Reported Trade Mark Cases for May 2003

20 May 2003

Katharine Stephens

 

Trade Marks

Appeals from Registry decisions (OHIM and UK)




















Ref no.  T-174/01*
Application (and where applicable, earlier mark)  

SILK COCOON – clothing (25)

 

COCOON – clothing including shoes (25)

Comment The Board of Appeal held that the intervener had proved genuine use of its mark and the opposition under Art 8(1)(b) succeeded.    The CFI annulled the decision because the Board had failed to indicate to the applicant that it intended to take the disputed fact (as to use of the opponent’s mark) into account and therefore the applicant had not been able to submit substantive observations.   On the definition of genuine use, however, the Board had applied the correct test, that of "real use of the earlier mark on the market place, so as to draw the attention of potential consumers to the goods or services effectively offered under the mark".
   


















Ref no. T-224/01*
Application (and where applicable, earlier mark) 

NU-TRIDE – chemicals, not containing cyanide, for use in metal treatment, metal treatment (1, 40)

 

TUFFTRIDE – inorganic salts, particularly alkali cyanide, for metal treatment (1, 7, 11)

Comment The opposition under Art 8(1)(b) was dismissed by OHIM and the decision upheld by the CFI.    The goods were similar, but the interested public (specialist in the chemical sector) would not consider the marks confusingly similar, either when considering how the marks would be pronounced in German (TUFFTRIDE was registered in Germany) or in English.   The opponent also claimed that the application should be rejected under Art 7(1)(f) (marks contrary to public policy/morals) because the application had been made in bad faith.  The CFI held that Art 7(1)(f) does not cover bad faith and that absolute grounds of refusal could not be heard in opposition proceedings.
   


















Ref no. 

T-324/01*

T-110/02*

Application (and where applicable, earlier mark) 

3-D brown cigar-shape – chocolate (30)

 

3-D gold ingot-shape – chocolate and cardboard packaging for chocolate (30, 16)

Comment The CFI dismissed the appeal and upheld the decision of OHIM under Art 7(1)(b).    The marks did not differ substantially from certain basic shapes commonly used in the trade for such products.   Therefore, the average consumer who only pays fleeting attention to the shape and colour of such products, would not perceive the marks as distinctive.
   


















Ref no. O/21/03*
Application (and where applicable, earlier mark) 

FROSTBITE – breakfast cereals (30)

 

FROSTIES – cereal preparations (30)

Comment Appointed Person, D. Kitchin Q.C., allowed the appeal against the costs order for £600 made in an unsuccessful opposition. Although the Hearing Officer had discretion to depart from the published scale if litigants acted unreasonably, no such criticism could be made of the opponent nor did the circumstances of the case justify a departure from the scale.    The costs order was reduced to £300.
   


















Ref no. O/24/03*
Application (and where applicable, earlier mark) TOTTENHAM - a wide variety of goods and services (6, 9, 14, 16, 18, 20, 21, 24, 25,26, 27, 28, 39, 41, 42)
Comment Appointed Person, Prof. Annand, upheld the decision of the Hearing Officer who had dismissed the opposition under ss. 3(1)(b) and (c).    Re the latter, the opponent conceded that there was no association in the minds of the relevant public between TOTTENHAM and the goods and services (i.e. the first limb of Windsurfing, C-108/97).   Further, no association was likely to be established (second limb).  The class of names that were prima facie registerable under s. 3(1)(c) were not limited to purely fanciful geographical names.  The decision under s. 3(1)(b) was upheld for the same reasons.
   


















Ref no. O/53/03*
Application (and where applicable, earlier mark) 

UK LIVING and device – videos, tapes, discs (9) books, newspapers, magazines (16)

publishing services, film and TV production (41)

 

LIVING – printed periodicals (16)

Comment The Hearing Officer held that there was no confusion between the marks under s.5(2)(b) despite the similarity    of the goods.   Appointed Person, D. Kitchin Q.C., allowed the appeal for classes 9 and 16 and dismissed the appeal in relation to class 41.  The marks were similar.  "Living" was sufficiently distinctive to act as a trade mark and in the applicant's mark it was not swamped by the "UK" or device elements.  Therefore, there would be confusing similarity in relation to the class 16 goods. For audio and video products, there was likelihood that consumers would believe that such "lifestyle" goods had come from the same source as a "lifestyle" magazine bearing a similar mark. But for publishing and TV shows, although "masthead publishing" was now common, relevant advertisers and consumers would be aware of the enterprise with which they were dealing and would distinguish between the marks.
   


















