Reported Trade Mark Cases for September 2004

30 September 2004

Katharine Stephens


Trade Marks

Decisions of the Appointed Person: Round up of the first half of 2004

Only decisions of interest have been summarised below. All decisions are available at www.patent.gov.uk/tm/legal/decisions/appeals2004.htm.



















Ref no. 

O-232-0
Nippon Denki Kabushiki Kaiska’s application

Application (and where applicable, earlier mark) 

VALMO – computers, computer services (9, 42)

VALIMO – scientific equipment and related services (9, 42) (CTM)

Comment Geoffrey Hobbs Q.C. dismissed the appeal. The application had been correctly refused under s.5(2)(b). Geoffrey Hobbs Q.C. did not accept the contention that the people in the market for these goods would take extra care to a degree which made it relatively difficult to deceive them.
   


















Ref no.  O-228-04

Maximuscle Ltd v. SHS International Ltd

Application (and where applicable, earlier mark) 

MAX PRO – medicated nutritional powders for bodybuilding, nutritional, energy and sports drinks for sports people (5, 32)

MAXIPRO – pharmaceutical preparations, infant’s and invalids’ food (5)

Comment Richard Arnold Q.C. allowed the appeal with respect to all the class 5 goods. The Hearing Officer had overlooked that the application related to “medicated” products. They would be sold through the same or similar trade channels to pharmaceutical preparations. There would also be an overlap between consumers. Consequently, since the marks were similar, the application in class 5 should be refused under s.5(2)(b). The appeal in relation to the class 32 goods failed. The Hearing Officer was right in that the goods were not similar.
   


















Ref no. 

O-227-04
Muhammad Sarmad v. Kentucky Fried Chicken (Great Britain) Ltd

Application (and where applicable, earlier mark) 

KENNEDY FRIED CHICKEN – services relating to takeaway foods and beverages (42)

KENTUCKY FRIED CHICKEN – restaurant services (42)

Comment Richard Arnold Q.C. allowed the appeal against the Hearing Officer’s rejection of the opposition under s.5(2)(b). In relation to all items other than fried chicken, the words FRIED CHICKEN were not descriptive. It followed that the marks had a very similar 3‑word structure and were conceptually similar. Given the reputation in the opponent’s mark (despite the re‑branding in 1997 to KFC), there was a likelihood of confusion between the two.
   


















Ref no. 

O-224-04
Matthews Foods Plc’s application

Application (and where applicable, earlier mark) GO COOK! – meat, fish etc (29)
Comment Richard Arnold Q.C. dismissed the appeal. The mark was devoid of distinctive character under s.3(1)(b).
   


















Ref no. 

O-223-04
Charalambous Portelli v. Koninklike Philips Electronics

Application (and where applicable, earlier mark) 

PHILOS – communications networks, mobile phones (9)

PHILIPS – electronic equipment etc (9)

Comment Richard Arnold Q.C. dismissed the appeal and upheld the Hearing Officer’s decision to reject the opposition under s.5(2)(b). The visual and aural similarities between the marks were outweighed by the conceptual differences.
   


















Ref no. 

O-209-04
The Waterless Valeting Company Ltd v. William Struth

Application (and where applicable, earlier mark) 

THE WATERLESS VALETING COMPANY + device + colour claim – vehicle valeting services (37)

WATERLESS in wave form lettering (unregistered)

Comment Prof. Annand dismissed the appeal. The Hearing Officer had correctly rejected the opposition under s.5(4)(a). The opponent failed to show that his mark had come to be recognized as a distinguishing feature of his business, whether the word was printed in pink, or otherwise.
   


















Ref no. 

O-205-04
The Procter & Gamble Company’s application

O-204-04
Application to adduce fresh evidence

Application (and where applicable, earlier mark) QUICK WASH ACTION + device comprising a swoosh and two washing tablets – chemical ingredients, substances for laundry use (1, 3)
Comment 

Geoffrey Hobbs Q.C. dismissed the appeal. The mark was rejected under s.3(1)(b). The words were origin neutral and the device merely reinforced that message. In the recent judgments in Postkantoor and Biomild (C-363/99 and C-265/00 respectively) the ECJ had emphasized that the possession of a distinctive character was a real requirement for registration and that marks had to be carefully examined for compliance with this requirement.

