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The journal of the Institute of Trade Mark Attorneys of Trade journal of the Institute The

Rev ITMA ITMA

ITMA Review May 2013 itma.org.uk ITMA may 2013

Welcome to the ITMA summer

hope you all enjoyed the ITMA Spring Conference, which has just concluded as I write ITMA contacts Ithese lines – but if you missed it this time, I hope to see you next year. Some might be General enquiries relieved that the list of Britain’s top Community Trade Mark (CTM) filers (which actually ITMA Office, 5th Floor, Outer Temple, 222-225 Strand, London WC2R 1BA I haven’t yet seen myself) comes in this issue and not just before the conference! Email: [email protected] With May being the INTA month, this is the best time to look at some of our specifically Tel: 020 7101 6090 UK and European issues. Alongside the CTM figures, we have an interview with the IPO’s Sean Dennehey. Taking on some technical issues are Michael Edenborough QC and his colleagues at Committee chairs General Purpose & Finance: Serle Court, tackling revocation dates, and Colin Hulme, who discusses UK and EU divergence Maggie Ramage, on prior use defences. We also explore how software giant Adobe is navigating the challenges [email protected] of the widening online universe with a perspective from inside the organisation. Programme: Katie Cameron, [email protected] See you at our Summer Reception on 9 July 20ı3, if not before, and happy bank holidays! Book: Mark Hiddleston, [email protected] ITMA Review: Tania Clark, Yours [email protected] Law & Practice: Imogen Wiseman, [email protected] Public Relations & Communications: James Setchell, [email protected] Catherine Wolfe Education & Training: Sanjay Kapur, [email protected] ITMA President Designs: Chris McLeod, [email protected] Trade Mark Administrators Course: Richard Goddard, In this issue [email protected] 033 Published on behalf of ITMA by: Think, The Pall Mall Deposit, 124-128 04 ITMA Business Member benefits, moves, Media Watch and more Barlby Road, London W10 6BL Tel: 020 8962 3020 08 Spring Conference Photo coverage and reflections from this annual gathering www.thinkpublishing.co.uk Editor: Caitlin Mackesy Davies, 12 High filers Mike Lynd considers the latest CTM filing statistics for UK entities [email protected] Advertising: Dalia Dawood, 15 IPReg George Cameron summarises the latest guidance issued for attorneys [email protected] Account director: Sam Gallagher 16 Calendar confusion Serle Court sets the record straight on revocation applications Publisher: Ian McAuliffe 18 Sean Dennehey Tania Clark conducts a Q&A with this IPO insider ITMA Review Review content is provided by 21 Scotch whisky A collective trade mark proved its value in China, reports Oliver Tidman members on a voluntary basis, and reader suggestions and contributions are welcome. If you would like to 22 Timing tensions Colin Hulme tackles the EU/UK divergence on prior use defences contribute an article to a future issue, please contact Tania Clark by email 24 Adobe Dan Poliak explains how the software giant is navigating a new universe at [email protected] and Caitlin Mackesy Davies at 27 MiniFrame Kristina Passmore has good news for those relying on authorised dealers [email protected]. Name creates a barrel full of bother, reports Charlotte Blakey The views expressed in the articles 28 Bad day for bard brew in the Review and at any ITMA talk or event are personal to the authors, 30 Yell silenced Eleven grounds not sufficient for success, says Rosalyn Newsome and do not necessarily represent the views of the Institute. ITMA makes 32 Shower showdown Christopher Freeth recounts the details of a design-led dispute no representations nor warranties of any kind about the accuracy of the 35 Famous face face-offThe own-name defence is tested again. By Katy Cullen information contained in the articles, talks or events. 36 History complaint Giles Parsons on a doomed attempt to limit use of a descriptive term © ITMA 2013 38 Budvar Could it be last orders for long-running beer battle? By Katie Goulding 40 A new wrinkle? Dictionary plays a definitive part for Steam Glide, says Philippa Caddick 41 Uphill struggle K2 failed in its fight against a figurative element, reports Mark Caddle 42 Events Forthcoming diary dates and events of interest for ITMA Members itma.org.uk May 2013 businessITMA Chief Executive’s bulletin Having seen off a busy first quarter of 20ı3, here are some snippets of news and activities that may be of interest to ITMA members

Protection of title World Trademark Joint Examination ITMA has been pressing for greater Review Board results clarification in legislation so that ITMA is pleased to With the recent publication 044 the term Trade Mark Attorney is announce that, together of the 20ı2 exam results – a protected title. There is already with the IP Media the last set of trade mark inherent protection through the Group, which publishes examinations held under Solicitors Act ı974, the Trade Marks the World Trademark the old qualification system Act ı994 and the Legal Services Act Review (“WTR”), it – there may be some questions 2007, but the wording could be clearer has put together an from candidates about what and concentrated in a single clause opportunity for ITMA members, their next options might be. To assist, in one single Act. ITMA made whereby there will be a reduced the Education & Training Committee submissions to the IPO in light rate for subscription to the WTR has put together information posted of the forthcoming “Growth Bill” magazine. ITMA members will on the ITMA website. If you have any (working title), but was advised be entitled to 25 per cent off the additional questions, please feel free to that there will not be enough space subscription price of £795. Please email the Committee via Gillian Rogers within the Bill to enable appropriate go to worldtrademarkreview.com/ ([email protected]). amendment, so progress has been halted account/subscribe for further details for the time being. ITMA will continue and enter the code “ITMA” to Trade Mark Handbook to consider its options. ensure you get the discount. ITMA is pleased to announce that, Alternatively, sign up for a free together with Thomson Reuters’ trial at worldtrademarkreview.com. Sweet & Maxwell, it has come to an agreement to publish the Trade Mark Marshalling scheme Handbook online through the Westlaw Several ITMA members have UK (westlaw.co.uk) platform. The full completed their shadowing of title will be the ITMA & CIPA Trade Colin Birss QC sitting as Patents Mark Handbook. The ITMA & CIPA County Court judge. In a future Community Trade Mark Handbook issue of ITMA Review we hope to is also now available online. Loose- include a short report sharing the leaf versions will remain on sale experiences of those who participated and these can be found at in the scheme. ITMA will be looking sweetandmaxwell.co.uk. at the possibility of extending the scheme in future so that more of This is an edited version of the bulletin its members can benefit. sent to members on 28 February 2013. ITMA BUSINESS

Privilege is no problem Why a recent case regarding the right to legal advice privilege Member for Trade Mark Attorney clients is no cause for concern benefits IP-sector attorneys are protected by LAP. provided by attorneys under unlikely to place case law This is despite the legal common law. Reassuringly dealing with matters related advice having been for those in the profession, to income tax very high on obtained from a firm of the decision then proceeds their reading list. However, chartered accountants, and to reaffirm the statutory the recent decision of the not a member of the legal right to LAP for clients Supreme Court in Prudential profession. Prudential argued of attorneys as a result of v Special Commissioner that LAP is a common- legislation by Parliament of Income Tax has raised law principle that should under the Trade Mark Act particular interest in IP be applied, or if necessary ı994 and the Copyright, circles, due to its focus on the extended, to legal advice Designs and Patent Act ı988. Charles right to legal advice privilege provided by qualified This is indeed stated as the Cameron – (“LAP”) for clients of Patent accountants, as this would strongest argument that, and Trade Mark Attorneys. accord with the principles if LAP is to be extended mortgage The case arose as a result that underlie and justify further beyond barristers of Prudential’s refusal to the right. or solicitors, as previously advice and comply with a statutory The Supreme Court understood under common assistance notice from an inspector of rejected Prudential’s law, it should be left to taxes to produce tax-related arguments with reference to Parliament to legislate. The Government’s Funding documents on the basis the Court’s historic refusal to Rachel Wilkinson-Duffy, For Lending Scheme launched that the documents were extend LAP to legal advice Baker & McKenzie last summer has helped see mortgage rates fall to an all-time low. For expert advice and assistance, Global gathering Charles Cameron & Associates will be delighted to help 055 ITMA hosted a meeting between ITMA, profession. Catherine Wolfe and you find the most suitable CIPA, IPReg and the IP Department of Maggie Ramage of ITMA were solution to finance any new the Hong Kong Special Administrative among those who welcomed visitors purchase whether in the Region Government on 1 February, Simpson Li, Chief IP Examiner, UK or Overseas. They are at which the UK contingent shared and Thomas Tsang, Assistant completely independent their experience of regulating the Director of IP (Registration). and will work to find the best mortgage for you, as well as the best terms they can An provide. They can also explore international whether you may be able to meeting of save money by remortgaging top IP minds on to a more competitive rate.*

Call 020 3145 3300 ensuring you quote IPB, or for more information, visit IP Benefits Plus at itma.org.uk

YOUR HOME MAY BE RE-POSSESSED IF YOU DO NOT KEEP UP REPAYMENTS Leading legal practices combine ON YOUR MORTGAGE. International legal practice will be a top-ı0 global legal an office in Riyadh, and *Terms and conditions apply. See website Norton Rose announced practice by gross revenue additional strength in for further details. As a concession to that it will combine with and by number of lawyers. London, Dubai, Beijing, members, they are willing to waive their normal fee and accept commission only leading US law firm The enlarged practice Hong Kong and Munich. from the lender, although a fee option Fulbright & Jaworski LLP will have 55 offices The IP team will grow is also available (typically this could be on 3 June 20ı3 to form internationally, including with depth across the US 0.5% of the amount borrowed). IP Benefits Norton Rose Fulbright. ıı offices and close to 800 practice, where five IP Plus is managed on behalf of ITMA by Parliament Hill Limited of 3rd Floor, Norton Rose Fulbright lawyers in the US. Norton teams will join the existing 127 Cheapside, London, EC2V 6BT. Neither will have 3,800 lawyers and Rose Fulbright will also have Norton Rose teams. are part of the same group as a provider. itma.org.uk May 2013

Media Watch Twists and turns Recent headlines have given Ken Storey pause to reflect on past glories

Two stories featuring opprobrium meted out by food in the last edition of the luvvies worldwide on news ITMA Review have moved of the application – or maybe on apace since its issue. The their views forced his hand. conflict between BSkyB and Who knows? Livescribe over the naming More famous people in of a new pen as the Sky the news over the past few Wi-Fi Smartpen has ended weeks include Lindsay Lohan with Livescribe rebranding and the Kardashian sisters. Well spotted? the pen as the Livescribe Lohan has a range of clothing Gordon Ramsay gives up a marketed under the trade popular restaurant mark mark 6126, which is apparently a reference to the birth date of Marilyn Monroe – 1 June KHROMA for a new range of the name, but I doubt if that 1926. A clothing manufacturer, make-up, but they have now will worry the sisters, as the D.N.A.M., which had previously received a cease-and-desist publicity generated has to worked with Lohan, is being letter from Tillett’s lawyers. be worth its weight in gold! Wi-Fi Smartpen. Because sued for $1.1 million for using As often seems to happen From make-up, we move of the dispute, Livescribe the 6126 trade mark and, in the US, the Kardashian on to accessories; or at least missed out on the lucrative whatever the outcome of sisters have filed a counter- to one particular accessory – 066 Christmas market and had the lawsuit, at least you lawsuit claiming that the the engagement ring. News to delay the launch of the now have a useful pearl name Kroma is descriptive, came over the Business Wire Smartpen until 1 March. This being the Greek word for website on Valentine’s Day that is such a shame, as it could colour. The Mail reports that Tiffany & Co is taking action so easily have been avoided, the Kardashians were in talks in the US District Court for since BSkyB is renowned for with Tillett’s representatives the Southern District of New being vigilant in protecting back in 2010 over possible York against Costco Wholesale the SKY brand. product placement of Corporation for trade mark The second story that KROMA products, though infringement. Apparently has progressed has left me no deal was completed. The Costco has for many years a little perplexed. Last time (largely dismissive) comments been selling different styles I reported the wrath facing on the Mail website show of rings identified as “Tiffany”. Gordon Ramsay when he clearly what the general public It was only in November last applied to register THE think of the Kardashians using year that a customer alerted SPOTTED PIG as a UK trade mark, when the culinary Fashion fuss: Lindsay Sister act: the Kardashian Lohan’s clothing line world is well aware of sisters launch countersuit is a source of dispute the New York gastropub in colourful dispute operating under that name. of wisdom to unveil at a future It is now reported that pub quiz! Ramsay has handed over The Kardashian sisters, his newly acquired trade who I am told rose to fame mark to the owners of the via a reality TV programme, New York establishment, are being sued by a former which raises the question make-up artist, Lee Tillett, who as to why he applied to registered the name KROMA register it in the first place. for a cosmetics range founded If it was intended as an act in 2004. According to the Mail of goodwill all along, it failed on Sunday, one of the sisters, spectacularly, judging by the Kim, came up with the name ITMA BUSINESS

Tiffany & Co to the sale of attracted much comment Member “Tiffany” engagement rings, in national and specialist whereupon the company took motoring press alike. It moves action. Counsel for Tiffany & Co was widely reported that Robert Cumming (above) said: “We will get to the bottom the Bridgestone Corporation has joined Appleyard Lees’ of what Costco was up to has won a lawsuit against Leeds office as a Trade and right a terrible wrong.” Chinese tyre makers Mark Attorney. Robert That could prove very costly Guangzhou Bolex Tyre Limited, joins the firm from Walker for Costco. which had manufactured Morris, where he was If you are of a certain age, tyres under the brand name an Associate IP Solicitor. you may remember that GEMSTONE. The Bridgestone In a twist: Chubby Checker Contact Robert at Valentine’s Day and other Corporation objected on the feels his name is tarnished robert.cumming@ celebrations were sometimes grounds of confusion with appleyardlees.com marked with a glass of the BRIDGESTONE brand. focuses on a new app that Babycham. To us mere mortals, Bridgestone won the case is supposed to let ladies Catherine Barbour has and particularly as callow and production of GEMSTONE know the full extent of what taken up a position as youths, it was the poor man’s tyres has ceased, with damages to expect from a new man Trade Mark Attorney at 077 champagne! I must admit I being paid. I was a little based on the size of his feet. Bristows, in the Brands thought it had long disappeared surprised at the volume of This is not a new fallacy Group. Contact Catherine from supermarket shelves, so press coverage of this case, (note the spelling!), but it at catherine.barbour@ I was intrigued to see it feature but maybe the motoring world has incurred the wrath of bristows.com or on in another Mail on Sunday story. is far more popular than I the old Twister, whose name +44 (0)20 7400 8000. The makers of Babycham are thought. Anyone out there is used for the app. He has taking action against a British with stories of interest to filed a multimillion-dollar homeware company, Cath petrol-heads take note – there lawsuit in the US against HGF and Grant Kidston, claiming that the use is mileage in those tyres! Hewlett-Packard, through of a baby deer with a ribbon To end this column, and whose software the app is Spencer merge on its neck infringes the again with reference to my available. The suit says that Harrison Goddard Foote drinks company’s rights. age, I picked up on another the app has done “irreparable (“HGF”) Patent and Trade The High Court writ claims story from my youth. Chubby harm” by linking Checker to Mark Attorneys has acquired that the appearance of the Checker is back in the news! “sexual connotation”, and Grant Spencer and will be aforementioned deer on Cath The headline in the Daily Mail will blur and tarnish his merging the two firms under Kidston products aimed at says it all: “Risqué app gets name. However, if he gets the lead HGF brand. David under-18s associates Babycham Chubby in a Twist”. The story another lease of life from Potter, HGF’s Head of Trade “with a blatant disregard for it, I think he’s done Marks, added: “We have industry codes of practice to pretty well. further strengthened HGF’s protect children”. It is, of position as one of the top course, for the Courts to IP firms in the country determine if there is any across all business sectors. The confusion, but I did like the HGF Trade Mark Group is description of the logos as both already extremely successful being of “hooved ruminants nationally and internationally. unaccustomed to wearing We provide the highest-level ribbons”. Sweet! commercial advice, and with One case of confusion that Ken Storey Claire Hutchinson and her has already been established [email protected] team, we can build further on this existing platform.” itma.org.uk May 2013 ITMA Spring Conference 2013: a colourful and energised event Eran Soroker of Soroker-Agmon offers his summary of this year’s happenings

