Snippets

For over 100 years, the publishers of the Daily Mail and the Daily Express have competed for supremacy in the UK newspaper market. The latest stage in this fierce rivalry began when the Daily Express was taken over by Richard Desmond, the owner of a publishing empire that includes such erudite publications as Horny Housewives and Big Ones. Confirming that the competition with the Daily Mail was not about to cease, Mr Desmond was quoted as saying that the rival newspaper had a “horrible attitude to life” and represented “everything I hate”.

As part of his business strategy to deal with the Daily Mail, Mr Desmond, through his private company, Express Newspapers, decided to launch a free London evening newspaper to compete with the Evening Standard, at present London’s biggest selling evening newspaper, which coincidentally is published by the owners (Associated Newspapers) of the Daily Mail. In order to rub salt into their rival’s wounds, Express Newspapers proposed to call their new title either Evening Mail or London Evening Mail. Associated Newspapers were less than happy with this prospect and, in the finest traditions of the two rivals’ antagonistic relationship, sued for passing off and trade mark infringement, based on their trade mark rights (registered and unregistered) in The Mail, Daily Mail and The Mail On Sunday.

On the facts before him, the trial judge (Mr Justice Laddie) found that Associated Newspapers owned goodwill and reputation in their three marks, particularly in London and the South East of England, and that this reputation was not restricted to national, paid-for newspapers. He also accepted the plaintiff’s survey evidence that a not insubstantial number of readers would assume a connection between the Evening Mail and the Daily Mail and The Mail on Sunday and that a significant level of confusion was therefore likely. Finally, the judge found that the “personality” of the plaintiff’s titles could be damaged in ways which, though difficult to quantify, would be real. As a result the passing off case succeeded.

Turning to the trade mark infringement action, Mr Justice Laddie found that Associated Newspapers’ trade mark registration for The Mail was valid and enforceable in respect of “newspapers for sale in England and Wales only”. He then decided that this mark was confusingly similar to the two titles proposed by the defendant, namely Evening Mail and London Evening Mail. The infringement action therefore also succeeded.

It is often forgotten that even the simplest of logos can attract copyright and that, if a trade mark applicant does not own that copyright at the date of application for the logo as a trade mark, this can prejudice the validity of the subsequent trade mark registration. This was the outcome of a recent invalidation action before the UK Trade Mark Office (Linseal International v Trevor Evans).

The background to the case was complex and numerous facts were disputed. However, in brief, Linseal owned a UK trade mark registration for a stylised form of the mark OKO in combination with a simple diamond device. Mr Evans applied to cancel the registration on the basis that, at the date of filing (15th September 1994), the use of the OKO logo was liable to be prevented in the UK by virtue of the law of copyright (Section 5(4)(b) of the 1994 Trade Marks Act).

After careful analysis of the evidence quagmire, the Hearing Officer found that, at the application date, Linseal did not own the legal or equitable title in the copyright in the OKO logo nor did they have a licence, explicit or implicit, to use the copyright in the logo. Although it was not clear that the applicant to invalidate did own the copyright, this was not necessary for the action to succeed. It was simply a requirement that a third party, who did not have to be a party to the proceedings, could prevent the use of the OKO logo in a UK copyright action. It followed that the UK registration was declared invalid and was deemed never to have been made.

This may turn out to be a pyrrhic victory for Mr Evans, as Linseal also owns UK trade mark registrations for OKO as a word mark. As it is a well established principle of UK copyright law that there is no copyright protection accorded to a single word, it should not be possible to cancel these registrations on the Section 5(4)(b) ground discussed above.

Under Section 60 of the UK Trade Marks Act 1994, the owner of a trade mark in a Convention country can seek to regain ownership of his mark (or a similar mark) in the UK, if the mark has been applied for or registered by his agent or representative. For the purposes of this Section, a Convention country is defined as any country other than the UK that is a party to the Paris Convention or the WTO Agreement. Further, the words “agent or representative” are not interpreted in a narrow legal sense but include, for example, distributors.

