In August 2015, the Dismaland Bemusement Park, a temporary arts project organised by the British street artist Banksy, opened to the public in the English seaside resort of Weston-super-Mare.
The Park, which was prepared in secret, was said to be “a sinister twist on Disneyland” and a “family theme park unsuitable for children”. In addition to a number of new art works erected by the organiser, the art project is also said to have featured works by Damian Hirst and Jenny Holzer. In order to give the Park an authentic, feel-good flavour, the visiting public also found games such as “Topple the anvil with a ping pong ball”, a miserable, sulking stormtrooper and morose, unhelpful and uninformative staff. There was even an NSA-type security check through which visitors had to pass in order to enter the Park. The following items were said to be strictly prohibited: knives, marker pens, spray cans and lawyers from the Walt Disney Corporation.
During its brief run of 36 days, Dismaland proved to be a big success with holidaymakers, 150,000 of them, each paying the £3 entrance fee, as well as international celebrities such as (reportedly) Jack Black and Brad Pitt.
No doubt, if challenged, the organisers of the Dismaland exhibition would have relied on the argument that it was an artistic and parodic work, the nature of which would ensure that the name Dismaland was not confused with or associated with Disneyland. However, Banksy’s project was undoubtedly commercial, nearly half a million pounds being collected on the gate. Further, the organisers, through a company called Dismaland Limited, filed a CTM application for the trade mark Dismaland in 11 Classes including Class 41 (entertainment). It is at least arguable that, if a Cristalino cava can take unfair advantage of, and free-ride on the back of, the reputation of a Cristal champagne (see page 26 of this edition), then a Dismaland theme park, whatever the nature of the Park itself, could also take unfair advantage of, and free-ride on the back of, Disney’s reputation in Disneyland.
The CTM application was published for opposition on 3 November 2015. It is therefore rather surprising that, at the time of writing, and well after the end of the opposition period, there is no indication that Disney has opposed Dismaland’s filing. Although the art exhibition was temporary, a trade mark registration of course need not be. It would therefore be unexpected if negotiations aimed at the quiet withdrawal of the CTM application, or any subsequent registration, for Dismaland were not proceeding behind the scenes. Given that the materials and crew that were associated with Dismaland in August and September 2015 were subsequently transformed into Dismal Aid, through which dwellings and associated facilities were to be provided at the Calais migrant park, an obvious solution to any legal impasse suggests itself.
Whether a term that is widely used in Australia and the US had reached these (UK) shores was a significant issue in an opposition recently decided by the UK Trade Mark Office.
The term at issue was “growler”. Now the word growler has a number of meanings, some of which you probably wouldn’t wish to discuss with your mother. However, in the context of beer (or cider), a growler is a refillable container, usually a large glass bottle. Such containers have been used for some time, particularly in America, to allow customers to take craft beers (and similar) home in order to consume them before one’s own hearth. The process works as follows: the customer rents the growler which is then filled with an appropriate libation and capped. The vessel, once replete, is taken home for consumption. The empty growler is then returned to the retailer for replenishment.
Mr Stuart Dinning had come across this practice in December 2011 whilst on holiday in the US. He liked the idea and so, on his return to Scotland, he set up a company, Growler Beers UK Ltd, and opened a growler (and beer/cider) supplying shop in Edinburgh in October 2013. He also protected his Growler Beers UK logo, in respect of goods and services in Classes 21, 25 and 35, with a UK trade mark registration that was filed in January 2014. This logo contained a bear’s paw print as well as the word elements. During its first six months of operation, Mr Dinning’s shop had a turnover of about £54,000. In the following financial year, this (turnover) rose to about £110,000. In that period, the Growler Beers shop garnered a fair amount of favourable publicity. Not long after Mr Dinning opened his shop in Edinburgh, Mr Jehad Hatu registered his company Grunting Growler Ltd (in February 2014) to conduct a similar business to Growler Beers UK. Mr Hatu began trading, from a number of temporary sites, in the rival Scottish city of Glasgow from July 2014 onwards. As if to prove that the importance of trade mark protection is slowly seeping into the business community, Mr Hatu’s company sought to register the word mark Grunting Growler for “beer” in Class 32 and “retail services connected with the sale of beer, beer jugs and beer mugs” in June 2014.
Once published, in August 2014, the trade mark application for Grunting Growler was opposed by Growler Beers UK, principally on the basis of their earlier UK trade mark registration for the Growler Beers UK logo. Mr Dinning put in evidence the origin of his trade mark, his activities since October 2013 and his claim that the term “growler” was not generic in the UK for beer, beer containers and related retail services. In response, Mr Hatu filed numerous examples of the descriptive use of the word growler in respect of beer containers that had appeared in British publications and at British websites from June 2008 onwards. In each case, the publication/website referred to either a growler container or to a growler filling outlet.
The case came before the UK Trade Mark Office (Mr Salthouse) who rejected the opposition. The Hearing Officer first considered the two sets of goods/services. He had no difficulty deciding that Growler Beers’ Class 35 (retail) services were identical with Grunting Growlers’ Class 35 services and similar to their beers (in Class 32).
He then turned to a comparison of the two marks. Noting the common presence of the word Growler, he also commented that the later mark contained the distinctive word Grunting at its beginning and that this word is more associated with pigs than bears. Taking all of this into account, the Hearing Officer concluded that the two marks have a low degree of similarity based solely around the word growler.
He then turned to the question of whether or not, by the date of Grunting Growler’s UK trade mark application (June 2014), the word growler was in common use in the trade in the UK in relation to beer containers. On the basis of the evidence before him, he concluded that it had entered common UK usage. Mr Salthouse accepted that the use and knowledge of beer growlers was in its infancy in Scotland. However, he took the view that this did not detract from the fact that the term growler “is descriptive of the vessels in which beers are sold and as such it is not distinctive for beers sold in a growler container”. From this it was but a short step to conclude that there would be no likelihood of confusion between the two marks. This more or less decided the matter and the Hearing Officer rejected Growler Beers’ opposition.
These days, choosing a trade mark for use in the UK that relies on a word that is descriptive in the US, though not yet in the UK, is a dangerous business. Such American terms have a nasty habit of regularly crossing the Atlantic and becoming an established part of the (British) English language. Once this happens, seeking to maintain a monopoly in that term in the UK is almost impossible unless the first user has been fortunate enough to build up enough use of, and reputation in, its mark in the UK, prior to the more widespread use, and thereby established a secondary (origin based) meaning.
Only before OHIM, where descriptive terms are often monopolised, would Mr Dinning be likely to have any success in oppositions filed against CTM marks (in Classes 32 and 35) containing the word growler.
Talking about beer and micro-breweries, another recent Class 32 case before the UK Trade Mark Office showed how trade mark rights in a very descriptive phrase can be exercised successfully.
A London-based company, Soho Brewery, had applied for and obtained a UK trade mark registration for a combination mark consisting of the phrase London Brewing Company and a stylised Union Jack. The registration covered a wide range of goods in Class 32 including “beers”.
Some months after the grant of the Soho Brewery owned trade mark registration, an application to invalidate the right was filed by the London Brewing Company Ltd. The grounds for invalidation, under the 1994 Trade Marks Act, were passing off (Section 5(4)(a)) and bad faith (Section 3(6)).
The applicant to invalidate filed a significant amount of evidence. This, together with the registered proprietor’s evidence, showed that, by the filing date of the Soho Brewery case (5 October 2013),
• They (the applicant to invalidate) had been trading under the London Brewing Company brand since August 2011.
• They produced and sold beer at a pub called The Bull in Highgate (North London). Within a few months of launch, the beer pumps at The Bull featured the London Brewing Company mark.
• They also sold London Brewing Company branded beers to other local (though unconnected) public houses.
• London Brewing Company beers were listed at beer rating websites and appeared at a number of trade fairs, beer festivals and other events. Customers from many parts of the UK, as well as from Sweden and the US, had visited The Bull.
• London Brewing Company had won a CAMRA award, a success that was reported in April/May 2013.
• The Director of Soho Brewery, Mr Michael Breen, who had worked in the retail drinks sector since 1996, had visited The Bull in Highgate in 2011 and was shown around the premises by the owner of the London Brewing Company (Mr Daniel Fox).
Taking all of this into account, the Hearing Officer made the following findings:
• The applicant to invalidate had sufficient goodwill, although modest in terms of sales volume, to be protected under the law of passing off.
• The phrase London Brewing Company, although inherently weak in trade mark terms, was distinctive of the applicant to invalidate and would be seen as an origin identifier.
• In spite of the presence of a stylised union flag in Soho Brewery’s registered mark, anyone who was aware of the applicant to invalidate’s London Brewing Company brewery (and beers) would believe that the registered proprietor’s goods, if sold under the registered mark, originated from London Brewing Company.
• Damage to the applicant to invalidate, in terms of a diversion of business, would inevitably follow if Soho Brewery were to use its registered mark in respect of the registered ( Class 32) goods.
• Soho Brewery’s mark was therefore liable to be restrained under the law of passing off at the relevant date and London Brewing Company’s action under Section 5(4)(a) succeeded.
Turning to the bad faith (Section 3(6)) ground, the Hearing Officer was not convinced that the visit of Mr Breen (the Director of Soho Brewery) to The Bull soon after it opened in 2011 inevitably meant that he (Mr Breen) had become aware of the applicant to invalidate’s use of, and goodwill in, the phrase London Brewing Company. In view of this, he rejected the bad faith ground of attack.
Soho Brewery has now had second thoughts about developing its London Brewing Company mark. Instead, it has moved on to a mark consisting of Soho Brewery Ltd plus a stylised Union Jack. Unfortunately, although this mark is now registered in the UK for certain beer related goods, the associated CTM application has been opposed by Pernod Ricard based on the opponent’s trade mark Soho (which is a fruit flavoured liqueur that is sold in Europe). It never rains but it pours.
It also seems that the London Brewing Company, who opened a second brew pub (The Bohemia) in June 2014, has learned their trade mark lesson and has sought some registered trade mark rights. Inexplicably, they applied to register the word mark London Brewing Company in Classes 32, 33 and 43 in December 2015. This application was duly abandoned one month later. Perhaps an application to register their logo featuring a stylised London skyline plus the words London Brewing Co might make more sense.
Although the London Brewing Company were successful in the above invalidation action, they will eventually find that such a trade mark inevitably has a very limited penumbra of protection. For example, the writer doubts that they could prevent the competing activities of the East London Brewing Company, a micro-brewery, based near London’s Olympic Park, even if they (London Brewing Company) eventually managed to obtain some registered trade mark protection for their mark.
A glee club is a musical group which traditionally specialises in the singing of short songs – glees. The first such club is said to have been established in Harrow School in 1787. Over the next 100 years, glee clubs became very popular, both in the UK and the US. In the UK however, they were then superseded by choral societies. In the US, on the other hand, the term remains in use, particularly for choirs found in North American colleges and universities.
As if to prove the point, the tv network, Fox, created a television series called glee that focused on the fictitious William McKinley High School glee club, known as New Directions.
Since its first broadcast in 2009, the series has become one of Fox’s most successful programmes, both in the US and in the UK, where it was aired on the Sky 1 tv channel up until the final series which was broadcast in 2015.
In the wake of the success of the programme, concert tours featuring cast members have taken place, including two concerts in the UK in London and Manchester.
In 1994, fifteen years before Fox began broadcasting its first season of glee, Mark Tughan opened a comedy club called The Glee Club in the English city of Birmingham. It proved to be successful and, since that opening, further comedy clubs operating under The Glee Club banner have been opened in Cardiff, Nottingham and Oxford. These clubs offer both stand-up comedy, as well as live musical entertainment. The company operating these clubs, Comic Enterprises, owns a UK trade mark registration for a stylised form of the phrase, the glee CLUB, that was granted in April 2001 and covers inter alia “comedy services” and other music and entertainment related services in Class 41.
It would appear that, as a result of the success of Fox’s tv series, and the nature of the subject matter of the programme, potential customers of The Glee Club were being put off attending those clubs because those (potential) customers believed them to be associated in some way with the glee tv programme. As a result, Comic Enterprises brought trade mark infringement and passing off proceedings against Twentieth Century Fox Films before the English High Court. In response, Fox attacked Comic Enterprises’ UK trade mark registration both on the ground of descriptiveness (Section 3(1)(c) and Section 47(1) of the UK Trade Marks Act), given the dictionary meaning of glee club, see Oxford English Dictionary on-line (www.oed.com), and on the ground of five years non-use of the registered mark in the UK (Section 46 of the 1994 Act).
The Deputy Judge (Mr. Wyand QC), sitting in the English High Court, dealt first with the issues of invalidity and revocation. He found that glee club was now an obscure term in the UK that was little known. He also found that Fox had failed to establish the reaction of even the average choral singer in the UK to the phrase. That being the case, and noting that Comic Enterprises’ UK trade mark also contained a device element, Mr. Wyand dismissed the Section 3(1)(c) ground of invalidity (descriptiveness).
Turning to non-use revocation, the Deputy Judge decided that, based on the evidence before him, the UK trade mark registration under attack should survive for the following Class 41 services:
“Live comedy services; nightclub and cabaret entertainment; music hall services; provision of live and recorded music; dancing; provision of facilities for comedy and music entertainment; production and presentation of live shows and displays and the presentation of sound recordings”.
Moving on to trade mark infringement, Mr. Wyand was very taken by the evidence given by one of Comic Enterprises’ witnesses (Ms. Jones) who watched Fox’s glee programme and was also aware of The Glee Club. In her evidence before the Court, she maintained that she assumed a connection between the glee tv show and Comic Enterprises’ (The Glee Club) business when she saw a trailer for the tv show. There was also evidence given by consumers who began by being aware of the tv programme and on seeing, or hearing of, The Glee Club, believed that the latter was connected with the former. Mr. Wyand styled this as “wrong way round” confusion.
