Reported Trade Mark and Copyright Cases for January 2004

30 January 2004

Katharine Stephens


Trade Marks

Appeals from Registry decisions (OHIM)


Ref. No.  



Application (and, where relevant, earlier mark) TDI – vehicles and car parts, Class 12 and repair and maintenance services Class 37
Comment The ECJ upheld OHIM's refusal to register the mark TDI on the ground that the mark was devoid of any distinctive character within the meaning of Art 7(1)(b). Combinations of letters are commonly used in the motor industry to indicate the characteristics of vehicles and the mark "TDI" was therefore not unusual. The ECJ dismissed Audi's argument that the word TDI could have two different meanings and that the word was not descriptive. However, the EJC held that the First Board of Appeal failed in its duty to explain why it was not possible on the basis of the evidence filed by Audi that the mark ad become distinctive as a result of the use made of it in the community. In any case, that finding was not sufficient to lead to annulment of the contested decision. An annulment of a decision on the ground of a procedural defect will only lead to the adoption of another decision identical in substance to the decision annulled.

Ref. No.  



Application (and, where relevant, earlier mark) 3-D mark bottle for marketing water, Class 32
Comment The CFI overturned OHIM's decision to refuse registration of the shape bottle on the basis of Art. 7(1)(b). OHIM had held that the shape of the bottle was classic and its decoration was also ordinary for that type of packaging, e.g. the flat base, cylindrical shape, the diagonal grooves. However, the CFI held that the Board of Appeal's finding had been based on an examination of the various elements of presentation individually and was the result of an incorrect application of Art 7(1)(b). To ascertain whether the shape of the bottle at issue could be perceived by the public as an indication of origin, the overall impression produced by the appearance of that bottle had to be analysed. Although the bottle's bobbin shape and the oblique, horizontal grooves were features of numerous bottles available on the market, note should be taken of the manner in which those various elements were put together. In the CFI's opinion the shape of the bottle was specific, striking and easy to remember. The overall impact of the bottle shape was capable of holding the attention of the relevant public and enabled it to distinguish the goods covered by the application from those with a different commercial origin.

Ref. No.  



Application (and, where relevant, earlier mark) QUICK  - figurative mark - food goods 29, 30, 31 and 32
Comment The CFI upheld the findings of OHIM's Board of Appeal to refuse registration of the mark in question. The CFI agreed that the link existing between the mark QUICK and the products at issue was sufficient to fall within the provision of Art 7 (1)(c).

Ref. No.  



Application (and, where relevant, earlier mark) MOU – meat and fish prepared food and prepared meals consisting of noodles, rice, corn in Classes 29 and 30
Comment The CFI dismissed the appeal and upheld the decision of OHIM's Opposition Division. The application was refused under Art 8(1) as the marks in the United Kingdom would be seen as confusingly similar. The CFI dismissed the argument that the Court had to take into account the fact that the appellant had intended its products to exclusively appeal to a Chinese or Indonesian clientele living in Western Europe. Furthermore, the fact that the term "MOU" had a meaning in Thai (pork) did not affect its perception by the relevant public who in the CFI's opinion may be likely to think that the food products sold under the mark "KIAP MOU" could be linked to the owners of  the MOU mark.   

Ref. No.  



Application (and, where relevant, earlier mark) 

CASTILLO – milk, cheese and other food products Class 29 and coffee, tea, cocoa, vinegar and other food condiments in Class 30



EL CASTILLO – condensed milk Class 29 and cocoa and coffee based drinks, flavourings for milks and cereal based preparations in Class 30

Comment The CFI dismissed the appeal and upheld the decision of the Third Board of Appeal which refused registration of the mark on the basis of Art 8(1)(b) as the marks, in Spain, would be seen confusingly similar. The CFI concluded that the Board of Appeal was right, first to find that there was a likelihood of confusion between the marks and second to adhere to that finding in the light of the other trade marks containing the word Castillo presented to it.

Puma AG Rudolf Dassler Sport v Sports Soccer Ltd & another(High Court (Etherton J) - 3 November 2003)

The Claimant succeeded in securing summary judgment for registered trade mark infringement as it established that the Defendant had no real prospect before full trial of satisfying the Court that the sports shoes that it sold bearing the Claimant’s trade marks “Avanti” were genuine. Thus the Court held that it would not be right, in accordance with the overriding objective of the Civil Procedure Rules, to let the matter proceed to a full trial. 

Mars UK v Societe des Produits Nestle SA(High Court (Lloyd J) - 9 December 2003)

This judgment concerns an important aspect of Trade Mark practice - amendment. In order to meet Mars’ objections to an application by Nestle to register a three dimensional mark which was recognisable as a “Polo” mint, but without the word “Polo” on it, the Hearing Officer had required that Nestle amend its application so as to show the mark as coloured white and the same size as the “Polo” mint.  Both Mars and Nestle appealed, Mars arguing that such amendments were contrary to section 39 Trade Marks Act 1994, and Nestle that such amendments were not necessary to meet Mars’ objections. 

On appeal the Court held that the power to amend trade mark applications formerly contained in section 17(7) of the Trade Marks Act 1938 had been significantly limited by section 39(2) of Trade Marks Act 1994 and that the amendments allowed by the Hearing Officer in the present case substantially affected the identity of the mark applied or and so were not allowable under section 39(2).

