This month we report on the CJ decision on whether filling of packaging bearing an infringing mark constitutes trade mark infringement and we report on the decision of the Patents County Court on copyright infringement in Mitchell v BBC, concerning subconscious copying and the shift of the onus to the defendant to show that similarities did not result from copying.


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




Case  

GC
T-586/10
Aktieselskabet af 21. november 2001 v OHIM; Parfums Givenchy SA
(08.12.11)

Application (and where applicable, earlier mark)  

 


- toilet soaps, perfumes, cosmetics, essential oils, lotions and deodorants (3)
ONLY
- soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices (3)
(Danish mark)


ONLY
- clothing and footwear (25)
(Danish mark)


ONLY
- horological instruments (14)
- leather goods, luggage and umbrellas (18)
- 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 that the signs were visually similar only to a low degree. The application was a compound trade mark and the comparison had to be considered in light of the whole of the mark. The element “only” was in very light grey and split over two lines in pink and green in the background of the mark.  By contrast the element “givenchy” was more dominant and distinctive and its presentation within the mark was more eye-catching.


The BoA was also correct to hold that conceptually the combination of “only” and “givenchy” whereby the adverb “only” was a laudatory qualifier of “givenchy” created a conceptual and logical unit that was distinct from those of its individual components.


Aktieselskabet had claimed that it had a reputation for its Danish mark registered in class 25 and its CTM but not in respect of its Danish mark registered in class 3 for the identical goods. Unlike the BoA, the GC held that the goods in classes 14, 18 and 35 were dissimilar to those for which the mark was applied for.


On the basis that there was a low degree of visual and conceptual similarity and a moderate degree of aural similarity between the marks and identity between the goods for the registration that did not enjoy a reputation for those goods, the GC upheld the BoA’s assessment that there was no likelihood of confusion. Furthermore, in respect of the registrations that did enjoy a reputation but for dissimilar goods, the differences between the marks were significant enough that the public would not make any connection between them.

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Case   GC
T-504/09
Völkl GmbH & Co KG v OHIM; Marker Völkl International GmbH
(14.12.11)
Application (and where applicable, earlier mark)  

 VÖLKL


- ski boots, snowboarding boots and sports shoes (25)


VÖLKL


- clothing (25)


(Spanish and Italian International mark)

Comment

The GC anulled the decision of the BoA and held that Völkl International had not evidenced genuine use under Art 42(2) and (3) and accordingly the opposition under Art 8(1)(b) was not made out.
The GC held that the BoA had incorrectly carried out an examination of the whole of the original grounds of opposition when Völkl GmbH’s appeal had only related to three goods that had not been allowed for registration following Völkl International’s opposition.


Art 59 provided that only a party adversely affected by a decision could bring an appeal.  On that basis, Völkl GmbH’s appeal could not have been in respect of the goods in classes 3, 9, 18 and 25 which had been allowed for registration by the OD, as Völkl GmbH as applicant did not have standing to bring an appeal against that aspect of the OD’s decision.


In annulling the OD’s decision to allow registration of the other goods, the BoA had exceeded the limit of its jurisdiction under Art 64(1).


The GC also annulled the BoA’s decision that the evidence submitted by Völkl International of proof of use was sufficient to demonstrate genuine use of the earlier marks. At most the invoices and catalogues constituted an indication that such use was probable but however plausible, this was not sufficient to meet the requirement of proof of use under Art 42(2) and (3). Furthermore, insofar as the BoA’s examination of the evidence was incomplete, it was not appropriate for the GC to conduct its own examination as this would upset the institutional balance of jurisdiction between OHIM and the GC.

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Case

GC
T-237/10
Louis Vuitton Malletier v OHIM; Friis Group International ApS
(14.12.11)

Application (and where applicable, earlier mark)


- optical apparatus and instruments, spectacles, sunglasses and spectacle cases (9)


- jewellery, watches, watchcases, nutcrackers, candlesticks and jewel boxes (14)


- leather goods, trunks, travelling bags, briefcases and umbrellas (18)

Comment The GC partially upheld the BoA’s decision that the mark lacked distinctive character in respect of certain goods and was invalid under Art 7(1)(b).

