Appeals from Registry decisions (OHIM and UK)

Ref no.  T-99/01*
Application (and where applicable, earlier mark)  

MYSTERY (in stylised form) – non-alcoholic beverages with the exception of non-alcoholic beer, 32


MIXERY – beers and beverages containing beer, 32

Comment Although the Board of Appeal had incorrectly held that the opponent’s mark had a high degree of distinctiveness, the CFI dismissed the appeal from its decision and the opponent succeeded under Art. 8(1)(b).  There was “great similarity” between the goods. The marks could be distinguished visually, but since the goods in question were consumed after being ordered orally, the aural similarity was in itself sufficient to give rise to the likelihood of confusion.

Ref no. T-128/01*
Application (and where applicable, earlier mark) Representation of a vehicle grille - vehicles, apparatus for locomotion by land, parts thereof, 12
Comment The CFI annulled the decision of OHIM which had refused the application under Art. 7(1)(b) for the goods listed in this report.  Grilles were an essential part of the look of vehicles and a means of differentiating between models.  The fact that they also served a functional purpose had no bearing on the question of distinctiveness.  The CFI found this shape to be unusual and one which could not be regarded as altogether commonplace.  This was sufficient to overcome the minimum degree of distinctiveness required under Art 7(1)(b).

Ref no. T-194/01*
Application (and where applicable, earlier mark) 3-D, irregular ovoid shaped tablet with speckles - dishwasher preparations, 3
Comment The CFI dismissed the appeal from OHIM. The application was refused under Art. 7(1)(b).  Held - (1) Art. 7(1)(b) does not distinguish between 3-D and other types of marks, but the public do not necessarily instantly recognise a sign comprising the get-up of the product itself as a mark; (2) the burden is on the applicant to prove such signs are distinctive, not an OHIM to prove they are not; (3) a consideration of the overall impression of the sign was not incompatible with an examination of each individual feature in turn.

Ref no. T-237/01*
Application (and where applicable, earlier mark) BSS - ophthalmic pharmaceutical preparations, 5
Comment The CFI upheld the decision of the Cancellation Division at OHIM.  The mark was invalid under Art. 7(1)(d) as the evidence submitted by the intervenor demonstrated that BSS was regarded by the relevant scientific community as a generic term (Merz & Krell [2001] ECR I-6959 followed).  Further, the mark had not acquired distinctiveness through use.  The evidence on policing the mark, turnover and advertising spend did not prove that the proprietor had created an awareness among the target public that BSS was a trade mark.

Ref no.  O/399/02*
Application (and where applicable, earlier mark)  HPMC-OPHTAL – pharmaceutical products, 3
Comment The appointed person D. Kitchin Q.C. dismissed the appeal from the Registry.  The opposition under ss. 3(1)(a), (b) and (c) failed.  Held - HPMC is a well known acronym for a generic pharmaceutical name and would not be registrable on its own, but the mark in its entirety was an invented word.  The perceptible differences between the mark and the combination of HPMC and the word ophthalmology (it was argued that OPHTAL referred to this) rendered the mark capable of distinguishing and conferred distinctive character.  Further, it was not the usual way of designating the goods in issue.

Ref no.  O/400/02*
Application (and where applicable, earlier mark)  

CAMORIS – soaps, perfumery, brushes, 3, 21

AVON COMORES – cosmetics, soaps, 3

Comment The appointed person D. Kitchin Q.C. dismissed the appeal from the Registry. The opposition under s. 5(2) succeeded since there was a likelihood of confusion between the marks.  On the evidence, it was reasonable to suppose that the average consumer would see AVON as the house mark and COMORES as denoting a particular brand within that stable.  This was a relevant factor when comparing the marks and assessing the overall impression they created.

Ref no.  O/402/02*
Application (and where applicable, earlier mark)  3-D representation of a capsule with a band of colour (yellow or blue) on either side of the centre line – anti-inflammatory analgesics, 5
Comment The appointed person Prof. Annand upheld the decision to refuse the application under s. 3(1)(b) (Henkel v. OHIM [2002] ETMR 25 followed).  The mark lacked distinctive character, even assuming that the applicant was right in that it was unusual in the pharmaceutical industry.  The interested public would see it as no more than a banal capsule shape bearing bands which could signify dosage or merely be decoration.

Ref no.  O/426/02*
Application (and where applicable, earlier mark)  

TK. PATROL – clothing, 25

WORLD PATROL – clothing, 25

Comment The appointed person D. Kitchin Q.C. dismissed the appeal from the Registry – the opposition under s. 5(2) succeeded.

