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    The need to register the mark that is actually used has been illustrated (again) in two recent revocation actions decided by the UK-IPO.

    In the first case, Wycombe Wine v CM Vintners, the registered mark was Chateau Rochelle. The Class 33 specification covered “wines, spirits and sparkling perry”. The registered proprietor provided evidence of limited use of Rochelle in the U.K. in respect of sparkling perry during the relevant five-year period. It also argued that, since the word “Chateau” was non-distinctive for wines, the distinguishing feature of the registered mark was Rochelle. Under U.K. trade mark law (Section 46(2) of the 1994 Act), a trade mark can be saved from revocation not only by use of the mark as registered but also by use of a mark that differs “in elements which do not alter the distinctive character of the (registered) mark”.

    The Hearing Officer found that use of Rochelle did not constitute use of the registered mark or of one differing in elements not altering the distinctive character of the registered mark. According to the Hearing Officer, Rochelle, on its own, could refer to a region, a city, a town or a hamlet. Alternatively, it could be a forename or a surname. By contrast, the phrase Chateau Rochelle brought to mind a large house or manor surrounded by vineyards. The two marks therefore differed significantly visually, phonetically and conceptually. It followed that the use of Rochelle on its own significantly altered the distinctive character of the registered mark Chateau Rochelle. On this basis, the U.K. registration was revoked based on five years of non-use.

    In the second revocation action, Remys v Douglas & Grahame, the registered mark was a stylised form of Remus covering “male outer clothing”. Evidence filed showed over £45 million worth of relevant U.K. sales, together with significant advertising in the U.K. However, the mark in use was a stylised form of Remus Uomo (see www.remusuomo.com), in which the word Uomo was about half the size of the word Remus. The proprietor argued that the dominant visual part of the mark in use was Remus, whilst the word Uomo, being the Italian for “man”, was descriptive of the goods (male clothing).

    In the absence of consumer evidence on the point, the Hearing Officer decided that the relevant U.K. purchaser would not understand the meaning of Uomo and would therefore see it as a second distinctive element in the composite mark. It followed that consumers would see the mark in use as a single, unified entity and that it was not an acceptable variant of the registered mark within the meaning of Section 46(2). The registration was revoked.

    These cases provide a salutary reminder that, when considering their trade mark portfolios, trade mark owners should always consider the manner in which their marks are used in the market.

     

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    Staying in the world of revocation actions, another recently reported case (T-Mobile (UK) v O2 Holdings) illustrates the importance of the date of revocation under U.K. practice.

    In this case, O2 had applied to revoke two U.K. trade mark registrations of T-Mobile for BUSINESSZONE and BUSINESSZONE PLUS in Classes 9 and 38 in order to clear the way for registration of its own U.K. applications for BUSINESS ZONES and BUSINESS ZONES From O2 in the same classes. Both revocation actions succeeded and the registrations were revoked under Section 46(1)(a) from 5th March 2004, five years after the date on which T-Mobile’s marks had been registered. 

    The problem for O2 was that this date of revocation, the earliest possible, was still later than its own application date of 26th February 2004. This allowed T-Mobile to oppose O2’s U.K. applications on the basis of its now-revoked U.K. rights, a permissible practice in the U.K. where an earlier registration is revoked after a later conflicting application is filed (RIVIERA TRADE MARK, 2003 RPC 50). This was the position in this case. To rub salt into O2’s no doubt already sore wounds, T-Mobile had also filed its own new U.K. applications for BUSINESSZONE and BUSINESSZONE PLUS on 13th April 2005. This meant that if T-Mobile’s oppositions based on its revoked rights succeeded, then it would be in the prime position.

    A little late in the day O2 realised the difficulties it faced and applied to invalidate T-Mobile’s revoked U.K. registrations on absolute grounds. From 02’s point of view, the beauty of invalidation actions, if successful, was that they would take effect from the date of filing of the two registrations, namely 30th May 1996. This was well before the filing date of the O2-owned applications, which would mean that O2’s rights would be allowed to proceed.

