A Practical Guide to Trade Mark Law [5 ed.] 2013952806, 9780198702030

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a practical guide to TRADE MARK LAW

a practical guide to

TRADE MARK LAW FIFTH EDITION Amanda Michaels BA (Dunelm), MA (Bruges) Barrister Appointed Person

Andrew Norris BSc (St Andrews) Barrister

Great Clarendon Street, Oxford, OX2 6DP, United Kingdom Oxford University Press is a department of the University of Oxford. It furthers the University’s objective of excellence in research, scholarship, and education by publishing worldwide. Oxford is a registered trade mark of Oxford University Press in the UK and in certain other countries © Amanda Michaels and Andrew Norris 2014 The moral rights of the authors have been asserted Fifth Edition published in 2014 Impression: 1 All rights reserved. No part of this publication may be reproduced, stored in a retrieval system, or transmitted, in any form or by any means, without the prior permission in writing of Oxford University Press, or as expressly permitted by law, by licence or under terms agreed with the appropriate reprographics rights organization. Enquiries concerning reproduction outside the scope of the above should be sent to the Rights Department, Oxford University Press, at the address above You must not circulate this work in any other form and you must impose this same condition on any acquirer Crown copyright material is reproduced under Class Licence Number C01P0000148 with the permission of OPSI and the Queen’s Printer for Scotland Published in the United States of America by Oxford University Press 198 Madison Avenue, New York, NY 10016, United States of America British Library Cataloguing in Publication Data Data available Library of Congress Control Number: 2013952806 ISBN 978–0–19–870203–0 Printed and bound by Lightning Source UK Ltd Links to third party websites are provided by Oxford in good faith and for information only. Oxford disclaims any responsibility for the materials contained in any third party website referenced in this work.

FOR EWOR D

The Rt Hon Professor Sir Robin Jacob1 Is it really less than 20 years since the new European trade mark law and system started? Are the various national trade mark laws (such as our Trade Marks Act 1994) implementing the 1989 Directive really less than 20 years old? The maths says ‘yes’ but it does not feel so—the European law feels as though it has always been with us. Even the early ECJ cases such as Canon v MGM and Sabel v Puma now feel like ancient history. The certainties of the old system now seem to belong to a far distant (and some might say golden) age. The House of Lords heard (I think) 17 appeals in trade marks in the period 1900 to 1994. Since then the ECJ (now the CJEU) has heard well over 100 references from national courts and almost as many appeals ultimately stemming from the Office for the Harmonisation of the Internal Market (as what is really the European Trade Marks and Designs Office is pompously called). As I write, the UKIPO (as the Patent Office was pointlessly renamed) shows 24 pending trade mark appeals/references for 2013 alone. So there is now a morass of case-law. It has been and is being created by judges of no or but limited prior experience of trade marks, from a variety of different legal and commercially cultural perspectives. And they all work on the uncertain foundation of a not very precise Directive and Regulation. The result has been that trade mark law is to a large extent at its edges uncertain. The core is all right—but those uncertain edges are wider than they should be. Trade mark law is like a clear but smallish picture in a frame with very thick sides representing uncertainty. It has all become too, too complicated. For instance, the Court of Justice has offered protection to a whole host of trade mark functions of uncertain meaning or import. Clearly the Court has become protectionist— though some might query the social value of protecting the illusion which famous marks engender at the expense of honest competition. Amanda Michaels and Andrew Norris have done wonders in writing about all this. They (unlike the court) do not speak in riddles and ambiguities—indeed they write so clearly that they make you want to turn the page. Of course they cannot resolve the problems of trade mark law. But they can and do explain the law as best

1 Hugh Laddie Professor of Intellectual Property Law, University College, London and a former member of the Court of Appeal of England and Wales.

v

Foreword it can be done. The reader will understand the problems and where the many Pooh traps lie. I said of an earlier edition that I kept it by me. I will do the same with this. Sensible trade mark lawyers will do likewise. So also will law students—at least mine will! Robin Jacob Bentham House, UCL November 2013

vi

PR EFACE

This book deals with the law of trade marks and passing off from a UK perspective. That perspective has for many years been dominated by the broader EU position as a result of the harmonisation of trade mark law throughout the EU for the last 20 years. The UK regime for the registration of trade marks is derived from an EC Directive, currently Directive 2008/95, and coexists with and complements the regime permitting the registration of Community trade marks, pursuant to the Community Trade Mark Regulation, currently Council Regulation (EC) 207/2009. Both regimes are subject to the guidance of the Court of Justice of the European Union, which has produced very many trade mark decisions and is responsible for significant (and continuous) developments in the law. At the time of writing, there are proposals to replace the current Directive and Regulation. The changes proposed in many respects reflect the case-law of the CJEU, but are also designed to try to modernise the system. The timing of the entry into force of those proposed amended texts is currently uncertain and, in the circumstances, we have stated the law as it is at present but have made some references to potential changes in this edition of our book. As in earlier editions, we have endeavoured to provide a comprehensive but practical explanation of the law on the acquisition, registration, and protection of trade mark rights. Our aim throughout has been to provide a guide suitable for use by trade mark proprietors or in-house lawyers, and by non-specialist lawyers, but also a useful ‘first point of call’ for the more specialist reader. The scheme of the book is to discuss the functions of trade marks and related rights and protections in the context of the harmonised EU system, before considering in some detail in Chapters 2 and 3 the requirements for the registration of trade marks. Chapters  4 and 5 deal respectively with the registration process and with the important topics of revocation and invalidity. Chapter 6 deals with assignment and licensing. Each of those chapters draws distinctions where necessary between the UK and Community trade mark systems. Chapter 7 deals with the important topic of infringement. Chapter 8 discusses the law of passing off. Chapter  9 discusses the procedure of enforcement and vii

Preface remedies available in the UK for both trade mark infringement and passing off. We have addressed the differences between the High Court and County Court, now known as the Intellectual Property Enterprise Court. This reflects the success of the streamlined County Court procedure. Although the major legislation in the area is now almost 20 years old, trade mark law is constantly evolving. The 1994 Act and the main EU legislation have been amended and consolidated, important additional legislation such as that relating to comparative advertising has been brought into effect, and further amendments in the form of a new Directive and Regulation are on the way. In the meantime, there is a never-ending stream of case-law emanating from the European Court of Justice and national courts. Keeping up to date is a challenge for every practitioner. We should be delighted to have feedback on any aspect of the book from our readers, at [email protected]. Most of this text was written by mid-November 2013, but we are grateful to the editorial team at OUP for enabling us to incorporate into the text or footnotes references to significant developments up to 17 January 2014. Important pending cases have been identified wherever possible. Both of us are also enormously grateful for the help and support of our colleagues at Hogarth Chambers. Special thanks go to Julia Clark, Gwilym Harbottle, Charlotte Scott, Jamie Muir Wood, Clive Nicholls and Briget Harrison. We are also indebted to Sir Robin Jacob for his kind support. Amanda Michaels Andrew Norris Hogarth Chambers London

viii

CONTENTS

List of Abbreviations  Table of Cases  Table of Legislation 

xv xvii xxxviii

1. THE TRADE MARK SYSTEM AND THE FUNCTIONS OF TRADE MARKS A

INTRODUCTION TO TRADE MARKS

1.01

B

HARMONISATION OF TRADE MARK LAW IN EUROPE

1.04

C FURTHER CHANGES TO COME

1.09

D DEVELOPMENT OF THE CASE-LAW

1.12

E

FUNCTIONS OF TRADE MARKS

1.16

F

RELATED RIGHTS AND PROTECTIONS

1.29

2. REGISTRABLE MARKS A

THE CHOICE OF A NEW TRADE MARK

2.03

B

ESSENTIAL CHARACTERISTICS OF A REGISTRABLE MARK

2.09

C ‘CAPABLE OF BEING REPRESENTED GRAPHICALLY’

2.16

D ‘CAPABLE OF DISTINGUISHING GOODS OR SERVICES’

2.20

E

SECTION 3(1)

2.23

F

CATEGORIES OF MARKS

2.58

G OTHER ABSOLUTE GROUNDS FOR REFUSAL

2.117

H BAD FAITH

2.129

I

2.149

COLLECTIVE AND CERTIFICATION MARKS

3. RELATIVE GROUNDS FOR REFUSAL OF REGISTRATION A

‘EARLIER TRADE MARKS’

3.02

B

EXAMINATION FOR EARLIER MARKS

3.07

C ‘EARLIER RIGHTS’

3.10

D GENERAL SCHEME OF SECTION 5(1)–(3)

3.12

ix

Contents E F

SECTION 5(1): IDENTICAL MARKS/IDENTICAL GOODS OR SERVICES

3.14

SECTION 5(2): IDENTICAL OR SIMILAR MARKS/IDENTICAL OR SIMILAR GOODS

3.25

G INTERDEPENDENCY PRINCIPLE

3.28

H SIMILARITY BETWEEN THE MARKS

3.33

I

SIMILARITY OF GOODS/SERVICES

3.43

J

SECTION 5(3): DAMAGE TO A MARK WITH A REPUTATION

3.50

K WITHOUT DUE CAUSE L

3.73

SECTION 5(4): PROTECTION OF NON-TRADE MARK RIGHTS

3.76

M OTHER EARLIER RIGHTS

3.82

N SECTION 5(5): CONSENT

3.86

O SECTION 7: HONEST CONCURRENT USE

3.88

4. PRACTICE AND PROCEDURE IN THE TRADE MARKS REGISTRY AND OHIM UKIPO PROCEDURE

4.01

A

APPLYING TO REGISTER A UK TRADE MARK

4.01

B

OFFICIAL EXAMINATION OF THE APPLICATION

4.24

C AMENDMENT, LIMITATION, AND DISCLAIMER

4.29

D PUBLICATION, OPPOSITION PROCEEDINGS, AND OBSERVATIONS

4.37

E

APPEALS

4.66

F

REGISTRATION, DURATION, RENEWAL, AND RESTORATION

4.72

G ALTERATION OR SURRENDER OF REGISTRATION

4.76

THE COMMUNITY TRADE MARK REGULATION

4.79

H MAKING AN APPLICATION

4.83

I

OFFICIAL EXAMINATION AND PUBLICATION

4.88

J

OPPOSITION AND OBSERVATIONS

4.91

K REGISTRATION AND BEYOND

4.93

L

4.97

APPEALS

x

Contents INTERNATIONAL CONVENTIONS

4.102

M THE MADRID AGREEMENT AND PROTOCOL

4.103

N THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY (PARIS UNION)

4.119

O THE TRIPS AGREEMENT

4.124

5. REVOCATION AND INVALIDITY A

INTRODUCTION

5.01

UK PROCEDURE

5.04

B

5.04

REVOCATION UNDER SECTION 46

C NON-USE

5.06

D RESUMPTION OF USE

5.21

E

PROPER REASONS FOR NON-USE

5.23

F

PARTIAL REVOCATION

5.26

G PROCEDURE

5.30

H GENERICISM

5.34

I

MISLEADING MARKS

5.38

J

PROCEDURE

5.40

K INVALIDITY OF REGISTRATION

5.41

L

5.52

ACQUIESCENCE

COMMUNITY PROCEDURE

5.58

M REVOCATION AND INVALIDITY OF CTMS

5.58

N REVOCATION

5.60

O INVALIDITY

5.65

P

5.71

ACQUIESCENCE

Q PROCEDURE

5.72

R CHOICE OF FORUM

5.73

6. ASSIGNMENT AND LICENSING OF MARKS A

INTRODUCTION

6.01

B

CO-OWNERSHIP

6.04

C ASSIGNMENTS

6.05

D FORMALITIES

6.07

xi

Contents E

REGISTRATION OF ASSIGNMENTS

6.08

F

ASSIGNMENT OF UNREGISTERED MARKS

6.10

G LICENSING OF TRADE MARKS

6.11

H REGISTRATION OF LICENCES

6.19

I

LICENSEES’ RIGHTS OF ACTION

6.20

J

EXCLUSIVE LICENCES

6.26

K COMBINATION LICENCES OF TRADE MARKS AND OTHER RIGHTS

6.33

L

6.37

BASIC PROVISIONS OF A LICENCE AGREEMENT

M THE EFFECT OF EU LAW ON ASSIGNMENTS AND LICENCES

6.51

7. INFRINGEMENT OF TRADE MARKS A B

INTRODUCTION TO THE PROTECTION OF TRADE MARKS

7.01

TRADE MARK RIGHTS AND PASSING OFF

7.03

C INFRINGEMENT UNDER THE 1994 ACT

7.10

D THE CONDITIONS FOR INFRINGEMENT

7.14

E

SECTION 10(1): IDENTICAL MARK/IDENTICAL GOODS

7.44

SECTION 10(2): IDENTICAL OR SIMILAR MARKS/IDENTICAL OR SIMILAR GOODS

7.46

G SECTION 10(3): DAMAGE TO A MARK WITH A REPUTATION

7.51

H COMPARATIVE ADVERTISING

7.58

I

COMPARATIVE ADVERTISING UNDER SECTION 10(6)

7.59

J

THE CURRENT RULES ON COMPARATIVE ADVERTISING

7.62

F

DEFENCES TO INFRINGEMENT

7.72

K GENERAL

7.72

L

CHALLENGE TO THE VALIDITY OF THE TRADE MARK REGISTRATION

M SECTION 11

7.74 7.76

N CONSENT AND EXHAUSTION OF RIGHTS

xii

7.101

Contents O EXHAUSTION UNDER SECTION 12(1) OF THE 1994 ACT

7.107

P

7.116

SECTION 12(2)

Q EUROPEAN DEFENCES

7.118

R UK COMPETITION RULES

7.120

S

7.121

ACQUIESCENCE

T PROTECTION OF WELL-KNOWN TRADE MARKS:  SECTION 56

7.124

PROTECTION OF NON-TRADE MARK RIGHTS

7.129

U GEOGRAPHICAL INDICATIONS/DESIGNATIONS OF ORIGIN

7.129

V COMPANY NAMES AND DOMAIN NAMES

7.131

8 PASSING OFF A

INTRODUCTION

8.01

B

REPUTATION OR GOODWILL

8.11

C INDICIA WHICH MAY BE PROTECTED

8.33

D MISREPRESENTATION

8.46

E

REVERSE PASSING OFF

8.56

F

LIKELIHOOD OF DECEPTION

8.58

G COMMON FIELD OF ACTIVITY

8.66

H CHARACTER MERCHANDISING AND CELEBRITY ENDORSEMENT

8.68

I

LIKELIHOOD OF DAMAGE

8.74

J

INNOCENCE, FRAUD, OR A DECISION TO LIVE DANGEROUSLY

8.84

K DEFENCES

8.87

9. PROCEDURE AND REMEDIES FOR INFRINGEMENT OF TRADE MARKS AND PASSING OFF A

INTRODUCTION

9.01

B

CIVIL PROCEDURE

9.07

C EVIDENCE

9.19

D JURISDICTION

9.33

xiii

Contents REMEDIES

9.42

E

REMEDIES: INTERIM INJUNCTIONS

9.42

F

INJUNCTIONS

9.46

G INTERIM INJUNCTIONS

9.51

H THE PRINCIPLES APPLIED IN GRANTING INTERIM INJUNCTIONS

9.61

I

PERMANENT INJUNCTIONS

9.76

J

PECUNIARY REMEDIES

9.79

K DELIVERY UP AND OBLITERATION OF OFFENDING MARKS OR SIGNS

9.104

L

9.110

CERTIFICATE OF CONTESTED VALIDITY

M DETENTION OF IMPORTED GOODS BY CUSTOMS AND EXCISE

9.111

N DOMAIN NAME DISPUTE RESOLUTION

9.131

O ‘OPPORTUNISTIC’ COMPANY NAME REGISTRATIONS

9.134

P

9.139

THREATS ACTIONS

Q CRIMINAL OFFENCES UNDER THE 1994 ACT

9.149

R CRIMINAL PROCEDURE

9.170

Appendix 1: Appendix 2: Appendix 3: Appendix 4: Appendix 5:

Trade Mark Act 1994 Directive (EC) 2008/95 Council Regulation (EC) 207/2009 The Trade Mark Rules 2008 Nice Class Headings

Index

285 331 341 395 429 433

xiv

LIST OF ABBR EV I ATIONS

1994 Act AP Bd App Block Exemption CAD CEMA CFI CJEU CTM CTMR The Directive ECJ EEA GC IPEC IPO The Manual Modernisation Regulation OHIM PAN PDOs PGIs The Rules TFEU TPN TRIPS UKIPO WIPO WTO

Trade Marks Act 1994 Appointed Person Board of Appeal Block Exemption Regulation (EC) 330/2010 Comparative Advertising Directive, Directive (EC) 2006/114 Customs and Excise Management Act 1979 Court of First Instance of the European Court of Justice (now called the ‘General Court’) Court of Justice of the European Union Community Trade Mark Regulation (EC) 207/2009 Directive (EC) 2008/95 European Court of Justice European Economic Area General Court Intellectual Property and Enterprise Court Intellectual Property Office see also UKIPO UKIPO’s Manual of Trade Mark Practice Regulation (EC) 1/2003 Office for Harmonisation in the Internal Market (Trade Marks and Designs) Practice Amendment Notice (UKIPO) Protected Designations of Origin Protected Geographical Indications The Trade Mark Rules 2008 Treaty on the Functioning of the European Union Tribunal Practice Notice (UKIPO) Agreement on Trade-Related Aspects of Intellectual Property Rights United Kingdom Intellectual Property Office World Intellectual Property Organization World Trade Organization

xv

TABLE OF CASES

1–800 Flowers Inc v Phonenames Limited [2002] FSR 12 CA; affirming [2000] FSR 697. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.26, 8.17 32Red plc v WHG (International) Ltd [2012] EWCA Civ 19; [2012] RPC 19; [2012] ETMR 14 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.46, 2.78, 2.141, 7.48, 7.53 AB Volvo v Eric Veng (UK) Ltd, Case C-238/87, [1988] ECR 6211; [1989] 4 CMLR 122 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.76 Abadía Retuerta SA v OHIM, Case T-237/08, [2010] ECR II-01583; [2010] ETMR 43, 11 May 2010. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.125 Academy Trade Mark Application [2000] RPC 35 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.68 Aceites del Sur-Coosur SA v Koipe Corporación SL, Case C-498/07, [2009] ECR I-7371 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.37, 3.40, 4.100 Adam Opel AG v Autec AG, Case C-48/05, [2007] ECR I-1017; [2007] ETMR 33 . . . . . . . 7.42 Adidas-Salomon v Fitnessworld Trading Ltd, Case C-408/01, [2003] ECR I-12537; [2004] 1 CMLR 14; [2004] Ch 120; [2004] FSR 21; [2004] ETMR 10. . . . 3.30, 3.50, 3.56 Ad-Lib Club v Granville [1972] RPC 673. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.27 Advance Magazine Publishers, Inc v OHIM, Case T-382/08, [2011] ECR II-00002; [2011] ETMR 20, 18 Jan 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.13 Advanced Perimeter Systems Ltd v Keycorp Ltd (‘Multisys’) [2012] RPC 14, AP . . . . .  3.79, 5.30 A&E Television Networks LLC v Discovery Communications [2013] EWHC 109 (Ch); [2013] ETMR 32 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.36 Agencja Wydawnicza Technopol sp. z o.o. v OHIM, Case C-51/10, [2011] ECR I-01541; [2011] ETMR 34 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.34, 2.39, 2.46, 2.78 Air Parts Europe Ltd’s Application BL O/160/08, 9 June 2008 . . . . . . . . . . . . . . . . . . . . . . . . 3.39 Akhtar v Grout (1998) 162 JP 714 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  9.153, 9.172 Aktiebolaget Volvo v Heritage [2000] FSR 253 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.94 Aktieselskabet af 21 November 2001 v OHIM, (‘TDK’), Case C-197/07, [2008] ECR I-193; [2009] ETMR 36 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.52, 3.57 Alain Bernardin et Cie v Pavilion Properties (‘Crazy Horse’) [1967] RPC 581 . . . . . . . . . . . . 8.20 Alberto Jorge Moreira da Fonseca, Lda v OHIM, Joined Cases T-318/06 to T-321/06, [2009] ECR II-649 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.84 Alcon Inc v OHIM, Case C-192/03, [2004] ECR I-8993; [2005] ETMR 69 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.48, 2.133, 4.58, 5.45 Alfred Strigl v Deutsches Patent- und Markenamt, and Securvita Gesellschaft zur Entwicklung alternativer Versicherungskonzepte mbH v Öko-Invest Verlagsgesellschaft mbH, Joined Cases C-90 & 91/11, 15 March 2012 . . . . . . . . .  2.34, 2.77 Allen v Jambo Holdings [1980] 1 WLR 1252 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.60 Allied Domecq v Murray McDavid Ltd [1997] FSR 864 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.89 Almighty Marketing Ltd v Milk Link Ltd (‘Moo Juice’) [2006] RPC 18 . . . . . . . . . . . . . . . . . 4.58 Altecnic Ltd’s Application (‘Caremix’) [2002] RPC 34 . . . . . . . . . . . . . . . .  3.23, 4.18, 4.19, 4.21 AMC-Representações Têxteis L da v OHIM, Case T-50/12, 7 February 2013 . . . . . . . . . . . . . 3.38 Ameen’s Trade Mark Application, BL O/070/13, 14 February 2013, AP . . . . . . . . . . .  5.50, 7.04 American Clothing Associates NV v OHIM, Joined Cases C-202/08 and C-208/08, [2009] ECR I-6933; [2010] ETMR 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.128 American Cyanamid & Co v Ethicon Ltd [1975] AC 396; [1975] RPC 513 . . . . 9.61, 9.62, 9.63

xvii

Table of Cases Anheuser-Busch Inc v Budějovický Budvar Národní Podnik [1984] FSR 413 . . . . . . .  8.20, 8.24 Anheuser-Busch Inc v Budějovický Budvar Národní Podnik, Case C-245/02, [2004] ECR I-10989; [2005] ETMR 27 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.41, 7.86 Anheuser-Busch Inc v Budějovický Budvar, Case C-96/09, [2011] ECR I-02131; [2011] ETMR 31; on appeal from Joined Cases T-225/06 etc [2008] ECR II-3555; [2009] ETMR 29 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.83, 3.84, 7.130 Animal see H Young Animated Music Ltd’s Trade Mark Application [2004] ETMR 79. . . . . . . . . . . . . . . . . . . . . . 2.67 Annco Inc v OHIM, Case T-385/09, [2011] ECR II-00455; [2011] ETMR 37, 17 February 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.38 Anne Frank Stichting’s Trade Mark Application [1998] RPC 379; [1998] ETMR 687 . . . . . . 3.81 Ansul BV v Ajax Brandbeveiliging BV, Case C-40/01, [2003] ECR I-2439; [2005] 2 CMLR 36; [2005] Ch 97; [2003] RPC 40; [2004] 3 WLR 1048 . . . . . . . . . . . . . 5.07, 5.08, 5.10, 5.15, 7.35 Antartica Srl v OHIM, Case C-320/07, [2009] ECR I-28; [2009] ETMR 47. . . . . . . . . . . . . 3.55 Antec v South Western Chicks Ltd [1998] FSR 738 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.38 Aristoc v Rysta [1945] AC 68 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.19 Armacell Enterprise GmbH v OHIM, Case C-514/06, [2008] ECR I-128; [2009] ETMR 52 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.32 Arsenal Football Club v Reed, Case C-206/01, [2002] ECR I-10273; [2003] 1 CMLR 345; [2003] Ch 454; [2003] RPC 144, reference from Laddie J [2001] RPC 46; [2001] ETMR 77 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.14, 1.25, 2.66, 7.40, 7.41 Arsenal Football Club v Reed (No 2) [2003] 2 CMLR 25; [2003] RPC 39; [2003] ETMR 73; reversing [2003] ETMR 36 . . . . . . . . . . . . . . 1.13, 1.14, 1.17, 7.40, 7.41 ‘Arthur & Félicie’ see LTJ Diffusion Artistic Upholstery Ltd v Art Forma (Furniture) Ltd [2000] RPC 311 . . . . . . . . . . . . . . . . . . 3.77 Asprey & Garrard Limited v WRA (Guns) Limited [2002] FSR 31; [2002] ETMR 47 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.84, 7.87, 8.89, 8.90, 9.27 Associated Newspapers plc v Insert Media Ltd [1990] 1 WLR 900; affirmed by [1991] 1 WLR 571 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.53 Astex Therapeutics v OHIM, Case T-48/06, [2008] ECR II-161; [2009] ETMR 3. . . .  3.46, 3.47 Athletes Foot Marketing Associates Ltd v Cobra Sports Ltd [1980] RPC 343 . . . . . . . . . . . . . 8.21 Audi AG and Volkswagen AG v OHIM, Case T-318/09, [2011] ETMR 61 . . . . . . . . . . . . . . 2.77 Audi AG v OHIM, Case C-398/08, [2010] ECR I-00535, [2010] ETMR 18; [2010] FSR 24 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.23, 2.24, 2.75 August Storck KG’s Application, BL O/302/07, 9 October 2007, AP . . . . . . . . . . . . . .  2.56, 2.91 August Storck KG v OHIM, Case C-24/05 (shape of a sweet), [2006] ECR I-5677; [2006] All ER (D) 275 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.91 August Storck KG v OHIM, Case C-25/05 (sweet wrapper), [2006] ECR I-5677 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .   2.27, 2.86, 2.91 August Storck KG v OHIM, Case C-96/11 (chocolate mouse), 6 Sept 2012. . . . . . . . . . . . . . 2.84 Aurelia Finance SA v OHIM, Case T-136/08, [2009] ECR II-1361 . . . . . . . . . . . . . . . . . . . 4.101 Aveda Corp v Dabur India Ltd [2013] EWHC 589 (Ch); [2013] ETMR 33 . . . . . . . .  3.24, 3.38 Avnet Inc v Isoact Ltd [1998] FSR 16 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.24 ‘Baby-Dry’ see Procter & Gamble Bach and Bach Flower Remedies Trade Mark Application [2000] RPC 513, CA . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.32, 2.46, 2.50, 2.72, 9.29 Backaldrin Österreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH, Case C-409/12, AG, 12 September 2013. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.37 Balmoral Trade Mark Application [1999] RPC 297 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.49 Bang & Olufsen A/S v OHIM, Case T-460/05, [2007] ECR II-4207; [2008] ETMR 46 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.31, 2.86 Bang & Olufsen A/S v OHIM, Case T-508/08, [2011] ECR II-06975; [2012] ETMR 10 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.100

xviii

Table of Cases Barclays Bank plc v RBS Advanta [1996] RPC 307. . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.59, 7.60 Basic Trademark SA’s Trade Mark Application [2005] RPC 25; [2006] ETMR 24 . . . . . . . . 2.119 BAT/Toltecs v Commission, Case C-35/83, [1985] ECR 363; [1985] 2 CMLR 470 . . . . . . 7.120 Bavaria NV v Bayerischer Brauerbund eV, Case C-343/07, [2009] ECR I-5491; [2009] ETMR 61 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.125, 7.130 Bayerischer Brauerbund eV v Bavaria NV, Case C-120/08, [2010] ECR I-13393; [2011] ETMR 11 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.125 Bayerische Motoren Werke AG v Round & Metal Ltd [2012] EWHC 2099 (Pat); [2013] FSR 18. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.97 BBC Worldwide Ltd v Pally Screen Printing Ltd [1998] FSR 665. . . . . . . . . . . . . . . . . . . . . . 8.73 BCS SpA v OHIM, Case T-137/08, [2009] ECR II-4047. . . . . . . . . . . . . . . . . . . . . . . . . . . 2.108 Beautimatic International Ltd v Mitchell International Pharmaceuticals [2000] FSR 267. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.15, 7.18, 9.50, 9.82 Becker v Harman International Industries, Inc, Case C-51/09, [2010] ECR I-05805; [2010] ETMR 53, 24 June 2010 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.37 Beifa Group Co. Ltd v OHIM, Case T-608/11, [2013] ETMR 49; [2013] ECDR 17 . . . . . . 2.80 Belgian Electronic Sorting Technology NV v Bert Peelaers, Visys NV, Case C-657/11, [2013] ETMR 45 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.20, 7.63 Benetton Group SpA v G-Star International BV, Case C-371/06, [2007] ECR I-7709; [2008] ETMR 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.92, 2.99 Besnier SA’s Trade Mark Application [2002] RPC 260 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.48 Best Buy Co, Inc v Worldwide Sales Corp Espana SL [2001] EWCA Civ 618, [2011] FSR 30. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.143–9.145, 9.148 Betty’s Kitchen Coronation Street Trade Mark Application [2000] RPC 825 . . . . . . . . . . . . 2.136 Biba Group Ltd v Biba Boutique [1980] RPC 413 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.60 Bignall v Just Employment Law Ltd [2008] FSR 6 . . . . . . . . . . . . . . . . . . . . . . . . 8.15, 8.36, 8.39 Bimbo SA v OHIM, Case T-569/10, [2013] ETMR 7, 10 October 2012. . . . . . . . . . . . . . . . 3.06 Bimbo v OHIM, Case T-277/12, 20 March 2013. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.32 BioID AG v OHIM, Case C-37/03, [2007] ECR 1–7975; [2005] ETMR CN5. . . . . . . . . . . 2.73 Biomild see Campina Melkunie Bjornekulla Fruktindustrier AB v Procordia Food AB, Case C-371/02, [2004] ECR I-5791; [2005] 3 CMLR 16; [2004] RPC 45 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.36 Blayney Trading as Aardvark Jewellery v Clogau St David’s Gold Mines Ltd [2003] FSR 19. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.88 Blazer plc v Yardley & Co Ltd [1992] FSR 501. . . . . . . . . . . . . . . . . . . . . . . . . . . 8.77, 9.71, 9.74 BMW AG v Deenik, Case C-63/97, [1999] ECR I-905; [1999] 1 CMLR 1099; [1999] ETMR 339 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.36, 7.93 Bocacina Ltd v Boca Cafes Ltd [2013] EWHC 3090 (IPEC) . . . . . . . . . . . . . . . . . . . . . . . . . 8.61 Boegli-Gravures SA v Darsail-ASP [2009] EWHC 2690, 29 October 2009 . . . . . . . . . . . . . . 9.06 Boehringer Ingelheim KG v Swingward Limited, Case C-143/00, [2002] ECR I-3759; [2002] ETMR 78 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.117 Boehringer Ingelheim KG v Swingward Ltd (No 2), Case C-348/04, [2007] ECR I-3391; [2007] 2 CMLR 52; [2007] ETMR 71; then CA at [2008] ETMR 36 . . . . . . . . . . . . . 7.117 Boehringer Ingelheim Ltd v Vetplus Ltd [2007] FSR 29 . . . . . . . . . . . . . . . . . . . . . . . .  9.45, 9.62 Bollinger v Costa Brava Wine Co Ltd [1960] RPC 16 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.29 Bongrain SA’s Trade Mark Application [2005] RPC 14; [2005] ETMR 47 . . . . . . . . . .  2.33, 2.86 Bonus Gold Trade Mark Application [1998] RPC 859 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.73 Bostick Ltd v Sellotape [1994] RPC 556. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.64 Bovemij Verzekeringen NV v Benelux-Merkenbureau, Case C-108/05, [2006] ECR I-7605; [2007] ETMR 29 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.49, 2.50, 2.55 Boxing Brands Limited v Sports Direct International plc & Others [2013] EWHC 2200; [2013] ETMR 48, 25 July 2013 . . . . . . . . . . . . . . . . . . . . . . . 2.133, 2.141, 8.16, 8.27, 8.66 BP Amoco plc v John Kelly Ltd [2002] FSR 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.103, 8.65 Brain v Ingledew Brown Bennison [1997] FSR 511 . . . . . . . . . . . . . . . . . . . . . . . . . . .  9.81, 9.82 Brestian v Try [1958] RPC 161 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.14

xix

Table of Cases Bristol Conservatories Ltd v Conservatories Custom Built Ltd [1989] RPC 455 . . . . .  8.56, 8.57 Bristol-Myers Squibb v Paranova A/S, Cases C-427/93, C-429/93 and C-436/93, [1996] ECR I-3457; [1997] 1 CMLR 1151; [1997] FSR 102 . . . . . . . . . . . . . .  7.102, 7.117 British Airways plc v Ryanair Ltd [2001] FSR 32; [2001] ETMR 24 . . . . . . . . . . . . . . . . . . . 7.60 British American Tobacco (Brands) Inc Application ‘Sun Ripened Tobacco’, BL O/200/08, 14 July 2008, AP . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.35 British Diabetic Association v Diabetic Society Ltd [1996] FSR 1. . . . . . . . . . . . . . . . .  8.13, 8.14 British Legion v British Legion Club (Street) Ltd (1931) 48 RPC 555 . . . . . . . . . . . . .  8.13, 8.14 British Sky Broadcasting Group plc v Digital Satellite Warranty Cover Ltd (In Liquidation) [2011] EWHC 2662 (Ch); [2012] FSR 14 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.14 British Sky Broadcasting Group plc, Sky IP International Limited v Microsoft Corporation [2013] EWHC 1826 (Ch), 28 June 2013 . . . . . . . . . . . . . 3.63, 3.73, 4.30, 4.76, 7.48, 9.21 British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281; [1997] ETMR 118 . . . . . . . . . . . . . . . . . . . . . . . . . . 2.26, 2.69, 3.23, 3.44, 3.49, 7.38, 7.89 Brugger v Medicaid [1996] FSR 362. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.83 BT v One in a Million [1999] FSR 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.20, 8.54, 8.55, 8.79 BUD and Budweiser Budbräu Trade Mark Application [2003] RPC 25 . . . . . . . . . . . . . . . . . 5.18 Budejovický Budvar Národní Podnik v Anheuser-Busch Inc [2009] EWCA Civ 1022; [2010] RPC 7; on appeal from [2008] RPC 21 . . . . . . . . . . . . . . . . . . . . . . . . . .  3.89, 7.123 Budejovický Budvar Národní Podnik v Anheuser-Busch Inc, Case C-482/09, [2011] ECR I-08701; [2012] RPC 11; [2012] ETMR 2 . . . . . . . 1.22, 3.14, 3.89, 5.52–5.54, 7.44, 7.123 Budejovický Budvar Národní Podnik v Anheuser-Busch Inc [2012] EWCA Civ 880; [2012] 3 All ER 1405; [2013] RPC 12; [2012] ETMR 48 . . . . . . . . . . . . . . 1.22, 3.14, 7.44 Budejovický Budvar, Národní Podnik v Rudolf Ammersin GmbH, Case C-478/07, [2009] ECR I-7721; [2009] ETMR 65, and Case C-216/01, [2003] ECR I-13617; [2005] 1 CMLR 56; [2004] ETMR 21 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.124 Burberrys v Cording (1909) 26 RPC 693 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  8.37, 8.38 Bureau National Interprofessionnel du Cognac v Gust. Ranin Oy, Joined Cases C-4/10 and C-27/10, [2011] ECR I-06131; [2011] ETMR 53, 14 July 2011 . . . . . . . . . . . . . . 2.125 Burge v Haycock [2002] RPC 28 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.13 Business Zone see T-Mobile BVBA Management, Training en Consultancy v Benelux-Merkenbureau, Case C-239/05, [2007] ECR I-1455; [2007] ETMR 35 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.23 CA Sheimer (M) Sdn Bhd’s Trade Mark Application [2000] RPC 484 . . . . . . . . . . . . .  3.62, 3.65 CABANAS HABANA Trade Mark Application [2000] RPC 26 . . . . . . . . . . . . . . . . . . . . . . . 5.24 Cadbury Schweppes Pty Ltd v The Pub Squash Co Pty Ltd [1981] RPC 429; [1981] 1 WLR 193 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.80, 8.24 Cain Cellars Inc v OHIM, Case T-304/05, [2007] ECR II-00112, 12 Sept 2007 . . . . . . . . .   2.35 Calvin Klein Trademark Trust v OHIM, Case C-254/09, [2010] ECR I-07989; [2011] ETMR 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.29 Campbell v Hughes (Ian Adam trade mark), [2011] RPC 21, AP . . . . . . . . . . . . . . . . . . . . 2.146 Campina Melkunie BV v Benelux-Merkenbureau (‘Biomild’), Case C-265/00, [2004] ECR I-1699; [2005] 2 CMLR 9; [2004] ETMR 58. . . . . . . . . . . . . . 2.21, 2.30, 2.40 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, Case C-39/97, [1998] ECR I-5507; [1991] 1 CMLR 77; [1999] RPC 117; [1999] FSR 332; [1999] ETMR 1 . . . . . . 1.21, 3.25, 3.29, 3.30, 3.43–3.46 ‘Caremix’ see Altecnic Carflow Products v Linwood Securities [1998] FSR 691 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.147 Caroline Kavanagh’s Trade Mark Application, BL O/168/07, 13 June 2007, AP . . . . . . . . . . 2.69 CDW Graphic Design Ltd’s Trade Mark Application [2003] RPC 30 . . . . . . . . . . . . . . . . . . 2.119 Céline Sarl v Céline SA, Case C-17/06, [2007] ECR I-7041; [2007] ETMR 80 . . . . . . 7.12, 7.29, 7.34, 7.41, 7.81, 7.86

xx

Table of Cases Centrafarm BV v American Home Products Corporation, Case 3/78, [1978] ECR 1823; [1979] 1 CMLR 326 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.08 Centrafarm BV v Winthrop BV, Case 16/74, [1974] ECR 1183; [1974] 2 CMLR 480 . . . . 7.102 Centrotherm v OHIM, Joined Cases C-609/11 & 610/11, [2014] ETMR 7 . . . . . . . . . . . . . 5.72 Cernivet Trade Mark Application [2002] RPC 30 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.24 CFA Institute’s Application [2007] ETMR 76. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.149 Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Case C-307/10, [2013] RPC 11; [2012] ETMR 42 and then [2013] RPC 20 . . . . . . . . . . .  2.11, 3.22, 4.16, 4.17, 4.19, 4.68 Chelsea Man Menswear Ltd v Chelsea Girl Ltd [1987] RPC 189 . . . . . . . . . . . . . . . . .  8.14, 8.76 Chemistree Homecare Ltd v Teva Pharmaceuticals Ltd [2011] EWHC 2622 . . . . . . . . . . . . . 9.58 ‘Chinawhite’ see Harrison Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, Case-529/07, [2009] ECR I-4893; [2009] ETMR 56 . . . . . . . . . . . . . . .  2.86, 2.130–2.132, 2.134, 2.139, 2.141, 2.142, 2.144, 5.66, 7.49 Chocoladefabriken Lindt & Sprüngli AG v OHIM, Case C-98/11, [2013] C.E.C. 161, 24 May 2012 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.27, 2.89, 2.132 Chocosuisse Union Des Fabricants Suisse de Chocolat v Cadbury Ltd [1999] RPC 826 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  8.09, 8.24, 8.29, 8.60 Cipriani see Hotel Cipriani Citibank NA v Citybond Holdings plc [2007] RPC 13. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.29 Class International BV v Colgate Palmolive Co, Case C-405/03, [2005] ECR 1-8735; [2006] 1 CMLR 14; [2006] Ch 154; [2006] 2 WLR 507 . . . . . . . . . . . . . . . . . . . . . . . . 7.18 Claudia Oberhauser v OHIM, Case T-104/01, [2002] ECR II-4359; [2003] ETMR 58 . . . . 3.41 Club Sail Trade Mark Application [2010] RPC 32, AP . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.79 COFFEEMIX Trade Mark Application [1998] RPC 717 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.45 Coflexip SA v Stolt Comex Seaways MS Ltd [2001] RPC 9 . . . . . . . . . . . . . . . . . . . . .  9.50, 9.77 ColArt/Americas, Inc v OHIM, Case T-164/06, [2007] ECR II-116 . . . . . . . . . . . . . . . . . . . 2.46 Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1972] RPC 303. . . . . . . . . . . . . . . . . . . . . . . 9.99 Colgate-Palmolive Ltd v Markwell Finance Ltd [1989] RPC 497 . . . . . . . . . . . . . . . . . . . . . 7.101 Colloseum Holding AG v Levi Strauss & Co, Case C-12/12, [2013] ETMR 34, 18 April 2013 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.57, 2.101, 5.19, 7.47 Commission of the European Communities v Germany, Case C-132/05, [2008] ECR I-957; [2008] ETMR 32 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.130 Compass Publishing BV v Compass Logistics Limited [2004] RPC 41 . . . . . . . . . . . . . . . . . . 3.21 Concept Anlagen und Geräte nach ‘GMP’ Für Production Gmbh v OHIM, Case T-127/02, [2004] ECR II-1113; [2004] ETMR 81 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.126 Consejo Regulador de la Denominacion de origen Txakoli de Alava e.a. v OHIM, Case T-341/09, [2011] ECR II-02373. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.46 Consorzio del Prosciutto di Parma v Asda Stores Limited, Case C-108/01, [2003] ECR I-5121; [2003] 2 CMLR 21; [2004] ETMR 23. . . . . . . . . . . . . . .  2.124, 7.130 Consorzio del Prosciutto di Parma v Marks & Spencer plc [1991] RPC 351 . . . . . . . .  8.07, 8.12 Consorzio per la Tutela del Formaggio Gorgonzola v Käserei Champignon Hofmeister GmbH & Co KG, Case C-87/97, [1999] ECR I-1301; [1999] 1 CMLR 1203; [1999] ETMR 454 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.124 Consten and Grundig see Etablissements Consten Continental Shelf 128 Ltd v Hebrew University of Jerusalem [2007] RPC 23. . . . . . . . . . . . . 5.11 Cooper Chasney Ltd v Commissioners of Customs and Excise [1992] FSR 298 . . . . . . . . . . 9.93 Copad SA v Christian Dior Couture SA, Case C-59/08, [2009] ECR I-3421; [2009] FSR 22; [2009] ETMR 40 . . . . . . . . . . . . . . . . . . . . . . . . . . .  1.26, 6.13, 7.31, 7.109 Copydex Ltd v Noso Products Ltd (1952) 69 RPC 38 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.50 Coty Prestige Lancaster Group GmbH v Simex Trading AG, Case C-127/09, [2010] ECR I-04965; [2010] ETMR 41; [2010] FSR 38 . . . . . . . . . . . . . . . . . . . . . . . 7.112 County Sound plc v Ocean Sound Ltd [1991] FSR 367 . . . . . . . . . . . . . . . . . . . . 8.16, 8.84, 9.61

xxi

Table of Cases Courage Ltd v Crehan, Case C-453/99, [2001] ECR I-6297; [2001] 5 CMLR 28; [2002] QB 507; [2001] 3 WLR 1646 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.62 Couture Tech Ltd v OHIM, Case T-232/10, [2011] ECR II-06469; [2012] ETMR 5 . . . . . 2.119 CPC (United Kingdom) Ltd v Keenan [1986] FSR 527 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.72 Criminal Clothing Ltd v Aytan’s Manufacturing (UK) Ltd [2005] EWHC 1303, 22 June 2005 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.40 Croom’s Trade Mark Application [2005] RPC 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.80, 8.24 D Green & Co (Stoke Newington) Ltd and Plastico Ltd v Regalzone Limited [2002] ETMR 22 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.89 Daimler AG v Sany Group Co Limited [2009] ETMR 58 (revocation); and [2009] EWHC 2581 (Ch), 23 October 2009 . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.23, 3.57 DaimlerChrysler AG v Alavi [2001] RPC 42; [2001] ETMR 98. . . . . . . . . . . . . . . . . . . . . . . 7.98 DaimlerChrysler Corp v OHIM (Grille), Case T-128/01, [2003] ECR II-701; [2003] ETMR 87 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.21, 2.91 Dainichiseika Colour & Chemicals Mfg Co Ltd v OHIM, Case T-389/03, [2008] ECR II-58; [2008] ETMR 45 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.34, 3.35 Dalgety Spillers Foods Ltd v Food Brokers Ltd (‘Pot Noodles’) [1994] FSR 504 . . . . . . . . . . 8.45 Danjaq LLC v OHIM, Case T-435/05, [2009] ECR II-2097 . . . . . . . . . . . . . . . . . . . . . . . . . 2.67 Dansk Supermarked A/S v A/S Imerco, Case C-58/80, [1981] ECR 181; [1981] 3 CMLR 590 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.104 Das Prinzip see OHIM v Erpo Datacard Corp v Eagle Technologies Ltd [2011] EWHC 244 (Pat); [2011] RPC 17 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.45, 7.72, 7.83 DATASPHERE Trade Mark Application [2006] RPC 23 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.27 Davidoff & Cie SA v Gofkid Limited, Case C-292/00, [2003] ECR I-389; [2003] 1 CMLR 35; [2003] FSR 28; [2003] 1 WLR 1714 . . . . . . . . . . . . . . . . . . . . . . . 3.50 Dawnay, Day & Co Ltd v Cantor Fitzgerald International [2000] RPC 669 . . . . . . . . . . . . . . 6.10 Decon Laboratories Ltd v Fred Baker Scientific Ltd [2001] RPC 17; [2000] ETMR 46 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.20, 5.27 DEF-TEC Defense Technology GmbH v OHIM, Case T-6/05, [2006] ECR II-2671 . . . . . 2.129 De Landtsheer Emmanuel SA v Comité Interprofessionnel du Vin de Champagne, Case C-381/05, [2007] ECR I-3115; [2007] 2 CMLR 43; [2007] ETMR 69 . . .  7.67, 8.79 Demon Ale Trade Mark Application [2000] RPC 345. . . . . . . . . . . . . . . . . . . . . 2.136, 4.09, 4.45 Dent v Turpin (1861) 2 J&H 139. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  8.29, 8.88 Desquenne et Giral UK Ltd v Richardson [2001] FSR 1. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.58 Deutsche Renault AG v Audi AG, Case C-317/91, [1993] ECR I-6227; [1995] FSR 738 . . . 9.41 Deutsche SiSi-Werke GmbH & Co. Betriebs KG v OHIM, Case C-173/04, [2006] ECR I-551; [2006] ETMR 41 . . . . . . . . . . . . . . . . . . . . . 2.23, 2.30, 2.39, 2.81, 2.84 Develey Holding GmbH & Co Beteiligungs KG v OHIM, Case C-238/06, [2007] ECR I-9375; [2008] ETMR 20 . . . . . . . . 2.24, 2.27, 2.83, 2.86, 4.119, 4.121, 4.125 DHL Express France SAS v Chronopost SA, Case C-235/09, [2011] ECR I-02801; [2011] FSR 38; [2011] ETMR 33 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  9.37, 9.40 Diageo North Amercia and anor v Intercontinental Brands (ICB) and Others (‘Vodkat’), [2010] EWHC 173; [2010] ETMR 17, affirmed by [2010] EWCA Civ 920, [2011] RPC 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  8.08, 8.29, 8.31, 8.32 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmuller GmbH v Guni, Trade Mark Application, Case C-278/08, [2010] ECR I-2517; [2010] ETMR 33 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.24, 7.43, 7.50 Digipos Store Solutions Group Ltd v Digi International Inc [2008] RPC 24 . . . . . . . .  2.26, 3.31 Doncaster Pharmaceuticals Group Ltd v Bolton Pharmaceutical Co 100 Limited [2007] FSR 3; [2006] ETMR 65 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  6.59, 7.102 Doosan Power Systems Ltd v Babcock International Group [2013] EWHC 1364, [2013] ETMR 40 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.65 Dormeuil Freres SA v Feraglow Ltd [1990] RPC 449 . . . . . . . . . . . . . . . . . . . . . . . . . .  9.89, 9.91

xxii

Table of Cases Double G Communications Ltd v News Group International Ltd [2011] EWHC 961 (QB) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.49 ‘Doublemint’ see OHIM v Wm Wrigley Dualit Ltd’s (Toaster Shapes) Trade Mark Application [1999] RPC 890 . . .  2.09, 2.20, 2.85, 4.11 Duccio Trade Mark Application, BL O/343/09 28 October 2009, AP . . . . . . . . . . . . . . . . . . 4.58 Duckham & Co’s Trade Mark Application [2004] RPC 28 . . . . . . . . . . . . . . . . . . . . . . . . . . 2.108 DU PONT Trade Mark Application [2004] FSR 15; [2006] 1 WLR 2793. . . . . . . . . . . . . . . 4.70 Duro Sweden AB v OHIM, Case T-346/07, [2008] ECR II-00263; [2009] ETMR 22 . . . . . 2.46 Dyson Limited v Registrar of Trade Marks, C-321/03, [2007] ECR I-687; [2007] 2 CMLR 14; [2007] RPC 27; [2007] ETMR 34; a reference from Patten J [2003] RPC 47; [2003] ETMR 77 . . . . . . . . . . . . . . . . . . . . . . . . . .  2.12, 2.15, 2.82, 2.107 Easistore Ltd’s Trade Mark Application, BL O/342/10, 21 September 2010, AP . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.30, 2.42, 2.46 Easynet Group plc v Easygroup IP Licensing Limited [2007] RPC 6 . . . . . . . . . . . . . .  2.24, 2.60 Ecoblock Trade Mark Application, BL O/178/06, 7 June 2006, AP . . . . . . . . . . . . . . . . . . . . 3.79 Eden v OHIM, Case T-304/04, [2005] ECR II-4705; [2006] ETMR 14 . . . . . . . . . . . . . . . 2.115 Edge & Sons Limited v William Niccolls & Sons Limited [1911] AC 693; (1911) 28 RPC 582. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.40 Edwin Co v OHIM (‘Fiorucci’), Case C-263/09, [2011] ECR I-05853; [2011] ETMR 45, 5 July 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.84, 5.39 Einstein see Continental Shelf Einstein Stadtcafe’s Trade Mark Application [2000] ETMR 952 . . . . . . . . . . . . . . . . . . . . . . . 3.84 Eis de GmbH v BBY Vertriebsgesellschaft mbH, Case C-91/09, [2010] ECR I-00043, . . . . . 7.45 EKORNES ASA’s Application, BL O/017/06, 16 January 2006, AP . . . . . . . . . . . . . . . . . . . . 2.94 Elan Digital Systems Ltd v Elan Computers Ltd [1984] FSR 373 . . . . . . . . . . . . . . . . . . . . . . 9.64 El Corte Inglés SA v OHIM, Case T-39/10, [2013] ETMR 3, 27 September 2012. . . . . . . . . 3.47 Electrocoin Automatics Ltd v Coinworld Limited [2005] FSR 7; [2005] ETMR 31 . . .  3.18, 3.61 Electrolux Ltd v Electrix Ltd (1953) 70 RPC 158 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.97 Eli Lilly and Co v 8PM Chemists Ltd [2008] EWCA Civ 24; [2008] FSR 11. . . . . . . . . . . . . 7.18 Elio Fiorucci v OHIM, Case C-263/09, [2011] ECR I-05853; [2011] ETMR 45, 5 July 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.39 ‘Elizabeth Emanuel’ Trade Mark Application [2004] RPC 15 . . . . . . . . . . . . . . . . . . . . . . . . . 4.68 Elizabeth Emanuel v Continental Shelf 128 Ltd, Case C-259/04, [2006] ECR I-3089; [2006] ETMR 56 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.60, 2.68, 2.121, 5.39, 6.06 Elle Trade Mark Application [1997] FSR 529 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  5.07, 5.17 Elleni Holding BV v Sigla SA, (VIPS), Case T- 215/03, [2007] ECR II-711; [2007] ETMR 79 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.25, 3.60–3.62 Elvis Presley Trade Mark Application [1999] RPC 567 . . . . . . . . . . . . . . . . . . . . . 2.64, 2.68, 8.69 Emaco v Dyson [1999] ETMR 903 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.60, 9.81 Emap National Publications Ltd v Security Publications Ltd [1997] FSR 891. . . . . . . . . . . . . 8.41 EMAP Radio Limited’s Application, BL O/446/01, 9 October 2001 . . . . . . . . . . . . . . . . . . . 2.73 Environmental Manufacturing LLP v OHIM, Case C-383/12, 14 November 2013 overturning Case T-570/10, 22 May 2012, [2012] ETMR 54 . . . . . . . . . . . . . . . .  3.61, 7.51 Eric Burden’s Trade Mark Application, BL O/369/13, 12 Sept 2013, AP . . . . . . . . . . . . . . . . 8.27 Ernst August Prinz von Hannover Herzog zu Braunschweig und Lüneburg v OHIM, Case T-397/09, [2011] ECR II-00159, 25 May 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . 2.128 Erven Warnink BV v J Townend & Sons (Hull) Ltd (No 1) [1997] AC 731; [1980] RPC 31; [1979] FSR 397; [1997] 3 WLR 68. . . . . . . . . . . . . . 3.77, 8.05, 8.08, 8.10, 8.30, 8.31, 8.80 ‘ESB’ see West Essex Trading Standards v Singh [2009] WLR (D) 81; [2009] EWHC 520 . . . . . . . . . . . . . 9.161 esure Insurance Ltd v Direct Line Insurance plc [2008] RPC 34; [2008] ETMR 77 . . .  3.45, 9.25 Etablissements Consten SA and Grundig-Verkaufs-GmbH v EEC Commission, Cases 56/64 and 58/64, [1966] ECR 299, [1966] CMLR 418 . . . . . . . . . . . . . . .  1.20, 6.65 Eurocermex SA v OHIM, Case C-286/04, [2005] ECR I-5797; [2005] ETMR 95 . . .  2.24, 2.81

xxiii

Table of Cases Euromarket Designs Inc v Peters [2001] FSR 20; [2000] ETMR 1025 . . . . . . . . . . . . . . . . . . 7.25 ‘Europolis’ see Bovemij Evans T/A Firecraft v Focal Point Fires plc [2009] EWHC 2784 (Ch); [2010] RPC 15; [2010] ETMR 29 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.78, 5.50, 5.51 Evegate Publishing Ltd v Newsquest Media (Southern) Ltd [2013] EWHC 1975 (Ch), 10 July 2013 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.41 Executrices of the Estate of Diana, Princess of Wales’ Application [2001] ETMR 25. . . . . . . . 2.64 Extreme see Pan World Fage UK Ltd v Chobani UK Ltd [2012] EWHC 3755; [2013] FSR 32 . . .  7.09, 8.09, 8.24, 8.32 FCUK see Woodman Federation Cynologique Internationale v Federacion Canina Internacional de Perros de Pura Raza, Case C-561/11, [2013] ETMR 23, 21 February 2013 . . . . . . . . . . . . . . . . . . 7.78 Ferrero SpA’s Trade Mark Application [2004] RPC 29 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.136 Ferrero SpA v OHIM, Case C-552/09, [2011] ECR I-02063; [2011] ETMR 30, 24 March 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.29, 3.30, 3.57 Fine & Country Limited v Okotoks Limited [2013] EWCA Civ 672, 14 June 2013, . . . . . . . . . . . . . . . . . . . .   2.34, 2.38, 2.51, 2.73, 7.48, 8.36, 8.59, 8.61, 9.25 ‘Flying Scotsman’ see NMSI Football Association Premier League v Graymore Marketing Ltd [1995] EIPR D 15 . . . . . . . 8.73 Ford Motor Co v OHIM, Case T-91/99, [2000] ECR II-1925; [2000] 2 CMLR 276; [2000] ETMR 554 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.48, 4.88 Ford Motor Co v OHIM, Case T-67/07, [2008] ECR II-3411 . . . . . . . . . . . . . . . . . . .  2.23, 2.42 Formula One Licensing BV v OHIM, Case C-196/11, 24 May 2012 . . . . . . . . . 2.21, 2.31, 3.02 Fox International Group Ltd v Folly [2011] EWPCC 30; [2012] ECC 3 . . . . . . . . . . . . . . . . 7.47 Freixenet SA v OHIM, Joined Cases C-344/10 and C-345/10, 20 October 2011 . . . .  2.83, 2.84 Frisdranken Industrie Winters BV v Red Bull GmbH, Case C-119/10, [2012] ETMR 16, 15 December 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.74, 7.15 Frost Products Limited v F C Frost Limited [2013] EWPCC 34, 26 July 2013 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.139, 2.147, 3.85, 7.99 Fruit of the Loom Inc v OHIM, Case T-514/10, [2012] ETMR 44, 21 June 2012. . . . . . . . . 5.18 FSTC Ltd Foundation for Science Technology and Civilisation’s Application, BL O/008/07, 8 January 2007 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.60 Gala of London v Chandler [1991] FSR 294 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.73 Galatopoly Trade Mark Application, BL O/382/13, 13 September 2013, AP . . . . . . . . . . . . . 3.31 Galileo International Technology, LLC v European Union [2011] EWHC 35 (Ch); [2011] ETMR 22 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.29 Galileo Trade Mark Application [2005] RPC 22 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.23 Garden Cottage Foods v Milk Marketing Board [1984] AC 130 . . . . . . . . . . . . . . . . . . . . . . . 9.74 Gateway v OHIM, Case C-57/08, [2008] ECR I-188; [2009] ETMR 32. . . . . . . . . . . . . . . . 3.38 General Cigar v Partagas y Cia [2005] EWHC 1729; [2005] FSR 45 . . . . . . . . . . . . . . . . . . . 4.31 General Electric Trade Mark Application [1972] 1 WLR 729 . . . . . . . . . . . . . . . . . . . . . . . . . 8.88 General Motors Corp v Yplon SA (‘Chevy’), Case C-375/97, [1999] ECR I-5421; [1999] ETMR 950 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.52, 3.54–3.56, 3.61, 7.125 General Tire v Firestone [1976] RPC 197 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.85 George Ballantine & Sons v Ballantyne Stewart & Co [1959] RPC 273 . . . . . . . . . . . . . . . . . 9.28 Gerber Garment Technology Inc v Lectra Systems Ltd [1995] RPC 383, Ch D; [1997] RPC 443, CA. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.86 Gerolsteiner Brunnen GmbH & Co v Putsch GmbH, Case C-100/02, [2004] ECR I-691; [2004] RPC 39; [2004] ETMR 40 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.89 Getty Images (US) Inc v OHIM, Case T-338/11, 21 November 2012 . . . . . . . . . . . . . . . . . . 2.40 Ghazillian’s Trade Mark Application [2002] RPC 33. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.119 Gillette Co v LA-Laboratories Ltd Oy, Case C-228/03, [2005] ECR I-2337; [2005] 2 CMLR 62; [2005] FSR 37; [2005] ETMR 67. . . . . . . . . . . . . . . . . . . . . . . . 7.82, 7.84, 7.95

xxiv

Table of Cases Gillette UK v Edenwest Ltd [1994] RPC 279 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  8.84, 9.81 Gina Shoes Ltd v Medici Ltd [2001] 24(5) IPD 24029. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.34 Giorgio Armani SpA v Sunrich Clothing Ltd [2011] ETMR 13; [2010] EWHC 2939 (Ch) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.77, 5.29 Glaverbel SA v OHIM, C-445/02, [2004] ECR I-6267; [2005] ETMR 70 . . . . . . . . .  2.52, 2.55 Glaxo Group Ltd v Dowelhurst Ltd (No 2) [2000] 2 CMLR 571; [2000] FSR 529; [2000] ETMR 415 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.17, 1.20, 7.102 Gloag & Son Ltd v Welsh Distillers Ltd [1998] FSR 718 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.57 Globelegance v Sarkissian [1974] RPC 603. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.21 Golden Eye (International) Ltd v Telefonica UK Ltd [2012] EWHC 723; [2012] RPC 28 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.05 Google France v Louis Vuitton Malletier/Viaticum/CNRRH, Joined Cases C-236/08, C-237/08 and C-238/08, [2010] ECR I-2417; [2010] RPC 19; [2010] ETMR 30 . . . . . 1.15, 1.20, 1.25, 1.27, 7.23, 7.43, 7.45, 7.96, 8.03 GretagMacbeth LLC v OHIM, Case T-400/07, [2008] ECR II-00257 . . . . . . . . . . . . . . . . . 2.108 Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367. . . . . . . . .  2.143, 4.45 H Young (Operations) Ltd v Medici Limited (‘Animal’) [2004] FSR 19 . . . . . . . . . . . . . . . . . 5.28 Habib Bank Limited v Habib Bank AG Zurich [1981] 1 WLR 1265 . . . . . . . . . . . . . . . . . . 7.122 Hag II, Case C-10/89, [1990] ECR I-3711; [1990] 3 CMLR 571; [1991] FSR 99 . . .  1.20, 6.58 Harrison v Teton Valley Trading Co Limited (‘China White’) [2004] EWCA Civ 1028; [2004] 1 WLR 2577; [2005] FSR 10. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.143 Harrods Ltd v Harrodian School Ltd [1996] RPC 697 . . . 8.66, 8.71, 8.74, 8.77, 8.83, 8.85, 9.25 Hasbro Inc v 123 Nahrmittel GmbH [2011] EWHC 199 (Ch); [2011] FSR 21; [2011] ETMR 25 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.53, 7.47, 7.70, 7.82 Haupl v Lidl Stiftung & Co KG, Case C-246/05, [2007] ECR I-4673; [2007] ETMR 61 . . . 5.25 ‘Have a Break’ see Société des Produits Nestlé, C-353/03 Heidelberger Bauchemie GmbH’s Trade Mark Application, Case C-49/02, [2004] ECR I-6129; [2004] ETMR 99 . . . . . . . . . . . . . . . . . . . . .  2.12, 2.105, 2.106, 2.108 Helena Rubinstein SNC v OHIM, Case C-100/11, [2012] ETMR 40, 10 May 2012 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.61, 3.72, 7.51 Henkel KGaA v Deutsches Patent-und Markenamt, Case C-218/01, [2004] ECR I-1725; [2005] ETMR 45 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.27, 2.33, 2.46, 2.81, 2.83, 2.84 Her Majesty’s Revenue Commissioners v Penbrook Enterprises Ltd [2008] NI 2, 9 December 2008 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.120 HFC Bank plc v Midland Bank plc [2000] FSR 176. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.62 Hilti Aktiengesellschaft’s Trade Mark Application, BL O/308 and O/309/09, 6 October 2009 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.108 Hodgkinson & Corby Ltd v Wards Mobility Ltd [1995] FSR 169; [1994] 1 WLR 1564 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  8.40, 8.63, 8.64, 8.71 Hoechst Celanese International Corp v BP Chemicals Ltd [1999] RPC 203. . . . . . . . . . . . . . 9.97 Hollister, Inc v Medik Ostomy Supplies Ltd [2012] EWCA Civ 1419; [2013] FSR 24. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.117, 9.97, 9.98 Hollywood SAS v Souza Cruz SA [2002] ETMR 64 . . . . . . . . . . . . . . . . . . . . . . . . . . .  1.25, 3.65 Holterhoff v Freiesleben, Case C-2/00, [2002] ECR I-4187; [2002] FSR 52; [2002] ETMR 79 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.39, 7.43, 7.89 Home Box Office Inc v Channel 5 Home Box Office Ltd [1982] FSR 449 . . . . . . . . . .  8.22, 8.26 Horlick’s Malted Milk Co v Summerskill (1917) 34 RPC 63 . . . . . . . . . . . . . . . . . . . . . . . . . 8.39 Hormel Foods Corp v Antilles Landscape Investments NV [2005] RPC 28 . . . . . 2.42, 5.33, 5.37 Hotel Cipriani SRL v Cipriani (Grosvenor Street) Limited [2008] EWHC 3032(Ch); [2009] RPC 9, and [2010] EWCA Civ 110; [2010] RPC 16, CA . . . . .  2.130, 2.131, 2.142, 2.144, 3.25, 4.45, 7.44, 7.83, 7.86, 7.87, 8.02, 8.18, 8.20, 8.21, 8.88 Hotel Cipriani Srl v Fred 250 Ltd (formerly Cipriani (Grosvenor Street) Ltd) [2013] EWHC 70 (Ch); [2013] ECC 11; [2013] ETMR 18. . . . . . . . . . . . . . . . .  7.83, 7.87 HOTPICKS Trade Mark Application [2004] RPC 42; [2004] 1 WLR 955 . . . . . . . . . . . . . 2.133

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Table of Cases Houghton v Liverpool City Council [2000] Crim LR 574 . . . . . . . . . . . . . . . . . . . .  9.153, 9.172 HP Bulmer Ltd v J Bollinger SA [1978] RPC 79 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.81 Hrbek v OHIM, Case C-42/12, 29 November 2012 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.38 Huckerby v Elliott [1970] 1 All ER 189 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.164 Hugin Kassaregister AB v Commission, Case 22/78, [1979] ECR 1869; [1979] 3 CMLR 345 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.62 Hultafors Group AB v OHIM, Case T-537/11, 19 April 2013 . . . . . . . . . . . . . . . 3.32, 3.40, 3.42 Hunt-Wesson Inc’s Trade Mark Application (‘Swiss Miss’) [1996] RPC 233 ChD; [1998] RPC 889, CA. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.46, 4.70 Hymac v Priestman Bros [1978] RPC 495 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.74 Ian Adam see Campbell IBM v Phoenix International Computers Ltd [1994] RPC 251. . . . . . . . . . . . . . . . . . .  8.87, 9.28 IBM v Web-Sphere Limited [2004] FSR 39; [2004] ETMR 94 . . . . . . . . . . . . . . . . . . . . . . . 3.18 IG Communications Ltd v OHIM, Case T-301/09, [2013] ETMR 17, 26 September 2012 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.41 IHT International Heiztechnik GmbH v Ideal-Standard GmbH, Case C-9/93, [1994] ECR I-2789; [1995] FSR 59 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  6.58, 7.107 Il Ponte Finanziaria SpA v OHIM, Case C-234/06, [2007] ECR I-7333; [2008] ETMR 13 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.29, 3.39, 3.41, 5.11, 5.23 Imagination Technologies Ltd v OHIM, Case T-461/04, [2007] ECR II-122; [2008] ETMR 10 and Case C-542/07, [2009] ECR I-4937; [2010] ETMR 19 . . . . . . . 2.46, 2.73, 4.100 Intel Corporation Inc v CPM UK Limited, Case C-252/07, [2008] ECR I-8823; [2009] RPC 15; [2009] ETMR 13, and CA at [2007] RPC 35; [2007] ETMR 59 . . .  1.15, 1.25, 3.51, 3.53, 3.55–3.60 Intel Corp v Sihra [2003] RPC 44; [2004] ETMR 44. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.62 Interactive Intelligence’s Trade Mark Application, BL O/325/07, 30 October 2007, AP . . . . . 2.73 Interflora Inc v Marks & Spencer plc, Case C-323/09, [2011] ECR I-08625; [2012] FSR 3; [2012] ETMR 1, a reference from Arnold J [2009] EWHC 1095 (Ch); [2009] RPC 22 . . . . . . . . . . . . . . . . . . . . 1.15, 1.27, 3.52, 3.53, 3.63, 3.70, 3.71, 3.73, 8.60 Interflora Inc v Marks & Spencer plc (High Ct) [2013] EWHC 1291 (Ch), [2013] FSR 33; [2013] ETMR 35. . . . . . . . . . . . 1.15, 7.21, 7.24, 7.43, 7.45, 7.51, 7.52, 7.56, 8.60 Interflora Inc v Marks & Spencer plc (Surveys) [2012] EWCA Civ 1501; [2013] FSR 21; and [2013] EWCA Civ 319; [2013] FSR 26 . . . . . . . . . . .  1.27, 7.13, 8.59, 9.21, 9.28–9.31 Interlego’s Trade Mark Application [1998] RPC 69. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.08 Inter Lotto (UK) Ltd v Camelot Group plc [2004] RPC 9; [2003] 4 All ER 575. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .   1.08, 7.05, 8.92 Internetportal und Marketing GmbH v Richard Schlicht, Case C-569/08, [2010] ECR I-04871; [2010] ETMR 48. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.134 Invermont Trade Mark Application [1997] RPC 125 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.23 IPC Media Ltd v Media 10 Ltd [2013] EWHC 3796 (IPEC), 6 December 2013 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.54, 3.21, 8.39 IP Translator see Chartered Institute of Patent Attorneys IRC v Muller and Co’s Margarine [1901] AC 217. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.11 Irvine v Talksport Ltd [2003] 2 All ER 881; [2003] FSR 35 . . . . . . . . . . . . . . . . . . . .   8.02, 8.03, 8.13, 8.48, 8.68, 9.90 Island Records Ltd v Tring International plc [1996] 1 WLR 1256; [1995] FSR 560 . . . . . . . . 9.83 Javico International v Yves St Laurent Parfums SA, Case C-306/96, [1998] ECR I-1983; [1998] 5 CMLR 172; [1999] QB 477; [1998] ETMR 536 . . . . . . . . . . . . . . . . . . . . . . . 6.62 Jean Christian Perfumes Ltd v Thakrar [2011] EWHC 1383 (Ch); [2011] FSR 34 . . . . . . . . 7.14 Jersey Trade Mark Application, BL O/172/13, 29 April 2013 . . . . . . . . . . . . . . . . . . . . . . . . . 2.50 Jeryl Lynn Trade Mark Application [1999] FSR 491; [2000] ETMR 75 . . . . . . . . . . . . . . . . . 2.72 Jian Tools for Sale Inc v Roderick Manhattan Group Ltd [1995] FSR 924 . . . . . . . . . . . . . . . 9.74

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Table of Cases Jif see Reckitt & Colman John Lewis of Hungerford’s Application [2001] RPC 28. . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.114 John Robert Powers School Inc v Tessensohn [1995] FSR 947 . . . . . . . . . . . . . . . . . . . . . . . . 8.56 John Walker & Sons Ltd v Henry Ost & Co Ltd [1970] RPC 489 . . . . . . . . . . . . . . . . . . . . . 8.29 Joop! GmbH v OHIM, Case T-191/08, [2009] ECR II-00191, 30 Sept 2009 . . . . . . . . . . . . 2.78 Jules Rimet Cup Ltd v Football Association Limited [2007] EWHC 2376; [2008] FSR 10; [2008] ECDR 4. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.139 Julius Sämaan Ltd v Tetrosyl Limited (‘Magic Tree’) [2006] FSR 42; [2006] ETMR 75 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.97, 3.25, 5.37, 7.90, 9.26 JW Spear & Sons Ltd v Zynga Inc (‘Scrabble’ tile) [2012] EWHC 3345 (Ch); [2013] FSR 28, affirmed by [2013] EWCA Civ 1175; [2014] ETMR 5 . . . . . . . . 2.09, 2.14, 2.15, 7.50, 8.37 K & L Ruppert Stiftung & Co. Handels-KG v OHIM, Case T-86/05, [2007] ECR II-4923 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.91 Kabushiki Kaisha Fernandes v OHIM, Case T-39/01, [2002] ECR II-5233; [2003] ETMR 98 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.14 Kabushiki Kaisha Sony Entertainment v Nuplayer Limited [2006] FSR 9. . . . . . . . . . . . . . . . 7.29 Kabushiki Kaisha Yakult Honsha’s Trade Mark Application (‘Yakult’) [2001] RPC 39; [2006] ETMR 46 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.83 Kean v McGivan [1982] FSR 119 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.13 Kimberley Clark Ltd v Fort Sterling Ltd [1997] FSR 877 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.53 KiNDERJOGHURT see Ferrero Kingspan Group v Rockwool Limited, [2011] EWHC 250 (Ch), 21 February 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.09, 7.64, 7.70, 7.82 Kitfix Swallow Group Ltd v Great Gizmos Ltd [2007] EWHC 2668 (Ch), [2008] FSR 9. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.38 K-Mail Order GmbH & Co KG v OHIM, Case T-279/10, [2011] ECR II-00283, 14 September 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.85 Knight v Beyond Properties Pty Ltd & Others [2007] EWHC 1251 (Ch) . . . . . . . . . . . . . . . 8.16 Koninklijke KPN Nederland NV v Benelux-Merkenbureau (‘Postkantoor’), Case C-363/99, [2004] ECR I-1619; [2005] 2 CMLR 10; [2006] Ch 1; [2004] ETMR 57 . . . . . . . . . . . . .  2.21, 2.23, 2.27, 2.30, 2.33, 2.37, 2.40–2.42, 4.29, 5.29 Koninklijke Philips Electronics NV v Lucheng Meijing Industrial Co Ltd, Joined Cases C-446/09 and 495/09, [2012] ETMR 13, 1 December 2011 . . . . . . . . . . . . . . . . 7.18 Kureha Corp v OHIM, Case T-487/08, [2010] ECR II-00111; [2010] ETMR 56, 16 June 2010 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.05 Kurt Geiger’s Application, BL O/075/13, 14 February 2013, AP . . . . . . . . . . . . . . . . .  3.33, 3.38 KWS Saat AG v OHIM, Case C-447/02, [2004] ECR I-10107; [2005] ETMR 86 . . . . . . . 2.106 Laboratoire Bioderma v OHIM, Case T- 427/11, 21 February 2013. . . . . . . . . . . . . . . . . . . . 2.40 Laboratoire De La Mer Trade Mark Application [2002] ETMR 34; [2002] FSR 51 . . . . . . . 2.137 La Chemise Lacoste SA v Baker Street Clothing Ltd [2011] RPC 5 . . . . . . . . . . . . . . . . . . . . 3.39 Lagenes Ltd v It’s At (UK) Ltd [1991] FSR 492 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.107 La Mer Technology Inc v Laboratoires Goemar SA, Case C-259/02, [2004] ECR I-1159; [2004] ETMR 47; [2004] FSR 38, and [2005] EWCA Civ 978; [2006] FSR 5, CA . . . . 1.14, 5.09–5.11, 5.13 Lancôme parfums et beauté & Cie SNC v OHIM, Case C-408/08, [2010] ECR I-01347; [2010] ETMR 34 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.40 Last Minute Network Ltd v OHIM, Joined Cases T-114/07 and T-115/07, [2009] ECR II-1919; [2010] ETMR 35 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.80, 3.83 Leec Ltd v Morquip Ltd, 7 February 1996 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.56 Lego Juris A/S v OHIM, Case C-48/09, [2010] ECR I-08403; [2010] ETMR 63, 14 September 2010 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.18, 2.94 Lego System Aktieselskab v Lego M Lemelstrich Ltd [1983] FSR 155 . . . . . . . . . . . . .  8.66, 8.77 Leidseplein Beheer BV v Red Bull GmbH, Case C-65/12, AG, 21 March 2013 . . . . . . . . . . . 7.57

