This month we report on the CJ's decision on registered Community design rights and the "informed user" in PepsiCo Inc v Promer. We also report on the Court of Appeal's ruling in Dyson v Vax concerning UK registered designs.


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To be taken to your case of interest please click on one of the items on the list below:


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


Case   GC
T-36/09
dm-drogerie markt GmbH & Co. KG v OHIM; Distribuciones Mylar, SA
(09.09.11)
 
Application (and where applicable, earlier mark)  

dm


- batteries, spectacles, exposed films and apparatus for recording, transmission or reproduction of sound or images (9)


 
- cash registers, calculating machines, data processing equipments and computers (9)
- transport, packaging, storage and distribution of computer components (39) 

Comment

The GC partially annulled the BoA’s decision in so far as the BoA had not declared an amended decision of the OD to be null and void and upheld the BoA’s decision that dm-drogerie’s appeal was inadmissible as it had been filed out of time.


The OD’s original decision contained incomplete and contradictory reasoning in respect of the assessment of the similarity of certain goods but upheld the opposition in respect of those goods. Three weeks after the decision was handed down, the OD notified the parties that it intended to revoke the decision because of a procedural error under Art 77a and requested comments. Neither party filed an appeal against the original decision but dm-drogerie submitted observations on the proposed revocation. Six months later, the OD held that Art 77a did not apply and the decision was amended under Rule 53 to correct the mistakes but did not amend the operative part of the original decision. A member of the OD wrote to the parties and indicated that the amended decision was open to appeal.  Pursuant to that letter dm-drogerie filed an appeal.


The GC held that there was no basis on which the OD could correct the gravity of the errors in the original decision and the amended decision was vitiated by serious procedural errors such that it had to be annulled.


The BoA was correct to find that the OD’s intention to revoke the original decision did not have a suspensive effect in relation to the time limit for appeal. A diligent normally informed operator would have filed an appeal at least as a precautionary measure.            

 

Case   GC
T-83/09
David Chalk v OHIM; Reformed Spirits Company Holdings Ltd
(09.09.11)
Application (and where applicable, earlier mark)

CRAIC
- mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices and preparations for making beverages (32)
- poteen, alcoholic beverages containing poteen (33)

Comment

The GC upheld the BoA’s decision to reject an application to revoke the registration of an assignment of the trade mark by the transferee of an alleged earlier assignment.


Under Art 23, an assignment of a mark would have effect as against third parties only after entry onto the register, therefore, to assert such rights a proprietor must register the assignment. A third party who took an assignment and registered it without knowledge of an earlier assignment could not have that raised against the registration of the later assignment.


The GC held that there was no requirement under Art 16 for OHIM to consider and apply the national laws of a Member State or rule on contractual or legal questions arising under national law.

  
Case

GC
T-427/09
T-434/09
centrotherm Clean Solutions GmbH & Co KG v OHIM; Centrotherm Systemtechnik GmbH
Centrotherm Systemtechnik GmbH v OHIM; centrotherm Clean Solutions GmbH & Co KG
(15.09.11)

Application (and where applicable, earlier mark)

CENTROTHERM
- exhaust gas pipes for heating installations, chimney flues and boiler pipes (tubes) for heating installations (11)
 - junctions for pipes, pipe sleeves, reinforcing materials for pipes and flexible pipes (17)
 - building materials (19)
 - architectural consultation, construction drafting, engineering services and technical project studies (42)

Comment

The GC allowed the appeal from the BoA’s decision to partially revoke the mark and held that the marks should be revoked in entirety under Art 51(1)(a) as genuine use had not been sufficiently proven.


When examining evidence relating to the genuine use of a mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real. In particular, account must be taken of the commercial volume of the overall use, as well as the length of the period during which the mark was used and the frequency of use. The smaller the volume of commercial exploitation, the more necessary it was to produce additional evidence to dispel any doubts as to the genuineness of its use.


As such, genuine use of a mark cannot be proven by means of probabilities or suppositions but had to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned. CS had adduced relatively weak evidence of sales compared to the statements made in the witness statement; the undated photographic evidence was from after the relevant period and the article numbers on the invoices did not match the numbers of the goods bearing the mark. On the basis of the evidence submitted, it was not possible to conclude that the relevant products had been marketed during the relevant period.

Case

GC
T-207/09
Mustapha El Jirari Bouzekri v OHIM; Nike International Ltd
(27.09.11)

Application (and where applicable, earlier mark)


- sunglasses (9)

 
- scientific apparatus (9)
- clothing, footwear and headgear (25)
(Community mark)

Comment

The GC annulled the BoA’s decision finding that as there was insufficient similarity between the marks for the purposes of Art 8(1)(b) they could not be sufficiently similar for the purposes of Art 8(5).

The GC held that the BoA’s assessment of the marks was contradictory. If there was a lack of similarity between the mark applied for and the earlier mark under Art 8(1)(b), then that lack of similarity precluded the application of Art 8(5) as the similarity or identity between the marks was an essential condition for a finding under Art 8(5).
 

Case

GC
T-581/08
Perusahaan Otomobil Nasional Sdn Bhd v OHIM; Proton Motor Fuel Cell GmbH
(27.09.11)

Application (and where applicable, earlier mark)

 
- electric drives with proton exchange membrane fuel cells (7)
- proton exchange membrane fuel cells (9)
- development of systems for the conversion of energy using proton exchange membrane fuel cells (42)

PROTON 
- motor land vehicles and parts, fittings and accessories (12)
- repair and maintenance of motor land vehicles and modification of motor land vehicles (37)
(Community marks)

Comment

The GC upheld the BoA’s decision that there was no likelihood of confusion under Art 8(1)(b). The BoA also rejected Perusahaan’s appeal under Art 8(5).

The relevant public for the earlier marks were average consumers and vehicle manufacturers. This differed from the target of the later mark, which was purely professional, such as automotive research centres, engineers, scientists and possibly vehicle manufacturers.  The professional public would have a particularly high degree of attention. Although the goods and services in question had the same purpose, namely to power a motor vehicle, this was not enough to conclude the goods and services in question were similar.