    Once again, however, O2 faced a problem. This was that, the UK-IPO will not consider an invalidation action brought against a revoked trade mark registration after the date of revocation. This is because the IPO considers a revoked registration to have ceased to be a registration. There is therefore, according to the IPO’s position, nothing to invalidate.

    In consequence, the Hearing Officer threw out O2’s invalidation actions. In the Hearing Officer’s view, it would be an abuse of process to allow the invalidation actions to proceed. O2 had waited far too long to launch the invalidation proceedings.

    Given that O2 appear to use their trade mark BUSINESS ZONES on a large scale in the U.K., it can be assumed that, in the absence of a commercial settlement, these cases will run and run. All of this trouble could have been saved if O2 had first applied to revoke the T-Mobile registrations and then, the following day, re-filed for its two marks. It is imperative, under U.K. practice, that the revocation of a conflicting trade mark right takes effect before the date of filing of a subsequent application.

     

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    Tracy Daly runs the Tan Hill inn, a remote pub halfway up a hill in the middle of the Yorkshire Dales. Every Christmas Day she provides her local customers with a festive dinner of paté, turkey plus trimmings and Xmas pudding. It costs £40 per head and she styles it a Family Feast.

    Mrs Daly’s nefarious activities attracted the attention of Kentucky Fried Chicken, not because they thought that a franchise in the middle of nowhere was an interesting commercial proposition, but because they own U.K. trade mark registrations for the identical phrase Family Feast covering inter alia restaurant services. KFC’s Family Feast consists of ten chicken pieces, French fries, coleslaw, mashed potatoes and gravy plus a 1.25 litre drink. It retails at £9.

    One might have thought that, in view of the Tan Hill Inn’s remote location and the fundamental differences between the meals being provided, it might have been sensible for KFC to turn a Nelsonian eye to Mrs Daly’s activities. But no, off went the cease and desist letter, and, entirely predictably, up went the howls of derision. The story made all of the main published and broadcast media in this country. None of the coverage was favourable to KFC, who have now quietly dropped the case.

    Three points can be made about this story. First, KFC have not only had their feathers ruffled, but they have also ended up with egg on their face. Second, Mrs Daly is guaranteed a full house of festive diners tucking into her Family Feast this Christmas. Third, when advising on trade mark matters, it is as important to retain a sense of perspective (and humour) as it is to have an encyclopaedic knowledge of the law.

     

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    The Welsh village of Llanfairpwllgwyngyllgogerychwyrndrobwllllantysiliogogogoch has the longest place name in Britain. It also has a long and distinguished history dating back to the Neolithic period. Another claim to fame is that the village’s name was used as a password for Dildano’s headquarters in the sci-fi spoof Barbarella.

    The village has its own .co.uk website. However, even though it comes close, the name, at 58 letters long, doesn’t use the maximum 63 letters that are at the disposal of domain name registrants. This omission has now been rectified by Mr Keith Wood who has registered the name www.llanfairpwllgwyngyllgogerychwyrndrobwllllantysiliogogogochuchaf.eu. It appears that Uchaf refers to the upper part of the Welsh-speaking village.

    It did occur to the writer some years ago to register the rather catchy www.rgcjenkinsprobablythebestpatentdesignandtrade markfirmintheworld.com. However, the mistaken belief of my partners that a shorter address would be easier to remember, together with a desire to avoid a law suit being brought by Carlsberg, led us to plump for the rather more prosaic www.jenkins.eu instead.

     

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    Elsewhere in this edition of Make Your Mark, we report CFI cases where the owners of earlier marks with a reputation (TDK and Nasdaq) were able to prevent the registration of identical marks for dissimilar goods or services.

    The chances of success in such “dilution” cases, particularly before the English courts, should not be overestimated, however. Three recent decisions by different tribunals illustrate the point.

