Reported Trade Mark Cases for February 2006

20 March 2006

Katharine Stephens

TRADE MARKS

- Appeals from OHIM, the CFI and the UK Trade Marks Registry

 


















Ref no.ECJ
 
C-173/04 P
 
Deutsche SiSi-Werke GmbH & Co. Betriebs KG v OHIM
 
(12.01.06)
Application (and where applicable, earlier mark)
Stand-up juice pouches 
 
Eight marks consisting of shapes of various stand-up pouches – fruit drinks and fruit juices (32)
CommentThe ECJ dismissed the appeal and upheld the decision of the CFI. The CFI had refused the registration of the marks.
 
The ECJ held that it was legitimate for the CFI to consider, in its assessment of distinctive character, types of packaging used in the European market for liquids for human consumption in general. Further, the requirements imposed by the CFI in relation to the shape of the marks applied for were not too stringent.
 
The ECJ found that the CFI had given sufficient reasons and set out in length why the trade marks applied for were devoid of distinctive character within the meaning of Art. 7(1)(b).
 
Finally the ECJ rejected the plea that the CFI had erred in assessing the distinctive character of the marks in the light of the interest of possible competitors in being able to use the stand-up pouches concerned for their own goods - this was not the criterion upon which the CFI had based its decision.


















Ref no.CFI
 
T-147/03
 
Denvinlec Développement Innovation Leclerc SA v OHIM; T.I.M.E. ART Uluslararasi Saat Ticareti ve diş Ticaret AŞ
 
(12.01.06)
Application (and where applicable, earlier mark)

Quantum watches and watch straps
- watches and watch straps (14)

Clocks and watch making goods 


- clocks and watch making goods (14) and leather goods (18)

Mark used as:

Quantieme - mark used 

CommentThe CFI annulled the decision of the BoA, holding that there was a likelihood of confusion between the marks within the meaning of Art. 8(1)(b).
 
The CFI rejected the argument that the BoA should have examined the earlier mark as used rather than as registered. Nevertheless the signs were visually and phonetically similar and the conceptual differences were insignificant in comparison.
 
The CFI held that in assessing likelihood of confusion, objective conditions under which the goods were marketed can be taken into account, in particular in order to determine the respective weight to be given to the visual, phonetic and conceptual aspects of the marks. However, the BoA erred in taking into consideration the fact that the goods bearing the mark were sold in E. Leclerc shopping centres only, because such instances were dependant on the business strategy of the proprietor.


















Ref no.CFI
 
T-398/04
 
Henkel KGaA v OHIM
 
(17.01.06)
 
(decision not yet in English)
Application (and where applicable, earlier mark)Washing tablets
 
3D tablet with red layer uperimposed on a white layer with a bule ball embedded on the top –washing and dishwashing preparations in tablet form (3)
CommentOHIM dismissed the application under Art. 7(1)(b). On appeal, the CFI upheld the decision.
 
The CFI held that when deciding whether a mark was devoid of distinctive character it must consider the nature of the goods and services in relation to which the registration is sought and the perception of the relevant public; in this case all consumers in the EU.
 
The criteria for assessing the distinctiveness of a 3D marks were no different from those considered in connection with any other type of mark, although the public’s perception may be different. The CFI stated that it would be more difficult in practice to establish distinctive character in a 3D mark.
 
The average consumer would not pay much attention to the shape of everyday products such as detergent tablets, particularly when such products were sold in packaging with verbal indications. The CFI considered that the more closely the shape for which registration was sought resembled the shape which the product was most likely to take, the greater the likelihood that the shape would be devoid of distinctive character.
 
The CFI concluded that a detergent tablet was most likely going to be square in shape and any coloured layers would probably indicate different chemical compositions rather than the origin of the goods.


















