Reported Trade Mark Cases May 2008

29 mai 2008

Katharine Stephens and Zoe Fuller



Ref no. ECJ
Indorata-Serviços e Gestão Lda v OHIM
(Order not yet in English)
Application (and where applicable, earlier mark) 


 - inter alia electrical and non-electrical epilators (8)

- artificial and natural hair (22)

 - training (41)

 - hygienic and beauty care, in particular hair care (44)


The ECJ upheld the CFI’s decision to dismiss the Applicant’s appeal against the BoA’s refusal to register the sign.

The CFI had found there was a sufficiently clear and direct connection between the sign applied for and the goods and services concerned for the sign to be refused registration under Article 7(1)(c). This was contested by the Applicant. However, the ECJ refused to rule on this point, being an issue involving findings of a factual nature.

The Applicant submitted that the sign applied for should not be refused registration as it was not currently using the sign in relation to the goods and services for which the CFI had found that there was a sufficiently clear and direct connection. The ECJ held that this was irrelevant: it is sufficient for the purposes of Article 7(1)(c) that the sign could be used in a descriptive way.


Ref no. ECJ
Carsten Brinkmann v OHIM; Terra Networks SA
(Order not yet in English)
Application (and where applicable, earlier mark) 


- Insurance, financial, monetary and real estate affairs (36)

Terra logo 
- Insurance, online financial affairs (36)


The CFI had upheld the opposition under Article 8(1)(b). Although the degree of similarity between the signs was not particularly high, the CFI had found that there was a risk of confusion due to (i) the fact that the services covered by the earlier mark and those covered by the sign applied for were identical and (ii) the verbal element of the earlier mark, TERRA, was wholly contained in TERRANUS.

The ECJ dismissed Carsten Brinkmann’s appeal.

Being issues of a factual nature, the ECJ refused to rule on the CFI’s findings in relation to the relevant public, the identity of the services covered by the signs at issue and the degree of similarity between the signs.

Carsten Brinkmann submitted that there was no risk of confusion, relying on several OHIM decisions relating to marks containing the word “terra”. The ECJ rejected this argument on the basis that the registrability of a sign as a CTM must be assessed solely on the basis of the CTMR and not on the basis of previous decisions.


Ref no. ECJ
Ferrero Deutschland GmbH v OHIM; Cornu SA Fontain
(Decision not yet in English)
Application (and where applicable, earlier mark) 


- salted biscuits (30)


- Chocolate, including filled chocolate products; ready made cakes and wafers; sugar confectionery; spreads containing sugar; cocoa; praline; milk and/or fats (5, 29, 30, 32, 33)

(German national registration)


The ECJ allowed Ferrero’s appeal against the decisions of the CFI and BoA, and held that there was a likelihood of confusion between the two marks under Article (8)(1)(b).

The CFI had committed an error of law by only examining whether each individual piece of evidence submitted by Ferrero was sufficient by itself to support its contention of a high degree of distinctiveness. The Court should have looked at the bundle of evidence as a whole. The ECJ therefore annulled the CFI’s decision and proceeded to rule on the merits. The survey and market research report submitted by Ferrero, as well as the high turnover generated by products such as Raffaello and Giotto, supported the argument that the FERRERO mark was very well known in Germany at the relevant date such that it had a high level of distinctiveness. This, together with the similarity of the marks concerned, was enough to overcome the weak degree of similarity of the goods and resulted in a likelihood of confusion on the part of the public.


Ref no. CFI
Altana Pharma AG v OHIM; Avensa AG
(Order not yet in English)
Application (and where applicable, earlier mark) 


- medicines and diagnostic preparations for medical purposes (5)


 - pharmaceutical products, in particular medicines for human purposes (5)

(German national registration)


The CFI dismissed the appeal, upholding the BoA’s ruling that there was a likelihood of confusion between the two marks under Article 8(1)(b).

There was no inconsistency in the BoA’s findings that, on the one hand, the earlier mark was faintly distinctive and so should get limited protection, and, on the other hand, the addition of the descriptive element UPDATE to the mark applied for did not exclude the risk of confusion.

Visually and phonetically, the two marks were distinguished by the addition of the element UPDATE. However, conceptually, the BoA had not erred in finding that a large part of the relevant German public would understand the meaning of the term UPDATE so that the addition of this element would not distinguish the marks. Thus the marks were conceptually similar and this was a sufficient basis for the BoA’s decision.

There was a risk that a large part of the relevant public would consider that the mark applied for was an updated version of the earlier mark. The BoA was thus correct in finding that there was a risk of confusion between the marks.


Ref no. CFI
American Clothing Associates SA v OHIM
(Decision not yet in English)
Application (and where applicable, earlier mark) 

RW logo

- Various goods and services (18, 25 & 40)


The CFI partially allowed the appeal to overturn the BoA’s refusal to register the mark.

Article 6 ter of the Paris Convention (which is incorporated into Council Regulation 40/94/EEC at Article 7(1)(h)) prohibits the registration of trade marks comprising or containing, inter alia, state emblems. The CFI held that on a proper construction of Article 6 ter, the prohibition applied only in respect of applications for goods; service marks were excluded. Accordingly the BoA’s refusal in respect of class 40 was overturned.

