This month we report on the CJ decision in OHIM v Nike International Ltd concerning 'locus standi' to appeal under Article 59 CTMR. We also report on the Court of Appeal decision in Specsavers International Healthcare Ltd & Ots v Asda Stores Ltd, and on the PCC decision in Temple Island Collection Ltd v New England Teas Ltd & Anr on copyright in photographs.

To be taken to your case of interest please click on its name below:

Decisions of the GC (formerly CFI):

Case   GC
T-522/10
Hell Energy Magyarország kft v OHIM; Hansa Mineralbrunnen GmbH
(17.01.12)
Application (and where applicable, earlier mark)  

11


 -energy drinks (32)


HELLA


- mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages, lemonades, effervescent drinks and fruit drinks, dietic and non-alcoholic drinks not for medical purposes (32)


(Community mark)

Comment

 The GC upheld the BoA’s finding that there was a likelihood of confusion under Art 8(1)(b).
The GC rejected Hell’s argument that the consumers of energy drinks constituted a specific public with a higher degree of attentiveness.


The GC upheld the BoA’s finding that energy drinks were included within the broader category of non-alcoholic drinks and therefore the goods covered by the marks at issue were identical.


The BoA was correct to find that the marks were visually and aurally similar. In respect of conceptual similarity the GC confirmed that, even if some consumers in parts of the EU would perceive the signs at issue as conceptually different, consumers in other parts of the EU would not. It was not necessary for a likelihood of confusion to exist throughout the territory in question or in all the linguistic zones in that territory. The BoA was therefore correct to find that there was a likelihood of confusion as a result of the identity of the goods and the visual and aural similarities between the marks at issue.

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Case  

GC
T-304/09
Tilda Riceland Private Ltd v OHIM; Siam Grains Co. Ltd
(18.01.12)

Application (and where applicable, earlier mark)  


14


- long rice (30)


BASMATI


(Unregistered sign)

Comment

 The GC annulled the BoA’s decision to reject the opposition which was based on an earlier unregistered sign and the law of passing off under Art 8(4).


The BoA erred in rejecting the opposition on the grounds that Tilda had not proved that it was the proprietor of the unregistered sign. The GC noted that the BoA’s requirement for Tilda to prove that it formally possessed ownership of the sign was restrictive and at odds with the fact that the signs referred to in Art 8(4) were often based on use rather than registration. In order to ascertain whether an opponent had acquired rights over an unregistered sign (and accordingly whether it was proprietor of the sign for the purposes of Art 8(4)) it was necessary to analyse the relevant national law. The BoA had failed to do this.


The GC further noted that (i) within the context of an action for passing off the status of the proprietor of an earlier right cannot be defined independently without taking into account its ability to prevent the use of a trade mark; and (ii) the fact that an unregistered sign was generic or used by several traders in the course of business did not necessarily prevent an opponent from acquiring rights over that sign.

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Case

GC
T-103/11
Tiantian Shang v OHIM
(19.01.12)

Application (and where applicable, earlier mark)

5

- leather goods (18)
- clothing, footwear, headwear (25)

Claiming seniority of
 8

(Italian mark)

Comment

The GC upheld the BoA’s decision to reject the claim for seniority under Art 34.


For a claim of seniority to succeed, three cumulative conditions must be fulfilled. The mark applied for must be identical to the earlier national mark; the goods and services applied for must be identical to, or contained within,  those covered by the earlier national mark; and the proprietor of the marks must be the same.


The BoA was correct to adopt a strict interpretation of Art 34 and conclude that the marks were not identical. The marks could have been considered identical only if the differences had been so insignificant as to go unnoticed by consumers. In this case the graphic representations of the two marks were very different.

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Case GC
T-260/08
Indo Internacional, SA v OHIM; Visual SA
(24.01.12)
Application (and where applicable, earlier mark)

VISUAL MAP


- optical services, in particular design and adaptation of customised progressive lenses (44)


VISUAL


- optician’s services and consulting medical care in the field of ophthalmology, information in the field of optics and products relating to eyewear (44)
(French mark)

Comment

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


The BoA was correct to find that, although the services covered principally involved professionals, such services were provided by specialist opticians to final consumers and therefore the relevant public was composed of the average consumer and professionals in France.


The BoA was correct to find that the signs were visually and phonetically similar. The presence of the element “MAP” in the later mark did not alter this assessment. Further the marks were conceptually similar in light of the fact that “map” had no meaning in French and so, to a French consumer, would not alter the meaning of the word “visual”.


