Decisions of the Appointed Person: July 2007 – February 2008
|Application (and where applicable, earlier mark)|| ||HERITAGE|
- Classes 31 and 33
|Comment|| ||Professor Ruth Annand dismissed the appeal and upheld the Hearing Officer’s decision to reject registration of the mark under Section 5(4)(a) due to IFS’s prior use and goodwill at the material date.|
The Hearing Officer held that IFS had “just about” shown that it had a protectable goodwill at the material date from its continuous use of the mark; Nisa’s submission that there had been a hiatus in use at the material date failed.
Professor Ruth Annand rejected Nisa’s submission that ‘just about’ meant that IFS had nearly, but not quite, shown protectable goodwill (although she noted that this could have been expressed more clearly).
The Hearing Officer assessed the weight of the evidence and gave considerable thought to Nisa’s criticisms and had reached an acceptable conclusion in finding that IFS had established protectable goodwill.
|Application (and where applicable, earlier mark)|| |
- Various goods in classes 4, 7, 8, 13, 14, 15, 16, 20, 21, 24, 28 and 34 including tobacco and smoking articles.
- various tobacco and smoking articles
|Comment|| ||Richard Arnold QC dismissed the appeal, holding that the Hearing Officer was right to reject the opposition under Section 5(2)(b).|
He agreed with the Hearing Officer’s assessment that the earlier TOP mark had very little distinctive character. Accordingly, even though ‘TOP’ was common to both marks and the goods in question were identical, the differences between the marks were such that there was no likelihood of confusion.
|Application (and where applicable, earlier mark)|| ||HYPER GLUE|
- Adhesives and similar goods (1 and 16)
|Comment|| ||Amanda Michaels dismissed the appeal and held that the Hearing Officer was right to reject the opposition to the registration of the marks HYPER GLUE and HYPA GLUE under Sections 3(1)(b) and (c).|
The Hearing Officer was correct to find that, whilst the words ‘HYPER’ and ‘HYPA’ denote some excessive quality, the evidence did not indicate that they were synonymous with the word ‘SUPER’. The Hearing Office did not err in finding that the use of either ‘HYPER’ or ‘HYPA’ did not make the marks descriptive of the goods or characteristic of them.
There was no evidence to suggest the marks should remain freely available for use by others in the trade.
|Application (and where applicable, earlier mark)|| ||STERISHIELD|
- Paints, varnishes, lacquers; driers including curing driers, thinners, colouring matters; priming preparations; wood stains; mastic; putty; repositionable patches of paint, varnishes or lacquers (2).
- Coatings in the nature of paints (2)
Professor Ruth Annand dismissed the appeal, holding that the Hearing Officer was right to reject the application for a declaration that the STERISHIELD mark was invalid under Sections 47, 3(1)(b), (c) and 5(2)(b).
Dismissing the appeal under Section 3(1)(c), the Appointed Person agreed with the Hearing Officer’s conclusion that the constituent parts of the STERISHEILD mark were at most only suggestive of the desired effect obtained from using the goods and that, considered as a whole, the mark was not descriptive.
Liquid Plastics’ submissions under Section 5(2)(b) (namely that the Hearing Officer (i) artificially dissected the marks rather than comparing them overall; (ii) failed to apply the interdependency principle; and (iii) ignored the conceptual association created by STERI prefix) were rejected. The Hearing Officer was entitled to reach his conclusion and had properly considered the conceptual association created by the common element. Professor Ruth Annand therefore also dismissed the appeal under Section 5(2)(b).
|Application (and where applicable, earlier mark)|| |
FRICTION MANAGEMENT SOLUTIONS
- Design, selection and provision of services and products to lengthen the life of industrial equipment, namely machines and vehicles which use bearing and accessories therefore, and lubricants, and repair of the same (37)
|Comment|| ||Richard Arnold QC dismissed the appeal stating that the Hearing Officer had correctly considered the mark in its entirety and agreed that the mark was descriptive of the services set out in the specification.|
In upholding the Hearing Officer’s decision under Sections 3(1)(b) and (c), the Appointed Person noted that use of the undefined term ‘friction management solutions’ to describe the services in the Applicant’s internal brochure was evidence of the descriptive nature of the mark.
The Applicant submitted that the Hearing Officer had not applied the correct legal test and had wrongly assessed the mark in relation to the services in the specification.
Mr Richard Arnold QC considered it unclear whether the test set out in Bark für Arbeit und Wirtschaft AG v OHIM ( ECR II 1259) put forward by the Applicant was still good law but held that, even under that test, registration should be precluded by Section 3(1)(c).
|Application (and where applicable, earlier mark)|| |
- Confectionery, chocolate and chocolate products, pastries (30)
|Comment|| ||The Applicant appealed from a decision of the Hearing Officer that the mark lacked distinctive character under Section 3(1)(b) on the grounds it was descriptive of the goods (small trapezoid filled chocolate sweets).|
Amanda Michaels disagreed, holding that the device did not represent the appearance of the actual product in question. The mark fulfilled the public interest requirement behind Section 3(1)(b) in that it guarantees the identity of origin. The additional elements of the mark including the ‘milk spill’ distinguished the mark from a purely descriptive sign despite the fact it alluded to chocolate products generally. Mere allusion to the characteristics of a product not amounting to descriptiveness will not preclude a mark from registration. The appeal was allowed.
