The Journal of The Institute of Trade Mark Attorneys Issue no. 345 May 2007

Judicial Diversity Review: merit remains the sole criterion for judicial selection UK trade mark filings for 2006 Council meeting March 2007 ITMA London International Meeting, Spring 2007: an American perspective No respite for Respicur in Respicort case Felindil and Plendil... close enough to confuse? PUBLIC PUBLIC CONTENTS PUBLIC RELATIONS Public relations Drifting into court over right to Drifting into court over use an old name 2 ITMA business RELATIONS right to use an old name UK trade mark filings for 2006 3 Council meeting March 2007 4 Media watch smaller events in Llandrindod Wells, UKIPO cross-searching list news 5 Powys on 19 April and Rob Franks ACDPA-S107A and 198A Two stories caught my eye recently. and his colleagues from Franks & Co commencement 5 One concerns the group the Drifters, assisted at Market Rasen racecourse or should I say the groups called the on 26 April. I am very grateful to Gastrognome Drifters since there appears to be at them all. Enjoy the wow factor: Locanda least five of them currently touring Locatelli 6 Britain. The case, which is due to Two more exhibitions follow in May: come up in the High Court some time the first in Milton Keynes where Features Janice Trelby and Vicki Cowland from ITMA London International this year according to the Times, is Saunders & Tolleymore have kindly Meeting, Spring 2007: an being brought by the widow of the agreed to help and the second, American perspective 7 group’s manager who bought the in Dundee, where Chris Finn of Judicial Diversity Review: merit name back in 1954, a year after Murgitroyd has kindly volunteered remains sole criterion for judicial the group originally formed. Mrs to assist. Before the summer break selection! 12 Treadwell took control of the Drifters in 1967 on the death of her husband we have one more event, at Brighton Case comment but went into bankruptcy in 2001, racecourse, and I hope to secure a No respite for Respicur in since when various “Drifters” groups volunteer for that soon. Respicort case 14 have emerged primarily from Awareness Campaign 2006/2007 Felindil and Plendil... close the remnants of the last group. enough to confuse? 17 Mrs Treadwell has now had the The sixth regional seminar under this campaign was held at what was People bankruptcy order annulled. She the Patent Office (now UKIPO) on News of members 18 has formed a new Drifters and 13 March and my thanks go to Letter to the editor 18 wants to release an album. Hardly Victor Caddy of Wynne- Jones, Dilbert’s take on IP issues... 18 a harmonious tale! Laine & James for making the ITMA Trade mark of the month 19 The second story simply appeals presentation. Sally Cooper again Who’s who in ITMA 19 to my sense of humour and helped out with the presentation Student column 19 appeared on an internet news site on 29 March in Wrexham, and Mike And finally... www.ananova.com. It relates to a .eu Butler of Frank B Dehn is covering Forthcoming events 2007 20 address, which appears in a list of the the event on 25 April at Coventry longest internet addresses in Europe. TechnoCentre. It relates to a Welsh village – can Reminder to authors. . . you guess what it is yet? For fear of I am aware that the list of gratitude When submitting copy to the misspelling it here is the alternative, to helpers at this and the Business Editor, will authors please include which the Birmingham chap who Advice Open Days may be lengthy all contact details in the article file registered it also registered – I but I believe they, and their firms, all itself – this will avoid errors in wonder what Ann Robinson would deserve recognition for the time they attribution. Remember, too, we say. expend on voluntary ITMA duties. need photos, logos, drawings! I am really very grateful to them all Business Advice Open Days and the fact that so many seem to Many thanks. We are currently in a flood of volunteer over and over again Kelly Robson, Editor, exhibitions under the Business Advice suggests that they find it enjoyable [email protected] Open Days banner. Continuing the and, hopefully, of some use. Welsh theme from above, Sally Ken Storey, PR Manager, Cooper helped out at one of the [email protected]

The Institute of Trade Mark Attorneys Canterbury House “If you wanted that star that shines so brightly 2-6 Sydenham Road Croydon, Surrey CRO 9XE To match the star dust in your eyes Tel: 020 8686 2052 Darlin', I would chase that bright star nightly Fax: 020 8680 5723 Web: www.itma.org.uk And try to steal it from the skies” © 2007 (From the original Drifters hit ‘Sweets for My Sweet’)

2 ITMA Review May 2007 ITMA BUSINESS ITMA BUSINESS

We thank Nigel Parnell of Barlin that the figures represent only one Associates for providing a table of UK aspect of a firm's business. UK trade trade mark applications filed by firms We are also extremely grateful to in 2006. Marquesa Search Systems Limited mark filings Firms are listed in order based on the for permitting use of their Internet total number of applications filed. search service to enable this table Madrid Protocol designations are not of UK trade mark applications to for 2006 included. It should go without saying be prepared.

1/1/06 – 1/1/05 – % change 1/1/06 – 1/1/05 – % change 31/12/06 31/12/05 2005 – 2006 31/12/06 31/12/05 2005 – 2006 Applications Applications Applications Classes Classes Classes Filed Filed Filed Claimed Claimed Claimed

1. Marks & Clerk 1028 1016 +1.18 2333 2186 +6.72 2. Urquhart Dykes & Lord LLP 679 717 -5.30 1927 1763 +9.30 3. Murgitroyd & Company 556 393 +41.48 1513 1000 +51.30 4. Boult Wade Tennant 412 328 +25.61 1433 987 +45.19 5. Withers & Rogers LLP 353 320 +10.31 867 703 +23.33 6. RevoMark 345 38 +807.89 622 60 +936.67 7. Mewburn Ellis LLP 338 190 +77.89 599 418 +43.30 8. D. Young & Co. 326 328 -0.61 788 627 +25.68 9. Groom Wilkes & Wright LLP 304 306 -0.65 731 852 -14.20 10. Appleyard Lees 291 372 -21.77 705 880 -19.89 11. David Keltie Associates 276 216 +27.78 1138 706 +61.19 12. W.P. Thompson & Co. 269 213 +26.29 559 346 +61.56 13. Wildbore & Gibbons 256 301 -14.95 487 639 -23.79 14. Swindell & Pearson 250 251 -0.40 523 467 +11.99 15. Barker Brettell 246 312 +21.15 761 891 -14.59 16. Wilson Gunn 243 323 -24.77 437 583 -25.04 17. Harrison Goddard Foote 242 210 +15.24 571 502 +13.75 18. A.A. Thornton & Co. 238 234 +1.71 512 520 -1.54 19. Gill Jennings & Every LLP 235 204 +15.20 514 496 +3.63 20. Page White & Farrer 232 141 +64.54 647 328 +97.26 21. William A. Shepherd & Son 230 266 -13.53 505 580 -12.93 22. Grant Spencer Caisley & Porteous LLP 230 141 +63.12 603 354 +70.34 23. Frank B. Dehn & Co. 218 191 +14.14 606 451 +34.37 24. Bailey Walsh & Co. LLP 204 171 +19.30 307 254 +20.87 25. Carpmaels & Ransford 197 215 -8.37 508 358 +41.90 26. Forrester Ketley & Co. 192 244 -21.31 557 624 -10.74 27. Reddie & Grose 191 137 +39.42 635 522 +21.65 28. Haseltine Lake 183 277 -33.94 503 629 -20.03 29. Kilburn & Strode 178 146 +21.92 367 336 +9.23 30. Eric Potter Clarkson LLP 170 172 -1.16 410 326 +25.77 31. fJ Cleveland 164 137 +19.71 442 292 +51.37 32. Alexander Ramage Associates 159 174 -8.62 426 385 +10.65 33. Kennedys Patent Agency Limited 156 128 +21.88 352 303 +16.17 34. Olswang 154 110 +40.00 784 424 +84.91 35. Hallmark IP Limited 145 221 -34.39 324 451 -28.16 36. Pinsent Masons 145 111 +30.63 415 313 +32.59 37. Field Fisher Waterhouse LLP 145 111 +30.63 471 312 +50.96 38. Stevens, Hewlett & Perkins 139 117 +18.80 359 275 +30.55 39. Lawdit Solicitors Limited 138 79 +74.68 290 187 +55.08 40. Wynne-Jones, Laine & James 137 164 -16.46 387 335 +15.52 41. Rouse & Co. International 137 145 -5.52 340 308 +10.39 42. Fry Heath & Spence LLP 128 89 +43.82 276 196 +40.82 43. Abel & Imray 124 68 +82.35 273 167 +63.47 44. RGC Jenkins & Co. 122 164 -25.61 288 430 -33.02 45. Saunders & Dolleymore 117 89 +31.46 283 226 +25.22 46. Nationwide Trade Marks 116 124 -6.45 231 173 +33.53 47. Taylor Wessing 112 84 +33.33 353 242 +45.87 48. The Trade Marks Bureau 110 127 -13.39 186 202 -7.92 49. Howrey LLP 110 65 +69.23 187 128 +46.09 50. HLBBshaw 109 109 0.00 262 261 +0.38 Total UK Filings 33010 29452 +12.08 75906 75873 +0.04%

May 2007 ITMA Review 3 ITMA BUSINESS ITMA BUSINESS Council meeting March 2007

Elections 2007/2008 husband John Slater being presented the L&P Committee, CIPA and other as a prize for the Moot competition. Institutes. Here substantive issues President: had been covered, such as proof Philip Harris Legal Services Reform Bill of use, consistency within Office The Committee stage was now examinations and electronic filing. First Vice-President: complete and the Report stage was Gillian Deas expected at the end of April/early May. The day had been extremely useful and ITMA’s views were conveyed and Second Vice-President: Work now focused on setting up a taken on board. OHIM’s underlying Maggie Ramage Regulator and moving towards a sentiment was that they were trying draft proposal for Council in Treasurer: to achieve best practice. Catherine Wolfe April/May. Laws & Practice Committee It was reported that OHIM were It was agreed that Margaret Tyler looking at reducing the registration be re-appointed Registrar for the Relative Grounds for Refusal fee, the application fee and renewal ensuing year. Dr James had written to the Registry fee over the next few years. on the consultation. One prevailing Welcome to New Members Education & Training Committee Council were delighted to welcome issue was over the ability to oppose on prior rights to third party Mr SM Bentley, Mrs T Clark, Education System ownership but it was thought that Mr T Farrand, Mr JA Fish, The Committee had looked at the Registry would not move from Mrs CJ Jackman, Mr JM Letang, different educational models like that their current position as they said Ms K O’Rourke and Mr A Porteous of the Law Society’s, which was exam onto Council. they were restricted by the provisions of Section 8. based and practice came through General Purpose & Finance certification. Mr Harris would be Committee British Day producing a document on the This had taken place on 20 March matter to present to everyone. Education & Training 2007 in London and the format had This was discussed in depth at the varied from that of previous years. Joint Examination Board meeting, and it was agreed a sub- The morning session had been an It was reported that Mr Fish and committee would be formed to look open style format, with around 30-35 Ms Lambeth were joining the Board at the various ways the current practitioners in attendance. OHIM as of their next meeting and therefore education system could be improved. began with a presentation, followed would join the existing ITMA Board by questions from the floor. Members Eric Ramage, Natalie Moot Prize Ramage, Helen Whelbourn and Ann Slater had happily agreed to The afternoon session had been Anne Wong. a trophy in the name of her late made up of representatives from Membership Committee John Slater, The following were elected to for whom Membership: the Moot competition Student Miss T Brugh, Ms CJ Duncan, trophy will Mr J Dunne, Mr JHN Guise, be named. Mr M Haman, Miss PA Kelly, Mr B Mark, Ms JA McCullagh, Ms A Steeb-Mueller, Ms S Ward and Mr G Weller Affiliate Miss DHK Logan Ordinary Ms BM O’Hagan Overseas Members Ms S Friends, Mrs MC Rapisardi and Mr G Volonté

4 ITMA Review May 2007 ITMA BUSINESS

Public Relations firms rather than to the individual and discussed the idea of a Business Advice Open Days Membership directory which was UKIPO cross- Mr Storey attended a busy Business broken down into categories such as Advice Open Day at the Business litigators, translators, searchers etc. Design Centre, Islington on 21 March, searching 2007 where he was assisted by ITMA Review Committee Mr Farrand. The April edition would include a tribute to Ros Stanger. There was also IP Awareness Campaign list news a report on the Patent Office’s new An event would be held in Wrexham name, as well as a piece on the The UK-IPO plans to review its and the Institute were working appointment of their new cross-searching list in the run-up to closely with the Registry on this. Comptroller, Ian Fletcher. Articles the abolition of relative grounds Regional Meetings also covered the student social examination this autumn. Another Regional Meeting was event and the new lecture seminars Prior rights holders will be planned in Cambridge on 13 June which were now underway. notified of potentially conflicting and would include the officers, ITMA Programme Committee staff and local members. applications, either automatically International Meeting and Dinner or following an opt-in, and the INTA 2008 – Berlin & Dance 2007 importance of appropriate cross- The Institute were hosting a party The International Meeting took place searching is expected to increase for 300-350 people at the British from 21 to 23 March, 2007 and the when the burden of blocking Embassy in Berlin and the Committee Committee felt that the quality was potentially conflicting applications were currently firming up on up on previous years and the majority falls solely on prior rights owners. arrangements. They were considering of attendees appeared happy with Do members have suggestions for key messages and would be working the venue. with the Registry to promote the UK goods or services which should be aspect of the trip. Unfortunately however, Dinner & cross-searched, but currently are Dance numbers were down and the not? Alternatively, is some of the ITMA Website Committee would discuss this at their current cross-searching no longer Work on the new website was next meeting. There were various necessary in your view? gathering momentum and the options open to consider. Committee were auctioned with Members are encouraged to email reviewing all content of the existing Evening Meetings their comments on this directly site and re-write where necessary. A sub-Committee was formed to look to the chairman of the Laws & at the future of Evening Meetings. Practice Committee, Dr Stephen Newswire James, at [email protected] for Seminars From now on, Mr Storey would be inclusion in ITMA’s submissions. using Romeike Newswire services to The Committee had established that distribute press releases electronically seminars were extremely popular to national, regional and specialist amongst Institute Members and ACDPA - S107A and press. therefore the Committee were aiming to hold more of them in the future. 198A commencement 2007 Design Awards The seminar on the Madrid Protocol The Statutory Instrument to The Design Awards took place on was being repeated in Manchester commence S107A and 198A of 19 February and the winners of the on 17 April, 2007 and the Committee the CDPA, which give Trading ITMA sponsored category ‘Identity were finalising a further seminar Standards the powers to enforce Programmes’ was Johnson Banks on 13 November, 2007, inviting copyright offences, has now been for their Blackpool Pleasure Beach representatives from OHIM to speak. introduced. The order means that designs. from the 6 April these provisions Autumn Conference 2007 will come into force. The Criminal Membership Benefits Group Plans for the Institute’s Autumn Justice and Public Order Act 1994 Conference were almost finalised and Work in progress and the Group were (Commencement No. 14) Order looking at ways of retaining and this would take place on 27 and 28 2007, No. 621 (C.27) was made attracting new Members following September 2007 in Treviso, Italy. on 27 February, and is available the split of the regulatory and INTA on our website, alongside representative sides of the Institute. The Committee were hoping to work guidance on the new powers at Benefits and discounts could be closer with INTA and were looking at http://www.patent.gov.uk offered in various areas as well as holding some kind of joint event in Robert Ibrahim, Intellectual Property low rate credit cards and a wine the near future. & Innovation Directorate, The Patent tasting club. Formalities Committee Office The Group were also looking at offering Overseas Membership to The lectures were going well.