Ref no. O/433/02*
Application (and where applicable, earlier mark)  

PC CLEAR – non-alcoholic beverages, 32

PC (stylised) – non-alcoholic beverages, 32

Comment The appointed person S. Thorley Q.C. allowed the appeal, set aside the decision and remitted the matter back to be heard by a different hearing officer.  In coming to a decision under s. 5(2), Mr Salthouse had relied upon Mr Thorley’s decision in Bud [2000] RPC 747 re s. 46(2) but he had given the parties no opportunity to be heard on this point. It therefore constituted a procedural failing under rule 54.

Nettec Solutions Ltd v. Planet Epos Ltd* (Appointed Person Prof. Annand; 30.08.02; C/373/02)

The appointed person allowed the appeal by the applicant for the trade mark POINT FOUR in classes 9 and 42.  In doing so, she held that the Registrar is under a duty to implement Article 13 of the Directive, which has not found its way into the Act, and which provides that where grounds for refusal of a trade mark application relate to only some of the goods or services in the specification, refusal shall cover those good or services only.  However, the Registrar is permitted under sections 37(3), (4) and 40(1) to direct the applicant to amend its specification by deletion or pulling out certain goods or services from within a wide term.  

The facts of the case were as follows.  Shortly before the opposition to the trade mark was due to be heard, the applicant lodged a Form TM21, amending its specification by restricting the specified goods and services.  It became apparent at the hearing, which the applicant did not attend, that the amendments were deficient in that it was not clear what restrictions were intended due to the arrangements of colons and semi-colons.  Nevertheless, in his decision, Dr Trott revised the specification and in doing so exceeded his powers contrary to sections 39(1) and (2) by widening the specification.  Further, contrary to rule 54, neither the applicant nor the opponent were consulted before the specification was revised.  In consequence, the appointed person set his decision aside and remitted the matter back to the Registrar.

As is standard practice, Dr Trott required the applicant to lodge a further Form TM21 within a month of his decision before the application would be allowed to proceed.  The applicant was late in lodging its TM21.  Therefore the issue was whether Dr Trott’s decision could be remitted to the Registrar with any direction other than a direction to refuse the application.  Relevant to this issue was the fact that the opponent had appealed against Dr Trott’s decision.  The appointed person held that the lodging of the notice of appeal suspended the effect of Dr Trott’s decision pending the outcome of the appeal by virtue of the Registrar’s de facto practice.  Therefore, the applicant did not need to comply with the requirement to file a TM21 once the notice of appeal had been lodged.

Robert McBride’s application* (Appointed Person G. Hobbs Q.C.; 07.10.02; O/392/02)

The appointed person dismissed the appeal from the decision of Mr C. Hamilton.  The application to register two 3-D signs for cleaning preparations etc. in tablet form in class 3 failed.  The signs depicted tablets made of two layers, one marked white and the other yellow.  

The appointed person held that although the presence of colour was identified, it did not do so clearly and unambiguously and therefore failed to achieve the degree of precision required for the allocation of a filing date under sections 32(2) and 33(1) (Ty Nant Spring Water [2000] RPC 55 followed, Orange Personal Communications (CTM application) [1998] ETMR 460 noted).  This deficiency was resolved by the applicant at a later date when the shade of yellow was identified by reference to a Pantone number.  This did not have retrospective effect; the date of a limitation being added under section 13 being the date on which it is entered in the Register under rule 24.  Finally, rule 5(3) which states that an applicant shall specify the colour where colour is claimed as an element of the mark, does not require the Registrar to disregard the existence of an ill-defined colour claim when determining whether a representation is clear and unambiguous.

Byford v. Oliver & Dawson (Laddie J.; 25.2.03)

Laddie J. allowed the appeal from the decision of the Registrar.  The hearing officer had dismissed the application for a declaration of invalidity in respect of the trade mark SAXON registered in classes 9, 14 and 16 in respect of a wide range of products and services including records and the presentation of live performances.

Laddie J. held that the use of the word SAXON alone by the proprietors in relation to heavy metal bands or on records would be liable to be prevented by the applicant’s band, Saxon, by way of passing off.  The proprietors’ historical connection with the original band would be no defence.  Therefore, the application succeeded under section 5(4)(a).  Further, Laddie J. held that the application for SAXON had been made in bad faith under section 3(6).  The proprietors had no existing title to the mark and had acquired the mark for the purpose of interfering with and had interfered with the rights of others, in particular, the applicant’s band, who had title to the mark and in the case of the applicant, had consistently used the mark.

