General Court sees red at Deutsche Bahn’s colour mark application · 2020. 12. 4. · a local market trader. I didn’t realise Evertonians were such classicists. Moving on to Rugby

Issue no. 382 January/February 2011The Journal of The Institute of Trade Mark Attorneys

Similar words can negate clear visual differences between wine marksNaturally Active refusal upheld by General CourtInveresk’s breaches of quality standard licensing obligations cost it dear...Freedom is priceless, but General Court rules out Free mark

General Court sees red at DeutscheBahn’s colour mark application

2 ITMA Review January/February 2011

ITMA business

Media Watch . . . . . . . . . . . . . . . . . . . . . .2

OHIM email “alert” system replaces CTM publication letter . . . .3

Member Benefits . . . . . . . . . . . . . . . . . .3

ITMA 2010 Christmas Lunch . . . . . . .4

Features

Interview with HH Judge Colin Birss QC . . . . . . . . . . . . . . . . . . . . .6

First Case Management Conferenceunder the new Patent County Court rules . . . . . . . . . . . . . . . . . . . . . . . .8

PCC: Calculating damages for TM infringement . . . . . . . . . . . . . . . . . . .10

The positives, perils and pitfalls of IP mediation . . . . . . . . . . . . . . . . . . .11

Finding the right balance – theproblem of online copyrightinfringement . . . . . . . . . . . . . . . . . . . . .14

Case comment

Red light for Chroma CTMapplication on appeal . . . . . . . . . . . .16

Bring the world closer? . . . . . . . . . . .17

Similar words can negate clearvisual differences between wine marks . . . . . . . . . . . . . . . . . . . . . . .18

General Court sees red at Deutsche Bahn’s colour mark application . . . . . . . . . . . . . . . . .20

Naturally Active refusal upheld by General Court . . . . . . . . .21

The problem of acquiringdistinctiveness throughout everenlarging EU region . . . . . . . . . . . . . . .22

General Court ruling puts a thorn in Gotcha’s side . . . . . . . . . . . .24

Domain names – three Nominetcases compared . . . . . . . . . . . . . . . . . .26

Nike claim partial win on appeal but may still pay the price of initial lapse . . . . . . . . . . . . . . . . . . . . . . .28

Inveresk’s breaches of qualitystandard licensing obligations cost it dear . . . . . . . . . . . . . . . . . . . . . . .30

Freedom is priceless, but GeneralCourt rules out Free mark . . . . . . . .32

AX: establishing a new process for dealing with limited oppositions . . . . . . . . . . . . . . . . . . . . . .34

Fresh Direct win appeal . . . . . . . . . .35

International

Big changes in Greece . . . . . . . . . . . . .36

Marlboro raise the roof in Singapore . . . . . . . . . . . . . . . . . . . . . . . . .37

Noticeboard

News of Members . . . . . . . . . . . . . . . . .38

Student Column . . . . . . . . . . . . . . . . . . .38

Notice on the publication of the JEB 2010 examination results . . . . . .38

Obituary: Keith Robert Farwell 1965 – 2010 . . . . . . . . . . . . . . . . . . . . . .39

And finally...

Who’s who in ITMA . . . . . . . . . . . . . . . .40

Forthcoming events 2011 . . . . . . . .40

The views expressed in the articles in theReview are personal to the authors and wemake no representations nor warranties of any kind about the accuracy of theinformation contained in the articles.

ITMA Review copy deadlinesContributions to the Review must bereceived by the 12th of the month forpublication in the following month’s issue, including whenever possible high-resolution images of authors and relevantgraphics. These are best sent as separatefiles rather than embedded in Worddocuments. Illustrations or photos often add interest and aid understanding of theissues covered in articles. Please emailmaterial to Kelly Robson, Editor, [email protected] and TaniaClark at [email protected]

© ITMA 2011

ITMA website: Web: www.itma.org.uk

ITMA BUSINESS

ITMA BUSINESS

In December/January theInstitute featured in twonational newspapers, the Times and the Telegraph, as well as in five articles on therealbusiness.co.uk website andin articles commissioned by the World IP Review Digestand Connect magazine, the bi-monthly newsletter covering six London boroughs.

The Times reference came courtesy ofJoseph Letang of Dehns whose firmprovided the answer to the Moneysection’s Business Question on the useof acronyms. By suggesting ITMAmembers can help with such queriesand by pointing them to our website,Joseph did us a great favour whileenhancing his own professionalism by highlighting the fact that he is a member. The Telegraph piece featured in a supplement on Business Innovations which also hadcontributions from the IPO and CIPA.Excellent free “advertising” for thosereaders who didn’t dismiss thesupplement along with those othersections that rarely get read!

Of other stories featuring in the mediaover the festive period, the Scotsmanreported that the design of Lindt’schocolate bunnies were deemed notto be distinctive by the ‘General Courtof the European Union’. The LondonEvening Standard reported that KerstinRodgers (aka Mrs Marmite Lover!) waschallenging London Underground’sclaims that her pop-up restaurantcalled “The Underground Restaurant”was infringing TFL’s brands. I must begetting old when I have no idea whata pop-up restaurant is or how arestaurant can be run from a Kilburn flat!

On the sporting front we had twostories of note. The Liverpool Echoreported that Everton Football Clubhave applied to register the club’siconic shield and motto “NIL SATIS NISIOPTIMUM” as a CTM, having missed

MEDIAWATCH

CONTENTS

ITMA Review 3January/February 2011

ITMA BUSINESS

out on claiming the Manager DavidMoyes’ phrase “The People’s Club” to a local market trader. I didn’t realiseEvertonians were such classicists.Moving on to Rugby Union, RugbyWorld reported that the traditionalversion of the All Black’s Haka – the KaMate version – was to be registered bythe Ngati Toa Iwi, the chief of whomfirst performed the dance after aTuwharetoa woman saved his life.Apparently, the Iwi don’t like the ideaof people using it inappropriately,such as on tea towels. Well I for oneam not going to cross them!

As it was the festive season I relate the story from the Scotsman, whichreports on a further success for theScotch Whisky Association in having

Scotch Whisky protected in Panama,apparently its 20th largest exportmarket.

Finally, in addition to the articlesreferred to above, we issued two pressreleases in the last two months. Onereported the Advocate General’sOpinion on L’Oreal v eBay and thesecond announced our newsponsorship deal with Corsearch,which will be sponsoring all of ourEvening Meetings in 2011. This isexcellent news and helps us to keepcosts down whilst enabling us todevelop a relationship with one of thekey players in trade mark supportservices.

Ken Storey [email protected]

The London EveningStandard reported that

Kerstin Rodgers (akaMrs Marmite Lover!)

was challengingLondon Underground’s

claims that her pop-up restaurant called“The Underground

Restaurant” wasinfringing TFL’s brands.

I must be getting oldwhen I have no idea

what a pop-uprestaurant is or how arestaurant can be run

from a Kilburn flat!

OHIM email “alert” systemreplaces CTM publication letterFrom 1 February 2011, OHIM will be stopping the current practice of sendinga letter (L124) to applicants or their representatives to inform them aboutthe publication of a CTM application in part A of the CTM Bulletin.

This change follows the successful introduction of CTM Watch email alerts,available in CTM E-Filing, which now provide a quicker and more powerfulsolution for users wishing to know when their CTMA is published.

The email alert feature requires logging into MyPage and is therefore onlyavailable to users of the password-protected platform making it easier to dobusiness with OHIM.

For detailed information on how to set up an alert, visithttp://oami.europa.eu/ows/rw/pages/CTM/FAQ/CTM13.en.do#2400

As we enter 2011, IP Benefits Plushas negotiated a selection ofmoney-saving discounts designedto support you both personally andprofessionally.

One of those benefits is MemberEnergy, which is a free pricecomparison service designed to findthe cheapest gas and electricitysuppliers in your area. Averagemember savings are currently£247.16* so it’s definitely worth acouple of minutes of your time.

For further information and todiscover all the benefits available toITMA members at IP Benefits Plus,visitwww.itma.org.uk/about/join_us/benefits

*Terms and conditions apply. Seewebsite for full details. Not availablein Northern Ireland.

These benefits are managed onbehalf of ITMA by Parliament Hill Ltdof 127 Cheapside, London, EC2V6BT.

Member benefits


ITMA BUSINESS

ITMA BUSINESS

ITMA 2010CHRISTMAS

LUNCH

14 December, The Lancaster,London. Pictures by StewartRayment, Lockhart Hastings.

Tania Clark (Withers & Rogers)and Tom Scourfield (CMCCameron McKenna)

John Caisley (Grant Spencer), Maggie Ramage (Alexander Ramage) and Stewart Rayment

(Lockhart Hastings)

Alex Bowtell and Henrietta Marsh(CMS Cameron McKenna) and ColinMaher (Novartis, Camberley)

John Noble (British Brands Group), Emma Stopford, Mireille Giesen Onclin, Sophie Bodet, Jo Grist (all GlaxoSmithKline) and Imogen Wiseman (Cleveland)


ITMA BUSINESS

Guy Tritton (HogarthChambers) and Nikki

Powell (Edwin Coe)

Puravee Shah (Murgitroyd), Rita Khaitan(GlaxoSmithKline) and Vicki Bennett(Saunders & Dolleymore, St Albans)

Catherine Barbour (Rouse), Mark Bearfoot

(Coca-Cola) and Taryn Byrne (Page White & Farrer)

Emma Tuck (Browne Jackson, Birmingham), Peter Guzhar (Carson McDowell, Belfast), Declan Cushley and Sara McNeill(Browne Jackson, Birmingham), Gayle Hodt (GlaxoSmithKline) and Mark Daniels (Browne Jackson, Birmingham)

Chris Morris andAndrew Tibber

(Burges Salmon)


FEATURES

FEATURES

The procedure for filing claims at the PCC is unwieldy since itinvolves filing the claim (andpaying the fee) at Park Crescentand then the documents are sent toSt Dunstans House: is it anticipatedthat this will change in future?

Yes, indeed. We are conscious of thefact that it is not very convenient,particularly since patent and trademark firms do not necessarily haveclerks within their departments to dothis on their behalf. Therefore weanticipate moving the procedure tothe Chancery Registry at the RoyalCourts of Justice within the next fewmonths.

Costs have been capped at £50k,which enables the claimant anddefendant to know in advance themaximum liability. Are the setstandard levels of costs capped and to what extent is there anydiscretion?

There are set standards of costsincluding, eg:

Settling particulars ofclaim/defence/reply to defence £ 6,125

Drafting Witness Statements £ 5,000

Experts £ 7,500

Inspection of performance of experiments £ 2,500

Attending trial £15,000

These are cumulative and the

amounts set out in the CPR are themaximum amounts for each stage,and therefore if the case settlesbefore going to trial, the work carriedout to date will need to be consideredwhen deciding on the costs to beawarded.

What happens if an infringementaction is brought and subsequentlyan invalidity action, and theclaimant is resistant to the twoactions being consolidated toenable them to benefit from£50,000 per trial?

If it makes sense for the two actions to be consolidated then I will do so.Attempts to work round the system of the £50,000 cap will be scrutinisedcarefully and will not be permitted ifthey are inappropriate.

Has the cap of damages of £500kbeen set? And to what extentwould this be discretionary?

This matter is under consultation. The parties could agree a waiver.

Should the Statements of Case beexamined in greater detail from the very outset as in the Registry,which regularly requests thatparties provide more details if aground has been insufficientlypleaded in the Statement: couldthe same approach be taken at the PCC?

We do not have the resources to carryout a procedure in which Statementsof Case are examined and

commented upon before the otherparty responds to them and before aCMC. I was not fully aware of thisbeing done at the Registry. It isunlikely that we could implement thisin the near future, although it may besomething that we could revisit.

Statements of Truth now need tobe signed by the relevant partiesand you refer to this in your CMC in Vivienne Westwood (DameVivienne Westwood OBE v AnthonyEdward Knight, see p.8 for casereport). Is this with a view toindividuals being held in contemptof court or an order being made forcross examination of the relevantindividual?

This is about Statements of Truthverifying the Statement of Case. I didrefer to a Statement of Truth in theCMC in that case since it had beensigned by the attorney who did nothave full knowledge of the facts. Thatis permitted for High Court cases, butin the rules applicable to the PCC theStatements of Truth must be signedby the relevant individuals and youneed to identify who is signing forwhat particular part. Witnessstatements always have a Statementof Truth from the witness concerned.

The CMC appears to be particularlypivotal and the occasion whenparties can request orders fordisclosure of documents, factevidence, expert evidence,experiments, written submissionsand cross examinations; effectively

Interviewwith HHJudge ColinBirss QC By Tania Clark

Tania Clark Colin Birss QC

FEATURES


it is like a mini trial, although youare not deciding the trial at thatstage?

CMCs are an in-depth review but theyare not a mini trial. I am not decidingthe matter but seeing what needs tobe done to bring it to trial. In theVivienne Westwood CMC I madeorders for skeleton arguments to be filed for reasons set out in thejudgment. I also made an order givingpermission for evidence be filed inrelation to certain points, but decidedthat further evidence did not need tobe filed on other points.

Surely once the arguments havebeen fleshed out, the defendantmay then ask for a further order torequest disclosure of documents? Isthe onus not on the claimant to fileadequate pleadings at the outsetprior to the CMC?

Indeed it is, but the onus to fileadequate pleadings applies to bothsides. An application to submitmaterial over and above what wasordered at the CMC is possible butwill only be considered in exceptionalcircumstances.

Is a chronology useful with theskeleton arguments and areskeleton arguments produced priorto the CMC or to the actual trialitself?

Chronologies are usually helpful. Inmost trials it is useful to have skeletonarguments and these are producedprior to the trial. In the VivienneWestwood CMC, provision was made for skeleton arguments.

To what extent have these changesto the PCC been influenced byother European jurisdictions,including the EPO in Munich, andpleadings in the Netherlands where a trial on the pleadings iscarried out?

These changes have undoubtedlybeen influenced by other Europeanjurisdictions and by proceedingsbefore the EPO.

In a transfer of proceedings to theHigh Court (or indeed vice versa)the main criterion is whether theparty to the litigation can onlyafford to bring or defend the claimin the new low-cost PCC. To whatextent is it dependent on the

parties being an SME or a privateindividual? I refer you to yourdecision in the ALK - Abello vMeridian Medical Technology case.

I dealt with the criteria for transfer in the judgment in that case. It alsodeals with the matter of parties beingSMEs and the value of the claim.

The impression given in that patentdecision was that the parties feltthat they would be better served byhaving the trial in the High Courtrather than the Patents CountyCourt. To what extent do you thinkthis was influenced by the name of the court being a County Court,and perhaps we should considerrenaming the PCC to drop the word‘County’ and have a separate anddistinct IP court in its own right?

This is an interesting question since,in the Commercial Court (which ispart of the High Court), there is theMercantile Court for smaller cases,rather similar in some ways to the PCC but the word ‘County’ does notappear in its title. The MercantileCourt was a county court at one timebut no longer one. It is early days, butperhaps we could revisit this in the future.

The time limit for trials is two days. To what extent is there anydiscretion if you overrun, or are you confident that as a result of the CMC it will be kept to that time limit?

There a discretion, but I will be carefulto keep everybody to their respectivetimetable and will clearly state howmany hours I have allowed each partyfor any particular evidence orarguments.

It must be difficult to set a timelimit when expert evidence isrequired, so perhaps the PCC willbe more suitable for trade markand design trials rather than patent trials?

It may be difficult when experts arecalled since the cross examination can take longer but, again, it is amanagement issue. I am confidentthat if times have been set, then thecases will run to time.

Would it therefore be moreadvisable to have a single jointexpert rather than two experts?

Single joint experts are notparticularly liked by litigants. I wouldnot impose something like that onthe parties unless it was appropriate.

In the CMC in Vivienne Westwood,you set the one-day trial date sixmonths from the CMC and statedthe date on which you would handdown judgment (two weeks afterthe trial). Is this standardprocedure?

Yes. We checked the court’s diary andI was confident that the judgmentcould be produced in that time frame,but obviously it would depend on thecircumstances and the time of year. Iexpect parties to come before me atthe CMC with available dates for thetrial. Hopefully the trial date will notbe more than about six months fromthe CMC.

Is it likely that there will be morejudges in the PCC in the future?

The scheme has always allowed formultiple PCCs if wanted and thereforeif it was felt appropriate there couldbe PCCs in other cities, such as Leeds,Manchester, Birmingham, etc.Likewise, there is no reason inprinciple why one could not haveother judges in the PCC. We alreadydo have a Deputy Judge (MichaelFysh), there are IP practitioners whoare Recorders and can sit as deputyjudges in the PCC and the High CourtIP judges can also act as judges in the PCC.

To what extent can evidence befiled electronically?

We have the facilities to receive thingsby email so long as they can beemailed to my clerk.

You are keen to encourage trademark/design/patent litigators toappear before you at the PCC. Arethere any particular weaknesses inadvocacy skills or the like and anyways in which we can improve?

I cannot think of any particularweaknesses. It is important for you togain more experience and confidenceand that only comes from becomingfamiliar with the court and itsprocedures.

Tania Clark, Withers and Rogers,[email protected]


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FEATURES

It is easily forgotten, no thanks to itsname, that the PCC is able to hearcases relating to intellectual propertyrights other than just patents, so casesrelating to copyright, designs andtrade marks may be brought before it.Indeed the PCC is due to have itsname changed to the “IntellectualProperty County Court” to reflect this.

Though this aspect of the proposedchanges (in the Intellectual PropertyCourt Users’ Committee report on thePPC in July 2009) has yet to takeeffect, there have been changes tothe Civil Procedural Rules (CPR) (seenew CPR rules 63.17 to 63.26). Thesechanges include putting a cap oncosts of £50,000 on the liability stageof the proceedings and a further£25,000 on any damages enquiry. The cap is cumulative to these totalsdepending on what stage the case isat. Therefore, in cases which settlebefore the end of the trial, the partyseeking costs will not be able to claim this full amount.