|Application (and where applicable, earlier mark)|| ||DELIBERATELY INNOVATIVE|
- Computer software and computer programmes; materials for the recordal of computer programmes; magnetic and optical tapes, discs, cassettes and cartridges, all for the recordal of computer programmes (9)
|Comment|| ||Geoffrey Hobbs QC dismissed the appeal from the Hearing Officer’s decision to refuse the application under Section 3(1)(b), although Hearing Officer’s objection under Section 3(1)(c) was not upheld.|
DELIBERATELY INNOVATIVE was an essentially origin neutral statement and lacked the singularity required to individualise goods of the kind specified to a single undertaking.
|Application (and where applicable, earlier mark)|| |
- Blend of plant extracts relating to health products,
formulated into vitamins and minerals (5)
- Minerals and/or vitamins for use as nutritive adjuncts to foodstuffs (5)
|Comment|| ||Alticor appealed from the decision of the Hearing Officer to reject the opposition under Section 5(2)(b), submitting that the Hearing Officer had not given full consideration to the principle that words speak louder than non-verbal elements of the marks.|
Geoffrey Hobbs QC agreed that the words NUTRILITE and NUTRILIFE are sufficiently similar to give rise to a likelihood of confusion. However, the Hearing Officer was open to find that the visual and conceptual differences between the marks outweighed the similarities enough to avoid a likelihood of confusion.
The Appointed Person held that words do not always or necessarily speak louder than the non-verbal elements with which they have been combined. Nor do they always or necessarily speak in the same way (or to the same effect) as they otherwise would.
The appeal was dismissed.
|Application (and where applicable, earlier mark)|| |
- Dentistry services (44)
- All 45 international classes except class 8
|Comment|| ||Professor Ruth Annand dismissed the appeal from the Hearing Officer’s decision that there was no likelihood of confusion between the two marks under Section 5(2)(b).|
The Appointed Person dismissed La Chemise Lacoste’s submissions that the Hearing Officer placed too much emphasis on the word element of the mark applied for and had unduly emphasised the differences rather than the similarities between the reptilian devices. The Hearing Officer was entitled to conclude that the device elements would play a subsidiary role. Although she observed clear differences between the device elements, the Hearing Officer did not disregard the similarities.
|Application (and where applicable, earlier mark)|| |
- Various bleaching, cleaning and washing preparations (3)
- Various bleaching, cleaning and washing preparations (3)
|Comment|| ||Professor Ruth Annand dismissed the appeal, holding that the Hearing Officer had been right to reject the opposition under Section 5(2)(b).|
The Appointed Person found that the Hearing Officer was entitled to find that there was only a moderate degree of similarity between the marks so that, despite the high degree of distinctiveness of the ARIEL mark, there was no likelihood of confusion.
|Application (and where applicable, earlier mark)|| ||MAGIC HOME CHEF|
- Kitchen utensils for pressing and moulding food into rectangular blocks
- Domestic, kitchen and household electrical apparatus, instruments and machines (7, 9 and 11)
|Comment|| ||The Hearing Officer allowed the opposition under Section 5(2)(b) on the basis that there was a high degree of similarity between the respective marks and goods.|
Philip Maitland-Kraft appealed the decision, submitting that his goods were dissimilar from those of the Opponent since they were non-electrical.
Professor Ruth Annand dismissed the appeal, holding that the Hearing Officer had not erred in his determination of the degree of similarity between the respective goods as electrical and non-electrical kitchen apparatus represent alternative choices for the average consumer.
|Application (and where applicable, earlier mark)|| |
- Electric apparatus and instruments in relation to medical data; computer (software) programs for medical applications; all for use in CT-scanning; CT-Scanners (9 and 10)
- Electrical cables and wires, microphone cables for sound and audio applications (9)
|Comment|| ||Amanda Michaels dismissed Belden’s appeal against the Hearing Officer’s decision to reject the opposition under Sections 5(2)(a) and (b).|
Contrary to Belden’s submissions, the Hearing Officer (i) did not artificially limit Belden’s goods to only those for which evidence of use had been provided; (ii) was not wrong to give significant weight to Philips’ goods being delimited to medical data/medical applications/CT-Scanning; (iii) was entitled to find that the sophisticated end user would be able to make the necessary distinction to avoid any likelihood of confusion; and (iv) did not fail to take into account the identity of the marks in his assessment.
|Application (and where applicable, earlier mark)|| |
- Paper, cardboard, stationery, plastic material for packaging etc (16);
- Clothing footwear, headgear (25)
– articles of clothing; but not including footwear (25)
– articles including clothing, footwear, headgear (3, 9, 14, 18, 24, 25)
|Comment|| ||Anna Carboni upheld the decision of the Hearing Officer to reject the opposition under Sections 5(2)(b) and 5(3), although the Hearing Officer had erred in reaching his decision.|
The Hearing Officer was correct to note that CHEROKEE would be recognised as referring to the Cherokee tribe but was incorrect in concluding that this would be well known to the general public. Accordingly, in the absence of any association in the minds of the public with the Cherokee tribe, the word would be meaningless. The Appointed Person also criticised the Hearing Officer’s analysis that the mark CHORKEE (pronounced ‘chalky’) would be associated with chalk by the average consumer.
The Hearing Officer had given disproportionate weight to the conceptual dissimilarity between the marks based on the mistaken assumptions as to the meanings of the marks. Accordingly, Anna Carboni reconsidered the analysis under Section 5(2)(b). Although there were significant elements of visual similarity, the differences in the overall impression were such as to avoid a real likelihood of confusion even in respect of the identical goods.
