CITMA REVIEW CITMA

Inside

HOW TO TELL YOUR CITMA CLIENT’S STORY p16 NAVIGATING EU SEPTEMBER REGISTRIES p19 SALARY SURVEY 2016 p22 REVIEWISSUE 436 SEPTEMBER 2017 2017

Which trade mark representatives reached highest in 2016? p13 THE UK’S TOP FILING FIRMS Is This Your Image Clearance Strategy? If you’re not searching design marks, you’re risking a costly infringement suit. Why chance it? With new TM go365™ Image Search there’s no longer any excuse to skip image searches. It’s fast and easy. Get results in minutes, without complex design codes. Simply drag, drop and go! It’s reliable. Advanced image recognition technology and industry-leading CompuMark trademark data deliver targeted results you can trust. It’s efficient. Powerful workflow tools accelerate analysis and reporting.

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IFC_CITMA_SEP_2017.indd 1 16/08/2017 10:35 Make your mark in your trade

Trade Mark Attorney : VAC53286 Qualified Trade Mark Attorney : Scotland CEF46316 You'll be rubbing shoulders with superb IP professionals, and will enjoy Plentiful caseload of exciting work from an extensive high profile client high calibre work with this role. Those from part qualified to 3 years PQE portfolio, making this an exciting time to be joining such a highly regarded level will be considered. You'll receive competitive remuneration, an firm. You must be qualified and able to manage your own workload from enormously rewarding bonus structure, excellent benefits and real the off, but the real clincher here is the freedom and scope for business potential to develop with this first-rate IP firm. development. A platform to propel both your career and the Trade Mark Trade Mark Attorney : Manchester VAC53477 group onto a whole new level, with huge rewards to reap, both in the short A rare opening for a Trade Mark Attorney to join this top tier firm's and the long term. Manchester office. Ideally you will be finalist or newly qualified level, Trade Mark Attorney : Birmingham CEF51325 though those with additional experience will also be considered. It could Experts in their field and looking to expand their Birmingham office, our be your open door to a supportive and encouraging career path working client are seeking an Attorney to join their thriving Trade Marks team. The on a caseload from some of the best clients in the business. ideal candidate will be 1 - 4 years PQE, with fantastic communicative skills Newly Qualified Trade Mark Attorney : VAC50544 and a tenacious work ethic. You'll enjoy support in a small but strong Award winning Heavyweight IP firm seeks a tenacious newly qualified department, where you can really make a difference and put your career Trade Mark Attorney! Ideally you'll be newly qualified to 1 years PQE, with on the map, with high profile work and expert company. a real passion for the industry, however finalist level and those with more Trade Mark Attorney : Leeds CEF48693 experience will also be considered. High quality work, big name clients Based in vibrant Leeds, this exciting and expanding practice seeks a Part and an expert team of professionals await you - enquire now. or Fully Qualified Trade Mark Attorney with ideally between 18 months to Formalities Assistant : Leeds VAC53566 4 years' experience within the Trade Marks profession, either prior to or Looking for the chance to increase you IP support knowledge? This post qualification. With plenty of scope to grow, not only the practice but boutique practice seek a formalities assistant with excellent attention to on a personal level too, this will be an immensely rewarding position with detail. No prior IP experience is necessary though those with experience a great location, supportive environment and a superb package being will be looked upon favourably. A great opportunity to gain skills in cradle just the starting points. to grave formalities procedures. Trade Mark Secretary / Paralegal : London TJB53360 Trade Mark Partner : London VAC51866 A leading IP firm seeks a pro-active, forward thinking Trade Mark Career defining move to be at the forefront of a top tier IP firm. Have you Secretary / Paralegal to work at Partner level, providing full secretarial and got the drive, ambition and tenacity to push this team forward with strong Paralegal support. You’ll be motivated, switched on and bring with you a leadership skills, brand promotion and business development? You may wealth of Trade Mark knowledge and experience. be an existing Partner within practice looking for a new challenge or an Trade Mark Paralegal : London TJB53551 aspiring Partner with demonstrable experience of involvement in the wider An internationally renowned IP Practice are looking to expand their Trade business. Put your expertise to exceptional use with exceptional rewards Mark team as they seek to appoint an additional Paralegal to join them. through this extraordinary opportunity. Working closely with one of the Trade Mark Partners, you will be exposed to a broad range of Trade Mark work as well as having the benefit of a strong team environment to provide excellent and ongoing support as you continue to develop.

For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Scan the QR Code Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: for our website [email protected] • [email protected] or [email protected] www.saccomann.com ‘Tweet’ us at www.twitter.com/saccomannip www.linkedin.com at the ‘Sacco Mann Intellectual Property Group’

‘Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment and an Employment Business for Temporary Recruitment’

IBC_CITMA_SEP_2017.indd 1 16/08/2017 14:21 WELCOME SEPTEMBER 2017

Inside this issue Regulars Case comments

04 CITMA Insider Bulletin 26 [2017] EWCA Civ 358 Salmah updates, our Brexit position and Ebrahim explains why Nestlé’s shape an Autumn Conference preview registration bid failed again 41 Events Essential diary dates 28 [2017] EWCA 1400 (IPEC) elcome to the 42 TM20 Meet Singapore-based Tom Hooper warns of the dangers September issue of Sabrina Moden of selling similar products online the CITMA Review in 30 [2017] EWHC 1408 (IPEC) which I am delighted to Features It’s getting harder to fi nd solid say W we are publicising the new CITMA ground on distinctiveness, reports Paralegal category of membership page  06 Summer Reception Photo Katherine Thompson a welcome change that recognises the coverage of our seasonal top-fl oor 32 O/223/17 Caroline Phillips enhanced skills of those members London gathering reveals why a famous fashion brand This is also an issue of statistics 08 Paralegal An introduction was victorious from the impact of Brexit on fi lings to the newest category of 33 O/240/17 Strong evidence page  and the annual roll call of the CITMA membership remains important in passing off , busiest fi rms undertaking UK and EU 09 Digital Robert Buchan provides says Samantha Collins trade mark fi lings page  to current insight from a recent Scottish event 34 O/264/17 Oliver Tidman salaries and some interesting inclusion 10 Analysis Rob Davey examines confi rms the need to introduce trends page  what Brexit has meant for UK trade all relevant evidence We are also guided by Claire Lehr mark fi ling trends 35 O/263/17 Visii prompts a on how to succeed in combing through 13 Top fi lers 2016 Our annual roll revisitation, writes Victoria Leach EU registries page  Aaron Wood call of the busiest UK and EU trade 36 T-223/15 A private club proved on advocacy tools page  and mark representatives its wider infl uence, reports Nicola Hill Robert Cumming on cautious use 16 Advocacy Aaron Wood off ers 37 T-375/16 Olivia Gregory gets straight of emojis page  advice on which tools will bear the to the point on Sabre I hope that the photos of the greatest fruit for your client 38 T-637/15 Paul McKay shines Summer Reception page  remind 19 EU registries Claire Lehr off ers light on an issue between two sun you of a fantastic night out on a beautiful eight key steps to getting to “yes” mark seekers sunny evening and that there are 22 Salaries The latest IP industry 39 T-258/16 Chris Morris sets out the still many more of those for us to research includes insight on inclusivity Court’s conclusions on another raw enjoy this autumn 24 Social media Robert Cumming mark dispute sets out sensible precautions for 40 T-294/16 Dale Carter describes an using emoji uphill battle for Gold Mount Kate O’Rourke CITMA President

CITMA contacts Law & Practice: Imogen Wiseman, Account Director: Kieran Paul The views expressed in the articles General enquiries [email protected] Senior Designer: Sophia Haines in the CITMA Review and at any CITMA, 5th Floor, Outer Temple, Publications & Communications: Designer: Alix Thomazi CITMA talk or event are personal to 222–225 Strand, London WC2R 1BA Richard Hayward, [email protected] Senior Sub-editor: Mike Hine the authors, and do not necessarily [email protected] represent the views of the Institute. Tel: 020 7101 6090 Published on behalf of CITMA by: CITMA makes no representations Think, Capital House, CITMA Review nor warranties of any kind about the Committee chairs 25 Chapel Street, London NW1 5DH CITMA Review content is provided by accuracy of the information contained Education Policy & Development: Tel: 020 3771 7200 members on a voluntary basis, and in the articles, talks or events. Philip Harris, [email protected] www.thinkpublishing.co.uk reader suggestions and contributions Executive: Chris McLeod, Editor: Caitlin Mackesy Davies are welcome. If you would like to © CITMA 2017 chris.mcleod@elkfi fe.com Advertising: Tony Hopkins, contribute an article to a future issue, Events: Maggie Ramage, [email protected] please contact Caitlin Mackesy Davies [email protected] Group Account Director: Polly Arnold at [email protected] citma.org.uk September 2017 CONTENTS | 03 CITMA | INSIDER

Chief Executive’s bulletin Brexit: taking Highlights from and updates to Keven Bader’s a position th July message to members We hope all members saw our recent communication about the publication of CITMA’s offi cial position paper on CITMA PARALEGAL IS NOW LIVE DATA PROTECTION – GDPR matters relating to Brexit. If you haven’t On 20th July we launched the CITMA The General Data Protection Regulation had a chance to read it yet, the paper Paralegal category of membership. All (GDPR) comes into force on 25th May is available at bit.ly/BrexitPosition. current Administrator members were 2018. We are looking into what impact We recently held a webinar to update transferred to this new category, and the new regulation will have on CITMA members on the latest developments, the Administrator category has been and the data we process, and will be providing an opportunity for them to withdrawn. Details about the change have communicating to members any changes ask questions. Access a recording of been published on the CITMA website, or action required of you. The regulation the webinar on the CITMA website. and more information can be found on has been described as “the biggest change A number of meetings have also page 8. We’d like to thank all members to data-protection law for a generation”; been taking place, including: a meeting and their fi rms for their input into the therefore, I would encourage all members with the Ministry of Justice to discuss development of this category, and the and their fi rms to make sure they are rights of representation across the support and positive comments we’ve aware of GDPR and how to ensure legal sector; with the IPO to discuss received. I would like to encourage those compliance. We plan to hold an event exhaustion of rights; and with the members in the new Paralegal category that will provide further information. public aff airs agency we have to use the title “CITMA Paralegal”, as set In the meantime, see the news item at appointed to discuss developments out in the regulations. citma.org.uk for links to further guidance. and the next steps. We will continue If you know anyone who may be eligible to communicate updates as this issue to become a CITMA Paralegal member, COMMERCIAL PARTNERSHIPS moves forward. please let them know about this new We have continued our commercial In brief, CITMA is campaigning for: category. If you know of anyone who partnership arrangements with Corsearch • existing EU registered trade mark may be interested in becoming a CITMA and CompuMark Clarivate Analytics for and design rights to continue to Paralegal by passing the CITMA Paralegal 2017. Corsearch sponsors our London cover the UK; Course (formerly the Trade Mark Lecture programme, the Spring • Chartered Trade Mark Attorneys Administrators’ Course), please ask Conference and the Autumn Conference to continue to be able to represent them to pre-register their interest for (coming 12th October in Birmingham). their clients before EUIPO; and the 2018 course by emailing Marzia CompuMark Clarivate Analytics is • Chartered Trade Mark Attorneys to Sguazzin at [email protected] sponsoring the pre-lunch drinks reception be granted rights of representation at the London Christmas Lunch at the General Court and CJEU. PRO BONO SCHEME (8th December) and has supported the In November 2016, in conjunction with running of the Trade Mark Administrators’ other IP organisations, we launched a pro Course, now the CITMA Paralegal Course. New CEO at IPReg bono scheme for IP contentious matters. IPReg has appointed a new Chief The scheme has seen a steady fl ow of CAN YOU FIND TIME FOR CITMA? Executive Offi cer, Fran Gillon. cases, many of which have been related If you feel you have some capacity to She joins IPReg following previous to a trade mark matter. We encourage volunteer with CITMA, please see the roles in the legal services and members to visit the scheme’s website at information about our committees regulatory environment, including ipprobono.org.uk, where you can fi nd out and working groups, including current at Ofgem, Postcomm and the Legal more information, how to get involved, vacancies. If there are no vacancies in Services Board, and as a Special and details if you need to signpost anyone your area of interest, still get in touch, Adviser at Slaughter & May. to the services off ered. as we may be able to accommodate you.

04 | INSIDER September 2017 citma.org.uk Autumn Conference goes social Register now for our ��th October Autumn Conference, which will focus on “Social media and IP”

12th October 2017 Hyatt Regency Birmingham Earn fi ve hours’ CPD Sponsored by

Brands and trade marks live and breathe on social media, KEY SPEAKERS and now we are bringing together a host of expert speakers Our key speakers and subjects include: to provide vital insight on the interaction of social media David Haigh Brand Finance plc “Has social media and IP law. made trade marks more valuable business assets?” From memes to advertising, the CITMA Autumn Conference With social media being used by brands to promote products, will answer some of the most important questions surrounding and by consumers as a research tool, how has this aff ected how IP law and social media. Our speakers will also equip you with brands are valued? practical steps and tools available to take action on social media infringement. Vanja Kovacevic Schmitt & Orlov “Memes and IP” Find out answers to the following questions: Vanja will be considering the law on the use of third parties’ • How can you act on unwanted infringing content online? photos and video online. She will look at whether businesses • Has social media changed the way we create and can utilise user-generated content to create their own market brands? advertising, looking at notorious and not so notorious • Can businesses utilise user-generated content like memes? examples from around the world. To round off the day, we will ask the question: has social media made trade marks more valuable business assets? Nick McDonald Potter Clarkson “EU can’t link to that?” Nick will analyse the eff ect recent CJEU decisions relating BOOK NOW to the issue of communicating to the public will have on the Book your place at citma.org.uk. Tickets interpretation of this form of copyright infringement in the are on sale until Wednesday 4th October, context of social media. subject to availability. The cost is £225 for CITMA members and £275 for non- Charlotte Robson Yawn Creative “How social media members. Each ticket includes lunch and ACT FAST! has changed the way we create and market brands” Last year’s the evening drinks networking reception. event sold Charlotte will look at how brands use social media to Can’t make the whole day? Why not out early communicate their message and products to consumers, book a place at our evening drinks focusing on how businesses have had to adapt quickly reception only? in order to service the new ways we communicate and consume information.