In respect of the goods classes, the mark should be refused. The addition of the letters RW to the maple leaf device did not stop Article 6 ter applying; that Article provides for refusal whether the protected emblem is used alone or as part of a compound mark. The small differences between the mark and the Canadian state emblem were not sufficient to distinguish the mark from the emblem from the “heraldic point of view” considered in Article 6 ter.


Ref no. CFI
Suez SA v OHIM
(Decision not yet in English)
Application (and where applicable, earlier mark) 


- chemical products; scientific equipment; paper and cardboard products; advertising services; financial services; construction; telecoms; transport; information provision; research and technical services (1, 9, 11, 16, 35, 36, 37, 38, 39, 40, 41, 42)


The CFI upheld the BoA’s refusal to register the mark on the basis that it was a promotional slogan lacking distinctive character under Article 7(1)(b).

Due to the lack of reference to the commercial origin of the goods and services, the laudatory and imprecise nature of the mark, and the absence of capacity for it to educate the public to its use as a trade mark, the relevant English speaking consumer would take the sign to be a promotional slogan and would not recognise it as a mark indicating the commercial origin of the goods and services.

Even if the relevant public was composed of professionals, the higher level of attention they pay is much less marked regarding promotional indications than elsewhere. The relevant public would perceive the mark to refer, in a laudatory and promotional manner, to the supply of goods and services essential to the lives of Suez’s consumers (rather than to the commercial origin). It did not matter that Suez’s competitors would not wish to use the mark, nor was it relevant that the mark had been registered in various Member States.


Ref no. CFI
Compagnie générale de diététique SAS v OHIM
(Decision not yet in English)
Application (and where applicable, earlier mark) 


- inter alia fish and canned fish (29)


The CFI overturned the BoA’s refusal to register the mark for fish and fish preserves as being devoid of distinctive character under Article 7(1)(b).

The BoA had erred in its finding that the average consumer consisted of restaurateurs who would be familiar with the Latin term “garum” (a fish condiment used by the Romans). The CFI held that the relevant public consisted of the average consumer of everyday food products as well as the more specialised and professional restaurateur. The average consumer was not familiar with specialist Latin terms such as “garum” and the Larousse Gastronomique description of the origins of the term was addressed to a specialist and professional public. Furthermore, there was no evidence that the term was known and used in the European gastronomical sector.


Ref no. CFI
Sebirán SL v OHIM; El Coto de Rioja, SA
(Decision not yet in English)
Application (and where applicable, earlier mark) 

Coto D'Arcis logo

- Various alcoholic and non alcoholic beverages (32, 33)

- Transport; packaging and storage of goods (39)


 - Various alcoholic and non alcoholic beverages (32, 33)


 - wines, spirits and liqueurs (33)


The CFI agreed with the BoA and held that there was a likelihood of confusion between the application and the earlier EL COTO mark under Article 8(1)(b) in relation to goods in classes 32 and 33.

The CFI confirmed that the BoA was correct in concluding that the dominant elements of the marks in question were “Coto D’Arcis” in the application and “Coto” in the earlier mark.

The BoA correctly held that the figurative element of the application was blurred and that the reference to a vineyard to be used in respect of wines had a very limited distinctive character. Consequently, the conflicting marks had a certain visual similarity.

Phonetically the signs were held to be similar because both of them contain the word “Coto”.   Conceptually, the signs were also similar as “Coto” is a Spanish term and the term “D’Arcis” lacks any meaning in Spanish.

The CFI confirmed that the BoA had been correct in taking into account the notoriety enjoyed in Spain by the EL COTO mark when assessing any likelihood of confusion.

The CFI concluded that the BoA had not erred when it dismissed the appeal under Article 8(5) due to a lack of evidence.


Ref no. CFI
Eurocopter SAS v OHIM
(Decision not yet in English)
Application (and where applicable, earlier mark) 


- Electronic apparatus for minimising vibrations; in particular inside devices containing a rotor; accelerometers; strain gauges; force sensors; temperature sensors; side-slip sensors (9)

- Helicopters and rotorcraft (12)

- Communications by computer terminals (38)


The CFI dismissed the Applicant’s appeal and upheld the BoA’s refusal to register the sign under Articles 7(1)(b) and (c) save in respect of Class 38 services.

The CFI found that the BoA had correctly assessed the descriptive character of the sign at issue. The CFI held that this was the case not only in relation to each component of the sign but also in relation to the sign as a whole. For these purposes, the CFI stressed that (i) a sign does not need to be exclusively descriptive; it is sufficient if it is exclusively composed of descriptive elements, and (ii) it is irrelevant whether the characteristics evoked by the sign are essential or auxiliary.

The CFI also held that the fact that the sign applied for had no real technical meaning was not relevant. It is sufficient that the sign evokes a quality or characteristic which could be directly associated with the overall result obtained by the use of the goods concerned.


