The applicant registered the word sign WEISSE SEITEN as a CTM in class 9 (recorded storage media including tapes, discs CD-ROMs etc.), class 16 (reference works and classified directories etc.), class 41 (publishing services) and class 42 (editing of written texts). Herold Business Data, a company which created order forms for Austrian telephone directories, challenged the registration and the Board of Appeal subsequently declared the mark partially invalid.
The CFI held that the Austrian postal service had been using the term ‘weiβe Seiten’ in conjunction with the term ‘gelbe Seiten’ in its telephone directories since 1992. Moreover, the term had been used in a communication from the Commission in 1995. Given that the communication was translated into German, the term entered the German language at that time at the latest. The mark was therefore cancelled under Article 7(1)(d) since it had become customary as a generic term for the telephone directory for private individuals before the time of registration.
The CFI also refused the mark under Article 7(1)(c). Since the term had become a synonym for telephone directories, ‘weiβe Seiten’ was descriptive of those goods and did not simply refer to the white-coloured pages of such a directory.
The CFI further held that the mark could easily be understood in the sense of ‘weiβfarbige Seiten’ (or ‘white-coloured sheets’) and could therefore be regarded as descriptive. Since the applicant had not drawn any distinction between ‘paper’ or ‘white sheets’ and the other goods within the category, the mark should be declared invalid for the entirety of class 16.
Elizabeth Emanuel v Continental Shelf 128 Ltd (ECJ (Third Chamber); C-259/04; 30.03.06)
The applicant applied to register ELIZABETH EMANUEL in Clauses 3, 14, 18 and 25. The UK Hearing Officer dismissed the opposition and application for revocation by well-known dress designer Elizabeth Emanuel, despite his finding of deception and confusion, on the ground that such deception and confusion was “lawful” and the inevitable consequence of the sale of business and goodwill by Elizabeth Emanuel (well-known particularly as a result of designing Princess Diana’s wedding dress) to the predecessors in title to the current applicant of the mark.
On appeal, the Appointed Person, David Kitchin QC (O-17-04) referred a number of questions to the ECJ. In summary he asked whether a trade mark is to be regarded as liable to mislead the public within the meaning of Article 3(1)(g) of the Directive [prohibition on the registration of deceptive marks] or Article 12(2)(b) [revocation for misleading use] if, for a period following its assignment with the business of making the goods to which it relates, the use of the mark in relation to those goods is liable to deceive the public into believing, contrary to the fact, that a particular person has been involved in designing and making those goods.
The ECJ held that, although the public interest underlying Article 3(1)(g), namely consumer protection, raised the issues of whether the average consumer would be confused, especially where the person to whose name the mark corresponded originally personified the goods bearing that mark, Article 3(1)(g) required more. It presupposed the existence of actual deceit or a sufficiently serious risk that the consumer would be deceived (Consorzio per la tutela del formaggio Gorgonzola C‑87/97). The same analysis applied to Article 12(2)(b).
Although such matters were for the national court to decide, the ECJ stated that, in this case, even if the average consumer were to be influenced into buying garments sold under the mark ELIZABETH EMANUEL by imagining that Elizabeth Emanuel designed them, the characteristics and the qualities of those garments would remain guaranteed by the trade mark owner. Consequently, the name ELIZABETH EMANUEL was not in itself deceptive as to the origin of the goods.
O2 Holdings Ltd and O2 (UK) Limited v Hutchison 3G UK Ltd (“HG3”)* (Lewison J;  EWHC 534; 23.03.06)
O2 had adopted a “blue bubble imagery” to strengthen the association of its name with oxygen and was the proprietor of a number of registered marks consisting of “bubbles” (see below). O2 complained about a TV advertising campaign in which HG3 compared their pay-as-you-go services to those of O2. It was accepted by O2 that the text and soundtrack was accurate and that no complaint could be made of the mark O2. However, a complaint was made about the use by HG3 of bubbles. O2 was refused an interim application ( EWHC 2571 (Ch)) and the application to make a reference to the ECJ was refused ( EWHC 344).
