Reported Trade Mark Cases October 2006

09 November 2006

Katharine Stephens and Zoe Fuller

Decisions of the Appointed Person: First half of 2006

Ref no. 

Ajit Newspaper Advertising, Marketing & Communication Inc.
v Sadhu Singh Hamdard Trust

Application (and where applicable, earlier mark) "AJIT WEEKLY"
- Printed matter, photographs, teaching material, printed publications and newspapers (16)

Professor Ruth Annand dismissed the appeal, holding that the Hearing Officer was right to conclude that the mark was invalid because the application had been made in bad faith in breach of s. 3(6).

The Hearing Officer had reached the conclusion of bad faith on the basis that the CEO of the registered proprietor must have been well acquainted with the AJIT logo of the Sadhu Singh Hamdard Trust given its longstanding use and reputation and that he must have been aware that registration and use of the mark in suit would result in confusion and deception amongst the UK’s Punjabi community. Accordingly, the Hearing Officer had held that registered proprietor actions fell short of the standards of acceptable commercial behaviour.


Ref no. 

Look-O-Look International
B.V.’s application

Application (and where applicable, earlier mark) "You won't believe your eyes"
- Pastry and confectionary, sweets (30)

The Hearing Officer had refused the application on the ground that it was devoid of any distinctive character under s. 3(1)(b). The Hearing Officer had found (i) that the mark was likely to be perceived as a slogan indicating that something of exceptional quality or value was being offered and (ii) that the stylisation of the mark was not sufficient to change this perception.

Professor Annand upheld the Hearing Officer’s decision on the basis that he had correctly applied the ECJ’s guidance in Das prinzip der bequemlichkeit (Case C64/02 P).


Ref no. 

Rolson Tools Ltd v Rodcraft Pneumatic Tools GmbH & Co KG

Application (and where applicable, earlier mark) 

ROLCRAFT – Machine hand tools and light electrical hand tools (7); hand tools (8)

RODCRAFT – Electric machines for use in agriculture, and for domestic use and machine tools (7); hand tools and hand operated implements (8)

Comment Geoffrey Hobbs QC dismissed the appeal against the Hearing Officer’s decision to uphold the opposition under ss. 5(2)(b) and 5(4)(a). In his view, the marks were visually, orally and conceptually similar and the applicant’s specification included goods which were either identical or highly similar to the goods covered by the opponent’s specification. He also found that the applicant’s attack on the Hearing Officer’s findings of fact with respect to goodwill was unfounded.

Ref no. 

Ekornes ASA’s application

Application (and where applicable, earlier mark) Foot stools
- Chairs, recliner chairs, recliner chairs with footstools (20)

The mark consisted of two curved “S” shaped legs which linked into a circular base. The Hearing Officer had rejected the application under ss. 3(1)(b) and s. 3(2)(b).

As regards s. 3(2)(b), Geoffrey Hobbs QC found that the degree of stylisation of the mark was sufficient to counter the suggestion that the shape as a whole consisted essentially of features attributable only to the technical result of using that shape. However, he upheld the Hearing Officer’s decision in relation to s. 3(1)(b) on the basis that the mark was not sufficiently distinguishable from other shapes so as to be regarded as indicative of trade origin. Accordingly, he dismissed the appeal.


Ref no. 

Intelliq Ltd v Datasphere SA

Application (and where applicable, earlier mark) "DATASPHERE"
- Computer software and computer programmes; materials for the recordal of computer programmes; magnetic and optical tapes, discs, cassettes and cartridges, all for the recordal of computer programmes (9)
Comment The Hearing Officer had partially revoked the mark for non use except for “computer software and computer programmes” under s. 46(5) with effect from the date of the application for revocation. Intelliq Ltd argued that the registration should not be allowed to stand for all forms of “computer software and computer programmes”. Geoffrey Hobbs QC allowed the appeal on the basis that the evidence on file was insufficient to justify retention of the registration for all types of “computer software and computer programmes” and he further reduced the specification to “computer software and computer programmes, all for use in or with banking or financial telecommunications systems”. Intelliq Ltd also argued that the order for part revocation should have been made from a date earlier than the date of application for revocation. He noted that Intelliq Ltd had made no such request in its pleadings. He therefore dismissed the appeal on this point.

Ref no. 

Rosa Ma Lladró Castelló v Lladró Commercial SA

Application (and where applicable, earlier mark) 

Conde de Lladro mark

- Alcoholic beverages except beer (33)

Lladro mark
- Periodical publications (16); leather (18); porcelain, ceramic and glassware (21); advertising services (35)


Geoffrey Hobbs QC dismissed the appeal, holding that the Hearing Officer had been right to reject the opposition under ss. 5(3) and 5(4)(a).

