This month we report on the registration of .eu domain names in bad faith, highlighted by the Interportal und Marketing GmBH v Richard Schlicht  case, plus recent case law in the area of passing off, including discussion of what amounts to goodwill according to the UK courts. Also, we highlight the case of Lancôme parfums et beauté & Cie SNC v OHIM which considers the right for a law firm to bring cancellation proceedings.

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  • Enercon GmbH v OHIM; Hasbro, Inc
  • O2 (Germany) GmbH & Co. OHG v OHIM
  • Rahmi Özdemir v OHIM
  • PromoCell bioscience alive GmbH  v OHIM
  • Lancôme parfums et beauté & Cie SNC v OHIM
  • Internetportal und Marketing GmbH v Richard Schlicht
  • Hotel Cipriani SRL & Ots (“Hotel Cipriani”) v Cipriani (Grosvenor Street) Ltd & Ots
  • Nanjing Automobile (Group) Corporation & Ots (“NAC”) v MG Sports and Racing Europe Limited & Anr  (“SREL”)
  • Ion Associates Limited v Philip Stainton & Anr
  • Thorworld Industries Ltd v Plant Handling Ltd
  • Gary Milton Monroe v Intel Corporation
  • Radiocomms Systems Limited (“Radiocomms”) v Radio Communications Systems Ltd (“RCS”)
  • Please note following the entry into force of the Treaty of Lisbon on 1 December 2009, the CFI has been renamed the General Court (GC).


    Enercon GmbH v OHIM; Hasbro, Inc

    Application (and where applicable, earlier mark)  

    - various goods (16,18, 24, 25, 28 and 32)
    - various goods (16, 18, 24, 25, 28, 30 and 32)


    The GC dismissed Enercon’s appeal from the BoA’s decision to refuse registration of the mark under Art 8(1)(b).

    The GC dismissed Enercon’s submission that the ‘transformers’ element was the dominant element of the earlier mark.  The BoA was correct to conclude that the ‘transformers’ and ‘energon’ elements of the earlier mark were equally distinctive and dominant, despite ‘transformers’ being the first part of the sign and longer than the ‘energon’ element.

    Visually, the mark applied for and the ‘energon’ element of the earlier mark were highly similar and thus there was a certain degree of visual similarity when comparing the marks’ overall impression.  Similarly, there was a certain degree of phonetic similarity between the marks when considered as a whole.  Conceptually, the BoA did not err in finding that the words ‘energon’ and ‘enercon’, though not having any particular meaning, were likely to be perceived as evoking the notion of energy.  There was thus a low degree of conceptual similarity between the marks. 

    Taking into account the degree of similarity between the marks as a whole and the identity of the goods, there was a likelihood of confusion under Art 8(1)(b).


    O2 (Germany) GmbH & Co. OHG v OHIM

    Application (and where applicable, earlier mark)  

    - services in connection with online services and telephone information services and other telecommunications (38)
    - data processing goods (9)
    - various computer and engineering services (42)


    The GC overturned the BoA’s findings that the mark should be refused under Arts 7(1)(b), (c) and 7(2). 

    The BoA was correct to conclude that the juxtaposition of the words ‘home’ and ‘zone’ was not unusual and that one of the possible meanings of the mark was ‘home area’ or ‘local area’. However, in relation to the telecommunication services in Class 38, the GC held that, under Art 7(1)(c), the BoA had failed to establish that HOMEZONE could designate such a service or one of its characteristics.  The BoA merely referred to examples from the mobile telephone market given by the examiner, without describing them even in summary form, nor specifying how the mark HOMEZONE was capable of designating the services.  In additional, the GC disregarded findings made by the examiner on the basis of information from Wikipedia, as such content can be amended at any time by any visitor, even anonymously.

    The BoA’s findings of descriptiveness in respect of the remaining goods and services was overturned because they were based on the premise that HOMEZONE was descriptive of telecommunications services, and the remaining goods and services were offered at the same time as the mobile telephone service, or enabled such a service to be provided. 

    The BoA’s finding that HOMEZONE was devoid of distinctive character under Art 7(1)(b) because of its descriptiveness under Art 7(1)(c) was therefore also overturned.


    Rahmi Özdemir v OHIM; Aktieselskabet af 21. november 2001

    Application (and where applicable, earlier mark)  

    - clothing, footwear, headgear (25)
    inter alia
    - clothing, footwear, headgear (25)


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

    Taking into account that the marks at issue comprised a monosyllabic first word, composed of four or five letters respectively (the first two of which were identical) and a second word ‘Jones’, the GC concluded that the differences between the marks were not sufficient to dispel a finding of visual similarity.

