Snippets.....................

A CTM application for the trade mark Bin Ladin has been refused by the OHIM Board of Appeal as contrary to public policy or accepted principles of morality (Article 7(1)(f)) of the CTM Regulation. The applicant, a Swiss company called Falcon Sporting Goods argued that OHIM had already accepted names such as Castro, Mao and Danda (short for the infamous Idi Amin Dada), that the Bin Ladin family, other than the notorious terrorist, had well known commercial connections in Europe and that the identical mark is registered in Switzerland. The Appeal Board were not persuaded, however.

It is reported that Falcon Sporting Goods is owned by Yeslam Bin Ladin, a half brother of Osama. Having apparently abandoned plans to launch a Bin Ladin range of clothing, he has now hit upon the idea of a Yeslam perfume. Yeslam is the subject of a recently filed CTM application in class 3.

The attempted trade mark protection of Bin Ladin was not the only terrorist linked story that we have noted recently. Volkswagen are understandably unhappy about a viral advertisement that appeared on the Internet. Viral ads are generally low cost commercials that appear on-line and are then disseminated by Internet users.

In the Volkswagen case, the advertisement featured a suicide bomber who parks outside a busy café and then proceeds to immolate himself. The “joke” in the advert is that the VW entirely contains the explosion and finally the slogan “Small but tough” appears.

It is reported that Volkswagen are demanding an apology from the two creators of the viral ad, together with undertakings that they will not, in future, infringe VW’s trade marks.

Two recent OHIM Board of Appeal decisions illustrate the difficulty of predicting whether or not trade marks will be found to be confusingly similar under the CTM system.

In the first appeal (Röhr-Bush v Bushboard), the CTM application was for Bush-Röhr and covered goods in Classes 17 and 20 (röhr is German for pipe or tube). It was opposed based on a CTM registration for Bushboard covering identical and similar goods. The marks were found to be similar and the opposition succeeded. According to the Board, “The word ‘bush’ is likely to catch most consumers’ attention since it is a rather familiar surname in today’s politics. As such, it constitutes the most distinctive element of both marks…The fact that the CTM application is composed of an English and a German word, can only be noticed by consumers who understand both languages and…would not strengthen differences between the conflicting marks”.

It should be noted that a stylised form of Bush-Röhr coexists with Bushboard on the CTM Register.

In the second case (The Open University v Adler Modemärkte), a CTM application for Beagle 2 in Classes 18 and 25 was opposed on the basis of German registrations for stylised forms of Eagle covering identical goods.

In allowing the opposition, the Appeal Board decided that the relevant German public would find the marks visually and phonetically similar. The majority of Germans would not understand the different (English) meanings.

It is therefore perhaps a blessing that Neil Armstrong was not a German since, if this had been the case, one of the most famous moments in human history might have been blessed with the statement that “The Beagle has landed”.

This latter appeal did raise one important point of opposition practice, namely the relevant proof of use date for rights in countries where the opposition term follows registration. The CTM application had been published on 7th June 1999. One of the earlier German trade mark registrations relied on had been registered in July 1990, and then opposed. Under German trade mark practice, oppositions are raised after registration. The German opposition proceedings were completed on 22nd July 1994.

The CTM applicant could put the opponent to proof of genuine use of his Eagle mark in Germany, if the relevant date was July 1990, but could not require such proof of use if the relevant date was 22nd July 1994. The Appeal Board found, in line with earlier decisions, that the relevant date was 22nd July 1994, that is the date of completion of the German opposition proceedings. The opponent therefore did not have to establish genuine use in Germany in the five years prior to the publication of the CTM application.

The well known Welsh singer, Tom Jones, has applied to register his name and his image as a trade mark at OHIM. The 64 year old pop idol has applied for a wide range of goods and services, including clothing. Presumably, we can now expect Tom Jones branded women’s underwear, bearing a picture of the balladeer, to be thrown on the stage at future concerts.

When asked whether the protection of image rights through trade marks was now a common occurrence, the singer replied “Well, apparently, it’s not unusual”.

Next, two hunting stories. As many of our readers will know, the UK Government has recently banned fox hunting. During one of the heated debates that took place in Parliament leading up to the ban, a group of young men burst into the chamber of the House of Commons and exchanged pleasantries with MPs and Government ministers. One of these intruders was Otis Ferry, the son of the singer Bryan Ferry.

As if this were not enough law breaking for one day, Otis chose to wear a t-shirt bearing the slogan FCUK Yer Man, an apparent reference to the British Prime Minister, the Reverend Anthony Blair, during his escapade.

