Appeals from OHIM and UK Trade Marks Registry
|Application (and where applicable, earlier mark)|| || |
MOBILIX – apparatus for telecommunications; telephone calling cards; answering, installation and repair services; telecommunications; computer programming and leasing (9, 16, 35, 37, 38, 42)
OBILIX – apparatus for photography, teaching, cinema and games, paper, marketing, film production, IP management (9, 16, 28, 35, 41, 42)
|Comment|| || The CFI upheld the decision of the BoA. The BoA had, in the most part, rejected the opposition under Arts 8(1)(b) and 8(2), but owing to the slight similarity of the marks had refused registration for “signalling and teaching apparatus and instruments” and “business management and consulting”. The CFI held that the goods in the specifications represented different sectors; just because goods were used as parts, elements or components of others did not suffice to show that the finished goods were similar since their nature, intended purpose and the consumers to whom they were directed could all be completely different. The services were also different, with the exception of the applicant’s “leasing of computers and computer programs” (42) which were complementary to the opponent’s “computers and computer programs” (9). The marks were visually very slightly similar and there was a certain aural similarity. But because OBILIX was well known as a popular cartoon character, it was extremely unlikely that there would be any confusion in the minds of the relevant public.|
|Application (and where applicable, earlier mark)|| || CLOPPENBURG – retail trade services (35)|
|Comment|| || The CFI annulled the decision of the BoA which had refused the application under Art 7(1)(c). The CFI held that the BoA had done no more than to say that Cloppenburg was a small town (152,000 inhabitants) and therefore Art 7(1)(c) applied. This was insufficient reasoning to dismiss the application. The CFI went on to hold that Cloppenburg was not known for any particular class of goods or services; nor was it the current practice in trade to indicate the geographical origin of retail trade services, nor use the geographical origin of services to assess their quality or characteristics. |
|Application (and where applicable, earlier mark)|| || |
SMELL OF RIPE STRAWBERRIES (olfactory sign consisting of a combination of the above image and description) - cleaning substances, cosmetics, perfumery, stationery, leather goods, clothing (3, 16, 18, 25)
|Comment|| || The CFI upheld the decision of the BoA which had refused the application. The CFI would not rule out the possibility that an olfactory sign could be described in a way which would satisfy all the requirements of the Regulation despite the fact that it followed from Sieckmann (C-273/00) that a description could not graphically represent olfactory signs which were capable of being described in many different ways. Here, however, the description was inadequate because the applicant failed to prove that strawberries have just one smell. The picture was subject to the same criticism, but in addition, the public would not be able to tell whether the mark was intended to be the image of the strawberry or the smell. Neither of the representations was sufficient individually under Art 7(1)(a) and the combination could not cure the defect.|
|Application (and where applicable, earlier mark)|| |
– teas (30)
|Comment|| || |
Blackburne J allowed the claimant’s summary judgement application for infringement under section 10(2)(b), in respect of the defendant’s use of a pictorial dragonfly sign in connection with the sale of teas and other infusions. The defendant’s sign consisted of a full colour, detailed dragonfly with outspread wings and was always used with the words ‘Creative Nature’.
The Judge held that, given the particularly distinctive and memorable nature of the dragonfly logo, the differences between the sign used by the defendant and the registered mark were not sufficient to prevent a likelihood of confusion.
Trade Mark Infringement – Section 10(6)
Wolters Kluwer (UK) Ltd v Reed Elsevier (UK) Ltd (Mann J;  EWHC 2053 (CH); 16.09.05)
The Judge refused an application for an interim injunction to restrain infringement of the word mark CCH.
The claimant published online seminars for accountants under a service called CCH Seminars online. The material for the service was formerly provided by Online Tutors. When this relationship terminated, Online Tutors were engaged by LexisNexis to provide material for a competing service called Tolly’s Seminars Online. This competing service was advertised as follows
“Special offer for existing subscribers! If you are an existing subscriber to CCH Seminars Online or CD service just call us on 020 8662 2000 today and we will provide you with free access to our service for the remainder of your CCH subscription period.”
