Snippets

In a recent decision, the CFI has confirmed that, according to its wellestablished practice, the average Spanish consumer is incapable of differentiating between two quite different trade marks.

The case (Hoya KK v Indo Internacional) involved a CTM application for the trade mark Amplitude covering “eyeglasses; lenses and frames for eyeglasses; sunglasses and contact lenses”. The application was opposed on the basis of an earlier Spanish trade mark registration for a stylised form of the word Amply coloured turquoise-blue covering identical or very similar goods.

The CFI found that the average Spanish consumer, paying an average degree of attention to the matter, would find the two marks confusing. Taking its usual, highly formalistic, approach, it decided that:

—The marks were visually similar given that the suffix –tude was insignificant and that the beginning of the marks would determine the consumer’s visual perception of them;

—Contrary to the finding of the Board of Appeal, the marks did however have quite clear phonetic differences; and

—Although neither mark was a Spanish word, they were both quite close to Spanish words, namely amplitud, meaning breadth, width, fullness or spaciousness, and amplio, meaning extensive or large. It followed that both marks belonged to the same semantic family. Further, in relation to the goods claimed, the average Spanish consumer would note that all the (Spanish) words associated with the common root (ampli-) of the two marks allude to intensification, magnification, space or extensiveness, qualities that are relevant to the goods concerned.

The CFI therefore confirmed the refusal of the CTM application. Can it really be true that the average Spanish consumer is so lacking in discernment or observation that he or she could not distinguish between Amply (written in turquoise blue) and Amplitude eyeglasses and sunglasses? One mark being five letters long and containing two syllables, the other being 9 letters long and containing three syllables? One mark being very close to a Spanish word (amplitud), the other not being close at all to another Spanish word (amplio)? One ending –litude, the other –ly? The writer finds this alleged inability to differentiate between quite distinct trade marks hard to accept. In the writer’s opinion, the problem does not lie with the Spanish consumer, but with the unrealistic and formalistic manner in which both OHIM and the CFI/ECJ compare trade marks. The process is established in case law and requires a stepwise approach leading to a final, global assessment which is significantly coloured by the earlier steps. What it lacks is common sense, together with an acknowledgement that, in increasingly crowded markets, European consumers are now quite sophisticated and perfectly capable of telling the difference between quite similar trade marks, let alone marks as far apart as Amplitude and Amply.

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Another example of the special treatment given to Spanish trade mark owners under CTM practice can be seen in the Ekabe International v Ebro Puleva opposition decision given by the Court of First Instance in October last year.

The CTM application was for a combination mark that consisted of the phrase Omega 3 (written in green letters) together with a device which consisted of a red heart and part of a rainbow. The application covered margarine. The CTM application was opposed on the basis of an earlier Spanish trade mark registration for Puleva-Omega 3 covering, amongst other goods, edible oils and fats.

The applicant argued that the term Omega 3 was descriptive in relation to margarines, being a well-known polyunsaturated fatty acid found in such spreads. They backed this up with printouts from various websites, attesting to the generic nature of the phrase. (Ed. Note: For confirmation of this position go to http://es.wikipedia.org and type in Omega 3).

In spite of this evidence, the Opposition Division and the Board of Appeal both decided that the marks were confusingly similar and that the CTM application should be rejected. According to the Board, “It is unlikely that the average Spanish consumer will be aware of the term “Omega 3” as referring to polyunsaturates whose nutritional value helps to prevent cardiovascular diseases”.

The applicant appealed to the CFI. The Court confirmed the rejection of the CTM application. The CFI ruled that the green Omega 3 element was the dominant part of the mark applied for. By contrast, the rainbow and heart device had little distinctive character. It followed that, if the arguments put forward by the applicant regarding the descriptiveness of the phrase Omega-3 were correct, the CTM application would have to be returned to the Examining Division to be rejected on absolute grounds. As this was not in the interests of procedural efficiency, the case should be decided on the basis that Omega-3 was not descriptive. If that were assumed, then Omega-3 was the dominant feature of the mark applied for and was equal in dominance to Puleva in the earlier mark. The degree of similarity between the marks was therefore such that, bearing in mind the identity of the goods, a likelihood of confusion was inevitable.

