This month we report on the CJ's decisions on keywords and trade marks with a reputation in Interflora v Marks & Spencer, as well as a further instalment in the long-running trade mark dispute between Budvar and Anheuser-Busch on the meaning of acquiescence and honest concurrent use. We also report on A.S.Watson v Boots in which the PCC considers the factors governing transfer to the High Court.


If you wish to go directly to the case of your interest, please click on its name below: 



Case  

 GC T-524/09 


Meredith Corp v OHIM


(07.09.11)

 

Application


(And where applicable, earlier mark)

 

 BETTER HOMES AND GARDENS


- insurance, financial and monetary affairs and real estate affairs (36)

 
Comment    The GC upheld the BoA’s decision that the mark was devoid of distinctive character under Art 7(1)(b).
The BoA was correct to find that the mark would not be perceived by the public as indicating the commercial origin of the services in question.  Although the mark was not descriptive of the services, the relevant public would understand it as alluding to the fact that those services aid in acquiring better homes and gardens. Not only was it a banal, informative and laudatory advertising slogan but there was a possibility that competitors might legitimately seek to use it in connection with the marketing of their own services.
 

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Case  

 GC T-525/09


MIP Metro Group Intellectual Property GmbH & Co AG v OHIM; Metronia SA


 (08.09.11)

 

Application


(And where applicable, earlier mark)


 

 

 


- consumer electronics and apparatus for recording (9)
- amusement arcade furniture (21)
- games (28)
- games provided online and gaming (41)



- data processing apparatus, machine-readable data carriers with programs recorded thereon (9)
- furniture (20)
- games (28)
- public entertainment (41)
(German mark)

 
 Comment    In December 2008, the CFI held that there was a certain aural similarity between the marks (Case T-290/07) and the opposition succeeded. This decision was reopened by the Presidium of the BoA and the opposition was rejected by the BoA.
The GC now upheld that decision finding that there was no likelihood of confusion between the two marks under Art 8(1)(b).
In view of the nature of the goods concerned including their price and highly technological character, the average consumer would display a particularly high level of attention when purchasing them. Such goods would be comprehensively examined and not purchased impulsively.
In relation to the goods and services at issue, the aural similarity was less important than any visual similarity, notwithstanding that the public must rely on an imperfect recollection of the mark at issue.
Although there was a certain aural similarity between the signs, this was not very strong and was compensated for by the lack of visual similarity between them.
 

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Case  

 GC T-274/09


Deutsche Bahn AG & Co AG v OHIM; DSB


 (09.09.11)

 

Application


(And where applicable, earlier mark)


 

 

 IC4


- travel agency activities, transport, travel arrangement  and railway transport (39)


ICE


- transport of persons and goods by rail vehicles, arranging of railway tours and travel agencies including escorting of travellers (39)
(Community mark) 

 
 Comment    The GC overturned the decision of the BoA and found that there was a likelihood of confusion between the two marks under Art 8(1)(b). 
The BoA had wrongly concluded that there was no similarity between the marks. The GC held that they were visually and aurally similar. In languages other than English both IC4 and ICE would be pronounced as three syllables and the common sequence of the letters ‘i’ and ‘c’, which resulted in a low degree of aural similarity. The marks had an average degree of conceptual similarity as the characters ‘e’ and ‘4’ served to amplify the nature of the services designated by the marks (intercity trains), namely, ‘express’ and ‘fourth generation’, respectively.
The reputation of the mark had been well established in Germany since 1991. Since it is sufficient that there is a likelihood of confusion in only part of the EU, the BoA should have taken into account the highly distinctive character of the ICE mark.
 

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Case  

 GC T-289/09 T-290/09


Omnicare Inc v OHIM; Astellas Pharma GmbH 


(09.09.11)

 

Application


(And where applicable, earlier mark)


 

 

 OMNICARE and OMNICARE CLINICAL RESEARCH


- conducting clinical and laboratory research for others, excluding urologists, in the field of pharmaceuticals (42)



- organisation, business management and medical consultancy for medical practice, in particular for urological practice (35)
- distribution of literature and printed matter for doctors for advertising use, in particular urologists (41)
- organisation of lectures, seminars, expositions and fairs for doctors, particularly urologists (42)
(German marks)

