(b) the third party has no defence to infringement by virtue of Article 6(1) of the Directive;
does the third party have a defence to infringement on the ground that the use complained of does not indicate trade origin (i.e. a connection in the course of trade between the goods and the trade mark proprietor)?
2. If so, is the fact that the use in question would be perceived as a badge of support, loyalty or affiliation to the trade mark proprietor a sufficient connection?
Distinctive marks vs. Descriptive signs
Procter & Gamble v. OHIM (Advocate General Jacobs; 5.04.01)
In the first appeal from the CFI to the ECJ under the CTM Regulation, A.G. Jacobs was of the opinion that the decision of the CFI ( ETMR 767) should be set aside and that the matter should be remitted to the examiner for further prosecution. The CFI had held that the application for the mark BABY-DRY in classes 16 and 25 for disposable diapers should be refused under Article 7(1)(c), thus upholding that part of the decision of the Board of Appeal ( ETMR 240).
A.G. Jacobs took the opportunity to consider the relationship between Articles 4 and 7. He described the overlap between Articles 4 and 7(1)(a) as clearly tautologous, but understandable in that the same criterion could be viewed from two angles; as a positive requirement for registration and a negative requirement for refusal. In considering the other sub-paragraphs of Article 7, A.G. Jacobs was of the opinion that the overlap between them and Article 4, although less readily understandable, had to be accepted. Further, it was sufficient for one of the absolute grounds of refusal to apply for the application to be ineligible for registration. In theory, since the proviso in Article 7(3) only applied to Articles 7(1)(b) to (d) and not to (a), it might be thought necessary to differentiate between signs which were incapable of distinguishing and marks which were devoid of any distinctive character, but in practice, the A.G. was of the opinion that if acquired distinctiveness could be established, then there must be an underlying capacity to distinguish; if not, the question would be immaterial.
A.G. Jacobs was of the opinion that the CFI, in its decision, went too far in holding that it was the intention of the legislature that signs of the kind described in Article 7(1)(c) should, by their very nature, be regarded as incapable of distinguishing. Further, Article 7(1)(c) should not be read as drafted to prevent traders from monopolising terms which properly belong in the public domain, but rather to avoid the registration of descriptive brand names for which no protection could be available. It was clear from Article 12(b) that a trade mark may include signs or indications designating characteristics of the goods or services. But from Article 7(1)(c) it was clear that a trade mark may not consist exclusively of them. Thus, since persons who had not encountered the name BABY-DRY, would not immediately and unhesitatingly think of diapers, nor when hearing it in connection with such goods, would they regard it [an] as a designation of intended purpose, the application did not necessarily fall foul of Article 7(1)(c).
Bank für Arbeit und Wirtschaft AG v. OHIM (CFI; 5.04.01)
The CFI annulled the decision of the third Board of Appeal which had refused, under Articles 7(1)(b) and (c), the application to register EASYBANK for on-line banking services, especially electronic banking services. The CFI held that the term EASYBANK was intended to give potential customers the agreeable general impression that the on-line services in question would be accessible without difficulty or effort. However, the term did not exclusively or specifically describe, for the purposes of Article 7(1)(c), the kind, quality, intended purpose, or other characteristic of the various banking services capable of being provided. Thus, the link between the term and the services was too vague and indeterminate to confer a descriptive character on EASYBANK in relation to on-line banking services. The CFI further held that, since the Board of Appeal had used its decision under Article 7(1)(c) to decided the issue under Article 7(1)(b), the decision under the latter should also be set aside.