This case follows a long line of OHIM cases that have reached the CFI or ECJ where a Spanish company, having monopolised an ordinary, descriptive word taken from another European language on the Spanish trade mark register has then successfully enforced that right against a CTM applicant. We can now add Omega 3 to Donut, Matratzen and Limonchelo. In the writer’s view, it is difficult to see how such a position can be maintained in a European Community that is meant to require the free movement of goods and services across national boundaries and across language barriers.

Having said that, the CTM applicant did not do itself any favours in the Omega 3 case. It did not disclaim Omega 3 in its mark to emphasise the descriptiveness point. Further, it only produced the most compelling evidence of descriptiveness of the phrase Omega 3 in Spain (in the form of Omega 3 products on the Spanish market, Spanish newspaper articles and relevant Spanish Court decisions) on appeal to the CFI. It is now well established that, in appeals relating to CTM applications, the CFI will not consider evidence produced for the first time before the European Court.

In spite of all this, however, this decision should have gone the other way. Omega 3 is clearly a descriptive term in Spain in respect of margarines. The CTM applied for is and was distinctive, the device element providing enough value to get it home. (If it were not, then there must be many thousands of invalid CTM registrations.) The dominant features of the two marks are the heart and rainbow device in the CTM application and Puleva in the Spanish registration.

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Alan Bond is a well-known Australian businessman whose rise and fall has been well-documented. Starting out in property development, he became extremely successful (and rich). This allowed him to bankroll a number of Australian attempts in the 1970s and 1980s to wrest the America’s Cup yachting trophy from the firm grip of the USA, who had held the Cup continuously since 1851. Eventually, in 1983, a Bond-backed Australian crew won the Cup in dramatic circumstances.

After that, Mr. Bond moved into the world of the media, and this proved to be his undoing. In 1987, he paid in the region of $1 billion dollars for Kerry Packer’s Channel Nine television network, only to sell it back to Packer at a quarter of that price three years later, when Bond’s business empire collapsed. Mr. Bond’s fall from grace was complete when he was declared bankrupt and jailed for fraud.

All entrepreneurs have a permanent sense of self-worth, however, even convicted fraudsters. It is therefore not entirely surprising that, when a company called Information 360 Limited applied to register the domain names alanbond.net and alanbond.tv, Mr. Bond objected under the Uniform Domain Name Dispute Resolution Policy (UDRP). Unfortunately, Mr. Bond’s run of bad luck continued when his objections were rejected. The WIPO panel noted that Mr. Bond did not own a trade mark registration for his name, nor had he shown use of his name in trade or commerce (to establish common law rights). In the panel’s view, merely being well-known and thereby having a famous name did not equate to owning unregistered trade mark rights. On this basis, the panel ruled in favour of Information 360.

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In a decision (Koipe Corporacion v Aceites del Sur) which might offer help to brand owners in their fight against look-alike products, the CFI found a likelihood of confusion between two labels which had completely different word marks but quite similar device elements.

Aceites del Sur filed CTM application no. 236588 for a label which consisted of the phrase La Española together with a picture of a woman sitting in an olive grove. The goods at issue were edible oils and fats in Class 29, especially olive oil. The opponent relied on CTM no. 338681 and Spanish trade mark registrations for a label consisting of the phrase Aceite De Oliva (Spanish for olive oil), the word mark Carbonell and a picture of a different woman sitting in a different olive grove.

Both the OHIM Opposition Division and the Appeal Board rejected the opposition, finding that the figurative elements had only a weak distinctive character and that therefore the comparison should focus on the word elements. As these were completely different, there was no likelihood of confusion.

The opponent appealed to the CFI who overturned the Board of Appeal’s decision and rejected the CTM. From the evidence put before it of the Spanish olive oil market, the Court concluded that the figurative element of a woman, found in both marks, was unusual for olive oil products sold in Spain. It followed, in the Court’s opinion, that the device aspect of the opponent’s mark did not have a weak distinctive character.

By contrast, the evidence before the CFI, which pointed to the widespread use of the term La Española for food products in Spain, led the Court to find that that phrase, which featured in the applicant’s mark, did have a weak distinctive character. Bearing the above in mind, together with the identity of the goods and the speed at which a consumer was likely to choose an olive oil product in a Spanish supermarket, the Court decided that there was a likelihood of confusion.

Although an English Court would be extremely unlikely to reach the same decision as the CFI in relation to the similarity of the marks involved in this CTM opposition, this decision does offer hope to brand owners wishing to place limits on the notorious lookalike activities of U.K. supermarkets. Certainly, unless this decision is overturned by the ECJ, it will become a precedent that should cause the supermarkets to be slightly more cautious when imitating successful, branded food and drink products.

