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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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Snippets Spring 2013

Pelikan Vertriebsgesellschaft (Pelikan) is a German supplier of writing instruments, stationery and printing materials. They employ a distinctive combination of the word Pelikan and a Pelican device (see below) to identify their products.
In 1996, Pelikan protected its combination mark with two CTM registrations. One (CTM 179242), in Classes 2, 9 & 16, covered the goods that they actually sell. The other (CTM 179226) covered a wide range of different goods and services in fifteen Classes including Classes 35 and 39. These goods and services are generally absent from the Pelikan sales catalogue. In 2003, both of these CTMs were approaching the end of their non-use grace periods. No doubt on advice, they therefore refiled for a different combination of the word Pelikan and a Pelican device. The differences between the 1996 combination and the 2003 version would do justice to a spot-the-difference competition but, in the end, turned out to be crucial. This (2003) case was eventually registered (in 2008) for goods and services in ten Classes, including Pelikan’s core goods in Classes 2, 9 & 16, as well as services in Classes 35 and 39. Pelicantravel.com (pelicantravel) is a Slovakian travel agency operating, under the banner Pelikan (rather than Pelican), principally in the Czech Republic, Hungary and Slovakia. They sought to register the trade mark pelikan for relevant services in Classes 35, 39 and 43 in the UK but the application was withdrawn in 2008. A little later in the same year, pelicantravel sought to clear the CTM register of rights protecting the mark Pelikan for services in Classes 35 and 39, as well as “the provision of food and drink” and “temporary accommodation”. They did this first by seeking to revoke Pelikan’s 1996 dated CTM registration (no. 179226) on the ground of non-use. Pelikan put in some evidence of their supply of promotional stationery materials to the German company Henkel, claiming that this amounted to the provision of “advertising services”. However, this argument was rejected and Pelikan’s CTM 179226 was revoked in respect of both Class 35 and 39 services and “the provision of food and drink” and “temporary accommodation”. It will be noted that Pelikan made no attempt to save the services attacked other than those in Class 35. In addition to this successful action against Pelikan’s CTM 179226, pelicantravel also sought to cancel Pelikan’s newly granted (2003 dated) CTM registration for a (very slightly updated) combination mark, in so far as that registration covered services in Classes 35 and 39. The basis for this action was that Pelikan’s CTM application had been filed in bad faith (Article 52(1)(b) CTMR) in respect of the Class 35 and 39 services claimed. Pelicantravel argued that Pelikan’s 2003 dated CTM application was a repeat application for a slightly different mark to that protected by Pelikan’s 1996 CTM registration. The aim of the 2003 dated CTM application was in part, according to pelicantravel, to prevent the loss of registered rights in services (Classes 35 and 39) that had never been supplied by Pelikan. According to pelicantravel, such a refiling was, based on OHIM’s Guidelines, a bad faith filing. The cancellation action was rejected by both the Cancellation Division and the Board of Appeal. In the Board of Appeal’s case, in spite of a finding that Pelikan’s 2003 dated CTM application covered a mark that was insignificantly different to the mark of Pelikan’s 1996 dated CTM registration. Pelicantravel appealed to the (European) General Court. The Court agreed with the Board of Appeal regarding the differences between the two marks. In the Court’s view, the differences between the signs were so insignificant as not to be noticeable by the average consumer. However, in the Court’s view, that was not enough to establish Pelikan’s bad faith. Pelikan had argued that it was the 125th anniversary of the creation of their Pelikan brand, in 2003, that had caused them to “modernise” their trade mark and to seek to protect that “modernised” version with a CTM registration. The fact that this anniversary coincided with their two earlier CTMs falling out of their grace periods was not mentioned. The Court was happy to accept Pelikan’s argument. In their view, the evolution over time of a logo intended as a graphic representation of a mark constituted “normal business practice”. The Court was also persuaded by the argument that Pelikan’s new (2003 dated) CTM application covered in a single application the goods and services that had previously been protected by two CTM registrations. In the future therefore, Pelikan might be able to rely on one CTM right rather than two. Pelicantravel argued that Pelikan had never supplied Class 35 or 39 services under its combination mark. In this regard, they pointed to the recent revocation of Pelikan’s CTM 179226. The Court was unmoved by this argument. Taking the Board of Appeal’s line on this, they found that, whilst it could be true that Pelikan had not supplied Class 35 and 39 services in the EU between 1996 and 2008, this had not conclusively been shown. Pelikan’s CTM 179226 had been revoked (for non-use) in 2008. This fact could not however establish that Pelikan had no intention to use their “modernised” trade mark for Class 35 and 39 services in 2003 when they had filed their CTM application (for the modernised trade mark). The Court also noted that Pelikan’s (2003 dated) CTM claimed specific services (about two A4 pages of them), whilst their 1996 dated CTM registration claimed the Class headings. The Court suggested that this could show that Pelikan had “decided to direct its commercial policy towards services in which it was interested or which might interest it in the near future”. Well, tell that to the marines. Most of pelicantravel’s other arguments about the unjustified nature of Pelikan’s 2003 dated CTM application, were dismissed as “speculation” and the Court ruled that this 2003 dated CTM could not be regarded as a mere repeat application made in bad faith. The new CTM was for a “modernised” mark covering an updated list of services. Pelicantravel also tried to convince the Court that the very long list of Class 35 and 39 services in Pelikan’s 2003 dated CTM application, together with the fact that they had failed to show any use of their Pelikan combination mark in the related revocation action, was further evidence of bad faith. Taking the EU authorities’ usual stance on unjustifiably broad specifications of goods/services, the Court accepted that such behaviour was not unethical, dishonest or in bad faith. Finally pelicantravel argued that Pelikan was using its CTM rights in Pelikan (word and combination) to seek to prevent the registration and use of the trade mark Pelikan by third parties, including pelicantravel, in areas that were completely unrelated to the commercial interests of Pelikan. This argument was also rejected, first because the evidence to back it up was said to be limited and second because, on the face of it, Pelikan was merely exercising its legitimate rights in the trade mark Pelikan. Pelikan is a supplier of writing instruments, stationery and printing materials. In spite of that fairly narrow commercial interest, they are seeking to maintain a monopoly in the trade mark Pelikan (with or without a Pelican device) on the CTM register for all goods and services. As part of the campaign, they now own CTM registrations for the word mark in twenty four Classes and for the word & device mark in eighteen Classes including pharmaceuticals in Class 5 and food products in Classes 29 and 30. They are perfectly entitled to try to maintain such a monopoly. The fact that both OHIM and the European Court allows them to continue to monopolise the marks, even after the non-use grace periods for their original CTM rights have expired is, in the writer’s view, a fair reflection of the dysfunctional nature of trade mark law and practice in the European Union and the failure of that law and practice to mirror the realities of the marketplace.

The association of the rooster (or cockerel) with France probably dates back to the Middle Ages. It appears to stem from a play on words, Gallus meaning both an inhabitant of Gaul and a rooster (or cockerel).

