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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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When the Community Trade Mark (CTM) was first introduced to the wider world over 15 years ago, one of the big selling points was that genuine use of the mark in just one EU member state would be sufficient to maintain the validity of a CTM registration after it left its 5 years' grace period. This view was based in part on the Joint Statements of the Council and the European Commission that were published alongside the CTM Regulation in order to assist in the interpretation of that Regulation. It is also the view that is at present followed by OHIM in contentious proceedings involving a potentially vulnerable CTM registration.

From the outset, however, this position always looked a little odd to the writer for two reasons. First, one's instinctive reaction was that such a narrow use did not seem adequate to justify such a wide and powerful monopoly as a CTM registration. Second, and more important, it appears to be in conflict with the conversion provisions set out at Article 112 of the Regulation (now 207/2009) under which CTM registrations could be converted into EU national trade mark applications. In particular, under Article 112(2)(a), it states that conversion shall not take place:
"(a) where the rights of the proprietor of the Community trade mark have been revoked on the grounds of non-use, unless in the Member State for which conversion is requested the Community trade mark has been put to use which would be considered to be genuine use under the laws of that Member State;".

If it were clearly the intention of the legislators to allow genuine use of a CTM in one EU member state to maintain the validity (and enforceability) of a CTM, why would the Regulation provide for the conversion of such a CTM when it has indeed been used in a member state?

In a recent opposition (Leno Merken v Hagelkruis Beheer) before the Benelux IP Office (BIPO), the "one country" use theory was put to the test and was found wanting.

Hagelkruis sought a Benelux registration for the trade mark Omel for inter alia advertising services. The application was opposed by Leno based on their CTM registration for Onel covering identical services. Since Leno's CTM registration had been registered for over 5 years, Hagelkruis asked them to prove genuine use in the Community. Leno provided evidence of their use of the mark in the Netherlands arguing that this was sufficient, under Article 15 of the CTM Regulation, to maintain the validity of their CTM right.

The Benelux Office rejected Leno's opposition, on the basis that they had not provided adequate evidence of genuine use of the trade mark Onel in the Community. According to BOPI

The Joint Statements that accompanied the CTM Regulation were not legally binding (relying on the ECJ's decision in Praktiker (C-418/02));
The "one country" theory of genuine use was at odds with the conversion provisions of the CTM Regulation; and
More generally, if the rights conveyed by a trade mark monopoly (in particular a CTM registration) reached beyond the EU member state in which that trade mark was actually used, it would obstruct the free movement of goods and services in the Community.
Given the significance of this decision, OHIM immediately issued the following statement:
"OHIM - applying the principle of the unitary character of the CTM - continues to consider that boundaries of member states should not play a part in assessing ‘genuine use' within the EU single market, as recently outlined in its contribution to the European Commission study on the overall functioning of the trade mark system in Europe". 

As Mandy Rice-Davies famously said in the notorious trial that followed the Profumo scandal in the 1960s, "He would say that, wouldn't he?".
In the writer's opinion, the Benelux Office's decision is correct and the ECJ's decision in PAGO, see elsewhere in this edition of Make Your Mark, is wrong. A CTM registration is a very powerful and wide reaching monopoly. It covers 27 countries and a potential consumer population of 500 million. If neither opposed nor the subject of absolute grounds objections, a CTM registration costs less than £2,000 to obtain. It is therefore submitted that, unless certain restrictions are placed on the enforcement of a CTM, the CTM regime will eventually push EU national trade mark offices (and the trade mark rights that they issue) to the point of extinction. The only way to avoid this happening is to accept that, if you own a pan-European right, the price you have to pay to enforce it should be higher than that required to enforce a mere national right. If you are not prepared to pay that price, then obtain a national right (which, in itself, is now an extremely cheap and simple process via the Madrid system).

Eventually, the conflict between the diverging views on the validity and enforcement of CTM rights will be a political decision, even though it will be taken by a Court (the ECJ). When taking that decision, however, the Court should be mindful that the fate of EU national trade mark offices will lie in its hands.

Another doctrine of the OHIM faith is that claims to class headings protect all goods or services in that class. This is a view that is not universally shared by all EU national Trade Mark Offices, in particular the UK Trade Mark Office. Thus, a Class 9 class heading is interpreted by the CTM Office as covering "computer software", even though such goods are absent from the wording of that class heading. By contrast, the UK Office would refuse to acknowledge the presence of "computer software" in such a Class 9 specification, unless it were specifically mentioned, when interpreting such a specification in contentious proceedings.

However, when examining a UK trade mark application on absolute grounds, the UK Office is in rather an invidious position. Do they, for example, accept a mark that is clearly non-distinctive or descriptive in respect of computer software if such goods are not in fact mentioned in the application's specification, when they know that, once granted, the owner would be in a position to enforce that right at OHIM as if it were protected for computer software? The compromise that they have reached is to raise absolute grounds objections during the examination of cases such as those set out above, but to interpret such specifications in contentious proceedings in a literal sense, that is, if computer software is not specifically claimed, it is not protected.

The UK Office's examination practice was put to the test recently in a case (Chartered Institute of Patent Attorneys (CIPA) vs UKIPO) involving the trade mark IP Translator. CIPA had applied to register their mark in respect of "education; providing of training; entertainment; sporting and cultural activities" in Class 41. In other words, for the Class 41 class heading.

