Reported Trade Mark and Privacy Cases for May 2004

28 May 2004

Katharine Stephens

Trade Marks

Appeals from OHIM decisions

Concept-Anlagen u. Geräte nach ‘GMP’ für Produktion u. Labor GmbH v. OHIM* (CFI; T-127/02; 21.04.04)

 The CFI upheld the decision of OHIM refusing Concept-Anlagen’s application to register the figurative mark “ECA”, the Council of Europe Emblem (consisting of a circle of twelve stars) under Article 7(1)(h) of the Regulation. Concept-Anlagen had applied to register the mark in Classes 9, 41 and 42 for inter alia, computer hardware and software, the arranging and conducting of seminars and conferences, and consultancy in the field of computers.

The Court held that under Article 7(1)(h) registration could not be permitted where a mark was identical to or incorporated an emblem, such as the European Emblem at issue,  or where a mark included any imitation of such emblem from a heraldic point of view. In assessing whether the mark contained an element which could be considered to be an imitation from a heraldic point of view, that element did not have to be identical to the emblem. It was the heraldic description given by the Council of Europe to the European Emblem which had to be considered. On such a comparison it was irrelevant that the circle of stars in the mark sought was not identical to the European Emblem since the relevant public would have the impression that it was an imitation, from a heraldic point of view, of that circle of stars. The mention of the colour of the emblem in the heraldic description also had to be considered irrelevant, since in the application for registration, no colour had been specified. Concept-Anlagen’s argument that the circle of stars in the application had a square background rather than a rectangular one used in the European Emblem had been correctly found by OHIM to be irrelevant. The heraldic description of the European Emblem did not specify the shape of the background.

The Court additionally held that OHIM had correctly used its discretion under Article 6(1)(c) of the Paris Convention in considering whether the application was of a nature to suggest to the public a connection between that mark and the Council of Europe or the European Community or whether it was of such a nature as to mislead the public as to the existence of a connection between Concept-Anlagen and the Council of Europe or the European Community. OHIM had found the existence of an overlap between the goods and services offered by Concept-Anlagen and the activities of the Council of Europe and the European Union and was correct in concluding that registration of the application was likely to give the relevant public the impression that such a connection existed. Finally, the abbreviation “ECA” within the circle of stars in the application reinforced the impression that a connection existed.

Sunrider Corporation v. OHIM* (ECJ); Joined cases T-124/02 and T-156/02; 28.04.04) (decision not in English)

The ECJ dismissed an appeal by Sunrider Corporation regarding the reimbursement of opposition and appeals fees and costs incurred by the parties in respect of the oppositions. 

Sunrider Corporation filed two Community trade mark applications for registration of the word marks “Vitataste” and “Metabalance 44” in respect of goods in Classes 5 and 29 (Cases T-124/02 and T-156/02 respectively). Both applications were opposed and, in both, cases the oppositions were settled with Sunrider agreeing to amend the specifications of Class 5 and Class 29.

In both cases the opponents withdrew their oppositions but sought an order for costs. The Opposition Division decided that Sunrider should bear the costs of the oppositions. On appeal, the Board ordered each party to bear its own costs. Sunrider appealed to the Court claiming that the decision of the Board of Appeal should be partially annulled to the extent that it was ordered to bear its own costs in the proceedings (T-124/02) and its own cost and half the opposition fees (T-156/02).

The ECJ held that the Board of Appeal had been correct in basing their decision on Article 81(3) of the Regulation.  Furthermore, the ECJ held that the Board of Appeal had not infringed the principle of equity.

Finally, in respect of Case T-124/02, since Sunrider had not submitted any arguments alleging the infringement of essential procedural requirements by the Opposition Division, the Board of Appeal had not infringed Rule 51 Regulation 2869/95 by implicitly rejecting its claim for reimbursement of the appeal fee.  Nor had the Board infringed Article 73 of the Regulation by not stating the reasons why it had not ordered the reimbursement of the appeal fee.

Björnekulla Fruktindustrier AB v. Pro cordial Food AB* (ECJ: Case C-371/02; 29.04.04)

In a case relating to the application for BOSTONGURKA for pickled gherkins, the Svea Hovrätt (one of the Swedish Courts of Appeal) referred a question under Article  12(2)(a) to the ECJ.  Under Article 12(2)(a), a trade mark will be liable for revocation if, in consequence of the activities of the proprietor, it has become the common name in the trade for the product or service.  The question was, which circles are relevant? The ECJ compared the different language versions of Article 12(2)(a) and decided that in the English translation the expression in the trade was too restrictive as it only referred to trade circles. The ECJ held that, since the essential function of a trade mark was to be badge of origin, this function could only be fulfilled if the views of all those to whom the trade mark was relevant were taken into account. While this meant principally consumers and end users, if the features of the market of the relevant product so dictated, account should also be taken of intermediaries and indeed all those in the trade who dealt with that product commercially and Article 12(2)(a) should be interpreted accordingly.

