COURT DIARY

A Case of Mistaken Identity

Under Sections 10(1) and (2) of the UK Trade Marks Act 1994, a person infringes a registered trade mark if he uses in the course of trade

• A sign which is identical with the trade mark in relation to identical goods (Section 10(1)), and

• Either a sign which is identical with the trade mark in relation to similar goods or a sign which is similar to the trade mark in relation to identical or similar goods, provided, in this case, that a likelihood of confusion exists (Section 10(2)). A recently reported case has considered the question of what constitutes an identical sign under Section 10(1). The facts in the case were as follows. The plaintiff (Decon Laboratories) owned one CTM and two UK trade mark registrations for the trade mark Decon covering inter alia "cleaning and decontaminating substances and preparations" in Class 3 and "sanitary substances" in Class 5. They sold a range of cleaning products in the UK, primarily intended for laboratory use, under the trade mark Decon. Their most successful product was Decon 90 which was well known in the trade as a material for cleaning glassware in laboratories. The defendant (Fred Baker Scientific) imported a range of sterile cleaning materials into the UK. Their principal product was Decon-Ahol, although they also imported three other products which had Decon as part of their name. Fred Baker's products were for use in clean rooms, that is manufacturing facilities in which the degree of contamination by organisms and by dust is more or less strictly controlled. There was little or no evidence of actual confusion. Decon Laboratories sued for trade mark infringement under both Section 10(1) and 10(2) of the 1994 Act. Fred Baker counterclaimed that the two UK trade mark registrations should be revoked on the ground of five years non-use and that the CTM, which was not vulnerable to revocation on this ground, should be invalidated under Article 51(1)(b) of the Regulation, on the ground that the specification of goods was so broad that the applicant was acting in bad faith when he filed the CTM application. The Judge (Mr Pumfrey) found that Fred Baker had infringed Decon's trade mark registrations and ruled as follows on the issues raised:

• The defendant was using a sign, in particular Decon-Ahol, which was identical with the plaintiff's registered trade mark Decon.

• Matter added to the sign used by the defendant is to be discounted (when considering infringement). This widely stated principle is not absolute, but must be judged on the facts of the case.

• Fred Baker's goods were identical with the registered "cleaning and decontaminating substances and preparations" and "sanitary substances".

• The defendant's suffixes (e.g. Ahol) could not distinguish their goods from those of the registered proprietor, since their principal function was to refer to the nature and quality of the goods themselves. There was accordingly infringement under Section 10(1).

• If the decision on Section 10(1) infringement was incorrect, the Judge decided that there was also infringement under Section 10(2) of the Act. The channels of trade, if not identical, were separated by only a small barrier. Further, the plaintiff's mark enjoyed a substantial reputation which extended to persons who might well be purchasers of the defendant's sterile products. It followed that there was a substantial likelihood of confusion taking into account the Puma v Sabel definition.

• When considering the partial revocation of a registration on the ground of non-use in a case where the mark had been used but only in relation to some of the registered goods, the task was best performed by asking what would be a fair specification of goods having regard to the use that the proprietor had in fact made of the mark. The starting point should be a limitation to the actual field of use.

• Given the protection afforded against the use of an identical or similar sign in relation to similar goods, there was no pressing need to confer on the proprietor a wider protection than his use warranted.

• On the evidence before the Court, the two UK registrations were limited by the addition of the wording "all for non-domestic use". This did not alter the findings under Sections 10(1) and 10(2).

• In relation to the "bad faith" attack on the CTM registration, the legislature had seen fit to accord the proprietor five years during which he was not obliged to demonstrate use of the mark at all. This had led the OHIM Cancellation Division in the Trillium case to conclude that the objection of bad faith was available only in very limited circumstances, in particular where there was an element of dishonesty.

• If a specification of goods covered "games software and telecommunications switching software" and the trade mark proprietor operated only in the latter field, it was difficult to believe that, in such circumstances, an Article 51(1)(b) attack could be successful, but that if the same proprietor owned a CTM registration covering "computer software" at large the attack would fail. Either Article 51(1)(b) was available where there was no bona fide intention to use the mark during the first five years, or it was not.

• It could be argued that, in relation to an Article 51(1)(b) attack, the proprietor should lose his registration to the extent to which a reasonable person in his position would know that the specification of goods as applied for was too wide.

• It would be desirable for an English Court and OHIM to be consistent in their interpretation of the Regulation. In the present case, there was no evidence of dishonest intention on Decon's part in their choice of CTM specification. The application to invalidate the CTM registration therefore failed.

 

Comment

In a recent decision of the Appointed Person (Mr Hobbs), an application to register the trade mark 10 Royal Berkshire Polo Club for Class 3 goods was allowed to proceed to registration in the face of an earlier registration for the trade mark Polo covering identical goods. The application had originally been rejected under Section 5(2) of the 1994 Act (similar mark, identical goods), but this was overturned on appeal because the Appointed Person felt, correctly in the writer's opinion, that there was no likelihood of confusion between the two marks.