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Table of Cases Leno Merken BV v Hagelkruis Beheer BV, Case C-149/11, [2013] ETMR 16, 19 December 2012 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.12 Leofelis SA v Lonsdale Sports Ltd [2008] EWCA Civ 640; [2008] ETMR 63 . . . . . . . . . . . . 6.17 Les Éditions Albert René Sarl v OHIM, Case T-336/03, [2005] ECR II-4667; affirmed by Case C-16/06, [2008] ECR I-10053; [2009] ETMR 21 . . . . . . . . . . . . . . . . . . . . . . . 3.39 Lever Brothers, Portsunlight Ltd v Sunnywhite Products Ltd (1949) 66 RPC 84 . . . . . . . . .   9.96 Levi Strauss & Co v Tesco Stores Limited [2002] 3 CMLR 11; [2003] RPC 18 . . . . . . . . .   7.113 Lewis v Client Connection Ltd [2011] EWHC 1627 (Ch); [2012] ETMR 6 . . . . . . . . . . . . . 2.38 Libertel Groep BV v Benelux-Merkenbureau, Case C-104/01, [2003] ECR I-3793; [2005] 2 CMLR 45; [2004] Ch 83; [2004] 2 WLR 1081; [2003] ETMR 63 . . . . 2.20, 2.55, 2.105–2.108 Lidl Belgium GmbH & Co KG v Etablissementen Franz Colruyt NV, Case C-356/04, [2008] ECR I-3601; [2007] 1 CMLR 9; [2007] ETMR 28. . . . . . . . . . . . . . 7.61, 7.64, 7.67 Lifestyle Supplies V.o.F. v OHIM, Case R 1462/2012-G, 18 September 2013 . . . 3.27, 3.38, 4.97 Lilly Icos LLC v 8pm Chemists [2009] EWHC 1905, 31 July 2009 . . . . . . . . . . . . . . . . . . . . 9.59 Limoncello see OHIM v Shaker Linde AG’s Trade Mark Application, Joined Cases C-53–55/01 [2003] ECR I-3161; [2005] 2 CMLR 44; [2003] RPC 45; [2003] ETMR 78 . . . . . .   2.33, 2.39, 2.55, 2.81, 2.87 Linkin Park LLC’s Trade Mark Application [2006] ETMR 74 . . . . . . . . . . . . . . . . . . .  2.34, 2.65 Linmark Electronics Ltd’s Application BL O/284/08, 14 October 2008 . . . . . . . . . . . . . . . . . 2.46 Linoleum Manufacturing Co v Nairn (1878) 7 ChD 834 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.37 Liz Earle Beauty Co Ltd v OHIM, Case T-307/09, [2010] ECR II-00266; [2011] ETMR 16 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.27 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV, Case C-342/97, [1999] ECR I-3819; [1999] 2 CMLR 1343; [2000] FSR 77; [1999] ETMR 690 . . . . . . 2.24, 2.51, 3.18, 3.25, 3.31, 3.33, 3.40, 8.59 Logica Plc Trade Mark Application, BL O/068/03, 3 March 2003 . . . . . . . . . . . . . . . . . . . . . 4.11 L’Oréal v Bellure [2007] EWCA Civ 968; [2008] RPC 9; [2008] ETMR and after the CJEU [2010] EWCA Civ 535; [2010] RPC 23 . . . . . . . . . . . . . . .  1.15, 7.90, 8.02, 8.55 L’Oréal v Bellure, Case C-487/07, [2009] ECR I-5185; [2010] RPC 1; [2009] ETMR 55 . . . . . . . . . . . . . . . . . . . . . . 1.25, 1.27, 2.86, 3.51, 3.53, 3.59, 3.64, 3.66, 3.68–3.71, 7.09, 7.43, 7.51, 7.69, 7.82, 7.91 L’Oréal SA v eBay International AG [2009] EWHC 1094 (Ch); [2009] RPC 21; [2009] ETMR 53 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.13, 7.21, 7.24, 7.26, 7.36 L’Oreal SA v eBay International AG, Case C-324/09, [2011] ECR I-06011; [2011] RPC 27; [2011] ETMR 52, 12 July 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.24, 7.27 L’Oreal v Johnson & Johnson [2000] FSR 686 . . . . . . . . . . . . . . . . . . . . . . . . 9.144, 9.145, 9.146 L’Oréal v OHIM, Case C-235/05P, [2006] ECR I-57 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.25 L’Oréal v OHIM ‘Spa’, Case T-21/07, [2009] ECR II-31; [2009] ETMR 49, . . . . . . . .  3.72, 3.75 LRC Products Limited v Sandra Elliott (LUV/LOVE), BL O/255/13, 2 May 2013, AP . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.21, 2.31 LTJ Diffusion v Sadas Vertbaudet SA, Case C-291/00, [2003] ECR I-2799; [2003] ETMR 83; [2003] FSR 34. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.16, 3.18, 3.20 Lunan Group Ltd v Edwin Co Ltd [2007] RPC 18. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.89 Lyngstad v Anabas Products Ltd (‘Abba’) [1977] FSR 62. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.72 Mag Instrument Inc v OHIM, Case C-136/02, [2004] ECR I-9165; [2005] ETMR 46 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.81, 2.84, 2.86 Magic Ball Trade Mark Application [2000] RPC 439 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.24 ‘Magic Tree’ see Julius Sämaan Malaysia Dairy Industries Pte Ltd v Ankenævnet For Patenter Og Varemærker, Case C-320/12, [2013] ETMR 36, 27 June 2013 . . . . . . . . . . . . . . . . . . . . . . .  2.130, 2.148 Management Publications Ltd v Blenheim Exhibitions Group plc [1991] FSR 348 . . .  8.41, 9.70 Marca Mode CV v Adidas AG, Case C-425/98, [2000] ECR I-4861; [2000] 2 CMLR 1061; [2000] ETMR 723 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.25, 3.26, 3.56

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Table of Cases Marcus Publishing plc v Hutton-Wild Communications Ltd [1990] RPC 576 . . . . . . . . . . . . 8.25 Marengo v Daily Sketch (1946) [1992] FSR 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.62 Marks & Spencer plc see Interflora Marleasing SA v La Comercial Internacional de Alimentacion SA, Case C-106/89, [1990] ECR I-4135; [1992] 1 CMLR 30 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.07 Mars Inc v OHIM, Case T-28/08, [2009] ECR II-106 . . . . . . . . . . . . . . . . . . . . . . . . .  2.89, 4.88 Mars Ltd v Cadbury Ltd [1987] RPC 387  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.37 Mars UK Ltd v Société des Produits Nestlé SA (three dimensional trade marks) [2004] EWCA Civ 1008; [2005] RPC 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.31 Martin Y Paz Diffusion SA v David Depuydt, Case C-661/11, [2014] ETMR 6. . . . . . . . . . 7.107 Mary Wilson Enterprises Inc’s Trade Mark Application (‘The Supremes’) [2003] EMLR 13, AP . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.27 Maslyukov v Diageo Distilling Ltd [2010] EWHC 443 (Ch); [2010] RPC 21 . . . . . .  2.145, 8.27 Mastercigars Direct Limited v Hunters & Frankau Limited [2007] EWCA Civ 176; [2007] RPC 24; [2007] ETMR 44 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.113 Matratzen Concord AG v Hukla Germany SA, Case C-421/04, [2006] ECR I-2303; [2006] ETMR 48 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.24, 2.59, 3.25 MCA Records v Charly Records [2002] FSR 26 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.06 McCain International Ltd v Country Fair Foods Ltd [1981] RPC 69 . . . . . . . . . . . . . .  8.36, 8.39 McCulloch v Lewis A May (1947) 65 RPC 58 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.66 McDonald’s Corp v Joburgers Drive-In Restaurant (Pty) Ltd [1997] (1) SA 1. . . . . . . . . . . . 7.125 McDonald’s Hamburgers Ltd v Burgerking (UK) Ltd [1987] FSR 112 . . . . . . . . . . . . . . . . . . 9.82 MedGen Inc v Passion for Life Products Ltd [2001] FSR 30 . . . . . . . . . . . . . . . . . . . . . . . . . . 8.19 Media-Saturn-Holding GmbH v OHIM, Case C-92/10, [2011] ECR I-00002, 13 January 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.73, 2.76 Medion AG v Thomson Multimedia Sales Germany & Austria GmbH, Case C-120/04, [2005] ECR I-8551; [2006] ETMR 13 . . . . . . . . . . . . . . . . . . . . . . . .  3.21, 3.25, 3.36, 3.38 Melly’s Trade Mark Application [2008] ETMR 42 . . . . . . . . . . . . . . . . . . . . . . 2.140, 3.06, 7.125 ‘Merc’ see DaimlerChrysler v Alavi Mercury Communications Ltd v Mercury Interactive (UK) Ltd [1995] FSR 850 . . . . .  1.08, 5.27 Merit Trade Mark Application [1982] FSR 72. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.09 Merz & Krell GmbH & Co v Deutsches Patent- und Markenamt, Case C-517/99, [2001] ECR I-6959; [2002] ETMR 21; [2002] All ER (EC) 441 . . . . . . . . . . . . .  2.48, 2.73 Messe München GmbH v OHIM, Case T-32/00, [2000] ECR II-3829; [2001] ETMR 13 . . . .  4.80 Messiah from Scratch Trade Mark Application [2000] RPC 44 . . . . . . . . . . . . . . . . . . . . . . . . 4.65 Mickey Dees (Nightclub) Trade Mark Application [1998] RPC 359 . . . . . . . . . . . . . . . . . . . 2.139 Microsoft v Commission, Case T-201/04, [2007] ECR II-3601; [2007] 5 CMLR 11 . . . . . . . 6.75 Microsoft Corp v Plato Technology Ltd [1999] FSR 834 ChD; CA, 15 July 1999, unreported. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.77 Miguel Cabrera Sanchez v OHIM, Case C-81/08, [2008] ECR I-00156 . . . . . . . . . . . . . . . . 3.40 Miguel Torres SA v Cantine Mezzacorona SCARL [2003] EWCA Civ 1861; [2004] RPC 26; [2005] ETMR 39 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.125 Miles Handelsgesellschaft International mbH v OHIM, Case T-385/03, [2005] ECR II-2665; [2006] ETMR 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.23 Millington v Fox (1838) 3 My & Cr 338 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.77 Mineralbrunnen Rhön-Sprudel Egon Schindel GmbH v OHIM, (‘Alaska’), Case T-225/08, [2009] ECR II-00111 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.46, 2.50 Minerva Trade Mark Application [2001] ETMR 92; [2000] FSR 734. . . . . . . . . . . . .  2.137, 5.27 Minimax Gmbh & Co KG v Chubb Fire Limited [2008] EWHC 1960, 29 July 2008 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.79, 3.80, 5.08, 8.28 Mirage Studios v Counter-Feat Clothing Co Ltd (‘Ninja Turtles’) [1991] FSR 145. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.73, 8.77, 9.67 Missing Link Software v Magee [1989] FSR 361. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.66 Miss World Ltd v Channel Four Television Corp [2007] EWHC 982 (Pat); [2007] FSR 30; [2007] ETMR 66 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.65, 3.71

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Table of Cases Mobis Trade Mark Application, BL O/020/07 15 January 2007, AP. . . . . . . . . . . . . . . . . . . . 3.29 ‘Moo Juice’ see Almighty Marketing Montex Holdings v Diesel SpA, Case C-281/05, [2006] ECR I-10881; [2006] 1 CMLR 14; [2006] Ch 154; [2007] ETMR 13. . . . . . . . . . . . . . . . . . . . . . . . . . .  7.18, 9.124 Morelli v OHIM, Cases T-321 and 322/11, 14 May 2013 . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.84 Morgan-Grampian plc v Training Personnel Ltd [1992] FSR 267 . . . . . . . . . . . . . . . . . . . . . . 8.41 Morning Star Cooperative Society Ltd v Express Newspapers Ltd [1979] FSR 113 . . . . . . . . . 8.41 Morton-Norwich Products Inc v Intercen Ltd (No 2) [1981] FSR 337 . . . . . . . . . . . . . . . . . . 9.91 Mülhens GmbH & Co KG v OHIM (‘Tosca Blu’) Case T-150/04, [2007] ECR II-2353 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.47 Music Choice Ltd’s Trade Mark Application [2006] RPC 13. . . . . . . . . . . . . . . . . . . . . . . . . . 5.32 Mustafov’s Trade Mark Application, BL O/218/05, 29 July 2005, AP . . . . . . . . . . . . . . . . . . . 3.35 My Kinda Town Ltd v Soll [1983] RPC 15 ChD and 407 CA . . . . . . . . .  8.45, 8.63, 9.98, 9.100 NAD Electronics Inc v NAD Computer Systems Limited [1997] FSR 380. . . . . . . . . .  7.86, 8.89 Nadine Trautwein Rolf Trautwein GbR, Research and Development v OHIM, Case T-385/08, [2010] ECR II-00138. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.42, 2.79 National Guild of Removers & Storers Ltd v Silveria (t/a CS Movers) [2010] EWPCC 15; [2011] FSR 9. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.88 Neutrogena Corp v Golden Ltd [1996] RPC 473 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.11, 8.60 New South Wales Dairy Corp v Murray Goulburn Co-Operative Co [1991] RPC 144 . . . . . 5.38 New Yorker SHK Jeans GmbH & Co KG v OHIM, Case C-621/11, 18 July 2013 . . . . . . .   5.72 Nichols plc v Registrar of Trade Marks, Case C-404/02, [2004] ECR I-8499; [2005] RPC 12; [2005] 1 WLR 1418; [2005] ETMR 21 . . . . . . . . . . . . . . . . . . .  2.36, 2.61 NMSI Trading Ltd’s Trade Mark Application [2012] RPC 7 . . . . . . . . . . . .  2.30, 2.32, 2.35, 2.64 Nokia Corporation v HMRC [2009] ETMR 59 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.124 Nonogram Trade Mark Application [2001] RPC 355 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.139 Nordmilch eG v OHIM (‘Oldenburger’), Case T-295/01, [2003] ECR II-4365; [2004] ETMR 70 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.50 Nordmilch eG, v OHIM, Case T-294/06, [2008] ECR II-59 . . . . . . . . . . . . . . . . . . . . . . . . . 2.73 Norman Kark Publications v Odhams Press Ltd [1962] RPC 163. . . . . . . . . . . . . . . . . . . . . . 8.27 Northern & Shell plc v Condé Nast [1995] RPC 117 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.17 Norwich Pharmacal Co v Commissioners of Customs and Excise [1974] AC 133 . . . . . . . . . 9.48 Nottinghamshire County Council v Woolworths plc [2007] FSR 19 . . . . . . . . . . . .  9.155, 9.156 Now Wireless see Starbucks Numatic International Ltd v Qualtex Ltd [2010] EWHC; [2010] RPC 25. . . . . . . . . . . . . . . 8.42 Nungesser KG and Kurt Eisle v Commission, Case C-258/78, [1982] ECR I-2015; [1983] 1 CMLR 278 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  6.65, 6.69 Nuño v Franquet, Case C-328/06, [2007] ECR I-10093; [2008] ETMR 12 . . . . . . .  3.06, 7.125 O2 Holdings Ltd’s Trade Mark Application [2011] RPC 22 . . . . . . . . . . . . . . . . . 2.32, 2.42–2.44 O2 Holdings Ltd v Hutchison 3G UK Limited, Case C-533/06, [2008] ECR I-4231; [2008] 3 CMLR 14; [2008] RPC 33, CA at [2007] 2 CMLR 15; [2007] RPC 16; [2007] ETMR 19 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.35, 7.03, 7.12, 7.29, 7.68 Och-Ziff Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch); [2011] FSR 11; [2011] ETMR 1 . . . . . . . . . . . . . . . . . . 2.04, 2.139, 2.144, 3.21, 3.61, 7.13, 7.23, 7.29, 7.50, 7.83, 8.03 Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd (1946) 63 RPC 39. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  8.36, 8.39 OHIM v BORCO, Case C-265/09, [2010] ECR I-08265, [2011] ETMR 4 . . . . . . . .  2.32, 2.34 OHIM v Celltech R&D Ltd, Case C-273/05, [2007] ECR I-2883; [2007] ETMR 52 . . . . . 2.44 OHIM v Erpo Möbelwerk (‘Das Prinzip’), Case C-64/02, [2004] ECR I-10031; [2005] ETMR 58 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.20, 2.74 OHIM v Kaul GmbH, Case C-29/05, [2007] ECR I-2213; [2007] ETMR 37 . . . . . .  4.91, 5.72

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Table of Cases OHIM v Shaker di L Laudato & C Sas, Case C-334/05, [2007] ECR I-4529; applied in Shaker di L Laudato & C SAS v OHIM, Case T-7/04, [2008] ECR II-03085; [2009] ETMR 16, 12 Nov 2008 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.25, 3.28, 3.37, 3.38 OHIM v Wm Wrigley Jr Co (‘Doublemint’), Case C-191/01, [2003] ECR I-12447; [2005] 3 CMLR 21; [2004] RPC 18; [2004] ETMR 9 . . . . . . . . . . . .  2.21, 2.40, 2.41, 2.46 Okotoks Ltd see Fine & Country Omega Engineering Inc v Omega SA, [2012] EWHC 3440 (Ch); [2013] FSR 25 . . . .  3.24, 5.29 Open Country Trade Mark Application [2000] RPC 477 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.35 Oracle America Inc (formerly Sun Microsystems Inc) v M-Tech Data Ltd, [2012] UKSC 27; [2012] 1 WLR 2026 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.31, 7.115, 7.119 Organismos Kypriakis Galaktokomikis Viomichanias v OHIM, Case T-534/10, [2012] ETMR 55 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.59 Oriental Kitchen SARL v OHIM (‘Kiap Mou’), Case T-286/02, [2003] ECR II-4953 . . . . . . 2.59 Orifarm AS and Others v Merck & Co Inc, Joined Cases C-400/09 & C-207/10, [2011] ECR I-07063; [2011] ETMR 59 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.117 Oska’s Ltd’s Trade Mark Application [2005] RPC 20 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.40 OTO Trade Mark Application, BL O/157/08, 6 June 2008, AP . . . . . . . . . . . . . . . . . . . . . . . 2.29 Paco Paco/Paco Life in Colour Trade Mark Application [2000] RPC 451 . . . . . . . . . . . . . . . 7.125 PAG Ltd v Hawk-Woods Ltd [2002] FSR 46 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.104 PAGO International GmbH v Tirol Milch registrierte Genossenschaft mbH, Case C-301/07, [2009] ECR I-9429; [2010] ETMR 5 . . . . . . . . . . . . . . . . . . . . . . . . . . 3.54 PAKI Logistics GmbH v OHIM, Case T-526/09, [2011] ECR II-00346, 5 October 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.119 Pammer v Reederei Karl Schluter GmbH & Co KG, Case C-585/08, [2010] ECR I-12527; [2011] 2 All ER (Comm) 888; [2012] All ER (EC) 34. . . . . . . . . . . . . . . 7.26 Pan World Brands Limited v Tripp Limited (‘Extreme’), [2008] RPC 2, AP . . . . . 4.58, 4.62, 5.27 Papiers Peints v Commission, Case C-73/74, [1975] ECR 1491; [1976] 1 CMLR 589 . . . . . 6.67 Parfum Christian Dior v Evora, Case C-337/95, [1997] ECR I-6013; [1998] 1 CMLR 737; [1998] RPC 166 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.106 ars Parfum Creation & Consulting GmbH v OHIM, Case T-104/08, [2009] ECR II-00055, 5 May 2009 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.86 Parfums Givenchy SA v Designer Alternatives Limited [1994] RPC 243. . . . . . . . . . . .  2.08, 8.78 Parker-Knoll Ltd v Knoll International Ltd [1962] RPC 265 . . . . . . . . . . . . . . . . . . . .  8.02, 8.89 Paul Reber GmbH & Co KG v OHIM, Case T-304/06, [2008] ECR II-1927; [2008] ETMR 68 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.42 Pavel Maslyukov’s Trade Mark Application, BL O/312/09, 7 October 2009, AP . . . . .  4.66, 4.68 Peak Holding AB v Axolin-Elinor AB, Case C-16/03, [2004] ECR I-11313; [2005] 1 CMLR 45; [2005] Ch 261; [2005] 2 WLR 650 . . . . . . . . . . . . . . . . . . . . . . . 7.108 Pearce v Ove Arup [1999] FSR 525. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.35 Peaudouce SA v Kimberley-Clark [1996] FSR 680 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.74 Peek & Cloppenburg v OHIM, Case T-379/03, [2005] ECR II-4633; [2006] ETMR 33 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.50, 3.19 Peeters Landbouwmachines BV v OHIM, Case T-33/11, 14 February 2012 . . . . . . .  2.133, 2.140 pelicantravel.com s.r.o v OHIM, Case T-136/11, 13 December 2012 . . . . . . . . . . . . . . . . . . 2.138 Penney’s Trade Mark Application; Re [1978] 2 CMLR 100. . . . . . . . . . . . . . . . . . . . . . . . . . . 6.68 Pepsi Co Inc, v OHIM, Case T-269/02, [2005] ECR II-1341. . . . . . . . . . . . . . . . . . . . . . . . . 5.68 Philips Electronics NV v Remington Consumer Products Ltd [1998] RPC 283; [1998] ETMR 124, ChD; [1999] RPC 809 CA . . . . . .  2.28, 2.93, 2.96, 7.38, 7.125, 7.126 Philips Electronics NV v Remington Consumer Products Limited, Case C-299/99, [2002] ECR I-5475; [2003] Ch 159; [2002] ETMR 81 . . . . . . . . . .   2.20, 2.28, 2.55, 2.81, 2.85, 2.86, 2.88, 2.91, 2.92, 2.94–2.96 ‘Philosophy di Alberta Ferretti’ Trade Mark Application [2003] RPC 15; [2003] ETMR 15 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.13, 5.22, 5.24

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Table of Cases Phones 4u Ltd v Phone4u.co.uk Internet Limited [2006] EWCA Civ 244, [2007] RPC 5 . . . . . . . . . . . . . . . . . . . . . . . . 2.103, 3.19, 3.79, 4.29, 7.49, 7.75, 8.01, 8.03, 8.17, 8.62, 8.65, 8.76, 8.88, 9.25 Picnic at Ascot v Derigs [2001] FSR 8. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.58 Pie Optiek SPEL v Bureau Gevers SA, Case C-376/11, [2012] WLR (D) 219; [2012] ETMR 46 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.12 Pippig Augenoptik GmbH & Co KG v Hartlauer, Case C-44/01, [2003] ECR I-3095, [2004] 1 CMLR 39, [2004] ETMR 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.66 Plentyoffish Media Inc v Plenty More LLP [2011] EWHC 2568; [2012] RPC 5 . . . . .  8.20, 8.21 Plomien Fuel Economiser Co Ltd v National School of Salesmanship Ltd (1943) 60 RPC 209. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.50 Police Trade Mark Application [2004] RPC 35 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  5.07, 5.13 Politechnika Ipari Szovetkezet v Dallas Print Transfers Ltd [1982] FSR 529 . . . . . . . . . . . . . . 8.44 Portakabin Ltd v Primakabin BV, Case C-558/08, [2010] ECR I-6963; [2010] ETMR 52 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.24, 7.45, 7.50, 7.96 ‘Postkantoor’ see Koninklijke KPN Nederland Powerserv Personalservice GmbH v OHIM, Case T-405/05, [2008] ECR II-02883, affirmed by Case C-553/08, [2009] ECR I-11361. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.27 Praktiker Bau- und Heimwerkermarkte AG v Deutsches Patent- und Markenamt, Case C-418/02, [2005] ECR I-5873; [2006] 3 CMLR 29; [2006] Ch 144; [2005] ETMR 88; [2006] 2 WLR 195 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.49 Premier Brands UK Ltd v Typhoon Europe Limited [2000] ETMR 1071; [2000] FSR 767. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.73, 5.05, 5.17, 7.52 Premier Luggage and Bags Ltd v Premier Co (UK) Limited [2003] FSR 5; [2002] ETMR 69 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.34, 2.46, 2.54, 7.84, 8.38, 9.06 Present-Service Ullrich GmbH & Co KG v OHIM, Case T-66/11, [2013] ETMR 29, 31 January 2013 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.16 Primark Stores Ltd v Lollypop Clothing Ltd [2001] FSR 37; [2001] ETMR 30 . . . . . . . . . 7.105 Prince plc v Prince Sports Group Inc [1998] FSR 21. . . . . . . . . . . . . . . . . . . . . . . . . .  9.81, 9.142 Procter & Gamble Co v OHIM, (‘Baby-Dry’), Case C-383/99, [2001] ECR I-6251; [2002] RPC 17; [2002] 2 WLR 485; [2002] Ch 82 . . . . . . . . . . . . . . . . . . . 2.20, 2.21, 2.40 Procter & Gamble Co v OHIM, Case T-122/99, [2000] ECR II-265; [2000] 2 CMLR 303; [2000] ETMR 580 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.93 Procter & Gamble Co v OHIM, (Dishwasher tablets), Joined Cases C-468–472/01, [2004] ECR I-5141; [2004] ETMR 88 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.80, 2.81 Procter & Gamble Co v Reckitt-Benckiser (UK) Ltd [2008] FSR 8 . . . . . . . . . . . . . . . . . . . 2.101 Procter & Gamble Ltd’s Trade Mark Application [1999] RPC 673; [1999] ETMR 375 . . . . 2.101 Pronuptia de Paris GmbH v Pronuptia de Paris Irmgard Schillgalis, Case C-161/84, [1986] ECR 353 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.66 Psytech International Ltd v OHIM, Case T-507/08, [2011] ECR II-00165; [2011] ETMR 46, 7 June 2011. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.137 ‘Pure Digital’ see Imagination Queen Diana Trade Mark Application [1991] RPC 395 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.127 Quiksilver Pty v Charles Robertson (Developments) Ltd [2005] FSR 8 . . . . . . . . . . . . . . . . . 6.21 R (on the Application of Northern Foods plc) v Secretary of State for the Environment, Food and Rural Affairs [2006] FSR 29; [2007] 1 All ER 216 . . . . . . . . . . . . . . . . . . . . 2.124 R v Adam [1998] 2 Cr App R (S) 403. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.163 R v Ansari [2000] 1 Cr App R (S) 94 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.163 R v Ashok Malik [2011] EWCA Crim 1107 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.161 R v Beazley [2013] EWCA Crim 567 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  9.161, 9.163 R v Boal [1992] 1 QB 591 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.164 R v Boulner [2008] EWCA Crim 2375. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.155

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Table of Cases R v Brayford [2011] 1 Cr App R 107 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.163 R v Guest [2013] EWCA Crim 1437 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.163 R v Harrow Crown Court; ex p UNIC Centre SARL [2000] 1 WLR 2112; [2000] FSR 667. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.168 R v Johnstone [2003] 1 WLR 1736; [2003] 3 All ER 884; [2004] ETMR 2; [2003] HRLR 25; [2003] FSR 42; [2003] 2 Cr App 33 . . . . . . .  9.151, 9.153–9.155, 9.160 R v Kelly [1996] 1 Cr App R (S) 61 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.163 R v Kemp (1995) 16 Cr App R (S) 941. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.163 R v Kilcourse [2009] EWCA Crim 445. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.163 R v McCrudden [2005] EWCA Crim 466 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.160 R v Zaman [2003] FSR 13 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.152 Ratiopharm GmbH’s Trade Mark Application [2007] RPC 28 . . . . . . . . . . . . . . . 3.34, 3.35, 3.89 Rawhide Trade Mark Application [1962] RPC 133. . . . . . . . . . . . . . . . . . . . . . . . . . .  2.148, 8.72 React Trade Mark Application [2000] RPC 285 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.40 Reckitt & Colman Products Ltd v Borden Inc (‘Jif ’) [1990] RPC 341 . . . . . . . . . . . .   3.77, 8.04, 8.06, 8.43, 8.58, 8.59, 8.63, 8.65 Reckitt Benckiser (España), SL v OHIM (‘Aladin’), Case T-126/03, [2005] ECR II-2861; [2006] ETMR 50 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.05, 5.27, 5.61 Reckitt Benkiser UK v Home Pairfum Ltd [2004] FSR 37 . . . . . . . . . . . . . . . . . . . . . . . . . . 9.144 Red Bull GmbH v Sun Mark Ltd [2012] EWHC 1929, 17 July 2012 . . . . . . . . . 3.65, 7.55, 7.57 Reddaway v Banham [1896] AC 199 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.04 Redd Solicitors LLP v Red Legal Ltd [2012] EWPCC 54; [2013] ETMR 13 . . . . . . . .  7.83, 7.99 Reed Executive plc v Reed Business Information Limited [2004] EWCA Civ 159, [2004] RPC 40; [2004] ETMR 56 . . . . . .  3.17, 3.20, 3.23, 4.18, 4.69, 7.19, 7.86, 8.60, 9.88, 9.90 Reef Trade Mark Application [2003] RPC 5, CA; [2002] RPC 19, ChD . . . . . . . . . . . . . .  2.136, 3.45, 3.78, 4.57 Revlon Inc v Cripps & Lee Ltd [1980] FSR 85 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.101 Rintisch v Eder, Case C-553/11, [2013] ETMR 5, 25 October 2012 . . . . . . . . . . . . . .  5.18, 5.19 Rivella International AG v OHIM, Case C-445/12, 12 December 2013 . . . . . . . . . . . . . . . 4.112 Robyn Rihanna Fenty and Others v Arcadia Group Brands [2013] EWHC 2310 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.68, 8.71, 9.28 Rousselon Frères et Cie v Horwood Homewares Ltd [2008] EWHC 881 (Ch); [2008] RPC 30 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.37, 3.45, 5.37 Royal Enfield Trade Mark Application [2002] RPC 24 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.45 Royal Shakespeare Trade Mark Application, BL O/009/13 31 Dec 2012, AP . . . . . . . .  5.15, 5.23 RTE and TTP v Commission; Joined Cases C-241/91 and C-242/91, [1995] ECR-743; [1995] 4 CMLR 718; [1995] FSR 530 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.77 Rugby Portland Cement Co v Rugby & Newbold Portland Cement Co (1892) 9 RPC 46 . . . 8.37 Ruiz-Picasso v OHIM—DaimlerChrysler (‘Picasso’/‘Picaro’), Case C-361/04, [2006] ECR I-643; [2006] ETMR 29 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.64, 3.34, 3.39 Rxworks Ltd v Hunter (t/a Connect Computers) [2008] RPC 13 . . . . . . . . . . . . . . . . .  7.29, 7.33 SA CNL-Sucal NV v HAG GF AG (‘HAG II’), Case C-10/89, [1990] ECR I-3711; [1990] 3 CMLR 571 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.58 SA Des Anciens Etablissements Panhard et Levassor v Panhard Levassor Motor Co [1901] 2 Ch 513 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.21 Sabaf SpA v MFI Furniture Centres Ltd [2002] EWCA Civ 976, [2003] RPC 14 . . . . . . . . . 9.06 Sabel BV v Puma AG, Case C-251/95, [1997] ECR I-6191; [1998] RPC 199 . . . 3.25, 3.26, 8.59 Saint-Gobain Pam SA v OHIM, Case T-364/05, [2007] ECR II-757 . . . . . . . . . . . . . . . . . . . 3.43 Samsung Electronics (UK) Ltd v Apple, Inc [2012] EWCA Civ 1339. . . . . . . . . . . . . .  9.02, 9.05 Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery) [2011] EWHC 1879 (Ch); [2012] FSR 7 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.83, 7.84 Sanofi-Aventis SA v OHIM, Case T-146/06, [2008] ECR II-17 . . . . . . . . . . . . . . . . . . . . . . . 3.42 Sanco SA v OHIM, Case T-249/11, 14 May 2013 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.49 Sant Ambroeus Trade Mark Application, BL O/371/09, 5 November 2009, AP . . . . . . . . . . . 5.13

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Table of Cases SAT.1 Satellitenfernsehen GmbH v OHIM, Case C-329/02, [2004] ECR I-8317; [2005] 1 CMLR 57; [2004] ETMR 20 . . . . . . . . . . . . . . . . . . . . . . . .  2.21, 2.31, 2.32, 2.78 Scandecor Developments AB v Scandecor Marketing AB [2001] 2 CMLR 30; [2002] FSR 7; [2001] ETMR 74 . . . . . . . . . .  5.39, 6.03, 6.05, 6.11, 6.14, 6.15, 7.86, 9.147 Schütz (UK) Limited, Schütz GmbH & Co KGaA v Delta Containers Limited, [2011] EWHC 1712 (Ch). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.96 Score Draw Ltd v Alan Finch (‘CBD’) [2007] FSR 20; [2007] ETMR 54. . . . . . . . . . . 2.34, 2.63, 4.45, 5.42 ‘Scrabble’ tile see JW Spear Scranage’s Trade Mark Application [2008] ETMR 43 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.76 Seaconsar Far East Ltd v Bank Markazi Jomhouri Islami Iran [1994] AC 438 . . . . . . . . . . . . . 9.34 Sea Island Cotton Trade Mark Application [1989] RPC 87. . . . . . . . . . . . . . . . . . . . . . . . . . 2.154 Sebago Inc v GB-Unice SA, Case C-173/98, [1999] ECR I-4103; [2000] RPC 63; [1999] ETMR 681 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.111, 7.112 Second Sight Ltd v Novell UK Ltd [1995] RPC 423. . . . . . . . . . . . . . . . .  7.74, 9.82, 9.88, 9.167 Series 5 Software Ltd v Philip Clarke [1996] FSR 273; [1996] 1 All ER 853. . . . . . . . . . . . . . 9.65 Seven for All Mankind LLC v OHIM, Case C-655/11, [2013] ETMR 24, 21 February 2013 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.42 Sheraton Corp of America v Sheraton Motels Ltd [1964] RPC 202 . . . . . . . . . . . . . . . . . . . . 8.18 Shield Mark BV v Kist (t/a Memex), Case C-283/01, [2003] ECR I-14313; [2005] 1 CMLR 41; [2004] Ch 97; [2004] RPC 17; [2004] ETMR 33; [2004] 2 WLR 1117 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.09, 2.10, 2.109, 2.111 Sieckmann v Deutsches Patent-und Markenamt, Case C-273/00, [2002] ECR I-11737; [2003] RPC 38; [2003] ETMR 37; [2003] 3 WLR 424 . . . . . . . . . 2.10, 2.18, 2.106, 2.107, 2.109, 2.112, 2.113 Siemens AG v VIPA Gesellschaft für Visualisierung und Prozessautomatisierung mbH, Case C-59/05, [2006] ECR I-2147; [2006] 2 CMLR 32; [2006] CEC 752; [2006] ETMR 47 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.65 Sigla see Elleni Silberquelle GmbH v Maselli-Strickmode GmbH, Case C-495/07, [2009] ECR I-137; [2009] ETMR 28 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  5.17, 7.35 Silhouette International Schmied GmbH & Co KG v Hartlauer Handelsgesellschaft mbH, Case C-355/96, [1998] ECR I-4799; [1998] 2 CMLR 953; [1999] Ch 77; [1998] 3 WLR 1218; [1998] FSR 729 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.59, 7.111, 7.112 Silicon Graphics Inc v Indigo Graphic System (UK) Ltd [1994] FSR 403. . . . . . . . . . . . . . . . 9.73 Simmons Trade Mark Application, BL O/468/12, 26 Nov 2012, AP . . . .  2.146, 3.77, 4.62, 4.70 Sir Alex Ferguson’s Application, BL O/094/06, 22nd March 2006, AP . . . . . . . . . . . . . . . . . . 2.65 Sirena Srl v Eda Srl, Case 40/70, [1971] ECR 69; [1971] CMLR 260 . . . . . . . . . . . . . . . . . . 6.58 Sir Robert McAlpine Ltd v Alfred McAlpine plc [2004] RPC 36, CA . . . . . . . . . . . . . .  8.82, 8.88 Slazenger & Sons v Feltham & Co (1889) RPC 531 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.85 Smart Technologies ULC v OHIM, Case C-311/11, [2012] ETMR 49, 12 July 2012 . . . . . . 2.75 SmithKline Beecham and Others v GSKline Ltd [2011] EWHC 169 . . . . . . . . . . . . . . . . . . . 8.54 Société des Produits Nestlé SA’s Application (shape of Kit-Kat), BL O/257/13, 20 June 2013; appeal referred to the CJEU [2014] EWHC 16, 17 January 2014 . . . . . . . . . . . . .  2.89, 2.94 Société des Produits Nestlé SA v Cadbury Holdings Ltd (shape of Kit-Kat) (R513/2011–2) [2013] ETMR 25 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.27, 2.89 Société des Produits Nestlé SA v Cadbury UK Ltd (the colour purple) [2012] EWHC 2637 (Ch); [2013] RPC 14; [2013] ETMR 2; reversed on appeal [2013] EWCA Civ 1174; [2014] ETMR 4 . . . . . . . . . . 2.10, 2.11, 2.13, 2.17, 2.105, 2.107 Société des Produits Nestlé SA v Mars UK Limited (‘Have a Break’), Case C-353/03, [2005] ECR I-6135; [2005] 3 CMLR 12; [2006] FSR 2; [2005] ETMR 96 ECJ; [2004] FSR 2 CA . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.22, 2.56 Société des Produits Nestlé SA v OHIM, Joined Cases T-5/08 to T-7/08, [2010] ECR II-1177 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.38

xxxiv

Table of Cases Société des Produits Nestlé SA v OHIM (‘Quicky’), Case C-193/06, [2007] ECR I-114 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.37 Société des Produits Nestlé SA v Unilever plc [2003] RPC 35; [2003] ETMR 53 . . . . . . . . . 2.85 Society of Accountants and Auditors v Goodway [1907] 1 Ch 489 . . . . . . . . . . . . . . . . . . . . . 8.13 Sodastream Ltd v Thorn Cascade Co Ltd [1982] RPC 459 . . . . . . . . . . . . . . . . . . . . . .  8.85, 9.28 Soffass SpA v OHIM, Case T-396/04, [2005] ECR II-4789; [2006] ETMR 44 . . . . . . . . . . . 3.30 Sonia Rykiel v OHIM, Case T-131/06, [2008] ECR II-67 . . . . . . . . . . . . . . . . . . . . . .  5.13, 5.61 Sony KK v Saray Electronics (London) Ltd [1983] FSR 302. . . . . . . . . . . . . . . . . . . . . . . . . . 8.48 South Cone see Reef Spa Monopole, compagnie fermière de Spa SA/NV v OHIM, Case T-438/07, [2009] ECR II-04115; 12 November 2009 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.57 Spalding v Gamage (1915) 32 RPC 273 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.10, 9.86, 9.91 ‘Spambuster’ see Hormel Foods Special Effects Ltd v L’Oréal SA [2007] RPC 15; [2007] ETMR 51 . . . . . . . . . . . 5.49, 5.50, 7.04 Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd [2013] EWHC 3624 (Ch), 20 November 2013 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.117 Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19; [2012] ETMR 17; and Case C-252/12, [2013] ETMR 46, 18 July 2013 . . . . . . . . . . . . . . . . . . . .  2.57, 2.103, 3.19, 3.25, 3.51, 3.53, 3.70, 3.72, 5.19, 7.03, 7.47, 7.50, 7.54, 8.86, 9.76, 9.77 Spectravest Inc v Aperknit Ltd [1988] FSR 161 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.76 Sporting Kicks Ltd’s Application [2007] ETMR 10. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.119 Spring Form Inc v Toy Brokers Ltd [2002] FSR 17 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.81 Stannard v Reay [1967] RPC 589 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.16 Starbucks (HK) Ltd v British Sky Broadcasting Group plc, [2013] EWCA Civ 1465, 15 November 2013, upholding [2012] EWHC 3074 (Ch); [2013] FSR 29 . . . . . 2.42, 7.49, 8.17, 8.20, 8.21, 9.39 Starbucks (HK) Ltd v Now Wireless Ltd [2011] RPC 13, AP . . . . . . . . . . . . . . . . . . . .  5.33, 7.49 Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch); [2013] ETMR 31 . . . 5.11, 7.48, 7.56, 7.87 Stoke-on-Trent Council v W & J Wass Ltd [1988] 1 WLR 1406 . . . . . . . . . . . . . . . . . . . . . . 9.88 Stringfellow v McCain Foods (GB) Ltd [1984] RPC 501 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.67 Sun Microsystems Inc v Amtec Computer Systems Corp Ltd [2006] FSR 35 . . . . . . . .  9.50, 9.77 Sunplus Technology Co Ltd v OHIM, Case C-21/08, [2009] ECR I-48; [2009] ETMR 46 . . . 3.37 Sunrider Corp v Vitasoy International Holdings Limited [2007] RPC 29 . . . . . . . . . . . . . . . . 5.53 Sutherland v V2 Music Ltd [2002] EMLR 28 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  8.16, 8.27 ‘Swiss Miss’ see Hunt Wesson Swizzels Matlow Ltd’s Trade Mark Application [1999] RPC 879; [2000] ETMR 58 . . . . . . . . 4.30 Taittinger v Allbev (‘Elderflower Champagne’) [1993] FSR 641 . . . . . . . . .  8.77, 8.79–8.82, 8.85 Talat Ismail’s Trade Mark Application, BL O/231/07, 23 July 2007, AP . . . . . . . . . . . . . . . . . 3.02 Taverner Rutledge Ltd v Trexalpalm (‘Kojak’) [1977] RPC 275; [1975] FSR 479 . . . . . . . . .   8.72 Taylor Fashions v Liverpool Victoria Trustees Co Ltd [1982] QB 133. . . . . . . . . . . . . . . . . . 7.122 TDK see Aktieselskabet Team Lotus Trade Mark Application [1999] ETMR 669. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.81 Tesco Stores Trade Mark Application, BL O/420/00, 20 Nov 2000. . . . . . . . . . . . . . . . . . . . . 2.73 ‘The Animals’ Trade Mark Application, BL O/369/13, 9 Sept 2013, AP . . . . . . . . . . . . . . . . . 3.77 The Combined Armed Forces Federation Trade Mark Application, BL O/254/10, 15 July 2010 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.127 The European Ltd v The Economist Newspaper Ltd [1998] FSR 283; [1998] ETMR 307 . . . 4.31 The Financial Times Ltd v Evening Standard Co Ltd [1991] FSR 7 . . . . . . . . . . . . . . . . . . . . 9.72 THE LIGHT Trade Mark Application, BL O/472/11, 20 October 2011, AP . . . . . . . . . . . . . 5.11 The Scotch Whisky Association v Glen Kella [1997] ETMR 470 . . . . . . . . . . . . . . . . . . . . . . 8.82 The Sherwin-Williams Company v OHIM, Case T-190/05, [2007] ECR II-1911 . . . . . . . . . 2.46

xxxv

Table of Cases The Smiley Company SPRL v OHIM, Case T-139/08, [2009] ECR II-3535 . . . . . . . . . . . . . 2.79 The Staver Co Inc v Digitext Display Ltd [1985] FSR 512 . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.49 Thomson Holidays Ltd v Norwegian Cruise Lines Limited [2002] EWCA Civ 1828; [2003] RPC 32 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  5.28, 7.49 ‘Thomson Life’ see Medion Tierce Ladbroke v Commission, Case T-504/93, [1997] ECR II-923; [1997] 5 CMLR 309, affirmed by Case C-353/95, [1997] ECR I-7007. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.76 Tilda Riceland Private Ltd v OHIM, Case T-304/09, [2012] ETMR 15, 18 January 2012 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.83 TIME ART Uluslararasi Saat Ticareti ve dis Ticaret AS v OHIM, Case C-171/06, [2007] ECR I-41; [2007] ETMR 38 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.39, 3.40, 3.46 T-Mobile (UK) Ltd v O2 Holdings Limited (‘Business Zone’), BL O/364/07, 13 December 2007, AP . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  5.33, 7.74 Toke UK Ltd’s Trade Mark Application [2007] ETMR 9 . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.119 Torremar Trade Mark Application [2003] RPC 4, AP . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.31 Torresan v OHIM, Case T-234/06, [2009] ECR II-4185 affirmed by Case C-5/10, 16 May 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.45 Toshiba Europe GmbH v Katun Germany GmbH, Case C-112/99, [2001] ECR I-7945; [2002] 3 CMLR 7; [2002] FSR 39; [2002] ETMR 26 . . . . . . . . . . . . . . . . . . . . . . . . . . 7.65 Travelpro Trade Mark Application [1997] RPC 864 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.139 Trebor Bassett Ltd v The Football Association [1997] FSR 211 . . . . . . . . . . . . . . . . . . . . . . . . 7.17 Tresplain Investments Ltd v OHIM, Case C-76/11, [2011] ECR I-00182; [2012] ETMR 22, 29 November 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.83, 3.89 Tushies Trade Mark Application, BL O/281/09, 16 September 2009, AP . . . . . . . . . . . . . . . . 4.59 Twinsectra Ltd v Yardley [2002] 2 AC 164 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.143 Ty Nant Spring Water [2000] RPC 55; [1999] ETMR 981 . . . . . . . . . . . . . . . . . . . .  2.18, 2.107 Ultraframe (UK) Ltd v Fielding [2005] EWHC 1638; [2006] FSR 17 . . . . . . . . . . . . . . . . . . 8.27 Unilever v Proctor & Gamble [2000] FSR 344 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.148 Unilever plc v Griffin [2010] EWHC 899, [2010] FSR 33 . . . . . . . . . . . . .  8.03, 8.30, 8.31, 8.59 Unite the Union v Unite Group plc, BL O/219/13, 17 May 2013, AP . . . . . . . . . . . . . . . . . . 3.64 United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC 513 . . . . . . . . . . .  7.03, 8.40, 8.42, 8.86 Van Doren + Q GmbH v Lifestyle Sports + Sportswear Handelsgesellschaft mbH, Case C-244/00, [2003] ECR I-3051; [2003] 2 CMLR 6; [2003] ETMR 75. . . . . . . .   7.114 Van Zuylen Freres v HAG (‘HAG I’), Case 192/70, [1974] ECR 731; [1974] 2 CMLR 127 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.58 Vedial SA v OHIM, Case C-106/03, [2004] ECR I-9573; [2005] ETMR 23 . . . . . . .  3.23, 3.29 Venootschap Onder Firma Senta Aromatic Merketing’s Trade Mark Application [1999] ETMR 429 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.115 Verbraucherschutzverein eV v Sektkellerei GC Kessler GmbH & Co, Case C-303/97, [1999] ECR I-513 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.125 Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky,’ Case C-442/07, [2008] ECR I-9223; [2009] ETMR 14 . . . . . . . . . . . . . . . . 5.16, 7.29, 8.13 Viaguara S.A. v OHIM, Case T-332/10, 25 January 2012. . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.71 Vibe Technologies Ltd’s Trade Mark Application [2009] ETMR 12, AP . . . . . . . . . . . . . . . . . 2.56 Video Arts Ltd v Paget Industries Ltd [1988] FSR 501 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.49 Viking Gas A/S v Kosan Gas A/S, Case C-46/10, [2011] ECR I-06161; [2011] ETMR 58, 14 July 2011 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.96 Viking-Umwelttechnik GmbH v OHIM, Case T-316/00, [2002] ECR II-3715; [2003] ETMR 17 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.108 Vine Products Ltd v MacKenzie & Co Ltd [1969] RPC 1. . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.29 ‘Visa’ see CA Sheimer VLM Holdings Ltd v Ravensworth Digital Services Ltd, [2013] EWHC 228 (Ch). . . . . . . .   6.38 Vodaphone Group plc v Orange Personal Communications [1997] FSR 383 . . . . . . . . . . . . . 7.60

xxxvi

Table of Cases Wapple.net Trade Mark Application, BL O/108/12, 9 March 2012 . . . . . . . . . . . . . . . . . . . . 4.64 Warner-Lambert/Gillette and Eemland [1993] 5 CMLR 559 . . . . . . . . . . . . . . . . . . . . . . . . . 6.77 Waterford Wedgwood plc v Assembled Investments (Proprietary) Ltd, Case C-398/07, [2009] ECR I-75 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.48, 4.100 Waterford Wedgwood plc v David Nagli Ltd [1998] FSR 92 . . . . . . . . . . . . . . . . 7.18, 9.81, 9.96 ‘Websphere’ see IBM West (t/a Eastenders) v Fuller Smith & Turner plc [2003] FSR 44 . . . . . . . . . . . . . . . .  2.45, 5.28 Whirlpool Corp v Kenwood Limited [2009] RPC 2; [2009] ETMR 5 affirmed by [2010] RPC 2; [2010] ETMR 7 . . . . . . . . . . . . . . . . 2.22, 2.82, 3.34, 3.62, 3.71, 7.49, 7.52 Wild Child Trade Mark Application [1998] RPC 455. . . . . . . . . . . . . . . . . . . . . . 3.77, 4.48, 9.23 William Harvey Medical Research Limited (O/359/13) 5 September 2013. . . . . . . . . . . . . . 9.137 Wilson v Yahoo! Ltd [2008] ETMR 33 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.19 Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehor Walter Huber, Cases C-108/97 & C-109/97, [1999] ECR I-2779; [2000] Ch 523; [2000] 2 WLR 205; [1999] ETMR 585 . . . . . . . . . . . . . . . . . .  2.09, 2.20, 2.22–2.24, 2.39, 2.50, 2.51, 7.38, 7.89 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH, Case C-523/10, [2012] ETMR 31, 19 April 2012 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  7.27, 7.45 WISI Trade Mark Application [2006] RPC 17; [2007] ETMR 5 . . . . . . . . . . . . . 5.06, 5.27, 5.33 Wombles Ltd v Wombles Skips [1975] FSR 488 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  8.66, 8.72 Woodman v French Connection Ltd (FCUK) [2007] RPC 1, AP . . . . . . . . . . . . . . . . . . . . . 2.119 WS Foster & Son Ltd v Brooks Brothers Ltd [2013] EWPCC 18, 21 March 2013. . . . . . . . . 8.62 Wunderkind Trade Mark Application [2002] RPC 45. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.70 WWF World Wide Foundation Fund for Nature v World Wrestling Federation Inc [2002] FSR 33; [2002] ETMR 53 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.120 You-Q BV v OHIM, Case C-294/12, 14 May 2013 . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.57, 3.58 YouView TV Ltd v Total Ltd [2012] EWHC 3158 (Ch); [2013] E.C.C. 17 . . . . . . . . . . . . . . 3.24 X Technology Swiss v OHIM, Case C-429/10, [2011] ECR I-00076, 16 May 2011. . . . . . . 2.103 Xena Systems Ltd v Cantideck [2013] EWPCC 1; [2013] FSR 41 . . . . . . . . . . . . . . . . . . . . . 9.85 Zino Davidoff SA v A & G Imports Ltd, Joined Cases C-414–416/99, [2001] ECR I-8691; [2002] RPC 20; [2002] Ch 109 . . . . . . . . . . . . . . . . . . . . . . . . . .  7.112, 7.113 Zino Davidoff SA v Bundesfinanzdirektion Südost, Case C-302/08, [2009] ECR I-5671; [2009] ETMR 57 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.117

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TABLE OF LEGISL ATION

U N I T E D K I N G D O M PR I M A R Y L E G I S L AT I O N Civil Jurisdiction and Judgments Act 1982 . . . . . . . . . . . . . . . . . . . . .  9.37 Companies Act 2006. . . . . . . . . . . . . . .  9.134 s 69 . . . . . . . . . . . . . . . . . . . . . . . . . .  9.137 s 69(1) . . . . . . . . . . . . . . . . . . . . . . . .  9.136 s 69(1)(a), (b) . . . . . . . . . . . . . . . . . .  9.134 s 69(4) . . . . . . . . . . . . . . . . . . . . . . . .  9.136 Competition Act 1998 . . . . .  6.62, 6.64, 6.71 Chap I. . . . . . . . . . . . . . . . . . . . . . . . .  6.64 Chap II . . . . . . . . . . . . . . . . . . . . 6.64, 6.76 s 10 . . . . . . . . . . . . . . . . . . . . . . . . . . .  6.71 s 52 . . . . . . . . . . . . . . . . . . . . . . . . . . .  6.64 Copyright, Designs and Patents Act 1988 . . . . . . . . . . . . . . . . . . . .  9.107 s 99 . . . . . . . . . . . . . . . . . . . . . . . . . .  9.107 Customs and Excise Management Act 1979 . . . . . . . . . . . . . . . 9.111, 9.116 s 139 . . . . . . . . . . . . . . . . . . . . . . . . .  9.117 Sch 3 . . . . . . . . . . . . . . . . . . . . . . . . .  9.117 Human Rights Act 1998 . . . . . . . . . . . . .  9.62 s 12(3). . . . . . . . . . . . . . . . . . . . . . . . .  9.62 Limitation Act 1980 . . . . . . . . . . . . . . . .  9.92 s 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . .  9.92 Patents Act 1977 . . . . . . . . . . . . . . . . . .  9.139 Powers of Criminal Courts (Sentencing) Act 2000 . . . . . . . . . . . . . . . . . . . .  9.163 Proceeds of Crime Act 2002 . . . . . . . . .  9.163 s 75 . . . . . . . . . . . . . . . . . . . . . . . . . .  9.163 Sch 2, para 7(2) . . . . . . . . . . . . . . . . .  9.163 Registered Design Act 1949 . . . . . . . . . .  2.80 Senior Courts Act 1981. . . . . . . . . . . . . .  9.93 Trade Descriptions Act 1968 . . . . 9.149, 9.165 Trade Marks Registration Act 1875 . . . . .  1.02 Trade Marks Act 1938 . . . 1.07, 2.64, 3.88, 5.48 Trade Marks Act 1994. . . . . . 1.04, 1.05, 1.08, 1.24, 2.16, 2.36, 2.37, 2.64, 2.116, 2.130, 2.134, 3.01, 3.50, 3.87, 3.88, 4.01, 4.22, 4.40, 4.119, 4.120, 4.122, 5.01, 5.48, 6.01, 6.03, 6.13–6.18, 7.122, 8.33, 8.44, 9.04, 9.81, 9.104, 9.112, 9.139, 9.149 s 1 . . . . . . . . . . . . . . . 2.02, 2.10, 2.18, 2.23 s 1(1) . . . . . . .  2.09, 2.20, 2.28, 2.81, 2.101

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s 2(2). . . . . . . . . . . . . . . . . . . . . . 1.08, 7.04 s 3 . . . . . . . . . . . . . .  2.09, 2.23, 2.25, 2.32, 2.60, 2.117, 5.41, 5.42, 7.79 s 3(1). . . . . . . . . . . .  2.02, 2.23, 2.38, 2.49, 2.120, 4.82, 5.42 s 3(1)(a). . . . . . . . . . . . . . . . . . . . 2.28, 2.29 s 3(1)(b) . . . . . 2.20, 2.22, 2.24, 2.29–2.32, 2.36, 2.38, 2.43, 2.69, 2.79, 2.88, 2.90, 2.101 s 3(1)(c). . . . . . . . . .  2.20, 2.22, 2.29, 2.30, 2.39, 2.40, 2.42–2.46, 2.69, 2.77, 2.79, 2.87, 2.88, 2.90, 2.101, 7.79 s 3(1)(d) . . . . . . . . .  2.20, 2.22, 2.25, 2.29, 2.39, 2.45–2.48, 2.69, 2.79, 2.88, 2.101, 4.40 s 3(2). . . . . . . . . . . .  2.02, 2.23, 2.81, 2.88, 2.90, 2.92, 2.99 s 3(2)(a). . . . . . . . . . . . . . . . . . . . . . . .  2.93 s 3(2)(b) . . . . . . . . . . . . . . . . . . . . . . .  2.94 s 3(2)(c). . . . . . . . . . . . . . .  2.96, 2.98, 2.99 s 3(3). . . . . . . . . . . 2.02, 2.45, 2.117, 2.118 s 3(3)(b) . . . . . . . . 2.46, 2.120, 2.122, 6.06 s 3(4). . . . . . . . . . 2.02, 2.117, 2.123–2.125 s 3(5). . . . . . . . . . 2.02, 2.117, 2.123, 2.127 s 3(6). . . . . . . . . . . . . . . 2.02, 2.117, 2.129, 2.145, 4.17, 4.82, 5.55 s 4 . . . . . . . . . . . . . . . . . . . . . . 2.127, 4.122 ss 5–59 . . . . . . . . . . . . . . . . . . . . . . .  4.125 s 5 . . . . . . . . . 3.12, 3.86, 4.20, 4.31, 4.122, 5.41, 5.44, 5.51, 7.08, 7.12 s 5(1). . . . . . . . 3.07, 3.12–3.14, 3.22, 3.50, 4.33, 4.38, 4.42, 4.53–4.55 s 5(2). . . . . . . . 3.07, 3.12, 3.13, 3.16, 3.25, 3.50, 4.33, 4.38, 4.42, 4.53–4.55, 4.57, 7.46 s 5(3). . .  1.24, 3.12, 3.13, 3.26, 3.30, 3.50, 3.53, 3.55, 3.60, 4.33, 4.39, 4.42, 4.57, 5.48, 7.51, 8.83 s 5(4). . . . 3.10, 3.83, 4.33, 4.39, 4.45, 5.67 s 5(4)(a). . . . . . . . . . . 3.76–3.78, 4.57, 5.50 s 5(4)(b) . . . . . . . . . . . . . .  3.10, 3.81, 5.44 s 5(5). . . . . . . . . . . . . . . . . . . . . . 3.09, 3.86 s 6 . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.02 s 6(1)(c). . . . . . . . . . . . . . . . . . . 3.06, 4.125 s 6(3). . . . . . . . . . . . . . . . . . . . . . 3.02, 4.74 s 6A . . . . . . . . . . . . . . . . . . . . . . . 3.05, 4.47

Table of Legislation s 7 . . . . . . . . . . . . . . . . . . . . . . . . . . . .  3.88 s 9 . . . . . . . . . . . . . . . 4.31, 7.07, 7.79, 9.33 s 9(1). . . . . . . . . . . . 6.16, 7.04, 7.10, 7.109 s 9(1)(a). . . . . . . . . . . . . . . . . . . . . . . .  7.12 s 9(3). . . . . . . . . . . . . . . . . . . . . . 4.21, 7.11 s 10 . . . . . . . . . . . . . . 7.07, 7.10, 7.12, 7.38 s 10(1). . . . . . . 3.63, 5.28, 7.07, 7.08, 7.12, 7.28, 7.30, 7.33, 7.44, 7.45 s 10(2). . . . . . . 3.66, 7.07, 7.08, 7.13, 7.28, 7.30, 7.33, 7.45, 7.46, 9.155 s 10(3). . . . . . . 1.24, 3.26, 3.50, 3.55, 3.66, 7.03, 7.07, 7.08, 7.13, 7.28, 7.30, 7.33, 7.51, 7.52, 8.83 s 10(4). . . . . . . . . . . . 7.08, 7.14, 7.15, 7.17 s 10(4)(b) . . . . . . . . . . . . . . . . . . . . . .  7.16 s 10(4)(c). . . . . . . . . . . . . . . . . . . . . . .  7.18 s 10(5). . . . . . . . . . . . . . . . . . . . . . . . .  7.15 s 10(6). . . . .  2.39, 7.59, 7.61, 7.105, 7.113 s 11 . . . . . . . . . . . . .  7.04, 7.08, 7.38, 7.44, 7.73, 7.76, 9.151 s 11(1). . . . . . . . . . . . . . . . . . . . . 7.77, 7.78 s 11(2). . . . . . . . . . . . . . . .  7.79–7.81, 7.94 s 11(2)(a). . . . . . . . . . . . . . . . . . . 7.85–7.87 s 11(2(b) . . . . . . . . . . . . . . . . . . . 7.88, 7.90 s 11(2)(c). . . . . . . . . . . . . . . . . . . . . . .  7.92 s 11(3). . . . . . . . . . . . . . . . . . . . . . . . .  7.98 s 12 . . . . . . . . . . . . .  6.60, 7.08, 7.31, 7.59, 7.73, 7.102, 7.110, 7.113 s 12(1). . . . . . . . . . . . . . . . . . . . . . . .  7.107 s 12(2). . . . . . . . . . . . . . . . . . . . . . . .  7.116 s 13 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.31 s 14(2). . . . . . . . . . . . . . . . . . . . . . . . .  9.02 s 15 . . . . . . . . . . . . . . . .  9.02, 9.104–9.106 s 15(1). . . . . . . . . . . . . . . . . . . . . . . .  9.106 s 15(1)(b) . . . . . . . . . . . . . . . . . . . . .  9.106 s 16 . . . . . . . . . . . . 6.30, 9.02, 9.104, 9.107 s 16(1), (2) . . . . . . . . . . . . . . . . . . . .  9.108 s 17 . . . . . . . . . . . . . . . . . . . . . 9.104, 9.105 s 18 . . . . . . . . . . . . . . . . . . . . . 9.104, 9.108 s 19 . . . . . . . . . . . . . . . .  9.02, 9.104, 9.109 s 19(2). . . . . . . . . . . . . . . . . . . . . . . .  9.109 s 19(4). . . . . . . . . . . . . . . . . . . . . . . .  9.109 s 21 . . . . . . . . . . . . . . . . . . . . . 9.139, 9.146 s 21(1). . . . . . . . . . . . . . . . . . . 9.140, 9.142 s 21(2), (3) . . . . . . . . . . . . . . . . . . . .  9.141 s 24(1). . . . . . . . . . . . . . . . . . . . . . . .  9.146 s 22 . . . . . . . . . . . . . . . . . . . . . . . . . . .  6.01 s 22(4)–(6) . . . . . . . . . . . . . . . . . . . . .  6.05 s 23 . . . . . . . . . . . . . . . . . . . . . . . 4.10, 6.04 s 23(1). . . . . . . . . . . . . . . . . . . . . . . . .  6.04 s 23(3), (4) . . . . . . . . . . . . . . . . . 4.10, 6.04 s 23(5). . . . . . . . . . . . . . . . . . . . . . . . .  4.10 s 24 . . . . . . . . . . . . . . . . . . . . . . . . . . .  6.05 s 24(1), (2) . . . . . . . . . . . . . . . . . . . . .  6.05

xxxix

s 24(3). . . . . . . . . . . . . . . . . . . . . 6.07, 6.09 s 24(6). . . . . . . . . . . . . . . . . . . . . . . . .  6.10 s 25 . . . . . . . . . . . . . . . . . . . . . . . 6.08, 6.19 s 25(3). . . . . . . . . . . . . . . . . . . . . 6.08, 6.19 s 25(3)(b) . . . . . . . . . . . . . . . . . . . . . .  6.19 s 25(4). . . . . . . . . . . . . . . . . . . . . 6.09, 6.19 s 27 . . . . . . . . . . . . . . . . . . . . . . . 4.10, 6.02 ss 28–31 . . . . . . . . . . . . . . . . . . . . . . .  6.11 s 28(1). . . . . . . . . . . . . . . . . . . . . . . . .  6.12 s 28(2). . . . . . . . . . . . . . . . . . . . . 6.11, 6.16 s 28(3), (4) . . . . . . . . . . . . . . . . . . . . .  6.18 s 29(1). . . . . . . . . . . . . . . . . . . . . . . . .  6.26 s 29(2). . . . . . . . . . . . . . . . . . . . . . . . .  6.26 s 30 . . . . 6.19, 6.20, 6.29, 9.04, 9.95, 9.103 s 30(1). . . . . . . . . . . . . . . . . . . . . . . . .  6.20 s 30(2). . . . . . . . . . . . . . . . . . . . . . . . .  6.21 s 30(3). . . . . . . . . . . . . . . . . . . . . 6.21, 6.22 s 30(4). . . . . . . . . . . . . . . .  6.21, 6.24, 6.29 s 30(5). . . . . . . . . . . . . . . . . . . . . 6.21, 6.24 s 30(6). . . . . . . . . . . . . . . . . . . . . 6.25, 6.29 s 30(7). . . . . . . . . . . . . . . . . . . . . . . . .  6.20 s 31 . . . . 6.19, 6.20, 6.27, 9.04, 9.95, 9.103 s 31(1). . . . . . . . . . . . . . . . . . . . . 6.21, 6.27 s 31(3). . . . . . . . . . . . . . . . . . . . . . . . .  6.32 s 31(4)–(6) . . . . . . . . . . . . . . . . . 6.28, 6.31 s 31(7). . . . . . . . . . . . . . . . . . . . . 6.30, 6.31 s 31(8). . . . . . . . . . . . . . . . . . . . . . . . .  6.31 s 32 . . . . . . . . . . . . . . . . . . . . . . . 4.04, 4.24 s 32(2). . . . . . . . . . . . 2.19, 4.04, 4.05, 4.07 s 32(3). . . . . . . . . . . . . . . . . . . . 2.135, 4.09 s 32(2)(c). . . . . . . . . . . . . . . . . . . . . . .  4.17 s 32(2)(d) . . . . . . . . . . . . . . . . . . . . . .  2.18 s 33 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.20 s 34 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.24 s 34(2). . . . . . . . . . . . . . . . . . . . . . . . .  4.19 s 35 . . . . . . . . . . . . . 4.07, 4.22, 4.23, 4.121 s 36 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.23 s 37 . . . . . . . . . . . . . . . . . . . . . . . 2.43, 4.24 s 38(1). . . . . . . . . . . . . . . . . . . . . . . . .  4.37 s 38(2). . . . . . . . . . . . . . . . . . . . . . . . .  4.40 s 38(3). . . . . . . . . . . . . . . . . . . . . . . . .  4.65 s 38B(1) . . . . . . . . . . . . . . . . . . . . . .  4.111 s 39 . . . . . . . . . . . . . . . . . . . . . . . 4.29–4.31 s 39(2). . . . . . . . . . . . . . . . . . . . . . . . .  4.19 s 40(1). . . . . . . . . . . . . . . . . . . . . 4.65, 4.72 s 40(3). . . . . . . . . . . . . . . .  4.21, 4.72, 7.11 s 41(1), (2) . . . . . . . . . . . . . . . . . . . . .  4.11 ss 42, 43 . . . . . . . . . . . . . . . . . . . . . . .  4.73 s 43(5). . . . . . . . . . . . . . . . . . . . . . . . .  4.74 s 44 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.76 s 45 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.19 s 46 . . . . . . . . . . . . .  4.77, 5.01, 5.03, 5.30, 5.36, 5.41, 7.74 s 46(1). . . . . . . . . . . . . . . .  5.04, 5.05, 5.11

Table of Legislation s 46(1)(a). . . . . . . . . . . . . . . . . . . . . . .  5.06 s 46(1)(b) . . . . . . . . . . . . . . . . . . 5.06, 5.31 s 46(1)(c). . . . . . . . . . . . . . 5.34, 5.37, 5.38, 5.40, 5.43, 5.51 s 46(1)(d) . . . . . . . . . 5.38, 5.43, 5.51, 6.04 s 46(2). . . . . . . . . . . . . . . .  4.11, 5.18, 5.20 s 46(3). . . . . . . . . . . . . . . . . . . . . . . . .  5.21 s 46(4). . . . . . . . . . . . . . . . . . . . . 5.46, 7.74 s 46(4)(a). . . . . . . . . . . . . . . . . . . 5.03, 5.30 s 46(5). . . . . . . . . . . . . . . . . . . . . . . . .  5.26 s 46(6). . . . . . . . . . . . . . . . . . . . . . . . .  5.33 s 47 . . . . . . . . . 4.77, 5.01, 5.03, 5.06, 5.41, 5.49–5.51, 5.65, 7.74, 7.100 s 47(1). . . . . . . . . . . . . . . . . . . . . 5.42, 5.43 s 47(2). . . . . . . . . . . . . . . . . . . . . 5.44, 5.67 s 47(2)(a), (b) . . . . . . . . . . . . . . . . . . .  5.44 s 47(3). . . . . . . . . . . . . . . .  5.44, 5.46, 7.74 s 47(3)(a). . . . . . . . . . . . . . . . . . . . . . .  5.03 s 47(4). . . . . . . . . . . . . . . . . . . . . . . . .  5.46 s 47(6). . . . . . . . . . . . . . . .  5.47, 5.70, 7.77 s 48 . . . . . . . . . . . . . . . . . 5.52, 7.73, 7.100, 7.121–7.123, 7.127 s 48(1). . . . . . . . . . . . . . . . . . . . . . . . .  5.53 s 48(2). . . . . . . . . . . . . . . . . . . . . . . . .  5.56 s 49 . . . . . . . . . . . . . . . . . . . . . . . . . .  2.151 s 50 . . . . . . . . . . . . . . . . . . . . . . . . . .  2.152 s 52(2). . . . . . . . . . . . . . . . . . . . . . . . .  4.94 s 54 . . . . . . . . . . . . . . . . . . . . . . . . . .  4.116 s 54(2). . . . . . . . . . . . . . . . . . . . . . . .  4.116 ss 55–60 . . . . . . . . . . . . . . . . . . . . . .  4.119 s 56 . . . . . .  3.06, 4.122, 7.124, 7.125, 8.23 s 56(1). . . . . . . . . . . . . . . . . . . . . . . .  7.125 s 56(2). . . . . . . . . . . . . . . . . . . 7.126, 7.127 s 56(3). . . . . . . . . . . . . . . . . . . . . . . .  7.127 ss 57, 58 . . . . . . . . . . . . . . . . . 2.126, 7.128 s 59 . . . . . . . . . . . . . . . . . . . . . 2.126, 4.122 s 60 . . . . . . . . . . . . . . . . . . . . . . . . . .  4.123 s 60(6). . . . . . . . . . . . . . . . . . . . . . . . .  4.75 s 64 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.77 s 65 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.14 s 65(2). . . . . . . . . . . . . . . . . . . . . . . . .  4.14 s 66 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.02 s 72 . . . . . . . . . . . . . . . . . . . . . . . 7.03, 7.74 s 73 . . . . . . . . . . . . . . . . . . . . . . . . . .  9.110 s 76 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.66 s 76(3), (4) . . . . . . . . . . . . . . . . . . . . .  4.68 s 77 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.68 s 89 . . . . . . . . . . 9.111, 9.113, 9.114, 9.119 s 89(2). . . . . . . . . . . . . . . . . . . . . . . .  9.114 s 89(3). . . . . . . . . . . . . . . . . . . 9.112, 9.119 ss 92–98 . . . . . . . . . . . . . . . . . . . . . .  9.149 s 92 . . . . . . . . .  9.151–9.153, 9.155, 9.160, 9.162, 9.163, 9.165, 9.169 s 92(1). . . . . . . . 9.152, 9.156, 9.159, 9.168

s 92(2). . . . . . . . 9.152, 9.157, 9.159, 9.168 s 92(2)(b) . . . . . . . . . . . . . . . . . . . . .  9.157 s 92(3). . . . . . . . 9.152, 9.158, 9.159, 9.168 s 92(4). . . . . . . . . . . . . . . . . . . . . . . .  9.159 s 92(5). . . . . . . . 9.160, 9.161, 9.164, 9.172 s 92(6). . . . . . . . . . . . . . . . . . . . . . . .  9.162 s 93 . . . . . . . . . . . . . . . . . . . . . 9.165, 9.170 s 94 . . . . . . . . . . . . . . . . . . . . . . . . . .  9.166 s 94(2). . . . . . . . . . . . . . . . . . . . . . . .  9.166 s 95 . . . . . . . . . . . . . . . . . . . . . . . . . .  9.167 s 95(2). . . . . . . . . . . . . . . . . . . . . . . .  9.167 s 97 . . . . . . . . . . . . . . . . . . . . . . 9.02, 9.168 s 97(2). . . . . . . . . . . . . . . . . . . . . . . .  9.169 s 97(4). . . . . . . . . . . . . . . . . . . . . . . .  9.169 s 97(6). . . . . . . . . . . . . . . . . . . . . . . .  9.169 s 97(8). . . . . . . . . . . . . . . . . . . . . . . .  9.169 s 98 . . . . . . . . . . . . . . . . . . . . . . . . . .  9.168 s 99 . . . . . . . . . . . . . . . . . . . . . . 2.127, 9.02 s 100 . . . . . . . . . . . . . . . . . . . . . . . . . .  5.07 s 101 . . . . . . . . . . . . . . . . . . . . . . . . .  9.164 s 101(1). . . . . . . . . . . . . . . . . . . . . . .  9.164 s 103(1). . . . . . . . . . . . . . . . . . . 7.28, 9.164 s 103(2). . . . . . . . . . . . . . . . . . . . . . . .  7.14 Sch 1 . . . . . . . . . . . . . . . . . . . . 2.149, 2.151 para 3 . . . . . . . . . . . . . . . . . . . . 2.46, 2.151 paras 12–14. . . . . . . . . . . . . . . . . . . .  2.151 Sch 2 . . . . . . . . . . . . . . . . . . . . 2.149, 2.152 para 3 . . . . . . . . . . . . . . . . . . . . . . . .  2.152 paras 13–15. . . . . . . . . . . . . . . . . . . .  2.154 Sch 3— para 17 . . . . . . . . . . . . . . . . . . . . . . . .  5.04 para 18 . . . . . . . . . . . . . . . . . . . . . . . .  5.48 U NITED K I NGDOM S E C O N DA R Y L E G I S L AT I O N Business Protection from Misleading Marketing Regulations 2008, (SI 2008/1276) . . . . . . . . . . . . 1.30, 7.62 Civil Procedure Rules 1998, (SI 1998/3132) (as amended) . . . . . 9.03, 9.04, 9.08, 9.18, 9.19, 9.28, 9.33 r 6.08 . . . . . . . . . . . . . . . . . . . . . . . . .  9.33 r 6.36 . . . . . . . . . . . . . . . . . . . . . . . . .  9.34 Pt 7 . . . . . . . . . . . . . . . . . . . . . . . . . . .  9.09 Pt 19 . . . . . . . . . . . . . . . . . . . . . . . . . .  4.10 r 19.3 . . . . . . . . . . . . . . . . . . . . . . . . .  6.24 Pt 25 . . . . . . . . . . . . . . . . .  9.03, 9.48, 9.52 r 25 . . . . . . . . . . . . . . . . . . . . . . . . . . .  9.48 r 25.1(1)(f ) . . . . . . . . . . . . . . . . . . . . .  9.03 r 25.1(1)(h) . . . . . . . . . . . . . . . . . . . . .  9.03 r 31.5 . . . . . . . . . . . . . . . . . . . . . . . . .  9.20 r 32.2(3) . . . . . . . . . . . . . . . . . . . . . . .  9.20 r 35.4(2) . . . . . . . . . . . . . . . . . . . . . . .  9.20

