|Application (and where applicable, earlier mark)|| || |
- bleaching and abrasive preparations, soaps, perfume and cosmetics (3)
- shampoos, soaps and perfumes (3) (UK)
The CFI held that there was a likelihood of confusion under Art. 8(1)(b) in respect of all of the goods applied for.
The BoA had found a likelihood of confusion between the marks and allowed the opposition, with the exception of ‘bleaching preparations and other substances for laundry use, and polishing, scouring and abrasive preparations’.
The CFI held that the BoA had correctly taken the figurative element of the mark as the dominant part since it gave the mark its distinctiveness and would be most easily remembered by consumers. The sport of polo had no connection with the goods in class 3, and thus the polo player device was highly distinctive in relation to those goods.
The CFI held that soaps had a duel function: they were used as housekeeping products as well as for beauty and personal hygiene. It followed that there was similarity between soap and bleaching preparations and other substances for laundry use, and polishing, scouring and abrasive preparations. Therefore, the likelihood of confusion found by the BoA extended to those goods.
|Application (and where applicable, earlier mark)|| || |
- leather and leather products, furs, suitcases, riding equipment, clothing and footwear (18, 25)
OVER THE BRIDGE
THE BRIDGE and other marks
- leather and leather products, furs, suitcases, riding equipment, clothing and footwear (18, 25)
OHIM dismissed the opposition under Art. 8(1)(b). The CFI upheld the decision.
Not all the opponent’s earlier marks were taken into account (only 6 of 11), because the opponent had not shown sufficient use of them.
In conclusion, the CFI followed the BoA’s line of reasoning: although the goods were identical and there was a phonetic similarity between the marks, a likelihood of confusion was reasonably excluded on the basis of the marks’ semantic and visual differences.
Société des Produits Nestlé SA v OHIM; Quick Restaurants SA(CFI; T-74/04; 22.02.06) (not yet in English)
Nestlé applied for the figurative and word mark shown below in respect of goods including processed food and light beverages in classes 29, 30 and 32. Quick Restaurants opposed, relying on the earlier mark QUICKIES registered in the Benelux and France for goods including processed foods and services for providing food and drink in classes 29, 30 and 43.
OHIM allowed the opposition under Article 8(1)(b) and the CFI dismissed the appeal, finding that there were visual, phonetic and conceptual similarities between the marks.
Visually, the targeted consumer (based in France or the Benelux) would not perceive the picture of the rabbit as a dominant element of the mark. Generally, where a mark consisted of a verbal and a figurative element, the verbal element was more distinctive because it was easier for the targeted consumer to say the word than to describe the figurative element. In this case, the size of the word corresponded to the size of the rabbit drawing. In addition, the word took up a place as important as the drawing, since it was placed in a very visible position. Further, it was known that the food industry relied on the display of happy and animated animals on its goods in order to capture a young audience, in particular children. However, as various types of animals were used for these types of products, the distinctive characters of the animals had become diluted. The rabbit drawing might therefore be perceived as a decorative element only.
Phonetically, QUICKY and QUICKIES were very similar and could even be considered identical to French speaking consumers: in French, the letter “s” was rarely pronounced when placed at the end of a word.
Conceptually, one could not leave out the possibility that French and Benelux consumers possessed a sufficient proficiency in English so as to understand the meaning of the word “quick”. Even a consumer with little knowledge of English would make a connection between the words “quick” and QUICKY. Conceptually, the conflicting marks were similar in that they both evoked the idea of rapidity.
There was a practice in the food industry for one and the same enterprise to distinguish its different lines of production by using a sub-brand, i.e. a brand deriving from a principal mark and sharing with it a common dominant element. One could not therefore leave out the risk that the targeted consumers would believe that products sold in connection with the conflicting marks derived from the same enterprise.
