IN THE UK OFFICE

Some You Win, Some You Lose

Four recent UK oppositions, based primarily on the “dilution” provisions of the UK Trade Marks Act (Section 5(3), set out in full at the end of this article), offer a useful insight into the elements that an opponent has to establish to succeed in such a case. In two of the oppositions, the Section 5(3) ground was accepted and the applications were therefore refused. In the other two cases, the opponent’s dilution arguments were rejected. Let us first consider the successful oppositions.

In the first case (Virgin Oil v Virgin Enterprises), the applicant had filed a UK trade mark application for a stylised form of the phrase Virgin Oil in respect of, amongst other goods, oils and greases in class 4. The application was opposed by the conglomerate founded by Richard Branson. The opposition was based inter alia on Virgin Enterprises’ earlier rights in the trade mark Virgin and the damage that the registration of Virgin Oil (stylised) would do to the reputation of the Virgin marks in the UK.

The evidence established that the opponent had a significant UK reputation in the trade mark Virgin in respect of airline and train services, records and CDs, musical entertainment services, financial services, drinks and holidays. It was also shown that Virgin Enterprises had a virtual monopoly of Virgin marks both on the UK Trade Marks Register and in the UK market.

Given this background, it was perhaps not surprising that the Hearing Officer found that the Section 5(3) ground had been established. He commented as follows:

• The reputation of the Virgin trade mark is unusual in that it is founded on goods and services which would not typically be provided by, or under the control of, a single undertaking. This undoubtedly makes it far more likely that the public will assume that other Virgin trade marks will similarly identify part of the business of the Virgin Group.

• A likelihood of confusion is not a necessary ingredient in a Section 5(3) case. However, it may nevertheless represent a concrete example of detriment to the distinctive characteof the earlier mark.

• Given the facts in this case, a significant proportion of the relevant public would believe that a new oil or fuel product offered for sale under the applicant’s mark was a product for which the opponent was responsible, or that there was an economic connection between the product and the opponent. This was bound to damage the distinctive character of the opponent’s mark.

• This was also one of those rare cases where the dilution of the distinctive character of the earlier mark may, of itself, be sufficient to justify a Section 5(3) objection. The opponent is the only party known to make significant use of the Virgin mark in the UK.

 

The appearance of a Virgin Oil product on the UK market would therefore dilute the unique nature of the signification conveyed at present by the Virgin mark. It is that unique nature of the (Virgin) mark that has allowed the opponent to extend its activities successfully into unrelated fields in the past and to license others to do the same.

In the second reported Section 5(3) decision (National Canine Defence League v Geoffrey, Inc), the opposed application was for the trade mark Toys Aren’t Us & Dog Device in respect of fund raising and education about the care and welfare of dogs in classes 16, 36, 41 and 42. The application, which was filed by NCDL, a charitablorganisation, was opposed by the well known international toy retailer, Toys ‘R’ Us, who owned a number of UK and CTM registrations for Toys ‘R’ Us and related marks. In this case, the evidence established that the opponent had a significant UK reputation in their mark as a retailer of toys, games and the like. The opponent had little involvement in UK based charitable activities, however.

The Hearing Officer decided that the Section 5(3) ground succeeded and rejected the application. In doing so, he made the following statements:

• The applicant had been aware of the opponent’s mark and had based their own mark on it. In doing so, they had gone beyond inspiration and into imitation. The mark applied for unambiguously captured the distinctive character of the opponent’s mark.

• It was not an offence, in itself, under Section 5(3) of the 1994 Trade Marks Act, to parody or play on a mark with a reputation.

• From the evidence, it could not be concluded that the public expected the opponent tobe involved with charitable activities. It was therefore unlikely that the applicant’s mark would be seen as an indication that the opponent supported or associated themselves with the applicant’s activities. The applicant was therefore unlikely to gain an unfair advantage from the use of their mark or to benefit from any association between their mark and the opponent’s mark.

• The breadth of the applicant’s specification meant that activities, such as campaigning for animal welfare, against cruelty to animals and against the use of animals in research, could be encompassed. Some, at least, of these activities were controversial and could involve the use of disturbing images. The association of the opponent’s mark with such campaigns or images could therefore have a negative impact on the reputation of their mark, Toys ‘R’ Us. On this basis, the Section 5(3) opposition succeeded, unless due cause could be shown.

• The test for establishing a defence of due cause was not lower for charities, compared with commercial organisations. Generally, due cause was only present when the applicant was under such a compulsion to use the mark applied for that they cannot honestly be asked to refrain from doing so, regardless of the damage done to the reputation of the earlier mark. No such case had been made out in the present opposition.