 
 Comment   The GC upheld the BoA’s finding that there was a likelihood of confusion between the two marks under Art 8(1)(b).
The BoA was correct to find that the marks were visually and phonetically identical. The stylised letter ‘o’ on the earlier mark was not visually striking and did not substantially alter the perception of the word OMNICARE. Further, they were conceptually identical as they would both be perceived by the relevant public being medical and pharmaceutical experts in Germany as meaning ‘total care’.
In respect of the OMNICARE CLINICAL RESEARCH mark, the elements “clinical research” were descriptive of the nature of the services and had little influence on the overall conceptual perception of the marks
The BoA was correct to conclude that genuine use of the earlier mark had been shown. Although Astellas offered its services free of charge, it was in competition with other similar services on the market and had created an outlet for its services.
The Court rejected Omnicare’s assertion that the target consumers of the two services were fundamentally different. It was not possible to conduct ‘clinical and laboratory research’ and exclude urologists from the potential recipients of those services. Therefore, the proffered limitation excluding urologists was an artificial one.
 

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Case  

 GC T-232/10


 Couture Tech Ltd v OHIM


(20.09.11)

 

Application


(And where applicable, earlier mark)


 

 


- perfume and cosmetic products (3)
- jewellery (14)
- leather goods(18)
- yams and threads for textiles use (23)
- badges, buckles and hair ornaments(26)
- food, drink and accommodation services(43)

 
 Comment   The GC upheld the BoA’s decision that the registration of a symbol associated with the former USSR was contrary to public policy or accepted principles of morality under Art 7(1)(f).
The mark was an exact representation of the coat of arms of the former USSR and therefore fell under Art 7(1)(f) in relation to at least the member states Hungary and Latvia. The application of Art 7(2) meant that the absolute grounds of refusal under Art 7(1) only need apply in part, including a single Member State.
The GC held that in interpreting the concepts of ‘public policy’ and ‘accepted principals of morality’ it is necessary to take account not only of the circumstances common to all Member States but also the particular circumstances of individual Member States which are likely to influence the perception of the relevant public within those States.
The GC confirmed the BoA’s finding under Art 7(1)(f) in light of the decisive influence exercised by the former USSR over Hungary in recent history, the provisions of the Hungarian Criminal Code and the guidelines of the Hungarian Patent Office restricting the use of ‘symbols of despotism’.
 

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Case  

 GC T-512/10


 Nike International Ltd v OHIM


(21.09.11)

 

Application


(And where applicable, earlier mark)


 

 

DYNAMIC SUPPORT


 -footwear (25)

 
 Comment   The GC upheld the BoA’s decision that the mark was descriptive under Art 7(1)(c). 
The expression DYNAMIC SUPPORT was comprised of two descriptive elements and the combination was not an unusual expression likely to create an impression that was sufficiently far removed from that which resulted from the combination.
The BoA was correct to find that the consumer would identify immediately and without further thought the expression DYNAMIC SUPPORT as describing the characteristics of the footwear.
 

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Case  

 GC T-356/10


 


Nike International Ltd v OHIM; Deichmann SE


(28.09.11)

 

Application


(And where applicable, earlier mark)


 

 

VICTORY RED


- golf clubs and golf-related accessories (28)


 


VICTORY


- gymnastic and sporting articles with the exception of accessories for golf (28)
(German and International marks)

 
 Comment   The GC upheld the BoA’s decision that there was a likelihood of confusion between the mark applied for and the earlier marks under Art 8(1)(b).
The Court held that the goods at issue varied widely in nature and price.  Although consumers may pay more attention when purchasing expensive goods falling within the relevant class, this level of attention could not be presumed for all goods within the class.
The Court held the word VICTORY was visually and aurally the dominant element of the mark for the following reasons: in general consumers would pay more attention to the first part of the mark; VICTORY was the visually longer element of the composite mark; it would also be the first element that consumers would hear; it contained more syllables; and, on that basis, it would be remembered. The mark was also conceptually similar, denoting the idea of triumph.
 

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Decisions not yet in English



Case  

GC T-382/09


Ergo Versicherungsgruppe AG v OHIM; DeguDent GmbH


(09.09.11)

 

Application


(And where applicable, earlier mark)


 

 

ERGO


- material for teeth fillings and impression compounds for dental purposes (5)
- dental instruments and apparatus (10)


CERGO


- dental instruments and apparatus – ‘furnace for the production of dentures and dental implants’ (10)

 
 Comment  

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

 





Case

 


 GC T-197/10 T-199/10



BVR v OHIM; Austria Leasing GmbH


DRV v OHIM; Austrai Leasing GmbH


(09.09.11)


 


Application


(And where applicable, earlier mark)


 


 




- services relating to finance and real estate (35, 36 and 37)


