Decisions of the CFI and ECJ
|Application (and where applicable, earlier mark)|| |
Leather goods; animal skins; luggage, umbrellas, whips; fabrics and textiles; bed and table linen; clothing, shoes, headgear (18, 24, 25)
Clothing: tights, stockings; hats, caps; shoes (25)
The BoA’s decision was annulled to the extent that it had rejected Gagliardi’s application in relation to shoes and headgear within class 25, and to goods in classes 18 and 24 under Article 8(1)(b). The BoA had gone too far in rejecting the application in relation to those goods, since the opposition related specifically to clothing only.
Regarding clothing, Norma had proved sufficient use of the earlier mark in relation to women’s tights. However, this only constituted proof of use for those specific goods and other underwear for women (e.g. stockings and socks), rather than for clothing in general (the category ‘clothing’ being so heterogeneous as to be made of up free standing sub-categories).
Despite the fact that the applicant had specifically disclaimed the goods for which Norma had cited proof of use (i.e. tights and stockings etc.), the goods of each party were held to be similar. The marks were also visually and orally similar. There was therefore a risk of confusion in relation to clothing on the part of the relevant consumer.
|Application (and where applicable, earlier mark)|| |
Non-alcoholic drinks; rum, rum liqueurs and aguardientes (32, 33)
Umbrellas and parasols; clothing, footwear and headgear; non-alcoholic beverages; wines and spirits (18, 25, 32, 33)
The CFI overturned the BoA’s decision and found that there was a likelihood of confusion under Article 8(1)(b) between the marks.
The relevant public for the purposes of assessing likelihood of confusion between the two marks was the average consumer in the EU. However, since the words “venado” (meaning ‘deer’) and “venado especial” were Spanish, particular importance was conferred on the average Spanish-speaking customer’s perception of the marks.
The CFI found that there was significant visual similarity between the conflicting marks. The dominant feature of the marks was found to be the representation of a deer’s head facing forward in a circle or a medal and the word element in the applicant’s mark was deemed to be less dominant. Phonetically, there was no reason why a Spanish-speaking consumer would associate the earlier mark with the word “jägermesiter” rather than the words “deer” or “venado”. Finally, the CFI decided that the marks were conceptually similar. The Spanish consumer would not perceive the term “venado” as independent but as a direct reference to the figurative element of the marks.
The CFI agreed with the BoA that the goods were to a large extent identical and considered that they were very similar as to the remainder. The CFI held that the differences between the marks were not sufficient to eliminate a likelihood of confusion on the part of the relevant public.
|Application (and where applicable, earlier mark)|| |
- chocolate etc (5,29,30,32 and 33)
(National trade mark registered in Germany)
salted biscuits (30)
The CFI upheld the decision of the BoA that there was no likelihood of confusion between the marks within the meaning of Article 8(1)(b).
Due to the difference in the number of letters and syllables contained in each mark, there was a visual difference between the marks. However, there were also similarities visually and phonetically; both marks consisted of the same letters in the same order (“f”, “e”, “r” and “o”) and both started and finished with the same letters. As neither mark had a meaning to the relevant public, a conceptual comparison was not relevant.
The CFI noted that the products sold under the two marks were not substitutable and would normally be consumed at different times. Salted biscuits would normally be consumed as a pre-dinner snack, whereas the confectionary would normally be consumed as an after dinner sweet.
The CFI held that there was no risk of confusion as to the origin of the products. Although both types of products could be purchased at the same locations (snack bars, cinemas, gas stations), a wide range of products would normally be sold at these venues without causing confusion as to the origin of the products.
Any distinctive character that the earlier mark may have gained was not sufficient show a likelihood of confusion.
OHIM v Celltech R&D Ltd (A.G. Sharpston for the ECJ; C-273/05P; 14.12.06)
Celltech applied to register CELLTECH as a CTM for various medical, veterinary and scientific goods and services in classes 5, 10 and 42. OHIM rejected the application.
The BoA dismissed Celltech’s appeal and held that the word CELLTECH would be perceived by the relevant consumer as designating activities and products in the field of cell technology.
