Trade Mark Newsletter – April 2013

Trade Marks Update

The last two months have seen Beck Greener’s trade mark group scoring a number of significant wins for its clients. In this newsletter we report on three such cases.

Aveda Corporation v Dabur (India) Limited first, there is no requirement in Medion that the tm: DABUR UVEDA 13th March 2013 (click here) common element between the marks in question In 2006 the European Court in Medion v Thomson be “dominant”. Second, he rejected Dabur’s had found that a defendant does not necessarily contention that Medion was an exception to the avoid infringement by putting its company name usual requirement that the similarity of marks in front of an earlier trade mark, so long as in the be appreciated globally, and that the principles combination which is formed, the common element arising from Medion should therefore be narrowly retains an “independent distinctive role”. construed. He found that Medion was simply the application of the usual rules of comparison to a Medion concerned the alleged conflict between particular kind of case. He therefore dismissed the marks LIFE and THOMSON LIFE. There the suggestion that Medion was confined to is no obvious conceptual synergy between situations where the “common” element of the “THOMSON” and “LIFE” and accordingly, the marks concerned was identical. He allowed Aveda’s word LIFE in THOMSON LIFE retained the required appeal and refused Dabur’s application for the “independent distinctive role”. Compare for identical and similar goods concerned in question. instance the marks JOY and COMFORT & JOY. The latter is likely to be read as a whole since On a separate issue, the judge also considered COMFORT & JOY is, itself, a well-known phrase. the question of whether the term “cleaning, Accordingly JOY would probably not retain the polishing, scouring and abrasive preparations required “independent distinctive role” in the and substances” which was amongst the class combined mark, and the likelihood of confusion 3 goods claimed in Dabur’s application, included with JOY significantly diminished. such goods “for use on the body”. The judge acknowledged that such items as exfoliants, The principle set out in Medion is a matter of derma-abrasives and skin polishers, as well as common sense. There would be mass publication soaps, were commonly found amongst skin care confusion if Pepsi were to sell its products as PEPSI ranges. However, he considered that these were COCA COLA or vice versa. more properly subsumed under the category “cosmetics” and “skin care preparations” and In its opposition to an application for the mark that they were not included within the general DABUR UVEDA, Aveda argued that the same term “cleaning, polishing, scouring and abrasive principle should apply. The UKIPO tribunal agreed preparations and substances” which, he found, that UVEDA was close to AVEDA and that further, means industrial or household products. there was no conceptual synergy between UVEDA and DABUR. However, it concluded that the word Ian Bartlett of Beck Greener presented the case UVEDA was not dominant in DABUR UVEDA and in the High Court for the successful appellant that there was no likelihood of confusion. Aveda Corporation.

Aveda appealed against the UKIPO’s finding to the Moral and action points UK High Court. In his decision Mr. Justice Arnold Adding a “house mark” or some other distinctive carefully reviewed the case law and confirmed element to what would otherwise be a potentially Trade Mark Newsletter – April 2013

conflicting mark will not necessarily avoid and towards Sly Stone. It went on to explain infringement even where the “common” elements that “fair play” can be understood as honest are non-identical. commercial practices and accepted business ethics. It found Even Street had breached Applicants should not rely exclusively on broad this duty and that by filing the application it terms when framing specifications of goods and had attempted to misappropriate the goodwill services. Broad terms should be claimed where associated with the name of the group. appropriate but the specific goods, using their It therefore ordered that the registration be common commercial names, should be removed from the CTM register. separately claimed. Beck Greener acted for the successful party, Sylvester Stewart (aka Sly Stone) v Even Sly Stone, on the instructions of Allens Law Street Productions Limited tm SLY & THE Group in California. FAMILY STONE 3rd April 2013 Sly Stone had been the frontman of the US music Moral and action points group SLY & THE FAMILY STONE. The group The tribunal’s use of the phrase “fair play” to came to prominence in the 1960s and early 70s convey what is meant by “good faith” is worth with a string of hit records. Sly Stone is considered noting. Taken at face value, “fair play” would seem as one of the founding fathers of funk and was to require more than just “honesty”. If “fair play” inducted into the Rock & Roll Music Hall of Fame comes to be the norm against which such cases in 1993. are judged, the scope of what constitutes “bad faith” could well be broadened. In 2004 Even Street Productions, a US company controlled by Jerry Goldstein, whom Sly Stone It is also interesting to see that OHIM’s had previously engaged as his business manager, Cancellation Division had no hesitation in filed a Community Trade Mark application for SLY construing the meaning of documentation & THE FAMILY STONE covering music recordings expressly stated to have been created under and providing online music group information. California law. Indeed it had rejected a request by Even Street to have the proceedings Sly Stone commenced cancellation proceedings suspended pending the outcome of corresponding before OHIM in September 2010 claiming that the litigation in the US. Parties to CTM proceedings application to register the mark had been filed should therefore be prepared to bring evidence in bad faith. Even Street relied on documents to show how a document would be construed purporting to show that Sly Stone and other under the national laws which govern it rather than members of the group had assigned their rights expecting OHIM to cede or suspend jurisdiction. in the name SLY & THE FAMILY STONE to Even Street in the early 1990s. Sly Stone contended Julius Sämann Limited v L&D SA TM Aire that the documentation did not show any such Limpio & device 15th April 2013 (click here) assignment but at most assigned the right to Julius Samänn Ltd (JSL) makes collect royalties on his behalf. He argued that the the “Magic Tree” range of in-car other members of the group had no right to the air fresheners, sometimes seen name capable of being assigned. hanging from rear-view mirrors. JSL owns numerous registrations In an unusually lengthy decision, OHIM’s for marks incorporating a silhouette Cancellation Division carefully reviewed the of a fir tree, including a Community evidence filed by the parties. It concluded that Trade Mark registration (image left). the documentation evidenced by Even Street did not demonstrate an assignment of any The Spanish company, L&D, also makes in-car air proprietary right in the name and trade mark fresheners including a number of ranges of such SLY & THE FAMILY STONE. It made no finding as products in the shape of trees. For many years, to whether Sly Stone exclusively owned the mark, and in many countries, the two companies have as against the other members of the group, but been involved in trade mark and design litigation found that he at least had a substantial economic including before the CTM office ending in the interest in mark. The tribunal concluded that the ECJ’s decision (summarised here), and the UK contractual relations between the parties had High Court ending in the decision of Kitchen J imposed a duty of “fair play” on Even Street (as he then was) in the “Tetrosyl” case (click here). Trade Mark Newsletter – April 2013

The present case involved a long The law concerning importing of counterfeit standing British designation of a goods into the EU has been seen as unnecessarily International Registration which L&D burdensome for rights owners, who need had obtained in 1998 (image left). to establish that goods are the subject of a commercial act directed at EU consumers before In 2011 JSL commenced invalidation having them declared counterfeit. The new directive proceedings before the UK trade mark will provide clarity, so that rights owners can more office claiming that L&D’s registration immediately prevent third parties from marketing conflicted with JSL’s registered rights and its goods bearing an identical or similar mark, whether rights established through use. L&D claimed, inter they are released for distribution or not. alia, that the marks in question were dissimilar but that in any event, JSL had acquiesced in Harmonization of official fees, examination the registration and the use of the mark for the procedure and opposition procedure are all statutory 5 year period and was therefore not mooted. In some member states, invalidity of a entitled to the declaration of invalidity it sought. registration is dealt with through the courts, a The case was heard in November 2012 and the costly and lengthy procedure in many cases. The decision issued earlier this month. proposed new directive will provide for revocation and cancellation for non-use in new administrative The tribunal considered the marks were not procedures before national offices, which is sufficiently similar either to cause a likelihood of good news for rights owners. Fees too are to be confusion, to provide any unfair advantage to harmonized, with the introduction of a, presumably L&D or to damage the distinctiveness or repute lower fee for CTMs applications in one class. In of JSL marks. JSL’s application for invalidity was future each class of goods or services beyond the therefore refused. first will require an additional class fee.

Beck Greener acted for the successful party, L&D. It is proposed that trade marks in languages from outside the jurisdiction will be examined on Moral and action points absolute grounds after translating them into the The Hearing Officer did not consider the outcomes official EU Languages, so if a mark is descriptive in of the previous disputes between the parties to Japanese, it will be deemed unregistrable here. be of any assistance. This exemplifies how, in the absence of any formal “estoppel”, UK tribunals will Finally, OHIM, or OAMI, UAMI, and a number of generally consider factual matters afresh and will other easily pronounced acronyms, is to become reach their own conclusions on for instance, the the European Union Trade Marks and Designs question of confusing similarity, independently of Agency, or EUTMDA. That’s easy for them to say. findings made in other jurisdictions. This includes findings of OHIM and the EU General Court. © Beck Greener 2013

EU EP and EC to change CTMs – OHIM to become EUTMDA The European Commission has outlined its proposals to amend the trade marks Directive and Regulation. We have highlighted a few of the proposed changes.

Currently a trade mark must be capable of being represented graphically. If the proposed change goes ahead, this will no longer be the case. This will allow trade mark applicants to file, for instance, sound files, without any need for a spectrogram. Clearly this is useful in the case of sound marks. There can be few people who can read a spectrogram with confidence.

Chartered & European Patent Attorneys | Trade Mark Attorneys | IP Litigators Fulwood House, 12 Fulwood Place, London WC1V 6HR Tel: +44 20 7693 5600 Fax: +44 20 7693 5601 [email protected] www.beckgreener.com Regulated by IPREG