|Application (and where applicable, earlier mark)|| |
- gut for making sausages(18)
- meat, fish, charcuterie (29)
- confectionery (30)
|Comment|| ||OHIM refused registration in relation to class 18 goods and the CFI upheld that decision. The CFI held that there was no need to distinguish between professional and other buyers in the specification of goods, since gut for making sausages was not an everyday item and those buying it would have knowledge of the sector. However, the BoA did not err in taking the view that the relevant public for the assessment of distinctiveness was made up of both those in the charcuterie business and end consumers. It was a marketing decision as to whether an applicant used the mark in respect of packaging or as a mark in respect of end products and this decision was liable to change. Consequently, it would be wrong to examine a mark without considering distinctiveness vis-à-vis consumers. In examining the mark for distinctiveness the CFI held that, in relation to a 3D mark, the usual criteria applied, but added that “the shape of the packaging of such goods can be considered to have distinctive character only if it may be perceived right away as an indication of origin”. In order for that to be the case, the shape had to differ substantially from the basic shape of such goods. Here, the oblong character of the shape dominated over the twisted appearance. The latter was only slightly more prominent than in other charcuterie and consequently lacked distinctive character.|
|Application (and where applicable, earlier mark)|| |
VITAFRUIT – mineral and aerated waters and other non-alcoholic drinks, fruit and vegetable drinks, preparations for making beverages, herbal and vitamin beverages (32)
VITAFRUT – non-alcoholic and non-therapeutic carbonated drinks, non-therapeutic cold beverages of all kinds, fruit and vegetable juices without fermentation (30, 32) (Spain)
The ECJ dismissed the appeal from the CFI. The CFI had held that the earlier mark had been put to genuine use within the meaning of Art. 43 and that the products covered by the marks were similar within the meaning of Art. 8(1)(b).
The opponent had put in evidence of use of his mark, not by him, but by a third party, Industrias Espadafor SA. The ECJ held that CFI had rightly relied upon the presumption that he would not have been able to put in this evidence if he had not consented to such use. The CFI did not reverse the burden of proof.
Secondly, the ECJ held that the CFI correctly assessed that there had been genuine use of the opponent’s mark. Even minimal use of the mark (here sales between May 1996 – May 1997 to a single customer in Spain amounting to no more the EUR 4,800, corresponding to 293 cases of 12 items each) was sufficient to establish genuine use when it served a commercial purpose (following Ansul and La Mer Technology).
The final ground of appeal under Art. 8(1)(b) was dismissed as partly unfounded and partly inadmissible.
Galileo International Technology LLC and Ors v Commission (CFI; T-279/03; 10.05.06) (not yet in English)
Galileo is a group of companies which own several trade marks and company names containing the word GALILEO. Galileo brought a claim before the CFI seeking to prevent the Commission from making any further use of, or from causing any third parties to use, the word GALILEO in relation to a satellite radio navigation system project and to obtain compensation for any damage incurred as a result of the use and promotion by the Commission of this word. The CFI dismissed Galileo’s claim.
Galileo argued that the use by the Commission of the word GALILEO amounted to an infringement of their trade mark rights under Article 9(1)(b) of the Regulation. However, Galileo failed to adduce evidence that the Commission was providing any goods or services in relation to the satellite radio navigation system project. In fact, the Commission had thus far merely used the word GALILEO to designate, in a general way, its satellite radio navigation system project. As the Commission’s role was limited to launching the project, financing the research and development phase of the project and establishing an appropriate framework for the subsequent commercial exploitation of the project, the CFI found that the Commission was not exercising a commercial activity. Accordingly, use of the word GALILEO by the Commission was not “use in the course of trade” for the purposes of Article 9(1)(b). The fact that the Commission had filed a CTM application for the word GALILEO did not alter the CFI’s findings. Furthermore, and in so far as Galileo argued that the Commission had caused third parties who were interested in the exploitation of the project to use the word GALILEO for commercial purposes, the CFI found that such use by third parties could not be imputed to the Commission. Third parties should be held responsible for their own conduct on the market if and when they chose to use the word GALILEO in relation to their commercial activities.