    The marks were also similar phonetically, since the beginning of the first word of each mark was pronounced in a very similar manner and the second word was identical. The inclusion of the ampersand in the earlier mark was not sufficient to outweigh the phonetic similarities. The ampersand would be pronounced by the consumer as an ‘and’ which was not very striking phonetically.

    Conceptually, the BoA was correct to conclude that both marks refer to people’s names and contain the surname Jones. It was conceivable that consumers might interpret the marks at issue as referring to the same person. The presence of the ampersand did not exclude all conceptual similarity between the marks.

    The GC concurred with the BoA’s finding of a likelihood of confusion.

    Decisions not yet in English

    PromoCell bioscience alive GmbH  v OHIM

    Application (and where applicable, earlier mark)  

    - biomedical and biochemical products for industrial use (1,5)
    - organisation of conferences, workshops and seminars (41)
    - scientific and industrial research services in biochemical field (42) 


    The GC upheld the BoA’s decision to reject the application.
    The mark was descriptive under Art 7(1)(c).


    Deutsche BKK v OHIM

    Application (and where applicable, earlier mark)  

    - health insurance (36)
    - health information provision (41)
    - health and beauty services (44)


    The GC upheld the BoA’s decision to reject the application.
    The mark was descriptive under Art 7(1)(c) and had not acquired distinctive character through use under Art 7(3).


    Right for a law firm to bring cancellation proceedings

    Lancôme parfums et beauté & Cie SNC v OHIM; CMS Hasche Sigle (ECJ (Second Chamber); C-408/08; 25.02.10)

    CMS (a law firm) brought a cancellation action against Lancôme’s COLOR EDITION mark. The GC (then CFI) upheld the BoA’s decision that the mark was invalid under Article 7(1)(c). Lancôme appealed, submitting that a law firm could not bring a cancellation action in its own right. The ECJ upheld the GC’s decision.

    The case concerned: (i) whether, under Article 55(1)(a), a law firm could bring a cancellation action in its own right; and (ii) whether the mark COLOR EDITION should be annulled under Article 7(1)(c) for being descriptive of ‘cosmetic products and make up’ in Class 3.

    In relation to (i), the ECJ held that the right to apply to OHIM for a declaration of invalidity of a CTM was not subject to the rules of admissibility applicable to judicial proceedings. The GC was correct to hold that proceedings under Article 55(1)(a), unlike Articles 55(1)(b) and (c), could be submitted by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which had the capacity in its own name to sue and be sued. The legislation was not intended to restrict the group of persons able to apply for a declaration of invalidity under Article 55(1)(a). There was no basis for Lancôme’s submission that the regulation must be interpreted as requiring the applicant to have an actual or potential economic interest in the cancellation of the contested mark.

    In relation to (ii), the ECJ concluded that the GC’s findings that:

    1. the sign COLOR EDITION was composed exclusively of indications which may serve to designate certain characteristics of the goods in question; and

    2. the association of ‘color’ and ‘edition’ was not unusual and did not create an impression sufficiently far removed from that produced by the simple juxtaposition of the verbal elements of which it was composed to alter its meaning or scope were not vitiated by any error of law.

    The ECJ dismissed the appeal.


    Registration of .eu domain names in bad faith

    Internetportal und Marketing GmbH v Richard Schlicht (AG Trstenjak for the ECJ; C-569/08; 10.02.10)

    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 (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 ECJ 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 AG was of the opinion that a Domain Name holder and national trade mark proprietor had a right within Article 21(1)(a) provided that the trade mark had not been cancelled on grounds of bad faith or otherwise.  That right existed even if the trade mark providing the basis for the Domain Name differed therefrom by consequence of the correct elimination from the latter of special characters.  It was a matter for the national court to decide as to whether, in fact, those special characters could have been re-written rather than eliminated.  As to whether Internetportal’s conduct constituted bad faith, the AG concluded that the situations specified in Article 21(3) were not exhaustive and noted the following as particular relevant insofar as the sole purpose of the registration was to be able to request registration of the corresponding domain name during the first phase of registration:

    • the circumstances in which the trade mark was acquired, in particular the intention not to use it on the market for which protection was sought (here Schlicht did not intend to use the mark in Sweden for safety belts);

    • the fact that the trade mark was a German language generic name; and

    • the possibly abusive use of the ampersand in order to influence the transcription rules laid down in Regulation 874/2004.
      Although all three steps considered in isolation were formally valid, when taken as a whole they pointed to an intention to evade the provisions of Regulation 874/2004.  By acting in that way, Internetportal obtained an advantage over other interested parties.  The AG also noted that the large scale registration of trade marks using the ampersand character process could also be evidence of lack of good faith.

