|Application (and where applicable, earlier mark)|| |
- Stationery, utensils, clothing, footwear, headgear
(16, 21 and 25)
- Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery (18) (Spanish mark)
In assessing the similarity of goods for the purpose of Article 8(1)(b), the nature, intended purpose, method of use, distribution channels and whether or not the goods are in competition with each other or are complementary will all be relevant considerations.The class 25 goods specified in the application (namely clothing, footwear, headgear) and those in class 18 of the earlier mark are often made of the same raw material (leather or imitation leather).However, this factor alone was not sufficient to establish that the goods are similar.
A distinction had to be made between the first group of class 18 goods (leather and imitation leather goods not included in other classes) and the second group of class 18 goods forming the remainder of the specification.Although the second group of goods were generally distributed via different channels to the class 25 goods, by contrast, the first group of goods included handbags, purses and wallets which were often sold via the same distribution channels as goods in class 25. Such goods are often coordinated in a particular way depending on the particular consumer and the purpose for which the “look” is assembled. The CFI held that goods designated by the figurative mark in class 25 showed a degree of similarity, which was more than slight, to those goods in the first group of class 18.
The BoA was wrong to find that there was no likelihood of confusion solely on the basis of a comparison of the goods concerned. The decision was annulled.
Similarity of goods and well-known unregistered marks
Mülhens GmbH & Co. KG v OHIM; Conceria Toska Srl (CFI (Second Chamber); T-263/03; 11.07.07); Mülhens GmbH & Co. KG v OHIM; Minoronzoni Srl (CFI (Second Chamber); T-150/04; 11.07.07); Mülhens GmbH & Co. KG v OHIM; Mirco Cara (CFI (Second Chamber); T-28/04; 11.07.07) – T-263/03 and T-28/04 not yet in English
In three applications involving the same opposing party, the CFI upheld the BoA’s decision and held that there was no similarity between the applicants’ marks and the earlier mark under Article 8(1)(b) and that, as the earlier mark was unregistered, it was not entitled to well-known mark protection under Article 8(5).
The following applications were made by Italian companies:
- Conceria Toska Srl applied to register the word mark “TOSKA” for goods in class 18 such as bags, leather and imitation leather bags and accessories.
- Minoronzoni Srl applied to register the following figurate mark for goods in class 18 including bags, handbags, travelling bags and leather accessories and class 25 including clothing for men, women and children in general:
Mirco Cara applied to register the figurative mark shown below for goods in class 16 including books, printed material and class 18 including bags, leather and imitation leather bags and accessories. The application in class 25 had been rejected by the BoA on the basis that there was a risk of confusion in the relevant market despite the products having weak degree of similarity.
Mühlens opposed each application on the basis that its unregistered word mark TOSCA was allegedly well-known in Germany for “perfumes, eau de toilette, eau de Cologne, body lotions, toilet soaps, and shower gel”.
The CFI found that, although the goods may be aesthetically complementary in that the public is accustomed to fashion industry products being marketed under perfume trade marks and appearing together in fashion magazines, this was not sufficient to compensate for the absence of similarity between the goods. It did not establish, for the purposes of Article 8(1)(b), a connection between perfumery goods and the leather/clothing goods so as to mean that one is indispensable or important for the use of the other so that consumers would consider it ordinary and natural to use those goods together.
Translated evidence submitted out of time
Flex Equipos de Descanso, SA v OHIM; Leggett & Platt, Inc (CFI (Fourth Chamber); T-192/04; 11.07.07)
Leggett & Platt, Inc. applied to register the word mark LURA-FLEX, in respect of bedding and upholstery in classes 6 and 20.
Flabesa SA (subsequently taken over by Flex Equipos de Descanso, SA) opposed this application on the basis of two earlier registered Spanish figurative marks incorporating the word FLEX:
Flabesa submitted that the CTM application should be dismissed under Article 8(1)(b) and Article 8(5) as there was a likelihood of confusion between the marks.
Flabesa filed Spanish documents in support of the reputation of FLEX with no English translation. Leggett & Platt contended that these documents could not be taken into account as they had not been translated into the language of the opposition proceedings. Although a translation was provided by Flabesa after the expiry date set by the Opposition Division, this evidence was not taken into account and the Opposition Division rejected the opposition on the basis of differences between the signs, and lack of evidence demonstrating the enhanced distinctiveness of the earlier trade marks.