    In the first case, Messrs. Moore and Rumney v La Chemise Lacoste, the owner of the well-known fashion label, Lacoste, opposed a U.K. trade mark application by two English dentists for the phrase The Dental Practice plus a Crocodile Device covering “dentistry services”. Lacoste relied on its reputation and earlier registered rights in the iconic Crocodile logo. (The founder of the company, René Lacoste, was a highly successful tennis player in the 1920s, whose nickname was “The Crocodile”).

    The UK-IPO rejected the opposition. According to the Hearing Officer, the opponent’s failure to apportion its (very large) sales figures to individual, registered Crocodile logos and to indicate associated market share was fatal to the case. The opponent had provided no evidence to establish that any of the logos relied on had acquired independent recognition and reputation with consumers.

    The second case (Hachette Filipacchi Presse v Saprotex International) was an appeal before the High Court involving an application for the trade mark Elle in respect of “knitting wools and yarns”. It was opposed by Hachette, owner of the well-known women’s fashion/lifestyle magazine, Elle. Hachette owned trade mark registrations for Elle covering periodical publications. It produced evidence of use of Elle not only in relation to the magazine but also in respect of the sale of fashion clothing. The opponent even showed that knitting patterns had appeared in Elle magazine, albeit the French edition, as recently as 2001.

    The Hearing Officer rejected the opposition. He took the view that the target consumer for knitting wools and yarns was different to that for Elle magazine. Thus, even if an association existed between the two Elle products, it would not be strong. According to the Hearing Officer, the economic behaviour of an actual or potential purchaser of Elle knitting wools and yarns would not be influenced to any material extent by an association with the reputation of the opponent in Elle magazine.

    On appeal to the High Court, the judge confirmed the Hearing Officer’s decision.

    Finally, in an invalidation action that reached the Court of Appeal, Intel v CPM, the registered mark was Intelmark covering “marketing and telemarketing services”. The applicant to invalidate was the supplier of the Intel microprocessor who relied on both registered marks and its widespread fame in Intel, both in the U.K. and elsewhere.

    The invalidation action was rejected by both the UK-IPO and the High Court in spite of a recognised similarity between the marks. In both cases, it was found that the dissimilarity between the goods for which Intel had a reputation and the services provided by CPM was so great that the relevant public would see no link between them.

    When the case reached the Court of Appeal, Lord Justice Jacob, whilst referring certain issues to the ECJ for a ruling, made it clear that he believed Intel should lose. His attitude to such dilution actions can be gauged by his answer to the question, “Is a mere ‘bringing to mind’ of an earlier mark with a reputation enough to prevent a later registration?”. His Lordship answered as follows: “I do not see that trade mark law need be so oppressive and all powerful…I would hold that a ‘link’ requires more than such a tenuous association between two marks. If a trade mark for particular goods or services is truly inherently and factually distinctive it will be robust enough to withstand a mere passing bringing to mind when it or a similar mark is used for dissimilar goods or services”. Lord Justice Jacob said that the average U.K. consumer was a reasonably sensible individual who had become accustomed to differentiating between many marks in unrelated fields. He noted, for example, that Jif lemon juice happily coexisted with Jif washing up liquid and with Jiffy padded bags and Jiffy condoms.

    Intel’s legal representatives will no doubt bring the ECJ’s attention to the fact that Jif household cleanser (rather than washing up liquid) recently changed its name to Cif, in part no doubt to get away from the association with lemon juice in the U.K.

     

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    A CTM application for the colour purple widely associated with Whiskas cat food has been allowed by the Second Board of Appeal on the basis of evidence of acquired distinctiveness in the E.U. (CTM 3793361, R1620/2006-2). In reaching its decision, the Board relied, in part, on survey evidence gathered by the applicant, Mars UK, in 2006, some 3 years after the CTM had been filed. The Board commented, “It is…quite acceptable, with evidence of association of the colour purple with Whiskas between 53% and 75% in eight Member States, to infer equally high levels of association, with reasonably comparable sales, market shares and advertising expenditure in the other Member States”.