The BoA was correct to find that there was a likelihood of confusion in light of the identical nature of the goods and services and the high degree of similarity between the signs with regard to the relevant public.

Decisions not yet in English

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Case GC
T-593/10
El Corte Inglés SA v OHIM; Jian Min Ruan
(24.01.12)
Application (and where applicable, earlier mark)

9

- clothing, footwear and headgear (25)

13

- clothing, footwear and headgear (25)

Community mark

Comment The GC upheld the BoA’s decision that there was no likelihood of confusion under Art 8(1)(b) and that the relevant public would not make a connection between the marks under Art 8(5).

The BoA was correct to find that the signs were not visually similar in light of the differences between them when making a comparison of the whole of the marks. While the earlier mark clearly included the letter “B” and a boomerang, these elements were not clearly included in the mark being applied for. Only some consumers would perceive the presence of letter “B”. The GC stated that the fact that the trade mark name was “B” was not to be taken into account in the assessment of the likelihood of confusion. Consumers would not take into account the name of the trade mark as listed on the register in their perception of the mark. The BoA was also correct to find that there was a difference between the colours of both marks. The GC stated that in this sector, visual perception played an important role as, in general, this would take place before the purchase.

The BoA was also correct to find that these marks were conceptually different. The relevant consumer would understand a clear meaning in the earlier mark, which evoked a boomerang which was not present in the application.

Even though there was identicality of goods, on the basis that there were important differences between the marks, and only potential phonetic similarity the GC upheld the BoA’s assessment that there was no likelihood of confusion. 
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Case GC
T-205/10
Cervecería Modelo S.A. de C.V. v OHIM; Plataforma Continental, S.L.
(31.01.12)
Application (and where applicable, earlier mark) LA VICTORIA DE MÉXICO

- beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages (32)
 1

- beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages (32)


Community mark

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

The BoA was correct to find that beer was a consumer product and that the average consumers did not pay particular attention when purchasing such goods.

The BoA was also correct to find that there was visual similarity between the marks. The element “Victoria” was the dominant element in both marks. In respect of the earlier mark, the other elements were common in the beer sector and, therefore, were not relevant in an appreciation of the sign as a whole. This was also the case for the aural assessment. The BoA was correct to find that consumers of beer would probably refer to both signs as “Victoria”. The presence of the elements “de México” in the application did not alter the existence of a phonetic similarity between the marks.

The BoA was also correct to find that the marks were similar from a conceptual point of view. The majority of the public would not associate the application as referring to a victory of Mexico. They would perceive “Victoria” as a female name and would perceive “de México” only as an indication of origin.


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OHIM v Nike International Ltd (“Nike”); Aurelio Muñoz Molina (“Molina”) (CJ (Second Chamber); Case C-53/11; 19.01.12)

The CJ annulled the decision of the GC and held that Nike’s appeal before the BoA was inadmissible because it had not demonstrated that it had locus standi within the four month period from the date of the decision under appeal under Article 59 of the Regulation. The grant of any extension to this period was precluded under Rule 49 of Regulation 2868/95.

DL Sports & Marketing Ltda (“DL Sports”) opposed the application by Molina for the mark R10 on the basis of earlier unregistered rights. DL Sports was given a deadline for submitting its proof of the existence and validity of the earlier right relied on. Within that period, DL Sports assigned ownership of its trade mark rights to Nike. The Opposition Division rejected the opposition by DL Sports for failure to substantiate the earlier right. After expiry of the period for substantiating the existence of the earlier right, Nike notified OHIM of the assignment of the marks and stated that it was pursuing the opposition.

Nike’s appeal against the rejection of the opposition was dismissed by the BoA as inadmissible as Nike had failed to produce proof that it was the owner of the earlier unregistered right relied upon in the DL Sports opposition and as such Nike had not proved its status as a party to the opposition proceedings.

The GC had upheld Nike’s appeal that the decision of the BoA was in breach of its rights of defence and a breach of Rule 31(6) on the basis that Nike had not had the opportunity to correct deficiencies in relation to proof of the transfer of the earlier right relied on.