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Table of Legislation Pt 36 . . . . . . . . . . . . . . . . . . . . . . 9.18, 9.94 r 44.8 . . . . . . . . . . . . . . . . . . . . . . . . .  9.58 Pt 52 . . . . . . . . . . . . . . . . . . . . . . 4.67, 4.71 Pt 63 . . . . . . . . . . . . . . . . . . . . . . . . . .  4.67 Pt 63 PD . . . . . . . . . . . . . . . . . . . 4.67, 9.16 para 20.1 . . . . . . . . . . . . . . . . . . . . .  9.11 para 21.2 . . . . . . . . . . . . . . . . . . . . .  9.17 para 21.3 . . . . . . . . . . . . . . . . . . . . .  9.17 para 22 . . . . . . . . . . . . . . . . . . . . . .  9.16 para 25 . . . . . . . . . . . . . . . . . . . . . .  4.68 Community Trade Mark (Amendment) Regulations 2008 (SI 2008/1959) . . .  4.94 Community Trade Mark Regulations 1996 (SI 1996/1908) . . . . . . . . . . . . . . .  9.113 Art 6 . . . . . . . . . . . . . . . . . . . . . . . . .  9.113 Community Trade Mark Regulations 2006 (SI 2006/1027) . . . . . . . . . . . . 4.94, 9.36 reg 12 . . . . . . . . . . . . . . . . . . . . . . . . .  9.36 Goods Infringing Intellectual Property Rights (Customs) Regulations 2004 (SI 2004/1473) . . . . . . . . . . . . . . .  9.111 High Court and County Courts Jurisdiction (Amendment) Order 2005 (SI 2005/587). . . . . . . . . . . . .  9.03 Intellectual Property (Enforcement etc) Regulations 2006 (SI 2006/1028) . . .  6.09, 9.05, 9.85 reg 3 . . . . . . . . . . . . . . . . . . . . . . 9.05, 9.85 Sch 2, para 17 . . . . . . . . . . . . . . . . . . .  6.09 Patents County Court (Financial Limits) Order 2011 (SI 2011/1402) . . . . . .  9.11 Trade Marks (Customs) Regulations 1994 (SI 1994/2625) . . . . . . . . . . . . . . .  9.115 Art 4 . . . . . . . . . . . . . . . . . . . . . . . . .  9.115 Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 (SI 2013/2235) . . . . . . . . . . . . . . . .  4.37 para 2 . . . . . . . . . . . . . . . . . . . . . . . . .  4.38 Trade Marks (Fees) Rules 2008 (SI 2008/1958) . . . . . . . . . . . . . . . .  4.03 Trade Marks (Fees) (Amendment) Rules 2009 (SI 2009/2089) . . . . . . .  4.03 Trade Marks (Fees) (Amendment) Rules 2013 (SI 2013/2236) . . . . . . .  4.03 Trade Marks (International Registration) Order 2008 (SI 2008/2206) . . . . . . 4.22, 4.111, 4.116 Art 3 . . . . . . . . . . . . . . . . . . . . . . . . .  4.116 Sch 1 . . . . . . . . . . . . . . . . . . . . . . . . .  4.112 Sch 2 . . . . . . . . . . . . . . . . . . . . 4.111, 4.116 Sch 4 . . . . . . . . . . . . . . . . . . . . . . . . .  4.116 Sch 6 . . . . . . . . . . . . . . . . . . . . . . . . .  4.116 Trade Marks (International Registrations) (Amendment) Order 2009 (SI 2009/2464) . . . . . . . . . . . . . . .  4.116

Trade Marks (International Registrations Designating the European Community etc) Regulations 2004, (SI 2004/2332) . . . . . . . . . . . . . . . .  9.03 Trade Marks (Proof of Use etc) Regulations 2004 (SI 2004/946) . . . 3.05, 3.50, 5.44 para 5 . . . . . . . . . . . . . . . . . . . . . . .  5.44 Trade Marks (Relative Grounds) Order 2007 (SI 2007/1976) . . . . . . 2.04, 3.07, 4.22, 5.44 para 2 . . . . . . . . . . . . . . . . . . . . . . . . .  4.42 para 5 . . . . . . . . . . . . . . . . . . . . . . . . .  5.44 Trade Marks Rules 2008 (SI 2008/1797) . . .  2.134, 4.01, 4.22, 4.37 r 4(2). . . . . . . . . . . . . . . . . . . . . . . . . .  4.03 r 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.05 r 5(5). . . . . . . . . . . . . . . . . . . . . . . . . .  4.25 r 6 . . . . . . . . . . . . . . . . . . . . . . . . 4.22, 4.23 r 6(2) . . . . . . . . . . . . . . . . . . . . . . . . . .  4.23 rr 6–9 . . . . . . . . . . . . . . . . . . . . . . . . .  4.05 r 7 . . . . . . . . . . . . . . . . . . . . . . . . 4.07, 4.13 r 8 . . . . . . . . . . . . . . . . . . . . . . . . 4.15, 4.19 r 8(2)(b) . . . . . . . . . . . . . . . . . . . . . . .  4.17 r 8(4) . . . . . . . . . . . . . . . . . . . . . . . . . .  4.19 r 9 . . . . . . . . . . . . . . . . . . . . . . . 4.86, 4.107 rr 11–13 . . . . . . . . . . . . . . . . . . . . . . .  4.05 r 13 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.21 r 14 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.40 r 14(1)(a). . . . . . . . . . . . . . . . . . . . . . .  4.33 r 14(1)(b) . . . . . . . . . . . . . . . . . . . . . .  4.35 r 14(2), (3). . . . . . . . . . . . . . . . . . . . . .  4.35 r 16 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.37 r 17 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.43 r 17(2)–(4). . . . . . . . . . . . . . . . . . . . . .  4.44 r 17(5), (6). . . . . . . . . . . . . . . . . . . . . .  4.47 r 17(7) . . . . . . . . . . . . . . . . . . . . . . . . .  4.48 r 18 . . . . . . . . . . . . . . . . . .  4.43, 4.49, 4.50 r 18(3) . . . . . . . . . . . . . . . . . . . . . . . . .  4.50 r 18(4), (5). . . . . . . . . . . . . . . . . . . . . .  4.51 r 19 . . . . . . . . . . . . . . . . . . . . . . . 4.43, 4.53 r 20 . . . . . . . . . . . . . . . . . . . . . . . 4.43, 4.56 r 20(4). . . . . . . . . . . . . . . . . . . . . . . . .  4.59 r 21 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.42 r 25 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.76 r 26 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.35 r 31 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.31 r 33 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.78 rr 34–35 . . . . . . . . . . . . . . . . . . . . . . .  4.73 r 36 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.74 r 37 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.74 r 38 . . . . . . . . . . . . . . . . . . . . . . . 5.31, 5.32 r 38(4) . . . . . . . . . . . . . . . . . . . . . . . . .  5.32 r 38(6)–(8) . . . . . . . . . . . . . . . . . . . . .  5.32 r 39 . . . . . . . . . . . . . . . . . . . . . . . . . . .  5.40

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Table of Legislation r 40 . . . . . . . . . . . . . . . . . . . . . . . . . . .  5.40 rr 41, 42 . . . . . . . . . . . . . . . . . . . . . . .  5.57 rr 44, 45 . . . . . . . . . . . . . . . . . . . . . . .  4.77 rr 54, 55 . . . . . . . . . . . . . . . . . . . . . . .  4.14 r 62 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.66 r 62(1) . . . . . . . . . . . . . . . . . . . . . . . . .  4.27 r 63 . . . . . . . . . . . . . . . . . .  4.32, 4.46, 4.61 r 64 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.57 r 65 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.60 rr 67, 68 . . . . . . . . . . . . . . . . . . . . . . .  4.64 r 69 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.63 r 70(2) . . . . . . . . . . . . . . . . . . . . . . . . .  4.66 rr 71–73 . . . . . . . . . . . . . . . . . . . . . . .  4.71 r 71(4)–(6) . . . . . . . . . . . . . . . . . . . . .  4.66 r 72 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.68 r 77 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.44 r 77(5) . . . . . . . . . . . . . . . . . . . . . . . . .  4.44 E U RO PE A N L E G I S L AT I O N Directives Directive 84/450/EEC . . . . . . . . . . 1.30, 7.62 Directive 89/94/EEC . . . . . . . . . . . . . . .  1.04 Directive 89/104/EEC, (the Harmonisation Directive) . . . . 1.04, 1.05 Directive 97/55/EC. . . . . . . . . . . . . 1.30, 7.62 Directive 2004/48/EC (the Enforcement Directive). . . . . . . . . . . . . . . . . 9.02, 9.05 Art 27 . . . . . . . . . . . . . . . . . . . . . . . . .  9.02 Directive 2005/29/EC. . . . . . . . . . . 1.30, 7.62 Directive 2006/114/EC (the Comparative Advertising Directive) . . . . . .  1.30, 3.69, 3.70, 3.72, 7.20, 7.58–7.63, 7.70, 7.71, 7.91, 7.103 Art 2 . . . . . . . . . . . . . . . . . . . . . . . . . .  7.63 Art 3 . . . . . . . . . . . . . . . . . . . . . .  7.68, 7.69 Art 4 . . . . . . . . . . . . . . . . . . . . . . . . . .  7.64 Directive 2008/95/EC (the Harmonisation Directive, codified version) . . . . . . 1.04, 1.06, 1.07, 1.10, 1.12, 1.14, 1.21, 1.23, 1.28, 2.104, 2.109, 3.01, 4.79, 6.01, 7.07, 7.08, 7.13, 7.78, 7.81, 7.102, 7.108, 7.111 Recital 12 . . . . . . . . . . . . . . . . . . . . .  4.119 Art 2 . . . . . . . . . . . . . . . . . . . . . . 2.10, 2.20 Art 3 . . . . . . . . . . . . . . . . . . . . . . 2.32, 5.41 Art 3(1)(a) . . . . . . . . . . . . . . . . . . . . . .  2.28 Art 3(1)(c) . . . . . . . . . . . . . . . . . . . . . .  2.77 Art 3(1)(e) . . . . . . . . . . . . .  2.81, 2.92, 2.99 Art 3(3) . . . . . . . . . . . . . . . . . . . . . . . .  2.29 Art 4 . . . . . . . . . . . . . . . . . . . . . . . . . .  3.01 Art 4(1)(b). . . . . . . . . . . . . . . . . . . . . .  3.25 Art 4(4)(b). . . . . . . . . . . . . . . . . . . . . .  3.76 Art 4(5) . . . . . . . . . . . . . . . . . . . . . . . .  3.86

Art 5 . . . . . . . . . . . . . . . . .  7.07, 7.38, 7.89 Art 5(1) . . . . . . . . . . . . . . . . . . . . 3.63, 7.40 Art 5(1)(a), (b) . . . . . . . . . . . . . . 3.16, 7.07 Art 5(2) . . . . . . . . . . . . . . . 3.30, 3.50, 3.54, 3.66, 7.07, 7.51 Art 5(3) . . . . . . . . . . . . . . . . . . . . . . . .  7.07 Art 6 . . . . . . . . . . . . . . . . . 2.39, 7.07, 7.38, 7.89, 7.92, 7.93, 7.96 Art 6(1) . . . . . . . . . . . . . . . . . . . . 7.59, 7.79 Art 6(2) . . . . . . . . . . . . . . . . . . . . . . . .  7.98 Art 7 . . . . . .  7.07, 7.31, 7.59, 7.102, 7.107 Art 7(2) . . . . . . . . . . . . . . . . . . . . . . .  7.106 Art 8 . . . . . . . . . . . . . . . . . . . . . . . . . .  6.01 Art 8(1) . . . . . . . . . . . . . . . . . . . . . . . .  6.12 Art 8(2) . . . . . . . . . . . . . .  6.13, 6.15, 7.109 Art 9 . . . . . . . . . . . . . . . . . . . . . . . . . .  5.52 Art 9(1)(a)–(c). . . . . . . . . . . . . . . . . . .  7.72 Art 10 . . . . . . . . . . . . . . . . . . . . . . . . .  5.05 Art 10(2)(a) . . . . . . . . . . . . . . . . . . . . .  5.18 Art 10(3) . . . . . . . . . . . . . . . . . . . 5.11, 6.15 Art 12 . . . . . . . . . . . . . . . . . . . . . . . . .  5.05 Art 13 . . . . . . . . . . . . . . . .  2.37, 5.26, 5.41 Art 22(2) . . . . . . . . . . . . . . . . . . . . . . .  6.13 Draft Directive 2013/0089 to approximate the laws of the Member States relating to Trade Marks (Recast) . . . . . . . . . . . . . 1.10, 1.28, 3.14, 4.35, 4.79, 4.80 Art 3 . . . . . . . . . . . . . . . . . . . . . . 2.10, 2.16 Art 4 . . . . . . . . . . . . . . . . .  2.24, 2.59, 3.10 Art 4(2) . . . . . . . . . . . . . . . . . . . . 2.08, 2.49 Art 5(3) . . . . . . . . . . . . . . . . . . . . . . .  2.148 Art 10(2)(a) . . . . . . . . . . . . . . . . . . . . .  1.28 Art 10(3)(f ) . . . . . . . . . . . . . . . . . . . . .  7.18 Art 14 . . . . . . . . . . . . . . . . . . . . . . . . .  7.86 Art 14(2) . . . . . . . . . . . . . . . . . . . . . . .  7.82 Art 16(4)(a) . . . . . . . . . . . . . . . . . . . . .  5.19 Regulations Regulation 2081/92/EC . . . . . . . . . . . .  7.130 Regulation 40/94/EC (the Community Trade Mark Regulation). . . . . . . . . .  1.04 Regulation 2868/95/EC (the Implementing Regulation). . . . 4.79, 5.58 r 9 . . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.19 r 13 . . . . . . . . . . . . . . . . . . . . . . . . . . .  2.19 rr 15–22 . . . . . . . . . . . . . . . . . . . . . . .  4.91 r 15(3)(b) . . . . . . . . . . . . . . . . . . . . . . .  4.91 r 18 . . . . . . . . . . . . . . . . . . . . . . . . . . .  4.91 r 22 . . . . . . . . . . . . . . . . . . . . . . . . . . .  5.72 r 37 . . . . . . . . . . . . . . . . . . . . . . . . . . .  5.72 rr 37–41 . . . . . . . . . . . . . . . . . . . . . . .  5.58 rr 44–47 . . . . . . . . . . . . . . . . . . . . . . .  5.59 Regulation 44/2001/EC (the Brussels Regulation) . . . . . . . . . . . . . . . 9.33–9.35

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Table of Legislation Art 2 . . . . . . . . . . . . . . . . . . . . . . . . . .  9.33 Art 16 . . . . . . . . . . . . . . . . . . . . . . . . .  9.35 Regulation 6/2002/EC . . . . . . . . . . . . . .  2.80 Regulation 1/2003/EC (the Modernisation Regulation) . . . . . . . 6.62, 6.71, 6.76 Regulation 1383/2003/EC . . . .  9.111, 9.119, 9.123–9.126, 9.129 Art 2(1)(b). . . . . . . . . . . . . . . . . . . . .  9.123 Art 4 . . . . . . . . . . . . . . . . . . . . . . . . .  9.126 Art 8(1) . . . . . . . . . . . . . . . . . . . . . . .  9.125 Art 9 . . . . . . . . . . . . . . . . . . . . . . . . .  9.129 Art 13 . . . . . . . . . . . . . . . . . . . . . . . .  9.127 Regulation 509/2006/EC . . . . . . . . . . .  2.124 Regulation 510/2006/EC . . . . . . . . . . .  2.124 Regulation 110/2008/EC . . . . . . . . . . .  2.124 Regulation 479/2008/EC . . . . . . . . . . .  2.124 Regulation 207/2009/EC (the Community Trade Mark Regulation) . . . . . . 1.04, 1.06, 1.07, 1.10, 1.12, 1.14, 1.21, 1.23, 1.24, 1.28, 2.16, 2.104, 2.109, 2.116, 2.130, 4.79, 5.01, 5.05, 7.08, 7.13, 7.78, 7.102, 9.02, 9.36, 9.38 Art 1(2) . . . . . . . . . . . . . . . . . . . . . . . .  4.80 Art 4 . . . . . . . . . . . . . . . . . . . . . . 2.10, 2.20 Art 6 . . . . . . . . . . . . . . . . . . . . . . . . .  9.143 Art 7 . . . . . . .  2.32, 2.129, 4.82, 5.65, 5.66 Art 7(1)(a) . . . . . . . . . . . . . . . . . . . . . .  2.28 Art 7(1)(e) . . . . . . . . . . . . . . . . . .  2.81, 2.92 Art 7(1)(f) . . . . . . . . . . . . . . . . . . . . .  2.118 Art 7(1)(j), (k) . . . . . . . . . . . . . . . . . . .  4.82 Art 7(2) . . . . . . . . . . . . . . . . . . . . . . . .  4.88 Art 8 . . . . . . . . . . . . .  3.01, 3.11, 3.12, 4.82 Art 8(1)(b). . . . . . . . . . . . . . . . . . . . . .  3.25 Art 8(2) . . . . . . . . . . . . . . . . . . . . 3.04, 5.67 Art 8(3) . . . . . . . . . . . . . . . . . . .  2.129, 5.67 Art 8(4) . . . . . . . . . . .  3.82–3.84, 5.67, 7.99 Art 8(5) . . . . . . . . . . . . . . . . . . . . . . . .  3.50 Art 9 . . . . . . . . . . . . . . . . . . . . . . . . . .  9.02 Art 9(1) . . . . . . . . . . . . . . . . . . . . 3.63, 7.28 Art 9(1)(a) . . . . . . . . . 7.08, 7.32, 7.33, 7.44 Art 9(1)(b). . . . . . . . . . . . . . . . . . 7.08, 7.33 Art 9(1)(c) . . . .  3.54, 7.08, 7.33, 7.51, 7.56 Art 9(2) . . . . . . . . . . . . . . . . . . . . 7.08, 7.14 Art 9(3) . . . . . . . . . . . . . . .  4.93, 4.96, 9.36 Art 10 . . . . . . . . . . . . . . . . . . . . . . . . .  5.63 Art 10(2)(a) . . . . . . . . . . . . . . . . . . . . .  5.19 Art 11 . . . . . . . . . . . . . . . . . . . . . . . .  2.129 Art 12 . . . . . . . .  7.08, 7.73, 7.76, 7.79, 7.81 Art 12(c) . . . . . . . . . . . . . . . . . . . . . . .  7.92 Art 13 . . . . . . . 7.08, 7.31, 7.73, 7.102, 7.107 Art 14 . . . . . . . . . . . . . . . . . . . . . 4.86, 9.36 Art 15 . . . . . . . . . . . . . . . . . . . . .  5.58, 5.60 Art 22 . . . . . . . . . . . . . . . . . . . . . . . . .  6.01

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Art 26(1)(d). . . . . . . . . . . . . . . . . . . . .  2.18 Art 29 . . . . . . . . . . . . . . . . . . . . . . . . .  4.86 Arts 36, 37 . . . . . . . . . . . . . . . . . . . . .  4.88 Art 37(2) . . . . . . . . . . . . . . . . . . . . . . .  4.88 Art 38 . . . . . . . . . . . . . . . .  3.08, 4.88, 4.89 Art 38(2) . . . . . . . . . . . . . . . . . . . . . . .  3.08 Art 38(6), (7) . . . . . . . . . . . . . . . . . . .  3.08 Art 43(2) . . . . . . . . . . . . . . . . . . . . . . .  4.89 Art 44 . . . . . . . . . . . . . . . . . . . . . . . . .  4.89 Arts 46–50 . . . . . . . . . . . . . . . . . . . . .  4.93 Arts 51–57 . . . . . . . . . . . . . . . . . . . . .  5.58 Art 51 . . . . . . . . . . . . . . . .  4.82, 5.01, 5.58, 5.60, 5.72, 7.74 Art 51(1)(a) . . . . . . . . . . . . . . . . . . . . .  5.60 Art 51(1)(b) . . . . . . . . . . .  2.129, 5.63, 5.64 Art 51(1)(c) . . . . . . . . . . . . . . . . . 5.63, 5.64 Art 51(2) . . . . . . . . . . . . . . . . . . .  5.26, 5.61 Art 52 . . . . . . . . . . . .  5.01, 5.65, 5.72, 7.74 Art 52(1)(b) . . . . . . . . . . . . . . . . . . . . .  5.66 Art 52(2) . . . . . . . . . . . . . . . . . . . . . . .  5.65 Art 53 . . . . . . . .  5.01, 5.67–5.69, 5.72, 7.74 Art 53(1) . . . . . . . . . . . . . . . . . . . . . . .  3.82 Art 53(2) . . . . . . . . . . . . . . . . . . . 3.82, 4.95 Art 53(4) . . . . . . . . . . . . . . . . . . . . . . .  5.69 Art 54 . . . . . . . . . . . . 5.52, 5.71, 7.73, 7.121 Art 55 . . . . . . . . . . . . . . . . . . . . . . . . .  5.70 Art 55(3) . . . . . . . . . . . . . . . . . . .  5.47, 5.70 Art 56 . . . . . . . . . . . . . . . . . . . . . . . . .  5.72 Art 56(1) . . . . . . . . . . . . . . . . . . .  5.03, 5.72 Art 56(1)(b). . . . . . . . . . . . . . . . . . . . .  5.69 Art 57 . . . . . . . . . . . . . . . . . . . . . . . . .  5.72 Art 57(1) . . . . . . . . . . . . . . . . . . . . . . .  5.72 Arts 58–65 . . . . . . . . . . . . . . . . . . . . .  4.92 Art 64 . . . . . . . . . . . . . . . . . . . . . . . . .  4.97 Art 65(2) . . . . . . . . . . . . . . . . . . . . . . .  4.98 Art 66(2). . . . . . . . . . . . . . . . . . . . . . .  2.46 Art 76 . . . . . . . . . . . . . . . . . . . . .  4.89, 5.72 Art 76(2) . . . . . . . . . . . . . . . . . . . . . . .  4.91 Art 81 . . . . . . . . . . . . . . . . . . . . . . . .  4.101 Art 95 . . . . . . . . . . . . . . . . . . . . . . . . .  9.36 Art 96 . . . . . . . . . . . . . . . . . . . . . . . . .  5.03 Art 97 . . . . . . . . . . . . . . . . . . . . . . . . .  9.37 Art 97(5) . . . . . . . . . . . . . . . . . . . . . . .  9.37 Art 98 . . . . . . . . . . . . . . . . . . . . . . . . .  9.40 Art 100 . . . . . . . . . . . . . . . . . . . . . . . .  9.38 Art 100(2) . . . . . . . . . . . . . . . . . . . . . .  9.38 Arts 102, 103 . . . . . . . . . . . . . . . . . . .  9.37 Art 104 . . . . . . . . . . . . . . . . 5.02, 7.74, 9.39 Art 107 . . . . . . . . . . . . . . . . . . . . . . . .  3.82 Art 110 . . . . . . . . . . . . . . . . . . . . . . . .  4.95 Art 111 . . . . . . . . . . . . . . . . . . . .  4.95, 7.98 Art 112 . . . . . . . . . . . . . . . . . . . .  4.94, 5.59 Art 112(2)(a) . . . . . . . . . . . . . . . .  4.94, 5.62 Arts 113, 114. . . . . . . . . . . . . . . .  4.94, 5.59

Table of Legislation Art 115 . . . . . . . . . . . . . . . . . . . . . . . .  4.97 Art 234 . . . . . . . . . . . . . . . . . . . . . . . .  1.14 Regulation 330/2010/EC (Block Exemption Regulation) . . . . . . . . . . 6.73, 6.74, 6.76 Regulation 608/2013/EC . . . . . . 9.111, 9.123 Recital 6 . . . . . . . . . . . . . . . . . . . . . .  9.123 Art 2(1) . . . . . . . . . . . . . . . . . . . . . . .  9.112 Draft Regulation 2013/0088 (amending Council Regulation (EC) No 207/2009 on the Community Trade Mark). . . . . . . . . . 1.10, 1.28, 3.14, 4.35, 4.79, 4.80, 4.89 Art 4 . . . . . . . . . . . . . . . . . . . . . .  2.10, 2.16 Art 7 . . . . . . . . . . . . . . . . . . . . . .  2.59, 3.10 Art 7(2) . . . . . . . . . . . . . . . . . . . . 2.08, 2.49 Art 8 . . . . . . . . . . . . . . . . . . . . . . . . .  2.148 Art 9(2)(a) . . . . . . . . . . . . . . . . . . . . . .  1.28 Art 9(5) . . . . . . . . . . . . . . . . . . . . . . . .  7.18 Art 12 . . . . . . . . . . . . . . . . . . . . . . . . .  7.86 Art 12(2) . . . . . . . . . . . . . . . . . . . . . . .  7.82 Art 15(1) . . . . . . . . . . . . . . . . . . . . . . .  5.19 Art 41 . . . . . . . . . . . . . . . . . . . . . . . . .  3.08 Art 267 . . . . . . . . . . . . . . . . . . . . . . . .  1.14 Treaties and Conventions Lisbon Treaty 2009 . . . . . . . .  1.07, 6.52, 9.37 Treaty on the Functioning of the European Union 2008 . . . . . . . . . . .  6.52 Art 34 (formerly Art 28 EC Treaty) . . . . . . . . . .  6.52–6.54, 6.57 Art 35 (formerly Art 29 EC Treaty) . . .  6.54 Art 36 (formerly Art 30 EC Treaty) . . . . . . . . . .  6.52–6.54, 6.57 Art 101 (formerly Art 81 EC Treaty) . . . . . . . . . . . . . .  6.52, 6.55, 6.57, 6.58, 6.62–6.64, 6.76 Art 101(1) . . . . . . . . . . . . . 6.55, 6.58, 6.65, 6.68, 6.70, 6.71 Art 101(2) . . . . . . . . . . . . . . . . . . 6.55, 6.70

Art 101(3) . . . . . . . . . 6.55, 6.62, 6.70, 6.77 Art 102 (formerly Art 82 EC Treaty) . . . . . . . . . .  6.52, 6.56, 6.57, 6.62, 6.64, 6.75, 6.76 Art 267 (formerly Art 234 EC Treaty) . . . . . . . . . . . . . . . . . . .  9.37 I N T E R N AT I O N A L T R E AT I E S A ND CON V ENT IONS Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). . . . . .  4.102, 4.119, 4.124, 4.125 Art 2(1) . . . . . . . . . . . . . . . . . . . . . . .  4.124 Art 16(1) . . . . . . . . . . . . . . . . . . . . . . .  7.41 Art 16(2) . . . . . . . . . . . . . . . . . . . . . . . 7.125 Art 17 . . . . . . . . . . . . . . . . . . . . . . . . .  7.88 Lugano Convention 1988 . . . . . . . . 9.33, 9.35 Madrid Agreement 1892 . . . . . . . . . . . .  4.103 Madrid Protocol . . . . . . . . . . . . . .  1.04, 3.02, 4.102–4.118, 9.143 Art 2 . . . . . . . . . . . . . . . . . . . . . . . . .  4.106 Art 3(4) . . . . . . . . . . . . . . . . . . . . . . .  4.108 Arts 4, 5 . . . . . . . . . . . . . . . . . . . . . .  4.109 Art 6 . . . . . . . . . . . . . . . . . . . . 4.112, 4.113 Art 7 . . . . . . . . . . . . . . . . . . . . . . . . .  4.112 Art 9quinquies. . . . . . . . . . . . . . . . . .  4.114 Paris Convention 1883 . . . . . 1.04, 1.05, 3.06, 4.22, 4.75, 4.102, 4.119–4.123, 7.125 Art 2(1) . . . . . . . . . . . . . . . . . . . . . . .  4.120 Art 6bis . . . . . . . . . . . . . . . . . . . . . . .  7.125 Art 6quinquies. . . . . . . . . . . . . . . . . .  4.121 Art 6septies . . . . . . . . . . . . . . . . 4.75, 4.123 Art 6ter . . . . . . . . . . . . . . . . . . 2.126, 4.122 Art 10bis . . . . . . . . . . . . . . . . . . 4.119, 7.59 Protocol on the Statute of the Court of Justice 2008. . . . . . . . . . . .  4.99 Art 58 . . . . . . . . . . . . . . . . . . . . . . . . .  4.99

xliv

1 THE TR ADE M AR K SYSTEM AND THE FUNCTIONS OF TR ADE M AR KS

A INTRODUCTION TO 1.01 TRADE MARKS B HARMONISATION OF TRADE 1.04 MARK LAW IN EUROPE C FURTHER CHANGES TO COME 1.09

D DEVELOPMENT OF THE 1.12 CASELAW E FUNCTIONS OF TRADE MARKS 1.16 F RELATED RIGHTS AND 1.29 PROTECTIONS

A INTRODUCTION TO TRADE MARKS One aspect of a modern consumer society is the proliferation of competing prod- 1.01 ucts and services of varying degrees of similarity, presented to the purchasing public by numerous means. In the past, products and services would have been purchased over the counter or by a personal transaction, but today purchases may be made in a plethora of ways, many of which involve no personal contact between the vendor or supplier and his customer. In such circumstances, advertising, PR, and image become increasingly important, and as a corollary the power of a trade mark to act as a distinguishing sign, guaranteeing the source and quality of goods or services, is increasingly vital to business. That importance is reflected in the value placed on brands and the goodwill attached to them as assets of the proprietor’s business. Trade marks were for many years protected in the UK both by registration, which 1.02 bestowed a somewhat limited form of monopoly,1 and the common law of passing off, which gave no monopoly, but protected goodwill against damaging misrepresentations. Notwithstanding the harmonisation of trade mark law in the EU, the dual protection for registered and unregistered marks continues today. Both types of protection are explained in this book. Prior to 31 October 1994, UK national registered trade mark law called for a careful 1.03 official examination of trade mark applications, screening out marks which were 1

From the 1875 Act onwards.

1

The Trade Mark System and the Functions of Trade Marks considered to be descriptive or otherwise unsuitable for registration, as well as marks which were deemed to conflict with earlier registered trade marks. The hurdles to attaining registration were justified, theoretically at least, by the strength of the registrations eventually attained. Registration conferred narrow but exclusive rights on the proprietor, so that the mark was protected from infringement by the use as a mark of origin of an identical or confusingly similar mark in relation to goods or services identical to those in the specification. Use of a confusingly similar mark on other goods, however similar, could be protected only by the law of passing off.2

B HARMONISATION OF TRADE MARK LAW IN EUROPE 1.04 The Trade Marks Act 1994 (the 1994 Act) was enacted in large part so as to bring

into force in the UK the provisions of the EU Harmonisation Directive (EEC) 89/104. That Directive, together with Council Regulation (EC) 40/94, creating a Community Trade Mark Register, represented the culmination of many years of discussions and negotiations within the EU.3 In addition, the 1994 Act paved the way to the UK’s ratification of the ‘Madrid Protocol’ on the International Registration of Marks and certain aspects of the Paris Convention.4 1.05 The 1994 Act implemented all of the compulsory parts of the Directive as well as

many of its optional provisions. However, it also contains a number of provisions which are not based squarely upon any one part of the Directive, but include, for instance, concepts from the Paris Convention, or pre-existing UK law. Some of these, as will be seen, have not withstood the test of time.5 1.06 The Community Trade Mark system has in many ways been extremely suc-

cessful; the sheer scale of applications for Community Trade Marks (CTMs) is most telling. The system operates in 28 Member States and there are now well over 1 million CTMs. On the other hand, it is clear that the system is not perfect, for example, in terms of delays and inconsistencies, some of which are discussed further later on. In addition, there remain areas of substantial uncertainty as to the interpretation of the law. Although the system has been in force for nearly 20 years, and many of its central provisions have been considered by

2

Passing off is discussed in Ch 8. Directive (EEC) 89/94 has since been replaced by consolidating Directive (EC) 2008/95 and Regulation (EC) 40/94 by consolidating Regulation (EC) 207/2009. Throughout this book, the consolidated versions are referred to simply as ‘the Directive’ and ‘the CTMR’. However, the Article numbers of the consolidated provisions are not identical throughout with the Article numbers of the originals, and this is something to bear in mind when reading decisions which pre-date the consolidation process. 4 See 4.103 et seq. 5 See eg comments on s 10(6) at 7.59 et seq. 3

2

Harmonisation of Trade Mark Law in Europe both national courts and the Court of Justice of the European Union (CJEU), this does not mean that all is now clear. On the contrary, many seminal points remain hotly contested and the subject of conflicting views. Many important points which were unclear when we wrote the last edition of this book remain so and some points that we thought had been settled have been revisited.6 Th is partly explains current proposals for further change discussed below. Together, the original Directive and the CTMR fundamentally changed trade mark law in the UK, in ways which are still evolving and, some would say, expanding. It is certainly remarkable that many significant cases have come before the Courts in the UK and EU in the four years since we wrote the last edition of this book, and how those cases continue to develop the law. At the risk of horribly oversimplifying the position, the major structural changes 1.07 brought about by harmonisation mean that: • Trade mark protection can be sought either for individual national territories within the EU or for the Community as a whole—a mechanism was put in place for granting CTMs, and the Community trade mark office (OHIM) with its own procedures, including internal Boards of Appeal, was established in Alicante. • National trade mark rights subsist alongside CTMs. All such rights have been substantially harmonised in terms of what can be registered and the effect of registration. • The ‘ex officio’ functions of the United Kingdom Intellectual Property Office (UKIPO) were significantly reduced. • Difficulties in construing the Directive or Regulation may (or, in some cases, must) be referred by national courts to the CJEU for clarification, plus the General Court and the CJEU7 have heard numerous cases relating to CTM registrations. • The range of signs which may be registered as trade marks was expanded beyond that of the 1938 Act. • The range of earlier rights which may be raised in opposition to a trade mark application was also extended—CTMs may be used to oppose UK trade mark applications and vice versa— and non-trade mark rights, like copyright, can be used to challenge a registration too. • The protection given to a registered mark is now far wider than that granted by UK national trade mark law; it includes valuable rights which are more akin to unfair competition law than to (old-fashioned) trade mark law:

6

See eg 1.27. The Court originally called the European Court of Justice (ECJ) was renamed the ‘Court of Justice of the EU’ (CJEU) and the Court of First Instance (CFI) was renamed the ‘General Court’ (GC) by the Treaty of Lisbon. For simplicity, we have referred to the CJEU/GC throughout the book, regardless of the name of the court at the time of the judgment in question. 7

3

The Trade Mark System and the Functions of Trade Marks o Protection extends beyond the goods or services in the specification to similar goods or services where the competing use is likely to cause confusion. o The protection given to a registered mark which has a reputation goes even further—where the competing use damages or takes unfair advantage of the registered mark, it does not matter whether the goods or services for which the competing mark is used are identical, similar, or dissimilar to those in the trade mark specification. 1.08 The 1994 Act does not affect the law of passing off.8 Nevertheless, the signifi-

cant changes made to the scope of infringement actions, described in Chapter 7, mean that infringement has not only been broadened in scope so as to cover a wider range of infringing activities, but, as the price of doing so, requires (in some circumstances) proof of the reputation of the mark, which is often equivalent to proof of goodwill in passing off.9 The common law and statutory systems remain complementary.

C FURTHER CHANGES TO COME 1.09 In 2009, the European Commission’s Directorate General for Internal Market

and Services commissioned a comprehensive study on the overall functioning of the trade mark system in Europe and the potential for improvement and future development. This was undertaken by the Max Planck Institute, whose ‘Study on the Overall Functioning of the European Trade Mark System’ was completed in February 2011.10 On 27 March 2013, the European Commission released its response to the Study.11 1.10 The Commission also produced draft legislation, including a proposed amended

CTMR12 and Directive.13 These are not intended to rewrite the existing system completely, but to modernise it, and to bring national trade mark procedures and practices closer into line with those of the CTM system. It described the main elements of the proposals as being to: • ‘Streamline and harmonise registration procedures, including at Member State level, taking the Community trade mark system as a benchmark;

8

s 2(2) of the 1994 Act and see eg Inter Lotto (UK) Ltd v Camelot Group plc [2004] RPC 9; see also 7.03 et seq. 9 As to the benefits of registered trade marks see Mercury Communications Ltd v Mercury Interactive (UK) Ltd [1995] FSR 850, 863–4; Interlego’s trade mark application [1998] RPC 69, 106. 10 . 11 . 12 < http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:52013PC0161:EN: NOT>. 13 < http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:52013PC0162:EN: NOT>.

4

Development of the Case-Law • Modernise the existing provisions and increase legal certainty by amending outdated provisions, removing ambiguities, clarifying trade mark rights in terms of their scope and limitations and incorporating extensive case law of the Court of Justice; • Improve the means to fight against counterfeit goods in transit through the EU’s territory; and • Facilitate cooperation between the Member States’ offices and the EU trade mark agency—the Office for Harmonisation in the Internal Market (OHIM)—in order to promote convergence of their practices and the development of common tools.’ At the time of writing, the draft texts are not final and no date has been set for their 1.11 adoption or implementation. This edition of the book therefore states the law as it stands, but we have tried to flag up the more important anticipated changes in the text. These include: • changes of name from ‘Community Trade Mark’ to ‘European Trade Mark’ etc • expansion of the signs included in the definition of trade marks • replacement of the requirement for graphic representation of a mark by any sufficiently precise form of representation • protection of trade mark functions other than the function of origin to be limited (see 1.28) • abolition of searches and relative grounds examination by national offices • changes to/clarification of honest practices provisions/defences • significant fee changes for CTMs.

D DEVELOPMENT OF THE CASELAW The system by which national courts can refer cases to the CJEU for guidance has 1.12 led to a very substantial body of case-law construing the Directive, the Regulation, and national laws based on the Directive. In addition, the decisions of the various divisions of OHIM and its internal Boards of Appeal may be appealed to the General Court (previously the CFI) and then to the full CJEU.14 Huge numbers of decisions have been generated by these multiple appeal processes. There are a number of difficulties arising in particular from the system of refer- 1.13 ring questions to the CJEU from national courts. The role of the CJEU is only to give guidance to the referring court as to the applicable principles of EU law. It is common for the CJEU to state a principle, such as how to assess the likelihood of confusion, whilst making it clear that it is for the national court to decide how to apply the principle in the dispute before it. It is not for the CJEU to make findings 14

See 4.97 et seq.

5

The Trade Mark System and the Functions of Trade Marks of fact or purport to decide the case.15 This means that unless the parties are able to agree on the result of their dispute in the light of the CJEU’s guidance, they will have to go back to the national court to argue the impact of the CJEU’s decision on the parties’ dispute. This typically takes several years and is expensive. On appeals from the General Court, the CJEU’s remit is to deal with points of law, not fact, which at times leads the CJEU to uphold somewhat surprising or inconsistent decisions of the General Court. The CJEU has tried to reduce the backlog of trade mark cases by issuing ‘Reasoned Orders’, without hearings. 1.14 The decisions of the CJEU, whether on a reference or an appeal from the General

Court, are binding on national courts. Decisions of the General Court are not binding but can give useful guidance. It should be remembered that appeals from the General Court are only in relation to the interpretation of the Regulation whereas references from national courts can be in relation to either the Directive or the Regulation depending on the issue in dispute before the national court. Decisions of the CJEU are often difficult to interpret. This is partly as a result of its role and partly as result of the way it is set up and decisions are written. This may also lead to further uncertainty, litigation, delay, and expense. The CJEU’s judgments on Article 234 (now Article 267) references are not like the judgments of national courts, which decide cases, but must be read in a wider context: ‘The accumulation of rulings develops a body of jurisprudence [which] . . . differs from the common law method of building up a body of case law from binding judicial precedents. The judgments of the Court of Justice should not be read or applied too literally.’16 1.15 The jurisprudence of the CJEU is also an expanding and evolving one. A particu-

lar example is in the CJEU’s development of the scope of the protection given to marks with a reputation, the lengthy and complicated history of which is discussed at 3.50 et seq. A number of the most significant decisions in this regard were references for guidance from the UK courts.17 In framing the questions to be answered by the CJEU, Jacob LJ when in the Court of Appeal tended to indicate his own view as to the answers which should be given to them, and it is significant that the answers given by the CJEU were often somewhat different. In particular, it would seem that the CJEU is content to construe the harmonised trade mark law so as to

15

See the reaction of Laddie J to what he saw as interference by the CJEU in the decision-making process, in Arsenal Football Club v Reed (No 2) [2003] ETMR 36. 16 per Mummery LJ in La Mer Technology, Inc v Laboratoires Goemar SA [2006] FSR 5 (CA), after the CJEU’s ruling in Case C-259/02, [2004] ECR I-1159, [2004] ETMR 47, [2004] FSR 38. See also Arsenal Football Club v Reed (No 2) [2003] 2 CMLR 25, [2003] RPC 39, [2003] ETMR 73, reversing Laddie J [2003] ETMR 36 applying Arsenal Football Club v Reed , Case C-206/01, [2002] ECR I-10273, [2003] 1 CMLR 345, [2003] Ch 454, [2003] RPC 144. 17 eg Intel Corp, Inc v CPM UK Ltd , Case C-252/07, [2009] RPC 15, [2009] ETMR 13: in the CA at [2007] RPC 35, [2007] ETMR 59; L’Oréal v Bellure, Case C-487/07, [2009] ECR I-5185, [2010] RPC 1: in the CA at [2008] RPC 9, [2008] ETMR 1; Interfl ora, Inc v Marks & Spencer plc, Case C-323/09, [2011] ECR I-08625, [2012] FSR 3, [2012] ETMR 1, a reference from [2009] EWHC 1095 (Ch), [2009] RPC 22 [2009] ETMR 54.

6

Functions of Trade Marks bring it closer into line with unfair competition rules, which approach has caused some concern (and not just in the UK) about the extent to which trade marks amount to monopoly rights and may affect competition: the promotion of innovation and investment . . . requires competition and open access to ideas, words and signs. That promotion is always the product of a balance that has been struck between incentives, in the form of private goods given to those who innovate and invest, and the public character of the goods necessary to support and sustain the innovation and investment. That balance is at the heart of trade mark protection.18

E FUNCTIONS OF TRADE MARKS An important example of the evolution of the CJEU’s jurisprudence lies in its 1.16 evolving view of the scope of the functions of trade marks. A trade mark must satisfy its owner’s commercial needs as well as the legal requirements for registration, matters explored in more detail in Chapter 2. Both aspects of the choice of a mark depend upon the functions which the trade mark must fulfil and which are protected by the law. The functions of trade marks in the modern economy are dictated by the sheer size of the market and the distancing of suppliers from customers. Distinctive marks are indispensable tools for the identification of goods or services. Moreover, in a society increasingly obsessed with style, image, and celebrity, brand names are invaluable marketing tools, and businesses invest significantly in the development, marketing, and protection of their brands and marks. Trade mark proprietors know that their brands can add value to their businesses, and that these intangible assets may represent a high proportion of the value of their business overall. With skilful management and well-judged and often expensive promotion, a brand may build up a body of associations, and come to represent specific, appealing values or qualities to the consumer.19 The brand may not simply lead to recognition of the product, guaranteeing origin and quality, but may carry with it a host of associations, whether aspirational (for high-end fashion brands), reassuring (for more traditional products or, especially, services), or value for money (for credit-crunch times). The issue for courts seeking to construe and apply trade mark laws has been whether 1.17 or not all of those commercial interests in a mark can (or should) be protected by trade mark law. It has long been accepted by trade mark lawyers, authorities, and courts, including the CJEU, 20 that the essential function of a mark is to give the 18

These concerns were expressed by AG Poiares Maduro in Google France v Louis Vuitton Malletier/Viaticum/CNRRH, Joined Cases C-236/08, C-237/08, and C-238/08, [2010] ECR I-2417, [2010] RPC 19, [2010] ETMR 30 at [103]. 19 The theory, sometimes called ‘brand personification’, is attributed to Gardner and Levy, ‘The Product and the Brand’, 33 (1955) Harvard Business Review 33. 20 See eg Case C-206/01, Arsenal (n 16) at [51].

7

The Trade Mark System and the Functions of Trade Marks consumer a guarantee of the identity of the marked product, by enabling the consumer to distinguish that product from others of a different provenance. It is both a badge of origin and a guarantee of consistency, carrying an implied assurance of quality. It is a sign to the customer that the goods emanate from a particular source, but also shows that the proprietor of the mark holds himself out as responsible for those goods and their quality.21 1.18 For a mark to fulfil its ‘origin’ function, it must be distinctive. That restricts the

range of signs which may be registered as marks (see Chapters 2 and 3), and the protection offered to marks (Chapter 7). Moreover, the mark will only be protected by the law whilst it remains distinctive. If the mark is no longer able to fulfil its function, having become deceptive or generic, then an existing registration may be revoked or an application to register the mark will be refused protection.22 1.19 English trade mark law before 1994 reflected this view of the role of trade marks,23 as

did the European jurisprudence which (prior to the harmonisation of EU trade mark law) grew out of the difficulties of reconciling the economic aims of the European Community with national intellectual property rights. Rights designed to provide their owners with exclusivity in individual national territories tended to create precisely the sort of barriers to free trade which the EU Treaty aimed to dismantle. 1.20 The CJEU resolved the dilemma by limiting the protection of trade mark rights

through identifying and protecting only the essential elements of those rights; otherwise, the rules on competition law and free movement of goods and services curtailed the exercise of such rights. It held ‘that the interests of trade mark proprietors were not sufficient to prevent consumers from benefiting from a competitive internal market’.24 A trade mark proprietor would only be able to stop or restrict trade within the Community where this was ‘justified’ for the protection of his intellectual property right.25 In a long series of cases, the CJEU sought to define the ‘specific subject matter’ or essential function of trade marks. It held that it was ‘to give the consumer or final user a guarantee of the identity of the origin of the marked product by enabling him to distinguish, without any possible confusion, that product from others of a different provenance’.26 1.21 The Directive, the CTMR, and national laws based upon the Directive all protect

the origin function of trade marks. The CJEU identified the origin function as that

21 per Laddie J in Glaxo Group and ors v Dowelhurst Ltd (No 2) [2000] 2 CMLR 570; [2000] FSR 529, [2000] ETMR 415 at [18]. 22 See 5.34 et seq, and 5.63 et seq. 23 See eg Aristoc v Rysta [1945] AC 68. 24 According to AG Poiares Maduro in his Google Opinion (n 18) at [112], referring to the ‘seminal’ Consten and Grundig, Joined Cases 56/64 and 58/64, [1966] ECR 299, 345 and to Hag II (n 26). 25 Laddie J in Glaxo Group Ltd v Dowelhurst Ltd n 21. 26 See eg Hag II, Case C-10/89, [1990] ECR I-3711, [1990] 3 CMLR 571, [1991] FSR 99.

8

Functions of Trade Marks protected by the Directive in one of its earliest important decisions after harmonisation, the Canon case. It held that: the essential function of the trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. 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.27

The need to protect the origin function and the concomitant distinctiveness of 1.22 marks has meant that trade mark applications will be refused where there is ‘double identity’, that is to say an earlier identical mark, for identical goods or services. Equally, where there is double identity between a registered mark and a third party sign, the latter will generally be found to infringe the mark, even without any evidence of confusion or likelihood of confusion. However, quite recently the CJEU has decided in Bud28 that if the marks have coexisted in the marketplace without any confusion there can be no impairment of the senior mark’s function of origin; as a result the second or junior mark may be registered. Where there is long-established honest concurrent use, therefore, the mark does not provide a guarantee of origin from one party and not the other, and coexistence does not impair the guarantee of origin of either side’s mark.29 However, the CJEU has on a number of occasions referred to the need to protect 1.23 certain additional functions of trade marks. A number of its decisions now indicate that marks have broader functions which trade mark law is able to protect. These arose in the context of the provisions in the Directive and Regulation which protect a mark with a reputation from damage caused by detrimental references to it, or an unfair advantage taken of it, even where there is no confusion as to origin. Those provisions have been given a wide scope by the CJEU. First, the CJEU held that marks with a reputation are protected against such dam- 1.24 age where the defendant’s sign is used on goods identical or similar to those for which the mark is registered (despite the reference in those provisions to use on goods/services which ‘are not similar’).30 That led to an amendment of ss 5(3) and 10(3) of the 1994 Act, though (oddly perhaps) not of the consolidated Directive and CTMR.31

27

Canon Kabushiki Kaisha v MGM, Case C-39/97, [1998] ECR I-5507, [1999] RPC, [1999] ETMR 1, [28]; see also the Recitals to the Directive. 28 Budějovický Budvar, Národní Podnik v Anheuser-Busch, Inc, Case C-482/09, [2011] ECR I-08701, [2012] RPC 11, [2012] ETMR 2. 29 per Jacob LJ applying the CJEU’s ruling in Bud [2012] EWCA Civ 880, [2012] 3 All ER 1405, [2013] RPC 12, [2012] ETMR 48 at [23]. 30 See 3.50 et seq. 31 Th is is one of the proposed changes in the new Commission drafts.

9

The Trade Mark System and the Functions of Trade Marks 1.25 Then, in L’Oréal v Bellure,32 the CJEU held that trade mark functions include

guaranteeing the quality of goods or services and those of communication, investment, or advertising. Such functions are not limited to trade marks which have a reputation, but apply to all trade marks. The Court accepted that trade marks promote innovation and commercial investment, as they protect the investment that the trade mark proprietor has made and give economic incentives for further innovation and investment.33 In L’Oréal v Bellure, there had undoubtedly been significant investment by the trade mark owner in the trade marks for perfumes which it was seeking to protect against cheap ‘smell-alike’ products. It seems that the CJEU was concerned to protect that investment. 1.26 However, the precise scope of those additional trade mark functions has yet

to be clarified and whilst they may apply in theory to all trade marks for all kinds of goods and services, on the face of it they would seem most likely to apply to well-established marks with a reputation, and possibly also to marks for high-quality goods or services.34 Other decisions of the Court do reflect its concern to protect such marks. For instance, in Copad SA v Christian Dior Couture SA,35 it held that the quality of luxury goods results not only from their material characteristics but also from their ‘allure and prestigious image’ so that damage to the aura of luxury would affect ‘the actual quality of those goods’. 1.27 The possible expansion of the scope of trade mark law represented by the L’Oréal

decision was seen as a significant development. In his Opinion in Google,36 the Advocate General had remarked that ‘the protection afforded to innovation and investment . . . is never absolute. It must always be balanced against other interests, in the same way as trade mark protection itself is balanced against them.’ The balancing of interests was, perhaps, more evident in the CJEU’s subsequent decisions in Google and in Interflora v M&S.37 In Interflora, in particular, the Court reined back on its position in L’Oréal, holding that advertising and investment functions are

32 Case C-487/07, n 17, see especially [58]; for further discussion of the case see 3.66 et seq. See also the AG’s Opinions in Arsenal Football Club v Reed , Case C-206/01, n 16, and Intel Corp, Inc v CPM UK Ltd, Case C-252/07, [2009] RPC 15, [2009] ETMR 13. 33 Analysis of AG Poiares Maduro in his Google Opinion (n 18) at [95] et seq. See also the GC in Sigla SA v OHIM, Case T-215/03, [2007] ECR II-711, [2007] ETMR 79 at [35] ‘a mark also acts as a means of conveying other messages . . . the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as, for example, luxury, lifestyle, exclusivity, adventure, youth . . . the mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages . . . conveyed . . . by a mark with a reputation . . . confer on that mark a significant value which deserves protection . . . because . . . the reputation of a mark is the result of considerable effort and investment on the part of its proprietor.’ This was foreshadowed by OHIM’s 3rd Bd App in Hollywood SAS v Souza Cruz SA [2002] ETMR 64. See 3.50 et seq. 34 See 7.51 et seq. 35 Case C-59/08, [2009] ECR I-3421, [2009] FSR 22, [2009] ETMR 40. 36 See n 18 at [102]. 37 See n 17.

10

Related Rights and Protections not affected merely because a proprietor may need to intensify his advertising and efforts to preserve the mark’s reputation in the face of fair competition.38 Following that guidance, when Interflora came (eventually) to trial before Arnold J, he held that M&S’s behaviour affected the origin function of the mark, but he also said that had it not affected that function he would have found no dilution of the mark.39 It is perhaps significant that one of the changes which it is proposed to implement 1.28 in the proposed new Directive and CTMR is to restrict cases of infringement where there is double identity to cases in which the origin function is affected.40 However, this does of course leave open the difficulty of knowing to what extent the Court will protect any other functions of marks which have a reputation.

F RELATED RIGHTS AND PROTECTIONS There are already a number of alternative forms of protection offered to trade mark 1.29 interests. In the UK, the major additional protection lies in the law of passing off, which is the nearest the UK has to a law of unfair competition. It provides a flexible remedy in many cases where a misrepresentation suggests that a defendant’s goods or services are those of the claimant, or are in some way linked to them. This is discussed in Chapter 8. An important additional related protection is that against misleading compara- 1.30 tive advertising. This again is based upon harmonised Community law, currently Directive (EC) 2006/114, which codified earlier provisions41 and was implemented in the UK by the Business Protection from Misleading Marketing Regulations 2008.42 This is discussed at 7.62 et seq. In addition to those rules, a number of related provisions are discussed: the pro- 1.31 tection of well-known trade marks (at 7.124 et seq), geographical indications (at 7.129 et seq), and the rules against the registration of opportunistic company names (at 9.134 et seq) and domain names at (at 9.131 et seq).

38

At [54]–[66]. [2013] EWHC 1291 (Ch), [2013] ETMR 35, 21 May 2013 at [321]. At the time of writing the decision is under appeal. 40 See Art 9 (2)(a) proposed CTMR, and Art 10(2)(a) proposed Directive. 41 The main Directives were (EEC) 84/450 on misleading advertising, Directive (EC) 97/55 which amended (EEC) 84/450 to include comparative advertising, then Directive (EC) 2005/29 on unfair business-to-consumer commercial practices. 42 SI 2008/1276, in force 26 May 2008. 39

11

2 R EGISTR ABLE M AR KS

A THE CHOICE OF A NEW TRADE MARK B ESSENTIAL CHARACTERISTICS OF A REGISTRABLE MARK C ‘CAPABLE OF BEING REPRESENTED GRAPHICALLY’ D ‘CAPABLE OF DISTINGUISHING GOODS OR SERVICES’

E SECTION 31 2.23 2.58 F CATEGORIES OF MARKS G OTHER ABSOLUTE GROUNDS 2.117 FOR REFUSAL 2.129 H BAD FAITH I COLLECTIVE AND 2.149 CERTIFICATION MARKS

2.03 2.09 2.16 2.20

This chapter and Chapter 3 deal with the issues relevant to the choice of a new 2.01 mark. First, the commercial imperatives are sketched out, though from the authors’ viewpoint as lawyers rather than marketing men. Then the legal aspects of choosing a mark are examined. These fall into two categories: ‘absolute’ suitability of the mark for registration (dealt with in this chapter) and ‘relative’ issues of the mark’s compatibility with earlier third party rights (dealt with in Chapter 3). These factors are relevant both at the application stage and on a challenge to the validity of the mark (dealt with in Chapter 5). This chapter takes the following form: the main criteria for registrability contained 2.02 in ss 1 and 3(1) and (2) of the Trade Marks Act 1994 (the 1994 Act) are considered in general terms. The impact of those provisions on different sorts of marks is then discussed. Then the prohibitions in s 3(3)–(6) are considered. Lastly, we deal with certification and collective marks.

A THE CHOICE OF A NEW TRADE MARK The choice of a new mark to suit a product or service requires considerable care 2.03 and should entail both commercial and legal research. What makes a commercially viable and desirable mark depends upon the functions which the mark must fulfil of which the most important is to identify the origin of the particular goods or services in relation to which it is to be used in the relevant marketplace. If the 13

Registrable Marks intention is to seek to protect the new mark by registration of a UK or Community trade mark, the mark must be suitable for registration in the light of the legal tests discussed in this chapter and in Chapter 3. 2.04 First, a mark must have the necessary ‘absolute’ qualities for registration. Secondly,

as discussed in Chapter 3, the new mark must be compatible with earlier registered trade marks used for the same or other goods and services, and a number of other earlier rights. Until 2007,1 the United Kingdom Intellectual Property Office (UKIPO) had power to reject marks which it considered to conflict with earlier rights but, under the current rules, the compatibility of a new mark with existing rights will bar registration only where an objection is successfully raised by the owner of the earlier right. Alternatively, an objection may be raised to invalidate a mark after registration. In either case, it is obviously sensible to research the position before choosing a mark, to identify and avoid potential conflicts or seek to resolve them before committing to the new mark.2 2.05 The scope of the research depends upon the market for the relevant goods or ser-

vices. If a mark is to be used in relation to services likely only to be offered in the UK, fewer searches will be needed than for a mark for goods intended to be exported to other EU countries or further afield. As a minimum, searches should be made of relevant national trade mark registers and at OHIM for the same or similar marks and for the goods or services for which the mark is to be registered, as well as similar goods and services.3 A search should also be made of company names and domain names. Unregistered rights of various kinds are also relevant,4 and these may be searched for in national or trade publications and increasingly on the internet. For a device mark or shape it will also be wise to search the national and Community design registers. Marks to be used for foods or beverages may need to be searched against protected geographical indications or protected designations of origin. 2.06 From a commercial point of view, it is important that a new mark should be mem-

orable, verbally, visually, or conceptually, to aid consumers in recalling it when making a repeat purchase, or an initial purchase stimulated by advertising or recommendation. Thought should be given to how a compound or device mark may be described orally, how a word may be pronounced at home and in export markets, and how a complicated mark might be abbreviated. There are good commercial reasons to ensure that a mark is easily distinguishable from marks already in 1

See the Trade Marks (Relative Grounds) Order 2007, SI 2007 No 1976. Carrying out a suitable search may also go to the honesty of use of the junior mark. See Och-Ziff Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch), [2011] FSR 11, [2011] ETMR 1 at [143]; see 7.81 et seq. 3 OHIM’s online search tool ‘TMview’ gives free access to the trade mark databases held by OHIM, the World Intellectual Property Organization (WIPO), most national Intellectual Property Offices (IPOs) of the EU, and some non-EU state IPOs. 4 See 3.76 et seq. 2

14

Essential Characteristics of a Registrable Mark use on competing or comparable products. Sometimes there may be a commercial interest in adopting a mark with ‘resonance’ to existing marks for competing products, but care must be taken to avoid conflicts which could threaten the validity of any registration or expose the user to an action for infringement or passing off. Ideally, the mark should suit the marked product’s image and properties. Descriptive 2.07 marks may reflect the nature, content, or qualities of goods or services, which is attractive because they do their own advertising. However, marks which carry a strong message of this kind may be too descriptive to be capable of registration or protection as a trade mark (see 2.40–2.43). Words or devices which are commonly used in a particular trade may appeal to the proprietor but may be unregistrable5 and hard to protect from the use of similar signs by competitors (see Chapter 8). If the mark is to allude to the nature or other qualities of the goods or services, this must be done subtly; clever allusions reinforce the memorability of a mark. Innumerable marks consist of an everyday word which, without being actually descriptive of the product, evokes strong subjective images of the qualities of the product. Think of ‘Flash’ for the speed of a household cleaner, even ‘Opium’ for the intoxicating effects of a perfume. A word mark must also be easily pronounceable, especially if a foreign word is 2.08 chosen.6 If goods are to be exported, or where it is hoped to use a mark in several countries, care should be taken to choose a mark suitable in all the languages concerned.7

B ESSENTIAL CHARACTERISTICS OF A REGISTRABLE MARK There are three conditions to be satisfied before a mark can be registered. First, the 2.09 subject matter of the application must be ‘a sign’. Secondly, the sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. For s 1(1), it is only necessary to show that the sign is ‘not incapable’ of distinguishing the goods or services of one undertaking from those of other undertakings, 8 but s 3 imposes an additional requirement that a sign has a distinctive character, whether

5

See 2.47 et seq. eg Parfums Givenchy SA v Designer Alternatives Ltd [1994] RPC 243. See 2.59 for the problems of registering descriptive foreign words. 7 The adoption of separate trade marks in each territory may breach EU competition rules if designed to partition markets. See eg Centrafarm BV v American Home Products Corp, Case 3/78, [1978] ECR 1823, [1979] 1 CMLR 326. Art 4(2) Draft Directive/Art 7(2) draft CTMR may make all EU languages relevant. 8 Shield Mark BV v Kist (t/a Memex), Case C-283/01, [2003] ECR I-14313, [2004] RPC 17 at [36]; and see Re Dualit Ltd ’s (Toaster Shapes) applications [1999] RPC 890, at [27]. 6

15

Registrable Marks it is intrinsically distinctive or has acquired distinctiveness through use.9 Those ‘absolute’ tests of registrability are, in fact, to be assessed in the context in which the application is made.10 2.10 A sign is something which conveys a message,11 and the message is that the goods

or services to which the sign relates have a particular source. Section 1 of the 1994 Act provides a wide definition of the signs which may be registered as trade marks. Article 2 of Directive (EC) 2008/95 (the Directive) and Article 4 of Regulation (EC) 207/2009 (CTMR), are in substantially similar but not identical terms.12 The list of examples is not exhaustive, so any type of sign which meets the first two criteria for objective registrability may be registered as a trade mark. Signs which are not capable of being perceived visually, such as smells or sounds, are not expressly excluded, as long as they are capable of graphical representation.13 2.11 It is essential that the proposed trade mark is precisely identified, to prevent abuse

of the trade mark registration system and possible unfair competition.14 Before a mark can be registered it must have these characteristics: clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment, and objectivity. It will not be satisfactorily identified if ‘the sign’ could take on a variety of different appearances.15 2.12 For example, an application for a colour mark was refused in Heidelberger Bauchemie,16

where the reproduction of the mark was just a sheet of paper, the upper part of which was blue and the lower part yellow, together with a description of the mark as: ‘The trade mark applied for consists of the applicant’s corporate colours which are used in every conceivable form, in particular on packaging and labels.’ Although the shades of colour used were identified, the Court of Justice of the European Union (CJEU) held that the description was just too vague: the sign could not be identified with certainty and that led to a risk of unfair competition. Similar reasoning led to the refusal of Dyson’s application to register trade marks consisting of ‘a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner

9 See Windsurfing Chiemsee Produktions-und Vertriebs GmbH v Boots-und Segelzubehor Walter Huber, Joined Cases C-108/97 and 109/97, [1999] ECR I-2779, [2000] Ch 523, [1999] ETMR 585 at [44]. 10 See eg J W Spear & Sons Ltd v Zynga, Inc [2012] EWHC 3345 (Ch), [2013] FSR 28 at [34]. 11 See Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174, [2014] ETMR 4 (‘the colour purple’), at [15]. 12 See the wider wording in Art 3 Draft Directive/Art 4 Draft CTMR. 13 Shield (n 8) (sound marks); Sieckmann v Deutsches Patent-und Markenamt , Case C-273/00, [2002] ECR I-11737, [2003] RPC 38 (an ‘olfactory’ or smell mark). See further 2.109 et seq. 14 The specification of the goods/services must also be clear. See IP Translator, Case C-307/10, [2013] RPC 11, [2012] ETMR 42, especially at [54]: some but not all Nice class headings are sufficiently clear. Also see application of the CJEU decision in [2013] RPC 20 (AP) and 4.16 et seq. 15 Société des Produits Nestlé SA v Cadbury UK Ltd (n 11) at [15]. 16 Heidelberger Bauchemie GmbH ’s trade mark application , Case C-49/02, [2004] ECR I-6129, [2004] ETMR 99.

16

Essential Characteristics of a Registrable Mark as shown in the representation’. This covered ‘all the conceivable shapes of such a collecting bin’ and was unacceptable because it identified ‘a mere property of the product concerned’, not a sign which was to be registered as the mark. It would have given Dyson an unfair competitive advantage—a monopoly over vacuum cleaners with any kind of transparent collecting bin, irrespective of shape.17 In October 2013, the Court of Appeal decided two appeals which were heard 2.13 together because they both turned on whether the subject of the registration was a sign. The first case related to an application for a sign for Cadbury’s milk chocolate products. It was identified by a rectangular purple block and described as ‘The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.’18 Cadbury filed evidence of distinctiveness through substantial and lengthy use of the mark. Nestlé opposed the registration, arguing that it did not consist of a sign, nor was it capable of being represented graphically. The UKIPO dismissed the opposition, as did the judge on the first appeal. But on a second appeal to the Court of Appeal, it held that if the use of the colour purple on the packaging was only ‘predominant’ then the application would cover other matter in combination with the colour, which was not graphically represented or verbally described in the requisite ‘specific, certain, self-contained and precise manner’. Sir John Mummery considered that the application was not for a single sign conveying a message, but multiple signs with different permutations, presentations, and appearances which were neither graphically represented nor described with any certainty or precision. Sir Timothy Lloyd described the ‘sign’ as ‘too subjective, too imprecise and inadequately clear and intelligible’. As the appearance and number of those signs would be unknown to the Registrar or the public, the application offended against ‘the principle of certainty’.19 The second case heard by the Court of Appeal, J W Spear v Zynga,20 related to a trade 2.14 mark which consisted of a representation of a Scrabble tile, accompanied by the wording: ‘The mark consists of a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10.’ The validity of the mark was challenged by way of a counterclaim in infringement proceedings. On a summary judgment application brought by the defendant, Arnold J21 had revoked the mark on the basis that it was not a sign, nor graphically represented,

17 Dyson Ltd v Registrar of Trade Marks, C-321/03, [2007] ECR I-687, [2007] 2 CMLR 14, [2007] RPC 27, [2007] ETMR 34. See similar comments in Sieckmann (n 13). 18 See Société des Produits Nestlé SA v Cadbury UK Ltd (n 11) on appeal from [2012] EWHC 2637 (Ch), [2013] RPC 14. See 2.103 et seq. 19 Société des Produits Nestlé SA v Cadbury UK Ltd (n 11) at [51]–[52]. 20 J W Spear & Sons Ltd v Zynga, Inc [2013] EWCA Civ 1175, [2014] ETMR 5; for the result of the trial of infringement of Spear’s other Scrabble marks, see [2013] EWHC 3348 (Ch), 1 November 2013. 21 n 10 at [47].

17

Registrable Marks as the description did not specify the size or colour of the tile precisely, and covered ‘a multitude of different appearances of tile’ of different sizes, and with many possible combinations of letter and number.22 On appeal, the proprietors argued that the judge had been wrong to determine the issue of whether the mark was a sign summarily, as this failed to take account of its acquired distinctiveness. The Court of Appeal disagreed and approved Arnold J’s judgment without reservation. 2.15 The Scrabble case shows that if the application does not describe a properly identifi-

able sign, it cannot be saved by showing that the ‘sign’ has nevertheless acquired distinctive character in use. In Dyson, the CJEU similarly had held that it was not necessary to consider whether the ‘bin’ mark had acquired distinctiveness, because it was not a sign at all.23

C ‘CAPABLE OF BEING REPRESENTED GRAPHICALLY’ 2.16 It is both a practical and administrative requirement that a sign is represented

graphically. The registration system depends both upon the capacity of the UKIPO and OHIM to examine trade mark applications for compliance with the 1994 Act/ CTMR and their respective Rules, and upon the transparency of the Register. For both purposes, applicants must be able to identify precisely the sign which is the subject of the application or registration. This enables the UKIPO/OHIM to categorise and examine applications, and the Register to be searched by visual examination either on paper or on screen. However, it also prevents the abuse of trade mark law by registration of something which is not truly a ‘sign’ at all.24 Article 3 of the Draft Directive/Article 4 of the Draft CTMR currently propose changing the requirement for graphical representation to a requirement to represent the sign ‘in a manner which enables the competent authorities and the public to determine the precise subject matter of the protection afforded to its proprietor’. 2.17 This requirement is of relatively little consequence for the vast majority of marks,

which are designed to be used in graphic form, but has caused more difficulty for less conventional marks.25 The reality is that the vast majority of registered marks are, and will doubtless continue to be, two-dimensional or other visual marks. The opportunity to register tastes, and smells etc, however fascinating legally and technically, seems likely to remain of minority interest only, even if the law is changed 22

The Defendant’s mock ups of tiles, bearing letter/number combinations such as O2 or F1, were particularly fetching and demonstrated one of the problems which would arise from an imprecise registration—the assessment of the acceptability of the application by third party rights holders. 23 n 17 at [41]. 24 See 2.10 –2.15. 25 See Société des Produits Nestlé SA v Cadbury UK Ltd (n 11) at [1].

18

‘Capable of Distinguishing Goods or Services’ as now proposed. The position of sound marks seems to be rather different; they may be more popular and easier to represent. General issues relating to graphical representation In order to satisfy the requirement in s 1 that the mark be capable of graphical rep- 2.18 resentation,26 an application must contain a clear representation of the mark, which is self-contained, easily accessible, and intelligible and can stand alone (without the need for supporting samples etc) so that someone inspecting the Register will know exactly what is registered as the trade mark.27 The form of the representation is to be a ‘fixed point of reference’, so it must be in a durable form (for instance, colours must not be likely to fade over time) and the means of graphic representation must be unequivocal and objective.28 Hence, a description of a Scrabble tile (see 2.14), combining a picture and a description, was not an acceptable graphical representation, as it still allowed for a multitude of different combinations.29 If an application for a UK mark fails to provide a sufficient graphical representa- 2.19 tion, the applicant will be given an opportunity to remedy the deficiency under Rule 13. If he cannot or does not do so the application will be deemed never to have been made. Where the position is remedied, the filing date of the application will be the date upon which everything required by s 32(2) is received by the UKIPO. An equivalent rule applies at OHIM.30

D ‘CAPABLE OF DISTINGUISHING GOODS OR SERVICES’ The second essential requirement for registrability of s 1(1) is that the sign must 2.20 be ‘capable of distinguishing’ the goods or services of the applicant from those of other undertakings.31 It must ‘convey trade mark significance to the average consumer’.32 If the mark has no such capacity, it should not be registered. This is a longstanding theme of judgments of the CJEU.33 If it does have capacity to distinguish, 26

Also the formalities of s 32(2)(d) or Art 26(1)(d) CTMR. See eg comments in Ty Nant Spring Water [2000] RPC 55; Sieckmann (n 13). 28 Ty Nant Spring Water (n 27): for a smell mark, providing the chemical formula, a description of the smell and a sample was not enough; and Lego Juris A/S v OHIM, Case C-48/09, [2010] ETMR 63 at [70]–[78]: how to identify elements of a shape mark. 29 CA, n 20, at [29] and [48]. 30 See the Implementing Regulation (EC) 2868/95, Rule 9. 31 See Art 2 Directive, Art 4 CTMR. 32 Dualit (n 8), per Lloyd J. 33 See eg Windsurfing (n 9); Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, Case C-299/99, [2002] ECR I-5475 (a shape mark); Procter & Gamble Co v OHIM ‘Baby-Dry’ , Case C-383/99, [2001] ECR I-6251, [2002] RPC 17 (a word mark); Libertel Groep BV v Benelux-Merkenbureau, Case C-104/01, [2003] ECR I-3793, [2005] 2 CMLR 45, [2004] Ch 83, [2004] 2 WLR 1081, [2003] ETMR 63 (a colour mark); OHIM v Erpo Möbelwerk, Case C-64/02, [2004] ECR I-10031, [2005] ETMR 58 (a slogan ‘Das Prinzip der Bequemlichkeit’). 27

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Registrable Marks it does not matter whether the mark is inherently distinctive or has acquired distinctiveness in use, as the proviso to s 3(1)(b)–(d) permits the registration of marks which would not be accepted for registration without having acquired distinctive character by use. 2.21 However, just what level of distinctiveness is required is not clear. In a number of

cases relating to the registration of Community Trade Marks (CTMs), the CJEU has reiterated this point but not said exactly how that capacity is to be assessed. The results of some of its judgments have been surprising, even allowing for the limitations upon its powers when hearing appeals from the General Court (GC). For instance, the CJEU held that the mark ‘Baby-Dry’ might be registered if it was perceptibly different from terms used in common parlance; it found that its element of ‘lexical invention’ gave the mark distinctiveness.34 In SAT.135 the CJEU accepted that a combination of a descriptive abbreviation and a number could have distinctive character, even if it was not unusual and did not have a ‘particularly high degree of inventiveness’. More recently, in Formula One,36 the CJEU appears to have accepted that a mark could be validly registered even with only ‘a certain degree’ of distinctiveness.37 In other cases, the CJEU took an apparently stricter line. In Doublemint,38 the Court held that even if the mark ‘Doublemint’ was elliptical and unusual it should be refused registration if at least one of its meanings reflected a characteristic of the goods concerned. These decisions show the difficulties in treating the body of CJEU case-law as establishing precedent in relation to the facts of any particular case. In the end, each application will be judged on its merits. 2.22 The requirement of a minimum standard or level of distinctiveness for a mark to

fulfil its function means that certain categories of sign are generally seen as incapable of functioning as trade marks; see in particular the discussion of marks consisting of shapes of products or their packaging at 2.81 et seq. Device marks merely showing the goods concerned may also lack distinctiveness. To give an example

34

Baby-Dry (n 33). By contrast, ‘Biomild’ did not:  Campina Melkunie BV v BeneluxMerkenbureau, Case C-265/00, [2004] ECR I-1699, [2004] ETMR 58 and see the criticism of Baby-Dry by AG Colomer in Koninklijke KPN Nederland NV v Benelux-Merkenbureau (‘Postkantoor’), Case C-363/99, [2004] ECR I-1619, [2005] 2 CMLR 10, [2006] Ch 1, [2004] ETMR 57 at [67] et seq of his Opinion. 35 SAT.1 Satellitenfernsehen GmbH v OHIM, Case C-329/02, [2004] ECR I-8317, [2004] ETMR 80. 36 Formula One Licensing BV v OHIM, Case C-196/11, 24 May 2012; see too LRC Products Ltd v Sandra Elliott (LUV/LOVE), BL O/255/13 (AP), 2 May 2013. 37 The GC has also suggested that a minimal degree of distinctive character will suffice: see eg DaimlerChrysler Corp v OHIM (Grille), Case T-128/01, [2003] ECR II-701, [2003] ETMR 87, [49]: a radiator grille which was not ‘altogether commonplace’ had ‘the minimum degree of distinctiveness necessary to escape the absolute ground for refusal in Art.7(1)(b)’ (equivalent to s 3(1)(b)). 38 OHIM v Wm Wrigley Jr Co (‘Doublemint’), Case C-191/01, [2003] ECR I-12447, [2005] 3 CMLR 21, [2004] RPC 18, [2004] ETMR 9. See also ‘Now TV ’ [2013] EWCA Civ 1465.

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Section 3(1) suggested in the Philips case, a mark consisting of a drawing of a spring would be no more registrable for springs than the word ‘spring’.39 However, such signs may achieve registration on proof of distinctiveness through use, relying on the proviso to s 3(1)(b)–(d).40

E SECTION 31 In addition to considering the requirements of s 1, the UKIPO must examine the 2.23 mark by reference to s 3.41 The public policy issues underlying those requirements mean that the official examination of the mark must be detailed and strict, and must consider all the goods or services for which registration is sought individually or in categories.42 It must consider the mark in relation to each of the potential grounds for refusal in s 3(1),43 and s 3(2) if applicable (see 2.92), but should not take into account the question of whether a third party using the mark might have a defence to infringement.44 The mark must be assessed for the overall impression it would give to the public. 2.24 This does not preclude consideration of each element of the mark, but goes beyond a mere assessment of its constituent parts.45 It must assess registrability by reference to all of the goods or services in the specification and to the relevant public’s perception of the mark.46 The relevant public for this (and other) purposes means the average consumers of those goods or services who are ‘reasonably well-informed and reasonably observant and circumspect’47 although a consumer’s level of attention may vary according to the category of goods or services in question.48 The territory in which the mark is to be used and the language skills of the public are also relevant. Applications for CTMs therefore face greater problems than national 39

Adding some distinctive wording may get around the difficulty:  see eg Whirlpool Corp v Kenwood Ltd [2009] RPC 2, [2009] ETMR 5 upheld on appeal [2010] RPC 2, [2010] ETMR 7. 40 eg Windsurfing (n 9); Société des Produits Nestlé SA v Mars UK Ltd , Case C-353/03, [2005] ECR I-6135, [2005] 3 CMLR 12, [2006] FSR 2, [2005] ETMR 96 (‘Have a Break’). 41 OHIM has the same duty to consider absolute grounds under Art 7 CTMR. 42 Postkantoor (n 34)  at [73]–[76]; BVBA Management, Training en Consultancy v BeneluxMerkenbureau, Case C-239/05 [2007] ECR I-1455, [2007] ETMR 35; Audi AG v OHIM, Case C-398/08, [2010] ECR I-00535, [2010] ETMR 18, [2010] FSR 24 at [37]. Categories are to be carefully identified: Ford Motor Co v OHIM, Case T-67/07 [2008] ECR II-3411 at [43]. 43 Deutsche SiSi-Werke GmbH & Co Betriebs KG v OHIM, Case C-173/04 [2006] ECR I-551, [2006] ETMR 41 at [59]. 44 Windsurfing (n 9). 45 See eg Eurocermex SA v OHIM, Case C-286/04 [2005] ECR I-5797, [2005] ETMR 95 [22]– [23]; Develey Holding GmbH & Co Beteiligungs KG v OHIM, Case C-238/06, [2007] ECR I-9375, [2008] ETMR 20, [82]; Easynet Group plc v Easygroup IP Licensing Ltd [2007] RPC 6. 46 eg Audi (n 42). 47 Th is defi nition of the relevant public/average consumer applies to both registration and infringement: see eg Windsurfing (n 9). 48 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV, Case C-342/97, [1999] ECR I-3819, [1999] 2 CMLR 1343, [2000] FSR 77, [1999] ETMR 690 at [26].

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Registrable Marks marks in avoiding descriptiveness objections, given the number of languages to be taken into account.49 2.25 The standards applied under s 3 are only ‘absolute’ in not being relative to any

particular earlier trade mark or other right, not in the sense of being impossible to overcome, for the proviso may apply. However, registrability may be affected by other signs in use in the relevant trade, by virtue of s 3(1)(d) (see 2.47) and (6) (see 2.129). 2.26 The existence of similar or contrasting marks on the UK Register is irrelevant to

the registrability of a particular mark here,50 for one may not know the circumstances in which the earlier mark attained registration. In Digipos51 it was held that the existence of the marks with the same prefix ‘digi’ had no ‘precedent value’ as it did not show actual use of those marks, but only that other traders had considered using (and might be using) the same element as part of their marks. 2.27 Registrations of the same marks on other national registers or at OHIM may be

of analytical interest, but will not be decisive, whilst registrations of similar marks for similar goods are irrelevant.52 The regimes at OHIM and in the Member States are separate—OHIM does not need to follow a national decision, nor vice versa.53 For applications in the UK, references to CTMs or other national marks are unlikely to be relevant, because of linguistic, cultural, and economic differences in other Member States and also because the basis upon which a mark may have been registered elsewhere may not be known. Word marks which may be descriptive in a well-known language, especially in English (which is considered to be understood in many Member States) are particularly difficult to register as a CTM.54 A mark devoid of distinctive character at Community level may still be registrable in one or more Member States.55 Non-word marks, such as shape marks, have the particular problem of needing to show acquired distinctiveness for the whole EU, even though it now seems that what is required is proof 49 eg a Spanish mark for beds, mattresses, etc might not have been invalid, though it consisted of the German word for mattresses, but it would have been unregistrable as a CTM:  Matratzen Concord AG v Hukla Germany SA, Case C-421/04, [2006] ECR I-2303, [2006] ETMR 48. Local issues also affect s 3(1)(b) considerations, see Develey (n 45). This may change, see Art 4 of the draft Directive. 50 British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, [1997] ETMR 118. 51 Digipos Store Solutions Group Ltd v Digi International, Inc [2008] RPC 24. 52 Henkel KGaA v Deutsches Patent- und Markenamt , Case C-218/01, [2004] ECR I-1725, [2005] ETMR 45; Postkantoor (n 34) at [43]. 53 Develey (n 45) at [58], [65]–[66], and [72]. 54 eg Liz Earle Beauty Co Ltd v OHIM, Case T-307/09, [2010] ECR II-266, [2011] ETMR 16— the mark was ‘Naturally Active’; BVBA (n 42): ‘The Kitchen Company’ was refused registration as a Benelux mark; Powerserv Personalservice GmbH v OHIM, Case T-405/05, [2008] ECR II-02883— affirmed by Case C-553/08, [2009] ECR I-11361: ‘Manpower’ deemed widely understood. There are some inconsistencies in OHIM’s practice as to which countries are deemed to include English-speakers. 55 NB, an unsuccessful CTM application may be converted into one or more national applications. See 4.94.

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Section 3(1) of distinctiveness for the majority of EU citizens rather than in each individual Member State.56 Section 3(1)(a)57 Section 3(1)(a) reflects s 1(1). The proviso to s 3(1) does not apply to it. Its meaning was 2.28 considered in Philips v Remington.58 Philips had registered as a trade mark for shavers a picture of its three-headed rotary shaver. In infringement proceedings Remington counterclaimed for invalidity of the mark. The Court of Appeal found that Philips’ long-term use of that shape meant that the average member of public would associate it with shavers made by Philips, but that the mark was nevertheless not capable of distinguishing the origin of the goods. On a reference to the CJEU the Court held that ‘there is no class of marks having a distinctive character by their nature or by the use made of them which is not capable of distinguishing goods or services’.59 Whether the shape mark had such character was, of course, another matter (see 2.84). Section 3(1)(a) is intended to exclude from registration signs which are not generally 2.29 capable of being a trade mark. A mark which is not excluded from registration by s 3(1)(b)–(d) is capable of distinguishing goods or services within the meaning of s 3(1) (a). And any mark which is caught by s 3(1)(a) will also be caught by one or more of the specific exclusions in s 3(1)(b)–(d).60 A mark which appears inherently incapable of distinguishing goods or services may, however, achieve registration if it acquires distinctiveness through use prior to the date when the trade mark application is made.61 The tests in s 3(1)(b) and (c) are different and must be considered separately.62 2.30 A mark may ‘pass’ s 3(1)(c) as not being descriptive, but ‘fail’ s 3(1)(b) because it has no distinctive character. But a mark which fails under s 3(1)(c) is necessarily devoid of distinctive character for s 3(1)(b).63 Section 3(1)(b) Marks which are ‘devoid of any distinctive character’ will be refused registration. 2.31 The CJEU has held that a trade mark registration implies that the mark has ‘a 56

See August Storck KG v OHIM (sweet wrapper), Case C-24/05 [2006] ECR I-5677; Chocoladefabriken Lindt & Sprüngli AG v OHIM, Case C-98/11, 24 May 2012, [2013] CEC 161 at [62]—it would be unreasonable to require proof of acquired distinctiveness for each individual Member State; and Société des Produits Nestlé SA v Cadbury Holdings Ltd (shape of Kit-Kat), Bd App (R513/2011-2) [2013] ETMR 25, applying Lindt. 57 The Directive, Art 3(1)(a); Art 7(1)(a) CTMR. 58 Philips (n 33), CA at [1999] RPC 809. 59 Philips (n 33) at [38]–[39]. 60 OTO trade mark, BL O/157/08, 6 June 2008 (AP). 61 The Directive, Art 3(3) (distinctiveness acquired after application), has not been enacted in the UK. 62 Postkantoor (n 34) at [70], [86]. 63 Campina Melkunie (n 34); NMSI Trading Ltd’s application ‘Flying Scotsman’ [2012] RPC 7 at [19] (AP), see also Deutsche SiSi-Werke (n 43); Easistore, BL O/342/10 (AP), 21 September 2010.

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Registrable Marks certain degree of distinctiveness’.64 However, the threshold of distinctiveness is not particularly high—ruling out marks which are devoid of distinctive character does not mean that they must have even average distinctiveness,65 nor any particular linguistic or artistic creativity or imaginativeness.66 But see 2.42. 2.32 The public policy underlying s 3(1)(b)67 is that a mark must be capable of fulfilling

the mark’s essential function of distinguishing the proprietor’s goods or services from those of others: does the sign ‘individualise the goods or services to a single economic undertaking’?68 The trade mark office at which the application is made must carry out a stringent examination of the mark by reference to all the subsections of s 3.69 Marks which cause the average consumer to wonder whether they denote origin should not be registered.70 2.33 The theory 71 is that all categories of marks are to be treated on the same footing,

so, for example, shape marks are not to be treated more strictly than word marks.72 However, not all signs will easily be identified by the relevant public as indicating origin; there is a ‘spectrum’ of recognition of signs as marks.73 The most distinctive are invented words and fancy devices, then ‘semi-descriptive’ words and devices, through signs like initials and numbers, down to packaging, then the shapes of goods, and eccentric marks like smells, which are unlikely to convey a message of origin. 2.34 Marks may be devoid of distinctive character, even if not descriptive. Letters,74

initials,75 or numerals76 may lack inherent distinctiveness or may lose any distinctiveness they once had.77 Word marks or slogans may be laudatory and so carry an 64

Formula One Licensing BV v OHIM (n 36) at [47]. See Luv trade mark, BL O/255/12 (AP), 2 May 2013 at [51]; and see eg Bang & Olufsen A/S v OHIM, Case T-460/05, [2007] ECR II-4207, [2008] ETMR 46 at [45]. 66 SAT.1 (n 35). 67 SAT.1 (n 35); OHIM v BORCO, Case C-265/09, [2010] ECR I-08265, [2011] ETMR 4. 68 NMSI (n 63) at [21]. 69 Or its equivalents—the Directive, Art 3; Art 7 CTMR. See SAT.1 (n 35) at [123]; BORCO (n 67) at [45]. 70 Bach Flower Remedies [2000] RPC 513 at 529; O2 Holdings Ltd’s trade mark application [2011] RPC 22 at [31]–[35]. 71 But perhaps not the reality—as Postkantoor accepts. 72 Linde AG ’s trade mark application , Joined Cases C-53/01, C-54/01, and C-55/01, [2003] ECR I-3161, [2003] ETMR 78 at [36], [47]; Philips (n 33) at [39]. 73 See Bongrain SA ’s trade mark application [2005] RPC 14 at [25]—application refused for shape of a cheese; Henkel (n 52). 74 eg the single Greek letter ‘α’ with no graphic modifications for alcoholic beverages was devoid of distinctiveness: BORCO (n 67). 75 See Alfred Strigl v Deutsches Patent- und Markenamt, and Securvita Gesellschaft zur Entwicklung alternativer Versicherungskonzepte mbH v Öko-Invest Verlagsgesellschaft mbH, Joined Cases C-90 and 91/11, 15 March 2012 (‘Multi Markets Fund MMF’). 76 eg ‘1000’ for puzzle publications:  Agencja Wydawnicza Technopol sp. z o.o., v OHIM, Case C-51/10, [2011] ECR I-01541, [2011] ETMR 34 at [51]. 77 Score Draw Ltd v Alan Finch (CBD trade mark) [2007] FSR 20, at [30]–[32]. See also the issues raised by Linkin’ Park LLC’s trade mark application [2006] ETMR 74 at 2.65. 65

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Section 3(1) advertising, not an origin, message; the question is whether the average member of the public would perceive the sign as indicating commercial origin.78 A device may be too simplistic to have distinctive character79 —the stylised mark 2.35 ‘Sun Ripened Tobacco’80 was rejected where the stylisation was as descriptive as the words for tobacco products. However, a mark consisting of an image of the Flying Scotsman, with the name, was registrable because it was ‘emblematic’ and ‘personalised’ the sign to a particular undertaking.81 Surnames were previously seen to raise particular concerns under subsection 3(1) 2.36 (b), given the restrictive pre-harmonisation UK approach which continued after the 1994 Act came into force. The CJEU has now ruled that surnames should be treated in the same way as other marks, and they are not subject to special rules of their own (see 2.61).82 Names of characters must also be tested in the same way, and may not be registered if they are only descriptive (see 2.63 et seq). Registrability must also be assessed in relation to the particular goods or services 2.37 in the specification.83 If the exclusion applies only to some of them, the application will be rejected in part only. This follows from Article 13 of the Directive. There is no direct equivalent in the 1994 Act, but it is to be applied so as to comply with Article 13.84 The proviso to s 3(1) may apply to s 3(1)(b), so that a sign which is not on the face 2.38 of it distinctive, or which appears descriptive, but which has acquired a distinctive character by use, may be registered. So, ‘Fine & Country’, held by the Court of Appeal to be an inherently non-distinctive combination of a laudatory and a descriptive word, had been validly registered by virtue of acquired distinctiveness.85 Section 3(1)(c) Section 3(1)(c) prevents the registration of exclusively descriptive marks, at least 2.39 until they show themselves capable of acquiring distinctiveness in use so as to merit the application of the proviso. The purpose of this section, and of s 3(1)(d), is to prevent traders from registering as marks for their exclusive use words or signs which 78 See Premier Luggage and Bags Ltd v Premier Co (UK) Ltd [2003] FSR 5; [2002] ETMR 69 at [55] followed in Fine & Country Ltd v Okotoks Ltd [2013] EWCA Civ 672 at [99] et seq. 79 Cain Cellars, Inc v OHIM, Case T-304/05, [2007] ECR II-00112: a simple line-drawn pentagon lacked distinctive character. 80 British American Tobacco (Brands), Inc’s application ‘Sun Ripened Tobacco’ , BL O/200/08 (AP), 14 July 2008. See also ‘Now TV ’ (n 38). 81 NMSI (n 63) at [27]. 82 Nichols plc v Registrar of Trade Marks, Case C-404/02, [2004] ECR I-8499, [2005] RPC 12. 83 See 2.23 and n 42. 84 See Postkantoor (n 34) at [72] et seq: the CJEU said that it is not acceptable to register a mark for certain goods or services only if they do not possess a particular characteristic. 85 n 78. ‘Money Saving Expert’ for fi nancial services was saved by acquired distinctiveness: Lewis v Client Connection Ltd [2011] EWHC 1627 (Ch), [2012] ETMR 6.

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Registrable Marks another trader might legitimately wish to use in the course of his business, and to ensure that such signs or indications may be freely used by all.86 Otherwise, innocent traders using such descriptive terms would be forced to rely upon the defences in s 10(6) and/or s 11 (or Article 6 of the Directive).87 Objections under this head can be overcome by showing that the mark is inherently distinctive overall or contains a material element which is not descriptive, but drawing a line between what is distinctive and what is not is often difficult. 2.40 For obvious reasons, s 3(1)(c) objections are often raised against word marks. In

both Baby-Dry and Doublemint88 the CJEU had to consider whether a combination of two ordinary words was registrable. Its reasoning in Baby-Dry has been circumscribed or qualified by later CJEU decisions, such as Postkantoor.89 A mark which combines descriptive words will often add up to an equally non-descriptive mark. The impact of the mark must be assessed as a whole, and must create an impression which is ‘sufficiently far removed’ from the individual elements to be ‘more than the sum of its parts’.90 Descriptiveness is to be tested in relation to each of the goods (or categories of goods) in the specification. 2.41 In Doublemint, the CJEU said that a mark must be rejected if one of its possible

meanings designates a characteristic of the goods/services. It is sufficient that the sign is capable of being used as a designation of the goods/services, whether such use is commercially essential or merely ancillary, and it need not be in current use.91 2.42 To fall within s 3(1)(c), there must be a sufficiently direct and specific relationship

between the sign and the goods/services for the public ‘to perceive, without further thought, a characteristic or description of the goods or services in question’.92 The GC held that the word ‘FUN’ was too vague and subjective to be descriptive of vehicles.93 By contrast, the CA held that ‘NOW’ would be understood as a description of the attractive, immediate, and instantaneous nature of the proprietor’s TV services, which were available on demand.94 Any characteristic whatsoever may 86

Deutsche SiSi-Werke (n 43); Agencja Wydawnicza Technopol (n 76). See eg Windsurfing (n 9), at [35]; Linde (n 72) at [73]–[74]. 88 Baby-Dry (n 33); Doublemint (n 38). 89 n 34; and Lancôme parfums et beauté & Cie SNC v OHIM, Case C-408/08, [2010] ETMR 34: ‘Color Edition’ invalid for cosmetics. 90 Postkantoor (n 34) at [61]; Campina Melkunie (n 34) at [39]; see eg ‘Bioderma ’ refused for cosmetics but allowed for diet products: Laboratoire Bioderma v OHIM, Case T- 427/11, 21 February 2013; ‘photos.com’ refused for Class 9 goods though established as applicant’s domain name: Getty Images (US), Inc v OHIM, Case T-338/11, 21 November 2012. 91 Postkantoor (n 34) at [102]; Windsurfing (n 9). 92 Ford Motor Co v OHIM (n 42) at [24]. 93 Ford Motor Co (n 42). 94 Starbucks (HK) Ltd v British Sky Broadcasting Group plc (‘Now TV ’) n 38, at [99]. Also see O2 Holdings (n 70) at [23] and [78] (picture of a SIM card rejected for telecommunications goods/ services); and Nadine Trautwein Rolf Trautwein GbR, Research and Development v OHIM, Case T385/08, 8 July 2010 (picture of a greyhound rejected for leather goods including dog leads, and dog food). By way of contrast see Hormel Foods Corp v Antilles Landscape Investments NV [2005] RPC 28. 87

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Section 3(1) fall within the provision, irrespective of how significant the characteristic may be commercially.95 The word ‘exclusively’ in s 3(1)(c) is of great significance. The addition of a 2.43 non-descriptive element or elements to an otherwise descriptive word or device mark may take the mark out of the ambit of this provision, but whether that is the effect of such additional material is a matter of degree. In Now TV, Arnold J held that the addition of some minor figurative elements to the word NOW were not sufficient to save it from s 3(1)(c). He was unimpressed that having achieved registration by adding figurative elements, the claimant was seeking to enforce the mark against signs which did not include those elements, and commented: ‘Trade mark registries should be astute to this consequence of registering descriptive marks under the cover of a figurative figleaf of distinctiveness, and refuse registration of such marks in the fi rst place.’96 By the time the case reached the Court of Appeal it seems it was common ground that the stylisation of the mark added nothing significant to the validity of the CTM by making it distinctive; the average consumer would still see the mark as NOW. A moderate degree of stylisation, especially when it consists of the simplification of an image, will not automatically confer distinctiveness, all the more so if the image is of the goods concerned.97 Th is is a matter of degree, but if the mark is not ‘exclusively’ descriptive, the question of registrability will become one for s 3(1) (b), not (c). If the UKIPO raises an objection under s 3(1)(c),98 the trade mark proprietor may 2.44 provide appropriate evidence to counter it. A number of otherwise surprising decisions, particularly from the GC, can probably be explained by the inadequacy of the evidence filed.99 On the other hand, the Registry is entitled to (and will) take into account well-known facts in making necessary value judgements as to the descriptiveness of a mark.100 Section 3(1)(c) may overlap with s 3(1)(d) or may be applied in conjunction with it 2.45 to prevent the registration of marks which consist of a combination of a descriptive term and a term common to the trade.101 Equally, it may be used in combination with s 3(3) to prevent the registration of a term which might be descriptive if used

95

Postkantoor (n 34) at [102]; Easistore (n 63). [2012] EWHC 3074, [2013] FSR 29 at [116]–[117]. 97 See O2 Holdings (n 70). 98 See s 37. 99 Oddly, this can work to the benefit of the applicant, if the Registry does not have evidence on which to find that the mark is descriptive: in OHIM v Celltech R&D Ltd, Case C-273/05, [2007] ECR I-2883, [2007] ETMR 52, it was held that OHIM had not had the necessary evidence to conclude that ‘Celltech’ was descriptive of cell technology. 100 O2 Holdings (n 70) at [39]–[54]. 101 See eg arguments that ‘ESB’ was a term common to the trade in West (t/a Eastenders) v Fuller Smith & Turner plc [2003] FSR 44. 96

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Registrable Marks in relation to certain goods, but would be deceptive if used in relation to other goods.102 2.46 Section 3(1)(c) provides that marks are to be refused registration where they consist

exclusively of ‘signs or indications which may serve . . . to designate’ one or more of the following: • Kind: ‘Doublemint’ for chewing gum,103 ‘Pure Digital’ for digital radios and audio equipment,104 or ‘Bach Flower Remedies’ for herbal preparations.105 Slogans may well be caught by this.106 • Quality: ‘5 star’, whether for hotel services or brandy (for both, such a mark would also be likely to fall under s 3(1)(d) as common to the trade), ‘Basics’ for paints,107 ‘Bonus Gold’ for investment services,108 or ‘Premier’ for luggage.109 Shape marks often fail on this basis, such as a liquid detergent bottle.110 • Quantity: Any direct or express reference to weight, length, etc would fall under this heading, but more subtle references have also been caught. The mark ‘Dual’ for loudspeakers was taken to refer to the practice of selling loudspeakers in pairs.111 ‘1000’ for a periodical was held likely to be perceived as an indication that it contained 1,000 crossword puzzles.112 • Intended purpose: ‘Easycover’ for floor coverings,113 ‘Twist and Pour’ for containers for paint.114 Shape marks again often fail on this basis. • Value: This may be hard to distinguish from ‘quality’ above, but would probably catch marks like ‘Budget’,115 or ‘Bonus Gold’.116 • Geographical origin: See discussion at 2.50. Many geographical marks are registered with the benefit of the proviso. Geographical names which have no realistic relationship to particular goods may be registered without recourse

102 eg ‘organic’ could be descriptive or deceptive depending on the contents of the goods— see PAN 1/08, which refers to EU rules on identifying goods as organic; Torresan v OHIM, Case T-234/06, [2009] ECR II-4185, affirmed by Case C-5/10, 16 May 2011:  ‘cannabis’ would be descriptive of beer containing hemp, deceptive of beer without it. 103 Doublemint (n 38). 104 Imagination Technologies, Case T-461/04, [2007] ECR II-122, [2008] ETMR 10, and Case C-542/07, [2009] ECR I-4937, [2010] ETMR 19. 105 Bach Flower Remedies (n 70). 106 eg Easistore, ‘We Create Space’ (n 63). 107 ColArt/Americas, Inc v OHIM, Case T-164/06, [2007] ECR II-116. 108 [1998] RPC 859. 109 Premier Luggage (n 78). 110 Henkel (n 52). 111 Re Linmark Electronics Ltd ’s application , BL O/284/08, 14 October 2008. 112 Agencja Wydawnicza Technopol (n 76) at [54]–[57]. But ‘32’ and ‘32Red’ were not direct references to a characteristic of roulette: 32Red plc v WHG (International) Ltd [2012] EWCA Civ 19, [2012] RPC 19, [2012] ETMR 14. 113 Duro Sweden AB v OHIM, Case T-346/07, [2008] ECR II-00263, [2009] ETMR 22. 114 The Sherwin-Williams Company v OHIM, Case T-190/05, [2007] ECR II-1911. 115 [1991] RPC 9. 116 n 108.

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Section 3(1) to the proviso, eg ‘Alaska’ would not be seen as the likely source of mineral water or fruit drinks.117 Marks which give a false suggestion of a particular geographical origin are precluded from registration under s 3(3)(b).118 ‘Iceland Seafood’ for fish would be descriptive for fish from Iceland and deceptive for fish from anywhere else. Geographical names may properly be registered as collective marks.119 • The time of production of goods or rendering of services: ‘Day by Day’ for milk (delivered daily?)120 or ‘24 Hours’ for newspapers and news services. • Other characteristics: This general heading catches all other descriptive marks, such as ‘Options’ for insurance and hire purchase services, or the name of a band for memorabilia or posters of a band.121 Section 3(1)(d) This provision prevents the registration of signs which are commonly or customar- 2.47 ily used in the relevant trade; they may be common trade descriptions in words or phrases, but also commonly used devices or logos, or any commonly used shapes. For instance, the use of a number of stars in relation to different grades of brandy or hotel services would clearly be caught by this subsection. In Merz & Krell, the word ‘Bravo’ for pens etc was in common use in advertising. 2.48 The CJEU confirmed that the applicability of s 3(1)(d) had to be considered in relation to the specific goods or services which were the subject of the application for registration, and it did not it matter whether the term was used as a description or for advertising.122 In Alcon,123 ‘BSS’ had been registered as a mark for ophthalmic solutions etc. However, dictionaries and articles demonstrated that ‘BSS’ was a generic term, used by third parties. It was not the descriptive nature of the mark which was decisive as to validity, but current usage in the relevant sector. The proviso The possibility of overcoming inherent problems with a mark by providing evi- 2.49 dence of distinctiveness acquired by its use as a trade mark is of great significance. 117

Mineralbrunnen Rhön-Sprudel Egon Schindel GmbH v OHIM (‘Alaska’), Case T-225/08, [2009] ECR II-00111. 118 See 2.120 and eg Hunt Wesson, Inc ’s trade mark application (‘Swiss Miss’) (CA) [1998] RPC 889: the mark was not registrable for chocolate as it falsely suggested the chocolate was of Swiss origin. Special rules/regulations apply to references to Scotch whisky etc, see PAN 1/11, and other geographical indications. 119 By Sch 1(3) of the 1994 Act and Art 66(2) CTMR. See 2.149 and Ch 4 of the UKIPO Manual. See Consejo Regulador de la Denominacion de origen Txakoli de Alava e.a. v OHIM, Case T-341/09, [2011] ECR II-02373. 120 Besnier SA ’s trade mark application [2002] RPC 260. 121 Ford Motor Co v OHIM, Case T-91/99, [2000] ECR II-1925, [2000] 2 CMLR 276, [2000] ETMR 554; and Linkin’ Park (n 77) at [45]. 122 Merz & Krell GmbH & Co, Case C-517/99, [2001] ECR I-6959. 123 Alcon, Inc v OHIM, Case C-192/03, [2004] ECR I-8993, [2005] ETMR 69.

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Registrable Marks Where the mark applied for is a CTM rather than a national mark, the distinctive character must have been acquired in all those parts of the Community in which the mark would suffer from s 3(1) objections.124 See 2.27 above. 2.50 In Windsurfing,125 the claimant was based near the shores of the Chiemsee, a lake

in Bavaria, and sold sports goods, manufactured elsewhere, which bore marks including the word ‘Chiemsee’. It had used the marks since 1990 and registered them in Germany between 1992 and 1994. The defendant, which had sold sports clothing also marked ‘Chiemsee’ since 1995, said that the claimant’s marks were invalid as geographical names. The CJEU held that a geographical name might not be registered where it designated a geographical location which the relevant class of persons in the trade or average consumers already associated or might reasonably associate with such goods, as the place where the goods were or could be manufactured, conceived, or designed. The proviso could apply, if the trade mark had acquired a distinctive character at the time of application,126 so it was no longer purely descriptive but it had come to identify products as originating from a particular undertaking—if, in other words, the primarily geographical name had begun to function as a trade mark. Despite lengthy use, a sign may not acquire distinctiveness, if the use is still seen as generic or descriptive (see Bach Flowers).127 2.51 The Windsurfing criteria apply to the assessment of acquired distinctiveness of all

kinds of marks, not just to geographical names. In Lloyd128 the CJEU held that, in addition to the points identified in Windsurfing, account should be taken of the inherent characteristics of the mark, including whether it is or contains a descriptive element. The criteria to consider are, therefore: • the inherent characteristics of the mark, including whether it contains an element descriptive of the goods or services for which it has been registered • the market share held by the mark • how intensive, geographically widespread, and long-standing use of the mark has been • the amount invested by the undertaking in promoting the mark

124 Bovemij Verzekeringen NV v Benelux-Merkenbureau , Case C-108/05, [2006] ECR I-7605, [2007] ETMR 29: ‘Europolis’ for insurance and transport services. NB: This may change in the light of Art 4(2) of the draft Directive. See too clarification in Art 7(2) of the draft CTMR. 125 Windsurfing (n 9). See also ‘Europolis’ (n 124); Nordmilch eG v OHIM (OLDENBURGER), Case T-295/01, [2003] ECR II-4365, [2004] ETMR 70; Peek & Cloppenburg v OHIM, Case T-379/03, [2005] ECR II-4633, [2006] ETMR 33; Alaska (n 117); Jersey trade mark application, BL O/172/13, 29 April 2013. 126 See Imagination Technologies Ltd v OHIM (n 104) at [49] et seq of CJEU judgment. 127 [2000] RPC 513. 128 Lloyd (n 48) at [23]; see also Fine & Country (n 78) at [96] et seq.

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Section 3(1) • the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations. Evidence from chambers of commerce and industry or other trade and professional 2.52 associations may be accepted on these matters, as may survey evidence (if acceptable in national law),129 though it seems that such evidence would need to prove recognition by the public, not just the trade.130 In Hasbro, Inc v 123 Nahrmittel GmbH,131 it was held that ‘Play-doh’ had acquired 2.53 distinctiveness. What was needed was that a proportion of the relevant public recognised that the mark meant that the goods originated from a particular undertaking; the size of that proportion was a factor to be taken into account in assessing distinctiveness, but the existence of others who had not heard of the mark, or did not regard it as indicating origin, was not necessarily destructive of validity. In Premier Luggage132 the mark ‘Premier’ was found to have acquired sufficient dis- 2.54 tinctiveness even though there was no evidence of the claimant’s total market share or even its market share in a particular category of the luggage market. But generally where there is significant and long-standing turnover and a large market share, evidence of those important facts should be produced, supported by documents of whatever kind available, such as sales figures, invoices, and marketing spend. Limping marks One particular difficulty arises in relation to marks used alongside other marks, 2.55 so-called ‘limping marks’. The expression seems to date from the first instance decision of Jacob J in Philips v Remington133 in which he referred to the shaver shape as ‘at best a “limping trade mark”, needing the crutch of Philishave in use’. If the sign which is inherently descriptive etc has been used extensively but only in conjunction with another more distinctive mark, even very extensive use of the sign on the goods may not be taken as use ‘as a trade mark’, for it to have acquired independent distinctiveness. There will be ‘use of the mark as a trade mark’ if the mark is used by the relevant class of person for the purposes of the identification of the product as originating from a given undertaking.134 Frequently, limping marks consist of signs of a kind which consumers are unlikely immediately to recognise as having trade mark significance, such as shapes or slogans.135 For example, the 129

As to using survey evidence in the UK see 9.30 et seq. Glaverbel SA v OHIM, C-445/02, [2004] ECR I-6267, [2005] ETMR 70. 131 [2011] EWHC 199 (Ch), [2011] FSR 21, [2011] ETMR 25 at [169]. 132 Premier Luggage (n 78). See too IPC Media Ltd v Media 10 Ltd [2013] EWHC 3796 (IPEC), 6 December 2013. 133 [1998] ETMR 124, 130. 134 See eg ‘Europolis’ (n 124) at [65]. 135 Linde (n 72) at [42], [48]; Libertel (n 33) at [65]. 130

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Registrable Marks three-headed shaver shape in Philips was held not to have been used as a trade mark, despite the extensive use that had been made of it.136 Decorative finishes used on glass products,137 and on loudspeakers,138 were similarly refused registration. 2.56 On the other hand, the CJEU held that if the slogan ‘Have a Break’ had acquired

its own distinctive character through use as part of ‘Have a Break, Have a Kit-Kat’, despite having been consistently used alongside the name Kit-Kat, it could be registered under the proviso.139 This opened the way to a claim that a 3D mark used with a word mark might acquire distinctiveness.140 See further 2.84 et seq. 2.57 The CJEU also considered the impact of using marks in combination with each

other in Colloseum Holding AG v Levi Strauss & Co,141 and in Specsavers.142 In Colloseum, the issue was whether Levi’s had used its ‘position mark’ (a rectangular red label sewn into the left-hand seam of a pocket) when it had only been used in combination with the registered word mark Levi’s, and that combination was itself a registered mark. The CJEU held that there could have been genuine use of the position mark in such circumstances, if it had acquired distinctive character. Similarly, in Specsavers, the CJEU held that a wordless logo mark which had been used together with a word mark had been put to genuine use, when the combined mark was also a registered mark, as long as the combination did not change the distinctive character of the logo mark.

F CATEGORIES OF MARKS Word marks 2.58 Word marks will, for the reasons mentioned earlier, continue to represent a most

important if not the most important category of marks. Such marks may consist of names, signatures, or real or invented single words or combinations of words, as well as slogans, subject to the issues discussed earlier. 2.59 One particular question is whether a foreign word may be registered, and that

essentially depends on whether it would be seen as having a descriptive meaning by the relevant public. Translating an otherwise unregistrable word into a foreign language will not make a difference if the relevant public will still recognise the mark as descriptive. On the other hand, it is right to be realistic about the linguistic abilities of the relevant public: the Spanish public was not expected to recognise the 136 137 138 139 140 141 142

Philips (n 33) at [64] and CA at [1999] RPC 809. Glaverbel (n 130). Vibe Technologies Ltd ’s application [2009] ETMR 12. n 40. August Storck KG (n 56) at [59]–[61]. Case C-12/12, [2013] ETMR 34, 18 April 2013. Case C-252/12, [2013] ETMR 46, 18 July 2013.

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Categories of Marks German word for mattresses, and the public in the UK was not expected to recognise the Laotian words for crispy pork.143 A degree of realism is needed: recognition of particular foreign words may depend not just upon the language concerned (in the UK, French words may be more easily understood than, say, Laotian) but also upon how much they are used in the relevant territory or resemble other terms used in that territory, and the nature of the relevant public.144 Similarly, objections are unlikely to be overcome by misspelling a word. Names All sorts of names may be registered as marks, whether they consist of the full 2.60 name of a company, individual, or firm, or a surname or first name alone, or even a nickname,145 and generally a real rather than an invented name, although it need not be that of the trader.146 The possibility of using a name which has nothing to do with the applicant’s own name may clearly be useful to suggest overtones of the product’s quality, source, or composition. For instance, one might wish to register a Scottish name as a mark for porridge oats. Company names may also be registered, as long as they are not descriptive and otherwise meet the requirements of s 3. Domain names may also be registered, on the same basis, but merely adding the suffi x ‘.com’ or ‘.co.uk’ may not confer distinctiveness on an otherwise descriptive mark,147 though the mark must of course be assessed as a whole.148 The UKIPO traditionally took the view that common surnames lacked sufficient 2.61 distinctiveness and might prevent other traders from making use of their own names in relation to their businesses. Practice in the UK has drastically changed in the light of the decision of the CJEU in Nichols.149 The CJEU held that name marks must be treated as any other type of mark, and cannot be assumed to be intrinsically devoid of distinctive character. Registrability should not depend on predetermined criteria, such as how common the name may be. Nor is it legitimate

143

Matratzen (n 49); Oriental Kitchen SARL v OHIM (‘KIAP MOU’), Case T-286/02, [2003] ECR II-4953; by contrast, in Organismos Kypriakis Galaktokomikis Viomichanias v OHIM, Case T-534/10, [2012] ETMR 55, a Turkish word was held to be recognisable to Turkish Cypriots, though Turkish is not an official EU language. See proposals to expand the language objections in Art 4 of the proposed Directive, Art 7 of the proposed CTMR. 144 DI GIO Srl ’s trade mark application [2006] RPC 17; Ch 3 of the Manual, and PAN 1/07. 145 Biba Group Ltd v Biba Boutique [1980] RPC 413. 146 Th is practice is particularly common in the fashion industry, but in all spheres this can lead to problems when the individual whose name has been used as the mark is no longer connected with the business, see 2.121 and Elizabeth Florence Emanuel v Continental Shelf 128 Ltd , Case C-259/04, [2006] ECR I-3089, [2006] ETMR 56. 147 See eg FSTC Ltd Foundation for Science Technology and Civilisation ’s application , BL O/008/07, 8 January 2007: ‘MuslimHeritage.com’ not distinctive. Also PAN 1/08. 148 Easynet Group plc v Easygroup IP Licensing Ltd [2007] RPC 6: ‘easy.com’ was registrable. 149 Nichols (n 82).

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Registrable Marks to refuse the registration of names in order to ensure that no advantage is afforded to the first applicant. Nevertheless, very common forenames or surnames may be seen as potentially lacking distinctiveness, or may risk facing a challenge on the basis of third party use of the name. 2.62 It may therefore be easier to register a name if it is not just a surname or forename,

but a distinctive combination of names, or if it is presented as part of a device, or in a distinctive script. Name marks often achieve registration in reliance upon the proviso. Characters and famous names 2.63 Marks which are made up of the name or the picture of a real person (current or historical), a celebrity, or a fictional character may also lack the capacity to distinguish, at least for some categories of goods. A long-established name may have lost (or never had) the capacity to indicate origin, or may be taken simply as indicating a characteristic of the goods/services: ‘Some names are so inherently famous for reasons other than those associated with particular goods and services that it would be difficult or impossible to make them connote a particular trade origin.’150 2.64 Under the 1938 Act, an application to register the name ‘Elvis’ in relation to a

variety of merchandise was refused as likely to be taken as making a reference to the late King only as memorabilia, and not as indicating any particular source of the goods so marked.151 Under the 1994 Act, an application by the estate of the late Diana, Princess of Wales, to register the name ‘Diana’ as a mark for a wide range of goods was refused, as the late princess did not own any rights to her own name during her lifetime, nor would the public expect memorabilia bearing her name to have a single source connected with the estate.152 An application to register ‘Jane Austen’ was refused for similar reasons.153 The UKIPO’s position is that an application to register a mark which consists of a picture of such a person is even less likely to indicate origin.154 2.65 Applications to register marks comprising the name of current celebrities, and

especially pop groups/stars, have had mixed success. Such applications may be accepted as UK marks for many goods, but risk being refused for goods which may be perceived as mere ‘image carriers’. The problem is to persuade the UKIPO

150

Score Draw (n 77) at [26], per Mann J. Elvis Presley trade marks [1999] RPC 567: the application to register the marks was opposed by a long-term trader in Elvis merchandise, who used the mark ‘Elvisly Yours’. 152 Executrices of the estate of Diana, Princess of Wales’ application [2001] ETMR 25. 153 [2000] RPC 879. Also see Ruiz-Picasso v OHIM, Case C-361/04, [2006] ECR I-643, [2006] ETMR 29: DaimlerChrysler’s application for ‘Picaro’ for vehicles was opposed by the Picasso family which had registered ‘Picasso’ for identical goods. The opposition failed as no likelihood of confusion was found. 154 However, see NMSI (n 63) (addition of an image to the words The Flying Scotsman ‘individualised’ the mark). 151

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Categories of Marks that the name will denote the origin of the particular goods; use of the celebrity name on certain goods, such as posters, might be seen as simply indicating support for the band etc. In Linkin Park,155 the band had applied to register its name for a wide range of goods. The application succeeded for many goods, but the UKIPO refused it for printed matter, such as posters and poster books. It was held on appeal that the mark had acquired a well-established meaning denoting the band, but in the absence of evidence that fans seeing posters etc of the band would expect them to originate with the band, the name was not distinctive of the origin of such goods. The UK practice now is that a mark consisting of the name of a band should be accepted for sound recordings and T-shirts but may be refused for posters and photographs, if they would be seen as purely descriptive. Where exactly the line will be drawn in a particular case (especially for goods in Class 16, such as calendars or posters) may depend upon the evidence, but celebrity names should not be subject to unequal treatment.156 If the name (or picture) to be registered is that of a current personality, such as a 2.66 sportsman, and the mark is to be applied to a range of goods which he is taken to produce or endorse, the mark may be registered. For instance, David Seaman registered his name as a UK mark for football coaching and schools, as well as for a wide range of goods, from soaps to leather goods; ‘Lewis Hamilton’ is registered as a UK mark for a wide range of Class 16 goods including posters and calendars. OHIM has permitted the registration of the names of many celebrities for broad specifications of goods.157 The names of clubs or teams can similarly be registered.158 Where the name is that of a character from a current work of fiction, a film, or a 2.67 television series, it seems likely that the public would more readily assume that merchandising rights were being exploited by the owner of the rights in the original work, than that the use of the name was merely in tribute to the character. Many such marks are of course now registered before a book, film, etc is launched, in anticipation of merchandising profits to come. However, where the character is from an older story or book it may be harder to show that the mark would be taken as denoting origin. For instance, the UKIPO considers ‘Sherlock Holmes’ to lack distinctiveness.159 ‘Dr No’ was rejected as a CTM on this basis for books, posters, model cars, etc.160

155

Linkin’ Park (n 77). Linkin’ Park (n 77) at [69] and see Sir Alex Ferguson’s application, BL O/094/06 (AP), 22 March 2006. 157 eg the marks ‘Wayne Rooney’, ‘David Beckham’, and ‘Jonny Wilkinson’ are registered as CTMs for a wide range of goods. 158 In Arsenal v Reed [2001] ETMR 77, the club’s trade marks were held to be valid. 159 Use of the name must be trade mark use, not merely use as a book title, indicating the content of the book, if it is not to become liable to revocation: see Animated Music Ltd ’s trade mark [2004] ETMR 79 (‘Nellie the Elephant’). 160 Danjaq LLC v OHIM Case T-435/05, [2009] ECR II-2097. 156

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Registrable Marks Signatures 2.68 A signature may be a distinctive sign, so it may represent a way of registering a name otherwise unregistrable for the reasons given earlier.161 A potential drawback of using one’s genuine signature as a mark is, of course, the possibility of losing the rights to it on disposing of the business.162 Other word marks 2.69 Many other types of word marks exist. Everyday words can be registered as marks

as long as they satisfy s 3(1)(b)–(d). The classic example of a descriptive mark is ‘Soap’ for soap, and that of the use of ordinary words wholly fancifully is ‘North Pole’ for bananas.163 Most marks, of course, fall somewhere between the two. A common aim is to achieve an indirect but memorable allusion to the nature of the goods or services to be sold under the mark, like ‘Dab Hand’ for hand creams or cleansers, or ‘Pucci’ for products for pets.164 Merely misspelling ordinary words will not render them distinctive unless, perhaps, some especially memorable effect, such as a pun, results, but a surprising or fanciful combination of ordinary words may add up to a good mark. 2.70 Invented words are registrable and can be highly distinctive and valuable marks,

like ‘Kodak’. The major problem in finding an acceptable invented word is in determining the level of inventiveness required, as discussed earlier. 2.71 The tendency to choose essentially descriptive marks is particularly strong in new

fields of commerce; for instance, many substantially similar marks were adopted in relation to the internet and mobile phones. Marks consisting of descriptive terms prefixed by ‘e-’, ‘m-’, or ‘i-’ are likely not to be registered, at least where the goods or services may be sold by e-commerce;165 marks which consist of a domain name may not be seen as indications of origin.166 Name of the goods 2.72 A mark will not be registered if it consists of the name of the goods. So, for

instance, ‘wellington boot’ would not indicate a particular trade source. Marks which become the generic name for innovatory goods will lose their registrations or fail to achieve registration. Examples of such lost trade marks are ‘aspirin’, ‘cellophane’, ‘escalator’, ‘lanolin’, ‘linoleum’, ‘shredded wheat’, and ‘gramophone’. In a more recent example, registrations consisting of the name ‘Bach’ or ‘Bach Flower 161 In Elvis Presley (n 151) the signature mark would have been sufficiently distinctive to register, whilst the name would not. 162 See Elizabeth Emanuel (n 146). 163 An example given in British Sugar (n 50) at 306. 164 Caroline Kavanagh ’s trade mark application, BL O/168/07 (AP), 13 June 2007. 165 See PAN 9/02 and PAN 1/08. 166 See n 147.

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Categories of Marks Remedies’, for a range of homeopathic remedies created by Dr Bach in the 1930s, were declared invalid.167 ‘Laudatory epithets’ So-called ‘laudatory epithets’ are likely to be unregistrable, as being descriptive 2.73 of the quality of goods. For example, the CJEU rejected a slightly stylised mark, ‘BioID’, for systems/services relating to live organisms,168 and ‘Pure Digital’ for radios and similar apparatus, as the words were descriptive, banal, and laudatory,169 and ‘Best Buy’ lacked distinctiveness.170 The GC rejected ‘Vitality’ for food products and beverages.171 ‘Bonus Gold’ was rejected for investment services,172 ‘Deliberately Innovative’ for computer programs,173 ‘Finest’ for Tesco, ‘Bravo’ for pens, and ‘Magic’ for radio.174 ‘Fine & Country’ was held valid, but only on proof of acquired distinctiveness.175 Slogans Slogans may be registered as marks, although they often run the risk either of being 2.74 wholly descriptive or of using terms or phrases which are deemed incapable of indicating trade origin, as being the sort of phrases any trader might use to promote his goods or services. The CJEU in ‘Das Prinzip’176 held that the public is not used to relying on promotional messages to identify the origin of goods. However, a rather different decision was reached in Audi v OHIM (‘Vorsprung 2.75 durch Technik’).177 The slogan (which means, broadly, ‘advance through technology’) had been rejected as laudatory for those parts of Audi’s wide specification which had a technological element. The CJEU held that the GC had applied too strict a test and was wrong to find that although the slogan might be memorable as being original, imaginative, or unexpected, it was not distinctive. The fact that the slogan is laudatory does not mean it cannot also be distinctive and capable of indicating commercial origin. In addition, the CJEU held that the fact that the slogan was known to have been used by Audi for years in relation to motor cars would make it easier for the public see it as identifying the commercial origin of 167

Bach Flower Remedies (n 70). See also Jeryl Lynn trade mark [1999] FSR 491. BioID AG v OHIM, Case C-37/03, [2007] ECR 1-7975, [2005] ETMR CN5—though the CJEU reiterated that a combination of descriptive elements might add up to a distinctive mark [29]. 169 Imagination Technologies Ltd v OHIM (n 104). 170 Media-Saturn-Holding GmbH v OHIM, Case C-92/10, [2011] ECR I-00002. 171 Nordmilch eG v OHIM, Case T-294/06, [2008] ECR II-59, 17 April 2008. 172 [1999] RPC 859. 173 Interactive Intelligence ’s trade mark application , BL O/325/07, 30 October 2007. 174 Tesco Stores application , BL O/420/00 (the mark was subsequently registered as a CTM); Merz & Krell (n 122); EMAP Radio Ltd ’s application, BL O/446/01, 9 October 2001. 175 Fine & Country (n 78). Rather a strict decision? See 2.42. 176 ‘Das Prinzip’ (n 33). 177 n 42. 168

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Registrable Marks other goods or services. So a slogan may both indicate commercial origin and be understood as a promotional formula.178 2.76 Slogans which are fanciful or imaginative will be accepted in the UK,179 such as

‘Catch a Wrinkle in Time’ for cosmetics, ‘The Shoes Your Feet Have Been Aching For’ and ‘There Ain’t no F in Justice’ for clothing.180 However, OHIM seemingly remains more reluctant to accept slogans as CTMs; it tends to see them as promotional or laudatory, unless they include a distinctive word or name.181 Letters and numerals 2.77 Such marks may be registered if not devoid of any distinctive character, pos-

sibly as a simple abbreviation of a more distinctive name (such as ‘KFC’), but an abbreviation of a non-distinctive name is unlikely to be registrable. The CJEU’s decision in Strigl182 is somewhat stricter than prior UK practice under s 3(1) (c), which took into account factors such as the practice of using the abbreviation in the relevant trade, and will now be amended accordingly.183 The GC held that the sign ‘TDI’ consisted of the first letters of the words ‘turbo direct injection’ or ‘turbo diesel injection’ and was unregistrable.184 Initials, by contrast, may produce an acronym with an element of distinctiveness, permitting registration.185 2.78 Single letter or number marks are theoretically registrable, where not referable to

size, quantity, or quality, and more probably where shown in a distinctive form.186 In Joop! v OHIM187 an application to register an exclamation mark as a mark for a wide range of goods was refused. In Agencja Wydawnicza Technopol,188 the mark ‘1000’ was refused for publications (puzzle magazines). But in 32Red,189 the bare number 32 was held not to be descriptive of any characteristic of the proprietor’s gambling services, nor was its 32Red mark invalid.

178

But an attempt to rely upon the decision in Audi to register another slogan ‘Wir Machen das Besondere Einfach’ (‘We make special things simple’) failed:  Smart Technologies ULC v OHIM, Case C-311/11, [2012] ETMR 49. 179 See Pan 1/06 and the Manual. 180 Scranage ’s trade mark application [2008] ETMR 43. 181 Again, see ‘Best Buy’ (n 170). 182 In Alfred Strigl (n 75), marks combining descriptive words and the initial letters of the words were refused under Art 3(1)(c) of the Directive. 183 See PAN 1/13. 184 Audi AG and Volkswagen AG v OHIM, Case T-318/09, [2011] ETMR 61. 185 For consideration of the acronym point see Giorgio Armani SpA v Sunrich Clothing Ltd [2011] ETMR 13 at [26]–[30]. 186 See SAT.1 (n 35) and the Manual for the UK approach. 187 Joop! GmbH v OHIM, Case T-191/08, [2009] ECR II-00191 30 Sep 2009. 188 n 76. 189 n 112.

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Categories of Marks Devices/designs Device marks or logos may or may not be capable of distinguishing goods or ser- 2.79 vices, depending upon the banality and/or descriptiveness of the device. Some simple devices may lack sufficient distinctiveness,190 whilst others may be perfectly distinctive. Many devices incorporate items which are descriptive or which are common to the trade and these will naturally need to pass the usual tests of distinctiveness and compliance within s 3(1)(b), (c), and especially (d). Many examples are helpfully given in the Addendum to the UKIPO’s Manual of Trade Mark Practice (the Manual). Devices may be registered as part of a combination mark incorporating words, and the addition of a distinctive word mark to a less distinctive design (or vice versa) may render the whole registrable.191 The possibility of registering a device as a trade mark should be considered along- 2.80 side the alternative or additional possibility of registering it as a UK or Community registered design.192 A design may consist of ‘the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’. A product is ‘any industrial or handicraft item . . . packaging, get-up, graphic symbols and typographic typefaces’. Such a design may be registered if it is ‘new’ and has individual character and is not purely functional. Many devices capable of registration as a trade mark will also be capable of being registered as a design, without issues of, say, descriptiveness arising, although different issues as to novelty may arise. This may have many benefits, especially as the design need not (though may) be registered in relation to specific products. The design of the air-freshener spray at issue in Procter & Gamble v Reckitt Benckiser (UK) Ltd193 which was registered as a ‘blank’ shape (with no words etc shown on it), was held valid, in contrast to the numerous unsuccessful applications made by Procter & Gamble to register shape marks.194 Shapes Shapes of goods or of their packaging are specifically mentioned in s 1(1) as being 2.81 capable of being registered as trade marks. However, a number of special provisions restrict the types of shapes which may be registered (see s 3(2), Article 3(1)(e) of the 190 A ‘device’ consisting of half a ‘smiley’ face was refused registration by the GC:  Th e Smiley Company SPRL v OHIM, Case T-139/08, [2009] ECR II-3535. 191 Then again, some real distinctiveness is needed. In Now TV (n 38), simple device elements did not save a descriptive word mark from revocation. 192 See the Registered Design Act 1949 (much amended) and Regulation (EC) 6/2002. For registered and unregistered designs see Garnett, Davies, and Harbottle, Copinger & Skone James on Copyright (Sweet & Maxwell, 16th edn, 2011). 193 [2008] FSR 8. 194 eg Procter & Gamble Co v OHIM (Dishwasher tablets), Joined Cases C-468/01 to C-472/01, [2004] ECR I-5141, [2004] ETMR 88. NB: a design registration may be challenged on the basis of an earlier trade mark registration: Beifa Group Co Ltd v OHIM, Case T-608/11, 27 June 2013.

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Registrable Marks Directive, and Article 7(1)(e) CTMR). These have presented significant difficulties and engendered many appeals to the GC and CJEU.195 2.82 A shape can generally be graphically represented by the use of line drawings or

photographs of the shape of the goods or packaging to be used as the sign. Line drawings may be preferable to photographs, as tending better to show fine details, and up to six pictures (showing different aspects of the shape, labelled ‘side’, ‘front’, etc) can be filed. Black and white photographs are better than colour ones, unless the colour shown is an element of the mark. The UKIPO will not accept an application for a three-dimensional mark given solely by a verbal description of the sign and the picture must show the exact sign for which registration is sought, not just an example of such sign.196 On the other hand, the picture provided may be supplemented by words,197 and it may be necessary to expand on a simple picture by adding dimensions. 2.83 In addition to the care with which a shape must be represented graphically, there is

often real difficulty in proving that a shape has the capacity to function as a mark and this is harder for a shape which is the shape of the goods than for the shape of packaging. For liquid goods, the shape of the bottle/container will effectively be treated as the shape of the goods.198 2.84 The CJEU has said on a number of occasions that the criteria for assessing the dis-

tinctive character of three-dimensional marks which consist of the appearance of the product itself are the same as those for other categories of trade mark. However, and this is a big ‘but’, the average consumer’s perception may not be the same for a mark consisting of the appearance of the product itself as for a word or device mark unrelated to the appearance of the relevant goods. The Court’s view is that average consumers are not accustomed to identifying the origin of products by their shape or the shape of their packaging alone—the consumer will normally pay more attention to the label than the shape.199

195

Procter & Gamble Co v OHIM (n 194); Philips (n 33); Linde (n 72); Henkel (n 52); Mag Instrument, Inc v OHIM, Case C-136/02 [2004] ECR I-9165; Eurocermex SA v OHIM, Case C-286/04, [2005] ECR I-5797, [2005] ETMR 95; Deutsche SiSi-Werke (n 43); Dyson (n 17); Develey (n 45). 196 As required after Dyson (n 17). 197 The design of the ‘Kitchen-Aid’ mixer was accepted for registration by OHIM only upon adding this description to the drawing: ‘The mark consists of a fanciful . . . mixing machine configuration upon which the word Kitchen-Aid appears.’ Yet the infringement action concerned a mixer plainly branded ‘Kenwood’: Whirlpool (n 39). 198 See Henkel (n 52); ‘Yakult’ [2001] RPC 39; Develey (n 45); and Freixenet SA v OHIM, Joined Cases C-344/10 and C-345/10, 20 October 2011—the CJEU did not agree that consumers rely upon a label on a bottle, rather than on the bottle shape; the GC was wrong to reject a 3D mark for lack of labelling. 199 See again, Henkel, Mag Instrument, Deutsche SiSi-Werke, and Freixenet. Also, refusal of ‘mark’ consisting of the shape of a chocolate mouse: August Storck KG v OHIM, Case C-96/11, 6 September 2012. See too Kit-Kat, (n 210).

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Categories of Marks As a result, even after substantial use of the sign, it is more difficult to establish the 2.85 distinctiveness of a three-dimensional mark than a word or figurative mark. And the more banal the shape, and the more it takes or resembles the most likely shape for such a product, the more likely it is to be deemed devoid of distinctive character. Detergent bottles and tablets aplenty have been refused by the UKIPO and by the courts on this basis. Few shape marks have been accepted (since Philips, at least) without evidence of acquired distinctiveness. For instance, Jacob J would have refused to register the shape of the Viennetta ice-cream dessert, where the public recognised the appearance of the goods but (he found) did not treat it as a trade mark.200 Nor was the well-known Dualit toaster shape proved to operate as a trade mark, as it had been used with the word mark Dualit on it.201 Shapes which depart from the norm Only marks which ‘depart significantly from the norm’ of the relevant sector may 2.86 have the necessary distinctive character to fulfil the function of identifying the origin of the goods.202 This does not mean that a shape mark needs to have some fancy or ‘capricious’ addition or embellishment before it may be registered.203 For example, an unusual, tall loudspeaker shape, with no capricious addition was held to be distinctive of Bang & Olufsen.204 However, just departing from the norm may not confer distinctiveness: creating a fancy shape which may help to sell the goods will not necessarily mean that the shape will be capable of denoting trade origin.205 The GC has accepted that the public may be more likely to see a 3D shape as indicating origin when it is a perfume bottle, but the test remains the same.206 The public policy interests under s 3(1)(c) may also require the rejection of cer- 2.87 tain shape marks which are (possibly for technical reasons) substantially like other shapes commonly used in the sector.207 One might expect shape marks to have had greater success in achieving registra- 2.88 tion by relying on the proviso to s 3(1)(b)–(d). That has not proved to be the case, for even very substantial use of the shape may not have ‘educated’ the public into 200

Société des Produits Nestlé SA v Unilever plc [2003] RPC 35. Dualit (n 8). However, the mark was registered as a CTM. 202 eg Develey (n 45) at [81]; Mag (n 195); August Storck KG v OHIM, Case C-25/05 [2006] ECR I-5677 (sweet wrapper not distinctive); Chocoladefabriken Lindt (n 56): a Lindt chocolate bunny (with no name on the wrapping) was not inherently distinctive. 203 CJEU in Philips (n 33) at [49]–[50]. 204 Bang & Olufsen (n 65). However, the same Bang & Olufsen speaker application was remitted to OHIM where it was rejected again for registration, on the grounds that the distinctive shape is what added value to the speakers—as to which see 2.96 et seq. OHIM’s decision was upheld by the GC in Case T-508/08, [2011] ECR II-06975, [2012] ETMR 10. 205 Bongrain (n 73) at [27]: the sign was a cheese shaped like a flower. 206 ars Parfum Creation & Consulting GmbH v OHIM, Case T-104/08, [2009] ECR II-55: the standard atomiser shape in that case did not have distinctive character, see [40]. But see the shape and packaging marks in L’Oréal v Bellure, Case C-487/07, [2009] ECR I-5185, [2010] RPC 1. 207 Linde (n 72) at [73]. 201

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Registrable Marks thinking that the particular shape indicates a trade source rather than a type of product. In other words, shapes are often ‘limping’ marks, not carrying an independent trade origin message. The paradigm example is Philips. Worse, even a mark with acquired distinctiveness may be caught by s 3(2) (see 2.92). 2.89 For a CTM, the issue of acquired distinctiveness is exacerbated by the need to prove

distinctiveness across the Community; evidence of acquired distinctiveness for the Lindt chocolate bunny did not suffice to prove that the shape had become distinctive throughout the Community,208 but (according to OHIM) the shape of a 4-finger Kit-Kat is recognised widely enough in the EU to be registered for biscuits.209 The same mark was initially accepted for registration by the UKIPO for chocolate, cakes, and pastries but was rejected for chocolate on opposition by Cadbury. Survey evidence suggested a high level of recognition of the shape as of a Kit-Kat, but not that the public relied on the shape to identify the origin of the goods.210 2.90 Many shape marks have achieved registration: for example, the shape of a Gameboy

is registered as a CTM, whilst the shape of a London taxi and numerous bottle shapes are registered as UK marks. However, other marks, even if they do not fall foul of s 3(2), may be seen as devoid of distinctive character or descriptive and so will be refused on the basis of s 3(1)(b) or (c). 2.91 The case-law relating to three-dimensional trade marks consisting of the appear-

ance of the product also applies to figurative marks consisting of two-dimensional representations of the product (see Philips itself).211 If the figurative mark does not represent the product, no such special rule applies.212 Section 3(2) 2.92 There are significant additional difficulties in the way of registration of a shape as

a mark, in s 3(2):213 (2) A sign shall not be registered as a trade mark if it consists exclusively of— (a) the shape which results from the nature of the goods themselves, (b) the shape of goods which is necessary to obtain a technical result, or (c) the shape which gives substantial value to the goods.

The subsection reflects the public policy of keeping technically necessary or functional shapes available to all, and to prevent the registration of trade marks as an 208

See Chocoladefabriken Lindt (n 56). Similarly, the Bounty bar shape was not proved to have acquired distinctiveness: Mars, Inc v OHIM, Case T-28/08, [2009] ECR II-106. 209 Société des Produits Nestlé SA v Cadbury Holdings Ltd (shape of Kit-Kat) (n 56). 210 Société des Produits Nestlé SA’s Application (shape of Kit-Kat), BL O/257/13, 20 June 2013; appeal referred to the CJEU [2014] EWHC 16, 17 January 2014. The specification and the evidence differed at OHIM (n 56). 211 Also August Storck KG (n 56) (shape of a Werther’s Original sweet); one successful application was a DaimlerChrysler radiator grille: Case T-128/01 [2003] ECR II-701, [2003] ETMR 87. 212 See August Storck KG’s application , BL O/302/07 (AP), 9 October 2007. 213 Equivalent to CTMR, Art 7(1)(e) and Art 3(1)(e) of the Directive.

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Categories of Marks adjunct to a patent or design right so as to extend monopoly rights.214 It prevents shapes from being registered either where they are essentially functional, or where the mark is so fanciful that it is what adds value to the goods. This is something of a ‘Catch 22’ situation. Moreover, the provisions of s 3(2) are absolute, and cannot be overcome by evidence of acquired distinctiveness.215 Section 3(2)(a) excludes from registration signs which consist exclusively of a shape 2.93 ‘which results from the nature of the goods’ in the specification. There seems to be no reported case in which this subsection was applied, perhaps because proprietors are unlikely to choose a mark consisting of a shape which is exclusively the result of the nature of the goods, which would be unlikely to indicate origin. Where the nature of the goods is such that a variety of shapes could fall within the category, subsection 3(2)(a) will not apply. In Philips, as shavers could take many shapes, the attack under s 3(2)(a) failed.216 In another case, the GC held that a mark consisting of the shape of a bar of soap would not fail on this basis, as there could be other shapes for soaps.217 Section 3(2)(b) is much more significant. It excludes from registration shapes 2.94 which consist exclusively of a shape ‘which is necessary to obtain a technical result’. This reflects the public policy of enabling competing traders to use the same technology.218 Despite the wording of the provision, adding ‘non-essential characteristics with no technical function’ to the mark will not render it registrable, if all the essential characteristics of the shape perform a technical function. The essential characteristics must be assessed objectively from the point of view of the average consumer. In Lego Juris v OHIM,219 Lego had registered as a CTM a representation of a red Lego brick, for goods including ‘games and playthings’. The CJEU held that the mark was invalid; the addition of non-essential characteristics—‘minor arbitrary elements’—having no technical function did not prevent a shape from being caught by this absolute ground of refusal if all the essential characteristics of that shape had such a function.220 What is necessary is a major, non-functional, decorative, or imaginative element—to have a ‘surplus of form over function’.221 214

The CJEU in Philips (n 33) at [78]. Philips (n 33) at [75]; Benetton Group SpA v G-Star International BV, Case C-371/06, [2007] ECR I-7709, [2008] ETMR 5 at [27]. 216 [1999] RPC 809, 820. 217 Procter & Gamble Co v OHIM, Case T-122/99, [2000] ECR II-265, [2000] 2 CMLR 303, [2000] ETMR 580. 218 Th is is an area in which trade mark law and the law of unregistered and registered designs may overlap. 219 n 28. 220 See also AG Colomer in Philips (n 33) at [21]. One basis upon which the Kit-Kat shape mark was refused registration by the UKIPO—(see n 210)—was that the grooves in the chocolate bar were technical and functional in nature. Also, the shape was found to lack distinctive character for chocolate bars and biscuits, but not for cakes and pastries for which the application was accepted. 221 EKORNES ASA ’s application , BL O/017/06, 16 January 2006—shape of the base of a chair— registration was still refused under s 3(1)(b). 215

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Registrable Marks 2.95 According to the CJEU in Philips, the exclusion applies even if the shape represents

only one way of achieving the technical result, and one or more other shapes could achieve the same result.222 2.96 Lastly, s 3(2)(c) excludes from registration shapes which consist exclusively of the shape

‘which gives substantial value to the goods’. In Philips, the Court of Appeal emphasised that s 3(2)(c) was only concerned with shapes having substantial value. That required a comparison to be made between that shape and the shapes of equivalent articles.223 2.97 In ‘Magic Tree’224 Kitchin J considered the public policy underlying the provision

and held that an established goodwill associated with the mark, with substantial value, was not relevant because it is the shape itself which must add substantial value. The case concerned a mark consisting of the shape of a cardboard air freshener to be used in cars. The judge had found the marks to be distinctive, but there was nothing remarkable about the design of the marks which was of particular aesthetic significance to the average customer. Purchasers will be motivated to buy air fresheners for a number of reasons (such as for their scent), but nothing showed that the shape as such added substantial value to the goods. 2.98 It seems, therefore, that a consumer product may be designed to have an attractive

appearance without its shape adding substantial value to the goods. Whether that is the case for all goods is hard to say. Particular bottle shapes, for example, may not fall within s 3(2)(c), if the contents of the container also give substantial value to the goods, but in the case of a distinctively shaped bottle containing perfume, does the bottle shape add substantial value to the product? Perhaps not, as a number of perfume bottles have been accepted for registration. 2.99 In Benetton v G-Star, 225 G-Star had registered two Benelux marks, which were

deemed to be three-dimensional marks even though the graphical ‘representation’ was in words only, describing a particular style of jeans. G-Star claimed that the shape had acquired distinctiveness. It sued Benetton for infringement, which counterclaimed for invalidity, saying that the shapes determined the market value of the goods as a result of their ‘beauty or original character’. The Hoge Raad asked whether distinctiveness acquired before the trade mark application was filed saved the mark from Article 3(1)(e) (equivalent to s 3(2)); the CJEU said not. The judgment does not give greater guidance on the scope of s 3(2)(c). 2.100 In the re-run of Bang & Olufsen, 226 the GC held that the aesthetic characteristics

of the shape of the speaker were emphasised and the shape was perceived as ‘a

222 223 224 225 226

Philips (n 33) at [83]. See n 58, at 822. Julius Sämaan Ltd v Tetrosyl Ltd ‘Magic Tree’ [2006] FSR 42 at [96] et seq. Benetton Group SpA v G-Star International BV (n 215). Case T-508/08 (n 204).

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Categories of Marks kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point’. The design was an essential element of its branding and increased the appeal of the product. It therefore added substantial value to the goods and the trade mark application failed. Packaging, get-up, and trade dress Section 1(1) specifically provides that packaging may be registered as a mark. 2.101 Other distinctive features of trade dress or get-up may also be registrable signs. One unusual mark in this general category is the red tab sewn into the back pocket of Levi’s garments. This has been described as a ‘position mark’.227 Or one can think of Adidas’s mark of three stripes, defined by their position on items of clothing. Again, there may be real problems of distinctiveness with such marks, especially where some of the elements of the packaging or get-up consist of signs common to the trade. It may be hard to show that the average consumer will (without ‘education’ at least) see such signs as an indication of the origin of the goods, as opposed, perhaps, to their nature. See the discussion of s 3(1)(b)–(d) at 2.31–2.48. Marks may be registered in an attempt to protect a particular get-up, but a pro- 2.102 prietor may find that by the time such a mark has been registered, he wishes to update it. An attempt to get around this problem by registering a ‘ghosted’ mark, which consisted of a combination of the three-dimensional shape of a bottle, a label (excluding any legible wording), and colour, was rejected by the Court of Appeal as lacking distinctiveness.228 Colours Both device and word marks may be registered in a particular colour or colour 2.103 combination. Limiting the mark to particular colours may aid registration but will also limit the protection offered (marks registered in black and white are deemed to cover all colour permutations).229 Such marks are, however, different from marks which consist of a colour or combination of colours, whether to be applied to goods, packaging or perhaps the premises from which services are provided.230 Signs consisting of a colour or colours may be registered in the abstract, without 2.104 reference to a particular form, shape, etc or may be ‘spatially defined’, as long as

227

See Colloseum (n 141). It seems that the name would have been ‘Flash’: Procter & Gamble Ltd ’s trade mark applications [1999] RPC 673, [1999] ETMR 375. But an equivalent registered design may be valid: Procter & Gamble Co v Reckitt-Benckiser (UK) Ltd [2008] FSR 8. 229 See Phones 4u Ltd v Phone4u.co.uk. Internet Ltd [2007] RPC 5 and as to the impact of use of a mark in a particular colour, see Specsavers (n 142) at [37]–[41] and TPN1/2014. 230 See eg the BP petrol station marks at issue in BP Amoco plc v John Kelly Ltd [2002] FSR 5, or the colour orange for the toe of a sock (refused) in X Technology Swiss v OHIM, Case C-429/10, [2011] ECR I-00076. 228

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Registrable Marks they are signs (see 2.10 –2.15). Under the proposed changes to the CTMR and Directive, marks may include ‘colours as such’—how they are to be represented sufficiently clearly remains to be seen. 2.105 In Libertel 231 an application was made to register the colour orange for telecommu-

nications goods and services. The sign was shown in the application by an orange rectangle, just described as ‘orange’. The CJEU held that normally a colour is a simple property of things and cannot be presumed to constitute a sign. However, it may constitute a sign depending on the context in which it is used.232 That application referred only to the colour which was not ‘spatially defined’. In Heidelberger,233 the CJEU confirmed that a single colour might be capable of being a sign. However, it must still be clear, precise, self-contained, etc. Moreover, even if it does satisfy that requirement of certainty, registration will not be guaranteed. What else is needed to achieve registration was not an issue decided by the Court in Libertel, and there are still considerable problems in seeking to register a pure colour mark. It has been said that one needs to know not only what is within the registration, but also what is not within its scope.234 2.106 The sign must also be capable of graphical representation. Again, in Libertel it was

held that a sample of a colour could not of itself constitute a graphic representation as it was not sufficiently precise, durable, or objective (the criteria set out in Sieckmann235). In Heidelberger, the Court added that the graphic representation must be systematically arranged by associating the colours in a predetermined and uniform way—a reference to two or more colours ‘in every conceivable form’ would not constitute a sign.236 However, it could do so if combined with a sufficiently precise written description and/or (more usefully?) a recognised colour identification code; presumably, the Court contemplated use of a recognised colour identification scheme, such as Pantone, RAL, or Focoltone.237 2.107 The UKIPO’s Practice Amendment Notice (PAN) 2/07 deals with applications

to register colour marks, following Sieckmann, Libertel, and Dyson. It may now need to be read in the light of the CA in Cadbury (see 2.13). A mark consisting only of colour(s) will be graphically represented by a written description of the colour(s), together with identification of the relevant code(s) from an internationally recognised identification system, such as Pantone, sufficient to permit 231

Libertel (n 33). At [27]. 233 n 16. 234 See comments of Sir Timothy Lloyd in Société des Produits Nestlé SA v Cadbury UK Ltd (‘the colour purple’) (n 11) at [60]–[62]. 235 n 13 and see 2.10 et seq. 236 n 16 at [33]–[35]. 237 Libertel (n 33) was followed by two further cases, Heidelberger (n 16); and KWS Saat v OHIM, Case C-447/02, [2004] ECR I-10107, [2005] ETMR 86. See the section of the Manual on unconventional marks. The proposed legislative changes may not change this practice, if the mark must still be identified with precision. 232

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Categories of Marks someone inspecting the Register to identify the mark without ambiguity. It is not acceptable to refer to criteria which make it necessary to use specialist equipment or services to interpret the mark.238 The same criteria apply to marks consisting of several colours used in a particular manner; it is a question of identifying the marks unambiguously. Very similar criteria are applied by OHIM. Another problem is to show that a colour mark will indicate origin—showing 2.108 distinctiveness is not easy. Single colours or simple combinations of colours will be hard though not impossible to register. But even quite a complicated combination may be unregistrable, if it will be applied to goods in a non-uniform way, as it is likely that consumers would not remember the particular combination or see it as indicating origin.239 In GretagMacbeth, the GC therefore rejected as a CTM a combination of 24 coloured squares applied to the goods in an unsystematic way.240 Colour marks are more likely to be accepted if reliance can be placed on the proviso and the application is supported by sufficient evidence of acquired distinctiveness, although a high level of evidence will be necessary to overcome the primarily non-distinctive nature of simple colour marks.241 In the Cadbury colour purple case there was evidence of use of the colour from 1914, but the application still failed.242 Musical or sound marks Many types of sounds may be sought to be registered, but not all are easily rep- 2.109 resented graphically. Sound marks should benefit from the proposed changes to the Directive and CTMR, and it is anticipated that sound files will be acceptable to identify a sign—OHIM already stores them. Again, the requirement is for the mark to be adequately and clearly identified (see 2.10 –2.15), as the CJEU held in Shield.243 The case concerned a number of sound trade marks. Some consisted of a picture of a musical stave showing the first phrase of Beethoven’s ‘Für Elise’, another was described as ‘Sound mark, the trade mark consists of an onomatopoeia imitating a cockcrow’. The validity of the marks was challenged in infringement 238 eg a technical description of the Ty Nant blue water bottle was rejected because it was meaningless without using a spectrometer: [1999] ETMR 981, [2000] RPC 55. 239 Viking-Umwelttechnik GmbH v OHIM, Case T-316/00, [2002] ECR II-3715, [2003] ETMR 17. 240 GretagMacbeth LLC v OHIM, Case T-400/07, [2008] ECR II-00257. See also BCS SpA v OHIM, Case T-137/08, [2009] ECR II-4047, where the registration for vehicles (John Deere tractors) was ‘green for the vehicle and yellow for the wheels’. The colours were identified by the ‘Munsell’ system. The mark was found to have acquired distinctiveness in use. 241 See Heidelberger (n 16). In Duckham & Co ’s trade mark application [2004] RPC 28—decided before the CJEU’s judgment in Libertel (n 33)— the ‘colour green as added to and integrated with the goods’ was not proved to have acquired distinctive character. The colour red and a representation of a red container for tools etc was refused in Hilti Aktiengesellschaft ’s trade mark application, BL O/308 and O/309/09, 6 October 2009. 242 n 11. 243 Shield (n 8).