The other significant change includesfront-loading the case by requiringparties to set out concisely all theirarguments and evidence in theirinitial pleadings, the idea being thatby the Case Management Conference(CMC) the court has a good grasp ofthe case and may make specific andlimited directions on a cost/benefitbasis. The PCC is therefore requiredonly to make orders in respect ofdisclosure, witness statements, expertreports, cross-examination at trial andskeleton arguments in relation to“specific and identified issues” (CPRRule 63 PD para 29). The hope is thatthis will lead to cheaper and quickerproceedings. However, it isrecognised that the cost/timeeffectiveness of these rule changes

will only assist if the PCC and theparties involved are able to find thecorrect balance. They need to ensurethat adequate detail is put in eachparty’s statement of case, therebyreducing the directions that mayneed to be given by the court. At thesame they need to ensure there isneither too much front-loading, with parties producing excessivepleadings, nor the court giving costlydirections in relation to evidence andarguments that are more typical ofthe High Court. A final point worthnoting is that the rules also requirethe initial pleading to be signed offwith a statement of truth by anyperson with knowledge of the factsalleged. This may be more than one individual if more than oneperson has knowledge of the factscontained therein.

The Westwood case, the first to testthese new rules at the CMC stage,took place before the new PCC judgeJudge Birss on 22 October 2010between the famous fashion designerDame Westwood and a Mr Knight, aseller of goods on the internet. Thiscase was transferred by the HighCourt to the PCC by an order dated 1 October 2010. On the judgment ofJudge Birss this case therefore fellwithin the new regime. It should benoted at the outset that althoughDame Westwood had instructedsolicitors and counsel to act on herbehalf, Mr Knight was a litigant inperson, and due to his unavailabilitydid not attend the CMC. Accordingly,submissions were only made onbehalf of Dame Westwood.

A consequence of the transfer of this case to the PCC was that theclaimant’s pleadings (though not thedefendant’s on the judge’s view) were

in a form typical of pleadings beforethe High Court. As such they onlydealt with allegations and matters of fact rather than argument.Additionally, the statement of truthwas signed by the claimant’s solicitorsrather than those with knowledge ofthe facts.

The issues raised in the pleadings arenot of particular relevance other thanthey included issues of infringementof copyright and trade marks, a claimof passing-off and the use of anumber of domain names by thedefendant. The defendant’s defenceincluded assertions that certaindevices claimed to be infringed werenot original works of the claimant(although not in those words).

The judge first considered theadequacy of the pleadings under thenew rules. He determined that MrKnight’s pleadings were adequate asthey covered the issues so far as theyneeded to be and the statement of truth had been signed by him.However, he believed the claimant’spleadings required amending underthe new rules in three respects. Thefirst was to include a reference tocomplying with the pre-actionprotocol as now required in both PCC and High Court pleadings. Thesecond was that the statement oftruth required signing by partiesknowledgeable of the facts statedtherein. As an aside he noted that if aparty’s solicitors were knowledgeableof certain facts contained in thepleadings they should also sign them.He also added that if more than oneperson was signing the pleadingsthey should refer to the sections thatthey were making the statement oftruth in respect of.

First Case Management Conferenceunder the new Patent County Court rulesDame Vivienne Westwood OBE v Anthony Edward Knight. Patents County Court (HH Judge Birss QC). Since 1 October2010, the Patents County Court (PCC) has been operating under a new regime following changes toits rules of procedure. All cases commenced after this date are governed by these new rules, whichare primarily focused on costs and case management. Their aim is to speed up and reduce theamount of money spent litigating straightforward intellectual property cases. The Westwood vKnight case discussed below is the first to come before the PCC at the case management stageunder these new rules. Adrian Howes reports.


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The third amendment required by thePCC was more substantive. The judgebelieved that although the claimant’spleadings had sufficiently stated the details of five of six devices, the claimant had failed to pleadsufficiently the details of one device(see below) so required the claimantto amend her pleadings to includedetails of this device.

Following considerations of thepleadings, the court went on toconsider whether any furtherevidence was required in theproceedings, in addition to thatcontained in the pleadings. Thejudge, having noted the changes to the rules, stated:

“It seems to me that one importantconsequence of the provisions is that,subject to proper safeguards, somerelevant evidence will be excludedfrom trials. Merely because someevidence is relevant will notnecessarily justify permission beinggiven to adduce it. On the other handthe parties need to know that thecourt will give permission forevidence to be filed in a proper case since otherwise there will be atemptation to overload the statementof case with unnecessary material.”

A number of requests to producefurther evidence were made by theclaimant. One request, for example,was for an order that the claimant beallowed to give further evidence onthe use of various brands by theclaimant, which the defendant hadchallenged. The court ordered this.The judge in conducting a cost-benefit analysis believed thatproviding this evidence would beuseful. In doing so he also noted thatalthough no evidence was providedby the claimant’s solicitor on costs, itmay be useful to do so in some cases,though he acknowledged that thiswas not such a case. This cost-benefitapproach was applied to otherrequests made by the claimant.

For example, the judge alsoconsidered whether the claimantshould provide further evidence insupport of the plea “the claimant is a very well known fashion designerwho is known throughout the world,including the United Kingdom”. He noted that it was common,particularly in passing-off cases, toproduce extensive costly evidence on

this type of issue, even when notreally challenged by the defendantand to no real benefit. Accordingly, he agreed with the claimant that itshould not have to provide evidenceon this.

One particular issue on evidence that arose of relevance to trade markcases generally was the use of surveyevidence and the like to showconfusion. The judge, noting thisissue, felt that such evidence wascomplex and costly, and in this casewould plainly fail the cost-benefit test– the suggestion being that thiswould be so in the majority of trademark and passing off cases. He did,however, allow the claimant to put in evidence from eBay’s websitesuggesting that customers werebuying goods from the defendant inthe mistaken belief that they were theclaimants. Although he recognisedthat this type of evidence might notbe relevant he believed that in thiscase it would not be costly to produceand might be useful.

In addition to allowing some of theclaimant’s requests to provide furtherevidence, the judge, unusually of hisown accord, also ordered that theclaimant be allowed to provideevidence on one of six devices thatthe claim related to which thedefendant had challenged on thebasis of its originality, and hence itssubsistence and ownership by theclaimant. He realised that it was notnormal practice for a judge to makean order in respect of evidence notrequested by the parties, but notedhe was not requiring the claimant toproduce such evidence and that thiswas clearly a point of contention.

Having considered these variousissues of evidence, Judge Birss wenton to determine whether any ordersshould be made regarding disclosure,expert evidence and cross-examination at the hearing. As theclaimant had made no submissionsregarding these, the judge did notorder them. However, he did orderthat skeleton arguments may be filed.He made this order as the pleadings,being in the form of High Courtpleadings, did not contain the parties’ arguments.

In doing so he noted that in the 1990s costly statements of case wereproduced, which the new rules are

intended to avoid, and that thepurpose of fuller pleadings under thenew rules was to assist the court withappropriate directions at the CMCstage. He stated:

“At the pleading stage it may well beunnecessary to do more than stateconcisely what the argument is ratherthan take up space setting it out inelaborate detail. The court is unlikelyto need arguments to be addressed in depth for the CMC and permissioncan always be given (if appropriate as here) for skeleton argument before trial.”

As an aside and on the topic ofskeleton arguments, it is worth notingthat during the CMC the claimant hadonly submitted a witness statement,and did not provide a skeletonargument as is typical before the High Court. The judge believed thisapproach to be helpful.

In summary, it is clear that Judge Birss is determined (and rightly so) toallow only additional evidence andarguments which are likely to be ofsome use and not costly to produce.He has also shown, at least in thiscase, that he is prepared actively tomanage the case on the basis of bothsubmissions made by the parties andto some extent of his own accord. Indoing so he also unusually gave aone-day trial date just six monthsfrom the date of the CMC, and evenmore unusually stated a date onwhich he would hand downjudgment, only two weeks after the trial.

If Judge Birss is able to keep thismomentum up and finds the rightbalance between directions andfront-loading of the case, therebykeeping costs down, there is everychance the PCC under the new ruleswill be a success. The danger ofcourse is of falling into the trap whichcaused the PCC to fail in the 1990s,where parties, under rules intendedto streamline the PCC, causedmassive front-loading of cases withexcessively substantial pleadingsbeing produced. Judge Birss clearlyrecognises this concern and withhope and historical hindsight will beable to avoid this trap.

Adrian Howes, Bird & Bird LLP,[email protected]

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January/February 201110 ITMA Review

Background

Under the English legal system,following a successful trial on liability,a trade mark proprietor is entitled to elect between damages and anaccount of profits. If the proprietorcan show that the infringer’s actionshave led to lost sales by the trademark owner, or (on an account ofprofits) that the infringer has made aprofit attributable to the infringinguse, then damages are awarded onthat basis.

The position, though, is notstraightforward if the trade markowner has not lost any sales, and theinfringer has not made any profitsthat can be attributed to theinfringement. In these circumstances,is the trade mark owner entitled toany financial remedy, at all? This wasthe question dealt with by the PatentsCounty Court and its new judge, HHJudge Birss QC, in National Guild ofRemovers & Storers v Silveria.

The parties

The National Guild of Removers &Storers is a trade association whichrepresents individuals and companiesinvolved in removals and storage. Ithas a regulatory and supervisory roleover its members. The Guild owns anumber of registered trade marks,which members are licensed to use intheir advertising and directory entries.In 2003 Which? Magazine rated theguild as joint top of the tradeassociations they surveyed.

The four (separate) defendants were either former members of theGuild, or (in one case) had never been a member. Each used one ormore of the Guild’s trade marks inadvertisements, websites and/ordirectory entries. The Guild sued eachof the four, and obtained judgment indefault against each. The court agreedto hear the inquiry as to damages inrespect of each defendant in a singlehearing, in which none of thedefendants participated.

Were damages recoverable?

Judge Birss noted that thedefendants’ activities had not causedany loss to the Guild. The only basison which the Guild could recoverdamages, therefore, was on the so-called “user” basis, whereby areasonable royalty is awarded for theunlawful use of the Guild’s marks.Although the user principle has beenapplied in patent infringement casesfor many years (see General Tire vFirestone [1976] RPC 197, HL) andmore recently in copyright andpassing off cases (for exampleBlayney v Clogau St Davids GoldMines [2003] FSR 35 and Irvine vTalksport [2003] FSR 35) there has,until now, been some doubt as towhether damages awarded on thisbasis are applicable to trade markinfringement claims.

In the previous High Court decision of Dormueil Freres v Feraglow [1990]RPC 449, Knox J was unwilling toaward an interim payment on this

basis in a case of trade markinfringement. Whilst accepting thatKnox J did not did not decide thatsuch damages were not available atall (he simply refused them on anapplication for an interim payment),the authors of Kerly's Law of TradeMarks and Trade Names (14th Edition,paragraph 19-133) cited Knox J’sdecision to support the propositionthat it was doubted that the userprinciple is applicable to trade marks.

Judge Birss held that there is noreason in principle why damages,calculated on the “user” basis, shouldnot be available to trade markowners, as they are in patent,copyright and passing off cases.

How are damages on the “user” basisto be assessed?

The judge did not, in this case,explore the factors that the courtshould assess in determining anappropriate award of damages. Heinstead noted the general propositionthat “it will be a question of fact in anygiven case to decide the amount ofsuch damages."

In assessing the level of damagespayable, the judge was guided by the Guild’s membership rules whichprovide post-termination obligationsin the event that a member leaves theguild. Although the rules oblige thedeparting member to delete theGuild’s name and logos fromstationery, at the same time theyrecognise the practical problem that

PCC: calculating damagesfor TM infringementNational Guild of Removers & Storers Ltd v Silveria (t/a C S Movers) [2010]EWPCC 15 (12 Nov 2010), Patents County Court (His Honour Judge Birss QC), 12 November 2010. The Patents County Court has for the first timeconsidered whether damages calculated on a “user” basis (ameasure usually used in patent and copyright cases) are availablein trade mark infringement claims. As illustrated by the level ofdamages awarded, damages calculated on this basis can besubstantial. Importantly, the decision also affirms the jurisdictionof the Patents County Court to preside over trade mark

infringement and passing off disputes, which should encourage trade mark owners to use thisrelatively inexpensive forum for lower value or less complex disputes. Martin Delafaille reports.

Martin Delafaille

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January/February 2011 ITMA Review 11

may arise when a departingmember has already placedadvertisements in the likes of the Yellow Pages. In thesecircumstances, the departingmember is permitted to continueusing advertisements publishedusing the Guild’s marks for asignificant period afterwards,subject to the departing memberpaying a weekly licence fee of £100per week for advertisementsappearing in public directories.That fee would be payable until theadvertisement(s) expire. The rulesalso provide that any formermember continuing to use theguild’s name or logos after theperiod of any such advertisementshall be liable to a penalty fee of£200 per week until the use ceases.

The judge in this case held that thehigher rate was an appropriateroyalty rate, even for the defendantwho had never been a member ofthe Guild. In the judge’s mind, thehigher rate was a fair assessment of what was “unauthorised use”.Applying this rate to the periods of the defendants’ use, the judgeordered damages in excess of£75,000 against the four defendants.

Conclusion

This is a significant decision forthree reasons:

1. It affirms the Patents CountyCourt’s jurisdiction to decidetrade mark infringement andpassing off claims.

2. It is the first time that damageshave been awarded on the“user” basis in trade markinfringement proceedings.

3. Although HHJ Birss QCindicated that each case will bedecided on its own facts, that arelatively high level of damageswas awarded in this caseillustrates that damagescalculated on the “user” basiscan be substantial.

Nevertheless, this is a PatentsCounty Court judgment and is notbinding on the High Court. We willneed to see whether the HighCourt supports the conclusions ofJudge Birss. We consider it likelythat it will.

Martin Delafaille, Kempner &Partners LLP,[email protected]

Even quite experienced lawyersnot used to the area of disputeresolution can easily muddle upthe various different forms ofalternative dispute resolution, or ADR. However, ADR may no longer be an appropriateumbrella term for what is actually non-court based orprivate dispute resolution. Private dispute resolution, or PDR, might therefore be the best way to describe this range of techniques. Michael Coverreports.

The positives, perils andpitfalls of IP mediationThe first of these, arbitration, hasbeen with us for centuries and, in thisjurisdiction, its origins can be tracedright back to the 17th century.Arbitration has the benefit of anadjudication of a dispute, albeit aprivate one, with excellentinternational cross-borderenforceability of the decision, that isthe ‘award’, which is in fact far betterthan that for court judgments.

Adjudication is a variation, whichobtains a contractually-bindingdecision, without some of theadvantages of arbitration.

As we will see, mediation is avoluntary process, whereby a neutral,the mediator, assists the parties tofind their own solutions to theirdisputes and differences.

Common characteristics

Common characteristics of all formsof PDR include:

• One or more neutrals is chosen bythe parties (or at least significantparty influence over theirselection) and paid for by theparties.

• Institutions may have a role inadministering the arbitration ormediation, for example WIPO, ICC,LCIA, INTA and various other sets

of chambers and panels ofneutrals.

• The process is confidential, or atleast private.

• It is generally (although notalways) cheaper.

Mediation

As we have seen, mediation is agenerally voluntary process, whichonly leads to a binding agreementwhen the parties have signed theresulting settlement agreement. Inthe real world, the settlement rate isprobably around 65%, comprisingdisputes which settle on the day ofthe mediation or shortly afterwards.Mediation is a flexible process whichenables the needs, concerns andinterests of the parties to be explored,not just their legal positions.

Outcomes can be agreed which nocourt could order, including doingbusiness on favourable terms in thefuture. The main business relevance isto be able to resolve disputes, but atthe same time to preserve businessrelationships, for example in the case of a long-term IP licence.

The process typically comprises jointand private sessions between themediator and the parties and a formof what might be called shuttle

Michael Cover

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Mediation has to beentered into by

agreement and thateither means a

mediation clause in,for example, an IPlicence or a specific

mediation-submissionagreement. An

example disputeresolution clause

providing formediation and then

arbitration is set out at the end of

this article.


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diplomacy. In all, it is not a soft option,as, like yoga, it requires muchstretching and some pain.

There are probably around 6,000 civiland commercial mediations per yearin the UK (see the 4th CEDR MediationAudit, published in May 2010). Thereis still a long way to go, even with thegentle growth in numbers ofmediations currently beingexperienced.

How do you get to mediation?

Mediation has to be entered into byagreement and that either means amediation clause in, for example, anIP licence or a specific mediation-submission agreement. An exampledispute resolution clause providingfor mediation and then arbitration isset out at the end of this article.

The courts provide what might becalled encouragement. They havepowers to punish in costs a successfulparty that unreasonably refuses tomediate, even if that party has beensuccessful in the litigation. This isassisted by what are called ‘UngleyOrders’, named after the High CourtMaster Ungley who devised it. Thisprovides that the parties are toconsider ADR (effectively mediation)and then are to report to the court ifthey consider the case unsuitable formediation in an affidavit or witnessstatement on a without prejudice saveas to costs basis, so that this can betaken into account when the courtcomes to look at the question of costs.

This probably means that, at least in proceedings in the English HighCourt, it is always best to give seriousconsideration to mediation andprobably to go through with it. Youmay not settle but you will almostcertainly learn useful informationabout your opponent’s position and concerns.

Preparation for mediation

This is a key feature and, as mediators,we see all kinds of preparation, fromthe excellent to the shoddy! Excellentpreparation will almost always standyou in good stead and begin to getthe mediator working with you andengaged.

Topics to address include:

• Mediator selection: do you go foran IP specialist or a generalist? Is

this yet a piece of litigation(perhaps it is a difference over an IP licence)? It could be said that a strong case would see youfavouring a specialist, whereas aless strong case might see youfavouring a generalist. Whicheverkind of mediator you want, do not be afraid of interviewing thepotential mediator(s) and evenobtaining references.

