This month we report on a round-up of decisions of the Appointed Person from June 2008 to December 2008; and the guidance of the ECJ on the concepts of “extraction” and “substantial part” in the Database Directive in Apis-Hristovich EOOD v Lakorda. <top>
To be taken to your case of interest within the table please click on the below:
|Application (and where applicable, earlier mark)
IN THE PINK
- magazines, publications, literature relating to lifestyle and women’s health (16)
Geoffrey Hobbs QC rejected Dugdill’s appeals against the Registry’s decision (i) refusing its application for security for costs under Rule 61 of the Trade Mark Rules; and (ii) allowing Xcess Media an extension of time for filing its reply evidence under Rule 68.
In relation to (i), Mr Hobbs concluded that there was sufficient material before the Hearing Officer to enable him to reach his conclusion, and there was no manifest error in his approach in dealing with the application.
In relation to (ii), Xcess Media’s reasons for requesting an extension centred on its decision to de-instruct its trade mark attorneys for financial reasons and continue the proceedings as a litigant in person. Although the Hearing Officer could have been more expansive on the question of diligence on the part of Xcess Media during the initial three month period for filing its evidence, the Appointed Person held that, not only was the Hearing Officer right to reach the conclusion he did, it would not have been just and fair to Xcess Media if he had ruled otherwise. The fact that other extensions of time had previously been granted in the proceedings was not relevant to the matter at issue.
|Application (and where applicable, earlier mark)
- computer software for the monitoring, analysing and reporting on the use of communication systems (9)
- provision of reports relating to communications (38)
- provision of expert appraisals relating to communications (42)
Lee Bracewell sought to adduce and rely upon further evidence in support of an appeal against the Hearing Officer’s decision to reject the opposition based on an earlier unregistered right under Section 5(4)(a).
The new evidence was an agreement by which Mr Bracewell’s company, Commsoft Support Limited, was granted a licence by another company called Soft-Sync Limited to carry out maintenance work for the latter’s customers.
Amanda Michaels concluded that, whilst the new evidence might demonstrate that Mr Bracewell took over an existing business and traded before the filing date of the trade mark, it did not satisfactorily show that the name ‘Commsoft’ was being used by the business as a trade mark. The bare assertion by Mr Bracewell that he enjoyed goodwill in the name ‘Commsoft’ by virtue of the trading name of his company was not substantiated by the fresh evidence. Accordingly, Ms Michaels refused to exercise her discretion to admit the further evidence.
As Mr Bracewell identified no errors of principle in the Hearing Officer’s approach, and on the basis of the evidence as it then stood, Ms Michaels dismissed the appeal.
|Application (and where applicable, earlier mark)
- various cosmetics, creams, soaps and cleaners (3)
- non-medicated toilet preparations, cosmetic preparations, soaps, perfumes, preparations for cleaning the teeth and toilet articles (3)
Geoffrey Hobbs QC dismissed the appeal against the Hearing Officer’s decision to reject the opposition under Section 5(2)(b).
In relation to the figurative mark, the Appointed Person dismissed Mary Quant’s submission that the Hearing Officer had erred by not considering that a registration in black and white was equivalent to a registration in all possible colours/colour combinations. The true position was that registration in black and white provides protection unrelated to colour. There was therefore no foundation for the appeal.
In relation to the complex mark, it was well within the margin of appreciation for the Hearing Officer to conclude that the differences between the marks outweighed the similarities so as to avoid a likelihood of confusion. The verbal element of the mark outweighed the contribution of the flower device to the overall distinctiveness of the complex mark.
|Application (and where applicable, earlier mark)
- soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, deodorants, anti-perspirants, deodorising body-sprays, anti-perspirants deodorants, all for personal use (3)
- soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, cosmetic goods (3)
The Hearing Officer’s decision that the marks were not similar was made on the basis that neither party had filed evidence or written submissions. Subsequently it transpired that the Opponent, Spirig, had filed written submission in time, but through no fault of its own or of the Hearing Officer, these failed to reach the official file until after the issue of the decision.
Spirig appealed, requesting that the decision be set aside because a serious procedural irregularity had occurred in that its submissions had not been taken into account. Geoffrey Hobbs QC agreed and returned the proceeding to the Registry for determination by a different Hearing Officer. The Appointed Person declined to say anything about the merits of the case as this would simply compound the breach of procedure.
The Appointed Person concluded that the costs of the hearing would be treated as costs in the opposition, but observed that the parties may wish to consider making an ex gratia request for compensation from the Registrar for what had happened.
|Application (and where applicable, earlier mark)
- various goods and services in Classes 9 and 42
- various goods and services in Classes 9 and 42 (UK and CTMs)
Following Intel’s successful opposition at first instance under Section 5(2)(b), Mr Munroe applied to (i) adduce fresh evidence of lack of distinctiveness of Intel’s marks; and (ii) amend his ground of appeal to allege that he was deprived of an independent and impartial hearing because Intel had, at the Registry, been represented by Anna Carboni, an Appointed Person. Mr Munroe alleged that a superior appearing before a subordinate in this way was a breach of Article 6 of the European Convention on Human Rights. Geoffrey Hobbs QC dismissed both applications.
In relation to (i), Mr Hobbs concluded that the evidence could have been obtained and presented to the Hearing Officer had Mr Monroe used reasonable diligence. Further, the evidence was not needed for the purposes of the case put forward in the Registry and did not illuminate the question of distinctiveness.