Ref no. CFI
Citigroup, Inc and Citibank NA v OHIM; Citi, SL
Application (and where applicable, earlier mark) 

CITI logo

- Customs agencies, property valuers; real estate agents; evaluation of house contents (36)


plus various CTM and national marks including the term “citi”

- Real estate services; financial services (36)


The CFI annulled the BoA decision and held that the mark applied for was similar to the earlier CITIBANK mark and its use could take undue advantage of the reputation of the CITIBANK mark under Article 8(5).

The parties agreed that the mark CITIBANK enjoyed a reputation. The CITI element was held to be the distinctive element of the CITIBANK mark. The two marks were sufficiently visually, aurally and conceptually similar for the public to be able to establish a link between them. By holding that the marks were not similar, the BoA had infringed Article 8(5).

The CFI noted that Article 8(5) was designed to prevent instances of “free riding on the coat tails of a famous mark or attempting to trade on its reputation” and that the stronger the earlier mark’s distinctive character and reputation, the easier it was to establish detriment. The Court took the view that there was a high chance of free riding in this case and that, if the registration had been permitted, this could lead to Citi SL being perceived as associated with Citigroup Inc.


Ref no. CFI
Nordmilch eG v OHIM
(Decision not yet in English
Application (and where applicable, earlier mark) 


 - Dairy products; tea/coffee based drinks; non-alcoholic drinks; dairy based alcoholic drinks; restaurant and catering services (29, 30, 32, 33 and 43)


The CFI upheld the decision of the BoA that the mark lacked sufficient distinctive character under Article 7(1)(b) in respect of all goods and services applied for, save for alcoholic drinks and restaurant and catering services.

The CFI agreed that the average consumer would perceive the mark applied for, not as an indication of commercial origin, but as a reference to a characteristic of the product (its promise of vitality and positive influence on the energy of the consumer). This was supported by the results of internet searches which demonstrated wide use of the term in this context within the food/drinks sector.

Although the VITALITE case (Sunrider v OHIM
T-24/00) held that the term VITALITE did not violate Article 7(1)(b) in respect of baby food and mineral waters, the case was not relevant as it did not properly analyse the distinctive character of the VITALITE mark either in general terms or regarding dairy products.


Ref no. CFI
Dainicheiseika Colour & Chemicals Mfg Co Ltd v OHIM; Pelikan Vertriebsgesellschaft mbH & Co Ltd
Application (and where applicable, earlier mark) 

pelican image
- various goods, inter alia plastics; plastic substances semi-processed (1, 2, 17)

Pelikan logo

- various goods, inter alia chemicals used in industry; unprocessed plastics (1,2)


The CFI upheld the BoA’s decision to reject the application under Article 8(1)(b).

The BoA rightly found the products to be similar: ‘Plastics; plastic substances, semi-processed’ and ‘unprocessed plastics’ are complementary and competing and might be bought by the same purchasers.

Although there was a low degree of visual similarity between the marks, the marks were conceptually identical and phonetically identical or very similar. The visual differences were not sufficient to negate the likelihood of confusion, even when given greater weight due to the methods by which the goods were marketed. Although the relevant public (specialised manufacturers throughout the EU) would take care in selecting the products at issue, they might assume the products originated from the same/economically linked undertakings.


Ref no. CFI
Casa Editorial El Tiempo SA v OHIM; Instituto Nacional de Metereologia.
(Decision not yet in English)
Application (and where applicable, earlier mark) 


- Paper, cardboard and other stationery goods(16)

 - Advertising; business management; business administration; office functions (35)

- Telecommunications (38)

Education; providing of training; entertainment; sporting and cultural activities, including editorial services (41)


- Paper, cardboard and other stationery goods, including material for instruction or teaching (16)

- Telecommunications (38)

(Spanish national registration)


The CFI agreed with the BoA and held that there was a likelihood of confusion under Article 8(1)(b) between the two marks.

The CFI held that if Casa Editorial wanted to prove that the application and the earlier mark were used in the market place to designate different activities (a newspaper and a service offering meteorological information, respectively), it should have either indicated that in the specifications and/or requested that Instituto Nacional de Metereologia proved its use.

The CFI held that the BoA had not erred in finding that the ‘material for instruction or teaching’ goods protected by the earlier mark complemented the ‘education, provision of training’ services of the application, since educational materials are necessary to perform the service of education.

The CFI confirmed that the BoA had been correct in establishing that the dominant element of the signs at issue was TIEMPO. “Tele” is a mere prefix commonly used in the telecommunications sector. Therefore the Spanish public would perceive the sign TELETIEMPO as a mere juxtaposition of the noun “Tiempo” and the prefix “Tele”.

The CFI also confirmed that the BoA was correct to hold that there was a conceptual similarity between the signs on the basis that the dominant element of both signs has a meteorological meaning.


Ref no. CFI
Sonia Rykiel création et diffusion de modèles v OHIM; Cuadrado SA
Application (and where applicable, earlier mark) 

Sonia Rykiel logo
- Leather and imitations of leather (18);

 - Clothing including headscarves, underwear, socks, stockings, footwear, headgear for men, women and children (25)

Sonia logo
- articles of clothing for women, men and children; footwear; headgear (25)


The BoA had upheld the opposition in relation to Class 25 goods under Articles 8(1)(a) and (b), finding that there was a likelihood of confusion between the signs and that the earlier mark had been put to genuine use within the meaning of Article 43.

