November 2009

01 November 2009

Katharine Stephens, Zoe Fuller, Emily Peters & Alice Sculthorpe

This month we report on two decisions on res judicata:  in Ferrero v OHIM, the CFI stated that invalidity proceedings were not estopped by the preceding opposition proceedings; whereas in Evans v Focal Point Fires, High Court held that the defence was estopped in a passing off action by the preceding successful application to invalidate the defendant's trade mark.  We also report on PAGO v Tirolmilch in which the ECJ held that Austria is a substantial part of the Community and the latest Budweiser case in which the Court of Appeal has referred questions on acquiescence to the ECJ.<top> 

To be taken to your case of interest within the table please click on the below:

  • Aldi Einkauf GmbH & Co. OHG v OHIM
  • CureVac GmbH v OHIM
  • Peek & Cloppenburg v OHIM
  • Deutsche Rockwool Mineralwoll GmbH & Co. OHG v OHIM
  • X-Technology R & D Swiss GmbH  v OHIM
  • Juwel Aquarium GmbH & Co. KG v OHIM
  • BCS SpA v OHIM; Deere & Company
  • Ferrero SpA v OHIM
  • PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH
  • Makro Zelfbedieningsgroothandel CV & ots v Diesel SpA
  • Daimler AG v Sany Group Co. Limited
  • Budejovicky Budvar Narodni Podnik (“BB”) v Anheuser-Busch Inc (“AB”)*
  • Questions Referred to ECJ in L’Oreal v eBay
  • Pocket Kings Ltd v (1) Safenames Ltd (2) Commonwealth of Kentucky*
  • Gary Patchett & Karen Patchett v Swimming Pool & Allied Trades Association
  • Alan Grisbrook v Mirror Group Newspapers (“MGN”) & Ots*

  • Ref no.   CFI
    Aldi Einkauf GmbH & Co. OHG v OHIM; Goya Importaciones y Distribuciones, SL
    Application (and where applicable, earlier mark)  

    - leather goods (18)
    - clothing, footwear, headgear (25)

    - leather goods (18)
    - general clothing, footwear, T-shirts, pullovers, trainers (25)


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

    The identity or high similarity of the goods at issue was not in dispute. Accordingly, a low level of similarity of the relevant marks would suffice for a finding of a likelihood of confusion.

    The BoA was correct to hold that there was certain visual and phonetic similarities between the relevant marks based on the dominate element ‘Living’ in both marks.

    The CFI concluded that there was a likelihood of confusion between the two marks which could not be called into question by the relatively weak distinctive character of the ‘Living’ element.


    Ref no.   CFI
    CureVac GmbH v OHIM; Qiagen GmbH

    Application (and where applicable, earlier mark)  

    - chemicals and active biological substances used in industry and science (1)
    - pharmaceutical, veterinary and sanitary preparations (5)
    - chemicals used in industry and science (1)
    - pharmaceutical and veterinary preparations (5)


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

    The CFI confirmed the BoA’s finding that the goods at issue were in part similar and in part identical.

    The CFI found that the signs were visually dissimilar; the last five letters of the signs offset any similarity owing to the identity of the first three letters. The signs were also pronounced very differently and were therefore phonetically dissimilar. Further, any conceptual similarity resulting from the common component ‘RNA’ was counteracted by the different meanings of the respective endings.

    The degree of identity/similarity of the goods was offset by the weak degree of similarity of the signs and the weak distinctive, even descriptive, character of the abbreviation ‘RNA’. The BoA was correct to hold that there was no likelihood of confusion.


    Ref no.   CFI
    Peek & Cloppenburg v OHIM; Redfil, SL

    Application (and where applicable, earlier mark)  

    - bags and rucksacks (18)
    - sport footwear and clothing (25)
    - golf bags and accessories (28)
    - goods falling within Classes 3, 6, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 27 and 28
    (CTM and various national marks)


    The CFI annulled the decision of the BoA that there was no likelihood of confusion between the mark applied for and the earlier mark under Art 8(1)(b).

    It was not in dispute that the goods in question were identical.

    The CFI found that there was an average degree of visual similarity between the signs. The difference owing to the presence of the letter ‘y’ in the earlier mark was not sufficiently significant to put that similarity in question. The signs were phonetically similar when pronounced in French. Conceptually the signs were dissimilar. The word ‘Agile’ had a clear meaning in several Community languages whereas the earlier mark would be understood to be referring to a family or place name. The CFI held that, with regard at least to French speakers, the signs were similar overall, but to a low degree.

