This month we report on the decision of Court of Appeal decision in Starbucks v BSkyB and EMI v BSkyB concerning the meaning of 'special grounds' when considering the grant of a stay under Article 104. We also report on the High Court decision in Nestlé v Cadbury concerning colour marks.

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Decisions of the GC and the CJEU 


United States Polo Association v OHIM

Application (and where applicable, earlier mark)  


- textiles, in particular bed sheets, pillowcases, table cloths and table runners (24)


- bed sheets, table linen, eiderdown, textile table and bed clothing (24)

(Spanish and Community mark)


The CJ upheld the GC’s finding (Case T-228/09 reported in CIPA Journal, May 2011) that there was a likelihood of confusion between the marks under Art 8(1)(b).

The GC did not disregard the principles laid down in Medion (Case C-120/04, reported in CIPA Journal, October 2005) by considering that the element ‘polo’ had an independent distinctive function in the mark applied for. In fact, the GC carried out an overall assessment of the marks at issue, which included a finding that ‘polo’ had distinctive character and would have an impact on the visual similarity of the signs. Furthermore, the GC did not carry out the overall assessment solely on the basis of the ‘polo’ element.

The remainder of the applicant’s appeal related to findings of fact, and were therefore inadmissible.


Case   GC
Duscholux Ibérica, SA v OHIM; Duschprodukter i Skandinavien AB
Application (and where applicable, earlier mark)  

- shower cabins, showers, shower panels, shower nozzles, toilet seats (11)

- furniture, shelves, mirrors, shower curtain rods, rings, hooks (20)

- bath screens and cabinets of metal, casings and coverings, essentially of metal (6)

- taps, showers and shower cubicles


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

The BoA was correct in finding that, visually, the two signs were very different. As the word element ‘Duscho’ was in larger capital letters and would be read first, it was the dominant element of the earlier mark. Further, in the mark applied for, the whale’s stylised design held the consumer’s attention and dominated the overall image, compared to the word element of the mark, and therefore it was visually dominant.

Phonetically, the marks were different. The mark applied for did not contain the sound of the second word element in the earlier mark, ‘harmony’. The first letter of the word element of the mark applied for could be perceived by the relevant public as an “s” or a “j” rather than a “d” and would therefore sound different.

There was a slight conceptual similarity between the word elements of the marks and their possible association with the word ‘douche’ (shower). However, the presence of the whale in the mark applied for, which did not offer a link to the goods at issue, and the word ‘harmony’ in the earlier mark diluted the conceptual similarity.

Although there was a slight conceptual similarity between the marks, the distinct visual and phonetic differences were greater. It was therefore held that there was no likelihood of confusion, notwithstanding the identity and similarity of the goods at issue.



National Lottery Commission v OHIM; Mediatek Italia Srl & Anr

Application (and where applicable, earlier mark)

- goods and services in classes 09, 16, 25, 28 and 41

- alleged to be protected by Italian copyright


The GC annulled the BoA’s decision to invalidate the mark under Art 53(2)(c).

The earlier figurative sign had appeared in a photocopy of an agreement which had a post office stamp dated 21 September 1986. The BoA considered that this was sufficient to establish that the earlier figurative sign was protected by copyright under Italian law. Under Italian law, the presence of the post office stamp enabled the agreement to have a definite date and constituted proof of the provenance of the statements contained in the agreement.

However, the GC held that, contrary to the BoA’s findings, it was open to the National Lottery Commission to adduce proof that the agreement had been drawn up on a date other than that shown on the post office stamp, without needing to bring proceedings for a declaration of forgery. By holding otherwise, the BoA had misinterpreted national law and incorrectly assessed the scope of its own powers. Had it believed that the National Lottery Commission was legitimately able to challenge the reliability of the post office stamp, the BoA may have attached more weight to anomalies raised by the National Lottery Commission (such as the fact that the date stamp corresponded to a date on which the post office was closed).


Scandic Distilleries SA v OHIM; Bürgerbräu, August Röhm & Söhne KG

Application (and where applicable, earlier mark)

- beers (32)


- beers, non-alcoholic drinks (32)

(Community word mark)


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

There was some degree of visual similarity between the marks due to the dominant element of the mark applied for (Bürger) being the same as the first six letters of the earlier mark, but this similarity was low.