Henkel KGaA v. OHIM*; Procter & Gamble Co  v. OHIM* (ECJ; Joined cases C-456/01 and C-457/01; Joined cases C-468/01 to C-472/01; Joined cases C-473/01 and C-474/01; 29.04.04)

Similar judgments were given by the ECJ dismissing appeals by Henkel and P&G from the decisions of the CFI.  All the applications, which were made in Class 3 for washing and dishwashing preparations in tablet form were devoid of distinctive character under Article 7(1)(b).  The individual applications are set out below.

Case number

CFI reference



C-456/01T-335/99Henkel3-D rectangular tablet with rounded corners comprising 2 layers; red (upper) and white (lower)
C-457/01T-336/99Henkel3-D circular tablet comprising 2 layers; green (upper) and white (lower)


T-117/00P&G3-D square tablet with rounded corners, comprising 2 layers; white (upper) and pale green (lower)
C-469/01T-118/00P&G3-D square tablet with rounded corners, comprising 2 layers; white with green speckles (upper) and pale green (lower)
C-470/01T-119/00P&G3-D square tablet with rounded corners being white with blue and yellow speckles
C-471/01T-120/00P&G3-D square tablet with rounded corners being white with blue speckles
C-472/01T-121/00P&G3-D square tablet with rounded corners being white with blue and green speckles
C-473/01T-128/00P&G3-D square tablet with rounded corners, speckles and a square depression in the top surface (no colour restriction)
C-474/01T-129/00P&G3-D square tablet with rounded corners, speckles and a triangular depression in the top surface (no colour restriction)

The ECJ held that all the applications were, in principle, capable of being registered as trade marks.  The CFI had correctly applied the law under Article 7(1)(b), firstly by reference to the products in respect of which registration was sought, and secondly by reference to the perception of the relevant public.  Again, the CFI was correct in stating that the criteria for assessing the distinctive character of 3-D shape-of-product marks was no different from word marks.  Nevertheless, the Court could take into consideration the fact that the relevant section of the public easily recognised words as trade marks, but looked on shapes differently.  Similarly, the CFI was entitled to have regard to the fact that the level of attention given by the average consumer to products such as dishwashing tablets was not high.

The ECJ pointed out that the application of the facts to the law was the exclusive jurisdiction of the CFI (unless there had clearly been a distortion of the evidence produced to it, which was not the case here).  Reappraising factual issues did not constitute a point of law which was subject to review by the ECJ. 

Henkel also appealed on the grounds that the CFI had taken into consideration, when considering distinctiveness, the need to preserve the availability of the sign, contrary to Windsurfing Chiemee (Joined cases C-108/97 and C-109/97).  The ECJ was not persuaded that the CFI had made its decision on this basis, but pointed out that there was no public interest in conferring on a sign the benefit of the Regulation if that sign did not fulfil the essential function of a trade mark.

P&G also appealed on the basis that the CFI did not analyse the overall impression produced by the combination of features of the tablets.  The ECJ dismissed this ground.  The relevant authority might find it useful to first analyse the individual elements making up the sign, but the CFI had not only done this, it has also considered the overall impression produced by the tablets.

Finally, because of its findings on distinctiveness, the CFI did not have to consider at what date each application was considered non-distinctive (the date of application or the date of registration), nor did it have to consider whether there were similar marks on the market.

Eurocermex SA v. OHIM* (CFI; T-399/02; 29.04.04) (decision not in English)

Eurocermex (a company that markets and distributes the “CORONA” Mexican beer in Europe) applied to register as a CTM a 3-D sign in yellow and green colours representing a long neck bottle plugged with a piece of lemon.  The application was refused under Articles 7(1)(b) and (3) in relation to beers, aerated waters and fruit juices (Class 32) and restaurants and bars (Class 42).  The CFI dismissed the appeal, holding that the sign was devoid of distinctive character and had not acquired distinctive character through use.   

The CFI first examined each element of the sign.  It found that each element (that is: the 3-dimensional shape, the piece of lemon and the green and yellow colours) was, or was likely to be, commonly used in the trade for the presentation of the goods in question. It followed that the sign was merely composed of elements which were capable of being commonly used in the trade for the presentation of the goods in question and, on that basis the CFI concluded that the sign was composed of elements devoid of distinctive character in relation to such goods.  Consequently, when taken as a whole, the sign would be devoid of distinctive character unless there was concrete evidence which indicated that it could amount to more that the mere sum of its composite elements. In this instance, no such evidence was available.

As regards the Class 42 services, the function of such services was to sell the goods for which the sign had been refused registration. Since the sign was likely to be commonly used in the trade for the presentation of such goods, this was sufficient indication that it was also likely to be commonly used in the trade for the presentation of the services.  