Registration of a “borrowed” word
Matratzen Concord AG v Hukla Germany SA (ECJ (First Chamber) ; C-421/04; 9.03.06)
Matrazen Concord filed an application with OHIM for the composite word and figurative mark MATRATZEN. Hukla successfully opposed it on the basis of its Spanish registration for the word mark MATRATZEN. In parallel with the opposition, Matratzen Concord brought an action for cancellation of the Spanish mark on the basis that the word “Matratzen” means “mattress” in German and therefore the registration was misleading. The action was rejected and Matrazen Concord appealed. The Audiencia Provicial de Barcelona asked the ECJ whether Articles 28 EC and 30 EC should be interpreted as meaning that they preclude the registration in a Member State, as a national trade mark, of a term borrowed from the language of another Member State in which it is devoid of distinctive character or descriptive of the goods or services in respect of which registration is sought. The ECJ held that Article 3(1)(b) and (c) of the Trade Mark Directive does not preclude such registration in a Member State, unless the relevant parties in the Member State in which registration is sought are capable of identifying the meaning of the term.
Trade Mark Use
Adam Opel AG v Autec AG (A.G. Ruiz-Jarabo Colomer for the ECJ; C-48/5; 7.3.06) (not yet in English)
Opel, a famous car manufacturer has used the “Opel-lightning” logo for many years. The logo is inter alia registered for toys.
Autec manufactures remote control model cars and sold a model car being a copy of Opels V8 including the registered logo on the radiator grill. The marks Cartronic® and AUTEC® AG were placed on the packaging. Opel commenced infringement proceedings.
The German Regional Court Nürnberg-Fürth referred the following questions to the ECJ:
1. Does the use of a trade mark registered also for “toys” constitute use as a trade mark for the purposes of Article 5(1)(a) if the manufacturer of a toy model car copies a real car, including the trade marks as applied to the real car?
2. If yes: is such use of the trade mark an indication of the kind or quality of the model car within the meaning of Article 6(1)(а)?
3. If yes: what are the decisive criteria to be applied in assessing whether the trade mark corresponds to honest practices in industrial or commercial matters?
4. What is the affect of the toy manufacturer applying his own recognisable trade mark to the packaging?
With regard to question 1, the A.G. was of the opinion that the use of a sign registered for toys did not constitute use as a trade mark within the meaning of Article 5(1)(a) because:
- Of its nature the model car is meant to be a detailed copy of the original. This is what the consumer expects and demands. If infringement was assumed, it would mean that the original car manufacturers would have a monopoly on the manufacturing of model cars. This would be a restraint of competition.
- The trade recognises such toys as models of real cars and does not associate them with Opel. Any association is an association between goods of different classes, i.e. toys and real cars.
The A.G. suggested the following answers to questions 2 to 4:
- The use described in question 1 is an indication as to other features of the model car in the sense of Article 6(1)(b).
- The criteria set forth in the Anheuser-Busch decision (C-245/02) as well as The Gillette Company decision (Case C-228/03) answered question 3.
- If the manufacturer applies his own recognisable mark(s) to the packaging, he would comply with the decent conventions of the trade.
Siemens AG v VIPA Gesellschaft für Visualisierung und Prozeßautomatisierung mbH (ECJ (First Chamber); C-59/05; 23.02.06)
VIPA had adopted the Siemens’ order number system for programmable controllers, for its own add-on components (for example: Siemens: 6ES5 928-3UB21 ↔ VIPA: VIPA 928-3UB21). Siemens alleged that the use took unfair advantage of the reputation of its products. At first instance the court granted Siemens’ application. This decision was set aside on appeal. Siemens then brought an appeal for ‘Revision’ before the Bundesgerichtshof which referred the following questions to the ECJ:
- Is the reputation of the “other distinguishing mark” within the meaning of Art. 3a(1)(g) of Directive 841450 taken advantage of unfairly where an advertiser adopts in identical form the core elements of a distinguishing mark of a competitor (in this case, a system of order numbers) which is known in trade circles, and refers to those identical elements in advertising?