(It is hoped to supplement this brief report next month when the full decision becomes more widely available)

UK Unregistered Designs

A Fulton Company Limited v Totes Isotoner (UK) Limited(Court of Appeal (Phillips of Worth Maltravers MR, Kennedy and Jacob LLJ) – 4 November 2003)

This appeal, from one part of a judgment of HHJ Fysh in the Patents County Court, concerned a finding at first instance that Totes infringed Fulton’s UK unregistered design right in cases for portable folding umbrellas by copying the design of part of the whole article, it having been held that they did not infringe by copying the design of the whole article. Totes argued that there was no separate unregistered design right in part only of an article, and that in the present case the part of the whole article on which Fulton relied was in reality a different design to that of the whole article. The Court of Appeal reviewed all the previous cases at first instance in which it either been held, or assumed, that the UK unregistered design right could subsist in part only of an article, and also several books on the subject of designs which also read section 213(2) of the Copyright Designs and Patents Act 1988 “as meaning that a designer who finds part of his design copied is entitled to complain about that as such, even if the remainder of his design has not been copied.” It agreed with these and refused the appeal, holding that, “subject to complying with the general qualifications for subsistence of [UK] unregistered design right a designer is entitled to prevent the copying entirely or substantially of part only of his design, unless that part is excluded from protection because it is not original (ie is copied or is commonplace) or falls within the must fit / must match exception or any combination of these.”

Ultraframe (UK) Limited v Gary John Fielding and others(Court of Appeal (Waller & Longmuir LLJ, Sir William Aldous) – 12 December 2003)

This appeal, from a judgment of Mr Justice Laddie of 3 October 2002 on a preliminary point, primarily concerns the ownership of certain UK unregistered design rights in components used to make conservatories. The Claimant sought to establish its ownership of UK unregistered design rights in such designs by virtue of having acquired them from the trustee in bankruptcy of the designer, who had made such designs whilst a director of certain other companies. The defendants denied this, claiming such rights by virtue of a series of transactions with such certain other companies, which transactions had been challenged but were not in issue in these proceedings. The statements of legal principle that the Court of Appeal judgment contains are of much wider application than UK unregistered design rights, and, it would appear, could be equally applied to rights such as copyright and patents, where the author or inventor is a director of the company for the benefit of which he undertakes such work.

The Court of Appeal decision contains a very thorough analysis, of more general application, of the circumstances in which the director of a company can be said to be an employee of such company, so that by virtue of section 215(3) of the Copyright Designs and Patent Act 1988 such company owns the UK unregistered design right in a design made by such director. In the light of this analysis, the Court of Appeal reversed the finding by Laddie J that the designer director was an employee and that by virtue of section 215(3) the certain other companies, rather than the designer director, had owned the UK unregistered design right in the component designs. 

The Court of Appeal went on to consider section 215(2) of the Copyright Designs and Patent Act 1988, by which a person commissioning a design owns the UK unregistered design right in it. Having reviewed the case law as to what was meant by commissioning, the Court of Appeal held that the designer director was not commissioned by the certain other companies, as he had never placed himself under an obligation to produce the designs prior to their production.

However, the Court of Appeal, again after a very thorough analysis of the legal issues, again of wider application than to simply the UK unregistered design right, went on to hold that the usual principle was that the designer director would have held such rights on trust for the certain other companies, unless there was some reason to infer any intention to have done otherwise than that which his obligations as a director demanded of him. Finding there to be no reason to infer any such contrary intention, the Court of Appeal held the rights to be have been held by the designer director on trust for the certain other companies. Thus such rights did not pass to the designer director’s trustee in bankruptcy and so the effect of the judgment of Laddie J. was upheld, but for reasons other than he had given.


R Griggs Group Ltd and others v Ross Evans & others(High Court (Prescott QC) – 2 December 2003)

This dispute concerned the ownership of a copyright in a logo. The Claimants, who are involved in the sale of “Dr Martens” footwear, commissioned a new design of logo from an advertising agency, who in turn commissioned the drawing of such logo from the First Defendant. Nothing was said about copyright in the new design of logo, and the First Defendant subsequently purported to assign his copyright as author (and therefore, absent agreement to the contrary, first owner) to the Second Defendant, which had other disputes with the Claimant unconnected with these proceedings, who asserted that they owned the copyright. 

Relying on the extensive review of the law as to commissioned copyright works as set out in Robin Ray v Classic FM [1998] FSR 622, the Court considered the case of a commissioned logo to be one of the rare instances set out in that review in which implying the grant of a licence to the commissioner would be inadequate, as “in order to give business efficacy to the contract, it will rarely be enough to imply a term that the client enjoy a mere licence to use the logo and nothing more”, as the client would “surely need some right to prevent others from reproducing the logo”.  Having rejected the argument that the First Defendant had not been paid the proper rate for the job, and having rejected implying an exclusive licence as less appropriate than implying an outright assignment in the present case, the Court granted the Claimants a declaration that they were the beneficial owners of all aspects of copyright in the logo, and an order that such copyright be formally assigned to them.

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


High Court: