Decisions on appeal from OHIM
|Application (and where applicable, earlier mark)|| ||SnTEM, SnPUR, SnMIX – metallic semi‑finished products in the form of sheets, wires, rods … having a coating of tin or tin alloy (6)|
|Comment|| ||The examiner refused the application under Arts 7(1)(b) and (c). This decision was upheld by the Board of Appeal and CFI. To specialists in the field of metallurgy the marks were descriptive of the goods, indicating tempered tin, pure tin and tin alloy respectively. It did not matter that such terms were not in actual use, it was sufficient that they could be used for such purposes.|
|Application (and where applicable, earlier mark)|| ||EUROPREMIUM – wide range of goods and services in Classes 16, 20, 35 and 39|
|Comment|| ||The examiner refused the application under Arts 7(1)(b) and (c). The Board of Appeal upheld the decision under Art 7(1)(c). The CFI annulled that decision. To English‑speaking members of the general public the mark was a laudatory term evoking quality goods or services from Europe. The mark was not descriptive since it did not enable the consumer without further reflection to make a direct association with the goods or services.|
|Application (and where applicable, earlier mark)|| ||BLUE in Classes 9, 36 and 38 |
BILBAO BLUE in Class 36
The ECJ upheld the decision of the CFI which dismissed the appeal on the basis that the original documents for the appeal were received by the CFI 2 days too late.The appellant faxed his appeal papers on 3 January 2003 and sent the originals by ordinary post on 7 January. The originals did not arrive at the Registry of the CFI until 15 January. Art 43(6) of the CFI rules establishes that the date on which a copy of the signed original of a pleading is received at the Registry by fax or other technical means shall be deemed to be the date of lodgment for the purposes of compliance with the time-limits for taking steps in proceedings, provided that the signed original of the pleading is lodged at the Registry no later than 10 days thereafter. Accordingly the originals should have been lodged by 13 January. The ECJ stated that by delaying the posting of the original documents by 4 days the appellant had increased the risk that the papers would not arrive within the time limit and that therefore he had not acted with all the diligence to be expected from a well informed appellant.
|Application (and where applicable, earlier mark)|| ||BIOKNOWLEDGE – databases relating to organisms, related computer services (9, 16, 42)|
|Comment|| ||The CFI rejected the appeal from the Board of Appeal’s decision; the mark was descriptive under Art 7(1)(c). The CFI rejected the submissions that the mark was (i) too vague or indeterminate to be descriptive; and (ii) was a newly invented word and therefore had no clear, commonly defined accepted meaning.|
|Application (and where applicable, earlier mark)|| |
HOOLIGAN – clothing (25)OLLY GAN – clothing (25) (International mark (Portugal), French national mark)
|Comment|| ||The CFI rejected the appeal from the decision of the Board of Appeal which had, in turn, rejected the application under Art 8(1)(b). Although the marks were phonetically similar to the average French and Portuguese consumer, they were visually and conceptually different. The CFI dismissed the applications to put in new factual evidence of use and reputation under Art 74. Conversely, because OHIM was required to examine, if necessary of its own motion, questions of inherent distinctiveness, the applicant was entitled to submit arguments on this issue despite not making any submissions before the Board of Appeal.|
Société des Produits Nestlé S.A. v. Mars UK Ltd(Opinion of A.G. Kokott; C-353/03; 27.1.05)
Nestlé applied to register HAVE A BREAK in class 30 in respect of chocolate and confectionery. The key point in issue was whether, through Nestlé’s use of the slogan “Have a break…Have a KitKat”, the application had acquired distinctive character. The application was refused and on appeal, the Court of Appeal  RPC 5, referred a question to the ECJ on the question of acquired distinctiveness.
The A.G. did not accept the submission that the reference to the word “it” in Article 3(3) of the Directive limited the evidence of distinctive character to the application in issue. He was of the opinion that “the use of a word sequence as part of a word mark can, as a matter of principle, lead to that word sequence acquiring the requisite distinctive character in order to be registrable as a trade mark. In order to prove that distinctive character has been acquired through use as an element of a composite mark, the relevant consumer groups must be shown to understand that the element in question, if used separately, designates a product as originating from a specific undertaking, thus distinguishing it from products of other undertakings”.
