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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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A recent case before the (European) General Court (Mundipharma v Asociacion Farmaceuticos Mundi (AFM)) struck a blow for common sense in relation to Class 5 practice. AFM filed a CTM application for a figurative mark containing the words.

Farma Mundi in respect of pharmaceutical preparations (and similar) in Class 5, as well as related retail services in Class 35 and distribution services in Class 39. The application was opposed by Mundipharma on the basis of an earlier CTM registration for a mundipharma logo covering Class 5 goods, as well as medical services in Class 44. The opponent relied on the arguments that the two marks were similar whilst the two sets of goods and services were either identical or similar (Article 8(1)(b) CTMR).

The Opposition Division agreed, but only in part, with the opponent. They rejected the opposed CTM application in so far as it covered Class 5 goods and Class 35 services. However, they allowed the application to proceed for the Class 39 services claimed. Mundipharma appealed, but the Board of Appeal upheld the original decision. In the Board's opinion, Class 5 goods and related Class 39 services had a different nature and purpose. Further, they were neither interchangeable nor substitutable and not in competition. Finally, the relevant end consumers were different, in the case of Class 5 goods, patients, in the case of Class 39 services, transport distribution professionals.

Mundipharma appealed again. Once again they were unsuccessful. In agreeing with the Board of Appeal, the General Court found as follows:
•    "...even where the goods in Class 5... and the storage, distribution, delivery and packaging of pharmaceutical...preparations in Class 39...show some kind of connection..., in particular in so far as the manufacture and sale of those (Class 5) goods may also involve their storage, distribution, delivery and packaging, that fact is not sufficient for them to be considered complementary in the present case".

•    By definition, goods and services intended for different publics cannot be complementary".
The Court therefore rejected Mundipharma's appeal and allowed the opposed CTM application to proceed in relation to Class 39 services.

This General Court decision strikes a blow for common sense. It is hard enough to clear a new trade mark in Class 5 when one is forced to consider related goods and services in Classes 1, 3, 10 and 35 (as well as identical or similar goods in Class 5). If Class 39 services were added into the mix, the task of clearance would become all the harder.

If a pharmaceutical company wishes to prevent the registration and use of a conflicting mark in Class 39, based on their rights in Class 5, then they should have to rely on their reputation in the (Class 5) mark and the argument that the later Class 39 entrant would ride on the coattails of the earlier mark (L'Oreal v Bellure, C-487/07).

There was a time when a British state school employed teachers to provide an education to its pupils; the whole process being government funded. Oh, happy day. Through a series of legislative changes however, the system now relies on service providers (formerly known as teachers) who interact with their customers (previously referred to as parents and children), and increasingly charges them for the privilege.

Given that the harsh winds of capitalism are now blowing through the British educational system, it is perhaps no surprise to learn that even humble state schools are looking to intellectual property rights to protect their market position.

It therefore came to pass that Aberdare Girls' School, a comprehensive school situated in the Rhondda area of South Wales, applied to register its school badge as a UK trade mark for clothing. The badge had been designed by one of the school's pupils (Ms. Bethan Lloyd) and, prior to filing its application, the school had had the foresight to get Ms. Lloyd to assign her rights in the badge design to the school.

The trade mark application was opposed by Mr. Graham Marsh, who for many years had affixed the school's badge to uniforms and sold the finished articles to parents; all of this being done with the knowledge of, but without the permission of, the school. Mr. Marsh opposed the school's application primarily on the ground that it had been filed in bad faith (Section 3(6) of the 1994 Act). He alleged that the aim of the application was to give the school a monopoly in the badge and to force local retailers to stop providing their badge affixing services to parents. He also pointed to Department of Education guidelines which require that state schools should not operate as "sole suppliers" of their uniforms in order to "raise additional funds through the sale of new school uniforms".

The Hearing Officer deciding the opposition was not sympathetic to Mr. Marsh's case. According to the Hearing Officer, there was "nothing inherently wrong with a school applying to register its school logo as a trade mark for clothing". Further, in the Hearing Officer's view, registration of the school's logo was not inherently inconsistent with the Department of Education guidelines referred to by Mr. Marsh. It (the registration) would simply allow the school to choose (and control) its suppliers, either by licence or by simply giving consent. On this basis, Mr. Marsh's opposition was rejected and the trade mark application was allowed to proceed.

Aberdare Girls' School's motto is Oni heuir, ni fedir, the Welsh for You cannot reap unless you sow. The original choice of this phrase probably referred to the advantages of a universal education system for children.

In the European (General) Court case between Maurice Emran and Guccio Gucci (T-187/10), a comparison of two stylised letters G (eventually) took place.
Mr. Emran applied to register a square shaped letter G, together with the phrase G Line in very small lettering, (CTM 2421402) covering a variety of goods in Classes 9, 18 & 25. G Line appears to be a clothes shop based in the French city of Marseilles. The application was opposed by Guccio Gucci on the basis of:

•    An earlier CTM registration for a rounder letter G covering identical goods (in Classes 9, 18 & 25; CTM 122077) and an earlier Italian trade mark registration (no. 403561) for a similar (rounder) letter G (in Classes 18 & 25) (Article 8(1)(b); CTMR); and
•    Unregistered square shaped letters G that were said to be well-known in France (Article 8(2)(c)).

The Opposition Division upheld the opposition, but only on the basis of Gucci's unregistered French (allegedly) well-known marks. This decision was overturned by the Second Board of Appeal since they were not convinced that the evidence put forward by Gucci had established that the unregistered square shaped letters G were well-known in France. Whilst the Board accepted the well-known nature of the trade mark Gucci, the separate well-known nature of the letter G had not been established. In the Board's opinion, in the case of a mark, such as Gucci's letter G, which had an inherently low distinctiveness, extremely convincing evidence to show public recognition of that mark was required in order to establish well-known status. Gucci's evidence had not met that standard.

That was not the end of the matter however. Because the Opposition Division had only relied on one of Gucci's grounds of opposition when making their decision, a common practice that results in much unnecessary cost and effort on the part of both protagonists in a CTM opposition, the Board of Appeal then remitted the case back to the Opposition Division for further consideration.

This time the Opposition Division did consider the impact of Gucci's registered trade marks. Their conclusion was however that the CTM mark applied for and Gucci's earlier registered letters G were not similar, particularly from a visual point of view, and that, given that in the Opposition Division's view, the opponent had not provided any evidence of the enhanced distinctiveness of the earlier registered marks, the Article 8(1)(b) ground of opposition failed.

