Section 1 of the Trade Mark Act 2010 defines a trade mark as a sign or mark or combination of signs or marks capable of being represented graphically and capable of distinguishing goods or services of one undertaking from those of another undertaking.
A sign includes a symbol, slogan, logo, sound, smell, colour, brand label, name, signature, letter, numeral or any combination of them.
Section 2 provides for a register of trademarks which shall be maintained by the registrar. The register shall be divided into two parts called Part A and Part B respectively. The register shall at all times be open to inspection of the public, subject to prescribed regulations.
Protectable subject matter.
Section 4 provides for protectable subject matter. S. 4(1) states that a sign or combination of signs, capable of distinguishing goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. S.4 (2) provides that where a sign is not inherently capable of distinguishing the relevant goods or services, qualification for registration shall depend on distinctiveness acquired through use. S.4 (3) states that a sign shall be capable of graphical representation in order to be registered.
Section 5 states that a person who intends to apply for registration of a trademark shall carry out a search to ascertain whether the trademark exists in the register upon payment of a prescribed fee. A person to intends to apply for the registration of a trademark may obtain advice form the registrar as to whether a proposed mark appears to the registrar distinguish to be inherently adapted to distinguish or capable of distinguishing goods or services of the proposed undertaking of those of another. .The person seeking advice shall apply in the manner prescribed.
Functions of a Trademark
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ARSENAL FOOTBALL CLUB PLC V MATHEW REED.
Arsenal alleged infringement of their trademark by Mr. Reed. Mr. Reed was a self-employed proprietor of a wholesale and football merchandise business alongside official Arsenal merchandise. He sold articles such as souvenirs and memorabilia that appealed to Arsenal fans. The articles bore the trademarks Arsenal, Arsenal Gunners and its device. On Mr. Reed’s stall, he distinguished clearly between the official and un official items. The official merchandise bore the words “The Official Arsenal collection’’ on neck labels and on the swing tabs. He sold the unofficial articles at a lower price. He had, without Arsenal’s consent used in the course of trade signs identical to the registered trademarks relied on by Arsenal in relation to goods for which they were registered. He denied infringement. He asserted that there could be no infringement if the use complained about was not trademark use. It was his case that he used the word “Arsenal” and other trademarks as badges of allegiance and not in the manner that indicated a connection in the course of trade between the goods and Arsenal.
Laddie J held that use made by Mr. Reed of the claimants’ signs did not amount to trademark use. That the word “Arsenal” and other trademarks were used only as badges of allegiance or loyalty and not in a manner that indicated a connection in course of trade between the goods and Arsenal. That Arsenal had failed to produce any evidence that anybody believed there was a connection in the course of trade between Reed’s goods and Arsenal. However, he referred a question to the ECJ.
In particular, the English High court asked whether it was a defense to an allegation of trademark infringement that the use of an identical sign was used a badge of support, loyalty or affiliation and not an indication of origin.
ECJ
Pursuant to Article 5 of the trademark directive, the owner of a registered mark could only prohibit the use of an identical sign if his interests regarding the essential function of the trademark was violated. That the essential function of a trademark was to guarantee origin.
The ECJ’s judgement was not concerned with whether the use complained of was trademark use. The consideration was whether the third party’s use affected or was likely to affect the functions of a trademark and that the essential function of a trademark is to guarantee origin.
That the judge did not conclude as a fact that in the circumstances, use by Mr. Reed was liable to jeopardize the guarantee of origin which was the essential function of trademark rights owned by arsenal. That was a finding of fact that was inevitable.
“once it has been found that in the present case, the use of the sign in question by the third party is liable to affect the guarantee of origin of the goods and that the trademark proprietor must be able to prevent this, it is immaterial that in the context of that sign, it is perceived as a badge of support or loyalty or affiliation to the proprietor of the mark.”
However, court noted that the functions of a trademark should not be limited to only guaranteeing identity of origin. The court also held that the function of a trademark is to ensure a system of competition; to indicate province as well as quality, the reputation or the renown of the producer or the provider. Trademarks may also be used for advertising purposes in order to inform and persuade the consumer promoting competition in the internal market.
Court of Appeal
The court of appeal in essence upheld the ECJ’s decision that by ruling that the high court was wrong to hold that the use made of Arsenal football club’s trademark was not trademark infringement. That although the trademarks were considered to be “badges of support,” they also acted as an indication of origin to a substantial number of consumers.
The high court judge had found that Mr. Reed’s use of the marks did not indicate the origin of goods but had failed to consider whether such use was liable to affect or jeopardize the guarantee of origin which was the essential feature of Arsenal’s marks. Mr. Reed’s use meant that the goods which did not originate from Arsenal were in free circulation. This affected the ability of Arsenal’s mark to guarantee origin of goods.
HOFFMAN LA ROCHE V CENTRA FARM
The Landgeritch Freiburg referred to the court two questions concerning the effect of certain provisions of the treaty on the exercise of rights appertaining to the proprietor of a trademark. However, for purposes of trademark law, the first question is of concern since it dealt with the issue of repackaging done by a parallel importer in a member state and freedom of movement of goods in the EEC.
The question arose from an undertaking in the pharmaceutical sector where the plaintiff referred to as ‘Hoffman La Roche’ – the proprietor of a certain trademark (valium) in several member states, took issue over the facts that the defendant referred to as ‘Centrafarm’ which had purchased a product covered by that trademark marketed in a member state, distributed that product in another member state after repackaging it and re-affixing the proprietor’s trademark to the new packet.
The product in question, valium, was marketed in Germany by Hoffmann-La Roche for individual buyers in packages of 20 or 50 tablets and for hospitals in batches of five packages containing 100 or 250 tablets, while the British subsidiary of the Hoffmann La Roche Group which manufactures the same product, markets it in packages of 100 or 500 tablets at considerably lower prices than those obtaining in Germany. Centrafarm marketed in Germany valium purchased in Great Britain in original packages which it put up in new packages of 1000 tablets, to which it affixed the trademark of Hoffmann La Roche together with a notice that the product had been marketed by Centrafarm. Centrafarm also gave notice of its intention to repack the tablets into smaller packages intended for sale to individuals.
In its order making the reference to the ECJ, the Landgeritch held that what Centrafarm had done constituted an infringement of the rights of Hoffmann La Roche according to the German Law of trademarks.
The issue was whether the proprietor of a trademark was entitled to protect for his benefit both in member state A and in member state B pursuant to Article 36 of the EEC treaty, in reliance to his trademark right, to prevent a parallel importer from buying from the proprietor of the mark or with his consent in member state A of the community, medicinal preparations which have been put on the market with his trademark lawfully affixed thereto and repacked under this trademark, from providing them with new packaging, affixing to such packaging the proprietor’s trademark and importing the preparations distinguished in this manner into member state B?
Basically the question was whether the proprietor of a trademark in member state A could prevent his goods bearing his trademark and repackaged under the same trademark from being repackaged by a parallel importer and affixing to such packages his trademark and importing them to another member state B.
The provisions of the treaty relating to free movement of goods, and in particular Article 30, prohibited quantitative restrictions on imports between member states.
Pursuant to Article 36, those provisions did not preclude prohibitions or restrictions on imports justified on grounds of protection of industrial and commercial property. However, the second sentence of the article provided that while the treaty did not affect the existence of rights recognized by laws of a member state in matters of industrial and commercial property, yet the existence of those rights may nevertheless, depending on the circumstances, be restricted by the prohibitions contained in the treaty. That although Article 36 created an exception to one of the fundamental principles of the common market, it only admitted of derogations from the free movement of goods only to the extent to which such exceptions were justified for the purpose of safeguarding the rights which constitute the subject matter of that property.
That in relation to trademarks, the specific subject matter is in particular to guarantee to the proprietor of the trademark that he has the exclusive right to use that trademark. In order to answer the question whether that exclusive right involves the right to prevent the trademark being affixed by a third person after the product has been repackaged, regard must be had to the essential function of a trademark, which is to guarantee the identity of the origin of the trademarked product to the consumer or ultimate user, by enabling him without any possibility of confusion to distinguish that product from products which have another origin. This guarantee means that the consumer or ultimate user can be certain that a trademarked product which is sold to him has not been subject at a previous stage of marketing to interference by a third person, without the authorization of the proprietor of the trademark, such as to affect the original condition of the product. The right attributed to the proprietor of preventing any use of the trademark which is likely to impair the guarantee of origin so understood is therefore part of the specific subject matter of the trademark right.
It was accordingly justified under the first sentence of Article 36 to recognize that the proprietor of a trademark was entitled to prevent an importer of a trademarked product, following repackaging of that product, form affixing the trademark to the new packaging without the authorization of the proprietor.
On whether the exercise of such a right constituted a disguised restriction on trade between member states within the meaning of the second sentence of Article 36, such a restriction might arise where the repackaging by a third person were done in such a way that the identity of origin of the trademarked product and its original condition could not be affected. The question therefore, in the present case was whether the repackaging of a trademarked product such as that undertaken by centrafarm was capable of affecting the original condition of the product.
To this question, the answer must vary according to the circumstances and in particular according to the nature of the product and the method of repackaging. Depending on the nature of the product repackaging in many cases inevitably affects its condition, while in others repackaging involves a more or less risk that the product might be interfered with or its original condition otherwise affected.
Where the essential function of the trademark to guarantee the origin of the product is thus protected, the exercise of his rights by the proprietor of the trademark inorder to fetter the free movement of goods between member states may constitute a disguised restriction within the meaning of the second sentence of Article 36 of the treaty if it is established that the use of the trademark right by the proprietor having regard to the marketing system which he has adopted, will contribute to the artificial partitioning of the markets between member states.
Since it is in the proprietor’s interest that the consumer should not be misled as to the origin of the product, it is moreover right to allow the trader to sell the imported product with the trademark affixed to the new packaging only on condition that he gives the proprietor of the mark prior notice and he states on the new packaging that the product has been repackaged by him.
The first question must therefore be answered to the effect that;
A. The proprietor of a trademark right which is protected in two member states at the same time is justified pursuant to the first sentence of Article 36 of the EEC treaty in preventing a product to which the trademark has lawfully been applied in one of those states from being marketed in the other member state after it has been packaged in new packaging to which the trademark has been affixed by a third party.
B. However, such prevention of marketing constitutes a disguised restriction on trade between member states within the meaning of the second sentence of Article 36 where:
• It is established that the use of trademark right by the proprietor, having regard to the marketing system he has adopted, will contribute to the artificial partitioning of the markets between member states.
• It is shown that the repackaging cannot adversely affect the original condition of the product.
• The proprietor of the mark receives prior notice of the marketing of the repackaged product; and
• It is stated on the new packaging by whom the product has been repackaged.
PARFUMS CHRISTIAN DIOR SA AND PARFUMS CHRISTIAN DIOR BV AND EVORA BV
[Product put on the market in a member state by the proprietor of a trade mark or with his consent – Use of the trade mark by a reseller for advertising purposes – whether permissible]
[Product put on the market in a member state by the proprietor of the trade mark to its use by a reseller for advertising purposes – not permissible – exception - serious damage caused to the reputation of the trade mark]
The question arose from proceedings between (i) Parfums Christian Dior SA, a company incorporated under French law established in Paris (hereinafter 'Dior France') and Parfums Christian Dior BV, a company incorporated under Netherlands law established in Rotterdam (hereinafter 'Dior Netherlands') and (ii) Evora BV, a company incorporated under Netherlands law established at Renswoude (hereinafter 'Evora'), concerning advertising carried out by Evora for Dior products which it has put on sale.
Dior France developed and produced perfumes and other cosmetic products which were sold to the market for luxury cosmetic products. For the sale of its products outside France it had appointed exclusive representatives, including Dior Netherlands in the Netherlands. Like other exclusive representatives of Dior France in Europe, Dior Netherlands uses a selective distribution system to distribute Dior products in the Netherlands, which means that Dior products are sold only to selected retailers who are under an obligation to sell Dior products only to ultimate consumers and never to resell to other retailers unless they are also selected to sell Dior products.
Although they have not been appointed as distributors by Dior Netherlands, Evora sold Dior products through its chain of shops (kruidvat), which it had obtained by means of parallel imports.
In a Christmas promotion in 1993, Kruidvat advertised for sale the Dior products Eau Sauvage, Poison, Fahrenheit, Dune and Svelte and during the promotion it depicted in advertising leaflets the packaging and bottles of some of those products. The advertising was carried out in a manner customary to retailers in this market sector.
Taking the view that this advertising did not correspond to the luxurious and prestigious image of the Dior marks, Dior France and Dior Netherlands (hereinafter 'Dior') brought proceedings before the Rechtbank te Haarlem (District Court, Haarlem) for infringement of those marks and for an order requiring Evora to desist and to continue to desist from making use of Dior picture trademarks and from any publication or reproduction of its products in catalogues, brochures, advertisements or otherwise.
Dior claimed in particular that the use made by Evora of its trade marks was contrary to the provisions of the Uniform Benelux Law on Trade Marks in force at that time and was liable to damage their luxurious and prestigious image. Dior also claimed that the advertising carried out by Evora infringed its copyright.
The President of the Rechtbank granted Dior's application and Evora was ordered with immediate effect to desist from making use of Dior's picture trade marks and from any publication or reproduction of the Dior products at issue in catalogues, brochures, advertisements or otherwise, in a manner not conforming to Dior's customary manner of advertising. Evora appealed against that order to the Gerechtshof (Regional Court of Appeal), Amsterdam.
That court set aside the lower court's order and refused the measures applied for. In particular, it rejected Dior's argument that Dior could oppose the further commercialization of the goods under Article 7(2) of the Directive, which provides that the proprietor of a trade mark may oppose its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor where there are legitimate reasons, especially where the condition of the goods is changed or impaired after they have been put on the market. The Gerechtshof considered that this provision envisaged only harm caused to the reputation of a trade mark by some alteration of the physical condition of the goods to which the mark applies.
Dior appealed against that judgment to the Hoge Raad. It argued in particular that the expression 'condition of the goods' used in Article 7(2) of the Directive also covers the 'mental' condition of the goods, by which it means the allure, prestigious image and aura of luxury surrounding the goods, resulting from the manner in which the trade mark owner has chosen to present and advertise the goods using his trade mark rights. Evora argued that its advertising - carried out in the manner customary to retailers in this market sector - did not infringe Dior's exclusive rights and that the provisions of the Directive and Articles 30 and 36 of the Treaty precluded Dior from relying on its trade mark rights and copyright to prohibit it from advertising the Dior products which it markets.
This issue was referred to the ECJ for interpretation of community law and the uniform Benelux Law on Trademarks.
Issue: Where goods which have been put on the market in the Community for resale under a trade mark by the trade mark proprietor or with his consent, the reseller is also free to use that trade mark for the purposes of bringing such further commercialization to the attention of the public without contravening Articles 5,6,7 of the Belerux directive.? ?
-If yes, whether exceptions existed to this rule.
-And whether there is room for an exception where the advertising function of the trade mark is endangered by the fact that, as a result of the manner in which the reseller uses the trade mark in order to attract public attention in that way, he damages the luxurious and prestigious image of the trade mark?
-Whether the alteration or impairment of the "mental condition" of goods i.e their allure, prestigious image, aura of luxury, a result of the reseller re-advertising the trademark proprietor's goods still falls within legitimate reasons within the meaning of Article 7(2)?
-On the first question, court considered that it was necessary to consider the relevant provisions of the Directive to which the Hoge Raad refers.
On the one hand, Article 5 of the Directive, which determines the rights conferred by a trade mark, provides, in paragraph (1), that the proprietor is to be entitled to prevent all third parties from using his trade mark in the course of trade and, in paragraph (3)(d), that he may prohibit all third parties from using the trade mark in advertising.
On the other hand, Article 7(1) of the Directive, which concerns the exhaustion of the rights conferred by a trade mark, provides that a trade mark is not to entitle its proprietor to prohibit its use in relation to goods which have been put on the market in the community under that trade mark by its proprietor or with his consent.
Court held that If the right to prohibit the use of his trade mark in relation to goods, conferred on the proprietor of a trade mark under Article 5 of the Directive, is exhausted once the goods have been put on the market by himself or with his consent, the same applies as regards the right to use the trade mark for the purpose of bringing to the public's attention the further commercialization of those goods.
That from the case-law of the Court that Article 7 of the Directive is to be interpreted in the light of the rules of the Treaty relating to the free movement of goods, in particular Article 36. That the purpose of the 'exhaustion of rights' rule is to prevent owners of trade marks from being allowed to partition national markets and thus facilitate the maintenance of price differences which may exist between Member States. Even if the right to make use of a trade mark in order to attract attention to further commercialization were not exhausted in the same way as the right of resale, the latter would be made considerably more difficult and the purpose of the 'exhaustion of rights' rule laid down in Article 7 would thus be undermined.
On the remaining questions , the Hoge Raad asked in substance whether the rule ensuing from the answer to the previous question allowed exceptions, in particular
where the advertising function of the trade mark is endangered by the fact that, as a result of the manner in which the reseller uses the trade mark in order to attract public attention, he damages the luxurious and prestigious image of the trade mark, and
where, as a result of the way in which the reseller advertises the goods, their 'mental' condition, that is to say the allure, prestigious image and aura of luxury which they have as a result of the manner in which the trade mark owner has chosen to present and advertise the goods using his trade mark rights, is changed or impaired.
According to Article 7(2) of the Directive, the 'exhaustion of rights' rule laid down in paragraph (1) is not applicable where there are legitimate reasons for the proprietor to oppose further commercialization of trade-marked goods, especially where the condition of the goods is changed or impaired after they have been put on the market.
The question therefore is whether the situations envisaged by the Hoge Raad constitute legitimate reasons, within the meaning of Article 7(2) of the Directive, allowing the proprietor of a trade mark to oppose use of his trade mark by a reseller to bring to the public's attention the further commercialization of goods bearing that trade mark.
According to the case-law of the Court, Article 7 of the Directive comprehensively regulates the question of the exhaustion of trade mark rights in relation to goods put on the market in the Community and the use of the word 'especially' in paragraph (2) indicates that alteration or impairment of the condition of trade-marked goods is given only as an example of what may constitute legitimate reasons (see Bristol-Myers Squibb, cited above, paragraphs 26 and 39). Moreover, that provision is intended to reconcile the fundamental interest in the protection of trade mark rights with the fundamental interest in the free movement of goods within the common market.
The damage done to the reputation of a trade mark may, in principle, be a legitimate reason, within the meaning of Article 7(2) of the Directive, allowing the proprietor to oppose further commercialization of goods which have been put on the market in the Community by him or with his consent. According to the case-law of the Court concerning the repackaging of trade-marked goods, the owner of a trade mark has a legitimate interest, related to the specific subject-matter of the trade mark right, in being able to oppose the commercialization of those goods if the presentation of the repackaged goods is liable to damage the reputation of the trade mark.
It follows that, where a reseller makes use of a trade mark in order to bring the public's attention to further commercialization of trade-marked goods, a balance must be struck between the legitimate interest of the trade mark owner in being protected against resellers using his trade mark for advertising in a manner which could damage the reputation of the trade mark and the reseller's legitimate interest in being able to resell the goods in question by using advertising methods which are customary in his sector of trade.
However, the fact that a reseller, who habitually markets articles of the same kind but not necessarily of the same quality, uses for trade-marked goods the modes of advertising which are customary in his trade sector, even if they are not the same as those used by the trade mark owner himself or by his approved retailers, does not constitute a legitimate reason, within the meaning of Article 7(2) of the Directive, allowing the owner to oppose that advertising, unless it is established that, given the specific circumstances of the case, the use of the trade mark in the reseller's advertising seriously damages the reputation of the trade mark.
For example, such damage could occur if, in an advertising leaflet distributed by him, the reseller did not take care to avoid putting the trade mark in a context which might seriously detract from the image which the trade mark owner has succeeded in creating around his trade mark.
In view of the foregoing, the answer to be given to the third, fourth and fifth questions must be that the proprietor of a trade mark may not rely on Article 7(2) of the Directive to oppose the use of the trade mark, by a reseller who habitually markets articles of the same kind, but not necessarily of the same quality, as the trade-marked goods, in ways customary in the reseller's sector of trade, for the purpose of bringing to the public's attention the further commercialization of those goods, unless it is established that, given the specific circumstances of the case, the use of the trade mark for this purpose seriously damages the reputation of the trade mark.
On whether Articles 30 and 36 of the Treaty preclude the owner of a trade mark or holder of copyright relating to the bottles and packaging which he uses for his goods from preventing a reseller, by invoking the trade mark right or copyright, from advertising the further commercialization of those goods in a manner customary to retail traders in the relevant sector. It asks, further, whether this is also the case where the reseller, as a result of the manner in which he uses the trade mark in his advertising material, damages the luxurious and prestigious image of the trade mark, or where the publication or reproduction of the trade mark takes place in circumstances liable to cause damage to the person entitled to the copyright.
As regards the question relating to trade mark rights, it is to be remembered that, according to the case-law of the Court, Article 36 of the Treaty and Article 7 of the Directive are to be interpreted in the same way
On a proper interpretation of Articles 30 and 36 of the Treaty, the proprietor of a trade mark or holder of copyright may not oppose their use by a reseller who habitually markets articles of the same kind, but not necessarily of the same quality, as the protected goods, in ways customary in the reseller's sector of trade, for the purpose of bringing to the public's attention the further commercialization of those goods, unless it is established that, having regard to the specific circumstances of the case, the use of those goods for that purpose seriously damages their reputation.
ZINO DAVIDOFF AG V A & G IMPORTS LTD
[Limitation of exhaustion of rights to the EEA]
Goods were placed on the market outside the EEA by Davidoff and Levi Strauss. Davidoff ’s toiletries had been placed on the market in Singapore from where they had been bought by A & G Imports and imported in to the UK for sale. Quantities of Levi jeans put on the market mainly in Canada, the US and Mexico had been bought by Tesco Stores and Costco Goods and imported into the UK for sale.
The Court of Justice confirmed that placing goods, bearing the proprietor’s trade mark, on the market outside the EEA by or with the consent of the proprietor does not exhaust the rights of the proprietor to control their initial marketing in the EEA. A major issue was whether a trade mark proprietor’s consent to importing the goods into the EEA from outside for resale could be inferred or whether such consent had to be express. The Court of Justice held that as the effect of extinguishing exclusive rights is serious, the proprietor must evince an intention to renounce his rights unequivocally. This would normally be only by way of an express statement of consent. The Court of Justice further held that the burden of proof lies on the person alleging consent. It is he who must prove consent and it is not for the proprietor to demonstrate its absence. The Davidoff case shows that it might be possible to find implied consent from the circumstances which will mean, in effect, that the proprietor has waived his right to object to the further commercialisation of goods, which he placed on the market outside the EEA situation, within the EEA. The practical effect of the ruling will be, of course, that proprietors of trade marks or other intellectual property rights make it clear to their distributors and retailers that the goods are not for resale within the EEA, perhaps adding a note to that effect on labels or tickets attached to the goods.
One argument often used by proprietors of intellectual property rights such as trade marks is that, through their authorised retailers, they have cultivated a high-quality experience for consumers which could be harmed by parallel importers selling the goods in less luxurious surroundings. The sale of expensive perfumes from department stores could be compared with the sale of the same perfumes, imported from other parts of the market, in relatively low-cost outlets, now familiar on High Streets. As far as imports from outside the EEA, sometimes the products sold there by the proprietor may be of inferior quality to those placed on the market within the EEA by that proprietor. This may be a reflection of the differing amounts of consumer spending power in other countries. Another issue might be after-sales service where authorised retailers operate under performance levels set down by and monitored by the proprietor of the relevant intellectual property right.
Application for Registration.
A person claiming to be the owner of a trademark used or proposed to be used by him or her shall apply in writing to the registrar in prescribed form for registration in Part A or B of the register . Under that provision and subject to the Act, the registrar may;
a) Refuse the application
b) Accept it absolutely or subject to amendments, conditions or limitations as he or she may deem fit.
The registrar may treat an application for registration of a trademark in Part A as an application for registration in Part B, with the consent of the applicant. In case of refusal or conditional acceptance the registrar shall state in writing the grounds of his or her decision . A person aggrieved by the decision of the registrar may appeal to the court . The appeals under this section shall only be heard on the grounds stated by the registrar, and no further grounds of objection to the acceptance of the application shall be allowed to be made by the registrar other than those stated in writing under S. 7(4) except by leave of court. A trademark shall be registered in respect of particular goods or classes of goods.
Distinctiveness requisite for registration under Part A
Section 9 provides that in order for a trademark to be registered under Part A, the trademark shall contain one of the following essential particulars;
a) The name of a company, individual or firm represented in a special manner.
b) The signature of the applicant for registration or of some predecessor in his business
c) An invented word(s).
d) A word having no direct reference to the character or quality of the goods or services including geographical name or ordinary signification.
e) Any other distinctive mark other than a name, signature, or word described in paragraphs (a), (b), (c), and (d) upon evidence of its distinctiveness.
S. 9(2) defines distinctive to mean adapted in relation to goods or services in respect of which the trade is to be registered, to distinguish goods or services with which the owner of the trademark is or may be connected, in the course of trade, from goods or services in the case of which no connection subsists.
S. 9(3) in determining whether a trademark is adapted to distinguish as goods or service, regard may be had to the extent to which;
a) The trademark in inherently adapted to distinguish goods or services; and
b) By reason of use of the trademark, or other circumstances, the trademark is in fact adapted to distinguish goods or services.
Capability of distinguishing requisite for registration under Part B
Section 10 provides that a trademark, relating to goods or services to be registered under Part B of the register shall be capable of distinguishing goods with which the owner of the trademark is or may be connected in the course of trade from goods or services in the case where no connection subsists.
s. 10(3) states that in determining whether a trademark is capable of distinguishing goods or services, regard may be had to the extent to which;
a) the trademark is inherently capable of distinguishing goods or services; and
b) by reason of the use of the trademark or other circumstances, the trademark is in fact capable of distinguishing goods or services.
Note: Section 9 deals with trademarks to be registered in Part A. Those trademarks should be adapted to distinguish which is the keyword whereas section 10 deals with trademarks to be registered under Part B. These trademarks should be capable of distinguishing goods of services in respect of which a trademark is to be registered. Also important to note is that a trademark to be registered under Part A must have at least one of the essential particulars stated under S. 9(1) which include name, signature, invented word, or word having no direct reference to character or quality of goods or services. A trademark may be registered in Part B not withstanding any registration in Part A in the name of the same owner of the same trademark or parts of it.
Registration & Non Registration of Marks under s.9.
(a) The name of a company, individual or firm represented in a special manner.
[
Standard Cameras Ltd. applied to register a trade mark consisting of the name" Robin Hood", written in a manner which included a device of an archer and a target. Evidence of distinctiveness was not tendered. The application was refused on the ground that " Hood " and" Robin" were common English names, that goods sold under the mark would become known as " Robin Hood " goods, and that the mark was not a name represented in a special or particular manner, the archer and target being merely added matter illustrative of the words. Standard Cameras ltd appealed to the Court, and contended upon appeal that the mark was registrable both as a name represented in a special or particular manner, and as a distinctive composite device. It was contended by the Registrar that any peculiarity lay solely in matter added to the name as distinct from the manner in which the name itself was represented, and that the added matter (being merely illustrative of the name) could not render it distinctive.
Held by Justice Lloyd’s Jacobs;
That the mark was registrable as a name represented in a particular manner, and the appeal should be allowed.
It is clear to me that for every mark in order to constitute a registrable mark must be capable of distinguishing the goods of a trade.
It is incumbent on the tribunal to look at that which is applied for if it is a name “Robin Hood” then to consider whether that is represented in a special and particular manner as the section requires. The representation of words Robin hood was out of common. Whether it is sufficiently out of common to strike the eye as being peculiar – peculiar, not likely to occur to somebody who merely wishes to represent the word.
Para. (5) is Sec. 9 (1) (e)" that the expression 'special or particular manner' in Para. (1) means some manner " of representation which is out of the common, so as to strike the eye as peculiar and thus "render the mark distinctive".
Surnames
IN RE FANTASTIC SAM’S SERVICE MARK (1990) RPC 531
The applicants sought registration in part A of the register of the words FANTASTIC SAM’S as an unused service mark for hair dressing services included in class 42.
Held; refusing the application,
The mark constituted of a laudatory word and the possessive form of a common familiar Christian name and having regard to the widespread practice of hair dressers using their Christian names as a trading style, the mark was not distinctive. Accordingly, it was not acceptable prima facie in part A.
(b) The signature of the applicant for registration or of some predecessor in his business
ELVIS PRESLEY TRADEMARKS
Enterprise applied for registration of three trademarks: ELVIS, ELVIS PRESLEY and ELVIS A PRESLEY (in signature form), all in respect of toilet preparations, etc., in class 3. Opposition was made by Sid David Shaw under section 9. The late Elvis was an internationally famous rock and roll singer. E carried on merchandising activities, begun in Elvis Presley’s name before his death and were considered to be successors in title of those activities. SS had traded exclusively in a wide range of Elvis Presley memorabilia under his own registered trade mark ELVISLY YOURS, the validity of which was not challenged. The products of both E and SS carried the name ELVIS PRESLEY and his likeliness, neither was used in a trademark manner. The issue was could anyone claim the exclusive right to use the names ELVIS, ELVIS PRESLEY, or the signature form as a trademark.
Held by MR. Justice Laddie.
Citing Du Boulay v Du Boulay, that the law does not recognize the absolute right of a person to a particular name to the extent of entitling him to prevent the assumption of that name by a stranger.
Even if Elvis Presley was still alive, he would not be entitled to stop a fan from naming his son, his dog or goldfish, his car or his house “Elvis” or “Elvis Presley” simply by the reason of fact that it was the name given to him at birth by his parents. To stop the use of the whole or part of his name by another he would need to show that as result of such use, the other person is invading some legal recognized right. Just as Elvis Presley did not own his name so as to be able to prevent all and any uses of it by third parties, so Enterprises can have no greater rights.
On the signature mark;
Although the registry and the court must start from the premise that signatures are prima facie distinctive, they are not inevitably so. Someone may adopt a signature which consists of his surname spelt out in precise capitals or in perfect script which is indistinguishable from, say, Times Roman font. Such writings though signatures, would be indistinguishable from the printed form of the name and it seems to me, would not be distinctive. What makes most signatures distinctive is that they consist of a substantially unique and frequently highly distorted way of writing the author’s name… They are in a sense a private graphic tied to one person. If Elvis Presley had signed his name in block capitals that signature would not be any more registrable than the “ELVIS PRESLEY” mark dealt with above. To allow registration of such a mark, simply on the basis that it was how the author signed his name, would be to give the proprietor trademark rights which could be enforced against other traders using block capitals or any other legible script… To allow such a signature to be registered would be to forget that the mark, whether falling within section 9(1) (b) or not, still has to be distinctive. If the signature mark in issue here is registrable, its distinctiveness must be dependent on the particular graphic style used to write it.
The signature mark is not a highly stylized writing of Elvis Presley’s name. In fact its most notable features are the words of the name itself. There is nothing graphically or visually distinctive about the style in which the words are written. It is just a simple cursive rendition of the name. On the face of it, the signature does not appear to be adapted to distinguish. Nevertheless, in accordance with the provisions of section 9(3) (b), in determining whether the mark is adapted to distinguish the court is “entitled to have regard to the extent to which by reason of the use of the trademark or of any other circumstances” the mark is in fact adapted to distinguish the proprietor’s goods… there is no evidence that any member of the public here had learned to treat it as a mark distinguishing goods as coming from a particular source. It therefore seems to me that none of the trading history helps Enterprises…. There may have been instances where the names “Elvis” and “Elvis Presley” have been used in more or less cursive fonts on products but in a way which gives no suggestion that they are signatures.
(c) Invented words
IN THE TARZAN CASE.
In November 1965, the applicants, an American company called Banner Productions Inc., applied to register the name TARZAN as a trade mark in Part A, alternatively in Part B, of the register in respect of films prepared for exhibition and magnetic tape recordings. The application originally referred to a number of other similar articles, but before the Registrar and the learned judge it was con-fined to the two types of articles which I have mentioned. The applicants at the same time also made another similar application to register the name TARZAN as a trade mark in respect of games, toys and playthings and gymnastic and sporting articles. The Registrar refused both applications. From that decision, the applicants appealed to Graham, J. and he dismissed the appeal. Now the applicants appeal from Graham, J.'s decision
The qualifications necessary to enable a mark to be registered in Part A are dealt with in section 9 of the Trade Marks Act 1938, and the qualifications for registration in Part B are dealt with in section 10 of that Act. I will read the material parts of section 9. Section 9(1) reads-
"In order for a trade mark to be registrable in Part A of the Register, it must contain or consist of at least one of the following essential particulars." Then I can go to (c) which reads: "An invented word or invented words; (d) a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname; (e) any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in the foregoing para-graphs (a), (b), (c) and (d), shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness.
Subsection (2) of section 9 reads:
"For the purposes of this section 'distinctive' means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade is or may be connected in the course of trade from goods in the case of which no such connection subsists."
Subsection (3) reads:
"In determining whether a trade mark is adapted to distinguish as aforesaid the tribunal may have regard to the extent to which (a) the trade mark is inherently adapted to distinguish as aforesaid; and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid."
It is conceded that the onus lies upon the applicant to bring himself within section 9.
The first question to consider is whether TARZAN at the date of the application was an invented word. Undoubtedly, many years before November 1965, an author called Edgar Rice Burroughs did invent the word and wrote many stories about a fictitious character whom he called Tarzan.
The question is, however, whether in November 1965TARZAN could be correctly described as an invented word. The case against the applicant was that, although Mr. Burroughs had originally invented the word, by November 1965 it 'had passed into the language and had indeed become a household word.
We have been referred to Webster's International Dictionary. In the second edition, "Tarzan" is described as a character of a series of stories by Edgar Rice Burroughs. He is described as "a white man of prodigious strength and chivalrous instincts reared by African apes". In the third and latest edition he is described as "a hero of adventure stories of Edgar Rice Burroughs, a strong agile person of heroic proportions and bearing". In my view, the learned judge's conclusion that the word "Tarzan" had passed into the language and was well-known by every adult, and indeed by most children, is quite incapable of attack. Mr. Burrell has argued that the word had not passed into the language. Having regard to the various definitions in Webster's Dictionary, and to its common usage, of which I think we are entitled to take judicial notice, I cannot myself find that there is any real foundation for the argument which Mr. Burrell has pressed upon us on this question.
It was not fatal to the application that the word had been invented many years before the application was made, For example, if a word was invented, say, in 1925, and had not passed into the language, it would still remain an invented word in 1965. The trouble facing Mr. Burrell is that it seems quite plain that the word TARZAN had by 1965 passed into the language.
The third point raised by Mr. Burrell was that the name TARZAN was a distinctive mark within the meaning of those words as used in section 9(1)(e). That depends upon whether it is inherently adapted to distinguish the goods to which the application relates as goods connected in the course of trade with the applicant or with anyone else, and the test which is set out in subsection (3) of section 9 is this: "the tribunal may have regard to the extent to which (a) the trademark is inherently adapted to distinguish as aforesaid; and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid. It is conceded that there was no evidence whatsoever of any use of the trade mark which could bring subsection (3) (b) into operation. When this case got to the House of Lords, it was stated by Lord Simonds that in general, the more apt a word is to describe the goods of a manufacturer, the less 5 apt it is to distinguish them from the goods of others. At page 155, Lord Asquith said:
"'Distinctiveness' is defined in subsection (2) as meaning some quality in the trade mark (if I may paraphrase) which earmarks the goods so marked as distinct from those of other producers of such goods. It is not enough that it 10 should earmark the goods as complying with a particular description, or as originating from a particular geographical area, or having claims to a peculiar excellence," He came to the conclusion, as did all the other law lords in that case, that the word YORKSHIRE looked at by itself had no inherent characteristic which made it apt to distinguish the applicants' or anyone else's goods. The word in the Act is "adapted". It is not a very happy word. It means "apt", and it is perhaps a pity that the word "apt" was not used.
In the present case, there is nothing at all in the word TARZAN which would suggest to the public or to the trade that a film or magnetic tape recording had anything to do with the applicant or with anyone else. The word TARZAN when used in connection with a film suggests-and suggests only-that the film has something to do with the well-known fictional person, Tarzan, a man of great strength and agility.
Edmund Davies
"By 'inherently adapted' I take the Act to mean adapted of itself, standing on its own feet". Respect-fully adopting that interpretation, I do not find any inherently distinctive quality in the word TARZAN which points to the applicants' goods rather than to those of any other trader.
EASTMAN PHOTOGRAPHIC MATERIALS COMPANY LTD CASE
The Appellants sought to register the word “solio” as applicable to their photographic paper. The word solio was claimed to be an invented word and therefore registrable as such. The comptroller general of patents, designs and trademarks refused to register “solio” as a trademark in respect of photographic paper. The word solio was claimed to be an invented word and therefore registrable as such. In opposition to its registration, it was stated that the word solio was not an invented word because in Italian it meant throne. Alternatively it was stated that the word solio may have extracted from it some meaning in relation to the character or quality of the goods because the letters sol may be understood to mean the sun and Shakespeare in Troilus and cresside spoke of our planet “sol” and that in as much as the goods in question were photographic papers and sunlight was operative in producing impressions on photographic paper, solio came within the prohibition against using words which were distinctive of the character and quality of the goods in respect of which the words sought to be registered. The court of Appeal refused the application on ground that the word solio had reference to the character or quality of goods and therefore incapable of registration. The court of Appeal had held itself bound itself by a previous decision in the case of re Farbenifabriken Application to hold that an invented word could not be registered. If it had any reference to the character or quality of the goods.
Lord Earl of Harlsbury held;
Solio was not sol and sol was not solio.
“It certainly is a very strange thing that you should take three letters out of a word and by somewhat circuitous process that has been adopted here, arrive at the conclusion that it is not an invented word and that it does not describe the character and quality of the goods.”
That the word solio was an invented word and does not indicate the character or quality of goods.
Lord Herschell held;
The question turns on the construction of the section 10 of the 1888 Act. The section to be construed provides that a trademark “must consist of or contain at least one of the following essential particulars” … (d) An invented word or words or (e) A word or words having no reference to the character or quality of the goods and not being a geographical name.
There was no justification for qualifying the provision “(d). An invented word or words” by conclusion that they shall have no reference to the character or quality of goods. By the words which introduce the section, the particulars designated under the headings (a) to (e) are separate and distinct: “A trademark must consist at least one of the following essential particulars”.
Under (e), any word in English language may serve as a trademark excerpt in respect of a particular class of goods having reference to the character or quality of goods.
“The vocabulary of the English language is common property. It belongs alike to all. No one ought to be permitted to prevent other members of the community from using for purposes of description a word which has no reference to the character or quality of goods… But with regard to words which are truly invented words, words newly coined which have never therefore been used, the case is altogether different.”
Court relied on A.L Smith LJ;
“To constitute an invented word, it must be a word coined for the first time. Such a word is of necessity incapable of having reference to the character or quality of goods because ex hypothesis, it is an entirely new unknown word incapable of conveying anything”
An invented word is allowed to be registered as a trademark because its registration deprives no member of the community of the rights which he possesses to use the existing vocabulary as he pleases. A combination of English words is not an invented word even if it not used before nor a mere variation of the orthography or termination of a word would be an invented word if to the eye or ear, the same idea would be conveyed. A foreign word is not an invented word simply because it has not been used in our current language. The word “solio” is an invented unless it is to be regarded as the Italian word solio which means throne, in which case it has certainly no reference to the character or quality of photographic paper. If it is not so regarded, it has of itself no meaning. It is also unimportant if it be an invented word, whether it has reference to the character or quality of the goods or not.
RE EDWARD RIPLEY & SONS APPLICATION
[A phonetic equivalent of an unregistrable word is itself unregistrable]
The question was whether the word “pirle” should be registered for goods in class 34 namely cloths and stuffs of wool, worsted and hair, the word “pirle” being formed from the name “Ripley” with the omission of “y”. The word Pirle was sought to be registered as an invented word. Kekewich J held that “pearl” being at any rate not capable of registration, another word which is precisely the same in tone and sound, so that every ear would be deceived, is equally incapable of registration.
The application was refused on ground that the word was identical in sound with “pearl” and that “pearl” itself was not eligible for registration; being a term of commendation. Phonetic equivalent of an un registrable word is itself un registrable. Another case similar to the Edward Ripley case is the Lactel Trade mark case.
LACTEL TRADEMARK CASE.
An applications were made for registration of the marks LACTEL and LACTEL in respect of milk and milk products. The objection to the word “LACTEL” was it was too close, visually and phonetically, to the word lacteal which is defined in Collins English Dictionary as meaning “of relating to, or resembling milk”. It was held that LACTEL was not an invented word having regard to “lacteal” which may be known to a reasonable proportion of the public and almost certainly to others in the dairy trade. Lord James MR stated that the word “Lactel” was to be regarded as a misspelling of “lacteal” brought about by a mere variation of the termination of the word. That the word remained visually very similar to the dictionary word and even closer phonetically given that there is a tendency of the public to swallow the end of words.
BOOTS PURE DRUG COMPANY LIMITED
[A word which is the name of a foreign place or country is not registrable as an invented word if it is known by people in the country where it is sought to be registered.]
An English company registered the word Livron as a trademark in respect of tonic medicines for human consumption. Unbeknownst to them, there was another company Societies des Usines Chemique manufacturing medicine in France found in the town of Livron. The company in France applied to have the trademark Livron removed because there was a town in France called Livron where there was a manufacturing company that also dealt in drugs. Romer CJ held that the word Livron was calculated to deceive as the words might be taken to indicate that the goods came from Livron and the danger was greater because the respondents manufactured medicine at Livron. That the English men wishing to refer to Livron the town could only refer to Livron and to nothing else. That livron was not an invented word.
ELECTRIX LTD V ELECTROLUX LTD (1959) 3 ALL ER `70
This case concerned an application to register" Electrix" as a trademark in respect of “electric domestic vacuum cleaners and other electrically driven machines but this was opposed by the Proprietors of the Trade Mark" Electrux". The application to register "Electrix" was allowed by the Registrar whose decision was upheld by Lloyd-Jacob, J., but an appeal by the Opponents to the Court of Appeal was successful and registration was refused.
The Applicants appealed to the House of Lords
Facts;
In 1928 the respondents had registered the word "Electrux" as a trade mark in respect of a specification of goods which included the goods the subject of the appellants’ applications. They renewed the registration in 1942 but made no use of it until 1947. In the meantime, the appellants had been incorporated and 1933 onwards, except for a period of interruption caused by the war, sold vacuum cleaners under the mark “Electrix”. They were unaware of the respondents’ registered mark “Electrux”. Their sales were said to have been substantially increased as the result of an exhibition in the autumn of 1946 under the title “Britain can make it”. In 1947 the respondents, realizing that their mark “Electrux” was in danger of being struck off the register for non-user and wishing to stop the use by the appellants of their mark “Electrix”, began to use the mark “Electrux” in connexion with a certain model of vacuum cleaner. They were entitled to do so and their user was bona fide. Having done so, they challenged the user by the appellants of the mark “Electrix” on the ground that it infringed their mark and eventually brought an action to restrain it.
