2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods,

The distinctiveness of each trade mark is assessed individually, based on the applicable legal norms and the issue of whether it concerns a pure word mark or a figurative trade mark with a dominant graphics cannot be bypassed, especially if the protection is expected to be granted to words of informational nature.

Legal norms included in article 129(2)(ii) of the IPL prevent situations of depriving the competitors from informing the buyers about the character of goods, by the exclusive use of a registred trade mark. Granting the right of protection to information which serve as a trade mark about a quality of food product, its taste or qualities would lead to ensure a monopoly, or granting the exclusive use of it to only one entrepreneur.

The Competition Law Association is the UK branch of the International League of Competition Law (Ligue Internationale du Droit de la Concurrence - LIDC). Its members are drawn from both competition and intellectual property backgrounds, which makes it an ideal forum for the exchange of views on subjects of mutual interest with people whom you might not otherwise get the chance to meet. For further details of this meeting, for which the registration fees are very modest, may be obtained here.  All are welcome.

Today's decision of Mr Justice Peter Smith in William Evans and Susan Mary Evans (trading as Firecraft) v Focal Point Fires plc [2009] EWHC 2784 (Ch) sounds a warning to UK trade mark practitioners that evidence submitted in proceedings before the Trade Mark Registry must be given full attention. According to a news flash from solicitors McDaniel & Co:

... Firecraft are a Leicestershire based company established over 18 years ago, who specialise in the manufacture and sale of beautiful hand carved stone fireplaces and the provision of associated accessories. Firecraft had been successful in the Trade Marks Registry of the UK Intellectual Property Office in applying to invalidate Focal Point Fires PLC’s trade mark for the word FIRECRAFT. Firecraft have been inundated with complaints and enquiries about fires made by Focal Point PLC sold under the trade mark Firecraft. Firecraft had based their application on the fact that they had a substantial goodwill in the name Firecraft and that Focal Point’s use, assessed on a notional and fair basis, of that mark on the specification of goods the mark was registered for, would amount to a misrepresentation likely to damage the goodwill Firecraft had developed over the years in the name. Focal Point did not appeal the registry decision.

Firecraft then, in March 2009, issued High Court proceedings against Focal Point suing under the tort of passing off. Firecraft’s case was that Focal Point were estopped “per rem judicatam” from defending the action on the basis that firstly in the registry Firecraft had relied upon a single cause of action namely the tort of passing off and that in the High Court proceedings, that same cause of action, between the same parties was at issue. Secondly Firecraft alleged that the issues to be decided in the High Court action were the same issues, between the same parties, that had been required to be decided in the trade marks registry. Those issues, were the 3 “ingredients” of a passing off claim: reputation, misrepresentation and damage (or likelihood of damage). Firecraft also alleged that any attempt by Focal Point to defend the action in the High Court would be an abuse of the court process.

An application for summary judgment took place before the High Court and on 10 November 2009 Peter Smith J handed down Judgment in Firecraft’s favour. Niall Head-Rapson, assisted by Andrew Lee, of ACID accredited law firm McDaniel & Co, who acted for Firecraft, comment: “The doctrine of estoppel per rem judicatam is based on the principle that there should be finality in court proceedings and that nobody should be troubled twice for the same cause. In this case, Focal Point had chosen not to appeal against the decision of the trade marks registry and because in the High Court proceedings, the parties were identical, as was the cause of action, and various issues needed to determine liability, the doctrine applied so as to prevent the re-litigation of those issues. It is a warning to practitioners to ensure that Registry proceedings are conducted with the same evidential care and attention as if they were proceedings in the High Court. Failure to do so may have dire consequences for clients”.

Class 46 wishes to thank Niall Head-Rapson of McDaniel & Co for this information. For information please contact Mr Head-Rapson here.