Snippets

A recent case before the Court of First Instance (CFI) illustrates the need for disclaimers under the CTM system.

Bayern Innovator applied to register a figurative mark consisting of LifeScience and a device containing a (DNA) double helix in a number of classes including Class 35 and 36. The CTM application was opposed by a Dutch company, Life Sciences Partners Perstock, on the basis of their earlier CTM registration for the phrase Life Sciences Partners plus a (very different) logo which also contained the image of a double helix covering business and finance related services in Classes 35 and 36.

The opposition was upheld by both the Opposition Division and the Board of Appeal in respect of services in Classes 35 and 36. The Board of Appeal took the view that the phrase Life Sciences Partners had a "normal" level of distinctiveness in respect of Classes 35 and 36 services. Before forming such an extraordinary view, the Board members perhaps should have consulted the opponent's website where it states that "Life Sciences Partners is a leading independent European investment firm providing finance to private and public life-science companies". In other words, it does exactly what it says on the tin!

Unfortunately, it got no better when the CTM applicant appealed to the CFI. Although the Court took the view that the two marks had only a low degree of visual similarity, it found both a phonetic and conceptual similarity. It also ruled that the Board was entitled to find that the phrase Life Sciences Partners had a normal level of distinctiveness. On this basis, and given that the two sets of Class 35 and 36 services were either identical or very similar, the Court concluded that there was a likelihood of confusion and confirmed the part rejection of the CTM application.

This is a strange case because it reached the wrong decision using the wrong reasoning. All concerned assumed that the phrase Life Sciences Partners has a normal level of distinctiveness for business and finance related services. As can be seen from the opponent's website, and numerous other internet sites, this is clearly incorrect. The phrase Life Sciences Partners is non-distinctive in English for Class 35 and 36 services. They then reached the conclusion that the two marks would be confused by the English speaking business and finance communities. Believe me, they wouldn't be.

The more usual way that the European authorities, especially OHIM, reach such an incorrect decision is to accept that, to English speakers, a phrase such as Life Sciences Partners is non-distinctive. However, to the non-English speakers principally found in Southern and Eastern Europe such a phrase will not be understood and will therefore take on an enhanced level of distinctiveness. On that basis, the confusion of the average Spanish or Hungarian businessmen or finance expert would be inevitable and a likelihood of confusion between the two marks would be inevitable.

The writer would like to suggest another possible outcome. A CTM examiner, part of a new influx of well trained examiners with a background in trade marks, recognises the non-distinctive nature of the phrase Life Sciences Partners in respect of the Class 35 and 36 services claimed and, using OHIM's powers to require a disclaimer under Article 37(2) (recodified CTMR), only allows this CTM application to proceed to grant with a disclaimer to the phrase Life Sciences Partners. If the Dutch owner of this (disclaimed) CTM decides to proceed with its opposition to Bayern Innovator's CTM application (for LifeScience and device), then OHIM's Opposition Division would discount any disclaimed element when comparing the two marks. This would lead to the inevitable conclusion, given that the two device marks are clearly distinguishable, that there is no likelihood of confusion. Everyone is happy except the Dutch opponent who has paid the price for choosing a non-distinctive phrase to identify its services. Who knows, one day in the distant future, it might even happen.

 

Two recent OHIM decisions involving Class 5 goods have confirmed the difficulties faced by pharmaceutical companies in clearing their trade marks for registration and use.

In the first case, Vetpharma Animal Health v Sanofi-Aventis, Vetpharma applied to register the trade mark Vetpharma for "pharmaceutical, veterinary and dietetic preparations adapted for medical use, with the exception of pharmaceutical preparations for the treatment of cancer". This CTM registration was opposed by Sanofi on the basis of its earlier trade mark rights in Veprama for "pharmaceutical products for treating cancer".

Both the Opposition Division and the Board of Appeal found a likelihood of confusion. The exclusion of Sanofi's goods from Vetpharma's specification did not affect this finding. The nature of Vetpharma's goods, being pharmaceutical preparations, were said to be clearly similar to those of Sanofi.

The writer has no argument with these findings, in so far as they relate to pharmaceutical products. However, Vetpharma's specification also covered veterinary preparations and dietetic preparations adapted for medical use. It was casually assumed by both Tribunals, without any comment in the decisions, that these Class 5 goods were interchangeable with, and essentially identical to, pharmaceutical preparations. In the writer's view this is not the case. In fact, given the considerable differences in the distribution channels between veterinary products (for the treatment of animals) and cancer treating pharmaceutical products (for the treatment of humans, principally in hospitals), it could strongly be argued that Vetpharma veterinary products could quite safely coexist with a Veprama cancer drug in their respective markets without any likelihood of confusion.

In the second case, Schill v Apotex, a CTM application for the trade mark Apomea (stylised) covering, amongst other goods, cosmetics in Class 3, was opposed by Apotex on the basis of two earlier Portuguese trade mark registrations for Apo covering pharmaceutical products. In respect of the two sets of goods, the Opposition Division accepted that certain cosmetics and pharmaceutical products could take the same form (creams/lotions) and have the same method of use (application to the skin) and could therefore be deemed similar.