ITMA 20ı3 went well. It seems that the perspective on counterfeiting, showed organisers did a great job in energising all kinds of packages and gave us a good the meeting and giving it a fresh look lesson in spelling (no double “l” in – starting with the striking pink lanyard Castrol). Next, Sara Ashby of Redd to hold our conference credentials. gave a high-powered, two-part Wednesday’s drinks event led us off presentation on grey-market goods. to an underground space – a brilliant After lunch, and a well-deserved location (see photos, top of page ıı). The break, Richard Burton (D Young & Co) place was so crowded that mingling was educated us with regard to genuine use. unavoidable, although it was a bit loud Surprisingly, it is still a case-by-case issue. as delegates expressed their views. Trade Good for us. the draw for an iPad mini. The holders mark professionals tend to be articulate! The Specsavers case, freshly considered of the first two numbers called were not Thursday was a long and full day, led by the Court of Justice of the European present, so the third one took it. Lucky 08 by a keynote speech from Judge Colin Union, was the focal point of Katie him! The “dessert” took place on the Birss QC. Of the morning sessions, Cameron’s (from Jenkins) lucid dance floor. Latin dancers were given there were several notable highlights. presentation. Overlapping ovals were a tough mission to make us move, and Steve Truick from the Medicines and compared and composited. Guy Tritton some of us did! I had a great time. Healthcare Products Regulatory Agency from Hogarth Chambers closed the day Friday morning sessions started (MHRA) gave a brilliant presentation with a barrister’s presentation and did with the UK IPO update from Allan regarding the internet. He showed a well in providing an insight as to the James, and following the coffee break few short video clips and also shared distinction between dilution, tarnishment we heard a tasteful presentation by his anticipation of adding a new dog and unfair advantage. Amanda Michaels from Hogarth to his family. His ultimate message was The Gala Dinner had three highlights. Chambers about bad faith. Lunch nonetheless serious: stop the infringers The “entrée” was the President’s speech. went well, more specifically the desserts. by cutting their money. Michael Keogh, Catherine Wolfe demonstrated her Only the brave stayed after lunch, Counsel, Trade Marks & Copyright, brilliant rhetorical skills and delivered a but we were quite a few. BP plc, then gave us a brand-owner’s sharp and short address. The “main” was All in all, well done ITMA!

Albannach, Friday speaker Guy Tritton Trafalgar Square, Alexia Willetts (Hogarth offered a warm (Brandilicious) Chambers) welcome SPRING CONFERENCE

ITMA President Catherine Wolfe and Steve Truick (MHRA)

Katie John Draper Cameron (Kodak Ltd) (Jenkins)

View from the podium My highlights learned the hard way, but it’s good to have Richard Burton, D Young & Co John Draper, Kodak Ltd it confirmed by an expert practitioner. I spoke at this year’s conference Working on my own, the conference Sara Ashby – A terrific global view of how on the subject of “Genuine is a welcome opportunity for me to conduct actions against parallel imports, use of a mark – and to reconnect with my peers, both those brought in from outside the how to prove it” – especially those in industry. European Economic Area and those the first time I have The programme is usually already circulating in the common market. been a speaker at Richard topical, too, and gives me Follow her advice and you won’t go far an ITMA event. Burton reassurance that I am paying wrong. And, just for once, the law is 100 I gained a great (D Young attention to what matters and per cent on the side of the brand owner. deal from the & Co) keeping up to date. For me, Katie Cameron – A thought-provoking experience and the highlights of 2013 were: review of the issue of whether use of would encourage Steve Truick – What an a composite mark can enure to the others to speak enthusiast! What an expert! He benefit of one of its components. It at future events (and gave us good advice on how to delve looks like Specsavers’ use of its famous 09 be, of course, delighted to into the people behind the domain names word and device mark may well save return myself). The audience was very and websites. The lesson: take nothing the separate device-only mark. But appreciative and the initial feedback at face value, and do your homework. It’s is this right? In the old days, we were following the session was positive, OK to spend an hour looking at a website advised to register all variants of the leading to some interesting discussions and the available WHOIS information, and core mark, in case you needed to rely on the subject. It was a great networking following the links (remember this as you on any of them as the core mark evolved opportunity, and I spoke to many bill your clients). over the years. You could not expect to delegates who had, in some cases, Michael Keogh – A sleeves-rolled-up, rely on the mere use of an evolution to travelled from afar. The quality of on-the-ground look at the nitty-gritty of validate the original registration. On the the other speakers’ sessions and the anti-counterfeiting work. Unfortunately, other hand, this raised questions of unused conference as a whole undoubtedly gave there’s no silver bullet – it’s just constant marks, defensive registrations and dead me a new insight into ITMA. I, for one, hard work, vigilance and proactive case wood on the register. Is this what the hope to be back again in 2014. management. All this I have already court is addressing?

Colin Birss QC Allan James (IPO) Amanda Michaels (Hogarth Chambers) itma.org.uk May 2013

Overheard On the social side Thursday’s evening entertainment complimentary wine and a thoroughly got started with a drinks reception delicious three-course meal. at 8 Northumberland Avenue, which Perhaps with a nod to the question gave everyone the opportunity to of “What is real?”, a magician visited mingle with new and familiar faces, each table demonstrating an impressive share news and discuss the topics raised range of card tricks and brandishing in the conference sessions so far. The a disappearing handkerchief that turned party continued in the grand Victorian into fire. We were all suitably wowed! “It’s my favourite European Ballroom, which had been majestically At the end of the meal, we were joined conference. For an American, it’s a transformed from a businesslike by a troupe of salsa dancers who actively good entry point to understanding conference area into a sophisticated encouraged audience participation – European trade mark issues.” venue for the fantastic Gala Dinner – some delegates were more keen than Christopher J Schulte, now lit with overhead chandeliers others to join in! Merchant & Gould, US and striking flourishes of pink lighting, The complimentary walking tour on “This is the first ITMA Spring which gave the event a warm and Thursday offered an ideal opportunity Conference that I have attended, inviting ambience. to take in some of the key London and I have thoroughly enjoyed it. Many delegates expressed their attractions (for those who braved the I shall make sure that I attend appreciation of the elegant table dressings bracing cold), including an alleged every year from now on, and it and stylish centrepieces with which sighting of David Cameron emerging has inspired me to take a more each table had been adorned and so from ı0 Downing Street! active role in ITMA events.” carefully set. And then we enjoyed the Carrie Bradley, Loven Carrie Bradley, Loven

“Today was fantastic – Spencer Vold-Burgess (Eccora), punchy, informative, Hilde Vold-Burgess (Acapo, Norway), and it kept us engaged.” Lynn Harris (Dummett Copp) Chinyere Okorocha, Jackson, Etti & Edu, Nigeria

10

Nicola Amsel (Amsel & Co), Maggie Ramage (Ramage Associates) “I attend the Conference to learn something new, meet colleagues Uğur Aktekin (Mehmet Gün, Turkey), and to be visible.” magician, Eran Soroker (Israel), Yvonne Onomor, Baker & McKenzie Désirée Fields (McDermott Will & Emery) “The topics are very interesting, particularly online infringement. Today’s speaker has opened my mind on this subject and helped me get ahead of the game.” Gabriela Montserrat Puente Yugovich, Zacarías & Fernández, Paraguay

“As a first-time attendee of the Spring Conference, it was a great opportunity to hear some really interesting talks, meet new people and catch up with familiar faces.” Patricia Collis, Bristows SPRING CONFERENCE

Sean Corbett (Formula One Management), Cliff Kennedy (Maclachlan & Donaldson, Dublin), Gemma Turner (Formula One Management), Christopher Shea (Civil Service)

José Raúl Simões (SGCR, Monika Dąbrowska and Dr Richard Brunner Portugal), Subhra Datta (Dennemeyer, Luxembourg), Cliff Kennedy (S.S Datta Associates, India) (Maclachlan & Donaldson, Dublin)

Eloise Preston, Victoria Holvik, Fiona Bell, Claire Hughes, Ian Wood, Catherine Richardson (all Charles Russell)

Jill Matchett (Barker Brettell), Anthony Tong (Robin Bridge & John Liu, Hong Kong), Claudia Amorim Sarjo Saine (Gambia), (Raul César Ferreira, Portugal) Jane Attreed (ITMA)

Amanda Michaels (5 New Square), Richard Roberts (Browne Jacobson), Guy Tritton (Hogarth Chambers), Nicola Amsel (Amsel & Co)

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Salsa dancers

iPad draw Is this David Cameron winner Matthew leaving Downing Street? Smith (Abel & Imray) with Stephen Stolfi (Wolters Kluwer Corsearch)

The Walking Tour learns about Boris Bikes itma.org.uk May 2013 High filers Who’s been most active in the Community filings space? Mike Lynd considered the latest statistics from Corsearch to compile this overview

A total of ı6,764 Community Trade Mark (CTM) applications UK FIRMS FILING > 30 CTMs were filed by British organisations in 20ı2, according to an 2011 2012 % analysis of the latest data available from Corsearch, based on Firm/Company Filings Filings change entities filing more than 30 applications. This represents a modest rise of 4.3 per cent on the number of CTM filings MARKS & CLERK LLP 919 1,047 13.9% reported in 20ıı by the same organisations, and contrasts Novagraaf 984 950 -3.5% favourably with the overall increase in CTM filings of just TAYLOR WESSING 329 463 40.7% ı per cent over the same period. Of the British CTM filers, HOGAN LOVELLS 424 461 8.7% Marks & Clerk LLP remains comfortably at the head of the list, BOULT WADE TENNANT 403 422 4.7% with ı,047 applications (although this figure does include 56 applications filed by the firm’s Luxembourg office). Novagraaf D YOUNG & CO LLP 340 391 15% is in second place with 950 CTM applications in 20ı2, and the HARRISON GODDARD FOOTE 374 376 0.5% law firms of Taylor Wessing and Hogan Lovells are in third FRKELLY 363 363 0% and fourth places with 463 and 46ı applications, respectively. FORRESTERS 430 357 -17% Firm profiles KILBURN & STRODE LLP 363 337 -7.2% Firms of Patent and/or Trade Mark Attorneys accounted WITHERS & ROGERS LLP 272 322 18.4% for just over 70 per cent of those CTM filings, with firms FIELD FISHER WATERHOUSE LLP 328 317 -3.4% of solicitors accounting for a further 27 per cent. Four British 326 313 -4% corporations were responsible for about 2 per cent of the IPULSE (IP) LTD JEFFREY PARKER AND 12 total, with the drinks company Chivas filing the largest 333 293 -12% number at 92. Other notable filers were British American COMPANY Tobacco with 8ı, Diageo filing 79, and Reckitt Benckiser MURGITROYD & COMPANY 343 268 -21.9% filing 53 through the person of Claire Wood. MEWBURN ELLIS LLP 275 261 -5.1% The largest percentage increase in filings from 20ıı to 20ı2 BAKER & McKENZIE 270 251 -7% was achieved by Trade Mark Direct, with no less than a ı,ı62 per cent increase, moving from eight filings in 20ıı to ı0ı in 20ı2. RGC JENKINS & CO 253 239 -5.5% (It must be noted that these figures reflect only trade marks filed KELTIE LLP 220 236 7.3% in which Trade Mark Direct is listed as Address for Service.) BARKER BRETTELL LLP 204 235 15.2% The Chinese-originating C & H Int’l Consultant Limited also DEHNS 228 234 2.6% achieved a spectacular increase over the same period, of 57ı per cent, although again the actual numbers involved are fairly GILL JENNINGS & EVERY LLP 293 234 -20.1% modest, representing a move from ı4 to 94 applications. PAGE WHITE AND FARRER 205 229 11.7% Seeing a downturn based on our sample for 20ı2 are URQUHART-DYKES & LORD LLP 311 227 -27% solicitor firms, with Walker Morris, Freshfields Bruckhaus BIRD & BIRD LLP 124 196 58.1% Deringer, Dechert LLP, SJ Berwin and Davenport Lyons JA KEMP 185 191 3.2% trailing the field. SIMMONS & SIMMONS LLP 166 188 13.3% European scene LANE IP LTD 88 185 110.2% Setting these statistics in a wider context shows that filings by CLEVELAND 141 179 27% British practitioners made up around 35 per cent of filings by WILSON GUNN 177 178 0.6% European firms – again considering those filing 30 CTMs or AA THORNTON & CO 207 173 -16.4% more – with total CTM filings by that group reaching 42,46ı in 20ı2. This puts British filers in the lead, while German HASELTINE LAKE LLP 233 173 -25.8% organisations filed about ı6 per cent of the applications, the LADAS & PARRY LLP 155 170 9.7% Spanish filed ı2 per cent, the French filed 8 per cent, the Dutch POTTER CLARKSON LLP 156 169 8.3% filed 7 per cent, the Italians filed 7 per cent and the Swedes 3.5 OLSWANG LLP 167 166 -0.6% per cent. See page ı4 for details of the top ten European filers. BECK GREENER 147 161 9.5% On page 14 we also offer a snapshot of the top UK firms filing UK trade marks. WP THOMPSON 215 157 -27% EDWARDS WILDMAN PALMER 200 156 -22% with thanks to Alex Rushent of Corsearch for his assistance. UK LLP CTM statistics

Note: where separate entries were present for entities clearly connected, if not identical, to each other, eg separate offices of the same firm, filing figures have been combined to create a single entry. Statistics supplied represent trade marks filed, where the company stated is listed as Address for Service.