Lewison J held that the marks were both inherently distinctive and had acquired distinctiveness. He held that, although there was a prima facie case of trade mark infringement under Section 10(2)/Article 5(1)(b) (but not under Section 10(3)/Article 5(2)), HG3 had established a defence under the Comparative Advertising Directive.
Lewison J held that a moving image could infringe a static device mark, but that the question of whether there was infringement depended on the circumstances. The question was not answered by freezing an individual frame if the average consumer would not in practice perceive the frozen frame individually. In this case, the moving image as a whole had to be compared to the registered trade marks.
HG3 argued that use of a sign would only infringe a trade mark if it attempted to attribute the origin of the goods or services to someone other than the trade mark owner. They clearly did not use the mark in this way as the bubbles were used in their advertisement to identify O2.
The judge held that on this question of “use as a trade mark” he did not have to resolve what might be no more than a difference of emphasis between the House of Lords in R v Johnstone  1 WLR 1736 and the Court of Appeal in Arsenal v Reed  RPC 39. Both decisions dealt with “trade mark use” quite generally as indicative of trade mark origin and did not explicitly confine the principle to use by a third party to indicate an origin other than that of the proprietor. He further held that trade marks may have functions beyond simply guaranteeing trade origin (Parfums Christian Dior v Evora C-337/95) and that the “image” of a trade mark is something that the proprietor is entitled to protect. It therefore followed that use could still amount to infringing use even if the trade mark in question was used to indicate that the origin of the goods or services was the proprietor.
On the facts, the judge held that the bubbles in HG3’s advertisement were specifically used to identify the provenance of the services provided by O2. For that reason they were used in a trade mark sense.
O2 submitted that, under Section 10(2)/Article 5(1)(b) the court should compare O2’s marks with the bubbles in HG3’s advertisement without taking into account any extraneous material. The judge did not accept this; the alleged infringing sign had to be viewed in context. The judge held he should look at the fully integrated audio-visual presentation rather than just the visual representation of the bubbles, as this was how it would be appreciated by the average consumer. On the facts, the judge held that HG3’s advertisement used bubbles that were very similar to the trade marks Technical and Fizz (the latter is not reproduced in this report). The likelihood of confusion was exacerbated by the addition of the accompanying soundtrack which reinforced the identification of the bubbles with O2. Consequently, subject to any defences, infringement under Section 10(2)/Article 5(1)(b) was made out.
He also held that the advertisement as a whole did not take unfair advantage of or denigrate O2’s trade mark Relax. He accepted that this mark enjoyed a reputation but the average consumer would not have made a connection between HG3’s bubbles and Relax; Relax was too distinctive an image for that. In addition, O2 failed to prove that there was denigration of the marks by use of black and white bubbles, that there was erosion of distinctiveness of the marks or that HG3 was unfairly piggy-backing on the reputation of O2’s mark. Finally, there was no evidence of any economic loss or detriment to O2 or any economic gain to HG3 specifically resulting from the use of the marks. Consequently there was no infringement under Section 10(3)/Article 5(2). In so finding, the judge mentioned on more than one occasion that a certain amount of robustness was expected in comparative advertising.
The judge held that in order to avoid trade mark infringement by a comparative advertisement, the advertisement must comply with the Comparative Advertising Directive 97/55/EC. In so holding, he did not follow Jacob J in British Airways v Ryanair  FSR 32 who held that the Trade Marks Directive did not prohibit fair comparative advertisements. Lewison J distinguished British Airways on the basis that Jacob J did not have the benefit of the ECJ ruling in Pippig Augenoptik GmbH & Co KG v Harlauer Handelgesellschaft mbH C-44/01 and the Comparative Advertising Directive had not been in force. It followed that the defence under Section 10(6), in the case of comparative advertising, was the same defence as the defence under the Comparative Advertising Directive.
Lewison J held that an advertiser may comply with the Comparative Advertising Directive even though he uses a sign or other distinguishing mark which is not identical to a registered trade mark. In this case HG3’s bubble imagery was not identical to the O2 trade mark registrations.