Given the degree of disparity between the applicant’s and the opponent’s trading activities, it could not be inferred that consumers would make the necessary mental connection between the marks in question for the purposes of s. 5(3). Having reached this conclusion in relation to s. 5(3) (which does not require the presence of a likelihood of confusion), the Appointed Person found that the objection under s. 5(4) should also fail for lack of any sufficient or proper basis to sustain it.


Ref no. 

Novartis Seeds BV’s application

Application (and where applicable, earlier mark) 

CANTO – Flower seeds, but not including seeds for human consumption (31)

ERIC CANTONA CANTO – Seeds, natural plants and flowers (31

Comment The application had been refused protection in the UK under s. 5(2)(b) on the basis that there was a likelihood of confusion with the earlier mark. Geoffrey Hobbs QC reversed the Hearing Officer’s decision. The Appointed Person was of the opinion that the average consumer was likely to appreciate that the word CANTO echoed the first five letters of the name CANTONA and did so in the idiom of a nickname. As a result, he found that the word CANTO would derive meaning and significance from the name ERIC CANTONA when used in the context of the mark ERIC CANTONA CANTO. Accordingly, he did not accept that the element CANTO performed an independent distinctive role in the context of the composite mark ERIC CANTONA CANTO so that there was scope for the marks to co-exist without giving rise to a likelihood of confusion.

Ref no. 

Oka Direct Ltd v Hokochemie GmbH

Application (and where applicable, earlier mark) 

OKA – paint, varnishes, lacquers, preservatives, mordants, resins (2)

OKO mark 
- Paints, varnishes, lacquers, preservatives, dyes, mordants, resins (2)


Professor Ruth Annand dismissed the appeal, upholding the opposition under s. 5(2)(b).

The Hearing Officer had found that the earlier mark would be perceived as OKO & device rather than HOKO (stylised). In reaching his decision, the Hearing Officer had taken into account the reaction of consumers who did not know the opponent. On this basis, he had held that the marks were similar and that there was a likelihood of confusion. The Appointed Person found that the Hearing Officer was entitled to arrive at his conclusion.


Ref no. 

Applied Energy Products Ltd v Hansgrohe AG

Application (and where applicable, earlier mark) 


Active mark

- Showers (11)

- Mixer taps, shower cubicles, hand showers, shower heads (11)

Comment Professor Ruth Annand reversed the decision of the Hearing Officer and allowed the appeals in respect of s. 5(2)(b). In her opinion, the Hearing Officer failed to contemplate that AKTIVA might wrongly be remembered or transcribed as ACTIVA. This meant that the marks were virtually visually identical and that they also conveyed the same conceptual messages. She also agreed with the opponent that, when assessing likelihood of confusion, the Hearing Officer had failed to take into account the fact that the mark AKTIVA had high distinctive character.

Ref no. 

Sir Ferguson’s application

Application (and where applicable, earlier mark) ALEX FERGUSON – Printed matter; posters; photographs; transfers; stickers; decalcomanias; stickers relating to football (16)
Comment In accordance with the Registry’s practice concerning the registration of famous names, the Hearing Officer had refused the application under ss. 3(1)(b) and (c) on the basis that the application was likely to be perceived as merely descriptive of the subject-matter of the goods, the goods being mere “image-carriers”. The applicant appealed on the ground that the Registry’s practice discriminated against famous people contrary to the ECHR. Geoffrey Hobbs QC considered that the appeal raised a question of general importance and he suggested that the appeal be referred to the ECJ. The parties opposed the proposal. It was agreed that the appeal would proceed in the ordinary way before another appointed person.

Ref no. 

Johnson & Johnson’s application

Application (and where applicable, earlier mark) flower mark
- Toiletries, soaps, shampoos and cosmetics for the care and cleaning of skin and hair (3)

Richard Arnold QC dismissed the appeal, holding that the Hearing Officer was right to conclude that the mark was precluded from registration by ss. 3(1)(b) and (c).

The Hearing Officer’s conclusion was based on the fact that the mark designated a characteristic of the goods in question in that the message conveyed by the sign (i.e. picture of flowers) was that the goods incorporated a floral flagrance.  Had the sign consisted of a more abstract representation of flowers, it may have been capable of distinguishing the applicant’s products from those of other traders.

As the grounds of appeal raised in relation to s. 3(1)(b) were no different from those raised in relation to s. 3(1)(c), the Appointed Person and not review them.


Ref no. 

Taplanes Ltd v Saniflo Ltd

Application (and where applicable, earlier mark) 

DELTA – shower cubicles (11)

DELTA (unregistered)


Professor Annand dismissed the appeal and upheld the Hearing Officer’s findings in respect of s. 5(4)(a).