Perusahaan’s goods were neither in competition with Proton’s goods nor complementary. In this regard, the BoA also took account of the different distribution channels and target consumer.
On that basis, there was no likelihood of confusion under Art 8(1)(b).

In respect of Art 8(5) Perusahaan had failed to provide evidence before OHIM to show that use of the mark applied for would take advantage of the distinctive character or repute of the earlier mark. Therefore, the evidence before the GC could not be considered within the context of the appeal.

Case

GC
T-415/09
New Yorker SHK Jeans GmbH & Co AG v OHIM; Vallis A & Co OE
(29.09.11)

Application (and where applicable, earlier mark)

FISHBONE
- leather goods, bags and rucksacks (18)
- clothing, footwear and headgear (25)
- t-shirts and beachwear (25)

FISHBONE
 /Images/Bird and Bird/IP Case Reports/2011/November/
- garments in general, footwear and headgear (25)
(Greek mark)

Comment

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

The BoA was correct to find that although the extent of the use of the earlier mark was quantitatively low the fact that the invoices were addressed to retailers across Greece showed sufficiently extensive use that represented an effective and genuine commercial effort. The invoices also showed a certain constancy over time. Taken as a whole, the catalogues, advertising photographs and invoices demonstrated genuine use of the earlier mark. There was no de minimis rule for establishing genuine use and small-scale use could be compatible with actual market presence.

The GC held there was only a certain degree of visual similarity between the marks and the BoA had been wrong to conclude that there was a high degree of visual similarity. The earlier mark contained additional graphical elements and included the term ‘beachwear’. Despite this, there was only a certain degree of visual similarity. However, there was a high degree of phonetic similarity since the word ‘fishbone’ was the distinctive word element of the earlier mark and there was a likelihood of confusion between the marks.

    
Case GC
T-107/10
Procter & Gamble Manufacturing Cologne GmbH v OHIM; Natura Cosméticos SA
(29.09.11)
Application(and where applicable, earlier mark)

NATURAVIVA
- beauty and hygiene products including cosmetics, fragrances, toiletries and hair products (3)
- hair and beauty services including hairdressing salons, physical therapy and tanning salon services (44)
VIVA
- perfumery, essential oils, cosmetics, hair lotions and dentifrices (3)
(German mark)
VIVA
- fragrances and cosmetics relating to perfume and fragrances (3)
(Community mark)

Comment

The GC upheld the BoA’s finding that there was no likelihood of confusion between the two marks under Art 8(1)(b).


Both ‘natura’ and ‘viva’ had weak distinctive character in respect of the relevant goods and services. Consequently, neither word was dominant and there was no reason to exclude the word ‘natura’ for the overall impression generated by the sign NATURAVIVA. The signs were visually and phonetically different. The difference in length and number of syllables between the two marks was sufficient to distinguish the marks.


The similarity of the goods and services could not outweigh the lack of similarity between the two marks and there was no likelihood of confusion.

Case GC
T-150/10
Telefónica O2 Germany GmbH & Co OHG v OHIM; Loopia AB
(29.09.11)
Application(and where applicable, earlier mark)

LOOPIA
- hosting computer sites (web sites/webhotels) (42)
LOOP
- rental of telecommunication equipment (38)
- engineering services, rental of data processing equipment and computers (42)
(Community mark)
LOOPY
- electronic data processing, telecommunications equipment and software (9)
- telecommunications, rental of telecommunication equipment (38)
- engineering services, computer programming, rental of data processing installations and computers (42)
(Community mark)

Comment

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


The goods and services of the earlier marks were essential for the setting up and use of internet site hosting services. There was, therefore, a functional complementarity between the goods and services, which all belong to the field of information technology.  The average consumer would consider the goods and services similar since they all belong to the field of information technology, are complementary and use the same distribution channels. The BoA should have held that internet hosting services were connected with computer programming services.


As the marks were visually and phonetically similar, this together with the similarity of the goods and services meant that there was a likelihood of confusion under Art 8(1)(b).

Case GC
T-479/08
adidas AG v OHIM; Patrick Holding ApS
(29.09.11)
Application(and where applicable, earlier mark)  
- leather goods (18)
- footwear (25)
- gymnastic sporting articles not included in other classes (28)
 
- footwear (25)
(German
Comment

The GC upheld the BoA’s decision to dismiss the opposition on the basis that adidas had failed to substantiate its earlier rights by failing to provide a translation of a certificate into English (the language of the proceedings) of the details on the Register of an earlier German mark on which it relied.


For the purposes of substantiating earlier rights, it is a matter for the discretion of the opposing party as to whether it translates parts of the certificate of registration that may be irrelevant. However, pursuant to Rules 16(3), 17(2) and 20(2) of Regulation No 2868/95 only those parts actually translated into the language of the proceedings may be taken into consideration in the opposition.


In particular, the indication of the type of the earlier mark had not been translated; this was essential in order to assess the scope of protection. In this case it was not clear if the earlier mark was three-dimensional or figurative.

Case GC
T-425/09
Honda Motor Co. Ltd v OHIM; Hendrik Blok
(06.10.11)
Application(and where applicable, earlier mark) BLAST
- outboard engines and associated structural parts and fittings (7)
- boats and associated structural parts and fittings (12)

BLAST
- exhaust systems and exhaust system trim parts for cars and motorcycles (7)
(Community and Benelux marks)
Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the mark applied for and the earlier mark within the meaning of Art 8(1)(b).

The BoA was correct that there was some similarity between the goods, although this similarity was low. Although the outboard engines covered by the mark applied for related to boats whilst the exhaust systems covered by the earlier mark related to cars and motorcycles, the similarity between the goods was strengthened by the “proximity of their channels of distribution” and the fact that it was well known that some companies which produce cars and motorcycles also produce boats.

