How far can the owner of a well-known mark extend its rights in the particular stylisation of its trade mark? In the case of Coca-Cola, the answer would appear to be very far indeed.
A Syrian company, Modern Industrial & Trading Investment Co. (Mitico), filed a CTM application for a combination mark consisting of a stylised form of the word Master and the same word in Arabic. The word Master was written in the same Spenserian script used by Coca-Cola. The letter M (of Master) also had the characteristic “tail” used by Coca-Cola for the first letter “C” of their mark. Mitico’s CTM application claimed goods in Classes 29, 30 and 32.
The Coca-Cola Company opposed Mitico’s CTM application based, amongst other grounds, on their reputation in the Coca-Cola brand (Article 8(5) CTMR).
The Opponent relied principally on a number of earlier CTMs for their stylised version of Coca-Cola. They also put forward evidence of the nature of Mitico’s commercial activities including screenshots taken from the (now suspended) website, www.mastercola.com., at which a soft drinks bottle bearing a Master Cola get up that is strikingly similar to that of Coca-Cola can been seen. This get up does not, however, bear the CTM mark applied for, the Arabic lettering being absent.
The opposition was rejected by both the Opposition Division and the Second Board of Appeal. In relation to the Article 8(5) grounds of appeal, the Board found that, since there was no similarity between the mark applied for and Coca-Cola’s mark, the link between the marks that was required to exist in order to succeed under Article 8(5) was missing. As a result of its findings on the similarity of the marks (or rather lack of), the Board did not consider Coca-Cola’s reputation in its mark. Further, they also refused to take account of Mitico’s commercial activities since these involved a trade mark (and a get up) other than that opposed.
Coca-Cola appealed to the (European) General Court (T-480/12) and the Court annulled the decision of the Board of Appeal. According to the Court:
• The Arabic element of the opposed mark, being unintelligible to the EU public was of secondary importance as compared to the dominant element Master.
• There are elements of visual similarity between the marks at issue. These include the use of an identical, commercially unusual font and the signature flourish used for the initial letters “M” and “C” ( inMaster and Coca-Cola).
• Although it was generally true that the average consumer will more easily refer to the product in question by reference to its word mark rather than by describing its figurative element(s), there were exceptions to this rule. For example, supermarket shoppers might take more note of the figurative elements of a mark than its word elements when considering the purchase of foodstuffs.
• To succeed under Article 8(5) CTMR, it was not necessary for an opponent to prove a likelihood of confusion. The types of injury to be prevented by Article 8(5) may be the consequence of a lesser degree of similarity between the earlier and the later marks, provided that it is sufficient for the relevant public to make a connection (or a link) between them.
• Even though the marks at issue are only slightly similar, it is not altogether inconceivable that the relevant public could make a link between them and, even if there is no likelihood of confusion, be led to transfer the image and the values of the earlier Coca-Cola marks to the goods bearing Mitico’s mark. There is therefore a sufficient degree of similarity between the marks for the relevant public to make a connection between them and for a link between them to be established.
• The commercial activities of Mitico should be considered even though they employed a different trade mark to that applied for. A risk of free-riding may be established by evidence showing the use by the owner of the opposed CTM of packaging that is similar to that employed by the opponent.
Having made these rulings, the Court passed the case back to the Appeal Board to consider the matter afresh, taking into account Coca-Cola’s reputation in its earlier marks and the actual commercial activities of Mitico.
The Court rejected Mitico’s assertion that a finding for Coca-Cola would give them a virtual monopoly in the registration and use of marks for Class 32 goods in Spenserian script and that this would pave the way for other proprietors of well-known marks to monopolise other types of script. However, it is hard not to agree with that assessment, to a degree at least.
Having said that, this case will have to be considered very carefully by the UK’s supermarkets who are past masters at taking the key elements of a successful product’s get up for their own, competing lookalike. It remains to be seen if any well known brand owner will be brave enough to challenge the sale of one of those supermarket’s lookalike products, thereby risking either the delisting of their own goods or the shifting of those goods to the bottom shelf.
One final note of interest on the Master case. Mitico also owns a CTM registration (No. 8155624) in Classes 29, 30 and 32, for a mark consisting of a stylised form of Master Plus (in English and Arabic). This mark also appears to be in Spenserian script. However, the “tail” of the letter “M” has been removed using correction fluid.
Zubrowka, in English Bison Grass, vodka is a dry, herb-flavoured spirit that is distilled from rye. The vodka is produced in Poland and gains its flavour from the addition of a tincture of bison grass to the distillate. Each bottle of Zubrowka vodka not only bears its name and an image of a bison on the label but also contains a blade of bison grass as a further distinctive feature.
Grasovka is a competing product that is sold by the Swiss company, Underberg AG. It was introduced some years after the first appearance of Zubrowka. Grasovka is also produced in Poland and also has a bison grass flavour. It is however bottled in Germany and has become the most successful flavoured vodka in that country. Each Grasovka bottle bears its name as well as an image of a bison. In a further homage toZubrowka vodka, each bottle of Grasovka contains a blade of bison grass.
The Polish owner of the Zubrowka vodka brand who, after a merger, was CEDC International managed to obtain a French trade mark registration (no. 95588457) in Class 33 for the concept of a blade of grass in a bottle. This registration, which was filed in September 1995 and granted in April 1997, shows a single, hand drawn image of a bottle containing the grass (drawn as a diagonal line across the bottle) and has the following explanatory wording “a bottle as represented above inside which a blade of grass is placed almost diagonally in the body of the bottle”.
Although beaten to the punch in France, Underberg were quicker than their Polish rival at a European Union level. They filed a CTM application (no. 33266) on the day OHIM opened (1st April 1996) for a photographic image of a vodka bottle containing a blade of grass. This CTM application claimed “spirits and liqueurs” in Class 33 and had the following written description:
“The object of the trade mark is a greeny-brown blade of grass in a bottle, the length of the blade of grass is approximately three-quarters the height of the bottle”.
Underberg’s CTM application had a long and rather tortuous official examination. However it was eventually published for opposition in September 2003. This delay did however have one significant advantage for Underberg. This was that, when the predecessor of the Polish company CEDC opposed CTM 33266, their own, earlier French trade mark registration was outside its grace period. This meant that Underberg could ask CEDC’s predecessor to show genuine use of their French trade mark in the five years prior to September 2003.
The Polish company filed two affidavits, one from its President, the other from the CEO of Pernod SA, the distributor of Zubrowka vodka in France. Both affidavits confirmed that in the relevant period “every bottle of Zubrowka vodka that was sold in France was packaged in a bottle that contained a blade of bison grass that is the same as the design depicted in FR 95588457”. Both affidavits also contained a photograph of a Zubrowka bottle that was sold in France from 1998 to 2003, as well as images of the bottle on leaflets that were aimed at French distributors from 1999 to 2002 and French supermarkets from 2003 to 2006. A significant difficulty with all of this evidence was that every image showed the front of the Zubrowka bottle and its non-transparent label. The blade of grass present in each bottle was therefore rather difficult to see.
The Opposition Division rejected the opposition on the basis that CEDC’s predecessor had failed to show genuine use of their “blade of grass” mark in France. Giving a classic reason to dismiss the evidence of use of a miscellaneous trade mark (such as a blade of grass), the Opposition Division found that the presence of a label containing the term Zubrowkaand the representation of a bison on the bottle marketed altered the distinctive character of the registered mark.