Luckily for the CTM applicant, the Opposition Division then proceeded to decide that the two marks were distinguishable and rejected the opposition. However, if the logic of this decision is followed, all clearance searches for pharmaceutical products must take the existence of potentially conflicting marks in Class 3 seriously. This would make the already extremely difficult task of clearing a trade mark for registration and use in respect of a pharmaceutical product, significantly harder. In the writer's view, only the owner of a cosmetic brand which has a reputation acquired by widespread use should be in a position to inhibit the registration and use of the identical or a similar mark for pharmaceutical products, even if such products are destined to be sold in the form of creams or ointments.

 

When one pharmaceutical trade mark contains the whole of an earlier trade mark will the two marks be found to be confusingly similar by the CTM authorities? Two recent Board of Appeal decisions show that the outcome depends on where the earlier mark is found in the later mark.

In the first case (Ajinomoto Omnichem v Almirall-Prodesfarma; R 1645/2007-2) Ajinomoto applied to register the trade mark Helicidine for pharmaceutical products in Class 5. Almirall opposed on the basis of an earlier Spanish trade mark registration for Cidine covering (after proof of use) drugs aimed at treating gastro-intestinal ailments. The Opposition Division found for the opponent on the simplistic basis that Helicidine wholly contained Cidine. The Board of Appeal, taking a much more sensible approach, annulled this decision. In the Board's view, neither Heli- nor -cidine had any meaning in the CTM mark applied for and therefore Spanish consumers would view the mark as a whole, whilst focussing on the beginning of the mark. Since this (Heli-) was completely absent from the opponent's mark, there would be no likelihood of confusion.

In the second case (Mundipharma v ALK-Abelló; R 1694/2007-4), the mark applied for was Avanzalene in class 5. It was opposed on the basis of an earlier CTM registration for the trade mark Avanz covering identical goods. Even though the CTM mark applied for contains 10 letters and has 4 syllables, whilst the earlier mark is only 5 letters long and has only 2 syllables, both the Opposition Division and the Board of Appeal found a likelihood of confusion between them. The presence of the earlier mark at the start of the later mark was crucial. According to the Board of Appeal, the ending -alene would either be missed or would be viewed as of little trade mark importance.

The Avanz case has been appealed further to the CFI. In the absence of proof that Avanz- is a commonly used prefix for pharmaceutical trade marks that are on the EU market, the appeal is unlikely to succeed. Similarly, the only way that the opponent could overturn the Board of Appeal's decision in the Helicidine opposition would be to show that the prefix Heli- is widely used for pharmaceutical brands that are actually sold in Spain (the opposition being based on a Spanish trade mark right).

 

Elio Fiorucci is a well-known, Italian fashion designer. In 1967 he founded the Fiorucci fashion label and for the next 20 years his company was a significant trendsetter introducing products as diverse as Afghan coats, stretch jeans and thongs to a mass market. Fashions come and fashions go however and by 1989 the once highly successful company had entered receivership. It was rescued from oblivion, first by the Italian jeans company Carrera and subsequently by the Japanese clothing group, Edwin Co., Ltd. The Japanese group reportedly paid $40 million for the Fiorucci company's assets including its registered trade marks, as well as the exclusive right to use the trade mark Fiorucci in relation to clothing.

Like many other companies, when the CTM Regulation came into force, Edwin sought to consolidate its European trade mark rights into CTMs. They therefore applied for and obtained registrations for the trade marks Fiorucci and Elio Fiorruci in a wide range of classes.

During the 1990s it appears that Mr. Fiorucci retained creative control over the (now Japanese owned) Fiorucci label. However, as is often the case in such situations, he seems to have become disenchanted with his position, wishing to act more independently and still under his own name.

In 2003 therefore he brought cancellation actions against Edwin's CTM registrations for Fiorucci and Elio Fiorucci. In both cases, Mr. Fiorucci relied on a ground for revocation of a CTM, Article 50(1)(c) (now Article 51(1)(c)) CTMR, claiming that, as a consequence of the use made of the trade marks by Edwin, they had become liable to mislead the public both as to their nature and their quality. In addition, Mr. Fiorucci attacked the CTM registration for Elio Fiorucci on the basis of a relative ground for invalidation, Article 52(2)(a) (now Article 53(2)(a)) CTMR arguing that he could prevent the use of the trade mark Elio Fiorucci in Italy because of his rights in that name under Italian intellectual property law (Article 8(3) of the Italian IP Code).

Both cancellation actions reached OHIM's Board of Appeal and both were rejected by the Board. In the case of the revocation action brought against both CTM registrations under Article 50(1)(c), the Board found that

• Simply because Elio Fiorucci branded clothing was not designed by the applicant to revoke did not automatically lead to the conclusion that the use of the mark would mislead the relevant public. In the Board's view, the use of names as trade marks was a widespread practice in the fashion industry and the public were aware that a designer with such a name was not necessarily responsible for the production of goods bearing that name in every case.

• Mr. Fiorucci had submitted no evidence showing the nature of the use of the CTM marks by Edwin after the date of registration. It was therefore impossible to find that the public would in fact be misled as to the nature or the quality of the branded goods.

Turning to the invalidation ground (Article 52(2)(a)) raised against the CTM registration for Elio Fiorucci, the Board ruled that, in the circumstances of the present case, Article 8(3) of the Italian Code was not applicable. In the Board's view, the Italian law was aimed at preventing the exploitation of famous names by third parties for commercial ends without permission. This allowed a person who had achieved fame outside the market, in, for example, politics or sport, to control the commercialisation of their name. Once such commercialisation had taken place however, according to the Board, Article 8(3) of the Italian Code was no longer applicable. Further, if a person became famous through commerce, as in the case of Elio Fiorucci, they also lost any rights they might have in their name under Article 8(3). On this basis, the Board of Appeal rejected all of Mr. Fiorucci's actions and confirmed the validity of Edwin's CTM registration.

