In a guest post, Adrian Dykes of Allen & Overy reports on the recent CITMA lecture “A Canter through the cases” in London, part of CITMA's evening talk series (more details on CITMA's website here).

Adrian writes:

On 28 November Jade MacIntyre (Allen & Overy), took a packed audience of CITMA members on a canter through the UK trade mark cases of 2017. Jade’s canter turned out to be a comprehensive gallop through all the major UK decisions relating to absolute grounds, relative grounds and passing off, proof of use and parallel imports.

For those that missed it, here’s a summary of some of what was covered. In perhaps a sign of things to come, decisions of the EU Court of Justice were not mentioned.

Absolute grounds

• Oldfields Applesecco O/437/17: the opponent, the legal person under Italian law to protect the protected designation of origin Prosecco, successfully opposed an application for APPELSECCO under s3(4) of the Act on the basis that the mark could not be allowed in the United Kingdom because the applicant’s product did not comply with the product specifications for Prosecco.

• Apple Inc v Arcadia Trading Ltd (IWATCH) [2017] EWHC 440: Arnold J dismissed Apple’s appeal to the High Court, following an adverse decision by the UKIPO that concluded that IWATCH was descriptive for some class 9 goods. The net effect being that a multipurpose product may be classified properly in more than one class. Apple’s attempts to argue distinctiveness acquired through the use of its i- family marks also failed.

• Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358: in the ongoing dispute between Cadbury and Nestlé pertaining to the KIT-KAT shape mark, the Court of Appeal dismissed Nestlé’s appeal, upholding Arnold J’s decision that the KIT-KAT shape could not be registered as a trade mark. The decision confirmed that it is not enough for the shape to be well-known or for a significant proportion of the relevant class of consumers to recognise and associate the shape with the applicant’s goods for the requirements of acquired distinctiveness to be satisfied. Consumers must perceive the shape as an exclusive indicator of origin.

• Mermeren Kombinat AD v Fox Marble Holdings plc [2017] EWHC 1408: in a case dealing with marble quarries dating back to the Roman Empire, HHJ Hacon had to consider the use of the SIVIEC mark in connection with marble quarried from the Sivec mountain pass in FYR Macedonia. The upshot was that if consumers have not heard of the geographical location because it is obscure, they will likely not perceive a mark as indicating geographic origin.

• COME TO THE DARK SIDE O/106/17: this opposition case serves as a useful reminder of the high bar that those alleging bad faith have to satisfy.

• Glaxo Wellcome UK Ltd v Sandoz Ltd [2017] EWCA Civ 335: the Court of Appeal considered the validity of GSK’s purple colour scheme as applied to an inhaler. Both the visual representation and written description were considered, and ultimately these did not conform to the Sieckmann criteria. HHJ Hacon’s summary judgment was upheld and the mark declared invalid. A referral to the CJEU was refused.

• London Taxi Corp Ltd (t/a the London Taxi Company) v Frazer-Nash Research Ltd [2017] EWCA Civ 1729: the London taxi marks remain invalid on the basis of a lack of distinctive character. Interestingly, Floyd LJ expanded the category of consumers from purchasers of taxis (ie, taxi drivers) to include users of taxi services, as such consumers may be concerned with the origin function of a vehicle mark at the time of hiring.

Relative grounds and passing off

• Jadebay Ltd and others v Clarke-Coles Ltd (t/a Feel Good UK) [2017] EWHC 1400: in a case concerning the re-use of a unique Amazon product listing which includes a trade mark, there is use of that trade mark when the listing is re-used, and trade mark infringement is possible.

• ELECTRIC BALLROOM O/240/17: in invalidity proceedings relating to the use of the ELECTRIC BALLROOM mark for clothing, the UKIPO went out of its way to find a compromise position meaning that both parties could use the mark for their clothing lines. The registrant would limit its registration to clothing specifically for ballroom dancing, which kept the mark far enough away from the applicant for invalidity’s use.

• LUXURY HOTELS OF THE WORLD O/150/17: LUXURY HOTELS OF THE WORLD was found to be confusingly similar to SMALL LUXURY HOTELS OF THE WORLD, showing that there can be a likelihood of confusion, even for marks with very low distinctive character.

• UNI BAGGAGE O/164/17: this opposition case demonstrates that the proviso to s3 of the Act is not as onerous as proving goodwill for the purposes of a passing off action. The hearing officer found that under the proviso it needed only to be shown that the mark is no longer purely descriptive, rather than that the acquired secondary meaning has displaced the original descriptive meaning.

• COCO’S LIBERTY O/223/17: Chanel opposed an application for COCO’S LIBERTY in class 14 for jewellery, based on its COCO family of marks. Adopting the EUIPO’s approach, the Office focussed on Chanel’s best case, COCO, also in class 14, on grounds of procedural economy. Chanel was successful.

• VISII O/263: This opposition case related to an application for software in class 9 and “software as a service” in class 42 – no doubt an area that is ripe for future trade mark disputes of this nature. The hearing officer reminded the parties of the breadth of the term “software”, and concluded that it should be difficult to obtain a monopoly for all software. The hearing officer referred to Tribunal Practice Notice 1/2012 to conclude that it was within her remit to reword the specification to allow the application to proceed for “search engine software” in class 9. Unfortunately for the Applicant, the class 42 services did not lend themselves to a suitable limitation that would avoid a likelihood of confusion.