Azhar Sadique Keltie LLP “Social media and the law tales trends and template autoresponses” This talk aims to arm you with strategies to increase your social media content “effi ciency”, and illustrate the various methods through which social media can be used to fi ll in the missing links between infringing evidence.

Helen Saunders INCOPRO “Has anyone seen my brand?” From the perspective of an internet monitoring company, Helen will cover the diff erent types of social media; geographical and cultural variations in the way social media is used around the world; and the way in which brands are exploited by those seeking to abuse or piggyback on them.

Catherine Wiseman Barker Brettell “Taking on takedowns trade marks trials and instagains” Catherine will explore trade mark infringement on the internet and the various take-down services available on social media. citma.org.uk September 2017 INSIDER | 05 CITMA ENJOYS A THAMES-SIDE TIME OUT A stunning sunset capped off our recent Summer Reception at Sea Containers PHOTOGRAPHY BY SIMON O’CONNOR

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CITMA MEMBERS AND guests from across the IP profession met high above the banks of the River Thames on 4th July for an evening 2 of networking at the stunning Cucumber Bar at Sea Containers. Some 200 guests enjoyed the lively event in the bright, modern surroundings featuring panoramic views of the London skyline. The venue’s curvaceous green bar and canapés by the award-winning Green & Fortune contributed to another great summer occasion. The evening 3 closed with a dramatic sunset.

06 | CITMA EVENT September 2017 citma.org.uk 1) (L–R) Jackie Conway, Florian Traub ( LLP); Anna Szpek (Urquhart-Dykes & Lord LLP) 2) (L–R) Patsy Heavey (Formula One); Chris McLeod (Elkington and Fife LLP) 3) (L–R) Laurie Smith (J A Kemp); Amelia Skelding, Roy Scott, Nick Bowie (Keltie); Nathalie John (GJE) 4) (L–R) Rob Davey, Ilse van Haaren (CompuMark Clarivate Analytics); Kate O’Rourke 5) (L–R) Lisa Cook (Corsearch); Jasmine Sihre (Cooley LLP) 6) The gathering attracted some 200 members and guests 7) The London skyline was a star attraction 8) (L–R) Geoffrey Smith, Adjoa Anim, Chris Cottingham (HGF) 4

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5 “ Some 200 guests enjoyed the lively event in the bright, modern surroundings featuring panoramic views

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citma.org.uk September 2017 CITMA EVENT | 07 MEMBERSHIP

Introducing the CITMA Paralegal Richard Hayward explains why it is time for a vital role to be better recognised

new category of CITMA CITMA President Kate O’Rourke Administrators’ Course exam this membership has been said: “This is more than just a change year. All those who passed will have launched: CITMA of name – it is a commitment we are the chance to join CITMA. Paralegal. This has been making to do more to support and The course will continue to established to recognise develop the work of trade mark see lectures being delivered by the roles and responsibilities of those paralegals, administrators and experienced trade mark paralegals inA the profession, and the number of formalities staff . and attorneys. Topics covered people working at this level. Everyone “Many Chartered Trade Mark include how to register a trade mark, who was an Administrator member Attorneys and our fi rms rely on the searches, renewals and maintenance, has automatically transferred to the excellent work of paralegal colleagues changes of ownership, oppositions, new category. to deliver outstanding results for the and cancellations. The course also These changes will help increase organisations we represent. I am touches on registered designs and the skills, knowledge and standards proud that CITMA is doing more to domain names. of this part of the sector, assisting the develop and recognise this vital role.” profession in providing the fi rst-class GROWTH OPPORTUNITY service for which it is well known. CONSULTATION The CPD requirement for this The results of a consultation in category will be mandatory for all CPD OPPORTUNITY 2015 confi rmed that the role of new members who pass the CITMA To complement the launch, we are trade mark administrators, paralegals Paralegal course from 2018 onwards. introducing a continuing professional and formalities staff has taken Therefore, the fi rst year for self- development (CPD) requirement to on increasing importance, and certifying CPD will be 2019. the new category. This comprises eight that the majority in these roles On renewal each year, members will hours of learning and development – have responsibilities beyond basic be required to self-certify that they four hours can be personal study – administration and support. have fulfi lled their CPD requirement. which members will need to complete The vast majority of members This will give CITMA Paralegal each year. Specialist events and in all categories were in favour members a clear opportunity to webinars run by CITMA will ensure of providing further opportunities grow and develop the skills they have Paralegal members have the best for trade mark administrators and gained throughout their professional opportunities to earn focused CPD. paralegals to develop their skills, career and on the course. It will To become a CITMA Paralegal, and better recognition of the role also provide a way to demonstrate and use the title, an applicant must they play in the sector. commitment to professional have completed the Trade Mark The number of those eligible for development to employers. Administrators’ Course – which, the new category continues to grow For more information on the from 2018, will be renamed the – 100 people took the Trade Mark new category, visit citma.org.uk • CITMA Paralegal Course. The course will run each year and its standards will be continuously reviewed. The category will continue to be open to anyone working in the trade mark and design profession who RICHARD HAYWARD has passed that course, or the earlier is Head of PR & Communications at CITMA formalities course. [email protected]

08 | MEMBERSHIP September 2017 citma.org.uk CITMA EVENT

Rule your domains A Scottish event provided welcome insight into digital strategy, says Robert Buchan

he online threats facing brand if they want to successfully recover domain owners and their customers are names. Large international brands can assume varied, and include the sale of that, because they have an extensive collection counterfeit goods or customers of registered trade marks or domain names being targeted by fi nancial scams. across the world, they are automatically A CITMA Lecture in Glasgow, held in June, entitled to recover any domain name registered Tprovided a domain-name update, and an by a domain-name speculator, and forget to interesting insight into how such threats meet the legal tests set out by the DRS. are policed and resolved. In fact, brand owners must demonstrate Suzy Wright, IP Counsel at the Royal Bank that they have rights to the brand, particularly of Scotland, stressed the need to be agile and where the brand/domain in question is a review any domain-name management policy generic dictionary word. Brown made reference to ensure it is fi t for purpose. Since 2010, the to cases involving the fashion brand Mango bank’s domain-names portfolio has reduced and MOT services off ered in a particular town. from around 8,000 domain names to around Even if a speculator seeks a large price for such 2,700. With fewer customers typing in specifi c domain names, detailed evidence showing that domain names, and instead searching for a generic name has gained a secondary meaning brands or products, there has been less need must be provided – for example, sales fi gures, to register protective domain names in every advertising spend totals, or evidence of a global top-level domain, or covering similar or portfolio – in order to avoid failure and the misspelled names. The protection of core trade need to pay a huge premium to a speculator. marks and brands will always be key, but IP is Brown also reminded delegates that being only one of a number of stakeholder interests successful in recovering a domain name is only to be protected. It is not always the key driver part of the picture. The brand owner’s team when issues of fraud, security and regulatory must also remember to renew key registrations compliance are also present, she suggested. to avoid speculators snapping them up when Key threats facing banks include dedicated they lapse. denial-of-service attacks on core domains, Although diff erent brands and businesses threatened data loss as a result of cyber-attacks will have diff erent levels of threats in the and increasingly sophisticated scams/phishing. domain-name sphere, the speakers provided In conjunction with a domain-watching service, interesting and practical guidance on how the bank has policies to deal with a varying to successfully manage and protect a domain- level of threats, including immediate take-down name portfolio. • of fraudulent sites, sending cease-and-desist letters for blatant IP infringement, and using domain-name dispute-resolution procedures to recover infringing domains. ROBERT BUCHAN Tim Brown from Demys, himself a panellist is IP Partner at LLP on the UK Dispute Resolution Service (DRS) [email protected] procedure, provided practical tips on what Robert is a brand owners or their advisors should avoid accredited IP specialist citma.org.uk September 2017 CITMA EVENT | 09 ™

BANKING ™ ON BRITAIN Rob Davey examines new data showing the impact of Brexit on UK trade mark application trends

efore 23rd June 2016, no one could always likely that a vote to leave would lead to have predicted just how far-reaching a dip in business confi dence and uncertainty the impact of the Brexit referendum around commitment levels to the EU market result would be. The political – a fall of almost 20 per cent is signifi cant, uncertainty will no doubt last for considering there is still a long way to go Byears to come, and aftershocks have been felt before the UK actually leaves the EU. across even the most unlikely of industries. Interestingly, a very diff erent picture develops One of these industries is IP. when we look at the number of global businesses It has now been more than a year since applying for UK trade marks. In the 18-month the referendum, and data courtesy of period preceding the Brexit vote, the average CompuMark’s Custom and Managed Solutions monthly fi ling fi gure for UK trade marks was unit (using SAEGIS® on SERION®) throws 4,538, but, in the fi rst 11 months after the up some interesting trends with regard to referendum, this rose to 5,567. That is a 20 per the number of brands and businesses fi ling cent increase in UK trade mark fi lings, which EU and UK trade mark applications following is a clear indicator of businesses proactively the historic referendum result. securing the relevant trade marks in anticipation Before the Brexit vote, the average number of Brexit proceeding. of EU trade mark applications made by UK-based The importance of these results becomes applicants per month was 933. Afterwards, much clearer once we focus on the number however, this monthly average fell to 766 – an of UK applications being submitted by overseas 18 per cent decline (see Figure 1). Although the applicants – an area in which there has been results are perhaps unsurprising initially – it was a 93 per cent increase. The average number

Figure 1 EU TRADE MARK APPLICATIONS BY UK APPLICANTS

1,400 1,200 1,000 800 600 400 200 0

Jan 2015 May 2015 July 2015 Sep 2015 Nov 2015 Jan 2016 May 2016 July 2016 Sep 2016 Nov 2016 Jan 2017 May 2017 March 2015 March 2016 March 2017

10 | ANALYSIS September 2017 citma.org.uk Figure 2 UK MONTHLY TRADE MARK APPLICATIONS

1,000 Brexit referendum

800 ™ 600

400

200

0

Jan 2015 May 2015 July 2015 Sep 2015 Nov 2015 Jan 2016 May 2016 July 2016 Sep 2016 Nov 2016 Jan 2017 May 2017 March 2015 March 2016 March 2017

• US applicants • Overseas applicants

of monthly applications by US-based applicants in the 11 months following the referendum Figure 3 INCREASE IN UK TRADE MARK APPLICATIONS was 261, compared with just 104 in the SINCE JUNE 2016 – BY APPLICANT COUNTRY 18 months beforehand. That is a huge increase of 150 per cent. Figure 2 shows that the sharp, 200% sudden increase following the result continues 150% to be sustained. China was the only major country with a 100% greater increase in average UK trade mark 50% applications, with a monthly average of 170 0% fi lings post-referendum, compared with just US 62 beforehand – a 175 per cent increase. China Canada Ireland France Australia Other countries whose monthly average Singapore Germany Hong Kong Switzerland applications have increased sharply include Singapore (168 per cent), Germany (104 per cent) and Canada (76 per cent). businesses at present seem intent on investing in But not every country seems to be quite securing their UK rights before the UK makes its so enamoured by the prospect of fi ling EU exit. UK-specifi c trade marks. France’s monthly Despite the lack of clarity surrounding Brexit average increased by 10 per cent, while and its aftermath, these statistics clearly prove Australia’s grew by a mere two per cent. that businesses are taking matters into their own Although the factors behind these results are hands and proactively seeking to protect the IP likely to vary according to country, the overall rights of their brands. It is a much-needed sign increase in trade mark applications could be due of encouragement for the trade mark community to companies taking the precautionary measure in these uncertain times. • of double-fi ling EU and UK trade marks. Our analysis of the data does suggest that some of the largest global brands have indeed begun ROB DAVEY is Senior Director of Global fi ling in both the EU and the UK since last June. Services at CompuMark, a This precaution could prove to be unnecessary, brand of Clarivate Analytics as it is very likely that a mechanism will be introduced to protect existing EU rights in the Robert Reading, Director of Custom UK as part of the Brexit negotiations. However, and Managed Solutions, co-authored.

citma.org.uk September 2017 ANALYSIS | 11 www.ip-support.co.uk 020 7776 8966 [email protected]

We have a number of positions available for:

Trade Mark Attorneys/Lawyers NQ to 5 years’ PQE - London Trade Mark Secretaries/Administrators All levels - Nationwide

012_CITMA_SEP_2017.indd 12 16/08/2017 10:35 TOP FILERS 2016 It is time once again to unveil the UK’s busiest trade mark representatives, courtesy of corsearch.com