Mr. Fiorucci wasn't giving up the commercial rights to his name that easily however and he appealed the adverse decision in the cancellation action brought against the CTM for Elio Fiorucci to the Court of First Instance (CFI). (No appeal to the Court was raised in the action brought against the CTM for Fiorucci).

The Court confirmed the Board of Appeal's finding in respect of the revocation action brought under Article 50(1)(c). The use of Elio Fiorucci by a third party would not, in itself, be liable to mislead the public as to the origin of the goods for which it is registered. The absence of any evidence illustrating the nature of the misleading use complained of by Mr. Fiorucci, also meant that the rejection of this ground was inevitable.

In relation to the invalidation action brought under Article 52(2)(a) however, Mr. Fiorucci recorded what may turn out to be a Pyrrhic victory. According to the CFI, the Board of Appeal's finding that the name of a person who has achieved renown on account of his commercial activity could not be protected on the basis of a right to a name under Article 8(3) of the Italian Code was wrong. Such an interpretation of Article 8(3) was not in accordance with the wording of the provision. It would also create ambiguity and cause confusion, inevitably leading to conflicting interpretations of the Code. The Court therefore annulled the Board's finding on Article 52(2)(a).

That may not be the end of the matter however. During the hearing before the CFI, both OHIM and Edwin raised the argument that Mr. Fiorucci no longer had any commercial rights in his name because he had assigned them to Edwin's predecessor in title nearly 20 years ago. In view of this, it was argued, his action brought under Article 52(2)(a) had no basis. Clearly this should have been the ground on which the Board of Appeal rejected Mr. Fiorucci's case. Unfortunately for Edwin it was not. However, since the CFI cannot substitute its own reasoning for that employed by a Board of Appeal, they were unable to rule on this new argument. That being said, they also refused to invalidate the CTM registration on the basis of Article 52(2)(a). We can therefore expect this case to return to the Board of Appeal and for the cancellation action to be rejected on the basis that Mr. Fiorucci, no doubt to his continuing regret, sold all the commercial rights in his name many years ago. What impact this will have on Mr. Fiorucci's continuing attempts to exploit his own name, see, for example, International trade mark application no. 997923 for a signed photograph of the designer and CTM application no. 3631025 for the logo of his new Love Therapy brand, remains to be seen.

 

A Spanish individual, Maria Ortega, has applied to register Obama as a CTM for goods and services in Classes 25, 36, 41 and 43. She is not the only one who is trying to ride commercially on the coattails of the 44th President of the United States. A Dutch company, Van Zanten Cuttings, has filed an International trade mark application for the same mark in Class 31, whilst a Danish company, Flügger A/S, has also applied to protect Obama for goods in Classes 2, 3 and 27.

OHIM's policy has always been to accept surnames as inherently distinctive trade marks, no matter how common the name. On this basis therefore, we can expect the above CTM applications to be accepted, in spite of the close association of the surname Obama with the US President.

One might have thought that a CTM application for the President's full name, Barack Obama, might fare differently, given the public policy issues that would surround the monopolisation of such a famous name by an unconnected third party. But this is not the position. According to OHIM's Examination Guidelines, non-distinctiveness objections will not be raised against CTM applications for the names of prominent persons, including heads of state. Further, applications for the names of such heads of state will not be considered deceptive or contrary to public policy. This overturns the original Office practice under which CTM applications for marks such as Bill Clinton, Fidel Castro and Queen Elizabeth 2 were rejected. In the case of Queen Elizabeth 2, a non-distinctiveness rejection was sustained by the Board of Appeal (R198/2004-4), even though the application had been filed by Cunard, the owner of the famous ocean liner that is named after the UK's present monarch.

OHIM's present policy on names offers great opportunities for quick witted entrepreneurs. They should look out for overnight sensations in the worlds of entertainment, politics and sport and before the newly famous individual protects his or her name as a trade mark, they should file to protect the name for a wide range of merchandise. Even established stars could be targeted. We have noticed, for example, that none of Johnny Depp, Rafael Nadal, Brad Pitt or Robert Redford has yet protected his name as a CTM. The possibility of lucrative transfers of these names to the well-known individual bearing that name should persuade some to take advantage of OHIM's new practice.

As the cost of opposing such CTM applications on the basis of prior trade mark rights or of applying to cancel a subsequent CTM registration on the basis of bad faith or rights to a name will be high and, even if successful, the costs award in such an action will be low, the pragmatic approach might be to pay the CTM applicant/proprietor for an assignment. The way is therefore open down in Alicante for the right person to make a tidy living out of the names of others.

 

The difficulty of relying on unregistered trade mark rights to prevent unconnected third parties from registering well-known film titles has been illustrated by two recent cases, one before the ECJ, the other before the UK Trade Mark Office.

In the first case, a German company, Mission Productions, applied in June 2001 to register the trade mark Dr. No in Classes 9, 12, 18, 25 and 32. Amongst the goods covered were "recorded image and sound carriers".