Ref no. O/58/03*
Application (and where applicable, earlier mark) CO-OPERATIVE – various goods and services (6, 9, 19, 20, 35, 37, 42)
Comment Appointed Person, D. Kitchin Q.C., dismissed the appeal. The application was refused under ss. 3(1)(b) and (c). The word "co-operative" was a normal way of indicating goods or services which had been produced or provided by a collective organisation or by co-operative means and this usage was very well known. The fact that the word had other meanings which were not descriptive of the relevant goods and services did not alter the position.
   


















Ref no. O/60/03*
Application (and where applicable, earlier mark) ATHERMAL – optical glasses (9), glass and glassware (21)
Comment Appointed Person, D. Kitchin Q.C., dismissed the appeal. The application was refused under ss. 3(1)(b) and (c). Though the mark was an invented word, the average consumer of technical goods would be aware of both the word THERMAL and the prefix A (meaning 'not') and would recognise the combination. Despite the word not being common parlance, consumers would take the word to denote that the goods would be unaffected by heat, rather than as originating from the proprietor.
   

 BABY-DRY revisited

OHIM v. Wm Wrigley Jr Co* (AG Jacobs for the ECJ; C-191/01; 10.4.03)

The application to register DOUBLEMINT for goods in classes 3, 5, 25, 28 and 30, in particular for chewing gum, was refused by OHIM under Article 7(1)(c) of the Directive.  The decision was overturned by the CFI (T-193/99).  On appeal to the ECJ, AG Jacobs was of the opinion that the judgment of the CFI should be quashed. 

There were two flaws in the CFI's judgment.  Firstly, the CFI stated that DOUBLEMINT "cannot be characterised as exclusively descriptive".  In the AG's opinion, this was wrong.  The word exclusively qualifies the word consist.  Therefore, to be precluded under Article 7(1)(c), all the elements in a compound mark must have descriptive capacity.  It was not necessary for each element to have no other non-descriptive meaning.  Secondly, the CFI held that DOUBLEMINT was ambiguous and suggestive and therefore automatically registerable.  The AG opined that the fact that the two words in combination could give rise to a multiplicity of possible meanings would not necessarily deprive that combination of its descriptive capacity.  As the CFI had stated in Daimler Chrysler v OHIM (Truckcard) T-358/00, it was sufficient that at least one of the possible meanings of a mark identified a feature of the goods.

AG Jacobs further expressed the following opinions:

1.   Although the ECJ appeared to assimilate Articles 7(1)(b) and (c) in BABY-DRY (C-383/99), they should neither be conflated nor viewed as inherently independent.

2.   There was no clear cut distinction in Article 7(1)(c) between indications which designating a characteristic and those which merely elude suggestively to it.  The following three part test could be useful:

(a)  Consider the way in which a term relates to a product or one of its characteristics – the more factual and objective that relationship, the more likely it is that the term may be used as a designation in trade.  Conversely, the more imaginative and subjective the relationship, the more acceptable the term will be for registration.

(b)  Consider the way in which a term is perceived: how immediately is the message conveyed?  The more ordinary, definite and down to earth a term is, the more readily a consumer will apprehend any designation of a characteristic.  The other extreme would be those terms needing the skills of a cryptic crossword enthusiast to detect any connection with the designated characteristic.

(c)  Consider the significance of the characteristic in relation to the product, in particular, in the consumer's mind.  Where the characteristic designated is essential or central to the product or is of particular importance in a consumer's choice, then the case for refusing registration is compelling.  Where the designation is of a characteristic that is purely incidental or arbitrary, the case is considerably weaker.

Applying this test, the application should be refused: (a) DOUBLEMINT was a factual, objective reference to mint flavour in some way doubled; (b) it was readily perceivable as such; and (c) such a flavour was a salient feature of the product.  Further, there was considerably less of an unusual structure in DOUBLEMINT than in BABY-DRY.