The Hearing Officer had found that the applicant had protectable goodwill (albeit geographically limited) in the mark DELTA prior to the opponent’s date of first use so that the applicant’s continued use of the mark could not constitute a misrepresentation for the purposes of passing off.


Ref no. 

Sensornet Ltd’s application

Application (and where applicable, earlier mark) 

SENSORNET – Apparatus and instruments for installing optical fibre sensors; scientific, optical, weighing, measuring, signalling, checking (supervision) apparatus and instruments for use in surveys; installation, testing and repair of instruments and apparatus for use in surveys; telecommunications services; surveying services (9, 37, 38, 42)


 IQ Sensornet mark

 - Physical and chemical measuring, signal and checking (supervision) apparatus and instruments on an electronic base (9)

Comment Richard Arnold QC dismissed the appeal to the extent that it challenged the Hearing Officer’s decision that the application was precluded from registration by s. 5(2)(b) since at least some of the goods in the applicant’s Class 9 specification conflicted with the earlier mark.  However, he accepted that the Hearing Officer had been wrong to have refused the application in its entirety when grounds of refusal only existed in respect of some (or possibly all) goods in Class 9.  To that extent, he allowed the appeal and remitted the matter to the Registrar to decide whether or not grounds of refusal existed in respect of all goods in Class 9.  The Appointed Person also made it clear that he expected the Registrar to grant the applicant’s request for division, thereby enabling the application to proceed in respect of Classes 37, 38 and 42.  The Appointed Person did not rule upon the applicant’s request to restrict the specification in Class 9, but left it to the applicant to decide whether to pursue this request with the Registrar.  Despite this, he hoped that applicants would not be discouraged from restricting the specification of goods and services at as early stage as possible in a bid to overcome potential conflicts with earlier rights in order to avoid costs penalties.

Ref no. 

French Connection Ltd v Dennis Woodman

Application (and where applicable, earlier mark) FCUK – watches and clocks; jewellery (14)

Richard Arnold QC dismissed the appeal in relation to this application for invalidity, holding that the Hearing Officer had been correct to conclude that the registration was not contrary to s. 3(3)(a) and that it was, therefore, validly registered.

The Hearing Officer proceeded on the basis that FCUK was not objectionable in itself (i.e. it was not the swear word), but that it was capable of being seen as the swear word through word play, mistake or misconstruing the letters.  This depended on the manner in which the mark had been used.  The Hearing Officer found that there was no evidence establishing that the mark had been used in such a way so as to cause offence amongst an identifiable section of the public.


Ref no. 

Ericsson Mobile Communications AB’s applications

Application (and where applicable, earlier mark) 

F500, F500a, F500i and F500c – telecommunications apparatus and instruments; telecommunications and data communication services (9, 38)

F800, F800a, F800i, F800c – telecommunications apparatus and instruments; telecommunications and data communication services (9, 38)


This appeal concerned two applications to register series of marks.  The Hearing Officer had found that the marks sought to be registered did not qualify as series within s. 41(2) on the basis that the differences between the marks substantially affected the identity of the marks.

Richard Arnold QC agreed with the Hearing Officer’s decision.  However, he allowed the appeals on the basis that the Hearing Officer had failed to give the applicant the opportunity to deal with the objection pursuant to S. 37(3) before issuing a notice of refusal under s. 37(4).


Ref no. 

Aggregate Industries Ltd v Cooper Clark Group Ltd

Application (and where applicable, earlier mark) 

ECOBLOCK – paving block; cementious and concrete paving elements and materials; paving stones; flagstones (19)

ECOBLOCK (unregistered)


Richard Arnold QC dismissed the appeal, upholding the opposition under s. 5(4)(a).

The Appointed Person held that the Hearing Officer was entitled to conclude from the evidence that the opponent had established substantial goodwill and that use of the mark applied for would give rise to misrepresentation.  Accordingly, the Appointed Person found that the Hearing Officer had made no errors of principle.


Ref no. 

Citibank NA and Citicorp v Citybond Holdings plc

Application (and where applicable, earlier mark) 

CITYBOND – Insurance services, travel insurance services, insurance brokerage, insurance consultancy, travel bonding (36) 

CITIBANK – Banking services (financial), insurance, financial affairs, monetary affairs, real estate affairs (36)


Geoffrey Hobbs QC allowed the appeal and set aside the decision of the Hearing Officer who had dismissed the opposition under ss. 5(2)(b), 5(3) and 5(4)(b).

The Hearing Officer had concluded that any similarities between the marks were not such as to give rise to a likelihood of confusion.  The Appointed Person found that the Hearing Officer had failed to take into account all relevant factors in his assessment, in particular the principle of interdependence between the relevant factors.  He found that there were similarities (in terms of marks and services) that would combine to give rise to a likelihood of confusion.