• There are plenty of mediationinstitutions and panels andchambers to look at. Some ofthese have already beenmentioned; for example, thewriter is a full member of In Placeof Strife, the Mediation Chambers.

• Work on the venue and dates.Your own office may offer somehome advantage and appeal tothe other side as being free.

• Once the mediator has beenagreed and appointed, engagewith him and begin to get themediator working for you. Aconfidential to the mediatorbriefing paper, in addition to theusual position paper will usuallybe effective.

• Try to make sure that you havethe necessary decision makersthere or readily available.

• Who is to be on your team? Doyou take the trade mark attorneysand the lawyers; do you takecounsel or even your expert? Keepthe team tight but perhaps have awider range of individuals onstandby.

Opening statements in mediation

The opening statement at themediation is your opportunity to tellyour story and, at the same time, tofocus forward and look beyond thedispute or difference in hand. Identifythe issues and begin to suggestoptions for dealing with them.Consider making an initial offer orsmall concession to anchor thenegotiation but do so on a principledbasis, so I am making this offer/concession, as the case may be,because... . Stay courteous but do notbe afraid of showing emotion; this isyour opportunity to show the otherside and their advisers how stronglyyou feel about the dispute ordifferences.

Zones of possible agreement

Work what your zones of possible

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Any mediation will hitthe wall at some point

and encounter anintractable problem.The mediator should

be working to dealwith such deadlock,

but think about yourwon solutions and putthem forward. These

might include varyingthe people that are

meeting, for examplethe principals withoutthe lawyers. Consideroptions to add value,

like a licence ofrelevant IP or doing

business onfavourable terms

for the future.


agreement are and think about thesame for the other side. This willenable you to frame effective offersand to avoid the ‘insult zone’, that is,an offer which is ludicrously high orlow and which will set you back ratherthan move you forward. Principledbargaining has already beenmentioned and this is the waygenerally to start. However, there isalways a degree of horse trading atthe end, so think about how youmove seamlessly into what may be aquite fast-moving series of offer andcounter-offer.

Breaking the deadlock

Any mediation will hit the wall at somepoint and encounter an intractableproblem. The mediator should beworking to deal with such deadlock,but think about your won solutionsand put them forward. These mightinclude varying the people that aremeeting, for example the principalswithout the lawyers. Consider optionsto add value, like a licence of relevantIP or doing business on favourableterms for the future.

When all is lost, look at final sealedoffers, splitting the differencebetween two final offers. Above all,keep energy up and look for energyon the part of the mediator. If themediator is not contributing and bothparties are getting on well withouthim, consider sending him home.

Mediation and the fit with IP

Mediation of IP disputes anddifferences is in some ways a perfectfit. Confidential resolution of disputesis attractive and the rights are of longterm or even indefinite duration.

Current trends in PDR

Various trends can be detected in theworld of private dispute resolution.These could have the theme ofhybrids.

Med-Arb is a hybrid blend ofmediation and arbitration, with anarbitration delivering a definiteoutcome after an unsuccessfulmediation. The neutral could be adifferent one for each phase or eventhe same one, subject to suitabledisclaimers in the arbitrationagreement, to deal with the fact that the neutral will have picked upconfidential information in the privatesessions in the mediation phase.

Within mediation itself, there is aconvergence of techniques asbetween civil and commercial andfamily mediation, with familymediation beginning to use a hybridmodel of mediation involving bothmeetings with both parties presentand private sessions.

Dispute Boards are to some extent amixture of much of what has beendiscussed in this article. There is theconciliation and even the disputeavoidance phase of mediation,followed by an adjudication. DisputeBoards are standing disputeresolution bodies that are set up tofollow through major infrastructureprojects, such as dams and tunnelsthat are funded by institutions such as the World Bank.

As to regulation, mediation in the UKis pretty much unregulated, althoughthe EU Mediation Directive is to beimplemented by next spring. Howmuch longer this can continue isuncertain and perhaps it is too late toregulate mediators and we should belooking to regulate mediation itself,as is the case with arbitration. Maybealso mediation has an unexcitingimage, which is unjustified.

Sample dispute resolution clause

‘Any dispute or difference arising out of or in connection with thisagreement shall be referred forresolution by mediation under theterms of the Model MediationAgreement of the Chartered Instituteof Arbitrators. The mediator shall be aFull Member of In Place of Strife, theMediation Chambers. Should thedispute or difference not be resolvedat mediation, such shall be referred toand finally resolved by arbitration bya sole arbitrator. In the event of theparties failing to agree theappointment of an arbitrator, theappointment shall be made by thePresident of the Chartered Institute ofArbitrators. The Seat of the arbitrationshall be London, England and the law of the arbitration shall be that of England & Wales. The partiesirrevocably agree to exclude andwaive their right to appeal from theaward of the arbitrator on a point of law.’

Michael Cover, Barrister, AccreditedMediator and Chartered Arbitrator,[email protected]


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The way in which copyrightproprietors enforce their rights isdifferent in the online environmentfrom traditional copyrightenforcement strategies. Directenforcement against primaryinfringers is often not economicallyviable or issues of jurisdiction arise,and as such rights owners arepursuing service providers in respectof joint tortfeasorship, authorisinginfringement or communication to the public while avoiding the need topursue large numbers of end users.

Scope of protection

A work is protected under theCopyright Designs and Patents Act1988 (CDPA) where it is original – ie,the product of the author’s skill andeffort – and fulfils the qualificationrequirements. It is oftenstraightforward to conclude thatcopyright may subsist in films or musicbut is more difficult to determinewhether copyright subsists in respectof short works of a few words or ashort sentence. It is a well-establishedprinciple that single words orcommands do not constitute literaryworks (Navitaire Inc v Easyjet AirlineCompany (1) and Bulletproof Inc (2)[2004] EWHC 1725 (Ch), Exxon Corp v Exxon Insurance ConsultantsInternational Ltd [1982] RPC 69).However, copyright can subsist in a

headline as a free-standing originalliterary work provided sufficient skilland labour were involved in creating it(The Newspaper Licensing Agency Ltd (“NLA”) and others v MeltwaterHolding BV [2010] EWHC 3099 (Ch)).Whether a headline will be a copyrightwork will be a matter of factdepending on the effort involved in its creation. Where there was notsufficient skill and labour for a headlineto be a copyright work in its own right,it could in some circumstances beprotected by copyright as a substantialpart of the article of which it forms apart. In either case the implications foronline service providers are the samewhere reproduction of a headline aspart of a link is held to be copyrightinfringement (Meltwater).

Section 17 infringement

Copyright is infringed by reproducingthe whole or a substantial part of aprotected work in any material formincluding storing the work in anymedium by electronic means (s16(3)and 17(2) CDPA). The CDPA must be interpreted in accordance with the Information Society Directive(Directive 2001/29/EC) (the Directive).Article 2 of the Directive requires that member states provide for theexclusive right to authorise or prohibitdirect or indirect, temporary orpermanent reproduction by any

means and in any form, in whole or inpart, of relevant works. The qualitativetest of whether a substantial part hadbeen taken has been re-stated byInfopaq International A/S v DaskeDagblades Forening ([2009] All ER (D) 212) although in Meltwater MrsJustice Proudman noted that the fullimplications of that decision have not yet been worked out and that a number of questions remainunanswered by the European Court of Justice.

Meltwater provided a tailoredcommercial media monitoring servicecalled Meltwater News to its clients,setting out extracts from thepublished media featuring the searchterms of interest to its clients. Theextracts included the headline of thearticle, the opening text and a “hitextract” showing the context in whichthe search term appeared. Applyingthe Infopaq criteria, unlicensed endusers receiving Meltwater News wereheld to infringe copyright. The hitextract (even an extract as short as 11words) could constitute a substantialpart provided it conveyed theoriginality of the article bycommunicating an element which is, in itself, an expression of theintellectual creation of the author. Inreceiving Meltwater News, a local copyof the headline and/or hit extract wasmade. Going further than this,

Finding the right balance– the problem of onlinecopyright infringementThe creation and distribution of copyright protected content using the world wide web allows businesses to disseminate their copyright works, providing a global business model. Theproblems of online copyright enforcement are the same as thoseencountered in relation to all internet trade, namely identificationof the infringing party and jurisdiction of the dispute. The UK courtsare rapidly developing the law in this area; however, there is a fine

balance to safeguarding the intellectual creation of business and individuals while avoiding expansionof the scope of protection. Emily Peters reports.

Emily Peters


Proudman J held that a commercialend user would “more likely than not”infringe copyright by linking to anonline article as again a local copywould be made on the end user’scomputer.

The most widely publicised type ofonline copyright infringement is bypeer to peer (P2P) file sharing, whereusers copy material onto their harddrive (infringement under s17 CDPA)and make copies available to thirdparties for downloading using a P2Pnetwork (infringement under s20CDPA). Many rights owners regardenforcement against widespreadinfringement by end users who areoften individuals as not cost effectiveor appropriate, and even where detailsof the subscriber can be obtained byreference to their IP address that doesnot identify the individual infringer.

Infringement by authorising

Although rights owners can take direct action against end users forinfringement under s17 CDPA, thiscannot be used to enforce copyrightagainst those ISPs who provide themechanisms by which infringementcan take place but do not copycontent themselves. Section 97ACDPA provides that the court maygrant an injunction against an ISPwhere that ISP has actual knowledgeof another person using their serviceto infringe copyright. In TwentiethCentury Fox Film Corporation vNewzbin Ltd ([2010] EWHC 608 (Ch)), Kitchin J granted an injunctionunder s97A CDPA against Newzbin,restraining it from including entries in its indices which identifiedunauthorised copies of the claimant’s films.

Newzbin provided a facility which wasdirected to film content and enabledits premium users to search for andfetch all Usenet messages whichcomprised a film. It also providedsoftware (its NZB facility) toreassemble the individual files to saveor view the films. Activation of the NZBfacility in relation to a film protectedby copyright would inevitably result inthe production of an infringing copy. A copyright work is infringed unders16(2) CDPA by a person who withoutthe licence of the copyright ownerauthorises another to do any of theacts restricted by copyright. Mere or

even knowing assistance or facilitationof primary infringement is notsufficient to amount to authorisation.It was held that Newzbin hadauthorised infringement by thepremium users, having involved itself in the acts of identifying anddownloading infringing copies so as to make the infringement its own.Newzbin was also a joint tortfeasorwith its users having procured andengaged in a common design with itspremium members to infringe theclaimants’ copyright.

The fact that the claimants wereunable to pinpoint specific acts ofinfringement which Newzbin hadprocured did not preclude a finding ofliability. However, Kitchin J refused togrant a wider injunction restrainingNewzbin from including entriesidentifying any material posted to or distributed through any Usenetgroup in infringement of copyright, as Newzbin did not have actualknowledge of other users using itsservice to infringe such rights.

Infringement by communication tothe public

Streaming content or offering it fordownload without consent is likely toinfringe copyright in that content bycommunication to the public. Unders20(2) copyright is infringed where acopyright work is communicated tothe public by electronic transmission.Such communication includesbroadcasting the work or making itavailable by electronic transmission insuch a way that members of the publiccould access it from a place and timethey selected.

Communication to the public unders20 was interpreted broadly in tworecent cases. In Newzbin, Kitchin J heldthat in providing the technology for itspremium members to search for filmsand re-compile them, Newzbin hadinfringed copyright in those films bycommunication to the public. In thesummary judgment application of ITVBroadcasting Ltd and others v TVCatch Up Limited ([2010] EWHC 3063(Ch)), it was held that the methods ofcommunication set out at s20(2) of theCDPA were a non-limiting list. TVCatch Up converted free-to-airbroadcasts into signals enabling users to view live UK television oncomputers, iPhones and games

consoles. It was held that TV CatchUp’s transmissions were aninfringement by communication to the public even though thetransmissions were made on a one-to-one basis rather than a broadcastand could not be accessed at a timechosen by its members. This issignificant as those responsible forstreaming content over the internetwhere no files are transferred can beheld liable for the transmission ofunauthorised content on this basis.

Exceptions to infringement under the CDPA

The decisions in respect of s17infringement, in particular theMeltwater decision, may have far-reaching consequences forcommercial end users. In addition, it was held that commercial end users would not have a defence toinfringement under either the s28A ors30 exceptions. Temporary copyingunder s28A is solely concerned withincidental and intermediate copyingwith the consent of the copyrightproprietor. The receipt (and copying)of Meltwater News by the end userwas not generation of a temporarycopy for the purposes of atechnological process and the makingof the copy had independenteconomic significance as end userspaid for the Meltwater News service.Receipt of Meltwater News was not fairdealing as the end user does not applyhis critical faculties to the work (s30(1)CDPA), there was no public reportingof a recent newsworthy event (s30(2)CDPA) and merely providing a link tothe original article did not provide asufficient acknowledgment of theauthor (s30(2) CDPA).

Jurisdiction

Issues of jurisdiction concerning onlineenforcement can be complicated andwere considered recently in respect ofcopyright and database infringementin Football Dataco Ltd and others vSportradar GmbH and others ([2010]EWHC 2911 (Ch)). The defendantswere Swiss and German companieswhich provided access to sports dataon web servers located in Germanyand Austria to customers locatedaround the world (including in the UK). The UK court could not acceptjurisdiction in relation to infringementby communication or making

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CASE COMMENT

The decision under appeal was a Board of Appeal’s dismissal of an appeal by the applicant forregistration of CHROMA coveringinter alia ceramic bathroom goodsand tiles, which found in essence thatthe sign at issue constituted thetransliteration into Latin characters of the Greek word ‘χρώμα’ (colour)and that, since it was a descriptiveindication of the characteristics of thegoods concerned, there was a groundfor refusal in Greece and Cyprusunder Article 7(1)(c) of Regulation207/2009 (CTMR) and also for thesame reasons it was devoid ofdistinctive character under Article7(1)(b) CTMR.

It was pleaded to the court this wasan incorrect assessment under Article7 and that the mark was registrable.The court focused first on Article7(1)(c).

Article 7(1)(c) bars from registration“trade marks which consist exclusivelyof signs or indications which mayserve, in trade, to designate the kind,quality, quantity, intended purpose,value, geographical origin or the timeof the production of the goods or ofrendering of the service, or othercharacteristic of the goods or service”and Article 7(2) says that this barapplies even where it exists in onlyone part of the EU.

Having considered the Board’sdecision in light of the relevant caselaw, the court upheld the findingsthat

• CHROMA will be immediatelyperceived as meaning ‘colour’ by aGreek speaker;

• the word ‘colour’ may be used to designate a characteristic ofgoods, namely their ability to bepresented in various shades ofcolour, or at the very least refers to the use of or presence of non-black or white colours or a rangeof colours;

• in respect of the goodsconcerned, an indication that theyare available in various colours is acharacteristic which is likely to berelevant in trade; and

• from the point of view of therelevant Greek speakingconsumer. The sign CHROMAcould serve to indicate that thegoods were available in variouscolours and that it thereforedesignated a relevantcharacteristic in terms of themarketing of the goods.

Having found no error in theassessment of the refusal underArticle 7(1)(c), the court felt no needto review the Article 7(1)(b) objectionand held that the appeal was rejected and thus the application is refused.

This case is interesting forpractitioners as a review of theassessment of descriptiveness of amark in the CTM system and also for applicants as a caution that with EU-wide protection also comespossible objection even if only in one EU country, language oralphabet.

Geoff Weller, IPULSE,[email protected]

available to the public unders20(1)(a) CDPA or reutilisation underparagraph 12 of the Copyright andRights in Databases Regulations1997, as the defendants’ serverswere based outside the UK. Thecourt adopted the emission theoryapplied to broadcasts and held thatthe act of making available to thepublic by online transmission iscommitted only where thetransmission takes place even where data on a server in one state is accessible by the public of another state.

However, the UK court did havejurisdiction to consider infringementby authorisation where there was aprimary act of infringement in theUK. It held that there was a goodarguable case that the Germancompany authorised theinfringement by its customers as it exercised complete control overthe content of pop-up windowsdisplaying sports data which itallowed its customers to access.Accessing the pop-up would createa local copy which, if it contained asubstantial part of the copyrightwork, would be a s17 infringement.

The recent cases show that the lawis adapting to find ways to deal withthe growth of the internet; however,legislation has some way to catchup. The European Commission’sreport in relation to the Directive onthe Enforcement of IntellectualProperty Rights (2004/48/EC) (theEnforcement Directive) stated thatthe Enforcement Directive hadmade significant progress inremoving disparities in theenforcement of intellectual propertyrights across the Community.However, the Commissioncommented on the scale of theincrease in online infringement andthat the Enforcement Directive didnot provide for the difficulties raisedin respect of online enforcement. In the report it made variousrecommendations as toclarifications which would berequired to address the specificchallenges of the digitalenvironment. The Commission has requested feedback on thereport by 31 March 2011.

Emily Peters, Bird & Bird LLP,[email protected]

T-281/09 Deutsche Steinzeug Cremer & Breuer AG v OHIM, General Courtdecision of 16 December 2010. This is an appeal following the refusal toregister the mark CHROMA as a Community Trade Mark (CTM).The General Court rejected the appeal and in so doingconsidered the proper assessment of ‘descriptiveness’ and inparticular could a sign that is the Greek word for colour describe a ‘characteristic’ of bathroom ceramics to the Greek-speakingconsumer. Geoff Weller reports.

Red light for Chroma CTMapplication on appeal

CASE COMMENT


This appeal to the Appointed Personreiterated the tests for determiningwhether a mark is devoid ofdistinctive character and providedwise comments for those who areconsidering appealing a decision.

Solomon filed UK trade markapplications for the marks BRING THEWORLD CLOSER in classes 35, 38 and41 and NO WIRES, NO WORRIES inclasses 16, 35, 38 and 41 on 27October 2008. Although both markswere filed as series they wereessentially word marks.

The UK Registry rejected both of theapplications on the basis that themarks were devoid of distinctivecharacter under Section 3(1)(b) of The Trade Marks Act 1994. BRING THE WORLD CLOSER was rejected inits entirety whereas NO WIRES, NOWORRIES was rejected in relation to class 38.