Irrespective as to whether or not the use of the word GALILEO by the Commission was legal, Galileo also argued that the Commission should be held responsible for use of this word on the basis that such use had caused them unusual and special damage. For these purposes, damage is unusual when it exceeds the limits of the commercial risks inherent in operating in the sector concerned. The CFI found that the damage suffered by Galileo could not be considered as exceeding those limits as by choosing the name of a famous scientist as their trade mark, Galileo had voluntarily subjected themselves to the risk that someone else might legally use this name for a satellite radio navigation research programme.
Passing Off/Trade Mark Infringement
(1) Phones4U Ltd (2) Caudwell Holdings Ltd v (1) Phone4u.co.uk Internet Ltd (2) Abdul Heykali (3) New World Communications (Southern Division) Ltd* (Tuckey, Carnwath and Jacob L.JJ.;  EWHC Civ 244; 19.05.06)
The claimants own and operate a nationwide chain of shops called “Phones 4u” which sell mobile pones and accessories and arrange customer contracts. They registered the domain name “phones4u.co.uk” in May 1997 and a logo containing the words “phones 4u” in stylised form was registered as a trade mark in 1999.
The defendants registered the domain name “phone4u.co.uk” in August 1999 and began trading online in March 2000. In April or May, the 2nd defendant offered to sell the domain name to the claimants.
The claimants’ actions for trade mark infringement and passing off both failed at first instance. The claimants appealed to the Court of Appeal.
Giving the leading judgment for the Court of Appeal, Jacob LJ allowed the appeal for passing off for the following reasons:
1. The judge in the first instance applied the wrong test in deciding whether or not at the agreed operative date the claimants had goodwill protectable by passing off. The judge applied the test for distinctiveness required for registration of a trade mark which is of a much higher standard than for testing whether goodwill has been established for the purposes of passing off.
2. From (i), it was inevitable that Phones 4u had established goodwill in August 1999. Jacob LJ held that there could be no realistic use of “phone4u.co.uk”, albeit created innocently, without causing deception. Furthermore, since phone4u.co.uk was only used for trade from about the same time or after the 2nd defendant knew of the Phones 4u shops, the 2nd defendant’s conduct in trying to sell the domain name was comparable to that of the defendant in BT v One in a Million  FSR.
3. The judge in the first instance wrongly characterised a large number of instances of deception as mere confusion. Customers, or potential customers, were lured to the defendants’ website by deception and, once there, the defendants sought to take advantage of the deception by dealing with them. The first instance judge also failed to consider damage to goodwill other than trade diversion.
4. It was held in the first instance that the two entities coexisted for 5 years without significant instances of confusion or deception. However, during that time there was no evidence as to the nature and extent of the 2nd defendant’s business. There was therefore limited opportunity for confusion to have occurred during this time.
Trade Mark Infringement
The claimants applied to register the “Phones 4u” logo both in black and white and in colour. The registration certificate included the words ‘the mark is limited to the colours red, white and blue’. The Court of Appeal had to consider whether the registered trade mark was limited such that there could only be an infringement if the mark is used in those colours.
Jacob LJ sought advice from the Trade Mark Registry which explained that, although the Trade Mark Journal, registration certificate and Register were published only in monochrome at the date of registration, the mark was registered in colour. Jacob LJ rejected the claimants’ argument that it was misleading for the Registry to now show the mark in colour and continue to use these words, and held that the granted registration was for a mark only in colour. Consequently, the Court of Appeal upheld the decision at first instance that the defendants’ use of the words “Phone4u” did not feature those colours and therefore did not constitute trade mark infringement.
Doncaster Pharmaceuticals Group Ltd & Ors v The Bolton Pharmaceutical Company 100 Ltd* (Mummery, Longmore, Lewison L.JJ.;  EWCA Civ 661; 26.05.06)
At first instance, summary judgment for a permanent injunction to restrain trade marks infringement was granted in this parallel imports case. On appeal, the Court of Appeal (Mummery LJ giving the main judgment) held that the case was not appropriate for summary judgment. In so holding, the Court of Appeal warned against the “cocky claimant” and the court being influenced by the professional skill of the presentation of the case and the instinctive reaction of the tribunal to the pressured circumstances in which such applications are often made. It should be remembered that such applications were more a matter of general procedural law than a knowledge and experience of a specialist judge and, as Mummery LJ stated, “Procedural justice is thejudicial a specialist par excellence”.