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Two recent opposition decisions by the UK-IPO show that, where there are clear conceptual differences between two trade marks, even minor visual and/or phonetic differences can lead to a finding that there is no likelihood of confusion.

In the first case (Lois Levy v Amor KG), the marks were DiViNE (stylised, with two gemstones as dots on the letters i), and DIVINA and the goods were jewellery. The hearing officer accepted that such goods would be bought with care, whatever their price, and that therefore even minor differences in the respective marks should avoid confusion. She then noted the visual and phonetic differences between the two marks, particularly the latter, but was most taken by the conceptual differences. Whilst the earlier mark was an invented word with no meaning, although close to the girl’s name Davina, the mark applied for was a combination of a well-known English word with gemstone devices, which would bring to mind a jewel which would give great pleasure. This significant conceptual difference, when combined with the less significant visual and phonetic differences, was enough to get the application home. The opposition was rejected.

The second opposition (Pelgar International v FMC Corporation) involved quite different goods, namely preparations for destroying vermin in Class 5. The marks at issue were Brigand (the mark applied for) and Brigade (the earlier mark). Once again, the hearing officer took the view that, given the nature of the goods claimed, the average consumer, who could be a member of the general public, would take great care when making a purchase. Turning to the marks, the hearing officer accepted that there was a high degree of visual and phonetic similarity, but he found that they had completely different and wellknown meanings. Relying on ECJ case law (Phillips-Van Heusen v Pash Textilvertrieb) which established that different conceptual meanings could be enough to counteract significant visual and phonetic similarities, the hearing officer found for the trade mark applicant and rejected the opposition.

These decisions should be contrasted with some of the CFI and ECJ decisions discussed elsewhere in this issue of Make Your Mark. Even taking into account the question of language, it is submitted that the European Court often gives consumers in some EU countries little credit for being able to differentiate between quite different marks. Given the number of products that now vie for EU consumers’ attention, this seems to the writer to be an entirely unrealistic view of what can quite happily coexist, without any possibility of confusion, both on the trade mark register and in the market and is a view that serves to inhibit perfectly legitimate competition.

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Rather astonishingly, to the writer at least, Formula One Licensing B.V., the licensing arm of the Formula One Administration Group, owns CTM registrations for both Formula 1 and Grand Prix covering a wide range of goods and services, including the arrangement of sporting events in Class 41. In neither case was any evidence of acquired distinctiveness required to obtain the registration.

The licensing company recently attempted to rely on these trade mark rights before the UK-IPO to prevent the registration of two conflicting marks, March Formula One and March Grand Prix, both of which had been filed for motor racing related services in Class 35, and motor racing related merchandise in Classes 9, 16 and 25. In both cases, the hearing officer was rather sceptical about the distinctiveness of the earlier marks, even though the CTM registrations enjoyed a presumption of validity, which was backed up by evidence of use of the two marks provided by the opponent. In the case of Formula 1, the hearing officer rather hesitantly decided that, on the evidence before him, the mark was distinctive of the opponent and that therefore the opposition succeeded. In the case of Grand Prix, however, not even the presumption of validity could get the opponent to the finishing line. The hearing officer found that, except for a narrow range of Class 16 goods (paper, cardboard and goods made from these materials), the mark Grand Prix could only be viewed as having the minimum level of distinctiveness. On that basis, he found that, except for the Class 16 goods mentioned above, the distinctive character of the trade mark March Grand Prix lay in the word March, the words Grand Prix merely creating the desired association with the sport. It followed that the two marks were not confusingly similar and that the application was allowed to proceed for all the goods and services claimed, other than paper, cardboard and goods made from these materials.

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In another round in the Budweiser title fight between the U.S. slugger, Anheuser-Busch, and the Czech contender, Budejovicky Budvar, the American pugilist emerged victorious on a technical knockout.

Both companies owned U.K. trade mark registrations for Budweiser covering beer, the later Czech-owned right having proceeded to grant on 19th May 2000 under the old 1938 Trade Marks Act’s honest concurrent user provisions.

One day before the Czech-owned registration had been granted for five years, namely on 18th May 2005, Anheuser-Busch came in with a solid blow to the solar plexus when it applied to invalidate Budvar’s registration on the basis of its prior U.K. right. The Czech battler responded gamely by pointing to its use of the trade mark Budweiser on Czech beer in the U.K. since 1974 and then claiming foul in the form of the American prize fighter’s acquiescence.