As wars between nations came to be fought out on the sporting field, rather than on the battlefield, such emblems tended to become associated with national teams. France is no exception; the Gallic rooster features as part of the badge on the shirts of both the French football team and the French rugby union team. Indeed, when the writer used to play rugby, which was not in the pre-Jurassic period as his children maintain, a trip to Twickenham to watch England play France at rugby union was never complete until a cockerel or two ran on to the pitch closely followed by a number of spectators wearing berets; happy days. Now, of course, the cockerels would not get beyond the lumpen security that envelops all major sporting events and would be confiscated as a health and safety hazard. Another pleasing feature of modern sport is the constant changing of a team’s shirt and badge so that their “official shirt sponsors” can sell more merchandise at inflated prices. And so it came to pass that in 2007, the French rugby union authority (Federation Français De Rugby) filed a CTM application (CTM 5713888) for the latest French rugby union badge in seventeen Classes, including, being French and a rugby authority, “alcoholic beverages” in Class 33. The mark to be protected featured a Gallic rooster, as well as the acronym F.F.R. Chianti is a wine produced in the Chianti region of Tuscany. It was long associated with a bottle sitting in a straw basket, called a fiasco; however that tradition appears to be dying out. Some of the premium Chianti wines are identified as Chianti Classico and are produced in the biggest sub-area of Chianti. The quality of such Chianti Classico wines is jealously guarded by the Consorzio del Vino Chianti Classico, a union of producers from the sub-region. The famous seal of the Consorzio, which serves both to promote the wine and to prevent wine fraud, bears a black rooster (gallo nero). The seal, in its various forms, is protected by Italian and UK collective trade mark registrations including the one set out on page 11 (IT 856048). All of these collective marks protect wines and/or Chianti wine. The French and the Italian roosters came into conflict when the Consorzio opposed the FFR’s CTM application for their new badge. The opposition was based primarily on the Consorzio’s collective marks and was aimed at the Class 33 coverage in the opposed CTM application. The Opposition Division upheld the opposition finding the FFR’s mark to be confusingly similar to the Consorzio’s UK collective trade mark. On appeal, the Fourth Board of Appeal annulled that decision and rejected the opposition. Finding no likelihood of confusion between the marks, the Board of Appeal noted that the coincidence of both marks having a device of a rooster shown from the side and facing left should “not be overestimated”. They also remarked that a rooster contained in both marks at issue could not in itself “cause a relevant conceptual similarity”. The Consorzio appealed to the General Court arguing that FFR’s CTM application should be rejected in respect of “wines”. The Court rejected the appeal. Unlike the Board of Appeal, the Court found that the CTM mark applied for and the earlier collective marks all had “the significant presence of a rooster” at their centre which led to a certain degree of visual similarity. This visual similarity was however weakened somewhat by other visual aspects of the conflicting marks. As far as phonetic similarity was concerned, the Court concluded unsurprisingly that there was none. Turning finally to conceptual similarity, the Court considered that the respective designs introduced conceptual differences. The CTM mark resembled an armorial emblem associated with nobility or guilds. By contrast, the earlier marks were more akin to a seal indicating the mark of a sovereign-territory. The obvious conceptual identity in both marks, the simple idea of a rooster, was not mentioned by the Court, although that animal’s association with the concept of pride was referred to and given little or no weight. Taking all of the above into account, the Court crucially found that the contesting marks were dissimilar in concept. Moving onto an overall assessment, the Court decided that the FFR’s mark and the Consorzio’s marks had only a low degree of similarity. So low in fact that, even bearing in mind the identity of the Consorzio’s Chianti wine and the FFR’s “alcoholic beverages”, the Court found that there was no likelihood of confusion and consequently dismissed the Consorzio’s appeal in respect of the ground of opposition based on Article 8(1)(b) of the CTM Regulation. As far as the Article 8(5) CTMR (reputation/ unfair advantage/detriment) ground of opposition that had also been raised by the Consorzio, this had been dismissed by the Fourth Board of Appeal simply on the basis of the dissimilarity that they had found in respect of the marks. The Court didn’t like this, stating that the Board should always carry out a full analysis of each ground of opposition. In view of that, the Board of Appeal’s decision on the Article 8(5) ground was annulled. Presumably, this ground will now return to OHIM for further analysis. One wonders when the OHIM authorities will finally understand the beauty of writing a full analysis of case law and practice for each ground of opposition and then topping and tailing it for the case in point. Quick and easy and likely to avoid the sort of embarrassment that was heaped on the Board of Appeal by the Court in this case.

Iceland is a Nordic European island country located between the North Atlantic and the Arctic Oceans. It became independent in 1918 after centuries of first Norwegian and then Danish rule. It has a population of about 320000 and is famous for its mountains, glaciers, volcanic activity and fish.

The country claims the world’s oldest, still functioning parliament, the Althing, founded in AD 930. It has also been at the forefront of the fight for gender equality. From a poor, fishing and agricultural based economy prior to the Second World War, the country flourished thereafter assisted by aid from the Marshall Plan. By the 1990s, it had become one of the wealthiest countries in the world, a position that was jeopardised in recent times by the collapse of the country’s profligate banks. This is not the only Iceland known to the UK population however. In 1970, Malcolm Walker opened his first Iceland store in Shropshire. As the name would suggest, the store specialised in frozen foods. The company grew quickly until, in 1989, it was able to buy its (much larger) competitor in the frozen food market, Bejam. This led to a well-known joke in the UK “If Zimbabwe used to be known as Southern Rhodesia, what was Iceland previously known as: Bejam”. This conflict of meanings recently came to a head before the UK Trade Mark Office. In August 2003, Iceland Foods Limited, a company that by that time had expanded to over 750 UK stores, applied to register the trade mark Iceland for a very wide range of goods and services in twenty one Classes (3, 4, 5, 6, 7, 8, 9, 11, 16, 20, 21, 29, 30, 31, 32, 33, 34, 35, 41, 42 and 43). The application was opposed by thirteen, Iceland based opponents, including The (Icelandic) Ministry of Foreign Affairs and The Federation of Icelandic Fishing Vessel Owners. The oppositions were based primarily on the geographic meaning of Iceland (Section 3(1)(c) of the 1994 Act).

Having considered the copious amounts of evidence filed by the opponents outlining details of the Nordic country and international trade to and from Iceland, the Hearing Officer considered the case and, perhaps somewhat surprisingly, decided that the trade mark could proceed for the vast majority of the goods and services claimed. In fact, the only goods and services refused were

• A variety of cosmetic and skin care products in Class 3;

• Fish based food for babies in Class 5;

• Industrial freezers and refrigerators (and similar industrial products) in Class 11;

• Meat, fish, poultry and game, none being live, as well as fish based prepared meals and snack foods in Class 29;

• Living animals in Class 31;

• Mineral and carbonated waters in Class 32; and

• Arranging business introduction and provision of trade information in Class 35.

The remaining goods and services, two A4 pages of them, were allowed to proceed to registration. Anyone thinking that this decision, which we have no doubt was utterly impartial, could be seen as a small quid pro quo for the £2.3 billion said to be owed to the UK by Iceland in the wake of the 2008 banking scandals, should put such unjustified thoughts entirely out of their minds. Further, given that the Iceland Foods’ trade mark application is still listed as pending, it may be sensible to allow the (volcanic) dust to settle on the case before passing final judgement.

Another northern European country, Scotland, is also famous for many reasons, Ben Nevis and Loch Ness, Alexander Graham Bell, Robert Burns, Sean Connery and Alexander Fleming, bagpipes, haggis, kilts, tartan, whisky and…deep fried Mars bars. This latter delicacy, which is prepared by deep frying the well-known chocolate confection in batter is said to have originated in 1995 in a fish and chip shop situated in the small Aberdeenshire town of Stonehaven. The owners of the Carron Fish Bar, Mr & Mrs Watson, claim to sell about 150 of these gourmet dishes a week, sometimes in combination with chips, as a Mars bar supper. Mmm, yummy.

In order to protect their rights from fancy London restaurants that produce their own versions, no doubt first frozen in liquid oxygen, then covered in filo pastry, fried in truffle oil and finally dusted with a light coating of icing sugar, it was reported last year that the Watsons had applied to register Stonehaven Deep-Fried Mars Bar with the EU authorities, as a Protected Geographical Indication (PGI). These reports apparently drew the attention of the Mars confectionery group to the Scottish couples’ activities. They received a letter from the company’s lawyers which made it clear that their dish did not fit in with the company’s promotion of a “healthy active lifestyle” (needed to work off the calorific effects of the Mars bar) and that it should be made clear to all purchasers of the Stonehaven product that it was not authorised or endorsed by Mars. This minor legal slap on the wrist, together with the mountainous paperwork involved with filing a PGI, has now caused the Watsons to drop their bid for protected status. As the poet Robert Burns once wrote “The best laid schemes o’ mice an’ men, Gang aft a-gley”. Spelling was never his strong suit. Coincidentally, it is reported that Newmarket Sausages has become the UK’s 50th Protected Food Name (PDO/PGI/TSG). In addition the UK has 16 pending applications. This protection of local agricultural produce is dwarfed however by France who account for 254 such registrations and applications.

In the General Court case of Sogepi Consulting y Publiidad v OHIM (T-72/11), it was confirmed that even descriptive words from minority (or regional) EU languages will be refused under Article 7 of the CTM Regulation.

Sogepi had applied to register the sign Espetec for “raw pork and dried meat sausages” in Class 29. An eagle-eyed CTM Examiner rejected the CTM application on the basis that the word espetec means “salami” in Catalan. This decision was confirmed on appeal by both the Second Board of Appeal and the (European) General Court, even though Catalan is not an official language of the EU. The Court ruled that a regional language, written and spoken in only a part of an EU country (in this case France and Spain), could form the basis of a rejection of a CTM application under Article 7. An attempt by Sogepi to overcome the objection by showing use of their mark in the relevant region was also rejected. This was thwarted, at least in part, by the CTM applicant’s use of Espetec in combination with a house mark “Casa Tarradellas”. Further, their position was probably not strengthened by one of their earlier CTM registrations for an Espetec label which claimed “Espetec type pork sausages” in Class 29. Sogepi now market their product as “Espetec fuet”, fuet being another Catalan word for thin, cured, dry pork sausage. This is clearly an attempt to reclaim rights in Espetec after their ill-fated encounter with the EU trade mark authorities. However, it may already be too late to put the Espetec genie back in the bottle. Taking the broad view, that is how will this ruling affect me and my clients, it is to be assumed that descriptive words in Gaelic, Welsh and even Cornish will now be refused by the CTM authorities.

How much difference does a single letter make when comparing two trade marks? Two recent decisions of the UK Trade Mark Office suggest that it depends on the letter and how it appears in the mark.

