L & D SA v OHIM; Julius Sämann Ltd (A.G. Sharpston for the ECJ; C-488/06; 13.03.08)
L&D filed an application to register as a CTM a cartoon character based on a fir tree containing the word element “Aire Limpio” for, inter alia, Classes 3 and 5 (perfumery, essential oils and scented air freshener products).
Julius Sämann opposed the application on the basis of 18 earlier national and international trade marks all with a similar fir tree outline, including the silhouette mark and a figurative mark containing the word element ARBRE MAGIQUE (shown below) registered for goods in Classes 3 and 5.
“AIRE LIMPIO” “Silhouette” “ARBRE MAGIQUE”
OHIM rejected the opposition, however the BoA allowed the appeal in relation to goods in Classes 3 and 5. TheCFI upheld the BoA’s findings. L&D appealed, submitting that the CFI had infringed firstly Article 8(1)(b) (by finding that, inter alia, the earlier silhouette mark had acquired a distinctive character) and secondly Article 73 (by basing its assessment on evidence relating to marks other than the silhouette mark).
The AG concluded that the CFI could rely on Nestlé (C-353/03) to find that the silhouette had acquired distinctive character as part of the ARBRE MAGIQUE mark. There was no previous case law stating that, in marks containing both graphic and verbal elements, the latter play the preponderant role where the former has little imaginative content (as in the case of a fir tree). Where a finding does not conflict with the Regulation or case law, OHIM’s guidelines could not be used to invalidate such a finding. Further, there was no general rule of law that a word which lacks meaning was invariably fanciful and distinctive.
However, a mark acquired distinctive character if, although not inherently likely to be perceived as distinguishing the products of a particular undertaking, it none the less came to be so perceived. The AG considered that distinctiveness could not be shown to be fulfilled solely by reference to general, abstract data such as specific percentages. Thus, the CFI had erred in accepting that the ARBRE MAGIQUE mark had acquired a particularly distinctive character on the sole basis of sales and advertising figures and the date of first registration in Italy.
The AG further opined that the CFI had erred in dismissing the submission that the shape of the earlier mark was necessary to obtain a technical result without examining the substance of that argument. She doubted whether the reasoning in Durferrit (T-244/01) (where the CFI rejected an opposition because it relied on one of the absolute grounds for refusal under Article 7) should apply where a party seeking to register a CTM relied on an absolute ground as a defence to an opposition to show that earlier mark should not have been registered.
Finally, the AG considered that the CFI erred in assuming that the BoA had based its assessment on evidence relating to the ARBRE MAGIQUE mark when that was not indicated in the decision. The AG concluded that the CFI decision should be annulled and the case remitted to OHIM.
Public interest requirement of availability
Adidas AG & Anr v Marca Mode CV & Ots (ECJ (First Chamber); C-102/07; 10.04.08)
Adidas own the famous figurative mark composed of three vertical parallel stripes of equal width which are featured on the sides of sports and leisure garments in a colour contrasting with the basic colour of those garments.
Adidas commenced infringement proceedings in the Netherlands against four clothing retailers who sold garments bearing a mark consisting of two vertical parallel stripes in a contrasting colour to the basic colour of those garments. Adidas was successful at first instance, however, the Appeal Court subsequently annulled the decision. Although the mark had acquired considerable distinctiveness through use (it was not particularly distinctive per se), the scope of the protection could not be extended to other striped patterns; these had to remain available for use by other third parties. The Dutch Supreme Court referred various questions to the ECJ.
The ECJ held that the Directive should be interpreted as meaning that the public interest requirement of availability could not be taken into account in the assessment of the scope of the exclusive rights of the trade mark owner, except in so far as the limitation of the effects of the trade mark (as set out in Article 6(1)(b) of the Directive) applied.
Although the ECJ noted the public interest in leaving some signs free, it also ruled that this was not one of the factors to be taken into account in assessing any likelihood of confusion under Article 5(1)(b) which had be based on global perception by the public of the goods covered by the mark and the goods covered by the sign used by the third party. The ECJ held that the fact that the public might perceive a sign as decoration did not restrict the protection given by Article 5(1)(b). It was for the national court to decide whether the average consumer seeing a two striped motif on goods could be misled as to the origin of those goods.
Similarly, the ECJ held that the requirement of availability did not constitute a relevant factor for determining whether the use of a sign takes unfair advantage of, or is detrimental to, the distinctive character/repute of a trade mark under Article 5(2). The infringements referred to in Article 5(2) were the consequence of a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public establishes a link between them. The requirement of availability was extraneous to this assessment.
The ECJ also provided guidance in interpreting Article 6(1)(b) which is designed to ensure that all economic operators have the opportunity to use descriptive indications and therefore gives expression to the requirement of availability. In order to rely on Article 6(1)(b), the indication used must relate to one of the characteristics of the goods marketed or the service provided. In this case the retailers’ reliance on the decorative nature of the two-stripe motif did not give any indication concerning the characteristics of the goods.
Use of information collected by Customs authorities
Beecham Group plc & Ots v Andacon NV (A.G. Ruiz-Jarabo Colomer for the ECJ; C-132/07; 08.04.08)(Decision not yet in English)
Beecham Group, part of GSK, specialises in the manufacture and distribution of pharmaceuticals and owns a number of registered trade marks for these products. Andacon NV is a wholesale trader of pharmaceuticals.
In 2003 and 2004, GSK exported pharmaceuticals to a company based in Ethiopia. In November 2003, GSK lodged an application for customs action under Council Regulation (EC) No 3295/94 which was approved with a validity date of 25 November 2004. On 1 July 2004, Council Regulation (EC) No 3295/94 (“the old Customs Regulation”) was replaced by Council Regulation (EC) No. 1383/03 (“the new Customs Regulation”). Council Regulation (EC) No 1891/2004 (“the Implementing Regulation”) lays down the provisions for the implementation of the new Customs Regulation.
In October 2004, the Belgian Customs authorities informed GSK that a large consignment of products bearing their trade marks had been imported into Belgium from a non-EU country. GSK were allowed to review samples of some of these products and were able to confirm that batch numbers matched the products intended forEthiopia. GSK successfully applied for the products to be seized and started proceedings before Rechtbank van koophandel (commercial court in Brussels) against Andacon to prevent it from marketing the products without GSK’s authorisation. Andacon contested GSK’s action on the ground that the information collected by the Belgian Customs authorities under the new Customs Regulation was being used for purposes other than those permitted by this Regulation, in particular for the purposes of preventing parallel imports.
The Rechtbank stayed the proceedings and asked several questions regarding the legality of the actions taken by the Belgian Customs authorities and regarding the use of information obtained in connection with such actions.
The Rechtbank queried the continued effectiveness of GSK’s application for Customs action in the light of requirements laid down by the Implementing Regulation. Article 9(1) of the Implementing Regulation provides that applications for Customs action made before 1 July 2004 must be supplemented by a declaration from the rights holder as required by in Article 6 of the new Customs Regulation. GSK had not provided such a declaration. The question, therefore, was whether a declaration was a formal condition for Customs action made before 1 July 2004. The AG was of the opinion that it was not; the facts at issue had occurred before the publication of the Implementing Regulation and GSK could not be expected to comply with those requirements.Furthermore, he endorsed the Commission’s view that applications for Customs action made before 1 July 2004 remained effective until the expiry of their validity date independently of whether a declaration under the new Customs Regulation was filed.