DATA COLLECTION DETAILS Figures represent fi lers that are the current UK agents for EU trade marks or UK trade marks for which applications were made in 2016. They do not include corporate fi lers. Where a trade mark’s ownership was transferred between agents, both the fi rst and new representative will be credited. Figures do not represent WIPO-designated fi lings. Where fi rms have acquired other fi rms, the full representation of fi ling statistics may not be captured. Where fi rms have multiple IPO accounts under separate naming conventions, we cannot guarantee complete representation. For any individual enquiries, please contact [email protected] F

citma.org.uk September 2017 2016 FILINGS | 13 TOP 100 UK TRADE MARK FILERS

1 MARKS & CLERK LLP 616 51 A A THORNTON & CO 107 2 HGF LTD 467 52 WALKER MORRIS LLP 106 3 D YOUNG & CO LLP 427 53 STEPHENS SCOWN LLP 105 4 MURGITROYD & COMPANY 417 = ELKINGTON AND FIFE LLP 105 5 BARKER BRETTELL LLP 392 55 WP THOMPSON 104 6 WILSON GUNN 386 56 FRKELLY 100 7 WITHERS & ROGERS LLP 376 = TRADEMARKROOM LTD 100 8 URQUHART-DYKES & LORD LLP 346 58 BRIFFA 95 9 TRADE MARK WIZARDS LTD 336 59 ASHFORDS LLP 94 = BOULT WADE TENNANT 336 = CHANCERY TRADE MARKS 94 11 TRADEMARK EAGLE LTD 335 61 FREEMAN HARRIS 89 12 STOBBS 311 62 LANE IP LTD 88 13 AXIS IP SERVICES LTD 302 = TRADE MARK CONSULTANTS CO 88 14 GROOM WILKES & WRIGHT LLP 301 64 LLP 86 15 KELTIE LLP 264 65 COOLEY (UK) LLP 85 16 MATHYS & SQUIRE LLP 227 66 BARON WARREN REDFERN 82 17 APPLEYARD LEES IP LLP 226 = HASELTINE LAKE LLP 82 18 GILL JENNINGS & EVERY LLP 225 68 CARPMAELS & RANSFORD LLP 81 19 NUCLEUS IP LTD 216 69 LLP 80 20 KILBURN & STRODE LLP 215 = BROOKES BATCHELLOR LLP 80 21 DEHNS 214 = FREETHS LLP 80 22 CSY 212 72 POTTER CLARKSON LLP 79 23 SWINDELL & PEARSON LTD 202 = LLP 79 24 BAYER & NORTON BUSINESS CONSULTANT LTD 195 = KATARZYNA ELIZA BINDER-SONY 79 = BIRD & BIRD LLP 195 = CHAPMAN+CO 79 26 LEWIS SILKIN LLP 194 76 KEMPNER & PARTNERS LLP 78 27 VENNER SHIPLEY LLP 192 = FRANKS & CO LTD 78 28 NOVAGRAAF UK 190 = BIRKETTS LLP 78 29 LLP 189 = TRADEMARKING4U LTD 78 30 PAGE WHITE & FARRER 188 80 BOND DICKINSON LLP 75 31 J A KEMP 179 = PENNINGTONS MANCHES LLP 75 32 BECK GREENER 174 = BLAKE MORGAN LLP 75 33 CMS CAMERON MCKENNA 173 83 IP21 LTD 74 NABARRO LLP* = EDWIN COE LLP 74 34 FORRESTERS 172 85 DLA PIPER UK LLP 73 35 WILDBORE & GIBBONS LLP 159 86 BAILEY WALSH & CO LLP 70 36 LLP 154 = MAUCHER JENKINS 70 37 BAKER MCKENZIE LLP 153 88 THE TRADEMARK CAFE LTD 69 38 REDDIE & GROSE LLP 148 89 CHARLES RUSSELL SPEECHLYS LLP 66 39 ALBRIGHT IP LTD 147 = FOX WILLIAMS LLP 66 40 ABEL & IMRAY 146 91 WARD TRADE MARKS LTD 63 41 WYNNE-JONES, LAINÉ & JAMES LLP 143 92 THE TRADE MARKS BUREAU 62 42 REVOMARK 128 = DUMMETT COPP LLP 62 43 TRADE MARK DIRECT 120 94 TRADEMARKIT LLP 59 44 STEVENS HEWLETT & PERKINS 116 95 SQUIRE PATTON BOGGS (UK) LLP 57 45 MEWBURN ELLIS LLP 115 = BRYERS LLP 57 46 SILVERMAN SHERLIKER LLP 113 97 WIGGIN LLP 56 47 DOLLEYMORES 112 98 TLT LLP 55 48 SIPARA LTD 110 = LAWRIE IP LTD 55 49 HARRISON IP LTD 108 100 FILEMOT TECHNOLOGY LAW LTD 54 = LLP 108 TOTAL: 15,396 *Figure represents total for the current merged entity over the data-collection period specified.

14 | 2016 FILINGS September 2017 citma.org.uk TOP 100 EU TRADE MARK FILERS

1 MARKS & CLERK LLP 645 51 WP THOMPSON 105 2 HGF LTD 469 52 HASELTINE LAKE LLP 103 3 FORRESTERS 451 53 NOVAGRAAF UK 101 4 STOBBS 388 54 STEVENS HEWLETT & PERKINS 99 5 D YOUNG & CO LLP 382 55 SILVERMAN SHERLIKER SOLICITORS 97 6 KILBURN & STRODE LLP 364 = WILDBORE & GIBBONS LLP 97 7 BOULT WADE TENNANT 351 57 REVOMARK 96 8 BARKER BRETTELL LLP 350 58 DLA PIPER UK LLP 82 9 LANE IP LTD 299 59 AA THORNTON & CO 77 10 WITHERS & ROGERS LLP 297 60 FILEMOT TECHNOLOGY LAW LTD 75 11 BAKER MCKENZIE LLP 293 = TRADEMARKROOM LTD 75 12 KELTIE LLP 282 62 ABEL & IMRAY 74 13 URQUHART-DYKES & LORD LLP 246 = FREETHS LLP 74 14 KATARZYNA ELIZA BINDER-SONY 233 64 HARRISON IP LTD 71 15 MURGITROYD & COMPANY 229 65 LOCKE LORD LLP 69 16 GILL JENNINGS & EVERY LLP 228 = DOLLEYMORES 69 17 COOLEY (UK) LLP 224 67 BAILEY WALSH & CO LLP 67 18 ALBRIGHT IP LTD 222 68 ASHFORDS LLP 65 19 BIRD & BIRD LLP 217 = SQUIRE PATTON BOGGS (UK) LLP 65 20 MEWBURN ELLIS LLP 208 = ELKINGTON AND FIFE LLP 65 21 CLEVELAND SCOTT YORK* 206 = DUMMETT COPP LLP 65 22 LEWIS SILKIN LLP 202 72 MW TRADE MARKS LTD 63 = J A KEMP 202 73 EDWIN COE LLP 62 = FIELDFISHER LLP 202 = SWINDELL & PEARSON LTD 62 25 CMS CAMERON MCKENNA 186 = RENAISSANCE SOLICITORS LLP 62 NABARRO OLSWANG LLP* 76 SANDERSON & CO 61 = WILSON GUNN 186 77 DECHERT LLP 60 27 BRISTOWS LLP 183 78 NUCLEUS IP LTD 59 28 MATHYS & SQUIRE LLP 182 = MAGUIRE BOSS 59 29 DEHNS 180 80 HANSEL HENSON LTD 58 30 TRADE MARK DIRECT 179 81 STEPHENS SCOWN LLP 57 31 LADAS & PARRY LLP 178 82 CHAPMAN+CO 56 32 GROOM WILKES & WRIGHT LLP 176 83 SIMMONS & SIMMONS LLP 52 33 BECK GREENER 175 = FINNEGAN EUROPE LLP 52 34 REDDIE & GROSE LLP 172 85 GLOBAL IP LAW LTD 51 35 MAUCHER JENKINS 165 = EIP 51 36 CARPMAELS & RANSFORD LLP 164 87 CLARKE WILLMOTT 50 37 PAGE WHITE & FARRER 161 88 LLP 49 38 MISHCON DE REYA LLP 141 89 IRWIN MITCHELL LLP 48 39 JEFFREY PARKER AND COMPANY 139 = FRY HEATH & SPENCE LLP 48 = THE TRADE MARKS BUREAU 139 91 MILLS & REEVE LLP 47 41 POTTER CLARKSON LLP 131 = FOX WILLIAMS LLP 47 42 WYNNE-JONES, LAINE & JAMES LLP 123 93 SERJEANTS LLP 46 = VENNER SHIPLEY LLP 123 94 JAMES LOVE LEGAL LTD 44 44 SIPARA LTD 120 = JENSEN & SON 44 45 TRADEMARK EAGLE LTD 118 = BOND DICKINSON LLP 44 46 SHERIDANS 116 97 WILLIAMS POWELL 43 47 TAYLOR WESSING LLP 113 98 WARD TRADE MARKS LTD 42 48 APPLEYARD LEES IP LLP 112 99 OSBORNE CLARK LLP 41 49 BRIFFA 110 100 CHARLES RUSSELL SPEECHLYS LLP 40 50 AXIS IP SERVICES LTD 107 TOTAL: 14,258 *Figures represent total for the current merged entity over the data-collection period specified. citma.org.uk September 2017 2016 FILINGS | 15 WHAT’S THE STORY? Aaron Wood offers advice on which advocacy tools will bear the greatest fruit for your client

16 | ADVOCACY September 2017 citma.org.uk EVIDENCE ISSUES evidence could easily have The particular issues that arise from demonstrated it conclusively. the cases reviewed, and the practice The combined effect of these four notes of the UK IPO in relation to points is to make clear that where evidence, are that: a party relies on an assertion there • A party cannot assume that the should be exhibits to demonstrate absence of cross-examination or its truth rather than a bare claim. evidence in reply means that its Where evidence cannot be provided, evidence will be accepted as showing the reasons for its absence should be what it asserts. given. Evidence that does not go to a • Parties should not make broad, relevant assertion should be excised. sweeping claims to use and repute It may, in fact, be the case that, where the evidence to support it where a party submits a great deal of does not exist. irrelevant evidence, this will render a • A party must be careful to deal case less impressive: it may leave the with “missing” evidence where way open for the other side to argue the evidence could and “should” that, if substantial effort has been have been provided to support expended on evidence, yet relevant an assertion. evidence is missing, the tribunal should There is a contingent of our infer that such evidence does not exist. n June, I was fortunate to have profession that believes that facts Tribunal Practice Notice 1/2015 gives the opportunity to speak as part asserted by a party and untested by a list of the most common sorts of of a CITMA webinar on the cross-examination must be accepted, irrelevant evidence offered. subject of evidence and advocacy. citing EXTREME (O/161/07). That The product of reviewing many is not entirely correct. Others have WITNESS STATEMENTS Ipast cases and speaking to counsel noted that Hearing Officers now Further issues upon which comment and senior members of the profession seem to have an “EUIPO” approach should be made are the tendencies about their experiences with UK IPO to statements from interested parties, for witness statements to be filled cases, the webinar focused on those ie that they are now more liable to with submissions, for parties to feel areas that most commonly cause disbelieve a witness who is connected obligated to use evidence deadlines, difficulties before the IPO. The main to a party, such as an employee of and for witness statements to be thrust of the presentation centred on that concern. drafted by lawyers aiming to fulfil case those elements that are likely to bear Although parties may correctly requirements rather than present an the greatest fruit in improving case note a natural reluctance to believe accurate representation of the facts. outcomes: planning the case, finding witnesses that have a connection The role of a witness statement is and presenting the relevant facts, and to a party, this is the result of an to introduce facts that will ultimately planning the final advocacy of the case approach that goes back to Geoffrey be adopted as the truth by the to reflect your initial outline. Hobbs QC sitting as the Appointed decision-maker. It is a formal UK IPO cost scales may remain Person in CLUB SAIL (O/074/10) requirement that a party explain the paltry, but its approach to evidence and subsequently developed by Daniel basis for any belief and the source of seems to be becoming more forensic. Alexander QC in PLYMOUTH LIFE any evidence (although those drafting It is my view that to overcome this CENTRE (O/236/13). witness statements often simply insert difficulty more focus is needed on The effect of these decisions is that: assertions of fact). The introductory planning the case to ensure that the • It is not obligatory to regard the paragraph of the witness statement, evidence-gathering and presentation written evidence (ie the statement) in which the witness explains their stage – which is both the most costly as sufficient in itself to establish a profession and background with and the most important stage – is done fact or matter. the party (where relevant), lays the as efficiently and effectively as possible. • Evidence is to be weighed according foundation for the witness to make Although the points I made in the to the power of one side to produce assertions of fact and to be credible webinar had broader application it and the other to contradict it. in saying evidence comes from (many are relevant to lawyers acting • If evidence is likely to exist and is personal knowledge. in commercial cases), the particular not produced, a tribunal will be It is very common for a witness issues that apply before the UK IPO justified in rejecting evidence as to assert very broad use and repute in terms of costs recovery and testing insufficiently solid. that is not reflected in the evidence. evidence meant these were areas of • A tribunal is entitled to be sceptical of This is a mistake. There is a difference particular focus. a case that is inconclusive where the between deficient evidence and claims F