Under the Marquess of Queensbury’s rules that govern registered trade marks in the U.K. (otherwise known as the Trade Marks Act 1994), a registered trade mark proprietor (in this case Anheuser-Busch), who acquiesces in the use of a later registered trade mark for a continuous period of five years loses the right to invalidate the later registration.

The decision that the referee, hearing officer Mike Foley, had to make was, when does the five year period of acquiescence begin? Was it from the date of application or from the date of grant? In spite of good shots being laid on by each party’s respective Counsel, Mr. Foley gave this round to the U.S. scrapper. He decided that the statutory period of acquiescence only began at the date of grant, that the Czech fighter’s registration had therefore not been registered for five years on the date the invalidation action was filed, and it followed that acquiescence did not apply.

Seeing its rival stagger, Anheuser-Busch moved in for the kill. Unlike the 1938 Act, under which it was possible for identical marks to coexist on the trade mark register for identical goods subject to certain conditions or limitations being imposed, provided this reflected the reality of the market, the 1994 Act allows no such common-sense decisions. Under the 1994 Act, if an application to invalidate a trade mark registration is made under Section 5(1), requiring identity of marks and goods, then the action must succeed. This was the position here and so the referee had no choice but to stop the fight to save the plucky Budvar from taking more punishment, and give the decision, on technical grounds, to the American giant.

No doubt there are many more trade mark fights to look forward to between these very experienced bruisers before they reach retirement. As Shakespeare once (nearly) wrote, this is truly a snarling Buds affray.

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One of the major problems for the CTM Office is the independence of the various Appeal Boards which allows them to go their own way on important issues that have not been the subject of ECJ rulings. This has been highlighted again in two recently reported opposition decisions.

In the first case (Mastellone Hnos v M.F. Bonants Beheer), the CTM application was for the trade mark Serenissima and the goods at issue were wines. The opponent owned an earlier CTM registration for La Serenisima (stylised) covering foodstuffs in Classes 29 and 30. The Opposition Division found that the goods were dissimilar and rejected the opposition on that basis. The opponent appealed.

The First Board of Appeal noted that the opponent’s earlier CTM registration covered vinegar in Class 30 which could be viewed as having some relation to wine (e.g. wine vinegar). OHIM had therefore been wrong not to consider the similarity (or otherwise) of the signs and apply a global assessment. The Board therefore sent the case back to the Opposition Division for further assessment.

In the second opposition (Johnson & Johnson v Avena), the CTM application was for the trade mark Avena and covered retail services at large. It was opposed on the basis of an earlier German trade mark registration for Aveeno covering goods in Classes 3 and 5. The Opposition Division rejected the opposition primarily because the retail services claimed were found to be dissimilar to the earlier Class 3 and 5 goods. The opponent appealed.

The Fourth Board of Appeal confirmed the Opposition Division’s findings on the dissimilarity of the goods and, unlike the First Board, decided that it was not necessary to assess the similarity of the two signs. Based on the differences between the retail services applied for and the earlier Class 3 and 5 goods, it rejected the opposition.

The creation of the Grand Board of Appeal by the CTM Office, a body given the task of overseeing the activities of the Boards of Appeal, was meant to ensure a consistency of practice in CTM appeals. However, the Grand Board appears to meet only rarely and seldom addresses key issues such as whether the Boards of Appeal or Opposition Division should always consider the similarity of signs in CTM oppositions.

(Ed. Note: In a CFI appeal (El Corte Inglés v. Juan Bolaños Sabri) involving the trade marks Pira ÑAM logo (CTM application) and Piranha (earlier Spanish trade mark registration) and Class 25 and Class 18 goods (respectively), the Court ruled that the First Board of Appeal was wrong to reject the opposition simply on the basis that the goods were dissimilar without conducting an assessment of the similarity of the two marks. Perhaps this will force a consistent approach on the Boards even if the Grand Board does not).

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Fianna Fail (translated variously as Soldiers of Destiny or Soldiers of Ireland) is Ireland’s largest political party. It was founded in 1926 by Eamon de Valera during the ferment that followed the creation of the Irish Free State in 1921 and the Irish Civil War. Fianna Fail has formed seven Irish governments since its foundation and has been in power for much of Ireland’s short, independent history.

