This month we report on 'positional marks' in X Technology Swiss v GmbH v OHIM, we look at the question of registering personal names in Eugenia Montero Padilla v OHIM and the issue of registering domain names in 'bad faith' in Internetportal und Marketing GmbH v Richard Schlicht. We also look at what constitutes a 'malicious falsehood' according to the High Court in Ajinomoto Sweeterners Europe SAS v Asda Stores Ltd, a case which concerned food branding.


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Decisions of the GC (formerly CFI)
Case  

GC
T-138/09
Félix Muñoz Arraiza v OHIM; Consejo Regulador de la Denominación de Origen Calificada Rioja
(09.06.10)

Application (and where applicable, earlier mark)  

RIOJAVINA
- vinegars (30)
- sole agencies, representation services, wholesaling, retailing, export, import; all the aforesaid relating to vinegars (35)

 
- wine (33)
(Community collective mark)

Comment

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

The GC held there was a low degree of similarity between vinegar and wine, on the basis that both can be used in food preparation and the former is commonly obtained through fermentation of the latter. There was also a low degree of similarity between wine and the services applied for due to the complementary and ancillary nature of marketing activities in the vinegar and wine sector.

The BoA was correct to find a high degree of similarity between the marks. Visually and aurally RIOJA was the dominant part of both marks; the other elements were secondary. Conceptually, both marks referred to grapevine products and, more specifically, Rioja wine.

The low degree of similarity between the goods and services was offset by the high degree of similarity between the marks. As a result, the public was likely to believe that the vinegar and services offered under the RIOJAVINA mark had the same commercial origin as those under the earlier mark.

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Case GC
T-490/08
CM Capital Markets Holding, SA v OHIM; Carbon Capital Markets Ltd
(22.06.10)
Application


- financial services related to trading of commodities and emissions allowances, risk management services  (36)

- business and accountancy services (35)
- actuarial and financial services (36)
- IT services (42)
(CTM and Spanish national mark)

Comment

The GC dismissed CM’s appeal from the BoA’s decision to reject the opposition under Art 8(1)(b). 

The GC agreed with the BoA that neither the figurative elements nor the word elements of both the mark applied for and the earlier mark could be regarded as dominant.  The GC noted in particular that the word elements ‘carbon capital markets’ and ‘capital markets’ were descriptive and thus would not dominate the marks’ overall impression.

Considering the overall impression, the GC concluded that the marks were not visually similar and had only a limited phonetic similarity. The BoA was right to conclude that the marks were not conceptually similar as, contrary to the CM’s submissions, the ‘C’ in the figurative element of the earlier mark would be perceived as referring to the word ‘capital’ rather than ‘carbon’.

Despite the services covered by the marks being identical, there was insufficient similarity between them to establish a likelihood of confusion.


 

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Decisions not yet in English

Case  

GC
T-492/08
Nicolas Wessang v OHIM; Greinwald GmbH
(11.05.10)

Application (and where applicable, earlier mark)  



 - meat, fish, jam (29)
- coffee, tea, bread (30)
- beer, alcohol free drinks (32)
STAR SNACKS
- fruit, vegetables, sausages, fish roe (29)
- coffee, tea, pastries (30)
- nuts, berries (31)

Comment

The GC annulled the BoA’s decision to reject the opposition to the mark under Art 8(1)(b).
The marks were similar and the goods were similar or identical, with the exception of beer in Class 32.

Under Art 65(6) it was for OHIM to implement the decision in terms of the extent to which the opposition to the mark was allowed.

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Case GC
T-163/08
Arbeitsgemein-schaft Golden Toast e. V. v OHIM
(19.05.10)
Application

GOLDEN TOAST
- bread baking machines (11)
- flour-milling products, bread  (30)

Comment

The GC upheld the BoA’s decision that the mark was descriptive in relation to the goods applied for under Art 7(1)(c).

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Case  

GC
T-315/09
Hoelzer v OHIM
(09.06.10)

Application (and where applicable, earlier mark)  



- guard rails of metal, binding thread of metal for agricultural purposes  (6)
- vehicles and  trailers, connection elements (12)

Comment

 The GC upheld the BoA’s decision that the mark was descriptive in relation to the goods applied for under Art 7(1)(c).

