Reported Trade Mark Cases for January 2006

16 February 2006

Katharine Stephens

Appeals from OHIM

Decisions can be found at http://curia.eu.int/en/content/ juris/index.htm. 

 


















Ref no. 

CFI

T-29/04

Castellblanch SA v OHIM; Champagne Louis Roederer SA

(08.12.05)

Application (and where applicable, earlier mark) Cristal Spanish sparkling wine
- Spanish sparkling wines of the cava variety (33)
 
CRISTAL - wines originating from France, namely champagne, sparkling wines and alcoholic beverages (except beers) (33) (France, Germany, Great Britain, Ireland, and an international mark protected in Austria Benelux, Italy and Portugal)
Comment 

The CFI dismissed the appeal, holding that there was a likelihood of confusion under Art. 8(1)(b). The Opposition Division had upheld the opposition based on the earlier French mark and the BoA had likewise dismissed the appeal.

The CFI held that the goods in dispute were identical or, at the very least, highly similar and the marks were phonetically, visually and conceptually similar.

The CFI dismissed the applicant’s submission that the likelihood of confusion was reduced since the marks had coexisted in the marketplace; the applicant had not shown that any coexistence resulted from an absence of a likelihood of confusion and since the marks had been the subject of a number of disputes, the coexistence had not been peaceful.

A survey carried out in 1999 showed the reputation of the earlier mark for professional consumers, but it did not look into the reputation of the mark amongst average consumers. Nevertheless, given the high degree of similarity between the respective goods and signs, there was a likelihood of confusion.

   


















Ref no. 

AG Opinion

C-416/04 P

The Sunrider Corp. v OHIM; Juan Espadafor Caba

(15.12.05)

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.
 
VITAFRUT – non-alcoholic and non-therapeutic carbonated drinks, non-therapeutic cold beverages of all kinds, fruit and vegetable juices without fermentation (except must) (Spain)
Comment 

AG Jacobs was of the opinion that the Court should dismiss the appeal from the CFI decision in case T-203/02.

The CFI 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).

AG Jacobs considered the first ground of appeal to be unfounded i.e. whether the CFI had properly examined the question of whether the earlier mark had been genuinely used with the consent of the proprietor. AG Jacobs stated that it would be pointless for OHIM to require as a matter of course that the opponent adduce evidence of its consent to use of the mark by a third party unless, of course, the applicant for the mark raised the issue of consent. The applicant had not done so in this matter.

AG Jacobs viewed that the second ground of appeal was inadmissible since it was limited to the facts. Alternatively, if it did raise points of law, the BoA and CFI had correctly interpreted the notion of genuine use and therefore the ground was unfounded.

The third ground of appeal, that the CFI incorrectly applied Art. 8(1)(b), was also inadmissible or in the alternative unfounded.

   


















Ref no. 

CFI

T-169/04

Arysta Lifescience SAS v OHIM; BASF AG

(14.12.05)

(decision not yet in English)

Application (and where applicable, earlier mark) CARPOVIRUSINE - insecticides etc (5)
 
CARPO - insecticides etc (5) (Germany)
Comment OHIM allowed the opposition under Art. 8(1)(b) and the CFI dismissed the appeal. Whilst recognising that there were differences between the earlier trade mark and the trade mark in dispute (e.g. CARPO is shorter than CARPOVIRUSINE and contains two syllables as opposed to six), it found the similarities to be more notable (e.g. the beginning of CARPOVIRUSINE contains CARPO). This latter point is an important factor, as consumers are more likely to focus on the beginning of the word than on the end. As a result, the CFI held that there was a risk of confusing the German average consumer.   
   


















Ref no. 

