Reported Trade Mark and Copyright Cases for April 2003

17 April 2003

Katharine Stephens


Decisions of the Appointed Person



















Ref. No.  O/467/02*
Application (and, where relevant, earlier mark) AL-BASSAM + device – clothing (25)
Comment G. Hobbs Q.C. allowed the appeal from the decision to exclude the opponent’s evidence, filed in reply, but which was not confined to matters in reply.  The applicant had not objected to the evidence until 8 days before the hearing.  Hobbs Q.C. considered the matter as if it were an application to adduce additional evidence under Rule 13(11), although no such application had been made.  Held: (1) the evidence was material to the case; (2) the irregularity to be rectified was seriousness in nature; but that (3) to allow in the evidence was not unfair, the applicant’s objection, although well-founded, was late and inconsistent with its apparent acceptance of the status quo ante.
 



















Ref. No.  O/468/02*
Application (and, where relevant, earlier mark) 

ACRYLIOS – contact lenses, artificial eyes (9, 10)

 

ACRYSOF, ACRYPAK – intraocular lenses (10)

Comment Prof. Annand allowed the appeal.  The opposition to the application under s. 5(2)(b) was successful.  Held:  (1) there was no family of marks – the application had to be compared to each of the opponent’s marks individually; (2) ACRYSOF was an invented word and ACRY- was not a common prefix for optical products; therefore (3) taking into consideration the similarity of the goods in this highly specialised field, there was a “tangible risk” of confusion between ACRYLIOS and ACRYSOF.
 



















Ref. No.  O/469/02*
Application (and, where relevant, earlier mark) CDCARD – greeting cards incorporating compact discs (16)
Comment S. Thorley Q.C. upheld the decision of the hearing officer under ss. 47 and 3(1)(b).  The mark was prima facie  descriptive and had not acquired distinctiveness through use.  The words “CD card” were an obvious descriptor and the graphic join was insufficient to create distinctiveness.
 



















Ref. No.  O/487/02*
Application (and, where relevant, earlier mark) SURF UNLIMITED – Telecom and information services (38)
Comment G. Hobbs Q.C. dismissed the appeal.  The mark was not registrable under ss. 3(1)(b) and (c).  There were no significant differences between the mark and the admittedly descriptive “unlimited surfing”, being descriptive of internet access without restriction. The fact that the mark was registered as a CTM was not significant as “each national authority is entitled to assess distinctiveness in the light of circumstances prevailing in its own territory
 



















Ref. No.  O/520/02*
Application (and, where relevant, earlier mark) Series of 2D and 3D cylindrical shapes, being slugs of toothpaste, each longitudinally divided in two with different colours, dots and bubbles in each stripe – dentifrices (3)
Comment D. Kitchin Q.C. dismissed the appeal.  The marks were refused under s. 3(1)(b).   The marks may have been novel and not descriptive, being device marks consisting purely of decoration built into them, but they were nevertheless not distinctive of trade origin.  Rather, members of the public would see the colours etc. as indicating certain qualities, ingredients or simply as decoration.
 



















Ref. No.  O/531/02*
Application (and, where relevant, earlier mark) 

EASTERN NATIONAL – passenger transport services (39)

  NATIONAL + dev – automobile rental services (39)

Comment The application for a declaration of invalidity under ss. 47, 5(2)(b) and 5(4)(a) was refused by the hearing officer.  G. Hobbs Q.C. dismissed the appeal.  There was no basis for saying that use of the inherently descriptive word NATIONAL had become distinctive.  The differences in the services would not, of itself, have been sufficient to negate a risk of confusion, but in the absence of evidence of distinctiveness as here, such small differences were sufficient to distinguish rival uses.  
 



















Ref. No.  O/532/02*
Application (and, where relevant, earlier mark) 

GEORGE – perfumery and cosmetics (3)

  GIORGIO – perfumery and cosmetics (3)

Comment D. Kitchin Q.C. dismissed the appeal.  The opposition under s. 5(2) failed.  The hearing officer had had in mind that the marks were different language versions of the same name, but that the average consumer would distinguish between such a well known and established English forename and a version of that forename which was obviously foreign.  Further, the nature of the goods were such, that they would have been chosen with care. 
 

 


Mary Wilson Enterprises Inc. v. Lynda Laurence & anr*  (Appointed Person, G. Hobbs Q.C.; 20.11.02; O/478/02)

The applicant applied to register THE SUPREMES for sound and video recordings, printed matter, clothing, entertainment and performance services in classes 9, 16, 25 and 41.  The hearing officer refused the application under both sections 5(4)(a) and 3(b).  On appeal, the appointed person overturned the decision under section 5(4)(a), but upheld the decision under section 3(6). 