For reasons best known to himself, a Mr. Patrick Melly decided to file a U.K. trade mark application for Fianna Fail covering fresh Irish food products in Class 31, as well as lemons and bananas which may not be native to Ireland. The application also covered business administration and similar services in Class 35.

The Irish political party filed an opposition claiming that the application was filed in bad faith under Section 3(6), its use for the Class 35 services would be deceptive under Section 3(3)(b), its use would infringe the opponent’s common law rights under Section 5(4)(a), and the mark was identical to the opponent’s wellknown trade mark under Section 56.

The opposition failed on all grounds and the application was allowed to proceed. In relation to bad faith, the hearing officer found that the political party had never exploited its name in a commercial sense in Ireland, let alone the U.K. The applicant was therefore not depriving the opponents of their name or their right to use it for political ends. Turning to the question of deceptiveness, the opponent had argued that, when supplied under the Fianna Fail banner, the U.K. consumer of the Class 35 services would expect them to be either of a political nature or in some way affiliated with the political party. Once again, the hearing officer was persuaded to dismiss the ground simply because political parties were not known for offering business administration and similar services. In relation to Fianna Fail’s claim to common law rights, the hearing officer noted that being known was not the same as possessing goodwill. The political party had provided no evidence pointing towards the commercial exploitation of its name in the U.K. No evidence had been provided of publications sent to the U.K. or of fund raising in this country or even of a single U.K.-based member of the party.

Finally, the hearing officer, whilst accepting that the name Fianna Fail was well-known in Ireland, had no hesitation in deciding that the evidence came nowhere near establishing that the Irish political party’s name was a well-known trade mark for the purposes of Section 56 of the 1994 Act.

If it is any consolation to Fianna Fail, the writer has noted that the same applicant, Mr. Patrick Melly, also applied to register the name of another Irish political party, Fine Gael, although only for Class 35 services. Once again the application was opposed, in this case by Fine Gael, and once again the opposition failed.

Just prior to going to press, it was reported that both of these decisions have been overturned on appeal. The Appointed Person decided that both applications had been filed in bad faith. A full report will appear in the next issue.

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Two recent U.K. oppositions involving Pucci trade marks for pet-related goods led to different outcomes and showed the importance of filing adequate evidence in proceedings before the IPO.

In the first case (Caroline Kavanagh v Emilio Pucci), the mark applied for was a stylised form of the word Pucci, with the letter “i” in the form of a bone. The goods claimed were materials for the grooming of pets and similar pet products in Class 3 and leather goods for pets and similar goods in Class 18.

The application was opposed on a number of relative grounds by the Italian fashion house, Emilio Pucci S.R.L., on the basis of its earlier U.K. trade mark registration for Emilio Pucci covering women’s outerclothing. The opponent also relied on its goodwill and reputation in its mark acquired through use in the U.K. since at least the 1970s. In 2003, its U.K. sales were £835,000.

The hearing officer first considered the similarity of the two marks and found them not to be similar. He took the view that, whilst the opponent’s mark would be seen as a man’s name, the applicant’s mark would be seen as a play on the word “pooch”, a slang word for a dog. In addition, the hearing officer decided that the applicant’s goods were dissimilar to those of the opponent and that the opponent’s evidence was inadequate to establish a reputation in its mark in the U.K. The hearing officer therefore rejected the opposition. As a parting shot, he commented that even if the opponent had shown the necessary reputation he did not believe that the use of Pucci (stylised) for pet-related products would “affect consumers’ economic behaviour or damage the opponent’s mark by tarnishing or blurring”.

This decision was confirmed on appeal by the Appointed Person (Mr. Arnold QC). In the second opposition, the applicant was Pucci Petwear (a company owned by Caroline Kavanagh, the applicant in the opposition discussed above), whilst the opponent was again Emilio Pucci.

In this case, the trade mark application was for a Pucci designer petwear logo, in which there was no bone in the word Pucci. The goods at issue were identification tags, feeding bowls, beds and pet carriers for animals in Classes 6, 20 and 21. The opponent once again relied on its earlier U.K. trade mark registration for Emilio Pucci in Class 25, as well as its goodwill and reputation in that mark in the U.K. Although the sales figures for the Emilio Pucci brand remained the same as in the first opposition (with one year’s sales added), in this second opposition the opponent filed much more evidence of goodwill and reputation in both the marks Emilio Pucci and Pucci in the U.K., including the presence of the mark in numerous glossy women’s magazines published in this country, information on the famous women who had worn Emilio Pucci clothing (for example Jacqueline Onassis and Marilyn Monroe), evidence that the names of well-known fashion designers tended to be shortened to their surnames and evidence that fashion brands are often stretched into products for pets.