The case related to pharmaceutical products marketed under the trade mark KALTEN. In 2001, Astra Zeneca began to divest itself of ownership of the mark in favour of different entities in different member states. As a consequence, and as a result of a number of transactions, Bolton claimed that the marks KALTEN in Spain and in the UK were now independently owned and the markets for pharmaceutical products sold under the marks KALTEN were independently operated by different proprietors in each country. As a consequence of the assignment to them of the UK KALTEN mark, Bolton were entitled to prevent the importation into the UK of repackaged and relabelled pharmaceutical products bearing the Spanish KALTEN mark.
The Court of Appeal held that it was insufficient for Bolton simply to rely on the judgment in IHT Internationale Heiztechnik GmbH v Ideal-Standard GmbH  ECR 1-2789 for the proposition that a voluntary assignment of a mark for a particular territory is a surrender of control in the territory in question and does not constitute a consent to the circulation of the goods for the purposes of the doctrine of exhaustion of rights. The judgment inIdeal-Standard, in all probability did not comprehensively identify the variety of circumstances in which the doctrine of exhaustion of rights might be invoked. The limits of the doctrine were therefore less clear than Bolton asserted.
On the facts, there was no evidence of conventional control by Astra Zeneca continuing to manufacture KALTEN pharmaceutical products in Spain. However, it was clear on the limited documents available to the court, that this was not a case of a bear out-and-out assignment of the marks. The court was particularly influenced in its conclusion that this was not a case that was suitable for summary judgment by the incompleteness of the relevant evidence, quite apart from the uncertainty as to the scope of the legal principles in Ideal-Standard.
Honda Motor Company Ltd & Others v Neesam & Ors* (Lewison J;  EWHC 1051 (Ch); 24.03.06)
This was an application for summary judgment. The claimants brought a claim against UK based DK Motorcycles and KJM Superbikes. Both DK and KJM acquired motorbikes from Honda dealers in the US which were contractually bound not to sell Honda bikes outside the territory. The application revolved around whether the claimants’ rights had been exhausted under Article 7 of the Directive.
The defendants argued that the consent of an authorised Honda distributor/dealer to the import of bikes into the EEA counted as the consent of the trade mark proprietor. Lewison J rejected this argument and held that the claimants’ position was stronger than that of the trade mark proprietor in Zeno Davidoff SA v A&G Imports Limited  Ch 109. In Davidoff the trade mark proprietor was entitled to prevent the import of goods into the EEA where the goods had been placed on the market outside the EEA with no restrictions on sale. Furthermore, Lewison J could not accept that a trade mark proprietor should bear the consequences of a distributor/dealer which exceeds its authority or breaks its contract.
The defendants also argued that the claimants were not only aware of the parallel import trading and took no steps to control it, but actually facilitated it. Lewison J held that the claimants had disproved the specific allegations and found the following flaws in the defendants’ reasoning:
(i) The doctrine of exhaustion of rights applies to a particular product and it is not very helpful to show that the claimants had consented to the import of other bikes into the EEA.
(ii) The knowledge of a sales representative cannot amount to consent by the claimants to export.
(iii) Knowledge by the claimants that its US dealers were exporting the bikes did not carry with it knowledge of the destination of the exports and therefore did not itself amount to consent.
(iv) A failure to police restrictions cannot amount to an unequivocal consent to import. If an inference is to be drawn from facts such as to amount to the unequivocal renunciation of rights it must be the only possible inference.
For these reasons, along with the finding that DK was in breach of a settlement agreement with Honda, Lewison J held that the defendants had not shown that there was a real prospect of successfully defending the claim.
The defendants further argued that there were compelling reasons why the case should continue to trial; primarily because they wished to bring Part 20 claims against their suppliers for breach of contract. Lewison J did not consider this to be a sufficient reason for the claimants to be denied the relief to which he considered they were entitled.
Lewison J allowed an inquiry into the bikes acquired from the particular suppliers in relation to whom infringements had been proved.
Trade Mark Co-existence Agreement
Apple Corps Ltd v Apple Computer, Inc* (Mann J;  EWHC 996 (Ch) 8.05.06
This case was a claim for breach of a trade mark agreement made between Apple Corps Ltd (“Corps”), Beatles’ record company, and Apple Computer, Inc (“Computer”), the computer and software house, as to how they would use their respective similar marks. Proceedings were commenced in 1989 which were settled by the trade mark agreement (“TMA”) in 1991. The relevant clause from the TMA were:
“1.2 ‘Apple Computer Field of Use’ means (i) electronic goods, including but not limited to computers, microprocessors and microprocessor controlled devices, telecommunications equipment, data processing equipment, ancillary and peripheral equipment, and computer software of any kind on any medium; (ii) data processing services, data transmission services, broadcasting services, telecommunications services; (iii) ancillary services relating to any of the foregoing …; (iv) printed matter relating to any of the foregoing goods or services; and (v) promotional merchandising relating to the foregoing.