    The fact that the goods in question were identical was sufficient to offset the low degree of similarity between the signs. The BoA therefore was incorrect to hold that there was no likelihood of confusion between the marks.


    Ref no.   T-146/08
    Deutsche Rockwool Mineralwoll GmbH & Co. OHG v OHIM; Redrock Construction s.r.o.

    Application (and where applicable, earlier mark)  

    - industrial chemicals (1, 2, 17, 19, 36, 37)


    - industrial chemicals (1, 17, 19, 37, 42)


    The CFI dismissed the appeal from the BoA’s decision to allow the registration under Art 8(1)(b).

    The CFI found that there was no risk of confusion between the two marks, the earlier mark not having sufficient distinctive character.


    Ref no.   CFI
    X-Technology R & D Swiss GmbH  v OHIM; Ipko-Amcor BV

    Application (and where applicable, earlier mark)  

    - clothing, underwear and sports clothing (25)

    - tights for women, underwear and socks for men, women and children (25)


    The CFI dismissed the appeal from the BoA’s decision to reject the application under Art 8(1)(b).

    The CFI found that the goods were identical, the marks were phonetically and conceptually similar and that there was therefore a risk of confusion.


    Ref no.   CFI
    Juwel Aquarium GmbH & Co. KG v OHIM; Christian Potschak

    Application (and where applicable, earlier mark)  

    - various aquarium related products, including interiors and lighting (11, 16, 20)


    The appeal from the BoA’s decision to reject the application was dismissed under Art 7(1)(c).

    The CFI found that the mark was purely descriptive of the goods concerned.


     Colour marks and acquired distinctive character

    BCS SpA v OHIM; Deere & Company (CFI (Eighth Chamber) T-137/08; 28.10.09)

    The CFI dismissed the appeal from the BoA’s refusal to invalidate the colour mark.

    Deere & Co successfully applied to register the mark reproduced below (left) as a CTM for goods is Classes 7 (attached, pushed or self-propelled agricultural and forestry machines) and 12 (self propelled agricultural and forestry machines in particular farm tractors, small tractors, land tractors and trailers).  The arrangement was described as being “green for the vehicle body and yellow for the wheels”.  The picture reproduced below (right) was attached to the application.


    BCS applied to invalidate the mark on the basis of Article 52(1)(a) in conjunction with Article 7(1)(b) (on the basis that the mark had not acquired distinctive character under Article 7(3)) and Article 53(1)(c) in conjunction with Article 8(4).  The Cancellation Division rejected the application on both grounds and the BoA dismissed BCS’s appeal.

    On appeal to the CFI, BCS’s submission that the BoA failed to assess whether the colours green and yellow had been used as a trade mark by Deere & Co was rejected.  The BoA had taken into account statements from professional associations according to which the combination of the green and yellow colours referred to agricultural machines manufactured by Deere & Co and had been used consistently in the EU for a considerable time prior to the CTM application.  The CFI concluded that the colour combination was not purely stylistic, but in fact enabled the public to identify the commercial origin of good bearing that colour combination.

    On the issue of evidence to support the acquired distinctive character, the CFI noted the following:

    • Although it must be proved that the disputed mark has acquired distinctive character throughout the Community, the same type of evidence does not have to be provided for each country.  Therefore, the fact that (i) an opinion poll was only commissioned in Germany; and (ii) turnover figures in Finland and Ireland had not been supplied, did not automatically give rise to an annulment of the contested decision.  It was not absolutely necessary to carry out an opinion poll to show acquired distinctive character; other evidence could achieve this purpose. Furthermore, information on market share and sales volume had been supplied in respect of Finland and Ireland.

    • In a market such as the one in question (constituting high priced industrial goods where the purchaser is likely to compare and inspect competing models) it was not necessary for a mark to achieve a large market share.  It was sufficient to prove that the mark had strong, long-lasting presence on the market.

    • Statements from associates of manufactures and/or distributors could be taken into account as well as those representing customers.

    The submission under Article 7(3) was therefore rejected. 

    The CFI also rejected BCS’s submission under Articles 8(4).  The standard of proof required of BCS under Article 8(4) was the same as that required by Deere & Co under Article 7(3).  However, BCS’s evidence showed that it had not used, at least from 1973 to 1982, the combination of the colours green and yellow on its goods in Italy. Although it would have been possible for BCS to acquire a non-registered right in its sign through the use from 1983 to 1996, it did not do so: The BoA found that BCS had not used the combination of the colours green and yellow in a consistent and uniform manner, rather it used a number of shades of green and yellow as well as a combination of the colours green and white.  Furthermore, the BoA was fully entitled to regard the evidential value of declarations made by BCS’s former employees as questionable and the market survey as carrying less weight than the one conducted by Deere & Co.