    Although all three steps considered in isolation were formally valid, when taken as a whole they pointed to an intention to evade the provisions of Regulation 874/2004.  By acting in that way, Internetportal obtained an advantage over other interested parties.  The AG also noted that the large scale registration of trade marks using the ampersand character process could also be evidence of lack of good faith.


    Passing off and what amounts to goodwill in the UK; Trade mark infringement and the own name defence

    Hotel Cipriani SRL & Ots (“Hotel Cipriani”) v Cipriani (Grosvenor Street) Ltd & Ots (“CGS”)* (Jacob, Lloyd, Stanley Burnton LJJ; [2010] EWCA Civ 110; 24.02.10)

    The Court of Appeal (Lloyd LJ giving the judgment) dismissed CGS’s appeal from the decision of Arnold J ([2008] EWHC 3032 (Ch) reported in the CIPA Journal, December 2008).  CGS was held to infringe the Cipriani CTM.  The defence that the mark had been registered in bad faith under Article 51(b) was not made out, nor was the own name defence under Article 12(a).  Further, CGS did not have any concurrent reputation and therefore Hotel Cipriani succeeded in its claim to passing off.

    The First Claimant owned and operated Hotel Cipriani in Venice and was the registered proprietor of a CTM for: (i) the word Cipriani for hotels, restaurants, and bars, among other goods and services, in Class 43; and (ii) the words Hotel Cipriani in respect of the same goods and services. It was also the registered proprietor of two UK trade marks (but there was no claim to infringement of these marks).

    Since April 2004, the First Defendant had operated a restaurant called Cipriani London, commonly referred to simply as Cipriani (the “Restaurant”).  The Second Defendant was the sole director of the First Defendant. The Third Defendant was a Luxembourg company which licensed the First Defendant to use the name Cipriani. The First and Third Defendants were in the same group of companies.  Although there was a historical link between members of the Cipriani family, who ran the Defendant companies, and the Claimants, any family connection ceased at least one generation ago.

    Subject to the legal issue set out under the heading “passing off” below, Lloyd LJ dealt with the case on the footing that the goodwill of Hotel Cipriani in England was exclusive as against CGS, even though it was not, or might not be, exclusive as against two other establishments in Europe using the Cipriani name; the Hotel Villa Cipriani (in Torcello in the Venetian lagoon) and Locanda Cipriani (in Asolo).

    Bad Faith
    The CTMs had not been registered in bad faith under Article 51(b), nor had the UK marks under Section 3(1)(b) (Chocoladenfabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, Case C-529/07 followed).  At the dates of the applications for the marks, the Claimants were the only significant users of the mark Cipriani in relation to hotels or restaurants in Europe (other than the two exceptions mentioned above).  The Cipriani family (who ran CSG) had no right to use the mark in any way which would have been entitled them to any degree of local legal protection.  As such, the application for the CTM could not have been calculated to restrict the Cipriani family’s right to the mark, nor any apparent right to the mark.

    Own Name Defence
    Use of Cipriani by CGS did not constitute use of CGS’s own name under Article 12(a) as this was neither its registered company name nor its trading name (if the latter was to be taken to be Cipriani London).  Lloyd LJ held that the defence depended on: (a) what the trading name was that had been adopted; (b) in what circumstances it had been adopted; and (c) depending on the relevant circumstances, whether the use was in accordance with honest practices.  Arnold J had restricted the defence to a company’s true corporate name, so in this respect Lloyd LJ differed in his judgment, but nevertheless held that the Judge was right to find that the defence did not apply.  The Judge was entitled to come to that conclusion, on the basis of the various cumulative factors which he enumerated, that the use by CGS of Cipriani amounted to unfair competition with Hotel Cipriani and could not, therefore, be justified under the proviso “in accordance with honest practices”.  This was the case, even if the word Cipriani was to be regarded as the First Defendant’s own name.  Further, the defence was of no assistance to the Second and Third Defendants because neither of them was trading (Asprey & Garrard Ltd v WRA (Guns) Ltd [2001] EWCA Civ 1499 followed).