The sign had not acquired distinctive character through use.  The financial documentation put forward did not contain any detailed information about the market share of the sign or about the investments made to promote it. Indeed, it did not distinguish between the various marks exploited by the producer of the “CORONA” beer or between the geographical markets in which these marks were exploited.


R v. Derrick Davies (Waller L.J. Hughes J. and Dame Heather Steel; [2003] EWCA (Crim) 3110; 6.11.03)

Mr Davies pleaded guilty to 13 counts under Section 92(1)(c) for the possession of goods bearing a sign identical or likely to be mistaken for a registered trade mark, without the consent of the proprietor, with a view to a gain, and the possession of computer discs designed or adapted to making copies of signs identical or likely to be mistaken for certain registered trade marks.  He was sentenced to four years in prison.

At a further hearing, the turnover of the Mr Davies’ business was assessed at £1 million. Confiscation proceedings were then initiated by the Crown under Section 71 of the Criminal Justice Act 1988 and a confiscation order was made for that amount.

Mr Davies appealed the decision on the grounds of lack of jurisdiction because no benefit had been obtained as a result of the abovementioned offences, and on the basis that the confiscated property was not owned by him but belonged to his wife.

The Court of Appeal upheld the Judge’s decision.  Mr Davies had the particular items in his possession with a view to a gain, i.e. with the intention of enhancing the value of the items by applying a false trade mark to them or by their ability to produce false marks. Those items constituted property obtained in connection with the commission of the offence, having a value that was of benefit to Mr Davies. The Court of Appeal also held that the Judge had jurisdiction with regard to the confiscation order.

On the point of the ownership of the property, the Court of Appeal upheld the Judge’s findings that the relevant question was whether Mr Davies had made a genuine gift to his wife.  In this case, the fact that Mr Davies had a 100 per cent interest in the gift meant that the gift provisions were irrelevant and that no genuine gift had been made.

Leave to appeal to the House of Lords was refused.

Jurisdiction over a Trade Mark Coexistence Agreement

Apple Corps Ltd v. Apple Computer Inc* (Mann J.; [2004] EWHC 768 (Ch); 05.04.04)

Apple Corps is the well-known record company formed by the Beatles.  Apple Computer is the well-known producer of computers and software.  In 1991, the parties settled then ongoing UK trade mark litigation by entering into a Trade Mark Agreement by which they agreed that each party had the exclusive right to use their own trade marks worldwide and acknowledged that certain goods and services within the Apple Computer field of use would be capable of delivering content within the Apple Corps field of use.  Prior to this application, Apple Corp issued proceedings for alleged breach of the Agreement following Apple Computer’s launch of a web-based product in the USA called iTunes Music Store (through which the public can download songs over the Internet, store them and play them back over a computer or Apple Computer’s iPod).  Apple Corp applied for leave to serve the proceedings outside the jurisdiction.  Master Moncaster gave permission.  In this application, Apple Computer disputed the jurisdiction of the Court.  Mann J. dismissed the application.

The difficulty over deciding jurisdiction arose from the fact that the Agreement deliberately contained no governing law clause and no jurisdiction clause.  In addition, a protocol was agreed for completion of the Agreement which would not give either party an advantage in terms of where the Agreement was finalised.  One party was based in California and the other in London and completion was to take place over the telephone.  The protocol was not followed.

As to where the Agreement had been made, both parties based their submissions on the well known prima facie rule that where instantaneous forms of communication were concerned, a contract was made where the acceptance was received.  Accordingly, each side sought to analyse the evidence so that, in effect, the penultimate words were uttered within their jurisdiction in order that the final words of acceptance should be uttered outside the jurisdiction and received within it.  From the evidence, the Judge was unable to tell in what order people spoke and therefore in offer and acceptance terms, each was equally likely to be present.  He therefore held that Apple Corp had a good arguable case that the contract had been made in England and therefore under CPR 6.20, Apple Corp could serve out of the jurisdiction.

Mann J. also went on to accept as possible the bold and almost unprecedented submission by Apple Corp that the contract could be shown to have been made in two places at once, i.e. in both England and California.  An analysis in terms of offer and acceptance might not be appropriate in this case.  To find that the Agreement was made in two places at once more closely coincided with the parties’ intentions, at least it more closely coincided with their intentions than the forced and highly random element introduced by the construction of an offer and an acceptance over a long distance telephone call which had not been recorded in any detail.  On this basis, therefore, Apple Corp had a good arguable case that the contract had been made in England, being one of the two countries in which the Agreement had been made.

