Snippets

In the Spring 2008 issue of Make Your Mark, we noted the failure of the Irish political parties, Fianna Fail and Fine Gael, in opposing two UK trade mark applications for, respectively, Fianna Fail in Classes 31 and 35 and Fine Gael in Class 35.
These adverse decisions were appealed to the Appointed Person (Mr. Geoffrey Hobbs QC), however, who allowed both appeals on the ground of bad faith (Section 3(6) of the 1994 Trade Marks Act; see Decision O-043-08).

Both U.K. trade mark applications were owned by companies, Fianna Fail Ltd and Fine Gael Ltd, that were controlled by a Mr. Patrick Melly, an individual who also used the name Patrick Gainsford O'Malley. It appeared, from the evidence, that Mr. Melly's companies had each written to the relevant Irish political party drawing their attention to the existence of the U.K. trade mark application for their name, suggesting that the existence of a U.K. trade mark registration for the mark could cause the political party embarrassment and offering to negotiate a licence on terms that would include certain political conditions, including the requirement that one in three public appointments in Ireland would be filled "from within the U.K."

The Appointed Person agreed with the Hearing Officer in relation to the rejection of both oppositions, in so far as they relied on the well-known trade mark status of Fianna Fail and Fine Gael (Section 56), the law of passing-off (Section 5(4)(a)) and likely deception of the U.K. public (Section 3(3)(b)). However, Mr. Hobbs then turned to the issue of bad faith. In finding for the opponents, reversing the Hearing Officer's decisions, and rejecting both applications, the Appointed Person ruled as follows:

• The relevant determination must be made "on the basis of objective evidence" rather than upon the basis of evidence as to the beliefs and opinions of the applicant...".
• The Hearing Officer had allowed the opposed applications to proceed on the basis that they did not (or at least did not appear to) affect the interests of the opponents. In Mr. Hobbs' view, however, this was an incorrect assessment. The political parties' interests would be adversely affected, if Mr. Melly's companies' trade mark applications were granted, by

-    Risk of exposure to trade mark         infringement proceedings, and, even         more seriously and
-    Open-ended need to distance             themselves from any use Mr. Melly's         companies might make of the names         under cover of the registrations.

• In Mr. Hobbs' view, Mr. Melly's activities were "leech like" in their efforts "to fasten upon and feed off the distinctive character and repute of the names". His belief that his activities were a suitable way of pursuing a beneficial solution so far as his political wishes were concerned "could not excuse or justify his conduct".

For these reasons, the Appointed Person rejected both applications on the basis that they were filed in bad faith. He ordered Mr. Melly's companies to pay costs of £8,000 in both cases.

This may not be the end of the matter, however, because Mr. Melly's companies also filed CTM applications for Fianna Fail in Classes 31, 35 and 41 and for Fine Gael in Classes 35 and 41. Again, each application was opposed by the relevant political party on the basis of the well-known status of the earlier marks and passing-off rights in the marks in Ireland and the U.K.

In two decisions, issued in January 2008 and December 2007, both oppositions were rejected. In both cases OHIM's Opposition Division found that the evidence supplied by the opponents was unpersuasive. As a result, both CTM applications have now proceeded to registration.

It is not possible to oppose a CTM application on the ground of bad faith or on the basis of the, perhaps equally relevant, ground of being contrary to public policy or to accepted principles of morality. In order to rely on these grounds an invalidation action must be brought under Article 51(1)(a) and (b) of the CTM Regulation. We can therefore expect the Irish political parties to return to the fray later this year with invalidation actions filed on either or both of these absolute grounds.

Finally, in a better late than never spirit, Fianna Fail and Fine Gael finally got around to filing their own CTM applications for their respective names earlier this year. The message must be getting across because a U.K. trade mark application for Sinn Fein was also recently filed by three individual members of that party.

Under Article 7(1)(h) of the CTM Regulation, an application can be refused if it is for a mark which is, or incorporates, an element such as armorial bearings, flags and other State emblems. This right of refusal is based on Article 6ter of the Paris Convention. The European Court (CFI) had cause to consider Article 7(1)(h) in a recent appeal from OHIM (T-215/06).

The mark at issue was a combination of the letters RW and a Maple Leaf device filed by American Clothing Associates in respect of goods in Classes 18 and 25 and services in Class 40. OHIM's Board of Appeal had refused the CTM application in its entirety because the mark contained a device which was very similar to the Canadian state emblem (a maple leaf). The additional presence of the letters RW did not alter the position.

The CFI confirmed the rejection of the CTM application in respect of the goods claimed but overturned the Board of Appeal's refusal of the Class 40 services. In the Court's view, a proper construction of Article 6ter meant that it did not apply to services.

Antonio Stradivari was an Italian violin maker. From 1666, he and two of his sons made outstanding stringed instruments at their workshop in Cremona. Instruments made in their "golden period", 1700 to 1720, and bearing the father's signature, now sell for millions of pounds. Unfortunately for the opponent in a recent CTM appeal before the CFI (Stradivarius Espana vs. Cristina Ricci) that signature is barely legible.

The case involved a CTM application to register the Stradivari signature combined with the numerals 1715 in respect of goods in Classes 14, 16 and 18. The application was opposed by Stradivarius Espana on the basis of their earlier CTM registrations for a stylised form of Stradivarius registered for identical Class 14 and 18 goods.

