Reported Trade Mark Cases December 2008

31 December 2008

Katharine Stephens and Zoe Fuller


Ref no.  

CFI
T-161/07
Group Lottuss Corp. S.L. v OHIM; Ugly, Inc
(04.11.08)
(Decision not yet in English)

Application (and where applicable, earlier mark)  


- magnetic data carriers (9)
- entertainment services, night clubs and cultural activities (41)
- cocktail lounges (42)
COYOTE UGLY
- beers, aerated water, fruit juices (32)

Comment  

The CFI dismissed the appeal, upholding the BoA’s decision that there was a likelihood of confusion under Article 8(1)(b), save in respect of the goods in Class 9 and the cultural activities of Class 41.


The BoA had not erred in finding that beers and entertainment services, night clubs and cocktail lounges were, to a certain extent, complementary on the basis that beers are often sold at the premises where those services are provided.


The CFI rejected Group Lottuss’ submission that the subsequent cancellation of the earlier mark should be taken into account.  The cancellation had effect from the date on which the cancellation action was filed and not from the date of registration; the earlier mark had been valid at the time the BoA made the decision.  It was therefore not appropriate for the CFI to consider the cancellation decision when reviewing the BoA’s decision.

     

Ref no.  

CFI
T-256/06
Neoperl Servisys AG v OHIM
(05.11.08)
(Decision not yet in English)

Application (and where applicable, earlier mark)  

HONEYCOMB
- jet regulators (11)

Comment  

The CFI upheld the BoA’s decision that the mark was descriptive under Article 7(1)(c).


When associated with the relevant goods, “honeycomb” could describe the honeycombed shape of the jet regulator’s nozzle which was a relevant characteristic of the goods applied for.


The fact that such goods often had honeycombed structures and that the term “honeycomb” did not have a technical meaning were considered irrelevant.  In addition, it was unlikely that the average English-speaking consumer would separate “honeycomb” into two words.


Having found that the mark was descriptive under Article 7(1)(c), there was no need to consider whether it lacked distinctive character under Article 7(1)(b).

     

Ref no.  

CFI
T-304/07
Calzaturificio Frau  v OHIM; Camper
(05.11.08)
(Decision not yet in English)

Application (and where applicable, earlier mark)  


- leather and leather goods, animals skins, luggage, umbrellas etc (18)


- clothing, shoes, hats (25)



- same Class 18 goods as above.

Comment  

The CFI dismissed the appeal, upholding the BoA’s decision that there was a likelihood of confusion between the two marks under Article 8(1)(b)


Visually, the BoA was right to conclude that the signs represented the same figurative motif and that the differences between them did not overcome that similarity. The average consumer would not recall the right-handed inclination of the sign applied for such as to distinguish the signs. Nor did it matter that the mark applied for was solid black; the consumer could reasonably assume it was the colour version of the previous mark.


There was also conceptual similarity, both signs bringing to mind an arc or a bridge with two legs. Whatever conceptual differences might exist, these did not neutralise the visual similarity.


Moreover, Calzaturificio had not shown that the signs were mere geometric shapes with a low level of distinctiveness. As the BoA’s reasoning for deciding this was clear and unequivocal, the BoA had not breached Article 73.

     

Ref no.  

CFI
T242/07
Dieter Weiler v OHIM; IQNet Association – The International Certification Network
(12.11.08)
(Decision not yet in English)

Application (and where applicable, earlier mark)  

Q2WEB
- computers and pre-recorded computer programs, networking computer programs (9)
- data compilation (35)
- telecommunication services (38)
- programming services for computers; installation and maintenance of software; computer and software rental; updating software, hire-purchase of access to a computer database (42)


QWEB
- certification services related to commercial internet websites which do not offer access to databases (42)



- telecommunication services, including internet (38)

Comment  

The CFI dismissed the appeal and upheld the BoA’s decision that the Q2WEB mark was invalid as there was a likelihood of confusion between the mark and the earlier marks under Articles 52(1)(a) and 8(1)(b).


Only the similarity between the goods and services in Classes 9 and 42 for Q2WEB and the services in Class 38 for the earlier figurative mark were contested.  The BoA was correct in finding that there was a similarity between these goods and services as they had a common purpose, namely satisfying the telecommunication needs of their users, and they could be provided by the same distribution channels.


The BoA had not erred in holding that the mark applied for was similar to the earlier marks.  Visually, the sole difference between Q2WEB and QWEB was the addition of the number “2”. The addition of “Certified Site” in the earlier figurative mark was held to be negligible. The marks were sufficiently similar phonetically. Conceptually, the marks were also similar; the element “web” referring to the internet and the letter “q” to either the concept of quality or more simply to the letter of the alphabet.


Accordingly, the BoA was correct in finding that there was a likelihood of confusion between the marks.

     

Ref no.  

  CFI
T-281/07
ecoblue AG v OHIM; Banco Bilbao Vizcaya Argentaria, SA
(12.11.08)

Application (and where applicable, earlier mark)  

ECOBLUE
- various types of business consultancy (35)
- various financial services (36)
- telecommunications services, except transmission of radio and television (38)


BLUE
- various computer related goods and services (9)
- insurance services, financial affairs, monetary affairs and real estate affairs (36)
- various telecommunications services (38)

Comment  

The CFI dismissed the appeal, upholding the BoA’s decision that there was a likelihood of confusion between the two marks under Article 8(1)(b).


