• UK News

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    Levi's jeans are well known for having what they refer to as arcuate stitching in the back pockets of their products. The stitching is protected by UK trade mark registration no. 1494113 and others. In a recent opposition, Levi's failed to prevent Vivat Holdings from registering their own form of stitching applied to Lee Cooper jeans (UK2070715). The opposition failed primarily because the Hearing Officer refused to consider what he found to be a flawed survey conducted by Levi's and also because he took the view that the average consumer of jeans was likely to be brand conscious and therefore attentive when selecting such goods. This reduced any risk of confusion through imperfect recollection.

    An application to register the numerals 3663 for inter alia foodstuffs was opposed on the basis that it was non-distinctive because the numbers equate to the word food on a touch tone telephone key pad (BFS Group v Woodward Foodservice). The opposition was rejected on the basis that there was no evidence of widespread use of the alpha numeric term 3663 (FOOD) within the relevant industries and because 3663 would not be used on its own to indicate the telephone number of the supplier of food or food related services.

    Spam is a well known trade mark for a variety of tinned meat. Those of a certain generation will also closely associate the mark with a Monty Python sketch featuring a cafeteria where Spam tended to dominate the menu and the diners were surrounded by a group of Vikings extolling the virtues of Spam. More recently, the word spam has found a new meaning as the term used to describe electronic junk-mail received over the Internet. Somewhat obscurely, this new generic use of spam seems to have been adopted as a result of the Monty Python sketch.

    Hormel Foods, the manufacturer of Spam tinned meat have heroically, but unsuccessfully, attempted to resist this new widespread use of spam over the Internet. In a recent UK opposition, this apparently doomed resistance continued. The mark at issue was spambuster (stylised) filed by Antilles Landscapes Investments in respect of computer programming. Hormel opposed the mark on the basis of their reputation in the trade mark Spam in the UK and argued that, while they had been forced to accept the generic use of spam in relation to the Internet, they should still be able to resist the registration and use of spambuster as a trade mark.

    The Hearing Officer disagreed. In his view, the term spambuster, in the context of computer programming, would be seen as alluding to the process of filtering or eliminating junk e-mail. It would therefore not take unfair advantage or be detrimental to Hormel's reputation in the trade mark Spam.

    For many years, the Swiss company Nestle (and their predecessors) have sold a chocolate product called After Eight. The product is a thin chocolate mint that is marketed primarily for consumption after dinner. A rival confectionery firm, Sweetmasters, decided to take this concept a little further by seeking to register the trade mark After Sex Mints. Not surprisingly, Nestle opposed the application on the basis of their prior registered trade mark rights in After Eight.

    The Hearing Officer dismissed the opposition stating that the applicant's mark appeared to be a parody of the opponent's, but that mere association, in the sense that the later mark brought the earlier mark to mind, was not sufficient to succeed under Section 5(2) of the 1994 Act. According to the Hearing Officer the word sex was unlikely ever to sound anywhere near the word eight, which is just as well, given the misunderstandings that could otherwise occur amongst those attempting to recruit members of rowing crews. The Hearing Officer also failed to see the rationale behind the applicant's mark, but then they do lead a quiet life down in Newport.

    In June 1995, a UK company Blarney Spring Water applied for and was granted a UK registration for the trade mark Blarney covering non-alcoholic beverages in class 32. Irish Water Resources Ltd applied to invalidate the registration on the basis that it had been filed in bad faith (Section 3(6) of the Act). The Irish Company's case rested simply on the fact that Blarney Spring Water was incorporated in October 1995, that is four months after the UK application had been filed. It followed that the registered proprietor could not have had the necessary intention to use the mark at the date the application was filed (Section 32(3) of the Act) and the application must therefore have been filed in bad faith. The Hearing Officer agreed and declared the registration invalid. In the process, he also refused to allow the proprietor to correct the registration retrospectively. Given that the Irish company owns a CTM registration and UK application for Blarney in Class 32 both of which post-date the invalidated registration, this represents a very damaging decision for Blarney Spring Water.

