September 2011

30 September 2011

Katharine Stephens, Hilary Atherton, Alice Sculthorpe

This month we report on selected decisions of the Appointed Person between January and July 2011, as well as the decision of the Patents County Court in Beechwood House Publishing T/A Binleys v Guardian Products Ltd & Anr on the sui generis database right.
 
To be taken to your case of interest please click on the below:



TRADE MARKS


Selected decisions of the Appointed Person: January 2011 – July 2011


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Case   0-004-11
Hing Kwong Yam v Asia Five Eight LLC
(04.01.11)
Application (and where applicable, earlier mark)  

TAO ASIAN BISTRO
- nightclub service (41)


- chinese restaurant services, but not including any such service relating to alcoholic beverages (43) 

Comment

Professor Ruth Annand allowed Hing Kwong Yam’s appeal from the HO’s decision to allow the registration.


The HO had held that ‘nightclub services’ in Class 41 were dissimilar to ‘Chinese restaurant services; but not including any such services relating to alcoholic beverages’ in Class 43 and thus there was no likelihood on confusion under s 5(2)(b). However, when comparing the Class 41 services, the HO had disregarded: (a) the dictionary definitions of nightclub (which all concurred that food may be served); (b) his own experience; and (c) trade practices, all of which would have given shape and form to the perception of the average consumer. The sole justification the HO gave for excluding factors other than complementarity from his comparison was that the provision of food and drink lay outside Class 41. Professor Annand held that the HO had made a material error of principle by using classification to find that the services were dissimilar. Whilst classification could be relevant to what services were within the Class 41 Application, it was irrelevant to what degree of similarity there was between the Class 41 services and the services in the earlier registration.


Professor Annand held that there was some similarity between the specifications. The services were often provided contemporaneously and through the same supply channels. The marks were similar to a high degree and the earlier mark had a good degree of inherent distinctiveness. Thus, there would be a likelihood of confusion if Asia Five Eight were permitted to register TAO ASIAN BISTRO in relation to nightclub services.


As the appeal in relation to s 5(2)(b) was successful, it was unnecessary to deal with the appeal under s 5(4)(a).

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Case  

0-040-11
UMG Recordings Inc v Terry Miller and Linda Miller
(31.01.11)

Application (and where applicable, earlier mark)  



- restaurant, bar and catering services (43)


ROC-A-FELLA
(CTM)
- various goods and services including entertainment in the nature of live concerts and performances by musical artist and groups (41)

ROCAFELLA/ROC-A-FELLA
(unregistered)

Comment

Professor Ruth Annand dismissed UMG’s appeal under ss 5(2)(b) and 5(4)(a) in relation to restaurant services but allowed it in respect of catering services. The HO had allowed the opposition in relation to bar services, and this decision was not challenged on appeal.

In relation to restaurant services, the reason for the HO’s finding that there was no similarity between this and ‘entertainment in the nature of concerts and performances by musical artists and groups’ was that there was no evidence to support UMG’s assertion that the respective services were supplied through the same trade channels. Failing such evidence, the HO had not erred in refusing to accept as a notorious fact that the trade channels overlapped and the HO was entitled to find that the services were not similar. UMG accepted that the case in relation to restaurant services under s 5(4)(a) was narrower than under s 5(2)(b) because UMG was know as a record label business. The point raised by UMG regarding the trend for celebrity restaurants and bars had been considered by the HO and there was no basis for it to be revisited on appeal. Thus, this ground of opposition also failed.

In relation to bar and catering service, the overlapping average consumer in both instances was the same general public. The only reason given by the HO for treating the services differently was that applying a subsequently or sequentially encountered test, there was no likelihood of confusion in relation to catering. However, it was not the law that such a test must be applied. Even applying this test, the HO did not allow for (as conceded by the Millers) live musical entertainment and catering service being encountered together on subsequent or sequential occasions. Further, the HO’s hypothetical example (for which he concluded that confusion was too remote) of UMG employing the Millers to provide catering service in their venue assumed that UMG was responsible for the entire event, which was not always the case. Professor Annand held that the HO should have treated bar and catering service on a collective basis and determined that the scope of protection for the earlier mark was the same for both. Accordingly, the appeal succeeded in relation to catering services.