The Rechtbank also queried the extent to which information collected by Customs authorities pursuant to the new Customs Regulation (e.g. actual or estimated quantity and actual or supposed nature of the goods, names and addresses of the consignee, the consignor, the declarant or the holder of the goods and the origin and provenance of the goods) could be used for purposes other than those envisaged by that Regulation, in particular (i) by Customs authorities in the context of the questioning of witnesses or the submission of documents in separate proceedings; and (ii) by trade mark owners in connection with proceedings to prevent parallel imports. The AG was of the opinion that the new Customs Regulation did not prevent use of the information for such purposes. The AG noted that the Customs authorities were not subject to the new Customs Regulation but to the Community Customs code which permits such use of the information by Customs authorities. As regards trade mark owners, the AG referred to the ECJ case law according to which a trade mark owner is entitled to prevent the marketing within the EEA of products bearing the mark which had previously been placed on the market outside the EEA where it has not consented to such marketing. As the purpose of the new Customs Regulation was to prevent the marketing of counterfeit and pirated goods, the AG was of the opinion that it would be awkward if trade mark proprietors could not use information collected by Customs authorities under the new Customs Regulation to prevent such parallel imports.
Rousselon Freres et Cie (“RF”) v Horwood Homewares Ltd* (“HH”) (Warren J.;  EWHC 881 (Ch); 24.04.08)
The hearing officer, Mr Foley, refused RF’s application under Sections 47(2)(a) and 5(2)(b) to invalidate two of HH’s marks registered in Classes 8, for inter alia cutlery, and 21 for domestic utensils. HH’s marks are as follows:
RF’s application was based on three marks all registered in Class 8 for, inter alia, kitchen knives, one mark comprising SABATIER, the other two included the word SABATIER.
Mr Foley held that, although there was identity between the majority of the goods covered by the respective marks in Class 8 and some similarity between the marks, there was nevertheless no likelihood of confusion between HH’s marks and RF’s SABATIER mark. He held that there was no similarity between RF’s Class 8 goods and the goods covered by Class 21 of HH’s marks.
The Judge allowed the appeal.
Firstly, Warren J considered whether there was similarity between the Class 8 and 21 goods. The test was the one laid down in British Sugar v James Robertson  RPC 281. Although, Mr Foley found that the users of the respective goods were the same, the trade channels through which the goods reached the market were the same and the goods were to some extent complementary (and not in competition) with one another, nevertheless, he found that the goods were not similar, in part, giving some weight to how the trade considered such goods. The Judge held that the evidence, applying the global approach, did not lead inevitably to one conclusion (in doing so, he made reference to the common sense approach; “that wobbly touchstone”).Consequently, Mr Foley was entitled to find that the goods in Classes 8 and 21 were not similar.
Secondly, Warren J considered the likelihood of confusion between the marks. Mr Foley had held that:
“I see no reason why the word SABATIER will be singled out for attention. Both JUDGE and STELLAR are well used and distinctive marks. They are not dominated by the SABATIER element. There are a variety of marks that incorporate SABATIER, used by different traders, which in my view is likely to focus attention on other elements in order to distinguish…. I come to the view that despite the identity in the use of the distinctive word SABATIER, the differences brought about by the other elements in the registered proprietor’s marks serve to distinguish.”
The reference to “a variety of marks that incorporate SABATIER” was a reference to the fact that RF were members of the “Association des Proprietaires des Marques de Coutellerie incorporant le mot Sabatier” (which translates as “Association of Proprietors of Cutlery Trade Marks incorporating the word Sabatier”). The Association was formed for the purpose of protecting the SABATIER name and distinctive character. However, RF’s marks were not collective or certification marks, rather, RF and other companies each had registered trade marks containing the word SABATIER in various countries, including the UK.
HH had not pleaded that RF’s marks were not distinctive or should be revoked on the basis that SABATIER was a common name in the trade. Nevertheless, the argument before Mr Foley moved towards an attack on the mark. That attack was sustained on appeal; because the mark was devoid of distinctive character, or was of very low distinctive character, there was no likelihood of confusion. Mr Foley found that SABATIER was distinctive and, in reviewing all the evidence himself, the Judge was of the same opinion. HH failed to prove that SABATIER was commonly used in the trade. RF’s marks had been validly registered and HH failed to show that that position had changed.