Flabesa’s appeal was dismissed by the BoA. The BoA rejected arguments based on Article 8(5) as Flabesa did not provide a translation until after the expiry of the four-month period set by the Opposition Division.
Flabesa further appealed to the CFI which allowed the appeal and annulled the contested decision.
The CFI held that the wording of Article 74(2) gives the BoA a wide discretion to decide whether or not to take account of the evidence that was submitted out of time. It is particularly likely to be justified if the material is likely to be relevant to the outcome of the opposition (the Opposition Division in this case expressly indicated that it might not have concluded there was no likelihood of confusion if the applicant had submitted the necessary translations). Consequently, the BoA had erred in law by declining from the outset to exercise its discretion in deciding whether or not to take account of the evidence and documents on the sole ground that this was automatically precluded owing to submission out of time before the Opposition Division.
Taking unfair advantage of/causing detriment to distinctive character
Intel Corporation Inc (“Intel”) v CPM United Kingdom Limited (“CPM”)* (LJJ Mummery, Keene & Jacob;  EWCA Civ 431; 15.05.07)
Intel, owner of a number of UK and CTM trade mark registrations for computers and computer-related products consisting of, or including, the word INTEL, applied for a declaration of invalidity of CPM’s mark INTELMARK, which was registered later in time for marketing and telemarketing services.
The facts were established by Patten J on first appeal from the Trade Marks Registry: the INTEL mark had a “huge” reputation; the parties’ marks were registered for goods and services dissimilar (or dissimilar to a substantial degree); the use of INTELMARK did not suggest a trade connection between CPM and Intel; INTEL was an invented word; the INTEL mark was unique, i.e. not used for any other goods and services other than its own and those of CPM; and INTEL would be “brought to mind” by the average consumer when faced with CPM’s mark.
The CoA examined whether the fact that consumers “bring to mind” a well-known mark when they see a sign or subsequently registered mark was enough to preclude registration and/or use of the later mark under Articles 4(4)(a) and 5(2) of the Trade Marks Directive.
Intel’s submissions were based on the “dilution” theory summarised in Adidas-Salomon v Fitness World C-408/01  FSR 21. In Adidas-Salomon it was held that to come within the scope of Article 5(2) the mark and the sign should be similar enough that the relevant public “establishes a link” between the sign and the mark.
The CoA decided to refer three questions to the ECJ.
By its first question the CoA asked essentially whether the facts of the case established by Patten J were sufficient in themselves to establish (i) “a link” within the meaning of Adidas-Salomon and/or (ii) unfair advantage/detriment within the meaning of Article 4(4)(a).
If the answer to the first question is no, the CoA asked what factors a national court should take into account in deciding whether such is sufficient (specifically, what significance should be attached to the goods/services of the later mark).
For its final question the CoA asked what is required in order to satisfy the condition of detriment to distinctive character: (i) does the earlier mark have to be unique; (ii) is a first conflicting use sufficient to establish detriment; and (iii) does the element of detriment require an effect on the economic behaviour of the consumer?
Jacob LJ, giving the leading judgment for the CoA, gave his own opinion on the three questions.
Jacob LJ concluded the answer to the first question should be “no” since a link requires more than such a tenuous association between the two marks if it is to entitle the trade mark owner to a monopoly in all or virtually all goods and services.
In response to the second question, Jacob LJ though the following factors should be taken into account: (a) whether, having regard to the nature of the goods and services of the later mark, an average consumer would consider there is an economic connection between the owners of the two marks; and (b) whether the distinctiveness of the earlier mark is really likely to be affected by the use of the later mark.
Finally, in answer to the third question, Jacob LJ considered that this depended on “a realistic global appreciation of the position” taking into account a non-exhaustive list of factors, and emphasising the fact that the harm or prospect of harm must be real and tangible.
esure Insurance Ltd v Direct Line Insurance Plc* (John Lindsay J;  EWHC 1557 (Ch); 29.06.07)
Esure applied to register as a trade mark a representation of a computer mouse on wheels for insurance and financial services. Direct Line, who had an earlier well-known registered trade mark consisting of a telephone on wheels for the same services, opposed esure’s application under Sections 5(2)(b) and 5(3). The opposition was successful and esure appealed this decision claiming that the Hearing Officer had made a number of errors of principle.
The appeal was dismissed. Although the appeal succeeded in relation to Section 5(2)(b), it failed as to Section 5(3) and hence Lindsay J held that the Hearing Officer’s conclusion that esure’s mark should not be registered should stand.