In the first case, Nicola Fletcher v De Rigo S.P.A. (O/320/12), the mark applied for was Polite on a dark rectangular background covering “clothing, footwear and headgear” in Class 25. This UK trade mark application was opposed by De Rigo on the basis of an earlier CTM registration for Police covering, amongst other goods, “clothing (except police uniforms), footwear, headgear”. De Rigo’s evidence consisted mainly of examples of the widespread use of signs bearing the legend “Polite Notice” in the UK. The writer notes that these signs are always designed to be mistaken for “Police Notice” and are also usually accompanied by the words “No Parking”. They tend to appear miraculously outside large houses when major sporting events are taking place in the area. The only sensible reaction to such a sign is to park right next to it. De Rigo also referred to the actual use of the mark applied for that was being made by Ms Fletcher’s company Equisafety in respect of horse riding apparel and headgear. They noted, correctly, that it bore a striking resemblance to genuine police equipment. The Hearing Officer began by confirming that, when comparing the two marks, he had to consider what was fair and notional use. In a crucial finding, he was unwilling to accept that the actual use of Polite (on a dark rectangle) that was being made by Ms Fletcher’s company (Equisafety) could be considered notional and fair use. The use of a high-visibility yellow colour and of chequered marking went beyond that. It was doubtful that the use illustrated would even be regarded as trade mark use. The Hearing Officer did accept however that Ms Fletcher’s mark was intended to mimic the type of signage used by the police force. Bearing the above in mind, the Hearing Officer considered that the two marks had a reasonable degree of visual similarity and a low degree of phonetic similarity. This was offset somewhat by the clear conceptual dissimilarity.

It followed, in the Hearing Officer’s view that, even taking into account the identity of the Class 25 goods at issue, there was no likelihood of confusion. The Hearing Officer noted that

• The marks had to be compared without reference to any extraneous matter;

• Police forces in the UK do not sell or trade mark their own clothing ranges; and

• The average UK consumer would exercise a reasonable degree of attention when purchasing Class 25 goods.

De Rigo’s opposition was therefore rejected.

The above decision should be compared with another UK opposition between Adelphoi Limited and DC Comics (O/504/12). Adelphoi had applied to register the trade mark Batsman in respect of a wide range of goods and services in Classes 5, 16, 25, 30, 32, 38 and 41. All of these goods and services were limited to products that related to the sport of cricket. DC Comics opposed on the basis of their earlier registered rights in the trade mark Batman for identical or similar goods and services, as well as their reputation in that mark in the UK. The Hearing Officer found a high degree of visual and phonetic similarity between the marks, as well as a conceptual difference between Batsman (a cricketing term) and Batman (a comic book character). However, when considering the likelihood of confusion, the Hearing Officer concluded that, in relation to the goods and services claimed, consumers were likely to miss the difference in concept, given the visual and phonetic similarities between the marks. He therefore agreed that there was a likelihood of confusion and that DC Comics’ opposition succeeded. The way is therefore clear for the next films in the Batman franchise; Batman: The Capped Cricketer and Batman: Gotham and Botham. Although, perhaps not, because in the above oppositions, the earlier CTM right relied on by DC Comics was still within its non-use grace period. Now it is outside that grace period and Adelphoi has refiled for its trade mark Batsman. It follows that, when DC Comics comes to oppose Adelphoi’s new UK trade mark application, they will have to prove genuine use of their Batman trade mark for a wide range of goods and services. Pow! Bam! Zap! Holy Expletives, Batman! 

In 2002, Nestle filed a CTM application (no. 2632529) for the shape of its four finger KitKat chocolate biscuit. The specification of goods claimed was “chocolate, chocolate products, confectionery, candy, sweets, bakery products, pastries, biscuits, cakes, waffles” in Class 30.

The CTM Examiner initially rejected the application as non-distinctive (Article 7(1)(b) CTMR). After filing substantial quantities of evidence of use of the shape (as a KitKat biscuit), the Examiner allowed the application for “sweets, bakery products, pastries, biscuits, cakes, waffles” but maintained the Article 7(1)(b) objection against “chocolate, chocolate products, confectionery, candy”. The rejection of these latter products was maintained by the Second Board of Appeal in Case No. R118/2004-2. Nestle’s joy at obtaining a CTM registration for its well-known “KitKat” shape was short lived. In 2007, Cadbury Holdings (formerly Cadbury Schweppes) applied to cancel the CTM registration on a variety of absolute grounds including lack of distinctiveness (Article 7(1)(b)) and technical function (Article 7(1)(e) (ii)) CTMR.

The Cancellation Division declared the CTM invalid on the basis of Article 7(1) (b). Having first found that the shape was inherently non-distinctive, the Cancellation Division then moved onto the copious amounts of evidence of “acquired distinctiveness” filed by Nestle, picking holes in it as they went along. Relying on the unrealistic standards of proof that are usually required by OHIM, the Cancellation Division found that 

• There were no brand awareness figures for five of the relevant EU states (fifteen at the date of filing);

• In Sweden, a 51% level of unaided consumer recognition of the four finger bar was not enough to show that the shape had become an indicator of commercial origin. In Denmark and Finland, figures of respectively 37% and 30% were also unpersuasive.

• In Austria, a 1-2% share of the entire chocolate market was not convincing.

• The fact that acquired distinctiveness had been established in the five most populous countries of the EU, namely France, Germany, Italy, Spain and the UK, was not enough to overcome the lack of (acquired) distinctiveness in the remaining EU countries. The lack of homogeneity in the EU chocolate market meant that it was not justifiable to extrapolate the position in the five major EU countries to the remaining jurisdictions.

Nestle appealed. The case again went to the Second Board of Appeal, although, by the time of this second appeal, the faces on the Board had changed. The Board took a different, and far more realistic, view of the position. The Board began by confirming that the shape lacked inherent distinctiveness in relation to the registered goods. After that, they disagreed with the conclusions of the Cancellation Division. According to the Board, “In general, it would be unreasonable and disproportionate both to request the owner of the trade mark to divert and invest important quantities of money in collecting evidence of the acquired distinctiveness in each corner of the Internal Market and to refuse protection to a trade mark whose recognition has been duly shown for the vast majority of the territory of the European Union”.

Bearing that in mind, the Board noted that

• France, Germany, Italy, Spain and the UK had nearly 80% of the EU’s population (at the time Nestle filed its CTM application);

• Taking into account the market awareness of the KitKat biscuit shape in those countries, at least 42.5% of the EU’s population had immediately recognised the shape (as KitKat);

• Even though the evidence was not as strong in the remaining EU countries it was still entirely satisfactory showing either reasonable levels of market awareness or good sales or both.

On this basis, the Board concluded that Nestle had shown acquired distinctiveness in a substantial part of the EU. It therefore annulled the invalidation of the CTM registration under Article 7(1)(b). This finding also led the Board to reject Cadbury’s claim that Nestle’s shape was descriptive (Article 7(1)(c)) and common to the trade (Article 7(1)(d)) CTMR. Finally, turning to the technical function ground (Article 7(1)(e)(ii)), the Board noted that this absolute ground of rejection could not be overcome on the basis of acquired distinctiveness. However, they also found that the essential characteristics of the mark did not perform a technical function. This conclusion was reached even though the Board accepted that the claimed shape of the goods “may contribute to the easier portioning of the product”. Taking all of the above into account, the Board rejected Cadbury’s invalidation action and maintained Nestle’s CTM registration. This is an extremely sensible decision based on a realistic view of the level of evidence that should be required to establish the acquired distinctiveness of marks such as shapes, colours or get-up. Having said that, there is still something rather odd about this case. First, how on earth could the mark be accepted for “sweets, bakery products, pastries, biscuits, cakes, waffles”, yet be rejected for “chocolate, chocolate products, confectionery, candy”? The acceptance of biscuits and the rejection of chocolate products, given that KitKat is a chocolate biscuit product is particularly difficult to rationalise. Second, how does evidence of acquired distinctiveness for the shape of KitKat chocolate biscuits save the whole of a specification covering sweets, bakery products, pastries, cakes and waffles, as well as biscuits? It seems clear to the writer that Nestle’s CTM application should have been accepted (on the back of their evidence) for chocolate products (or possibly the narrower chocolate covered wafer bars) and biscuits. It should then have been maintained as valid for those products. Past experience suggests that this case is not over yet and that the General Court should expect to receive an appeal in the near future.

Another day, another trade mark dispute between the members of a pop group. This time it’s The Swinging Blue Jeans; a band that had big hits in 1963 and 1964, with Hippy Hippy Shake and Good Golly Miss Molly, but not much success since. As with many 60s groups, the four piece combo has been through many changes of personnel. However, one constant throughout almost the whole history of the band was the guitarist and vocalist, Ray Ennis, who was with the group during its heyday and only retired from performing in May 2010, having informed the other members of the band of his intentions in August 2009.

