May 2010

01 May 2010

Katharine Stephens, Emily Peters, Zoe Fuller & Gina Brueton

This month we report on questions referred to the CJ relating to AdWords in Interflora Inc & Anr v Marks & Spencer PLC & Anr, we report on the issue of succession of re-sale rights combined with conflict of laws issues in Fundación Gala-Salvador Dali & Anr v Société des auteurs dans les arts graphiques et plastiques and we look at the case of Football Dataco Ltd & Ots v Brittens Pools Ltd & Ots where the Court considered whether database copyright subsisted in football fixture lists.


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








Decisions of the GC  

Case  

GC
T-361/08
Peek & Cloppenburg & Anr v OHIM; The Queen Sirikit Institute of Sericulture
(21.04.10)

Application (and where applicable, earlier mark)  



- silk (24)
- clothing made of silk (25)



- leather goods (18)
- clothing (25)
- advertising business services (35)
(German national registrations)
 

Comment

The GC dismissed the appeal from the BoA’s decision that there was no likelihood of confusion between the marks under Art 8(1)(b).


The GC concurred with the BoA’s conclusion that the marks differed visually.  Even if the relevant public perceived the earlier mark as a representation of a peacock, that representation was so far removed from the figurative element of the mark applied for that the relevant public would perceive them as visually different.


The marks also differed aurally, as the relevant public would use the words ‘Thai Silk’ when referring to the mark applied for. 


The BoA was, however, incorrect to conclude the signs at issue had no conceptual similarity.  The GC found that a weak conceptual similarity existed because both marks used images with analogous semantic content (i.e., they suggested an idea of beauty or elegance of the goods concerned), but the weak conceptual similarity and the identity of the goods was not sufficient to give rise to a likelihood of confusion.  Although it was possible for marks with analogous semantic content to give rise to a likelihood of confusion where the earlier mark had either inherent or acquired distinctive character, this was not the case here. 

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Case GC
T-488/07
Cabel Hall Citrus Ltd v OHIM; Casur S.C. Andaluza
(15.04.10)
Application

EGLÉFRUIT
- food products (29)
- agricultural products (31)
UGLI
- food products (29)
- agricultural products (31)
- drinks and beverages (32)


 


- fresh citrus fruit (cancelled in respect of oranges) (31)

Comment The GC dismissed the appeal, finding that there was no likelihood of confusion between the mark applied for and the earlier marks under Arts 52(1)(a) and 8(1)(b), despite the identity of the goods. The application for a declaration of invalidity failed.

The GC held that the marks EGLÉFRUIT and UGLI were dissimilar.  Visually, the marks were of different lengths and the element ‘fruit’ of the mark applied for could not be ignored, despite its low degree of distinctiveness. The pronunciation of the two signs also differed, due to the fourth letter ‘é’ and the presence of the element ‘fruit’. The applicant did not appeal the BoA’s decision that there were no conceptual similarities between the marks.

When comparing the figurative mark with EGLÉFRUIT, the GC held that there were clear visual differences between the marks; UGLI was the most important element of the word element of the figurative mark and the bulldog element had a high degree of distinctiveness. There was only a low degree of phonetic similarity; the elements ‘ugli’ and ‘eglé’ (which were pronounced differently) had a greater weight than the ‘fruit’ elements, due to their positioning at the beginning of the marks. There was no conceptual link between the marks.
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Decisions not yet in English
Case  

GC
T 103/06
Esotrade S.A. v OHIM; Antonio Segura Sánchez
(13.04.10)

Application (and where applicable, earlier mark)  

 


- handbags and leather bags (18)
- scarves, shawls, stoles and saris (25)



- leather goods and bags (18)
- ready-made clothing for outdoor and indoor wear (25)

Comment

The GC upheld the BoA’s decision to reject Esotrade’s application to register the mark.


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

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Case  

GC
T 514/08
Laboratorios Byly, S.A. v OHIM; Vasileios Ginis
(14.04.10)

Application (and where applicable, earlier mark)  

 


- cleaning and laundry, perfumes and cosmetics (3)
BYLY
- personal hygiene products and other cosmetics (3)
byly
- pharmaceutical preparations, baby food and plasters (3, 5)
- advertising and business management services (35)

Comment

The GC annulled the BoA’s decision to reject the opposition.


Having regard to the identical nature of the products, as well as to the high degree of similarity between the signs, there was a likelihood of confusion between the marks under Art 8(1)(b).







