Betafence Ltd v. The Registrar of Trade Marks (Floyd Q.C.;  EWHC 1353 (Ch); 29.6.05)
Mr Christopher Floyd Q.C., sitting as a Deputy Judge of the High Court, upheld the decision of the Hearing Officer who had refused two applications to register the shape of fencing in Class 6.One of the applications (shown below), consisting of a wire fencing panel comprising parallel wires arranged in groups of seven, was supported by evidence of use. The other, consisting of four parallel wires, was not.
The Deputy Judge reviewed the case law of the ECJ on the question of inherent distinctiveness under section 3(1)(b) as follows: The fundamental principle, in line with trade marks generally, is that a shape mark cannot comply with section 3(1)(b) unless it serves to distinguish goods/services according to their commercial origin (Philips v. Remington C-299/99). The sounding board for distinctiveness is the average consumer, who is taken to be reasonably well informed and circumspect. However the average consumer is not in the habit of relying on shapes as indications of origin (Henkel (bottle shape) C‑218/01). When faced with an application to register an unusual shape, the Registrar needs to have some rational basis for deciding whether it will be taken as an indication of origin. Such a basis may exist where shapes are acknowledged by consumers to have trade mark significance e.g. motor car shapes or grills.Unless this is so, every novel or unusual shape will be entitled to registration. Finally, in Henkel (bottle shape), a distinction is drawn between simple and significant departures from the norm, the latter fulfilling a mark’s essential in origin function.
The Deputy Judge rejected the applicant’s submission that a departure from the norm which was sufficiently great to allow the consumer to distinguish the product without conducting an analytical or comparative examination (paragraph 53 of Henkel (bottle shape)) was a definition of what was meant by “a significant departure” and was sufficient for registration. Such a test would by‑pass any consideration of whether the mark connoted commercial origin. The Hearing Officer was entitled to conclude that fencing designs were perceived by the average consumer as designs and no more. Further, the mark was not saved from its prima facie lack of distinctive character by the evidence of the applicant’s use.
Praktiker Bau und Heimwerkermärkte AG v. Deutsches Patent und Markenamt (ECJ; C-418/02; 7.7.05)
Praktiker Märkte applied to the Deutsches Patent und Markenamt to register the mark PRAKTIKER for retail trade in building, home improvement and gardening goods for the do-it-yourself sector. The application was refused on the basis that the concept of ‘retail trade’ did not denote independent services having autonomous economic significance. The Bundespatentgericht referred various questions to the ECJ which held that:
The concept of ‘services’, in particular in Article 2 of the Directive, covers services provided in connection with retail trade in goods.
For the purposes of registration of a trade mark for such services, it is not necessary to specify in detail the service(s) in question. However, details must be provided with regard to the goods or types of goods to which those services relate.
There was no overriding reason based on the Directive or on general principles of Community law precluding retail services from being covered by the concept of ‘services’ within the meaning of the Directive and, therefore, the trader from having the right to obtain protection through registration of such a mark. The Court noted that OHIM allows the registration of service marks in Class 35.
In order to protect the essential function of a trade mark it was not necessary to rely on a detailed definition of ‘retail services’. Thus, it would be sufficient to use general wording such as ‘bringing together of a variety of goods, enabling customers to conveniently view and purchase those goods’. The applicant would, however, be required to specify the goods or types of goods to which those services related by means, for example, of particulars such as those contained in relation to the mark PRAKTIKER.
Société des produits Nestlé SA v. Mars UK Ltd (ECJ; C-353/03; 7.7.05)
Under Section 3(1)(b), the UK Trade Marks Registry refused to register HAVE A BREAK in Class 30 in respect of chocolate and confectionery. On appeal, Rimer J. upheld that decision. The Court of Appeal upheld the judge on the question of inherent distinctiveness, but referred to the ECJ the question of whether under Article 3(3) of the Directive distinctiveness maybe acquired following or in consequence of the use of the mark as part of or in conjunction with another mark.The ECJ answered that it could.