The opposition was rejected in turn by the Opposition Division, the Appeal Board and the CFI. In each case, the difficulty for the opponent was that the tribunal would not accept that the CTM mark was a Stradivari mark. It was more likely to be seen as StvaDinari 1715, JtvaDinari 1715 or another similar meaningless phrase. It was the 1715 that was said to be perceptible and distinctive. Further, the stylised form of the earlier mark, which contained a treble clef in the place of the first letter S (of Stradivarius), took the earlier mark even further away from the mark applied for. Bearing all of these factors in mind, the marks were found to be visually, phonetically and conceptually different and the opposition was rejected by the CFI.

Twenty years after the death of Antonio Stradivari, the composer Wolfgang Amadeus Mozart was born. Although he died in relative poverty at the early age of 35, his prolific output of outstanding operas, symphonies, concertos and other pieces has ensured that he still receives universal recognition in the musical world.

It is not only in that arena, however, that the name Mozart is known. Anyone who has ever wandered aimlessly around an airport, particularly in Austria and Germany, will be aware of Mozartkugeln, balls (in German, kugeln) of marzipan and praline coated in chocolate. It was these small, yet perfectly formed, confections that featured in a CTM cancellation action (Paul Reber v Chocoladefabriken Lindt & Sprungli) decided by the CFI in July 2008.
Paul Reber had obtained a CTM registration for the word Mozart for Class 30 goods including chocolate products and sugar confectionery. Lindt applied to cancel the registration on the basis that the mark was descriptive of the Class 30 goods claimed (Article 7(1)(c) CTMR).

Relying on various dictionary references to "Mozartkugeln" as a type of chocolate product, rather than a chocolate produced by a particular manufacturer, the CFI confirmed the decisions of the Cancellation Division and the Board of Appeal and found that the CTM registration was invalid. They dismissed the argument that the dictionary references were to Mozartkugeln, rather than to Mozart, on the basis that "kugeln" was purely descriptive of the shape of the well-known confectionery and that the relevant public would therefore perceive the word Mozart as a reference to the characteristic recipe of the delicacy called Mozartkugeln.

An attempt by the CTM proprietor, during the appeal to the CFI, to have a specification that excluded Mozartkugeln considered by the Court was rejected because such an exclusion would have changed the subject matter of the proceedings.
We can expect this decision to be appealed still further given that it is contrary to earlier decisions given by the Oberlandesgericht Court in Munich and an OHIM Board of Appeal, albeit the notorious Third Board (as constituted in 2002).

In another bad faith (Section 3(6)) based opposition heard by the UK Trade Mark Office (Landlord Mortgages v. Jemella; O-078-08), the issue was whether the trade mark applicant had an intention to use its mark at the time of filing. Landlord Mortgages had applied to register the trade mark GHD in respect of goods in Classes 14, 16, 18, 20, 24 and 27. This trade mark application had been filed in the wake of a domain name dispute between the same two parties for the domain name ghd.co.uk which Landlord Mortgages had won.

The evidence showed that the trade mark applicant's principal commercial activities lay in the buying and letting of property. As a result of the domain name dispute, they were aware of the opponent's (Jemella's) earlier CTM registration for the identical mark (GHD) in Classes 3, 8, 9, 11, 21 and 25. Prior to filing their U.K. trade mark application, Landlord Mortgages had obtained the advice of the UK-IPO Trade Mark Office on whether their proposed goods overlapped with those protected by Jemella's CTM. In its counterstatement, which could best be described as a lengthy stream of consciousness, the applicant disclosed that it owned 5,000 domain names and that it envisaged an on-line experience involving links between various websites where "its young clientele can get everything they want for in and around their new home". In response to this latter point, the opponent commented that it was difficult to see how the applicant's vision would encompass certain goods, such as jewellery, office requisites and saddlery, that were claimed in the U.K. trade mark application.
The Hearing Officer agreed with the opponent. He found that on the evidence before him, particularly numerous comments made by the applicant in its counterstatement, Landlord Mortgages did not have an intention to use the trade mark GHD in respect of the goods claimed at the time of filing. It followed that the application fell foul of Section 32(3) of the 1994 Trade Marks Act and, according to a line of English cases including Ferrero (2004 RPC 29), Demon Ale (2000 RPC 345) and Laboratoire de la Mer (2002 FSR 51), was therefore made in bad faith contrary to Section 3(6) of the Act. On this basis the application was refused.

More on bad faith. In this case (O-112-08), an individual, Mr. Sergei Yeshin (who, prior to a change of name, had been known as Mr. Nicholas Owen) owned a U.K. trade mark registration for the trade mark Warka for Class 32 goods including beer. An application to invalidate the registration was made by the Polish beer producer, Grupo Zwiec, on the basis of bad faith ( Section 3(6) of the 1994 Trade Marks Act) and passing-off (Section 5(4)(a) ).

The applicant to invalidate's evidence showed that they had brewed and sold Warka branded beer in Poland since 1478. In response to the large scale movement of Polish citizens to the U.K. after Poland joined the European Union, Grupo Zwiec also began selling Warka beer in the U.K. on a modest scale. This use began about 3 years before Mr. Yeshin applied to register the mark in this country. Finally, Mr. Yeshin had not only applied to register the trade mark Warka in the U.K., but also the trade mark Tyskie which is another well-known brand of beer in Poland.

On the basis of this evidence, the Hearing Officer decided that Mr Yeshin must have been aware of the applicant to invalidate's reputation in the trade mark Warka in Poland when he filed his U.K. application. Therefore, even if he was not also aware of their sales in the U.K., he should have made enquiries about possible U.K. sales of Warka before making his application. Given that he did not (make such enquiries), his behaviour fell short of the standard required of reasonable businessmen. The Hearing Officer therefore found that Mr. Yeshin had acted in bad faith when making his application.