CEDC’s predecessor appealed. In the appeal, the Polish opponent filed the type of evidence of use that they should have filed in the first place. This additional evidence included photographic images of Zubrowkabottles, that were exported to France, that were taken from the side which clearly showed the presence of a blade of grass in the bottle.
The appeal went to the Fourth Board of Appeal who studiously ignored all of this additional evidence, although they didn’t give any reason for doing so. In rejecting the appeal, the Board took a very literal view of CEDC’s French mark in commenting that each image provided by the opponent (before the Opposition Division) had “the same striking, non-transparent Zubrowka Bison Vodka label covering a large part of the bottle, and that the diagonal line was not affixed to the outside surface and did not appear on the label itself”.
Having picked themselves off the floor, CEDC appealed to the (European) General Court (T-235/12). They claimed that the Board of Appeal was in breach of Articles 75 and 76 of the CTM Regulation since they had not given the reasons upon which their decision was based and had failed to exercise their discretion to take note of the additional evidence filed for the first time before it.
The Court agreed with the opponent and annulled the Fourth Board’s decision. In the Court’s view,
• Articles 42(2) and 42(3) CTMR, dealing with the proof of use in oppositions, do not contain any requirement as to the time limit set for the opponent to provide proof of use of the earlier mark;
• It follows that Article 42 does not affect the discretion conferred on OHIM (by Article 76(2) CTMR) allowing it to decide whether or not to take into account evidence produced out of time;
• It could be inferred from the Appeal Board’s decision that they had not taken the opponent’s additional evidence into account. The Board had failed to exercise its discretion under Article 76(2) in an objective, reasoned manner and had failed to give the reasons for its decision that were required under Article 75.
Whilst the original evidence put forward by the Polish opponent before the Opposition Division was poor, their subsequent treatment by OHIM, after they finally got their act together, was equally poor. Unless appealed to the Court of Justice, this case now goes back to the Appeal Board to reconsider the matter. One can only hope for a more reasoned approach from the Office second time around.
In order to be considered similar, a trade mark consisting of two capital letters now has to resemble a stylised version of the same two letters pretty closely. This practice has recently been confirmed by the UK Trade Mark Office in The Royal Academy of Arts v Errea’ Sport S.P.A. (O-036-15).
The Royal Academy applied for its two letter logo, RAin bold capital letters. Their UK trade mark application covered goods and services in eighteen classes. Errea’ Sports opposed in part on the basis of a CTM registration for a stylised RA device (see below), covering a broad list of goods and services, including a variety in seven of the classes covered by The Royal Academy’s application.
Given the identity of many of the two sets of goods and services, the main question that the Hearing Officer (Ms Beverley Hedley) had to decide was whether the two marks were similar. Ms Hedley came to the conclusion that they were not and rejected the opposition. She accepted that the Errea’ Sports mark would be seen as an “RA” logo. This meant that there would be phonetic and conceptual identity between the two marks. However, according to the Hearing Officer, the marks were visually dissimilar and since the purchasing act was likely to be primarily visual for all of the goods and services at issue, there would be no likelihood of confusion.
This decision appears to be in line with the general practice of the UK Trade Mark Office as well as that followed by OHIM. See, for example, Appeal no.
R1466/2009-1 (JC AB v Jasper Conran) where a JC monogram (CTM 4405205) was found to be dissimilar enough to the unstylised, two letter mark JC to avoid a likelihood of confusion.
It can be reasonably inferred from this practice that,
• The use of the Errea Sports stylised RA device and JC AB’s JC monogram would not count as genuine use of trade mark registrations for the capitalised, two letter marks RA and JC, and
• The Errea Sports stylised RA device and JC AB’s JC monogram would not infringe trade mark registrations for RA and JC (in capital letters).
It seems clear from the development of the practice in this area that companies with stylised letter marks would do well to protect both the capitalised and the stylised versions of their marks to maximise their area of protection. Even that may not be enough to prevent the registration and use of highly stylised versions of the same letter mark.
In European trade mark practice, how much weight should you give a prefix that has little or no distinctive character when comparing two trade marks? Well, as usual, it depends who you ask. Three recent oppositions involving goods in Class 5 illustrate the point.
The first case (Endoceutics, Inc. v Merck KGaA, T-324/13) involved a CTM application for the trade markFemivia covering “pharmaceutical preparations for the prevention and treatment of medical conditions related to the menopause”. This CTM application was opposed by Merck based on their earlier trade mark rights in the trade mark Femibion (word and stylised) covering inter alia “pharmaceutical preparations” in Class 5. Amongst the trade mark rights relied on by Merck was an International trade mark registration for the stylised version of the earlier mark designating Spain which was not subject to proof of use requirements.
The CTM Opposition Division rejected Merck’s opposition. Given that any similarity between the two marks existed because of the common presence of the prefix Femi-which, in relation to the goods at issue, had a weak distinctive character, the Opposition Division found that there was no likelihood of confusion between Femivia and Merck’s earlier marks.
Merck appealed and the Fourth Board of Appeal upheld the appeal and rejected Endoceutics’ CTM application. According to the Board, who only considered the matter from the point of view of Spanish consumers (and the International trade mark registration designating Spain),
• The prefix Femi- would not be perceived as descriptive for the goods in question and therefore the earlier stylised mark had an average degree of distinctiveness,
• The two marks had an average visual similarity and, for Spanish speakers, a high degree of phonetic similarity since the letter “v” in Femivia would be pronounced like the letter “b” in Femibion,
• Since the two sets of goods were identical, there was a likelihood of confusion.
Endoceutics appealed to the (European) General Court (T-324/13). Whilst the Court disagreed with the Appeal Board with regard to the distinctiveness of the prefix Fem-, given that Spanish speakers would understand it as short for “Femenino”, the Spanish equivalent of “Feminine”, in nearly every other respect they agreed with the Board and rejected Endoceutics’ appeal and, with it, their CTM application. According to the Court, even though the prefix Femi- has a weak distinctive character, it still has to be taken into account when comparing the marks. This meant that, as found by the Appeal Board, there was an average degree of visual similarity and a high degree of phonetic similarity between Femivia and Femibion (stylised) in Spain. Further, contrary to the Board, who had found that the conceptual comparison of the marks was “neutral”, the Court found that there was a certain conceptual similarity between Femivia and Merck’s stylised mark. On a global assessment therefore, the Court found that there was a likelihood of confusion.
Femivia is Endoceutics’ flagship product, a potential treatment for numerous menopausal symptoms that is in Phase III development. It is therefore not surprising to learn that they have filed a new CTM application for the mark, although this is once again the subject of a Merck opposition. Endoceutics has also applied to revoke one of Merck’s CTMs for Femibion. However, as Merck has seven other CTM registrations for Femibion marks and also use of the mark for a range of nutritional supplements aimed at women, Endoceutics may have their work cut out to clear the way for Femivia in the EU.
The second case (Novartis AG v Dr. Organic Ltd, T-605/11) also involved a CTM opposition. This time the mark at issue was Biocert for a range of medicinal and dietary products in Class 5. The CTM application was opposed by Novartis on the basis of their earlier Austrian trade mark registration for Biocef claiming “pharmaceutical preparations”. Even though Novartis’ Austrian trade mark registration was granted back in 1991 and Biocef is, entirely predictably, only used in respect of a cephalosporin antibiotic, the CTM applicant, for reasons best known to themselves (or to their attorneys), did not put the opponent to proof of use.