May 2007 ITMA Review 5 GASTROGNOME GASTROGNOME Enjoy the wow factor: Locanda Locatelli This restaurant really does have the wow factor. This was the By now we were feeling pretty full, author’s third visit, and the second visit of her colleague’s. but were determined to plough on Interestingly, this is also the first restaurant that the restaurant and move on to the dessert course. My partner went for a chestnut critic AA Gill allocated five stars. mousse with warm chocolate foam, The restaurant has a modern and with native Cornish lobster. This was lemon thyme cream and brandy ice relaxing ambience in which the not a cheap option, coming in at cream which was rich and sweet, but seating is partly arranged as curved £17.50 just for that dish alone, but not sickly as some cream desserts can banquettes set around tables. It is it was sublime. There was a lot of be. I had gelati, which is obviously a very easy to settle into this restaurant lobster in with the pasta. My partner good choice in an Italian restaurant for the whole afternoon, which is had zuppa di connolicchi e fregola, such as this, the flavours being exactly what we did. which is tomato soup, razor clams liquorice and panettone. I had never and pasta. This was a very thick soup had liquorice or panetonne ice cream, It is worth bearing in mind that this with an intense tomato flavour full but they were absolutely amazing, restaurant will only take bookings of long, thin clams. tasting exactly of the contents. one calendar month before the date for which you wish to reserve your Towards the end of the afternoon place. Therefore, you need to get your Giorgio Locatelli came out of the timing right, and also be prepared to “This is certainly kitchen and sat in the restaurant to spend time waiting on the telephone. relax for a while. This is the kind of I think that speaks for itself. an excellent restaurant that does not hurry you away from your table. We sat down The first thing we noticed is that the restaurant at to eat at around 12.45, and we were bread basket delivered to the table asked gently and politely if we would is quite amazing. It is full of many which to entertain mind moving from our table well different types of bread, to include after 6.30. We believe in taking loaves that look like small bread lunch seriously. puddings, alongside what looks like a client you wish a vase containing oversized home- In fact, we were there for so long we baked cheese breadsticks. It would to impress, but had another glass of Taittinger, just to be easy simply to work through the round off. Then as the restaurant is bread basket without ordering personally I think located at the side of a smart hotel, any food! we moved into its piano bar for the rest of the evening. We started the meal with a glass each it is much nicer of Taittinger, and ordered to go with This was not a cheap option, but as I the meal a bottle of Barbera D’Alba to simply go with said at the beginning, the restaurant 2003 from Piedmont. The wine list is has the wow factor. The bill for two, extensive, and covers the whole of a friend or partner where we did not exactly stint on the Italy, and it would be possible to courses or the quality of the drinks, spend the odd hour working your and enjoy the came in at £201.95 before VAT. way through the wine list to decide what to order. As one would expect superb food and This is certainly an excellent in a restaurant of this style, the prices restaurant at which to entertain vary from reasonable all the way up surroundings.” a client you wish to impress, but to expensive, depending upon what personally I think it is much nicer to you choose. For example, the cost of simply go with a friend(s) or partner Barbera D’Alba varies according to My main course was wild sea bass, and enjoy the superb food and year from £34.50 through to £48.00. filetto di brazino in crosta d’erbe e surroundings. I would recommend sale. This is a fillet of wild sea bass it to anyone, and plan to go back We kicked off by sharing a baked in salt and a herb crust, and for my fourth visit. soft buffalo mozarella cheese was really quite superb. My partner accompanied by a cherry tomato There is a particularly good website, had gnocchi di patate e funghi a’ salad dressed in high quality balsamic which also gives you examples of tartufo selvatici, which is potato vinegar from Southern Italy. A large menus and the wine list. gnocchi with mushrooms and grated ball of incredibly fresh, soft, creamy truffle on top. This was one of those Locanda Locatelli cheese arrived. “peasant dishes” which good Italian 8 Seymour Street My next course (we decided to go restaurants do so well and which are London W1H 7JZ for the four courses) was linguine all’ so satisfying in their simplicity and Tel 0207-935 9088 astice, which is basically flat spaghetti goodness. www.locandalocatelli.com

6 ITMA Review May 2007 FEATURE FEATURE

Christopher Schulte writes: “I was asked to report on the meeting from an “international” perspective. Accordingly, this article will endeavour to give a general report on the conference with some comments on the notable differences in practice between UK/CTM trademark law and that of the United States. There will be no reference to the cultural differences observed, except perhaps the British love of tea and the peculiar fact that this conference always seems to occur when Gordon Brown delivers news of the country’s rather large budget in a very small red briefcase. What follows is a brief recap of the events. Apologies to readers who were expecting more substance rather than the obvious observations of an American.”

ITMA London International Meeting, Spring 2007: an American perspective Delegates from around the world certification of its attorneys is an meant to give businesses a sense gathered from 21 to 23 March 2007 enviable advantage, despite the of where they need to further to hear numerous presentations at level of commitment required of its investigate their IP assets. the ITMA London International members for constant training. Mr Rees introduced the new logo of Meeting. The topics presented Next Miles Rees of the UK Patent the UK-IPO and mentioned the new covered a wide variety of current Office Awareness Information Media domain names that will be employed trademark issues in the UK and OHIM Team discussed recent efforts by the as well. He noted that UKIPO.com will and generated lively discussions. Office to increase awareness of IP in not resolve to the Office because it is The conference opened with the the business community in the UK. a porno site. That ranks right up there Annual General Meeting and Open He noted that the Office dropped the with whitehouse.com, another former Meeting in which President Philip “What is Key” awareness campaign non-governmental purveyor of Harris, commented on the progress slogan as many thought they were porno, or so this writer has heard. of ITMA in the last year. Of note for offering locksmith services. The Office The next day started with Sir Hugh this report was his discussion of the has been working with school aged Laddie presenting on mediation. efforts related to providing both children for IP awareness, and rolled His comment that most attorneys trademark attorney training and out the program under the slogan consider ADR as short for “Alarming training for litigation. ITMA is “CRACKING IDEAS, GET CRACKING” Drop in Revenue” was something that currently at its teaching capacity but (subject to a CTM application). American lawyers feared early on as apparently demand is increasing. The program features Wallace and well. But the fullness of time has Grommit, a worldwide famous No such issues occur in America demonstrated that mediation is, inventor and his dog (despite being because in the US, one must only as Sir Laddie said, simply a tool in made of clay). Notably, the USPTO pass the bar exam after three years the litigation tool box that can be educational effort for children of law school and then one can surprisingly effective. It is not the does not have such stars working prosecute trademarks (but not answer in every case, he noted. But on its behalf. patents) and try lawsuits like any if there is a chance to bring about a barrister. The only mechanism Mr Rees revealed that in a recent close to a contested matter early preventing a US attorney from survey of business 96% said they through ADR, attorneys must working in the trade marks area is the did not know the value of IP, thus attempt to do so. malpractice laws. As such, choosing the efforts to conduct IP audits Sir Laddie coined a phrase for his an American trade mark lawyer can for business around the UK and view of mediation: “Frugal, Fair, be a little trickier than choosing one providing IP information to those Fulfilling and Fast” which was picked in the UK as there is no qualification registering company names. The IP up as a theme in several other effort to guarantee quality. ITMA’s audits are very general and only speeches.

May 2007 ITMA Review 7 FEATURE FEATURE

Stephen Kinsey spoke next on trade been different. This difference simply They used a hypothetical case of a marks litigation in the County Court. points out the distinction between a German trademark holder with He gave an interesting account of the court that must consider trademark national rights in the UK, Germany history of this court and its eventual cases through the lens of a multitude and Portugal seeking to stop sales by handling of IP cases through the of languages and the US courts that a UK competitor throughout Europe. 1984 County Courts Act, which gave only have one language at issue. The trademark holder can sue in concurrent jurisdiction of the court England, the infringer’s domicile, in over tort cases. This court appears to Another very different European which the court can decide be similar to “small claims” courts in approach from US practice is the view infringement in all three countries. the US in that it hears thousands of of prescription drugs in which the Or he could sue in each country. But cases and does not publish decisions. confusion analysis is based on the strategic issues of local commercial Such courts in the States have no concept that the relevant public is impressions of marks due to jurisdiction over IP matters, however. healthcare professionals, as was the language can affect where to bring ECJ case of TRAVATAN/TRIVASTAN the actions. Apparently the hardest part about (found to be similar in any event). In litigating in this court is finding the the US the public policy of avoiding Enforcing a CTM follows the “CTM proper room in which to pay the harm to the patient of such drugs Jurisdiction Cascade”. If the plaintiff filing fee. means that the confusion analysis is follows the cascade she will obtain pan-European relief. Otherwise relief After the coffee break Katie Cameron more strict. Factors such as sloppy is limited to the member state. spoke comprehensively on the topic Latin handwriting by physicians in of recent ECJ decisions in terms of their prescriptions and the potential Again, the need for strategy when technical issues, substantive law and harmful, even deadly, effect of enforcing in Europe is similar to the enforcement. Apparently, the CFI has mistakes in the drug dispensing pre-complaint process in the US in been rather rough on both the Board process requires more care in the which parties try to decide which of Appeal for not giving accurate infringement analysis. Ms Cameron forum will be most favourable and information in its decisions as to the noted that post-purchase confusion is still render the requisite level of relief. websites upon which it relied and not relevant in this industry in Generally the home state’s federal parties who file evidence late. Europe, but in America it is yet court is the best option, but another reason for why the confusion sometimes moving the litigation to a Several cases she discussed pointed standard is heightened. more IP-savvy federal venue with a many similarities in trademark law fast docket is preferable. Sometimes with the US as well as some pointed Another notable case was the CFI the opposite can help – moving the differences. For example, using patent matter of RODA/ODA in which the case into an outlying state court can terms to describe the shape of a marks were deemed similar because leverage another party’s image as sausage in a trademark application the leading letter, “R”, is “weak”. the big bad corporation. This talk likely results in no protection both Perhaps this case would be differently resonated for litigators everywhere in Europe and America. decided in a country with harder “R” on the need to strategise on venue sounds like Germany or America. In By contrast, the imputation of selection prior to bringing the action. understanding a foreign language if it any event, there is no corollary in the gives the mark an enhanced meaning States for this particular theory of After lunch the delegates were seems to be a looser concept in the confusion analysis which identifies apprised of developments of European courts than that of the US. the “strength” of certain letters. counterfeiting in China by Edouard In the case of VITAKRAFT/VITACOAT Suffixes and prefixes may be deemed Schmitt zur Höhe. Mr. Schmitt zur the CFI held the German word for “dominant” or “weak” in the confusion Höhe’s fascinating talk made clear “strength” (kraft) helped to analysis but individual letters are that enforcement of trademark rights distinguish the marks. simply viewed as part of the overall in China can sometime have more sight, sound and meaning of to do with culture than law. For The US confusion analysis of these the mark. example, in order to bring attention marks would employ the doctrine to his client’s enforcement issues in of foreign equivalents whereby the Next Charters Macdonald-Brown China his firm will present banners and Sara Ashby spoke on the topic of foreign term is translated to English to the local customs officials that pan-European relief with respect to only if an appreciable number of say “TRADEMARK GOD” or national and Community trade marks. consumers would so recognise the “ANTICOUNTERFETING HERO”. Their in-depth discussion as to the term. Thus, BUENOS DIAS and GOOD Apparently the official will proudly interplay between national and DAY are similar under this analysis. display the banner in his office and, community rights and relief reminds Sadly, German words are rarely accordingly, take a keener interest in understood in America such that the an American of the dual court assisting with enforcement matters. VITAKRAFT mark would not have systems in the States in which state been translated to “vita-strength”, but and federal courts can both hear and Another case of a need for cross- rather the German term would have decide various aspects of trademark cultural understanding is that the been seen as “craft”. The result would cases, but obtaining the appropriate average salary in China is $150 USD likely be the same but the analytical relief may require using a federal per month. So while a fine of $600 method for arriving there would have rather than state court. USD can seem far too low for Western