    It will nearly always be a challenge to register a single colour for goods or services at OHIM. However, the nature of the evidence provided by Mars in this appeal, together with the Appeal Board’s comments on it, provide a useful roadmap toward success.

    The purple colour of Whiskas cat food packaging therefore joins a select band of single colours that have been accepted by OHIM for goods. The list includes the red colour of Swiss Army knives (CTM 2087005), the brown colour of Trojan batteries (CTM 427104), the canary yellow colour of Post-It notes (CTM 655019), the lilac colour of Milka chocolate packs (CTM 31336) and the orange colour associated with the labels and packaging of Veuve Cliquot champagne (CTM 747949).

     

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    The ECJ has recently confirmed the CFI’s decision to accept Celltech as inherently registrable for goods and services in Classes 5, 10 and 42, despite the Courts’ agreement that the mark would be seen as a natural abbreviation for the phrase “Cell Technology”.

    The writer is not against marks such as Celltech being accepted, but he is against the wild inconsistency shown by the European Courts when considering the registrability of CTMs and CTM oppositions.

    How the acceptance of Celltech can be reconciled with the ECJ’s earlier rejection of Doublemint for chewing gum and Streamserve for computer programs as well as the CFI’s rejection of DigiFilm for optical data carriers, Kit Pro for brake parts, Lokthread for nuts and bolts, and Robotunits for conveyor belts is something that perhaps only the Courts can explain. It does, however, highlight two important points. First, it is extremely difficult to predict whether or not a mark which is a neologism will be accepted or refused by either OHIM or the European Court. Second, it is time for the appeal process in trade mark cases to be taken out of the hands of the European Courts and transferred to a dedicated European trade mark appeal court, which would have a better feel for the subject and more interest in it. It would be an enlightened move if the appointees to such a court were chosen from both lawyers and non-lawyers who have a background and an interest in trade marks.

     

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    In general, a CTM application can only be opposed on relative grounds on the basis of earlier registered or unregistered trade mark rights. However, once registered, a CTM can be attacked by a much wider range of ordnance, in some cases from unexpected quarters. Three recently reported OHIM cancellation actions remind us of the dangers that lie in wait for the unwary.

    In the first case (Messrs. Fazer v USP Brands), an action to invalidate a CTM registration for Fazer in Classes 18 and 28 was brought by the Swedish Fazer family under Article 52(2)(a) of the CTM Regulation. The family Fazer claimed that under Finnish and Swedish law, an existing family name is a prima facie ground for refusal of a trade mark application or, in the case of a registered mark, for a declaration of invalidity. The name does not have to be used in trade; its mere existence is enough to constitute a fatal prior right.

    Somewhat reluctantly, the Cancellation Division upheld the action and invalidated the CTM. (Ed. Note: It is surely time for the Finnish and Swedish authorities to amend their trade mark laws on this rather arcane point).

    The second cancellation action (J.B. Peña v Brookdale Tool Company) involved a CTM registration for Shootball covering inter alia “toys and games”. Mr Peña, a Spanish individual, based his challenge on Spanish copyright law (Article 52(2)(c) CTMR). In 1996, Mr Peña had registered a literary work entitled “Shoot-ball” at the Spanish IP Registry, containing the rules and explanatory drawings of a new sport (“Shoot-ball”) devised by Mr. Peña. In the CTM action, Mr Peña provided third party testimony attesting to his creation and development of the Shoot-ball game.

    Once again, the CTM was cancelled. According to the Cancellation Division, Mr. Peña was entitled under Spanish law to prohibit the use of Shootball in Spain in respect of the Class 18 and 28 goods claimed, including toys and games. It followed that the CTM was invalid. Mr. Peña has now sought to register the name of his sport as a CTM. The application is a combination of the word Shootball and a device element. The device was presumably chosen to avoid the possibility of the word mark being refused as non-distinctive or descriptive.