Even so, on the basis that the prefix Bio- is a common abbreviation in German of the word Biological and thus descriptive in relation to the goods at issue, the Opposition Division found the two marks to be dissimilar and rejected the opposition. According to the Opposition Division, Austrian consumers’ attention would focus on the suffixes -cert and -cef. This meant that there was a low visual and phonetic similarity between the marks. When this was combined with findings that Biocef had an average degree of distinctiveness overall and that because Bio- was a descriptive element its common presence was insufficient to establish a conceptual similarity, it was no surprise that a finding of no likelihood of confusion should be found, in spite of the identity or similarity of the two sets of goods.
Novartis appealed and, unlike in the Femivia case above, the Fourth Board of Appeal rejected the appeal, in this case accepting that the descriptive prefix was in fact descriptive. Novartis appealed again, this time to the (European) General Court.
Following the line of reasoning in earlier General Court cases, as well as in the Femivia case above, the Court found that in spite of its weak distinctive character, an element of a mark which is descriptive (such as Bio-) is likely to attract the attention of the relevant public because of its length and position at the beginning of the two marks being compared. On that basis, the Court found that the coincidence of five letters (Bioce-) at the beginning of both marks inevitably led to the conclusion that the two marks had (at least) an average degree of visual and phonetic similarity. Further, given the common presence of the prefix Bio-, a fact that could not be ignored for the purposes of comparison, the marks also had a certain degree of conceptual similarity. Taking all of this into account, as well as the identity/similarity of the two sets of goods, the Court allowed Novartis’ appeal and refused Dr. Organic’s CTM application for Biocert.
The above General Court decisions should be compared with a recent opposition (ColonisPharma v Sanofi Aventis Netherlands; O-415-14) involving a UK trade mark application for the trade mark Mucodis covering mucolytics, a medicine designed to reduce mucus in the lungs. This UK trade mark application was opposed by Sanofi on the basis of their earlier UK trade mark registration for Mucodyne covering “pharmaceutical substances and preparations, all for use in the treatment of conditions and ailments affecting the respiratory passages of the body” (Sections 5(2)(b), 5(3) and 5(4)(a) of the 1994 Trade Marks Act). Mucodyne is a long-established mucolytic and it was accepted by the UK Hearing Officer (Mr Oliver Morris), on the basis of the evidence filed by Sanofi, that Mucodyne is a well-known mark with an enhanced level (a high level) of distinctiveness.
Even so, Mr Morris rejected the opposition. In the Hearing Officer’s view, the prefix Muco- would have a weak distinctive character for mucolytics. In addition, according to Mr Morris, “the ends of the marks are sufficiently acute that when the average consumer encounters the respective marks…they will recall the differences”. On that basis, the two marks were found to be distinguishable having only a medium level of visual and aural similarity and (for mucolytics) a limited conceptual similarity based on the common presence of the prefix Muco-. This finding allowed the Hearing Officer to reject all three grounds of Sanofi’s opposition (Section 5(2)(b), 5(3) and 5(4)(a)).
It is never easy deciding whether or not two invented marks of the type inevitably chosen by pharmaceutical companies for their products are confusingly similar. However, the writer takes the view that, if such a company decides to employ a prefix of no or limited distinctiveness in their mark, then that choice should weigh heavily against them when they seek to enforce their rights against later entrants using the identical prefix for their later marks. On that basis, it is submitted that, whilst the Mucodis case was correctly decided, the two General Court cases (Femivia andBiocert) were incorrectly decided. The latter decisions were however coloured by certain articles of faith that are firmly held by that (General) Court.
In the Femivia case it was that the Spanish public is very easily confused and quite unable to differentiate between trade marks. In the Biocert case, it was that if two marks contain a significant proportion of identical letters in identical positions, then a finding of confusing similarity is almost inevitable, no matter what else can be thrown into the global assessment. It’s the maths, stupid. And in both cases, it is that non-distinctive elements in marks being compared should often, though not always, be given as much weight as distinctive elements when assessing the likelihood of confusion.
Whilst it is never easy to clear a new trade mark for registration and use in the EU, the case law developed by the General Court has made it even more difficult.
A further example of the UK Trade Mark Office’s less conservative view of marks that can coexist when the common element is non-distinctive/borderline distinctive can be seen in the opposition between Bon Catering Services and Aldi Stores (O-411-14).
Bon Catering applied to register a Bon Appetit 99 logo for goods and services in Classes 30, 35 and 43. This UK trade mark application was opposed by Aldi on the basis of two earlier UK trade mark registrations for Bon Appétit combination marks, one of which is shown above (lower mark). These registrations covered similar goods in Classes 29, 30, 32 and 33.
The Hearing Officer (Mr Martin Boyle) rejected the opposition. In his view, the phrase Bon Appetit has a very low, inherent distinctive character in relation to the goods and services at issue. This meant, in Mr Boyle’s opinion, that when the other elements of the mark applied for and the earlier marks, including the numeral 99, were taken into account there was only a low to moderate (or reasonable) visual and phonetic similarity between the marks. As far as the conceptual comparison was concerned, given the presence of the numeral “99” in the mark applied for and the colours of the French flag in the earlier mark(s), which reinforced the concept of “Frenchness” in those marks, the Hearing Officer found that this introduced an element of conceptual difference.
Overall, Mr Boyle decided that “…the differences (between the marks) are so marked as to rule out the likelihood that the applicant’s mark might, for example, be seen as a brand variant, particularly when the point of similarity resides in something which is of weak distinctiveness”.
This is a sensible decision that would not have been out of place in the trade mark world as it was before the (European) General Court began muddying the waters of trade mark comparison. Given that the German supermarket Aldi was the losing party in this opposition, it could be considered a case of the biter being bit.
As if to illustrate the difference in practice between the UK Trade Mark Office and the European authorities, the (European) General Court recently issued another poor decision involving a trade mark containing a weak element (TürkiyeGarantiBankasi v Card & Finance Consulting; T-33/13).
Card & Finance filed a CTM application for a stylised version of bonus & more for services in Classes 35, 36 and 42. The application was opposed by TürkiyeGaranti on the basis of an earlier International trade mark registration for the trade mark bonusnet (stylised) covering identical and/or similar services.
The Opposition Division partially upheld the opposition. However, the Fourth Board of Appeal overturned this decision and rejected the opposition in full on the basis that the two marks were dissimilar.
TürkiyeGaranti appealed to the General Court. The Court, as so often in the past, favoured an opponent with a mark containing a weak element. In the Court’s view,
• …there are significant visual differences resulting from differences of colours, of sizes and of positions in the figurative elements of the signs at issue. However, these differences cannot completely counteract the similarity resulting from the common word element “bonus”. In those circumstances, the signs at issue…have, at the very least, a certain degree of visual similarity.
• …the first two syllables of the two signs at issue are identical. Those signs have at least an average degree of phonetic similarity due to the identical pronunciation of their first two syllables.
• …for the part of the relevant public who understand the word “bonus”, it conveys a meaning relating, inter alia, to an economic advantage or benefit. Therefore, it is clear that, for the part of the relevant public referred to…there is necessarily a conceptual similarity between the signs at issue.
• …the elements following the word “bonus”, to the extent that each one of them will convey a different meaning, will supplement without completely counteracting the meaning of the element “bonus”, to which both signs refer, even if that element has only a weak distinctive character with respect to the services covered by the signs in question.
