October 2010

01 October 2010

Katharine Stephens, Zoe Fuller, Gina Brueton

This month we report on the high profile case concerning "The Stig", a character from the BBC television programme, Top Gear, in the case of British Broadcasting Corporation v HarperCollins Publishing Ltd & Ots, in which the Judge refused to grant an injunction restraining the defendants from disclosing the identity of “The Stig”, whose true identity was kept confidential from the public. the registrability of shape marks in Lego Juris A/S v OHIM; Mega Brands, Inc, conflicts between protected geographical indications (PGIs) and later trade marks in Bayerischer Brauerbund eV v Bavaria NV, plus we look at the issues of damages for copyright infringement and infringement of performer’s rights in Experience Hendrix LLC ("EHL") & Anr v Times Newspapers Ltd.

To be taken to your case of interest please click on the links below: <top>



Decisions of the GC (formerly CFI) and CJ (formerly ECJ)
Case  

CJ
C-254/09
Calvin Klein Trademark Trust v OHIM; Zafra Marroquineros SL
(02.09.10)

Application (and where applicable, earlier mark)  

CK CREACIONES KENNYA
- leather, bags, umbrellas (18)
- clothing, footwear, headgear (25)

- goods in many classes including 18


- goods in classes 18 and 25 (Spanish)

Comment

The CJ dismissed the appeal from the GC’s decision that there was no likelihood of confusion between the marks under Arts 8(1)(b) and Art 8(5) was not applicable.

The CJ held that the way in which Zafra used the mark was not relevant to an enquiry under Art 8(1).  Further, the GC had not failed to take into account the heightened risk of confusion due to the reputation of the earlier marks.  Since the GC had found there was no similarity between the marks, it was entitled to conclude that there was no likelihood of confusion.

For Art 8(5) to apply at all, the marks had to be identical or similar and since this was not the case, the provision was “manifestly inapplicable”.

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Case

GC
T-472/08
Companhia Muller de Bebidas v OHIM; Missiato Industria e Comercio Ltda
(03.09.10)

Application

 
- alcoholic beverages (except beers) (33)



- alcoholic beverages made of sugar cane (33)
(Portuguese, Danish and other national registrations)

Comment

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

The GC found that the average consumer would consider the earlier marks as dominated by the word ‘chachça’ or ‘pirassununga’ together with the number 51, whereas the mark applied for would be referred to as 61 or ‘61 a nossa alegria’.  However, the GC gave more weight to the numbers 51 and 61 than did the BoA, noting that ‘chachça’ and ‘pirassununga’ in Portuguese were purely descriptive of a drink made of sugar cane and the barrel and the sugar cane in the mark applied for were also suggestive of such a drink.  

Having acknowledged the differences both visually and phonetically between the marks, the GC concluded that the similarities, whilst low, were sufficiently marked to be perceived by the relevant public and therefore the BoA erred in finding there were no similarities (reporter’s emphasis).  Secondary importance should be given to the phonetic perception of the marks because the goods related to ingredients for cocktails which were usually requested by the name of the cocktail.

Conceptually, the numbers 51 and 61 would not be seen as relating to the characteristics of the goods, but as two, two digit numbers.  The similarity would be low in non-Portuguese speaking countries, but would be average in Portugal where the descriptive elements would be highly suggestive of the goods in question.

The GC found that ultimately, the dissimilarities were not sufficient to rule out any likelihood that the relevant public or, at least, the average Portuguese consumer of alcoholic beverages displaying an average level of attention might believe, relying on imperfect recollection, that the goods came from the same or economically linked undertakings.  The BoA had therefore erred in finding that there was no likelihood of confusion (again, reporter’s emphasis).


 

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Case

GC
T-112/09
OHIM v Gilmar SpA
(08.09.10)

Application

ICEBREAKER
- clothing, footwear, headgear (25)


ICEBERG
- clothing, footwear, headgear (25)
(earlier Italian mark)

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

The GC concluded that the BoA was correct in finding that there was a considerable degree of visual similarity, but only a low degree of phonetic similarity.  It also agreed that a conceptual comparison was not decisive and did not affect the visual and phonetic similarities or differences between the marks.

In coming to its conclusion on conceptual similarity, the GC noted that although the word ‘iceberg’ would be understood by the relevant public, the word ‘icebreaker’ would be understood only by the part of the Italian public mastering the English language.  Plus, although the prefix ‘ice’ would be understood by the relevant public and has a certain “evocative force”, it should be regarded as limiting in this case.
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Case GC
T-70/08
Axis AB  v OHIM; Etra Investigación y Desarrollo SA
(09.09.10)
Application

ETRAX
- various goods and services (9, 42)
 
- various goods and services (9, 42)
(national Spanish registrations)

Comment The GC upheld the appeal and annulled the BoA’s decision. 

The notice of appeal against the Opposition Division’s decision had been received by OHIM after the two month deadline set out in Art 60, despite the fact that the fee had been paid within the time limit.

OHIM admitted that the BoA, by allowing the appeal in these circumstances, infringed Rules 49(1) and (2) but submitted that it was not sufficient to warrant annulment of the contested decision.  The GC disagreed.  This was not a mere irregularity.  The decision of the BoA was vitiated by an error of law and had to be annulled.  The GC could not substitute its own reasoning in such a case and therefore the decision of the Opposition Division rejecting the opposition in full under Art 8(1)(b) would stand.
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Case CJ
C-265/09
OHIM v BORCO-Marken-Import Matthiesen GmbH & Co. KG
(09.09.10)
Application


- alcoholic beverages (except beers), wines, sparking wines and beverages containing wine (33)

Comment The CJ dismissed the appeal from the GC’s decision, thus concurring with the opinion of the AG. 

The GC was correct to conclude that the BoA had not satisfied the examination requirements under Art 7(1)(b) and instead relied on a ground of conjecture to support its conclusion that the mark lacked distinctive character.  The BoA had concluded that the relevant public “might” view the letter “α” as a reference to quality, an indication of size, or type of alcoholic beverage.

Of the fact that the application was a single letter, the CJ noted that there was no requirement for an application to have a specific level of linguistic or artistic creativity or to demonstrate imaginativeness on the part of the applicant.  Although it was apparent from case law that certain categories of signs are less likely prima facie to have distinctive character, this did not exempt OHIM from having to examine distinctive character of such signs based on the facts of the case.   
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Case GC
T-106/09
adp Gauselmann GmbH v OHIM; Archer Maclean
(09.09.10)
Application


- computer game programs, game cartridges, cassettes and circuit boards containing game programs for use with hand-held or arcade video game machines (9)
- arcade video game machines, amusement apparatus (28)


MERKUR
- electrotechnical and electronic devices, gaming and entertainment apparatus (9)
- hand-held consoles for playing electronic games (28)
(German national registration)

Comment The GC dismissed the appeal, holding that the BoA was correct to find no likelihood of confusion between the two signs under Art 8(1)(b).

The GC concurred with the BoA’s conclusion that the goods in question were in part identical and in part similar.
Visually, there was some similarity between the marks in question owing to a number of letters in common.  However there were some visual differences between the words which, coupled with the additional element ‘Archer Maclean’s’, weakened the visual similarity.  Even if, as the BoA found, the element ‘Archer Maclean’s’ of the mark applied for was not pronounced, the signs were different orally due to the presence of the final letter ‘y’ of ‘Mercury’.

The signs also differed conceptually, even when basing the comparison on ‘Mercury’ and ‘Merkur’ alone. ‘Merkur’ referred to the planet and the Roman god of the same name. It did not refer to the metal ‘Mercury’. The word ‘Mercury’ had no meaning in German and would be understood to be an English word. The part of the relevant public which understood the meaning of the word ‘Mercury’ would first associate it with the metal because of the silver grey liquid appearance of the sign applied for.
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Case GC
T 149/08
Abbott Laboratories v OHIM; aRigen, Inc.
(13.09.10)
Application

SORVIR
- anti-viral pharmaceuticals (5)


NORVIR
- a pharmaceutical preparation, namely an anti-infective (5)

Comment The GC allowed the appeal, holding that the BoA erred in finding the signs were insufficiently similar to exclude the likelihood of confusion under Art 8(1)(b).

The GC concurred with the BoA’s finding that there was no conceptual similarity between the signs as both were made-up words with no particular concept. However, contrary to the BoA’s conclusion, the GC held that there was a degree of visual and phonetic similarity between the signs, on the basis that they shared the same number of syllables, common vowels and that the last 5 letters were identical, both in sequence and pronunciation. The ‘orvir’ element common to both words gave rise to undeniable similarity.

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Case GC
T-292/08
Industria de Diseño Textil (Inditex), SA v OHIM; Roberto Fernando Marín Díaz de Cerio
(13.09.10)
Application

OFTEN
- goods in precious metals and their alloys or coated therewith, not included in other classes, jewellery, horological and chronometric instruments, ornamental pins, tie-pins, novelty key rings, medals, badges of precious metal, shoe and hat ornaments of precious metal, cuff links (14)

OLTEN
- watches (14)
(earlier Spanish registration)

Comment The GC dismissed the appeal.  The BoA had not erred in finding that there was a likelihood of confusion between the marks under Art 8(1)(b).

The GC first held that, as genuine use was not part of the dispute before the BoA, Inditex could not criticise OHIM for failing to examine the issue.

The signs were visually and phonetically similar to a significant degree. Whilst the GC had previously held that a difference consisting of a single consonant could prevent the finding of a high degree of visual similarly between two relatively short word signs (Picasso v OHIM; DaimlerChrysler (PICARO) T-185/02), that finding did not amount to a general rule.

Conceptually, the average Spanish-speaking consumer would not necessarily attribute meaning to the English word ‘often’. The fact that case-law of the Spanish courts had found that certain English words would be known to the Spanish consumer did not lead to the same conclusion here. Accordingly, any conceptual difference between the signs was not sufficient to counterbalance their visual and phonetic similarity.
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Case GC
T-366/07
The Procter & Gamble Company v OHIM; Prestige Cosmetics SpA
(13.09.10)
Application P&G PRESTIGE BEAUTE
- washing preparations, cleaning preparations, soaps, perfumery, essential oils, preparations for body and beauty care, hair lotions, dentifrices (3)
Comment

- soaps, perfumes, cosmetic creams, lotions, bath foam, eyes and lips coloured pencils, lipsticks and rouges, face powder, cosmetic face colours, mascara, nail varnishes, false nails, eyeshadows (3)
(earlier Italian registrations)

The GC annulled the BoA’s decision and concluded 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 relevant goods were similar. The GC noted that the BoA’s finding that all the goods covered by the marks at issue fell under the definition of ‘cosmetic product’ under Art 1 of the Cosmetic Products Directive 76/768 could be a relevant factor for assessing similarity of goods under Art 8(1)(b). Falling under the same definition would tend to indicate that those goods share similar natures, intended purposes or methods of use or that the goods are in competition with each other or are complementary.

However, the GC disagreed with the BoA’s conclusion that the marks were similar; the only similarity resulted from the shared word ‘prestige’.  The GC noted that this and ‘beaute’ were laudatory in nature and were to a certain extent descriptive of the goods.  Therefore, they would be secondary to the P&G element in the application.  P&G was unlikely to have any inherent meaning to the relevant Italian public and the BoA had been correct to find that it would not have been associated with Proctor & Gamble.  Therefore, the differences, particularly the visual differences, constituted sufficient grounds to rule out a likelihood of confusion.
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Case GC
T-72/08
Travel Service a.s. v OHIM; Eurowings Luftverkehrs AG
(13.09.10)
Application

- transportation services (39)
- education service for travellers and flying personnel (41)
- accommodation (43)


EUROWINGS

- various goods (16, 41)
(earlier German and International registrations)

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion under Art 8(1)(b).
The GC noted that the possibly weak distinctive character of an element of a complex mark does not necessarily exclude that element from constituting a dominant element. The BoA was correct to conclude that the word ‘Wings’ was the dominant element of the marks at issue. In the mark applied for, the word ‘Wings’ held a more important position than the other elements of the mark. The ‘Euro’ element of the earlier marks was the usual abbreviation of ‘European’ or ‘Europe’ and was devoid of distinctive character with regard to the goods and services concerned. The marks were therefore visually similar.

Regarding the phonetic and conceptual comparisons, the GC noted that, although the BoA did not make such comparisons expressly, where the BoA confirmed an Opposition Division decision in its entirety, that decision and its reasoning formed part of the context in which the BoA’s decision was adopted.  The GC concluded that the BoA, by implicitly confirming the findings of the Opposition Division, correctly considered that the marks at issue, had an average degree of phonetic and conceptual similarity.
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Case GC
T-97/08
KUKA Roboter GmbH v OHIM
(13.09.10)
Application



- articulated robots to handle, treat and weld, with the exception of cleanroom robots, medical robots and robots to apply lacquer, parts for the above goods (7)

Comment The GC dismissed the appeal from the BoA’s decision to refuse the mark finding it lacked distinctive character under Art 7(1)(b).

The GC, following Libertel C-104/01, noted that there was a public interest in not unduly restricting the availability of colours under trade mark law.  This requirement tended to constitute, except in exceptional situations, a bar to registration of single colour marks where there was no evidence of use.  Consumers were not in the habit of making assumptions about the origin of goods based on their colour. 

In this instance, the colour applied for was not unusual in the sector.  Further, the applicant had not submitted evidence that the number of goods applied for was limited to such an extent, and the market was specific to such an extent, that (i) the colour per se would be capable of indicating the commercial origin of the goods; and (ii) its monopoly would not create an unjustified competitive advantage in favour of the applicant, contrary to public interest.  The survey evidence submitted was leading and the BoA had been right to consider that it allowed neither trade mark custom in the sector nor the distinctiveness of the mark to be verified.
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Case

GC
T-400/08
Enercon GmbH v OHIM; BP plc
(13.09.10)

Application

ENERCON
 - chemicals used in scientific research in the field of regenerative energy production (1)
- paints, primers (2)
- industrial oils, lubricants (4)


ENERGOL
- chemical products for use in industry (1)
- oils, lubricants (4)

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).

Even if, as Enercon submitted, the ‘ener’ element which was common to both marks, was understood as a reference to energy, the BoA did not err in concluding that the marks were visually similar.  Although there were certain dissimilarities in the pronunciation of the final syllable of the marks at issue, the BoA was correct to conclude that the phonetic similarities outweighed these differences. The BoA also did not err in concluding that the marks had no immediate conceptual meaning.  Given the identity or similarity of the goods and the strong visual and phonetic similarities of the marks, there was no reason to cast doubt on the BoA’s decision. 

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Decisions not yet in English

Case  

 GC
T-458/08
Hans-Peter Wilfer v OHIM
(08.09.10)

Application (and where applicable, earlier mark)  

 
- amplifiers, cases (9)
- musical instruments, particularly guitars

Comment

 The GC upheld the BoA’s decision that the mark was devoid of any distinctive character in relation to the goods applied for under Art 7(1)(b).

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Case GC
T-575/08
4care AG v OHIM; Laboratorios Diafarm, SA
Application

 
- disinfectants for hygiene purposes,  solutions for use with contact lenses (5)


AQUAMED ACTIVE
- disinfectants, hygiene products (5)

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 that the marks were similar and the goods were identical.

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Case GC
T-64/09
Micro Shaping Ltd v OHIM
(08.09.10)
Application

- paper, cardboard, printed matter, plastic materials for packaging (16)
- technical advice for the conception and production of packaging material (42)
Comment The GC upheld the BoA’s decision that the mark was descriptive in relation to the goods applied for in Classes 16 and 42 under Art 7(1)(c).
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Case GC
T-369/09
Sociedade Quinta do Portal, SA v OHIM; Vallegre, Vinhos do Porto, SA
(08.09.2010)
Application

 PORTO ALEGRE
- port (33)
VISTA ALEGRE
- port (33)

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 that the marks were similar and the goods were identical.