The low degree of similarity between the goods concerned was offset by the fact that the marks were identical. In light of this, there was a likelihood of confusion between the mark applied for and the earlier marks.
Case GC
T-508/08
Bang & Olufsen A/S v OHIM
(06.10.11)
Application(and where applicable, earlier mark)


- electric and electronic apparatus and appliances for analogue, digital or optical reception, processing, reproduction, regulation or distribution of sound signals and loudspeakers (9)
- music furniture (20)
(three-dimensional mark)

Comment

In November 2007, the CFI held that the mark applied for had a minimum degree of distinctive character, (T-460/05), pursuant to Art 7(1)(b). The Presidium of the BoA reallocated the case but the BoA upheld the refusal to register the mark under different absolute grounds.


The GC upheld the BoA’s decision that, independently of other characteristics of the product, the mark consisted exclusively of a shape which gave substantial value to the goods under Art 7(1)(e)(iii).


Under Art 74(1), OHIM was required to examine of its own motion the relevant facts which may lead it to apply an absolute ground for refusal. Art 7(1), which listed the various absolute grounds for refusal, did not specify in what order the grounds should be considered.  There was no reason why the BoA could not examine the absolute ground for refusal under Art 7(1)(e)(iii) after examination of the ground arising under Art 7(1)(b).
The GC held that the design element of the goods covered by the mark was a very important factor in the consumer’s choice even if the customer considered other characteristics of the goods. The mark was of a very specific design that was an essential element of B&O’s branding. The design increased the appeal (and thus value) of the product. Furthermore, evidence from distributors’ websites and on-line auction or second-hand websites showed that the aesthetic characteristics of the shape was emphasised first such that the shape of the product was an important selling point.


On that basis, the shape of the mark independently of the other characteristics of the goods gave substantial value to the goods at issue.

Case GC
T-176/10
Seven SpA v OHIM; Seven for All Mankind LLC
(06.10.11)
Application(and where applicable, earlier mark) SEVEN FOR ALL MANKIND
- jewellery, watches, and watchbands (14)
- bags, hand bags, travel bags, suitcases, rucksacks, trunks and purses not of precious metal (18)

 
- knapsacks and rucksacks, school satchels, bags, travelling bags, leather and imitation of leather, purses, trunks and suitcases, umbrellas and walking sticks (18)
(Community mark)

 
- goods made from leather, rucksacks, handbags, purses not of precious metal, travelling bags, trunks and canes (18)
(Community mark)

- watches, small clocks, wall clocks and their cases, chronometric instruments and imitation jewellery (14)
- goods made from leather, bags, purses not of precious metal, suitcases, trunks, walking sticks (18)
(German (IR) mark)
Comment

The GC annulled the decision of the BoA in which the BoA held that there was no likelihood of confusion under Art 8(1)(b) on the basis that there was no similarity between the marks.  On that basis the BoA had not considered the opposition under Art 8(5).


The word ‘seven’ in the earlier marks was an important point of similarity and that its role in the overall impression created by those marks could not be overlooked. The word ‘seven’ had an average degree of distinctiveness in respect of the goods at issue. Consumers will generally pay greater attention to the beginning of a mark than to the end and the first part of a mark tends to have greater visual and phonetic impact on the consumer. Neither the presence of the additional words in the later mark nor the use of figurative elements in the earlier marks dispelled the visual similarity between the marks.
Whether as a numeral or word, the element ‘seven’ was pronounced identically and the additional words used in the later mark did not detract from the phonetic similarity.
The words ‘for all mankind’ had a low degree of distinctiveness and the conceptual scope of the marks was determined mainly by the word ‘seven’.


The GC held that the BoA had made an error in its decision by not recognising that there was a certain degree of similarity between the marks at issue under Art 8(1)(b). It was on this basis that the BoA also dismissed the claim under Art 8(5). Consequently, both provisions were infringed.

Case GC
T-488/08
Galileo International Technology LLC v OHIM; Galileo Sistemas y Servicios SL
(06.10.11)
Application(and where applicable, earlier mark)

 
- apparatus for signalling and surveying including antennae and radio beacons (9)
- telecommunications (38)


GALILEO
- electrical and electronic communication equipment (9)
- telecommunication services (38)
(Community application and mark)



 - computer and software equipment (9)
- telecommunication services (38)
(Community mark)


 
- computer and software equipment (9)
- telecommunication services (38)
(Community mark)

Comment

The GC upheld the BoA’s finding that there was no likelihood of confusion between the later mark and the six earlier marks under Art 8 (1)(b).


The signs were visually, phonetically and conceptually different. The dominant element of the later mark ‘G’ ‘S’ ‘S’ was very different in sound and length to the earlier marks.  GALILEO was not the dominant element in the later mark. Conceptually the public would distinguish between the marks and perceive the word GALILEO only on the rare occasions where the meaning of the abbreviation GSS was expressed in full as ‘galileo systemas y servicios’. The difference in the figurative elements of the marks, including the shape and stylised text was sufficient to demonstrate the marks were not similar.
On a global assessment, the difference between the mark applied for and the earlier marks was sufficient for a finding that the marks were not similar.

Case GC
T-87/10
Chestnut Medical Technologies Inc  v OHIM
(11.10.11)
Application(and where applicable, earlier mark) PIPELINE
- medical devices, namely devices used in the treatment of aneurysms (10)
Comment

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


The relevant public was made up of highly-specialised English-speaking medical professionals who were particularly well-informed and attentive. The fact that the average English-speaking consumer would associate the word ‘pipeline’ with the long-distance transport of oil and gas was irrelevant.  By contrast, a medical professional involved in the treatment of aneurysms would immediately associate the mark with the characteristics of the goods it covered and therefore more easily understand the descriptive connotations of the mark.
The fact that ‘pipeline’ had other meanings that were not descriptive of the goods did not prevent the mark from falling within the scope of Art 7(1)(c). It was further irrelevant for the purposes of Art 7(1)(c) that other more generic terms such as ‘catheter’ were used in medicine to describe the product. 