In coming to this conclusion, Laddie J. held that the hearing officer’s views as to ownership of the name SAXON and the goodwill associated with it were not correct.  The applicant and the proprietors had originally formed a partnership at will and used the name SAXON for the band.  Under a partnership at will, the name and goodwill were assets of the partnership in which all the partners had an interest.  On dissolution of the partnership, the partners were entitled to ask for the assets to be realised and divided between them in accordance with their respective shares.  This was not the same as ownership of the assets themselves.  Applying these principles to the facts, Laddie J. noted that the first proprietor had left the band 12 years prior to applying for the trade mark.  Further, since leaving the band, he had not performed in another band under the name SAXON alone.  He could therefore be taken to have abandoned his interest or share of the original partnership’s trading style, name and goodwill.  Even had he not abandoned his interest, he could not be said to be the owner of the name and goodwill generated by the original band.  Laddie J. went on to hold that the position in relation to the second proprietor, although less clear cut on the issue of abandonment, was the same.  In consequence, the application for the declaration of invalidity succeeded under section 5(4)(a).

In so holding, Laddie J. noted that, for the prohibition in section 5(4)(a) to bite, all that needed to be shown was that, at the time of the application to register, the normal use of the mark by the proprietor would be liable to be prevented by passing off proceedings brought by someone else.  It could well be that, in most cases, this would only arise when the other party had commenced using his mark before the proprietor (as the hearing officer had held), but this was not inevitably so and, indeed, the section did not require it to be so.  The fact that the convenient title “proprietor of an earlier mark” was used to designate the other party did not limit the scope of the section.

Intel Corp v. Kirpal Singh Sihra (Patten J.;  24.1.03)

Patten J. allowed the appeal against a decision of the hearing officer in respect of section 5(3). By doing so the registration for INTEL-PLAY as a trade mark was refused on the basis that use of this mark would without due cause take advantage of and be detrimental to the character and repute of the opponent’s INTEL mark. In Patten J.’s view, the INTEL mark had acquired both the distinctive character and reputation necessary under section 5(3). He concluded that section 5(3) concentrates not on the goods or services to be sold under the new mark, but rather on the distinctiveness and reputation of the mark itself. 

In 1995 the applicant sought to register INTEL-PLAY in respect of “hand held constructional toys being puzzles”. Intel, the US corporation, internationally known for its microprocessors opposed the registration of the mark INTEL-PLAY on the basis of sections 5(2)(b) (similar/dissimilar goods likelihood of confusion), 5(3) (dissimilar goods but unfair advantage) and 5(4) (passing off).

Under section 5(2)(b), the Hearing Officer had considered that by limiting the category of goods to “interlocks being constructional toy puzzles” there may be a possibility of the public bringing to mind the Opponent’s mark, but not such that would be confusion. Patten J. held that the Hearing Officer had not been obviously wrong to find that there was not sufficient similarity for the purposes of this section between a computer or electronic game featuring some sort of constructional puzzle and a non- electronic hand held constructional puzzle. However the rejection under section 5(2)(b) did not determine the issue under section 5(3). Patten J. found that there was a real prospect of actual damage to the INTEL mark if the registration for INTEL-PLAY proceeded and allowed the appeal in respect of this section. 

Vedial SA v. OHIM* (CFI, Fourth Chamber; 12.12.02; T-110/01) (decision not in English)

The CFI upheld OHIM’s decision rejecting the opposition based on the French mark “SAINT-HUBERT 41” to the registration of the stylised mark “HUBERT”  in respect of certain products including milk and other diary products in Class 29 and sauces and vinegar in Class 30. 

OHIM had rejected the opposition on the basis that there was no likelihood of confusion of the origin of the goods by the relevant section of the public (France) under Article 8(1)(b) of the Regulation 40/94. Having considered the similarities and differences of nature, destination, use of the goods and services covered by the marks, the CFI found that some of the products in question were similar enough to cause confusion in the mind of the consumer if they were going to be offered to consumers under similar marks. The Court, when assessing the visual, phonetic and conceptual similarities between the marks, concluded that the trade marks involved were not sufficiently similar. Therefore the dissimilarity of the marks overcame the similarity of the products. Therefore, overall, there was no real risk of confusion in the minds of the relevant public as to the commercial origin of the products and the opposition was dismissed.   