In relation to (ii), Mr Hobbs noted that the Hearing Officer would not be prevented from being independent and impartial unless there was a legitimate concern on the basis of actual bias or affiliation bias. Actual bias was not alleged. As to affiliation bias, Mr Hobbs found that Hearing Officers and Appointed Persons are not in any real sense colleagues or members of the same circle as regards the administration of justice. As there was no affiliation, there could be no affiliation bias.
|Application (and where applicable, earlier mark)
- business consultancy services, marketing services (35)
- corporate identity design services, graphic art services, web design services and packaging design services (42)
- graphic arts (graphic identity), packaging design (41)
Professor Ruth Annand dismissed the appeal against the Hearing Officer’s decision to dismiss the opposition under Sections 5(2)(b) and 3(6).
IG Design’s appeal under Section 3(6) centered on the Hearing Officer’s alleged failure to appreciate the significance of an earlier French judgment which found a likelihood of confusion between the relevant marks. IG Design submitted that Enterprise’s application in light of this decision was made in bad faith. The Appointed Person held that the Hearing Office had not erred in applying the law on bad faith. There was no evidence that IG Design was active in the UK. Enterprise was merely seeking to protect its position in the UK, established in 1998. IG Design’s objection related to the Hearing Officer’s factual analysis only and thus a referral to the ECJ on the meaning of bad faith was not appropriate.
Regarding Section 5(2)(b), the Hearing Officer had applied the principle of interdependence and the Canon (Case C-39/97) factors even if he did not explicitly refer to them. The word ENTERPRISE in the mark applied for was not descriptive when used in relation to the services offered by Enterprise. The Appointed Person dismissed IG Design’s submission that, in looking to the beginning of the mark applied for, the Hearing Officer failed to compare the marks overall.
The Hearing Officer was correct in not taking into account IG Design’s evidence of actual confusion as it did not show confusion in the UK.
Acts of agents or representatives
Alien Systems & Technologies (Proprietary) Ltd v Pyrogen Technologies Sdn Bhd (Professor Ruth Annand; O-236-08; 11.08.08)
Alien applied to register the trade mark PYROGEN for fire-extinguishing apparatus in Class 9. Pyrogen opposed the application under, inter alia, Sections 3(6) and 60. In relation to Section 3(6), Pyrogen submitted that Alien had a business relationship with a third party which gave Alien the right to market and distribute PYROGEN products in South Africa. Pyrogen supplied the products to the third party which in turn supplied them to Alien. According to Pyrogen, Alien was neither explicitly nor implicitly authorised by Pyrogen to apply for registration of the PYROGEN mark. In relation to Section 60, Pyrogen submitted that Alien had a previous working relationship with Pyrogen through its wholly owned UK subsidiary. As such, Alien was acting as a representative for Pyrogen and abused this position in applying to register the PYROGEN mark.
At first instance, the Hearing Officer held that the opposition was successful in relation to both Sections 3(6) and 60. Alien appealed to the Appointed Person, Professor Ruth Annand, who dismissed the appeal on both grounds.
Looking first at Section 60, the Hearing Officer concluded that there was no doubt that a distributor fell within the description of an ‘agent or representative’ for the purpose of that Section. The Hearing Officer dismissed Alien’s submission that, even if it were found to be an ‘agent or representative’, it was of Pyrogen’s subsidiary, not Pyrogen. The Hearing Officer concluded that Alien was an agent or representative, albeit through the vehicle of its UK subsidiary, of Pyrogen. On appeal, Alien firstly submitted that, by classifying Alien as a distributor and then asking whether a distributor fell within the description ‘agent or representative’, the Hearing Officer had applied the wrong test. Alien submitted that the correct test was to enquire whether the evidence established that Alien was an agent or representative. The Appointed Person concluded that the Hearing Officer did in fact specifically ask himself whether there was evidence of Alien being an agent or representative and was entitled to conclude on the evidence that Alien’s position as distributor fell within the description ‘agent or representative’. Alien further submitted that the Hearing Officer erred in concluding that Alien was an agent or representative of Pyrogen, rather than Pyrogen’s UK subsidiary. In particular, Alien submitted that the subsidiary operated entirely independently and separately from Pyrogen. Although the Appointed Person accepted some criticisms of the Hearing Officer’s reasoning, she held that he was entitled to treat the companies as one for the purposes of Section 60.
Looking then at Section 3(6), the Hearing Officer had little difficulty in coming to the view that Alien was acting in bad faith in seeking to register PYROGEN. On appeal, Alien submitted that the Hearing Officer was wrong to ignore a witness statement given by one of Alien’s directors that he believed that Pyrogen had abandoned the UK market. In dismissing this ground of appeal, the Appointed Person confirmed that the test for bad faith did not require effect to be given to the applicant’s belief in the propriety of its own behaviour. The task of the tribunal was to enquire into the facts available to the applicant and to determine whether, in the light of those facts, the applicant’s conduct in applying for the mark met with acceptable standards of commercial behaviour.
Acquired distinctiveness within a particular locality
Application by Hull Daily Mail Publications Limited (Richard Arnold QC; O-273-08; 30.09.08)
Hull Daily Mail Publications Ltd (“H”) unsuccessfully appealed against the refusal of an application to register two trade marks in different fonts for the words THE JOURNAL in respect of “printed periodical publications; newspapers; magazines” in Class 16. Richard Arnold QC concluded that it was not possible to overcome an objection under Sections 3(1)(b), 3(1)(c) or 3(1)(d) by demonstrating that a mark applied for had acquired a distinctive character within a particular locality or region.