The CJ annulled the decision of the GC and held that Nike’s appeal was inadmissible as it had not substantiated its status as a party by submitting the necessary proof that it had become the owner of the unregistered right within the four month period afforded under Article 59. Under Rule 49(1) of the Regulations deficiencies relating to non-compliance with the conditions laid down in Articles 57 to 59 had to be remedied before expiry of the time limit laid down by Article 59, namely with four months of the date of notification of the decision against which the appeal was brought. It was clear that under the Regulation if the deficiencies were not corrected in time, the BoA had to reject the appeal as inadmissiable. There was no breach of Nike’s rights of defence as the right to be heard under Article 73 did not require the BoA to provide a party a further opportunity to comment on the evidence.

The CJ referred the case back to the General Court for Judgment as it had erred in failing to consider Nike’s plea in relation to errors in assessment of the deed of assignment.

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Absolute grounds for refusal of registration of trade marks

Alfred Stigl v Deutsches Patent- und Markenamt and Securvita Gesellschaft zur Entwicklung alternativer Versicherungskonzepte GmbH v Öko-Invest Verlagsgesellschaft GmbH (AG Jääskinen for the CJ; Joined Cases C-90/11 and C-91/11; 26.01.12) (Decision not yet in English)

AG Jääskinen gave his opinion on two similar questions referred to the CJ by the German Federal Patent Court. In both cases, the court asked, in summary, whether the grounds for refusal under Article 3(1)(b) and/or (c) apply to a word sign which consists of a descriptive word combination and a non descriptive letter sequence, where the trade perceives the letter sequence as an abbreviation of the descriptive words because it reproduces their initial letters, and the trade mark as a whole can thus be construed as a combination of mutually explanatory descriptive indications or abbreviations. The marks at issue were Multi Markets Fund MMF and NAI – Der Natur-Aktien-Index.

The AG was of the opinion that where the word combination (in this case – Multi Markets Fund and Der Natur-Aktien-Index) was descriptive, this descriptive character was  ascribed to the entire mark where the mark simply consisted of that word combination and a letter sequence which was an abbreviation of the word combination. The AG commented that this was the case even if the letter sequence was, taken by itself, distinctive.  However, the AG answered the question posed by the German Federal Patent Court by stating that since such marks did not consist exclusively of descriptive signs or indications, the absolute bar to registration under Article 3(1)(c) did not apply. The appropriate test for considering such signs was under Article 3(1)(b).

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Allegedly infringing signs to be considered in context

Specsavers International Healthcare Ltd & Ots v Asda Stores Ltd* (Sir John Thomas (President of the Queen’s Bench Division), Black & Kitchin LJJ; [2012] EWCA Civ 24; 31.01.12)

The Court of Appeal (Kitchin LJ giving judgment) allowed in part an appeal by Specsavers from a decision of Mann J (reported in CIPA Journal, September 2010), finding that certain aspects of a marketing campaign conducted by Asda did in fact infringe Specsavers’ registered trade marks. The Court dismissed Asda’s cross appeal, finding that Mann J was correct in finding that a strapline used in Asda’s campaign infringed Specsavers’ marks under Article 9(1)(c). The Court stayed Specsavers’ appeal against Mann J’s order for revocation for its Wordless shaded mark, and in respect of the allegation that a logo used by Asda infringed that mark under Articles 9(1)(b) and (c), pending a reference to the Court of Justice.

The action related to Specsavers’ word marks for SPECSAVERS (the “Word marks”) and the three logo marks (not registered for any particular colour):

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Specsavers complained about use of the following sign (the “Asda logo”):

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As part of its campaign, Asda also adopted two straplines which contained a deliberate reference to Specsavers: “Be a real spec saver at Asda” (the “first strapline”) and “Spec savings at Asda” (the “second strapline”). 

Mann J had rejected all the allegations of infringement except one. He found that the first strapline infringed the Word marks under Article 9(1)(c) but not otherwise. He revoked the Wordless shaded mark for non-use under Article 50(1)(a). Specsavers appealed the Judge’s rejection of the claims for infringement under Article 9(1)(b) and (c) in respect of the second strapline and the Asda logo as well as the revocation of the Wordless shaded mark. Asda cross appealed against the finding of infringement under Article 9(1)(c) by the first strapline.  

