This month we report on the High Court decision in Mattel v Zynga concerning the validity of a 3D mark for the SCRABBLE tile. We also report on the Court of Appeal decision in Hollister v Medik Ostomy Supplies regarding accounts of profits where there has been a failure to notify the trade mark owner of the repackaging of parallel imports.

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

Decisions of the GC

Case   GC

T-555/11 
tesa SE v OHIM; La Superquímica, SA
(13.11.12)

Application (and where applicable, earlier mark)   Tesa Tack logo
- self-adhesive products for office and household purposes (16)

Tack Ceys logo
- bands, strips, sheets and adhesive matters for stationery or the household, plastic sheet for packaging (16)
(Spanish mark)
Comment   The GC dismissed the appeal from the BoA's finding that there was a likelihood of confusion between the marks under Art 8(1)(b).

The marks had a certain degree of visual similarity. The BoA was correct to hold that the marks had no meaning in Spanish and therefore the word 'tack' could not be considered descriptive by the relevant Spanish public. The fact that the word 'tack' was used for adhesive products in other marks or internet sites did not prove that the relevant public, in so far as it understood English, understood the meaning of that word.

There was also a certain degree of phonetic similarity between the marks due to the common element 'tack' which held more importance phonetically in the marks than the softer words 'tesa' and 'ceys'.

The conceptual similarity between the marks was irrelevant since neither sign had any meaning in Spanish.

Given the identity of the goods, the BoA was correct to find the likelyhood of confusion.
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Case   GC
T-529/11

Evonik Industries AG v OHIM; Impulso Industrial Alternativo, SA
(14.11.12)
Application (and where applicable, earlier mark)   IMPULSO CREADOR
- various services including business management, administration, consultancy and advisory services, market research (35)
- scientific and technological services, research and design, industrial analysis and research services (42)

Impulso logo
- business management administration, market research, management, employment and accounting consultancy (35)
- scientific and technological services, research and design, industrial analysis and research services (42)
(Community mark)
Comment   The GC upheld the BoA’s finding that there was a likelihood of confusion under Art 8(1)(b).

It was not disputed that (i) the relevant public consisted of professionals in the sector, having a high level of attentiveness on account of the specialisation of the services concerned; and (ii) the services covered by the marks were partly identical and partly similar.

The marks were phonetically and visually similar to a degree due to the common word element 'impulso'. The GC concluded that presence of the figurative element in the earlier mark did not have a notable impact on the overall visual impression. Verbal elements of a mark should, in principle, be considered more distinctive than figurative elements, as the average consumer would refer to the former more easily. Further, the figurative element of the earlier mark might be considered purely decorative and not as an indicator of origin.

The marks were conceptually similar for those consumers who understood the meaning of the word 'impulso'. A conceptual comparison could not, however, be carried out for other consumers.

There was therefore a likelihood of confusion between the marks which was not overcome by the high level of attentiveness of the relevant public.
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Case   GC

T-589/11
Phonebook of the World vs OHIM; Seat Pagine Gialle SpA
(20.11.12)

Application (and where applicable, earlier mark)   PAGINE GIALLE
- printed matter including books, magazines, yearbooks, catalogues, telephone directories (16)
- advertising and business services (35)
Comment   The GC upheld the BoA's decision and dismissed an application to invalidate the mark pursuant to Arts 52(1)(a) and 7(1)(b) to 7(1)(d).

The mark (meaning 'yellow pages' in Italian) was registered in 1999 on the basis that it had become distinctive through use in Italy.

When considering whether the mark lacked distinctive character, was descriptive or had become customary throughout the EU (with the exception of Italy), the GC held that the BoA had correctly concluded that the expression PAGINE GIALLE carried no meaning for the majority of EU consumers who did not speak Italian. The BoA was therefore entitled to find that, while the mark had acquired distinctive character through use in Italy, the mark was not descriptive or customary outside Italy. In fact, the relevant public would see it as a fanciful expression with a distinctive character.

