• UK NEWS

    Snippets

    Two recent UK cases have provided conflicting views on the meaning of identical trade marks. In the first case (silversurfer.co.uk v Marvel Characters Inc), an application for a series of two marks Silver Surfer (two words) and SilverSurfer (one word) in Classes 25 and 28 was opposed under Section 5(1) and Section 5(2) on the basis of an earlier CTM registration for Silver Surfer (two words) also claiming goods in Classes 25 and 28. The Hearing Officer decided the case under Section 5(1), stating that SilverSurfer (one word) was "for practical purposes" identical with Silver Surfer (two words). By contrast, in a case before the Appointed Person (Mr G.W. Ediriwara v The Baywatch Production Company), an application for the trade mark BayWatch, in which the letters B and W were larger than the other letters in the mark, was opposed by the owner of the registered trade mark BAYWATCH in which all the letters in the mark were the same size. This case was decided in favour of the opponent but on the basis that the two marks were similar rather than identical.

    One of the few areas in which the UK Trade Mark Office appeared to operate a lower level of distinctiveness than OHIM was in their acceptance of dishwashing tablets having three or more colours as trade marks. Indeed, a number of such marks have been registered or accepted by the UK Office, (see, for example, UK trade mark application nos. 2234004 and 2268967 and International (UK) trade mark applications nos. 708433, 744596 and 754028) whilst OHIM's policy is definitely to refuse such marks.

    Unfortunately, even this enlightened area of UK practice may have to change in the light of another decision of the Appointed Person (Mr Thorley) refusing to accept a get up mark. In this case, the mark (International (UK) trade mark application no. 708442) was a round dishwashing tablet consisting of a white lower cylinder, a blue upper cylinder and a white dome in the centre of the blue upper cylinder. The effect was of a tri- coloured mark, even though two parts of the tablet were white. The Appointed Person stated that it was "insufficient to show that the subject matter (of the mark) is new and visually distinctive; it must be distinctive in a trade mark sense". In the absence of any evidence of use of the mark therefore, the appeal was dismissed.

    The antagonism of the English judiciary to such get-up marks, be they shape, colour or both, in the absence of a word mark has also been confirmed in an appeal to the High Court (Mr Laddie) by K.K. Yakult Honsha against the UK Trade Mark Office's refusal to accept a bottle shape (UK1560017 and 1560018) for goods in Classes 29 and 32. The applications were rejected under Section 3(1)(b) of the 1994 Act, the Judge commenting that "there is nothing inherent in it (the shape) which proclaims it as having trade mark significance".

    A subsequent application (UK2179331) for the same bottle shape has now been accepted by the UK Office on the basis of use and survey evidence. Presumably, as required by the English Court, this evidence of use has emphasised the trade mark nature of the shape itself in the absence of other indicia. Perhaps not surprisingly, a CTM application filed by Yakult for a very similar mark was accepted without the need for use or survey evidence.

    A UK application to register the smell, aroma or essence of cinnamon as a trade mark for use in relation to articles of furniture by John Lewis of Hungerford has been rejected by the Appointed Person (Mr Hobbs) under Section 3(1)(a) of the 1994 Act. Mr Hobbs agreed with the UK Trade Mark Office that the wording chosen by the applicant did not constitute an adequate graphical representation, since it lacked the precision required to allow a third party to decide whether a later mark was identical with or similar to the John Lewis mark. Mr Hobbs did say, however, that he would have been willing to accept an application to register the smell of cinnamon as emitted by X (where the nature and condition of X is clearly and unambiguously defined).

    It is understood that a reference has been made to the ECJ in relation to what constitutes an adequate graphic representation of a smell mark (Case C-273-00; Sieckmann v German Patent and Trade Mark Office).

    The trade mark protection of well known figures, living, dead or fictional, continues apace both at the UK Trade Mark Office and at OHIM. Amongst the latest examples are

    • The two footballers upon whom England's World Cup hopes rest in 2002, Michael Owen and David Beckham,

    • The former world heavy weight champion, George Foreman who was famously beaten by Mohammed Ali in the Rumble in the Jungle. The CTM application for Mr Foreman's name covers cooking appliances and similar. I could say something about this being appropriate given the ex-boxer's ballooning size in recent years. However, just in case he ever reads this, I won't.

    • Musical entertainers and composers ranging from the sublime, Jean Sibelius, Yehudi Menuhin and Elvis Presley, to the not so sublime, James Last and Eminem. The filing (and acceptance) of a CTM application (no. 1900026) for Elvis Presley's signature shows that the company established to run Graceland and to administer a wide range of merchandising activities based on the singer's name and image (Elvis Presley Enterprises) has still not given up the hope of obtaining widespread rights in the late rock star's name. It will be interesting to see if the result of any opposition and/or cancellation action brought by Sid Shaw Elvisly Yours against this CTM right will lead to the same negative outcome for Enterprises as resulted in the English High Court (see Make Your Mark, Autumn 1999).

    • Both the Royal Family as a whole and the Queen Mother in particular. The only problem with these applications is that the trade mark Royal Family has been protected by a US company (Fieldcrest Cannon) in relation to inter alia toilet seat covers, whilst the trade mark Queen Mum has been filed by a German resident, Andreas Block. Given the historical German connections of the British Royal Family, however, it is quite possible that Mr Block can show a convincing case for ownership of the mark for which he has applied.

    • The most famous of all fictional detectives, Sherlock Holmes, as well as a number of other Conan Doyle characters, Dr Watson, Mrs Hudson and Brigadier Gerard. The application for the great sleuth himself not only covers hats and pipes, as might be expected, but also advertising and marketing services. The type of work that Holmes would no doubt have viewed as "elementary".

     

    Perhaps the most interesting marks to be accepted by the UK Office and OHIM in the past few months are UK2229477 and CTM1876911. In the former case, the mark is a moving image represented by five still pictures. The image represented shows a human form throwing an object from one hand to the other and back. Given the nature of the goods and services covered by this UK application, it can be inferred that the mark is an internet icon.

    In the latter case, the mark is the Dulux paint logo with part of said logo erased. Presumably this is an attempt to prevent the sale of a lookalike product which takes part but not the whole of the original logo. It will be interesting to see how the English Courts, in particular, react to any attempt to enforce a registration for this mark.

    Under Section 3(3)(a) of the 1994 Act, a trade mark can be rejected if it is "contrary to accepted principles of morality". In the first reported case on this issue under the new Act, an application to register Tiny P*n*s for clothing was rejected by the Hearing Officer. He found that, although the expression itself would not be widely offensive when used in its proper descriptive context, its use as a trade mark could lead to widespread offence. The mark would be on display in public places and would therefore be exposed to all members of the public. In the Hearing Officer's view, the UK Trade Mark Office should not be expected to test the boundaries of public morality.

    Even though we have the widespread use of FC** on the high streets of the United Kingdom and the success of The V*g*n* Monologues on the mainstream London stage, this decision shows that some UK examiners at least are still standing firm and do not accept that the age of innocence is lost forever.

    Unfortunately, some of their colleagues appear to have lost their innocence years ago. Over the past few years, the UK Office has accepted applications for Nau*hty Nippl*s, After Sex M*nts, Deep Sh*t, Nudes At T*n, Brewe*s Droop and Old Fart*. Whether these marks are any better or worse than Tiny P*n*s is an open question. We have certainly come a long way since an application for Hall*lujah was rejected in 1967 as offensive to the religious sensibilities of the day.

    (Ed. Note: We have used asterisks in the above marks to ensure that no offence is taken by those of a sensitive disposition.)