Although the CHEROKEE mark had a reputation in the UK, the degree of similarity between the respective marks would not cause the relevant public to make a link between them nor have any effect on the economic behaviour of customers. The appeal under Section 5(3) was dismissed.
|Application (and where applicable, earlier mark)|| ||ENERGY SHOP|
- Various goods and services (1, 4, 35, 36, 38, 39)
ENERGY SHOP ENERGYSHOP.COM
- Energy marketing in natural gas and electricity through the internet, telephone and personal visits
(Canadian registered trade marks)
|Comment|| ||Richard Arnold QC dismissed the appeal from the Hearing Officer’s decision to reject the opposition under Section 5(2)(b).|
On appeal the key issue was whether M3 & W’s Canadian trade marks were well known in the UK. No error in principle by the Hearing Officer was found. M3 & W’s evidence (including internet search results and statistics showing UK visitors to its website) was found to be insufficient to support its claims. The admittance of new evidence was not allowed on the factors set out inLadd v Marshall  1 WLR 1489.
|Application (and where applicable, earlier mark)|| ||VIRGIN SMILE|
- Massage apparatus, vibrators, dental apparatus and instruments (10)
- Electric and non-electric toothbrushes (21)
Marks including the word VIRGIN
- more than 1800 registrations throughout the world
request being a request for one month to allow for photocopying of exhibits and the execution of witness statements. Roberto Giordon objected to the final request. The Hearing Officer allowed the extension and Giordon appealed to the Appointed Person. Richard Arnold QC dismissed the appeal, holding that the Hearing Officer (i) considered all three of the Siddiqui’s Application requirements (namely whether Virgin Enterprise had shown what it had done,
what it wanted to do and why it had not been able to do it); (ii) was aware that the request needed to be justified by strong and compelling reasons; and (iii) did not make an error of law or principle by considering the likelihood of further proceedings being the consequence of the refusal of extension as an important factor in granting the extension. The Appointed Person did note, however, that an extension of one month for what was essentially photocopying was generous.
Talat Ismail v Juicy Couture Inc. (Decision of the Appointed Person (Ms Amanda Michaels); O-231-07; 23.07.07)
Talat Ismail’s (the Applicant’s) trade mark applications for JUICY DIAMONDS, JUICY and JUICY SILVER in relation to goods in Classes 3 (bleaching preparations for laundry use; cleaning preparations; cosmetics) and 14 (precious metals; jewellery) had been opposed by Juicy Couture (the Opponent) on the basis of its CTMs for JUICY COUTURE, JUICY JEANS and JUICY BABY filed in relation to goods and services in Classes 3 (soaps; cosmetics), 18 (luggage), 25 (clothing) and 35 (retail store services in the field of jewellery,cosmetics, home products).
The Hearing Officer had refused registration of the marks applied for on the basis of Sections 5(2)(b), 5(4)(a) and 5(3). The Applicant appealed in relation to all three grounds and was partially successful under Section 5(2)(b).
In relation to Section 5(2)(b), the Applicant criticisedinter alia the Hearing Officer’s finding that the goods listed in the earlier marks’ retail specifications were “in essence the same” as those listed by the marks applied for. Amanda Michaels found that the Hearing Officer had fallen into error by failing to set out precisely his reasons for such a finding in relation toeach type of goods for which there was not word for word identity. Considering the point afresh, she found that the range of goods which could be properly regarded as “in essence the same” was rather more limited than the Hearing Officer had thought. She also criticised the Hearing Officer for failing to consider the likelihood of confusion in respect of each category of goods listed in the specifications of the marks applied for. She therefore partially allowed the appeal in relation to the categories of goods for which she found that there was not a real likelihood of confusion.
The Appointed Person dismissed the appeal in relation to Section 5(4)(a) to the extent that it criticised the Hearing Officer’s finding that the Opponent had built up sufficient goodwill. Although the Opponent had not filed trade or public evidence in support of its claim, Amanda Michaels found that the Hearing Officer was nevertheless entitled to find that the Opponent had sufficent goodwill provided that the evidence filed established this to the Hearing Officer’s satisfaction.
She also upheld the Hearing Officer’s decision in relation to Section 5(3), namely that the Opponent’s marks had a reputation and that, given the similarity between the marks, there was a risk of unfair advantage.
The Applicant invited Amanda Michaels to suspend the effect of her decision on the basis that a number of the Opponent’s earlier CTMs were currently the subject of partial invalidity proceedings at OHIM. Considering the case of Croom’s trade mark application  R.P.C. 2, in which Mr Geoffrey Hobbs QC rejected a similar request, Amanda Michaels took the view that the present case could be distinguished in that (i) the invalidity proceedings upon which the Applicant wished to rely were not proceedings which he had brought but proceedings brought by a third party; and (ii) the invalidity proceedings had been already launched. Taking into account the decision of the European Court of Human Rights in Anheuser-Busch Inc. v Portugal  E.T.M.R. 24 which held that a trade mark application is a property right (thereby implying that to refuse the stay sought would interfere with the applicant’s peaceful enjoyment of his possessions), she suspended the effect of her decision – for a period of 6 months in accordance with the Registry’s standard practice – to the extent that the opposition was based on those parts of the Opponent’s CTMs which were under threat of invalidity.