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Registrable Marks proceedings, and the CJEU held that sounds might be registered as marks as long as it was clear what the sign was, but that the Sieckmann requirements were unlikely to be satisfied when the sign was only a verbal description, a sequence of musical notes, without more, or ‘an onomatopoeia’. However, they might be satisfied where the sign was represented by full musical notation, using a stave and showing the clef, musical notes, rests, and accidentals. 2.110 As a result, in the UK sound marks will be accepted as being ‘graphically repre-

sented’ if they state that they are sound marks (otherwise they might be taken as a device mark consisting of music) and give adequate musical notation and indications of timing and pitch showing the clef, musical notes, accidentals, etc. A written description of the sound will not be accepted. The example given in the Manual of is of the well-known musical jingle for Direct Line insurance. The Manual states that such marks will rarely be accepted without evidence of acquired distinctiveness. The position seems to be rather less strict at OHIM. Some registered musical CTMs give similar details of tempo and instrumentation, although others are remarkably short on detail. There is also a current spate of applications for CTMs consisting of sonograms or musical notation (some of it quite simple) filed with an accompanying sound file which can be listened to via the OHIM website. Perhaps this will be the way forward. 2.111 As for sounds other than music, after Shield the difficulty is to describe the sound

sufficiently clearly in any graphic form to give a fixed point of reference, quite apart from showing that such a mark is distinctive. The sonogram plus sound file route would seem far more precise. Moving images 2.112 Marks consisting of moving images can be registered if the Sieckmann require-

ments are met, so that, for example, the sequence of images must be uniform. The mark can be graphically represented by a sequence of still pictures, coupled with a full written description of the nature of the mark, namely that the mark is a moving image, how the image changes, how many images are used, in what order, etc. An example of such a mark was is the BT Globe mark, described in words as ‘an animated sequence’ with a description of the sequence of images, and their colours, with accompanying images. Smell and taste marks 2.113 Smell marks are, not surprisingly, even more problematic. In the early days of the

1994 Act, two applications for smell marks were accepted by the UKIPO simply upon the basis of verbal descriptions, one example being ‘the strong smell of bitter beer applied to flights for darts’. However, it is clear that an application of that type would not now be found sufficiently precise and objective to achieve registration. The application in Sieckmann was for a mark described as ‘A balsamically fruity 48

Other Absolute Grounds for Refusal scent with a slight hint of cinnamon’ for a variety of services. It failed as insufficiently precise etc; it is also hard to see such a mark having distinctive character for services. In the UK, an application to register ‘the smell, aroma or essence of cinnamon’ for 2.114 furniture was rejected as too imprecise.244 An attempt to define the smell by reference to an electronic sensory analysis, giving a graphic profile of the smell, was not found to be an acceptable way to identify the mark, as it would have been unintelligible to anyone inspecting the Register, even with the necessary equipment, unless the details of the test conditions applied were also disclosed. Similarly, though OHIM was prepared to register ‘The mark consists of the smell 2.115 of fresh cut grass applied to the product’, for tennis balls,245 such an application would now fail, 246 and has since lapsed. The end result is that it is doubtful how the requirements of s 3 may be satisfied for 2.116 a smell mark. And whilst it has been suggested that one might register a taste as a mark, it is even harder to see how a taste might meet the requirements of the 1994 Act or the CTMR.

G OTHER ABSOLUTE GROUNDS FOR REFUSAL Further parts of s 3 deal with other ‘absolute’ grounds to refuse to register a sign 2.117 as a mark. Of these, s 3(4) and (5) are of minimal importance in practice, whilst s 3(3) and (6) are far more important. Immoral/deceptive marks Section 3(3)247 has two rather distinct parts:

2.118

A trade mark shall not be registered if it is— a) contrary to public policy or to accepted principles of morality, or b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origins of the goods or service).

The Manual identifies marks ‘contrary to current morality’ as being marks with 2.119 criminal or religious connotations, or explicit/taboo signs. The applicable standards will move with or, perhaps, a little behind the times. An element of reality is necessary: refusal to register the mark will not stop its use by the applicant or

244

John Lewis of Hungerford ’s application [2001] RPC 28. See decision of OHIM in Venootschap Onder Firma Senta Aromatic Merketing ’s application [1999] ETMR 429. 246 Eden v OHIM, Case T-305/04, [2005] ECR II-4705, [2006] ETMR 14, rejected ‘the smell of ripe strawberries’. 247 Equivalent to the CTMR, Art 7(1)(f). 245

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Registrable Marks others, so marks will only be refused where their use would plainly contravene a generally accepted moral principle. Mere offence to a section of the public, who would consider the mark distasteful, is not enough, as opposed to outrage or a real likelihood that the mark would significantly undermine current religious, family, or social values.248 The objection is to be considered by reference not to people who are unshockable, nor to people who are very easily offended, but to reasonable people of average sensibility and tolerance.249 Nevertheless, such an objection may block an application for a CTM even if it applies in only one Member State.250 Marks rejected include ‘Tiny Penis’,251 ‘Jesus’,252 ‘Toke’,253 ‘Inter City Firm’,254 and ‘Paki’,255 but ‘FCUK’, 256 ‘Bondage’, ‘Old Fart’, and a variety of suggestive or moderately distasteful marks have successfully been registered as UK marks and CTMs. 2.120 Section 3(3)(b) will be used to deny registration to otherwise distinctive marks which

are liable to lead to confusion or deception, and the subsection itself gives examples of such confusion being as to the ‘nature, quality or geographical origin of the goods or service’. There is no equivalent to the proviso to s 3(1), so a mark which has acquired distinctiveness in use may be refused registration where the reference to quality etc of the mark is deceptive rather than descriptive. 2.121 In Elizabeth Emanuel, 257 Mrs Emanuel was a celebrated dress designer, and had

registered the mark ‘Elizabeth Emanuel’. Her business, including the mark, had been assigned to a company with which she no longer had any connection. It applied to register another mark consisting of her name. She opposed that application and sought to invalidate the original mark, on the basis that the public would be deceived into believing that she was associated with the business and/or had designed the dresses it sold. The CJEU held that the subsection applies only where there is actual deceit or a sufficiently serious risk that the consumer will be deceived. It did not matter if the average consumer believed that Mrs Emanuel was the designer of the garments sold under the mark, for the characteristics and qualities of that garment remained guaranteed by the proprietor of the trade mark— that is to say, the function of the mark was undisturbed. The case came back before

248

Woodman v French Connection Ltd (‘FCUK’) [2007] RPC 1. PAKI Logistics GmbH v OHIM, Case T-526/09, [2011] ECR II-346 at [12]. 250 Couture Tech Ltd v OHIM, Case T- 232/10, [2011] ECR II-06469, [2012] ETMR 5—coat of arms of the USSR contrary to morality in Hungary and Latvia. 251 Ghazilian ’s trade mark application [2002] RPC 33. 252 Basic Trademark SA ’s trade mark application [2005] RPC 25, [2006] ETMR 24. 253 Toke UK Ltd ’s application [2007] ETMR 9, rejected for clothing but accepted for trays. 254 Sporting Kicks Ltd ’s application [2007] ETMR 10, this was a reference to a criminal gang of West Ham supporters, see the similar refusal of ‘www.standupifyouhatemanu.com’ in CDW Graphic Design Ltd ’s trade mark application [2003] RPC 30. 255 PAKI Logistics (n 249). 256 See n 248. 257 Elizabeth Emanuel (n 146). 249

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Other Absolute Grounds for Refusal the Appointed Person, who found that the designation ‘Elizabeth Emanuel’ was not deceptive per se as to the nature, quality, or geographical origin of the goods in respect of which it was used. Her appeal was dismissed.258 So a mark will only be refused on the basis of s 3(3)(b) if there is seen to be a real 2.122 threat or potential for deception. A mark which may be seen as referring to the nature of the goods may be registered if limited to goods of that nature. There may be a greater potential for deception where geographical names are concerned, especially if the place concerned has a reputation for goods of the sort. Such objections can be overcome by limiting the goods in the specification to goods with an appropriate connection to the place concerned. Section 3(4) No trade mark is to be registered if this would be contrary to any rule of UK or 2.123 European law. This provision protects the Red Cross and Crescent, and the Olympic and Paralympic words and symbols (the latter also covered by s 3(5), see 2.127). Section 3(4) also covers Protected Geographical Indications, Protected 2.124 Designations of Origin and Geographical Designations of Origin for Wines and Spirits, 259 affecting goods in Classes 29–33 (food and drink). See, for instance, the long-running saga of the attempts by the Consorzio del Prosciutto di Parma to control the manner of sale of genuine Parma ham.260 Closer to home, there are now over 50 UK protected food names, including Melton Mowbray pork pies, 261 Arbroath Smokies, and Whitstable Oysters. A wine growers’ cooperative based in the Mezzocorona area, which had used the 2.125 mark ‘Mezzacorona’ since 1983 for local wine, applied for a UK mark. An opposition under s 3(4) claimed that use of the name was contrary to the Regulation on wine names. The Court of Appeal held 262 that marks containing a geographical 258

See final decision BL O/317/06 (AP), 3 November 2006; and see 6.06. Regulations (EC) 510/2006 (as amended) for agricultural products and foodstuffs and 509/2006 for traditional specialities; Regulation (EC) 479/2008 (as amended) for wines, and Regulation (EC) No 110/2008 for spirits. 260 See eg Consorzio del Prosciutto di Parma v Asda Stores Ltd , Case C-108/01, [2003] ECR I-5121, [2003] 2 CMLR 21, [2004] ETMR 23. Another saga relates to ‘Bud’/‘Budweiser’ see eg Budějovický Budvar, Národní Podnik v Rudolf Ammersin GmbH, Case C-478/07, [2009] ECR I-7721, a re-run of Case C-216/01, [2003] ECR I-1361. Also Consorzio per la Tutela del Formaggio Gorgonzola v Käserei Champignon Hofmeister GmbH & Co KG, Case C-87/97, [1999] ECR I-1301, [1999] 1 CMLR 1203, [1999] ETMR 454. 261 See R (on the application of Northern Foods plc) v Secretary of State for the Environment, Food and Rural Aff airs [2006] FSR 29, [2007] 1 All ER 216. A reference to the CJEU (see [2006] EWCA Civ 337) was withdrawn. 262 Miguel Torres SA v Cantine Mezzacorona SCARL [2003] EWCA Civ 1861, [2004] RPC 26, [2005] ETMR 39; and Abadía Retuerta, SA v OHIM, Case T-237/08, [2010] ECR II-01583. Also Bavaria NV v Bayerischer Brauerbund eV, Case C-343/07, [2009] ECR I-5491; and Bayerischer Brauerbund eV v Bavaria NV, Case C-120/08, [2010] ECR I-13393, [2011] ETMR 11. For a case about cognac see Joined Cases C-4/10 and C-27/10, [2011] ETMR 53, [2011] ECR I-06131. 259

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Registrable Marks reference are permissible if they do not deceive263 and this mark had been used since 1983 without evidence that anyone had been confused by it. It concluded that such a harmless established brand should not be refused registration by s 3(4). 2.126 Sections 57–9 of the 1994 Act protect national emblems etc. Section 58 reflects

Article 6 ter of the Paris Convention and protects names and ‘abbreviations’ of international intergovernmental organisations. Registration and use of such a mark is not allowed if it may give the impression that there is a connection between the notified party and the proposed registrant/user of the mark. The burden of proof is on the applicant.264 In a case in the UK, s 58 was relied upon by the International Monetary Fund which sought an injunction to protect its registered initials, IMF. Sections 3(5) and 4 2.127 Section 3(5) refers to the grounds for refusal to register a mark which are set out

in s 4. This lists a number of national flags, emblems, royal arms, etc which are not registrable as trade marks, as well as marks which would tend to lead to the belief that the applicant has royal patronage, 265 and symbols and words connected with the Olympics. 266 For instance, the UKIPO refused registration of a mark which included a representation of a crown on the background of a Union Jack.267 Section 99 of the 1994 Act goes further, and makes it an offence to use a copy of the Royal Arms in connection with any business or so as to imply a Royal clientele. 2.128 Similarly, the CJEU268 upheld an objection to a mark resembling the Canadian

maple leaf, as the protection of State emblems is not subject to there being a connection, in the mind of the public, between the trade mark and the emblem. The protection may apply as long as the mark would be perceived by the average member of the public as an imitation of the emblem. Similarly, the GC refused to permit registration of a coat of arms closely resembling the British coat of arms, including both lion and unicorn.269

263 See eg Verbraucherschutzverein eV v Sektkellerei GC Kessler GmbH & Co, Case C-303/97, [1999] ECR I-513. 264 See Concept-Anlagen und Geräte nach ‘GMP’ Für Production Gmbh v OHIM, Case T-127/02, [2004] ECR II-1113, [2004] ETMR 8. 265 Queen Diana trade mark [1991] RPC 395. 266 See the wide provisions of the London Olympic Games and Paralympic Games Act 2006. 267 Th e Combined Armed Forces Federation , the appeal to the AP is BL O/254/10, 15 July 2010. 268 American Clothing Associates NV v OHIM, Joined Cases C-202/08 and C-208/08, [2009] ECR I-6933, [2010] ETMR 3. And see PAN 1/10 for UK practice following this case. 269 Ernst August Prinz von Hannover Herzog zu Braunschweig und Lüneburg v OHIM, Case T-397/09, [2011] ECR II-00159.

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Bad Faith

H BAD FAITH Section 3(6): Bad faith Section 3(6) prevents the registration of any mark where the application is made 2.129 in bad faith. There is no direct equivalent under Article 7 CTMR. Bad faith in applying for a CTM may only be relied upon as a ground to seek its invalidity by Article 51(1)(b).270 Article 8(3) CTMR provides that the proprietor of a trade mark may oppose an application to register his mark where the application is made by his agent or representative without the proprietor’s consent, unless the agent is able somehow to justify his action.271 Article 11 similarly permits the ‘true’ proprietor to oppose the use of such a CTM. The concept of bad faith is not defined in the 1994 Act or the CTMR, but was 2.130 considered in a number of cases in the UK 272 and in the GC, before the CJEU dealt with the point in the Lindt ‘Chocolate Bunnies’ case in 2009.273 The concept of bad faith is an autonomous concept of EU law to be given a uniform interpretation across the Community.274 An applicant will be deemed to have acted in good faith until the contrary is proved 2.131 and this may be important where (as with CTMs) the first-to-file (in principle) gets priority. Prior to Lindt, questions arose as to the extent to which bad faith should be judged objectively as opposed to subjectively, and as to the level of knowledge of third party rights which is necessary. The CJEU held that there is an element of objectivity in the knowledge to be attributed to the applicant.275 Since then the Court of Appeal has held in Cipriani that ‘Attention is to be focussed on the position at the time of the application for registration, and the intention and state of mind of the applicant at that time, although they are subjective factors, are to be determined by reference to the objective circumstances of the particular case.’276 The background to Lindt was that numerous EU businesses had been producing 2.132 chocolate bunnies for Easter since the 1930s. Lindt’s particular shape of bunny had been made since the 1950s, and had been sold in Austria since 1994. In 2000 it registered a three-dimensional CTM consisting of a chocolate bunny in golden foil, with a red ribbon and a bell round its neck, and the words ‘Lindt Goldhase’ 270

See 5.66. See eg DEF-TEC Defense Technology GmbH v OHIM, Case T-6/05, [2006] ECR II-02671. 272 There is a useful summary of the position prior to the Lindt case in Arnold J’s decision at fi rst instance in Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2009] RPC 9. 273 Chocoladefabriken Lindt & Sprungli AG v Franz Hauswirth GmbH, Case C-529/07, [2009] ECR I-4893, [2009] ETMR 56, 11 June 2009. 274 Malaysia Dairy Industries Pte Ltd v Ankenævnet for Patenter Og Varemærker, Case C-320/12, [2013] ETMR 36, 27 June 2013 at [29]. 275 Lindt Case C-529/07 (n 273) at [39]. 276 [2010] EWCA Civ 110, [2010] RPC 16 at [52]. 271

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Registrable Marks on its side.277 Prior to registering the CTM, Lindt had sued others selling identical but not similar bunnies. It sued Franz Hauswirth, which had sold its own gold-wrapped chocolate bunnies for some years, for infringement and the Austrian court found that there was a likelihood of confusion between the parties’ goods. Hauswirth counterclaimed for invalidity, saying that the mark had been registered in bad faith. 2.133 In answering the questions posed by the Austrian court, the CJEU held, first of

all, that the relevant time for assessing whether a mark was registered in bad faith is the time of filing the application for registration.278 It held that bad faith must be the subject of an overall assessment and listed three factors for the Austrian Court to take into account: (i) whether the applicant knows or must know that a third party is using an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent a third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought. Those factors are only examples of the sort of matters which can be taken into account in order to decide whether the applicant was acting in bad faith at the time of filing the application.279 Each such issue will be highly sensitive to the circumstances of the particular case.280 (1) No genuine intention to use the mark 2.134 One possible indication of bad faith is applying for a mark without intending to use it, solely to block a third party from entering the market.281 This is a significant point, because the CTMR and Rules (unlike the 1994 Act) impose no requirement upon an applicant for a CTM to intend to use the mark. Nevertheless, in Internetportal,282 the CJEU went on to hold that trade marks might have been registered in bad faith if they had been applied for only to enable the applicant to apply for domain names broadly consisting of generic terms.

277 It seems that the application was only accepted because of the use of the Lindt name on the bunny; a bunny shape mark without wording was refused registration as a separate CTM: Chocoladefabriken Lindt, Case C-98/11 (n 56). 278 The same conclusion had already been reached in the UK, see HOTPICKS [2004] RPC 42. Later evidence may be relevant if it casts light backwards on the position as at the application date: Alcon (n 123). 279 See Peeters Landbouwmachines BV v OHIM, Case T-33/11, 14 February 2012 at [20]. 280 Boxing Brands Ltd v Sports Direct International plc and ors [2013] EWHC 2200, [2013] ETMR 48, 25 July 2013 at [79]. 281 Lindt (n 273) at [44]. 282 Internetportal und Marketing GmbH v Richard Schlicht, Case C-569/08, [2010] ECR I-04871, [2010] ETMR 48. The proprietor registered ‘&R&E&I&F&E&N&’ when it wanted the domain name www.reifen.eu, ‘reifen’ meaning tyres in German.

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Bad Faith In the UK, a lack of intention to use a mark has always affected its validity, because 2.135 s 32(3) requires an applicant to sign a statement that the mark is being used by him or with his consent, or that he has a bona fide intention that it should be so used. This affects marks which the proprietor has no intention of using at all, or marks for which the applicant seeks too broad a specification. In Demon Ale 283 the applicant had sought to register a mark (an anagram of ‘lemon- 2.136 ade’) for beer, only to prevent others from doing so, as he disapproved of ‘alcopops’. The application was refused. In Ferrero 284 the proprietors had filed over sixty applications for marks including the word ‘KINDER’, but had only used six of them. They could not rebut the inference that they had no intention of using all of those marks. The unused trade mark registrations were revoked. In Reef 285 Pumfrey J held that the intention must be to use the mark to indicate origin. An application for a mark consisting of the name of a pop group for ‘promotional or souvenir articles’ of clothing was given the benefit of the doubt, for the mark might also be used to indicate origin. In Laboratoire de la Mer trade marks286 it was suggested that applying to register a 2.137 mark for a much wider specification of goods or services than those for which the proprietor intends to use the mark will also amount to bad faith. There may be a fine line to be drawn in some cases as to whether a broad application is made in bad faith, or out of acceptable commercial caution to leave scope for natural business expansion.287 (2) Repeat applications The OHIM Manual suggests that applying for a CTM when the mark has been 2.138 cancelled for bad faith in a Member State, or applying to register a mark to replace one which is liable to be revoked for non-use, would indicate bad faith. But in pelicantravel.com,288 the GC held that the mere fact that an application largely repeats an earlier registration is not proof of bad faith, especially where the proprietor does not know of any challenge to the earlier mark when making the new application. (3) Third party rights Bad faith is most frequently alleged, however, on the basis that the application is 2.139 made knowing that the mark belongs to a third party or assuming that the third party would wish to register the mark for itself. This may be done with a view to exploiting someone else’s goodwill, perhaps by using a celebrity’s name without his

283

[2000] RPC 345; see too Betty ’s Kitchen Coronation Street trade mark [2000] RPC 825. [2004] RPC 29 (AP). 285 [2002] RPC 19. 286 [2002] ETMR 34, [2002] FSR 51. 287 See eg Minerva trade mark [2000] FSR 734. See also the UKIPO’s Classification Guide as to wide specifications. Contrast eg Psytech International Ltd v OHIM, Case T-507/08, [2011] ETMR 46, 7 June 2011 at [88]–[89]. 288 pelicantravel.com s.r.o v OHIM, Case T-136/11, 13 December 2012. 284

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Registrable Marks permission, or in hope of selling the mark to him for a profit, or where a distributor or agent registers a mark properly belonging to his principal.289 Knowledge of another’s rights in the mark may be actual or presumed.290 Failure to carry out appropriate checks for third party rights before choosing a mark, in particular by failing to check the Register, may also indicate that a mark was applied for in bad faith.291 2.140 In Melly ’s trade mark application292 the applicant sought to register the word marks

FIANNA FAIL, FINE GAEL, and SINN FEIN. The political parties Fianna Fail and Fine Gael opposed the application. The applicant’s strategy was to ‘bait’ them into a deal. The AP found bad faith: the opponents were exposed to a risk of infringement proceedings and of commercial use of their names, to obtain an economic advantage and exercise political control through licensing conditions. 2.141 In Lindt, the CJEU considered the impact of the applicant’s knowledge of the exist-

ence of its competitors’ confusingly similar marks. It held that mere knowledge of such use will not establish bad faith, but the question is to be tested in the light of the applicant’s intentions, which may or may not be legitimate. If the applicant wants to register an established sign, to protect its position from competition by a newcomer in the market, that may be legitimate.293 Or if the applicant is aware that another is using the same mark for different goods or services, it may have legitimate commercial reasons to register it.294 2.142 However, if the applicant’s sole aim is to compete unfairly with a competitor who

has obtained some degree of legal protection for his mark, that is likely to amount to bad faith.295 In particular, the CJEU said that where the mark consists of the entire shape and presentation of the product, it may be easier to establish bad faith where the competitor’s freedom to choose the shape of a product and its presentation is restricted by technical or commercial factors. In such circumstances, the registration, if valid, would prevent competitors from marketing similar products.296 2.143 However, most cases are more nuanced and it is difficult to prove subjective dis-

honesty. In Gromax,297 since much cited,298 Lindsay J said that bad faith includes not only dishonesty but also ‘some dealings which fall short of the standards of 289

Nonogram trade mark [2001] RPC 21; Travelpro trade mark [1997] RPC 864; Mickey Dees (Nightclub) trade mark [1998] RPC 359; Jules Rimet Cup Ltd v Football Association Ltd [2008] FSR 10. 290 See Lindt at [39]. 291 See by analogy Och-Ziff (n 2) (considering honest practices) at [143]; and see Frost Products Ltd v FC Frost Ltd [2013] EWPCC 34, [2013] ETMR 4. 292 Melly ’s trade mark application [2008] ETMR 42. 293 Lindt at [49]; see also Peeters (n 279). 294 Boxing Brands (n 280) at [100]; 32Red (n 112). 295 Lindt at [47]—[51]. 296 Lindt at [50] and see Cipriani (n 272) at [52]. 297 Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367. 298 See eg Twinsectra Ltd v Yardley [2002] 2 AC 164; and Chinawhite [2004] EWCA Civ 1028, [2004] 1 WLR 2577, [2005] FSR 10.

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Bad Faith acceptable commercial behaviour observed by reasonable and experienced men in the particular area’. There is a subjective element to the test: the tribunal must ascertain what the person knew about the transaction or other matters in question and then decide whether, in the light of that knowledge, his conduct was dishonest judged by the ordinary standards of honest people. His own standards of honesty are irrelevant to the objective element. Trade mark registrations are not there to help those with ‘low moral standards’.299 The principles set out by the CJEU in Lindt were foreshadowed by Arnold J at first 2.144 instance in Cipriani.300 He rejected an argument that ‘any party who seeks to take exclusively for himself a trade name which he knows he shares with others is acting in bad faith’. There may be no bad faith where there is genuine conflict between the trade mark rights of different traders. For instance, it would be acceptable for someone with goodwill in an unregistered mark to apply to register it to strengthen his position against a prospective defendant who he would otherwise sue for passing off, or for an applicant to register to secure exclusivity in the bulk of the Community, while knowing that third parties have local rights in certain areas.301 The position will be very different if the trade mark applicant does not have exclu- 2.145 sive or shared rights, but is seeking to register his mark knowing that it is the mark of another trader. So, for instance, in Maslyukov,302 the appellant knew that the marks were the names of three distilleries that were no longer functioning, but Diageo was continuing to mature, bottle, and market whisky made there. It was held that he was seeking to appropriate the reputation of the distilleries and that reasonable men in the trade would have considered that the filing of the applications fell short of the standards of acceptable commercial behaviour. Diageo’s opposition based on s 3(6) succeeded. In Ian Adam,303 the respondent had worked with a well-known voice-coach. After 2.146 his death she applied to register his name as a trade mark for her own benefit, taking advantage of the surviving goodwill and reputation attaching to the name which properly belonged to his estate. The application was held to have been made in bad faith. In Simmons trade mark,304 similarly, an application which was specifically made to take advantage of the residual goodwill and reputation in a once well-known mark was found to have been made in bad faith. In Frost,305 the claimant had used its mark for many years in Canada but had not 2.147 traded in the EU before registering the mark as a CTM. The defendant had used the 299 300 301 302 303 304 305

Chinawhite (n 298) at [24]. n 272 at [186] et seq. And see Och- Ziff (n 2) at [38]–[41]. Maslyukov v Diageo Distilling Ltd [2010] EWHC 443 (Ch), [2010] RPC 21. Campbell v Hughes (Ian Adam trade mark), [2011] RPC 21, AP. BL O/468/12 (AP), 26 Nov 2012. See Frost Products (n 291) at [132]–[137].

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Registrable Marks same name as a mark in the UK, again for many years. Vos J considered that relevant factors to take into account included the claimant’s knowledge of the defendant’s use, its intention to prevent it marketing a product, and the extent of the reputation enjoyed by the defendant’s sign. He found that the claimant’s vice president either knew of or ‘deliberately turned a blind eye’ to the defendant’s business, failed to tell his trade mark attorneys about it, and ‘decided that he would steal a march on the Defendant once it was discovered the Defendant had no registered trade mark’. The CTM was held invalid for bad faith. 2.148 In previous editions of this book, we suggested that an application might also be

deemed to be made in bad faith if the applicant was seeking to register a mark well known abroad but not yet used or registered here, perhaps to take advantage of it or to force the foreign owner to pay the applicant for the mark,306 not unlike the practice of ‘cybersquatting’.307 However, whether knowledge of foreign rights indicates that an application is made in bad faith depends on the particular facts. In Malaysia Dairies,308 Yakult and Malaysia Dairies both used bottles of a particular shape and each of them had some national trade mark registrations for the shape. They had reached an agreement as to the use and registration of their respective bottles in a number of countries. Malaysia Dairies applied to register the mark as a Danish national mark, and Yakult opposed this on the basis that the application had been made in bad faith due to Malaysia Dairies’ knowledge of Yakult’s foreign marks. The CJEU held that knowledge of the foreign marks was not enough, by itself, to show bad faith, but all the surrounding circumstances needed to be considered by the Danish court.

I COLLECTIVE AND CERTIFICATION MARKS 2.149 In addition to trade marks used to indicate the trade source of goods or services,

it is possible to register collective and certification marks. These do not indicate individual trade origin. Collective marks indicate that goods/services emanate from a member of a trade association, whereas certification marks indicate the characteristics of the goods/services and can be used by anyone who satisfies the conditions of use of the mark. Both types of mark must be examined for registrability (under the special rules for distinctiveness of paragraph 2 of Schedules 1 and 2 respectively). For instance, registration of a mark including the words ‘Chartered

306 See eg (under the 1938 Act) Rawhide trade mark [1962] RPC 133: the application was (ostensibly, at least) refused because it was considered that the applicant had no intention to use the mark, rather than because of distaste at his business methods. 307 See 8.52 et seq. 308 Malaysia Dairy Industries Pte Ltd v Ankenævnet for Patenter Og Varemærker, Case C-320/12, [2013] ETMR 36, 27 June 2013. And note the changes in Art 5(3) of the proposed Directive, Art 8 of the proposed CTMR.

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Collective and Certification Marks Financial Analyst’ as a collective mark was refused as deceptive where no Royal Charter was in place.309 The UKIPO will also need to approve the regulations under which the marks are to be used.310 A collective mark is used to identify the goods or services of the members of an 2.150 association which owns the mark, and whose members use the collective mark in accordance with regulations filed at the UKIPO. The mark is a sign of membership. Members who are authorised users of the collective mark obtain rights similar to those of a licensee of an ordinary mark. Failure of the proprietor of the collective mark to secure observance of the regulations can result in the mark being revoked.311 Under s 49 and Schedule 1, collective marks may consist of all types of signs, 2.151 including geographical names, as long as this does not prevent the use of such signs by others in accordance with honest practices in industrial or commercial matters.312 Schedule 1 largely follows the scheme of the 1994 Act for ordinary trade marks, with some special grounds for revocation (paragraphs 13 and 14 of Schedule 1), and a right for an authorised user of the collective mark to bring proceedings in his own name (paragraph 12 of Schedule 1). Under s 50 and Schedule 2, certification marks may be registered and should indi- 2.152 cate that goods or services have a particular ‘origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics’. Paragraph 3 of Schedule 2 again provides that signs indicating geographical origin may be registered as certification marks, without prejudice to the rights of third parties to use the mark descriptively in accordance with honest practices. The UKIPO’s practice is to allow the registration of geographical names as certification marks as long as their use will be likely to indicate certification, and not just geographical origin. Certification marks have existed under English law for many years. Examples are 2.153 ‘Woolmark’, the ‘Kite’ mark of the British Standards Institute, and ‘Stilton’. ‘Legal Aid’ was registered as a certification mark for legal services. Regulations as to the use of a certification mark must be approved by the Registrar. 2.154 The applicant for the mark must not carry on a business in the goods or services certified, and is therefore likely to be a regulatory body or trade association. If the rules of the association are not enforced the mark can be revoked.313 Paragraphs 13, 14, and 15 of Schedule 2 deal with infringement and revocation.

309

CFA Institute ’s application [2007] ETMR 76. See the Manual, Ch 4. 311 See ‘God’s Vineyard Ministries’, O/079/11, 25 February 2011, an example of a collective mark being revoked on this ground. 312 Sch 1, para 3. 313 But see Sea Island Cotton [1989] RPC 87. 310

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3 R EL ATIVE GROUNDS FOR R EFUSA L OF R EGISTR ATION

A ‘EARLIER TRADE MARKS’ B EXAMINATION FOR EARLIER MARKS C ‘EARLIER RIGHTS’ D GENERAL SCHEME OF SECTION 513 E SECTION 51: IDENTICAL MARKS/ IDENTICAL GOODS OR SERVICES F SECTION 52: IDENTICAL OR SIMILAR MARKS/IDENTICAL OR SIMILAR GOODS G INTERDEPENDENCY PRINCIPLE

H SIMILARITY BETWEEN THE MARKS I SIMILARITY OF GOODS/ SERVICES J SECTION 53: DAMAGE TO A MARK WITH A REPUTATION K WITHOUT DUE CAUSE L SECTION 54: PROTECTION OF NONTRADE MARK RIGHTS M OTHER EARLIER RIGHTS N SECTION 55: CONSENT O SECTION 7: HONEST CONCURRENT USE

3.02 3.07 3.10 3.12

3.14

3.25

3.33 3.43 3.50 3.73 3.76 3.82 3.86 3.88

3.28

The relative grounds for refusal of registration are set out in s 5 of the Trade Marks 3.01 Act 1994 (the 1994 Act) and Article 4 of Directive (EC) 2008/95 (the Directive). Relative grounds for refusal of a Community Trade Mark (CTM) application are set out in Article 8 of Regulation (EC) 207/2009 (CTMR). These provisions prevent the registration of marks which conflict with earlier registered or unregistered marks and various other earlier unregistered ‘trade mark’ rights or other rights, such as copyright.

A ‘EARLIER TRADE MARKS’ Earlier trade marks for the purposes of a UK application are defined in s 6. They 3.02 consist of trade marks with an earlier date of filing, priority, or seniority than the trade mark under examination. For UK applications, the earlier trade marks to be taken into account in addition to UK marks are CTMs and UK and EU international trade marks (namely, marks registered under the Madrid Protocol in the UK or the Community). Earlier registered marks are deemed to have the minimal 61

Relative Grounds for Refusal of Registration level of distinctiveness to be validly registered,1 unless and until their validity is challenged. 3.03 Pending applications are treated as ‘earlier marks’. If an opposition based on

a trade mark application would succeed on the merits if that application were to proceed to registration, the United Kingdom Intellectual Property Office’s (UKIPO) practice is to stay the opposition and the opposed application until a decision has been taken on the registration of the earlier application.2 Earlier marks also include marks which lapsed up to one year before the date of application, unless there was no use of the lapsed mark for the two years before expiry of the registration.3 3.04 The earlier marks to be examined in relation to a CTM application are defined

in Article 8(2) CTMR and similarly include earlier CTMs, marks registered in Member States and the Benelux, international marks having effect in a Member State or the Community, applications for all such marks, and well-known trade marks. 3.05 It is important that only ‘live’ earlier trade marks may block new registrations.

So where in opposition or invalidity proceedings reliance is placed on an earlier trade mark which has been registered for more than five years, its proprietor may be put to proof that the mark is in use.4 If use cannot be shown, the opposition (or invalidity application) will fail, and if use can be shown for only part of the earlier specification, the opposition can be based only upon the used goods/services.5 It generally makes sense, therefore, for an applicant to put the opponent to proof of use of any mark registered for more than five years. 3.06 Section 6(1)(c) also protects earlier unregistered trade marks which are ‘well-known’

within the meaning of the Paris Convention and World Trade Organization (WTO) agreement; they are further defined in s 56 of the 1994 Act. Such marks must be well known throughout the territory of the Member State of registration or in a substantial part of it.6

1

Formula One Licensing BV v OHIM, Case C-196/11, 24 May 2012. See TPN 3/3004 and Talat Ismail ’s trade mark applications, BL O/231/07 (AP), 23 July 2007. OHIM takes a similar approach. 3 See s 6(3) of the 1994 Act. 4 See s 6(A) and Trade Marks (Proof of Use, etc) Regulations 2004, SI 2004/946. 5 See Reckitt Benckiser (España), SL v OHIM (‘Aladin’), Case T-126/03, [2005] ECR II-2861, [2006] ETMR 50; Kureha Corp v OHIM, Case T-487/08 [2010] ECR II-00111, [2010] ETMR 56, 16 June 2010; and 5.26 et seq on partial revocation. 6 See Nuño v Franquet , Case C-328/06, [2007] ECR I-10093, [2008] ETMR 12; Melly ’s trade mark application [2008] ETMR 42; Bimbo SA v OHIM, Case T-569/10, 20 March 2013. See also 7.124. 2

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Examination for Earlier Marks

B EXAMINATION FOR EARLIER MARKS When a UK trade mark application is made, at present the UKIPO will search 3.07 for conflicting marks based upon the criteria in s 5(1) and (2)—discussed later. No search will be made for other ‘earlier rights’.7 If the UKIPO considers that there are potential conflicts, 8 the examination results will be passed on to the applicant, to decide whether to proceed with or amend his application, or perhaps to try to reach an accommodation with the owners of the earlier rights. If the application is pursued, the owners of such earlier marks who have opted for notification will be informed by the UKIPO about the new application. They must decide whether to oppose it, for the Registrar may only refuse an application on relative grounds if an opposition is successfully raised by the proprietor of an earlier mark or right. The same procedure is currently followed at OHIM. A search is carried out by 3.08 OHIM of CTMs and CTM applications, but a search of the national trade mark registers in Member States will only be carried out at the request of the applicant.9 The search reports are sent to the applicant, and upon publication of the CTM application OHIM will send notice of the application to the proprietors of any earlier CTMs or CTM applications considered potentially to conflict with the new application.10 As a result, the existence even of an identical earlier trade mark will not prevent 3.09 the acceptance of an application at the examination stage; the Offices’ powers are only to refuse marks which fail the absolute tests discussed in Chapter 2. It is for the proprietors of earlier marks/rights to decide whether they wish to challenge an application by lodging and pursuing opposition proceedings (as to which see 4.37 et seq). Many trade mark proprietors employ a ‘watching service’ to try to ensure that they are forewarned of any applications that may conflict with their marks, so as to be able to lodge an opposition. This will be of increasing importance if ex officio searches cease to be made, as is currently proposed. The owner of a prior mark/ right may consent to the registration of the ‘conflicting’ mark.11

7 Prior to 1 October 2007, and The Trade Marks (Relative Grounds) Order 2007 the Intellectual Property Office (IPO) could refuse conflicting marks ex officio. Now the earlier right owner must oppose the application. 8 Its initial view does not pre-judge the result of any subsequent opposition proceedings brought in the Registry. Generally on notification and comparison, see PAN 8/2007. 9 Art 38(2). 10 Art 38(6) and (7). But see the proposed changes in Art 41 of the Draft Directive, and the proposed deletion of Art 38 CTMR. 11 See s 5(5).

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Relative Grounds for Refusal of Registration

C ‘EARLIER RIGHTS’ 3.10 Earlier rights are defined in s 5(4). They are rights which would entitle their owner

to prevent the use of the mark applied for by virtue of any rule of law in the UK. The most significant category of such rights in practice is defined in s 5(4)(a) and consists of unregistered trade marks or other signs used in the course of trade and protected by the law of passing off. Section 5(4)(b) protects rights which are not in the nature of a trade mark, such as the rights conferred by copyright, design right, or registered designs.12 3.11 Article 8 CTMR similarly protects non-registered trade marks and signs used in

the course of trade of more than local significance.13

D GENERAL SCHEME OF SECTION 513 3.12 Section 514 distinguishes between different ‘levels’ of conflict between marks and

earlier registered trade marks. First, s 5(1) applies where the conflict is between identical marks for identical goods/services. Secondly, s 5(2) applies to conflicts between identical marks for similar goods/services, similar marks for identical goods/services, and similar marks for similar goods/services. For this subsection, it is necessary to show that the similarities will cause a likelihood of confusion. Section 5(3) applies where the earlier mark has a reputation, the mark applied for is identical or similar to it, and the use of the later mark would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier mark. It applies whether the goods or services concerned are identical, similar, or dissimilar.15 3.13 The question of what amounts to similarity either between two marks or between

the goods or services upon which those marks are to be used is central to s 5(2) and highly relevant to s 5(3). For s 5(1), by contrast, the main issue is what is meant by ‘identical’. The same considerations apply in relation to the infringement of trade marks. There have been very many decisions dealing with these issues, whether in the context of opposition to trade mark applications, challenges to registered marks, or infringement proceedings. In addition to the discussion of s 5, many of those decisions are further considered in relation to invalidity in Chapter 5 and infringement in Chapter 7.

12 See Garnett, Davies, and Harbottle, Copinger & Skone James on Copyright (Sweet & Maxwell, 16th edn, 2011). Note the very wide definition of a design for both registered and unregistered Community Design Right. NB the expansion of protection for geographical indications and traditional terms in Art 4 proposed Directive, Art 7 proposed CTMR. 13 As to the meaning of rights of local significance see 3.82 et seq. 14 And CTMR, Art 8. 15 As originally enacted, s 5(3) applied only to dissimilar goods/services. See 3.50.

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Section 5(1): Identical Marks, Goods, or Services

E SECTION 51: IDENTICAL MARKS/IDENTICAL GOODS OR SERVICES Section 5(1) may prevent the registration of a trade mark which is identical to an 3.14 earlier trade mark in relation to goods or services which are also identical to goods or services within the specification of the earlier mark.16 Identical marks/signs There are two issues as to what is meant by an identical mark and sign. First, what 3.15 is the impact of small differences between the marks? Secondly, what is the position if one mark contains the whole of the other mark, but includes additional material, whether words or a device? The leading case on identity of marks in the Court of Justice of the European Union 3.16 (CJEU) is Arthur et Félicie.17 The claimant owned a French trade mark ‘Arthur’, a figurative mark in a distinctive handwritten form, for clothing in Class 25. The defendant sold clothing for children, including a range named ‘Arthur et Félicie’, and had registered ‘Arthur et Félicie’ as a French mark and applied for a CTM. The claimant sought a declaration of invalidity of the ‘Arthur et Félicie’ mark. On a reference from the French court, the CJEU held that ‘identity’ had to be interpreted strictly, meaning that the junior mark ‘reproduces, without any modification or addition, all the elements’ of the earlier mark.18 This was important, given the absolute protection given under s 5(1) (Article 5(1)(a) of the Directive) and could not be extended to those situations which were more specifically protected by s 5(2) (Article 5(1)(b) of the Directive). However, the CJEU added that the perception of identity between the sign and the trade mark must be assessed globally, from the viewpoint of an average consumer who is deemed to be reasonably well informed, reasonably observant, and circumspect. It noted that a consumer is rarely able to make a direct comparison between signs and trade marks, and may have an imperfect recollection of them, so that ‘insignificant differences’ between the sign and the mark may go unnoticed by the average consumer. So, identity is qualified: an identical sign reproduces ‘without any modification or addition, all the elements constituting the mark or where, viewed as a whole, it contains differences so insignificant that they might go unnoticed by an average consumer’.19

16

Whilst refusal generally flows where there is double identity, if the marks have coexisted in the marketplace without any confusion there is no impairment of the senior mark’s function of origin, and the second mark may be registered: see Budějovický Budvar, Národní Podnik v Anheuser-Busch, Inc [2012] EWCA Civ 880, [2012] 3 All ER 1405, [2013] RPC 12, [2012] ETMR 48 (CA) at [23] and [33] following Case C-482/09, 22 September 2011, [2011] ECR I-08701, [2012] RPC 11, [2012] ETMR 2. Also see 3.89 and 5.54 and reference to origin function in the proposed Directive and CTMR. 17 LTJ Diff usion v Sadas Vertbaudet SA , Case C-291/00, [2003] ECR I-2799, [2003] FSR 34, [2003] ETMR 83. 18 LTJ Diff usion v Sadas Vertbaudet SA (n 17) at [51]. 19 LTJ Diff usion v Sadas Vertbaudet SA (n 17) at [52]–[54].

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Relative Grounds for Refusal of Registration 3.17 The CJEU’s reference to insignificant differences is somewhat opaque, as Jacob

LJ pointed out in Reed.20 He saw a tension between the requirement to interpret identity strictly and making allowance for imperfect recollection and suggested that the CJEU did not mean to soften the edges of identity very far, because where a mark and a sign are not identical (but are very similar) the proprietor of the mark will be protected if there is a likelihood of confusion. 3.18 In IBM Corp v Web-Sphere Ltd 21 (an infringement action) the CTM was

WEBSPHERE and the defendant’s sign was Web-Sphere. Lewison J held that the CJEU’s reference in Arthur & Félicie to its earlier judgment in Lloyd22 must mean that the same criteria are applied when assessing identity as when considering the similarity of marks, so that he had to consider the overall impression created by the two marks, including their visual, aural, and conceptual similarities. On that basis, hardly surprisingly, he found the marks to be identical. 3.19 The General Court (GC) has since held that where a word mark is registered in

plain script, it will be deemed identical to the word used in any other script;23 similarly, a mark registered in black and white is registered in respect of all colours. But if a mark is expressly limited to use in a particular font, form, or colour, the proprietor will be held to that form of the mark, and the same word presented differently will at most be similar to it.24 3.20 The question of whether adding another name, word, or other material to the ear-

lier mark means that it is not identical to it must also be considered in the light of Arthur & Félicie. In Reed,25 one issue for the Court of Appeal was whether ‘Reed Business Information’ was an identical sign to the claimant’s mark, ‘Reed’. In all forms of use of those phrases, the additional words were as prominent as the name ‘Reed’. The claimant argued that ‘Business’ and ‘Information’ added so little to ‘Reed’ that the mark and sign were still identical. The Court of Appeal did not agree; it held that Arthur & Félicie indicated that an addition to a registered mark may stop it being identical: for instance, ‘Harry’ would qualify ‘Potter’.26 Jacob LJ considered that the use of capital letters had some visual significance, whilst the additional words were not so descriptive that the average consumer would not notice them—he might assume that ‘Reed Business Information’ was connected 20

Reed Executive plc v Reed Business Information Ltd [2004] RPC 40, [2004] ETMR 56 at [25] et seq. 21 IBM v Web-Sphere Ltd [2004] FSR 39, [2004] ETMR 94. See too Electrocoin Automatics Ltd v Coinworld Ltd [2005] FSR 7 at [93]. 22 See 3.25. 23 eg Peek & Cloppenburg v OHIM, Case T-386/07, [2009] ECR II-206, [2010] ETMR 20. 24 See Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5 at [57] and [67]–[70]; and Specsavers v Asda Stores Ltd [2012] EWCA Civ 24, [2012] FSR 19, [2012] ETMR 17 at [96]. But see the impact of using the mark with consistent colouring at 7.47. 25 Reed (n 20). 26 This was a change from the approach previously taken in the UK: see eg Decon Laboratories Ltd v Fred Baker Scientific Ltd [2001] RPC 17, [2000] ETMR 46.

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Section 5(1): Identical Marks, Goods, or Services with Reed Employment or an organisation called ‘Reed’, but that would flow from the similarity, not identity, of the mark and sign. Similarly in Compass,27 it was held that ‘Compass Logistics’ was not identical 3.21 to ‘Compass’. In Och-Ziff28 Arnold J rejected the argument that the sign ‘OCH Capital’ was identical to the registered mark ‘OCH’; he considered that even though ‘capital’ was descriptive of the defendant’s financial services, or at least non-distinctive, the difference between the signs would not go unnoticed. Identity of goods/services To come within s 5(1) there must also be identity of the relevant goods or services. 3.22 Whilst in many cases there will be no difficulty in assessing this, some difficulty may arise where the specification of goods or, more especially, services is broad, or not very specific. A particular difficulty arose for marks which used the whole of a Class heading as their specification, since in some Classes the words used in the heading do not naturally include goods which the detailed Nice classification system places in them. The UKIPO had taken the position that in such circumstances, the specification would not cover such goods, whilst OHIM’s approach was to deem the use of the heading to cover all goods in the Class. This led to the IP Translator test case29 discussed at 4.17 which, in short, endorsed the UK approach, which OHIM will now follow. In future, as a result, specifications should be clearer. In some circumstances, the Class of the goods/services may be relevant in inter- 3.23 preting the specification, especially as the same word may appear in different Classes, for different sorts of goods.30 The scope of the applicable Class(es) must be considered as at the time when protection was originally obtained. 31 Where one of the marks is registered for goods described (properly) by reference to the Class heading, or by a wider description than the other, the goods/services will be identical, because they are coextensive, overlap, or one specification is subsumed within the other.32 For instance, in Biker Miles, 33 the GC held that 27

Compass Publishing BV v Compass Logistics Ltd [2004] RPC 41. In Medion AG v Thomson Multimedia Sales Germany & Austria GmbH, Case C-120/04, [2005] ECR I-8551, [2006] ETMR 13: the proprietor of the German mark ‘Life’ alleged that ‘Thomson Life’ was a similar, not an identical, mark—see 3.36. 28 Och-Ziff Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch), [2011] FSR 11, [2011] ETMR 1 at [67]–[71]. IPC Media Ltd v Media 10 Ltd [2013] EWHC 3796 (IPEC). 29 Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Case C-307/10, [2013] RPC 11, [2012] ETMR 42, and then [2013] RPC 20. And see UKIPO’s PAN 3/13. 30 As to Classes, see 4.14 et seq and British Sugar v James Robertson & Sons [1996] RPC 281, 289. See too Altecnic Ltd’s application ‘Caremix’ [2002] RPC 34. 31 See Reed (n 20) at [46]–[50]; Daimler AG v Sany Group Co Ltd [2009] ETMR 58. 32 Galileo trade mark [2005] RPC 22: overlap sufficed. 33 Miles Handelsgesellschaft International mbH v OHIM, Case T-385/03, [2005] ECR II-2665, [2006] ETMR 5; also Vedial SA v OHIM, Case C-106/03, [2004] ECR I-9573, [2005] ETMR 23: the GC had decided that ‘dairy products’ and ‘edible fats’ were identical to ‘milk and milk products’.

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Relative Grounds for Refusal of Registration specialist clothing for bikers was identical to a specification for ‘clothing, including sportswear’. 3.24 It may be necessary to construe a specification sensibly, especially where marks for

services are concerned. So, for example, a registration for ‘advertising and promotional services, included in Class 35’ was held not to be identical to internet services for the aviation industry, even though these included an advertising facility.34 Floyd J in Youview TV 35 said that the words used should be given their natural and usual meaning, neither construed too liberally, so that the limits of the specification ‘become fuzzy’, nor unnaturally strictly. Even where the terms used are reasonably specific, there may be difficulties in deciding how they should be construed. For instance, in Aveda Corp v Dabur India Ltd 36 one question was whether the average consumer would regard ‘exfoliants, body polishers and dermabrasives’ as a subcategory of ‘cleaning, polishing, scouring and abrasive preparations’. Both the Hearing Officer and Arnold J thought not; they were cosmetics, not household cleaners, so they were not identical goods.

F SECTION 52: IDENTICAL OR SIMILAR MARKS/IDENTICAL OR SIMILAR GOODS 3.25 Section 5(2)37 applies to applications to register identical marks for similar goods/

services, or similar marks for identical or similar goods or services, and will prevent the signs from being registered as trade marks if the similarities produce a likelihood of confusion. Each of these factors requires consideration, as an element of the global assessment of the likelihood of confusion. In a series of judgments since Sabel BV v Puma AG,38 the CJEU has established the relevant principles of such assessment. These have been summarised in a form applied by the UKIPO and courts39 as follows: 34

Avnet, Inc v Isoact Ltd [1998] FSR 16. [2012] EWHC 3158 (Ch), [2013] ECC 17; see also Omega Engineering, Inc v Omega SA, [2012] EWHC 3440 (Ch), [2013] FSR 25. And see UKIPO’s PAN 3/13. 36 [2013] EWHC 589 (Ch), [2013] ETMR 33. 37 Th is comes from the Directive, Art 4(1)(b). The equivalent is CTMR, Art 8(1)(b). 38 The main cases are: Sabel , Case C-251/95, [1997] ECR I-6191, [1998] RPC 9, [1998] ETMR 1; Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer, Inc, Case C-39/97, [1998] ECR I-5507, [1999] ETMR 1; Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV, Case C-342/97, [1999] ECR I-3819, [2000] FSR 77, [1999] ETMR 690; Marca Mode CV v Adidas AG, Case C-425/98, [2000] ECR I-4861, [2000] 2 CMLR 1061, [2000] ETMR 723; Medion AG v Thomson Multimedia Sales Germany & Austria GmbH, Case C-120/04, [2005] ECR I-8551; Matratzen Concord AG v Hukla Germany SA, Case C-421/04, [2006] ECR I-2303, [2006] ETMR 48; OHIM v Shaker di L Laudato & C Sas, Case C-334/05, [2007] ECR I-4529 applied in Shaker di L Laudato & C SAS OHIM (‘Limoncello’), Case T-7/04, [2009] ETMR 16; L’Oréal SA v OHIM, Case C-235/05P, [2006] ECR I-57. 39 See eg Kitchin LJ’s adoption of the summary in [52] Specsavers (n 24). Also Julius Sämaan Ltd v Tetrosyl Ltd ‘Magic Tree’ [2006] FSR 42; and Arnold J in Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2009] RPC 9. 35

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Section 5(2): Identical or Similar Marks and Goods (a) The likelihood of confusion must be appreciated globally, taking account of all relevant factors. (b) The matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question. (c) The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. (d) The visual, aural, and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks, bearing in mind 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 the comparison solely on the basis of the dominant elements. (e) Nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components. (f) Beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark. (g) A lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. (h) There is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it. (i) Mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient. (j) 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. (k) 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. Confusion in this respect means confusion as to trade origin, reflecting the essen- 3.26 tial function of a trade mark to guarantee the origin of goods or services. Th is may be confusion as to the source of goods or a mistaken belief that there is an economic or commercial link between the respective marks, goods, or businesses. Although it includes ‘the likelihood of association’, in Marca Mode 40 the CJEU held that mere association is not enough to establish a likelihood of confusion. 40

Marca Mode CV v Adidas AG (n 38).

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Relative Grounds for Refusal of Registration Adidas had sought to protect its three-stripe mark, and argued that for such well-known marks the likelihood of association meant that a likelihood of confusion could be presumed. The CJEU said that a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope.41 On the other hand, numerous decisions, from Sabel onwards, show that the nature of the confusion which risks being caused need not be ‘direct’ in terms of thinking the later mark is the earlier mark, but can be ‘indirect’ in terms of leading to a belief that there is some sort of trade connection between the marks. 3.27 As explained later, the assessment of the likelihood of confusion is a compli-

cated process. There are innumerable decisions on the point, from national and Community tribunals and courts, many of which are, frankly, difficult to reconcile with one another. The CJEU and GC both refer to their own earlier decisions, but it is not always easy to see consistent results (see especially 3.38). In particular, there are hundreds of decisions of the GC, all of which may be said to turn on their individual facts and the adequacy or lack of the evidence before the Court, as a result of which it is possible to fi nd ‘authority’ for a wide range of propositions. There may be a further explanation, however, for certain of those decisions. It is important to bear in mind that the likelihood of confusion (direct or indirect) relates to confusion as to origin, and that there is a fundamental distinction to be made between what one might call descriptive and distinctive similarity. In particular, where the marks to be compared contain similar elements, but those elements are descriptive, the average consumer should be expected to attribute the similarity to the descriptiveness, not to trade origin. OHIM and the GC have perhaps tended in recent years to overlook that principle, and apply a rather formulaic approach to the assessment of the likelihood of confusion, even where the earlier mark includes descriptive elements. At OHIM, at least, it is possible that this approach may be changing, in the light of a recent decision of the Grand Board of Appeal, Ultimate Greens, in which the Board emphasised that it would ‘be against the rationale of the CTMR to give too much importance in the assessment of likelihood of confusion to non-distinctive elements’.42

G INTERDEPENDENCY PRINCIPLE 3.28 The assessment of the likelihood of confusion must take into account all of the rele-

vant factors, which includes putting the issues of the similarity of the marks and of the goods/services into the appropriate commercial and linguistic context. Given the interdependence of the various factors identified earlier, it can be both difficult

41 42

Marca Mode (n 38) at [33]–[34]. Contrast the position under ss 5(3) and 10(3), see 3.50 et seq. Lifestyle Supplies VoF v OHIM, Case R 1462/2012-G, 18 September 2013 at [62].

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Interdependency Principle and dangerous completely to split up the various factors.43 Whilst each factor must be considered separately, the conclusion reached must be drawn from combining them—one must not lose sight of the wood for the trees. This is the ‘interdependency principle’ and is not a simple process. Essentially the question is whether there are similarities (in terms of marks and goods/services) that would combine to lead to a likelihood of confusion, given concurrent use of the marks in relation to the specified goods or services. Despite the interdependency principle, it seems that a minimal level of similarity 3.29 of marks is required. In Vedial,44 an application to register a device mark of a rather jolly, podgy chef and the word ‘Hubert’ as a CTM for food/drink products was opposed by the proprietors of the word mark ‘Saint-Hubert 41’, registered for dairy products. Although the products were identical or similar, the GC had found that the marks were not similar orally, visually, or conceptually, so there was no likelihood of confusion. On appeal, the CJEU found that there had been no error by the GC. The Court said that ‘the likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark is registered. Those conditions are cumulative.’45 If the position following Vedial was not completely clear,46 later CJEU cases show that some similarity between the marks is needed. If there is no similarity between the marks, the reputation of the earlier mark and the fact that the goods or services are identical or similar will not suffice for there to be a likelihood of confusion;47 similarity of goods or services is necessary.48 However, only a minimal level of similarity need be shown before the overall 3.30 assessment of likelihood of confusion needs to be carried out.49 In considering the test for Article 5(2) of the Directive (equivalent to s 5(3)), the CJEU has referred to the need for ‘a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public makes a connection between the sign and the mark’,50 or of the reputation of a ‘family of marks’ of which it forms part.51 43

See eg Limoncello (n 38) at [41]. Vedial SA v OHIM, Case C-106/03, [2004] ECR I-9573, [2005] ETMR 23. 45 Vedial SA v OHIM (n 44) at [51]. Also Il Ponte Finanziaria SpA v OHIM, Case C-234/06, [2007] ECR I-7333, [2008] ETMR 13 at [48] but see too the less helpful comment at [50]. 46 See eg Citibank NA v Citybond Holdings plc [2007] RPC 13; Mobis, BL 0/020/07 (AP), 15 January 2007. 47 eg Calvin Klein Trademark Trust v OHIM, Case C-254/09, [2010] ECR I-07989, [2011] ETMR 5 at [56]–[58]; Ferrero SpA v OHIM, Case C-552/09, [2011] ECR I-02063, [2011] ETMR 30 at [66]. 48 Canon (n 38) at [22]. 49 See eg Canon (n 38) at [17]; and Soff ass SpA v OHIM, Case T-396/04, [2005] ECR II-4789, [2006] ETMR 44 at [26]–[27]. 50 Adidas-Salomon v Fitnessworld Trading Ltd, Case C-408/01, [2003] ECR I-12537, [2004] 1 CMLR 14, [2004] Ch 120, [2004] FSR 21, [2004] ETMR 10 at [29]. 51 Ferrero (n 47) at [97]–[99]. 44

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Relative Grounds for Refusal of Registration 3.31 The global assessment of the likelihood of confusion must include an assessment

of the distinctive character of the earlier mark. When the mark has been used, this will depend upon a combination of its inherent nature and its factual distinctiveness.52 If the mark has become enormously well-known, that factor may outweigh a low level of similarity of the marks.53 The relevance of acquired distinctiveness is not limited to those marks which have become household names, but any recognition of the earlier trade mark in the market is a factor to be taken into account in making the overall global assessment of the likelihood of confusion. Th is may be particularly important for marks which contain an element descriptive of the goods or services for which they are registered. In Digipos54 it was held that the analysis of the descriptiveness of the respective marks need not be addressed in a formulaic way, so long as adequate account is taken of it. 3.32 The conflict between the marks must be assessed in relation to the appropriate

territory. For conflicts between UK marks that is self-explanatory. For CTMs, because of the unitary character of the Community trade mark, the relevant market is the whole of the EU; a mark will be refused as a CTM if relative grounds for refusal exist in any Member State or linguistic area. So, in Armacell55 a likelihood of confusion amongst non-English speaking consumers precluded the registration of a CTM. If the application is for a CTM but the earlier mark is a national mark, then the assessment of the likelihood of confusion is made by reference to consumers in that territory.56

H SIMILARITY BETWEEN THE MARKS 3.33 Similarity between marks depends upon the degree of visual, aural, or conceptual

similarity or identity between them. The importance of each of these elements may vary, depending on the type of goods or services in question, so for consumer goods typically bought off-the-shelf, by self-selection, the visual impact may be most significant.57 Nevertheless, it must not be forgotten that a mark must not be artificially split into its component parts; what matters is the overall impression given by the combination of those parts, because that is what the consumer sees.58 It may also be what he remembers, given ‘imperfect recollection’.

52

See Lloyd (n 38) at [22]–[23]. GALATOPOLY, BL O/382/13 (AP), 13 September 2013: ‘Monopoly’ was so distinctive there was a likelihood of indirect confusion with ‘Galatopoly’. 54 Digipos Store Solutions Group Ltd v Digi International, Inc [2008] RPC 24 at [49]. 55 Armacell Enterprise GmbH v OHIM, Case C-514/06, [2008] ECR I-128, [2009] ETMR 52 at [56]–[57]. 56 eg Hultafors Group AB v OHIM, Case T-537/11, 19 April 2013 at [22]; Bimbo SA v OHIM, Case T-569/10, [2013] ETMR 7, 10 October 2012—Spanish understanding of ‘doughnuts’. 57 See Lloyd (n 38) at [27]; L’Oréal v OHIM, Case C-235/05, [2006] ECR I-57 at [40]. 58 Kurt Geiger’s application , O/075/13 (AP), 14 February 2013 at [31]. 53

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Similarity between the Marks The nature of the goods/services and the circumstances in which they are sold are 3.34 also relevant factors in identifying the notional average purchaser of such goods (who is reasonably well informed, observant, and circumspect) and assessing the degree of attention that may be given to the marks when the goods/services are purchased. If the goods or services are likely to be purchased mainly or solely by trade or professional users, they may be less likely to be confused than by an end-user buying consumer goods.59 If reliance is placed upon the sophistication of the consumer, this needs to be shown to apply to the particular goods.60 If the goods are expensive or of a technical nature, a purchaser may be expected to take more care (and so be less likely to be confused)61 than when buying everyday items, like groceries. The importance of the visual or verbal elements of the mark may also vary (see 3.40). It is necessary to consider, subject as ever to the available evidence, ‘the real world thought processes of real people’.62 It will be assumed that the marks will be put into ‘normal and fair use’, although if 3.35 there is evidence of actual use before the tribunal, this will be taken into account in the global assessment of the likelihood of confusion, and be presumed to be the normal and fair manner of use of that mark.63 The assessment must be of any form of use which might be made of the mark applied for,64 so for instance an intention to use it with a house mark or other brand is irrelevant.65 Similarity must be assessed by the overall impression of the marks, though it is 3.36 necessary to identify their respective distinctive and dominant components. In Medion66 an infringement action was brought against use of the mark ‘Thomson Life’ by Medion, the owner of the earlier mark, ‘Life’. The referring court asked essentially whether there might be a likelihood of confusion where the defendant’s sign used its company name in conjunction with an earlier registered mark and the mark retained an ‘independent distinctive role’ in the composite mark. The CJEU held that the comparison must be of the marks as a whole, although the overall impression might be dominated by one or more of its components. An earlier mark used in a composite sign may have an independent distinctive role in the composite sign, without being its dominant element. The average consumer confronted with 59

eg Dainichiseika Colour & Chemicals Mfg Co Ltd v OHIM, Case T-389/03, [2008] ECR I-58, [2008] ETMR 45 at [60]. 60 Ratiopharm GmbH ’s trade mark application [2007] RPC 28 at [19]—relevant consumers of pharmaceuticals. 61 eg Ruiz-Picasso v OHIM—DaimlerChrysler (PICASSO/PICARO), Case C-361/04, [2006] ECR I-643, [2006] ETMR 29, at [60]: cars. 62 Whirlpool Corp v Kenwood Ltd [2009] RPC 2, [2009] ETMR 5 at [70]: premium-priced food mixers—upheld on appeal [2009] EWCA Civ 753, [2010] RPC 2, [2010] ETMR 7. 63 Ratiopharm (n 60); Open Country [2000] RPC 477; Mustafov’s application, BL O/218/05 (AP), 29 July 2005 at [31]. 64 O2 Holdings Ltd v Hutchison 3G UK Ltd , Case C-533/06, [2008] ECR I-4231, [2008] 3 CMLR 14, [2008] RPC 33 at [66]. 65 Dainichiseika Colour (n 59) at [107]. 66 Medion (n 38).

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Relative Grounds for Refusal of Registration the composite sign THOMSON LIFE could perceive both the whole and its constituent parts to have significance. This might lead to a likelihood of confusion. To say otherwise might deprive the earlier mark of protection. 3.37 A complex trade mark may be dominated by one or more of its components, but

similarity may be judged purely on the basis of the dominant element only if the other elements of the mark are ‘negligible’. In Limoncello,67 Shaker had applied to register as a CTM a complex figurative mark. The largest, most dominant features of the mark were a picture of a pottery dish with lemons and the word ‘Limoncello’, describing the lemon liqueur for which registration was sought. The application was opposed by the proprietor of the Spanish word mark ‘Limonchelo’, also for goods in Class 33. The GC found there was no likelihood of confusion. The dominant feature of the mark applied for was the picture of the dish, and no likelihood of confusion arose despite the similar words in the marks. The CJEU held that the GC’s approach had been incorrect; it had failed to carry out a global assessment of the marks. Whilst it was entitled to conclude that the device had a dominant element, the assessment of similarity might be carried out solely on the basis of the dominant element only if all the other components of the mark were negligible.68 The case was remitted to the GC, which subsequently found that there was, indeed, a likelihood of confusion.69 Extra care may need to be taken when the common part of the two marks consists of a surname.70 3.38 As a result, it can be tricky to apply the Medion principles correctly, all the

more so where the marks are device marks.71 The GC found a likelihood of confusion existed between CTMs consisting of the words ‘Golden Eagle’ and an image of a red coffee mug placed on coffee beans, and earlier registrations consisting of a similar image of a red coffee mug on coffee beans for identical goods.72 In Aveda ,73 it was held that ‘Uveda’ was not a negligible element of the mark ‘Dabur Uveda’ and there was a likelihood of confusion with the earlier mark ‘Aveda’. It made no difference that no parts of the marks were identical. In addition, a number of CTM cases74 post-Medion and Limoncello have placed 67

Case C-334/05, [2007] ECR I-4529. Limoncello (n 67) at [42]. Also Société des Produits Nestlé SA v OHIM (‘Quicky’), Case C-193/06, [2007] ECR I-114 at [34], 20 September 2007; Sunplus Technology Co Ltd v OHIM, Case C-21/08, [2009] ECR I-48, [2009] ETMR 46. 69 Shaker di L Laudato & C SAS v OHIM, Case T-7/04, [2008] ECR II-03085, [2009] ETMR 16; Rousselon Frères et Cie v Horwood Homewares Ltd [2008] RPC 30. Contrast Aceites del Sur-Coosur SA v Koipe Corporación SL , Case C-498/07, [2009] ECR I-7371: the similarity of figurative element of marks outweighed significant verbal differences between them. 70 Barbara Becker v Harman International Industries, Inc, Case C-51/09, [2010] ECR I-05805, [2010] ETMR 53, 24 June 2010. 71 Kurt Geiger (n 58) at [28]. 72 Société des Produits Nestlé v OHIM, Joined Cases T-5/08 to T-7/08, [2010] ECR II-1177. 73 See n 36 and see further examples cited by Arnold J. 74 eg Hrbek v OHIM, Case C-42/12, 29 November 2012: common element of marks was word ‘alpine’—descriptive of the sports equipment in both specifications—but likelihood of confusion 68

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Similarity between the Marks significant reliance on the common elements of marks, even where the figurative elements have not been negligible or where the common/identical elements have been descriptive. Conceptual or visual differences between the signs may counteract aural similarities 3.39 between them, if at least one of the signs carries a clear and specific meaning.75 So, for example, the name of the cartoon character ‘Obelix’ would be unlikely to be confused with ‘Mobilix’76 and ‘Picasso’ would not be confused with ‘Picaro’ (for a model of car).77 In Air Parts trade mark 78 the mark applied for was ‘South Beck’. It was held not to replicate the opponent’s BECK marks, as the opponent’s evidence did not establish that its beer was known as BECK, but another significant factor was that adding ‘South’ differentiated the marks. The visual or aural impact of a mark may be of greater or lesser significance depending 3.40 upon the circumstances in which it is likely to be used. Device marks, and composite marks consisting predominantly of a device, may appeal primarily to the eye. That should be taken into account in considering the likelihood of confusion. On the other hand, marks which combine figurative and verbal elements may be referred to by the word elements, giving the latter added importance.79 As mentioned at 3.34, visual elements of marks may be important where marks are seen rather than used orally to identify trade origin, as may be the case for clothing,80 or foods,81 or other self-service items. All of the factors must be weighed objectively in the assessment of the likelihood of confusion.82 Sufficient similarity in one respect may outweigh a lack of similarity in other respects.83

found; AMC-Representações Têxteis L da v OHIM, Case T-50/12, 7 February 2013—common element was ‘Metro’. The GC has said that marks have some level of similarity when they are in part identical, although the level of similarity may not be high, eg Annco, Inc v OHIM, Case T-385/09, [2011] ECR II-00455, [2011] ETMR 37 at [26]. But in Gateway v OHIM, Case C-57/08, [2008] ECR I-188, [2009] ETMR 32, marks with identical descriptive elements were held not to be similar, apparently because those elements were deemed negligible and so were excluded from the comparison process. Contrast the Ultimate Greens decision (see n 42)—no likelihood of confusion between the similar marks ‘Ultimate Greens’ and ‘Ultimate Nutrition’. 75 Il Ponte Finanziaria (n 45) at [32]–[41]. Also see TIME ART Uluslararasi Saat Ticareti ve dis Ticaret AS v OHIM, Case C-171/06, [2007] ECR I-41, [2007] ETMR 38. 76 Les Éditions Albert René Sarl v OHIM, Case T-336/03, [2005] ECR II-4667, affi rmed in Case C-16/06, [2008] ECR I-10053, [2009] ETMR 21. 77 Ruiz-Picasso v OHIM n 61. 78 Air Parts Europe Ltd ’s application , BL O/160/08 (AP), 9 June 2008. See too La Chemise Lacoste v Baker Street Clothing [2011] RPC 5 (AP): similarity of ‘theme’ of crocodile and alligator did not lead to conceptual similarity. 79 Hultafors (n 56) at [35]. 80 See React trade mark [2000] RPC 285; Criminal Clothing Ltd v Aytan ’s Manufacturing (UK) Ltd [2005] EWHC 1303. 81 Miguel Cabrera Sanchez v OHIM, Case T-242/06, [2007] ECR I-175; Oska ’s Ltd ’s trade mark application [2005] RPC 20; Aceites del Sur-Coosur SA v Koipe Corporación SL (see n 69). 82 TIME ART (see n 75), approving the GC’s approach. 83 Lloyd (see n 38) at [28]: aural similarity alone might suffice.