The GC disginguished this case from Weisse Seite (Case T-322/03, reported in CIPA Journal, April 2006) (meaning 'white pages' in German) in which the applicant only had to prove invalidity in respect of the German-speaking public.
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Case   GC

T-558/11
Atlas sp.z.o.o v OHIM; Couleurs de Tollens
(21.11.12)

Application (and where applicable, earlier mark)   ARTIS
- paints and decorative and protective compositions containing them, undercoatings, preparations protecting against the deterioration of walls (2)
- stopping and hydroinsulating materials for joints (17)

ARTIS
- adhesives for industrial purposes, products for the preparation, protection, preservation of hydro insulating of cement, concrete, or masonry works (1)
- building materials for smoothing and levelling walls and floors, non metallic coatings for floors and walls (19)
(French mark)
Comment   The GC upheld the BoA's decision that there was a likelihood of confusion between the marks under Art 8(1)(b).

The relevant public consisted of both DIY enthusiasts and professionals who were likely to have a high degree of attention when choosing the goods at issue.

The relevant goods were similar. They were, overall, of a similar nature as they included goods used for the construction, protection, maintenance and repair of buildings. Further, the goods may have had the same intended purposes, namely coating for walls and insulation.

Some of the goods at issue were also complementary. For example, the smoothing and levelling chemicals and building materials covered by the earlier mark could prove indispensible for the use of the goods in Class 2 of the application, such as paints. The same was true of the goods in Class 17; these may prove indispensible for the use of non metallic coatings for floors and walls in Class 19 of the earlier mark.

Given further the identity of the signs, the BoA was correct to find a likelihood of confusion.
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Case   GC

T-338/11
Getty Images (US), Inc v OHIM
(21.11.12)

Application (and where applicable, earlier mark)   PHOTOS.COM
- computer software and computer accessories (9)
- installation and maintenance of computer software (42)
- licensing and imagse of footage (45)
Comment   The GC upheld the BoA's decision to refuse registration of the sign under Arts 7(1)(b) and 7(3).

The BoA was correct to have found that the sign was devoid of any distinctive character in respect of the relevant goods and services under Art 7(1)(b). The word 'photos' would immediately inform the relevant public that the goods and services covered by the application were related to photography and the '.com' element would be recognised by the public as referring to an internet site. The GC noted that ownership of a domain name did not mean that the name could consequently be registered as a CTM. All the conditions set out in Regulation 207/2009 would still need to be satisfied first.

The BoA was also correct to find that the sign had not acquired distinctive character through use under Art 7(3). The evidence produced related almost exclusively to the use of the domain name 'photos.com'. Use of a sign other than as a trade mark would not constitute proof of acquired distinctive character.

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Case   GC

Joined Cases T-537/10 and T-538/10
Ursula Adamowski v OHIM; Fabryka Wezy Gumowych i Tworzyz Sztuczynch Fagumit sp. z.o.o
(29.11.12)

Application (and where applicable, earlier mark)    Fagumit logo

FAGUMIT
- rubber end-products for the motor vehicle industry (12)
- hoses, rubber semi-finished goods in the form of film (17)

Fagumit 2nd logo

- rubber hoses, PVC hoses (17)
(Polish mark)

Comment   The GC dismissed the appeal from the BoA's decision to invalidate the two marks under, inter alia, Arts 53(1)(b) and 8(3).

Unlike Arts 8(1), (2), (4) and (5), Art 8(3) did not refer to marks registered in a member state or having effect in such a state. Therefore the ground of invalidity laid down in Art 53(1)(b), in conjunction with Art 8(3), could be relied on even if that mark was registered only in a country outside the EU. The application for invalidity could thus be brought before Poland's accession to the EU.

Adamowski failed to demonstrate that consent had been granted by Fabryka to apply for registration of the contested marks. Furthermore, the fact that Fabryka did not object to use of the earlier mark by other companies was not an indication that the mark had been abandoned; it was simply a consequence of co-operation between Fabryka and its distributors.

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3d mark for SCRABBLE tile held not to be a sign or capable of being represented graphically

J.W. Spear & Sons Ltd & Ots ("Mattel") v Zynga, Inc.* (Arnold J; [2012] EWHC 3345 (Cf); 28.11.12)

Arnold J granted partial summary judgement in favour of Zynga, finding that Spear's UK registered trade mark for a 3D tile did not satisfy the conditions of Article 2 because it was (i) not a sign and (ii) not capable of being represented graphically.