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Case

0-048-11
Melford Pier Holidays Limited v The Melfort Club
(21.01.11)

Application (and where applicable, earlier mark)

THE MELFORT VILLAGE

MELFORT VILLAGE


- stationary (16) 
- time share management service (36)
- providing sports and leisure facilities (41)
- holiday village services (43)
- beauty salons (44)

Comment

Amanda Michaels dismissed the appeal from the HO’s decision to reject the opposition under s 3(1)(c), holding that the marks were not objectionable as geographical terms.

The HO had not erred in finding that the ‘area’ in which the parties ran their respective holiday home businesses was not, as a matter of fact, a village. Further, the HO had considered whether the evidence showed that the settlement, although not actually a village, was known as or called a village, and was entitled to conclude that this was not the case. The HO had also considered future use, i.e. whether it was probable that the area would in due course become a ‘village’, and there was no material error in his analysis.

Ms Michaels next considered whether the term ‘Melfort Village’ should be kept free for use by other traders. The HO was entitled to conclude that the level of familiarity of relevant consumers with the name Melfort was too low for the geographical term to be seen as such. This reflected his findings as to the very small size of the settlement at Melfort and the small scale of the parties’ respective businesses. As to future use, although there was force in Pier’s submission that a geographical term used in relation to holiday services was liable to be perceived as making a reference to where the service were rendered, this would only effect the result if the sign was, indeed, a geographical term. The HO had drawn a distinction between the name ‘Melfort’ which he found was a geographical term (albeit obscure) and ‘Melfort Village’ which he found was not (it was a term used only for the Club’s holiday resort/business). Ms Michaels considered that she should not interfere with those findings of fact. It followed that she could not hold that the HO erred in finding that Melfort Village was not a place name which was capable of designating the geographical origin of the goods and services in question in future.

Finally, although the HO had not expressed himself clearly in certain parts of his decision, he had applied the correct test when considering whether the term ought to remain available for other users. Given all his other findings, it did not seem that he would have come to any other conclusion on this point.

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Case

0-076-11
Viglen Limited v Genee World Limited
(18.02.11)

Application (and where applicable, earlier mark)

GENEE POWER BOARD
- interactive white boards, none being computers, computer hardware or data processing equipment (9)

GENEE SLATE
- graphic tablets, none being computers, computer hardware or data processing equipment (9)

GENIE
- computers (9)

Comment

Iain Purvis QC dismissed the appeal from the HO’s decision that there was a likelihood of confusion under s 5(2)(b).

Mr Purvis considered each of the four alleged errors in turn. Firstly, the HO was not wrong to characterise interactive whiteboards and graphic tablets as “audio visual apparatus” - he was simply adopting the submissions of Genee World itself. Secondly, there could be no doubt that the HO was correct to say that interactive whiteboards were powered goods. Thirdly, the HO’s account of the significance of the word “slate” in the context of graphic tablets was not in any way wrong. Fourthly, the HO had clearly taken account of the fact that the average consumer was sophisticated and careful. He had merely found that this was not enough to militate against confusion given the high degree of similarity between the marks.

In conclusion, Genee World was unable to identify any error of principle in the HO’s decision or to suggest that it was clearly wrong on the evidence. Mr Purvis commented that Appeals should not be brought simply in the hope that an Appointed Person might take a different view from the HO. The HO’s decision was in this case plainly within the bounds of what a reasonable tribunal was entitled to decide.

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Case

0-078-11
Re O2 Holdings Limited’s Application
(14.02.11)

Application (and where applicable, earlier mark)


- various goods in Classes 9, 38, 41 and 42

Comment

Daniel Alexander QC remitted the case to the Registrar for further prosecution.

The HO was plainly right to hold that the mark was a representation of a SIM card. However he was wrong to hold that the s 3(1)(c) objection applied only where the mark was used “in respect of those goods it visually represents (i.e. SIM cards)”. In doing so, the HO implicitly held that the s 3(1)(c) objection was inapplicable to any telecommunications services in class 38 and that such services were only excluded from registrability by virtue of s 3(1)(b). Mr Alexander held that s 3(1)(c) did not have such narrow application and applied also to signs that were directly descriptive of ancillary characteristics of goods and services.