CFI

T-262/03 and T-262/04

(identical decisions, only T-262/04 has been summarised)

BIC SA v OHIM

(15.12.05)

(decision not yet in English)

Application (and where applicable, earlier mark) Somkers' articles
- smokers’ articles, lighters (34)
Comment OHIM dismissed BIC’s application. The CFI dismissed the appeal as BIC had failed to show that the 3D mark in the shape of a lighter had acquired distinctiveness under Art. 7(3). BIC, allegedly the market leader in disposable lighters, claimed distinctiveness of its trade mark through sale and marketing of its product within the relevant markets. This failed because: (1) BIC was only able to provide evidence relating to its overall product investment without providing separate data relating to the investment of the mark; (2) the data provided did not disclose figures on a country by country basis but only showed sales achieved overall; (3) much of the evidence provided derived from “connected persons” such as BIC’s own distributors and could therefore not be given as much weight as if they had been independent; and (4) the survey evidence did not show that people recognised the shape without the word BIC.
   


















Ref no. 

CFI

T-384/04

RB Square Holdings Spain SL v OHIM; Unelko NV

(15.12.05)

(decision not yet in English)

Application (and where applicable, earlier mark) 

undefined
- cleaning compositions etc. (3)

Clen cleaning productsClen X cleaning products

 - bleaching products etc (3) (Spain)

Comment OHIM rejected the opposition under Art. 8(1)(b). The CFI dismissed the appeal on the basis that there was no risk that the average Spanish consumer would believe the two marks derived from the same enterprise. The appeal failed because visually, the words “Clean X” and “Clen” were not similar, and, phonetically, the words differed when pronounced in Spanish (“klén” as opposed to “klé-ann-é-kiss” or “klé-ann-por”). The CFI concluded that the two marks did not share a common dominant element and there was therefore no risk of confusion.
   

 

Appeals from the Trade Marks Registry




















Ref no. 

[no neutral citation]

Music Choice Ltd v Target Brands, Inc.

(14.12.05)

Application (and where applicable, earlier mark) 

Music choice -broadcasting and programme production
- radio, television and video apparatus, broadcasting and programme production (9, 38, 41)

Music Choice - broadcasting and programme production

- radio, television and video apparatus, broadcasting and programme production (9, 38, 41)

Comment 

Geoffrey Vos J allowed the first appeal, setting aside the order of the Hearing Officer. Given this decision, Target did not pursue the second appeal.

The Judge held that Rule 33(6) created a general discretion in the Registrar to treat the proprietor as opposing the application to invalidate the trade mark where the proprietor had not responded with a counter statement within the six week period allowed by the rules. Here, the Form TM8 was filed only one day late and Target had not been prejudiced by the delay. Thus, discretion should be exercised to allow Music Choice to oppose Target’s invalidation application in respect of the first trade mark.

The reasoning in Lowden Trade Mark [2005] RPC 18 was not applicable since that was a non-use case in which the registered proprietor had the burden of proving non-use, whereas in invalidation applications the onus was on the applicant to prove invalidity.

   
  

Decisions of the Appointed Person: Round up of 2005 

Only decisions of interest have been summarised below, with the exception of the Linkin Park decision, 0-045-05, which has already been reported in [2005] CIPA 266. All decisions are available at www.patent.gov.uk/tm/legal/decisions/appeals2005.htm.

 



















Ref no. 

O-012-05

Le Mans Autoparts Ltd v Automobile Club de l’ouest de la France (A.C.O)

(08.11.04)

Application (and where applicable, earlier mark) LE MANS – accessories and parts for motor cars (6, 7, 9, 12)
 
LE MANS & Device – products for use in connection with motor vehicles (3)
24 HEURES DU MANS (stylized) – products for use in connection with motor vehicles (3)
24 HEURE DU MANS – toys, games, sporting articles, parts and fittings; all related to motor sports (28)
LE MANS – toys, games, sporting articles, parts and fittings (28)
Comment 

Richard Arnold QC allowed the appeal, upholding the opposition under ss. 5(2)(a), 5(3) and 5(4)(a).