D Green & Co (Stoke Newington) & anr v. Regalzone Ltd (Chadwick, Arden, Nourse L.JJ.; 4.5.01)
In allowing an appeal against the decision of Neuberger J. (unreported), the Court of Appeal held that there was no infringement of the mark SPORK registered under the 1938 Act in class 8 for cutlery, forks and spoons. The claimants sold a plastic utensil in the shape of a teaspoon with V-shaped cuts in the bowl forming the prongs of a fork under the mark SPORK, but claimed no monopoly in its design. The judge had found that, since the date of registration, SPORK had acquired a hybrid quality, i.e. it was understood by some (or in some contexts) as distinctive of the claimants' product, but by others (or in some contexts) as descriptive of any combined spoon/fork utensil. In these circumstances and, under section 4(1)(a) of the 1938 Act, the Court of Appeal had to decide whether use of the word SPORK on the defendant's price list would have been taken by the "average recipient" of that price list as meaning a product supplied or manufactured by the claimants. The Court of Appeal held that the answer to this question was no. The item referred to in the price list was plainly the defendant's product. The covering letter sent with the price list was from the defendant and this, together with the acquired generic or descriptive meaning of the word, meant that a reasonably well informed trade purchaser would know that he was looking at the defendant's product.
Although this disposed of the matter, Chadwick L.J. went on to consider the position under the 1994 Act. As Aldous L.J. said in Philips v. Remington  RPC 809, it did not follow that, because a mark which consisted, even exclusively, of indications which served to designate the kind or intended purpose of the goods or services was registered, all use of that mark was infringing use. The court was required to consider, in each case, whether the use complained of was infringing use having due regard, in this case, to section 11(2)(b) and the proviso. The court had to look at the whole context of the use (quoting Jacob J. with approval, TREAT  RPC 281). However if, in TREAT, Jacob J. has intended to lay down any general proposition that a defence under section 11(2)(b) was not available in the case of a semi-descriptive mark, Chadwick L.J. did not accept such a proposition. Section 11(2)(b) required the court in every case, including those in which the registered mark was semi-descriptive, to address the question of whether the use complained of was distinctive or descriptive use, viewing the question through the eyes of the average consumer. Again, for the reasons given in relation to the 1938 Act, there would be no infringement under the 1994 Act.
"Use" of a trade mark
1-800 Flowers Inc v. Phonenames Ltd (Peter Gibson, Buxton, Jonathan Parker L.JJ.; 17.05.01)
The Court of Appeal upheld the decision of Jacob J.  FSR 697. Thus, the opposition to the application to register 800-FLOWERS in respect of services consisting of the receiving and transfer of orders for flowers and floral products was successful under the 1938 Act. Under section 10, the mark did not have the requisite inherent capacity to distinguish. The application was made at a time when the use of alpha-numeric phone names was reasonably foreseeable and this application was no more than an encoded telephone number. Under section 11, use of the application would inevitably lead to the confusion. The applicant had never owned the equivalent telephone number in the UK. However, the Court of Appeal stressed that there was no general rule that registrability of a mark that takes the form of, or which closely resembles, a telephone number must necessarily be dependent upon the possession by the proprietor of that telephone number. But where the business to which the mark was attached and the receiving and transmission of orders was inherently a business conducted over the telephone, the holder of the mark was necessarily likely to cause confusion as a matter of fact if he did not possess the telephone number to which the mark made reference.
Under sections 17 and 68, the evidence did not establish actual user of the application in the UK, even to the minimal extent required in CHIPIE Trade Mark Application  IP&T 735. Telephone calls from the UK to the applicant's US telephone number and use of the applicant's web site did not involve use of the mark in the UK. Obiter, Buxton L.J. made some observations on the question of use which applied equally to the 1994 Act. Buxton L.J. suggested that the essence of the problem was to fit the factual circumstances of Internet use into substantive rules of law applying to the many and very different legal issues that the Internet affected. Therefore, there would be no one uniform rule that could be applied in all cases of Internet use e.g. the issue of "publication" in defamation cases was different to the question of "use" in this case. In his opinion, there was something inherently unrealistic in saying that A "used" his mark in the UK when all he did was to place the mark on the Internet from a location outside the UK and simply wait in the hope that someone from the UK would download it. The very idea of "use" within a certain area would seem to require some active step in that area on the part of the user. Of course, if a person in the UK sought the mark on the Internet in response to direct encouragement or advertisements by the owner of the mark, the position would be different. But, in such a case, the advertisement or encouragement in itself was likely to suffice to establish the necessary use.