Praktiker Bau- und Heimwerkermärkte AG(Opinion of A.G. Philippe Léger; C‑418/02; 13.1.05) (Opinion not available in English at the time of writing)
The German Patent and Trade Mark Office refused to register PRAKTIKER in respect of “Retail trading of construction, handiwork and gardening items and other consumer goods in the 'Do-it-Yourself' industry”. The applicant appealed to the Bundespatentgericht, which referred the following questions to the ECJ:
1. Does retail trading constitute a service within the meaning of Article 2?
2. To what extent must the content of such services be specifically stated in order to (a) fulfil the function of the trade mark pursuant to Article 2 and (b) define the scope of protection of such a mark in the event of a conflict?
3. To what extent is it necessary to define the scope of similarity (Articles 4(1)(b) and 5(1)(b)) between those services and (a) other services provided in connection with the sale of goods or (b) the goods sold by that particular retailer?
These questions have practical importance. The services for which registration was sought encompassed activities such as the selection of the goods, their presentation, the cordiality of the staff, the quality of its advice and the location and accessibiliy of the shop, rather than the actual sale. Further, the practice of OHIM and registration offices in the various Member States varies to a great extent.
With respect to the first question, A.G. Léger took the view that services provided in the context of retail trading of goods, which are distinct from the actual sale and which may be identified by the consumers, are capable of constituting a service for which a service mark may be registered. The Nice classification is of no use in determining which types of services a mark may be registered.
Regarding the second question, A.G. Léger suggested that the contents of the services provided by the retailer must be specified so as to enable the consumers to know in concrete terms (i) what the services consist of (expressions such as “retail trading” or “retail services” are not explicit enough); and (ii) what goods or types of goods the services relate to.
A.G. Léger did not believe that it is possible to define with pre-established criteria the scope of similarity stated in the third question, as the notion of similarity must be interpreted in relation to the risk of confusion, which is to be assessed globally.
Hormel Foods Corp v. Antilles Landscape Investments NV (Richard Arnold Q.C. sitting as Deputy Judge;  EWHC 13 (Ch); 24.1.05)
Hormel, the registered proprietor of the mark SPAM for canned meats, applied for a declaration that the mark SPAMBUSTER (in stylised form for anti-spam computer programming services) be declared invalid or, in the alternative, be revoked. The claim was dismissed (as was the counterclaim which was couched in very similar terms and which the defendant came nowhere near establishing).
The deputy judge held that Hormel was barred from bringing its invalidity claims by cause of action estoppel. The Registrar of Trade Marks had previously rejected an application by Hormel for a declaration that SPAMBUSTER had been invalidly registered on relative grounds. The Registrar’s decision was capable of founding a plea of res judicata and the established principle that, once a party had unsuccessfully challenged the validity of a patent (or registered design) that party was estopped from attacking its validity on different grounds, also applied to trade marks. (In an aside Mr Arnold made it clear that he was not considering the position where a person unsuccessfully opposed the mark and then applies for a declaration of invalidity.) Hormel’s revocation claim was not so barred, as an action for revocation was a different claim to an action for invalidity.
In addition, the deputy judge held that all Hormel’s claims were an abuse of process following Henderson v Henderson (1843) 3 Hare 100. Although the relative and absolute grounds of invalidity were factually and legally different, there was sufficient nexus between them that they should have been brought in the earlier proceedings. In particular, sufficient evidence to support the invalidity claims had been filed in the Registry proceedings and it had been Hormel’s choice not to raise such claims at that time. Similarly, there had been no material change in circumstances since the Registry proceedings had taken place. The public interest in removing invalid or revocable trade marks from the Register could not justify re-litigation as otherwise there would never be any finality to this type of litigation.
