Make Your Mark Spring 2019

HALLOWEEN BREXIT? IN THIS ISSUE

Trade marks and designs EUROPEAN with a Brexit deal PERSPECTIVES Article 126 of the Withdrawal Agreement • Halloween Brexit? Page 1-2 provides for a “transition” period from when • Should we shoot the UK exits the EU until 31 December the messenger? Pages 3-4 2020. During this period, EU law will continue to apply to the UK. • Monkey business Pages 4-5 UK NEWS Registered EUTMs and RCDs • Snippets Pages 6-25 After the transition period, owners of At the time of writing, the EUTMs and RCDs granted before the end UK COURT DIARY bewildering journey of Brexit of the transition period will “without any • Come fly with me: is ongoing. Several rounds of re-examination, become the holder of a High Court engages rejections and extensions have comparable registered and enforceable “intention to target” occurred since we last wrote about right in the UK” (art.54 of the Withdrawal approach in Britain’s exit from the European Agreement). jurisdictional Union (EU) in the Autumn issue of challenge Pages 26-27 Make Your Mark, culminating in a Pending applications • Horny trade mark special meeting of the European Assuming a deal is struck and the transition dilemma Pages 28-29 Council, at which a longer flexible period is agreed, applicants can (and extension was agreed. • A spoonful of should) continue to file EUTM, international aggressive behaviour As a result, exit day is now defined as (EU) and RCD applications as usual until does not help 11pm on 31 October 2019. However, at least 31 December 2019. Based on pre-action disclosure if both the European Commission and the EUIPO’s speed of registration, the go down Pages 30-31 the UK ratify the Withdrawal Agreement majority of routine applications filed by that before 31 October 2019, then Brexit will date should have been granted before ABOUT OUR FIRM Page 32 take place on the first day of the month the transition period expires and will following the date of ratification, and automatically convert into equivalent UK the extension will be terminated. Also, registrations. The owner of a EUTM or RCD there’s a chance that the Government still pending at the end of the transitional might decide to call the whole thing period (December 2020) will be entitled off, as the UK has a right to revoke its to file a corresponding UK application notification under Article 50 at any time within nine months from the end of the and cancel Brexit altogether. transition period—i.e. to September 2021 (Withdrawal Agreement art.59.1). This new UK application will retain the filing date of the EUTM (and priority date if applicable).

Maucher Jenkins encompasses UK, German and European Patent and Trade Mark Attorneys, Attorneys-at-Law and IP Litigators. Maucher Jenkins is the joint trading name of RGC Jenkins & Co in the UK (regulated by IPReg) and Maucher Jenkins Patentanwälte & Rechtsanwälte in Germany. ©2018 Maucher Jenkins® International registrations (IRs) which will come into force at the point of UK, EU and third-country designers will the UK’s exit from the EU. It added that be provided with continued protection The UK Government will arrange a system the new UK right will be provided with for those designs first disclosed in EU27 with WIPO to allow EU designations of IRs “minimal administrative burden”. There is Member States and already protected by to be converted into, or re-registered as, no confirmation that this will not involve an unregistered Community design right at national UKTM registrations, retaining their payment of a fee. the point that the UK exits the EU “with no original filing or priority date. IRs specifically action required by the right holder”. designating the UK will be unaffected by Right holders will be notified that a new the UK leaving the EU. UK right has been granted; any business, Through the new supplementary organisation or individual that does not unregistered design right, designs which Those who have obtained protection for want to receive a new comparable UK are disclosed in the UK after the UK international registrations of trade marks registered trade mark or design will be able exits the EU will be protected in the UK or designs designating the EU before the to opt out. under the current terms of the UCD end of the transition period will continue (which means that protection for surface to enjoy protection for those international Pending EUTMs and RCDs decoration will be available). trade marks and designs after the Applicants will have a period of nine transition period (art.56 of the Withdrawal Representation at the EUIPO months from the date of exit to re-file with Agreement). the UK IPO under the same terms for As an Anglo-German firm with a long- Unregistered design right a UK equivalent right, using the normal standing presence in London and Munich, application process for registered trade Maucher Jenkins is aptly placed to Holders of unregistered Community marks and registered designs in the UK represent our clients before the EUIPO design (UCD) rights that arose before the but retaining the date of the EU application both now and following Brexit, in whatever end of the transition period will become for priority purposes. shape it may take. Our professionals are owners of corresponding rights in the ideally suited to represent our clients’ UK (with the “same level of protection” Applicants with pending EUTM or RCD interests in the UK, Germany and as the corresponding UCD) after the applications will not be notified and after throughout the EU. Our UK, Irish and transition period (art.57 of the Withdrawal exit will need to consider whether they German lawyers are experienced in Agreement). re-file with the UK IPO in order to obtain EUTM and RCD matters, as well as in protection in the UK. Re-filing will incur a contentious, advisory and IP contractual Trade Marks and Designs with standard trade mark filing fee. no Brexit Deal matters, and will retain rights of Unregistered design right representation before the EUIPO after In the event of no deal, there will be no any Brexit. transition period. UCD rights protect a range of design features including two- and three- Our German Patentanwälte regularly act International registrations dimensional aspects such as surface before the EUIPO and will also retain these The UK signed up to the Hague System for decoration and product shape. The UCD rights. the International Registration of Industrial provides three years of protection from the Our UK Chartered Trade Mark Attorneys Designs on 13 June 2018, so applicants date that the design is first made available and Patent Attorneys are among the most for international design registrations can to the public (“disclosed”) within the EU. trusted and knowledgeable in the industry designate the UK. The UCD is entirely separate from the and our clients’ cloned or re-filed EUTM UK’s own unregistered design right, which and RCD rights will come to a safe UK Registered EUTMs and RCDs protects product shape and configuration landing in their hands. Under the proposed For existing registered EUTMs and RCDs, but cannot protect any form of surface transition arrangements, they may also the UK Government has said that it will decoration. The UK unregistered design continue to act directly in respect of any provide a new equivalent trade mark or right will continue to exist for designs first EUIPO matters still pending during any design right registered in the UK, disclosed in the UK. transition period.

Page 2 C-567/18 remains tobedetermined. the dateofhearingthat Case decisive question.Atthetime of writing, The GermanCourthasagainreferred the every off-lineshopownerhastocarry. be abletofree itselffrom theresponsibility is questionablewhetherAmazonshould warehouse volume.Ontheotherhand,it when wethinkaboutthesheerscaleofits endanger Amazon’s businessmodel, infringements. Thisliabilitycouldpossibly whether Amazonknewaboutthealleged trade markinfringinggoods,regardless of Amazon responsible forthestockingof In thislatestaction,Cotyaimstohold particular resellers. long asitdidnotdiscriminateagainst did notbreach competitionlaws, as Union (CJEU)ruledthattherestriction Court ofJusticetheEuropean breathed asighofrelief whenthe shops. Theluxurybrandindustry sales inhigh-endbricks-and-mortar Amazon, asitpreferred tocontrol from sellingitsluxurybrandsthrough to prevent retailers anddistributors and eBay. Backin2016,Cotysought platformssuchasAmazon internet infringement, includingonthird-party are alivetoinstancesoftrademark Brand ownerspolicingtheinternet EUROPEAN PERSPECTIVES THE MESSENGER? SHOULD WESHOOT transportation ofblackboxes? mark rights,whenitonlyhandles the Simply put:DoesAmazoninfringe trade the market?”. to offerthegoodsorputthem on the third partyalonewhichintends not thatpersonhimselfbutrather putting themonthemarket,ifitis for thepurposeofofferingthemor infringement, stockthosegoods without havingknowledgeofthat which infringetrademarkrights, of athird party, stores goods “Does apersonwho,onbehalf CJEU: German CivilCourt(BGH)hasaskedthe arrangement. Inthiscontext,theHighest the dealviaitsstockingandshipping party tothesalescontract.Itonlyfacilitates The trickypartisthatAmazonitselfnot The questionanditsrelevance able todisclosefurtherdetails. retrace thesource andtherefore wasnot of perfume,butclaimeditcouldnolonger suppliers. Amazonhandedover30bottles and informCotyaboutthethird party Amazon handoverallremaining goods infringe trademarkrights.Itrequested that via atestpurchase, outto whichturned bottle of“DavidoffHot Water Edt60ml” DAVIDOFF 0876874.Cotyacquired a licensed distributoroftheEUtrademark via Amazon”.Theplaintiff,Coty, isa of goodsthrough theservice“shipping takes care ofthestockingandshipping and buyersinsuchawaythatitoptionally agreements betweenthird partysuppliers The defendant,Amazon,facilitatessales Kicking upastink negated. or warehouse keeperhasalready been of responsibility ofaforwarding agent with patentcaselaw, where thequestion relevant goodsanddrawsacomparison in themere stockingandshippingofthe a “No”.Itdoesnotseeresponsibility answer thepreliminary rulingquestionwith the BGHclearlystatesitsinclinationto In itsreferral totheCJEU,senateof her controlling responsibility? by design,frees thebeneficiaryfrom hisor right toallowforabusinessmodel,which, of thethird partyseller. However, canitbe legal ornotcomesdowntothehonesty product islicensedornot; whether thisis (stocking andshipping),whetherthe pin-point. Theydotheexactsamething violating actionbyAmazonishard to Strictly speaking,itiscorrect thata unlicensed goods. the accountabilityforthird-party sellers’ for itsbusinessmodelencompasses in itsviewthatAmazon’s responsibility instances inGermanydidnotfollowCoty Urteil vom22.03.2017–29U745/16) 23145/14) andsecond(OLGMünchen, München I,Urteilvom19.01.2016–33O responsibilities. Thecourts offirst(LG disburden theseplatformsfrom control one canmakeoutatendencyto is bynomeansfullyresolved. However, question oftheplatform’s responsibility infringing third partydistributor. The platform betweenthebuyerand where thoseagentsonlyactedasa infringements through onlineproviders, cases ofpossibleintellectualproperty In thepast,there havebeencomparable Page 3 Comment

In the patent case mentioned by the Unfortunately, another interesting aspect referring German Court, an “only” of this case is well-hidden in the request forwarding agent was sued to destroy for a preliminary ruling, as the wording of patent infringing MP3-players (BGH, the question put before the ECJ does not 17.09.2009 - Xa ZR 2/08 MP3-Player- reflect it. One does not need to split hairs Import). The German Court however did to understand this argument, even though not hold him responsible for providing it seems slightly technical at first glance. further technical information about the Previous instances have dealt with Article goods. Furthermore, he was not obliged to 9(b) and (c) as describing one action. But inspect goods for a possible infringement if one distinguishes between the elements that he only transported. However, from of Article 9(2)(b), which states “offering our point of view this result cannot be the goods, putting them on the market copy-pasted to the Coty/Amazon situation, or stocking them for these purposes as it is much more difficult to disclose an under that sign” and Article 9 (2)(c), infringement in a patent case than in a which states “importing or exporting trade mark case, where the agent does not the goods under that sign”, it does need to technically examine the product, not seem far-fetched to subsume but “only” has to safeguard clean channels Amazon’s behaviour at least under of distribution. In the patent case, the court Article 9(2)(c). However, this goes stated that the agent could be obliged to beyond the framing of the question technically examine the product for an as it was brought before the CJEU. infringement, as soon as he was notified In summary, Amazon is not off the hook about irregularities. In Coty vs. Amazon, yet, even though the German courts of Amazon denied to disclose further details first and second instance have ruled in about the source of the perfumes, even favour of the multinational ecommerce though it had received a take-down notice. company’s business model.

In the Court’s view, “the general public will recognise clearly and keep in its MONKEY BUSINESS mind the representation of a black silhouette of a monkey in profile, on In VF International Sagl v EUIPO VF International Sagl filed a notice of all four legs, with a long curved tail”. (Case T-548/17), the General Court opposition, based on two earlier figurative EUIPO’s Opposition Division held that ruled on a case involving figurative EUTMs (“the KIPLING marks”) which both the mark applied for would not take marks of monkeys with dissimilar covered a variety of goods and services, unfair advantage of, or be detrimental to, word elements, in a dispute which including jewellery in Class 14, bags in the distinctive character of the KIPLING originated from EUTM opposition Class 18 and clothing in Class 25: marks. Due to the low degree of similarity proceedings in 2014. Was this of the marks and the different impression decision bananas? produced on the relevant consumer, In May 2014, the Munich resident Mr Ken there was no likelihood of confusion on Virmani applied for a figurative EUTM the part of the relevant public and so VF (“the ANOKHI mark”) covering a variety International’s opposition was rejected. of goods, including jewellery in Class 14, Given the significant similarities between bags in Class 18 and clothes in Class 25: the figurative elements and the similar proportions - in particular, the ratio between the size of the verbal and figurative elements - the relevant public In November 2015, VF International would perceive the marks as similar, filed an appeal with the Fourth Board of regardless of the “anokhi” and “kipling” Appeal, but this appeal was dismissed. word elements. The court concluded that VF International filed an action before the the Board had erred in finding that the General Court, submitting that the EUIPO marks were visually dissimilar. had infringed Article 8(1)(b) and Article 8(5) of Regulation No. 207/2009.