Danjaq LLC, the owner of the film rights, including the trade mark rights, in the James Bond film franchise, opposed the application. In the absence of prior registered trade mark rights, the opponent relied on their rights in the first Bond film, entitled DR. NO, which was released in 1962. They also relied on the sale of merchandise, such as videos, DVDs, audio recordings, books, posters, watches and action figures associated with the film. The grounds of opposition relied on were ownership of a well-known trade mark (Articles 8(1)a), 8(1)(b) and 8(2)(c) CTMR) and non-registered trade mark rights (or other earlier signs; Article 8(4)).

Unfortunately for Danjaq, the evidence they filed of their use of DR. NO in the European Union, prior to the applicant's filing date, was extremely limited, essentially consisting of the success (and continuing success) of the film and the availability of the film on DVD. Both the Opposition Division and Appeal Board found that there was no evidence relevant to the earlier use of DR. NO as a trade mark by the Opponent in the EU. They therefore both rejected the opposition. Danjaq appealed to the European Court (CFI; T-435/05).

In dismissing the appeal, the CFI ruled as follows:

• From the evidence submitted by the opponent, the sign DR. NO did not indicate the commercial origin of the film, but rather its artistic origin. The commercial origin of the film was indicated by other signs, such as 007 or James Bond. The commercial success of the film did not show that DR. NO was used as an indicator of commercial origin.

• To make a distinction between a film title and a trade mark right was not "unrealistic and artificial". The same sign could be protected as an original creative work by copyright and as an indicator of commercial origin by trade mark law.

• In the case of the limited evidence of use of DR. NO by the opponent in respect of related merchandise, the use of the sign was merely descriptive and did not denote commercial origin. The use was not trade mark use.

• In countries, such as Germany and Sweden, where film titles are accorded special protection, additional to copyright or trade mark protection, the opponent had not supplied evidence of use of the DR. NO title in those specific markets.

This case will almost certainly be appealed further to the ECJ. However, Danjaq will probably only finally succeed when Mission Productions' application is granted and Danjaq can then seek to cancel the registration on the basis of much more convincing evidence setting out the various releases of DR. NO, both at the cinema and on television, in specific EU countries. Whether, in the meantime, Mission Productions has the gall to attack any new release of DR. NO DVDs or related merchandise by Danjaq remains to be seen. Certainly, their (Mission Productions') opposition to Danjaq's later filed CTM application for DR. NO in a variety of classes, including Classes 9 and 25, can be expected to continue.

The second case, this time before the UK Trade Mark Office, involved a UK trade mark application for From Russia With Love in Class 14 (including watches) owned by Faberge. Once again the opponent was Danjaq and once again they were relying primarily on unregistered trade mark rights (Section 5(4)(a) of the Trade Marks Act 1994).

The evidence in this opposition included licensed use of the trade mark From Russia With Love in respect of watches by Swatch in the UK. Sales of these licensed Swatch watches primarily took place in the 2 to 3 years prior to the filing date of Faberge's UK trade mark application.

Even this was not enough to get Danjaq home, however. The Hearing Officer found that, because the Swatch watches did not bear any other Bond signage, and because of the potential dual meaning of the phrase From Russia With Love (film title or country of origin), the relevant public would not assume that the use of the phrase was under licence. The absence of other licensed From Russia With Love merchandise sold in the UK also counted against the opponent. The opposition was therefore rejected.

Again an appeal can be expected but, if that were to fail, will Faberge seek to prevent the release of a 50th anniversary range of From Russia With Love watches in 2013 to mark the passage of half a century since the best of all Bond films was released?

 

Zorro (Spanish for "fox") is one of the most popular heroes in fiction. Created by the American author Johnston McCulley in 1919, the exploits of this black clad, masked outlaw, defending the rights of the people against tyrannical villains, have featured in numerous publications, films and television series. In particular, films starring Douglas Fairbanks in the 1920s, Tyrone Power in the 1940s and Antonio Banderas in the 1990s, as well as a highly successful Disney-produced TV series starring Guy Williams in the 1950s, have ensured that the name Zorro has remained firmly in the popular imagination.

Control of the intellectual property rights in Zorro now resides with the US company, Zorro Productions. They own a number of CTM registrations for the word itself, as well as for combinations of the word and images of the fictional hero.

Jens and Jürgen Bleich run a company, Curly & Smooth, that distributes branded cigarette lighters (such as Bugatti and Porsche Design) in Austria, Germany and Switzerland. They are also the producer of lighters under licences from various German football clubs, such as the two Munich based teams, Bayern and TSV 1860.

In 2003, Messrs. Bleich decided to develop a lighter of their own under the trade mark Zorro. They filed a CTM application for the name covering goods in Class 34. They then followed this up with a further CTM application for a combination of a stylised form of the name, together with an image of a sword wielding, caped character riding a horse.

Zorro Productions opposed both CTM applications on the basis of the identity/similarity of their earlier registered marks and goods/services to the marks (Zorro; word and figurative) and the Class 34 goods claimed by the Bleichs (Article 8(1)(b) CTMR), as well as their (Zorro Productions') reputation in the trade mark Zorro in the European Union (Article 8(5) CTMR).

The opponent was able to show the existence of numerous licences granted to third parties to use the word Zorro on a variety of goods in the EU, in addition to the well-known use of Zorro, both in the titles of films, TV series and publications and as the name of the hero in those films etc.

The oppositions were rejected, both by the Opposition Division and by the Board of Appeal. According to these OHIM Tribunals, the mere existence of licence agreements, in the absence of evidence of actual use provided by the licensees, was not enough to establish either use of the registered Zorro trade marks or the opponent's reputation in these registered trade marks. Further, the fact that Zorro appeared in the titles of successful films, TV series and books, and as the name of the hero in those films, TV series and books, was not enough to establish a reputation in the registered marks in relation to the goods and services registered.