During the proceedings, H restricted the specification to cover “lifestyle regional magazines containing information about and relevant to the area of East Yorkshire”. H submitted that the facts at issue differed from the ECJ decision of Bovemji Verzekeringen NV v Benelux Merkenbureau (C-108/05) (in which it was held that a trade mark may be registered on the basis of acquired distinctiveness only if it is proven that the trade mark has acquired distinctive character through use throughout the territory of a member state or, in the case of Benelux, throughout the part of the territory of Benelux in which there existed a ground for refusal); in the present case the relevant class of persons consisted of consumers of “lifestyle regional magazines containing information about and relevant to the area of East Yorkshire”. Such persons would (predominantly) reside in East Yorkshire. Accordingly, H submitted that evidence of the marks becoming distinctive of its publications to residents of East Yorkshire was sufficient to demonstrate acquired distinctiveness of the mark amongst the relevant class of persons, or at least a significant proportion thereof.
The Appointed Person concluded that the law was not entirely clear from Bovemji. The ECJ was not addressing the question which arose in the present case, namely whether it was permissible to claim acquired distinctiveness amongst a geographically-restricted class of consumers if the market for the product or service in question was limited to that locality or region. It was conceivable that the ECJ might give a different answer to this question, or least a more nuanced answer, than it gave to the questions in Bovemji. In particular, it was possible that different considerations may apply in the case of a service which is normally provided to a local clientele, such as hair dressing, than to goods. Accordingly, had it not been for H’s opposition to a reference, the Appointed Person would have referred a question to the ECJ.
In the absence of guidance from the ECJ, the Appointed Person concluded that it was not possible to overcome an objection under Sections 3(1)(b), (c) or (d) by demonstrating that the mark applied for had acquired a distinctive character within a particular locality or region. The ECJ reasoning for its conclusion in Bovemji was that the mark must be free from objection throughout the Member State in question. At least in the case of goods, it did not make any difference if the market for the goods was confined to a particular locality or region for the following reasons: (i) a registered mark is a unitary national right conferring a monopoly throughout the Member State in question; it must be valid throughout that state and not just in part of it; (ii) it had to be shown that a mark had become distinctive throughout the relevant territory in order to overcome an objection under Articles 3(1)(b), 3(1)(c) or 3(1)(d) of the Directive; (iii) goods may easily circulate outside a particular locality or region, and so may their consumers; a person using a particular descriptive term for goods in one locality should not fear infringing a UK registered mark which happens to be distinctive in another locality; and (iv) the Directive does not expressly contemplate the registration of trade marks on the basis of honest concurrent use so that, for example, in the present case it was unlikely that someone who used one of the marks for similar magazines in a different region, say Cornwall, would succeed in a obtaining concurrent registration if the present application were to be accepted; the first applicant would acquire a national monopoly on the strength of purely local distinctiveness.
The Appointed Person concluded that the marks had not acquired a distinctive character through use, since H’s evidence only demonstrated use in East Yorkshire.
Evidence of genuine use
Aikman and Associates v Apple Inc (Amanda Michaels; O-306-08 and O-316-08; 10.11.08 and 26.11.08)
Amanda Michaels upheld the Hearing Officer’s decision to reject Aikman’s application to revoke the marks for non-use under Section 46(1)(b).
The marks consisted of the words TIME MACHINE and TIME/MACHINE and were registered in respect of computer software in Class 9. They were acquired by Apple on 20 October 2006. There was no evidence of use by the previous proprietor and therefore the window for proving use was unusually short, from 20 October 2006 to 6 November 2006. Nonetheless, Apple adduced evidence of use on its websites and on early starter kits sold to software developers from 23 October 2006 to 15 December 2006.
Aikman appealed, mainly on the basis that the Hearing Officer failed to read Apple’s evidence with a sufficiently critical eye and had used inference to “plug the gaps” in the evidence. Apple lodged a cross-appeal against the refusal by the Hearing Officer to admit a second witness statement out of time.
In respect of the website use, it was not clear that the web pages were live, or what was shown on them, during the relevant period. Ms Michaels therefore accepted that Apple had not established use of the marks on the website. In respect of the sales of early starter kits, Ms Michaels held that the Hearing Officer had reasonable grounds to conclude that at least some of the early starter kits would have been sold in the relevant period. Whilst the numbers may have been small, in an appropriate context there was no minimum level of sales required to show genuine use. Accordingly Aikman’s appeal was dismissed.
In respect of Apple’s cross appeal, Mr Michaels concluded that the Hearing Officer erred in his approach in refusing the admission of new evidence out of time solely on the basis that no satisfactory explanation was given for the delay. The Hearing Officer should have followed the criteria as set out in Al Basssam trade mark (O-467-02) and considered the potential materiality of the new evidence. In light of the dismissal of Aikman’s appeal however, it was not necessary to admit the new evidence.
Amanda Michaels awarded costs of the appeal to Apple but reduced the maximum amount she could award from £2,100 to £1,600 in light of the website issue on which Aikman succeeded.
G W Padley Vegetables Limited (previously Oriental Frozen Foods Limited) v Societe Nationale Des Chemins De Fer Francais SNCF (Anna Carboni; O-299/08; 31.10.08)
SNCF registered the mark ORIENT EXPRESS for a variety of goods in Classes 29, 30, 21, 32, 33, and 34. GW Padley applied to revoke the mark for non-use under sections 46(1)(a) and (b).
The Hearing Officer partly allowed GW Padley’s revocation action, finding that the specification of goods should be cut down and that GW Padley should be awarded £2,000 costs. SNCF appealed against the costs award and the revocation of the registration as regards edible oils in Class 29 and whisky in Class 33.
Anna Carboni upheld the Hearing Officer’s decision to revoke the registration as regards edible oils, finding no error of principle in the Hearing Officer’s conclusion that the sale of goods under the “Orient Express Gift Boutique” name was not trade mark use because the name did not operate as a badge of origin and so use of the mark within the name did not amount to use of the registered mark.
