Survey evidence in England & Wales: not dead after all?

At last year's MARQUES "Meet the Judges" session in London, kindly hosted by our friends at IBIL and noted on Class 46 here, the consensus of judicial opinion was that prospects for introducing survey evidence in trade mark litigation were "dead" or at least "pining for the Fjords". However, in Enterprise Holdings Inc v Europcar Group Ltd and another [2014] EWHC 2498 (Ch), Mr Justice Morgan surprised everyone by permitting reliance on survey evidence which Enterprise Holdings sought to be introduce in order to show that its marks had acquired enhanced distinctiveness and were thus so strongly identified with the goodwill in its business to support its trade mark infringement and passing-off action against Europcar.

This case will undoubtedly be the subject of considerable discussion over the coming months and will be subjected to a fuller treatment on this weblog in due course.

Posted by: Jeremy Phillips @ 16.30
Tags: survey evidence, England & Wales,
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HEATSTRIP in General Court: unauthorized registration by agent

In Case T-184/12, Moonich Produktkonzepte & Realisierung GmbH (Germany) applied for word mark HEATSTRIP for various goods and services related to heating devices, requesting the priority date of an earlier German mark.

Thermofilm Australia Pty Ltd brought an opposition on the basis of earlier non registered rights for the verbal expression HEATSTRIP used in Australia, Canada, USA and UK for various “heating apparatus” among others. It raised the grounds of Article 8 (3) and 8 (4) CTMR, the latter in relation to the earlier UK right only.

The Board of Appeal upheld in part the opposition on the grounds of article 8 (3) finding that the opponent had duly proved that exclusive rights were used for HEATSTRIP in Australia; the existence of a fiduciary relationship between the parties and the lack of consent by the opponent when Moonich filed for application of the CTM.

Moonich appealed before the General Court which rejected the appeal. As regards the alleged violation of Article 76 (1) CTMR and lack of evidence regarding the applicable Australian law for demonstrating use of the earlier mark, the GC confirmed the reasoning of the Board which applied common law principles. In an action for “passing off”, the” reputation” generally refers to the “goodwill” of a mark, and not the level of “reputation” required according to Article 8(5) CTMR. The opponent filed evidence that according to Australian law, “goodwill” means the mark “ has come to the attention of the relevant public and has attained a level of significance in the public mind”. In the present case, the opponent had demonstrated substantial period of sales and promotional activity -just a few weeks’ duration has been held sufficient in some cases where the magnitude of the promotion was quite substantial. Thus, the Board correctly found that the opponent had proved the existence of earlier Australian right according to the common law definition of “goodwill” , without the need to prove its “reputation” in accordance with 8 (5) CTMR.

Further, the Court rejected the alleged violation of Article 8(3) of the CTMR which reads “Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor's consent, unless the agent or representative justifies his action.” The GC reminded that this article is meant to cover any contractual relationship when one party acts on behalf of the others, independently of its legal qualification.

Moreover, the evidence produced by the Thermonfilm (strict collaboration regarding the successful implementation of the products under HEATSTRIP mark on the German market) sufficiently demonstrated the existence of a fiduciary and principal-agent relationship, It does not matter whether there was no actual agency agreement or exclusivity clause. Finally, the GC rejected the applicant’s arguments according to which the Board had failed to examine whether there were any “justification for the applicant’s actions”. It recalled that the analysis of relative grounds claims is limited to the arguments presented by the parties: in the present case, Moonich raised this claim for the first time before the Court.

Posted by: Laetitia Lagarde @ 16.22
Tags: General Court, relative grounds, heatstrip, agency agreement, agent,
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Coexistence Agreement Workshop comes to Bucharest

The latest in the series of MARQUES workshops on Coexistence Agreements is to be held in the lovely and historical city of Bucharest, Romania, on Wednesday 10 September.

This workshop will be conducted in what our friends in the Secretariat refer to as "the local language": while Romanian is the official language, the county boasts a good selection of minority languages (not including English, which is understood by 29% of the population, and Textese, which seems to be understood by almost everyone under age of 20).

Details of the event and how to register for it can be accessed by cllicking here.