Briefly, the facts were as follows.  The owner of the applicant company, Mary Wilson, was an ex-member of the 60’s girl group.  She left the original group in 1977, shortly before it disbanded.  On leaving the group, and under an agreement with Motown Recording Corp., Ms Wilson relinquished all authorisation to use the name THE SUPREMES.  In the circumstances, the claim by her company to proprietorship of the mark was entirely precluded.  

The application was opposed by two other former members of the group.  After some 8 years after the original group broke up, they started to perform again firstly under the name THE FORMER LADIES OF THE SUPREMES (FLOS) but, from about 1990, under the name THE SUPREMES.  Motown Record Corp., the owner of the mark, did not object to such use in the UK.  The scale of the use by the opponents could not be ascertained because of deficiencies in the evidence, but it was not insubstantial.

Hobbs Q.C. held that that the goodwill attaching to THE SUPREMES name by virtue of the various Motown artists who had performed under that name pre-1977 was a valuable asset.  Contrary to the decision of the hearing officer who held that the goodwill in the name had been abandoned with the disbanding of the group, Hobbs Q.C. held that the goodwill in the name still existed.  However, it was not the property of the opponents.  The opponent’s use of the mark was nonetheless lawful in the absence of objection from Motown.  It also perpetuated and extended the pre-existing goodwill attaching to the name.  But it remained that the opponents had not built up or acquired sufficient property interest in the name to be able to maintain an action for passing off on their own behalf.  Therefore, their opposition under section 5(4)(a), framed as it was on the basis that they were the owners of the goodwill in the mark, failed.

Despite this, Hobbs Q.C. held that the applicant fell “four square within the scope” of section 3(6) by acting with a view to turning other past members of THE SUPREMES into infringers when they were lawful users.  Further, Mary Wilson was precluded by the agreement with Motown from using the name and the applicant had no better right to the name than she did.

Infringement – identical marks

LTJ Diffusion S.A. v. Sadas Vertbaudet S.A.*  (ECJ; 20.3.03; C-291/00)

The facts in the case were as follows.  LTJ Diffusion’s mark, ARTHUR, was a figurative mark  written in a distinctive, handwritten form with a dot below the initial “A”.  LTJ Diffusion brought an infringement action against SADAS for use of ARTHUR ET FÉLICIE which did not reproduce the handwritten form of LTJ Diffusion’s mark.  The Tribunal de Grande Instance’s reference went to the meaning of the word “identical” in Article 5(1)(a) of the Directive (which would also apply mutatis mutandis to Article 4(1)(a)).

The ECJ held that the word “identical” had to be interpreted strictly, that is, any two elements compared should be the same in all respects.  Thus the sign had to be identical to the mark without any addition, omission or modification other than those which were so insignificant that they would go unnoticed by the average consumer.  Such insignificant differences were permissible because the perception of identity had to be assessed globally with respect to the average consumer.  Such a consumer would rarely have the chance to make a direct comparison between the sign and the mark and had to place his trust in the imperfect picture he retained in his mind.  Following on from this conclusion, the Court held that since the perception of identity between a sign and a mark was not the result of direct comparison of all the characteristics of the elements compared, insignificant differences might go unnoticed.

Lis pendens/Related actions

The Prudential Assurance Company Ltd v. The Prudential Insurance Company of  America  (Kennedy, Potter, Chadwick L.JJ.; 12.3.03)

The claimant, P-UK, commenced proceedings seeking to prevent P-US from using the trade marks PRUMERICA and PRUDENTIAL-BACHE in the UK and Europe on the basis that P-US was in breach of a co-existence agreement and, secondly, was infringing two CTMs and seven UK TMs for PRUDENTIAL and PRU.  P-US made an interim application to Laddie J. [2003] FSR 7 to strike out the claims made against it which was refused.  P-US appealed only in relation that part of the application relating to the alleged infringement of the mark PRUMERICA.  The Court of Appeal, Chadwick L.J. giving judgment, dismissed the appeal.

P-US’s submissions were as follows.  P-US had applied to register PRUMERICA in France.  The French Trade Mark Registry had considered whether the mark was confusingly similar to PRUDENTIAL and PRU and held that it was not.  This decision was upheld by the Cour d’Appel.  P-US submitted that this decision was binding on all state signatories to the Brussels Convention under Articles 21 (lis pendens), 22 (related actions) and 26 (recognition of judgments) and on all Member States under the similar rules in the CTM Regulation, specifically Article 105.  