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Case  

GC
T-7/09
Schunk GmbH & Co.KG Spann- und Grieftechnik v OHIM
(21.04.10)

Application (and where applicable, earlier mark)  

 


mechanical machinery clamps (“chucks”) for processing manufacturing parts, in particular chucks for machinery tools and expandable chucks (7, 8)

Comment

 The GC upheld the BoA’s decision to reject Schunk’s application to register the mark.


The mark was devoid of distinctive character under Art 7(1)(b).  Schunk had not adduced sufficient evidence to establish distinctiveness acquired through use under Art 7(3). 


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Case  

GC
T 303/06 and T-337/06
UniCredito Italiano SpA v OHIM; Union Investment Privatfonds GmbH
(27.04.2010)

Application (and where applicable, earlier mark)  

UNIWEB
UNICREDIT WEALTH MANAGEMENT
- banking and financial affairs, insurance and real estate services (36)
UNIFONDS
UNIRAK


- various services including investment funds (36)

Comment

The GC annulled the BoA’s decision to reject Unicredito’s application to register the two marks.


There was no likelihood of confusion with the three earlier marks under Art 8(1)(b). 


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Case  

GC
T 392/06
Union Investment GmbH Privatfonds v OHIM; International Unicre-Cartão De Crédito
(27.04.10)

Application (and where applicable, earlier mark)  



- credit card services (36)
- communication over a computer network (38)





- various services including credit card services (35, 36)

Comment

The GC upheld the BoA’s decision to reject the opposition.


The BoA was correct in finding that Union Investment had not adduced sufficient evidence to establish a likelihood of confusion under Art 8(1)(b).


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Case  

GC
T-109/08 and T-110/08
Freixenet, SA v OHIM
(27.04.10)

Application (and where applicable, earlier mark)  


-sparkling wine (33)

Comment

The GC dismissed Freixenet’s appeals and upheld the BoA’s decisions to reject Freixenet’s applications to register the two marks. 


The marks were devoid of distinctive character under Art 7(1)(b) and had not acquired distinctive character through use under Art 7(3).


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Case  

GC
T-225/09
Claro S.A. v OHIM; Telefónica S.A.
(28.04.10)

Application (and where applicable, earlier mark)  


- apparatus for recording, transmission or reproduction of sound or images and telecommunications (9, 38)
CLARO
- various goods and services (9, 38)

Comment

The GC dismissed Claro’s appeal from the BoA’s decision.  The BoA had been right to dismiss as inadmissible Claro’s appeal from the decision of the Opposition Division to reject the registration of the mark under Art 8(1)(b).


Claro’s appeal was not admissible as it had failed to file a written statement of grounds for its appeal within the time limit, as required under Art 60.


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Case  

GC
T-586/08
Kerma SpA v OHIM
(29.04.10)

Application (and where applicable, earlier mark)  


Comment

The GC upheld the BoA’s decision to reject the application.


The mark was devoid of any distinctive character under Art 7(1)(b) as ‘bio’ indicated ‘ecological’ and ‘pietra’ referred to stone or stone based materials.



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Territorial scope to the definition of relevant public


Coin SpA v OHIM; Dynamiki Zoi AE (GC (First Chamber); T-249/08; 21.04.10)


Dynamiki applied to register FITCOIN as a CTM for a number of goods and services.  Coin SpA opposed the application under Article 8(1)(b) on the basis of a number of earlier figurative marks (five Italian registrations, a CTM and an international registration) all containing the element ‘coin’.


The Opposition Division rejected the opposition and the BoA dismissed Coin SpA’s appeal.  The BoA based its analysis only on three of the Italian registrations and took only the Italian general public’s perception into account when accessing the similarity of the signs and the likelihood of confusion.


The GC annulled the BoA’s decision.  In order to reject an opposition under Article 8(1)(b) it is necessary to establish that there is no likelihood of confusion on the part of the public throughout the territory in which the earlier mark/marks is/are protected. The BoA had therefore erred in confining itself to an analysis in relation solely to the Italian public, without taking into account the average consumers in the European Union countries and countries protected by the International registration.


This finding was not altered by OHIM’s submission that a comparison of the signs from the perspective of the other relevant consumers would not change the conclusion regarding the similarity of the signs and likelihood of confusion.  It could not be ruled out that a full examination in relation to all of the relevant consumers might alter that conclusion.