Case GC
T-393/09
NEC Display Solutions Europe GmbH v OHIM; Nokia Corp.
(13.10.11)
Application(and where applicable, earlier mark)

NaViKey
- computer and computer accessories, namely computer monitors (9)


NAVI
- electric and electronic control, computer programs, all for use in apparatuses for recording, processing, sending, transmission, storage or reproduction of sound, data or images, user interfaces, but not including any such goods primarily for use in navigation for vehicles (9)
(Community and Finnish marks)

Comment

The GC upheld the BoA’s decision that there was a likelihood of confusion between the mark applied for and the earlier mark under Art 8(1)(b).


The BoA did not err in finding the relevant public as being both the public and professionals throughout the EU. The BoA’s silence on the level of attentiveness was justified in light of the fact that NEC had not made submissions to the BoA regarding the OD’s assessment of the level of attention of the relevant public.


The goods were similar. The earlier mark was not restricted to mobile phone equipment, but was broad enough to cover goods used with computers. The goods had the same purpose and had a close complementary connection.


Despite the fact that the element ‘navi’ was only of weak distinctive character, the high degree of similarity between the goods and the visual and phonetic similarity between the marks meant there was a likelihood of confusion under Art 8(1)(b).

Case GC
T-304/10
dm-drogerie markt GmbH & Co KG v OHIM; Semtee
(18.10.11)
Application(and where applicable, earlier mark)  
- soaps, perfumery, essential oils, cosmetics (3)
- consultancy relating to the business management of a recreational and non-medical water facility (35)
- consultancy relating to construction works (37)

BALEA
- soaps, perfumeries, essential oils (3)
(Community (IR) mark)
Comment

The GC upheld the decision of the BoA finding that there was only a low degree of phonetic similarity between the marks and so there was no likelihood of confusion under Art 8(1)(b).
The services in class 35 in the earlier mark were dissimilar to the goods in class 3 in the later mark since the nature, intended purpose and function of the goods and services in question were completely different.


The signs were visually and conceptually different. There was a low degree of phonetic similarity between the marks. However, the degree of phonetic similarity was less important since the goods are usually sold side-by-side and so the relevant public would perceive the mark above all in visual terms. As a consequence the signs were globally dissimilar and hence there was no likelihood of confusion.



Decisions not yet in English
















Case  

GC
T-118/09
La Sonrisa de Carmen and Bloom Clothes v OHIM; Harald Heldmann
(05.10.11)

Application (and where applicable, earlier mark)  

 
- leather products, backpacks and umbrellas (18)
- clothes, shoes and hats (25)
- retail and wholesale sales of aforementioned goods, except umbrellas (35)


BLOOM
- clothes, shoes and hats (25)

Comment

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





 



Case  

GC
T-526/09
PAKI Logistics GmbH v OHIM; United Kingdom of Great Britain and Northern Ireland
(05.10.11)

Application (and where applicable, earlier mark)  

PAKI
- boxes, crates, transport pallets and related repair, freight forwarding and logistics services and hire and exchange of said goods (6, 20, 37 and 39)
 

Comment

 The GC upheld the BoA’s decision that the mark was contrary to public policy or accepted principles of morality under Art 7(1)(f).

Case

GC
T-421/10
Cooperativa Vitivinícola Arousana v OHIM; Maria Constantina Sotelo Ares
(05.10.11)

Application (and where applicable, earlier mark)

ROSALIA DE CASTRO
- beverages (alcoholic and non-alcoholic) (32, 33)
- retail, wholesale and online sales of alcoholic beverages (35)

ROSALIA
- alcoholic beverages (including wine but excluding beer) (33)

Comment

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

 
Case

GC
T-247/10
medi GmbH & Co AG v OHIM; Deutsche Medien Centre GmbH
(06.10.11)

Application (and where applicable, earlier mark)

deutschemedi.de
- arrangement of contracts in healthcare, internet pharmacy retail and wholesale sales of pharmaceutical, dietary and sanitary products (35)

medi.eu
- various pharmaceutical, dietary, orthopaedic and veterinary products (5, 10)
- advertising, business management (35)

Comment

The GC rejected the decision of the BoA and found that there was a likelihood of confusion between the two marks under Art 8(1)(b).

Case

GC
T-449/08
SLV Elektronik v OHIM; Angel Jiménez Muñoz
(18.10.11)

Application (and where applicable, earlier mark)

  
- goods relating to lighting systems and parts thereof, with the exception of illuminated signs (11)

 
- installation, repair and maintenance of illuminated signs (37)

Comment

The GC rejected the decision of the BoA and found that there was no likelihood of confusion under Art 8(1)(b).

Case

GC
T-189/09
Poloplast GmbH & Co AG v OHIM; Polypipe Building Products Ltd
(20.10.11)

Application (and where applicable, earlier mark)

 
- goods relating to pipes and building materials (6, 19)
- various goods relating to heating, lighting and sanitary systems (11)
- various goods relating to accessories and fittings for pipes (17)
- designs for house installations, inc. e.g. water and heating (42)
 
- goods relating to building materials and sanitary systems (6, 11, 19)
- pipes and connecting parts (17)
- various types of traps (20)

Comment

The GC upheld the BoA’s finding that there was a likelihood of confusion between the two marks under Art 8(1)(b) except in relation to:
- lighting, steam generation, cooking and drying equipment (11);
- sealants, packaging, insulation and all of the above in plastic (17); and
- goods relating to building materials (19)







   

The registrability of the appearance of the surface of packaging.


Freixenet SA v OHIM (CJ (Third Chamber); Joined Cases C-344/10 and C-345/10; 20.10.11)


The CJ annulled the decision of the GC and allowed the registrations for signs representing a frosted white bottle and a frosted black matt bottle.