    Res Judicata

    Ferrero SpA v OHIM; Tirol Milch reg.Gen.mbH Innsbruck (CFI (Second Chamber); T-140/08; 14.10.09)

    The CFI dismissed the appeal from the BoA’s refusal to grant a declaration of invalidity under Articles 53(1)(a), 8(1)(b) and 8(5), despite the CFI concluding that the BoA had erred in concluding that findings made in a final decision in opposition proceedings were binding in subsequent invalidity proceedings.

    Tirol Milch applied to register the mark represented below as a CTM for various yoghurt products in Class 29.

    Ferrero opposed the mark under Articles 8(1)(b) and 8(5) on the basis of its earlier Italian word mark, KINDER, for various food and confectionary products in Class 30.

    The Opposition Division rejected the opposition and the BoA dismissed the appeal.  Ferrero then applied for a declaration of invalidity, relying on the Italian mark and 35 other earlier marks.  The Cancellation Division invalidated the mark but Tirol Milch successfully appealed to the BoA.  In annulling the Cancellation Division’s decision, the BoA held, inter alia, that, although opposition decisions do not benefit from the force of res judicata, the Cancellation Division was bound by substantive findings and conclusions of earlier OHIM decisions due to the principle nemo potest venire contra factum proprium (meaning ‘the administration is bound by its own acts’).  Ferrero appealed to the CFI.

    Incorrect application of the principle of res judicata

    Although the BoA was incorrect in concluding that findings made in a final decision in opposition proceedings are binding in subsequent invalidity proceedings, the BoA did not in fact apply the principle of res judicata and therefore the submission was rejected.

    The BoA was correct to conclude that res judicata was not applicable to the relationship between a final decision in opposition proceedings and an application for a declaration of invalidity because (i) OHIM proceedings are administrative and not judicial; and (ii) Regulation 207/2009 lays down no rule to that effect.  Although, the BoA was correct to conclude that findings made in the final opposition proceedings decision could not be entirely ignored in invalidation proceedings, where the BoA erred was its conclusion that departments of OHIM were bound by the rule nemo potest venire contra factum proprium. Final opposition proceedings were incapable of creating acquired rights or a legitimate expectation as to a subsequent declaration of invalidity.  Furthermore, if the BoA’s conclusion was correct, invalidity proceedings following an unsuccessful declaration would be deprived of any practical effect. 

    Articles 8(1)(b) and 8(5)

    The BoA was correct to conclude that the marks at issue were not similar.  Despite the word ‘kinder’ being present in both marks, a number of visual and phonetic differences existed which precluded a finding of similarity.  The CFI further held that the lack of similarity was so pronounced that the reputation of the earlier KINDER marks was incapable of overriding it for the purpose of Article 8(5).


    Decisions of the ECJ

    Austria is a “substantial part of the Community”

    PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH (ECJ (Second Chamber); C-301/07; 06.10.09)

    Pago owned a figurative CTM, the essential element of which was the representation of a green glass bottle with a distinctive label and lid, for, amongst other things, fruit drinks.  The CTM was widely known in Austria where Pago marketed a fruit juice called ‘Pago’ in such bottles.

    Tirolmilch marketed, also in Austria, a fruit and whey drink, ‘Lattella’.  It was initially sold in cartons but was subsequently packaged in glass bottles, two designs of which resembled in several aspects Pago’s CTM.

    Pago brought interlocutory proceedings in Austria seeking to prohibit Tirolmilch from promoting, offering for sale, marketing or otherwise using its drink in the bottles at issue.  Although the Austrian Court at first instance granted the application, this was overturned on appeal.  A further appeal was made to the Oberster Gerichtshof, which took the view that there was no likelihood of confusion between Tirolmilch’s bottles and Pago’s CTM.  However, it made a reference to the ECJ asking whether a CTM is protected as a ‘trade mark with a reputation’ for the purposes of Article 9(1)(c) if it only has a ‘reputation’ in one Member State.

    The ECJ confirmed that the concept of a reputation assumes a certain degree of knowledge amongst the relevant public, which could either be the public at large or a more specialised public.  The required degree of knowledge is met when the CTM is known by a significant part of the public concerned by the goods or services in question taking into consideration all relevant facts (in particular the trade mark’s market share, its intensity, geographical extent and duration of use and the size of investment made in its promotion).  For the territorial condition of Article 9(1)(c) to be met, the trade mark must have a reputation in a substantial part of the Community (following, by analogy, the reasoning in General Motors (C-375/97), which provided guidance on Article 5(2) of the Directive). 