Moving on to the issue of passing-off ( Section 5(4)(a) ), the Hearing Officer decided that, although the sales of Warka beer by the applicant to invalidate had only been on a modest scale for three years by the time Mr. Yeshin made his application, they were still sufficient to establish the necessary goodwill in the business conducted by Grupo Zwiec under the sign Warka. It followed that the ground of invalidation based on passing-off also succeeded.

Since 2006, the UK-IPO has been following a rather strange practice in respect of slogans, such as I Love My Boy Friend or Here Comes Trouble, which could be seen as personal statements. They will refuse such marks in relation to goods such as t-shirts and baseball caps, but allow them for related goods, such as suits, trousers and footwear. The reasoning was that, when used on the objectionable goods, such signs would not be seen as indicators of trade origin.
In the light of a recent case (O-094-08) heard by the Appointed Person (Professor Annand), this practice may have to change. The case involved the mark There Ain't No F In Justice which was filed by an individual, Mr. Kevin Scranage, for a wide range of goods and services in Classes 25, 35 and 36.

Following its usual practice, the UK-IPO refused the application in respect of t-shirts, baseball caps and the like under Section 3(1)(b) of the 1994 Trade Marks Act (non-distinctiveness). An objection raised under the lack of morality heading (Section 3(3)(a)) was waived during prosecution of the application.
Mr. Scranage, who has previous in this area having earlier filed for the marks Fook and Foo King (geddit?), appealed to the Appointed Person.
Professor Annand allowed the appeal, refusing to draw the same distinction between t-shirts, baseball caps and similar as had been the practice of the UK-IPO. In her view "The possibility that a trade mark might be used in a non-trade mark manner does not per se detract from its distinctive character...". She continued that the mark applied for has no meaning in relation to the goods...and has the necessary capacity to distinguish in relation to the goods objected to by the Office...like any other trade mark, if the mark at issue is not used in accordance with its essential origin function then it will eventually be liable to revocation on the ground of non-use.

Those representing clients who like to deal in trade marks similar in type to those of Mr. Scranage should perhaps note that, whilst the UK-IPO refused the trade mark Fook as immoral, OHIM had no such qualms, allowing both that mark and its close relation, Foo King for a wide range of goods and services.

Further evidence of the UK-IPO's ambivalent attitude to slogans came in another opposition (O-148-08), in this case to the mark The Fruit, The Whole Fruit and Nothing But The Fruit. The applicant, Miles Moriaty, sought to register the mark for certain soft drinks in Class 32. The application was opposed by Online Catering t/a Juice 4U on the basis of their earlier trade mark user rights in the slogan The Juice, The Whole Juice and Nothing But The Juice for fruit juices (Section 5(4)(a) of the 1994 Trade Marks Act).

The opponent's case was not helped by the fact that, although their annual sales of fruit juices bearing the Juice mark were nearly £1.5 million in 2005, their use of the slogan was rather low key. Their slogan only appeared in small letters on the back of their bottled juice and at the end of their promotional material.
However, given that the Juice slogan is a rather clever play on words, and given the near identity of the two sets of goods, one would have thought that even this low key approach might have been enough to get them home. It wasn't. The Hearing Officer took the view that the Juice slogan "sends a clear promotional message of content and quality. Although the play on words is there, the sign is likely to be seen as a mildly amusing promotion claim rather than a sign denoting the trade origin of the goods. It strikes me as the sort of sign that other traders may well come up with to promote their goods". He therefore rejected the opposition.

This is all very intriguing. On the one hand, the Hearing Officer expressed the usual reservations, shown by the Office towards slogans that do not contain a registered trade mark, in the above decision. On the other hand, the Office accepted Mr. Moriaty's Fruit slogan as inherently distinctive without any evidence of use. Not only that, they also accepted an application for the opponent's Juice slogan covering fruit juices and similar in Class 32. Given that the Juice slogan was filed (on 29th December 2005) just over one month after the Fruit slogan (on 18th November 2005), and yet has already proceeded to registration (because the UK-IPO can no longer refuse later filed trade mark applications on relative grounds), and given that U.K. sales of products bearing the Juice slogan are now over £2 million per annum, this dispute may have some life left in it yet.

The monopolisation of descriptive foreign words in Spain (see, for example, Donut, Matratzen and Limonchelo), is a well established part of the European trade mark scene. It appears from a CTM opposition that is now before the Court of First Instance, that this practice is not peculiar to Spain.
The case (Proctor & Gamble v. Prestige Cosmetics) involves a CTM application for the trade mark P&G Prestige Beaute filed by Procter & Gamble for a variety of goods in Class 3 including beauty care preparations and perfumery. The application was opposed on the basis of two Italian trade mark registrations for the trade mark prestige (slightly stylised) generally covering identical or similar Class 3 goods. In spite of evidence that, since the Italian word for the English and French word "prestige" is "prestigio", the relevant Italian consumer should understand the meaning of the earlier trade mark and therefore should see it as a mark of little or no distinctiveness, the Opposition Division found in favour of the opponent and rejected the CTM application for most of the Class 3 goods claimed. The Opposition Division was particularly persuaded by some television advertising for the earlier brand in Italy.

