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When is a trade mark not a trade mark? When it looks like, feels like, and plays like something else. So held the court of First Instance recently in Fieldturf Inc. v OHIM (Case T-216/02), concerning OHIM’s refusal to register LOOKS LIKE GRASS…FEELS LIKE GRASS...PLAYS LIKE GRASS for artificial athletic playing surfaces and related installation services in Classes 27 and 38 under Article 7(1)(b) of the CTM regulation.

Although the applicant argued that the mark had a poetic character, rhythm and rhetorical flourish that conferred distinctiveness, the CFI was not convinced. It held that the slogan did no more than indicate that the products claimed had the same appearance as grass, produced the same sensation as grass and were as suitable for playing on as grass. The services were inseparably linked to the goods and the objection applied equally to them.

The CFI upheld the refusal under Article 7(1)(b).

Joint goodwill received a thorough judicial working-over recently in a passing off case involving the McAlpine construction dynasty.

Since 1935, the scions of the original McAlpine construction business had operated two distinct companies, Alfred McAlpine plc in the north of England and Sir Robert McAlpine Ltd in the South. In 1983, the geographical split ended but considerable overlap in the companies’ construction and engineering activities remained.

In 2001, in an effort to shed its “muddy boots image”, Alfred McAlpine plc re-branded itself as, simply, McAlpine. Sir Robert sued for passing off.

The High Court upheld Sir Robert’s claim. The law recognised that damage arising from wrongful association included the plucking away of the claimant’s ability to control and develop his own reputation. Mann J. found that McAlpine in the construction industry was capable of referring also to Sir Robert. Goodwill was therefore jointly owned, and use of McAlpine in a way that suggested the exclusion of Sir Robert amounted to an actionable misrepresentation. A “muddy boots” image did not excuse elbowing a joint goodwill owner to one side.

The most recent round in the long-running APPLE trade mark litigation resulted in a High Court judgment determining that the applicable law under a co-existence agreement was English, and that it was possible for a contract to be made in two places at once.

The parties, who were the well-known Apple Corp. music company and the California-based Apple Computer Inc., had negotiated a co-existence agreement in 1991 in which jurisdiction and governing law clauses had been omitted in order to avoid giving either party an advantage. Mann J. observed, “If their intention in doing so was to create obscurity and difficulty for lawyers to debate in future years, they have succeeded handsomely”.

In a long and complex judgment, Mann J. ruled that in this age of advanced communications, it was perfectly possible for a contract to have been made in two places at once. However, applying Article 4 of the Contracts Applicable Law Act 1990, he held that the appropriate forum for the litigation was still England, as the purpose of the 1991 agreement was to settle litigation there.

The parties’ refusal to resolve the issue of jurisdiction and law when the agreement was executed served purely to postpone the issue for another day, and guaranteed lengthy and expensive litigation. Innocent failure to designate jurisdiction and applicable law can have the same effect. Putting off the issue in order to have another bite of the apple later can prove a source of regret.

In a recent appeal to the High Court from a decision of the Trade Marks Registry, Lightman J. reviewed the principles associated with the decision to admit or refuse fresh evidence on appeal.

In this case, Intersnack Knabber-Geback GmbH & Co. KG had applied to register a goldfish device mark and the word GOLDFISCHLI as trade marks in Class 30 for snacks. The applications were opposed by Kambly SA Specialites de Biscuits Suisses, who argued that Intersnack was not the true owner of the mark. Kambly sought to introduce fresh evidence on appeal of sales on nine American military bases in the UK of the GOLDFISH cracker manufactured in the USA by a Kambly licensee.

Lightman J. rejected the new evidence. It was clear that the evidence could have been obtained earlier, and no adequate explanation for the delay was put forward. A mere statement that the force of the argument was not realised earlier was not enough. No exceptional circumstances had been adduced.

This case confirms yet again that substantive justice and the overriding objective require parties to advance their cases in their entirety from the outset wherever possible. The courts sternly frown on new grounds and evidence on appeal where they could have been raised earlier.

In a recent case heard by the Appointed Person (Mr Hobbs QC), the trade mark McQueen Clothing Co. filed in the UK in respect of certain clothing in Class 25 was found not to be similar to an earlier mark Alexander McQueen registered (CTM) for identical goods. This is an unusual decision in that it involved the Appointed Person overturning an earlier ruling of a UK Registry Hearing Officer on the similarity of the two marks.