Article 9(1)(b)
The Court held that in assessing the likelihood of confusion arising from the use of a sign, the Court must take into account all the circumstances of that use that were likely to operate in the average consumer’s mind and the impression it was likely to make on him.  The sign must be considered in its context. The straplines and the Asda logo formed part of a composite campaign and were intended to be seen as such. The average consumer would see the signs “spec saver” and “Spec savings” in the context of the straplines and, indeed, the posters and other materials on which they were used as a whole, and Mann J was right to consider them on that basis, subject to the requirement explained in L’Oréal [2007] EWCA Civ 968 that the test remained founded upon the mark as registered.   

Mann J, referring to L’Oréal, had not been prepared to attach any significance to the enhanced reputation enjoyed by Specsavers in the colour green in the global appreciation test. The Court of Appeal reached the conclusion that the law was not clear on this issue and, as it was necessary in order to dispose of the claim based upon the Wordless shaded mark, the Court referred the question to the Court of Justice. Offering his provisional view, Kitchin J was of the view that Mann J had fallen into error. A mark registered in black and white was registered in respect of all colours (Phones 4u v Phone4u.co.uk [2006] EWCA Civ 244). The position was therefore markedly different from the cloud images in L’Oréal, which did not form part of the mark as registered. If a logo registered in black and white had acquired, through use, a particular and distinctive character in, for example, the colour green, that would seem to be a matter which ought to be taken into account in the global appreciation analysis, particularly as cases such as Canon Kabushiki Kaisha v Metro-Goldwyn-Meyer (Case C-39/97) had established that the reputation of an earlier mark was to be taken into account when determining the likelihood of confusion. However, this was not relevant to likelihood of confusion in respect of the Asda logo, not least because of the prominent use of “ASDA Opticians” in the Asda logo removed any possibility of confusion. 

Mann J had been entitled to conclude that evidence of Asda “living dangerously” did not amount to evidence of an intention to confuse. He had therefore been right to conclude that the claim for infringement under Article 9(1)(b) in relation to the Asda logo and both straplines failed.

Article 9(1)(c)
The Court of Appeal found that the Judge had been right to find infringement in respect of the first strapline.  This was not a case of comparative advertising. Although Asda had sought to promote itself advantageously against Specsavers, its campaign did not involve an objective comparison of verifiable and representative features of the parties’ goods or services. 

With regard to the second strapline, the Court found that Mann J had focussed unduly on the differences between “Spec savings” and “spec saver”. Considering the visual, aural and conceptual similarities between “Spec savings” and the mark “Specsavers”, rather than focussing on the differences between the two straplines as Mann J had done, it was clear that the two were very similar. Although the context of the second strapline would dispel any likelihood of confusion as to origin, the average consumer would make a connection with Specsavers. Indeed, this was Asda’s intention. The Court of Appeal found that Specsavers had in fact made out a case of unfair advantage. Asda intended to benefit from the power of attraction attaching to the Specsavers brand and to exploit its marketing efforts by conveying to consumers that Asda offered real value. Therefore, the Word marks and the Specsavers logo marks were infringed. 

In relation to the Asda logo, the Court ruled that if the defendant was a trader with experience of the relevant market, it was permissible for the Court to take into account his intention in using the sign complained of, as Mann J had done. 

Although Mann J had not considered the cumulative effect of the signs because he had already found that the first strapline infringed, the Court was of the opinion that Specsavers was entitled to resolution of the allegation that the use of the Asda logo amounted to an infringement. As in the assessment of likelihood of confusion under Article 9(1)(b), it followed that it was appropriate to consider the cumulative effect of the signs in issue under Article 9(1)(c), again subject to the requirement explained in L’Oréal that the test remained founded upon the mark as registered. Having regard to the significant reputation attaching to Specsavers’ marks, the fact that the goods were identical, and the nature of Asda’s campaign, the use of the Asda logo as part of the campaign including the straplines was such as to create a link with the Specsavers logo marks, which conferred an unfair advantage upon Asda without due cause. The Shaded and Unshaded logo marks were therefore infringed by use of the Asda logo as part of the composite advertising and promotional campaign. 

Non-use
As to Asda’s claim for revocation of the Wordless shaded mark, the Court was of the opinion that if use of a component of a mark may serve to confer upon that component a distinctive character such as to justify its registration, then it was at least arguable that it may also serve to constitute use for the purposes of Article 15. However, the jurisprudence of the Court of Justice was not entirely consistent on the point, and the Court therefore referred the question to the Court of Justice, staying the appeal against the order for revocation. 