The CFI held that the BoA had not erred in finding that the mark ‘Ecoblue’ was made up of the word elements ‘eco’ and ‘blue’ and was right to carry out the comparison of the marks on that basis. The CFI agreed that the marks were phonetically and visually different due to the word element ‘eco’, but were otherwise identical.


Even though consumers usually place more importance on the initial part of the word mark, this was not always the case.  The word ‘eco’ is common to several languages and is often used when referring to the economy.  As such it could be descriptive of some of the services and therefore it could not dominate the overall impression of the mark applied for.


Conceptually, the BoA did not err in finding the marks similar to the extent they both refer to the colour blue.


The BoA was correct in finding a likelihood of confusion between the marks.

     

Ref no.  

CFI
T-346/07
Duro Sweden AB v OHIM
(12.11.08)

Application (and where applicable, earlier mark)  

EASYCOVER


- building materials (non-metallic), non-metallic rigid pipes for building, asphalt, pitch and bitumen, non-metallic transportable buildings, monuments, not of metal (19)
- textile and textile goods, not included in other classes (24)
- mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile) (27)

Comment  

The CFI largely dismissed the appeal against the BoA’s decision to refuse registration of the mark, allowing the appeal only in relation to ‘monuments, not of metal’.


The BoA was right to find the sign descriptive under Article 7(1)(c). The syntax of the sign was not unusual and complied with English language rules. The impression created by the sign was not sufficiently far removed from that produced by the mere juxtaposition of the words to change their meaning or scope. Furthermore, with the exception of ‘monuments, not of metal’, the CFI held that the ease with which the remaining goods could serve to cover something was likely to be taken into consideration by the target public (English speaking consumers and professionals) when choosing such goods and so constituted characteristics of such goods.


The BoA had erred in inferring that it necessarily followed from the descriptive character of the sign that such sign lacked distinctiveness. The CFI held that there were no grounds to support a finding that the sign did not have distinctive character in respect of ‘monuments, not of metal’.  The BoA decision was annulled in respect of these goods.

     

Ref no.  

CFI
T-400/07
GretagMacbeth LLC v OHIM
(12.11.08)
(Decision not yet in English)

Application (and where applicable, earlier mark)  


- scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments (9)
- paper, cardboard; printed matter; photographs; stationary (16)
-  scientific and technological services and research; industrial analysis and research services; design and development of computer hardware and software (42)

Comment  

The CFI dismissed the appeal, upholding the BoA’s decision to reject the application for being devoid of distinctive character under Article 7(1)(b).


The composite mark applied for was composed of a 24 colour scheme, in which each individual colour lacked a distinctive character.


In relation to the goods in Classes 9 and 16, the relevant public would have difficulty retaining the details or the precise colours of the mark applied for.  In addition, the overall impression produced by the mark could vary depending on the manner in which it was used in relation to the goods in question.  The sign would thus be perceived by the relevant public to be a decorative element or a finishing to the relevant goods or their packaging.


Given that a colour, or a combination of colours, would not directly be applicable to any services, the mark would not be perceived as providing any information as to the origin of the services.  Accordingly, the mark applied for lacked distinctive character in relation to both the goods and services applied for.

     

Ref no.  

 CFI
T- 6/07
Galderma SA v OHIM; Tihomir Lelas
(19.11.08)
(Decision not yet in English)

Application (and where applicable, earlier mark)  

NANOLAT


- chemicals used in industry, science and photography (1)
- bleaching preparations and other substances for laundry use (3)
- medicines; pharmaceutical, veterinary and sanitary preparations (5)


TANNOLACT


- medicines and chemical products with healing and hygienic properties (5)


(German national registration)

Comment  

The CFI upheld the decision of the BoA that there was no likelihood of confusion between the marks under Article 8(1)(b).


Visually, the marks differed by (i) the number of letters; (ii) the first letter; and (iii) the presence of the double consonants “nn” and the letter “c” in the earlier mark.


Phonetically, the marks also differed. The average German consumer would pronounce the first “n” in NANOLAT with a soft sound, whereas he would pronounce the “t” in TANNOLACT with a strong sound. Further, the vowels in TANNOLACT were held to be short, whereas the vowels in NANOLAT were long. The “c” sound in TANNOLACT could not be found in the mark applied for.


Conceptually, there was no similarity between the marks. The CFI held that TANNOLACT was arguably a made-up word although it could also be perceived by the German public to refer to “tanno” and “lact” (in German “tannen” and lactose/lactate) meaning “fir tree” and “elements of milk”. The “nano” element in the mark applied for could evoke the idea of “nano technologies” and “nano sciences”.


On that basis, the CFI dismissed the appeal and upheld the decision of the BoA.

     

Ref no.  

CFI
T-269/06
Rautaruukki Oyj v OHIM
(19.11.08)

Application (and where applicable, earlier mark)  

RAUTARUUKKI


- common metals and their alloys; metal building materials (6)

Comment  

The CFI dismissed the appeal, holding that the Applicant had failed to show that the mark had become distinctive under Article 7(3).


The Applicant sought to introduce new evidence showing that the sign, meaning iron works in Finnish, was highly distinctive (including affidavits from the Finnish Central Chamber of Commerce and the decision of the Finnish Patents Office approving registration of the same mark for the same goods).