Finally, the Judge turned to the issues raised in Medion v Thomson Multimedia  ETMR 13 (a case of a composite mark where the ECJ considered the infringement of the mark LIFE by the use of the mark THOMSON LIFE). As Warren J stated:
“[Medion] does not say that a composite mark which contains an earlier mark will always carry a likelihood of confusion; rather, it says that there is such likelihood if the earlier mark has an independent distinctive role. However, the assessment whether the earlier mark does have such a role is, I consider, something which has to be decided before answering the question whether there is a likelihood of confusion. To elide the question of an independent distinctive role with the question of the likelihood of confusion runs the risk of answering the former question by first providing an answer to the latter. That would be to answer the question “Is there a likelihood of confusion” with the answer “Yes, if there is a likelihood of confusion” when the answer should be “Yes, if the earlier mark retains an independent distinctive role”.”
The Judge held that Mr Foley’s view that SABATIER had an independent distinctive role in HH’s marks could not be consistent with maintaining that there was no likelihood of confusion between RF’s SABATIER mark and HH’s marks. Consequently, he allowed the appeal.
Use of prior art from a different field
Green Lane Products Ltd v PMS International Group plc & Ots* (L.J.J. Ward, Jacob & Rimer;  EWCA Civ 358; 23.04.08)
Green Lane Products failed in their appeal against the decision of Lewinson J ( EWHC 1712) on a preliminary issue in infringement proceedings. Green Lane manufactured and sold spiky rubber balls for use in tumble dryers as a drying aid. They obtained Community Registered Designs (CRDs) for the balls which were listed in Class 7.05 under the Locarno Convention (flatirons and washing, cleaning and drying equipment). PMS sold similar spiky balls, prior to the Green Lane registration, for use as massaging aids. After Green Lane had obtained their CRD’s PMS decided to sell their spiky balls for other purposes including for use as laundry balls.Green Lane claimed that PMS would infringe their CRDs if they continued to sell their product for any other use other than as massage balls.
Green Lane “Dryerballs” PMS spiky plastic balls
The preliminary issue concerned the correct construction of Article 7 of the Community Designs Regulation, in particular, the meaning of the exception to designs deemed to be prior art, that is, where they could not have been known to the “the circles specialised in the sector concerned operating within the Community”. The Judge at first instance held that (i) the “sector concerned” within the meaning of Article 7 consisted of or included the sector of the alleged prior art; and (ii) the “circles specialised in the sector concerned operating within the Community” were capable of consisting of all individuals who conducted trade in relation to products in the sector concerned, including those who designed, made, advertised, marketed, distributed and sold such products in the course of trade in the Community.
Green Lane contended that PMS could not attack the validity of the Green Lane CRDs using prior sales in a different market sector to that in the CRDs. PMS submitted that the design was old based on their own prior sales in the EU of what was essentially the same design.
The parties reached a settlement before judgment was handed down, but the CoA decided still to issue the judgment on the basis that it was in the public interest. Jacob LJ gave judgment for the Court. He dismissed the appeal and refused to make a reference to the ECJ. He set out the following principles in his judgment:
1. For a CRD to be valid the design must be new and have individual character. This required consideration of an earlier design made available to the public. A design was not new if it was part of the state of the art and the state of the art was everything that has been made available to the public before the relevant date. As such, the “circles” referred to in Article 7 were those where the design had previously been disclosed and were therefore not limited to the sector specified in the CRD application.
2. The Article 7 exception was to be construed narrowly. It was intended to protect the European design industry from claims that designs were invalid because of earlier designs somewhere else in the world which the European industry could not have been aware. In essence, the exception was intended to prevent a claim for invalidity being made by infringers using obscure prior art.
3. The informed user concept under Recital 14 only came into play once the prior art had been identified. The “circles in the sector concerned” exception simply ruled out certain prior art from being considered at all either because of novelty, which does not involve the informed user, or for the purposes of individual character.
4. Article 36 of the Regulation was purely an administrative provision. This was shown by, amongst other things, the lack of sanction for a mistaken or misstated declaration on goods the design is to be applied to. Therefore, it was going too far to suggest that the declaration under Article 36 was intended to have any effect over substantive rights or their validity.
5. A CRD provided the owner with monopoly protection over any kind of goods according to the design. It therefore followed that to attack novelty, prior art covering all kinds of goods could be used subject to the Article 7 exception of obscure prior art.