As regards the registration for whisky, Ms Carboni found sufficient uncertainty in the Hearing Officer’s approach to warrant fresh analysis. SNCF sold whisky in cases bearing the following logo:
SCNF submitted that (i) the Hearing Officer wrongly failed to consider whether the mark ORIENT EXPRESS was used whenever the logo was used; and (ii) in the alternative, if the logo as a whole had to be compared with the registered mark (so that Section 46(2) applied), the Hearing Officer made errors of principle in his approach.
Dealing with (ii) first, although she found one of SCNF’s concerns justified, the Appointed Person concurred with the outcome of the Hearing Officer’s analysis under Section 46(2). It would defeat the overall objective of the non-use provisions if a small amount of use of the logo was sufficient to maintain a registration for the words ORIENT EXPRESS alone.
In relation to (i), the Appointed Person did not agree with the submission that the words ORIENT EXPRESS would be perceived as being used independently within the logo. The Hearing Office was correct to apply Section 46(2).
Ms Carboni set aside the Hearing Officer’s costs award, finding that the Hearing Officer was wrong to have treated GW Padley as being entitled to a costs award as if it was the overall winner; SNCF had persuaded the Hearing Officer that several other descriptions of goods should be maintained in the specification. Ms Carboni substituted the Hearing Officer’s award for an award of £800.
Decisions of the ECJ and CFI
|Application (and where applicable, earlier mark)
- wind turbines and their components, in particular the get-up of nacelles (7)
The ECJ upheld the CFI’s decision to dismiss the appeal against the BoA’s decision that the 3D mark applied for was devoid of distinctive character under Article 7(1)(b).
The Applicant submitted that the BoA and the CFI had not sufficiently stated the reasons upon which their decisions had been based under Article 73. This was rejected by the ECJ which found that the BoA had provided complete and precise reasoning and, accordingly, the CFI had been correct in not considering whether the BoA’s decision was based on a lack of reasoning.
The ECJ also rejected the Applicant’s second submission that the CFI’s assessment of distinctiveness could only be based on a distortion of the facts presented to it. The appreciation of the facts by the CFI was not a question of law that could be submitted to the ECJ.
|Application (and where applicable, earlier mark)
- industrial oils and greases; lubricants; fuels (including motor spirit) (4)
- motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles) (7)
- repair, especially repair and maintenance of motors including breakdown service (motor repair in the course of breakdown service) (37)
The CFI upheld the BoA’s decision that the mark was devoid of distinctiveness, was descriptive and had not acquired distinctiveness through use under Articles 7(1)(b), (c) and 7(2).
TDI is an acronym used in the motor car industry to mean “turbo diesel injection” or “turbo direct injection”. The CFI agreed with the BoA’s decision that the mark was generally descriptive, to the average consumer, of the characteristics of engines using “turbo direct injection” or “turbo diesel injection” and that its use was not limited to land vehicles. The fact that TDI had two different meanings did not assist the Applicant. Equally the fact that the mark was an acronym made no difference to it being descriptive.
For similar reasons the court found that the mark had no distinctive character and had not acquired distinctiveness through use.
|Application (and where applicable, earlier mark)
- various goods and services in Classes 16, 21, 25, 29, 30, 35, 36 and 42
- registered in the Benelux, Ireland, Denmark, France, Portugal, Spain and the UK in relation to goods and services in Classes 21, 29, 30 and 42
The CFI dismissed the appeal, upholding the BoA’s decision that there was no likelihood of confusion under Article 8(1)(b) in relation to goods and services applied for in Classes 21, 29, 30 and 42.
The CFI held that the figurative elements of the mark applied for were negligible; the relevant public (consumers from the member states in which the earlier marks enjoyed protection) would focus on the verbal elements, PIAZZA del SOLE.
Visually, the marks differed due to the structure of the marks and the length of the verbal elements. This was despite the fact that the conflicting marks all contained the verbal element PIAZZA.
Even though there were certain phonetic similarities, the overall phonetic differences were greater due to the different structures and rhythmic sounds of the conflicting marks.
The element ‘del SOLE’ in conjunction with PIAZZA (‘sun square’) created a conceptually different meaning to the meaning of the earlier marks PIAZZA (‘square’) and PIAZZA D’ORO (‘square of gold’).
The CFI held that the BoA had not committed an error in concluding that there was no likelihood of confusion.
Bayern Innovativ – Bayerische Gesellschaft für Innovation und Wissenstransfer mbH v Life Sciences Partners Perstock NV; OHIM (CFI (Fourth Chamber); T-413/07; 11.02.09)
Bayern applied to register a complex mark (below left) for various goods and services including advertising and business services in Class 35 and insurance and financial services in Class 36. Life Sciences Partners opposed the mark under Article 8(1)(b) on the basis of its earlier CTM (below right) registered for various services in Classes 35 and 36.
Mark applied for > > Earlier mark
The BoA concluded that there was a likelihood of confusion between the two marks under Article 8(1)(b). The CFI agreed with the BoA’s decision.
Both the word and figurative elements of the conflicting signs had an equivalent power of attraction and therefore the public (made up of English speaking professionals searching for advice in relation to their business activities) would remember them as elements by which to identify the marks. The BoA was correct to find a low degree of visual similarity between the marks, limited to the similarity of the word elements and the helicoidal shape resembling the DNA chain.
Phonetically, the marks at issue were similar; the word element ‘partners’ was secondary and one which was probably omitted when the relevant public pronounced the earlier mark.
The marks were also conceptually similar, both because of their word elements (which referred to biotechnology) and because of some of their figurative elements (the spiral chains were associated with DNA chains and evoked biotechnology).
When considering the likelihood of confusion, the CFI noted that where the relevant goods are sold only by being ordered orally, the phonetic aspect will have a greater significance than the visual aspects. The CFI concluded that services at issue were usually referred to orally.