Page 4 Page 4 The Court made reference to previous Who cares about reputation? The evidence demonstrated the reputation judgments, which stated that a of Kipling goods more than the reputation The evidence demonstrated some phonetic comparison was not relevant of the KIPLING marks. Dismissing VF reputation of Kipling goods. However, it was in the examination of the similarity of a International’s argument that it had apparent that signs different from the earlier figurative mark lacking word elements established a reputation in its earlier marks, marks were also widely used to identify with another mark (Cases T‑5/08 to the court agreed with Board that the goods marketed by VF International: T‑7/08 Nestlé v OHIM EU:T:2010:123 evidence produced by VF International, and Case T-424/10 Dosenbach-Ochsner • a great number of photographs even when taken as a whole, was v OHIM EU:T:2012:58). The Court showed goods with a round sign that insufficient to establish the reputation of added that a figurative mark without included the word element “kipling” its earlier marks. However, given that the word elements was, by definition, but no figurative element representing marks in this case had been found similar unpronounceable. It followed that the Board a monkey; and VF International’s case under Article had erred in finding that the ANOKHI mark 8(1)(b) had succeeded, the court annulled • a small toy monkey on a keyring was was phonetically dissimilar to the monkey the decision of the Board of Appeal and often attached to the goods but this device mark that lacked the word element. ordered EUIPO to bear its own costs and toy monkey had a different appearance those incurred by VF International. It was common ground that the words and build from the monkey in the “anokhi” and “kipling” had no meaning for KIPLING marks (in particular, the toy the relevant public. The marks had used monkey had fur); and images with analogous semantic content • the toy monkeys were mentioned in a which gave rise to conceptual similarity, significant number of documents as according to the settled case-law (Case allowing goods of the Kipling brand C‑251/95 SABEL EU:C:1997:528 and to be identified, including in extracts Case T-361/08 Peek & Cloppenburg of a book called “Monkey Business”, and van Graaf v OHIM EU:T:2010:152). which VF International conceded had Accordingly, the court concluded that the been written by one of the founders Board had erred in finding that the marks of the Kipling company. were conceptually dissimilar.

Comment Although there is nothing novel in the idea that the similarity of two signs has to be based on a global assessment of the visual, phonetic and conceptual similarities between them, it is perhaps surprising that the respective signs in the present case were found to be visually, phonetically and conceptually similar, given the presence of the word elements.

It would be interesting to see if the General Court would have found in favour of Mr Virmani had the application included a word element with some relation to the concept of a monkey, rather than the word element “anokhi” which means “unique” in Hindi.

The case also illustrates that the applicant needs to establish to the requisite legal standard that the earlier marks have a reputation, a critical factor for a successful case under Article 8(5). As the General Court said, the reputation of a mark cannot be assumed on the basis of fragmentary and insufficient evidence. In that regard, it is important to remember that, since the assessment of reputation is based on overall assessment of the evidence submitted, the Board of Appeal is not required to adjudicate on the evidential value of each of the documents submitted by an owner of earlier marks.

Page 5 Page alone. revocation wasimpossibleonthisbasis The UKIPO’s HearingOfficerfoundthat MONOPOLY markwas13August1959. earliest possibledateforrevocation ofthe had beenregistered, meaningthatthe expiry ofthefiveyearperiodaftermark been basedonthedaythatfollowed the effective revocation dateshouldhave period afterthemarkwasfiled.However, day thatfollowedtheexpiryoffiveyear Kreativini’s calculationwasbasedonthe 1957. However, thiswaswaytooearly. effective revocation dateof4November Trade MarksAct.Kreativini claimedan used pursuanttosection46(1)(a)ofthe were thatthemarkhadnot beengenuinely registration. Thegrounds ofrevocation Hasbro’s famousMONOPOLY trademark Kreativni Dogadajiapplied to revoke In 2017,aCroatian company called Bros. and,therefore, Monopoly. version. In1991,Hasbro acquired Parker the US,includingnowfamiliarBritish to produce andmarketthe gameoutside in 1935.Waddingtons obtainedalicence published byParkerBrothers in the US since 1954.Thegameitselfwasfirst registered intheUKforboard games MONOPOLY trademark,hasbeen The subjectofthisparticularcase,the Property Office(EUIPO). with theEuropean UnionIntellectual Property Office(UKIPO)compared the UnitedKingdomIntellectual seeking toprove genuineusebefore a trademarkownermustfilewhen the nature andformofevidencethat lesson onthedifferences between (O/501/18) provides animportant A recent decisionfrom theUKIPO 6 UK NEWS SNIPPETS of 8June2006)). v RolsonTools Ltd(CaseR1075/2005-2 Rodcraft PneumaticTools GmbH&Co.KG independent evidence”(see,for example, little weightunlessitiscorroborated by by arepresentative of the proprietor isof which wasthat“awitnessstatementmade prescriptive thantheEUIPO’s approach, a statementoftruth”andwere farless must besignedanddatedinclude normal formforevidenceathearings,and that “witnessstatementsshallbethe under theUKTrade MarksRulesmeant Hearing Officernotedthatthe provisions As regards thewitnessstatement, mark. sales toArgosofthegoodsbearing that Hasbro provided invoicesshowing weight whenconsidered alongside thefact in Argoscataloguescarriedevenmore the UK”.Thefactthatmarkappeared Argos regularly produces cataloguesin Argos catalogues.Itisanotoriousfactthat distributed, thecataloguesinquestionare not necessarilyprove thattheywere “the mere existenceofcatalogues does The HearingOfficersaidthatalthough title PARKER. was HASBRO,orHasbro’s predecessor in mark actuallyappearingontheproduct game andnotatrademarkatall,the MONOPOLY wassimplythenameofa mark hadbeenusedandthat,because Hasbro’s evidencefailedtoprove that the market monopoly. Theyalsoarguedthat of thegamewastoachieveaproperty of thegoodsinquestionaspurpose MONOPOLY couldnotindicatetheorigin the Act.Kreativni arguedthatuseof throw ofthediceundersection46 unimpressed byKreativini’s subsequent The HearingOfficerwasequally marks. marks. to defeatattempts torevoke valuedtrade character ofthemarkasregistered -suffice will - provided it does not alter the distinctive the forminwhichmarkhas beenused where genuineusehasbeenestablished, case didnotaffecttheoutcome). Further, Officer didnotethatthiserror inthe present effective revocation date(albeittheHearing the importanceofcorrectly calculatingthe pay Hasbro’s costs.Thisdecisionhighlights was dismissedandtheywere ordered to collect £200:theirapplicationforrevocation Kreativini didnotpassgoand instead ofindicatingtradeorigin”. as denotingacharacteristicofthegoods “consumers wouldnotviewMONOPOLY the HearingOfficer, whofoundthat for manyyears,tothesatisfactionof within theUKinrespect of“board games” of usethetrademarkMONOPOLY Hasbro wasabletoprovide evidence made nodifference. in theformofmarkasused(seebelow) the shadingoflettersandbackground lay intheplainword MONOPOLY andthat distinctiveness ofthemarkasregistered regard, theHearingOfficerruledthat form inwhichitwasregistered”. Inthat the distinctivecharacterofmarkin differing inelementswhichdonotalter of atrademarkincludesuseinform Under theTrade Marks Act1994,“use was “afairspecification”. in Class28whichtheHearingOfficersaid MONOPOLY markcovered “board games” to sub-categorisethespecification”.The board totry game,itwouldbepernickety the useshownreflects asingletypeof The Hearingofficernotedthat“although In the first case, Wilhelm Sihn jr. “parts” or “accessories or fittings” which GmbH & Co. KG (WISI) v In-edit S.à.r.l were vaguely defined terms. According (T-472/17), the General Court upheld to the Court (at paragraph 29), “… the Board of Appeal’s decision that if [WISI] wanted to ensure that the there was no likelihood of confusion earlier marks were also registered for between the marks at issue. configuration and operating software for head ends for cable networks, it should In-edit applied to register the figurative have made it clear when it applied to EUTM shown below for a variety of register its trade marks. It should not goods and services in Classes 9 and 42. gain from the vague wording of the goods covered by its mark”. Contrary to WISI’s submission, the Board was not therefore required to consider that the earlier marks were registered for configuration and It also confirms that, unlike the EUIPO, This EUTM application was opposed by operating software for the “head ends WISI on the basis of inter alia their earlier the UKIPO can accept an unsupported for cable networks”. WISI also claimed international trade mark designating witness statement in evidence. The that head ends for cable networks were the European Union for the word justification for the UKIPO’s system is intended for receiving, processing, CHAMELEON, registered for goods in that “witnesses who tell untruths can be converting, amplifying and transmitting Class 9. exposed in the Registry through the power signals over network systems. of cross-examination at a live hearing, and Both the Opposition Division and the Those signals were used for digital may be subject to serious consequences if Board of Appeal found that the signs communication and merely contained exposed” (see G&D Restaurant Associates under comparison were similar but the data. Accordingly, head ends for cable Limited v Pasticceria E Confetteria Sant goods were partly similar and partly networks were themselves computers dissimilar. The EUTM application was and computer systems. Thus, given that Ambroeus S.R.L, BL O/371/09). In rejected for the following goods in Class the services of “research and technical contrast, the EUIPO’s Boards of Appeal 9 found to be similar to those of the studies relating to the installation of rarely have oral hearings – in fact, there earlier trade mark: “Computer software, computers and computer systems; seems to have only been two in 23 years. software packages; and computer research, technical studies, consultancy On 3 August 2018, the Second Board of software programs; magnetic, optical and technical advice relating to the Appeal ordered oral proceedings to be or digital data carriers”. The Opposition setting up of computers and computer Division and the Board of Appeal found held on 19 November 2018 regarding systems” in Class 42, covered by no likelihood of confusion existed with In-edit’s Camele’on figurative sign, Case R 1849/2017-2, in which Kreativini respect to the rest of the goods in Class were directly linked to computers and appealed against the EUIPO’s Cancellation 9 and the services in Class 42. computer systems, those services Division’s decision to reject its application were complementary to head ends for WISI appealed to the General Court. for a declaration of invalidity against cable networks which were themselves However, the Court confirmed that Hasbro’s EUTM for MONOPOLY. However, computers and computer systems. there was no likelihood of confusion due to “technical problems” with the between the “computer software This argument did not convince the EUIPO’s notoriously temperamental packages and computer software for Court, which noted that the “head ends website, further information is not available. configuring technical and commercial for cable networks” covered by WISI’s data; software packages for computer- mark were described exhaustively by Two recent General Court decisions assisted production and/or sales” in means of the term “namely” as being illustrate the importance of Class 9 covered by In-edit’s Camele’on “apparatus”. They were therefore not figurative sign and the “head ends for “systems”. WISI could not maintain that ensuring that the specification of cable networks, namely apparatus the “head ends for cable networks” goods is specific, i.e. not vague for receiving, processing, converting, covered by the earlier mark were or overly broad. Both opposition amplifying and transmitting signals; parts comparable to the computer systems in proceedings were based on of the aforesaid goods; accessories Class 42 covered by In-edit’s Camele’on Article 8(1)(b) of the EU Trade or fittings for the aforesaid goods, as figurative sign. The Court remarked that Mark Regulation (EUTMR), which far as included in this class” in Class “The fact that the apparatus covered 9 covered by WISI’s earlier mark. The by the earlier marks performs certain states that a trade mark application fact that the goods in Class 9 covered functions also carried out by computers should be refused if it is identical by WISI’s earlier mark might be fine- is not sufficient to treat such apparatus or similar to an earlier mark, the tuned by software was not sufficient to like computers, the latter having much goods or services covered by the conclude that those goods were similar more complex and varied uses than the marks at issue are identical or to the Class 9 goods at issue covered apparatus covered by the earlier marks”. similar, and there exists a likelihood by In-edit’s Camele’on figurative sign. The Court concluded that the Board had In addition, the Court noted that such been correct to find that the services of confusion by the public. software did not fall under the terms covered by In-edit’s Camele’on figurative

Page 7 SNIPPETS (continued)

sign and the goods covered by WISI’s A COUPLE OF RECENT CASES BEFORE THE GENERAL earlier mark were dissimilar. COURT SERVE TO ILLUSTRATE THE DIFFERENT WAYS This decision illustrates that it’s important when applying for a trade mark to ensure IN WHICH GEOGRAPHICAL NAMES ARE TREATED that the wording of the specification provides specific coverage of the desired UNDER EUIPO PRACTICE DEPENDING ON THE products or services – as WISI found out, you can’t depend on a vague description DEGREE OF FAMILIARITY WITH THE GEOGRAPHICAL of the goods covered by a mark to extend NAME, THE CHARACTERISTICS OF THE PLACE AND the scope of protection granted under a registration. THE CATEGORY OF GOODS CONCERNED. Contrast that decision with the outcome of the opposition between Christos Ntolas and General Nutrition In the first case, St. Andrews Links On the other hand, the Board found Investment (T-712/17), in which the Ltd. v EUIPO (T-790/17), the Court that such a link could be established General Court upheld the Board of upheld the Board of Appeal’s between the other services covered by Appeal’s decision that there was a rejection of the mark ST ANDREWS the mark applied for in Class 41 and likelihood of confusion between the for the majority of the services the expression “st andrews”. Those marks at issue. applied for in Class 41. services could all directly relate to golf The problem here was that the sports, in other words to the particular In 2010, St Andrews Links Ltd (the specification of goods in Class 5 covered field for which the town of St Andrews commercial wing of the St Andrews by General Nutrition Investment’s earlier was very well- known. Consequently, Links Trust) applied to register the EU word mark GNC – namely “protein the use of that expression in connection word sign ST ANDREWS as a EUTM in for human consumption” – was so with those services would be perceived Classes 25, 28, 35 and 41. For those broad that it meant that the goods were by the relevant public as a descriptive identical to those covered by the word who do not know, St Andrews Links indication of the geographical origin of mark “GN Laboratories” applied for by is located in the town of St Andrews, those services. Christos Ntolas. The Court confirmed the Fife, Scotland, and it is regarded as Opposition Division and Board of Appeal’s the “Home of Golf”. St Andrews Links St Andrews Links Ltd appealed to finding that goods covered by the mark Ltd runs the seven public golf courses, the General Court. Although they applied for in Class 5 could contain protein including the Old Course, considered to had previously obtained trade mark for human consumption and so were be the oldest golf course in the world, registrations for St Andrews name for identical to the specification of the goods dating back to the 15th century. a range of products, the Board found in Class 5 covered by the earlier mark. the evidence provided by the applicant Also, the protein content of the goods The EUTM application was initially was insufficient to prove acquired in Class 29 — with the exception of the rejected by the Examiner for all of the distinctiveness through use of the ST edible oils — covered by the mark applied goods and services applied for, on the ANDREWS mark applied for. for meant that those goods were similar basis that ST ANDREWS was descriptive to the protein for human consumption of certain positive characteristics of the The Court said that “the registration covered by the earlier mark. The Court goods and services covered and that of geographical names as trade endorsed the Board’s view that, as edible the evidence provided by St Andrews marks where they designate specified oils could be used interchangeably with Links Ltd was insufficient to prove geographical locations which are already butter, they were similar to the “milk products” covered by the earlier mark. acquired distinctiveness through use. famous, or are known for the category Finally, the Court confirmed the Board’s The Fourth Board of Appeal took the of goods or services concerned” is finding that dietary foods, covered by the view that “the expression ‘St Andrews’ excluded. Furthermore, the Court said earlier mark in Class 30, were intended referred above all to a town known for that “the Board of Appeal was entitled for the same consumers as the protein for its golf courses though not particularly to find that there were, in addition to human consumption and had the same for the manufacturing or marketing of the applicant’s courses, several other distribution channels as that protein and, clothing, footwear, headgear, games major golf courses which lay claim to therefore, had to be classified as similar. and playthings” and allowed the EUTM part of the heritage of St Andrews” and Given the moderate similarity between the application to be published for such “the Board was entitled to find that the marks at issue and the partial similarity goods and services, on the basis that mark applied for could not be registered and partial identity of the goods covered “The relevant consumer will not establish as an EU trade mark”, and “none of the by them, the Court therefore confirmed the a link between those goods and services arguments put forward by the applicant Board’s finding of likelihood of confusion. and that expression.” is such as to call in question that conclusion”.