Gucci appealed and this time the matter was considered by the First Board of Appeal. The Board took a different view to the Opposition Division on the question of the similarity of the marks. The Board found a greater degree of visual similarity between the CTM mark applied for and Gucci's earlier marks, especially their Italian registered mark, than had the Opposition Division. Further, and contrary to the opinion of the Opposition Division which ruled that no conceptual comparison was possible between the marks, the Appeal Board found a conceptual identity.

The Board also accepted, which the Opposition Division had not, that Gucci's earlier registered marks had an enhanced reputation gained by their use of various letters G, as an abbreviation of the well-known mark Gucci, in respect of Class 18 and 25 goods in the EU.

In view of this, according to the Board, the relevant consumers would be likely to believe that the commercial origin of goods bearing the CTM mark applied for would be the same as that of the opponent's earlier registered marks, if these marks were all used in respect of identical goods.

The Board dismissed the CTM applicant's argument that other well-known fashion marks, such as Givenchy, Guy Laroche and G-Star contained prominent letters G, since the applicant did not provide any evidence of coexistence on the market, merely on trade mark registers. Their decision was also unaffected by an earlier French Court judgment in which Gucci failed to prevent the sale of goods bearing the CTM applicant's G-Line mark (containing the opposed letter G) in France. The Board distinguished this decision on the basis that, in France, Gucci had not (could not) rely on their earlier Italian trade mark right and the French court did not address the issue of how the reputation of the Gucci brand influenced the position.

Mr. Emran appealed to the General Court but to no avail. The Court agreed with the reasoning of the Appeal Board and therefore, given the similarity of the marks (especially the CTM mark applied for and Gucci's Italian mark), the identity of the goods, the possibility of imperfect recollection and the tradition in the fashion industry to employ different figurative marks over time, they dismissed the appeal and rejected Mr. Emran's CTM application.

This opposition has now been running for over seven and a half years. It would have been concluded long ago if the Opposition Division had done its job properly in the first place by considering and ruling on all of the opposition grounds raised by Gucci. The regular practice of deciding CTM oppositions on the basis of just one of the trade mark rights relied on or just one of the opposition grounds raised can often lead to unnecessary further proceedings. This is to the advantage of no one except perhaps a CTM Opposition Division that wishes to get the case off their desk. If the issue underlying this practice is that the Opposition Divisions have too many cases to consider, then, given OHIM's huge surplus of funds, there is an obvious solution that would improve Opposition Division practice, as well as reducing the unwanted surplus.

In the UK trade mark opposition between Swirl Products and SmithKline Beecham, the Hearing Officer found no likelihood of confusion (Section 5(2)(b) of the 1994 Trade Marks Act) between Swirl's Nit Nurse medicated, anti-lice shampoos and SKB's well-known Night Nurse pharmaceutical preparations, including liquid preparations, for the treatment of flu, especially in children. This decision was made in spite of the obvious dangers associated with an error being made between the two products. The Hearing Officer also dismissed SKB's claim that the trade mark Nit Nurse would take unfair advantage of or be detrimental to the distinctive character or the repute of the Night Nurse trade mark (Section 5(3)). SKB had given no evidence that the use of Nit Nurse would either "ride on the coattails" of Night Nurse or "blur" its reputation. Further, in the Hearing Officer's view, there was no reason to believe, in the modern age, that an anti-lice shampoo would "tarnish" the image of the Night Nurse product.

Perhaps the most interesting aspect of this decision is that, on the Section 5(3) ground at least, it is at complete odds with a decision made by the UK Trade Mark Office in an SKB opposition to an earlier trade mark application for the trade mark Nit Nurse, filed 8 years earlier by Mr. Richard Conroy for anti-head lice shampoos. In that case, the Hearing Officer refused the application (for Nit Nurse) under Section 5(3), commenting that "We are comparing a well-known oral medicine, with a long commercial history, and a treatment for... blood sucking insects who make their home on the human body. I cannot help but feel that tarnishing of the opponent's reputation will most certainly occur".

If SKB appeal, and in the writer's opinion, they should, they must dearly hope that the Appeal Tribunal is as squeamish as the original Hearing Officer rather than as broad minded as the later one.

On a more important point, it is the writer's view that public safety concerns should be part of the global assessment when comparing marks and goods, especially in Class 5.

The catastrophic effect of a parent administering a spoonful of Nit Nurse shampoo at 3.00am in the morning to a child suffering from influenza should not be ignored when considering the possibility of a likelihood of confusion or the tarnishment of the reputation of SKB's Night Nurse product.

In one of their more questionable decisions, (Diagnostiko Kai Therapeftiko Kentro Athinon v OHIM), the General Court recently rejected the Greek word for health (uЧεία) in respect of medical services.

The CTM applicant runs the Hygeia hospital in Athens, a large private hospital that has operated since 1974 and where the first heart transplant operation in Greece was conducted, and the first treatment of an HIV patient took place in that country.

The hospital is widely known throughout Greece, the area of Athens where the hospital is located even being named after it. The CTM applicant owns a Greek trade mark registration for the mark covering medically related services.

Armed with this evidence, and with plans for expansion in Cyprus and South-Eastern Europe, Diagnostiko filed its CTM application (no. 7129001) in Class 44. The CTM Examiner refused the application on the basis that the mark was non-distinctive and descriptive (Articles 7(1)(b) and (c) CTMR). The CTM applicant appealed.

The Board of Appeal maintained the objection that the mark was inherently non-distinctive in respect of the Class 44 services claimed, perhaps an unsurprising view. However, they also found that the CTM applicant had failed to overcome that objection on the basis of acquired distinctiveness, a more surprising view.

Diagnostiko appealed again, this time to the European (General) Court. The General Court maintained the 7(1)(b) and (c) objections in terms that should concern all those hoping to protect borderline distinctive word marks via the CTM. The Court accepted that the CTM mark applied for was well-known in Greece. However, they then noted that there were two Greek speaking countries in the EU, Cyprus and Greece and that the CTM applicant's activities in Cyprus had been limited to concluding a share purchase agreement with two Cypriot hospitals. It followed that Diagnostiko had not established acquired distinctiveness of its mark in Cyprus and that was enough for the Court to be able to reject the CTM application.