BRING THE WORLD CLOSER

This application covered“Promotional, advertising andmarketing services” in Class 35 andbroad specifications in Classes 38 and41. The hearing officer’s decision toreject the application was based onthe fact that BRING THE WORLDCLOSER is comprised of four normalEnglish words that form a commonlyused phrase. Furthermore, in relationto telecommunications the marksimply advises the average consumerthat the services will bring peopletogether. The hearing officerconcluded that the mark was notcapable of functioning as a trademark, stating:

“I see the phrase as a readilyunderstandable combination suchthat, in the context of advertisingespecially, would not be such as toconvey distinctive character”.

NO WIRES, NO WORRIES

As “telecommunication services” is a abroad term, the hearing officerdetermined that the average

consumer was likely to varydepending on the actual servicesoffered but all consumers, even of themore basic services, would have amoderate level of attention andknowledge. NO WIRES, NO WORRIESwas therefore rejected by the hearingofficer for the services covered by class 38 on the basis that the mark would advise the consumer that wireless, worry freetelecommunications would be onoffer. The hearing officer found themeaning of the mark to be “plain” and “unambiguous”.

Appeal to the Appointed Person

Solomon appealed both of thesedecisions to the Appointed Personunder section 76 of The Act. Thestatement of case filed by Solomonwas extremely bare, simply statingthat they did not agree with thedecisions. Rule 71(1) of the TradeMark Rules 2008 deals with appeals tothe Appointed Person and states thatthe Notice of Appeal needs to includethe grounds of appeal and the case insupport of the appeal. The AppointedPerson in this case reiterated theimportant point that appellants must“…question whether they havegenuine grounds for appeal and notsimply pursue an appeal for the sakeof it”.

However, Solomon did provide a littlemore detail in its skeleton arguments.With regard to BRING THE WORLDCLOSER, it was argued that theoriginal decision did not review thematter thoroughly enough and thedistinctiveness or otherwise that themark should have been assessed inrelation to all of the services coveredby the application rather than thegeneral terms only. In the case of NOWIRES, NO WORRIES, arguments weresubmitted on the basis that the markis linguistically imperfect and wouldrequire some interpretation for aconsumer to transform the mark froman indicator of origin to one that iscompletely devoid of distinctivecharacter. It was argued that services

may suffer technical faults despitebeing wire-free, meaning thatconsumers would be unlikely to takethe meaning of the mark literally.Solomon’s skeleton arguments alsoseized upon a claim by the hearingofficer that NO WIRES, NO WORRIEShad a basic alliteration and rhythmicstructure meaning that the markcould not be devoid of any distinctivecharacter.

In summary, in both cases Solomonargued that the hearing officer’sreasons for rejecting the applicationswere insufficient to establish that themarks in question lacked distinctivecharacter.

The decision

In his decision, the Appointed Personreferred to Easistore Limited’sapplication to register WE CREATESPACE in Class 39 (O-342-10). Thisdecision discussed exclusion fromregistration on the grounds of Section3(1)(b). When assessing whether amark should be refused registrationunder this section, the matter shouldbe viewed from the perspective of the relevant average consumer todetermine whether the mark at issuewould serve to indicate that thegoods or services originated from asingle economic undertaking.

The Appointed Person essentiallyagreed with the hearing officer’sassessment of BRING THE WORLDCLOSER, viewing the mark as a wholeas being a statement regarding anadvantage from the use of theservices offered. The mark would beperceived by the average consumeras being origin-neutral as it involvedno verbal manipulation which wouldrender it distinctive. Therefore, theappeal in relation to Classes 38 and 41was dismissed. The UKIPO offered towaive the objection to Class 35 andtherefore BRING THE WORLD CLOSERwas allowed to proceed for this class.

The Appointed Person also agreedwith the hearing officer in relation toNO WIRES, NO WORRIES, finding nosubstance in the arguments putforward by Solomon. The appeal wastherefore dismissed in relation toClass 38. NO WIRES, NO WORRIES wasallowed to proceed for Classes 16, 35and 41 for which no objections wereraised.

Charlotte Duly, Boult Wade Tennant,[email protected]

Bring the world closer?Case O-353-10, Decision of the Appointed Person, Mr Geoffrey Hobbs QC, 24September 2010, UK Trade Mark Application Nos 2500980 BRING THE WORLDCLOSER [series of three] and 2500983 NO WIRES, NO WORRIES [series of two] bothin the name of Solomon Telekom Company Limited. Charlotte Duly reports.


CASE COMM

ENT

CASE COMMENT

On 13 March 2003, Codorniu filed anapplication for a CTM for a word anddevice composite mark.

The composite mark was made up ofthe words ARTESA in bold gold capitalletters against a black rectangle in aprominent position and NAPAVALLEY in copper bold capital lettersagainst a black rectangle in a lowerposition and a sinuous gold elementin a copper triangle against a greysquare which also housed the ARTESAand black rectangle in a prominentposition.

The application was filed for “winesproduced and bottled in Napa Valley,California, USA” in Class 33.

Bodegas brought oppositionproceedings against registration ofthe application for all the goods inClass 33. The Opposition relied onArticle 8(1)(b) of Regulation No207/2009 and (for the purposes of the appeal to the General Court) wasbased on earlier CTM Registration2050623.

The CTM registration was a black andwhite word and device compositemark made up of the word ARTESO inplain capitals, which was positionedunderneath the image of a centaurstraddled by a rider. Both the centaurand rider are holding a staff and anamphora hangs from each end of the staff.

The CTM registration was registeredin respect of inter alia “alcoholicbeverages (except beers)” in Class 33 on the 22 January 2001.

On 31 March 2006, the OppositionDivision upheld the Opposition.

On 20 November 2007, the Board of Appeal upheld the OppositionDivision ruling following an appeal by Codorniu, which subsequentlyappealed to the General Court.

The General Court’s findings

It was not directly disputed byCodorniu that the goods at issue wereidentical nor that the relevant publicwas composed of average European

consumers. The crux of the appealwas the dispute over the similarity ofthe marks and whether there was alikelihood of confusion.

Similarity of marks

Unsurprisingly, the General Courtstated that the assessment of thesimilarities of the mark should bemade by assessing the visual, auraland conceptual similarities of themarks. It also stated that this involvesmore than just comparing onecomponent of the mark with thecorresponding component of theother mark and the assessment mustbe made by examining each of themarks as a whole.

However, in certain circumstanceswhere one such componentdominates over the othercomponents of the composite marksuch that the other componentscould be considered negligible, theassessment of the similarity of themark may be carried out solely on thebasis of that dominant element

Similar words can negateclear visual differencesbetween wine marksT 35/08, Appeal to the General Court, 23 November 2010, Community TradeMark Application 3079159 for ARTESA NAPA VALLEY and device in Class 33 inthe name of Codorniu Napa Inc (Codorniu) and Opposition 000681686 theretoby Bodegas Ontañón, SA (Bodegas). Mark Bhandal reports. Mark Bhandal

CASE COMMENT

Looking at the marks prima facie,many trade markpractitioners and

perhaps many moretrade mark ownersmay take the viewthat the marks are

dissimilar. Given some of the visual andconceptual differences

between the twomarks, it is easy to see how Bodegas

chose twice to appealthis decision.


(C 334/05 P OHIM v Shaker [2007] ECRI 4529, paragraph 35).

The General Court found the wordelements to be the dominantcomponent of both marks, but thatthe remaining components were notnecessarily negligible. It is notablethat the General Court completelydiscounted the words ‘NAPA VALLEY’because of their less prominentposition and smaller size, and wouldbe perceived by the averageEuropean consumer as an indicationof geographical origin and weretherefore descriptive.

In agreement with the Board ofAppeal, the General Court found thatalthough there were differencesbetween the marks, particularly in the shape, size and colour of thegraphical components, there werealso similarities; namely between the word elements ‘ARTESO’ and‘ARTESA’, and the capitalisation andpositioning of those words. Thereforethe Board of Appeal was correct tofind a degree of visual similarity.

The General Court also agreed withthe Board of Appeal that there is astrong degree of aural similaritybetween the word elements ‘ARTESO’and ‘ARTESA’. The General Courtdisagreed with Codorniu’s argumentthat the presence of ‘NAPA VALLEY’ isenough to prevent any aural similaritybecause of the inferior position andsize of those words on the label, thedescriptive quality of those words,and the likelihood that they would be omitted from wine lists anddisregarded when consumers order abottle of wine in a bar or restaurant.

In view of the rarely used Spanishword ‘ARTESA’ (meaning vessel of aspecific shape for kneading bread)having no meaning to the averageEuropean consumer, ‘ARTESO’ beinga made up word, the device in theapplication having no discernablemeaning and the device in the CTMRegistration having no clear anddefinite meaning, the General Courtfound neither a conceptual similaritynor dissimilarity.

Likelihood of confusion

The General Court disagreed withCodorniu’s argument that there wassignificant graphical differences andthat the visual aspect of the goods

played an important role in this sectorof commerce.

In a global assessment of thelikelihood of confusion the visual,phonetic or conceptual aspects of theopposing signs do not always havethe same weight. It is appropriate toexamine the objective conditionsunder which the marks may bepresent on the market (Joined Cases T117/03 to T 119/03 and T 171/03 NewLook v OHIM – Naulover (NLSPORT,NLJEANS, NLACTIVE andNLCollection) [2004] ECR II 3471,paragraph 49). Where the goods aresold in a self-service environment,such as shampoo in a supermarket,then the visual component may playa weightier part in the globalassessment of the likelihood ofconfusion. Conversely, where thegoods are sold orally such as whenordering a bottle of wine in restaurant(which is the present conditions) thenthe aural similarity may have a moreimportant role (T 88/05 Quelle v OHIM– Nars Cosmetics (NARS) 8 February2007).

Outcome

In view of the identical nature of thegoods, a strong aural similarity, adegree of visual similarity and theimportance to be accorded to theaural similarity, the General Courtfound a likelihood of confusion.

Comment

Looking at the marks prima facie,many trade mark practitioners andperhaps many more trade markowners may take the view that themarks are dissimilar. Given some ofthe visual and conceptual differencesbetween the two marks, it is easy tosee how Bodegas chose twice toappeal this decision.

However, this case highlights theimportance of the final part of thecomparison of two trade marks; thatis the objective conditions underwhich the marks may be present onthe market and whether there is alikelihood of confusion in thosemarket conditions.

Mark Bhandal, Simmons & SimmonsLLP, [email protected]


CASE COMM

ENT

CASE COMMENT

Background

In March 2008, DB filed twoCommunity trade mark applicationsfor colour combinations whichcovered ‘transport of persons andgoods by rail’ in class 39. The markswere described as follows:

“The colour light-grey (ral 7035) isover the colour traffic-red (ral 3020),these again over the colour light-grey(ral 7035) arranged; the relationship ofthe colours amounts to from top tobottom light grey; Traffic-red; Light-grey = 7: 1: 2.”

“The colour light-grey (ral 7035)beside the colour traffic-red (ral 3020)arranged. The relationship of thecolours is light grey: Traffic-red = 1: 1.”

OHIM refused the applications on thebasis of Article 7(1)(b). DB appealed,but its appeals were dismissed on thebasis that the marks were devoid ofdistinctive character. DB then filedappeals at the General Court,requesting OHIM’s Board of Appealdecisions be overturned.

DB argued that the supply of servicesdoes not inherently involve the use ofcolour, so the colour performs nofunction in connection with servicesand colour trade marks can thereforebe registered (T-173/00 KWS Saat AGv OHIM). In addition DB argued thatOHIM’s assessments in these actionswere contrary to case-law and the

office had ignored the fact thatdifferent criteria were applicable tothe registration of colour marks forservices than for goods. DB claimedthat the colour combination of lightgrey and traffic red, which theGerman national railway companyuses, for example, on its high speedtrains, had no purely decorative role,but enabled the public to identify thecommercial origin of its rail services.

Findings of the court

The General Court disagreed with DBand held that the same rules appliedto the registrability of trade marks forgoods and services. The GeneralCourt referred to Libertel (Case C104/01 [2003] ECR I-3793) andHeidelberger Bauchemie (Case C-49/02 [2004] ECR 1-6129) stating that,other than in exceptional cases,colours or colour combinations,although they are capable ofproviding certain associations ofideas, do not initially have adistinctive character. Furthermore,the general public must beconsidered by not unfairly restrictingthe availability of colours to otherswho offer the same type of goods or services to those for whichregistration was sought.

The General Court found that the two colours contained in bothapplications lacked distinctivenessindividually, and when combined, did

not provide any perceptibledifferences from the colourscommonly used for railway services.The General Court agreed with OHIMthat the light grey, which could beseen as a dirty white, was commonlyused for technical equipmentnecessary for providing theseservices, for example in connectionwith train carriages, engines andcontrol commands along the rails. Inaddition, red was used for warning onroad signs or to make a consumeraware of advertising and thecombinations of a dirty white (grey)and red were representative of thesignalling of caution on railroad signsand level crossing gates. With this inmind the General Court rejected theappeal and concluded that overall thecombination of colours would only beperceived as functional or decorativeand did not indicate the origin of theservices.

Comment

Unsurprisingly DB were unable toovercome well-established case law, so if applicants wish to obtainregistration of a Community trademark consisting of a colour or acombination of colours, they willgenerally still need to file evidence of acquired distinctiveness.

Triona Desmond, Hammonds LLP,[email protected]

Deutsche Bahn AG v OHIM, Cases T-404/09 and T-405/09, GeneralCourt, 12 November 2010. The General Court has upheld twoof OHIM’s Board of Appeal decisions that Deutsche BahnAG (DB) should be prevented from registering colourcombinations of light grey and “traffic red” as Communitytrade marks in class 39. The General Court confirmed thatthe criteria applied for assessing the distinctive characterof colour trade marks are the same for goods and services,under Article 7 (1)(b) CTMR.Triona Desmond reports.

General Court sees redat Deutsche Bahn’scolour mark application

Triona Desmond


CASE COMMENT

In December 2007, Liz Earle Beauty Co Ltd (Liz Earle) filed a CommunityTrade Mark application forNATURALLY ACTIVE for goods andservices related to cosmetics inclasses 3, 5, 16, 18, 35 and 44. Theapplication was refused in its entiretyon the basis of Articles 7(1)(b) and 7(2)CTMR, that the mark applied for wasdevoid of inherent distinctivecharacter. The applicant had notfurnished sufficient evidence ofacquired distinctiveness to overcomeArticle 7(3) objections.

Decision of the Second Board ofAppeal

Liz Earle’s appeal was unsuccessful,the Board of Appeal findingNATURALLY ACTIVE to be a merepromotional indication. Furthermore,the Board of Appeal held that theapplicant had not demonstrateddistinctiveness acquired through use in all the member states.

Decision of the General Court – Article 7(1)(b)

The General Court agreed with thefinding that NATURALLY and ACTIVEare ordinary words; the mark being agrammatically correct expression withclear meaning for goods or servicesconcerning cosmetics and beautycare.

The Board of Appeal had rightlyconcluded that the term NATURALLYwould be understood as referring to natural ingredients (common incosmetics), and ACTIVE wouldindicate that the cosmetic goods or services had an effect (ie, acts). In the context of the application,NATURALLY ACTIVE gave the

impression that it enabled a result to be achieved, produced by natural ingredients. Consequently,NATURALLY ACTIVE would be viewed as a laudatory term and noindicator of origin.

The Board of Appeal had been rightto refuse registration on Article 7(1)(b)grounds, for classes 3, 5, 35 and 44.The General Court also agreed withthe reasoning against the class 16goods (printed matter, books andpublications…), which would bedesigned to promote cosmeticproducts. NATURALLY ACTIVE couldbe understood as referring to acharacteristic of the productsmentioned or depicted within theprinted matter.

Regarding class 18 however, theGeneral Court found the Board ofAppeal decision lacked properreasoning for why the sign was non-distinctive for these goods; purses,wallets and cases for mirrors inparticular. Distinctive character mustbe assessed by reference to each ofthe goods and services, and thecontested decision had been toogeneral in this respect. The Board ofAppeal should have drawn distinctionbetween homogeneous goods or services directly linked withcosmetics, and the goods in class 18.OHIM’s contention that the markconveyed the message that thegoods are intended for naturallyactive people, or referred to thequality of the cosmetics rather thanthe goods themselves, was heldinsufficient.

Article 7(3)

The General Court agreed that the

relevant consumers are EuropeanEnglish-speakers. By implication, thisincluded all member states wherebasic English words may beunderstood. A sign consisting ofgrammatically correct English wordsmight have meaning not only fornative speakers but also those withsufficient knowledge of English.

Acquired distinctiveness must beevidenced in the substantial part ofthe EU where English is spoken. Bysupplying evidence of use relating tothe UK, Ireland and Germany only, theapplicant failed to demonstrate use inall the countries where basic Englishcould be understood, ie theScandinavian countries, Netherlandsand Finland.

The court could not hold that themark had acquired distinctiveness inthe EU.

The decision of the Second Board ofAppeal was annulled for class 18 andthe remainder of the actiondismissed.

Comment

This decision reminds CTM applicantsthat acquired distinctiveness must be evidenced in a substantial part of the EU. Where a mark consists ofbasic English words, which bothindividually and in combination arelikely to be understood throughoutthe EU, the relevant consumers will be taken to be European English-Speakers, and the applicant mustsubstantiate accordingly.

Sharon Daboul, MW Trade Marks,[email protected]

Naturally Active refusalupheld by General CourtCase T-307/09, Liz Earle Beauty Co Ltd v OHIM. Judgment of the General Court(Eighth Chamber), 9 December 2010. The EU General Court has upheldOHIM’s Board of Appeal decision to refuse the word markNATURALLY ACTIVE for cosmetics and related goods and servicesin classes 3, 5, 16, 35 and 44. The decision was annulled withrespect to goods in class 18. Sharon Daboul reports. Sharon Daboul


CASE COMM

ENT

CASE COMMENT

Background

CNH Global NV applied for thefigurative sign illustrated opposite.The sign was sought in respect oftractors (Nice Class 12) and describedas a ‘combination of the colours red,black and grey as applied to theexterior surfaces of a tractor, namelyred as applied to the bonnet, roof andwheel arches, light and dark grey asapplied to the bonnet in a horizontalstripe and black as applied to thefront bonnet grill, chassis and vertical trim’.