    Here, the CTM had a reputation throughout one Member State, namely Austria.  Although the ECJ noted that it was for the national Court to determine whether the CTM was known by a significant part of the public in a substantial part of the Community, in this instance the ECJ concluded that the territorial requirement had been met.


    Trade mark exhaustion: consent to place on the market

    Makro Zelfbedieningsgroothandel CV & ots v Diesel SpA (ECJ (First Chamber); C-324/08; 15.10.09)

    Diesel, the proprietor of the Diesel word mark, engaged Distributions Italian Fashion (“DIF”) to distribute goods bearing the Diesel mark in Spain, Portugal and Andorra.  Pursuant to this, DIF entered a distribution agreement with Flexi Casual (“Flexi”) under which Flexi was granted exclusive distribution rights in those territories in respect of certain goods including shoes bearing the Diesel mark.  This agreement permitted Flexi to conduct ‘market tests’ on the shoes by offering footwear for sale to its customers in order to determine market requirements.  Flexi in turn entered into an agreement with Cosmos World (“Cosmos”) to manufacture and distribute shoes bearing the Diesel mark.  Under this agreement, but without any express approval from DIF or Diesel, Cosmos manufactured and marketed shoes bearing the Diesel mark.

    Makro subsequently offered for sale shoes bearing the Diesel mark that two Spanish undertakings had purchased from Cosmos.  Diesel brought an action for trade mark infringement in the Dutch Courts, arguing that it had not consented to the marketing of the shoes in question by Cosmos.

    The Dutch Court made a reference to the ECJ, asking whether the criteria laid down in Zino Davidoff (Joined Cases C-414/99 to C-416/99) in relation to implied consent under Article 7(1) (in which goods bearing the mark had been put on the market for the first time outside the EEA) were the same if the alleged implied consent was for goods that had been first placed on the market inside the EEA. 

    The ECJ found that there was nothing in the Zino Davidoff judgment that implied its ruling was limited to goods first placed on the market outside the EEA.  Moreover, such a finding would be contrary to the system established by the Directive.  Under Article 7(1), exhaustion can only apply when goods have been placed on the market in the EEA with the trade mark proprietor’s consent. Marketing outside the EEA has no such exhaustive effect.  It is a purely factual question whether the goods in question have been marketed for the first time within the EEA or outside it and as such this is not relevant for applying Article 7(1). 

    Therefore, the ECJ held that the same criteria as set out in Zino Davidoff were applicable when the goods in question were first placed on the market inside the EEA: Article 7(1) exhaustion may be implied but only if the trade mark proprietor’s consent to marketing the goods can be inferred from facts and circumstances that unequivocally demonstrate it has renounced its exclusive rights.


    Decisions of the High Court and the Court of Appeal

    No infringement of Daimler’s 3-pointed star trade mark

    Daimler AG v Sany Group Co. Limited (Ms Susan Prevezer QC sitting as a Deputy High Court Judge; [2009] EWHC 2581 (Ch); 23.10.09)

    Daimler was unsuccessful in its trade mark infringement action and passing off action.  Sany’s application for partial revocation of Daimler’s trade marks was also rejected.

    Daimler’s claim was based on six of Daimler’s UK trade mark registrations and CTMs for their 3-Pointed star device, registered in (among others) classes 7 and 12:


    Daimler claimed that Sany’s use and threatened use of the Sany logo (depicted below) in the UK amounted to trade mark infringement under Sections 10(2) and 10(3) (and Articles 9(1)(b) and 9(1)(c)), and passing off.  During the trial Daimler abandoned all of its pleaded claims except its claim under Section 10(3) and Article 9(1)(c), based on “unfair advantage.”

    The Deputy Judge referred to the principles set out in the recent decisions in Whirlpool Corporation v Kenwood Ltd ([2009] EWCA Civ 753) and L’Oreal v Bellure (Case C-487/07) in assessing the protection afforded to marks with a reputation. When looking at the degree of similarity the Deputy Judge held that, whilst both the Sany logo and the Daimler marks included a three pointed image within (or partly within) a circle, this was where the similarity ended.  Further, the Sany logo did not call to mind the Daimler marks. Despite Daimler’s marks being highly distinctive and well known, and as such earning a correspondingly wide scope of protection, the required link between the Sany logo and the Daimler marks was not established.
    The Deputy Judge was of the opinion that even if a link had been established she would not have found that the Sany logo took unfair advantage of the Daimler marks.  She considered that the calling to mind of the 3-pointed star would not have incited interest in Sany’s goods by adding allure and prestige to the goods and services.  She also considered that Sany had spent considerable amounts of money in promoting its own goods in the UK and elsewhere in Europe and as such there was no apparent “leg up” by virtue of its logo. The Deputy Judge also noted there was no evidence of any intent on the part of Sany to take advantage of the prestige of Daimler’s marks.