The CFI took the view that the use which had been made of the earlier mark could not be regarded as genuine and upheld Sonia Rykiel’s appeal.

In particular, the CFI referred to the ECJ case law according to which even minimal use can be sufficient to be deemed genuine provided it is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark.

In this case, the evidence submitted by Cuadrado was very limited showing minimal turnover and a very small quantity of goods sold under the mark over a relatively long period despite the goods in question being of everyday consumption sold at very reasonable prices. Accordingly, and in the absence of supporting documents or convincing explanations to demonstrate otherwise, the CFI found that use of the earlier mark could not be held to be genuine for the purposes of Article 43.


L & D SA v OHIM; Julius Sämann Ltd (A.G. Sharpston for the ECJ; C-488/06; 13.03.08)

L&D filed an application to register as a CTM a cartoon character based on a fir tree containing the word element “Aire Limpio” for, inter alia, Classes 3 and 5 (perfumery, essential oils and scented air freshener products).

Julius Sämann opposed the application on the basis of 18 earlier national and international trade marks all with a similar fir tree outline, including the silhouette mark and a figurative mark containing the word element ARBRE MAGIQUE (shown below) registered for goods in Classes 3 and 5.

 “AIRE LIMPIO”               “Silhouette”               “ARBRE MAGIQUE”            

“AIRE LIMPIO”                       “Silhouette”                                 “ARBRE MAGIQUE”

OHIM rejected the opposition, however the BoA allowed the appeal in relation to goods in Classes 3 and 5. TheCFI upheld the BoA’s findings. L&D appealed, submitting that the CFI had infringed firstly Article 8(1)(b) (by finding that, inter alia, the earlier silhouette mark had acquired a distinctive character) and secondly Article 73 (by basing its assessment on evidence relating to marks other than the silhouette mark).

The AG concluded that the CFI could rely on Nestlé (C-353/03) to find that the silhouette had acquired distinctive character as part of the ARBRE MAGIQUE mark. There was no previous case law stating that, in marks containing both graphic and verbal elements, the latter play the preponderant role where the former has little imaginative content (as in the case of a fir tree). Where a finding does not conflict with the Regulation or case law, OHIM’s guidelines could not be used to invalidate such a finding. Further, there was no general rule of law that a word which lacks meaning was invariably fanciful and distinctive.

However, a mark acquired distinctive character if, although not inherently likely to be perceived as distinguishing the products of a particular undertaking, it none the less came to be so perceived. The AG considered that distinctiveness could not be shown to be fulfilled solely by reference to general, abstract data such as specific percentages. Thus, the CFI had erred in accepting that the ARBRE MAGIQUE mark had acquired a particularly distinctive character on the sole basis of sales and advertising figures and the date of first registration in Italy.

The AG further opined that the CFI had erred in dismissing the submission that the shape of the earlier mark was necessary to obtain a technical result without examining the substance of that argument. She doubted whether the reasoning in Durferrit (T-244/01) (where the CFI rejected an opposition because it relied on one of the absolute grounds for refusal under Article 7) should apply where a party seeking to register a CTM relied on an absolute ground as a defence to an opposition to show that earlier mark should not have been registered.

Finally, the AG considered that the CFI erred in assuming that the BoA had based its assessment on evidence relating to the ARBRE MAGIQUE mark when that was not indicated in the decision.   The AG concluded that the CFI decision should be annulled and the case remitted to OHIM.

Public interest requirement of availability

Adidas AG & Anr v Marca Mode CV & Ots (ECJ (First Chamber); C-102/07; 10.04.08)

Adidas own the famous figurative mark composed of three vertical parallel stripes of equal width which are featured on the sides of sports and leisure garments in a colour contrasting with the basic colour of those garments.

Adidas commenced infringement proceedings in the Netherlands against four clothing retailers who sold garments bearing a mark consisting of two vertical parallel stripes in a contrasting colour to the basic colour of those garments. Adidas was successful at first instance, however, the Appeal Court subsequently annulled the decision. Although the mark had acquired considerable distinctiveness through use (it was not particularly distinctive per se), the scope of the protection could not be extended to other striped patterns; these had to remain available for use by other third parties. The Dutch Supreme Court referred various questions to the ECJ. 

The ECJ held that the Directive should be interpreted as meaning that the public interest requirement of availability could not be taken into account in the assessment of the scope of the exclusive rights of the trade mark owner, except in so far as the limitation of the effects of the trade mark (as set out in Article 6(1)(b) of the Directive) applied.

Although the ECJ noted the public interest in leaving some signs free, it also ruled that this was not one of the factors to be taken into account in assessing any likelihood of confusion under Article 5(1)(b) which had be based on global perception by the public of the goods covered by the mark and the goods covered by the sign used by the third party. The ECJ held that the fact that the public might perceive a sign as decoration did not restrict the protection given by Article 5(1)(b). It was for the national court to decide whether the average consumer seeing a two striped motif on goods could be misled as to the origin of those goods.