Celltech appealed to the CFI which allowed the appeal. It concluded that the BoA had failed to establish that the mark taken as a whole would not allow the target public to distinguish the applicant’s goods and services from those having a different commercial origin. Accordingly, the CFI held that the BoA had not established that the mark was prevented from registration on the basis that it was descriptive under Article 7(1)(c) of the Regulation.
OHIM appealed to the ECJ on 5 grounds. The AG, giving her opinion for the ECJ, considered that two of the five grounds of appeal should be upheld.
OHIM submitted that the CFI had erred in law in requiring the BoA to give an explanation of the meaning in scientific terms of cell technology as a condition for refusing to register CELLTECH on the ground that it was descriptive.
The AG considered this ground to be well founded. Although it is settled law that decisions of OHIM must state the reasons on which they are bound in a clear and unequivocal manner, the CFI imposed a significantly more stringent duty on OHIM in requiring the BoA to produce a scientific explanation for the term ‘cell technology’.
For its second ground of appeal, OHIM submitted that the CFI had erred in disregarding the meaning of the words ‘cell’ and ‘tech’ when examining the mark under Article 7(1)(c) and instead focused exclusively on the meaning of the sign CELLTECH overall.
The AG considered that, as a general rule, the mere combination of elements, each of which is descriptive of characteristics of goods or services, without any unusual variations as to syntax or meaning, will result in a mark which remains descriptive. However, where the combination creates an impression which is sufficiently removed from that produced by the simple combination of the individual elements, the result may not be descriptive within the meaning of Article 7(1)(c). The AG considered that the CFI was correct to consider whether the mark CELLTECH was descriptive as a whole and dismissed the second ground.
OHIM submitted that the CFI was incorrect in stating that a finding of descriptiveness requires a description of the ‘intended purpose’ of the goods. In particular, OHIM considered that the CFI had erred in distinguishing between some characteristics (e.g. ‘intended purpose’ or ‘technical function’) which the CFI considered fell within the ambit of Article 7(1)(c), and other characteristics (e.g. ‘areas of use’), which the CFI deemed did not fall within the scope of the Regulation.
The AG allowed this third ground of appeal. The AG concluded that the ‘characteristics’ which fall with in the ambit of Article 7(1)(c) should be interpreted generously, and the CFI was wrong to make the distinction between the types of characteristics.
OHIM submitted, inter alia, that the CFI was incorrect in considering that the description of a process for the production or supplying of goods and services in question did not fall within the scope of Article 7(1)(c). The AG considered this ground to be unfounded and dismissed it.
As its final ground of appeal, OHIM submitted that the CFI judgment was vitiated as it lacked reasoning as to why CELLTECH or ‘cell technology’ does not describe the scientific method for obtaining the goods and services. The AG considered that the CFI had given sufficient reasons and dismissed this ground.
The AG concluded that the contested decision should be set aside.
Nokia Corporation v Joacim Wärdell (ECJ (first chamber); C-316/05; 14.12.06)
Nokia brought an action in the Swedish District Court against Wärdell alleging infringement of its Community trade mark NOKIA. Nokia claimed Wärdell had imported adhesive stickers into Sweden bearing the NOKIA trade mark which he intended to affix to mobile telephones. Article 98(1) of the CTM Regulation provides that where a defendant has been found to be infringing a CTM, a Court shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from continuing acts of infringement. The Regulation also provides that a Court shall take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with. Sweden’s trade mark legislation provides that the Court may prohibit the infringer, under a penalty or a fine, from continuing the infringement.
The District Court found that Wärdell had infringed Nokia’s CTM. The Court also found that there was a risk that he would infringe the trade mark in the future, and issued a prohibition on continuing infringement with a penalty.
Wärdell appealed to the Swedish Court of Appeal which confirmed the findings of the District Court. However, since Wärdell had not committed trade mark infringement previously, the Court of Appeal considered that the facts did not justify a prohibition order with a penalty attached. The Court therefore varied the lower Court’s order by removing the prohibition order and the penalty.
Nokia appealed to the Swedish Supreme Court which referred a set of questions to the ECJ asking, in essence, whether Article 98(1) contained an obligation to issue a prohibition and attach a penalty to it which went beyond Sweden’s trade mark law.