Procter & Gamble appealed to OHIM's Board of Appeal who confirmed the refusal of the CTM application. In the Appeal Board's view,

• The element Beaute in the CTM applicant's mark, although not similar to the Italian equivalent "belleza", would still be recognised by the relevant Italian public as meaning beauty and therefore would be viewed as having a weak distinctive character and as carrying little significance in the CTM mark.
• Although the P&G element of the CTM mark was distinctive and featured at the beginning of the mark applied for, and although marks should be viewed as a whole, it was possible that the word Prestige could have an independent distinctive role in the composite mark without necessarily being seen as the dominant element. Such a view was said to be compatible with the ECJ's ruling in Thomson Life (C-120/04).
• Bearing the above factors in mind, the combination of the earlier mark Prestige with the abbreviation P&G and the relatively non-distinctive word Beaute, might well lead the relevant Italian public to think that the origin of P&G Prestige Beaute branded goods and prestige (slightly stylised) cosmetics was either the same or in some way linked. There was therefore a likelihood of confusion between the two marks.

Given the clear inconsistencies in this decision, it is perhaps not surprising that Procter & Gamble has appealed to the Court of First Instance. No doubt in that forum they will question why the word Prestige, which is very close to the non-distinctive Italian word prestigio should be viewed as distinctive, whilst the word Beaute, which is nothing like the equivalent Italian word belleza, should be treated as non-distinctive and why the word Prestige should be plucked from the middle of the mark P&G Prestige Beaute, even though it is not necessarily the dominant element in that mark. They should also contrast this decision of the Second Board of Appeal with another recent decision, made by the same Board (Tirol Milch v. Ferrero), in which an invalidation action, brought by the owner of an Italian trade mark registration for the trade mark Kinder against a CTM registration for Timi Kinderjoghurt (stylised) was rejected. From past experience of the CFI's attitude to such cases, however, Procter & Gamble should not assume that the Court will take anything other than a conservative approach and confirm the Appeal Board's ruling.

More evidence that the European trade mark authorities often give the owners of Spanish trade mark rights special treatment can be seen from the recent CFI case (T-36/07) between Zipcar and Canary Islands Car.

The CTM applicant had applied to register Zipcar for vehicle rental and similar services. The application was opposed by Canary Islands Car based on their earlier Spanish trade mark registration for Cicar covering similar services.

The CFI found that, although the two marks were visually different, they were phonetically very similar. Conceptually, according to the Court, neither mark would have any meaning in Spain. In view of this analysis, given the similarity of the two sets of services and given, in the CFI's view, the fact that car rental suppliers are chosen orally in a significant number of cases, the Court found that there was a likelihood of confusion.

So now we know, not only would the average Spanish consumer find it impossible to differentiate between Zipcar and Cicar when seeking to hire a car, they would also have difficulty in seeing the difference between Amplitude and Amply when choosing sunglasses to wear whilst driving the hire car (see Make Your Mark Spring 2008, p. 17). It seems that Spain is a country that produces extremely sophisticated footballers, yet, according to the CFI in the above cases, very unsophisticated consumers.
Can it really be true, in the Zipcar case, for example, that the average Spanish consumer is unaware of the meaning of the English word car? In that case, why would the opponent choose a name such as Canary Islands Car for its company name? Surely a far better view would be that the relevant Spanish purchaser of car rental services would be aware of the meaning of the English word car and would know that it was a generic term for those services. They would therefore concentrate on the start of both marks, namely CI- and ZIP-. This would greatly assist in differentiating between them.  Further, the vast majority of business involving car rental must undoubtedly be done visually. Anyone who has ever hired a car will know this. There may be a little oral recommendation from individual to individual but, it is submitted that this will be an insignificant part of the overall commercial activity. Both of these factors should lead to the obvious conclusion that these two marks can coexist, both on the register and in the market.
In the writer's view, it is not the lack of sophistication of the Spanish consumer that is the problem, it is the conservative attitude of the CFI, in some cases at least, to the comparison of trade marks and their over-reliance on phonetic comparisons in what is more and more a visual consumer world.

The Zipcar decision should be contrasted with another opposition (Redfil v. Peek & Cloppenburg) that is at present before the Court of First Instance. In this case, the mark at issue was Agile (stylised) filed at OHIM for goods in Classes 18, 25 and 28. The CTM application was opposed by Peek & Cloppenburg on the basis inter alia of their earlier CTM registration for Aygill's covering a wide range of goods including identical and similar goods to those claimed in the opposed CTM application.

The Opposition Division allowed the opposition and rejected the CTM application. In an astonishing decision, the Opposition Division found that the visual similarities between the marks outweighed their differences that, in English, the marks were phonetically identical (!) and that, although the trade mark Aygill's was devoid of any meaning in English, the fact that it was aurally identical to Agile, meant that, when spoken, the two marks would be conceptually identical. In view of this extraordinary reasoning, a likelihood of confusion was found.
The CTM applicant appealed. The Appeal Board annulled the Opposition Division's perverse decision. Visually, according to the Board, there was little similarity between the marks, given the presence of the letter "y", the double letter "ll" and the apostrophe "s" in the earlier mark. Phonetically, there was similarity, but in French rather than English. (Given that one of the earlier rights relied on by the opponent was a CTM registration, the phonetic comparison must be in all the official languages of the European Union). Finally, given that the purchase of the goods claimed in the CTM application was likely to be by visual comparison, the "visual", conceptual differences between Agile and Aygill's were more important than any "phonetic", conceptual similarities.