However, Mr Alexander considered that the HO had insufficient reasons for concluding that the mark was not distinctive in relation to goods and services which were unlikely to involve the use of a SIM card, such a broadcasting and internet and email related services.

Mr Alexander noted that it was up to O2 in the first instance to consider whether any commercially useful class of goods or services could be defined for which the sign did not fall foul of ss 3(1)(b) and 3(1)(c).

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Case

0-082-11
Thorworld Industries Ltd v Plant Handling Ltd
(21.02.11)

Application (and where applicable, earlier mark)

EASYRAMP EASYRAMPS
- container ramps, mobile loading container ramps, ramps for the loading and loading of goods vehicles, parts and fittings relating to the aforementioned (7)

EASYRAMP
- wheelchair ramps, doorway/threshold ramps, and curb/step ramps (7)

Comment

Ms Amanda Michaels dismissed the appeal from the HO’s decision to uphold Thorworld’s opposition under s 5(2).

Plant Handling’s criticisms regarding the HO’s finding that “disability ramps” were similar to “container ramps” was misplaced. The argument was based upon a comparison of the goods previously sold by each of the parties, rather than a comparison of their respective trade mark specifications. For the purposes of s 5(2), the specifications had to be compared. Thorworld’s specification was not limited to ramps for disabled use and therefore the HO’s consideration of a full range of types of ramps and platforms was appropriate.

In relation to Plant Handling’s earlier rights in the EASYRAMP mark, Ms Michaels held that, although Art 16(1) of the TRIPs Agreement protected unregistered earlier trade mark rights which must not be “prejudiced” by a later registration, this provision did not go as far as to require a trade mark authority to permit registration of the protected earlier mark.

Lastly, Ms Michaels considered the issue of inconsistency between the HO’s decision and an earlier decision in which an opposition by Plant Handling to Thorworld’s registration of EASYRAMP had succeeded only in narrowing Thorworld’s specification to its current form. Although the evidence before the HO had referred to this earlier decision, Plant Handling had not drawn to the HO’s attention any particular elements upon which it wished to rely or suggested that the HO ought to follow the decision. Ms Michaels held that the HO had not erred in failing to take particular findings in the earlier decision into account in her own reasoning.

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Case 0-096-11
Re David Michael Thrower’s Application
(08.03.11)
Application(and where applicable, earlier mark)

- golf practice apparatus, golf putters, golfing apparatus, golf training aids, golf swing alignment apparatus (28)
Comment

Iain Purvis QC allowed Mr Thrower’s appeal from the HO’s decision to refuse registration under s 3(1)(b).

Regarding the standard of review, Mr Purvis noted that the global assessment required under s 5(2)(b) (which was the section under consideration in REEF [2003] RPC 5) generally involved a consideration of many more variables than were raised by the question of distinctiveness under s 3(1)(b). Therefore it was not necessary in this case to have any serious degree of reluctance to overturn the decision of the HO.

It was common ground that “Putter Scope” was not a term used in the field of golf equipment. The HO was therefore right to consider whether it could be used as a descriptive term for the goods in question. For this to be the case, it must be possible to identify a realistic product falling within the specification which could appropriately be described as a “Putter Scope” or otherwise by reference to that phrase. “Putter” meant a golf club used for putting. “Scope” had a number of meanings, but most relevantly it meant a telescopic sight incorporating a foreshortening lens. In the field of golf it was know to use a telescopic sight as part of a range finder for assessing the distance to the hole. However, it was hard to imagine that a “scope” in the sense of a telescopic sight would be of any practical benefit in conjunction with a putter which was generally used only for short range shots.

In the circumstances, Mr Purvis considered that the term “Putter Scope” was not apt to describe any realistic product within the scope of the specification. Accordingly, it was not itself devoid of descriptive character. Further, the extra-large “O” incorporating cross hairs used in the mark, while allusive to a telescopic sight, was striking and had some originality. The overall device was not a simple description of a putting aid and would be taken by the average consumer as a brand, not a description.