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Case

GC
T-152/08
Kido Industrial Limited v OHIM; Amberes, S.A.
(08.09.10)

Application

SCORPIONEXO
- safety goggles, helmets (9)
- protective clothing for motorcycling  (28)

- toys and board games, articles for sport (28)

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

The GC held that the marks were similar and the goods were similar or identical.
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Case GC
T-505/08
Nadine Trautwein Rolf Trautwein GbR, Research and Development v OHIM

Application HUNTER
- leather goods for domestic dogs and cats (not specifically conceived for hunting dogs), leather goods for leisure, domestic and riding horses, bags (18)
- clothing, belts, headbands (25)

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-233/08
MPDV Mikrolab GmbH and ots v OHIM
(10.09.10)
Application

ROI ANALYZER
- computer hardware and software (9)
- business consultancy (35)
- development, creation, improvement and upgrading of programs for word processing (42)

Comment The GC upheld the BoA’s decision that the mark was descriptive and devoid of any distinctive character in relation to the goods applied for under Art 7(1)(c) and Art 7(1)(b).
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Registrability of shape marks


Lego Juris A/S v OHIM; Mega Brands, Inc. (CJ (Grand Chamber); C 48/09; 14.09.10)


The CJ dismissed Lego’s appeal against the decision of the GC that its CTM registration for the shape of a red three-dimensional toy brick (reproduced below) for “games and playthings” in Class 28 was invalid under Articles 51 and 7(1)(e)(ii).



The CJ stated that each of the grounds for refusal in Article 7(1) must be interpreted in the light of the underlying public interest which, in the case of Article 7(1)(e)(ii), is to prevent trade mark law granting a monopoly on technical solutions or functional characteristics of a product.


The prohibition on the registration of trade marks which consist exclusively of the shape of goods which is necessary to obtain a technical result reflects the balancing of two considerations. On the one hand, it ensures that undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions. When the shape of a product merely incorporates the technical solution developed and patented by the manufacturer, protection of the shape as a trade mark once the patent has expired would permanently reduce the opportunity for other undertakings to use that technical solution.  In the system of intellectual property rights developed in the EU, in relation to both trade marks and designs, technical solutions are capable of protection only for a limited period and then free for use by all economic operators. Particular strictness applies to this provision since the grounds for refusal listed in Article 7(1)(e) are excluded from the exception under Article 7(3). It follows that even if a shape of goods which is necessary to obtain a technical result has become distinctive through use, it is still prohibited from registration as a trade mark.


On the other hand, by restricting the ground for refusal in Article 7(1)(e)(ii) to signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result, it is taken into account that any shape of goods is to some extent functional and it would be inappropriate to refuse to register a shape solely on the ground that it has functional characteristics. 


Interpretation of ‘exclusively’
The GC had held that a sign would consist ‘exclusively’ of the shape of goods which is necessary to obtain a technical result when all the essential characteristics of a shape perform a technical function, the presence of non-essential characteristics with no technical function being irrelevant in that context. The CJ agreed and held that the GC’s interpretation was consistent with the Court’s judgment in Phillips (C-299/99). In particular the CJ confirmed:


• the presence of one or more minor arbitrary elements in a three-dimensional sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect, does not alter the conclusion that the sign consists exclusively of the shape of goods which is necessary to obtain a technical result; and


• a sign cannot be refused registration as a trade mark if the shape of goods incorporates a major non-functional element, such as a decorative or imaginative element which plays an important role in the shape.


Interpretation of ‘necessary’
The CJ held that the GC had correctly found that the condition for refusal of registration under Article 7(1)(e)(ii) that the shape must be ‘necessary’ to obtain the technical result intended, did not mean that the shape at issue must be the only one capable of obtaining that result. The fact that there may be alternative shapes, with other dimensions or another design, capable of achieving the same technical result, did not of itself mean that registering the shape as trade mark would have no effect on the availability, to other economic operators, of the technical solution which it incorporated.
 
Lego had submitted that its competitors did not need to market toy bricks whose shape and dimensions were in all respects identical to those of the Lego brick in order to use the same technical solution. The CJ noted that it had been found that the shape of the Lego brick was the technically preferable solution for the category of goods concerned and therefore, were the shape to be registered as a trade mark, it would be difficult for competitors to place on the market shapes constituting a real alternative, i.e. not similar and yet attractive to the consumer from a functional perspective. Although trade mark protection might not be available, the CJ said that where competitors put on the market slavish copies of the product shape incorporating exactly the same technical solution, the position could, where appropriate, be examined in the light of unfair competition rules, although that was outside the scope of these proceedings.


Identification of the essential characteristics of a shape of goods
The CJ agreed with the AG’s observation that the expression ‘essential characteristics’ must be understood as referring to the most important elements of the sign and must be identified on a case-by-case basis. Identification of the essential characteristics of a three-dimensional sign can be made by a simple visual analysis, or by a detailed examination taking into account assessment criteria such as surveys, expert opinions or data relating to IP rights conferred previously in respect of the goods concerned.