citma.org.uk September 2017 ADVOCACY | 17 “ PLANNING IMPERATIVE Remember that, One way to ensure that the scenario outlined above does not happen is to contrary to the opinion establish a formal plan incorporating of some, the seminal all the assertions of fact that will be needed in order for a party to cases TREAT and be successful (or which you think CHEVY do not lay down go to explain why the client should succeed), organise these in a sensible exhaustive conditions framework, and decide what evidence can be adduced to prove each assertion. If the client cannot provide direct evidence, then the mind must be turned to what alternative evidence that are obviously untrue, and once might be available. If structuring the credibility of a witness is damaged the facts and arguments proves decision-makers will be less likely to challenging, one suggestion is to put believe them with regard to other each relevant fact or argument on a assertions. It is also common for sticky note and arrange them on a wall witness statements to be drafted or table. The Trade Marks Act 1994 (poorly) by lawyers, and equally generally provides the structure. common to fi nd judicial comment Remember also that, contrary to oral hearing, since it will be diffi cult criticising these statements (even to the opinion of some, the seminal for the Hearing Offi cer to follow suggest that litigants in person could do cases TREAT and CHEVY do not arguments once the structure is lost. a better job). It may be that a narrower lay down exhaustive conditions. • If questions are asked, attempt to claim as to fact, combined with In the recent CRISTAL and ZUMA answer them fully – immediately submissions that seek to build upon cases, both of which required the if possible. If the structure is well this solid evidence, is more eff ective. Claimants to demonstrate repute, planned, there should be little Remember also that the deadline the Claimants were successful despite issue in returning to the fl ow for evidence in response is just that. having cases that, at least on the of the argument afterwards. There is no obligation to fi le evidence surface, did not correspond with in reply, and in many cases no such the CHEVY “criteria”. NEXT STEPS evidence will be available to refute the Finally, on the issue of oral For those with an ongoing interest assertions of a party. Although a case hearings, I made a few key points: in developing their skills and abilities on bad faith may involve confl icting • The skeleton argument that precedes in this area, two “next steps” are stories, in most cases revolving around the hearing (and must be fi led by all recommended. First, consider non-use or reputation, there will be professional representatives) is not attending the Litigation and Advocacy no evidence that can be easily put intended to replace the oral hearing, course run by Nottingham Law forward to refute the evidence of but rather to guide the Hearing School, and second, consider the trade mark proprietor. Offi cer and provide a “roadmap” purchasing the book by Michael Submissions at that stage on the for the hearing. Edenborough QC on the subject, poor state of evidence merely give the • A clear and well-planned structure which will be published by CITMA party the opportunity to resolve those will be all the more important in an over the coming months. • issues. In fact, GUCCI (O/424/14) suggests that some trade mark owners (or their representatives) may rely on AARON WOOD this happening so that they have the is Founder of Wood IP opportunity to remedy issues in their [email protected] evidence. It may be more eff ective to Aaron is a Trade Mark Litigator and Trade Mark with leave these submissions to the fi nal experience appearing at the UK IPO, before the Appointed Person, hearing or fi nal written submissions. in the IPEC and in the High Court.

18 | ADVOCACY September 2017 citma.org.uk magine this situation: you receive a request for a full “EU-wide” search. A “word search” of the EUIPO register produces hundreds of results and, when combined with Isearches of the national registers of the 28 Member States, the result is a daunting number of prior trade marks to be reviewed. So what can you do to produce a meaningful “first cut” report for your client and, ultimately, get to “yes”? As I hope the suggestions in this article will show, it is possible to navigate through the thousands of hits likely to result from a dictionary word search of EU registers. And although getting to “yes” may not be feasible for each search result, providing the client with a focused, considered and manageable search report that identifies the greatest legal and commercial risks certainly is. 1. PRELIMINARY CHECKS Where appropriate, and particularly with new or smaller clients, confer with the client on any pre-checks it may already have done. A UK-based client may tell you that it has already checked the UK IPO register, there are no identical BEAT THE marks and all is well – job done. Now is the time to highlight any marks that stand out in the client’s pre-checks that, although not identical, may be (closely) CROWDS similar to the target mark, which may Claire Lehr offers eight key steps to already have been enthusiastically released through a premature press help you navigate the EU’s crowded release. In this scenario, now is the registers with confidence time to manage client expectations. F citma.org.uk September 2017 SEARCH | 19 In addition, a website search at this service, particularly if the search is stage can throw up use of a mark – for a dictionary word. possibly unregistered – for the goods or services of interest. 4. TYPE OF MARK The EU registers are increasingly 2. DEFINE YOUR RANGE crowded, and rarely is it possible Few clients actually require in-depth to “clear” a mark for use. The marks searches of each EU Member State’s producing the most hits are dictionary register in addition to searches of words. Consider the ultimate use of EUIPO and the WIPO International a mark – will it be used with a house Registry (IR). Many UK clients work mark? Including the house mark will in, or target, four or five “top” EU reduce the number of hits and provide territories. Reviewing with the client a more focused result. Establish the territories of most interest and whether the mark is to be used within importance will likely result in a a more prominent device; such use compromise search strategy – perhaps will likely affect the commercial risk full availability in the UK, EU and IR in element of the search report. those territories, and an “identical plus” search in the four or five EU territories 5. ADD-ON ACTION of most interest. Such a search strategy The internet is your friend! A will give a sufficient view of the most surprising number of businesses still pertinent registers to allow you to use a mark but do not seek to register assess the risks involved. their rights. Yet those unregistered rights can be used to challenge use 3. CONSIDER CLASSES and registration of a later-filed mark. Consider the core use or proposed use Other “quick check” search sources “ by the client. The use may be complex include Companies House or a local – for example, a bookstore with an EU equivalent. Take note of country- in-store coffee shop, or an online specific rights – for instance, in Spain Reviewing with the portal to be accessed exclusively and Sweden, which give proprietors client the territories by clients in the field of insurance particular rights for company names. broking. Ideally, the classes searched Many retailers also use Twitter and of most interest and should be broad. Practically, however, Facebook. A domain-name search importance will likely your search report may well end up may already form part of your full result in a compromise focusing on a single core good or availability search package(s). search strategy

20 | S E A R C H September 2017 citma.org.uk 6. NARROWING more than fi ve years old and a website YOUR TARGETS search reveals no information about “ When your initial results are in, they the proprietor or its use of the might run to more than 2,000 pages mark, the commercial risk may be Check to see which of citations. Selecting marks with manageable. That said, a mark in proprietors have “double identity”, including local EU the name of a company or individual language equivalents, might narrow about which no or scant information opposed and the extent this to, say, 25 citations. Some basic is available should not be instantly of the opposition(s). checks may help reduce that number: dismissed. The company may be a • Age of citations – do a website search “straw” company, behind which lie Was it against specifi c to see what use, if any, has been made the resources of a large company. goods or services, of marks that are more than fi ve years Similarly, an individual proprietor old. A mark may be (partially) vulnerable may not be as innocuous as it appears or all of them? to revocation proceedings on the basis on the register. of non-use, and may not safely be Certain names crop up repeatedly, relied on in opposition proceedings. including “mass fi lers” (so-called Was it against specifi c goods or • Family of marks – one entity owning “trade mark trolls”) who fi le marks services, or all of them? more than three marks with the same with the intention of “reserving” them characteristics may have increased on the registers and selling them at 8. LATER STEPS rights in those marks. Check if at least a later date – and for a high price. A client resolved to use a mark may three are used. Such proprietors are more likely to “fi le and be damned”. Others may be • Renewed marks – renewal could challenge registration of a later mark cautious and try to close off possible indicate an ongoing interest. to preserve their own rights. challenges through mitigation – eg by • Thomson Life1 house mark bugbears Marks that are similar or identical purchasing an older mark through a – can you exclude marks that are to company names tend to present straw company and/or instructing confusingly similar according to a higher commercial risk. Most in-use investigations with a view to Thomson Life if the search has companies are understandably fi ling revocation proceedings. Some revealed an identical mark(s) to more sensitive about a (perceived) clients are more direct and approach that of interest? variation of their house mark(s) and the owner of a blocking older mark to • IP Translator2 and class heading will be watching the registers closely. demand its withdrawal following the specifi cations – it can be diffi cult Where a proprietor has opposed results of an in-use investigation. • to identify the core interest of the before, it knows the opposition ropes 1. Case C-120/04, Medion AG v Thomson proprietor, and online checks are and will likely oppose again. Check to Multimedia Sales Germany & Austria GmbH. essential to help narrow down the see which proprietors have opposed 2. Case C-307/10, Chartered Institute of Patent goods/services of real interest to and the extent of the opposition(s). Attorneys v Registrar of Trade Marks. the earlier rights holder. 7. WEIGH UP THE RISKS Almost inevitably, there is a diff erence CLAIRE LEHR between the legal and commercial risk is Special Counsel at Cooley (UK) LLP of using a chosen mark. A mark may [email protected] have “double identity” with the mark This article is based on an INTA Table Topic discussion searched, but if the earlier mark is held in May, which the author moderated. citma.org.uk September 2017 SEARCH | 21 THE WAGE FOR THE WORK The latest Fellows and Associates survey includes insight on inclusion

SALARY SPECIFICS

AVERAGE UK BASE SALARY BY YEAR OF QUALIFICATION YEAR OF QUALIFICATION: SALARY TRENDS 120 300 2017 Highest 2016 250 100 Average 2015 200 80 Lowest 2014 150 60

Salary (£k) 100 Salary (£k) 40

50 20

0 0 Trainee Part Newly 2–3 years 4–5 years Partner/ Trainee Part Newly 2–3 years 4–5 years Partner/ qualified qualified post post partner qualified qualified post post partner F qualified qualified designate qualified qualified designate Note: some well-paid international contributors may have affected the 52% rise in trainee salaries

AVERAGE UK BASE SALARY BY TECHNICAL SPECIALISM AVERAGE UK SALARY BY GENDER

120 140 Trade marks Engineering 120 100 Electronics Male 100 Chem/pharma 80 Female Salary (£k) 80 Biotechnology 60 60 Salary (£k) 40 40 20 20 0 0 Trainee Part Newly 2–3 years 4–5 years Partner/ Trainee Part Newly 2–3 years 4–5 years Partner/ qualified qualified post post partner

qualified qualified post post partner F qualified qualified designate qualified qualified designate Note: represents 96% of respondents AVERAGE UK BASE SALARY: THE INTERNATIONAL GAP 140

120

100 UK

80 International

60 Salary (£k) 40 F Note: although the UK appears to lag on base salaries, the widening gap between earnings for 20 UK and international respondents may be partly 0 a consequence of a weakening pound Trainee Part Newly 2–3 years 4–5 years Partner/ qualified qualified post post partner qualified qualified designate

22 | SALARY SURVEY September 2017 citma.org.uk TAKING A BREAK For the first time, participants were asked to indicate any career break they had taken lasting more than two months. Among the headline results:

24% 73% 42% 12% 45%

of respondents of those who had taken a of women had of men had of career breaks were for had taken a break worked part time taken a break taken a break maternity leave; 22% were due career break to a period of unemployment

LENGTH OF CAREER BREAK BY REASON AVERAGE SALARY BY GENDER AND CAREER BREAK

14% 28% 34% 21% 3% 140 Maternity 0–6 Male career break months 120 Male no career break 7–12 Female career break Sabbatical 54% 23% 8% 8% 8% 100 months Female no career break 12–18 80 months Unemployment 64% 14% 14% 7% 60 19–24 Salary (£k) months 40 Other personal 50% 25% 25% 3–5 20 years 0 Trainee Part Newly 2–3 years 4–5 years Partner/ 0% 20% 40% 60% 80% 100% qualified qualified post post partner

F qualified qualified designate Interestingly, career breaks do not necessarily appear to have a detrimental effect on salary INCLUSION IN THE SPOTLIGHT This year, as part of Fellows and Associates’ support for IP Inclusive, the survey incorporated questions related to discrimination in the workplace. Among the findings, 43% of respondents reported experiencing discrimination over the past two years. Of those, approximately two-thirds encountered more than one type of discrimination, either directed at themselves or a colleague.