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Case   0-124-11
Yadex International GmbH v Sabuncular Tarim Hayvancilik Gida, Sanayi ve Ticaret Limited Sirketi 
(30.03.11)
  
Application (and where applicable, earlier mark)  



(IR UK)
- beers, mineral and aerated waters and other non-alcoholic drinks (32)

Madran
(CTM)
- mineral waters, spring waters and aerated waters and other non-alcoholic drinks (32)

Comment

Professor Annand dismissed Sabuncular’s appeal from the HO’s decision to declare the device mark invalid under ss 47(2) and 5(2)(b).

As a preliminary issue, Professor Annand refused to grant Sabuncular’s request for a stay pending the outcome of its challenge to the validity of the earlier “madran” CTM, reasoning that Sabuncular had chosen to defend the case on the basis that there was no need to invalidate the CTM and it was too late on appeal to change this strategy.

The HO was right to observe that the validity of the earlier CTM could not be called into question in the present proceedings but only in cancellation proceeding brought in OHIM. Treating the CTM as valid was not an artificial exercise but an obligation imposed on the HO under Art 107 of Regulation 207/2009.

As the invalidity challenge was to the extension of protection to the International Registration in the UK, the relevant public was the UK consumer. This was despite the fact that the invalidity challenge was based on an earlier CTM. Thus, the HO had not erred in regarding Matrazan (Case T-6/01) as relevant to his decision.

Sabuncular submitted that the HO incorrectly applied Windsurfing Chiemsee (Joined Cases C-108/97 and C-109/97) by failing to recognise that registration was excluded for geographical names not only where they were currently associated with the goods but also where they were liable to be used as indications of the geographical origin of the goods. Professor Annand reiterated that the issue in this case was not the validity of the earlier CTM but the extension of protection in the UK to the later International Registration. In any case, the HO found that UK consumers would have no knowledge of the Madran Mountain in Turkey and he considered that it was plausible, on the basis of the Windsurfing judgment, that the word Madran as such was registrable for the goods at issue.

In its grounds of appeal Sabuncular suggested that the HO had made up his mind about the likelihood of confusion before taking into account its arguments based on Windsurfing, including that any distinctiveness of “madran” resided only in the use of the lower case “m” (since, without a capital first letter, madran would not be seen as a geographical name whereas Madran would). Sabuncular pointed particularly to the HO’s comment that the scope of protection of the earlier CTM could not be limited to simply the difference between Madran and madran as “it would not reflect the real likelihood of confusion between the marks”. Professor Annand held that, read in context, the HO’s comment provided no support for Yadex’s suggestion. She did not therefore accept that the HO erred in his consideration or application of the Windsurfing judgment.

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Case   0-095-11
Gilmar SpA v Icebreaker Ltd
 (07.03.11)
Application (and where applicable, earlier mark)  

ICEBREAKER REALFLEECE
- fabrics, clothing, footwear, headgear, all being made wholly or principally of real woollen fleece (24, 25)


 
- articles of clothing, but not including footwear other than woven or knitted footwear (25)

ICEBERG
SPORT ICE
ICE JEANS
ICE ICE BERG
ICE J ICE B
ICE ICEBERG
(Unregistered)

Comment

Ms Amanda Michaels dismissed the appeal from the HO’s decision to reject the opposition under ss 5(2)(b) and 5(4).

Ms Michaels first considered s 5(2)(b). The HO’s finding that “Realfleece” had less significance than “Icebreaker” disclosed no error of principle. Contrary to Gilmar’s submission, the HO would have been wrong to ignore this element completely. The HO was entitled to conclude that the marks had extremely low visual similarity and she had given due consideration to the importance of the first part of the words. Similarly, the HO had not made any error of principle in her assessment of aural and conceptual similarity.

The HO had not explained why she had not referred to a BoA decision (brought to her attention by Gilmar) in which Gilmar’s opposition to an application by Icebreaker to register the word “Icebreaker” as a CTM had succeeded on the basis of an Italian mark. However, it was a well established rule that decisions on the same or similar marks made by OHIM were not binding on the UK Registry. Given the differences between the facts of the cases, even had the HO considered the BoA decision, it would not have had an impact upon her assessment of the similarity of these marks.

The HO was right to consider the issue of similarity from the standpoint of the average English speaking member of the UK pubic: the possibility that the concept of the two marks might not be assessed in the same way by non-English speaking consumers was irrelevant.