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Number marks

WHG International Ltd & Toulson, Etherton & Kitchen LJJ [2012] EWCA Civ 19; 24.01.12)

Dismissing an appeal from a decision of Henderson J (reported in CIPA Journal, February 2011), the Court of Appeal (Etherton LJ giving lead judgment) upheld the Judge’s finding of infringement of the marks 32RED and a figurative mark by signs for 32Vegas in relation to online casinos. The Court dismissed an appeal against the finding that the registration for the number 32 was valid. The Court did, however, allow a cross appeal against the finding that the 32 number mark was not infringed by the 32Vegas signs. 

32Red was a medium sized online casino which had operated since 2002. It was the proprietor of CTMs for the word mark 32RED and the figurative mark depicted on the left below for a range of goods and services in Classes 9, 16 and 41 including computer software relating to games, gaming and gambling and casino services. 32Red was also the proprietor of a UK trade mark for “32”, registered for casino, betting and gambling services in Class 41.

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In 2006, an online casino started operating under the name “32vegas.com”. WHG was later granted a licence to the 32vegas.com domain name and associated trade marks and actively operated a casino under the 32Vegas brand. 32Red claimed that WHG was infringing its CTMs and UK mark under (respectively) Articles 9(1)(b) and (c) and Sections 10(2) and (3) by its use of the three text signs “32vegas.com”, “32vegas” and “32v” and three devices, the largest of which is depicted on the right above.

WHG appealed the decision of Henderson J that (i) the 32 number was valid; (ii) the 32RED mark was valid; and (iii) the Community marks were infringed under Articles 9(1)(b) and (c). 32Red cross appealed from the finding that the 32 number mark was not infringed. 

Validity of the 32 number mark
The Court found that neither Postkantoor (Case C-363/99) nor Technopol (Case C-51/10) supported the appeal against the Judge’s decision that the 32 number mark was not invalid under Article 7(1)(c). The bare number 32 was not descriptive of any characteristic of the services provided by 32Red. It was merely an allusion to an aspect of the game which the punter would play if (s)he used those services (32 being a bet or the result of a bet in roulette). 

The Judge’s conclusion that the 32 number mark was not invalid under Article 7(1)(b) was also sound. It was clear that a number could have sufficient distinctiveness to qualify for registration as a trade mark, irrespective of actual use. This was confirmed in Technopol and Section 1(1) expressly so provided. There was also an obvious difficulty in an argument that, merely because someone else had used a mark, it was devoid of a distinctive character. Finally, Henderson J’s conclusion was an evaluative judgment based on numerous factors and involving no error of principle, and an appeal court should be slow to overturn such a judgment. 

The Court went on find that Henderson J had been entitled to find on the facts that WHG had failed to prove its case on the absence of good faith under Section 3(6). 

Validity of the Community marks
In view of the Court’s rejection of the appeal against the finding that the 32 number mark was validly registered, the attack on the validity of the Community marks was difficult to sustain. The appeal was therefore rejected. 

Infringement of the 32Red mark under Article 9(1)(b) and (c)
Henderson J’s conclusion on infringement was, again, the result of a multi-factorial evaluation with which the Court would be slow to interfere. In particular, the Judge’s identification of the number 32 as being the dominant feature of the mark, and his assessment of the overall impression created by the similarity of the number being followed by something else of a gaming flavour, was not irreconcilable with his conclusion that the 32RED mark was a composite mark which had a particular meaning and distinctiveness. 

32Red’s cross-appeal against the finding of non- infringement of the 32 number mark
Henderson J appeared to have assumed that it was not legally possible for there to be an infringement of the 32 number mark under Section 10(2) in the absence of separate reputation established by use. That was incorrect. Having found inherent confusion and infringement of the 32Red mark by use of 32Vegas, and that the number 32 was the dominant feature of the Community marks and 32Vegas, there was no proper basis for finding there was no infringement of the 32 number mark under Section 10(2).

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Infringement of figurative marks

Waseem Ghias T/A GRILLER v Mohammed Ikram T/A THE GRILLER ORIGINAL & Ots* (Miss Recorder Amanda Michaels; [2012] EWPCC 3; 24.01.12)

Miss Recorder Amanda Michaels held that a device mark incorporating the word “Griller”, registered in relation to a fast food franchise, was infringed under Section 10(2) by device marks which included the words “Griller” and “The Griller Original”, which were also used in relation to fast food establishments. However, the mark was not infringed by use of device marks which included the words “Griller King” and “Griller Hut”. A second device mark was not infringed. 

