RCDs are colour-blind (and quite right too)

A recent case in The Netherlands shows an important difference between trade mark practice and registered designs. Controversially, OHIM treats black-and-white trade marks as just that (whereas most practitioners used to believe that a registration in black-and-white covered all colours), but a registered Community design presented in black-and-white protects the owner against use of the design in any colour: Case T-68/10 Sphere Time v OHIM, para 82 (General Court), followed on 2 September by the District Court in The Hague in Wibit-Sports GmbH v Aquaparx (thanks to the Class 99 blog for the information). That seems hardly surprising, and is only really noteworthy because of the stupid rule about trade marks. It's another matter if colour is important for the novelty or individual character of the design (in other words, it's a feature of the design that the owner wants to protect), and if the design is filed in colour it is right to assume that the colour is important and to limit protection accordingly, in line with 'traditional' trade mark practice. But if the registered design protects the shape of the product (which traditionally is what design protection has done, of course) the colour used by the infringer should make no difference. Actually, an infringer trying to use this as a defence is grasping at straws, rather like a design owner who claims that unregistered Community design right has been infringed ....
This remains, however, a topical issue with the Trunki appeal on its way to the Supreme Court. There, the Court of Appeal took the view that the striking colour combination which was shown in the RCD was significant, and not present in the accused products. If only they had filed in B&W. But the Court of Justice's decision in the KitKat case (a trade marks case, though a shape trade mark and therefore right on the boundary of the designs field) tells us that features of a product may only be protected by trade mark registration if they are used by the consumer, to the exclusion of other indicia, as an indication of origin, which strikes me as being on all fours with the Trunki design case. However, I am perhaps digressing a little, and the KitKat case is exciting enough to merit separate consideration.

General Court: Likelihood of confusion between SKYPE and SKY

The General Court (one of the constituent parts of the Court of Justice of the European Union, as I have pointed out many times, another part being confusingly called the Court of Justice) has handed down its judgment on whether there is a likelihood of confusion between SKYPE and SKY, and has decided - to no-one's surprise, I imagine - that there is. The press release is here. I see that the Court refers to itself as "the General Court of the European Union", which is not the title given to it by the Treaty.
It is an interesting contest between two weak but fairly well-known (not necessarily in the Article 6bis sense) trade marks. Allowing registration of a word mark like SKY, irrespective of any distinctiveness acquired through use, contributes greatly to the twin problems of depletion and foreclosure - the processes which make it increasingly difficult to coin a new trade mark. Although the word SKY is present in the word SKYPE (and it is not actually word trade marks anyway - there is some figurative content, which didn't help the applicant) surely that added bit at the end makes a difference, and is unlikely to be lost in aural use, short of the most extreme glottal stop ever. So I am not convinced that there is a likelihood of confusion, even before considering how well-known the trade marks are: and the better-known, the less likely members of the public are to become confused. At least, that's how I think it should be.
Since posting this, I have done an interview with the BBC World Service (using, of course, Skype). Preparing for that caused me to dig a little more deeply into the case, which made me realise that the applications were filed in 2005 and the oppositions in 2006, at which time Skype (first release August 2003) would have been much less well-known than it is now. Sky, on the other hand, was already well-known by then (having been founded in 1990). That suggests to me that there would still be little chance of confusion arising from any similarity between the names, given that people knew Sky and would notice that Skype was different; but also that the market for VOIP back then was much much smaller than now (indeed, I suppose that Skype created the market) and people who might be interested in obtaining services from Skype would be switched-on types who would understand that it was nothing to do with Mr Murdoch's empire. So it doesn't alter my view of the likelihood, or lack thereof, of confusion: a well-known trade mark should receive less protection because it is less vulnerable to confusion.
Because there were three Skype trade marks, there are three reported appeals, though the judgments might involve a lot of copying and pasting. Here are links to the BAILII reports: Skype v OHMI - Sky and Sky IP International (SKYPE) (Judgment) [2015] EUECJ T-184/13 (05 May 2015), Skype v OHMI - Sky and Sky IP International (SKYPE) (Judgment) [2015] EUECJ T-183/13 (05 May 2015), and Skype v OHMI - Sky and Sky IP International (skype) (Judgment) [2015] EUECJ T-423/12 (05 May 2015).

Trade mark application for red ends of shoelaces rejected

By Catherine Maminska

The General Court of the European Union Court of Justice (decision of 11 July 2013, in Case T-208/12, Think Schuhwerk GmbH v OHIM, only available in German and French) found that the application for a trademark consisting of red ends of shoelaces for “footwear, in particular shoelaces” was not eligible for registration as it lacked distinctiveness.

According to the Court the coloured ends of shoelaces are indistinguishable from the appearance of the goods themselves so that the relevant average consumers will not make assumptions as to their commercial origin

Since red-coloured shoelaces do not significantly depart from customs of the industry and shoe designers can chose from a wide variety of design and in particular colour options, the red colour at the end of shoelaces is not capable to indicate the trade origin of the goods claimed.

This decision is in line with the arguments of the Court in a similar case of orange/red colour at the tiptoe end of socks (decision of 15 June 2010 in Case T-547/08 – X Technology Swiss GmbH v OHIM).

Lets see what red part of shoes comes next. We already had red soles, red ends of shoelaces and red/orange tiptoes.

General Court: Dialdi v Aldi - likelihood of confusion

In Case T-505/11 (25 June) Dialcos SpA applied to register the "slightly figurative" Community trade mark DIALDI for goods in Classes 29 and 30, including predominantly gluten free foods. Aldi GmbH & Co. KG opposed on the basis of their earlier CTM ALDI registered (in the OHIM tradition) for all the goods in the headings for those same classes.