    The final case (Nestlé v Lacasa) involved a CTM registration (no. 2534436) for a 3D-mark, namely a blister pack container for a Spanish brand of sweets (mini Lacasitos). Nestlé applied to cancel the CTM based on its earlier E.U. national registered designs, including U.K. registered design no. 2079507 for a sweet container. The action was brought under Article 52(2)(d) CTMR. According to Nestlé, the overall impression created by both designs was similar. It therefore followed that it could prevent the use of the Lacasa sweet container based on its earlier design rights and that the CTM was invalid.

    In this case, the Cancellation Division did not agree with Nestlé and rejected the cancellation action. According to the Division, the CTM gave a different overall impression to the container design protected by Nestlé’s design registrations.

     

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    Grand Prix motor racing, featuring the world’s best drivers and the world’s fastest cars, has been organised in Europe since the 1920s. After the Second World War, the organisation of such events became more formalised and the first World Drivers’ Championship was contested in 1950. It was won by the Italian driver, Giuseppe Farina, driving an Alfa Romeo.

    As with other sports, the widespread coverage of such Grand Prix (or Formula One races, as they had become known) on television, from the 1960s onwards, turned this top-class motor racing into a big and very profitable business.

    Where there are large profits, there will also inevitably be political manoeuvrings to gain control of those profits. Formula One racing is no different. The story of the battle to gain control of the administration of the sport would have appealed to Machiavelli. However, eventually there was one clear winner, the diminutive figure of Bernie Ecclestone who, in the 1980s and 1990s, ran Formula One motor racing as his own personal fiefdom. Mr. Ecclestone not only turned the sport into a worldwide event by widening the television coverage and taking the Formula One circus to race in such exotic locations as Australia, Canada and the U.S.A., but he also expanded the merchandising of the sport. This latter activity involved the protection of Formula One’s intellectual property including a number of new logos as well as more established marks.

    Thus, Formula One Licensing BV, the licensing arm of the Formula One Administration Group, has obtained a CTM for Formula 1 covering the arrangement of sporting events. It has even persuaded OHIM to accept a CTM for Grand Prix in respect of identical Class 41 services. Neither required any evidence of acquired distinctiveness.

    As regular readers of this magazine will know, standards of examination before the UK-IPO are generally higher than before OHIM, and it is therefore rather difficult to understand why Formula One Licensing chose to file a U.K. application rather than a CTM for F1, the long accepted acronym of Formula One, covering Class 41 services. Having said that, the U.K. application got off to a good start by being accepted on the back of evidence of use in the U.K. (and elsewhere). However, it then got a puncture in the form of an opposition by Racing Live S.A. who opposed on the basis that F1 was non-distinctive (Section 3(1)(b) of the 1994 Act) and descriptive (Section 3(1)(c)).

    The Hearing Officer ensured that Formula One Licensing’s application did not reach the chequered flag by ruling that

     

    • F1 was both non-distinctive and descriptive in respect of motor car racing, being a type of motor race rather than a motor race associated with a specific organisation, and that

    •  Formula One Licensing’s evidence of use established a source connection with a stylised form of F1, but not with F1 on its own. If anything, the applicant’s evidence reinforced the view that F1 itself was a generic term.

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    It is reported in The Times newspaper that the Indian Government has become very exercised by the number of yoga-related IP rights being granted by the U.S. authorities. In India, yoga is regarded as a Hindu-related activity involving philosophy as well as exercise. It is seen as an ancient activity that is beyond the control of government or private enterprise. By contrast, in the U.S., yoga has primarily become just a part of the extremely profitable fitness industry.

    Indian officials are particularly upset by an attempt by a Mr. Bikram Choudhury to register a sequence of yoga poses as trade marks. Mr. Choudhury, originally from Calcutta, opened his first yoga studio in California in the 1970s and subsequently developed a form of exercise known as “Hot Yoga”. The writer does not intend to go into the details of that practice. Mr. Choudhury, however, believed he had developed a number of original Hot Yoga poses and, in order to protect them, filed a U.S. trade mark application (no. 76/408704) for 26 yoga moves. Unfortunately for the developer of Hot Yoga, but happily for the Indian government and yogis who would prefer not to receive a writ for trade mark infringement whilst in a compromising position, this U.S. application has now been abandoned.