The BoA was entitled to find that the word element of the earlier mark was of normal distinctiveness in relation to the relevant services. This finding was not undermined by Bayern’s submission that to allow the opposition would be equivalent to denying traders the right to use the expression ‘life science’ in respect of the relevant services. Article 12(b) (which prohibits a proprietor of a CTM from preventing third parties from using certain elements of its mark in manner that is descriptive) was not applicable here; no such descriptive use was being made.
The CFI concluded that, given the identical nature of the services at issue and the similarities between the relevant marks, there was a likelihood of confusion between the two marks. The higher level of attention of the relevant public was not sufficient to rule out this risk.
Aceites del Sur-Coosur SA v Koipe Corporación SL (AG Mazák for the ECJ; C-498/07; 03.02.09)
Aceites del Sur applied to register the figurative mark (below left) for edible oils and fats in Class 29. Koipe opposed the application on the basis of a likelihood of confusion with a number of earlier Spanish figurative marks and a CTM for olive oil in Class 29 (below right).
Application > > Earlier mark
The Opposition Division and the BoA rejected the opposition. However, the CFI upheld the appeal brought by Koipe and found that there was a likelihood of confusion between the two marks under Article 8(1)(b). Advocate General Mazák recommended that the ECJ allow the appeal and set aside the decision of the CFI.
The AG considered that the real crux of the present appeal lay in the allegedly incorrect interpretation and application of Article 8(1)(b) (in particular, with respect to the visual differences between the word elements of the brand names in question) by the CFI. The AG opined that in carrying out a global assessment of risk of confusion between the marks, the CFI did not adequately compare the actual content of the word elements of the brand names ‘Carbonell’ and ‘La Española’. In particular, the AG concluded that the CFI had only considered the ‘La Española’ element and had carried out a one-sided and therefore legally incorrect comparison between the two brand names. The AG considered that this omission had led to an error of law as regards the interpretation and application of Article 8(1)(b). Furthermore, the AG considered that the CFI had not applied the correct standard of ‘a reasonably well-informed and reasonably observant and circumspect’ average consumer in the context of a global appreciation assessment, but instead had applied a standard which more closely resembled one of an excessively negligent consumer.
The AG considered a number of other grounds of appeal but found that they were unsustainable.
Smell-alike – Advocate General’s opinion
L’Oréal SA & Ors v Bellure NV & Ors (AG Mengozzi for the ECJ; C-487/07; 10.02.09)
L’Oréal is a manufacturer of high quality perfumes and other beauty products aimed at the luxury end of the perfume and cosmetics market. The Defendants imported, distributed and sold a range of perfumes which comprised copies of some of L’Oréal’s products; these copies were not counterfeit in the normal sense, but were ‘smell-alikes’ and were marketed in packaging which L’Oréal alleged took advantage of its products’ names, packaging and brand image.
At first instance the High Court held that L’Oréal had established trade mark infringement under Article 5 in relation to some (but not all) of the packaging and bottle shapes and in relation to the use of certain word marks on comparison lists (the lists which indicated which of the Defendants’ range of products smelled like each of the premium brands). L’Oréal’s passing off and unfair competition claims were dismissed. Both L’Oréal and the Defendants appealed the decision. The CoA dismissed L’Oreal’s cross-appeal, stayed the Defendants’ appeal and referred five questions to the ECJ. AG Mengozzi delivered his opinion as follows.
The first four questions referred related to the use by an advertiser of another person’s trade mark in comparative advertising, consisting, in particular, of comparison lists such as those at issue in the present case, namely, the use of L’Oreal’s signs to identify L’Oreal’s goods in comparison lists.
The first two questions concerned the interpretation of Article 5(1) of Directive 89/104. The AG looked at whether the reasoning of the ECJ in O2 v Hutchinson (C-533/06) in relation to Article 5(1)(b) also applied to Article 5(1)(a). The AG answered the first two questions by stating that Article 5(1)(a) of Directive 89/104 must be interpreted as meaning that the owner of a trade mark registered for certain goods and services cannot prohibit use by a third party in comparative advertising of an identical sign for identical goods or services where such use does not affect or is not liable to affect the mark’s essential function of providing a guarantee of origin or any of the mark’s other functions. The AG said that this is the case even if such use plays a significant role in the promotion of the advertiser’s goods and, in particular, permits that advertiser to take unfair advantage of the mark’s reputation.
By its third question, the CoA asked the ECJ to interpret the expression ‘take unfair advantage of’ used in Article 3a(1)(g) of Directive 84/450. The AG answered that it must be interpreted as meaning that it is not possible to conclude, on the basis of the simple fact that a trader in a comparison list compares his product with a product identified by a well‑known mark, that the advertiser takes unfair advantage of that mark’s reputation. The AG continued that:
- if, where such an advantage exists, it can be presumed that the public at whom the advertising is directed is caused to associate the proprietor of the well known mark with the advertiser,
- in such a way that the public might associate by way of extension the reputation of the former’s products with those of the latter,
then it is for the national court to determine whether that advantage is unfair in the light of all the relevant individual circumstances of the case.
In relation to the fourth question, concerning the interpretation of Article 3a(1)(h) of Directive 84/450, the AG stated that it must be interpreted as meaning that:
- it prohibits an advertisement which alludes, explicitly or by implication, bearing in mind its economic context, to the fact that the advertiser’s product has been manufactured in such a way as to imitate or reproduce a product protected by another person’s mark, even where only one or more of the essential characteristics of that product is alluded to; and
- consequently, it does not prohibit an advertisement solely on the ground that it states that the advertiser’s product has an essential characteristic (such as the smell) that is identical with that of a product bearing a protected trade mark, including well‑known marks.