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Case GC
T-35/09
Procaps S.A. v OHIM; Biofarma SAS
(02.06.10)
Application

PROCAPS
- various goods and services including drugs presented in soft gelatin capsules, medical and veterinary services (5, 35, 39, 40, 44)
PROCAPTAN
- pharmaceutical and sanitary preparations (5)

Comment

The GC dismissed the appeal by Procaps S.A. against the decision of the BoA to reject the mark applied for. 

There was a likelihood of confusion with the earlier mark under Art 8(1)(b). 

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“Positional marks”


X Technology Swiss GmbH v OHIM (GC (Second Chamber); T-547/08; 15.06.10)


X Technology applied to register the mark reproduced below as a CTM for ‘clothing namely hosiery, socks and stockings’ in Class 25.



X Technology identified the mark as a ‘positional mark’ and the following description accompanied the application: ‘The positional mark is characterised by an orange colouration, of the shade “Pantone 16-1359 TPX”, in the form of a hood covering the toe of each article of hosiery. It does not cover the toes entirely; it features a limit, which, viewed from the back and the side, appears essentially to be horizontal. The mark always appears in sharp colour contrast to the remainder of the article of hosiery and is always in the same place.’


The examiner rejected the application under Article 7(1)(b) and the BoA  rejected the appeal, holding that (i) the description accompanying the application was insufficiently  precise to be admissible; (ii) the applicable rules made no provision for the category of ‘positional marks’; and (iii) the mark was therefore a 3-D or figurative mark which devoid of distinctive character under Article 7(1)(b). X Technology appealed to the GC which dismissed the appeal.


The GC held that, although the relevant rules did not refer to ‘positional marks’ as a specific category, the list was non-exhaustive. ‘Positional marks’ appeared similar to 3D and figurative marks as applied to a surface of a product.  In any event, the classification of the mark was irrelevant for the purpose of assessing distinctive character.  The question to be determined was whether the mark was indistinguishable from the appearance of the products designated or whether it was independent thereof.  The GC concluded that in the present case it was, since the mark applied for was indistinguishable from the form of part that product, namely the shape of the toe.


The GC held that the BoA was correct to conclude that the relevant public had a rather low degree of attentiveness.  The general finding that a consumer is attentive when choosing articles of clothing did not apply to hosiery.


X Technology failed to substantive its challenge of the BoA’s findings that the mark would be perceived as decoration.  The GC held, inter alia, that X Technology failed to provide solid evidence that consumers are in the habit of perceiving the colour of a toe of a sock as an indicator of origin.  The mark was therefore held to be devoid of distinctive character under Article 7(1)(b).


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Personal Names


Eugenia Montero Padilla v OHIM; José María Padilla Requena (GC (Second Chamber); T-255/08; 22.06.10)


José María Padilla applied to register the sign JOSE PADILLA as a CTM for goods in Classes 9, 25 and 41 including sound recordings, CDs, clothing and cultural activities in particular writing, composing, recording and performing music.


Eugenia Montero (the niece of the late composer José Padilla) opposed the application under Article 8 relying on the well-known mark, JOSE PADILLA. Before OHIM, she also relied upon two earlier Spanish word marks, but this ground of opposition was dropped in the appeal to the GC.


The Opposition Division rejected the opposition. The BoA dismissed Eugenia Montero’s appeal as did the GC.


The GC held that the absolute grounds for refusal under Article 7 do not fall to be examined in opposition proceedings.  The grounds on which an opposition may be based are solely the relative grounds under Article 8. Third parties may submit observations on, inter alia, absolute grounds, but it was not apparent that Eugenia Montero had submitted such observations.  The legality of the BoA’s decision therefore was not to be appraised in light of these provisions.


The GC rejected the plea under Article 8(5) because that Article protected only well known marks for which proof of registration has been provided and Eugenia Montero had failed to provide such proof. 


Eugenia Montero’s submission in relation to Article 8(1) (based on the earlier mark being well-known under Article 8(2)(c)) was also rejected as she had failed to prove that the name José Padilla was used as a trade mark. The BoA was correct to conclude that the documents provided only demonstrated the renown of the deceased composer and the use of his name to identify the author of musical compositions, not the use of that name as a trade mark.


As José Padilla was not her name, Eugenia Montero could not invoke protection on the basis of an unregistered right to the name under Article 8(4). Furthermore, copyright could not be invoked under Article 8(4) as it was not one of the earlier rights referred to therein.