The opponent has now appealed this case to the CFI. It will be interesting to see whether the Court agrees with the Appeal Board's assessment of the relative importance of the visual versus the phonetic comparison of the Class 18, 25 and 28 goods involved in the above opposition and, if so, how they distinguish the Agile case from Zipcar.

Contentious proceedings before the UK_IPO used to be fairly informal and relatively inexpensive. More and more, we are moving away from that cheap and cheerful approach. In a further sign of the times, the Appointed Person (Mr. Hobbs QC) has ordered the cross-examination by videolink of a Japanese witness based in Japan in a non-use revocation action brought before the Office (Hokochemie v. Hokko Chemical Industry). The individual in question, Mr. Yuju Ogawa, a Director of Hokko Chemical, had produced a Witness Statement which supported earlier evidence of use of the registered mark, the veracity of which had been called into question by the applicant to revoke (Hokochemie). As a result, Hokochemie had asked to cross-examine Mr. Ogawa.
The Appointed Person noted that the question of cross-examination of witnesses in proceedings before the Office was governed by Rule 55 of the Trade Marks Rules 2000. Under that Rule, the question to be answered was not whether cross-examination should be allowed, but whether it should be refused. Given the applicant to revoke's allegation that Hokko Chemical's evidence of use was false and misleading and included fabricated documents, the advantages of allowing cross-examination outweighed the disadvantages.

Whichever side loses this case should expect a hefty costs award to be made against them. On a practical note, anyone wishing to avoid expensive hearings and cross-examination, as well as the risk of significant costs awards being made against them, should look towards OHIM where justice in contentious proceedings may sometimes be rough, but is at least still informal and relatively cheap.

The danger of requesting cross-examination is that, if your case is eventually unsuccessful, then the costs award given against you is likely to be significant. The danger of not requesting cross-examination is that extremely weak, unchallenged evidence may be accepted at face value by the UK-IPO. This latter point is perfectly illustrated by a recent UK opposition fought between Minimax GmbH and Chubb Fire (O-12-08).

The mark at issue was Minimax for fire extinguishers and similar in Classes 1 and 9. Chubb Fire opposed the U.K. trade mark application (filing date August 2003) based on their alleged, earlier user rights in the identical mark, Minimax for fire extinguishers (Section 5(4)(a) of the 1994 Trade Marks Act). Chubb Fire's evidence claimed the following historical use of the trade mark in respect of fire extinguishers, continued small scale refilling and refurbishing of old MINIMAX extinguishers and rather unconvincing internal plans to reintroduce the brand. However, this evidence was given merely as statements made by an employee of the opponent. There was no corroborating evidence to support the claims.

The problem for the applicant was that none of the claims made by the opponent were challenged. The Hearing Officer therefore accepted them at face value and concluded that the opponent had generated a goodwill in the trade mark Minimax up to 1999 and had kept it alive through its subsequent (extremely limited) after sale services. On that basis, he concluded that Chubb Fire would succeed in a passing-off case against the applicant's use of the trade mark Minimax for fire extinguishers (and similar) and therefore refused the application under Section 5(4)(a).

This decision should be contrasted with an earlier revocation action (O-223-05) fought between the same protagonists. In that action, Minimax GmbH sought the non-use revocation of two Chubb Fire owned UK trade mark registrations, one of which was for the trade mark Minimax covering inter alia fire extinguishers and the refurbishment of fire extinguishers. Chubb Fire sought to resist the action by filing the same evidence in the same form as they did in the above opposition.

In this (revocation) action however, the Hearing Officer was not convinced. He found that Chubb Fire had provided no evidence of use of Minimax in respect of fire extinguishers during the relevant period (January 1999 to January 2004). Further, he would not accept that the evidence was adequate to prove a Minimax branded refurbishment service. He suggested that the service could have been provided, for example, as a Chubb branded service. In this earlier revocation case, the burden of proof was placed squarely on the registered proprietor, namely Chubb Fire.

The fact that the same evidence was inadequate to resist a non-use revocation action brought against a UK trade mark registration, yet enough to establish a ground of opposition based on passing-off is pretty surprising, particularly in view of the almost de minimis levels of use that have saved trade mark registrations in the past, see, for example, Laboratoires Goëmar v. La Mer Technology (2006 FSR 5). It is clear that in the opposition, Minimax GmbH should have challenged Chubb Fire's evidence and probably should have requested cross-examination of their witness. However, the cost implications of failure in such circumstances make many practitioners wary of such a step. One is rather reluctantly being drawn to the view that OHIM has the better practice in this area. Unless claims made by an employee of an opponent (or similar) are substantiated with convincing documentary evidence, then they are given little or no weight by OHIM. This (OHIM) system would seem to be simpler, cheaper and less open to abuse.

Two recent OHIM Appeal Board decisions illustrate the limitations placed on the rights of owners of marks containing a single letter.

In the first case (gardeur v. Blue Rose), Blue Rose owned a CTM registration (no. 1153741) for a trade mark that consisted of a lower case, black letter g within a circle. The registration claimed, amongst other goods, clothing in Class 25. The applicant to invalidate (gardeur) based their action on an earlier CTM registration (no. 476952) for a mark that consisted of (a very similar) white letter g in a black rectangle also covering clothing.