Bearing the above in mind, and finding that
• The two marks were similar; and
• Comic Enterprises’ remaining Class 41 services were similar to the tv (and concert) services provided by Fox in the UK;
Mr. Wyand found trade mark infringement under Section 10(2) of the UK’s 1994 Trade Marks Act. In doing so, he rejected Fox’s argument that people who gave evidence about their reactions after the show had become successful could not shed light on whether or not the average consumer would have been confused (between The Glee Club and glee) at the date Fox first used the programme title (glee) in the UK. Mr. Wyand commented that, if Fox could have obtained convincing, consumer evidence that, even after glee had become a successful series, the relevant consumers were not confused with The Glee Club, they would certainly have been relying heavily on that lack of confusion in this action.
As far as the ground of infringement based on Comic Enterprises’ reputation in The Glee Club was concerned (Section 10(3) of the 1994 Act), the Deputy Judge took full account of the evidence which suggested that potential customers had been put off visiting The Glee Club because they believed it was in some way associated with Fox’s programme. That reaction, in Mr Wyand’s view, showed that such (potential) customers were changing their economic behaviour and that Comic Enterprises’ mark was therefore suffering detriment because of its “swamping” by Fox’s use of glee. As Fox had no due cause to use glee for either the tv show or the associated concerts, a finding of infringement under Section 10(3) became inevitable.
Finally, dealing very briefly with the passing off action, Mr. Wyand stated that the damage suffered by Comic Enterprises was caused by its (The Glee Club) venues being confused with Fox’s tv show and its potential customers thereby being put off. There was little or no evidence that Fox’s use of glee constituted a misrepresentation. The only evidence, which suggested that it did, had come from Ms. Jones. All of the other evidence was on “wrong way round” confusion which was not the same as a misrepresentation. In the absence of a convincing case being made on misrepresentation, Mr. Wyand dismissed the passing off action.
Given the impact that this decision could have on Fox’s potential revenue in the UK from repeats, live shows, DVD and CD sales and downloads, it was no surprise that the US company appealed to the Appeal Court. Comic Enterprises cross-appealed against Mr Wyand’s finding that there was no passing off.
The Court of Appeal rejected Fox’s appeal, as well as Comic Enterprises’ cross-appeal. The Court first considered the issue of trade mark infringement under Section 10(2)(b) of the 1994 Trade Marks Act. On the basis that the most prominent feature of Comic Enterprises’ mark was the word “glee”, they held that there was a “reasonable degree of similarity” between the registered mark and the title of Fox’s tv programme. In doing so, they rejected Fox’s arguments that the common word “glee” was descriptive, that they (Fox) had not taken any of the stylisation or logo elements of the earlier mark and that therefore the two marks were not close enough to be confused.
The Appeal Court then considered the similarity between the tv entertainment services (as well as live entertainment services) that were offered by Fox and the services upon which Comic Enterprises had used their the Glee Club logo (and what therefore remained of their limited specification). The Court decided that the two sets of services were “complementary” and therefore similar enough for a likelihood of confusion.
Turning to the global assessment, the Appeal Court appears to have accepted that “wrong way round” confusion, that is where relevant consumers who know of Fox’s well known glee tv services subsequently came across Comic Enterprises’ less well known The Glee Club and assumed that the comedy business was in some way connected to Fox and their tv show, could lead to a finding of trade mark infringement. The Court accepted that a part of this (wrong way round) confusion could have arisen because of Comic Enterprises’ use of the word mark Glee rather than their registered mark the Glee Club logo. However, the Court also accepted that some confusion between Comic Enterprises’ registered mark and Fox’s trade mark title was occurring and that the owners of the British comedy club had been forced to increase their advertising (and similar) to avoid further confusion.
Taking all of the above into account, the Court of Appeal rejected Fox’s appeal against the findings of Mr Wyand in relation to Section 10(2)(b) infringement.
The Appeal Court then turned its attention to the Section 10(3) ground (reputation/unfair advantage/detriment). They accepted that Fox had adopted its tv title in good faith but then proceeded to confirm the findings of the High Court on this issue. There was a “link” between the Comic Enterprises’ mark and Fox’s title and there was evidence that certain potential visitors to The Glee Club were being put off the idea by the thought that it was associated in some way with Fox and its tv series. This damaged the reputation of Comic Enterprises’ mark and its distinctive character. Even though Fox had not acted in bad faith, its use was “without due cause” and consequently an infringement under Section 10(3).
Finally, the Appeal Court also agreed with Mr Wyand’s finding on passing off. They drew a distinction between confusion (as required for trade mark infringement) and misrepresentation (needed for a finding of passing off). The nature of the confusion caused by Fox’s activities did not amount to a misrepresentation. There was therefore no passing off and Comic Enterprises’ cross appeal was rejected.
Given the importance of this case to Fox, as well as other major film and tv producers, it is no surprise to hear that it is now likely to head towards the European Court. Perhaps when it reaches that Court, the earlier General Court case between Danjaq and Mission Productions (T-435/05) will be considered. In that case, a film title (Dr. No) was said to be an indicator of artistic, but not commercial, origin and, as such, was not a trade mark. If that is indeed the case, it seems difficult to explain how the use of an ordinary dictionary word (glee), as the title of a tv series, can constitute use of the word in a trade mark sense. Further, would it be possible for a documentary entitled “Goldman Sachs: The Bank That Rules The World” to be the subject of successful trade mark infringement proceedings in the UK based on the trade mark rights of the US bank or for a mini-series entitled Virgin Queen, documenting the life of Elizabeth I, being taken off the air having been successfully sued by Richard Branson’s multi-national conglomerate?
Port Charlotte was a Scotch whisky distillery which operated from 1829 to 1929 in a village of the same name, on the island of Islay, situated off the west coast of Scotland. Although the distillery remains closed, the Port Charlotte whisky brand was revived by the nearby Bruichladdich distillery in 2009. The revived whisky is distilled in Bruichladdich and then matured in oak casks at Port Charlotte. In order to protect its investment in the restored restorative, Bruichladdich Distillery applied to register the trade mark Port Charlotte as a CTM for alcoholic beverages in Class 33 in 2006. This CTM was granted a year later. It was not opposed.
Since the grant of Bruichladdich’s CTM registration however, the Portuguese owner of the European wide PDO (Protected Designation of Origin) rights (regional and national, especially Portuguese) in port wine (Instituto dos Vintos do Douro e do Porto IP; IVDP) has become much more ambitious in the enforcement of its rights in the designations Porto and Port (for port wine). On that basis, IVDP applied to cancel the CTM for Port Charlotte in April 2011 based principally on the grounds that
i) Under Article 8(4) (and Article 53(1)(c)) of the CTM Regulation, they (IVDP) owned a sign which allowed them to prohibit the use of the trade mark Port Charlotte; and
ii) Under Article 7(1)(g) (and Article 52(1)(a)) CTMR, Port Charlotte was a trade mark that would deceive the relevant public as to the geographical origin of Bruichladdich’s goods.
In response to this cancellation action, the CTM proprietor limited its specification of goods to “whisky”.
IVDP’s action was rejected by OHIM’s Cancellation Division and, on appeal, by the Fourth Board of Appeal. In doing so, the Board made the following findings:
• The protection of appellations of origin for wines was now exclusively governed by EU legislation (Council Regulation No. 479/2008 as amended by Regulation No. 491/2009). Other than within the terms of this Regulation, national law protecting geographical indications could no longer be invoked. Only GIs found in the “List of Quality Wines Produced in Specified Regions” published in the OJ of the EU (C 187/01) dated 8 August 2009, were now protected.