Mr Ghias ran a fast food business under the name GRILLER and had franchised others to do the same. He owned the following two UK registered trade marks, which were registered for a wide range of foods and beverages in Classes 29, 30 and 32, and a range of services in Class 43, notably including “Restaurant, bar and catering services”:

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(The first image represents the "Logo"; the second the "Device": and together, the "Marks".)

Mr Ghias alleged that the defendant fast food restaurants, “Griller”, “The Griller Original”, “Griller King” and “Griller Hut” infringed his registered trade marks. 

Griller/The Griller Original
The fascia and signage of The Griller Original used the word Griller in large red letters, with a capital G, and with the words “the” and “original” in tiny, illegible red letters. Miss Michaels held that the “flame” element of the Logo was an element which would not go unnoticed by the average consumer, still less would the additional elements in the Device go unnoticed. The addition of the word “original” where used also took the sign away from identity with the Marks. The Section 10(1) claim therefore failed. 

Under Section 10(2), it was clear that the defendants had been providing identical services, namely restaurant services, although the evidence did not show that the signs had been used in relation to any particular food. There was found to be visual similarity between the signs and the Logo, as the overall impression created by the Logo and the signs depended heavily on the word “Griller”. There was also held to be aural and conceptual similarity on that basis. The manner of use of both signs gave rise to a likelihood of confusion with the Logo and both signs therefore infringed the Logo.    However, the level of visual, aural and conceptual similarity between the signs and the Device was far lower and the differences were such as to prevent there being a likelihood of confusion.

There was no infringement under Section 10(3). Although the Marks had some level of enhanced distinctiveness, that was insufficient to show that they had a reputation for the purposes of Section 10(3). Nor was there sufficient evidence to show that the public would make a link between the Marks and the signs.

As Mr Ikram had been the sole person responsible for running the business of The Griller Original, he was found to be a joint tortfeasor with the company. 

Griller King/Griller Hut
Griller King appeared in red capital letters on the shop fascia, with the two words side by side in the same font. The following roundel device was used on the shop door and on take-away menus:

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In relation to Griller Hut, the owner had applied to register the following device:

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It was plain that neither Griller King, the Griller King roundel device, Griller Hut or the Griller Hut device were identical with the Marks for the purposes of Section 10(1). 

Under Section 10(2), there was no evidence of use of the sign in relation to goods, only restaurant services. Although there was some level of similarity between the signs and the marks, in the absence of convincing evidence, Miss Michaels was unable to find a likelihood of confusion. She rejected the submission that by adding the word “King” or “Hut”, the public may make an association with the well known businesses of “Burger King” or “Pizza Hut”, which would increase the likelihood of confusion between the Marks and the signs. Miss Michaels held that this would, in fact, reduce the likelihood of confusion with the Marks, because there was nothing to suggest that any association would be made or assumed between Burger King and Pizza Hut on the one hand, and the Claimant’s business on the other. Accordingly, there was no infringement under Section 10(2).

For the reasons given above in relation to Griller/Griller Original, the claim of infringement under Section 10(3) also failed.

No likelihood of confusion where two marks both lack distinctive character.

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The Wella Corporation v Alberto-Culver Company* (Judge Birss; [2011] EWHC 3558 (Ch); 01.12.11)

Judge Birss (sitting as a Judge of the High Court) dismissed an appeal from the decision of the hearing officer in invalidity proceedings concerning the mark FUNKY SHAPER, which was registered for hair care products and preparations in Class 3. 

Alberto owned the FUNKY SHAPER mark and Wella owned an earlier CTM for the word SHAPER which was registered in respect of non-medicated hair care preparations, namely hairspray, in Class 3. Wella applied, under Section 47(2)(a), for the mark to be declared invalid on the basis of, among other provisions, Section 5(2)(b). The hearing officer rejected Wella’s application and dismissed the case, finding that SHAPER lacked all distinctive character at the date of the application for registration of FUNKY SHAPER. He also found that FUNKY was laudatory and descriptive. 

Wella appealed on three grounds: (i) the conclusion that SHAPER lacked distinctive character was a finding that Wella’s mark was invalid, which was not open to the hearing officer as a matter of law; (ii) if the word FUNKY did not add anything to the word SHAPER, FUNKY SHAPER could not be valid over SHAPER, as adding something entirely descriptive or laudatory onto SHAKER could not give rise to a valid mark; and (iii) the hearing officer had misapplied the law in a way that no reasonable tribunal could come to the decision on the evidence. 