The CFI held that the introduction of new evidence was inadmissible. Its purpose was to review the legality of OHIM’s decision, not re-evaluate the facts. To admit new evidence was contrary to Article 134(4) of the Rules of Procedure. The CFI rejected the Applicant’s submission that since the decision of the Finnish Patents Office was made shortly after OHIM’s decision it should be taken into account; the Applicant had not requested a stay of proceedings before OHIM and, in any case, the documents could have been drawn up earlier or sent to OHIM before the contested decision was adopted.


The evidence that had been submitted to OHIM was clearly insufficient to establish distinctiveness through use. Accordingly the action was dismissed.

     

Ref no.  

CFI
T-184/07
Avon Products, Inc. v OHIM
26.11.08

Application (and where applicable, earlier mark)  

ANEW ALTERNATIVE


- soaps, perfumery, essential oils, cosmetics, hair lotions (3)

Comment  

The CFI upheld the decision of the BoA that the mark was devoid of distinctive character under Article 7(1)(b).


Avon Products submitted that the word ‘anew’ was not a lexical invention (i.e. a simple juxtaposition of the terms ‘a’ and ‘new’) but had a completely new meaning, being ‘in a new way’. In addition, the grammatically incorrect use of the word ‘anew’ rendered the mark surprising and fanciful.


The CFI held that, given the sale channels of the products in question, the mark must have the necessary distinctive character both when seen, and also when heard, by the relevant consumer.


The CFI concluded that that the perception of the mark on a phonetic level by the relevant consumer would be the same as the perception of the sign ‘a new alternative’. The difference of ‘anew’ and ‘a new’ would not normally be perceptible. The consumer would perceive the mark as an advertising slogan, devoid of distinctive character, indicating that the relevant goods offered an alternative to existing goods.

     
 

Negligible elements in a global comparison


Shaker di L. Laudato & C. Sas v  OHIM; Limiñana y Botella SL (CFI First Chamber; T-7/04 ; 12.11.08)


Shaker di L. Laudato & C. Sas applied to register the following mark as a CTM for lemon liqueurs from the Amalfi Coast in Class 33:



Limiñana y Botella SL opposed the application on the grounds that there was a likelihood of confusion under Article 8(1)(b) with its earlier Spanish national registration for LIMONCHELO for wines, spirits and liqueurs in Class 33.


The Opposition Division and BoA allowed the opposition, however the CFI held that because of the visual element of the mark applied for, the two marks were sufficiently dissimilar so as not to cause a likelihood of confusion.  On appeal, the ECJ set aside the CFI’s decision, holding that the CFI had failed to carry out a global assessment of the likelihood of confusion and noted that the assessment can focus solely on a dominant characteristic, only when all other parts of the mark are negligible.


On referral of the case by the ECJ back to the CFI, the CFI dismissed the action, refusing registration of the mark applied for and upholding the decision of the BoA that there was a likelihood of confusion between the two marks under Article 8(1)(b).


The CFI concluded that the text other than ‘Limoncello’ of the mark applied for was secondary and therefore negligible in the overall impression created.  Although the figurative component of the mark applied for was visually as important as the word ‘Limoncello’ the word ‘Limoncello’ was likely to dominate the overall impression of the mark because (i) the size and prominence of the word within the mark; (ii) consumers usually describe goods by reference to the verbal element; and (iii) lemons were regularly used on such types of goods and therefore would not attract the attention of consumers.


The CFI concluded that there was a certain visual similarity between the two marks; the differences between the marks were not sufficient to override the similarity between the word ‘Limoncello’ and the earlier mark. 


The CFI held that there were also conceptual and phonetic similarities between the two marks and concluded that there was a similarity between the marks at issue.  The BoA erred in finding that the marks were practically identical.  However, the CFI held that this error was not significant enough to annul the BoA’s finding providing it was correct in its finding of a likelihood of confusion. 


Taking into account the consumer’s imperfect recollection and the similarities between the words ‘Limoncello’ and ‘Limonchelo’, the CFI concluded that there was a likelihood of confusion. 


Nalocebar Consutores e Servicos Lda v OHIM; Limiñana y Botella SL (CFI; T-210/05; 12.11.08) (Decision not yet in English)


Nalocebar applied to register the mark reproduced below for goods in Classes 30 (pastries, confectionary, sweets, chocolate, chocolates ices based on a lemon or filled with lemon cream), 32 (syrup and other lemon based drinks) and 33 (lemon-based liqueurs).



Limiñana y Botella SL opposed the application under Article 8(1)(b), relying on its earlier Spanish registration for LIMONCHELO in Class 33 (wines, spirits and liqueurs).


Following a hearing on the same day as T-7/04 (reported above) before the same panel of judges, the CFI upheld the decision of the BoA that there was a likelihood of confusion.


As in its other decision, the CFI concluded that ‘Limoncello’ constituted the dominant element of the mark applied for.


‘Capri’ was held to be a less dominant element of the mark despite its central position. This was due to the word having a slightly smaller font and being the second word (to which the average consumer generally places less importance than the first word). Further, the additional word elements ‘Tradizionale liquore di Limoni’ as well as the text beneath the smaller picture were also held to be of subsidiary importance due to the former being depicted in a smaller font and the latter being hardly noticeable at all.


Similarly, the device elements were held to have a negligible effect on the overall impression of the mark as the relevant consumer was used to seeing images of lemons in connection with lemon-based liqueurs.


As in T-7/04, the CFI concluded that there were phonetic and conceptual similarities between ‘Limoncello’ and ‘Limonchelo’.  The difference brought about by the word ‘Capri’ and the other verbal and figurative elements were not sufficient to detract from this finding.