Alan Lovell was another member of The Swinging Blue Jeans at the time of Ray Ennis’ retirement, having been the lead guitarist since 1999. In February 2010, just three months before Mr Ennis’ retirement, Alan Lovell filed a UK trade mark application for The Swinging Blue Jeans in Class 41. He did not inform Ray Ennis about this application. Strangely, it was the first ever UK trade mark application filed to protect the band’s name. The case proceeded to registration on 4 June 2010. Three weeks later, Mr Ennis sought to rectify the UK trade mark register by replacing Mr Lovell’s name with his own as the proprietor of the registration, principally under Section 64 of the Trade Marks Act 1994. Sub-section (1) of that Section reads: “Any person having a sufficient interest may apply for the rectification of an error or omission in the register: Provided that an application for rectification may not be made in respect of a matter affecting the validity of the registration of a trade mark”. Mr Ennis argued that he was in charge of the business side of the group and that Mr Lovell had been a musician hired by him (Ennis) for ten years, including at the time he (Lovell) filed the UK trade mark application. Mr Ennis also argued that since 1966, following the departure of two of the original members of the group and the death of a third, he (Ennis) had become the sole proprietor of the band’s name. Mr Lovell denied that he was an employee of Mr Ennis or that Mr Ennis was the sole proprietor of the name. He noted that Ray Ennis had retired from the group on 30 May 2010 (before the UK trade mark application was granted). Mr Lovell also alleged that in July 2010 Mr Ennis had purported to grant a licence to use the mark (The Swinging Blue Jeans) to two performers (Messrs Hubbard and Sweeney) who were said to be totally unconnected to the band. The aim of this licence was said to be to deprive Mr Lovell of his right to continue to perform under the banner The Swinging Blue Jeans.

Bearing the above, as well as much e-mail traffic between the warring parties, in mind, the Hearing Officer considered Mr Ennis’ application to rectify under Section 64. He decided that the case was not well-founded. The basis of this decision was as follows:

• Mr Ennis claimed to be the sole owner of unregistered trade mark rights and the attached goodwill in the trade mark The Swinging Blue Jeans;

• If this were correct, it would allow him to invalidate Mr Lovell’s trade mark registration under Section 47(2)(b) of the Act;

• It followed that Mr Ennis’ case rested on “a matter affecting the validity of the registration…”;

• This was not allowed under Section 64(1) of the Act.

In view of this reasoning, the rectification action failed.

It is clear that Mr Ennis should have applied to invalidate Mr Lovell’s trade mark registration on the basis of unregistered trade mark rights (Section 47(2)(b)) and probably also on the ground of bad faith. He should also have filed his own trade mark application for the trade mark The Swinging Blue Jeans. It remains to be seen if his interest in the name remains strong enough to do any of these things.

The difficulty of predicting whether or not two trade marks will be found to be confusingly similar under OHIM practice was further illustrated in the (European) General Court case (T-566/10) between the major US machine manufacturer Caterpillar Inc and Ms Judith Ertmer who owns the trade mark rights for a German competitor (of Caterpillar), Erkat Spezialmaschinen.

The German company has been operating since about 1997. It now operates in Central and South America, China, India, the Middle East and Russia, as well as in Europe. In 2002, Ms Ertmer filed a CTM application for the trade mark erkat for excavation machinery and related goods and services in Classes 7 and 42. This case was not opposed and proceeded to grant in 2003. Four years later, the US conglomerate applied to cancel Ms Ertmer’s CTM on the back of its earlier national and CTM rights in the word CAT and the well-known CAT logo covering identical or highly similar Class 7 goods and Class 42 services, as well as in view of Caterpillar’s widespread reputation in these marks.

The Cancellation Division rejected Caterpillar’s action, primarily on the basis that the trade mark erkat was not similar to the applicant to cancel’s CAT logo. Caterpillar appealed and the First Board of Appeal took a different view. According to the Board

• Bearing in mind Caterpillar’s reputation in the trade mark CAT, and given that, in the contested trade mark the element er- is shorter than –kat so that the latter element is more eyecatching, there exists a likelihood of confusion between the signs; and

• Such confusion is even more likely where the relevant professional or the highly skilled targeted public would recognise the prefix er- as referring to “erosion” or “erode” which was the purpose of the contested goods (and services). This again meant that the relevant public would give more importance to the –kat element.

Having drawn these rather extraordinary conclusions, the Board annulled the decision of the Cancellation Division and cancelled Ms Ertmer’s CTM registration. No doubt with a look of great surprise on her face, Ms Ertmer appealed to the General Court. Showing a degree of common sense that was signally absent from the Board of Appeal’s decision, the Court ruled that

• The trade mark erkat would be perceived as a single word and would not be deconstructed artificially into its separate parts;

• The two marks erkat and CAT were visually dissimilar, given that they only shared the final two letters –AT;

• The marks were also phonetically dissimilar given the different number of syllables and the different beginnings to each mark;

• The goods and services at issue were offered to construction and engineering specialists. They would therefore be chosen and purchased with great care; and

• None of the above was altered by Caterpillar’s significant reputation in their distinctive trade marks CAT and CAT logo.

Bearing all of the above in mind, the General Court reinstated the Cancellation Division’s decision and rejected Caterpillar’s cancellation action. Whilst this case is now closed, anyone considering the registration and use of a mark such as Meerkat for excavation machinery should note that Caterpillar now owns a CTM registration for Kat for relevant goods and services in Classes 7, 12, 37 and 42. Whether they will use that CTM right to seek to prevent the actual use of the trade mark erkat made by their German competitor, a use that emphasises the middle letter k and therefore the element –kat in erkat, remains to be seen. Such a case might raise some rather interesting questions regarding acquiescence.

Another case in which two marks that would be seen as too close for sweets but are deemed to be distinguishable for pharmaceutical products has been reported. In this case, Ozone Laboratories Pharma v Pharmazeutische Fabrik Evers (T-517/10), the Romanian company, Ozone, had filed a CTM application for the trade mark Hypochol covering inter alia “cholesterol-lowering pharmaceutical preparations” in Class 5. This CTM application was opposed by Evers on the basis of an earlier German trade mark registration for a combination of the mark Hitrechol and some Chinese characters covering “drugs and pharmaceutical products”. The opponent used its mark for a treatment of gallstones.

The opposition was rejected by both the Opposition Division and the Fourth Board of Appeal. Evers appealed to the (European) General Court. Following the usual misguided practice in Class 5 oppositions, the Court noted that the relevant public, including patients suffering from cholesterol-related disorders, would have a high level of attention and would therefore be more likely to notice differences between trade marks. The Court then proceeded to analyse the two marks letter by letter. They found that

• The prefixes Hitre- and Hypo- were visually different;

• The syllables –po and –tre and the letters y- and i- were pronounced differently in German;

• The prefix Hypo- was commonly used in the German health sector;

• The suffix –chol was descriptive of the relevant goods; and

• The Chinese lettering in the opponent’s mark led to a conceptual difference between the two marks.

No mention was made of the possibility of imperfect recollection or the danger of taking the opponent’s treatment for gallstones instead of a treatment for lowering cholesterol and the related cardiovascular diseases. It should come as no surprise, given the practice followed by the trade mark authorities in pharmaceutical oppositions, that the Court agreed with the Opposition Division and the Board of Appeal and rejected the opposition. The above case should be contrasted with another recent European Court decision, this time involving Class 10 goods. In this case, Retractable Technologies v Abbott Laboratories (T-371/09), the marks at issue were RT in a circle (CTM mark applied for) and RTH (an earlier Spanish trade mark registration). The respective Class 10 goods, medical apparatus and instruments (opposed CTM) and enteral feeding apparatus (earlier Spanish right) were either identical or highly similar. Astonishingly, given that the goods involved are employed in medical or related procedures in hospitals and are clearly bought and used with care by hospital staff, the Court agreed with both the Opposition Division and the Fourth Board of Appeal and found that the two marks were confusingly similar. There was said to be a visual and phonetic similarity resulting from the fact that “both marks share the letters R and T, placed at the beginning, that correspond to three syllables when pronounced in Spanish”. An attempt by the CTM applicant to limit its specification of goods, during the appeal to the Court, to exclude the goods actually sold by the opponent in Spain was rejected. Following earlier case law on this point, the Court confirmed that such (“but not including”) amendments have to be made before the Opposition Division or the Board of Appeal. They cannot be made once the case reaches the European Court. The writer is quite often asked to clear two letter marks for registration and use in the EU. Such searches inevitably identify literally hundreds of three letter marks (for identical or similar goods/services) that contain the two letter mark being cleared. The only realistic way ever to clear such a two letter mark is to discount virtually all of such three letter marks on the quite rational basis that they can be distinguished from the two letter mark. Now what do EU trade mark practitioners do, in the light of the above decision, made in respect of highly specialised ( Class 10) goods? As with many aspects of EU trade mark law and practice, the answer will probably have to be to ignore the highly questionable decisions made by OHIM (and the Court) and to hope that one’s luck holds. Any other policy would almost certainly ensure that no trade mark would ever be cleared for registration and use in the EU.