The fifth question concerned the interpretation of Article 5(2) of Directive 89/104, and was raised in connection with the part of the main proceedings that were concerned not with the comparison lists but with the forms of packaging (boxes and bottles) of certain perfumes marketed by the Defendants. The AG stated that the concept of unfair advantage focussed on the benefit to the later mark used by the third party rather than on the harm to the well-known mark. The AG concluded that Article 5(2) must be interpreted as meaning that:
- where a trader uses a sign that is similar to another person’s mark and derives an advantage from this originating in that similarity and in the consequential association of that sign with the positive qualities of that mark, such use may be prohibited if:
- it is without due cause, which cannot be the advantage itself; or,
- where due cause is shown, if it is apparent, taking such due cause and all the relevant circumstances of the case into account, that that advantage is unfair;
- that prohibition cannot be precluded on account of the fact that there is no effect (or likelihood of any effect) on the mark’s essential function of providing a guarantee of origin, no effect (or likelihood of any effect) on the mark’s distinctive character or reputation and such use has no impact on the sales of the products identified by the mark or on the return on the investments made in connection with that mark.
Protected graphical indications
Bavaria NV and Bavaria Italia Srl v Bayerischer Brauerbund eV (AG Mazák for the ECJ; C-343/07; 18.12.08)
Bayerischer Brauerbund eV (“BB”), a German association and proprietor of the protected geographical indication (“PGI”) ‘Bayerisches Bier’, brought proceedings in Italy against Bavaria NV and Bavaria Italia Srl (together “Bavaria”), a Dutch beer producer operating on the international market. BB brought the proceedings to prevent Bavaria using in Italy international trade marks containing the word ‘Bavaria’ as the core of those marks on the grounds that (i) the marks conflicted for the purposes of Articles 13 and 14 of Regulation No 2081/92 with the PGI ‘Bayerisches Bier’; and (ii) that they contained a geographical indication (the word ‘Bavaria’) which was generic and misleading as to the geographical origin of the beer, as the beer was Dutch.
‘Bayerisches Bier’ was registered as a PGI by Regulation No 1347/2001 using the now abolished simplified registration procedure under Article 17 of Regulation No 2081/92. The third recital in the preamble to Regulation No 1347/2001 refered to ‘Bavaria’ existing as a valid trade mark and stated that ‘Bayerisches Bier’ and the mark ‘Bavaria’ were not liable to mislead the public as to the true identity of the product (i.e., they were not in the situation referred to in Article 14(3) of Regulation No 2081/92). Further, the fourth recital stated that the use of the ‘Bavaria’ mark may continue as long as the conditions in Article 14(2) of the same Regulation were fulfilled.
BB’s application was upheld by the District Court in Turin. Bavaria appealed to the Court of Appeal in Turin which referred several questions for a preliminary ruling to establish whether the name ‘Bayerisches Bier’ was, having regard to the formal and substantive requirements laid down in Regulation No 2081/92, validly registered under Regulation No 1347/2001 as a PGI and, if that was the case, to what extent that PGI affected the validity or usability of pre-existing trade marks used for beer in which the name ‘Bavaria’ appeared.
By its first question, the referring court called into question the validity of Regulation No 1347/2001. The AG concluded that none of the questions raised by the referring court concerning the validity of this Regulation revealed any factors which affected the validity of the Regulation.
By its second question, the referring court asked what effects the registration of ‘Bayerisches Bier’ as a PGI may have on pre-existing trade marks concerning the word ‘Bavaria’. The AG held that the finding by the Community legislature, referred to in the preamble to Regulation No 1347/2001, to the effect that the condition of registration laid down in Article 14(3) was satisfied, could not amount to a binding determination that the PGI ‘Bayerisches Bier’ may coexist with trade marks containing the word ‘Bavaria’. The principle of coexistence was enshrined in Article 14(2) of Regulation No 2081/92. Accordingly, the registration of ‘Bayerisches Bier’ as a PGI did not affect the validity or usability of pre-existing trade marks of third parties containing the word ‘Bavaria’, provided that those marks were registered in good faith and were not liable to be invalid or revoked on the basis of the Trade Marks Directive. The AG held that the fulfilment or otherwise of these conditions was for the national court to determine.
Counterfeit goods and trade mark infringement
Schenker SIA v Valsts ienemumu dienests (ECJ (Second Chamber); C-93/08; 12.02.09)
Under Regulation No 1383/2003 (the ‘Regulation’), Riga Customs officers detained a consignment of goods bearing the mark NOKIA which they suspected were counterfeit. Schenker was the customs agent and Rovens the consignee.
In accordance with the simplified procedure set out in Article 11, samples were sent to Nokia Corp, who confirmed that the goods were counterfeit. The day afterwards, Nokia and Rovens reached agreement relating to the destruction of the goods at Rovens’ expense.
Schenker, as the declarant on the customs form, was subsequently charged with an offence of infringement under domestic law, based solely on Nokia’s opinion that the goods were infringements and was fined LVL 500.
The Supreme Court of the Republic of Latvia referred the following question to the ECJ: Did the initiation, with the agreement of the IP right-holder and of the importer, of the simplified procedure laid down in Article 11 prevent the competent national authorities from imposing a penalty under Article 18 on the parties responsible for importing the goods into the Community customs territory? The ECJ held that the answer was ‘no’.
Schenker’s main submissions were: (1) that the initiation of the simplified procedure constituted a penalty in itself; and (2) a unilateral statement from Nokia did not have sufficient probative value to permit the finding by the customs authorities that the trade mark had been infringed within the meaning of the Regulation.