The HO erred in finding that Gilmar’s mark had not acquired enhanced distinctiveness. However, this point was immaterial to the HO’s assessment of the likelihood of confusion, as she found that the mark was in any event inherently distinctive.

The HO also erred in failing to distinguish between the question of whether Gilmar had proved that it had enhanced the inherent distinctiveness of its ICEBERG mark for the purposes of s 5(2)(b), and the question of whether Gilmar had goodwill in its ICEBERG mark or any other “Ice” marks for the purpose of establishing goodwill sufficient to found a passing off action for s 5(4)(a). Having found no enhanced distinctiveness, the HO simply extrapolated that finding into the consideration of goodwill. In light of the evidence of its turnover and advertising expenditure, Ms Michaels found that Gilmar did in fact have goodwill in the ICEBERG mark.  However, in the absence of satisfactory evidence that Gilmar’s goodwill extended to some or all of its “family” of Ice and Iceberg marks, Ms Michaels concluded that normal and fair use of ICEBREAKER REALFEECE was not likely to amount to a misrepresentation.

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Case

0-092-11
Cofra Holding AG v Toppy Trademarks Limited
(02.03.11)

Application (and where applicable, earlier mark)


- clothing, footwear and headgear (25)

YESSICA
- textiles and textile goods, not included in other classes, bed and table covers (24)
- retailing services (35)

Comment

Ms Michaels dismissed Cofra’s appeal from the HO’s decision to reject the opposition under s 5(2)(b).

Ms Michaels refused Cofra’s application to adduce further evidence relating mainly to (a) that the average consumer in the UK was aware that some foreign words written with a J are pronounced as if written with a Y, and (b) the question of how Toppy’s sign might be pronounced by Germans, Poles, etc. resident in the UK and that Yessica would be recognised as a name. The evidence was not significant to the appeal: whilst there were many persons whose mother tongue was not English who lived in the UK, such persons were not the average UK consumer for the purposes of considering the pronunciation or meaning of a word. There was no reason why the average consumer in the UK would think that Toppy’s sign was a foreign name.

The HO had not made any material error in her analysis of aural, visual and conceptual similarity. When stating that “the conceptual dissimilarity of the marks is an important factor reducing the likelihood of imperfect recollection”, the HO was not saying that a likelihood of imperfect recollection was a legal test. She was merely saying that such confusion may be reduced where the marks were conceptually dissimilar. Further, the HO had not applied the incorrect test for likelihood of confusion. Looking at the decision as a whole, it was clear that the HO felt that the visual and aural similarities of the marks were outweighed by their conceptual dissimilarity and that this reduced level of similarity meant that there was no likelihood of confusion despite the substantial similarity between the goods. There was no material error in this analysis justifying interference on appeal.

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Case

0-094-11
Annette Cambell and Bente Zaber v Catherine Hughes 
(07.03.11)
 

Application (and where applicable, earlier mark)

IAN ADAM
- education, providing of training, voice training, voice coaching, voice lessons, entertainment, sporting and cultural activities (41)

Comment

Geoffrey Hobbs QC allowed the appeal under s 3(6) for the most part, and set aside the HO’s decision in relation to all of the services specified other than sporting activities.

Ian Adam, a renowned voice training coach, died on 10 May 2007. Catherine Hughes, a friend and professional associate, applied to register the name IAN ADAM as a trade mark less than 3 months later.

Mr Hobbs found that the business referred to as the IAN ADAM SONG STUDIO survived after Ian Adam’s death so as to be capable of ongoing commercial exploitation. By carrying on that business, Ms Hughes acted as executor de son tort (a person not lawfully appointed executor and without title to a grant but treated as having assumed the executorship by reason of her own intrusion upon the affairs of the deceased).

Given the evidence, Mr Hobbs concluded that it was more probable than not that Ms Hughes realised the IAN ADAM SONG STUDIO business and associated goodwill were assets of Ian Adam’s estate. Hence the absence of any express averments to the contrary in her witness statement. By filing the application, Ms Hughes was for her own benefit seeking to exclude the surviving goodwill and reputation attaching to the name IAN ADAM from the estate she was purporting to administer. Thus, the application was for an improper purpose which rendered it objectionable on the grounds of bad faith under s 3(6). Accordingly, the application was rejected for all the services specified other than sporting activities (since sporting activities would not capitalise on the goodwill and reputation belonging to the estate).