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Barbara Becker v OHIM; Harman International Industries, Inc. (CJ (Fourth Chamber); C-51/09; 24.06.10)


Following the AG’s opinion (CIPA January 2009), the CJ set aside the judgment of the GC (then CFI) which found a likelihood of confusion under Article 8(1)(b) between Ms Becker’s application for the CTM BARBARA BECKER (for various scientific nautical, survey, electrics and photographic goods in Class 9) and Harman’s earlier mark BECKER (for various electric and electronic apparatus in Class 9). 


The GC had failed to analyse all the relevant factors specific to the case and had disregarded the requirement of an overall assessment of the likelihood of confusion based on the overall impression produced by the marks.  Instead the GC had based its assessment of the conceptual similarity of the marks on general considerations taken from case law.  In particular, the GC had not considered how common the surname ‘Becker’ was, nor how well known Barbara Becker was (as Boris Becker’s wife) which could influence the perception of the mark by the relevant public. 


Finally, there was a risk that the GC’s decision would allow any surname constituting an earlier mark to prevent registration of a composite mark of a first name and the same surname, even though that surname may be common or the addition of the first name may conceptually affect the perception of the relevant public of the composite mark.


On the basis that the GC had made an error in law, the CJ referred the case back to it for reconsideration.


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Revocation for Lack of Genuine Use – Use in Combination with other Elements


Atlas Transport GmbH v OHIM; Alfred Hartmann (GC (Eighth Chamber); T-482/08; 10.06.10) - Decision not yet available in English


Atlas Transport GmbH succeeded in its appeal against the decision of the BoA to revoke the word mark ATLAS TRANSPORT for non-use over a period of 5 years. The intervenor, Mr Hartmann, had applied for revocation of the mark for non-use under Articles 15 and 51(1).  Atlas contended that it had used the mark and submitted evidence which included a number of invoices issued during the relevant 5 year period which contained the following letterheads:


 


Atlas submitted that the letterheads constituted use within Article 15 in that they showed use of the mark in a form differing by elements which did not alter the distinctive character of the mark.  However, the BoA found that the extra elements in the letterheads altered the distinctive character of the mark and there was thus no use. 
The GC disagreed with the BoA.  Owing to the positioning, typography and size of the elements contained within the letterheads, the letterheads would not be seen as one unit, but as a group of individual elements. 
 
The GC concluded that the ‘Atlas Transport’ element of the letterheads was dominant.  The GC’s reasons were as follows:-


• ‘Atlas Transport’ was written in an easily legible script and colour, while the element ‘The Duesseldorfer’ was pale in colour. 
• The element © was extremely small. 
• The element ‘ATC’ was smaller than the other elements in the letterhead and in any event, as the element was comprised of the initials of the Atlas Transport Company, it did not have any effect on the distinctive character of the mark. 
• As the company was based in Dusseldorf, the element ‘The Duesseldorfer’ had a low degree of distinctiveness and the element ‘Gesellschaft’ (Company) had no distinctiveness as such.


Thus the GC found use within Article 15(2) during the relevant 5 year period and the appeal against the revocation of the mark was allowed.


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Exhaustion – issues of consent in relation to perfume testers


Coty Prestige Lancaster Group GmbH v Simex Trading AG,(CJ (Fouth Chamber); C 127/09; 03.06.10)


Coty Prestige manufactured and marketed perfumery goods under its own marks (e.g. Joop!) and third party marks (e.g. Davidoff). All the trade marks were registered as Community and international trade marks. Coty Prestige marketed its perfumery goods throughout the world through a selective distribution system. Coty Prestige concluded an agreement with each of its authorised specialist dealers. The agreement stated, inter alia, that the sale of perfume testers, called advertising materials, was prohibited.


Simex Trading marketed perfumery goods but was not part of Coty Prestige’s network of authorised specialist dealers. Simex Trading sold two testers containing Davidoff Cool Water Man branded perfume to a shop in the Sparfümerie chain in Germany (from which Coty Prestige then purchased them). The testers were original bottles, containing original perfume, but were lacking their original seal and labelled “Demonstration”. The packaging of the testers was different from the original as well. From the manufacturer’s serial numbers for the testers, Coty Prestige was able to deduce that they had been delivered to one of its authorised specialist dealers established in Singapore. Coty Prestige brought proceedings before the German courts against Simex Trading, claiming that the testers had been put on the market for the first time in the Community or the EEA without the consent of the trade mark proprietor. Simex Trading opposed the application, submitting that the right derived from the trade mark had been exhausted because the testers had been put on the market in the EEA with the consent of the trade mark proprietor. The German Higher Regional Court referred a question to the CJ concerning the interpretation of Article 13(1) of Regulation 40/94 and Article 7(1) of Directive 89/104.