To avoid further disputation and delay, Geoffrey Hobbs QC ordered that “insurance services”, “insurance brokerage” and “insurance consultancy” be unconditionally and finally struck out of the specification, having found that the applicant had earlier unregistered right in relation to “travel insurance services” and “travel bonding”.  He remitted the application to the Registrar on this basis.


Ref no. 

Scholl Ltd  v Lidl Stiftung & Co KG

Application (and where applicable, earlier mark) 

CHIC FEET – Cosmetics, deodorants, perfumery, foot care products and various other goods (3, 5, 8 and 10) 

CHIC mark
- Toiletries such as hair care products, particularly hair styling mousse, hair lacquer and anti-perspirants including perfumed anti-perspirants (unregistered)


The Hearing Officer had rejected the opposition under s. 5(4)(a) on the basis that (i) although the opponent had shown that it had goodwill, it could not be regarded as having reputation in its mark and that (ii) the differences between the marks were such that misrepresentation would not occur.

The opponent appealed the Hearing Officer’s decision in respect to several Class 3 goods.  Richard Arnold QC allowed the appeal holding that (i) the evidence demonstrated that the opponent had acquired a substantial goodwill in the UK and hence reputation and that (ii) the stylisation of the word CHIC in the opponent’s trade mark was not so great as to prevent it from immediately being read as CHIC so that there could be misrepresentation.


Ref no. 

Nisa-Today’s (Holdings) Ltd’s application

Application (and where applicable, earlier mark) 

NT Store Manager mark
- Software, apparatus for recording, transmission or reproduction of sounds or images (9)

IQ SensorNet mark
- Software, printed matter (9, 16)

NT plus mark
- Apparatus for recording, transmission or reproduction of sound or images; telecommunications; software development (9, 16, 42)


The application had been objected to on the basis that it conflicted with two earlier marks under s. 5(2)(b).  In both cases, the Hearing Officer had found that the letters NT were the dominant and distinctive elements of the application as well as of the earlier marks so that there was a likelihood of confusion.

Richard Arnold QC found that the Hearing Officer had not made any error of principle and the appeal was dismissed


Ref no. 

Metrix Electronics Ltd v Chauvin Arnoux

Application (and where applicable, earlier mark) 

metrix electronics mark
- multimeters, air/humidity testers, oscilloscopes, meters (9)

MULTIMETRIX – Scientific, surveying, measuring and monitoring apparatus and instruments (9)

Comment Richard Arnold QC dismissed the appeal and concluded that the Hearing Officer had not erred in his assessment that the respective marks and goods were similar and that there was a likelihood of confusion under s. 5(2)(a) despite the fact that, being businesses users, the relevant customers would be relatively careful and discerning.


Decisions of the CFI

Ref no. 

Gérard Meric v OHIM; Arbora & Ausonia, SL

Application (and where applicable, earlier mark) 

- napkin-pants made out of paper or cellulose (disposable) (16)

Three separate registrations for marks including the words PAM-PAM
-  various clothing and sanitary goods, including napkin-pants made out of paper or cellulose (disposable) (5, 16 and 25)(Spain)


The CFI held that the goods covered by both marks were identical. It noted that, unless proof of use of the earlier marks had been sought, comparison of the goods must concern the description of the goods and not the goods for which the marks are actively used. The goods designated by the earlier mark, although covering babies’ nappies were included in the more general category covered by the application.

The CFI also found that the marks were similar visually, aurally and conceptually. PAM-PIM’S was the dominant element of the sign whilst BABY-PROP occupied a secondary position within the sign and could not detract from the similarity between PAM-PAM and PAM-PIM’S.

Finally, the CFI found that there was a likelihood of confusion between the two marks under Art (8)(1)(b). The targeted public was, at least in part, the same and there was a risk that the public would believe that the goods originated from the same undertaking or economically linked undertakings. The Court noted that in the clothing sector it is common for the same mark to be configured in different ways according to product range, and this includes the use of sub-brands sharing the same dominant element.


Ref no. 

Group Intellectual Property GmbH & Co. KG v OHIM; Tesco Stores Ltd

Application (and where applicable, earlier mark) 

METRO mark
- all classes

- classes 3, 16, 29, 30, 32 and 33


Tesco filed an opposition against the application for the METRO figurative mark based on its UK word mark for METRO. As the initial term of protection of the earlier mark was due to expire shortly after the opposition was filed, OHIM gave a deadline of four months to Tesco to submit additional facts, arguments and evidence to substantiate its case, including evidence of renewal/application for renewal if the mark had expired by the date the evidence was due. Proof of renewal was not adduced by Tesco within the time limit.

