UK NEWS

Snippets

In what must be considered rogue decisions, the UK Office has registered the get-up of three dishwashing tablets (UK2234004, 2234005 and 2234009) owned by Robert McBride Ltd. In each case, the tablets consisted of three, differently coloured layers.

These acceptances should be contrasted with the rejection of 13 International (UK) applications for similar dishwashing tablets filed by Henkel. In the latter cases, the get-up of the tablets was said to be non-distinctive (Section 3(1)(b)), given that the different colours were promoted as, and would therefore be seen by the public as, indicators of function, rather than indicators of origin.

To these Henkel cases can be added the refusal of Reckitt Benckiser’s International trade mark application (no. 713167) for the get-up of the Finish Powerball dishwashing tablet. The fact that this tablet consists of two coloured layers plus a highly unusual third element, in the shape of a red ball which is half in and half out of the main body of the tablet (and therefore appears as a red dome to a user), was not enough to resist a finding of non-distinctiveness (Section 3(1)(b)).

These rejections are much more in line with the UK Office’s normal practice when examining coloured dishwashing (or textile washing) tablets. The failure of the Finish Powerball tablet get-up suggests that an unreasonably high standard of distinctiveness is usually exercised by the UK Office in these cases.

Two more get-up cases illustrate the difficulty of registering such marks in the UK. In the first case, two applications (UK2200505 and 2200510) for the yellow and black get-up of Black & Decker’s De Walt professional power tools were refused under Section 3(1)(b). These refusals were maintained in the face of a large body of sales, market share and consumer survey evidence.

In the second case, James Gilbert failed to obtain registration for the crescent shaped patterns applied to the two ends of a rugby ball (UK2231137).

Although CTM applications for the DeWalt tools’ get-up would be likely to face similar non-distinctiveness objections, it is submitted that the Gilbert ball patterns would have fared better down in Alicante.

How far do you have to go under UK trade mark law to offend accepted principles of morality (Section 3(3)(a))? A recent case considered this question.

The UK application was for the trade mark Jesus in respect of class 25 goods. The Hearing Officer found that a substantial number of the UK public would only associate Jesus with Jesus Christ. They would not recognise another meaning, such as an ordinary forename or surname. Many of these people would also view the use of Jesus as a trade mark as offensive, rather than as merely distasteful. For this reason, the application was rejected under Section 3(3)(a).

As in the case of marks with a sexual connotation (for example Tiny Penis accepted by OHIM but rejected by the UK authorities for class 25 goods), OHIM appears to be less concerned about religious sensitivities. Both Jesus Christ Superstar and The Church of Jesus Christ Latter-Day Saints are registered as CTMs.

In a recent ECJ case (Rioglass and Transremar v Administration des douanes et droits indirects), the freedom of a Spanish manufacturer to transport his lawfully produced goods to Poland via France was considered. The Spanish company Rioglass manufactures and sells windows and windscreens for all makes of car, including Citroën and Peugeot. Rioglass’s activities are approved by Sogédac, the central buying office of Peugeot-Citroën.

In November 1997, Rioglass sold a consignment of car windows and windscreens to a Polish company (Jann). Some of these products bore the trade marks Citroën and Peugeot. Transremar was given the responsibility to transport the goods by road through France.

The goods were detained by French customs on suspicion of trade mark infringement. Rioglass (and Transremar) applied to the French Court seeking an order that the goods be released. The Bordeaux Court of Appeal ruled in favour of Rioglass. The French Customs authority appealed to the Cour de cassation, who, in turn, sought guidance from the ECJ on the issue.

The European Court, in line with earlier cases, acknowledged the existence of a general principle of freedom of transit of goods within the EU, even if the final destination of the goods was outside the Community. Transit, as in the present case, did not involve any marketing of the goods and was therefore not liable to infringe the specific subject-matter of a trade mark. It followed that, in the circumstances of the present case, the ECJ decided that Article 28 EC must be interpreted as preventing the detention in France of goods that have been lawfully produced in Spain and exported to Poland for sale in thanon-member country.

Two recent UK cases have shown that harmonisation of EU trade mark law is still some way off.

