UK COURT DIARY

Time is of the Essence: Dates that Matter in Trade Mark Disputes

When it comes to assessing trade mark rights, time—in the sense of date—really is of the essence. Identifying the material date, however, is not always straightforward. Two recent judgments map out the approach of the English courts to material dates for assessing distinctiveness, bad faith and the scope of specifications, and highlight where a rift may be developing with Europe on the same issues.

 

Scope of Specifications

Trade mark rights are granted for specific products and services, and whether an infringer is trading in them, or only in goods or services that are similar to them, can affect whether relief is granted. Typically, where identical marks are concerned, relief will be easier to obtain where there is use for identical goods or services, for example, because there is no need for the claimant to prove a likelihood of confusion.

The world does not stand still, however, and the advance of technology constantly introduces new goods and services which were not in existence a few years ago. Can the meaning of trade mark specifications expand with technology and changes in the marketplace? If so, what is the relevant date for assessing the scope of a specification in an infringement claim?

The Court of Appeal recently examined these issues in Reed Executive plc & Another v. Reed Business Information Ltd. & Others. In that case, the appellant companies were members of a large multinational publishing group known as “Reed Elsevier,” whose range of about 50 magazine titles includes New Scientist, Farmers Weekly and Motor Trader. The appellants’ magazines regularly carried job advertisements, some placed directly by employers, and others by employment agencies. The job advertisements proved sufficiently popular that, in 1999, Reed Elsevier launched a dedicated job-seekers’ website at totaljobs.com, which bore logos incorporating the words REED BUSINESS INFORMATION and REED ELSEVIER.

The respondent companies, “Reed Employment,” were an employment agency founded in 1960. Reed Employment owned registered trademark rights in REED dating from 1986 for “employment agency services included in Class 35.” They also advertised jobs through the Internet, although unlike Reed Elsevier they accepted job applications directly, acted as an intermediary between job-seeker and employer, and vetted applicants for suitability before making an introduction.

The question the court had to answer was whether the publication of job advertisements by Reed Elsevier in its magazines and on the totaljobs.com website constituted “employment agency services,” and whether the position had to be assessed as of 1986, when Reed Employment filed its application, or at some later date.

Applying the general principle that specifications should be confined to the core of their possible meanings, the Court held that “employment agency services” refers to services provided by an intermediary who typically vets potential job applicants for suitability before putting forward candidates for vacancies. In light of this finding, Reed Elsevier was clearly not providing “employment agency services” in the strict sense and the case did not turn on whether the material date for construing the specification was 1986 or later.

Nevertheless, the Court ruled that the material date for assessing the extent of a specification is the date on which the application was filed. The meaning of specifications, it held, cannot change with time. Where a new article or variant of an existing article emerges some time after an application is filed, whether the protection encompasses it depends on whether its core or substance was encompassed by the original specification wording. If the service of advertising jobs on the Internet could be regarded as part of the essence of “employment agency services,” then it could be regarded as such even though the Internet was not used for such services in 1986.

 

 

Comment

 

This approach seems right. Legal certainty is promoted by the interpretation of specifications by reference to their filing date, and not by reference to later events often outside the trade mark owner’s control. For example, products and services are occasionally transferred to different classes by international agreement, and it would be inequitable to allow such changes to undercut a trade mark owner’s rights.

Bad Faith and Assessing Distinctiveness

In the second case, Inter Lotto (UK) Ltd. v. The National Lottery Commission & Another, the High Court considered the relevant date for assessing whether a trademark application had been filed in bad faith.

In this case, both parties operated lotteries, although Inter Lotto’s activities were generally confined to public houses, whereas the NLC operated, through Camelot Group plc, the well-known national lottery. Inter Lotto had registered the trademark HOTSPOT in 1996, and launched its HOTSPOT game in November 2001. The game included a function known as HOTPICK which allowed players to draw numbers at random.

The NLC applied to register the trademark HOTPICKS in October 2001 and HOTPICK in December 2001 and, through Camelot, commenced use of HOTPICKS. Inter Lotto sued Camelot and the NLC for trade mark infringement and passing off. In a ruling on a preliminary issue in those proceedings, the judge determined that the relevant date for assessing whether Camelot’s use constituted passing off was the date on which the acts complained of began, in July 2002, rather than on the filing date of the NLC’s HOTPICKS trade mark in 2001, at which time the Inter Lotto HOTSPOT game had not yet been launched.

This case was a second set of proceedings involving the same parties, in which the NLC and Camelot sued Inter Lotto for trade mark infringement on the basis of the NLC’s registered HOTPICKS and HOTPICK trade marks. Inter Lotto sought leave to amend its pleadings to allege that the NLC’s registrations were invalid for bad faith under Section 3 (6) of the Trade Marks Act 1994, because before the marks were registered the NLC was aware of Inter Lotto’s rights in HOTSPOT, and proceeding with the applications in spite of that knowledge resulted in the creation of instruments of deception, in the form of registrations for trade marks which could not be used without giving rise to confusion. Such acts, Inter Lotto alleged, manifested bad faith.

In support of its contention, Inter Lotto pointed to an opinion of the Advocate-General in an appeal to the European Court of Justice from OHIM concerning the registrability of dishwasher tablet shapes by Henkel and Procter & Gamble. The Advocate-General had held that the relevant date for assessing distinctiveness was not only the filing date, but also the date of registration, so that a mark which was distinctive when filed might be rejected if that distinctiveness was lost before registration.

The Court was not so persuaded. Although Patten J. recognised that there was a genuine dispute, he nevertheless held that the wording of Section 3 (6) was clear, requiring an “application” to have been “filed” in bad faith. Bad faith arising at some date after filing was not a ground for invalidating a registration. The judge expressed serious doubts about the propriety of the Advocate-General’s views and the practice of OHIM on the material date for distinctiveness.

Comment

The judge’s muted criticism of the Advocate-General’s view on the existence of two material dates for assessing inherent distinctiveness hides a deepening rift between English and European practice.

If upheld by the ECJ, the Advocate-General’s view would become a part of English law, despite the reservations of judges and practitioners. It could have a serious impact on how distinctiveness is assessed for marks inherently distinctive when filed, but copied by others who undermine that distinctiveness before registration.

In practice, however, the ECJ avoided this question in Henkel, since the Court did not consider it essential to the ultimate outcome. When inevitably the issue arises again, it is hoped that the ECJ will perceive the real risks associated with two material dates, and the absence of any need to run those risks given the potential for the legislation to be interpreted either way. Requiring a single material date for assessing inherent distinctiveness will restore much-needed legal certainty in this area.