Mag Instrument Inc v. OHIM* (Opinion of A.G. Ruiz-Jarabo Colomer; C-136/02; 16.3.04)
Mag applied to register a series of 3-D torch shapes in Classes 9 and 11 for apparatus for lighting, in particular torches. The OHIM refused the application under Articles 7(1)(b) and (c) and the CFI, under Article 7(1)(b) only, dismissed the appeal (Case T-88/00). A.G. Colomer proposed that the ECJ dismiss the appeal. In commenting upon the relevant ground of refusal, A.G. Colomer preferred Article 7(1)(c) because, as stated in his opinion in Henkel v. OHIM (Cases C-456/01 and C-457/01), it allowed a consideration of the future when regarding the suitability of a shape as a trade mark.
By its first ground of appeal, Mag submitted that the CFI had wrongly appraised the question of distinctiveness. The CFI had stated that the signs in question were “variants of a common torch shape”. Mag submitted that if the shapes were “variants”, there were differences or modifications between the application and other goods on the market which warranted registration. A.G. Colomer rejected this submission. In stating that the 3-D signs were “variants” the CFI was in fact saying that such signs were no more than manifestations of a common shape. The test of “any perceptible difference” certainly comprised any difference however small. However, that minimal test did not suffice to guarantee that the mark fulfilled its identificatory function (see e.g. his own opinion in Postkantoor (Case C-363/99) and the opinion of A.G. Jacobs in Doublemint (Case C‑191/01)).
Mag further submitted that the CFI had not taken account of the evidence, including an expert’s opinion. Again, A.G. Colomer rejected this ground of appeal. Since the judgment in Gut Springenheide and Tusky (Case C-210/96), the ECJ had adopted a uniform criterion for determining distinctiveness based on the presumed expectation of an average consumer (his emphasis). If a sign’s capacity to distinguish could be determined on the basis of such presumption, it would be unnecessary to undertake further investigations. However, it did not relieve the Examiner or the Court of the need to exercise their own discretion based on the yardstick of the average consumer. Such a test did not entail an actual comparison of the application with those signs in current use, but an ideal model composed of elements which naturally conveyed to the mind an image of e.g. the shape of the product. It was by reference to that model, founded on a presumption, albeit objective, that assessment of the distinctiveness of the sign had to be undertaken. Only in the event of doubt or in specialised areas should outside evidence such as studies or opinions be taken into consideration.
OHIM v. Zapf Creation AG*(Opinion of A.G. Jacobs; C-498/01; 19.02.03)
A.G. Jacobs was of the opinion that NEW BORN BABY should not be registered as a CTM because it was descriptive of dolls to play with and accessories for such dolls in the form of playthings (Class 28) under Article 7(1)(c). He recommended that the decision of the CFI (Case T-140/00) to allow the registration should be set aside. Relevant to this case under Article 7(1)(c) were “trade marks which consist exclusively of signs or indications which may serve, in trade, to designate …… other characteristics of the goods or service”. It was an essential characteristic of many toys, including dolls, that they represent something else and that, where an essential characteristic of a product was to represent something else, a term consisting exclusively of elements which designated that something else should not be registered as a trade mark. A.G. Jacobs disagreed with the CFI, in that he was of the opinion that it was not necessary for purchasers of the dolls to conflate what was represented by the product with the product which represented it in order for a term to be descriptive. In addition, NEW BORN BABY was descriptive of accessories for dolls. The intended use of an accessory was, by definition, linked to the product itself and a term which was used in trade to designate that product could also be used in trade to designate the intended purpose of the accessory. For example, “the word shoe is descriptive in relation to shoes; it is also descriptive in relation to shoe brushes or shoe trees or shoe polish and, pursuant to the aim of Article 7(1)(c), must be freely available to be used by all in relation to such items”. This opinion did not conflict with the judgments in Ellos (Case T-219/00) and Carcard (Case T-356/00) which concerned unrelated categories of products. In those situations, it could be valid to say that a sign’s descriptiveness should be assessed separately for each unrelated category of products, however, the same approach did not apply where one category of goods was expressly stated to consist of accessories for those in another category.