• It must be held…that the signs at issue have a certain degree of similarity. That conclusion cannot be invalidated by OHIM’s argument…that the fact the word “bonus” appears in both signs does not automatically mean that there is a similarity between those signs, taking into account in particular the weak distinctive character of that word in relation to the services at issue, since consumers focus more on other elements of the marks at issue.
Bearing these findings in mind, the General Court annulled the decision of the Board of Appeal to reject TürkiyeGaranti’s opposition.
This case confirms the difficulties faced by EU trade mark practitioners when trying to clear a trade mark for registration and use. In relation to financial services in Class 36 at least, the meaning of the word Bonus is widely known as is its close association with such (financial) services. So, when a search for bonus & more (stylised) throws up literally hundreds of earlier marks in Class 36 containing the word Bonus should we decline to clear the mark being searched simply because of the common presence of that non-distinctive word? The answer is of course no but, as can be seen from the ruling above, such a decision (by the practitioner) should be made whilst keeping one’s fingers and toes very tightly crossed.
The importance of the conceptual differences between two marks that have a reasonably high degree of visual and phonetic similarity has been shown in two recent UK trade mark oppositions.
In the first case, Aldi Stores v Deichmann SE (O-418-14), the opposition related to the mark Avenue covering “footwear”. This UK trade mark application was opposed by Deichmann on the back of an earlier CTM registration for 5th Avenue also protecting “footwear”.
Deichmann claimed considerable UK sales of its 5th Avenue footwear, nearly £2.5 million in 2013. They also claimed that the brand had been advertised widely in the UK, in print, via tv commercials and on social media, although the evidence provided for this was limited.
The Hearing Officer (Ms Al Skilton) accepted that the two marks (Avenue and 5th Avenue) had a high degree of visual and aural similarity. However, this was countered by the well-known, different meanings of Avenue (a tree lined street) and 5th Avenue (a specific, famous road in New York).
Although MsSkilton accepted that the word Avenue might play an independent distinctive role within the earlier, Deichmann owned mark she decided, on balance, that it would not. She therefore ruled that the conceptual difference would outplay the visual and phonetic similarities and allowed Aldi’s UK trade mark application for Avenue to proceed to grant.
The second case involved The (rather patrician) Jockey Club, the organisation that used to control British horseracing but now only owns and runs 15 of its racecourses.
In a sign that even the British aristocracy is having to become involved in trade these days, the organisation, which is governed by Royal Charter, got their man to file a trade mark application for the trade mark The Jockey Club in Classes 18 and 25. Thankfully a certain dignity was maintained since the application claimed, amongst other goods, “collared shirts, waxed trousers, tweed jackets and trilby hats”.
In an action that was rather like an errant jockey answering back during a steward’s enquiry, the American upstarts, Jockey International, opposed The Jockey Club’s application based on numerous earlier UK trade mark and CTM rights for the trade mark Jockey (with and without a device) covering identical and similar goods, as well as on their considerable reputation in the Jockey brand.
By the time that the opposition came to a Hearing before Mr George Salthouse, the opposition against the Class 18 goods had been withdrawn, the Hearing Officer therefore only had to consider the claim in Class 25.
In this case, unlike in the Avenue decision above, MrSalthouse found that there was only a low level of visual and aural similarity between the marks. Once again however, he also found that conceptually the marks were very different. He rejected the opponent’s ingenious argument that, to the average UK consumer, the mark applied for would simply mean “a club for jockeys” (Heaven forfend!).
The Hearing Officer accepted that The Jockey Club was a widely known organisation in the UK and that the meaning of the phrase would be seen as completely different to that of Jockey on its own by the relevant purchasing public. It was therefore no surprise that MrSalthouse found the two marks to be dissimilar overall and dismissed Jockey International’s opposition in its entirety.
Jockey International has also opposed two CTM applications for marks consisting of or containing The Jockey Club. If these cases are fought to a photo-finish, the writer would bet on rather different outcomes to the result before the UK Trade Mark Office.
How deeply embedded in European culture must a foreign language term become before it is deemed too descriptive for trade mark protection? A recent case before the (European) General Court (Kaatsu Japan Co. Ltd. v OHIM; T-567/12) suggests that the answer is not very deeply at all.
Kaatsu Training is a patented method of exercise developed by Dr. Yoshiaki Sato in his native Japan. It involves the control of blood flow by means of bands that apply pressure to users’ arms and legs.
The Kaatsu Training method, along with associated products such as Kaatsu Training bands and an associated educational programme, was made available from 1973 onwards in Japan. About 30 years later, Dr. Sato’s company began to expand its interests worldwide, including in Europe. This led to the filing of a CTM application for the word mark Kaatsu in Classes 9, 10, 16, 28, 41 and 44 by Kaatsu Japan Co. in August 2011.
The CTM application was rejected in part by the CTM examiner. In the examiner’s view, the word Kaatsu was descriptive of a method of physical exercise. It was similar to Pilates exercise methods which were based on the principles developed by Joseph Pilates over 70 years ago.
The Japanese applicant replied that the term Kaatsu had been coined by their Chairman, Dr. Sato, and that all of the internet articles relied on by the examiner related to goods and services provided by Kaatsu Japan. This did not persuade the examiner to waive the objections raised and they were maintained.
Given that the goods and services that had been rejected under Article 7(1)(c) CTMR were those actually sold by the Japanese owner, they filed an appeal. The appeal was rejected by the Second Board of Appeal on the same terms as the examiner. The Board also rejected the CTM applicant’s argument that the mark applied for was a new, coined term with an imaginative nature. This was said to be “unsubstantiated”. Rubbing salt into Kaatsu Japan’s wounds, the Board found that the term Kaatsu would be known to relevant consumers throughout the European Union. It followed that, to proceed on the basis of distinctiveness acquired by use, the CTM applicant would have to establish such acquired distinctiveness in a substantial part of the European Union (whatever that means). The CTM applicant appealed to the (European) General Court (T-567/12). The primary ground of appeal was that the word Kaatsu was not in common use by anyone other than the applicant. The General Court rejected this argument along with the appeal. In the Court’s view,
• Since the term Kaatsu can be used to designate a particular method or technique of physical exercise and to inform the consumer, directly and without the need for further reflection on his part, that the goods or services in question concern that method or technique of physical exercise, that term must, having regard to the public interest that underlies Article 7(1)(c), remain available for public use and not become the subject of a monopoly, even if the term is not yet commonly used.
• It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) actually be in use at the time of the application for registration in a way that is descriptive of the goods or services in respect of which the application is filed, or of characteristics of those goods or services. It suffices that the signs and indications could be used (emphasis added) for such purposes.
• The criterion according to which the Board of Appeal was required, when applying Article 7(1)(c) to determine whether the mark applied for could be registered entailed assessing whether the sign for which registration as a trade mark was sought was associated at the time, in the mind of the relevant class of persons, with the category of goods and services concerned, or whether it was reasonable to assume that such an association might be established in the future.
On this basis, the Court maintained the Article 7(1)(c) objection originally raised by the CTM examiner and rejected Kaatsu Japan’s CTM application (in part).
It seems to the writer that the CTM applicant has been pretty hard done by here. Although the owner’s use of the term Kaatsu could be improved from a trade mark point of view, it still seems that the overwhelming use of the term, at least on the internet, in respect of a training method and associated products, relates to the goods and services that are provided by Kaatsu Japan. An official objection based on a particular sign possibly becoming a descriptive term in the future, even if it isn’t yet, is almost impossible to overcome by argument. Further, in the case of a coined word, such as Kaatsu, it is also almost impossible to overcome by evidence of use in the EU. Pointing to the trade mark registrations for Kaatsu in Australia, Japan, the USA and elsewhere is also pointless since the CTM authorities always ignore such registrations with an almost perverse pleasure.