The Appointed Person held that LE MANS functioned as a trade mark for the services of organising and managing motor car racing events. He went on to hold that LE MANS was a well known mark within s. 56(1), not only in the specialist motor racing sector but also amongst the public at large. In particular LE MANS was the name of a famous race; had been used for many years; was widely promoted by way of newspaper articles and television coverage and had been the subject of the grant of a number of licences

The Appointed person held that the services of the opponent were related to the goods of the applicant, and an average consumer might well think that they both came from economically linked undertakings. Thus the opposition under s. 5(2)(a) was successful. In view of this, the opposition was also successful under ss. 5(3) and 5(4)(a).

   



















Ref no. 

O-013-05

Joseph Yu v Liaoning Light Industrial Products Import and Export Corporation

(09.01.06)

Application (and where applicable, earlier mark) WALKERLAND – safety footwear, protective garments and headgear, footwear, clothing and headgear (9, 25)
Comment 

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 beach of s. 3(6).

The Hearing Officer reached the conclusion of bad faith on the basis that when the application was made, Mr Yu was fully aware that WALKERLAND was the opponent’s trade mark and that they had used it outside of the UK (his company was itself a customer).

   



















Ref no. 

O-043-05

SVM Asset Management v Merlin Biosciences Ltd

(17.02.05

Application (and where applicable, earlier mark) MERLIN – financial services (36)
 
MERLIN – provision of business management services and of venture capital (35, 36)
Comment 

Richard Arnold QC refused the opponent’s application to amend its statement of case to include an objection under s. 5(3).

Furthermore, Richard Arnold QC agreed with the applicant that the Hearing Officer had erred in not into taking account the disclaimer which referred to the scope of the services offered but allowed the opponent’s appeal in respect of several financial investment services. The opponent’s appeal was also partially successful in respect of s. 5(4)(a).

   



















Ref no. 

O-053-05

Trident Tyres Ltd v Dunlop Tyres Ltd

(02.03.05)

Application (and where applicable, earlier mark) TRIDENT – tyres for land vehicles; inner tubes and valves, all for the aforesaid tyres (12)
Comment 

On an application to revoke the mark under s. 46(1)(b), Professor Ruth Annand upheld the Hearing Officer’s decision regarding the reduction in specification. The Appointed Person criticised the Hearing Officer’s approach to the partial revocation, but viewed that a specification of ‘taxis tyres’ (which the applicant for revocation contended for), even if justified, would not give legal certainty or administrative soundness.

The Appointed Person raised the new issue of ‘use by the proprietor or with his consent’, since throughout the relevant period the proprietor had been Sumitomo. She invited the parties to make submissions, and considered that she was entitled to rule on such an issue rather than remitting the matter to the Registry. The Appointed Person held that genuine use had been established.

   



















Ref no. 

O-079-05

Julian James v Smart GmbH

(22.03.05)

Application (and where applicable, earlier mark) 

CARSMART– motor vehicles and parts and fittings and advertising such goods on an Internet specialised web site (12, 35)

Car Smart - vehicles and parts

- vehicles and parts therefore (12) (CTM)

Comment The Hearing Officer had found no likelihood of confusion and the opposition under s. 5(2)(b) failed. Richard Arnold QC allowed the appeal in respect of the Class 12 goods but dismissed the appeal in respect of Class 35. In the Appointed Person’s opinion the Hearing Officer had failed to consider Classes 12 and 35 separately and had also failed to consider that the distinctiveness of the mark could mean that there was a likelihood of confusion for less similar services than if the mark had not been distinctive.
   



















Ref no. 

O-081-05

Kao Kabushiki Kaisha’s Application

(24.02.05)

Application (and where applicable, earlier mark) NATURALLY SMOOTH –  moisturisers for women (3)
Comment Geoffrey Hobbs QC dismissed the appeal. The mark was devoid of distinctive character under s. 3(1)(b)
   



















Ref no. 

