This month we report on the Court of Appeal finding a 3D mark not infringed in the Whirlpool v Kenwood and the House of Lords finds there is no time limit for bringing a claim of ownership to copyright in Fisher v Brooker (“A Whiter Shade of Pale” case).
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|Application (and where applicable, earlier mark)
- coffee, tea, cocoa, sugar, rice, pastry and confectionary etc. (30)
- caramels, coca, chocolate, confectionery, marmalade etc (30)
(Swedish national registration)
- coffee, tea, cocoa, sugar, rice chocolate etc (30)
The CFI upheld the BoA’s finding that the registration for CENTER SHOCK was invalid under Articles 52(1)(a) (now 53(1)(a)) and 8(1)(b).
It was not disputed that the goods covered by the application were identical to those covered by the earlier marks. Perfetti’s submission that the BoA erred by not analysing the differences between the goods for which each of the trade marks was actually used was rejected. The comparison required by Article 8(1)(b) must relate to the description of the goods covered by the earlier mark and not to the goods for which the trade mark is actually used, unless, following a request for proof of genuine use of the earlier mark, such proof is supplied in respect of only some of the earlier goods.
The CFI upheld the BoA’s finding that the marks at issue were similar conceptually, visually and phonetically; the presence of the word SHOCK in the mark applied for did not negate this finding. The BoA did not err in concluding that there was a likelihood of confusion.
|Application (and where applicable, earlier mark)
- cosmetics (3)
- vitamin and mineral supplements (5)
- various chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry (1)
- various pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use (5)
- medical and pharmaceutical services, scientific research (42)
The CFI dismissed the appeal by Laboratorios Del Dr. Esteve, finding that there was no likelihood of confusion between the marks under Article 8(1)(b).
The relevant public was health professionals (doctors and pharmacists) and end-users, whose level of attentiveness was high.
It was not disputed that the goods at issue were of the same nature, had the same end-users and were marketed through the same channels.
The marks had some visual similarity but it was limited, partly because of the use of a special typeface and decorative elements in the earlier mark. The marks were phonetically similar, with the hyphen of the mark applied for contributing less to differentiate the marks phonetically than visually. However, the significance of the phonetic similarity was lessened by the fact that the goods were often selected from a shelf, meaning that the marks were inspected visually. Conceptually, the marks were very different. ESTEVE has no meaning in the Community other than being a surname in Spanish, while ESTER evoked two immediate associations: an organic compound and a girl’s name.
There was no likelihood of confusion.
The Procter & Gamble Company v OHIM; Laboratorios Alcala Farma, SL
|Application (and where applicable, earlier mark)
- various perfumery and cosmetic products (3)
- various pharmaceutical products (5)
- various cleaning, perfumery and cosmetic products(3)
- various pharmaceutical and medicinal products (5
The CFI dismissed the appeal, concurring with the BoA’s finding that there was no likelihood of confusion between the marks under Article 8(1)(b).
The overall impression of the mark applied for differed significantly from the earlier marks.
Visually, the marks had different graphical representations and word lengths. The stylised character of the mark applied for constituted a distinctive component and could not be considered negligible.
Phonetically, the BoA was correct to conclude that the marks were pronounced differently. Even if P&G’s submission regarding how the mark applied for should be pronounced was correct, the resulting limited phonetic similarity would be of little significance. The goods in question are usually displayed in such a way that consumers are able to examine them visually.
The BoA was right to find the marks in no way similar conceptually and was correct to rule out a likelihood of confusion.
Européenne de traitement de l’information v OHIM
|Application (and where applicable, earlier mark)
- distribution machines; smart cards; software; computers (9)
- management of vending machines and automated teller machines (35)
- banking (36)
- telecoms (38)
- development of on-line payment and trade security systems (42)
The CFI dismissed the appeal, upholding the decision of the BoA that the mark lacked distinctive character under Article 7(1)(b).
The applicant also argued that the mark had acquired distinctive character through use (Article 7(3)). This argument was rejected by the CFI on the grounds that the requirements of Article 7(3) had not been fulfilled.
|Application (and where applicable, earlier mark)
- mineral and aerated water and other non-alcoholic beverages ; non-alcoholic fruit juice beverages and fruit juices; syrups for beverages (32)
The appeals by Mineralbrunnen under Articles 7(1) (b), (c) and (g) against the decisions of the BoA to allow the two applications were dismissed.
The CFI found that both the figurative mark and the word mark applied for were distinctive and not descriptive of the goods for which they were applied. Furthermore, the marks were not deceptive as to the geographical origin of those goods.
|Application (and where applicable, earlier mark)
- packing and padding materials of rubber or plastics; packing and insulating materials (17)
- fire protection plates and mineral-based insulation plates (17)
||The appeal by Promat against the decision of the BoA to reject its opposition under Article 8(1)(b) was dismissed.
The CFI found no similarity between the goods of the mark applied for and the earlier mark.
Mars, Inc. v OHIM; Ludwig Schokolade GmbH & Co. KG (CFI (Fourth Chamber); T-28/08; 08.07.09)
Mars obtained a CTM in Classes 5, 29 and 30 for the 3-D mark reproduced below:
Ludwig applied to invalidate the CTM under Articles 51(1)(a) and 7(1)(b) amongst others. The cancellation division rejected the application on the basis that the mark had acquired distinctive character through use. Ludwig appealed to the BoA which allowed the appeal and declared the CTM void. The CFI dismissed Mars’ appeal in its entirety.
Mars’ first plea was that the BoA misread the evidence and thus infringed the provisions of Article 7(1)(b). The CFI summarised the case law relating to the distinctiveness of 3-D trade marks as follows:
The criteria for assessing the distinctive character of 3-D trade marks are no different from those applicable to other categories of trade mark.
- However, average consumers are not in the habit of making any assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element. Therefore, it may well prove more difficult to establish that a 3-D mark, rather than a word or figurative mark, is distinctive.
- The closer the shape of the mark resembles the shape most likely to be taken by the product in question, the greater the likelihood that the shape is devoid of distinctive character. In order for a mark to be distinctive, it must depart significantly from the norm or customs of the sector and thereby fulfil its essential function of indicating origin. A mere variant of a common shape is not sufficient.
The CFI held that the shape of Mars’ chocolate bar was devoid of any distinctive character for the following reasons:
- The elongated shape is almost intrinsic to a chocolate bar (with the word ‘bar’ itself suggesting an elongated product) and did not therefore significantly depart from the norm and customs of the relevant sector.
- Applying rounded ends to the bar did not make it unusual in the sector.
- The three chevrons on the top of the shape would be regarded by the average consumer as decorative elements and not as a sign indicating the commercial origin of the product. The end user would usually pay more attention to the label and packaging as opposed to the shape of the product. Furthermore, Mars’ bar was sold in opaque packaging so the consumer would see its shape only after it is unwrapped.
Mars also submitted that the BoA made a number of errors in its application of Articles 7(3) and 51(2). The CFI held that, in order for Article 7(3) to apply, the applicant must demonstrate acquired distinctiveness by use in all parts of the Community where it was, ab initio, devoid of any such character under Articles 7(1)(b) to (d). In the case at hand, the mark was found to be non-distinctive in the entire Community. Evidence of acquired distinctiveness in all of the fifteen Member States was therefore necessary. The BoA was correct in finding that evidence from six Member States did not represent a suitably substantial part of the Community as required under Article 7(3). Furthermore, the results of surveys in six of the Member States could not be extrapolated to the other nine Member States. It was unrealistic to assume that survey results will be uniform across the entire European Union. More generally, the CFI noted that the fact that the sign at issue had been used for a long time in certain Member States was not sufficient to prove that the relevant public perceived it as an indication of commercial origin.
Infringement under Article 9(1)(c) CTMR post L’Oréal v Bellure
Whirlpool Corporation & Ots v Kenwood Ltd* (Rix, Lloyd and Wilson LJJ;  EWCA Civ 753; 23.07.09)
Whirlpool made and distributed a stylishly designed KitchenAid Artisan food mixer throughout Europe (reproduced below left). In July 2007, Kenwood launched a competing kMix food mixer (reproduced below right) intending to attract design conscious consumers.
Whirlpool owned a CTM registered for electric beating and mixing machines in Class 7. The graphic representation of the mark, reproduced below, shows an outline of the mixer viewed from three different angles. Although it cannot be seen clearly, the word KitchenAid is included in the design and therefore Article 7(1)(e) CTMR did not apply.
Before Geoffrey Hobbs QC (sitting as a deputy judge,  EWHC 1930 (Ch)),Whirlpool’s action for trade mark infringement under Articles 9(1)(b) and 9(1)(c) CTMR and passing off, failed. The appeal only related to Article 9(1)(c). The Court of Appeal, Lloyd LJ giving judgment, upheld the deputy judge’s decision.
The ECJ’s decision in L’Oréal v Bellure (Case C-487/07) was delivered after the Court of Appeal had heard the parties’ submissions and written submissions from both sides were allowed before the judgment was handed down. Whirlpool’s submissions on the L’Oréal decision were to the effect that the element of intention would be relevant to infringement under Article 9(1)(c) if it were proved, but that it was not necessary in order to show unfair advantage. Therefore, submitted Whirlpool, using a sign which was sufficiently similar to a mark with a reputation for a link to be established, where the defendant obtained a commercial boost or other advantage from that link, that advantage would, of itself, be unfair without proof of any additional factors.
Lloyd LJ did not accept this submission. Had the ECJ meant to convey that the word “unfair” added nothing, so that any advantage was an unfair advantage, the Court would not have said what it did in the decision. Turning to the decision below, the Court of Appeal held as follows:
Was the judge’s reference to Article 7(1)(e) a misdirection?
The Court of Appeal held that the judge did not make the elementary mistake of applying Article 7(1)(e) to the present case. What he said was that the policy underlying that Article was relevant to the assessment of whether there was a sufficient similarity between the mark and the sign, both being shapes, for Article 9(1)(c) to be satisfied. Given that an assessment of similarity had to be carried out on a global basis (Intel Corporation v CPM UK Ltd, Case C-252/07 referred to), the nature of the mark and sign and the nature of the similarity had to be relevant. It was not therefore a misdirection in itself to observe that both the mark and the sign respectively consisted of the shape of the product, and that while the Artisan had a somewhat distinctive shape, it did not involve any fanciful or capricious element as a distinguishing feature. In any case, apart from sounding a warning note, it was not clear what effect the judge’s observations had on his actual decision
Did the judge apply a different test for infringement in respect of shapes?
Geoffrey Hobbs QC had stated that “it would be excessive, in the realm of product shapes, to apply the concepts of ‘free riding’, ‘blurring’, ‘tarnishment’ or dilution’ more generally so as to hold that the bodywork of the kMix was too close to the bodywork of the Artisan for the purposes of Article 9(1)(c)”.
The Court of Appeal found that the judge did not apply a narrower test than he should have done in so stating the point. The judge had started from the point that the two shapes had enough in common for one to remind average consumers of the other while not causing even initial, let alone lasting, confusion as to trade origin. He accepted that this was sufficient to amount to the necessary link, but concluded that the link had not caused detriment or led to unfair advantage being taken of the mark’s distinctive character or repute; while the arrival on the market for the kMix had eroded the market share of the KitchenAid Artisan, this did not impinge on any aspect of the property appertaining to the CTM.
The judge’s use of the words “more generally” meant that the relevant concepts could not properly be applied so generally as to find that the shape of the kMix was so close to that of the CTM as to offend against Article 9(1)(c). He was not saying that they were to be applied less generally where the mark and the sign were both product shapes. Even if the judge had misdirected himself as to the test to be applied, the facts did not lead to a different conclusion.
Detriment to the distinctive character of the CTM
Whirlpool submitted that the judge contradicted himself by saying that the marketing of the kMix did not touch or otherwise affect the distinctiveness of the Artisan mark, while saying in the very next sentence that that it was apt to erode Whirlpool’s market share. The Court of Appeal noted that the proposition that something is apt to erode Whirlpool’s market share without impinging on its trade mark rights was not in itself a difficult proposition. Especially where one product had a monopoly market, the introduction of another product by a rival was itself likely to affect the market share of the first; this could happen by fair and lawful competition, without anything being done which might infringe the trade mark rights of the first undertaking.
The judge rejected the possibility of initial confusion, which disposed of the claim under Article 9(1)(b). It also disposed of the claim under Article 9(1)(c) based on detriment to the distinctiveness of the mark, because the judge held that the CTM shape remained as distinctive as it was before.
Unfair advantage of the distinctiveness or repute of the CTM
The facts of L’Oréal v Bellure, in which the alleged infringers had evinced a clear intention to take advantage of the distinctive character and repute of the marks, were very far from those of the present case. Kenwood had its own established goodwill in kitchen appliances and did not need to ride on Whirlpool’s coat tails, so as to save itself making promotional efforts. As a newcomer in a specialist market of which the Artisan had a monopoly and being (necessarily) in the basic C-shape of a stand mixer, the kMix would of course remind average consumers, who were design aware, of the KitchenAid Artisan. That, however, was a very different phenomenon, in very different commercial circumstances, from the situation considered in L’Oréal. Indeed, the decision in that case seemed to point away from, rather than towards, liability under Article 9(1)(c) in this case.
It was not sufficient to show (even if Whirlpool could) than Kenwood had obtained an advantage. There must be some added factor for that advantage to be unfair. Whilst unfairness could be demonstrated by something other than intention, no such additional factor had been identified here. Whirlpool had not shown that Kenwood had in fact drawn any commercial advantage from the perceived similarity. Thus the judge was right to reject the case of unfair advantage for two reasons: there was no advantage to Kenwood and if, to the contrary there were, it was not an unfair advantage. Accordingly, the appeal was dismissed.
Trade Mark use
Danjaq LLC v OHIM; Mission Productions Gesellschaft für Film-, Fernseh- und Veranstaltungsproduktion mbH (CFI (Second Chamber); T-435/05; 30.06.09)
Mission Productions filed an application for a CTM for the word mark “Dr. No.” for goods in Classes 9, 12, 18, 25 and 32. Danjaq LLC gave notice of opposition to the registration of the “Dr. No.” mark. OHIM rejected the opposition. Danjaq’s appeal to the BoA was dismissed. Danjaq then appealed to the CFI which dismissed the appeal.
Danjaq’s first submission was that the mark applied for infringed Articles 8(1)(b) and 2(c) on the basis of its earlier well known signs “Dr. No” and “Dr. NO” giving rise to a likelihood of confusion.
In rejecting this, the CFI noted that the essential function of a trade mark is to identify the commercial origin of its good or services (Dart Industries v OHIM (UltraPlus) Case T-360/00, and Sunrider v OHIM Case T-242/02). Dr. No is the title of the first film in the ‘James Bond’ series and also one of the main characters in the film. That did not stop Dr. No and Dr. NO being trade marks. However, in this case the signs did not indicate commercial origin, only artistic origin. The signs, affixed to DVDs etc, helped distinguish that film from other films in the ‘James Bond’ series, but the commercial origin was indicated by other signs, such as ‘007’ or ‘James Bond’. Since Danjaq had failed to establish use of the signs as trade marks prior to the application being made, the signs could not be regarded as well known trade marks under Article 8(2)(c). Therefore it was unnecessary to examine whether the signs in question were, in fact, well known or whether there was a likelihood of confusion between the signs in question.
Danjaq further submitted that Article 8(4) was infringed. The CFI confirmed that the four Article 8(4) conditions (namely (i) the sign is used in the course of trade; (ii) the sign is of more than mere local significance; (iii) the sign confers on its proprietor the right to prohibit the use of a subsequent trade mark; and (iv) the rights to the sign in question were acquired prior to the date of application for CTM registration) are cumulative and all must be satisfied for an opposition to succeed on this ground. The use in the course of trade is therefore a fundamental requirement. The CFI levelled numerous criticisms at the evidence adduced by Danjaq to support this submission and concurred with the BoA that Danjaq had failed to establish trade mark use and rejected this plea.
Scope of protection of state emblems
American Clothing Associates SA v OHIM (ECJ (First Chamber); Joined cases C-202/08 and C-208/08; 16.07.09)
The ECJ has provided useful guidance on Article 7(1)(h); an absolute ground of refusal if a trade mark or an element of a trade mark contains, amongst other things, a flag or State emblem.
American Clothing applied to register a mark (below, left) in Classes 18 (certain leather goods), 25 (clothing, footwear, headgear) and 40 (tailoring, taxidermy, bookbinding and other services).
OHIM refused registration of the mark in respect of all goods and services on the basis of Article 7(1)(h), stating that the mark was liable to lead to the impression on the part of the public that it was linked to Canada, as the maple leaf in the trade mark applied for was a copy of the emblem of Canada (below, right).
The BoA upheld OHIM’s decision. However, the CFI partially annulled the decision, in so far as it related to registration for services in Class 40 on the ground that Article 6ter of the Paris Convention (to which Article 7(1)(h) directly refers) did not apply to service marks. The CFI considered that Community legislature was aware of the importance of service marks in modern commerce: although it could have extended the scope of the relevant provisions to service marks, it had not.
American Clothing appealed against the CFI’s decision to refuse registration of the sign for Classes 18 and 25 and OHIM appealed against the decision to permit registration for Class 40.
The ECJ found that the essential functions that can be attributed to a State emblem differ from that of a trade mark. The former identifies a State and represents its sovereignty and unity, whilst the latter is to guarantee the identity of origin of the marked product or service to the end user. Therefore, the two are treated differently under both Community and international law.
Further, a trade mark must be obtained by registration and only in respect of specified classes of goods and services. However, a State emblem is merely communicated to the International Bureau of WIPO and is entitled to general protection. The protection of a State emblem is very broad: it is not dependant on a likelihood of confusion or a connection being formed in the mind of the relevant public, and extends to use only as an element of mark.
Therefore, a trade mark may be covered by Article 6ter if it is perceived by the relevant public as imitating a State emblem even if it does not exactly reproduce it. The ECJ refused to reassess the factual findings of the lower Court. It was sufficient for a single element of the mark applied for to represent such an emblem or an imitation thereof for protection as a trade mark to be refused. American Clothing’s appeal was dismissed.
In relation to OHIM’s appeal, contrary to the CFI’s finding that Article 6ter did not apply to service marks, the ECJ found that the Paris Convention did not require trade marks for goods to be distinguished from service marks. Instead, the Paris Convention only provided for a minimum level of protection, which Member States could extend at their discretion.
The ECJ noted that the relevant Community law provisions did not distinguish, in principle, between trade marks for goods and service marks, although some provisions of Regulation 40/94 (e.g. Articles 7(1)(e), (j) and (k)) were necessarily limited to certain types of goods. Further, Article 7(1)(i), which provided analogous protection to badges, emblems and escutcheons other than those listed in Article 6ter of the Paris Convention, did not refer to the Paris Convention, so the argument that it did not apply to service marks was not applicable. It was unlikely that Article 7(1)(h) should accord State emblems less protection than a badge of, for example, a sports association.
Therefore the ECJ concluded that the Community legislature had intended to exercise its power of discretion to extend Article 7(1)(h) protection to service marks. OHIM was entitled to refuse American Clothing’s application in respect of the Class 40 services.