It follows that IVDP could not rely on their evidence related to the scope of protection afforded GIs under Portuguese law.
• IVDP could however rely on Article 118m of Council Regulation No. 479/2008 (amended by Council Regulation No. 491/2009) which conferred a right to prohibit use of a later trade mark (as required under Article 8(4) CTMR). The terms of Article 118m are as follows:
1. Protected designations of origin and protected geographical indications may be used by any operator marketing a wine which has been produced in conformity with the corresponding product specification.
2. Protected designations of origin and protected geographical indications and the wines using those protected names in conformity with the product specification shall be protected against:
(a) any direct or indirect commercial use of a protected name:
(i) by comparable products not complying with the product specification of the protected name; or
(ii) in so far as such use exploits the reputation of a designation of origin or a geographical indication;
(b) any misuse, imitation or evocation, even if the true origin of the product or service is indicated or if the protected name is translated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavour”, “like” or similar;
(c) any other practice liable to mislead the consumer as to the true origin of the product.
• The terms Porto and Port are protected as geographical indications but only on the basis that they are equivalent to the Portuguese city called Oporto. Whilst both Oporto and Porto were used in the EU to refer to that (Portuguese) city, the term Port had no such usage. In relation to Port, this was simply used in certain parts of the EU to distinguish a certain type of fortified wine. Further, all three terms are protected as GIs only for “wine”.
• “Wine” is not the same as or a comparable product to “whisky”. The latter had its own EU Regulation (No. 110/2008) protecting geographical indications (for spirit drinks). A “whisky” looks different, has a different degree of alcohol, and will never be taken for a “wine”, even a fortified wine such as port.
In the context of geographical indications, “comparable” does not mean “similar”, a term that features widely in EU trade mark law and practice.
• The registered mark (Port Charlotte) did not “use” or “evoke” the geographical indication Porto or Port. The mark would indicate either a harbour named after a personality called Charlotte or a place located at the seaside; think of places such as Port Louis. No link whatsoever would be made between such a mark and either Porto or the related geographical indication Port.
In Port Charlotte, the term Port no longer refers to the GI protected by EU and national legislation.
• The cancellation action based on IVDP’s rights in the geographical indications Porto and Port (Article 8(4); Article 53(1)(c) CTMR) was therefore rejected.
• As far as deception of the relevant public was concerned (Article 7(1)(g); Article 52(1)(a) CTMR), the trade mark Port Charlotte could not mislead that public as to its geographical origin since Port is not a geographical region. Any deception was even less likely given the differences between “whisky” and “wine”.
In spite of this comprehensive mugging of their cancellation action, IVDP appealed to the General Court (T-659/14) both against the Appeal Board’s overall rulings, as well as against their finding that the second city of Portugal is referred to as Oporto (rather than Porto) and against their view that the protection of PDOs and PGIs was now governed exclusively by EU (regional) law rather than by both EU regional and EU national law.
On the issue of Oporto and Porto, the General Court agreed with IVDP. The city was known as Porto. The Court also agreed that the protection of PDOs and PGIs in the EU was governed by EU (regional) legislation supplemented by earlier EU national legislation such as that which protected the terms Porto and Port in Portugal.
All of this was to no avail to IVDP however. Apart from finding that the relevant public in this case was the average consumer in the whole EU (rather than the average Portuguese consumer as assumed by the Appeal Board), the General Court confirmed the Board’s various findings set out above. As a consequence, the Court refused to cancel the CTM registration for Port Charlotte on the grounds relied on by IVDP.
In a CTM opposition reported in Make Your Mark Autumn 2015, IVDP successfully opposed a CTM application for a Portobello Road No. 171 Gin label covering gin. In that case, the CTM applicant’s composite mark was said to be similar to the Port PDO. Further, “gin” and “wine” were found to be “comparable” products. This opposition decision has been appealed. It is to be hoped, in light of the General Court’s ruling in Port Charlotte, that the Appeal Board will overrule the Opposition Division decision in Portobello Road No. 171. If that does indeed come to pass, perhaps IVDP will begin to take a more realistic view of their rights in the terms Porto and Port and seek to enforce those rights more narrowly and rather more in the public interest.
Under UK trade mark law, a trade mark registration may be revoked on the ground of 5 years non-use (Section 46(1) of the 1994 Trade Marks Act). One way of resisting such a revocation action is to show that there are “proper reasons for non-use”. A recent case before the UK Trade Mark Office explored the meaning of the phrase “proper reasons”.
Vitabiotics Ltd owned a UK trade mark registration for Lipoderm protecting “Pharmaceutical preparations, dermatological products for medical conditions, all for human use”. This UK trade mark registration had been filed in 2002 and granted in 2003.
Professional Compounding Centers of America, Inc. (PCCA) applied to revoke Vitabiotics’ trade mark right in November 2014 under Section 46(1). In response Vitabiotics filed the following evidence:
i) Details of their long-standing research project to develop an anti-aging, dual phase serum known as Perfectil Twin Serum. The serum consists of two distinct phases; one of which (the oil phase) is called Lipoderm. The new formulation was the subject of a patent application filed in February 2009.
ii) Information on the difficulties that Vitabiotics had faced in relation to the development of a commercially acceptable formulation which required additional scientific testing and led to delays to the product’s launch.
iii) Information on a French clinical trial involving Perfectil Twin Serum (and its Lipoderm oil phase) which had further delayed the launch. This clinical trial was not necessary to sell Vitabiotics’ product. Its aim was to allow the company to claim that Perfectil Twin Serum had been “clinically tested”, a claim that would be likely to assist its commercial success.
iv) Information from Vitabiotics’ Marketing Director that Perfectil Twin Serum was likely to be launched in the UK (with the consequent use of the trade mark Lipoderm) in Spring/Summer 2016.
The Hearing Officer (Ms Pike) considered Vitabiotics’ evidence and the leading European case law on “proper reasons for non-use”, in particular Armin Häupl v Lidl Stiftung (C-246-05). In that case, the European Court of Justice concluded that any obstacles that prevented the use of a trade mark, and were therefore “proper reasons for non-use”, must be independent of the will of the proprietor (emphasis added).
According to the Hearing Officer, Vitabiotics were relying on filing patent applications, conducting complex clinical trials and technical problem solving as “proper reasons”. In Ms Pike’s view, Vitabiotics had control over whether or not it filed patents or undertook clinical trials, the latter in particular being a marketing choice rather than a necessity to bring Perfectil Twin Serum to the UK market. She therefore concluded that these were not “proper reasons for non-use”.
This left the issue of technical problem solving. Ms Pike concluded that Vitabiotics’ evidence did not explain the reasons for these problems, their impact and when they occurred. On this basis, she found that the technical problem solving faced by Vitabiotics was part of the “normal risk landscape of bringing a product to market”. This, she decided, was not an obstacle that is independent of the will of the proprietor.
Taking all of the above into account, the Hearing Officer decided that Vitabiotics had not filed any relevant evidence of use of their trade mark Lipoderm during the relevant 5 year period and their evidence showed “no proper reasons for non-use”. Ms Pike therefore revoked Vitabiotics’ UK trade mark registration under Section 46(1).