In case he was wrong, the deputy judge went on to consider the merits of Hormel’s claims. He held that SPAMBUSTER in itself was descriptive under Section 3(1)(c) and the use of a fancy font did not alter that finding. Further, it was devoid of distinctive character under Section 3(1)(b), but was not generic at the time of application under Section 3(1)(d). The mark had not subsequently acquired distinctiveness. In relation to revocation, the deputy judge held that by the time of the proceedings, SPAMBUSTER had become a common, though not the sole, term for such services. Antilles’s inactivity, for example in promoting or enforcing its mark, was a, though not the, sole cause for this. This was sufficient to make out Hormel’s claim for revocation.
Omega Engineering Inc v. Omega SA (Rimer J.;  EWHC 2315(Ch); 2.8.04)
Rimer J. allowed the appeal from Master Bragg. The defendant’s application for an order striking out the claimant’s claim would be allowed. The defendant should not be vexed twice with the same matter. The claim was oppressive and an abuse of process (following Henderson v. Henderson (1843) 3 Hare 100 and Johnson v. Gore Wood  2 WLR 72).
In a previous action, Jacob J. ( FSR 49) upheld the decision of the hearing officer who had ordered partial revocation for non-use of the defendant’s mark OMEGA. As it had not been specifically pleaded, Jacob J. refused Engineering’s application under Section 46(6)(b) to partially revoke the mark from a date earlier than that of the application for revocation. Three days later, Engineering commenced these proceedings in the High Court claiming partial revocation of the same mark with effect from 5 December 1960.
Rimer J. held that Engineering should have included its prior period claim in its application to the Registry. It had clearly intended to do so as the point had been argued both before the hearing officer and Jacob J. However, the fact remained that Engineering had not; it might believed it had, but it had not pleaded it properly. That was no one’s fault but its own, or that of its advisers. By these present proceedings, the defendant had to meet a second set of proceedings, involving additional costs and anxiety. The claim should be struck out.
Rimer J. also dismissed Engineering’s application to adduce further evidence as it was unlikely to have any significant effect on the outcome of the appeal (Ladd v. Marshall  1 WLR 1489).
Fibrenetix Storage Ltd v. Tom Davis & Anr (Andrew Smith J.;  EWHC 1359 (QB); 14.6.04)
The claimant failed in its claim for an injunction against the defendant (Davis, a former sales manager employed by the claimant) and the defendant’s new employer (Lapis) for breach of the defendant’s contract of employment. The claimant claimed that the defendant had divulged the claimant’s confidential information (particularly pricing information) in order to generate new business for Lapis and to compete unfairly for the claimant’s business. The action failed because the claimant could not establish on the facts that the defendant had done any of the alleged actions. Interesting judicial comments regarding the identity of confidential information were:
Following Faccenda Chicken Ltd v. Fowler  Ch 117, there was an implied term in the employment contract that the defendant would not use or disclose any information gleaned during the course of his employment which was of a sufficiently high degree of confidentiality to be a trade secret or equivalent thereto.
Following Roger Bullivant Ltd v. Ellis  IRLR 491, there was an implied duty of fidelity that the defendant would not copy or commit to memory confidential information for use after the employment ended. The court would restrain an ex-employee from obtaining an unjust head-start or springboard for activities detrimental to the employer who provided the confidential information.
The judge considered whether information about the prices charged by the claimant constituted confidential information and relied on the Faccenda Chicken case. Prices and sales information are not necessarily regarded as sufficiently confidential to be protected. Although possibly of interest to competitors, the claimant’s pricing policy was not secret or sensitive and there was no evidence that the claimant’s pricing policy was unusual in the industry, or of particular value to them. The defendant necessarily acquired pricing policy information as part of his job as sales manager. This information was easily committed to memory and a sales manager could hardly avoid remembering it after leaving the claimant’s employment. The defendant had not been in a special position within the company, nor was he privy to significant information not readily available within the company. The defendant and other employees had not been specially instructed that the information was confidential or sensitive or that there was a need to keep it secret. Therefore, the judge concluded that the claimant’s general pricing information was not so confidential as to justify protection.