Japanese terms, such as Karaoke, Kimono, Manga and Sushi, do enter the languages of Europe and become widely known descriptive terms. It is submitted that the word Kaatsu is a long way from such a position. It is more like other exercise methods such as Ohashiatsu and Dahn Yoga, both of which feature heavily on the internet and yet are registered as CTMs.
A recent case before the UK Trade Mark Office has shown the significant impact that the use of social media is having not only in the area of product promotion but also in the securing of trade mark protection.
Wyke Farms is a large, independent UK producer of dairy products. It has a 3% share of the UK cheddar cheese market. In 2010, the company launched their Free Cheese Friday competition via Facebook and Twitter (using the hashtag#freecheesefriday) in order to promote the Wyke Farms brand and products. The competition runs each week and, at the end of the working week, that is on Friday, a number of entrants chosen at random receive a voucher for Wyke Farms cheese. By June 2013, the promotion had over 21000 Facebook likes and over 6000 Twitter followers.
A month later (July 2013), Wyke Farms applied to register the trade mark Free Cheese Friday for “cheese and cheese products” in Class 29. Predictably, the application was rejected by the trade mark examiner as a mere promotional message – a campaign whereby free cheese is given to customers on a Friday. The examiner pointed to the practice of UK supermarkets giving samples of new cheese products to potential purchasers.
Wyke Farms responded with the social media evidence set out above together with other evidence aimed at promoting the existence of the Free Cheese Friday competition on social media. They also referred to an annual marketing spend of £25000 (out of a total marketing budget of £950000) on the Free Cheese Friday promotion. The applicant explained that the low amount spent on the competition was down to the much lower upfront costs for a social media campaign compared with tv advertising.
At a hearing to discuss the trade mark examiner’s objection, the Hearing Officer (Mr Smith) found that the trade mark Free Cheese Friday was a mark of borderline distinctiveness. Although the phrase Free Cheese was clearly non-distinctive, the addition of a random day of the week changed the picture. The evidence of use, although not overwhelming, in terms of figures, was still, in the circumstances, enough to get the mark over the distinctiveness line. The Hearing Officer therefore waived the official objection and allowed Wyke Farms’ trade mark application to proceed.
This case shows that increasingly accessible, low cost, social media based promotional campaigns are not only becoming the marketing tool of preference but may also offer a relatively low cost means of overcoming non-distinctiveness objections raised by trade mark offices against slogans. Who knows, it might even lead to a company overcoming such an objection when it is raised by OHIM against an English language slogan. Given the amounts involved in social media promotions, evidence of acquired distinctiveness gathered from the whole of the EU may no longer be just a pipedream.
Whilst social media, and the internet generally, may now be a boon for those seeking to establish a new brand in the market, and perhaps on the trade mark register, it can, by contrast, also be a source of incorrect information that can threaten the very existence of even the most well-known of brands.
Kleenex tissues were first sold in 1924 as a disposable means of removing cold cream and make-up. Subsequently the product became a highly successful substitute for a handkerchief under the slogan “Don’t Carry a Cold in Your Pocket”.
So successful did the Kleenex brand become in fact that it joined that elite group of trade marks, including Formica, Google, Hoover and Jacuzzi, that are often used by the public to describe the product itself. Of course, the sales of such brands can benefit considerably from this enhanced status. However, there is always a danger that, in the absence of a constant policing of its use, the brand may join dry-ice, escalator and linoleum as a mere, worthless generic term.
In the pre-internet age, it was fairly straightforward for a properly advised company to maintain the integrity of such a well-known trade mark. The regular placement of suitable adverts in appropriate publications emphasising the trade mark nature of the brand, when combined with the close monitoring of dictionaries for rogue (generic) definitions, usually did the trick.
However, in the internet age, the challenge of preventing a trade mark from becoming “escalatored” has become more severe. Take the Wikipedia definition of Kleenex, for example. It states “In the USA, the Kleenex name has become, or as a legal matter nearly has become, genericized; the popularity of the product has led to the use of its name to refer to any facial tissue, regardless of the brand. Many dictionaries, including Merriam-Webster and Oxford, now include definitions in their publications defining it as such”. When one looks more closely though, the Merriam-Webster definition, whilst stating that the term is “used for a paper tissue”, also acknowledges the trade mark nature of Kleenex. Further, whilst the internet based Oxford Dictionaries (note, not the Oxford English Dictionary) does define Kleenex as a “noun (plural same or Kleenexes)”, it does also again mention its trade mark status.
In fact, since the internet became widely available, the ability of the owners of well-known marks that are registered as CTMs to prevent incorrect use of their marks in dictionaries, encyclopaedias and similar works of reference has improved. Under Article 10 of the CTM Regulation, such CTM owners can insist that the publishers of these works must indicate the registered trade mark nature of their marks.
The difficulty is simply that the availability of incorrect information on the internet, and the public’s access to such (incorrect) information, is now so widespread that the task of a trade mark owner, such as Kimberly-Clark (the proprietor of the Kleenex brand), in policing the proper use of its brand has become Herculean rather than just difficult. The principles, business and consumer information campaigns, the policing of reputable dictionaries, remain the same. It is simply that far more effort needs to be made than in the pre-internet age.
All one can hope, as the person in charge of trade mark protection, is that the message that a well-known brand is a trade mark and not a generic description is louder and more widely heard than the competing, contrary messages that abound on the internet. As Kimberly-Clark says in one of its internet adverts about the ® symbol that always follows their use of the trade mark Kleenex, “Do not erase…Just pretend it’s in permanent marker”.
In the case of DalsoupleSocieteSaumuroise Du Caautchouc (“Dalsouple France”) v Dalsouple Direct (“Dalsouple UK”) (2014 EWHC 3963 (Ch)), the English High Court considered the meaning of “consent” in relation to trade mark applications.
Dalsouple France has been producing floor tiles and similar flooring material since 1966. Dalsouple UK became the exclusive provider of Dalsouple products in the UK in 1991. An agency agreement identifying Dalsouple UK as Dalsouple France’s exclusive UK agent was signed in 1995. By the late 1990s, annual UK sales of Dalsouple products had reached about £2 million.
From 1966 until his death in 2001, Dalsouple France was run by Mr Raymond Mortoire. In 1989 the founder’s son, Mr Pierre Mortoire became “Directeur General” of the French company. The principal behind Dalsouple UK was Mr Tim Gaukroger. In 2001, following the death of his father, Pierre Mortoire took control of Dalsouple France. In 2009, the French company was sold to a Mr Le Saec.
Until MrSaec took ownership of the Dalsouple brand, the French company appears to have had a very cavalier attitude to trade mark protection. In the EU, the only trade mark registration they seem to have owned was in France and this was filed as late as 2008. However, once MrSaec took ownership the protection of the mark was given a higher priority and an International trade mark application for Dalsouple in Classes 17, 19 and 27 was filed in 2011 designating a wide list of countries, including the UK. This was when MrSaec, and apparently Mr Pierre Mortoire, became aware of the trade mark position in the UK for the first time. This was that in 1998, MrGaukroger, along with his wife, Mrs Julie Gaukroger, had filed a UK trade mark application in joint names for Dalsouple in Classes 17 and 27. This UK trade mark application had proceeded to grant in 1999. This registration was subsequently assigned to Dalhaus Ltd, a sister company of Dalsouple UK also controlled by MrGaukroger.