Lindsay J first considered the question of similarity under Section 5(2)(b)/Article 4(1)(b). He considered Lewison J’s comments made in L’Oreal v Bellure  ETMR 1, and held that there was the same form of threshold, albeit a low one, in relation to the similarity of marks; accepting that without similarity there could be no infringement. There was a three stage test for determining this threshold: The first stage required forming an overall impression of the marks, the second stage involved examining the types of relevant confusion (i.e. those in Sabel) and the third stage, where the threshold arises, required considering whether these overall impressions were such that one could reasonably say that a likelihood of confusion could not thereby be created. Lindsay J considered that as a matter of first impression, Direct Line had overcome this low threshold test; the relevant services were identical and both marks were indicators of a means of making contact with the parties. Once the test was passed, the existence of a consequential likelihood of confusion would need to be considered.
Lindsay J determined that the Hearing Officer had made an error of legal principle in concluding that average consumer might have been confused into thinking that the marks were used by related businesses since no evidence was submitted before the Hearing Officer on which he could have based this conclusion. Consequently, Lindsay J was permitted to reach his own conclusion on the likelihood of confusion. He found that there were no aural similarity between the marks and there were clear visual differences such that an average consumer would regard the companies as more likely to be competitors rather than related businesses. This was supported by the conceptual element in which one business could be accessed by telephone and the other online. Accordingly, Lindsay J held that there was no proven likelihood of confusion and allowed esure’s appeal under Section 5(2)(b).
However, Lindsay J held that the Hearing Officer had not made an error of principle in his conclusion that use of the esure’s mark would be detrimental to/take unfair advantage of the distinctive character of Direct Line under Section 5(3). The Hearing Officer had accepted that the adoption of esure of a computer mouse on wheels took unfair advantage by trading off and exploiting Direct Line’s reputation in its mark. As to detriment, the use by esure of the computer mouse on wheels suggested that esure offered similar benefits to Direct Line and blurred Direct Line’s unique identity in the insurance market.
Comparative advertising and freedom of speech
Boehringer Ingelheim Limited and others v Vetplus Ltd* (LJJ Pill, Longmore & Jacob;  EWCA Civ 584; 20.06.07)
Both parties manufactured and sold nutritional supplements for dogs. Boehringer’s product was called Seraquin; VetPlus’ product, Synoquin. Boehringer was refused an interim injunction by the High Court restraining the publication of a comparative advertisement in which VetPlus claimed that Boehringer’s Seraquin did not contain anywhere near as much of a certain active ingredient as is stated on its label. On the facts, although it was uncertain what the final position on the evidence would be, it was not unreasonable to hold the view that the label claim was not met.
Boehringer accepted that the rule against prior restraint established in Bonnard v Perryman  2 Ch 269 (i.e. that the courts will not retrain the publication of a defamatory statement where the defendant says he is going to justify it at the trial of the action, except where the statement is obviously untruthful and libellous) prevented it from seeking an interim injunction to restrain the alleged malicious falsehood and libel. However, Boehringer submitted that this rule does not apply to trade mark infringement; instead the court should apply the normal rule in American Cynamid Company v Ethicon Limited  AC 396.
Jacob LJ, giving the leading judgment for the Court, held that the rule in Bonnard v Perryman did not apply to trade mark infringement. A trade mark infringement action is a claim to protect a property right; it is not merely a claim to protect the claimant’s reputation. Furthermore, although there is an important issue of free speech involved in comparative advertising, other complex factors are also involved, in particular that the defendant has a commercial interest in diverting trade to himself.
Jacob LJ further held that he saw no reason why the “general threshold” for the purpose of Section 12(3) HRA 1998 established in Cream Holdings Ltd v Banerjee  1 AC 253, namely that the claimant will probably succeed at trial, should not be the general rule for trade mark infringement in a comparative advertising case. Unless a trader can show that it is more likely than not that a disparagement is wrong and misleading, then his rival, both for his own commercial interests and in the interests of the public, ought to be free to say that which he honestly believes. Jacob LJ rejected the submission that this was a case where the potential adverse consequences of disclosure (namely damage to reputation) would be “particularly grave”.
As Boehringer had not shown that it was more likely to succeed at trial than not, Jacob LJ concluded that the interim injunction should not be granted.