    Sany counterclaimed for partial revocation of Daimler’s marks on the basis of non-use under Sections 46(1)(b) and 46(5) and Articles 51(1)(a) and 51(2).  The Deputy Judge noted the apparent discrepancy between the practices of the UK Registry and OHIM in relation to the scope of trade mark specifications when class headings are adopted. However, she commented that it was not necessary to resolve this conflict for the purposes of this decision.

    With some hesitation the Deputy Judge was satisfied on balance that there was sufficient evidence to establish genuine use in relation to a number of different vehicles listed in the specifications.  She concluded that the present specifications for both the UK marks and CTMs fairly described the categories into which the goods fell and that an average consumer of the goods would fairly describe them in this way.  Thus Sany’s counterclaim was dismissed.


    Res judicata

    William Evans & otr v Focal Point Fires Plc (Peter Smith J; 2009 EWHC 2784 (Ch); 10.11.09)

    Peter Smith J allowed the summary judgment application, holding that Focal Point was estopped from pursuing a defence in a passing off action having previously had its trade mark held to be invalid before the Registry under Sections 47 and 5(4)(a).

    Evans had manufactured, sold and installed bespoke stone fireplaces under the name FIRECRAFT since the 1990s. Focal Point, a major retailer of fires, registered FIRECRAFT as a UK trade mark in February 2000 for fires and fire surrounds in Class 11. Focal Point advertised in a trade journal in the summer of 2000 and commenced retailing gas and electric fires under this mark from May 2001.

    In March 2007, Evans applied to the Trade Marks Registry to invalidate the FIRECRAFT mark. In November 2008, the Hearing Officer found in favour of Evans and Focal Point did not appeal the decision. In March 2009, Evans issued passing off proceedings against Focal Point. Evans applied for summary judgment, submitting that Focal Point should be estopped (on the grounds of issue estoppel and/or cause of action estoppel) from defending itself against the passing off claim and further or in the alternative that it would be an abuse of process to allow it to do so.

    The Hearing Officer’s Decision

    Peter Smith J concluded that the Hearing Officer found that at the Relevant Date (the date of the trade mark application in February 2000) Evans had an actionable claim under the law of passing off and therefore invalidated Focal Point’s mark. Although the Relevant Date was more than 9 years before the commencement of the passing off proceedings, it did not follow that Evans did not have a sustainable cause of action for passing off in 2009. There was no basis for suggesting that the three factors necessary to establish the tort of passing off were not present up to the date Focal Point stopped marketing products under the FIRECRAFT mark in 2009.
    The Judge rejected Focal Point’s submission that the Hearing Officer only had jurisdiction to decide whether a notional and fair use of the FIRECRAFT mark on the goods set out in the trade mark specification at the Relevant Date would result in Focal Point passing off its goods. The Hearing Officer had to determine not merely that Evans had an argument for passing off, but that it had an actual claim for passing off; it was essential for the Hearing Officer to make this determination in order to invalidate the mark.

    On the subject of damage, the Judge concluded that even if there was no actual damage at the time, Evans could have sought quia timet relief and the Court could have awarded damages in lieu of an injunction.

    Cause of Action Estoppel

    The Judge rejected Focal Point’s submission that the cause of action before the Registry (namely trade mark invalidity) was different to the cause of action before the Court (namely passing off). The FIRECRAFT mark could not have been declared invalid without Evans establishing that they had a subsisting cause of action for passing off at the Relevant Date. Given that, the Judge failed to see how there could be no cause of action estoppel in relation to passing off.

    Issue Estoppel

    The Judge firstly held that it was an essential element to the Hearing Officer’s decision that Evans had a subsisting cause of action for passing off at the Relevant Date; such findings were not merely collateral or incidental.
    The Judge went on to note that there can be no res judicata in a changing situation. On the issue of damage, the Judge accepted that the Hearing Officer had to decide whether damage was likely to be caused to Evans, but this was simply a quia timet test. In any event, the Hearing Officer determined not only quia timet relief but he also determined that there was damage to Evan’s goodwill at the Relevant Date. On the issue of misrepresentation, the Judge noted that the Hearing Officer found that there would have been a misrepresentation at the Relevant Date (although Evans had not actually proved it), thus giving Evans the right to seek an injunction in the appropriate tribunal (although not the Registry).