The CTM Applications


Freixenet, a producer of sparkling wines, applied to register two CTMs for goods in class 33 for a “white polished bottle which when filled with sparkling wine takes on a golden matt appearance similar to a frosted bottle” claiming the colour “golden matt” and a “frosted black matt bottle” under the class of “other” marks. Freixenet specified that it sought to obtain protection for the specific appearance of the surface rather than the shape of the packaging.



Background

The OD had held that the marks applied for were devoid of both inherent and acquired distinctive character within the meaning of Article 7(3). Freixenet’s appeal was dismissed by the BoA but that decision was then annulled by the GC (Cases T-190/04 and T-188/04) under Article 73 on the basis that the decision infringed the principle of the rights of defence because the BoA had based its decision on evidence which had not been brought to Freixenet’s attention. The Presidium referred the case back to the BoA where the application was again refused.  


The GC upheld the BoA’s decision, noting that there was no history of wine producers having offered wine to the public in bottles without inscriptions or relying on the appearance of the bottle as the element that indicated origin.  Even if Freixenet was the first to do so, the originality of the packaging was not sufficient as consumers took account of another element (i.e., the label or inscription) when deciding what to purchase.  On that basis, the colour and matting of the glass of the bottle could not function as a trade mark for sparkling wine as regards the relevant public and therefore the marks were devoid of distinctive character. 


In respect of the evidence of acquired distinctiveness, as the application consisted of the presentation of a product, there was no language barrier and evidence of acquired distinctiveness had to be shown in all 15 Member States that comprised the Community at the time of application; Freixenet had not provided such evidence for all Member States.


Decision of the CJ

Freixenet appealed under a number of grounds but the CJ’s decision dealt with the plea under Article 7(1)(b).  The CJ observed that distinctive character is harder to establish for 3-D trade marks consisting of the appearance of the product itself and devoid of any graphic or word element since the average consumer does not habitually make assumptions about the origin of products on the basis of their shape or shape of packaging alone.


The CJ held that the correct assessment for this type of mark is whether the mark varied significantly from the norm or customs of the sector.  If it did so then the mark would fulfil its essential function of indicating origin and would not be devoid of distinctive character.  In this instance the application was for a mark consisting of the specific appearance of the surface of the packaging of a liquid product and did not consist of a sign that was independent of the appearance of that packaging.  In holding that only a word element could function as the mark indicating origin for sparkling wine, such that the colour and matting of the glass of the bottle could not function as a trade mark, the GC had erred.  Such an assessment would automatically exclude a mark consisting of the appearance of the packaging from protection as a trade mark.






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Parody defence fails; interim injunction granted


Ate My Heart Inc v Mind Candy Ltd & Anr* (Vos J; [2011] EWHC 2741 (Ch); 10.10.11)


Vos J granted the claimant an interim injunction to restrain the defendants infringing the claimant’s trade mark LADY GAGA by releasing a song by a cartoon character called Lady Goo Goo.


The Claimant was a company wholly owned and controlled by the famous pop star, Lady Gaga. It owned two CTMs for LADY GAGA registered for, among other things,  “sound and video recordings, audio-visual recordings featuring music and musical-based entertainment” in Class 9, “entertainment…services” in Class 41 and “streaming of audio and video material on the internet” in Class 38. Lady Gaga used these trade mark registrations to exploit her rights in music, media, fashion and consumer products. 


The defendants operated an online children’s computer game called Moshi Monsters, in which one of the characters was called Lady Goo Goo, along with Broccoli Spears, the Goo Fighters and Hairosmith, among others. The Lady Goo Goo character was a cartoon baby wearing a nappy, but was featured wearing large sunglasses with crystals on the side, with blonde hair styled in a manner reminiscent of Lady Gaga. 


Lady Gaga complained that the defendants were intending to release as a single a pop song sung by Lady Goo Goo, which bore a striking resemblance to a Lady Gaga hit called “Bad Romance”. The song had already been released on YouTube where it had been phenomenally successful in terms of hits. Lady Gaga applied for an interim injunction to restrain the alleged trade mark infringement. 


Parody

Vos J held that, although Lady Goo Goo may have started as a parody of Lady Gaga, it was arguable that the character had subsequently morphed into a character being used to enhance the commercial success of the Moshi Monsters brand, and now to sell records.  The law on parody was therefore not directly relevant. 


Confusion

There were two types of average consumer: (i) those likely to encounter Lady Goo Goo in the Moshi Monsters game, namely 6 to 12 year olds; and (ii) those likely to encounter Lady Goo Goo on YouTube and, if the song were to be released, on iTunes and other internet media, regardless of how annoying the song was said to be. It was strongly arguable that young players of the game would make a clear connection between Lady Goo Goo and Lady Gaga. Although it was less obvious that the same connection would be made by the second category of average consumer, the possibility still existed; “goo goo” and “ga ga” were both noises made by babies and Lady Gaga had made her name and reputation in the field of commercial popular music, into which field Lady Goo Goo was now going. The defendants had also tagged their YouTube song with, among other things, Lady Gaga. 


Article 9(1)(c)

Lady Gaga had the necessary reputation, and the evidence showed that the Lady Goo Goo song might reach number 1 in the charts, making it less likely that people would think that it had nothing to do with Lady Gaga, who regularly reached number 1. There was a good arguable case on the question of damage to the distinctive character of the LADY GAGA mark, and a real risk of actual tarnishment and damage being caused by the song.  The Judge considered that there was a clear distinction between this case and Interflora v Marks & Spencer Case C-323/09; what was being offered here was an imitation of Lady Gaga. When associated with other amusingly similar referential names like Broccoli Spears, observers may just think it was an effort at comedy.  But once Lady Goo Goo made it onto the internet in her own right it might not be possible to exploit the name without taking unfair advantage of the mark. There was therefore an arguable case for coat-tailing or free-riding.


The Judge rejected the defendants’ argument that the claimant had not suffered any damage so far.  Acknowledging the uncompensatability on both sides, if the injunction was not granted Lady Goo Goo might have become an important pop star in her own right and it might at that stage be extremely difficult to prevent her tarnishing the reputation of Lady Gaga and continuing to infringe the trade marks.  The injunction was granted. 