It followed that because the registered goods and services for which Zorro Productions could claim valid rights were dissimilar to the Bleich's Class 34 goods and because the evidence filed by the opponent had failed to establish the reputation necessary in the registered Zorro trade marks, both grounds of opposition (Articles 8(1)(b) and 8(5)) failed.

These oppositions are a reminder of the importance of evidence in CTM practice. If the opponent had been able to reinforce the evidence of its widespread licensing programme with affidavits from some of those licensees exhibiting sample Zorro branded products, invoices proving the sale of such products in the EU and turnover figures, then the outcome of these oppositions might have been different. Experience shows however that, with companies that rely on licences to produce their revenue, the production of convincing evidence of use is not always a straightforward matter.

It would be surprising if these cases were not appealed to the Court of First Instance. Zorro Productions is seeking to protect one of its core marks, the Bleich's company already appears to be selling a Zorro branded lighter. Even if Zorro Productions loses its cases before the Court and the Bleich's CTM registrations are eventually granted, all may not be lost for the US company. The CTM application (no. 3693553) filed by these German individuals for a figurative Zorro mark bears an uncanny resemblance to the device mark that appears at Zorro Productions' website (www.zorro.com) and is protected by US trade mark registration no. 2680669, albeit for games in class 28. If it can be shown that Zorro Productions were the first to produce this image, it might be possible for the US company to seek to cancel the Bleich's CTM registration for the figurative Zorro mark on the basis of their ownership of an earlier copyright (Article 53(2)(a) CTMR), and both of the Bleich's CTM registrations on the ground that they were acting in bad faith when they filed their applications (Article 52(1)(b)).

 

The limited language skills of the average British consumer proved to be the key factor in a recent opposition before the UK Trade Mark Office.

The applicant, Mr. Mohammad Mirza, applied to register a mark which combined the word Eagle together with an image of an eagle and a globe device, for a variety of food and drink products, including non-alcoholic drinks in Class 32. The application was opposed by a Colombian company, Bavaria S.A., on the basis of inter alia an earlier CTM registration for a label that contained the phrase Cerveza Aguila, together with both an eagle and a globe device. The word ‘aguila' is Spanish for ‘eagle'.

The hearing officer accepted that the two sets of Class 32 goods were either identical or very similar. He also accepted that British consumers would understand the meaning of the Spanish word Cerveza (beer). This latter finding is not surprising given the hordes of British tourists that visit Spain each year and their principal activity whilst out there.

Turning to the remainder of the opponent's mark, the hearing officer was not willing to accept, in the absence of evidence to confirm the contention, that a large number of British consumers would understand the meaning of the Spanish word Aguila. He also decided that, in the opponent's mark, the eagle/globe element was dominated by the words Cerveza Aguila. This led him to find that the principal conceptual identity of the opponent's mark was of a Spanish beer or beer based product, with a name of unknown meaning. By contrast, in the applicant's mark, the eagle device shared equal prominence with the word Eagle and therefore this mark's conceptual identity was clearly that of an eagle. It followed, in the hearing officer's view, that there was no more than a low level of conceptual similarity between the two marks.

For similar reasons, the hearing officer also found a low level of visual similarity between the marks. Even worse for the opponent, he found no phonetic similarity at all. On the basis of these findings, it was almost inevitable that, in the hearing officer's view, there was no likelihood of confusion. He therefore rejected the opposition.

The absence of convincing evidence in this opposition was crucial. If you wish to show a conceptual similarity between two words as diverse as Aguila and Eagle, in the UK, you must gather evidence on the language skills(?) of the average Brit. According to an EU poll conducted in 2006, for example, 8% of UK citizens claimed to be able to speak or understand Spanish.

In the present case, it would also have been helpful to put in evidence the sales of Aguila beer in the areas of Spain that are over-populated by British tourists each year. If these sales were high, then it might have been possible to build a case of likelihood of confusion or taking unfair advantage around that.

 

There was a time when the England rugby team would turn up for an international game on a Friday night, have a few beers, lose the match, have a few more beers and then go back to their proper jobs. Of course, that was before the age of "fully focussed" professionalism, as well as the arrival of the marketing and money men.

A recent case brought by the Rugby Football Union (RFU) before the UK Advertising Standards Authority (ASA) shows just how much the "game" has changed. The case was brought by the RFU against Fuller, Smith & Turner (Fuller) for an advertisement Fuller had run for their London Pride beer during the Six Nations rugby tournament. The advert featured an image of rugby goal posts, as well as the copy "Once more into the breach, dear friends, once more", "Support English Rugby" and Fuller's well-known slogan "Whatever you do. Take Pride".

The RFU objected to the advertisement on the basis that it implied that London Pride was an official sponsor of (and endorsed by) the England rugby team. The ASA rejected the complaint for the following reasons:

• Fullers had used the phrase Support English Rugby in advertising for over 10 years without complaint. They did in fact sponsor a number of English club rugby teams and rugby tournaments.

• The advert did not include any references to the England rugby team, the Six Nations championship or to any logos or other insignia associated with the team or the championship. Further, there was no suggestion, implied or otherwise, that Fuller was an "official partner" or "official sponsor" of the team. It followed that the English rugby public would not believe that Fuller had any "official" association with the England rugby team.