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Case

0-168-11
ID Software, Inc v Early Learning Centre Limited
(06.05.11)

Application (and where applicable, earlier mark)

 TOWER OF DOOM
- toys, games and playthings, playing cards, gymnastic and sporting articles, parts and fittings for all the aforesaid goods (28)

DOOM





(CTM)
- computer/video games (9)

DOOM
(unregistered)

Comment

Professor Ruth Annand dismissed ID Software’s appeal from the HO’s decision that there was no likelihood of confusion under s 5(2)(b).

ID software’s main complaints were that the HO failed to: (a) appreciate the significance of DOOM in the ELC mark; and (b) recognised that TOWER was descriptive when applied to games featuring towers. Both these arguments had been made at the hearing below. The HO had concluded that the difference between the marks outweighed the similarities such that, whilst there was some similarity, the respective marks could not be considered similar. In the absence of a distinct and material error of principle, Professor Annand was unable to interfere with this evaluation.

The HO had not applied a threshold test to the similarity of marks. Even if he did, it made no difference because he had gone on to consider other factors. The HO’s finding that the marks could not be considered similar was not a material error of principle: there had been several examples of cases before the supervising courts in Luxembourg where, despite marks containing a common element, the courts considered that the differences resulted in them not being similar.

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Case

0-167-11
Reckitt Benckiser Healthcare (UK) Ltd v Vitabiotics Ltd 
(09.05.11)

Application (and where applicable, earlier mark)

SWEETELA
-  sweetening preparations, low-calorie sweeteners for use in food and beverages (1)
- pharmaceutical preparations, sweetening preparations for dieters, slimmers or medical purposes in tablet or powder form (5)

SWEETEX
- artificial sweetening preparations (1)

SWEETEX
- dietetic sweetening agents in tablet form for diabetics, all being goods for export (5)

Comment

Ms Amanda Michaels dismissed Vitabiotic’s appeal from the HO’s decision to reject the opposition under s 5(2)(b).

In relation to visual and aural similarity, the HO was plainly right to compare the marks as a whole, assessing the overall impression created by each of them. The HO specifically said that he was not discounting the descriptive element, namely that each mark began with the word “sweet”. The HO’s findings that there was only a moderate level of visual similarity and a low degree of aural similarity accorded with principle and it was not appropriate to revisit these issues on appeal.

There was no error in the HO’s finding that there was no relevant conceptual similarity. Cases such as Castellani (Case T-149/06) suggested that where the first part of the mark was descriptive, it may be expected to have less impact and contribute less to the overall impression of the mark than when the first part was distinctive.

The HO had noted that several factors, such as the identity of the goods and the highly distinctive nature of the SWEETEX mark, pointed to a likelihood of confusion. However, he found that the differences between the marks were sufficient to preclude both direct and indirect confusion. There was no error in principle in the reasons the HO gave for reaching that conclusion.

In relation to the Class 5 goods, Reckitt submitted that the HO ought to have taken into account the potentially significant consequences of any confusion. However Ms Michaels noted that there was a distinction between consequences and the existence of a likelihood of confusion: if no likelihood of confusion existed (as found by the HO), the point did not arise.The GC upheld the BoA’s decision that the mark (meaning ‘health’ in Greek) was descriptive under Art 7(1)(c). Further, it had not acquired distinctive character through use under Art 7(3).

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Case  

0-245-11
Xing Beverage LLC v Xing Health Ltd
(11.07.11)

Application (and where applicable, earlier mark)  

 XING
- milk and milk products, soups, dried and cooked fruit and vegetables (29)
- fruit smoothies, fresh fruit drinks, fresh fruit juices (32)
- services for providing food and drink (43)

XING ENERGY
XING SODA
XING COFFEE
- staple foods and prepared foods (30)
- energy drinks and fruit flavoured soft drinks (32)

Comment

Ms Amanda Michaels dismissed the appeal from the HO’s decision to uphold the opposition under s 5(2)(b).