OHIM's Cancellation Division rejected the action. They found that "...the overall impression created by the two signs depends more on the visual components, the layout and the way in which the letter "g" is represented in each sign, and less on the fact that both marks feature the same letter". They did however also find that the fact that gardeur had previously opposed Blue Rose's CTM application for the, now registered, "g" mark did not prevent them from having a second bite of the cherry by filing an invalidation action on the same grounds. Having said which, the Cancellation Division did go on to comment that, since they applied the same law and practice as the Opposition Division, the decision was likely to be the same in both cases. The absence of a res judicata principle between a CTM opposition and a CTM cancellation action brought against the subsequent registration on the same grounds now appears to be OHIM policy since it was also followed in another appeal (Tirol Milch v Ferrero; R 682/2007-3).

Returning to the substance of the gardeur case, they (gardeur) appealed but without success. The Board of Appeal, in dismissing the appeal, concluded that "Taking into account the reasonable level of attentiveness of the relevant public, the rather weak inherent distinctiveness of the earlier sign and the fact that the sound and concept of a single letter cannot be monopolised as such, but only in the specific graphical manner for which protection has been claimed, the Board finds that the visual differences between the signs will counterbalance the identical nature of the goods".

The German applicant to invalidate in this case, having lost an appealed opposition and now an appealed cancellation action, are certainly tenacious and have taken the latter action to the CFI.

The second opposition (Deutsche Telekom vs. Claim 4) involved a CTM application (no. 2478139) for a figurative mark for a red coloured capital letter T heavily tilted to the right side. The application covered, amongst other services, insurance and financial services in Class 36. Deutsche Telekom opposed the application based on various earlier CTM and German trade mark rights for various figurative marks, all containing or consisting of a letter T, including their widely used magenta coloured letter T (CTM registration no. 2234706). All but one of these earlier trade mark rights covered identical Class 36 services.

The opposition was rejected by both the Opposition Division and the Appeal Board in terms similar to the gardeur case discussed above. Once again the various visual differences between the CTM mark and each of the earlier Deutsche Telekom marks were said to outweigh both the visual similarities and the phonetic and conceptual identity. This case has also been appealed to the Court of First Instance. In neither case is the outcome of the CFI appeal a foregone conclusion. In the only previous CFI decision involving single letters (Avex v. Adolf Ahlers; T-115/02), a likelihood of confusion was found between a white lower case letter a in a black oval covering Class 25 goods (CTM863142) and an earlier CTM (no. 270264) for a white lower case letter a in a black square.

Twenty20 cricket, a cricket match designed to be decided in less than three hours and aimed principally, in England at least, at football supporters has become immensely popular in a very short space of time.

The England and Wales Cricket Board (EWCB) who devised the game, as well as the name, decided, apparently for reasons of altruism, as well as financial constraint, to limit their rights to the European Union. They therefore only filed a U.K. trade mark application and a CTM application for the trade mark Twenty20. No doubt, when the French version of the game takes off in France and the Bulgarian version is the talk of Sofia, the royalties will begin to roll in.
In stark contrast to the astute business brains at the EWCB, the Marylebone Cricket Club (MCC) had no altruistic thoughts when they decided to commercialise the name Thomas Lord, after whom Lord's cricket ground in London is named, and the well-known image of Father Time that overlooks the ground.

The MCC has already launched a range of polo shirts bearing the Father Time logo, as well as a Lord's branded whisky and gin. In a move that could only be contemplated with a straight face by those who run the MCC, the money raised by these new ventures will go to the MCC's "spirit of cricket" initiative.

Staying with the sporting theme, the European national football championships, Euro 2008, organised by the Union Des Associations Européennes de Football (UEFA), took place in June and July of this year, with Spain prevailing in the final against Germany.

About 2 years before the championships took place, a German company, Julius Erdmann Beteiligungsgesellschaft sought to cancel UEFA's CTM registration for Euro 2008 on the grounds of non-distinctiveness and descriptiveness (Articles 7(1)(b) and (c) CTMR). OHIM's Cancellation Division rejected the action. According to the Cancellation Division "a mental effort is required by the consumer to interpret the meaning of the mark" and even then "he will not be capable of giving to it a precise sense which clearly and directly links the sign to the goods and services claimed". On the basis of the analysis made of the mark and the previous use of similar marks such as EURO 2000 and EURO 2004, the Division concluded that EURO 2008 is "not used in commerce as a generic expression but as an indication of a specific commercial origin".
This is not the only cancellation action that has been brought against a UEFA owned CTM registration associated with the football championships held in Austria and Switzerland. Another German company, the chocolate manufacturer, Ferrero, has attacked the CTM for EM 2008 (EM being the acronym for Europameisterschaft, the German for European Championship). This case has yet to be decided.
Ferrero has a history of challenging such football related trade marks, having previously cancelled a trade mark registration for the football World Cup related mark WM 2006 (WM being the acronym for Weltmeisterscaft, the German for World Championships) owned by FIFA. The particularly interesting aspect of Ferrero's challenge to the EM 2008 mark is that they (Ferrero) were an official sponsor of the recently held championships. How the cancellation action was greeted in UEFA's corridors of power can only be imagined. However, if I were Cadbury I would be preparing my bid to sponsor EURO 2012 now.

Two important issues pertaining to the genuine use of a registered trade mark were considered in a recent U.K. trade mark revocation action (Mobile and Wireless Group v. Avalon Enterprise; O-322-07).
Avalon owned a U.K. trade mark registration for Mobile Planet covering computer related goods in Class 9. Mobile and Wireless applied to revoke the registration, under Section 46 of the 1994 Trade Marks Act, on the basis that no genuine use of the mark had been made during the relevant five year period.