This sensible decision offers at least some hope to those UK companies who, whilst not paying the vast sums demanded to become official partners or sponsors, have a legitimate interest in increasing their revenue because sporting events are either taking place in this country or are being widely shown in this country on television.

As the start of the 2012 London Olympics gets closer and the unjustifiably draconian terms of the London Olympic Games and Paralympic Games Act 2006 begin to bite, many more actions, even criminal actions, will be brought against honest UK traders. It is to be hoped that the Courts and the other Authorities who must deal with such actions, will take the same commercially sensible approach as the ASA showed in the Fuller case.

 

Stopping infringing goods at the UK border has just become a bit harder, following recent changes in UK Customs rules.

Under the changes, which came into force on 3 July, Customs will no longer seize consignments of infringing goods based solely on a witness statement from an IP right holder. Instead, they will detain the goods for 10 days only, during which time the right holder must bring Court proceedings seeking an order that the goods be seized. The initial 10-day period may be extended to 20 days, but no further extensions are allowed. In the case of perishable goods, the detention period will be no longer than 3 working days. If no action is brought within the permitted term, the goods will be released.

This differs significantly from the previous procedure, whereby there was an initial 10-day detention during which the right holder could supply a witness statement confirming that the goods were infringing goods. Customs would then seize the detained goods and notify the owner that if he disagreed, he would need to bring a proceeding before the Court. Now, the goods will not be seized following initial detention unless the right holder brings Court proceedings within the detention period and subsequently produces a successful judgment.

The change arises from the need to comply with European customs regulations which have direct effect in the UK. Under these, the burden should be on the IP right holder to prove that goods are infringing, not on the owner to prove that they are not.

Unfortunately the new regime will result in increased enforcement costs for right holders, as they will be compelled to bring Court proceedings in cases where they might otherwise not have needed to. These costs will now be unavoidable, but in straightforward cases where goods are clearly infringing the costs will hopefully prove low, particularly where an owner chooses not to defend the claim.

The new procedure also still allows IP right holders to negotiate an agreement for the destruction of detained goods within the original 10 or 20-day detention period.

 

Manfred Albrecht Freiherr von Richthofen was the most successful flying ace of World War I. He was officially credited with 80 kills, many of which were scored whilst he was flying his famous, red painted Fokker triplane. Because he was closely associated with this aircraft and came from an aristocratic German family, von Richthofen was nicknamed The Red Baron.

von Richthofen did not survive the war, being killed in action in April 1918. However, his exploits have passed into legend, the subject of numerous books, films and television programmes.

In order to exploit that legend still further, three relatives of The Red Baron (Freiherren von Richthofen) obtained a CTM registration for Red Baron in Classes 9, 16, 38 and 41. This CTM registration was granted in September 2001.

In early 2005, a Dutch games manufacturer, Davilex Games, began selling two ranges of computer games, one under the title Red Baron, the other under its German equivalent, Der Rote Baron. The owners of the CTM registration became aware of this use and negotiated a trade mark licence with Davilex which was effective from 1st January 2006.

Then, out of a clear blue sky, an American company unexpectedly appeared on the scene. Sierra Entertainment, who also sell a successful Red Baron branded computer game and who had obtained (unopposed) a CTM registration for Red Baron in December 2006, applied, on 26th February 2007, to revoke the Freiherren von Richthofen's CTM registration on the ground of five years non-use in the European Union.

In their evidence, the flying ace's relatives relied almost exclusively on Davilex's sales of Red Baron and Der Rote Baron games, both before and after the trade mark licence came into effect.

OHIM's Cancellation Division revoked the CTM registration in its entirety. They ruled as follows:

• The mere fact that the Freiherren von Richthofen did not object to Davilex's use of its trade marks whilst a licence was being negotiated during 2005 did not equate to consent. They could therefore not rely on Davilex's use made prior to the effective date of the licence, namely 1st January 2006.

• The trade mark Der Rote Baron differed in distinctive character to the registered mark Red Baron. von Richthofen's relatives were therefore also unable to rely on that use by Davilex.

• It followed that the only use that the CTM proprietor could rely on was the sale of 188 Red Baron computer games by Davilex to a German company (Koch Media) in February 2006.

Given the size of the computer game market, sales of 188 units was viewed as very low and was said to amount to no more than token use. It followed, according to the Cancellation Division, that the Freiherren had failed to establish genuine use of their registered trade mark in the relevant period and the CTM registration should therefore be revoked.

Since both Davilex and Sierra sell substantial quantities of Red Baron (and, in the case of Davilex, also Der Rote Baron) computer games in the EU, and given the harsh nature of this decision, it is no surprise to learn that the present owner of the revoked CTM registration, Davilex Games, has filed an appeal. The fortunes in this dogfight may be reversed yet.

 

A German company, Borco-Marken-Import, applied to register the lower case Greek letter α (alpha) for goods in Class 33. The mark was rejected as non-distinctive by both the CTM Examiner and the Board of Appeal on the basis of OHIM's practice of rejecting single letter marks as inherently non-distinctive. Borco appealed to the Court of First Instance (CFI). The Court ruled that it was incorrect to follow a rigid practice of finding single letter marks inherently unregistrable. Each mark, even single letter marks, had to be considered through the mind of the relevant public. The CFI therefore annulled the Board's decision to reject the mark and remitted it to OHIM for reconsideration.