Similarly, the ECJ held that the requirement of availability did not constitute a relevant factor for determining whether the use of a sign takes unfair advantage of, or is detrimental to, the distinctive character/repute of a trade mark under Article 5(2). The infringements referred to in Article 5(2) were the consequence of a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public establishes a link between them. The requirement of availability was extraneous to this assessment.

The ECJ also provided guidance in interpreting Article 6(1)(b) which is designed to ensure that all economic operators have the opportunity to use descriptive indications and therefore gives expression to the requirement of availability. In order to rely on Article 6(1)(b), the indication used must relate to one of the characteristics of the goods marketed or the service provided. In this case the retailers’ reliance on the decorative nature of the two-stripe motif did not give any indication concerning the characteristics of the goods.

Use of information collected by Customs authorities

Beecham Group plc & Ots v Andacon NV (A.G. Ruiz-Jarabo Colomer for the ECJ; C-132/07; 08.04.08)(Decision not yet in English)

Beecham Group, part of GSK, specialises in the manufacture and distribution of pharmaceuticals and owns a number of registered trade marks for these products. Andacon NV is a wholesale trader of pharmaceuticals.

In 2003 and 2004, GSK exported pharmaceuticals to a company based in Ethiopia. In November 2003, GSK lodged an application for customs action under Council Regulation (EC) No 3295/94 which was approved with a validity date of 25 November 2004. On 1 July 2004, Council Regulation (EC) No 3295/94 (“the old Customs Regulation”) was replaced by Council Regulation (EC) No. 1383/03 (“the new Customs Regulation”). Council Regulation (EC) No 1891/2004 (“the Implementing Regulation”) lays down the provisions for the implementation of the new Customs Regulation.

In October 2004, the Belgian Customs authorities informed GSK that a large consignment of products bearing their trade marks had been imported into Belgium from a non-EU country. GSK were allowed to review samples of some of these products and were able to confirm that batch numbers matched the products intended forEthiopia. GSK successfully applied for the products to be seized and started proceedings before Rechtbank van koophandel (commercial court in Brussels) against Andacon to prevent it from marketing the products without GSK’s authorisation. Andacon contested GSK’s action on the ground that the information collected by the Belgian Customs authorities under the new Customs Regulation was being used for purposes other than those permitted by this Regulation, in particular for the purposes of preventing parallel imports.

The Rechtbank stayed the proceedings and asked several questions regarding the legality of the actions taken by the Belgian Customs authorities and regarding the use of information obtained in connection with such actions.

The Rechtbank queried the continued effectiveness of GSK’s application for Customs action in the light of requirements laid down by the Implementing Regulation. Article 9(1) of the Implementing Regulation provides that applications for Customs action made before 1 July 2004 must be supplemented by a declaration from the rights holder as required by in Article 6 of the new Customs Regulation. GSK had not provided such a declaration. The question, therefore, was whether a declaration was a formal condition for Customs action made before 1 July 2004. The AG was of the opinion that it was not; the facts at issue had occurred before the publication of the Implementing Regulation and GSK could not be expected to comply with those requirements.Furthermore, he endorsed the Commission’s view that applications for Customs action made before 1 July 2004 remained effective until the expiry of their validity date independently of whether a declaration under the new Customs Regulation was filed.

The Rechtbank also queried the extent to which information collected by Customs authorities pursuant to the new Customs Regulation (e.g. actual or estimated quantity and actual or supposed nature of the goods, names and addresses of the consignee, the consignor, the declarant or the holder of the goods and the origin and provenance of the goods) could be used for purposes other than those envisaged by that Regulation, in particular (i) by Customs authorities in the context of the questioning of witnesses or the submission of documents in separate proceedings; and (ii) by trade mark owners in connection with proceedings to prevent parallel imports. The AG was of the opinion that the new Customs Regulation did not prevent use of the information for such purposes. The AG noted that the Customs authorities were not subject to the new Customs Regulation but to the Community Customs code which permits such use of the information by Customs authorities. As regards trade mark owners, the AG referred to the ECJ case law according to which a trade mark owner is entitled to prevent the marketing within the EEA of products bearing the mark which had previously been placed on the market outside the EEA where it has not consented to such marketing. As the purpose of the new Customs Regulation was to prevent the marketing of counterfeit and pirated goods, the AG was of the opinion that it would be awkward if trade mark proprietors could not use information collected by Customs authorities under the new Customs Regulation to prevent such parallel imports.

Composite marks

Rousselon Freres et Cie (“RF”) v Horwood Homewares Ltd* (“HH”) (Warren J.; [2008] EWHC 881 (Ch); 24.04.08)

The hearing officer, Mr Foley, refused RF’s application under Sections 47(2)(a) and 5(2)(b) to invalidate two of HH’s marks registered in Classes 8, for inter alia cutlery, and 21 for domestic utensils. HH’s marks are as follows:

Judge Sabatier  Stellar Sabatier

RF’s application was based on three marks all registered in Class 8 for, inter alia, kitchen knives, one mark comprising SABATIER, the other two included the word SABATIER.