SAT.1 SatellitenFernsehen GmbH v. OHIM* (Opinion of A.G. Jacobs; C-329/02; 11.03.04)
A.G. Jacobs was of the opinion that the CFI’s judgment (Case T-323/00), in so far as it dismissed the application for the registration of “SAT.2” on the ground that it lacked distinctiveness for services relating to satellite broadcasting in Class 35 under Article 7(1)(b), should be quashed. Whilst the CFI was correct that it might be helpful, as an intermediate stage in the overall assessment of a compound mark, to look at each of the component parts in turn, it was more important that the nature of each component was merely a factor to be taken into consideration when assessing the whole mark. The fact that a mark consisted exclusively of elements which individually lacked distinctiveness in relation to the relevant products could not give rise to an assumption that the mark as a whole lacked distinctiveness which could be rebutted only by evidence of an additional factor and which, in absence of such evidence, rendered unnecessary any assessment of the mark as a whole. Separate examination of the whole mark was always required and the CFI failed to carry out that examination. In fact, SAT.2 was not devoid of distinctive character (in part because the presence of the numerical identifier was clearly designed to ensure distinctiveness). A.G. Jacobs also considered whether the aim of Article 7(1)(b) was to keep signs which lacked distinctiveness free for general use (as had already been held in Windsurfing Chiemsee (Cases C-108/97 and C-109/97) in relation to Article 7(1)(c)). He was of the opinion that this idea could not be transposed without qualification into Article 7(1)(b) and that there was no reason why signs which simply lacked distinctive character should be kept free for general use unless the signs themselves also had some close relationship with the relevant products.
Revocation for Non‑use
De Rigo SpA v. Mahtani*(Appointed Person R. Arnold Q.C.; O/394/03; 24.11.03)
Ms Mahtani was the proprietor of the mark POLICE registered in Class 3 for perfumes, cosmetics, soaps, etc. De Rigo SpA applied to revoke the mark for non-use under Section 46. Before the Hearing Officer, the application was successful. He held that Ms Mahtani had not established genuine use of the mark. Mr Arnold allowed the appeal to the extent of setting aside the order for total revocation. He ordered that the mark be revoked for all goods save eau de toilette, deodorants for men and shampoo.
There were two grounds for appeal: The Hearing Officer had misdirected himself in holding that the size of the undertaking was irrelevant and, secondly, that in some markets, use of the mark may have to be quantitatively significant for there to have been genuine use. In coming to his decision, Mr Arnold held that he was bound to apply Ansul BV v. Ajax Brandbeveiling BV (Case C-40/01;  RPC 40) as best he could whilst respectfully agreeing with Jacob L.J. (as he now is) that Ansul does not render the answers to questions 3 and 4 of the reference in Laboratorie De La Mer acte claire. Mr Arnold held that on the first point of appeal, the size of the proprietor’s undertaking was one of the circumstances which could be relevant to establishing whether the commercial exploitation of the marks was real. In relation to the second ground of appeal, Mr Arnold held that the key question posed by the ECJ in Ansul (paras 37-39) was whether the use of the mark was real i.e. was the purpose of the use to create or maintain a market for goods or services under the mark? In assessing the genuineness of any use, regard had to be made to all relevant factors and circumstances and, in particular, (but without limitation) the nature of the goods or services, the characteristics of the market for those goods or services and the scale and frequency of the use. It followed that the extent of the use was a relevant consideration and, in a borderline case, it could be an important factor. However, in his judgment, this did not mean that use which would otherwise qualify as genuine could fail to be genuine merely because it was on a small scale. On the facts he held that although the proprietor’s use on certain goods was very modest, it was neither bogus nor token and was, indeed, genuine. In commenting on the striking fact that the Hearing Officer concluded that the use of the mark would qualify as bona fide under the 1938 Act but did not qualify as genuine use under the 1994 Act, he acknowledged that such a result was a possibility but could see nothing in the facts of this case that, on a proper reading of Ansul,would lead to that conclusion.
Compass Publishing BV v. Compass Logistics Ltd*(Laddie J.;  EWHC 520 (Ch); 24.3.04)
Compass Publishing succeeded in its claim of trade mark infringement in relation to both its CTM for COMPASS registered in Classes 35 for business consultancy and 42 for professional consultancy and its UK trade mark for COMPASS registered in Class 42 for computer systems and data processing. Only the decision in relation to the CTM is reported here.
Laddie J. held that the defendant used the word COMPASS alone and that such use was more than de minimis. There was therefore infringement under Article 9.1(a) of the Regulation. Following LTJ Diffusion v. Sadas Vertbaudet (Case C-291/00;  ETMR 83), he held that COMPASS LOGISTICS was not identical to the mark COMPASS, but that there was a likelihood of confusion between the two for the purposes of Article 9(1)(b), despite the fact that there was no suggestion that there had been any confusion in the market place.