In a recently reported appeal to the Appointed Person (Professor Annand), the ownership of the trade mark Golf Courts for a variety of golf-related goods and services was at issue (John de Vere v Farel Bradbury). The dispute centred upon the concept of a reduced area golf course that had been developed by Mr Bradbury in the early 1990s. Soon after making the invention, Mr Bradbury had met and developed a business relationship with Mr de Vere. How and by whom the trade mark Golf Courts was identified was in dispute, as was the precise relationship between the parties, which was regulated by a series of agreements negotiated between 1995 and 1997. What was not in dispute was the launch of the Golf Courts concept in Ireland by companies controlled by Mr de Vere in December 1996, Mr de Vere’s application for the trade mark Golf Courts in the UK in July 1997 (an application that proceeded to grant in September 1998) and Mr Bradbury’s application to replace Mr de Vere’s name with his own as the proprietor of the UK registration in February 2000 (under Section 60 of the Act).

After a careful analysis of the evidence before her, the Appointed Person came to the following conclusions:

• The launch of the Golf Courts concept in Ireland had established unregistered trade mark rights in Golf Courts in that country in December 1996.
• The use of Golf Courts by Mr de Vere’s companies at that Irish launch was at least under implied licence from Mr Bradbury.
• Mr de Vere was Mr Bradbury’s agent or representative during the period February 1996 to March 1998.
• Mr Bradbury’s application to rectify the UK Register under Section 60 therefore succeeded. At the date of Mr de Vere’s application to register Golf Courts in the UK (July 1997), Mr Bradbury was the owner of unregistered trade mark rights in the identical mark in a Convention country (Ireland) and Mr de Vere was Mr Bradbury’s agent or representative.

Another interesting aspect of this unusual case was that the Appointed Person thought that the original decision made by the Hearing Officer was so clearly wrong that she treated the appeal as a re-hearing rather than a review. Such a robust approach to an appeal is extremely welcome.

In the Autumn 2002 edition of Make Your Mark, we reported an unsuccessful opposition brought against a UK trade mark application for Tottenham, filed in the name of Tottenham Hotspur FC. The opposition had been brought by Mr M O’Connell and Ms P.H. O’Connell under Section 3(1)(b) and 3(1)(c) of the 1994 Trade Marks Act. The opponents were retailers of unofficial sporting merchandise bearing the word Tottenham. The evidence showed that the opponents had operated in this fashion since 1969. The Hearing Officer dismissed the opposition since, in his view, at the date of the application, the word Tottenham neither had nor would have (in the future) any geographical significance for the goods/services claimed in the mind of the relevant consumer.

The opponents appealed to the Appointed Person (Professor Annand), who dismissed the appeal. In the Appointed Person’s view, the Hearing Officer had applied the most relevant case law (the ECJ Windsurfing Chiemsee case) correctly and his decision should therefore stand.

Given the opponents’ use of the word Tottenham in relation to relevant merchandise for nearly 30 years prior to the football club’s UK application, it is not entirely clear why their opposition did not also rely on relative grounds for refusal (Section 5 grounds) based on unregistered trade mark rights acquired through use. The opponents’ early concession that, at the UK filing date, there was no current association between the geographical name Tottenham and the goods/services claimed also seems, to this writer, to have been unwise. Finally an argument that the trade mark Tottenham indicated the goods of unofficial traders rather than those associated with the football club, might also have had success.

When this decision is combined with the ECJ’s ruling in the Arsenal v Reed case, it seems that the days of the unofficial purveyor of sports merchandise may be numbered in the UK. Now that Tottenham Hotspur own a trade mark registration for Tottenham, we can expect them to try to use these rights to prevent the activities of their opponents, as well as other street traders operating on match days outside their White Hart Lane ground, as well as elsewhere in the Tottenham area of North London. As in the Reed case, however, it is submitted that the O’Connells should be able to rely on the defence of acquiescence if the football club sues them for trade mark infringement.

In the last edition of Make Your Mark, we reported that the well known time traveller, Dr Who, in the earthly form of the BBC, had successfully registered the design of his intergalactic police telephone box, in the face of opposition by the Metropolitan Police.

As every schoolboy, now aged between 40 and 60 will know, Dr Who’s telephone box was known as The Tardis, standing for Time And Relative Dimensions In Space. The main characteristic of this vehicle, apart from its ability to transport the good Doctor through time and space every Saturday teatime, was that, whilst on the outside it appeared to be a police telephone box, on the inside it looked like a cross between the control room at the NASA space centre and a suite at the Waldorf hotel.

Having had a taste of trade mark success against the Police, the Doctor has recently returned to the trade mark fray, this time in an opposition brought by the BBC against a UK trade mark application for Tardis covering vehicles that was filed by the Manhattan Corporation Ltd, a company based, rather confusingly, in the south east of England. According to the applicant, they had chosen the trade mark Tardis for one of their motor homes because the vehicle was “roomy inside” and was aptly described by the acronym, Touring And Recreational Driving In Safety.

The opposition was based on the BBC’s widespread use of the Tardis name, the likely damage that would occur to their reputation by the registration and use of the mark by the applicant and the claim that the application had been made in bad faith.

The Hearing Officer found in favour of the applicant. In his view, the opponent’s registered rights covered goods and services that were not similar to vehicles, as claimed in the application. The BBC’s evidence of use of Tardis as a trade mark was limited and certainly not enough to sustain their Section 5 opposition. As far as the allegation of bad faith was concerned, this could not be found simply because the applicant had taken the opponent’s mark and registered it for dissimilar goods.

This result is clearly a setback for the Doctor. However, no doubt he will return in the next episode (an appeal to the Appointed Person?) determined to prevent the world being flooded with a new enemy, Tardis motor homes! (On a serious note, this case does illustrate the difficulties that are faced in the UK by the owner of an invented, highly distinctive trade mark, when he seeks to prevent the appropriation of that mark by a third party for different goods).

In another unusual case that was recently heard by the UK Office (Sofaditex v Airofame), an application to invalidate Airofame’s UK trade mark registration for Ocean (stylised) in class 25 was made by Sofaditex. The invalidity action was based on a CTM registration for another stylised form of Ocean also covering class 25 goods. The CTM registration was not owned by Sofaditex, but by an unrelated company, Sara Lee.

The UK registration (dated 15th August 1996) had been granted in the face of the earlier CTM registration (dated 1st April 1996) because, in the period 1996-1997, CTM applications did not appear on the OHIM database until many months after their application date. The UK Examiner would therefore have been unaware of the Sara Lee owned CTM when examining Airofame’s UK application.

In response to the invalidation action, Airofame obtained a written letter of consent from Sara Lee to the registration and use of their (Airofame’s) Ocean mark in respect of ladies’ and children’s clothing, headgear and footwear. Under Section 5(5) of the UK Trade Marks Act 1994, the Office has to accept a later mark, if the owner of a conflicting earlier right consents to registration. Usually such a consent is provided prior to grant. In this case, however, the consent had been obtained after grant and also after an invalidation action had been filed. Sofaditex argued that any consent must have existed prior to grant in order to save Airofame’s registration. The Hearing Officer disagreed. In his view, the relevant date for considering the existence or otherwise of a consent was the date on which the invalidity action was decided. Since Sara Lee’s consent was dated prior to his decision, it overcame the Section 5 objection raised by Sofaditex.

The UK Office continues to reject the get-up of dishwasher tablets as non-distinctive (Section 3(1)(b) of the 1994 Trade Marks Act). The latest to fall by the wayside are Robert McBride Ltd’s application (no. 2233932) for a yellow, pink and white tablet, that was successfully opposed by Unilever, and Dalli-Werke’s applications (nos. 2268964 and 2268967) for, respectively, a blue, white and green and a green, white and yellow tablet, that were successfully opposed by Robert McBride.

Unless a company manufacturing dishwasher tablets emphasises the trade mark nature of its tablet get-up (colour and/or shape) in all its advertising and on its packaging, over a prolonged period, it has virtually no chance of registering that get-up as a trade mark either in the UK or via OHIM, unless the shape is extremely unusual.

The difficulty of registering product get-up in the UK is not restricted to dishwasher tablets, however. Recent rejections of a three-dimensional, triangular shape for chocolate and chocolate products (IR(UK) 711078) and the get-up of adhesive tape packaging (UK2242117) as non-distinctive by, respectively, the Appointed Person and the UK Office illustrate the problem. In both cases, it was not accepted that the mark applied for would be seen as denoting origin.