    Passing Off
    There was a difficult legal issue arising out of this case:  What is needed to prove that a business based abroad which has a reputation in the UK also has goodwill in the UK?  CGS’s appeal tested the question of law in two ways:  first, could Hotel Cipriani show sufficient goodwill and second, if it could, why, as the Judge held, could CGS not show sufficient goodwill for there to be a concurrent reputation?

    Lloyd LJ held that Anheuser-Busch v Budejovicky Budvar NP [1984] FSR 413 (“Budweiser”) was authority for the proposition that an undertaking which seeks to establish goodwill in relation to a mark for goods cannot do so, however great may be the reputation of its mark in the UK, unless it has customers among the general public in the UK for those products. To that extent Budweiser was binding on the Court of Appeal in this case. 

    On the facts, the Court of Appeal held that the Hotel Cipriani had goodwill in the UK despite the fact that it provided services outside the UK.  Around 30% of Hotel Cipriani’s guests were British with bookings being made directly from the UK as well as Hotel Cipriani’s significant marketing to consumers in the UK.  In contrast, as at April 2004, the date the Restaurant was opened, the Cipriani family had no goodwill in the UK by virtue of their overseas businesses.  Their restaurants in New York had a slight reputation in the UK and their bar, Harry’s Bar, in Venice had a number of English customers, but this was not a sufficient association with the Cipriani mark.

    Lloyd LJ was not prepared to go further than that.  He ended his judgment with the comment “It is fair to say that, especially in the circumstances of the present day, with many establishments worldwide featuring on their own or shared websites, through which their services and facilities can be booked directly (or their goods can be ordered directly) from anywhere in the world, the test of direct bookings may be increasingly outmoded. It would be salutary for the test to be reviewed in an appropriate case. However, it does not seem to me that this case offers a suitable opportunity. I therefore decide the case on the basis indicated above, without wishing to prejudice an argument in a later case that the true test may be wider, other than to the extent of my decision that, whatever the exact test may be, the Defendants do not pass it.”


    Trade mark infringement

    Nanjing Automobile (Group) Corporation & Ots (“NAC”) v MG Sports and Racing Europe Limited & Anr (“SREL”) * (Blakburne J; [2010] EWHC 270 (Ch); 19.02.10)

    The Judge held that SREL’s use of various MG trade marks including MG, MG X POWER and the MG logo (the “Marks”) was an infringement of NAC’s rights and amounted to passing off.  NAC was the rightful owner of the Marks as it had acquired them from the liquidators of MG Rover Group and the Marks were excluded from the transfer of assets to SREL under a later agreement with the liquidators.  The Judge further held that the Marks were not invalid under Section 46(1)(d).  Mr Riley, the Second Defendant, principal director and majority shareholder of SREL was held to be liable as a joint tortfeasor.

    NAC acquired certain assets and intellectual property from the administrators of MG Rover Group under an agreement executed in 2005.  This included a large number of trade marks used in connection with the business of MG Rover Group but excluded the MG sports car businesses.  In 2007, SREL acquired various assets in relation to the MG SV sports car and racing car business.  SREL claimed that it was the proprietor the Marks by virtue of the 2007 assignment.

    The Judge held that the MG marks had been assigned to NAC under the 2005 agreement.  As such the liquidators were not capable of assigning the Marks to SREL under the 2007 agreement and in any event, the Judge held that the agreement specifically excluded the Marks from the ambit of that asset transfer.  The Judge further rejected the invalidity attack under Section 46(1)(d) as the only use of the Marks was by SREL and this was not use by the registered proprietor or with its consent.  NAC did not consent to SREL’s use of the Marks and as such, there was no misleading use.

    The Judge held that Mr Riley’s actions in directing SREL in respect of the infringement went beyond the exercise of constitutional control.  In giving evidence Mr Riley was unable to distinguish between his actions and those of SREL and no board minutes were produced.  This gave the overall impression that Mr Riley procured and shared a common design as to the taking place of infringement and as such the Judge held him to be liable as a joint tortfeasor with SREL.


    Selected Decisions of the Appointed Person


    ION Associates Limited v Philip Stainton & Anr

    Application (and where applicable, earlier mark)  

    - children’s waterproof and non-waterproof equine, horticultural, agricultural and general outdoor weather boots (25)
    -clothing, footwear, headgear (25) (CTM)


    Anna Carboni dismissed the appeal from the HO’s decision and allowed the opposition under s.5(2)(b).