On ground (i), Judge Birss held that the hearing officer’s decision was correctly focussed on a particular point in time. He had found that, at the date of the application of Alberto’s FUNKY SHAPER mark, SHAPER lacked all distinctive character. This was not a finding that the mark was invalid, as it was open to Wella to reply that by the time of the application it had acquired distinctiveness through use. The hearing officer had reached his conclusion having regard to the presumption of validity pursuant to Section 72. 

On ground (ii), Judge Birss held that the hearing officer had been correct in finding that if FUNKY added nothing to SHAPER, neither mark would be seen as an indication of origin and there was no likelihood of confusion. 

Judge Birss also dismissed the appeal on ground (iii), as there was clearly evidence on which the hearing officer could form the basis of his decision. 

The appeal was dismissed.

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COPYRIGHT

Copyright in photographs

Temple Island Collection Ltd (“TIC”) v New England Teas Ltd & Anr (“NET”)* (Judge Birss; [2012] EWPCC 1; 12.01.12)

Judge Birss held that NETs’ image infringed TIC’s copyright in its black and white photograph of a red bus travelling across Westminster Bridge.

TIC owned the copyright subsisting in the following photograph, which was used on souvenirs of London:

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NET created the following image for use on its packs of tea:

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Although NET knew of TIC’s photograph, they had tried to produce a similar but non-infringing image. Nevertheless, NET’s image was alleged to infringe TIC’s copyright in its photograph. 

Judge Birss found that a photograph of an object found in nature, or even a building, could have the character of an artistic work in terms of copyright law if the task of taking the photograph left ample room for an individual arrangement. What were decisive were the arrangements, such as the motif, visual angle and illumination selected by the photographer him or herself. The fact that the artist may have used commonplace techniques to produce his work was not the issue. The question was whether he had used them under the guidance of his own aesthetic sense to create the visual effect in question.

It was held that although the techniques used by TIC may have been simple, the result had an aesthetic quality about it which was the product of the photographer’s own work. Its appearance was the product of deliberate choices and manipulations by the author, including where to stand and when to click, but also included changes wrought after the basic image had been recorded. The collection of other similar works relied on by NET worked against them because the collection served to emphasise how different ostensibly independent expressions of the same idea actually looked. 

Accordingly, Judge Birss found that NET’s image infringed TIC’s copyright in its photograph.

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Patents County Court considers ‘innocent infringer’ defence

David Hoffman v Drug Abuse Resistance Education (UK) Ltd (“DARE”)* (Judge Birss; [2012] EWPCC 2; 19.01.12)

Judge Birss rejected DARE’s defence under Section 97 CDPA and found that its use of Mr Hoffman’s photographs infringed his copyright. 

Mr Hoffman was a photographer and DARE was a charity that operated to help young people understand the dangers of substance abuse. Mr Hoffman claimed that DARE’s website used 19 photographs of various drugs which were copies of his own photographs.  DARE did not deny that Mr Hoffman’s photographs were used on its websites, but submitted that the firm which was employed to create a website for the charity had found the photographs on the Department of Health’s “Talk to FRANK” website and understood the photographs to be covered by Crown copyright. 

Judge Birss found that the photographs were not covered by Crown copyright; the copyright belonged to Mr Hoffman. The fact that DARE may have thought that it had permission to use the images was not a defence to infringement. Although there was a form of innocence defence provided for by Section 97, it did not mean that DARE had not infringed, rather it would be a bar to damages. Likewise, the fact that DARE had employed a firm to produce the website did not mean that DARE avoided liability under Section 16(1)(d) or Section 20/Article 3 Information Society Directive 2001/29/ EC. Accordingly, the Judge found that DARE had infringed Mr Hoffman’s copyright as it was the person responsible for the website. 

On the question of quantum, while Judge Birss sympathised with DARE, its understanding that the photographs were protected by Crown copyright did not amount to a defence under Section 97. DARE’s understanding that it had permission to use the photographs was a very different thing from an argument that it had no reason to believe that copyright subsisted at all. Judge Birss awarded damages of £10,000 plus interest of £2,444.57 and costs.

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Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Emily Peters, Holly Greenhow, Nick Boydell, Teresa Mercadal, Victoria Gardner and Zoe Fuller.

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