1.3 ‘Apple Corps Field of Use’ means (i) the Apple Musical Artists; the Apple Catalog; personalities or characters which appear in or are derived from the Apple catalog; the names, likenesses, voices or musical sounds of the Apple Musical Artists; any musical works or performances of the Apple Musical Artists; (ii) any current or future creative work whose principal content is music and/or musical performances; regardless of the means by which those works are recorded, or communicated, whether tangible or intangible; (iii) promotional merchandise relating to any of the foregoing; ...
1.4 ‘Apple Computer Marks’ means (i) any design, reproduction or other depiction of an apple, in whole or in part, except for a whole green apple or a half apple (of any color(s)); and (ii) the word ‘Apple’.
1.5 ‘Apple Corps Marks’ means (i) any design, reproduction or other depiction of an apple, in whole or in part, except a ‘rainbow’ or multi colour striped apple (in whole or in part) or any apple (of any color(s)) with a ‘bite’ removed; and (ii) the words ‘Apple’, and ‘Zapple’.
4.3 The parties acknowledge that certain goods and services within the Apple Computer Field of Use are capable of delivering content within the Apple Corps Field of Use. In such case, even though Apple Corps shall have the exclusive right to use or authorize others to use the Apple Corps Marks on or in connection with content within subsection 1.3(i) or (ii), Apple Computers shall have the exclusive right to use or authorize others to use the Apple Computer Marks on or in connection with goods or services within subsection 1.2 (such as software, hardware or broadcasting services) used to reproduce, run, play or otherwise deliver such content provided it shall not use or authorize others to use the Apple Computer Marks on or in connection with physical media delivering pre-recorded content within subsection 1.3(i) or (ii) (such as a compact disc of the Rolling Stones music).”
This present dispute centred on the use made by Computer of its mark in relation to its iTunes Music Store (“iTMS”). In essence, Corps argued that:
At the trial evidence was presented as to the operation of the iTunes software (that is the ‘juke box’ software that enables music to be stored on a computer, played back through the computer and transferred to the iPod) and the iTMS and when, in relation to both, the apple symbol appears. Whilst no objection was taken by Corps to the apple symbol appearing in the context of the iTunes software, Corps did object to its appearance when the iTMS is on screen and being accessed. Corps argued that such use “is a use on or in connection with musical content (ie with the creative works whose principal content is music)”. It was accepted by Corps that the iTMS is a data transmission service and so fell within Computer’s field of use.
Part of Corps case also turned on the extent to which Computer has associated itself with the iTMS music files and their format. Whilst the technical features were not relied upon as a breach, Corps relied on the nature of the transmitted file to counter Computer’s argument that the iTMS is merely a service for the transmission of the digital file, which would bring the store within Computer’s field of use.
The alleged breaches of the TMA included:
1. The use of the apple logo in the upper pane when the iTMS is connected (specifically not when iTunes is functioning as a jukebox).
2. Computer’s ‘record company like’ behaviour, for example, by making available from time to time of tracks or collections which are exclusive to iTMS for a period of time; and arranging a recording session generating a recording made available exclusively through iTMS for a period of time.
3. Four adverts that were broadcast on television in at least one country, which were said to contravene the TMA because the apple logo was used on or in connection with recorded music, which is Corps’ exclusive field of use.
The two principal questions of construction of the TMA arose:
- What was meant by use of a mark “on or in connection with” goods or services within a field of use.
- What is the meaning of clause 4.3 and its effect in circumstances such as those which had given rise to this litigation.
In relation to the first of these questions, the Judge observed that this expression is used in relation to things which are trade marks and the context of the agreement was the reservation of the respective fields for the marks of the parties. He considered that this provided him with “some form of limitation to the otherwise very wide expression “in connection with” ” and that what was required for use “on or in connection with” subject matter “was a degree of trade connection or association with that subject matter relating to its commercial origin”.