The CJ held that the initial provision of the testers by Coty Prestige to its authorised dealers in Singapore (or, in fact, to its authorised dealers in the EEA) would not be considered to be a ‘putting on the market’ under Article 7(1).  The first act of putting on the market in the main proceedings was by Simex Trading to the Sparfümerie chain. 


The CJ further held that even in situations where the goods were first placed on the market in the EEA by a third party without the proprietor’s express consent, an intention to renounce the exclusive right may follow from the proprietor’s implied consent.  It was conceivable that such consent may be inferred from facts and circumstances surrounding the placing on the market.  Although it was for the national court to assess whether there had been express or implied consent, certain circumstances of the main proceedings did not argue in favour of a clear renunciation of the proprietor’s exclusive rights.  In particular, the CJ held that where perfume testers are made available, without transfer of ownership and with a prohibition on sale, to intermediaries who are contractually bound to the trade mark proprietor for the purpose of allowing their customers to test the contents, where the trade mark proprietor may at any time recall those goods and where the presentation of the goods is clearly distinguishable from that of the bottles of perfume normally made available to the intermediaries by the trade mark proprietor, the fact that those testers are bottles of perfume which bear not only the word “Demonstration” but also the statement “Not for Sale” precludes, in the absence of any evidence to the contrary (which it is for the national court to assess), a finding that the trade mark proprietor impliedly consented to putting them on the market.


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Registration of eu. domain names in bad faith


Internetportal und Marketing GmbH v Richard Schlicht (CJ (Second Chamber); C-569/08; 03.06.10)


Internetportal’s business was the operation of websites and the marketing of products via the internet. Internetportal submitted applications for the registration of 180 .eu domain names consisting of generic words. In order to be eligible to apply for these domain names under the first phase of registration, Internetportal successfully registered 33 generic German terms as Swedish trade marks.  For each mark an ampersand was incorporated before and after each letter.  For example, one such mark was &R&E&I&F&E&N& for safety belts in Class 9 (the word ‘Reifen’ in German means ‘tyres’).  The particular transcription rules for .eu domain names meant that certain special characters, including ampersands, would be eliminated from the domain name.  Therefore, the resulting domain name which was registered was www.reifen.eu (the ‘Domain Name’). Internetportal intended to use the Domain Name to operate a portal for trading in tyres.  It had no intention of using the trade mark for safety belts.


Schlicht, the proprietor of the Benelux mark REIFEN for cleaning goods and services in Classes 3 and 35, contested the registration of the Domain Name.  The Czech Arbitration Court concluded that Internetportal had acted in bad faith when registering the Domain Name and transferred it to Schlicht.  The Czech Arbitration Court also considered that the ampersands should not have been eliminated from the Domain Name, but instead rewritten in full, an alternative provided by Regulation 874/2004 on the implementation of the .eu Top Level Domain.  Internetportal subsequently brought proceedings before the national courts.  The action was dismissed at first instance and on appeal.  Internetportal then appealed to the Obster Gerichtshof which stayed proceedings and referred a number of questions to the CJ on the interpretation of Article 21 of Regulation 874/2004 which concerned speculative and abusive .eu registrations and provided that a registered domain name may be revoked if it (a) was identical/confusingly similar to a name with a recognised right and it had been registered by its holder without rights or a legitimate interest in the name; or (b) had been registered or used in bad faith.


The CJ first concluded that circumstances constituting bad faith listed in Article 21(3)(a) to (e) were not exhaustive; bad faith could be established by circumstances other than those listed.


In order to assess whether there had been conduct in bad faith under Article 21, the CJ held that the national court must take into account all the relevant factors specific to the particular case and, in particular, the conditions under which registration of the trade mark was obtained (even though the registration of the mark in Sweden remained valid) and those under which the .eu domain name was registered.