Geoffrey Hobbs Q.C. refused the application to adduce fresh evidence. There was no satisfactory explanation as to why the application had not been made at the proper time. He emphasized that thee was no duty on the Registrar’s Hearing Officers to support their position in oppositions with evidence. Further, there was nothing in the nature of a benefit of the doubt operating in favour of applicants (POSTKANTOOR, C-363/99).

   


















Ref no. 

O-202-04
Renown Leisure Ltd v. 7-Eleven Inc

Application (and where applicable, earlier mark) 

BIG BITES Sandwiches + device – provision of food and drink (42)

BIG BITE – wide range of foodstuffs (29, 30) (CTM)

Comment The Hearing Officer held that the similarity between the goods and services was limited to the lower end of the similarity scale which coupled with the narrow penumbra of protection of the opponent’s mark meant that the opposition under s.5(2)(b) failed. Geoffrey Hobbs Q.C. allowed the appeal. The applicant’s specification lacked specificity and allowed room for convergence of marks and business activities giving rise to a likelihood of confusion.
   


















Ref no. 

O-201-04
Zurich Versicherungs–Gelsellschaft’s application

Application (and where applicable, earlier mark) ZURICH PRIVATE BANKING – printed matter etc. all from Switzerland, financial affairs (16, 36)
Comment  Geoffrey Hobbs Q.C. dismissed the appeal against the decision to refuse the application under ss.3(1)(b) and (c). The Hearing Officer was entitled to observe that the single word ZURICH was the closest that the application got to localizing the message it conveyed and as it was a well‑known financial centre, the application would be seen as no more than an indication of geographical origin.
   


















Ref no. 

O-141-04
Liberty Media for Women LLC v. IPC Media Ltd

Application (and where applicable, earlier mark) 

Ms. (series of 5 marks) – periodical magazines for women (16)

MIZZ – women’s magazines (unregistered)

Comment  Prof. Annand dismissed the appeal against the decision dismissing the opposition under s.5(4)(a). The Hearing Officer’s discussion of the practice in magazine publishing of adopting allusive or semi‑descriptive titles and the consequent ability of consumers to discern one title from another showed that he had taken account of the normal and fair use that might be made of the application in the future.
   


















Ref no.  

O-140-04

IPC Media Ltd v. Liberty Media for Women LLC

Application (and where applicable, earlier mark)  

MIZZ – electronic publications, magazines for teenage girls and young women, advertising provided through a magazine (9, 16, 35)

Ms. (series of 5 marks) – periodical magazines for women (16)

Comment  Prof. Annand dismissed the appeal from the decision to dismiss the opposition under s.5(2)(b). The goods/services were identical or closely allied and the marks were visually and orally similar. Nevertheless, for the reasons given by the Hearing Officer (see above summary of decision O-141-04), the opposition failed.
   


















Ref no. 

O-126-04
Hyperama plc v. Java Bar Espresso

Application (and where applicable, earlier mark) 

JAVA EXPRESS and JAVA EXPRESS + device – restaurant services (42)

JAVA BAR ESPRESSO + device and JAVA + device – restaurant and catering services (42)

Comment David Kitchin Q.C. dismissed the appeal from the decision dismissing the opposition under s.5(2)(b).  On the evidence before him, the Hearing Officer was entitled to conclude that the word JAVA was descriptive of a type and source of coffee and therefore not a distinctive component of each mark when used in relation to the relevant services. Further, the words EXPRESS and ESPRESSO had very different meanings in connection with coffee bars and were non‑distinctive in nature.
   


















Ref no. 

O-124-04
Fashion Wear Services Ltd v. For Eyes Optical Co

Application (and where applicable, earlier mark) 

FOUR EYEZ – ophthalmic preparations, optical apparatus (5, 9)

FOR EYES + device – optical apparatus, retail optical store services, opticians services (9, 35, 42) (CTM)

Comment  David Kitchin Q.C. dismissed the appeal from the decision dismissing the opposition under s.5(2)(b). The Hearing Officer came to the reasonable conclusion that, although the marks were almost indistinguishable to the ear, not only were the goods in issue likely to be chosen with some care, but they would normally be purchased on the basis of some sort of visual inspection. The visual (and conceptual) differences were key.
   


















