Costs of proceedings that are devoid of purpose
Lichtwer Pharma AG v OHIM (CFI; T-32/04; 16.11.06)
Lichtwer Pharma (“Lichtwer”) applied to register the mark LYCO-A for goods in Classes 5, 29 and 30. The following oppositions were filed:
1. By Queisser Pharma GmbH based on earlier mark for LYCO PROTECT. The opposition was dismissed and no appeal was filed.
2. By Laboratiore L. Lafon based on the earlier mark LYOC. The opposition was dismissed.
3. By Medicom Pharma AG based on the earlier mark LYCO Q10. The opposition was upheld and no appeal was sought.
Laboratoire L. Lafon filed an appeal against the decision to dismiss its opposition. Following confirmation that the Medicom Pharma decision had become definitive, Lichtwer filed an observation that the appeal proceedings had become devoid of purpose.
The BoA held that (i) the appeal proceedings had indeed lost their purpose and (ii) Lichtwer would necessarily be the losing party in these proceedings since the application had been rejected ex tunc, albeit in different proceedings. The BoA therefore ordered Lichtwer to pay the fees and costs of the opposition and appeal proceedings.
Lichtwer appealed and sought an annulment of the operative part of the decision. The CFI allowed the appeal.
Article 81(4) provides the BoA with discretion as to the allocation of costs where a case does not proceed to judgment. However, it is for the Community Court to assess whether the BoA has exceeded the limits of its discretion and used the discretion in a manifestly wrongful manner.
Although an upheld opposition deprives parallel proceedings of their purpose, it does not in any way make it possible to determine which party in the parallel proceedings would be unsuccessful. Identification of the unsuccessful party may only be based on the purpose and factual and legal framework of those proceedings. The CFI held that the BoA had exceeded the limits of its discretion and the operative part of the contested decision was annulled.
De Landtsheer Emmanuel SA v Comité Interprofessionnel du Vin de Champagne and Veuve Cliquot Ponsardin SA (A.G. Mengozzi for the ECJ; C-381/05; 30.11.06)
The Brussels Court of Appeal (the “BCA”) referred a number of questions to the ECJ for a preliminary ruling on the interpretation of Article 2(2a) of Directive 84/450 EEC on misleading and comparative advertising.
In May 2002, Comité Interprofessionnel du Vin de Champagne (“CIVC”) and Veuve Cliquot Ponsardin SA (“Veuve Clicquot”) brought an action for unlawful comparative advertising against De Landtsheer Emmanuel SA (“De Landtsheer”), a Belgian marketer and producer of beer. De Landtsheer had the preceding year launched a beer called “Malheur Brut Réservé” which allegedly had been brewed using a process based on the production method of sparkling wines. In its advertisements, De Landtsheer had referred to the new product as (i) the first BRUT beer in the world, (ii) “Champagnebeer”, (iii) having the characteristics of sparkling wine and Champagne and (iv) a light beer produced according to the traditional method. With the exception of (i), judgment was given in favour of the claimants and the defendant was consequently barred from using these and/or similar references in its marketing of the product. The defendant appealed to the BCA and the claimants cross-appealed, arguing that De Landtsheer was in breach of unlawful comparative advertising as outlined in Article 2(2a) of the Directive.
The BCA asked the ECJ whether the definition of comparative advertising covers advertisements in which the advertiser refers only to a type of product, so that in those circumstances such advertisements must be regarded as referring to all undertakings which offer that type of product, and each of them can claim to have been identified. Article 2(2a) defines “comparative advertising” as “…any advertising which explicitly or by implication identifies a competitor or goods or services offered by a competitor.” The A.G. stated that the reference does not have to identify each undertaking which offers that type of product or related goods to fall within the scope of Article 2(2a). However, a reference may have the effect of implicitly identifying a competitor or the goods offered by that competitor within the meaning of Article 2(2a) only if, in the light of all of the facts of the specific case, it enables an average consumer who is reasonably well informed and reasonably observant and circumspect to conjure up the image of one or more specific undertakings which offer that type of product or related goods.
The BCA also requested information in relation to what factors should be taken into consideration when establishing whether a competitive relationship exists between the advertiser and the undertaking to which the advertisement refers, to which the A.G. noted that in order to establish whether such a relationship is present, the goods or services which that undertaking offers must be taken into consideration. It must be established that the advertiser and that undertaking are actually or potentially in competition in relation to some part of the range of products or services each offers. It would be sufficient if there is a degree of demand substitutability, albeit limited, between a product or service of the advertiser and a product or service of the other undertaking.