8 ITMA Review May 2007 FEATURE standards, in China it can be a crippling event. The meeting in pictures: courtesy of Stewart Rayment, Kingsley & Talboys As is the case in many countries, Chinese custom officials must be trained or they will not pay attention to counterfeits leaving the country. And once the process is started, Chinese enforcement can be very quick (a raid can occur within 30 minutes of a proper request) and the law does place liability on landlords who facilitate counterfeiting. Mr Schmitt zur Höhe also briefly discussed the difficulties of using Piers Acland, 11 South Square Robert Opie (Museum of Brands, Packaging & Advertising), the Madrid system for registering Rebecca Ferrari (Raworth Moss & Cook, Croydon), Cesare marks in China. One cannot enforce Ferrari, Michael Elliott (Greaves Brewster, Cheddar) trademark rights without the Chinese certificate of registration from the CPTO. Thus, holders of Madrid extensions must request a certificate of protection there. This can take three months. Moreover, the Chinese examiners are very conservative when examining Madrid extensions so if a case is complicated the best approach is to file a national application. Patrick Cantrill next took the podium to discuss the Intellectual Property Isabel Carvalho Franco (JE Dias Costa, Portugal), Jackie Oliver Morris (Trade Marks Enforcement Directive. He gave a Johnson (GSCP), Dr Wilfrido Fernández (Zacarias & Registry) concise overview of the need for the Fernández, Paraguay), Paula Dunbill (Browne Jackson, Directive in order to harmonise EU Nottingham), M Yawar Irfan Khan (United Trademark IP laws and the key provisions & Patent Services, Pakistan) that member states must enact. Implementation of the Directive has been spotty across Europe, in part due to the significance some changes will have on the laws of certain member states, especially the payment of the prevailing party’s costs. In the end, Mr Cantrill noted that delays in implementation as well as the varying levels of sophistication of the members’ courts will continue to Patrick Cantrill (Walker Morris, Mary Bagnall (Mayer Brown Rowe & Mawe), Howard generate forum shopping. Leeds) Ricklow (Collyer Bristow), Sara Ashby (Redd) After the afternoon tea break, Piers Acland gave a talk as to the recent case of Special Effects v L’Oreal, which considered action and issue estoppel and abuse of process. The upshot of this case is that court held that there was no abuse of process for relitigating the matter beyond the opposition and into the High Courts. However, the High Court held that the three facts of (1) limited evidence, (2) no cross examination, and (3) a hearing conducted by trademark Charters MacDonald-Brown & Sara Ashby (Redd) Tibor Gold (Kilburn & Strode) attorneys in the opposition

May 2007 ITMA Review 9 FEATURE FEATURE

proceeding meant that there was Mr O’Reilly also commented on a few that oppositions will likely increase no abuse of process. Mr Acland’s cases of note (Lego Brick). One was a from the current 1,000 per year to comment about avoiding abuse of public order and morality issue in 3,000. process claims is to “Try, but not too which OHIM has taken the position Of course the move to a non-relative hard”. The question is open as to that such issues must be seen grounds examination regime puzzles whether all three of these facts must through the lens of “a reasonable most American trademark lawyers. be present in order to obtain another person with normal levels of It is incumbent upon the ITMA bite at the apple in court. sensitivity and tolerance”. This will soon appear in the exam guide. membership to explain to its This is much different than the US Perhaps OHIM should take a leaf international clients in countries that opposition practice. While the out of the unofficial standard of use relative grounds in examination American opposition procedures are the USPTO – some examiners there the fact that there will be no loss of administrative, they nonetheless can would allow questionable marks if security for their marks. The process be conducted nearly as full throttle the terms of the mark appeared in a will just shift to one of keeping an eye as federal court litigation with the rap song. Apparently, rap lyrics are on search result notices and perhaps exchange of documents, taking of the threshold of public decency in watching services for CTMs. testimony and motion practice. But the States. The final coffee break then occurred even when they are conducted in and the afterwards delegates settled such a manner nothing prevents Whatever complaints the British may have as to OHIM in terms of day-to- in for a rather humorous speech from arguing the matter again in federal Tibor Gold about his personal and court. The federal courts defer to the day operations, it is important to realise that the Americans are in love professional disdain for the apparent experts at the Trademark Office, but absurdity of a CTM application no matter how extensive the process with the CTM. Other than Canada, a CTM is the best-selling overseas filing blocking a Registered Community was before, the federal courts are not Design when the CTM mark bound by a previous decision by the most US law firms offer to their clients. incorporates an element of the RCD Trademark Office. to be registered. Mr Gold was so After a fascinating trip through After Mr O’Reilly fended off some upset as to this situation that he memory lane of brands at the pointed questions, Oliver Morris, a told his client he would handle his Museum of Brands, Packaging and hearing officer of the Patent Office, particular case for free in the name of Advertising the night before, the next gave the UK Trade Marks Registry all that is right and honorable in the day opened with Vincent O’Reilly of Update. He briefly discussed the main trademark world. impact of the Gowers study on the OHIM. The surplus issue and constant In Mr Gold’s case, a prior Madrid- Trade Marks Registry, the new relative complaints about the Office based Class 9 registration for MIDAS grounds regime and future legislative dominated his discussion. The surplus invalidated his client’s “midas and changes. now stands at €200 million, and the device” logo application for a office’s operating budget is around Once again, the office’s name change CDR. Similarly, an attempt by a €120 million annually. Apparently, the was referenced. The internal debate is manufacturer of a cardboard handle solution is that OHIM will continue to how phonetically to refer to the new for DANONE products to register the downwardly adjust its fees. But there name UK-IPO – whether it is “ookie- RCD for the handle was blocked by was no plan for what to do to stop poe” or “ucky-poe”. The name has any the earlier DANONE trademark the constant interest accrual of the event changed as of April 2 and registration because the mark currently banked monies. emails switched over at that time. appeared on the design to be registered. The result in Mr Gold’s The grumbling of the British Mr Morris gave the Office’s theories delegates in the conference about opinion is that trademark rights in on how the new examination regime the Community vis-à-vis designs are OHIM’s lack of interest in customer will operate. In particular, only those complaints was borne out in a survey much broader than that based on marks that the Office believes has a the usual confusion analysis. in which UK attorneys were the least “prospect of success” for opposition satisfied users of OHIM among the will be listed in the search. Therefore, Mr Gold thanked everyone for five countries surveyed (45-46% he believed that slightly more marks listening to his “Swan Song” as he is satisfaction rate). Mr O’Reilly opined than before will be notified. The soon to retire and consult. Little did that perhaps this is because of too applicant will then have a chance to he know that the topic of his final much interaction with the Brits, with argue the inclusion of certain marks speech generally continues to baffle “British Day” and all – such closeness on the list and then the notice will the Americans. The US trademark bar can breed contempt. In any event, he be sent to those UK and Madrid does not understand, nor properly said one should not telephone but rightsholders listed in the notice. CTM employ, the RCD laws, despite efforts rather email the customer satisfaction holders will have to “opt-in” in order of ITMA to help in education on the center as they will respond in two to be given notice. Currently the topic. The undersigned submits days. Some in the audience said the thought is that this fee will be £200 that this is fertile ground for more customer service personnel have not per ten years. Most delegates, along business development in the States replied that fast and are sometimes with the President, found this to be for any delegate in a country with rude to the attorneys ringing. rather steep. In all, Mr Morris believed a design law.