The Opposition Division found that, notwithstanding that the goods were identical, there were sufficient differences between the mark and sign that there was no likelihood of confusion. The earlier mark could perhaps be considered highly distinctive but that makes no difference to the analysis (though one might argue that if the opponent's mark were highly distinctive, or otherwise easily recognised by consumers, the junior sign would not have to be as different as would be the case if there were less consumer recognition of the senior one - consumers would be less likely to be confused if they knew and recognised the senior mark). The Board of Appeal upheld that decision.

The General Court considered that the Board of Appeal had been correct to consider that the goods were intended for all consumers, notwithstanding that some of them were intended for a particular group. The goods are not hazardous, like pharmaceuticals, such that a higher level of attention might be expected from consumers. But the General Court still upheld the appeal.

It took the view that (contrary to the Board's view) you cannot assume that the relevant public will see the DIAL part of the applicant's sign as a separate element from the two final letters, which if they did would make the signs quite different: the public will not necessarily appreciate the "split" nature of the sign. The visual and aural differences did not counterbalance or outweigh the similarities. The Court therefore sent the case back to the Board of Appeal.

The right sort of confusion

On 31 July last year, Hildyard J found the defendants, Okotoks Ltd, liable for passing off and infringement of a Community trade mark (not available on Bailii, as far as I can see): the contest was FINE & COUNTRY v FINE for estate agents. The defendants are better known under the name "haart" which we must all have seen on estate agents' boards, and (if you are anything like me) wondered about. In Okotoks Ltd & Anor v Fine & Country Ltd & Ors [2013] EWCA Civ 672 (14 June 2013) the Court of Appeal upheld that judgment.

The defendants argued that, even if (as the judge had found) there was a likelihood of confusion between the CTM and their sign, it was a type of confusion that public policy tolerates - "good confusion", if you will, as I certainly do, because that looks like quite a nice turn of phrase - because it refers to the quality of what the business concerned has to offer. It is laudatory: it tells you that they are selling high-quality properties (though if they are new and have one bedroom they will be smaller than elsewhere in Europe). For several reasons the judge did not think that the confusion was tolerable, and the Court of Appeal agreed. It also agreed on the passing off point.


The leading judgment (that of Lewison LJ) runs to 125 paragraphs, 40 pages, and I haven't found anything in it that I need particularly to draw to your attention - all good stuff, but nothing earth-shattering, even just the slightest bit of shattering. However, I should point you to the IPKat, who picks up on the point that the trial judge was said by the Court of Appeal to have got some things wrong, and who asks some questions about when the Court of Appeal may substitute its understanding of the facts for those of the judge (especially in the light of the recent Lumos judgment, in which Lloyd LJ also sat). See here where there is also a link to the Kat's report of the first instance judgment.

Interflora gets general EU-wide injunction

Interflora Inc & Anor v Marks and Spencer Plc & Anor [2013] EWHC 1484 (Ch) (12 June 2013)  is the latest in a saga with many chapters. Last month Arnold J held that Marks & Spencer had infringed Interflora's trade marks, through keyword advertising: this month he  has granted a general injunction - as opposed to one that deals only with specific infringing acts - across the whole EU.

Such a general injunction might be thought to be disproportionate, and therefore contrary to the enforcement directive. It could have a chilling effect (something that in the depths of an English summer might almost go unnoticed) because the threat of content proceedings would be hanging over the party injuncted: but (on the basis of Hotel Cipriani Srl v Fred 250 Ltd [2013] EWHC 70 (Ch), [2013] EMTR 18 the fact that declaratory relief is available mitigates this undesirable possibility. In other words, you don't need to worry so much about going to gaol for contempt if all it takes is an application to the court to be guided on what you can and can't do. Then all you have to worry about is your lawyers' bills, although they will be smaller than they would be if a fresh application were needed or if you were hauled up for contempt.

The defendant had not managed to convince the court that the its infringement would not or was not liable to affect the functions of Interflora's CTM in other Member States, so the court applied the general rule that an injunction in a CTM case should apply throughout the Union (applying Case C-235/09, DHL v Chronopost [2011] ECR I-2801).

Distinctiveness in slogans

Case T‑515/11, Delphi Technologies, Inc. v OHIM, involved an application to register the distinctly unpromising sign INNOVATION FOR THE REAL WORLD as a CTM for certain motor vehicle components (the application actually calls them "motor vehicle products", but the only products of a motor vehicle are the thrill of speed, which these days is hard to capture, the pleasure or at least utility of getting from A to B, and a mixture of unpleasant gases, none of which are what was intended by the applicant) and, curiously, specialised medical apparatus. Perhaps the two groups use related technology. The Court took the view that a mere advertising slogan,  if it were likely to be perceived by the relevant public as nothing more than a promotional formula, had to be regarded as devoid of distinctive character. There was no word-play, nothing imaginative, surprising or unexpected which might confer on the slogan some distinctive character. It was (my assessment, not the Court's) lazy trade mark creation. There are far too many mundane slogans registered as trade marks already, and it is good to see the Court (and the Board of Appeal, whose decision the Court upheld) setting the bar reasonably high.

General Court thinks NICORONO is too similar to NICORETTE (and who can argue?)

Case T-580/11, McNeil AB v OHIM, involved an application to register the word mark NICORONO as a CTM, for aids to help smokers stop. In opposition proceedings, the Board of Appeal had decided that there was no likelihood of confusion although the goods were identical. The Court found (agreeing on this with the BoA) that the relevant public was professionals and consumers, and that the consumers involved, given that their health was at stake (should they have taken judicial notice of the fact that so many are in denial about this, I wonder?) would be particularly attentive.