Relevant date for filing appeal
Okalux GmbH v OHIM; Messe Düsseldorf GmbH (CFI (First Chamber); T-419/07; 01.07.09) (Decision not yet in English)
Okalux applied for, and was subsequently granted, a CTM for OKATECH in relation to Classes 6, 19 and 42. Messe successfully invalidated the mark under Article 50(1)(a) on grounds of non-use in respect of architecture and design in Class 42 (decision dated 21 December 2006 – the “Cancellation Decision”).
On 21 March 2007, the Cancellation Division modified the Cancellation Decision solely in respect of the costs order (having previously notified the parties by letter on 6 February 2007). On 16 May 2007, Okalux appealed against the Cancellation Decision and this appeal was rejected by the BoA as being out of time. Okalux appealed against the BoA’s decision.
The CFI upheld the BoA’s decision. There had been no violation of Articles 57 or 77. The time for submitting Okalux’s appeal began running on 22 December 2007; the modification of the costs order of that decision did not affect its substance and did not affect the appeal deadline (which expired on 21 February 2007). There was also no breach of legitimate expectations. The letter of 6 February 2007 and a subsequent phone call did not amount to clear, precise and unconditional information susceptible to create a legitimate expectation that the appeal deadline would be delayed.
Further, the BoA had not violated Okalux’s right to be heard. In its decision, the BoA referred to numerous observations and communications by Okalux. The ground of appeal based on procedural irregularities was also rejected. Lastly, the ground of appeal based on the substantive incorrectness of the Cancellation Decision was not admissible. As the BoA had refused to hear the appeal, the CFI would have been examining the conclusion of the Cancellation Division for the first time, which is outside the CFI’s jurisdiction.
Seizures based on International registrations
Zino Davidoff SA v Bundesfinanzdirecktion Südost (ECJ (Sixth Chamber); C-302/08; 02.07.09)
The reference related to the interpretation of Article 5(4) of Regulation No. 1383/2003 concerning customs action against goods suspected of infringing intellectual property rights.
Zino Davidoff had applied for border seizure of goods which it suspected infringed 12 of its internationally registered trade marks under Article 5(4). The Bundesfinanzdirektion Südost (the South Eastern Federal Revenue Office) dismissed the application on the grounds that Article 5(4) only applied to ‘the right-holder of a Community trade mark’. On appeal, the Munich Tax Court referred the interpretation of Article 5(4) in light of Article 146 of Regulation 40/94 to the ECJ.
The ECJ proceeded to judgment without an opinion of the AG and held that, following the assimilation into Community trade marks of internationally registered trade marks, the application of Article 5(4) may also be requested by the holder of an internationally registered trade mark.
Seizure of counterfeit goods in transit
Nokia Corporation v Her Majesty’s Commissioners of Revenue & Customs (“HMRC”)* (Kitchin J;  EWHC 1903 (Ch); 27.07.09)
Kitchin J held that a consignment of fake Nokia goods could not be considered to be counterfeit within the meaning of the Counterfeit Goods Regulation 1323/2003 and therefore HMRC was correct in refusing to continue the detention or suspend their release. It followed that Nokia’s application for judicial review of HMRC’s decision was refused.
HMRC at Heathrow Airport had stopped and inspected a consignment of mobile handsets and accessories bearing Nokia trade marks (the “Consignment”) which were in transit through the UK on route from Hong Kong to Columbia. Upon being notified of the detention, Nokia confirmed to HMRC that the Consignment was counterfeit and requested that Customs seize the Consignment pursuant to its powers under the Counterfeit Goods Regulation.
Whilst accepting that the goods in the Consignment were fake, HMRC refused the request stating that, having taken legal advice, they no longer considered the goods to be “counterfeit” within the meaning of the Regulation unless there was evidence that the goods might be diverted onto the EU market.
Kitchin J, applying the ECJ’s reasoning in, inter alia, Class International BV v Colgate Palmolive (Case C-405/03) and Montex Holdings v Diesel (Case C-281/05), held that:
- infringement of registered a trade mark required goods to be placed on the market and therefore goods in external transit which were subject to suspensive customs procedures preventing their release onto the market in the Community, did not, without more, satisfy this requirement;
- this position would be different if the goods in the transit procedure were subject to the act of a third party which necessarily entailed their being put on the market, but the burden of establishing this rested on the trade mark proprietor (the so-called “Montex Exception”); and
- a mere risk that the goods may be diverted was not sufficient to justify a conclusion that the goods had been or will be put on the market; and
- the Counterfeit Goods Regulation had not extended the rights of a trade mark owner, nor had it introduced any new criteria for ascertaining infringement under national law.
Kitchin J concluded that for the goods in the Consignment to be counterfeit goods within the meaning of the Counterfeit Goods Regulation, they must in fact infringe someone’s trade marks in the territory in which they have been seized. As they did not do so, the goods in question could not be considered to be counterfeit within the meaning of the Counterfeit Goods Regulation and so HMRC were correct in refusing to continue the detention or suspend their release.