10 ITMA Review May 2007 FEATURE

The meeting in pictures: courtesy of Stewart Rayment, Kingsley & Talboys - continued

Vincent O’Reilly (OHIM) Edouard Schmitt zur Höhe Cynthia Rowden (Bereskin & Sir Hugh Laddie (Schmitt zur Höhe & Ferrante, Parr, Canada) People’s Republic of China)

Cheng Tan (McDermott, Will & Emery) Dr Bankole Sadipo (Nigeria) Stephen Kinsey (Wildbore & ITMA President Phil Harris & JohnDraper (Kodak) Pauline Gan (Thomson Scientific) Gibbons) Vincent O'Reilly (OHIM)

Finally, the conference came to the most notable of which was a conference organiser, an electronic a close with Cynthia Rowden’s Canadian company that claimed that quartet came out to play for the discussion of comparative advertising its toilets flush toys down 70% better delegates on their modified and law in North America. Ms Rowden than the competition. Obviously this amplified violins, viola and cello. The noted the differences in culture was a humorous take on family life group held a contest whereby the between other parts of the world and but one that drew the ire of the table naming all 20 movie songs in North America where comparison competitor. Unfortunately, the their medley would win a prize. After in advertising is not only widely undersigned did not hear how that Dr James furiously wrote down all 20 practiced but accepted. Despite some case ended up as he was lost in song names, he was crestfallen to discover there was no prize at all. early cases in which competitors reminiscence about his own toilet- Nevertheless, their rendition of argued as to the decency of the toy plugging incident years ago. comparison, Ms Rowden commented “Eleanor Rigby” was unforgettable. Her speech was well received and that these cases have lessened over In the end the conference was even more so when she announced the years as competitors now allow informative and enjoyable. For those much more aggressive advertising as a reward for all the brave souls that of us not from the UK, the topics were as to each others’ products. stayed she would pass out traditional very helpful for understanding the Canadian maple syrup sweets. She gave examples of when using the current struggles ITMA members face term “better” or “superior” can result The final event for the delegates was on a daily basis with both procedural in liability in Canada or America. In the Dinner and Dance which took and substantive matters. It was well some cases, these countries part place at the Conference hotel. There worth attending. company on what is unfair. But by were no speakers from Ireland this And it goes without saying that the year, although the speaker from last and large, such claims have to be Americans are still charmed by the year was seen dancing excessively, substantiated as they are seen as British accents and penchant for sometimes alone. Instead, after a brief making distinct claims as to quality. tea times. speech by ITMA President Philip Ms Rowden gave several light- Harris thanking all who contributed Christopher J Schulte, Merchant & hearted examples of some to the event, particularly Ros Stanger Gould PC, Minneapolis, Minnesota, comparisons in North America media, who will be leaving ITMA as [email protected]

May 2007 ITMA Review 11 FEATURE FEATURE Judicial Diversity Review: merit remains the sole criterion for judicial selection! If, up to this point, Lord Falconer’s Judicial Diversity Review has registered only on the periphery of your consciousness, you are probably in very good company. Of the tens of thousands of solicitors and barristers in England and Wales, only a minute percentage entertain aspirations of holding judicial office, and as trade mark attorneys we have hitherto had no option but to take our judges as we find them, with no prospect of changing the system from within.

All this could be about to change, possibility of a judicial career be time, Dr James, with significant input however: if certain sections of the limited largely to white, middle-class, from our current president, Philip press are to be believed, at some male, Oxbridge and public school- Harris, entered into an exchange of point in the not-too-distant future educated lawyers? This is obviously a correspondence with the head of the legal establishment expects to very broad review, in the context of the DCA’s judicial appointments see trade mark attorneys forming which our Institute’s lobbying for a policy unit and with Lord Filkin, an orderly queue at the door of the role for trade mark attorneys in the Parliamentary under-secretary of Department for Constitutional Affairs, judiciary represents a fairly narrow state, to seek specific confirmation of applications for judicial office in hand. and modest objective. However, as the eligibility of trade mark attorneys judges had previously only been for judicial appointment. In January What is the Judicial Diversity Review? recruited from the ranks of solicitors A review of the DCA website finds 2005, the Institute prepared and and barristers with 7 or 10 years’ references to the desirability of submitted, jointly with CIPA, a formal rights of audience (depending enhancing judicial diversity dating response to the DCA consultation back to the year 2002. Since then, a paper on Increasing Diversity in the consultation has taken place with the As a result of the Judiciary. All of these efforts met with stated aim of increasing the number encouragement from representatives and range of those eligible to apply Judicial Diversity of the DCA, although in terms so for judicial office; encouraging greater diplomatic that one cannot help diversity of applicants in respect of Review, changes but read between the lines that disability, ethnic origin, gender and the prospect of specialist trade professional background; promoting intended to help mark judges recruited from our diversity through fair selection broaden eligibility for ranks was not regarded, perhaps processes and ensuring that a judicial understandably, as the most role is made feasible for a greater some judicial posts burning issue on the agenda. range of applicants through flexible have been incorporated In addition to these lobbying working patterns for judicial office activities, ITMA has published press holders. In short, by broadening releases from time to time, setting eligibility criteria, encouraging a in the Courts and out to explain ITMA’s objectives in wider range of applicants, open- Tribunals Bill. the context of the Judicial Diversity minded review of applications Review. In January 2005, for example, and promoting flexible working ITMA and CIPA stated: requirements, the review was on the appointment), and as the intended to encourage the progress consultation seemed initially to be “The Institutes believe that, in of suitable applicants at every step of aimed at solicitors and barristers only, view of their specialist qualifications the way. Practical encouragement, in the extension of the eligibility criteria and experience, there should be the form of provision for would-be to include trade mark attorneys did opportunities in the Patents Court applicants to shadow established not seem a foregone conclusion, and and county courts (including the judges, to get a feel for the demands Council deemed it prudent to embark Community trade mark courts and of the job, and relaxation of the rule on a lobbying campaign. Patents County Court) for their against judges returning to practice, Our thanks are due to those members members to sit in a judicial capacity was also put forward. of the Institute who attended road in appropriate intellectual property cases, including in appeals from the shows held by the DCA to express The basic aims of the consultation Patent Office and Trade Marks concern that the consultation paper and the thoroughness of its Registry.” implementation are praiseworthy. had made no direct mention of the Provided that applicants have the position of trade mark attorneys and Despite the obviously enlightened necessary qualities, why should the patent attorneys. Our president at the and well-intentioned thinking behind