This case is in line with an earlier CFI decision (Paul Hartmann AG v OHIM; T-302/06) where the Court annulled a Board of Appeal's rejection of a CTM application (no. 4316949) for the single letter E, filed in respect of goods in Classes 5, 10 and 25. It should be noted however that, one year after the CFI's ruling in the Hartmann case, CTM4316949 remains pending. This "E" decision therefore probably falls within the category of CFI decision OHIM files under R (Reluctant to follow).

Finally, regular readers of Snippets will not be surprised to learn that OHIM had previously accepted another Borco filed application (IR(CTM)896709) for the same Greek letter α in Classes 18, 25 and 43. Sony also owns a CTM registration (no. 5335575) for α in Class 9, whilst Susan Dell Inc has registered the upper case Greek letter Φ (phi) for Class 25 goods (CTM3571502) and a Greek company, Beta CAE Systems, holds a CTM registration (no. 2662112) for the lower case Greek letter β (albeit coloured blue) in respect of research services.

 

Elsewhere in this edition of Make Your Mark, the ECJ's judgement in L'Oreal v Bellure is discussed. It is clear from this judgement that the owners of marks with a reputation, when trying to prevent the infringement of their rights should rely on the concept of "unfair competition" or "free riding" rather than the concept of "dilution by blurring" which was singularly unsuccessful in Intel's attempt to prevent the registration of the later trade mark Intelmark (see Intel v CPM; C-252/07). It appears that the almost impossible condition of proving "a change in the economic behaviour of the average consumer" that was set by the ECJ in Intel is not required when unfair competition is being argued.

This point was reinforced in the Nasdaq Stock Market's opposition to a CTM application for Nasdaq & Device in respect of mainly sports equipment in Classes 9, 12, 14, 25 and 28. (Antartica v Nasdaq Stock Market; C-320/07).

Nasdaq had opposed Antartica's CTM application on the basis of an earlier CTM registration for Nasdaq in Classes 9, 16, 35, 36, 38 and 42, as well as their reputation in the mark in relation to financial services and stock exchange price quotation services (Article 8(5) CTMR). The case eventually found its way to the European Court of Justice (ECJ). The Court upheld Nasdaq's opposition. In the Court's view, the relevant consumer, when unfair competition was being alleged, was the consumer of the goods/services to be identified by the CTM application opposed (in this case, primarily sports equipment). Further, for their opposition to succeed, Nasdaq must establish a link between their mark and Antartica's mark. Such a link did not require a likelihood of confusion however.

On the evidence before it, the ECJ was happy to endorse the Court of First Instance's finding that the omnipresence of the trade mark Nasdaq, both in the specialist and the general press, together with the interest of the general public at large in financial matters, meant that the mark's reputation extended to consumers of sports equipment. It followed that such consumers would make the necessary link with the opponent's mark and the opposition therefore succeeded.

In view of the above, if I were Intel, I would file another cancellation action against CPM's UK trade mark registration for Intelmark, this time on the basis of unfair advantage (free riding), rather than dilution (blurring). It goes without saying that CPM's recently filed CTM application for the same mark should also be opposed on the same ground.

 

In a decision (Calvin Klein v Zafra Marroquineros; T-185/07) that deals a body blow to the owners of well-known letter marks, the CFI recently decided that the famous Calvin Klein owned CK Logo was not confusingly similar to the later filed CTM mark, CK Creaciones Kennya.

Zafra's CTM application covered goods in Classes 18 and 25. Calvin Klein relied in part on two Spanish trade mark rights for their CK Logo in respectively Classes 18 and 25. The goods were therefore identical.

However, the Court took the view that the dominant (and distinctive) feature of the CTM mark applied for was the phrase "Creaciones Kennya". This, in spite of the fact that the acronym CK was at the beginning of the mark and that Creaciones Kennya (meaning Kennya Creations) could easily be seen in Spain as a new range of Calvin Klein clothing and accessories created by a designer named Kennya.

In view of their ruling on the dominant element of the CTM application, the Court then found that the two marks were visually, phonetically and conceptually different. A finding of no likelihood of confusion was therefore inevitable.

In the light of these findings, we should expect Volkswagen to be unable to prevent the registration of a mark such as VW Vehicle Walles and British Petroleum to fail to stop the registration of BP Burmah Polymers.

Another case that illustrated the limited rights associated with two letter trade marks was recently decided by the UK Trade Mark Office (WKK Nederland v Hellerman Tyton). WKK, the International (UK) applicant, applied to register the three letter trade mark HTI for, amongst other goods, "shrink sleeve" in Class 17. The application was opposed by Hellerman on the basis of their earlier CTM registration for the two letter mark HT covering identical Class 17 goods.

The hearing officer began by rejecting the applicant's assertions that HT was a descriptive term, standing for "high temperature", or that, in the alternative, the opponent's mark, merely consisting of two letters, was inherently "weak". Having said that, however, he then immediately went on to state that an unpronounceable two letter mark such as HT was "minimal" and would therefore have a small penumbra of protection. Further, he continued, the addition of a third letter "I" would have a considerable impact, particularly amongst the trade specialists who would be the likely consumers of shrink sleeves. For all of these reasons, the hearing officer rejected the opposition and allowed HTI to proceed to registration.

 

Some years ago, in decisions that appeared to ignore most of the available evidence, the European Court ruled (see Decisions C -465/02 and C-466/02) that feta was not a generic term for cheese but rather a term exclusively associated with Greek producers of such soft cheese. This decision led to feta cheese producers in Denmark, Germany and the UK having to choose alternative names, in some cases after many years of production.