The defendant attacked the validity of the CTM on the basis that, at the relevant date, it had acquired protectable goodwill in relation to the use of COMPASS LOGISTICS for specialist consultancy services relating to logistics. Consequently, the CTM should be declared invalid to the extent that it covered any field of business consultancy, particularly relating to logistics, where use of COMPASS would cause confusion with COMPASS LOGISTICS. This raised three points of law (see underlined phrases in Article 8(4) set out below):
“Upon opposition by the proprietor of a non‑registered trade mark or of another sign … of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign,
(a) rights to that sign were acquired prior to the date of application for registration of the [CTM] …;
(b) that sign confers on its proprietor the right to prohibit the use of subsequent trade marks”
i. Laddie J. did not accept that, as there was no such thing as a “proprietor” of an unregistered trade mark in the UK, the defendant had no locus to invoke Article 8(4). The fallacy was to assume that the Regulation was drafted with common law jurisprudence in mind. There was nothing to suggest that it was. The Regulation had to be construed purposefully to have the same effect in all Member States. Therefore, a trader who had a reputation protectable by passing off was to be treated as a proprietor of the relevant rights.
ii. In a closely allied point, Laddie J. did not accept the claimant’s submission that Article 8(4) did not apply since, in passing off actions, the injunction granted was normally not absolute.
iii. Laddie J. held that a mark should be considered as having “mere local significance” if its geographical spread was restricted to substantially less than the whole of the EU and that, from the perspective of the Community market in the services or goods in question, the mark was of little significance. Laddie J. was aware that this definition was imprecise, however, that was inevitable.
On the facts, Laddie J. held that the defendant had, at the end of the relevant period, built up a reputation in a small area of the logistics consultancy market among a small number of potential customers. In these circumstances, the defendant’s passing off rights were categorised as of mere local significance. It followed that the attack on the validity of the CTM failed (although the attack on one of the UK registrations under Section 5(4)(a) was successful).
IBM Corporation & Anr v. Web-Sphere Ltd & Ors* (Lewison J.;  EWHC 529 (Ch); 17.3.04)
IBM successfully brought proceedings for infringement of their CTM, WEBSPHERE, registered in Classes 9, 38 and 42 for, inter alia, computer software and computer software for website development, electronic mail, computer-aided transmission of data and services for developing and maintaining web sites. The defendant offered domain name registrations, domain name hosting, website hosting and several other services regarding the Internet. It also owned three Internet addresses www.web-sphere.com; www.web-sphere.net and www.web-sphere.org. Lewison J. held that the marks were identical under Article 9(1)(a) of the Regulation, the hyphen being an insignificant difference which would go unnoticed by the average consumer. The Judge held that if he was wrong, there would be infringement under Article 9(1)(b).
The defendant could not rely on the use of the own name defence as the name Web-Sphere did not exist before IBM launched its WEBSPHERE products or before the CTM application was filed. Further, there was no evidence that before changing its name to Web-Sphere, the defendant conducted any trade mark searches. It was difficult to avoid the inference that the name had been deliberately chosen to take advantage of IBM’s reputation and goodwill. The attack on the validity of the mark also failed. The mark was an invented word which, when taken as a whole, had no recognisable meaning and was distinctive.
IBM’s claim to malicious falsehood failed. The defendant had distributed a couple of leaflets amongst IBM customers complaining that:
(1) IBM’s mark had been improperly registered and opposition procedures had not been complied with;
(2) IBM had not replied to the defendant’s claim that Web-Sphere were the lawful owners of the mark; and
(3) IBM’s customers could be liable in damages to Web-Sphere if so ordered by a court.
Lewison J. held that the third statement meant that customers who had bought and used IBM’s WEBSPHERE products would be liable. Having come to that conclusion, it and the other statements were false. Furthermore, the statements were made maliciously. They were designed to sting IBM into action and were designed to injure IBM. However, the claim failed because there was no damage. It does not seem likely (as opposed to possible) that any of IBM’ customers were actually diverted by the leaflet.
Reckitt Benkiser UK v. Home Pairfum Ltd & Ors(Laddie J.;  EWHC 302 (Pat); C/17/04; 13.2.04)
In this interim application in an action for trade mark and design infringement, the claimant unsuccessfully applied to have the counterclaim, insofar as it related to threats, struck out. The defendants were also unsuccessful in their application to join Laytons, the claimant’s solicitors, as Part 20 defendants to their threats counterclaim.