In an interesting case before the UK Trade Mark Office, the US company Thor Tech successfully applied to invalidate a UK trade mark registration for Silver Bullet & Caravan device in Class 12 (caravans and parts and fittings) and Class 37 (caravan conversion).

Thor Tech, who have manufactured and sold the iconic, aluminium-bodied Airstream travel trailers (or mobile homes) in the US since the early 1930s, sought invalidation (under Section 47 of the Trade Marks Act 1994) on the basis of bad faith (Section 3(6)) and earlier unregistered trade mark rights (Section 5(4)(a)). The interesting aspect of the case was that, although the US company had a significant goodwill and reputation in its Airstream product, given

• Its highly distinctive design;

• Its appearance in numerous publications, tv shows and Hollywood films, such as The Right Stuff, Mars Attacks and Independence Day; and

• Its UK sales which grew from about £100000 when it was first introduced to the UK market in 2006 to over £2 million in 2010;

Thor Tech had never themselves used the trade mark Silver Bullet as a trade mark anywhere in the world. This was a nickname for the Airstream trailer that was first coined in about 1937 and was used by the media and the public, in the US, the UK and elsewhere, to refer to the (Airstream) product. It was this third party use that was relied on by the applicant to invalidate. The UK registered proprietor, Silver Bullet Caravans, is an independent UK company that now manufactures “retro” aluminium caravans. It applied to register its Silver Bullet logo in April 2010. The case proceeded to grant in August 2010 without opposition. It was only in December of that year that Thor Tech applied to cancel the right. In their evidence, Silver Bullet Caravans claimed that the Airstream trailer was not the only such, aluminium trailer that was known as a “silver bullet”. Another nine aluminium trailers that were similarly identified were listed. The registered proprietor also noted that, prior to filing their UK trade mark application, they had conducted appropriate searches in the UK and the US and had found no caravan companies using the name. Finally, Silver Bullet Caravans stated that their website contained a disclaimer to any affiliation with the manufacturer of Airstream trailers.

Thor Tech countered by noting that

• None of the third party trailers said to be known as “silver bullets” were produced after 1997,

• The Caravan device of the registered mark was almost identical in outline to that of an Airstream trailer; and

• They (Thor Tech) had been aware of Silver Bullet Caravans’ use of Silver Bullet in the UK in 2008 but that such use had only been in relation to the renovation of imported Airstream trailers. It was when Silver Bullet Caravans began using the trade mark Silver Bullet in relation to new, replica “Airstream” trailers that Thor Tech had raised objections. The application to invalidate the UK trade mark registration being an aspect of that objection.

The Hearing Officer began by reaching a key conclusion on goodwill. He found that “…provided the sign identifies goodwill that attracts custom to the business, that is sufficient. There is no requirement that the holder of the goodwill also uses the sign that identifies that goodwill”. The Hearing Officer then considered the registered proprietor’s claim that the term “silver bullet” referred to a generic style of trailer. He concluded, on the evidence, that, in the UK, it did not. He noted that all of the third party use of “silver bullet” had been in the US and had ceased by 1997. It was not clear that “silver bullet” had become a generic term in the US. The position in the UK was even more doubtful and was certainly not adequate to lead to the view that “silver bullet” was used as a generic term for aluminium style trailers in the UK. Finally, again on the evidence, the Hearing Officer found that, at the April 2010 filing date of the UK trade mark registration, Thor Tech was the only trader selling aluminium bodied trailers in the UK. This increased the likelihood that the UK consumer would have associated the term Silver Bullet exclusively with Airstream trailers at the material date. It followed, in the Hearing Officer’s view, that Thor Tech had the requisite goodwill in the phrase Silver Bullet in the UK. Moving on to the issues of misrepresentation and damage, the Hearing Officer noted

• An electronic magazine article that referred to Silver Bullet Caravans’ relocation and that also contained a link to a website about Airstream trailers; and

• A customer of Silver Bullet Caravans who wrote to Thor Tech complaining about an “American Airstream”. This was enough to conclude that the use of the registered proprietor’s Silver Bullet logo would mislead Thor Tech’s customers and potential customers into believing that Silver Bullet Caravans is associated with Thor Tech. From this it inevitably followed that the Hearing Officer would declare the UK trade mark registration invalid under Section 5(4)(a) of the Act. It is now reported that Silver Bullet Caravans, who appear to have become quite a successful purveyor of aluminium caravans (or trailers), selling their products at reportedly about half the price of their Airstream competitor, intends to rebrand as Retro Rocket. It is a mystery that, even in the wake of the above, significantly evidence based, and no doubt extremely costly, invalidation action, Thor Tech has still not applied to protect the term Silver Bullet either at the UK Trade Mark Office or at OHIM.

Whilst a Silver Bullet may be associated with the open road and the American frontier spirit, a Lambretta motor scooter is synonymous with towns and cities and with the “youth culture” of the 1950s and 1960s.

Designed by Italian aeronautical engineers in the wake of World War II, the Lambretta was meant to be easy to drive, to be able to carry a passenger and to be robust and affordable. The name was derived from a small river (The Lambro) in Milan. The popularity of motor scooters peaked in the mid-1960s but, soon after that, the demand for such vehicles fell, as cheap, small motor cars became increasingly available. The Lambretta manufacturing plant eventually closed in 1972. Salvation arrived however in the rather surprising form of the Indian Government who, through a state run enterprise, Scooters India Limited, bought the factory and the intellectual property rights of the bankrupt company, including the trade mark rights in the name Lambretta. In the UK, these included, in Class 12 (land vehicles and the like), two UK trade mark registrations for the word mark. The Indian backed production of Lambretta scooters reached its peak in the early 1980s, decreasing after that until production stopped again in 1997.

Since then, issues surrounding the ownership of the trade mark Lambretta have become rather murky involving

• Sub-licences from Scooters India to an English company, Fine White Line Limited, to use the trade mark Lambretta for, amongst other goods, those in Class 12, in a variety of countries, including the UK;

• A number of new UK trade mark and CTM applications for Lambretta (word and stylised), covering, amongst other goods, those in Class 12 in the name of Lambretta Srl, which appears to be a company controlled by the entrepreneur Mr Walter Scheffrahn and which is part of the so-called Lambretta Consortium, see http://uk.lambretta.com. Some of these rights were assigned by Fine White Line to Lambretta Srl;

• A new CTM application for Lambretta (stylised), again covering inter alia Class 12 goods, filed in the name of Lambretta Motolife Italia, a Rome based company that appears to have actually produced a new Lambretta motor scooter, the LN125;

• Oppositions and cross-oppositions filed by Fine White Line, Lambretta Srl and Scooters India against their competitors’ trade mark applications; and

• Various non-use revocation actions filed by a Dutch company, Brandconcern N.V., that again appears to be under the control of Mr Scheffrahn, against the UK trade mark and CTM registrations owned by Scooters India for Lambretta.

Brandconcern’s action against Scooters India’s CTM registration is now before the (European) General Court having been successful against all of the Class 12 and 18 goods covered by the CTM, as well as most of the Class 3 goods covered. At the same time, Brandconcern brought non-use revocation actions against five of Scooters India’s UK trade mark rights, including the two that covered Class 12 goods. Scooters India was able to save certain Class 14 and 25 goods but the remainder, including all of the Class 12 goods protected, were revoked. Overall, certainly in respect of trade mark registrations for Lambretta covering Class 12 goods, it now appears that Mr Scheffrahn and his company, Lambretta Srl, has the upper hand, having successfully ambushed Scooters India, Fine White Line and Lambretta Motolife Italia. Here is a classic story of a once well-known and successful brand that has been allowed to fall into disrepair. The successor in title to the original owner, Scooters India, appears to have woken up far too late to the fact that its trade mark rights could be lost, the one company, Lambretta Motolife Italia, that appears at present to be manufacturing and selling a Lambretta scooter, seems to have filed its CTM application for the mark too late, whilst Lambretta Srl, a company that appears to be under the control of a private equity entrepreneur and corporate investor, Mr Scheffrahn, has stepped in to snap up the key trade mark rights for Lambretta, particularly those in Class 12. It may not be to the taste of traditionalists or collectors of classic Lambretta scooters, but it does illustrate perfectly the power of a good trade mark strategy.

The National Lottery is a UK state franchised lottery that was established in 1994. Since the first draw, which was held on 19 November 1994, the National Lottery has been operated by a private company, Camelot Group. It is regulated by the National Lottery Commission, a body that also owns the trade marks associated with the Lottery.