One such producer was Judy Bell, who owns Shepherds Purse Cheeses in the northern English county of Yorkshire. Ms Bell, showing just the right amount of disdain for the ECJ's decisions in this matter (though we trust not too much) has renamed her feta cheese, Fine Fettle Yorkshire cheese. Apparently it is a soft, slightly crumbly cheese produced from ewes' milk that looks and tastes strikingly like Greek feta cheese.

Under Section 69(1) of the Companies Act 2006, a company can apply to the UK Trade Mark Office to require a change of a company name. Most applications (for a change) to date have been straightforward, undefended and successful. The case involving the company name Jewson's Drives Limited (JDL) shows that there are hidden dangers in the process.

In the JDL case, an application to change the (JDL) company name was made by Jewson Limited (JL), a leading timber and builders' merchant in the UK. In their evidence, JL put forward examples of customers confusing JDL's services with those of JL, as well as a sample advert for JDL's flagging, paving and fencing services.

Unfortunately for JDL, under Section 69(4)(b)(i) of the Companies Act 2006, a company has a defence to an application for a name change if it (the later company) is operating under the name and has not registered the name with the purpose of either obtaining money (from the earlier company) or preventing the earlier company from registering its company name.

In the present case, there was no evidence that JDL was either seeking money from JL or attempting to prevent JL from registering its company name (it was already registered). Since JL themselves had already shown that JDL had been operating under their company name, Jewson's Drives Limited, from a date before the application for change of name was made, that application was struck out because it had "no reasonable prospect of success" and was "misconceived".

JL may take a little time to recover from the bullet that is still lodged in their own foot.

 

The foreign exchange market trades currencies. It lets banks and other institutions buy and sell money. According to Wikipedia, "The modern foreign exchange market started forming during the 1970s when countries gradually switched to floating exchange rates from the previous fixed "Bretton Woods" exchange rate regime". Fascinating.

During the past 30 years, the phrase "foreign exchange market" has also been shortened, by those operating in these markets, to both FX and Forex. This fact proved an insurmountable difficulty for the opponent in an appeal, (Forex Bank v Chartered Forex) before the Appointed Person (Mr Hobbs QC).

The Swedish applicant, Forex Bank, applied to register a combination of Forex and images of currencies for a variety of goods and services, including exchanging money in Class 36. This application was opposed by a US company, Chartered Forex, on the basis of an earlier UK trade mark registration for a combination of Forex and (an entirely different) device which protected inter alia "Arranging monetary transfers and currency exchange".

The opposition had succeeded before the UK Trade Mark Office in respect of Class 36 services and certain related goods (in Classes 9 and 16). The hearing officer, not having had any evidence before him on the meaning of the term Forex and apparently being as unaware of financial terms as most of the rest of us, had decided that the dominant and distinctive element in both marks was the word Forex and that therefore there was a likelihood of confusion. Forex Bank appealed to the Appointed Person.

Mr Hobbs QC took the view that the hearing officer had a duty, in the absence of evidence from either party, to consider whether the word Forex had any meaning. As the word appears in both the Collins English Dictionary and the Oxford English Dictionary as an abbreviation for Foreign Exchange (Market), it was clear that it was a non-distinctive term for financial services and should be discounted when comparing the two marks. On this basis, given the clear differences between the two device elements, the Appointed Person allowed the appeal and dismissed the opposition.

One might wonder why the applicant in this opposition was reluctant to draw the attention of the hearing officer (and the Appointed Person) to the non-distinctive nature of the word Forex. Well, when your company name is Forex Bank, a certain reluctance in that direction might be understandable. Another reason might be that the UK applicant in the above opposition also owns a CTM application for Forex (word) covering, amongst other goods and services, exchanging money. It does not come as a complete shock to note that this CTM application has been accepted as inherently distinctive by OHIM.

 

In a case decided by the UK Trade Mark Office, an application for the trade mark Le Trappiste in respect of bar, restaurant, public house and similar services in Class 43 was unsuccessfully opposed by the International Trappist Association on the basis of their CTM collective marks for the Authentic Trappist Product logo which protects, amongst other goods, beers and other alcoholic beverages. Such a decision is enough to make you break a vow of silence.

 

In a non-use revocation action (Facilicom Bedrijfsdiensten v Castle View International) brought against a UK trade mark registration, a novel reason for non-use failed.

Castle owned a UK trade mark registration for the trade mark Trigon covering a wide range of services including estate agency services. Facilicom sought to revoke the registration on the ground of five years non-use. Castle did not deny that they had not used the mark but put forward the following reason for non-use. In the 1990s, they (Castle) and a firm of estate agents (Savills) had entered into a joint venture under the Trigon name. In 1999, Savills had bought out Castle's interest in the joint venture. Under the agreement, Castle had agreed not to use the trade mark Trigon for five years.

The problems faced by Castle were two-fold. First, they did not provide any written evidence of their agreement with Savills. Second, the hearing officer did not believe that the private agreement between Castle and Savills constituted a "proper" reason for non-use. Even if the agreement did exist in written form, and there was no evidence that it did, such an agreement did not insulate a registered proprietor from a non-use attack by an unrelated third party.

This case is a salutary lesson to those who enter trade mark agreements that involve a period of non-use of a key trade mark. In such a case, even a token continuation of use should be negotiated to try to avoid the fate of Castle's Trigon registration.