Although OHIM’s examination practice has become more rigorous during the past few years, it is still more likely that such get-up marks will be accepted as distinctive by the CTM Office than by the UK Office. See, for example, Kraft’s registration of a triangular chocolate shape (CTM364083).

When Make Your Mark was first published in 1998, the hot topic was the protection of the name and image of the recently deceased Diana, Princess of Wales as a trade mark. The untimely demise of the Princess and the near hysteria surrounding her death and her funeral, now seem a rather distant memory. However, as we all know, the wheels of legal progress can run exceedingly slowly, which explains why the registrability of the phrase Diana Princess of Wales Memorial Fund for goods in classes 9 and 16 has only recently come before the Appointed Person (Mr Hobbs QC) for consideration. The mark had been accepted by the Office and opposed by The Franklin Mint Company (a US company that produces coins and other memorabilia bearing the name and the image of the late Princess, as well as other personalities).

Distinguishing the present application from an earlier application for Diana Princess of Wales that had been rejected by the Office as non-distinctive (2001 ETMR 254), Mr Hobbs took the view that “there was sufficient singularity of significance in the designation Diana Princess of Wales Memorial Fund for it to satisfy the requirement for distinctiveness” in respect of the class 9 and 16 goods claimed. “The fact that the shorter designation Diana Princess of Wales was regarded as insufficiently distinctive to be registrable…does not detract from that conclusion. To hold otherwise would be to ignore the greater degree of individualisation achieved by integration of the words Memorial Fund.”

For the owners of the Elvis Presley estate, the lesson is clear. If you wish to protect the name of the deceased pop star in the UK, set up a charitable fund to commemorate his memory and then apply to register Elvis Presley Memorial Fund.

The above opposition is just one of numerous trade mark conflicts between those responsible for the Princess’ estate and the Franklin Mint Company. In an extraordinary twist to this story, it has now been reported that the US company is suing the Princess’ Memorial Fund for £15 million as recompense for what they term “malicious prosecution”. This is believed to be a reference to a failed, legal attempt by the Memorial Fund to prevent the Franklin Mint’s use of the Princess’ name and image in the US. The low key reaction of the British press to this legal move illustrates how much the memory of Princess Diana has dimmed over the past six years.

Ahead of the rugby union World Cup that is due to take place in Australia later this year, the New Zealand rugby authorities filed a CTM application for their team’s nickname, All Blacks, in classes 18, 25, 28 and 41. To most rugby supporters this application would come as little surprise. However, the CTM application has caused quite a stir down in South Wales where the good citizens of Neath claim that New Zealand are recent upstarts, when it comes to the use of the All Blacks term. According to sources in the homeland of Gareth Edwards and Barry John, Neath rugby club has been known as the Welsh All Blacks for over 120 years and at least two decades before the New Zealanders became identified as the All Blacks. To back up their argument, the Welshmen have now filed their own CTM application for their own nickname.

Whilst the outcome of a rugby international between Wales and New Zealand in the forthcoming World Cup would be a foregone conclusion (in favour of the southern hemisphere), it remains to be seen if Neath can uphold Welsh honour in the even more brutal forum of OHIM.

In a recent appeal before the English High Court (Mr Justice Jacob), the well known vodka trade mark Smirnoff was found to be confusingly similar to the Cyrillic form of Smirnov, protected in the UK for vodka. In the judge’s view, it was self-evident that occasions would arise where the mark would be translated into English. Furthermore, certain people in the UK could read Cyrillic script. It followed that the Cyrillic form of Smirnov would be deceptive.

It will be interesting to see how far this language principle will be taken. For example, will Cyrillic (or Arabic or Japanese) forms of non-distinctive English words now be rejected in the UK on absolute grounds? Alternatively, will English, French or German words having an identical meaning (e.g. Always, Toujours, Immer) be viewed as confusingly similar?