It is also interesting to speculate as to the likely result if the same marks had been compared by OHIM’s Opposition Division. Earlier OHIM decisions where the marks Baker & Co and Henry Baker & Co, Paul Green and Mary Green and Ted Baker and Claudia Baker were found to be confusingly similar suggest that OHIM would have been more likely to have agreed with the Hearing Officer than the Appointed Person.

The difficulty of predicting the outcome of contentious proceedings involving invented marks in Class 5 can be gauged by two recent cases before the UK Trade Mark Office.

In the first (Ranbaxy v AstraZeneca), an opposition to the trade mark Omeron based on the earlier mark Omepral was accepted, the identity of the first syllable in both marks and the absence of any conceptual meaning for either mark being significant factors in the Hearing Officer’s reasoning. An interesting aspect of this case was that the drug of interest to both parties was omeprazole and that both marks employed the first three letters of the generic name. This did not affect the Tribunal’s finding.

In the second case (Chugai v Biopartners), an invalidation action against a UK trade mark registration for Ravansa in Class 5 on the basis of an earlier UK (and CTM) right for the trade mark Ravanex was rejected. The Hearing Officer found that the marks were visually and phonetically distinct. Even the dangers of confusion faced by the general public when purchasing over the counter medicines were dismissed as, according to the Hearing Office, such pharmaceutical consumers would be “more circumspect about the product selection”.

An interesting aspect of this case is that, until the acceptance of Ravansa, Ravanex was the only trade mark on the UK or CTM register in Class 5 with the five letter prefix Ravan-.

In the last edition of Make Your Mark (p.13), we discussed a UK case (Soldan v Ferrero) where a finding of bad faith was established on a lack of intention to use under Section 32(3) of the 1994 Act. A recent opposition (Robert McBride v Reckitt Benckiser) before the UK Registry has confirmed that position. In the McBride case, the application was for a (2D) image of a crystal shaped air freshener (UK2304053). Reckitt opposed the application on the basis that the McBride mark was, in fact, a 3D container which was sold as an air freshener. (They provided evidence to establish this fact). Reckitt’s argument continued that, at the date of filing their (2D) application, McBride had no intention of using the mark as a 2D representation. Their sole intention, at that time, was to sell a 3D container. These arguments were not rebutted by McBride.

The Hearing Officer accepted Reckitt’s line of argument and that McBride had no intention to use their 2D mark at the date of application. He therefore refused the application on the ground of bad faith (Section 3(6)).

Since the first University Boat Race in 1829, Oxford University’s sportsmen and women have worn the distinctive blue colour known as Oxford Blue. The term (Oxford Blue) has also traditionally referred to an award conferred on those sportsmen/women who compete in the annual contest (rowing, cricket, rugby, etc.) against Cambridge University. Although the term Oxford Blue is known throughout the sporting world, it has never been used in trade by or with the consent of the University. This proved the stumbling block when the University attempted to invalidate (Under Section 5(4)(a) of the 1994 Act) a UK trade mark registration for Oxford Blue owned by H.S. Tank in respect of outerclothing.

The Hearing Officer found that, whilst the university had a reputation in the mark, they owned no protectable goodwill. By contrast, the registered proprietor (H.S. Tank) had sold about 2.5 million Oxford Blue branded jackets in the 10 years prior to the University’s application to invalidate its registration.

Given this disappointment, Oxford University will now have to look elsewhere to find an exploitable brand. May the writer suggest Cambridge Blue which is, as yet, unprotected by anyone on either the UK or CTM Register.

Those responsible for the Estate of the late Princess of Wales, and the trade mark rights associated with it have suffered another setback. In this case, a UK trade mark application or the Princess’ signature covering cosmetics and similar in Class 3 was successfully opposed by a Turkish company (Dalen Kimya Endustri) on the basis of their earlier CTM registration for Diana (word) covering identical goods.

This decision should be contrasted with an OHIM opposition between the same parties where it was held that the Turkish company’s earlier mark Diana was not confusingly similar to the Estate’s mark Diana, Princess of Wales Memorial Fund.