3.   AG Jacobs thought it would be helpful if the ECJ were to clarify its statement in BABY-DRY that "any perceptible difference … is apt to confer distinctive character".  It appeared to him that the comments of AG Ruiz-Jarabo (Post Kantoor and Company Line, C-363/99 and C-104/00 respectively) were helpful and apposite i.e. that "perceptible is a relative term and must not be confused with minimal" and "a difference would be regarded as perceptible if it affects important components of either the form of the sign or its meaning".  AG Jacobs added that the difference would have to amount to the addition or subtraction of some significant element such that it would be apparent to both traders and consumers that the mark as a whole would not be suitable, in the ordinary language of trade, as a designation or characteristic of the product.

4.   The first stage of an assessment under Article 7(1)(c) had to be from the standpoint of a native speaker of the language concerned.  If it was descriptive in that language, that was the end of the enquiry.  However, if not, it could in certain limited circumstances be necessary to assess the mark through the eyes (or ears) of a Community consumer whose language was different.

5.   There was no intention in BABY-DRY to depart from the view in Windsurfing (C-108/97 and C-109/97) that it was in the public interest that descriptive signs be made freely available for use by all.

Colour marks

Libertel Groep BV v. Benelux–Merkenbureau* (ECJ; C-104/01; 6.5.03)

Libertel applied to register the colour orange for telecommunications goods and services in classes 9, 35 and 38.  The application form contained an orange rectangle and, in the space for describing the trade mark, the word "Orange".  The Benelux Trade Mark Office refused the application.  Libertel appealed and the Hoge Raad referred various questions to the ECJ. 

The ECJ held that a colour per se, not spatially defined, was capable of constituting a sign within the meaning of Article 2 providingit was sufficient clear, precise, self contained, easily accessible, intelligible, durable and objective (Sieckmann C-273/00).  A mere colour sample would not satisfy these requirements because it could deteriorate with time.  However, a verbal description or internationally recognized identification code would do so. 

The ECJ went on to consider in what circumstances a colour, not spatially defined, was capable of possessing distinctive character.   Firstly, the Court held that in making that assessment, regard had be made to the general interest in not unduly restricting the availability of use by other traders.  Secondly, the Court noted that the perception of the relevant public in relation to signs consisting of a colour per se was not the same as in the case of a word or figurative mark.  Consumers were not in the habit of making assumptions about the origins of goods based on their colour.  Therefore, a colour per se would not normally be capable of distinguishing the goods of a particular undertaking.  However, that did not mean to say that distinctive character may not be acquired through use which had to be assessed by reference to the actual facts and circumstances of the case and not in the abstract.  Finally the Court held that, if the application claimed a large number of goods or services, that was a relevant factor to take into consideration when considering whether the mark was distinctive.

3-D marks

Linde AG, Winward Industries Inc & Rado Uhren AG*(ECJ; C-53/01 to C/55/01; 8.4.03)

The Bundesgerichtshof referred questions in relation to three 3-D applications which had all been refused by the Deutsches Patentamt because they lacked any distinctive character under the national equivalent to Article 3(1)(b) of the Directive.  The applications were for the shapes of a fork lift truck, a torch and a wristwatch respectively.  The Bundesgerichtshof asked:

1.  whether a stricter criterion applies to 3-D marks under Article 3(1)(b) than to other marks; and

2.  in the case of 3-D marks which depict the shape of the product, does Article 3(1)(c) have any significance independently of Article 3(1)(e)?  If so, when considering Article 3(1)(c), or alternatively Article 3(1)(e), must regard be had to the interests of the trade in having the shape available for use, so that in principle, registration is ruled out and is possible only in cases where trade marks meet the requirements of Article 3(3)?

The ECJ held, in answer to the first question, that a stricter test must not be applied to 3-D marks (Philips v. Remington C-299/99).  The ECJ acknowledged that, in practice, it could be more difficult to establish distinctiveness in relation to 3-D shapes than for word or figurative marks, but it did not follow that such marks could not acquire distinctive character.