It looked as though life might become easier for UK trade mark applicants following the ECJ ruling in the Baby-Dry case. However, this has not proved to be the case. Baby-Dry paved the way for overcoming descriptiveness objections under Section 3(1)(c) of the UK Trade Marks Act, but in a number of cases before the UK Office since the Baby-Dry decision, registration has been refused under Section 3(1)(b) on the ground that the mark is devoid of any distinctive character. What is more, in each of these cases the applicant has failed to overturn the Registrar’s decision on appeal to the Appointed Person.

Following on from the refusal of Cycling IS… and Bags of Style (reported in the Autumn 2002 edition of Make Your Mark) the Appointed Person, Mr Hobbs Q.C., confirmed the Registrar’s decision to refuse registration of a series of two trade marks Surf Unlimited and Surfunlimited for inter alia “internet services” in Class 38. The applicant cited the Baby-Dry decision in its appeal and pointed out that the marks differed distinctively from the term “unlimited surfing” being the normal way of referring to the services. However, the Appointed Person concluded that the marks were unregistrable under Section 3(1)(b) even if they passed the Baby-Dry test for registrability under Section 3(1)(c). Not only is this decision out of step with the practice of the Community Trade Mark Office which has registered Surfunlimited, but it is also inconsistent with the practice of the UK Office under which 78 marks containing the word Unlimited have been registered.

In perhaps a less surprising decision, the Appointed Person, Mr Kitchin Q.C., confirmed the Registrar’s decision to refuse registration of Co-operative under Sections 3(1)(b) and (c) of the Act for a wide range of goods and services because the mark was considered to be the normal way of indicating that goods had been provided by a cooperative organisation.

Finally, in another appeal to Mr Kitchin Q.C., the Appointed Person concluded that the mark Athermal was not a word which is normally used to refer to the goods (glassware) and so the mark did not fall foul of Section 3 (1)(c). However, he then decided that the mark failed under Section 3(1)(b) because, in his view, consumers would be aware of the use of the letter “A” to mean “not” and they would therefore take Athermal to denote heat resistant goods rather than goods emanating from a single commercial source.

In 1999, the euro was introduced as a unit of currency in the majority of EU countries. The symbol chosen by the European Commission for the euro was a Greek letter epsilon containing an additional line. The euro symbol was said to represent the cradle of European civilisation (Greece) and the first letter of the word Europe.

Ten years before the introduction of the euro, Barclays Bank filed two UK trade mark applications for a device bearing a remarkable similarity to the euro symbol for use with their Interpayment travellers cheques, credit cards and financial services. These applications proceeded to registration in classes 16 and 36 in 1993. Similar rights were obtained in Germany, Italy, Spain and Sweden. All of these rights were assigned to the travel agent Thomas Cook, when they acquired Interpayment in 1995.

Once the Commission’s choice of euro symbol had become known, Thomas Cook contacted them to draw the existence of their trade mark rights to their (the Commission’s) attention and to discuss their relevance to the Commission’s plans. These contacts ceased during 1999. At this point Thomas Cook (now renamed Travelex Global and Financial Services) brought an action against the Commission before the ECJ (Court of First Instance). Travelex claimed a £25.5 million plus interest payment from the Commission, on the basis that the Commission had unlawfully interfered with their (Travelex’) trade mark rights and their entitlement to the exclusive use of those rights.

In a recent ruling, the CFI refused to order the payment requested. In the view of the CFI, the Commission did not use (or induce third parties to use) the euro symbol in the course of trade. The Court commented that “While it is indisputable that the Commission induced third parties to use the official euro symbol, also in the course of financial transactions, its actions served only to encourage its use as a means of designating the single currency and not as a sign intended to distinguish specific goods or services. Furthermore, in the Court’s view, there was unlikely to be any confusion of the two symbols amongst the relevant business community. (Travelex could not identify any use of their mark in respect of products that were available to the general public. Their use of the Interpayment symbol was exclusively in dealings with financial institutions and travel agencies).

It appears to the writer that Travelex have been hard done by in this ruling. Their trade mark seems to have been rendered virtually worthless by the appearance of the euro given that it will now be seen either as the euro symbol or a stylised version of that symbol. Any origin meaning of the Interpayment device will now, almost certainly, be severely diluted or completely lost. One can only imagine the reaction of certain companies (and their government), if the European Commission had decided to call their currency, a coke, a nike or a kodak.