Ref no.CFI
 
T-317/03
 
Volkswagen AG v OHIM; Nacional Motor SA
 
(26.01.06)
 
(decision not yet in English)
Application (and where applicable, earlier mark)

VARIANT

- motors and engines (apart from land vehicles), vehicles, and repairs (7, 12, 37)

 

DERBIVARIANT

- vehicles (12) (Spain)

CommentOHIM dismissed the opposition but the BoA annulled that decision (likelihood of confusion under Art. 8(1)(b)). The CFI dismissed the appeal. The word “derbi” was generally used in Spanish to describe a sports meeting between two teams from the same town or neighbouring towns. However, “derbi” was not a dominant element in DERBIVARIANT. When presented with DERBIVARIANT, the Spanish consumer would not recall the meaning of “derbi”, but would recall from a conceptual point of view the idea of “variation from a norm” which can be understood by the Spanish word “variante” which was evoked by the use of the word “variant”. Bearing in mind the similarity of goods for which the marks are intended, and the visual, phonetic and conceptual similarities between the marks, there was a risk of confusion.


















Ref no.

CFI

T-206/04

Fernando Rodrigues Carvalhais v OHIM; Profilpas Snc

(01.02.06)

(decision not yet in English)

Application (and where applicable, earlier mark)

Building materials
- profiles of metal and accessories, profiles of plastic and rubber and their accessories, and building materials (non-metallic) (6, 17, 19)

 

Other building materials

 


- metallic profiles, synthetic profiles and building materials (6 17, 19)

CommentOHIM rejected the opposition proceedings. The BoA annulled the decision, and refused registration. The CFI dismissed the appeal. The CFI held that it was possible to conclude that there was a risk of confusion merely on the basis of phonetic similarity. The BoA had therefore not misinterpreted Art. 8(1)(b) when stating that the great phonetic similarity between the marks sufficed in creating a risk of confusion which could not be eliminated by the visual differences and the fact that marks could not be conceptually compared. Secondly, the CFI held that the legality of decisions by the BoA should be appreciated solely on the basis of the interpretation by the Community judge of Regulation 40/94 and not on the basis of the practical decision making by the BoA. It was therefore irrelevant that the BoA had previously allowed the registration of CTMs by third parties in respect of goods in Classes 6, 17 and 19 containing the suffix and/or prefix FIX, some of which pre-dated the appellant’s.        


















Ref no.

CFI

T-202/03

Alecansan SL v OHIM; Comp USA Management Co

(07.02.06)

Application (and where applicable, earlier mark)

Computer hardware and software
 - computer hardware and software, their inspection and repair (9 & 37)

 

transport, packaging and storage of goods 


- transport, packaging and storage of goods (39) (Spain)

CommentOHIM dismissed the opposition under Art 8(1)(b). The CFI upheld that decision. The existence of a likelihood of confusion between the two marks, could not compensate for the absence of similarity between the services and the goods in question. The conditions in Art 8(1)(b) were cumulative, that is, even where the opponent’s mark was highly distinctive and identical to the application, the opponent had to establish that the goods/services were similar.


















Ref no.

CFI

T-466/04 and T-467/04

Elisabetta Dami v OHIM; The Stilton Cheese Markers Association

(01.02.06)

Application (and where applicable, earlier mark)

GERONIMO STILTON – goods and services in classes 16, 25, 28, 29, 30 and 41

 

STILTON – milk products (registered in various states)

CommentThe opposition division allowed the opposition under Arts 8(1)(b) and 8(4) as regards goods in classes 29 and 30. There was an appeal and cross-appeal. Before the hearing, the applicant wrote removing “dairy products and cheese” from class 29 and “excluding cheese-based foods or drinks” from class 30. Thereafter the parties jointly wrote to the BoA asking for a stay and setting out the position of the applicant (as above) and the opponent. The opponent’s position was that it would only withdraw its opposition if the specifications were further cut back. The BoA treated the letter as a joint application to restrict the goods and held that the opposition was therefore withdrawn. The CFI annulled the decision which was vitiated by error of fact.


















Ref no.

[2006] EWHC 33 (Ch)

Deutsche Telecom AG v E! Entertainment Television Inc

(25.01.06)

Application (and where applicable, earlier mark)

E! ONLINE

– various goods and services, including provision of entertainment news (9, 16, 41)

T-ONLINE

– various goods and services, including entertainment services (9,16, 36, 37, 38, 41, 42)

Comment

Smith J upheld the decision of the Hearing Officer, who had rejected the opposition.

Registration had been opposed under ss. 5(2)(b) and 5(3). The Hearing Officer found that, despite the reputation of the appellant in Germany, the mark relied upon would not be known to a significant number of persons in the UK. In this respect, it was important that no direct evidence was adduced to establish reputation of the mark in the UK. Smith J held that this decision could not be criticised. Further, there was no basis for criticising the Hearing Officer’s finding that the marks were dissimilar.


