to the wedding photographs. Given their previous relationship with OK!, the Douglases decided to sign a contract with them valid under Californian law for the sum of $1,000,000. Whilst they were given editorial control and free choice over the photographer, they were contractually bound to ensure that they used their best efforts to ensure that no other media would be permitted access to the wedding and that no guests or other person would be allowed to take photographs.

The couple had put in place a regime to ensure that the wedding stayed as private as possible. Suppliers or prospective suppliers were asked to sign confidentiality agreements. The invitation to the guests carried with it a request that that no photographic equipment should be used. The couple hired security guards to enforce the policy of no uninvited guests and there was evidence that photographic equipment had been removed from guests prior to their entry to the wedding. Despite these arrangements at least one person managed to enter the wedding uninvited and surreptitiously take a number of photographs of poor quality. These photographs were subsequently obtained by and published in Hello! magazine on the 'open' market. On learning of the intentions of Hello!, OK! rushed their edition to print in order to capitalise on what was left of their exclusive and launched the application for an interim injunction referred to above.

The action brought by the Claimants claimed, inter alia, that: (1) the wedding ceremony was private and the Defendants owed them a duty in confidence, (2) that if the wedding was an event to be exploited for commercial gain then the illicit photographic representations of the wedding were commercial or trade secrets, (3) that the Defendants had breached the Data Protection Act 1988; and (4) a claim for infringement of the law of privacy. There were also additional claims for interference with contractual relations, conspiracy and the Claimants' rights under Spanish law.

The Judge set out the conditions necessary to claim a breach of confidence derived from Coco v. A. N. Clark (Engineers) Limited [1969] RPC 41. Where confidence is not based on a contractual undertaking the action is based on a "duty of good faith". The information that is said to be subject to the obligation must itself be information that has the necessary quality of confidence about it. Secondly the information must have been imparted in circumstances importing an obligation of confidence and lastly that there must have been unauthorised use of that information to the detriment of the party that has imparted it.

The Judge was satisfied that this was a private wedding. His assessment of the claim of confidence proceeded on the presumption that the Claimants had a valuable trade asset, the value of which depended on their ability to keep it secret and then control the way that it, the photographs, were released to the public. The photographs, therefore had the necessary quality of confidence about them. Whilst the appearance of Ms Zeta-Jones and Mr Douglas was no secret, their appearance on their wedding day was not. The Judge was also persuaded that the fact that two magazines had bid for, and been prepared to pay a large amount of money for, such photographs was also indicative of the fact that the information was commercially confidential.

The second limb of the test requires the information to be imparted in circumstances of confidence. Hello! were not present at the wedding. They acquired the photographs via a series of intermediates that led, it was believed, to an intruder at the wedding who was able to take some, albeit poor quality, photographs of the Douglases. The Judge was of the view that given the arrangements that had been made for the wedding and the lengths that the photographer had to go to take the photographs, it was clear that the wedding was private. With respect to Hello!, even though the Claimants' case that the Defendants had organised the photographs in advance did not succeed, the Judge held that they had not acted in good faith or by way of fair dealing. They had bid for the original legitimate photographs and failed losing to their rival OK!. They would have known that a considerable sum would have been paid for the exclusive photographs and that any contract would have included measures such as those requested by OK! Although they had not made any enquires as to how the photographs had been obtained, this was not a defence as it was obvious that obtaining them had involved, at least, a trespass.

With regard to the third limb, the Judge held it was undeniable that the Defendants had suffered damage. The Douglases had suffered distress and had to speed up the process of vetting the photographs for publication. OK! had to rush forward publication and also lost their exclusive to a high profile media event.

The second cause of action was the one that was of most interest to the legal community. Would there be an extension of the law of confidence to create a free standing law of privacy? It was clear that prior to the Human Rights Act 1988 (HRA) there was no law of privacy and many Claimants had found themselves in a position where their private lives had been invaded and they were unable for one reason or another to attach the obligation on the confidence on the third party to stop them (see Gordon Kaye v. Robertson [1991] FSR 62). In even though the Court of Appeal had spoken favourably of the right of privacy, and gone so far as to state that it may now part of English law as a result of the HRA, the Judge declined to find that such a law did exist. He did so on five grounds.