- In determining whether unfair advantage is taken of a reputation for the purposes of Art. 3(1)(g), is the benefit to the advertiser and the consumer procured by the adoption of the identical system a relevant factor?
The ECJ held that:
- The products at issue were intended for a specialist public, which was much less likely than final consumers to associate the reputation of Siemens products with that of products distributed by VIPA.
- The products could be distinguished on the basis that VIPA used its own acronym in the first part of its order numbers, and stated in its catalogue that those numbers corresponded to those of the Siemens programme modules. This made confusion as to origin unlikely.
- Comparative advertising was designed to enable consumers to make the best possible use of the internal market and to stimulate competition between suppliers of goods and services to the consumer’s advantage. The benefits of comparative advertising must therefore be taken into account when considering whether an advertiser is taking unfair advantage of another’s mark.
- The figures and numbers forming the core element of the order number referred, not only to the nature of the product concerned, but also to its utilisation in the control system. Thus if a different core element were to be used for the defendant’s order number the users concerned would have to look in comparative listings for the order numbers corresponding with the goods sold by Siemens. The possibility that there would be restrictive effects on competition in the market for add-on components could not be excluded.
- In the circumstances of the case, a competing supplier did not take unfair advantage of the reputation of a manufacturer’s distinguishing mark which was known in specialist circles, by using in its catalogues the core element of that mark.
Assessment of damages
WWF – World Wide Fund for Nature v World Wrestling Federation Entertainment Inc (Smith J;  EWHC 184 (Ch); 16.02.06)
This was a hearing of a preliminary issue as to the basis of assessment of damages.
The dispute between the parties goes back to the 1980s. The Fund was a well known charity concerned with a broad range of environmental conservation. The name and initials WWF were extremely well known worldwide. The Federation’s core business was the organisation and promotion of live wrestling entertainment events and had, since 1983, adopted a logo being a stylised version of the letters WWF. Initially the Fund did not object to this use. However, when the Federation began applying for trade marks outside the US for the initials WWF, conflict emerged. By 1993 proceedings were being threatened in a number of countries. When the Fund obtained an interim ex parte injunction against the distributor of the Federation’s magazine in Switzerland, settlement negotiations ensued. These ultimately led to an agreement between the parties, which restricted the Federations right to use the initials ‘WWF’.
By the late 1990s, the Fund became aware that the Federation was in breach of the agreement by, among other things, owning the domain name www.wwf.com. Proceedings were issued and, in 2001, Jacob J. granted the Fund an injunction enforcing the agreement and ordered an inquiry as to what damages the Fund might have suffered as a result of the Federations’ breaches. The injunction was upheld by the Court of Appeal.
The preliminary issue in this case was whether the Fund was entitled to claim damages in the form of a reasonable payment as a quid pro quo for notionally relaxing its rights under the agreement. The major argument concerned the effect of three cases: Wrotham Park Estates Co Ltd v Parkside Homes Ltd (1974) 1 WLR 798, Attorney-General v Blake (2000) IPD December 23098 and Experience Hendrix LLC v PPX Enterprises Inc (2003) EWCA Civ 323.
Smith J. held that the court should approach the assessment of damages under the Wrotham principals as follows:
- the primary basis for assessment was to consider the sum that would have been arrived at in negotiations between the parties had each been making reasonable use of their respective bargaining positions without holding out for unreasonable amounts;
- the outcome of that negotiation must be determined by reference to the parties’ actual knowledge at the time the negotiation would have taken place;
- the fact that the innocent party would never have agreed to any such relaxation was irrelevant;
- the conduct of the wrongdoer was also irrelevant;
- the award was discretionary and would arise where damages would be an inadequate remedy and where, without such an award, the innocent party would not obtain recompense;
- the decision whether or not to award damages on this basis could take account of factors such as delay in issuing the claim.
The overriding principle was that damages were compensatory not punitive. Where a claim was based on subsequent profits the claimant would have to show that there was a reasonable prospect of connection between the breach of contract and the subsequent profits.