Mr Foley held that, although there was identity between the majority of the goods covered by the respective marks in Class 8 and some similarity between the marks, there was nevertheless no likelihood of confusion between HH’s marks and RF’s SABATIER mark. He held that there was no similarity between RF’s Class 8 goods and the goods covered by Class 21 of HH’s marks.

The Judge allowed the appeal.

Firstly, Warren J considered whether there was similarity between the Class 8 and 21 goods. The test was the one laid down in British Sugar v James Robertson [1996] RPC 281. Although, Mr Foley found that the users of the respective goods were the same, the trade channels through which the goods reached the market were the same and the goods were to some extent complementary (and not in competition) with one another, nevertheless, he found that the goods were not similar, in part, giving some weight to how the trade considered such goods. The Judge held that the evidence, applying the global approach, did not lead inevitably to one conclusion (in doing so, he made reference to the common sense approach; “that wobbly touchstone”).Consequently, Mr Foley was entitled to find that the goods in Classes 8 and 21 were not similar. 

Secondly, Warren J considered the likelihood of confusion between the marks. Mr Foley had held that: 

“I see no reason why the word SABATIER will be singled out for attention. Both JUDGE and STELLAR are well used and distinctive marks. They are not dominated by the SABATIER element. There are a variety of marks that incorporate SABATIER, used by different traders, which in my view is likely to focus attention on other elements in order to distinguish…. I come to the view that despite the identity in the use of the distinctive word SABATIER, the differences brought about by the other elements in the registered proprietor’s marks serve to distinguish.”

The reference to “a variety of marks that incorporate SABATIER” was a reference to the fact that RF were members of the “Association des Proprietaires des Marques de Coutellerie incorporant le mot Sabatier” (which translates as “Association of Proprietors of Cutlery Trade Marks incorporating the word Sabatier”). The Association was formed for the purpose of protecting the SABATIER name and distinctive character. However, RF’s marks were not collective or certification marks, rather, RF and other companies each had registered trade marks containing the word SABATIER in various countries, including the UK.

HH had not pleaded that RF’s marks were not distinctive or should be revoked on the basis that SABATIER was a common name in the trade. Nevertheless, the argument before Mr Foley moved towards an attack on the mark. That attack was sustained on appeal; because the mark was devoid of distinctive character, or was of very low distinctive character, there was no likelihood of confusion. Mr Foley found that SABATIER was distinctive and, in reviewing all the evidence himself, the Judge was of the same opinion. HH failed to prove that SABATIER was commonly used in the trade. RF’s marks had been validly registered and HH failed to show that that position had changed. 

Finally, the Judge turned to the issues raised in Medion v Thomson Multimedia [2006] ETMR 13 (a case of a composite mark where the ECJ considered the infringement of the mark LIFE by the use of the mark THOMSON LIFE). As Warren J stated:

“[Medion] does not say that a composite mark which contains an earlier mark will always carry a likelihood of confusion; rather, it says that there is such likelihood if the earlier mark has an independent distinctive role. However, the assessment whether the earlier mark does have such a role is, I consider, something which has to be decided before answering the question whether there is a likelihood of confusion. To elide the question of an independent distinctive role with the question of the likelihood of confusion runs the risk of answering the former question by first providing an answer to the latter. That would be to answer the question “Is there a likelihood of confusion” with the answer “Yes, if there is a likelihood of confusion” when the answer should be “Yes, if the earlier mark retains an independent distinctive role”.

The Judge held that Mr Foley’s view that SABATIER had an independent distinctive role in HH’s marks could not be consistent with maintaining that there was no likelihood of confusion between RF’s SABATIER mark and HH’s marks. Consequently, he allowed the appeal.


Use of prior art from a different field

Green Lane Products Ltd v PMS International Group plc & Ots* (L.J.J. Ward, Jacob & Rimer; [2008] EWCA Civ 358; 23.04.08)

Green Lane Products failed in their appeal against the decision of Lewinson J ([2007] EWHC 1712) on a preliminary issue in infringement proceedings. Green Lane manufactured and sold spiky rubber balls for use in tumble dryers as a drying aid. They obtained Community Registered Designs (CRDs) for the balls which were listed in Class 7.05 under the Locarno Convention (flatirons and washing, cleaning and drying equipment). PMS sold similar spiky balls, prior to the Green Lane registration, for use as massaging aids. After Green Lane had obtained their CRD’s PMS decided to sell their spiky balls for other purposes including for use as laundry balls.Green Lane claimed that PMS would infringe their CRDs if they continued to sell their product for any other use other than as massage balls. 

Green Lane “Dryerballs”                 PMS spiky plastic balls

Green Lane “Dryerballs”                    PMS spiky plastic balls

The preliminary issue concerned the correct construction of Article 7 of the Community Designs Regulation, in particular, the meaning of the exception to designs deemed to be prior art, that is, where they could not have been known to the “the circles specialised in the sector concerned operating within the Community”. The Judge at first instance held that (i) the “sector concerned” within the meaning of Article 7 consisted of or included the sector of the alleged prior art; and (ii) the “circles specialised in the sector concerned operating within the Community” were capable of consisting of all individuals who conducted trade in relation to products in the sector concerned, including those who designed, made, advertised, marketed, distributed and sold such products in the course of trade in the Community.