    Amongst the applications recently accepted by the UK Office and OHIM, we have noted:

    • Two more moving images. The first (UK2280102) is a representation of a toilet bowl imparting a confidential message whilst dancing or gesticulating. A type of Waltzer Loo perhaps. The second (CTM 1864610) is a flying bird used as an Internet icon by the Finnish patent and trade mark firm, Berggren Oy Ab (see www.berggren.fi).
    • A number of shape and get up marks including a Pirelli tyre (CTM 392472), a Sanofi pharmaceutical tablet (CTM 2226173), a Bounty chocolate bar (CTM 818864), a Heinz salad cream bottle (CTM 178566) and a BP service station (CTM 1968403).
    • The names of various well known characters including:
      - The Brazilian and Argentinian footballers, Pele and Diego Maradona. In the former case, the application is owned by a German company and covers projectiles and similar which gives a whole new meaning to a Pele shot. In the latter case, the application is owned by the man himself, but strangely, does not cover the handling of goods.
      - The right wing politician Jörg Haider. This application protects the provision of education and training which, to the writer at least, is a bit of a concern.
      - The former Great Train Robber, Ronnie Biggs. In this case, the application covers computer games, so no doubt we can look forward to the imminent introduction of a game re-enacting the notorious robbery, including the bludgeoning of an innocent train driver.

    The acceptance of a CTM application for the smell of fresh cut grass in respect of tennis balls (CTM 428870) has been well documented. In a recent OHIM appeal, the registrability of another smell mark, in this case the smell of raspberries applied to fuels (CTM 1222090), was considered.

    The Board found that the mark, set out in words only, was an adequate representation and was, in principle, distinctive enough to be eligible for CTM protection. However, they still proceeded to refuse the application because it was incapable of distinguishing the goods of the applicant from those of others. The problem in this case was that the smell of raspberries, when added to a fuel, would not be seen as an indication of source of the product, but as means of improving the inherent, unpleasant smell of the fuel.

    The decision does, however, suggest that OHIM's Appeal Boards, if not the Examination Division, are willing to accept certain well known smells (fresh cut grass, raspberries, oranges, lemons) as registrable trade marks, provided they are not simply added to a product either to improve its inherent, bad smell or with the primary purpose of emitting an odour (as in a deodorant or an air freshener)

    In the last edition of Make Your Mark, we discussed the maul between the Rugby Football Union (RFU) and Cotton Traders over the latter's unlicensed use of a red rose device on England rugby shirts. This contest has now been played before the English High Court and Cotton Traders emerged victorious. The Judge (Lloyd, J.) declared the RFU's CTM registration (no. 236828) for a red rose device covering inter alia clothing invalid under Article 7 of the CTM Regulation. According to the Judge, the primary association of the red rose was as a generic symbol of the English rugby union team. A significant proportion of the relevant public did not recognise it as having any association with the RFU in relation to the clothing at issue.

    It should be noted that the RFU also owns a CTM application (no. 1068824) for the much more stylised form of a red rose that is now used by the England rugby team on their shirts. It therefore remains to be seen whether the RFU will be able to use their trade mark rights to prevent any unlicensed future use of this more stylised rose on clothing supplied by Cotton Traders.

    Under the UK Trade Marks Act 1994, it is possible to bring criminal proceedings in respect of the unauthorised use of a trade mark (Section 92). These provisions are aimed primarily at counterfeiters. It had been suggested that these proceedings were entirely separate from the more usual form of civil proceedings for trade mark infringement brought under Section 10 of the Act. However, in a recent case heard before the Court of Appeal (R v Johnstone), the Court held that success under the provisions of Section 92 presupposed that the alleged unauthorised use also amounted to a civil infringement. In particular, the defences to trade mark infringement found in Section 11 of the 1994 Act, were also available to a defendant in criminal proceedings.

    It is a particular feature of UK trade mark law that, if a trade mark has been used in the UK for a number of years, it may proceed to registration for the particular goods or services identified by the mark even if an earlier conflicting right exists on the Register. This tradition of acceptance of a later application on the basis of honest concurrent use has also found its way into the 1994 Act (at Section 7). A recent opposition (Newsbrook v Browns Restaurant) has confirmed that there are limits to this practice. The application was for the trade mark Browns in respect of inter alia catering services. It was allowed to proceed to publication on the basis of honest concurrent use. The published application was opposed on the basis of an earlier trade mark registration for Browns also covering catering services (amongst other services).

    The Hearing Officer refused the application. In so far as it covered catering services, he said that the application fell foul of Section 5(1) of the Act (identical mark/identical services). In such circumstances, refusal was mandatory and honest concurrent use could not apply.