O2 Holdings Limited v T-Mobile (UK) Limited (Decision of the Appointed Person (Ms Amanda Michaels); O-364-07; 13.12.07)
T-Mobile applied to register the marks BUSINESSZONE PLUS and BUSINESSZONE (“the T-Mobile Marks”) on 30 May 1996. The marks were registered on 5 March 1999.
O2 applied to register the marks BUSINESS ZONES and BUSINESS ZONES FROM O2 (“the O2 Marks”) on 26 February 2004. Whilst the applications were pending, O2 filed applications to revoke the T-Mobile Marks for non-use under Sections 46(1)(a) and (b), purportedly from 25 February 2004.
The Registrar revoked the T-Mobile Marks with effect from 5 March 2004 (i.e., five years after the registration date) and the O2 Marks proceeded to registration. T-Mobile subsequently opposed the O2 Marks based on the partially revoked T-Mobile Marks.
In response to the oppositions, O2 filed invalidity requests for the T-Mobile Marks under Sections 47, 3(1)(b), (c) and 3(6). The Hearing Officer refused the requests, holding that the Registry would not process invalidation actions against registrations no longer on the register and, because O2 had waited too long to launch the invalidation proceedings, that the action could be an abuse of process. O2 appealed to the Appointed Person.
Prior to the appeal, T-Mobile withdrew its oppositions against the O2 Marks. The Appointed Person held that, although the risk of T-Mobile relying on its marks was small, it could not be completely ignored and therefore the appeal was not purely academic.
In overturning the Hearing Officer’s decision, the Appointed Person considered whether the phrase “the registration of a trade mark may be declared invalid” in Section 47(1) should be construed as referring only to a registration which remains “extant”, “active” or “live” at the date of the invalidity application, or whether it should refer to the process of registration, or initial registration, of a mark that has been subsequently revoked and removed from the Register.
The Appointed Person held that the question of validity should be considered as at the date of the application to register the mark, since the essence of an invalidity attack is the that the mark should never have been registered. It would therefore not be appropriate to limit Section 41(1) to only “live” marks.
Furthermore, the Appointed Person considered O2’s application not to be an abuse of process. It would not be right to suggest that a party must take all possible types of proceedings against another’s registration at the same time, as it may lead to unnecessary duplication of proceedings. Therefore it cannot be inherently abusive to seek to revoke first then wait to see whether the revoked mark is raised in opposition when it might be necessary to make an application to invalidate the mark.
The invalidity proceedings were remitted to the Registry.
Kathy Pavey and Julian Fidler (a partnership) v Synergie Sociéte Anonyme (Decision of the Appointed Person (Ms Amanda Michaels); O-371-07; 21.12.07)
The application was for an extension of time under Section 68(5) for the Applicant partnership to file evidence in opposition proceedings brought by Synergie SA.
The Hearing Officer held that Section 68(5) has two limbs which must be satisfied for an exercise of the Hearing Officer’s discretion to grant an extension: (i) that the reasons for the delay are satisfactory; and (ii) that it is just and equitable to extend the time period. The Heading Officer found that the first limb was satisfied. In considering the second limb, the Hearing Officer considered that there appeared to be a conscious decision to leave preparation of the evidence in support until after expiry of the statutory period and concluded that this conscious decision to deliberately file the evidence late was an abuse of process and accordingly refused to admit it.
The Applicants appealed this decision. After a detailed review of the decision and the grounds of the appeal, the Appointed Person accepted that another Hearing Officer might have reached the opposite conclusion on the same facts, however, she was not satisfied that the exercise of the Hearing Officer’s discretion was plainly wrong. The appeal was dismissed.
Fianna Fial and Fine Gael v Patrick Melly (Decision of the Appointed Person (Mr Geoffrey Hobbs QC); O-043-08; 15.02.08)
The Appointed Person upheld the Opponents’ (Fianna Fial and Fine Gael) appeal on the basis of one of the four grounds raised.
Mr Patrick Melly applied to register FIANNA FAIL and FINE GAEL (together with SINN FEIN) as UK trade marks in various classes including for fresh fruits and vegetables and business administration. The applications were opposed by the Irish political parties Fianna Fail and Fine Gael. After applying for the UK trade mark registrations, Mr Melly wrote to each of the political parties offering to license the relevant mark to them. In another letter to the Treasury Solicitor, he suggested that the conditions upon which he would grant such licences “would have political overtones”.
There were four grounds of opposition (under Sections 56, 5(4)(a), 3(3)(b) and 3(6)). The Hearing Officer held that all the ground of opposition failed. The Appointed Person rejected the Opponents’ appeal on the first three grounds of opposition:
- The Opponents could not rely on the argument that FIANNA FAIL and FINE GAEL had acquired the status of well known marks in the UK under Section 56 as there was no proof of use of the denominations as unregistered trade marks for any goods or services, nor was there sufficient evidence to establish that the denominations had become well known trade marks in the UK.
- Nor could the Opponents rely on the argument under Section 5(4)(a) that Mr Melly’s use constituted passing off as there was insufficient evidence filed by the Opponents to establish the requisite locally situated goodwill.
- In relation to the Opponents’ submission under Section 3(3)(b) that the registrations would deceive the public, Mr Hobbs QC found that the Trade Marks Act prevents registration on the basis of “absolute” rather than “relative” deception (i.e., misrepresentations as to what is being made available rather than who is responsible for making it available). The case for the Opponents was made on the basis of relative deception, that a significant proportion of people in the UK would be misled into associating any goods/services offered under the FIANNA FAIL / FINE GAIL names with the Opponents. This type of deception was not prevented by the Act.