 



Claude Ruiz-Picasso and ors v OHIM; DaimlerChrysler AG (ECJ; C-361/04 P; 12.01.06)

The ECJ dismissed the appeal, holding that none of the pleas in law regarding Art. 8(1)(b) were well founded. The CTM applied for was the word PICARO, for vehicles and parts therefore in Class 12. The appellants objected on the basis of likelihood of confusion with the word mark PICASSO, registered for vehicles in class 12. The Opposition Division rejected the opposition and the BoA dismissed the subsequent appeal. The CFI, in turn, upheld the BoA’s decision that there was no likelihood of confusion.

The ECJ held that, in finding that the meaning of the PICASSO mark was clear and specific so that it could be grasped immediately by the relevant public, and that therefore the conceptual differences counteracted the visual and phonetic similarities, the CFI had not erred in law.

The ECJ found that the CFI had considered whether the earlier mark was highly distinctive per se. The ECJ noted that the CFI had then concluded, after an appropriate factual assessment, that it was not with respect to motor vehicles. Thus the CFI had considered, contrary to the appellant’s claim, the rule whereby the greater a mark’s distinctive character, the broader protection it enjoys.

The appellants contested that the CFI’s approach to likelihood of confusion was too restrictive since it had considered the level of attention at the point of purchase only. However, the ECJ concluded that the CFI was entitled to hold that the possibility that consumers may see the goods and mark in question in circumstances unrelated to any sale (and display a low level of attention), did not prevent the court from taking into account the particularly high level of attention given by consumers at the time of purchase.

The ECJ also rejected the claim that the CFI’s conclusions meant that the court had held that the concept of likelihood of confusion was to be interpreted differently for the purposes of opposition proceeding or infringement proceedings.

Name marks

Elizabeth Emanuel v Continental Shelf 128 Ltd (AG Ruiz-Jarabo Colomer; C-259/04; 19.01.06)

Designer name/trademark

 In AG Ruiz-Jarabo Colomer’s opinion, a trade mark which incorporated the designer’s name had not become deceptive because the designer no longer worked for the trade mark owner, even though the public may believe that she still did.

In 1997, the designer of the late Princess Dianna's wedding dress, Elizabeth Emmanuel, registered a device mark which included her personal name, Elizabeth Emmanuel. Subsequently the British designer assigned her business which included the trade mark and goodwill to Frostprint Ltd. 

In 1999, Mrs Emanuel issued opposition and revocation proceedings against the registered mark on the basis of Articles 3(1)(g) and 12(2)(b) of the Directive.

On appeal the Appointed Person (David Kitchin QC, O-17-04) stayed the proceedings and for the first time referred some questions to the ECJ regarding the interpretation of the above mentioned articles.

In the AG’s opinion, Article 3 (1)(g) of the Directive ought to be interpreted as meaning that a sign comprising a proper name, assigned together with the goodwill of which it formed part, did not deceive the public, even if it evoked the mistaken impression that the designer was still involved in the design and creation of the goods for which it was registered.

Similarly, the mere use of the registered mark did not deceive the public within the meaning of Article 12(2)(b) of the said Directive. It was for the national judicial authority to consider each particular feature of a case in evaluating the influence which the use of that mark may have had on the impression received by the public. In any case, in his opinion the average consumer is taken to know that designers may come and go and that trade marks may be bought and sold. 

Shape Marks

Koninklijke Philips Electronics N.V. v. Remington Consumer Products Ltd & Anr (Mummery, Neuberger & Lloyd LJJ; [2006] EWCA Civ 16; 26.01.06)

The Court of Appeal (Mummery LJ giving judgment) dismissed the appeal from the decision of Rimer J ([2004] EWCH 2327(Ch)) in relation to the 452 mark registered in Class 8 in respect of electric shavers (depicted below). It was invalid under Section 3(2)(b). There was not need for a reference to the ECJ.

Electric shaverElectric_shaver

 

                                  452                                                         208

The only material difference between this and the 208 mark (depicted above) which had been the subject of previous litigation (see judgment of Jacob J. [1998] RPC 283, Court of Appeal [1999] RPC 809 and ECJ [2003] RPC 2) was that this mark had an inner line depicting a face plate of a clover leaf design rather than a plain, raised triangular face plate. The embellishment of the faceplate with clove leaf design was key to Philips’ case.