Use of the mark CCH with such ‘subscription switch’ wording would have been trade mark infringement unless section 10(6) applied. While this was not comparative advertising, the section was still capable of applying. Mann J dismissed the claimant’s submission that the real ‘purpose’ of using the words was to divert custom and derive benefit from the reputation of CCH. When the statute referred to ‘purpose’ it did not mean the wider commercial purpose of using the words at all. If it did then even comparative advertising would be forbidden because use of a mark in that context was just as much for the ‘purpose’ of diverting customers as in this case. The key question was whether the mark was used to identify the goods and services which were those of the proprietor. If the mark was used to identify the goods and services of someone else then section 10(6) would not apply. Here the mark was clearly used to describe CCH’s own seminar services and therefore the relevant words in the advertisement used the mark for the relevant purpose.
The defendant had placed another advertisement containing a statement that it had entered into an agreement with Online Tutors “…the company behind the former version of CCH Seminars Online”. This also fell within the wording of the first part of section 10(6) since the use of the mark was to describe CCH’s course.
Use of the external transit or customs warehousing procedures
Class International BV v SmithKline Beecham plc & ots (ECJ (Grand Chamber); C-405/03; 18.10.05)
This was a reference for a preliminary ruling regarding the interpretation of Articles 5(1) and (3)(b) and (c) of the Directive.
SmithKline Beecham (Beecham) owns the AQUAFRESH CTM, registered in particular for toothpastes. Class International brought into the Community a container load of toothpaste products bearing the AQUAFRESH trade mark and placed them in a customs warehouse using the external transit procedure.
Initially Beecham were concerned that the goods could be counterfeit and applied for seizure under the Anti-Counterfeiting Regulation. When the goods proved to be original, Class International applied to the Rechtbank te Rotterdam for release of the goods and payment of damages. Beecham counterclaimed for trade mark infringement.
At first instance Class International’s applications were rejected. On appeal the Gerechtshof te ΄s-Gravenhage referred several questions to the ECJ regarding the interpretation of Article 5.
On considering the circumstances in which a trade mark owner can prevent importation of goods into the Community, the ECJ held that entry of non-Community goods for customs procedures such as external transit or customs warehousing was distinguishable from placing them under the customs procedure of release for free circulation (which, pursuant to Article 79 of the Customs Code, conferred on non-Community goods the status of Community goods). As long as release for free circulation was not chosen, the physical entry of goods into the Community was not ‘importing’ within the meaning of Article 5(3)(c) and did not entail ‘using [the mark] in the course of trade’ within the meaning of Article 5(1). Therefore the ECJ concluded that a trade mark owner cannot oppose the mere entry into the Community, under the external transit procedure or the customs warehousing procedure, of original goods bearing his mark which have not already been put on the Community market. Neither can the trade mark owner make that entry conditional upon the existence of a final destination already specified in a third country.
On consideration of the term ‘offering’ in Article 5, the ECJ held that a trade mark owner could oppose the sale/offer of goods placed under the external transit procedure or customs warehousing procedure when it necessarily entailed putting those goods on the Community market. This was regardless of where the trader or purchaser were established, or the contractual terms relating to the place of delivery/final destination. However the mere fact that the purchaser was likely to resell the good into the Community was not enough to enable the trade mark owner to assert its trade mark against the trader.
On the question of who has the burden of proof, the ECJ held that, in a situation such as this, the trade mark owner has the burden of proving infringement (either by release for free circulation of the non-Community goods bearing the mark, or through an offering for sale that necessarily entails the goods being put on the market in the Community). If that is proven, it is then for the trader sued to prove the existence of the consent of the proprietor to the marketing of the goods in the Community.
GMG Radio Holdings Ltd & ots v Tokyo Project Limited & anr (Kitchin J;  EWHC 2188 (Ch); 7.10.05)
Kitchin J refused an interim injunction to restrain the defendants from using certain artwork in relation to compact discs or for promoting musical events.