Held; by House of Lords led by (Viscount Simonds and Lords Reid, Keith of Avonholm, Cohen and Somervell of Harrow)
That the judgment of the Court of Appeal was correct and that the appeal must be dismissed with costs. That words equivalent in sound to unregistrable words are themselves unregistrable.
Approved the court of Court of Appeal, court stated;
“The doctrine as we understand it, is that, if a given word is for any reason unregistrable in its proper spelling, then, inasmuch as trade marks appeal to the ear as well as to the eye, the objection (whatever it may be) to the registration of the properly spelt word applies equally to a word which is merely its phonetic equivalent.”
Applying that view of the law to the facts of the present case, the Court of Appeal held that, “electrix” being the phonetic equivalent of “electrics” and that word being unregistrable, “electrix” also was unregistrable.
Court also quoted “Perfection” and “Orlwoola” cases (Re J Crosfield & Sons Ltd, and Re Orlwoola Trade Mark), where Cozens Hardy MR dealing with both cases, said ((1909), 26 RPC at p 855):
“There is one important distinction between word marks and other marks. The former appeals to the ear as well as, and indeed more than, to the eye. The latter appeal to the eye only. It seems to follow that a word, not being an invented word, ought not to be put on the register, if the spelling is phonetic and resembles in sound a word which in its proper spelling could not be put on the register.’’
Publication
Section 11 states that where an application for a trademark has been accepted absolutely or subject to conditions, the registrar shall cause the application to be published in the prescribed for 60 days and shall set forth all conditions subject to which the application was accepted.
Objection to registration.
A person may within the prescribed time from the date of publication (i.e. 60 days), give notice in writing to the registrar of objection to the registration . The registrar shall send a copy of the notice to the applicant within the prescribed time, the applicant shall make a counter statement of the grounds he or she relies on for his or her application to the registrar, if or she fails to do so, he or she shall be taken to have abandoned his or her application. The counter statement shall be furnished by the registrar to the objector, and shall after hearing both parties decided whether registration is to be permitted and subject to what conditions if any . The aggrieved party may appeal to court . When an application for registration has been accepted, the date of application shall be taken to be the date of registration .
Registration in Part A to be conclusive as to validity after 7 years.
The registration of a trademark in Part A shall be taken to be conclusive as to validity after the expiration of 7 years unless the registration was obtained by fraud, or the trademark is likely to deceive or would be contrary to law, morality, or any scandalous design as provided under s. 23(1) . This section does not apply to a trademark registered under Part B of the register. Where a trademark contains a matter common to trade or of a non-distinctive character, the registrar may require as a condition for its being entered on the register that the owner shall disclaim any right to the exclusive use of the trademark. The disclaimer may relate to any part of the trademark or all portion.
Duration and renewal of registration.
Section 21 provides that the registration of a trademark shall be for a period of 7 years and shall be renewable every 10 years upon payment of a prescribed fee.
Restriction on registration of trademark or part of trademark likely to deceive, or would be contrary to law, morality, or any scandalous design.
Section 23 provides that the registrar shall not register as a trademark or part of a trademark any matter the use of which is likely to deceive or would be contrary to law, morality, or any scandalous design.
The registrar shall not register a trademark or word accepted as a name of a single chemical element or compound.
Signs that shall not be registered as trademarks.
Section 23(5) provides that a sign shall not be registered as a trademark if it consists exclusively of;
a) the shape that results from the obtain a technical result; or
b) the shape that gives substantial value to the goods.
Bona fide use
Section 24 states that Registration of a trademark shall not affect bona fide use by a person of his or her own name, name of place of goods or services, or description of character or quality of goods or services, not a description likely to import a reference to s.36 (2) or s.37 (2).
S. 36 & 37 provide for exclusive right to use of trademark registered in part A, for goods and services respectively. Subsection 2 of respective provisions state that the right conferred shall be taken to infringed by any person who, not being the registered user of the trademark or person permitted to use the trademark, uses a mark identical or resembling it, as likely to cause confusion in the course of trade in relation to goods of the same description*
Likelihood of Confusion:
Swiss MISS TRADE MARK (1997) RPC 219
The application to register the trade mark SWISS MISS in respect of preparations for making chocolate or cocoa beverages, non-dairy cream and milk substances, etc., was opposed by the trade association of Swiss chocolate manufacturers on the ground that the mark was likely to deceive or cause confusion, having regard to section 11 of the Trade Marks Act 1938, if the goods were not of Swiss origin. Swiss firms had a reputation in the United Kingdom in respect of high quality chocolate but the Registrar found no trade or reputation in preparations for making chocolate or
cocoa beverages. The applicant argued that the mark bore no geographic signification and merely conjured up an image of healthy outdoor living; no confusion had arisen in the USA where the mark had been widely used. Both parties submitted survey evidence, which was found to be of little help, as were references to other marks bearing geographic implications.
The Registrar dismissed the opposition and the opponent appealed.
Held, allowing the appeal:
(I). The question to be considered was whether the mark would cause a number of persons to wonder, to entertain as a serious and not merely a fanciful possibility, whether the goods had a Swiss origin. The test under section 11 was not that applicable in cases of passing-off
(2) The test applied by the Registrar that the opponent had not shown any trade or reputation in the United Kingdom in Swiss preparations for making 5 chocolate or cocoa beverages would have been appropriate to a passing-off action but was the wrong test for section 11.
(3) Both chocolate and cocoa powder were produced from the cocoa bean and manufacturers of chocolate and chocolate powder also manufactured cocoa powder.
(4) SWISS MISS would be confusing and deceptive applied to chocolate not of Swiss origin; it would be equally confusing and deceptive in respect of chocolate powder or cocoa powder for beverages.
A substantial number at least of those who would assume that powder for making a chocolate drink labelled "Swiss Miss" came from Switzerland would also assume that a powder for making a cocoa drink labelled "Swiss Miss" similarly had a Swiss origin
(5) The absence of confusion in the USA was of no assistance since American shoppers might not associate Switzerland with any product.
(6) Although a geographical name might be used to evoke an association but not a belief as to the origin of manufacture, this was not the case here.
SAVILE ROW Trade Mark [1998] R.P.C. 155
An application was made to register the mark SAVILE ROW in class 9 in respect of spectacle frames and eyeglasses. The applicants referred to Registry practice (whereby street names were generally considered registrable in Part B provided there was no connection with the goods in question) and claimed that Savile Row had no reputation in respect of eyewear. They maintained that registration of their mark would not interfere with its use by others as a street name. In spite of the use of the mark after the date of application, the applicants were not aware of any instance of confusion.
Registration was opposed on the grounds that the mark was not capable of distinguishing A's goods under the Trade Marks Act 1938 s. 10 that the public would assume that the goods came from the Savile Row area causing deception contrary to s.11, and that the words SAVILE ROW had been used by the opponents as a trade mark in connection with eyewear and use by A would be calculated to deceive contrary to the 1938 Act s.11.
Held, refusing the application, that
(1) The mark was not capable of distinguishing A's goods under the 1938 Act s.10,
(2) There was a concentration of tailoring businesses, including fashion houses, in Savile Row and it was difficult to envisage that the latter would not be affected by registration. The objection under section 10 succeeded. Given the association between designer eyewear and fashion wear, it would be assumed that sunglasses bearing the applicants' mark indicated a connection with Savile Row
The general public would assume that SAVILE ROW used in relation to designer or fashion sunglasses meant that the goods emanated from or were associated with Savile Row. That would cause deception contrary to s.11;
(3) Although no instance of confusion had come to light, A's evidence of user was of little assistance as they had not asked their customers what the mark meant to them, and
(4) It was not clear that the opponents had used the words Savile Row as a trade mark in connection with eyewear and the second objection under s.11 failed.
Prohibition of registration of identical or resembling trademarks.
Section 25 states that subject to section 27 (concurrent use), a trademark relating to goods shall not be registered in respect of goods or description that is identical with or nearly resembles a trademark belonging to a different owner and already on the register in respect of –
a) the same goods;
b) same description of goods; or
c) Services or description of services which are associated with those goods or goods of that description.
Invicta Trade mark case (same description of goods)
There was an application to register TM INVICTA in respect of pharmaceutical preparations and substance – all for humans. An objection was made to this application because there were already marks registered on the register an identical mark INVICTA in respect of insecticides, fungicides, herbicides for use in agriculture. The application was refused by the hearing officer on ground that the goods were of the same description as fungicides for use in agriculture. The appellant appealed.
The issue was whether or not fungicides for use in agriculture other than for treatment of animals are the same goods or goods of the same description as any goods which could be included within the term “pharmaceutical preparations and substances all for humans”?
Court held, allowing the appeal;
Applying the Jellinek’s test, the nature of fungicides in question were the same but their uses were different and, although individual companies might make both types of fungicides, the trade channels by which they reached the public were different. The pharmaceutical and agricultural trades were sufficiently different that products of a similar general description would as a matter be regarded as essentially different. The criteria for assessing whether o not goods are goods of the same description laid down by Romer J in Jellinek’s Application, Romer advised it is necessary to have regard to the following;
1) nature of the respective goods, and he considered here their compositions
2) uses of the respective goods, and
3) Trade channels through which the commodities respectively are bought and sold, ranging from the manufacturers to the retail outlets.
BRITISH SUGAR PLC V JAMES ROBERTSON & SONS LTD
(laudatory term – TREAT as lacking distinctiveness, different purpose of goods jams and jellies as opposed to desert sauce – different class of registration – identical mark, identical goods)
In 1992, British Sugar registered the mark TREAT in class 30 for ‘dessert sauces and syrups’. The mark was used on “silver spoon Treat” a syrup to be poured over desserts and in particular ice cream. The syrups were very successful. In 1995, James Robertson produced a spread known as “Robertson Toffee Treat” which came in a slightly oval jam jar. The keyword on the background was “Robertson Toffee Treat” coupled with a description “irresistibly rich toffee spread”. British sugar brought an action for trademark infringement against James Robertson on the basis of inclusion of the mark TREAT as a part of the name of their product.
Jacob J observed that jams and jellies are usually registered in class 29 and that Robertson product fell outside the class of goods directly protected by the mark i.e. class 30 for dessert sauces and syrups. In relation to infringement, he held that there was no likelihood of confusion, the products had completely different uses and were presented wholly differently.
An issue arose as to whether the sign James Robertson was identical to the mark TREAT under s.10 that prohibited identical mark in relation to goods which are identical on the basis that treat had been included within the infringing sign. It was held that the mark did not constitute infringement. Furthermore, that the mark TREAT had not been shown to have a distinctive character being a laudatory term. That lots of people used the term “Treat” in advertisements and on goods.
Jacob J laid down the factors relevant in considering whether there is similarity;
a) The respective uses of respective goods or services;
b) The respective users of goods or services;
c) The physical nature of goods or services;
d) The respective trade channels through which goods or services reach the market;
e) In case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular where they are, or are likely to be, found on the same or different shelves.
f) The extent to which respective goods or services are competitive. This inquiry may take into account how those in trade classify goods.
Turning to the present case, the two products to some extent have the same use, but broadly in practice have different uses. They are hardly in direct competition and consumers will find them in different places in supermarkets. Their physical nature is somewhat different, the Robertson product being hardly pourable and needing a spooning out of the jar whereas the British Sugar product is meant to be poured out of the small hole in the plastic top.
(On confusion) they have different primary purposes (topping rather than spread), different presentations and both products are sold with their house trademarks, Silver Spoon and Robertson's, prominently displayed. Things might perhaps be different if "Treat" were firmly established as a trade mark - almost a household name, but, as will be seen, I do not think it is. I cannot think that Robertson's use of "Treat" causes British Sugar any commercial harm. Indeed whatever the name of the Robertson's product I doubt whether it would have much effect on the Silver Spoon syrups
NAIROBI JAVA HOUSE AND MANDELA AUTOSPARES LTD. (LIKELIHOOD OF CONFUSION SIMILAR & IDENTICAL MARKS)
(Registrar’s decision + highcourt madrama’s decision – was madrama wrong?)
Registrar’s decision
Application for registration of trademark by Nairobi Java House and Mandela Autospares Ltd in Opposition.
Nairobi Java House ltd applied for registration in Part B of two trademarks “NAIROBI JAVA HOUSE” and “JAVA HOUSE CAFÉ” in class 43. The applications were allowed to be published in the gazette on 30th September 2013. On 26th November 2013, Mandela Autospares limited filed notice of opposition to the registration of the Applicant’s mark on ground that the Applicant’s trademarks are confusingly similar to the opponent’s registered marks. The opponent (Mandela Autospares ltd) is the registered proprietor of JAVAS and CAFÉ JAVAS including in respect of class 43.
The applicant filed a counter statement stating that the word “JAVA” was descriptive and the Applicant and the opponent’s trademarks are distinguishable and capable of concurrent usage.
On distinctiveness of the word Java, the court held;
“The Applicants stated that the word java was descriptive and therefore not capable of distinguishing the services of the opponents because it had become synonymous with coffee shops and restaurants worldwide. In other words, that the mark does not serve the essential function of a trademark that is to identify the origin of services.”
Court referred to the case of Rewe Zentral v OHIM (LITE) (2002) ECR II 705 where it was held that for a trademark to become a generic indication, it has to lose by reason of use thereof by third parties, its capacity to perform the essential function of a trademark i.e. identifying origin of goods or services.
In case c-517/99 Merz & Krell [2001] ECR 1-6959 it was noted that it was not the descriptive nature of the mark that was decisive but current usage in the trade sectors covering trade in the goods or services for which marks are sought to be registered.
The Applicant provided various online dictionary meanings that define ‘java’ to mean coffee or an Indonesian island or computer programming language; internet search results were provided to show use of ‘java’ together with other various establishments. From the Applicant’s own definitions ‘java’ clearly does not describe restaurants or even relevant activity in this case which is provision of food is and drink services. That the fact the mark describes coffee served in restaurant is not itself sufficient to render the mark descriptive of services themselves. Court held that Java is not a generic reference to coffee shops.
On similarity of the trademarks, court referred to s.25 (2) renders clearly identical or resembling trademarks with regard to same services, description of services or associated goods and services un registrable excerpt as provided under s.26.
With regards to likelihood of confusion, the opponent’s case was that there was a likelihood of confusion as the trademarks in issue nearly resembled basing on the similarities between the marks, overall impression and similarity between services. The opponents submitted evidence from Mr. Senyondwa and a newspaper article. The applicants on the other hand argued that there was no likelihood of confusion because the consumers of the relevant services had superior levels of discernment.
Court held that confusion arises from use of a trademark, the exclusive right of which belongs to the registered proprietor pursuant to s.37 for marks registered in part A. When considering likelihood of confusion, case law is well settled as provided in Anglo Fabrics (Bolton) ltd v African Queen ltd & Anor, Canon Kabushiki v MetroGoldwyn-Mayer Inc among other cases, that:
i. Likelihood of confusion is the probability that a reasonable consumer in the relevant market will be confused or deceived, and will believe the infringers goods or services come from, or are sponsored or endorsed by, the complainant or that the two are affiliated;
ii. The matter must be judged through the eyes of an average consumer of goods or services in question; who is deemed to be reasonably informed and reasonably circumspect and observant but who rarely has chance to make direct comparisons between the marks and must instead rely upon the imperfect picture of them they have kept in mind
iii. The average consumer normally perceives the mark as whole and does not analyse its various details;
iv. The visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make comparison solely on the basis of the dominant elements;
v. Where the overall impression created by a mark depends heavily on the dominant features of the mark, It is possible that in a particular case an element corresponding to an earlier trademark may retain an independent distinctive role in a composite mark without necessarily constituting a dominant element in that mark;
vi. A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and vice versa;
vii. There is a greater likelihood of confusion where the earlier trademark has a highly distinctive character, either per se or because of the use that has been made of it;
viii. Mere association, in the sense that the later mark brings the earlier mark to mind is not sufficient;
ix. The reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;
x. If the association between the marks causes the public to wrongly believe that the respective goods or services come from the same or economically linked undertakings, there is a likelihood of confusion.
Reasonable consumer
The Applicant had argued that there was no likelihood of confusion because the consumers of the relevant services had superior levels of discernment. Court rejected this assertion in favour of a reasonable consumer. Court held that a reasonable consumer was an average consumer.
Court observed that visually the marks did not resemble. The Applicant’s mark in addition t the words had a red device of a face in a sun and the whole representation was positioned vertically with black borders against a yellow background whereas the opponent’s mark on the right comprised of a device of a smoking cup over stylized words in orange and black, the whole representation was positioned horizontally. That placed side by side, the marks differed.
Applicant’s mark
Opponent’s mark
However went on to add that, there were some conceptual similarities that impact the overall impression of the marks. Both marks had a dominating element of the letters or word ‘java’ which in both marks stood out and played a conspicuous role in the perception of the mark.
The similarity of the dominating element was not sufficient to lead to a likelihood of confusion in the strict sense. That although there was a likelihood of association in that that word ‘Java’ comprised in the Applicant’s mark brought to mind the Opponent’s mark, this was not enough to lead to a likelihood of confusion.
The court relied on the dicta in the case of Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (supra) that a lesser degree of similarity between the marks is offset by a greater degree of similarity with regard to the services, in coming to the conclusion that there was a likelihood of confusion.
The mode of dining, price ranges, the impression given by the surrounding circumstances in provision of their services were similar.
The Court held that given the similarity of the services offered by the two restaurant businesses, members of the public would likely confuse the Applicant’s services for those of the opponent bearing in mind that the opponent had built up a reputation for over 6 years.
Concurrent usage.
The Applicant argued in the alternative that they should be permitted on the register as concurrent users because they had been honestly using the mark “JAVA” in Kenya for fifteen years
Section 27 Trademarks Act provided that the registrar or court may permit the registration by more than one owner, in a case of honest concurrent use or other special circumstances in respect of—
(a) The same goods or services;
(b) The same description of goods or services;
(c) Goods and services or descriptions of goods and services which are associated with each other; or
(d) Trademarks that are identical or nearly resemble each other, subject to such conditions and limitations as the registrar or the court may impose.”
Court held that it was not allowed under section 25 of the Trademarks Act to register identical or resembling marks except if the Registrar or Court exercised their discretion to register such a mark under section 27. That section 27 required a two stage analysis. First, is to determine whether there had been use, concurrent use and honesty of the concurrent use and secondly, to look at any other special circumstances. ‘Use’ referred to use in connection with the services provided in Uganda prior to the date on which the application was made.
Court came to the conclusion that there was no evidence of the Applicant’s use of the trademark in Uganda, therefore the question of honest and concurrent use did not arise. Court could not accept the argument that use of the mark in another country like Kenya amounted to use in Uganda mainly because of the principle of territoriality (see section 37(3) Trademarks Act).
On Appeal judgement by Christopher Madrama (High court).
Court stated that in considering whether the trademark is capable of distinguishing, regard has to be paid to s.10 (1), (2), and (3).
On inherent capability to distinguish, the word JAVAS. The doctrine is that an ordinary word is not inherently capable of distinguishing services excerpt through use or distinctiveness generated by other factors. That going by …….
That the registrar erred in two aspects on a matter of fact. First, he rightly established that the word java meant a geographical place in Indonesia – was it registrable without need to prove distinctiveness? No. secondly, he erred not to find that the word java is certainly associated with coffee and restaurants.
Going back to section 9 of Trademarks Act, distinctiveness has a statutory definition. It means under section 9 (2)(b) in relation to provision of services, “adapted in relation to services in respect of which the trademark is registered or proposed to be registered, to distinguish services with which the owner of the trademark is or may be connected in the course of trade.
Last but not least, in determining whether the mark has been adapted to distinguish goods or services the court or registrar shall have regard under section 9(3) of the Trademarks Act to the extent to which the trademark is inherently adapted to distinguish goods or services and (b) by reason of use of the trademark or any other circumstances, the trademark is in fact adapted to distinguish. Court concluded that the word java is common to services the appellant is undertaking and which the respondent also does.
Implications of registration of the Appellant in Kenya prior to its application in Uganda. The registrar did not take into account the prior registration of the Appellant in Kenya yet it was the most material matter for consideration. (Concurrent use). What needs to be considered before considering likelihood of confusion or similarity of the opponent’s mark is which mark takes priority. The Applicant’s mark is a foreign registered trademark having been registered in Kenya and the owner sought to register its mark in Uganda as well. Court cited the Paris Convention for the Protection of Industrial Property 1883, on registration of foreign marks under Article 6. Article 6 provides for protection of marks registered in one country of the union in other countries of the union and the question is what protection does Kenyan registered mark of the Appellant have in Uganda? Article 6 provides in Paragraph A (1) (2) and B that countries of the union which include Kenya and Uganda shall accept trademarks registered in a country of the union for filing. Certificate of registration required from an Applicant of a foreign registered trademark in the country of origin. Trademark may neither be denied or invalidated excerpt when they infringe rights acquired by third parties where protection is claimed. Secondly, when they are devoid of any distinctive character or contrary to morality or public order.
Uganda Trademark Act 2010 has demonstrated some of the principles of the Paris Convention for the protection of industrial property under section 44and 45.
S. 44(1) gives registrar powers to refuse to register a trademark where it resembles or is identical with a foreign registered trademark registered prior in time.
S. 44(2) refuses registration where foreign mark is identical with or nearly resembles a trademark which is already registered in respect of the same services or goods.
s. 44(3) provides that an application shall not be refused where the applicant proves that his or her predecessors in Uganda have continuously used the trademark whose registration was made before registration of the other mark in the country of origin.
General principles from s. 44 and s. 45 of the Trade Marks Act 2010 of Uganda is that the mark registered first in time takes priority to a later trademark in case of resemblance.
S. 45 provides for removal from the register a trade mark which is registered after a foreign registered mark in case the trade mark registered in Uganda is identical or similar or nearly resembles trade mark of the plaintiff registered in a foreign country in respect of same services and registered prior in time.
S. 7 provides for removal of non-tariff and other technical barriers to trade and measures that restrict free movement of goods and services. S. 44 and S. 45 of Trade mark Act supports freedom of movement of goods and services in the East African Community.
The concept of an average consumer must import representation of opinion. As far as likelihood of confusion is concerned, there was no survey which had been conducted.
In case of association of the word java through use or association to acquire distinctiveness, the appellant had been using the mark in Kenya since 1999.
SABEL BV V PUMA AG [1998] RPC 199, [1997] EUECJ C-251/95
In this case, the point of contention lay in the semantic content in both marks – ‘a bounding feline’ in determining confusion. Dutch company Sabel BV applied to register a mark in Germany that depicted a running cat, for goods in class 18 ‘leather and imitation leather products, bags and hand bags and class 25 ‘clothing, including tights, hosiery, belts, footwear, hats. Puma lodged opposition to the registration of the mark on ground in particular that it was the proprietor of the pictorial mark, image file puma, which was of earlier priority registered in Germany for leather and imitation leather goods made there from (bags) and articles of clothing. The German Court referred on the matter concerning the interpretation of the likelihood of association concept to the ECJ (Case C-251/95).
The issue to be decided was whether the mere association which the public might make between the two marks as a result of their resemblance was sufficient to satisfy the requirement for a likelihood of confusion.
Held by ECJ’
The ECJ followed the Advocate General's previous Opinion in the case and decided;
That a likelihood of association was not sufficient and could not be regarded as an alternative to a likelihood of confusion.
The ECJ judgment also contains useful guidance on how to approach the question of likelihood of confusion when comparing two marks. It was stated that the likelihood of confusion must be based on the marks as a whole, taking into account their distinctive and dominant components. The more distinctive a mark the more confusion with a similar mark will be likely. However if a mark is not particularly distinctive because it is neither well known nor of imaginative content (as was the case here) the mere fact that the marks are similar is unlikely to give rise to confusion.
The court set out three possible links between a mark and a sign;
The likelihood of association may arise in three sets of circumstances: (1) where the public confuses the sign and the mark in question (likelihood of direct confusion); (2) where the public makes a connection between the proprietors of the sign and those of the mark and confuses them (likelihood of indirect confusion or association); (3) where the public considers the sign to be similar to the mark and perception of the sign calls to mind the memory of the mark, although the two are not confused (likelihood of association in the strict sense)
The test of whether a sign is confusing is how the use of the sign would be perceived by the average consumer of the type of goods in question.
The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case. That global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The average consumer normally perceives a mark as a whole and does not proceed to analyses its various details. In that perspective, the more distinctive the earlier mark, the greater will be the likelihood of confusion. It is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public.
The court thus concluded on the reference that the criterion of 'likelihood of confusion which includes the likelihood of association with the earlier mark' contained in Article 4(1)(b) of the Directive is to be interpreted as meaning that the mere association which the public might make between two trademarks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of that provision.
In ANGLO FABRICS (BOLTON) LTD and ors v AFRICAN QUEEN LTD and Ors.
The plaintiff’s case was that the defendant was importing, selling and disposing of in Uganda medicated soap bearing its registered trademark ‘mekako’. The 1st plaintiff registered a trademark ‘mekako’ under part A of the trademark act in respect of goods in class 3 on 7th October 1998. The 2nd plaintiff was the sole registered user in Uganda of the trademark mekako, that is, the only person authorized by the 1st plaintiff to import its products into the country. The defendant imported into the country a soap product known as mekako. The first plaintiff was a foreign registered company resident in the United Kingdom. The 1st defendant was a liability company and the 2nd defendant its managing director.
Issue: whether the product imported by the defendant infringes on the plaintiff’s trademark in Uganda.
Held by Justice Yokaramu Bamwine:
The registration of a person as the proprietor thereof is prima facie evidence of validity of registration of the trademark and all subsequent assignments and transmissions of the same. It is an admitted fact that the 1st plaintiff registered a trademark ‘mekako’ in Uganda. The 2nd plaintiff is the sole registered user in Uganda of the trademark mekako. He is in other words the only person authorized by the 1st plaintiff to import its products in the country. The plaintiffs are the only registered proprietors and registered users respectively authorized in law to use the trademark mekako. Any other person who uses the same without authorization of the above persons would be infringing the trademark.
The packaging of the plaintiffs’ and defendant’s products was the same. In cases where trademark infringement is alleged, the infringement occurs when a suspected infringer uses a mark for goods or services identical or closely related to those of the plaintiff. The test of infringement is likelihood of confusion.
Likelihood of confusion is the probability that a reasonable consumer in the relevant market will be confused or deceived, or will believe the infringer’s goods or services come from, or are sponsored or endorsed by, the complainant or that the two are affiliated. That infringement is analogous to the tort of fraud. Since soap was brought without authorization, court answered the issue in affirmative.
The duty of the Judge in a case such as this is to decide, upon seeing the goods, whether the plaintiffs’ goods nearly resemble the ones complained of as to be likely to deceive or cause confusion in the minds of the public
Section 27(2) accordingly relates to trademarks relating to services.
Civil remedies
S. 79 provides for civil remedies in case of imminent danger of infringement or infringement may institute civil proceedings in court to prevent the infringement or prohibit the continuation of infringement.
S. 36 & 37 provide for exclusive right to use of trademark registered in part A, for goods and services respectively. Subsection 2 of respective provisions state that the right conferred shall be taken to infringed by any person who, not being the registered user of the trademark or person permitted to use the trademark, uses a mark identical or resembling it, as likely to cause confusion in the course of trade in relation to goods of the same description..
Likelihood of confusion.
CANON KABUSHIKI KAISHA v. METRO-GOLDWYN-MAYER INC. (formerly PATHE COMMUNICATIONS CORPORATION)
Trade marks—Likelihood of confusion—Similarity of goods and services—
Whether account may be taken of the reputation of a trade mark in assessing
similarity of the goods or services covered by the trade mark.
Facts.
On July 29,1986, Pathe Communications Corporation ("Pathe"), which is based in the United States of America, submitted an application to register the word trade mark "CANNON" in respect of the following goods and services: "films recorded on video tape cassettes (video film cassettes); production,
distribution and projection of films for cinemas and television institutions". That application was opposed by Canon Kabushiki Kaisha ("CKK") on the grounds that it infringed its own word trade mark "Canon". That mark had already been registered, inter alia, in respect of "still and motion picture cameras and projectors; television filming and recording devices, television transmission devices, television receiving and reproduction devices, including tape and disc devices for television recording and reproduction".
According to the Bundesgerichtshof, it must be assumed for the purposes of legal assessment that the two marks "CANNON" and "Canon" sound identical. They are not, however, applied in respect of identical goods and services. The question with which the German courts have been confronted is whether the respective goods and services can nevertheless be regarded as similar.
When Pathe's application was examined by the German authorities the first examiner considered that the goods and services of the opposing parties were indeed similar and accordingly refused to register the mark "CANNON". The second examiner set aside that decision and dismissed the opposition on the ground that there was no similarity. CKK appealed to the Bundespatentgericht
(Federal Patent Court) but its appeal was dismissed by an order dated April 6, 1994. CKK then appealed to the Bundesgerichtshof and it is in the context of those proceedings that the present reference has been made.
The Bundespatentgericht dismissed CKK's appeal because it agreed with the second examiner that there was no similarity, within the meaning of Paragraph 5(4)(1) of the WZG, between the parties' goods and services. In its view, there could be similarity only if the goods or services, in accordance with their economic significance and use, and with respect in particular to their usual places of manufacture and sale, had such close points of contact that the average purchaser might form the opinion that they came from the same business operation.
CKK claims that 76.6 per cent of the population knew its mark in November 1985 and the Bundesgerichtshof states that that must be taken as meaning that the mark
"Canon" was a recognised mark. The Bundespatentgericht, however, considered
that the reputation of CKK's mark was of no significance in assessing the similarity
of the goods and services in question.
It stated that it could not be assumed that video film cassettes were similar to the television devices covered by CKK's mark or to the video cameras distributed by CKK.
Court found that in relation to recorded video cassettes; and inquiries in relevant specialist shops had shown that no name of a manufacturer of television devices or video recorders could be found in the range of recorded video cassettes. The court accordingly considered that it could not be assumed that the relevant average
purchaser thought that recorded video tapes and the corresponding recording and
reproduction devices came from the same business operation. That even members of
the public were sufficiently aware of the different conditions for the manufacture
of recorded cassettes and understood that video cassettes and video recorders do
not come from the same manufacturer.
The Bundespatentgericht also rejected the possibility of similarity between the services specified in Pathe's application relating to "production, distribution and projection of films for cinemas and television institutions" and the television filming devices etc. protected by CKK's mark. The Bundespatentgericht con-sidered that the fact that cameras and projectors were used to produce and project films did not mislead persons, to an extent relevant for trademark law purposes, to conclude that the producers of such devices regularly also produced, distributed or projected films.
In its appeal against the order of the Bundespatentgericht, CKK argues that,
since the implementation of the Trade Marks Directive into German law, the
approach of the Bundespatentgericht to the assessment of the similarity of goods
or services is no longer appropriate. It submits that its mark "Canon" is a famous or well-known mark and that that fact, coupled with the fact that video film cassettes and video recording and reproduction devices are offered through the
same points of sale, should lead to the conclusion that the goods covered by the
two marks are similar and that there is consequently a likelihood of the public
being confused within the meaning of Art 4(1)(b).
Issue: Whether, in assessing whether goods or services should be considered to be similar within the meaning of that provision Art 4 (1)(b), the degree of distinctiveness of an earlier mark, in particular its reputation, may be taken into account.
Court observed that "CANNON" and "CANON", are pronounced in the same way and the mark "CANON" has a reputation;
Under the previous law, there had to be objective similarity between the goods or services: there was thus no protection under trade-mark law where there was no objective similarity of goods and services, however similar the marks and whatever the reputation of the earlier mark.
Commentators argue that, since the implementation of the Directive that is no longer the case: there is now an inverse correlation between, on the one hand, the similarity of the goods and services and, on the other, the similarity of the marks and the distinctive character of the earlier mark. Thus the closer the marks and the more distinctive the earlier mark, the less similarity of goods or services needs to be shown. According to the Bundesgerichtshof, such an interpretation would mean that it would be considerably easier than under the previous German law to demonstrate a likelihood of confusion.
Assessment of the similarity of goods and service.
The main argument in this case has focused on the question whether the degree of distinctiveness of a mark, in particular its reputation, can be taken into account when assessing whether goods or services should be regarded as similar within the meaning of Article 4(l)(b).
All trademarks, if they are to perform their function, should be distinctive; a trade mark which is devoid of any distinctive character is, pursuant to Article 3(l)(b) of the Directive, not to be registered and, if registered, is liable to be declared invalid. But distinctiveness is a matter of degree. A trade mark might be particularly distinctive either because it is well known or because it is of an unusual character. The more well known or unusual a trade mark, the more likely it is that consumers might be confused into believing there to be a trade connection between goods or services bearing the same or a similar mark. As the court observed in its judgment in SABEL, "the more distinctive the earlier mark, the
greater will be the likelihood of confusion" (cited in note 8, paragraph 24 of the judgment). It should be noted, however, that in that case, in contrast to the present
case, it was not disputed that at least some of the goods to which the marks in question related were the same; the question was whether the marks (as opposed to the goods) in question were sufficiently similar to give rise to a likelihood of confusion.
In my view, the decisive consideration in resolving the issue is the statement in the tenth recital of the preamble to the Directive that the appreciation of the likelihood of confusion depends in particular on the recognition of the mark.
That statement makes it clear that the recognition of the mark, although not
specifically mentioned in Article 4(l)(b) of the Directive, is relevant in deciding whether there is sufficient similarity to give rise to a likelihood of confusion. That view is also confirmed by the judgment of the court in SABEL, in which it held that the "likelihood of confusion must... be appreciated globally, taking into account all factors relevant to the circumstances of the case". It is true that that statement was made in a different context: the court was
there considering the question whether conceptual similarity of the marks alone
could give rise to confusion within the meaning of Article 4(l)(b), in a situation in
which the goods in question were clearly the same. However the statement is one of general application.
I would emphasise that although in my view the degree of recognition of the
mark must be taken into account in deciding whether there is sufficient similarity
to give rise to confusion, the requirement of similarity must be given full weight, both in assessing the similarity of the marks and in assessing the similarity of the goods or services in question.
It is therefore incorrect to suggest that, in consequence of the implementation into national law of Article 4(l) (b) of the Directive, it may no longer be necessary in the case of a particularly distinctive mark to establish the similarity of the goods or services in question. In assessing the similarity of the goods or services it will be helpful to have regard to the factors suggested by the United Kingdom and French Governments.
According to the United Kingdom Government, the following type of factors should be taken into account in assessing the similarity of goods or services:
(a) the uses of the respective goods or services;
(b) the users of the respective goods or services;
(c) the physical nature of the goods or acts of service;
(d) the trade channels through which the goods or services reach the market;
(e) in the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;
(f) The extent to which the respective goods or services are in competition with each other: that inquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectors.
(Taken from the judgment of the English High Court in British Sugar Pic v. James Robertson & Sons Ltd on May 23,1996 ([1996] R.P.C. 281).)
Conclusion: In the assessment of the similarity of goods or services covered by two marks within the meaning of Article 4(l) (b) of First Council Directive 89/104/EEC account may be taken of the distinctive character, in particular the reputation, of the earlier mark in deciding whether there is sufficient similarity to give rise to a likelihood of confusion. However, there will only be a likelihood of confusion within the meaning of that provision if it is likely that the public will be confused into thinking that there is some sort of trade connection between the suppliers of the goods or services in question.
The court has held that the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (Case C-251/95 SABEL v. Puma [1997] E.C.R. 1-6191, paragraph 22).
A global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trademarks and between these goods or services. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa. The interdependence of these factors is expressly mentioned in the tenth recital of the preamble to the Directive, which states that it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services identified.
Furthermore, according to the case-law of the court, the more distinctive the earlier mark, the greater the risk of confusion {SABEL, paragraph 24). Since protection of a trade mark depends, in accordance with Article 4(l) (b) of the Directive, on there being a likelihood of confusion, marks with a highly distinctive„ character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character.
It follows that, for the purposes of Article 4(l)(b) of the Directive, registration of a trade mark may have to be refused, despite a lesser degree of similarity between the goods or services covered, where the marks are very similar and the earlier mark, in particular its reputation, is highly distinctive.
On a proper construction of Art 4(1)(b), the distinctive character of the earlier trade mark, and in particular its reputation,
must be taken into account when determining whether the similarity between the goods or services covered by the two trademarks is sufficient to give rise to the
likelihood of confusion.
For the trade mark to be able to fulfil its essential role in the system of
undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality (see, in particular, Case C-10/89 HAG GF (HAG II) [1990] E.C.R. 1-3711, paragraphs 14 and 13). Accordingly, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from
economically-linked undertakings, constitutes a likelihood of confusion within
the meaning of Article 4(l)(b) of the Directive
IN THE MATTER OF AN APPLICATION BY THE PIANOTIST COMPANY LTD. FOR THE REGISTRATION OF A TRADE MARK
Before Justice Parker.
Trade Mark.-Application for registration.-Opposition.-" Neola" not too near" Pianola."-Appeal from the decision of the Comptroller dismissed.-
Facts.
An application was made for the registration as a Trademark of the word
"Neola" for" a piano player, being a musical instrument included in Class 9."
The registered proprietors of a Trade mark “Pianola" registered for all goods in Class 9 opposed the registration. The Comptroller decided against the Opponents and ordered the registration to proceed. The Opponents appealed. The appeal was referred to the Court,
Held: that having regard to the kind of customers for such goods and a difference in the articles actually sold under the names, there was not likely to be any confusion. The appeal was dismissed with costs.
Justice parker stated thus;
The limitation placed on the comptroller is that "... he is not allowed to register any goods having such resemblance to a Trade Mark already on the Register as to be calculated to deceive. That Section has been the subject of judicial decision on many occasions, and I think, without going into the details of the cases, it may be taken that the law is as follows:-You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case."
In this particular case we have this state of circumstances that the Opponents have on the Register the word "Pianola." The word "Pianola" was undoubtedly invented by them and has been registered, and is a perfectly good Trade Mark. There is some sort of evidence that it has become associated in the mind of the public with the Instrument, and not with the maker of the instrument-that is to say, that it has lost its primary signification of denoting an instrument made by a particular manufacturer, and has come to mean a particular class of instrument.
Now the mark which is proposed to be registered, and which the Registrar has passed, is "Neola," and the argument before me has taken two lines. In the first place, it is suggested that the importance of the Trade Mark" Pianola" lies in its termination, and that anybody who takes a word with a similar termination may cause confusion in the mind of the public. The second way it is put to me is, that the sounds of the words, although the look of the words may be different, are likely to be so similar that a person asking for a "Pianola" might have a "Neola" passed off on him, or vice versa.
Of course, one knows that the persons who buy these articles are generally persons of some education, (it is not quite the same as somebody going and asking for washing soap in a grocer's shop) and some consideration is likely to attend the purchase of any instrument of the cost of either of these instruments, whether it be a "Pianola" or a "Neola." Now, my opinion is that having regard to the nature of the customer, the article in question, and the price at which it is Iikely to be sold, and all the surrounding circumstances, no man of ordinary intelligence is likely to be deceived. If he wants a " Pianola" he will ask for a "Pianola," and I cannot imagine that anybody
hearing the word "Pianola," if pronounced in the ordinary way in the shop, and knowing the instruments as all shopmen do would be likely to be led to pass off upon that customer a " Neola" instead of a " Pianola."
ORIGIN NATURAL RESOURCES INC V ORIGIN CLOTHING.
Court denied a request by the owner of the trademark, "Origins," to prohibit the use of "Natural Origins." The first trademark, while strong, is used on cosmetics and looks quite different from the other trademark, which is used on women's clothing. There is no likelihood of consumer confusion.
Origins Natural Resources owns the trademark "Origins." It has been used on a few clothing items over the years, but is largely used on a successful line of cosmetics that are sold nationally. Origins filed for an injunction barring Kotler from using the trademark "Natural Origins" on a line of upscale women's clothing, contending that it was infringement and diluted the value of the "Origins" trademark.
Injunction denied. Origins is a relatively strong mark that is suggestive. However, consumers are unlikely to be confused between Origins and Natural Origins. The product lines, cosmetics and women's clothing, are distinct, and the marks are different. The script used on the marks are quite different, further distinguishing them from each other. Origins is a common word in English, so Origins cannot have complete control of the term.
WAGAMAMA TRADEMARK CASE.
Before Laddie J.
The plaintiff company, Wagamama Limited, owns and operates a restaurant under the name WAGAMAMA. It was the proprietor of the mark Wagamama, registered in classes 32, 33 and 42 and cover a range of services and goods including restaurant services, catering services. Wagamama came to England from Hongkong and operated its restaurant business in streatham street, London in 1992. It was described by mr. Yau, its managing director as a Japanese style noodle bar. Mr. Yau used the word Wagamama, japanese word for selfishness or wilfulness, because he thought it would be suitable for his restaurant. The word WAGAMAMA has no meaning to the overwhelming majority of the population in England. The plaintiff's business became very successful and received a number of awards including The Independent Restaurant of the Year award in 1992 and the Time-Out Best Budget Meal of the Year award in 1993. An indication of WAGAMAMA's success is that customers are prepared to queue out into the street and wait for up to half an hour before they get a table. The defendant decided to develop a branded restaurant chain called it RAJAMAMA. The restaurant was began by the very end of April 1995. The plaintiff commenced action against the defendant for using the mark RAJAMAMA. After the launch of the application for interlocutory relief the defendant changed to the use of RAJA MAMA'S. The plaintiff says that both versions infringe its rights.
Laddie J Held:
The approach the court should adopt to infringement under s.10 was recently set out in by Jacob J in Origins Natural Resources Inc v Origin Clothing Limited [1995] FSR 280 in which at page 284 he said:
"Section 10 of the Trade Marks Act presupposes that the plaintiff's mark is in use or will come into use.
It requires the court to assume the mark of the plaintiff is used in a normal and fair manner in relation to the goods for which it is registered and then to assess the likelihood of confusion in relation to the way the defendant uses its mark, discounting external added matter or circumstances. The comparison is mark for mark." (Canon Kabushiki discounts this view and adds that similarity of goods is also taken into account).
Although the issue of infringement is one eventually for the judge alone, in assessing
the marks he must bear in mind the impact the marks make or are likely to make on the minds of those persons who are likely to be customers for goods or services under the marks. Not all customers are the same. It is therefore sometimes of assistance for the court to hear evidence from witnesses who will help him to assess the variety of ways in which members of the target market will pronounce the marks and what, to them, will be the visual or phonetic impact of the marks. When considering infringement it is also necessary to bear in mind the possible impact of imperfect recollection on the part of members of the target market.
Furthermore the defendant says that because the defendant's mark is made of two recognisable parts, it will naturally be understood as being two words and, at least in relation to the RAJA MAMA'S version, this will be confirmed when the mark is seen.
My attention was also drawn to the differences in the first syllable of the marks and to para 17.02 in Kerly's Law of Trade Marks and Trade Names 12 Edn which suggests that first syllables are particularly important when assessing the similarity of marks.
Court also referred to the case of Coca Cola v Pepsi Cola (1942) 59 RPC 127 in which Coca Cola failed to prevent the use of the trade mark Pepsi Cola because the only point of similarity was in the word "COLA" which was common to the trade. So here it is argued that the only real point of similarity between the plaintiff's and defendant's marks is in the word "MAMA" which also is common to the trade.
Whether there has been trade mark infringement is more a matter of feel than science. I have borne in mind all of the arguments advanced by the defendant. However in this case, it is significant that the marks are being used in relation to comparatively inexpensive restaurant services. This is an area where imperfect recollection is likely to play an important role. Although some of the target market may consider the defendant's mark to be made of two parts each of which has some sort of meaning, I think a significant section will not bother to analyse it in that way. To them it will be just another artificial mark.
Although I accept that when seen side by side the plaintiff's and defendant's marks are easily distinguishable, this is not determinative of the issue of infringement.
As the Privy Council stated in de Cordova v Vick (1951) 68 RPC 103 at page 106:
"A trade mark is undoubtedly a visual device; but it is well-established law that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words. . . . The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole."
I have come to the conclusion that the defendant's mark, in either form, is so similar to the plaintiff's registered mark that in use there exists a substantial likelihood of confusion on the part of the relevant public. That confusion is likely to take the form that some members of the public as a result of imperfect recollection
will think the marks are the same while others will think that they are associated in the sense that one is an extension of the other or otherwise derived from the same source.
Registration: Likelihood of confusion of Similar or Identical marks
INVICTA TRADEMARK
The applications for registration of the trademarks INVICTA and INVICTA PHARMACEUTICALS (included in a device) in respect of pharmaceutical preparations and substances, all for humans, were refused by the hearing officer on the ground that fungicides, within the specification, were goods of the same description as fungicides for use in agriculture, not being veterinary preparations, included in the specification of goods of the mark INVICTA registered in the name of another proprietor. The applicant appealed.
Issue: whether fungicides for use in agriculture (not being veterinary preparations) are "of the same description" as fungicides which are pharmaceuticals for human use?
Before Robin Jacob Esq;
Mr. Pittock held that the goods were "of the same description". He correctly sought to apply the well-known test of Romer J. in Jellinek's Application (1946) 63 R.P.C.
Even though the Act speaks of "same description" it is self-evidently not sufficient that one can light upon a description which is common to both sets of goods. For there will, at a wide enough level of generality, always be a description even if it is only "things"....Much will depend on the degree of generality of the common description and, for instance, whether it embraces many other goods also.
In his decision Mr. Pittock held that the goods satisfied the first and third limbs of the Jellinek test, though he accepted that the uses were rather different.
On trade channels, Mr. Pittock held that the trade channels were the same because the same sort of company (e.g. ICI) might make both, albeit in different divisions of subsidiaries. That Mr Pitttock took a narrow view of the concept of trade channel. I think it is the whole route to the market which Romer J. had in mind. The spring is not the stream; Pharmaceuticals and agricultural products reach the public by different routes, and I would say different channels.
Accordingly so far as Romer J.'s test is concerned, there is one only positive out of three rather than two. The pharmaceutical and agricultural trades were sufficiently different that products of a similar general description would as a practical matter be regarded as essentially different.
Prior registration of mark in country of origin and Non-use.
TECNO TELECOM v KIGALO INVESTMENTS LTD
Hon Lady. J Hellen Obura.
The application was brought under sections 45 and 46 of the trade mark Act of 2010. The Applicant sought to have the trade mark “TECNO” registered by the respondent in Uganda removed from the register on grounds of proof of prior registration in a country of origin and for non-use of trade mark. The director of tecno (agent of the applicant averred that tecno products had been in Ugandan market for sometime predating the registration of TECNO trade mark by the respondent in 2008. He averred that he had received a letter form the respondent’s lawyers informing them that the mark TECNO was registered in Uganda by the respondent in 2008 in respect of goods under class 9A. That the trade mark registered by the respondent was similar and identical to the trade mark first registered by the applicant in Hong Kong (in respect of goods in class 9). Further that the TECNO phones had been in Ugandan market prior to registration of the mark by the respondent and so that registration was an infringement on the applicant’s right to use the trade mark.
Issue: Whether the respondent’s mark can be removed from the register of trade marks in Uganda upon proof of prior registration in a country or place of origin of the goods?
Section 45 (1) of the Trade mark Act 2010 under which this application was brought provides that;
“subject to sun section (3), the court may on application within 7 years from registration in Uganda of a trade mark by the person aggrieved by registration, remove that trade mark if it is proved to its satisfaction that the trade mark is identical with a trade mark which was, prior to registration in Uganda of the trade mark, registered in respect of the same goods in a country or place from which the goods originate.
The cracks of the matter was the country or place from which the TECNO phones that the applicant manufactures or its agents in Uganda sell originate. The Original certification of registration of TECNO mark in Hong Kong is on record.
Held by Justice Hellen Obura;
That the applicant met all the conditions under s. 45 for the removal of the trade mark TECNO from the register of the trade marks in Uganda.
Through the Trademarks Ordinance of Hong Kong, Hong Kong fell under Part b of the Paris Convention as area subject to authority of sovereign and since China is a member state and signatory to the Paris Convention on Protection of Industrial Properties on its own behalf and on behalf of Hong Kong its special Administrative Region, Hong Kong through China accords Ugandan goods and services similar treatment.
In reply to the contention by the respondent that for this application to succeed, the applicant must prove that it is the registered owner of the mark TECNO in China mainland where goods/phones are manufactured, the Applicants stated that they were subsidiaries of the goods in China and that the goods originated from Hong Kong. Court held that for purposes of reciprocity, China and Hong Kong are the same.
Whether the respondent’s mark can be removed from the register for non-use s. 46 that prohibits registration of a mark without bona fide intention on the part of the applicant?
Under Halsbury Laws of England;
There is bona fide/genuine use of a trademark where it is used in accordance with its essential function, which is to guaranty the identity of the origin of the goods or services for which it is registered; in order to preserve an outlet for those goods or services.
Court held that the respondent had not been engaged in bona fide or genuine use of trademark rather it merely adopted a mark and out rightly used it for illegal purposes.
Internationally, there were efforts geared towards protecting intellectual property rights through fighting illicit trades such as counterfeiting and piracy because they were costly on the economy. Uganda is a signatory to TRIPS Agreement aimed at fighting illicit trade. S. 77 of Trademark Act creates an offence of falsely applying registered trademark to goods.
Court ordered trademark TECNO registered by the respondent to be removed from the register of trademarks in Uganda for non-use in accordance with s. 46 of Trademark Act 2010.
Non-use of a mark in the trademark sense See s. 46.
IMPERIAL GROUP PLC V PHILIPS MORRIS LTD
Imperial Group plc v Philip Morris Ltd, 1982 FSR 72, was a case of the Court of Appeal of England and Wales. The plaintiff (Phillips) endeavoured to register the trade mark "MERIT" for cigarette products, but was unable to do so on the grounds that the trade mark was too laudatory and thus, descriptive word. Instead, it registered the mark "NERIT", without any intention of using the mark, but in order to prevent other traders from using the mark "MERIT" because it would be considered too similar to the registered mark "NERIT". The intention was to obtain a de facto monopoly over the unregistrable mark "MERIT". To further legitimize the mark, Philip Morris sold roughly 1 million cigarettes under the name "NERIT", although had no real interest in using the mark as a legitimate trademark aside from its potential use against anyone using the word "MERIT.
The defendant (imperial) began using the mark "MERIT" for cigarettes and was sued by the plaintiff for infringing its mark "NERIT".
Held;
In its deliberation the Court of Appeals saw that Philip Morris' mark was merely a ghost mark, with no real intention to be used as a legitimate trademark, and was registered under bad faith, contrary to the Trade Marks Act 1938. For a trademark to be considered legitimate under the legislation it must be used "...in the normal course of trade", and not merely under the guise of use through the manufacture of a small batch in order to legitimize the mark or its use. What the plaintiff had was merely a ghost mark. To further illustrate the intent by the plaintiff in the matter, the Court saw that "[t]hey wanted to treat the word "MERIT" as if they had a copyright interest in it"; which they clearly did not have. The Court of Appeal in the end determined that the word "NERIT" was not registered bona fide, and clearly not used for a legitimate commercial purpose and therefore would not be allowed as a registered trademark.
The court struck down the registration for "NERIT" on the basis that the plaintiff had no genuine intention to use the mark (despite some "trivial and insubstantial" efforts at launching a NERIT-branded product
.
MOTHERCARE U.K LTD v PENGUIN BOOKS
Trade mark — Infringement - Use of a word as a trade mark — Use of a word in atrade mark sense.
The plaintiff objected to the publication of a book by the defendant entitled "Mother Care/Other Care" alleging passing off and infringement of its trade mark "Mothercare" registered in respect of books.
The Plaintiff (Mothercare) is a successful company which has built up a business of selling clothes and other goods for expectant mothers, babies and children. Mothercare has also registered the word "Mothercare" as a trademark in very many classes which cover the goods in which it deals, including books. Mothercare sells books for children including a manual for pregnant mothers with advice on how to cope with problems during pregnancy and with their babies.
The present action is founded on alleged passing off and alleged infringement of trademark by the use of the words "Mother Care/Other Care by Penguin ltd. Penguin published a book and titled it Mother care/other care. It was chosen as a descriptive title without any thought of Mothercare. No attempt was made by Mothercare to stop the American publication of the book, for the simple reason that Mothercare and its American management had never learned of the book's existence until very much later. The American publication of the book achieved success in critical and intellectual circles. It was accordingly decided that the book should be adapted for British readers and be published in the United Kingdom. The publication in the United Kingdom was to be by Penguin under the Pelican mark, and it was through seeing a pre-publication review of the British version of the book in the Daily Telegraph that Mothercare first learned of the book. The institution of this action speedily followed. The book is a serious sociological study of the problems facing working mothers who have to delegate the care of their children to others. The book is polemic and controversial. The title Mother Care/Other Care" chosen by the American publishers is such an obviously good descriptive title of what the book is about that it is not at all easy to think of an equally good alternative.
Held: In the present case the words "Mother Care" in the title of the book are not, in my judgment, used as a trademark or in any trademark sense. They are merely used descriptively as describing, with the words "Other Care", what the book is about. Accordingly, on the trademark aspect of this case also, Mothercare do not in my judgment get over the first hurdle of establishing that there is a serious question to be tried.
Registration of marks contrary to morality. See section 23 of the Act.
HALLELUJAH TRADEMARK.
Trademark - Application - Matter contrary to morality - Discretion to refuse registration - scandalous mark
Before Mr. Myall
Facts.
On 25th November 1974 Kabushiki Kaisha Kimawari Hallelujah (Himawari Hallelejah Co. Ltd.), a company organised under the laws of Japan, applied for the registration of the trade mark HALLELUJAH in Part A of the
Register, in respect of goods in Class 25 of the International Classification, viz.
"Articles of clothing for women". Objection was taken to the mark under section 11
of the Act on the ground that its use would be contrary to morality.
Under the spelling HALLELUJAH (-IAH) the Shorter Oxford English Dictionary (Little & Onions) 3rd Edition, revised 1964, gives the derivation as: "Hebrew, halIelu-yah, 'Praise (ye) Jah (==Johovah)'" and the meaning as: "The exclamation 'Praise (ye) the Lord (Jah, or Jehovah)' which occurs in many psalms and anthems, hence a song of praise to God.
From dictionary refences, It is clear that the word HALLELUJAH, however spelt, indicates to English-speaking people an exhortation to praise the Lord God, with the added fact, likely to be known to a substantial number of them, that the word
incorporates a direct reference to the name Jah, or Jahveh, or, more commonly, Jehovah.
The question I have to consider is whether this word can or should be registered as a trade mark in this country. In considering this question I have to bear in mind that there are some recorded instances of the word being used other than in its strictly sacred sense. For example, both the Shorter Oxford and Webster's dictionaries give: "Halleluiah lass" for a female member of the
Salvation Army. Webster's also quotes the example "jubilant hallelujahs for ... the 30
Minister of Housing" attributed to Mollie Panter-Downes.
It was insufficient to establish that the word Hallelujah has been generally freed for everyday use in a completely non-religious context. Moreover, there was no evidence of how either practising Christians or the public at large would regard use of the word as a trade mark on women's clothing, and still less of how registration would be regarded. On the other hand it is plain that the word has an overwhelmingly religious significance, made all the more so by the incorporation in it of the name Jehovah.
At present we live in what is commonly called the "permissive age", where previously
accepted moral standards are undergoing change. There have been similar periods
in the past and no doubt there will follow in due course a return to stricter standards
as the historical wheel turns full circle. However, it is well established that the
registrability of a trade mark must be judged as at the date of its application. I conclude that the phrase "contrary to morality" falls to be considered by the generally accepted standards of today and not by those of 1938.
The difficulty is to be sure what those are, and more particularly, where the line is to be drawn between marks whose registration is prohibited by the section and those where it is not ...it seems to me that the Registrar should only follow where others have given a clear lead. While he must not remain isolated from the day-to-day world, frozen in an outmoded set of moral principles, he must equally not presume to set the standard. He must certainly not act as a censor or arbiter of morals, nor yet as a trendsetter. He must not lag so far behind the climate of the time that he appears to be out of touch with reality, but he must at the same time not be so insensitive to public opinion that he accepts for registration a mark which many people would consider offensive.
Mr. Gyseman pointed to the prior registration of the word Hallelujah in respect of gramophone records in Part B of the register. He stated that no such objections was raised to the application. Court held 'that the circumstances therefore do not afford a parallel.' It may have been assumed that in conjunction with the goods concerned the word indicated recordings of religious music; there being many pieces of such music that have the word HALLELUIAH in their title; the most famous being the
Halleluiah Chorus from Handel's Messiah and the work of the same title by Mozart.
I do not think that Hallelujah records has quite the same impact as, say, Hallelujah
jeans, or Hallelujah underclothing. However that may be, the acceptance of the earlier application with the device does not suffice to displace the objection to the present one. Each application has to be judged on its own merits and for the goods on or in relation to which it is intended to use the mark.
The prohibition in section 11 is a factual matter and does not involve the exercise of the Registrar's discretion.
Taking into account the nature of the word
Hallelujah and the contexts in which it is almost universally used, as well as the
public reaction referred to earlier in this decision, I am of the opinion that there is a likelihood of its registration as a trade mark for clothing giving offence to many people.
JESUS TRADEMARK CASE.
Article 7(1) (f) of the Community Trade Mark Regulation and Section 3(3)(a) of
the UK Trade Marks Act 1994 provided that trademarks shall not be registered if they are ‘contrary to public policy or accepted principles of morality’.
In the present case the Registrar of Trade Marks has refused requests by Basic
Trademark SA (‘the Applicant’) for protection in the United Kingdom under the
provisions of the Madrid Protocol and the Trade Marks (International Registration) Order 1996 of the word mark: JESUS in class 25(clothing, footwear, head gear), 3 (soaps, perfumery), 9 (optical apparatus like sunglasses, eye glasses, lenses), 14 (precious metals and alloys, precious stone, jewellery), 16 (paper, cardboard, stationery), 18 (leather and leather imitations), 24 (textiles and textile good) and class 28 (games and playthings).
The power of a trade mark to produce a reaction inevitably varies according to the
nature and intensity of the perceptions and recollections triggered by the relevant mark. JESUS is the ultimate Christian name. It commands the highest degree of reverence and respect among committed Christians. The view that their religious beliefs should be respected is, I am sure, deep-seated and widespread. The very idea that the name JESUS should be appropriated for general commercial use as a trade mark is, I am equally sure, anathema to believers and those who believe in the need to respect the religious sensibilities of others. Their reactions would no doubt vary in terms of the way in which they handled their thoughts and feelings. I think the common response among such people would be a mixture of anger and despair according to temperament.
It follows, in my view, that the Hearing Officer was right to conclude that use of
the word JESUS as a trade mark would cause greater offence then mere distaste and do so to a significant section of the general public. The use of it as a trade mark should to use the expression I have used several times already be regarded as seriously troubling in terms of the public interest in the ‘prevention of disorder’ and ‘protection of morals’ under Article 10 ECHR.
FCUK TRADE MARK
Trade mark—Declaration of invalidity—FCUK mark—Whether mark contrary to accepted principles of morality—Whether any offence due to use of the mark per se—Registered proprietor’s use of mark making use of wordplay—Whether use after date of application for mark relevant.
Facts
The registered proprietor, French Connection Ltd, owned the mark FCUK for goods in Class 14 including watches and jewellery. The applicant, Dennis Woodman, sought a declaration of invalidity under s.3(3)(a) of the Trade Marks Act 1994 on the ground that the mark was contrary to the accepted principles of morality because it would be misconstrued as the word “fuck”.
The applicant contended that the evidence showed that the registered proprietor did
not seek to use the trade mark as a play on the word “fuck” but relied on the primary meaning of the offensive word to promote its sales by shock value. He referred to the fact that most of the complaints about the registered proprietor’s advertisements which had been upheld by the Advertising Standards Authority related to the use where FCUK was used as part of a phrase such as “world’s biggest fcuk”.
The registered proprietor’s evidence was that FCUK had first been used as an internal
reference to denote the UK division of their company following the international expansion of French Connection it said its goods were aimed mainly at the 15–24 year old age group and that the word play would be seen as a light-hearted joke by the public. There had been enormous sales and advertising of goods under the FCUK brand but there was no evidence that the brand was significantly offensive to a section of the public.
The registrar refused the declaration. He held that, whilst it was clear that the word
“fuck” caused a high degree of offence to a significant number of people, the trade mark in question was not the swear word. The offence was caused not by FCUK itself but rather because through word play, mistake or misconstruing of the letters, it was capable of being seen as “fuck”. It was not right to consider a mark open to objection because it was capable of being seen as something it was not. There was no evidence that FCUK was seen as the expletive by an identifiable section of the public.
The applicant appealed to the appointed person. He argued that the hearing officer had erred because he had proceeded on the basis that the word “fcuk” was not objectionable in itself but through word play, mistake or misconstruction of the letters was capable of being seen as “fuck”. He argued that “FCUK” was so close to “fuck” that almost everyone would see the connection, which was transparent, obvious and intended and that, effectively, the mark was the word “fuck” and that in visual form in some circumstances it would be taken as “fuck".
The role of evidence. It is obvious that the registrar will sometimes be called upon to assess the applicability of s.3 (3) (a) without the benefit of evidence. Moreover, it is clear from the case law reviewed above that the registrar’s hearing officer is entitled to use his own knowledge of words and of the moral principles which are generally accepted in our society. It is also clear, however, that the Registrar is entitled to receive evidence. Furthermore, I consider that the less obvious the conclusion is, the more the hearing officer should be guided by evidence rather than relying upon his own knowledge.
Held: The intrinsic qualities of the mark FCUK are not such as to render it objectionable. It is not the swear word even though it can be used, and has been used, to evoke the swear word. Accordingly the generally accepted moral principle prohibiting the use of swear words does not apply to it.
"Furthermore, I agree with the hearing officer that the best barometer of public
perception is evidence resulting from actual use in the market. In the present case, apart from the mysterious reference in the Delete expletives? report, the evidence resulting from actual use is really all one way. By January 2005 over 16 million items of FCUK branded clothing had been sold. In addition the brand had been licensed for use on a variety of other products, and there had been retail sales of over £60 million of FCUK branded products other than clothing in the year ending January 2005 alone. It was estimated that by that date FCUK products were on sale in over 6,300 stores in the UK.
These outlets included Boots, House of Fraser, John Lewis, Harrods and Selfridges.
There has been widespread poster, print, television and cinema advertising of the brand. FCUK has been used in connection with sponsorship of ballet, theatre and other cultural events. FCUK branded clothing has even been shown in a photograph on the front page of The Daily Telegraph newspaper. With exposure on this scale, if the mark FCUK was significantly offensive to a section of the public, there would be evidence of this."
The hearing officer had been correct to proceed on the basis that FCUK was not the swear word but was capable of being seen as the swear word. Whether and to what extent it would be seen as the swear word depended on the manner and the circumstance of its use. Although the trade mark proprietor had used FCUK in advertising in a manner which had been intended to and had evoked the swear word in readers’ minds and that some people had been offended by this it did not follow that it was an intrinsic quality of the mark FCUK (see fook - scranage case where the local pronunciations would bring connotations of the word fuck) that it would always evoke the swear word in consumers’ minds regardless of how it was used. It was quite possible to conceive of FCUK being used in a manner which tended to suppress, rather than evoke, that connotation, in particular use which emphasised that the letters stood for “French Connection UK”. The registered proprietor’s evidence had included illustrations of the use of FCUK in its stores and in other retailers which had achieved this effect.
MASTERMIND DESIGN APPLICATION.
Registered design — Application — Furry doll — Practice — Representation of design showing male genitalia — whether use of design would be contrary to morality - Appeal allowed.
Before: Mr Justice Aldous J.
The applicant, Pamela Clarissa Masterman, appeals against the decision of Mr. Harden, a Superintending Examiner acting for the Registrar of Designs, in which he refused to register application No. 1052835.
"A second form of the doll is illustrated on sheet 5 with the addition of two rounded plain button like features mounted horizontally and in contact with each other, and of a phallic shaped feature extending downwardly from the area of contact of these two feature.’’
The applicant filed a statutory declaration in which she described how she came to make the design depicting a hairy doll. The idea came from an occurrence at a wedding. By accident, a wedding photograph showed a person attending a wedding had worn no underwear beneath his kilt. The married couple wanted a male doll to commemorate this occurrence and she made a doll for them with male genitalia under a kilt. These doll was hilarious and she was asked to make other similar dolls for other people and she decided to make them for sale. She thus sought to make the design protected.
There is also evidence of a humorous book, showing male genitalia, which is
freely on sale, and evidence that male genitalia have been depicted by sculptors and artists over many years. There can be no doubt that many designs, which could have shocked the public in the past, would not do so today and I believe it right that, when exercising my discretion, I should take that into account.
"Thus I conclude that the test to be applied cannot be solely whether a section of the public would be offended. Such a conclusion would not, in my view, amount to a proper ground for refusing an applicant the proprietary right given by the Act."
As I have said, each design has to be considered individually and in the context
of what reasonable use would be made of it, and it must be judged against the back
ground of public opinion at the date of application. It is also necessary to consider
the attitude of Parliament as reflected by legislation and also weigh up any conflicting
opinions that various sections of the public may have. For instance, the design for
which registration is sought would be thought by many members of the public to be a clever and humorous design, giving no offence, whereas others might find it a distasteful joke. The extent of that latter view must be weighed against the legitimate
views of others and a decision reached as to whether there are real grounds for pre-
venting the designer from having the proprietary right given by the Act to protect
his work.
The design for which registration is sought shows in sheet 5 a mimic of male genitalia. It does not arouse sexual feelings nor is it likely to lead to any offensive
behaviour. Some members of the public would find the doll offensive, in the sense
that they would consider that it was distasteful. Others would consider the doll to
be amusing and in no way offensive. I cannot believe that any reasonable person
would believe that dolls incorporating the design should not be freely sold (right thinking member test).
Summary.
In Masterman’s Design [1991] R.P.C. 89 the applicant applied to register a design for
a furry doll with what was described as an “apron”. The apron was akin to a sporran, and when lifted up it revealed objects resembling (and clearly intended to resemble) male genitalia.
The examiner objected to the application both under s.43 (1) of the Registered
Designs Act 1949 and in the exercise of the Registrar’s discretion under s.3 (3) of that Act (s.3 (5) of the Act as subsequently amended by the 1988 Act). The hearing officer held that registration of the design was not precluded by s.43 (1), but nevertheless held that it should be refused under s.3 (3) on ground that “registration would be likely to offend the susceptibilities of a not insubstantial number of persons”. The applicant’s appeal to the Registered Designs Appeal Tribunal was allowed by Aldous J. Although Masterman was a decision under s.3 (3) of the Registered Designs Act 1949, it can be seen that Aldous J. held that the design should not be refused registration unless its use would be, or at least would be seen by a section of the public to be, contrary to morality. Aldous J in Masterman invoked the concept of right-thinking members of the public.
IN GHAZILIAN’S TRADE MARK APPLICATION [2002] R.P.C. 33
The applicant applied to register the mark TINY PENIS for various articles of clothing. The hearing officer, having directed herself in accordance with HALLELUJAH, held that registration was precluded by s.3 (3)(a). The applicant’s appeal to the Appointed Person was dismissed by Simon Thorley Q.
In my judgment the matter should be approached thus. Each case must be
decided on its own facts. The dividing line is to be drawn between offence which
amounts only to distaste and offence which would justifiably cause outrage or would be the subject of justifiable censure as being likely significantly to undermine current religious, family or social values.
The outrage or censure must be amongst an identifiable section of the public and a higher degree of outrage or censure amongst a small section of the community will no doubt suffice just as lesser outrage or censure amongst a more widespread section of the public will also suffice.
Held.
Aldous J in Masterman invoked the concept of right-thinking members of the
public. I believe this is a helpful approach. A right-thinking member may himself or herself not be outraged but will be able, objectively, to assess whether or not the mark in question is calculated to cause the ‘outrage’ or ‘censure’ that I have referred to amongst a relevant section of the public. This is the function of the hearing officer.
Placing myself in the shoes of the ‘right-thinking’ member of the public in
the way I have indicated above, I have concluded that this trade mark would cause greater offence than mere distaste to a significant section of the public. The offence resides in the fact that an accepted social and family value is likely to be significantly undermined. This value lies in the belief that the correct anatomical terms for parts of the genitalia should be reserved for serious use and should not be debased by use as a smutty trade mark for clothing.”
Section 3(3) is not concerned with political correctness, it is concerned with principles of morality, a different and less readily invoked standard. The Registrar’s hearing officers cannot be expected in all cases to form a view without the assistance of evidence. This does not mean that they must have evidence. They are entitled to draw upon their own knowledge of words and upon their own perception of the way in which those words can be used without offending against public morality. They must however be careful not to allow their personal views to deflect them from approaching the matter on the basis of the ‘right-thinking’ person.”
In DICK LEXIC Ltd.’s APPLICATION (March 25, 2003)
The Fourth Board of Appeal of the Community Trade Marks Office allowed an appeal from the Examination Division’s decision to refuse registration of the words DICK & FANNY as a trade mark for use in relation to various goods in Classes 9, 16 and 25. The members of the Board acknowledged that the trade mark consisted of English words that have, in coarse slang, a sexual connotation. They nonetheless considered that the words conveyed no offensive message that could justify the denial of registration on grounds either of public policy or accepted principles of morality:
“. The contested decision was based on the particular meaning of the words in
English slang. Yet, as the appellant argues, the same words have another meaning
when employed in less informal speech. Dick and Fanny are the diminutive forms
of the English first names Richard and Frances (the latter being the feminine version of Francis), respectively. Thus, the words express different meanings depending on whether standard or informal language is used and the sexual connotation is only present in the latter.
The Board concedes that the liability of a word mark to the absolute grounds of Article 7(1) (f) CTMR must be assessed on the basis of any usage, not necessarily
formal, that the public makes of a given language. Therefore, the meaning of a word
in slang may, in principle, lead to an objection, even if in normal usage it does not
have an unfavourable connotation.
However, the Board doubts that the mere fact that the two words have, alone or
in combination with each other, a sexual connotation should be regarded as
‘offensive’ and that it justifies the rejection of the mark on account of public policy
or accepted principles of morality. There are two reasons for this: firstly, these
words merely designate things but they do not transmit any message; secondly, the
association of the two words does not necessarily reinforce the connotation of the
mark.
As regards the first reason, the words admittedly designate, in a particularly
inelegant (or tasteless) manner, anatomical parts that are rarely mentioned in ordinary speech—whether formal or informal. In principle, the mark does not proclaim an opinion, it contains no incitement, and conveys no insult. In the Board’s opinion, in these circumstances, the mark should not be regarded as contrary to either public policy or accepted principles of morality. For this reason, the Board would agree with the appellant that the mark may, at most, raise a question of taste, but not one of public policy or morality.
As regards the second reason, the Board denies that the association of the two
words reinforces the sexual connotation of the mark. There would be good arguments in support of the opposite view as well. As a combination of the diminutive form of forenames, the association of ‘Dick’ with ‘Fanny’ could, in fact, reduce that connotat
ion and allude instead to a couple. This sort of combination of names, particularly in their diminutive form, is rather widespread even in an English-language context (Tom & Jerry, Bonnie & Clyde, to name just a few). All in all, the Board considers that the mark has, in non-formal English usage, a rather smutty flavour but, since it does not convey any additional message and has a neutral meaning in formal English usage, it falls short of being contrary to public policy or accepted principles of morality.”
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