One of those trade marks is the distinctive “fingers crossed” hand device that has been associated with the National Lottery since its inception. The device was protected as a UK registered trade mark in 1995. In 2004, in order to broaden its market, Camelot, together with sister organisations in France and Spain, established a transnational lottery called EuroMillions. The three original EuroMillions participants were soon joined by lotteries in Austria, Belgium, Ireland, Luxembourg, Portugal and Switzerland. Taking into account its new multi-national status, the National Lottery Commission moved to protect its key trade marks throughout the EU. One of the marks protected was the “fingers crossed” device which was filed as a CTM (no. 4800389) in December 2005 and granted in October 2007. This is where the trouble began. The National Lottery’s CTM application (for the “fingers crossed” device) was opposed by an Italian retailer of gaming products, Mediatek Italia, as well as by Mediatek’s managing director, Dario De Gregorio. The opposition was based on the opponent’s unregistered trade mark rights (Article 8(4) CTMR) in a “fingers crossed” device that bore a striking resemblance to the National Lottery’s device, even sharing the same (or very similar) dark blue colour that is actually used by the National Lottery for its “fingers crossed” device. This opposition was rejected however on technical grounds and the National Lottery’s CTM was granted. This did not deter Mediatek however. They immediately filed an invalidation action, together with another individual, Mr Giuseppe De Gregorio, against the recently granted CTM. On this occasion, the applicants to invalidate relied on their ownership of copyright in a black and white image of a “fingers crossed” device combined with the word portafortuna. This action was brought under Article 53(2) (c) (formerly Article 52(2)(c)) of the CTM Regulation which states that a CTM registration “shall also be declared invalid on application to OHIM...where the use of such trade mark (the CTM mark) may be prohibited pursuant to another earlier right under the… national law governing its protection and, in particular…copyright”.

The evidence put forward by the applicants to invalidate purported to show that

• Copyright existed in the portafortuna image under Italian legislation;

• That copyright ran from 1986 and was owned by Mr De Gregorio by virtue of an agreement dated September 1986. A copy of the agreement bearing an official (Italian post office) stamp dated 21 September 1986 was provided;

• In 1988 the portafortuna image had been printed on 400 t-shirts in the Naples (Italy) area.

Taking the above into account, the Cancellation Division cancelled the National Lottery’s CTM. The existence of copyright for an almost identical device with a date prior to the CTM application date allowed the Cancellation Division to make what, on the face of it, appeared to be a straightforward decision. The National Lottery Commission appealed. They argued that there were certain “anomalies” in the agreement by which Mr De Gregorio gained ownership of the portafortuna image. First, the date of the post office stamp authenticating the copyright agreement (21 September 1986) was a Sunday. Given that nothing opens in Naples on a Sunday, least of all a post office, this, according to the CTM proprietor, cast doubt on the authenticity of the document relied on. Second, the term of copyright in the portafortuna agreement was 70 years, a term that was only introduced in Italy in 1996. The copyright term in 1986, the alleged date of the agreement, had been 50 years. Third, the portafortuna image had a different artistic quality to the other images that appeared in the copyright agreement suggesting to those of a cynical nature that the key image may have been a late addition to the agreement. Fourth, under Italian legal practice, it is possible to challenge the date of a document of the type relied on by the applicants to invalidate in legal proceedings without having to instigate a case for declaration of forgery. None of this persuaded the Board of Appeal to overturn the invalidation of the National Lottery’s registration. Rising above the level of the cynic, the Board suggested that the “Sunday” date stamp was a clerical error, whilst the incorrect 70-year copyright term might have been a “drafting error” by the lawyer responsible. They also found that, if the CTM proprietor wished to question the reliability of the portafortuna agreement’s date, they needed to do so before the Italian Courts. The National Lottery Commission appealed again, this time to the (European) General Court. The Court was less willing to accept the “anomalies” in the pontafortuna agreement and annulled the Board of Appeal’s decision. In the Court’s view, it was open to the CTM proprietor to question the reliability or authenticity of the date relied on by the applicants to invalidate under Italian legal practice (and therefore, in this instance, under CTM invalidation practice). As far as the “anomalies” were concerned, the gist of the Court’s ruling was that Mr de Gregorio (and Mediatek) had some explaining to do. Presumably this case now returns to OHIM to be considered in the light of the Court’s ruling (unless it is appealed further to the Court of Justice). If so, it will be very interesting to see what further documentation the applicants to invalidate will be able to find in their archives.

When is it acceptable to visit the United States, see a trade mark that is in use there and then return to the UK and claim registered trade mark rights in the mark. Based on the outcomes of two recent UK trade mark invalidity actions, the answer seems to be that it depends on the facts.

The first case, Triple U Productions v Stephen Grygelko (O/225/12), involved two drag queens. The applicant to invalidate, Mr Grygelko, was a US performer (known locally as Heklina) who ran a drag queen show in the US entitled Trannyshack. Mr Grygelko claimed to have first used the term (Trannyshack) in San Francisco in 1996 and to have brought his show to London five times during the period 2006 to 2009. In the other dressing room was Mr Walt Utz who traded as TripleU Productions. Mr Utz was the registered proprietor of a UK trade mark registration for Trannyshack covering live entertainment services in Class 41. Mr Utz accepted that he had been aware of Mr Grygelko’s activities in the US when he had filed his UK trade mark application in 2009. However, he claimed that Mr Grygelko had told him (Mr Utz) on several occasions that he was only interested in the US market (Mr Grygelko denied this claim). As a result Mr Utz further claimed that he had been presenting a Trannyshack drag queen performance in London clubs since September 2005. Mr Utz noted that Mr Grygelko had been well aware of these activities because he (Mr Grygelko) had appeared in four of these (London) Trannyshack shows from 2006 to 2009 (as Heklina). Finally, Mr Utz stated that he had filed his UK trade mark application, not to thwart Mr Grygelko but in a response to an unconnected UK night club owner threatening to set up a competing Trannyshack event. The Hearing Officer had to decide whether or not Mr Utz’s UK trade mark application had been filed in bad faith (Section 3(6)/Section 47(1) of the Trade Marks Act 1994), whilst, at the same time, trying to avoid being scratched by an artificial nail. Noting that Mr Grygelko had not shown any plans to expand his Trannyshack activities to the UK, that it had not been shown that such an extension of drag queen performances from the US to the UK was normal and, perhaps most importantly, that Mr Grygelko had performed (in his stage persona of Heklina) at Mr Utz’s London Trannyshack shows, the Hearing Officer decided that the UK trade mark registration for Trannyshack had not been filed in bad faith and that Mr Grygelko’s invalidation action therefore failed. In the second case, Pavel Maslyukov v Frederick Robinson Limited (O/399/12), the registered mark at issue was an image of the top half of a green bottle bearing the words Old Tom and the image of a cat on a barrel. Mr Maslyukov, a Russian citizen, had filed the application in September 2006 for gin and gin based products in Class 33 and related services in Class 43. The application was granted in September 2011. The applicant to invalidate, Frederick Robinson, was a UK brewery that sold an Old Tom branded beer and owned relevant, registered trade mark rights in that mark in Class 32. They relied on those rights in their invalidation action. However, they also relied on the ground of bad faith (Section 3(6) of the 1994 Act). The interesting aspect about this ground was that it was not based on Frederick Robinson’s rights but on those owned by an independent third party, a US citizen, Mr Edward Haigh II, the owner of the website, www.cocktaildb.com. Mr Haigh confirmed that Mr Maslyukov’s mark was an exact copy of the top half of a photographic image of an Old Tom gin bottle that had been shown at his website since September 2004. He also confirmed that Mr Maslyukov had used the Old Tom image without permission and suggested that the bottom half of the image had been deleted in order to remove the Cocktaildb digital watermark that appeared there. On the facts before her, the Hearing Officer had no difficulty in deciding that Mr Maslyukov’s UK trade mark application had been filed in bad faith and cancelled the registration. Obviously, it would have been much more difficult to prove bad faith if Mr Maslyukov had applied to register Old Tom (words). Unfortunately, that course of action was impeded by the fact that “old tom” is a type of gin and therefore would be unlikely to be accepted by the trade mark authorities. It is also noted that Mr Masklyukov has some previous when it comes to “borrowing” marks. His attempt to register the names of three dormant Scottish whisky distilleries, Dallas Dhu, Convalmore and Pittyvaich in Class 33 was thwarted by Diageo on the ground of bad faith in UK trade mark oppositions that were decided in 2009. One final aspect of this case was Mr Maslyukov’s unwillingness to disclose a UK address for service. This led to Robinson’s evidence being sent to his Russian address. This, in turn, led to this priceless response from Mr Maslyukov: “From your side, what for to provide you address in the UK when this your UK will not exist, being divided into independent states (like Scotland) not forming part of EEA or when Gibraltar monkeys will continue having citizenship of EU but as Spanish nationals? Unfortunately the Germans didn’t cross the Channel in 1940 for your, similar to what could happen with monkeys in Gibraltar after Spanish control, possible own evolution. Instead the Afghans teach you now by heroin trainspotting via your Ministry of Defense… So from your side your newly introduced requirement for address looks short-sighted and asks to do silly monkey business before the changes.”