The Opposition Division rejected the opposition on the basis that Tesco had not proved that the earlier right was still in force. The BoA upheld Tesco’s appeal as it considered that Tesco did not have to prove renewal since the earlier mark was in force on both the date of filing of the opposition and the date OHIM requested evidence.

The CFI allowed the appeal and held that the BoA had wrongly interpreted Reg 40/94 and the implementing regulation governing assessment of relative grounds for refusal. The Opposition Division and the BoA must take account of changes in circumstances occurring between the opposition being filed and the decision itself. The CFI found that the BoA was incorrect in finding that the Opposition Division does not have the power to request information on the renewal of the earlier mark after the initial evidence had been filed.


Ref no. 

L&D SA v OHIM; Julius Sämann Ltd

Application (and where applicable, earlier mark) 

Tree logo 1
- perfumery, scented air fresheners; advertising (3, 5, 35)


Tree logo 2
- air fresheners (5) (CTM)

+ international and national marks of a similar nature, including in certain cases, a verbal element (3, 5)


The BoA, had rejected, under Art. 8(1)(b), the application in respect of the goods, but allowed it in relation to the services.  The CFI dismissed the appeal in relation to the goods.

The key question here was whether the earlier CTM had acquired distinctive character.  The CFI accepted that due to the prolonged use and well-known nature in Italy of the international mark comprising the shape of a fir tree and the words ARBRE MAGIQUE, the CTM had acquired distinctive character (following the Have a Break, Have a Kit-Kat case, C-353/03).  The court noted that the fir tree silhouette, which corresponded to the CTM, played a predominant role in the ARBRE MAGIQUE mark.  The CFI also held that, although the evidence of sales (over 45m unites) and market share (over 50%) post dated the date of application by a couple of years, the BoA had been right to take it into account.  Its later date did not deprive it of evidential force as regards the finding that the CTM was well known at the date of application.

The CFI then went on to find that the marks were similar.  The Court did not accept that the overall impression of the application was that of a comical character.  It was an image of a fir tree.  Since there was no real argument in relation to the similarity of the goods, the CFI held that there was a likelihood of confusion between the application and the CTM.



Consent to register similar trade mark

DEF-TEC Defense Technology GmbH v OHIM; Defense Technology Corporation of America (CFI; T-6/05; 06.09.06)

In October 1996, Defense Technology Corporation of America (“DTC”) purchased the assets of a third party (the “Wyoming Corporation”) and in doing so acquired a series of registered US trade marks for FIRST DEFENSE. Prior to this transaction, the Wyoming Corporation has given DEF-TEC the right to apply for a community figurative mark for FIRST DEFENSE AEROSOL PEPPER PROJECTOR. DEF-TEC filed the application in September 1997.

DTC opposed the registration under Article 8(3).  It contended that DEF-TEC was its agent within the meaning of that provision and that DEF-TEC has applied without its consent for registration of a sign almost identical to its series of FIRST DEFENSE marks.

The Opposition Division upheld the opposition in so far as it was based on Article 8(3). DEF-TEC appealed to the BoA which dismissed the appeal and then the CFI. The CFI allowed the appeal. It held that the consent given to DEF-TEC by the Wyoming Corporation had been clear, specific and unconditional. The CFI commented that the BoA ought to have determined whether the consent survived the purchase of the Wyoming Corporation and therefore whether DTC was bound by the consent. The CFI held that it could not rule on that point since it was not examined during the proceedings before OHIM.

ECJ decisions

Acquired distinctiveness in a linguistic area

Bovemij Verzekeringen v Benelux-Merkenbureau (ECJ (First Chamber); C‑108/05; 07.09.06)

Bovemij applied to register EUROPOLIS as a word mark with the Benelux Trade Mark Office (BMB) for various financial and logistical services within classes 36 and 39. The BMB refused the application on the basis that the sign had no inherent distinctive character (EURO being a common prefix for “Europe” or “European” and POLIS meaning a “policy” in Dutch) and that there had been no trade acceptance of the sign through use.

Bovemij appealed to the Regional CoA in The Hague and argued that not only did the sign have intrinsic distinctive character, but it had become accepted through use prior to the application date. Bovemij submitted that to establish acquired distinctiveness under Article 3(3) it is sufficient if the sign is regarded as a mark in a substantial part of the Benelux territory (e.g. the Netherlands).  The CoA considered the sign to have no intrinsic distinctive character. As regards the pleading in the alternative, the CoA stayed the proceedings to make a reference to the ECJ.