In the first case, (Oska’s v Morgan), the application was for the trade mark Lorna Morgan for, amongst other goods, clothing in class 25. It was opposed on the basis of earlier UK trade mark registrations for Morgan covering identical goods. There was evidence that the opponent’s mark had acquired a reputation through use in the UK.

The Hearing Officer found that the two marks were not confusingly similar and rejected the opposition. In his view, full names were of particular importance as identifiers and could generally be distinguished from surnames alone.

This decision should be contrasted with the practice on names being followed by OHIM. In recent OHIM appeals, the following marks have been found to be confusingly similar:

• Baker & Co and Henry Baker & Co (R55/2001-4), and
• Diana Von Furstenberg The Color Authority and Furstenberg & Crown Device (R73/2001-1).

In the second UK case (Pharmacia v Sanofi-Synthelabo), the mark applied for was Eturion in respect of “Pharmaceutical preparations for the treatment of cardiovascular conditions”. It was opposed by an earlier UK registration for Urion covering “Medical products for the treatment of benign prostate hypertrophy”. The Hearing Officer concluded that there was a degree of similarity between the two marks, but that the two sets of goods were at the boundaries of similarity. On balance, therefore, there was no likelihood of confusion and the opposition failed.

By contrast, an opposition brought by Sanofi against the equivalent French trade mark application for Eturion was successful. No doubt the well known meaning of the French word Et (And) had some influence on that decision.

On 1st May 2004, the European Union will welcome 10 new Member States, namely Cyprus, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovak

Republic and Slovenia. This will bring the total population of the EU to about 450 million and the number of official languages to 20.

All CTM applications and registrations, with a filing date earlier than 1st May 2004, will be automatically extended to the 10 new states. No form or fee is required, the extension is automatic. The rules governing the interrelationship between CTM rights and national rights in the new states, as well as the treatment of CTM applications filed on or after 1st May 2004, are discussed in a paper at the Jenkins website (www.jenkins-ip.com).

One of the best known slogans in the confectionery area in the UK is Nestlé’s Have A Break…Have A Kit Kat. It is so well known that virtually anyone in the UK, when presented with the phrase Have A Break alone, in respect of confectionery, would respond Have A Kit Kat. This was not enough, however, to persuade the UK authorities to accept the phrase (Have A Break) as a registrable trade mark in its own right, following an opposition brought by Mars UK. The mark was rejected by both the UK Office and the High Court. In both cases, the minimal use of the phrase, as an independent sign, was the decisive factor in rejecting it as a registrable trade mark. The fact that a large proportion of the UK public associated Have A Break with Kit Kat was found to be irrelevant.

On appeal to the Court of Appeal, it was noted that the English Court’s position appeared to be at odds with a decision of the OHIM Second Board of Appeal, where the phrase The Greatest Show On Earth was allowed even though that phrase had generally been used in conjunction with the trade mark Barnum & Bailey’s (or P.T. Barnum’s).

For this reason, the Appeal Court referred this question (paraphrased) to the ECJ for a ruling:

Can a trade mark acquire distinctive character following or in consequence of the use of that mark as part of or in conjunction with another mark?

It is sincerely to be hoped that the ECJ will answer this question in the affirmative. If they do not, it could have a negative impact on the ability of trade mark owners to register product get-up, colours and shapes (as well as parts of well known slogans), since none of these trade marks have an existence separate from word or device marks.

This newsletter is widely circulated in the Southern Hemisphere. Readers can be found in Australia, New Zealand and South Africa. It is therefore with some hesitation that we mention the fact that England won the Rugby Union World Cup in November 2003 with a last minute drop goal by the English fly half, the sainted Jonny Wilkinson. It was, for a brief moment, as the poet Milton once wrote, “A heav’n on earth”.The aforementioned fly half is undoubtedly the best place kicker in the game and he has a very particular style of executing each kick. It involves a prayer like gesture, which has become known as the Wilkinson cradle. The success of this ritual is bound to encourage imitation. It has therefore been suggested that the English No. 10 should attempt to monopolise his technique by filing a trade mark for the movements involved. In doing this, he would be following in the footsteps of the Derbyshire Building Society, who obtained a UK trade mark registration for a gesture which involved a man tapping the side of his nose in a knowing way (UK2012603) and the Bradford & Bingley Building Society, who obtained a registration for the gesture of two city gents raising and lowering their bowler hats (UK2130164). It is also reported that a yoga teacher, Bikram Choudhury, has attempted to protect a series of 26 yoga poses as a trade mark (US 76/408704, now abandoned).