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Restitutio in integrum


Rodd & Gunn Australia Ltd v OHIM (GC (First Chamber); T-187/08; 20.04.10)


In 1998, a figurative mark showing a gun dog was registered in Classes 16, 18 and 25. Page White & Farrer (“PW&F”) originally represented the proprietor before OHIM. In 2004, PW&F was notified by the proprietor’s New Zealand representative that the responsibility for the renewal of the proprietor’s trade marks had been transferred to Computer Patent Annuities Ltd (“CPA”). 


In 2006, OHIM notified PW&F that the registration would expire that year and reminded PW&F of the deadlines for the renewal of the mark. The proprietor’s New Zealand representative informed CPA of the need to renew the mark, however, despite an internal check performed by CPA eight months later which highlighted the need to renew, CPA failed to do so and in 2007 OHIM notified PW&F that the mark had been cancelled.


PW&F filed a request for renewal of the mark and an application for restitutio in integrum under Article 78(1) of Regulation No 40/94 (now Article 81(1) of Regulation No 207/2009). OHIM rejected the application and the proprietor appealed to the BoA which dismissed the appeal. The proprietor then appealed to the GC. 


In order to succeed in a restitutio in integrum application it is necessary to show that the party acted with all due care required by the circumstances. This requirement lay, in the first in instance, with the proprietor of the mark. If the proprietor delegated administrative tasks relating to the renewal of the mark, it must ensure that the delegate offered the necessary assurances for the proprietor to be satisfied that such tasks would be carried out correctly. The delegate acts on behalf of and in the name of the proprietor and is therefore subject to the requirement to exercise due care just as much as the proprietor.


In dismissing the appeal, the GC concluded that the failure to renew did not result from exceptional circumstances, but from a more general lack of vigilance by CPA. The failure to renew the mark was not discovered by CPA until eight months after CPA was notified of the need to renew the mark. When no renewal was subsequently made, CPA’s control procedures did not detect this. Furthermore, CPA had previously encountered difficulties in complying with deadlines for CTMs as there had been two earlier instances in which CTMs had expired. The proprietor’s submissions that CPA had encountered difficulties linked to (i) the internal reorganisation of its offices; and (ii) OHIM’s online payment system did not alter the GC’s conclusion. 








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Questions referred to the CJ regarding AdWords


Interflora Inc & Anr v Marks & Spencer PLC & Anr* (Arnold J; [2010] EWHC 925 (Ch); 29.04.10)


Following the Court of Justice’s (CJ) recent judgment in joined cases C-236/08 to C-238/08 Google France and Google (reported in the CIPA Journal, April 2010) the High Court was requested by the CJ to state whether it wished to maintain its reference for a preliminary ruling in relation to a keyword advertising dispute between Interflora and Marks & Spencer (reported in the CIPA Journal, June 2009).  Details of the 10 questions originally referred can be found at http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:C:2009:282:0019:0020:EN:PDF.Arnold J withdrew questions 5 – 10 (questions 6 – 10 being dependent on question 5), but maintained questions 1 – 4.


Question 5 addressed the potential liability of the search engine operator. It was clear from the Google France decision that the search engine operator does not use the sign by the acts contained in the question. However, in relation to the questions going to the liability of a trader who sells goods via its website which are identical or similar to those of the trade mark proprietor, it remains unclear as to whether all of the acts listed in question 1 amount to “use”, and if so, whether they are use “in relation to” goods or services (question 2). Further, the concept of the “functions of a trade mark” remained unclear, specifically as regards: which of a trade mark’s functions may be affected by use of a sign; what is required in order to establish that such functions are liable to be affected in order to found a claim under Article 5(1)(a); and the nature of the relationship between a claim under Article 5(1)(a) and a claim under Article 5(2) where there are identical marks/signs and identical goods/services in issue. 
 



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Decisions of the Appointed Person, Q4 2009
Case  

O-315-09
General Traders Ltd v MFI Group Ltd
(09.10.09)

Application (and where applicable, earlier mark)  


 SCHREIBER
- Furniture, mirrors, picture frames; garden furniture; pillows and cushions etc. (20)

Comment

Geoffrey Hobbs QC awarded MFI £1,983 in costs following General Traders abandoning the appeal and as the parties being unable to agree a figure for costs. 

The HO revoked the mark SCHREIBER for non use under s.46(1)(a) & (b) for all goods in class 20 except ‘domestic fitted kitchen and bedroom furniture’ and  ‘mirrors; parts and fittings for furniture’.  General Traders, the applicant for revocation, initially appealed but later withdrew its appeal.

Mr Hobbs considered MFI’s itemised summary of expenditure and used the published scale figures of the Registry in relation to quantifying the award to be made in respect of each category of expenditure claimed.