Raiffeisenbank

- financial services (36)



- services relating to finance and real estate (35, 36 and 37)


 


Comment


 


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


 




Case  

 GC T-522/08 T-523/08



Agatha Ruiz de la Prada de Sentmenat v OHIM; Mary Quant Ltd
Agatha Ruiz de la Prada de Sentmenat v OHIM; Mary Quant Cosmetics Japan Ltd


(13.09.11)

 

Application


(And where applicable, earlier mark)


 

 


  - range of products, particularly optical products, precious metals, jewellery, stationery, leather products, chairs, textiles, clothing (3, 4, 5, 8, 9, 11, 12, 14, 16, 18, 19, 20, 21, 24, 25, 27 and 28)



- optical products, jewellery and fashion (9, 14, 16, 18, 20, 24, 25 and 26)

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


Case  

 GC T-485/07



Olive Line International SL v OHIM; Reinhard Knopf


(14.09.11)

 

Application


(And where applicable, earlier mark)


 

 


- fine foods, tea and coffee, fruits and  vegetables, alcoholic beverages (except beer) (29, 30, 31 and 33)



(Spanish trade name)

 
 Comment   The GC reversed the BoA’s decision and found that there was a likelihood of confusion between the mark and the earlier unregistered mark under Art 8(4).  


Case  

 GC T-279/10


K-Mail Order GmbH & Co AG v OHIM; IVKO Industrieprodukt-Vetriebskontakt GmbH


(14.09.11)

 

Application


(And where applicable, earlier mark)


 

 


- glasses and other optical instruments, precious metals, jewellery, bags, particularly leather bags (9, 14 and 18)


WENZ


(14, 18 and 25)

 
 Comment   The GC upheld the BoA’s decision that the earlier unregistered mark had not acquired more than mere local significance and thus could not form the basis of a successful opposition under Art8(4).  


Case  

 GC T-271/09


 Romauld Prinz Sobieski zu Schwarzenberg v OHIM; British-American Tobacco Polska SA


(15.09.11)

 

Application


(And where applicable, earlier mark)


 

 

ROMUALD PRINZ SOBIESKI ZU SCHWARZENBERG


- meat, alcoholic beverages, tobacco (29, 33 and 34)


JAN III SOBIESKI
Jan III Sobieski

- smoking equipment, tobacco, matches, cigarettes, cigars (3, 30, 32, 33 and 34)

 
 Comment   The GC upheld the BoA’s decision that the appeal had not been lodged in time under Arts 60 and 81 because the appellant had not paid the appeal fee within the prescribed time limit.  


Case  

 GC T- 1/09


Aloys F Dornbracht GmbH & Co KG v OHIM; Metaform Lucchese SpA


(20.09.11)

 

Application


(And where applicable, earlier mark)


 

 

META


- fittings, including electrical and sanitary fittings (9, 11, 20 and 21)



- metals, systems such as heating and ventilation systems, furniture, household goods, textiles (6, 11, 20, 21 and 24)

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


Case  

 GC T- 99/10


Meica v OHIM; TofuTown.com GmbH


(20.09.11)

 

Application


(And where applicable, earlier mark)


 

 

TOFUKING
- vegetarian food, especially meat substitutes (29)


KING
CURRY KING
- meat products, vegetarian food and snacks (29, 30)

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

Case  

 GC T- 201/09


Rügen Fisch AG v OHIM; Schwaaner Fischwaren GmbH


(21.09.11)

 

Application


(And where applicable, earlier mark)


 

 

SCOMBER MIX
- preserved fish, fish preparations for use in salads, ready-made fish dishes (29)
- advertising (35)

 
 Comment   The GC upheld the BoA’s decision that the mark was descriptive (Scomber being a genus of mackerels) and thus was not registerable under Art 7(1)(c).  


Case  

 GC T- 250/09


Cesea Group Srl v OHIM; Mangini & C. Srl

(22.09.11)

 

Application


(And where applicable, earlier mark)


 

 


- meat, canned/dried/cooked vegetables, jelly, jam (29)
- coffee, tea, flour, preparations for cereals, bread and confectionery, ice-cream, honey, sauces (30)


MANGINI


- coffee, tea, flour, preparations for cereals, bread and confectionery (30)
- café-restaurants, cafeterias (42)

 
 Comment   The GC reversed the BoA’s decision to allow revocation of the mark as the BoA had wrongly accepted evidence of use of the earlier mark after the prescribed time limit, under Art 76(2).  

