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    The ECJ has recently ruled on the registrability of a smell trade mark. The mark, which was the odour of the pure chemical methyl cinnamate, was filed by Ralf Sieckmann at the German Trade Mark Office in respect of services in Classes 35, 41 and 42. Mr Sieckmann attempted to describe the mark by (i) a chemical formula, (ii) a written description (balsamically fruity with a slight hint of cinnamon), (iii) a physical deposit of the chemical and (iv) all three of the above.

    The German Office asked the ECJ for guidance on how such non visual marks as a smell could be represented graphically in a manner that would be acceptable under the Trade Marks Directive. The Court found that

    • A trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
    • However, in the case of a smell, none of a chemical formula, a physical deposit, a written description or a combination of these met the requirements for graphic representation set by the Directive.

    In the light of these rulings, it is difficult to see how any smell mark, even well known smells, such as cinnamon or vanilla or the smell of oranges or lemons, will be accepted in the EU as a registrable trade mark.

    It is reported that Her Majesty The Queen has again been involved in the area of intellectual property. Previously a company representing Her interests had registered the names of Her two private homes, Sandringham and Balmoral Castle, for a variety of no doubt tasteful merchandise. In the more recent case, The Sovereign has been acting on behalf of The New Zealand Government in a domain name dispute involving newzealand.com. The domain name had been registered by a US company, Virtual Countries, who also owned a US trade mark registration for the name in respect of business advertising services. The complaint failed because Her Majesty (or rather Her Government in New Zealand) was unable to prove that they owned any trade mark rights in the term New Zealand. Clearly the term was an indication of geographical origin but it did not indicate a particular source (or sources) of goods and services. The WIPO Panel also decided that, on the evidence before it, Virtual Countries probably had a legitimate interest in the domain name and had probably acted in good faith when registering it. To rub salt into the wounds, they even decided that the New Zealand Government’s complaint was an abuse of the WIPO Policy and an attempt at reverse domain name hijacking.

    The ECJ is to be asked to consider the registrability of another 3-D mark. In this case it is the shape and overall appearance of Viennetta ice cream. Unilever applied to register this 3-D mark as soon as the 1994 Trade Marks Act came into force in the UK (31st October 1994). One of their applications (no. 2000662) was accepted by the UK Office on the basis of distinctiveness acquired through use. An opposition filed by Nestle on the basis that

    • The Unilever mark was the same shape as a Mille Feuille pastry, in which the pastry had been substituted with ice cream, cream and chocolate (Section 3(1)(a)),
    • The mark was not distinctive and had not acquired a distinctive character through use (Section 3(1)(b)), and
    • The shape resulted from the nature of the goods themselves (Section 3(2)(a)),

    was rejected.

    Nestle appealed to the English High Court (Mr Justice Jacob). The Judge was by no means convinced that Unilever’s mark should qualify for registration. He accepted that a substantial proportion of UK consumers recognised the product as Viennetta. However, in his view, this did not necessarily lead to the conclusion that the public regarded the shape (appearance) alone as a trade mark. The fact that a significant minority (15%) of those surveyed by Unilever mentioned the ice cream products of other manufacturers, when shown Unilever’s mark, also counted against registrability.

    Rather than ruling against Unilever however, the Judge decided to put certain issues to the ECJ for a ruling. In particular the European Court will be asked to decide whether or not public recognition of a 3-D mark is sufficient to justify registration, especially in circumstances where the shaped product is sold in packaging bearing a distinctive word mark (Viennetta).

    Dr. Who, the famous time traveller and slayer of Daleks, has recently prevailed against an even more formidable opponent, The Metropolitan Police. This particular inter-galactic contest involved the ownership of the famous blue police telephone box as a trade mark for entertainment services and related merchandise. The good Doctor, in the earthly form of the BBC, had filed a UK trade mark application for the design of the call box, claiming ownership on the basis of its use as The Tardis, the machine that had transported Dr. Who through time and space to rickety studio sets in London for over 30 years. The Met countered by claiming that they had first introduced the call box in 1929, about 34 years before Dr. Who had materialised on our lonely planet. Unfortunately for their case, the police had also removed the call boxes from London’s streets in the late 1960’s.

    The Master, who had transformed for the occasion to the benign form of a UK Trade Mark Office Hearing Officer, ruled in favour of The Doctor. In his view, the UK public would now be more likely to associate the blue call box with a fictional time traveller than with a real, truncheon carrying enforcer of law and order. Once again Dr. Who (and his rather nubile, young female assistant) had prevailed against overwhelming odds.

    Peterborough United is a football club struggling for survival in the second division of the English football league. Their slightly incongruous nickname is (and has been for about 70 years) The Posh. Peterborough has never been a club that is likely to travel “Port Out, Starboard Home”. However, in these days of optimising revenue streams, even a football club as modest as Peterborough United wishes to protect its trade mark rights. For this reason, the club filed UK trade mark applications for both Posh and The Posh in respect of a wide variety of goods and services in 1998. These applications were finally accepted in June last year.

    David Beckham, the sainted English football captain, is unlikely ever to play for Peterborough United. He might buy the whole town of Peterborough, but turning out for The Posh is not on the cards. He does, however, have a connection with a different kind of struggling Posh, namely the pop star, formerly known as Posh Spice and now more widely known as Mrs Victoria Beckham.

    It is reported that Mrs Beckham has taken a dim view of the football club’s trade mark activities and has opposed their applications for Posh and The Posh, presumably based on her alleged reputation in the sobriquet Posh Spice. The trade mark conflict, although less glamorous than an away cup tie against Manchester United at Old Trafford, will probably give the second division strugglers more prestige and free publicity than a league meeting with Wycombe Wanderers.

    One of the most famous cases in UK trade mark law (The Shredded Wheat Co. v Kellogg Co) dealt with an application to cancel the registration of a sign, Shredded Wheat, that, for many years, had been used as the name of a patented article, namely a breakfast cereal in the form of a wheat biscuit. In that case, the House of Lords decided that, for a period of thirty years up to 1926, the term had been used exclusively by The Shredded Wheat Co. but only in a descriptive sense. In the following three years leading up to the filing of the UK trade mark application (in 1929), the exclusive manufacturer of Shredded Wheat cereal had made serious attempts to displace the descriptive meaning with one of trade origin. However, given the descriptive nature of the term, these attempts had proved inadequate and the trade mark registration was cancelled.

    The case, which was heard in 1939, remains a powerful reminder to the inventors of new products to give the product both a brand name and, just as important, a generic name.

    Nearly sixty years after that landmark House of Lords decision and more than a hundred years after Shredded Wheat cereal was first sold, the present manufacturer of the product, Nestle, filed a new UK trade mark application for the term. This application was finally allowed to proceed in November 2002 on the back of evidence of use, as well as survey and trade evidence. This illustrates the difficulties of turning a generic term into a source indicator, but it does show that, in certain circumstances, it can be done.

    In the Autumn 2001 edition of Make Your Mark, we reported that a UK trade mark application for The Supremes made by a company representing one of the original members of the group, Mary Wilson, had been successfully opposed by two of the present members of the group, Lynda Lawrence and Scherrie Payne. The fact that Ms Wilson had left the group in 1977 and had not taken action against the use of the term The Supremes by others from 1986 onwards, led the Hearing Officer to conclude that the UK trade mark application should be rejected because

    • Ms Wilson’s use of The Supremes could be prevented by a passing off action brought by Ms Lawrence and Ms Payne (Section 5(4)(a)), and
    • The UK trade mark application had been filed in bad faith (Section 3(6)).

    The applicant, Mary Wilson Enterprises, appealed to the Appointed Person (Geoffrey Hobbs Q.C.). Mr Hobbs confirmed the rejection of the application but only on the basis of bad faith. In his view, the opponents had not generated their own goodwill in the name The Supremes but had simply perpetuated the goodwill that already existed in the name of the original, 60’s group. It followed from this, that the opponents were not in a position to sustain a passing off action and the Section 5(4)(a) ground of opposition failed. Having said that, Mr Hobbs also commented that he believed that the members of the new group were entitled to the benefit of the presumption that they were innocent of wrongdoing.

    Turning to the question of bad faith, the Appointed Person found that, for a variety of reasons, the present case fell four square within the scope of Section 3(6). Ms Wilson (and her company) was precluded by a 1974 dated agreement from claiming trade mark rights in The Supremes. She had been pursuing a solo career and had no plans to form a new group under the banner of The Supremes. The new group formed in 1986, had been performing openly and without objection in the UK for a number of years. On this basis, the Section 3(6) ground of opposition succeeded and the application was rejected.

    When a UK trade mark registration is attacked on the basis that the mark protected has not been used in the previous five years (Section 46(1) of the 1994 Act) and it transpires, on the basis of the evidence filed, that the mark has been used in respect of some of the goods or services claimed, it is sometimes difficult to decide how to place an appropriate limitation on the original specification. This problem has been illustrated in a recent Court of Appeal decision (Thomson Holdings v Norwegian Cruise Line).