Following their published practice, the UK trade mark examiner rejected the mark under Sections 3(1)(b) and (c) of the 1994 Trade Marks Act on the basis that the mark would "designate the nature of the services e.g. translation services in the fields of intellectual property". CIPA replied that they had not claimed such translation services and that the mark IP Translator should be perfectly acceptable for the Class 41 services that had in fact been claimed. The Institute argued that the Sieckmann criteria (ECJ case C-273/00) that applied to trade marks, namely that they should be "clear, precise, self-contained, easily accessible, intelligible, durable and objective" should also apply to specifications of goods and services. The UK Office's practice was said to fail such a test.

Unfortunately for CIPA, the Section 3(1)(b) and (c) objections were maintained. This decision relied in part on a ruling of the Court of First Instance (BMI Bertollo v OHIM) where the class headings set out in an Italian trade mark registration were viewed as protecting all goods in the relevant classes. It should be noted, however, that in that case, the Court did not hear any arguments that put the contrary view. The decision also maintained the UK Office's present position that the public interest is best served by interpreting class headings in a broad sense for the purposes of Section 3 (absolute grounds) examination.

Don't be surprised if this decision is appealed. Perhaps it will be the case that will eventually reach the ECJ and put an end to the controversy that surrounds this important point of practice.

The fight against counterfeit goods was dealt a serious blow by a recent decision (Nokia v HM Revenue & Customs) of the English High Court.

A shipment of fake Nokia branded phones, on their way from Hong Kong to Colombia, had made a transit stop at London's Heathrow airport. Nokia became aware of the counterfeit products and asked HM Revenue & Customs (HMRC) to seize them under the EU Customs Regulation (1383/2003). HMRC refused to do so, taking the position that such goods in transit could not usually be classed as counterfeit within the terms of the Regulation. HMRC maintained that they would only act in such cases if there was strong evidence that the goods might be diverted onto the EU market.

Nokia, not surprisingly, were not happy with this interpretation of the EU Regulation and sought a High Court judicial review of HMRC's decision. Unfortunately, the Judge (Mr Justice Kitchin) ruled in favour of HMRC on the following basis:

i)    Goods in transit through the EU, that were not destined for the EU, did not fall within the definition of counterfeit goods set out in the EU Customs Regulation. They could therefore not be seized under that Regulation, even if they were in fact counterfeit. The mere risk that the goods could be diverted into the EU was not enough to justify seizure.

ii)    In order to succeed in a trade mark infringement action, a trade mark proprietor had to show that goods, even counterfeit goods, had been put on the EU market. Goods in transit, in the absence of, for example, clear evidence that they might be diverted, could not be classed as infringing goods. In reaching this decision, the Judge relied on two earlier decisions, Eli Lilly v 8PM Chemist         and L'Oreal v eBay International.

iii)   The EU Customs Regulation (1383/2003) had not introduced new tests for deciding whether or not a mark was being used         in the course of trade or for judging the existence (or otherwise) of trade mark infringement.

It is understood that Nokia has appealed against this adverse decision and that the Court of Appeal has sought a ruling on this crucial question from the ECJ.

It is clear from the rigorous reasoning of Mr Justice Kitchin that the EU Customs Regulation is deficient and needs to be amended to allow counterfeit goods that are passing through the EU to be seized. In the meantime however, it is to be hoped that the ECJ finds a way to interpret the present Regulation that allows Nokia to succeed. The public interest demands it, whatever the wording of the Regulation. After all, if the European Court can find a way to interpret "dissimilar goods" to mean "identical, similar and dissimilar goods" in the Davidoff case (C-292/00), then it should not be beyond their wit to rule that the present wording of the Customs Regulation can be stretched in a way that favours the legitimate interests of honest traders and that is to the detriment of the crooks who manufacture counterfeits.

The European Court of Justice (General Court) has decided (in Stella Kunstofftechnik v OHIM; T-27/09) that opposition proceedings and revocation proceedings are entirely autonomous and can run side by side at OHIM.

Stella Kunstofftechnik (Stella K) had opposed a CTM application for the trade mark Stella Pack (figurative) made by Stella Pack for a wide variety of goods. In their opposition, Stella K had relied on an earlier CTM registration for Stella covering a range of identical and similar goods which had been registered for less than 5 years at the date of publication of Stella Pack's CTM application. It followed that, in the opposition proceedings, Stella K would not have to file any evidence of genuine use of their mark and could rely on the full list of registered goods, whether they had sold them or not.

Before a decision was reached in the opposition, however, Stella K's CTM registration became vulnerable to a non-use revocation action (5 years after its grant) and Stella Pack duly filed such an action before OHIM's Cancellation Division. At this point, the opposition proceedings were suspended.

The Cancellation Division, having considered the evidence of use that Stella K had filed, decided to revoke their CTM registration partially. Stella K appealed, arguing that their proof of use was adequate to resist the revocation action and that, more generally, the revocation action should be dismissed as inadmissible given the pending opposition proceedings.

The Board of Appeal, in confirming the original decision of part-revocation, rejected both arguments. In the Board's view, the existence of the opposition proceedings was irrelevant to the consideration of the revocation action.

Stella K appealed again to the European Court of Justice (General Court). Again their appeal was dismissed. According to the Court, the two proceedings were distinct with their own separate purpose. The General Court also ruled that, if the earlier mark were to be revoked, the opposition would be devoid of purpose. In other words, even if the earlier CTM right was in existence at the publication date of the later CTM application and was revoked from a date after the later CTM application's publication date, the revocation of the earlier CTM should lead to the opposition being rejected.

The suggestion by the General Court that, in the circumstances outlined above, "the opposition would be devoid of purpose" is in line with OHIM's practice, but is at odds, both with an earlier decision of the Court of First Instance (Coyote Ugly; T-161/07), as well as the practice of the UK Trade Mark Office, following the Riviera decision (2003 RPC 59). 