In relation to the fourth ground of opposition, bad faith under Section 3(6), Mr Hobbs QC upheld the Opponents’ appeal. There is not yet any ECJ case law on the bad faith provisions so Mr Hobbs QC took into account the Community law principle that Community law should be interpreted and applied so as to confer no legitimacy on improper behaviour. He found that the Hearing Officer reached his conclusion on consideration of the “relative” position of the Opponent organisations rather than on a consideration of the “absolute” position. In particular, he found that the lack of integrity in the “absolute” position of the Applicant was not fully appreciated by the Hearing Officer including that the Applicant would have forced the parties to distances themselves from the Applicant’s use.
Douglas & Grahame Ltd v Remys Ltd (Decision of the Appointed Person (Mr Richard Arnold QC); O-061-08; 28.02.08)
Mr Richard Arnold QC allowed the appeal by Douglas & Grahame Ltd (D&G) that the REMUS mark (below) should not be revoked as there had been sufficient use of the mark to satisfy Section 46(2).
All evidence of use submitted by D&G referred to the combined mark REMUS UOMO (below) and not to REMUS.
In holding that there is no precept that a proprietor must use its earlier mark on its own, Mr Richard Arnold QC rejected the Hearing Officer’s decision that consumers would see REMUS UOMO as a unified mark, notwithstanding that REMUS is the visually the more dominant element.
He noted that the word and stylised presentation of REMUS are distinctive and that it is the dominant and distinctive element of the mark as used. Following the CFI in Castellblanch SA v OHIM ( ECR II-5309) and the ECJ in Société des Produits Nestlé SA v Mars UK Ltd ( ECR I-6135) the Appointed Person noted that the labels could be regarded as constituting the two marks which could be viewed as being used both jointly and autonomously. Use of a mark as part of a principle mark can lead to that mark acquiring distinctiveness through use. Accordingly, it was logical that such use was sufficient evidence to prevent revocation for non-use.
He noted that this case law was inconsistent with the CFI decision in Il Ponte Fiananziaria v OHIM (Case C-234/06P) where it was held that the proprietor could not rely on use of a similar mark as evidence as to use where it had failed to use the mark in question. However, he held these comments were obiter dicta and hence followed the ruling in Nestlé v Mars in upholding the appeal.
Trade mark infringement and passing off
Bignell v Just Employment Law Ltd* (Robert EnglehartQC sitting as a Deputy Judge;  EWHC 2203 (Ch);  FSR 6; 02.10.08)
The mark JUST EMPLOYMENT was registered in Class 42 inter alia for legal services relating to employment matters. The claim to infringement failed as the mark was held to be invalid under Sections 47 and 3(1)(c): it was not inherently distinctive since the reaction of the ordinary member of the public would be that the services would relate only to employment matters. Further, the Claimant’s firm, specialising in employment law, was of modest size and located in Guildford. Even if the firm’s reputation was held to extend to Surrey and its neighbouring counties, there was insufficient evidence of acquired distinctiveness, having regard to the whole of the UK.
The claim to passing off also failed. The Claimant’s goodwill was essentially local and consequently did not extend to Glasgow where the Defendant’s company called JUST EMPOLYMENT LAW was based. Although there had been a very little confusion, it had not occurred as a consequence of any misrepresentation by the Defendant. Finally, there is no evidence of any sort of any pecuniary damage suffered by the Claimant.
D Jacobson & Sons Ltd v Globe GB Ltd & anr*(Etherton J;  EWHC 88 (Ch); 25.01.08)
The Claimant (“Gola”) succeeded in its action for passing off and trade mark infringement in relation to its Wing Flash Logo which was protected by the following marks, the first a CTM and the second a UK registered mark:
Globe’s shoes had the following stripe design:
Globe failed in its counterclaim that the trade marks were invalid. The Judge held that the design was unusual and inherently distinctive. The sports footwear market was one where consumers identified strongly with brands and the average consumer would see this design as a distinctive mark. Market surveys showed that 18% and 11% identified the Wing Flash Logo as Gola’s brand.
Trade mark infringement and passing off were found based inter alia on a survey which showed that there was 2% confusion. The Judge rejected Globe’s criticism of this survey. Leave to appeal has been granted.
Defence of consent
Gary Fearns t/a Autopaint International v Anglo-Dutch Paint and Chemical Co Ltd & Ors* (“de Beer”) (Waller, Arden & Toulson LLJ;  EWCA Civ 99; 19.02.08)
The Claimant sold high quality paint, supplied by de Beer, for spray painting cars under the mark AUTOPAINT registered in Classes 2, 3 and 17. At first instance ( EWHC 955 (Ch)), Christopher Floyd QC, sitting as a Deputy Judge, held that due to Autopaint running up debts with de Beer, the parties had agreed that de Beer could sell directly to franchisees where the paint could not be sold by Autopaint. However, de Beer went further than the consent agreement permitted them to do (e.g. by selling ancillary products under the name AUTOPAINT) and as a consequence, Autopaint’s action for trade mark infringement and passing off succeeded. The Deputy Judge also held that de Beer’s unlawful conduct was not causative of Mr Fearns’ loss of his franchisees, that loss being caused by his financial status and consequential inability to supply his franchisees.