Phonetically, there was an average degree of similarity, as the relevant consumer would tend not to pronounce ‘premium pils’, ‘traditional brewed quality’ and ‘original’ on the mark applied for.

The marks were conceptually similar for the German-speaking public. ‘Bürger’ means ‘citizen’ in German and the term ‘bräu’ in the earlier mark refers to the brewing of beer and would be considered descriptive.

Therefore, the marks were globally similar and, coupled with the fact that the relevant goods were identical, this led the GC to conclude that there was a likelihood of confusion between them.



Reddig GmbH v OHIM; Morleys Ltd

Application (and where applicable, earlier mark)

- knife handles of metal (6)

- knives, in particular Stanley knives (8)

- knife handles, not of metal (20)


The GC dismissed the appeal against the BoA’s decision to invalidate the mark under Arts 52(1)(a) and 7(i)(e)(ii).

Following the guidance set out in Lego Juris v OHIM (Case C-48/09 reported in CIPA Journal, October 2010), the GC identified the essential characteristics of the trade mark as a slightly curved knife handle characterised by a small angle of 5 to 10 degrees between the knife blade and the longitudinal axis of the shell grip, which has a middle section with a somewhat rounded outer cross section, which broadens towards a tapered rear end and a knurled screw in the shell of the knife handle.

The GC then assessed whether those essential characteristics corresponded to a technical function of the product and agreed with OHIM’s analysis, which was based on an expired American patent, that they all did. In reaching this decision, the GC noted that (i) undertakings may not use trade mark law to perpetuate exclusive rights concerning technical solutions, such as patents; and (ii) the existence of a patent is practically irrefutable evidence that the characteristics it discloses or claims are functional.


Wesergold Getränkeindustrie GmbH & Co KG v OHIM; Lidl Stiftung & Co. KG

Application (and where applicable, earlier mark)


- spirits, in particular whisky (33)


- mineral and aerated waters, other non-alcoholic beverages, namely lemonades, carbonated drinks and cola drinks, fruit juices and drinks, vegetable juices and vegetable drinks, syrups and other preparations for making beverages (32)

(Five earlier marks consisting of two German marks, a Community mark, a Polish mark and an International mark)


The GC annulled the BoA’s decision that there was no likelihood of confusion between the marks under Art 8(1)(b) because of a breach of essential procedural requirements.

The BoA did not err in finding that there was only a low degree of similarity between the goods.

Furthermore, the BoA was correct to conclude that the signs were different overall. Although there were some visual and phonetic similarities, these were outweighed by the conceptual differences between the words ‘western’ and ‘weser’ (the latter being understood by the German public as the name of a German river and as a fantasy word by the rest of the relevant public). The BoA was also correct to conclude that the inherent distinctiveness of the earlier marks was lower than average, due to the promotional word ‘gold’.

However, the BoA erred in concluding that Wesergold had not claimed that the earlier marks had acquired distinctive character through use, when in fact its submissions before the Opposition Division contained such a claim. This error meant that the BoA had failed to examine a potentially relevant factor in the assessment as to whether there was a likelihood of confusion between the marks.


IG Communications Ltd v OHIM; Citigroup Inc. and Citibank, NA.

Application (and where applicable, earlier mark)


-      - advertising, marketing and brand development, market research, public agency services, consultancy services relating to business operations (35)

-      - computer programming services, advisory and consultancy services (42)

‘CITI’ family of marks including:


- insurance, banking, financial affairs, real estate affairs, investment information and management services (36)

- computer programming (42)

(Community, UK and German marks)


The GC upheld the BoA’s findings that there was a likelihood of confusion under Art 8(1)(b) and a possibility of unfair advantage taken of the CITIBANK mark under Art 8(5).

The GC confirmed that there existed a family of CITI trade marks, the element ‘citi’ being common to all and constituting the distinctive element.

When comparing the goods and services, the GC held that (i) there was a strong similarity between ‘computer programming’ services in Class 42, (ii) there was a low degree of similarity between market research, public agency services and business operations in class 35 and the services in Class 36; and (iii) the remaining services were neither similar nor identical to the services covered by the earlier marks.