The examiner rejected the applicationbecause CNH failed to establishdistinctive character throughout asubstantial part of the Community.Although CNH had shown‘outstanding’ sales figures in WesternEurope, it had failed to proveextensive use in the (mainlyagricultural) new member states.

The First Board of Appeal confirmedthe decision. The relevant public wasfarmers. The combination of colourslacked inherent distinctiveness and

CNH had failed to show the sign hadacquired distinctive character in thenew and some of the older memberstates.

The grounds of appeal before theGeneral Court

CNH argued that the requirements of Article 7(3) had been met.

First, the relevant public was notfarmers in general but present ownersand prospective purchasers oftractors, excluding, for example, theowners of small farms and thosewithout the means to make such a purchase.

Second, it suffices to adduce evidencefor a substantial part, not the whole,of the Community. In particular, CNHargued that evidence of outstandingsales in the older member statessufficed because the older memberstates represented 90% theCommunity. (The 90% figure is notexplicitly explained in the judgment;it may refer to sales in relation to thesize of the market.) Moreover, the‘relevant’ public (present owners and

prospective purchases of tractors,according to CNH) was very small inthe new member states because thefarms there were too small fortractors.

CNH did not dispute that thecombination of colours lackedinherent distinctive character.

The findings of the court

The court rejected CNH’s appeal.

The court summarised the existingcase law:

1. A mark may acquiredistinctiveness where, throughthe use made of it, ‘at least asignificant proportion of therelevant sector of the publicidentifies the goods or servicesconcerned as originating from aparticular undertaking because of the mark’.

2. It must be shown that the markhas acquired distinctiveness‘through the territory in which itdid not, ab initio, have suchcharacter’.

The problem of acquiringdistinctiveness throughoutever enlarging EU regionCNH Global NV v OHIM (Case T-378/07), The General Court of the European Union(Second Chamber), 29 September 2010, (I Pelikánová, President, K Jürimäe andS Soldevila Fragoso (Rapporteur), Judges). The General Court held thatthe applicant for a figurative mark must establish that, before the application was filed, the mark acquired distinctivenessthroughout the Community in respect of a significant part of the

relevant public. Evidence of acquired distinctiveness is required for every member state regardless of the strength of the evidence for some member states. The relevant public includes all thoseinterested in purchasing or using the goods or services concerned. It was artificial to exclude thosewhose interest was merely ‘potential’ because, for example, they currently lacked the means to buy.Matt Hervey reports.

Matt Hervey


CASE COMMENT

3. The question requires an overallassessment of the evidence, andthe following may be considered:the mark’s market share; theintensity, geographic spread andlength of the use; the investmentin promoting the mark; theproportion of the ‘relevant class’to whom it is distinctive; andstatements from trade andprofessional associations.

4. The distinctiveness must beassessed in relation to the goodsor services for which the mark isregistered and in relation to thepresumed perception of theaverage consumer of the goods orservices who is reasonably wellinformed, observant andcircumspect.

5. The distinctive character musthave been acquired before theapplication was filed.

The court applied the case law to theissues in dispute: the relevant publicand the extent of the acquireddistinctiveness through theCommunity.

First, the court rejected the distinctionbetween ‘prospective purchasers’ and those who are ‘only potentiallyinterested’. For the purposes of trademark law, goods are of potentialinterest only to prospectivepurchasers.

The court held that the relevantpublic for CNH’s mark was all farmers.It was wrong to exclude farmers withonly a ‘potential interest’ such asthose with small farms or thosewithout the means to purchase.According to the evidence, variousmanufacturers had developedcompact tractors for small farms.Farmers with limited means shouldnot be excluded because theircircumstances might change or, for example, financing might beextended by distributors.

Second, the court confirmed thatacquired distinctiveness must beshown throughout the Community.Article 7(3) must be read in the lightof Article 1(2) which requires theCommunity trade mark to have‘unitary’ character. Article 1(2) impliesthat Community trade marks musthave ‘equal effect throughout theCommunity’ and that such marks

must have distinctive characterthroughout the Community. Thecourt warned against confusing thistest with the requirement underArticle 5(2) that a mark have areputation in a ‘substantial part’ of a member state.

Therefore, CNH needed to prove that,when its application was filed, themark had acquired distinctivenessthroughout the Community(excluding those parts where themark was distinctive ab initio).Because the application was filed inJuly 2004, the Community includedthe ten new member states whichjoined, two months earlier, in May 2004.

Finally, the court considered the valueof the evidence provided by CNH.First, CNH did not provide evidencecovering all of the member states.None of CNH’s arguments on theevidential value of its documentscould overcome the incompletenessof the coverage. For example, theaffidavits submitted by CNH camefrom professional associations inBelgium and the UK and the courtheld that the knowledge of theseprofessionals would probably berestricted to their own countries.Second, sales volumes andadvertising materials were secondaryto direct evidence of acquireddistinctiveness (such as affidavits)because they do not reveal theperceptions of the relevant public.Such secondary evidence cannot onits own be proof of acquireddistinctiveness. Third, the court heldthat the market shares submitted byCNH were unreliable because of‘significant inconsistencies’ in theevidence. Finally, photographssubmitted by CNH only evidenceduse of the mark, not the perceptionsof the relevant public.

Comment

The court confirmed the clear and stringent rule for acquireddistinctiveness: this must be shown inevery member state as at the filingdate of the application. The court alsogave practical guidance on necessaryevidence. Evidence must be providedfor all member states, regardless ofthe strength of the evidence for somemember states. Direct evidence, suchas affidavits from professionalassociations, is required to prove theperception of the relevant public.Secondary evidence, such as salesvolumes and advertising materials,can only demonstrate the use madeof a sign and on its own is insufficientto prove acquired distinctiveness.

The court’s approach to defining therelevant public is less clear. The courtdrew conclusions from the ‘essentialfunctions’ of trade marks butprovided little reasoning. Workingback from the court’s conclusions, thejudgment appears to suggest twoprinciples. First, the relevant public ismade up of consumers and end-usersinterested in purchasing (or using) therelevant goods or services.

This excludes those, such asmechanics, historians, sociologistsand political analysts, interested inthe goods or services for otherreasons. Second, it is artificial to limitthe relevant public to those with arealistic current prospect ofpurchasing the goods and services.The judgment supports a generalprinciple that the relevant public alsoincludes those with an interest inpurchasing the goods or services butwho lack the means. On the otherhand, it is not clear whether it is opento an applicant to exclude thosewhose circumstances preclude theuse of the goods and services. CNHfailed to prove that tractors wereunsuitable for the small farms ofcertain member states. But the courtalso said the ‘small size of farms …could not call into question such aconclusion [that farmers are thetypical consumers of tractors]’(emphasis added). It is not clearwhether the court is suggesting ageneral principle that conditions inspecific member states cannot alterthe definition of the relevant public.

Matt Hervey, Wragge & Co LLP,[email protected]


CASE COMM

ENT

CASE COMMENT

Background

In 2004, Vidieffe applied to registerGOTHA as a Community trade mark inrespect of various goods in classes 18and 25. Perry Ellis International GroupHoldings Limited opposed theapplication, arguing that the markwas likely to be confused with itsearlier mark, GOTCHA and device (setout below), registered for goods inthe same classes.

The earlier decisions

The Opposition Division of OHIMrejected the opposition in full; in itsview, the visual, phonetic andconceptual differences between thetwo marks created a different overallimpression, even if the goods wereidentical. Perry Ellis appealed.

The First Board of Appeal allowed part of the appeal, due to a low visual similarity and a high degree of phonetic similarity between themarks, which would be important incountries which did not attributemeaning to the marks andaccordingly, found that there wouldbe a likelihood of confusion betweenthe marks in those countries.

Vidieffe appealed solely on thegrounds of a breach of Article 8(1)(b)of the Regulation.

Decision of the General Court

Given that the goods in the case were “convenience” items, the courtagreed with the Board’s assessmentthat the relevant public was theaverage consumer in the EU, being a reasonably well-informed andcircumspect person. It reiterated theprinciple that likelihood of confusion

could include a risk that the publicmight consider the goods to comefrom the same business or that thebusinesses were economically linkedin some way and reminded theparties of its duty to balance all of thefacts in the case and that a low degreeof resemblance in one area might be offset by strong similarities inother areas.

In respect of similarity between thegoods, the court noted as follows: allof the goods in class 25 and ‘trunks,travel bags, umbrellas, parasols,canes’ in class 18 covered by theapplication were identical to thegoods covered by the earlierregistration; ‘leather or imitationleather goods (not included in otherclasses)’ covered by the applicationmight be considered as identical orsimilar to ‘handbags’ in the earlierregistration, ‘walking sticks’ in theapplication and ‘canes’ in the earliermark were similar, as they fulfilled the same purpose; and ‘leather andimitation leather’ were dissimilar to all of the goods for which the earliermark was registered.

In its consideration of the marks “as awhole”, the General Court took thecustomary three-pronged approachbelow.

Visual similarity

Whilst the court ultimately agreedwith the board that the marks werevisually similar, it criticised the way inwhich the latter had arrived at itsconclusion, and particularly theimportance accorded to the wordelement.

The board had raised the principle,derived from case law, thatconsumers typically refer to productsby name rather than by describingthe logo element with the result that,in composite marks, the wordelement often has a greater impactthan the logo element. However, ithad not sufficiently explained why, inthe present case, the word element inthe earlier mark had a greater impact.It had also been noted in the board’sconclusions (and not challenged bythe court) that the applicant’s markwas purely a word mark while theearlier mark incorporated the imageof a black rose, below which thestylised word ‘gotcha’ appeared;however, the General Court notedthat the rose was highly visible in theearlier mark, and incorporated intothe word element (the “t” of “gotcha”was the stem, the other letters akin to the rosebush). This, in its view,reduced the importance of the word element.

Moreover, the court indicated thatthe particular marketing methodsemployed by the clothing andaccessories industry were relevant tothe consideration of the importanceof the word element. If the particulargoods were normally sold in self-service shops (ie, the consumerchooses the item himself), the visual

General Court ruling puts a thorn in Gotcha’s sideCase T-169/09, Vidieffe Srl v OHIM (25 November 2010). The General Court has annulled the decision of the First Board of Appeal which hadupheld part of a decision of OHIM’s Opposition Division challengingan application for the word mark GOTHA due to a likelihood ofconfusion with an earlier device mark including the word GOTCHA.The case demonstrates that the court will consider facts which are in“common knowledge” (ie, in dictionaries and various media) if theyare relevant to the case in point. Ellen Forrest-Charde reports.Ellen Forrest-Charde

January/February 2011

CASE COMMENT

aspects would have moreimportance, whilst if sold orally, thephonetic similarity would be moreimportant. It considered that, in theclothing sector, images were often at least as important as the wordelement as consumers mightpurchase clothing on the basis ofrecognising the image, rather thanthe word.

In any event, the court concluded thatthere was a low degree of similaritybetween the marks in that theapplicant mark contained five of thesame letters, in the same order, withthe only difference being the middleletter “c”, which, the court, agreeingwith the board, felt that consumerswould probably disregard.

Phonetic similarity

The court further criticised the board’sconclusion that phonetic similaritiesbetween the two marks were strong.In its reasoning for this conclusion,the board had maintained that theinsertion of a “c” in the earlier markdid little to alter the final sound of theword “gotcha”, that the two wordshad two syllables and that the samerhythm, length and intonationapplied to both marks.

The court wholly disagreed; in itsview, the inclusion of the “c” changedthe sound from a lisping “th” sound toa harsh “ch” sound. Moreover, the “t”sound was also different in that itaccompanied the vowel in “gotha”,but was audible with the “got” andthe “tcha” in “gotcha”. These effectschanged the length, rhythm andintonation of each mark.

The court noted also that the boardhad not provided evidence for itsreasoning that there was nodifference in meaning between the marks in languages other than English.

Accordingly, the court held there was only a very low degree phoneticsimilarity between the marks.

Conceptual similarity

The court agreed that “gotcha” was a slang word, understood by Englishspeakers and particularly the young,and that the applicant’s mark wouldbe understood by Germans, being thename of a German town. However,the board had also argued that the

majority of consumers in the EUwould consider that the marks wereworks of fiction. In the present case,Vidieffe brought forward new facts tocounter this, which were admitted asthey were ‘common knowledge’ andpublished in various media. Thesefacts indicated that “gotha” meantaristocracy in certain languages.Therefore, whether German or not, a significant portion of the relevantpublic would understand themeaning behind “gotha” and themarks were sufficientlydistinguishable.

Likelihood of confusion

Turning to its global assessment of the likelihood of confusion, thecourt felt that the visual differencesbetween the marks (being the imageand the “c”), as well as the differencesin pronunciation and the fact that theapplicant mark was a synonym foraristocracy, reduced the likelihood ofconfusion between the marks whenused in relation to identical/similargoods. With the appeal upheld andthe opposition rejected in full, Vidieffe was successful.

Comment

Since the application for and disputeover the “gotha” mark, Perry Ellis hassuccessfully obtained Communitytrade mark registrations for the wordmark “gotcha” (in 2008 and 2009) forgoods in numerous classes — itwould have been interesting to seewhether the outcome would havebeen different if these had beenregistered in 2004. We can alsoconclude from this case that the courtis fully prepared to admit additionalfacts on appeal if these are relevantand in the relevant public’s “commonknowledge” (for example, publishedin dictionaries and the media). The common knowledge facts alsoappeared to be determinative to theoutcome of this case. Accordingly,those seeking to defend weaker casesbefore OHIM’s Boards of Appealand/or the General Court would bewell advised to collect “commonknowledge” evidence to bolster theircases in the future.

Ellen Forrest-Charde, Squire, Sanders& Dempsey (UK) LLP, [email protected]

Since the applicationfor and dispute over

the “gotha” mark,Perry Ellis has

successfully obtainedCommunity trade

mark registrations for the word mark

“gotcha” (in 2008 and2009) for goods in

numerous classes –it would have beeninteresting to see

whether the outcomewould have been

different if these hadbeen registered in2004. We can alsoconclude from this

case that the court isfully prepared to

admit additional factson appeal if these are

relevant and in therelevant public’s

“common knowledge”.

ITMA Review 25


CASE COMM

ENT

CAE COMMENT

1. DECKERS OUTDOORCORPORATION V MR DAVID LEE– NOMINET’S DRS 15/10/10:FEELUGG.CO.UKSNOWUGG.CO.UKUGG2ALL.CO.UKUGGBAILEYBUTTON.CO.UKUGGCLASSIC.CO.UKUGGS4SALE.CO.UKUGGSBOOT.CO.UKUGGSCARDY.CO.UKUGGSHORT.CO.UKEGGSLINE.CO.UKUGGSOUTLET.CO.UKUGGTALL.CO.UK.

Deckers Outdoor Corporation is aninternational footwear manufacturerfounded in 1979. It trades/markets itsbrand under the ‘UGG’ trade mark.

Mr David Lee is an individual residingin China who registered the domainnames in dispute between March andOctober 2009. Mr Lee was using thewebsites attached to the domainnames to sell counterfeit UGG boots. He used Deckers OutdoorCorporation’s copyright protectedmaterial on the websites to confusecustomers and to make it look like the websites and the products soldon them were authorised by orassociated with Deckers OutdoorCorporation.

Deckers Outdoor Corporation filed adomain name complaint. Mr Lee was something of a repeat offender(having on two previous occasionshad to hand over UGG-relateddomain names) and did not respondto this complaint.

In the normal way for cases broughtunder Nominet’s DRS in order to winthe dispute the complainant, DeckersOutdoor Corporation needed toprove that on the balance ofprobabilities it had rights in respect ofa name or mark which is identical orsimilar to the domain names and that

the domain names, in the hands of MrDavid Lee, were abusive registrations.

Decision

In this complaint, the domain namesall incorporated the UGG trade markin its entirety and the additionalwording, such as uggboot.co.uk, did not make the domain names inthemselves distinctive. The Expertwas of the opinion that, when Mr Leeregistered the domain names, hewould have been aware of the UGGbrand and he was therefore piggy-backing on the goodwill andreputation of the UGG trade mark.The Expert found in favour of DeckersOutdoor Corporation and decidedthat the domain name registrationswere abusive registrations.

Comments

This was a straightforward case for atransfer under Nominet’s DRS. Thedecision does, however, serve as atimely reminder to all would-becomplainants that it is for thecomplainant to prove its case in eachcomplaint and that just because therespondent fails to respond to acomplaint, it does not mean that thedomain name(s) will be automaticallytransferred to the complainant.Indeed, although Nominet’sprocedure document allows theExpert to draw whatever inferenceshe likes from the respondent’s failureto respond to a complaint, in this casethe Expert specifically pointed outthat he did not draw on the inferencefrom the respondent’s failure toprovide a response.

2. JUMPTEC LTD T/A CCMMOTORCYCLES V HAINES & COMOTORCYCLES – NOMINET’SDRS 4/10/10: CCMSPARES.CO.UK

Jumptec Limited t/a CCM Motorcycles(CCM Motorcycles) sells CCMmotorcycles and corresponding spare

parts either directly to the public (viaits website at www.sparesccm.com)or via its dealership network,although (and this was disputedbetween the parties) there may havebeen a period during which CCMMotorcycles did not itself sell spareparts. The respondent, Haines & CoMotorcycles was one of CCMMotorcycles’ authorised dealers andused the domain nameccmspares.co.uk to sell both genuineand non-genuine spare parts for CCMmotorcycles.

CCM Motorcycles argued, amongstother points, that anyone reviewingthe website at ccmspares.co.uk wouldexpect that the website be operatedby CCM Motorcycles itself and/or toonly sell genuine parts.

