Trade Mark Newsletter March 2003
Contents
Counterfeiting - Is There A Human Rights
Defence?
What Is "Genuine Use" Of A Mark? -
The ECJ Decision In "MINIMAX"
New Approach To Assessment Of Damages In Trade
Mark Infringement Cases?
Recognition Not Enough For VIENNETTA Ice Cream
Shape
DAVIDOFF & CIE SA., ZINO DAVIDOFF SA V GOFKID
LTD - Protecting Marks With "Reputation"
Stop Press: D Young & Co Now Filing Registered
Community Designs
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Counterfeiting - Is There A Human
Rights Defence?
There have recently been a number of proceedings brought before
the courts in the United Kingdom where individuals have been prosecuted
for dealing in counterfeit goods under the criminal provisions of
the Trade Marks Act 1994. Following the adoption in the UK of the
European Convention on Human Rights, a novel defence has been raised
by defendants, namely that the UK law in this field is in breach
of the Convention.
Under Art.6 of the Convention, a legal onus may not be placed on
a defendant to prove the elements of his defence, even where he
only has to do so upon the balance of probabilities. In the case
of R v Johnson and Others which came before the Court of Appeal,
the judges managed to distinguish the point on the legal onus referred
to above by claiming that an evidential onus may be placed upon
the defendant to disclose a sufficient case for the prosecution
to disprove. This evidential, rather than legal, onus did not, in
the Court’s view, breach the provisions of the Human Rights
Convention.
This case was also useful to confirm two other important points.
Firstly, in a case where the defendant is being prosecuted under
the criminal provisions of the UK Trade Marks Act, if the use complained
of would not amount to an infringement under the civil provisions
of the Act, such use cannot amount to a criminal offence. That is
to say there is no lower test for infringement under the criminal
provisions in s92. Secondly, the prosecution is not required to
prove in every case that there has been a civil infringement. Instead,
the onus lies with the defendant to raise an arguable defence.
The decision in this case and the more recent Court of Appeal decision
in Regina v S are good news for brand owners. They clearly establish
that there is no loop hole for criminals to exploit when they have
been caught red handed with counterfeit goods. Moreover, brand owners
are reminded that criminal prosecution can be brought by Trading
Standards Officers where there will be little, if any cost to the
trade mark owner.
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What Is "Genuine Use" Of
A Mark? - The ECJ Decision In "MINIMAX"
Once a trade mark has been registered for five years, whether at
Community level or at National level in European Union member states,
it is potentially vulnerable to attack by third parties if it has
not been used for the registered goods or services. If an attack
is made, the onus is on the proprietor to demonstrate that he has
made “genuine use” of his mark (or that such use has occurred
with his consent). If no use has occurred, the proprietor must show
proper reasons for non-use.
There has been much speculation as to what satisfies the “genuine
use” criterion in the Community Trade Mark Regulation and National
Law. Some commentators had suggested that the level of use required
must be more than minimal in order to meet the test; this line of
thought was prompted by the use of terms such as “effectivo”
or “serio” in local language translations of the CTM Regulation.
These points have now been the subject of guidance from the European
Court of Justice in their judgment dated 11 March 2003 in case C-40/01
(Ansul B.V. v. Ajax Brandbeveiliging B.V.).
This case was referred to the European Courts by the Netherlands
Supreme Court. The trade mark in issue, MINIMAX, was registered
for fire extinguishers and associated products by Ansul. Their regulatory
authorisation to sell these goods had expired some years previously,
but they continued to supply components and maintenance services
to their customers who had already purchased MINIMAX branded fire
extinguishers. Ajax challenged the Dutch registration of MINIMAX
on grounds of non-use in order to facilitate its own sales of fire
extinguishing goods in the Benelux market. At first instance, the
non-use challenge was unsuccessful and a counter-claim by the trade
mark proprietor for infringement of its rights was upheld, thus
preventing Ajax from entering the Benelux market under the MINIMAX
name.