As evidence of use, Avalon produced a number of invoices which bore the company name, Mobile Planet Limited, and which showed the sale of a variety of third party branded computer goods.
The Hearing Officer therefore had to answer two questions. First, did the use of the company name constitute genuine use of the registered trade mark? Second, was the use documented by the registered proprietor use in relation to the registered goods?
As far as the first question was concerned, the Hearing Officer noted that a trade mark registration could be saved by use (of the registered mark) in a form differing in elements which do not alter the distinctive character of the mark as registered (Section 46(2) of the 1994 Act). He therefore had to consider whether the presence of the word Limited altered the distinctive character of Mobile Planet.
With some hesitation, he decided that use of the company name would constitute genuine use of the registered mark. In reaching this conclusion, the Hearing Officer found support in two earlier cases, one (Reed Executive v. Reed Business Information (2004 ETMR 56)) involving an own name defence to trade mark infringement, the other (Antoni Fields v. Klaus Kobec (2006 EWHC 350 (Ch)) considering the identity of a registered mark and a later sign. In the Reed case, the Judge (Jacob LJ) ruled that the words Reed Business Information were used as the name of a trading entity at a website whether or not they were also combined with Ltd. In the Antoni Fields case, the Deputy Judge (Mr. Sheldon QC) found that the use of the company name Klaus Kobec Limited (as well as the domain name klauskobec.com) constituted use of an identical sign to the registered mark Klaus Kobec. (Note also a similar decision made with similar hesitation in another U.K. Trade Mark Office opposition, SHL Gorup v. Saville Consulting, O-50-08).

Turning to the second issue, the Hearing Officer had little difficulty in deciding that the use (of Mobile Planet Limited) shown by Avalon was in relation to retail or distribution services, but not in relation to the Class 9 goods registered. In reaching this conclusion, he was assisted by the earlier English High Court decision in Euromarket Designs v. Peters (2001 FSR 20) where the Judge commented that only a trade mark lawyer would be likely to contend that the act of selling Kodak film in Boots shops, and putting the film in a bag labelled Boots, would constitute use of Boots as a trade mark for film.
This is a sensible decision, in relation to the goods/services question at least, and suggests that we have moved in the right direction away from earlier UK-IPO decisions, such as Jean d'Heurs v. Rank Leisure (O/77/99), where the sale of Walt Disney posters in Odeon cinemas was found sufficient to sustain a U.K. trade mark registration for Odeon covering posters.

Are minor variations of descriptive words registrable as CTMs? As you might expect, two recent Board of Appeal decisions illustrate that it all depends on the nature of the variation.

In the first case a CTM application for the trade mark Siimpel for highly specialised microelectronic goods in Class 9 was rejected by the CTM Examiner because it was too close to the Dutch word "simpel" (which means simple in English).

The applicant appealed but the Board of Appeal maintained the rejection. In the Board's view, the doubling of the letter "i" would only cause the relevant Dutch consumer to understand the sign as meaning "very simple". The additional "i" was said to reinforce the descriptive nature of the sign. There was also evidence, on the Internet at least, that the doubling of letters in laudatory words (e.g. suuper) was quite widespread. The Board was unmoved by arguments pointing to the fact that the goods would only be sold to specialists and that the goods would not be described as "simple".

By contrast, a CTM application for the trade mark Ethletic in respect of goods in Classes 17, 25 and 28 fared better. The application had been rejected by the Examiner because the mark was said to be an obvious misspelling of "Athletic". On appeal the Board of Appeal was persuaded to accept the application on the grounds that Ethletic was not an obvious misspelling of Athletic, the difference between the two words was at the beginning of the mark and therefore immediately seen, and Ethletic was as likely to be seen as a distinctive combination of the words Ethical and Athletic as a misspelling.

In the Spring 2004 edition of Make Your Mark, we reported an unsuccessful attempt by the U.K.'s Ministry of Defence (MOD) to register the Royal Air Force's famous Roundel, a device consisting of concentric red, white and blue circles, in respect of class 25 goods. The trade mark application for the Roundel was opposed by the fashion group, Arcadia, who argued successfully that the Roundel had fallen into common use in the clothing industry during the 1960s and had thus passed into the public domain.
Undeterred by this setback, the MOD obtained a trade mark registration (UK2189121A) for the Roundel covering a variety of goods other than clothing, including household textile articles.
It is reported that they are now seeking to enforce these trade mark rights against another fashion chain, namely Next, who have launched a range of bedroom products, including duvets, bearing the mark in the U.K.

No doubt Next will rely on the arguments put forward earlier by Arcadia. However, we should not expect the MOD to give in easily. With Government tax revenues falling sharply and public demands for Government spending always increasing, the British Government is understandably on the lookout for new revenue streams. Small boys attracted by duvets bearing patriotic symbols such as the Roundel should therefore not expect to receive any special treatment from the Men from the Ministry.

In the Autumn 2007 issue of Make Your Mark (p. 25), we reported a case (O-162-07) which considered whether or not the use of marks (Remus Uomo (stylised)) for men's clothing would save a different registered mark (Remus (stylised)). In that revocation action, the Hearing Officer decided that the relevant U.K. public would not understand the meaning of "Uomo" (Italian for man) and would therefore see it as a second distinctive element in a single, unified composite mark. For this reason, he revoked the trade mark registration on the ground of non-use.
This decision has recently been overturned on appeal (Douglas & Grahame v. Remys, O-61-08) to the Appointed Person (Mr. Arnold QC). Mr. Arnold differed from the Hearing Officer in his assessment of the marks actually used by the proprietor. He found that they would not be seen as a unified whole, but as a dominant and distinctive element (Remus (stylised)) plus either a descriptor or a sub-brand (Uomo), the position depending on whether or not the purchaser understood Italian.