Case  

 GC T- 174/10


ara AG v OHIM; Allrounder SARL


(22.09.11)

 

Application


(And where applicable, earlier mark)


 

 


- leather products, including bags and umbrellas (18)
- shoes, clothes (25)


A


- leather products, suitcases, umbrellas (18)
-  shoes (25)

 
 Comment  

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

 


Case  

 GC T- 251/08


 


Vion NV v OHIM


(23.09.11)

 

Application


(And where applicable, earlier mark)


 

 

PASSION FOR BETTER FOOD


- pharmaceutical and veterinary products (5)
- food products, including meat, preserved fruit and vegetables, potatoes, ready-made foods (29)
- coffee, tea, cocoa, desserts, pasta (30)

 
 Comment  

The GC upheld the BoA’s decision to refuse the mark under Art 7(1)(b) because it was not distinctive.

 

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Case  

 GC T- 403/10


Brighton Collectibles Inc v OHIM; Felmar


(27.09.11)

 

Application


(And where applicable, earlier mark)


 

 

BRIGHTON


- Clothes (25)



- belts (used in Germany, Italy, Ireland, UK), leather products, hats, watches (used in Ireland, Italy)

 
 Comment  

The GC upheld the BoA’s decision that the opposition was unfounded as the earlier unregistered marks had not satisfied the conditions of Art 8(4) and they were not sufficiently well known under Art 8(2)(c).

 

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Meaning of ‘acquiescence’ and ‘honest concurrent use’


Budejovický Budvar národní podnik v Anheuser-Busch Inc (CJ (First Chamber); C-482/09; 22.09.11)


In a long running dispute between Budejovický Budvarand Anheuser-Busch involving the BUDWEISER trade mark, the Court of Appeal ([2009] EWCA Civ 1022 reported in CIPA Journal, November 2009) referred a number of questions to the CJ on the concept of acquiescence in Article 9(1) including when the five year period starts to run, and also the interpretation of Article 4(1)(a) and the compatibility of the doctrine of honest concurrent use with EU law.


Budejovický Budvar and Anheuser-Busch both market their beers in the UK using the word sign BUDWEISER or expressions including that sign, and have done so since 1973 and 1974 respectively. Both parties applied to register the word BUDWEISER for ‘beer, ale and porter’; Anheuser-Busch in 1979 (which Budejovický Budvar opposed) and Budejovický Budvar in 1989 (which Anheuser-Busch opposed). In February 2000, the Court of Appeal, applying the Trade Marks Act 1938 which allowed concurrent registration of identical or confusingly similar marks in circumstances of honest concurrent use, dismissed both oppositions and allowed both parties to register BUDWEISER. Budejovický Budvar and Anheuser-Busch were subsequently both entered on the Trade Marks Register as a proprietor of the BUDWEISER word mark on 19 May 2000.  


Four years and 364 days after registration of the BUDWEISER marks, Anheuser-Busch applied to the Trade Marks Registry for a declaration of invalidity of Budejovický Budvar’s mark on the basis that Anheuser-Busch’s mark was the earlier mark as its application for registration was made earlier than Budejovický Budvar’s application; the marks and the goods were identical so Anheuser-Busch, as proprietor of the earlier mark, was entitled to a declaration that Budejovický Budvar’s mark was invalid by virtue of Article 4(1)(a); and there was no acquiescence because the five year period provided for in Article 9(1) had not expired. The Trade Marks Registry allowed the application and this decision was upheld on appeal by Budejovický Budvar to the High Court. Budejovický Budvar appealed to the Court of Appeal which stayed the proceedings pending answers to the questions referred for a preliminary ruling.


Acquiescence within the meaning of Article 9
Article 9(1)
limits the enforcement of a trade mark proprietor’s right to seek a declaration of invalidity of a later registered trade mark under Article 4(1)(a) where he has acquiesced for a period of five successive years in the use of this later trade mark while being aware of such use.