Red Dot Technologies Limited v Apollo Fire Detectors Limited (David Richards J;  EWHC 1166 (Ch); 24.04.07)
The parties were manufacturers of fire alarm systems. Apollo provided a chart to its existing customers and fire control panel manufactures which compared its products with products of Rafiki Fire Protection Limited, a wholly owned subsidiary of Red Dot. The chart demonstrated that Apollo had a wider product range.
Red Dot was the registered proprietor of the UK registered trade mark RAFIKI registered in class 11 for, among other things, fire alarm apparatus, equipment, installations, instruments and systems. Red Dot issued proceedings for trade mark infringement under Sections 10(1) and 10(3). Red Dot submitted that because the chart was misleading and did not comply with the Misleading Advertisements Directive 84/450, no defence was available under Section 10(6). Since the trial was not expected to take place for a further three or so weeks, Red Dot also applied for an interim injunction restraining Apollo from publishing, distributing or using the chart.
Apollo submitted that the conventional test for deciding whether an interim injunction should be granted for a seriously arguable case (as laid down in American Cynamid Company v Ethicon Limited  AC 396) is displaced by Section 12(3) of the Human Rights Act 1998, since the grant of the injunction sought by Red Dot would affect Apollo’s right to freedom of expression under Article 10 of the ECHR.
Richards J considered that Section 12(3) HRA 1998 was applicable to this application as comparative advertising is a form of expression which is almost certain to involve the use of another’s trade mark and is in the public interest. Richards J summarised the approach in Cream Holdings Ltd v Banerjee  1 AC 253 as follows: the applicant must satisfy the court that “he will probably (more likely than not) succeed at trial” before an interim injunction is granted but in particular circumstances a lesser degree of likelihood would suffice where a short-lived injunction is needed to enable the court to have a fully effective hearing of the application. Richards J considered that the present case was an example of an application where the court must adopt a lesser degree of likelihood for the simple reason that there was insufficient time available to reach a proper view on whether Red Dot would probably succeed at trial.
Richards J referred to the judgment in O2 Holdings Limited v. Hutchison 3G Limited  EWCA Civ 1656 in which the CoA held that whether use of a competitor’s trade mark in comparative advertising fell within Sections 10(1) or 10(2) was unclear and referred the matter to the ECJ. The final answer as to whether Red Dot could rely on Section 10(1) therefore depended on the answer to be given by the ECJ. However, Jacob LJ’s view that use in comparative advertising is not within Sections 10(1) of 10(2) (provided that is does not cause confusion or otherwise jeopardise the function of a trade mark) was a powerful one, and therefore Richards J held that, absent any further legal developments, he was not satisfied that Red Dot would be likely to establish a right to an injunction on the basis of infringement under Section 10(1).
Richards J was unable to establish at this stage whether the position under Section 10(3) would be sufficiently different to that under Section 10(1). Furthermore, he was unable to form a view of the respective merits of the parties’ cases on whether or not Apollo had a defence under Section 10(6). Given these uncertainties, Richards J held that Red Dot could demonstrate a sufficient likelihood of success to entitle the court to grant an injunction to restrain the use of the chart.
In deciding whether, on the balance of convenience, it was appropriate to grant the injunction sought, Richards J found the balance of prejudice pretty even. However, the fact that the chart was already in use and, more importantly, the fact that an injunction would be an interference with Apollo’s right to freedom of expression, tipped the balance against the grant of an injunction.
Andrew Knight v Beyond Properties, Discovery Communications and Ots* (David Richards J;  EWHC 1252 (Ch); 24.05.07)
Richards J dismissed Knight’s claim against programme makers Beyond, and the operator of the Discovery Channel, for passing off in respect of his ‘Mythbusters’ books for children. Although Knight had established a reputation for his books, at the time of the broadcast of the similarly titles programmes there was not sufficient goodwill to establish a claim for passing off.
Andrew Knight published three fictional books for children between 1991 and 1996, each with ‘Mythbusters’ in the title. In these books, a ‘wacky team’ set out to explore and investigate UFOs, monsters, aliens and the like. There were no sales of these books after 1996. In 2002, Beyond made a pilot series of three factual programmes entitled ‘Mythbusters’, the first of which was broadcast in 2003. The programmes were aimed at the ‘lads and Dads’ market and investigated items such as jet propelled cars and whether mobile phones could be linked to causing fires at petrol stations.