The Court also agreed with the BoA that the "NICO" part of the mark, although not descriptive, as "highly evocative" of a characteristic of the goods and therefore only weakly distinctive. (To some of us, the name is highly evocative of the late Christa Päffgen, or even of Mr Ladenis and his excellent restaurants, but that's another matter, although I suppose it does go to the suitability of the word for trade mark purposes.) Where the Court differed from the Board was in its assessment of the power of the first four letters of the trade mark to attract the attention of the relevant public. Its length and leading position meant that it would do so as much as the "RONO" or "RETTE" part (and perhaps it is also worth noting that it's actually the first five letters that the marks have in common, although it's certainly the NICO element that carries the meaning). The similarities outweighed the differences, and visually, phonetically and conceptually the marks were similar. Which demonstrates the dangers of incorporating descriptive elements into your trade mark - taking the lazy route to creating a trade mark, perhaps, or trying to convey information about what the goods do not just who makes them.

If the United Kingdom were to leave the EU ...

An interesting posting here on Mills & Reeve's technology law blog, even if the use of the subjunctive seems a bit hit and miss (and this is a very subjunctive topic): if the United Kingdom were to leave the European Union, which with a referendum promised no-one can say is impossible, what would happen to Community trade marks and Community registered designs? I sometimes think that nothing bad enough could happen to those two sub-species of intellectual property, which have done so much to clutter the place up with dubious rights, to the detriment of IP's reputation as a whole, such that even I might favour leaving the EU if we could be rid of them. But that's just me, perhaps. However, I think it's at least arguable that CTMs and CRDs, like the EU itself, have turned out to be big disappointments - bloated, elitist, and of little relevance to the small person or business. They all promised so much, and have delivered so little.

M&R - in fact, their Richard Plaistowe, although he didn't post the piece himself, curiously: perhaps in Biglaw you have someone to post stuff to your blog for you? - look at the precedent of Irish independence, which shows just how novel the dilemma is. Holders of UK trade marks and registered designs at that time were given 6 months in which to re-register in the State and retain existing priorities. Something similar might happen if we leave the EU.

Something similar might also happen if Scotland were to leave the UK - but that's not going to happen, is it? Ah, if only someone had listened to those who called for a federal Britain in a federal Europe back in the seventies.

Use of TM in one Member State might be enough - but not necessarily

The long-awaited decision in the Onel case,  Case C-149/11, was handed down today by the Court of Justice (note: not "the Court of Justice of the European Union", which is the collective name for the two-tier judicial organ of the Union, and even more not the "European Court of Justice") and contains no great surprises. The judges have slightly diluted the Advocate General's opinion, that's all: and the decision acknowledges that use of a Community trade mark (note: not a Union trade mark - does anyone know why?) in a single Member State will count as "use in the European Union", as required by the Community trade mark regulation.

Of course, it is not the job of the Court of Justice to decide anything remotely factual, so it is limited to telling us what might be, whereas we might like to know what actually is. Is the ruling a sound communitaire one? It certainly looks like it at first sight. But I think it fails any useful test of such soundness. Bear with me ...

If the only way to protect a trade mark were to register it in the Community system, it would be absurd to say that it had to be used in (say) more than a single Member State (even dafter to insist it were used in all of them, of course). But that isn't the way things work. You can get protection in a single Member State if that's what you want, or need - or in two, or three, and so on. Of course, at about that point a Community trade mark becomes better value, but the cost is not the important thing here. To my mind, a Community trade mark, to be worthy of the name, must be used (or the proprietor must intend to use it) throughout the European Union: and if the proprietor intends to use only in a few countries, it should get national trade marks in those countries. It's not like a trade mark used only in Scotland, for example: there, the owner can't get protection in the territory of interest to it without also getting the rest of the UK (pending a referendum on Scottish independence, of course).

Any other approach simply causes dreadful, anticompetitive and chilling cluttering, and in a rational system should be prevented at all costs. It also seems to me to offend the basic principles of federalism - which may be irrelevant, given that the EU is not a federation - but this approach does not take us any closer to being one, and anyway principles of federalism can still inform aspects of the development of the Union.

Comments?

A trade mark case I couldn't resist ...

Runners Point's application

A Community trade mark case decided by the General Court a few weeks ago that definitely speaks my language - but a very unedifying decision it is. The Court decided, in Case T-64/11, that the sign above (the subject of the application, filed by Runners Point Warenhandels GmbH), was not similar to the CTMs below (registered by Run2Day Franchise BV) or to the RUN2DAY word CTM. The Board of Appeal had cancelled the Opposition Division's decision that there was a likelihood of confusion decision and rejected the opposition.

Visually and aurally the Board thought that the signs were relatively similar, but conceptually there were big differences. In particular, the Board thought that the “2” element was conceptually different, even if the average consumer might not understand exactly how. That seems to me to be predicated on an ignorance of mathematics consistent with a Daily Mail view of the education system: but then again, the idea of raising a physical activity to the power of two creates a likelihood of a different type of confusion. My old maths teacher, who would rate a wrong answer as "good enough for an engineer", or, if wildly wrong, a vet, might have been tempted to say "good enough for a trade mark lawyer".

Run 2 Day's figurative CTM

The Board also thought that the earlier marks have a weak distinctive character because they both use the descriptive word “run”. When you consider that as well as the differences, the Board thought there was enough to exclude confusion. In addition, the figurative trademarks present even more differences.

Run 2 Day's figurative Benelux trade mark

The General Court annulled the decision of the Office, drawing a distinction between the exponent and the cardinal number, and assuming a knowledge of mathematics on the part of the relevant public much greater than that assumed by the Board. Thank goodness for that.

As for the value of the word RUN, the Board had contradicted itself by holding in paragraph 17 that the element RUN had to be considered identical, even though it was written in different case, but in the next paragraph suggesting that the case difference was important in the visual comparison. Finally, the Court said that Runners Point's sign will be read ‘RUN TOO’ or ‘RUN SQUARED’ by part of the relevant public while the earlier marks would be read ‘RUN TODAY’ (the Court called it a "jeu de mots", but it's a pretty exiguous one). It thought that the word ‘run’ could not be held insignificant in the comparison of the signs. As indeed it cannot, but if that's the best that can be said about a trade mark it's not a very good one, is it? The reason it's not insignificant is that all the signs involved are (IMHO) so pathetic.