Haines & Co Motorcycles (Haines)argued that it was clear that thewebsite was operated by a dealer andnot CCM Motorcycles. The homepageof the website was headed with‘Haines & Co’; Haines also displayedCCM Motorcycles’ logo and astatement which read that CCM “nolonger deal direct to the public forspare parts” and CCM Motorcyclesargued that all of the above was donein an attempt to confuse and misleadcustomers. Haines, however, arguedthat the previous owners had given itconsent to purchase the domainname and the failure to remove thestatement had been an oversight.Haines had a new website beinglaunched which did not include thestatement and which made clearwhich parts were genuine and whichwere not. It gave supply issues fromCCM Motorcycles as a reason forselling non-genuine parts on thewebsite.

Decision

The Expert found in favour of CCMMotorcycles and decided that thedomain name registration was anabusive registration. The key issue,according to the Expert, was themessage that Haines was conveyingto the public through its use of thedomain names. The statement sayingthat CCM Motorcycles did not supplyspare parts direct to the public was a big factor in the Expert’sdecisionmaking.

The Expert found that, on the balanceof probabilities, Haines must have

Domain names – three Nominet cases comparedJo Bixby reports


CASE COMMENT

known since at least 2005 that CCMMotorcycles had resumed its sale ofspare parts direct to the public. TheExpert also felt that potentialcustomers would 1) fall into a ‘baitand switch’ scenario where they havesought genuine parts but uponviewing the website end up buyingnon-genuine parts and/or 2) bemislead into purchasing a non-genuine part when they think theyare purchasing a genuine part.

Further, the Expert found that the saleof both genuine and non-genuineparts on the same website takesunfair advantage of CCM Motorcycles’rights in the CCM name. It wouldeither divert sales away from CCMMotorcycles or jeopardise CCMMotorcycles’ control of its reputation,or both.

Comments

This case follows a reasonably longline of Nominet DRS cases where aword which simply describes thecomplainant’s goods (in this case‘spares’) is attached to thecomplainant’s name or mark. It washowever less straightforward than anumber of previous cases becausethe respondent in this case was in fact an authorised distributor for thecomplainant and was thereforearguably entitled to use the domain name at least in certaincircumstances.

There were, however, a number ofother factors which tended towardsthe Expert’s finding that this was anabusive registration, including thefact that the respondent was offeringboth genuine and non-genuinegoods and the misleading statementabout the complainant and its supplyof spare parts that appeared on therespondent’s website.

3. TRAVELLERS EXCHANGECORPORATION LIMITED V JOE NEW (T/A FAIRFX) –NOMINET’S DRS 13/10/10:TRAVELEXEXPENSIVE.CO.UK AND TRAVELEXPENSIVE.CO.UK

Travellers Exchange CorporationLimited (TECL) is a well-knowncurrency exchange business and is part of the Travelex group ofcompanies, which has been inoperation for nearly 30 years. It owns

numerous registrations worldwide for TRAVELEX and other related trade marks (such as TRAVELEXWORLDWIDE MONEY, with adistinctive blue, red and white colourcombination) and has websites atwww.travelex.com andwww.travelex.co.uk and owns severalother domain names includingTRAVELEX.

Joe New is an individual associatedwith FairFX plc (FairFX) that operatesa currency exchange business andsince 2006 has been a competitor of TECL via its website atwww.fairfx.co.uk. The domain namestravelexexpensive.co.uk andtravelexpensive.co.uk (as well as the‘.com’ equivalents) were registered in April 2010 by Mr New.

The websites attached to the domain names contained a link towww.fairfx.co.uk which directedpotential customers of TECL to FairFXand featured the word ‘travelexpense’in the same blue, red and whitecolour combination as used by TECLin an attempt to confuse potentialcustomers into thinking that thewebsites were connected to orauthorised by TECL. The website alsoincluded a statement which read “Didyou know that Travelex charges you5.75% to withdraw leftover cashwhen you get back home?” followedby “Save money. Choose FairFX.comas your travel money provider thissummer” and gave the overallimpression that FairFX was cheaperthan TECL across the board.

Even if the potential customerrealised that the websites were notconnected to TECL, initial interestconfusion had occurred and this wasevidence of an abusive registration(they cited Comite Interprofessioneldu Vin de Champagne v StevenTerence Jackson DRS No. 4479).

TECL argued that TRAVELEX togetherwith the words ‘EXPENSIVE’ and‘PENSIVE’ was a direct attempt and/ora play on words used to deceptivelyindicate that TECL was expensive. Itsubmitted that there was a confusingsimilarity between their trade markand the domain names. FairFX had nolegitimate non-commercial interest inthe domain names and had thereforeregistered the domain names tounfairly disrupt TECL’s business, to

tarnish its name and services and todilute the reputation of the trademark which was unfairly detrimentalto TECL’s rights and that the linkdirecting potential customers toFairFX constituted bad faithregistration and use.

FairFX argued that the domain nameswere not identical or similar to TECL’sTRAVELEX trade mark and that its usewas fair for the purpose of criticismand comparative advertising ratherthan to disrupt TECL's business. Thefact that customers chose to go withFairFX after visiting the website wasmerely a legitimate consequence. Thedomain names were most likely to beinterpreted as ‘travel’ and ‘expensive’or ‘travel’ and ‘pensive’ and couldtherefore relate to any travel pricerelated websites and when yousearch the domain names on Googleor Yahoo the website attached to thedomain names appear more than ten pages down.

Decision

The Expert reminded us thatNominet’s DRS policy requires afinding of similarity and not‘confusing similarity’. He dismissedFairFX’s arguments and found thatthe domain names were similar toTECL’s marks and its use was notlegitimate comparative advertisingrather they were used for commercialpurposes as part of a ‘bait and switch’operation. The Expert decided thatthe domain names were an abusiveregistration and that they should betransferred to TECL.

Comments

Nominet’s DRS policy does providerespondents with a potential defenceif they can satisfy the Expert that theyhave acquired/used the domainname(s) for fair use grounds forexample as a criticism or tribute site.However, to make out this defence,the respondent must also satisfy theExpert that it acquired/used thedomain name(s) solely for non-commercial purposes. The defence is not available where the domainname(s) is clearly being used as a baitand switch exercise to lure customersaway from your competitors.

Jo Bixby, Solicitor, Barlow Robbins LLP,[email protected]


CASE COMM

ENT

CASE COMMENT

Background

In January 2006, Aurelio MuñozMolina filed a Community trade markapplication for the word mark “R10”for goods in classes 18, 25 and 35.

In October 2007, DL Sports &Marketing Ltda (DL) filed a notice ofopposition against the goods inclasses 18 and 25. The opposition wasfiled under Article 8(2)(c) and Article8(4) relying on the non-registeredsign “R10”. No evidence was filedbeen in support of the oppositioneven though an extension to theinitial deadline had been obtained.

Over two months after the deadlinehad expired, Nike’s lawyers informedthe Opposition Division that on 20 June 2007, DL had assignednumerous trade marks and industrialproperty rights to it. Nike’s lawyersstated that they had been instructedto pursue the opposition proceedingsand, accordingly, requested that theywere entered as representatives andrequested a four-month suspensionof proceedings. These requests wererejected.

Nike filed an appeal which was foundinadmissible on the grounds that Nike had not produced proof of itsstatus as a party to the oppositionproceedings and, consequently, thatit was not entitled to appeal againstthe Opposition Division’s decision.The Board of Appeal found that, at

that stage of the proceedings, Nike’slawyers had not claimed or provedthat the earlier right relied on insupport of the opposition was amongthe trade marks transferred to Nike.The transfer agreement detailing themarks assigned only confirmed thatNike had acquired certain Communitytrade marks, but not, specifically, theearlier right relied on.

Nike appealed further to the GeneralCourt requesting that the courtoverturn the Board of Appeal’sdecision to dismiss the earlier appeal,provide a ruling on the substance ofthe appeal, and that it rule that theBoard of Appeal and the OppositionDivision had infringed Article 73. Inaddition Nike requested an order thatthe proceedings revert to an earlierstage so as to remedy the fact that it had not had the opportunity tocorrect the deficiencies as assignee of the earlier right and/or, at the very minimum, that the decision be correctly notified to therepresentative of the owner of the earlier right.

The first and second pleas in lawrelating to the Opposition Division’sdecision were rejected at thebeginning of the proceedings, asactions may only be brought beforethe Community courts againstdecisions of the Boards of Appealunder Article 65(1) of Regulation No207/2009). As a result, the OppositionDivision could not be accountable.

Third plea in law - potentialinfringement of the OHIM Guidelines

Nike submitted that the Board ofAppeal was not entitled to find itsappeal inadmissible on the groundthat it was not the owner of the righton which the opposition was based.According to the OHIM Guidelines, ifthe copy of the registration certificateof the trade mark on which anopposition is based states asproprietor a party other than thatwhich filed the opposition, theopposition is accepted as admissibleon the assumption that the earliermark was transferred to the opponentbefore the opposition was filed. Nikeconsidered that the same applied inthis case.


The court found that if theassignment of the trade mark reliedon occurred after the opposition wasfiled but before OHIM’s final decision,OHIM would have ensured that therights of the party which originallyfiled the opposition were protected.However, in this case the assignmentof the earlier right had occurredbefore the opposition was filed. Inaddition, the Board of Appeal wasrequired to ensure that the personwho brought the appeal had locusstandi with regard to the OppositionDivision’s decision (see Case T 301/03Canali Ireland v OHIM – Canal Jean(CANAL JEAN CO NEW YORK) [2005]

Nike claim partial win on appeal butmay still pay the price of initial lapseNike International Limited v OHIM (T-137/09), ECJ, 24 November 2010. The General Court has annulled the FirstBoard of Appeal’s decision that Nike International Limited (Nike) had not been in a position to provethat it was the owner of an earlier right on which it had relied in opposition proceedings. As Nike hadnot produced proof of its status as a party to opposition proceedings the Board of Appeal held that itwas not entitled to appeal against the Opposition Division’s decision. The Board of Appeal failed togive Nike an opportunity to produce additional evidence of the transfer of the earlier right, in orderto show that it had locus standi. Triona Desmond reports.


CASE COMMENT

ECR II 2479, paragraphs 19 and 20).Therefore the court concluded thatthe OHIM guidelines were notinfringed by the Board of Appeal andfurthermore the Board of Appeal waslegally entitled to examine Nike’slocus standi. As a result this plea was dismissed.

The second plea in law, alleginginfringement of Article 73 and ofother related provisions

Nike claimed that the contesteddecision breached its rights ofdefence, since it was based on aninterpretation of the transferagreement on which Nike was unableto submit observations, and thecontested decision also breachedother provisions applicable, includingRule 31(6) of Commission Regulation(EC) No 2868/95, as Nike did not have the opportunity to correctdeficiencies in relation to proof of the transfer of the earlier right.

OHIM claimed that the Board ofAppeal had not infringed Nike’s rightsof defence since Nike was not a partyto the proceedings before theOpposition Division. Nike requestedto be party to proceedings after thedeadline to substantiate its earlierrights had expired and it produced no evidence of the assignment in itsfavour of the earlier right relied on insupport of the opposition. ThereforeOHIM argued that the Board ofAppeal did not infringe Rule 31(6) as proceedings had already beenconcluded, so it was too late to allow deficiencies to be rectified.


Rule 31(6) of Regulation No 2868/95states that with regard to the transferof Community trade marks, where the conditions applicable to theregistration of a transfer, whichinclude the obligation to producedocuments duly establishing thattransfer, are not fulfilled, OHIM isrequired to notify the applicant of the deficiencies and that “if thedeficiencies are not remedied within a period specified by OHIM, it shallreject the application for registrationof the transfer.”

In this action the court confirmed thatthe Board of Appeal had found thatNike had not been in a position toprove that it was the owner of theearlier right and, consequently, that it

had not produced proof of its status as a party to the oppositionproceedings and therefore was notentitled to appeal the OppositionDivision’s decision. Nonetheless thecourt found that the Board of Appealhad failed to give Nike an opportunityto produce additional evidence of thetransfer of the earlier right on which ithad relied in order to show that it hadlocus standi.

The court did not accept OHIM’sarguments that, as Nike had appliedto be substituted for the originalopponent after the closure of theopposition proceedings thisdisallowed it from appealing. As theowner of the trade mark relied on insupport of the opposition, the courtconfirmed that the assignee has locusstandi with regard to the decision bywhich the opposition proceedings areconcluded. Although Nike producedno evidence of the assignment to it ofthe earlier right relied on in support ofthe opposition, the court held thatthe Board of Appeal should haveallowed it to remedy that. Thereforethe court upheld the plea regardingthe contested decision, and foundthat there was no need to considerwhether Nike’s rights of defence were infringed.

The court held that it could not allowNike to file additional arguments andevidence concerning the assignmentto it of the national right relied on insupport of the opposition and give a ruling on the admissibility of theappeal before the Board of Appeal in the light of that new evidence.Instead the court annulled thecontested decision and rejected theclaim for amendment of that decision,therefore not examining Nike’s fourth plea.

Comment

Although Nike was victorious to adegree, it does not change the factthat the deadline to submit evidencein support of the opposition wasmissed. It will be interesting to see ifNike progress any further with thiscase or whether it falls at the nexthurdle. This case shows that, ideally,the opponent should always be theparty who owns the earlier rights atthe time of filing the opposition.

Triona Desmond, Hammonds LLP,[email protected]

Although Nike wasvictorious to a degree,it does not change thefact that the deadline

to submit evidence in support of theopposition was

missed. It will beinteresting to see ifNike progress any

further with this caseor whether it falls atthe next hurdle. This

case shows that,ideally, the opponentshould always be theparty who owns theearlier rights at the

time of filing theopposition.

ITMA Review 29


CASE COMM

ENT

CASE COMMENT

The parties to the dispute were rivalScottish paper manufacturers TullisRussell (the pursuer/claimant) andInveresk (the defender/defendant).Both companies manufactured high-quality board for use in applicationssuch as greetings cards, productpackaging and phone cards. Eachcompany had a number of differentbrands of paper and board.

Tullis purchased Inveresk’s GEMINIbrand and customer informationrelated to that brand in June 2005. Akey part of their decision to purchasethe brand was based on the strengthof the goodwill in the GEMINI brand.

The terms of the purchase agreementwas structured so that for a handoverperiod of five months after theacquisition (known as the ‘servicesperiod’), Inveresk would continue tomanufacture and distribute GEMINIproducts under licence from Tullis. Atthe end of the services period, Tulliswould take over the manufacture anddistribution of the GEMINI products.

Tullis paid Inveresk £5 million for the

acquisition and a further £5 million forInveresk’s services during the servicesperiod. The judge held that on aproper construction of the contractsforming the deal, the full £10 millionwas paid for the GEMINI brand.

Relevant licence terms

Inveresk had various contractualobligations during the services periodaimed at preserving the goodwill inthe GEMINI brand, including:

• to use all reasonable endeavoursto maintain existing levels ofcustomer service and promote asuccessful integration of theGEMINI brand into Tullis; and

• not to sell any GEMINI productswhich failed to comply withquality standards, and to complywith all relative and statutory andregulatory requirements.

Inveresk’s breaches

During the services period, theGEMINI products manufactured byInveresk contained a considerably

higher proportion of defects thanusual (3.5 times the historic average).In addition, Inveresk dealt withcustomer complaints directly withoutincluding Tullis and evidencedemonstrated that they had adoptedan antagonistic attitude towardscustomers who complained aboutGEMINI products during that period.

Tullis sued, seeking compensation for Inveresk’s actions and breachesduring the services period, which theyargued had diminished the value ofthe GEMINI brand.

Lord Drummond Young acceptedTullis’s argument that in the paperindustry a certain number of qualitycomplaints were inevitable sincepaper and board are largely naturalproducts, and as such, essentialcomponents of any such businesswere (1) a good quality controlprocedure; and (2) a good complaintshandling procedure.

The court held that Inveresk was inbreach of its contractual obligationsto Tullis. The value of the GEMINI

Inveresk’s breaches ofquality standard licensingobligations cost it dear...Tullis Russell Papermakers Limited v Inveresk Limited [2010] CSOH 148. Court of Session Judgment 10 November 2010, Lord Drummond Young. TheScottish Court of Session has recently demonstrated again its pro-IP stance by awarding £4.25m damages in a hard-fought disputerelating to brand value diminution. Of particular interest is theapproach taken by the court to the calculation of the damages.Susan Snedden reports.Susan Snedden


CASE COMMENT

brand and its goodwill lay in thelikelihood that customers who hadpurchased or considered purchasingGEMINI products would do so in thefuture. By failing to manufactureproducts of a satisfactory quality andthen dealing with the resultantcomplaints poorly, Inveresk damagedthe brand.

Nature of the loss

Tullis argued that their lossescomprised:

1. loss of sales and a consequent lossof profits on those sales; and

2. loss of future profits due toimportant customers of theGEMINI brand either ceasing topurchase the GEMINI products orpurchasing them in far reducedquantities compared to theirhistoric orders.

Lord Drummond Young consideredthat these heads of loss were anappropriate measure of the damageto the brand’s value. A brand hasvalue through being converted intoadditional sales and thus additionalcash flow. These losses related to thedegree to which revenue generationwas impaired by Inveresk’s actions.

Causation

Tullis successfully established that thelosses it had suffered were caused byInveresk’s actions. They demonstrateda fall in GEMINI orders during orshortly after the services period. Thecourt accepted that in the paperindustry, the brand was moreimportant to the customer (typicallypaper merchants) than the identity ofthe manufacturer, and that if a brandwas perceived as unreliable ordefective, the customer would switchbrand. There was evidence that someGEMINI customers had indeed doneso. Other factors relevant to causationincluded the nature of the paperindustry and the effects of changes ofbrand ownership within that industry.