The ECJ followed the opinion of the AG and held that the term ‘special reasons’ must be given a uniform interpretation within the EU. The term is an exception to a mandatory obligation and therefore must be interpreted strictly. The mere fact that the risk of further infringement or threatened infringement of a CTM is not obvious or is otherwise merely limiting does not constitute a ‘special reason’ for not issuing an order prohibiting the defendant from proceeding with these acts.
The ECJ further held that the fact that national law includes a general prohibition of infringement of CTMs and provides for the possibility of penalising further infringement or threatened infringement also does not constitute a ‘special reason’. All Member States under the TRIPs agreement are required to provide for civil and criminal remedies, including prohibition, for infringement of IP rights. Provision of such agreements under national law cannot therefore constitute a ‘special reason’.
Furthermore, where a Community Trade Mark Court of a Member State has issued an order prohibiting further infringement, it is required to take such measures provided for under its national legislation which are aimed at ensuring the prohibition is complied with, even where the national law includes a general prohibition of infringement and provides for the possibility of penalising further infringement, and even if these measures could not be taken in the case of a corresponding infringement of a national trade mark.
Assessment of relevant market
Lunan Group Limited v Edwin Co. Limited (Alan Steinfield QC sitting as a Deputy Judge;  EWHC 3278 (Ch), 14.12.06)
Lunan Group Limited applied to register the trade mark FIORELLI for glasses and sunglasses in Class 9, watches and jewellery in Class 14, bags, umbrellas and small leather goods in Class 18 and clothing in Class 25. Edwin Co. Limited opposed, arguing that FIORELLI was confusingly similar to its own already registered trade mark, FIORUCCI. Both marks have been and are being used in the fashion or ‘designer goods’ market.
The Hearing Officer upheld the opposition, and Edwin Co. appealed.
The Deputy Judge concluded that he was not permitted to interfere with the decision of the Hearing Officer unless he was able to find that in reaching that conclusion, the Hearing Officer made some distinct and material error of principle or his decision was such as can be described as ‘clearly wrong’.
The Deputy Judge considered that there were two issues which amounted to material errors of principle by the Hearing Officer or at least amounted to matters where the Hearing Officer was plainly wrong.
The first was the Hearing Officer’s reasoning leading to his conclusion that there was a high degree of visual similarity between the two marks. The Hearing Officer stated that ‘it is well established that in aural use the beginning of words assumes more importance with the ends of words tending to become blurred. It seems to me that similar considerations apply when considering visual similarity’. The Deputy Judge considered that the authority for the reference to aural similarity between two marks, London Lubricants Ltd’s Application  42 RPC, should be treated with caution and that, in any case, it is ‘clearly wrong’ to apply the same reasoning to visual similarity as customers looking at a mark will look at it as a whole.
The second issue was the Hearing Officer’s treatment of evidence that there had been significant parallel trading of goods under the two marks in the same market for a significant period of time without any evidence of any confusion by members of the public. The Hearing Officer had refused to take this into account because he had divided the relevant market into two separate markets restricted by the classes of goods to which the respective applications for registrations related. He had therefore concluded that the absence of evidence as to confusion in the marketplace was not a relevant factor. The Deputy Judge found that this was a significant material error as the classes of goods and services used for the purpose of trade mark registration have nothing to do with the actual market in which the trade marked goods are sold.
The Deputy Judge held that there was essentially a single market for designer clothes and accessories, and the fact that there was no evidence of any actual confusion in the marketplace was a relevant factor. He also found that the Hearing Officer had misunderstood the significance of the evidence which demonstrated a lack of confusion between the two marks.
Accordingly, the Deputy Judge found that the two marks were not so similar as to give rise to a likelihood of confusion and allowed the appeal.
British Sky Broadcasting Group plc and others v Sky Home Services Ltd and others (Briggs J;  EWHC 3165 (Ch); 8.12.06)
British Sky Broadcasting Group plc ( “Sky”) brought an action for passing off against two groups of Defendants in relation to their sale of extended warranty contracts relating to equipment on which Sky’s broadcasts were viewed.