Visually and phonetically, the signs were similar, and conceptually the signs were highly similar. The reproduction of the unusual and distinctive spelling of the element ‘citi’ was considered a decisive factor. There was therefore a likelihood of confusion between the signs in relation to all the services held to be identical or similar.

Finally, the GC upheld the BoA’s decision that it was likely that the CITIGATE mark would take unfair advantage of the CITIBANK mark on account of its reputation, distinctive character and it being part of a family of trade marks.


El Corte Inglés SA v OHIM; Emilio Pucci International BV

Application (and where applicable, earlier mark)


- leather, travelling bags, trunks and valises, vanity-cases, rucksacks, shoulder bags, handbags, attaché-cases, briefcases, pouches, pocket wallets, purses, key-holders, card holders, umbrellas (18)

- gymnastic and sporting articles, namely ski accessories (28)

- clothing, including boots, shoes and slippers (25)

(Spanish figurative mark)

- various goods (18)

(Community trade mark application)


The GC dismissed the appeal against the BoA’s decision to reject the opposition under Arts 8(1)(b) and 8(5).

The BoA was correct to find that El Corte Inglés had only proved genuine use of the Spanish figurative mark in relation to men’s clothing and shoes. Therefore it was only these goods which were relevant for establishing a likelihood of confusion.

The unusual nature of the first name ‘Emilio’ of the earlier marks meant it was at least as distinctive as the surname ‘Tucci’. The GC held therefore that both the Spanish figurative mark and the Community trade mark application was visually and phonetically different to the mark applied for.

There was a similarity between the goods in Class 25 of the Spanish figurative mark and some of the goods in Class 18 (shoulder bags, attaché-cases, briefcases, pouches, pocket wallets, purses, key holders and card holders), however, the goods in Class 25 were not similar to those in Class 28.

The GC further concluded that it was not necessary to rule on the similarity of the goods of the Community trade mark application with the mark applied for as this was neither raised by El Corte Inglés, nor ruled on by the BoA.

However, since there was no similarity between the signs there was no likelihood of confusion. The plea based on Art 8(5) failed for the same reason.


Restitutio in integrum

Video Research USA, Inc v OHIM (GC (Third Chamber); T-267/11; 19.09.12)

The GC dismissed the appeal against the BoA’s decision to refuse Video Research’s request for restitutio in integrum under Article 81.

Video Research had employed an American agent to manage the mark at issue who, in turn, delegated the administrative tasks for renewing the mark to a professional representative, Firm B. OHIM had notified Firm B that the trade mark was up for renewal, however, despite receiving instructions from Video Researcher’s American agent to renew the mark, Firm B did not carry out those instructions because of exceptional human error. Firm B’s computerised system for managing records and renewals also failed as it did not generate reminders after the deadline had passed when it was still possible to renew the mark upon payment of an additional fee.

Following Aurelia Finance v OHIM (Case T-136/08, reported in CIPA Journal, June 2009) the GC held that Video Research, its American agent and Firm B were all subject to the requirement to exercise due care, a condition of Article 81.

The human error by the renewals manager of Firm B constituted a failure to comply with his duty to exercise due care. Furthermore, the failure of Firm B’s computerised system to generate reminders was also a breach of this duty. Due care was required to ensure that the process used by Firm B was capable of detecting and correcting any foreseeable error in the functioning of the computerised system, for example, by using a parallel reminder system or by frequent checking.

Accordingly, the BoA was correct to hold that Firm B had not taken due care required by the circumstances as required by Article 81(1).


Colour marks

Société des Produits Nestlé S.A. v Cadbury UK Ltd (Judge Birss; [2012] EWHC 2637; 01.10.12)

Judge Birss (sitting as a Judge of the High Court) dismissed Nestlé’s appeal from the decision of the Examiner that Cadbury was able to register the colour purple as a trade mark for chocolate. However, the Judge limited Cadbury’s specification to “milk chocolate” rather than chocolate in general. 