These matters were recently discussed in a UK trade mark opposition between Associated Newspapers and C.A. Simpson. The relevant facts of the case were these. Associated filed a UK trade mark application on 21 August 2001 which was published for opposition on 1 July 2005. Simpson owned an earlier CTM registration which had a filing date of 10 December 1999 and a grant date of 17 June 2003. It followed that, at the date of publication of Associated's application (1 July 2005), Simpson's registration was not subject to proof of use requirements. The opposition was fought and Simpson prevailed. However, on 11 May 2009, Associated sought to revoke Simpson's CTM registration for non-use and then subsequently (at the hearing which took place on 14 May 2009) argued that, should they (Associated) lose the opposition, then there should be a stay of execution of the adverse decision pending the outcome of the OHIM revocation proceedings. Should those proceedings be successful, then the opposition should fail since Simpson would no longer own an earlier trade mark right.

The Hearing Officer, Mr Smith, rejected this argument and refused the stay. Relying on the Coyote Ugly and Riviera decisions, and following established UK Trade Mark Office practice, Mr Smith found that, even if Associated's revocation action were successful, it would only be successful from 11 May 2009 (the date the revocation action was filed). This meant that Simpson's earlier CTM registration would still have been in existence at the key date in the opposition proceedings, namely the date of publication of Associated's later UK trade mark application (1 July 2005). Thus, even if Associated's revocation action succeeded, Simpson would still own an earlier trade mark right at the relevant date and his opposition would still succeed.

Those who have reached this point in Snippets will now realise, if they hadn't before, that the harmonisation of EU trade mark practice still has a very long way to go.

There was a time when proceedings before the UK Trade Mark Office could best be described as cheap and cheerful. The pleadings sometimes left something to be desired, the evidence could occasionally be, shall we say, limited and, as a result, the Hearing Officer had, in some cases, to employ a certain amount of imagination when reaching a decision. However, in the writer's view, the majority of these decisions were correct and, if they were not, there was a good chance of overturning them on appeal. Further, both parties had had "their day in court" on a very limited budget. In other words, the system was accessible to all and it worked.
As a result of a series of recent Court cases however, in which the pleadings and/or the evidence filed before the UK Trade Mark Office has been heavily criticised, appeal tribunals have become increasingly constrained from overturning the original decisions and litigants are even estopped from arguing their case in the High Court because of an earlier Office decision (see the Firecraft case discussed elsewhere in this edition of Make Your Mark), all this has changed.

Proceedings before the UK Office are now treated as mini-trials. Since the Office's decisions are also extremely difficult to overturn on appeal, the importance of putting your best case forward at first instance (that is, before the Office) is now widely recognised. Not surprisingly therefore, the cost of contentious proceedings before the Office has risen considerably. As a result, some Hearing Officers, though not all, have started to award costs to the winning party that dwarf previous awards. This is particularly the case when a party has been found to have acted unreasonably and a costs award that is off the normal scale is sought. In one such case (Target Brands v Music Choice), for example, an astonishing costs award of £112,000 was made to Music Choice.

As a result of this fundamental change in the nature of UK Trade Mark Office proceedings it is now not unusual to read decisions in which six figure costs awards are sought. For example, in a recent appeal (Foreign Supplement Trade Mark v Maximuscle) to the Appointed Person (Mr Hobbs QC), the opponent claimed costs of over £150,000. In another case (Royal Bank of Scotland (RBS) v Mint Partners), however, where an outrageous costs award of £96,000 was requested, the Hearing Officer, Mr Smith, struck a blow for common sense, if not the more reasonable approach of a few years ago.

In the RBS case, the opponent, Mint, relied on various relative grounds of opposition, as well as the accusation that RBS's application had been filed in bad faith (Section 3(6) of the 1994 Trade Marks Act). The proceedings then followed a normal path, in spite of demands from Mint, in the form of a solicitor's letter, that RBS confirm that they had a bona fide intention to use their mark. When it got to RBS's turn to file their evidence, however, they decided that enough was enough and they withdrew their application "for business reasons unrelated to the opposition". It was at this point that Mint's representatives claimed £96,000 in costs. The UK Office saw no reason to award costs above the normal scale and refused to do so. Mint persisted and requested a hearing. At the hearing, it was disclosed that RBS had incurred costs of £2,500 in the opposition, whilst Mint had incurred costs of £96,000 employing trade mark attorneys, solicitors and both English and Scottish counsel.

The Hearing Officer was having none of it. He decided that in the original opposition, Mint would have been awarded £1,100 in costs. However, because of their persistence with the request for additional costs, which was denied, RBS would, in turn, be awarded £1,100. As a result, no overall costs award was made in favour of either party.

It is clear that a return to the much more informal nature of proceedings that made justice (albeit, in some cases, rough justice) available to all before the UK Trade Mark Office is unlikely. However, it is imperative that the UK Office continues to resist the sort of costs award that was being sought in the RBS case. In the writer's view, an award above the normal scale should only be contemplated if the behaviour of one of the parties is clearly dishonest. In all other cases, such an off-the-scale award should not be made.

If the Office follows that practice and resists calls for significant increases in costs awards in contentious proceedings, then it is hoped that the message will eventually get home to all parties (and their representatives) that incurring six figure sums when contesting proceedings before the UK Office is both disproportionate and unjustifiable.

Let me test you. Which of the following marks do you consider to be confusingly similar, Solvo/Volvo, Vinopoly/Monopoly, Agile/Aygill's, Famoxin/Lanoxin and Ester-E/Esteve? The answers are at the bottom of this Snippets article. If you got four out of five correct, a place on an OHIM Tribunal or the European Court clearly awaits you.