Once the essential characteristics have been identified, it will still be necessary to ascertain whether they all perform the technical function of the goods in issue. The BoA had found that the most important element of the Lego brick sign consisted of the two rows of studs on the upper surface of the brick and placed particular emphasis on the inclusion of that element in Lego’s prior patents. As a result it had found that element was necessary to obtain the intended technical result of the product, i.e. the assembly of toy bricks, and that, with the sole exception of its colour, all the other elements of the sign constituted by the brick were also functional.


The GC had not erred in law in finding that surveys on the target public’s perception of the shape of the goods at issue were irrelevant, since the presumed perception of the sign by the average consumer is not a decisive element in applying the grounds for refusal in Article 7(1)(e)(ii), but at most a criterion of assessment in identifying the essential characteristics of the sign.


Criteria to determine functionality
The existence of other shapes which could achieve the same technical result does not prevent a shape from being refused registration. Once the essential characteristics have been identified, the assessment of whether those characteristics perform the technical function of the product concerned must be carried out by analysing that sign, and not by comparing those characteristics with alternative shapes of goods. The technical functionality of the characteristics of a shape may be assessed inter alia, as the GC and the BoA had done, by taking account of documents relating to previous patents describing the functional elements of the shape.


Reporter’s Note:  Although the CJ followed the recommendation to dismiss Lego’s appeal, it did not follow the three-stage test for registrability proposed in AG Mengozzi’s opinion. (reported in the CIPA Journal, February 2010).


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Meaning of “Use in the course of trade” in an area “of more than mere local significance”


Anheuser-Busch Inc v Budějovický Budvar (AG Cruz Villalón for the CJ; C-96/09; 14.09.10)

AG Cruz Villalón has recommended that the CJ uphold Anheuser-Busch’s appeal against the GC’s decision allowing an opposition by Budvar under Article 8(4) to Anheuser-Busch’s application to register the word mark BUD as a CTM on the basis of Budvar’s earlier appellation of origin (geographical indication). The AG also recommended the CJ refer the case back to the GC to reassess the evidence.  The earlier decisions of the CFI (Joined cases T-225/06, T-255/06, T-257/06 and T-309/06) are reported in the CIPA Journal, January 2009.


Anheuser-Busch applied to register a figurative mark (reproduced below) in respect of various goods and services in Classes 16, 21, 25, and 32, including paper, household or kitchen utensils, clothing, beers and non-alcoholic drinks. Anheuser-Busch also filed three applications to register the word BUD in Classes 32 (beer), 33 (alcoholic beverages), 35 (setting up a database), 38 (telecommunications), 41 (education, entertainment) and 42 (restaurant, bar and pub services; operating a database).



Budvar opposed the application, inter alia, under Article 8(4), relying on an appellation of origin ‘bud’ which was registered under the Lisbon Agreement in respect of beer and effective in France, Italy and Portugal and protected in Austria under a bilateral convention with Czechoslovakia. The BoA held that ‘bud’ was not an appellation of origin since consumers did not perceive it as referring to a specific geographical place in the Czech Republic. Budvar appealed, alleging infringement of Article 8(4). The GC allowed the appeal and Anheuser-Busch appealed to the CJ.
The AG recommended that Anheuser-Busch’s submission that OHIM had jurisdiction to determine the validity of the earlier non-registered right, in this case the appellation of origin, be dismissed.  In his view, the validity of appellations, like that of national trade marks, was governed by the national law of the Member State concerned, and only if the protection of the sign had been definitively annulled by such Member State could OHIM take that factor into consideration and reject the opposition based on that sign.

“Use in the course of trade”
Anheuser-Busch submitted that there was insufficient quantity and quality of use to constitute “use in the course of trade”. The AG said that there must be use in a commercial, not private, context, and the distribution of free samples, for example, would not suffice. It seemed reasonable to him to require use which accords with the essential function of the sign concerned, which in the case of geographical indications, meant guaranteeing that the public was able to identify the geographical origin and/or certain inherent characteristics of the product concerned. Therefore evidence that Budvar had used the sign as a trade mark rather than for the purpose of indicating the geographical origin of the product would be relevant to whether there had been use of the sign falling within Article 8(4).


As to the relevant territory for use in the course of trade, although Article 8(4) does not refer specifically for example to use “in the Community”, the principle of territoriality is generally applicable to all intellectual property rights. It followed that significance to the public acquired through use should be proved in relation to the territory where the sign is protected and not in a different territory where it had no protection.


The AG also considered that the time period for assessing use for the purpose of Article 8(4) could not include the time between filing and publication of the CTM application under opposition. Any other solution might encourage fraud by allowing the owner of an earlier right to “improvise” an artificial use of his sign in that period.


“Of more than mere local significance”
The AG disagreed with the GC’s assessment that a sign is of more than local significance merely because it is legally protected in more than one country. The territorial area by reference to which significance must be assessed is the territory in which the sign benefits from legal protection, but the mere existence of such protection throughout the territory of a Member State, or even a number of them, does not ensure that the requirement of significance is met. “Significance” means the sign has to “deserve” to have the capacity to prevent registration of a similar mark at Community level.


The GC’s interpretation was only applicable to signs like the ‘bud’ appellation of origin which have international protection formalised through registration.  Article 8(4) is, however, primarily concerned with signs protected in only one Member State, rather than cases such as the present where there was transnational protection. Interpreting the requirement of significance as synonymous with the territorial scope of protection would always exclude signs protected in only one Member State as they would never have more than local significance. To include those signs, the term significance must be factually construed, for example, by requiring that the sign must be known in a territory larger than a city or region.