In so finding, Kitchin J rejected Nokia’s submissions that, firstly, the Counterfeit Goods Regulation itself in Articles 1 and Recitals (2), (4) and (10) was intended to prevent transhipment of goods. Kitchin J held that the goods still had to be counterfeit goods otherwise there was no power to detain them. Secondly, Kitchin J rejected Nokia’s submission based on Polo/Lauren (Case C-383/98) and Rolex (Case C-60/02) finding that both decisions were addressing a different point; that of whether the predecessor to the Regulation could apply to goods in transit, not whether such goods were counterfeit. Finally, Kitchin J rejected the submission that goods in transit were within the definition of counterfeit goods because, following Recital (8), they were considered to have been manufactured in the country in which the question of infringement of IPRs arose (the so-called manufacturing fiction). Kitchin J found that Recital (8) did no more than indicate that national law should be applied in determining whether an IPR has been infringed.
Accordingly, whilst recognizing that the result was not satisfactory and expressing his hope that legislation in this area will be reviewed, Kitchin J refused Nokia’s application for judicial review.
PROTECTED GRAPHICAL INDICATIONS
Bavaria NV and Bavaria Italia Srl v Bayerischer Brauerbund eV (ECJ (Fourth Chamber); C-343/07; 02.07.09)
Bayerischer Brauerbund eV (“BB”), a German association and proprietor of the protected geographical indication (“PGI”) ‘Bayerisches Bier’, brought proceedings in Italy against Bavaria NV and Bavaria Italia Srl (together “Bavaria”), a Dutch beer producer operating on the international market. BB brought the proceedings to prevent Bavaria using in Italy international trade marks containing the word ‘Bavaria’ as the core of those marks on the grounds that (i) the marks conflicted for the purposes of Articles 13 and 14 of Regulation No. 2081/92 with the PGI ‘Bayerisches Bier’; and (ii) that they contained a geographical indication (the word ‘Bavaria’) which was generic and misleading as to the geographical origin of the beer, as the beer was Dutch.
‘Bayerisches Bier’ was registered as a PGI by Regulation No. 1347/2001 using the (now abolished) simplified registration procedure under Article 17 of Regulation No. 2081/92. The third recital in the preamble to Regulation No. 1347/2001 referred to ‘Bavaria’ existing as a valid trade mark and stated that registration of the name ‘Bayerisches Bier’ as a PGI was not liable to mislead the public as to the true identity of the product under Article 14(3) of Regulation No. 2081/92. Further, the fourth recital stated that the use of the ‘Bavaria’ mark may continue as long as there were no grounds for its revocation or invalidity.
BB’s application was upheld in part by the District Court in Turin. Bavaria appealed to the Court of Appeal in Turin which referred two questions for a preliminary ruling.
By its first question, the referring court called into question the validity of Regulation No. 1347/2001. The ECJ concluded that there were no factors which affected the validity of the Regulation.
By its second question, the referring court asked what affect the registration of ‘Bayerisches Bier’ as a PGI may have on pre-existing trade marks concerning the word ‘Bavaria’. The ECJ held that the reference in the preamble to Regulation No. 1347/2001 did not affect the examination of whether the PGI and the mark could co-exist under Regulation No. 2081/92, as each Regulation had separate objectives and functions and each was subject to different conditions. Accordingly, the ECJ held that the registration of ‘Bayerisches Bier’ as a PGI did not affect the validity or usability of pre-existing trade marks of third parties containing the word ‘Bavaria’, provided that those marks were registered in good faith before the date on which the application for registration of ‘Bayerisches Bier’ was lodged and were not liable to be invalid or revoked on the basis of the Trade Marks Directive. The ECJ held that the fulfilment or otherwise of these conditions was for the national court alone to determine.
COMPANY NAMES ADJUDICATION
Application No. 61 by Jewson Limited (David Landau; O-186-09; 07.07.09)
The Company Names Adjudicator struck out the application under Section 69 of the Companies Act 2006 by Jewson Limited (Jewson) objecting to the registration of the name Jewson’s Drives Limited.
The company name Jewson’s Drives Limited was registered on 18 March 2009. On 15 May 2009, Jewson, applied for a change of name of this registration under Section 69(1) of the Companies Act 2006 (the “Act”), stating that the name Jewson had been associated with it since 1936, it enjoyed goodwill in the name and was the leading timber and builder’s merchant in the UK. Jewson further stated that Jewson’s Drives Limited was offering flagging, fencing and related services under the name Jewsons Drives Limited and had used the address of a branch of Jewson Limited in Aberdeen in one of its advertisements.
Under Section 69(4)(b)(i) of the Act a company has a defence to the application if it is operating under the name. The objection shall nevertheless be upheld where the applicant shows, pursuant to Section 69(5) of the Act, that the main purpose of the respondent in registering the name was to obtain money (or other consideration) or otherwise prevent the applicant from registering the name.
Jewson had stated in its application that the respondent was operating under the company name. Since Jewson provided no indication, either in its application or in any response to the Company Names Adjudicator’s preliminary view, that it had grounds under Section 69(5) to counter the defence under Section 69(4)(b)(i), the Adjudicator decided to strike out the application on the basis that it had no reasonable prospect of success and was misconceived.