Unless Vitabiotics can overturn this decision on appeal (rather unlikely under UK trade mark practice), they now face significant problems with their proposed use of the trade mark Lipoderm in the UK. This is because PCCA (the applicant to revoke) owns a UK trade mark application for the identical trade mark Lipoderm covering a range of pharmaceutical and medicated preparations for topical, transdermal and skin care use in Class 5, as well as a range of creams for use in such preparations. This UK trade mark right is now likely to be granted. Further, PCCA appears to use its Lipoderm trade mark, at least in the US, for a range of transdermal cream formulations aimed principally at delivering pain killing medicines.
This case provides a salutary lesson for those companies that conduct expensive research and clinical trials aimed at achieving commercial success rather than obtaining official (governmental) approval for marketing. If such research and/or clinical trials (aimed at commercial success) are taking longer than expected, it is important to review the trade mark position on a regular basis and to refresh the trade mark protection if this proves to be necessary. If refiling the plain word mark itself is considered to carry some (bad faith) risk, then the protection of an appropriately stylised word mark should defend the position whilst the boffins/clinicians complete their work.
More on reputation and unfair advantage/detriment; Darjeeling is a town and a municipality in the Indian state of West Bengal. It has also given its name to a well-known type of tea that is grown and processed in the area. The name and the associated Darjeeling logo are the subject of various trade mark rights around the world, including Community Collective marks owned by The Tea Board (of India) protecting tea.
In France where, until recently, the chances of getting a decent cup of tea were about the same as winning the lottery, the name Darjeeling has developed a second, different meaning. This is as the brand used by a lingerie company to identify their (now over) 150 boutiques, all selling Darjeeling women’s underwear and similar (see the website www.darjeeling.fr). This company was founded in 1995, and has operated continuously in France since then. A sister company, Delta Lingerie, owns CTM registrations for the word mark (Darjeeling) and a Darjeeling Lingerie logo, both covering goods in Class 25.
It was when Delta decided to update its Darjeeling logo in 2010 however that the trouble started. They filed 4 CTM applications for variations of their new mark, claiming goods in Class 25 as well as related services in Classes 35 and 38, all of which were opposed by The Tea Board (of India) on the basis of their earlier Collective CTMs, as well as their reputation in the trade mark Darjeeling (Articles 8(1)(b) and 8(5) CTM Regulation). Both the Opposition Division and the Board of Appeal dismissed the oppositions on the basis that there was no likelihood of confusion and that The Tea Board had not provided sufficient evidence to prove the existence of a reputation in the trade mark Darjeeling in the EU.
The Tea Board appealed to the (European) General Court. In cases T-624/13 (discussed below), T-625/13, T-626/13 and T-627/13, the Court considered the breadth of protection afforded by Community Collective marks. According to the Court, although a Community Collective mark could consist of a geographical indication, it is not a guarantee of such origin (unlike a protected geographical indication whose function that is). For example, an undertaking situated outside the geographical area can employ such a (geographical) Community Collective mark provided they follow the regulations associated with such a mark.
Moving onto the likelihood of confusion, the Court found that the applicant’s goods and services were dissimilar to The Tea Board’s goods (tea). In the Court’s view, the mere possibility that the average consumer might believe that Delta Lingerie’s Darjeeling branded goods and services (in Classes 25, 35 and 38) were connected with The Tea Board’s Darjeeling tea was not enough to lead to a finding of identity or similarity. The Court therefore dismissed the opponent’s Article 8(1)(b) ground of opposition (based on a likelihood of confusion).
Turning to the issue of reputation/detriment/unfair advantage (Article 8(5) CTMR), the Court confirmed that Community Collective marks should be treated in the same way as normal CTM registrations when considering this question.
As in the Ispeed/Speedo opposition discussed at page 20 of this edition, the Court found that there was no objective evidence to the required high standard that could lead to the conclusion that the use of Delta Lingerie’s (Darjeeling) mark would be detrimental to the repute of The Tea Board’s earlier marks. This ground of opposition was therefore (again) dismissed.
Also as in the Ispeed/Speedo case however, the (General) Court accepted that an earlier mark with a very strong reputation could be brought (immediately and strongly) to mind by a later (opposed) mark. In such a case, it was an indication that there was a real risk that, in future, the later mark, when used in relation to dissimilar goods/services, could take unfair advantage of the reputation of the earlier mark. In the Court’s view, this was possible in relation to Delta Lingerie’s Class 25 goods and Class 35 retail services but not in respect of their non-retail Class 35 services and their Class 38 services. As the Appeal Board had not considered this aspect of the opposition fully, the Court annulled their decision to reject The Tea Board’s opposition in relation to the CTM application’s Class 25 and 35 goods and retail services and remitted this case (and the other three) back to the Appeal Board for further consideration.
It would seem like poetic justice to the writer that a company based in the home of the overly protected geographical name Champagne should face the prospect of losing its CTM applications in oppositions brought on the basis of another well known, (Indian) geographical name.
However, The Tea Board needs to be careful flexing its recently discovered trade mark muscles. Delta Lingerie already owns a CTM registration for Darjeeling in Class 25, a trade mark right that was unsuccessfully opposed by The Tea Board in the late 1990s. This CTM registration predates both of The Tea Board’s Community Collective marks. Given the existence of Delta Lingerie’s earlier CTM, given the undoubted reputation of the French company for women’s underwear in France and given the recent upsurge of interest in tea amongst French consumers, a counterattack against The Tea Board’s Community Collective rights is not entirely beyond the realms of possibility. This would endanger The Tea Board’s core interests in a significant market and could make any success that they enjoy in the above oppositions a pyrrhic victory.
In February 2004 the Swiss company KBT & Co obtained a CTM registration for the trade mark Arktis covering pillows and sleeping bags in Class 20 and bedding and bed blankets in Class 24. In order to develop the EU market, KBT licenced the German company Breiding Vertriebs GmbH to manufacture and sell Arktis branded bedding products in Germany. Under the licence Breiding could “assert, in its own name, rights arising from infringement of the trade mark”. However, this trade mark licence was not formally recorded on the CTM Register.
In October 2009 and again in October 2012, Mr Youssef Hassan, in the latter case through his company OVL Onlinevertrieb, began selling down duvets under the trade marks Arktis 90, Arktis 90HS and InnoBETT selection Arktis, at the website www.schoene-traeume.de.
Breiding brought proceedings and, at first instance, the German Court (Düsseldorf) ordered Mr Hassan to remove the infringing products from his website and to pay damages.
Mr Hassan appealed to the Higher Regional Court. That German (Appeal) Court, before considering the substance of the case, asked the European Court (CJEU), (Youssef Hassan v Breiding Vertriebs; C-163/15) to rule on the question of whether or not the CTM Regulation (Article 23(1)) prevented a licensee who is not entered on the CTM Register … from bringing proceedings alleging infringement of a CTM. In making the reference, the German Court noted that a Spanish Court had previously “taken the view that a licensee could invoke rights, vis-a-vis third parties, only after the licensee has been entered on the Register”.