Cadbury had applied to register the colour purple for chocolate as a UK trade mark, and had filed evidence of distinctiveness acquired through use. The mark applied for was the following, which was a purple block when reproduced in colour:

The description of the mark was the colour purple (Pantone 2685C) applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods. 

Nestlé opposed the application. While it did not seek to overturn the Examiner’s finding that the mark was distinctive for chocolate per se, its main ground of appeal was that the mark was not capable of being represented graphically and as such was not registerable as a trade mark. The Judge acknowledged that this raised important questions which could be referred to the CJEU, but agreed not to do so at the request of the parties. 

The Judge said that while Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau had not established that a “non-spacially delimited” colour mark that specified a Pantone shade would in all cases satisfy Article 2 of the Directive, the CJEU had established that a colour itself was capable of satisfying Article 2. The question then became one of fact to decide whether in a given case it did so. The Judge noted that the CJEU had rejected the Advocate General’s opinion in Case C-49/02 Heidelberger Bauchemie that there was a requirement for a “spacial delimitation” of the use of a colour before it could be registered as a mark. The Judge held that a need for a systematic arrangement or spatial delimitation did not arise as a result of the wording of the description of Cadbury’s mark, as it did not convert what was clearly a single colour into a mark consisting of a combination of colours. Judge Birss also held that the word “predominant” in the description was not too vague or uncertain. It did not present alternatives but rather claimed the use of the colour as the predominant colour. Therefore, it was no different from the single colour mark considered in Libertel

Nestlé also appealed against the decision of the Examiner that Cadbury’s mark be registered in respect of “Chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preparations for making drinking chocolate”. Judge Birss agreed that the evidence showed that purple was distinctive of Cadbury for milk chocolate per se, but not for chocolate generally or for other kinds of chocolate such as white or plain chocolate.  Therefore, the Judge found that the specification should be limited accordingly.

Finally, the Judge held that the category “chocolate for eating” was not too vague or uncertain, even though it may be unfamiliar. It was sufficiently clear and precise, did not extend the scope of the specification, and was not illogical.


Court of Appeal considers meaning of ‘special grounds’ under Article 104

Starbucks (HK) Ltd v British Sky Broadcasting Group Plc & Ors; EMI (IP) Ltd v British Sky Broadcasting Group Plc & Anr* (Etherton, Patten & Tomlinson LJJ; [2012] EWCA Civ 1201; 13.09.12)

The Court of Appeal (Etherton LJ giving the lead judgment) dismissed both appeals from the decisions of Arnold J and Deputy Judge Baldwin QC in two sets of proceedings for trade mark infringement and passing off brought by different Claimants against BSkyB (reported in CIPA Journal, September 2012).  

Starbucks and EMI had each brought proceedings against Sky, claiming that Sky’s planned launch of its new internet television service under the name NOW TV would infringe their respective CTMs and amount to passing off.  Very shortly after receiving letters before action sent on behalf of Starbucks and EMI, Sky had initiated invalidity proceedings at OHIM against each Claimant’s CTM. 

In the EMI proceedings, Deputy Judge Baldwin QC granted a stay on the basis that there were no special grounds within Article 104. In the Starbucks proceedings, Arnold J refused a stay and ordered an expedited trial on the basis that there were special grounds within Article 104. EMI appealed the decision in its proceedings and BSkyB appealed the decision in the Starbucks proceedings, on the ground that the respective Judges made errors of principle in their approach to what constituted special grounds within Article 104(1).

The Court of Appeal was referred to the decision of Lewison J in Guccio Gucci Spa v Shipton & Heneage Ltd [2010] EWHC where claims based on alleged infringement of a CTM were stayed, but otherwise the action was allowed to proceed to trial. The Court of Appeal acknowledged that neither of the first instance Judges had been referred to the decision. However, Etherton J relied on Lewison J’s findings that, among other things, “special” connotes something out of the ordinary run of cases. Lewison J had stated that neither the fact that there were concurrent proceedings relating to a CTM and a national mark, nor that there was a passing off claim, could be regarded as a ‘special reason’. Lewison J had also been doubtful whether an allegation that an application to OHIM was abusive could carry much weight in an application for a stay. 