On the basis that the Trade Marks Directive makes no express reference to the law of the Member States in respect of the concept of acquiescence, and an analysis of the third, seventh, ninth and eleventh recitals in the preamble to the Trade Marks Directive the CJ concluded that the concept of acquiescence within the meaning of Article 9(1) was a concept of EU law which must be given an autonomous and uniform interpretation. In coming to this conclusion, the CJ referred to case law in which the CJ had concluded similarly with respect to Articles 5 to 7 based on an analysis of the same recitals (Case C-355/96, Silhouette International Schmied). On the interpretation of the concept of acquiescence the CJ observed that the verb ‘acquiesce’ has several everyday meanings including ‘allow to continue’ or ‘not to prevent’, it is therefore not the same as ‘consent’ which is where an intention to renounce a right is unequivocally demonstrated (Cases C-414/99 to C-416/99, Zino Davidoff and Levi Strauss). The concept of acquiescence implies that the person who acquiesces remains inactive in situations in which he would be in a position to oppose. Accordingly, the CJ concluded that a proprietor of an earlier trade mark could not be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a third party of a later trade mark identical with that of the proprietor if that proprietor was not in any position to oppose that use. The CJ found further support for this interpretation in the context of Article 9(1) and the objectives of the Trade Marks Directive.


On the form of the rule under Article 9(1), the CJ concluded that for the five year period of acquiescence to start to run, the following four conditions must be satisfied: (i) the later mark must be registered in the Member State concerned (mere use of a later trade mark even if it is subsequently registered is not enough); (ii) the application for registration of the later mark must have been made by its proprietor in good faith; (iii) the proprietor of the later mark must use the trade mark in the Member State where it is registered; and (iv) the proprietor of the earlier mark must have knowledge of the registration of the later trade mark and its use after its registration. Whether or not these four prerequisite conditions are present is for the national court to determine. In answer to the referring court’s question about whether the five year period of acquiescence can start to run before the proprietor of the earlier trade mark has had his trade mark registered, the CJ concluded that it could. For the purposes of Article 9(1), an earlier trade mark is ‘as referred to in Article 4(2). Within the meaning of Article 4(2) a trade mark can be considered to be earlier without having been registered. Accordingly, registration of the earlier trade mark in the Member State concerned is not one of the prerequisites for the period of acquiescence to start to run.


Honest concurrent use
The referring court asked whether Article 4(1)(a) must be interpreted as meaning that the proprietor of an earlier trade mark can obtain the cancellation of an identical later trade mark designating identical goods even where there has been a long period of honest concurrent use of the two marks.


The CJ concluded that Article 4(1)(a) must be interpreted in a similar way to Article 5(1)(a). In this exceptional case, the CJ held that the use by Budejovický Budvar of the BUDWEISER trade mark in the UK neither had nor was liable to have an adverse effect on the essential function of the BUDWEISER trade mark owned by Anheuser-Busch. Both parties had been marketing their beers in the UK for almost 30 years, had been authorised to register their marks by the Court of Appeal, and had used their marks in good faith from the beginning. UK consumers were well aware of the differences between the two beers and the taste and get-up had always been different and clearly indentified as coming from different companies. Consequently, the CJ concluded that under Article 4(1)(a) a proprietor of an earlier trade mark cannot obtain the cancellation of an identical later trade mark designating identical goods where there has been a long period of honest concurrent use and where that use neither has nor is liable to have an adverse effect on the essential function of the trade mark.


Keywords and marks with a reputation


Interflora Inc. and Anr v Marks & Spencer plc (“M&S”) & Anr (CJ (First Chamber); C-323/09; 22.09.11)


The CJ has answered the questions referred to it by the UK High Court (Arnold J, [2009] EWHC 1095 (Ch) and [2010] EWHC 925 (Ch) reported in CIPA Journal, June 2009 relating to keywords and trade mark infringement. 


The CJ has clarified the circumstances in which a sponsored link advertiser will be liable for trade mark infringement when they use a keyword that has been registered as a trade mark by a third party. The CJ’s decision broadly follows the AG’s decision (reported in CIPA Journal, April 2011) and the CJ reiterated the need for balance between the protection afforded to trade marks with a reputation and fair competition in the sector for the goods and services for which such marks are registered.


The questions referred in respect of Article 5(1)(a) concerned whether a trade mark owner was entitled to prevent a competitor from using keyword advertising that was identical to the owner’s trade mark and in particular where that mark had acquired a secondary meaning denoting a commercial network. In respect of Article 5(2), the UK High Court had referred questions asking whether in the circumstances the use complained of could be regarded as causing detriment to the distinctive character of the mark under the heading of dilution or taking unfair advantage of the distinctive character or repute of the trade mark. 


Double-identity
This case concerned ‘double-identity’, that is use by M&S of an identical sign (Interflora) to the trade mark (INTERFLORA) in relation to identical services, namely for flower-delivery services. 