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Relative Grounds for Refusal of Registration 3.41 Other market factors may be relevant, such as the tendency for clothing manufac-

turers to use sub-brands or varied forms of the same main brand, so that a similar mark may be likely to be seen as an extension of the main brand.84 In Il Ponte Finanziaria85 an application for registration of the figurative mark ‘Bainbridge’ was opposed at OHIM on the basis of eleven earlier Italian trade marks, all of which had the word ‘bridge’ in common. The opponent argued that ‘Bainbridge’ would be seen as one of its ‘family of marks’. The CJEU held that in theory the existence of a family of marks might lead to a likelihood of confusion, but for there to be such a risk the earlier trade marks which are part of that family must all be on the market. 3.42 To assess the aural similarity of two marks, it is necessary to know how the relevant

public will pronounce them, which may be in dispute if the marks consist of foreign words. The similarity or difference between the first part of two word marks or words used in marks may be an important factor in the assessment of their aural similarity, although each case must be judged on its own merits.86

I SIMILARITY OF GOODS/SERVICES 3.43 In Canon87 the CJEU said that even where a mark is identical to another with a

highly distinctive character it is still necessary when assessing the likelihood of confusion to adduce evidence of similarity between the goods and services covered. Whether for the purposes of opposition or invalidity, it is necessary to make the comparison for all of the goods or services named in the two specifications, The comparison is not just between any of those goods/services on which the parties use their marks.88 3.44 The first significant decision under the 1994 Act to consider how to assess the

similarity of goods and services was British Sugar (‘Treat’).89 It has stood the test of time well, and was reflected in Canon itself. In British Sugar Jacob J said one should consider: (a) The respective uses of the respective goods or services; (b) The respective users of the respective goods or services; (c) The physical nature of the goods or acts of service; 84

Claudia Oberhauser v OHIM, Case T-104/01, [2002] ECR II-4359, [2003] ETMR 58 at [49]. Il Ponte Finanziaria (see n 45)  at [64]–[65]; also IG Communications Ltd v OHIM, Case T-301/09, [2013] ETMR 17—family of ‘Citi’ marks. 86 eg Sanofi-Aventis SA v OHIM, Case T-146/06, [2008] ECR II-17: Aturion/Urion not similar; Hultafors (see n 56): Snickers/Kickers similar; Seven for all mankind LLC v OHIM, Case C-655/11, [2013] ETMR 24, 21 February 2013. 87 Canon (see n 38) at [22]. 88 Saint-Gobain Pam SA v OHIM, Case T-364/05, [2007] ECR II-757 at [89]. 89 [1996] RPC 281, [1997] ETMR 118. 85

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Similarity of Goods/Services (d) The respective 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 . . . on the same or different shelves; (f) The extent to which the respective goods or services are competitive . . . [including] how those in trade classify goods . . . The Registry or Court will need evidence of the factors said to make the goods/ 3.45 services similar.90 If, for instance, it is said that the trade channels through which the respective goods are sold are the same, it may be necessary (or at least prudent) to provide evidence in support of that argument. On the other hand, where the goods or services concerned are everyday items, it is acceptable to take into account facts which are likely to be known by anyone or which could be learnt from generally accessible sources.91 A hearing officer or judge is not ‘obliged to disown all his knowledge of the day-to-day world in which we all live’.92 In Canon93 the CJEU said that relevant factors include the nature of the goods/ 3.46 services, the end-users, the method of use of the goods/services, and whether they are in competition with each other or are complementary—very like the factors listed by Jacob J. The channels of distribution of the goods or manner of provision of services are also relevant.94 Consideration of the relative grounds for refusal is prospective and not dependent on the parties’ actual trading methods.95 The judgments to be made may be finely balanced. For instance, Rousselon Frères v Horwood Homewares Ltd,96 considered the similarity of knives in Class 8 to a range of domestic utensils in Class 21. The hearing officer decided that, although the goods might be sold through the same trade channels and had the same notional end-users, their nature and intended uses differed. The goods might be complementary but were not in competition. On balance, he thought that the goods were not similar and the appeal on that point was dismissed because there was no error of principle in his decision. Goods may be found to be complementary when one is indispensable or important 3.47 for the use of the other. In Astex97 the GC considered that insecticides intended to eliminate dust mites were complementary to pharmaceutical preparations taken 90

See Canon (n 38) at [22]. See eg esure Insurance Ltd v Direct Line Insurance plc [2008] RPC 34, [2008] ETMR 77, [54]–[60]. 92 REEF [2002] RPC 19 at [39], per Pumfrey J. 93 Canon (n 38) at [23]. 94 See eg Astex Th erapeutics v OHIM, Case T-48/06, [2008] ECR I-161, [2009] ETMR 3. 95 TIME ART (n 75) at [59]. 96 The appeal is reported at [2008] RPC 30. 97 Astex (n 94). 91

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Relative Grounds for Refusal of Registration by persons suffering from respiratory problems. Several GC decisions suggest that there may be some sort of ‘aesthetic complementarity’ between different types of fashion goods or fashion goods and toiletries,98 though evidence will be needed to show this.99 3.48 However, Waterford Stellenbosch100 shows that complementarity cannot be taken

too far. An application to register a device mark featuring the word ‘Waterford’ as a CTM for wine was opposed by the proprietors of the word mark ‘Waterford’ for glassware, etc. The GC held that whilst there was some evidence of a certain degree of ‘complementarity’ between some glassware and wine, it did not prove that consumers would perceive the goods as similar. Without similarity of goods, there could be no likelihood of confusion. The opponent appealed to the CJEU, which found no fault with the GC’s assessment of the facts and could not interfere with its conclusions. The result is perhaps surprising, but this may be one of those (frequent) cases in which the argument was not supported by the evidence. 3.49 ‘Complementarity’ may be particularly relevant where the comparison is between

goods and services. For instance, in Balmoral 101 an application to register the trade mark ‘Balmoral’ in respect of wines was refused having regard to earlier identical trade marks registered for whisky and for bar services. Considering the ‘overall pattern of trade’ in terms of the factors identified in British Sugar, suppliers of wines should be regarded as trading in close proximity to suppliers of whisky and suppliers of bar services. Relevant consumers might well think that a supplier of whisky or bar services was also engaged in the related business of supplying wines. Goods will generally be similar to retail services, where the retail services relate to those goods or to closely similar goods.102

J SECTION 53: DAMAGE TO A MARK WITH A REPUTATION 3.50 Section 5(3)103 and the parallel provision for infringement in s 10(3) give marks

with a reputation wider protection than under s 5(1) or (2). This applies where an identical or similar sign to an earlier mark with a reputation is used in relation to 98

Mülhens v OHIM (‘Tosca Blu’), Case T-150/04, [2007] ECR II-2353 at [35]. El Corte Inglés SA v OHIM, Case T-39/10, 27 September 2012, [2013] ETMR 3. 100 Waterford Wedgwood plc v Assembled Investments (Proprietary) Ltd , Case C-398/07, [2009] ECR I-75. 101 [1999] RPC 297. 102 This stems from the AG’s Opinion in Praktiker Bau- und Heimwerkermarkte AG v Deutsches Patent- und Markenamt, Case C-418/02, [2005] ECR I-5873, [2006] 3 CMLR 29, [2006] Ch 144, [2005] ETMR 88. The GC has held that there may be complementarity of advertising or import/ export services and particular goods: Sanco SA v OHIM, Case T-249/11, 14 May 2013—does this go too far? 103 For the equivalent provisions see the Directive, Art 5(2), and CTMR, Art 8(5). 99

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Section 5(3): Damage to a Mark with a Reputation goods/services which can be identical, similar or dissimilar104 to the goods/services for which the earlier mark was protected and (without due cause) some unfair advantage is taken of the earlier trade mark, or some damage done to its distinctive character or repute. No likelihood of confusion need be shown, only the ‘link’ discussed at 3.56. In Intel 105 the CJEU held that there are three types of injury against which marks 3.51 with a reputation are protected by these provisions: (1) detriment to the mark’s distinctive character (2) detriment to the repute of the mark (3) unfair advantage taken of the mark’s distinctive character or repute. Just one of those three types of injury suffices for the provisions to apply, but much of the recent case-law relates to taking unfair advantage.106 The aim is to protect the functions of the trade mark other than the origin func- 3.52 tion, such as conveying messages about the qualities or particular characteristics of goods or services. A mark can, according to the CJEU, be ‘an instrument of commercial strategy’ used for advertising or to acquire a reputation so as to develop consumer loyalty.107 To fulfi l those functions, however, the mark must be established on the market in relation to those goods/services.108 Generally speaking, a reputation will arise by reason of investment in the mark by its proprietor and will be protected because it flows from that investment.109 Marks with a reputation are therefore inherently more likely to belong to large corporations and this legislation may be seen to favour large traders over small ones. On the other hand, in Interfl ora the CJEU held that a mark’s advertising and investment functions are not affected merely because its proprietor may need to intensify his advertising and efforts to preserve the mark’s reputation in the face of fair competition.110 Quite a number of different issues must be considered under s 5(3) or its equivalent 3.53 provisions. The CJEU handed down two significant rulings on these provisions

104

Initially drafted to cover only use on dissimilar goods, it was held to protect CTMs against use on identical/similar goods by Davidoff & Cie SA v Gofkid Ltd , Case C-292/00, [2003] ECR I-389, [2003] FSR 28, see especially [21]; and on national marks, Adidas-Salomon (n 50). The 1994 Act was amended by the Trade Marks (Proof of Use etc) Regulations 2004, SI 2004/946. 105 Intel Corp, Inc v CPM UK Ltd , Case C-252/07, [2008] ECR I-8823, [2009] RPC 15, [2009] ETMR 13. 106 eg L’Oréal v Bellure and Specsavers, both discussed later. 107 Interflora, Inc v Marks & Spencer plc, Case C-323/09, [2011] ECR I-08625, [2012] FSR 3, [2012] ETMR 1, 22 September 2011 at [39]. 108 See discussion of trade mark functions at 1.16 et seq. 109 See discussion of General Motors at 3.54 below. Also TDK, Case C-197/07, [2008] ECR I-193, [2009] ETMR 36. 110 At [54]–[66].

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Relative Grounds for Refusal of Registration in 2008 and 2009 in Intel 111 and L’Oréal v Bellure,112 the first of which appears to limit their scope in one respect and the second to widen it in another. The keyword cases,113 and especially Interflora v M&S,114 have narrowed it again: see the judgments of Kitchin LJ in Specsavers115 and Arnold J in Interflora.116 Reputation 3.54 Reputation for an earlier UK mark means a reputation in the UK; General

Motors117 established that the reputation of a national trade mark need only exist in a substantial part of the territory of the Member State in which it is registered. A CTM must have a reputation ‘in the Community’. In Pago,118 the Austrian Court asked the CJEU whether a CTM is protected in the whole Community (so that its proprietor may seek a Community-wide injunction against an infringer) when it has a reputation in only one Member State. The CJEU held that a reputation throughout Austria could be taken as satisfying the requirement of Article 9(1)(c) CTMR. 3.55 Proving the necessary reputation is not particularly onerous119 and s 5(3) is

applied quite frequently (as are s 10(3)/Article 5(2)). The reputation must be great enough that a relevant type of injury may flow from the use of the junior mark, but it is not necessary to show that the mark would be protected as a ‘well-known mark’. The earlier mark must be known to a significant part of the public concerned by the products or services for which it is registered, taking into account all the relevant facts of the case, such as the market share held by the trade mark; the intensity, geographical extent, and duration of its use; and the size of the investment made in promoting it.120 The strength of the mark’s reputation may affect a number of the other considerations discussed later; if its reputation is especially strong, there is more likely to be a ‘link’ made to it by use of the junior mark.121

111

See n 105. L’Oréal v Bellure, Case C-487/07, [2009] ECR I-5185, [2009] ETMR 55, 18 June 2009, CA at [2008] RPC 9. 113 See 7.19 et seq. 114 Interfl ora, Inc v Marks & Spencer plc, Case C-323/09 (n 107). 115 Specsavers (n 24) at [118] et seq. 116 [2013] EWHC 1291 (Ch), [2013] ETMR 35, 21 May 2013 at [186] et seq. 117 General Motors Corp v Yplon SA , Case C-375/97, [1999] ECR I-5421, [2000] RPC 572, [1999] ETMR 950. 118 PAGO International , Case C-301/07, [2009] ECR I-9429, [2010] ETMR 5, especially [27]. The AG’s Opinion was that ‘a substantial part’ of the Community is not judged by geographical area so much as by the importance of the area in which the reputation exists [40]. 119 General Motors (n 117) at [24]. 120 General Motors (n 117) at [26]–[28]. 121 See Intel (n 105) at [54]; see too Antartica Srl v OHIM, Case C-320/07, [2009] ECR I-28, [2009] ETMR 47, unfair advantage in use of the mark ‘Nasdaq’ for clothing, etc. 112

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Section 5(3): Damage to a Mark with a Reputation A ‘link’ It is not necessary that there be a risk of full-blown confusion as to trade origin. In 3.56 General Motors the CJEU said that what is relevant is whether there is a sufficient degree of knowledge of the earlier mark ‘that the public, when confronted by the later trade mark, may possibly make an association between the two trade marks, even when used for non-similar products or services’.122 Then in Adidas-Salomon v Fitnessworld Trading Ltd,123 the Court said that such injury can arise where the public makes a connection between the two marks, and establishes a link between them, even if it does not confuse them. But if it does confuse them, the link will necessarily be made.124 If for the average consumer (reasonably well informed, etc, as usual) the later mark would call the earlier mark to mind, the link exists. The existence of the link must be appreciated globally, taking into account all 3.57 factors relevant to the circumstances of the case, which include125 the degree of similarity between the conflicting marks,126 the nature of both parties’ goods or services (including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public), the strength of the earlier mark’s reputation, the degree of the earlier mark’s distinctive character (whether inherent or acquired through use), and the existence of a likelihood of confusion on the part of the public. Where the goods or services are very different, there might not be any overlap between the consumers for each of them, so no link would be made. That may depend on just how far the earlier mark’s reputation extends, and also how distinctive or even unique it may be—Intel’s huge reputation alone could not prove that such a link would be made.127 But in Beatle,128 the CJEU appears to have thought it sufficient to show that it was ‘not altogether inconceivable’ that the relevant public could make such a link. In TDK 129 the Court upheld the GC’s view that a link would be made between the clothing for which the applicant sought to register its mark and an earlier mark registered for recording apparatus, because of the past use of TDK’s mark on sportsmen’s clothing as a result of sponsorship deals. In Intel, an important caveat was made, that finding a link is not sufficient, by 3.58 itself, to establish detriment to the distinctive character or repute of the senior

122

Emphasis added, see [23]. Adidas-Salomon (n 50) at [29]–[31]; see too Marca Mode (n 38) at [40]–[42]. 124 Intel (n 105) at [57]. 125 Intel (n 105) at [42]. 126 See eg Ferrero SpA v OHIM (n 47) at [53]–[56]. 127 Ferrero SpA v OHIM (n 47) at [46]–[48]. 128 You-Q BV v OHIM, Case C-294/12, 14 May 2013. Contrast with Spa Monopole, compagnie fermière de Spa SA/NV v OHIM, Case T-438/07, [2009] ECR II-04115, 12 November 2009; and Daimler AG v Sany Group Co Ltd [2009] EWHC 2581 (Ch), 23 Oct 2009, in which no link was found despite the fame of the senior mark. 129 See n 109. 123

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Relative Grounds for Refusal of Registration mark—that must be proved separately.130 However, recent GC and CJEU cases such as the Beatle case mentioned in the previous paragraph, may have reduced the significance of the caveat, to the benefit of the owner of the mark with a reputation. Detriment to the mark’s distinctive character 3.59 Detriment to a mark’s distinctive character may take the form of ‘dilution’,

‘whittling away’, or ‘blurring’ of distinctive character, caused when the mark loses some or all of its ability to identify the goods or services for which it is registered.131 Even where some association is likely to be made by the relevant public, it is not necessarily the case that any such damage will be caused to the mark’s distinctiveness. 3.60 In Intel the proprietor of the well-known Intel mark for computers appealed the

refusal of its application under s 5(3) for a declaration of invalidity of a UK trade mark INTELMARK registered for marketing and telemarketing services. The Court of Appeal referred the case to the CJEU. In formulating the questions for the CJEU, Jacob LJ suggested that if a trade mark for particular goods or services is truly distinctive it will be robust enough to withstand a mere ‘passing bringing to mind’ when it or a similar mark is used for dissimilar goods or services. The suggested ‘link’ in his view was too tenuous to entitle the trade mark owner to a monopoly in all or virtually all goods or services.132 However, the CJEU held that the more unique the earlier mark, the more likely it is that use of the later similar mark would be detrimental to its distinctive character, weakening its ability to identify the proprietor’s goods. That would be the case where ‘the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so’133 or where it would have a ‘negative influence on the image’ of the earlier mark.134 3.61 Unless the proprietor can produce evidence of a change (or a serious likelihood of

change) in the economic behaviour of the average consumer as a result of his perception of that link, no detriment may be found.135 However, what the proprietor needs to prove is not completely clear. After a number of GC cases reducing the scope of the evidence required, and hence favouring the proprietor of the earlier mark, the CJEU appears to have reined back on this trend. In Helena Rubinstein136 the GC had said that it was unnecessary to prove ‘actual and present harm’ but was 130

Intel (n 105) at [71]. Intel (n 105) at [29] and L’Oréal v Bellure (n 112) at [37]–[40]. 132 [2007] RPC 35, [2007] ETMR 59 at [33]. 133 Intel (n 105) at [29]. 134 Sigla SA v OHIM, Case T-215/03, [2007] ECR II-711, [2007] ETMR 79 at [39]. 135 Sigla SA v OHIM (n 134) at [71], [77]; see also General Motors (n 117) at [23] and Electrocoin Automatics Ltd v Coinworld Ltd [2005] FSR 7 at [102]–[103]. 136 Helena Rubinstein SNC v OHIM, Case C-100/11, [2012] ETMR 40, 10 May 2012 at [95]. In Och-Ziff (n 28), such claims failed in the absence of any evidence of confusion or damage, [135]–[138]. 131

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Section 5(3): Damage to a Mark with a Reputation necessary to produce prima facie evidence of a future (not merely hypothetical) risk of unfair advantage or detriment, through an analysis of the probabilities or taking account of the normal practice in the relevant commercial sector. In Wolf,137 the GC had held that a proprietor must demonstrate a serious risk of dilution but need not also show an effect on the economic behaviour of consumers. The CJEU disagreed—it was not enough that consumers would note the presence of the new sign similar to the sign with a reputation, but (as held in Intel ) proof of detriment was needed and ‘mere suppositions’ would not do. Case-law does not provide much guidance as to when the distinctive character 3.62 of a mark will be diluted in a manner affecting the economic behaviour of the relevant public. In VIPS,138 the GC considered that dilution was less likely to occur where the earlier mark consisted of a term otherwise in common usage. In Whirlpool Corp v Kenwood Ltd,139 the claimant complained that its CTM, consisting essentially of the shape of its Kitchen-Aid food mixer, was infringed by a competing Kenwood mixer, as it took unfair advantage of or caused detriment to the Whirlpool mark. It was held that customers might be influenced to buy the Kenwood mixers by reason of their resemblance to the Kitchen-Aid design, but no detriment was caused as that would not have affected the distinctiveness of the mark. In Interflora,140 M&S was alleged to have infringed Interflora’s mark by purchas- 3.63 ing the right to use it as an internet keyword to generate advertisements in search engine results for its own flower delivery services. The text of M&S’s adverts did not include the mark and appeared as paid advertisements either above or alongside the ‘natural’ search results. Interflora alleged that this would cause detriment to the distinctive character of the mark because it would gradually become a generic term for flower delivery services. The CJEU held that such an effect would not necessarily flow from third party use of the mark as a keyword, if all that it did was draw the ‘reasonably well-informed and reasonably observant’ internet user’s attention to a competing product or service. The issue was whether the internet user would be able to tell from M&S’s advertisement whether its service was independent of Interflora. If not, it would be a matter for the national court to decide whether there was a risk that the mark would become a generic term, which would cause relevant detriment to the mark.141 When the case came to trial, Arnold J decided that this meant that Interflora had to establish that M&S’s advertisements affected

137

Environmental Manufacturing LLP v OHIM, Case C-383/12, 14 November 2013 overturning Case T-570/10, 22 May 2012, [2012] ETMR 54 applied in Jack Wills (n 162). 138 Sigla (n 134) at [38]. For interesting pre-Intel cases see Intel Corp v Sihra [2003] RPC 44, [2004] ETMR 44; and ‘Visa’ [2000] RPC 484. 139 Whirlpool Corp v Kenwood Ltd [2009] RPC 2, [2009] ETMR 5, upheld on appeal [2009] EWCA Civ 753, 23 July 2009. 140 See n 107. 141 At [79]–[83].

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Relative Grounds for Refusal of Registration the origin function of the mark to succeed in claiming that it caused detriment to it.142 He found that although some internet users would understand the distinction between natural and sponsored results, a significant proportion of them would not know that sponsored results were triggered by use of a keyword consisting of the user’s search term143 or that they were being presented with advertisements by competitors to the brand for which they had searched. He decided the case in Interflora’s favour under Article 5(1)/Article 9(1)(a)—equivalent to s 10(1)— on the basis that M&S’s behaviour affected the origin function of the mark, but said that had it not affected the function, he would have found no dilution of the mark.144 In BSkyB v Microsoft, dilution was found when Microsoft’s Skydrive program had caused confusion as to origin with ‘Sky’ and had spawned further uses of the mark.145 Detriment to the mark’s repute 3.64 Detriment to the ‘repute’ of the earlier mark is otherwise known as ‘tarnishment’

or ‘degradation’, when the junior mark ‘may be perceived by the public in such a way that the trade mark’s power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark.’146 At the opposition stage, the comparison will be made between the marks/specification, without reference to the identity of the applicant.147 It is not clear whether it is necessary to produce evidence of a change of economic behaviour in order to establish detriment to repute.148 3.65 Tarnishment was found likely if ‘Visa’ was used in relation to condoms,149 and if

‘Mr Miss World’ was used in relation to a TV programme about a beauty pageant for transsexuals.150 However, there was not likely to be tarnishment of the ‘Red Bull’ mark if the defendant used the jokey slogan ‘No Bull in this Can’ on its soft drink cans, as the average consumer would not take the strapline as seriously reflecting on the qualities of Red Bull.151

142

[2013] EWHC 1291 (Ch), [2013] ETMR 35 at [277]. The evidence raised the problem relating to surveys, discussed at 9.21 and 9.30 et seq. 144 At [321]. 145 British Sky Broadcasting Group plc, Sky IP International Ltd v Microsoft Corporation [2013] EWHC 1826 (Ch), 28 June 2013 at [233]. 146 L’Oréal (n 112) at [40]; see also Sigla (n 134) at [39]—there was no evidence of tarnishment. 147 Unite the Union v Unite Group plc, BL O/219/13 (AP), 17 May 2013 at [49]. 148 Unite the Union v Unite Group plc (n 147) at [72]–[80]. 149 ‘Visa’ (n 138). Similarly, ‘Hollywood’ (known for chewing gum) tarnished by use on tobacco: Hollywood SAS v Souza Cruz SA [2002] ETMR 64. 150 Miss World Ltd v Channel Four Television Corp [2007] EWHC 982 (Pat), [2007] FSR 30, [2007] ETMR 66. Pumfrey J also held that the principal function of the name was to take unfair advantage of the distinctive character and the repute of the Miss World mark. 151 Red Bull GmbH v Sun Mark Ltd [2012] EWHC 1929, 17 July 2012 at [110]. 143

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Section 5(3): Damage to a Mark with a Reputation Unfair advantage In L’Oréal v Bellure152 the defendants had been producing ‘smell-alike’ versions 3.66 of L’Oréal’s fine fragrances in packaging reminiscent of its registered packaging marks. In infringement proceedings, in addition to alleging that the defendants’ packaging infringed under s 10(2), L’Oréal said that s 10(3)/Article 5(2) had been infringed by their use both of the objectionable packaging and of comparison lists, which simply listed the defendants’ perfumes against the claimant’s word marks, to show which fragrances they were meant to replicate. Jacob LJ was concerned that comparison lists of this kind might be used in a variety 3.67 of different kinds of trade, for instance to identify a generic medicine containing the same active ingredients as a branded medicine. In some cases, use of a comparison list might affect a trade mark owner’s interests directly (a generic drug dealer would be offering to sell the same product at a lower price). The position in relation to the smell-alike perfumes was very different, because no one would buy a bottle of the defendant’s perfume for less than £1 in a market instead of a bottle of perfume costing £60 or more. Jacob LJ considered that neither the image nor the essential function of the claimant’s trade marks was adversely affected by the lists. No one was deceived or thought any the less of the original brands. However, comparative uses of that sort were intended to promote the user’s business. The thrust of the questions referred to the CJEU was: were such acts objectionable, actionable ‘free-riding’? There was little doubt that the link between the defendants’ goods and the registered marks conferred a commercial advantage on the defendants. But if there was no damage caused to the claimant, or to the distinctive character or repute of the mark, was that advantage unfair? Jacob LJ’s view was that without present or prospective harm to the mark, it was not unfair. The CJEU held that such an advantage may be unfair, even if there is no detriment 3.68 to the distinctive character or repute of the mark, if there is a ‘transfer of the image of the mark’ or of the characteristics it projects to the goods identified by the identical or similar sign.153 The defendants’ packaging had been created intentionally to create an association with the claimant’s goods and to take advantage of the distinctive character and the repute of the marks ‘to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit . . . the marketing effort expended by the proprietor of that mark . . . to create and maintain the image of that mark’. This took unfair advantage of the distinctive character or the repute of that mark.154 Many cases before OHIM and the GC now appear to rely heavily on the concept of the transfer of the mark’s image.

152 153 154

L’Oréal v Bellure (n 112). L’Oréal (n 112) at [43]. L’Oréal (n 112) at [48]–[49].

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Relative Grounds for Refusal of Registration 3.69 As for the comparison lists, the answer essentially depended on the rules in the

Comparative Advertising Directive (CAD);155 the CJEU considered that the lists explicitly or implicitly presented the defendants’ goods as imitations or replicas, and so any advantage gained by doing so would also be unfair.156 It did not state that where unfair advantage is alleged it is necessary to show that the junior mark will have an impact upon the economic behaviour of consumers. That position was reinforced in Beatle,157 where the CJEU’s reasoned Order confirmed the GC’s finding that a link between the marks made it ‘not altogether inconceivable’ that there would be a transfer of the value of the earlier mark to the quite different goods covered by the later application, and that therefore there was a likelihood of unfair advantage. 3.70 The principles set out by the CJEU in L’Oréal v Bellure sounded both broad and

absolute—any ‘free-riding’ advantage taken of a mark must be unfair.158 However, that is not the case. L’Oréal itself showed that a comparative advertisement will not infringe if it complies with the CAD, and in a series of cases relating to internet keywords the CJEU has gone on to hold that use of another’s mark to generate an advertisement for a competitor may not infringe or take unfair advantage of that mark. Those cases are discussed in more detail in Chapter 7. In particular, in Interflora, it was made clear that if the advertisement offers an alternative to the goods or services of the proprietor without (i) offering a mere imitation of those goods or services, (ii) causing dilution or tarnishment, or (iii) adversely affecting the functions of the mark, then as a rule the use constitutes fair competition and is not without due cause.159 3.71 Where a mark has a truly strong reputation, and (as in L’Oréal ) the defendant’s

activities are only consistent with knowledge of the mark and an intention to take some advantage of it, it may be that an intention to gain unfair advantage will be found to exist. By contrast, applying L’Oréal in Whirlpool (before Interflora), the Court of Appeal found that although Kenwood was well aware of Kitchen-Aid mixers before launching its own competing product, it did not need to ride on Whirlpool’s coat-tails, nor did it intend to do so, but sought to build its own reputation. The judge had been right to find that there was no commercial advantage to Kenwood and, even if there was, it was not unfair.160 3.72 In Specsavers, Asda had set out to make references to the well-known Specsavers

marks and logos to promote its own in-house optical services. It had targeted 155

See 7.62 et seq. Comparative advertising is not legitimate if it relates to replica products:  L’Oréal (n 112) at [80]. 157 See n 128. 158 See comments in L’Oréal in the CA: [2010] EWCA Civ 535, [2010] RPC 23 at [49]. 159 See Interflora (n 114) at [90] and analysis by Kitchin LJ in Specsavers (n 24) at [128]–[141]. 160 Whirlpool (n 62) at [136]–[138]. See too Miss World (n 150). Contrast Viaguara SA v OHIM, Case T-332/10, 25 January 2012—‘Viaguara’ for drinks would take advantage of ‘Viagra’. 156

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Without Due Cause Specsavers, designing its advertising to claim that its services were better than Specsavers, especially on price, but had not made any attempt to ensure that its campaign fell within the CAD. Not only did it use logos which resembled Specsavers’ logo marks, but it used advertising ‘straplines’ which made direct references to them: ‘Be a real spec saver at Asda’ and ‘Spec savings at Asda’. Kitchin LJ found that the straplines and logos (seen in context)161 made a clear link to the marks and took unfair advantage of them, intending to benefit from their power of attraction.162 It seems that the lack of a likelihood of confusion as to origin or of an impact on the origin function did not bar a finding of infringement by taking unfair advantage of the Specsavers marks, in contrast to the position where the infringement is by way of dilution of the mark’s reputation.

K WITHOUT DUE CAUSE These provisions only apply if the defendant uses his sign ‘without due cause’. 3.73 It is hard to envisage circumstances which amount to due cause to use a mark but which take unfair advantage of an earlier trade mark—fairness and due cause should go together. In Interfl ora , the CJEU said that use of a keyword to advertise a competing product which was not a ‘mere imitation’ and did not cause dilution etc, such that the competition was fair, would not be ‘without due cause’.163 The issue is pending before the CJEU at the time of writing, in Leidseplein Beheer 3.74 BV v Red Bull GmbH.164 The Advocate General’s Opinion is that use of a sign might be with due cause if there had been genuine and fair use of it prior to registration of the mark, or to the mark acquiring a reputation, for then there might not be any advantage taken of the mark. However, this would be just one of the factors to be taken into account. In Spaline,165 the applicant argued that it had due cause to register the mark ‘Spaline’ 3.75 for cosmetics, despite the opposition raised by the proprietor of the mark SPA, well known for mineral waters, because of the generic nature of the word ‘spa’ for cosmetic products. The GC rejected that argument, because it considered that the evidence did not justify the conclusion that the word was descriptive, let alone that use

161

Specsavers (n 24) at [87]. See also Helena Rubenstein v OHIM (n 136): the CJEU upheld a finding of unfair advantage where an intention was admitted to take advantage of the ‘image’ of the botulinum toxin associated with ‘Botox’. See also Jack Willls [2014] EWHC 110, 31 January 2014, where an objective intention sufficed. 163 See [91]. See summary of the law in BSkyB v Microsoft (n 145) at [191]–[193] and, much earlier, Premier Brands UK Ltd v Typhoon Europe Ltd [2000] ETMR 1071, [2000] FSR 767. 164 Case 65/12, AG Kokott’s Opinion, 21 March 2013. Stop press: CJEU judgment, 6 February 2014. 165 L’Oréal v OHIM ‘Spa’ , Case T-21/07, [2009] ECR II-31, [2009] ETMR 49. 162

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Relative Grounds for Refusal of Registration of the word spa had become ‘so necessary to the marketing of cosmetic products’ that the applicant could manage without making use of it. This suggests that ‘due cause’ for making use of a word could arise from a necessity of some kind to use it in relation to the applicant’s goods or services. In contrast, in L’Oréal Jacob LJ observed that there could be no need to adopt packaging intended to ‘wink at’ an earlier mark.166

L SECTION 54: PROTECTION OF NONTRADE MARK RIGHTS 3.76 Section 5(4) protects unregistered trade mark rights and other earlier rights against

the registration of conflicting new trade marks. Section 5(4)(a) reflects Article 4(4) (b) of the Directive. It protects goodwill, which could be relied upon to prevent use of the junior mark under the law of passing off. Such rights are discussed in detail in Chapter 8. 3.77 The requirements of the section were considered in Wild Child,167 and the test laid

down by the Appointed Person (AP) in that case, based upon Reckitt & Colman and Warnink,168 is now regularly applied in the UKIPO in assessing the applicability of s 5(4)(a). 3.78 If an opposition based upon s 5(4)(a) is to succeed, convincing evidence will be

required of the nature and extent of the opponent’s rights at the relevant date. That may, of course, be problematic in a Registry hearing, where it is relatively uncommon for the written evidence to be supplemented with oral evidence and cross-examination. In Reef,169 at first instance, Pumfrey J noted the difficulty of assessing on paper the strength of a claim to goodwill and to evaluate the cogency of the evidence of the opponent’s reputation and its extent. He commented that the evidence ought to show that the opponent’s reputation extends to the goods comprised in the applicant’s specification of goods and should include evidence as to reputation primarily from the trade and the public, supported by evidence of the extent of use, and as to the manner in which the goods are traded or the services supplied. 3.79 Certainly, greater weight may be given to evidence of reputation which comes

from independent third parties than to optimistic or self-serving statements from 166

L’Oréal (n 112) at [83]. Wild Child trade mark [1998] RPC 455; see also Artistic Upholstery Ltd v Art Forma (Furniture) Ltd [2000] RPC 311; ‘The Animals’ , BL O/369/13 (AP), 9 September 2013: problems with historic goodwill, as to which see also Simmons trade mark BL O/468/12, 26 November 2012, (AP). 168 Reckitt & Colman Products Ltd v Borden, Inc (‘Jif ’) [1990] RPC 341; Erven Warnink BV v J Townend & Sons (Hull) Ltd (‘Advocaat’) [1979] AC 731. 169 REEF trade mark [2002] RPC 19; and see the potential impact of this on the decision in Evans T/A Firecraft v Focal Point Fires plc [2009] EWHC 2784 (Ch), [2010] RPC 15, [2010] ETMR 29 (discussed at 5.50). 167

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Section 5(4): Protection of Non-Trade Mark Rights the rights’ owners or their agents. However, there are no absolute requirements as to the nature of the evidence needed. The evidence should show that the opponent’s reputation extends to the goods comprised in the applicant’s specification of goods.170 The absence of trade evidence (a frequent occurrence) will not necessarily mean that the opposition will fail, as long as the opponent produces some evidence, adequately supported by relevant documents, to show what has been done to publicise the name or mark, which is the key evidence necessary to establish a sufficient goodwill.171 The less extensive the evidence of use relied on, the more solid it must be. The registrar is not obliged to accept an assertion by a witness that an opponent had goodwill at the relevant date, or that the use by a third party of a similar mark would amount to misrepresentation, when the material relied upon in support does not bear that out.172 The evidence must also relate to the relevant date; this is usually the date of applica- 3.80 tion for the mark, though if the mark was in use before then, the relevant date will be the date at which the acts first complained of commenced.173 In addition, where both parties have been using their marks prior to the date of application, and one or both has continuing goodwill in the mark, it will be necessary to show which (if either) of their rights ought to prevail.174 Section 5(4)(b) protects rights which pre-date the trade mark for which appli- 3.81 cation is sought and which are not in themselves rights in the nature of a trade mark, such as copyright, design right, or registered designs.175 The provision is likely to affect device marks, or other pictorial marks which infringe copyright, and marks consisting of shapes or packaging which may infringe copyright, design right, or a registered design. In Anne Frank Stichting ’s trade marks176 an application for revocation of two marks consisting of the name Anne Frank was based upon the applicant’s claim to own the copyright in Anne Frank’s signature. In fact, the application failed (it was doubted whether there was copyright in a signature). However, in Team Lotus,177 copyright in an earlier device was successfully relied upon on the basis of s 5(4)(b) to oppose an application for a similar device mark.

170

Minimax GmbH & Co KG v Chubb Fire Ltd [2008] EWHC 1960 (Ch), 29 July 2008. See Ecoblock trade mark, BL O/178-06 (AP), 7 June 2006, applying Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5. 172 Advanced Perimeter Systems Ltd v Keycorp Ltd (Multisys) [2012] RPC 14 (AP) at [17]–[22]. Also Club Sail trade marks [2010] RPC 32 (AP). 173 Cadbury Schweppes Pty Ltd v Th e Pub Squash Co Pty Ltd [1981] RPC 429. The GC followed that approach in relation to the CTMR and cited the ‘Pub Squash’ case in Last Minute Network Ltd v OHIM, T-114/07, [2009] ECR II-1919, [2010] ETMR 35 at [50]. 174 Croom ’s trade mark application [2005] RPC 2, and see Minimax (n 170) and 8.24. 175 On copyright and designs see Copinger & Skone James on Copyright (n 12). 176 [1998] RPC 379, [1998] ETMR 687. 177 [1999] ETMR 669. 171

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Relative Grounds for Refusal of Registration

M OTHER EARLIER RIGHTS 3.82 Under Article 8(4) CTMR, a CTM application may be opposed by the owner of

a non-registered trade mark or of another sign used in the course of trade ‘of more than mere local significance’, as long as that right was acquired prior to the application date and would, under Community or the relevant local law, give its proprietor the right to prohibit the use of the CTM.178 Where the validity of a CTM is challenged after it has been registered, not only may invalidity be sought (under Article 53(1)) because the CTM was registered in breach of Article 8(4), but under Article 53(2) a CTM may also be declared invalid where its use might be prohibited by virtue of a right to a name or of ‘personal portrayal’, a copyright, or some other industrial property right (see Chapter 5). 3.83 So, for instance, the registration of a CTM may be opposed by the proprietor of good-

will sufficient to found a passing off action in the UK; whether the opponent has such rights is a question of national law, not EU law,179 and an opposition on that basis would proceed on much the same basis at OHIM as it would in the UK Registry under s 5(4) (a).180 Other rights of more than mere local significance might, for instance, include appellations of origin. In one of the many Budweiser cases, the Czech company relied upon Article 8(4) as well as its own ‘Bud’ trade marks to oppose applications by the American company, claiming that ‘Bud’ was recognised as an appellation of origin.181 The GC held that whilst the name had been registered as such an appellation, and had not been declared invalid (it was under threat), it should be recognised by OHIM. This part of its judgment was upheld by the CJEU.182 3.84 In Fonseca,183 the GC stated that the rationale of Article 8(4) is to restrict the

number of conflicts between signs, by preventing an earlier sign, which is not sufficiently important or significant, from being used to challenge either the registration or the validity of a CTM. It found that use of a name in a single Portuguese town of 120,000 inhabitants was merely local, so insufficient for this purpose.

178

See also the effect of Art 107. Tresplain Investments Ltd v OHIM, Case C-76/11, [2012] ETMR 22, [2011] ECR I-00182 at [56]. 180 Though not always with predictable results: see Last Minute Network Ltd v OHIM (n 173). For a case relying on the ‘extended’ form of passing off see Tilda Riceland Private Ltd v OHIM, Case T-304/09, [2012] ETMR 15, 18 January 2012. 181 Budějovický Budvar v OHIM, Joined Cases T-225/06, T-255/06, T-257/06, and T-309/06, [2008] ECR II-3555, [2009] ETMR 29. 182 Case C-96/09, [2011] ECR I-02131, [2011] ETMR 31: whether an appellation was a good basis for the opposition was not in issue before the CJEU: [98]. 183 Alberto Jorge Moreira da Fonseca, Lda v OHIM, Joined Cases T-318/06 to T-321/06, [2009] ECR II-649, [2009] Bus LR D101. See too Einstein Stadtcafe ’s application [2000] ETMR 952; Morelli v OHIM, Cases T-321 and 322/11, 14 May 2013 (reliance on domain name); and Edwin Co v OHIM, Case C-263/09, [2011] ECR I-05853, [2011] ETMR 45, 5 July 2011 (reliance on personal name protected in Italy). 179

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Section 7: Honest Concurrent Use In Bud,184 the CJEU echoed the GC’s point that to oppose a CTM a right must be sufficiently ‘important and significant’, as a right of opposition must be reserved to ‘signs which actually have a real presence on their relevant market’. It is not a simple geographical test, but the mark must be used in a sufficiently significant manner, in terms of the duration and intensity of use. So, the amount of publicity given to the mark is relevant, as is the geographical extent of use, which must not be merely local.185 The distinction is between ‘local traders using a sign locally on the one hand, and 3.85 traders in a specific territory (such as England and Wales) using a sign in a “sufficiently significant manner in the course of trade”, where the geographical extent of that trade is not merely local’.186 The position is to be considered in the context of the market for the goods in question. In Frost, the defendant was found to have goodwill in a substantial part of the UK sufficient to sustain a passing off action, and so its right was of more than local significance.187

N SECTION 55: CONSENT Under s 5(5)188 the proprietor of any earlier trade mark or earlier right may consent 3.86 to the registration of a mark which would otherwise offend against any of the other subsections of s 5. The provision was, of course, of much greater significance when there was ex officio refusal of trade mark applications on relative grounds. In this respect, as now with the need to raise relative grounds in opposition proceed- 3.87 ings, the 1994 Act looks to the proprietor of earlier rights to make the commercial judgment necessary to protect his rights against later registered trade marks.

O SECTION 7: HONEST CONCURRENT USE Under the 1938 Act, confusingly similar marks might be registered upon proof of 3.88 ‘honest concurrent use’. When the 1994 Act came into force, s 7 maintained the position, but the provision fell away with the Registry’s ex officio power to refuse marks on relative grounds.

184

See n 182. See n 182 at [157]–[160]. The CJEU remitted this part of the case to the GC, which decided the point on 22 January 2013 under the same reference numbers T-225/06 etc. 186 per Vos J in Frost Products Ltd v FC Frost Ltd [2013] EWPCC 34, 26 July 2013 at [115]. It was common ground that the test posited in Compass [2004] RPC 41 cannot apply in light of the CJEU’s decision. See also K-Mail Order GmbH & Co KG v OHIM, Case T-279/10, [2011] ECR II-00283, 14 September 2011—insufficient evidence of commercial use of the name. 187 Frost (n 186) at [119]–[120]. 188 See the equivalent provision of the Directive, Art 4(5). 185

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Relative Grounds for Refusal of Registration 3.89 However, it now seems that the concept of honest concurrent use remains alive and

may be relied upon to show that apparent conflicts between marks are not real, or not of significance, where the ‘junior’ user can point to a period of concurrent but non-damaging use of the marks.189 The CJEU confirmed in Bud,190 that even where there is double identity, if it is shown that the marks have coexisted in the marketplace without any confusion, there is no impairment of the senior mark’s function of origin, such that the senior mark may not object to the registration of the junior mark. 3.90 IPC Media Ltd v Media 10 Ltd shows the difficulties which may arise where there

has been coexistence. The Claimant had published Ideal Home magazine since the 1920s, to the initial annoyance of the proprietor of the Daily Mail, which had launched the Ideal Home Exhibition (later the Ideal Home Show) some 12 years earlier. As a result, the name ‘Ideal Home’ in the field of home interest goods and services had not since 1920 signified only one business. The parties were found to have taken no real steps to prevent the public from assuming (wrongly) that there was some connection between their businesses. That ‘situation of tolerable coexistence’ was alleged to have changed when the Defendant launched an online shop which the Claimant considered directly competed with its business which included making some retail sales of home interest goods. IPC Media relied on a UK trade mark it had registered in 2006 for retail services of such goods by mail order or over the internet. However, following Bud, the infringement action failed, on the basis that the confusion caused by the Defendant’s use of the mark for online shopping was no more than would have been expected by reason of the concurrent trading in the parties’ core businesses which had been long-standing at the time of registration of the Claimant’s mark, and would not, therefore, affect any of the mark’s functions.191

189

See eg Lunan Group Ltd v Edwin Co Ltd [2007] RPC 18; Ratiopharm (n 60). See n 16 at [23], [33] following the CJEU in Case C-482/09. See 7.123. The point was raised too late in Tresplain (n 179). 191 IPC Media Ltd v Media 10 Ltd , n 28, see too Reed, n 20, another case in which businesses had co-existed but converged on-line, leading to allegations of infringement. 190

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4 PR ACTICE AND PROCEDUR E IN THE TR ADE M AR KS R EGISTRY AND OHIM

UKIPO PROCEDURE 

H MAKING AN APPLICATION I OFFICIAL EXAMINATION AND PUBLICATION J OPPOSITION AND OBSERVATIONS K REGISTRATION AND BEYOND L APPEALS

4.01

A APPLYING TO REGISTER A UK TRADE MARK B OFFICIAL EXAMINATION OF THE APPLICATION C AMENDMENT, LIMITATION, AND DISCLAIMER D PUBLICATION, OPPOSITION PROCEEDINGS, AND OBSERVATIONS E APPEALS F REGISTRATION, DURATION, RENEWAL, AND RESTORATION G ALTERATION OR SURRENDER OF REGISTRATION

THE COMMUNITY TRADE MARK REGULATION 

4.01 4.24 4.29

INTERNATIONAL CONVENTIONS 

4.37 4.66

M THE MADRID AGREEMENT AND PROTOCOL N THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY PARIS UNION O THE TRIPS AGREEMENT

4.72 4.76

4.83 4.88 4.91 4.93 4.97 4.102 4.103

4.119 4.124

4.79

UKIPO PROCEDURE A APPLYING TO REGISTER A UK TRADE MARK A number of documents may be usefully consulted when making an application 4.01 to register a UK trade mark. The 1994 Act itself, as amended, and the Trade Marks Rules 2008 (the Rules), as well as documents produced by the United Kingdom Intellectual Property Office (UKIPO), such as its Manual of Trade Marks Practice and Tribunal Practice Notices, are available online at the UKIPO website.1 1 ; the ‘IP Professional’ part of the site contains copies of the 1994 Act, Statutory Instruments, past decisions, etc. Useful sites include for texts of legislation.

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Practice and Procedure in the Trade Marks Registry and OHIM 4.02 The Registrar requires specific forms to be used for applications to register a mark

and for taking steps in the course of proceedings before the Registry.2 These are also published and available online at the UKIPO website. 4.03 Fees are payable when applying to register a mark and at various stages in relation

to proceedings in the Registry. The appropriate fee3 must be paid at the time of filing any form (Rule 4(2)). The application 4.04 Section 32 of the Trade Marks Act 1994 (the 1994 Act) sets out the requirements

for applications to register a mark. Section 32(2) requires an application to contain: (a) (b) (c) (d)

a request for registration of a trade mark the name and address of the applicant a statement of the goods/services in relation to which registration is sought a representation of the mark.

4.05 Complying with the s 32(2) requirements is necessary in order to obtain the often

important filing date.4 Rule 5 provides that the application must be filed on Form TM3, which is largely self-explanatory, and reflects the requirements of s 32(2) and of Rules 6–9 and 11–13. Please refer to 2.16 et seq regarding the need to represent the mark graphically. Any registered rights which may flow from the application will be for the mark as filed; if the application is made for a specific colour or colour combination, the registered rights will be for the mark in those colours. 4.06 A single application form can be used to apply for up to six marks, as long as they

are a ‘series of marks’ (see 4.11), or to register the same mark for a variety of different goods and services, even if they are in different Classes. 4.07 Form TM3 includes a space for the applicant to specify the appropriate Class(es)

(see 4.13) in which he wishes to register the mark or marks, in accordance with Rule 7, though this is not specified in s 32(2). The Classes must be listed in consecutive numerical order, with a description of the relevant goods or services alongside each Class number. The form also permits the applicant to claim priority under s 35, entitling the applicant to backdate its filing date by up to six months.5 4.08 A UK trade mark application costs £200 for one Class of goods or services with a

further £50 payable for each additional Class.

2

Under s 66 of the 1994 Act. See the Trade Marks (Fees) Rules 2008, SI 2008/1958 amended by the Trade Marks and Patents (Fees) (Amendment) Rules 2009, SI 2009/2089 and the Trade Marks (Fees) Amendment Rules 2013 (SI 2013/2236). 4 See 4.22 on the importance of the fi ling date. 5 See 4.22 . 3

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Applying to Register a UK Trade Mark The applicant must sign a certificate stating that: ‘the Trade Mark is being used by 4.09 the applicant or with his or her consent, in relation to the goods or services stated, or there is a bona fide intention that it will be so used’. This statement repeats the wording of s 32(3). It seems that the applicant must have a genuine intention to make commercial use of the mark as a trade mark.6 The Registry has re-emphasised the importance of this statement and the need for the applicant to have a bona fide intention to use the mark in relation to the goods and services listed.7 See the discussion of bad faith at 2.129 et seq. An application may be made by a sole proprietor or by joint proprietors.8 Where a 4.10 mark is jointly owned, each of the proprietors may exploit it without the consent of his co-proprietor(s).9 However, by s 23(4), all co-proprietors must act together to license, assign, or mortgage the mark (see 6.04). A single co-proprietor may issue infringement proceedings, but he must join his co-proprietor(s) to proceed with the action beyond an interim stage; this requirement of s 23(5) matches Part 19 of the Civil Procedure Rules. Series of marks Section 41(1) permits the registration of a series of trade marks. A series is defined 4.11 in s 41(2) as ‘a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark’. Th is imposes three conditions. First, on the positive side, the trade marks must resemble each other in their ‘material particulars’. Secondly, any differences must not comprise elements which, alone, would be regarded as having distinctive character. Th irdly, the difference must not substantially affect the identity of the trade mark, for example by affecting the way in which the mark may be pronounced, its visual impact, or the idea conveyed by the mark.10 In Logica’s application the applicant sought to register the word ‘Logica’ as a series along with 307 other marks consisting of the name Logica with different domain-name suffi xes. The suffi xes were found to make a sufficient difference for the marks not to qualify as a series. In Dualit11 it was held that an application to register two slightly different toaster shapes as a series was unacceptable; again, there was too much difference between the two shapes.

6 Demon Ale [2000] RPC 345 and (by analogy) ‘Merit’ [1982] FSR 72: an attempt to protect an unregistrable mark by registering a similar mark. 7 See Practice Amendment Notice 03/13 at para 11. 8 ss 23 and 27. 9 s 23(3). 10 See Logica plc, BL O/068/03, 5 March 2003, where the Appointed Person (AP) applied Neutrogena Corp v Golden Ltd [1996] RPC 473, 488–9 and held that it would be inconsistent with the scheme of the 1994 Act and the Directive to accord s 41(2) a wider ambit than s 46(2). 11 [1999] RPC 890.

95

Practice and Procedure in the Trade Marks Registry and OHIM 4.12 Amendment of series applications may take the usual form of removal of goods

or services from the specification (see 4.29), but the marks themselves cannot be amended, only deleted from the series until the marks remaining satisfy the test set out earlier. Classification of goods 4.13 The Register is divided into 45 different Classes of goods and services, so as to aid

identification of the goods or services covered by the mark, and to allow efficient searching of trade marks. This is ‘The International Classification of Goods and Services’, better known as the ‘Nice Classification’, administered by the World Intellectual Property Organization (WIPO). It is used by the UK (see Rule 7) and OHIM and by over 90 countries worldwide.12 The Class headings indicate in very general terms the type and range of the goods/services which fall within each Class, and are supplemented by a detailed list of many thousands of specific goods/ services in alphabetical order, identifying the Class appropriate to each item. All goods and services covered by an application are interpreted on the basis of their natural and usual meaning. 4.14 Under s 65, the Rules may empower the Registrar to implement any amended

classification and to amend existing entries on the Register. Changes to the International Classification are made periodically and are published by WIPO and the UKIPO. Applications are classified by reference to the classification which is in force at the time of application. Changes are not made retrospectively to existing registrations unless the Registrar considers it necessary, see s 65(2). Where that occurs, Rule 54 provides for reclassification of registrations, and Rule 55 provides an opposition procedure in relation to proposed reclassification. 4.15 Rule 8 provides that an application may be made in a number of different Classes

and it must list the goods or services falling in each Class. It is important that the description of the goods or services within the specification be clear enough to be understood by an average person in the trade. The use of specialist terms used in particular trades, or found in specialist dictionaries, may be acceptable. 4.16 The Court of Justice of the European Union (CJEU) in the IP Translator case

has confirmed that there is a legal requirement for the various goods or services covered by a trade mark application to be identified by the applicant with clarity and precision.13 In order to satisfy that requirement, the goods or services must be 12

The International Classification can be accessed at WIPO’s website and the UKIPO has its own classification guide accessible on its website. See and 13 See PAN 03/13 and Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Case C-307/10, [2013] RPC 11, [2012] ETMR 42. See also the decision of the AP following the reference at [2013] RPC 20 where Geoff rey Hobbs QC disagreed with the approach suggested by the General Court in Present-Services Ulrich GmbH v OHIM, Case T-66/11, [2013] ETMR 29, 31 January 2013 to the effect that ambiguities can be resolved by ‘off the register’ explanations.

96

Applying to Register a UK Trade Mark identified with sufficient clarity and precision to enable the competent authorities and economic operators to determine the extent of the protection conferred by registration of the trade mark solely by reference to the terms by which the goods or services have been identified. Further, the applicant ‘must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of the particular Class concerned or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that Class are intended to be covered.’14 The UKIPO takes the view that when classifying and editing the specifications of 4.17 an application: (a) the goods or services must fall within the Class(es) shown on the application; (b) the descriptions must be understandable in the context of the relevant Class number; and (c) the breadth of the goods/services to be covered must not breach Registry practice concerning wide specifications. In the UK, the Registry’s view has been that use of the wording of the Class headings may not cover all goods within that Class if the term used is not apt to describe them.15 OHIM’s practice was the opposite but that has now changed. Its practice now is that 11 of the 197 class headings are not sufficiently clear and precise and an application covering these classes cannot be accepted without further specification. The CJEU in IP Translator held that the general indications of Class headings do not necessarily provide the required degree of clarity and precision.16 Some Class headings are and some are not sufficiently clear but it is up to the Registries in each Member State to determine which ones are too general and too variable in meaning to satisfy the requirement. It is for the IPO in the UK, and OHIM in relation to Community Trade Marks (CTMs), to ensure that applications for registration comply with the legal requirement for clarity and precision.17 In case of an ambiguity in the specification of goods the Registrar may treat the 4.18 Class number as relevant to the interpretation of the scope of the application. So, the choice of Classes in an application may be relevant to the construction of the application, and whether it can be properly amended.18 It may also be relevant to the scope of protection offered by the mark when registered. In Reed 19 the Court of Appeal held that the relevant date for construing the specification is the date with effect from which protection was originally secured, rather than the date of the use in respect of which protection is subsequently claimed.

14

See [61] in the judgment of the CJEU. See the Manual concerning examination of classification, part B.3, p 6. On over-broad specifications see discussion of s 3(6) and PAC 5/06 in Ch 2. 16 See [54]–[56] of the judgement of the Court. 17 See s 32(2)(c) of the 1994 Act and r 8(2)(b) of the Rules. 18 See Altecnic Ltd ’s application (‘Caremix’) [2002] RPC 34, [45]; and 3.23. 19 Reed Executive plc v Reed Business Information Ltd [2004] RPC 40, [2004] ETMR 56. 15

97

Practice and Procedure in the Trade Marks Registry and OHIM 4.19 If the applicant mistakenly lists items under a Class into which they do not fall,

he may by Rule 8(4) request that the application be amended. However, s 39(2) restricts the amendments which may be made to an application, 20 and prevents amendments which widen the coverage of the list of goods or services. Obvious mistakes may be amended, but ‘only where the correction does not substantially affect the identity of the trade mark or extend the goods or services covered by the application’. Rule 8 and s 39(2) of the 1994 Act have to be read together. It is clear that they only allow the addition of a Class where the specification explicitly lists goods or services which are in a different Class and have been included only because of an error of wording or copying or as an obvious mistake.21 The final decision as to whether or not any particular goods or services fall into a particular Class is to be taken by the Registrar under s 34(2). Post-registration amendment is limited to surrender of the mark in respect to some or all of the goods or services for which the mark is registered, following s 45. 4.20 The situation is complicated because of the large number of different goods and

services, and because goods or services which are not necessarily very similar may well fall within the same Class, whilst goods or services which are or could be similar22 can fall within different Classes. Beverages are a good example. Class 32 includes beers and non-alcoholic beverages, such as non-alcoholic wines, but alcoholic wines are in Class 33. Date of filing 4.21 A number of different sections in the 1994 Act refer to the ‘date of registration’, for

instance, s 9(3). Once a mark is registered, its effect runs from that date, which by s 40(3) is the date of filing of the application, or (if the application is not in order at the outset) the date on which the last of any necessary additional documents is filed.23 The Registrar will send notice to the applicant if the application is deficient or the fee is not paid, and unless the defect is remedied the application will be treated as never having been made or as abandoned.24 It is obviously sensible to attempt to get the application right in the first place, as the date of filing of one’s mark may be significant where someone else is seeking to register or use the same mark.25 4.22 The date of fi ling an application for a UK mark is an effective priority date not

just for other UK applications but also for the purposes of international priority. 20

See the decision of Geoffrey Hobbs QC sitting as the AP in IP Translator (n 13) at [29]. See the facts in Caremix (n 18), where an application to register for ‘valves’, etc in Class 7, should have been in Class 11, as goods for use in plumbing, but the mistake was not obvious (as some valves do fall within Class 7) and no amendment was permissible. 22 As to which see the discussion of s 5 of the 1994 Act at 3.50 et seq. 23 s 33. 24 r 13. 25 See Caremix (n 18). 21

98

Official Examination of the Application An application lodged in the UK can be used as a ‘jumping-off point’ to make applications for trade marks in numerous other jurisdictions, relying on the same priority date. 26 By the same token, under s 35 and Rule 6, applications may be made to register UK marks relying upon trade marks registered (or applications made) in other Paris Convention countries. Applicants may claim priority based upon the date of fi ling of the first foreign trade mark application for up to six months from that date. Such applications take precedence over other applications with an earlier UK fi ling date, but a later priority date. The mere fact that the foreign application may have led to the grant of a foreign trade mark does not, however, mean that the application will be accepted in the UK, for the application must still satisfy the absolute and relative requirements of the 1994 Act and Rules.27 Rule 6 provides that where priority is claimed under ss 35 or 36, particulars of the 4.23 priority claim must be included in the application. A certificate from the country from which priority is claimed, verifying the foreign application, may be required to be filed under Rule 6(2).

B OFFICIAL EXAMINATION OF THE APPLICATION Any application made for a UK trade mark must (under s 37) be examined by the 4.24 Registrar, 28 to ensure that it satisfies the requirements of the 1994 Act, described in Chapter 2, as well as the formal requirements of ss 32 and 34 and the related Rules. At the same time, the Registry will carry out a search for potentially conflicting registered trade marks (see Chapter 3). The length of time taken for the Registry to carry out its examination is not very 4.25 great; it aims to issue an examination report within 15 working days of receipt of an application. However, for applicants in a real hurry, who wish to register a single trade mark, the UKIPO offers an expedited examination service. Such applications must be lodged online and the fee paid at that time. If that is done, then under Rule 5(5) the Registry will notify the applicant within ten business days after filing of its view on whether the requirements for registration are met. The ‘Right Start’ application service also facilitates applications. On payment of 4.26 half the usual fee, namely £100 per application plus £25 per additional Class, the

26

See 4.118 et seq. See the Trade Marks (International Registration) Order 2008, SI 2008/2206, as amended, which aims to mirror the domestic regime (so far as possible) for international applications, eg as to relative grounds, as per the Trade Marks (Relative Grounds) Order 2007, SI 2007/1976. 28 The Examination Desk procedure is also available on the UKIPO website. 27

99

Practice and Procedure in the Trade Marks Registry and OHIM Registry will examine an application and issue an examination report to determine whether it meets the requirements for registration, on both absolute and relative grounds. The balance of the application fee is payable if the applicant decides to proceed and have the mark registered. The aim is to provide the report in the usual standard time frame. Any issues will be discussed, and if they can be overcome, and the application is accepted for publication, the balance of the usual application fee must be paid within 14 days of the examination report. If the application is not pursued, no further fees are due. 4.27 Under Rule 62(1), the Registrar may ask for further information to be filed within a

specified period if a proper examination of the application is needed. For instance, where it appears to the Registrar that the specification of goods or services is excessively broad, the applicant may be required to provide evidence to convince the UKIPO that the application is not made in bad faith. 4.28 After carrying out its examination (whether expedited or not) the UKIPO will

send the applicant an examination report which will either accept the application (in which case the mark will proceed to publication) or list the objections to it, detailing any requirements which need to be met to permit the application to proceed to publication, or suggestions as to how any objections may be overcome. For instance, an applicant may be asked to provide evidence of acquired distinctiveness. The Registry will allow the applicant two months to respond to those objections or supply any missing information; that time limit may be extended if the applicant makes a formal application for more time.

C AMENDMENT, LIMITATION, AND DISCLAIMER 4.29 If the objections of the Registrar cannot be resolved, the applicant may have no

choice but to amend the application, although the extent of any amendment which may be allowed is limited by s 39. The changes that can be made to trade mark applications are restricted because, if granted, the registration takes effect from the date of application and not grant. Furthermore, once the application has been published, third parties could be adversely affected by relying on what was published being changed without being informed. For instance, if the UKIPO considers that their mark is descriptive of certain goods within the specification, it is possible for those goods to be deleted from the specification and for the application to continue for the remaining goods. An objection to the specification of goods may also be capable of being cured by adding words of limitation to the description of goods, as long as those words are positive, not negative. The CJEU, in Postkantoor 29 made it plain that it is not acceptable to 29

Koninklijke KPN Nederland NV v Benelux-Merkenbureau (‘Postkantoor’), Case C-363/99, [2004] ECR I-1619, [2005] 2 CMLR 10, [2006] Ch 1, [2004] ETMR 57 at [114]. See 5.29.

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Amendment, Limitation, and Disclaimer add words excluding the particular characteristic that the mark describes. If a mark has been registered subject to a limitation, that will affect its scope.30 Otherwise, under s 39, amendments may only correct the name or address of the 4.30 applicant, or errors of wording or of copying, or obvious mistakes, and always subject to the proviso that such amendments do not substantially affect the identity of the trade mark or extend the goods or services covered by the application.31 It is important that applications properly reflect the mark which is applied for, so that from the outset someone searching the Register for existing applications will be able to see what marks may have priority over a new application; applicants must not benefit from the original priority date for a mark the scope of which differs significantly from that in the application.32 A disclaimer or limitation may be made voluntarily under s 13 of the 1994 Act, 4.31 to facilitate a registration. Limitations may be expressed in positive or negative terms or as exclusions. Section 13 should not be used to circumvent the restrictive provisions of s 39, such as seeking to add a colour and size of the mark after filing, which was considered by the Court of Appeal to constitute the inclusion of an essential ingredient rather than a limitation.33 Rule 31 provides that disclaimers or limitations, geographical or otherwise, may be voluntarily placed upon a mark by its proprietor. The rights conferred by s 9 are limited by any disclaimer, so, in an infringement action, no reliance can be placed upon disclaimed matter or elements of the mark.34 Section 13 does not specify that a disclaimer is to have similar effect in relation to s 5. However, the UKIPO will treat a disclaimer as an admission that the disclaimed component of the earlier mark is not distinctive, and disclaimed material should also be disregarded for the purpose of relative examination.35 If the UKIPO continues to object to the application on absolute grounds, and 4.32 the objections cannot be cured by a proposed amendment (or could be cured by an amendment which the applicant is not prepared to make), the applicant may seek a hearing before one of the Registrar’s hearing officers to argue the point. The Registrar has a general duty under Rule 63 to give a party an opportunity to be

30

See eg Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2007] EWCA Civ 244, [2007] RPC 5 at [57]. Post-registration amendments are also allowed but on the same strict basis. For an example of the potential risks to validity of post-registration amendments albeit to a CTM see British Sky Broadcasting Group plc, Sky IP International Ltd v Microsoft Corporation [2013] EWHC 1826 (Ch), 28 June 2013. 32 per Simon Thorley QC in Re Swizzels Matlow Ltd ’s trade mark application [1999] RPC 879, [2000] ETMR 58; Phones 4u (n 30). 33 See Mars UK Ltd v Société des Produits Nestlé SA (three dimensional trade marks) [2004] EWCA Civ 1008, [2005] RPC 5. 34 The European Ltd v The Economist Newspaper Ltd [1998] FSR 283, [1998] ETMR 307. 35 Torremar trade mark [2003] RPC 4, AP, and PAC 3/00. See also General Cigar v Partagas y Cia [2005] EWHC 1729, [2005] FSR 45 at [80]. 31

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Practice and Procedure in the Trade Marks Registry and OHIM heard before making a decision adverse to him. An appeal lies against a refusal to register a mark after such a hearing.36 4.33 So far as conflicts with earlier trade marks are concerned, the UKIPO will search

for and identify earlier trade marks which in its view might raise relative grounds for refusal of the application under s 5(1) or (2) of the 1994 Act.37 The UKIPO is only able to refuse an application on the basis of an ‘earlier right’ if that ground is raised by the proprietor of that earlier mark. It notifies the earlier rights owners if they have requested to be so notified. It is then up to that earlier rights owner to decide whether to oppose the application. Additionally, those earlier marks will be listed in the examination report, under Rule 14(1)(a). The report will enable the applicant to make an informed choice as to whether or not to proceed with his application and to assess the risks of doing so. The UKIPO does not notify an earlier rights owner in relation to other possible grounds such as s 5(3) (marks with a reputation) or s 5(4) (other earlier rights such as passing off ) because the examiners do not know what use has been made of earlier marks and whether any such objection exists. 4.34 Again, the applicant is given a period (currently two months) to discuss the case

with the examiner and make proposals designed to avoid the perceived conflict. Some applicants enter into negotiations with the owners of the earlier rights, seeking to obtain their acceptance of the application. If consent is obtained to the registration, a letter to that effect should be produced to the Registrar. In other cases the applicant may seek to amend the application in some way. 4.35 One possible response to a perceived confl ict with an earlier mark is to divide

the application pursuant to Rule 26. Th is divides the original application into a number of separate applications for the same mark but with different specifications of goods and services. The divided applications keep the same fi ling date as the original application. This may enable part of the original application to proceed to registration without opposition from the earlier rights holder, providing the applicant with a registration (even if not of the full scope originally sought), and restricting any dispute to the truly contentious goods or services. If the UKIPO is not satisfied with any proposals and the applicant does not amend the application, the potential relative grounds of refusal will not prevent the application from proceeding to publication. Instead, notice of the application will be sent to the ‘relevant proprietors’ of the earlier mark(s) under Rule 14(1)(b). Those proprietors will not necessarily be the owners of all of the earlier marks identified in the examination report, just those of them who have requested to be notified of conflicting applications (see Rule 14(2) and (3)).38 36

See 4.66 et seq. See Ch 3 and n 38 below. 38 The proposed draft Directive and CTMR provides that the UKIPO and OHIM will only examine the mark applied for on absolute grounds. If implemented, this proposal means that it will be up to the vigilance of third parties to raise any relative rights grounds. 37

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Publication, Opposition Proceedings, and Observations If the examiner has not raised objections and the mark is not opposed, it can 4.36 take around six months (to allow for advertisement and the expiry of the time for an opposition to be lodged) to become registered. If objections are raised by the UKIPO or, once accepted, the application is opposed, it is likely to take longer— indeed, often much longer, given the potential length of time to reach a final hearing on an opposition.

D PUBLICATION, OPPOSITION PROCEEDINGS, AND OBSERVATIONS When the Registrar accepts an application, it will be published in the weekly Trade 4.37 Marks Journal.39 Once published, a party has two months to oppose it but this period may be extended to three months by filing a form online.40 Anyone who objects to the proposed registration of the mark can make his objections known to the Registrar in one of two ways: by opposition or by written observations. The impact (and likelihood) of opposition is by far the more important. In addition to the established scheme of opposition, there is a new ‘fast track’ opposition scheme.41 The ‘fast track’ scheme has been introduced to assist small businesses protect their 4.38 trade marks. It is supposed to be a cheaper, simpler, and faster way to oppose an application. In order to achieve that goal the oppositions need to proceed on a limited basis with fewer steps taken by the parties to advance their respective positions. The following restrictions apply to fast track oppositions:42 (a) The opposition must be based on s 5(1) and (2)  only, so if the opponent wishes to rely on any other ground, then this scheme is not suitable. (b) The opposition must be based on no more than three earlier marks, each of which is registered in the UK or the EU or is protected as an international trade mark (UK) or (EU). (c) Any required proof of use of the earlier marks must be provided with the notice of opposition. (d) The opponent must consider that no hearing or further evidence is necessary.

39

See s 38(1) and r 16. A TM7A. There is no fee for filing this form and obtaining the extension and it does not commit the party to filing the opposition. 41 The Trade Mark Rules (2008) have been amended by the Trade Mark (Fast Track Opposition) (Amendment) Rules 2013. 42 See paragraph 2 of The Trade Mark (Fast Track Opposition) (Amendment) Rules 2013. 40

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Practice and Procedure in the Trade Marks Registry and OHIM 4.39 There is some flexibility in the fast track procedure to allow for an oral hearing

should a party request one and the UKIPO agrees that there should be one. If there is no hearing the UKIPO will allow written arguments to be filed. Amendment of the grounds is possible but only within the rules of the scheme. In other words, it is not permissible to commence a fast track opposition and then widen it by amendment to include grounds that are not within the scheme, such as a s 5(3) or (4) ground. It is possible to consolidate a fast track opposition with another non-fast track opposition but the combined opposition will be a non-fast track opposition. 4.40 Someone who objects to the registration of a mark may give notice to the Registrar

of opposition to that registration (see s 38(2)). The opposition process enables interested parties to object to the registration of the mark for some or all of the goods or services in the specification accepted for publication. A non-fast track opposition is essentially a hearing in the Registry (in the first instance) in which a hearing officer, acting on behalf of the Registrar, weighs up the evidence filed by the parties in order to decide whether the application should proceed to registration. Opposition may be based upon any of the absolute or relative grounds in the 1994 Act. So, for instance, a competitor of the applicant may object to the mark on the grounds that its registration would be contrary to s 3(1)(d), as being a term customarily used in the trade. Alternatively, the proprietors of any earlier trade marks or rights (including, but not limited to, the proprietors notified by the Registry under Rule 14) may oppose the application upon absolute or relative grounds. 4.41 The opposition process has always been particularly important for the owners of

earlier unregistered trade marks or other rights which could not be identified by the Registry during the examination process,43 but it has assumed added importance for the owners of all earlier trade mark rights since the abolition of ex officio refusal of applications on relative grounds.44 4.42 Where the opposition is made on relative grounds, only the owner of the earlier

right relied upon may bring the opposition.45 For instance, a licensee of the earlier trade mark proprietor cannot file an opposition. On the other hand, Rule 21 provides that where the opposition is based on s 5(1), (2), or (3), a licensee of the earlier mark, or an authorised user where the earlier mark is a collective or certification mark, may make a request to intervene in the opposition proceedings. If leave is given to intervene, this may be granted subject to conditions, for example as to costs, and the intervener will then be treated as a party to the opposition proceedings.

43 44 45

See 3.76 et seq. See 3.07. Under the Trade Marks (Relative Grounds) Order 2007, SI 2007/1976, para 2.

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Publication, Opposition Proceedings, and Observations Oppositions are currently governed by Rules 17–20.46 In recent years there has 4.43 been a greater emphasis on using case management conferences to determine the precise timetable and steps that each party may take.47 This gives the parties and the Registry greater flexibility and allows the Registry to make procedural orders that are fair and proportionate. The timing of filing an opposition is strict. Under Rule 17(2), the primary period 4.44 for lodging a notice of opposition is two months from the date when the application was published. A proposed opponent who is not in a position to file his Form TM7 within that period can apply to extend the time for doing so by a further month (see Rule 17(3) and (4)). If the application for the extension is made before the end of the initial two-month period, the extension will be granted. No other extension of time can be granted for lodging an opposition notice. Rule 17(2) and (3) are excluded from the Registrar’s general power to extend time under Rule 77.48 The procedure is started by the opponent filing a formal notice of opposition on 4.45 Form TM7, which must include a statement of the grounds of opposition. In the past there was a tendency for grounds of opposition to be stated in the briefest possible terms, sometimes making it difficult to know precisely the scope of the opponent’s objections to the application. Now, statements of case in the Registry must set out a party’s position in some detail.49 Like a statement of case in legal proceedings, the document must let the applicant understand the case which he has to meet, it must outline each of the grounds relied upon and state the case in support of them.50 This is particularly important where an allegation of bad faith is made.51 The statement of grounds supporting the TM7 needs to set out the particulars supporting the allegation of bad faith.52 If the Registry considers that the statement of case is not adequately particularised, 4.46 it will invite the opponent to file an amended statement of grounds. A period of 21 days is usually allowed for this. The Registrar will not serve the Form TM7 on the applicant until this has been done. If no amendment is made, the Registrar may strike out any ground which is not adequately particularised (subject to the party’s right to be heard under Rule 63). The same practice applies to counter-statements.

46 There is a great deal of helpful information about the opposition procedure in the Manual of Trade Marks Practice, Ch 7, available online. 47 See TPN 2/2011 setting out the role of case management in inter partes proceedings. 48 Unless there has been an irregularity on the part of the Registrar or UKIPO which the Registrar considers should be rectified: r 77(5). 49 See TPN 1/2010 explaining the level of detail required when relying on s 5(4) grounds. 50 COFFEEMIX trade mark [1998] RPC 717; Demon Ale [2000] RPC 345; and TPN 4/2000. 51 Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367; Royal Enfield trade marks [2002] RPC 24; Score Draw Ltd v Alan Finch (‘CBD’) [2007] FSR 20, [2007] ETMR 54. 52 See TPN 4/2000 at para 15 and the decision of Arnold J in Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2008] EWHC 3032(Ch), [2009] RPC 9, and [2010] RPC 16 (CA).

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Practice and Procedure in the Trade Marks Registry and OHIM The Registry will consider requests to amend these documents later in the proceedings, including adding a ground of opposition. 4.47 Rule 17(5) requires the grounds of opposition to give details of any earlier mark

relied upon, including the goods and services in respect of which it is registered and upon which the opposition is based (the two not necessarily being the same). Similar details need to be given of any earlier trade mark application relied upon by Rule 17(6). If it will be necessary to prove use of the earlier trade mark under s 6A, the grounds must state that the mark has been put to genuine use in respect of the goods/services relied on or that there are proper reasons for non-use. 4.48 If the opposition is based on an unregistered trade mark or sign, the statement of

grounds must include a representation of the mark and identify the goods and services in respect of which it is claimed that the mark would be protected by law (Rule 17(7)).53 4.49 Once it is in a satisfactory form, the Registrar will forward a copy of the TM7 with

any supporting statement of grounds to the applicant, who is then obliged (if he wishes to dispute the opposition) to file a response on Form TM8, in accordance with Rule 18. The Form must include the applicant’s counter-statement, which again should fully set out his case. 4.50 Again, the time limit under Rule 18 is potentially strict. Under Rule 18(3), Form

TM8 must be filed within two months after the ‘notification date’, which is the date when the Registrar sends out the copy Form TM7. However, it is possible to extend the time for filing a TM8, especially where the parties are seeking to negotiate and want a ‘cooling-off period’. 4.51 Under Rule 18(4), the period for lodging the Form TM8 will not end until nine

months after the notification date if the parties have agreed and applied for an extension of time. That period may be curtailed by the opponent filing notice to continue the opposition, or extended on request if the parties are continuing to negotiate. Under Rule 18(5), in such circumstances, the period for filing the TM8 may be extended to 18 months after the notification date. However, TPN 1/2009 warns that a request to extend the period may need to be supported by proof that there has been real progress towards settlement. 4.52 On the other hand, if the applicant does not file a Form TM8 or a counter-statement

within the relevant period, he will (unless the Registrar otherwise directs) be deemed to have abandoned his application to the extent that it was opposed; that is to say, if the opposition related only to certain goods and services, the application will be deemed abandoned only in relation to those goods and services and the balance of the application will proceed to registration.

53

See Wild Child trade mark [1998] RPC 455.

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Publication, Opposition Proceedings, and Observations In oppositions based on the relative grounds of s 5(1) and (2) only, under Rule 19, 4.53 once the parties have filed their statements of case, the Registrar may (but is not obliged to) provide a ‘preliminary indication’ of the merits of the opposition so far as it is based on those subsections. The use of such preliminary indications has been scaled down since May 2009. TPN 2/2009 states that preliminary indications will no longer be issued on a routine basis. Forms TM7 and TM8 now permit the parties to request the issue of a preliminary indication and the Registrar will take their wishes into account in deciding whether to issue an indication. If a preliminary indication is issued, to the effect that registration should not be refused, the opponent has a month after the date on which the indication is sent to him to file a notice of intention to proceed with the opposition.54 If he does not do so, the opposition is deemed to be withdrawn. Similarly, if the Registrar’s preliminary indication is that registration of the mark should be refused in whole or in part, the applicant has a month from the indication date to file a notice of his intention to proceed with the application. The Registrar need not give reasons for the preliminary indication, and it is not subject to appeal. Where the opposition is not based only upon s 5(1) or (2), the rest of the opposition 4.54 will proceed in any event. Preliminary indications are provided before any evidence has been filed by either 4.55 party to support their case or refute the other side’s case. Even though they are limited to oppositions based on s 5(1) and (2), plainly the merits of the dispute may appear very different in the light of the evidence. As a result, if the opposition proceeds to a full hearing (which will be before a different hearing officer), the Registrar will not be bound by the preliminary indication. Where an opposition proceeds beyond the preliminary indication stage, the par- 4.56 ties will have to file evidence in support of their respective positions. Previous Rules set out a standard timetable for the exchange of evidence. However, Rule 20 now provides that the Registrar shall specify the periods within which evidence and submissions are to be filed by the parties. Guidance as to the standard timetable intended to be adopted by the Registry was given in TPN 3/2008. Subsequently, TPN 2/2010 explained that it is desirable to determine trade mark inter partes oppositions within 12 months and that depending, upon the nature of the case, an opponent will be given two months to file evidence in chief, and the applicant will have two months to answer. Provision is no longer made for evidence in reply as a matter of routine, but a party has one month to state an intention to file such evidence and then one month actually to file it. Extensions of time are allowed but need to be justified and may well result in a case management conference to determine the revised timetable.

54

There is no fee for filing this form, TM53.

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Practice and Procedure in the Trade Marks Registry and OHIM 4.57 Evidence in the UKIPO usually takes the form of witness statements which exhibit

copies of relevant supporting documents.55 It is extremely important for parties to consider carefully what facts they need to prove to make out their case in relation to the opposition. For instance, if the opponent owns an earlier registered trade mark and it is part of his case that the mark enjoys a reputation in the UK, whether for s 5(2) or (3), it is important to produce the evidence necessary to convince the Registry that such a reputation exists. The same point arises in relation to an opposition based on s 5(4)(a) (see the Reef case56 and the discussion at 3.78 et seq). 4.58 A few general points of importance are that: (a) the witness statements should be

made by witnesses who have direct knowledge of the facts to be proved and who can explain the supporting documents; (b) statements from independent third parties, either from the trade or public, as to the reputation of the mark, are valuable;57 and (c) the evidence and documents must relate to the relevant periods, and be clearly dated in some way—documents post-dating the relevant date may be relevant too, as long as they shed light on the position as at the relevant date.58 All of this is necessary because the Registrar will not treat ‘bare assertions’ as adequate, but a statement from a witness who has direct knowledge of the matters in issue and can set them out in narrative form, will suffice.59 4.59 It is important to make the first round of evidence as comprehensive as possible.

The Registrar has a discretionary power under Rule 20(4) to admit additional evidence at any stage, but will need to be persuaded that it would be appropriate to do so.60 There are real difficulties in adducing additional evidence on appeal,61 so it is particularly important to put one’s case in the best possible light at the outset. 4.60 The Registrar has all the powers to control the evidence, and deal with issues

of disclosure of documents, of an official referee of the Supreme Court.62 Such powers include ordering that a party produce, or disclose, documents relating to a defined issue. 4.61 Once the evidence is complete, the opposition will be decided by one of the

Registrar’s hearing officers, either at a hearing or on the basis of the written

55

For formalities, see r 64. South Cone, Inc v Jack Bessant and ors (‘Reef ’) [2002] RPC 19, and [2003] RPC 5 (CA). 57 Witness statements carry far more weight than mere letters of support, which will be treated as hearsay. See Duccio trade mark, BL O/343/09 (AP), 28 Oct 2009, and TPN 5/2009. See also TPN 4/2009. 58 Alcon, Inc v OHIM, Case C-192/03, [2004] ECR I-8993, [2005] ETMR 69. 59 See Almighty Marketing Ltd v Milk Link Ltd ‘Moo Juic e’ [2006] RPC 18 and Pan World Brands Ltd v Tripp Ltd (‘Extreme’) [2008] RPC 2, AP. 60 On the forerunner to this rule see Tushies trade mark, BL O/281/09, 16 September 2009, AP. 61 See 4.70. 62 r 65. 56

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Publication, Opposition Proceedings, and Observations evidence, possibly supplemented by written submissions. The Registrar must not take any decision which may be adverse to a party without giving him the opportunity to be heard.63 All hearings may take place by video link or in person, in London or in Newport. Case management conferences are typically conducted by telephone. Parties may appear in person or be represented by trade mark attorneys, solicitors, or counsel, who are expected to provide skeleton arguments two working days before the hearing, as well as copies of any authorities upon which they intend to rely.64 In Extreme 65 it was held that a party who wishes to challenge any part of the other 4.62 side’s evidence should make this clear in advance of a hearing, and the evidence should be challenged by a request for cross-examination or adducing evidence to refute the challenged evidence. Parties seeking to cross-examine must apply for permission and they will need to satisfy the Registrar that it would be appropriate in the circumstances.66 The party seeking to cross-examine will need to identify the specific issues to which cross-examination would be directed and estimate the approximate time that it will take. The hearing officer will produce a written decision.67 It is subject to appeal. 4.63 Generally, the hearing officer will reserve judgment and then deliver a reasoned written judgment (see Rule 69), but for interlocutory decisions the decision may initially be given by letter, and full reasons will be provided only if requested by a party. The Registrar may make an award of costs, and can order security for costs.68 4.64 Standard costs awards are made on a scale, which is low in comparison to the real costs likely to be incurred by the parties, so even a successful party will usually be out of pocket. In exceptional cases, costs may be awarded off the scale.69 Observations Section 38(3) provides a procedure under which interested parties who would like 4.65 to oppose a proposed registration, but who do not wish to or are not in a position to pursue opposition proceedings, can ‘make observations in writing to the Registrar as to whether the trade mark should be registered’. The Registrar will consider the application in the light of the observations and inform the applicant of them. If the

63

r 63. And see TPN 6/2009. TPN 1/2004 and TPN 1/2000. 65 See n 59 and for a recent illustration see ‘Simmons’ trade mark O/468/12 26 Nov 2012 a decision of Daniel Alexander QC, sitting as an AP. 66 See TPN 3/2010. 67 r 69. 68 rr 67 and 68. 69 TPN 4/2007 and TPN 6/2008. As an example of ‘off scale’ costs see Wapple.net Trade Mark BLO/108/12, 9 March 2012. 64

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Practice and Procedure in the Trade Marks Registry and OHIM observations lead the Registrar to think that the trade mark is not registrable, then registration may be refused, under s 40(1).70

E APPEALS 4.66 Section 76 of the 1994 Act and Rule 70 deal with appeals from decisions of the

Registrar, including appeals against decisions involving an exercise of his discretion. The appeal should be brought within 28 days of the decision below,71 either to the Chancery Division of the High Court or to the Appointed Person (AP). No permission to appeal is needed except for appeals against interim decisions; under Rule 70(2) these may only be appealed independently of an appeal against a final decision with the leave of the Registrar. A respondent to an appeal may wish the decision below to be affirmed on different grounds and, if so, should file a respondent’s notice.72 4.67 If the appeal is to the Court, the matter will thereafter be treated as a High Court

case, with the possibility of further appeals to the Court of Appeal and to the CJEU. See Part 63 of the Civil Procedure Rules, and the Practice Direction, which applies Part 52 (the general rule on appeals) to appeals from the Registry. 4.68 The APs are a panel of senior trade mark practitioners appointed by the Lord

Chancellor under s 77 of the 1994 Act. The vast majority of appeals from the Registry are made to the AP. The benefit of such appeals is that they are cheap (scale costs apply) in comparison to appeals to the High Court, and the APs are all trade mark specialists, but there is no appeal from their decisions.73 Where an appeal is made to the AP, he may refer it to the Court under s 76(3) and Rule 72, if there is a point of general legal importance involved or if the parties or Registrar so request; the AP may refuse to refer a case where, for instance, that would be unfair to an impecunious appellant.74 See paragraph 25 of the Practice Direction to CPR Part 63. The possibility of referring the matter straight to the Court is important in cases which raise new points of law, since there is no appeal from the AP. However, the APs may refer questions directly to the CJEU in an appropriate case.75 4.69 An appeal to the Court or the AP is not a rehearing of the case, but only a review of

the decision below. This means that findings of primary fact will not be disturbed 70

See eg Messiah from Scratch [2000] RPC 44. An extension of time to appeal may be sought from the Registrar but will not be easily granted: TPN 3/2000. 72 r 71(4)–(6). For an example see Pavel Maslyukov v Diageo Distilling Ltd and anor [2010] EWHC 443, [2010] ETMR 37. 73 See s 76(4); this does not exclude judicial review. 74 Academy trade mark [2000] RPC 35; ‘Elizabeth Emanuel’ trade mark [2004] RPC 15; Pavel Maslyukov ’s trade mark applications, BL O/312/09, 7 October 2009. 75 eg as happened in IP Translator (n 13) and Elizabeth Emanuel (n 74). 71

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Registration, Duration, Renewal, and Restoration unless the hearing officer made an error of principle or was plainly wrong on the evidence. Inferences from the primary facts may be reconsidered, but weight will be given to the hearing officer’s experience, and the appellate body will be reluctant to interfere in the absence of a real error of principle.76 It is not uncommon for parties to wish to adduce fresh evidence in support of their 4.70 appeal, especially where the hearing officer considered the evidence to be inadequate or inconclusive.77 Significant evidence which has just come to light may be permitted to be filed on appeal. However, if the evidence could have been filed for the hearing in the Registry, it is much less likely to be allowed in. Relevant factors will be the reason for the late filing, the significance of the new evidence, and whether the other side will be prejudiced by admitting it, or could be compensated for it, usually by payment of costs.78 Appeals to the High Court follow the Civil Procedure Rules, see CPR Part 52. The 4.71 procedure for an appeal to the AP is set out in Rules 71 to 73.79 The APs have the same powers to control evidence, hearings, etc as the Registrar. It is possible, but unusual, for an appeal to the AP to be decided without a hearing.

F REGISTRATION, DURATION, RENEWAL, AND RESTORATION In the absence of a successful opposition or a change of heart under the proviso to 4.72 s 40(1), the Registrar will proceed to register the trade mark, subject only to the payment of the appropriate fee. Section 40(3) provides that the registration shall take effect as of the date of the complete filing of the application for registration. The initial period of registration is for ten years from the date of registration 4.73 and registrations may be renewed indefi nitely for further ten-year periods (ss 42 and 43). The proprietor will be sent notice of an approaching expiry date not earlier than six months nor later than one month before the expiry of the ten-year period. He must make a request for renewal of the registration on Form TM11 and pay the renewal fee before the registration expires. If the fee is duly paid the renewal runs with immediate effect from the expiry of the previous registration. 80 If the renewal fee is not paid by the date of expiry of the registration, the Registrar 4.74 is to publish that fact. If within six months from the expiry date the Registrar 76

Reef trade mark [2003] RPC 5 (CA) at [28]. For a recent example see Simmons (n 65) at [21]–[26]. 78 See eg Hunt-Wesson, Inc’s trade mark application [1996] RPC 233 (Laddie J); Wunderkind trade mark [2002] RPC 45; DU PONT trade mark [2004] FSR 15. 79 See too TPN 2/2008. 80 See s 43 and rr 34–5. 77

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Practice and Procedure in the Trade Marks Registry and OHIM receives a request for renewal and payment of the appropriate fees, the registration will be renewed. If no request for renewal is filed, the Registrar will remove the mark from the Register. 81 However, even then the mark is not necessarily lost forever. Under s 43(5) and Rule 37, if the proprietor makes a request for restoration within six months of the date of removal of the mark, and the appropriate fees are paid, the mark may be restored to the Register, if the Registrar is satisfied that it is just to do so.82 Section 60: Marks registered by an agent 4.75 Where an agent or representative applies for the registration of a mark which is

owned by another person in another Paris Convention country, the proprietor may oppose the application. If the application is granted without opposition by the proprietor, then the proprietor may later apply for a declaration of invalidity or to be substituted as proprietor of the UK mark, and may injunct any unauthorised use of the mark in the UK, as long as he has not acquiesced for three years or more in the agent’s use of the mark.83

G ALTERATION OR SURRENDER OF REGISTRATION 4.76 Once a mark has been registered, under s 44 of the 1994 Act the only alteration

permitted is as to the name and address of the proprietor, if this is part of the mark itself.84 Rule 25 provides the procedure for such alterations, including publication of the proposal and an opposition procedure for interested parties. 4.77 Under s 64 anyone who has a sufficient interest in a mark may apply for the recti-

fication of an error or omission in the Register, but rectification ‘may not be made in respect of a matter affecting the validity of the registration of a trade mark’ (see the discussion of ss 46 and 47 in Chapter 5). The procedure is governed by Rules 44 and 45. Surrender 4.78 The proprietor of a registered mark may surrender it, in whole or in part, by sending

the appropriate notice to the Registrar (see Rule 33). The proprietor must supply the name and address of anyone having a registered interest in the mark and certify that he has been given three months’ notice of the proposed surrender. 81

r 36. Note that a lapsed mark may be cited against fresh applications for a year after its lapse: s 6(3). 83 See s 60(6) of the 1994 Act and the Paris Convention, Art 6septies. 84 See British Sky Broadcasting Group plc, Sky IP International Ltd v Microsoft Corporation [2013] EWHC 1826 (Ch), 28 June 2013. 82

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Alteration or Surrender of Registration

THE COMMUNITY TRADE MARK REGULATION Regulation (EC) 207/2009 (CTMR) provides for the registration of CTMs, 4.79 in terms similar to the substantive provisions of Directive (EC) 2008/95 (the Directive) (and so the 1994 Act) and provides for the establishment and organisation of OHIM85 at Alicante in Spain. Implementing Regulation (EC) 2868/95 is broadly equivalent to our Rules. OHIM’s website is at and contains legal texts, a Manual which is regularly updated, and Forms, as well as access to the Register and decisions of OHIM’s Opposition and Cancellation Divisions and Boards of Appeal. Along with a proposed draft Directive, there is a proposed draft Regulation. The proposed changes to the Directive are broadly reflected in the Regulation. Article 1(2) provides that a CTM is to have ‘unitary character’, to be of equal 4.80 effect throughout the Community. A CTM is thus valid in all 28 Member States of the European Union and it is not possible to limit the geographical scope of protection to certain Member States. This is both the strength and weakness of a CTM. It is harder to select a mark suitable for registration throughout the Community in both absolute and relative terms than to find a mark suitable for one territory alone. But if there is a need for protection in more than one part of the Community, the benefits of pursuing a single application for all are great, and so is the fall-back position that if the CTM is deemed unregistrable, or is declared invalid due to a prior right in one Member State, it may be converted into national registrations in the other states. The CTM system sits alongside the national systems of the Member States but is an autonomous system. On the one hand, the fact that a mark has been registered in one state does not mean it may be registered as a CTM; 86 on the other, the application by both OHIM and the national Registries of the same guidance from the CJEU and GC means that the systems are tending to converge. The proposed Directive and Regulation will bring the systems even closer. Moreover, national courts act as Community trade mark courts for infringement actions, and may hear a counterclaim for the invalidity of CTMs. It is impossible in a work of this size to deal with the Regulations in detail. Much 4.81 of the substantive law has been discussed earlier in this book and in this chapter we will concentrate on certain differences between procedure in the UK Registry and at OHIM.

85 86

The ‘Office for the Harmonisation of the Internal Market (Trade marks and Designs)’. Messe München GmbH v OHIM, Case T-32/00, [2000] ECR II-3829, [2001] ETMR 13.

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Practice and Procedure in the Trade Marks Registry and OHIM Registrability 4.82 For issues of the types of mark suitable for registration and all other issues of abso-

lute registrability, see Article 7 and the discussion in Chapter 2, although note the differences between s 3(1) and Article 7: the 1994 Act has no direct equivalent to Article 7(1)(j) and (k), the Regulation has no equivalent to s 3(6).87 For relative grounds, see Article 8 and Chapter 3.

H MAKING AN APPLICATION 4.83 Applications may be made directly to OHIM or through national trade mark

offices. Applications may be made in any Community language, but if it is not one of OHIM’s five official languages (English, French, German, Italian, and Spanish), the application will need to be translated into one of them. Opposition notices and applications for revocation etc must be made in the designated working language. 4.84 Applicants not domiciled or having their principal place of business in the

Community must be represented in all OHIM proceedings (other than the filing of a CTM application) by a professional representative. Applicants domiciled etc in the Community do not need (but often use) a professional representative. 4.85 Currently, an application costs €1050 if filed on paper, €900 online, to cover goods/

services in up to three Classes; there is a fee of €150 for each additional Class. No further fee is now payable if the mark proceeds to registration. 4.86 An application for registration, as under the UK Rules, requires the applicant to fill

in a form stating the name and address of the applicant, giving a representation of the mark, a list of the goods and services for which the mark is to be registered, and the name and address of the applicant. The proper fee needs to be paid too. Like in the UK, no filing date will be accorded to an application until it is in due form. If the application fee is not paid within one month of the application, or any deficiencies are not cured within two months of that date, the application will lapse.88 The application may claim priority from an international filing (Article 29) or may claim seniority from a national registration of the identical mark (Article 14). 4.87 The goods or services must be listed by Class, according to the Nice Classification.

OHIM has developed some tools to help applicants get their specifications right; TMCLASS is a searchable database with descriptions of goods and services acceptable to OHIM and is also a translation tool for descriptions of goods and services.

87 Bad faith is, however, a ground for seeking a declaration of invalidity under Art 51. See 5.66 et seq. 88 r 9 of the Implementing Regulation no 2868/95.

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Opposition and Observations

I OFFICIAL EXAMINATION AND PUBLICATION The application will be examined by OHIM for compliance with the absolute 4.88 and relative grounds of refusal, much as in the UKIPO (see Articles 36–8). If a mark is descriptive in one Member State, or lacks distinctive character in more than one Member State, the applicant will have to prove acquired distinctiveness to overcome the difficulty. 89 An application for a CTM will be refused if an absolute ground for refusal exists ‘in only part of the Community’.90 OHIM may seek a disclaimer in an appropriate case as a condition of registration (Article 37(2)). Under Article 38, OHIM will search for conflicts between the mark applied for 4.89 and prior CTM registrations and applications; for absolute objections it will examine the facts of its own motion, but for relative grounds it is restricted to considering the facts and evidence from the parties.91 The substance of such conflicts is, of course, much the same as in the UK, but with the added complication of language to contend with. If the applicant asks for national searches to be carried out, this will be done by some but not all of the Member States’ national trade mark offices92 and the results will be sent to OHIM. The applicant is informed of all of the conflicts found, and on publication of the application (at least a month later) the proprietors of any conflicting earlier CTMs and CTM applications (but not national marks) will be informed of the pending application. It is up to the proprietors of any conflicting marks to file an opposition if they wish to prevent the application from proceedings to registration. As with UK marks, a CTM application may be divided (Article 44) or amended in the same limited way, to correct obvious errors, etc (Article 43(2)). If accepted, the application will be published and oppositions or observations from 4.90 third parties may follow.93

J OPPOSITION AND OBSERVATIONS There is a period of three months from publication of the application in which an 4.91 opposition may be lodged; this cannot be extended. OHIM cannot raise relative

89 See 2.27. See Art 7(2) and eg Ford Motor Co, Case T-91/99, [2000] ECR II-1925, [2000] 2 CMLR 276, [2000] ETMR 554; and Mars, Inc v OHIM, Case T-28/08, [2009] ECR II-106: the ‘Bounty bar case’. 90 Art 7(2). 91 Art 76. The proposed new Regulation will mean that there is no search for confl icting earlier rights and the examination will be restricted to absolute grounds. 92 Currently there are eight participating offices: Czech Republic, Denmark, Greece, Lithuania, Hungary, Romania, Slovakia, and Finland. 93 Arts 39–42.

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Practice and Procedure in the Trade Marks Registry and OHIM grounds of its own motion. Opposition procedure is detailed in Rules 15–22 of the Implementing Regulation,94 which set out what must be contained in the opposition notice and supporting evidence. Rule 18 allows for a cooling-off period, once an admissible opposition has been lodged. The opponent needs to file its evidence and arguments within two months of the expiry of the cooling-off period and prove the existence and validity of its earlier rights too. OHIM will then allow the applicant time to respond and will set a time limit for doing so. There may be more than one round of evidence and, again, it is important to get the evidence in on time, as late evidence may be refused.95 It is common for the grounds of opposition to contain the arguments and supporting evidence rather than to wait for the evidence rounds. This is permitted under Rule 15(3)(b) of the Implementing Regulation and is referred to as ‘The Reasoned Statement’. It is equally important to complete the evidence at first instance, as the Boards of Appeal have a discretion as to whether to allow additional evidence to be lodged on appeal.96 4.92 Once the evidence is complete, OHIM will make a decision, by a three-member panel

who give their reasons in writing. There will not be an oral hearing as OHIM considers that written evidence is the cheapest, simplest, and most flexible way to argue a case. Articles 58–65 set out the essential appeal provisions. Oppositions may take years to resolve due to the possibility of multiple appeals (see 4.97 et seq).

K REGISTRATION AND BEYOND 4.93 If it proceeds to registration, a CTM will be registered for ten years and may be

renewed for further periods of ten years (Articles 46 and 47). Articles 48 and 49 allow for limited alteration of the registration and division of the registration. Article 50 allows for surrender of the mark for some or all of the goods/services for which it is registered. Under Article 9(3), the CTM confers exclusive rights on its owner from the date of publication of the registration, and damages can be claimed as from the date of publication of the application (not, as in the UK, from the filing date). 4.94 Article 112 is an important provision which permits an applicant for a CTM or

the proprietor of a CTM to apply to convert his application/registration into a national trade mark application to the extent that the CTM application is refused etc or that the CTM registration ceases to have effect (eg due to an attack on its validity).97 No conversion is possible if the CTM is invalid by reason of non-use,98 and (obviously) the conversion cannot lead to the grant of a mark in a Member 94

There are also helpful Guidelines and a Manual available on OHIM’s website. Art 76(2) and eg K & L Ruppert Stiftung & Co Handels-KG v OHIM, Case T-86/05, [2007] ECR II-4923, 11 December 2007. 96 OHIM v Kaul GmbH, Case C-29/05, [2007] ECR I-2213, [2007] ETMR 37, 13 March 2007. 97 See 5.64 et seq. 98 But see Art 112(2)(a) and 5.57 et seq. 95

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Appeals State in which grounds for invalidity etc exist. However, the converted national application(s) benefit from the priority of the original CTM filing date.99 This is an attractive fall-back position for an applicant or proprietor. Section 52(2) of the 1994 Act provides for the conversion of CTM applications into UK applications.100 Although a CTM is intended to have unitary effect across the Community, its 4.95 effects may be limited by earlier national or local rights. Article 110 preserves earlier rights under national laws to sue for infringement for use of the CTM, unless the owner of the earlier right has acquiesced for five years in the use of the CTM. Such rights include both trade mark rights and the other rights mentioned in Article 53(2), which include copyright and other intellectual property rights, such as designs. Under Article 111, the proprietor of an earlier right in a particular locality may oppose the use of the CTM there, again subject to acquiescence.101 The effects of a CTM are governed by the CTMR, but infringement actions 4.96 are heard in national courts designated as a ‘Community trade mark court’. In England, Wales, and Northern Ireland, the designated courts are the High Court, including the Intellectual Property and Enterprise Court (IPEC); in Scotland it is the Court of Session. Such courts have exclusive jurisdiction over infringement actions, actions for declarations of non-infringement, and compensation for infringement, under Article 9(3) (see Chapter 7).

L APPEALS Appeals from decisions of OHIM, whether as to registration, opposition, or as to 4.97 applications for revocation etc, can go through several stages, and take quite some time. Permission is not needed, as the admissibility of the appeal is dealt with as part of the appeal. The first level of appeal is to the OHIM Boards of Appeal (or in cases of significance, the enlarged or ‘Grand’ Board);102 such an appeal must be lodged within two months and the grounds of appeal filed within four months of the decision. The Board of Appeal may make any decision which could have been made by the relevant department of OHIM or may remit the matter back for further prosecution.103 One can appeal from the Boards of Appeal to the General Court on a variety 4.98 of grounds (see Article 65(2)). In contrast to the position in the UK, this is essentially a rehearing,104 and the GC has power to annul or alter the decision

99

Further details are in Arts 112–14. See the Community Trade Mark Regulations 2006, SI 2006/1027, as amended by the Community Trade Mark (Amendment) Regulations 2008, SI 2008/1959. 101 See 7.121 et seq. 102 Art 115. See Lifestyle Supplies VoF v OHIM, Case R 1462/2012-G, 18 September 2013. 103 Art 64. 104 Though the Article implies that it should not be a rehearing. 100

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Practice and Procedure in the Trade Marks Registry and OHIM made below.105 Again, the appeal must be lodged within two months of the decision under appeal but the rules provide for an extra ten days ‘on account of distance’.106 4.99 The unsuccessful party may then appeal, on a point of law only, from the GC to the full

Court of Justice (see Article 58 of the Statute of the Court of Justice of March 2008). Again, the appeal must be lodged within two months of the decision under appeal. 4.100 Looking at a few CJEU decisions, it may be seen that the process can be slow. In

Koipe107 the application for the mark was made in April 1996, the GC gave judgment in September 2007, and the CJEU on 3 September 2009: a total of over 13 years. In Waterford 108 the CJEU ruled on 7 May 2009 on an application dated 23 December 1999. In Pure Digital 109 the application was made in October 2001 and the CJEU’s ruling was dated 11 June 2009. Of course, these are exceptional cases. Average times are much shorter, but even so, an application faced with an opposition (and 15 to 20 per cent of published applications are opposed) may take some two years from publication to the delivery of a decision of the Opposition Division. OHIM is seeking to improve these times. 4.101 Separately, Article 81 provides for restitutio in integrum, allowing the re-establishment

of rights lost due to a party’s inability to comply with a time limit, as long as the party had taken ‘all due care required in the circumstances’ to comply with the requirements breached. This provision will apply only in exceptional cases.110 Article 81 permits an applicant or proprietor to ‘obtain the continuation of proceedings’ where he failed to comply with a time limit, if the request is made within two months of the missed deadline, he has done whatever he had omitted to do, and a fee is paid.

INTERNATIONAL CONVENTIONS 4.102 The general procedure for applying for a trade mark in the UK or at OHIM is

broadly comparable to that adopted in many other countries. If a mark requires protection in multiple jurisdictions, the need to make multiple applications may cause delay and increase costs. In order to facilitate international trade, various

105

We cannot deal here with the procedural law of such appeals; see Lenaerts, Arts, and Maselis, Procedural Law of the European Union (Sweet & Maxwell, 2nd edn, 2006). In addition all the rules and practice directions can be found on the European Court of Justice’s (CJEU) curia website. 106 Art 102(2) of the Rules of Procedure of the General Court. 107 Aceites del Sur-Coosur SA v Koipe Corporación SL , Case C-498/07, [2009] ECR I-7371. 108 Waterford Wedgwood plc v Assembled Investments (Proprietary) Ltd , C-398/07, [2009] ECR I-75. 109 Imagination Technologies Ltd v OHIM, Case T-461/04, [2007] ECR II-122, [2008] ETMR 10, and Case C-542/07, 11 June 2009. 110 Aurelia Finance SA v OHIM, Case T-136/08, [2009] ECR II-1361.

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The Madrid Agreement and Protocol international conventions have attempted, with varying degrees of success, to streamline and simplify the acquisition of intellectual property rights on an international basis. The most important of these is probably the Madrid Protocol, but the Paris Convention and the Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement are also of importance.

M THE MADRID AGREEMENT AND PROTOCOL The Madrid Agreement and the Protocol to the Madrid Agreement operate 4.103 together as an international trade mark registration system, often referred to as the Madrid System. A trade mark registered in one country may be deposited with the International Bureau of WIPO and then take effect, subject to prior rights, in other countries which are parties to the Madrid Agreement. Trade marks registered in this way are called international registrations or international trade marks. The UK ratified the Protocol in 1995. It allows applicants to file only one application in one language (English, French, or Spanish), and pay fees to one Office, to obtain registration in as many as they wish of the 84 contracting states. The European Union has been party to the Madrid Protocol since 1 October 2004. This enables applicants for international registrations to designate the EU, that is to say to obtain Community trademarks via the Madrid system. The international registration system is relatively simple and there are financial savings to be made by using it. The Protocol has provided a significant improvement to the Agreement, first, 4.104 because an international application may be based just on a home application and, secondly, because a member may elect for a period of 18 months (instead of one year), and even longer where there is an opposition, to declare that protection cannot be granted to the mark in its territory. Those improvements are reflected in a significantly larger number of members, including the EU and the US,111 and the large number of applications made using the system (around 42,000 per year). As of April 2013, there are 90 member countries. The Protocol is administered by the International Bureau of WIPO in Geneva. 4.105 A guide to international registration may be found on the WIPO website,112 along with the WIPO regulations governing such applications, the current version of which dates from 1 September 2009. Article 2 of the Protocol provides that where an application has been made to regis- 4.106 ter a mark, or a mark has been registered by someone who is a national of or domiciled in a contracting state, that person may apply for an international registration in any other state party to the Protocol. The basic application or registration is used

111 112

See the WIPO website. .

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Practice and Procedure in the Trade Marks Registry and OHIM to extend the protection afforded to the registration to other member countries by a designation process. Designation can be at any time and is in the discretion of the rights owner. The international registration is made through the ‘home’ trade mark office, which forwards the application to the International Bureau in Geneva.113 A handling fee of £40 is charged by the UK Registry for this, for which the UKIPO will check the application to make sure it matches the UK application/registration. 4.107 The international application must be made in English, French, or Spanish. It

must be for an identical mark to the ‘home’ application/registration, for goods or services covered by that application/registration and for the same proprietor. Rule 9 of the Regulations sets out the information to be included in the application. 4.108 If the application is admissible, under Article 3(4) the International Bureau will

immediately register the mark, and the registration will bear the date on which the international application was received in the home trade mark office, as long as it was received by the International Bureau within two months from that date. The International Bureau then notifies all national trade mark offices designated in the application, and the mark is published in the WIPO Gazette of International Trade Marks. 4.109 By Article 4, from the date of registration at the International Bureau, the protec-

tion of the mark in each of the contracting states will be the same as if the mark had been deposited directly in that contracting state. However, Article 5 gives each national office a right to refuse to register the international registration in its territory on any basis upon which it would refuse to register a national application. Where there is such a refusal, the applicant will have the same remedies as if the mark had been applied for directly at that national office. The UK has exercised an option to give it 18 months to rule on registrability. 4.110 If the United Kingdom has been designated in an international registration the

UKIPO is notified by the International Bureau and the procedure follows that of a national application. If the Registrar considers that the requirements for registration for the UK are not met or are met only in relation to some of the goods or services then the Registrar issues a notice of provisional refusal to the International Bureau. Third parties may oppose the registration within three months of publication. If opposed, the Registrar sends a notice of provisional refusal to the International Bureau. An opposition will be determined just like an opposition in relation to a national mark. 4.111 If the international application or registration is not opposed then the mark is

protected as an International Trade Mark (UK) with effect from the day after the opposition period expires.114 If the opposition fails, then the mark is protected with

113

See the guide published on the UK Registry website for details. See s 38B(1) of the 1994 Act as amended by the Trade Marks (International Registration) Order 2008 (SI 2008/2206) Sch 2. 114

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The Madrid Agreement and Protocol effect from the date that the Registry notifies the International Bureau that the provisional refusal should not be upheld.115 The protection granted is the same as if the mark had been filed directly with the Registry. Renewals and the rules about the duration of the international registration are dealt 4.112 with centrally by WIPO and the UK rules do not apply. This centralised administration is one of the attractive features of the Madrid system. Registration of a mark at the International Bureau is for a term of ten years, with a possibility of renewal for further ten-year periods (Articles 6 and 7). As the system creates a bundle of national marks, questions of infringement will be dealt with under the laws of each contracting state. Such marks may also be revoked or declared invalid in each jurisdiction as if they were domestic marks.116 However, a continuing difficulty with the Madrid Protocol is that, despite the fact 4.113 that the procedure enables a trade mark proprietor to acquire a number of national trade mark registrations, for the first five years these registrations do not have a validity which is independent of the position in the home state. Under Article 6, the protection resulting from the international registration may not be relied upon if, within five years from the date of the international registration, any ‘home’ application upon which the international registration was based is refused registration, or any ‘home’ registration is revoked, cancelled, or otherwise invalidated. On the other hand, where there has been a successful central attack on the home mark, 4.114 the proprietor may seek to transform his international registration into such national registrations as he may seek under Article 9quinquies of the Protocol, and if he makes such an application within three months after the cancellation of the international registration, he will keep his priority date. Once the international registration has been in place for five years, the individual 4.115 national registrations become independent of the home application or registration, so that each such registration would have to be attacked locally. Section 54 of the 1994 Act gave the Secretary of State powers to make necessary orders 4.116 to give effect to the Madrid Protocol in the UK, and s 54(2) lists a number of matters to be dealt with by those Regulations. These are currently dealt with by the Trade Marks (International Registrations) Order 2008,117 which treats international applications as UK applications, and marks so registered as national trade marks, subject to some exceptions set out in the schedules to the Order.118 Schedule 3 deals with international applications originating in the UK, and Schedule 4 with ‘transformation applications’ 115 See s 38B(2) of the 1994 Act as amended by the Trade Marks (International Registration) Order 2008 Sch 2. 116 See Sch 1 to the 2008 Order and Rivella International AG v OHIM, Case C-445/12, 12 December 2013 at [42]. 117 SI 2008/2206, slightly amended eg by the Trade Marks (International Registrations) (Amendment) Order 2009, SI 2009/2464. 118 Art 3.

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Practice and Procedure in the Trade Marks Registry and OHIM where the home registration has been lost. Schedule 6 sets out the fees payable to the UKIPO at various stages. 4.117 CTMs acquired through an international registration designating the European

Community have the same effect as other CTMs.119 4.118 The benefit of the Madrid system over the CTM system lies in the possibil-

ity of achieving a number of national registrations through one single application, yet not being faced with the possibility of rejection of the application as a whole because of objections legitimately raised in only one of the contracting states. Also once the five-year period has safely passed, even the revocation of the mark in the home territory will not affect the validity of the other national registrations.

N THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY PARIS UNION 4.119 The significant convention was the Paris Convention for the Protection of

Industrial Property, in 1883, which has been amended on a number of occasions. All of the EU states are members of the Convention, indeed Recital 12 of the Directive states that they are all bound by it and the Directive is intended to be consistent with it. However, the Convention is not directly applicable in the UK or the EU,120 and whilst our law is largely consistent with it,121 only a few parts of the Paris Convention are directly incorporated into UK law.122 The 1994 Act has been amended to accommodate the UK’s obligations under the Paris Convention and TRIPS.123 4.120 Article 2(1) of the Convention provides for ‘national treatment’ by its Member

States of nationals of the other Member States; such applicants enjoy the same rights, advantages, and protection as local applicants. The 1994 Act complies because it imposes no requirements as to an applicant’s nationality or domicile. 4.121 Another important provision of the Paris Union system was to give trade marks

a right of priority for six months from the date of application for the mark in the proprietor’s country of origin. The right of priority is reflected in s 35 of the 1994 Act and (see 4.22) any claim to priority must be made when the UK application 119

eg for the purposes of seizing infringing goods:  Zino Davidoff SA v Bundesfinanzdirektion Südost, Case C-302/08, [2009] ECR I-5671, [2009] ETMR 57. 120 See eg Develey Holding GmbH & Co Beteiligungs KG v OHIM, Case C-238/06, [2007] ECR I-9375, [2008] ETMR 20. 121 There is an issue about Art 10bis on unfair competition. 122 s 55 of the 1994 Act gives power to amend the Act (if desired) to incorporate revisions to the Convention. 123 ss 55–60.

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The TRIPS Agreement is lodged.124 Although Article 6quinquies of the Convention provides that where a mark is registered in one state it shall be registered in another, this does not override the need for the application to satisfy the usual national tests, both absolute and relative, for registrability.125 The 1994 Act incorporates the Paris Convention’s protection for well-known trade 4.122 marks in two ways. They are ‘earlier trade marks’ for the purposes of s 5126 and enjoy special protection under s 56.127 The 1994 Act also protects state emblems, in accordance with Article 6ter (see discussion of s 4 at 2.127 et seq, and see s 59). Section 60 of the 1994 Act, as to applications for registration made by an agent 4.123 of a proprietor of the mark in a Convention country, reflects Article 6septies of the Convention.

O THE TRIPS AGREEMENT The TRIPS agreement is part of the agreement establishing the World Trade 4.124 Organization (WTO). The EU is a party, as are all the EU Member States. By its Article 2(1), all of its members must comply with the Paris Convention. It again makes provision for ‘national treatment’, as well as ‘most favoured nation’ treatment, for the nationals of all Member States. TRIPS is not directly applicable in the UK or the EU,128 but was implemented 4.125 in the UK in 1999 by a number of amendments to the 1994 Act, for example to include marks entitled to protection under the WTO agreement as well-known marks in s 6(1)(c), as well as alterations to ss 5–59.

124 125 126 127 128

See details in the UK Manual, Ch 3. See Develey (n 120). See discussion at 3.06 et seq. See 7.124 et seq. Again, see Develey (n 120).

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5 R EVOCATION AND INVA LIDIT Y

A INTRODUCTION

5.01

UK PROCEDURE 

5.04

B REVOCATION UNDER SECTION 46 C NONUSE D RESUMPTION OF USE E PROPER REASONS FOR NONUSE F PARTIAL REVOCATION G PROCEDURE H GENERICISM I MISLEADING MARKS

J PROCEDURE K INVALIDITY OF REGISTR ATION L ACQUIESCENCE

5.40

5.06

COMMUNITY PROCEDURE 

5.58

5.21

M REVOCATION AND INVALIDITY OF CTMS N REVOCATION O INVALIDITY P ACQUIESCENCE Q PROCEDURE R CHOICE OF FORUM

5.04

5.23 5.26 5.30 5.34 5.38

5.41 5.52

5.58 5.60 5.65 5.71 5.72 5.73

A INTRODUCTION The Trade Marks Act 1994 (the 1994 Act) and Regulation (EC) 207/2009 5.01 (CTMR) provide procedures to apply to have marks removed from the Register on a variety of grounds, the most important of which are the revocation of marks for non-use1 and the invalidation of marks which ought never to have been registered.2 These provisions are of great importance to people who wish to use a mark which may conflict with an earlier identical or similar mark registered for the same or similar goods or services. They protect the proprietors of earlier rights who, for whatever reason, did not oppose the registration of the mark, and traders who wish to clear a conflicting mark from the register with a view to use and/or register the mark for themselves. As discussed later, these provisions may in some circumstances also be relied upon by parties who unsuccessfully opposed the registration of the mark.

1 2

s 46 of the 1994 Act and Art 51 CTMR. s 47 of the 1994 Act and Arts 52 and 53 CTMR.

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Revocation and Invalidity 5.02 It is common for a defendant to infringement proceedings to counterclaim for

revocation or for a declaration of invalidity of the claimant proprietor’s mark.3 Where the claimant’s mark is a Community Trade Mark (CTM), someone threatened with infringement proceedings may wish to apply for a declaration of invalidity at OHIM in the hope of obtaining a stay of any infringement proceedings by virtue of Article 104 CTMR. That procedure is discussed at 9.38 –9.39. 5.03 Where an application under either ss 46 or 47 is brought ‘from scratch’, the

applicant may choose between applying to the Court or to the Registry. If proceedings are pending in Court in relation to a UK mark, however, the application must be made to that Court. 4 Where equivalent proceedings are brought against a CTM, they may be made to the Court only by way of counterclaim, otherwise they need to be made at OHIM.5

UK PROCEDURE B REVOCATION UNDER SECTION 46 5.04 Section 46(1) sets out a variety of grounds upon which the registration of a trade

mark may be revoked; revoking the mark for non-use is most common but it is also possible to seek revocation where a mark has become generic or deceptive. These grounds apply to all trade marks, including marks already registered when the 1994 Act came into force.6 5.05 Section 46 is intended to give effect to Articles 10 and 12 of Directive (EC) 2008/95

(the Directive). It might appear from its wording that s 46(1) gives a discretion to revoke a registration, rather than imposes an obligation to do so. However, the general view is that this is not the case,7 and the possibility of maintaining an unused mark on the Register would be inconsistent with the Directive.

C NONUSE 5.06 Under s 46(1)(a) and (b), a registration which has not been used for five years will be

revoked either under paragraph (a), where the mark has not been put to genuine use for the five-year period following registration, or under paragraph (b), where use of the mark has been ‘suspended’ for an uninterrupted period of five years at any 3 4 5 6 7

See Ch 9. ss 46(4)(a) and 47(3)(a). Arts 56(1) and 96 CTMR. Sch 3, para 17. Premier Brands UK Ltd v Typhoon Europe Ltd (‘Ty.phoo’) [2000] ETMR 1071, [2000] FSR 767.

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Non-Use later stage. The requirement that the mark must have been registered for five years before it may be attacked in this way is a significant clog upon the provision. The five-year period for s 46(1)(a) runs from the date of completion of the registration procedure, rather than from the date of filing the application for registration.8 So there may be a considerable period during which an unused mark can appear on the Register, first as a pending application and then as a registration, before being vulnerable to revocation for non-use. When faced with an earlier mark which is apparently unused, but less than five years have elapsed from the date of registration, an interested party may instead have to consider whether there are grounds to seek to invalidate the mark under s 47, as to which see 5.41 et seq. If non-use is alleged, it is for the proprietor to show what use, if any, has been made 5.07 of the mark.9 What must be established is that some genuine, commercial use has been made of the mark. The use does not need to be extensive, as long as it is genuine. These propositions stem from the decisions of the Court of Justice of the European Union (CJEU) in Ansul and La Mer. In Ansul 10 the mark MINIMAX had been registered as a Benelux mark since 1971 for 5.08 various goods, including fire extinguishers. By 1989, the proprietor Ansul had ceased selling fire extinguishers but it continued to sell component parts and to service the marked equipment. It used the mark on invoices relating to those services and put stickers bearing the mark on the equipment. In 1994, Ajax began to use the identical mark in the Benelux for fire extinguishers. Also in 1994, Ansul applied to register the mark for the maintenance and repair of fire extinguishers. Ajax applied to revoke the goods mark for non-use and the services mark as having been registered in bad faith. On a reference from the Hoge Raad in the Netherlands, the CJEU held that genuine use means: • use that is not just token use, made solely to preserve the rights conferred by the mark • use of the mark on the market for the goods or services protected by that mark • use which maintains or creates a share in the market for the goods or services protected by the mark • use which relates to goods or services already marketed or about to be marketed • use on parts which are integral to the goods, or services, such as after-sales services relating to them, as this would preserve the proprietor’ s rights in respect of those goods • use which is not just internal to the proprietor’s business. Significantly, use need not be ‘quantitatively significant’ to be genuine. 8

Getting the dates right in a revocation application is important: see WISI trade mark [2006] RPC 17; TPN 1/2007; and 5.30 et seq. 9 Under s 100. See Elle trade marks [1997] FSR 529; Police trade mark [2004] RPC 35. 10 Ansul BV v Ajax Brandbeveiliging BV, Case C-40/01, [2003] ECR I-2439, [2005] 2 CMLR 36, [2005] Ch 97, [2003] RPC 40; in relation to the same Minimax mark in the UK, see Minimax GmbH & Co KG v Chubb Fire Ltd [2008] EWHC 1960, 29 July 2008.

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Revocation and Invalidity 5.09 La Mer11 concerned two UK trade marks, registered in 1988 and 1989, for goods in

Classes 3 and 5. The French proprietor specialised in seaweed products and, whilst it claimed to have made sales in some 25 countries, evidence of sales in the UK in the relevant period was very limited. It had supplied about £600 worth of Class 5 goods and about £800 of Class 3 goods within the relevant period, but it was not shown they were under the mark in question, nor that the sales were continuous. The proprietor had appointed an agent in Scotland which made preparations to sell the products, but there was no evidence at all of sales to the public. The only sales which could directly be relied upon were the £600 and £800 worth of goods supplied to the agent. 5.10 By the time the reference reached the CJEU, it had ruled on Ansul, and so gave an

answer by its summary procedure. It ruled that as long as the use served a real commercial purpose, even minimal sales would suffice to establish genuine use. Given that guidance, the matter returned to the High Court and, on appeal,12 it was held that even modest sales to wholesale customers could suffice. Moreover, the use relied on by the registered proprietor was not internal, as the sales to the proprietor’s agent and the importation of the products into the UK were ‘external’. 5.11 The principles are:13

(1) (2) (3) (4)

Genuine use means actual use of the mark by the proprietor or a licensee, etc.14 The use must be more than merely ‘token’. The use must be consistent with the essential function of a trade mark. The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, namely exploitation that is aimed at maintaining or creating an outlet for the goods or services or a share in that market. (a) Examples that meet this criterion: preparations to put goods or services on the market, such as advertising campaigns. (b) Examples that do not meet this criterion: (i) internal use by the proprietor (internal use by the registered proprietor may not be token or a sham, but it will fail to qualify as genuine use because it is internal)15 or (ii) the distribution of promotional items to encourage the sale of other items. (5) All the relevant facts and circumstances must be taken into account.

11

La Mer Technology, Inc v Laboratoires Goemar SA, Case C-259/02, [2004] ECR I-1159, [2004] ETMR 47, [2004] FSR 38. 12 La Mer Technology, Inc v Laboratoires Goemar SA [2006] FSR 5 (CA). 13 Taken from Stichting BDO v BDO Unibank, Inc [2013] EWHC 418 (Ch), [2013] ETMR 31 at [51]. 14 Th is is explicit in the Directive, Art 10(3) and covered by reference to use with the proprietor’s consent in s 46(1). See also ‘Einstein’, Continental Shelf 128 Ltd v Hebrew University of Jerusalem [2007] RPC 23. Contrast THE LIGHT trade mark, BL O/472/11 (AP), 20 October 2011. 15 La Mer (nn 11 and 12); Il Ponte Finanziaria SpA v OHIM, Case C-234/06, [2007] ECR I-7333, [2008] ETMR 13 at [72]–[73].

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Non-Use (6) Use of the mark need not always be quantitatively significant for it to be deemed genuine. There is no de minimis rule. The relevant facts to be taken in to account include the nature of the goods or 5.12 services, the characteristics of the market for them, and the scale and frequency of the use. CTMs must be put to genuine use within the Community, while national trade marks must have been used within the Member State concerned. The ‘relevant market’ for a CTM is not the whole EU or even necessarily a single Member State; the territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to ‘genuine use in the Community.’ While it is reasonable to expect that a Community trade mark should be used in a larger area than a national mark, it need not be used in an extensive geographic area—again there is no de minimis rule as to the area of use.16 The scale of use which may be seen as sufficient will depend upon the size and 5.13 nature of the proprietor’s business;17 there is no fixed minimum usage, but where the goods are mass-market goods which one would expect to see sold in large quantities, small sales may be insufficient to reflect genuine attempts to establish or build a mark.18 Where there have been only very modest sales, it may be particularly important to produce good evidence to show that the goods did reach third parties.19 A lack of evidence of the extent of use which it should have been easy to supply may also count against a proprietor.20 Use must, however, be ‘as a mark’ so that use as, for instance, a company or trad- 5.14 ing name will not suffice. In Kabushiki Kaisha Fernandes v OHIM,21 evidence that the proprietor had taken a stand at a trade show was not considered to prove use of the particular mark in question for the relevant goods. Use on or in relation to the goods, in advertising or upon business papers needs to be shown, but it is all too common for evidence to fail to show the mark being applied to goods, packaging or documents. Acts which are preparatory to launching goods under the mark onto the market 5.15 may also suffice, such as advertising campaigns for goods already marketed or about to be marketed and for which preparations to secure customers are under way.22

16

Leno Merken BV v Hagelkruis Beheer BV, Case C-149/11, [2013] ETMR 16, 19 December 2012 at [52]–[54] and the test is not the same as for assessing marks with a reputation (see [52]). 17 Police trade mark (n 9). 18 See discussion in Sant Ambroeus trade mark, BL O/371/09 (AP), 5 November 2009 as to what use is necessary, and the possibly stricter test applied by OHIM in eg Sonia Rykiel v OHIM, Case T-131/06, [2008] ECR II-67: sales of 85 pieces of clothing, costing €432, over 13 months was not sufficient for genuine use. 19 See eg La Mer (nn 11 and 12) and ‘Philosophy di Alberta Ferretti’ trade mark [2003] RPC 15. 20 Advance Magazine Publishers, Inc v OHIM, Case T-382/08, [2011] ECR II-00002, [2011] ETMR 20, 18 January 2011 at [51]. 21 Case T-39/01, [2002] ECR II-5233, [2003] ETMR 98. 22 Ansul (n 10) at [37].

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Revocation and Invalidity However, the launch of products must not be too remote. In Royal Shakespeare,23 the mark had been registered for beer and other beverages but no goods had ever been sold by the proprietor. It sought to rely upon correspondence showing its attempts to find a brewer to make products to be sold under the mark. These pre-preparatory acts were held not to amount to real commercial exploitation of the mark on the market for beer. 5.16 A charitable organisation which did various charitable works and used its regis-

tered marks when collecting donations, on awards, and on its business papers, was held by the CJEU to have made genuine use of its service marks. The fact that goods or services are offered on a non-profit-making basis is not decisive, for a charity may seek to create and preserve an outlet for its goods or services.24 5.17 In Silberquelle 25 the word WELLNESS was registered in Austria for goods in

Classes 16 (magazines and books), 25 (clothing), and 32 (non-alcoholic drinks). To promote the sales of its clothing, the proprietor handed out alcohol-free drinks as gifts in bottles marked ‘WELLNESS-DRINK’, along with the clothing sold. It made no separate use of the mark for drinks. The CJEU held that genuine use denotes actual use consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer. Promotional items handed out to encourage the sale of other types of goods are not distributed with the aim of penetrating the market for goods in the same class as the promotional goods. As a result, use on the drinks was not genuine use. The Court distinguished such use from cases in which the proprietor of a mark sells promotional items in the form of souvenirs or other derivative products.26 5.18 Section 46(2)27 provides that the use made of the trade mark need not be exactly

in the form in which it is registered, as long as the use is ‘in a form differing in elements which do not alter the distinctive character of the mark’. The purpose of this provision is to allow the proprietor to make variations in the mark to suit the marketing and promotion requirements of the goods or services concerned and to adapt it to the realities of a changing market.28 In one of the Budweiser cases,29 a mark consisting of the words ‘Budweiser Budbräu’ in a stylised script was challenged for non-use. No use had been made of the mark as registered, but the proprietor had used a neck label with a device of a wax seal on which the words

23

Royal Shakespeare trade mark, BL O/009/13 (AP), 31 December 2012. Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ , Case C-442/07, [2008] ECR I-9223, [2009] ETMR 14. 25 Silberquelle GmbH v Maselli-Strickmode GmbH, Case C-495/07, [2009] ECR I-137, [2009] ETMR 28. 26 Elle (n 9) and Ty.phoo (n 7). 27 From Art 10(2)(a) of the Directive. 28 Rintisch v Eder, Case C-553/11, [2013] ETMR 5, 25 October 2012 at [21]–[22]. 29 BUD and Budweiser Budbräu trade marks [2003] RPC 25. 24

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Resumption of Use were printed in capital letters in a circle. The Court of Appeal held that the hearing officer had been entitled to find that the dominant feature of the mark was the name, not the font, so that the mark had been used in a form which did not alter its distinctive character. By contrast, in Fruit of the Loom,30 no use was made of the mark ‘Fruit’ by use of the distinctively different trade mark ‘Fruit of the Loom’. In Rintisch v Eder,31 the question was whether the mark PROTI had been put to 5.19 use by using it in the form ‘PROTIPLUS’ and ‘Proti Power’—both of which were also marks registered by the proprietor. The CJEU held that the proprietor was not precluded from relying on use in a form different from that in which the mark was registered, if the differences between the two forms did not alter the distinctive character of the mark, even though that different form was itself registered as a trade mark—that would have been an unnecessary restriction on Art 10(2)(a). A similar result was reached in Colloseum:32 Levi Strauss owns ‘a position mark’ consisting of the well-known rectangular red textile label, sewn into the left-hand seam of a trouser pocket and another mark which adds the name Levi’s to the red label. Colloseum alleged that the position mark had not been put to genuine use. The CJEU held that if a mark is used only as part of a composite mark or in conjunction with another mark, it must continue to be perceived as indicating origin for that use to be ‘genuine use’. Again, in Specsavers,33 the CJEU held that superimposing the Specsavers name onto its wordless spectacle-shaped logo did change its form, but might still constitute use of both marks, even though the combination mark was also a CTM. Section 46(2) provides that a mark which has been used in the UK only in the sense 5.20 of being fixed here to goods or packaging intended solely for export has nonetheless been used within the UK.

D RESUMPTION OF USE Section 46(3) deals with the position where there has been five years’ non-use but 5.21 use of the mark recommences prior to the application for revocation being made. Such resumption of use will save the mark from revocation as long as that use is genuine. The proviso to s 46(3) requires the tribunal to disregard any commencement or resumption of use after the five years of non-use but within the period of three months before the application for revocation is made, unless preparations

30

Fruit of the Loom, Inc v OHIM, Case T-514/10, [2012] ETMR 44, 21 June 2012. See n 28. 32 Colloseum Holding AG v Levi Strauss & Co, Case C-12/12, [2013] ETMR 34, 18 April 2013. 33 The facts are discussed at 3.72 and 7.54: Specsavers International Healthcare Ltd v Asda Stores Ltd, Case C-252/12, [2013] ETMR 46, 18 July 2013. NB see Art 16(4)(a) of the proposed Directive, Art 15(1) of the proposed CTMR. 31

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Revocation and Invalidity for it began when the proprietor was unaware that the application for revocation might be made. This proviso is designed to prevent a proprietor from preserving his mark by hastily starting to make use of it just because he knows that an application for revocation is threatened. In any event, it would seem that, with or without the proviso, a court would be unlikely to find that any such use made after notice had been given of an application for revocation was genuine. 5.22 An applicant for revocation need not wait for five years and three months before

bringing the application to revoke; it can be made immediately after the expiry of the five-year period.34

E PROPER REASONS FOR NONUSE 5.23 An important issue in proceedings for revocation for non-use may be the adequacy

of any reasons given by the proprietor for not having used the mark. If they amount to ‘proper reasons’ the mark will not be revoked. The burden lies on the proprietor to prove that there are adequate reasons for non-use, outside his control. Routine commercial difficulties are unlikely to amount to proper reasons,35 but abnormal situations in the market at large or affecting the proprietor in particular may do so.36 5.24 A variety of reasons have been advanced in the reported cases. In Cabanas

Habana 37 the reason given for non-use of the mark on Cuban cigars was the US trade embargo. However, given the long-term nature of the problem, the reason was not a proper one to save the mark from revocation. In Philosophy di Alberta Ferretti38 the Court of Appeal held that a proprietor who did nothing for most of the five-year period, but eventually started a lengthy process aimed at producing goods for sale under the mark, could not rely on ordinary commercial delays in getting the product onto the market as proper reasons for non-use. The tribunal must think that the proprietor could and would have got the goods onto the market had it not been for the problems relied upon.39 5.25 By contrast, in Haupl v Lidl,40 Lidl owned a device mark for ready-made meals

which it sold only in its own shops. Lidl said that it had planned to put the goods

34

‘Philosophy di Alberta Ferretti’ (n 19) at [8]. See Il Ponte Finanziaria (n 15)—national law allowing for registration of ‘defensive’ marks was not a proper reason; nor in Royal Shakespeare (n 23) was the alleged difficulty of entering the brewing business a proper reason for non-use. 36 See Invermont trade mark [1997] RPC 125. 37 Cabanas Habana trade mark [2000] RPC 26. 38 Philosophy di Alberta Ferretti (n 19). 39 Similarly, see Cernivet trade mark [2002] RPC 30 at [51]. Contrast Magic Ball trade mark [2000] RPC 439. 40 Haupl v Lidl Stiftung & Co KG, Case C-246/05, [2007] ECR I-4673, [2007] ETMR 61. 35

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Partial Revocation into its Austrian stores since 1994, but had been delayed by bureaucratic obstacles, such as delays in obtaining operating licences, so the goods were not put on sale until December 1998. Meanwhile, in October 1998 Mr Haupl had applied to revoke the mark. The CJEU held that if an obstacle is such as to ‘jeopardise seriously the appropriate use of the mark’ its proprietor could not be blamed for not having used it. Lidl could not have been expected to sell goods under the mark in its competitors’ shops if that would have been a change of corporate strategy.

F PARTIAL REVOCATION The effect of an application for revocation may vary according to the circumstances 5.26 of the case. In many cases, use will have been made of the mark on some but not all of the goods and services for which the trade mark is registered. If so, revocation may be ordered in respect of the unused goods or services (see s 46(5)).41 Finding a fair specification may, however, be far from straightforward. Moreover, it means that an applicant for revocation will not always be successful in ‘knocking out’ all those parts of an earlier registration about which he is concerned. Partial revocation of a registration may still leave the proprietor with the basis of an opposition/ infringement action. The tribunal must try to find a fair specification for the mark which defines not 5.27 the particular examples of goods for which there has been genuine use, but the categories or subcategories of goods they realistically exemplify.42 In Aladin, 43 the GC held that this required identification of goods or services which are sufficiently distinct to constitute coherent categories or subcategories. In Extreme, 44 the essence of the UK approach was said to be to consider how the average consumer would fairly describe the goods in relation to which the trade mark has been used. In Thomson Holidays Ltd v Norwegian Cruise Lines Ltd,45 Thomson had two regis- 5.28 trations for a range of services connected with the provision of holidays. It sued for infringement by use of the identical mark for luxury cruises. The defendant counterclaimed for partial revocation of the marks. The judge found that the mark had been used only on package holidays, and decided to revoke parts of the mark and

41

Equivalent to Art 13 of the Directive and Art 51(2) CTMR. See Reckitt Benckiser v OHIM (‘Aladin’), Case T-126/03, [2005] ECR II-2861, [2006] ETMR 50; DATASPHERE [2006] RPC 23; WISI trade mark (n 8); Pan World Brands Ltd v Tripp Ltd (‘Extreme’) [2008] RPC 2, AP; and Stichting (n 13). Also see earlier UK cases Mercury Communications Ltd v Mercury Interactive (UK) [1995] FSR 850; Minerva trade mark [2000] FSR 734; and Decon Laboratories Ltd v Fred Baker Scientific Ltd [2001] RPC 17. 43 At [46]. 44 At [54]. 45 [2003] RPC 32. 42

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Revocation and Invalidity to exclude ‘services in relation to cruises on a cruise ship’. The Court of Appeal held that the specification should be limited to reflect the circumstances of the particular trade and the way that the public would perceive the use. The average consumer would describe the claimant’s services under the mark as ‘package holidays’ so that was the appropriate wording to add to the specifications. It was not appropriate to exclude cruise holidays. The defendant was using the identical mark in relation to package holidays, albeit involving cruises on a cruise ship, and so infringed under s 10(1).46 In ESB47 the mark (which stood for ‘Extra Special Bitter’) had been used only on bitter, but the mark was registered for ‘beers’. A challenge to the overall validity of the mark was rejected, but the Court of Appeal upheld the judge’s decision that it ought to be revoked save in respect of ‘bitter beer’ as a ‘class of beer well-known to the interested public’. 5.29 In some cases of partial revocation a straightforward deletion (the blue-pencil

approach) may be appropriate, or an express exclusion (‘save for’) may be acceptable.48 However, care must be taken to ensure that the specification complies with the guidance of the CJEU in Postkantoor.49 That case related to the registrability of a descriptive term, and the CJEU held that a trade mark could not properly be registered for certain goods or services on condition that they do not possess a particular characteristic. The distinctions between various types of exclusions were discussed by Arnold J in Omega; for example, he held that a limitation which referred to the function of the goods was acceptable.50 There is often a certain amount of to-ing and fro-ing between the proprietor and the Hearing Officer at the UKIPO in establishing the appropriate specification. See the UKIPO’s TPN 1/2012.51 More rarely, the process of amending the specification will occur only on appeal. This is generally rather unsatisfactory.52

G PROCEDURE 5.30 Anyone may apply to revoke a mark under s 46, although, of course, applications

are usually made by people with a real interest in cancelling the mark. Where

46 Followed in H Young (Operations) Ltd v Medici Ltd (‘Animal’) [2004] FSR 19: specification for ‘clothing’ should not be reduced to specific types or descriptions of clothing. 47 West (t/a Eastenders) v Fuller Smith & Turner plc [2003] FSR 44. 48 See eg Giorgio Armani SpA v Sunrich Clothing Ltd [2010] EWHC 2939 (Ch), [2011] RPC 15. 49 Koninklijke KPN Nederland NV v Benelux-Merkenbureau , Case C-363/99, [2004] ECR I-1619, [2005] 2 CMLR 10, [2006] Ch 1. 50 Omega Engineering, Inc v Omega SA , [2012] EWHC 3440 (Ch), [2013] FSR 25—eg a limitation of ‘clocks’ to ‘clocks incorporating radios’ would be acceptable, see [57]. 51 Also see Galileo International Technology, LLC v EU [2011] EWHC 35 (Ch), [2011] ETMR 22 at [29] as to the need for procedural fairness. 52 eg Advanced Perimeter Systems Ltd v Keycorp Ltd [2012] RPC 14.

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Genericism proceedings concerning the trade mark are already before a court, the application must be made to that court.53 Where the application is made to the Registrar, the procedure is governed by Rule 5.31 38. The application is made on Form TM26(N); it must specify which five-year period is relied upon if the application is under s 46(1)(b), as well as the date from which revocation is sought. The UKIPO has guidance on its website as to how to calculate the dates. Under Rule 38 the proprietor has two months after service of Form TM26(N) in 5.32 which to file a counter-statement; evidence of use may be filed at that stage or in any further period specified by the Registrar under Rule 38(4). If the proprietor fails to file the Form or his evidence in time, the Registrar may treat him as not opposing the application and revoke the registration.54 If he does wish to save the mark, he must file evidence of use, and this needs to prove use of the kind discussed earlier by providing information as to the type, scale, and dates of any use of the mark, and should exhibit examples of how the mark has been used, such as on labels, advertisements, or photographs of the goods showing the mark, as well as sales figures, invoices, etc showing use of the mark.55 Under s 46(6), the tribunal may specify the appropriate date from which the rights 5.33 shall be deemed to have ceased; usually this is the date of the application for revocation, but the order may be backdated to any appropriate date. Where the applicant for revocation has a reason to seek to backdate the order (where, for instance, he started to use his own mark before that date), he must identify the earlier date in his application form. Care must be taken about the exact dates to use,56 as the applicant may still be exposed to an infringement action or opposition for a period before the date from which the mark is revoked.57

H GENERICISM Section 46(1)(c) provides a rather different reason for revoking a registration: where 5.34 the mark has become the common name ‘in the trade’ for a product or service for which it is registered, and where the fact that it has become the common name is due to the acts or inactivity of the proprietor of the mark.

53

s 46(4)(a). The Registrar has a discretion to treat the application as defended—see Rule 38(6)–(8) and eg Music Choice [2006] RPC 13. 55 As to evidence generally, and who should give it, see 4.57 et seq. 56 See WISI trade mark (n 8); and TPN 1/2007. 57 So it may be necessary to bring invalidation proceedings too; no issue estoppel arises in doing so:  see Hormel Foods Corp v Antilles Landscape Investments NV (‘Spambuster’) [2005] RPC 28; Business Zone Plus, BL O/364/07, 13 December 2007; Now Wireless [2011] RPC 13. 54

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Revocation and Invalidity 5.35 Revocation is appropriate only where the proprietor is in some way to blame for

the loss of distinctiveness of the mark, perhaps where he was aware of misuse of the mark but did nothing to stop it, or where his own publicity misused the mark. He must, therefore, ensure that he does not make the mistake of using the mark as the name of the goods, nor permit others to use the mark in that way. This can be difficult where the mark is applied to an innovative product of some sort: ‘Shredded Wheat’, ‘Aspirin’, or ‘Escalator’, all of which were originally trade marks, became the generic name of the goods. 5.36 In Bjornekulla Fruktindustrier 58 it was claimed that the mark ‘Bostongurka’ had

become a generic name for chopped pickled gherkins. The applicant relied on a survey of traders in the grocery, mass-catering, and food-stall sectors. The CJEU held that the question was whether the mark was incapable of fulfilling its function as an indicator of origin either to consumers or to those in the trade, depending on the features of the market concerned. The phrase ‘in the trade’ in s 46 will need to be construed accordingly. 5.37 In Spambuster59 it was held that the rule applies where the trade mark has become

a common name in the trade for the goods or services in question, but it need not be the only common name for them. In Rousselon 60 it was suggested that the mark ‘Sabatier’ was a common name for a type of knife, but it was held that to establish this would require cogent evidence. In Magic Tree 61 Kitchin J doubted whether s 46(1)(c) could apply to a device mark. In any event, on the facts of that case he found that the use of a tree shape for an air freshener was not common to the trade, but was distinctive of the claimant’s products.62

I MISLEADING MARKS 5.38 Lastly, under s 46(1)(d), a registration may be revoked if the proprietor’s use of the

mark has become liable to mislead the public, particularly as to the nature, quality, or geographical origin of his goods or services. The wording of s 46(1)(c) and (d) is significantly different: generic marks can be removed under subsection (c) by reason of the acts or inactivity of the proprietor, but misleading marks can only be removed under subsection (d) by reason of the use made of the mark by the proprietor or with his consent. For instance, failure to take action against persistent

58 Bjornekulla Fruktindustrier AB v Procordia Food AB , Case C-371/02, [2004] ECR I-5791, [2005] 3 CMLR 16, [2004] RPC 45. 59 Spambuster (n 57). 60 Rousselon Frères et Cie v Horwood Homewares Ltd [2008] RPC 30 at [85]. 61 Julius Sämaan Ltd v Tetrosyl Ltd (‘Magic Tree’) [2006] FSR 42, [2006] ETMR 75.  62 A further CJEU case on genericism is pending: Backaldrin Österreich Th e Kornspitz Company GmbH v Pfahnl Backmittel GmbH, Case C-409/12, 12 September 2013 (AG).

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Invalidity of Registration infringers would not be caught by subsection (d).63 It seems that the question of whether the mark is liable to mislead the public would be assessed in the light of similar considerations to those which would be applied under s 3(3)(b) at the stage of an application being made for registration.64 In Scandecor 65 one of the questions referred to the CJEU (which remains unan- 5.39 swered, as the case settled) was whether the grant of a bare licence might justify revocation on this basis. In Elizabeth Emanuel,66 Mrs Emanuel sought to revoke the mark ‘Elizabeth Emanuel’, owned by a company with which she had no connection, on the basis that the public would be deceived into believing that she was associated with the business and/or had designed the dresses. The CJEU held that the mark was not liable to revocation on this basis—the mark correctly indicated the trade origin of the goods.

J PROCEDURE Rules 39 and 40 deal with the procedure for applications under s 46(1)(c) and 5.40 (d) that are made to the Registry. Form TM26(O) must be used for the application. The proprietor must file a Form TM8 in response to the TM26(O) within two months or risk being treated as not opposing the application, and unless the Registrar directs otherwise the registration will be revoked. If a TM8 is filed, the Registrar will set a timetable for the exchange of evidence.

K INVALIDITY OF REGISTRATION An application under s 47 is fundamentally different to one under s 46. The prem- 5.41 ise underlying s 46 is that a mark which was validly registered has become liable to be removed from the Register due to non-use or supervening events. By contrast, under s 47 the mark will be declared to be invalid on the basis that it should never have been registered, on any of the grounds in ss 3 or 5.67 If the grounds of invalidity apply to only some of the goods or services in the specification, a declaration of partial invalidity will be made.68

63 See the Australian case of New South Wales Dairy Corp v Murray Goulburn Co-operative Co [1991] RPC 144, 162. 64 See 2.120 et seq. 65 Scandecor Developments AB v Scandecor Marketing AB , [2001] 2 CMLR 30, [2002] FSR 7. 66 Elizabeth Emanuel v Continental Shelf 128 Ltd , Case C-259/04, [2006] ECR I-3089, [2006] ETMR 56; see the similar case of Elio Fiorucci v OHIM, Case C-263/09, [2011] ECR I-05853, [2011] ETMR 45, 5 July 2011.  67 See the imperative wording of the Directive, Art 3. 68 Again, in line with the Directive, Art 13.

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Revocation and Invalidity 5.42 Section 47(1) deals with registrations made in breach of s 3. As to the substance,

please refer to Chapter 2.69 The second paragraph of s 47(1) provides that where a mark was not distinctive when registered, but has become distinctive since registration in relation to the relevant goods or services, it shall not be declared invalid. This reflects the proviso to s 3(1) and the same test will apply as to the distinctiveness required to satisfy it. 5.43 Section 47(1) does not appear to cover the position of a mark which was distinctive

at the time of registration, but has become descriptive or misleading since registration. The only remedies for such a situation are found in s 46(1)(c) or (d), and the limitations of those provisions have been discussed at 5.37 et seq. 5.44 Section 47(2) is a similar provision for marks which should not have been registered

on the basis that they clashed with earlier rights protected by s 5. An application under s 47(2)(a) may only be made by the proprietor or a licensee of the earlier trade mark relied on or, in the case of an earlier collective mark or certification mark, the proprietor or an authorised user of such collective mark or certification mark.70 Any earlier trade mark relied upon which has been registered for more than five years must itself be in use.71 An application under s 47(2)(b) (reflecting s 5(4)(b)) may only be made by the proprietor of the earlier right and may not be brought if the owner of the relevant earlier mark or right has consented to the proprietor’s registration of his mark. 5.45 The relevant date at which the conflict of marks or other rights falls to be assessed is

the date when the application for the challenged mark was filed, although evidence from earlier and later dates may shed light on the position at the relevant date.72 5.46 Section 47(3), like s 46(4), provides that the application may be made to the

Registrar or the Court, save where proceedings are already pending in relation to the trade mark in Court, when the application must be made to the Court. Section 47(4) provides that the Registrar may apply to the Court for a declaration of invalidity where the registration was made in bad faith. 5.47 The declaration of invalidity may affect only some of the goods or services for which

the mark is registered. Under s 47(6) where a declaration of invalidity is made, the registration, logically, is deemed never to have been made. However, ‘past and closed’ transactions are not to be affected by such a declaration. Presumably this means that a settlement of a claim based upon the mark would not be reopened

69 See eg Score Draw Ltd v Alan Finch (CBD trade mark) [2007] FSR 20; Paul Reber GmbH & Co KG v OHIM, Case T-304/06, [2008] ECR II-1927, [2008] ETMR 68. 70 Under the Trade Marks (Relative Grounds) Order 2007, SI 2007/1976, para 5, amending s 47(3). 71 Under the Trade Marks (Proof of Use, etc) Regulations 2004, SI 2004/946, para 6. See the same rule for oppositions: 3.05. 72 Alcon, Inc v OHIM, Case C-192/03, [2004] ECR I-8993, [2005] ETMR 69.

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Invalidity of Registration by reason of the subsequent declaration of invalidity, nor would fees paid under a trade mark licence be repayable.73 The 1994 Act applies in relation to marks registered prior to 1 October 1994 as if 5.48 it had been in force at all material times, except that no objection to the validity of such an existing registration may be taken on the grounds specified in s 5(3), as such grounds were not grounds for objection under the 1938 Act.74 One issue which has arisen in relation to s 47 is whether a party is entitled to seek a 5.49 declaration of invalidity where it previously opposed the registration of the mark. In Special Eff ects v L’Oréal SA 75 the question was whether the defendants were barred from challenging the validity of the mark by reason of cause of action or issue estoppel, or abuse of process, where a connected company had unsuccessfully opposed the registration of the mark. The Court of Appeal held that there was no estoppel because the coexistence of the provisions for opposition and for a declaration of invalidity has the result that opposition proceedings are inherently not final. Any unconnected third party could challenge the validity of the registration despite an unsuccessful opposition by another, so that the decision of the Registry to register a mark despite opposition is not a final decision capable of being the basis of an issue estoppel. Equally, there was no abuse of process given the nature of opposition proceedings and the relatively simple manner in which they are generally conducted. Raising the same invalidity arguments on two occasions might be altogether 5.50 another matter, as shown in Evans (t/a Firecraft) v Focal Point Fires.76 The defendant’s mark had been declared invalid in s 47 proceedings in the Registry, on the basis that, when the trade mark application was made, the claimant had goodwill in the mark and the defendant’s use of its mark would have been liable to be prevented by the law of passing off (a s 5(4)(a) objection). The claimant then issued High Court proceedings for passing off and was granted summary judgment on the basis of issue estoppel, cause of action estoppel, and abuse of process. Peter Smith J held that as (following Special Eff ects) the claimant would not have been able to issue invalidity proceedings in the High Court, had its application failed in the Registry, the defendant should similarly be restricted from re-litigating the matter: the Registry invalidity proceedings were ‘final’ for the purposes of an issue estoppel. It seems that a critical finding was that there had been no change to the claimant’s goodwill since the relevant date of the invalidity action. A different result might flow, perhaps, if there was a significant difference between notional, normal, and fair use of the challenged mark and the use actually made of it by the 73

Contrast the position under the CTMR, Art 55(3), discussed at 5.70. See Sch 3, para 18. 75 [2007] RPC 15. 76 Evans (t/a Firecraft) v Focal Point Fires plc [2009] EWHC 2784, [2010] RPC 15, [2010] ETMR 29. 74

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Revocation and Invalidity defendant, or if relevant circumstances had changed between the relevant date for considering invalidity and the date of the passing off proceedings.77 5.51 Following Firecraft, the UKIPO will consider whether invalidation proceedings

including s 5 grounds should be decided only after a hearing: see TPN 3/2011. Rule 41 provides the procedure to be followed under s 47, which is similar to that under s 46(1)(c) and (d).

L ACQUIESCENCE 5.52 Section 48 provides a statutory ‘defence’ of acquiescence, which implements

Article 9 of the Directive.78 It provides a dual form of protection. First, it protects registered marks from earlier marks/rights, if the owner of such rights has acquiesced in the use of the registered mark for five years. Secondly, it protects such earlier marks/rights from attack by the proprietor of a later registered mark, even if the proprietor of the earlier mark has lost the right to challenge the later mark. 5.53 Section 48(1) provides that where the proprietor of an earlier trade mark or any

other earlier right has acquiesced in the use of a registered trade mark in the UK for a continuous period of five years, he shall not be entitled either to apply for a declaration that the registration of the later mark is invalid, or to oppose the use of that later mark on the goods or services in relation to which it has been used. The proprietor of the earlier trade mark cannot be held to have acquiesced unless he had full knowledge of use of the later trade mark and was in a position to oppose it. The possibility of raising this defence of acquiescence will not, therefore, arise until the later mark has been registered for at least five years and will not arise then unless it has also been used for five years. If use of the later mark commenced prior to registration, that does not start time running—that can only happen on registration.79 5.54 The statutory rule on acquiescence does not exclude the possible application of

national rules on honest concurrent use of trade marks.80 5.55 Once the conditions of use/acquiescence have been established, the proprietor of

the earlier mark or right effectively loses his rights to remove the later trade mark

77

So in Ameen’s trade mark application, BL O/070/13 (AP), 14 February 2013, there was no estoppel where the relevant dates were years apart. 78 So its application must be in accordance with the harmonised EU rules: see ‘Bud’, Budějovický Budvar, Národní Podnik v Anheuser-Busch, Inc, Case C-482/09, [2011] ECR I-08701, [2012] RPC 11, [2012] ETMR 2 at [33]. Note the rather different wording of Art 54 CTMR (see 5.71). 79 ‘Bud’ (n 78) at [45] et seq. See also the earlier decision of Sunrider Corp v Vitasoy International Holdings Ltd [2007] RPC 29. 80 ‘Bud’ (n 78) and see 3.89 et seq.