It is suggested, however, that the opponent may have missed a trick in this opposition and that they may have won if they had chosen their grounds more carefully. If the trade mark 10 Royal Berkshire Polo Club were to be used as a trade mark for perfumes whilst it was an unregistered mark, then under the rule that the English Courts have traditionally followed, this use must be regarded as an infringement of a trade mark registration for Polo covering the identical goods. There would be use of a sign identical with the registered mark (Polo) for identical goods and, under Section 10(1) of the Act, this would, according to the present interpretation of that Section, be infringement. The finding would be mandatory, since confusion or lack of it would not be at issue. What, then, if the opponent had opposed under Section 3(4) of the Act? That Section reads as follows: "a trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of Community law".

The Section does not appear to exclude the Act itself. If the use of the mark applied for would constitute an infringement under Section 10(1), then it would appear to follow that an opposition under Section 3(4) must succeed. What appeared to be a losing Section 5(2) situation for the opponent would effectively have been transformed into a winning Section 5(1) situation. This would have lead, in the present case, to the absurd conclusion that the mark 10 Royal Berkshire Polo Club could not be used without being deemed to infringe a registration of Polo and could not be registered in the face of an opposition based on the registration of Polo, even though the two marks were found not to be likely to be confused. If this is right, then the scope of protection given to the owners of trade mark registrations would effectively have been extended well beyond what they have traditionally enjoyed and it is highly questionable whether this really was the intention of Parliament in the 1994 Act.

The difficulty lies in the difference in wording between Sections 5 and 10 of the UK Act and the difference in interpretation that this has produced. In Section 5, the test for the registrability of a trade mark is to compare the trade mark applied for and the earlier trade mark (registered or unregistered). By contrast, in Section 10, the test for infringement is to compare the sign in use and the earlier registered mark. In the 10 Royal Berkshire Polo Club case, therefore, the Appointed Person simply compared the mark applied for with the earlier mark Polo and found that they were not similar. If, on the other hand, a trade mark infringement action had been fought between the two marks, then, according to the English Court's interpretation of Section 10, the use of the word Polo in the mark 10 Royal Berkshire Polo Club would constitute use of a sign that is identical with the registered mark Polo. Given the identity of the goods in use and those registered, infringement must therefore be found under Section 10(1).

In the writer's opinion, the present position is wrong and needs to be rectified. It is believed that, despite the difference in wording between Sections 5 and 10 of the UK Trade Marks Act, the test for registrability and likelihood of infringement should be the same. If a new mark is too similar to an earlier registered mark to be registrable, it is also too close to be brought into use, because of the danger of infringement. On the other hand, if a new mark is distinguishable from an earlier registered mark (that is, it is not confusingly similar) it should be free for both registration and use. It is submitted that, in the hypothetical 10 Royal Berkshire Polo Club infringement case outlined above, the proper test for comparing a sign and a registered mark for the purpose of Section 10 should be the following:

• The sign referred to in Section10 should not be considered to be Polo but the whole mark, 10 Royal Berkshire Polo Club, as used in the course of trade.

• This would mean that the sign would not be identical with but possibly similar to the registered mark Polo and the test for infringement would therefore be under Section 10(2) rather than 10(1) of the Act. This would mean that the plaintiff would have to show a likelihood of confusion (association) to succeed.

• If the Court agreed with the analysis of the Appointed Person in the opposition proceedings, this would mean that no trade mark infringement would be found. This would be a more consistent and sensible result. If this test had been applied in the Decon case, then the Judge would have found that the defendant's sign Decon-Ahol was similar to but not identical with the registered mark and the case would have been decided under Section 10(2) of the Act in the same way as an application for Decon-Ahol would have been examined for registration under Section 5(2) of the Act (in the face of the earlier registration for Decon).

 

At present, the clearance of new trade marks in the UK should be performed using a two-fold test, one for registrability, the other for infringement. The two tests can sometimes lead to the somewhat absurd outcome that the mark can be cleared for registration but cannot be cleared for use. In the writer's opinion, the sooner this situation is remedied, so that the test for registrability under Section 5 is the same as the test for infringement under Section 10, the better. The user of a non-confusing trade mark should not have to rely on his ownership of a UK trade mark registration for that non-confusing mark to avoid infringement of an earlier registration.

Postscript: It is understood that a French Court has put the following question to the ECJ in a case involving the trade mark Arthur et Felicie and the earlier registered mark Arthur:

• Does the prohibition in Article 5(1)(a) of the Trade Mark Directive (89/104/EEC) (equivalent to Section 10(1) of the UK Act) concern only identical reproduction without the withdrawal or addition of one or more elements included in the trade mark, or can it be extended to

A reproduction of the distinctive nature of a trade mark made up of several elements, or

The complete reproduction of all elements of a trade mark with addition of other elements?

It is to be sincerely hoped that the ECJ will state that the trade marks Arthur et Felicie and Arthur are not identical for the purposes of Article 5(1)(a).