The ECJ pointed out that initiation of the simplified procedure in Member States was optional. In contrast, a Member State must exercise its power in accordance with Article 18 to impose a penalty which is ‘effective, proportionate and dissuasive’ in respect of violations of the Regulation. Consequently, the ECJ took the view that the destruction of goods following an optional procedure could not be considered as the penalty imposed by a national authority applying the system of penalties a Member State is required to implement under Article 18. This approach accorded with the aim of the Regulation which was to prevent the introduction of goods which infringed intellectual property rights into Community customs territory.
In response to Schenker’s argument regarding the level of proof necessary to determine whether infringement had arisen, the ECJ applied Article 10 and confirmed that the domestic law of the Member State was applicable. The fact that the authorities relied solely on Nokia’s infringement analysis was potentially legitimate in that Member State.
Meaning of “possession, custody or control”
R v Rukhsana Kousar* (EWCA  Crim 139; Toulson LJ, McCombe J, Clarke J; 21.01.09)
The CoA allowed the appeal against the conviction of unauthorised use of a trade mark contrary to Section 92(1)(c), holding that the mere fact that the Appellant’s spouse kept counterfeit goods in the family home was not sufficient to show the required “possession, custody or control in the course of business”.
The Appellant’s husband was a market trader. When Trading Standard Officers searched their home, large quantities of counterfeit items were found in the loft and in the husband’s van parked outside. The husband was convicted of unauthorised use of a trade mark. The case against the Appellant was not that she had aided and abetted her husband’s possession but that she was jointly in possession of the items. At trial, the Judge rejected the submission by the Appellant’s counsel that there was no evidence on which a jury could infer either a joint enterprise in the husband’s business or possession of the goods in the van. This formed the basis of the appeal.
The CoA held that the ability to control the goods (in the sense of the ability to demand that property be removed or the ability to remove it oneself) was insufficient. Nor was one spouse really in possession of the other’s personal property. The CoA drew parallels with drug offence, where a specific offence exists for permitting premises to be used for certain activities, and noted that there was no equivalent for trade mark offences. Finally, the CoA held that even if this analysis of control was incorrect the Crown could not establish that the Appellant was involved as a business participant. The appeal was therefore allowed.
Infopaq International A/S v Danske Dagblades Forening (AG Trstenjak for the ECJ; C-5/08; 12.02.09) (Decision not yet in English)
The Advocate General gave her Opinion on 13 questions that had been referred to the ECJ by the Danish Supreme Court on the interpretation of Articles 2, 5(1) and 5(5) of Directive 2001/29/EC (the “InfoSoc Directive”) concerning the making of temporary copies.
Infopaq compiled summaries of articles from the Danish daily press and emailed those summaries to its clients. The articles were selected by a data acquisition process which involved scanning the publications, converting the scanned image file into a text file, searching that text file for pre-defined terms (e.g. ‘TDC’) and generating a record that was stored and printed showing the publication, the percentage relevance, and an extract including the search term with the five preceding and subsequent words (“Extract”). For example:
“4 November 2005 – Dagbladet Arbejderen, page 3:
TDC: 73% ‘next assignment of the telecoms group TDC, allegedly to be repurchased’”
The Danish Daily Newspaper Publishers Association (DDF) is the professional body of Danish daily papers dealing with its members’ copyright issues. DDF informed Infopaq that it would need the agreement of the owners of copyright in the Extracts to carry out its functions.
Infopaq disagreed, and brought an action for a declaration that it had the right to carry out its data acquisition process without the need for DDF’s or its members’ consent. The action failed at first instance. On appeal, the Supreme Court made a reference to the ECJ regarding the InfoSoc Directive.
The 13 questions concerned: whether the storing and subsequent printing of the Extract constituted acts of reproduction which were protected (Article 2 InfoSoc Directive); the meaning of the word ‘transient’ for temporary acts of reproduction; the meaning of the phrases ‘integral and essential part of a technological process’, ‘lawful use’ and ‘independent economic significance’ in that context (all Article 5(1)); and the interpretation of Article 5(5) of the InfoSoc Directive.
The AG considered that:
- The storing and subsequent printing out of the Extract constituted acts of reproduction.
- For a reproduction to be ‘transient’, the essential feature was that it lasted only for a very short time, although all circumstances must be taken into account. Where the reproduction was executed by the processing of a text file on the basis of an image file, and both files were deleted, in circumstances such as the present case, this reproduction would be transient. It was for the national court to determine whether the reproduction was transient if part of the reproduction containing one or more extracts of 11 words was stored. An act of reproduction could not be transient if, in circumstances such as the present, that part of the reproduction was printed out.
- The stage of the technological process at which temporary acts of reproduction took place was not relevant to whether they constituted ‘an integral and essential part of a technological process’. If the temporary acts of reproduction consisted of manual scanning of entire newspaper articles whereby the latter were transformed from a printed to a digital medium, those acts constituted ‘an integral and essential part of a technological process’. In the present case, the printing out of an extract was not a temporary act of reproduction at all and so it was irrelevant whether that act was an ‘integral and essential part’.
- The lawful use of a work covered any form of use of a work for which the copyright holder’s consent was not necessary or which he had expressly authorised; where use of the work was by reproduction, the copyright holder’s consent was not necessary if the reproduction was within one of the exceptions set out in Articles 5(2) and (3) of the InfoSoc Directive (provided that the Member State had transposed the exception and the reproduction conformed with Article 5(5) of that Directive). The scanning by a commercial business of entire newspaper articles, the subsequent processing of the reproduction and the storing of the reproduction containing one or more text extracts of 11 words, in circumstances such as those of the present case, did not constitute lawful uses of the work, because those text extracts were printed and used in the context of the writing of summaries, when the right holder had not authorised that act.