    It should be noted, however, that Mr. Choudhury still owns CTM no. 2738490 for one of his yoga poses. Further, the word Yoga itself is a registered CTM for electric apparatus and fruit drinks, and is registered in the U.K. for office furniture and dairy products, including yoghurt.

     

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    A recently reported CFI case, Ontex v Curon Medical, illustrates a very important point of European trade mark practice. This is that in CTM oppositions, one should never neglect to run every possible argument, no matter how outlandish some of them might appear to the outside observer.

    In Ontex, Curon Medical applied to register Curon as a CTM in Classes 10, 41 and 42. Ontex opposed on the basis of its earlier CTM for Euron for identical Class 10 goods. The opposition was directed only at Class 10.

    The Opposition Division upheld the opposition, citing the identity of the goods and the confusing similarity of the marks. This decision was, however, overturned by the Second Board of Appeal, which noted the visual and phonetic differences between the marks and were particularly attracted by the argument that Curon would evoke “curative treatments” whilst Euron would bring Europe to mind. From this the Board concluded that the conceptual differences between the marks would serve to heighten the visual and phonetic differences.

    This decision was upheld by the CFI, which was also heavily swayed by the “cure” versus “Europe” argument.

    The writer has no particular argument with the decision in this case, given the CFI’s previous findings that short marks with differences at their beginnings can be differentiated from each other. See, for example, the rejection of oppositions in the Carpo/Harpo Z, Cor/Dor, and Faber/Naber cases. He does, however, find it extremely difficult to believe that the majority of Eastern European consumers would understand the conceptual meaning of “cure” (in a CTM v CTM opposition, the comparison of marks should be in all E.U. languages) or that anyone would see Euron as a “Euro” mark.

     

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    Under E.U. law, a trade mark registration can be attacked for non-use once a period of five years following the date of completion of the registration procedure has elapsed. This rule was introduced by the First Council Directive (89/104/EEC) and was meant to harmonise E.U. national laws on this point. Unfortunately, this worthy aim appears to have been thwarted by national regimes that continue to employ different starting dates for the relevant five-year period. The ECJ recently had the chance to enforce harmonisation in this area but failed to take it.

    The case involved an International trade mark registration for LE CHEF DE CUISINE LOGO and designated, among other countries, Austria. The application was filed on 12 October 1993 and was published by WIPO on 2 December 1993. Before the Austrian court, the applicant to revoke argued that the earliest date of revocation should be 12 October 1998, while Lidl argued that it should be 2 December 1998. The Austrian court asked the ECJ for guidance; its decision on this point would be crucial to the outcome of the case, given that Lidl had begun to sell LE CHEF DE CUISINE products in Austria on 5 November 1998.

    The ECJ decided not to take a lead on this important question and, in the case of an international registration at least, decided that it was up to each member state to decide when the five year non-use grace period should begin.

    In the U.K. and before OHIM, at least, the position now seems to be clear: the five year period begins once the registration procedure has ended. In the U.K., this was recently confirmed in the Vitalite High Court decision (Sunrider v Vitasoy, also reported in this issue). Thus, if a U.K. application had been filed on 1 March 2002 and placed on the register on 31 January 2003, then the five year non-use grace period would end on 31 January 2008 and the earliest date from which the registration could be revoked for non-use would be 1 February 2008.

    In the writer’s view, part of the problem in this area lies in the terminology. The “date of registration” can mean different things to different people. It would be far better to follow patent law’s lead here and have a date of filing and a (later) date of grant. The five year period could then be determined universally from the date of grant and, at a stroke, we would have harmonisation on this issue. Over to you, WIPO.

     

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    If you ever wish to register a trade mark containing the word Donut (or Donuts) for doughnuts via the CTM, beware. A Spanish company, Panrico, owns Spanish trade mark registrations for Donuts and, at least before OHIM, enforces them.