The Court was also persuaded by the differences between the applicant's sign and the opponent's figurative marks, which had a lot more characters in them.

As far as the opponent's word trade mark was concerned the Court said:

... s’agissant de l’examen de la similitude visuelle, phonétique et conceptuelle entre la marque demandée et la marque verbale antérieure, la chambre de recours a commis des erreurs qui affectent le degré de similitude constaté des signes en conflit et vicient, par conséquent, son appréciation globale du risque de confusion opérée dans la décision attaquée.

The Board  made errors concerning the degree of conceptual similarity between the earlier word mark and the application, and these errors vitiated (nice word, ought to use it more) its global appreciation of the risk of confusion. So the Court upheld the opposition. It's a little difficult to disentangle the issues of similarity and confusion, especially with the Court's judgment being in French, but I think that quote helps.

But there are so many questions unanswered here. Why should any running shop be able to register a trade mark comprising, in large part, the word RUN? Should these marks not all have been rejected as too descriptive, or even as devoid of distinctive character? There would be a great deal less clutter on the register if, to use an unrelated athletic metaphor, the bar were set higher. Better to exercise your mind a little and come up with something original and memorable, or even inspired, like Sweatshop (which is, incidentally, registered on the basis of acquired distinctiveness to overcome an objection that it is descriptive of goods produced in a sweatshop. The mind boggles. As if anyone would build a brand on that proposition!) Why are Dutch and German companies addressing their customers in English, anyway? And finally, what happened to the apostrophe in the German company's name? If you're going to give yourself an English name, then at least get it grammatically correct!

Class headings do not cover all

Advocate General Bot has given his opinion in the IP Translator case, Case 307/10, Chartered Institute of Patent Attorneys indicating that he doesn't think that an application that repeats the class heading from the Nice Classification does cover all the goods or services in the class. If that sounds arcane, consider the application in suit - which was designed, and filed, with a view to getting an authoritative statement of the law in this area: CIPA filed for the UK trade mark IP TRANSLATOR in Class 41, the class for translation services, for "education; providing of training; entertainment; sporting and cultural activities" - the class heading for that Class, to which translation services are proper, but which does not include them.

The AG says that the goods or services have to be stated with sufficient precision and clarity as to enable the competent authorities and "economic operators" (are they related to stakeholders, perhaps?) accurately to determine the scope of the trade mark. Exactly. The appropriate level of generality will vary from case to case - that sounds like a bit of a cop-out, but at the level at which the Court of Justice operates statements like that are surely unavoidable. The class headings might, says the AG, suffice for this purpose, so they could be used - but subject to that comment about precision and clarity (and it seems to be lacking in class 41).

Then he comes to the nub of the problem, Communication 4/03 of the President of OHIM, which established the "class headings cover all" principle. This does not satisfy the requirement for precision and clarity, whether for Community trade marks or national ones - and this leads to cluttering, because there are too many over-broad registrations. Moreover, there is the interesting paradox (all tied up with the difficult question of how this mess can be fixed) that specifications will have to be amended by being limited (maybe the addition of the time-honoured formula, "all being translation services", if that's still permissible, to the IP TRANSLATOR specification) but the limitation will have the effect of adding goods or services that weren't included in the first place. Only the European Union could create chaos like this.

The fact that Nice is periodically amended, and new goods and services slotted into the existing classes, which often retain unchanged class headings, is another demonstration of the absurdity of allowing registrations on this basis. Precision and clarity are absolutely essential, not the lazy, thoughtless approach encouraged by OHIM's ruling, and moreover we need something that links registrations more closely to the actual use made of the trade mark, otherwise the registers - national and regional - will become more cluttered, the range of available trade marks will become more depleted, and businesses will find markets foreclosed to them just because they cannot use the trade marks they want (or need) to be able to use. Let's hope the Court of Justice recognises these problems and imposes some commonsense on the trade mark system.

Trade marks and public policy

The General Court has also decided that, as a trade mark, PAKI is contrary to public policy or to accepted principles of morality: T-526/09, PAKI Logistics GmbH v OHIM. The court remarked that the word was a racist expression and therefore unacceptable as a trade mark. This notwithstanding that the applicant is a reputable German logistics company and the mark is used in the form PAKi. (I can see the connection between the PAK element and logistics - and they have been around since 1974.) Pakistan, incidentally, is called Pakistan in German.

For those unfamiliar with English racist slang, the expression was commonly used, is used less often now, with a considerable measure of ignorance as well as malice to denote just about anyone from the Indian sub-continent. I don't believe it was, or is, used exclusively with malice, and it can sometimes be intended neutrally - we have an "Indo-Pak" restaurant not far away from home, although there is a big difference between using the term for a whole people and using it for an individual. Often people use expressions like this with the best of intentions, unaware of the hurt they cause.

The court also noted that protection against discrimination is a fundamental value of the EU, provided for in Articles 2 and 3, paragraph 3 of EU Treaty and Articles 9 and 10 of the Treaty on the Functioning of the European Union, and Art.21 of the Charter of Fundamental Rights of the European Union.

Well, the measure of what should be acceptable is easy enough: if people don't like it, we should all respect their wishes, not use the word, and not allow it to be registered as a trade mark. The court was presented with evidence that the word is used in the Pakistani community, and is not necessarily offensive to them: but even if the law is protecting the sensibilities of the chattering classes, perhaps that's reason enough to refuse registration. But it does seem an unfortunate side-effect of the Community trade mark system that a German company should find its name unprotectable at EU level.