Applying Google France (Case C-236/08 to C-238/08) and BergSpechte (Case C-278/08) the CJ held that use of a sign by an advertiser as a keyword in the context of an internet referencing services to trigger a sponsored link is use in the course of trade in relation to the advertiser’s goods or services even where the sign selected as a keyword does not appear in the advertisement.  Such use can only be prevented by the trade mark owner if it is liable to have an adverse effect on one of the functions of a trade mark.


Adverse effect on the origin-indicating function
The CJ followed its decision in Google France and noted that whether there had been an adverse effect on the origin-indicating function in this case was a matter for the UK High Court to decide on the facts. 


In this case Interflora had argued that INTERFLORA had acquired a secondary meaning such that it denoted a commercial network of florists. In this context the CJ held that if internet users were led to believe, incorrectly, that the flower-delivery service offered by M&S was part of Interflora’s commercial network, then this would adversely affect the origin-indicating function. However, the fact that some internet users may have had difficulty grasping that M&S’ services were independent from Interflora was not a sufficient basis for a finding that the origin-indicating function had been adversely affected. The test is whether a reasonably well-informed and reasonably observant internet user is deemed to be aware, on the basis of general knowledge of the market, that M&S’ flower-delivery service is not part of the Interflora network but is, in fact, in competition with it. If this is not generally known, then it was a question of fact whether M&S’ advertisement enabled the internet user to know that M&S was not part of the Interflora network. The CJ noted that in this case, the Interflora network is composed of a large number of retailers of varying size and commercial profile and it may be particularly difficult for the internet user to determine this in the absence of any indication from an advertiser as to whether it is or is not part of the Interflora network.


Adverse effect on the advertising function
In terms of the advertising function of the trade mark, the fact that a competitor selects the trade mark as a keyword and thereby increases the cost-per-click for the trade mark owner is not sufficient basis in every case for concluding that the advertising function is adversely affected. Although the trade mark is an essential element in the system of undistorted competition, its purpose is not to protect owners against practices inherent in competition. Internet advertising on the basis of keywords that are identical to trade marks allows competitors to offer consumers alternatives to the trade mark owners’ goods or services but does not prevent the owner from using their own mark to win customers.


Adverse effect on the investment function
Trade marks may also have an investment function whereby the owner uses the mark to acquire or preserve a reputation capable of attracting customers and retaining their loyalty. This is a distinct function but overlaps with the advertising function. Where the trade mark already enjoys a reputation, the investment function is adversely affected where the third party’s use affects that reputation and jeopardises its maintenance.  However, if the competitor’s use of an identical sign is used fairly and respects the trade mark’s origin-indicating function, then the trade mark owner cannot prevent such use even if the trade mark owner has to adapt its efforts to acquire or preserve its reputation.  The fact that as a result of such use some consumers may switch to a competitor cannot be relied upon by the proprietor of the trade mark as adversely affecting the investment function.  
 
Extended protection for trade marks with a reputation
In this case it was accepted that the INTERFLORA trade mark had a reputation.


Dilution
The CJ held that use of a trade mark as a keyword does not necessarily contribute to turning the trade mark into a generic term. The test was whether a reasonably well-informed and reasonably observant internet user who had typed in the keyword and triggered the display of an advertisement would be able to tell that the competitor’s goods or services offered did not originate from the trade mark owner but from a competitor. If this was the case then the trade mark’s distinctiveness has not been diluted by such use. The use had merely drawn the internet user’s attention to alternative goods or services offered by the competitor. 


It was a matter for the UK High Court to determine on the facts whether M&S’s advertising enabled the reasonably well-informed and observant internet user to determine that M&S was independent from Interflora. If this was not the case, and the origin-indicating function had been adversely affected, then the UK High Court would also need to determine whether the use of ‘Interflora’ as keywords on the internet has had such an impact on the market for flower-delivery services that it has come to designate in the consumer’s mind any flower-delivery service. 
 
Free-riding
The CJ was of the opinion that where a mark enjoys a reputation, it is likely that the purpose behind a competitor selecting a sign identical to the trade mark is to take advantage of the distinctive character or repute of the trade mark. This is because internet users searching for goods and services covered by the trade mark will trigger the competitor’s advertisements alongside the natural results. The question is whether such use can be construed as being without ‘due cause’. Where the advertisement displayed on the internet on the basis of a keyword search provides the internet user an alternative to the trade mark owner’s goods or services and does not offer imitations or adversely affect the functions of the trade mark or cause dilution or tarnishment, then such use will generally fall within the ambit of fair competition in the sector for the goods or services.  As such, the use is not without due cause.