O-122-05

Field Fisher Waterhouse (applicant for revocation) v Marketing Triangle Inc

(15.04.05)

Application (and where applicable, earlier mark) Isosceles marks
- advertising; business management and marketing advice (35)
Used marks
Used Isosceles marks
Comment Professor Annand dismissed the appeal and upheld the Hearing Officer’s decision that use of various elements of the mark registered were in fact use of separate marks and did not constitute use of the mark as registered. Therefore, the mark was revoked under s. 46(1)(a) and (b). The Appointed Person further confirmed that in revocation proceedings the onus is on the registered proprietor to file such evidence as it can to defend its registration.
   



















Ref no. 

O-141-05

C F Collections Ltd v Joe Boxer Company LLC

(11.05.05)

Application (and where applicable, earlier mark) KO BOXER – men's underwear (25)
JOE BOXER – Clothing, footwear, headgear and other various (25)
Comment 

Professor Annand reversed the decision of the Hearing Officer and allowed the Appeal in respect of s. 5(2)(b). In her opinion the Hearing Officer had not clearly identified the average consumer and had not made clear that the goods were identical.

In comparing the marks Professor Annand concluded that the respective marks were quite close aurally. Conceptually, the marks were also very similar as the word BOXER indicated either boxer shorts, boxing or a name. Furthermore, the Hearing Officer had not considered the possibility that there might be indirect confusion in that the public might believe that KO BOXER products constituted a new or another line in the JOE BOXER range of underwear.

   

 


















Ref no. 

O-144-05

Home-Tek International Limited v De’ Longui SpA

(20.05.05)

Application (and where applicable, earlier mark) 

 PENGUIN
and

The Penguin - steam cleaning apparatus

- steam cleaning apparatus and their parts and fittings (7)
 Pinguino - air conditioning
PINGUINO and

- installations and apparatus for air conditioning (11)

Comment Geoffrey Hobbs QC dismissed the appeal regarding s. 5(2)(b). The Appointed Person concluded that despite the fact that there were certain similarities between the respective products and marks, the public were unlikely to be confused. The opposition therefore failed.
   


















Ref no. 

O-169-05

Terrence Ball (applicant for invalidity) v Buffalo Boots GmbH

(17.06.05)

Application (and where applicable, earlier mark) 

BUFFALO CREEK – bags, and footwear and clothing (18, 25)

Buffalo Creek - bags, footwear and clothing

 – shoes (25)
Buffalo - clothing, footwear and travelling bags  
- clothing, footwear and traveling bags and other various types (18, 25) (CTM)

Comment Richard Arnold QC dismissed the appeal and concluded that the Hearing Officer had not erred in his assessment that the similarities outweighed the differences and that it was likely that there was at least one form of confusion under s. 5(2)(b).
   


















Ref no. 

O-182-05

Kevin Scranage’s application

(24.06.05)

Application (and where applicable, earlier mark) FOOK – clothing, footwear (25)
Comment David Kitchin QC dismissed the appeal against the decision to refuse the application under s. 3(3)(a). The Appointed Person agreed with the Hearing Officer that the use of the trade mark would cause greater offence than mere distaste to a significant section of the general public.
   


















Ref no. 

O-218-05

Elvis Mustafov v Bacardi & Company Limited

(29.07.05)

Application (and where applicable, earlier mark) 

Power bat - non-alcoholic beverages and energy drinks
- non-alcoholic beverages, energy drinks (32) (Madrid Protocol)

Bat - non-alcoholic beverages

- non-alcoholic beverages and soft drinks (32) CTM

Comment Richard Arnold QC dismissed the appeal against the Hearing Officer’s decision. The Hearing Officer had allowed the opposition under s. 5(2)(b).
   


















Ref no. 

O-226-05

Baisemark Ltd t/a Northern Suede & Leather v Barney’s Inc

(10.07.05)

Application (and where applicable, earlier mark) BARNEYS – outer clothing of leather (25)
 
BARNEY’S (unregistered)
Comment Regarding the correction of the applicant’s name, the Appointed Person was satisfied that a genuine error had been made in the filing of the application. However, in his view, the Hearing Officer could have allowed the change of name without any alternation of the filing date. Regarding the opponent’s claim under s. 5(4)(a) the Appointed Person also upheld the decision of the Hearing Officer that the opponent had failed to establish a prima facie case that use of the mark by the applicant would lead to passing off.
   


