Following an analysis of the CTM Regulation, the CJEU ruled that a CTM licensee whose license was not registered at OHIM could bring infringement proceedings. They contrasted this position with other aspects of the CTM Regulation which deal with a CTM as an object of property where a licensee, in order to exercise its rights under the license would have to be recorded on the CTM Register (see Articles 17, 19 and 22).
Although Breiding got lucky in this case, the ruling still reinforces how important it is to record CTM licenses on the Register at OHIM. This will not only avoid having to face a situation similar to Breiding, it will also protect the licensee against any conflicting licenses that are granted subsequently by the CTM owner, as well as against the CTM proprietor seeking to assign its right to a third party without informing the licensee. Further, the above ruling should not be seen as applying to EU national trade mark rights. In a number of EU jurisdictions, for example in the UK, it is necessary for a trade mark licensee to have applied to officially record its licensee before taking infringement action against a third party.
The KBT owned CTM for Arktis is much litigated. Previously, a non-use revocation action brought by Matratzen Concord (which was partially successful, removing the Class 20 goods) reached the (European) General Court (T-258/13). In that judgement, it appears that even use by Breiding in Germany without a written agreement (but with KBT’s consent) was accepted as genuine use of Arktis by the proprietor. Perhaps not surprisingly, this case had been appealed by Matrazen to the CJEU (C-295/15).
The importance of a conceptual dissimilarity between two marks was illustrated in a recent opposition before the UK Trade Mark Office (Argon Consulting v JT International; O-062-16).
Argon owned a UK trade mark registration for Rochester covering a wide variety of tobacco goods in Class 34. Rochester is a well-known town in the English county of Kent. JT applied to cancel Argon’s registration (Section 47 of the Trade Marks Act 1994) based on earlier trade mark registrations for Dorchester claiming identical and similar goods in Class 34 (Section 5(2)(b)). Dorchester is the county town of the English county of Dorset. It features, as Casterbridge, in many of the novels written by Thomas Hardy.
The opponent put in evidence of its sales of Dorchester cigarettes in the UK through many of the biggest retailers. They argued that the two marks were visually, phonetically and conceptually similar, in the latter case because both marks consisted of the place names of towns situated in the South of England. The registered proprietor filed information on the number of English towns and cities that consisted of or contained the suffix “Chester”, as well as the availability of Chesterfield and Manchester branded cigarettes in the UK.
The Hearing Officer (Mr Mark Bryant) accepted that the two sets of goods were identical or very similar. He then moved on to a comparison of the two marks. He agreed with JT that Rochester and Dorchester have a (reasonably) high level of visual similarity. He also accepted that the two marks shared a medium level of aural similarity. When it came to a conceptual comparison, Mr Bryant dismissed JT’s approach. According to the Hearing Officer, if this argument were correct, all place names would be conceptually similar. In Mr Bryant’s view, the marks Rochester and Dorchester indicated different towns and, on that basis, there was no conceptual similarity. Taking all of the above into account, Mr Bryant concluded that the conceptual dissimilarity between the two marks outweighed the visual and phonetic similarities and that, as a consequence, there was no likelihood of confusion. He therefore dismissed JT’s cancellation action.
Whilst it is clearly correct to find that an argument that all place names in the South of England are conceptually similar is too wide ranging, it is not so clear to the writer that it is unreasonable to argue that two place names in the South of England, both consisting of three syllables, and both ending in –chester, possess a level of conceptual similarity. If this were combined with (reasonable) visual similarity, (medium) phonetic similarity and the concept of imperfect recollection, then the potential for a likelihood of confusion becomes rather less fanciful. Of course, if the same action were fought before OHIM, where the conceptual argument would carry little weight, a different outcome might be expected.
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, the 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, was, 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 brought a trade mark infringement and passing-off action against TUKUO before IPEC. The German based band denied the allegations and counterclaimed for the cancellation of TUOGB’s CTM primarily on the basis that it was descriptive of the goods/services protected (Article 7(1)(c) CTMR), in particular recording media such as CDs and DVDs in Class 9 and entertainment services (and similar) in Class 41.
IPEC (Judge Hacon) had no difficulty in finding that TUOGB’s CTM registration was descriptive in relation to the key goods and services in Classes 9 and 41. The CTM proprietor attempted to overcome this finding by arguing that its widespread use of its trade mark in Germany and the UK for relevant goods and services, as well as smaller scale use in other EU jurisdictions, meant that their trade mark had acquired distinctiveness in the EU. Judge Hacon disagreed. The Judge accepted that TUOGB had acquired distinctiveness of its mark in Germany and the UK, though not elsewhere, for concert services. However, in the Judge’s view, in order to sustain a CTM for a descriptive mark such as The Ukulele Orchestra of Great Britain, it was necessary to establish acquired distinctiveness not only in the English speaking countries of the EU (namely Ireland, Malta and the UK) but also in all of the other EU countries where basic English could be understood (that is Austria, Belgium, Cyprus, Denmark, Finland, Germany, Luxembourg, Netherlands and Sweden). Not surprisingly, the CTM proprietor failed to meet this nigh-on impossible standard. As a result, their CTM registration was found invalid which decided the trade mark infringement aspect of the action.
Judge Hacon then moved on to the issue of passing off. The Judge accepted that, in the UK, TUOGB had established a goodwill/reputation in their name. As there was evidence of actual confusion between the two orchestras, both in the UK and elsewhere, the necessary misrepresentation was also present. Finally, Judge Hacon ruled that the German based defendant’s activities in the UK were damaging TUOGB’s goodwill in their orchestra name. This was in part because certain concert-goers had booked tickets for TUKUO events, thinking that they were going to see TUOGB, and then had expressed themselves disappointed by the TUKUO performance.
It followed that all three elements for a successful passing-off action were present and Judge Hacon found accordingly in favour of TUOGB on this cause of action.
The British based musical combo were saved by the usually thin thread of passing-off in the above case. Their action against the German based interloper would, almost certainly, have been simpler and quicker to win if they had been able to rely on, and defend, a UK trade mark registration for The Ukulele Orchestra Of Great Britain.
Rather late in the day, they appear to have understood this reality and they filed a UK trade mark application for the orchestra name in September 2015.
Another UK case (O-520-15) has recently been published which illustrates the UK Trade Mark Office’s strict practice in the area of genuine use of a trade mark.
Nobel Control Ltd owned a UK trade mark registration for the trade mark Starlet Clothing covering “clothing, clothing accessories and footwear” in Class 25. Mr Kuldeap Singh Mehat applied to cancel Nobel Control’s registration on the basis of an earlier UK trade mark registration for Starlet (stylised) covering identical and very similar Class 25 goods (Section 47(2)(a) and Section 5(2)(b) of the 1994 Trade Marks Act). Mr Mehat’s registered mark can be seen as the upper mark shown below.
The applicant to cancel’s earlier UK trade mark registration was nearly 30 years old and so he was required to show genuine use of his mark in the UK during the 5 years prior to the date of his application to cancel Nobel Control’s UK right. Mr Mehat’s evidence showed that he traded as True Corset UK and that, during the relevant 5 year period, he had sold reasonable quantities of Starlet branded corsets in this country (probably about £100,000 worth). Unfortunately for Mr Mehat, these sales had been under a different Starlet mark to the one that was registered. The Starlet mark in use can be seen as the lower mark shown below. In order to overcome this difficulty, the applicant to cancel relied on the argument that the mark in use should count as genuine use of his registered mark, since the former differed from the latter only “in elements which do not alter the distinctive character” of the registered mark (Section 46(2) of the 1994 Act).