EXPERIENCE OF WORKPLACE DISCRIMINATION TYPE OF DISCRIMINATION FACED BY RESPONDENTS IN THE PRIOR TWO YEARS 25 *includes pregnancy, 7% Directed at maternity, paternity and another adoption rights 20 Directed at 43% one’s self 15 Preferred not to answer No 10 Yes 5 Number of respondents of Number

50% 0 Age Mental/ Gender/ Race/ Marital/civil Religious/ Parental physical sexual place of partnership cultural issues* health orientation origin status beliefs

Survey author: Michele Fellows. Number of participants: 206. Method of collection: Data from a salary survey of the IP profession collected between 2nd May and 11th June 2017. The online survey was accessible through a weblink that was promoted on the websites of Fellows and Associates, The Patent Lawyer Magazine and The Chartered Institute of Patent Attorneys. View the full results at fellowsandassociates.com

citma.org.uk September 2017 SALARY SURVEY | 23 EASY AS ©

Robert Cumming sets out sensible precautions for employing emoji

he word “emoji” is a transliteration of the Japanese word 絵文字 (pronounced “eh-moh- jee”), which literally means “picture letters”. The little yellow faces in our daily text messages have evolved from the original emoticons, which Tcombined punctuation and everyday letters to form facial expressions, such as: DESCRIPTION EMOTICON EMOJI TRANSLATION

Slightly :-) Good mood smiling face

Mischievous Winking face ;-) or humorous

Face with :-O Surprise, shock open mouth

First used in the late 1990s, emoji are described by their creator, Shigetaka Kurita, as “adding subtle emotional emphasis to a sentence in text”. They can now be used as search terms and hashtags, and in marketing communications generally, in the same way as traditional words and letters. However, businesses that use emoji need to be sure they stay on the right side of the law. So where exactly do IP rights fi t into the picture? USING EMOJI In simple terms, emoji function like a font. Computers communicate across diff erent hardware platforms by adopting the Unicode standard. This universal code ensures

24 | SOCIAL MEDIA September 2017 citma.org.uk that a message sent from one device is this is obviously necessary for them identical to that received on another. to function. Likewise, the terms and However, the visual appearance of conditions of social media permit the the message will vary on each device use of emoji that are available within depending on the operating software the platform. This means a business being used to display the message. can promote itself using an emoji For example, the emoji at the provided it does so within the website right of this page might appear in a where it is created. text-message conversation between The position is more tricky when two friends using diff erent phone emoji are used outside the proprietary brands (ie one using an Apple phone, software ecosystem. A business and the other a Samsung). The images cannot, for example, use Apple’s or correspond to the emoji set on each Samsung’s emoji to promote its own user’s device. goods or services without infringing the owners’ rights. There are, however, PROTECTION POTENTIAL freely available emoji sets, such as Each individual emoji is potentially EmojiOne, whose owners allow them protected by several IP rights. In the to be used commercially under the UK, copyright subsists in emoji as Creative Commons licensing scheme. original artistic works by virtue of So, the bottom line is that emoji s1(1)(a) of the Copyright, Designs are protected by copyright, design and Patents Act 1988. This entitles right and trade mark law. This is the owner to prevent the unauthorised not to say they are entirely off limits copying of the whole or a substantial for use in a business if some basic “ part of the work for 70 years. In the precautions are taken: EU, new emoji are also protected by � Consider whether you have permission unregistered design right for the fi rst to use the emoji in the specifi c format. The use of emoji brings three years after disclosure, pursuant � Think about using emoji available a risk of infringement to Article 11 of Council Regulation under a Creative Commons licence, (EC) No 6/2002. Emoji may also such as EmojiOne. unless the owner be registered as Community designs, � Design your own original emoji. has authorised the which can last for up to 25 years. Each � Always conduct clearance searches image could, of course, be protected to check whether the emoji you wish use of the IP rights by trade mark law – though obviously to use is protected in your industry. • not for fonts, messaging services or other descriptive items. The use of emoji therefore brings a risk of infringement unless the owner ROBERT CUMMING has authorised the use of the IP rights. is a Partner at Appleyard Lees, Leeds Fortunately, by default, the [email protected] operating software on most devices permits the use of installed emoji, as Clare Liang, a Trainee Attorney at Appleyard Lees, co-authored this article. citma.org.uk September 2017 SOCIAL MEDIA | 25 [2017] EWCA Civ 358, Société des Produits Nestlé SA v Cadbury UK Ltd, Court of Appeal, 17th May 2017

Kit Kat bar is no badge Salmah Ebrahim explains why Nestlé once again failed in its bid for shape registration

IN THE LATEST instalment of the ongoing lacked distinctive character and its registration battle to register the shape of the four-fi ngered was therefore precluded by s3(1)(b) of the Kit Kat bar as a trade mark in the UK, Trade Marks Act 1994, which gives eff ect to Nestlé’s appeal before the Court of Appeal Article 3(1)(b) of the Directive. In defending has been rejected. In particular, it was found its application, Nestlé argued that the Mark that Nestlé had failed to demonstrate acquired had acquired distinctive character as a result distinctiveness within the meaning of Article of the use that Nestlé had made of it prior to 3(3) of Directive 2008/95/EC (the Directive). the application date. To acquire distinctiveness, an inherently In June 2013, the Hearing Offi cer (HO) non-distinctive shape mark must exclusively found that the Mark was devoid of inherent designate the goods it is applied to as distinctive character (except in relation to originating from a particular undertaking. cakes and pastries) and had not acquired It is not suffi cient to show only that consumers distinctive character in relation to any of the recognise and associate a mark with an other goods in respect of which registration applicant’s goods. was sought. Nestlé subsequently appealed to the High Court, while Cadbury cross-appealed EARLY STAGES on the issue of allowing Nestlé’s application In 2010, Nestlé applied to register the shape to proceed in respect of cakes and pastries. of the four-fi ngered Kit Kat chocolate bar In the process of deciding these appeals, as a trade mark. The application was made Mr Justice Arnold deemed it necessary to in relation to class 30 goods. The shape in the seek a preliminary ruling from the CJEU and, application did not include the Kit Kat logo, following on from the CJEU’s response, held which is embossed onto each of the fi ngers that: the HO had not erred as a matter of law in of the actual product as sold, but was instead addressing the issue of acquired distinctiveness, sought as shown on page 27 (the Mark). and had been correct in the decision reached; Cadbury subsequently opposed the application, and that the appeal should be dismissed. Arnold arguing, among other points, that the Mark J stressed that, to demonstrate that a sign had

26 | CASE COMMENT September 2017 citma.org.uk recognised and associated a mark with an “ applicant’s goods from evidence that they perceived the goods designated exclusively by the mark applied for as originating from Trade mark law demanded a particular undertaking. The latter, he noted, that the relevant class of would secure the registration of an inherently KEY POINTS non-distinctive 3D shape mark such as the persons regard the shape Mark, while the former would not. • To acquire Kitchin LJ pointed to an applicant’s distinctiveness, concerned alone as exclusively an inherently exclusive right to use a shape in relation non-distinctive indicating origin to a product should its application prove shape mark must successful. A proprietor would not need to exclusively designate show a likelihood of confusion about the origin the goods it is applied to as originating of the product (save for certain defences) in from a particular acquired distinctive character, the applicant a trade mark infringement case, as a likelihood undertaking. It is or trade mark proprietor must prove that, of confusion could be presumed even if not sufficient only to at the relevant date, a signifi cant proportion consumers did not perceive the shape of show that consumers recognise and/or of the relevant class of persons perceived the the product as denoting the origin of the associate a mark with relevant goods or services as originating from product and were not actually confused. an applicant’s goods a particular undertaking because of the sign in In addition, Kitchin LJ noted that the HO question (as opposed to any other trade mark had properly taken into account additional • Evidence that consumers have that may also have been present). facts, such as: there being no evidence that come to rely on a mark the shape of the Kit Kat bar had featured in as denoting the origin APPEAL ARGUMENTS Nestlé’s promotional and advertising material; of the goods to which By the time of the appeal, it had been accepted the Kit Kat bar having only ever been sold it has been applied will demonstrate that the shape of the Kit Kat bar was not in an opaque wrapper; and the shape of the that the mark has inherently distinctive, and the registrability Kit Kat bar not having been shown on the become distinctive, of the Mark turned on whether it had acquired packaging for the most part. At this juncture, although this is distinctiveness. This, however, was the point it was also noted that it was relevant that there not a prerequisite for demonstrating at which agreement between the parties ended. were other fi nger-shaped chocolate products acquired Broadly, Nestlé argued that a substantial on the market long before the application date distinctiveness proportion of the relevant consumers, when that were never thought to be Kit Kats, and presented with the 3D shape of the Kit Kat bar, that the Kit Kat logo had itself always been had identifi ed it as a Kit Kat and subsequently embossed on the fi ngers of the Kit Kat bar. • The Nestlé mark as a specifi c product from a single source, In short, recognising and associating a meaning the Mark is and was distinctive within product with an applicant was not enough: the meaning of Article 3(3) of the Directive trade mark law demanded that the relevant at the relevant date. Cadbury countered that class of persons regard the shape concerned the correct question had always been whether alone (as opposed to any other trade mark consumers had come to perceive the Mark as an that may be present, such as the Kit Kat logo) indication of origin, and Cadbury had ultimately as exclusively indicating origin. Assessed succeeded in its opposition because Nestlé’s against this backdrop, the shape of the Kit Kat evidence merely established that consumers bar did not perform the function of acting as a had come to associate the Mark with Nestlé. badge of origin. APPEAL DECISION Dismissing the appeal, in the leading judgment SALMAH EBRAHIM (with which Lord Justice Floyd and Sir Geoff rey is a Senior Associate in Gowling WLG (UK) LLP’s IP team Vos, Chancellor of the High Court, agreed), [email protected] Lord Justice Kitchin stressed the importance of distinguishing evidence that a signifi cant Sophia Khan, a Trainee at Gowling WLG, proportion of the relevant class of persons assisted with this article. citma.org.uk September 2017 CASE COMMENT | 27 [2017] EWHC 1400 (IPEC), Jadebay Ltd and Another v Clarke-Coles Ltd (t/a Feel Good UK), Court of Appeal, 13th June 2017

Attachment theory Tom Hooper warns of the potential dangers of selling similar products online

THIS CASE CONCERNED trade mark The Defendant purchased the Claimants’ infringement and passing off claims arising out flagpoles from Amazon and then attached its of the sale of aluminium flagpoles on Amazon own product, sourced and purchased from a (Amazon was not a party to the proceedings, but different manufacturer in China, to the listing. the alleged infringement took place on its site.) There was clearly some knowledge that the There were two Claimants in this matter, product was not exactly the same, although the both of which had common shareholders. The quality and appearance of the products were first Claimant (Jadebay Ltd) owned UK trade very similar. mark registration No 2653159 for the DESIGN The Defendant alleged that it was ELEMENTS device mark shown on page 29. entitled to attach the listing to the This mark covered “flagpoles plastic storage box Claimants’ because it did not refer to any garden furniture” in class 20. It was filed on 18th brand, let alone the registered trade mark, February 2013 and registered on 30th August and the generic description of the products 2013. The second Claimant (Noa and Nana Ltd) matched. The Claimants’ listing (to which sold the products of the first, under licence, the Defendant’s product was attached) from March 2011. mentioned that they were products “by DesignElements”. The Defendant’s product BACKGROUND was branded “Feel Good UK”. The question It was alleged that the Defendant, at some point was not whether the Defendant attached the between July 2012 and February 2013, decided to sign or trade mark to the product or packaging use the Claimants’ Amazon listing to sell its own itself, but whether the use of the listing in flagpole product. It is worth summarising how this way infringed (and/or passed off) the this issue can arise. An Amazon listing can be Claimants’ rights. created by one seller, then used by multiple sellers offering the same COURT QUESTIONS product. For example, The IPEC had to consider a number of “ a seller can review questions in order to ascertain whether an existing listing trade mark infringement and passing off (description, had taken place. In brief, the Court had to The Court found that manufacturer, etc), consider whether: the Defendant’s use on confirm that the products (a) the Defendant had used in the course of trade are the same as its a sign and goods that were identical (or similar) Amazon did infringe the products, and then to the registered trade mark, and that such use Claimants’ registered join the original listing. led to a likelihood of confusion on the part of Amazon then tends to the public; trade mark rights and led promote the cheapest (b) the Claimants had a reputation in their mark to a likelihood of confusion of the offerings, allowing and that the Defendant’s use would be consumers to review each detrimental to the distinctive character listing in more detail. or repute of the Claimants’ mark; and

28 | CASE COMMENT September 2017 citma.org.uk Taking into account all the relevant factors, and due to the weight in favour of it, the Court disagreed. In relation to the passing off claim, the Claimants had submitted suffi cient evidence of sales, positive consumer reviews and repeat purchases that goodwill was found (which was more than trivial). Misrepresentation and damage followed. This is not surprising, given the similarities between the marks, the identity between the products and the conduct of the Defendant. The fact that it had purchased the Claimants’ product from Amazon clearly (c) the requirements of passing off had been didn’t help it in front of Her Honour Judge established (goodwill, misrepresentation Melissa Clarke. and damage). The Claimants did, however, struggle to show The Court’s assessment as to whether the that they had a signifi cant reputation in the Defendant’s use was use of the sign complained mark and for a signifi cant part of the public, of was interesting. The Defendant argued that it so that ground was quite easily dismissed. had not used the sign complained of at all. It had The Court found that the Defendant’s use on merely listed a generic 20ft aluminium fl agpole Amazon did infringe the Claimants’ registered on Amazon. The Court dismissed this easily. trade mark rights, and that such use led to a The Defendant was selling a product listed as a likelihood of confusion on the part of the public. 20ft aluminium fl agpole “by DesignElements”. It also found that the Defendant’s use amounted The use was therefore not generic. Whenever to a passing off of the Claimants’ goods. KEY POINT the product was presented to a consumer (or As a result, an injunction was awarded possible consumer) it was expressed to be “by to restrain the Defendant from committing • Attaching products to DesignElements”. The consumer could easily further infringing acts, together with damages an existing Amazon listing when the discover that this was the manufacturer’s brand. amounting to more than £25,000. products are clearly The Court was satisfi ed that there was use of not the same could the DESIGNELEMENTS trade mark. TAKEAWAYS be an infringing act The Court did not fi nd the marks to be This case is another reminder that businesses identical, because the registration relied upon should carefully consider their online marketing was presented in a stylised font containing a strategies, especially if they are selling their 1. [2014] EWHC 110 (Ch). blue fl ag device. It also had spacing between products through online auction sites. Attaching the words, while the sign complained of did not. products to an existing Amazon listing when This reduced the identity between the marks. the products are clearly not the same could • UK trade mark No 26�31�� But, as readers would surely agree, the marks potentially be an infringing act. were still highly similar. The Court went on Although the outcome is perhaps not to fi nd that the use complained of was for surprising, it is a useful reminder of the types fl agpoles, an identical product. of marketing practices that are not permitted • Use complained of: After that conclusion was reached, the under trade mark laws. It also highlights (once by DesignElements outcome was not really that surprising. Despite again) the usefulness of the IPEC in awarding the fact that no actual confusion was evidenced, injunctions and damages. there was a very high likelihood of confusion on the part of the average fl ag-buying consumer. Citing Jack Wills v House of Fraser1, the TOM HOOPER Defendant attempted to argue that the lack of is a Chartered Trade Mark Attorney at Taylor Wessing LLP confusion was signifi cant, especially since it had [email protected] sold its products for around four years, and that, Tom advises on all aspects of trade mark registration, because the mark lacked distinctive character, protection and enforcement in the UK, Europe a likelihood of confusion could not be found. and internationally. citma.org.uk September 2017 CASE COMMENT | 29 [2017] EWHC 1408 (IPEC), Mermeren Kombinat AD v Fox Marble Holdings plc, High Court, 14th June 2017