Page 8 Contrast that decision with With regard to the average Greek or on the basis that the name would the outcome of the opposition Romanian consumer, the Court noted remain available to third parties not between Devin and Haskovo that the existence of a “tourist profile on only for descriptive use, such as the Chamber of Commerce and the internet” was insufficient to establish promotion of tourism in that town, but Industry (T-122/17), in which the the knowledge of a small town by the also as a distinctive sign in cases of General Court overruled the EUIPO relevant public abroad. Furthermore, “due cause” and where there was no and found that DEVIN, the name the fact that the town of Devin had a likelihood of confusion. of a Bulgarian town, could be “considerable tourism infrastructure” The Court concluded that the EUIPO registered as a EUTM for mineral didn’t warrant the conclusion that such a had not established the existence water. consumer could have knowledge of the of a sufficient degree of recognition town beyond its borders or establish a On 21 January 2011, the Bulgarian of the town of Devin by the average direct link with it. bottled water company Devin EU consumer, in particular Greek or obtained a EUTM for DEVIN in Romanian consumers. The proportion respect of non-alcoholic drinks in of EU consumers who know the town Class 32. In July 2014, Bulgaria’s of Devin was very small. It followed Haskovo Chamber of Commerce and that the Board had incorrectly Industry (HCCI) filed an application concluded that the contested for a declaration of invalidity of the trade mark was descriptive of a mark. geographical origin as regards the average consumer in the Both EUIPO’s Cancellation Division neighbouring countries of Bulgaria, and Board of Appeal found in favour namely Greece and Romania, and in of the applicant to invalidate under all the other EU Member States. Article 7(1)(c). In the EUIPO’s view, the town of Devin was known by The public interest in maintaining the the general public in Bulgaria and a availability of geographical names significant proportion of consumers makes sense, as they can be used in neighbouring countries such as to indicate the quality and other Greece and Romania, especially as characteristics of the categories of a renowned spa town, and that the goods or services concerned and name of the town was linked to the also influence consumer preferences geographical origin of the goods in various ways; for example, by in Class 32 covered by the DEVIN associating the goods or services mark (especially mineral waters) with a place that might evoke and, in future, would potentially be positive feelings. That said, as Devin The Court pointed out that, by wrongly understood by a wider European found, there isn’t a blanket ban on focusing on foreign tourists, in particular public in view of the marketing efforts registering geographical names, Greeks or Romanians, who visit Bulgaria being made and the growth of the provided they’re unknown to the or Devin, the Board failed to consider Bulgarian tourism sector. In addition, relevant public. It is also possible to the entire relevant public, consisting Devin had failed to provide any register geographical names which, of the average consumer of the EU, in evidence of the distinctive character because of the characteristics of the particular from those Member States. In acquired by the DEVIN mark in place they designate, the relevant that regard, the Court considered that markets other than the Bulgarian public is unlikely to believe that that the average consumer of mineral market. the category of goods or services water and beverages in the EU did not concerned originates there or was The EUTM owner appealed again, possess a high degree of specialisation conceived there. However, if the this time to the General Court. The in geography or tourism and that there geographical name is capable of Court annulled the Board’s decision was no specific evidence to establish designating geographical origin and rejected the invalidity action. that such a consumer perceived the of the goods concerned, then it is The Court noted first that, even if word “devin” as a geographical place in necessary to establish an element of the Bulgarian consumer recognised Bulgaria. distinctiveness in the way the name the word “devin” as a geographical Overruling the EUIPO, the Court found is understood by the relevant public name, it seemed “extremely that DEVIN could be registered as as denoting a brand and not merely implausible” that the EU trade mark an EU trade mark for mineral water, a location because, as St Andrews DEVIN had not acquired, at least but stressed that the general interest Ltd found, in the absence of acquired in Bulgaria, a normal distinctive in preserving the availability of a distinctiveness, such a name will be character, without there being any geographical name such as that of refused registration as a trade mark. need to rule on its reputation. the spa town of Devin was protected

Page 9 SNIPPETS (continued)

Lapread, Thomas McClary, William King, THE WIDE-RANGING RIGHTS ATTACHED TO THE NAMES OF Lionel Richie and Benjamin Ashburn. The agreement stated that each member WELL-KNOWN POP GROUPS HAVE BEEN ILLUSTRATED IN had an equal ratio of 1/7. Mr McClary THREE RECENT EUTM OPPOSITIONS. IT’S NOT UNUSUAL FOR argued that he could not have expressly left the band since he still received royalty BAND NAMES TO BE REGISTERED AS TRADE MARKS BY THE payments. However, since the agreement BAND’S RECORD LABEL OR PRODUCERS BUT WITHOUT A made it clear that Mr McClary would continue to receive one seventh of the REGISTRATION, WHO HAS THE RIGHT TO A BAND’S NAME? net income from all royalties regardless of whether or not he was a band member, the Board dismissed the applicant’s line of in custom”) in respect of the unregistered argument that he must still be a continued earlier sign within the meaning of that member of the band. term under section 5(4)(a) of the Trade On 1 July 1981, an amendment to the Marks Act 1994, and rejected the EUTM agreement formalised a corporation and application under Article 8(4) EUTMR. assigned the legal rights to the name Given that Mr McClary felt that he had a The Commodores to Commodores right to THE COMMODORES trade mark Entertainment Publishing Corp. as a founding member of the band, it is On the evidence, the Board found that perhaps unsurprising that Fifth Avenue the common law ownership of the name Entertainment LLC appealed to the “THE COMMODORES” resided with (European) General Court. Unfortunately the opponent. The applicant argued for the holder of the unregistered earlier that since the opponent, who claimed sign “Commodores”, the appeal wasn’t to own the goodwill in the name THE In the first case, Fifth Avenue easy like Sunday morning. The Court COMMODORES, was Commodore Entertainment v EUIPO (T-459/17), found that the Board had failed to properly Entertainment Corporation and the the mark applied for was THE examine whether the fourth condition evidence filed related to Commodore COMMODORES in respect of Class 9 set out in Article 8(4) of EUTMR was Entertainment Publishing Corporation goods and Class 41 services. satisfied, namely whether, under the UK they were different entities. However, as The Commodores were a widely law relied on in the proceedings, being the the two companies merged in May 1978, known band, formed by a number proprietor of the unregistered earlier sign the Board dismissed this argument. of artists including Mr McClary who “Commodores” actually gave Commodore The Board concluded (along with Beryl McClary) was the Entertainment Corporation the right to joint managing member of the EUTM prohibit the use of THE COMMODORES • the goodwill in the business applicant, Fifth Avenue Entertainment mark applied for by Fifth Avenue operating under the name “THE LLC. The EUTM application Entertainment LLC. COMMODORES” was owned was opposed by Commodore On the evidence, it was clear that the by Commodore Entertainment Entertainment Corporation, based Commodores were a successful and Corporation; and on their unregistered earlier sign well-known band that enjoyed most of • Commodore Entertainment “Commodores” under the law of their success in the 1970s in the US Corporation had demonstrated that several Member States. and Europe, including the UK. Its most it had a protectable goodwill under The Opposition Division rejected the prominent member, Lionel Richie, left UK law. opposition in its entirety, concluding in 1982. The opponent’s claim that However, the Board failed to take into that the opposing party had failed to Mr McClary left the following year was account that the term of the general provide information on the content of the disputed. partnership agreement was limited to applicable national law or the conditions The crux of this dispute lay in the seven years and that the 1981 amendment to be fulfilled in order for it to be able to ownership of goodwill. It was not disputed had not altered the term of that agreement. prohibit the use of the mark applied for that Mr McClary was a founding member The applicant argued that, when that under the relevant national law (that of of the Commodores band formed around agreement expired, the rights previously the UK). 1968. The band was formalised on assigned to the general partnership This decision was overturned by the 20 March 1978, when an agreement (including the right to the name “The Fifth Board of Appeal. The Board was forming a partnership under the name Commodores”) were reassigned to the persuaded that the opponent had accrued THE COMMODORES was signed by founding members of the band, including goodwill (“the attractive force which brings Walter Orange, Milan Williams, Ronald Mr McClary who, it was claimed, never

Page 10 left the group. The Court said that “by Deep Purple was a UK rock band formed • there was no evidence that Deep merely concluding that the applicant in 1968 by, amongst others, Messrs Paice Purple had been involved in trading could not rely on the “sole proprietary and Blackmore. The grounds of opposition those items; and right to the mark”, the Board of Appeal were based on the earlier non-registered • Those items fell into a category of omitted to examine whether the mark Deep Purple and the UK law of good that, according to the Board, applicant was the co-owner of that passing off. EUIPO’s Opposition Division were not clearly associated with music right and, if that had to be the case, the upheld the opposition in part, refusing business merchandising in general impact of such co-ownership in the light registration in respect of some of the and Deep Purple in particular. of the national law relied on”. goods in Class 9 and all of the services in Class 41. On the other hand, it granted Mr Paice appealed to the General Court, UK national law provides that several registration for the goods in Class 25 as arguing that the Board had failed to people can simultaneously own separate well as for some of the goods in Class 9. apply the decision of the High Court in goodwill in a name and, therefore, Both men appealed. Lego Systems Aktieselskab v Lego M are permitted to use that name Lemelstrich Ltd [1983] FSR 155 (according simultaneously. In such circumstances, EUIPO’s Fifth Board of Appeal allowed to which the existence or absence of an action for passing-off brought against Mr Paice’s appeal in respect of the goods a common field of activity was not the a party that owns such separate goodwill in Class 25 and for mouse mats, mobile acid test for establishing the likelihood of by another party that also owns goodwill phone accessories and sunglasses in representation), and that the Board had in that name is bound to fail. The Court Class 9, but dismissed it insofar as it failed to take account of the fact that concluded that the Board had failed to related to computers and digital games. Mr Blackmore had intended to deceive examine to the requisite legal standard Following his resignation from the group the public. whether the fourth condition set out in in 1993, Mr Paice and the other members Article 8(4) of Regulation No 207/2009, The court noted that the test for passing- had carried on performing concerts and namely that the national law relied on off was whether there was a genuine recording new albums, accruing significant conferred on Commodore Entertainment likelihood that the relevant public would goodwill under the name Deep Purple. Corporation the right to prohibit the be led to attribute the commercial origin use of THE COMMODORES mark, was On the evidence, the Board found that of the goods and services in question to satisfied. clothing merchandise had generated the opposing party. Although a defendant a significant revenue stream for Mr in an action for passing-off need not be Paice over the relevant period and such engaged in a common field of activity, merchandising was an essential part the Court ruled that the Board had been of the business of a rock band on tour. entitled to take the existence or absence Accordingly, the sale of goods in Class of a common field of activity into account 25 under the name Deep Purple could be (Lego applied). The fact that Mr Blackmore prevented by the law of passing-off and was a former member of Deep Purple and, that damage to the goodwill of Mr Paice as such, was associated with the band in was “plausibly foreseeable by virtue of the public mind, could not alone amount to diversion of trade”. proof of a deceptive intent on his part.

As it was common knowledge that many Mr Blackmore appealed to the General of the items in Class 9 were commonly Court. However, the Court found that, decorated with commercial or personal regardless of their date of publication, imagery, the Board decided that there the press articles published in 2013 and would be misrepresentation and submitted by Mr Paice did prove that In the second and third cases, damage to that goodwill if Mr Blackmore Deep Purple had an active and continuous (T-328/16 and T-344/16), Mr Ian Paice marketed “mouse mats and mouse pads; presence in the UK during the period successfully blocked ex-Deep Purple sunglasses; mobile phone accessories”. preceding the date of Mr Blackmore’s founder member Mr Richard Hugh Further, the Board found that “sunglasses” application for registration. in Class 9 were sufficiently accessorised Blackmore’s registration of the band The court found that the press articles with clothing so as also to be considered name as an EU trade mark for goods submitted by Mr Paice were independent at risk of misrepresentation. However, and services in Class 9 (audio/visual proof that Deep Purple was a UK the Board found that the same reasoning recordings of musical performances, band which had enjoyed considerable did not apply to goods associated with etc), Class 25 (clothing, footwear, popularity, at least in that territory. That computers and digital games in Class 9 etc) and Class 41 (entertainment goodwill extended to merchandise, because: services), except for computers and and the Board had substantiated their software in Class 9. finding that the evidence showed that

Page 11 SNIPPETS (continued)

clothing merchandise had generated The application was challenged by the The Hearing Officer concluded that there significant revenue for Mr Paice and such estate of Maurice White (the founder of was a likelihood of confusion (Section 5(2) merchandising was an essential part of a the world-famous American band “Earth, (b) ground of opposition accepted). touring band’s business by referring to the Wind & Fire”), on the basis of an earlier Two examples were: AG’s opinion in Case C-206/01 Arsenal international registration designating the 1. the average consumer would Football Club EU:C:2002:373 and the EU for EARTH, WIND & FIRE, covering mistake the applicant’s mark for the decision of the High Court in Rihanna v a wide range of goods and services, earlier mark and assume that there Arcadia [2013] EWHC 2310 (Ch). including similar Class 41 services. was a collaboration with Al McKay On this basis, the court rejected Mr The opposition was upheld by the UKIPO. and the All Stars; Blackmore’s unsubstantiated claim that the This, in spite of the fact that Al McKay 2. the average consumer would goods at issue were very dissimilar or that (who had played guitar in Earth, Wind & assume that the additional words the Board wrongly decided that goodwill Fire when the band topped the charts in The…EXPERIENCE signified a in the mark Deep Purple extended to the the 1970s) had achieved public recognition tour or “extravaganza” by the merchandising of a rock band. in his own right, having been nominated famous group, in which there was a for 6 Grammys and inducted into the The court concluded that the Board had collaboration with Al McKay and the Rock and Roll Hall of Fame in 2000 and been entitled to allow the registration of All Stars. a decade later into the Songwriters Hall DEEP PURPLE for the following goods in of Fame. Unfortunately for the UKTM Turning to the ground of opposition based Class 9: “computer hardware; computer applicant, the Hearing Officer did not think on EARTH, WIND & FIRE’s reputation chips and discs, interactive software as that the average consumer would attach (Section 5(3) of the 1994 Trade Marks well as computer firmware; computer any particular significance to the presence Act), the Hearing Officer decided that games; software for interactive games for of Mr McKay’s name, given that he had the opponent’s mark EARTH, WIND & computer, mobile phones and handheld in fact been one of a rotating set of 45 FIRE had a significant reputation for the devices; digital games, mobile phone members of the band over more than four class 41 services and, when this was games; DVD games; computer software decades of its existence, including Maurice combined with the finding that the two and computer programs”. White (deceased). Added to this was the sets of services were identical, similar to a fact that Mr McKay had left the band in high degree, and moderately similar, and 1980. the fact that the applicant’s own evidence indicated that it was their intention that the Turning to the two sets of services, the relevant public should make a link between Hearing Officer found that the earlier Al McKay and his former membership of mark’s “entertainment services rendered EARTH, WIND & FIRE, a link would be by a vocal and instrumental group” were made between the two marks such that identical to GLP’s “entertainment services sales of tickets to see THE EARTH WIND provided by a music group”, highly & FIRE EXPERIENCE FEATURING THE similar to GLP’s “entertainment in the AL McKAY ALL STARS would ride on nature of orchestra performances” and the coattails of EARTH, WIND & FIRE’s moderately similar to GLP’s “entertainment reputation. If this was not the case, the booking services”. Overall, there was a applicant would only need to register AL medium degree of visual, phonetic and McKAY AND THE ALL STARS. conceptual similarity between the marks. The opponent’s evidence confirmed the The UK trade mark applicant had not The above decisions regarding DEEP Hearing Officer’s own knowledge that shown that it had due cause for its choice PURPLE and THE COMMODORES EARTH, WIND & FIRE was the name of a of mark but, even if it had, the Hearing should be contrasted with the very famous, successful and long-standing Officer said that she would have found decision in the UK opposition between soul/funk band and, therefore, the mark that it failed: “Former membership of Georg Leitner Productions GmbH had both inherent and enhanced distinctive Earth, Wind & Fire does not entitle (GLP) and the estate of Maurice White character. The fact that the mark was the applicant (which appears to the (O/011/18). highly distinctive was in the opponent’s promoter of the later band) to register a The UKTM applicant Georg Leitner favour, as it formed half of GLP’s mark. trade mark linking itself to Earth, Wind & Productions GmbH (GLP) applied to Given the length of GLP’s mark, the Fire, the reputation of which pre-dates register the mark THE EARTH WIND & Hearing Officer said that the word that of the later mark”. FIRE EXPERIENCE FEATURING THE AL EXPERIENCE, positioned as it was in the McKAY ALL STARS in respect of Class 41 middle of a long set of words, was likely to services. be missed because the EARTH, WIND & FIRE element was so well-known: “the eye sees what it expects to see”. Page 12 Back in the hazy days of the 1960s and as opposed to one particular individual. may not fall under the merchandising 1970s, performing artists were quite Also, as THE COMMODORES decision umbrella. The category of goods laidback about their IP rights, with illustrates, it is important to keep considered an essential part of the members of bands failing to consider contractual provisions up-to-date! business of a touring band has become who might own the rights in the band’s increasingly extensive and, given the All three disputes are examples of name: an oversight that has come back advances in technology since the the problems that can arise as band to bite many current and ex-members 1960s and 1970s, its arguable that the members leave and start performing over half a century later, regardless of EUTM rights that Mr Blackmore now under the same or similar names to the the cliché that popular musicians live owns in DEEP PURPLE, albeit limited original band without the permission of hard and fast, take risks and die young. to “computer hardware; computer the original band members who may or chips and discs, interactive software as After a band’s songs and albums, which may not still be performing under the well as computer firmware; computer are protected under copyright law, the name; particularly as UK trade mark games; software for interactive games band’s name is arguably its next most law provides that several people can for computer, mobile phones and valuable asset as it can be exploited simultaneously own separate goodwill handheld devices; digital games, mobile commercially for substantial revenue in a name and, therefore, are permitted phone games; DVD games; computer from record sales and merchandising. to use that name simultaneously. software and computer programs”, still These decisions demonstrate the As the decision in THE EARTH WIND represent goods with particular value need for agreements at the outset & FIRE EXPERIENCE FEATURING for some in the music industry. regarding the future ownership of THE AL McKAY ALL STARS shows, goodwill attached to the band’s name It is important to remember that a additional distinctive elements may to avoid any unnecessary disputes band’s name is a potentially valuable not be sufficient to avoid confusion in where multiple authors/owners are asset, which can be sold, bought and cases where a later mark uses the same involved. In the absence of a trade commercially exploited and needs to wording as an earlier mark. mark registration or specific agreement, be protected and enforced, like any there are no set rules on who has the In DEEP PURPLE, the issue became other IP right. Ownership of the band’s right to a band’s name but, as the more nuanced insofar as the court name should be decided and agreed decision in THE COMMODORES shows, considered the extent to which goodwill by the band upfront in writing, and the court is likely to find that goodwill in the name of a band could extend to comprehensive commercial exploitation accrues to band members collectively, other goods and services that may or agreements regarding the name should be concluded. Page 13 SNIPPETS (continued)

Continuing with the issue of trade mark registration for colours per se, WE MOVE NOW FROM BAND WARS TO G & M Safe Deck Limited (designers, suppliers, installers, and testers of COLOUR PROTECTION WARS. fall protection solutions to the UK construction industry) applied to register a pure colour mark in the UK for “safety platform decking Back in January 2018, EUIPO’s of the EUTMR was not yet in force, made of high-density polyethylene Second Board of Appeal held that and so the Board held that the 2009 (HDPE), all for use in the house the grey/orange colour trade mark version of the EUTMR was applicable. building industry” in Class 19 (UKTM belonging to the German chainsaw However, the case does suggest that application number 3173211; see manufacturer, Andreas Stihl AG & the Sieckmann Criteria will be equally UKIPO decision O-433-18). Co.KG, was invalid: applicable in cases which are dealt The G&M Safe Deck product incorporates with under the new EUTMR going orange panels with orange rectangular forward. shaped legs, as shown below: That decision came only a few

months after the EU General Court decided that two of Red Bull’s EUTM registrations for blue/silver colour combination shown below were invalid: The case is of interest because it

suggests that the Sieckmann Criteria (i.e. that colour mark descriptions need to be clear, precise, self- contained, easily accessible, intelligible and objective) will still be very much applicable in determining the validity of a trade mark. Both the General Why does this matter? Well, the Court and EUIPO Sieckmann criteria were originally declared Red Bull’s devised to determine the scope of marks invalid for J. Mac Safety Systems Limited’s Macdesk graphic representation of a mark, but lack of precision. product incorporates orange and red the need for graphic representation The blue and silver panels with black rectangular shaped legs, of a trade mark was swept away by had been described as shown below: reforms; namely, the EU Trade Mark in one registration Regulation 2017/1001 (the 2017 as being in a ratio of EUTMR), which amended Article 4 “approximately 50% to 50%” and in of the 2009 version of EUTMR. The the other as being “applied in equal EUTMR now states that a sign must proportion and juxtaposed to each be capable of being represented other”. on the register in a manner which enables the competent authorities All three decisions have been and the public to determine the clear appealed. At the time of writing, no and precise subject matter of the dates for the hearings have been set protection afforded to its proprietor. as yet, but we await the outcome of However, the Sieckmann Criteria are the decisions in Cases T-193/18 and retained in Recital 10 to the EUTMR. Joined Cases T-101/15 and T-102/15 with great interest. When the proceedings between Andreas Stihl & Giro Travel were heard before the Second Board of Appeal, the 2017 updated version

Page 14 J. Mac Safety Systems Limited opposed However, the hearing officer noted that objection under section 3(1)(b) of the Act G & M Safe Deck Limited’s application, the above statement suggested that the was maintained. claiming that the use of the mark over a colour served a technical purpose rather This decision highlights the difficulty faced period of barely five years was insufficient than denoting trade origin. Also, it was not by applicants for colour trade marks, given to educate the average consumer that clear how many brochures were issued, the general interest in not unreasonably the colour orange (Pantone 1595C) had to whom or where. Further, the hearing restricting competitor’s access to the acquired a secondary meaning as a trade officer said that “the sales do appear to be use of colours. In essence, successful mark and, therefore, it was devoid of steadily increasing but they are not striking, registration of a pure colour as a trade distinctive character and should be refused particularly in light of competitor figures”. mark depends on whether the public registration under section 3(1)(b). Unfortunately for the UKTM applicant, J. associate that particular shade of colour The Hearing Officer said that there was Mac Safety Systems Limited’s evidence with the goods or services for which no hard and fast rule about the length of showed that its turnover for one quarter registration is sought. It also shows the time and this was merely one element of was greater than G & M Safe Deck importance of testing robustly to ascertain a multi factor assessment. “Clearly, if the Limited’s annual turnover. The hearing the quality of evidence; otherwise, it can applicant could rely upon decades of use officer thought G & M Safe Deck Limited’s result in the acceptance of a mark that then this would be advantageous, however market share of between 5 and 8% was should have been rejected. As the hearing it is plausible for five years to be a sufficient reasonable, but its only real advertising officer acknowledged, his decision differed period of time”. Further, a period of five spend – maintaining a website at a cost of from that made by a different hearing years did not greatly assist or hinder G & around £200 per year – was very low, and officer and he appreciated that “this may M Safe Deck Limited with its claim, and it did not assist its claim to having acquired a be frustrating for the applicant”. However, was most certainly not detrimental to the distinctive character. he pointed out that he had had the extent that J. Mac Safety Systems Limited benefit of evidence and submissions from Although the hearing officer concluded that argued. the opponent (which included evidence G & M Safe Deck Limited had established illustrating that third parties used red, The evidence submitted demonstrated that some of its customers, competitors orange and other colours in relation to that third parties used colours other than and the current trade body recognised safety platforms). As noted by the hearing orange for party safety platform decking. the colour orange to be associated with it officer, filing hearsay evidence inherently G & M Safe Deck Limited argued that when used on the applied for goods, much comes with the risk that such evidence the use of colour to distinguish between of that evidence appeared to have been might be given little weight or dismissed manufacturers had become common solicited for the proceedings. entirely. In this particular case, an aspect practice in the construction industry In view of the above, the hearing officer which affected the weight of the evidence for safety decking and customers were found that G & M Safe Deck Limited was that all of the emails and letters had accustomed to viewing the colour orange had not established its claim to acquired been solicited for these proceedings. as indicating trade origin. However, the distinctiveness and, therefore, the evidence wasn’t presented in witness statement format and, therefore, was hearsay.

G & M Safe Deck Limited’s alleged turnover from the rental and sale of safety platform decking between 2011 and 2017 was £2.9m. The evidence included a selection of sales invoices and evidence of G & M Safe Deck Limited’s share of the UK safety platform decking market. In terms of advertising and marketing, G & M Safe Deck Limited spent a very low amount as they predominantly relied on word of mouth recommendations. They provided a small number of marketing communications, an extensive list (in the few hundreds) of companies targeted for marketing purposes and a sales brochure, which contained the following statement:

Page 15 SNIPPETS (continued)

Can a defendant in a trade mark opposition rely on the own name defence when the name in question is that of a TV character? The IPEC wrestled with that very question in KBF Enterprises Ltd v Gladiator Nutrition 3.0 Ltd [2018] EWHC 3041 (IPEC). The judgment contains valuable advice on how to fight against a likelihood of confusion when the dominant part of a trade mark is of By September 2015, sales of TWP when used in relation to nutritional only average distinctiveness. branded nutritional supplements were goods (especially body-building), had no being made on a wholesale basis to third hesitation in finding that the allusions which KBF Enterprises (a sports supplements party sports or nutrition shops and also Warrior might make to the characteristics company that manufactures and sells through the first and second defendants. of the goods were at too general a level products bearing its own trade marks TWP goods were advertised on the and/or too far removed from the goods “Warrior” and “Warrior Supplements”) website of the fourth defendant. to be descriptive or of inherently low owned UK trade mark registrations for distinctiveness. She concluded that KBF It was unclear when KBF Enterprises first WARRIOR SUPPLEMENTS, WARRIOR Enterprises’ WARRIOR mark and the noticed the defendants’ trading under BLAZE, WARRIOR FAT BURNER and word “Warrior” used as part of its other TWP, but on 15 July 2016 KBF Enterprises WARRIOR covering, amongst other things, marks and TWP had an average level of applied to register its WARRIOR trade nutritional supplements in class 5. distinctiveness. mark, a few days before it sent a letter of The five defendants in this case were: claim. Following the receipt of that letter, Noting that it was important not to 1. Gladiator Nutrition 3.0 Limited, a both the TWP logo and the domain name dissect composite marks in an artificial dissolved company which used to run were transferred into Mr Singh’s name. way, the Recorder found that the dominant element of the WARRIOR and Gladiator Nutrition Shops; KBF Enterprises alleged that it had WARRIOR SUPPLEMENTS marks was 2. Warrior Project Nutrition Limited, a goodwill and reputation in the marks the word “Warrior”. In her view, it was company that marketed and sold WARRIOR and WARRIOR SUPPLEMENTS also more dominant (in terms of being “The Warrior Project” (TWP) branded and that the defendants had infringed all more memorable for the consumer) than goods; four of its registered marks in breach of the word “Project”, which explained s 10 (2) of the Trade Marks Act 1994. In 3. Mr Daniel Singh, a bodybuilder, fitness the examples in evidence of people addition, KBF Enterprises claimed that the instructor and professional wrestler abbreviating TWP to Warrior. Overall, defendants had passed off their goods as who had appeared under the stage those of KBF Enterprises by use of TWP • The TWP marks had a high level of name “Warrior” in episodes of the Sky and the TWP logo. similarity to WARRIOR TV “Gladiators” programme shown in 2009, and company director of the The defendants alleged that KBF • The TWP marks had an average first and second defendants; Enterprises’ use post-dated the level of similarity to WARRIOR commencement of Mr Singh’s use of the SUPPLEMENTS 4. Corex Fitness Limited, a company “Warrior” name and relied on the defence that marketed and sold “The Warrior • The TWP marks had a low level of under s 11(2) of the Act of use of Mr Project” branded goods; and similarity to WARRIOR BLAZE and Singh’s own trade name. The defendants WARRIOR FAT BURNER. 5. Mr John Paul Gardener, the company also counter-claimed that KBF Enterprises’ director of the fourth defendant. trade marks were invalid by reason of The evidence of actual confusion adduced Mr Singh’s alleged rights in the “Warrior” at the trial was minimal, and there was In July 2015, Mr Gardner registered the name in connection with fitness and/or a lack of satisfactory evidence of KBF domain name warriorproject.co.uk. In bodybuilding activities acquired prior to Enterprises’ trade under the various marks, October 2015, Deep Blue Sports Limited KBF Enterprises’ first use of the marks. in terms of turnover and geographical (a company of which Mr Gardener was They also alleged that KBF Enterprises spread. Equally, the court was given no then sole director) made an application to was passing itself off as connected with Mr idea of the scale of the use of the TWP the EUIPO to register “The Warrior Project” Singh. marks. However, as this decision shows, logo (“the TWP logo”) shown below it is not necessary to prove any actual for various goods, including nutritional Recorder Amanda Michaels, whilst confusion for a claimant to succeed in supplements in class 5. accepting that the word Warrior might establishing a likelihood of confusion. have some allusive or evocative qualities

Page 16 Taking into account the identical or highly similar goods, the court found there was a likelihood of confusion between the TWP THE PAST YEAR HAS BEEN RIPE marks and KBF Enterprises’ WARRIOR and WARRIOR SUPLEMENTS but found WITH IP DECISIONS that conceptual differences created by the additional words in WARRIOR BLAZE CONCERNING ‘CHEESE’. and WARRIOR FAT BURNER precluded any likelihood of confusion with the TWP marks.

Recorder Amanda Michaels rejected the own name defence because she For example, in C-310/17 Levola Turning to cheesy trade mark was not persuaded that Mr Singh was Hengelo BV v Smilde Foods BV decisions, the Republic of Cyprus trading under the name “Warrior” before EU:C:2018:899, the CJEU confirmed (“Cyprus”) has not had much luck November 2010 (the date of the earliest that the taste of a spreadable contesting EUTM applications document showing use of Warrior marks cheese cannot be protected on the basis of its earlier UK by KBF Enterprises). Although Mr Singh by copyright law. In summary, certification word mark for (and others) made frequent references to Levola (makers of a cheese called “HALLOUMI” registered for “Cheese his role in the TV show in the course of Heksenkass) brought a case made from sheep’s and/or goat’s his trading activities, the evidence of his before the Dutch Courts, alleging milk; cheese made from blends of use of the name “Warrior” alone (without that a rival cheese called Witte cow’s milk; all included in Class 29”. use of his full name) was not sufficiently Wievenkass which was produced In October 2012, the Pancyprian consistent or extensive to show that by Smilde Foods tasted the same Organisation of Cattle Farmers “Warrior” was his trade name. Accordingly, as Heksenkass and, therefore, (P.O.C.F) filed a EUTM application for the own name defence was not made out. infringed its copyright in the taste the logo (shown below left) with the of Heksenkass. The Dutch Court of Finally, the court found that KBF words “Cowboys Halloumi” encircling Appeal referred the matter to the Enterprises’ evidence was wholly a cowboy hat. In the same year, CJEU. In the Advocate General’s inadequate to prove that it had goodwill Papouis Dairies Ltd filed an application opinion, the taste of a food product in any Warrior names prior to July/ for the EU figurative trade mark shown is subjective and depends on September 2015 (when the defendants below right: started to use the TWP marks in relation the taster and their environment, to nutritional supplements) and so rejected meaning that taste is legally KBF Enterprises’ claim based on passing uncertain in scope. Unsurprisingly, off. Mr Singh’s claim to goodwill didn’t fare the CJEU agreed with the Advocate any better. Although Recorder Amanda General, and held that the taste of a Michaels said she was “satisfied that Mr food product cannot be classified as In essence, the General Court agreed Singh believes that he is known to those in a “work” that qualifies for copyright with the Board of Appeal that the UK the fitness/bodybuilding milieu as Warrior protection. public perceived the word “halloumi” or Dan Warrior Singh”, she also said she as a description of the characteristics was “not satisfied that any reputation or even the origin of the goods, rather which he acquired through appearing than an indication of its certified quality on the TV show would have led to him or an indication of quality (see Cases having goodwill in the name Warrior for T-847/16 and T-825/16). fitness and bodybuilding”. Accordingly, the counterclaim failed.

Apart from the ephemeral nature of fame, this salutary tale shows that the use of a mark with an average level of distinctiveness (such as WARRIOR) in combination with other arguably descriptive words (such as FAT BURNER) can result in the creation of conceptual differences that are sufficient to counteract any likelihood of confusion.

Page 17 SNIPPETS (continued)

Accordingly, the Court found that The court confirmed that “unlike the Registry is now functus officio”. the earlier certification mark for the individual trade marks, the distinguishing The Ministry sought to appeal the word ‘halloumi’ was descriptive of function of certification marks should be Registrar’s decision. The High Court the characteristics and origin of the understood as enabling the goods and rejected the appeal and also refused product which it covered, and so services of an undertaking, which belong the Ministry’s application to adduce possessed only a weak inherent to a certain class and comply with further evidence. Although the High distinctive character. certification rules, to be distinguished Court was not swayed by John & from the goods and services of other There was no evidence of the Pascalis’ argument that the 14-day undertakings, which are not certified”. existence of any enhanced distinctive period was inextensible because it character and, therefore, the Court As regards the assessment of the visual, was part and parcel of the rule 41(6) concluded that, in view of the weak conceptual and aural similarity of the process and the time limit in rule distinctive character of the earlier signs at issue, the court agreed with the 41(6) was inextensible, the Ministry’s mark and its descriptive meaning, Board of Appeal’s finding that the term problem was that, by that point, the identical nature of the goods in “bbqloumi” would attract the public’s the Registry had already made its question and the similarity of the attention, and that the public would cancellation decision. conflicting signs due to the common also focus on the plate of food in the What was very unusual in this case presence of the descriptive term foreground of the image, therefore both was that the Registry exercised its ‘halloumi’ was not sufficient to create a those elements were co-dominant. right to appear in the appeal because likelihood of confusion. It followed that The UK registration for the HALLOUMI it raised a very important issue the Board had been correct to find that certification mark, owned by the concerning the Registrar’s powers there was no likelihood of confusion Permanent Secretary of the Ministry under the Trade Mark Act and the and Cyprus’s appeal was dismissed. of Energy, Commerce and Tourism of Rules. As the Registrar pointed out A few months later, the rubbery cheese the Republic of Cyprus (“the Ministry”), in its submissions, the ability to treat was dealt another blow by the General was cancelled following the filing of the Registrar’s decisions as final and Court in Case T-384/17 Republic of an application for invalidity by John & to reject attempts to re-open them in Cyprus v EUIPO, in which the Republic Pascalis (a London-based importer and one way or another by administrative of Cyprus again failed to successfully distributor of food products) because action is hugely important to the contest a EUTM on the basis of its the Ministry had failed to file its notice of practical running of the IPO. Allowing certification mark for “HALLOUMI”. defence and counterstatement within the respondents to such applications to This time, the EUTM application in specified two month deadline. contest them after adverse decisions question was for the figurative mark Having failed to file its notice of defence, had been issued, simply because shown below, which covered a range the UKIPO wrote to the Ministry to let they didn’t get round to it at the time of goods and services in Classes them know that they had 14 days to would create substantial additional 29, 30 and 43, including cheese and either request an appeal or provide burden on the IPO. Mr Justice Arnold related products. written submissions as to why the fully accepted this reasoning, and Unlike standard trade marks, certification Registrar should exercise his power of he was quite scathing about the marks do not distinguish commercial discretion to treat the application as Ministry’s evidence because it simply origin, but rather a class of goods and defended. The Ministry claimed that they demonstrated that it had been the the characteristics of those goods. had not received the letter until after the author of its own misfortunes: “the additional 14-day deadline had passed Ministry’s internal procedures were so but in fact they had received the letter disorganised that the UKIPO’s letter inviting them to file written submissions was passed from official to official […] on the date that they had received the but no action was taken.” Given that notice of cancellation. the evidence showed that the problem had been caused by the Ministry’s own In an attempt to rectify this unfortunate internal inefficiencies, it was hardly series of events, the Ministry’s solicitors surprising that they failed to establish requested a retrospective extension of any extenuating circumstances to the second extension (i.e. the 14-day allow any over-turning of the decision period) pursuant to Rule 77 of the Trade or extension of the deadlines. The Mark Rules, despite having failed to cheesy message to take away from file its defence. However, the Registrar this one is make sure that you read said no, sorry, time’s up: “the fact that your post, docket your deadlines and a decision has been issued in this case keep your clients up to speed. declaring the mark to be invalid means

Page 18 Cheese of a different variety featured in Case R 2333/2017-1. In June 2015, Mr Andrew Hines successfully registered the word CHEESE as a EUTM for “grains and agricultural, horticultural and forestry products not included in other classes; seeds” in Class 31. The reader might think that this trade mark suggests a type of edible cheese but as the Board of Appeal explained, the term “CHEESE” is known to those active in the marijuana industry as the name of a variety of marijuana seed. The things you learn from trade mark decisions! The question of the identity of the relevant consumers – those in the marijuana industry or the public at large - was crucial during the cancellation proceedings.

It all started in 2016 when two Spanish In addition, it is in the public interest Since the argument was that “cheese” companies from the marijuana industry that names of plants are not registered designated a specific hybrid, rather than (Sweet Seeds and Pot Sistemak) opposed as a trade mark, as provided by Article a registered variety, it was conceivable the CHEESE mark and filed a request 20(1) of the International Convention that such designation had become usual for declaration of invalidity claiming, for the Protection of New Varieties of only in certain territories. The evidence amongst other things, that the EUTM Plants (‘UPOV Convention’). Therefore, hinted at least to the UK, the Netherlands was descriptive by nature, devoid of the Board had to first assess whether and Spain, but neither party adduced distinctive character and exclusively used the term CHEESE designated a plant evidence that the hybrid in question was language customary to a specific trade, denomination which was associated with known under different names in different pursuant to Article 7(1)(b), (c) and (d) of the category of goods concerned when territories within the EU. It was also highly the EUTMR. The applicants argued that the EUTM application was filed, or whether probable that (on the filing date, at least) the EUTM consisted of a word which it was reasonable to assume that such an the designation could be used to give the referred to a kind of cannabis seed, and association could be established in the name to the hybrid in other territories. the term “CHEESE” would be known by future. The Board said that “In view Moreover, the Board said that “cheese is manufacturers, retailers and consumers of the function of Article 7(1)(c) EUTMR, a standard word of the English language, active in the relevant industry as the name the examination must be assessed in view largely understood both in its meaning as a of a variety of marijuana seed. of the relevant public of both in trade, dairy product and as an exclamation used including competitors, and consumers, to encourage people to smile just before Article 7(1)(c) EUTMR pursues an aim as those acquiring the products a photo is taken of them throughout the which is in the public interest, namely (R 1743/2007-1, Vesuvia), including a entire Union. For this reason, it is likely that that descriptive signs should not be part of the public knowing specialised the name of a hybrid called ‘cheese’ will be monopolised by a single undertaking terminology (T-226/07 Pranahaus)”. used in the whole of the EU.” (C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 25).