The Court of Appeal upheld the Deputy Judge’s finding on consent. The Court examined the facts again and found that the Deputy Judge was entitled to hold in favour of de Beer on the issue of whether they could sell directly to franchisees. However, the Court of Appeal allowed the appeal on the issue of causation.There had been no direction that there should be a split trial. Thus, until the Court knew the extent of any infringements of the AUTOPAINT trade mark and the extent of any breaches of the consent agreement, the Court was not in a position to finally rule as to their effect. Although it seemed to the Court of Appeal most unlikely that Mr Fearns would be able to establish that, if the agreement with de Beer had been adhered to by the latter, he would have been able to maintain his business, but until the extent of the breaches were clear, he should not be prevented from seeking to establish the point.
Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik* (Norris J;  EWHC 263 (Ch); 19.02.08)
This is the latest in the series of long running trade mark disputes between Budejovicky Budvar (“BB”) and Anheuser-Busch (“AB”) which date back to 1911. In this case, AB successfully applied before the Hearing Officer to invalidate BB’s trade mark for BUDWEISER for “beer, ale and porter; malt beverages” under Sections 47 (1) and 5(1) on the basis of its earlier mark, BUDWEISER, registered for “beer, ale and porter”. The appeal was dismissed save for a point on the scope of goods. The Judge did not consider “malt beverages” to be identical to “beer, ale and porter”. Confusion could not be asserted, it had to be proved and there was no proof.
Following earlier litigation, it was judicially decided that neither AB nor BB was, as against the other, exclusively entitled to the goodwill attaching to the mark BUDWEISER. It was also decided that BB was entitled to register BUD because it could freely use the name BUDWEISER and that AB was likewise so entitled. In 2000, this left outstanding the issue of both parties’ applications to register the mark BUDWEISER; AB’s application dated back to December 1979 and BB’s to June 1989. Both marks were eventually put on the Register on 19 May 2000 since both parties were able to prove honest concurrent use under Section 12(2) of the 1938 Act.
AB waited 4 years and 364 days before surprising BB with an application for a declaration of invalidity of BB’s mark under Section 47(2) of the 1994. The timing meant that BB had no time to respond with a similar application against AB’s mark. However, BB claimed that, under Section 48, AB had acquiesced for a period of 5 years and that the period should run from the date of application of BB’s mark in 1985. The Judge followed Sunrider v Vitasoy  EWCH 37 (Ch) and held that the 5 year period ran from the date of registration of the mark. Consequently, he held that the defence of statutory acquiescence was not made out – the application for invalidity was made within the 5 year period. In doing so, he dismissed the appeal on this point.
In the event that BB failed on the statutory acquiescence point, they also pleaded common law acquiescence. This submission failed before the Hearing Officer, who held that there was no place for common law acquiescence in the scheme of the Act. Norris J held that on this point, the Hearing Officer had made an error of principle; there was a place for common law acquiescence. However, BB failed to make out their case. They did not put in any evidence. In written submissions, BB argued that AB had stood by without complaint for 20 years during which time BB had plainly sought to increase its business in the UK. This was not a version of history that the Judge recognised. In oral submissions, BB sought to persuade the Judge that by waiting until the last minute to make an application under Section 47, AB’s action amounted to a declaration that an application for revocation would not be made. Norris J held that AB had not induced or encouraged BB’s behaviour, so a case of estoppel by acquiescence was not made out.
The Hearing Officer had rejected BB’s submission that the invalidity action was an abuse of process because the decisions in the earlier opposition cases under the 1938 Act amounted to an estoppel (following Special Effects v L’Oreal  EWCA Civ 1). The Judge held that the decision was sound; invalidity under the 1994 Act could not have been raised in the 1938 Act opposition proceedings.
The Judge recorded his uneasiness at his conclusion and was of the opinion that the matter should be considered by the Court of Appeal.
Reporter’s note: This is an important case. It demonstrates that showing a mere failure or delay in the proprietor suing for infringement is generally not enough to fulfil the requirements of estoppel by acquiescence. Thus it may be difficult for those who infringe knowing of the existence of a proprietor’s registered mark, or who could have known through reasonable searches, to succeed in an action for estoppel by acquiescence, unless positive action by the proprietor in inducing or encouraging them to use the mark is shown. At the time of writing no appeal had been recorded with the Civil Appeals Office.
Weak distinctive character
DIGIPOS Store Solutions Group Limited v DIGI INTERNATIONAL Inc. (Daniel Alexander QC sitting as Deputy Judge;  EWHC 491 (Ch); 12.03.08)
Digipos failed in its appeal against Hearing Officer’s decision to refuse registration of the word mark DIGIPOS for various computer hardware, software and accessories in class 9. Digi International owned two trade marks; a stylised word DIGI and the word mark DIGI INTERNATIONAL (both for microcomputer hardware and software in class 9) and had successfully opposed the registration of the DIGIPOS mark under Section 5(2)(b).
The Deputy Judge confirmed that an appellate court should only overturn a Hearing Officer’s decision if it is satisfied that there has been a distinct and material error of principle in the decision or that the Hearing Officer was plainly wrong.
Having reviewed the relevant authorities as to the correct approach to take for the assessment under Section 5(2)(b) where the element alleged to be similar is also alleged to be of weak distinctive character, the Deputy Judge set out the following principles:
1. When undertaking a global assessment of the likelihood of confusion where the earlier mark is said to be descriptive, it is necessary to take into account the extent to which the earlier mark has a lesser, as well as greater, capacity to distinguish. This required an evaluation of the evidence on that issue and consideration of the characteristics of both the earlier mark and the mark applied for.