    Ms Carboni held that the HO had correctly carried out a global assessment in determining that the marks were similar. The HO held that TAYBERRY and MUDDIES have independent distinctive character within the composite mark but that COLLECTION had extremely low distinctive significance.  The applicant’s goods were a subset of goods within the term ‘footwear’ in the specification of TAYBERRY MUDDIES COLLECTION and the points of similarity between the marks and the identical goods created a likelihood of confusion amongst the average consumer. 

    Ms Carboni held that the applicant’s argument that it had made use of MUDDIES before the opponent and therefore under Art. 6(2) of the Directive and/or Art. 107 of the Regulation it avoided infringement and consequently it was appropriate that its application should be registered to reflect the fact that it could use the mark in a specific locality, was wrong in law.  Art. 6(2) did not give such a right and in any event was irrelevant as TAYBERRY MUDDIES COLLECTION was a CTM.  Art. 107 did not get the applicant any further.  In addition, it would not be in the interests of fairness to Philip Stainton to extend the scope of protection given to MUDDIES beyond a locality by registration of a national mark. 


    Thorworld Industries Ltd v Plant Handling Ltd

    Application (and where applicable, earlier mark)  

    - ramps for the loading and unloading of goods vehicles; wheelchair ramps; doorway/threshold ramps; curb/step ramps (7)
    EASYRAMPS (unregistered)


    Professor Ruth Annand dismissed the appeal from the HO’s decision.  The HO partially allowed the opposition under s.5(4)(a) based on Plant’s goodwill in the unregistered trade mark EASYRAMPS used in relation to container loading ramps.  There was no appeal against this part of the decision.  The HO also held that Thorworld was the senior user in relation to wheelchair ramps, doorway/threshold ramps and curb/step ramps and restricted the application to these good.  Thorworld appealed.

    Professor Annand held that the HO had not misinterpreted Thorworld’s evidence which showed use of EASYRAMP in relation to disabled ramps but did not show sales of container loading ramps under the EASYRAMP mark.  The HO was therefore entitled to restrict the application in the way that she did.


    Gary Milton Monroe v Intel Corporation


    Application (and where applicable, earlier mark)  


    - Various services (9, 42)

      - Various goods and services in (9, 42)


    Geoffrey Hobbs QC dismissed the appeal from the HO’s decision to allow the opposition under s.5(2)(b). The HO was entitled to reach the conclusion that he did; the differences between the marks were insufficient to drown out the indication of trade origin by the presence of INTEL in the applicant’s marks.

    Mr Hobbs maintained his refusal given at an earlier hearing (reported in the CIPA Journal, March 2009) for permission for the applicant to adduce evidence for the first time on appeal contesting the distinctiveness of INTEL or to include a complaint that the HO should not have allowed an Appointed Person (Anna Carboni) to appear on behalf of the Intel Corporation without Mr Munroe’s consent.

    Finally, Mr Hobbs held that s.6A is compatible with the Directive. Mr Munroe’s acceptance on Form 8A of Intel’s use of its marks amounted to an admission that the statements of use were correct and it would be unjust to allow him to withdraw it.


    Summary Judgment Refused

    Radiocomms Systems Limited (“Radiocomms”) v Radio Communications Systems Ltd (“RCS”) (Floyd J; [2010] EWHC 149 (Ch) 15.01.10)

    The Judge refused to grant summary judgment in respect of one part of the passing off claim as Radiocomms failed to demonstrate that the defence had no realistic prospect of success. 

    Radiocomms’ case was that RCS and its director had passed its business off by expressly saying that RCS was Radiocomms and by referring to Radiocomms’ company number and Croydon place of business when liaising with suppliers.  Despite the evidence looking strong, the Judge held that a Court was not in a position to adjudicate on contested factual issues at an interim stage; the allegations amounting to conspiracy and forgery. Given that the summary judgment application was made in relation to only part of the case, the Judge held that it would be in the interest of justice to try all issues together.

    In addition to the other part of the case, where passing off was alleged due to the full company name of RCS being shortened to “Radio Comms Systems”, the Judge continued the interim injunction previously granted by Norris J.  Given that RCS denied the conduct complained of, continuing the injunction would not cause irreparable harm.

    Katharine Stephens, Zoe Fuller and Emily Peters

    Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Nick Boydell, Jack Jones, Claire Barker, Nathan Capone, Nadia Hussein.

    The reported cases marked * can be found at and ECJ and GC decisions can be found at