Posted by: Jeremy Phillips @ 15.57
Tags: coexistence agreements, workshops,
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Albania's IP (and trade mark) laws get an overhaul

On 10 July a new law, Law 55/2014, came into force in Albania, amending Law 9947 of 7 July 2008 on Industrial Property, entered into force. The changes cover trade marks as well as almost all other IP rights.

As to trade marks, the new law provides for collective and certification marks and specifies the substantive examination rules that address absolute grounds for refusal. 

Source: "Amendments to Law on Industrial Property enter into force", by Renata Leka,(Boga & Associates, Tirana, Albania), published in World Trademark Review, 21 July 2014, which goes into some detail concerning these provisions.

Posted by: Jeremy Phillips @ 23.07
Tags: Albania, new law,
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MONDAY, 21 JULY 2014
General Court: shape of a bottle for blackberry liquor rejected

In Case T-66/13, Franz Wilhelm Langguth Erben GmbH (Germany) applied for registration of the figurative mark (here left) for Class 33 goods ‘alcoholic beverages, blackberry liquor’. OHIM refused registration raising an absolute grounds objection on the basis of Article 7 (1) b) CTMR.

The General Court upheld OHIM’s decision and confirmed first that the relevant public is the average German consumer due to the German verbal element written on the bottle. Second, even if the shape differs from the other shapes of bottles produced by the applicant, it does not diverge significantly from the norms and customs of the sector. On the contrary, it is quite an ordinary shape. The verbal element “echte Kroatzbeere” or “real berries” embossed at the bottom of the bottle, although not a commonly used expression in German (referring to a local expression for ‘blackberry’) , will still be perceived as the content of the bottle, and therefore also lacks distinctive character.

Posted by: Laetitia Lagarde @ 11.27
Tags: General Court, absolute grounds, blackberry liquor, echte Kroatzbeere,
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MONDAY, 21 JULY 2014
Big Yellow Van case: failure to comply with an injunction can cost you dearly

On 27 May, in Yellow Van Company Ltd v Driver [2014] EWHC 2135 (IPEC), Judge Hacon of the Intellectual Property Enterprise Court, England and Wales, refused to set aside a judgment in default of acknowledgement of service and defence, brought by the owners of the trade mark and other rights to The Big Yellow Van Company and two accompanying logos against an individual who maintained that he had the right to trade under that name.  The claimant alleged trade mark infringement, passing off and copyright infringement.  The judgment in default was originally made by Mr Justice Arnold and the defendant had shown no compelling reason to set it aside.

Last Friday, 18 July, the case was back before Judge Hacon on an application to have the defendant committed for contempt of court for breaches of the original order. In an extempore judgment, the court fined the defendant £10,000 for his failure. While he maintained that he had complied with parts of the order, he was still in breach of it; he had been shown to be an unreliable person and his attitude towards the court's order was somewhat dismissive. While it was not appropriate to commit him to prison, a substantial fine was in order.

Posted by: Jeremy Phillips @ 09.15
Tags: contempt of court, breach of order,
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FRIDAY, 18 JULY 2014
General Court: 'Subscribe' not distinctive for goods and services related to computers and books

In case T-404/13, the General Court (GC) decided on the registrability of the word mark 'SUBSCRIBE'. After several alterations to the initial application, NIIT Insurance Technologies Ltd sought to register the sign as a CTM for various goods and services in Classes 9, 16 and 42.

The sign 'SUBSCRIBE' was successfully registered for some of the goods and services applied for, such as 'computer hardware; printers; pens; paper articles' as well as 'information services related to academic and industrial research', among other things. The examiner and the Board of Appeal (BoA), however, both rejected the remaining part of the application, holding that the mark was devoid of any distinctive character with regard to the following goods and services (i.e., the contested products):

  • 'computer software; data storage and retrieval systems; computer programmes; electronic and computer games' (Class 9)
  • 'computer programmes (printed form); manuals; operating instructions; books, publications; magazines; instructional and teaching material; printed matters' (Class 16)
  • 'services relating to computer design and programming; computer engineering; maintenance, rental and updating of computer software and programmes; computer consultancy and advisory services; information services relating to computers; computer system analysis and recovery of computer data' (Class 42)

The Office established that the mark applied for consisted exclusively of the English term 'subscribe', which referred to the payment of money in order to regularly receive certain goods or services. Therefore, the relevant public would merely understand the term as an invitation to subscribe to the contested products, all of which could be acquired by way of subscription.