The key point in relation to the question of acquired distinctiveness was whether, through Nestlé’s use of the slogan “Have a break…Have a KitKat”, the application had acquired distinctive character. The ECJ held that, for the mark to have acquired distinctive character, it need not necessarily have been used independently: Article 3(3) contained no such restriction.Although the expression ‘use of the mark as a trade mark’ referred solely to use of the mark for the purposes of the identifying the product or service as originating from a given undertaking, such identification, and thus acquisition of distinctive character, could be as a result of use of both of a component of a mark and a separate mark in conjunction with a mark.
Medion AG v. Thomson multimedia Sales Germany & Austria GmbH (Opinion of A.G. Jacobs for the ECJ; C-120/04; 9.6.06)
The Oberlandesgericht Düsseldorf essentially asked the ECJ whether there was a likelihood of confusion on the part of the public within the meaning of Article 5(1)(b) of the Directive where a composite word or word/figurative sign (in the present case THOMSON LIFE) comprised a company name followed by an earlier mark (LIFE) which consisted of a single word with “normal distinctiveness” and which, although it did not shape or mould the overall impression conveyed by the composite sign, had an independent distinctive role therein. The referring court’s question was prompted by the “Prägetheorie”, a doctrine of German trade mark law developed by the Bundesgerichtshof.
A.G. Jacobs was of the opinion that a national court should base its assessment on the overall impression given by each mark, bearing in mind, in particular, their distinctive and dominant components, the nature of the public concerned, the category of goods or services in question and the circumstances in which they are marketed.
In coming to that opinion, he usefully reviewed the ECJ’s case law from Sabel C-251/95, Marca Mode C-425/98 and Canon C-39/97 to Lloyd Schuhfabrik C-342/97 (see paras 20 – 26). He noted that the ECJ had not yet ruled directly on the referred question, but that the CFI had considered it in Matratzen Concord v. OHIM T-6/01. In that case, the CFI held that the composite sign, MATRATZEN MARKT CONCORD, was sufficiently similar to the mark MATRATZEN to give rise to a likelihood of confusion, given that the goods covered by the marks were in part identical and in part highly similar. In dismissing the appeal by Order, the ECJ endorsed the approach taken by the CFI which appeared to be similar to the Prägetheorie.
Finally, A.G. Jacobs noted that the CFI when adjudicating on an appeal from an OHIM BoA is acting in a different judicial capacity from the ECJ when ruling on a preliminary reference under Article 234 EC. Therefore, just because the CFI took the view that the marks WESTLIFE and WEST were confusingly similar (Reemark v. OHIM T-22/04), it could not be assumed that the marks THOMSON LIFE and LIFE would necessarily be confusingly similar in another factual context. Indeed, to the A.G., the word LIFE did not appear to be particularly dominant or distinctive in the composite mark at issue; but he stressed that a finding on that point was for the national court.
I. N. Newman Ltd v. Richard T. Adlem (Tuckey, Arden & Jacob L.JJ.;  EWCA (Civ) 741; 21.6.05)
By a majority (Jacob & Tuckey L.JJ.) the Court of Appeal allowed Newman’s appeal from the judgment of David Young Q.C. sitting as a Deputy Judge of the High Court ( EWHC 1563 (Ch)). The Deputy Judge held that the name “Richard T. Adlem Funeral Director” used in connection with funeral services did not exclusively relate to either the claimant or the defendant and, therefore, there was no passing off.
Jacob L.J. held that, by an agreement dated 1993, Mr Adlem, the defendant, gave a third party the exclusive right to use name “Richard T. Adlem Funeral Director”. (Arden L.J. construed the agreement differently in that she held that the third party only acquired a non‑exclusive right to the name). Once Mr Adlem had assigned the goodwill in the funeral business, it was not open to him, to start a fresh business under exactly the same name without more. He was under a duty “to make it absolutely clear that the two businesses [were] distinct” (quoting from footnote 46 to paragraph 14-297 of Kerly’s Law of Trade Marks and Trade Names, 13th (2001) edition). Having sold the goodwill, Mr Adlem was under a duty not to undermine it. To do otherwise would amount to a derogation from grant. This meant that he had no more right to use his name for a competing business than if he had been a complete stranger with the same name starting for the first time.
