Decisions on trademarks are handed down by a number of tribunals and come too thick and fast for the non-specialist practitioner to be alive to every one. What follows is a crash course in some of the most significant decisions of the past few months.
Likelihood of confusionThe question of whether there is a ‘likelihood of confusion’ on the part of the public between different marks is important, both when applying to register a trademark and when making a claim for infringement. A discretionary ground for refusal of a trademark application is that there exists a likelihood of confusion between the mark applied for and an earlier mark (section 5(2) of the Trade Marks Act 1994 [TMA]; article 8(1)(b) of the Community Trade Marks Regulations 40/94 [CTMR]). A trademark holder who alleges infringement by a sign that is merely ‘similar’ (that is to say not identical) to his mark, or is merely being applied to ‘similar’ goods and services, must prove a likelihood of confusion between the allegedly infringing sign and his mark (section 10(2) of the TMA; article 9(1)(b) of the CTMR).
Practical examples are vital for practitioners trying to triangulate whether a particular mark is likely to confuse or not. Factors to take into consideration include: the degree of visual, phonetic or conceptual similarity between the marks; whether the goods or services under the marks would be sold through the same channels of sale or used in the same field; and whether the goods or services are ‘complementary’ (meaning that one is important for the use of the other, such that customers might think that the responsibility for their production lay with the same undertaking).
A likelihood of confusion between marks was established on various of these grounds in the following cases (product one/product two):
- In a fight between manufacturers of fir tree-shaped cardboard air fresheners for cars, a fir tree containing the words ‘aire limpio’ was likely to be confused with a different silhouette of a fir tree registered for identical goods (L&D SA v Office of Harmonisation for the Internal Market [OHIM] C-488/06 P);
- 3D mark of a computer mouse on wheels for insurance and financial services/Direct Line’s telephone on wheels (Esure Insurance Limited v Direct Line Insurance plc ( EWCA Civ 842);
- Astex Technology in respect of ‘pharmaceuticals’/Astex for ‘insecticides for killing dust mites’ (Astex Therapeutic Limited v OHIM T-48/06); and
- O Store for ‘retail and wholesale of clothing and footwear’/The O Store registered in France for ‘clothing and leather goods’ (Oakley Inc v OHIM T-116/06).
Whereas in the following cases there was no likelihood of confusion between the marks:
- Mezzopane (figurative) for wine/Mezzo and Mezzomix for beer and non-alcoholic drinks (Coca-Cola v OHIM T-175/06);
- Toska for leather accessories and clothing/Toska (unregistered) for perfumery and bodycare products (Mulhens GmBH & Co KG v OHIM T-150/04);
- Biovisc for sterile solutions for intraoperative eye operations/Provisc and Duovisc for products for use in ophthalmology and ophthalmic pharmaceutical preparations (Alcon Inc v OHIM T-106/07); and
- Mobilix for various telecommunications apparatus/Obelix for computer programs (Les Éditions Albert René Sarl v OHIM, Orange A/S C-16/06 P). Any similarities were offset by the fact that everyone knows Obelix as the fictional character from the Asterix books (a principle known as ‘counteraction’).
A recurrent theme in applications for community trademarks has been the likelihood of confusion based on non-English languages. In Armafoam/Nomafoam, both for foam goods, the European Court of Justice (ECJ) held that the court of first instance was entitled to find a likelihood of confusion by the non-English-speaking public, and did not need to consider the viewpoint of the English-speaking public (Armacell Enterprise GmBH v OHIM C-514/06 P). In Reverie/Revert for identical goods, the conceptual difference between the words in English was overcome by their being visually and phonetically similar in German (Redcats SA v OHIM T-246/06). In Cicar/Zipcar, both for car rental services, it was the phonetic similarity of the words in Spanish that was fatal to the application (Zipcar Inc v OHIM T-36/07).
Software and computersAnother theme has been disputes involving trademarks for software or computers. IT is used in every industry, and so limiting the reach of a trademark to software can be tricky. A likelihood of confusion was found in the case of Quartz for information systems developers/Quartz (figurative) for banking software (Apple Computer v OHIM T-328/05). The applicant argued that the earlier registration for ‘software’ covered too wide a range of goods, but there were held to be some similarities between the goods actually under offer, plus the distinctive character of the word ‘Quartz’ warranted a higher degree of protection. On the other hand, no likelihood of confusion was found between Easyhotel for ‘computerised hotel reservation services’/Easyhotel registered in Germany for ‘software for the production of internet authoring systems for the reservation of accommodation’ (Commercy AG v OHIM, easyGroup IP Licensing Ltd T-316/07). The latter mark was aimed at online systems builders, whereas the former mark was aimed at the general public and only used computer technology to make it possible to book a hotel.