In its appeal, the applicant argued that the BoA was wrong to hold that the sign was devoid of any distinctive character. It was generally uncommon to acquire the contested products contained in Class 9 by way of subscription. Therefore, the relevant public would not attach any descriptive meaning to the term 'subscribe' with regard to these products. As for the contested products contained in Classes 16 and 42, the applicant claimed that they were frequently acquired through a subscription system. The relevant public would see this delivery method as being a matter of course and consequently not perceive the mark as being descriptive of these products either. As a result, the sign could serve as a slogan indicating the commercial origin of all the contested products. According to the applicant, the BoA’s decision also violated the principle of equality and was contrary to Art. 56 of the TFEU.

The GC dismissed the appeal in its entirety. First, the Court confirmed the finding of the BoA concerning the mark’s lack of distinctive character in relation to the contested products, Art. 7(1)(b) CTMR. All of these products could be acquired using a subscription. Therefore, when confronted with the sign 'SUBSCRIBE' in connection with the contested products, the relevant public would effortlessly understand the mark as hinting at the possibility to acquire the products by way of subscription. The Court held that the applicant’s arguments on whether or not it was a common practice to subscribe to the contested products were beside the point. Such considerations, casting doubt on the descriptive character of the mark, could merely have become relevant if the objection had been raised on the basis of Art. 7(1)(c) CTMR.

With regard to the sign’s quality as a slogan, the Court referred to the criteria laid out in 'Vorsprung durch Technik' (see case C-398/08 P, reported here). In this case, the CJEU established that even an advertising slogan could indicate the commercial origin of goods. This could be the position, in particular, if the slogan possessed a certain originality that required at least some interpretation by the relevant public. The GC, however, found that these requirements were not fulfilled in the current case. The applicant failed to show alternative ways in which the average consumer would interpret the term 'subscribe'.

Second, the BoA did not violate the principle of equality. The Court confirmed that the OHIM had to adhere to this principle and take into account the decisions already taken in respect of similar applications. However, this did not allow the applicant to benefit from a possibly unlawful act committed to the benefit of someone else. Each decision had to be based on the circumstances of the case at hand and previous registrations did not confer a right to registration in respect of the mark applied for (for a similar position see cases T‑291/12 and T-539/11, reported here).

Third, the BoA’s decision did not constitute a breach of Art. 56 of the TFEU, since refusing to register the mark did not distort the conditions of competition or hinder the free movement of goods and services. Trade marks constituted an essential element in the system of undistorted competition. The possibility of registering a trade mark, however, could be limited for reasons relating to the public interest. Accordingly, Art. 7(1)(b) CTMR pursued the general interest of guaranteeing the origin of the marked good or service to the consumer, without any possibility of confusion.

The Court’s reasoning when assessing the mark’s distinctive character is sound and convincing. Art. 7(1)(b) CTMR prevents the registration of a sign that consumers would exclusively perceive as an invitation to purchase (or in the current case, to subscribe to) the products covered by the application. Following the GC’s logic, it is plausible to assume that the average consumer is less likely to understand the sign 'SUBSCRIBE' as an indication of commercial origin, if the sign is used for goods or services that the average consumer expects to be able to subscribe to.

Nonetheless, the overall result is not entirely satisfactory. It remains difficult for practitioners to reliably predict for which goods or services the sign 'SUBSCRIBE' can be registered as a trade mark. For instance, it is hard to find a reason why the sign at issue was successfully registered for 'information services related to academic and industrial research', whereas it was not deemed to be distinctive for 'information services related to computers'. Given the similarity of these services, one could argue that the trade mark application should have been treated alike in both instances.

Posted by: Christian Tenkhoff @ 17.12
Tags: General Court, Subscribe, Absolute Grounds, Distinctiveness,
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