Firstly as the events had occurred prior to the commencement of the HRA, and the HRA had no retrospective effect, there was no law of privacy available. Secondly, the Court of Appeal during the application for an interim injunction had based their ruling on the fact that the law of confidence may be insufficient to protect the Dougalses. Given his findings at trial, the Judge held that the law was adequate. Thirdly given the potentially broad nature of any right of privacy, its existence should be a matter for Parliament rather than for a Judge. Fourthly, it was likely that the law of confidence, as read in compliance with the HRA, would be sufficient to protect most Claimants. Lastly, as the Douglases did not require a right of privacy to succeed in this case.

The other causes of action based on conspiracy and intention to interfere in contractual relations failed as there was no evidence that the defendants had procured the photographs prior to the wedding. The cause of action based on a breach of the Data Protection Act was successful, but any damages were deemed nominal.

Bloomsbury Publishing Group Ltd & anr v. News Group Newspapers Ltd & ots (Laddie J.; 7.5.03 and The Vice-Chancellor; 23.5.03)

The fifth Harry Potter book is to be published on 21 June 2003. In April 2003, the publishers, Bloomsbury, arranged for it to be printed under conditions of exceptional security. Those arrangements were not entirely successful. It became apparent that at least four copies were taken from the printers and were offered for sale to the press.  The claimants sought urgent relief for breach of confidential information, copyright infringement and conversion. Laddie J. made an injunctive order against a defendant described as: “The person (or persons) who have offered the publishers of the Sun, the Daily Mail and the Daily Mirror newspapers a copy of the book “Harry Potter and the Order of the Phoenix” by JK Rowling.” That order was subsequently continued by both Laddie J. and Rimer J. until The Vice-Chancellor gave the judgment now reported. He continued the order in slightly amended form until 21 June 2003.

The problem with the order sought by the claimants was set out in Friern Barnet UDC v. Adams [1972] 2 Ch. 25. In that case, the Court of Appeal held that orders against unknown persons were objectionable because the then procedural rules required a defendant to be named and an address given and, secondly, because the description was too vague. In a later case, the Court of Appeal allowed an order to be made against unknown persons provided that one of them was named on the basis that a common link bound the group (EMI v. Kudhail [1985] FSR 36). Thus an anomalous position existed which other common law countries had not followed.

The Vice-Chancellor held that he was entitled to make the order sought and that he was not bound by the decision in Friern. He held that the regime introduced by the Civil Procedure Rules was quite different to the regime prescribed by the Rules of the Supreme Court which were the background to that decision. In the former there was no requirement that a defendant be named, merely a direction that he “should” be (7PD.4.1(1)). Further, the overriding objectives were inconsistent with an undue reliance on form over substance. In the order granted by Laddie J. the crucial point was satisfied i.e. the description used was sufficiently certain as to identify both those who were included and those who were not. There was no injustice to anyone if the order was made and considerable potential for injustice to the claimants if it were not.

Cray Valley Ltd v. Deltech Europe Ltd & ots* (Jacob J.; 16.4.03)

In this case, Cray claimed that, by manufacturing a number of coating resins, Deltech were breaching their confidential information. As Jacob J. pointed out, normally, if one finds an ex-employee using unpublished chemical formulae to the detriment of his former employer, it is an open and shut case. However, in this instance, he held that the formulae did not have the “necessary quality of confidence” and were not “imparted in circumstance importing an obligation of confidence” (the first two tests in Coco v. Clark [1969] RPC 41). It followed that there was no breach of confidence. The facts in this case were complex. However, at the heart of it was the decision by the third defendant, Dr Riley, to use the recipes and formulations of the resins which had been loaded for perfectly lawful purposes on his home computer at a time when he worked for Cray’s predecessor and before he had been made redundant by Cray. Jacob J. was satisfied that the formulae could not be regarded as confidential. So much was published, so much was second nature to Dr Riley and his team, so much of the recipes were not critical and were so easy to reverse engineer, that a man of conscience would not say “here is a specific trade secret which I must not use”. Further, although the information as a whole was not accessible by the public, no-one had ever suggested that there was anything confidential about it and little or no effort had been made to maintain secrecy in it.

Reporter’s Note: 

1. I am most grateful to my colleagues from Bird & Bird for reporting the following cases: Bongrain and Dyson – Cristina Garrigues; Douglas v. Hello – Ravinder Chahil; decisions of the Appointed Persons – Tom Frederikse.

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