Sky argued that the Defendants’ actions, which included:
- use of corporate names which either included the name “Sky” or related phrases which included “Sky”;
- the design, production, publication and use of written marketing material which was misleading in both form and content; and
- misleading conduct by their large telephone sales force
amounted to passing off their own extended warranty contracts as those either approved or offered by Sky (such as the Sky Repair Protection Plan). Sky also claimed that passing off was both the intended and achieved objective of the Defendants’ marketing campaign.
By the time submissions had closed, it was clear that a denial that there had been any passing off by any of the Defendants could not be realistically supported and the issue had become one of the extent and degree to which passing off had occurred. The Defendants argued that any passing off could not be regarded as more than sporadic, amounting to no more than 0.1% of the Defendants’ communications.
The key issue concerned the misrepresentation element of the 3 stage test for passing off established inJif Lemon (Reckitt & Coleman Products Ltd v Borden Inc.  RPC 341). Briggs J confirmed that misrepresentation could be satisfied where the behaviour led to the erroneous belief that the relevant products or services were authorised or approved, rather than actually provided by the claimant.
Briggs J ruled in favour of Sky and held that where the existence of a de facto monopoly in particular goods or services gives rise to the likelihood that the arrival of a competing or related product will cause confusion, there is an increased risk that the marketing method adopted by the competitor will cause or contribute to that confusion by an implied misrepresentation. Although such a competitor is not under a duty to distinguish his product from any connection with the monopolist, he is required to take such care as will prevent his chosen marketing method from conveying any misrepresentation to the effect that there is such a connection. The adequacy of the steps taken by the competitor will be a question of fact; separate branding may or may not achieve that result.
Furthermore, the evidence showed clear instances where subscribers had said and done things during a call from the Defendants’ sales team, which demonstrated that they believed they were dealing with Sky. Following these instances, transactions had been completed without the sales agent correcting the customers’ mistaken belief. Following Bovril Ltd v Bodega Company Ltd (1916) 33 RPC 153, such behaviour would constitute a misrepresentation by conduct.
Briggs J held that the evidence identifying the percentage of Defendants’ sales which were preceded by passing off was indicative of a serious and significant infringement of Sky’s rights.
Communication to the public
Sociedad General de Autores y Editores de Espana (SGAE) v Rafael Hoteles SA (ECJ (third chamber); C-306/05; 7.12.06)
SGAE, the body responsible for the management of IP rights in Spain, brought an action against the owners of the hotel, Rafael Hoteles. SGAE claimed that the use of television sets and the playing of ambient music within the hotel involved communication to the public of works in contravention of the Spanish national law which implemented Article 3 of Directive 2001/29.
The Spanish Court of First Instance partially rejected the claim; although the claim was well founded as regards communal areas of hotels, it held that the use of television sets in the hotel’s rooms did not involve a communication to the public.
Both parties appealed. The appellant Court stayed the proceedings and made a reference to the ECJ.
The referring Court asked firstly whether the distribution of a signal through television sets to customers in hotel rooms constituted a communication to the public and whether the actual installation of television sets constituted an act of that nature. The ECJ held that, although the mere provision of physical facilities does not amount to a communication, the distribution of a signal by means of television sets by a hotel to its customers staying in the hotel does. Communication to the public had to be interpreted broadly to allow authors to obtain an appropriate reward for use of their works.
The Court referred to the Guide to the Berne Convention which, though not legally binding, assists in interpreting the Convention. According to the Guide, if the reception of the broadcasted work is for an audience larger than the owners of reception equipment and their own private or family circles, the work is directed to a new public and the communication of the work constitutes an independent act communicating work to a new public. The ECJ held that the clientele of the hotel (comprising customers staying in rooms as well as those present in other areas of the hotel where television sets are installed) formed such a new public; the transmission of the broadcasted work by the hotel gave access to the protected work to its customers who would not otherwise be able to enjoy the broadcast work.
The referring Court also questioned whether the private nature of the hotel rooms prevents the communication falling within Article 3 of the Directive. The ECJ concluded that it did not; the Directive requires authorisation by the author for communications by which the work is made accessible to the public. The public or private nature of the location is immaterial.
Copyright and breach of confidence
HRH Prince of Wales v Associated Newspapers Ltd* (Phillips LCJ; May LJ;  EWCA Civ 1776; 21.12.06)
Prince Charles initiated proceedings against Associated Newspapers Ltd in relation to the publication of extracts from his journals in the tabloid, The Mail on Sunday.