12 ITMA Review May 2007 FEATURE the judicial diversity consultation, and barrister, solicitor or trade mark courts, Patents County Court clarification provided by ITMA and attorney, does not guarantee and in appropriate Tribunals (eg, CIPA as to the role its members might suitability for judicial appointment, Appointed Person). play, the process inevitably attracted but is merely the starting point for • Legal executives will also be eligible criticism along the way from the legal eligibility. On this basis, however, a for certain appointments. establishment and the press. senior trade mark attorney might reasonably be expected to make a According to the DCA Judicial In the Times on 14 July 2005, under better job of deciding a trade mark Diversity Team the eligibility changes the rather alarmist headline “4 GCSEs? dispute than, say, a divorce lawyer. form a relatively small part of the Bill then you can be a Judge”, the paper’s which may therefore, one imagines, legal editor expressed the opinion Where are we now? As a result of the take some time before it becomes that the reforms would create a Judicial Diversity Review, changes law, and even then it seems that the career path “from the filing cabinet to intended to help broaden eligibility Lord Chancellor must make an order the bench”, drawing support from for some judicial posts have been to confirm eligibility. It will take even concerns expressed by Lord Wolf, the incorporated in the Courts and longer, of course, before we see the Lord Chief Justice, that measures Tribunals Bill which is currently first trade mark attorney judge sitting intended to enhance diversity might making its way through Parliament. in one of our specialist IP courts, threaten the quality of our judiciary. The proposed changes which have but in the meantime the express The article envisaged that legislation emerged from the review are: inclusion of trade mark attorneys would “open up the bench beyond • A change in the focus for eligibility, within the new eligibility criteria is a solicitors and barristers to let 4,000 from possession of rights of coup for the Institute, and a step legal executives and 1,500 registered audience to having post-qualification forward for our profession. Taking a patent agents and trade mark legal experience. Generally, the broader view, if the review succeeds attorneys apply for judicial office”. number of years’ experience require in its aim of maintaining the quality The Telegraph ran an article in a will be reduced from 7 to 5 years, of the judiciary through drawing on similar vein: and from 10 to 7 years, depending reserves of hitherto untapped talent, on the judicial office. and as a consequence reinforces “Trade-mark (sic) attorneys? Patent public confidence in the court agents? Who is Lord Falconer kidding? • Registered patent agents and trade system, it will have secured the I have no wish to offend intellectual mark attorneys, with the specified reputation of our courts as amongst property specialists, who no doubt number of years’ experience, will be the best in the world. perform an excellent service for their allowed to apply for salaried and commercial clients, but why does filing part-time fee-paid appointments John Reddington, Jones Day, an application to register a trade mark in the Patents Court, the county [email protected] or conducting litigation in the Patents County Court give you a better understanding of the problems faced by estranged parents seeking contact with their children or debtors being evicted from their homes?” This press coverage conjures up a nightmarish vision of thousands of poorly-educated and power-crazed quasi-lawyers besieging the Lord Chancellor’s office, demanding the right to hear divorce cases in the Family Division of the High Court. Most ITMA members will find it difficult to recognise themselves in this portrayal, and would positively blanch at the prospect of sitting as a judge in anything other than a straightforward trade mark or passing off case. The press reaction overlooked the key issue of the review, which, in the words of Lord Falconer, is that “there should only be one common denominator when it comes to appointing people to judicial office – merit”. The effect of this, it should go without saying, is that formal qualification, whether as

May 2007 ITMA Review 13 CASE COMMENT CASE CASE COMMENT No respite for Respicur in Respicort case Case T-256/04 Mundipharma AG v OHIM 13 February 2007. RESPICORT/RESPICUR The CFI annulled the decision by OHIM that the opponent’s earlier mark RESPICUR was dissimilar to the applicant’s RESPICORT and would not lead to confusion among the relevant public. The goods were in class 5 and the relevant public was deemed to be made up of two groups, professionals and average consumers of certain pharmaceutical preparations. The former would not be confused by the marks, but the latter, finding the marks similar, would. The applicant before the Court of the Community trade mark purposes of the opposition to the First Instance, a Swiss company called application, the earlier Community precise description of its current Mundipharma AG, was the owner trade mark has been put to genuine products (‘multi dose dry powder of an earlier German national use in the Community in connection inhalers containing corticoids, mark RESPICORT, registered for with the goods or services in respect available only on prescription’). ‘pharmaceutical and sanitary of which it is registered and which he This, it argued, would restrict its preparations; plasters’ in International cites as justification for his opposition, economic freedom of action. The Class 5, and the unsuccessful or that there are proper reasons issue, therefore, was the relationship opponents before the Opposition for non-use, provided the earlier of the non-contested products as Division of OHIM and thereafter the Community trade mark has at that described to the Class 5 heading of Second Board of Appeal against date been registered for not less than the earlier mark (‘pharmaceutical registration of the Community five years. In the absence of proof to and sanitary preparations; plasters’). application RESPICUR for ‘therapeutic this effect, the opposition shall be rejected. If the earlier Community Guidance on this matter is found in preparations for respiratory illnesses’, Case T 126/03 Reckitt Benckiser also in Class 5. The intervener in this trade mark has been used in relation to part only of the goods or services (España) v OHIM – Aladin (ALADIN) CFI case – the original applicant of [2005] ECR II 2861, paragraphs 45 the new mark – was Altana Pharma for which it is registered it shall, for the purposes of the examination of and 46 which deals with the issue AG, a German company. the opposition, be deemed to be of subcategories. It is worthwhile Goods relevant to the opposition registered in respect only of that quoting these two paragraphs: part of the goods or services. 45 … if a trade mark has been When Altana Pharma (hereafter ‘AP’) registered for a category of goods or put the opponent to proof of use of 3. Paragraph 2 shall apply to earlier services which is sufficiently broad for its class 5 goods according to Article national trade marks referred to in it to be possible to identify within it a 43(2) and (3) of the CTMR, it did so Article 8(2)(a), by substituting use in number of sub-categories capable of without challenging the products it the Member State in which the earlier being viewed independently, proof national trade mark is protected for knew to be actually on the market, that the mark has been put to use in the Community. namely ‘multi dose dry powder genuine use in relation to a inhalers containing corticoids, Instead of the opposition being part of those goods or services available only on prescription’. In rejected, there remained a basis for affords protection, in opposition the event, Mundipharma was unable the continuance of the opposition proceedings, only for the sub- to provide satisfactory evidence for in the goods that were outside the category or sub-categories to which the genuine use or proper reasons scope of the initial request for proof the goods or services for which the for non-use as per the Regulation, of genuine use. The reason for this in trade mark has actually been used which – to remind us – states: law was that proof of use of the mark belong. However, if a trade mark has Article 43(2) and (3) of Regulation on which the opposition is founded been registered for goods or services defined so precisely and narrowly No 40/94 provides: need be furnished only when requested by the applicant. that it is not possible to make any 2. If the applicant so requests, the significant sub-divisions within the proprietor of an earlier Community Although accepting the finding category concerned, then the proof trade mark who has given notice of that genuine use of the mark of genuine use of the mark for the opposition shall furnish proof that, had not been proven, Mundipharma goods or services necessarily covers during the period of five years contested the restriction of the entire category for the purposes preceding the date of publication of protection under the mark for the of the opposition.