• Bayerische Motoren Werke Aktiengesellschaft v Technosport London Ltd [2017] EWCA Civ 779: in the complex area of spare parts, BMW succeeded in its claim against Technosport, a specialist repairer of BMWs, but with no formal connection to the car manufacturer, but which used a range of BMW’s marks liberally to extol its credentials. The court drew a distinction between informative use (ie, I repair BMWs or I use genuine BMW parts), and misleading use (eg my repair service is connected to BMW). This case reminds users of third party marks that care must be taken to make it clear that related goods or services are not authorised or connected commercially to the brand owner.

• Sky plc and another v Skykick UK Ltd [2017] EWHC 1769 (Ch): the High Court rejected an application for a reference to the CJEU on the compatibility of the abolition of the own name defence in Regulation 2015/2424 with certain EU rights. The application was unsuccessful.

• Azumi Ltd v Zuma’s Choice Pet Products Ltd and Zoe Vanderbilt, 2017] EWHC 609: a disappointing case for dogs (and presumably cats), which held that the own name defence does not extend to our canine friends.

• Coreix Ltd v Coretx Holdings plc [2017] EWHC 1695: in infringement proceedings before the IPEC, the court held that the defendants were unable to rely on acquiescence or estoppel as defences. This follows the decision last year in Marussia Communications Ireland Ltd v Manor Grand Prix Racing Ltd which concluded that estoppel is not available as a defence to infringement of an EUTM. Despite trading with each other for three years, the defendant's registration of the CORETX mark was invalid on the basis of the claimant's registration and passing off. Finally, the defendants' use of the domain names "cortex.com" and "coretxnetwork.com" also amounted to infringement of the claimant's mark and passing off.

• Argos Ltd v Argos Systems Inc [2017] EWHC 231: in what must be the hardest fought case of the year, the court confirmed that the simple registration of a domain name containing the trade mark of a third party would not of itself support a claim of trade mark infringement or passing off. The court also ruled that the mere display of Google-generated adverts for the claimant’s goods and services on the defendant’s website would not be sufficient to support such claims. The court declined to intervene in a situation where one entity has happily traded as Argos in the UK and Ireland for many years, and one has happily traded as Argos in the United States for many years. Coexistence and lack of confusion can be fatal to an infringement claim.

• ABSURD BIRD O/264/17: This case concerned an application for invalidity against the mark ABSURD BIRD based on Dirtybird’s earlier UK trade mark registration for the mark BIRD and its related goodwill in the brand. The marks involved were held to be highly similar for identical services, and the registration was invalidated on relative grounds. The hearing officer declined to consider passing off.

• Champagne Louis Roederer v J Garcia Carrion [2017] EWHC 289: the defendants sold Spanish sparkling wine under the name CRISTALINO, infringing the claimant’s rights in its CRISTAL brand of champagne. The defendants took a risky approach to this case by not defending the account of profits. They neither supplied Island Records disclosure nor turned up at the hearing, perhaps taking comfort from the fact that reported decisions on accounts of profits for trade mark cases have tended to show the recovery of only modest sums. That left the claimant having to put together its own evidence to prove the defendants’ lawful profits (which it had chosen over proving its own loss), which it by providing evidence from disputes at the Commercial Court in Brussels, the UK IPO and the US District Court of Minnesota, as well as information from supermarket retailers that had supplied the infringing product in the UK. The evidence stood without challenge, as there was nobody at court to mount a challenge. The Master accepted the evidence and it propelled the claimant to an award in excess of €1.3 million.

Proof of use

• Sherlock Systems CV and others v Apple Inc O/015/17: in what will be no doubt one of many decisions relating to the activities of Michael Gleissner, Mr Gleissner’s 68 applications for revocation against many of Apple’s well-known marks, including APPLE, iPHONE and iTUNEs, were thrown out as an abuse of process.

• MARQUEE O/488/17: a useful reminder that failing to file evidence of use on time can be fatal to a mark, even if there is genuine use.

Parallel imports

• Flynn Pharma Ltd v Drugsrus Ltd and another [2017] EWCA Civ 226: the Court of Appeal dismissed an appeal by a parallel importer against a High Court ruling that the imported goods infringed the claimant's trade mark. This was the case even though the parallel importer had to apply the claimant’s mark in order to compete in the UK. The main question was whether there was a disguised restriction of trade contrary to Article 36 of the Treaty on the Functioning of the European Union, which sets out exceptions to the free movement of goods within the EU. The Court of Appeal found that the claimant had no control over the goods the defendants wished to import, which were under the control of a third party, Pfizer, and that Pfizer had no control over the claimant's use of its mark. Therefore, the claimant had a legitimate interest in the enforcement of its mark against goods that it had not placed on the market under that mark and over which it had no control.

• R v C and others [2017] UKSC 58: in this well-publicised case, the Supreme Court decided that the offence of unauthorised use of trade marks, contrary to section 92(1) of the Act, was made out in relation to "grey market" goods as well as "true counterfeits". Grey market goods are goods that are manufactured and the trade mark applied with the permission of the trade mark owner, but which are then sold without the owner's consent.

So what to make of this? Clearly shape marks and colour marks continue to be difficult to register and difficult to enforce, and bad faith remains a difficult ground to succeed on in opposition/invalidity proceedings.

Michael Gleissner’s strategy must have taken a knock this year – it will be interesting to see what the future has in store for him. Some of the UKIPO’s decisions suggest some movement towards the EUIPO’s approach of considering the best case on grounds of procedural economy. Users of the trade mark system must be careful not to become the authors of their own misfortune – missed deadlines can be a disaster, and an account of profits should be defended!