Further, use of a mark in comparative advertising would only be permitted where that use was “indispensable” to the advertising (see Recital 14 of the Comparative Advertising Directive). In deciding whether use of the mark was indispensable, the judge held one should pay attention to the medium in which the advertising appears. Lewison J commented that if the overall message of the advertisement complied with the Directive in that it was not unfair, it was not misleading and it was objective, the court should not curtail any other subsidiary means of persuasion which gave additional impact to the lawful message contained in the advertisement.
Due to the fact that the advertisement was not misleading, that it objectively compared prices and that, at the end of the advertisement, a viewer would be left in no doubt which part of the advertisement related to which service provider, Lewison J concluded that the advertisement fell within the Comparative Advertising Directive.
Lidl Belgium GmbH & Co. KG v Etablissementen Franz Colruyt NV (AG Tizzano for the ECJ; C-356/04; 29.03.06)
Colruyt, which operates more than 170 supermarkets in Belgium, issued advertisements, which included the following wording:
“Dear customer, Last year, 2003, you were able once again to make significant savings with Colruyt. On the basis of our average price index for the past year we have calculated that a family spending EUR 100 each week in Colruyt stores saved … between EUR 155 and EUR 293 by shopping at Colruyt’s instead of a hard discounter or wholesaler (Aldi, Lidl, Makro) …”
They also launched their BASIC products which were advertised with the wording:
“BASIC: absolutely the lowest prices in Belgium. Even cheaper than the comparable selection of the hard discounters (Aldi, Lidl) …”
Lidl brought proceedings for comparative advertising under Directive 84/450/EEC as amended by Directive 97/55/EC before the Rechtbank van Koophandel which referred various questions to the ECJ. The AG restated the questions and answered them as follows.
Article 3a(1)(b) permits comparative advertising when it compares goods or services meeting the same needs or intended for the same purpose. The AG called this the requirement for homogeneity. In his opinion, this requirement did not only permit the comparison of individual products, but also product selections (as in the first advertisement above).
Article 3a(1)(c) permits comparative advertising when it objectively compares one or more material, relevant, verifiable and representative features of those goods or services, which may include price (emphasis added). The AG was of the opinion that an advertisement which does not expressly mention the goods and prices that are being compared is permitted under this provision (or at least not prohibited) provided that the advertiser indicates in the advertisement where and how an average consumer can find those elements easily or makes it easily possible, from the context, for the consumer to ascertain what they are. Although it was a question for the national court to answer, the AG had grave doubts as to whether either of the advertisements fulfilled this requirement.
Article 3a(1) permits comparative advertising when it is not misleading. The AG was of the opinion that comparative advertising which compares the price levels in various supermarkets on the basis of an extrapolation from selected data and which gives rise to the belief that the price differences cited apply to all the products sold by those supermarkets was misleading.
Web referral proceedings
Tesco Stores Ltd v (1) Elogicom Ltd (2) Robert Ray (Sales J;  EWHC 403 (Ch); 08.03.06)
Tesco owns the registered trade marks TESCO and TESCO.COM and the domain names www.tesco.com, www tescodiets.com and tesco.jersey.com.
With a view to promoting sales from its website, Tesco entered into an arrangement with a company which operated a website affiliation programme. The arrangement involved the insertion of links on website providers’ websites which transferred users to Tesco’s own website. The website providers would receive a commission from any subsequent sales on the Tesco website.
Ray applied on behalf of Eligicom to become an affiliate and registered a number of domain names which included the word TESCO. Ray ensured that any user who typed in one of these domain names would be directed to a Tesco owned website rather than a website owned by Eligicom. Elogicom would then earn commission on any resulting purchases on the Tesco website. Tesco sought summary judgment on its claim against the defendants and a strike out or summary judgment of the defendants’ counterclaim.
Sales J held that, contrary to both Sections 10(2) and 10(3), this use of the TESCO related domain names infringed Tesco’s trade marks.