The CoA firstly asked which territory must be taken into account in order to assess acquired distinctiveness in a MemberState or group of Member States having common trade mark legislation (e.g. Benelux). The ECJ held that in assessing acquired distinctiveness, the only relevant situation is that prevailing in the MemberState or, in the case of the Benelux territory, the part thereof where the ground for refusal existed.

The CoA also sought guidance on the extent the linguistic areas in a Member State/Benelux territory must be taken into account when assessing acquired distinctiveness through use when the sign consists of one or more words of an official language of a Member State/Benelux territory. The ECJ held that if the ground for refusal exists, it is necessary to show that the mark has acquired distinctive character throughout the linguistic area. It then falls to be assessed whether the relevant public (or significant portion thereof) within that linguistic area identifies the product or service as originating from a particular undertaking because of the trade mark.   

Comparative advertising

Lidl BelgiumGmbH & Co.KG v Etablissementen Franz ColruytNV(ECJ (Grand Chamber); C-356/04; 19.09.06)

Colruyt, which operates more than 170 supermarkets in Belgium, issued advertisements, which included the following wording:

“Last year, 2003, you were able once again to make significant savings with Colruyt. On the basis of our average price index for the past year we have calculated that a family spending EUR 100 each week in Colruyt stores saved … between EUR 155 and EUR 293 by shopping at Colruyt’s instead of a hard discounter or wholesaler (Aldi, Lidl, Makro) …”

The ECJ referred to this as the first type of comparative adverting. 

They also launched their BASIC products which were advertised with the wording (referred to as the second type of advertising):
“BASIC: absolutely the lowest prices in Belgium. Even cheaper than the comparable selection of the hard discounters (Aldi, Lidl) …”

Lidl brought proceedings for comparative advertising under Directive 84/450/EEC as amended by Directive 97/55/EC before the Rechtbank van Koophandel which referred various questions to the ECJ.

Article 3a(1)(b) permits comparative advertising when it compares goods or services meeting the same needs or intended for the same purpose.  The ECJ ruled that this provision did not preclude comparative advertising from relating collectively to selections of basic consumables sold by two competing chains of stores in so far as those selections each consisted of individual products which, when viewed in pairs, individually satisfied the requirement of comparability (i.e. as in the first method of advertising).

Article 3a(1)(c) permits comparative advertising when it objectively compares one or more material, relevant, verifiable and representative features of those goods or services, which may include price (emphasis added).  The ECJ ruled that:

  • the “objective” requirement did not mean that, in relation to both the first and second method of comparative advertising, the products and prices of the both the advertiser and his competitors involved in the comparison, had to be expressly and exhaustively listed in the advertisement;

  • "verifiable” features of goods related to (i) price; and (ii) the general level of the respective prices charged by such stores in respect of their selection of comparable products and the amount liable to be saved by consumers, in so far as the goods in question did in fact form part of the selection of comparable products upon which the general price level was determined; and

  • if the details of the comparison are not set out in the advertisement, a feature is still “verifiable” if, but only if, the advertiser indicates, in particular for the attention of the persons to whom the advertisement is addressed, where and how they may readily examine those details with a view to verifying, or, if they do not possess the skill required for that purpose, to having verified, the details and the feature in question as to their accuracy.

Article 3a(1) permits comparative advertising when it is not misleading.  The ECJ ruled that comparative advertising which claimed that an advertiser’s general prices were lower than his main competitors’ (where that comparison related to a sample of products) could be misleading when the advertisement:

  • did not reveal that the comparison related only to such a sample and not to all the advertiser’s products;

  • did not identify the details of the comparison made or inform the persons to whom it was addressed of the information source where such identification was possible; or

  • contained a collective reference to a range of amounts that could be saved by consumers without specifying individually the general level of the prices charged respectively by each of the competitors and the amount that consumers were liable to save by making their purchases from the advertiser rather than from each of the competitors.

Opinion of the Advocate General

Functional shape marks

Dyson Ltd v Registrar of Trade Marks(A.G. Léger; C-321/03; 14.09.06)

Dyson applied to the UK Patent Office for a series of marks in class 9 for vacuum cleaners.  The following description was applied to both representations:  “the mark consists of a transparent bin or collection chamber forming part of the external surface of the vacuum cleaner as shown in the representation”.  The marks were refused under Sections 3(1)(a) and (c).  Patten J. would have dismissed the appeal (see CIPA June 2003), but for questions relating to the interpretation of the ECJ’s decision in Philips v Remington (C-299/99) and therefore referred questions to the ECJ.


Upright vacuum cleanervacuum cleaner


The A.G. was of the opinion that, before examining Article 3, he would consider whether the application was capable of constituting a trade mark for the purposes of Article 2.  He was of the view that it was not because:

1. such a functional feature was not capable of constituting a sign.  He was of the view that the applicant was actually trying to protect a new concept for collecting and disposing of waste and pointed to the fact that the description could cover all appearances of the functional feature claimed.  A concept was not capable of fulfilling a trade mark’s distinguishing function.