The claimant, Newman, by purchasing the business from the third party, had acquired the goodwill in the name. Mr Adlem’s advertisements were likely to be deceptive to a substantial number of people; whilst a couple of them simply ignored the fact that he had sold the goodwill in the name, a third suggested that Newman was the usurper to the name which, in the end, made it impossible for them to advertise and almost destroyed their business. As a consequence, the case in passing off succeeded. There was no room for an “own name” defence in the type of advertising used by Mr Adlem since it was not a case of mere background confusion.
Ultraframe (UK) Ltd v. Eurocell Building Plastics Ltd & Anr (Mummery, Jacob, Neuberger L.JJ.;  EWCA (Civ) 761; 24.6.04)
This case involved allegations both of design right infringement (as discussed here) and infringement of a patent (as discussed above by Alan White).
Ultraframe claimed that the defendant’s conservatory design, Pinnacle 500, infringed the unregistered design right (“UDR”) in its Ultralite 500 design considered as the whole and in various elements of the design. Lewison J. held that Pinnacle 500 infringed the assembly as a whole and that there was infringement of the individual panels.
The Court of Appeal upheld the decision, although it held that the Judge had erred in applying too narrow a test for the design field, not having available to him the judgment of the Court of Appeal in Lambretta v. Teddy Smith  EWCA Civ 886. The design field was not limited to conservatory roofs. As Jacob L.J. pointed out, one of the experts had spent his entire working life dealing not just with roofs, but with windows, doors and conservatories. Despite considering this wider field, the designs were not commonplace and there was no reason for disturbing the judge’s decision on infringement.
Neuberger L.J. (with whom Mummery L.J. agreed) further held that the Judge was right to conclude that the defendant was entitled to offer an undertaking under Section 239 of the CDPA, notwithstanding that the design right in question had expired, thus limiting the damages which the claimant could recover. The claimant’s submissions, which were rejected, relied on the use of the present tense in Section 239(1).
Equal treatment under copyright and design law
Tod’s SpA & Tod’s France SARL v. Heyraud SA (ECJ; C-28/04; 30.6.05)
Tod issued proceedings for infringement of registered designs in shoes produced by Heyraud bearing the Tod’s and Hogan trade marks. Heyraud contended that, under Article 2(7) of the Berne Convention, Tod’s was not entitled to claim copyright protection in France for designs that did not qualify for such protection in Italy (the country where Tod’s is established). Article 2(7) states:
“… it shall be a matter for legislation in the countries of the Union [for the protection of the rights of authors in their literary and artistic works; “the Union”] to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin [defined in Article 5(4)] solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works.”
The Tribunal de Grande Instance de Paris considered that the italicised words had the effect of depriving Union nationals, who in the country of origin of their work enjoyed only the protection granted in respect of designs and models, of the right to bring proceedings based on copyright in the countries of the Union which allowed accumulation of protection. Thus, Article 7(2) infringed the principle of non-discrimination on grounds of nationality laid down in Article 12 EC.
The ECJ appeared to accept the point. Since implementation of the obligations imposed on Member States by the Treaty or secondary legislation could not be made subject to a condition of reciprocity, such a rule constituted indirect discrimination on grounds of nationality. Thus, the Court held that: “Article 12 EC… must be interpreted as meaning that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work”.
Reporter’s note: I am grateful to my colleagues at Bird & Bird Claire Bennett, Brigitte Gratton and Cordula Tellmann for helping me with the preparation of this month’s report.
All CFI and ECJ decisions can be found at http://curia.eu.int/en/content/ juris/index.htm.