Mann J. also held that Apple Corp established an alternative ground of jurisdiction in that there was a good arguable case that the governing law of the Agreement was the law of England and Wales.  Under Article 4(1) of the Rome Convention (incorporated into English law by the Contracts Applicable Law Act 1990), Mann J. had to decide which was the country with which the Agreement was most closely connected.  This was a very difficult question because of the worldwide nature of the effect and operation of the Agreement.  However, one of the weightier factors in favour of England was that the Agreement was made in settlement of English litigation.  Finally, Mann J. held that England was the proper place for the claim.  His decision on governing law was key to this decision.


Naomi Campbell v. Mirror Group Newspapers Ltd (House of Lords, Lord Hope, Baroness Hale, Lord Carswell (for the majority) with Lord Nicholls and Lord Hoffman (dissenting); [2004] UKHL 22; 6.05.04)

This was an appeal by Ms Campbell to the House of Lords against the decision of the Court of Appeal who, in turn, had overturned the decision of the High Court. Ms Campbell had brought an action alleging breach of confidence and compensation for a breach under the Data Protection Act 1998. The facts of the case are well known, as is Ms Campbell, but are worth restating. Ms Campbell is an internationally famous fashion model. She had stated in the press that she, unlike many other models, did not abuse drugs. This was not true.

In January 2001, the Daily Mirror had obtained information that Ms Campbell was in fact undergoing therapy at Narcotics Anonymous for an acknowledged and long standing dependency with drugs. The Mirror had also learned from the same source that she was regularly attending meetings at this organisation in The King’s Road, London. It was not known whether this information had come from a member of Ms Campbell’s staff or from a member of the therapy group that Ms Campbell was attending.

As a result, on 1 February 2002, the Mirror published a front page article entitled “Naomi: I am a drug addict” with a photograph of her attending the clinic in question. The photograph was taken secretly and with a long range lens. There were then two further pages inside the newspaper with further photographs and details of the therapy that she was receiving. Some of these details of her treatment were, in fact, inaccurate although the tone of the article was generally sympathetic to her plight. Ms Campbell commenced proceedings on the same day as the article.

At the House of Lords’ hearing, the parties worked from the basis that the following categories of information were at issue: (1) the fact of Ms Campbell’s addiction; (2) the fact that she was receiving treatment; (3) the fact that she was receiving treatment at Narcotics Anonymous; (4) the details of the treatment, how long she had been attending meetings, how often she went, how she was treated in the sessions themselves; and (5) the visual portrayal of her leaving a specific meeting with the other addicts. The parties agreed that in the normal course of events all of these categories of information would attract the protection of Article 8 (Right to a Private Life) of the European Convention on Human Rights (now incorporated into the Human Rights Act 1998).

Counsel for Ms Campbell conceded that given the nature of Ms Campbell’s statements to the press on her use of drugs, she was precluded from asserting protection over the first two categories. Lord Nicholls (dissenting overall) noted and approved the Court of Appeal’s judgment that where a public figure chooses to present a false image, the press are entitled to put the matter straight. The appeal was then, in effect, on the status of the last three categories of information and where the lines were to be drawn between the competing interests of Article 8 and Article 10 (Right to Freedom of Expression).

In his judgment, writing with the majority, Lord Hope stated that in cases where a breach of confidentiality was being alleged, the central and key question was whether the information that was being disclosed was private and not public. For some types of information this was clear cut, for instance medical treatment. The Court of Appeal drew a distinction between therapy and medical treatment, the latter being in a category that obviously merited protection, the former was not. The majority of the House of Lords did not agree with the Court of Appeal.

Lord Hope, endorsing the view of the High Court Judge, stated that the detail of Ms Campbell’s attendance at the Narcotics Anonymous, along with the frequency of her attendance was information that was to be regarded as private. He was of the view that the assessment of whether this information was private should not be approached by adopting the position of whether a reasonable person of ordinary sensibilities would consider them highly offensive, but that it was important to see it in its context, in other words, by approaching the issue through the eyes of a reasonable person who was in need of therapy. The question was then whether a person in this position would regard the disclosure of these facts as highly offensive? Given that a person in this position may well have their therapy disrupted or curtailed by this disclosure, then the publication of the last three categories of facts would be regarded as a breach of privacy to be protected under the law of confidence.

In drawing the balance between the competing rights of freedom of expression and the right to privacy, there were a number of factors that the courts would recognise. The courts would recognise (through the Human Rights Act) that neither of the rights took precedence over the other; journalists should be given some margin in writing their story and the right of privacy should be limited in some circumstances.

On the facts, the majority of their Lordships were of the view that the last three categories of information were of a private nature (akin to medical treatment) and that their publication was not justified in order to write a story that informed the public of the first two categories.

Reporter’s note: I am most grateful to the team at Bird & Bird for helping me with this month’s contribution: Cristina Garrigues, Ravinder Chahil, Celine de Andria, Clare Wilson and Marta Gaspar.

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


High Court: