Lynne Truss's book Eats, Shoots & Leaves is a paean to the importance of punctuation. Those who doubt this should consider the difference in meaning between Shakespeare's famous line "What would you with the King?" and the slightly amended but significantly less Shakespearean "What? Would you? With the King?". Then there's the full stop. It should be used with care. Compare, for example, "Not getting any better. Come at once.". With the even more desperate "Not getting any. Better come at once.".
However, it is the humble comma that often causes the most linguistic chaos. Consider how the feminist call to arms "A woman: without her, man is nothing" would fall on deaf ears if it were written "A woman, without her man, is nothing", whilst Duncan's plea for help in Macbeth "Go, get him surgeons" would look like medical retribution if written "Go get him, surgeons". As for the difference between "Now I must go and get on, my lover" and "Now I must go and get on my lover" or between "What is this thing called Love?" and "What is this thing called, Love?", well, it's probably best to draw the metaphorical net curtains.
The writer was reminded of Ms Truss's Zero Tolerance Approach to Punctuation whilst reading a recent case before the UK Trade Mark Office. The UK mobile telephone company O2 Holdings had applied to register the trade mark We're Better, Connected for a wide variety of goods and services in eleven classes including the core Classes 9 and 38. The UK Examiner objected to the mark as non-distinctive (Section 3(1)(b) of the 1994 Trade Marks Act). The applicant requested a hearing and, at that hearing, argued that the phrase applied for was grammatically incorrect and meaningless. It was also suggested that the use and the position of the comma rendered the mark impenetrable or, at most, allusive.
The Hearing Officer, whilst recognising the difference that the presence of the comma made to the meaning of the phrase, was still not persuaded to allow the application. In the Hearing Officer's view, if the relevant public did notice the comma (which was not certain), they would still see the mark as denoting the benefits of being connected to others by phone, travel, entertainment or other means. The phrase ("We're Better, Connected") referred to a value or benefit to the relevant consumer seeking to purchase goods or services which facilitated communication or connection. On this basis, the trade mark application was rejected in respect of goods and services that related to communication/connection but was allowed to proceed in relation to goods and services that were deemed not to fall into that category, for example advertising, insurance, building, construction, education and sporting activities.
Baxter of California was one of the earliest cosmetic, sorry grooming, products developed exclusively for men. For those of us whose grooming is achieved exclusively with carbolic soap, it comes as a bit of a surprise to learn that the American entrepreneur Baxter Finlay first launched this range in the USA in the mid 1960s.
No doubt having kept his skin in pristine condition by daily use of moisturising cream, Mr Finlay decided in 2000 to leave the rough, tough world of men's grooming products and sold his company to Mr Jean-Pierre Mastey.
It will probably come as no surprise to our female, British readers that men in this country lag behind their American cousins in the area of skincare, not to mention personal hygiene generally. This can be gauged by the fact that it was only in 2002 that a UK businessman, Mr Simon Hubbard, approached Mr Mastey seeking an exclusive distributorship for the Baxter of California range in the UK. An agreement was reached between the parties and it came into force in January 2003.
Three years later, in mid 2006, however, Mr Mastey decided to switch the UK distribution rights to another British company, Carter and Bond. This did not please Mr Hubbard. In response he formed a company called Baxter of California Limited and then, on the same day (7 February 2007), his new company applied to register a combination of the phrase Baxter of California and a griffin device. This UK trade mark application was duly granted in June 2008. Two weeks after obtaining his trade mark registration, Mr Hubbard wrote to Mr Mastey threatening, on the one hand, to sue the US company for trade mark infringement but offering, on the other hand, to negotiate a trade mark licence. The world of men's anti-ageing products is nothing if not cut-throat, however. Within a month of receiving Mr Hubbard's threat, Mr Mastey had applied to invalidate his company's UK trade mark registration. The grounds relied on were
i) The UK trade mark application had been made in bad faith.
ii) Where a UK trade mark application is filed by an agent or representative of the proprietor of the mark in a Convention country, the proprietor may apply to substitute his name as the owner of the subsequent registered trade mark (Section 60(3)(b)).
In relation to the Section 60 ground of invalidation, Mr Mastey relied on his ownership of a US trade mark registration for a virtually identical composite mark covering goods in class 3; that is on his proprietorship of the mark in a Convention country (US). Unfortunately for Mr Mastey, the Hearing Officer decided that, in order to succeed under this ground, the applicant to invalidate also had to show that the original UK trade mark application had been filed by someone who was an agent or representative at the date of filing. On the evidence before the UK Office, it was clear that, at the filing date (7 February 2007), neither Mr Hubbard nor his company (Baxter of California Ltd) was still Mr Mastey's UK distributor. On this basis, the Section 60 ground therefore failed.
Turning to the bad faith allegation, the Hearing Officer had no difficulty in finding that Mr Hubbard was aware of Mr Mastey's rights in the Baxter of California trade mark and of his continuing use of the mark in the UK after mid-2006 (when Mr Hubbard's distributorship was terminated). Since Mr Hubbard did not even bother to refute Mr Mastey's allegation that his sole reason for registering the mark in the UK was to extort money, it was a simple matter for the Hearing Officer to find that the original UK trade mark application had been made in bad faith and to invalidate the subsequent trade mark registration under Section 3(6) of the 1994 Act.
It is strange to note that Mr Mastey has still not sought to protect his trade mark in the UK/CTM and that Mr Hubbard is still in possession of the company name Baxter of California Ltd.
Under Article 15(1)(a) of the CTM Regulation it is possible to resist a non-use revocation action if the mark in use is not identical to the mark as registered but differs "in elements which do not alter the distinctive character" of the registered mark. This provision was considered by the General Court in a recent case (Atlas Transport GmbH v Alfred Hartmann) involving two German transport companies.
Atlas Transport, a Duesseldorf based company, owned a CTM registration for the trade mark Atlas Transport covering goods transport services that was granted in 1998. Mr Hartmann, who was the chairman of a competing transport company, Atlas Reederei, had applied to register his company's name as a CTM in 2005. Atlas Transport opposed Mr Hartmann's CTM application and, in response, Mr Hartmann applied to revoke Atlas Transport's earlier trade mark rights relied on in the opposition, one of which was their CTM registration for Atlas Transport, on the ground of non-use.
As evidence of use, Atlas Transport primarily put forward seventeen invoices dated within the relevant five year period which showed their (Atlas Transport's) involvement in the organisation of the transport of goods around the world, by land, sea and air. However, these invoices bore a number of different signs. Fifteen of them were headed by the trade mark The Duesseldorfer which contained the letters ATC within the letter O (of Duesseldorfer) and had the words Atlas Transport (in bold but also in smaller lettering) beneath it. The remaining two relevant invoices bore just the company name Atlas Transport-Gesellschaft.
Before the Cancellation Division, Atlas Transport's proof of genuine use was deemed adequate to resist the revocation action. Mr Hartmann appealed and the Fourth Board of Appeal overturned that decision. In the Board's opinion, the word Duesseldorfer was the dominant element in the mark that appeared in fifteen of the invoices. Further, the relevant public would perceive the three signs at the top of these invoices as a whole rather than as separate elements. Even if one of the signs (The Duesseldorfer) had limited, or even no, distinctiveness, it could affect the overall impression created. The nature of that (overall) impression would depend on the graphical representation of the combined mark. On the basis of this rationale, the Board of Appeal found that the use of Atlas Transport that had been made by the CTM proprietor during the relevant five year period on these fifteen invoices did differ in elements which altered the distinctive character of the registered mark.
As far as the remaining two invoices were concerned (which were headed by only Atlas Transport-Gesellschaft), the Board considered that this use could be considered genuine use of the trade mark Atlas Transport. However, these invoices were dated 4 August 2003 and 7 August 2003 and they both related to services being provided to the same customer in Germany. In the Board's view, this was not sufficient evidence of use to resist Mr Hartmann's action to revoke the CTM. It followed from the above reasoning that, in the Board's view, no genuine use of the registered mark had been shown in the EU and they therefore proceeded to revoke the CTM registration.
Atlas Transport appealed to the General Court who reversed the Board's decision. According to the Court:
• On the fifteen invoices that were headed The Duesseldorfer, the positions of the various elements, as well as their different colours and fonts, meant that they would not be seen as a single entity but as separate signs.
• The fact that Atlas Transport was used in some (15) cases with additional elements and in another (2) cases without them could lead to the conclusion that the distinctive character of the registered mark was not altered.
• Since the CTM proprietor was based in the German city of Duesseldorf, the sign The Duesseldorfer would be seen as an indication of geographical origin and therefore would have a limited distinctive character.
• The element Gesellschaft has no distinctive character and, as used, does not alter the distinctive character of Atlas Transport.
• It followed that all of the seventeen invoices dated within the relevant period could be considered when reviewing the genuine use of the trade mark Atlas Transport in the EU.
This case shows that when subsidiary brands are used as part of a combination mark, this use can, in some cases at least, be accepted as genuine use of the subsidiary brand. The case also illustrates the fact that it is not necessary to file shed loads of evidence to resist a non-use revocation action before OHIM. In the Atlas case, seventeen invoices bearing the registered trade mark were considered sufficient.
The above CTM revocation action should be compared with a UK trade mark opposition (Jason Wright v Transport for London; O-126-10) in which the opponent was asked to prove genuine use of its mark during the opposition proceedings.
Mr Wright applied to register the trade mark tfl for search engine/website/domain name related services in Classes 42 and 45. Transport for London opposed this UK trade mark application on the basis of its earlier UK trade mark registration for TFL covering computer software and telecoms related goods in Classes 9 and 37. The earlier right had been registered for over five years by the time Mr Wright's trade mark application was published and so the proprietor was requested to prove use of TFL in the UK during the relevant period.
In response, Transport for London were able to establish use of the domain name tfl.gov.uk, as well as their use of the variant TfL in advertising. The Hearing Officer, having reviewed the evidence of use, came to the following conclusions:
• Relying on a CTM Board of Appeal decision (Telefonica Moviles v Orbseal; R 710/2002-2), in which use of the domain name tsm.es was found to be inadequate to save a CTM registration for TSM, the Hearing Officer decided that use of tfl.gov.uk was use that altered the distinctive character of the registered mark TFL. The opponent's use (of tfl.gov.uk) placed TFL in an "instantly recognisable, but different context altogether, from randomly chosen letters, namely that of a domain name". The Hearing Officer also took the view that his decision was reinforced to a certain extent by the fact that the UK Trade Mark Office would not accept TFL and tfl.gov.uk in the same trade mark application as a series of marks.
• Turning to Transport for London's use of TfL in advertising, the Hearing Officer found that the use of the lower case letter f (rather than the upper case letter F in the registered mark) did not alter the distinctive character of that (registered) mark. Once again, comfort was taken from an earlier CTM case (Devinlec Développement v T.I.M.E. ART; T-147/03) in which the CFI decided that differences in the typeface and the stylisation of the mark in use did not prevent such use from constituting genuine use of the CTM mark.
It followed that the opponents were found to have established use of TFL in respect of public transport and related services, such as information and pre-paid ticketing. Unfortunately for the opponent, none of these services were covered by their UK trade mark registration. The Hearing Officer therefore had no difficulty in concluding that no genuine use of TFL in relation to the registered goods and services had been established and rejecting the opposition in so far as it relied on the earlier trade mark registration (Section 5(2)(a) of the 1994 Trade Marks Act).
A similar question on the use of the mark as registered also arose in another recent UK trade mark opposition (Khan International v S&B Herba Food; O-88-10). In that case, the use of the trade mark RICE KING for Class 30 goods was not deemed adequate to sustain a UK trade mark registration for RICE KING plus a device of a crown and chinese characters.
A recent decision of the CTM Opposition Division (Reno Schuhcentrum v Centre des Technologies de l'information de l'Etat) illustrates the significant and unfair advantage that the owners of German trade mark rights can have over the owners of other EU trade mark rights, both in opposition proceedings before OHIM and in other ways.
The facts of the case were straightforward. The CTM applicant applied for the trade mark ReNo in respect of a variety of services in Classes 35 and 41. The application was opposed on the basis of an earlier German trade mark registration for Reno covering similar services also in Classes 35 and 41. Since the earlier German trade mark right was not subject to proof of use provisions and since the opposition was uncontested (by the applicant), the Opposition Division had no difficulty in upholding the opposition and rejecting the CTM application.
What could be simpler? But here's the rub. The German trade mark registration relied on by the opponent is the subject of opposition proceedings which, in Germany, are brought after registration. I know, I brought those proceedings. Furthermore, they are in respect of the Class 41 services relied on in the CTM opposition. The Opposition Division should certainly have been aware of that because it is clearly stated at the German Trade Mark Office's website.
So this is the position of the owner of an opposed German trade mark registration before OHIM.
• He can bring successful opposition proceedings based on the opposed right.
• In view of decisions made by the ECJ, if his opposed German trade mark right is eventually granted, the five year non-use grace period starts, not from the original date of registration, but from the (usually much later) date that the opposition decision becomes final.
In addition, the owner of an opposed German trade mark registration can bring trade mark infringement proceedings whilst the opposition is pending.
By contrast, the owner of an opposed UK trade mark application finds himself in a very different position. First, any CTM opposition based on the opposed application would be suspended pending the outcome of the opposition. Second, he would be unable to bring trade mark infringement proceedings until the application was granted (Section 9(3)(a) of the 1994 Trade Marks Act).
This significant anomaly needs to be addressed, given that EU trade mark law and practice is meant to be harmonised. By far the best way to do it would be to make it mandatory that all trade mark oppositions in the EU must be brought after publication but prior to grant. This would put all EU trade mark applicants on an equal footing. If the lobbying power of the German Trade Mark Office is too much for the EU authorities to withstand, however, then, at the very least, it should not be possible to enforce opposed German trade mark registrations, in either opposition or infringement proceedings, until the opposition has been resolved.
We reported in the last edition of Make Your Mark that the Benelux IP Office (BIPO) had decided in the Onel case (Leno Merken v Hagelkruis Beheer) that use of a trade mark protected by a CTM registration in just one Member State of the European Union (in the Onel case, in the Netherlands) was insufficient to maintain the validity of that CTM registration, once the five year non-use grace period had elapsed.
It is now reported that the Hungarian Patent Office has also broken ranks and made a decision in an opposition based on this new approach. The case involved a Hungarian trade mark application for the trade mark City Hotel & Design in Class 43. This application was opposed by a UK company on the basis of two CTM registrations for trade marks containing the phrase City Inn. One of these earlier CTM registrations was subject to the Hungarian Trade Mark Act's proof of use provisions and the Hungarian trade mark applicant duly put the CTM proprietor (City Inn Ltd) to proof of genuine use of its mark in the EU. In response City Inn submitted evidence of its use of the CTM mark. However, this use was in the UK only.
The Hungarian Trade Mark Office found that such limited use was inadequate to sustain the opponent's earlier CTM. According to the Hungarian Office:
• Given the growth of the European Union during the past 16 years or so, it would be contrary to common sense and to sensible economic considerations to allow use of a trade mark in one EU Member State to sustain a CTM throughout the EU (twenty seven Member States).
• The conversion provisions of the CTM Regulation (now Article 112(2)(a)) would not make sense if genuine use in one Member State constituted genuine use in the Community.
• It would better match the original objectives of the CTM Regulation if inter EU state trade were required to meet the genuine use provisions.
• The scale of use that would be sufficient to maintain a CTM should be determined on a case by case basis. A small enterprise should not be expected to show the same level of commercial activity as a multi-national company in order to show genuine use of a CTM.
• A Hungarian trade mark applicant seeking protection of its mark in Hungary should not be prevented from doing so by another party who owns a potentially vulnerable (to non-use revocation) CTM and who only uses that CTM mark in one EU Member State.
Eventually this crucial issue will have to be decided by the ECJ and much, not least the survival of some national trade mark offices, will rest on that decision. In the writer's view, however, a requirement of inter-state trade in the EU in order to meet the CTM Regulation's genuine use provisions appears to make both legal and, more importantly, commercial sense. It would encourage commercial activity in the EU which after all should be one of the principal aims of EU trade mark law and it would encourage companies with only narrow interests in the EU to consider the use of the national trade mark route rather than the CTM. This, in turn, might lead to a reversal of the relative decline of a number of EU national trade mark offices. Further, if this rule were combined, throughout the EU, with a practice that only allowed narrow specifications of goods and services to be registered at the outset and the need for a clear intention to use the mark at the date of filing, we would really be getting somewhere.
A terrific battle is developing at OHIM over the ownership of marks containing the phrase mpay.
It all started in 2002 when the Austrian company mPAY24 GmbH applied to register the trade mark MPAY24 for a variety of goods and services including financial and telecommunications services. The mark was rejected as non-distinctive by the CTM Examiner (Article 7(1)(b) CTMR) on the basis that the letter m was an accepted abbreviation of mobile phone and so the mark as a whole was a clear reference to all day payments made via a mobile phone. The applicant appealed and the Appeal Board reversed the decision primarily because it did not accept that the letter m was, at that time, an established abbreviation for mobile phone.
Just over a year later, a Slovenian company, Ultra d.o.o. applied to register an M PAY Logo for a range of goods and services, again including Class 36 and 38 services. In spite of the limited distinctiveness of the device element in the mark, it was accepted as distinctive by the Office, but, once published, it was opposed by mPAY24. The Opposition Division allowed the opposition in its entirety but, when Ultra appealed, the First Board of Appeal partially annulled that decision. The Board reasoned that, when comparing two marks of weak distinctive character, a likelihood of confusion can only exist if the two sets of goods/services are identical or if the two marks are identical or very similar. On this basis, they rejected mPAY24's opposition in relation to a variety of goods and services in classes 9, 35, 36, 37 and 42 including mobile phone related payments and tracking. Given that these services lie at the heart of mPAY24's commercial activities, they, in turn, appealed to the General Court.
The Court reversed the Board's decision and reinstated the original, total rejection of Ultra's CTM application. In doing so, the Court ruled that the Board's test for comparing marks of weak distinctiveness was too narrow. An assessment of the distinctive character of the earlier registered mark was only part of the process. It was also necessary to assess the degree of similarity between both the two signs at issue as well as the two sets of goods/services. It would be a surprise if this case were not appealed further to the ECJ.
Whilst all of this was going on, both parties sought to optimise their trade mark position. mPAY24 filed a CTM application in March 2006 for MPAY (word) covering a variety of goods and services including financial and telecommunications services. Astonishingly, this application was accepted by the Office in spite of the fact that
• A CTM application for Mpay filed by Ultra in December 2003 for a wide variety of goods and services, which encompassed the later mPAY24 goods and services, had been refused by OHIM, and
• Third party observations had been filed by Ultra pointing to the well established use of the letter m as an abbreviation for mobile by March 2006.
Predictably, this CTM application (for MPAY) was opposed by Ultra.
Ultra, by contrast, had not only filed two additional CTM applications for stylised forms of MPAY, both of which were opposed by mPAY24, they also sought to cancel mPAY24's original (2002 dated) CTM registration for MPAY24. Before the Cancellation Division their application (to cancel) was rejected. The Cancellation Division took the view that no convincing evidence had been provided showing that the letter m was an accepted abbreviation for mobile or mobile phone at the relevant date, namely the filing date of the CTM application (4 March 2002), (see Alcon v Dr. Robert Winzer Pharma, C-192/03P). Once again Ultra appealed and once again the appeal went to the First Board of Appeal for a decision. As before, the Board ruled in favour of Ultra. Without giving any reasons, they found that the letter m was an accepted abbreviation of mobile (or mobile phone) and that, when combined with the phrase PAY24, the descriptive meaning of the registered mark would be immediately apparent to relevant consumers. The Board therefore cancelled mPAY24's CTM registration under Articles 7(1)(b) and (c) of the CTM Regulation. Given the lack of reasoning in the Board's decision, this cancellation action is almost certain to find its way to the General Court.
This is an intriguing case which, even if it may not have the legs of the Budweiser dispute, has clearly got some way to go yet. There is no doubt that the letter m is now an accepted abbreviation for mobile (or mobile phone). The UK Trade Mark Office recognises this in their Trade Mark Practice Manual (Addendum). The Manual, in relation to the letter m, states "The letter is increasingly being used as an abbreviation for "mobile" (as in mobile phone) and terms such as m-banking, m-payments and m-commerce are used to describe services provided via a mobile phone". It is also recognised at mPAY24's website (www.mpay24.com) where the company is described as "specialising in e- and m- commerce solutions for a decade".
The difficulty for Ultra, in their crucial cancellation action against mPAY24's original CTM registration (for MPAY24), is to prove that the letter m meant mobile back in March 2002. This is not so easy to do and may eventually prove to be Ultra's Achilles' heel. Perhaps a more likely ground for the cancellation of mPAY24's trade mark right is Article 51(1)(b) of the CTM Regulation under which a CTM registration can be cancelled "If, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered;".
One thing is clear from the above, the examination process at OHIM remains as inconsistent as ever. Ultra's CTM application dated December 2003 for Mpay was refused at a time that the mark might well have been distinctive. By contrast, mPAY24's CTM application dated March 2006 for MPAY was accepted at a time when the meaning of the letter m (as an abbreviation for mobile) had clearly become well established. See, for example, the Oxford Dictionary of English (2nd Revised Edition, 2005) in which the letter m is defined as "prefix denoting commercial activity conducted electronically by means of mobile phone (e.g. m-commerce).
Speaking of inconsistency in examination practice, a recent decision of the General Court illustrates the point perfectly. A German company, Actega Terra, applied to register the trade mark Terraeffekt matt & gloss in respect of "lacquers, in particular for the graphics industry, none for use in the building area" in Class 2. The CTM Examiner refused the mark as non-distinctive and descriptive (Articles 7(1)(b) and (c) of the CTM Regulation). Actega appealed, but the First Board of Appeal agreed with the Examiner, finding that the relevant German speaking public (professionals working in the printing industry) would understand Terraeffekt as meaning that the lacquer sold would produce an "earth effect" and would further understand the descriptive meanings of the additional words matt and gloss, even though the word gloss was not a German word.
Actega appealed again (to the General Court) and lost again. The Court found that the relevant German speaking public would immediately and without further reflection, make a direct and specific link between the mark and the function of a lacquer.
The writer makes no strong argument in favour of the registrability of this mark, given the well-known meanings of the phrases terra alba, terracotta and terra-rossa, although a phrase that combines an Italian (or Latin) word (Terra), the German words (Effekt and Matt) and an English word (Gloss) would seem to have something going for it, even amongst the German printing community. That is not the issue here.
The issue is rather this. The CTM Office has already accepted Terraeffekt for registration in relation to the precise goods covered by the later CTM application for Terraeffekt matt & gloss. Further, the Office has also accepted the following marks in Class 2, namely Terra Coatings, Terracopper, Terragreen, Terrawet and Terraprint. It has also accepted the trade mark Fired Earth for lacquers and similar products. Not only that; the German Trade Mark Office has registered not only Terraeffekt but also Terraeffekt matt & gloss for lacquers of the type of interest to Actega.
This case therefore not only illustrates the lack of consistency in examination practice, both internally at OHIM and between OHIM and national trade mark offices, but also an important point of OHIM practice. If you apply for a mark of borderline distinctiveness at the CTM Office and you get a lucky break during the examination process, with an Examiner who accepts the mark, do not push your luck by filing for a second CTM application covering a minor variation of the original mark, thinking that the earlier CTM registration will hold you in good stead. It won't. But if you do choose to ignore this golden rule, on no account appeal against the second CTM Examiner's rejection of your later CTM application (in the face of the existing CTM registration). Simply take your medicine, accept that you were fortunate first time around and quietly withdraw the second CTM application. This is what Actega and their advisors should have done in the above case. Now they have an adverse Court decision against them which casts a giant shadow over their original CTM registration for Terraeffekt.
William Shakespeare, the English poet and playwright, was born in Stratford-upon-Avon in 1564. He died aged 51 in 1616. During his relatively brief life, Shakespeare wrote nearly 40 plays, as well as numerous poems, including 154 sonnets. Since his death, Shakespeare has become widely regarded as the greatest writer in the English language. His reputation has been maintained, indeed enhanced, by the Royal Shakespeare Company (RSC), a major British theatre company founded in 1879 and located primarily in Shakespeare's birthplace, Stratford.
Little is known of Shakespeare's private life, his physical appearance and religious beliefs, for example, being shrouded in mystery; although his marriage to Anne Hathaway is well chronicled. What has emerged from recent research however is that the playwright may have had a drink problem.
I suppose the clues were always there to be seen in his writing. First, there was Hamlet's famous soliloquy "To beer, or not to beer, that is the question", as well as the Danish Prince's demand that Ophelia should "Get thee to a brewery". Then one remembers Mark Antony's clever manipulation of the mob in Julius Caesar "Friends, Romans, Countrymen, the drinks are on me". This is not to mention Portia's defence of Antonio's rashness in the Merchant of Venice with the ringing "The quality of Murphys can't be blamed". Add to this early drafts of plays such as "The Taming of the Brew", "The Carling Buds of May" and "Tight As Andronicus", titles that were all eventually changed at the insistence of his teetotal wife, and the writer's difficulties can clearly be seen.
It is now believed that the issue came to a dramatic head when Shakespeare, on entering his local hostelry, The King Beer, was greeted by the barman with the immortal line "Oi, Shakespeare, you're barred". This not only put the playwright on the road to recovery, it also inadvertently led him to becoming widely known as the Barred of Avon.
Given this background, it is perhaps not entirely surprising that an Austrian company, Jackson International Trading, has been seeking to monopolise the phrase Royal Shakespeare for alcoholic beverages in the EU. At present they own (at least) two CTM registrations, one CTM application and one International (UK) trade mark registration for Royal Shakespeare marks in the relevant classes (32 and 33). The Royal Shakespeare Company has taken a rather puritanical approach to these rights and decided that there should be no more (Royal Shakespeare) cakes and ale, or, at least, none produced by the Austrian company. They have therefore opposed the CTM application and applied to cancel one of the CTM registrations.
In the cancellation action, the CTM at issue protected the trade mark Royal Shakespeare in respect of goods and services in classes 32, 33 and 43. Jackson filed this CTM ten years ago (in August 2000) and it was granted in October 2003. The CTM was not opposed by the RSC.
Three years later however, the RSC did seek to invalidate the Austrian company's CTM registration. Taking their lead from Othello
"But he that filches from me my good name, Robs me of that which not enriches him, And makes me poor indeed".
they relied principally on the threat of dilution of Royal Shakespeare by Jackson's use of that mark for the goods and services claimed (Article 8(5) CTMR). The Cancellation Division decided that the RSC's case was Much Ado About Nothing and rejected it. They found that the CTM proprietor's use of Royal Shakespeare was not likely to tarnish or establish an association with the RSC's narrow reputation in "theatre productions". Undaunted, the RSC decided that now was the time to "Stiffen the sinews, summon up the blood" "Disguise fair nature with hard-favour'd rage"and, as Henry V had before them, cried"God for Harry, England, and Saint George".
Having done that, they appealed. The First Board of Appeal reversed the Cancellation Division's decision. Taking a different view on the extent and breadth of the RSC's reputation in Royal Shakespeare that had been established by the evidence, the Appeal Board found that there was a strong likelihood that the CTM proprietor's use of the mark would "free ride on the RSC's immense success and reputation in the UK". The Appeal Board reached this conclusion in the face of an earlier UK Trade Mark Office opposition decision in which the Hearing Officer sided with the CTM Cancellation Division's view of things in relation to the RSC's reputation (and, on that basis, rejected the RSC's opposition in the UK).
Jackson has now appealed this adverse Appeal Board decision to the General Court. No doubt both sides will approach the case with a sense of optimism. Rather like the camping shop in the North of England which uses the following slogan during its end of year sales,
"Now is the winter of our discount tents,
Make glorious summer with this son of York".
In a recent decision of the General Court (CM Capital Markets v Carbon Capital Markets; T-563/08) involving two marks containing the same descriptive phrase, the Court came to the correct decision by an unnecessarily circuitous route.
The CTM applicant applied to register the trade mark Carbon Capital Markets in relation to a broad range of Class 36 services including "capital investments". The application was opposed on the basis of an earlier CTM registration for Capital Markets & CM Device covering identical and similar services.
The Opposition Division and the Appeal Board both rejected the opposition on the basis that the expression "Capital Markets" is generic in relation to financial services and the relevant public is highly attentive and well informed. The CTM applicant appealed to the Court.
The Court found that the two marks were visually dissimilar, but had a certain phonetic similarity. They then decided that the relevant EU consumer would be familiar with basic English financial terminology. Having made that assumption, they then turned it on its head by ruling that the two marks had no conceptual similarity. Taking all of this into account (as well as the identity of the two sets of services), and making a global assessment, the Court rejected the appeal (and thereby the opposition).
This ruling should be contrasted with an earlier General Court case (Bayern Innovator v Life Sciences Partners; T-413/07) in which two marks, both containing the equally non-distinctive phrase Life Science(s), were found to be confusingly similar in respect of Class 36 services. In that earlier case, the General Court reached the wrong decision for the wrong reasons. At least, in the Carbon Capital Markets case, the correct decision was made.
However, the whole process of dealing with CTM marks that contain descriptive elements would be made much easier if OHIM were to meet its obligations under Article 37(2) of the CTM Regulation and require disclaimers to be made. This would have meant that both of the marks at issue in the Carbon Capital Markets case would have been accepted with a disclaimer to the non-distinctive phrase "Capital Markets". On that basis, this common, disclaimed element would have been discounted when comparing the two marks. This would have lead to the inevitable conclusion, given that the remaining elements of the two marks are clearly distinguishable, that there is no likelihood of confusion.
It is submitted that a more rigorous examination practice at OHIM involving the enforcement of the disclaimer provisions in the CTM Regulation, would significantly reduce the number of oppositions that are brought before the Office.
Couture Tech, the holding company for trade mark rights owned by the Russian fashion designer Denis Simachev, applied to register the coat of arms of the Soviet Union as a CTM for goods and services in Classes 3, 14, 18, 23, 26 and 43. The coat of arms included a hammer and sickle, a red star and the call to arms "Workers of the World, Unite" in all of the languages of the 15 states that made up the former USSR.
The CTM Examiner objected to the mark under Article 7(1)(f) CTMR on the ground that its registration would be contrary to public policy or to accepted principles of morality. The CTM applicant appealed. The Second Board of Appeal maintained the objection. It turns out that both Hungary and Latvia have laws banning the use and the public display of this symbol of the Soviet Union. Even though the combined population of these two Eastern European countries is only about 2.5% of the total EU population, it was sufficient for the ground of objection to exist in such a small part of the EU for it to be sustained.
Regular readers of Make Your Mark will not be surprised to learn that this Soviet Union coat of arms is already registered by Couture Tech as a CTM for related goods in Classes 16, 24 and 25. This registration was described by the Board of Appeal as a "mistake". It is also one reason no doubt why Mr. Simachev's company has appealed the rejection of his later CTM application to the General Court.
Two cases before the General Court illustrate the breadth of protection accorded to geographical indications in the European Union.
In the first case (Felix Muños Arraiza v Consejo Regulador De La Denominación De Origen Calificada Rioja; T-138/09), Mr. Arraiza, the principal of the Spanish company Vinagrerias Riojanas, filed a CTM application for the trade mark Riojavina covering a wide variety of goods and services in Classes 29, 30 and 35, including vinegar and services, including retail services, relating to vinegar.
This CTM application was opposed by the local Spanish agency responsible for the quality of Rioja wines on the basis inter alia of a Community collective mark (CTM 226118) for a Rioja Denominacion Origen label protecting wine.
The evidence showed that the CTM applicant's company owned a Spanish trade mark registration for Riojavina covering vinegars and that they had been selling Riojavina vinegars in Spain for over 50 years.
In spite of this, both the Opposition Division and the Board of Appeal found that Riojavina and the Community collective mark were highly similar, whilst wine had a low degree of similarity to vinegar and related Class 35 services. On a global assessment, Mr. Arraiza's CTM application was therefore refused for vinegar and related services, but accepted for the remaining Class 29 and 30 goods and Class 35 services.
Given the background to his CTM application, and given the fact that his large vinegar producing company is based in the Spanish province of La Rioja, it is perhaps not surprising that Mr. Arraiza appealed to the General Court. In his appeal, in addition to the facts set out above, he also noted that
• In an earlier General Court decision involving Rioja wine (Royal Feitoria; T-501/04), the Court found that port wine and Rioja had only a low degree of similarity; and
• There were a number of CTM registrations for marks containing Rioja and covering vinegar already registered, including a CTM registration for Vinegrerías Riojanas label.
It was all to no avail. The General Court maintained the part refusal of Mr. Arraiza's CTM application. According to the Court, the Spanish registration for Riojavina and its use in Spain in respect of vinegars for over 50 years "by no means proves that there is no likelihood of confusion on the part of Spanish consumers as to the commercial origin of the vinegar". Since this Court generally assumes that Spanish consumers are very prone to confusion when purchasing everyday goods, this is a rather surprising comment. One might have thought that at least a few misunderstandings as to the origin of Riojavina vinegar might have come to light in Spain over a period of half a century.
The Court made a rather more reasonable point however when it commented that the relevant consumer was not restricted to Spain but encompassed consumers throughout the EU.
It will be interesting to see whether Mr. Arraiza's sense of injustice is keen enough to persuade him to appeal to the ECJ and perhaps, more interestingly, whether sales of his company's Riojavina vinegar will be challenged in the Courts of EU countries other than Spain.
In the other recent case involving a geographical indication (Abadia Retuerta v OHIM; T-237/08), the CTM applicant had sought to protect the trade mark Cuvee Palomar for wines. The CTM Examiner had raised an objection under Article 7(1)(j) of the CTM Regulation. Under that Article, trade marks for wines that contain a geographical indication are objectionable if the wines are not produced in that geographical area. The Examiner reasoned as follows:
- That the mark applied for was similar to el Palomar, a Spanish community situated in the area covered by the protected geographical indication Valencia;
- Since the applicable Spanish provisions indicate that the protection of Valencia (for wines) extends to the protection of sub-regions and local administrative areas, including el Palomar, and since the wines sold under the Cuvee Palomar mark did not come from el Palomar, the mark was objectionable.
The CTM applicant appealed, but the Board of Appeal maintained the objection. According to the Board, it was not necessary, in order to maintain an objection under Article 7(1)(j) CTMR, for the relevant EU public to be deceived as to the origin of the wine. It was enough that Cuvee Palomar was not produced in the el Palomar area.
Abadia Retuerta appealed to the General Court. However, the Court found itself constrained by the wording and the purpose of the TRIPS agreement and rejected the appeal. In the Court's view, Member States are free to protect the names of small localities so as to designate wines produced in that locality. When this happens, the name cannot be used to designate wines that are produced outside that locality. Since el Palomar was a geographical indication for wines, the trade mark Cuvee Palomar must be rejected under Article 7(1)(j), given that the Cuvee Palomar wines were produced outside the designated area. The fact that Cuvee Palomar came from an estate called Pago Palomar was, according to the Court, irrelevant. Equally irrelevant were the facts that el Palomar was unknown either to the EU general public or to the relevant consumer of wine and that el Palomar was not only a place in Spain but also in other parts of the world in particular Buenos Aires.
The writer was always under the impression that the EU rules on geographical indications and designations of origin were put in place to protect French producers of food and drink from competition. This absurd decision of the General Court shows that such protectionism extends beyond France. El Palomar is essentially a village with a population of about 600 people. It has no reputation for producing wine. On what possible commercial or public interest basis should the EU authorities be allowed to prevent the registration and use of Cuvee Palomar by a wine producer in another part of Spain? The fact that Cuvee El Palomar, Cuvee Palomar label and Pago Palomar are already registered as CTMs for wine by Abadia Retuerta, the same company owns a Spanish trade mark registration for Cuvee El Palomar dated 1997, that Palomar Creek is a CTM registration for wines owned by Lidl, that Cuvee el Palomar, Cuvee Palomar and Palomar Creek wines have been sold in the EU for a number of years, that the Palomar vineyard has existed on the Retuerta estate since the 19th century and that the geographical indication Valencia was only protected by the Spanish authorities in 2000 simply confirms the Alice In Wonderland nature of this General Court decision.
When two companies share the same house mark, difficulties can often arise. These difficulties are often resolved by a trade mark coexistence agreement. The care that needs to be exercised when drafting such an agreement and the weather eye that should be kept on the future were both illustrated by a recent UK Court case (Omega Engineering v Omega; 2010 EWHC 1211 (Ch)).
The US engineering company Omega Engineering and the Swiss watch maker Omega SA entered into a trade mark coexistence agreement in the early 1980s, under which different fields of registration and use of the trade mark Omega were agreed.
Under the crucial, and disputed, clause of the agreement Omega SA agreed not to object to the registration and use of Omega by Omega Engineering in relation to the following goods (amongst others) ""Instruments and apparatus intended for a scientific or industrial application in measuring, signalling, checking, displaying or recording heat or temperature (including such having provision to display the time of day" (the Engineering goods).
Times change and so do commercial interests. By 2007, Omega Engineering had decided that the constraints of operating in relation to their normal Class 9 area of goods could no longer be accepted. They therefore filed a UK trade mark application for Omega in respect of the Engineering goods, but in Class 14, the class that the Swiss watchmaker clearly believed was its exclusive fiefdom.
Omega SA opposed the UK trade mark application on the basis of its earlier rights in Omega in Class 14. Omega Engineering argued that the terms of the Agreement meant that Omega SA had consented to their (Engineering's) registration and use of Omega for the Engineering goods, not only in Class 9 but also in Class 14. Under UK Trade Mark Law (Section 5(5) of the Trade Marks Act 1994), such consent overcomes any later objection that the person consenting might raise.