Article 105(1) sets out the rules under which a court is seized of an action in circumstances involving concurrent proceedings for identical/similar CTMs and national marks. Articles 105(2) and (3) prevent successive claims where a final judgment on the merits has been given on the same cause or action between the same parties where there exists dual identity between the CTM and national marks.  P-US submitted that the same cause or action arose whether the question was raised in infringement proceedings or in the context of preventing registration. This meant that once an issue on whether marks were confusingly similar had been decided in the French proceedings, it could not be re-opened in the UK infringement proceedings and the UK court had to reject the action.

The Court of Appeal held that since the French court was seized on the basis of the mark PRUMERICA and the UK court was seized on the basis of the CTMs, PRU and PRUDENTIAL, there was no identity between the marks.  Therefore, Article 105(2) did not apply.  That was sufficient to dispose of the question under the Regulation.  However, the Court went on to consider other submissions.  The Judge had been right to say that Article 105(1) only applied where both actions were infringement actions, but the Court of Appeal did not endorse the same statement made by the Judge in relation to Articles 105(2) and (3).  The words “a final judgment on the merits” in both sub-paragraphs meant that the previous decision had to be given by “a court seized  on the basis of an identical [national/Community] trade mark valid for identical goods or services”.  This did not appear to the Court of Appeal to preclude the argument that the previous decision might have been given in an invalidity action.

The Court of Appeal then had to consider whether P-UK’s action based on the UK marks should be rejected under the Brussels Convention.  Article 26 sets out the general rule - a judgment of one contracting state shall be recognised by another without the need for special procedures.  But the effect of Articles 28 and 16(4) are such that the general rules does not apply in proceedings in which the registration or validity of a national trade mark is put in issue (the Court of Appeal expressly agreeing with Laddie J. in Coin Control v. Suzo  [1997] FSR 660).  In cases involving both infringement and validity of a national mark, the exclusive jurisdiction provisions of Article 16(4) have the effect that the issues are determined in the courts of that  State. Thus, the Brussels Convention did not require the UK court to recognise the French decision.

This decision highlights the requirement for Article 105 of the Regulation.  Without it, there would be nothing in the Convention to require a court seized on the basis of a national trade mark (under Article 16(4) of the Convention) to decline jurisdiction in favour of a Community trade mark court seized on the basis of a CTM or vice versa.  Both would have, in effect, equal ranking claims under Articles 21 and 22 of the Convention irrespective of which court was first seized.  

Section 10(3)

Gleneagles Hotels Ltd v. Quillco 100 Ltd & anr*  (Court of Session, Lord Nimmo Smith, 1.4.03)

The owners of Gleneagles Hotel and all its facilities (including 4 golf courses, a golf academy, a country club, conference facilities and timeshare accommodation) were successful in retaining an interim interdict (injunction) against the defenders’ use of GLENEAGLES FILM STUDIOS and a sign depicting a glen and an eagle in connexion with their development of similar hotel facilities/golf courses/housing etc as well as film studios.

The pursuers owned registered trade marks for GLENEAGLES and for an eagle device for golf courses/hotel services/conference facilities etc. They had built up considerable goodwill in both on a world wide basis. The defenders applied for planning permission for a 800 acre development several miles away from the Gleneagles Hotel and sought to promote it as GLENEAGLES FILM STUDIOS with an eagle device. They argued that the central feature of their project were the film studios rather than the hotel/golf courses etc.

At a press launch the defenders’ pack said they had chosen the name GLENEAGLES  because ‘It is all about putting the studios on the international map…Gleneagles is also a name associated with the very best in Scotland - a 5 star service in a 5 star setting. We make no apologies for adopting a name which is internationally identified with the finest things our country can offer. We feel confident that Gleneagles Film Studios will only enhance the already excellent reputation associated with that title.’

The pursuers sought interim interdict on the basis of trade mark infringement and passing off. The defenders argued that the pursuers had known about their use of the name and device and that they had acquiesced to it. They denied that there was any infringement on the basis that the names and device were not sufficiently similar to cause any confusion. However  it seems to have been accepted by the defenders that they were unlikely to resist a finding of prima facie infringement and passing off at least in respect of their use of the name other than for the film studio complex itself. In recognition of this they offered undertakings to the court not to use the name/device for any part of their development other than the film studio complex.