Ajax appealed to the Regional Court in the Hague, which reversed
the First Instance decision, finding that Ansul had not made “normal
use” of their mark, because their object was not to create
or preserve an outlet for fire extinguishers. The Benelux statute
referred to “normaal” as the standard of assessment, hence
use of this term in the Regional Court’s decision. The registered
proprietor then appealed further to the Supreme Court in the Netherlands,
which provided its own opinion on what would be considered “normal
use”; in its view, this assessment had to take account of what
was considered to be usual and commercially justified in the business
sector concerned. The object of such use would be to create or preserve
an outlet for trade mark goods and services and not simply to maintain
the rights in the trade mark. In making this assessment, account
should be taken of the kind, extent, frequency, regularity and duration
of the use in conjunction with the type of goods or service and
the kind and size of the undertaking.
Nevertheless, the Supreme Court felt that it would be necessary
(in order to ensure that its interpretation of the Dutch law is
compatible with that in the Harmonization Directive) to request
the ECJ for a preliminary ruling on the meaning of the term “genuine
use” in Article 12(1) of the Harmonization Directive (on which
the new Benelux law was based). It asked the ECJ if the guidelines
it had formulated were a correct criterion for assessing the meaning
of “genuine use”.
In its judgment, the ECJ endorsed the need for an autonomous and
uniform interpretation of similar legal terms in the Harmonization
Directive and Community law, particularly with regard to the central
tenets of such laws. It affirmed specifically that it was the Community
legislature’s intention that the maintenance of rights in a
trade mark should be subject to the same conditions regarding genuine
use in all member states, so that the level of protection such trade
marks enjoyed did not vary according to the legal system concerned.
It then went on to state that “genuine use” must be understood
to denote use which is not merely token, serving solely to preserve
the rights conferred by the trade mark. Instead, it must be consistent
with the essential function of a trade mark as a guarantee of origin,
distinguishing the registered owner’s goods or services from
those of the competition.
As such, the Court decided that any use must be made on the open
market for the goods or services concerned, i.e. not just internal.
It must therefore relate to goods or services already marketed or
about to be marketed and for which preparations by the undertaking
to secure customers are underway, particularly in the form of advertising
campaigns. The Court affirmed that such use could be made by the
trade mark owner or by a third party with the owner’s consent.
The overriding consideration is whether the commercial exploitation
of the mark is real and this must be viewed in relation to the relevant
economic sector, the nature of the goods and services at issue,
the characteristics of the market concerned and the scale and frequency
of use. Nevertheless, it is not necessary for the use to be quantitatively
significant in all cases to be genuine; depending on the nature
of the market, limited sales may still be sufficient to establish
genuine use. The Court specifically affirmed that even if the goods
in respect of which the mark was registered are no longer available,
some continued use of the mark, e.g. in relation to spare parts
or goods or services directly related to the registered goods, if
intended to meet the continuing needs of customers (such as after-sales
service), is sufficient to constitute genuine use.
The ECJ decision, while helpful, still leaves plenty of room for
argument in individual cases as to whether the use relied on by
the registered proprietor is, in fact, “genuine”. It seems
clear, however, that purely internal preparations for marketing
goods or services are not now sufficient; there must be some type
of public use of the mark. Moreover, the intention behind such use
must be to create or maintain a share in the market for the goods
or services for which it is registered. Clearly, token use which
is only aimed at maintaining a registered trade mark is not adequate
or sufficient. At the same time, if there is limited use on a sporadic
basis, providing that this can be justified as normal within the
relevant sector, this will be potentially acceptable.
In addition, it appears that certain types of use on ancillary
goods or services which are designed to maintain or meet the needs
of customers for the goods previously sold under the brand are,
in themselves, sufficient to meet the “genuine use” requirement.
This is somewhat problematic however, if the registered mark does
not cover the specific goods (e.g. spare parts or repair services
which are still being offered under the brand). There is no provision
in UK national law which indicates that use on ancillary goods or
services should be accepted as maintaining the registered mark when
no use on the actual goods for which it is registered can be demonstrated.
The ECJ appears to suggest that this “ancillary” use should
be deemed to be use of the registered mark for the actual goods;
this is a surprisingly liberal interpretation of the Harmonization
Directive, but something which trade mark owners will doubtless
welcome.
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New Approaches To Assessment Of Damages
In Trade Mark Infringement Cases?
Reed Executive PLC and Reed Solutions PLC v. Reed Business Information
Limited, Reed Elsevier (UK) Limited and totaljobs.com Limited
The traditional approach in trade mark cases has been to assess
damages for infringement according to the extent of the claimant’s
loss. In the event that no loss can be shown, it was generally thought
that no damages could be recovered.
The recent High Court decision in the Reed case (currently on appeal
to the Court of Appeal) has departed from this approach and appears
to adopt the “user principle” (now well established for
patent infringement cases), where damages are assessed according
to the extent of the defendant’s use of the infringing mark,
irrespective of whether the complainant can show loss. In essence,
the Courts award royalty-type damages to the claimant.
This principle lends itself easily to cases of patent infringement,
since every case of an infringing patent product must involve use
of the patent monopoly. By contrast, of course, not every sale of
an article bearing an infringing trade mark is necessarily made
because of use of that mark. For this reason, it had previously
been doubted whether the “user principle” of assessment
had any application in trade mark law.
In Reed however, an enquiry as to damages was ordered by Pumfrey
J., regarding the defendant’s visible and invisible use (by
means of metatags) of the claimant’s mark REED on the defendant’s
website, totaljobs.com. Confusion was held to be evident in cases
where Internet users entering a “REED” search term clicked
through to the totaljobs.com website. On the evidence however, such
incidents of confusion were negligible; as such, the claimant would
be unable to claim damages for lost sales under traditional trade
mark principles. Nevertheless, Pumfrey J., did not consider proof
of actual loss to be necessary and applied the user principle to
order the enquiry into both visible and invisible usage of the infringing
mark. The decision of the Court of Appeal is awaited with interest.
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Recognition Not Enough For VIENNETTA Ice Cream Shape
The test for deciding the registerability of “shapes”
as trademarks (and indeed the extent to which any product shapes
can be protected as trademarks) may be clarified by the European
Court of Justice (ECJ) as a result of a referral by Jacob J following
his preliminary decision in the English High Court in the case of
Societe de Produits Nestle SA v Unilever Plc (the VIENNETTA case).
The case involves oppositions by Nestle to trademark applications
filed in the UK in 1994 by Unilever to register the shape of its
VIENNETTA ice cream dessert product; separate applications were
filed for the milk chocolate and white chocolate versions.
The VIENNETTA product was first launched in the United Kingdom
in 1982. By the date of the applications Unilever had sold nearly
170 million packs. The product is widely available in most supermarkets
and similar food outlets throughout the United Kingdom.
Unilever’s survey evidence established a high degree of recognition
of the shape of their goods. However, the judge took the view that
consumer recognition of the shape alone was not sufficient to establish
that customers considered the shape itself as an indication of trade
origin. Thus it did not function as a trade mark.
According to the judge “Many traders can show they have sold
a product which is more or less recognised by the public. Many motor
car shapes, for instance, are widely recognised. Likewise things
like furniture and toys. If, once the public recognises the shape
and knows it comes from a particular trader, the trader can, for
that reason alone, register the shape as a trade mark, the trade
mark registers of Europe will become registers of permanent monopolies
in designs as well as registers of trade marks”.
The judge also expressed surprise that the opponents had not originally
pleaded Section 3(2)(c) of the UK Act which prohibits trademark
registration of a sign “consisting exclusively of the shape
which gives substantial value to the goods”. The judge thought
it clearly arguable that as essentially an aesthetic creation the
appearance of the VIENNETTA ice cream added value to the product.
Unilever’s survey evidence (which showed those polled pictures
of four ice cream desserts) established a high degree of recognition
of the shape. Some of those polled identified one of the other competing
products as VIENNETTA. Rather than assisting the applicants, the
judge expressed concern about the scope of any resulting registrations,
and concluded that the applicants could not say the shape was distinctive
of only one source or origin.
This case is clearly disappointing for brand owners with products
whose shape or get up attracts high levels of “lookalike”
activity. It appears to ignore the idea that in the modern marketplace
several “signs” act as indicators of origin in purchasing
situations.
Despite the fact that the UK Trade Marks Act provides that a trade
mark may consist of inter alia the shape of goods/their packaging,
this and other recent cases appear to be judicial attempts to keep
design matter (even in the context of well known brands) outside
the trademark system.
The issue has been referred to the ECJ for clarification on whether
the approach taken is correct or if substantial recognition might
in itself be enough, and whether the “misattribution”
issue was relevant when assessing distinctive character.
In the meantime, making timely Registered Design (and now Community
Registered Design) applications at an early stage, i.e. where the
novelty criteria are met, are advisable. Attempts to extend protection
for product shapes beyond the maximum 25 years Registered Design
Protection by trademark applications/registrations may be difficult
to sustain. Deliberate redesign/relaunch strategies (with new Registered
Design applications) would be a commercial option to consider.
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DAVIDOFF & CIE SA., ZINO DAVIDOFF
SA V GOFKID LTD - Protecting Marks With "Reputation"
This case was referred to the European Court of Justice for a ruling
on the correct interpretation of Article 5(2) of the Trade Marks
Directive. The Directive provides that Member States can give an
additional level of protection to well-known marks with a “reputation”
under their National laws. Trade mark proprietors can then prevent
third parties from using in the course of trade any sign which is
identical with or similar to the prior registered trade mark in
relation to goods or services which are not similar to those for
which the earlier trade mark is registered. As well as demonstrating
that the registered trade mark has a “reputation”, the
trade mark proprietor must show that use of the later sign “without
due cause, takes unfair advantage of, or is detrimental to, the
distinctive character or the repute of the trade mark”.
Commentators have queried whether such ‘well known’ marks
can also benefit from the protection conferred by Article 5(2) if
the offending sign is used in relation only to identical or similar
goods, or whether the protection is restricted to situations in
which the respective goods are dissimilar to those covered by the
earlier registration. This question was recently referred to the
ECJ by the German Court in the Davidoff vs. Gofkid case, in which
Davidoff objected to the use and registration in Germany of the
mark DURFFEE by Gofkid. DAVIDOFF is of course a “well-known”
mark to most consumers.
The Advocate General’s Opinion (issued in March 2002) concluded
that the provisions of Article 5(2) could not be interpreted as
covering similar goods, as the wording of that provision clearly
states that the respective goods must be dissimilar. In addition,
wording that could have expanded the scope of protection to identical
or similar goods was rejected during the drafting of the Directive,
adding force to the view that such extra protection was not intended.
The Advocate General pointed out that the provisions of Article
5(2) have a different basis to those of Article 5(1)(b) (which provides
that a trade mark proprietor shall be entitled to prevent third
parties from using a sign which is identical/similar to the trade
mark in question where there is identity or similarity of the respective
goods/services and a likelihood of confusion on the part of the
public - which includes the likelihood of association between the
sign and the trade mark). There is no parallel requirement for a
likelihood of confusion under Article 5(2); rather, the test is
whether or not the relevant unfair advantage/detriment will arise.
Surprisingly, the ECJ decision in the case did not follow the Advocate
General’s reasoning; instead the ECJ held that Article 5(2)
of the Directive “must not be interpreted solely on the basis
of its wording, but also in the light of the overall scheme and
objectives of the system which it is a part”. Accordingly,
the correct interpretation of Article 5(2) should not lead to marks
with a reputation having less protection where a conflicting sign
is used for identical or similar goods or services than where such
a sign is used for dissimilar goods or services. Member States are
therefore allowed to provide specific protection for registered
trade marks with a reputation where a later identical or similar
mark or sign is used in relation to goods or services which are
identical with or similar to those covered by the registered mark,
even though there may be no likelihood of confusion.
This decision is somewhat surprising, because it deviates from
the precise wording of the Trade Marks Directive, and we must wait
and see how the ECJ’s comments will be interpreted by the UK
courts. However, it could clearly be advantageous for proprietors
of well-known trade marks, who may now be able to take action against
third parties using their marks in relation to identical or similar
goods notwithstanding the fact that there may be no likelihood of
confusion. It will, however, still be necessary for them to demonstrate
that unfair advantage/detriment will arise.
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Stop Press: D Young Filing Registered
Community Designs
D Young & Co are now filing Registered Community Design applications
at The Office for Harmonisation in the Internal Market (OHIM) in
Alicante. Tuesday 1st April 2003 was the first official day of operation
of the new Community system for the protection of designs.
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