When considering the conditions under which the trade mark was obtained, the CJ held that the national court should take into account the following:-


• the intention not to use the trade mark in the market for which protection was sought.  Applying for a mark without the intention of using it as such but for the sole purpose of using that right to register a .eu domain name may indicate bad faith;
• the presentation of the trade mark.  The use of an ampersand before and after every letter may suggest that the special character was introduced only to disguise the generic term;
• the fact of having registered a large number of other trade marks corresponding to generic terms.  In this case, Internetportal had registered 33 generic terms in Sweden using the special ampersand character; and
• the chronology of events.  The fact that Internetportal registered the word mark shortly before the phased registration of the .eu domain names warranted special attention for the purpose of demonstrating bad faith.


The CJ then concluded that the national court must take into consideration the following conditions under which the .eu domain name was registered:-


• the abusive use of special characters or punctuation marks for the purposes of applying the transcription rules;
• conduct which is manifestly intended to circumvent the procedure for phased registration.  The CJ noted that such conduct was tantamount to seeking to obtain an unfair advantage to the determent of any other person interested in the domain name; and
• the fact of having applied for registration of a large number of domain names corresponding to generic terms (in this case, 180).


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Consent in the context of an opposition on relative grounds


Omega Engineering Inc v Omega SA & Ots (“Omega”)* (Arnold J; [2010] EWHC 1211 (Ch); 28.05.10)


Arnold J dismissed Omega’s appeal from the Hearing Officer’s decision to dismiss the opposition to Omega Engineering’s application to register OMEGA in Class 14 for “instruments and apparatus intended for a scientific or industrial application in measuring, signalling, checking, displaying or recording heat or temperature and having provision to display the time of day” (the “Excluded Goods”).  Omega Engineering also succeeded in its application for summary judgment on its claim for breach of a coexistence agreement.


Background
Omega manufactures and markets wristwatches.  Omega Engineering manufactures and markets products for the measurement and control of temperature, humidity, pressure, strain, force, flow, level, pH and conductivity.  Given the similarity between the parties’ names and that their respective products are not dissimilar, the parties recognised that there was potential for confusion and entered into a coexistence agreement, which provided inter alia that Omega would not object to the use or registration by Omega Engineering of trade marks consisting of the word OMEGA in respect of the Excluded Goods. 


Thereafter, Omega Engineering applied to register OMEGA for the Excluded Goods and Omega opposed, relying on Sections 5(1) – 5(4).  Omega Engineering contended that the coexistence agreement amounted to consent pursuant to Section 5(5) and Omega submitted that consent was irrelevant to an objection on relative grounds, relying on the decision of the CFI (as it then was) in Omega SA v OHIM Case T-90/05 (reported in the CIPA Journal, December 2007).  In the alternative, Omega contended that the agreement only gave consent to the registration of Excluded Goods in Class 9 and not in Class 14.


The Hearing Officer dismissed the opposition, holding that the agreement amounted to consent to registration of the OMEGA mark in relation to Excluded Goods in any class and that such consent was a bar to opposition on relative grounds under Section 5(5). 


Omega Engineering then commenced proceedings for breach of contract, claiming that Omega’s opposition was in breach of the coexistence agreement and seeking an injunction to restrain Omega from prosecuting their appeal against the Hearing Officer’s decision.   Omega Engineering applied for summary judgment on this claim. 


Arnold J agreed to hear the summary judgment application and the appeal together.


The Application for Summary Judgment
Arnold J held that the dispute turned on the definition of “Excluded Goods”, which he found to mean any of the goods listed in the coexistence agreement, regardless of their class.  The Judge was persuaded by the fact that Omega’s undertaking not to object to use by Omega Engineering of OMEGA in relation to the Excluded Goods extended to use as an unregistered trade mark and thus it was difficult to see why the undertaking not to object to registration should be dependent upon the particular class of goods for which registration was sought. 


Omega raised defences of estoppel and acquiescence.  The Judge held that there was no real prospect of the estoppel defence succeeding because Omega was unable to point to a representation made by Omega Engineering as to the interpretation of the agreement so had to rely on the fact that Omega Engineering had failed to invoke the agreement in circumstances where it would have been so entitled.  Silence in the absence of a duty to speak would not give rise to an estoppel.  As to acquiescence, Arnold J applied Farmers’ Build Ltd v Carier Bulk Materials Handling Ltd [1999] RPC 461 and held that mere failure to raise a point for a period of time does not amount to acquiescence.