Ref no. 

O-123-04
Axel E. Hertlein v. Rothmans of Pall Mall Ltd

Application (and where applicable, earlier mark) FAIRLIGHT – tobacco, cigarettes, smokers articles (34)
Comment David Kitchin Q.C. referred the appeal to the High Court because the opposition raised issues of general legal importance. The opposition under ss.5(4)(a) and 3(6) was on the basis that the applicant intended to use the mark in a deceptive manner, in particular, in combination with a get up deceptively similar to the opponent’s. The Hearing Officer dismissed the opposition, but on appeal the Registrar stated that he would welcome guidance on whether it is appropriate to consider the normal and fair use of the mark applied for and the scope of such enquiry under both ss.5(4)(a) and 3(6).
   


















Ref no. 

O-113-04
Ranbaxy Laboratories Ltd v. Astrazeneca AB

Application (and where applicable, earlier mark) 

OMERAN – pharmaceutical preparations (5)

OMEPRAL, OMEPAL – pharmaceutical preparations (5)

Comment The Hearing Officer had rejected the application for registration under s.5(2)(b). Richard Arnold Q.C. dismissed the appeal.
   


















Ref no. 

O-108-04
Dhamecha Foods Ltd v. Pol Roger & Cie

Application (and where applicable, earlier mark) 

JEAN P ROGER – alcoholic beverages (33)

POL ROGER (in stylized form) – beer, alcoholic beverages, hotel services (32, 33, 34)

Comment Prof. Annand dismissed the appeal, upholding the opposition on the basis of s.5(2)(b). The Hearing Officer had found the word ROGER comprised a distinctive, strong and striking component of both marks, the average consumer would rely on imperfect recollection, and with identical goods there was a likelihood of confusion. The absence of actual confusion was not necessarily telling in cases of conflict with an earlier trade mark. Likelihood of confusion should be assessed on the basis of notional and fair use of the respective marks (per Laddie J., Compass Publishing v. Compass Logistics [2004] EWCA 5420 (Ch)).
   


















Ref no. 

O-90-04

Apple Computer Inc. v. TKS-Teknosoft S.A.

Application (and where applicable, earlier mark) 

QUARTZ – a feature of computer software for use in windowing and graphic applications, not including such goods for use in banking (9)

QUARTZ (in stylized form, the A with a triangle in the middle, and a line running from the U underneath the other letters) –programs, tapes, computer programming all linked to banking (9, 16, 42) (CTM)

Comment Prof. Annand dismissed the appeal. The Hearing Officer had upheld the opposition on the basis of the earlier CTM under s.5(2)(a). He found that the marks were identical and the Class 9 goods were similar, albeit not closely similar. Apple Computers argued the marks were not identical because the opponent’s mark was stylized. Held: The differences between the marks were so insignificant that they would be overlooked by an average consumer. The limitation to exclude banking use did not prevent possible overlapping use resulting in complementary products and a likelihood of confusion on a global assessment (LTJ Diffusion SA v Sadas Vertbaudet SA considered). 
   


















Ref no. 

O-88-04
Pfizer Products Inc v. Hoffman-LaRoche AG

Application (and where applicable, earlier mark) 

EVARISE – pharmaceutical and vetinary preparations and substances (5)

EVONISE – pharmaceutical and sanitary preparations (5)

Comment Prof. Annand dismissed the appeal against the refusal to register EVARISE on the basis of s.5(2)(b). The Hearing Officer had noted both marks were seven-letter invented words beginning with EV- and ending in –ISE. He had correctly instructed himself that, whilst permissible to have regard to the components of marks, the average consumer normally perceives a mark as a whole. Prof. Annand therefore rejected the proper comparison being between EVAR and EVON. It was also relevant that neither specification was limited to prescription-only preparations and the degree of circumspection for over-the-counter purchases would be higher than everyday goods but lower than for expensive or sophisticated items.
   


















Ref no. 

O-84-04
KML Invest AB v. Uniters SpA

Application (and where applicable, earlier mark) 

LEATHER MASTER

Comment 

Geoffrey Hobbs Q.C. with regret, dismissed the appeal against the Hearing Officer’s decision that the applicant’s default could not be cured, rendering the application for registration deemed withdrawn. The applicant had failed to serve Form TM8 (notice) with its Counter-Statement defending the Opposition. The prescribed period of 3 months to file a Counter-Statement “in conjunction with notice of the same on Form TM8” (Rule 13(3)) could not be extended. The use of prescribed forms for time-critical documents was unequivocally mandated by the Rules.

   


















Ref no. 

O-83-04
Aunty G Ltd v. Netbiz Ltd

Application (and where applicable, earlier mark) 

AUNTY G’S JOLLY GOOD MEALS – wide range of foodstuffs (29, 30) [application by Aunty G Ltd]

auntie G – wide range of foodstuffs all supplied by e‑commerce means (29, 30, 31) [application by Netbiz Ltd]

Comment Netbiz originally applied to register auntie G for, inter alia, “e‑commerce of online goods covering - … food” in Class 42. The application to amend the specification under s.39 and rule 8(4) whilst retaining the filing date, was allowed (see previous column). As a consequence, the Hearing Officer allowed Netbiz’s opposition to Aunty G Ltd’s application under s.5(2)(b). Geoffrey Hobbs Q.C. dismissed Aunty G Ltd’s appeal against both decisions.
   


















Ref no. 

O-76-04
Henkel KGAA (applicant for invalidity) v. Inlex Locking Ltd

Application (and where applicable, earlier mark) “The colour red … as applied as a patch to a thread of a fastener, or the threaded shank of a component” - applying prevailing torque, non-metallic locking compound to fasteners and the threaded shanks of components (40)
Comment Davud Kitchin Q.C. dismissed the appeal against the Hearing Officer’s decision that the trade mark had not acquired a character distinctive of Inlex. The use of bright colours was common to the fastener trade and the evidence suggested colours were used to denote the nature of patches applied. As a consequence, the application for a declaration of invalidity was upheld under ss.47(1) and 3(1)(b).
   


















Ref no. 

O-74-04
Mohammed S Al Ajlan Sons Company v. Ajlan bin Abdulaziz Al-Ajlan & Brothers Co

Application (and where applicable, earlier mark) 

Arabic characters only translated as ‘Al Ajlan’ – ‘The Swift One’ – textiles and textile goods; clothing, footwear, headgear” (24, 25)

Device + Al Ajlan and Arabic characters meaning ‘Mohammed Al-Saad Al Ajlan Sons Company’ -textile piece goods, for making up into headshawls for export to Middle East (24, 25)

Earlier Mark:
Arabic characters and English translation ‘Ajlan and Brothers’ – clothing for men and children; headgear; footwear (25)

Comment 

Richard Arnold Q.C. allowed an appeal where there had been inconsistent decisions by the Hearing Officer in relation to two oppositions: one upheld, another dismissed.

Although an Arabic speaker would read Al Ajlan in its literal sense as The Swift One or as a surname (Swift One & Brothers) according to context, that did not mean there was no likelihood of confusion under s.5(2)(b) in the case of both the proposed marks. The phonetic and conceptual similarity of the marks and identicality / close similarity of goods, making allowance for imperfect recollection, resulted in a likelihood of confusion in the case of both the proposed marks. Since the specifications were not restricted to goods for export to the Middle East, the likelihood of confusion had to be assessed on the basis of national use in the UK.

   


















Ref no. 

O-44-04
Pemberton Group plc v. Robin Levy

Application (and where applicable, earlier mark) MEZZANINE – night club and disc jockey services; catering and restaurant services (41, 42)
Comment The Hearing Officer had refused the registration of the mark in Class 42 but had allowed it in Class 41. Geoffrey Hobbs Q.C. allowed the opponent’s appeal in relation to the Class 41 mark under s.3(1)(c), on the basis that the propensity of the word MEZZANINE to designate location as a characteristic of the services provided by the proprietor of an establishment was as real in the case of night club services in Class 41 as it was in relation to restaurant services in Class 42. 
   

Continental Shelf 128 Ltd v. Elizabeth Florence Emanuel (David Kitchin Q.C.; O-17-04; 16.1.04)

David Kitchin Q.C. referred the following question to the ECJ: whether a trade mark is to be regarded as liable to mislead the public within the meaning of Article 3(1)(g) or Article 12(2)(b) if, for a period following its assignment with the business of making the goods to which it relates, the use of the mark in relation to those goods is liable to deceive the public into believing, contrary to the fact, that a particular person has been involved in designing and making those goods.

The applicant applied to register ELIZABETH EMANUEL in Clauses 3, 14, 18 and 25. The Hearing Officer dismissed the opposition and application for revocation by well-known dress designer Elizabeth Emanuel, despite his finding of deception and confusion, on the ground that such deception and confusion was “lawful” and the inevitable consequence of the sale of business and goodwill by Elizabeth Emanuel to the predecessors in title to the current applicant of the mark. Elizabeth Emanuel (well-known particularly as a result of designing Princess Diana’s wedding dress) had at first (following the sale of her business) been employed as a designer by the assignee of the business and goodwill, including the registered mark, but she had subsequently left such employment in 1997.

David Kitchin Q.C. held that, on the evidence, a significant portion of the public took the use of the mark ELIZABETH EMANUEL in relation to garments to indicate Elizabeth Emanuel was personally involved in their creation and design. He also held this confusion continued at least to the year 2000 (and therefore not for a short limited period immediately following the sale of a business and its goodwill). He noted that assignments of businesses, including goodwill and trade marks, are common occurrences, and they do not normally render trade marks deceptive, denoting as they do a business source, the control or management of which may, as the public are aware, change. However, what was contended here was that the mark was deceptive on these facts because it falsely indicated the famous designer Elizabeth Emanuel herself was personally involved in designing and making the garments sold under the ELIZABETH EMANUEL mark. The issue was not acte claire and would therefore be referred to the ECJ.

Nicholas Steven Croom v. Lee Alexander McQueen(Geoffrey Hobbs Q.C.; O-120-04; 28.4.04)

The applicant applied to register, as a series of two marks, McQUEEN CLOTHING COMPANY for bags in Class 18 and trousers for casual wear, T‑shirts, sweatshirts, jackets and tops in Class 25. The application was opposed on the basis of the CTM, ALEXANDER McQUEEN, registered for a wide range of goods in Classes 18, 24 and 25. It was also opposed on the basis of a CTM application for the stylized word McQUEEN where the “c” was within the “Q”. This CTM application was also made in Classes 18, 24 and 25 for a wide range of goods. The Hearing Officer allowed the opposition under Section 5(2)(b) based on both the CTM and the CTM application and allowed the opposition under Section 5(4)(a). Geoffrey Hobbs Q.C. allowed the appeal in part.

In relation to the opposition based on the CTM, Geoffrey Hobbs Q.C. held that the distinctive character of the mark resided in the full name/surname combination of ALEXANDER McQUEEN, the one qualifying the other. The differences between the CTM and the application were sufficient to allow the marks to co‑exist without giving rise to a likelihood of confusion. However, the same could not be said of the CTM application for the stylized word McQUEEN and, therefore, Geoffrey Hobbs Q.C. upheld the Hearing Officer’s decision to reject the application, conditional upon the CTM application proceeding to registration. Finally, Geoffrey Hobbs Q.C. allowed the appeal under Section 5(4)(a). There was no basis on which the opponent (as the junior user) could deny the right of the applicant (as the senior user) to make normal and fair use of the name and mark in question for goods of the kind specified in the opposed application, even if (which Geoffrey Hobbs Q.C. did not accept) the marks ALEXANDER McQUEEN and McQUEEN CLOTHING CO fell to be regarded as deceptively similar marks for the purposes of the notional claim in passing off.

The applicant asked for the decision relating to the objection based on the CTM application to be stayed. The stay was sought for as long as it might take (potentially several years) to arrive at a final determination of invalidity proceedings the applicant proposed to bring before OHIM if the CTM application proceeded to registration. Geoffrey Hobbs Q.C. refused the application for a stay. It was not open to him to treat the protection conferred by registration of a CTM as provisional. Article 54(3) of the CTM Regulation specifically confirms that claims for protection can lead to decisions which are legally binding, notwithstanding that the trade mark in question may subsequently be found to be invalidly registered. Furthermore there was a presumption of validity of a CTM under Article 103. Since the applicant had not accepted the Registrar’s invitation to suspend the opposition until the fate of the CTM application was known, he was not well placed to complain of the consequences. 