    The Judge concluded that the Hearing Officer determined that Evans had a valid cause of action sufficient to prevent the use of the mark. That is the same requirement for Evans to establish passing off at the Court.

    Abuse of Process

    The Judge was of the view that to allow Focal Point to force Evans to re-establish the passing off claim was harassment. He concluded that Focal Point fought the hearing in the Registry and subsequently wished to put up more obstacles in the hope that this would inhibit Evans’ desire to recover relief. If Focal Point wished to adduce further evidence, it should have done so by appealing the Hearing Officer’s decision. The Courts are keen to ensure that all matters so far as possible are dealt with expeditiously and with one hearing. It would be quite wrong to allow Focal Point to re-litigate the issue of liability.


    The Judge considered the two key authorities on this area, Hormel ([2004] EWHC 13 (Ch)) and Special Effects ([2007] RPC 15), concluding that there was nothing in those decisions which led him to believe that his analysis was incorrect. The Judge therefore held that Focal Point had no prospect of success in defending the case as regards the determination of liability for passing off.

    On the issue of relief, the Judge noted that the only immediate relief available was declaratory; damages and other relief should be assessed on a separate inquiry.



    Budejovicky Budvar Narodni Podnik (“BB”) v Anheuser-Busch Inc (“AB”)* (Ward, Jacob LLJ & Warren J; [2009] EWCA Civ 1022; 20.10.09)

    The Court of Appeal (Jacob LJ giving the leading judgment) referred a number of questions to the ECJ in relation to AB’s application for a declaration of invalidity in relation to BB’s BUDWEISER registration.  The Court requested clarification of the meaning of “acquiesced” in Article 9(1) and whether the Directive permitted honest concurrent use of identical marks.  The Court also requested clarification of when the five-year period for acquiescence begins to run and whether it was necessary that a trade mark should be registered before a proprietor can begin to acquiesce.  In relation to Article 4(1)(a), the Court asked whether this provision applied even in situations where there had been long-standing, honest concurrent use of two identical trade marks for identical goods such that consumers were aware that such marks and goods originated from one or the other proprietor.

    AB is an American brewer based in Missouri and sells beer under the mark BUDWEISER.  BB is a brewer in Ceske Budovice (formerly Budweis) in the Czech Republic and sells beer under marks consisting of or including BUDWEISER.  BUD is a recognised abbreviation of the mark and may be taken as an equivalent to that word.  The beers sold by AB and BB differ in taste, price and get-up and for the most part consumers are aware of the differences.  In the UK, the parties have litigated and opposed each other’s trade marks for over 30 years and in 1984, the English courts decided that there was a dual reputation in the mark and name BUDWEISER.  Jacob LJ observed that this decision was an example of the recognition in English common law and statute law that there are cases where two parties with similar or even identical trade marks can and should be allowed to co-exist. 
    BB had an earlier registration for BUD (application date November 1976) and on the same date in May 2000, BB and AB’s registrations for BUDWEISER were put on the Register (with application dates in June 1989 and December 1979 respectively).  Four years and 364 days after registration of the BUDWEISER marks, AB applied to the Registry for a declaration that BB’s mark was invalid.  AB claimed that its mark was an “earlier trade mark” by virtue of Article 4(2) and therefore under Article 4(1)(a) BB’s mark was liable to be declared invalid.  (The timing was such that BB could not launch a counter-attack with its BUD mark under Article 4(1)(b) because, under Article 9, BB would be deemed to have acquiesced for more than 5 successive years to AB’s use of its BUDWEISER mark.) 

    BB claimed that, under Article 9, AB had acquiesced for a period of 5 years and that the period should run from the date of application of BB’s mark in 1985 and not the date of registration.  Norris J ([2008] EWHC 263; CIPA April 2008) followed Sunrider v Vitasoy [2007] EWCH 37 (which Jacob LJ overruled) and held that the 5 year period ran from the date of registration of the mark.  Consequently, he held that the defence of statutory acquiescence was not made out – the application for invalidity was made within the 5 year period.  In doing so, he upheld the decision of the hearing officer to invalidate BB’s BUDWEISER mark; but he recorded his uneasiness at his conclusion and was of the opinion that the matter should be considered by the Court of Appeal. 