It was on the basis of this earlier UK trade mark registration that Dalhaus (after the assignment) opposed Dalsouple France’s International (UK) trade mark application (for Dalsouple). In response, the French company sought to invalidate Dalhaus’ earlier UK trade mark registration. The principal grounds relied on in this invalidation action were as follows:
• Section 3(6) of the 1994 Trade Marks Act; Dalhaus’ UK trade mark registration had been filed in bad faith; and
• Section 5(4)(a); Dalhaus’ use of the trade mark Dalsouple would amount to passing off in relation to Dalsouple France’s unregistered trade mark rights.
When the invalidation action came before the UK Trade Mark Office, the Hearing Officer (Mr Bryant) identified the question of consent as the core issue to be decided because, if MrGaukroger (and his wife) had filed the UK trade mark application with the consent of Dalsouple France in 1998 this would defeat the Section 5(4)(a) ground of opposition (under the terms of Section 5(5) of the 1994 Trade Marks Act) and would also probably determine the decision on bad faith (Section 3(6)).
As always, the Hearing Officer had to choose between two very different versions of the facts. MrGaukroger maintained that, because of his very close relationship with Mr Raymond Mortoire and the older Mortoire’s unwillingness to cover the costs of a UK trade mark application because he thought such a UK trade mark registration would largely benefit Dalsouple UK, he (Raymond Mortoire) verbally agreed to MrGaukroger filing the UK trade mark application. In order to establish that, on the balance of probabilities, this version of events was true, MrGaukroger pointed out that, at the same time in 1998, Dalsouple France’s German agent had also registered the trade mark Dalsouple (in Germany) in its own name.
Mr Pierre Mortoire disputed this version. He simply relied on his view that his father would never have given away the most valuable asset of its UK business.
The Hearing Officer preferred MrGaukroger’s retelling of the past. He then found that a consent to a UK trade mark registration did not have to be in writing. It could be an oral statement which should be determined in accordance with the normal rules of procedure under English law. In view of this crucial finding, the Hearing Officer dismissed the Section 5(4)(a) (passing off) and Section 3(6) (bad faith) grounds for invalidation and then the invalidation action as a whole.
This left Dalhaus with an earlier UK trade mark registration for the trade markDalsouple in Classes 17 and 27. This was enough to allow them to oppose Dalsouple France’s later International (UK) trade mark application for the identical mark in Classes 17, 19 and 27 successfully.
Given the impact of this decision on their business and their future business prospects, Dalsouple France appealed to the English High Court (Mr Justice Arnold). It is always extremely difficult to appeal successfully against a decision of the UK Trade Mark Office. Unless the Hearing Officer has made an error in law which, given their use of boiler plate statements when issuing a ruling is very unlikely, the original decision will stand. This was the outcome in this appeal. Mr Justice Arnold considered the meaning of “consent” in relation to the exhaustion of trade mark rights in the EU (Zino Davidoff v A & G Imports, C-414/99 to C-416/99) and decided that the “consent” of an earlier trade mark right owner to the registration of a later trade mark should be interpreted in the same way; that is a person consenting to the registration of a trade mark must unequivocally demonstrate his intention to renounce his rights. This could be done in either an oral or a written statement. The point was that, whatever form it took, it had to be an express statement of consent. Agreeing with the Hearing Officer, the judge found that, on the balance of probabilities, Mr Raymond Mortoire had consented to MrGaukroger’s UK trade mark application for Dalsouple back in 1998. He therefore dismissed the appeal and with it Dalsouple France’s invalidation action. He also confirmed the rejection of the French company’s UK designation of their International trade mark application for Dalsouple.
Sometime after he filed in the UK, MrGaukroger also filed, through Dalsouple UK, a CTM application for the trade markDalsouple in Classes 17, 19 and 27. This application was granted in 2005 and is now in the name of Dalhaus Ltd. This CTM registration has also been attacked by Dalsouple France on the basis of bad faith and their earlier unregistered trade mark rights. In this case, given Mr Raymond Mortoire’s death in 2001, it was rather difficult for MrGaukroger to rely on his verbal consent to the CTM filing. He therefore relied on the alleged verbal consent of the founder’s son, Mr Pierre Mortoire. This claim was refuted by Mortoirefils and, as a result, the bad faith cancellation action against the UK company’s CTM registration succeeded. This decision is now the subject of an OHIM appeal.
It seems clear from this case that an oral consent can suffice under UK law to allow a third party to file for the originator’s trade mark. However, the main lesson to be learnt from this case is that for a company, whose UK agent or distributor has annual sales of about £2 million, not to protect its own mark in key markets is a very bad business decision indeed.
Luke Skywalker is a fictional character who appeared as a main character in the first three Star Wars films, now confusingly renamed Episodes IV to VI. A bit like renaming the English King Henrys I to III, Kings Henrys IV to VI.
Laura Elizabeth Matthews is a real character from the English seaside town of Southend. Apparently, she enjoys “a bit of a laugh”. In order to confirm this quality, in 2008 she changed her name by deed poll to Laura Elizabeth Skywalker Matthews and, it is reported, her signature to L. Skywalker. This change was accepted both by the official authority that issued her new driving licence and by the bank that issued her new bank cards. When Ms Matthews sought a new passport however, her problems started. Her application was rejected by the UK Passport Office on the basis that they would not “recognise a change to a name which is subject to copyright or trade mark”. Specifically, Ms Matthews was informed that her new passport signature would infringe a trade mark. If this rejection were maintained it would, of course, make it very difficult for Ms Matthews not only to visit a galaxy “far, far away” but also to attend the premiere of the new Star Wars film (said to be Episode VII) later this year.
It seems that, unlike the Deed Poll Office, the vehicle licence authorities and her bank, the UK Passport Office does have a trade mark policy. This appears (or appeared) to be that if your name contains a trade mark, you need to obtain the rights holder’s permission before it can appear in a UK passport. How well-known that trade mark needs to be before an objection is raised remains unclear. Presumably an application for the name Robert Viagra Smith would raise such an objection. However, it would be surprising if an application for Robert RGCJenkins Smith would suffer the same fate.
Returning to Ms Matthews, the British press has, of course, had a field day with this story. As a result, a sensible compromise seems to have been reached. Ms Matthews will be allowed to show her full name, including Skywalker, on her new passport, but must go back to the signature as it was before she decided to have “a bit of a laugh”.
The British approach to Italian cuisine has often been a source of consternation to the inhabitants of the land of pizza and pasta. We have been known to put pineapples on the top of pizzas. We have claimed that the meat sauce served with spaghetti came from Bologna. We have even sold pre-cut, packaged Parma ham in supermarkets; the latter abhorrence being curtailed by the European Court of Justice (C-108/01; Consorzio del Proscuitto di Parma v Asda Stores).
Is there no end to such follies? Well, apparently, there isn’t. The latest example of, to Italian eyes, British gastronomical vandalism is the serving of Prosecco wine from a barrel. This widespread practice which, if continued, will probably cause a plague of locusts to rain on London, has raised the considerable ire of a consortium of Italian wine producers. As a spokesman for the producers correctly commented, Prosecco sparkling wine is protected under European Union legislation (Council Regulation No. 479/2008) as a Protected Designation of Origin. Under the PDO, Prosecco must be produced from the glera grape harvested in an area of north-west Italy. Further, it must be sold in that area’s traditional glass bottles.
