When two different words have the same meaning in two different European languages, how close do they have to be for confusion to be found? This question was considered in a recent case (Osotspa v Distribution & Marketing) before the ECJ (Court of First Instance).
Distribution & Marketing filed a CTM application for Hai in a number of classes, including 32 and 33. Hai is the German (and Finnish) word for shark. The application was opposed by Osotspa on the basis of a Austrian trade mark registration and a CTM registration (no. 168427) for the word Shark stylised in the form of a shark covering Class 32 goods. Both the OHIM Opposition Division and Appeal Board dismissed the opposition on the ground that the marks were not confusingly similar. Osotspa appealed to the CFI.
The Court dismissed the appeal. The visual and phonetic differences between the marks outweighed the conceptual similarities that would be recognised by those who spoke English and German and/or Finnish.
This decision is in line with an earlier OHIM Appeal Board decision (Seat Pagine Gialle v Yell) where a CTM application for Pagine Gialle & Telephone Device (Italian for Yellow Pages) in Classes 16 and 35 was unsuccessfully opposed on the basis of UK trade mark registrations for Yellow Pages. It should be contrasted, however, with the OHIM Appeal Board decision (Northern Foods v H.M. Ostwald) in which the marks Fox’s and Fuchs (German for fox) were found to be confusingly similar.
I understand from my younger sources that drinking beer directly from the bottle has become quite fashionable. Indeed, for the drinkers of certain beers, in particular Corona, even this is not enough. The bottle must first be embellished by a slice of lime jammed in its neck.
Whatever those of a certain age and refinement might think of this practice, it does appear to have become quite widespread. This is presumably why the makers of Corona beer (Eurocermex) attempted to protect the shape of a long-necked beer bottle, full of beer and containing a slice of lime in its neck, as a CTM (no. 1000615).
The mark was rejected as non-distinctive (Article 7(1)(b)) by, in turn, the CTM Examiner, Appeal Board and Court of First Instance. Eurocermex are certainly determined, however, and they appealed to the ECJ. The European Court confirmed the rejection.
There was considerable evidence that the practice of putting limes in the necks of beer bottles was not limited to Corona beer. Further, it was also common to add a slice of lime (or lemon) to glasses of beverages, such as beers or soft drinks.
Eurocermex’s attempt to overcome the non-distinctiveness objection on the back of evidence of acquired distinctiveness (Article 7(3)) also failed. It was necessary with a mark of this type to prove acquired distinctiveness in most, if not all, of the EU. This the applicant had failed to do.
Tiffany and Company applied to register their famous light blue gift box bearing the words Tiffany & Co. at OHIM for cutlery made of precious metal in Class 8, as well as a variety of Class 21 goods. The CTM application (no. 151985) was opposed by a French company, Emballages Mixtes et Plastique on the basis of a French trade mark registration for a stylised form of Tifany covering plastic table plates and cups.
The opponent’s French registration was over five years old and they were therefore asked to prove use of their mark in France during the relevant period. This they did, but only in relation to a mark which consisted of TIFANY in block capitals in a black octagonal label.
Somewhat surprisingly, the OHIM Opposition Division and, on appeal, the Appeal Board found in favour of the opponent and refused the CTM application for all of the Class 8 and 21 goods opposed. First, the mark as used was said not to differ from the opponent’s registered mark in a manner that altered its distinctive character. It followed that the opponent’s use could be relied on to sustain its French registration. This shows a degree of leniency when comparing marks for use purposes (under Article 15(2)(a) of the Regulation) that, to the writer at least, is surprising.
Second, the opponent’s plastic goods were found to be similar to the applicant’s expensive cutlery (as well as their Class 21 goods). Again, this seems an unexpected outcome. One can only imagine the surprise that would be registered by the recipient of a Tiffany & Co. blue gift box on finding plastic plates and cups inside.
Remaining with the issue of similarity of goods, a recent CFI ruling (Sergio Rossi v Sissi Rossi) reached a decision that could only be explained on the basis that the judges involved have never been shopping.
The marks involved were Sissi Rossi (CTM application for, amongst other goods, bags in Class 18) and Miss Rossi (opponent’s French and Italian trade mark registrations covering women’s footwear).
The Opposition Division found in favour of the opponent. The Appeal Board reversed this decision. The marks were said to be only vaguely similar. Further, in the Appeal Board’s view, there was no substance in the opponent’s argument that “women’s bags” and “women’s footwear” were similar because they were complementary.