Sales J considered that the use of internet domain names is a service offered to the public, and registering TESCO related domain names with a view to generating income in the form of commission constitutes ‘use in the course of trade’. The domain names were each similar to the Tesco owned registered trade marks, were each used in relation to services (i.e. the provision of internet access to Tesco websites) and in the circumstances created a likelihood of confusion on the part of the public.
Under Section 10 (3), the court held that Elogicom used the domain names similar to Tesco’s trade marks in the course of its trade. Tesco’s trade marks had a reputation in the UK and use of those domain names was ‘without due course’ and took ‘unfair advantage’ of the distinctive character and repute of the marks.
Elogicom’s refusal to transfer the domain names to Tesco gave rise to a threat of future use, and therefore the court granted Tesco quia timet injunctive relief. The court also granted quia timet injunctive relief on the basis of passing off, as the defendants had sought to associate itself with, and trade upon, the goodwill associated with the name TESCO, and there was a threat that Elogicom would continue to do so.
Parallel imports – what amounts to consent?
MasterCigars Direct Ltd (“MDL”) v Hunter & Frankau Ltd (“H&F”) and between Corporacion Habanos SA (“HSA”) v MasterCigars Direct Ltd & Anr* (Judge Fysh QC sitting as a judge of the Chancery Division;  EWHC 410 (Ch); 10.03.06)
HSA is the proprietor of Community and UK registered trade marks for a variety of Cuban cigars and the sole exporter of such cigars. H&F are its sole and exclusive distributor in the UK. HSA also supplies the domestic market in Cuba via official outlets. MDL is an importer of cigars into the UK for resale. In August 2004, MDL purchased a consignment of cigars bearing HSA’s trade marks from an official outlet in Cuba and subsequently imported them to the UK. Acting on information received from H&F, HM Customs & Excise seized and detained this consignment in the belief that it contained counterfeit cigars.
MDL brought a declaratory action against H&F seeking a declaration that the goods were not counterfeit and should therefore be released. HSA brought a Part 20 claim against MDL for infringement of its registered trade marks, asserting infringement by unauthorised parallel importation and also by the presence of a number of counterfeit cigars within the consignment. The judge held that HSA’s first claim succeeded; HSA’s trade marks were infringed and there was no defence that HAS’s rights were exhausted as they had given neither express nor implied consent. The judge held that the latter claim did not succeed. The evidence as to there being counterfeit cigars in the consignment was unconvincing.
Judge Fysh held that the burden of proving consent was upon the parallel importer. MDL argued that as the cigars had been purchased from an official outlet in Cuba on the basis of a previous course of dealing and that, as the official outlet was effectively acting for and on behalf of HSA, HSA had given implied consent for the cigars, as marked, to be exported by MDL for onward sale in the UK. The judge considered that the official outlet was not in any way economically linked or controlled by HSA, and as such could not be construed as acting for or on behalf of HSA. HSA had not therefore given implied consent through the official outlet.
MDL further argued that HSA’s $27,000 limit on each individual purchase for personal consumption from an official outlet pointed to implied consent that there would likely be a subsequent commercial disposal of the cigars by the purchaser (on the grounds that such an allowance was unrealistic for purely personal use). Judge Fysh considered that this was not nearly sufficient to constitute unequivocal consent on behalf of HSA. Finally, Judge Fysh also found that, prior to the purchase of the consignment, MDL was aware of HSA’s hostility to the intended use of its trade marks on the imported cigars. This too negated the possibility of HSA having given their unequivocal consent to such use.
Roche Products Ltd & Anr v Kent Pharmaceuticals Ltd (Lewison J;  EWHC 335 (Ch); 23.02.06)
Lewison J granted Roche summary judgment on the grounds that Kent had no reasonable prospect of showing that Roche had given its implied consent to the marketing of the trade mark goods within the EEA on the basis that these goods bore a CE mark.