In the case of non-registered marks which are created and earn protection through use without the need for prior registration, the significance of use and legal protection are not easily distinguishable.


In the AG’s view, even where a geographical indication like ‘bud’ is protected in more than one State under an international agreement, it would not satisfy the requirement “of more than mere local significance” if, as appeared to occur in the present case, it could only be proved that the geographical indication was known and used in one of the States where it benefited from protection.


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Conflicts between protected geographical indications (PGIs) and later trade marks


Bayerischer Brauerbund eV v Bavaria NV (AG Mazák for the CJ; C-120/08; 16.09.10)


AG Mazák considered a reference from the Bundesgerichtshof (German appeal court) concerning Bavaria’s right to the continued use of an International trade mark containing the word ‘Bavaria’ protected in Germany from April 1995, in view of the fact that the name ‘Bayerisches Bier’ was registered as a PGI in accordance with the simplified procedure provided for in Article 17 of Regulation 2081/92/EEC. Under the simplified procedure there was no requirement to publish details of proposed PGIs before registration. The priority date of Bavaria’s trade mark fell after the submission of the application for the PGI, but before the PGI was finally registered and published.


AG Mazák was of the opinion that Regulation 2081/92/EEC governed conflicts between PGIs and trade marks where the PGI had been registered in accordance with the simplified procedure. The material date for determining the primacy of such PGIs was the date of publication of the registration. This was the date on which protection granted to such PGIs was made public for the first time at a Community-wide level, thus allowing national authorities, as well as economic operators, to take account of that fact when considering the registration of potentially conflicting trade marks.


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Trade Mark Licence


Hudson Bay Apparel Brands LLC v Umbro International Ltd* (Lord Neuberger MR; Arden & Tomlinson LJJ; [2010] EWCA Civ 949; 11.08.10)


Hudson Bay did not succeed in its appeal from the decision of Mark Herbert QC ([2009] EWHC 2861 (Ch), reported in the CIPA Journal, December 2009) to allow Umbro’s counterclaim for breach of contract.


The High Court action
Umbro granted Hudson Bay an exclusive licence to market Umbro-branded “off-field” football-based clothes in the USA.  Off-field clothing consists of clothes worn by non-players (as opposed to on-field wear which is worn by players during play).  Umbro claimed (by way of counterclaim) that Hudson Bay had breached its off-field licence by marketing “pocketless soccer basics” and matching tracksuits, which it claimed were “on-field wear”.  Mr Herbert QC held that both the “pocketless soccer basics” and tracksuits were on-field wear, owing to the pocketless nature of the pocketless soccer basics and to the fact that the tracksuits were marketed as part of a package with the pocketless soccer basis.  In its defence, Hudson Bay submitted that the president of Umbro’s US subsidiary, Miss Jackson, had expressly approved its marketing of the pocketless soccer basics.  Mr Herbert QC rejected the defence on the basis that Miss Jackson was not a director or employee of Umbro and so had no actual authority to bind the parent company in matters such as the making or modification of formal agreements and nor did Miss Jackson have ostensible authority to bind Umbro since Umbro had not unambiguously held Miss Jackson out as having such authority.


The Appeal
Lord Neuberger MR (giving judgment for the Court) agreed with Mr Herbert QC’s classification of the pocketless soccer basics and tracksuits as “on-field wear”.  The Master of the Rolls was persuaded inter alia by the fact that FIFA, the football regulatory body, forbids clothes containing pockets from being worn during play.


Lord Neuberger MR also upheld Mr Herbert QC’s decision on Hudson Bay’s defence, finding that Miss Jackson had no actual or ostensible authority to bind Umbro: it was clear on the evidence that Miss Jackson’s actions were always subject to final approval by Umbro.  However, obiter Lord Neuberger MR considered that the result may have been different if Hudson Bay and Miss Jackson had both intended that Hudson Bay be allowed to act on Miss Jackson’s consent in relation to garments which both parties reasonably and honestly believed fell within the scope of the agreement (i.e. off-field garments).  However, as there was no real belief on the part of either side that the goods fell within the scope of the agreement (both parties had proceeded on the basis that the goods were on-field wear), this was of no assistance to Hudson Bay.


Hudson Bay’s remaining contractual arguments also failed because Miss Jackson had no actual or ostensible authority to bind Umbro.  These arguments were nevertheless dealt with by the Court for the sake of thoroughness as follows: a variation agreement signed by Miss Jackson and Hudson Bay extending the licence to include the pocketless basics was not valid because it was expressed to be “subject to contract” i.e. subject to Umbro’s  right of final approval; Umbro had not waived its rights by failing to stop Hudson Bay from marketing the pocketless basics because Umbro had been unaware that Hudson Bay was marketing goods in breach of the licence and had taken action as soon as it became aware of the situation; and finally Umbro was not estopped from enforcing the licence because of a purported understanding between Miss Jackson and Hudson Bay that pocketless soccer basics were within the scope of the licence, which understanding Hudson Bay had relied on, because Miss Jackson had no authority to make such an agreement and Umbro was unaware that she had done so.  Hudson Bay should have appreciated that its ‘understanding’ with Miss Jackson was not known to Umbro or it should not have reasonably believed that this was known to Umbro. 