2.  a functional feature which formed part of the appearance of a product and which was capable of taking on a multitude of appearances could not be regarded as being capable of graphic representation.  The ambiguity in the application was contrary to legal certainty.

3.  such a functional and imprecise feature did not have distinctive character in that it could not indicate the origin of the product without any possibility of confusion.

The A.G. also considered that the application could not be granted because of Article 3(1)(e)(ii).  The A.G. was of the opinion that the reasoning in Philips also applied to a functional feature which formed part of the appearance of the product, not just the product itself, and that, firstly, the functionality claimed must remain available to all and, secondly, such functionality should, in reality, be protected by patents rather than trade marks.  Finally, he noted that a sign cannot get over the hurdle of Article 3(1)(ii) by acquiring distinctive character through use under Article 3(3).

High Court Decisions

Shape marks

L’Oréal SA & Others v BellureNV& Others* (Lewison J; [2006] EWHC 2355 (Ch); 04.10.06)

In an extensive (200 paragraph) judgment Lewison J found in favour of the L’Oréal group of companies in their trade mark action against Bellure and others, although their claims for passing off and unfair competition were dismissed.  The claimants established trade mark infringement under Section 10(3) in relation to product livery and bottle shape, and under Section 10(1) in relation to the use of certain word marks on comparison lists (the lists which indicated which of the defendants’ range of products smelled like each of the premium brands) and when dealing with customers’ queries.

L’Oréal is a manufacturer of high quality perfumes and other beauty products aimed at the “luxury” end of the perfume and cosmetics market, and sold under well-known brands including L’Oréal, Lancôme and Cacharel.  The defendants had developed a business importing, distributing and selling a range of perfumes (“Création Lamis”) which comprised copies of some of L’Oréal’s products; these copies were not counterfeit in the normal sense, but were “smell-alikes” and were marketed in packaging which L’Oréal alleged took advantage of its products’ names, packaging and brand image. It was accepted that there is nothing unlawful in imitating a smell, but the design of the defendants’ products was calculated to help customers recognise what the perfume would smell like.  The brands in question included the L’Oréal brand “Trésor”, which the defendants’ product “La Valeur” was alleged to be a copy, and “Miracle” to which the defendants’ product “Pink Wonder” bore a strong resemblance in “get up” and smell.  L’Oréal claimed trade mark infringement under Sections 10(1) and 10(3), passing off and unfair competition.

Lewison J found that the reputation of the L’Oréal brands was to a large extent the result of heavy and expensive promotional activity over many years.  This included advertising campaigns and the use of selective distribution to protect the reputation of the brands.  Each of the L’Oréal products which were the subject of the action comprised very stylised and distinctive packaging – the judge went into considerable detail to demonstrate the originality and distinctiveness of each of the products in question.
Lancome Tresor     "La Valeur"    
UK trade mark                    defendants’ “La Valeur”
Lancome Miracle          "Pink Wonder"         
CTM                                       defendants’ “Pink Wonder”

The finding of trade mark infringement under Section 10(3) is likely to be viewed with particular interest.  Lewison J found that the “La Valeur” box and the “Pink Wonder” bottle were sufficiently similar to “Trésor” box and “Miracle” bottle respectively (see above) to create an association in the minds of the average consumer, thereby satisfying the “identical or similar” requirement.   The L’Oréal marks enjoyed an established reputation in the United Kingdom, and the defendants took unfair advantage of that reputation not only by using the marks to enhance their own business but also by profiting from the advertising and promotion of L’Oréal’s fine fragrances (so called “free-riding”).  He stressed that free-riding can be legally permissible if the signs do not have the necessary degree of similarity – the key similarity is that between the sign and the mark, not any similarity between the products. He referred to the O2/Hutchison case and the requirement to consider a sign in context, confirming that the law has moved away from the rigidity of a “mark for sign” comparison.  The context here did not include the smell of the contents which comprised neither the sign nor the mark. In this case, the extent of the similarity between the products in question was deliberate – he found that the infringing products “winked at” consumers to create the association with the premium brand.  Although sales of the premium products had not been materially affected, it was accepted that in due course, sales could be affect and the reputation of these brands could be damaged by the sale of confusingly similar products in down market outlets.

The defendants used identical signs to L’Oréal’s registered marks in comparison lists and in correspondence with customers.  They sought to defend such use under the Comparative Advertising Directive but this defence was rejected because the use did not fulfil the various conditions set out in that Directive  In particular since the defendants were taking unfair advantage of the reputation of the registered marks, the use fell outside the “honest practices” condition.