Ref no. 

O-227-05

Omega Engineering Incorporated (applicant for invalidity) v Omega SA (Omega AG) (Omega Ltd)

(13.07.05)

Application (and where applicable, earlier mark) 

OMEGA – wide range of goods for use in industrial and scientific fields (9)

Omega - Measuring apparatus

- measuring apparatus, all for use in sport, but not including calculating machines (9)
O OMEGA – maintenance and repair of measuring apparatus, all the goods being for use in sport (37)

Comment Professor. Annand dismissed the appeal and upheld the Hearing Officer’s findings in respect of ss. 5(2)(b) and 5(4)(a). However, the Appointed Person did not agree with the Hearing Officer’s finding that the relevant time for determining the party’s relative rights was the date of the application for registration. However, since this point was not crucial in the case, the appeal was dismissed but the Appointed Person recorded her view that in an appropriate case a reference to the ECJ for a preliminary ruling may be necessary.
   


















Ref no. 

O-236-05

Fenchurch Enviromental Group Limited (applicant for revocation) v Tech Holdings Limited

(28.08.05)

Application (and where applicable, earlier mark) BACTI GUARD – chemical preparations for use in industry, pharmaceutical and sanitary preparations, disinfectants and surgical, medical and dental apparatus, and prosthetic devices (1, 5, 10)
Comment David Kitchin QC dismissed the appeal from the Hearing Officer’s decision dismissing the application to strike out the revocation proceedings. However, David Kitchin QC concluded that the Hearing Officer erred in concluding that a no challenge clause in an agreement should necessarily be considered void as being an unreasonable restrain of trade. In his opinion, it should be for the party seeking to avoid the agreement to show that there is something which justifies such a course. However, David Kitchin QC was satisfied that in this case there were potential grounds for concluding that there was no reasonable basis for including such a no challenge clause or that the clause is contrary to the public interest because it goes beyond the legitimate purpose of the agreement of “seeking to avoid confusion or conflict between the parties”.
   


















Ref no. 

O- 238-05

Professional Cycle Manufacturing Limited v Halfords Limited

(31.08.05)

Application (and where applicable, earlier mark) EXCEL – bicycles (12)
 
APOLLO EXCEL - bicycles, and their parts and fittings (12)
EXEL - various goods including land vehicles (7, 8, 12) - (CTM, owned by French company, Exel SA, not connected with the opponent)
Comment Richard Arnold QC dismissed the appeal against the Hearing Officer’s decision to uphold the opposition based on the opponent’s own registration under s. 5(2)(b). However, Richard Arnold QC allowed the cross-appeal filed by the opponent in respect of the EXEL mark under s. 7(2) as bicycles are land vehicles.
   


















Ref no. 

O-249-05

Entire Consultancy Ltd’s application

(12.09.05

Application (and where applicable, earlier mark) SIMPLICLICK and SimplyClick (series) - Computer hardware and software, printed matter, advertising, compilation of advertisements and directories for publishing on the Internet; telecommunication of information, creating websites (9, 16, 35, 38, 42)
Comment The Hearing Officer had rejected the application for registration in respect of Classes 35, 38 and 42 under ss. 3(1)(b) and 3(1)(c). David Kitchin QC upheld the Hearing Officer’s decision in respect of the wide specification of services sought. However, he concluded that a narrow specification of services, limited to the kind of services provided by the applicant in relation its SimplyClick platform software would be free of objection under s. 3(1)(b) or (c) and ordered the application to be remitted to Registrar.
   


















Ref no. 