Because it involves the same provision of the regulation, and because I have only recently caught up with it, and because of my visit to Russia last weekend, I'll also add a reference to Case R 1509/2008-2 Couture Tech, a decision of the OHIM Second Board of Appeal in an appeal against a decision to refuse registration of the old Soviet Union symbol of hammer, sickle, globe, red star, and "workers of all countries, unite!" in 15 languages (none of them English, rather like a General Court judgment). The board noted that the Soviet Union - which the board seems to treat as interchangeable with the Soviet Communist Party, perhaps rightly - was

... a totalitarian state that massively violated human rights, under the leadership of the Soviet Communist party, committed crimes against humanity, including summary executions, torture, sending innocent people to labour camps, involuntary settlement and stripping of citizen’s rights. It is commonly  accepted that the ethnicity-targeted population transfers in the Soviet Union led to million deaths due to inflicted hardships. For example, 10 percent of the entire adult Baltic population was deported or sent to labour camps, as can bee seen from Wikipedia printouts.

Allow me in passing to exclaim - "Wikipedia???". But the historical facts are beyond dispute, even if there might be arguments about the details, and the Board's conclusion that the trade mark the subject of the application would cause offence in countries which suffered under the Soviet regime, some of which ban such signs as some countries do Nazi insignia.

Good call: but what baffles me is why anyone would think this a suitable sign to use as a trade mark in the first place?

Informal licences and oral use of trade marks

Prudent trade mark owners don't let others use their trade marks without taking precautions, but in Jean Christian Perfumes Ltd & Anor v Thakrar (t/a Brand Distributor or Brand Distributors Ltd) [2011] EWHC 1383 (Ch) the High Court (Mr John Baldwin QC, sitting as a deputy judge of the Chancery Division) held that even where the licence had been granted orally the licensee could bring an action for infringement if he had the consent of the proprietor.

The case concerned a Community trade mark: there is no reason to suggest that a UK trade mark would be treated any differently. This ruling could be very useful where the proprietor of the trade mark is overseas and might therefore be required to give security for costs before being able to sue for infringement. A licensee using the trade mark here, even without a formal written licence, could bring the action instead.

There was also a point in the case about whether non-graphic use of a trade mark could be infringement. The deputy judge observed that as the Community trade mark regulation provides for the registration of such exotic, non-graphic, marks as sounds, it would be absurd if oral use were not capable of being an infringement. I have always understood that the 1994 Act widened the scope of what amounts to infringement to include oral use, although I believe it's not expressly stated on the face of the statute - it's just that the Act doesn't say infringing uses have to be graphic. And quite right too: mention of a trade mark in a TV or radio programme should, if the relevant conditions are met, amount to an infringement.

The logical extension of these principles is that oral use of a trade mark will be enough to overcome a claim of non-use. Just hard to prove.

April Community trade mark cases in the General Court

Not all of them - but this selection might be interesting and useful ... some not reported anywhere else I can find.

Relative grounds

In Case T-84/08, Intesa Sanpaolo SpA v OHIM, COMIT and COMET 7 April 2011 likelihood of confusion between the word mark COMIT, applied for in relation to services in classes 35, 36, 41 and 42 and the earlier figurative mark "Comet" registered in Germany for services in the same classes. The marks were similar phonetically and visually and the figurative differences too slight and do not alter impression of similarity between the almost identical words which are the dominant elements. Conceptually, there are differences. ‘Comet’ would be understood as ‘komet’ by the German public so there was a little distinctiveness, but the common prefix ‘com’, denoting 'commerce' or 'commercial', is a widely-used abbreviation in the world of business. The Court concluded that as the marks shared the same prefix the conceptual differences were insufficient to cancel out the visual and phonetic similarities.

In Case T-466/08, Lancôme v OHIM, ACNO FOCUS and FOCUS word marks 14 April 2011 the General Court upheld a Board of Appeal decision that there was a likelihood of confusion for the German public between the word mark ACNO FOCUS applied for in relation to goods in class 3 (‘Cosmetic and make-up preparations’) and the earlier German word mark FOCUS registered for identical goods. ‘Acno’ is very close to the German word ‘akne’, which alluded to the characteristics of the goods, and the German consumer of such goods would perceive ACNO FOCUS to be a name under which the opponent was marketing a new line of products for treating acne

In Case T-358/09, Sociedad Agricola Requingua v OHIM, TORO DE PIEDRA word mark and "Toro" figurative mark, 13 April 2011 the General Court found there was a likelihood of confusion between the word mark TORO DE PIEDRA of the Chilean applicant for alcoholic beverages including wine, and an earlier figurative mark which included the word "Toro" (the place in Spain rather than the animal) registered for wines.

In Case T-228/09, United States Polo Association v OHIM, U.S. POLO ASSN and CTM POLO-POLO, 13 April 2011 the General Court found that there was likelihood of confusion between the word mark U.S. POLO ASSN and the earlier CTM, POLO-POLO, for textiles in class 24. The Board of Appeal’s finding that the goods were identical was not contested. The contention that the Board had found similarity between the marks only because it assumed that POLO was the dominant element of the applicant’s mark was, the court said, wrong – the Board had said that given imperfect recollection the public would be likely to be confused by the common element. The Board had found a “medium degree” of phonetic similarity, and the Court upheld this finding. The applicant argued that “u.s.” and “assn” were not descriptive of the goods – but that court pointed out that that didn’t mean they were automatically distinctive. There was a medium degree of conceptual similarity too. The low degree of attention paid by consumers when buying goods of this type led to the conclusion that there was a likelihood of confusion.

In Case T-209/09, Alder Capital Ltd v OHIM, 13 April 2011 the General Court upheld a decision of the OHIM Board of Appeal which declared the word mark ALDER CAPITAL invalid on the grounds of conflict with the earlier marks HALDER and HALDER INVESTMENTS. The Board had correctly found a high degree of similarity between the marks and a medium degree of similarity between the services. Even though the attention paid by the public to the marks would be high, there was a likelihood of confusion.