Smith J. stated that it was not possible to resolve the preliminary issue at this stage. There should be a damages inquiry and at that inquiry the Fund was entitled to seek damages in the form of a reasonable payment as a quid pro quo on the basis of its claim as formulated.
Uradex SCRL v Union Professionelle de la Radio e de la Télédistribution; Société Intercommunale pour la Diffusion de la Télévision(A.G. Ruiz-Jarabo Colomer for the ECJ; C-169/05; 14.02.06) (not yet in English)
Regarding cable transmissions, Council Directive 93/83/EEC on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission (the “Directive”) states that copyright and rights connected to copyright shall be administered collectively. Article 9(2) lists certain criteria relevant for establishing what organization should have the power to carry out this task where the right holders have not selected a specific organization.
The Cour de Cassation in Belgium referred to the ECJ a question relating to the extent of that power, in other words, whether the collecting society is limited to the administration of the pecuniary interests of those that the association represents or whether it also has the right to grant or refuse the dissemination of the protected works.
The A.G. was of the opinion that the legal mandate encompassed the right to authorise dissemination. If Article 9(2) of the Directive was not interpreted in that way, the aim of the Article will not be met.
If the prime aim of the Directive is to prevent cable operators being met by difficulties related to forming individual agreements regarding the rights, and to assure reasonable remuneration for the right holders, it was inevitable that the mandate also encompassed the right to grant or refuse authorisation to exploit the intellectual properties.
Thus, Article 9(2) of the Directive should be interpreted as to mean that an organization which is deemed authorised to manage the rights of a right holder who has not expressly authorised it to administer those rights also has the right to authorise the use of his works.
EPI Environmental Technologies Inc & Anr v. Symphony Plastic Technologies Plc & Anr* (Buxton, Rix & Jacob LLJ.;  EWCA Civ 3; 26.01.06)
This was an appeal from the Chancery Division ( EWHC 2945 (Ch)) against a decision that the respondent (Symphony) had not copied trade secrets used in the manufacture of a range of thin film plastic materials. By a succession of agreements and supplementary agreements the appellant (EPI) licensed Symphony to use its know how and trade marks. EPI also agreed to supply Symphony with additives to be used in the manufacture of a range of thin film plastic materials. The additive at the centre of this appeal was an additive known as DCP509. It was a term of the agreements that Symphony would not analyse the additives. EPI alleged that Symphony’s product, BD92384, was not independently derived and had been copied by analysing DCP509. The judge at first instance found that Symphony had not analysed DCP509 and had made no use of any information derived from EPI.
EPI argued that the burden of proof of independent derivation of Symphony’s product lay on Symphony, that Symphony had not satisfied that burden and that the judge was wrong to hold that independent derivation was established. The judge had therefore made an error in holding that EPI had failed to show that Symphony had analysed and copied its product. EPI relied on the fact that BD92384 was sufficiently similar to DCP509 for an inference of copying to arise. Once that inference had arisen it was up to Symphony to prove that there was no copying.
The court held that if sufficient similarity was established this placed an obligation on the defendant to explain that similarity. The court would then consider this explanation together with all of the other facts. This was a matter of evidence and did not shift the burden of proof. Further the court held that the judge at first instance made a careful and detailed discussion and weighing of the evidence. It was not a function of the Court of Appeal to embark on an issue of substantiality of copying, and a fortori of copying at all, unless the judge had misdirected himself. EPI did not establish that the judge had misdirected himself and the Court of Appeal upheld his decision.
EPI also asked the Court of Appeal to consider the judge’s decision that, since EPI had published key features of the DCP509 recipe, they had destroyed anything confidential about them. Thereby any claim in breach of confidence must fail and the no analysis clause could not prevent an analysis which yielded only public domain information. Since the Court of Appeal agreed with the judge that there was no analysis of DCP509 by Symphony these questions were purely academic and the Court of Appeal refused to consider them.
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