In the writer's view, the outcomes of these five cases illustrate the difficulty of clearing trade marks for registration and use in Europe, as well as predicting the outcome of CTM oppositions. They also exemplify two fundamental flaws in the practice that has developed in relation to the comparison of marks.

The first flaw is the weight that is often given, particularly by the European Court of Justice, to the phonetic similarity of trade marks. This is perfectly illustrated by the Solvo/Volvo case. Overturning earlier findings of a lack of similarity between the two marks by both the Opposition Division and the Appeal Board, the General Court ruled that, although there was no visual or conceptual similarity between the marks, this was outweighed by their phonetic similarity. This finding was reached in spite of the fact that the Class 9 goods at issue were "computer programs for warehouse management systems and computer programs for container terminal systems", clearly the sort of goods where an errant grandparent might mis-hear the name of the Christmas present or the type of confectionery requested by their grandchild. It is submitted that, as consumers, we live predominantly in a visual and a conceptual world. Phonetic misunderstandings when making purchases, particularly in the business world, are few and far between. The sooner the ECJ begins to give phonetic similarity the (low) weight it deserves therefore, in the overall assessment of the two marks, the better. 

In the Vinopoly/Monopoly and Agile/Aygill's cases, the (alleged) phonetic similarity of the two marks also played its part, although in both of these cases the marks were also said to be visually similar. The writer finds the latter finding (of visual similarity) in the Agile/Aygill's case incomprehensible.

The second flaw will be well known to regular readers of Make Your Mark and that is the Court's (and the Office's) treatment of cases involving Class 5 goods. It is an astonishing fact of CTM practice that marks with a greater degree of similarity are allowed to coexist for pharmaceutical products than would be allowed for consumer items, such as toys and sweets. Both the Famoxin/Lanoxin and Ester-E/Esteve cases confirm this wrong-headed, even dangerous, approach. Both of these contentious proceedings involved Class 5 products and both findings of a lack of similarity relied on the higher degree of attentiveness that is allegedly shown by those involved, including the end consumers (patients), when comparing two pharmaceutical products (and their marks). What never appears to be part of the global assessment in these Class 5 cases is that first the goods involved are poisons and second that many of the likely consumers will be old and forgetful and, in almost every case, ill. These factors should at least counterbalance the authorities' reliance on the "attentiveness" of doctors, etc.

For those who couldn't bring themselves to read the whole of this article, these marks were all found to be similar: Solvo and Volvo (Volvo Trademark Holding v Elena Grebenshikova, Class 9, General Court (T-434/07)), Vinopoly and Monopoly (Hasbro v Lenip Business Management, Classes 9 & 28, Opposition Division No. B1206044)) and Agile and Aygill's (Peek & Cloppenburg v Redfil, Classes 18, 25 & 28, CFI (T-386/07)). By contrast these two were not: Famoxin and Lanoxin (The Wellcome Foundation v Serono Genetics Institute, Class 5, CFI (T-0493/07, T-26/08, T-27/08)) and Esteve and Ester-E (Laboratorios Del Dr Esteve v The Ester C Company, Class 5, CFI (T-230/07)).

A recent OHIM decision involving a colour mark suggests that the registration of such trade marks is not the lost cause that was previously believed.

In this case, (Andreas Stihl v OHIM, R 355/2007-4), the OHIM Board of Appeal allowed an International trade mark application designating the CTM (no. 877450) to proceed on the basis of acquired distinctiveness. The mark applied for consisted of an image of a power tool bearing the colours orange and grey together with the following explanation:

"Colours claimed: Orange and grey. Partial: The colours orange and grey as applied to the goods; the colour orange is applied to the top of the housing of the goods and the colour grey is applied to the bottom of the housing of the goods; the dotted outline of the goods is intended to show the position of the mark and is not a part of the mark".
The goods claimed were "Power tools, namely power operated cut-off machines", that is, chainsaws.

The mark was rejected as non-distinctive and/or descriptive of the goods (Article 7(1)(b) and (c) of the CTM Regulation) by the CTM Examiner. Andreas Stihl appealed. In the appeal, Stihl argued as follows in favour of the inherent registrability of the mark:

The mark claimed was not a colour combination per se but a colour combination as applied to the goods.
Colour per se can be inherently distinctive, particularly when the list of goods claimed is very restricted and the relevant market is very specific, as in the present case.
The orange/grey combination was unusual for the products claimed and neither colour was a common warning colour aimed at protecting the relevant public against hazards.

Stihl also filed the following evidence of acquired distinctiveness:

Evidence of the sale, turnover, market share, advertising and advertising spend for its chainsaws in every country of the EU.

Testimonials from the Austrian Forestry Association, Austrian private forest owners, the German Federal Association of power-operated tools and four Danish and Spanish companies and associations, all attesting to the association of the orange/grey colour combination with Stihl.

Market surveys conducted in France and Germany indicating about 60% and 70% association (respectively) of the claimed colour combination with Stihl.

The Board of Appeal maintained the original objections to the inherent registrability of the mark following the usual path that all marks are treated equally but some (colour marks, for example) are treated less equally than others. In relation to the non-trade mark uses of orange and grey, the Board commented that orange is used as a warning/safety colour (e.g. on traffic cones), whilst grey is associated with products made out of metal or plastic.

Turning to the evidence of use however, the Board decided that this was sufficient to overcome the Examiner's objections. The evidence of sales, turnover, market share and advertising, although not sufficient in themselves did demonstrate that Stihl was the market leader in the field and that the orange/grey combination was in use throughout the EU.