2011 2012 % 2011 2012 % Firm/Company Filings Filings change Firm/Company Filings Filings change LEWIS SILKIN LLP 113 151 33.6% BRIFFA 61 70 14.8% APPLEYARD LEES 151 149 -1.3% EVERSHEDS LLP 77 70 -9.1% GROOM WILKES & WRIGHT LLP 130 147 13.1% FISH & RICHARDSON PC 60 67 11.7% WILDBORE & GIBBONS LLP 97 141 45.4% SJ BERWIN LLP 115 67 -41.7% STEVENS HEWLETT & PERKINS 117 138 17.9% AVIDITY IP LTD 63 66 4.8% ROUSE & CO 135 137 1.5% BRISTOWS 85 65 -23.5% INTERNATIONAL LLP SCOTT & YORK INTELLECTUAL 40 64 60% REDDIE & GROSE LLP 161 134 -16.8% PROPERTY LAW MATHYS & SQUIRE LLP 161 128 -20.5% HARRISON IP LTD 65 63 -3.1% DLA PIPER UK LLP 85 126 48.2% HANNA MOORE & CURLEY 28 62 121.4% ALEXANDER RAMAGE 86 116 34.9% NIXON PEABODY 34 61 79.4% ASSOCIATES LLP INTERNATIONAL LLP SILVERMAN SHERLIKER LLP 98 113 15.3% LONDON VOSON SOLICITORS INTELLECTUAL PROPERTY 60 61 1.7% VENNER SHIPLEY LLP 96 109 13.5% SERVICE LTD BRYAN CAVE LLP 30 60 100% SAUNDERS & DOLLEYMORE LLP 101 107 5.9% 13 SIPARA LTD 52 59 13.5% WYNNE-JONES, LAINÉ 93 102 9.7% & JAMES LLP PITMANS SK SPORT AND 18 58 222.2% ALBRIGHT PATENTS LLP 112 102 -8.9% ENTERTAINMENT LLP TRADE MARK DIRECT 8 101 1,162.5% NABARRO LLP 70 58 -17.1% SQUIRE SANDERS (UK) LLP 67 99 47.8% TRADEMARKROOM LTD 16 57 256.3% BERWIN LEIGHTON 76 97 27.6% BERRY DAVIES LLP 46 57 23.9% PAISNER LLP ARNOLD & PORTER UK LLP 57 56 -1.8% ABEL & IMRAY 90 97 7.8% MAGUIRE BOSS 64 56 -12.5% RAY YOUNG (C & H INT’L 14 94 571.4% CONSULTANT LTD) WALKER MORRIS 82 55 -32.9% CHIVAS HOLDING (IP) LTD 76 92 21.1% UK SNDRE INTERNATIONAL 27 54 100% CARPMAELS & RANSFORD 119 92 -22.7% CHAPMAN MOLONY 29 54 86.2% OAKLEIGH IP SERVICES LTD 40 88 120% REVOMARK 55 53 -3.6% ELKINGTON AND FIFE LLP 79 87 10.1% McDERMOTT WILL 58 53 -8.6% & EMERY UK LLP PHILLIPS & LEIGH 74 82 10.8% CLAIRE ETAIN WOOD 68 53 -22.1% BATMARK LTD 42 81 92.9% (RECKITT BENCKISER) SWINDELL & PEARSON LTD 61 81 32.8% BOND PEARCE LLP 59 52 -11.9% SHERIDANS 39 80 105.1% HALLMARK IP LTD 60 52 -13.3% dIAGEO PLC 50 79 58% DUMMETT COPP LLP 59 50 -15.3% SANDERSON & CO 69 79 14.5% CRUICKSHANK INTELLECTUAL 62 48 -22.6% BAILEY WALSH & CO LLP 99 79 -20.2% PROPERTY ATTORNEYS GRANT SPENCER LLP 113 79 -30.1% FRESHFIELDS BRUCKHAUS 74 48 -35.1% JOSHI & WELCH LTD 72 76 5.6% DERINGER LLP BROOKES BATCHELLOR LLP 78 75 -3.8% DECHERT LLP 56 36 -35.7% WILLIAMS POWELL 75 72 -4% DAVENPORT LYONS 58 31 -46.6% KEMPNER & PARTNERS 57 70 22.8% 16,073 16,764 4.3% itma.org.uk May 2013

TOP TEN EUROPEAN FIRMS FILING > 30 CTMs 2011 2012 % Firm Filings Filings Change MARKS & CLERK LLP 919 1,047 13.9% NOVAGRAAF 984 950 -3.5% GEVERS 945 668 -29.3% ZACCO 654 634 -3.1% BOEHMERT & BOEHMERT 532 596 12% CLARKE, MODET & Co, SL 541 549 1.5% PONS PATENTES Y MARCAS INTERNACIONAL, SL 565 515 -8.8% BUGNION SPA 512 486 -5.1% MODIANO/MODIANO JOSIF PISANTY & STAUB LTD 496 477 -3.8% TAYLOR WESSING 329 463 40.7%

uk focus: TOP 50 UK TM FILERS (> 30) Note: where separate entries were present for entities clearly connected, if not identical, to each other, eg separate offices of British trade mark applications by entities that filed the same firm, filing figures have been combined to create a single 30 or more UK applications in 2012. entry. Statistics supplied represent trade marks filed, where the company stated is listed as Address for Service.

2011 2012 % 2011 2012 % Firm/Company Filings Filings change Firm/Company Filings Filings change Marks & Clerk LLP 713 735 3.1% Cleveland 191 139 -27.2% The Trademark Helpline/ Stevens, Hewlett & Perkins 147 139 -5.4% The Trademark 39 441 1030.8% BATMark Limited 82 133 62.2% 14 Association ICI Group Intellectual 59 133 125.4% Murgitroyd & Company 342 399 16.7% Property Urquhart-Dykes & Lord LLP 412 356 -13.6% GlaxoSmithKline Services 142 131 -7.7% Harrison Goddard Foote 307 311 1.3% Unlimited Wilson Gunn 312 311 -0.3% Saunders & Dolleymore LLP 90 128 42.2% Withers & Rogers LLP 284 302 6.3% Baker & McKenzie LLP 93 126 35.5% Appleyard Lees 261 285 9.2% Hallmark IP Limited 152 126 -17.1% Barker Brettell LLP 291 282 -3.1% Gill Jennings & Every LLP 135 124 -8.1% Groom Wilkes & Wright LLP 268 255 -4.9% Olswang LLP 112 123 9.8% 139 122 -12.2% Dehns 188 247 31.4% Bailey Walsh & Co LLP Chancery Trade Marks 208 122 -41.3% Boult Wade Tennant 285 221 -22.5% Beck Greener 101 121 19.8% IPulse (IP) Ltd 284 213 -25.0% Wynne-Jones, Lainé 133 120 -9.8% RevoMark 241 212 -12.0% & James LLP KELTIE LLP 205 203 -1.0% AA THORNTON & CO 105 117 11.4% D YOUNG & CO LLP 169 192 13.6% REDDIE & GROSE LLP 116 116 0.0% SWINDELL & PEARSON LTD 224 181 -19.2% ALEXANDER RAMAGE ASSOC LLP 123 115 -6.5% SILVERMAN SHERLIKER LLP 235 174 -26.0% JA KEMP 88 115 30.7% NOVAGRAAF UK 154 163 5.8% BIRD & BIRD LLP 13 111 753.8% WILDBORE & GIBBONS 183 156 -14.8% WALKER MORRIS (A PARTNERSHIP) 91 107 17.6% HARRISON IP LIMITED 131 154 17.6% WP THOMPSON 224 107 -52.2% Kilburn & Strode LLP 155 152 -1.9% RGC Jenkins & Co 61 104 70.5% FORRESTERS 164 150 -8.5% TAYLOR WESSING LLP 118 100 -15.3% MATHYS & SQUIRE LLP 170 150 -11.8% THE TRADE MARKS BUREAU 70 100 42.9% Albright Patents LLP 158 148 -6.3% Haseltine Lake LLP 103 98 -4.9% ipreg update Client property issue prompts practice note George Cameron provides the background to IPReg’s recent professional guidance for IP attorneys

PReg and the IPReg Joint IPReg considers that Regulated • act unilaterally without notifying IDisciplinary Panel have released Persons are at significantly increased the client to deal irreversibly in his a practice note and guidance on risk of breaching Rule 5 and/or 7 if client’s property or deal in a manner rights asserted over client property they seek to retain a client’s property inconsistent with his client’s rights (“the Guidance”) following the Joint to secure payment of fees and and entitlements in that property, Disciplinary Panel’s decision in the disbursements if there is no contractual in order to secure payment of fees matter of IPReg v Rickman. The right to claim a lien in the terms of and disbursements claimed by Guidance clarifies the rights that Patent business. The Guidance therefore urges the Regulated Person. Attorneys and Trade Mark Attorneys all Regulated Persons intending to (together, “Regulated Persons”) are able benefit from the right to claim a lien to: Review recommended to exercise over the IP of their clients • include in their terms of business clear IPReg has recognised the problem or former clients to secure payment contractual terms to that effect; and of prompt and full payment of fees of their fees and disbursements. • ensure that the terms of business are and the considerable financial burden IPReg noted that this matter has read and understood, and signed in of disbursements for many practices. highlighted uncertainty among acknowledgement of that fact. However, primacy must be given Regulated Persons about permissible In rare instances, Regulated Persons to the regulatory objectives set out contractual terms to secure payment may seek to acquire rights over their in section ı of the Legal Services of fees and disbursements, and issued client’s property to secure payment Act 2007. Regulated Persons should 15 a Guidance note, summarised below. of fees and disbursements. However, carefully review their terms of business IPReg considers that in almost all and their business practices to ensure Current code cases a contractual lien will be that they are compliant with the The IPReg Rules of Conduct, which sufficient to secure payment and Guidance, as failure to comply, currently apply to the conduct of a Regulated Person can expect to without good cause, is likely to Regulated Persons, set out in Rule ı3 that: be scrutinised very closely if a weigh against such Regulated “Regulated persons may exercise a lien complaint is made. Persons if any complaint is made. over client papers and other materials belonging to a client only when and Prima facie breaches A full Statement of Facts and Undertakings to the extent that the lien is available To address the uncertainty about on this subject can be found at ipreg.org.uk in law or the lien is an express term of permissible contractual terms, the business to which the client has agreed.” Guidance also identifies several specific All Regulated Persons must satisfy contractual arrangements that would, in themselves that any claimed lien is most cases, be treated as giving rise to permissible by law, but the Guidance prima facie breaches of Rules 5 and 7: About the nevertheless cautions that particular 1) terms of business purporting to grant author care should be taken when exercising an enduring power of attorney allowing this right as in most cases it will engage: the Regulated Person to execute on • Rule 5 (Integrity) – “Regulated persons behalf of the client the transfer of title shall at all times act with integrity in the client’s property; putting their clients’ interest foremost 2) terms of business purporting to create subject to the law and any overriding a “deemed assignment” of title in duty to any Court or Tribunal”; and the client’s property to the Regulated • Rule 7 (Conflicts) – “A regulated Person, pending full payment of person must not act where his interests fees and disbursements; and conflict with those of a client or of a 3) terms of business containing any George Cameron former client, or where he knows or has claimed contractual right or entitlement is a Senior Associate reasonable grounds for suspecting that allowing the Regulated Person to: at Norton Rose LLP the interests of any partner or regulated • act unilaterally without notifying george.cameron@ person or staff of his firm, conflict with the client to transfer title in the nortonrose.com those or a former client.” client’s property; or itma.org.uk May 2013

Calendar confusion Our authors from Serle Court tackle the seemingly simple issue of relevant dates when pleading revocation for non-use

hat could be simpler than Therefore, five years on from ı9 March application will be the effective date Walleging that a trade mark has 2000 is ı8 March 2005. “as from” which the mark will be not been put to genuine use for five An application for revocation cannot revoked, so the five-year period ends years and so ought to be revoked be brought until the mark in question the previous day. So, if the application pursuant to section 46 of the Trade has not been used for at least five was filed on ı9 March 20ı3, the five- Marks Act ı994? It’s a commonplace years. Therefore, to continue with our year period would run from ı9 March activity for everyone involved in trade example, the first date upon which such 2008 to ı8 March 20ı3, with an effective mark practice. Or is it? In fact, there an application may be brought is ı9 revocation date of ı9 March 20ı3. is more to this apparently simple plea March 2005, as only then has the mark With this in mind, what is the 16 than meets the eye. been unused for five years (Tribunal earliest date an application may be Section 46(ı)(a) states that the Practice Notice ı/2007). brought? There can be no revocation registration of a trade mark may where, even though the mark has not be revoked if: “within the period Fatal defect been put to genuine use in a five-year of five years following the date If an application is made before the period, genuine use has begun or of completion of the registration permissible date, then that is a fatal resumed before the application for procedure it has not been put to defect; either the application must revocation is made (section 46(3)); genuine use in the United Kingdom…” fail, or the applicant must seek leave save that genuine use after the relevant Within this statement, the critical to amend (though if the mistake five-year period, but in the three word is “following”. Once a mark is is considered trivial, it might be months before the application is made, placed on the register, the registration overlooked; see BSA by R2 Trade will not prevent revocation, unless procedure is completed on that day, Mark [2008] RPC 22, Geoffrey preparations for such genuine use were so the five-year period begins the Hobbs QC). made before the proprietor became next day (Valent Biosciences [2007] If an application is made on aware of the impending application. RPC 34, Mr Bowen). So, if a mark had ı9 March 2005, then revocation would In Philosophy di Alberta Ferretti been registered on ı8 March 2000, for be effective from that date, namely Trade Mark [2003] RPC ı5, the Court example, the initial five-year period ı9 March 2005, and the mark will of Appeal held that the purpose of the would have begun on ı9 March 2000. cease to have effect “as from” that three-month period in the proviso to A year comprises (normally) 365 date onwards (section 46(6)(a)). section 46(3) was to enable a potential days. This means that one year on from An application to revoke a mark that applicant for revocation to negotiate ı9 March 2000 is ı8 March 200ı (ı9 has been registered for more than five with the trade mark proprietor for March 200ı is actually one year and years can be made pursuant to section three months without the risk that one day on from ı9 March 2000). 46(ı)(b). In such a case, the date of the the proprietor would attempt to put Revocation

the mark into use to frustrate the ı9 March 2005. This date of revocation revocation is sought, so future application. As a consequence, the is particularly important where an cases where the date of revocation Court confirmed that a non-use applicant seeks to revoke an earlier sought remains unclear should, in revocation application in accordance mark to prevent a challenge to a theory, be minimal (but in practice with section 46(ı)(a) may be made later mark. still exist). as soon as the five-year period is In an application for revocation for Paragraph ı.3 of Tribunal Practice complete, so there was no need non-use, the burden of proof is reversed Notice ı/2005 indicates that the to wait for three months. and is placed upon the registered registrar will allow up to three dates proprietor to prove its use (section ı00). of revocation claimed in a single Intervening periods If the pleading is not clear as to which form TM26(N) and statement of 17 Combining the two five-year periods period of non-use is being alleged (as grounds: (ı) the earliest possible mentioned so far (and assuming in the Omega case referred to earlier), date under section 46(ı)(a); (2) a revocation application date of then the registered proprietor does not the date of the application of the ı9 March 20ı3) – (a) ı9 March 2000 have to prove use for those uncertain revocation, under section 46(ı)(b); to ı8 March 2005 (section 46(ı)(a)); periods as it has not properly been and (3) a specified date somewhere and, (b) ı9 March 2008 to ı8 March put in issue, so revocation will be in between those two dates, under 20ı3 – suggests an effective revocation effective only from the date of section 46(ı)(b). It is further indicated date of ı9 March 20ı3 (sections 46(ı)(b) the revocation application. that “any other alleged period of and (6)(a)). The date of the revocation Sometimes, however, the registry non-use must be the subject of application determines the section takes the view that it was clear that a separate application”. 46(6)(a) date, but might there be an an earlier effective revocation date In practice, though, one can plead earlier effective revocation date in was intended, even if no formal request any number of five-year periods in this example? A mark may be revoked for an earlier revocation date had been one TM26(N), as it has been held from an earlier date if the grounds made (WISI Trade Mark [2006] RPC that the registry did not have the for revocation existed at the earlier 22, Hobbs QC). Yet, in the absence of a power to impose such an arbitrary date (section 46(6)(b)). specific request for an earlier revocation limit (Sabatier Trade Mark, 3ı January In Omega v Omega Engineering Inc date, and where the parties had not 2007, Mr Foley). The penalty for [2003] FSR 49, Jacob J stated that the joined issue on the basis of an earlier pleading irrelevant and/or abusive date of the application for revocation date, the Hearing Officer was “entitled, periods is an adverse costs order. was the default option for when the if not bound” to take the application revocation would take effect. He date as the effective revocation date continued: “If a party wants revocation (Datasphere Trade Mark [2006] RPC to take effect from a date earlier than 23, Hobbs QC), and this is particularly About the the date of application for revocation, so if only one effective revocation authors in my judgment, it should set out what date has been expressly pleaded and date it wants and explicitly allege that that is the application date (Extreme Michael Edenborough the grounds for revocation existed at Trade Mark [2008] RPC 2, Richard QC, Thomas Elias and an appropriate earlier date.” Arnold QC). Adil Mohamedbhai Therefore, in the current example, Form TM26(N) now has a separate are barristers at Serle Court one needs to plead expressly the section inviting the applicant to [email protected] earlier effective revocation date of insert the date or dates from which itma.org.uk May 2013

