UK NEWS

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French Connection Ltd.’s registration and subsequent use of its mark FCUK has raised eyebrows in a number of quarters, with many practitioners wondering how the mark was ever accepted, bearing in mind the provisions of S. 3 (3) (a) TMA (refusal of marks that are contrary to public policy and morality).

The issue was recently raised again when Dennis Woodman filed invalidity proceedings against the Class 14 goods on this ground. The Registry rejected the invalidity action on the basis that offence was not caused by use of the mark per se, but rather by the context in which it was used. This view was backed up by the Advertising Standards Authority, which indicated that it had only taken action against French Connection Ltd. when the use of the mark was in a context likely to offend.

Distinctive character in compound word marks was once again examined in the BioID case (BioID AG v OHIM) before the ECJ. The mark, applied for in Classes 9, 38 and 42, had been refused by OHIM and by the Court of First Instance.

The ECJ accepted that the CFI had erred in applying Article 7 (1) (b) CTMR (relating to distinctive character), in that it had applied criteria relevant to Article 7 (1) (c) (relating to the descriptive nature) instead. The ECJ therefore examined the mark for registrability under Article 7 (1) (b), itself. It found that the relevant public would see “Bio” as an abbreviation of “biometrical”, and “ID” as an abbreviation of “identification.” The mark was once again, therefore, found to be non-distinctive, and BioID’s appeal was dismissed.

What constitutes a registrable shape mark was appealed to the ECJ by Deutsche SiSi-Werke following the refusal of all lower courts to register its stand-up drinks pouches.

The ECJ confirmed, however, that due to the difficulty in establishing in consumer minds that packaging is a trade mark, the packaging must immediately be perceived as such in order to be registrable. This is likely only to be the case where a 3-D mark departs significantly from the norm.

The CFI had taken account of the different types of packaging used on the market for liquids for human consumption. The ECJ approved this approach and, as it resulted in a finding of fact rather than of law, the ECJ could not re-examine the CFI’s conclusion. The appeal was dismissed.

The approach of OHIM examiners to what is needed to support an appeal frequently appears to change. These changes are compounded at Board of Appeal level, leaving many applicants confused. The CFI recently considered the issue in Spa Monopole v OHIM.

Spa Monopole had opposed an application for SPAFORM, on the basis of earlier registrations of SPA THERMES and other SPA marks. The opponent pleaded Article 8 (5) and alleged a reputation in its Class 32 goods in the Benelux, but did not identify the earlier mark in the opposition form. It was, however, named in the Grounds of Opposition, and the country and registration number were also given.

Rule 18 (1) CTMIR requires marks relied on to be “clearly identified”, and the question was therefore whether the earlier mark had been adequately identified when the mark itself had not been stated on the opposition form.

The CFI concluded that there is no obligation to represent an earlier mark where, as in this case, there was an indication of country and registration number. That information was sufficient to allow the mark to be clearly identified.

In the U.K., the Registry has historically used numerical and other limits for deciding whether a town name is registrable as a trade mark. OHIM has no such practice and accordingly the registrability of town names as CTMs is developing by case law. The CFI looked at the issue recently in Peek & Cloppenburg KG v OHIM.

The case involved an application for the mark CLOPPENBURG for retail services in Class 35. Cloppenburg is a German town, population c. 152,000. OHIM and the Board of Appeal had considered that German consumers would perceive the word as a descriptive indication of origin: ie, retail services in the town of Cloppenberg.

The CFI, however, found no link between “Cloppenburg” and the services concerned. Cloppenburg, as a town, was fairly small and had no reputation for retail services; it was unlikely to be recognised as a geographical origin.

Whether the same decision would be made if the town in question had a reputation for shopping is unclear. OHIM did not defend its decision in this case and accepted that it should be overturned.

The saga of the registrability of unusual marks continues…

Eden SARL applied to register “the smell of ripe strawberries” as a CTM. This description was accompanied by the representation of a ripe strawberry. OHIM refused the application as not capable of being represented graphically (Article 7 (1) (a) CTMR).

On appeal, the CFI found that in spite of the applicant’s assertions that “ripe strawberries” have a single, particular, smell, the evidence suggested this was not the case. Moreover, consumers’ understanding of the mark would contain an element of subjectivity. The depiction of the strawberry was equally unclear, and the combination of the image and the description of the mark was not greater than the sum of the parts. It is not clear whether a combination of more than the sum of the parts would have been registrable.

In any event, paragraph 25 of the judgment is an interesting insight into what may be the CFI’s opinion on OHIM’s recent decision to accept sound marks, provided they are filed electronically, when the CFI said that the requirements relating to the validity of graphic representation may not be modified or relaxed in order to facilitate the registration of signs whose nature makes their graphic representation more difficult. No comment has been published by OHIM.