One point that did cause the Appointed Person some difficulty was the question of whether or not a proprietor of a registered trade mark can rely on the use of a second registered trade mark to save the first registration.

The point arose because Douglas & Grahame not only owned a U.K. trade mark registration for Remus (stylised) but also a second U.K. trade mark registration for two stylised forms of Remus Uomo, which were similar to, though not identical with, the marks actually in use.

The applicant to revoke (Remys) argued that, in these circumstances, the registered proprietor was barred from relying on their use of Remus Uomo (stylised) to save the Remus (stylised) registration. They relied on the comments made by the CFI in Il Ponte Finanziara v. Marine Enterprise Projects (Bainbridge; T-194/03), a case confirmed on appeal to the ECJ (C-234/06), to the effect that
"Article 15(2)(a) (the equivalent in the CTM Regulation of Section 46(2) ) does not allow the proprietor of a registered trade mark to avoid his obligation to use that mark by relying in his favour on the use of a similar mark covered by a separate registration".

The Appointed Person noted that these comments appeared to be inconsistent with the position taken by the ECJ in the Have A Break case (Nestle v. Mars UK; C-353/03) and that the position would eventually have to be settled by a further reference to the European Court. In the instant case, however, he was satisfied that the Remus Uomo (stylised) marks in use were noticeably different to the two registered marks. He therefore dismissed the applicant to revoke's argument.

For all of the reasons given the appeal was allowed and the order for the revocation of the Remus (stylised) trade mark registration was set aside.

Under the practice that has developed at OHIM, in order to cancel a CTM registration on the ground of bad faith, it is necessary to show that the CTM proprietor intended through its registration to appropriate the trade mark of a third party with whom it had contractual (or pre-contractual) relations. A recent Board of Appeal decision (Antoinette van Rossum v. Heinrich Mack) has shown that, if no such relationship exists, a bad faith based cancellation action is likely to fail.

The facts of the case were disputed. However, the Cancellation Division (and the Appeal Board) accepted the following version. In 1981/82, a German company, NPV, developed a new line of cosmetics which it branded Claire Fisher. It obtained a German trade mark registration to protect the mark. In order to advertise the brand it chose Ms. Van Rossum, a Dutch waitress, as the "face" of the brand. As a result, Ms. Van Rossum, became a well-known model who traded under the pseudonym Claire Fisher. In 1983, NPV, who by this time had changed its name to Freshwood, granted the CTM proprietor an exclusive distribution licence agreement for Claire Fisher cosmetics on the German market. Two years later, this licence was extended to markets outside Germany. In 1986 Freshwood assigned its German trade mark registration to the CTM proprietor, although it retained ownership of a related International trade mark registration. In 1995, the CTM proprietor terminated all of its contractual relationships with Freshwood who subsequently went into liquidation (in December 1995). In August 1996, Ms. Van Rossum contacted Heinrich Mack to tell them that she was planning to take over Freshwood's rights in Claire Fisher. On 12th October 1996, the parties met but no agreement was reached. On the same day, Heinrich Mack filed a CTM application for Claire Fisher in Classes 3, 16 and 42, an application that was subsequently granted. In July 2004, Ms. Van Rossum sought to cancel the CTM registration, principally on the ground that it had been filed in bad faith.

Both the Cancellation Division and the Appeal Board rejected the action. Given that there was no relationship between Ms. Van Rossum and the CTM proprietor at the time the CTM application was filed, the latter had no bona fide duty to Ms. Van Rossum at that date. After the termination of its agreements with Freshwood and the liquidation of that company, Heinrich Mack had no reason to feel unjustified in filing the contested CTM. Indeed, the CTM proprietor's ownership of the German trade mark registration for Claire Fisher pointed to the fact that they had the superior trade mark rights in the mark. The Board of Appeal noted that the mere creation or the simple adoption of a name is not a legal source of trade mark rights.

Tequila is a spirit made from the blue agave, which is native to Mexico. It is produced principally in the area surrounding the Mexican town of Tequila which is situated about 40 miles northwest of Guadalajara. It appears that laws in both Mexico and the USA now require tequila to be manufactured exclusively in Mexico.

This position may explain the recent acceptance by OHIM of a CTM application for the collective mark Tequila filed by Consejo Regulador del Tequila (Tequila Regulatory Council) in respect of "Tequila manufactured, protected and classified in accordance with the rules and regulations of the United States of Mexico".

Trade marks come in all shapes and sizes and a CTM application for a rather strange one filed by Volkswagen was recently refused by the OHIM Board of Appeal. The application, which was the CTM designation of an International trade mark registration (no. 878349), claimed a trade mark which was "the silhouette of a motor vehicle appearing in the dark through use of an illuminated white dotted line and other areas of the vehicle that are also luminous".

In their submissions in favour of registration, Volkswagen claimed that the mark showed a distinctive set of headlights as seen at night, a time when this was the only possible way to differentiate between different makes of car.

The Appeal Board were not persuaded. In their view, no consumer would be able to distinguish a car model (or its manufacturer or commercial origin) from the features depicted in the mark's representation. The Board also commented that cars are not bought at night with their headlights on. Whilst this may not be universally true, it is probably fair to say that they are never purchased in the Stygian darkness depicted in Volkswagen's CTM application.