The IPO Insider: Sean Dennehey Tania Clark conducted a quick Q&A in January with the UK IPO Deputy Chief Executive and Patents Director

18 interview

You joined the office in 1978. important in achieving this. This places delivered by brands. We are expecting What changes have you seen IP at the centre of our economy, which the Unified Patent and Patent Court in its operation over your tenure? is a big change. For example, 5 per cent Agreement to be signed in the first When I joined the IPO in ı978 I was of all global trade is in IP licences, quarter of this year. This will create issued with a candle because industrial worth about £600bn – a huge amount. a single patent that will cover most relations in the energy sector were Every business needs to commercialise of the territory of the EU and a court not all that they might be. This was to ensure that I was able to keep working even when the lights were off! ‘Every business needs to commercialise its good Coming back to more modern times, ideas, and exploiting trade mark, patent and design IP is now a top-line discussion issue, whatever its form. The IPO is no longer protection can be crucial to that’ something of a backwater and the UK is the only country to have an IP Minister. its good ideas, and exploiting trade in which it can be litigated. Putting This reflects the rising profile of IP mark, patent and design protection can in place the practical arrangements within the UK and means that IP gets be crucial to that. Copyright protection to make this work will be a big much more ministerial attention than it is also very important, especially for endeavour for us. otherwise would do. It strikes me that the creative industries. So providing • Providing high-quality rights this is a good thing for everyone. a strong IP framework geared to the We need to discuss with customers In ı978, the IPO had applicants modern age is a key challenge. how to modernise the current system and third parties, whereas now it has Education and awareness are also in order to provide better customer customers, and I’m sure they are much important. Many businesses aren’t aware service. We must provide more services better treated. And, while when I they have IP at all, let alone what rights electronically in a way that works 19 joined I was issued with an official they could acquire to help them flourish, for attorneys and end-users. This inkwell, we now work predominantly and the IPO really needs to help them. will enable people to manage electronically within the IPO – but Action against counterfeiting and piracy applications electronically and we have a long way to go in respect of is also important so that IP owners and this must be key for us. It is our our electronic services for customers. consumers are not ripped off. goal to provide low-cost interactions The fact that we are in Wales and with attorneys and customers. not London is also worth mentioning. What are the most crucial targets • Meeting customer needs through People may have thought the IPO may for the near and long term? our products and services have disappeared having moved to Wales. Each year we construct a corporate We need to help UK companies Needless to say, this has not been the plan that focuses on the next year, trade better internationally and in case and the IPO continues to grow. but tries to look further forward emerging markets, such as Brazil, Looking to Europe, both the over five years. Our latest plan is China and India. We are building European Patent Office and OHIM likely to have five strategic goals. an IP attaches network to help in are now very well established. Of Two of these will be concerned with these areas. Looking closer to home, course, OHIM was hardly in view improving the skill and capabilities we really need to do much more when I joined the IPO. On a wider of our people, and how we can to get the IP message across to international level, there is certainly increase the efficiency of the IPO SMEs, and that will be a big drive. much more cooperation, especially and deliver better value for money at a practical level, on benchmarking for our customers. There will also Is there enough emphasis on and so on. be three key outward-looking goals, IP education in our schools and we’ll be taking a number of and universities? What more How have the challenges of the IP actions under each. A few examples could be done to prepare environment changed, and therefore of what might be included are: developing businesspeople the aims of the office had to develop? • Promoting UK growth through IP policy for the challenges of the Thinking about the challenges that face We’d like to take forward work with IP environment? us now, restoring the UK economy to stakeholders, such as ITMA and the The National Union of Students strong, sustainable and balanced growth British Brands Group, to develop better recently published research jointly is a top priority for the Government. understanding of the role of brands with the IPO and IP Awareness This includes making the UK the best within the economy. This could enable Network which suggests that 80 place to start and grow business in us to take further steps to increase per cent of students believe that Europe, and the IP environment is the growth in the economy that is knowledge of IP is important to itma.org.uk May 2013

prizes and have so far given £ı.25m. for example, from the recent We are trying to do as much as we consultation on mediation services? can with as many partners as possible. Absolutely essential. The IPO must become even more customer focused How important is it now for the and you can’t be serving customers IPO to cooperate with other effectively if you do not find out international offices? what they want and think. We Increasingly more so. IP is a now global have a number of different ways business, albeit that many rights are of doing this. For example, we granted for national territories. We are have items on our website and very keen to work with any other IP formal consultations run over offices or governments to make the three-month periods. Bio in brief: international IP framework better for The call for evidence on customers. For example, we are trying IPO mediation services was an Sean Dennehey to develop arrangements that mean instance where we wanted opinions Sean Dennehey’s responsibilities offices can work together to speed up on proposals that do not require include the delivery of high-quality processing by reducing patent backlogs. statutory change. and timely UK national patents, We work closely with the IP offices in We wanted to discover what the IPO’s patents tribunal, and the US, Canada, Australia, Japan, Germany IP rights-holders and others thought development of patent policy. He and quite a few others to develop of the mediation service and to is alternate head of the UK delegation arrangements that reduce duplication ascertain why it was not being used to the Administrative Council of in patent prosecution globally. The more often. We had 22 responses the European Patent Organisation exchange of examiners between offices to our questions, which help us (EPO), and Chairman of the EPO and benchmarking our work are also understand the mediation landscape Committee on Patent Law. really constructive. Our trade mark a bit better and allow us to update 20 As a member of the IPO’s examiner secondments to OHIM the service that we provide. I hope executive board, he contributes are a really good example. as a result we can provide a mediation to the organisation’s corporate service that better meets the needs leadership, governance and How can IP professionals assist the of those in IP disputes with the strategic thinking. Sean joined UK IPO in providing the most useful newly relaunched service. the IPO as a patent examiner or successful service? after reading natural sciences at I remember very clearly attending a Cambridge University, and has meeting that the IP Minister had with, About the held several operational, policy among others, the President of ITMA, and Hearing Officer roles. Catherine Wolfe. In a very theatrical author and effective move, she produced a page from the IPO website at the time their career, but only 40 per cent and commented that this indicated consider their current understanding there had been less collaboration with of IP to be sufficient. This is ITMA and CIPA than there might encouraging, but we are currently have been. This was a good point, working with organisations to develop and very well made. university curriculums to include We have been keen to work with IP in a wider range of courses. The IP professionals and continue to Tania Clark Engineering Council and Law Society adopt this policy. Our Innovation is a Partner at have worked with us to embed IP Director, Rosa Wilkinson, spoke at Withers & Rogers LLP into their course accreditation. a joint CIPA/ITMA seminar in the [email protected] We do engage with universities, autumn of 20ı2 about reaching out Tania has been a Trade Mark but our resources are limited. We to businesses. The more that the Attorney for the past 15 years are keen to work with other people IPO can work in collaboration and has previously worked in with the right knowledge and with ITMA and CIPA to provide the IP departments of firms credentials to go to universities events and act in a complementary of solicitors and in-house for and speak about IP. In another fashion the better. a subsidiary of Total. Tania initiative, called Fast Forward, which is ITMA Treasurer and encourages universities and public How important are your public chair of the ITMA Review sector research establishments to consultations? What is the Editorial Committee. collaborate, we provide funding in most useful thing you learned, ip china Scotch whisky A collective trade mark proved its value when makes its the Chinese courts considered a recent case, mark reports Oliver Tidman

epresenting the first indications occurs where spirits would “cause enormous Rcriminal conviction under the there is commercial use of the name damage to the trade mark owners and SCOTCH WHISKY collective trade for products that are not authentic, use consumers”, according to the SWA, mark, a woman in China has been jailed of an imitation of the name, or other and also drew the judge’s attention for four years and fined £50,000 for false or misleading indications as to the to the fact that the Defendant had selling fake Scotch whisky. According provenance or nature of the products. previously been imprisoned for to press reports, Chinese authorities selling illegal spirits. prosecuted Li Cuihong, a wholesaler Fast-growing sales Having recently celebrated its selling a range of fake alcoholic drinks It has recently been reported that the centenary, the SWA, together with in Ürümqi, in the west of the country, production of Scotch whisky is worth the industry and Chinese whisky for selling un-aged Chinese spirits more than £4 billion per annum to enthusiasts, will likely be raising a containing artificial flavouring, which the Scottish economy, generating more glass or two to welcome the criminal had been labelled as Scotch whisky. productivity than the City of London. sanctions taken by the Chinese China is one of the fastest-growing authorities. Such enforcement action, Protection markets for Scotch whisky, with direct said an SWA spokesperson, “should In 2008, after much campaigning, and indirect exports reaching be an example to others involved in primarily by the Scotch Whisky an estimated £ı00 million in this dangerous business, which is 21 Association (SWA), the Customs value alone in 20ı2. damaging for both consumers and Chinese authorities granted As a result, the Chinese market the legitimate drinks industry. It is the registration of a collective is now among the industry’s further evidence of the successful trade mark for SCOTCH top ı0 worldwide, according work being done in co-operation WHISKY, together with to the SWA, and remains one with the Chinese authorities.” its Chinese equivalent. of the most lucrative for Scotland’s Certainly, it sends out a clear message Collective trade marks are used to national drink. that counterfeits will not be tolerated, identify the goods or services of the Despite the increase in popularity thus protecting the unparalleled members of a trade association, such as of the “water of life” in China, there reputation of Scotch whisky. the SWA. The collective mark belongs has been growing concern about not to the trader who uses it but to the treatment of UK exports. Locally the association, whose members use produced spirits falsely labelled and sold it to declare their membership of the as SCOTCH WHISKY have cashed About the association and therefore their adherence in on this success, which has become author to certain standards. a major issue for both the reputation The SWA has since secured further of the industry and Chinese consumers. protection in East Asia, with collective marks for SCOTCH WHISKY in Enforcement Malaysia and Thailand. In 20ı0, it also Although the bottles sold by Li Cuihong secured a Protected Geographical bore the words SCOTCH WHISKY, Indication for the term in China. The it was argued in defence that they did latter IP Right protects geographical not resemble any international brands names used as signs to identify goods on the market. However, the Chinese originating in a specific territory, such judge rejected this argument and Oliver J A Tidman as Scotland, where a given quality, made it clear that misuse of the words is a Solicitor and Tutor reputation or other characteristic of SCOTCH WHISKY alone constituted in IP Law at Edinburgh the goods is essentially attributable a serious criminal offence. Law School to their geographical origin. For their part, lawyers representing [email protected] Infringement of either collective the interests of SCOTCH WHISKY trade marks or protected geographical told the judge that the sale of the fake itma.org.uk May 2013

Timing tensions The divergence between Europe and the UK on prior use defences prompts questions from Colin Hulme

series of recent cases concerning Athe conflict between the use of unregistered marks and subsequent registered trade marks has highlighted the tension in the coexistence of these rights. This article visits the background law under the Trade Marks Act ı994 before considering in more detail the difficulty the law experiences in striking a fair balance between these competing interests. circumstances that is not considered The key question therefore was: did We all know section ıı(3) of the ı994 appropriate or a justifiable cost for a the section ıı(3)(a) reference to “the Act well. It provides: small business intending to trade only use of the first mentioned trade mark” 2222 “(3) A registered trade mark is not infringed as a local business. So, should Party A refer to the date Party B first used its by the use in the course of trade in a have been using an unregistered mark mark, or the date Party B registered particular locality of an earlier right in a particular locality prior to Party B its mark? Unfortunately, there is room which applies only in that locality. registering that mark, it is only fair that for uncertainty. For this purpose an ‘earlier right’ Party A be allowed to continue to do means an unregistered trade mark what it has been doing, given that it Passing off or other sign continuously used in has built up goodwill and a reputation Unsurprisingly, our interpretation of the relation to goods or services by a in the mark in that area. ı994 Act was that section ıı(3) referred to person or a predecessor in title of An interesting claim that Burness, Party B’s registration of the mark, not its his from a date prior to whichever Paull & Williamsons handled recently first use of the mark. The rationale for this is the earlier of: was when it acted for the user of an analysis was based on a straightforward (a) the use of the first-mentioned unregistered mark (Party A) in resisting view of the law of passing off. trade mark in relation to those a claim of trade mark infringement When Party A began using the mark goods or services by the made by Party B, whose unregistered in 2009, it would not have been liable proprietor or a predecessor use of a similar mark pre-dated to Party B under the law of passing off. in title of his, or Party A’s unregistered use, albeit That is because, at that time, Party A and (b) the registration of the first- in a different locality. Party B were trading in separate and mentioned trade mark in respect The situation was as follows: distinct localities within the UK, and of those goods or services in • Party B began using the (unregistered) neither knew of the other’s existence. the name of the proprietor or mark in 2008 in the south of England. Their respective customers were based at a predecessor in title of his; • Party A began using the (also opposite ends of the country and there and an earlier right shall be regarded unregistered) mark in 2009 in a was next to no chance of any confusion. as applying in a locality if, or to the particular locality within Scotland. If Party A had discovered Party B’s extent that, its use in that locality is Its services were identical. unregistered use of the mark in 2009 protected by virtue of any rule of law • In 2009, Party B did not trade outside and sought Burness Paull’s advice it (in particular, the law of passing off).” England and Party A did not trade outside would have advised that neither were So why do we need a “prior use its particular locality in Scotland. infringing each other’s rights. defence”? The rationale behind section • In 2010, Party B had the mark registered. Burness Paull’s argument was that ıı(3) is obvious. While informed readers • In 2012, Party B planned to expand into Party B’s registration of the mark in of this article will no doubt support Scotland. Upon learning of Party A’s use 20ı0 (which was the first time Party A the view that you should always look of the mark it intimated a claim of trade could reasonably have discovered Party to register your trading name, in many mark infringement. B’s mark), ought not allow Party A to eu issues