Richards J held that the name ‘Mythbusters’ was in one sense descriptive in that it tells the reader/viewer that the book/programme concerns people who investigate and disprove ‘myths’. However, it was not a word which would be used in ordinary speech to describe a book, person or activity, and had been adopted by Knight as a distinctive title for his books. Accordingly Richards J held that the name was capable of generating goodwill for the purposes of passing off.
Following a careful analysis of Knight’s commercial activities in the UK from 1991 to 1996, which included sales of the books, receipt of fan mail and brief TV appearances, Richards J concluded that Knight had established a reputation and goodwill in the name ‘Mythbusters’. However, although there was evidence that a few people who had previously written fan letters did remember ‘Mythbusters’, Richards J concluded that by 2003 there was insufficient goodwill in the UK for the claim to succeed.
OTHER IP DECISIONS
Obligation of operators of electronic communications networks to provide details of subscribers
Productores de Música de España (Promusicae) v Telefónica de España (Opinion of A.G. Kokott for the ECJ; C-275/06; 18.07.07) – Decision not yet in English
Productores de Música de España (Promusicae), an association representing producers and publishers of music recordings, brought proceedings in Spain against a Spanish internet service provider, Telefónica España SAU, to obtain the names and addresses of certain subscribers who it suspected of illegal filesharing.
The Commercial Court in Madrid ordered Telefónica to supply this information to Promusicae. Telefónica argued that, under Article 12 of (Spanish) Law 34/2002 on Information Society Services and Electronic Commerce, it was prohibited from supplying this information to the Spanish Court. Telefónica claimed that operators of electronic communications networks and services could only retain and provide traffic data to be used in the context of criminal investigations or to protect public safety and national defence. The Spanish Court considered that if this interpretation was correct, the provision in question would be incompatible with the following data protection Community laws: (i) the E-Commerce Directive (2000/31/EC); (ii) the Directive on Copyright and Related Rights in the Information Society (2001/29/EC); and (iii) the Directive on the Enforcement of Intellectual Property Rights (2004/48/EC) and the court referred this question to the ECJ.
The AG was of the opinion that it is compatible with Community law for Member States to exclude operators of electronic communications networks and services from being required to make available personal data relating to connection and traffic information in the context of a civil action.
The AG considered that the Data Protection Directive (95/46/EC) and the E-Privacy Directive (2002/58/EC) prevailed over the directives cited by the Spanish Court. The AG clarified that this did not indicate that these data protection laws had precedence over the directives cited by the Court, but that it was more a question of creating a relative balance between the directives and data protection.
Commission involvement in complaints involving anti-competitive practice of IP rights management in Greece
AEPI Elliniki Etaireia pros Prostasian tis Pnevmatikis Idioktisias AE v The Commission (CFI; T-229/05; 12.07.07) – Decision not yet in English
AEPI, a company which collectively manages musical intellectual property rights in Greece, lodged a complaint with the Commission alleging infringement of Articles 81 and 82 EC by three companies which were responsible for the management of related rights of singers, instrumental musicians, record companies and producers. AEPI claimed that these companies held a monopoly in Greece over related rights in their respective sectors and were acting in collusion and were abusing a dominant position by charging high fees to radio and television broadcasters. The Complainant further sought a declaration that the policies of these three copyright collection societies were unlawful.
The Commission rejected this complaint and refused to investigate on the grounds of a lack of EC interest in the matter. As all the parties to the dispute were Greek and operating in Greece, the Commission considered that the Greek competition authority would be a more appropriate authority to investigate the matter.
The CFI confirmed that it had no power to declare that the policies of the three copyright collection societies were unlawful; its authority was limited to quashing the Commission’s decision.
The CFI held that the Commission’s decision was sufficiently reasoned and was not manifestly wrong in finding that the practices by the Greek collection societies did not infringe Articles 81 and 82 EC. The CFI agreed with the Commission that the Complainant could seek recourse in the Greek courts or before the Greek competition authority. The CFI considered that the Complainant had failed to prove any impact of excessive copyright licensing fees on cross-border trade.
Reporter’s note: We are grateful to our colleagues at Bird & Bird for their assistance with the preparation of this report: Zoe Aldam, Taliah Davis, Matilda Ekman, Ning-Ning Li, Tom Snaith and Brooke Whitaker.
ECJ and CFI decisions can be found at http://curia.eu.int/en/content/juris/index_form.htm and the reported cases marked * can be found at http://www.bailii.org/databases.html#ew.