    Jacob LJ first dealt with another issue which was raised before Norris J, that of equitable estoppel.  BB unsuccessfully sought to persuade Norris J that by waiting until the last minute to make an application under Section 47/Article 52, AB’s action amounted to a declaration that an application for revocation would not be made.  Jacob LJ similarly held that there was no defence of equitable estoppel.

    Jacob LJ then considered that the meaning of “acquiescence” in Article 9(1) and held that it was not acte clair.  Firstly, there were two meanings to “acquiesce”.  On a narrow interpretation, a person can only “acquiesce” in the conduct of another if he is in a position to stop it.  But on a wider interpretation (which seemingly appeared in Recital 11), a person can “acquiesce” where he tolerates a situation (as AB and BB could fairly be said to have done over the last 30 years).  Secondly, there was no indication in the travaux préparatoires that acquiescence could only start when the earlier mark was registered.  This strongly suggested that the period of acquiescence for the purpose of Article 9(1) should not start on the arbitrary date of actual registration of the senior mark. 

    The issues in this case went to the question of how far EU trade mark law permits honest concurrent use.  As the ECJ had already recognised the principle in the context of a trade mark right conflicting with a designation of origin (Gerolsteiner Brunner v Putsch, Case C-100/02), it was a short step to say that some doctrine of honest concurrent use needs to be fashioned under the Directive.  In cases of honest concurrent use, both parties can build up substantial and valuable goodwill.  If the law of trade marks is as AB contended, then it would allow one of the parties to effectively destroy and take over the goodwill of the other.  As Jacob LJ observed, that “hardly sounds right”.


    Questions Referred to ECJ in L’Oreal v eBay

    Questions have been referred to the ECJ by the High Court in the L’Oreal v eBay case.  Details of the questions can be found here.


    Enforcement of domain name forfeiture order made in foreign proceedings

    Pocket Kings Ltd v (1) Safenames Ltd (2) Commonwealth of Kentucky* (Mr Michael Furness PC; [2009] EWHC] 2529 (Ch); 16.10.09)

    The Judge granted a declaration that the court would not enforce an order made by the Kentucky Court for forfeiture of the domain name (“the Domain Name”).

    Pocket Kings was an online gaming services operator and facilitated and licensed the use of the Domain Name. Safenames was contractually responsible for pointing the Domain Name at Pocket Kings’ servers. The Commonwealth of Kentucky (“Kentucky”) sought and was granted an order by the Kentucky Court for penal forfeiture of the Domain Name on the basis that it had been used in the commission of multiple crimes relating to gambling (“the Kentucky Proceedings”). Pocket Kings sought an undertaking from Safenames that it would not do any act that interfered with its use and enjoyment of the Domain Name. After Safenames refused to give this, Pocket Kings applied for a declaration that the High Court would neither recognise nor enforce the order made in the Kentucky Proceedings. The US State Department refused to accept service of the declaratory action on behalf of Kentucky.  Pocket Kings applied for summary judgment.

    The Judge held that Kentucky was not entitled to immunity under the State Immunity Act 1978 (“the Act”) since it was not a sovereign state (it was a constituent territory of the United States of America) and it was not exercising the sovereign authority of a sovereign state (the Kentucky Proceedings were brought under local Kentucky law by a Kentucky public official, not any federal agency). Further, Kentucky was properly served with the proceedings despite the rejection of service by the US State Department, since the requirements of the Act were stated in mandatory terms and those terms had been complied with.

    In relation to the declaratory relief, the Judge first held that the Kentucky Proceedings were not enforceable in English law since they were penal or governmental in nature. In considering whether to exercise his discretion to grant the declaration sought, the Judge noted that although the current proceedings were pre-emptive, this approach was justified. The continued use of the Domain Name was clearly important to Pocket Kings’ business and it was currently uncertain as to whether the Kentucky Proceedings would be enforced.  Safenames had agreed to submit to injunctive relief restraining it from complying with the forfeiture order if Pocket Kings obtained a declaration as to the non-enforceability of the Kentucky Proceedings. In these circumstances it was appropriate to grant the declaration.