LEGAL AID trade mark (The Vice Chancellor; 3.10.00)
The Legal Aid Board successfully appealed from the decision of the Hearing Officer ( CIPA 459) whereby the Board's application to register LEGAL AID as a certification mark in class 42 in respect of "legal services, conciliation services" had been refused. The question before the V.C. was limited to whether LEGAL AID indicated legal services certified by the Board in respect of "other characteristics", those characteristics being the provision of legal assistance in accordance with legal aid legislation incorporating the characteristics of limited liability. No claim was made to certifying the quality or accuracy of such services. The V.C. held that the words LEGAL AID distinguished the provision of legal services by the Board and therefore section 50 and Schedule 2 paragraph 2 of the 1994 Act was satisfied.
Toshiba Europe GmbH v. Katun Germany GmbH (Advocate General Leger, 8.2.01)
Toshiba distributes photocopiers and equipment such as spare parts for photocopiers. Katun sells spare parts and other equipment to be used with Toshiba's photocopiers. Katun used the numbers used by Toshiba (original equipment manufacturer or so-called "OEM numbers") to identify its own spare parts in its catalogues. The Landgericht Dusseldorf asked the ECJ a number of questions concerning the use by Katun and whether it was a lawful comparative advertisement under Directive 84/450/EC, as modified by Directive 97/55/EC (the "Directive").
The first question queried whether the use made by Katun actually fitted into the definition of comparative advertising. The A.G. stated that the notion of comparative advertising was to be construed broadly and that the legislator's intention was to cover all forms of comparative advertising. In the A.G.'s view, there would be comparative advertising even if the identification of the competitor was implicit. Therefore, if the reference to Toshiba's OEM numbers in Katun's advertisement was sufficient for a normally informed person to be in no doubt that it referred to Toshiba, there would be comparative advertising.
The second question related to the objectivity of the advertising. Katun's advertisement unequivocally intended to state that its spare parts were identical to and interchangeable with Toshiba's. The A.G. was of the opinion that an implicit comparison could be objective in the sense of Article 3 bis (1)(c) of the Directive, for example, the price and use of a product were compared and the comparison allowed easy identification and verification of the data. However, an advertisement, such as Katun's, which mentioned Katun's reference numbers side by side with Toshiba's OEM numbers, with the aim of identifying the former, but without any precision as to the respective characteristics of the products, was not an objective comparison. The comparative advertising presented Katun's products as being of the same quality at Toshiba's, something which was not a verifiable characteristic and therefore it was not objective.
A further question related to the meaning of "distinctive signs". In order to avoid parasitic acts, the A.G. was of the opinion that the phrase should be construed broadly and could not be reduced to mean "trade mark" or "trade name". For instance, a shape or colour used, but not protected, by an economic operator could be a distinctive sign. Therefore, the A.G. was of the opinion that Toshiba's OEM numbers, as identification numbers, could be distinctive signs within the meaning of Article 3 bis (1) (g) of the Directive, if they allowed a normally informed person to identify the economic operator in question.
The final question sought to determine the criteria to be used by the national judge when considering whether the advertiser unduly profited from the notoriety of its competitor. In the A.G.'s view, the criterion was one of necessity. In this case, the judge would have to verify whether Katun's use of Toshiba's OEM numbers against it own, without any comment on the products' characteristics, was necessary to inform consumers of the characteristics of the compared equipment. The judge would have to determine whether there were no other means of describing Katun's equipment. If none, even though the use of a competitor's numbering system would profit from the notoriety of that competitor, it could be lawfully used. However, the judge should not take into consideration the mere fact that if Katun was unable to use Toshiba's OEM numbers, distribution of its products would be more difficult.
(Reporter's note: I am grateful to my colleague Estelle Derclaye for her assistance in preparing the summary of this decision, the original of which is not yet available in English).
Tyco European Metal Framing Ltd v. New Systems Ltd (Laddie J.; BL C/01/01)