Ms Michaels rejected Xing Health’s (“Health’s”) application to file additional evidence. The results of the questionnaire, even if presented in the form of a proper witness statement and properly analysed, were unlikely to have an important influence on the result of the appeal.

Ms Michaels noted that all of the drinks in question were non-alcoholic. Whilst freshly made smoothies may be more expensive than a bottled fruit juice or juice drinks, it was not in a wholly different price bracket and would be drunk on the same sorts of occasions. A consumer would see a smoothy as broadly competitive to a fruit flavoured soft drink. It followed that the HO had not erred in her analysis of the average consumer and the similarity of the goods.

Towards the end of the appeal hearing, Health indicated that it would be prepared to narrow its specification further, to reflect the nature of the business – i.e. the provision of a service rather than the sale of goods. However, the HO had found a degree of similarity between Xing Beverage’s ‘fruit flavoured soft drinks’ and Health’s ‘services for providing drink’. There was no material error in the HO’s reasoning and the changes proposed to Health’s specification made no difference to the result.

Ms Michaels was of the view that consumers might think that Health, as a supplier of fresh fruit smoothies, was engaged in the related business of supplying drinks (even if not of an identical kind) to retail outlets. In the circumstances, there was no error in the HO’s conclusion that there was a likelihood of confusion.



Patents County Court considers ‘new approach to accounts of profits’


Hollister Inc. & Anr v Medik Ostomy Supplies Ltd* (Judge Birss; [2011] EWPCC 24 (Ch); 22.06.11)


In an action for trade mark infringement, Judge Birss refused the Claimants’ application to strike out the Defendant’s Response to the Claimants’ claim for an account of profits.


The Defendant engaged in the parallel importation of colostomy pouches and was found to have infringed the trade marks in question because of a failure to give adequate prior notice to the Claimants concerning its repackaged products.  The Claimants subsequently elected to seek an account of profits.  However, in its Response to the Points of Claim, the Defendant argued that the Claimants’ entitlement to a financial remedy, including an account of profits, was to be assessed in light of the extent of the damage to the Claimants caused by the Defendant’s infringement and in accordance with the principle of proportionality.  As the Claimants had not alleged in their Points of Claim that they had suffered any damage, the Defendant argued that the Claimants were not entitled to an account of profits.


The Judge identified the ‘real question’ as whether the Defendant’s plea was a proper plea in respect of the account of profits.  Considering the CJ’s decision and the opinion of the Advocate General in Boehringer Ingelheim v Swingward Limited, Case C-348/04, the Judge considered that the CJ had varied the law in this respect and that infringement by way of a failure to give notice was a relevant consideration in the present case.  It was a matter for trial to decide the precise way in which the new approach to accounts of profits was to be developed having heard all of the evidence.  Accordingly, the Judge refused to strike out the relevant part of the Defendant’s Response to the Points of Claim or to refuse to admit evidence adduced in defence of the claim.



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DATABASE RIGHTS


Patents County Court rules on infringement of sui generis database

Beechwood House Publishing T/A Binleys v Guardian Products Ltd & Anr* (Judge Birss; [2011] EWPCC 22 (Ch); 20.06.11)


Having rejected Binleys’ earlier application for summary judgment on infringement, (reported in CIPA Journal, November 2010), Judge Birss held at trial that the Defendants had infringed Binleys’ sui generis database right in its database of GP practices under Regulations 12 and 16 of the Copyright and Rights in Databases Regulations 1997 SI 1997/3032. 


The parties were rival producers of healthcare information. Binleys had, since 1994, published and maintained a database containing the contact details of practice nurses and doctors associated with GP practices. The first Defendant provided marketing information in the fields of list sourcing, mailing and campaign response handling. The second defendant provided database marketing services to companies servicing the healthcare sector.


In 2007, Binleys found clear evidence that the first Defendant was using information from its database. The first Defendant had obtained the data in question from the second Defendant, who had in turn obtained it from a company called Bespoke Database Organisation Limited (“BDOL”). BDOL had purchased the practice nurse subset of the database (which consisted of 8,363 records) from Binleys in 1997. Although BDOL had paid for a licence for a single usage of the data and should have deleted the records after that single usage, it had not done so. By 2006, BDOL had a GP practices database consisting of some 180,000 records. At that time, 6,901 of the practice nurse records in BDOL’s database were an exact match to Binley’s database as it was in 1997. 