This fashion statement did not please the lawyers for French Connection UK, a clothing company that has gained both notoriety and huge sales through its use of the FCUK brand. A company spokesman is quoted as saying that “We are very proud of our logo and take issues like this very seriously”. Others might say that they have been hoisted by their own petard.

The second hunting tale relates to The Quorn Hunt who have been dispatching foxes in Leicestershire for over 300 years. In exemplary fashion, if a little late, the hunt decided to protect their name as a trade mark. They therefore filed a UK trade mark application for a wide variety of country (and city) related goods and services in 7 classes.

The Hunt’s trade mark application was opposed by Marlow Foods, a manufacturer of vegetarian foods and the owner of the earlier trade mark Quorn. The opposition was based on both the similarity of the two marks and sets of goods, (Section 5(2)(b)), as well as the food company’s reputation in the trade mark Quorn (Section 5(3)). In the latter case, Marlow Foods argued that their vegetarian customers would be offended by any association with blood sports.

The opposition succeeded and the Hunt’s application was refused in its entirety, except for a limited range of goods in Class 16. Gerald de Lisle, The Quorn Hunt’s chairman, was quoted as saying that it was bizarre that a 300-year-old institution should be beaten by a 1980s brand name. Welcome to the world of trade marks, Gerald.

An important English High Court decision has recently appeared dealing with the question of estoppel in trade mark cancellation actions. These were the facts. Hormel (the Spam meat people) applied to invalidate a UK trade mark registration for Spambuster in Class 42 in the UK Trade Marks Office. The only ground relied on was Section 5(3), namely that Hormel’s earlier registered mark Spam had a reputation and the use of Spambuster would take unfair advantage of or be detrimental to the distinctive character of Spam. The application to cancel failed. It was not appealed.

Hormel then applied to invalidate the Spambuster registration in the High Court under Sections 3(1)(b), (c) and (d), primarily on the basis that Spambuster was descriptive and non-distinctive for services involving the blocking of spam emails. They also sought to revoke the registration under Section

46(1)(c), on the basis that the mark had become the common name in the trade for the services claimed. Both actions were rejected by Deputy Judge Richard Arnold QC on the following grounds:

• Hormel were now barred from bringing the invalidity action, because of cause of action estoppel. This was the case even though the High Court action was based on different grounds to the Office action. Those grounds could and should have been pleaded in the first action if they were to be relied upon at all.

• For the same reason, both the invalidity action and the revocation action before the High Court were barred as an abuse of process. This decision is particularly tough for Hormel because Mr Arnold went on to consider what would have happened if he hadn’t ruled as he did above. He found, in this theoretical case, that

• The mark Spambuster was not registrable in view of Sections 3(1)(b) and (c), and

• The mark was a common name in the trade for computer programming services by the date of the evocation action (Section 46(1)(c)).

The lesson is therefore clear, until (or unless) overturned by the Court of Appeal: you have one chance to cancel a UK trade mark registration on grounds other than non-use. You must therefore put all grounds and all evidence in that first, one and only, case.

In an unusual, recent UK case (Muhammad Sarmad v Kentucky Fried Chicken), the Appointed Person (Mr Arnold Q.C.) overturned a decision of the UK Trade Marks Registry on the similarity of marks.

Mr Sarmad had applied for the trade mark Kennedy Fried Chicken for takeaway catering services in class 42. The application was opposed on the basis of earlier rights in the trade mark Kentucky Fried Chicken for identical or very similar services. Taking the view that Fried Chicken was descriptive and that the words Kennedy and Kentucky could be distinguished one from the other, the Hearing Officer found that the marks were not similar and therefore dismissed the opposition.

The opponent appealed to the Appointed Person primarily on the grounds that the Hearing Officer had improperly dissected the two marks when comparing them and had failed to assess the likelihood of confusion on the basis of normal and fair use of the mark applied for.

The Appointed Person was persuaded to overturn the Registry’s decision and to refuse the application. He accepted that, for a broad range of the services claimed by both the applicant and the opponent, the term Fried Chicken was not descriptive. This brought the two marks closer together. Given the unsophisticated nature of the average consumer of fast food, there was a potential for visual and phonetic confusion.

Further, although, at present, the applicant ran a single restaurant in London, normal and fair use of his mark could include the creation of a chain of take-away restaurants. Other factors that counted against the applicant were the fact that both marks could be abbreviated to KFC and the (no doubt) coincidence that both marks were used in a red and white colour combination.

A new EU Regulation (No. 1383/2003) which was introduced on 1st July 2004, has simplified the EU national customs procedures under which counterfeit and other goods which infringe intellectual property rights can be intercepted, detained and disposed of.