14 ITMA Review May 2007 CASE COMMENT

46 Although the principle of partial assessment of the likelihood of professionals and patients suffering use operates to ensure that trade confusion, regard is to be had for from respiratory illnesses, in their marks which have not been used for all significant factors, including the capacity as end consumers. The latter a given category of goods are not relevant public or consumers of the would, certainly, generally show rendered unavailable, it must not, goods: “account should be taken a higher than average level of however, result in the proprietor of of the average consumer of the attention. Also, as the opponent’s the earlier trade mark being stripped category of products concerned, mark was a German national of all protection for goods which, who is reasonably well informed registration, the relevant public although not strictly identical to and reasonably observant and were all Germans. those in respect of which he has circumspect. It should also be borne succeeded in proving genuine use, in mind that the average consumer’s Likelihood of confusion - similarity are not in essence different from level of attention is likely to vary of signs them and belong to a single group according to the category of goods or Whereas OHIM had found for the which cannot be divided other than services in question (see, by analogy, dissimilarity of signs, the CFI found in an arbitrary manner. The Court Case C 342/97 Lloyd Schuhfabrik for similarity. But lest this should observes in that regard that in Meyer [1999] ECR I 3819, paragraphs immediately suggest how fickle, practice it is impossible for the 25 and 26).” subjective and arbitrary the whole proprietor of a trade mark to prove European system of comparison of that the mark has been used for all signs is, it is important to state at conceivable variations of the goods According to settled once that in this decision the nature concerned by the registration. of the relevant public was quite Consequently, the concept of ‘part case-law, the global crucial in the outcome of the analysis of the goods or services’ cannot be by the CFI. Because end consumers taken to mean all the commercial assessment of the and health care professionals form variations of similar goods or services likelihood of confusion, separate groups of the relevant but merely goods or services which public, it may be that the signs are are sufficiently distinct to constitute as far as concerns perceived differently, especially in coherent categories or sub- their conceptual connotations. categories. the visual, aural or Conceptual differences, in this case, will play a prominent role in the The court found that the category conceptual similarity global assessment of the likelihood of of goods of the earlier mark was confusion for these particular groups. sufficiently broad for a number of the opposing signs, of sub-categories to be found The principles used in the reasoning within it which could be viewed must be based on the of the Court were taken from the independently, but it rejected the overall impression given PASH/BASS case: sub-category arrived at by the Board of Appeal – which was the precise by the signs, bearing in According to settled case-law, the description of the product as actually global assessment of the likelihood marketed. It argued, on the contrary, mind, inter alia, their of confusion, as far as concerns the that the category must reflect the visual, aural or conceptual similarity specific needs of the consumer in distinctive and of the opposing signs, must be based searching for a product or service, dominant components. on the overall impression given by the purpose or intended use being the signs, bearing in mind, inter paramount since this is a criterion alia, their distinctive and dominant used in making purchases. A components (see Case T 292/01 AG had argued that the opponent’s description focusing on active Phillips Van Heusen v OHIM – Pash products were only available on ingredient, eg ‘glucocorticoids’ (as Textilvertrieb und Einzelhandel prescription, thus the relevant public proposed by the Intervener) was (BASS) [2003] ECR II 4335, paragraph were health care professionals. In inadequate. Instead, the court 47, and case-law cited). any event, patients tend to show a defined the appropriate sub-category particularly high level of attention in In that respect, conceptual as ‘therapeutic preparations for choosing therapeutic preparations differences which distinguish the respiratory illnesses’. This happened intended to treat serious health marks at issue may be such as to to be the same as the applicant’s counteract to a large extent the heading, hence the relevant goods problems such as those at issue in the present case. visual and aural similarities existing of the opponent were judged to be between the marks. For there to be identical, and not a self-contained The court, in its turn, held that as such a counteraction, however, at sub-category. the relevant goods were the (wider) least one of the marks at issue must Likelihood of confusion – the category of ‘therapeutic preparations have, from the point of view of the relevant public for respiratory illnesses’ which could relevant public, a clear and specific be both over the counter and meaning so that the public is capable For the purposes of Article 8(1)(b) of prescribed preparations, the relevant of grasping it immediately, and the the CTM Regulation, and the global public is made up of both health care other mark must not have such a

May 2007 ITMA Review 15 CASE COMMENT CASE CASE COMMENT

meaning or must have a totally distinction between the vowels ‘u’ be construed by those same groups different meaning (BASS, paragraph and ‘o’, and the letter ‘t’ in the earlier of the public as referring to the words 54). mark. That being so, those differences ‘cure’ or ‘heal’. are not sufficient to offset the Global assessment of overall The court disagreed. First, it noted identical nature of the first two impression: RESPICORT (earlier mark) that, although normally the average syllables and the similarity due to the v RESPICUR consumer perceives a mark as a presence of the consonants ‘c’ and ‘r’ whole and does not proceed to With regard to the visual comparison, in the pronunciation of the third analyse its various details (Lloyd the court found close similarity: the syllable. Schuhfabrik Meyer, paragraph 25): words comprise a single word, are of OHIM’s argument, on the other ‘the fact remains that, when hand, emphasised dissimilarity: perceiving a verbal sign, he will break “Phonetically, the mark applied for it down into elements which, for him, Amongst the ends with a long and low-pitched suggest a concrete meaning or which sound because of the combination of resemble words known to him’ (Case professional public the letters ‘u’ and ‘r’. By contrast, the T 356/02 Vitakraft-Werke Wührmann component at the end of the earlier v OHIM – Krafft (VITAKRAFT) [2004] a conceptual mark is characterised by the hard ECR II 3445, paragraph 51). sound of the letter ‘t’, which is Next, the court noted that the difference would pronounced by the German public. conceptual perception of the be noted since But where the court most differed opposing marks will be different from OHIM was in the analysis of according to which group of the the marks would be conceptual differences. OHIM had relevant public is being considered. understood by maintained that the conceptual Amongst the professional public a differences between the signs were conceptual difference would be reference to their such as to counteract any visual or noted since the marks would be phonetic similarities. It had argued understood by reference to their respective elements, that: respective elements, namely namely ‘respiratory’ ‘the component ‘respi’ will be ‘respiratory’ for ‘respi’, ‘cure’ or ‘heal’ for understood by the relevant public ‘cur’ and ‘corticoids’ for ‘cort’. Thus, by for ‘respi’, ‘cure’ as being descriptive [i.e. to do with breaking down the two marks into respiratory illness] and will thus not their respective components, they or ‘heal’ for ‘cur’ be perceived as being an indication will interpret the mark applied of commercial origin. Accordingly it for as corresponding to a ‘cure for and ‘corticoids’ cannot contribute to establishing a respiratory problems’ and the earlier similarity between the signs in mark as designating ‘corticoids for ‘cort’. question. The component ‘cort’ will intended for respiratory illnesses’. be perceived as being a reference to In this there was a certain degree of corticoids by the professional public conceptual divergence, even though similar length and share the first six and by some end consumers. they ‘share the general idea of being letters ‘respic’ and the eighth letter ‘r’. Likewise, the component ‘cur’ will linked to respiratory issues.’ The other differences – between the vowels ‘u’ and ‘o’ or the addition of the letter ‘t’ in the earlier mark – were Summary: points of interest in the case not such as to eliminate the visual • The onus is on the applicant in an • The relevant public may be similarity (OHIM had argued that opposition proceeding to define comprised of different groups with these create a perceptible difference). the scope of its request for proof different levels of education and of genuine use. attentiveness. With regard to the phonetic comparison, once again the court • Proof of use in opposition • Conceptual dissimilarities may to a found for close similarity. Its proceedings, where a category large extent counteract visual and argument is as follows: heading is broad enough to have aural similarities. sub-categories, affords protection … the opposing marks will be only for the sub-category or sub- • Verbal signs, for the purpose of pronounced as three syllables, with categories to which the goods or conceptual comparison, may be the pronunciation of the first two services for which the trade mark broken down into elements not- syllables ‘respi’ being identical in both has actually been used belong. withstanding the general rule that cases. The pronunciation of the third marks are perceived as a whole. syllable, ‘cur’ and ‘cort’ respectively, • In arriving at a sub-category, it is • Different groups may have different points both to similarities, caused by fundamental to consider the conceptual perceptions of the same the presence of the consonants ‘c’ and purpose or intended use of the sign. ‘r’, and to differences, due to the product or service in question.

16 ITMA Review May 2007 CASE COMMENT

With regard to end consumers, their Felindil v Plendil, O-79-07. Ratiopharm GmbH applied to register level of attention would be higher FELINDIL/Felindil as a series of two marks for “pharmaceutical than average, and so being able to: ‘ …distinguish the component ‘respi’ and veterinary preparations; sanitary preparations for medical in the two marks in question and to purposes; dietetic substances adapted for medical use; food for understand its conceptual content, babies; plasters; materials for dressings; materials for stopping which refers generally to the nature teeth; dental wax; disinfectants; preparations for destroying of their health problems.’ vermin; fungicides; herbicides” in Class 5. This notwithstanding,‘their limited knowledge of medical terminology will prevent them from being able to discern the conceptual references of Felindil and Plendil... the components ‘cur’ and ‘cort’.’ The result is that there will be close enough to confuse? conceptual similarity since the first element of each word would be the only one with a clear and definite meaning. The court held that this first component, despite its descriptive character, was prominent. Because it takes up ‘two or three syllables and is longer than the respective second components,’ it makes a ‘significant Astrazeneca AB opposed the The Appointed Person rejected the contribution to the overall impression mark in relation to “pharmaceutical issue of “peaceful co-existence” as produced by the two signs in prepartions; sanitary preparations for the evidence is too flimsy to carry question’. Thus similarity should medical purposes; dietetic substances the inference that there has been not be discounted on account of adapted for medical use”. They relied peaceful co-existence in relation to descriptiveness. The professional on their earlier registration for the products on which the two public, also, would probably see both PLENDIL under section 5(2)(b) and marks were used. He referred to marks as descriptive – of intended 5(4)(a) of the Trade Marks Act 1994. The European Ltd v The Economist use or of active ingredient – but Newspaper Ltd, Compass Publishing would still perceive both marks in Astrazeneca used the mark PLENDIL BV v Compass Logistics Ltd and their respective overall impressions. in the United Kingdom since June Phones 4U Ltd v Phone 4u.co.uk. 1991 on their products consisting In conclusion, the court found that of an active ingredient felodipine The Appointed Person held that the the ‘opposing marks are somewhat for the treatment of angina and hearing officer was correct that the marks were unable to co-exist in similar for the professional public and hypertension. The hearing officer the market for pharmaceutical highly similar for the end consumers. upheld the opposition in relation preparations as they were confusingly For the latter, the marks are visually, to all of the goods opposed by similar. He referred to the following phonetically and conceptually similar. Astrazeneca. The hearing officer cases in support of the same: The professional public, by contrast, found the goods to be identical will perceive a certain conceptual and the marks to be aurally similar • INADINE and ANADIN (Johnson & difference between the two marks, and relied on Professor Annand’s Johnson’s Application) [1992] RPC which is not, however, sufficient to approach in Oropram/Seropram. 421; counteract fully the visual and phonetic similarity which has Ratiopharm appealed on the basis • VICROM and EYE-CROM (Fisons Plc v been established’. that the marks are not confusingly Norton Healthcare Ltd [1994] FSR similar and that they can co-exist 745; and The overall conclusion reached in the mark for pharmaceutical • OROPRAM and SEROPRAM (Omega was that there was a likelihood of products. Ratiopharm argued that confusion between the mark applied Farma EHF’s Application) BL O-208- they have been marketing their 02, 8 May 2002). for and the earlier mark in the minds products in the United Kingdom of German end consumers, but not since October 2003 and there have In all these cases, the marks were for the professional public. Despite been no instances of confusion. found be confusingly similar even if the latter, and because of the former Astrazeneca cross-appealed with the beginning syllables were different group, the decision of the second respect to three matters for which as that in FELINDIL and PLENDIL. Board of Appeal of OHIM was they had not obtained orders during annulled. Accordingly, the appeal was dismissed. the interim stages. However, the Roman Cholij, Appointed Person refused to Remya Suresh, Ravindran Associates, [email protected] entertain the appeal. [email protected]