To date, it appears that Jonny Wilkinson has not sought to protect his kicking style. It occurs to us that this omission offers a window of opportunity to our Southern Hemisphere friends to get in first. A trade mark registration for the Wilkinson gesture, owned by an Antipodean third party, could be a crucial weapon when the next World Cup is played, in France, in 2007.

Elsewhere in this edition of Make Your Mark (page 16), we discuss the unsuccessful attempt of the National Canine Defence League (NCDL) to register the trade mark Toys Aren’t Us & Dog Device. We have also noted another dispute, involving the NCDL charity, where the boot was on the other paw.

This dispute involves NCDL’s slogan “A dog is for life, not just for Christmas”. The High Street retailer of sex toys, Ann Summers, had introduced a new product called Rampant Rabbit under the slogan “A Rabbit is for life, not just for Christmas”. Not surprisingly, NCDL complained.

It appears that the two parties are now looking at a settlement. As a spokesman for Ann Summers noted “The purchasers of our product tend to be women in their mid-30s, which is a similar market to that of interest to NCDL”.

In the Autumn 2002 edition of Make Your Mark, we discussed a passing off case in which the Formula 1 racing driver Eddie Irvine successfully sued the radio station, Talksport, for their unauthorised use of his image.

A new case, involving the alleged mis-use of a sportsman’s image, has recently hit the headlines. This time the offended party is David Bedford, a British distance runner during the 1970s. Mr Bedford, who broke the 10000 metre world record in 1973, was famous fohis archetypical 70s image of straggly long hair and handlebar moustache. He also wore strikingly red socks which were distinctive, if unwise.

Mr Bedford, who retired from the track in 1976, has become agitated about a recent, extremely successful advertising campaign in the UK for the 118 118 telephone directory service. This campaign features two straggly haired, moustachioed runners with red socks who both bear an uncanny resemblance to David Bedford in his prime.

It remains to be seen whether a long retired sportsman, such as Mr Bedford, who is now the race director of the London Marathon, can follow in the successful footsteps of Eddie Irvine, whose reputation is current and whose image, as a consequence, is widely known. Perhaps Mr Bedford’s best hope is to register his 1970s image as a trade mark and then to seek to licence its use to the 118 118 service. This might be in the commercial interests of both parties.

The trade mark problem posed by David Bedford may not be the only one faced by the 118 118 service. It appears that the number 118 is registered as a trade mark in the UK for telecommunications services by an Irish based company, Conduit Enterprises, that appears to have no connection with the widely advertised 118 118 service.

The onward march of geographical indications continues. It has recently been reported that the French authorities have objected to the registration of the trade mark Goats do Roam for South African wine, on the basis that the name is too close to the French appellation Cötes du Rhône.

As this case has been brought before the US Patent and Trademark Office, it remains to be seen whether, in the present political climate, the French objection will succeed. The trade mark Goats du Roam was, incidentally, registered in the UK in 1999 and the wine appears to be sold very widely, though, we would assume, probably not in France.

Moving from goats to pigs, the Appointed Person (Mr Hobbs Q.C.) was required to consider the registrability of the following mark in a recent case,

“A pictorial representation of a pig, not being a photographic representation, attached to packaging and other materials relating to the provision of goods and services”.

 

The mark had been rejected, under Section 32(2)(d) of the 1994 Act, by the UK Office, because it was not represented with sufficient precision to permit a full and effective examination. This rejection was maintained by the Appointed Person. In his view, precision and singularity of representation were both required in order to satisfy the basic requirement for legal certainty. The present mark did not meet either of these requirements.

It is reported that, in 2003, the British Government filed more UK trade mark applications than either ICI or Unilever. The Government’s trade mark portfolio reflects the breadth of their activities. Not only are the names of the three armed services (British Army, Royal Navy and RAF) protected, but also The Ordnance Survey, The Forensic Service and even The Criminal Records Bureau. One of the most intriguing recent trade mark applications filed by the Government protects HMS Sussex. The specification of this UK application covers coins and underwater salvage. Apparently this does not reflect a pessimistic view of the future of Royal Naval ships in these uncertain times, but rather the identity of an expedition that is being conducted in the Mediterranean to salvage a warship called HMS Sussex. This ship sank off Gibraltar in 1694 carrying a large quantity of bullion. One has to admire the extent to which the present British Government will go to broaden its revenue streams.