Green Lane contended that PMS could not attack the validity of the Green Lane CRDs using prior sales in a different market sector to that in the CRDs. PMS submitted that the design was old based on their own prior sales in the EU of what was essentially the same design.

The parties reached a settlement before judgment was handed down, but the CoA decided still to issue the judgment on the basis that it was in the public interest. Jacob LJ gave judgment for the Court. He dismissed the appeal and refused to make a reference to the ECJ. He set out the following principles in his judgment:

1. For a CRD to be valid the design must be new and have individual character. This required consideration of an earlier design made available to the public. A design was not new if it was part of the state of the art and the state of the art was everything that has been made available to the public before the relevant date. As such, the “circles” referred to in Article 7 were those where the design had previously been disclosed and were therefore not limited to the sector specified in the CRD application.

2. The Article 7 exception was to be construed narrowly. It was intended to protect the European design industry from claims that designs were invalid because of earlier designs somewhere else in the world which the European industry could not have been aware. In essence, the exception was intended to prevent a claim for invalidity being made by infringers using obscure prior art.

3. The informed user concept under Recital 14 only came into play once the prior art had been identified. The “circles in the sector concerned” exception simply ruled out certain prior art from being considered at all either because of novelty, which does not involve the informed user, or for the purposes of individual character.

4. Article 36 of the Regulation was purely an administrative provision. This was shown by, amongst other things, the lack of sanction for a mistaken or misstated declaration on goods the design is to be applied to. Therefore, it was going too far to suggest that the declaration under Article 36 was intended to have any effect over substantive rights or their validity.

5. A CRD provided the owner with monopoly protection over any kind of goods according to the design. It therefore followed that to attack novelty, prior art covering all kinds of goods could be used subject to the Article 7 exception of obscure prior art.

No defence of innocent infringement for Community designs

J Choo (Jersey) Ltd v Towerstone Ltd & Ots* (Floyd J; [2008] EWHC 346 (Ch); 16.01.08)

On an application for summary judgment, the Judge found infringement of a Community registered design and a Community unregistered design. An injunction was not granted because the first Defendant offered an undertaking in the terms requested by the Claimant. The validity of the design was not challenged.

The case related to infringement of a Jimmy Choo handbag called Ramona, pictured below:

Ramona handbag

The Judge held that the informed user would be someone with a knowledge of handbag design; not the woman in the street, not a handbag designer. Further, he accepted that the most significant features of a handbag design are those in the front of the bag, being visible when in use.

The Judge held that the impression given by the two bags was the same. Of the differences listed by the Defendant, the Judge found as follows:

1. The following were irrelevant as they were not features of the design: the differences in texture; the absence of a square panel of fabric behind the clasp; some differences on the back of the clasp; and the absence of the “Jimmy Choo” logo.

2. The following were trivial and did not influence the impression given of the bag as a whole: differences in the longitudinal strap running round the bag; the fact that there were twice as many eyelets on the Ramona bag and the eyelets were somewhat larger; the absence of the horseshoe fitting at the end of the strap; and a difference in the lozenge shapes at the end of the handles where they met the eyelets.

The Defendant argued that the poorer quality of its handbag gave rise to a different overall impression (relying on paragraph 60 of Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936). The Judge rejected this argument holding that, although a difference in quality could give rise to a different impression if the difference was discernable by comparing the design and the alleged infringement, here, the differences in quality were only really discernable when comparing the two bags side by side.

The Judge inferred that there had been copying: the likelihood that the two designs could have been arrived at independently was fanciful.

The Defendant submitted that it had a defence of innocent infringement. The Judge held that, although there was such a defence in relation to UK registered designs and UK unregistered designs (Section 24B Registered Designs Act and Section 233 Copyright Designs and Patents Act respectively), there was no such defence in relation to either Community registered or unregistered design rights. The Claimant was therefore entitled to an enquiry as to damages or an account of profits.

Infringement of UK design right

Societa Espolivi Industriali Spa v Ordnance Technologies (UK) Ltd & Ots* (Lindsay J; [2007] EWHC 2875 (Ch); 5.12.07)

This decision has been reported at [2008] RPC 12 and therefore only a very short summary is provided in relation to the design right issues.

Lindsay J held that the first Defendant had infringed the design right in the conical liner for the Lancer 2 multiple warhead system when working on a project for the Ministry of Defence under Section 226(1)(a) CDPA as articles were made to the Claimant’s design.

However, there had been no infringement in relation to a project for Raytheon. No articles had been made, so the Claimants relied upon Section 226(1)(b) CDPA which provides that: “The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes … by making a design document recording the design for the purpose of enabling such articles to be made.”

There was a question of construction: Did this section require proof of a particular state of mind in the infringer?The Judge held that the natural way of reading the words “for the purpose of enabling such articles to be made” was to relate back so as to qualify the words “by making ….” so that it was the making of the document which was required to have been for the specified purpose. He acknowledged that, from the Claimant’s point of view,such a construction was inconvenient in that it required a further subjective element (beyond “commercial purpose”).