Quantifying the loss

Both Tullis and Inveresk led detailed expert evidence on loss quantification. The maindisagreement between the expertswas whether quantification should be assessed by (i) considering each

customer individually and whetherInveresk’s actions resulted in a loss ofbusiness from that customer; or (ii) by selecting a portfolio of customers,and establishing the likely drop insales to each portfolio as compared tothe likely sales if there had been nobreach of contract.

Lord Drummond Young preferred theportfolio approach. He consideredthat it was more statistically robustand adequately took effect ofcustomer-specific events which could otherwise affect the calculation.A customer-by-customer approachwould be largely impractical andmore prone to customeridiosyncrasies.

Three representative portfolios ofcustomers were identified. Tullis’sexpert then estimated the differencebetween the actual sales, and thelikely sales to each portfolio had therebeen no breach of the qualitystandards and compliance with thelicence terms, with reference to threealternative accountingmethodologies: (1) estimating likelysales on a customer by customerbasis; (2) estimating likely sales byreference to sales to customers notaffected by the breaching acts; and (3)estimating likely sales by reference tothe market share the GEMINI brandwould have enjoyed had there beenno breach.

The judge considered the results of allof these calculations and concludedthat damages should be awardedtowards the top end of the range ofaverage losses.

Commentary

This judgment is a salutary warningfor licensees that a failure to adhere toterms relating to product quality andcustomer service can result in a largefinancial penalty. It also contains very useful detailed analysis of themethods used to quantify Tullis’slosses, and the court’s approach toquantification and to expert evidenceon such issues. It also demonstratesthat the Scottish court was firmly ofthe view that the value of the brandwas at the heart of the transactionand needed to be robustly protected.

Susan Snedden, Maclay Murray &Spens LLP, [email protected]

This judgment is asalutary warning for

licensees that a failureto adhere to termsrelating to product

quality and customerservice can result in

a large financialpenalty. It also

contains very usefuldetailed analysis ofthe methods used to quantify Tullis’s

losses, and the court’s approach to

quantification and toexpert evidence onsuch issues. It also

demonstrates that theScottish court was

firmly of the view thatthe value of the brand

was at the heart of the transaction and

needed to be robustlyprotected.

ITMA Review 31


CASE COMM

ENT

CASE COMMENT

In October 2003 a CTM applicationwas filed for the word mark FREEcovering goods in class 16, including“publications, magazines,newspapers”. The application wasfiled by Eidikes Ekdoseis AE, acompany which was later taken overby the applicant in the presentappeal, Michalakopoulou KtimatikiTouristiki.

The application was opposed by FreeSAS under Article 8(1)(b) of the CTMR,on the basis of an earlier Frenchregistration for the word mark FREE,covering services in class 38 relatingto messages and messaging, and onthe basis of a French registration forthe mark (right), covering services in classes 35 and 38, including:“advertising, newspaper subscriptionservices for third parties; electronicmail services and electronicdistribution of informationparticularly for internet-typeworldwide communicationnetworks”:

The opposition also included Article8(4) grounds, on the basis of thecompany name FREE; the trade nameFREE, and the domain name ‘free.fr’.The Opposition Division rejected theopposition in its entirety. Theintervener appealed and the FirstBoard of Appeal upheld theopposition insofar as it was based on Article 8(1)(b).

Appeal to the General Court

Michalakopoulou Ktimatiki TouristikiAE appealed to the General Court,arguing that the decision should notbe upheld as the Board of Appeal didnot state reasons in support of allaspects of its decision. They alsocalled into question the Board ofAppeal’s findings on similarity ofgoods and services, as well as those

on similarity of marks and likelihood of confusion.

The court firstly considered whetherthe appeal was admissible as at thedate on which the appeal was lodgedby the applicant the transfer of thecontested application to that partyhad not yet been registered withOHIM. The court ruled that the appealwas admissible. The takeover ofEidikes Ekdoseis occurred and wasregistered with the appropriateregistry prior to the issuance of theBoard of Appeal decision. Therelevant national law made clear thatfrom the date of registration of that

transaction the applicant took theplace ipso jure of Eidikes Ekdoseis.The court was of the view that theright to bring an action could beexercised by the transferee of a business.

In terms of the Board of Appeal’sfindings under Article 8(1)(b), theapplicant argued that they did notexplain why the services covered bythe earlier word mark were similar to the goods covered by the markapplied for but just commented onthe similarity between those goodsand the services covered by theearlier figurative mark. The courtstated that, whilst Article 75 of theCTMR places a duty on OHIM to statethe reasons on which decisions arebased, the question of whether thatduty is fulfilled is to be assessed byreference to the wording of thedecision in question, its context and the whole body of legal rules

governing the matter in question.Article 42(5) of the CTMR makes clear that in making a decision in anopposition, OHIM simply has todetermine whether there is a groundfor refusal of registration whichwarrants the rejection of the trademark application. It is not required tomake a decision in relation to each of the grounds put forward in theopposition. Therefore, the fact thatthe Board of Appeal did not commenton the similarity of goods and servicesin relation to the earlier word markdid not mean that the decisionhanded down was vitiated by a failureto state reasons or inadequatereasoning. The fact that thecomparison was made in relation tothe figurative mark was sufficient.

In relation to the similarity of thegoods and services in question, theapplicant argued that the purpose of the publication of magazines,newspapers and books covered bythe mark applied for cannot beregarded as being similar to that ofthe services covered by the earlierfigurative mark, such as thedistribution of information bytelecommunication networks and theinternet. They were of the view thatthe effect of considering such goodsand services to be similar would be tomonopolise the distribution of a widerange of information to the detrimentof the public.

The applicant pointed out thatinformation services fall within anumber of classes of the Niceclassification, according to the subjectmatter of the information in question,so that, in order for the various typesof information distributed to beregarded as similar, such similaritymust be based on common uses orusers and on similar purposes orchannels of distribution. They also

Case T-365/09, General Court, Michalakopoulou KtimatikiTouristiki AE v OHIM, Intervener – Free SAS, 27 October2010. The General Court has dismissed an appealby the opponent to a CTM application, in a caseinvolving highly similar marks but goods andservices with a low degree of similarity. Thedecision of the court reinforces the fact thatappeals to the General Court are just that –appeals, not a chance for the case to be decidedafresh. Patricia Kelly reports.

Freedom is priceless,but General Courtrules out Free mark


CASE COMMENT

argued that the services offered bythe opponent are not in any wayconnected with the distribution ofinformation to be found in amagazine or newspaper but solelywith information relating toinformation links andtelecommunications. They stated thatthe information covered by the earlierfigurative mark, which is distributedas a service, may take a great varietyof forms, and that such services aretherefore not similar to the goodscovered by the mark applied for.

The court pointed out that thecomparison of the goods/servicesmust relate to those covered by thespecifications for the marks inquestion, and not to those for whichthe earlier mark has been used (unless there have been proof of use proceedings, which was not thecase here).

The court held that the Board ofAppeal, who considered the relevantpublic for these purposes to beaverage French-speaking consumers,did not err in considering that theprinted publications covered by thecontested CTM application have the same purpose as the onlineinformation distribution servicecovered by the earlier figurative mark.The Board of Appeal was also foundto be correct in considering that the differences in the nature anddistribution channels of the goodsand services at issue are not sufficientto cancel out their similarity, since, forpersons at whom the publicationsand services in question are directed,what matters is to obtain the desiredinformation. The medium by whichthat information is provided is ofsecondary importance. It wastherefore held that the Board ofAppeal was correct to conclude thatthere was some similarity betweenthe goods/services in question.

The court then considered theapplicant’s arguments in relation to the comparison of the signs inquestion. The applicant argued thatthe dominant element of the earlierfigurative mark was not the word“free”. They felt that the mark createsthe impression of an indivisiblewhole, composed of the word “free”,the slogan ‘la liberté n’a pas de prix’(‘freedom has no price’) and a leapingsilhouette and it is not possible to

regard the latter two elements asnegligible. The applicant argued thatthe relevant public would pay moreattention to the slogan written in itsnative tongue and that the word“free” is a common word which needsthe slogan to give the mark adistinctive character.

The applicant felt that the presence of the slogan ruled out any auralsimilarity with the mark applied forand that the marks are conceptuallydifferent as the earlier mark evokesfreedom of movement and economicfreedom and the mark applied forevokes individual freedom. Theapplicant was therefore of the viewthat the Board of Appeal erred infinding that there was a likelihood of confusion.

The court pointed out that as theBoard of Appeal did not carry out an assessment of similarity ofgoods/services in relation to theearlier word mark, that mark couldnot be taken into account for thepurpose of assessing whether there is a likelihood of confusion. Inconsidering the earlier figurativemark, the court was of the view thatthe word ‘free’ forms the dominantelement within the overall impressioncreated by the mark. They pointedout that the word has a much moredistinctive character than the slogancontained within the mark; the word‘free’ dominates the visual impressioncreated by the mark, because it isconsiderably bigger than the othercomponents and is much easier toremember and pronounce than theslogan. They felt that it was the visual domination whichconferred on the leaping silhouette asense of the context of the mark. Theypointed out that the word ‘free’ iswidely used not only among theEnglish-speaking public but alsoamong all other persons with a basicknowledge of the English languagewho form part of the relevant public,and that the silhouette in questiondoes not have any particularly strikingcharacteristics which might detractattention from the element ‘free’.

The court therefore ruled that theBoard of Appeal was correct toconclude that the conflicting marksare visually and aurally similar, sincethe average consumer will read,pronounce and remember principally

the word ‘free’ in the earlier mark. The court also held that the Board ofAppeal was correct in finding that themarks at issue are conceptually thesame, by taking account of membersof the relevant public whounderstand the meaning of the word‘free’, whilst those who are unawareof the meaning will not perceive anymessage. The applicant’s argumentson the conceptual differences in themarks were dismissed on the basisthat consumers relying on animperfect recollection of marks wereunlikely to be capable of making such a subtle distinction as to theconceptual content of the two signsat issue. It was therefore held that theBoard of Appeal did not err in findingthat the signs at issue are very similar.

In terms of the global assessment ofthe likelihood of confusion, the courtpointed out that the Board of Appealrightly observed that the low degreeof similarity between the goods andservices concerned is offset by thehigh degree of similarity between thesigns at issue, so that the relevantpublic might be led to believe thatthe applicant’s publications and the information distribution services offered online and viatelecommunication networks by the intervener have the samecommercial origin.

The appeal was therefore dismissed in its entirety.

Conclusion

Whilst not stating anything new, thiscase is a useful reminder of the natureof appeals. It also provides a usefulreminder of the fact that a very highdegree of similarity in marks canindeed offset a lesser degree ofsimilarity in goods/services, and thatit is necessary to fully consider thegoods/services covered by marks inopposition proceedings, rather thanthe goods/services actually in use.Finally, the comments on thesimilarity of the goods and services inquestion provide a reminder that it isimportant to consider such matters inthe abstract, rather than simply on thebasis of their classification, particularlywhen dealing with concepts such asinformation.

Patricia Kelly, IPULSE,[email protected]


CASE COMM

ENT

CASE COMMENT

On 23 March 2007, Giorgio ArmaniSpA (GA) filed an InternationalRegistration designating the UK forthe wordmark AX in relation to“clothing, shoes, headgear” in Class25. This application was subject to alimited opposition by SunrichClothing Limited (Sunrich) undersection 5(2)(b) of the Trade Marks Act1994 on the grounds that it wassimilar/identical to its earlier trademark registration for AXE forsimilar/identical goods in Class 25,namely “clothing for men and boys”.

The hearing officer found in both her initial decision and hersupplementary decision (provided at GA’s request) that the marks andgoods were sufficiently similar to giverise to a likelihood of confusion on thepart of the consumer and held thatthe opposition succeeded in respectof all goods in GA’s Class 25specification.

GA subsequently appealed to thecourt on the basis that:

(A) the marks were not sufficientlysimilar to cause a likelihood ofconfusion on the part of theconsumer; and

(B) in the event the marks weresimilar, the hearing officer hadunfairly and incorrectly treated the opposition as if it were anopposition to all of GA’s Class 25goods rather than just “clothingfor men and boys”; accordingly,the remaining goods in Class 25should proceed to registration eg,

“clothing for women and girls,shoes and headgear”.

Decision of the High Court

The court upheld the hearing officer’sdecision regarding the similarity ofthe marks and goods and agreed thatthere existed a likelihood of confusionon the part of the consumer.

However, the court held that thehearing officer had erred in failingsufficiently to acknowledge that theopposition was limited to a sub-set ofClass 25 goods and by incorrectlyfinding that the opposition had beensuccessful in respect of all GA’s Class25 goods.

In reaching this conclusion, the courtrejected Sunrich’s argument that, byfailing to submit an unconditionalapplication to amend its specificationduring proceedings, and, in view ofthe hearing officer being unableappropriately to amend thespecification, the entirety of GA’sClass 25 specification should fail. Inrejecting this argument, the courtnoted that such an argument wasinherently flawed due to thefundamental difficulties of anapplicant providing such anamendment during proceedingswhilst still preserving its position thatthe opposition should not succeed.

On finding itself without directlyapplicable precedent on this matter,the court applied the mechanismssuggested for dealing with problemsof amendments to specifications in

Citybond Trade Mark [2007] RPC 13.The court held that the hearing officershould have realised that, if theopposition succeeded, GA’s Class 25 specification would requireamendment which the hearing officercould not make. Further, the hearingofficer should have held a casemanagement conference to establisha mechanism by which to address thepossibility of amendment of thespecification. The court remitted thematter back to the hearing officer toaddress amendment of thespecification accordingly.

Comment

This case provides some furtherauthority as to how to deal withamendment of the list ofgoods/services following successfullimited oppositions. Notably, thesuggested solutions in Citybondinclude the provision of an interimdecision on the opposition, therebyallowing an unsuccessful applicant tosubmit suitable amendments to itsspecification for the Registrar’sconsideration, prior to a final decisionbeing made. In affirming andapplying the solutions from Citybondin this decision, the court has taken a step towards establishing a newprocess for dealing with limitedoppositions and it will be interestingto see whether such an approach isadopted by the Registry in duecourse.

Lydia Torne, Simmons & Simmons LLP,[email protected]

AX: establishing a newprocess for dealing withlimited oppositionsAppeal to the High Court, 16 November 2010, International TradeMark Registration 926043 designating the UK for AX in Classes 09,12, 14, 16, 18, 24, 25, 26, 28 and 35 in the name of Giorgio ArmaniSpA and Opposition 71683 thereto by Sunrich Clothing Limited.Lydia Torne reports.


CASE COMMENT

On 30 April 2009, the hearing officerrefused both applications in theirentirety on the basis of sections 3(1)(b)and 3(1)(c) of the Trade Marks Act.

The hearing officer also held that the marks did not satisfy therequirements of a series mark asprovided for under section 41(2) of theAct. The Appointed Person agreedwith this decision. However, as theapplications pre-dated October 2009enabling the series application to bedivided, this procedural issue could beremedied at a later date should theremaining marks in the series be foundto be registrable.

Upon issuance of the hearing officer’sdecision, FHL filed an appeal againstthe decision for both applications andalso filed two fresh UK applications forthe same series of marks covering thesame goods and services but this timepartly relying upon distinctivenessacquired through use.

Before discussing the appeal decision,it is important first to review theoutcome of the examination of thelater filed applications. As before, theword-only marks were refused.

However, in contrast to the previousdecision, the Registry this timedecided that the word and devicemarks were inherently registrable forsome of the goods and servicescovered by the applications.

Specifically, the application for FRESHDIRECT & handpicking device wasfound to be inherently registrable forall the goods and services covered byClasses 29 and 39. The application wasalso allowed for a limited specification,namely “fresh fruits and vegetables”, inClass 31 on the basis of acquireddistinctiveness through use.

The application for FRESH DIRECTLOCAL & gate device was found to beinherently registrable for some of thegoods in Class 29 only, namely thosenot considered to be fresh products.However, the acquired distinctivenessclaim for this mark was rejected.

Hearing before Appointed Person

At the appeal hearing, a number ofconcessions were made by theRegistrar following the inconsistencyin the decisions reached. As a result, itwas agreed that the later decisionswere to be preferred and that the

Fresh Directwin appealO-367-10, Appeal to the AppointedPerson, Iain Purvis QC, 6 October 2010,UK Trade Mark Application Nos2482441 FRESH DIRECT & device (seriesof 3) and 2482442 FRESH DIRECT LOCAL& device (series of 3) in Classes 29, 31and 39 in the name of Fresh HoldingsLimited. On 20 March 2008, FreshHoldings Limited (FHL) applied

to register the word marks FRESH DIRECT (application no 2482441)and FRESH DIRECT LOCAL (application no 2482442) as part of aseries. The device elements of the marks show a fruit being pickedby hand (FRESH DIRECT) and a gate surrounded by hedgerows(FRESH DIRECT LOCAL). Both applications covered the same goods and services in Classes 29, 31 and 39, namely foodstuffs,agricultural products and the transport, packaging and storage of food products. Lisa Richardson reports.

The examination of amark consisting of acombination of non-

distinctive words andan allusory device

element is clearly verysubjective, which can

result in differentdecisions as to

inherent registrabilitybeing reached by

different examiners.

Lisa Richardson

ITMA Review 35


CASE COMM

ENT

CASE COMMENT

Big changesin GreeceA year ago we published adiscussion of myths andrealities of Greek trade markpractice which tipped thescale in favour of adversitiesrather than efficiencies.Happily, a generally toughand demanding year later,progress has been achieved.Not to say that all is rosy, yetthere are steps being made in the right direction.

New legislation expediting theprocess before the administrativecourts in Greece (also affectingtrade mark actions, followingoppositions or cancellationpetitions) has been passed in mid-December 2010, with a variety ofprogressive measures that havebeen much needed. Compared tothose in the UK and US, the previousGreek administrative courts systemwas practically programmed fordelays, dead-end procedures andfrustrating postponement of results.Not so anymore. The primary aim ofthe legislator is expeditingprocedure, by fine-tuning each andevery possible step that may affectthe total process.