Mattel were the owners of all intellectual property rights associated with the well-known game SCRABBLE outside the US and Canada. Mattel were contending that the exploitation by Zynga of a digital game called SCRAMBLE (according to Mattel) or SCRAMBLE WITH FRIENDS (according to Zynga) infringed four of its registered trade marks. One of the four marks was a 3D mark for a tile (the "Tile Mark") owned by Spear (a subsidiary of the second claimant, Mattel, Inc.). The Tile Mark was registered in respect of "computer game adaptations of board games" in Class 9, "board games" in Class 28 and "organisation of competitions and exhibitions, all relating to board games" in Class 41. The mark represented as follows:

Tile illustration

Zynga was contending that the Tile Mark was invalid, and sought summary judgement on that part of its counterclaim.

Arnold J set out the three conditions with which the subject matter of an application or registration must comply under Article 2: (i) it must be a sign, (ii) that sign must be capable of being represented graphically, and (iii) the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.

The Judge held that it would not assist Mattel in showing that the Tile Mark satisfied the first and second conditions to establish that it had acquired a distinctive character. Arnold J found that the Tile Mark did not comply with the first condition because it covered an infinite number of permutations of different sizes, positions and combintations of letter and number on a tile. Furthermore, it did not specify the size of the tile and the colour was not precisely specified. As the Tile Mark covered a multitude of different appearances of tile, it amounted to an attempt to claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bore any letter and number combination on the top surface. In the Judge's view that was a mere property of the goods and not a sign, and to upload the reigstration would allow Mattel to obtain an unfair advantage.

The Judge went on to find that even if the Tile Mark complied with the first condition, it did not comply with the second condition since the representation was not clear, precise, intelligible or objective. As such, it did not permit the average consumer to perceive any specific sign. Nor did it enable either the competent authorities or competitors to determine the scope of protection afforded to the proprietor, other than that it was very broad. The Judge held that Mattel had no real prospect of successfully arguing to the contrary and it was therefore appropriate to grant summary judgement in order to avoid further costs being wasted on the factual investigation as to whether the Tile Mark had acquired distintive character.


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Court of Appeal rules on account of profits for failure to notify trade mark owner of repacking of parallel imports

Hollister Inc & Anr v Medik Ostomy Supplies Ltd (Jackson and Kitchin LJJ & Peter Smith J; [2012] EWCA Civ 1419; 09.11.12)

The CA (Kitchin LJ giving the lead judgement) allowed Hollister's appeal in part, finding that Judge Birss had erred in his approach to the talking of the account of Medik's profits and in his approach to the calculation of Medik's net profits (reported in CIPA Journal, January 2012). Medik's cross-appeal was dimissed.

Medik had engaged in the parallel importation of colostromy pouches and was found to have infringed the trade marks in question because of a failure to give adequate prior notice to Hollister concerning its repackaged products. Hollister subsequently elected to seek an account of profits. Judge Birss awarded Hollister half of Medik's net profits from its sale of repackaged parallel imports that had not been notified to Hollister. Judge Birss had held that the failure to give notice was a relevant fact and had adopted the following approach: (i) assess the account on the normal basis under English law; (ii) consider the extent of the damage caused to the proprietor by the infringement and the issue of proportionality, in all circumstances of the case; and (iii) decide what final sum should be awarded having regard both to the sum assessed on the account at step (i), and the factors considered at step (ii).

The CA held that Judge Birss  had been wrong to characterise the failure to give notice simply as a procedural deficiency, and had fallen into error in adopting the three step test above. It was not permissible to embard on step (ii), as an assessment of the damage caused to the claimant formed no part of an account of the profits made by the infringer. The Judge was also found to have erred in embarking on step (iii), as this approach formed no part of the a conventional account of profits as a matter of domestic law and was not, the CA held, required by the decision of the CJEU in Boehringer II C-348/04. The CA also held that Judge Birss ought not to have allowed Medik to deduct a proportion of its general overheads without evidence that such overheads were properly attributable to the infringing acts.

The CA dismissed Medik's cross-appeal, finding that there was no basis for challenging the Judge's finding as to the number of infringing products sold.


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High Court considers scope of "database programs and databases" and "telecommunication services" specifications

YouView TV Ltd v Total Ltd* (Floyd J; [2012] EWHC 3158 (Ch); 09.11.12)

Floyd J dismissed an appeal from the decision of the hearing officer, holding that she has not erred in finding a likelihood of confusion under Section 5(2)(b).

