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Trade Marks Newsletter

No. 49

April 2010

Article 7: Reputation and Confusion? Volvo Races Ahead While G-Star’s light fades

Editorial

Regular readers may have spotted the absence of a March edition of this newsletter. We hope that you will forgive our quiet month and having received this new look newsletter will understand our decision to delay this edition in order to announce our new brand identity, launched on 1 April.

We are committed to providing regular and reliable IP news and updates and an important element in our rebrand has been the extensive development of the resources area of our website, which has culminated in the launch of our IP knowledge bank. We welcome your feedback and the opportunity to improve the information that we publish, so if you have any suggestions please let us know. We encourage you to contact our Business Development Manager, Rachel Daniels (rjd@dyoung.co.uk), or your usual D Young & Co trade mark attorney with any comments.

We would like to thank our design team at Mytton Williams and web build team at Positive New Media for their commitment and effort in bringing this rebrand project to launch. Just as we go to press we are delighted to announce that we have once again (for the third consecutive year) been ranked as one of only two top tier UK trade mark prosecution practices Managing Intellectual Property Magazine (MIP).

One benefit of the delay to our March newsletter is that our next publication will be with you in just a month’s time. We are proud to note that our May newsletter will be our 50th edition. We would like to thank our subscribers for their continued support.

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Article 1: Colour Marks and Acquired Distinctiveness - ANDREAS STIHL AG & CO. KG Board of Appeal Decision

Richard Burton

As with more traditional trade marks, colour marks are required to indicate the origin of goodsor services, and to do so they must be sufficiently distinctive. It is apparent that the Courts have a duty not to grant rights in colour marks too readily; however, if registered, colours have the ability to overcome language barriers through visual impact and they are becoming ever more popular as a powerful marketing tool for global brands. 

In a recent decision in ANDREAS STIHL AG & CO. KG, the Board of Appeal emphasised the importance of supplying evidence of acquired distinctiveness in support of a colour mark application.

The application was for “power operated tools”, and the representation was depicted in the colours orange (for the top housing of the goods) and grey (for the bottom housingof the goods). In 2007 the OHIM Examiner notified the applicant of the refusal of the application on the basis that it was devoid of distinctive character. The Examiner said that colours orange and grey were not likely to be noticed and committed to memory as an indication of the commercial origin of the goods.

In the subsequent appeal, the appellant requested the annulment of the decision on several grounds. The key arguments were as follows:

The mark did not claim protection for the colour combination (orange and grey) per se but rather those colours as applied to the goods claimed (power operated tools)

In answer to this argument, the Board noted that the Regulation does not recognise the category of a position mark. The mark as filed would (if accepted) confer on the owner the colour combination as applied to any of the claimed goods, irrespective of which parts were actually coloured.

The colour combination was unusual and there was no reason to believe that the mark would unduly restrict the availability of colours for other competitors

The Board referred to the ORANGE case in which the Court held that although no stricter criteria applied to colour marks per se, the perception of the public is not the same as in the case of word or device marks, and the public will not necessarily perceive a colour combination to indicate the commercial origin of the goods. The Board also cited the LIBERTEL decision which held that consumers were not in the habit of making assumptions about the origin of goods based on their colour.

The appellant had been using the colour combination since 1972

The appellant invoked Article 7(3) CTMR on the basis that the mark had acquired distinctive character through the longstanding use of the colour combination. The Board said that this Article not only requires intense use of the sign by the appellant but an indication of the origin of the goods as a result of that use. Through independent statements, catalogues, evidence of distribution channels and advertising materials along with sales and market share figures, the appellant demonstrated significant use throughout the EU as the market leader.

The Board was impressed with the outcome of two market surveys which were conducted in France and Germany stating that the figures of the respondents’ answers to questions as to the origin of the goods were “impressive and came close to the maximum of what can reasonably be achieved in a market survey”. The Board found that the evidence showed that the majority of the public recognised that the colour combination had a strong affinity with the producer. Further, the results showing acquired distinctiveness in Germany and France could be extrapolated to the other Member States. Accordingly, the appellant was successful in overturning the original decision.

This follows an equally favourable outcome in a 2009 decision in which John Deere had registered the colour combination green and yellow for agricultural machines as a CTM based on acquired distinctiveness and successfully defended a cancellation action.

It was held that survey evidence did not have to be submitted for each and every member state and it is permissible to deduce acquired distinctiveness from secondary evidence such as market share, revenue and advertising expenditure.

Decisions from the ECJ suggest a fine line exists between freely making available colours for widespread use and the protection of distinct signs built up through considerable investment in advertising. It remains to be seen how this balance will develop in the future. Questions still remain over the registrability of colour registrations and each case is very much decided on its own merits; however, the Courts have at least provided clarification as to what levels of evidence are acceptable.

If you have an interest in registering a colour trade mark, please contact your usual D Young & Co advisor for more information. We have experience in successfully prosecuting such applications through to registration and recently successfully registered the colour combination of orange and blue as applied to boats for the Royal National Lifeboat Institution on the basis of acquired distinctiveness through use.

Related links

 

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Article 2: Penny Nicholls Retires

After a career in IP spanning more than 30 years, Penny Nicholls has recently retired from the firm’s trade mark practice.

Penny trained with Marks & Clerk and qualified as a trade mark attorney with Stevens Hewlett and Perkins, before joining McKenna and Co as head of their trade mark department in 1983. She joined D Young & Co in 1986 and became their first female partner in 1988. Her practice has included representation of multinational corporate clients, many SMEs and individual applicants, with a long-standing emphasis on helping charities. Penny has been involved with many “cutting edge” cases including BABY-DRY and the BUDWEISER dispute.

Penny’s achievements in the field were recently marked by the wider profession when she was the recipient of the Informa World Leaders 2009 Lifetime Achievement Award, at a ceremony held in London in December 2009. 

Penny’s plans for retirement include teaching children with learning difficulties and keeping an eye on the profession as a Board member of IPReg. She has asked us to say a big thank you to her team at D Young & Co for all their support and to send her best wishes to the many friends she has made in the worldwide IP community.

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Article 3: Opposition/Appeal Proceedings - When Can You Restrict a Specification?

Helen Cawley

A recent judgment of the General Court (Court of First Instance) in the case of Trubion Pharmaceuticals, Inc (Trubion) involving an appeal from an opposition with Merck KGaA, stated that a restriction to the specification which was made after the Board of Appeal’s decision but before the General Court’s decision cannot be taken into account.

 Trubion made a restriction to its specification after the Board of Appeal had issued its decision. On a preliminary point of appeal to the General Court, OHIM contended that the restriction of goods must be disregarded because it altered the factual content presented before the Board of Appeal and subsequently to the General Court. It argued that the court must, therefore, review the legality of the contested decision exclusively in the light of the original list of goods and services, which formed the basis of the original decision under appeal.

It was held by the General Court that OHIM had correctly contended that because the restriction was capable of altering the factual content of the disputes presented before the board of appeal, the court may not take account of it for the purpose of reviewing the legality of the contested decision. Therefore, there was no need to examine the arguments of Trubion which were based on the restriction.

Whilst Article 43 states that an applicant may at any time withdraw their application or restrict the list of goods and services.

In this situation, when is the last opportunity for an applicant to amend their specification of goods or services and have this amendment taken into account?

We believe the General Court was correct in their decision that they could not take into account the restriction made as neither the OHIM decision nor the Board of Appeal decision considered the amended specification. Therefore, it seems that the last opportunity available to an applicant to amend a specification in inter partes proceedings will be before the opposition decision is issued by OHIM.

Rule 18 states that if a restriction is made during the opposition procedure, the opponent will be given the opportunity to respond. Accordingly, if no decision has been issued, OHIM will allow the other party an opportunity to respond and a decision will be taken on the restriction made. However, once a decision has been made, all subsequent appeals will be limited to the facts of the decision and will not take account of any later restrictions made. Therefore, if you intend to restrict your specification to avoid an adverse decision, it is recommended that this is done as early as possible and certainly before a decision in the opposition proceedings has been issued.

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Article 4: €400 Million Announcement - OHIM Reviews Surplus Funds

The Community Trade Marks Office (OHIM) has announced that it has now accumulated a surplus of more than Euros 400 million!

What to do with this reserve has caused them much concern for some time.

Readers will recall that OHIM recently reduced their fees (by abolishing registration fees) but with such a large surplus there is some suggestion that past CTM Applicants may even be offered a partial refund!

To look into the issue further (and to offset what is seen as a small part of this fund), the Office has set aside Euros 50 million to finance a review of the overall functioning of the trade mark system in Europe and has appointed the Max Planck Institute in Germany to carry out this review.

The present situation is that the Max Planck Institute has contacted all the national Offices of the European Union, as well as organisations and institutes representing trade mark practitioners in all the Member States for their views. OHIM itself will also be consulted, as will a number of large multi-national corporations, as frequent users of the CTM system.

The Institute hopes to have gathered together all the information and material it requires and to make their report by the end of this year.

Clearly the Institute’s recommendations will be awaited with great interest both by the trade mark profession at large and by CTM Applicants. 

Further developments on this subject will be reported in later newsletters.

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Article 5: Confusingly Similar in Europe - FIRST and FIRST-ON-SKIN

Readers may recall that in our January 2006 newsletter we reported the landmark decision of the ECJ in Medion AG v Thompson. In that case, the ECJ found the two trade marks THOMPSON LIFE and LIFE to be confusingly similar, holding that the earlier sign (LIFE) still retained an independent distinctive role in the composite trade mark THOMPSON LIFE.

The Court decided that despite that fact that the average consumer perceives the mark as a whole and does not divide it up into constituent elements, and even if the overall impression is dominated by one particular element (for example THOMPSON in the mark THOMPSON LIFE), it is still quite possible that the earlier registered mark can retain an independent distinctive role in the composite sign.

In such a case, the use of the composite sign my lead the relevant public to believe that the goods or services in question derive, at the very least, from companies that are linked economically. On this basis, a likelihood of confusion will be established.

This reasoning seems to have been taken even further in a recent decision of the General Court (Court of First Instance), which found that the trade marks FIRST and FIRST-ON-SKIN were confusingly similar.

X-Technology R & D Swiss GmbH had filed an application for registration of the trade mark FIRST-ON-SKIN as a CTM for various goods in class 25. An opposition was launched by Ipko-Amcor BV relying on an earlier Benelux trade mark registration for FIRST, also covering goods in class 25. Although the Opposition Division initially rejected the opposition, the Board of Appeal upheld the opposition, confirming that the marks were indeed confusingly similar. This position was confirmed on subsequent appeal to the General Court.

In this case of course the goods were identical (which was undisputed by the parties). The General Court held that two trade marks may be found to be similar if they have at least one component in common. They also pointed out that where an earlier trade mark (FIRST) is entirely contained in the later mark FIRST-ON-SKIN, the marks may also be found to be similar.

The General Court also made reference to the often cited principal that the first element of a word mark dominates its overall impression as it is placed in the beginning and more likely to attract consumer’s attention. Accordingly, as FIRST was the initial element of the composite trade mark FIRST-ON-SKIN, they found this to be the dominant element of the composite trade mark. The Court found that the additional elements “ON-SKIN” and hyphens, were insufficient to distinguish the respective trade marks and avoid a likelihood of confusion despite the appreciable effect which these elements had on the overall visual appearance of the two trade marks.

It should be noted that an added factor in the FIRST/FIRST-ON-SKIN case was that the General Court took notice of the fact that companies offering goods in class 25 often sell different product lines and variations of the original mark (following the reasoning in the earlier decision of MILES/BIKER MILES).

Whilst it should be noted that the ECJ’s decision in THOMPSON LIFE and the General Court’s decision on the present case, FIRST/FIRST-ON-SKIN, both involve goods which were identical, this trend of case law from the senior courts in Europe clearly suggest that the adoption of any mark which includes an earlier registered trade mark owned by a third party becomes increasingly risky. 

This would be the case irrespective of the fame, notoriety or dominance of any additional constituent elements in the new mark. 

For many, this will be a surprising decision since despite the identical initial element FIRST, overall, FIRST and FIRST-ON-SKIN appear to have different distinctive character visually, phonetically and conceptually. Clearly assessing a likelihood of confusion with an earlier trade mark has always been a complex exercise. Despite that different overall impression, it seems that following this trend in case law, a challenge from a prior rights owner will increasingly successful in any one case where as composite trade mark incorporates the earlier right.

Useful links

www.x-technology.com

www.ipko-amcor.nl

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Article 6: The Importance of Evidence in Trade Mark Proceedings- Tommy Hilfiger v Tommy Dillinger Opposition

An opposition filed on the basis of earlier rights in the marks TOMMY HILFIGER and TOMMY to a UK application for the mark TOMMY DILLINGER seeking protection for “articles of clothing, headgear and footwear” failed on all grounds.

Could the submission of different evidence have changed the outcome? The registrar’s critical assessment of the evidence suggests this is a possibility.

Tommy Hilfiger Licensing LLC, based its opposition on the following grounds:

  • Earlier rights in UK and CTM registrations for the mark TOMMY HILFIGER for the identical goods. These registrations were more than 5 years old at the date of publication of the opposed mark so were subject to the proof of use requirement (in the UK and EU respectively)
  • Earlier rights in a UK registration for TOMMY for the identical goods (not subject to proof of use requirement)
  • That due to the similarity between the marks a likelihood of confusion existed
  • Earlier common law rights in passing off in the UK in the marks TOMMY HILFIGER and TOMMY
  • A claim that the application had been made in bad faith, on the grounds that the applicant knew that the mark belonged to the opponent because of the similarity between them, or because the mark was identical to a mark previously registered in the UK by the opponent.

Much of the evidence filed by both parties was criticised for being of poor quality (and difficult to read). It was also criticised for being irrelevant and, particularly, for not taking into consideration the “relevant period” – i.e. in terms of reputation, goodwill and the state of the market - the position at the date the application was filed, and in terms of proof of use of the earlier rights, the date of publication of the application.

The evidence filed by the opponent was sufficient to show that the mark TOMMY HILFIGER had been used in the UK during the relevant period but only in relation to articles of clothing.

Insofar as the remainder of the goods were concerned the evidence amounted to a mere assertion by the opponent that use had been made. However, since this was not challenged by the applicant the assertion was taken at face value and use in relation to all the goods covered by the earlier registrations was presumed.

This highlights the importance, if you are defending an opposition, to carefully examine the evidence filed, and challenge it where appropriate, to ensure that the earlier rights considered are as narrow as possible. If you are the opponent you must make sure that concrete evidence of all use made is submitted.

The opponent’s evidence was also sufficient to establish that the mark TOMMY HILFIGER (but not TOMMY alone) enjoyed an enhanced distinctive character as a result of the use made. In addition, the opponent had established that it had a reputation and goodwill under the mark TOMMY HILFIGER (but not TOMMY) to meet the first requirement of a passing off action.

The Registrar actually found that the mark TOMMY had a below average degree of inherent distinctive character for the goods

at issue and that the evidence filed had done nothing to show that (a) the distinctive character of the mark had been enhanced by the use made of that mark as a trade mark; or that (b) the distinctive character of the mark had been enhanced through its use as part of the mark TOMMY HILFIGER.

In view of this, and taking into account the differences between the words HILFIGER and DILLINGER, but then comparing the marks as a whole, the Registrar found that there was only a small degree of visual and phonetic similarity between the marks.

Despite the fact that they shared the identical first word and that the mark TOMMY HILFIGER was a highly distinctive mark, the distinctiveness of the marks were loaded more on the non-common element, than on the common element.

Consequently it was held that any similarities that existed were unlikely to result in a likelihood of confusion on the part of the public.

What could be done differently?

The status of the mark TOMMY was clearly critical to the outcome of this case. If it could have been established that TOMMY, in itself, was highly distinctive for the goods in question, and/or (but preferably both) that the element TOMMY within the mark TOMMY HILFIGER played a dominant role in the distinctiveness of the mark, the opponent’s chances of success would have improved dramatically.

The position would also have been better had focused evidence on the likelihood of confusion been adduced.

What is the best way to take cases forward where evidence is involved?

First, look at what you need to prove.

Second, identify the evidence needed to prove it. Don’t feel that quantity of evidence will necessarily do the job. Quality is much more important.

Thirdly, make sure that the evidence relates to the relevant period.

Collecting and collating evidence is an expensive, and time consuming process. It is difficult for brand owners to keep records and materials relating to use made over time as internal resources and physical space may be limited.

Useful links

D Young & Co has developed CLIENT COLLABORATION, an electronic system which can be used by clients to store materials to be used in evidence should that be required. Contact us for further information.

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Article 7: Reputation and Confusion? Volvo Races Ahead While G-Star’s light fades

Gemma Kirkland

The question of whether confusion is necessary in establishing a claim of unfair advantage or detriment under Article 8(5) CTMR has been discussed in two recent cases which resulted in very different outcomes for two companies with well-known trade marks.

In VOLVO v SOLVO (& Device) (see figure 1 below), Volvo Trade Mark Holding AB was successful in its opposition against a Community trade mark application for SOLVO (& Device) in Classes 9, 39 and 42 filed in the name of Elena Grebenshikova. Volvo claimed a reputationin its earlier marks for VOLVO which included “computer software” in Class 9. Having lost at both the Opposition Division and Board of Appeal stages, Volvo appealed to the General Court (formerly known as the Court of First Instance) under both Article 8(1)(b) CTMR relating to a likelihood of confusion and Article 8(5) CTMR under unfair advantage and/or detriment.

A prerequisite of Article 8(5) is that the two trade marks in question must be identical or similar. In finding in Volvo’s favour, the General Court held that in assessing whether the VOLVO and SOLVO were similar, it was not necessary to prove that the relevant public would be confused.

It was sufficient for the degree of similarity between the trade marks to establish a link between them even if consumers were not confused into thinking that one product originated from the other.

The Court held that VOLVO and SOLVO were similar as they share a certain degree of phonetic similarity and therefore, the relevant public may in fact establish a link between them even if they are not confused.

As such Volvo’s Article 8(5) CTMR claim was upheld. By contrast, the same Court found against G-Star Raw Denim Kft in its opposition to ESGW Holdings Ltd’s Community trade mark application for G-STOR (& Device) (see figure 2 below) in relation to “data processing equipment and computers” in Class 9.

Gstor logo

In this dispute, G-Star opposed the application on the basis of its prior marks for G-STAR in relation to eyeware in Class 9. The Opposition Division allowed G-Star’s claim under Article 8(5) CTMR but the Board of Appeal overturned the decision, refusing the opposition.

The General Court accepted that G-Star had a reputation in its trade marks in relation to goods in Class 9 but again reiterated that a claim under Article 8(5) CTMR should only succeed where all the requirements are met. One requirement is that the marks must be identical or similar and that the resultant unfair advantage or detriment caused to the earlier mark by the later mark, must be the consequence of a certain degree of similarity between the two marks which establishes a link between them (even if there is no confusion between them).

The Court found in ESGW’s favour holding that although there was close phonetic similarity between the trade mark G-STAR and G-STOR, the visual and conceptual differences were enough to create a different overall impression between them.

Furthermore, the aural similarity was deemed to be less important when the goods in question were bought visually. The requisite “link” between the trade marks was not found to exist even though the verbal elements of the marks differed only by 1 letter and G-Star’s claim therefore failed.

The question of whether confusion is necessary in establishing a claim under Article 8(5) has arisen time and time again. Both of these cases are clear that confusion is not required to succeed under this ground. What also becomes apparent is that the test for assessing similarity under Article 8(5) is different to the test under Article 8(1)(b) CTMR. In the second, the similarity must result in the relevant public being confused. In the first, it is sufficient if the later mark merely results in a link to the earlier mark in the mind of the relevant public even if they are not confused into thinking that goods or services offered under the later mark originated from the proprietor of the earlier mark. This might lead to the conclusion that the threshold for Article 8(5) is actually lower than Article 8(1)(b) for those opponents with sufficient reputation to support the claim.

Useful links

www.volvo.com

www.solvo.ru/en/

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