Whilst this was not enough to persuade the (different) hearing officer that the opponent could claim a reputation in its registered mark Emilio Pucci for dilution purposes under Section 5(3) of the 1994 Trade Marks Act, it was enough for him to find that the opponent had goodwill in the trade mark Pucci for women’s clothing. Bearing in mind the possibility of brand-stretching into the pet domain and the possibility that the opponent’s goodwill could be damaged if there were failings in the applicant’s products, the hearing officer decided that the use of Pucci Petwear’s mark would be likely to substantially damage the opponent’s goodwill in its trade mark Pucci. He therefore rejected the application under Section 5(4)(a) of the Trade Marks Act 1994.

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In a rather intriguing decision, the Court of First Instance has recently refused a CTM application for the trade mark WinDVD Creator covering specific types of computer software in Class 9.

The court noted the well-known and descriptive English-language meanings of “DVD” and “Creator” in relation to the goods claimed. However, as far as the element “Win” was concerned, it relied on the definition found in the on-line dictionary, www.acronymfinder.com, which states that “Win” is an abbreviation of Windows, Microsoft’s operating system. In the Court’s view, it followed that the relevant E.U. public would immediately see that the mark referred to software that allowed DVDs to be created using the Windows operating system. On this basis, the mark was rejected as non-distinctive and descriptive in relation to the Class 9 goods claimed (Articles 7(1)(b) and 7(1) (c) CTM Regulation).

The writer finds this decision intriguing, in particular the rejection of the mark because it contained, in part, an abbreviation of a registered trade mark (Windows). The assumption must be that Win has become a generic term because of Microsoft’s failure or inability to protect it. By contrast, the abbreviated forms of well-known marks such as Mercedes (Merc) and Budweiser (Bud) are protected as registered trade marks. Presumably, this would mean that third party applications for marks such as MercTyre Repairer or BudBar Services would be accepted as inherently distinctive, or would they? We leave it to the reader to consider the point.

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OHIM operates a rather liberal practice when it comes to the registrability of geographical names. However, it would be wrong to assume that all such names are accepted for registration. A recently reported invalidation action confirms this.

The case (Aalborg Engineering v Aalborg Industries) involved an application to invalidate a CTM registration for Aalborg covering boilers in Class 7 and related goods and services in Classes 9, 11, 37 and 42. Aalborg is the fourth largest town in Denmark with a population of about 165,000.

The Cancellation Division rejected the action on the basis that the word Aalborg would not be perceived as a geographical indication but rather as an arbitrary and fanciful term when used in relation to the goods and services claimed. The applicant to invalidate appealed.

The Board of Appeal noted the following key points of evidence:

—Aalborg should be considered well-known as a geographical designation in Denmark and will also be known by some relevant consumers outside Denmark;

—The Danish Supreme Court had rejected a Danish trade mark application for Aalborg covering boilers in Classes 7 and 11;

—A Danish trade organisation had provided a declaration stating that, in Denmark, Aalborg was a well-known trade mark belonging to the CTM proprietor; and

—A Danish on-line encyclopaedia referred to the iron and metal industry situated in the town of Aalborg.

Taking all of this into account, the Board of Appeal decided that Aalborg designated a place that may be associated by relevant consumers with most of the goods and services covered by the CTM registration, either now or in the future. There was therefore a public interest in Denmark in keeping Aalborg available for use by others, particularly those operating in the stainless steel industry. On this basis they found the CTM registration invalid under Article 7(1)(c) of the CTM Regulation in relation to all of the goods and services claimed except a narrow range of Class 42 services.

In reaching this decision, the Board rejected the proposition that the names of all places above a certain size where it is possible to produce the goods in question, should be unregistrable as CTMs. It was necessary to assess the geographical name by reference both to the nature of the goods/services concerned (and to any present or future association of the place with those goods/services) and by reference to the understanding which relevant consumers have of the name, including its degree of familiarity.

The Aalborg story may not yet be over. The case has been remitted to the Cancellation Division to consider the evidence of acquired distinctiveness claimed by the CTM proprietor.