In addition, the French and German surveys both showed an impressive level of recognition by the relevant public. These surveys, when combined with the other evidence filed by the CTM applicant, led the Board to find that it was reasonable to extrapolate the French and German level of recognition across the whole EU. On this basis, the objections raised under Articles 7(1)(b) and (c) of the CTM Regulation were waived and the CTM application was allowed to proceed.

This case gives some hope at least to those who are seeking to register non-traditional trade marks, such as colour or shape marks, as CTMs. It is still necessary to show a significant level of commercial activity throughout the EU (all 27 countries), but the willingness of the Board of Appeal to extrapolate market survey results in just two EU countries to the whole of the region is a welcome and, it is submitted, commercially sensible approach.

Having said all of this, the writer believes that the CTM Office raised the incorrect objection in this case. Under Article 4 of the CTM Regulation, a CTM must be "capable of being represented graphically". In the case of Ralf Sieckmann v OHIM (C-273/00), the ECJ ruled that the equivalent provision of the Trade Marks Harmonisation Directive (89/104/EEC) should be interpreted as meaning that a properly, graphically represented trade mark must be "clear, precise, self-contained, easily accessible, intelligible, durable and objective". How can a mark, such as the above Stihl colour combination mark, in which the amount of colour present and the positioning of that colour are both unknown, be viewed as precise? The Stihl mark protects literally thousands of potential trade marks. In the writer's view, such a mark should never be accepted as meeting the Sieckmann criteria. So whilst the Board of Appeal's ruling in the Stihl case is welcome, the mark under consideration should have been rejected under Article 7(1)(a) of the CTM Regulation as an imprecise graphic representation.

In a decision (JC AB v Jasper Conran; Opposition No. B961070) that places a question mark over the extent of protection that will be accorded to certain letter trade marks, OHIM's Opposition Division found that a stylised form of the letters JC was not confusingly similar to an earlier Swedish trade mark registration protecting the letters JC themselves. 

In its decision, the Opposition Division found that the CTM applied for was a monogram and then, rather more controversially, that the precise nature of the monogram could not clearly be ascertained. For this reason, they found that the two marks had no visual similarities, that the later mark could not be pronounced and that therefore the applicant's and the opponent's marks were dissimilar.

This decision is under appeal. However, if the Appeal Board also finds the monogram applied for to be illegible, the appeal is unlikely to succeed. It will be more interesting, however, if the Appeal Board finds, as it should, given the rather common font that is used in the opposed mark, that the later mark will be seen as a JC mark. In such circumstances, one might have thought that a finding of similarity might be inevitable. However, it is OHIM's practice to give one and two letter marks a limited breadth of protection and so, even if the legibility of the CTM mark applied for is accepted, the opponent is by no means certain to win. An adverse outcome for the opponent would be in line with earlier OHIM decisions involving a comparison of letter marks, see, for example Sincrostar v Maxime Monseur (Appeal No. R342/2008-1) and Agnes Trouble v Buttress (Opposition No. B1159427).

Under Article 37(2) of the CTM Regulation (207/2009), the CTM Office has the power to require a CTM applicant to disclaim exclusive rights in a non-distinctive element of a mark. For reasons of administrative convenience, this power is not exercised by CTM examiners. This means that there are thousands of CTM registrations that contain non-distinctive elements that can be, and in some cases are, relied on to prevent the registration of later marks containing the identical non-distinctive element. See, for example, the OHIM appeal (GS v Caserti Salvi; R684/2003-2) in which the owner of a CTM for the non-distinctive phrase Terre D'Italia (in Italian, "The Land of Italy") plus a device successfully opposed a later CTM for Terre D'Italia plus a completely different device.

However, a recent decision of the Court of First Instance (Technopol v OHIM; T-425/07 and T-426/07) could represent a first step towards forcing a change in the Office's disclaimer practice (or lack thereof).

The case involved two figurative trade marks, one of which contained the numeral 100, the other the numeral 300. The CTM applications had been refused by the CTM examiner as non-distinctive/descriptive (Articles 7(1)(b) and (c), CTMR 207/2009) in respect of various forms of printed matter in Class 16 and puzzles in Class 28. The Polish applicant appealed. In a very welcome move, the Board of Appeal asked the applicant to disclaim exclusive rights in the numerals 100 and 300 before it would consider the appeals. This request was refused and, as a result, the Appeal Board dismissed both appeals.

Undeterred, Technopol appealed again, this time to the CFI, arguing that the numerals 100 and 300 were distinctive in respect of the Class 16 and 28 goods claimed and that, not surprisingly, OHIM had already accepted very similar figurative marks containing 100 and 200 for identical goods in the past (see CTM registrations nos. 3419322 and 3418845). The CFI dismissed the appeals. 

In the Court's view

The figures 100 and 300 would be perceived by the consumer as a description of characteristics of the goods, for example as the number of pieces in a puzzle or the number of crosswords in a crossword book.

If registration of the marks applied for were not made subject to any conditions, the impression might be given that the exclusive rights extended to the elements 100 and 300, thereby preventing them being used in other marks. Consequently, ... the inclusion of these signs in the marks applied for might give rise to doubts as to the scope of protection afforded to the marks.

These comments by the CFI could apply to thousands of existing CTM registrations. It is unlikely that this case on its own will cause OHIM to change its practice in respect of disclaimers. That will require severe criticism of the practice from the European Court in contentious proceedings in which a CTM owner is seeking to exercise rights in non-distinctive subject matter.