    Rigel is the name of a variety of the plant Evening Primrose, the Plant Breeders Right for which is owned by Efamol Limited. The oil obtained from Evening Primrose is claimed to assist in the treatment of various diseases including those of a cardiovascular and cancerous nature. Therefore, when a UK trade mark application for the mark Rigel, claiming pharmaceuticals for use in the treatment of, amongst other conditions, cardiovascular disease and cancer, was published, Efamol naturally opposed under both Sections 3 and 5 of the 1994 Act. The opposition was, perhaps surprisingly, dismissed. On the evidence, the Hearing Officer found that it was unlikely that, in the future, any link would be established in the minds of relevant consumers between the Plant Variety name and the pharmaceutical products claimed. The Section 3 ground was therefore rejected. As far as the Section 5 objection was concerned, the Hearing Officer decided that the protection afforded a Plant Variety name extended to propagating and harvested material, but, in the case of Evening Primrose, did not extend to products made from harvested material. It followed that the Rigel right associated with the Variety did not extend to pharmaceuticals containing extracts taken from the Rigel Evening Primrose and, on that basis, the Section 5 objection was also dismissed.

    The difficulties faced by the owners of rights in the names of fictional characters when seeking to prevent their appropriation by third parties have been illustrated again by a recent UK opposition involving the trade mark Mr. Bean's (Clifford James Moss v Tiger Television). The application was filed in respect of foodstuffs in classes 29 and 30 and was opposed by the company (Tiger) which produces the well known TV series Mr. Bean, on the basis of their reputation in that fictional name in the European Union, particularly the UK, (Sections 5(3) and 5(4)(a) of the 1994 Act).

    The opposition was dismissed. According to the Hearing Officer, the evidence did not show that the opponent had any reputation in Mr. Bean outside the area of television entertainment services. Further, the use of the trade mark Mr. Bean's by the applicant would, at most, cause a consumer to call the TV character to mind. This was not enough to lead to an actionable misrepresentation. In the absence of other indicators, such as an image of either the Mr. Bean character or his teddy bear, consumers would not make the necessary link between a Mr. Bean's food product and the opponent.

    A German jeweller, Mr. Freiesleben, had developed two types of cuts for diamonds. He identified the diamonds so cut as the Context Cut and Spirit Sun. He registered these names as trade marks in Germany.

    A rival jewel dealer, Mr. Hölterhoff, during the course of negotiations with a jeweller, offered to supply ornamental stones cut in the Spirit Sun and Context Cut manner. At all times, the source of the stones (Mr. Hölterhoff) was made clear.

    Mr. Freiesleben sued for trade mark infringement and the German Court asked the ECJ for a ruling, under Article 5(1) of the Trade Mark Harmonisation Directive, as to whether or not Mr. Hölterhoff's activities were contrary to Article 5(1) (infringement by the use of an identical mark for identical goods). The ECJ decided that where, in the course of commercial negotiations, a third party used a sign to denote the particular characteristics of the goods and, at the same time, revealed himself as the true source of the goods, the trade mark was not being used as an indication of origin. The proprietor could therefore not rely on his exclusive rights to prevent such an activity.

    A recent English court case (Reed Executive v Reed Business Information) has dealt with the unauthorised use of a registered trade mark as a metatag, an invisible key word aimed at attracting Internet traffic to a particular website. The claimant, Reed Executive, was a high street employment agency who owned a UK trade mark registration for Reed in respect of employment agency services in Class 35. The defendant was the publisher of business magazines which included job recruitment advertisements. As part of this job advertising activity, the defendant set up a website called totaljobs.com. One of the metatags for this website was Reed Business Information. This ensured that, if a browser typed the words Reed Jobs into a search engine, the defendant's website appeared in the resulting list of results. Initially, the defendant also displayed Reed Business Information (and Reed Elsevier) as visible text at the totaljobs.com website. However, this use of Reed was subsequently discontinued.

    Reed Executive sued for trade mark infringement (Section 10 of the 1994 Act) and passing off. Not surprisingly, the Judge (Mr Justice Pumfrey) decided that the visible uses of the trade mark Reed at the totaljobs.com website constituted trade mark infringement.

    Turning to the invisible use of Reed within the Reed Business Information metatag, the Judge ruled as follows:

    • Section 10 of the 1994 Act required that a sign be used in the course of trade for infringement to be established. This concept was wide enough to encompass the invisible use of a sign as a metatag. Whether, in fact, such use constituted trade mark infringement depended on whether or not it led to confusion. On the evidence in this case, confusion and therefore trade mark infringement had been established.
    • Where the use of the metatag provides a listing in a search engine, then the listing will not infringe if it does not make reference to the trade mark in the listing.
    • In order to prove loss, it would normally not be enough that the claimant could show that totaljobs.com appeared in the results of a particular search. Loss would normally only be established if the trade mark Reed appeared visibly either in the search results or at the website once accessed.