Case T-433/09, TTNB v OHMI (14 April 2011) - word mark Tila March v national figurative mark CARMEN MARCH for goods in classes 3 (bleaching preparations etc), 18 (leather goods) and 25 (clothing, footwear and headgear). The court concluded that given the identity of the products concerned, the small amount of attention of the relevant public and similarities between the conflicting signs especially the distinctive element common, the differences were not sufficient to eliminate any risk of confusion between the marks.

Absolute grounds

In Case T-262/09, Safariland LLC v OHIM, FIRST DEFENSE AEROSOL PEPPER PROJECTOR, 13 April 2011 the General Court dismissed an appeal against the refusal of a Community trade mark opposition based on the ground that the applicant was agent for the true rights-owner and did not have consent or justification to register the CTM. The facts are somewhat unusual in that the case had already been to the Court of First Instance a few years ago, there had been a change in the ownership of the opponent’s business and the key question was whether a consent had survived the business transfer.

In Case T-523/09, Smart Technologies v OHIM, 13 April 2011 the General Court dismissed an appeal against a finding that the word mark WIR MACHEN DAS BESONDERE EINFACH (“we make the special simple”) applied for in respect of goods in class 9 should be refused registration because it was devoid of distinctive character . It was merely an advertising slogan.

In Cases T-310/09 and T-383/09, Fuller & Thaler Asset Management Inc v OHIM, 12 April 2011 the General Court dismissed appeals against OHIM Board of Appeal findings that the word marks BEHAVIOURAL INDEXING and BEHAVIOURAL INDEX were an “immediate, direct and easily understandable indication of the nature and intended purpose of the goods and services” in Classes 9 and 36. The “juxtaposition is neither novel nor imaginative in the sphere of software and finance”, and it is well-known that “such a psychological analysis of human, social and cognitive factors may be carried out in the financial sector with a view to understanding, explaining, interpreting or predicting decisions made by consumers, borrowers, managers or investors, which affect stock market prices, returns and the allocation of resources”.

Case T-12/09 RUN THE GLOBE (7 April 2011) available only in French and German. The trade mark was mercifully held to be descriptive or organising sporting events, though on the slightly unlikely grounds that consumers would imagine that the purpose of the events was to circumnavigate the globe.

Recent Court of Justice activity on trade marks - updated part II

In Case C‑235/09, DHL Express France SAS, formerly DHL International SA v Chronopost SA, 12 April 2011 (press release here), a reference for a preliminary ruling under Article 234 EC, from the Cour de cassation (France), the Court of Justice gave judgment on the territorial scope of injunctions in CTM infringement cases. The Court followed the Advocate General's opinion and ruled that in general, when a Community Trade Mark Court orders a defendant to stop infringing a Community trade mark, the scope of that order will be EU-wide. This will not be the case where the trade mark owner asks for more restricted injunctive relief (obviously) or where the acts of infringement or threatened infringement are limited to a single Member State or to part of the territory of the European Union.

The Court also ruled that, where a court orders periodic penalty payments if the defendant fails to comply with an order, and the trade mark owner tries to enforce that order in the court of another EU member state which can’t grant an order for recurring payment, the court in that country must ensure that the coercive measure is enforced in an equivalent manner. This could cause problems for the English courts, which can’t order periodic penalty payments: they would have to rely on the rules on contempt.

How this might work in practice has already been considered at the High Court in a hearing before Mr Justice Kitchin on 14 April 2011 (reported by Herbert Smith who acted in the case here) in Kingspan v Rockwool regarding the form of declaration and relief. Kitchin J imposed an injunction covering only the UK and Ireland, although Rockwool Limited has also undertaken not to infringe Kingspan's trade marks in the rest of the EU. This suggests that the English courts will take a pragmatic approach. On the other hand there have been warnings (that one via Intellectual Property Magazine) that the case is a nail in the coffin of the specialist IP courts in this country and that litigants will go looking for “rocket docket” jurisdictions in the EU.

Clutter: Planck's New Constant

The Max Planck Institute’s Study on the Overall Functioning of the European Trade Mark System was published on 8 March. It has taken me a while to get to this – and I haven’t yet read all 278 pages – so these thoughts are liable to be added to, changed, or dropped. Watch this space!

It was commissioned (appropriately enough) by the European Commission, and it is one element of the Commission’s overall evaluation of what it insists on calling the European trade mark system. (See my separate posting on that.)

The purpose of the Commission’s evaluation of the trade mark system is to provide an assessment of how the system is working and to identify potential areas for improvement. It also considers the potential for enhanced co-operation between OHIM and the national offices, and evaluates the distribution of a proportion of the renewal fees paid for CTMs – a particularly touchy subject between national offices and the Community one. The Commission is free to choose not to follow recommendations in the Study, and some of them are certainly controversial: it will bring forward its ideas for legislative change in the autumn. The general tone of the Study, and its recommendations, would lead to greater cohesiveness between the Community and national trade mark systems – and several recommendations involve making optional provisions in the Directive mandatory (including the extended anti-dilution protection afforded to marks with a reputation).

The Study begins by canvassing the views of relevant stakeholders in the Community and national systems (I will call them collectively the systems, to save me becoming over-excited about the misuse of the word “European”). I’m glad they didn’t waste time with irrelevant stakeholders, though if they are stakeholders surely they are relevant by definition. The MPI organised two hearings with representatives of these stakeholders – but I have a feeling that when you examine the identities of the stakeholders you’ll find that they all have a vested interest in the continuation of the trade mark system pretty much as it is.

It also collected information from national trade mark offices, and the Benelux regional office (BOIP) which I hope will not feel offended if I don’t single it out for special mention every time I use the expression “national offices”. Finally, a representative survey among users of the CTM system was conducted by the Institut für Demoskopie Allensbach in February and march 2010.