    The latest case (House of Donuts v Panrico) came before the CFI in April and once again Panrico prevailed. In this instance, the applicant had filed for a CTM comprising a logo including the phrase House of Donuts. The CFI decided that the word “Donuts” was not widely understood or used in Spain and thus could not be held to be generic. Further, the dominant feature of the CTM was the word “Donuts” and therefore the opposition succeeded.

    One can only admire Panrico’s tenacity in seeking to maintain a monopoly in a dictionary word such as “Donuts” in the face of international brands such as Dunkin’ Donuts which now dominate the European market. However, given that Dunkin’ Donuts now seems to operate stores in Barcelona and Madrid, it may only be a matter of time before Panrico’s doughnut defences are irreversibly and fatally holed.

    This is not the only case where Spanish companies have been able to register generic words in Spain and enforce them before OHIM.

    Both Matratzen, the German for mattresses, and Limonchelo, a lemon flavoured liqueur, are the subject of Spanish trade mark rights and both have been asserted against later, combination marks containing the same or similar words (in the latter case, a Limoncello label) in cases that have progressed from OHIM to the ECJ.

     

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    Under the CTM system, it is possible to claim seniority from earlier E.U. national registrations. It should be noted that such seniority claims only become valid once the earlier national right has either lapsed or been surrendered (see Article 34(2) of the CTM Regulation).

    It is also possible to apply to revoke or to invalidate a lapsed/surrendered E.U. national right from which a CTM claims seniority. This right is not mentioned in the Regulation but features in the E.U. Trade Mark Harmonisation Directive (89/104/EEC) at Article 14.

    These issues featured in a recently reported UK-IPO case involving an application to revoke a registration for RAPIER (Allied Telesyn V Rapier 1).

     

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    U.K. application no. 2339960 for the shape of a honey jar was recently scuppered by the applicant’s decision to allow U.K. supermarkets’ own-brand honey to be sold in the same jar. The evidence of use of the jar in the U.K. was impressive, with total annual sales of honey in the jar reaching over £3 million by 2003. However, just under a third of those sales were of the supermarkets’ own-brand products. The Hearing Officer, in rejecting the mark as non-distinctive, commented that “the use by a number of unrelated undertakings of a particular shape would simply send an overall message that this is a common way of packaging honey products”.

     

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    Sachertorte is a Viennese chocolate cake, traditionally served with whipped cream, that was created by Franz Sacher in 1832 while he was a trainee chef in the court of the Austrian Prince Metternich. Herr Sacher went on to found the fashionable Hotel Sacher in the heart of the Austrian capital.

    In order to set its culinary speciality apart from mere imitations, the hotel decided to register SACHERTORTE as a trade mark. Unfortunately, it only decided to do this in 1980, by which time there were probably more imitations and competing recipes than there are calories in a slice of the cake. As a result, the hotel had to content itself with registration and use of ORIGINAL SACHERTORTE, and with retaining the Franz Sacher recipe as a closely-guarded secret.

     

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    Whilst traditionally eaten together with coffee, Sachertorte could just as well be accompanied by tea. If one wanted a mid-afternoon repast of surprisingly trade mark protected-elements, one could do little better than Darjeeling® tea taken with Original Sachertorte® cake.

    Tea has been grown around the West Bengal town of Darjeeling since it was introduced to the region in 1841 by a Scottish surgeon, Dr. Campbell. Over the next century, Darjeeling teas became amongst the finest in the world. For a time, when traditional methods of tea growing were replaced by more industrialised methods requiring the widespread use of pesticides, Darjeeling teas rather lost their cachet. However, a recent return to “organic” methods has seen a resurgence in the brand. And brand it is, since the mark Darjeeling is registered in the name of the Tea Board of India for tea before OHIM, as well as in the U.K. and U.S. The Tea Board has also applied to register Darjeeling as an E.U. geographical indication. It is understood that this application is still pending.