The mark applied for (uЧεία) is inherently distinctive, according to European Court case law (see Matratzen Concord v Hukla Germany), in 25 of the 27 EU countries, given the lack of understanding of the Greek language in those countries. It is also distinctive in Greece because of the use made of the mark there. That leaves Cyprus, an island with a population of 800,000, that is 0.16 of the total EU population and about 6.6% of the Greek speaking population. If the Court is correct and a CTM mark should be refused under such circumstances, then the law, as Dickens famously wrote in Oliver Twist, is a ass and is in urgent need of reform. Further, if the Court is correct, then the owners of borderline, non-distinctive English language marks should beware because OHIM will start to consistently demand proof of acquired distinctiveness in English speaking Malta as well as in many other (English speaking) parts of the EU.

As far as the Diagnostika case is concerned, surely a better, and more commercially realistic view, would be that the CTM applicant has chosen a mark that is distinctive in over 99.8% of the EU and in over 93% of the Greek speaking part of the EU. On that basis, the mark can be accepted as distinctive, whatever the position in a very small part of the region.

When you can prove the reputation of a CTM mark by showing that reputation in only one EU country (Austria), when you can maintain the validity of a CTM by showing genuine use of the mark in only one EU state, then to refuse a CTM word mark as non-distinctive when it is distinctive in virtually the whole of the EU seems perverse. It is strongly hoped that this case will be appealed and that the European Court of Justice will issue a much more sensible decision.

The importance of punctuation in written language should never be underestimated. Sometimes it can mean the difference between winning and losing in trade mark cases.
In the UK trade mark opposition between EPM Telecommunications and Nu Technologies, the applicant had filed for a stylised form of the trade mark Orbitel covering telecommunications services in Class 38.

The trade mark application was opposed by Nu on the basis of a number of earlier UK trade mark registrations for ORBITEL (word) covering a variety of telephone related goods and services in Classes 9, 37, 41 and 42. All of these earlier trade mark rights were subject to use requirements and so Nu were required to show proof of genuine use of their trade mark ORBITEL in the UK during the five years prior to the publication of EPM's trade mark application.

Nu's evidence showed over £1.1 million worth of sales of an ORBi-TEL branded hardware and software during the period 2004 to 2007. Realising that the mark they had used was not in the same form as the mark they had registered, Nu relied on Section 46(2) of the Trade Marks Act 1994 under which the use of a mark which does not alter the distinctive character of the mark as registered counts as genuine use of the registered mark. They argued that the presence of a "mere" hyphen should not be seen as altering the distinctive character of the registered mark ORBITEL.

The Hearing Officer disagreed. She concluded that, although the two marks ORBITEL and ORBi-TEL were phonetically identical, they exhibited significant visual and conceptual differences. In the Hearing Officer's view, the dominant and distinctive element of the mark as used was the string ORBi. By contrast, the mark as registered would be seen as a whole and its distinctive, dominant element was therefore the invented word, ORBITEL.

For this reason, she concluded that the use of the trade mark ORBi-TEL could not be counted as genuine use of the trade mark ORBITEL. It followed that the use provisions required under UK trade mark opposition practice had not been met and the opposition failed.

This decision could have a significant impact on Nu's business, if EPM were now to seek to revoke their (Nu's) earlier UK trade mark registrations for ORBITEL on the ground of five years' non-use and the Hearing Officer were to come to a similar conclusion on use as was reached in the above opposition.

Ann Taylor is a US chain of women's clothing stores. In the fifty years since the first store opened, it has established over 900 outlets in the US. In 1996, it developed a line extension of leisure clothing called Ann Taylor Loft, the present logo of which is shown above.

Loft Design By is a French fashion house that was created by Patrick Freche in 1989. It now has numerous stores in France, as well as three in London. The company's logo (LOFT design by) is shown below.

In 2004, Annco, Inc., the IP holding company for Ann Taylor, filed a CTM application for the trade mark Ann Taylor Loft (word mark)covering goods and services in Classes 18, 25 & 35. The application was opposed by Freche et Fils based on an earlier French trade mark registration for the word mark Loft claiming identical Class 18 and Class 25 goods. At the time of the opposition, the opponent did not own any CTM rights for the trade mark Loft, although they now have such a CTM (for Loft) dated January 2007 in Class 25.

The Opposition Division upheld the opposition in respect of the (Class 18 and 25) goods, though not in relation to the (Class 35) services. In the Opposition Division's view, the marks had a "medium degree of similarity due to the fact that the concept relating to a loft was present in both marks", Loft being a French word having the same meaning as its English equivalent.

The US applicant appealed, but the appeal was rejected. The Appeal Board came to the same conclusion as the Opposition Division but by different, rather flawed reasoning. According to the Appeal Board, the word Loft would be perceived (conceptually) as either a meaningless English noun or as a surname. (It might have helped their considerations if they had looked the word up in a French dictionary). Either way, on this analysis, Loft would be the dominant element of the CTM mark applied for and therefore a likelihood of confusion between the applicant's Ann Taylor Loft (Class 18 and 25) goods and the opponent's identical Loft products was inevitable in France.

The CTM applicant appealed again, this time to the General Court who reversed the Appeal Board's decision and rejected the opposition. The Court agreed with the Opposition Division that Loft was quite a commonly used French word. However, distinguishing their analysis from that of both the Opposition Division and the Appeal Board, the Court found that the Ann Taylor element of the CTM mark applied for would be much more distinctive to the relevant French public than the word Loft because "the latter word has a clear and specific meaning in French". 

The Ann Taylor component would therefore, according to the Court, "attract more attention from the target public" and, as a result, the overall similarity between the marks was weak. Since the purchasing public were accustomed to the same clothing company using sub-brands that included the principal mark, they would not establish a connection between the signs Ann Taylor Loft and Loft because the latter did not include the distinctive house mark Ann Taylor.

For once, the Court recognised that their reasoning was completely at odds with earlier judgments of the European Court. See, for example, Medion v Thomson Multimedia (C-120/04). In that case, the Court of Justice was comparing the trade marks Thomson Life and Life in relation to "leisure electronic devices".

They ruled that there could be a likelihood of confusion between a word mark (Life) and a composite mark (Thomson Life), even where the word mark was not the dominant feature of the composite mark, providing the word mark retained an independent distinctive role in the composite mark. According to the ECJ in the Thomson Life case, to require the word mark to be independent, distinctive and dominant in the composite mark would deprive the owner of its exclusive rights in the word mark.

Faced with that rather inconvenient earlier ruling by the ECJ, the General Court merely sought to distinguish their finding in the Ann Taylor Loft case by noting that the goods (Class 18 and 25) in the opposition under consideration, as well as the market and relevant public for those goods, were different to the leisure electronic devices at issue in the Thomson Life case.