The Study draws a number of conclusions from its survey of the field and makes many recommendations. A recurring theme throughout the study, and an expression for which I for one am indebted to the Institute, is “cluttering”. Such is the extent to which it is used that it should be regarded as a new Planck’s Constant.

The recommendations include:

Dividing up the spoils

Sharing out the half of OHIM’s renewal fees that had already been earmarked for the national offices, so all national offices get a minimum plus a top-up amount depending on the number of applications and international registrations dealt with by them. With a surplus of €400 million, this is a significant issue, especially as national offices might feel that this is money that has been taken from them by the parallel system in Alicante.
The requirement for graphical representation should be removed from the Directive and the Regulation. This will allow the development of new types of representation, while not detracting (although it’s not clear how you could do that without detracting) from the level of certainty for “non-traditional” marks prescribed by the Court of Justice (not, note, the European Court of Justice, though it it commonly so-called) in Case C-273/00, Sieckmann.

Classification

This is a hot potato currently before the Court in Case C-307/10, IP TRANSLATOR. The main problem in this area is that OHIM will insist on treating an application for everything in a class heading as covering everything in the class, even though there will be stuff in the class that isn’t mentioned in the class heading. Practices in national offices vary (and one of the Study’s most useful contributions is to tell us what each national office is doing). Overwide specifications, whether using class headings or otherwise, lead to cluttering of the register and firmer action than recommended by the Study should be taken. The Study offers a classic SOTBO: OHIM and national offices should agree a common approach. It suggests (more helpfully) that applicants should be required specifically to claim goods or services which might not be understood to fall under a class heading – giving the example of “software” in class 9.

How many classes?

This sort of cluttering could also be reduced if the Community system were not so generous as to allow applications in three classes for the basic fee. The Study suggests that separate fees – application and renewal fees – should be payable for each class.

Acquired distinctiveness

This should be assessed not on a state-by-state basis, as the General Court requires at present, but across the EU. The result will be to allow more marginal trade marks onto the register, which is hardly a step forward and will lead to cluttering. This appears to apply only to non-traditional marks. Why not all? The study also recommends "in accordance with the spirit underlying Article 6quinquies(C) of the Paris Convention, the length of time of an unchallenged and substantial use of a sign should be taken into account for the establishment of acquired distinctiveness”.

Relative grounds

There should be no change from the way OHIM deals with relative grounds – conflicts between registered trade marks and new applications – because it doesn’t have the resources to carry out a proper examination (as opposed to just a search) and work out whether to refuse applications. How can this be squared with the €400 million surplus? This despite 48 per cent of proprietors favouring the change – not an absolute majority, but more than were of the opposite view.

Prior unregistered rights

Relative grounds based on unregistered rights should be limited to nationwide rather than purely local rights.
The mandatory search of the OHIM register for prior registrations should be retained. The Study reports that many stakeholders like it. However, OHIM should be free to offer pre-filing search services in co-operation with national offices – on payment, naturally, of a fee.

Bad faith

OHIM should not start examining bad faith ex officio as a ground for refusal, but it should be a mandatory ground for refusal or cancellation in national offices – which cannot possibly promote consistency.
Even fewer proprietors wanted to change the opposition period from three to two months (as the UK has already done), and the Study thought this was not enough to warrant a change.

Non-use

Should the period of non-use after which a registration is vulnerable to challenge be reduced from five years to three? A trade mark which clutters up the register depletes the stock of available trade marks and may even foreclose the market to new entrants. Although there is an almost infinite variety of trade marks available to be used, the CTM system is already up to number 9 million and something (not all granted trade marks, certainly, but it’s still a very large number which tends towards infinity) and in any case an entrant to the market from outside the EU with an established brand is hugely vulnerable to foreclosure.

The Study also rejects the introduction of declarations of use, despite the fact that they would have massive decluttering power.

Promotional activities outside he core area of a trade mark’s registration should be regarded as a form of genuine use.

Infringement

Clutter is also the product of the extension of what amounts to infringement, but far from reversing this trend the Study suggests rewriting the Regulation and the Directive to accommodate the Court’s lawmaking in cases like Case C-292/00 Davidoff v Gofkid.

Genuine useGenuine use requirements are the second big area of controversy (along with classification issues – probably the bigger of the two) and also before the Court in ONEL/OMEL . The Study recommends that there should be no requirement that a CTM be used in more than one Member State: but by what logic can it be called a Community trade mark if it is in fact nothing of the sort? The Study recognises that there will be difficulty in enforcing a CTM against a later national trade mark in a distant part of the internal market from where the CTM is in use – a co-existence rule to deal (under carefully defined conditions) with conflicts between CTMs and later national trade marks is suggested.

Priority claims

The present system of "confining the examination [of priority claims] to requiring the necessary documentation for inclusion in the files and the congruence between what is documented and what is claimed" is not up for change, because it keeps costs down.

Extended protection

Trade marks that meet the criteria for extended protection, against dilution, based on their reputation – which are now coming to be referred to as “reputation trade marks” - should be regarded as well-known trade marks and accorded the protection of Article 6bis of the Paris Convention. That might be helpful, because no-one has ever had the faintest idea what constituted a well-known mark before. If you are lucky to have a well-known mark, it will enjoy protection against likelihood of confusion as well as against unfair use of, and detriment inflicted on, their reputation or distinctive character, irrespective of whether they are registered or not in the territory where protection is sought.

The meaning of “unfair advantage” is also something that could usefully be clarified, leading to more certainty about the extended protection for reputation marks.

Transit

For the purposes of infringement, use of a trade mark should include use anywhere in the territory of a Member State or (for a CTM) the EU – including custom-free zones, which means a change from the current position. If goods are counterfeit within the meaning of the TRIPS agreement and would be infringing in the country of transit (or the EU) it should be possible to take action against them. This is another controversial matter currently before the Court in Cases C-446 and C-495, Nokia and Philips.