for registration (rather than first use) by Party B, the defence applies. Where does this take us? The UK courts require us to interpret section ıı(3) of the ı994 Act in a way that is consistent with the approach set out in the Directive. Use in the south of England by Party B of the mark would therefore not prevent a prior use defence. That use would be in a different and distinct locality, for the purposes of protectable goodwill. Should Party B have begun trading in Party A’s locality, Party A would have been able to rely on the law of passing off to stop Party B’s use of the mark in Party A’s locality. If the UK courts did not adopt that interpretation, and construed reference to “use” in section ıı(3)(a) of the ı994 Act as meaning any use by Party B of the mark in any part of the UK, then Party A would be denied a defence that is ‘While informed readers will no doubt support the view envisaged by the Directive. Such an that you should always register your trading name, in many interpretation would be contrary to Marleasing and would be both unfair circumstances that is not justifiable for a small business’ and irrational. However, it seems we are 23 in something of an impasse at present, backdate its registered rights under seek to interpret provisions of national with a tension between the ı994 Act and the ı994 Act to the establishment law, if possible, in conformity with the Directive. Common sense (and of its unregistered rights in 2008. relevant directives. European law) dictates that the ı994 Act To do so would be entirely illogical. The first point that is evident from must be construed as being compliant Of course, the “own name defence” Article 6(2) of the Directive is that the with the Directive. How that will set out in section ıı(2)(a) of the ı994 defence is available only if (to continue manifest itself in terms of judicial Act could have been another possible with the example above) Party A is interpretation remains to be seen. defence open to Party A, had Party A able to establish an earlier right in been trading under its own name. a particular locality. This is a broad defence when considered in the UK Does Europe help us? context of protectable goodwill, and About the To appreciate the scope of the defence is not expressed to be contingent on as provided by section ıı(3) of the ı994 the use by a third party in another author Act, it is necessary to consider the locality. The focus of the defence in corresponding article of the Trade the Directive is on the rights that Mark Directive (2008/95/EC) (“the exist in a particular locality. Directive”), from which it derives. Further, recital 5 of the Directive states: Article 6(2) of the Directive provides: “This Directive should not deprive the “The trade mark shall not entitle the Member States of the right to continue to proprietor to prohibit a third party from protect trade marks acquired through use using, in the course of trade, an earlier but should take them into account only in right which only applies in a particular regard to the relationship between them Colin Hulme locality if that right is recognised by the and trade marks acquired by registration.” is a Partner at Burness laws of the Member State in question Finally, the Directive does not Paull & Williamsons and within the limits of the territory define “earlier right” in Article 6(2) colin.hulme@ in which it is recognised.” or stipulate that Party A’s use must have burnesspaull.com National courts are obliged under started before that of Party B. Therefore, the Marleasing (C-ı06/89, Marleasing as long as Party A had acquired a Neeraj Thomas, Senior SA v La Comercial Internacional de protectable unregistered right in a Solicitor, was co-author Alimentacion SA [ı990]) doctrine to particular locality before the application itma.org.uk May 2013

24 Brand strategy

Navigating a new universe Dan Poliak, Associate General Counsel, Adobe, considers the challenges of trade mark enforcement in the new media world

ounded in December ı982 that it has deployed throughout its Does or will the allegedly Fand headquartered in San Jose, history: watch for infringement in the infringing activity have a California, Adobe is one of the largest most cost-effective, business-savvy negative business or legal software companies in the world, with manner possible. impact on the company revenue of US$4.4 billion in 20ı2, and or its customers? 25 is the global leader in digital marketing New tools, old rules This is essentially Adobe’s gating and digital media solutions. Adobe’s When cybersquatting first became an question. The allegedly infringing tools and services enable its customers to issue in the early days of the web, many activity must have an impact on create groundbreaking digital content, companies took a scorched-earth its business or its customers (or be deploy it across media and devices, approach to online enforcement. They deemed to have the potential in and measure and optimise it over time. hired law firms to draft letters to any the future to do so) for Adobe to Content built with Adobe products third party who had registered a domain expend resources challenging it. is everywhere – from websites, video that included a variation of a company In addition, the company sometimes games and smartphones to televisions, trade mark, regardless of whether that needs to address certain activities that tablets and beyond. domain was active or posed a business, may not affect the business as much, Five years ago, monitoring legal or competitive threat. At several but could pose a legal threat to cyberspace meant only searching and thousand dollars per letter, the costs of its IP Rights (for example, the use combating trade mark infringement monitoring the web in this manner of a mark in a generic manner). on the world wide web; that universe rapidly accumulated and law departments now includes the mobile and apps were spending significant funds on Is the alleged infringer a partner, market, as well as all forms of social chasing online infringers, often with customer or a potential customer? media. Adobe operates in all of these little tangible result. Luckily, however, Adobe’s products and solutions are spaces, which means that the potential most companies realised quickly that incredibly popular among creative for infringement has increased enforcement in this new space required professionals, designers and developers. exponentially. With Adobe’s strong a more strategic, efficient method of Yet infringement of Adobe’s marks presence in this ever-expanding digital, monitoring, and opted for more targeted, sometimes happens in this community, multi-screen world, one of the biggest resource-friendly strategies. and 90 per cent of the time that challenges it now faces is how to Similarly, the explosion of mobile infringement is unintentional. The effectively combat trade mark devices and new worlds for infringing last thing Adobe wants to do in these infringement without alienating activity does not mean that Adobe has cases is to alienate its customers by partners and customers. been forced to expand its resources to taking a heavy-handed approach to Yet, despite these fundamental meet the new challenges. In fact, Adobe’s enforcement; there are many soft- changes in the market, Adobe’s approach enforcement strategy continues to rely touch means of addressing infringing has not changed all that significantly. Its on a few fundamental, common-sense actions that can remedy the legal enforcement strategy in the new media rules that have guided its trade mark problem without irritating the environment is much like the strategy monitoring approach for many years: customer or partner. itma.org.uk May 2013

About the author

Dan Poliak is Associate General Counsel at Adobe Systems Incorporated [email protected] Based in Seattle, Washington, Is there a business solution the arguably infringing conduct. In Dan is responsible for to the problem? most cases, Adobe will work to resolve managing the trade mark group While the easiest way to deal with an the situation amicably, again either at Adobe, which includes infringement issue may be to fire off a through business channels or through supervision of the registration, sharply worded cease-and-desist letter, friendly contact with the alleged protection and enforcement Adobe finds that a pro-business solution infringer. The bottom line is that of all Adobe trade marks and can often and should be employed. while the places where the alleged domain names, as well as For example, is there someone in the infringements now take place have the management of Adobe’s company who has a relationship with the changed, the kinds of infringements copyright programme. Before alleged infringer such that they use this Adobe is seeing really have not. joining Adobe in 2000, he personal contact to resolve the dispute, worked at the Seattle law thus avoiding a legal approach? Many The great unknown: gTLDs firm of Preston Gates & companies automatically go into a The proposed roll-out by the Ellis (now K & L Gates) and defensive mode when they receive a International Corporation for Assigned McCutchen Doyle (now cease-and-desist letter, whereas a friendly Names and Numbers (ICANN) Bingham McCutchen) 26 phone call can, more often than not, of hundreds of new generic top-level in San Francisco. produce the desired results in a fraction domains (gTLDs) this year may, of the time and at a fraction of the cost. however, create an exception to Adobe’s general enforcement rules in the new Not so new world order media world. At this point, it is unclear It is unclear whether this, or some Despite dire warnings in the legal press what guidelines and brand protection of the other proposals Adobe and other about legal risks in the new media mechanisms will be available to trade brand owners have put forward, will frontier, the enforcement issues Adobe mark owners in the new gTLD space. be implemented by ICANN and the encounters are not all that different from Having said that, Adobe has been new domain holders and managers. No the ones it has dealt with in the past. A working actively to promote the matter what happens with institutional typical social media example might be broadest and most cost-effective IP mechanisms, the bottom line is that with more than 500 new top-level domains likely to be coming into ‘Is there someone in the company who has a relationship with existence this year, Adobe and other the alleged infringer such that they use this personal contact companies are going to be spending an exponentially increased amount of to resolve the dispute? A friendly phone call can, more often time monitoring their marks online. than not, produce the desired results in a fraction of the time The question is: what will be the most and at a fraction of the cost’ effective strategy for doing so? Until Adobe knows what IP mechanisms will be implemented by a fan who creates a Facebook fan page protections possible. For example, ICANN, it is difficult to formulate for one of Adobe’s products or has Adobe is in support of a system that a strategy. The sheer volume of new registered one of Adobe’s product names would allow trade mark and brand places where infringement may occur, as a Twitter handle. This, again, is really owners the ability to protect their and the likelihood that Adobe will not not all that different from a fan creating marks across all of the new domains be able to obtain significant additional any other type of fan page on the web for a single fee and through an enforcement resources (either financial or someone using one of Adobe’s trade uncomplicated process. In addition, or human), is going to force the marks in a domain name. In these kinds Adobe is advocating for rigorous company to make some tough choices. of cases, Adobe still has to apply the and cost-effective dispute resolution What those choices will be remains rules outlined earlier to determine mechanisms that similarly would to be seen; at a minimum, its normal what, if any, action is necessitated by not vary from domain to domain. business-friendly rules will apply. Case comment Case in point: O/014/13, MINIFRAME (Opposition), UK IPO, Appeal to Appointed Person Professor Ruth Annand, 11 January 2013 Good news on good will Kristina Passmore reviews a decision that will provide reassurance to companies relying on authorised dealers

n this appeal to the Appointed Person is usually established by showing the • it was clearly the intent of the parties Ifrom the Registrar’s decision to reject existence of customers in the UK for under the 2007 agreement that any an opposition against the trade mark the product offered and supplied under goodwill in MINIFRAME would accrue application for MINIFRAME, the and by reference to the mark in suit. and be owned by the Applicant; Applicant was an Israeli company While the Hearing Officer rightly • any consent by the Applicant to the use that produced MiniFrame software remarked that the Opponent had not of “MiniFrame UK” was a temporary packages and distributed its product provided “any evidence of sales, such measure subject to Board approval, through authorised dealers, including as turnover figures, market share or which was not forthcoming and which UK authorised dealer Kira Supplies independent evidence”, the Appointed did not amount to evidence of a Limited (“Kira”). Clause 7 of the 2007 Person listed various evidence of consented departure from clause 7 authorised dealer agreement between the goodwill, including: of the 2007 agreement; parties included an acknowledgement • the Opponent exhibited MiniFrame • part of the promotional expenditure that all goodwill and IP Rights were products at national and local exhibitions claimed by the Opponent was incurred retained by and accrued to the Applicant. bearing the name MINIFRAME; by Kira; and A second addendum to the 2007 • the MINIFRAME products won several • as the UK public were clear that agreement recorded Kira’s desire to awards in the UK; the products and services sold by establish a distribution company and • several “success stories” on the the Opponent were developed by a request to use the name “MiniFrame Applicant’s website contained the Applicant, there was no confusion UK”. It stated that should the Applicant endorsements for MiniFrame about the origin of the product and agree to this a separate agreement would products from representatives no misrepresentation. be entered into between the parties. of UK undertakings; and Since the Applicant was the owner of Although no such agreement • licences for MINIFRAME were distributed any relevant goodwill in MINIFRAME 27 was entered into, a new distribution and sold to UK end-users by Kira. there was no finding of bad faith. company – MiniFrame UK Limited The Appointed Person decided This is a reassuring decision for (the Opponent) – was incorporated. that, overall, the evidence was sufficient companies that distribute their branded The 2007 agreement was never assigned to establish UK goodwill in the products through authorised dealers. to the Opponent and at no point did MINIFRAME product. This decision shows that so long as the Opponent enter into a separate However, the real issue in this case the contractual provisions are in place, agreement with the Applicant. The concerned those who owned the an authorised dealer cannot simply Applicant terminated its agreement UK goodwill in the MINIFRAME incorporate a new independent with Kira in 20ı0. mark when the Application was company and transfer to it goodwill The Opponent filed its opposition made. The Opponent claimed to in the respective product or brand on grounds that under sections 5(4)(a) have spent £200,000 promoting the that rightly belongs to the company of the UK Trade Marks Act ı994 use MINIFRAME products. The Applicant producing the products and owning of MINIFRAME was liable to be did not seek to contradict these the brand. prevented by the law of passing off, figures, but directed the tribunal to protecting the Opponent’s earlier right the 2007 agreement, under which such in the name and unregistered trade mark promotional expenses were to be borne About the MINIFRAME, and that the mark was by the distributor, and also to clause 7. applied for in bad faith (section 3(6)). However, the Opponent contended author The Appointed Person noted that that it was separate from Kira and the Hearing Officer’s finding that the not a subsidiary and that no new Opponent had not shown goodwill agreement was entered into with the raised two key questions. First, did any Opponent. Further, it stated that Kira goodwill exist in the MINIFRAME transferred the goodwill generated to product in the UK when the the Opponent upon its incorporation Application was filed? Second, and that the Opponent was entitled if so, who owned that goodwill? to the UK goodwill by virtue of the Addressing the first question, the Opponent’s promotional spend. Kristina Passmore Appointed Person cited a passage The Appointed Person decided is a Solicitor at from Inland Revenue Commissioners that the goodwill in MINIFRAME Harrison Goddard Foote v Muller & Co’s Margarine Ltd [ı90ı] belonged to the Applicant, and [email protected] AC 2ı7, which indicated that goodwill noted that: itma.org.uk May 2013 Case in point: O/009/13 (ROYAL SHAKESPEARE) (Revocation), In the matter of International Registration No 787794 in the name of Jackson International Trading Company Kurt D Bruhl Gesellschaft mbH & Co KG, 8 January 2013, and In the matter of Application No 16141 for Revocation thereof by the Royal Shakespeare Company, Registered Proprietor’s Appeal to an Appointed Person from the decision of Oliver Morris dated 26 October 2011, Appointed Person Anna Carboni, decision date 31 December 2012 (redacted version)