In 2006, the second Defendant bought BDOL’s whole database and loaded it onto its computer system. In doing so, it loaded onto its computers the 6,901 practice nurse records which were identical to Binleys’ 1997 database and probably, the Judge found, all 8,363 records but with modifications. In August 2007, the second Defendant contracted with a client to carry out a mailing exercise to 42,000 GPs and at least 6,000 practice nurses. It then provided the data in question to the first Defendant which wrapped, addressed and posted the materials out to the GP practices. The Judge found that 4,783 (57%) of the 6,000 practice nurse records used by the Defendants for the mailing were identical to those in Binleys’ 1997 database, and that the remaining records were probably taken from that database but had subsequently been modified.


Judge Birss noted that the question of infringement of database rights is a tort of strict liability which rendered the Defendants’ state of mind irrelevant. Applying Regulations 12 and 16, as well as the CJ’s decision in Directmedia GmbH v Albert-Ludwig Universitat Freiburg Case C-304/07, he found that the loading of the practice nurse records from BDOL onto the first and second Defendants’ computers were acts of extraction within the meaning of Directive 96/9 (the “Database Directive”). He stated that the only issue in both cases was whether what was extracted was a ‘substantial part’ of Binleys’ database. Applying the approaches for assessing substantiality set out in The British Horseracing Board v William Hill Case C-203/02, the Judge considered the volume of data extracted as against the volume of data in the database as a whole (quantitative approach), and the scale of the investment in obtaining, verifying or presenting the contents regardless of whether that amounted to a quantitatively substantial part in the whole (the qualitative approach). 


In terms of the quantitative question, Judge Birss found that the 6,000 practice nurse records extracted for use in the mailing exercise represented a quantitatively substantial part of Binleys’ 1997 database, which had contained 43,000 records. Taking into account the CJ’s application of a relative test in relation to the database as a whole in British Horseracing Board, Judge Birss was of the opinion that ‘quantitatively substantial’ could not require the numerical majority of the records. However, 6,000 out of 43,000 records (about 14%), or the 4,783 identical records (about 11%) was at the lower end of what could be regarded as quantitatively substantial. Despite this conclusion from a quantitative point of view, the Judge found that the 6,000 records or the 4,783 identical records were qualitatively a substantial part of Binleys’ 1997 database. On the Claimant’s evidence, the identical records alone represented 1,800 phone calls made by Binleys per year between 1994 and 1997 in order to obtain, verify and present the data. The Judge held that this represented a substantial amount of work and an economic investment which the Database Directive set out to protect.


Judge Birss rejected the Defendants’ arguments as to degradation of the data between 1997 and 2007. Noting that British Horseracing Board made it clear that the intrinsic value of the data was irrelevant, he was of the opinion that it had nothing to do with the substantiality test. Nevertheless, although the Judge did not rely on it in reaching his conclusion, he remarked that the price paid by BDOL for the data indicated that it was a substantial investment and therefore represented a qualitatively substantial part of the database. 


The Judge, again not relying on it in reaching his conclusion, also acknowledged that the practice nurse records extracted were a well defined subset of the larger database.  Therefore, from a quantitative point of view, the totality of what was extracted represented a quantitatively substantial part of the database, as grouping records into types or classes was a key part of having a database in the first place. To do so was not to give records of a certain type an intrinsic value, and was therefore not prohibited by British Horseracing Board


Finally, the Judge found that the exercise of writing the address labels for the mailings was itself an infringement under Regulation 16(2). Although each individual letter was an insubstantial part of the whole database, the individual extractions were repeated and systematic, adding up to a substantial part on the findings above. 


On the question of the liability of the two Defendants, the Judge found that they were jointly and separately liable with each other as joint tortfeasors. Applying SABAF v Meneghetti [2002] EWCA 976, the mailing project was a single common project and product of the concerted action of the two defendant companies, which acted in combination to carry it out. 


Katharine Stephens, Hilary Atherton and Alice Sculthorpe


Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Benjamin Woodfield, Chelsea Roche, Emma Drake, Nick Boydell, Tim Harris 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