Page 19 SNIPPETS (continued)

Based on the submitted evidence, Article 7(1)(b) and (d) EUTMR were not A recent EUTM opposition decided by “CHEESE” was perceived as a descriptive considered as the EUTM was already the General Court (LA Superquimica term for a particular strain or plant in breach of the law. The Board added v D-Tack; T-24/17) shows what EU name. According to the website https:// that the word ‘cheese’ described the practitioners are up against when amsterdammarijuanaseeds.com/cheese- possible smell of plants in a more general relying on online databases to marijuana-seeds: context, and remarked that “the odour of access official registers of national a plant may be a decisive characteristic and regional IP offices. However, “Cheese weed is known for its sharp, of the product, be it in a positive or in a the decision also reminds us that sour aroma: that’s where the name negative way. This in itself justifies the alternatives to obtaining information comes from. This marijuana is great for refusal of the trade mark”. In summary, from the Internet still exist. chilling with friends and it’s perfect for the EUTM was found to be invalid as the medical use as well. A cheese strain The EUTM applicant, a German word CHEESE (to the relevant industry) grows into the weirdest and funniest manufacturer and wholesaler of adhesive “is not seen as the indication of origin but cannabis available, guaranteed to make tapes, applied to register the trade mark as the name of the specific product”. you laugh. Smoking cheese weed gives D-TACK for goods in Classes 1, 17 and a strong body high and a long lasting The growing movement to legalise 35, including chemicals, adhesive tapes happy giggle. Smile and say cheese”. cannabis worldwide has sparked and bands, and retail services. The commercial interest in IP from EUTM application was opposed by the The Board said it was obvious that the companies active in the marijuana Spanish company LA Superquimica, specific group of cannabis consumers industry, and examples from the SA, based on a number of their earlier would understand the word CHEESE as EU case law indicate that the most Spanish trade marks registered for ‘One of the most popular indoor growing common reasons for refusal of marks goods including adhesive materials, as strains around. Cheese CANNABIS for cannabis-related products are that shown below. LA Superquimica’s marks seeds ensure a happy harvest’. As a the marks are descriptive and devoid included the word mark TACK and the result, the relevant consumer would not of distinctive character (e.g. “KNOW following figurative marks in Class 16: perceive it as unusual but rather as a YOUR CANNABIS” and “MEDICAL meaningful expression: a particular variety MARIJUANA) or contrary to Article of marijuana seeds. It followed that the 7(1)(f) of the EUTMR, which prohibits relevant marijuana-smoking public would the registration of “trade marks which immediately and without further thought are contrary to public policy or to make a connection between the sign in accepted principles of morality” (e.g question and the characteristics of the “SPECTRUM CANNABIS” and “VAPZ goods in question, all of which rendered WEED STIX”). However, in this particular the sign descriptive (T-234/06, Cannabis, case, the success of the application for EU:T:2009:448). This meant that the cancellation depended on what was relevant consumer, without making any deemed to be the “relevant industry”. The following figurative mark in Class 17: mental effort or being required to stop The concept of relevance was also and think, would immediately perceive critical in Case R 495/2005-G, in which said sign as being obviously descriptive the mark SCREW YOU was considered in connection with the kind of goods in line with Article 7(1)(f) EUTMR, and the concerned and the purpose thereof definition of the relevant public differed And the following figurative marks in (R 1881/2015-1, KB KRITIKAL BILBO). according to the goods applied for. The Classes 16 and 17: Accordingly, the Board upheld the goods listed in the application under Cancellation Division’s decision, Classes 9, 25, 28 and 33 were ordinary commenting that it was “a legally sound items marketed in outlets used by the conclusion within the scope of the parties’ general public, and the use of the mark submissions and evidence”. In addition, in relation to such goods was deemed the Cancellation Division’s decision was in by the Board to be contrary to public line with the previous examiner’s decision policy/morality as it would inevitably rejecting the identical trade mark in 2012. cause a significant section of that public Since Article 7(1) EUTMR states that once to be upset and affronted. The Board it is clear that one of the absolute grounds therefore upheld the examiner’s objection for refusal applies, it is no longer necessary in relation to those goods. to consider any other, the applicant’s arguments also alleging a breach of

Page 20 Both the Opposition Division and The General Court upheld the rejection Registered form the Fourth Board of Appeal rejected of Superquimica’s opposition. The the opposition. The key finding was Court concurred with the earlier findings that proof of existence of the earlier that the rules regarding the precise marks (other than the earlier word documents that Superquimica had to mark TACK) had not been provided, produce in support of the existence, as the extracts from the Spanish Trade validity and scope of protection of the Actual use Mark Office’s SITADEX database earlier marks were clear and had been submitted by Superquimica did brought to Superquimicia’s attention by not include representations of the the EUIPO. The technical problems with marks. Superquimica had submitted the Sitadex database were not a proper representations of the various figurative justification for the absence of evidence marks on loose sheets of paper with no of the renewal of the earlier marks. indication of their source. Because such Instead of printing representations of representations were of unknown origin, the earlier marks as part of the SITADEX they were not sufficient to substantiate extracts, Superquimica should have the earlier marks. Further, the evidence considered the other options available of use of the earlier word mark TACK for providing colour representations of was found insufficient to demonstrate the earlier marks from an official source genuine use. which included, inter alia, a copy of the relevant page of the Boletín Oficial de Superquimica appealed, claiming that la Propiedad Industrial (Spanish Official at the time of filing the opposition, the Intellectual Property Gazette) or a copy SITADEX database for technical reasons of the relevant certificate of registration. As the Board found, the two elements did not reproduce representations “tack” and “ceys” always appeared of the earlier figurative trade marks. Moreover, the documents submitted late conjoined, forming an indivisible unit At the appeal stage, Superquimica were all in Spanish and, in the absence and, even though the element “ceys” submitted new extracts from the of a translation into the language of the was smaller and represented in a SITADEX database in Spanish which proceedings, they would not have been different colour and font type, it was included the representations of the taken into account anyway. The Board still clearly visible and did not occupy earlier trade marks, since the technical had therefore been correct to exercise its a secondary or ancillary position in problems had been solved. However, discretion and find that the late evidence the overall impression produced by the Board of Appeal took the view (i.e. the new extracts from the Sitadex the combination ‘tackceys’. The that “The claimed technical problems, database) could not be taken into Court concluded that the Board had irrespective of whether or not these account. been correct to find that the addition existed indeed at the time the opponent The General Court also endorsed the of the element “CEYS” altered the had to substantiate its earlier rights, are Board’s decision that the evidence distinctive character of the word mark not a proper justification for not having provided did not show use of the earlier “TACK”. substantiated the earlier marks”. TACK mark in the form under which it Superquimica appealed to the General had been registered or in a form which Court, claiming that it could not be could be regarded as acceptable, given criticised for not providing evidence that genuine use must be consistent with within the timeframe, given that the the essential function of a trade mark, Sitadex database was not accessible which is to guarantee the identity of within the period prescribed by EUIPO the origin of goods or services by for producing that evidence. In addition, enabling the consumer or end user to Superquimica argued that it had unequivocally distinguish the trade origin produced many items of evidence of of the product or service. genuine use of its earlier signs, including There was no evidence that the mark invoices, labels, brochures, a manual, “TACK” was used independently from catalogues and extracts from Internet the element “CEYS” and the element sites. “tackceys” often appeared with one or more additional elements, such as “bricocinta”, “crick” or “cristal”:

Page 21 SNIPPETS (continued)

For reasons that are not immediately Monster Energy reasoned that an apparent to the writer, energy drinks undertaking that provided painting services have become increasingly popular for vehicles could also produce stickers for with young people: 10 to 18-year-olds use on vehicles. However, the Board found in the UK consume more of these that spin on the facts was not sufficient to caffeine and sugar-laden concoctions establish a direct link between the goods on average than young people in other and services, explaining that “To hold European countries, according to a otherwise would give the proprietor of a survey conducted by the European trade mark covering stickers and decals a The EUIPO Opposition Division, the Board Food Safety Authority. right to which it was not entitled to ‘block’ of Appeal and the General Court in turn similar marks in a wide range of commercial It’s therefore unsurprising that leading rejected the opposition in its entirety for activities, while, in reality, the risk that players in the energy drinks market are all the goods and services. In the Court’s consumers would confuse or associate the fiercely protective of their brands; for opinion, the goods and services covered marks in question is highly unlikely”. example, Monster Energy battles to by the signs at issue were different. maintain a monopoly not only in its trade Monster Energy argued that the goods In the light of the description of the goods mark for Monster Energy, but also in all within Class 16 - namely “stickers”, and services at issue, their different trade marks containing the word “monster”. “decals” and “transfers” – covered by its nature, intended purpose, method of use, However, this doesn’t always go to plan, earlier EUTM were similar to the painting, method of manufacture and distribution as recent failures before the (European) varnishing and coating services in Class 37 channels and the fact that those goods General Court and the UK IPO attest. covered by the MONSTER DIP logo mark. and services were neither competing nor complementary, the Board concluded In the General Court case between At this point, the reader can be forgiven for that there was no similarity between Monster Energy Company and EUIPO feeling confused. them. This was fatal to the opposition (T-274/17), the US company opposed the based on Article 8(1)(b) of the EUTMR, as registration of a MONSTER DIP logo mark lack of similarity between the goods and (shown above right) for goods and services services at issue precludes any likelihood in Classes 2, 37 and 40, including paints, of confusion. It was also fatal to Monster coating preparations and the painting of Energy’s other allegation that the Board vehicles. None of the goods related to had wrongly excluded the risk that use energy drinks. of the MONSTER DIP logo mark would Amazingly, Monster Energy was basically be detrimental to the distinctiveness of suggesting that the public might not be the earlier EU figurative mark MONSTER able to differentiate between its energy ENERGY, within the meaning of Article 8(5) drink and industrial paint. Perhaps they’d of the EUTMR. read cases such as T-175/06 Coca Cola One of the cumulative conditions that must v OHIM [2008] ECR II-1055 (in which the be satisfied to obtain broader protection court compared the goods at issue and under Article 8(5) is that the earlier trade concluded that the average consumer mark must have a reputation in the EU. In would consider “it normal for wines, on essence, the Board upheld the Opposition the one hand, and beers, ale and porter, Division’s finding that the earlier EU on the other, to come from different figurative mark MONSTER ENERGY had a undertakings”) or T-584/10 Yilmaz v higher degree of repute solely in respect of OHIM (in which case the goods found to non-alcoholic beverages in Class 32. The be dissimilar were tequila and beer) and Board then decided that the relevant public thought “hold my beer”. would be more likely to focus on the word Although Monster Energy relied on a elements in the signs at issue, and the number of earlier EUTMs, the only mark for sections of the “relevant public” who would which proof of reputation was established understand the words “monster” and was its EU figurative mark for MONSTER “energy” would also be able to distinguish ENERGY (shown on the image of the can between the two brands. depicted to the right) covering goods in Overall, the Board found that MONSTER Classes 5, 16, 25, 30 and 32. ENERGY and the mark applied for were visually similar “at least” to a low degree and phonetically similar.