The main issue of contention therefore was whether the case of trade mark infringement/passing off was made out in relation to the use for the film studios as a category not covered by the  trade mark registrations and not directly in competition with the pursuer’s main business. The Judge, assuming that the film studios could be carved out of the whole development, which seemed doubtful, applied section 10(3).  The Judge accepted that the mark GLENEAGLES had a reputation and held that, although the film studios were not directly in competition with the pursuers, they were  only a few miles away/were an aspect of the leisure industry and closely tied to other features which were in direct competition. In finding that there was a prima facie case the Judge commented ‘In terms of their own literature the defenders seek to borrow something of the pursuers stellar qualities to add lustre to their own enterprise. I am not persuaded at this stage that this is not capable of being regarded as ‘tarnishing’ rather than reflected glory.’   The Judge also upheld a prima facie case of passing off on grounds that there was likelihood of confusion.

The remaining issue was whether the balance of convenience favoured the maintaining of interim interdict. The Judge compared the long established business of the pursuer with the recent incorporation of the defenders and the fact that their business had ‘got little further than a vision’. It was also important that no reason had been given as to why the word GLENEAGLES had been chosen other than to ‘borrow light from the pursuer.’ Accordingly it was clear that the balance lay in favour of the status quo and keeping the interim interdict in place.

Comment:  This decision of Lord Nimmo Smith as one of Scotland’s specialised IP Judges has shown that in section 10(3) cases it is important for the trade mark owner to get to court early as it will be easier to show likelihood of detriment than to prove specific detriment once trading has started. It will also help on balance of convenience as the defender can more easily change the name at an earlier stage. Furthermore under Scottish procedure it is sometimes possible to get an interim interdict without notice, as was done in this case, making it slightly more difficult for the defender to get the order reversed. It can be important to take into account the defender’s motives in using the mark under section 10(3) as if they are clearly seeking to benefit from the pursuers goodwill/reputation/prestige/fame etc this will assist in establishing tarnishing or detriment or possibly unfair advantage. The decision here is a sensible one and should be of assistance to trade mark owners of marks with a reputation.

Passing off – false endorsement 

Edmund Irvine & anr v. Talksport Ltd* (Schiemann, Brooke, Jonathan Parker L.JJ.; 1.4.03)

In 1999, Talksport, which ran Talk Radio, a commercial radio station, decided to generate interest in its change of direction away from news and towards sport by sending promotional material to a number of persons responsible for placing advertisements.  One promotion included a flyer featuring a photograph of Eddie Irvine on the front holding a radio with “talk radio … we’ve got it covered” printed underneath.  The photograph had been doctored – Mr Irvine had been holding a mobile ‘phone when photographed.  The promotion was timed to coincide with the FIA Grand Prix World Championship. Mr Irvine had not given permission to Talksport to use the photograph.  Mr Irvine brought proceedings for passing off which were successful before Laddie J. [2003] EMLR 6, who awarded him £2,000 in damages.  The Court of Appeal, Jonathan Parker L.J. giving the judgment, upheld the decision on liability, but varied the award.  

In relation to liability, the Court of Appeal held that the Judge had not erred on the issue of confusion.  The flyer gave the clearest impression that Mr Irvine endorsed Talk Radio.  The fact that the photograph had obviously been tampered with and may have been intended as a joke did nothing to negate that finding.

In relation to quantum, Laddie J. had been correct to conclude that the principles in the patent case General Tire v. Firestone  [1976] RPC 197 were applicable.  He was also correct in accepting the fact that the promotion was a one-off and limited in scale.  But it was a matter for evidence as whether this fact would have affected the fee that the defendant would have had to pay.  The Court of Appeal held that Laddie J. wrongly rejected the unchallenged evidence from Mr Irvine that his minimum fee for an endorsement of Talk Radio would have been in the region of £25,000 to £31,500.  That evidence was supported by evidence of endorsement fees actually negotiated.  The Judge was wrong to say that these large deals threw no light on the fee that would have been paid for the Talk Radio endorsement.  The Court of Appeal, therefore, substituted £25,000 for the Judge’s figure of £2,000.

Enforcing an injunction against a third party

WWF - Worldwide Fund for Nature (formerly World Wildlife Fund) & anr v. World Wrestling Federation Entertainment Inc v. THQ/Jakks Pacific LLC*  (Gibson, Carnwath, Blackburne L.JJ.; 27.3.03)

Last year, the Court of Appeal upheld an injunction against the Federation enforcing an agreement settling a dispute between it and the Fund ([2002] FSR 33).  The injunction prevented the use of the initials WWF.  Following that Order, THQ, one of the Federation’s licensees, were concerned that if they continued to sell their computer games with the WWF logo embedded in them, they would be in breach of the Order 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. refused the relief claimed [2003] CIPA 40.  The appeal was allowed.