On further appeal to the CFI, the Court again found in favour of the applicant. The differences between the goods were said to outweigh the similarities. This, added to the differences between the two marks, led to the conclusion that there was no likelihood of confusion.
This is an absurd decision – on similarity of goods at least – and, if followed by OHIM, a ridiculous practice. Having asked two women of my acquaintance to name companies that produce both women’s bags and women’s shoes, I was given the following names, Christian Dior, Dolce & Gabbana, Hermes, Jimmy Choo and Prada, in about 10 seconds. No doubt, there are many, many others. These are similar goods, whatever OHIM and the Court may believe.
This case does illustrate, however, the need to back up all of your arguments, as an opponent, with evidence. Nothing, however obvious, should be taken for granted. The absence of evidence on the similarity of the two sets of goods seems to have weighed heavily against the opponent in this opposition.
A UK trade mark application for Jesus in Classes 3, 9, 14, 16, 18, 24 and 28 (filed by the International route) has been rejected by the UK Trade Marks Office as contrary to public policy or to accepted principles of morality (Section 3(3)(a) of the 1994 Act). The decision was confirmed on appeal to the Appointed Person (Mr Hobbs Q.C.). Mr Hobbs felt that it would be anathema to believers for the name Jesus to be appropriated for general commercial use as a trade mark. An earlier International (UK) trade mark application for Jesus for clothing, footwear (sandals?) and headgear met the same fate. These decisions are in line with the earlier rejection of Jesus as a trade mark for Class 25 goods back in the early ‘80s. It appears that the UK Office’s practice is to reject trade mark applications for the name Jesus alone, but to allow applications for names which contain Jesus as a first name. See, for example, Jesus Lopez registered for a variety of goods in Classes 3, 18, 25 & 42.
It is not entirely clear what OHIM’s policy is in this area. Their acceptance of Jesus 2000 back in 1999 suggests a more lenient approach, however. This would be in line with their more liberal view on what constitutes an immoral or rude trade mark. It is noticeable that both Fook and Tiny Penis, marks rejected by the UK Office under Section 3(3)(a), have been accepted by OHIM.
First it was the sainted Johnny Wilkinson and his characteristic prayer-like stance before taking a place-kick. Now, the jockey Frankie Dettori has registered his trade mark leap from a horse after winning a race. Frankie’s registrations (UK2382246 and 2383416) cover goods in Classes 3 and 25. The talcum powder protected in Class 3 will probably be welcome prior to a long day in the saddle.
When England won the football World Cup – an event so long ago that even the writer was a young man – their mascot was a friendly, football-playing lion known as World Cup Willie.
Nearly 40 years on, the next World Cup is due to take place in Germany a year from now. When seeking an inspiration for the 2006 mascot it appears that the German football authorities leant heavily on Willie. The result is an exhibitionist lion with a mullet hairstyle known as Goleo VI. Even the German public are not exactly overwhelmed by the choice, the Suddeutsche Zeitung newspaper describing Goleo as “an old hippy who runs around without any trousers.” Wait a minute!
Anyway, Goleo VI has not gone down well in certain English quarters and a group of supporters have decided to throw down the trade mark gauntlet. They have filed UK trade mark applications for Willie, World Cup Willie and a combination of a football-playing lion and the words World Cup Willie. Their spokesman, Scott Sutton, is quoted as saying that “The Germans can’t use World Cup Willie because we own him.”
Let’s face it, Scott, the final outcome may be very close to call, but who doesn’t believe, in their heart of hearts, that the Germans will eventually win on penalties?
Incidentally, FIFA may be interested to note two other UK trade mark applications filed by the English supporters, both for Jules Rimet, the father of the football World Cup.
When Prince Charles finally married his long-term consort, Camilla Parker-Bowles, in April this year, he must have thought that all his troubles were finally behind him. The shops are even full of Camilla merchandise, such as mugs and tea towels, illustrating the British public’s grudging acceptance of the new marriage.
But, wait, not everything in the royal merchandise garden is rosy. It appears that the troubled British retailer, Marks & Spencer, owns UK trade mark rights for Camilla in Class 21 covering, amongst other goods, containers for used tea bags, pedal bins and chopping boards, whilst the shoe manufacturer, C. & J. Clark owns a UK trade mark registration for Camilla covering footwear. Will M&S dare to bring out a chopping board bearing the Duchess’s image and name? Will Clark put the trade mark boot in? As we have seen, anything in the British royal soap opera is possible.