Prince Charles kept written journals recording his impressions and views while on overseas tours. Copies of eight journals were provided to the newspaper by an employee of Prince Charles in breach of her employment contract. Associated Newspapers published substantial extracts from one of the journals, relating to his visit to Hong Kong during the handover to China.
In the first instance, the High Court granted summary judgment in favour of Prince Charles for breach of confidence and copyright infringement in respect of the journal. Associated Newspapers appealed part of that judgment.
Breach of confidence
Associated Newspapers denied that the journal was ‘confidential’. Both sides relied on the impact of the Human Rights Act 1998 and the Human Rights Convention. Prince Charles submitted that the publication of the extracts constituted a breach of privacy under Article 8 of the Convention which protects a person’s right to private and family life, his home and his correspondence. Associated Newspapers denied this and alleged in the alternative that any interference with this right was justified as necessary to protect the newspaper’s freedom of expression under Article 10 of the Convention. Prince Charles further submitted that such a restriction was justified under Article 10(2) as necessary to protect his right to privacy, his copyright and to prevent the disclosure of confidential information.
The CoA found that the journals were ‘paradigm examples of confidential documents’ and were entitled to the protection of privacy rights under Article 8(1), as qualified by Article 8(2), of the Convention. The CoA rejected the newspaper’s submission that the subject of the journal was in the public domain.
The CoA noted that before the Human Rights Act came into force, the circumstances in which the public interest in publication overrode a duty of confidence were limited to exceptional circumstances. It found that the test is now different; it is a test of proportionality, namely, whether a fetter of the right of freedom of expression is, in the particular circumstances necessary in a democratic society. A significant factor in this balance is the importance in a democratic society of upholding duties of confidence that are created between individuals. Thus the test is not simply whether the information is a matter of public interest but whether, in all the circumstances, it is in the public interest that the duty of confidence should be breached.
As to whether the fact that there is an express contractual obligation of confidence affects the weight to be given to the duty of confidentiality, the CoA agreed with the comment in Campbell v Frisbee  EWCA Civ 1374 that it is arguable that a contractual duty of confidentiality carries more weight than a duty of confidence which is not expressly agreed. However, it commented that this would depend on the facts of the individual case.
The CoA upheld the first instance decision that the significance of the interference with Prince Charles’ Article 8 rights by the newspaper’s publication of the journal extracts outweighed the significance of the interference with Article 10 rights that would have been involved if the newspaper had been prevented from publishing the extracts. Further, since the information was disclosed in breach of a confidential relationship, the CoA found that Prince Charles’ case was overwhelming.
Associated Newspapers had conceded that the reproduction of parts of the journal in The Mail on Sunday constituted copyright infringement, but argued various statutory defences, including fair dealing for the purpose of reporting current events, fair dealing for the purposes of criticism and review, and a public interest defence on the same grounds as relied upon in the confidence claim. The Court rejected each of these defences, and dismissed the appeal.
Breach of confidence
Niema Ash and another v Loreena McKennitt and others* (Buxton LJ; Latham LH; Longmore LJ;  EWCA Civ 1714; 14.12.06)
Ms Niema Ash, a close friend of the Canadian singer/songwriter Loreena McKennitt, attempted to publish a book entitled “Travels with Loreena McKennitt: My life as a Friend” which contained personal and private details about Ms McKennitt. Ms McKennitt brought an action against Ms Ash for breach of confidence or of privacy.
At first instance, Eady J granted an injunction restraining publication of passages of the book which he considered to contain private information regarding Ms McKennitt. The CoA dismissed the appeal and took the opportunity to restate the law of misuse of private information.
As Ms McKennitt and Ms Ash were in a pre-existing relationship of confidence of a private and intimate nature, the CoA found that where the information was not “anodyne”, imprecise or known to the public, it was protected in principle by Article 8 of the Convention. Information protected by such a relationship included information about a person’s health and events in a person’s home.