The application was for a figurative mark that consisted of a two-dimensional representation of the shape of a product and, as such, the sign was related to the appearance of the products it covered. The BoA was correct to have applied the same criteria as that applied to distinctiveness of three-dimensional marks. Only a mark that departed significantly from the norm or customs of the sector and thereby fulfilled the criteria of origin-indicating function would not be devoid of distinctiveness. The BoA was correct in its assessment that the mark did not meet this criteria in relation to various of the goods for which the mark was applied for, e.g., spectacle cases (9), jewel boxes (14) and travelling bags (18) all of which could have included a locking device which would be perceived by the relevant public as a representation of part of the product covered by that mark.


However, the GC annulled the BoA’s decision in respect of certain of the goods, e.g., nutcrackers, candlesticks and leather goods that did not, as a general rule, include a locking device even for ornamental purposes. Although such goods could be sold in boxes with locking devices the relevant public would not regard the goods as indissociable from the packaging.  Furthermore, for goods such as jewellery and watches, which would generally have a fastening, the mark departed significantly from the norms and customs of those sectors and was therefore distinctive in respect of those goods.  
The GC held that a sign must possess distinctive character, whether inherent or acquired through use, throughout the Member States. In respect of the remainder of the goods, the GC upheld the BoA’s decision that because Louis Vuitton had not provided evidence of acquired distinctiveness in Member States in which the mark was inherently devoid of distinctiveness the mark was invalid
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Case

GC
T-62/09, T-109/09 and T-152/09
Bernhard Rintisch v OHIM; Bariatrix Europe Inc SAS
(16.12.11)

Application (and where applicable, earlier mark)

 PROTI SNACK, PROTIVITAL and PROTIACTIVE


- goods in classes 5, 29, 30 and 32


PROTIPLUS, PROTI

- goods in classes 29 and 32


(German marks)

Comment

The GC upheld the BoA’s decisions to reject Mr Rintisch’s appeals in the three oppositions pursuant to Rule 20(1) for failure to substantiate the validity and existence of the earlier marks.


Mr Rintisch had relied upon three earlier German marks and had submitted certificates of registration dated 1996 and 1997 as well as extracts of the German trade marks registry database which under the heading “latest procedural stage” stated that the marks were registered and, in respect of the 1996 marks that they had been renewed in 2006. Mr Rintisch only provided a translation of the certificates of registration.


Mr Rintisch did not submit further evidence to substantiate the fact that the earlier marks had been renewed within the time limits set by OHIM. In Case T-62/09, after the deadline had expired, Mr Rintisch submitted an extract from the German online trade mark register and a declaration from the German Patent and Trade Marks Office that stated that the earlier marks had been renewed before the date that the opposition had been filed together with translations.


It was for the opponent to provide proof of the existence, validity and scope of the protection of the earlier marks, including the fact that they had been renewed. The translated certificates of registration did not prove that the earlier marks were in force at the date of opposition. Under Rule 19(4), the original registry database extracts could not be relied upon as they had not been translated into the language of the proceedings.


Although Art 74(2) allowed the submission of facts and evidence after the expiry of time-limits, no party had an unconditional right to have such submissions admitted and furthermore this was conditional on there being no express provision to the contrary. Under Rule 20(1) rejection of an opposition where the opponent had not substantiated its earlier rights was mandatory and the BoA was correct to hold that it did not have any discretion to admit late submissions under Art 74(2).

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Whether the filling of packaging bearing an offending mark constitutes “use” of that mark


Frisdranken Industrie Winters BV (“Winters”) v Red Bull GmbH (AG Kokott for the CJ; C-119/10; 15.12.11)


In a judgment that followed the AG Kokott’s opinion (reported in CIPA Journal, May 2011) the CJEU held that a service provider who under instructions from a third party had filled packaging that displayed an infringing trade mark did not itself make use of that sign under Article 5(1)(b).