The Court of Appeal held that Rimer J had applied the right test when deciding that the clover leaf was not an essential feature of the shape of the goods. The Court of Appeal held that the important factor was the impact of the mark on the eye of the average consumer who would not dissect and examine each feature of the mark.The question was essentially one of fact and degree for the judge to decide. In this case, the evidence had not persuaded Rimer J that the presence of the clover leaf had a distinctive eye impact on the average user of shavers.

From there, Rimer J could have taken the short cut that the 452 mark was essentially the same as the 208 mark and therefore invalid. However, the Court of Appeal commended the fact that he did not. He went on to hold that the face plate of the 452 mark as a whole, of which the clover leaf formed part, was attributable solely to the technical result. In doing so, he rejected Philips’ submission that the use of the word “only” in paragraph 86.4 of the ECJ’s judgment meant that Section 3(2)(b) applied only if all essential features of the shape were only attributable to a technical result. The Court of Appeal held that Rimer J was right to reject the Philips submissions. Fragmentation of a mark was not the proper approach; a mark should be considered as a whole for both distinctiveness and functionality. That was how the relevant section of the public would perceive it. The Court of Appeal also dismissed a finding of fact in relation to the lower residual areas; as with the clover leaf, the judge was entitled to find that they were attributable to the technical result.

Rimer J had also held, with a degree of hesitation, that the three device marks depicted below were invalid under Section 3(2)(b). The Court of Appeal allowed the appeal. All three images had eye appeal, being of an abstract, non-technical and non-functional nature. They are none of them a “shape of the goods”. The Court of Appeal also overturned Rimer J in holding that the marks were not precluded from registration by Sections 3(1)(b) and (c).

Electric shaver - abstract, non-technical, non-functional nature

Infringement

Levi Strauss & Co v Casucci SpA (AG Ruiz-Jarabo Colomer; C-145/05; 17.01.06)(decision not yet in English)

Levi Strauss brought an action against Casucci in Belgium for infringement of its ‘mouette’ figurative trade mark, consisting of a double row of stitching curved in the middle and sewn onto a five sided pocket for jeans. In 1997, Casucci SpA began marketing jeans with five-sided rear pockets also having a double stitch curving slightly upwards in the middle.

Levi Strauss brought proceedings in Belgium on the basis of Article 5(1)(b) of the Directive. The action failed at first instance and at appeal. Levi Strauss further appealed to the Cour de Cassation, the highest court in Belgium, which made a reference to the ECJ.

The AG stated in his opinion that likelihood of confusion between marks should be assessed from the time the allegedly infringing mark comes on to the market. The perception of the average consumer played a major role in determining likelihood of confusion and was particularly important when assessing distinctive character. The AG noted that the public’s perception of marks could alter over time, particularly as a result of the actions of other suppliers of goods and services.

In the present case it was important to determine when the national court must assess likelihood of confusion, because it had been agreed that the ‘mouette’ mark had lost its distinctive character at the time of the appeal. The AG reiterated that the essential function of trade marks was to guarantee their origin and a mark which had lost its distinctive character, could no longer do this. Furthermore, if a trade mark had lost its distinctive character due to the acts or omissions of the proprietor of the mark, then such a mark was susceptible to annulment.

Form of injunction




Sun Microsystems Inc v Amtec Computer Corporation Ltd (Warren J; [2006] EWHC 62(Ch); 30.01.06)

Amtec accepted it had infringed Sun’s trade marks by offering for sale and selling 10 servers which had not been imported into the EEA, nor put on the market anywhere in the EEA by Sun or with its consent. Amtec’s case was that it had done everything it reasonably could to satisfy itself that the servers were of EU origin and, relying upon the decision of the Court of Appeal dated 15 July 1999 in Microsoft Corporation v Plato Technology Ltd, it submitted that, in such circumstances, the normal form of order should be qualified. Warren J. considered the three factors set out by the Court of Appeal (extent of infringement, lack of intention to infringe and lack of intention to repeat the infringement). He held that a balance had to be struck between Sun’s entitlement to injunctive relief and Amtec’s need to carry on its business. He therefore granted an injunction, qualified in such a way that Amtec was not prevented from dealing in Sun products if: it informed Sun of the serial numbers of products; Sun responded within a defined period saying that the product had been put on the market in the EEA by it or with its consent; and Amtec did not know or believe otherwise. If Sun did not respond, Amtec would be able to dispose of the product without breach of the injunction, but would still be liable to Sun if the product turned out to be infringing. Warren J stated that he through that the period for Sun’s response should be between 7 to 14 days, but that he would hear argument as to the appropriate period.