The A.G. further clarified that advertising which, although containing a comparison, does not fall within the scope of Article 2(2a) must, therefore, be assessed by reference to the applicable national legislation. This excludes the transposition of the abovementioned provisions, and the other provisions of Community law which may be relevant.
Finally, the BCA queried whether Article 3a(1)(f) meant that any comparison between products that do not have designation of origin and products with designation of origin is lawful. The A.G. opined that comparative advertising is only lawful if it refers to another product with the same designation of origin.
O2 Holdings Ltd and O2 (UK) Ltd v Hutchison 3G Ltd* (Jacob L.J.; Mummery L.J.; Staughton J.;  EWCA CIV 1656; 5.12.06)
This is an appeal from a first instance decision of Lewison J.
O2 Holdings Limited (O2) brought an action against its competitor, Hutchinson 3G Limited (H3G), in relation to H3G’s television advertisement which compared its mobile phone service to O2’s mobile phone service. The advertisement referred to O2 and featured images of bubbles. O2 commonly uses images of bubbles in relation to its products and has a number of registered trade marks for images of bubbles (although these were not the images featured in the advertisement). O2 alleged infringement of its registered trade marks.
In the first instance, Lewison J found that:
1. the use of the bubbles images in the advertisement constituted use in a trade mark sense, and that the use could still be infringing even if a trade mark is used to indicate that the origin of goods or services is the proprietor of the mark;
2. the advertisement complied with Article 3(a)(1) of the Misleading Advertising Directive (84/450) as amended by the Comparative Advertising Directive (97/55) (CAD); and
3. such compliance provided a defence as being within Article 6(1)(b) of the Trade Marks Directive (1989/104) (TMD).
The Court of Appeal, in a judgment delivered by Jacob LJ, commented that the case required a decision based upon the philosophy of how competitive the law allows European industry to be. Accordingly, it stayed its decision pending receipt of preliminary rulings from the ECJ on three particular questions, although it provided its views on each of those questions.
On the issue of whether H3G infringed O2’s trade marks, the Court of Appeal was not clear on this issue and therefore referred the following question to the ECJ:
Where a defendant in the course of trade uses a sign in a context purely for the purpose of comparing the merits (including price) of his goods or services with those of the trade mark owner and in such a way that it cannot be suggested that the essential function of the trade mark to guarantee the trade mark as an indication of origin is in any way jeopardised, can his use fall within either (a) or (b) of Article 5.1 of Directive 89/104?
Jacob LJ’s view was that the answer to this question is ‘no’, principally for the reason that the defendant is not using the mark to indicate the trade origin of his goods or services, nor even to indicate that he is dealing in those of the trade mark owner.
On the issue of whether H3G would have a defence to a finding of infringement, the Court of Appeal found that Article 6(1)(b) of Directive 89/104 is a defence covering comparative advertising as long as the advertising is in accordance with honest commercial practices (which in this context, means compliance with Article 3(a) of CAD). Accordingly, it is not a freestanding defence independent of CAD, but the Court accepted H3G’s argument that compliance with CAD provides a defence to trade mark infringement.
Compliance with Article 3(a) of CAD
On appeal, O2 argued that Recital 14 to CAD meant that to comply with CAD, a defendant would have to show necessity or indispensability in its use of its competitor’s mark. O2 argued that on the facts, 3G did not need to use the bubble images. On this issue, H3G argued that there was no such requirement of necessity.
The Court of Appeal was not sure of the correct position and accordingly referred the following question to the ECJ:
Where a defendant uses, in a comparative advertisement, the registered trade mark of another, in order to comply with Article 3(a) of Directive 84/450 as amended, must that use be ‘indispensable’ and if so what are the criteria by which indispensability is to be judged?
Jacob LJ’s view on the above question was that the answer is ‘no’. He gave a variety of reasons, including that:
1. a contrary answer would be inconsistent with the principle of construction laid down in Toshiba, Case C-112/99 and Pippig, Case C-44/01, namely that ‘the conditions required of comparative advertising must be interpreted in the sense most favourable to it’;
2. he could not think of any rational legal rules for the indispensability test proposed, as, after all, no-one has to advertise comparatively at all; and
3. the wording of CAD is not consistent with a restrictive interpretation or an overriding requirement of necessity.