Raks Holding AS v. TTPCOM Ltd (Lloyd J.;  EWHC 2137 (Ch); 29.7.04)
An application for an interim injunction to restrain use of proprietary and confidential information relating to the “man-machine interface” of a mobile phone was refused. The claimant had not been sufficiently specific in identifying what the confidential information comprised of, had delayed in commencing proceedings, damages would have been an adequate remedy and the judge doubted the claimant would be good for its cross-undertaking in damages. Regarding the identity of confidential information, the judge made the following interesting comments:
Citing Laddie J. in Occular Sciences Ltd v. Aspect Vision Care Ltd  RPC 289, proper identification of confidential information is required so that the scope of any injunction is clear and enforceable.
Simply printing the words “confidential and proprietary” on documents was not sufficient to make the information contained therein confidential. Information can only be proprietary, in the sense of belonging to the claimant, if the claimant knows it and nobody else does, or only people who are bound by confidentiality. The parties could nevertheless have agreed how certain non-confidential information was to be used, but a threatened breach of such an agreement could not be restrained by injunction on the grounds of claimed property in that information, as the normal remedy of contractual damages would be adequate.
The list of 300 emails and list of 20 headings which the claimant had supplied the defendant was not sufficient to tell the defendant what the confidential information was. It was not plausible to suggest that every item on the 80 pages of the first “specification document” for the mobile phone was properly confidential information, especially as the claimant had proceeded on the false basis of not limiting its claim to confidential information only.
EPI Environmental Technologies Inc & Anr v. Symphony Plastic Technologies Plc & Anr* (Peter Smith J.;  EWHC 2945 (Ch); C/149/04; 21.12.04)
EPI developed an additive which promoted the bio-degradation of thin plastic products, such as plastic bags, after they had been discarded. Symphony entered into a manufacturing and know-how licence and associated confidentiality agreement with EPI for this additive. EPI alleged that Symphony had: (a) substantially copied the formulation of its additive in breach of these agreements; (b) misused information provided confidentially by EPI to Symphony during the course of these agreements; and (c) passed off its products as being associated with EPI’s products. At the joint instigation of the parties, the trial was held in private and the majority of the judgment kept confidential. Save for certain breaches of the licence entitling EPI to nominal damages, Smith J. dismissed EPI’s claims.
One of the major issues in the case was whether the alleged confidential material was truly confidential; there was no dispute that Symphony had received material from EPI or that Symphony knew EPI considered the material to be confidential. Smith J. held that, although in principle it was possible for a product to possess the necessary quality of secrecy by virtue of the work involved in creating it (regardless of whether its components possessed this quality), on the facts it was EPI’s additive and manufacturing processes which had this quality and not the products themselves. However, the particular information that Symphony had used was in the public domain and thus no longer confidential.
Smith J. also held that, provided the information was publicly available, it was immaterial whether Symphony obtained it through public or confidential sources. Information did not become confidential simply because it was supplied in confidence. It would be bizarre that, by signing a confidentiality agreement, Symphony became the only organisation which could not use publicly available information.
Markem Technologies Ltd & Ots v. Steven Buckby & Ots (Judge Fysh Q.C.; 26.1.05)
This is another action in the long-running dispute between the parties (earlier decisions relating to the entitlement of four different patents and applications are reported at  RPC 10, 11 and  RPC 3). By this application, the defendants sought to strike out the particulars of claim in a breach of confidence action (essentially an ex-employee case). The defendant submitted that the action should have been commenced at the time of the CMC in December 2002 when it was in the contemplation of all the parties; to start it now was an abuse of process (Johnson v. Gore Wood  2 WLR 72). Judge Fysh dismissed the application. He was not persuaded that the entitlement action and breach of confidence action should have been heard together.