Combining descriptive words

Easynet Group Plc and Easynet Ltd v easyGroup IP Licensing Ltd (Mann J: [2006] EWHC 1872 (Pat): 14.07.06)

easyGroup applied to register EASY.COM as a trade mark in relation to a wide range of goods and services.  Easynet brought an appeal against the decision of the Hearing Officer to dismiss the opposition to the registration of EASY.COM, the substance being whether the mark EASY.COM fell within Section 3(1)(c) by being descriptive.  Easynet’s submission was, essentially, that EASY.COM was nothing more than a combination of two descriptive terms.    

Mann J. was prepared to assume that the individual elements of the mark (easy and .com) would by themselves be descriptive and within the scope of Section 3(1)(c).  However, he dismissed Easynet’s approach to determining descriptiveness.  The authorities indicated that it was the mark as a whole which must be considered and whether, as a whole, it produces something more than the sum of its parts.  Consideration of the descriptive nature of the separate elements was permissible but not necessarily obligatory, but it was the overall assessment that mattered (SAT.1 SatellitenFernsehen GmbH v OHIM (C-329/02) and BioID AD v OHIM (C-37/03) considered).  There was no separate requirement that the mark be ‘unusual’, ‘out of the ordinary’ or ‘extraordinary’.  References to ‘unusualness’ in authorities were merely a way of showing how an expression might become more than the sum of its parts.  In any event concepts such as these would be difficult to measure.

Mann J. held that the Hearing Officer’s citation of authority showed that he had applied the correct reasoning and criteria and had not erred by not applying the test submitted by Easynet.  Accordingly he was entitled to arrive at the result that he did.  The appeal was dismissed.


Bailey v Haynes* (HH Judge Fysh QC, SC; 01.10.06; [2006] EWPCC (5))

The claimants alleged infringement of UK Unregistered Design Right (UKUDR) and Community Unregistered Design Right (CUDR) in a micromesh design that was knitted to make bait bags used in freshwater fishing.  Specifically, the claimants claimed rights in the mesh design (the smallest repeating element of the woven structure of the mesh, alternatively a 1cm x 1cm section of that mesh).  In response to the case on UKUDR, the defendants argued that the design lacked originality and that it was “commonplace”.  Further, the design was said to be a method or principle of construction.  For CUDR, the design was said to lack novelty and individual character, and that its features of appearance were dictated solely by its technical function.  The defendants denied copying.

Judge Fysh found on close examination that the parties’ respective micromeshes were not identical.  However, he thought that “the person to whom the design was addressed” (UKUDR) and the “informed user” (CUDR) was the average angler rather than a person in the textile industry and so the two designs could be regarded as being substantially the same.  The burden of proof on copying thus switched to the defendants.  Nonetheless, the differences in the micromeshes were a factor to be considered in deciding whether the design had been copied.

For UKUDR to exist the design had to be the original work of the author, who deployed sufficient skill and judgement.  The author had not copied antecedent material and though the Judge thought the author exercised a rather small degree of skill and judgement it was enough to find originality.  Neither was the design “commonplace”.  The field in question was that of warp knitting and there was no evidence that mesh had ever been made to a 3-needle Atlas stitch in the manner of the claimants’ micromesh.  Judge Fysh compared the requirements of novelty and individual character for the subsistence of CUDR with the requirements for subsistence of UKUDR.  The approach under CUDR required the first step of identifying the prior art, which would have to be a woven material rather a written guide for weaving material, and to identify the “informed user”.  It was also for the defendants to prove that there was no entitlement to CUDR.  Since there was no evidence that a mesh had ever been made to this design the attack failed.

However, the Judge found that the Claimant’s design fell within the UKUDR functional exclusion and the UKUDR claim failed for that reason.  The basic appearance of the design was generated by the Atlas warp stitch method so, despite the finding of originality, the design was inevitably a “method or principle of construction”.  In contrast, the exclusion under the CUDR was that protection was not available for “features of appearance dictated solely by its technical function”.  Judge Fysh found that the technical advantages of the micromesh could be achieved to a degree through other designs and so the exclusion did not bite.

Though the claimants were able to establish a CUDR, the defendants were able to prove independent design on the basis of the timescales and chronology of events given in evidence

Reporter’s note: We are grateful to our colleagues at Bird & Bird for their assistance with the preparation of this report:  Céline de Andria (decisions of the Appointed Person), Claire Chapman (Easynet v Easygroup), Sally Shorthose (L’Oreal v Bellure) and Peter Ward (Bailey v Haynes).

ECJ and CFI decisions can be found at  and the reported cases marked * can be found at
Decisions of the Appointed Person can be found at