The Royal family is not the only august institution to become involved with the merchandising of their brand recently. Even the dreaming spires of Oxford University have succumbed. It is reported that the oldest English university is seeking to license the use of its famous coat of arms in a wide variety of commercial areas, notably children’s science sets, historical board games, croquet sets, fashion accessories featuring images from nuclear physics (not an atomic explosion, please), botanical products and even toiletries; “Oxford University – Splash It On.” Thankfully a suggestion to emblazon the Oxford crest across the gusset of a thong was politely declined, even though this is bound to adversely affect the bottom line.
Mike Taylor runs a tribute concert show featuring look-alikes of famous groups such as Abba and the Bee Gees. He originally called the show Mamma Mia. Bad idea. He was sued for trade mark infringement by Abba’s Benny Andersson and Bjorn Ulvaeus. This persuaded Mr Taylor to think again. This time he came up with Thank You For The Music, another Abba song title. Even though, on this occasion, he even took the trouble to register the phrase as a UK trade mark, this proved to be another less than inspired idea. He was sued again by the Abba duo.
Assuming that Mr Taylor has to re-launch for a third time can we suggest that this time he steers clear of Abba song titles, especially Waterloo.
A UK trade mark registration for the mark Scip-r Nosco & device was registered in Class 41 in the name of Scip-r Nosco. The registration was challenged by Marion Cornick on the basis that there was no legal entity called Scip-r Nosco and therefore the UK trade mark application had been filed in bad faith (Section 3(6)/Section 32(3) of the 1994 Act). The evidence showed that the application had been made in error in the name of an entity that did not exist at the date of filing and that steps were being taken to rectify the situation.
The Hearing Officer found the registration invalid. Even though those responsible for naming the applicant had made a genuine mistake, an applicant that did not exist at the date of the application could not have a bona fide intention to use the mark in the UK. The application had therefore been filed in bad faith.
This could spell trouble for the owners of the Scip-r Nosco mark because Ms Cornick now owns her own UK trade mark registration for Scip-r in Class 41 covering identical and very similar services.
For eighteen years, an English dairy farmer, Judy Bell, has produced a crumbly, white cheese from sheep or goat’s milk which she has sold under the name Feta or, to be more precise, Yorkshire Feta. She is not alone. Up to 80% of the world’s Feta cheese is, at present, produced outside Greece.
Despite this situation, the European authorities have been persuaded that the name Feta should become a European protected designation of origin (PDO), the term only being available for use in relation to sheep’s or goat’s milk cheese produced in Greece. Long-established Feta cheese producers outside Greece have been given until 2007 to change the name of their produce.
The European Commission’s decision to grant Feta PDO status has been challenged in the ECJ by Denmark and Germany, where many Feta cheese makers are situated. The UK Government couldn’t be bothered to press Ms Bell’s case. In May, the Advocate General advised that the Commission’s position on Feta is correct. The Court’s final judgement is now eagerly awaited.
It is reported that Mrs Bell is considering alternative names for her cheese such as Fetta, Pheta, Efta and I Can’t Believe It’s Not Feta. Perhaps we can suggest Kafka or Metamorphosis as appropriate alternatives, given the bureaucratic nightmare that she has faced. One thing is certain, however, if the ECJ appeal is unsuccessful, Mrs Bell will not be moving her farm from Yorkshire to Athens in order to keep the Feta name.
In an appeal to the CFI involving names, a CTM mark Enzo Fusco in Classes 3, 9, 18, 24 & 25 was found to be similar to the earlier (CTM) mark Antonio Fusco for identical/similar goods. The Court concluded that Italian consumers generally attribute greater distinctiveness to the surname than the forename and therefore, in both marks, the Fusco element would dominate.
This decision is a poor one. It gives the owner of Antonio Fusco a monopoly in Fusco which, on the face of it, they do not have, at least in terms of registration. However, it is in line with a number of earlier OHIM Opposition Division decisions which gave unreasonably broad rights to the owners of full name trade marks.
See, for example, the decisions where the marks Paul Green and Mary Green and Ted Baker and Claudia Baker have been found confusingly similar (the latter case being confirmed by the Appeal Board).