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COPYRIGHT


Setting of royalty rates by reference to comparable licences


CSC Media Group Ltd (formerly known as Chart Show Channels Ltd) v Video Performance Ltd (“VPL”)* (Floyd J; [2010] EWHC 2094 (Ch); 10.08.10)


The High Court allowed VPL’s appeal from a Copyright Tribunal decision setting the royalty payable on a licence from VPL to CSC, which permitted CSC to broadcast the music videos of VPL’s members. 


The High Court held that the Tribunal had erred by failing to give enough weight to the terms of a comparable licence when setting the royalty rate, contrary to section 129.


VPL was a licensing body whose members were the owners or exclusive licensees of the rights to broadcast music videos.  VPL licensed broadcasts of the music videos on behalf of its members in return for a royalty, which was calculated by reference to the gross revenue that would be received by a licensee in respect of the broadcast on the television channel, pro-rated by reference to the television channel’s usage of VPL’s repertoire.  VPL and CSC entered into a licence (the “2003 Licence”), which provided for a pro-rated royalty based on the headline rate of 20% of gross revenue.  The 2003 Licence expired and VPL continued to license CSC on the basis of a letter whose purpose was to give the parties three months in which to negotiate new terms.  CSC made an application to the Tribunal under section 126 to determine the appropriate terms.  Before the Tribunal, CSC’s position was that the royalty rate should be 8% of gross revenue, pro-rated for usage, whilst VPL’s position was that it should be 20% (also pro-rated).  The Tribunal fixed a rate of 12.5%, pro-rated.  Although the parties had agreed a pro-rating formula, the Tribunal was not satisfied with it and replaced it with the formula from the 2003 Licence.


Floyd J held that the Tribunal had erred in setting the royalty rate as it did and in replacing the agreed pro-rating formula.  Section 129 required the Tribunal to consider the terms of comparable licences when setting the royalty rate. However, the Tribunal had failed to properly consider a comparable licence between VPL and BSkyB, whose terms had been agreed in 2004 albeit that it was not signed until 2007 (the “BSkyB Licence”), which had a royalty rate of 20% with limited pro-rating.  The Tribunal had first fixed a window for the royalty rate of between 10% and 15%, taking into account changes in the market in favour of internet usage, which had effected advertising on music channels, royalty rates for broadcasts on commercial radio stations (between 2 – 5%) and the effect that the broadcast of pop videos had on the sales of recordings, which had in the past decreased the royalty rate payable.  Only then, after setting the window, had the Tribunal taken account of the BSkyB licence.  Floyd J held that this was wrong; the correct approach involved starting with the most relevant comparable licence and then adapting it to the circumstances of the present case.  Floyd J held that even if the Tribunal had reservations about the BSkyB licence (namely the date on which the licence was agreed), it should not have relegated it to the role of fine tuning the royalty rate having already decided on the range within which the royalty should fall.  Further, Floyd J held that the Tribunal had erred in departing from the pro-rating formula agreed by the parties given that it had no proper or rational basis for doing so.  The application was remitted for rehearing before a differently constituted Tribunal.


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Damages for copyright infringement and infringement of performer’s rights

Experience Hendrix LLC (“EHL”) & Anr v Times Newspapers Ltd* (Sir William Blackburne; [2010] EWHC 1986 (Ch); 30.07.10)


The High Court held that The Times was liable for damages equal to the interest payable for a period of 12 months on profits of $5.8 million, the payment of such profits to EHL being delayed for 12 months by virtue of The Times’ issue of a poor quality CD of performances at a 1969 Jimi Hendrix concert.  The Times had previously been held by the High Court ([2007] EWHC 3173 (Ch)) to be liable for infringing the copyright in recordings of, and performer’s rights in relation to, the performances at the concert.


Knowing infringement
EHL claimed damages based on Article 13 of the Enforcement Directive (2004/48/EC) which provides that an infringer who knowingly, or with reasonable grounds to know, engages in an infringing activity shall pay damages appropriate to the actual prejudice suffered by the right-holder due to the infringement. 


Sir William held that The Times had reasonable grounds to know that it was engaging in infringing activity by issuing the CD as four days before the newspaper was due to go to print, EHL’s solicitors had written to The Times to put them on notice that their client owned the copyright in the recordings of the concert and the performer’s rights in the performances at the concert.  EHL sought confirmation that The Times would not offer the CD and threatened proceedings if confirmation was not forthcoming.  EHL had also informed The Times that it was preparing to release a film of the concert and that issue by The Times of the CD would undermine this release and damage the value of the concert material. 


Additional damages
However, Sir William held that additional damages, for flagrancy or “moral prejudice” would not be available to EHL under sections 97(2) (in relation to copyright) and 191J(2) (in relation to the performer’s rights) as The Times had not been indifferent nor reckless as to whether it was engaging in infringing activities.  Rather, The Times had obtained a licence in respect of the relevant rights from one of its communications agencies, which had warranted that it had the necessary rights.  (In the event, the licensee’s title was held by the High Court to be bad, thus The Times’ licence was invalid).  Although The Times could be criticised for failing to inspect the licensee’s title documents, it did take some limited steps to investigate the matter and had instructed solicitors. 