In answer to the second question, independently of Article 3(1)(e), Article 3(1)(c) was significant for 3-D marks.  If a 3-D shape was not refused under Article 3(1)(e), it might still be refused under Articles 3(1)(b) to (d).  Further, when considering the grounds for refusal under the sub-sections of Article 3(1), regard had to be had to the public interest underlying each one.  In relation to Article 3(1)(c), the public interest lay in keeping descriptive signs available for all and, therefore, subject to Article 3(3), they could not be registered.

Sound Marks

Shield Mark B.V. v. Joost Kist* (AG Ruiz-Jarabo Colomer for the ECJ; C-238/01; 3.4.03) (not yet in English)

Shield Mark owned several Benelux trade marks for sounds which had been registered either as words or figurative marks.  For example some of these marks were   a tune consisting of the first nine notes of Beethoven's piano tune "Fur Elise". The   others were the sound of a cockerel crowing, registered as "Kukelekuuuuuu" (the Dutch version of "cock-a-doodle-doo"). Through the years Shield Mark had used its sound marks as part of the marketing of their services. In 1992, Shield Mark launched a radio campaign using the first nine notes of Fur Elise as the tune. The following year its publicity brochures were displayed in newsagents and bookshops. Every time a brochure was picked up, the Fur Elise tune was played. In 1995, Mr Kist launched a publicity campaign using the same sound signs and advertising techniques used by Shield Mark in previous years. Shield Mark sued Mr Kist for trade mark infringement of its sound marks. The Dutch court rejected the action. Shield Mark appealed and the Hoge Raad referred the questions on registrability of sound marks to the ECJ.

The AG reached the conclusion that Article 2 of the Directive does not preclude the registration of sound marks per se.  However, for a sound to be registered as a trade mark, it must have distinctive character, be capable of clear, precise and complete graphical representation in its own right and its representation be easily accessible. He further concluded that it was for the national court to decide whether the graphical representation of an acoustic sign fulfilled the registrability conditions, taking into account all the relevant factors of the case. Generally the representation of a sign in the form of a musical score fulfilled these conditions. Finally the AG indicated that the description of a sound in a foreign language, including onomatopoeia and the successive pattern of musical notes, were generally insufficient for registration.

Registration of a series

Logica plc's Application* (Appointed Person, Prof. Annand; 5.3.03; O/68/03)

The applicant applied to register a series of 308 trade marks for various goods in classes 9, 16, 35, 36, 37, 38, 41 and 42.  The first mark of the series was the word LOGICA while the remaining 307 added different domain name suffixes. The Hearing Officer refused the application in that it failed to qualify as a series under section 41(2) and, on appeal, Professor Annand upheld the decision.

Professor Annand held that, for a series to be permissible, three conditions had to be satisfied:

1.  the marks must resemble each other in their material particulars;

2.  any differences must not comprise matter which, when considered as a separate element of the mark, would be regarded as having distinctive character; and

3.  any differences must not comprise matter which, in the context of the whole trade mark, substantially affects the identity of the mark.

In arriving at this test, she relied upon the fact that it would be inconsistent with the Directive if section 46(2) (which provides that use of a mark in a form differing in elements which do not alter the distinctive character of the mark suffices to maintain the registration) was held to have a wider ambit than section 41(2). Secondly, whilst it was permissible to have regard to the separate elements making up a mark when assessing distinctive character, what was important was how the relevant public perceived the mark as a whole. Thirdly, an application for a series of trade marks was treated as a single application and, if accepted, would result in a single registration. This single registration had to be certain and unambiguous (Sieckmann, C-273/00), a requirement that was policed by the rules in sections 39 and 44 on permissible amendments to trade marks.

In this case, the correct approach was to take the first mark and compare each subsequent mark with the first. It was found that each of the latter did not resemble the former as to their material particulars. Even though the suffix might be regarded as a non-distinctive element, when the marks were viewed overall the difference substantially affected the identity of the first mark.

The differences in the subsequent marks in the series from the first one were found to substantially affect the identity of the mark and the following dicta from Neutrogena [1996] RPC 473 was noted: "'not substantially affecting its identity' means what it says [and an] alteration which affects the way a mark is or may be pronounced, or its visual impact or the idea conveyed by the mark cannot satisfy the test".