Bad day for bard brew What’s in a name? Potentially a barrel full of bother, as Charlotte Blakey reports

his report concerns an appeal Ground 1 Tbrought under section 76 of Exhibits 2, 3 and 4 are the subject of the Trade Marks Act ı994 (“the Act”) an order for confidentiality and their by the registered proprietor (“Jackson”) specific description has been redacted of International Registration 787794 from the public versions of both the ROYAL SHAKESPEARE (“the first-instance decision and the appeal Mark”) against the decision issued at decision. However, the summary from BL O-369-ıı, dated 26 October 20ıı. the witness statement is: 2828 This decision stated that the Mark’s “6) The Company has been actively protection in the UK should be revoked engaged in the attempt to use and on the grounds of non-use under section keep available for use its ROYAL 46(ı)(a) and/or 46(ı)(b) of the Act. The SHAKESPEARE mark in the UK since Hearing Officer held that there had been at least as early as 1997, as evidenced no genuine use of the Mark during the at least by the Coexistence Agreement relevant periods, nor had there been between the Company and Forte proper reasons for such non-use. Limited and Forte (UK) Limited, The Mark covered “beers, including which is attached as Exhibit 1. low-alcohol and non-alcoholic beers; 7) Exhibit 2 consists of a letter to Mr Clarke fruit drinks, fruit juices and isotonic of The Hook Norton Brewery Co Ltd, drinks” in class 32. However, this was requesting assistance with the brewing Mr Clarke of The Hook Norton later reduced to “beer” on the appeal and distribution of the ROYAL Brewery Co Ltd (Exhibit 2). From hearing. The grounds of appeal SHAKESPEARE product under licence this subsequent correspondence were as follows: in the UK. This letter constitutes an it can be perceived that: 1) in finding non-use, the Hearing example of genuine use of the mark in the a) The Company already has a Officer wrongly held that certain letters context of use on a business paper, which complete conceptualisation of exhibited in Jackson’s evidence did is trade mark use by extension of section the ROYAL SHAKESPEARE product not constitute “advertisements” and/or 10(4)(d) of the Trade Marks Act 1994. and all that is required is a UK did not highlight the availability of the 8) Exhibit 3 consists of letters to Mr brewer and distributor; and relevant product to the trade (Exhibits 2, Riddiford of Brewer Design Consultants b) The difficulty in obtaining a brewing 3 and 4 of the Witness Statement); and and Mr Shah of Exposure requesting and distribution contact under 2) if the Hearing Officer was correct in assistance with the design of the licence is the small number of his finding of non-use, he had wrongly intended label for the ROYAL available brewers which can carry out failed to give proper consideration SHAKESPEARE product, an example of the specialised work over and above to the unique nature of the industry which is attached to the letters. It can their own commitments. Indeed, the concerned and to the logistical be seen from the further letter to Mr third party specialist in the industry, difficulties experienced by Jackson Riddiford that a response was received. Fraser Management, was only able when seeking a business partner 9) Exhibit 4 consists of correspondence to suggest one contact, which turned or licensee, which together were with Mr Fraser of Fraser Management out to be unsuitable for the Company. sufficient to amount to proper Ltd following an approach from the 10) Due to the nature and set-up of the reasons for non-use. Company very similar to the letter to Company, it is based in Austria and has Case comment

a broad spectrum of business areas, Ground 2 the only effective method of conducting The Hearing Officer set out various About the a successful business in the UK market authorities relevant to the interpretation author for the ROYAL SHAKESPEARE product of “proper reasons for non-use”, such is by a third-party brewing and as the judgment of the Court of Justice distribution licence agreement. This of the European Union in Haupl is considered commonplace in the v Lidl, Stiftung & Co KG, C-246/05 brewing industry, particularly for at para 54: companies based overseas.” “It follows that only obstacles The Hearing Officer found that the having a sufficiently direct relationship evidence provided did not demonstrate with a trade mark making its use sale of any product under the Mark, impossible or unreasonable, and which Charlotte Blakey nor had there been any published arise independently of the will of is a Trade Mark Assistant advertisements, in the “traditional sense”, the proprietor of that mark, may at Keltie LLP for any goods to be sold under the Mark. be described as ‘proper reasons for [email protected] While advertising may constitute non-use’ of that mark.” genuine useı, and the end-user, in this He also made reference to Il Ponte case the beer-consuming public, does not Finanziaria SpA v OHIM, C-243/06P, necessarily need to have encountered the [2008] ETMR ı3 at para ı02: quality represents another decision Mark in the marketplace, the Hearing “… the concept of ‘proper reasons’... made by Jackson and not one out of Officer considered the letters provided refers essentially to circumstances its control. Therefore, Jackson’s offer to to merely highlight the availability unconnected with the proprietor limit the specification to “English beer” of a trade mark that may be licensed, of the trade mark which prevent or “beer brewed within the UK” was of rather than the availability of any actual him from using the mark...” no benefit. The Hearing Officer’s finding product. An idea or concept is not The key element here being that that there were no reasons for non-use enough to constitute genuine use2. the circumstances relating to non-use was upheld by the Appointed Person. 29 Further, it was argued by the Royal were entirely out of the control of the The Appointed Person found that Shakespeare Company (“RSC”) that proprietor of the trade mark. there was no genuine use of the Mark simply because a form of use may not In this case, not finding an appropriate during either of the two five-year be a sham or token, this does not mean brewing partner did not constitute a periods relied on by the RSC and no that it qualifies as genuine use. proper reason for non-use of the Mark. proper reasons for non-use. Protection At the Appeal, Jackson argued that It was Jackson’s own fault that it decided of the Mark in the UK was revoked with the Hearing Officer had taken too to apply for trade mark protection in the effect from ı5 September 2008. Jackson was also ordered to pay a contribution ‘The Hearing Officer found that the evidence provided did to the RSC’s first-instance costs, as well not demonstrate sale of any product under the Mark, nor had as the costs of the appeal. there been any published advertisements, in the “traditional Reasons required sense”, for any goods to be sold under the Mark’ This appeal highlights the importance of demonstrating “genuine use” or “proper reasons for non-use”. Genuine narrow a view of what constitutes UK without a licensing arrangement use must be actual use of the mark for “advertising”, arguing that it should to produce beer in place. the goods and services covered, and if include the promotion and marketing Jackson argued that there had been advertisements are relied upon they must of the availability or potential availability difficulty in finding a licensee, as its desire relate to an available product. Further, of a product. However, the Appointed to ensure that the beer had an “English” proper reasons for non-use must clearly Person agreed with the Hearing quality meant there was only one brewer be out of the control of the proprietor. Officer that the letters were “pre- available to it in the UK. This brewer The fact that a proprietor seeks to use preparatory” steps exploring the was not deemed appropriate, although a mark in a difficult business area is possibility of creating a beer to the reasons for this were not provided. the choice of the proprietor and not which the Mark could be applied. Also, the requirement of this “English” an extenuating circumstance.

1. Ansul BV v Ajax Brandbeveiliging BV, C-40/01, [2003] ETMR 85 (ECJ). 2. The Court of Justice of the European Union has given guidance as to the correct interpretation of aspects of section 46, and in particular the meaning of “genuine use”, in Ansul BV v Ajax Brandbeveiliging BV, C-40/01, [2003] ETMR 85 (ECJ), La Mer Technology Inc v Laboratoires Goemar SA, C259/02, [2004] FSR 38 (ECJ), and Silberquelle GmbH v Maselli-Strickmode GmbH, C-495/07, [2009] ETMR 28. itma.org.uk May 2013 Case in point: O/021/13, Yelp! Inc v Yell Limited, Appeal to Appointed Person Amanda Michaels, UK IPO, 11 January 2013

Yell silenced on appeal Rosalyn Newsome sets out why ıı grounds weren’t sufficient for success

elp! Inc (“the Applicant”) applied It is worth listing the numerous basis – in particular, objection was Yon ı7 December 2008 to register grounds for the appeal (all of raised regarding the Hearing Officer’s UK Trade Mark 2505006, YELP & which failed): reference to the General Court’s Device (series of four, “the Mark”). The 1) The Hearing Officer over-analysed comments in Inter Ikea Systems BV 30 Application was for a wide range of the marks. v OHIM. In that case, it was stated: services in classes 35, 38, 4ı, 42 and 45. 2) & 3) He did not find enough degree “As regards the visual comparison The Mark was opposed by Yell of conceptual similarity. between the verbal element of the Limited on the basis of section 5(2)(b) 4) He misapplied the law concerning contested Mark and the earlier word under Opposition 99222. Seventeen distinctive/dominant components Mark, the Applicant claims that the earlier trade marks were relied upon, when considering visual similarity. only difference between them is with the strongest rights held to be 5) This affected the decision on the presence of the letter “d” in the Community Trade Mark Application aural similarity. contested Mark and the letter “k” 2ı72682, YELL & Device, and UK 6) Too high a level of attention was in the earlier word Mark. However, Registration 245ı074, YELL.COM. allocated to the appropriate consumer. the Court has already held in T-ı85/02 The Hearing Officer, Oliver Morris, 7) The above points vindicated Ruiz-Picasso and others v OHIM in his decision of ı6 June 20ıı, the assessment of a likelihood that, in the case of word Marks that determined that he would consider of confusion. are relatively short, even if two the merits of the Opposition for 8) The Hearing Officer failed to consider Marks differ by no more than a those two earlier Marks, because if the how confusion might have arisen. single consonant, it cannot be found Opponent were unsuccessful for these 9) The Opponent sought to adduce that there is a high degree of visual marks the Opposition would fail for the fresh evidence. similarity between them. Accordingly, remaining marks. Similarly, he restricted 10) The Hearing Officer gave insufficient the degree of visual similarity of the his examination to certain services in weight to the reputation of the earlier word Marks and the verbal class 35, which were deemed identical. earlier Marks. element of the contested Mark must Proof of use was not required 11) The Hearing Officer wrongly took be described as ‘low’.” for either of the earlier marks, but comfort in the lack of evidence of The Opponent submitted that the lengthy evidence, as well as written actual confusion. conclusion of the Court in Ruiz-Picasso submissions, was filed by the Opponent. was wrong. The Appointed Person Nonetheless, the Hearing Officer An appeal is not a re-hearing of the agreed and had previously commented did not find the marks sufficiently facts, but should question a decision so in her decision BLO/387/ıı Boo similar for a likelihood of confusion based on an error in the application Boo Trade Mark. Therefore, while the and the Opposition was unsuccessful. of the law or a clear material error. Appointed Person had some sympathy Yell Limited filed an appeal against On the first ground of appeal – that with the Opponent, in her view, it was the decision relating to this assessment the Hearing Officer had over-analysed clear from reading the Hearing Officer’s and also sought permission to adduce the marks following the classic analysis decision that he only took guidance new evidence. on a visual, phonetic and conceptual from the General Court and, in his Case comment

‘The fact that the request to submit the evidence was made in a written submission, rather than via a fresh witness statement that explained why the evidence had only just come to light and the significance of the evidence, was also criticised’

own terms, concluded that: “In short that the Yelp website was in some why the evidence had only just come words, differences in the letters, even if way connected with Yellow Pages. The to light and the significance of the at the end of short words, are likely to request was refused outright, because evidence, was also criticised. This stand out more. The difference is less it became clear that the article was is in accordance with the principles likely to be overlooked.” The Appointed flagged to the Opponent soon after set out in Ladd v Marshall [ı954] Person agreed that this was a reasonable the initial hearing. ı WLR ı498. The second instance conclusion based on the marks in While it is possible to seek in which new evidence is admissible question and that it did not reflect the permission to adduce new evidence on appeal is when it is deemed to have earlier mistake of the General Court. on appeal (the foundations of which are an important influence on the result Therefore, the citation of an earlier well established in the Du Pont Trade of the case, and again it was felt that authority that is deemed questionable Mark [2004] FSR ı5), the Opponent did this requirement was not met. does not automatically result in an not follow the correct procedural steps. All of the remaining grounds of error of principle. It depends on the The Appointed Person was critical of the appeal were also duly dismissed. 31 application of the prior decision in the delay in presenting this additional More than anything else, this decision the current decision. Similarly, no error evidence, given that it became provides useful guidance on the of principle was found in connection available shortly after the hearing acceptable levels of analysis of short with the assessment of aural or and well before he had handed down marks and confirms the correct conceptual similarity. his decision. The Appointed Person procedure for the late submission questioned why the Opponent did of evidence on appeal. Evidence request not request that the Hearing Officer The other interesting aspect of this case consider the evidence if it deemed it so was the Opponent’s request to adduce helpful to its case. She continued that About the fresh evidence at appeal. The original the Opponent should have invited the hearing took place on ı8 March 20ıı Hearing Officer to take the evidence author and the Opponent sought to submit an into account, if necessary giving the article from the Independent newspaper Applicant an opportunity to comment dated 2ı April 20ıı. The decision was upon it. The fact that the request to not issued until ı6 June 20ıı. The submit the evidence was made in Opponent argued that a journalist a written submission, rather than via had become confused into thinking a fresh witness statement that explained

Rosalyn Newsome Contested marks is a Trade Mark Partner UK Trade Mark 2505006 CTM Application 2172682 at Barker Brettell LLP rosalyn.newsome@ barkerbrettell.co.uk Rosalyn specialises in all aspects of trade mark law across a range of industry sectors, in particular fast- moving consumer goods, toys and online dating. itma.org.uk May 2013 Case in point: [2013] EWPCC 2, Kohler Mira Limited v Bristan Group Limited, Patents County Court, HHJ Colin Birss QC, 28 January 2013

Shower showdown Christopher Freeth provides the details of this design-led dispute

n this Patents County Court different overall impression, the innovative market in 20ı0. The Glee and Joy Idecision, HHJ Birss QC handed design aspects of the Kohler Mira designs looked alike. The Smile was similar, down judgment in a dispute between had been taken. Unusually, the designer but did not feature a power button. Kohler Mira and Bristan Group for Bristan was held not to have copied, Bristan challenged the validity of concerning the design of an electric but indirect copying was held to have both designs for lack of individual shower range. Kohler Mira asserted occurred – apparently through the character. Under Council Regulation infringement of two of its Community- instructions given to him by others. Number 6/2002/EC, the relevant registered designs and also its UK test is that a design shall be considered unregistered design right (“UDR”). Minimalist designs to have individual character if the 32 The Court held that while Kohler Kohler Mira designs and manufactures overall impression it produces on the Mira’s registered designs were valid, showers, shower trays and enclosures. In informed user differs from the overall they had not been infringed. The 2006, it introduced a range of showers impression produced on such a user Court’s interpretation of the dotted based on an innovative minimalist design, by any design that has been made lines in each of the Community which included a rectangular flat front available to the public. registrations was a key factor. However, plate with two centrally aligned control this decision appears to have created knobs and a collared power button. The The 0002 design greater uncertainty as to how dotted lead product in this new range was the The Judge first looked at the lines will be interpreted in future. Mira Azora (shown below). 000578463-0002 (“0002”) design, shown The UDR claim was successful against Bristan Group had not produced below. He decided that construction all three of Bristan’s products. Even an electric shower before its Glee, Joy of the design should be approached by though the Bristan products created a and Smile range, which came onto the considering the registration itself, and

Competing products The Community-registered designs (first images only)

Bristan Glee Mira Azora 000578463-0001 (“0001”) and 000578463-0002 (“0002”) Case comment