Intel Corp v CPM UK Ltd (case C-252/07) is an important decision on what is known as ‘brand dilution’ – where a new mark is accused of calling to mind a well-known mark, in the process diluting its impact. CPM had registered Intelmark for ‘marketing and telemarketing services’. Intel Corporation sought a declaration of invalidity of the mark based on its earlier registrations for Intel, for computers and computer-linked goods and services. Intel is a unique mark with a huge reputation, but the goods and services it is known for are not the services against which Intelmark is registered. The question before the ECJ was whether the CPM mark took ‘unfair advantage’ of the Intel mark or was to its ‘detriment’ (article 4(4)(a) of the CTMR).
The ECJ held that national courts have to make a global assessment of whether there is a ‘link’ between such marks, meaning a degree of similarity causing the relevant section of the public to make a connection between them, even though it does not confuse them. The facts in this case did not necessarily imply a link, but they did not exclude one either. The ECJ went on to say that if the national court were to find such a link, it would still need to go on to consider whether the later mark ‘without due cause took unfair advantage of, or would be detrimental to the distinctive character or repute’ of the earlier mark. The decision seems to set up hurdles for brand owners trying to claim dilution, and it will be interesting to see how the UK courts apply it in practice.
Distinctive characterA trademark must be distinctive of the goods and services that it is applied to. Marks that are ‘devoid of any distinctive character’ may not be registered (section 3(1)(b) of the TMA; article 7(1)(b) of the CTMR) nor may marks that designate the characteristics of the goods or services they cover, or their geographical origin (section 3(1)(c) of the TMA; article 7(1)(c) of the CTMR).
- An application for a community trademark for Mozart for chocolate and confectionery was rejected because the average German-speaking consumer would see the word as a reference to Mozartkugel, a marzipan or praline ball covered in chocolate, rather than indicating the commercial origin of the goods (Reber v OHIM T-304/06).
- There is a warning against trying to protect broad slogans in Ashoka v OHIM (T-186/07). An application to register ‘Dream It! Do It!’ in educational publishing services and social services was rejected on the basis that it was merely a promotional or advertising message, and did not indicate the commercial origin of the services.
- On the other hand, IT@Manpower, registered for employment agency services, was held not to be descriptive and was registerable. The CFI held that the acronym-symbol-word sequence was neither a usual way of designating goods or services, nor a known expression (Hup Uslugi Polska v OHIM T-248/05).
Registering product designs as trademarksIt is possible to register the 3D design of a product as a trademark, the benefit being that the design then has potentially indefinite protection. The design must fulfil the usual criteria for registration (for example, it is not devoid of distinctive character), and furthermore cannot consist exclusively of a shape which results from the nature of the goods, or obtains a technical result or gives substantial value to the goods (section 3(2) of the TMA; article 7(1)(e) of the CTMR). Although it is a useful protection, three cases of the last few months highlight some of the difficulties both in obtaining and enforcing such marks.
- In Gerson v OHIM (T-201/06), an application to register a paint filter was rejected for lack of distinctive character because the shape was very similar to competing goods on the market.
- In Whirlpool Corporation and ors v Kenwood Ltd ( EWCH 1930 Ch), Whirlpool had registered a 3D shape for ‘electric beating and mixing machines and attachments for such machines’. Kenwood launched the ‘kMix’ mixer and Whirlpool alleged trademark infringement and passing off. The court held that although there was enough similarity for each mixer to remind people of the other, that similarity was not sufficient to lead the relevant consumer into thinking that one mixer was in fact the other, or to damage the distinctive character or repute of Whirlpool’s mark.
- Finally, Lego failed in an attempt to register its toy bricks as trademarks (Lego Juris A/S v OHIM, Mega Brands, Inc. T-270/06), on the grounds that the mark consisted exclusively of a shape that was necessary to achieve a technical result. Lego is appealing the decision.
And finally...Here are some to watch out for in 2009. In L’Oreal SA and ors v Bellure NV (C-487/07), the defendant marketed ‘smell-a-like’ perfumes, and published tables that set out which big brand perfumes particular copies were designed to smell like. All of the big brand names were trademarks, and the question that has been referred to the ECJ is whether the defendant is taking unfair advantage of those trademarks by setting them out in this comparison table. The Advocate General has handed down an opinion which appears favourable to the defendants, but the ECJ’s judgment is pending. A decision prohibiting or permitting such tables will have a major impact on the industry in generic products.
In Copad SA v Christian Dior Couture SA (C-59/08), Christian Dior is arguing that where one of its licensees sold its luxury lingerie to a discount store in breach of licence, the sale amounts not just to a breach of contract, but also to an infringement of its trademark rights. If Dior’s argument is correct, it would be entitled to enforce its trademarks directly against the discount stores. The Advocate General opined that trademark owners could wield their trademark rights when the damage flowing from a breach of contract was such that the quality of their products were questioned. The ECJ’s decision will be important for the policing by luxury brand owners of sales to discount stores.
Richard Taylor, DLA Piper, Yorkshire