Laddie J. highlighted the obvious tension between the sensible “talk first” policy of the CPR and the “sue first” policy encouraged by the threats provisions in the legislation. The claimant’s strike out application was based, in part, on this point in that it would send out a message to the IP community that pointless threats proceedings would not be allowed. As Laddie J. put it, at first blush, this appeared a surprising submission, namely that the Court could use its case management powers under the CPR to strike out a right bestowed on a party by the legislator. However, the Court of Appeal in Wallis v. Valentine  EWCA (Civ) 1034,  EMLR 8 had held otherwise in cases where there was an abuse of process. However, the striking out of a valid claim was the last option. If the abuse could be addressed by a less draconian course, it should be.
On the facts of this case, Laddie J. accepted the claimant’s submission that the potential benefits to the defendants of pursing the counterclaim were small. Damages, if recovered, would be negligible. However, it was not inevitable that the defendants would fail to obtain an injunction. In the circumstances, there was no justification for striking out the claim. There was no abuse of the system and the need to strike out was not supported by the overriding objective since the threats counterclaim would largely repeat issues which would be covered in the main issues in the action and would add no more than a few minutes to the duration of the trial. Under the Court’s case management powers, however, Laddie J. refused to join Laytons as Part 20 defendants. The only real purpose of the attempted joinder was to retaliate (which was not unobjectionable) and to make Laytons and their relationship with the claimant uncomfortable. The latter was an illegitimate purpose of the counterclaim.
Sir Robert McAlpine Ltd v Alfred McAlpine plc*(Mann J.;  EWHC 630 (Ch); 31 March 2004)
Robert McAlpine Ltd (“Robert”) and Alfred McAlpine plc (“Alfred”) came into existence as the result of a family business being split in 1935. The split was essentially geographical – both companies carried out construction but Alfred was to trade in certain parts of the UK and Robert would trade elsewhere. By 1983 there was an overlap of geographical activity and the companies co-existed using the forenames to distinguish each other. In October 2003, however, Alfred sought to re-brand itself by dropping the “Alfred” forename and trading under the name “McAlpine” alone. Robert sued Alfred for passing off on the ground that by using the name “McAlpine” without the distinguishing prefix “Alfred” there was a misrepresentation that the services offered were those of or associated with Robert or, alternatively, that there was only one owner of the reputation and goodwill attaching to the “McAlpine” name.
Mann J concluded that the use of the word “McAlpines” or “McAlpine” was capable of referring to Robert, the goodwill in “McAlpine[s]” being jointly owned and therefore capable of referring to both parties in the absence of an appropriate separate identifier. Alfred’s use of “McAlpine” without the word “Alfred” as a distinguisher amounted to a misrepresentation in relation to the relevant activities (the commercial area of the provision of construction, civil engineering, Private Finance Initiative, property development and capital projects services ancillary and/or complementary thereto) because it was capable of referring to Robert, but was not, when used by Alfred, referring to Robert’s business.
Alfred argued that the relevant public would be professionals in the construction industry who knew of the existence of the two McAlpine companies and therefore would not be confused. However, Mann J considered that a person who corrects himself or is corrected by others is still misrepresented to. Moreover, members of the general public who were not aware of the distinction between the two companies would be encouraged to believe there was only one McAlpine.
The case did not manifest conventional damage in the sense of diversion of business from one company to another due to a misrepresentation that A’s goods or services are B’s. However, the Judge accepted Robert’s argument that there was a real risk that it would suffer damage via: (i) loss of business due to the erroneous association with Alfred in the mind of a customer who had views about McAlpine (for example, due to adverse publicity); or (ii) a general risk to Robert’s reputation where Alfred did something attracting bad publicity which rubbed off on Robert due a false association with Alfred. Injurious association - the possibility of the tarnishing of the McAlpine name - could constitute damage for the purposes of passing off if the risk was sufficiently great. There was, in this case, a sufficiently high risk of such damage in the modern commercial world. A further head of damage was that Alfred might obtain work it would not otherwise get due to the exploitation of the joint reputation built into the name “McAlpine”. Damage to goodwill could occur where someone “squatted” on another’s goodwill, compromising the owner’s exclusive rights (Irvine v Talksport  1 WLR 2355). In a case of joint ownership of goodwill, the more appropriate metaphor would be elbowing out or moving over and in this case Alfred was depriving Robert of some of the value of the name and blurring or diminishing Robert’s rights.