Which is more important: the word part or the figurative part of a composite mark? In Simonds Farsons Cisk plc v OHIM, the CFI decided that the word element was not always most important, and that a figurative element may overcome visual similarity between word elements. This is particularly so if the earlier mark has no meaning, and the later mark has a specific conceptual meaning conferred by the figurative element.

In Soffass SpA v OHIM, the mark NICKY was opposed based on a prior French registration for “noky”. The ending “KY” or “CKY” occurs frequently in English. However, in French, it is infrequent. It was held that where an element occurs infrequently, a consumer is more likely to pay attention to it. NICKY and “noky” were therefore found to be similar.

Opponents forced to provide proof of use are frequently faced with the problem that the mark in use is not exactly the same as the mark as registered. How different can it be before the use will no longer sustain the registration?

This question was considered in Devinlec Developpement Innovation Leclerc v OHIM by the CFI, who found that the following differences do not alter the distinctive character of a trade mark:

• differences in typeface;

• stylisation of the initial letter of the mark in question, where the distinctive character of the mark is still based on the entire verbal element of the mark;

• use of capital letters;

• stylisation of the initial letter to look like a product being sold under the mark (here, the initial letter “Q” had been altered to look like a watch face); In contrast to a large amount of existing case law, the CFI stated that the end of marks may be taken into consideration on a visual comparison where the marks are relatively short. Working out the most important element of a mark frequently depends on the placing of various parts of the mark. However, here, the figurative element was placed above the word element, but was still considered not to be dominant. This was because when this is put into context (use on watch faces), the figurative element would be so small as to be practically invisible, whereas the word element would still be legible.

Competition law is frequently cited as being the opposite of trade mark law. Its role in trade mark proceedings was examined in Sportswear Co Spa, Four Marketing Ltd v Sarbeet Ghattaura and Stonestyle Ltd recently. The defendants were selling Stone Island clothing put onto the market in the EEA. The claimants sued for infringement, objecting to the “mutilation” of the clothing by the removal of garment codes which they claimed deprived the defendants of a parallel imports defence under Section 12 (2) TMA 1994. The defendants argued that S. 12 (2) had to be construed in the light of Article 81 (prohibition of agreements and concerted practices). The claimants retorted that even if there were a breach of Article 81, it would not form a defence to trade mark infringement, and that there must in any event be some credible nexus between the relief sought and the alleged breach. The Court found that the arguments used by the defendant related to the defences available under Articles 28-30, not Article 81. Article 81 was not, therefore, an issue in the current case, and would only have been so if the infringement proceedings had been brought pursuant to an agreement between other parties, not between the claimant and the defendant.

The relevant consumer was recently considered in the case of Biofarma v OHIM. Here, an application for ALREX was opposed on the basis of ARTEX. The CFI held that it was not possible to consider use purely by medical professionals; the general public should also be considered. Different groups of people will understand concepts at different levels, and accordingly a likelihood of confusion may be more likely.

Being asked to prove use in an opposition can be onerous. If the CFI had agreed with Biofarma SA in Alcon Inc v OHIM, the task would have become even harder. Here, the application was for TRAVATAN, and the opposition was based on TRIVASTAN. The opponent provided proof of use, and the applicant argued that the evidence did not show that the mark was actually used in respect of an ophthalmic product, but merely that it could be so used. The court rejected this and stated that if an indication for a product is to treat a particular disorder, and it has been proven that the product was sold for several years, it could have been used for that disorder. It was therefore superfluous and too difficult to require that the product was actually taken by patients suffering the indicated disorder.

A further recent case regarding proof of use was Castellblanch v OHIM. Here, the Court found that it was not necessary to prove use of registered marks by themselves, as it was expected that marks would form part of composite labels. Further, the Court confirmed that a comparison of marks had to be done on the basis of how the marks were registered, not how the marks were used.

Battle is still joined between Sadas SA and LTJ Diffusion regarding Arthur (stylised) and ARTHUR ET FELICIE. The most recent skirmish before the CFI involved similarities between the marks. The court found that ARTHUR was the dominant element of the stylised mark Arthur (the figurative element and the additional dot being less important), and the word ARTHUR is the dominant element of the later mark, due to its positioning. Visually, therefore, the marks were similar, and the inclusion of the earlier mark within the later mark gave rise also to phonetic similarity. The shared element “Arthur” conferred conceptual similarities. There was an attempt to argue that there had been co-existence and that therefore no confusion was likely. This argument was rejected, however, on the basis that the co-existence had not been peaceful.