In finding that the various domain name suffixes substantially affected the identity of the first mark LOGICA, the Hearing Officer had determined that they would either lead to doubt in the minds of the public as to the significance of the trade mark as a whole or, would cause the mark to convey a different message. The Appointed Person agreed.

Language regime at OHIM

Estate of Christina Kik (deceased) v. OHIM* (AG Jacobs for the ECJ; C-361/01; 20.3.03)

The applicant applied to register KIK as a CTM.  The application was in Dutch and indicated Dutch as a second language.  The application was dismissed by the examiner and appeals to the Board of Appeal and the CFI were also dismissed.  AG Jacobs was also of the opinion that the appeal should be dismissed.  At issue was the language regime set out in Article 115 of the Regulation.  Article 115(3) provides that an applicant must designate a second language, being a language of the Office, for use in opposition, revocation, or invalidity proceedings.  Article 115(4) provides that for as long as the applicant is the sole party to the proceedings before OHIM, the language used for the filing of the application remains the language of the proceedings.  Implicit in the latter is the exception for procedural documents of a decisional character which are drafted in one of the official languages.  AG Jacobs was of the opinion that the CFI was incorrect in its statement that the Regulation did not in any sense differentiate between languages, but that Article 115 was not illegal because (1) it was not contrary to Community law which did not enshrine equal treatment of languages as a fundamental principle; and (2) it did not infringe the principle of non-discrimination; the language regime was justified and proportionate being adopted for the legitimate purpose of reaching a solution on languages in inter partes proceedings.

Infringement

Travelex Global and Financial Services Ltd & anr v. Commission of the European Communities* (CFI; T-195/00; 10.4.03)

Thomas Cook (now Travelex Global and Financial Services Ltd) claimed that the Euro symbol infringed its figurative trade mark registered in classes 16 and 36 for inter alia cheques, travellers cheques and banking and financial services under Article 5(1)(b) of the Directive.  Thomas Cook claimed that the Commission acted unlawfully by adopting, using and inducing third parties to use the Euro symbol after its trade mark had been registered. 

The CFI dismissed the action.  Firstly, the Commission had not used the Euro symbol in the course of trade.  The Euro symbol is not a sign affixed to products or services to distinguish them from other products and services, thereby enabling the public to identify their origin, but is instead intended to denote a currency unit.  Further, the use of the Euro symbol on hats and scarves which were distributed to Heads of Government and members of the press at the meeting of the European Council in 1996, did not amount to use in the course of trade.  Although such use could be equated to advertising, the Commission did not intend to promote the sale of products bearing the Euro symbol, but intended to promote awareness of that graphic symbol as the official symbol of the single currency.  Secondly, the CFI did not consider that there would be infringement.  The goods were not similar and, although the marks were similar, the interested public (being traders in those countries where Thomas Cook conducted its business using the mark) would not consider that there would be a likelihood of confusion.

Parallel imports

Van Doren + Q. GmbH v. Lifestyle Sports + Sportswear Handelsgesellschaft mbH & anr* (ECJ; C-244/00; 8.4.03)

In summary the facts were as follows. Van Doren + Q. GmbH was a clothes wholesaler and retailer and the exclusive distributor of STUSSY Inc. goods in Germany. There was only one exclusive distributor of STUSSY clothing for each EEA country and they were contractually bound not to sell STUSSY products to intermediaries for resale outside their contractual territory. Lifestyle Sports + Sportswear sold goods bearing the STUSSY trade mark, not acquired from Van Doren, in Germany. Van Doren sued Lifestyle for trade mark infringement.   Lifestyle argued that the rights in the trade mark had been exhausted because the goods were sourced in the EEA where they had been put on the market by the trade mark owner or with its consent.  Lifestyle refused to name its suppliers until such time as Van Doren proved the imperviousness of its distribution system.  The Bundesgerichtshof referred the following question to the ECJ:

Are Articles 28 and 30 EC to be interpreted as meaning that they permit the application of national legislation under which an infringer against whom proceedings are brought on the basis of a trade mark for marketing original goods, and who claims that the trade mark right has been exhausted within the meaning of Article 7 of the Directive has to please and, if necessary, prove that the goods marketed by him have already been put on the market in the EEA for the first time by the trade mark owner himself or with his consent?