And we wonder why there is no consistency in European trade mark practice! We had just got used to the widely accepted position that a combination of a house mark and a distinctive word mark would be found to be confusingly similar to the identical (distinctive) word mark, when we find that it ain't necessarily so.

You have to take into account the nature of the goods (or services) involved. Whilst there may be very specific and specialised markets in which this distinction can be made, it is very hard to believe that it is the case in two fast moving consumer markets as clothing (and accessories) and leisure electronic devices. Is it really true that, whilst a John Lewis Loft range of clothing will not be confused with a Loft clothing range sold by Freche Fils, a John Lewis Loft television will be confused with a Loft television (sold by, say, Philips)?

So, in the writer's view, the CTM applicant was fortunate to succeed in this opposition. Given the nature of the logo that they actually use to sell Ann Taylor Loft clothing (see above) however, the word Loft being far bigger than the words Ann Taylor, the CTM applicant should think very carefully about launching their leisure range of clothing in the EU under that mark in the face of Freche et Fils trade mark rights in Loft. Further, they should note that, even if they decide to use their stylised mark in the EU, it is unlikely to save a CTM registration for Ann Taylor Loft from a successful revocation action in five years time.

Christian Louboutin's high heeled shoes with the characteristic red soles have been part of the fashion scene since 1993 when he created his first design using red nail varnish to coat the usual black sole. Since then, Mr. Louboutin's shoes have adorned the feet of many well-known women such as Princess Caroline of Monaco, Catherine Deneuve, Nicole Kidman and Maria Sharapova.

It is now reported that Mr. Louboutin is suing the French fashion house Yves Saint Laurentor producing competing shoes having an (allegedly) similar red lacquered sole. Given that Mr. Louboutin sells over half a million shoes a year and that the prices start at about £300 a pair and rise as high as some of his shoes, it is not surprising that he would seek to keep a monopoly in the striking red soles.

As far as relevant trade mark protection is concerned, Mr. Louboutin already owns a UK trade mark registration (no. 2472368) for the colour red applied to the sole of a ladies shoe. This case was accepted on the basis of acquired distinctiveness. The equivalent CTM application (no. 8845539) was, very surprisingly, given OHIM's general attitude to colour marks, recently accepted by the Second Board of Appeal as inherently distinctive for "high heeled shoes" (Appeal No. R 2272/2010-2).

It remains to be seen if there are any other third party manufacturers of red soled shoes out there who will oppose the grant of Mr. Louboutin's CTM application. As I recall, Dorothy wears such (red soled) shoes in The Wizard of Oz, as does the fictional dancer, Vicky Page, in The Red Shoes.

However, anyone seeking to prevent the registration of Mr. Louboutin's CTM or the enforcement of his trade mark rights, may have to rely on more than that.

The General Court case between Alder Capital and Gimv Nederland (T-209/09) highlighted a point of CTM practice that must always be borne in mind, namely that OHIM Boards of Appeal are not constrained by the ground(s) of appeal when considering the merits or otherwise of an appeal.

The case began with a cancellation action brought by Gimv against a CTM registration for Alder Capital in Class 36. Gimv relied on a Benelux trade mark registration and an International trade mark registration (designating inter alia Germany and Italy), both for the trade mark Halder and both covering services in Classes 35 and 36. They also relied on trade and company name rights in Halder, including Halder Holdings B.V.

Gimv's registered trade mark rights were both subject to proof of use requirements and Alder duly asked them to prove use of the trade mark Halder in the relevant territories during the relevant period. Gimv filed a very limited amount of evidence, the best of which was five annual reviews of Halder's activities in the Netherlands, five annual company brochures, five advertisements which mentioned the word Halder and a number of newspaper articles in European newspapers which referred to Halder, Halder Investments B.V., Halder Beteiligungsberatung GmbH and similar. Given the paucity of the evidence of use, the Cancellation Division found that genuine use of the trade mark Halder had not been established and that therefore the cancellation action based on the prior registered trade mark rights failed (Article 8(1)(b); Article 53(1)(a) CTMR).

That was not the end of the matter however because the Cancellation Division then moved onto Gimv's unregistered rights in Halder and rights containing Halder (Article 8(4); Article 53(1)(c) CTMR).

Here the Cancellation Division took a different view on the evidence of use filed. They decided that, from all of the documents filed, it was reasonable to infer that Gimv had carried out trade in the Netherlands under the business sign Halder for investment related services. Having made that rather surprising decision, the Cancellation Division then concluded that the relevant public would be likely to think that the registered CTM mark (Alder Capital) and Class 36 services came from the same or an economically linked undertaking as the earlier Halder investment services.

They therefore found that the Article 8(4) ground of validity was well founded and they declared the CTM registration invalid on that ground (Article 8(4)).
Alder Capital appealed against the adverse Article 8(4) decision and filed a considerable body of evidence dealing with unregistered rights in the Netherlands. Gimv responded, dealing principally with the issues raised by Alder Capital. However, in a fateful aside, in a single paragraph, they asked the Appeal Board to reconsider the Cancellation Division's findings on the genuine use of Gimv's registered marks.

The case came before the Second Board of Appeal who, ignoring the basis of Alder's appeal, decided to undertake a complete review of the contested decision. To justify this, they relied on Article 8(3) of the Regulation (EC 216/96) setting the procedures to be followed by OHIM's Boards of Appeal. Article 8(3) states:
"In inter partes proceedings, the defendant may, in his or her response, seek a decision annulling or altering the contested decision on a point not raised in the appeal...".

According to the Appeal Board, Gimv's request for a reconsideration of the Cancellation Division's adverse decision on genuine use (of Halder) meant that they were seeking such an annulment or alteration of the first-instance decision on the Article 8(1)(b) ground of cancellation.

They therefore proceeded to reconsider the cancellation action based on Gimv's earlier registered trade mark rights.

The reader may not be surprised that the Appeal Board took a different view to the Cancellation Division on the question of genuine use of the trade mark Halder. Relying entirely on the evidence and observations that had been put in at the Cancellation Division stage, no further evidence or observations having been filed by either party at the Appeal Board stage, the Appeal Board decided that Gimv had in fact established genuine use of the trade mark Halder in Benelux, Germany and Italy for certain investment services.

Having made that finding, it was almost inevitable that the CTM registration would now be found invalid on the basis of Article 8(1)(b) CTMR, that is in view of Gimv's earlier trade mark registrations.