Patents County Court considers the factors governing transfer to the High Court


A.S. Watson (Health and Beauty Continental Europe) B.V. and Ots v The Boots Company Plc and Ots* (Judge Birss; [2011] EWPCC 26; 08.09.11)


In a case concerning alleged trade mark infringement, Judge Birss allowed Boots’ application to have the case transferred to the High Court.


The Claimants, which included the owner of the well known Superdrug stores, brought proceedings against Boots in the PCC alleging that Boots’ newly launched sun cream product SOLEI infringed its CTM for the word SOLAIT under Articles 9(1)(b) and 9(1)(c). SOLAIT was registered in Class 3 in respect of cosmetics, lotions and creams for the skin; sun screen products; cosmetic (sun) tanning preparations; and after sun products. SOLEI was due to come onto the market in 14 European countries, and the product was made and branded in the UK. Once proceedings commenced, Boots applied to transfer the case to the High Court. 


Judge Birss applied the factors governing the question of transfer of a case from the PCC to the High Court which he had set out in Alk-Abello v Meridian Medical Technologies [2010] EWPCC 14. 


Size and financial position
Although not determinative, the Judge considered that this factor pointed firmly in favour of transfer. The parties were substantial companies which could well afford to bring or defend the claim in the High Court.


Whether the claim was an appropriate one for the PCC


Value of the claim
The Judge considered that the parties’ rival arguments about value were in danger of getting out of hand. The assessment of the value of the claim and of an injunction for the purpose of a transfer application was not the place for refined debates about detailed evidence. Although the claim was undoubtedly more valuable than many cases before the PCC (with the cost to Boots of having to rebrand likely to exceed 1 or 2 million Euros), the value of the claim was not so substantial that value alone would mandate a transfer to the High Court.


Complexity of issues and length of trial
Although there were a number of legally complicated issues, these were purely matters of trade mark law with which the PCC was well equipped to deal. However, the fact that 14 countries were at stake and that each would need to be considered separately in some detail, particularly in light of the decision of the CJ in DHL v Chronopost Case C-235/09, meant that more than a single expert would be needed to deal with not only the position, but the linguistics, of each country in issue. The impact of needing to consider numerous countries, with different languages and different markets would be that the case would take substantially longer than 2 days to hear. This was an important factor which pointed in favour of the High Court. 


Specialist judge
Judge Birss
rejected Watson’s argument that he was a specialist judge and that, if the matter was transferred to the High Court, it could be heard by any Chancery Judge regardless of their background. All Chancery judges were well qualified to hear trade mark cases and the fact of their different backgrounds was irrelevant. 


Overriding objective to deal with cases justly
Looking at the matter overall and bearing in mind the overriding objective, Judge Birss concluded that the balance in this case was in favour of transfer to the High Court. The case was between two major organisations with a complexity which made it unsuitable to be heard in the PCC. The value of the case was not a factor of significance as compared to the nature of the litigants and the suitability of the case to be heard in the PCC. 


United Airlines awarded summary judgment against United Airways


United Airlines Inc v United Airways Ltd and Anr (Vos J; [2011] EWHC 2411 (Ch); 24.06.11)


Vos J granted summary judgment to United Airlines against United Airways, holding that United Airways was passing off and infringing United Airlines’ UK trade marks by using the abbreviated term ‘United Airways’.


United Airlines was a well-known US carrier that operated over 3,000 flights per day worldwide under the marks ‘United’, ‘United Airlines’ and ‘United Express’. It had UK registered trade marks for UNITED and UNITED AIRLINES in Class 39. The Defendant operated seven aircraft, mainly in Bangladesh but also to and from the UK. The aircraft were inscribed either with Bangladeshi writing or with the words ‘United Airways’, but not with the Defendant’s full corporate name, ‘United Airways Limited’, or ‘United Airways Bangladesh Limited’. Its website also bore the word ‘United’ in significantly larger letters than the word ‘Airways’, ‘BD Limited’ or ‘Bangladesh Limited’. 


Vos J held that United Airways had infringed United Airlines’ marks under Section 10(1). The goods and services, namely airline services, were identical; the fact that the Defendants operated a smaller airline on a specialist flight route was irrelevant. From the point of view of the average consumer, the words ‘Airline’ and ‘Airways’ effectively carried the same meaning; the difference was so insignificant that it may go unnoticed (LTJ Diffusion SA v Sadas Vertbaudet SA Case C-291/00 applied). Further, the average consumer would know United Airlines for the name ‘United’ and might not know whether it was properly called United Airlines or United Airways. The average consumer may also consider ‘BD Limited’ or ‘Bangladesh Limited’ as indicating a subsidiary of the United Airlines with which they were familiar. For the same reasons, the Judge found that there was a likelihood of confusion, including a likelihood of association, under Section 10(2). 