The injunction granted went beyond the familiar formula in that it restrained the Federation from carrying out the prohibited acts “whether by its … licensees or sublicensees”.  The Judge accepted that notwithstanding this reference to licensees, the only person directly bound by the Order was the Federation.  However, he went on to hold that 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.  Overturning this decision, the Court of Appeal held that, although the terms of the injunction were probably framed with the settlement agreement in mind, it had to stand on its own terms.  In the absence of clear words, it could not be interpreted as imposing on the Federation responsibility for acts of independent third parties.  Its effect was to restrain the Federation from (in the future) authorising or causing the doing of the prohibited acts by licensees; but not to make it absolutely liable for actions of licensees under existing agreements.

In the alternative, the Judge held that the Federation would also be in contempt for failure to exercise its power under the settlement agreement to stop THQ’s use of the WWF logo.  The agreement was to be interpreted in accordance with the laws of the State of New York and, therefore, the Court of Appeal did not try to define the precise scope of the Federation’s powers under it.  It was sufficient for this action to note that there was no evidence that the Federation had not sought to exercise its power to stop THQ using the WWF logo.  Further, THQ’s resistance to complying with the Order was not based on any failure by the Federation, rather it was based on impracticality.  As a practical matter, the WWF logo was so deeply embedded in a number of THQ’s computer programs, it was almost impossible to get it out.  Therefore, there was no basis for holding that the Federation was in breach of the injunction by failing to take action against THQ.

The Judge, having found that the Federation was in breach of the Order, held that THQ was aiding and abetting that breach by continuing to use the WWF logo.  The Court of Appeal rejected this.  The actions of THQ causing the breach were those of an independent party pursuing its own legitimate commercial interests under a licence granted to it long before the Order was made.  Such actions did not amount to “aiding and abetting”.  The recent decision of the House of Lords in the Punch  case [2003] 2 WLR 49 in which a third party could be liable for contempt if it “deliberately frustrated” the purpose of an Order did not change this finding.

Finally, THQ submitted that if the Court of Appeal had upheld the decision of the Judge, it should be granted a stay.  By a majority, Carnwath L.J. dissenting, the Court held that, on the balance of considerations, a stay would have been appropriate.  Relevant to this balancing exercise was the fact that there was no evidence of any financial loss to the Fund from the exercise by THQ of its rights under the licence agreement, nor was there likely to be, given the steps taken by THQ to alter its packaging and the undertakings it was prepared to offer.  Further, it was not certain that THQ would be able to recover all its loss from the Federation under the licence agreement.

Copyright - authorship

Robert Hodgens  v. Robert James Beckingham  (Ward, Laws, Parker L.JJ.; 19.02.03)

This was an appeal from a decision of C. Floyd Q.C. sitting as a Deputy Judge ([2003] CIPA 94) regarding the ownership of copyright in the music of a song entitled “Young at Heart”.  The Deputy Judge held that the claimant was a joint author of the song, that he had granted the defendant a royalty free implied licence but that he was not estopped from revoking the licence and claiming a share of future royalties.  

The Court of Appeal dismissed the appeal.  Firstly, in relation to the estoppel issue:  The defendant was unable to show that he had suffered any detriment by reason of his reliance on the claimant’s statements that he did not intend to claim a share of the royalties.  Therefore, it was not unconscionable for the claimant to assert a claim to future royalties.  Secondly, on the issue of joint authorship, the defendant submitted that, under section 11(3) of the Copyright Act 1956, there had to be a common intention to create joint authorship. The Court of Appeal rejected this submission.  The only requirements under section 11(3) were that the authors should have collaborated and that their contributions should not be separated. 

Reporter’s Note:  

1.  I am most grateful to Gill Grassie of Maclay Murray & Spens for the summary of the Gleneagles  case and to my colleague Cristina Garrigues from Bird & Bird for the summary of the Hodgens v. Beckingham  case. 

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

ECJ: www.europa.eu.int/index_en.htm  
High court: www.courtservice.gov.uk/judgments/judg_home.htm
Appointed Person: www.patent.gov.uk/tm/legal/decisions/index.htm 
Court of Session:  www.scotcourts.gov.uk