Reference to the ECJ:  Genuine Use

Ansul BV v. Ajax Brandbeveiliging BV* (ECJ; C-40/01; 11.03.02)

In summary, the facts of this case are as follows:  Ansul and Ajax are both Dutch entities operating in the fire protection market.  Ajax is a subsidiary of the German company, Minimax GmbH.  The history of the trade mark MINIMAX is as follows.  After World War II, the rights in the trade mark were appropriated “as goods of the enemy” and became divided between the predecessor of Ansul (in The Netherlands) and, in Germany, Minimax GmbH.  In 1971, Ansul registered MINIMAX in the Benelux for, inter alia, fire extinguishers.  In 1992, Ajax became the owner of and used the composite mark MINIMAX in The Netherlands.  In 1995, Ajax applied to revoke Ansul’s 1971 registration for non-use.  The Hoge Raad referred various questions to the ECJ on the issue of genuine use and, in particular, on the question of whether Ansul’s activities could qualify as true exploitation of the trade mark (in the sense of Article 12).

The ECJ held as follows.

1.  The concept of “genuine use” in Articles 10 and 12 had to be interpreted uniformly in all member states.  

2.  The Paris Convention was silent on the definition of “genuine use” and therefore its meaning had to be determined on the basis of the Directive alone. 

3.  “Genuine use” means actual use and not token use (see the eighth recital).  Such use must be consistent with the essential function of a trade mark.   

4.  Thus, it follows, that “genuine use” entails use of the mark in relation to goods or services on the market or about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns. Such use may be either by the trade mark proprietor or, as envisaged in Article 10(3), by a third party with authority to use the mark.  

5.  When assessing whether there has been “genuine use” of the trade mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted in the economic sector concerned.   Thus, consideration may be given to the nature of the goods or service, the characteristics of the market and the scale and frequency of use of the mark. Use of the mark need not, therefore, always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or services or the corresponding market.  

6.  The fact that a mark that is not used for goods newly available on the market but for goods that were sold in the past does not mean that its use is not genuine, if the proprietor makes actual use of the same mark for component parts that are integral to the make-up or structure of such goods, or for goods or services directly connected with the goods previously sold and intended to meet the needs of customers of those goods. 

7.  The national court, not the ECJ, should decide the issues of fact. 


USP Strategies plc v. London General Holdings Ltd (Judge Weeks Q.C.; 8.11.02)

Judge Weeks held that the defendant (LGH) was in breach of a confidentiality agreement by disclosing a document to a third party.  By giving a copy of the document to the same third party, LGH had also infringed the claimant’s (USP’s) copyright.  

USP’s predecessor in title, Unicorn, by its solicitors, drafted the document for the purposes of tendering to Scottish Power.  Unicorn’s competitor, LGH, was involved in this tender.  Before handing a copy of the draft document to LGH, a confidentiality agreement was signed between Unicorn and LGH.  The document then went through a number of significant changes such that, although USP were the owners of the copyright in the original draft, USP, Scottish Power and possibly LGH were all joint owners in the final document.  

Judge Weeks held that the confidentiality agreement did not apply just to the first draft of the document.  By publication of the final document to a third party, LGH had revealed USP’s confidential information contained in the first draft in breach of the agreement.  Further, the final document was a substantial copy of the original draft and therefore LGH had infringed USP’s copyright.  Judge Weeks held that USP had not given LGH an implied licence to use the final document.  Further, whatever the custom might be in relation to using legal documents as precedents, there was no custom in the business world enabling one company to use copyright documents, for which another company has paid, without the first company’s permission.

Note 1:  The reader’s attention is drawn to the following reported cases relating to confidential information which have not been included in CIPA:

1.  Elvee Ltd v. Taylor  (Court of Appeal; [2002] FSR 738) – Search and seizure order made against ex-employees in the Queens Bench Division; principles relevant to such orders set out, particularly that they should be made in the Chancery Division. 

2.  Admiral Management Services Ltd v. Para-Pro-Tect Europe Ltd (Burton J.; [2002] FSR 914) – Search and seizure order made against ex-employees.  Claim settled by consent.  Sums referred to in consent order, including costs incurred before proceedings commenced, recoverable as costs, not damages. 

3.  Ashworth Hospital Authority v. MGN Ltd (House of Lords; [2002] 1 WLR 2033) – Claimant successfully sought, by way of a Norwich Pharmacal order, the identity of an intermediary who had passed information to the press from the hospital’s files.  Norwich Pharmacal jurisdiction applied where a person had become involved in the wrongful act of another (whether civil or criminal). 

Note 2:  Websites at which those decisions marked with an asterisk can be found are as follows:

I am grateful to my colleague Cristina Garrigues from Bird & Bird for the summaries of the INTEL and HUBERT decisions.