2. It should be recognised in the global assessment that, where a mark has a lesser capacity to distinguish, the average consumer is likely to consider that a descriptive element is not being used, in the mark applied for, to identify the origin of the goods or services in question and therefore is less likely to be confused as to origin.
3. Nevertheless, weakness of the earlier mark is not conclusive of whether there is a likelihood of confusion but rather one factor that goes into the global assessment.
While not approaching it in a formulaic way, the Hearing Officer had considered the elements required in carrying out the global assessment, including taking into account the potential weakness of the DIGI element. As such there had been no error of principle.
The Deputy Judge noted that he would have reached a different conclusion as to whether Section 5(2)(b) was satisfied; he considered that the prefix DIGI did have a conceptual meaning (to identify digital/computer related goods) and would have taken a more robust view of the average consumer’s abilities to be able to distinguish the marks given their nature and the nature of the goods and services in question.
However, the Hearing Officer’s approach could not be described as plainly wrong; it was supported by a number of factors, including: (1) the absence of evidence of any established definition of DIGI in mainstream dictionaries; (2) the lack of evidence as to how the DIGIPOS mark was actually understood by members of the trade and the public; (3) that the average consumer could consider Digipos’ mark as consisting of a distinctive element (DIGI) and a descriptive element (POS); and (4) the evidence as to use provided imperfect proof of how the element would be seen in the marks in question for the goods in question and was, at best, relevant by analogy. Without going as far as setting an absolute rule, the Deputy Judge considered that reference to the prosecution file as evidence of use in a trade mark case should be discouraged.
Trade mark opposition – claim to copyright in the logo, passing off and bad faith
Jules Rimet Cup Ltd v The Football Association Ltd* (Roger Wyand QC sitting as a Deputy Judge;  EWHC 2376 (Ch);  FSR 10; 18.10.08)
In 2005, the Claimant (“JRCL”) applied to register the words WORLD CUP WILLIE and a device for a range of goods. The FA indicated an intention to oppose the applications if they were not withdrawn on the basis that WORLD CUP WILLIE was the name of the mascot for the 1966 World Cup hosted in England by the FA. The two devices are shown below:
JRCL’S APPLICATION ORIGINAL DRAWING
JRCL applied for a declaration that the marks could not be opposed successfully. In a trial of preliminary issues, the Deputy Judge found there was no copyright infringement. Although JRCL had copied the original drawing (the author had the original drawing in mind and, although had tried to move away from it, did not produce an independent design), the JRCL drawing did not reproduce a substantial part of the original drawing. Further, Section 52 CDPA ’88 provided a defence to an infringement action in respect of some articles but not those primarily of a literary or artistic nature as they were excluded from the effect of Sections 52(1) and (2) by Article 3 of the Copyright (Industrial Process and Excluded Articles) (No. 2) Order 1989.
The FA claimed that the trade mark applications should be refused under Section 5(4)(a) of the TMA ’94. The Deputy Judge held that the goodwill that was created by the merchandising activities leading up to the 1966 World Cup was the goodwill of the FA and that it had not been abandoned, but merely put on the shelf until such time as it became relevant again. In 2005, this residual goodwill would have been enough for the FA to have succeeded in a passing off action across the whole specification of each mark; the FA’s goodwill was in licensing goods and those goods would be expected to be of a promotional nature connected in some way with the England team and a football competition. That was precisely the nature of the use intended by JRCL.
Finally, the Deputy Judge held that JRCL had made the trade mark applications in bad faith under Section 3(6) TMA ’94. JRCL had made the applications knowing that there was valuable residual goodwill in WORLD CUP WILLIE and knowing that the design and name were widely known by a sector of the relevant public. It was not a defence merely to say that JRCL had sought advice from Trade Mark Attorneys; in order to run such a defence, disclosure should have been made of all the relevant facts including the instructions given and the full advice received.
Handi-Craft Company & anr v BFree World Ltd & ors* (Judge Fysh QC;  EWHC 10 (Pat); 10.09.07)
The facts of this case are complex and only that part relating to copyright infringement is reported here (the patent aspects of this decision have been reported at  CIPA 502).
The dispute was about nursing bottles called DR BROWN’S bottles. The competing product was a nursing bottle called the B FREE bottle. The two signs are shown below:
Judge Fysh held that a third party, in copying the DR BROWN’S sign, took a substantial part of the copyright work (Section 16(3)(a) CDPA ’88). He reached this conclusion as a matter of first impression; the B FREE sign made the same impression on him as DR BROWN’S sign. The substantially copied features were the oval logo partly framed within the turquoise green surround, the interior of the oval being entirely Oxford blue in colour and the word “free” which had the same see through stencil effect as the word “Brown’s”. However, the copying of this logo was carried out in Israel and therefore there was no act of primary infringement by the Defendants.
In relation to secondary infringement, the situation in relation to some of the Defendants was different. Judge Fysh held that (in relation to the passing off case) that there had been a deliberately illegal and dishonest course of conduct as the B FREE bottles were falsely portrayed as being improvements on the DR BROWN’S bottles when they were not. Consequently, the B FREE bottles were imported and distributed within the UK with the requisite knowledge at the relevant time under Sections 22 and 23 of the CDPA ’88.