• Given that the applicant had been aware of the opponent’s mark when they had developed their own and that it had been their intention to bring the opponent’s mark to mind, and also given that the use of the applicant’s mark was likely to damage the opponent’s reputation in Toys ‘R’ Us, their behaviour fell short of acceptable commercial behaviour. The application had therefore been filed in bad faith (Section 3(6)).

• There was little likelihood of the applicant misrepresenting their goods and services as those of the opponent. It followed that the opponent was unlikely to succeed in a passing off action. Therefore, the Section 5(4)(a) ground of opposition failed.

 

Turning to the two Section 5(3) oppositions that failed, the first (Minton Spring Water v Royal Doulton (UK)) involved the trade mark Minton. The UK application claimed that mark and was filed in respect of mineral, aerated and spring waters in class 32. It was opposed by Royal Doulton, the well known and long established manufacturer of china and ceramic tableware and similar products. The opponent owned earlier UK trade mark registrations for Minton covering china and ceramic products. They also established a UK reputation in the mark for the same goods amongst those connected with the china/ceramics industry. However, they were not able to show a wider reputation in the mark because UK sales of other products, such as coasters, prints, cutlery and telephones, under the Minton mark were relatively small.

The Hearing Officer dismissed the opposition for the following reasons:

• There was no realistic connection between table water and tableware even if, in principle, they could appear on the same table. There was no obvious or natural synergy between such goods that would lead consumers to consider them to be complementary.

• On the basis of the evidence filed, there was no reason why a consumer should assume a connection between a company known for china/ceramic products and a trader in mineral water, even if the two sets of goods were sold under the identical trade mark. It followed that the applicant would not derive any advantage from the opponent’s reputation in Minton. Further, the applicant’s use of the trade mark Minton would not be detrimental to the opponent’s reputation in that mark.

 

In the final case (Sovereign Homemaker v Pinewood Studios), Sovereign applied to register Pinewood Studios for pine furniture and similar pine products in class 20. The application was opposed under Section 5(3) by the famous British film studio on the basis of their earlier trade mark rights in Pinewood Studios. The opponent established a UK reputation in the earlier mark, to the Hearing Officer’s satisfaction, in respect of film studio services. Unfortunately (for the opponent), neither of their earlier UK trade mark registrations for Pinewood Studios encompassed those (class 41) services. According to the Hearing Officer, success, under a Section 5(3) ground of opposition, required that the goods or services, for which a trade mark had a reputation in the UK, should also be covered by an earlier trade mark registration for the same mark. That was not the position in this case and therefore the Section 5(3) ground was dismissed.

 

Comment

There appear to be three main types of “dilution” case that will succeed in the UK. The first is where the owner of the earlier mark with a reputation can establish some kind of link between his goods (or services) and the goods (or services) of the later applicant. This was the position in the Loaded opposition before the Appointed Person (see Make Your Mark, Spring 2001). In that case, the goods applied for were “clothing”, whilst the earlier product with a reputation was a printed publication. The regular appearance of adverts for clothing in the Loaded publication, together with the opponent’s earlierelease of clothing bearing the Loaded trade mark, for promotional purposes, ensured that the necessary link was present and that their Section 5(3) opposition succeeded. The Minton case discussed above shows that the link between the earlier and the later goods (or services) must not be too tenuous. It must be strong enough that the relevant public makes a connection between the two products.

The second type of dilution involves tarnishment of the earlier mark and its reputation. This often occurs when the later application covers sexually related products, such as condoms. This was the situation when the owner of the well known Visa credit card brought a successful Section 5(3) opposition in the UK (see Make Your Mark, Spring 2000). However, it is not absolutely necessary for such (sexually related) products to be involved for tarnishment to be established. This can be seen from the Toys Aren’t Us case discussed above, as well as the earlier Galaxy case (Make Your Mark, Autumn 2000), where the conflicting goods were chocolate and rat poison (and similar), and the Intel case (2003 RPC 44), where the conflicting goods were high quality, technologically based products and an unsophisticated constructional toy.

The third type of dilution occurs when a trade mark owner has established a monopoly (or a virtual monopoly) in the trade mark, both on the register and in the market, for a wide range of goods and/or services. Very few of these marks exist. Virgin is one of this very select list. Having gained such a monopoly, it is, of course, imperative that it be maintained. Even one unconnected mark, if it is allowed on the register or into the market, can open the floodgates and lead to the permanent loss of monopoly. As it was once (almost) said, “The price of maintaining a trade mark monopoly is eternal vigilance”.

Section 5(3): A trade mark which

(a) is identical with or similar to an earlier trade mark, and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.