    Liability of website owners for misleading content

    Gary Patchett & Karen Patchett v Swimming Pool & Allied Trades Association Ltd (“SPATA”)* (Lord Clarke of Stone-Cum-Ebony, Scott Baker & Smith LJJ; [2009] EWHC Civ 717; 15.07.09)
    The Court of Appeal dismissed the appeal, holding that SPATA did not owe a duty of care to the Claimants (Mr & Mrs Patchett) because it could not reasonably anticipate that people would rely on statements made on its website without making any checks of their own.
    SPATA was an incorporated trade association for swimming pool installers. Mr & Mrs Patchett obtained details of installers from a drop down list on SPATA’s website and contracted with one of them, Crown Pools Limited, to build a swimming pool in their garden. The SPATA website stated that members were fully vetted (with checks on their financial record and experience and an inspection of their work) and that they benefited from a bond and warranty scheme known as SPATASHIELD. Mr & Mrs Patchett claimed that they relied on these statements, which were inaccurate and misleading because Crown was not a full member and therefore had not been vetted and did not benefit from the SPATASHEILD scheme. Crown began work but became insolvent. Mr & Mrs Patchett had the work completed by other contractors and claimed that they suffered a financial loss of £44,000 as a result.
    The Court of Appeal held (Smith LJ dissenting) that, whilst SPATA was in error in failing to distinguish between full and associate member in the drop down list on the website, this was insufficient to establish liability. It was crucial to look at the website as a whole, which included a reference to and encouraged people to obtain a copy of an information pack. It was reasonable for SPATA to expect customers to obtain this information pack and if Mr & Mrs Patchett had done so they would have discovered that Crown was not a full member. It was particularly surprising for a customer to rely on the website information as to the SPATASHIELD scheme without obtaining a copy of the policy or some more detailed documents confirming the terms of the cover.
    In the circumstances, there was not a sufficient relationship of proximity between SPATA and Mr & Mrs Patchett and it would not be fair, just and reasonable to hold that SPATA owed them a duty of care.



    Electronic sales of back issues infringed copyright in the photographs they incorporated

    Alan Grisbrook v Mirror Group Newspapers (“MGN”) & Ots* (Patten LJ; [2009] EWHC 2520 (Ch); 16.10.09)

    The Judge held that the display and sale of certain back issue pages of MGN’s publications on its websites was an infringement of Mr Grisbrook’s copyright in the photographs which those pages contained.  The Judge stated that the dispute should have been resolved by issue of infringement proceedings and not through committal proceedings.

    Mr Grisbrook made an application to commit MGN or alternatively for sequestration of the assets of MGN to enforce a consent order dated 9 December 2002 in which MGN undertook not to infringe Mr Grisbrook’s copyright in his photographs.  The consent order arose from the compromise of two earlier actions in relation to payment of licence fees and unauthorised use of Mr Grisbrook’s photographs.  Under the consent order MGN undertook to return copies of Mr Grisbrook’s photographs to him and these images were returned from the hardcopy archive and deleted from the electronic archives. 

    Mr Grisbrook was a freelance photographer and had provided photographs to MGN between 1981 and 1997.  It was established practice that MGN would make a payment to Mr Grisbrook for each of his photographs that it published and paid a further fee in respect of subsequent publication in a different edition.  Subsequent publication of a photograph could also occur as a reproduction of a page from a previous edition as part of a story in a new edition.  MGN also placed copies of photographs submitted to it in its picture library.

    There was no written agreement between Mr Grisbrook and MGN in respect of the use of his photographs.  The Judge held that there was an implied licence granted to MGN for publication of the photographs in its newspaper editions and MGN had paid a fee for this.  It was held that this licence was terminated by an agreement scheduled to the consent order.  The Judge held that MGN were permitted to continue to maintain a back number database.

    After the date of the consent order MGN had set up 4 websites which provided back issues for sale. Mr Grisbrook’s photographs, where incorporated into these back issues, were displayed on the websites.

    The Judge held that MGN had copied Mr Grisbrook’s work and communicated it to the public by display of back edition pages on its websites; infringements under Sections 16(1)(a) and (d) CDPA respectively.  Copying included electronic storage and transmission to the public under Sections 17(2) and 20(2) CDPA respectively.  It was held that MGN’s rights to store copies of its back issues or MGN’s licence in respect of the original publication did not extend to reproduction of back issues and as such was an infringement of the undertakings provided by MGN in 2002. The Judge held that MGN could not rely on a public interest defence or Article 10 of the ECHR as members of the public could access copies of its back editions through a prescribed library. The Judge held that Mr Grisbrook’s rights could be adequately protected by a declaration of infringement and refused to penalise MGN by a fine or sequestration.

    Katharine Stephens, Zoe Fuller, Emily Peters & Alice Sculthorpe


    Reporter’s note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Amy Williams, Clare Wilson, Jack Jones, Nadia Hussein, Nick Boydell, Oceane Millon de La Verteville, Tim Harris and Victoria Evans.

    Profiles of all of our contributors above can be found on the "our people" page of our site.

    ECJ and CFI decisions can be found at  and the reported cases marked * can be found at