The Hearing Officer (Ms Al Skilton) disagreed. Comparing the two marks, she found that the mark in use contained a letter S that was markedly different to that found in the registered mark in that it gave the impression of a treble clef in musical notation. By contrast, in the registered mark, the initial letter S looked, according to the Hearing Officer, like a “woosh at the start of the mark”. Further, the use of the stars in the mark in use also differed significantly to their use in the registered mark. In the mark in use, they formed a significant part of that combination mark and created an arrow shape.
The differences, in Ms Skilton’s view, altered the distinctive character of the registered mark. It followed that Mr Mehat had not established genuine use of his mark in the UK and that his cancellation action failed at the first hurdle.
In the writer’s view, the decision in this case is not as harsh as those made in earlier genuine use cases before the UK Trade Mark Office, see, for example, Lip-Ice (The Mentholatum Company v Multibrands International), and Catwalk (Continental Shelf 128 v Dosenbach-Ochsner). However, it does show how little room for manoeuvre there is when arguing that two marks are close enough under Section 46(2) of the 1994 Act. The UK practice should be contrasted with the more liberal practice followed by the General Court in the Vieta decision (T-690/14) discussed below.
Further, one wonders what would have happened in the Starlet Clothing case if Mr Mehat had owned an earlier UK trade mark registration for the word mark Starlet? Would his use of the combination mark sustained such a (word) registration? If not, then it is perhaps time for a serious rethink of UK policy in this important area.
The above Starlet non-use decision would appear to be at odds with the ruling made by the (European) General Court in Sony Computer Entertainment Europe v Marpefa SL (T-690/14).
Marpefa owned a CTM registration in Class 9 for the Vieta logo shown as the upper mark set out below. Sony applied to revoke the CTM on the ground of 5 years’ non-use (Article 51(1)(a) CTMR). Marpefa filed a substantial quantity of evidence which essentially showed the use of the stylised Vieta mark (shown as the lower mark set out below) and vieta (word) for a variety of Class 9 goods primarily in Spain but also, to a much lesser extent, in Lithuania, Netherlands and Portugal.
The Cancellation Division found that genuine use of the registered mark had been established for some of the registered goods, namely “loudspeakers, loudspeaker systems, sound amplifiers, computers, video screens, apparatus for the reproduction of sound and images, television sets and record players”. Sony appealed but the Second Board of Appeal confirmed the Cancellation Division’s decision.
Sony appealed again, this time to the (European) General Court. At this stage it was accepted by both parties that the CTM proprietor’s evidence was adequate to establish the place, duration and extent of the use of the registered mark; that left the nature of the use. According to Sony, the forms in which Marpefa had used its mark Vieta (stylised) and vieta (word) involved altering it from the form in which it was registered (Article 15(1)(a) CTMR).
The General Court, except for one aspect, confirmed the decisions of the lower tribunals. Following a detailed analysis of all the aspects of each mark, the General Court concluded that
- The distinctive character of the registered mark at issue is essentially derived not from its figurative elements but from its word element vieta.
- The word element (vieta) has a high level of distinctive character and occupies an important position in the overall impression created by the registered mark.
- The figurative elements (in the registered mark) have only weak distinctive character and occupy merely an ancillary position in that overall impression, having a relatively marginal visual impact.
- The registered mark had been used in a form that did not alter its distinctive character.
The one area in which the General Court did not agree with the Board of Appeal (and the Cancellation Division) was in their maintenance of Marpefa’s CTM registration for “apparatus for the reproduction of sound and images”. In the Court’s view, the evidence of use did not justify the continued registration of such a broad term. They therefore annulled the Board’s decision in relation to these Class 9 goods. For the remaining Class 9 goods that had been maintained by the Board (and the Cancellation Division), the Court dismissed Sony’s appeal.
The above Vieta ruling is in stark contrast to the Starlet non-use decision made by the UK Trade Mark Office. Whilst it may need a bit of stretch to find that use of the stylised Vieta mark should count as genuine use of the registered Vieta logo, at least it shows a willingness on behalf of the various tribunals involved to accept that, in an evolving market, trade marks do change and that some account should be taken of that. This is something that a line of UK non-use revocation decisions have signally failed to do. In the writer’s view, this is an area that the UK trade mark authorities need to review and, following that review, to introduce a new, less conservative, policy regarding marks actually in use that can establish genuine use (of a registered mark).
A ruling of the (European) General Court (Puma SE v Sinda Poland Corporation; (T-692/14)) found that the Polish company’s imaginary, leaping animal (CTM application no. 11142395) was too close to Puma’s well known leaping cat logo (International trade mark registration no. 480105 and others).
Sinda Poland, a shoe retailer, had filed the CTM application for their animal device in August 2012. The application claimed “footwear, sports footwear” in Class 25. Puma SE opposed (Article 8(1)(b) CTMR) on the back of a number of earlier trade mark rights for their puma logo covering identical goods. Both the Opposition Division and the Fifth Board of Appeal dismissed the opposition because they found the two marks to be dissimilar.
Puma appealed to the General Court and they took a different view. In accepting the opposition and rejecting Sinda’s CTM application, the Court concluded “… the mark applied for and the earlier mark are both black silhouettes of animals … the curves of the back and belly of the two animals depicted are not identical but have undeniable similarities”.
One might feel a certain sympathy for the Polish applicant in the above case, if it weren’t for the fact that, in a staggering coincidence, they not only filed their CTM for an imaginary animal in August 2012, but, at the same time, they also filed for a stripe device (CTM application no. 11142361) in Class 25 that bore a rather striking resemblance to Puma’s own stripe logo (see CTM registration no. 3513694). This additional Sinda Poland CTM application was also successfully opposed by Puma, see Appeal Board decision R2709/2014-1.
To misquote Lady Bracknell, to choose one logo that is too close to a competitor’s may be regarded as a misfortune, to choose two such logos looks like carelessness.
Anyone who doubts the difficulty of clearing and registering a trade mark in the EU should consider the (European) General Court’s decision (T-96/14) in the CTM opposition between Vimeo LLC and PT Communicacões S.A.
The American CTM applicant owns and runs the Vimeo video-sharing website. They applied to protect their house mark (Vimeo) as a CTM in Classes 38, 41 and 42. This CTM application was opposed by the Portuguese mobile phone operator, PT Communicacões on the basis of their earlier trade mark rights in the trade mark Meo, including a CTM for a stylised form of that mark covering services that were identical/very similar to those of Vimeo. Meo is a mobile and telecommunications service operated by Portugal Telecom in that country (Portugal). The company employs a highly stylised form of the three letter house mark.
The opposition was upheld by both the Opposition Division and the (Second) Board of Appeal on the basis that the two marks were similar and, since the two sets of services were identical/very similar, there was a likelihood of confusion (Article 8(1)(b) CTMR). Vimeo appealed to the (European) General Court but to no avail. The Court took a typically simplistic view regarding the similarity of the two marks. They commented that “the fact that the word element of the earlier mark (meo) is entirely reproduced within the sign applied for (Vimeo) strongly militates in favour of the conclusion that the signs at issue are similar”.