Mann J found that passing off had been established and granted an injunction against Alfred.
1) Boehringer Ingelheim KG (2) Boehringer Ingelheim Pharma GmbH & Co KG v. Swingward Ltd : (1) Boehringer Ingelheim KG (2) Boehringer Ingelheim Pharma GmbH & Co KG (3) Boehringer Ingelheim Ltd v. Dowelhurst Ltd : Glaxo Group Ltd v. Swingward Ltd : Glaxo Group Ltd v. Dowelhurst Ltd : (1) SmithKline Beecham PLC (2) Beecham Group PLC (3) SmithKline & French Laboratories Ltd v Dowelhurst Ltd : Eli Lilly & Co v. Dowelhurst Ltd* (Kennedy, Clarke and Jacob LLJ; 05.03.04)
The Court of Appeal, on appeal from the Judgments of Mr Justice Laddie of 28 February 2000 and 6 February 2003 (as to the consequences of an ECJ decision of 23 April 2002), in actions for infringement of registered trade marks for importing pharmaceuticals from elsewhere in the EU and restickering (relabelling) and reboxing (repackaging) them, held, primarily in relation to the appeal by the parallel importers from the second judgment, that certain further questions should be referred to the ECJ. These questions, which were left to the parties to formulate, were as to whether the test of “necessity” as it applied to the reboxing of parallel imports of pharmaceuticals concerned only the act of reboxing or extended further, and as held by Mr Justice Laddie, to the details of the presentation of the reboxed product. However the Court also held, in the context of cross-appeals on the restickering issue, that clear rules were also required as to the precise form of allowable restickering, and also ordered a reference to the ECJ as to these.
The Court upheld an appeal by the parallel importer as to the period of notice that must be given to the rights owner of the intention to sell parallel imported goods the original packaging of which had been altered or discarded, holding that this should be 15 working days, rather than the 7 working days in the case of restickered goods as held in the second judgement. However the Court largely dismissed an appeal against the first judgement as to reboxing having been shown, in the cases before it, to be necessary to overcome hindrance to sale of the product that was met when it was simply restickered. Another cross-appeal as to passing off, brought by one of the trade mark owners, was also dismissed.
The Court criticised the parties’ lawyers for having originally sent it nearly fifty bundles of documents, only ten of which were ever opened, and for not having supplied a core bundle of essential documents as required by Practice Direction to Part 52 15.11(A).
Glaxo Group Ltd v. Dowelhurst Ltd and Richard Taylor*(Phillips of Worth Maltravers, MR, Tuckey and Jacob LLJ,  EWCA (Civ) 290; 15.03.04)
The Court of Appeal dismissed an appeal by Glaxo from the judgment of Peter Prescott QC who had refused to grant summary judgment to them in a trade mark infringement action in respect of 15 out of 16 batches of Glaxo product parallel imported from outside the European Economic Area (the EEA - the European Union plus Iceland, Liechtenstein and Norway). The Court also allowed an appeal against his grant of summary judgment on the remaining batch. The factual issue which it was held could not be determined in summary proceedings was whether or not the batches had been “put on the market” in the EEA with the consent of Glaxo where these had originally been sold under contracts identifying an ultimate destination in Africa but not, it would appear, preventing the purchaser from selling in the EEA, and where ownership of the batches may first have passed within the EEA. Glaxo were criticised by the Court for not having drawn its attention an interim decision of a Hamburg Court in similar circumstances in another action brought by Glaxo, which had held that goods were “put on the market where the buyer has the power of disposal within the market”. Glaxo instead advanced the position adopted by the European Commission in its “Guide to the Implementation of Directives based on the new Approach and the Global Approach”, which had observed that “placing on the market is the initial action of making a product available for the first time on the Community market, with a view to distribution or use in the Community.” The Court also held that it would be premature to make a reference to the ECJ until the full facts had been determined, as the detail which would emerge on so doing might matter if there was a grey area between putting on the market in and out of the EEA.
Reporter’s note: I am most grateful to my colleagues for their assistance in preparing this month’s report: Trevor Cook (parallel import cases), Jacqui Irvine (McAlpine), Cristina Garrigues (Mundicor, Zirh) and Clare Wilson (New Born Baby, SAT.2).