Finally, O2 argued that CAD does not permit the use of a confusingly similar mark. Accordingly, Jacob LJ referred the following related question to the ECJ:
In particular, if there is a requirement of indispensability, does that requirement preclude any use of a sign so similar to the registered trade [mark] as to be confusingly similar to it?
Jacob LJ’s view was that he ‘could not see any reason why a requirement of necessity should include within it a requirement that the mark can only be used in a comparative advertisement exactly as registered’.
Trade Marks – criminal proceedings
R v Valentine* (Scott Baker L.J., Holland and Loraine-Smith J.J.;  EWCA Crim 2717; 10.11.06)
In October 2004, Mr Valentine (the Appellant) pleaded guilty to a conspiracy to supply counterfeit Diazepam, and two conspiracies to contravene Section 92 of the Trade Marks Act 1994 and Section 8 Medicines Act 1968 in relation to counterfeit Viagra and steroids. Industrial tablet presses, labels, packaging machines and boxes of counterfeit pills bearing the mark VIAGRA had previously been found by police during raids at premises in Wembley and Watford.
On the basis of documentation found during the raids, it was calculated that the Appellant and his co-accused could produce 500,000 fake tablets per day. In addition to a five and a half year prison sentence, Mr Valentine was ordered in confiscation proceedings to pay £1,216,940.63 (with 7 years imprisonment in default of payment). The prosecution had made assumptions under Section 72AA Criminal Justice Act 1988 and Section 4(1) Drug Trafficking Act 1994 that the Appellant had concealed assets of £1,225,000. The assumptions were based on the scale of the production of the drugs and his offer to pay £1,225,000 in cash for a house the day before his arrest. The judge rejected the Appellant’s contention that he was in fact intending to buy the house to sell on immediately. However, being sceptical about the Crown’s own figures, the judge found that Mr Valentine had hidden assets of £800,000 (reducing the £1.25m by a third).
Mr Valentine appealed on the basis that there was substantial injustice in the judge’s finding. The main issue on appeal was whether the Appellant’s £1.25m cash offer for the house was sufficient evidence that he had such a sum at the time. The CoA dismissed the appeal, holding that the judge’s reasoning was sound. The reduction by a third had been sufficiently generous, especially as the Appellant had not produced any credible alternative estimate of his assets. Mr Valentine also appealed the length of the prison sentence in default of payment, arguing that 7 years was excessive. He lost on this ground as well, since this figure had already been reduced by the judge from a possible 10 years.
Trade Marks – transfer of mark
My Fotostop Ltd v Fotostop Group Ltd* (Miss S Prevezer QC sitting as a Deputy Judge;  EWHC 2729 (Ch); 06.11.06)
The parties were in dispute about the terms of an asset sale agreement made between them under which the claimant sold its business and the majority of its assets to the defendant. Under a clause in the agreement, the claimant was bound to transfer to the defendant legal title in a figurative CTM “1 Hour Photos”, following which the claimant was entitled to receive £100,000 plus interest (the sum being held in escrow). If the claimant did not transfer the mark, the defendant was entitled to the money.
The defendant argued that a purported assignment of the mark was not ‘duly executed’ and therefore not effective, as it had not been signed by the defendant. The claimant submitted that, in the context of the agreement, ‘duly executed’ meant duly executed by it alone. The defendant further argued that there had been no valid assignment of the mark in the first place from a third party transferor to the claimant, as there was no transfer of the whole of the undertaking within the meaning of Article 17(2) of Regulation 40/94.
The Deputy Judge adopted a common sense approach to the meaning of “whole of the undertaking” within Article 17(2). If there was a transfer of the whole of an undertaking, then the IPRs would be transferred with it. This meant that even absent written formalities, the trade marks ‘follow the business’. Therefore, even if the third party transferor failed expressly to transfer the legal title of the trade mark to the claimant, on the facts the ‘whole undertaking’ had been transferred, which included the legal title in the trade mark. This was supported by the evidence, which showed a clear intention by the parties to included IPRs in the transfer. On the facts, the IPRs were the main assets of the business and were clearly sold as part of the sale. Accordingly, it was held that the claimant had validly acquired the trade mark.
The Deputy Judge further decided that the subsequent assignment from the claimant to the defendant had also been validly executed, with the result that the claimant was entitled to the sum in escrow.
Reporter’s note: We are grateful to our colleagues at Bird & Bird for their assistance with the preparation of this report: Nick Aries, Taliah Davis, Emily Forsyth and Emilia Linde.
ECJ and CFI decisions can be found at and the reported cases marked * can be found at .