The trade mark goods were Roche’s ACCU-CHECK Advantage II strips for the self-testing of blood glucose levels. The strips contained information and instructions in three languages, English, Spanish and Portuguese and indicated that the products were made in the USA for export only. Lewison J noted that the most significant feature of the packaging was that it bore a CE mark demonstrating compliance with EU quality and safety requirements. Roche supplied these to a Dominican Republic Foundation (PROPAS) on the condition that the test strips were used exclusively for clinical trials and that they were not resold or transferred to any third party organisations or companies. In breach of these terms, the strips ended up in France and were purchased in good faith by Kent, who imported them into the UK.
Kent asserted that the issue in law for the determination of implied consent was the effect that the CE mark had on the relevant public. If the relevant public treated the CE mark as equivalent to consent to sell the products within the EEA then that amounted to the unequivocal consent of the trade mark owner. Roche asserted that when determining consent, one had to look at the consent on the part of the trade mark owner and not the state of mind of any part of the public.
Lewison J noted that a fair reading of the evidence put forward about the nature and function of the CE mark indicated that it was concerned with safety and quality of a product. A CE mark does not have any bearing on the issue of trade marks nor the trade mark proprietor’s consent to marketing within the EEA. Lewison J accepted Roche’s submissions that products not sold in the EEA may carry a CE mark to demonstrate a certain level of safety and quality and that some non-EEA countries require the CE mark on products intended for marketing in that country.
Lewison J rejected the evidence put forward by Kent that the relevant public believed that the presence of a CE mark indicated that a product was intended for sale in the EU. It did not follow logically that because a product marketed outside the EEA did not need to carry the CE mark, that a product which did carry the CE mark was intended for sale within the EEA. Evidence that can reasonably lead to two or more conclusions cannot be said to be unequivocal within the ordinary meaning of that word and be evidence of consent as required by the ECJ in Davidoff (C‑414/99).
Dyson v Qualtex (UK) Ltd* (LJJ Tuckey, Jacob & Lloyd;  EWCA Civ 166; 8.03.06)
The Court of Appeal upheld the decision of Mann J  RPC 19 held that Qualtex had infringed Dyson’s unregistered design right in a large number of spare parts for its vacuum cleaners. Jacob LJ, giving judgment for the court concluded: “The overall lesson here is that the exceptions to unregistered design right (“UDR”) created by the Act do not give a carte blanche for pattern spares. Those who wish to make spares during the period of design right must design their own spares and cannot just copy every detail of the OEM's part”.
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. Since it was impossible to give a “purposive construction” to the legislation in respect of spare parts, Jacob LJ construed the statutory exceptions narrowly by recognising that spare parts are a sub-set of functional articles which can be protected by UDR provided they satisfy the necessary criteria. Based on this construction of Section 213 Jacob LJ held as follows:
“Must fit” exception – Section 213(3)(b)(i) CDPA: (1) Parts are not required to touch in order to fall within the “must fit” exemption; (2) A part whose function was to make an product function more effectively could fall within the “must fit” exception; and (3) The lower limit to what qualifies as an ‘aspect’ of a article to which UDR can apply is “where one cannot really say there is an ‘aspect’ at all”.
“Must match” exception – Section 213(3)(b)(ii) CDPA: “Dependency” is judged by comparing the feature of shape of the part in question against the appearance of the whole article. Unless a manufacturer can show that there is a real need to copy a feature of shape or configuration because of some design consideration of the whole article, he is not within the exclusion. In other words, the more there is design freedom for a part, the less there is room for exclusion.
Surface Decoration – Section 213(3)(c) CDPA: (1) Although surface decoration can be 3D, it does not follow that anything provided on a surface amounts to surface decoration - it is a matter of degree; (2) Surface features with a significant function should not be included within “surface decoration”.
Originality: A design will be original if it has not been copied; functional articles might look similar but still be original. The key question was whether the author used his own skill to create a design. Adding something to an existing design, even if that addition was new, was not enough to create an original new design.
Commonplace: There was no question of a very good design which became very well known losing design right by reason of becoming well-known. At the time of creation, such design would not be commonplace, and what happened thereafter could not affect the subsistence of the right. However, further design right protection would not be allowed in respect of a variant of the original design that was only different from the original in a commonplace manner.