Page 22 Conceptually, the common element On that basis, Monster Energy’s opposition In the second UK opposition, Daniel “monster” referred to an imaginary creature to the registration of Marco Bösel’s EUTM Smith v Monster Energy (O/768/18), an (“usually large, ugly and scary” was the application for a MONSTER DIP logo application for a logo featuring the words Board’s considered opinion of monsters), mark failed. This is a good example of the “Thirsty Beasts.com Quenching your thirst which would be understood by the English trade mark register reflecting the reality of & keeping you healthy” and a blue fluffy and Dutch speakers as that word existed the market – it’s unlikely that an industrial monster head with bubble (shown below) in their own language, or because that paint company would siphon off beverage was opposed. word was very similar to an equivalent; for drinkers. example in French (monstre), in Maltese Unfortunately for Monster Energy, it also and Romanian (monstru), in Polish recently failed to convince the UK IPO (monstrum), or in Lithuanian (monstras). that it could be mistaken for pizza (Chris However, a part of the relevant public, Dominey & Christopher Timothy Lapham such as Bulgarian, Czech or Slovak- v Monster Energy Company; O/499/18). speaking consumers, would not give any Monster Energy opposed an application meaning to the word “monster”. The word for the series of two trade marks shown Monster Energy relied on their earlier “energy” would be understood by a large below in respect of pizza in Class 30 and registered rights in word marks for part of the relevant public throughout the pizza parlours in Class 43. UNLEASH THE BEAST and REHAB THE EU, in particular the English-speaking BEAST in Classes 30 and 32, amongst public but also members of the relevant other marks. Considering the opposition the public who spoke Spanish (energía), from the point of Monster Energy’s mark Portuguese, Slovak, Polish and Finnish which had been shown to have the most (energia), Danish, Maltese (enerġija), extensive use, and therefore the highest French, Romanian, Czech and Netherlands degree of acquired distinctiveness – (energie), Lithuanian (energija) or Latvian namely the slogan “UNLEASH THE (enerģija). The Board also found that, for Monster Energy relied on its earlier EU BEAST” – the Hearing Officer found only the part of the public that understood only word marks for “MONSTER”, “MONSTER one similarity with the Thirsty Beasts logo, the terms “energy”, “dip” or all the other JUICE” and “MONSTER ENERGY” and namely that the word “BEAST” appeared elements of the marks at issue apart from its EU figurative mark for MONSTER in both. Therefore, there was only a low “monster”), the signs were at least partially ENERGY. degree of overall similarity between the conceptually different. Monster Energy alleged that the Monsta marks, whether considered visually, aurally After balancing the various levels of visual, element of the mark applied for was the or conceptually. Even though in this phonetic and conceptual similarity between dominant element and that the words particular case the goods were actually the earlier EU figurative mark MONSTER pizza was non-distinctive. However, identical, and even assuming that Monster ENERGY and the mark applied for, the that argument failed to bite and the Energy’s mark had a high degree of Court upheld the Board’s conclusion that Hearing Officer concluded that no enhanced distinctiveness (either due to its the marks were globally similar only to misrepresentation would occur. “Clearly originality or as a result of the substantial some extent. pizza is a food whilst the opponent’s use) there was no likelihood of confusion goods are drinks. One is used to satisfy between them. The US company The huge distance separating the goods hunger the other to quench one’s thirst or appealed, but the Appointed Person ruled in Class 32 covered by the earlier EU artificially boost energy levels. Physically in favour of Mr Smith, and awarded a figurative mark MONSTER ENERGY from the goods are very different. […] I do not further sum of £600 in costs, in addition the goods and services covered by the believe that they are in competition with to the £1100 costs already due under the mark applied for was also fatal for the each other. I accept that in restaurants Order made by the Hearing officer. claim under Article 8(5), as it meant that and takeaway outlets beverages will be the consumer of the goods covered by Launching a new food or drink company is sold in cans, bottles or to drink on the that mark, when faced with the goods and an expensive business and legal fees eat premises, but an energy drink is not, in services covered by the mark applied for, into marketing budgets, which explains the my opinion, a normal accompaniment to would not establish a link between the tendency for small companies to quickly a meal”. Although the users of the goods two marks at issue, despite the strong capitulate when faced with a trade mark and services covered by the marks at reputation of the earlier mark in respect of action filed by big companies. The Thirsty issue were the same, and they might share non-alcoholic drinks. It followed that the Beasts and Monsta Pizza victories are a trade channel, the Hearing Officer found Board had correctly found that Monster evidence that it is possible for the small that the goods and services differed in Energy had failed to show that use of the business to win. every other respect, and it followed that mark applied for would be detrimental the ground of opposition had to fail. to the distinctive character of the EU figurative mark MONSTER ENERGY.

Page 23 SNIPPETS (continued)

Now for a smoking story involving dilution, brand with products known to cause cancer, such as reputation and detriment to repute, in which cigarettes and tobacco, would be highly detrimental to Beiersdorf (the parent company of Nivea) the brand’s reputation. successfully opposed a UKTM application Having considered the evidence filed, the UKIPO for the mark shown below for goods in Class 34, concluded in its decision (O-564/18) that it was clear namely cigarettes and related products: that Beiersdorf’s mark enjoyed a significant reputation in respect of cosmetics, specifically skincare products (including sun tanning preparations) and shaving cream. It was established that the public would make the required mental “link” between the marks, given that (i) the marks were highly similar; (ii) NIVEA was an invented term and so had a high degree of inherent distinctiveness, which was enhanced by the use made of NIVEA meaning Beiersdorf relied on its word mark for that the earlier trade mark enjoyed “the NIVEA in Class 3, which covered skin very highest degree of distinctiveness”; care products, cosmetics and hair care and (iii) the strength of the earlier preparations. It alleged that the mark had mark’s reputation was significant. a reputation and was so well-known that Although skincare products and any use of the word NIVEA, for any goods tobacco products are clearly miles and services, would mislead consumers apart and could be considered into believing that there was some completely dissimilar goods, connection with Beiersdorf. Beiersdorf’s NIVEA is well-known for Beiersdorf submitted a witness products that care for the body statement showing and skin, as opposed considerable reputation in to cigarettes, tobacco the UK, with evidence of and other smoking use dating back to 1922 related goods and in relation to skincare paraphernalia (including products as well as various alternatives to smoking) sponsorship arrangements which are perceived as with, amongst others, the being harmful to health English national Football (albeit to varying degrees) team and the TV show and at least some of “the Voice”. Of particular the goods are proven importance was evidence to be directly cancer- that Nivea was the only sun causing. Accordingly, care brand to partner Cancer the UKIPO concluded Research UK. that any potential linking of the NIVEA brand Given that Beiersdorf with smoking related promoted NIVEA together goods and accessories with Cancer Research UK (and even alternative to educate the public on products thereto) would skin care safety and had also take unfair advantage of actively helped by donating and be detrimental to the more than £3 million to reputation of NIVEA as a fund Cancer Research’s brand and, therefore, the research into cancer since claim under Section 5(3) 2012, it was alleged that succeeded in its entirety. the association of the NIVEA

Page 24 In the Spring 2018 issue of Make Enercon appealed to the CJEU, arguing to be changed. The CJEU noted that, Your Mark, we considered all sorts that, when determining the nature of the if the General Court was required to of colours and shapes in cases mark, the Court should have considered examine the distinctiveness of a mark concerning non-traditional marks, not only its classification on the form but applied for - not only in the light of the including a dispute between also the whole content of the form, and category chosen by the applicant in rival wind energy manufacturers should have assessed the distinctiveness its application, but also in the light of in Enercon v EUIPO (T-36/16). of its sign as a figurative mark as all other potentially relevant categories The CJEU has now confirmed depicted in the representation filed with - then the applicant’s obligation to the finding of the General Court the form, rather than as a colour mark as categorise the mark applied for, and in that case, and held that the it was described on the application form. the fact that this subsequently could distinctiveness of a sign as an not be changed, would deprive Article The CJEU rejected Enercon’s argument, EU trade mark must be assessed 43(2) of the EUTMR of all practical finding that “the designation of the according to the category as effect. category of mark by the applicant for described in the application for registration of an EU trade mark is a legal Therefore, the CJEU refused to registration (C 433/17 P Enercon requirement” and so was not merely a overturn the declaration of invalidity, GmbH v EUIPO). matter of administrative convenience, as and held that the General Court had In January 2003, Enercon GmbH Enercon had argued. been fully entitled to take the view that obtained a EUTM registration for the the distinctive character of the mark The CJEU held that, following sign covering “Wind energy had to be assessed as a colour mark, according to Article converters, and parts therefor”. which proved fatal. Though Enercon’s 26(3) of the EUTMR, an mark contained five different shades Enercon had identified the sign as application for registration of green along with the colour white, a “colour mark” in the application of an EU trade mark its choice of green was nevertheless form and had used a colour code to must comply with the problematic since that specific describe the colours applied for. conditions set out in the colour is often associated with being Implementing Regulation In March 2009, Gamesa Eólica SL environmentally friendly and wind (2868/95/EC) and, applied for a declaration of invalidity, power is a form of renewable clean therefore, had to mention which was granted on the basis that energy. As such, the relevant public which of the categories Enercon’s mark lacked distinctive was unlikely to perceive the various referred to in Rule 3 of the character. Enercon appealed, and shades of green in Enercon’s mark as Implementing Regulation the First Board of Appeal annulled the an indication of commercial origin. the mark fell into. Cancellation Division’s decision. The case demonstrates the important According to the CJEU, Gamesa Eólica SL appealed to the role that categorising the mark plays Enercon was, in fact, General Court and the Court reversed in the assessment of distinctiveness. seeking to circumvent the the First Board of Appeal’s decision. The CJEU has confirmed that requirements of Article The case was then remitted to the distinctiveness should be assessed 43(2) of the EUTMR, which Second Board of Appeal, which took based on the category chosen by governs the amendments the view that the sign should be the applicant in the application for that can be made to EUTM assessed as a colour mark and the registration and not on all potentially applications and does message it conveyed was exclusively relevant categories as perceived by not allow the category aesthetic, rather than communicating the relevant public. of EUTM chosen by the the origin of trade. Enercon appealed applicant in its application to the General Court, which agreed with the Second Board of Appeal.

Page 25 jurisdiction that itmighthave. claim orthatitshould notexercise any the courthadnojurisdictionto hearthe EasyFly appliedforanorder thateither claim onthedefendantsinBangladesh. easyGroup soughtpermissiontoservethe below) andamountedtopassingoff: its EASYJETword markandlogos shown of itsregistered trademarks(particularly of theEasyFlysignsinfringedanumber Sir SteliosHaji-Ioannou,allegedthatuse entrepreneur andbudgetairlinefounder easyGroup, avehicleofthe well-known below (“theEasyFlysigns”): the signsEasyFlyandlogoshown and provides airlinecargo services under headquartered inBangladeshthat offers Easy Flyisasmallcargoairline Fly [2018]EWHC3155(Ch)). potential infringer(easyGroup vEasy exercise cautionwhenflyingaftera the UKandhighlightedneedto trader’s onlineactivityistargeted at applied todeterminewhethera has confirmedtherelevant principles A recent casebefore theHighCourt Page

26 UK COURT DIARY CHALLENGE INJURISDICTIONAL APPROACH TARGET” “INTENTIONTO ENGAGES FLYCOME WITHME:HIGHCOURT forwarders inBangladesh. marketing activitiesorthrough freight business cameprimarilyfrom direct anywhere inEurope; infact, Easy Fly’s It hadneveracustomerfrom predominantly Bangladeshicompanies. Bangladesh, anditscustomerswere transporting liveshrimpfrywithin the bulkofEasyFly’s businesswas It didnothelptheclaimantsthat EU. targeted attheUKorelsewhere inthe EasyFly becausetheactswere not have areal prospect ofsuccessagainst The judgeheldthateasyGroup didnot 3. 2. 1. that: law, theclaimantmustsatisfycourt jurisdiction. According tosettledcase permission toserveoutoftheUK’s to decidewhetherornotgrant had toapplythree basiccriteria established inBangladesh,theCourt Given thatEasyFly’s companywas the dispute. appropriate forumforthe trialof is clearlyordistinctlythe in allthecircumstances, England and referred toas“thegateways”); jurisdiction maybegiven(often which leavetoserveoutofthe more oftheclassescase for defendant fallswithinoneor that theclaimagainstforeign there isagoodarguable case the claim; fanciful, prospect ofsuccesson there isareal, asopposedtoa easyGroup’s case on targeting was based The second page of EasyFly’s website result was headed “Easy Fly Express – first on two pages of Easy Fly’s website, on relied on by easyGroup included the & only cargo service in Bangladesh” - there Easy Fly’s Facebook page and on a recent following statements (which also appeared was nothing to suggest that the service Google search. on EasyFly’s Facebook page): was targeted at Europe.

The judge was not impressed with 1. “..While we moved on with our Although the judge accepted that the easyGroup’s reliance on the fact that Easy domestic operations, we foresee resemblance between the EasyFly Fly’s website and Facebook page were in greater business opportunities lying signs and easyGroup’s trade marks and English: the language was widely spoken ahead in the international air-cargo get-up was a factor to be taken into in Bangladesh, particularly in business, market as well. Initial market research consideration, he did not accept that it and was also the dominant language used shows an appreciable tonnage was sufficient to lead the average UK or on websites globally. Moreover, Easy Fly’s of cargo movements between EU consumer to believe that EasyFly’s website and social media contained no UK Bangladesh and China, Middle-east, website or Facebook page was aimed at or EU contact details. Europe & in the USA region.” him or her.

The first page of EasyFly’s website relied 2. “To extend cargo network initially to on by easyGroup included the following the Chinese cities, middle-east, we Comment statement: are particularly working to acquire In this age of worldwide internet appropriate aircrafts at earliest.” “Our network provides a global reach access, a reoccurring question for customers in Africa, Europe, North According to the judge, “the average for trade mark owners is: what America, South America, the Middle East, consumer would perceive the first exactly constitutes use for the South East Asia and North Asia.” statement as merely identifying potential purposes of online trade mark future opportunities” and, when read However, the judge took the view that infringement? This decision has together with the second statement, “he this statement would be perceived by the confirmed that a company or or she would conclude that at present average consumer of airline cargo services individual based outside of the UK Easy Fly was only targeting China and the as an advertising puff. It was quite plain that uses a trade mark online will Middle East (and even that was work in from EasyFly’s website that it did not have not be deemed to have used that progress)”. anything remotely resembling a global mark for the purposes of bringing reach. Even taken entirely at face value, The Google search relied on by easyGroup infringement proceedings within this statement amounted to a claim that showed that a search for “cargo flight the UK, unless the claimant can Easy Fly served the whole world, which did Bangladesh” yielded Easy Fly’s website as demonstrate that the alleged not amount to targeting Europe, still less the second hit. However - since the search infringer has specifically targeted the UK. UK consumers.