This should be made possible byimplementing, among others, thefollowing provisions: direct recourseto the highest administrative courtlevel (Council of State) as well asallowing the pre-judgment opinionrequests from lower courts to theCouncil of State whenever newissues requiring clarification or eventhe setting of new precedent arise;and a two-month time-frame forcourt hearings being scheduled, insignificant or broadly applicableissues. These, in conjunction withnew ADR routes being put in placecurrently, should help facilitate thejudicial resolution of trade markdisputes in Greek jurisdiction. Morewill follow in the next ITMA Review.Stay tuned.

Eleni Lappa, Drakopoulos Law Firm,[email protected]

mark FRESH DIRECT LOCAL & gatedevice was to be found to beinherently registrable for all servicescovered in Class 39 to bring it in linewith the application for FRESH DIRECT& handpicking device.

In light of this, only four issuesremained, namely the registrability ofthe word marks FRESH DIRECT andFRESH DIRECT LOCAL, the registrabilityof FRESH DIRECT & handpicking devicefor the remaining goods in Class 31and the registrability of FRESH DIRECTLOCAL & gate device in Class 31 andfor the remaining goods in Class 29.

Decision

In respect of the word-only marks, theAppointed Person considered firstlythe inherent registrability of FRESHDIRECT and FRESH DIRECT LOCAL inrelation to all of the goods andservices applied for and held them not to be registrable.

On consideration of the claim foracquired distinctiveness, whilst the evidence was found to showsignificant trade in the relevant area atthe date of application, such trade wasexclusively with business customers. A sponsorship deal with a showjumper and the use of the mark onlorries driving around the countrywere not sufficient to show that thegeneral public (seen as the relevantclass of person for the goods andservices at issue), or a significantproportion thereof, would associatethe marks with a particular under-taking and so this claim was rejected.

Following the hearing at the Registry,FHL, as a last-ditch attempt to secureregistration on the basis of acquireddistinctiveness, proposed the additionof a limitation to the specification,namely “all of the aforementionedgoods to be sold in bulk on awholesale basis”. Whilst not yetcommented on by the Registry, theAppointed Person took theopportunity to raise his concerns as to how the goods at issue could beproperly defined by reference to tradechannels or quantity of goods sold.This issue was not taken any further asthe Appointed Person felt that such arequest would need to be raised withthe Registry at a later date either as an amendment to the currentapplications or as part of freshapplications.

With both word marks refused, FHLwere left with the remaining word anddevice marks currently only acceptedfor some of the goods and servicesapplied for, as outlined above.

The Appointed Person found itdifficult to justify the rationale behindthe Registry’s acceptance of the device marks on the basis of inherentdistinctiveness in relation to goods inClass 29 but not in relation to goods inClass 31. He believed the reasoningbehind the decision came down towhether or not the goods listed ineach class were fresh and locallyproduced, and that the Registry hadfound the device marks simplyreinforced this idea.

As Class 29 includes meat, fish, eggsand milk, all of which can be fresh andlocally produced, no such distinctioncan be drawn on this basis.

On consideration of the marksthemselves, the Appointed Personfound the device elements to beallusory at most and thereforeinherently registrable, a decisionconsistent with the Registry’sacceptance of the marks for goods in Class 29.

As a result, the Appointed Personoverturned the hearing officer’sdecision to allow acceptance of theword and device marks as a series of two for all goods and servicesapplied for.

Comments/summary

The examination of a mark consistingof a combination of non-distinctivewords and an allusory device elementis clearly very subjective, which canresult in different decisions as toinherent registrability being reachedby different examiners.

One further point to note in thissituation is that, should applicantswish to include a fall-back position by way of an amendment to thespecification, this should be enteredearly on in the proceedings whether at an ex parte hearing or in writtensubmissions. The Registry needs to begiven the opportunity to review andcomment upon such a request. Anappeal to the Appointed Person is not the proper forum.

Lisa Richardson, Boult Wade Tennant,[email protected]


INTERNATIONAL

Phillip Morris, however, claims that itis not so much the word MARLBOROor the glorified brave cowboys andheroes of the early advertising yearsthat influence cigarette buyers inSingapore to buy their cigarettes,instead, it is their unique packagingthat consists of a roof device and thecolour combination of its packagingthat draws customers to purchasetheir cigarettes.

On this basis they filed an oppositionto the registration of the trade markCOUNTRY for tobacco, cigarettes,matches and smoker’s articles by PTPerusahaan Dagang Dan IndustriTresno (Perusahaan Dagang) beforethe Intellectual Property Office ofSingapore (IPOS) on 14 November2006.

Phillip Morris’s trade marks have beenused in Singapore since January 1981.On the other hand, PerusahaanDagang has yet to use its trademarksin Singapore.

The crux of Phillip Morris’s argumentin the opposition lies in how the “roofdevice” in their mark is a prominentand distinctive element and thatPerusahaan Dagang’s device isvisually similar to their “roof device”. It was contended that although thereare other elements such

as MARLBORO, MARLBORO LIGHTSand MARLBORO MEDIUM and a coatand arms device in each of PhilipMorris’s registered marks, they are notsufficient to distinguish the two marksdue to the prominence of the “roofdevice”.

In addition, Phillip Morris alsosubmitted that there are similarcolour combinations between themarks in dispute, such as;

1. Both marks have a red portion(consisting of a five-sided roofdesign) and a white portion.

2. The word ‘Marlboro MEDIUM’ inthe opposition mark and the wordCountry in the application markare in black.

3. The opponent’s coat of arms andthe applicant’s shield deviceadopt the colours red and gold.

4. The words in the coat of arms inthe opponent’s mark and thewords INTERNATIONAL and 20 AKING SIZE FILTER are representedin white.

IPOS, in considering the argumentsabove, and in comparing the twomarks, held that Phillip Morris’sopposition, which hinges at large onthe fundamental similarity of the roofdevice and colour, was weak on all grounds.

This is because firstly, the roof deviceon Perusahaan Dagang’s mark is onthe side as opposed to the top andunlike Philip Morris’s device, thedevice in Perusahaan Dagang’s markis asymmetrical. The roof device markalso cannot be used to determineoverall similarity between the twomarks as at most, the roof device onlyconsist of 50% of the marksrespectively. Other components oneach mark have to be considered. Inthis case, the word elements on bothmarks take up the other 50% of themarks. It is clear that the two wordsare different. In the application mark,the main word is COUNTRY whereasPhilip Morris’s main words areMARLBORO, MARLBORO LIGHTS, andMARLBORO MEDIUM respectively.

The arguments by Philip Morris thatthere is a possibility that the shopassistant will place the packets ofPerusahaan Dagang’s cigarettessideways, that the word COUNTRY is a normal, non-distinctive word andthat the application by PerusahaanDagang was made in bad faith werealso dismissed by IPOS.

As both marks are composite marks,the words “talk” and this is especiallywhen (as is the case with both marks) the roof device is not a wellunderstood object. Therefore it washeld that the dominant feature onPhilip Morris’s marks is the wordMARLBORO and not the roof device.Comparing both marks in theirentirety, it is clear that they arevisually dissimilar. Therefore, there is no likelihood of confusion.

The above argument is alsostrengthened by the method in which customers purchase cigarettesin Singapore. Due to statutoryrestrictions, a customer cannot pick apack of cigarettes off the shelf butmust approach a counter staff forassistance. A customer will have to tell the shop assistance the brand ofcigarettes they intend to purchase.This shows that it is the wordMARLBORO which is pertinent.

This case is noteworthy because itgives a clear judgment ondistinguishing composite marks andthe importance of words in suchmarks. Although it is clear that PhilipMorris has goodwill in relation to theMARLBORO mark in the relevantsector of the Singaporean public,namely the smoking community,there is no misrepresentation onPerusahaan Dagang’s part.

On a whole, Phillip Morris’s popularityas a cigarette brand due to its long-term presence and wide exposure inSingapore backfired for the brand to acertain extent, as customers wouldrecognise Philip Morris’s goods asthose which encompass the wordMARLBORO, and were less cognisantof the roof device, colour, or symbolson the packaging.

Geetha K, KASS International Sdn Bhd,[email protected]

Marlboro raise the roof in SingaporeThanks to the ingenious advertising and marketing strategies of Phillip Morris Products SA (PhillipMorris), the MARLBORO brand is not only well known in most countries (to smokers and non-smokers alike) around the world, it also ranked at number 8 out of 100 on Forbes’ list of valuablebrands this year. Geetha K reports.

NOTICEBOARD


NOTICEBOARD

Notice on thepublication ofthe JEB 2010examinationresultsResults for the 2010examinations will bepublished on Monday 4th April 2011.

Individual letters informingcandidates of their marks in thevarious papers will be posted onFriday 1st April 2011 so that they canbe expected to arrive on Saturday2nd April 2011. The letters will besent to the address given on theexam application form. Any changeof postal &/or email address must be notified to me by Friday 25thMarch 2011.

In addition to posted letters we willsend the results letter to candidatesby email on Saturday 2nd April 2011.If you would like to receive yourresults by email please email me [email protected] the email address your resultsshould be sent to and I can add youto the email notification list. Failureto advise me will result in yourresults letter only being sent by post.

Please note that examination resultswill not and cannot be given outover the telephone.

The JEB, CIPA and ITMA will post the pass lists on their websites onMonday 4th April 2011 at 11am sothat candidates and others will beable to see the lists that morning.

Please note that neither CIPA orITMA will be able to answerquestions about the results.

Sharon MitchellSecretary

D Young & Co LLP have launched itslitigation practice on 1 January thisyear. The DisputeResolution & LitigationGroup is headed up bypartners Ian Starr andTamsin Holman, withnew recruits CamilloGatta and Anna Reidjoining at associate level.It is the first firm of patentand trade mark attorneysto establish a legaldisciplinary practice in theUK. Pitmans has strengthened itsteam with the promotion of Sally

Britton to the position of director.Based at Pitmans’ City of London

office, Sally works withinthe Pitmans SK division ofthe firm, advising clientswithin the sports andentertainment arenas.She specialises in brandprotection andexploitation, includingtrademark and designprosecution, portfoliomanagement,infringement matters,

ticketing issues and commercialcontracts.

The title of the case comment on page 16 of the December 2010 issue has beenperceived as inappropriate, and weapologise to the author and to anyone who was offended by it.

NEWS OF MEMBERS

Left to right: Ian Starr, Anna Reid, Tamsin Holman, Cam Gatta

Happy New Year! We hope that 2011is progressing well for all studentmembers.

If you are waiting for results from theNovember 2010 exams, we wish youthe very best of luck! The results aredue to be published on Monday, 4 April 2011.

If you would like to receive yourmarks by email, please [email protected] information is available onthe Joint Examination Board website.Please remember that this comingNovember is the last opportunity tosit all three advanced papers for thefirst time.

The Queen Mary Law Course andIntensive NLS Course are nowunderway. If you are currentlyattending either of these courses, we would like to receive feedbackfrom you.

Don't forget to keep an eye on theStudents' Area of the ITMA websitefor updates from the E&T Committee.If you have any queries in relation tothe new qualification system, pleaseconsult the website as a first port of call.

The FAQ document and flow-chartare a great place to start, if you are notsure on your options. If your query isstill unanswered, please direct it [email protected] and we willendeavour to respond as soon as we can.

Finally, we are delighted to welcomefour new student representatives tothe E&T Committee: Elizabeth Dunn,Christopher Hawkes, Amie Jordanand Claire Keating.

Regards, Sharon Daboul, MW TradeMarks; Jayne McClelland,AstraZeneca; Rebecca Tilbury,Harrison Goddard Foote

STUDENT COLUMN

Sally Britton


NOTICEBOARD

Our partner Keith died suddenly andunexpectedly, on 15 December 2010.He had been recovering successfullyfrom a major operation to counteracta long and debilitating illness. Thecourage with which he fought thisillness; full on, not accepting anyrestriction to his activities, whilst fully aware of all of its implications,brought nothing but admiration fromthose who knew. It was a measure ofthe man that few guessed how ill hewas.

He was the son of our retired partner,Bob Farwell.

Keith was dynamic and intellectuallybrilliant. He gained a BA in Englishfrom the University of York and an MAin Archaeology at University CollegeLondon. This was followed by a careerchange, training and qualifying as atrade mark attorney with WilliamJones in Norwich. It was there that he met his future wife, RebeccaChambers. Together theysubsequently set up their own“boutique” trade mark consultancy,Farwell-Chambers; Keith working as aconsultant to, among others, a multi-national pharmaceutical group, senior

London law firms, and Phillips &Leigh. Keith became a partner ofPhillips & Leigh in 1999.

These are just the “bare bones” ofKeith’s professional career. Anyonewho met him, either personally ofprofessionally, could not but beimpressed by his enthusiasm,voracious appetite for work,dominating competence and single-minded devotion to whicheverproject he was concerned with at the time.

These attributes not only benefitedour practice, especially our clients, but the IP profession as a whole.

He edited, or contributed to:

The Trade Marks Handbook (Sweet &Maxwell, 1991 onwards)

The Community Trade Marks TrainingManual (CIPA, 2000; new edition 2005)

Training Manual on InternationalRegistrations (Madrid System)(CIPA,2006)

The UK Trade Marks Training Manual(CIPA, 2001; new edition 2007)

Foundation Level Trade Mark Law for

Patent Attorneys (CIPA, 2009)

The Community Trade MarksHandbook (Sweet & Maxwell, 2001onwards)

Foundation Level Training Manual: ThePrinciples of Trade Mark Law for PatentsCandidates (CIPA, 2010)

He lectured in trade marks to studentsstudying at Queen Mary College,University of London. He served forfour years as an Examiner to the JEB.He had been a member of the CIPATrade Marks Committee (serving asVice-Chairman) and was a member ofthe CIPA Textbooks & PublicationsCommittee with special responsibilityfor the training manual series.

For one so relatively young, hiscontribution to pre- and post-qualification training for patent andtrade mark attorneys was immenseand unparalleled.

It was for The Community TradeMarks Training Manual that hereceived the rare honour of beingelected, at the young age of 38, aFellow of the Institute of Trade MarkAttorneys; a measure of his standingin the trade marks profession.

Keith leavened his professional loafwith a continuing interest inarchaeology and a taste for singlemalt whiskies. He was an enthusiasticdog-walker and O-gauge modelrailway builder. In the family tradition,he amassed a huge collection ofbooks. Keith and Rebecca alsoenjoyed travelling to exotic placesworldwide and, latterly, touringEurope in their enormous camper van.

At Phillips & Leigh we will miss andnever forget him, he leaves a big holein our lives. He is survived by his wifeRebecca; they had no children.

A small funeral service was held inNorwich on 6th January 2011.

In memory of Keith we are gathering at Dr. Johnson’s Housewww.drjohnsonshouse.org at 6o’clock on Thursday 24th February2011. All are welcome, but we would be grateful for an email [email protected] should youplan to come.

The Partners and Staff of Phillips &Leigh

Obituary: Keith RobertFarwell 1965 – 2010

Keith Robert Farwell

FORTHCOMING EVENTS 2011Date Event Location CPD Hours8 February ITMA Charity Quiz Night Penderal’s Oak, London 011 February International Registration of Designs Workshop Bird & Bird, London 3.5

ITMA, ECTA, WIPO & IPO11 February Trade Mark Administrators’ Seminar Marks & Clerk, London, London 015 February ITMA London Evening Meeting Royal College of Surgeons 1

Clark Lackert, Dickstein Shapiro LLP, U.S.A.‘Global Brand Protection Against Online Infringements’

15 March ITMA London Evening Meeting Royal College of Surgeons 116-18 March ITMA Spring Conference Claridge’s, London 916 March Dinner with ITMA at Claridge’s Claridge’s, London 017 March Dinner with ITMA at The Natural History Museum Natural History Museum, London 021 - 22 March PTMG 82nd Conference The Grand Hotel, Brighton19 April ITMA London Evening Meeting & Reception Royal College of Surgeons 114-18 May INTA 133nd Annual Meeting San Francisco, California, USA9-11 June ECTA 30th Annual Conference Stockholm, Sweden21 June ITMA London Evening Meeting Royal College of Surgeons 112 July ITMA Summer Reception HQS Wellington, London 019 July ITMA London Evening Meeting & Reception Royal College of Surgeons, London 113 September ITMA London Evening Meeting - Kris Williamson, Royal College of Surgeons 1

Advocacua Pietro Ariboni, Brazil - ‘National and Madrid filings, plus South American developments’

13-16 September Marques Conference Baveno, Lake Maggiorie, Italy12-15 October PTMG 83rd Conference Prague, Czech Republic25 October ITMA London Evening Meeting & Reception Royal College of Surgeons, London 115 November Joint ITMA & LES Annual Seminar Royal College of Surgeons, London tbc29 November ITMA London Evening Meeting & Reception TBC 1More details can be found at www.itma.org.uk. Bold type indicates an ITMA organised event. ITMA London Evening Meetings & Receptions kindly sponsored by Corsearch

40 ITMA Review

AND FINALLY...

AND FINALLY...


WHO’S WHO IN ITMA Officers:President: Maggie Ramage, [email protected] Vice President: Catherine Wolfe, [email protected] Vice President: Chris McLeod, [email protected] Past President: Gillian Deas, [email protected] Executive: Keven Bader, [email protected]: Kate O'Rourke, kate.o'[email protected]

Committee Chairs:General Purpose & Finance: Gillian Deas, [email protected]: Katie Cameron, [email protected]: Mark Hiddleston, [email protected] Review: Tania Clark, [email protected] & Practice: Imogen Wiseman, [email protected] Relations & Communications: Simon Bentley, [email protected] & Training: Sanjay Kapur, [email protected]: Simon Bentley, [email protected] Mark Administrators Course: Richard Goddard, [email protected] Accreditation Board: Maggie Ramage, [email protected]

Administration:Jane Attreed, [email protected] Boosey, [email protected] Rogers, [email protected]

Accounts:Joy Dublin, [email protected] Flood, [email protected]

Editor, ITMA Review: Kelly Robson,[email protected]

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