In the last edition of Make Your Mark (Autumn 2003), we discussed the Court of Appeal’s judgement in the Arsenal v Reed case. In that case, which involved the effect of an ECJ ruling on Mr Reed’s sale of unauthorised Arsenal branded goods, the Appeal Court found that use of a sign as a trade mark was not required in order to establish trade mark infringement in the UK.

At almost the same time as that Appeal Court decision, the House of Lords was considering the case of Mr Johnstone, who had faced criminal charges, brought by the Crown under Section 92 of the UK Trade Marks Act 1994, for selling bootleg recordings of well known artists, such as Bon Jovi, whose names were registered as trade marks in the UK.

Two main issues were considered by their Lordships. The first was whether, in order to succeed under Section 92, the Crown had to prove that Mr Johnstone had infringed the registered trade marks under Section 10 of the Act. That is, he had committed an act of civil infringement. The House of Lords, confirming the earlier Court of Appeal decision, found that a finding of civil infringement was necessary for a successful prosecution under Section 92.

The second issue before the House of Lords was whether a defendant had to use his sign as a trade mark in order to commit a civil infringement. Here their Lordships diverged from the finding of the Court of Appeal in the Arsenal case. According to the House of Lords, “trade mark use” by the defendant was a pre-requisite for infringement to take place under Section 10.

In the writer’s view, the House of Lords decision makes far more sense than either the ECJ’s rulings or the Court of Appeal’s interpretation of those rulings in the Arsenal case. It remains to be seen whether sense will eventually prevail in this area.

During 2004, the UK Trade Marks Registry will introduce a new opposition regime. The new procedure will be a two-phase system. The first phase will provide that, after the Notice of Opposition has been filed, at the parties’ joint request, there can be a cooling-off period of up to one year for negotiation. Either party can terminate this cooling-off period and advance the case to the Adversarial stage. Failing an agreed settlement, the Registry will then set a term for a Counterstatement. After the filing of the Counterstatement, a “preliminary’’ decision will be issued, based solely on the pleadings, that is, without evidence and without a Hearing.

The second phase will only commence when it is requested by a party seeking to overturn the ‘’preliminary ‘’ decision. Thereafter there are finite terms for filing evidence, prior to a Hearing (if the parties seek one). Extensions or suspension of the proceedings may be possible, but the Registry’s overriding objective is to provide speedy decisions. Again, following current practice, it is intended that the Registry will review the evidence and advise the parties if they consider that a Hearing is not necessary. Nevertheless either party may still request a Hearing. A party requesting a Hearing may find that they incur a correspondingly higher award of costs against, if the final decision favours the other party.

In response to lobbying by the interested parties (ITMA/CIPA), the Registry are adopting a provision, akin to the OHIM practice, of seeking proof of use for vulnerable prior rights. As yet, there is still discussion on the manner in which this will be accomplished. The Registry favour a statement in the Notice of Opposition. The interested parties favour later evidence. Currently, proposals for appropriate revisions of the Trade Marks Rules, as well as supplementary legislation, are with the Registry’s lawyers/Parliamentary draftsmen.

The Jenkins Trade Mark Department will keep its clients fully appraised of these important changes to UK trade mark practice.

The Manchester United merchandising juggernaut was dealt a minor blow recently. An attempt to register captain Roy Keane’s nickname Keano came up against a registration of Keeno for “knitwear” belonging to a Mr. Bhaura, trading as Esprio Knitting. The marks were clearly confusable, so the question was how widely the term “knitwear” should be interpreted. The Hearing Officer rejected the applicant’s submission that “knitwear” really only covers items such as Arran sweaters and chunky woollen cardigans and decided that the term could refer to almost any fabricated textile, noting that the applicant themselves referred in invoices to “knitted cotton rugby shirts” and “knitted cotton baseball zip thru’s”. He therefore rejected the application for all clothing, but allowed it to proceed for footwear. Asked for his comments on this decision, Mr. Keane said “**!!**?!!*…”.