The UK Trade Mark Office agreed with Engineering and rejected Omega SA's opposition. The Hearing Officer would not accept that, on a proper construction, their consent only extended to goods in Class 9.
Omega SA appealed, but the appeal was rejected. In the High Court's judgement, the Agreement between the two Omegas was concerned with how the two companies would use the trade mark Omega in the market. It would therefore not make sense to interpret the meaning of the Engineering goods by reference to the rather artificial, if administratively convenient, Nice classification of goods and services.
This decision should be contrasted with the Court of First Instance's earlier decision (Omega SA v Omega Engineering; T-90/05) where Engineering successfully opposed a CTM application filed by Omega SA for the trade mark Omega in, amongst others, Classes, 9 and 42.
In that opposition, the Court decided, without any reasoning, that the coexistence Agreement was irrelevant to the assessment of the likelihood of confusion. Further, OHIM had argued that it could not be bound by the provisions of a private agreement whatever its terms might be. This was their general position at the time. Being OHIM of course that position is not universally applied. In an opposition between British Sky Broadcasting and Vortex (R1167/2006-1), the First Board of Appeal fully considered the CTM applicant's argument that a coexistence agreement between the parties prevented the opponent from opposing the application. The Board reviewed the Agreement, interpreted it and then decided that the opponent could bring its opposition. In that case, at least, a desire to reach the correct decision outweighed bureaucratic convenience. It is submitted that all OHIM Tribunals, as well as the European Court, should take full account of a relevant private agreement between an applicant and an opponent before reaching a decision in a CTM opposition.
Returning to the Omega case, it is simply a reminder that, if at all practically possible, the different fields of commercial activity should be clearly defined, preferably by reference to the Nice classification. If this is not done at the outset, then a party looking for wriggle-room will surely find it.
Skype is a software product that has revolutionised telecommunications services around the world. Given that Skype to Skype voice calls over the internet are free, it is perhaps not surprising that the number of users of the system has climbed from 75 million at the end of 2005 to 520 million by mid-2009 and that it has now become the largest international voice carrier with a 13% market share.
The trade mark is said to have been coined from the phrase Sky peer-to-peer and this is perhaps one of the reasons why Skype is facing a little local difficulty on the trade mark front in the EU.
A CTM application for Skype & cloud device was filed by an Irish company, Skype Ltd, in 2005 for a range of goods and services in Classes 9, 38 and 42. This application was opposed by British Sky Broadcasting (BSkyB), the owner of the well-known Sky tv channel, as well as of numerous relevant earlier trade mark rights for Sky including a CTM registration protecting identical (Class 9, 38 and 42) goods and services to the Skype CTM application.
The Opposition Division accepted that, on the evidence before it, BSkyB had a high degree of recognition amongst the relevant public and had acquired a high degree of distinctiveness in the UK through use. They also refused to accept the CTM applicant's arguments that, in respect of the goods and services at issue, Sky was a mark of low inherent distinctiveness.
The Opposition Division's analysis of the two marks found a medium degree of visual similarity and, in some countries such as Italy, where the CTM mark applied for would be pronounced Sky-Pe, an aural similarity between the Sky element of both marks. In countries where the meaning of the word Sky was unknown, there could be no conceptual comparison between the marks. Even in countries, such as Sweden and the UK, where Sky was a dictionary word, the Opposition Division concluded that the two marks were conceptually dissimilar.
Taking all of these factors into account, including the identity of the two sets of goods, the Opposition Division decided that there was a risk that the relevant public might believe that Skype was economically linked to BSkyB. They therefore allowed the opposition and rejected Skype's CTM application in full.
Given the amount that is riding on this case, and given that the position must be considered as at June 2005 (the filing date of the CTM application), a date when the Skype service was much less widely known than it is now, don't be surprised if, once the inevitable appeal is filed by Skype, the Opposition Division's decision is confirmed.
If I were Skype, I would be seeking evidence to show that, in the five years since they filed their CTM application, and in spite of the exponential growth of their market share, no (or virtually no) confusion has taken place, especially amongst UK consumers, as to the origin of the Skype services.
Elsewhere in this edition of Make Your Mark, the ECJ decision in the Barbara Becker case is discussed. For what they are worth, the writer makes the following additional observations. First, in the writer's view, it is an incorrect practice that allows common surnames, such as Becker, to be registered as CTMs without requiring evidence of distinctiveness acquired by use. Having said that, it would appear that, as a result of the Barbara Becker case, the ECJ has at least prevented OHIM's extremely lenient approach (to the registration of surnames) from allowing the owner of such a non-distinctive (surname) mark from establishing an unjustifiably wide monopoly (essentially in all names containing that surname).
Further, this case is by no means over. If I were advising Harman (the opponent), I would be asking the General Court to consider whether the CTM applicant still has celebrity status under the name Barbara Becker. After all, the tennis player's former wife was born in 1966 as Barbara Feltus and, whilst she was married to the former Wimbledon champion for about eight years, their divorce became effective as far back as January 2001. Furthermore, Ms Becker remarried the artist Arne Quinze last year and presumably now styles herself as something other than Barbara Becker.
On the other hand, if I were advising Ms Becker I would be recommending the filing of non-use revocation actions against the two CTM registrations relied on by Harman (in particular the registration for Becker), since both are now vulnerable to cancellation on the ground of non-use. Both of Harman's rights cover a very broad range of Class 9 goods and it is notoriously difficult and expensive to maintain such broad protection before OHIM in the face of a non-use attack.