Having made this decision, the Appeal Board felt it unnecessary to consider the actual ground of Alder Capital's appeal (against the adverse Article 8(4) finding at first instance). The Board noted that the CTM proprietor had "expended considerable effort in filing and substantiating its appeal based on Article 8(4)". However, the fact that they had completely wasted that effort on the wrong ground was, according to the Board, and I paraphrase, "their lookout".

Alder Capital, who were probably spitting blood by now, appealed to the General Court. The Court was not sympathetic. As far as the powers of the Appeal Board to consider an appeal are concerned, the Court referred to Article 64(1) CTMR which states that "The Board of Appeal may...exercise any power within the competence of the department which was responsible for the decision appealed...".

In other words, they were perfectly entitled to overturn the Cancellation Division's decision on the genuine use of the trade mark Halder, even though that point had not been fully argued during the appeal. On the question of proof of use (of Halder), the Court concluded that the evidence was adequate to establish genuine use of that mark in Germany. Once again, once such genuine use had been accepted, the Court was almost bound to find a likelihood of confusion between the earlier mark and services and the CTM mark (Alder Capital) and (Class 36) services and consequently to invalidate the CTM registration.

It is perhaps not a complete surprise to learn that this case has been appealed to the European Court of Justice.

The millionth CTM application was filed on 12 May 2011. The honour went to a Swedish coffee retailer, Kaffekompaniet Din Pauspartner with their application for their Kaffe Kompaniet logo in Classes 30, 35 and 43.

In some CTM oppositions, the owners of non-distinctive or borderline distinctive marks can be given enforcement rights against later, conflicting third party marks that are unjustifiably broad. A recent opposition (Alberto-Culver v The Wella Corporation) shows that different rules apply before the UK Trade Mark Office.

The case involved a UK trade mark application for the mark Funky Shaper claiming hair care products in Class 3. The application was opposed by Wella on the basis of their earlier CTM registration for Shaper covering identical goods. This CTM registration was accepted by OHIM in the late 1990s, a time when virtually all CTM applications were accepted as inherently distinctive simply to shift the enormous backlog.

Wella was asked to prove use of their mark in the EU during the relevant five year period. The evidence of use filed showed that Shaper was a "sub-brand" for the well-known hair care mark, Sebastian.

The Hearing Officer was not impressed by either Wella's evidence of use nor by the inherent distinctiveness of either Shaper (or the UK mark applied for, Funky Shaper). He first dismissed Wella's claim that they had a reputation in Shaper acquired through use (Section 5(3) of the 1994 Trade Marks Act). Moving on to a likelihood of confusion (section 5(2)(b)), he accepted that the earlier CTM (for Shaper) had a "presumption of validity". However, he continued, "A presumption of validity does not lead to a presumption of confusion because of similarity".

The Hearing Officer agreed that the respective goods were identical and that the two marks had clear similarities. However, in his opinion, at the filing date of the opposed UK trade mark application neither trade mark would have been "seen by the average consumer as indicating origin". As a result, that (average) consumer would not believe that the two sets of goods came from the same company or economically linked companies. The Section 5(2)(b) opposition therefore failed.

Of course, Alberto-Culver's UK trade mark application for Funky Shaper should have been opposed on the ground that it was non-distinctive or descriptive in respect of the hair care products claimed (Section 7(1)(b)(c) of the 1994 Act). However, when you own a CTM registration for Shaper covering the same goods, it would be the trade mark equivalent of shooting oneself in the foot to rely on such an argument.

Proving the acquired distinctiveness of non-traditional trade marks such as colours or shapes has, as a result of a series of European Court decisions, been made a virtually impossible task. The standard now requires evidence of such acquired distinctiveness in each of the 27 member states of the EU. This entirely unrealistic standard has now also been applied by the Court to an additional type of trade mark, letter marks.

The case in point was Audi v OHIM (T-318/09). It involved a CTM application for the trade mark TDI for "vehicles and constructive parts thereof". The CTM application was refused as descriptive (Article 7(1)(c) CTMR) by the Examiner on the basis that the acronym tdi stood for "turbo diesel (or direct) injection". The evidence of acquired distinctiveness that Audi forwarded to the Examiner was not found persuasive.

On appeal, the First Board of Appeal confirmed the rejection of the CTM application (under Article 7(1)(c)). They also found that, in order to overcome that objection, Audi would have to prove that the mark TDI had acquired distinctiveness in every Member State of the EU. (Since Audi's CTM application was filed on 22 May 2003, this meant that such proof was required in 15 states). According to the Appeal Board, Audi had failed that test. Further, their use of TDI was generally in a descriptive, rather than a trade mark, sense.

In spite of the very poor prospect of success, Audi appealed to the General Court. Predictably, the Court agreed with the position taken by the Appeal Board. In particular, the CTM applicant's argument that, when assessing the acquired distinctiveness of a CTM application, the geographical borders within the region should be ignored, was rejected. The Court took the view that, given that there was clearly insufficient evidence of use in three EU Member States, namely Denmark, Ireland and the Netherlands, the CTM application had to be rejected as descriptive.

Finally the Court also poured cold water on the evidence (of acquired distinctiveness) that Audi had supplied. They commented that market share data did not in itself show that the relevant public perceives a descriptive sign as a source indicator. Similarly, and for the same reason, advertisements that featured a descriptive sign (TDI) and a distinctive mark (Audi or Quattro) was not persuasive.

This decision should be contrasted with the same Court's earlier decision (JTEKT v OHIM (T-462/05)) to sustain a registration for the trade mark IFS in Class 12; IFS being an accepted acronym for "Independent Front Suspension".

More important, however, in the writer's view, this decision is based on entirely flawed reasoning. What is the point of the European Union and what is the point of the CTM within that context? Surely one of the reasons for the EU is to create a single market without geographical boundaries, whilst the CTM exists to protect public and private interests within that single market.

The writer makes no comment on the nature of the evidence put forward by Audi. However, it is strongly submitted that if the Audi evidence proves the acquired distinctiveness of the trade mark TDI in, for example, France, Germany, Italy, Spain and the UK, that is, in 2003, nearly 80% of the EU (by population and by GDP), then by any sensible economic or legal calculation, it has achieved acquired distinctiveness "in the Community". By contrast, to refuse a CTM application because it has not achieved acquired distinctiveness in Denmark, Ireland the Netherlands, that is, in 2003, in about 8% of the EU (by population and GDP) makes no economic or legal sense, if the EU is to be viewed as a single market without boundaries.