O-251-05

Wi-Fi Alliance (applicant for revocation) v Wilhelm Sihn Jr KG

(12.09.05)

Application (and where applicable, earlier mark) WISI – electrical and electronic apparatus and instruments (9)
Comment The Hearing Officer had held that the rights of the proprietor should be revoked with effect from 25 April 1966 in relation to most of the goods for which the trade mark had been registered because of non-use under s. 46(1)(a) and (b). Geoffrey Hobbs QC allowed the appeal in respect of the word “frequency” from the expression “radio signals” as he considered it to be a clerical error. In respect of the claim that the Hearing Officer had unduly restricted the specification of goods that the proprietor could retain the Appointed Person allowed the appeal and enlarged the wording of the specification. Finally, in respect of the decision to revoke the rights with effect from a date prior to the date of the application for revocation, the Appointed Person held that the Hearing Officer was entitled to make an order for part cancellation with effect from the day following the fifth anniversary of completion of registration.
   


















Ref no. 

O-252-05

KE-Pro BV v Amberes SA.

(12.09.05)

Application (and where applicable, earlier mark) SKORPI (stylized) – precious metals and goods made of these materials, clothing and games toys, gymnastic and Christmas tree decorations (14, 25, 28) banking (9)
 
ESCORPION + device – knitted article of clothing (25)
ESCORPION – nets , bed covers, towels, knitwear items, all sorts of garments items and hair nets (22, 24, 25, 26) (CTM)
Comment Geoffrey Hobbs QC dismissed the appeal against the decision dismissing the opposition under s. 5(2)(b). He found that the marks were dissimilar to a degree that would enable them to be used concurrently in relation the goods at issue without ensuing likelihood of confusion.
   


















Ref no. 

O-253-05

Di Giorgio Srl v. Ga Modefine SA

(12.09.05)

Application (and where applicable, earlier mark) LE SPOSE DI GIO – clothing and accessories (25) and substances (5)
 
ACQUA DI GIO – perfumery and cosmetics, clothing (3, 25) (CTM)
GIO - perfumery and cosmetics, clothing (3, 25) (CTM)
Comment 

Geoffrey Hobbs QC dismissed the appeal upholding the opposition on the basis of s. 5(2)(b). The Hearing Officer held that the goods at issue were identical and although he did not believe that consumers would mistake one mark for the other (direct confusion) the common element DI GIO would lead to consumers to think that goods sold under the respective marks emanated from the same trade source.

(Canon v MGM considered).

   


















Ref no. 

O-261-05

Jimmy Osman (applicant for revocation) v Motown record Company LP

(15.09.05)

Application (and where applicable, earlier mark) MOTOWN – revocation sought in respect of discotheque services, presentation of live performances and/or orchestra services.
Comment David Kitchin QC dismissed the appeal against the Hearing Officer’s decision to allow proceedings under the Trade Marks Rules 2000 for revocation for non use to proceed despite an absence of evidence from the applicant. The Appointed Person considered that the Hearing Officer had been correct in exercising her discretion based on the submissions advanced despite the fact that the applicant had not filed any evidence. The Appointed Person acknowledged that there are many cases where an applicant for revocation of a mark for non use is not in a position to advance any relevant evidence on the issue and that the onus of proving use is upon the proprietor.
   


















Ref no. 

O-281-05

Omega Engineering Inc (Applicant for revocation) v Omega SA (Omega AG) (Omega Ltd)

(17.10.05)

Application (and where applicable, earlier mark) Omega logo - jewellery
- all goods in Class 14.
Comment The Hearing Officer had found that there had been no genuine use of the mark for jewellery, clocks and horological and chronometric instruments. Allowing some additional evidence to be adduced on appeal (citing the Ladd v Marshall and the Label Rouge cases), the Appointed Person, Professor Annand, concluded that the mark have been put to genuine use in respect of clocks and other items and that the public would perceive as horological and chronometric instruments. Professor Annand exhaustively looked into the issue of internal use and concluded that following the ECJ in Ansul and Peak Holding, the mark had been genuinely used in respect of pins even if sale of pins is an accessory to the registered proprietor main business. However, she concluded that a specification for the broad term jewellery was justified by the use made and limited the specification as per 1 January 1986 to be “jewellery watches and pins, horological and chronometric instruments; parts and fittings therefor”.
   


