The Appeal
The basis for Omega’s appeal was that Section 5(5) had been impliedly repealed as a result of the CFI’s decision in Case T-90/05.  Omega’s rationale in support of its argument that coexistence agreements were irrelevant to an objection on relative grounds was that there was no need for a legislative provision for consent in a system where the relevant trade mark office could not raise relative grounds of its own motion.  If the putative opponent had consented to registration, it was unlikely to oppose.


Arnold J did not agree with this proposition, holding that it would be unjust to permit a party who had previously consented to the registration to successfully oppose an application in contravention of its contract.


Omega then submitted that the Trade Marks (Relative Grounds) Order 2007, which provides that relative grounds may now only be raised by the proprietor of the earlier mark, had resulted in the ‘evaporation’ of the rationale behind Section 5(5).  Arnold J was not swayed by this argument but rather considered that as Section 5(5) was not repealed when the law was changed, as would have been open to the Secretary of State to do, there was thus no basis upon which to conclude that Section 5(5) had been impliedly repealed. 


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Descriptive mark


LG Electronics Inc’s Trade Mark Application, INTELLIGENT SENSOR (Ms Amanda Michaels sitting as an Appointed Person; O-189-10; 04.06.10)


Ms Amanda Michaels dismissed LG’s appeal from the Hearing Officer’s decision to refuse to register INTELLIGENT SENSOR in Class 9 for television receivers (TV sets) and cellular phones under Sections 3(1)(b) and 3(1)(c). 

LG submitted that the Hearing Officer had erred in finding that INTELLIGENT SENSOR designated the nature or a characteristic of the goods for which registration was sought because (i) the term “Intelligent Sensor” was a fanciful term created arbitrarily by LG and (ii) the term was not an obvious choice to describe the goods or their essential characteristics.  As to the latter, Ms Michaels held that the Hearing Officer was not required to consider whether the mark was an “obvious choice” but rather was right to consider whether the mark would be seen by the relevant public as a phrase describing the goods.  In that regard, it was open to the Hearing Officer to conclude that the public at large (being the relevant consumer of the goods in question) would see the words “Intelligent Sensor” as a normal means of defining the nature or a characteristic of the goods for which registration was sought i.e.  goods which have an intelligent sensor function.  Although this was a borderline case, with the mark being one which another Hearing Officer might have found vague enough not to be objectionable under Section 3(1)(c), there was no material error of principle in the Hearing Officer’s decision under Section 3(1)(c).


The basis of the Hearing Officer’s decision under Section 3(1)(b) was firstly that the mark was an evocative and laudatory phrase which alluded to some vague character of the product and was thus unlikely to be perceived as an indication of origin and secondly that the mark could be “at home” on any manufacturer’s goods and was  therefore incapable of indicating that goods originated from any one particular undertaking.  Ms Michaels held that the Hearing Officer was entitled to form these views and ordered that the appeal be dismissed.


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Referral to the CJ on the degree of clarity and precision with which goods and services should be specified


CIPA’s Trade Mark Application, IP TRANSLATOR (Mr Geoffrey Hobbs QC sitting as an Appointed Person; O-215-10; 27.05.10)


CIPA applied to register IP TRANSLATOR for “education, providing of training, entertainment, sporting and cultural activities” in Class 41.  The Registrar refused the application on the basis that the goods and services applied for adopted the general words of the Class Heading for Class 41 of the Nice Classification and should therefore be interpreted in accordance with Communication No. 4/03 of the President of OHIM of 16 June 2003, which stipulated a rule that the use of the Nice Classification Class Headings in an application for a trade mark constituted a claim to all the goods or services within the relevant Class.  Accordingly, the Registrar held that in the absence of a request from CIPA to exclude certain services from the specification it should be taken to cover all of the services falling within Class 41.  As Class 41 included translation services, for which the Registrar held that IP TRANSLATOR could not be registered under Sections 3(1)(b) and 3(1)(c), the request for registration was refused.


CIPA appealed to an Appointed Person contending that its application did not specify (and therefore did not cover) translation services in Class 41 and for that reason the Registrar’s objections to registration were misconceived and should be set aside.