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A number of recent oppositions before the UK-IPO have shown that, in cases where the opponent can establish either an existing or a previous business relationship with the applicant, then it is possible to run a successful claim for bad faith. By contrast, it has been confirmed that a pleading of bad faith is unlikely to prevent the registration of a broad specification of goods/services. The first case involved an application for the trade mark Pink Ribbon for, amongst other goods, printed matter and printed publications in Class 16. Pink ribbons and the phrase Pink Ribbon have both become closely associated with breast cancer awareness and charity work in the breast cancer area and the application at issue was filed by three such charities, Breakthrough Breast Cancer, Breast Cancer Care and Breast Cancer Campaign. The opposition was filed by Gerard Dugdill, the owner of a publishing company, Blue Moon Publishing. Mr. Dugdill’s company, together with its successors in title had published an annual Pink Ribbon magazine for four years prior to the filing date of the opposed application. This magazine was published to coincide with Breast Cancer Awareness Month (October each year). There was evidence that the first edition of the magazine had been published in collaboration with the three joint applicants and that they had remained aware of its continued annual publication.

Although the three charities argued strongly that the phrase Pink Ribbon was closely associated with Breast Cancer charities and that any goodwill in the phrase must belong to them, the tribunal found otherwise. In the hearing officer’s view, the goodwill in the Pink Ribbon publication resided with the opponent and, in view of that fact, and the fact that the applicants were aware of the continued existence of the opponent’s magazine, the U.K. trade mark application had been filed in bad faith in so far as it covered printed matter and printed publications.

In the second case (Francisco Toju Da’Silva v Travelocity.Com), the mark opposed was Travelocity International Magazine filed for magazines in Class 16, as well as advertising and publishing services in Classes 35 and 41. The opponent owned an earlier CTM registration for the trade mark Travelocity in Classes 9, 38 and 39 and established a substantial goodwill and reputation in the mark in respect of travel services, but only in the U.K.

Although the hearing officer did not rule on the objections raised by the opponent on relative grounds (similarity of marks and goods/services under Section 5(2) (b) of the Trade Marks Act 1994 and dilution under Section 5(3)), it is likely that he would have found against the opponent. In the case of the dilution objection, in particular, the opponent had relied on a CTM registration but had only established a local U.K., rather than a regional E.U., reputation. It was fortunate for the opponent, therefore, that the bad faith objection succeeded. In this case, the hearing officer accepted that the opponent had a substantial goodwill and reputation in the mark Travelocity in the U.K., and noted that the opponent had claimed that Mr. Da’Silva was aware of this goodwill and reputation when he filed his trade mark application. Although this claim does not appear to have been backed up by any evidence, the applicant did not deny it. Further, he did not explain how he chose his mark. On this basis, the hearing officer found, as a question of fact, that Mr. Da’Silva had been aware of the opponent’s goodwill and reputation in the trade mark Travelocity at the relevant date. The hearing officer therefore decided that the trade mark application had been made in bad faith in respect of all the goods and services applied for.

In the next case, a South African company, Alien Systems & Technologies, applied to register the trade mark Pyrogen in respect of fire-extinguishing apparatus. The opponent was a Malaysian company, Pyrogen Technologies.

The opponent had sold its Pyrogen fire extinguishers in the U.K. through a U.K. subsidiary, Pyrogen Ltd, from 1998 to 2002, at which point supplies to the U.K. ceased, the U.K. company being wound up in 2004. During the period 1998 to 2002, the U.K. subsidiary had supplied the South African applicant company with Pyrogen branded products for sale in Africa. It was some time after supplies of Pyrogen from the U.K. had dried up that Alien Systems decided that no one owned trade mark rights in the mark in the U.K. any longer and it decided to register the mark itself in June 2005.

Unfortunately for the applicant, and apparently unknown to it, Pyrogen Technologies had resumed supplies of Pyrogen fire extinguishers to the U.K. as early as February 2004, to a company called Pyroshield Ltd.

The hearing officer decided that the trade mark application had been filed in bad faith. He found, on the facts, that the South African company had been an agent or representative of the parent Malaysian company and not just a distributor appointed by its U.K. subsidiary. He also decided that simple enquiries would have established that the opponent had not abandoned its interest in the mark in the U.K. He therefore rejected the trade mark application. Rather intriguingly, a CTM application filed by Pyrogen Technologies for the trade mark Pyrogen & Device has been opposed by both Alien Systems and Pyroshield, who were said to be the new distributor of Pyrogen fire extinguishers in the U.K.