Eventually, the decisions on the functioning of the single market and the role of the CTM within that market are political, even if they are taken by a Court.

At a time when the very existence of the EU is being questioned by governments and various other bodies for their own (perceived) national or self-interests, it is very surprising that a European institution, such as the General Court, should see the European Union, economically and legally, as a collection of Member States, rather than as a single, regional entity.

The UK doesn't win the Eurovision Song Contest very often. It used to come second to Ireland. Now it comes last behind great song writing nations such as Azerbaijan, Finland, Serbia and the Ukraine. One of its few successes was in the 1980s when Bucks Fizz sang Making Your Mind Up to the ripping sound of Velcro as the male members of the group (Bobby G and Mike Nolan) removed the skirts of their female colleagues (Jay Aston and Cheryl Baker) during the dance routine to their entry.

For a number of years after their success in the Song Contest, Bucks Fizz continued to produce hit records. In the nature of these things, however, success became harder to find and the membership of the group slowly changed until, in 1995, when Mike Nolan left, the only "original" remaining was Bobby G (real name Robert Gubby).

Two years later (1997), a UK trade mark application for Bucks Fizz was filed by Heidi Manton, Robert Gubby's wife. This application proceeded to registration in 2001. Since then, Mr. Gubby, his wife and two others have performed as Bucks Fizz at such international venues as Butlins in Skegness.

In 2004, a collection of the Bucks Fizz 1980s recordings was released on CD for the first time. This renewed interest in the group. In the wake of this revival of interest, two of the group's original members, Cheryl Baker and Mike Nolan, formed The Original Bucks Fizz. In 2009, they were joined by a third "original", Jay Aston. This reformed group immediately became more successful than Mr. Gubby's version - appearing at the London Palladium and other major venues - which did not please Mr. Gubby.

In order to protect their position, the three original members of the group filed a UK trade mark application for The Original Bucks Fizz covering "entertainment". This was opposed on behalf of Mr. Gubby, whilst the other three "originals" have challenged the validity of the rights owned by or on behalf of Mr. Gubby. A Hearing to argue the rights and wrongs of the case was held in July 2011.

Whilst previous legal spats involving the Bucks Fizz name have been rather like "two bald men arguing over a comb", the latest dispute has more commercial importance given the recent success of The Original Bucks Fizz.

Furthermore, the issues before the Hearing Officer are not straightforward. On the one hand, Mr. Gubby's group (Bucks Fizz) has a continuous connection with the original group, Mr. Gubby having been a member from the outset to the present. On the other hand, the success of The Original Bucks Fizz, when compared with Mr. Gubby's version, shows where the buying public thinks the goodwill in the name lies.

Given the knife edge nature of this dispute, it is no small wonder that the Hearing Officer is still "Making His Mind Up".

Grand Prix motor racing, featuring the world's best drivers and the world's fastest cars, has been organised in Europe since the 1920s. After the Second World War, the organisation of such events became more formalised and the first World Drivers' Championship was contested in 1950. It was won by the Italian driver, Giuseppe Farina, driving an Alfa Romeo.

As with other sports, the widespread coverage of such Grand Prix (or Formula One races, as they had become known) on television, from the 1960s onwards, turned this top-Class motor racing into a big and very profitable business.

Where there are large profits, there will also inevitably be political manoeuvrings to gain control of those profits. Formula One racing is no different. The story of the battle to gain control of the administration of the sport would have appealed to Machiavelli. However, eventually there was one clear winner, the diminutive figure of Bernie Ecclestone who, in the 1980s and 1990s, ran Formula One motor racing as his own personal fiefdom. Mr. Ecclestone not only turned the sport into a worldwide event by widening the television coverage and taking the Formula One circus to race in such exotic locations as Australia, Canada and the USA, but he also expanded the merchandising of the sport. This latter activity involved the protection of Formula One's intellectual property including a number of new logos as well as more established marks.

Thus, Formula One Licensing BV (FOL), the licensing arm of the Formula One Administration Group, has obtained a CTM for Formula 1 covering the arrangement of sporting events. It has even persuaded OHIM to accept a CTM for Grand Prix in respect of identical Class 41 services. Neither required any evidence of acquired distinctiveness.

In a recent case heard by the General Court however (Formula One Licensing v Global Sports Media; T-10/09) FOL were unable to prevent the registration of a CTM application containing the alphanumeric mark F1 for car racing related activities.

Global Sports Media had applied to register an F1-Live logo for goods and services in Classes 16, 38 and 41. All of the goods and services claimed were limited to those related "to the field of formula 1". This CTM application was opposed by FOL on the basis of earlier national and international trade mark rights for F1 in the relevant Classes, as well as a CTM registration for an F1 logo. Relying on FOL's earlier international right (for F1 in Classes 16, 38 & 41), the Opposition Division allowed the opposition, given the common presence of F1 in the earlier and later mark.

Global Sports appealed. The First Board of Appeal annulled the first instance decision and rejected the opposition. In the Appeal Board's view, the relevant public would see F1 as the generic designation of a category of racing car and races involving such cars. According to the Board, if the opponent had rights in F1, they lay solely in the logo protected by their CTM registration, rather than in the simple alphanumeric mark. (Incidentally, this is not the first time that the First Board has refused to bend the knee to the owners of major sporting franchises.

Previously they cancelled a CTM registration for Fifa's "trade mark" World Cup 2006). 
Given these rather damaging findings, it was not surprising that FOL appealed to the General Court. Unfortunately, the decision of the Court to confirm the Appeal Board's findings only served to damage FOL's rights in F1 still further. The Court found as follows:

•    According to the evidence presented, FOL had consistently promoted their F1 logo rather than F1 itself;

•    Formula 1 was seen by the relevant public as a generic term for a particular type of motor racing. It will be recalled that Formula 1 is a registered CTM;

•    The alphanumeric F1 was a commonly accepted abbreviation of Formula 1 and was, as such, just as generic as the term Formula 1;

•    The relevant public would not perceive the F1 element in Global Sport's mark as a distinctive element, but as an element with a descriptive function;

•    Since consumers would not connect the F1 element in the opposed CTM mark with FOL, there would be no likelihood of confusion and the opposition based on Article 8(1)(b) CTMR should be rejected.

FOL's ground of opposition based on their reputation in F1 (Article 8(5) CTMR) was also rejected since the Court again found that any reputation owned by FOL was associated with the F1 logo protected by their earlier CTM registration, rather than with F1 itself.