[Reporter’s note: the decision of the Company Names Tribunal can be found at www.ipo.gov.uk/cna/cna-notifications.html]
Ownership of employees’ designs
Fundación Española para la Innovación de la Artesanía (“FEIA”) v Cul de Sac Espacio Creativo SL, Acierta Product & Position SA (ECJ (First Chamber); C-32/08; 02.07.09)
The FEIA sponsored a project, the D’Artes project, which engaged industrial design professionals to create designs for production for sale by a number of skilled workshops. The FEIA contracted a company, AC&G, to select and engage the designers and to provide technical assistance to the craftsmen. AC&G entered into an oral agreement with Cul de Sac for the design of a series of cuckoo clocks. The clocks were marketed as the Santamaria Collection, part of the first series of products under the D’Artes project.
Cul de Sac and Acierta subsequently placed on the market a range of cuckoo clocks called the Timeless Collection. The FEIA considered that the Timeless Collection clocks infringed the unregistered design right in the Santamaria Collection and brought an action in Spain against Cul de Sac and Acierta. The Defendants asserted that the FEIA lacked standing to bring the action as it did not own the design rights in issue. The Spanish Court stayed the proceedings and referred a number of questions to the ECJ.
The first question referred was whether Article 14(3) of the Community Design Regulation applied only to designs developed in an employment relationship where the designer was bound by an employment contract and worked under the direction of the employer. The second question referred related to whether the terms ‘employee’ and ‘employer’ should be interpreted broadly to include contracts for service such those in respect of commissioned designs.
The ECJ held that the explicit use of the words ‘employer’ and ‘employee’ as opposed to ‘principal’ and ‘agent’, limited Article 14(3) to employment contracts and precluded a broader interpretation to include commissioned designs. In support of this finding, the ECJ referred to the draft proposal for the Regulation which set out the conflict rules for determining ownership of the Community design right for a design developed by an employee and for a design produced in pursuance of a commission. The rules relating to designs produced in pursuance of a commission were deleted in the final version of the Regulation.
The referring court also asked whether Article 14(1) had to be interpreted as meaning that the right to a Community design vested in the designer unless it had been assigned to his successor in title. The ECJ held that a contractual transfer by the designer to his successor in title would be within the meaning of Article 14(1). However, it was for the national court to interpret the contract and determine whether the right to a Community design had in fact been transferred.
No time limits for bringing a claim to the ownership of musical copyright
Fisher v Brooker & Ots (Lords Hope, Walker, Mance Neuberger and Baroness Hale;  UKHL 41; 30.07.09)
The HoL overturned the decision of the CoA ( Bus LR 1123) and reinstated the decision of the lower court, holding that there is no statutory limitation period that applies in English law to claims to copyright.
Matthew Fisher, who was a member of Procul Harum between 1967 and 1969, started proceedings against Gary Brooker and Onward Music (the “Respondents”). He claimed that he created the distinctive organ arrangement in the song “A Whiter Shade of Pale”, as recorded by the band in May 1967. Gary Brooker and Keith Reid (another band member) assigned their copyright in the original music to Essex Music (Onward Music’s predecessor company) prior to Fisher joining the band and prior to Fisher’s assistance in creating the second, particular arrangement of the music, ownership of which was the focus of dispute in the case. In the 38 years after the issue of the record, Fisher played no part and had no say in the exploitation of the copyright in the music, nor did he claim or receive payment of any royalties earned from it. In the action, he did not claim damages or an account of profits from the Respondents for infringement of copyright by unauthorised use of the music before the commencement of the action, but sought recognition for his joint authorship, joint copyright ownership and a right to future royalties.
Blackburne J in the High Court made three declarations to the effect that (1) Fisher was the co-author of the music as recorded by Procol Harum and released as a single on 12 May 1967; (2) Fisher was a joint owner of the musical copyright in this arrangement of the music, his share being assessed at 40%; and (3) the implied licence of the Respondents to exploit this arrangement of the music was revoked on 31 May 2005 (the date of Fisher’s claim, but 38 years after the initial release of the record). The Respondents would need Fisher’s prior consent to exploit the arrangement of the music after 31 May 2005. Blackburn J also refused to grant an injunction against the Respondents to restrain future exploitation of the arrangement on the ground that there was no evidence of an intention by the Respondents to disregard Fisher’s rights.
Mummery LJ gave the leading judgment in the CoA. He drew a distinction between the right to attribution of authorship and the right to a copyright interest. He explained that in normal circumstances, the co-authorship of a work entails co-ownership of the copyright in it. However, Fisher’s acquiescence and 38 year delay in bringing his claim made it unconscionable for Fisher to assert his copyright interest and to revoke an implied licence to exploit the copyright in a musical arrangement. The CoA held that “the defences of acquiescence and laches operated to disentitle Fisher from the exercise of the court’s discretion to grant the second and third declarations”. As such, the Respondents’ implied licence to exploit the musical arrangement was irrevocable and Fisher could neither claim future royalties nor sue for copyright infringement. Fisher appealed against the decision of the CoA to overturn declarations (2) and (3) of the High Court order.