For the above reasons, the CFI dismissed the appeal and upheld the decision of the BoA that there was a risk of confusion between the marks.


Specification of goods


Scil proteins GmbH v OHIM; Indena SpA (CFI (First Chamber); T-87/07; 12.11.08)


Indena applied for the mark reproduced below for extracts of medicinal plants for use in the cosmetic and food industries, not for diagnostic purposes in Class 1.



Scil proteins opposed the application under Article 8(1)(b) on the basis of its earlier word mark AFFILIN for the following goods:


  • chemicals used in industry, science as well as in agriculture, horticulture and forestry; analysis and diagnostic preparations; biological preparations for laboratory analysis and diagnostics; all the aforesaid goods in particular containing antibodies or antibody-type proteins or parts thereof in Class 1
  • pharmaceutical and veterinary preparations, except anti-epileptics; diagnostic and analysis preparations for medical and veterinary purposes; re-agents for medical and veterinary purposes; all the aforesaid goods, in particular containing antibodies or antibody-type proteins or parts thereof in Class 5

The CFI annulled the BoA’s decision and upheld the opposition.  The appeal focussed on the similarity of the goods in question, in particular ‘biological preparations for laboratory analysis and diagnostics’ designated by the earlier mark.


The BoA wrongly held that the similarity between the goods was offset by: (i) the application expressly excluding plant extracts ‘for diagnostic purposes’; and (ii) all the goods designated by the earlier mark containing ‘antibodies or antibody-type proteins or parts thereof’.          


The CFI held that the express exclusion in the application of medicinal plant extracts for diagnosis purposes did not make it possible to exclude medicinal plant extracts used for analysis.  Products for analysis and those for diagnosis do not have the same use and are not necessarily identical.  Furthermore, the words ‘in particular’ when used in a list of goods only indicate an example and do not exclude any other goods on that list.  The inclusion of the words ‘all the aforesaid goods’ did not alter this interpretation.  Therefore the description of the goods designated by the earlier mark concerned all biological preparations for laboratory analysis and diagnostics, regardless of whether they contained antibodies or anti-body type proteins.


The CFI also rejected the submission that the goods were dissimilar on the basis that the biological preparations of the earlier mark, being laboratory products, had a different intended purpose from the plant extracts of the application which were intermediate goods to be used for the manufacture of cosmetics and foodstuffs.  The description of the goods was not a ground for finding they were only intermediate goods; they might be used to undertake analysis in laboratories in the cosmetics and food industries.    


The CFI having found similarity and a likelihood of confusion in this instance declined to examine the Applicant’s other submissions concerning similarity between other goods designated by the earlier mark.


Marks consisting of the shape of goods


Lego Juris A/S v OHIM; Mega Brands Inc (CFI (Eighth Chamber); T-270/06; 12.11.08)


The CFI dismissed the appeal from the Grand BoA, ruling that the trade mark was invalid under Articles 51(1)(a) and 7(1)(e)(ii).


Lego owned a CTM consisting of the red three-dimensional shape of a lego brick (reproduced below) registered for games and playthings in Class 28. Mega Brands applied to have the mark declared invalid.



Essentially, Lego submitted that the Grand BoA misinterpreted Article 7(1)(e)(ii), in particular the scope of the terms ‘exclusively’ and ‘necessary’, by considering that the existence of functionally equivalent alternative shapes using the same technical solution was irrelevant. Lego also submitted that the Grand BoA failed to correctly identify the nature of the trade mark.


The CFI first noted that the word ‘exclusively’ must be read in light of the expression ‘essential characteristics which perform a technical function’ used in Phillips (Case C-299/00), from which it was apparent that the addition of non-essential characteristics having no technical function did not prevent a shape from being caught by the absolute ground for refusal provided that all of the essential characteristics performed such a function. It followed that the expression ‘necessary to obtain a technical result’ did not mean that Article 7(1)(e)(ii) applied only if the shape was the only one which could achieve the intended result. Both terms had therefore been correctly interpreted by the Grand BoA.


The CFI concluded that Article 7(1)(e)(ii) precluded registration of any shape consisting exclusively, in its essential characteristics, of the shape of the goods which was technically causal of, and sufficient to obtain, the intended result, even if that result could be achieved by other shapes using the same or another technical solution.


Regarding the alleged failure to correctly identify the characteristics of the mark, the CFI noted that the perception of the target consumer was not relevant. Instead, the essential characteristics had to be determined objectively, on the basis of its graphic representation and any descriptions filed at the time of the application. Although the Grand BoA had examined the Lego brick as a whole, including the not visible hollow underside, the analysis also included all the visible elements of the graphic representation, each of which were found to fulfil specific technical functions.


Lego submitted that its competitors did not need to copy the shape in order to apply the same technical solution and that, in the absence of any risk of creating a monopoly, Article 7(1)(e)(ii) did not apply. The CFI held that the argument was based on the erroneous assumption that the availability of other shapes incorporating the same technical solution demonstrated that the shape at issue was lacking in functionality whereas, according to Philips, the functional shape itself had to be available to everyone. Accordingly the action was dismissed.