The ECJ held that German law imposing the burden of proof on the party alleging exhaustion i.e. on the defendant, was consistent with Community law.  However, this rule would need to be qualified by the provisions relating to free movement of goods (Articles 28 and 30 EC) if there was a real risk of partitioning of national markets.  In that case, the burden would shift to the proprietor to establish that the products were initially placed on the market outside the EEA by him or with his consent.  If the proprietor succeeded in establishing that fact, the burden would shift again to the defendant to prove the consent of the trade mark proprietor to subsequent marketing of the products in the EEA.  The ECJ could envisage a risk of partitioning markets where, as here, the trade mark proprietor sold its products in the EEA using an exclusive distribution system.  Under such a system, if the defendant was required to adduce evidence of its supply channels, the proprietor could obstruct and prevent future supplies.

Comparative advertising

Pippig Augenoptik GmbH & Co. KG v. Hartlauer Handelsgesellschaft mbH & anr* (ECJ; C-44/01; 8.4.03)

The Supreme Court of Austria referred various questions on the interpretation of Directive 84/450 (as amended) on misleading and comparative advertising.  The questions were raised in proceedings between Pippig, a specialist opticians, and the larger Hartlauer which sold spectacles at low prices.  Hartlauer had advertised by inter alia comparing the price of certain frames and lenses it sold with those sold by Pippig, using a photograph of one of Pippig’s shops and a pair of spectacles sold in a Pippig shop.

The first question related to Article 7 which provides:

1. This Directive shall not preclude Member States from retaining or adopting provisions with a view to ensuring more extensive protection, with regard to misleading advertising …

2. Paragraph 1 shall not apply to comparative advertising as far as the comparison is concerned.

The first part of the first question asked whether Article 7(2) applied to all elements of the comparison, namely statements regarding the product offered by the advertiser, statements regarding the product offered by the competitor, and statements regarding the relationship between the two products, or whether it applied only to the latter.  The ECJ held that it was not necessary to distinguish between the differing elements.  All comparative advertising was designed to highlight the advantages of the goods or services offered by the advertiser in comparison with those of a competitor.   In order to achieve that, the message necessarily underlined the differences between the goods or services compared by describing their main characteristics. The comparison made by the advertiser flowed perforce from such a description.

The second part of the first question dealt with the fact that there was an apparent textual contradiction in Article 3a(1)(a).  It provides that: 

Comparative advertising shall, as far as the comparison is concerned, be permitted when the following conditions are met:

(a) it is not misleading according to Articles 2(2), 3 and 7(1)(emphasis added)

The ECJ held that Directive 84/450 embodied an exhaustive harmonisation of the conditions under which comparative advertising in Member States might be lawful. Therefore, stricter national provisions on protection against misleading advertising could not be applied to comparative advertising as regards the form and content of the comparison.

In relation to the third part of the first question, the ECJ held that Article 3a(1)(a) had to be interpreted as meaning that, although the advertiser was in principle free to state or not to state the brand name of rival products in comparative advertising, it was for the national court to verify whether, in particular circumstances, characterised by the importance of the brand in the buyer's choice and by a major difference between the respective brand names of the compared products in terms of how well known they were, omission of the better known brand name was capable of being misleading.

In answer to the second and third questions, the ECJ held that Article 3a did not preclude comparisons of products which were purchased through different distribution channels (the question was raised because many of Hartlauer’s spectacles were obtained through parallel imports) nor did it preclude an advertiser from carrying out a test purchase from a competitor before the product he was intending to compare it with was on the market. 

Lastly, in relation to Article 3a(1)(e), the ECJ held that comparing rival offers, particularly as regards price, was of the very nature of comparative advertising. Therefore, comparing prices could not in itself entail the discrediting or denigration of a competitor who charged higher prices.  The competitor could make as many comparisons as he wanted to and did not need to restrict himself to average price differences.  Further, use of a competitor's trade mark, logo or picture of its shop front, was permissible provided that the advertisement did not breach any of the other conditions laid down in the Directive.