Given the findings of the Appeal Board and the General Court, one might have thought that OHIM's Examination Division would now be alerted to the generic nature of F1 for a range of racing related goods and services. Regular readers of Make Your Mark should be wiser however. Since 2008, OHIM has accepted two FOL owned CTM applications for the "trade mark" F1 as inherently registrable for a wide range of goods and services including vehicles and sporting activities.

Traditionally, trade mark infringement in the UK had required the purchaser of goods or services to be confused as to the source of goods or services at the time of sale.

In a case decided last year, Och-Ziff Management Europe v Och Capital, the English High Court accepted that initial interest confusion, that is confusion occurring prior to the point of purchase, and caused, in particular, by use of a conflicting mark in advertising or promotional activities, could constitute trade mark infringement.
In a further broadening of the concept of trade mark infringement, the High Court has now accepted, in Datacard Corporation v Eagle Technologies (2011 EWHC 244 (Pat)), that the concept of a likelihood of confusion can extend to "post sale confusion".

In the case before the Court, the plaintiff owned UK trade mark registrations for Datacard in Classes 7 and 9 covering products relating to data encoded cards. Eagle sells card printers and printer ribbons, some of the latter being compatible with third party manufactured card printers, including those of Datacard. One of these "compatible" products was their Plus Ribbon.

On their pack, Eagle simply identified their product as Plus Ribbon. At their website however, they referred to the product as Datacard Plus Ribbon. They also used the trade mark Datacard on box labels for a brief three month period.

The High Court (Arnold J.) held that Eagle's activities infringed Datacard's trade mark rights. As far as post sale confusion was concerned, Mr. Arnold opined:
"Suppose that a consumer orders goods from a third party's website and, at the time of ordering, is not confused as to the trade origin of the goods; but when the goods arrive some days later, the goods are labelled in a manner which wrongly leads the consumer to believe that the goods emanate from the trade mark proprietor. Why should such confusion not be actionable? It falls within the scope of a contextual assessment of the use of the sign. It is surely capable of being damaging to the trade mark proprietor. For example, it may cause the consumer to obtain the goods from the same website the next time he or she orders those goods under the same mistaken belief".

The writer notes that Eagle now sells its Plus Ribbon products as "compatible with Datacard" printers; the classic way that the manufacturers of "compatible" products avoid trade mark trouble.

Dave, the self-styled Home of Witty Banter, is a television channel in the UK which generally shows repeats of comedy programmes first shown on major UK television channels, especially the BBC. The channel has been operating since 1998, but only since 2007 under the name Dave.

At about the time the channel launched, its owner, UK Gold Services, filed a CTM application for the word Dave in Classes 9, 16, 28, 35, 38 & 41. This CTM application was opposed by a UK brand consultancy also known as Dave which had been operating since 2004. (Dave Soho v UK Gold Services; Opposition No. B 1294448). The opposition was based on the opponent's prior non-registered trade mark and trade name rights in Dave acquired through use (Article 8(4) CTMR).

Although the opponent had failed to protect their mark by trade mark registration (they have subsequently filed two CTM applications, both opposed by UK Gold), they made up for that by giving an object lesson in the type of evidence that needs to be filed to prove a passing off case under Article 8(4) CTMR. In particular, they showed the close connections that now exist between marketing/advertising agencies and the production of tv programmes.

OHIM's Opposition Division had no hesitation in concluding that the opponent had established goodwill and reputation in the mark/name Dave in the UK in respect of a wide range of goods and services and that UK Gold's use of Dave for the same/similar goods or services would be a misrepresentation and would cause the opponent's damage. They therefore refused the CTM application (under Article 8(4)) in relation to a broad range of goods and services, including those such as broadcasting and television entertainment services that are core to the Dave tv channel's operation.

This adverse decision has been appealed by UK Gold. However, given the convincing nature of the CTM opponent evidence, the decision is unlikely to be overturned.
It remains to be seen whether or not the brand consultancy will also threaten the tv channel's use of Dave in the UK.

Under Article 8(3) of the CTM Regulation, the proprietor of a trade mark may prevent the registration of a CTM for the trade mark by his agent or representative without the proprietor's consent, unless the agent/representative justifies his filing. The limits of such an action have been explored in the opposition between Berik Design USA and Jo' Brand Limited (Appeal No. R1231/2009-2).
Jo' Brand applied to register a composite mark containing the word Berik in Classes 9, 16 and 25. The CTM application was opposed by Berik Design USA on the basis of inter alia
i)    Earlier CTM rights in the mark Berik in Classes 9, 25 & 28 (Article 8(1)(b) CTMR); and
ii)    Article 8(3) CTMR given that, at the date the opposed CTM application was filed, Mr. Riccardo Bernocchi was both the sole proprietor of Jo' Brand and a director and shareholder of the opponent.

Dealing with the Article 8(1)(b) ground of opposition first, the Opposition Division rejected the goods claimed in the opposed CTM application in Classes 9 and 25, but found that the Class 16 goods were dissimilar to the opponent's earlier goods and that therefore for those (Class 16) goods there would be no likelihood of confusion.

Turning to the Article 8(3) ground of opposition, the Opposition Division accepted that Mr. Bernocchi, and therefore Jo' Brand, was, at the relevant date, the agent or representative of Berik Design. However, the terms of Article 8(3) only extended to marks that were identical with or similar to the opponent's trade mark and to goods or services that are closely related, or equivalent, to the opponent's goods and services in commercial terms. Therefore, although the mark applied for and the opponent's mark were similar enough for Article 8(3) to apply, the Class 16 goods, which had a totally different nature and purpose to the opponent's goods, were not. The Opposition Division therefore rejected the Article 8(3) ground of opposition in relation to the Class 16 goods claimed by Jo' Brand.

Berik Design appealed. The Second Board of Appeal accepted that a literal interpretation of Article 8(3) would limit its effectiveness dramatically. They were therefore willing to extend its effect to opposed marks and goods/services that were reasonably similar to the proprietor's trade mark and goods/services. However, they were unwilling to broaden its effect to remotely similar or dissimilar marks or goods/services. They therefore confirmed the Opposition Division's decision and allowed the CTM application to proceed in respect of Class 16 goods.

It seems clear on the facts of this case that Jo' Brand was acting in bad faith when filing its CTM application in all Classes, including Class 16. It is a major flaw of the CTM system that Berik Design will have to wait until Jo' Brand's CTM application is granted in order to file an invalidation action based on the ground of bad faith. This is because bad faith is not at present a ground for opposing a CTM application. It is to be hoped that this will change when a new CTM Regulation is produced after the present consultation exercise (Max Planck et al).