Red Bull brought proceedings in the Netherlands against Winters for infringement of a number of its trade marks. The proceedings were based on Winters’ alleged infringement for filling cans, which contained trade marks that were confusingly similar to Red Bull’s marks in the design of the packaging, with fizzy drinks. Winters filled the cans on behalf of their customer, Smart Drinks Ltd, who supplied the empty cans that displayed the marks to Winters. Once filled the cans were placed at Smart Drink’s disposal for export to countries outside the Benelux. On appeal, the Dutch Supreme Court referred questions and asked in summary whether a service provider who, on the instructions of a third party, filled an article whose packaging displayed a mark had used that sign in the course of trade.


It was not disputed that in filling the cans, Winters carried out a business activity for which it charged its customers and as such operated in the course of trade when it filled the cans. It did not follow, however, that Winters used the signs within the meaning of Article 5. The CJEU applied its decision in Google France (C-236/08 to C-238/08) and noted that, although Winters had created the technical conditions necessary for the use of the signs and was paid for that service, it did not itself use those signs. In this case, Winters had merely executed a technical part of the production process used to create the final product and had no interest in the presentation of the cans or the signs affixed to them.


Furthermore, in providing the service of filing cans, Winters had not used the signs for goods or services identical or similar to those for which Red Bull’s marks were registered. The CJEU noted that there was earlier case law which suggested that ‘goods and services’ may include the goods and services of another person on whose behalf the third party acts. An example of this would be when a service provider used an infringing mark to promote its customers goods, thereby creating a link between the sign and the promotional service. However, the filling of cans bearing infringing signs was not comparable to a service aimed at promoting or marketing the goods which bear those signs. This, coupled with the fact that the identity of the service provider was not apparent to the consumer, meant that the filling of the cans did not give rise to the creation of a link between the signs and the filling service provider.


The CJEU also observed that infringers could not avoid liability by splitting the various steps of production amongst a number of service providers as the national courts could still attribute such services to the customer and hold the customer liable for infringement.




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Patents County Court rules on account of profits for failure to notify trade mark owner of repackaging of parallel imports


Hollister Inc & Anr v Medik Ostomy Supplies Ltd* (Judge Birss; [2011] EWPCC 40; 20.12.11)


Having earlier refused to strike out Medik’s response to Hollister’s points of claim for an account of profits (reported in CIPA Journal, September 2011), Judge Birss awarded Hollister half of Medik’s net profits from its sale of repackaged parallel imports that had not been notified to Hollister. 


Medik 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 Hollister concerning its repackaged products. Hollister subsequently elected to seek an account of profits. 


The amount of the financial remedy depended on all the facts and circumstances of a case (Boehringer Ingelheim KG and others v Swingward Ltd, Case C-348/04). The failure to give notice which rendered the goods infringing was a relevant fact. Judge Birss adopted and advocated 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 the 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). 


On this basis, the Judge awarded Hollister half of Medik’s profits, from which he had deducted a proportion of fixed, centrally incurred, overhead costs. The award of this fraction would be an effective deterrent to dissuade those engaged in repackaging and relabeling from not giving notice, while also reflecting the reality of the case as a breach of a procedural requirement and nothing more.






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COPYRIGHT


Patents County Court considers subconscious copying and the shift of onus to the defendant to show that similarities did not result from copying


Michael Mitchell v British Broadcasting Corporation* (Judge Birss; [2011] EWPCC 42; 21.12.11)

Judge Birss dismissed Mr Mitchell’s action for copyright infringement against the BBC.  In reaching his decision, the Judge considered the nature of the shift in the burden to the defendant to show that similarities did not result from copying, as referred to in Designers Guild v Russell Williams [2000] UKHL 58. Judge Birss also considered the issue of subconscious copying. 


Mr Mitchell claimed that the BBC had, in its animated children’s television programme ‘Kerwhizz’, copied a group of animated characters called the ‘Bounce Bunch’ which Mr Mitchell had designed and submitted to the BBC for a proposed children’s cartoon programme. Both are shown below:




Judge Birss noted that there was an important distinction to be drawn between the basic inference which operated in all copyright cases which shifted the onus onto the defendant, and the inference that subconscious copying had taken place, even though both were based on the existence of similarities plus access to the claimant’s work.  Relevant similarity combined with prior access may well be sufficient to shift the burden of proof onto the defendant to satisfy the court that the similarities did not result from copying. However, the inference that subconscious copying had taken place was not concerned with a shifting evidential onus; if such an inference was drawn on the evidence as a whole, it was a conclusion of copying and not of a presumption to be rebutted. The evidence needed to support an inference of subconscious copying was likely to be a good deal more substantial than the evidence needed to simply shift the onus onto a defendant. Conversely, the fact that similarities and evidence of access may be sufficient to shift the onus onto the defendant did not mean a case of subconscious copying was made out. 