YouView TV Ltd was a joint venture between the BBC, ITV, BT, Channel 4, TalkTalk, Arqiva and Channel 5 whose business was to launch a set top box which would allow reception of free-to-air digital radio and television broadcasts as well as a recording facility and access to catch-up TV services over the internet. The "YouView Box" was therefore an apparatus for television and radio reception which would require on-board software in order to carry out those and other functions. YouView TV Ltd sought to register the following mark in Class 9 in respect of "apparatus for television and radio reception" and "software for embedding in apparatus for television and radio reception" (the latter specification being a new formulation advanced for the first time on appeal):

  YouView logo

Total owned an earlier work mark, YOUR VIEW, which was registered for, among other things, "database programs and databases" in Class 9 and "providing access to computer databases; telecommunications services" in Class 38. The hearing officer had found a likelihood of confusion under Section 5(2)(b). YouView Ltd appealed, on the basis that the hearing officer had given too broad a construction to "database programs and databases" and to "telecommunications services" in Total's mark.

Software for embedding in apparatus for television and radio reception
Floyd J found that the hearing officer had not construed the terms "databases" and "database programs" too widely. The Judge held there was no reason to limit those terms to "freestanding" ones; if database software was being sold for inclusion in a more complex software arrangement, it did not lose its character as database software at the point of sale. As the specification of the opposed mark included the notional activity of selling or supplying software for organising the data held in the database of a television or radio receiver, it fell within the scope of Total's mark.

Apparatus for television and radio reception
Floyd J held that once the same piece of apparatus, being a smart phone or a computer, was capable of receiving both telephone calls and television programs, it beame extremely difficult to maintain any distinction between telephone data/broadband services on the one hand and broadcasting services on the other. The Judge considered there to be at least a very close similarity between telecommunication services and apparatus for television and radio reception. Accordingly, the hearing officer had been entitled to find that the relevant goods and services were highly similar.

As regards the similarity of the marks, the hearing officer had engaged in mulifactorial assessment and had been entitled to find that the marks in question were highly similar.


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DATABASES

SMI Group Ltd v Daniel Levy & Ots (Lesley Anderson QC; [2012] EWHC 3078; 09.10.12)

Lesley Anderson QC (sitting as a Deputy Judge of the High Court) dismissed the fourth defendant's application to challenge the jurisdiction of the Court to hear a claim concerning breach of confidence, copyright infringement and infringement of database rights.

SMI was an English company which employed the first and second defendants (Mr and Mrs Levy) in its Singapore branch. The Levys routinely remotely accessed information held on servers in England by SML, including an extensive database. SMI claimed the Levys had extracted substantial quantities of commercially confidential and valuable information from its servers and/or database in England which were then used extensively to the advantage of the Levy's new employer, a Dutch company called IB Consultancy BV, the third defendant. IB's director was the fourth defendant, Mr Bonsen, who was resident in the Netherlands. Mr Bonsen brought the present application challening the jurisdiction of the English Court.

The Judge considered that SMI had a good arguable case that it maintained a database containing information which was entered, constructed and retained on servers and databases in the UK and that, when accessed remotely by the defendants, there was either an extraction or a re-utilisation of data under Article 16 of the Copyright and Rights in Database Regulations 1997 (the "Database Regulations"). The question was where, in a claim for infringement of database rights under the Database Regulations, the harmful event occurred or may occur. Referring to the Opinion of the Advocate General in Football Dataco Ltd & Ots v Sportradar GmbH & Anr C-173/11, the Judge considered that he had urged an approach which rejected emissions and reception as being appropriate criteria for determining the locus of a relevant communication in the case of internet communication in favour of a more embracing definition which acknowledged that the tort could be committed in more than one place.

As SMI had a good arguable case that the place where the harmful event occurred was, at the least, in the UK and possibly elsewhere, Mr Bonsen's application was dismissed.


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DESIGNS

Window blind headrail product found valid and infringed

Louver-Lite Ltd v Harris Parts Ltd T/A Harris Engineering (Judge Birss; [2012] EWPCC 53; 23.11.12)

Judge Birss found Louver-Lite's Registered Community Design ("RCD") for a window blind headrail valid and infringed by Harris' "Valencia" window blind headrail product.

Louver-Lite owned the following RCD for its window blind headrail:

Louver-Lite Headrail illustration

A cross-section of Louver-Lite's product is shown below:

Louver-Lite cross-section

Louver-Lite claimed that Harris had infringed its RCD by selling a headrail product called the "Valencia", a cross-section of which is shown below:

Valencia cross-section

Harris denied infringement and counterclaimed for invalidity of Louver-Lite's RCD on grounds of lack of novelty and lack of individual character.