Basis of damages: lost profits or notional licence fee?
Articles 13(1)(a) and 13(1)(b) of the Enforcement Directive enable the Court to award compensatory damages for the negative economic consequences suffered by the claimant (lost profits or an account) or damages based on the royalties or fees which would have been payable had the infringer obtained a licence.


Sir William held that the notional licence approach was not appropriate in this case because the Court would have had to determine what would have been a reasonable licence fee to enable The Times to make and distribute poor quality, illicitly obtained recordings which EHL would never have actually permitted, especially considering its own plans for exploiting the material.  Damages for lost profits were therefore the appropriate measure of damages.  Sir William held that EHL could recover its losses incurred in both the UK and abroad: there was nothing in the CPDA which required that damages be limited to those suffered within the territorial jurisdiction of the Court.


Calculation of lost profits
EHL contended that the film would generate significant profits, thus, any delay which prevented the launch of the film would result in a delay in EHL receiving those profits and therefore a loss to them.  EHL contended that The Times’ launch of the CD had caused such a delay to the launch (i) because EHL wished first to obtain a declaratory judgment to assuage its commercial sponsors that it had the rights to exploit the recordings of the concert and (ii) to allow time to pass in order to enable the adverse effect on the UK market of The Times’ distribution of the poor quality CD to disperse.  Sir William held that The Times’ issue of the CD had delayed EHL’s launch of the film for a period of 12 months.


As to the amount of profits, the payment of which to EHL was delayed, the Judge settled on the sum of $5.8 million.  This was based on an advance payable pursuant to a distribution agreement, which Sir William estimated to be worth $3 million, and income derivable from merchandising rights in relation to clothes and ringtones, which Sir William estimated would yield at least $2.8 million.  Thus, EHL’s lost profits were equal to the interest that it would have received on $5.8 million over the course of 12 months.


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BREACH OF CONFIDENCE


British Broadcasting Corporation v HarperCollins Publishing Ltd & Ots* (Morgan J; [2010] EWHC 2424 (Ch); 04.10.10)


Morgan J refused to grant an injunction restraining the defendants from disclosing the identity of “The Stig”, a character from the BBC television programme, Top Gear, whose true identity was kept confidential from the public.


Mr Collins, who played The Stig for 7 years, wrote his autobiography revealing his identity as The Stig.  The BBC became aware of the impending publication of the autobiography and contended that the publication would involve a breach of the duties owed by Mr Collins to the BBC under contract and in equity.  The BBC sought an interim injunction to restrain the disclosure of the identity of The Stig.


Contract
Mr Collins’ involvement in Top Gear was the subject of a series of contracts made between his service company and the BBC, some of which contained the obligation “you will not reveal your identity”.  The BBC submitted that Mr Collins was also a party to the contracts because the parties would never have intended that the service company would not reveal its identity.  The Judge disagreed, holding that that was not an absurd suggestion since the revelation by the service company of its identity would indirectly reveal the identity of Mr Collins.  Alternatively, the contract was to be interpreted such that the service company would not reveal its identity nor the identity of Mr Collins.  Either way, Morgan J held, Mr Collins was not a party to the contracts and so was not subject to any contractual obligation to keep the identity of The Stig confidential.


The service company however was subject to an obligation to keep confidential all matters concerning the contribution of the service company and Mr Collins in Top Gear.  Morgan J held that this obligation was not breached by a statement from the service company that Mr Collins was The Stig because that fact was now in the public domain as a result of a number of articles in the press speculating on the identity of The Stig, including an exposé by The Sunday Times (subsequent to the BBC’s application for an injunction) which purported to definitively identify Mr Collins as The Stig.  Furthermore, as an injunction against the service company would not confer anything of benefit on the BBC, given that The Stig’s identity was no longer confidential, the Judge declined to grant an injunction against the service company.


Equitable duty of confidence
Mr Collins was, however, bound by an equitable duty of confidence to keep the identity of The Stig confidential until such time as the information ceased to have the character of confidential information.  Information could cease to be confidential by, for example, entering the public domain, which meant that the information was so generally accessible that it could no longer be regarded as confidential.  The Judge held that the press coverage went well beyond speculation as to the identity of The Stig and would have been understood by the public as statements of fact.  The number of different newspapers which had stated the fact was such that the fact was now generally accessible and thus the identity of The Stig was no longer confidential.  It followed that the Judge would not grant an injunction to prevent Mr Collins from revealing that he was The Stig.


The Judge also refused to grant an injunction to prevent Mr Collins from disclosing the information on the basis that he ought to be prohibited from benefitting from his past misuse of confidential information.  The Judge held that it was not a proper use of the Court’s powers to grant an injunction merely to punish Mr Collins for his previous unlawful action where the injunction would not also protect the BBC from unlawful harm.


The BBC’s claim for an injunction against HarperCollins (the publisher of the autobiography) and the service company failed for the same reasons.


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Katharine Stephens, Zoe Fuller and Gina Brueton
Bird & Bird LLP
15 Fetter Lane
London EC4A 1JP
Tel: 020 7415 6000
Fax: 020 7415 6111
Email: Katharine.stephens@twobirds.com


Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Alice Sculthorpe, Audrey Horton, Adrian Howes, Claire Barker, Dania Rifaat, Hilary Atherton, Josh Partridge, Nick Boydell and Victoria Poyer.


The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the CJ’s decision can be found at http://curia.europa.eu/jcms/jcms/j_6/home