ECJ provides guidance on what constitutes trade mark dilution in Europe


Intel Corporation Inc v CPM United Kingdom Ltd (ECJ (First Chamber); C-252/07; 27.11.08)


Intel is the owner of a UK trade mark registration for the word mark INTEL for, essentially, computers and computer-linked goods and services. The INTEL mark has a huge reputation in the UK for microprocessor products and multimedia and business software. CPM is the owner of a UK trade mark registration for the word mark INTELMARK, registered with effect from 31 January 1997 for ‘marketing and telemarketing services’ in Class 35.


On 31 October 2003 Intel filed at the UK Trade Mark Registry an application for a declaration of invalidity against the registration of INTELMARK claiming that the use of that mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier INTEL trade mark within the meaning of Section 5(3) (equivalent Article 4(4)(a)).


Intel’s application failed, as did its subsequent appeal to the High Court ([2006] ETMR 90). Intel then appealed to the CoA, submitting that both Article 4(4)(a) and Article 5(2) seek to protect a proprietor of a trade mark with a reputation against the risk of dilution. The CoA referred several questions to the ECJ regarding the factors necessary to establish whether a later trade mark had taken unfair advantage of or was detrimental to the distinctive character or repute of an earlier trade mark for the purposes of Article 4(4)(a) ([2007] RPC 35).


Detriment to distinctive character – what does this mean?


The ECJ held that detriment to the distinctive character of the earlier mark (which it noted was also referred to as dilution or blurring) is caused when that mark’s ability to identify goods or services as coming from the proprietor of that mark is weakened.


Is the public required to make a connection or ‘link’ between the earlier and later marks?


If the relevant section of the public has not made a ‘link’ between the earlier and later marks, the use of the later mark is unlikely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. However, the existence of the link, in itself, is not sufficient to establish the required injury under Article 4(4).


Who is the relevant public?


The ‘relevant public’ depends on the type of injury alleged:


  • For the purpose of establishing detriment to the distinctive character or repute of the earlier mark it is the average consumers of the goods and services for which the earlier mark is registered;
  • For the purpose of establishing unfair advantage, it is the average consumers of the goods or services for which the later mark is registered.

Proof


The owner of the earlier mark must prove that there is either (i) an actual and present injury; or (ii) a serious risk of such injury.


Establishing a link between the earlier and later marks


Whether there is a link between the earlier mark with a reputation and the later mark must be assessed globally, taking into account all factors relevant to the circumstances of the case. Factors to be considered include:


  • the degree of similarity between the conflicting marks; the more similar the marks, the more likely that there will be a link established;
  • the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;
  • the strength of the reputation of the earlier mark; for example, if it extends beyond the relevant public for the goods and services for which it was registered, a link may be more likely to be established;
  • the degree of the distinctive character of the earlier mark (whether inherent or acquired through use); the stronger the distinctive character, the more likely that there will be a link established;
  • the existence of the likelihood of confusion on the part of the public (although the ECJ noted that the Directive does not require likelihood of confusion).

The fact that, for the average consumer, the later mark calls the earlier mark with a reputation to mind is tantamount to the existence of such a link between the conflicting marks.


Criteria for establishing unfair advantage and/or detriment


The existence of unfair advantage or detriment or a serious likelihood that those will occur in the future must be assessed globally, taking into account all factors relevant to the circumstances of the case.


Even if there is a link between the earlier mark and the later mark in the mind of the consumer, the trade mark owner must still show actual and present injury or a serious likelihood of injury.


What is required in order to satisfy the condition of “detriment to distinctive character”?


Proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.


Genuine use of trade marks by non-profit-making associations


Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ (Grand Chamber of the ECJ); C-442/07; 09.12.08)


Verein Radetzky-Orden applied to revoke the trade marks owned by Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ (‘BKFR’), a non-profit-making association, on the grounds of absence of genuine use.  Following the Austrian Patent Office’s decision to cancel BKFR’s trade marks, BKFR lodged an appeal before the Oberster Patent-und Markensenat. 


The Oberster Patent-und Markensenat stayed the proceedings and referred to the ECJ for a preliminary ruling on whether Article 12(1) should be construed as meaning that a trade mark is put to (genuine) use to distinguish goods and services of one undertaking from those of other undertakings in cases where a non-profit-making association uses the trade mark in announcements for events, on business papers and on advertising material and that trade mark is used by the association’s members when collecting and distributing donations inasmuch as those members wear badges featuring that trade mark. 


The Court ruled that a trade mark is put to genuine use where a non-profit-making association uses the trade mark, in its relations with the public, in announcements of forthcoming events, on business papers and on advertising material and where the association’s members wear badges featuring that trade mark when collecting and distributing donations. 


Considering the concept of ‘genuine use’ within the meaning of Article 12(1) and as stated by the Court in Ansul (C-40/01), the Court noted that the fact that goods or services are offered on a non-profit-making basis is not decisive.  A charitable association, by not seeking to make a profit, does not mean that its objective cannot be to create and, later, to preserve an outlet for its goods and services.  A trade mark registered by a non-profit-making association can protect that association against possible use in business of identical or similar signs by third parties.  Provided the association uses the marks of which it is the proprietor to identify and promote the goods or services for which they were registered it is putting the marks to genuine use.    


However, in accordance with Ansul, the Court considered that the use of a trade mark by a non-profit-making association during purely private ceremonies or events, or for the advertisement or announcement of such ceremonies or events, constitutes an internal use of the trade mark and is not a genuine use for the purposes of Article 12(1).