The Court of Appeal went on to conclude that the aim of Article 104 was the avoidance of inconsistent decisions, but infringement proceedings could continue despite that risk. Etherton LJ said that the presumption in favour of a stay under Article 104 was a strong one and it would therefore be a rare and exceptional case where there were special grounds within Article 104. Special grounds had to relate to factual circumstances specific to the given case and could not therefore consist of systemic differences between CTM courts and OHIM. The Court reiterated, as it had recognised in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 729, that parties themselves could not determine the issue of a stay merely by reaching agreement; it was a matter for the Court which ought to be addressed at the earliest opportunity in the proceedings. The Court indicated that particular urgency could constitute special grounds where interim relief would not provide sufficient protection. Finally, the Court did not consider that a reactive application to OHIM as BSkyB had done was a relevant consideration in assessing whether there were special grounds under Article 104.

The Court held that Arnold J had been entitled to take the view that there were exceptional circumstances of urgency and that Starbucks’ interests could not be adequately protected by provisional and protective measures. The Court also found that Deputy Judge Baldwin QC was both entitled and right to take a different view of the urgency in the EMI proceedings. The evidence had shown no urgency on the part of EMI in launching a NOW branded music TV channel, and the Judge had been entitled to find that EMI could be adequately compensated in damages for any loss.


Preliminary opinion in the PCC

Fayus Inc. & Anr v Flying Trade Group Plc* (Judge Birss; [2012] EWPCC 43; 29.09.12)

Judge Birss gave a preliminary non-binding opinion that that there was a strong case that the Defendant’s use of the mark OLA-OLA amounted to passing off and that its UK registered mark was therefore invalid.

The Claimants had sold indigenous African and other ethnic products in the UK under the mark OLA-OLA since 2004. The goods included pounded yam, carotino oil and plantain chips. The Defendant started selling ethnic food products, including pounded yam, bean flour and semolina, under the mark OLA-OLA in about 2011. The Claimants alleged that the use of the OLA-OLA brand by the Defendant amounted to passing off and also sought a declaration that the Defendant’s UK mark, which was registered in 2010, was invalid. 

As he had done previously in Weight Watchers v Love Bites [2012] EWPCC 11, Judge Birss had, at the CMC, indicated that he would be prepared to give a non-binding opinion on the merits if both parties agreed.

In the Judge’s opinion, the fact that the Claimant’s initial sales may have been small did not matter, as the law of passing off would protect goodwill on a relatively small scale provided it was not regarded as trivial. The Judge stated that even if the word “Ola-Ola” had a meaning in an African language, it had no meaning in English and there was no reason why goodwill and reputation could not subsist in it. Further, it was no defence that the Defendant may have adopted the name Ola-Ola without any knowledge of the Claimants or their goodwill in the name. 

The Judge concluded that the Claimants had a strong case that the Defendant’s trade mark registration was invalid under Section 5(4), and that the Claimants were likely to win the case both in passing off and in relation to the invalidity of the Defendant’s mark. The Judge was unable to say whether the Defendant’s mark was applied for in bad faith, contrary to Section 3(6), but the Claimant did not need to win on that point to win the case.



Moral rights

Emma Delves-Broughton v House of Harlot Ltd (“HHL”)* (Mr Recorder Douglas Campbell; [2012] EWPCC 29; 18.05.12)

Mr Recorder Campbell held that HHL had infringed Mrs Delves-Broughton’s copyright in respect of a photograph taken by her, in her professional capacity as a photographer, by using the photograph in question on its website in the absence of a licence. The Judge also found changes which HHL had made to the original photograph amounted to a distortion of the work.

HHL had removed the forest background from the original photograph before publishing it on its website. The original and amended versions of the photograph appear below:

Although the changes did not amount to a mutilation of the work and were not prejudicial to the honour or reputation of Mrs Delves-Broughton as the author or director, they amounted to a distortion of the photograph and the treatment of the work was therefore derogatory under Section 80 CDPA.

The Judge awarded damages of £675 (which was based on National Union of Journalists guidelines) in respect of the copyright infringement. A further £50 was awarded in respect of the breach of Section 80


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

The reported cases marked * can be found at and the CJ and GC decisions can be found at