Ref no. 

O-282-05

Omega Engineering Inc (Applicant for revocation) v Omega SA (Omega AG) (Omega Ltd)

(17.10.05

Application (and where applicable, earlier mark) OMEGA CONSTELLATION - all goods in Class 14
Comment The Hearing Officer had partially revoked the mark for non use for all goods in Class 14 except for wristwatches and parts and fittings. Allowing some additional evidence to be adduced on appeal (citing the Ladd v Marshall and the Label Rouge cases), the Appointed Person, Professor Annand partially allowed the appeal and restricted the specification with effect from 3 October 1965 to “horological instruments; parts and fittings thereof” on the basis that those terms were a fair description of the use made/conceded under the mark.
   


















Ref no. 

O-305-05

Alan Sugarman v Ben Sherman

(11.11.05)

Application (and where applicable, earlier mark) Ben Sherman merchandising
- advertising; business management; business administration; office function and book and magazine publishing (35, 41)
Comment The Appointed Person, Richard Arnold QC, dismissed the appeal and upheld the Hearing Officer’s decision to substantially allow the opposition under ss. 3(6), 5(2)(b) and 5(3). However the Appointed Person held that the hearing officer’s finding that the applicant made the application in bad faith must be set aside on the basis that he had not addressed the question of whether the applicant knew that what he was doing would be regarded as falling below the standards of acceptable commercial behaviour observed by reasonable and experienced persons.
   


















Ref no. 

O-306-05

Helen Hyde v Reed Midem Organisation SA

(14.11.05)

Application (and where applicable, earlier mark) 

M.D.E.M./ MDEM
and

Midem arranging travel,  conferences, accommodation)

- paper, arranging travel, conferences, accommodation (16, 39, 41, 42)
 
MIDEM – organisation of show rooms, communications (35, 38, 41) (CTM)
and

Midem paper

- paper (16)

Comment 

Under s. 5(2)(b), the Hearing Office upheld the opposition in relation to the first application, but allowed it in relation to the second application. Both parties appealed.

Richard Arnold QC allowed both appeals to a certain extent. He held that (1) the Hearing Officer was correct in finding that the opponent’s mark was famous as the name of a particular music festival; (2) the absence of actual confusion did not support the conclusion that there was no likelihood of confusion; (3) the Hearing Officer was wrong in holding that the applications would be perceived and pronounced differently - they would be perceived as variants on a single theme; and (4) therefore the Hearing Officer came to the right conclusion with regard to the first application and should have reached the same conclusion for the second application. The applicant was allowed to amend the specification of services to those she actually provided (specialised behind-the-scenes event management) which prevented a likelihood of confusion arising.

   


















Ref no. 

O-333-05

Helen Hyde v Reed Midem Organisation SA

(22.12.05)

Application (and where applicable, earlier mark) AS ABOVE (decision O-306-05)
Comment 

This was Richard Arnold QC’s second decision on the issues.

On receiving a letter from counsel for the opponent, which contended procedural unfairness and that the first decision was wrong or at least inadequately reasoned, the Appointed Person invited the parties to make submissions, following which he held that the limited jurisdiction available to all statutory tribunals to reconsider their decisions in exceptional circumstances was available to him, but that such exceptional circumstances did not exist here. In any event, the new arguments presented by the opponent did not affect the conclusion he had reached in his previous decision.

   

 




Domain names

Global Projects Management Ltd v. Citigroup Inc. & Others; Citigroup Inc. & Others v. Davies and Global Projects Management Ltd (Park J.; [2005] EWHC 2663 (Ch); 17.10.05)

Park J. gave summary judgment for Citigroup. He held that the registration and ownership by Global Projects Management (GPM) of the domain name citigroup.co.uk constituted passing off and trade mark infringement under Section 10(3). He further held that Mr Davies was liable to Citigroup as he had participated personally with GPM in a common design to carry out the tortious acts.