In the European court case (General Court) between I Marchi Italiani and Osra SA (T-133/09), the Court confirmed that, under CTM practice, a period of acquiescence can only run from the date of grant of the CTM registration.

I Marchi Italiani owned a CTM registration for an Antonio Basile logo in Class 25. The CTM application was filed on 14 January 2000 and granted on 27 April 2001. On 21 April 2006, that is more than six years after the CTM registration’s filing date, but less than five years after its grant date, Osra applied to invalidate the CTM registration based on an earlier Italian trade mark registration and an earlier International trade mark registration, both for the word mark Basile, and both covering identical (or highly similar) Class 25 goods. The invalidation action was upheld by both the Cancellation Division and the Second Board of Appeal. I Marchi Italiani appealed to the General Court. Before the Court, the CTM proprietor not only argued that the two marks were dissimilar, but that Osra had acquiesced in the use of the Antonio Basile logo in Italy for over five years. The Court addressed the question of acquiescence first. The CTM proprietor had argued that the period of acquiescence ran from the date of filing of the CTM registration at issue. They also stated that their (registered) mark had been in use in Italy for more than five years and that Orsa must have been aware of such use. Neither argument was found persuasive by the Court. Confirming the European Court’s ruling in the Budweiser case (C-482/09), the Court ruled that the relevant starting date for measuring a period of acquiescence must fall after the date of grant of a CTM. It was only use, of which the earlier right holder was aware, after the grant date that could be counted (towards acquiescence). In the present case, the CTM registration at issue was granted on 27 April 2001. The cancellation action had been filed on 21 April 2006, that is less than five years after the grant date. It followed that, even if Osra had been aware of the use of the Antonio Basile logo in Italy throughout that period, a fact that had not been proved, it could not have acquiesced for the necessary five year period. The Court also commented that the evidence of acquiescence put forward by I Marchi Italiani would not have been sufficient, even if the necessary five year period after grant had passed.

Turning to the similarity of the two trade marks (Antonio Basile logo and Basile), the Court agreed with the Board of Appeal that

• The fact that Basile was a common Italian surname had not been proven, and

• In Italy, consumers generally attribute greater distinctiveness to surnames than to forenames (see Sergio Rossi v Marcorossi; T-97/05).

Having said that the Court did disagree with the Board of Appeal regarding the independent distinctive role of the surname Basile in the CTM mark. In the Court’s view, a surname does not retain an independent distinctive role in every case solely because it will be perceived as a surname. A finding with respect to such a role may be based only on an examination of all the relevant factors of each case (Becker v Harman International; C-51/09). In spite of this, the Court concluded that the two marks Antonio Basile logo and Basile had a certain degree of visual and phonetic similarly as a result of the common element Basile which was the most characteristic aspect of the contested mark. Given that the two sets of goods were identical/highly similar, it was therefore inevitable that the Court would confirm the Board of Appeal’s decision and find a likelihood of confusion. I Marchi Italiani’s appeal was rejected. Rather oddly, given that the earlier trade mark rights owned by Osra were filed in 1995, I Marchi Italiani did not put the applicant to invalidate to proof of use of the trade mark Basile in the five years prior to the date of their action (21 April 2006). This becomes an even odder omission given that a search of the internet (by the writer) failed to find any use of the trade mark Basile in Italy either by Osra or by any related company. The vulnerability of Osra’s Italian trade mark rights for Basile may eventually prove to be a godsend to I Marchi Italiani given that the trade mark they actually use now appears to be an A. Basile logo, rather than the (now cancelled) Antonio Basile logo.

The Antonio Basile case should be contrasted with another recent (European) General Court judgment, which concerned a comparison of names, and in which the parties were the Spanish retail chain, El Corte Ingles, and the Italian fashion house, Emilio Pucci (International) which had been founded over sixty years ago by the Marquess of Barsento (aka Emilio Pucci).

Emilio Pucci had filed a CTM application for Pucci in Classes 3, 9, 14, 18, 25 & 28. The application was opposed by El Corte Ingles on the basis of its prior Spanish trade mark and CTM rights in the word mark E. Tucci as well as in its designer brand Emidio Tucci which was registered in various forms of a signature. This was also a well established fashion brand that had gained increased popularity in Spain after an advertising campaign in 2003-4 which featured the actor George Clooney carrying tennis rackets and golf clubs whilst wearing the Emidio Tucci brand of clothing. The opponent’s Spanish trade mark registrations for E. Tucci and Emidio Tucci (stylised) covered goods in Classes 3, 9, 14, 25 and 28. They were all outside their non-use grace periods and so El Corte Ingles was asked to prove use of their marks in Spain during the relevant period. Both the Opposition Division and the First Board of Appeal found that only use of the Emidio Tucci signature mark in respect of clothing and footwear had been established.

Arguments made by El Corte Ingles that

• Images of George Clooney carrying tennis rackets and golf clubs whilst wearing Emidio Tucci clothing showed genuine use of that mark in relation to not only Class 25 goods but also sporting articles in Class 28; and

• Use of the Emidio Tucci mark should also be counted as use of the E. Tucci mark, the latter mark being a form that did not significantly alter the distinctive character of Emidio Tucci, were both dismissed.

The Opposition Division and the Board of Appeal also agreed that the trade marks Pucci and Emidio Tucci were visually and phonetically different enough to avoid a likelihood of confusion. In the Board’s view, the marks at issue “would be perceived as being different by the relevant public because of the word element Emidio of the earlier mark, their different length and the different initial letters of the two surnames”. Spanish opponents don’t tend to be deterred by comments like that, so El Corte Ingles appealed to the General Court. However, the Court confirmed the earlier decisions and rejected the opposition. According to the Court, the Tucci element in the opponent’s mark was not the dominant element in that mark, given the unusual nature of the Christian name Emidio; both elements of the mark should therefore be treated equally and the two marks should be compared as a whole. It followed that there would be no likelihood of confusion and no damage to the opponent’s reputation in Emidio Tucci. This opposition, which has now been appealed to the (European) Court of Justice, is part of a much wider conflict between the Emilio Pucci fashion house, once the favourite of such icons as Jacqueline Kennedy, Sophia Loren and Marilyn Monroe, and the family owned Spanish department store chain, El Corte Ingles. Three other oppositions have also reached the European Court during the past ten years. In these cases the trade marks Emidio Tucci (signature) and Emilio Pucci (word and signature) have generally been found to be confusingly similar and the owner of the prior rights has prevailed, at least in respect of similar goods to those covered by the earlier CTM, Italian or Spanish trade mark rights. Such a dispute, like the long-running Budweiser trade mark fight, is great news for the lawyers involved. However, is it really the best way to settle what is at heart a commercial matter? The chances of any real confusion in the market between such well-known fashion brands as Emidio Tucci and Emilio Pucci is extremely low, given the manner in which they are both sold. The potential loss of sales to both companies caused by any such confusion is probably even lower. Furthermore, both brands coexist with the equally well-known Gucci brand, so the market is certainly very discriminating. Time for the commercial people to sit around a table, without any lawyers, and negotiate a settlement, I would have thought.

The island of Guernsey has introduced the world’s first register of image rights. From now on celebrities (living, dead and even fictional) should be able to register aspects of their “personality”, such as a name, signature, likeness or gesture. The protection may even extend to pop groups and sports teams.

The intellectual property impact of the legislation is likely to be relatively small (unless reports that Guernsey has reciprocal enforcement rights with the UK turn out to be justified), perhaps mainly affecting the unauthorised use of images at websites that are available in Guernsey. However, the tax implications of the law will probably be huge. From now on expect well-known athletes, entertainers, footballers and musicians to house their image rights in the name of a Guernsey company, claim that the royalties obtained from those rights are owned by that company, and then seek to benefit from the island’s notoriously low tax rates.

An attempt by Getty Images (US) to register its domain name, Photos.com as a CTM for goods and services in Classes 9, 42 and 45 was unsuccessful. Photos.com is a wellknown website from which royalty free images and illustrations can be obtained.