Losing its marbles It is getting harder to find solid ground on distinctiveness, reports Katherine Thompson

“SINCE THE TIME of the Roman empire Following this logic, Hacon J concluded that, marble has been extracted from quarries Mermeren’s use of SIVEC aside, very few of the near the city now called Prilep, in the Balkan relevant consumers would have heard of Sivec peninsula.” Thus began His Honour Judge the place (which is very small) at the filing Hacon’s judgment in Mermeren Kombinat AD date. They would not understand the mark to v Fox Marble Holdings plc. Near to the city of indicate the geographical origin of the goods. Prilep, Republic of Macedonia, is a mountain Therefore, the mark was inherently distinctive. pass called Sivec, where the notable marble at So far, so simple. the centre of this case is quarried. Mermeren Kombinat AD (Mermeren) is IMPACT OF USE the proprietor of EU trade mark No 12057915 But there was a twist. As Fox argued, it is SIVEC, covering “marble of all types”, conventional to identify types of marble by registered since 2013. Fox Marble Holdings reference to the place where they are quarried. plc (Fox) sells marble under the mark SIVEC. Fox argued that the average consumer, on Mermeren accordingly brought infringement seeing Mermeren’s use of SIVEC, would assume proceedings against Fox, which argued that that it indicated the place from which the its use merely indicated geographical origin, marble originated, even if, prior to that point, and that it had a defence under Article 12 of it had no idea that such a place existed. Council Regulation (EC) No 207/2009. Fox Hacon J did, to an extent, accept this counterclaimed for invalidity under Articles reasoning. If a mark is used in a certain way, 7(1)(b)–(d), 51(1)(b) and 52(1)(b). Mermeren it could lead the average consumer to believe denied these allegations, and claimed acquired that it indicates the geographical origin of a distinctiveness under Article 7(3). Fox product, even if the consumer has never heard acknowledged that, if the mark did not indicate of the place. A consumer can be educated into the geographical origin of the marble, the believing that a sign indicates a place, just registration would be valid and the defence as it can be educated into believing that under Article 12 would also fall away. The case the sign indicates commercial origin. therefore turned on whether or not SIVEC This is where a strict adherence indicated the geographical origin of the marble. to the distinction between the inherent distinctiveness TIMING QUESTION of a mark and distinctiveness “ This raised the question of whether the use acquired through use made of a mark prior to its filing date can be starts to leave a gap for taken into account when assessing its inherent some counter-intuitive Mermeren had failed to distinctive character. Hacon J concluded that application of the law. show any evidence prior it should not. If use is automatically taken Following this logic, a mark into account in the initial assessment under can be either inherently to 2011 that it had used Articles 7(1)(b)–(d), what is the purpose distinctive or inherently SIVEC in a way that of Article 7(3), allowing inherently non- non-distinctive, but acquire distinctive marks to be registered on the distinctiveness through indicated it was a brand basis of acquired distinctiveness? use. What it cannot do,

30 | CASE COMMENT September 2017 citma.org.uk on a strict reading of Articles 7(1)(c) and The mark was deemed inherently distinctive, 7(3), is lose its distinctive character through and, if use need not be taken into account in use, even though it is possible to educate a assessment of inherent distinctiveness, nothing consumer that a sign indicates the geographical further need be said. However, if Article 7(3) origin of the goods in question. was also engaged, the mark was found to have Although it seems unlikely that a party would indicated geographical origin by 2010 – but that choose to educate consumers into believing impression was reversed through use during that its brand is non-distinctive, that is largely 2011–2013, so that, by the fi ling date, the mark what Mermeren was found to have done had acquired distinctiveness. through its use of SIVEC prior to 2011. Mermeren had used and registered BIANCO AMPLE INTEREST SIVEC®, and referred to types of marble as This decision contains points of interest at “Sivec A”, “Sivec C”, etc, but failed to show any both a theoretical and practical level. The evidence prior to 2011 that it had used SIVEC interpretation that use of a mark should in a way that indicated that particular mark not be taken into account when assessing was a brand. distinctive character under Articles 7(1) (b)–(d) is perhaps not often considered. AFTER KIT KAT When questions of acquired distinctiveness This manner of use was, in Hacon J’s view, are not at stake, it is tempting to jump straight KEY POINTS crucial to the impression that Mermeren’s into asking what the average consumer’s • Following Kit Kat, it is customers received. Applying the still-fresh perception of a mark is at the relevant date, more important than judgment of the Court of Appeal in Kit Kat, and not to ask whether that perception is a ever to ensure you he drew a distinction between: a consumer result of the inherent qualities of the mark or use your mark “as a trade mark” associating a sign with an undertaking (which of the proprietor’s use. Although it is hopefully is insuffi cient to generate distinctive character); rare that a brand owner’s use of a mark would • Although a non- relying on the mark to guarantee origin (which weaken its distinctive character, there may distinctive mark can demonstrates distinctiveness, but goes beyond be instances in which this is the case, and the gain distinctiveness through use, a strict the threshold necessary to show acquired ability to argue that such use should not be reading of the law does distinctiveness); and – somewhere between the taken into account could make the diff erence not allow an inherently two – a mark having the ability to demonstrate between obtaining a registration and not. distinctive mark to exclusive origin when used on its own (even On a practical level, the decision points lose its distinctive character that way if consumers have not, in practice, relied on towards the things that brand owners can (other than under the mark alone to guarantee origin). The last do to educate consumers to see their marks Article 7(1)(d)) of these three is what must be shown in order as brands: use the ® symbol; put the mark to demonstrate acquired distinctiveness. in capitals; put it in a diff erent font; use it as The non-trade mark use made prior to 2011 an adjective; use “look for” advertising; and may have led consumers to associate SIVEC use the mark in a consistent form. We have with Mermeren, but it did not lend the mark heard it all before, but this decision provides the ability to demonstrate origin. It was only a welcome reminder that, following Kit Kat, after 2011 that Mermeren started using SIVEC the courts will be more alive than ever to the on its own (though use of BIANCO SIVEC nature of a brand owner’s use, and whether continued), marking it with “®”. It was used this is trade mark use. in prominent positions and generally indicated to customers that this was a brand. Hacon J ruled that, as a result of this use, in the space of a mere two years, a signifi cant proportion KATHERINE THOMPSON of relevant persons had changed their view is a Chartered Trade Mark Attorney at Stobbs and, by the fi ling date, would have seen SIVEC [email protected] as an indicator of origin, lending it acquired Katherine has a particular interest in issues distinctive character under Article 7(3). relating to geographical descriptiveness. citma.org.uk September 2017 CASE COMMENT | 31 O/223/17, COCO’S LIBERTY (Opposition), UK IPO, 11th May 2017

Taking Liberty Caroline Phillips reveals why a famous fashion brand was victorious

ON 5TH DECEMBER 2015, Coco’s Liberty fi ve years before publication of the application. Ltd (CLL) applied to register UK trade mark CLL submitted that third parties were also using No 3139335 COCO’S LIBERTY in class 14 COCO, but provided no evidence to back up the for jewellery-related products, including claim; therefore, the argument was dismissed. jewellery boxes. CLL argued that no actual confusion had Chanel Ltd (Chanel) opposed this application occurred, but again provided no evidence that on the basis of an alleged likelihood of confusion customers had been exposed to both marks. with three earlier registered rights: UK trade The HO therefore dismissed this submission. marks Nos 2584184 COCO, 3099353 COCO Chanel argued that its use of COCO, and KEY POINTS CRUSH and 3109878 I LOVE COCO. The the links to its founder Gabrielle “Coco” Chanel, • Evidence of enhanced Hearing Offi cer (HO), for the purposes of meant that the mark COCO had an enhanced distinctive character procedural economy, focused his attention on level of distinctive character in respect of must be provided for Chanel’s best case, the COCO mark registered, jewellery, and it provided evidence to support the mark as registered, or must create an notably, in relation to jewellery. this. The HO considered the traditional obvious link to the The majority of the goods were found to factors: (i) market share; (ii) the intensity registered mark, in be identical, as they were types of jewellery, and geographic extent of the use of the mark; order for an opposition while “jewellery boxes” were found to be (iii) the amount invested in promoting it; to succeed similar to jewellery, as they may share trade (iv) the proportion of the relevant section of the • It is crucial to plan channels, are available from the same outlets public that identifi es the goods as coming from submissions and and are complementary. The level of attention a particular undertaking; and (v) statements from support them of the relevant consumer was found to be industry experts. Due to the evidence submitted with evidence “reasonable”, as opposed to “high”, because and the fact that the mark relied upon did not jewellery, although not an everyday purchase, reference CHANEL, there was no obvious link is not an unusual one. The HO found that the to Ms Chanel, and the claim was rejected. marks shared a moderate degree of visual, aural and conceptual similarity, noting in particular DECISION that COCO would be understood to be a Notwithstanding the fi nding that the mark reference to a physical person, and fi nding COCO did not benefi t from enhanced that the words COCO’S and LIBERTY each distinctiveness, and that women’s forenames had equal distinctiveness, as the elements are not uncommon in the jewellery industry, the of each mark hang together as a phrase. HO upheld the opposition, which was successful Chanel argued that COCO and COCO in its entirety. The case highlights the need for CRUSH constituted a family of marks, and that solid evidential support for all arguments. COCO’S LIBERTY would be considered part of this family. The HO did not fully consider this, but he expressed scepticism. EVIDENCE CLL (which was unrepresented) requested CAROLINE PHILLIPS proof of use, but this was denied, as Chanel’s is a Chartered Trade Mark Attorney at Hansel Henson Limited earlier rights had not yet been registered for [email protected]

32 | CASE COMMENT September 2017 citma.org.uk O/240/17, ELECTRIC BALLROOM (Invalidity), UK IPO, 1�th May 2017

Can I be electric too? Submitting solid evidence remains important in passing off cases, says Samantha Collins

THIS INVALIDITY ACTION was brought by the music venue was of cultural importance and Castle Rock Properties Ltd (CR), owner of that, although only at one location, “the length the iconic London music venue the Electric of use and the likely appreciation of the name Ballroom, against a UK trade mark registration by members of the public is symptomatic of for an identical mark in class 25 by Mr Ashdjian a goodwill which is far more than trivial”. (the Proprietor). Moving on to misrepresentation, the HO held CR relied on s5(4)(a) of the Trade Marks Act that, although CR had goodwill in the mark for 1994, arguing that it had earlier use of the mark a clothing market, it was unlikely to expand ELECTRIC BALLROOM for its music venue, into trading in branded clothing, and, of course, clothing and operation of a clothes market in CR had failed to demonstrate goodwill for the venue. clothing itself, so no misrepresentation would The Proprietor put CR to proof of use and occur on either basis. However, he held that argued that, even if it had use, there was no there was misrepresentation when ELECTRIC KEY POINTS misrepresentation, since the intended use was BALLROOM was used for certain items of • Evidence of use specifi cally for ballroom-dancing garments, thus clothing, as a substantial proportion of the public for identical goods “ballroom” would be descriptive of the goods, would believe this was related to the venue of was insufficient, but there were and “electric” would invoke a feeling normally that name. The HO concluded that there could misrepresentation associated with dancing. be damage here based on injurious association. and damages, based on goodwill in the EVIDENCE OFFERED COMPROMISE mark for an iconic music venue CR asserted that staff members wear T-shirts Since all three elements of passing off were and hoodies bearing the mark, and that some present, the application for invalidity succeeded. • The HO identified a merchandise would have been sold to the public, However, the HO indicated that the Proprietor compromise position, but did not produce evidence to support this. could amend its specifi cation to “articles of allowing the Proprietor to avoid invalidity It also argued that visiting bands were given clothing, footwear and headgear for ballroom permission to use the ELECTRIC BALLROOM dancing”, or to include any other goods that are name on their merchandise sold at the venue. not traditionally merchandised goods, in order The Hearing Offi cer (HO) did not agree that to avoid the objection. this proved use for clothing. This case highlights the importance of solid CR produced a screenshot of a Facebook page evidence in passing off cases, and the UK IPO’s and an article on camdenguide.co.uk about the willingness to fi nd a compromise where the clothing market held at the Electric Ballroom scope of the earlier goodwill is limited or the until August 2014, but provided no evidence parties operate in markedly diff erent areas. It is regarding the market’s sales or footfall. Equally, not at all surprising that the Proprietor has now there was no evidence that the market was limited its specifi cation to goods for ballroom known outside Camden, London, so it was held dancing, as suggested. that any goodwill in the operation of a clothes market was small, but more than trivial. However, CR produced evidence including tickets, signage, social media screenshots and independent press articles showing that the SAMANTHA COLLINS venue had been called ELECTRIC BALLROOM is an Associate and Chartered Trade Mark Attorney since 1978, and that high-profi le artists had at Marks & Clerk played there. The HO held that this showed [email protected] citma.org.uk September 2017 CASE COMMENT | 33 O/264/17, ABSURD BIRD (Invalidity), UK IPO, 2nd June 2017