As regards the informed user, Judge Birss rejected Harris' argument that the informed user would only ever look at the products from a distance when they were fixed to the ceiling. The Judge considerd that such an argument left out of account how the product got there. Although the products were used by being fixed to a ceiling and their appearance in that context was important, the Judge did not accept that this meant that the informed user never interacted with the products by looking at them directly when not fixed to a ceiling, including making a side by side comparison prior to installation and taking into account their appearance in situ.

Finding that Louver-Lite's RCD was novel over the prior art and that it had individual character, the Judge nevertheless noted that the scope of its protection was quite narrow given the designs that had gone before. However, the Judge held that the Valencia looked almost identical to Louver-Lite's RCD and accordingly produced the same overall impression. Small differences insofar as they existed were trivial, and the biggest difference between the two (being the presence of slight ribs on the inside edge of the Valencia cross-section) was not visible in normal use and was therefore irrelevant. The Valencia was therefore found to infringe Louver-Lite's RCD.


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COPYRIGHT

Implied licences

Dr Susan Mary Wilkinson v London Strategic Health Authority ("SHA")
(Judge Birss; [2012] EWPCC 48; 14.11.12)

Judge Birss found that the SHA had reproduced a substantial part of Dr Wilkinson's materials in its own new materials under an implied licence, which did not limit the ability of the SHA to exploit the copyright in its new materials.

Dr Wilkinson had devised an approach for training medical professionals in communication skills. The SHA, with Dr Wilkinson's participation, developed a unified communication skills training programme which was a synthesis of three approaches to communications skills training, including that of Dr Wilkinson. In 2007 Dr Wilkinson had entered into an agreement with the SHA which provided that "all intellectual property rights associated with any intellectual property arising from all the performance of the Services and the documents and other work prepared by the Consultant pursuant to this Agreement shall belong to SHA". At the date of the 2007 Agreement, Dr Wilkinson had a body of material related to her approach which she had produced over a number of years (the "Established Works"). Substantial parts of the Established Works were incorporated into the unified materials (the "SHA works") with Dr Wilkinson's consent.

Dr Wilkinson calimed (i) that she ought to be free to use her Established Works in any way she saw fit, and (ii) that the incorporation of extracts of her Established Works into the SHA works was pursuant to an implied licence which was limited in scope to the purposes of using the unified approach to teach communication skills the exploitation of its unified approach.

Judge Birss held (i) that the 2007 Agreement did not operate to assign any of Dr Wilkinson's existing copyright in the Established Works because a contract which provided for the creation of new works and dealt with the copyright in them did not also gather in and act as an assignement of pre-existing works; (ii) the SHA works reproduced substantial parts of some of Dr Wilkinson's Established Works and therefore there was plainly an implied licence in favour of the SHA under Dr Wilkinson's copyright; and (iii) the SHA's implied licence did not limit the scope of the SHA's exploitation of the works in any way and there was no provision in the contract fettering the SHA's enjoyment or exploitation of the SHA works. The Judge concluded that this result was unreasonable and equitable and necessary to give the contract business efficacy.


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BREACH OF CONFIDENCE

Jurisdiction of PCC to hear claims for breach of confidence and contract

Ningbo Wentai Sports Equipment Co Ltd v Jonathan Hwan Wang (Judge Birss; [2012] EWPCC 51; 09.11.12)

Judge Birss held that a counterlcaim for breach of contract and/or breach of equitable obligations of confidence which was ancillary to or rose out of the same subject matter as proceedings relating to a patent was within the Patent County Court's special jurisdiction.

Ningbo had issued proceedings in the Patents County Court to revoke Mr Wang's patent which disclosed a golf cart which was easier to fold up. Ningbo's invalidity attack relied in part on prior disclosures to the public. Mr Wang's case was that the disclosures by Ningbo were in breach of confidence and in breach of contract. Judge Birss had made a prior order by consent disposing of Ningbo's patent action and revoking the patent. However, that order did not dispose of Mr Wang's counterclaim for breach of contract and breach of confidence.

Judge Birrs held that while a claim which was nothing more than a claim for breach of confidence pleaded in contract and equity would need to be started in HIgh Court, the claim and counterclaim in the present case had been properly started in the PCC since it consisted of a patent case and ancillary or related claims.


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Katherine Stephens, Zoe Fuller and Hilary Atherton

Reporters’ note:
We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Ahalya Nambiar and Emily Mallam.

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