Sanctions
The Regulation might benefit from saying something about sanctions for infringement, but perhaps (the Study concludes) that’s a matter for the Enforcement Directive (2004/48) which is currently under review. However, it does say that it thinks that Community Trade mark Courts should be able to grant Community-wide injunctions in all cases where they are requested – on which, see the DHL case.

Empire-building
The report also recommends that a role for OHIM in the counterfeiting field be considered. This seems to be part of an inexorable and undesirable process by which intellectual property offices arrogate to themselves roles well outside their natural jobs of maintaining registers of who owns what (and, perhaps, making sure that no-one claims what someone else owns, or has rights over something that they shouldn’t have).

Consistent decision-making
The study found substantial room for improvement in consistency of decision-making between OHIM and the national level, evidenced by the proportion of users who expressed dissatisfaction.

A misnomer - or trade mark imperialism?

The Max Planck Institute’s Study on the Overall Functioning of the European Trade Mark System is misnamed. It is not about any - "the" or "a" - European trade mark system: if it were, it would be a work of fiction and the whole project would be ultra vires and the UK Independence Party or someone would be challenging it in the Court of Justice (not, note, the European Court of Justice, nor the Court of Justice of the European Union, which institution includes the Court of Justice in which such a constitutional challenge would be brought). It is concerned with trade marks in the European Union, a large part of Europe but by no means its entirety; and a political unit, not a geographical or cultural one.

I find it extraordinary that the Commission, who should know a great deal better, should continue - arrogantly? -  to refer to it as European, when it is about trade mark law in the European Union. Are there expansionist forces at work here? Or is it just sloppiness? What do the Swiss think, or Icelanders, Norwegians, Belorussians, Ukrainians, Moldovans, Serbs, Croatians, Albanians – even Manxmen, Monegasques, Channel Islanders, and all the other non-EU Europeans? I hope to see some comments posted here ... even if they tell me I am wrong.

Good. Now I can get on with looking at what the Study says about trade mark law.

Max Planck's English

Before I comment on the Max Planck Institute’s Study on the Overall Functioning of the European Trade Mark System, I have to get two things off my chest, and if I do it now I might be more constructive with what I say about the substance of the document. Also, as separate comments they stand a better chance of coming to the attention of those to whose attention they should come. 

First, I am frankly appalled at the quality of the writing, about which I haven't seen anyone else say anything. As a taxpayer, I should not be expected to accept work of this quality. And my dismay is compounded by the discovery that the English version is the only version offered on the French and German-language versions of the Commission's website. So, a German institute prepared the document in English, in which form it is offered to speakers of all the other European Union languages. If only it were good English.

Brits must take great care before criticising the linguistic skills of other nationalities, I know, but this document is so badly rendered into English that there are points at which its meaning disappears. Apparently it came in below budget, but how much better if that money had been spent on a professional translation. It would surely have been perfectly practicable to have a literate native English-speaker polish it up before publication. Sentences like:

Development of IT tools dedicated to support national authorities in the fields of the combat to counterfeiting such as image searchable IT tools (para 1.57)

are inexcusable, but we can read past the incorrect prepositions, wrong parts of verbs and lackof punctuation to uncover the meaning. Likewise:

The Hungarian office has indicated that despite of …

Words like “trasferreded” should not have slipped through the net, “do” does sound like “due” if you learnt English from Hollywood films, “easy-friendly” might be a useful neologism, and the battle to preserve the word “datum” by ensuring “data” remains plural has probably been lost already. “Eventually” is a false friend to most non-native speakers of English.

When a document is so badly presented, one begins to wonder whether it is equally slipshod in substantive areas. I don't think it is - although there is much to criticise - but it would have greater credibility if it were written in good English. At least - so far - I have not been unable to understand what it is trying to say.

Book review: Trade Mark Registrations in Bad Faith by Alexander Tsoutsanis

The law on this topic is surprisingly diverse, even between the UK and the Community trade mark system, and indeed expressed in diverse ways. When applying for a UK trade mark you have to declare that you are using or have a bona fide intention of using the trade mark: there's no such requirement in the Community system. The subject of the work is the requirement - common to the UK and the CTM system - is that a trade mark can be invalidated if it were applied for in bad faith.

This book is a handsome hardback production, as one would expect from OUP. It's 424 pages long, including preliminaries and index, with none of the flab - regurgitated legislation - that one often finds bulking out legal texts. Its scope is not world-wide, though, which isn't clear from the title - it covers the Community trade mark system and the laws of several Member States (including the UK), the country chapters varying greatly - 15 pages on the UK, 17 on Germany, one on Portugal. The CTM regulation gets 55.

Considering its origin as Dr Tsoutsanis's thesis (defended in 2005, which perhaps partly explains why the new EU Member States are dealt with quite briefly) this is far from being a dry, unreadable exposition. The author, who is an Associate with Klos Morel Vos & Schaap in Amsterdam and a lecturer at the University of Leiden, has brought the work up-to-date although to what date is not stated. It was published on 11 November last year, and presumably it took a while to get into print after he finished writing.

On the other hand, having begun life as a thesis it naturally contains everything that the world's greatest enthusiast for the subject thought worth including. That's not intended remotely as a criticism - more like a reflection of my own experience of preparing a doctoral thesis - but it does mean that there is probably more in this work than you'd ever need in practice, more probably than an academic researcher might need either. But if we only ever bought law books that we knew would be 100 per cent, or even a lesser percentage, useful, we would buy very few: and how can we know what we are going to need before something lands on our desks? For the practitioner, I guess the point is that the country chapters about those jurisdictions about which to give advice would cause our PI insurers sleepless nights are for interest only, but the UK and CTM chapters are sufficiently valuable to make this a useful addition to any practitioner's library.

Further details are on the publisher's website here.