Judge Birss held that when the similarities between the two sets of characters were considered in combination, the onus shifted to the BBC to explain how the Kerwhizz characters were produced. However, he went on to find that there was no room for a case of deliberate or conscious copying by the BBC. Considering the possibility of subconscious copying, the Judge found that the Bounce Bunch was not especially memorable, and that the similarities with the Kerwhizz characters were at a high level of generality. Judge Birss therefore rejected Mr Mitchell’s case of subconscious copying and, accordingly, found that the Kerwhizz characters did not infringe Mr Mitchell’s copyright.






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Patents County Court considers copyright infringement in relation to factual literary works


Paul Hodgson & Anr v Andrew Isaac & Anr* (Judge Birss; [2011] EWPCC 37; 05.12.11)


In an action for copyright infringement in which the work which was the subject of the action was an autobiography, Judge Birss considered that the fact that the work was presented as fact rather than fiction was irrelevant. 

Mr Hodgson brought an action for copyright infringement, claiming that Mr Isaac and the second defendant company had produced a script which was an adaptation of Mr Hodgson’s autobiography. The book told the story of Mr Hodgson’s life, which he had written to challenge the stereotype of the wheelchair-bound victim. Mr Isaac’s defence was that his script was based on his own creative input and on conversations he had had with Mr Hodgson about his life. 


Judge Birss acknowledged that, since the work in question was a biography, the case raised a set of circumstances which needed to be treated with care.  If the book had been pure fiction, there would be no question that Mr Hodgson’s copyright in the book had been infringed. However, the fact that elements of the book were presented as factual rather than fictional did not make a difference, at least in this case. Although in Ravenscroft v Herbert [1980] RPC 193, Brightman J was inclined to accept that a historical work was not to be judged by precisely the same standards as a work of fiction, his conclusion was that an author was not entitled, under the guise of producing an original work, to reproduce the arguments and illustrations of another author so as to appropriate for himself the literary labours of that author. Accordingly, Judge Birss held that the work of producing an autobiography was an intellectual effort of creation of its own.


Holding that it was more likely than not that the script was copied, in part, from the book, that what was taken constituted a substantial part of the book, and rejecting Mr Isaac’s assertion that the similarities derived from his conversations with Mr Hodgson, Judge Birss found in favour of Mr Hodgson.






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Orders forcing ISPs to provide the identity of copyright infringers with EU law


Bonnier Audio AB & Ots v Perfect Communication Sweden AB (AG Jääskinen for the CJ; C-461/10; 17.11.11) (Decision not yet in English)


AG Jääskinen gave his opinion on two questions referred to the CJ by the Swedish Högsta domstol. The questions related to Directive 2006/24/EC on the retention of data generated or processed in connection with the provision of publicly available electronic communications services or of public communications networks and amending Directive 2002/58/EC (the data storage directive). The first question was whether such provisions preclude the application of a national provision which is based on Article 8 of Directive 2004/48/EC on the enforcement of intellectual property rights and which permits an order against an internet service provider (ISP) requiring it, if provided with a specific IP address shown to be involved in copyright infringement, to provide a copyright holder with information on the identity of a particular subscriber.  The second question was whether the answer to the first question was affected by the fact that a Member State had not implemented the data storage directive despite the fact that the period prescribed for implementation had expired.


The AG considered that the first question should be answered in the negative. Such a provision requiring ISPs to provide information on subscribers is not precluded by Directive 2006/24/EC. However, the AG noted that the use, retention and disclosure of any data obtained will be regulated by national laws implementing EC provisions on data protection. In light of the answer to the first question, the AG did not consider the second question.




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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: Nick Boydell and Tom Darvill.


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