In order to put a stop to the almost sacrilegious availability of Prosecco on tap in UK pubs, wine bars and restaurants, the consortium has reportedly complained to the UK’s Food Standards Agency, as well as to the UK Trade Mark Office. It remains to be seen whether a test case will be brought against an errant British supplier of this Italian sparkling wine. If it is brought, it would not be entirely surprising if the consortium were to succeed.
To the writer, it seems quite possible that a sparkling wine like Prosecco might deteriorate more quickly in a barrel than in a bottle. If that is indeed the case, then the sale of this sparkling wine on tap, rather than from a pressurised bottle, might well adversely affect the reputation of Prosecco wine. It will be interesting to see whether UK establishments selling this Italian wine from a barrel will be forced to rename it Glera sparkling wine after the new name (Glera) for the grapes used to produce Prosecco. This 2009 dated change (of grape name) coincidentally further protects the interests of Prosecco wine producers in their monopoly of the name Prosecco.
The ukulele, a four stringed member of the lute family of instruments, appears to have originated in Hawaii. It became extremely popular during the early part of the 20th century, a popularity that was fuelled in the UK by the recordings and films of the comedian George Formby, and retained that popularity until the end of the 1960s. It is quite possible that the “singer/musician” Tiny Tim’s hit version of the song “Tiptoe Through The Tulips” may have put a whole generation off the whole idea of playing the ukulele.
Whatever the actual reason for the instrument going out of favour during the 1970s, a revival began about 20 years later which was helped by the appearance of new high profile players such as George Harrison and Frank Skinner.
Another aspect of the revival was the formation of large ensembles of ukulele players. One such group of like minded musicians was The Ukulele Orchestra Of Great Britain (TUOGB). From humble beginnings in 1985, TUOGB has become a highly successful group performing at the Carnegie Hall in New York, Sydney Opera House and even, in 2009, at The BBC Proms in London. In the wake of this success, TUOGB took the wise step of protecting their name as a CTM (in Classes 9, 15, 16, 18, 25, 28 & 41). It was this trade mark right that TUOGB recently attempted to enforce against a competing orchestra before the Intellectual Property Enterprise Court (IPEC).
The new ukulele kids on the block were The United Kingdom Ukulele Orchestra (TUKUO). This group, although made up of British musicians, is, somewhat confusingly, based in Germany. Whilst they remained in Germany gaining reviews such as “Nothing is sacred to the Brits” (no indeed), all remained relatively quiet on the ukulele front. However, when TUKUO announced a UK tour beginning in October 2014, the TUOGB’s gut strings broke and they sought an injunction based on their CTM registration. The IPEC judge (Mr Justice Hacon) refused to grant the injunction primarily because he believed that the competing claims of the two orchestras were finely balanced and TUOGB’s action should have been brought at an earlier stage.
And so, for the TUKUO, “It turned out nice again” and their tour went ahead. Whether this case of duelling ukuleles will continue to a full action later this year remains to be seen.
In an astonishing development, the (European) General Court recently accepted that a slogan could be distinctive and registrable (Pro-Aqua International v Rexair LLC; T-133/13).
Rexair had obtained a CTM registration for the trade markWet Dust Can’t Fly for goods and services in Classes 3, 7 and 37 including “carpet cleaners” (in Class 3) and “vacuum cleaners” (in Class 7). Pro-Aqua sought to cancel the CTM registration (in part) on the basis that the slogan was non-distinctive (Article 7(1)(b) CTMR) and/or descriptive
Surprisingly to the writer, given OHIM’s past practices, the cancellation action was rejected by both the Cancellation Division and the Second Board of Appeal. According to these tribunals, the expression Wet Dust Can’t Fly exhibited originality and resonance and had the effect of setting off a cognitive process in the mind of the relevant consumer. Further, it was noted, there is no such thing as “wet dust”, dust no longer being dust when it is wet.
Pro-Aqua appealed to the General Court probably with some confidence. If they did, it was shattered in a most unusual way, the General Court accepted that this particular slogan could be protected and rejected the appeal. According to the Court,
• “…the expression ‘wet dust can’t fly’ does not describe the goods and services at issue, and the consumer will probably not buy them with a view to preventing dust from flying by wetting it.
• (The) expression cannot be understood as a conventional way of describing the functionalities of cleaning appliances and cleaning tools. Consequently, it is not necessary to ensure that the expression is made available to competitors.
• …an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have distinctive character.
• …the mere fact that a mark is perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character.
• …in so far as the public perceives the mark as an indication of origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character.
• Although the slogan is…slightly suggestive, there is no evidence to support the specific assumption that those goods and services are superior”.
Whether this decision will lead to a bright new dawn for the examination of slogans before OHIM (and EU national trade mark offices) remains to be seen. However, if a slogan refers to a thing that does not exist, this case will at least provide an argument in favour of registration. So, if you are trying to register “The Best Thing Since Cold Fusion”, “Living With The Perfect Man” or “We Offer A Life Without Regret”, remember “Wet Dust”.
Thomas Pink is a luxury clothing business established in 1984. It was named after an 18th century tailor, called Thomas Pink, who operated in the Mayfair area of London. Mr Pink is famous for designing the scarlet coloured hunting coat worn by the fox hunting community that is known as a Pink.
Since its establishment over 30 years ago, Thomas Pink has grown to the point where it owns nearly 100 stores around the world including prestigious outlets in London, New York and Paris. The company employs the brand Thomas Pink. However, it also uses a distinctive PINK logo (see the mark on the left below) both on its goods and on the front of its stores. These marks are protected by UK trade mark and CTM registrations.
Victoria’s Secret is a US based, womenswear retailer which was in fact founded before Thomas Pink, in 1977. Its considerable commercial success has been based on lingerie that is glamorous yet practical and that women consequently want to buy. By 2012, the company had over 1000 stores and an annual turnover in the region of $6 billion.
In 2004, Victoria’s Secret began to sell a new line of lingerie and other womenswear called Pink that was aimed at “college girls”. This was again a success with annual sales reaching over $1 billion by 2010. The clothing is now sold through the company’s Pink branded stores. The favoured logo on swing tags and labels featured the large word Pink in capital letters over the house mark (Victoria’s Secret) in smaller capital letters. However, on its shop fronts and on some of its products, the US company simply used their own Pink Device. This device, as shown on the right below, bore some resemblance to the Pink logo of Thomas Pink.
Eight years later, in 2012, Victoria’s Secret opened its first Pink store in London to sell Pink branded merchandise. This is where the trouble started. Thomas Pink brought a trade mark infringement action under Section 10 of the UK Trade Marks Act (and Article 9 of the CTM Regulation). The Jermyn Street retailer argued both that Victoria’s Secret’s Pink goods would confuse the average UK consumer (Section 10(2)) and that there was a real risk that the use of Pink on the goods sold by Victoria’s Secret would tarnish or cause detriment to Thomas Pink’s reputation in its more traditional Pink brand (Section 10(3)). They also pointed to some, limited evidence of actual market confusion.
In response, Victoria’s Secret counterclaimed for the revocation and invalidity of Thomas Pink’s registrations arguing, in particular, that the word Pink was non-distinctive/descriptive for Class 25 goods (Sections 3(1)(b) and 3(1)(c) of the 1994 Trade Marks Act).