It is reported that the German sportswear manufacturer, Adidas, is to launch a new range of sports clothing featuring the English soccer star, David Beckham. The new logo shows the England captain running up to take a free kick. The logo designer, Eric Vellozzi, is quoted as saying that “A Beckham free kick is one of the most recognisable images in the world of sport”. As is a David Beckham penalty. In the latter case, however, the image rarely involves the ball entering the net.

Under Article 7(1)(h) of the CTM Regulation, trade marks that consist of or contain imitations of state or international symbols, such as flags or other State emblems, are to be refused. In a decision confirming this principle (Concept GmbH v OHIM), the CFI rejected a CTM application (no. 1106442) for the letters ECA surrounded by a circle of 12 stars.

The Court found that the device element of Concept’s mark was an imitation “from a heraldic point of view” of the symbol of the Council of Europe (also a circle of 12 stars). In view of the Class 9 goods and Class 41 and 42 services applied for, this was likely to lead the relevant public to believe that there was a connection between the CTM applied for and the Council of Europe (or the European Community). Further, the presence of the letters ECA in the centre of the mark would reinforce this impression. English speakers would probably believe that EC stood for European Community. Alternatively, they might believe that ECA stood for the European Court of Auditors (believe it or not, there is one!). The CFI therefore confirmed the earlier rejections of the mark by the CTM Examiner and the Board of Appeal.

Under Article 12(2)(a) of the EU Trade Mark Harmonisation Directive, a trade mark registration may be revoked if the mark, in consequence of acts or inactivity by the proprietor, has become the common name in the trade for the product or service in respect of which it is registered.

The meaning of the phrase “in the trade” was the subject of a case (Bjornekulla Fruktindustrier v Procordia Food) recently brought before the ECJ. Procordia owns a Swedish trade mark registration for the mark Bostongurka which it uses in Sweden, to identify its brand of chopped, pickled gherkins. Bjornekulla applied to revoke Procordia trade mark registration under Article 25 of the Swedish Trade Mark Law – the equivalent of the Directive’s Article 12(2)(a). They argued that the mark had lost its distinctive character and they relied on two Swedish consumer market research surveys to establish their case. Procordia contested the revocation action and relied, in turn, on a market research survey of leading operators in the Swedish grocery, mass catering and food stall sectors.

At first instance, the Swedish District Court accepted that Procordia’s survey evidence – which showed that those involved in the distribution chain before the product reached the end user recognised the trade mark nature of Bostongurka was the more relevant evidence and therefore dismissed the revocation action.

Bjornekulla appealed and the Swedish Court of Appeal asked the ECJ for a ruling on which circle (or circles) were relevant when determining whether a trade mark had become the common name in the trade for a product in respect of which it was registered. The ECJ, as usual, hedged its bets. It ruled that the relevant circles comprise principally consumers and end users, since the whole aim of the commercialisation process is the purchase of the product by such persons. However, the Court continued, the influence of intermediaries on decisions to purchase, and thus their perception of the trade mark, must also be taken into consideration.

It had always been the writer’s understanding that a trade mark could be viewed as a generic name for the goods or for an effect of the goods by consumers – e.g. to hoover = to vacuum, see OED 1996 – but provided the trade understood the trade mark nature of the mark, it would be possible to withstand an attack on the validity of the registration based on the ground of generic meaning.

The above ECJ decision suggests that that understanding is misplaced. It will, almost certainly, not be enough to educate the trade as to the trade mark nature of a mark that is heading towards becoming a generic name. It will now also be imperative to educate the consumers who actually purchase the product.

Under Section 3(3)(a) of the Trade Marks Act 1994 a trade mark shall not be registered if it is “contrary to public policy or to the accepted principles of morality”. Where the line should be drawn in relation to such marks was tested recently when Mr Kevin Scranage attempted to register Fook in respect of Class 25 goods. Mr Scranage argued that the mark stood for “Friends only OK” and that it was also a Chinese surname and the Chinese word for “blessing”. He also maintained that it would be pronounced ”Foowk”.

The Hearing Officer was having none of it. In refusing the mark, he recognised the likely association of the mark with a very rude word that remains taboo and that would cause offence to many members of the general public. If the writer had been in the position of the Hearing Officer, he would also have added “Kevin, it’s not clever and it’s not funny, now go and brush your teeth”.