Don’t be absurd Oliver Tidman confi rms the need to introduce all relevant evidence

THIS CASE CONCERNED a consolidated mark BIRD in relation to “restaurant services” in declaration of invalidity brought by Dirtybird class 43, as its use was of a fi gurative BIRD mark. KEY POINTS Restaurants Ltd (Dirtybird) against UK trade • The distinctive and mark registrations Nos 3120192 ABSURD BIRD INVALIDITY dominant component (fi gurative, series of four marks) and 3123434 The invalidity action succeeded in respect of all of the contested ABSURD BIRD (the Registrations) in the name the class 43 services for which the Registrations mark was the of Salima Vellani (the Registered Proprietor), were protected. Although it was accepted that second element covering, inter alia, class 43 services. the mark used by Dirtybird had a degree of • Given that the marks Based on Dirtybird’s earlier UK trade mark stylisation, the distinctive element was still involved were highly registration No 3035551 BIRD, invalidity the word BIRD. similar for identical services, the HO proceedings were brought under s47 of the Taking account of the average consumer declined to consider Trade Marks Act 1994 (the Act) on the grounds and the nature of the purchasing decision, passing off of ss5(2)(b) and 5(4)(a) in respect of class 43 the Hearing Offi cer (HO) was of the view that services only. a low to medium degree of attention would be • It is always wise to include a passing paid to the selection of such services. As the off ground in any BACKGROUND services were considered to be identical and invalidity action Dirtybird fi rst opened a restaurant in the marks highly similar, there was a likelihood Shoreditch, London, on 28th April 2014, with of consumers being indirectly confused. substantial restaurant sales under its BIRD It is worth noting that the only items of mark. From this time, Dirtybird also owned the evidence admitted for the Registered Proprietor • UK registration domain name www.birdrestaurants.com, which, were its domain names absurd-bird.com and No 31201�2 along with the restaurant exterior and interior, absurd-bird.org, registered in December 2013. all used a fi gurative BIRD mark rather than the Numerous details regarding branding and word mark registered. Although Dirtybird’s photographs showing use of ABSURD BIRD mark was clearly fi led before both of the post-July 2015, including “state of the register” Registrations, it was registered in February evidence, were of no assistance to the HO. 2016. Accordingly, the Registered Proprietor This case serves as a reminder that, although could not request proof of use. the fi rst element of a mark is considered Under s5(2)(b) of the Act, Dirtybird argued important, the distinctive and dominant that the marks were highly similar and the class components must also be considered. Although 43 services were identical. Relying on its passing the decision is unsurprising, it is nonetheless off rights under s5(4)(a), it contended that it useful, as it highlights the need to provide had considerable goodwill in the BIRD mark, relevant and dated evidence in relation to brand and that use of ABSURD BIRD would cause creation, which the Registered Proprietor failed misrepresentation and damage through loss to do in this case. of sales or detriment to the repute and distinctive character of its BIRD mark. The Registered Proprietor alleged that its ABSURD BIRD mark had been created in 2013, prior to the fi ling of Dirtybird’s mark. It contended that the fi rst element ABSURD OLIVER TIDMAN was particularly important and also denied that is a Director at Tidman Legal Dirtybird had any reputation or goodwill in the [email protected]

34 | CASE COMMENT September 2017 citma.org.uk O/263/17, VISII (Opposition), UK IPO, 2nd June 2017

Visii prompts revisitation Objections can be overcome by a new choice of words, writes Victoria Leach

DREAM IT GET IT Ltd (the Applicant) fi led a In view of the identity between the goods UK trade mark application for VISII for software and services, and the high degree of similarity in class 9, online advertisements in class 35, between the marks, a likelihood of confusion and “software as a service [SaaS]; [and] search was found in respect of software in class 9 and engines (providing-) for the internet” in class software as a service in class 42. However, the 42. Vero UK Ltd (the Opponent) opposed the matter did not end there. The HO cited Mercury KEY POINTS application based on an earlier EU trade mark Communications2 to argue that a trader for a • In UK opposition registration, shown below. limited area of software should not obtain a proceedings, HOs The class 9 goods were considered monopoly over all software. She referred to have the power to identical, as the Applicant’s goods (software) Tribunal Practice Notice 1/2012 to decide that propose a rewording encompassed the Opponent’s goods (computer of the specification to overcome software for design and manufacture). the objection “Software as a service [SaaS]” in class 42 “ was considered identical to “licensing of • In doing so, the HO computer software for design and manufacture” must have regard The HO decided that it to any rewording in class 45, and also highly similar in that both proposed by the services allow access to software, meaning that was within her remit to trade mark owner the trade channels could coincide, and they devise a rewording of could be in competition. the specifi cation Nevertheless, the class 35 services were 1. Case T-316/07. considered dissimilar. The Hearing Offi cer (HO) 2. Mercury Communications referred to the case of Commercy AG v OHIM1 Ltd v Mercury Interactive to support her decision that the Opponent’s (UK) Ltd [1995] FSR 850. provision of software and the design and it was within her remit to devise a rewording development of software in class 42 could not be of the specifi cation to overcome the objection. held similar to “online advertisements” simply She therefore found that the Applicant’s mark • The Opponent’s mark because both involved software at some level. could proceed for “search engine software” in The Opponent also sought to argue that the class 9, but the term “software as a service” did Applicant’s “search engines (providing-) for not lend itself to a suitable limitation that would the internet” in class 42 overlapped with its avoid a likelihood of confusion. educational and training services in class 41, This case serves as a reminder to trade mark as “search engine technology is an essential way applicants in opposition proceedings that they of helping train people”. Unsurprisingly, this can put forward alternative rewordings of the was rejected on the basis that the core meaning specifi cation to invite the HO to avoid a fi nding of the services is completely diff erent. The of a likelihood of confusion. opposition therefore failed in respect of “online advertisements” in class 35 and “search engines (providing-) for the internet” in class 42. The Opponent’s mark, which possessed a high degree of inherent distinctive character, was found visually highly similar and aurally VICTORIA LEACH identical to the Applicant’s mark. A conceptual is a Senior Trade Mark Attorney MCITMA at Stobbs comparison was not relevant. [email protected] citma.org.uk September 2017 CASE COMMENT | 35 T-223/15, Morton’s of Chicago, Inc v EUIPO and Mortons the Restaurant Ltd, CJEU, 1�th May 2017

Thwartin’ Morton’s A private club proved its wider infl uence, reports Nicola Hill

THIS DECISION OF the General Court (GC) being assigned. Did the goodwill therefore reside upheld a decision of EUIPO’s Board of Appeal with MTRL or the owner? A 2002 agreement KEY POINTS (BoA) in which an EU fi gurative mark (the demonstrated that MTRL had been granted • Goodwill is legal EUTM) containing the word MORTON’S was the exclusive right to operate the club and use property that is found to be invalid under Article 53(1)(c) of the trading names associated with it. It was, capable of being Council Regulation (EC) No 207/2009, read in therefore, concluded from the evidence that assigned. Anyone conjunction with Article 8(4), in light of prior goodwill was assigned with the management wishing to assert prior rights under the tort use in the UK by the Intervener of a series rights. This case thus demonstrates that it is of passing off should of unregistered marks containing the word important to ensure that goodwill is properly verify the intended MORTONS/MORTON’S. dealt with in any transfer of rights. applicant for invalidity In January 2012, Mortons the Restaurant Ltd owns the goodwill (MTRL), operator of a UK private members’ LOCAL PRESENCE prior to proceeding club, fi led an application for a declaration of The GC also rejected the argument pursuant to • Under Article �(4), a invalidity of the EUTM (registered, inter alia, in Article 8(4) that MTRL’s prior rights had mere sign used in the course class 43, including restaurant and bar services), local signifi cance, although club membership of trade having more than local significance relying on its prior use of unregistered marks was small and localised in London. In applying is considered from including MORTON’s and MORTONS Article 8(4), the GC was required to consider both a geographic and RESTAURANT in the provision of food and both the geographic and economic signifi cance economic perspective. entertainment. The Cancellation Division of the marks. Economic signifi cance is Even a small, private London club may be rejected the application. However, on demonstrated by the duration of use of the able to demonstrate 1 15th February 2015, the BoA annulled the earlier unregistered mark and the degree of use , more than local Cancellation Division’s decision, holding both of which must be non-negligible.2 On the significance with that MTRL had successfully invoked its prior evidence (including accounts and membership sufficient evidence rights, relying on the law of passing off . records), MTRL’s degree of use was held to be The Applicant appealed the decision to the non-negligible, despite modest membership and GC, relying on two grounds: infringement of turnover due to its private-member status. From 1. Case C-96/09P, Anheuser Article 8(4), that the contested decision was a geographical perspective, a series of national Busch v Budejovicky fl awed; and Article 52(1)(b), bad faith (not and international press articles, magazines and Budvar EUC:2011:189, considered by the GC). The GC examined fi ve restaurant guides were submitted, including an para 160. 2. For example, Case complaints from the Applicant. All arguments article in British Airways’ High Life magazine. T-534/08 (GRANUFLEX), were ultimately unsuccessful, but two points Based on this evidence, the GC found Morton’s 30th September 2010, of interest bear further consideration. Club to have a reputation extending beyond not published. merely local signifi cance. GOODWILL OWNED To establish passing off , MTRL needed to demonstrate that it owned the goodwill in the earlier marks. MTRL is, however, only the operator of Morton’s club, not the owner. NICOLA HILL Goodwill is inseparable from the business to is an Associate at LLP which it adds value (IRC v Muller [1901] AC 217), [email protected] and is recognised as legal property capable of Nicola specialises in trade mark, copyright and design law.

36 | CASE COMMENT September 2017 citma.org.uk T-375/16, Sabre GLBL Inc v EUIPO (INSTASITE), CJEU, 1�th May 2017

Sabre put to the sword Olivia Gregory gets straight to the point of a dispute related to defi nitions

IN 2015, US company Sabre GLBL Inc applied Wikipedia, which can be publicly modifi ed). to register INSTASITE as an EU trade mark, There are separate dictionary defi nitions for covering various web-related goods and services “insta” and “site”, so the Mark would naturally in classes 9, 35 and 42 (the Mark). The Mark be split into two words by the relevant English- was refused as descriptive and non-distinctive, speaking public, which would understand the a decision that Sabre contested up to the Mark as descriptive of goods/services for General Court (GC). building websites quickly. There was nothing Its appeal centred on three pleas: unusual about this combination. In its analysis, 1. Sabre had not been given the chance to present its the GC kept returning to the principle that the comments on an argument of the Board of Appeal Mark is to be interpreted from the perspective (BoA), as it was entitled to under Article 75 of of the relevant public. KEY POINTS Council Regulation (EC) No 207/2009 (EUTMR). In light of the decision that the Mark was 2. The Mark was not descriptive, so it should not descriptive, the third plea was rejected as • The right to present comments applies only have been refused under Article 7(1)(c) EUTMR. ineff ective, as only one ground for refusal needs to evidence/reasons 3. The Mark was not devoid of distinctive character, to apply for a mark to be refused registration. on which decisions so it should not have been refused under Article are based 7(1)(b) EUTMR. PUBLIC INTERPRETATION CRUCIAL • Online definitions can To conclude, this time, Sabre failed to make have probative value, PLEAS REJECTED the cut. but it is the relevant In relation to the fi rst plea, the BoA had Key points to consider are that: the right public’s interpretation identifi ed the Mark as laudatory and an under Article 75 only applies to evidence/ that is crucial advertising slogan, which the examination reasons on which decisions are based; online division had not. Sabre submitted it had not defi nitions can have probative value; and the been given a chance to comment on this. relevant interpretation of a mark is, as always, However, Article 75 applies to reasons on which that of the relevant public. decisions are based. The GC considered that Ultimately, however, it is the relevant public’s the BoA had merely pointed out these factors, interpretation that is crucial. If a dictionary rather than taken them into consideration in defi nition that the relevant public would not the refusal of the Mark. Therefore, this plea recognise is cited, there is nothing in this case was rejected. to suggest applicants could not undermine its Regarding the second plea, the initial relevance on that basis. objection was based on online defi nitions of “insta” and “site”. EUIPO’s use of online dictionary defi nitions is common, but the Applicant brought the probative value of such defi nitions into question. The GC dismissed this, noting that the defi nitions are from one of OLIVIA GREGORY the main English dictionaries, privately operated is a Chartered Trade Mark Attorney at Appleyard Lees and controlled (rather than, for example, [email protected] citma.org.uk September 2017 CASE COMMENT | 37 T-637/15, Alma – The Soul of Italian Wine LLLP v EUIPO and Miguel Torres, SA (SOTTO IL SOLE ITALIANO SOTTO IL SOLE), CJEU, 31st May 2017

Sun seekers Paul McKay shines light on a decision where two wine marks found themselves at odds