Genuine use of a mark in relation to the goods for which it is registered


Crocodile International Private Ltd v La Chemise Lacoste*(The Chancellor; [2008] EWHC 2673 (Ch); 8.10.08)


The Claimant, Crocodile, failed in its application for summary judgment for an order under Section 46(1) to revoke, for non-use, the mark CROCODILE registered in class 25 for “shirts but not including sports shirts”.


The mark was registered in 1981 by the Defendant, Lacoste. Crocodile contended that such use of the mark as there had been was not genuine or in relation to the goods for which the mark was registered.


The Chancellor held that there was a real prospect that, at trial, Lacoste would succeed in establishing that the use of the CROCODILE mark on a swing tag fixed to a particular shirt (L1212) in Lacoste’s clothing range, was a genuine use of the mark as a trade mark. In the relevant five year period (1985 to 1990), there were orders for over 100,000 of these shirts. At an approximate retail price of £50 the value of those orders was considerable.


Given that use of the CROCODILE mark in the relevant five year period was genuine, the Chancellor turned to the issue of whether the mark was used in relation to the goods for which it was registered. The goods were described in the registration as “shirts but not including sports shirts”. Those words had to be interpreted as at the date of registration in the light of how they would be understood for the purposes of trade. Whether in 1981 the L1212 shirt was essentially a casual shirt or a sports shirt was an issue of fact to be determined at trial.


Having determined the meaning of the registration, it was necessary to determine the goods in relation to which the mark CROCODILE was used in the relevant period (1985 to 1990). The description of the L1212 as “sportswear” was not conclusive of the question whether in the relevant period it was a sports shirt. The meaning of this word might have changed with the change of use. For example, evidence from Lacoste was that the word sportswear was now indicative of casual wear. There was also clear evidence that the CROCODILE swing tag had been extensively used on L1212 shirts sold as casual shirts both in and after the relevant period. The consequence of the existence of this evidence was that Lacoste had a real prospect of demonstrating at trial that there was genuine use of the CROCODILE mark in relation to the range of goods for which it was registered.


Crocodile’s contention that any use of the mark in relation to sports shirts prevented use of the mark in relation to casual shirts was rejected.


The application was dismissed and costs were awarded in favour of Lacoste. Leave to appeal was refused.


Patent attorney litigator not entitled to represent parties before the CFI


Imperial Chemical Industries plc v OHIM (CFI, Fifth Chamber; T-487/07; 20.10.08)


ICI brought an appeal against the BoA’s decision to reject the application for the mark FACTORY FINISH. The application stated that ICI was represented in part by Mr Johnston, a patent attorney litigator. ICI brought an application under Article 114 of the Rules of Procedure of the CFI for Mr Johnston to be allowed to act as ICI’s representative.  By Order, the CFI rejected ICI’s application.


Article 19 of the Statute of the Court of Justice provides that only a lawyer authorised to practise before a court of a Member State (or another state which is party to the Agreement on the EEA) may represent or assist parties. The requirement is based on the fact that a lawyer is considered to be a person who collaborates in the administration of justice and is governed by the rules of professional discipline which are laid down and enforced by institutions endowed with the requisite powers for that purpose.  The CFI referred to its previous decision of Veramonte (Case T-14/04) in which it held that a patent attorney was not a lawyer and consequently was not authorisied to represent a party before the Court, even though he was entitled to represent parties in certain actions before the courts and tribunals of the UK. ICI submitted that Mr Johnston was different to the patent attorney in Veramonte because he was authorised to conduct litigation before a number of higher courts and has, in particular, the right to directly instruct a barrister without the need to use a solicitor. ICI submitted that Article 19 should be given a broad interpretation in accordance with the different legal traditions of the Member States so as to include a Patent Attorney Litigator.


The CFI held that the two conditions under Article 19 (namely that the person must be a lawyer and be authorised to practice before a court of a Member State) were cumulative. Therefore, authorisation to practice before a court or tribunal of a Member State is not, of itself, sufficient to confer the right to represent an applicant; Mr Johnston could only be entitled to that right if a Patent Attorney Litigator can be considered to be a lawyer.


The CFI concluded that a Patent Attorney Litigator could not be considered a lawyer for the following reasons:



  1. The rules of professional discipline and conduct which govern a Patent Attorney Litigator were drawn up by the CIPA, which also enforces their application. Since CIPA is the professional body with jurisdiction over all Patent Attorneys and not only over Patent Attorney Litigators, it cannot be assimilated to an authorised institution described above;
  2. The concept of a lawyer does not require that express reference be made to the law of those States in order to determine its meaning and scope; the word lawyer, must normally be given an independent and uniform interpretation throughout the Community; and
  3. Council Directive 77/249/EEC and Directive 98/5/EC both refer specifically to Advocate/Barrister/Solicitor in the definition of a ‘Lawyer’. Neither legislation refers to a ‘Patent Attorney Litigator’. For the purposes of the application both of Article 19 and these directives, the concept of ‘lawyer’ must be given a uniform interpretation.

“Sequin Art” distinctive and infringed


Kitfix Swallow Group Ltd v Great Gizmos Ltd*(Judge Mackie QC; [2008] EWHC 2723 (Ch); 12.11.08)


The Claimant, Kitfix, succeeded against the Defendant, Great Gizmos, in a claim for CTM infringement and passing off. Great Gizmos’ counterclaim for a declaration of invalidity of the CTM failed.