So far as clause 4.3 was concerned, the Judge observed that problems of construction can become difficult where boundaries are approached, and that was particularly so where potentially generalised expressions like “in connection with” were concerned. What seemed to have happened in this case was that the parties had anticipated this and had provided for it in clause 4.3 where such things as a data transmission service, or a broadcasting service, or a piece of hardware (Computer’s field) were delivering musical content (Corps’ field). The parties had anticipated that it might be said that the use of Computer’s mark on and in connection with (for example) the delivery service would, or might, also be said to be a use in connection with the content that was delivered via the service.
The Judge’s view was that clause 4.3 anticipated this potential clash. Clause 4.3 sought to resolve these difficulties by implicitly acknowledging that there might be arguments about whether (for example) a Computer apple-branded data transmission service which transmitted music was, in so doing, using the apple mark “on or in connection with” musical content, but avoided those arguments by accepting that an application to the service, without more, would not be taken as being a use “in connection with” the content (or technically the creative work). In other words the mere running of a data transmission service, transmitting musical content, under a Computer apple mark would not, of itself, be a breach.
The Judge acknowledged that there remained the question of the whereabouts of the proper boundaries of such use and that there had to be some limits. His view was that the clause was intended to protect a fair and reasonable use of the mark when applied to the service. Although the expression “fair and reasonable” does not appear expressly in the TMA, he said it was necessary to be implied in order to make the provision work.
Therefore, in relation to the alleged breaches set out above, the judge held:
(1) Use of the Apple mark in iTMS
Whether or not the use of the apple logo in the upper pane when the iTMS is connected was a breach of the TMA was ultimately a matter of impression. The mark had to be looked at with the eyes of a reasonable and sensible user to determine what impression would be given.
The Judge’s view was that the presence of a logo, which is the logo of the download service, would not likely be taken by a user as a sort of trade association with the content. That was not, in his view, the sort of association that fell within the TMA. He noted that a retailer offers goods which have originated from others, very often under the mark of others. “In doing so, and in advertising his sales service by the copious use of his own mark, he does not suggest that the goods are his in terms of trade origin or trade source, particularly if the originator’s mark is used.” In this case it was the perception of the relevant customer, and not the intellectual analysis of the trade mark lawyer, that was the relevant test.
On iTunes the apple clearly denoted the software, and it was not suggested by Corps that that was an impermissible association with the music content shown in the main window. Once in the iTMS the apple would be taken as denoting the store (in the sense of the service) and perhaps the software (but that did not matter), but the Judge did not see that it went further than that such that it added some additional form of trade connection with the content of the recordings.
In addition, in the Judge’s view this was precisely the sort of situation that clause 4.3 was intended to address – Computer using its mark on and in connection with its service and that service delivering “content” within Corps’ field of use.
(2) Computer’s ‘record company like’ behaviour
The Judge commented that he did not think that these actions crossed the line. The activity closest to the boundary was the availability of specially recorded music, but at the end of the day the question was not whether Computer commissioned it in any sense (which it is allowed to do) but how it presented it to the world in relation to its mark. He did not think that that presentation went beyond using the mark in connection with the data transmission service in relation to a recording which is exclusive to the store for a period of time.
(3) The four video adverts
The Judge had to consider whether the mark was used to suggest a relevant trade connection with the recorded work, and even if it did, whether it was still a permitted use if the mark was used in connection with the download service and was a reasonable and fair use which did not go unreasonably and unfairly beyond it.
In relation to three of the four adverts it was plain that the dramatic music and visual presentations were intended to link to the availability of the music on “iTunes”, which he considered the reasonable and appropriately experienced viewer would take to be a reference to the music store. The appearance of the apple logo at the end of the advert would be perceived as a reference to the service that had been advertised a few seconds before and (where there has been a reference to the iPod) to the iPod as well. The analysis of the fourth “My Generation” advert was slightly different, though the result was the same.
Corps have been granted leave to appeal.
Reporter’s note: I am grateful to my colleagues at Bird & Bird, Zoe Fuller, Celine de Andria and Huw Edwards, for their assistance with the preparation of this report.
ECJ and CFI decisions can be found at http://curia.eu.int/en/content/juris/index_form.htm and the reported cases marked * from the Court of Appeal and High Court can be found at http://www.bailii.org/databases.html#ew.