The CTM applicant had filed evidence to show the coexistence of the two marks (Vimeo and meo), in the EU, for certain of the services claimed, without any evidence of actual confusion. This coexistence has now continued for 10 years. The Court, following a depressingly familiar line on such market coexistence, was equally dismissive about this. According to the Court, “it was for the applicant … to adduce evidence to support a finding that the consumers of the products covered by each of the marks at issue did not confuse them” before the CTM filing date. The coexistence of the two marks on the EU market for 5 years prior to the filing of the opposed CTM did not show, sufficiently conclusively, that the relevant consumer did not confuse the marks.
Having disposed without difficulty of the inconvenient market coexistence of the two marks, the Court upheld the opposition and rejected Vimeo’s CTM application.
Let us consider first, the Court’s “analysis” of the similarity of the two marks. Whilst the process followed does make a comparison of the earlier and later marks much simpler, is such a basic approach really a proper way to make the comparison? In most cases, there is, or should be, much more to it than simply confirming the presence of the whole of meo in Vimeo. How far, for example, do you take such a simplistic process? Would Dex be confusing with Fedex or Sco with Tesco? Would Ogle fall foul of Google? What about Tier and Cartier, Ron and Chevron and Che and Porsche? In the writer’s view, the widespread acceptance of the Court’s simple “similarity analysis” would make the clearance of potential new marks much more complicated. The process requires a much more rounded and sensible approach.
As far as the issue of peaceful coexistence is concerned, at least the Court didn’t suggest, as they have in the past, that this can only apply when considering identical marks. However, it would still appear that, in order to run a successful argument on peaceful coexistence one has to prove it, through independent (presumably survey) evidence, in all 28 countries of the EU, including Cyprus and Malta. Not easy if the opponent only sells its services in Portugal, as appears to be the case with Meo. If that were not enough, what one has to prove in all of those countries is that the relevant consumers are not confused by the two marks at issue. One wonders whether the Court ever gave any thought as to how precisely one would prove such a negative; in 28 countries. Such a high standard of proof essentially places the issue of peaceful market coexistence in the EU in the same “Impossible to prove” box as distinctiveness acquired through use in the EU.
Supermac’s is an Irish fast food restaurant chain. It was established in 1978 and now operates over 106 eating establishments throughout Ireland with a turnover of around 80 million euro.
The mere existence of this Irish company might come as a surprise to those in the trade mark world who have followed the recent endeavours of the American fast food giant McDonald’s, to gobble up any competitor or potential competitor that has the temerity to include either “Mc” or “Mac” in its name. Perhaps back in the 1970s, multi-nationals had a different view as to the extent of their trade mark territory.
That was then and this is now however. When the Irish company took the decision in 2013 or 2014 to expand its business interests outside Ireland, they filed a CTM application for the word mark Supermac’s in Classes 29, 30 and 43 as part of that planned extension. Before you could say I’m Lovin’ It, McDonald’s (International) Ltd filed an opposition based principally on their earlier CTM rights in, amongst others, Mc, McDonald’s and Big Mac and the argument that one or more of these marks was confusingly similar to the trade mark Supermac’s (Article 8(1)(b) CTMR).
OHIM’s Opposition Division concentrated on the comparison between the trade marks Supermac’s and Big Mac. They decided that the relevant English-speaking consumers would focus their attention on the more distinctive elements of the two marks, namely – mac’s and Mac; aspects of the two marks that both played independent, distinctive roles. Bearing in mind the possibility of imperfect recollection, the Opposition Division concluded that, for the majority of the food related goods and services covered by the Irish company’s CTM application, there was a likelihood of confusion. They therefore rejected the opposed application for most of the goods and services claimed.
The finding based on the earlier CTM for Big Mac was just as well for the opponent because, when the Opposition Division moved on to the ground of opposition based on the reputation of the trade mark McDonald’s, they concluded that the trade marks Supermac’s and McDonald’s were too dissimilar for the relevant EU public to make the necessary mental association (link) between them. They therefore dismissed the Article 8(5) ground of opposition based on the opponent’s earlier CTM for, and EU reputation in, the trade mark McDonald’s.
It was rather predictable that OHIM would find the trade marks Supermac’s and Big Mac to be confusingly similar and therefore would reject the Irish company’s CTM application in large part. A more interesting question would be whether the American food giant would be able to prevent an expansion of Supermac’s into the mainland UK given that the two retail chains (Supermac’s and McDonald’s) have coexisted in Ireland and Northern Ireland for over 30 years without any apparent difficulty. Watch this space.
Zubrowka, in English Bison Grass, vodka is a dry, herb flavoured spirit that is distilled from rye. The vodka is distilled 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. In Polish, and a number of other Slavonic languages, the word Zubr refers to the European bison, otherwise known as the wisent.
Wisent vodka is a competing product that is produced by the Polish distillery, Polmos Łańcut. Each bottle of Wisent vodka bears the word (Wisent), as well as an image of a bison. Further, each bottle also contains a blade of bison grass.
In 2006, (Fabryka Wodek) Polmos Łańcut applied to register the main features of one of their bottles of vodka. The mark featured a vodka bottle containing a blade of bison grass with a label featuring the word Wisent and a stylised image of a bison. The case was registered in August 2008 (no. 5142039).
Somewhat belatedly, the Polish owner of the Zubrowka vodka brand who, after a merger, was CEDC International, woke up to the existence of Polmos Łańcut’s CTM registration. They therefore applied to invalidate the right (Article 53(1)(a) CTMR) based on a number of earlier registered trade mark rights plus their reputation in the Zubrowka brand and product get up. As the case progressed, it became clear that CEDC’s most relevant earlier trade mark right (Polish trade mark registration no. 189866) protected the 3D shape of a Zubrowka vodka bottle featuring the label (Zubrowka (word) plus bison image) and a representation of the blade of grass in the bottle.
OHIM’s Cancellation Division declared the contested CTM registration invalid on the ground that there was a likelihood of confusion (Article 8(1)(b) CTMR) between the CTM mark and CEDC’s earlier Polish mark (PL 189866). Polmos Łańcut appealed. Unfortunately for CEDC, the appeal was passed to the Fourth Board of Appeal for consideration. Almost unbelievably, the Fourth Board found no similarity between the marks at issue and that, despite the fact that the goods in question were identical or similar, and despite the claim of enhanced distinctiveness and renown in respect of the earlier marks, one of the conditions needed in order to assess whether there was a likelihood of confusion and to benefit from the protection of reputation was absent. The Board therefore allowed the appeal and cancelled the decision of the Cancellation Division.
Not for the first time, a decision of the Fourth Board of Appeal was appealed to the (European) General Court by CEDC. Not for the first time, in such circumstances, the General Court annulled the Fourth Board’s decision. Taking a much more sensible approach to the comparison of the contested mark and the earlier mark, and agreeing with the approach of the Cancellation Division, the Court found that there was a low degree of visual similarity and, in particular, a certain conceptual similarity between the marks. They therefore sent the case back to OHIM for further consideration.
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.