In relation to the Raytheon project, there was no infringement because no design document of a part or of the whole of Lancer 2 warhead was made for the purpose of enabling there to be made any article to the Claimant’s design. There were some initial materials, but no suggestion that an article could have been made from them.The Judge did not consider it to be an infringement where a design document was used as a starting point for the making of further design documents which were variations upon the protected original, even where that making had been in the course of a commercial purpose. Were that to be an infringement, the words in Section 226(1)(b) “for the purpose of enabling such articles to be made” would have been redundant.



JHP Ltd v BBC Worldwide Ltd & Trustees of the Estate of Terry Nation* (Norris J; [2008] EWHC 757; 16.04.08)

The Judge held that BBC Worldwide (“BBCW”) had a complete defence to copyright infringement in that it had acquired a licence by estoppel from the estate of Terry Nation, the author of three books relating to the Daleks (the “Books”).

In 1964 and 1965, Terry Nation and Souvenir Press entered into an agreement in relation to each of the Books.The claim to infringement made by JHP (which had worked closely with Souvenir Press and had been assigned the latter’s rights in the Books in 2002) on the footing that Terry Nation was the author of the text in the Books and that it, JHP, was the exclusive licensee or alternatively the assignee of the copyright and therefore had a right capable of being infringed.

The Judge construed the agreements and held that they constituted exclusive licences to publish the particular text, despite the agreements containing the concept of reverter of the rights (rather than of termination or cessation). The concept of reverter was strongly suggestive of assignment or transfer of a property right that did not depend for its existence on the agreement which contained the reverter provision itself. However, there was no general principle that a reverter clause automatically indicated an assignment; other indicators in the agreement pointed to an exclusive licence; and there was evidence that Terry Nation would not have thought of assigning his rights at that point in his career when a number of episodes of Dr Who containing Dalek stories had been aired on BBC TV and more were planned. JHP was therefore the exclusive licensee of the right to publish the Books.

The Judge then turned to BBCW’s defence. The dispute related to ‘The Dalek Survival Guide’ published by BBCW in 2002. Prior to releasing the book, BBCW had obtained agreement from the Estate of Terry Nation to use material derived from text in which they held the copyright. Therefore the Estate was estopped from denying that it had licensed BBCW to commit what otherwise would have been an infringement. This was sufficient on the facts to give BBCW a defence to the claim under Section 101(3) CDPA (rights and remedies of exclusive licensee), even if it had been found that they had infringed JHP’s rights.

In the event that he was wrong on this point, the Judge went on to examine the case of copyright infringement and found that the case against BBCW was not made out. Prior to publication, but after some considerable time spent on writing, BBCW was made aware that JHP would not consent to use of material from the Books.Therefore, they attempted to excise all the material taken from the Books. There were some similarities left in the text, but no copying; the Judge held that in each case, the relevant passage in the Books was not an original work and therefore the apparent similarity did not justify an inference of copying. If, again, he was wrong on that point, the Judge went on to find that, had there been copying, it was not of a substantial part of the Books taken individually. In each case, the quantity was small and the significance relatively minor.Further, the most significant “copied” parts were parts on which it could not be said that Terry Nation has expended significant skill and effort as an author; they were copies or repetitions of text which he had earlier produced in the course of other work.

Distribution of Copyright Works

Peek & Cloppenburg KG V Cassina SpA (ECJ (Fourth Chamber); C-456/06; 17.04.08)

Cassina, an Italian furniture manufacturer, brought an infringement action against Peek & Cloppenburg (“P&C”), a German clothes retailer, for fitting out a customer rest area in one of its clothing shops with Le Corbusier chairs and displaying a chair in a shop window. Cassina had the exclusive right to manufacture and sell Le Corbusier furniture; P&C obtained the chairs from a separate company in Italy (where at the time they were not protected by copyright). Cassina alleged that this was an infringement of its exclusive distribution right.

At first instance the German Court ruled in favour of Cassina. P&C appealed and the appellant court made a reference to the ECJ, asking whether the concept of a distribution otherwise than through sale of an original or copy of a work, for the purpose of Article 4(1) Directive 2001/29, would include (i) making available copyright protected works to third parties for temporary use, without a transfer of ownership to the third parties; and/or (ii) exhibiting the works to the public, without granting a right to use them.

The ECJ held that Article 4(1) should be interpreted in accordance with the Copyright Treaty and the WIPO Performances and Phonograms Treaty. These Treaties link the concept of distribution exclusively to that transfer of ownership. Therefore neither (i) nor (ii) above would constitute distribution under Article 4(1). It would be for the Community legislature to amend the rules if it

Reporter’s note: We are grateful to our colleagues at Bird & Bird for their assistance with the preparation of this report: Will Alete, Céline de Andria, Nick Aries, Jennifer Bryant, Taliah Davis, Cristina Garrigues, Tim Harris and Michael Sweeney.

ECJ and CFI decisions can be found at and the reported cases marked * can be found at