Geoffrey Hobbs QC considered that although it was incontrovertible that the nature of the goods or services covered by a trade mark application must be clearly identified, the particular degree of clarity and precision with which such goods and services must be identified remained unresolved.  Furthermore, it may be that the general words of the Class Headings of the Nice Classification may not be sufficiently specific to identify the various goods or services covered by an application with the requisite degree of clarity and precision.  Mr Hobbs QC considered that if the general words of a Class Heading were interpreted in accordance with Communication No. 4/03, the application would extend to goods and services not mentioned therein, which would be incompatible with even the most basis requirement for the goods and services to be identified with clarity and precision.  Mr Hobbs QC therefore referred three questions to the CJ regarding the degree of clarity and precision required in specifying the goods or services covered by the application and whether, where general Class Headings were used, it was necessary to interpret these in accordance with Communication No. 4/03.


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Passing Off


Blinkx UK Ltd v Blinkbox Entertainment Ltd (Floyd J; [2010] EWHC 1624 (Ch); 05.02.10)


Floyd J refused to grant an interim injunction which would have required Blinkbox to rebrand its business, holding that the balance of convenience did not favour the grant of an injunction and that Blinkx’s delay in bringing the action was fatal in any event.


Blinkx ran an online search engine which enabled internet users to search for and watch online films and television programmes.  In October 2007, Blinkbox launched its own website which enabled internet users to rent or buy films and television programmes to watch online.  Blinkbox applied for, and was granted, a Community trade mark for “Blinkbox” amongst others. 


Blinkx first became aware of the Blinkbox marks in January 2008, at which time it wrote to Blinkbox seeking an undertaking that Blinkbox would not use or register trade marks containing the word ‘Blink’.  A protracted period of what the Judge described as “fairly leisurely” negotiations ensued until August 2009 when it became clear that the negotiations were leading nowhere.  Blinkx did not commence proceedings for trade mark infringement and passing off until December 2009. 


In deciding whether to grant the interim injunction, the Judge applied the principles from American Cyanamid.  Each party had accepted that the case of the other was arguable and that damages would not be an adequate remedy if the wrong decision on the injunction were to be taken.  As to the balance of convenience, the Judge weighed on the one hand the conventional type of harm which would be suffered by the claimant if the injunction was not granted, being loss of sales and advertising revenue and dilution, against, on the other hand, the fact that grant of the interim injunction would essentially result in removing Blinkbox from the market under its exiting name: if an injunction were granted, Blinkbox would be required to rebrand its business and thus even if it were successful at trial, it would not then be  practical to revert back to the Blinkbox name. 


Blinkx submitted that Blinkbox could nonetheless preserve and transfer its goodwill to the rebranded site by undergoing a HTTP redirect (by which enquiries which are currently routed to the Blinkbox website are redirected to a rebranded site).  However, the Judge was not persuaded by this argument because users (who were required to provide their bank details via the site and would thus be fairly security conscious) might be suspicious of the authenticity of the redirected site and thus choose to take their business elsewhere. 


The Judge therefore concluded that the balance of convenience was against the grant of the injunction.  Having heavily criticised Blinkx for its delay in bringing the action, the Judge commented obiter that had Blinkx acted promptly whilst Blinkbox’s business was still in its trial phase, the balance of convenience may have favoured an injunction.  However, in the circumstances, it was unacceptable for Blinkx to wait two years in order to bring an action and then expect the Court to come to its aid as if the matter were one of unpredictable urgency. 


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DESIGNS


Community Registered Design


Shenzhen Taiden Industrial Co. Ltd v OHIM; Bosch Security Systems BV (GC (Second Chamber); T-153/08; 22.06.10)


Shenzhen registered the following design for ‘communications equipment’ as a Community Registered Design (CRD):


  


Bosch applied to invalidate Shenzhen’s CRD under Article 25(1)(b) on the basis that the design was not new and lacked individual character under Articles 4, 5 and 6 of the Community Designs Regulations, relying on its earlier international registered design for ‘units for conference systems’ reproduced below:


      


Bosch also submitted the following pictures taken from a brochure, press cuttings and advertisements showing a conference unit called ‘Concentus’ which it argued was identical to its international design:


  


The Invalidity Division rejected Bosch’s application but the BoA allowed the appeal to the extent that it found that the CRD was new, although it lacked individual character.  The GC upheld the BoA’s decision.


Disclosure of the earlier designs
The GC held that Bosch had proven that Bosch’s Concentus had been made available to the public before the priority date of the contested design as it was presented at a Spanish trade fair and featured in a specialised Spanish magazine.