Kitfix and Great Gizmos were both involved in the craft and hobby kit business. Kitfix had been selling products under the CTM “Sequin Art” since 1990. The “Sequin Art” product enabled purchasers to create pictures with sequins. Kitfix’s CTM for “Sequin Art” was registered in 2005 in class 16 for “artistic materials, namely craft and hobby kits for making pictures”.


In January 2004, Great Gizmos started to import for sale in the UK a product under the name “Sequin Art”, manufactured by a company in Hong Kong. In late 2006, Kitfix complained to Great Gizmos, who decided to place no further orders with their Hong Kong supplier.


In August 2007, the Hong Kong supplier applied to OHIM for a declaration of invalidity of the CTM. In November 2007, Mann J refused an application by Great Gizmos to stay the UK proceedings in favour of those OHIM proceedings. As a result, the OHIM proceedings were stayed until the outcome of the counterclaim in the UK proceedings.


Judge Mackie QC held that there was infringement under both Articles 9(1)(a) and (b) of the CTM Regulation. The different script of the defendant’s sign did not prevent Article 9(1)(a) infringement since the CTM was a “plain word mark”. In terms of infringement under Article 9(1)(b), there was no hard evidence of confusion but Judge Mackie QC thought that confusion was “certainly a likelihood” given the background, the similarities between the products, the nature of the market and the fact that both kits were called Sequin Art.


From the evidence, Judge Mackie QC held that the CTM Sequin Art was distinctive, either inherently or because of its use over the years by Kitfix. Nobody else in the UK or the EU had used the words Sequin Art to any material degree. While Sequin Art indicated the nature of the product, these words did not describe the product. As a consequence, Great Gizmos’ defence under Article 12 failed, as did its application for invalidity under Articles 7(1)(b), (c), 7(3) and 51(1)(a). Furthermore, it led to the inexorable conclusion that there had been passing off.


Passing off and infringement of Lloyd’s and Lloyd’s List marks


Lloyd’s and Informa UK Ltd v Lloyds Publishing Group Ltd (Warren J; [2008] EWHC 2320 (Ch); 19.6.08)


The First Claimant, Lloyd’s, made a successful application for summary judgment on certain claims for trade mark infringement and passing off against the Defendant, Lloyds Publishing Group (“LPG”). LPG’s claim for partial invalidity of some of Lloyd’s registered UK trade marks and CTMs was also dismissed.


Prior to 1995, Lloyd’s built up a successful publishing business (the “Lloyd’s Publishing Business”), which published, sold and distributed newspapers, journals, books and law reports, among other things, and provided services to the maritime, insurance and legal markets. Lloyd’s owned the UK marks and CTMs “Lloyd’s” and “Lloyd’s List” which it used in relation to all of these goods and services. The marks were registered in relation to insurance services or were qualified by the words “or relating to insurance”, or “or relating to insurance, reinsurance and assurance services”. The Second Claimant, Informa, was authorised to use these marks in connection with the Lloyd’s Publishing Business under a trade mark licence.


LPG was using the words Lloyds Publishing Group, Lloyds Publishing and Lloyds, all without apostrophes. LPG produced various publications and provided information and database services in the maritime industry.


Lloyds and Informa sued LPG for trade mark infringement and passing off. LPG counterclaimed for partial invalidity of some of Lloyd’s trade marks to the extent that they were not used for insurance services. LPG also claimed that there were many Lloyds businesses or companies calling themselves Lloyds and therefore the name Lloyds was not capable of distinguishing one business or company from another. Warren J held that the mere existence of these businesses or companies did not give LPG a legitimate defence or counterclaim; nor did it mean that Lloyd’s had in any way lost its distinctiveness. There was no prospect of establishing that Lloyd’s and Lloyd’s List were other than distinctive marks.


Lloyds and Informa applied for summary judgment on their claims to passing off and to trade mark infringement (relying on Sections 10(2)(b) and 10(3) and Articles 9(1) (b) and (c)) and LPG’s counterclaim. Warren J held that LPG was liable for passing off and Section 10(3) infringement in relation to certain misleading emails. However, the uncertainty about the similarity of goods and services meant that Section 10(2)(b) infringement could not be determined in these proceedings. Further, in relation to the use of the company name, Lloyds Publishing Group Ltd, on the website site and in other publicity material, it was not so clear that those materials would result in passing off. Consequently, Warren J granted summary judgment and injunctive relief in relation to those instances where passing off had been shown, but did not go so far as to prevent the Defendant from using Lloyds Publishing Group Ltd as a company name.


Own Name Defence


Hotel Cipriani SRL & Ors v Cipriani (Grosvenor Street) Ltd & Ors*; (Arnold J; [2008] EWHC 3032 (Ch); 9.12.08)


The three Claimants, all in the Orient Express Hotels Group, were successful in their claim for trade mark infringement and passing off against Cipriani (Grosvenor Street) Ltd (“CGS”), the First Defendant.


The First Claimant owned and operated Hotel Cipriani in Venice. The Second Claimant owned and operated the Ristorante Hotel Cipriani at the Lapa Palace Hotel in Lisbon. The Third Claimant owned and operated the Ristorante Villa Cipriani at the Reid’s Palace Hotel in Madeira. The First Claimant was the registered proprietor of a CTM for: (i) the word Cipriani for hotels, restaurants, and bars, among other goods and services, in Class 43; and (ii) the words Hotel Cipriani in respect of the same goods and services. The First Claimant was also the registered proprietor of a UK trade mark for: (i) the word Cipriani in respect of an almost identical specification of goods and services to the CTMs; and (ii) the words Hotel Cipriani in respect of hotel reservation services in Class 42.