Alexander Boris de Pfeffel Johnson, known universally as Boris Johnson, is a British journalist and politician who was elected Mayor of London in 2008.

A major part of his successful election campaign for Mayor was the backboris.com website. Perhaps forgetting the likelihood of fighting a second election campaign in 2012, this domain name was allowed to lapse in 2010. It was immediately snapped up by a cybersquatter, Belize Domain Whois Service, who then flooded the website with links to such outlets as benaughty.com.

This is not the image with which an Eton and Oxford educated Conservative politician would wish to be associated, so Mr. Johnson sought to recover the domain by filing a complaint at WIPO under their UDR policy.
Given that Mr. Johnson owned no registered trade mark rights in Boris, Back Boris or Boris Johnson, he therefore had to rely on unregistered trade mark rights, including those in Boris Johnson, acquired through use.
Although it was a close run thing, the WIPO Panellist sided with the Mayor and transferred the domain back to Mr. Johnson. According to the Panellist:

•    Although there had been political use of Boris and Back Boris prior to the mayoral election, this did not constitute commercial use. It followed that no trade mark rights existed in this name and phrase.

•    Mr. Johnson's commercial activities had all been as Boris Johnson. Any unregistered trade mark rights therefore existed in this whole name.

•    The domain name was confusingly similar to Boris Johnson since the relevant public would associate it with Mr. Johnson.

•    The existence of a link to a political book publishing company, as well as benaughty.com, at the new owner's website took unfair advantage of the Mayor's trade mark rights. Belize Domain therefore had no legitimate interests in the backboris.com domain name and had registered and used it in bad faith.

Anyone in the public eye who owns a domain containing all or part of his or her name should think carefully before allowing it to lapse. It will almost certainly be re-registered by a cybersquatter and then used in a manner that does not reflect favourably on the celebrity involved.

More draft legislation surrounding next year's London Olympic Games has been published. This time it is the London Olympic Games and Paralympic Games (Advertising and Street Trading etc) Regulations 2011. It will serve to control such activities around so-called Event Zones surrounding the various Olympic sites. It will put the burden of proof in any alleged ambush marketing, which may be treated as a criminal activity, on the alleged infringer. Anyone found guilty of infringement may find him- or herself with a criminal record and a fine of up to £20,000.

Is the writer the only person who believes that the strict enforcement of these draconian provisions will bring only bad publicity to the event and to any official sponsor who seeks to invoke the Regulations?
If anyone would like further information on the Regulations when they are eventually published, please contact the Jenkins trade mark department.

However, we can now offer the following advice to those intending to attend the Games as spectators. Don't turn up in a Mercedes car wearing a Rolex watch and Nike trainers, whilst lunching on a Burger King meal, a Pepsi Cola drink and a Mars bar, all purchased with a Mastercard credit card. Given that BMW, Omega, Adidas, McDonalds, Coca Cola, Cadbury and Visa are all official "partners" or "supporters" of the London Games, such a walking ambush marketer should expect to be incarcerated at least until the next sporting circus takes place in Rio de Janeiro in 2016.

Robot Wars was a game show that was broadcast on British television from 1997 to 2004. The show featured fights between robots that had been produced by amateur and professional roboteers.

The concept was originally developed by a former Lucasfilm designer, Marc Thorpe, on the back of funding provided by a New York record company, Profile Records. After a series of legal disagreements, Mr. Thorpe and Profile finally resolved their differences and formed a company, Robot Wars LLC. This company (LLC) licensed the rights to the UK based tv production company, Mentorn Barraclough Carey Productions, who produced the programmes that were shown in the UK, first on BBC2 and then on Channel 5. LLC obtained a UK trade mark registration for Robot Wars in Classes 9, 16, 28 & 41 dated February 1995. They also sought a CTM for the mark in the same four Classes in 2001, but this was withdrawn two years later. Once interest in the tv programme had waned, and no more programmes were being produced, LLC allowed their UK trade mark registration to lapse by non payment of the renewal fee (in 2005).

Mr. Geoffrey Thorpe (apparently no relation to Mr. Marc Thorpe) is a devotee of the Robot Wars tv programme.

For many years he organised related Robot Rumble tournaments and, once the programme disappeared from British tv screens, he began using the trade mark Robot Wars in relation to these events. In June 2006, after making enquiries regarding the continued interest of LLC in the Robot Wars name and tv series, and receiving no substantive reply, he filed a UK trade mark application for Robot Wars for robot related competitions and exhibitions in Class 41. This UK case was granted in December 2006.

In April 2009, LLC sought to invalidate Mr. Geoffrey Thorpe's UK trade mark registration. They relied on bad faith (Section 3(6) of the 1994 Trade Marks Act) and passing off rights acquired through use of the trade mark Robot Wars in the UK (Section 5(4)(a)). In the latter case, their evidence relied on the UK programmes broadcast between 1997 and 2004, as well as the related merchandise and live events. Crucially, however, the evidence also pointed to their continued interest in Robot Wars by showing that the original programmes were shown on the Dave tv channel in 2010, whilst discussions were taking place with major UK terrestrial channels to produce a new Robot Wars series.

Given this background, the Hearing Officer had little difficulty in deciding to cancel Mr. Thorpe's trade mark registration. He accepted that, at the filing date of Mr. Thorpe's application, LLC still had residual goodwill in the Robot Wars tv programme and associated live events; in the case of the programmes there was still substantial (residual) goodwill. He also accepted that Mr. Thorpe's use of the mark (Robot Wars) in June 2006 would have been bound to lead to misrepresentation and damage to LLC's reputation. The Section 5(4)(a) ground of opposition therefore succeeded.

Turning to the question of bad faith, the Hearing Officer noted that, at the relevant date, Mr. Thorpe had been well aware of the popularity of the tv programme. Although he had made some enquiries as to LLC's continued interest in the mark, he had not contacted any of the other relevant parties, the BBC, Channel 5 or the UK licensee, Mentorn. Further, he had originally identified his robot events by the phrase Robot Rumble.

It was clear to the Hearing Officer that Mr. Thorpe's June 2006 filing for the trade mark Robot Wars had been made in bad faith.
This case is a warning to those avid fans of successful tv programmes who wish to prolong the memory of those programmes, and perhaps make a little money out of that memory, that the goodwill and reputation in the programme's name can have a long reach.