Cream Holdings Ltd & Ots v. Banerjee & Ots* (House of Lords;  UKHL 44; 14.10.04) (Reported at  4 All ER 617 and a short summary only provided here)
The first defendant passed documents from her ex-employer to the press. An injunction was sought to restrain publication of further confidential information. Their Lordships were required to determine the correct approach to the application of Section 12(3) of the Human Rights Act 1998 which states that “'No such relief [which might affect the exercise of the Convention right to freedom of expression] is to be granted so as to restrain publication before trial unless the court is satisfied that the applicant is likely to establish that publication should not be allowed”.
Held – Allowing the appeal and discharging the injunction in so as it related to information already published - Section 12(3) makes the likelihood of success at the trial an essential element in the court’s consideration of whether to make an interim order. But it must depend on the circumstances in order to achieve the necessary flexibility. The court is not to make an interim order unless satisfied the applicant’s prospects of success at the trial are sufficiently favourable to justify such an order being made in the particular circumstances of the case. The general approach should be that courts will be exceedingly slow to make interim restraint orders where the applicant has not satisfied the court he will probably (“more likely than not”) succeed at the trial. But there will be exceptions were a lesser degree of likelihood will suffice such as where the potential adverse consequences of disclosure are particularly grave, or where a short-lived injunction is needed to enable the court to hear and give proper consideration to the application.
Tillery Valley Foods v. Channel Four Television & Anr*(Mann J.;  EWHC 1075(Ch); 11.5.04)
The claimant, a producer of frozen meals, sought to restrain the broadcast of a piece of investigatory TV journalism into certain practices at the claimant’s factory at Gwent “without giving the claimant a fair and reasonable opportunity to view footage and material removed from their premises and … respond”. The judge dismissed the action, which he described as both novel and ambitious and a defamation action in disguise. He could not grant an injunction because of the application of Section 12(3) of the Human Rights Act 1998 (referring to the Court of Appeal decision in Cream Holdings, seeabove), because he was satisfied that Tillery would fail at trial. Although there might be exceptions, in general a film made in a place of work did not have the quality of confidential information. Further, there was no authority whatsoever for suggesting that the public interest should not allow a broadcast without a fair and informed opportunity to reply which required the disclosure of the material relating to the principle allegations made in the programme.
R Griggs Group Ltd & Ots v. Ross Evans & Ots(L.JJ. Chadwick, Jacob & Lloyd J.;  EWCA (Civ) 11; 25.1.05)
The claimants, who are involved in the sale of “Dr Martens” footwear, commissioned a new design of logo from an advertising agency, which in turn commissioned the drawing of such logo from the first defendant. Nothing was said about copyright in the new design of logo which incorporated the “Dr Martens” and claimants’ “airWair” marks. Relying on Robin Ray v Classic FM  FSR 622, the judge at first instance (Mr Peter Prescott Q.C.  FSR 31) considered the case of a commissioned logo to be one of the rare instances set out in that review where circumstances existed necessitating an assignment of the copyright. He therefore granted the claimants a declaration that they were the beneficial owners of all aspects of copyright in the logo, and an order that such copyright be formally assigned to them.
On appeal, the defendants submitted that the first defendant thought he was producing material for point of sale material in the UK, not a logo for worldwide use. That being so, all the claimants needed was a limited licence. Jacob L.J. found this conclusion fantastic. In his view, the first defendant (who had been paid the proper rate) had no conceivable further interest in the work being created; indeed he would never have been employed if there had been a debate about it. The Court of Appeal dismissed the appeal.
Novello and Company Ltd v. Keith Prowse Music Publishing Company Ltd (L.JJ. Chadwick, Jacob & Lloyd J.;  EWCA (Civ) 1776; 14.12.04.
The key question in this case was whether a living author (a composer) was able, during the currency of the Copyright Act 1956, to assign the reversionary interest in his works expectant on the termination of the period of 25 years from his death. At first instance, Patten J.  RPC 48 held that the transitional provisions in the 1956 Act (Schedule 7, paragraph 28(3)) did not apply the proviso (in Section 5(2) of the 1911 Act) to new assignments and therefore Section 36(1) of the 1956 Act operated to confer an unrestricted right of assignment of copyright (contrary to the conclusion in Paragraph 5-113(b) of Copinger and Skone James on Copyright, 14th edition). An assignment made in 1973 was therefore effective to pass the reversionary interest to the defendant. The Court of Appeal, Lloyd J. giving judgment, held that the judge’s order and reasoning were both correct and dismissed the appeal.