The GC concurred with the BoA that the international design and the Concentus design were different representations of the same design, despite the Concentus design including additional features.


Informed user
The BoA was correct in its definition of the informed user being ‘anyone who regularly attends conferences or formal meetings at which the various participants have a conference unit with a microphone on the table in front of them’.  As a result of the informed user’s regular participation in conferences, he would be aware of the different models of conference units and their usual features.  In addition, he would show a relatively high degree of attention in relation to the conference units as he would need to familiarise himself with their functions and interfaces.


Degree of freedom
The BoA had not erred in finding that the degree of freedom of the designer of a conference unit was relatively wide.  While conference units required certain essential features such as a speaker, a microphone and buttons, they did not significantly impact on the form and appearance of the conference unit.  This finding was supported by the design corpus submitted by Bosch which showed a variation in shapes and configurations which clearly differed from the contested design.  Shenzhen’s submission that there was a general trend for small, flat, rectangular devices, often with hinged elements, was only relevant to the aesthetic perception of the design and not to the consideration of the individual character of the contested design.


Overall impression
The GC considered that the contested design and the earlier design produced the same overall impression as determined by the features which included the rectangular body of the unit with its upper surface sloping towards the user, the rectangular hinged speaker incorporating a card slot, the panel under the speaker and the microphone on a stem placed on the left side.  The differences between the two designs which Shenzhen had relied on mostly related to features which would not attract the attention of the informed user and were not sufficiently pronounced for him to distinguish between the two devices.


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MALICIOUS FALSEHOOD


Ajinomoto Sweeteners Europe SAS v Asda Stores Ltd* (Sedley LJ, Rimer LJ and Sir Scott Baker; [2010] EWCA Civ 609; 02.06.10)


Ajinomoto succeeded in its appeal from the decision of the High Court ([2009] EWHC 1717 (QB)) on the meaning of the words alleged to constitute a malicious falsehood.


Asda sold own-branded health foods carrying the text, “No hidden nasties” together with a legend reading, “No artificial colours or flavours and no aspartame”.  Ajinomoto, a producer and supplier of aspartame, which is a lawful food additive, brought an action for malicious falsehood. 


The meaning of the words complained of was tried as a preliminary issue.  Ajinomoto submitted that the words could bear three possible meanings: (i) that aspartame was harmful or unhealthy; (ii) that there was a risk that aspartame was harmful or unhealthy; or (iii) that aspartame was to be avoided.  Asda averred that the words meant that the foods were for customers who found aspartame objectionable. 


At first instance, Tugendhat J applied the ‘single meaning’ rule and found that the words bore the meaning submitted by Asda.  The single meaning rule, which is derived from the law of defamation, provides that the jury in an action for libel or slander shall determine the single meaning of the words complained of which is conveyed to the notional reasonable reader and shall base its verdict and any award of damages on the assumption that this was the sole sense in which all readers would have understood the words.  Put more simply, the words should be taken to bear a single meaning.  Tugendhat J interpreted this to mean that the Court should not select one bad meaning where other non-defamatory meanings were available.  Ajinomoto appealed.


Sedley LJ, giving the lead judgment, allowed the appeal.  He considered that the single meaning rule was anomalous, frequently otiose and where it was capable of being applied was productive of injustice.  Defamation and malicious falsehood were not so close as to be variants of a single tort but had rather developed with different characteristics, made different demands on the parties and redressed different things.  Thus, there was no reason why the single meaning rule ought to be imported from defamation into the tort of malicious falsehood. 


Rimer LJ concurred, adding that Tugendhat J had found that the meanings that reasonable consumers might take from the words complained of included both damaging meanings (i.e. that there was a risk that aspartame was harmful or unhealthy) and innocuous meanings (i.e. that the foods were for customers who found aspartame objectionable). However, he held that the innocuous meaning contended for by Asda was the single meaning.  Thus, the application of the single meaning rule operated so as to remove from the Court’s radar the body of consumers who held the former, damaging meaning and thus essentially required that the Court satisfy itself with a fiction which was contrary to its own finding. 


Katharine Stephens, Zoe Fuller and Gina Brueton


Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Nick Boydell, Taliah Davis, Hilary Atherton, Rob Hamblin, Zbigniew Wieckowski, Georgina Hart and Florian Foerster.


The reported cases marked * can be found at http://www.bailii.org/databases.html and CJ and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home


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