COPYRIGHT

Infringement - indirect copying

Nova Productions Ltd v Mazooma Games Ltd & Ors; Nova Productions Ltd v BellFruit Games (Kitchin J; [2006] EWHC 24 (Ch); 20.01.06)

The claim centred on a coin-operated video game of pool called “Pocket Money” created by games designer Nova. Pocket Money was a skill with prizes game, an ‘SWP’ game which awarded the player’s hand-eye coordination in playing pool upon which a cash prize could be won. Nova claimed that copyright in Pocket Money had been infringed by Mazooma’s “Jackpot Pool” and Belle Fruit’s “Trick Shot”, both games based upon the theme of pool. It was common ground that representatives of Mazooma and Belle Fruit had both played on Pocket Money at a trade exhibition and their designers had drawn inspiration from Pocket Money before creating their games. The questions were whether copyright existed in the forms as alleged, whether Mazooma and Belle Fruit had in fact copied the design of Pocket Money and further whether such copying amounted to substantial copying under the Copyright, Designs and Patents Act 1988 (the “Act”).

Nova submitted that Mazooma and Belle Fruit had infringed copyright in Pocket Money in relation to (1) artistic works, being the bitmap graphics and the frames generated and displayed to the user; (2) literary works, being Nova’s design notes and the program written to implement the game; (3) dramatic work embodied in the game itself; and (4) film copyright. The judge had no problem in finding the graphics and frames artistic works and the design notes and program literary works. However, in dealing with literary work the judge stressed the difficulties Nova faced as explained by Pumfrey J in Navitaire Inc v Easy Jet Airline Company [2004] EWHC 1725 (Ch), basically that an allegation of non-textual infringement of a program based upon taking of the so called ‘business logic’, amounts to an unjustifiable extension of copyright protection and therefore must fail.

In relation to the dramatic work the judge found it quite impossible to say that Pocket Money was a dramatic work as it was not a work of action intended to be or capable of being performed before an audience (following Norowzian v Arks (No. 2) [2000] FSR 363). It was a game. The sequence of images varied greatly from game to game, depending on the manner in which it was played, and there was simply no sufficient unity within the game for it to be capable of performance.

In relation to the issue of copying, the court held that certain features of Trick Shot and Jackpot Pool were to some extent derived from or inspired by Pocket Money. However, on the facts, there had not been reproduction of a substantial part of copyright in any of the classes of copyright relied on.

An interesting side issue which came about was Kitchin J’s comment on the author of artistic works. Referring to Sections 9(3) and 178 of the Act, he commented on the effect of player input. Although the appearance of any particular screen depended to some extenton the way the game was played, to the judge’s mind theplayer was not an author of any of the artistic works created in the successive frame images. The player’s input was not considered artistic in nature and he had contributed neither skill nor labour of an artistic kind. (It would be interesting to see what Kitchin J might have to say about more creative types of computer games, for example Japanese arcade simulation games where the user interacts in bizarre and novel ways to generate music or movement, sometimes in rather artistic ways, e.g. the dancing game “Dance Dance Revolution” or the drumming game “Drum Master”.)

Katharine Stephens
Bird & Bird
90 Fetter Lane
London EC4A 1JP

Tel: 020 7415 6000
Fax: 020 7415 6111
Email: katharine.stephens@twobirds.com

Reporter’s note: I am grateful to my colleagues at Bird & Bird, Cristina Garrigues, Nana Chan, Louise Aspinwall, Emilia Linde and Alice Sculthorpe, for assisting me in the preparation of this report.

ECJ, AG and CFI decisions and opinions can be found at http://curia.eu.int/en/content/juris/index_form.htmand some of the reported cases from the Court of Appeal and High Court can be found athttp://www.bailii.org/databases.html#ew.