No defence of innocent infringement for Community designs
J Choo (Jersey) Ltd v Towerstone Ltd & Ots* (Floyd J;  EWHC 346 (Ch); 16.01.08)
On an application for summary judgment, the Judge found infringement of a Community registered design and a Community unregistered design. An injunction was not granted because the first Defendant offered an undertaking in the terms requested by the Claimant. The validity of the design was not challenged.
The case related to infringement of a Jimmy Choo handbag called Ramona, pictured below:
The Judge held that the informed user would be someone with a knowledge of handbag design; not the woman in the street, not a handbag designer. Further, he accepted that the most significant features of a handbag design are those in the front of the bag, being visible when in use.
The Judge held that the impression given by the two bags was the same. Of the differences listed by the Defendant, the Judge found as follows:
1. The following were irrelevant as they were not features of the design: the differences in texture; the absence of a square panel of fabric behind the clasp; some differences on the back of the clasp; and the absence of the “Jimmy Choo” logo.
2. The following were trivial and did not influence the impression given of the bag as a whole: differences in the longitudinal strap running round the bag; the fact that there were twice as many eyelets on the Ramona bag and the eyelets were somewhat larger; the absence of the horseshoe fitting at the end of the strap; and a difference in the lozenge shapes at the end of the handles where they met the eyelets.
The Defendant argued that the poorer quality of its handbag gave rise to a different overall impression (relying on paragraph 60 of Procter & Gamble v Reckitt Benckiser  EWCA Civ 936). The Judge rejected this argument holding that, although a difference in quality could give rise to a different impression if the difference was discernable by comparing the design and the alleged infringement, here, the differences in quality were only really discernable when comparing the two bags side by side.
The Judge inferred that there had been copying: the likelihood that the two designs could have been arrived at independently was fanciful.
The Defendant submitted that it had a defence of innocent infringement. The Judge held that, although there was such a defence in relation to UK registered designs and UK unregistered designs (Section 24B Registered Designs Act and Section 233 Copyright Designs and Patents Act respectively), there was no such defence in relation to either Community registered or unregistered design rights. The Claimant was therefore entitled to an enquiry as to damages or an account of profits.
Infringement of UK design right
Societa Espolivi Industriali Spa v Ordnance Technologies (UK) Ltd & Ots* (Lindsay J;  EWHC 2875 (Ch); 5.12.07)
This decision has been reported at  RPC 12 and therefore only a very short summary is provided in relation to the design right issues.
Lindsay J held that the first Defendant had infringed the design right in the conical liner for the Lancer 2 multiple warhead system when working on a project for the Ministry of Defence under Section 226(1)(a) CDPA as articles were made to the Claimant’s design.
However, there had been no infringement in relation to a project for Raytheon. No articles had been made, so the Claimants relied upon Section 226(1)(b) CDPA which provides that: “The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes … by making a design document recording the design for the purpose of enabling such articles to be made.”
There was a question of construction: Did this section require proof of a particular state of mind in the infringer?The Judge held that the natural way of reading the words “for the purpose of enabling such articles to be made” was to relate back so as to qualify the words “by making ….” so that it was the making of the document which was required to have been for the specified purpose. He acknowledged that, from the Claimant’s point of view,such a construction was inconvenient in that it required a further subjective element (beyond “commercial purpose”).
In relation to the Raytheon project, there was no infringement because no design document of a part or of the whole of Lancer 2 warhead was made for the purpose of enabling there to be made any article to the Claimant’s design. There were some initial materials, but no suggestion that an article could have been made from them.The Judge did not consider it to be an infringement where a design document was used as a starting point for the making of further design documents which were variations upon the protected original, even where that making had been in the course of a commercial purpose. Were that to be an infringement, the words in Section 226(1)(b) “for the purpose of enabling such articles to be made” would have been redundant.
JHP Ltd v BBC Worldwide Ltd & Trustees of the Estate of Terry Nation* (Norris J;  EWHC 757; 16.04.08)
The Judge held that BBC Worldwide (“BBCW”) had a complete defence to copyright infringement in that it had acquired a licence by estoppel from the estate of Terry Nation, the author of three books relating to the Daleks (the “Books”).