Decisions of the CFI and ECJ
Legal privilege for in-house lawyers
Akzo Nobel Chemicals Ltd and Akros Chemicals Ltd v Commission (CFI (First Chamber); Joined Cases T-125/03 and T-253/03; 17.09.07)
The CFI confirmed that, in relation to Commission competition investigations, communications between a lawyer and his client are protected by legal professional privilege provided that they (i) are made for the purpose of exercising the client’s rights of defence; and (ii) emanate from independent lawyers (AM & S Europe Ltd v Commission (Case 155/79  ECR 1575) approved). The CFI further confirmed that protection extends to preparatory documents drawn up for the exclusive purpose of seeking legal advice from an outside lawyer in exercise of the rights of defence. However, the CFI refused to extend protection to communications with in-house lawyers.
On 10 February 2003, the Commission issued a decision requiring Akzo and Akros to submit to an investigation in relation to possible anticompetitive practices. The Commission carried out a dawn raid at Akzo and Akros’ premises in Manchester. During the raid a dispute arose about whether legal professional privilege (“LPP”) attached to five documents:
- a typewritten memo from the general manager of Akros to one of his superiors which, according to Akzo and Akros, contained information gathered by the manager in the course of internal discussions with other employees for the purpose of obtaining outside legal advice in connection with a competition law compliance programme;
- a copy of the same memo with hand written notes referring to contact with an outside lawyer and mentioning him by name;
- handwritten notes made by the manager during discussions with employees and used to prepare the above memo; and
- two e-mails exchanged between the manager and a lawyer employed by Akzo.
The Commission took copies of the two memos and placed them in a sealed envelope, but the remaining documents were added to the file (the Commission took the view that they were definitely not protected by LPP). In May 2003 the Commission rejected Akzo and Akros’ application for the documents to be returned or destroyed. Akzo and Akros appealed. The CFI heard the case together with a previous application for annulment in part of the Commission decision of February 2003.
The CFI concluded that none of the documents in dispute were protected by LPP. Although preparatory documents could be privileged, the memo had not been drawn up for the exclusive purpose of seeking legal advice; the subsequent consultation with an outside lawyer was not sufficient to prove otherwise. Given this, the handwritten notes used to prepare the memo were not protected. The e-mails were not protected under LPP since they were exchanged with a lawyer in the full time employment of Akzo. In refusing to extend protection to in-house lawyers the CFI noted that a large number of Member States still exclude in-house lawyers from protection under LPP and/or do not allow in-house lawyers to be admitted to the Bar or Law Society.
Akzo and Akros (supported by the Council the Bars and Law Societies of the European Union and others) have lodged an appeal against the CFI’s judgment.
Confidentiality during public procurement appeal procedure
Varec SA v Belgian State; Diehl Remscheid GmbH & Co. (ECJ (Third Chamber); C-450/06; 14.02.08)
The ECJ considered a reference made by the Belgian Conseil d’état relating to the treatment of confidential information during an appeal against a public procurement award procedure.
The Belgium State awarded a contract for the supply of track links to Diehl, partly on the basis of certain plans annexed to Diehl’s bid. Varec brought an action for annulment of the decision on the ground that Diehl’s bid did not comply with all of the award criteria. Varec contended that, as part of the review proceedings, both it and the Conseil d’état should be able to examine the plans annexed to Diehl’s bid. Diehl, who had intervened in the proceedings, objected to lodging the documents on the basis that they contained confidential information and should not be made available to Varec.
The Conseil d’état made a reference to the ECJ for a preliminary ruling on the question of whether Article 1(1) of Directive 89/665, read with Directive 93/36 and Directive 2004/18, meant that the body responsible for the appeal procedures must ensure confidentiality in the files disclosed to it by the parties, whilst at the same time being able to apprise itself of such information and take it into consideration.
Under Directive 93/36, contracting authorities have discretion to withhold information where its release could prejudice the legitimate commercial interests of particular undertakings or prejudice fair competition. The ECJ observed that the effectiveness of the relevant provisions would be severely undermined if, during an appeal, all information concerning an award procedure had to be made available to the appellant. The mere lodging of an appeal would then provide access to information which could be used to distort competition or prejudice the interests of another economic operator. It was particularly important to provide safeguards where the economic operator whose interests could be damaged was not a party to the appeal. The ECJ therefore held that the review body assumes the obligations laid down by Directive 93/36 regarding the contracting authority’s respect for the confidentiality of information.
The ECJ rejected Varec’s submission that Article 6 ECHR and the adversarial principle meant that all parties must be allowed to inspect all documents submitted to the courts; this right had to be balanced against Article 8 ECHR and the rights of other economic operators to the protection of their confidential information.
Accordingly, the ECJ held that the review body must ensure that confidential information is safeguarded, particularly when contained in files provided by the contracting authority. However, the review body may appraise itself of such information and take it into consideration. It is up to the review body to decide to what extent and by what methods the confidentiality of information should be safeguarded, having regard to the requirements of effective legal protection and the rights of defence.
Reporter’s note: We are grateful to our colleagues at Bird & Bird for their assistance with the preparation of this report: Will Alete, Céline de Andria, Claire Chapman, Emily Forsyth, Emily Peters and Alice Sculthorpe.
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 and decisions of the Appointed Person can be found at http://www.ipo.gov.uk/tm/t-decisionmaking/t-challenge/t-challenge-decision-results.htm