Dyson Ltd v. Qualtex (UK) Ltd* (Mann J.;  EWHC 2981 (Ch); C/151/04; 21.12.04)
Mann J. held that Qualtex had infringed Dyson’s unregistered design right in a large number of spare parts for its vacuum cleaners. Qualtex admitted that all the parts in issue were copied. However, practically every point that might be a bar to design right under the CDPA was raised in relation to one or more of the spare parts.
(i). Mann J. extracted the following provisions in relation to the “must fit” exclusion (following Ocular Sciences v. Aspect Vision Care Ltd  RPC 289 at 424) and held:
(a) provided that there is a way of achieving the necessary fit or interface, the article does not attract design right no matter if there are alternative ways of achieving the same fit
(b) the article with which the subject article is interfacing can be a part of the human body
(c) design right is excluded even if the relevant part of the design performs some other function, for example, it is decorative or has an additional function not falling within the must-fit exclusion
(ii) He distilled the law on surface decoration into the following points:
(a) there is a distinction between surface decoration and the overall shape and configuration which may be clear in some cases but overall may well be of matter of fact and impression, or a value judgment
(b) a subsidiary functional purpose does not take the design aspect out of the exemption if the primary purpose is surface decoration
(c) the expressed intention of the designer can be taken into account, but it is not determinative
(iii) As to the meaning of “commonplace”, Mann J. held:
(a) the design field in question is that of vacuum cleaners
(b) the combination of features left after individual features are excluded under other exceptions is the design in question. If that combination is commonplace, then the design is not protected (following Laddie J. in Ultraframe UK Ltd v. Clayton  RPC 23)
(c) the question before the court was whether the design is commonplace in the UK, to which marketing of other articles in which the design appears will be relevant
(iv) When considering “must match”, Mann J. had to consider whether there was dependency of the kind, or to the extent, which would make the overall article in question radically different in appearance if the subject article was not the shape it was (adopting the test of Mr Jeffs Q.C. in the Registered Designs Appeal Tribunal in Ford Motor Co Ltd’s Design Applications  RPC 399 at 420). The consideration was inevitably one of fact and degree and of impression. The saleability of the item could be used as a guide to assessment or a cross‑check in any particular case.
(v) The question of when “articles made to the design are made available for sale” in relation to the commencement of design right and its duration, was answered as follows:
(a) the expression “made available” denotes something which is in actual existence
(b) goods are not “available” for sale, even if advanced orders for them are taken
(c) therefore, despite advance orders being taken in 1992 and the fact that a prototype was shown to intending purchasers, “articles made to the design” were not available for sale until production started in January 1993
Finally, Mann J. held that the estoppel and acquiescence defences failed. Qualtex averred that Dyson knew of the production of the first of its spare parts in 1997, a matter of weeks after each was introduced. Notwithstanding its knowledge, Dyson took no steps in respect of those first parts and stood by and allowed Qualtex to promote and sell those parts and introduce other parts. The defence failed. Mann J. held that no‑one in a relevant senior role in Dyson knew about the Qualtex parts before 2002. Consequently, there were no acts capable to amounting to any level of encouragement until 2002.
In a hearing that took place on 18 January 2005, Mann J. gave permission to appeal. On the question of costs, he held that there should be no deduction from the costs to which Dyson was entitled. The issues on which Qualtex had been successful were not of such significance to warrant such a deduction. Secondly, Qualtex’s conduct was not so unreasonable as to merit an award of indemnity costs against it.
Reporter’s note: I am grateful to my colleagues at Bird & Bird, Shirley McCulloch, Claire Bennett and Carolyn Olsburgh for their assistance with this report.
Those decisions marked with a * can be found at www.bailii.org. All CFI and ECJ decisions can be found at http://curia.eu.int/en/content/ juris/index.htm.