In the absence of an error in principle, the CoA would not interfere with the trial judge’s assessment of the balance between Articles 8 and 10. The CoA confirmed that Eady J had applied the correct principles in carrying out the balancing exercise. Further, Eady J was correct to also consider whether any “limiting factor” came into play, such as whether the information was in the public domain or public interest. The CoA confirmed that Ms Ash had no right to tell her story as Ms McKennitt had admitted Ms Ash into her confidence.
The CoA concluded that Ms McKennitt’s choice to reveal aspects of her private life to promote water safety did not give the media carte blanche to then reveal other aspects about her life in that particular area.
The CoA recognised the press’s role as a watchdog over the democratic process and in reporting private information about people who, although of interest to the public, are not public figures. However, there were no special circumstances which would justify or require the exposure of Ms McKennitt’s private life. She was not a role model, voluntary or otherwise, and on the facts she had not carried out any disreputable or insincere conduct and could not be said to be a hypocrite. It was reiterated that what interests the public is not necessarily in the public interest.
The Procter & Gamble Company v Reckitt Benckiser (UK) Limited (Lewison J;  EWHC 3154(Ch); 13.12.06)
The case concerned a Community registered design (CRD), and the judgment is one of the first in the UK to consider issues of interpretation of Council Regulation EC 6/2002, which created Community registered and unregistered design rights.
Procter & Gamble (“P&G”) sold a domestic air freshener spray called “Febreze”, packaged in a custom designed canister surmounted by a trigger within a housing. The design for the packaging was protected by a CRD (the “Sprayer Design”).
P&G sought to protect its CRD for the Sprayer Design against alleged infringement by Reckitt Benckiser (“RB”), who had produced its own air freshener spray called ‘Air Wick Odour Stop’ (the “Air Wick Spray”).
RB denied infringing the Sprayer Design, and counterclaimed for invalidity.
In passing, the Judge drew what guidance he thought useful from four interim injunction decisions in other jurisdictions, before finding that the dominant features of the Sprayer Design were also found in the Air Wick Spray. He found that the differences between the Sprayer Design and the Air Wick Spray constituted relatively insignificant details and did not detract from the same overall visual impression created by each.
He further found that, since none of the dominant features were either features dictated solely by technical function or the product of external constraints on design freedom, the Air Wick Spray infringed the Sprayer Design. As the overall impression is formed by the distinctive shape of the Sprayer Design and the Air Wick Spray, he would not have come to a different conclusion on infringement even if he had taken into account the colours and graphics on the Air Wick Spray.
RB’s submissions on invalidity were also rejected; each piece of prior art cited created a different overall impression from the Sprayer Design.
RB has been granted leave to appeal.
EXHAUSTION OF RIGHTS
Roche Products Ltd & Roche Diagnostics GmbH v Kent Pharmaceuticals Ltd* (Ward L.J.; Neuberger L.J.; Moore-Bick L.J.;  EWCA Civ 1775; 20.12.06)
This is an appeal from a first instance decision of Lewison J who granted summary judgment in favour of the Claimants, Roche, in a trade mark infringement action against Kent. At first instance it was held that Kent had no reasonable prospect of demonstrating that Roche had given its implied consent to the marketing of the trade marked goods within the EU on the basis that the goods bore a CE mark.
The goods were Roche’s Advantage II strips for the self-testing of blood glucose levels and bore the trade mark ACCU-CHECK. Roche manufactured the STRIPS in the US for distribution only in the Caribbean and Central American region. The goods ended up in France and were then imported into the UK by Kent. The goods did bear the CE mark.
Following the ECJ decisions of Zino Davidoff v A&G Imports and Levi Strauss v Tesco  RPC 20, for a trade mark owner to extinguish its rights, it must give unequivocal consent to the placing of its products in the EU. The purpose of the CE mark was to show that the product met the relevant EU requirements, and did not demonstrate that the trade mark owner had given consent to products being placed on the EU market.
Evidence submitted by Kent which attempted to demonstrate that the CE mark is understood in the trade as meaning that the goods are intended for sale in the EU fell far short of establishing an argument that the CE mark should objectively operate as the trade mark owner’s consent to marketing. Accordingly, the CoA dismissed the appeal.
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, Gavin Lawson, Emilia Linde, Julia McAuley and Tom Snaith.
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.