The 0001 design c) the two vertically aligned circular Next, HHJ Birss QC considered control knobs, one located at the the 000578463-000ı (“000ı”) design. centre of the front face and the other The registration used dotted lines to below it; and delineate the control knobs and the d) the circular power switch and associated power button. The Judge held, in line collar, which is vertically aligned with with the OHIM guidelines, that these and located below the two circular lines indicated elements for which control knobs. no protection was sought because that is how an informed user would Counter claim 33 have understood them. Therefore, Bristan counterclaimed that Kohler the control knobs and power button Mira’s designs were commonplace and were not within the scope of submitted a great deal of prior art in protection of the 000ı registration. support, including information on Despite this, the 000ı design was showers dating back as far as ı988. still held to possess individual character. The Court rejected these and noted However, Bristan’s products were held that if the only place a supposedly that one should not look to the product not to infringe – the key differences common feature could be found by for guidance as that might prejudice being a lack of pips on the surface, a defendant is in an old and obscure one’s view. The Judge considered the use of a thin front plate with curved product, that will often imply that Examination Guidelines for Community corners, and the lack of any recess the feature is not as common as the Designs adopted by OHIM, which state behind the front plate. defendant suggests. UDR was found to that dotted lines can indicate elements subsist in aspects (a) and (b) individually, for which no protection is sought, UK UDR and the combinations of (b) plus (c), or elements that are not visible in a The Court then examined the and (b) plus (c) plus (d). particular view. However, he considered case on UK UDR, and Bristan that these were not the only possible was found to have infringed. The Copying interpretations. In so far as the 0002 judgment illustrates the importance The Court then considered whether design was concerned, he held that the of management’s instructions to it could draw an inference of copying. dotted lines had a completely different designers, which can (as here) result The Judge found striking similarities meaning: they indicated that the front in a finding of copying. Also of note between the flat front face and the plate must be translucent or transparent. are the inferences that may be drawn combination and arrangement of the The 0002 design was therefore held from a lack of evidence from key control knobs and power button on the to produce a different overall impression players in the design process. Mira Azora and the Bristan products. to the prior art available, which largely Kohler Mira relied on the following Bearing in mind the “significant impact” consisted of more conventional looking aspects of shape or configuration, both the Azora had on the market, and that it “white box”-style shower controls. individually and in any combination: represented a “very significant departure However, because the Bristan products a) the whole of the shower unit; in the field of electric showers”, the did not have a transparent front panel b) the rectangular “tombstone” Judge held that there was a strong and there were other differences, Bristan’s appearance of the unit when inference of copying. He said it was products were held not to infringe. viewed from the front; hard to believe that the similarities that itma.org.uk May 2013

existed between the Glee and the Azora liked them, and he expected they liked to give evidence. If a decision is taken could be a coincidence. them because – whether they recognised not to supply evidence from key At Bristan, the initial design for it consciously or not – they were features members of the design team, there the products had been developed by a of the Azora. The Judge said: “Bristan is a risk that adverse inferences may be design placement student, Mr Churm. were well aware of the Azora and I am drawn – especially when no explanation Mr Helme, another design placement sure its staff understood the significance is provided for an absence of their input. student who took over from Mr Churm, of what they were encouraging In this case, evidence from the designer then produced design concepts, and Mr Helme to do.” of the product alone was not sufficient the shower team at Bristan picked its The Judge found that Bristan’s Glee to rebut the inference of copying when favourites. Finally, an internal Bristan and Joy products infringed Kohler Mira’s others in the company were involved focus group was set up and it decided UK UDR in aspects (a), (b), (b) plus (c), in the design process. to develop two of the designs further. and (b) plus (c) plus (d). He found that Design management teams must 34 There was also a design brief, which the Bristan Smile (the design without also be careful to ensure that they had been approved by four Bristan staff, the power button) infringed aspects do not, even subconsciously, direct including product manager Ms Jonas (a), (b), and (b) plus (c). their teams towards reproducing and design engineer Mr Smith. Following this judgment, it existing designs or taking distinctive Helme denied any copying and the appears that transparency or features from them. Indirect copying Judge accepted his evidence. However, translucency is another possible can, and does, occur. he had not been the only person interpretation of dotted lines. The involved in the design process. proper construction of such designs About the ‘The interpretration of dotted lines is left entirely open. author Clearly they merit careful consideration when selecting or creating design drawings for registration, as they may be interpreted in a way that was not intended’

Bristan had not produced any must be decided by considering evidence from Churm, Jonas or any the design registration itself and other staff at Bristan. The Judge noted on a case-by-case basis. the lack of evidence from these key This leaves the interpretation players in the design process, and that of dotted lines entirely open. Christopher Freeth no explanation had been given for it. Clearly they merit careful consideration is a Trainee Solicitor He found that: “the staff at Bristan when selecting or creating design at Wragge & Co who were overseeing the project drawings for registration, as they christopher_freeth@ must have been well aware of the may be interpreted in a way that wragge.com Mira Azora product.” was not intended. Christopher assisted The Judge held that the staff at Partner Gordon Harris Bristan had an important role to play Design teams and Director Claire O’Brien in the overall process in selecting and In a case in which the designer who advised Kohler Mira modifying features proposed by Helme. was guided by others, careful in its design dispute with He believed Bristan staff selected features consideration should be given to Bristan Group. from Helme’s proposals because they the selection of appropriate people case comment Case in point: [2013] EWHC 70 (Ch), Hotel Cipriani SRL and others v Fred 250 Limited and others, High Court, 29 January 2013

by evidence of restaurant reviews that referred to Downtown Mayfair as A famous name “Downtown Mayfair by Cipriani” and “Downtown Cipriani London”. GC submitted that even if his use faces off again was caught by Article 9(ı)(b), it was not an infringement by virtue of Article ı2 (a) or (b) of the Regulation. The own-name defence is once more brought Arnold J reiterated the conclusion of into court in Cipriani case, says Katy Cullen the first-instance judgment whereby GC could not rely on Article ı2(a) because he was not trading under his own name. As to GC’s submissions that “by G. n a further episode of the long-running Cipriani” and “Managed by Giuseppe Idispute between Hotel Cipriani SRL Cipriani” were indications concerning (“HC”), the owner of Hotel Cipriani, the quality of or other characteristics and the Cipriani family, the founders of of the services, Arnold J also rejected Harry’s Bar, Arnold J was again asked this argument and considered that the to consider the own-name defence by average consumer would perceive the Giuseppe Cipriani (“GC”). Arnold J statements merely as an indication of maintained that the own-name defence origin. The position may have been did not apply and that GC’s use of his different if GC had a reputation for a name, albeit in the context of a non- particular management style, but there Cipriani-branded restaurant, would still was no evidence that this was the case. function as an indication of origin and Furthermore, GC’s use did not accord thus infringe HC’s rights. with honest practices; uses on windows To recap, in 2008, the High Court and menus constituted part of the held that the use by, inter alia, GC restaurant’s branding and were not of Cipriani in relation to a restaurant merely factual statements by GC in, for called Cipriani London infringed HC’s GC submitted that “by G. Cipriani” example, legal or accounting documents. 35 Community Trade Mark (CTM) number and “Managed by Giuseppe Cipriani” did The case is a clear indicator that use of ıı5824 (“the first-instance judgment”). not distinguish the origin of the services one’s own name must acknowledge how GC sought to rely on an own-name and so did not fall under Article 9(ı)(b) of the average consumer will perceive that defence. However, this was rejected on Council Regulation 207/2009/EC (“the name. In this intance, use of G. Cipriani grounds that GC was not trading or Regulation”) as no confusion would arise. led to restaurants that did not officially making the use complained of. The However, Arnold J held that the carry the Cipriani name being branded restaurant was operated by Cipriani average consumer would consider that as such, and thus risked origin confusion (Grosvenor Street) Limited, which could the statements indicated the person and encroached on HC’s rights. also not avail itself of the own-name responsible for the restaurant, such as defence as Cipriani was not its actual the chef, proprietor or manager. This Walker Morris acted for Hotel Cipriani. corporate name. was illustrated by reference to other The decision was not appealed. As a consequence, Arnold J made an restaurants that make similar use order (“the Order”) prohibiting GC to illustrate origin, such as Gordon from, inter alia, infringing HC’s CTM. Ramsay at Claridge’s. About the Cipriani London was renamed GC submitted that he was well author C London and, in theory, the dispute known as a manager and proprietor was resolved. However, following several of restaurants, so the signs were merely complaints by HC that the Order was truthful statements describing his role. not being complied with, HC sought However, this was rejected as GC had clarification that use of “by G. Cipriani” failed to provide evidence of reputation on the windows and menus of C London in the UK. and a sister restaurant – Downtown Mayfair – breached the Order. Point of impact GC then applied for a declaration that Given the low distinctiveness of Katy Cullen his future use of a logo incorporating the C London and Downtown Mayfair is a Registered Trade “Managed by Giuseppe Cipriani” restaurant names, it was held that use of Mark Attorney and (shown above right) on the window, “G Cipriani” and “Giuseppe Cipriani” Solicitor with Walker Morris menus and websites of C London, had greater impact, such that Cipriani katy.cullen@ and a similar version for Downtown may become a de facto part of the walkermorris.co.uk Mayfair, would not breach the Order. restaurant names. This was supported itma.org.uk May 2013 Case in point: [2013] EWHC 109 (Ch), A & E Television Networks LLC and another v Discovery Communications Europe Ltd, High Court, 1 February 2013 A&E complaint is history Trying to limit use of a descriptive term turned out to be a hopeless cause. Giles Parsons explains why

he Claimants, AETN, run the judgment indicates that he came to • Section 11(2) of the Trade Mark T“History” television channel, the case with some knowledge of the Act 1994: “A registered trade mark previously known as “The History services involved. is not infringed by… (b) the use Channel”. The Defendant runs the of indications concerning the kind, “Discovery Channel” in the UK, as History is descriptive quality, quantity, intended purpose, well as several other channels. When, The case both in trade mark value, geographical origin, the time of in 20ı0, the Defendant renamed its infringement and in passing off was production of goods or of rendering “Discovery Knowledge” channel decided on the basis that the word of services, or other characteristics of “Discovery History”, the Claimants “history” is descriptive, and, in any event, goods or services… provided the use objected and ultimately sued for trade there was no likelihood of confusion. is in accordance with honest practices mark infringement and passing off. The key elements of the law relevant in industrial or commercial matters.” The Claimants asserted three marks: to the decision are set out in: From the start, the judge’s view a UK word mark for THE HISTORY • The decision on Office Cleaning was that: “it is difficult to see that the CHANNEL in classes 38 and 4ı, a Services v Westminster Window and word ‘HISTORY’ on its own is doing Community Trade Mark (CTM) for General Cleaners (1946) 63 RPC 39, anything other than identify the nature THE HISTORY CHANNEL in classes which states in relation to passing off of the operation, that is to say delivery 9, ı6, 38 and 4ı, and a CTM for a device that “where a trader adopts words in of history-related programmes...” including the word HISTORY (shown common use for his trade name, some He did not find that the evidence opposite), again in classes 9, ı6, 38 and 4ı. risk of confusion is inevitable. But that showed any likelihood of confusion, 36 The case was heard by Peter Smith J, risk must be run unless the first user and found support for this primary a military history enthusiast whose is allowed to monopolise the words.” conclusion in the Claimants’ lack of Case comment

action against the BBC when it broadcast throwing those witnesses to the wolves the channels UK HISTORY and UKTV without preparing them is one of the HISTORY. While, on the facts, this may many failings of the use of witness have shown that the Claimants knew statements… hopefully these kind of they had no case, it would be worrying exercises will in the future be confined if a rights-holder’s failure to pursue every to the bin, marked ‘Irrelevant and not infringement was taken to be a sign that to used under any circumstances’.” it did not believe in its brand. It also The only evidence the judge really became apparent at trial that the member considered was the evidence given live of the UK Claimant’s board representing at court, and this did not show that BSkyB (a 50 per cent shareholder in the taken are quite different, one is left with viewers were confused into believing UK Claimant) did not consider that the the impression both judges would have “Discovery History” was in some way Claimants’ case had merit. arrived at the same outcome. associated with “History”. With nothing to dissuade him from his original view, the judge found that: Criticism of evidence Indemnity costs “the use of the word ‘HISTORY’ does The judge was very critical of the Early in the proceedings the Defendant not infringe the registered marks... Claimants’ witness evidence, which made a “drop hands” offer, which was as the word HISTORY in my view was heard in July 20ı2, before the rejected. The parties combined spent in the context of the channel identifies Court of Appeal’s landmark judgment £3 million taking the matter to trial. the characteristics of the goods, concerning questionnaire evidence in In light of the offer and the weakness namely a channel which provides Marks & Spencer plc v Interflora Inc of the case (“it was hopeless to expect history programmes.” and another [20ı2] EWCA Civ ı50ı. any court would stop the use of the It is interesting to contrast the judge’s As the evidence had been given, he word ‘History’”), the judge awarded approach to a section ıı(2) defence with considered it, but he was clear that: the Defendant costs on an indemnity that of Arnold J, who often focuses on “had the Marks & Spencer case been basis from the point that the drop hands whether or not use is in accordance available to me at the trial I would offer expired. with honest practices. In Samuel Smith have not allowed any of the evidence This decision shows how much Old Brewery (Tadcaster) v Lee [20ıı] to be introduced because it is plainly Marks & Spencer v Interflora has EWHC ı879 (Ch), Arnold J set out ten of no probative value when analysed.” changed how judges approach evidence, factors he believed were relevant when The Claimants had conducted and claimants in trade mark cases will assessing whether use is in accordance a questionnaire and analysed the need to find new ways to show a 37 with honest practices, and he has results, subsequently contacting likelihood of confusion between trade applied these in subsequent decisions, some participants. Ultimately, the marks. The problems of large evidence- including Starbucks (HK) Ltd v British Claimants produced witnesses for gathering exercises will be compounded Sky Broadcasting Group plc [20ı2] cross-examination, witness statements by the new cost rules. The case is also EWHC 3074 (Ch). That case, like this (unsigned and signed) from witnesses not a reminder that descriptive marks one, involved a device incorporating a made available for cross-examination, and only grant a limited monopoly. common word – in Starbucks’ case, the completed questionnaires and attendance word “Now”. Arnold J held that this notes from four other respondents. device mark was invalid, and that, had The judge was unimpressed: witnesses About the it been valid, it would have had only should not have statements taken if “needlepoint” or “eggshell” distinctive they are unaware that they could be author character, so there was no likelihood of used in evidence; witnesses should be confusion. However, if there had been allowed to object to their evidence prima facie infringement, Arnold J said being entered; and “too often witness the Defendants could not use a section statements are drafted by solicitors who ıı(2) defence because their use did not put words in their mouth to achieve a accord with honest practices: Sky knew better result”. This was particularly the of the Starbucks CTM before launching case with the evidence untested under its service, the use was trade mark use cross-examination, of which the judge (and, in contrast, not descriptive), and said that “there are so many questions Giles Parsons Sky’s use interfered with the Claimant’s over the evidence that I can attach no is a Solicitor at ability to exploit its mark. weight to them”. Browne Jacobson LLP In contrast, here Peter Smith J did He elucidated on this further in his gparsons@browne not consider whether the marks had costs judgment, saying: “The purpose of jacobson.com only limited distinctive character, and my criticism is to put down a marker Giles specialises in IP mentioned the words “honest practices” for all of the legal profession to take agreements and disputes only when quoting from statute. Instead, on board, that witness statements relating to patents, trade he took the view that the Claimants had are supposed to be live evidence marks and designs, as well not met their obligation to show that of witnesses. Drafting long witness as domain name disputes the use of the word “history” was not statements with craggy submissions and and reputation management. merely descriptive. But while the routes masses of documents and then, in effect, itma.org.uk May 2013 Case in point: T-225/06 RENV, Budějovický Budvar v OHIM – Anheuser-Busch (BUD), General Court, CJEU, 22 January 2013 Last orders for Bud battle?