- In assessing whether temporary acts of reproduction have an independent economic significance it was necessary to establish if an economic advantage flowed directly from such acts. Any advantage a user gained with regard to efficiency from temporary acts of reproduction in circumstances such as the present case could not be taken into account in assessing whether such acts have an independent economic significance.
- The scanning of entire newspaper articles by a business, subsequent processing of the reproduction and the storing and printing out of part of the reproduction, consisting of one or more text extracts of 11 words, in circumstances such as the present case, could be regarded as constituting ‘certain special cases which [did] not conflict with a normal exploitation [of the newspaper articles] and [were] not unreasonably prejudicial to the legitimate interests of the right holder’.
Concepts of ‘extraction’ and ‘substantial part’
Apis-Hristovich EOOD v Lakorda AD (ECJ (Fourth Chamber); C‑545/07; 05.03.09)
The ECJ has given guidance on the concepts of an extraction and a substantial part for the purpose of Article 7 of Directive 96/9 (the Database Directive).
Apis brought proceedings in the Sofia City Court for the alleged unlawful extraction and re-utilisation by Lakorda of substantial parts of its databases containing Bulgarian legislation and case law. The Bulgarian Court stayed the proceedings and referred six questions to the ECJ for a preliminary ruling.
The ECJ dealt with the first, fourth and fifth questions together, as they all concerned the concept of extraction.
In its first question, the referring court sought an interpretation of the concepts of ‘permanent’ and ‘temporary’ transfer, and queried the time when extraction was deemed to take place for a database accessible by electronic means and whether the fact that the content extracted from a database was used to set up another, modified, database influenced the assessment regarding the existence of such an extraction.
The fourth question concerned the relevance, in the context of the assessment of the existence of extraction from a database accessible by electronic means, first, of the fact that the physical and technical characteristics of that database were to be found in the database of the alleged infringer and, second, of the difference between the structural organisation of the two databases concerned.
In its fifth question, the referring court asked whether the software programme used to manage a database, but which was not part of the database itself, affected the assessment of whether or not there had been extraction.
The ECJ held that the delimitation of the concepts of ‘permanent’ and ‘temporary’ transfer was based on the criterion of the length of time during which materials extracted from a protected database were stored in a medium other than that database. The time at which there was an extraction from a protected database, accessible electronically, was when the materials which were the subject of the act of transfer were stored in a medium other than that database. The concept of extraction was independent of the objective pursued by the perpetrator of the act at issue, of any modifications he may make to the contents of the materials thus transferred, and of any differences in the structural organisation of the databases concerned.
The fact that the physical and technical characteristics present in the contents of a protected database also appear in the contents of a database made by another person may be interpreted as evidence of extraction, unless that coincidence could be explained by factors other than a transfer between the two databases concerned. The fact that materials obtained by the maker of a database from sources not accessible to the public also appeared in the second database was not sufficient, in itself, to prove the existence of such extraction but could constitute circumstantial evidence thereof.
The nature of the computer program used to manage two electronic databases was not a factor in assessing the existence of extraction.
In its second question, the referring court asked in what way the concept of extraction of a ‘substantial part’, evaluated quantitatively, of the contents of a database was to be interpreted where the databases concerned were separate modules, constituting independent commercial products, within a body of materials.
The third question queried whether the fact that some of the materials allegedly extracted from a database were obtained by the database maker from a source not freely accessible to the public had an influence on the interpretation of the concept of a ‘substantial part’, evaluated qualitatively, of the contents of a database.
By its sixth question, the referring court asked in what way the concept of ‘a substantial part of the contents of a database’ was to be interpreted where that database contained official measures accessible to the public, such as legislative measures or individual acts of the executive branch of the State, their official translations, and case-law.
The ECJ held that Article 7 must be interpreted as meaning that, where there was a body of materials composed of separate modules, the volume of the materials allegedly extracted and/or re-utilised from one of those modules must, in order to assess whether there has been extraction and/or re-utilisation of a substantial part, evaluated quantitatively, of the contents of a database, be compared with the total contents of that module, if the latter constitutes, in itself, a database which fulfils the conditions for protection. Otherwise, and in so far as the body of materials constitutes a protected database, the comparison must be made between the volume of the materials allegedly extracted and/or re-utilised from the various modules of that database and its total contents.
The fact that the materials allegedly extracted and/or re‑utilised from a protected database protected were obtained by the maker of that database from sources not accessible to the public may, according to the amount of human, technical and/or financial resources deployed by the maker to collect the materials at issue from those sources, affect the classification of those materials as a substantial part, evaluated qualitatively, of the contents of the database concerned.
The fact that part of the materials contained in a database were official and accessible to the public does not relieve the national court of an obligation to verify whether the materials allegedly extracted and/or re-utilised from that database constituted a substantial part, evaluated quantitatively, of its contents or, as the case may be, whether they constituted a substantial part, evaluated qualitatively, of the database inasmuch as they represented, in terms of the obtaining, verification and presentation thereof, a substantial human, technical or financial investment.
Katharine Stephens, Zoe Fuller and Alice Sculthorpe
Reporter’s note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Adrian Howes, Claire Chapman, Christine Yiu, Emilia Linde, Emily Forsyth, Gina Brueton, Nick Aries, Nick Boydell, Priyan Meewella, Taliah Davis and Victoria Gardner.
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ECJ and CFI decisions can be found at and the reported cases marked * can be found at:
The Appointed Persons decisions can be found at http://www.ipo.gov.uk/types/tm/t-os/t-find/t-challenge-decision-results.htm and the reported cases marked * can be found at http://www.bailii.org/databases.html#ew