It has been clear from day one, however, what the Office's practice should be in this area. First they should require disclaimers from CTM applicants in relation to non-distinctive/descriptive elements of marks applied for. Second, when the owner of such a CTM containing a disclaimed element seeks to exercise his rights, that element should be given no weight. Thus, in the Terre D'Italia case mentioned above, OHIM should have only accepted the earlier CTM with a disclaimer to the phrase Terre D'Italia. The comparison with the later mark should then have ignored the presence of Terre D'Italia in both marks and a finding of no likelihood of confusion should have been made.

The CTM Office's practice in relation to geographical indications is to accept such indications as registrable trade marks unless the place is associated with the goods or services claimed or is likely to be associated with them in the future.

In Mineralbrunnen Rhön-Sprudel v Schwarzbräu (CFI, T-226/08), the registrability of Alaska in respect of Class 32 goods, including mineral water, was considered. In 1998 Schwarzbräu had obtained a CTM registration for the word Alaska. 

Three years later (in 2001), Mineralbrunnen sought to cancel the registration as non-distinctive, descriptive or deceptive of the goods claimed.

The Cancellation Division rejected the action and, with it, all of Mineralbrunnen's arguments. On appeal, the Board of Appeal also found the registration to be valid, given that, according to the Board, the average EU consumer would not associate Alaska with the production of mineral water. On further appeal to the CFI, the court ruled that, although place names are quite often used as brands for water products, and there was some association of Alaska with the production of such products, the relevant EU public would not have thought in 1998, when Schwarzbräu's CTM was registered, that water was exported from Alaska to the EU.

This case has been appealed again to the ECJ. Given the difficulty of proving the position in 1998, this appeal may also fail. However, it is submitted that, even in 1998, it was reasonably foreseeable that mineral water would be produced in and exported from Alaska. Certainly a search of the internet for "Alaska(n) water" now produces numerous websites for companies that produce or sell such Alaskan-produced mineral water. It is therefore submitted that it should now be possible to cancel Schwarzbräu's CTM registration, in so far as it claims water products, on the basis that Alaska has become the common name in the trade for mineral water or, if used in relation to mineral water that is not sourced from Alaska, it is liable to mislead the public (Articles 51(1)(b) and (c) CTMR).

The Carlyle is an exclusive hotel situated in New York. Since its opening in 1930 it has seen numerous famous men and women pass through its doors. Every US president from Truman to Clinton, for example, has stayed there. In spite of, or perhaps because of, such high profile guests, however, the hotel has a reputation for discretion, being referred to as a "Palace of Secrets" by The New York Times.

The Carlyle, LLC owned a UK trade mark registration for The Carlyle covering "hotel, restaurant, cabaret, cocktail lounge, banquet facilities and health spa services" in Class 42. An Austrian company, Mascha & Regner Consulting, applied to revoke this registration on the ground of five years non-use.

The ultimate owner of the New York hotel, Rosewood Hotels & Resorts, filed the following evidence in the form of a Witness Statement completed by its Vice President and Secretary:

The number of UK residents who had stayed at the hotel during the relevant period and the revenue from those guests;
The existence of a London sales office, run by Rosewood, through which bookings at The Carlyle could be made, as well as pre-payment for hotel stays;
Dealings between Rosewood's London sales office and UK tour operators and travel agents leading to the latter offering stays at The Carlyle hotel;
A book launch of an illustrated history of the hotel organised by Rosewood's London sales office;
A toll free number for the UK through which reservations at Rosewood hotels, including The Carlyle could be made;
Rosewood's website, www.rosewoodhotels.com, through which reservations at The Carlyle could be made;
Numerous articles in major UK newspapers and magazines about, or featuring, the New York hotel.

The registered proprietor argued that the marketing and advertising of The Carlyle hotel in the UK was enough to establish genuine use of the mark in this country in relation to the Class 42 services protected. It was also argued that the proprietor had provided "hotel reservation, booking and information services" and that these were a sub-category of "hotel services".

The Hearing Officer was not convinced and revoked the registration. She found that no evidence of marketing or advertising The Carlyle hotel had been established in the UK and so she saved herself from having to decide the tricky question whether such services alone would constitute genuine use of The Carlyle in the UK in respect of hotel services. She also refused to consider the "hotel reservation" etc point, since she decided that this had been raised for the first time at the Hearing and the applicant to revoke had had no prior notice of it.

In the Extreme trade mark case (2008 RPC 2), Mr Arnold QC, sitting as the Appointed Person, said that "Whilst a bare assertion of use would not suffice as evidence of use, a statement by a witness with knowledge of the facts setting out in narrative form when, where, in what manner and in relation to what goods or services the trade mark had been used would not constitute bare assertion". As this appears to have been the nature of the evidence put forward by The Carlyle hotel, it is perhaps no surprise that this decision is under appeal to the High Court.

The applicant to revoke, Mascha & Regner, owns a CTM application for Carlyle covering inter alia "providing temporary accommodation". If they prevail in these UK revocation proceedings, as well as in related CTM revocation proceedings, they are likely to obtain a CTM registration which, in principle at least, they could use to seek to prevent all marketing, advertising and reservation activities for The Carlyle hotel in the European Union. Given that such activities have been conducted for decades, the stakes in this particular trade mark battle are undoubtedly high.

What rights do the successors have in the name of a famous dead person in the UK? The answer, both from earlier cases such as Elvis Presley (1999 RPC 567) and from more recent cases, such as Manders Paints v The Picasso Estate, is very few.