The Examiner, the Second Board of Appeal and the General Court all in turn rejected the sign as non-distinctive (Article 7(1)(b) CTMR). Getty argued that a domain name clearly identified the goods and services that were sold at that website (and therefore under that trade mark). It followed, in Getty’s view, that the usual rules governing non-distinctiveness should not apply to domain names. Perhaps understandably, this argument was rejected. More worryingly, the Court was rather dismissive of Getty’s attempt to overcome the non-distinctiveness objection through evidence of acquired distinctiveness. Nearly all of this evidence related to Getty’s establishment and organisation of its Photos. com website. On this the Court commented that “…the fact that internet users visit the site on which goods and services are offered is not sufficient to establish that use has been made of that mark for the purposes of Article 7(3) CTMR” (the acquired distinctiveness Article). It is submitted that once the number of EU visitors to a website has reached a certain level that, in itself, should be sufficient to overcome a non-distinctiveness objection, provided the visitors are spread throughout the region. Regular readers of Make Your Mark will not be surprised that Getty Images already owns two CTM registrations (nos. 4528667 and 6621759) for the trade mark Photos.com covering similar goods and services (to the rejected CTM application) in Classes 9 and 42. Understandably, they pointed this out to the Board of Appeal and to the Court, who responded in the manner they always do when faced with such an inconvenient truth; “every case must be considered on its own merits” and in light of the CTM Regulation. This decision, even if appealed, has placed a serious question mark over the validity of Getty’s CTM rights in the sign Photos.com. The clear response to this would be for Getty to develop a trade mark that combines the sign Photos.com with a device element and then to protect that combination for the goods and services covered by the rejected CTM application. For good examples of such a practice, see the CTM registrations for Booking.com logo in Classes 35, 39 and 43 (CTM 10956811), FastJet.com & device in Classes 16, 39 and 43 (CTM 10845873) and SmallDanishHotels.com & device in Classes 35, 41 and 43 (CTM 10823251). Having done that, they should then enforce their CTM rights against third parties who employ the same or a similar word mark (ignoring the logo or device element of the CTM registrations). This remains the most effective way of protecting non-distinctive or borderline distinctive words or phrases via the CTM system.

In March 2010, the German company Paul Hartmann AG applied to register the trade mark Nutriskin Protection Complex for a range of goods in Classes 3 and 5. The application was rejected by the CTM examiner and by the First Board of Appeal on the highly dubious ground that “the relevant consumer would understand the word combination as describing a product (or complex) for the nutrition and protection of the skin”.

Not surprisingly, given that Nutriskin is a perfectly distinctive trade mark for the goods claimed, Paul Hartmann appealed to the (European) General Court. Unfortunately for the CTM applicant, the Court compounded the errors of the examiner and the Board of Appeal and rejected the appeal.

According to the Court,

• The element Nutriskin would be understood descriptively as “nutrition of the skin”; and

• The overall word combination was not unusual and was formed according to English rules of grammar.

Whilst all of this was going on, a German competitor of Paul Hartmann, Henkel AG, filed their own CTM application for NutriSkin in Class 3. This application was filed in August 2010 (just over four months after the Paul Hartmann application). Regular readers of Make Your Mark will know the outcome of the examination of Henkel’s application. Yes, it was accepted as distinctive and proceeded to grant (after two third party oppositions were resolved). Before the General Court, Paul Hartmann mentioned this difference in the fates of their CTM application and that of Henkel. Of course, as they always do, the Court simply glossed over this clear discrimination stating that “A person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else”. In other words, to paraphrase, “tough”. Henkel is now using its NutriSkin trade mark for a range of skin care products and, of course, that use will, under Article 52(2) of the CTM Regulation, help them to resist any invalidation actions that might be brought against their CTM registration (on the ground of nondistinctiveness and/or descriptiveness).

Paul Hartmann also uses its trade mark Nutriskin Protection Complex as a subbrand to their Menalind skin products. It remains to be seen whether or not Henkel has the nerve to challenge Paul Hartmann’s use. Certainly in the UK, where the trade mark NutriSkin would be recognised as distinctive by the authorities, and where the trade mark NUTRI’SKIN was registered under the tough examination regime followed by the UK Trade Mark Office in the 1980s (for veterinary preparations for the treatment of the skin), a challenge to the validity of Henkel’s CTM registration would, almost certainly, be rejected. The failure of OHIM to show a broad consistency in its examination practices and the failure of the European Court to address this important issue in any meaningful way, remains a great cause for concern both to trade mark owners and EU trade mark practitioners, nearly seventeen years after the CTM Office opened its doors in April 1996.

The difficulty of persuading OHIM and the European Court to accept advertising slogans or promotional phrases as inherently distinctive trade marks is widely known. The rejection of marks such as Insulate for Life, Live Richly, Real People, Real Solutions, Thinking Ahead and Wir Machen Das Besondere Einfach (We Make Special (Things) Simple) by both OHIM and the European Court is merely illustrative. There are many more examples of such marks buried in OHIM’s graveyard of refused trade marks.

This makes the recent decision of the Second Board of Appeal (R2174/2011-2) to accept the phrase Tienda Fuera De Serie (Exceptional Shop) for goods and services in Classes 16, 35, 38 & 41 as inherently distinctive all the more surprising. According to the Board, “… the said expression will be perceived by the relevant public only as such, i.e. as a simple promotional message, in relation to each one of the goods and services (or categories) applied for”. No, I don’t understand what they mean either. Whether a CTM application for the equivalent English phrase, Exceptional Shop, would be treated as leniently is highly doubtful. Such a CTM application would, almost certainly, be refused in the same way as CTM applications for the phrases Exceptional Everyday City Hotels and Exceptional Workplaces were refused. Why this should be is a bit of a mystery. The writer obviously rejects the thought that marks in the Spanish language are treated more favourably by OHIM than marks in the English language.

The older one gets, the less one can rely on the certainties of earlier life; death, taxes, British food being rubbish, the England cricket team always losing to Australia, there being no copyright in a name; that sort of thing. Well, death and taxes may not be going anywhere soon, but British cuisine has become decidedly haute, the England eleven keep winning the Ashes and now here comes Tony Montana.

Antonio Raimundo “Tony” Montana is the main, fictional character in Brian De Palma’s 1983 film “Scarface”. In the film, which was produced by Universal Pictures, Tony Montana is played by Al Pacino. Although Universal did obtain trade mark protection for the term Scarface, they did not extend that protection to the name Tony Montana. This left the way open for a Dutch individual, Ms Sandra Blouw, to file, and obtain a CTM registration, for the trade mark Tony Montana in Classes 3, 18, 25 & 35.

Over a year later, Universal City Studios applied to invalidate Ms Blouw’s CTM on the grounds that

• They (Universal) owned an earlier copyright in the name Tony Montana (Article 53(2)(c) CTMR); and

• Ms Blouw was acting in bad faith when she filed her CTM application (Article 52(1)(b)).

In a decision that might be viewed as surprising, given the number of non- Scarface Tony Montanas that there are in the world, and given the very limited amount of commercial development of the name by Universal in the 30 years since the film’s original release, the Cancellation Division declared Ms Blouw’s CTM registration invalid. Considering only the copyright ground for invalidation, and basing their ruling on the position under Spanish copyright law, the Cancellation Division accepted that, under that law, a word or name identifying a fictional character may be an independent creation from the title of the work to which it belongs. Having done that, they had no difficulty, bearing in mind the “film merchandise” nature of Ms Blouw’s goods and services, in finding that her CTM registration was contrary to Universal’s earlier Spanish right. Ms Blouw’s CTM registration was therefore cancelled. She appealed to the First Board of Appeal. During the appeal procedure, the CTM under attack was assigned to a Turkish company, Turkuaz Konfeksiyon. Although the Board acknowledged that, in principle, copyright protection in a cinematographic or literary work is not automatically extended to its characters, they accepted that, as in so much else of CTM (and EU trade mark) practice, special rules applied to Spain. They therefore concluded that the Cancellation Division had correctly assessed the position of the character name Tony Montana under Spanish copyright law and confirmed the decision to cancel the CTM registration (under Article 53(2)(c)). Unlike the Cancellation Division, the Board of Appeal also considered the issue of bad faith. On the evidence before it, the Board inferred that Ms Blouw must have known of the character Tony Montana when she filed her CTM application. The fact that she had filed in “merchandise” Classes (3, 18, 25 & 35) was also held against her. On this rather flimsy evidence (and inference), the Board decided that Ms Blouw, when filing her CTM application, had attempted to hinder the merchandising activity of Universal and to take unfair advantage of the notoriety of the character, Tony Montana. On this basis, the Board found that Ms Blouw’s behaviour fell short of “standards of acceptable commercial behaviour” and also declared the CTM registration invalid on the ground of bad faith (Article 52(1)(b)). It seems odd that for a film with the tagline “He was Tony Montana but the world will remember him by another name…Scarface”, the Hollywood producer should go to such lengths to cancel a third party right for the name Tony Montana (although it should be noted that a Polish company, Bameha Sp. also owns CTM rights for Tony Montana marks in Class 25). It also seems odd that, having gone to all that trouble to cancel Ms Blouw’s/Turkuaz Konfeksiyon’s CTM, Universal has still not filed a CTM application of their own for the name, Tony Montana.