Lord Neuberger gave the leading judgment in the HoL. The Respondents’ raised a number of defences based on Fisher’s acquiescence and delay, laches and proprietary estoppel. The CoA had held that it was unconscionable for Fisher to be able to assert his rights by seeking an injunction when for 38 years the Respondents had proceeded to exploit the work on the basis that they owned all of the copyright in it. The HoL rejected this conclusion, and held that it was inconsistent for Fisher not to be estopped from asserting his copyright interest only to have the existence of his right refused on equitable grounds. The HoL stated that the key point was that if Fisher sought an injunction to prevent copyright infringement then such an application would be considered on its merits. Furthermore Fisher should not be deprived of the ability to claim royalties in respect of the work in which he owned 40% of the musical copyright merely on the grounds that it would be inappropriate for him to be able to seek an injunction.
Lord Neuberger stated that under English law “the mere passage of time cannot itself undermine claims such as those raised by Mr Fisher in the current proceedings”. The defence of laches is a bar only to equitable remedies and a declaration as to the existence of a statutory property right is not equitable relief. In any event the application of laches usually requires some sort of detrimental reliance. The Respondents failed to show any prejudice resulting from the delay, indeed the delay “has been of considerable financial benefit to the Respondents, effectively outweighing any disadvantage to the resulting from the delay”. The HoL therefore rejected all of the Respondents’ arguments based on equitable principles.
The HoL restored the two declarations set aside by the CoA with the caveat that the third declaration may be amended upon consideration as to the validity of the assignment of Essex’s rights by virtue of the recording contract or the assignment to Onward, an issue which the HoL did not consider it appropriate to determine at that time.
Does copyright subsist in 11 words?
Infopaq International A/S v Danske Dagblades Forening (“DDF”) (ECJ (Fourth Chamber); C-5/08; 16.07.09)
Infopaq operated a media monitoring and analysis business which consisted primarily of creating summaries of articles in Danish newspapers and periodicals by means of a data capture process. Part of this process involved finding a pre-defined search word in the article and reproducing the searched-for word together with the five words before and after it in the article. DDF was a professional association of Danish newspaper publishers, which assisted its members with copyright issues. It complained to Infopaq that consent had not been sought for its capture and processing of the articles. Infopaq disputed this and brought an action before the Danish Courts (the Østre Landsret) claiming that DDF should be ordered to acknowledge that Infopaq was entitled to undertake its procedure in Denmark without consent from the rightholders. The Østre Landsret dismissed the action and Infopaq appealed to the Højesteret which referred 13 questions to the ECJ on the interpretations of the Copyright Directive 2001/29.
The first question asked whether the storing and subsequent printing out of the relevant text extract (consisting of a search word and the five preceding and five subsequent words) was an act of reproduction protected by Article 2(a).
Article 2(a) provides authors with an exclusive right to prohibit reproduction of their work in whole or in part. ‘Reproduction’ and ‘reproduction in part’ are not defined in the Directive and were to be construed broadly. Further, the ECJ held that copyright subsisted only in relation to subject matter that was ‘original’ in the sense that it was the author’s own intellectual creation. There was nothing to indicate that parts of a work were to be treated differently from the work as a whole. Parts of a work would share the originality of the whole work, provided that the parts contained elements which were the expression of the author’s intellectual creation.
It was common ground that the newspaper articles were protectable as literary works. However, words in isolation were not an intellectual creation of the author as such. It was only through the choice, sequence and combination of those words that an author expressed his creativity in an original manner and produced an intellectual creation. It was a question of fact for the national Court to determine whether the 11 words in question expressed the author’s own intellectual creation and were thus protectable. However, the cumulative effect of the numerous extracts by Infopaq would increase the likelihood that there was a ‘reproduction in part’, not least because they may overlap to produce relatively lengthy fragments of the whole article.
The remaining questions were about the defence provided by Article 5(1) relating to temporary acts of reproduction. The ECJ noted that if a Directive sets out conditions derogating from a general principle, those conditions should be interpreted strictly. Legal certainty for rights holders required that the storage and deletion of the work should not be dependent on discretionary human intervention. Further, an act was ‘transient’ (one of the Article 5 conditions) only if its duration was limited to what was necessary for the proper completion of the technological process in question. The final stage of Infopaq’s data capture process involved printing files containing the 11 word extract onto paper. This medium only disappeared when the paper was destroyed, which was entirely dependent on the will of the user of that process and not a ‘transient act’ within the meaning of Article 5(1).
Reporter’s note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Claire Chapman, Emily Peters, Ewan Grist, Greg Laing, Nick Aries, Nick Boydell, Oceane Millon de La Verteville, Phillipa Lambert, Taliah Davis, Tim Harris, Tom Darvill and Victoria Evans.
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ECJ and CFI decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home and the reported cases marked * can be found at http://www.bailii.org/databases.html#ew