Manders Paints applied to register the trade mark Picasso for paints and similar products in Class 2. The Picasso Estate opposed the application based on

Bad faith (Section 3(6) of the 1994 Trade Marks Act);
An earlier CTM registration for Picasso covering vehicles and similar, together with their reputation in that mark in relation to those goods (Section 5(3));
Their use of the trade marks Picasso (word and stylised) in relation to motor vehicles (Section 5(4)(a)). The stylised version of the mark being in the form of Pablo Picasso's signature.
The well-known nature of Picasso as a trade mark (Section 56).

The opponent filed evidence attesting to the fame of Pablo Picasso as an artist, as well as their significant use of and reputation in the trade mark Picasso (both word and signature) in relation to motor vehicles. They also provided evidence of widespread licensing activities which allowed third parties to use the name Picasso and the artist's works in relation to a broad range of goods, though not including paints. Finally, they showed that the applicant was using Picasso as a brand of paint and in a stylised form that was very similar to the artist's signature.

In response, Manders referred to their earlier successful non-use revocation action of a UK trade mark registration for Picasso in Class 2; this revoked UK trade mark registration being owned by a member of the artist's family. Manders also showed that the names of famous dead artists, such as Matisse, Renoir and Whistler, were registered as trade marks in relation to paints and similar goods by unconnected third parties.

The Hearing Officer rejected the opposition on the following basis:

Even though he accepted that the opponent had established a reputation in Picasso as a trade mark in relation to motor vehicles, he decided that, because of the repute of Pablo Picasso as an artist, the relevant public would associate the name Picasso with the artist, rather than the motor vehicle. Further, although the owners of motor vehicles did on occasion purchase motor vehicle repair paints, these goods were not in competition or complementary. Thus, the relevant consumer would not make the necessary link between the applicant's and the opponent's goods and the Section 5(3) ground of opposition was rejected.

On a similar basis, the Hearing Officer decided that the passing off ground of opposition (Section 5(4)(a)) also failed. The opponent had produced no evidence to show that specific car models (such as Picasso) and vehicle paints shared the same trade mark. The use of Picasso by the applicant in respect of paints (and similar) would therefore not result in a misrepresentation, leading to the public believing that such paints were authorised by the Picasso Estate or to any damage of the opponent's trade in vehicles.
Turning to the question of bad faith (Section 3(6)), the Hearing Officer was not persuaded by the evidence before him that Manders had acted in bad faith. In the Hearing Officer's view, it was fair for the applicant to conclude, in the absence of information illustrating the opponent's commercial rights in the name Picasso in respect of Class 2 goods, that it was free to apply to register that mark for those goods in the UK.

Finally, the Hearing Officer, following the findings in the Elvis Presley case (a name unique to a particular person does not, of itself, have distinctive character as a trade mark), decided that Picasso was not well-known as a trade mark in the UK. He therefore rejected the Section 56 ground of opposition.

The owners of the Picasso Estate have fought a heroic battle seeking to maintain a trade mark monopoly in the name in the EU. Further, there is no doubt that, given the commercial exploitation of the name, both before and after the artist's death, the name Picasso is more likely to be viewed as a brand than most other artists' names. However, cracks are now starting to appear in the walls protecting the Estate's interests. Three out of ten CTM registrations for Picasso marks are now owned by third parties, whilst six out of eight UK trade mark registrations are in the hands of others.

If the writer were advising the Estate, he would recommend filing CTM applications for Pablo Picasso, Picasso and the Picasso signature in all forty five classes. He would then fight the inevitable oppositions and see what protection he obtained from the wreckage. He would continue to oppose all third party owned trade mark applications for Picasso marks. He would diarise the dates when the existing third party owned trade mark registrations became vulnerable to non-use revocation and attack them as soon as the relevant dates were reached.  In about four years' time, he would file new CTM applications for the names and signature, again in all forty-five classes. This aggressive trade mark policy would be combined with an equally aggressive licensing exercise which would aim to licence registered trade mark rights rather than unregistered rights. It would take time, but with sufficient funds and determination, it should be possible for the Estate to regain commercial exclusivity in the artist's names in the EU, well before the copyright in his artistic works runs out.

Since its first broadcast in December 1960, Coronation Street has been, and remains, one of the most popular soap operas on British television. As in most British soap operas, much of the action takes place in the fictional public house, the Rover's Return, which has always sold the equally fictional Newton & Ridley beer.

Not surprisingly therefore, when the all-too-real Newton & Ridley Beer Company applied to register the trade mark Newton & Ridley for beer and similar goods in Class 32, the application was opposed on a number of grounds by ITV Studios, the broadcaster of Coronation Street. One of the grounds (Section 5(4)(a) of the Trade Marks Act 1994) claimed that the applicant's use of the mark applied for would pass off their Class 32 goods as those of the opponent.

The Hearing Officer, on the evidence before him, decided that the opponent had established goodwill in the phrase Newton & Ridley in relation to entertainment services, though not in respect of beer or other Class 32 goods. Further, even though the trade mark applicant and the opponent did not operate in common fields of activity, the Hearing Officer was prepared to accept that the use of Newton & Ridley by the applicant would constitute a misrepresentation since many beer consumers would assume that the producer of such beer had been licensed by the maker of Coronation Street. Finally, the Hearing Officer accepted that the registration of the mark by Newton & Ridley Beer would damage ITV's goodwill because

In view of restrictions on product placement in tv programmes, the use of the trade mark Newton & Ridley by the trade mark applicant would force ITV to give the fictional beer a much less prominent position in the programme and this would eventually lead to a total loss of its goodwill; and
The applicant's registration of Newton & Ridley would deprive ITV of future licensing opportunities for its fictional beer (should the restrictions on product placement be lifted).

It followed for these reasons that the opposition based on Section 5(4)(a) of the Act succeeded.