 



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Reputation not sufficient to establish goodwill in passing off


Plentyoffish Media Inc. v Plenty More LLP* (Judge Birss; [2011] EWHC 2568 (Ch); 11.10.11)


Judge Birss (sitting as a Judge of the High Court) dismissed an appeal from a decision of the hearing officer in an application for a declaration of invalidity under Section 5(4)(a). The hearing officer had taken the correct approach in requiring Plentyoffish to show that it had customers in the UK at the relevant time.


Plentyoffish was based in the United States and claimed to have operated an online dating service under the name PLENTYOFFISH since 2001 at ‘plentyoffish.com’. The dating agency services were provided to people who joined the website (members) but there was no fee to join and the services were free for members to use as the site was funded by online advertising. 


Plenty More started an online dating agency PLENTYMOREFISH at ‘plentymorefish.com’ in 2006, and the service was funded by consumer payments made via credit card. Plenty More owned the following UK registered trade mark for dating agency services in Class 45, which had been applied for in April 2007:   



Plentyoffish claimed that at the relevant time it had the right to prevent the use of the trade mark as a result of its common law rights in passing off. Its case was that it had acquired goodwill in the UK in the sign PLENTY OF FISH (including PLENTYOFFISH and PLENTYOFFISH.COM). The hearing officer had rejected Plentyoffish’s application for a declaration that the trade mark was invalid under Section 5(4)(a). Despite the evidence of hits on the website from the UK, Plentyoffish had failed to show that it actually had any customers or business in the UK at the relevant time. 


Firstly, Judge Birss held that the hearing officer had applied the correct test when he sought customers (or a business) within the UK. A mere reputation in the UK was not sufficient to establish goodwill there. Customers were required and that was the case whether or not a business provided products or services (Hotel Cipriani v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ 110 applied). Accordingly, the argument that a mere ‘trade connection’ was required (i.e. that a large number of hits on the website from the UK at the relevant time was sufficient) did not arise. 


Secondly, the Judge rejected Plentyoffish’s argument that the UK visitors to its website should be regarded as customers in any event despite the fact that there was no evidence that they were members. If Plentyoffish had been able to show that it had provided dating services to people in the UK, the fact that those people had not been charged for that service would have been irrelevant. However, to equate visitors from the UK with ‘customers’ even if they had not joined the site, simply because the business earned revenue from advertisers as a result of their hits was to lose touch with what the case was about. For a member of the public to be a customer, there had to be some sort of provision of the services in question, i.e. dating agency services rather than advertising services. 


As there was no evidence that Plentyoffish had provided any dating agency services to anyone in the UK on or before April 2007, the fact that it could earn money from its reputation was irrelevant. The only class of people who could be customers of Plentyoffish’s business in the relevant sense were the members, i.e. the people who joined the site and used the dating services, and there was no evidence that any such people existed in the UK in April 2007. The decision of the hearing officer was right and the appeal was dismissed.






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Infringement by a potentially descriptive mark


Fox International Group Ltd v Jay Folly* (Judge Birss; [2010] EWPCC 30; 01.11.11)


Judge Birss held that the defendant had infringed Fox’s STALKER trade mark.  Although the term “stalker” could be descriptive in the context of angling and Fox would not have the right to prevent use of the word as a description of angling products, Mr Folly has used the mark as an indication of trade origin. 


Fox made and supplied angling equipment. It owned a CTM for the word mark STALKER registered for various goods in Classes 18, 25 and 28.  Mr Folly sold angling equipment on the internet using the following device, which sometimes appeared without the word “tackle”:
 



Mr Folly also used the word “stalker” without the device and had two websites, “stalkertackle.co.uk” and “stalkerclothing.co.uk”


Considering the question of infringement under Article 9(1)(a), the Judge said that this was not the occasion to examine any questions arising in relation to Google France (Cases C-236/08 and C-238/08) on the extent to which use must affect or be liable to affect one of the functions of a trade mark. He approached the case on the basis that this condition was satisfied if the use complained of would be regarded by customers as trade mark use, i.e. as an indication of the trade origin of the goods in question (Anheuser-Busch v Budejovicky Budvar Case C-245/02). The main points were whether Mr Folly: (i) used a sign identical with the trade mark; and (ii) used the sign as an indication of origin rather than in a purely descriptive sense. This he did, for example, text on his website read “Welcome to the Stalker website”, and “We will be adding to our range…”, ‘we’ clearly referring back to Stalker as the entity from which the goods originated. There was infringement under Article 9(1)(a).


The Judge found that STALKER was a mark with a reputation in the UK amongst buyers of angling equipment. Although the relevant public often encountered the mark STALKER in a context in which the FOX house brand was present, the Judge doubted that an average consumer, encountering Mr Folly’s device, would place significance on the absence of an indication referring to Fox’s house mark.  The goods in question were identical and Mr Folly’s device created a likelihood of confusion with the mark under Article 9(1)(b). This was so regardless of whether “tackle”, which was purely descriptive in the context of angling, was present. 




    

DOMAIN NAMES


Competence of Patents County Court to hear domain name disputes


Michael Toth v Emirates* (Judge Birss; [2011] EWPCC 18; 13.06.11)


Judge Birss held that the Patents County Court had jurisdiction to grant a declaration that a domain name was not an abusive registration. 


Mr Toth registered the domain name “emirates.co.uk”. The Defendant ran the well-known airline commonly referred to as “Emirates”. Emirates used the Nominet Dispute Resolution Scheme to contend that the domain name was an abusive registration and sought to have it transferred to Emirates from Mr Toth. Nominet’s appeal panel decided that the domain name should be transferred to Emirates. Mr Toth sought declarations from the court that, among other things, the domain name was not an abusive registration. 