Case management: A further interesting point raised by Jacob LJ in this case was the importance of case management and identifying with precision each design which the parties intend to rely on at trial in order to refine the issues at an early stage. In this particular case the spare parts in issue had been cut down from 14 to just 6, and even then it transpired that it was not even necessary to consider every point in relation to those 6 parts.
COPYRIGHT & CONFIDENTIAL INFORMATION
HRH The Prince of Wales v Associated Newspapers Ltd* (Blackburne J;  EWHC 522 (Ch); 17.03.06)
HRH The Prince of Wales successfully applied for summary judgment against Associated Newspapers for breach of confidence and infringement of copyright in respect of articles published in The Mail on Sunday which were based upon and contained extracts from a journal kept by HRH on his visit to Hong Kong during the formal handover of Hong Kong to the Republic of China (the “Journal”).
Breach of confidence
Blackburne J first considered whether the claimant had a reasonable expectation of privacy in respect of the contents of the Journal. It was held that the Journal was not in the public domain before publication by the defendant and that there was no evidence to suggest that it was intended to be generally available to others outside of the claimant’s Private Office. Furthermore, all staff who may have encountered the Journal were subject to confidentiality undertakings which would clearly have extended to the contents. Therefore, the claimant did have an expectation of privacy in respect of the Journal. The mere fact that the contents of the Journal could be considered political in a wider sense and that the claimant had a history of courting public attention by speaking out about his views, did not prevent him having a reasonable expectation of privacy in respect of handwritten thoughts that he had not intended for public scrutiny.
Blackburne J then had to carry out a balancing exercise between Article 8 of the European Convention on Human Rights (“ECHR”) (right to respect for private life) and the Article 10 right to freedom of expression. The defendant argued that the legitimate aim of interfering with the claimant’s Article 8 right was the protection of the electorate’s right to receive information regarding the claimant’s political views and conduct, both as an important lobbyist and Heir to the Throne. It was held however that this should not override the claimant’s countervailing right to confidentiality in respect of his own private thoughts, regardless of the nature of those thoughts.
The judge held that the strong public interest in preserving the confidentiality of journals and communications within private offices justified the interference with the defendant’s right to freedom of expression, noting that Article 10(2) ECHR provides that such a right may be subject to preventing the disclosure of information received in confidence
Blackburne J held that the defendant had no real prospect of establishing that it had not used a substantial part of the Journal or that the fair dealing or public interest defences could apply.
When determining whether a substantial part of the Journal had been reproduced by the defendant, the judge noted that many of the extracts taken verbatim were those which touched upon the claimant’s opinion and which therefore were of most interest to the newspaper’s readers. Blackburne J held that, when taken together, the extracts quoted formed a substantial part when assessed in a qualitative sense. He also noted that at 15% of the total Journal, the extracts taken were equally likely to be substantial in quantitative terms.
The court rejected the defence of fair dealing for the purposes of reporting current events (Section 30(2) CDPA). First, the articles published by the defendant were not confined to dealing with current events. Secondly, the overall theme of the articles, and the use of extracts from the Journal, appeared to be solely for the purpose of reporting on the revelation of the contents of the Journal as an event in itself. The defence of fair dealing for the purposes of criticism and review (Section 30(1) CDPA) also failed. The work had not already been lawfully made available to the public. Finally, the judge rejected the public interest defence set out in Section 171(3) CDPA on the basis that to succeed, specific clear public interest considerations would be required over and above those set out in the Section 30 fair dealing defences. In this case, there were none.
Reporter’s note: I am grateful to my colleagues at Bird & Bird, Nana Chan, Rachel Fetches, Zoe Fuller, Craig Giles and Ewan Grist, for assisting me in the preparation of this report.
ECJ, AG and CFI decisions and opinions can be found at http://curia.eu.int/en/content/juris/index_form.htm and the reported cases marked * from the Court of Appeal and High Court can be found at http://www.bailii.org/databases.html#ew.