The definition of “infringing goods” is now broader and encompasses goods which infringe patents, plant variety rights, copyright, design rights, trade marks and protected designations of origin. The means by which such infringing goods can be produced (for example, moulds) are also covered by the broader definition.

For further information on Council Regulation (EC) 1383/2004, contact the Jenkins trade mark department.

Once a CTM registration has been registered for five years, it can be revoked under Article 50(1)(a) of the Regulation if it has not been put to genuine use in the Community in respect of the goods or services registered. During the past few months, the first such non-use revocation actions have been decided by OHIM’s Cancellation Division.

The main point of practice to arise from these decisions is that, according to the Cancellation Division at least, the burden of proving genuine use in a non-use revocation action lies with the CTM proprietor. This practice was established in the Barricade decision (no. 686C) and has since been confirmed in Cayenne (no. 692C), Cullinan (no. 737C) and Hotwired (743C).

This is a very sensible and commercially realistic approach to the non-use revocation issue. It is to be hoped that it is eventually endorsed by both the Boards of Appeal and the ECJ.

By contrast to the above, the onus to revoke a CTM registration on the basis that the mark has become the common name in the trade for the registered goods or services, due to the acts or inactivity of the proprietor (Article 50(1)(c)), lies with the third party making the allegation, see the Cabouchon cancellation decision (no. 340C). In the Cabouchon case, it was also established that a CTM registration could not be cancelled merely because the CTM proprietor had become bankrupt.

Under Article 8(3) of the CTM Regulation, the owner of a trade mark can oppose a CTM application made for that mark by an agent or representative of the trade mark owner.

A Finnish company, Basic Fashion Oy, applied to register the trade mark Cellfood for a variety of goods including dietetic substances in Class 5. The CTM application was opposed by a US company, Nu Science Corporation, who owned the trade mark Cellfood in the US. The background to the dispute was as follows:

• The chief executive of the Finnish trade mark applicant (Mr Vahatalo) was also the managing director of the opponent’s Japanese distributor of Cellfood products.

• The CTM application was filed on 11th May 2000. In December 1999, both Mr Vahatalo and the Vice President of the opponent (Mr Negrete) appeared in a promotional video aimed at marketing Cellfood in Japan.

• In August and September 2000, Mr Vahatalo sought to negotiate a distributorship for Cellfood in Finland and other European countries. However, no agreement was ever reached between the parties.

• In February 2001, the opponent requested that Basic Fashion withdraw the CTM application. This request was refused.

The opposition was rejected. According to the Opposition Division, Article 8(3) of the Regulation only applied to (agent/representative) agreements that extended to some or all of the European Union. Since an agreement covering the EU had never existed in this case, Article 8(3) did not apply.

This poor decision was properly overturned on appeal. The Appeal Board found no reason to limit Article 8(3) to EU based agreements. Such a limited interpretation “would be inadequate in a globalised and integrated economy”.

In the early days of OHIM’s operation, Kirkbi A/S (the owners of the trade mark Lego) had managed to obtain a CTM registration (no. 107029) for the shape and colour of one of their red Lego bricks.

This registration has now been declared invalid, in so far as it claimed construction toys, by OHIM’s Cancellation Division (Mega Bloks v Kirkbi). Following the reasoning set out in the ECJ’s ruling in the Philips three-headed case, the mark claimed was found to consist exclusively of the shape of goods which is necessary to obtain a technical result (Article 7(1)(e)(ii)).

The up-market fashion house Burberry was founded in 1856. Its fortunes rose when its founder, Thomas Burberry, invented gabardine, a breathable, waterproof fabric. This fabric was successfully used by Roald Amundsen during his successful expedition to the South Pole in 1911. The famous Burberry check was first introduced, as a lining, to the trenchcoat in 1924. This coat achieved immortality when worn by Humphrey Bogart in Casablanca. Royal recognition of the success – and cachet – of the brand was given, first by the Queen in 1955 and then by the Prince of Wales in 1989. By the Millennium, the Burberry name and check had become one of the icons of the aristocratic and monied classes.

Chavs are neither aristocratic nor, in most cases, monied. The term has recently been coined in the UK to describe under-educated, jobless young people. For reasons which are not entirely clear, however, chavs (and chavettes) have adopted the famous Burberry check as their preferred means of identification. This has had a significant (downward) effect on Burberry’s sales over the past Christmas period in the UK. It appears that it is acceptable to sell a product based on aspirations until the wrong type of person begins to aspire.

Whether the Chav interest is just a passing phase or is a sign that the brand has moved irreversibly downmarket remains to be seen. We assume that the Queen and The Prince of Wales are watching the situation with interest.