Infringement – Section 10(1)

Bayer Cropscience SA v. Agropharm Ltd (Patten J.; [2004] EWHC 1661 (Ch); 18.6.04)

Patten J. dismissed the application for summary judgment. The claimant was the proprietor of the mark PATRIOT, registered in Class 5 in relation to “preparations for killing weeds and destroying vermin”. The defendant sold PATRIOT Flying and Crawling Insect Killer and two further products, PATRIOT C and PATRIOT P. Patten J. held that the ECJ’s decision in SA Société LTJ Diffusion v. Sadas (C‑291/00) had changed the law in relation to cases under Section 10(1) and imposed a two stage inquiry. Firstly, the Judge had to ask himself whether the marks were actually identical. If they were, there would be prima facie infringement (provided that the goods were also identical). If they were not, then the question of whether the difference between the marks was of any significance was a question to be determined by the Court, applying not only its own judgment but the average consumer test with all the factual complexities which that imported. Here the marks were not identical. Patten J. held that on an application for summary judgment, it would be wrong and unwise for him to decide the second point definitively without any real evidence as to what the average consumer would himself consider was or was not a distinguishing factor.

Passing Off

Mars UK Ltd v. Burgess (Lloyd J.; [2004] EWHC 1912 (Ch); 26.7.04)

The claimant failed in its application for an interim injunction to restrain the defendant from selling its dry cat food called SUPA CAT. The claimant’s passing off case was that the get‑up of the SUPA CAT packaging, particularly in the use of the colour purple, was confusingly similar to that of their Whiskas product. Lloyd J. held that there was no misrepresentation. Whiskas was sold mainly on its name, which was very prominent on all of its packaging. Although there were some superficial similarities in the packaging, the differences, especially in the colour purple itself, and in the amount and layout of the purple, were more significant. Further, the slogan on the defendant’s packaging that “Two out of three cats prefer new Burgess SUPA CAT” would be seen as an indication of opposition and competition, rather than association when compared to the Whiskas’ slogan “Eight out of ten cats prefer it to their usual dry food”.

The claim to trade mark infringement also failed. The Whiskas’ logo had moved on quite a long way from the labels shown in the registration since the date of application in 1995. The claimant therefore failed to prove sufficient reputation in the mark for the case, brought under Section 10(3), to succeed.







Supa Cat

Whiskas

Parallel Imports

Quiksilver Pty Ltd & Anr v. Charles Robertson (Developments) Ltd (T/A Trago Mills) (Alan Steinfeld Q.C. sitting as a Deputy Judge; [no neutral citation]; 26.7.04)

The defendant was held to have infringed the claimants’ trade mark QUIKSILVER by importing goods from outside the EEA without the proprietor’s consent.

QUIKSILVER is a well known brand of fashion clothing and sporting accessories marketed under that name. The goods sold by the defendant had been manufactured by a Turkish company who had a licence from Quiksilver to manufacture and sell products under the trade marks. The licence was restricted to specified territories in Asia and did not cover any part of the EEA. The Turkish company had been intending to sell the goods to a company in Russia with a view to them being sold in outlets in former Soviet republics. The Turkish company required that payment was made by a confirmed letter of credit before it shipped the goods. A financier, based in Spain, agreed the letter of credit and the goods were shipped to a designated port at the financier’s request. The Russian company defaulted on payment to the financier and the financier therefore exercised its right to sell the goods. The defendant purchased a quantity of the goods in the belief that they had been properly and lawfully put onto the market in the EEA. 

The Court followed guidance from the ECJ in Zino Davidoff SA v. A&G Imports Ltd [2002] RPC 20. The Turkish manufacturer had no reason to believe that the Russian company would default on payment and the financier had not raised the possibility of their selling the goods in the EEA. The defendant had not therefore unequivocally demonstrated that he had consent to market and sell the goods in the EEA. The Court added that even if the Turkish manufacturer could be regarded as having consented there was no basis on which this consent could bind the proprietor of the trade marks. The Turkish manufacturer had a restricted licence to apply the trade marks to goods in specific territories all of which were outside the EEA and therefore had no authority to consent to the goods being placed on the market in the EEA.

Reporter’s note: I am most grateful to my colleagues at Bird & Bird, Audrey Horton and Clare Wilson, for helping me with the preparation of this month’s report.