Ernst August Prinz von Hannover Herzog zu Braunschweig und Lüneberg applied to register his coat of arms as a CTM in a wide variety of classes (CTM application no. 5627245).

Unfortunately for the Prinz, the British royal family has more than a hint of German blood coursing through their veins, not least from the House of Hanover (four Georges and one William) that reigned from 1714 to 1837. This meant that the Prinz's coat of arms, apart from the inscription Suscipere et Finire (Latin for To Undertake and To Accomplish) which replaced the royal emblem's Dieu Et Mon Droit, bore a striking resemblance to the British coat of arms.

As a consequence, the OHIM examiner raised an objection to the CTM mark based on its proximity to the protected royal emblem (Article 7(1)(h) CTMR). This objection was sustained by the Board of Appeal (R1361/2008-1).

Given that the Prinz's claim to the British throne, let alone the Hanoverian coat of arms, is probably stronger than that of Prince Charles, it is no surprise to learn that he has appealed the Board's decision to the European Court.

We spend our whole lives differentiating between different people who have different, in some cases only slightly different, names. Yet when it comes to trade marks that consist of names, the authorities, both at OHIM and in the European Court, assume that it is beyond us to distinguish between such names. This odd assumption was confirmed in a recent judgment (Rahmi Özdemir v Aktieselskabet; T-11/09) of the General Court.

The CTM application was for the trade mark James Jones in Class 25. It was opposed on the basis inter alia of an earlier CTM registration for Jack & Jones covering identical goods. The Court confirmed the similarity between the two marks that had also been found by the Opposition Division and the Appeal Board. Here is a flavour of the Court's reasoning:

The differences between Jack and James and the absence of an ampersand in the CTM applied for were not enough to avoid a conclusion of visual similarity;
The words Jack and James have a certain phonetic similarity, given the fact that they both begin with the "dj" sound and are both monosyllabic. Further, the word "and" (or equivalent) is commonly used and will not be very striking phonetically. It followed that there was a phonetic similarity.

Consumers might interpret the two marks at issue as referring to the same person...the presence of the ampersand did not exclude all conceptual similarity between the signs.

Instead of picking every letter and syllable of these two marks apart for analysis, might the writer suggest that they are considered as a whole. One is a full name of a single person (James Jones), the other will be seen as the surnames (or possibly first name and surname) of two people. This fact alone should be enough to allow consumers who, on the whole, are quite sophisticated when it comes to purchasing clothing (or footwear or headgear), to distinguish clearly between the two marks.

Further, although it does not appear to have been an issue raised in these proceedings, Jones is a very common surname in the English (or Welsh) speaking world. This fact is evidenced by numerous names containing Jones being registered as CTMs in Class 25. See, for example, Devon & Jones, Bullock & Jones, Crockett & Jones, Indiana Jones, Indigo Jones, Joyce Jones (& Device), Tom Jones, Catherine Zeta-Jones, Bobby Jones, the list goes on. The writer is aware that this fact alone is not persuasive when considering the weight to be given Jones in the two marks at issue above (although, in his opinion, it should be). However, it is submitted that it is a clear pointer towards the fact that the owners of these marks believe that they can coexist, both on the register and in the market, without any likelihood of confusion.

It is simply not understood, why in the absence of a reputation acquired through significant use of a name mark (for example, Calvin Klein, where a link with a later Klein name mark could be imagined), the authorities believe that the consuming public who, in their private lives, are perfectly capable of distinguishing between two names with a common element, mysteriously lose that ability when they enter a shop.

If you register an unusual bottle shape as a CTM what breadth of protection will you receive against competitors? Extremely narrow appears to be the answer judging by the European Court's decision in Weldebräu v Kofola Holding (T-24/08).

Kofola applied to register (CTM 3367539) the shape of a transparent glass bottle having a helical-shaped neck and the (almost illegible) word snipp at the bottom of the bottle in Classes 30, 32 & 33.  Weldebräu opposed the CTM application based on their earlier CTM registration (no. 690016) for a green glass bottle also having a helical-shaped neck protecting goods in Classes 21, 32 and 33.

The opposition was rejected by both the Opposition Division and the Board of Appeal, given the visual differences between the two bottle shapes. Weldebräu appealed to the General Court.

The General Court confirmed the earlier decisions. In the Court's view no phonetic or conceptual comparison between the marks was possible, the latter point being agreed by the opponent. The Court therefore concluded that the comparison was purely visual. On that basis, given the differences in the height, width and colour of the two bottles, a lack of visual similarity was found.

The writer disagrees with the conclusion that no conceptual comparison could be made between these two marks. Both bottles had helical-shaped necks, a shape that appears to be highly unusual in the trade. Surely a bottle with a spiral neck is a "concept", in which case both marks are conceptually identical.  

In spite of this, it is also true that the two bottle shapes are visually quite dissimilar and it is therefore understandable, on the basis of the evidence (or lack of evidence) that was filed by the opponent, why all three Tribunals rejected this opposition.

If it is true, as Weldebräu maintains, that their helical-shaped bottle neck was, until Kofola appeared, unique, then they should have done far more to maintain their monopoly in this shape by emphasising its unique nature (and unique source) in its advertising and on its packaging. Nothing of this nature appears to have been filed by the opponent in this opposition. If you develop a unique product shape and go to the trouble of producing it, then flaunt it in a manner that leads to instant recognition and immediate association with either a brand or the producer. Anything less will eventually lead to a loss of monopoly and, in the longer term, generic status.

If Nestlé can monopolise "a mint with a hole", then Weldebräu should have been able to monopolise "a bottle with a spiral". Unfortunately for Weldebräu it may now be too late.