The Judge dismissed Emirates’ application to strike out Mr Toth’s claims. It was clear that the contract between Mr Toth and Nominet included the contemplation that in certain circumstances, even once the expert determination and appeal procedure had come to an end, the parties may take some sort of dispute to the Court. In such circumstances, Part 40 of the CPR expressly permitted the Court to grant a declaration that the expert determination or appeal should be overturned. The Judge recognised that there was a danger of opening the floodgates to litigation in relation to the domain name policy or Dispute Resolution System of Nominet and therefore invited Nominet to make written submissions at a Case Management Conference.   




    

DESIGNS


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



Case  

GC
T-10/08
T-11/08
Kwang Yang Motor Co v OHIM; Honda Giken Kogyo Kabushiki Kaisha
(09.09.11)

Application (and where applicable, earlier mark)  

   
(and others)
 
(and others)
- internal combustion engine (15.01)
 
(and others)
 
(and others)

Comment

The GC upheld the BoA’s finding that the internal combustion engine designs were invalid due to lack of individual character under Arts 4(2) and 6(1)(b).

As the internal combustion engines were component parts of complex products, the parts of the engine designs which would be visible during normal use primarily determined the overall impression produced on the informed user.

In this case, where in normal use, the user, standing behind the lawnmower principally sees the upper side of the engine. The informed user is a person having some awareness of the existing designs in the sector concerned, without knowing which aspects of that product are dictated by technical function.

Designers of internal combustion engines enjoyed a high degree of freedom in the development of their designs.

The general shape, proportions, and the arrangement and position of the relevant parts of the two designs would produce identical impressions on the informed user.

The shape, dimensions and arrangement of the various components of the internal combustion engines would be more important than differences in details to the informed user. 

Case GC
T-246/10
Industrias Francisco Ivars SL v OHIM; Motive Srl
(06.10.11)
Application (and where applicable, earlier mark)  

- reducers
 
- screw motion reducers    
Comment The GC upheld the BoA’s finding that the Registered Community Design at issue was invalid for lack of individual character under Arts 6 and 25(1)(b). (Decision not yet in English).

PepsiCo Inc v Grupo Promer Mon Graphic SA ‘Promer’; OHIM (CJ (Fourth Chamber); Case C 281/10; 20.10.11)


The CJEU dismissed PepsiCo’s appeal against the GC’s finding that its RCD was invalid under Article 25(1)(d).
 
PepsiCo registered the following RCD for promotional items for games (so-called pogs): 



Promer owned the following earlier RCD for metal plates for games:
 
 



The GC (Case T-910/7) held that the designs did not produce a different overall impression on the informed user. In dismissing PepsiCo’s appeal the CJEU considered the following issues:
 
Constraints on the designer’s freedom

PepsiCo argued that the similarities between the designs observed by the GC, were both due to the functions of the products, and were common to the products at issue. The designer’s freedom was thus limited. According to PepsiCo the GC did not take these constraints into account in its assessment of the designs.


Although the AG was of the opinion that the only constraints on creative freedom to be taken into consideration were those dictated by the need for the goods to fulfil a certain function, rather than standard functions expected in the market, the CJEU declined to enter into such considerations as it amounted to an appraisal of the facts rather than a question of law, and was not therefore subject to review by the CJEU.
 
Concept of the informed user and his level of attention


The CJEU recognised that the Regulation does not define the concept of the informed user, and followed the AG’s opinion in finding that the concept must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, made no direct comparison between the trade marks in conflict, and the sectoral expert, who was an expert with detailed technical expertise.


Therefore the informed user should be considered as a particularly observant user on account of his personal experience or his extensive knowledge of the sector. Because of this, he will usually make a direct comparison between the designs at issue. On the other hand, the CJEU found that the GC could not be reasonably criticised for basing its assessment on the informed user’s imperfect recollection as it could not be ruled out that in the relevant sector a direct comparison would be impracticable or uncommon.


With regard to the level of attention of the informed user, the CJEU stated that the term informed implied that the user, without being a designer or technical expert, knew the available designs in the sector and, because of his interest in the products concerned, showed a relatively high level of attention using these products.


Scope of review by the Courts


PepsiCo argued that the GC’s minute examination of the differences and similarities between the designs lay outside the scope of its competency. The CJEU observed that the GC has jurisdiction to carry out a full review of the legality of the BoA’s assessment. Although the GC may afford OHIM some latitude and restrict its review to an examination of only manifest errors of assessment, in this case the GC did not exceed its remit.


Comparison of the goods rather than of the designs at issue


PepsiCo claimed that the GC had erred by comparing samples of actual products submitted by the parties rather than the designs at issue.


However, the CJEU found that the GC had in fact based its assessment on the designs and had used the comparison of the goods merely for illustrative purposes.  Furthermore, the Court found that as the assessment of the overall impression of the designs was from the perspective the informed user, the actual products which corresponded to the designs could be taken into account. 


Distortion of facts


PepsiCo’s final argument was that there has been a distortion of the facts by the GC in assuming that the informed user would limit his perceptions of the device to the view from above, and thereby overlooking the differences apparent when the designs were viewed in profile. However, PepsiCo had failed to indicate precisely what evidence was distorted and to show the errors of appraisal which in its view, led to the distortion. The CJEU therefore dismissed this argument and the appeal.


 


Court of Appeal rules on UK registered design for vacuum cleaner


Dyson Ltd v Vax Ltd* (Jackson and Black LJJ, Sir Robin Jacob; [2011] EWCA Civ 1206; 27.10.11)


The Court of Appeal, upholding the ruling of Arnold J (reported in CIPA Journal, September 2010) dismissed Dyson’s appeal, holding that the overall impression produced on the informed user by its UK registered design for its DC02 vacuum cleaner was different to that produced by Vax’s Mach Zen model.