The claimants had released numerous albums since 1999, under the Hed Kandi trade mark, and each of the covers was created by an artist called Jason Brooks. The artwork comprised the image of one or more women in a ‘pop art’ style. The second defendant, Mr Doyle, recently left the employment of the claimants in order to launch the Tokyo Project. Mr Brooks (who had retained copyright in his artwork for the album covers) also parted company with the claimants, with the intention of working with My Doyle on the Tokyo Project. Mr Brooks created original artwork, similar to that used by the claimants, for the defendant’s compact disc.
Kitchin J noted that the claim had an unusual feature in that the claimants were not relying on a particular get-up, but rather upon the general style or appearance of the artwork on their compilation albums from 1999 to date. He considered that there were considerable difficulties associated with establishing misrepresentation. In particular, the style of the artwork was not unique to the claimants and the compact disc had always been sold under and by reference to the Hed Kandi brand name. In addition the defendant’s compact disc clearly displayed the trade mark Tokyo Project.
In survey evidence, interviewees did in many cases recognise the style of the artwork of the defendant’s compact discs as being the same as or similar to that used previously by Hed Kandi. However Kitchin J agreed with the defendants’ submissions that an association of this kind is not the same as passing off. Nevertheless, while there would be considerable difficulty in making good a passing off claim at trial, the claimants had done enough to establish that there was an issue to be tried.
However considering the balance of justice, Kitchin J held that an injunction preventing release of the defendants’ compact disc would probably lead to the whole business failing. Conversely the damage to the claimants, although difficult to assess, was not likely to be significant. Therefore he did not grant the injunction.
Designation of origin
Federal Republic of Germany & Kingdom of Denmark v Commission (supported by Hellenic Republic) (ECJ (Grand Chamber); Joined Cases C-465/02 and C-466/02; 25.10.05)
The ECJ refused the application to annul the decision of the Commission to register FETA as a designation of origin in relation to cheese, the country of origin being Greece. Since the Greek word FETA is derived from the Italian word “fetta”, meaning “slice”, and was not the name of a region, place or country the term was registered under Article 2(3) of Regulation 2081/92, which extends the definition of designation of origin to certain traditional non-geographical names designating an agricultural product or a foodstuff originating in a region or a specific place and which fulfils the requirements in the second indent of Article 2(2)(a) (i.e. the quality or characteristics of the agricultural product or foodstuff being essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and that the production, processing and preparation of that product takes place in the defined geographical area).
The ECJ held that the application for FETA fulfilled the geographic requirements. The Greek legislation governing the matter provides that “the milk used for the manufacture of “feta” must come exclusively from the regions of Macedonia, Thrace, Epirus, Thessaly, Central Greece, Peloponnese and the department (Nomos) of Lesbos”. This was a large, but not artificially determined region. Furthermore, the quality and characteristics of FETA were essentially due to that particular geographical environment, which included the amount of sunshine, temperature changes, the practice of transhumance, extensive grazing and vegetation.
The ECJ rejected the argument that FETA was generic. Amongst the points raised were:
- FETA has been used for many years to refer to white cheese soaked in brine produced in the Balkans and the southeast of the Mediterranean basin. However, the ECJ stated that those cheeses are known in those countries under names other than FETA.
- In 1994, the Greek government codified the production of FETA, but in prior years, cheese produced from cow’s milk was made in Greece and also imported into Greece under the name FETA. The ECJ pointed to the fact that under the 1994 rules such practices should no longer take place.
- Producers in Denmark, Germany and France produce considerable quantities of FETA (and have been doing so for very many years). However, the ECJ pointed out that the majority of FETA was produced and consumed in Greece.
- The majority of consumers in Greece consider FETA to have a geographical connotation (to be contrasted to most consumers in Denmark, who consider it a generic term).
- In Member States other than Greece, FETA is commonly marketed with labels referring to Greek cultural traditions and civilisation. The ECJ inferred that consumers therefore perceive FETA as a cheese associated with Greece, even if in reality it is produced elsewhere.
Reporter’s note: I am grateful to my colleague at Bird & Bird, Alice Sculthorpe, for assisting me in the preparation of this report.
CFI and ECJ decisions can be found at http://curia.eu.int/en/content/juris/index.htm.