Katie Goulding opens up the latest, and 3838 possibly last, chapter in what has been a heroic fight of beer brands

ore than a decade has passed convention). This comment focuses appellation of origin” as required Msince Czech brewer Budeˇjovický on the second basis of opposition; the by Article L.ıı5-5(4) of the French Budvar (“Budvar”) filed oppositions Second Board of Appeal of OHIM Consumer Code. against four Community Trade Mark having concluded that Article 8(ı)(b) Decisions 4474/2004, 4475/2004 (CTM) applications of brewing giant was no longer being referred to by and ıı7/2005 were dismissed. Applying Anheuser-Busch (“AB InBev”), for the Budvar in the course of proceedings. by analogy the provisions relating word mark BUD and BUD (figurative) to “genuine use” of an earlier trade in classes ı6, 2ı, 25, 32, 33, 35, 38, 4ı Opposition Division mark when such proof is requested and 42, collectively. However, on The opposition filed against one of in opposition proceedings (Article 43(2) 22 January 20ı3, the General Court the applications was partly successful and (3) CTMR, now Article 42), the (“GC”) delivered a judgment that in respect of “restaurant, bar and Opposition Division was not satisfied may just be the call for last orders pub services” in class 42, which the that Budvar had established that the on this long legal battle. Opposition Division considered appellation of origin BUD was a sign confusingly similar to “beers” (see that had been used in the course of trade Basis of opposition further Decision 2326/2004). However, of more than mere local significance. The original grounds raised by Budvar while it was satisfied that Budvar had a were: (i) Article 8(ı)(b) of Council right to the appellation of BUD under Second Board of Appeal Regulation (EC) 207/2009 (then 40/94) the Lisbon Agreement, it concluded Budvar appealed the decisions of the (“CTMR”) relying on international that Budvar had failed to show the other three oppositions; these were registration 36ı566 for BUD (figurative) scope of protection afforded to it under dismissed on the following grounds: covering “all types of light and dark the national laws of Italy and Portugal. i) given that BUD is neither the name beer”, designating Austria, Benelux In respect of France, the extent of of a place in the Czech Republic nor and Italy; and (ii) Article 8(4) CTMR protection had been developed in an abbreviation of the city České relying on appellation of origin BUD more detail. Nevertheless, Budvar failed Budějovice, it was difficult to see for beer in France, Italy, Portugal to demonstrate that use of the mark how BUD could be considered an (pursuant to the Lisbon Agreement) applied for on dissimilar services would appellation of origin or even an indirect and Austria (pursuant to a bilateral “alienate or weaken the notoriety of its indication of geographical origin; Case comment

ii) in agreement with the Opposition ‘The fact that a sign’s protection extends beyond the territory Division, Budvar had failed to provide evidence of use; of origin does not, as a matter of course, establish that the and finally sign is of more than mere local significance’ iii) Budvar had failed to establish that the appellation or origin entitled it satisfied that the rights had a more than the factual merits of Budvar’s plea in to prevent use of the mark applied local significance. respect of Article 8(4), following which for in Austria or France. The decision was appealed by AB the GC dismissed the actions brought AB InBev appealed the partially InBev to the Court of Justice of the by Budvar as it had failed to provide successful opposition in respect of the European Union (CJEU). Partially sufficient evidence of the sign in the above-mentioned services in class 42, setting aside the GC’s judgment, the course of trade of more than mere which was upheld by the Board of CJEU held that: local significance, more specifically: Appeal (“BoA”). A further appeal • Article 8(4), specifically the formula • No evidence of use in Portugal was by Budvar ensued. “used in the course of trade”, does not submitted; only one invoice – for the refer to “genuine use” in the sense of sale of 22.7 litres of beer – was General Court (CFI) the meaning attributed under Article produced as evidence of use in Italy. (First Chamber) 43. As correctly identified by the GC, • Only four invoices – attesting to the sale Budvar submitted a single plea in law there must be use of the earlier right of 160 litres of BUD SUPER STRONG claiming infringement of Article 8(4). in a commercial activity with a view over the course of four years – were It focused on two points thereunder, to economic advantage and not provided in respect of France, some namely the validity of the appellation as a private matter (para 142). of which were disregarded as being of origin BUD and the requirements • The fact that a sign’s protection extends subsequent to the date of the filing of laid down in Article 8(4). The GC held beyond the territory of origin does not, the application and limited to deliveries that the BoA erred in law as follows: as a matter of course, establish that to only three towns in France. • BUD was effective as an appellation the sign is of more than mere local • In respect of Austria, the evidence of origin and the BoA did not have the significance. There must be a real comprised a mixture of invoices, jurisdiction to question the validity of presence in the relevant market (para employee and third-party affidavits, that right. It was erroneous to consider 157). This goes to the core of the web extracts and articles covering the the rights under the Lisbon Agreement essential function of the sign, which is in launch of a beer called BUD SUPER and bilateral convention as being of the present case to enable the public to STRONG. The combination of “secondary importance”. Given that identify the geographical origin of the non-independent affidavits enjoying 39 ongoing proceedings in France and goods and more generally to protect low probative value and a sales volume Austria on the validity of these rights the legislative aim of Article 8(4) of approximately 3,500 litres of BUD had led neither to a definitive finding (to prevent an earlier right that is not SUPER STRONG over a period of five of invalidity nor to a final denouncing significant from preventing registration years was insufficient to prove use, of the convention, the national law of a new CTM). Accordingly, not only particularly in a market where the should have been applied. must the sign be used in a significant average annual beer consumption • It was erroneous to apply the threshold manner in the course of trade, it must between 1980 and 1999 was of “genuine use” by analogy to Article also be used in a substantial part of nine million hectolitres. 8(4). Evidence of use in a commercial the territory in which it is protected. Each party was ordered to bear activity with a view to economic Next, the CJEU considered that its own costs. Budvar was given until advantage would suffice – a threshold the GC had erred in law in reasoning 22 March 20ı3 to file an appeal to Budvar had met. It was enough to that use in a territory other than that the CJEU. With no filing at the time show use before publication and in which the appellation of origin of writing, it seems final orders may not necessarily before the date was protected would suffice. In fact, now have been called. of the contested applications. exclusive rights are conferred upon • In carrying out examinations of the use the sign only in respect of the territory About the in each of the individual territories, the in which it is protected (para ı62). As BoA failed to recognise that protection such, a separate assessment must be author can be enjoyed in one territory, even carried out for each territory. where it is only used in another. Moreover, to discourage the artificial • It misinterpreted the condition of use of a sign between the filing date “significance”. According to the and the date of publication of the GC, “significance” referred to the CTM in order to create a claim that significance of the sign concerned, would not otherwise have existed, the which covered the geographical extent evidence must establish use of the sign of the sign’s protection, rather than the before the filing date and not the later significance of its use. In as much as the date of publication. Katie Goulding protection of the appellation of origin is a Trainee Attorney at under the Lisbon Agreement and Case returned Harrison Goddard Foote bilateral convention extends beyond The case was returned to the GC [email protected] their territory of origin, the Court was (Second Chamber) for assessment of itma.org.uk May 2013 Case in point: T-544/11, Spectrum Brands (UK) Limited v OHIM, CJEU, General Court, 16 January 2013

A new wrinkle? The dictionary played a definitive part in the Steam Glide decision, writes Philippa Caddick

n 2006, Salton Europe Limited filed between the word(s) and the mere sum assessment of the general interest Ia Community Trade Mark (CTM) of its parts. underlying Article 7(ı)(c), the Court application for the mark STEAM In reaching that decision, the Court stated that while that article pursued GLIDE for a range of goods in class 9, relied on the definition provided by the an aim in the public interest – to keep including “electric irons”. Salton Europe Oxford English Dictionary of the words descriptive signs free for all to use – it subsequently became Russell Hobbs “steam” and “glide”. The Applicant put was not necessary to assess, by analysing Limited, which later transferred the forward rather fanciful arguments stating the product market in question, whether disputed CTM to the Applicant, that in relation to the goods in question, other traders might have an interest Spectrum Brands. Registration was “glide” is evocative and creates an image in using the sign at issue in the future. subsequently granted for all goods and of an iron “hovering over the fabric, In this regard, it was necessary only to Philips Electronics NV, the Intervener, without touching it”. This argument consider whether there was a direct and filed an application for invalidity on was rejected by the Court, relying on specific relationship between the sign the grounds that the trade mark was one of the multiple definitions provided and the goods. non-distinctive and descriptive, in breach for “glide” and concluding that “the 4040 of Articles 7(ı)(b) and (c) of the CTM smooth movement of an iron across Infringement of Article 7(1)(b) Regulation (“CTMR”). clothes, which results from the steam”, The Court reaffirmed that to be in The Cancellation Division of OHIM corresponded directly to what the breach of Article 7(ı) it is sufficient that rejected that application and the average consumer would expect only one of the grounds applies, and Intervener appealed to the First Board from the goods in question. where this is the case it is not necessary of Appeal. That appeal was successful on Accordingly, the two words on to assess whether a mark does or does the ground that the mark “steam glide” their own were descriptive and, when not infringe any of the other grounds was descriptive, being made up of two viewed as a whole, there was nothing within the article. In this instance, the English words, both of which refer unusual in the combination of the mark STEAM GLIDE was held to be directly to the nature and purpose of words. Overall, there was nothing descriptive under Article 7(ı)(c) and the goods in question. The Board of to prevent the expression from being therefore also non-distinctive under Appeal ruled that, taken as a whole, the understood clearly and directly by the Article 7(ı)(b). mark “constitutes an immediate, direct average consumer, and as such the mark This case is a fairly straightforward, and easily understandable indication” was descriptive under Article 7(ı)(c). but no less noteworthy, example of a that the goods, being irons, emit steam trade mark that falls on the wrong side and are intended to move smoothly Public interest of descriptiveness. It is also interesting across clothes. In response to the Applicant’s plea that due to the reliance placed by the Court the Board of Appeal had not expressly on the dictionary definitions provided General Court action referred to the reasons supporting its by both OHIM and the Intervener. The Applicant filed an action for the annulment of the Board of Appeal’s decision, claiming infringement of Articles 7(ı)(b) and (c): Philippa Caddick is an Associate About the at Edwards Wildman Palmer UK LLP author Infringement of Article 7(1)(c) [email protected] The Court, in dismissing the action, Philippa is a qualified Trade Mark Attorney. agreed with the Board of Appeal, Her practice focuses on national and relying on the well-established line international trade mark law, including of jurisprudence which states that a oppositions, revocations and invalidity mark that consists of words, each of actions, negotiation of settlements, brand which is descriptive, is itself descriptive clearance, registrations and prosecutions unless there is a perceptible difference of trade mark portfolios. case comment Case in point: T-54/12, K2 Sports Europe GmbH v OHIM and Karhu Sport Iberica, SL, General Court, 31 January 2013 K2 Sports faces uphill struggle The sport brand’s fight against a figurative element was ultimately a failure, reports Mark Caddle

n 23 December 2008, Karhu the alphabet. Therefore, consumers will OSport Ibérica, SL (“Karhu Sport”) not directly associate that element with applied to register the mark shown K2. Furthermore, the General Court below in classes ı8, 25 and 28 as a stated that the figurative element is an European Community Trade Mark abstract device that confers dynamism; (“the Application”). K2 Sports Europe it does not suggest an additional letter. GmbH (“the Opponent”) opposed the In carrying out a global assessment, Application on the basis of its German the General Court drew these conclusions: and international trade mark registrations 1) Visually, the signs are different as the for the word mark K2 SPORTS in classes figurative and “K” elements dominate ı8, 25 and 28 (“the Opponent’s Marks”). the marks. The term SPORT will not The Opponent’s international registration influence the perception of consumers has effect in Denmark, Spain, France, as it is not a decisive element and Ireland, Italy, the Czech Republic, 2) It misinterpreted how the figurative appears at the end of the marks. Greece, Austria, Poland, Portugal, element of the Application would 2) Phonetically, although the identical Finland, Sweden and the UK. be perceived by the public. element SPORT will be pronounced the The Opposition Division of OHIM 3) It did not carry out a global assessment same, the alphanumerical combination rejected the opposition on the basis that of the signs. K2, at the start of the Opponent’s marks, there was no likelihood of confusion 4) It broke down the marks in an artificial will create the impression of K2 SPORTS. in respect of the marks at hand. The manner in so far as it compared K2 On the other hand, the figurative element Opponent lodged an appeal against with the figurative element of the mark of the Application will not be pronounced, this decision. The Board of Appeal also applied for, without reference to the and this results in the Application being 41 rejected the opposition on the basis term SPORT. The Opponent submitted pronounced merely as SPORT. that, despite the fact that the goods that the figurative element would be 3) Conceptually, the figurative element of covered by the marks were similar or perceived by the public as being a Karhu Sport’s mark cannot be deemed identical, there was no likelihood of graphical representation of the letter to be conceptually similar to K2 as it does K and, therefore, consumers may not resemble a letter K. SPORT was said The Karhu Sport mark believe this to be a sub-brand belonging to be of weak distinctive character and to the Opponent. did not have a bearing on the conceptual The General Court dismissed the similarity of the marks. appeal. In agreeing with the decision The Opponent’s appeal was unsuccessful of the Board of Appeal, it noted that and the General Court ordered it to bear the element SPORT is descriptive of the costs in this matter. confusion between them. Furthermore, the goods claimed in class 25 because the signs were deemed to be dissimilar it brings to mind clothes for sporting as the only common element was the activities or clothes in a sporting style. About the word SPORT, which was held to be Its descriptiveness also applies to some descriptive of the goods at issue. The of the goods in class ı8 and sporting author Board also noted that the distinctive articles in class 28. On this basis, SPORT elements of the marks – K2 and the could not be considered to be a dominant figurative element that appeared in the element of the marks and was deemed Applicant’s mark, respectively – had to be irrelevant when considering the no common characteristics. public’s perception of the marks. The crux of the decision focused on General Court the manner in which the Court would The Opponent filed an appeal to the assess the alleged similarity between the General Court, criticising the Board figurative element and the K2 element. Mark Caddle of Appeal on the following grounds: The Court held that the Board of Appeal is a Trainee Trade 1) It did not take into account that correctly assessed these and stated that the Mark Attorney at the identical nature of the goods figurative element in the Karhu Sport Withers & Rogers LLP reduces the differences between mark looks more like “two dynamic, [email protected] the marks. curved brush strokes” than a letter of events 2013 ITMA

eventsMore details can be found at itma.org.uk Glasgow is hosting the Design and Copyright Law update

Date Event Location CPD hrs

4-8 May INTA Annual Meeting Dallas, Texas, US

21 May ITMA London Evening Meeting* Royal College of Surgeons, London 1

6 June ITMA Glasgow Talk Murgitroyd & Company, Glasgow 1 Design and Copyright Law update

19-22 June ECTA Annual Conference Bucharest, Romania

25 June ITMA London Evening Meeting* Royal College of Surgeons, London 1 Abuse of process in trade mark litigation Michael Edenborough QC, Serle Court 2 July ITMA Webinar 1 Commissioners for Oaths Ella Imison, Scrivener Notary, Imison & Co 42 9 July ITMA Summer Reception** Stationer’s Hall, London

23 July ITMA London Evening Meeting* Royal College of Surgeons, London 1

12 September ITMA Edinburgh Talk Burness Paull & Williamsons, 1 Certification marks – Edinburgh a case study on Harris Tweed

24 September ITMA London Evening Meeting* Royal College of Surgeons, London 1

10 October ITMA Autumn Seminar* ICC Birmingham tbc

29 October ITMA London Evening Meeting* Royal College of Surgeons, London 1

7 November ITMA Glasgow Talk Brodies, Glasgow 1 Brand protection for Glasgow Commonwealth Games 2014 and IP considerations in the Scottish independence debate

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26 November ITMA London Evening Meeting* Royal College of Surgeons, London 1

10 December ITMA Christmas Lunch** InterContinental, London

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