Mr Hobbs awarded MFI costs in respect of a number of categories including for General Traders’ delay in abandoning the appeal.  Mr Hobbs was reluctant to award costs in respect of engaging in communications with the clients or the administrators’ solicitors.  The award of £1,983 was in excess of the offer of £400 made by General Traders but was significantly reduced from the £5,774 set out in the proprietor’s itemised summary of work.







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Case  

O-371-09
G&D Restaurant Associates Ltd v Pasticceria E Confetteria Sant Ambroeus SRL
(05.11.09)

Application (and where applicable, earlier mark)  



-confectionary, sweets, sweetmeats etc. (30)

Comment

Anna Carboni upheld the appeal from the HO’s decision that the proprietor had made genuine use of the mark in relation to certain goods during the relevant period and as such it should not be revoked for non-use under s.41(1)(b).

Ms Carboni held that the HO had made a material error in not taking account of certain evidence as to use of the mark.  The HO ignored or did not accept that certain invoices annexed to the witness statement did not relate to the supply of goods in the UK as the witness had attested to.  Ms Carboni held that there was nothing inherently incredible about the claims made in the statement and that if G&D had wanted to criticise the proprietor’s evidence without cross examination, they should have submitted written observations well in advance (following TPN 5/2007).  Absent any challenge along these lines, the HO should have assumed that the witness believed the contents of his statement to be true and should not have readily followed the alternative theory put forward by G&D.

The HO had taken one instance of use into consideration and found it insufficient.  Ms Carboni took account of all of the transactions disclosed amounting to some €17,000 in holding that there had been genuine use of the mark in relation to certain of the goods in the specification.  However, the mark was revoked in respect of other goods where no evidence of use was advanced.


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Case  

O-398-09
Lafarge Cement UK Plc v Cemex UK Operations Ltd

Application (and where applicable, earlier mark)  

 



- cement mixtures; cement based materials and mixtures; cementitious products and materials; cement and ash mixtures; sand; gravel; aggregates (19)

Comment

Amanda Michaels upheld the HO’s decision under s.3(1)(c) rejecting the application for invalidity.  The device elements of the marks did not exclusively indicate a characteristic of the goods and nor were they de minimis when considering the mark as a whole. 


In relation to the s.3(3)(b) objection, the HO noted that the marks were phonetically equivalent to “CEM II” and “CEM III”, being types of cement defined by a British Standard.  He held that the use of the marks on sand, gravel and aggregates was inherently deceptive as those materials did not contain cement.  However, he accepted the offer of a limitation that the goods of the specification were all made predominantly from cement falling within the Standard.


Ms Michaels held that the limitation offered by Cemex did not have the necessary curative effect in respect of sand, gravels or aggregates, and allowed the appeal on this point.  However, as to the remaining goods Ms Michaels made no decision, leaving the decision to be dealt with following Cemex’s application to amend its specification.


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COPYRIGHT


Succession of re-sale rights


Fundación Gala-Salvador Dalí & Anr v Société des auteurs dans les arts graphiques et plastiques (ADAGP) & Otr (CJ (Third Chamber); C-518/08; 15.04.10)


The Spanish painter Salvador Dalí died in 1989 in Spain leaving five heirs at law.  By will he had appointed the Spanish State as his sole legatee of his intellectual property rights, which were administered by the Fundación Gala-Salvador Dalí.  This granted an exclusive worldwide mandate to VEGAP, a Spanish society, to manage the copyright in Dalí’s works.  VEGAP granted a contract to ADAGP, which was responsible for managing Dalí’s French copyright. 


In accordance with the relevant provisions of the French Intellectual Property Code (IPC), ADAGP paid the resale right monies it received from auctions of Dalí’s works in France to Dalí’s heirs.  Fundacion Gala-Salvador Dalí and VEGAP challenged this arrangement in the Paris Regional Court, which made a reference to the CJ asking whether Directive 2001/48 permitted France to retain a resale right for heirs to the exclusion of legatees or successors in title.


The CJ first noted that it was a question of national law to determine whether French law was applicable, given that Dalí was Spanish and died in Spain.  Its answer to the reference was made on the assumption that French law was applicable to the dispute.


Article 6(1) of Directive 2001/84 provides that the resale right royalties shall be payable to the author of the work and after his death to those entitled under him/her.  The CJ found that the Directive gave no guidance in relation to the concept of ‘those entitled’ under the author of the work.  In the absence of any express definition of the concept, the CJ had to examine the objectives which governed the Directive’s adoption. 