The Judge, rejecting the Defendants’ own name defence, held that there was also infringement under Section 10(3). Vos J considered that the Defendants had chosen the name deliberately, knowing that they would be using a name and mark that was well-established internationally. There was no reason for them to do so and no good reason why such a likelihood of confusion should be tolerated (Hasbro Inc & Ots v 123 Nahrmittel GmbH & Anr [2011] EWHC 199 (Ch)). It was not necessary for United Airlines to establish bad faith in order to establish that unfair advantage had been taken of its reputation in the word ‘United’. 


The Judge also found passing off. It was beyond doubt that United Airlines had goodwill in the name ‘United’ and ‘United Airlines’ in the UK; there was a misrepresentation made by the Defendants that was likely to lead the public to believe that their services were the services of the Claimant; and damage to goodwill was sufficient for passing off to be established, without showing a specific loss of business.


 COPYRIGHT


Patents County Court considers applications to set aside Notices of Discontinuance and joint hearings of parallel proceedings


Golden Eye (International) Ltd v Mr Mohamed Maricar and Golden Eye (International) Ltd v Mrs D Vithlani* (Judge Birss; [2011] EWPCC 27; 23.09.11)


In two parallel cases where it seemed at least arguable that each raised common questions, Judge Birss made an order convening a hearing of the two cases together.  The Judge also directed that an application to set aside a Notice of Discontinuance should not be dealt with on paper, but at a hearing. 


Golden Eye claimed to be the exclusive licensee of rights in the film ‘Fancy an Indian?’.  It brought separate proceedings against Mr Maricar and Mrs Vithlani for copyright infringement by unlawfully making the film available for downloading by third parties. 


Judge Birss noted that the claims bore striking similarities to the claims in the case of Media CAT v Adams [2011] EWPCC 6. Mrs Vithlani had made an application to set aside Golden Eye’s Notice of Discontinuance and had requested that the application be dealt with without a hearing. Judge Birss, though anxious not to put the parties to further and unnecessary expense, held that it was not an application that should be resolved on paper without a hearing. Although the Judge acknowledged that he had set aside Notices of Discontinuance in the Media CAT cases, he described such an order as ‘unusual’ and one which needed careful consideration with full submissions. Additionally, as Golden Eye’s case against Mr Maricar was similar to its case against Mrs Vithlani, the Judge concluded that it may be just and convenient to give directions in one or other or both actions at the same time. 


DESIGNS


Patents County Court applies objective test in determining whether an action has settled


Martin Moore Ltd v Mark Plant Ltd & Anr* (Judge Birss; [2011] EWPCC 25; 07.07.11)


In an action for infringement of a Registered Community Design relating to door knobs, Judge Birss dismissed an application by the Claimant, holding that no reasonable claimant in the position of the current Claimant could have thought that an offer to settle was still open for acceptance when they purported to accept it. 


On 3 May 2011, the Defendants made an offer of settlement to the Claimant, which the Claimant said it would consider. On 12 May the Defendant wrote to the Claimant proposing to counterclaim for the invalidity of the design at issue. They wrote again on 16 May indicating that the Defendants had found some prior art which they said rendered the RCD at issue invalid for lack of novelty. They requested that the Claimant discontinue the proceedings, failing which the Defendants would apply to have the action struck out. In a telephone call between the parties’ solicitors on 17 May, it was explained that the purpose of the call was to give a final warning of the Defendants’ intentions to the Claimant. Following service of the Defence and Counterclaim for revocation on 19 May, on 26 May the Claimant purported to accept the Defendants’ offer of 3 May. The Claimant claimed that the offer was still open and the Defendants claimed that it was not. 


Applying an objective construction of the interaction between the parties, Judge Birss found that it would have been clear to an objective party in the position of the Claimant, seeing what was emanating from the Defendants over the course of 16, 17 and 19 May, that the Defendants had by then withdrawn the offer. Finding that the offer was still on the table as at 12 May, the Judge concluded that no reasonable claimant could have thought that the offer was still on the table as at 16 and 17 May. However, the Judge rejected submissions made on behalf of the Defendants that the offer was not still open purely as a matter of effluxion of time. 


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: Claire Chapman, Devika Khopkar, Nick Boydell, Paul Sweden, Tom Darvill and Toby Bond.


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