May 2007 ITMA Review 17 PEOPLE PEOPLE NEWS OF Letter to the editor In July 2006, I filed a trade mark oppose the application. UK right MEMBERS application at the UK Trade Marks holders will be notified automatically. Registry. The Examination Report EU right holders will only be notified arrived in September 2006 and cited if they so request. You should be two prior registered marks. aware that any opposition may result in adverse costs for the applicant. In March 2007, I wrote to the Details of the Registrars published Registry asking for one citation to scale of costs can be found on our be waived, and for the application website. to be suspended for three months (as it was looking like the registration We are expecting that a large number of the second mark cited might not of applicants will wish to proceed in be renewed). this way. This will mean that we will have a large number of cases to The reply from the Registry agreed process in October. Therefore both waiver and a suspension we expect that applications Frank B Dehn & Co is pleased to generally (ie linked to periodic review, suspended will actually proceed announce that, as from 1 April 2007, rather than fixed at three months). to advertisement for opposition Elaine Deyes (above) became a The reply went on to say : purposes in November or December. partner in the firm, telephone +44 Letters will be sent advising the exact (0)20 7632 7200, fax +44 (0)20 7353 “You may be aware we are intending date of the publication of marks.” 8895. to change our practice in relation to section 5 objections from 1st October It is, of course, appreciated that the 2007. From that date, we propose Registry has a discretion to suspend that we will no longer refuse trade any pending application. Also, it is mark applications on this basis. understandable that the Registry Instead applicants will be able to wants to make preparations for the decide if they wish their application implementation of proposed changes to proceed, notwithstanding the to legislation. The interest over time, earlier marks. however, is whether exercise of If an applicant decides to do this, we discretion will fit with preparations? intend to inform the owners of earlier Yours faithfully conflicting trade marks identified when the application proceeds Sally Cooper to publication in our Trade Marks Trade Mark Attorney Journal. Owners of any earlier rights Altrincham, Cheshire Barker Brettell is pleased to will then have the opportunity to [email protected] announce that Louis Pittortou (above) and Katie Oliver (below) have joined the Partnership Dilbert’s take on IP issues... with effect from 1 April 2007. Louis can be contacted at [email protected] and Katie can be contacted at [email protected].

18 ITMA Review May 2007 PEOPLE Trade mark of the month STUDENT COLUMN Exam results due!

The exam results are now available and we hope that you have received good news. We welcome your feedback (good or bad) in relation to the 2006 examinations; please email [email protected]. Exam scripts will be destroyed on 2 July 2007, but can be requested prior to this, free of charge. Exam scripts can be helpful if you need to resit any exams and are essential if you want to have a one-to-one consultation. For further details see the student section of the ITMA website. This year the residential revision courses are being held at Aston Business School in September 2007. Application forms are available on Who’s who in ITMA the ITMA website and please make Officers: sure you register before 2 July 2007. President: President: Philip Harris, [email protected] First Vice President: Gillian Deas, [email protected] One-day seminars Second Vice President: Maggie Ramage, [email protected] Immediate Past President: Stephen James, [email protected] The foundation level one-day Treasurer: Catherine Wolfe, [email protected] seminars are continuing to prove popular. At present, the confirmed Secretary and Registrar: Margaret Tyler MBE, [email protected] seminars are: Committee Chairmen: • UK Trade Mark Law, 8th May (full) Continuing Professional Development: David Butler, [email protected] Designs: Imogen Wiseman, [email protected] • Foreign Law, 5th June Professional Guidance & Disciplinary: Don Turner, • Exam Technique, 9th October [email protected] Education & Training: Gary Tarrant, [email protected] The Design & Copyright seminar Formalities Course: Francis Preedy, [email protected] proved to be very popular and it is General Purposes & Finance: Ian Buchan, [email protected] anticipated that a second seminar ITMA Review: Chris McLeod, [email protected] will be held in September or Laws & Practice: Stephen James, [email protected] October of this year. Membership: John Reddington, [email protected] As ever, we look forward to receiving Programme: Alice Mastrovito, [email protected] your comments and suggestions. Public Relations: Graeme McKinnon, [email protected] Please email Administration: [email protected]. Gillian Rogers, [email protected] Charlotte Duly Angela Williams, [email protected] [email protected] Valerie Rice, [email protected] Ruth Bond Jane Attreed, [email protected] [email protected] Geraldine Flood, [email protected] Public Relations Manager: Ken Storey, [email protected] Matthew Playle Editor, ITMA Review: Kelly Robson, [email protected] [email protected]

May 2007 ITMA Review 19 AND FINALLY... AND FINALLY... FORTHCOMING EVENTS 2007 28 April – 2 May INTA Chicago 18 May IBC Legal Conferences Holiday Inn, Regents Park Early resolution of IP London (6 ITMA CPD Points) 22 May Evening Meeting: Relative Grounds Royal College of Surgeons (2 ITMA CPD Points) (1 Law Society David Keeling, OHIM Hour) (1 Bar Council Hour) 23 May ACG Spring Conference The Belfry, Nottingham UK, Europe & Cyberspace 23 May CIPA Seminar : The End of Prior Rights CIPA Hall Examination as We Know It (2 ITMA CPD points) 1 – 6 June FICPI Boston 20 – 23 June ECTA Deauville 26 June Evening Meeting: UK Cancellation Royal College of Surgeons & Invalidity Decisions (2 ITMA CPD David Crouch, Bromhead Johnson Points) (1 Law Society Hour) (1 Bar Council Hour) 10 July Summer Event Westminster Boating Base 24 July Evening Meeting: Patent Office Royal College of Surgeons Decisions (2 ITMA CPD Points) (1 Law Linda Harland, Reddie & Grose Society Hour) (1 Bar Council Hour) 18 September Evening Meeting: Overlap between Royal College of Surgeons trade mark & medicines regulation Gordon Wright, Elkington (2 ITMA CPD Points) (1 Law Society and Fife LLP Hour) (1 Bar Council Hour) 18 – 21 September Marques Porto 27 – 28 September ITMA Autumn Conference Treviso & Venice (9 ITMA CPD Points) 3 – 6 October PTMG Budapest 11 – 13 October ECTA Council Meeting Riga 23 October Evening Meeting: ECJ & CFI Royal College of Surgeons Decisions (2 ITMA CPD Points) Jonathan Thurgood (1 Law Society Hour) (1 Bar Council Carpmaels & Ransford Hour) 4 – 11 November FICPI Seville 7 – 10 November INTA Mid Year Orlando 27 November Evening Meeting: Designs London Chamber of Commerce (2 ITMA CPD Points) (1 Law Society Hour) (1 Bar Council Hour) More details can be found at www.itma.org.uk Bold type indicates an ITMA organised event

20 ITMA Review May 2007