The English High Court (Mr Justice Birss) held that Thomas Pink’s UK trade mark registration for their Pink logo was inherently unregistrable given the well-known meaning of the English word pink. However, he accepted that the mark had acquired distinctiveness through widespread use in the UK and that, as a consequence, the UK trade mark registration was valid and enforceable.
The Judge then moved onto the issue of trade mark infringement. He found that Victoria’s Secret’s use of their Pink device on its own, both on store fronts and on some clothing, would be likely to be confused with Thomas Pink’s Pink logo. Such confusion would not occur however when the combined Pink and Victoria’s Secret mark was used. As far as the tarnishment or detriment of Thomas Pink’s mark was concerned, the Judge found that there was a real risk of detriment to Thomas Pink’s Pink logo. (He did not use the word “tarnishment” as this was seen as “unduly pejorative”). In Mr Justice Birss’ opinion, the sexy, mass appeal of Victoria’s Secret products would diminish Thomas Pink’s reputation for high-priced luxury goods. The Judge therefore found trade mark infringement under both Section 10(2) (likelihood of confusion) and 10(3) (detriment to reputation) in relation to Victoria’s Secret’s use of its Pink device on its own both on its clothing and on its store fascia.
It appears that Thomas Pink’s goods and Victoria’s Secret’s clothing have coexisted in the US for some time. It will be interesting to see if that commercial situation continues in the light of this UK decision.
Abu Kass UK Ltd applied to register the Abu Kass logo shown on page 16 (UK 2618902) in April 2012 in relation to, amongst other goods, “rice” in Class 30. The mark was registered in July 2012. Subsequently, Abu Kass UK filed a notice with the UK customs authorities so that any rice bearing the registered Abu Kass logo was detained at the UK border.
A year later, SalehAbdulazizBabaker Sons applied to invalidate Abu Kass’ UK trade mark registration on the basis that it had been applied for in bad faith (Section 3(6) of the 1994 Trade Marks Act). Babaker sold significant amounts of rice under virtually an identical Abu Kass device in Saudi Arabia ($170 million worth in 2012) and lesser amounts in other Arab countries and Indonesia. Low levels of Babaker’sAbu Kass rice, bearing the Saudi Arabian logo, had also been imported into the UK, about £80000 worth per year from 2009 to 2011, by a company called DamasGate Wholesale. There was however no local (UK) promotion of the Abu Kass rice brand by DamasGate.
In October 2012, a shipment of Babaker’s rice bearing their Abu Kass device was detained by UK Customs based on Abu Kass UK’s trade mark registration for their Abu Kass logo.
The Hearing Officer (Mr Allan James) had to decide whether Abu Kass had registered its mark knowing that it “would cause confusion (amongst those who knew of Babaker’s reputation in their Abu Kassdevice mark) and block Babaker from importing and marketing its own rice under its marks in the UK”.
Mr James noted that, in relation to bad faith, it was important to distinguish between the situation where the UK trade mark applicant (in this case Abu Kass UK) knew that another party (in this case Babaker) used that (same) mark in a different territory, and that there was some spillover reputation in the UK, and the situation where the UK applicant is aware that the other user (Babaker) already has customers in the UK.
In the present case, there was no evidence that Abu Kass UK knew of DamasGate’s importation of Babaker’s (Abu Kass) rice. It followed, in Mr James’s opinion, that the local (UK) use and reputation of DamasGate/Babaker in their Abu Kass device was irrelevant to the question of whether the UK trade mark proprietor (Abu Kass UK) had applied to register its mark in bad faith. However, on the evidence, Mr James decided that Abu Kass UK was aware of Babaker’s use of its Abu Kass device in Saudi Arabia.
Bearing the above factual findings in mind, Mr James moved on to consider the issue of bad faith. He began by noting that he was “unsure whether an intention to take advantage in the UK of the reputation of a trade mark known to be used by a third party abroad is sufficient, without more, to constitute bad faith” for the purposes of the 1994 Act (Section 3(6)).
This was not the end of the matter however. It also had to be decided whether Abu Kass UK’s trade mark application had been filed in the UK to block Babaker from exporting its own rice to the UK and marketing that rice under its existing marks. Mr James took the view that the fact that Abu Kass UK
• Knew of the reputation of Babaker’s marks abroad,
• Had identified that this reputation had a certain commercial value (in the UK), and
• Had filed a customs notice to stop the import of Babaker’s (Abu Kass device) rice before they had sold any of their own (Abu Kass UK) rice,
pointed to the conclusion that one of Abu Kass UK’s intentions when registering the mark was to block Babaker’s imports to the UK. Such pre-emption, in the circumstances of the present case, fell below the reasonable standards expected in commerce. Mr James therefore concluded that Abu Kass UK’s trade mark application (for the Abu Kass logo) in the UK had been filed in bad faith not only for rice but, given the reputation of Babaker amongst Saudi Arabian citizens in the UK, for all of the goods applied for.
This is a sensible decision. However, it is surprising to the writer that there are circumstances where a UK trade mark applicant can file and validly register a complex device mark owned and used by an unrelated, foreign third party and get away with such blatantly unfair commercial behaviour.
The question of res judicata was re-examined by the General Court in a recent case (T-11/13) involving Tegometall International and Irega AG.
Irega applied for the mark MEGO at OHIM to cover goods in Classes 6 and 20. The CTM was registered following an unsuccessful opposition filed by MrBohnacker, legal predecessor of Tegometall, on the basis of earlier CTM, national and international registrations for TEGO and TEGOMETALL in Classes 6, 20 and 21.
Shortly thereafter, Tegometall applied to cancel Irega’s CTM registration. The Cancellation Division rejected the cancellation action on the basis that, despite the identity of the Class 6 and 20 goods, there was no likelihood of confusion in view of the dissimilarity of the marks in question.
Tegometall subsequently filed an appeal against the decision of the Cancellation Division. However, the First Board of Appeal dismissed the appeal on the basis that the request for cancellation of the CTM registration was not admissible since the same substantial grounds had been used as basis of an opposition filed by the legal predecessor of Tegometall (that is MrBohnacker) against Irega’s CTM application for MEGO and this opposition had been rejected by the Opposition Division in a decision issued on 6 March 2007. This opposition decision had become final following the rejection of an appeal filed against it and led to the inadmissibility of any later requests for cancellation filed in the same dispute on the same facts.
In a further appeal, the General Court (T-11/13) held that the First Board of Appeal had erred in finding that the cancellation action was not admissible due to res judicata based on an earlier opposition decided on the same legal grounds.
In its rather short decision, the General Court reminded the First Board of Appeal that the principle of res judicata does not apply in respect of the interaction between opposition and cancellation decisions, considering that OHIM decisions are administrative in nature and that res judicata was not specifically envisaged in EU Directive no. 207/2009.
The outcome of this decision comes to no surprise to the writer since it reiterates the essence of the General Court’s findings in Ferrero S.p.A. v. Tirol Milch(Case T-140/08) pursuant to which 1) the filing of an opposition against a CTM application does not automatically exclude the possibility of filing a cancellation action once the CTM has proceeded to registration and using the same legal grounds and 2) decisions rendered by OHIM in opposition proceedings do not have any binding effect on subsequent cancellation proceedings so that an unsuccessful opponent is not prevented from having another bite of the legal cherry by filing a cancellation action on the same grounds.