Dyson’s registered design was for a cylinder (rather than upright) vacuum cleaner based on Dyson’s two-stage cyclone dust-separation technology: 



Vax’s Mach Zen cleaner was also a cylinder cleaner based on similar technology:
 



The Court (Sir Robin Jacob giving the lead judgment) was of the opinion that the key issue was straightforward; it was whether or not the Mach Zen produced on the informed user a different overall impression to Dyson’s DC02. Elaborate evidence was unnecessary. What really mattered was what the Court could see with its own eyes. The most important things in a case about registered designs were: (i) the registered design; (ii) the accused object; and (iii) the prior art. The most important thing about each of these was what they looked like.


Where expert evidence was allowed, the expert should be told what question(s) he was to address and confine himself to those.  Expert evidence could be relevant to the degree of freedom of the designer in developing his design which, by Article 9(2), must form part of the assessment of the scope of protection. This could take two forms: (i) technical (typically why a thing or part of a thing must be shaped at least broadly in a particular way so as to perform its function); or (ii) from the market to demonstrate that there was design freedom in practice. 


The Court stressed the importance of the parties providing proper reproductions of photographs in cases involving registered designs, and stated that those conducting such cases should take personal responsibility for this – it was not a matter to be left to secretaries or trainees. 


There was no dispute as to the characteristics of the informed user. The important point to note was that he was reasonably discriminating; he paid a relatively high degree of attention, and was therefore not the same as the average consumer of trade mark law.  Neither a manufacturer nor a seller of the products in question, he had some awareness of the state of the prior art and used the product, in which the design was incorporated, as intended. 


The principle of “degree of design freedom” in Article 9(2) plainly referred to the degree of freedom of the designer of the registered design, rather than of the alleged infringement. However, in practice there would seldom be any difference and Arnold J was correct in observing that the degree of freedom may vary according to the technical specification of the product designed. The fact that Arnold J had, on occasion, referred to the degree of freedom of the designer of the Mach Zen was not an error of principle. 


Arnold J had also been correct to list the similarities relied upon by Dyson and consider to what extent they had technical significance and thus affected the degree of design freedom. He was entitled to have concluded from the differences that the Mach Zen produced on the informed user a different overall impression. There was nothing wrong with his conclusion that the overall impression produced by Dyson’s registered design was smooth, curving and elegant, while the overall impression produced by the Mach Zen was rugged, angular and industrial, even somewhat brutal. These were different designs. The appeal was dismissed.


 


Unregistered design right infringement


Pro-Tec Covers Ltd v Specialised Covers Ltd & Ots* (Richard Meade QC; [2011] EWPCC 23; 18.10.11)


Richard Meade QC found that Pro-Tec’s unregistered designs in its caravan towing covers had not been copied by Specialised. The similarity between the parties’ products were explained by their having followed, separately, broadly the same design logic. 


Pro-Tec sold covers to protect the front face of a caravan from dirt and debris whilst being towed. The towing cover consisted of a piece of robust fabric with fastenings to attach it. Specialised also sold caravan covers, but prior to the facts giving rise to these proceedings did not have a front towing product. Pro-Tec came up with a new “strap strip” design for its front towing covers which made them easier to fit, and employed a Mr Lord to market the new design. Mr Lord subsequently left on bad terms, taking samples and drawings with him, and went to work for Specialised. Specialised then began designing front towing covers and almost immediately produced their first version of a front towing cover with a strap strip. Pro-Tec claimed that Specialised had copied their designs and that its witnesses had given false evidence.


The Judge rejected Pro-Tec’s allegation of concerted copying and untruthfulness. Similarities in functional features may well arise from parties independently dealing with the same practical problem (Farmers Build v Carrier Bulk Materials Handling [1998] EWCA Civ 1900 applied). Although the standard of proof was the same in all civil proceedings (balance of probabilities), the seriousness of the allegations was an important consideration when assessing that balance (Re H Minors [1995] UKHL 16). 


This principle was relevant in this case where the allegation was of a concerted campaign of copying, lying and covering up by at least four people, which could only be accepted if there were compelling evidence, of which there was none:  (i) if Specialised had wanted to copy they could simply have bought Pro-Tec’s products as they came out; (ii) towing covers were not big business, selling for under £100 with low sales volumes; (iii) Specialised had the skills and knowledge to come up with a workable design on their own; (iv) a concerted campaign to copy such a minor improvement was unlikely; (v) the fact that Specialised’s early designs did not include the strap strip feature was a powerful indication that it did not have the intention to copy but was following its own independent design process; and (vi) there was no convincing evidence that Specialised had known that Pro-Tec’s covers had any interesting features to copy when they hired Mr Lord.


 


Patents County Court rejects application for adjournment


Victor Ifejika v Charles Ifejika & Anr* (Judge Birss; [2011] EWPCC 28; 06.10.11)


In an action for infringement of a Registered Design and unregistered design rights relating to contact lens cleaning devices, the defendants applied to adjourn the trial on account of the sudden unavailability of a key witness. The claimant opposed the adjournment on the basis that the evidence of the witness was irrelevant and that the claimant was suffering serious financial difficulties, with the result that he could not afford for the proceedings to be delayed any longer.  


Judge Birss refused the application. He considered that cross-examination of the witness would ordinarily be important, and it would therefore normally be appropriate to adjourn the trial. However, the overriding objective was to deal with cases justly, which included ensuring the parties were on an equal footing, saving expense, dealing with cases in ways which were proportionate to the amount of money involved, the importance of the case, the complexity of the issues and the financial position of each party. It also included ensuring that the case was dealt with expeditiously and fairly and allotting an appropriate share of the Court’s resources. Although there was a risk of injustice in either course, the lesser risk of injustice was associated with refusing the adjournment, as it at least ensured that both parties would be able to attend trial and resolve the dispute.


 


 Katharine Stephens, Rachel Fetches and Hilary Atherton


 


Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Abby Minns, Alice Dunn, Devika Khopkar, Holly Greenhow, Mark Livsey, Matthijs Marell, Nick Boydell, Paul Sweden, Tasmina Goraya, Tom Darvill and Victoria Gardner.


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