In 1964 and 1965, Terry Nation and Souvenir Press entered into an agreement in relation to each of the Books.The claim to infringement made by JHP (which had worked closely with Souvenir Press and had been assigned the latter’s rights in the Books in 2002) on the footing that Terry Nation was the author of the text in the Books and that it, JHP, was the exclusive licensee or alternatively the assignee of the copyright and therefore had a right capable of being infringed.
The Judge construed the agreements and held that they constituted exclusive licences to publish the particular text, despite the agreements containing the concept of reverter of the rights (rather than of termination or cessation). The concept of reverter was strongly suggestive of assignment or transfer of a property right that did not depend for its existence on the agreement which contained the reverter provision itself. However, there was no general principle that a reverter clause automatically indicated an assignment; other indicators in the agreement pointed to an exclusive licence; and there was evidence that Terry Nation would not have thought of assigning his rights at that point in his career when a number of episodes of Dr Who containing Dalek stories had been aired on BBC TV and more were planned. JHP was therefore the exclusive licensee of the right to publish the Books.
The Judge then turned to BBCW’s defence. The dispute related to ‘The Dalek Survival Guide’ published by BBCW in 2002. Prior to releasing the book, BBCW had obtained agreement from the Estate of Terry Nation to use material derived from text in which they held the copyright. Therefore the Estate was estopped from denying that it had licensed BBCW to commit what otherwise would have been an infringement. This was sufficient on the facts to give BBCW a defence to the claim under Section 101(3) CDPA (rights and remedies of exclusive licensee), even if it had been found that they had infringed JHP’s rights.
In the event that he was wrong on this point, the Judge went on to examine the case of copyright infringement and found that the case against BBCW was not made out. Prior to publication, but after some considerable time spent on writing, BBCW was made aware that JHP would not consent to use of material from the Books.Therefore, they attempted to excise all the material taken from the Books. There were some similarities left in the text, but no copying; the Judge held that in each case, the relevant passage in the Books was not an original work and therefore the apparent similarity did not justify an inference of copying. If, again, he was wrong on that point, the Judge went on to find that, had there been copying, it was not of a substantial part of the Books taken individually. In each case, the quantity was small and the significance relatively minor.Further, the most significant “copied” parts were parts on which it could not be said that Terry Nation has expended significant skill and effort as an author; they were copies or repetitions of text which he had earlier produced in the course of other work.
Distribution of Copyright Works
Peek & Cloppenburg KG V Cassina SpA (ECJ (Fourth Chamber); C-456/06; 17.04.08)
Cassina, an Italian furniture manufacturer, brought an infringement action against Peek & Cloppenburg (“P&C”), a German clothes retailer, for fitting out a customer rest area in one of its clothing shops with Le Corbusier chairs and displaying a chair in a shop window. Cassina had the exclusive right to manufacture and sell Le Corbusier furniture; P&C obtained the chairs from a separate company in Italy (where at the time they were not protected by copyright). Cassina alleged that this was an infringement of its exclusive distribution right.
At first instance the German Court ruled in favour of Cassina. P&C appealed and the appellant court made a reference to the ECJ, asking whether the concept of a distribution otherwise than through sale of an original or copy of a work, for the purpose of Article 4(1) Directive 2001/29, would include (i) making available copyright protected works to third parties for temporary use, without a transfer of ownership to the third parties; and/or (ii) exhibiting the works to the public, without granting a right to use them.
The ECJ held that Article 4(1) should be interpreted in accordance with the Copyright Treaty and the WIPO Performances and Phonograms Treaty. These Treaties link the concept of distribution exclusively to that transfer of ownership. Therefore neither (i) nor (ii) above would constitute distribution under Article 4(1). It would be for the Community legislature to amend the rules if it
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, Nick Aries, Jennifer Bryant, Taliah Davis, Cristina Garrigues, Tim Harris and Michael Sweeney.
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