    This case involved the trade mark Freestyle which was registered by Thomson in relation to, amongst other services, “Arrangement and booking of travel and tours and cruises”. The defendant had used the trade marks Freestyle Cruising and NCL Freestyle Cruising to identify a range of cruise holidays offered by them to destinations around the world. Thomson sued Norwegian Cruise for trade mark infringement and, in return, Norwegian Cruise had applied to revoke Thomson’s registrations on the ground of non-use.

    On the evidence before him, the Judge (Mr Young Q.C.) had decided that Thomson’s use of Freestyle was essentially in relation to land based holidays, even though they could include day boat trips. On this basis, he decided that cruises and cruise related services should be excluded from Thomson’s specification which, in turn, led to the conclusion that no confusion was likely and a finding of non-infringement.

    Thomson appealed and the Court of Appeal took a different view both on the amendment of Thomson’s registration and the issue of confusion.

    According to the Appeal Court, Thomson’s holidays should not be categorised as “land based”, since they could involve both swimming in the sea and day cruises. Consumers would not see what Thomson offered under the Freestyle brand as “land based” holidays but as package holidays of various types. It was therefore appropriate to amend the specification of Thomson’s trade mark registration to “Arrangement and booking of travel, tours and cruises; all for package holidays”. Since, given the trade channels involved, these amended services were similar to those offered by the defendant, there was inevitably a likelihood of confusion. Trade mark infringement was therefore established.

    Under CTM practice, surnames, no matter how common, can be registered as trade marks provided they are not, in some other way, descriptive of the goods of services claimed. By contrast, the UK Trade Mark Office refuses to register common surnames in the absence of evidence of acquired distinctiveness. The English High Court (Mr Justice Jacob) has now asked the ECJ for a ruling on the correct practice in this area. The case in point involved a UK trade mark application to register Nichols for food and drink products in Classes 29, 30 & 32. Nichols is a common UK surname appearing over 500 times in the London telephone directory. Under the present UK practice, it would therefore not be accepted as prima facie distinctive, a situation that would not apply at OHIM.

    In forwarding the case to the ECJ, the Judge noted that the European Court would probably have to consider how far the own name defence under Section 11 of the 1994 Act is relevant to the consideration of distinctiveness. In the Baby-Dry case, the defences that are potentially available to the users of certain terms, such as geographical indications, in a descriptive sense were taken into account when considering the registrability of that mark.

    Mr Justice Jacob suggested that, on this point, the Baby-Dry ruling appeared to be at odds with the ECJ’s earlier ruling in the Chiemsee case.

    Amongst the applications recently accepted by the UK Office and OHIM, we have noted:

    • Baby-Dry, finally allowed by OHIM for nappies in the wake of the ECJ ruling.
    • Tiny Penis, accepted by OHIM for goods and services in Classes 25, 28 and 35. This suggests that fewer marks will be refused as immoral down in Alicante than will be the case in Newport, since this mark had already been rejected as contrary to accepted principles of morality by the UK authorities.
    • British Army, which has been allowed by the UK Office for the wide variety of equipment that is required by a modern fighting force. It is not clear whether, by protecting its brand, the British Army hopes to prevent the manufacture of counterfeit products or the ready identification of genuine products by, for example, arms inspectors.
    • Westminster Abbey, filed by the Dean and Chapter in respect of a broad range of goods and services, including water and wine. The absence of camels and needles from the specification is perhaps not surprising.
    • Another moving image (UK2250465), in this case an internet icon featuring the word YELL and a square dot.
    • The names of Hollywood stars past and present, including Alfred Hitchcock, Catherine Zeta-Jones and Sylvester Stallone. In the last case, the creator of the Italian stallion, Rocky Balboa, has registered his name for entertainment services which, in the present writer’s view, represents the triumph of hope over experience.

    In an unusual case, the UK Office rejected a mark under Section 3(3)(a) of the 1994 Act because it would be contrary to public policy. The mark was www.standupifyouhatemanu.com. (For those who believe that football is played with an oval shaped ball, we should explain that manu is short for Manchester United, the most famous, successful and widely disliked football (round shape) team in England.) The Hearing Officer expressed the view that the mark would be seen as a “badge of antagonism” and, as such, liable to increase the incidence of football violence amongst this country’s normally friendly and docile football supporters.