Since April 2004, CGS had operated a restaurant called Cipriani London, commonly referred to simply as Cipriani. The Second Defendant was the sole director of CGS. The Third Defendant was a Luxembourg company which licensed CGS to use the name Cipriani. The Third Defendant was itself licensed by a Madeiran company. CGS, the Third Defendant and Madeiran company were all in the same group of companies; the Cipriani Group. There was a historical link between members of the Cipriani family, who ran the Defendant companies, and the Claimants. However, any family connection ceased at least one generation ago.


Arnold J held that infringement was made out under both Articles 9(1)(a) and 9(1)(b) of the CTM Regulation. All three Defendants were liable, the Second and Third Defendants as joint tortfeasors.  In terms of infringement under Article 9(1)(b), there was a likelihood of confusion between the mark Cipriani and the sign Cipriani London as they were both being used for restaurant services. The dominant and distinctive element in CGS’s sign was Cipriani since the additional word London was non-distinctive, particularly for a restaurant in London. This was confirmed by CGS’s and third parties’ tendency to drop the word London.


In relation to the “own name” defence, Arnold J held that Article 12(a) protected a third party using his own name, not another person’s name. Cipriani and Cipriani London were merely CGS’s trading names; they were not its own names. Further, CGS’s use of the signs had not been in accordance with honest practices in industrial and commercial matters. Cipriani was the name of the Second Defendant but not the Third Defendant, but neither the Second nor Third Defendant could rely on the defence as neither were trading or making the use complained of in the way that CGS was. It was immaterial that the Third Defendant had licensed the use complained of.


The Defendants counterclaimed for invalidity on the basis that both the UK Cipriani mark and the CTM had been registered in bad faith under Section 3(b) and Article 51(b). Arnold J held that the relevant date for assessing whether an application to register a mark was made in bad faith was the application date, but later evidence was relevant if it shed light on the position as at the application date. In the instant case, there was no basis for saying that the Cipriani applications were made in bad faith. The First Claimant had been using the Cipriani mark for hotels and restaurants in Italy and elsewhere in the Community for many years. It had a legitimate interest in applying to register the marks.


CGS was also liable for passing off. At the relevant time (April 2004), the First Claimant had customers in the UK and also customers overseas who booked the hotel and restaurants directly and via tour companies and travel agents. As such, it had a substantial reputation and valuable goodwill. It was likely that members of the public had been mislead into believing that CGS’s restaurant was connected with the First Claimant. Having established the necessary goodwill and misrepresentation, it was likely that damage followed.


COPYRIGHT


Circumvention of technological measures


Higgs v The Queen* (Jacob, Hughes & Andrew Smith LLJ, [2008] EWCA Crim 1324, 24.06.08)


The Court of Appeal, Jacob LJ giving judgment, quashed the conviction under Section 296ZB of the CDPA 1988 (devices and circumstances designed to circumvent technological measures).


Mr Higgs ran a business called “Mr Modchips”, fitting and selling modchips to computer games consoles.  Games consoles, e.g. Sony’s Playstation, contain embedded codes and will normally only allow a game to be played if the CD-ROM on which it is supplied contains the corresponding code.  The codes on the CD-ROMs are not, at least for practical purposes, copiable and hence, the effect is to prevent the playing of pirate games.  Fitting a console with a modchip overcomes these measures.


In the Crown Court, the prosecution contended that by selling modchips and modified consoles, Mr Higgs was in effect encouraging and exploiting a market for pirate games.  Since no one would make or sell pirate games unless they could be played, Mr Higgs was creating an incentive for the pirate market.  On this basis, he had been convicted under Section 296ZB. 


The Court of Appeal quashed the conviction.  It was insufficient merely to say that modchips opened the market to infringing products because they circumvented “effective technological measures” (“ETMs”) which prevented or restricted infringement.  An ETM has to be designed to protect a work i.e. to protect or restrict acts that are not authorised by the copyright owner (Section 296ZF(1) and (3)).  The Court held that it was therefore a measure which physically prevented copyright infringement.  Further, the infringing acts it prevented were those set out in the Act.  In so holding, the Court followed the reasoning in the decision of the High Court of Australia Stevens v Sony [2005] HCA 58, 21 ALR 447. 


As Jacob LJ pointed out, had the argument had been run along similar lines to those in the civil case of Sony v Ball [2004] EWHC 1738, the result would have been different.  However, no attempt was made to argue that the use of a modified console to play a game from an infringing CD-ROM itself involved any infringement of copyright.  Jacob LJ stated obiter that this was an infringement because when an infringing CD-ROM was placed in a console, the console would read into its random access memory (“RAM”) the program and copyright material included with it, such as images and sound.  And, under Section 17, the making of such transient copies of copyright material into a RAM was a restricted act.


Leave to the House of Lords was refused.


Katharine Stephens and Zoe Fuller


 


Reporter’s note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Kathryn Robinson, Alice Sculthorpe, Claire Chapman, Cristina Garrigues, Edouard Fortunet, Emilia Linde, Emily Forsyth, Emily Peters, Gina Brueton, Nick Aries, Taliah Davis and Tom Snaith.


ECJ and CFI decisions can be found at and the reported cases marked * can be found http://curia.eu.int/en/content/juris/index_form.htm and the reported cases marked * can be found at http://www.bailii.org/databases.html#ew