THE APPLICANT, AN Italian wine producer, similarity of the marks. The evidence submitted fi led an EU trade mark (EUTM) application for included: website extracts demonstrating that the composite mark depicted below covering diff erent undertakings off ered wines in the “wines” in class 33. This application was EU under marks that included the words “sol”, KEY POINTS opposed by a Spanish wine producer on the “sole”, “soleil” or “sun”, and various images of basis of Article 8(1)(b) and 8(5) of Council the sun; and lists of EUTM registrations that • Even where the Regulation (EC) No 207/2009. The marks relied covered goods in class 33 and contained the reputation of a trade mark is not contested, upon included an EUTM registration for VIÑA same words or images. if it is found to have SOL (“vineyard of the sun”). In addition, an Although the GC found the mark VIÑA SOL an inherently low EUTM for SOL was relied upon for Article to be somewhat fanciful, it considered VIÑA distinctive character, 8(1)(b) only. Both marks covered “alcoholic to be only weakly distinctive and SOL to be it will be difficult to rely on Article �(�), even for beverages (except beers)” in class 33. of below normal distinctiveness, with the identical goods The Opponent was successful under fi gurative element also found to add a certain Article 8(1)(b), the Opposition Division taking degree of originality to the Applicant’s mark. By • It pays to review the EUTM SOL as its point of reference. The contrast, the dominant element of the contested EUIPO decisions critically with regard Applicant appealed, and the decision was upheld EUTM did not consist solely of the word SOLE, to the assessment of by the Board of Appeal (BoA), which also chose but of the association of the terms SOLE and evidence, as the GC to examine the grounds under Article 8(5) that ITALIANO. Therefore, the GC concluded that may order the BoA to were not considered by the Opposition Division. the mere reference to the sun was not capable review the evidence until a correct decision The BoA found that VIÑA SOL had a of conferring conceptual similarity. is reached reputation in the EU with regard to wines, which, in conjunction with the similarity of the CONCLUSION signs at issue, the distinctive character of VIÑA Overall, given the dissimilarity of the marks SOL and the fact that the goods were identical, and the weak distinctive character of the earlier • The Applicant’s mark was suffi cient to establish a link between the marks, even if it enjoys reputation (which was signs for a substantial proportion of Spanish-, not challenged during any of the proceedings) Portuguese- and French-speaking consumers. and the marks are registered for identical goods, On further appeal, the General Court (GC) the public will not make any association annulled the BoA’s decision on the basis that it between the marks. did not make clear whether the BoA had taken So, even if a mark’s reputation is demonstrated into account the Applicant’s evidence in support and not contested (as in this case), if it is found of the weak distinctive character of the words to have a low distinctive character, it will be “sol” and “sole”. On re-examination of the diffi cult to rely on Article 8(5), even for identical evidence, the BoA confi rmed its decision goods. This case also shows that it clearly pays and rejected the application. to be vigilant when reviewing EUIPO decisions. SECOND ATTEMPT The Applicant fi led a second appeal before the GC. In its judgment of 31st May 2017, the GC overturned the BoA’s decision, holding that it had erred in its reasoning regarding comparison PAUL McKAY of the marks. It found that the Applicant’s is a Trade Marks Associate at Baker McKenzie’s London offi ce evidence did alter the overall assessment of the [email protected]

38 | CASE COMMENT September 2017 citma.org.uk T-258/16, Mediterranean Premium Spirits, SL v EUIPO and G-Star Raw CV (GINRAW), CJEU, 7th June 2017

Raw roars again Chris Morris sets out the Court’s conclusions on another raw mark dispute

IN DECEMBER 2013, Mediterranean Premium similarity, as well as conceptual similarity. It was Spirits, SL (the Applicant) fi led an application held that consumers would focus more on the to register the word mark GINRAW as an EU element “raw” within the mark applied for, which trade mark (EUTM) in classes 21 and 33 for is dominant, than on the element “gin”, which “household and kitchen utensils” (among is descriptive. others) and “alcoholic beverages (except • A global assessment of likelihood of confusion beers); [and] gin”, respectively. is pointless, because there is a lack of similarity G-Star Raw CV (the Intervener) fi led a between the goods and signs at issue, and notice of opposition to the registration of the earlier mark RAW is descriptive. The GC the mark, based on its earlier EUTM for the considered the BoA’s views in relation to word mark RAW, in respect of all of the goods the similarity of the goods and signs, and applied for. The opposition was upheld at the distinctiveness of the earlier mark, and fi rst instance and by EUIPO’s Board of Appeal concluded it was right to fi nd that there was a (BoA). The Applicant appealed to the General likelihood of confusion in relation to the mark. Court (GC). Consequently, the appeal failed. KEY POINTS

OPPOSITION BASIS CRUCIAL VIEW • Even where two The opposition was based on Article 8(1)(b) This case confi rmed how the Courts believe words have been of Council Regulation (EC) No 207/2009, consumers view marks – namely, even where juxtaposed to create one, the namely a likelihood of confusion on the part two words have been combined to create one consumer will of EU consumers. The appeal considered the new word, it is natural for consumers to pull pull them apart Applicant’s following pleas in law: them apart in an attempt to understand the to infer meaning • The BoA infringed its obligation to state reasons mark’s meaning, which can produce dominant • The GC appeal is for its decision. It was held that the BoA is not elements. In this case “gin” was the more not a rehearing, required to provide an exhaustive account of familiar element, which meant that consumers and new the lines of reasoning so long as the facts and would focus more on the element “raw”, evidence will considerations that have decisive importance, which was identical to the earlier mark. not be admitted in the context of the decision, are set out. As regards procedure, the Applicant • The goods applied for are not similar to attempted to submit new evidence to the the goods for which the Intervener’s sign is application in the form of EUIPO decisions registered. The Applicant unsuccessfully argued and Wikipedia extracts. As the role of the that “shakers, manual mixers (cocktail shakers), GC was to review the legality of the decision cocktail stirrers, cocktail straws, cocktail sticks, of the BoA, only the annexes that related [and] cocktail mixing sticks”, covered by the to EUIPO’s decision-making practice mark applied for, and “household or kitchen were admissible. utensils and containers”, covered by the earlier mark, are not similar. Pointing to the Explanatory Notes of the Nice Classifi cation, the GC held that the “shakers, etc” applied for are utensils and containers typically found in the kitchen, and CHRIS MORRIS are therefore identical goods. is a Senior Associate and Chartered Trade Mark Attorney • There is no similarity between the signs. The GC in the Intellectual Property team at LLP found an average degree of visual and phonetic [email protected] citma.org.uk September 2017 CASE COMMENT | 39 T-294/16, Kaane American International Tobacco Company FZE v EUIPO and Global Tobacco FZCO (GOLD MOUNT), CJEU, �th June 2017

Uphill battle Dale Carter explains why demonstrating EU genuine use can be a mountain to climb

ON 21ST AUGUST 2009, the mark shown below to actual sales or marketing of the products in was registered to Kaane American International the EU. Tobacco Company FZE (Kaane) under EU • The Tobacco Asia advertisement did not target trade mark (EUTM) No 007157233 for the relevant (EU) public. “tobacco; smokers’ articles; [and] matches” • The customs documents did not refer to the in class 34. registered mark, and Kaane had not provided On 22nd October 2014, Global Tobacco any additional explanation or information KEY POINTS FZCO fi led an application to revoke the regarding these documents. registration for non-use. Kaane fi led evidence, • The regulatory barriers to Kaane marketing its • Regulatory barriers which in summary consisted of: cigarettes in the EU did not arise independently preventing access to the EU market will not • evidence of participation in international tobacco of the will of the proprietor and could not always justify non-use trade fairs in the EU between 2006 and 2013, be considered a proper reason for non-use of a mark including photographs of trade stands bearing (unlike the securing of marketing authorisation the word mark GOLD MOUNT; for pharmaceuticals). • Use of a variant mark where one • invoices detailing costs for hosting trade stands • Proper reasons for non-use must cover the entire co-dominant element at those fairs; fi ve-year period. Kaane had only attempted to of the registered • one invoice issued by a magazine publisher; satisfy EU regulatory requirements towards version is missing is • one copy of a magazine advertisement in Tobacco the end of that period. unlikely to be use of an acceptable variant Asia showing the word mark GOLD MOUNT; • copies of customs receipts relating to the import LATE ACTION of small volumes of cigarettes for the purpose of The GC did not look favourably on Kaane’s attending trade fairs; and late attempt to reformulate its product so • The Kaane mark • an analysis report issued by a laboratory in as to comply with EU regulatory standards. Germany, testing Kaane’s cigarettes for levels Ultimately, the barrier preventing Kaane from of tar, nicotine and carbon monoxide. selling its GOLD MOUNT cigarettes on the On 28th July 2015, the Cancellation Division EU market was of its own making, and this upheld the application for revocation, fi nding was not suffi cient to justify non-use of the mark. that there had been no genuine use of the mark Trade mark owners should note that regulatory and no justifi able reasons for non-use. Kaane’s barriers to the commercialisation of a product appeal to the Board of Appeal (BoA) failed, so in the EU may not off er a justifi able reason it appealed to the General Court (GC), which for non-use if it is within the control of the held as follows: proprietor to overcome those barriers. This • The BoA had correctly assessed the evidence case also reminds us of the importance of and it could not be relied upon to establish using a trade mark in the form in which it genuine use. is registered. • The fi gurative element in the EUTM was co-dominant with the word element and was absent from Kaane’s evidence. The mark used did not constitute an acceptable variant. • Kaane admitted there had been no sales of its DALE CARTER GOLD MOUNT cigarettes in the EU, because is a Senior Associate in the Trade Marks team they did not meet EU regulatory standards. at Reddie & Grose LLP Participation in trade fairs could not be linked [email protected]

40 | CASE COMMENT September 2017 citma.org.uk More details can be found at citma.org.uk

DATE EVENT LOCATION CPD HOURS

12th September CITMA Lecture – Leeds HGF, Leeds LS11 1 The afterlife of brands: Trade mark registrations and insolvency

13th September CITMA Webinar Log in online 1 Trade marks and EU SUGGESTIONS WELCOME competition law We have an excellent team of volunteers 26th September CITMA Lecture – London* 58VE, London EC4 1 who organise our programme of events. Refl ections on brand licence However, we are always eager to hear agreements – the good, bad from people who are keen to speak at and stuff in between a CITMA event, particularly overseas members, or to host one. We would also 5th October CITMA Lecture – Potter Clarkson LLP, 1 like your suggestions on event topics. Nottingham Nottingham NG1 Please contact Jane at [email protected] Trade mark case-law update with your ideas. – an analysis of issues and trends arising from recent key trade mark decisions * Sponsored by 12th October CITMA Autumn Hyatt Regency, 5 Conference & Networking Birmingham B1 Drinks Reception – Birmingham* IP and social media ** Reception sponsored by 24th October CITMA Lecture – London* 58VE, London EC4 1 Nailing jelly – tips on eff ective trade mark practice

27th October CITMA Paralegal Seminar Keltie LLP, Madrid protocol: tips and London SE1 tricks – what paralegals need to know

1st November CITMA Seminar for Carpmaels & Ransford 2.5 Litigators – London LLP, London WC1 Our CITMA Paralegal Seminar on 15th November CITMA Webinar Log in online 1 27th October in London supports the development of this important role 28th November CITMA Lecture – London* 58VE, London EC4 1 • Update on UK IPO and UK court cases

8th December CITMA Christmas London Hilton on Lunch – London** Park Lane, London W1

13th December CITMA Northern TBC Christmas Event

citma.org.uk September 2017 EVENTS | 41 THE TRADE MARK 20

I work as… a self-employed Trade Mark My favourite place to visit on Paralegal, serving clients in China, the EU business is… a nice resort by the and Singapore. I work from home and beach – anytime, anywhere. am the mother of two children, aged two and four. We recently relocated If I were a brand, I would be… Tiffany back to Singapore from the UK. & Co. Like a small diamond hidden inside one of their exquisite blue boxes, we Before this role, I was… a Trade Mark support staff are behind the scenes, Paralegal at a small specialist firm in doing the ground work for our bosses. , where I managed the office and all fee-earning responsibilities. The biggest challenge for IP That spurred me to start my own is… Brexit. humble business – why not? The talent I wish I had is… the ability My current state of mind is… chaotic. to stop time. I have too many things on my plate, and I have just volunteered to write for the I can’t live without… my children Steve Jobs is inspiring CITMA Review too! and husband. I cannot imagine the Singapore-based world without them. I became interested in IP when… Sabrina Moden I started my first proper job at a My ideal day would include… a good boutique IP firm in Singapore. I was cup of coffee and a break from work. exposed to all areas of IP, but trade marks interested me the most, maybe In my pocket is… a mint. because they involve a process that is so simple, yet complex at the same time. The best piece of advice I’ve been given is… never give up. And Steve I am most inspired by… Steve Jobs. Jobs once said that “simplicity is the I love the products he created, and am highest sophistication”. That inspired inspired by his perseverance and his me to keep things simple for my clients; advice to never stop searching, and to I handle the difficult part. “stay hungry”. He changed the way we think, work and play. When I want to relax, I… just want to sleep. But I can’t do that with two young In my role, I most enjoy… when my children running around! “ clients drop brand names into my lap and trust that I will make it work for In the next five years, I hope to… them – as if by magic. be a Trade Mark Attorney (if possible), Trade marks interested although we haven’t got the specialised me the most, maybe In my role, I most dislike… clients option here in Singapore. who make lots of enquiries and then because they involve go and make their own applications! The best thing about being a CITMA a process that is so member is… that it’s a recognition of On my desk is… my MacBook Air, the hard work I have put in over 18 years, simple, yet complex at iMac, iPhone, iPad – need “iSay” more? going from being a secretary to a CITMA the same time Trade Mark Administrator and (now) My favourite mug says… “Drink coffee”. a CITMA Paralegal.

42 | TM20 September 2017 citma.org.uk CITMA REVIEW CITMA

SEPTEMBER 2017 citma.org.uk

D.POBC_CITMA_SEP_2017.indd Ahuja_CITMA_Sept_17.indd 1 1 18/08/2017 10:3310:35