In two more oppositions based on bad faith, In 2 Garden Products v P.W. Circuits and Global Baby Marketing v National Childbirth Trust, the unsuccessful applicant and the opponent had both been involved in failed joint ventures. In both cases, the trade mark application filed by only one party to the joint venture was rejected under Section 3(6) of the 1994 Act.

Turning to the role of a bad faith objection when faced with an unjustifiably broad specification of goods and services, it is a cornerstone of U.K. trade mark law that the applicant must state that he has a bona fide intention to use his mark in relation to the goods and services applied for or state that he is in fact using the mark in respect of them at the date of application. If the applicant does not have such use or an intention to use, then he has made the statement in bad faith and the application is invalid under Section 3(6). It was thought that these provisions might prevent the acceptance of broad specifications of goods and services filed by a U.K. applicant, but this appears to be increasingly unlikely. The latest nail in the coffin for this theory is the recently reported opposition between Future SM TM and Future Publishing. The applicant, Future SM TM, applied to register the trade mark Future for goods and services (class headings) in Classes 1 to 8, 10 to 34, 39 and 40. There was no evidence that the applicant traded in the U.K. or even intended to do so, except by way of licensing its trade mark rights. Even in such a case, the hearing officer could not bring himself to make a bad faith finding. He ruled that the private interests of the applicant to seek to develop his business ideas through licensing of IP rights, outweighed the public interest in refusing to grant unjustifiably wide monopolies to companies or individuals.

Finally, elsewhere in this issue we refer to the extraordinary award of costs by the UK-IPO in the Music Choice opposition and cancellation case. The hearing officer sought to justify the level of costs awarded (£112,000) to a large degree on the basis that the challenger had maintained bad faith grounds of objection after it had become clear, to the hearing officer at least, that it had no hope of succeeding. This salutary tale shows that, although, in the right circumstances bad faith objections can be run successfully before the UK-IPO, they should always be viewed with caution and only maintained if there is a real prospect of victory.

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Under Section 60 of the Trade Marks Act 1994, the proprietor of a trade mark in a Convention country can apply to rectify the U.K. Trade Mark Register so as to substitute its name for that of an agent or representative who has registered that mark in the U.K. without consent. Under Section 55 of the Act, a Convention country is defined as a country, other than the U.K., which is a party to the Paris Convention.

Thailand is not a member of the Paris Convention. However, it is a member of the World Trade Organisation (WTO) and a signatory to the TRIPS Agreement. Further, because of this it is implementing Articles 1-12 and 19 of the Paris Convention. On this basis, the UK-IPO has recently ruled (Checker Leather v Sribhan Jacob Company) that a Thai company can use the provisions of Section 60 to regain ownership of a U.K. trade mark registration filed by its sole U.K. agent and distributor.

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Another avenue open to the Thai proprietor in the above case would have been to seek a declaration of invalidity of the agent’s U.K. trade mark registration. There is a similar provision in the CTM Regulation (Article 8(3)), except that the right of redress is not limited to proprietors based in Convention countries. In a recently reported invalidation action before OHIM (Laurence E. Gordon and Gayle Gordon v Sotorock Holding), two U.S. individuals successfully employed this ground for invalidity.

The mark at issue was G&S (stylised), registered for goods in Class 25. The applicants to invalidate owned a U.S. trade mark registration for a similar G&S mark and provided evidence that the CTM proprietor had been their distributor in Europe for a number of years, at least until the business relationship between the parties deteriorated in the late 1990s.

The Cancellation Division decided that the term “agent” in Article 8(3) of the CTM Regulation should be interpreted broadly and, on that basis, covered the relationship between the Gordons and Sotorock Holding. Further, it accepted that the CTM did not have to be identical with the mark registered in the U.S. by the applicants to invalidate, but could exhibit slight modifications, additions or deletions which did not substantially affect its distinctiveness. This finding was important because Sotorock’s CTM registration covered G&S in a stylised form, while the Gordons’ U.S. trade mark registration protected G&S in plain lettering. Finally, the goods of the two registrations were essentially identical.

On the basis of these facts, the Cancellation Division upheld the Gordons’ invalidity action under Article 8(3) of the CTM Regulation and cancelled Sotorock’s CTM.