Page 27 the BIGHORNtrademarkshown above. It wasVoltino thatownedtheEUTMfor rest oftheEU,according to Red Bull). Big Horn’s products inBulgaria(andthe company Voltino Eood(Voltino), distributes The seconddefendant,theBulgarian are shownbelow: yellow circle, orsun.Themarks atissue Bull’s trademarkoftwobullsinfront ofa onitsenergydrinksinfringedRed Horn Red BullclaimedthatthesignusedbyBig merit”. “procedural pointsoflittle orno that involvethedeterminationof the dangersofadvancingarguments out orsummaryjudgments,aswell orders fordefaultjudgment, strike that mustbemetinorder toobtain demonstrates thehighthresholds range of“energy drinks”.Thecase use ofananimalonitsBigHorn in defaultrelation toBigHorn’s out, summaryjudgmentand Red Bullunsuccessfullysoughtstrike Ltd &Ors.[2018]EWHC2794(Ch), UK In RedBullGmbHvBigHorn Page

28 UK COURT DIARY DILEMMA TRADE MARK HORNY end ofthematter… also rejected. However, thiswasnotthe Red Bull’s oppositionunderthisheadwas be successfulunderArticle8(5)EUTMR, was alsoarequirement foroppositionto rejected. Assimilaritybetween thesigns based onlikelihoodofconfusionwas not fulfilledandsoRedBull’s opposition conditions ofArticle8(1)(b)EUTMRwas were dissimilar, oneofthenecessary different directions. Giventhatthesigns meanings ofthesignstherefore wentin with twoibexesstartingtojump”.The the background ofasun/yellow circle, was “amountainouslandscapeagainst each other”whereas theBIGHORN mark sign inwhichtwobulls(fast)movetowards dissimilar. TheRED BULL markwas“a also foundthesignswere conceptually dissimilar.” TheOpposition Division similarity. Therefore, thesignsare visually other isnotsufficientforafindingof different animalsmovetowards each habitat” and“Thefactthattwoapparently living inthemountains,theirtypical “Obviously, theseare mountainibexes HORN mark,theOppositionDivisionsaid Considering thetwoanimalsinBIG the registration oftheBIGHORNmark. Division rejected RedBull’s oppositionto On 25May2018,theEUIPO’s Opposition particulars ofclaim: werethe name“BigHorn” includedinthe Photographs of energydrinksbearing cause oftheclaimant’s marks)ofEUTMR. use takingunfairadvantagewithout due identical goods)and9(2)(c)(similar marks, under Articles9(2)(b)(similarmarks, energydrinkinfringedits rights Big Horn the import,saleandadvertisingof UK’s ShorterTrial Scheme,allegingthat Red Bullhadissuedaclaimunderthe Bullish claimsandapplications pursuant toCPR 6.15(2). (retrospective) means servicebyalternative the usualtermsofanorder providing for was nottrue-itmerely anorder in had accomplishedgoodservice, butthis submitted thatthisorder declared thatit good andsufficientservice. Red Bull Voltino’s oldaddress shouldbedeemed particulars ofclaimbyrecorded postto providing thatsendingtheclaimformand defendants, RedBullappliedforanorder The dayafterBriffaceasedactingforthe statement oftruth. Defence” butnowcontainedanappropriate defence, whichwasidenticaltothe“Briffa emailed (butdidnotfileorserve)a revised statement. Then,on30July2018,Briffa statement oftruthappropriate forawitness validly served.Thisdocumentcontaineda included adenialthatVoltino hadbeen referred toasthe“BriffaDefence”,which emailed (butdidnotserve)whattheCourt briefly actedforthedefendantsfiledand On 19July2018,thelawfirmBriffathat date, butwithre-signed statements oftruth. defences inApril2018,bearingtheearlier served further(insubstance,identical) andEnchevfiled defence, BigHorn response toRedBull’s criticismoftheir Enchev inMarch 2018.Inapparent Defences wereand filedbyBig Horn address, whichwasnotvalidservice. claim hadbeendelivered to Voltino’s old address; theclaimformandparticulars of to RedBull,Voltino hadchangedtheir were dulyserved.However, unbeknown defendant, Lyubomir Enchev(Enchev)- anditsdirectorBig Horn -thethird Red Bull applied to the High Court However, Voltino argued that it had seeking: (i) to strike out and/or summary not copied Red Bull: it was merely Comment HORNY judgment in respect of the defendants’ representing the creatures “in their natural This case illustrates the need to relevant defences and (ii) judgment in environment and the scene is derived from carefully consider the basis for default against Voltino (which had not filed their natural behaviour. Since the bulls of applications for default judgment, an acknowledgment of service). the former marks are domestic and not TRADE MARK summary judgment and strike wild animals and are not presented in out; as the Court said, it was Red Bull’s arguments lacked their natural environment as they do not regrettable that “this judgment wings fight with each other, not to mention they DILEMMA has been lengthened by the do not usually face a mirror there are no Dismissing Red Bull’s application for a determination of the procedural grounds to consider that the common default judgment, the Court found that an points of little or no merit user would establish a link between both order providing for (retrospective) service advanced by [Red Bull] in support signs”. by alternative means could not deprive of its strike out application.” Voltino of its right to defend the claim by The Court took the view that the It also shows the difficulties reason of having filed a defence before an defendants had three possible defences: that can arise in the absence of order had been made obliging it to do so. (i) Red Bull’s marks were dissimilar to competent legal representation. Red Bull’s application for strike out or the signs on the defendants’ products; The defendants were represented summary judgment also failed to fly. (ii) there was no likelihood of confusion by a firm of solicitors for a short in respect of the claim under Article 9(2) period of about two months. The Court considered various alleged (b); and (iii) there was no “link” between Only the first and third defendant instances of failure to comply with rules the marks in relation to the claim under appeared at the hearing; the and practice directions and found that, Article 9(2)(c). As the Court found that the third defendant had a very while certain breaches had occurred, defendants had a reasonable prospect of limited command of English and these were not serious or significant. defending some or Red Bull’s entire claim, represented the first defendant, Although the Court accepted that Voltino’s this was fatal for Red Bull’s application: assisted by a person acting as failure to serve the Briffa defence and the Big Horn’s prospect of success was more interpreter and by a McKenzie revised version was significant, it was not than fanciful. friend. The effect was that the a breach of the rules which could, in the first and third defendant “were particular circumstances, justify striking out significantly disadvantaged in the defence. opposing the applications”, and Having dealt with Red Bull’s so the Court had to “ensure the unsuccessful procedural points, the parties are on an equal footing, Court considered the defendants’ while also ensuring compliance deficient pleadings and decided they with rules, practice directions and had some relevant defences. orders”. The judgment clears the arena for the two competitors to As regards likelihood of confusion lock horns at a future trial. under Article 9(2)(b) EUTMR, Red Bull argued there were “clear visual and conceptual similarities” between Red Bull’s marks and the signs used on Big Horn’s cans and in advertising - the Big Horn logo of a twin or double ram against the yellow circle or sun as against the Red Bull mark with the circle background, as well as the blue and silver background used by both brands. As regards Article 9(2)(c), where a likelihood of confusion was not required, Red Bull claimed that a link would be made from such similarities, which all combined to demonstrate that there was “clear intent to take unfair advantage of the claimant’s marks”.

Page 29 EWHC 3408(Ch)). National PharmacyAssociation [2018] P2U’s application (Pharmacy2uLtdv of theNPA, MasterClarkdismissed them individually. Findinginfavour that itcould(presumably) intimidate to release detailsofitsmembersso overleaf), attemptedtogettheNPA in everyway, asshownintheflyer (which hadnotbeenpracticallyperfect about thecompany’s pastconduct which containedfactualstatements Association (NPA) toitsmembers notice sentbytheNationalPharmacy Pharmacy2u Ltd(P2U),upsetabouta Page

30 UK COURT DIARY PRE-ACTION DISCLOSURE GODOWN DISCLOSURE PRE-ACTION BEHAVIOUR HELP DOESNOT A SPOONFULOFAGGRESSIVE referred tothelegislativeprovisions the notice.Also,P2U’s skeletonargument not disputethetruthofstatements in page). MasterClarknotedthat P2Udid statements aboutP2U(seefollowing NPA’s noticecontainedanumberoffactual available todownloadonitswebsite. 2017 onwards; and(ii)makingthenotice NPA membersfrom aboutlateNovember using itinanoticewhichwassenttoall pharmacies, hadinfringeditsmarkby(i) representing independentlyowned (NPA), alongestablishedtradeassociation that theNationalPharmacyAssociation the word PHARMACY2U,andalleged pharmaceutical retailer, ownsaEUTMfor P2U, theUK’s largestonline 2. 1. documents initspossessioncontaining: P2U soughtanorder thatNPA discloseall (Directive 2006/114/EC–the“CAD”). the ComparativeAdvertisingDirective EUTM andcontraventionofArticle4 of infringementunderArticle9(2)(c) the basisthatP2Uhadarguableclaims Master Clarkdecidedtoproceed on that theMarkwasaEUTM.Nonetheless, UKtrademarksdespitethefact governing notice from NPA’s website. third partieswhohaddownloadedthe the namesandcontactdetails ofall the notice;and third partiestowhomNPA hadsent the namesandcontactdetailsofall In Master Clark’s judgment, the disclosure the member was in fact a wrongdoer, in December 2017, it alleged that the A SPOONFUL OF AGGRESSIVE sought wasn’t necessary or desirable, for a against whom a claim could be statements in the notice were untrue, number of reasons, including the fact that: brought. Assuming that NPA had a and threatened claims for defamation good defence, there was a serious and malicious falsehood. Following NPA’s • it was not necessary for P2U to join BEHAVIOUR DOES NOT HELP risk that P2U would be able to “pick solicitors’ response, these were withdrawn. the members for its claim to be fairly off” the individual members, without In addition, Mr Strachan’s evidence is that resolved; ever having to submit to a judicial P2U’s solicitors wrote to him personally, PRE-ACTION DISCLOSURE GO DOWN • bringing a claim against each of determination of the merits of its threatening to make a complaint about him the 3,202 NPA members for each claim. to the General Pharmaceutical Council. (minor) act of infringement would Finally, Mr Strachan also gives evidence Master Clark went on to say that her be disproportionate, and not an of a GP practice which, having displayed concerns were reinforced to a degree appropriate use of the court’s the Notice received correspondence he by P2U’s conduct to date, particularly in resources, unless it was a remedy of describes as “very intimidating”, instructing relation to evidence given by Ian Strachan last resort (which it was not); and them to remove it and threatening to report who represents the NPA in North East them to their regulatory body, the General • P2U was not seeking to write to the England and has four pharmacies in the Medical Council”. Accordingly, she was not members simply to set the record North West: “When it first wrote to NPA willing to make an order for the pre-action straight, rather it would allege that disclosure sought by P2U.

Comment P2U had been accused of “blitzing” people with unsolicited marketing material inviting patients to get their repeat prescriptions from P2U as opposed to their local NHS community pharmacy. The NPA released the notice at issue in these proceedings because it was concerned that elderly and vulnerable people might confuse P2U’s correspondence for official NHS correspondence, resulting in the cancellation of longstanding prescription arrangements. The “very intimidating” correspondence sent by P2U to a GP practice which had displayed the NPA’s notice did not assist the claimants. In the writer’s view, P2U’s application was quite rightly dismissed, given that P2U’s previous aggressive conduct had been less than desirable.

Page 31 MAUCHER Out and about - external event attendance JENKINS Who Details When Reuben Jacob, BIO 2019, Philadelphia, PA, USA 3-6 June RECOGNISED Dr. Fiona Kellas, Dr. Edward Rainsford BY LEGAL Richard Parsons, ECTA 38th Annual Conference, 26-29 June Stephanie Foy Edinburgh, UK 500 UK AND Maucher Jenkins Team Unbound Conference, London, UK 17-18 July Maucher Jenkins Team China Patent Annual Conference (CPAC), 2-3 September CHAMBERS UK Beijing, China Maucher Jenkins Team AIPPI World Congress, London, UK 15-18 We are pleased to announce that September Legal 500 UK and Chambers UK have Joanne Ling, Mark Webster 33rd MARQUES Annual Conference, 17-20 recognised Maucher Jenkins and its Dublin, Ireland September professionals in their new guides. Maucher Jenkins Team AIPLA Annual Meeting, Arlington, USA 24-26 October The legal directories, whose rankings reflect analysis of patent, trade mark and law firm submissions from extensive Maucher Jenkins hosted events market research, stated ‘queries are Who Details When answered promptly, knowledgeably and insightfully, always with an eye on the Maucher Jenkins Team IP Showcase, Basel, Switzerland 28 May commercial elements that clients value Maucher Jenkins Team IP Happy Hour, Munich, Germany 25 June so highly”. Johannes Lange Consultation for inventors, IHK Südlicher 18 July Our top tier trade marks group were once Oberrhein Lahr, Germany again recognised for outstanding work Dr. Cornelius Mertzlufft-Paufler Consultation for inventors, IHK Südlicher 1 August recommending partners Katie Cameron Oberrhein Freiburg, Germany and Angela Fox, as well as Senior Associate Tanya Buckley. Dr. Manuel Kunst Consultation for inventors, IHK Südlicher 5 September Oberrhein Freiburg, Germany Our recognition also includes Maucher Jenkins Team ipDay, Genegenbach, Germany 19 September recommendation for patent attorneys and partners James Cross, Hugh Dunlop, Maucher Jenkins Team ipDay, Reichenau, Germany 20 September Reuben Jacob and Alvin Lam. James Maucher Jenkins Team IP Showcase, Basel, Switzerland 8 October Cross has also been recognised as a tier 1 lawyer in the category ‘Intellectual Maucher Jenkins Team IP Showcase, Tuttlingen, Germany 10 October Property: Patent Attorneys (UK-wide)’ Henrich Börjes-Pestalozza Consultation for inventors, IHK Südlicher 10 October in the Chambers UK Guide. Oberrhein Freiburg, Germany

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