The facts of the case were as follows: On 6 April 1998 Citicorp and Travellers Group announced a merger.The announcement stated that the combined company would be named Citigroup Inc. At some time in the afternoon of that same day, Mr Davies, on behalf of GPM applied to Nominet to register the domain name citigroup.co.uk. He applied on the following day to register the domain name citigroup.com but this second application failed. GPM did not attempt to sell the domain name to Citigroup or any third party. Citigroup brought evidence that many emails intended for employees in the UK had failed to get through because they had been addressed to the .co.uk address. Some of those emails must have contained sensitive and confidential information, although there was no evidence (subject to one exception) that Mr Davies had attempted to use the information. Citigroup commenced proceedings at Nominet but when they were close to adjudication, GPM commenced a threats action. Citigroup counterclaimed for passing off and trade mark infringement.

Park J. followed British Telecommunications PLC v. One in a Million Limited [1999] 1 WLR 903.  In that case, Aldous LJ did not accept as a defence that One in a Million had not used the domain names to make fraudulent misrepresentations as it was not trying to supply any goods or services to anybody.  In the circumstances, Park J held that it was not open to him to accept the equivalent defence in this case.  Park J held that Citigroup had sufficient goodwill through the publicity of the merger to bring a passing off action. There was irrefutable evidence that GMP and Mr Davies had as their object the obtaining of a domain name which carried a potential threat of deception harmful to Citigroup Inc.  The case was therefore essentially on all fours with One in a Million and the application for summary judgment succeeded. 

Geographical indications of origin


Northern Foods Plc v. The Department for Environment, Food and Rural Affairs; The Melton MowbrayPork Pie Association (Interested Party) (Crane J.; [2005] EWHC 2971 (Admin); 21.12.05)

Crane J held that DEFRA was justified in forwarding the application for the registration of “Melton Mowbray Pork Pie” as a protected geographical indication to the Commission. 

The definition of a geographical indication of origin states that it is:

The name of a region, specific place or, in exceptional cases, a country used to describe an agricultural product or food stuff;            

  • originating in that region, specific place or country, and

  • which possesses a specific quality, reputation or other characteristics attributable to that geographical origin and the production and/or processing and/or preparation of which takes place in the defined geographical area.

The “geographical area” in DEFRA’s application covered a large area, including not only Leicestershire, but Nottinghamshire and parts of Northamptonshire and Lincolnshire. This was obviously wider than the “specific place” (or “region”) where the pork pies originated i.e. Melton Mowbray in Leicestershire. The judge held that this was the correct interpretation: the “defined geographical area” could be different from the “specific place” where the food stuff originated.

CONFIDENTIAL INFORMATION

Dyson Technology Ltd v. Ben Strutt (Sir Donald Rattee; [2005] EWHC 2814 (Ch); 25.11.05)

The defendant, an engineer, left Dyson’s employ and took employment as a design engineer with Black & Decker. His employment contract with Dyson included the following obligation:

You will not, for the period of twelve months immediately after the termination of your employment… so as to compete with [the Claimant], carry on or be engaged, concerned or interested in any business which is similar to and competes with any business being carried on by [the Claimant] at the termination of the employment with which you were involved at any time during the period of twelve months immediately preceding the termination of the employment.

In a speedy trial of the action, the judge held that this clause was valid and enforceable. It was no wider than was reasonably necessary to protect Dyson’s legitimate commercial interests in the confidential information relating to its business. Finding it valid was in the interests of both parties and not contrary to the public interest.

The judge granted an injunction despite the fact that Dyson did not contend that it had suffered any damage. An injunction was the normal remedy in such cases unless there were exceptional reasons in which the degree of hardship caused by the injunction was so extreme as to make it unconscionable. This was not such an exceptional case.

Katharine Stephens

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