The CJ reviewed the Directive’s recitals and found it had been adopted on the basis of two objectives.  First, to ensure that artists shared in the economic success of their original works of art and, second, to end the distortions of trade between Member States caused by differences in the payment of a resale right.


The CJ concluded that the first objective was achieved by making the resale right inalienable to the artist.  It was not compromised by transferring the right to certain categories of persons to the exclusion of others after the artist’s death, as the transfer was ancillary to that objective.  The second objective was achieved by harmonisation regarding the works of art and sales affected by the resale right as well as the basis for and rate of the royalty.  The harmonisation of the internal market was not affected by the Member States’ laws of succession.  Accordingly, each Member State was entitled to define the categories of persons entitled to the right after an artist’s death. 


The CJ therefore found that Directive 2001/84 did not preclude a provision of national law, such as the French IPC, which reserved the benefit of the resale right to an artist’s heirs at law alone to the exclusion of testamentary legatees. It was for the referring Court to take into account all of the relevant rules for the resolution of conflicts of laws relating to the transfer on succession of the resale right.


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DATABASE RIGHTS


Database copyright and sui generis database right


Football Dataco Ltd & Ots  v Brittens Pools Ltd & Ots* (Floyd J; [2010] EWHC 841 (Ch); 23.04.10)


The Judge held, in a ruling on a preliminary issue, that the claimants’ football fixture lists were protected by copyright in a database under Sections 3 and 3A of the CDPA but were not protected by sui generis database right under the Copyright and Rights in Databases Regulations 1997 (implementing the Database Directive) or by any other copyright.


The Judge concluded that the process of preparing the fixture lists involved very significant labour and skill and that the work was not mere “sweat of the brow”, meaning the application of rigid criteria to the processing of data such as in the compilation of a telephone directory.


Sui generis database right


The scope of the sui generis database right in relation to football fixture lists had recently been considered by the Court of Justice (CJ) in a series of related cases in which Fixtures Marketing Ltd, a company associated with the claimants and charged with exploiting their rights in the fixture lists outside the UK, commenced actions in Finland, Sweden and Greece for copyright and database right infringement against companies using the claimants’ fixture lists without a licence (Cases C-46/02 Fixtures Marketing Ltd v Oy Veikus AB (Finland), C-338/02 Fixtures Marketing Ltd v Svenska Spel AB (Sweden) and C-444/02 (Fixtures Marketing Ltd v Organismos Prognostikon Agonon Podosfairou (Greece)).  The CJ held that sui generis database right did not subsist in the fixture lists because the claimants’ investment was primarily in creating the data, and that the extra effort in obtaining, verifying or presenting the data was trivial and hence insufficient to attract protection via the sui generis database right.  Floyd J reached the same conclusion on the evidence before him. The separate work which went into obtaining, verifying or presenting the data in the fixture lists was trivial and thus the lists were not protected by the sui generis database right.


Database copyright


Floyd J adopted the following approach with respect to determining whether database copyright subsisted in the fixture lists:


1. identify the data which was collected and arranged in the database.  The Judge held that this comprised at least the dates on which matches would be played, the matches to be played and the dates of specific matches;


2. isolate the work which can properly be regarded as ‘selection and arrangement’, that is the work which went into the database by way of collecting and arranging the data.  This could include work done prior to final creation of the data, for example selection decisions made about the contents of the database in the course of arriving at the final version;


3. ask whether the selection and arrangement work was the author’s own intellectual creation and in particular whether the author had exercised judgment or discretion.  The Judge held that there were numerous stages in allocating matches to dates and in selecting dates where the requisite judgment and discretion had been exercised; and


4. ask whether the work was quantitatively sufficient to attract copyright protection.  The Judge concluded that it undoubtedly was, holding that the quantum of relevant work involved in producing the fixture lists was great and was made more complex by the fact that no two fixtures could be freely interchanged without affecting others. 


Copyright irrespective of database


Floyd J held that there was no scope for subsistence of copyright by any route other than as a database.  As it could not conceivably be (and was not) suggested that individual entries in the fixture lists or the list of dates or matches could themselves be the subject of copyright, the only way in which the fixture lists could attract copyright was by virtue of the collection and arrangement of the data contained therein.


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Katharine Stephens, Zoe Fuller, Emily Peters 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 Aries, Hilary Atherton, Nick Boydell, Taliah Davis, Victoria Evans, Tim Harris and Dania Rifaat.


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.