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Revocation and Invalidity of CTMs from the Register or to oppose its use. The only saving for the proprietors of such rights who have acquiesced in this way for this period will be if they are able to show that the registration of the later trade mark was applied for in bad faith.81 The other side of the coin is found in s 48(2), which provides that where there has 5.56 been a period of five years’ use of the later trade mark in which the proprietor of the earlier right has acquiesced, the proprietor of the later mark is not entitled to oppose the use of the earlier mark on the basis of his trade mark registration. Proprietors of all such earlier marks and rights therefore need to be vigilant in 5.57 the protection of their rights. It is not clear what steps, short of proceedings for a declaration of invalidity or infringement, would be sufficient to show that there had been no acquiescence within the meaning of this section. It is possible that there will be cases in which damaging confusion is caused by the later registered mark, but the proprietor of the earlier right is not in a position to bring infringement or revocation proceedings. It remains to be seen whether he can protect his position by correspondence indicating that he does not acquiesce in the use of the later mark.

COMMUNITY PROCEDURE M REVOCATION AND INVALIDITY OF CTMs The rules on revocation and invalidity of CTMs are very similar to those for 5.58 UK marks and arise from the same harmonised provisions. However, there are a number of ways in which the two systems differ.82 The main provisions are Articles 51–7 CTMR and Rules 37–41 of the Implementing Regulation 2865/95. However, Article 1583 is also relevant, as it provides that a CTM may be subject to sanctions (namely those in Article 51) where it has not been put to use within five years after registration. Use in a form differing from the form registered only in elements which do not affect the distinctive character of the CTM is sufficient, however, as is use on packaging for export, and use by another with the proprietor’s consent. Where a CTM is revoked or invalidated, there is a valuable right for its proprietor 5.59 to seek to convert it into one or more national marks, under Articles 112–14 and Rules 44–7, assuming that there are Member States in which the grounds for revocation/invalidity do not apply. 81 82 83

On this point, see discussion of s 3(6) at 2.129 et seq. OHIM publishes useful guidelines to its cancellation procedures on its website. Really. This is not a typo.

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Revocation and Invalidity

N REVOCATION 5.60 Article 51 sets out the grounds for revocation. Article 51(1)(a) deals with revocation

for non-use. The substance of this provision (when added to Article 15) is the same as under s 46(1)(a), although (obviously) a CTM must be used in an appropriate area of the Community, as to which see 5.12. 5.61 Otherwise, the substance of what is genuine use, how it is to be proved, proper rea-

sons for non-use, etc should theoretically be the same as under UK law. However, it seems that there may be a somewhat stricter test applied at OHIM where there has been very small-scale use of consumer goods which might be expected to be sold in large numbers.84 Where use is proved on some of the goods or services in the CTM specification, or on a subset of such goods/services, by Article 51(2) there may be partial revocation.85 5.62 Where there is revocation for non-use, it seems inherently unlikely that there will

be scope for conversion of the CTM into a national mark. Article 112(2)(a) provides that on revocation for non-use there shall not be conversion unless the CTM has been put to genuine use according to the law of the Member State for which conversion is requested and, given the harmonisation of the concept of genuine use, it is hard to see how this would leave scope for the mark to survive in any Member State. 5.63 Article 51(1)(b) deals with marks which have become generic as a result of the acts

or inactivity of the proprietor. The practice on this is the same as under the 1994 Act, although Article 10 CTMR permits a CTM proprietor to take action against use of his mark in a dictionary or encyclopaedia in such a way as to give the impression that it is a generic term. Presumably, one ‘activity’ which the proprietor might be expected to take to prevent the mark from becoming generic would be to attack such use. Article 51(1)(c) deals with marks which have become misleading as a result of the use made of them by their proprietor or with his consent. 5.64 If Article 51(1)(b) or (c) applies anywhere in the Community, the CTM will be

revoked, but it may be possible to convert it into one or more national registrations if the mark is not generic or misleading in those Member States.

O INVALIDITY 5.65 Absolute grounds for invalidity are dealt with in Article 52. This is equivalent to

the provision under s 47, in requiring a CTM which has been registered in breach 84 85

See eg Sonia Rykiel v OHIM (n 18). eg ‘Aladin’ (n 42).

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Invalidity of the provisions of Article 7 to be declared invalid. In this respect, OHIM may consider the position not just as at the filing date, but also up to the date of registration.86 Where the proprietor is relying on acquired distinctiveness and the proviso in Article 52(2), the relevant date to take into consideration is the date when the application for invalidity was filed. Bad faith is not one of the grounds to refuse registration of a CTM under Article 7, 5.66 so it is significant that Article 52 (1)(b) provides that a CTM may be declared invalid where the applicant was acting in bad faith when he filed the CTM application.87 Article 53 is broadly similar to s 47(2). It requires a CTM to be declared invalid on 5.67 the basis of an earlier trade mark or right as defined in Article 8(2) and (4), or where a mark was registered by an agent, contrary to Article 8(3). It permits invalidation of a CTM on the basis of other earlier rights protected by Community or national laws—in particular, rights to a name, a right of personal portrayal, a copyright, or an industrial property right (broadly the rights protected by s 5(4) of the 1994 Act). See 3.82. There is no procedure by which the proprietor of the challenged CTM can contest 5.68 the validity of a national mark raised as an earlier right under Article 53 in the course of invalidity proceedings at OHIM. Any such challenge must be brought in the state of registration, 88 but where the earlier mark relied on has been registered for over five years, its proprietor may (should) be put to proof that it has been used. There are two important restrictions on Article 53. First, by Article 56(1)(b) the 5.69 application may be brought only by the owner of the relevant earlier right. Secondly, Article 53(4) provides for a sort of estoppel: where the proprietor of any of these rights has previously applied for a declaration of invalidity or made a counterclaim to that effect, he may not submit a new application on the basis of another of those rights if he could have invoked it in support of his first application or counterclaim. However, a decision in opposition proceedings does not preclude a later cancellation request based on the same earlier rights, although, as OHIM’s guidelines point out, it is unlikely to reach a different decision unless the evidence is different or there has been an intervening change in the law. The consequences of a successful application for revocation or for invalidity are set 5.70 out in Article 55. Article 55(3) spells out in rather more detail than s 47(6) the retroactive effects of success: it does not affect any decision on infringement enforced prior to the revocation/invalidity decision, nor any contract made and performed 86

See the section on Cancellation in OHIM’s guidelines, available on its website. Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, Case-529/07, [2009] ECR I-4893, [2009] ETMR 56. 88 See by analogy Pepsi Co, Inc v OHIM, Case T-269/02, [2005] ECR II-1341, and see TPN 4/2009. 87

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Revocation and Invalidity before the decision, although the repayment of sums paid under the contract may be ‘claimed on grounds of equity’.

P ACQUIESCENCE 5.71 Article 54 provides for the limitation of CTMs and national trade marks or other

earlier rights by reason of acquiescence, in similar terms to s 48 of the 1994 Act. See 5.52 et seq.

Q PROCEDURE 5.72 Under Article 56(1), anyone may apply under Articles 51 and 52 (but not under

Article 53). Articles 56 and 57 deal with examination of the application and the procedure to be followed; this is also covered by Rule 37 of the Implementing Regulation, which spells out the required contents of an application for revocation or a declaration of invalidity. These include ‘an indication of the facts, evidence and arguments’ of the applicant, and it is not clear how much detail needs to be supplied at this stage, especially given Article 57(1). To err on the safe side, it may be wise to file the evidence with the application.89 Failure to file all of one’s evidence in time may not always be fatal, as OHIM has a discretion as to whether to take additional late evidence into account.90

R CHOICE OF FORUM 5.73 Where there are no proceedings relating to the CTM, someone who wishes to

attack it must apply at OHIM. If that is done, infringement proceedings in the Member State will in principle be stayed pending resolution of the revocation/invalidity application. Where proceedings are on foot in a Member State, the corresponding application may be made in the proceedings in the national Community trade mark court or at OHIM and will typically be stayed. See generally 9.39.

89 See discussion of the meaning of the rule in Centrotherm v OHIM, Joined Cases C-609/11 and 610/11, [2014] ETMR 7. 90 See issues with Art 76 CTMR and Art 22 Implementing Regulation; OHIM v Kaul GmbH, Case C-29/05, [2007] ECR I-2213, [2007] ETMR 37; Centrotherm (n 89); and New Yorker SHK Jeans GmbH & Co KG v OHIM, Case C-621/11, 18 July 2013.

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6 ASSIGNMENT AND LICENSING OF M AR KS

A B C D E

INTRODUCTION COOWNERSHIP ASSIGNMENTS FORMALITIES REGISTRATION OF ASSIGNMENTS F ASSIGNMENT OF UNREGISTERED MARKS G LICENSING OF TRADE MARKS H REGISTRATION OF LICENCES

6.01 6.04 6.05 6.07 6.08 6.10 6.11 6.19

I LICENSEES’ RIGHTS OF ACTION J EXCLUSIVE LICENCES K COMBINATION LICENCES OF TRADE MARKS AND OTHER RIGHTS L BASIC PROVISIONS OF A LICENCE AGREEMENT M THE EFFECT OF EU LAW ON ASSIGNMENTS AND LICENCES

6.20 6.26

6.33 6.37 6.51

A INTRODUCTION A registered trade mark is personal property and, in Scotland, ‘incorporeal move- 6.01 able property’.1 Accordingly, it can be co-owned, assigned, licensed, dealt with, or transmitted in the manner of any other property right, subject only to the specific provisions of the Trade Marks Act 1994 (the 1994 Act). The only corresponding provisions in Directive (EC) 2008/95 (the Directive) are confined to licensing.2 This is expected to change with the proposed Directive. An application for registration of a trade mark is treated as an object of personal prop- 6.02 erty in just the same way as a complete registration.3 So the rules as to assignment and licensing apply to applications for marks ‘with any necessary modifications’.4 Another significant feature of the 1994 Act is that licensees are granted rights 6.03 to bring proceedings and recover damages. The terms of licences are left largely 1 2 3 4

See s 22 of the 1994 Act. Art 8 of the Directive and Art 22 of the Regulation. s 27. From the wording of s 27.

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Assignment and Licensing of Marks unregulated by the 1994 Act and the trade mark proprietor is left to ensure that dealings with the trade mark do not damage it or render it liable to revocation, for example because it has become deceptive. The decision in Scandecor,5 discussed at 6.11– 6.14, confirms a change in approach under the 1994 Act from a previous, stricter position.

B COOWNERSHIP 6.04 Co-owners are each entitled to an equal undivided share in the registered trade

mark, subject to any agreement to the contrary.6 Each co-owner can exploit the trade mark for his own benefit without the permission of the other co-owners.7 If co-owners exploit a registered trade mark separately, care needs to be taken that the mark does not become liable to mislead the public. If it does, the registration risks being revoked.8 One co-owner cannot license or assign his share in the registered trade mark without the consent of the other co-owners.9 A co-owner can commence proceedings and even obtain interim relief but the other co-owners must be joined as co-claimants or co-defendants, pursuant to s 23.

C ASSIGNMENTS 6.05 A mark may be assigned with or without the goodwill of a business in relation to

which it has previously been used.10 Section 24(2) permits partial assignments, that is to say assignments limited to certain of the goods or services for which the mark is registered or in relation to use in a particular manner or area. The commercial limitations upon such partial assignments will lie in the potential difficulties of having a number of different proprietors using the same mark in different localities within the UK or upon different goods. In extreme cases, this could result in the mark being vulnerable to revocation for being misleading.11 A conflict might also arise where a mark is assigned without goodwill, and the assignor continues to conduct the business to which the goodwill was attached. It is not particularly satisfactory that such adverse effects of a partial assignment or a series of such assignments are controlled only in this indirect way, rather than by s 24 itself.12

5

Scandecor Developments AB v Scandecor Marketing AB [2001] CMLR 30, [2002] FSR 7. s 23(1). 7 s 23(3). 8 s 46(1)(d) and 5.38 et seq. 9 s 23(4). 10 s 24(1). 11 Such a situation would not appear to be covered by the Scandecor decision as to bare licences, see 6.14, although there are certainly some parallels. See 5.38 –5.39. 12 Contrast s 22(4)–(6). 6

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Registration of Assignments Although there are few restrictions governing assignments, there are risks in 6.06 assigning marks without any restrictions or controls. Elizabeth Emanuel assigned a registered trade mark which included her name to a company. The registration was then assigned again. Each assignment included an assignment of the goodwill in the mark. Elizabeth Emanuel later objected that the mark and a fresh application for the same mark were deceptive.13 The Appointed Person referred a number of questions to the Court of Justice of the European Court (CJEU), which held that a trade mark corresponding to the name of the designer and first manufacturer of the goods bearing that mark may not be refused registration on the ground that it would deceive the public, in particular where the goodwill associated with that trade mark, previously registered in a different graphic form, has been assigned together with the business making the goods to which the mark relates.14 Elizabeth Emanuel could not prevent the registration by the then owner of the previous registration and goodwill.

D FORMALITIES An assignment is not effective unless it is in writing and signed by or on behalf 6.07 of the assignor or his personal representative.15 If there is a binding agreement to assign the mark, then as between the proposed assignor and the proposed assignee, the position is that the proposed assignee would be entitled to call upon the proposed assignor to execute the assignment, and would be able to bring proceedings for specific performance of the agreement if the proposed assignor failed to complete the assignment.

E REGISTRATION OF ASSIGNMENTS An assignment of a trade mark, both registered and applied for, is a ‘registrable 6.08 transaction’ within the meaning of s 25 of the 1994 Act. Prompt registration of assignments is desirable since until an application has been made to register the assignment, it is ineffective as against a person acquiring ‘a conflicting interest’ in the mark in ignorance of the assignment.16 Failure to register does not, however, affect the transaction as between the assignee and assignor. Pursuant to s 25(4) a proprietor who fails to register his assignment before the 6.09 mark is infringed will not recover his costs unless the application to register it is 13

Under s 3(3)(b). See 2.121. Elizabeth Emanuel v Continental Shelf 128 Ltd, Case C-259/04, [2006] ECR 1-3089, [2006] ETMR 56. See 5.39. 15 s 24(3). 16 s 25(3). 14

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Assignment and Licensing of Marks made within six months of the assignment, or the court is satisfied that it was not practical for such an application to be made.17 The wording of s 25(4) implies that an assignee who has the benefit of an assignment in writing complying with s 24(3) but who has not registered the assignment at the Trade Marks Registry may bring proceedings for infringement despite the lack of registration of the assignment, as otherwise this provision would not be necessary.

F ASSIGNMENT OF UNREGISTERED MARKS 6.10 Section 24(6) provides that nothing in the 1994 Act is to affect the assignment or

other transmission of an unregistered trade mark as part of the goodwill of a business. Thus, there is no statutory control over the assignment of unregistered trade marks and the common law rule still applies that such a mark may only be assigned together with the goodwill of the business in relation to which it had been used. This makes sense, as it is difficult to understand how an unregistered mark could be severed in any realistic way from the goodwill annexed to it.18

G LICENSING OF TRADE MARKS 6.11 Licensing in general is dealt with by ss 28–31 of the 1994 Act. Save that a licence

is not effective unless it is in writing signed by the licensor,19 no restrictions are imposed on the licensing of registered trade marks and the proprietor is left to control and manage the licensing of his mark. The notion of central control of a mark by its proprietor was said to be ‘a golden thread’ running through pre-1994 UK law 20 and relied upon the proprietor’s desire to ensure that the mark remains capable of fulfilling its function as an indicator of origin. The premise is that proprietors will be unlikely to deal with their marks in such a way as to render them confusing or liable to mislead the public through an uncontrolled series of licences. This view was confirmed by the House of Lords in Scandecor. 6.12 Section 28(1) of the 1994 Act reflects the wording of Article 8(1) of the Directive.

It provides that a trade mark may be licensed for some or all of the goods or services for which it is registered and for the whole or for part of the territory of the Member State concerned, on an exclusive or non-exclusive basis. As the CJEU pointed out,

17 Th is provision was introduced by the Intellectual Property (Enforcement) Regulations 2006, SI 2006/1028, Sch 2, para 17. 18 For a case relating to sale of goodwill of the business of one company of a group, but no sale of the trade mark used by the rest of the group, see Dawnay, Day & Co Ltd and anor v Cantor Fitzgerald International [2000] RPC 669. 19 s 28(2). 20 See Scandecor (n 5) at [10], [41].

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Licensing of Trade Marks licensing of trade marks is not confined to granting permission to exploit commercially goods or services under that mark but extends to all commercial use in a manner consistent with the mark’s various functions, including the so-called ‘communication, investment and advertising’ functions as well the origin function.21 Article 8(2) provides that the proprietor may bring infringement proceedings 6.13 against his licensee where the licensee contravenes any provision in his licence relating to a number of factors, including the duration, territory, and quality of the goods made or services provided. The CJEU has held that as the essential function of a mark is to guarantee the identity of origin of goods or services, a proprietor could invoke its trade mark rights under Article 8(2) of the Directive against a licensee who had breached a contractual term preventing the sale of the goods to discount stores, provided it could be established that the breach damaged the ‘allure’ and ‘prestigious image’ which bestowed an aura of luxury on the goods.22 The 1994 Act does not make any specific provision reflecting Article 8(2). Perhaps it was considered that if a licensee’s use of a mark was outside the scope of his licence agreement, the proprietor would be able to rely on his trade mark rights anyway. Regulation (EC) 207/2009 (the CTMR), however, does contain an equivalent provision to Article 8(2) of the Directive.23 Following the Scandecor decision, it would seem that a licence may be granted for 6.14 a trade mark under which the proprietor retains no control over the manner in which the mark is used by the licensee, giving the licensee what is known as ‘a bare licence’. Not only is such a licence valid, but it will not necessarily affect the validity of the mark. On the contrary, Lord Nicholls in Scandecor considered that to place obligations upon the proprietor as to how he licensed use of his mark was to turn the clock back and ignore the liberty to license granted by the 1994 Act. However, in the vast majority of cases, it will be of real importance to a trade mark 6.15 proprietor to ensure that a licensee does not damage any goodwill attaching to the mark (indeed, this self-interest is what Lord Nicholls relied upon in Scandecor). This depends upon licences being drafted sufficiently carefully to ensure that the trade mark proprietor is able to control the use made of the mark by the licensee and to put a stop to any unlicensed or inappropriate use within a fairly short period. There is no express implementation of Article 8(2) or Article 10(3) of the Directive

21

Pie Optiek SPRL v Bureau Gevers SA, Case C- 376/11, [2012] WLR (D) 219, [2012] ETMR 46 at [42]–[47] although the Court determined that registering domain names for another party did not constitute a trade mark licence at all. 22 See Copad SA v Christian Dior Couture SA , Case C-59/09, [2009] FSR 22, [2009] ETMR 40. A curious feature of this decision is that the CJEU held at paras 25 and 26 that a term preventing the sale of goods in discount shops was, in effect, a term relating to the quality of goods because ‘the aura of luxury emanating from [the luxury goods] is essential in that it enables consumers to distinguish them from similar goods. Therefore, an impairment to that aura of luxury is likely to affect the actual quality of those goods.’ 23 See Art 22(2).

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Assignment and Licensing of Marks in the 1994 Act, specifically to make any use of the mark by a licensee in breach of the licence an infringement of the mark (rather than a breach of contract). 6.16 Under s 28(2) it is provided that a licence will not be effective unless it is in writ-

ing signed by or on behalf of the grantor. However, as there will be no infringement of a mark if use is made of it with the consent of the proprietor, 24 there is still scope for oral or informal licences of registered trade marks. Such licences would not be registrable transactions under the 1994 Act though and the informal licensee cannot rely upon the provisions of the 1994 Act conferring rights upon licensees. 6.17 The grant of a licence, whether oral or in writing, does not confer any right of prop-

erty on the licensee. All that he obtains is a permission to use the mark on the terms that have been agreed, whether or not the licence is an exclusive one.25 6.18 Section 28(3) provides that a licence is binding on a successor to the interest of the

licensor, unless the licence provides otherwise. There is no equivalent provision for the licensee. Normally, the position is that nothing in a trade mark licence would prevent the assignment of the licensor’s interest, but it is common for a trade mark licence to provide that the licensee may not assign his interest under the licence, or at least that he may not do so without the prior consent in writing of the licensor. Section 28(4) provides that a licensee may be given permission in the licence to grant sublicences. Obviously, it is a matter for the parties to agree whether or not any sublicensing would have to be subject to the prior consent of the trade mark proprietor. Section 28(4) provides that references in the 1994 Act to a licence or licensee include references to a sublicence or sublicensee.

H REGISTRATION OF LICENCES 6.19 Trade mark licences are ‘registrable transactions’ within the meaning of s 25, and

subsections (3) and (4) of that section apply to licences as they do to assignments (see discussion at 6.08 – 6.09). Regrettably, registration of trade mark licences is often overlooked. Failure to register a trade mark licence results in adverse consequences. Notably, until the application has been made to register the licence the person claiming to be a licensee does not obtain the rights conferred by ss 30 or 31,26 which grant rights upon licensees to take infringement proceedings. Similarly, s 25(4) excludes a licensee from recovering his costs of an infringement action if he fails to register the licence before the mark is infringed, unless the application to

24

See the wording of s 9(1). See Northern & Shell plc v Condé Nast [1995] RPC 117; and Leofelis SA v Lonsdale Sports Ltd [2008] EWCA Civ 640, [2008] ETMR 63 at [14]. 26 s 25(3)(b). 25

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Licensees’ Rights of Action register the licence is made within six months of the grant, or the court is satisfied that it was not practical for such an application to be made.

I LICENSEES’ RIGHTS OF ACTION Section 30 makes general provisions as to the rights of licensees in the case of 6.20 infringement. Its provisions apply to both exclusive and non-exclusive licences, but under s 30(1), the section does not apply to exclusive licences where or to the extent that an exclusive licensee has the right to bring proceedings in his own name by virtue of s 31. Section 30(7) might seem to conflict with that part of s 30(1). However, this is not the case, if it is right to say that subsection (7) means that references to ‘the proprietor’ in the earlier subsections of s 30 may, where appropriate, be references to an exclusive licensee, and references to a licensee are to the sublicensee of an exclusive licensee. The rights granted to a licensee by s 30(2)–(5) may be excluded by the terms of the 6.21 licence. If they are not so excluded, then by subsection (2), a licensee is entitled to call upon the proprietor of the registered trade mark to take infringement proceedings if he becomes aware of any infringement of the mark which affects the licensee’s interests. If the proprietor either expressly refuses to bring infringement proceedings or fails to do so within two months after being asked to do so by the licensee, then by s 30(3), the licensee may bring the proceedings in his own name as if he were the proprietor.27 Neither of the two sections specifies how the licensee is to ‘call on’ the proprietor to take this action, nor what constitutes a refusal to do so. Presumably, the licensee should make this demand to the proprietor in writing and ask for a response in writing. A proprietor who does not want his licensee to bring proceedings in his name should expressly exclude the rights set out in s 30 in the licence. It is important to note that there is no exception to s 30(3) in relation to an applica- 6.22 tion for an interim remedy.28 Generally, the proprietor or licensee of a registered trade mark will want (and need) to bring an application for interim relief as soon as possible after learning of the infringing use of the trade mark. Speed can be crucial to the success of such an application,29 and the absence of a provision allowing interim relief to be sought by a licensee prior either to the proprietor’s refusal to take infringement proceedings or the expiry of the two-month period from the date when he was asked to take proceedings is likely to cause delay which may undermine an application for an interim injunction. Two months of inactivity on

27

In Quiksilver Pty v Charles Robertson (Developments) Ltd [2005] FSR 8, it was held that there was little difference in substance between ss 30(3) and 31(1). As to s 31(1), see 6.27. 28 As to which see 9.61–9.75. 29 See 9.42 –9.45 and 9.71–9.73.

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Assignment and Licensing of Marks the part of a disinterested proprietor may cause serious problems to a licensee. This inadequacy in the provision would obviously not be problematic if a prompt request by the licensee to the proprietor for action were met with a prompt response, so a licensee should act as quickly as he can in making a request to his proprietor and seek a prompt response. 6.23 Additionally, provision could be made in the licence agreement itself as to the man-

ner in which the obligations should be exercised, setting out a rapid timetable. This would not guarantee compliance, but it might help to concentrate a licensor’s mind if delay on his part would amount to a breach of contract. Alternatively, a licensee might stipulate that where the proprietor refuses or fails to initiate infringement proceedings within a specified period after notice from the licensee, the latter would be irrevocably appointed as the proprietor’s attorney for the purpose of bringing such proceedings in his name. 6.24 Where a licensee takes his own infringement proceedings, he cannot proceed

to trial without having joined the proprietor either as his co-claimant or as a defendant.30 He is, however, entitled to seek interim relief before having joined the proprietor. It must be anticipated that a proprietor who takes an active interest in his trade mark will wish to be joined as co-claimant so as to have some control of the proceedings. A proprietor who is not interested may be added, whether or not he consents, as a defendant, but if he is added as a defendant, he will not be made liable for any costs in the action unless he takes an active part in the proceedings.31 6.25 Section 30(6) provides that where the proprietor of a mark brings infringement

proceedings, any loss suffered or likely to be suffered by his licensee will be taken into account and the court may give directions, in effect, that the proprietor is to hold the proceeds of any award of damages or other pecuniary remedy in whole or in part on behalf of his licensee. As it is anticipated that the action will be brought by the proprietor, it would seem that this provision would apply even where no licensee was a party to the proceedings. There is no reciprocal provision that where the infringement proceedings are brought by the licensee, losses of the proprietor are to be taken into account; this is yet another matter which might be dealt with in a well-drafted licence.

J EXCLUSIVE LICENCES 6.26 An exclusive licence is defined as one which authorises the licensee to use a reg-

istered trade mark in the manner authorised by the licence to the exclusion of all

30 31

s 30(4). See also CPR 19.3. By s 30(5).

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Exclusive Licences other persons, including his licensor.32 Such licences can be partial or limited, like any other licence. It is important that a proprietor takes care when granting such licences that he retains sufficient control over the way in which the licensee will use the mark to ensure that the mark will not be open to challenge. An exclusive licensee has the same rights against a successor in title to his licensor who is bound by the licence as he has against the original licensor.33 The exclusive licence may provide ‘that the licensee shall have to such extent as 6.27 may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment’.34 As a result, where such provision has been made, the licensee will be entitled to bring infringement proceedings against any person other than the proprietor in his own name. Those rights and remedies will be concurrent with those of the proprietor.35 By providing that the exclusive licensee has rights against everybody except the proprietor and has rights concurrent with the proprietor, s 31 actually makes it plain that the rights granted to the exclusive licensee are not the same as if he had been granted an assignment of the rights. A proprietor always has a right to bring an action for infringement of his registered 6.28 trade mark and an exclusive licensee may have that right. Where the infringement concerns matters in which the proprietor and the exclusive licensee have concurrent rights of action, whichever of them brings the proceedings must join the other either as a co-claimant or as a defendant.36 So, for example, if the exclusive licence covered some of the goods for which the mark was registered but not others, but all of the goods were similar goods to those upon which the infringing mark was being used, it would seem that the proprietor and the exclusive licensee would each have the right to bring infringement proceedings. In those circumstances, they would either need to agree to be co-claimants, or he who issued proceedings first would have to join the other as defendant. The proviso to s 31(4) ensures that either of them could seek interim relief without needing to join the other and there is no requirement that the licensee call upon the proprietor to take action before issuing his own infringement proceedings. Conceivably, where their rights of action are concurrent, this could lead to confusion if the proprietor and the exclusive licensee do not cooperate. Subsections (5) and (6) of s 31 deal with the situation where both proprietor and 6.29 exclusive licensee are parties to the proceedings. Where one of them has been joined as a defendant by the other he is not to be made liable for any costs in the action unless he takes part in the action, as is provided in the cases of actions under 32 33 34 35 36

s 29(1). See s 29(2). s 31(1). s 31(2). See s 31(4).

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Assignment and Licensing of Marks s 30. Where the court is to assess the damages for any proceedings in which there are concurrent rights of action, the court must take into account the terms of the licence, and any pecuniary remedy awarded or available to either of the parties in respect of the infringement, which presumably means any order for an inquiry as to damages or an account of profits which has not yet resulted in a payment. It is specifically provided that where one party has been granted an award of damages, no account of profits shall be directed, and vice versa.37 If an account of profits is directed, the profits must be apportioned appropriately, subject to any agreement between the parties. The last paragraph of subsection (6) provides that it is to apply whether or not the proprietor and the licensee are both parties to the action (which will of course be the norm in the light of subsection (4), but need not be the case if the court dispenses with the need to join both parties pursuant to that section). If they are not both parties, the court may give appropriate directions as under s 30(6) regarding the sharing of any proceeds of a pecuniary remedy. 6.30 Section 31(7) provides that where the proprietor of a mark applies for an order for

delivery up under s 16 of the 1994 Act and an exclusive licensee has a concurrent right of action in respect of the relevant infringement, the proprietor must notify the exclusive licensee of the proposed delivery up and the court may make any order it considers appropriate, having regard to the terms of the licence. 6.31 Section 31(8) provides specifically that all of subsections (4)–(7) may be varied by

the agreement of the parties. For example, it is not uncommon for licences to make provision as to the sharing of any damages recovered in infringement proceedings. 6.32 Section 31(3) provides that a defendant may avail himself of any defence which

would have been available to him if the action had been brought by the proprietor of the mark, rather than by the exclusive licensee, and this covers cases where the defendant has been granted a licence directly by the proprietor, or has the consent of the proprietor to make the use of the mark about which complaint is made.

K COMBINATION LICENCES OF TRADE MARKS AND OTHER RIGHTS 6.33 There are many fields in which it is common to grant combination licences, that

is to say licences in which the licensee is granted a right to make use of a number of different intellectual property rights belonging to the licensor. Such combination licences can occur in many different situations. For example, it is common to have combined patent, know-how, copyright, and trade mark licences, where an undertaking is licensed to manufacture products made according to a patent. The licensee might also need a licence to use the patentee’s know-how, and a licence to 37

See 9.83.

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Basic Provisions of a Licence Agreement use his trade marks (and possibly copyright) so as to mark and label the licensed products for the market. A multiplicity of intellectual property rights may also need to be licensed where 6.34 a franchise is granted. Franchises may include a patent licence, but perhaps more often consist of a combination of licences of know-how, copyright, and trade mark rights (sometimes including unregistered marks and signs) dealing with the manner in which the business is to be run, the products to be stocked, the design of the outlets, and the marks or other distinguishing indicia to be used in the outlets and upon the goods. Again, where merchandising rights are granted, especially in relation to popular 6.35 fictional characters, cartoon characters, etc, a copyright licence will probably be needed in addition to a trade mark licence. Where such combination licences are granted, it is necessary to take into account 6.36 the provisions of all relevant statutes, as well as to take care to comply with all relevant EU rules.38

L BASIC PROVISIONS OF A LICENCE AGREEMENT In this section, some broad guidance is given as to the essential terms to include in 6.37 a trade mark licence. It is not intended that this summary should be taken as conclusive or exhaustive in any way, especially since the scope of necessary provisions may vary enormously depending upon the type of arrangement envisaged. Parties This is a matter which, in commercial reality, is often easily confused, especially 6.38 where negotiations take place with an individual, who might be acting in his personal capacity or as a partner or director. It is particularly important to know, where a registered mark is concerned, that the purported licensor is entitled to grant the intended licence, and whether the licensor is a trade mark proprietor or a licensee (exclusive or not) who has power to grant sublicences.39 If an intervening licence is involved, the proposed sublicensee needs to know that his proposed licence is permitted, and that any necessary consent to the sublicensing has been or will be obtained. Warranties are usually given by the licensor as to his title to grant the licence, as it is not usual for a licensee to conduct ‘due diligence’ investigations of his licensor’s title where only a licence (as opposed to an assignment) is being granted.

38 39

See further 6.51– 6.77. See eg VLM Holdings Ltd v Ravensworth Digital Services Ltd , [2013] EWHC 228 (Ch).

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Assignment and Licensing of Marks 6.39 It is also necessary to make provision about possible changes of party. It is usual for

the licensor to be completely free to assign his interest in the mark, but a licensee may well be restricted as to his rights to assign or sublicense. The extent of his rights to do so should be clearly spelled out, together with any mechanism required for approval by the licensor. The rights to be licensed 6.40 Where the licence is for a single registered trade mark, the definition of the

rights which are the subject of the agreement will be a simple matter. However, where there is an unregistered mark, or a combination of a registered mark and certain unregistered elements of get-up, or a combination of trade mark and other intellectual property rights, then the definition of the rights granted may require careful thought. Both parties may wish to provide for the licensee to use any variations which may be made to the mark or its get-up over the term of the agreement or any improvements in associated know-how etc. Where the licence involves the use of know-how or confidential information, it is common for restrictions to be imposed on their use by the licensee both during and after the term of the licence, to the extent that this is permissible.40 The licensor may well also require the licensee to allow him the benefit of improvements etc made by the licensee. In particular, the licensor will wish to provide that any goodwill which accrues to the mark during the licence period will vest in him, rather than in the licensee. 6.41 Commonly, the licensor will wish to control carefully the manner in which the

licensee uses the mark, and may require to see and approve samples of the goods, packaging, advertising, etc prior to use. Restrictions may also be imposed on the types of retailer to which the goods may be sold.41 There may well be controls as to what use the licensee can make of his own name or mark alongside the licensed mark. 6.42 It is also vital to make it plain whether the licence is exclusive or non-exclusive and

to define the rights of the parties in the case of infringements by third parties. Territory 6.43 The licence should specify whether the licensee is to be able to use the mark in

a specified territory only, or anywhere he pleases. If the licensor does attempt to impose territorial exclusivity upon either himself or any particular licensee, any restrictions imposed may well clash with national or EU rules on exhaustion of rights. In particular, where the exclusivity imposes import or export bans etc, 40

See comments as to relevant EU rules at 6.51– 6.77. The consequences of breaching such a term include being sued for trade mark infringement by the proprietor. See 6.13. 41

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Basic Provisions of a Licence Agreement such terms may fall within the EU competition rules, with the effects described at 6.51– 6.77. Goods or services It is necessary to define with some care the range of goods or services upon which 6.44 the mark and any associated rights are to be used. The licensor will generally be well advised to impose strict quality controls upon the licensee, and should have the right to see samples of goods, both at the outset and at regular (or irregular) intervals during the term. The licensor may want access to the licensee’s premises to inspect goods, but should in any event make plain the result of any breach of quality conditions. The licensor may also wish to control any subcontracting of manufacture by the licensee. Royalties What royalties are to be paid, and when, is clearly a matter for negotiation. There 6.45 may be a non-refundable lump sum payable on account of royalties, and/or a minimum royalty and/or sliding scale of royalties depending upon turnover. The licensee should be required to keep adequate records of relevant transactions and submit regular accounts, and should allow inspection of his books by the licensor or his agents. Term The initial term of the agreement will be easily settled, and should be a fixed period 6.46 rather than open-ended, save in unusual cases. It is not uncommon for licences to be terminable upon giving a fixed period of notice. Provision will then need to be made for the extension or renewal of the term and it must be decided whether notice will be needed, and if so how long before the end of the initial term. If renewal is to be allowed, it must also be specified whether the renewed licence will contain the same term as to renewal as did the initial licence, so as to allow multiple or indefinite renewals. If renewal is to depend upon or open the way to alterations in royalty tariffs, then a proper mechanism for such change must be included (rather as in a good rent review clause). It is equally important to specify how the licence may be brought to an end. If it 6.47 is by simple expiry of the licence period, or by agreement, then it is usual to allow a post-termination sell-off period for legitimately marked stock. Such sales obviously need to be subject to proper controls and to the prior terms on accounting, royalties, etc. Licences also commonly provide for termination upon the licensee going into liq- 6.48 uidation etc and there need to be terms dealing with the consequences of such termination, especially in relation to unsold marked stock. 157

Assignment and Licensing of Marks 6.49 Termination for breach is an important issue. There need to be clear distinctions

between any breaches which will lead to automatic termination, and remediable breaches as to which there will be termination only if the licensee fails to remedy the breach on notice. The time and manner of the issue of notices needs to be specified, along with the consequences of failure to remedy any remediable breach. Where the breaches are fundamental and/or irremediable, then it must be decided whether the licensor is to have the right immediately to determine the licence, and, if so, whether he needs first to serve any notice upon the licensee. If the licence is determined in this way, what is to become of stock etc? Great care needs to be taken when terminating a licence agreement for breach or otherwise because it may well precipitate a claim for wrongful termination from the other party to the agreement. The remedy sought for wrongful termination is usually damages, including lost profits. The burden of proving the loss lies with the claimant and determining the loss typically involves detailed factual enquiries.42 Miscellaneous 6.50 If the parties to the licence are based in different countries, even within the EU,

it is sensible to provide for a forum for the resolution of disputes between them, whether in terms of an arbitration clause or an exclusive jurisdiction clause. The governing law of the agreement should also be specified.

M THE EFFECT OF EU LAW ON ASSIGNMENTS AND LICENCES Introduction 6.51 The territorial rights granted by national intellectual property laws, as well as their

assignment and licensing, clash with the major Treaty objectives of free movement of goods and services, freedom of competition, and unification into a single market. The interplay and application of the respective rules is complex. 6.52 These conflicts have been dealt with by application of the rules regarding the free

circulation of goods (Articles 34 and 36 of the Treaty on the Functioning of the European Union (TFEU))43 and anti-competitive behaviour (Articles 101 and 102 TFEU), as well as by the harmonisation effected by the Directive and the Regulation.

42 For a recent example see Double G Communications Ltd v News Group International Ltd [2011] EWHC 961 (QB). 43 Following the Lisbon Treaty coming into force on 1 December 2009, the name of the Treaty establishing the European Community was amended and some of the Article numbers were changed.

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The Eff ect of EU Law on Assignments and Licences Article 34 TFEU prohibits ‘quantitative restrictions on imports and all measures 6.53 having equivalent effect’. This catches all forms of national legislation, including national intellectual property laws. However, Article 36 then provides that this should not ‘preclude prohibitions or restrictions on imports, exports or goods in transit justified on the grounds of . . . the protection of industrial and commercial property. Such prohibitions or restrictions shall not, however, constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States.’ In applying Articles 34 to 36, the CJEU has sanctioned the exercise of trade mark 6.54 rights in cases where it amounts to no more than the proper exercise of such rights, necessary to protect their essential function, but has qualified this by a requirement that the exercise of those rights should not amount to a disguised restriction or arbitrary discrimination on trade between Member States. Article 101 TFEU is aimed at preventing anti-competitive agreements or con- 6.55 certed practices. It prohibits agreements or concerted practices which may affect trade between Member States and which have as their object or effect the prevention, restriction, or distortion of competition within the EU. Roughly speaking, an agreement that has the effect of partitioning the market within the EU or restricting competition is likely to offend Article 101. Agreements or concerted practices which are prohibited by Article 101(1) are automatically void. Article 101(3) provides that certain agreements or concerted practices which would fall within Article 101(1) but which contribute to improving the production or distribution of goods or which promote technical or economic progress may be exempted from the effects of Article 101(2). An exemption may be sought individually, or an agreement may be designed to come within the terms of one of a number of ‘block exemption’ regulations relating to a variety of kinds of agreements, some of which apply to trade mark licences. See 6.70 et seq. Article 102 prohibits any abuse by one or more undertakings of a dominant pos- 6.56 ition within the common market in so far as it may affect trade between Member States. In this chapter we cannot set out the long and complicated history of the CJEU’s 6.57 numerous decisions on intellectual property matters. Such an analysis would be beyond the bounds of this book.44 However, the main points to be considered in relation to assignments, on the one hand, and licences, on the other, are considered here.

44

The reader is recommended to Tritton, Intellectual Property in Europe (Sweet & Maxwell, 3rd edn, 2007) and Bellamy and Child, Common Market Law of Competition (Oxford University Press, 7th edn, 2013) for a comprehensive analysis of competition law, including the Art 101/102 and Art 34/36 intellectual property decisions, and the various block exemptions.

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Assignment and Licensing of Marks Assignments 6.58 Some of the early CJEU decisions on the exercise of trade mark rights were of

particular concern in relation to the assignment of trade marks. See, by way of historical interest only, Sirena Srl v Eda Srl 45 and HAG I,46 neither of which survived the decisions in HAG II 47 and Ideal Standard.48 The result of the latter cases is that where an assignment is a commercial, arm’s length transaction, and not merely a disguised attempt at market partitioning, the division of the ownership of the rights will be given effect under EU law as it will under any relevant national rules. So an assignment of a mark for part of the market is unlikely to offend Article 101 in itself and a more detailed factual inquiry is required. The CJEU explained in Ideal Standard that before an assignment can be treated as offending Article 101 it is necessary to examine the context, the commitments underlying the assignment, the intention of the parties, and the consideration for the assignment. An assignee will be exposed to parallel imports from other Member States49 and contractual restrictions seeking to partition the Member States are likely to offend Article 101(1). 6.59 By way of example, the original manufacturer of pharmaceutical products under

the mark KALTEN split the trade mark registrations by selling the Spanish trade mark registration to a Spanish company and the UK trade mark registration to a UK company. The purchasers were unrelated. The Spanish company then exported and marketed its products lawfully made in Spain and displaying the KALTEN mark to the UK, with the result that pharmaceutical products manufactured by two different companies in two different Member States were being sold in one Member State under the same trade mark. The UK purchaser sought summary judgment for trade mark infringement in relation to imports of genuine goods from the Spanish proprietor. The Court of Appeal held that it was necessary to investigate at a trial whether the assignments were legitimate so that the UK company could enforce its rights.50 Licences 6.60 The exhaustion theory developed by the CJEU and reflected in s 12 of the 1994

Act limits the trade mark proprietor’s rights. In essence, the proprietor has only the right to control the first marketing of products under the mark and to bring 45

Case 40/70, [1971] ECR 69, [1971] CMLR 260. Van Zuylen Freres v HAG (HAG I), Case 192/70, [1974] ECR 731, [1974] 2 CMLR 127. 47 SA CNL-Sucal NV v HAG GF AG (HAG II), Case C-10/89, [1990] ECR I-3711, [1990] 3 CMLR 571. 48 IHT Internationale Heiztechnik GmbH v Ideal-Standard GmbH, Case C-9/93, [1994] ECR I-2789, [1994] 3 CMLR 857. 49 See 6.60. 50 Doncaster Pharmaceuticals Group Ltd and ors v Th e Bolton Pharmaceutical Co 100 Ltd [2007] FSR 3. 46

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The Eff ect of EU Law on Assignments and Licences infringement actions against unconnected third parties. Once goods have been put on to the market anywhere in the European Economic Area (EEA) with the proprietor’s consent, his exclusive right to sell those goods under his mark is lost in all the other Member States. In particular, this prevents a trade mark proprietor from objecting to parallel (or ‘grey’) imports of products bearing the mark imported from other parts of the EEA. This rule clearly has direct application to trade mark licences; where a licence has 6.61 been granted permitting first marketing by the licensee, this amounts to the necessary consent for the exhaustion rule to apply. The consent can be limited to first marketing in only one Member State, but once marketed the licensor cannot prevent subsequent circulation of the goods throughout the EEA. Consent can be limited, in certain circumstances, and especially where the initial sale took place outside the EEA. See the discussion at 7.116 et seq. Article 101 Article 101 TFEU applies to trade mark licences. If a party is affected by a breach 6.62 of Article 101 (or Article 102), he can sue in the national courts, seeking an injunction restraining the breach, an award of damages or a declaration that the clause or agreement is void.51 In order for a complaint to be upheld there must, first, be an agreement or a concerted practice between undertakings or one or more than one association of undertakings. This means that there must be a degree of independence of the parties to the agreement or concerted practice. Secondly, of course, there must be an agreement or concerted practice, but in the case of trade mark licences there will, by definition, be an agreement in place. A more important qualification is that the agreement must have either as its object or effect the prevention, restriction, or distortion of competition within the EU. This condition, as may be seen later, is sometimes satisfied in the case of a trade mark licence. Next, the agreement must be such as to affect trade between Member States. This essentially means that it must be possible to foresee that the effect of the agreement may be to influence, directly or indirectly, the pattern of trade between Member States.52 This may be the case even if the agreement relates only to one Member State if, for example, there are provisions which might prevent the free flow of trade marked goods from or into that Member State. The question will not necessarily be answered in the negative by the fact that both parties to the agreement are within the same Member State or that all the performance of the agreement will take place

51 The Competition Act 1998 was amended to take account of Regulation (EC) 1/2003 (the Modernisation Regulation) which sets out the procedure for enforcement of Arts 101 and 102. The CJEU explained in Courage Ltd v Crehan, Case C-453/99, [2001] ECR I-6297, [2001] 5 CMLR 28, [2002] QB 507, [2001] 3 WLR 1646 that national courts need to make available as a remedy damages payable by the party in breach. 52 eg Javico International v Yves St Laurent Parfums SA , Case C-306/96, [1998] ECR I-1983, [1998] 5 CMLR 172, [1999] QB 477.

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Assignment and Licensing of Marks in one Member State, if the structure of competition may be affected or the flow of trade could be affected by the agreement.53 The likely effect on inter-state trade must be an appreciable one for Article 101 to apply.54 Without a real likelihood of past or future trade being affected, the licence will not breach Article 101. Lastly, even if the licence would otherwise fall under Article 101, it may be an exempt agreement under Article 101(3). 6.63 The CJEU has drawn a distinction between so called ‘open’ and ‘closed’ exclusive

licences. ‘Open’ licences, broadly speaking, do not offend Article 101 but ‘closed’ ones do. An ‘open’ licence is one where the licensor agrees not to grant other licences in the same territory and not to compete with the licensee. The licensee is also able to satisfy orders from other territories. A ‘closed’ licence imposes prohibitions on the licensee selling outside its demised territory so that the territory is partitioned from other Member States and orders from other member state territories cannot be fulfilled. 6.64 The application and enforcement of Articles 101 and 102 has been decentral-

ised. Both the European Commission and the Office of Fair Trading have the power to apply and enforce them in the UK. The Office of Fair Trading also has the power to apply and enforce the relevant prohibitions under Chapters I and II of the Competition Act 1998.55 Section 52 of the Competition Act 1998 obliges the Office of Fair Trading to prepare and publish general advice and information about its application and enforcement of Articles 101 and 102 TFEU and the Chapter I and Chapter II prohibitions contained in the Competition Act 1998. 6.65 There are a limited number of types of clause commonly found in trade mark

licences, which have been held not to fall within Article 101(1) at all, as not restricting competition. For instance, a term in a trade mark licence by virtue of which the licensor may exert quality control over the use of the mark by the licensee is not itself anti-competitive. The realistic view seems to be taken that as a licence need not be granted at all, it must be open to the licensor to limit the licence he grants to use of the mark upon goods or services which meet his quality control standards. However, to take this approach to its logical conclusion would be to permit the licensor to impose whatever restrictions he chose upon the licensee, and this will not be countenanced under Article 101(1). On the contrary, numerous sorts of clauses which were commonly imposed in trade mark licence agreements have been found to fall within Article 101(1). Any kind of clause which may have as its direct or indirect effect the prevention of parallel imports to or from the licensee’s 53

See Hugin Kassaregister AB v Commission, Case 22/78, [1979] ECR 1869, [1979] 3 CMLR 345. There are a number of Commission Notices giving guidance as to the relevant tests of market share, see Bellamy and Child (n 44). 55 The Ch I  prohibition is based on Art 101, the key difference between them being the geographical scope. 54

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The Eff ect of EU Law on Assignments and Licences territory is likely to fall within Article 101(1). This could take the form of an obligation on the licensee not to export or sell within his territory for resale outside it, or an obligation on the licensor not to export to or sell for export into the licensed territory.56 Other clauses which may breach the rule are obligations not to sell competing products or to obtain all supplies from the licensor. Clauses that forbid the licensee from challenging the validity of the right are likely to be in breach of Article 101(1). Th is is more likely to be the case where there is a series of ‘vertical’ distribution 6.66 agreements. Vertical agreements are agreements entered into by two or more parties operating at different levels in the production chain. Distribution agreements between manufacturers and wholesalers or retailers are typical examples of vertical agreements. Another example is franchise agreements.57 A franchisee is often obliged to obtain all his supplies directly from the franchisor, to sell them under conditions controlled by the licensor, to provide specialist staff and an after-sales service, and to conform to the franchisor’s ‘front of house’ policies and pricing. Such agreements may restrict competition and intra-brand competition. Exclusive distribution networks or franchise networks can also hamper third par- 6.67 ties from entering into competition in relation to the same or similar goods, as the number of distributors in a particular area may be limited or the qualifications for becoming a distributor may be onerous. Even discriminatory rebate policies may effectively prevent competition from non-selected distributors.58 The penalties for non-exempt infringement of Article 101(1) are heavy, as the agree- 6.68 ment may be deemed void and heavy fines may be imposed upon the parties to it by the Commission. On the other hand, agreements which represent a genuine resolution of a dispute as to trade mark use (for example where litigation is settled) will not breach Article 101(1).59 However, the Commission and the CJEU have been willing to accept that licens- 6.69 ing intellectual property rights may be a mode of fostering competition and economic growth, since often the proprietor will not be in a position directly to exploit his rights in all of the Member States.60 Furthermore, a vertical agreement, such as a franchise agreement, will generally not give rise to competition issues unless one or more of the parties to the agreement possesses market power in the

56

See one of the earliest decisions in this area Consten and Grundig, Joined Cases 56 and 58/64, [1966] ECR 299, [1966] CMLR 418; and Nungesser KG and Kurt Eisle v Commission, Case 258/78, [1982] ECR 2015, [1983] 1 CMLR 278. 57 See Pronuptia de Paris GmbH v Pronuptia de Paris Irmgard Schillgalis, C-161/84, [1986] ECR 353. 58 See eg Papiers Peints v Commission , Case C-73/74, [1975] ECR 1491, [1976] 1 CMLR 589. 59 eg Re Penney ’s trade mark [1978] 2 CMLR 100; and see 7.120. 60 See Nungesser (n 56).

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Assignment and Licensing of Marks relevant market. The use of licensees and distributors may be the only realistic way of ensuring that the particular goods or services will be given the widest possible distribution. Sometimes a distributor will only be prepared to take on the distributorship if he is given sufficient protection to ensure that he will reap the appropriate rewards. In other words, in such circumstances, a distributor is likely to want to have some chance of real exclusivity in his territory, and to be protected from competition. Exemptions 6.70 Article 101(3) exempts agreements which would otherwise infringe Article 101(1) from the effects of Article 101(2) where they contribute to the production or distribution of goods or economic progress. The Modernisation Regulation introduced a new scheme regulating the application of Article 101(3). Since 1 May 2004, an agreement that falls within the scope of Article 101(1) but which satisfies the conditions set out in Article 101(3) is not prohibited, and no prior decision to that effect is required. Such an agreement is valid and enforceable from the moment that the conditions in Article 101(3) are satisfied and for as long as that remains the case. 6.71 Parties contemplating entering into a trade mark licence may seek to bring the

terms of their licence agreement within one of the ‘block exemption’ regulations produced by the Commission itself, and which cover a number of different kinds of distribution or licence agreements. Block exemptions create a ‘safe harbour’ for large numbers of vertical agreements by providing them with an automatic exemption from Article 101(1) and the application of Chapter I prohibition.61 The Modernisation Regulation does not affect the existing block exemption regulations. 6.72 Block exemptions avoid placing on businesses the unnecessary burden of scrutinis-

ing a potentially large number of essentially benign agreements. 6.73 Block Exemption Regulation (EC) 330/2010 (the Block Exemption) is a block

exemption for vertical agreements. It applies to a wide variety of agreements such as those which include the assignment or licensing of trade marks. Falling within the Block Exemption provides the ‘safe harbour’ and avoids the need to consider whether the agreement restricts competition and whether, in that case, the benefits outweigh the anti-competitive effects of the agreement. To be capable of benefiting from the Block Exemption the following provisions must be fulfilled: a. The trade mark provisions must be part of a vertical agreement, that is an agreement with conditions under which the parties may purchase, sell, or resell goods or services.

61

Pursuant to the Competition Act 1998, s 10.

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The Eff ect of EU Law on Assignments and Licences b. The trade mark must be assigned to, or licensed for use by, the buyer. c. The trade mark provisions in the agreement must not constitute the primary object of the agreement. d. The trade mark provisions in the agreement must be directly related to the use, sale, or resale of the goods or services by the buyer or its customers. e. The trade mark provisions in the agreement must, in relation to the contract goods or services, not contain restrictions that have the same object or effect as vertical restraints which are not exempted under the Block Exemption.62 There are two key limits to this Block Exemption. The Block Exemption will not 6.74 apply if, first, the market share of the supplier (or buyer in the case of an exclusive supply obligation) exceeds 30 per cent of the relevant market and, secondly, the agreement contains one or more of the ‘hardcore’ restrictions listed in the Block Exemption, such as price-fixing.63 Article 102 Article 102 prevents abuses by an undertaking or group of undertakings having 6.75 a dominant position within the EU or a substantial part of it. A party is not in a dominant position simply by virtue of owning trade marks or other intellectual property rights. The agreement must involve an undertaking which enjoys a dominant position in a relevant product and geographic market. The refusal by a dominant undertaking to grant a licence to a third party is an example of an abuse of Article 102. For example, in Microsoft v Commission the GC considered Microsoft’s refusal to license the specifications required to ensure full interoperability with Microsoft Windows operating platform to manufacturers of rival group server operating systems to fall foul of Article 102.64 Trade mark rights may give the owner power in relation to those goods or services, but there are likely to be other goods and services in the relevant market. Abuses may consist of imposing unfair purchase or selling prices, or applying unfair trading conditions, limiting production or markets, etc. Article 102 has played a small role in the field of intellectual property licensing as, 6.76 on the whole, the CJEU takes the view that, save in exceptional circumstances, the exercise of intellectual property rights cannot amount to an abuse of a dominant position.65 The Modernisation Regulation regulates the application and enforcement of Article 102 as well as Article 101. However, there are no Block Exemptions for vertical agreements from Article 102 or the Chapter II prohibition. 62

See the Guidelines on Vertical Restraints [2010] SEC (2010) 411 final at para 31. Section V of the Guidelines on Vertical Restraints 2010. 64 Case T-201/04, [2007] ECR II-3601, [2007] 5 CMLR 11. Microsoft did not appeal to the CJEU. 65 See eg AB Volvo v Eric Veng (UK) Ltd, Case 238/87, [1988] ECR 6211, [1989] 4 CMLR 122; and Tierce Ladbroke v Commission, Case T-504/93, [1997] ECR II-923, [1997] 5 CMLR 309: possible breach where there is no possible equivalent to the IP right (copyright here). 63

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Assignment and Licensing of Marks 6.77 In Wilkinson Sword 66 the Commission found that an agreement for the sale and

redistribution of worldwide trade mark rights could not be exempted under Article 101(3) because the size of the purchaser’s resulting market share would give it a dominant position. In Magill 67 the European Court of Justice (ECJ) held that a refusal to grant a licence by a copyright owner could, in certain circumstances, amount to an abuse of a dominant position.

66

Warner-Lambert/Gillette and Eemland [1993] 5 CMLR 559. RTE and TTP v Commission, Joined Cases C-241/91P and C-242/91P, [1995] ECR I-743, [1995] 4 CMLR 718, [1995] FSR 530. 67

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7 INFR INGEMENT OF TR ADE M AR KS

A INTRODUCTION TO THE PROTECTION OF TRADE MARKS B TRADE MARK RIGHTS AND PASSING OFF C INFRINGEMENT UNDER THE 1994 ACT D THE CONDITIONS FOR INFRINGEMENT E SECTION 101: IDENTICAL MARK/IDENTICAL GOODS F SECTION 102: IDENTICAL OR SIMILAR MARKS/IDENTICAL OR SIMILAR GOODS G SECTION 103: DAMAGE TO A MARK WITH A REPUTATION H COMPARATIVE ADVERTISING I COMPARATIVE ADVERTISING UNDER SECTION 106 J THE CURRENT RULES ON COMPARATIVE ADVERTISING

7.01 7.03 7.10 7.14 7.44

7.46 7.51 7.58 7.59 7.62

DEFENCES TO INFRINGEMENT  7.72

K GENERAL 7.72 L CHALLENGE TO THE VALIDITY OF THE TRADE MARK 7.74 REGISTRATION 7.76 M SECTION 11 N CONSENT AND EXHAUSTION 7.101 OF RIGHTS O EXHAUSTION UNDER SECTION 7.107 121 OF THE 1994 ACT 7.116 P SECTION 122 7.118 Q EUROPEAN DEFENCES 7.120 R UK COMPETITION RULES 7.121 S ACQUIESCENCE T PROTECTION OF WELLKNOWN TRADE 7.124 MARKS: SECTION 56

PROTECTION OF NON-TRADE MARK RIGHTS 

7.129

U GEOGRAPHICAL INDICATIONS/ 7.129 DESIGNATIONS OF ORIGIN V COMPANY NAMES AND 7.131 DOMAIN NAMES

A INTRODUCTION TO THE PROTECTION OF TRADE MARKS As described in Chapter 1, a trade mark’s ability to fulfil its economic and legal 7.01 functions depends upon its distinctiveness, and its ability to identify the goods or services upon which it is used, to stimulate and maintain goodwill. The proprietor therefore needs to protect the mark from damage and generally that can only be done by maintaining the exclusivity of the mark.

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Infringement of Trade Marks 7.02 Whether or not a mark is registered, its proprietor may seek redress against acts of

his competitors which would lead the public to confuse their goods with his own. Registered marks may also be protected from acts likely to erode the value of the mark, in some circumstances without there being either direct competition or a likelihood of confusion as to origin. In this chapter the infringement of registered UK marks is discussed, but all of the same principles apply and points arise in relation to the infringement of CTMs; indeed, in many cases, a proprietor will own and sue for infringement of both a UK mark and a Community Trade Mark (CTM). Chapter 8 deals with actions for passing off which may be brought to protect both registered and unregistered marks. Remedies and procedure are described in Chapter 9.

B TRADE MARK RIGHTS AND PASSING OFF 7.03 An action for trade mark infringement may have substantial advantages over a

passing off action. In a case where the defendant is using a sign identical to the mark, on identical goods or services, all that the claimant may need to do is rely on his registration,1 whilst to bring the equivalent passing off action he would need to adduce substantial evidence, often at significant expense, of his goodwill in the mark and the likelihood of confusion and damage. However, the two actions can be highly complementary and a passing off action may in some circumstances succeed where an infringement action would fail.2 A registered mark does not need to have been used by its proprietor to be infringed by a third party,3 although if it has been registered for more than five years, it would be vulnerable to a counterclaim for revocation for non-use (see Chapter 5). In both infringement and passing off actions, the court may take into consideration the context in which the defendant’s sign is used,4 but rather broader allegations may often be made in a passing off action (as explained in Chapter 8), so it is often important to sue both for infringement of registered mark and for passing off. It is not necessary to show that the defendant had any intention to infringe save in some limited circumstances discussed at 7.51 et seq. In Specsavers, Kitchin LJ held that an intention to infringe also differs from a decision to ‘live dangerously’ or sail close to the wind. If a defendant deliberately sought to take the benefit of a claimant’s goodwill for himself the court will not ‘be astute to say that he cannot succeed in doing that which he is straining every nerve to do’: by contrast, taking a decision to ‘live dangerously’ shows that a defendant has appreciated the risk of confusion and tried to adopt a sign which 1

s 72 of the 1994 Act. See eg United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC 513. 3 Except, of course, for infringement under s 10(3) when the mark must have a reputation, established through use. 4 O2 Holdings Ltd v Hutchison 3G UK Ltd , Case C-533/06, [2008] ECR I-4231, [2008] RPC 33 at [64]–[67]; Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24, [2012] FSR 19, [2012] ETMR 17 at [87]. 2

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Trade Mark Rights and Passing Off is ‘a safe distance away’. Whether he has succeeded in doing so depends upon the facts of the case.5 Section 9(1) provides that the proprietor of a registered mark has ‘exclusive rights in 7.04 the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent’.6 Those exclusive rights are essentially negative, to stop others using a mark, and do not confer a right on the proprietor to use the mark regardless of the rights of third parties. Trade mark rights may have to coexist with and may be limited by rights belonging to third parties. It is always possible for a mark to be registered despite the existence of earlier rights belonging to a third party who, for whatever reason, did not take the opportunity to oppose the registration after publication of the trade mark application, or opposed it unsuccessfully.7 Where that is the case, it is clear that the rights conferred by the registration are not wholly exclusive. In Inter Lotto (UK) Ltd v Camelot Group plc 8 the claimant had started to use its 7.05 Hotpick mark only a month or two before Camelot applied to register Hot Picks. The claimant continued to use it and claimed it had built up a protectable goodwill before Camelot first used the mark. Inter Lotto’s opposition application was stayed pending resolution of its passing off claim. On a preliminary issue, the Court of Appeal held that Inter Lotto could rely in support of its passing off action on the goodwill it had built up after the date of Camelot’s application to register its mark. A proprietor may, therefore, be prevented from using his registered mark by a pass- 7.06 ing off action brought by someone whose rights have been established either before the filing date of the mark or even (exceptionally) after it. Where the third party has an earlier right, usually he will counterclaim for a declaration of invalidity of the trade mark as part of any proceedings. But even if the registration of the mark is not challenged, the trade mark proprietor may not get exclusivity of use.9 Trade mark infringement may take a variety of forms. The infringement provi- 7.07 sions of the Trade Marks Act 1994 (the 1994 Act) are ss 9 and 10. These are mainly based upon Article 5 of Directive (EC) 2008/95 (the Directive) (although there is no direct equivalent to s 9 in the Directive) and are to be construed in a manner consistent with the Directive.10 Reference is frequently made by the Courts to the appropriate Article of the Directive, rather than to the section of the 1994 Act. However, in this chapter, as before, the section numbers of the 1994 Act are used. 5

Specsavers (n 4) at [115]. s 2(2) provides that nothing in the 1994 Act affects the law relating to passing off. See also s 11 defences, 7.76 et seq. 7 See Special Eff ects Ltd v L’Oréal SA [2007] RPC 15, [2007] ETMR 51: no issue estoppel by unsuccessful opposition; also Ameen’s trade mark application, BL O/070/13 (AP), 14 Feb 2013, and see 5.52 et seq. 8 [2004] RPC 9 and see 8.92 . 9 See 7.77 and 9.50 and see eg discussion of honest concurrent use at 3.89–3.90. 10 Marleasing SA v La Comercial Internacional de Alimentacion SA , Case C-106/89, [1990] ECR I-4135, [1992] 1 CMLR 305. 6

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Infringement of Trade Marks The main equivalent provisions of the Act, the Directive, and Regulation (EC) 207/2009 (the CTMR) are as follows: 1994 Act

Directive 2008/95

CTMR 207/2009

s 10(1) s 10(2) s 10(3) s 10(4) s 11 (defences) s 12 (exhaustion)

Art 5(1)(a) Art 5(1)(b) Art 5(2) Art 5(3) Art 6 Art 7

Art 9(1)(a) Art 9(1)(b) Art 9(1)(c) Art 9(2) Art 12 Art 13

7.08 These different types of infringement mirror the provisions of s 5 of the 1994

Act as to relative grounds to refuse registration of a mark, which are discussed in Chapter 3. First, s 10(1) protects a mark against use of an identical sign upon goods or services which are identical to those (or some of those) for which the mark is registered, regardless of whether any confusion is caused. Then, by s 10(2), the registered mark is protected against use of an identical sign on similar goods/services, a similar sign on identical goods/services, or a similar sign on similar goods/services, so long as the similarity leads to a likelihood of confusion. By s 10(3), a mark with a reputation in the UK is offered a wider protection still, against use of an identical or similar sign in relation to any goods/services, as long as the use of that sign is made without due cause and causes a ‘link’ which takes unfair advantage of or to cause detriment to the distinctive character or repute of the mark. 7.09 Actions for trade libel or malicious falsehood (a form of defamation) may some-

times also arise out of trade mark disputes, in particular where the case involves comparative advertising.11 Actions of this nature fall outside the scope of this book.12 Broadly speaking, however, they protect against untrue, malicious statements being made in relation to goods or services, which damage the claimant’s trade reputation.

C INFRINGEMENT UNDER THE 1994 ACT 7.10 Section 9(1) provides that the proprietor of a registered trade mark has exclusive

rights in the trade mark, which are infringed by the use of the trade mark in the UK without his consent. The issue of consent is significant in relation to the concept of the exhaustion of rights, discussed at 7.107 et seq. Section 10 defines the acts of infringement.

11

See eg L’Oréal v Bellure at first instance, [2007] RPC 14; Kingspan Group v Rockwool Ltd , 21 February 2011, [2011] EWHC 250 (Ch); Fage UK Ltd v Chobani UK Ltd [2012] EWHC 3755, [2013] FSR 32. 12 See Clerk & Lindsell on Torts (Sweet & Maxwell, 20th edn, 2010).

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Infringement under the 1994 Act The exclusive rights which are granted in the mark take effect from the date of 7.11 fi ling of the application for registration (see ss 9(3) and 40(3)), but the proprietor is not entitled to bring infringement proceedings until the trade mark registration is complete. As explained, the various subsections of s 10 are closely related to those of 7.12 s 5—the relative grounds for refusal to register a trade mark, which are discussed at length in Chapter 3. There are a number of elements common to all types of infringement action. For an infringement action under s 10(1)—or, for a CTM, Article 9(1)(a)—to succeed, the Court of Justice of the European Court (CJEU) has held in a series of cases that four cumulative conditions must be satisfied.13 In Céline the four conditions relating to s 10(1) infringement were identified as: (1) Use must be in the course of trade. (2) It must be without the consent of the proprietor of the mark. (3) It must be in respect of goods or services which are identical to those for which the mark is registered. (4) It must affect or be liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services. The conditions were restated in fuller terms by Arnold J in L’Oréal v eBay.14 His 7.13 conditions (i), (ii), and (iii) apply equally to infringements under s 10(2) and (3), and condition (vi) also applies to s 10(2): (i) There must be use of a sign by a third party in the UK (or in the EU for a CTM). (ii) The use must be in the course of trade. (iii) It must be without the consent of the proprietor of the trade mark. (iv) It must be of a sign which is identical to the trade mark. (v) It must be in relation to goods or services which are identical to those for which the trade mark is registered. (vi) It must affect or be liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services.15

13

O2 Holdings (n 4); Céline Sarl v Céline SA, Case C-17/06, [2007] ECR I-7041, [2007] ETMR 80 at [16]. 14 See eg L’Oréal SA v eBay International AG [2009] RPC 21, [2009] ETMR 53 at [83] which (as it related to both UK marks and CTMs) omitted ‘in the UK’. Also see Arnold J’s analysis in Och-Ziff Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch), [2011] FSR 11, [2011] ETMR 1; and in Interflora [2013] EWHC 1291 (Ch), [2013] ETMR 35, 21 May 2013 at [177]–[179]. 15 In the case of infringement under s 10(3) (at least), condition (vi) may extend to the protection of other functions of the trade mark, see 7.51 et seq.

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Infringement of Trade Marks One of the more extraordinary aspects of trade mark law is the continuing uncertainty as to how to apply some of these apparently simple and fundamental propositions, in the light of a raft of decisions of great complexity in particular from the CJEU. It is doubtful, but remains to be seen, whether the proposed changes to the Directive and CTMR will rectify this problem.

D THE CONDITIONS FOR INFRINGEMENT Condition (i): ‘use’ of a mark 7.14 Section 10(4) describes the sorts of uses of a sign which may infringe. For CTMs

see Article 9(2) CTMR. In addition, s 103(2) defines use as including use otherwise than as a graphic representation. Oral use may therefore infringe.16 ‘Invisible’ uses, such as in metatags on web pages, may also infringe (see 7.19 et seq). 7.15 The uses set out in s 10(4) are probably the most common infringing acts, such

as fi xing the mark to the goods or their packaging; importing or exporting goods under the mark; stocking goods for sale bearing the mark, such as on swing tickets or labels; or using the mark on business papers or in advertising. Section 10(5) covers the printing of labels and packaging, which are intended to be but not yet used for goods.17 A printer will be liable for infringement if he knew or had reason to believe that the printing was not authorised by the trade mark proprietor. However, a bottler who merely fi lls cans which have already had an infringing mark applied to them by his customer does not ‘use’ the mark.18 7.16 Section 10(4)(b) may (but will not always, see 7.34) apply to use of the trade mark

as the name of a business and/or upon the fascia of a shop. The offending sign need not be attached to goods, as long as it is used ‘in relation to’ them, but this is a matter of perception on the part of the relevant public. See the discussion of condition (ii) at 7.28 et seq. 7.17 Purely incidental use of a mark may not amount to use of it under s 10(4). In Trebor

Bassett Ltd v The Football Association19 the England football team’s three-lion crest, which was registered as a trade mark, was shown in photographs of the team reproduced on collectable football cards given away with the claimant’s sweets. This was held not to be use of the mark within the meaning of s 10(4) in relation to the

16

Jean Christian Perfumes Ltd v Thakrar [2011] EWHC 1383 (Ch), [2011] FSR 34; BSkyB v Digital Satellite [2011] EWHC 2662 (Ch), [2012] FSR 14. 17 Beautimatic International Ltd v Mitchell International Pharmaceuticals [2000] FSR 267, 274. 18 Frisdranken Industrie Winters BV v Red Bull GmbH, Case C-119/10, [2012] ETMR 16, 15 December 2011. 19 [1997] FSR 211: this was a ‘threats’ action under s 21.

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The Conditions for Infringement cards. Indeed, the judge said that Trebor Bassett was not (in any real sense) using the mark at all. Under s 10(4)(c) it is an infringement to import or export goods under the sign. 7.18 Goods in transit are treated differently. In Eli Lilly 20 pharmaceuticals were imported into the UK, split into parcels in a warehouse here, addressed for re-export, and sent out by post, all under a Customs regime known as ‘inward processing relief’, which meant that the goods were kept out of the jurisdiction for tax and revenue purposes. It was held that the goods were not in the UK and so did not infringe here. Similarly, counterfeit Nokia phones in transit from Hong Kong to Colombia were inspected by Customs at Heathrow. The CJEU held21 that such goods cannot be treated as infringing a CTM unless there is evidence that they had been or would be sold, advertised for sale etc in the EU, possibly because the consignor was not identified. But there may be an infringement if goods in transit temporarily enter the jurisdiction.22 There will be infringement by use of the offending sign on business papers, such as invoices, even if the goods in relation to which the mark would be used are to be exported from the UK.23 The internet Recent case-law has broadly resolved earlier doubts as to when use of signs on the 7.19 internet is ‘use’ for the purposes of trade mark infringement. Those doubts arose in part because such use may be visible or invisible, but also because of the difficulty in deciding who was the user of such signs, especially when used as keywords.24 There are other difficulties arising from use on the internet, such as that of jurisdiction, which are discussed later on in this chapter. Use of a mark as part of a domain name will be ‘use’ as it is in the nature of advertis- 7.20 ing in relation to the relevant goods or services.25 In addition, where a defendant has registered a domain name which includes or consists of a registered mark in bad faith or with an intention of profiting from it (‘cybersquatting’), this is also use which may be or threaten to be an infringement.26 Metatags or metadata are 20

Eli Lilly and Co v 8PM Chemists Ltd [2008] EWCA Civ 24, [2008] FSR 11 following Class  International BV v Colgate Palmolive Co, Case C-405/03, [2005] ECR I-8735, [2006] 1 CMLR 14, [2006] Ch 154. 21 Koninklijke Philips Electronics NV v Lucheng Meijing Industrial Co Ltd , Joined Cases C-446/09 and 495/09, [2012] ETMR 13, 1 December 2011. See also Montex Holdings v Diesel SpA, Case C-281/05, [2006] ECR I-10881. See the discussion of the current Customs Regulations at 9.111 et seq. Note that changes for goods in transit are proposed in Art 10(3)(f) of the proposed Directive and Art 9(5) of the proposed CTMR. 22 Waterford Wedgwood plc v David Nagli Ltd [1998] FSR 92. 23 See Beautimatic (n 17) at p 280. 24 Early UK case-law included Reed Executive plc v Reed Business Information Ltd [2004] EWCA Civ 159, [2004] RPC 40, [2004] ETMR 56; and Wilson v Yahoo! Ltd [2008] ETMR 33. 25 Belgian Electronic Sorting Technology NV v Bert Peelaers, Visys NV, Case C-657/11, [2013] ETMR 45. 26 See eg BT v One in a Million [1999] FSR 1. Internet dispute resolution procedures may also apply, such as the ICANN or Nominet procedures. See 9.131.

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Infringement of Trade Marks words used in a website which are invisible to the user: they are used in the ‘Search Engine Optimisation’ of a site, so that they will be found by a search engine when a search is carried out using the metatag as the search term. Using a mark as a metatag may attract customers or potential customers to a competitor’s website and may infringe. Metatags used in this way are ‘advertisements’ for the purposes of the Comparative Advertising Directive, discussed at 7.62 et seq.27 7.21 The trickier question was whether there is ‘use’ of a mark bought, sold, or used

as a ‘keyword’ or ‘Adword’ for internet searches and, if so, who is liable for such use—the search engine or the advertiser, or both.28 A significant source of income for search engines such as Google lies in advertising revenues, including the sale of keywords (or ‘Adwords’) which can consist of generic search terms or registered marks. A high proportion of the huge sums now spent on digital advertising is spent on keywords. Where a keyword is used as a search term by someone using the search engine, it will generate not just a list of ‘hits’ consisting of websites in which that word appears (so-called ‘natural results’, based upon factors such as the prominence of the search term in the website) but also ‘sponsored links’. Advertisers pay to generate a sponsored advertisement containing a link to their site when the keyword is used, or, depending upon the type of ‘matching’ employed by Google, similar words or phrases. Advertisers may have to bid for popular keywords and will pay a fee on a ‘cost per click’ basis, each time that an internet user clicks on the sponsored link through to the advertiser’s site. 7.22 In 2008, Google started to allow its customers to use other people’s registered

marks as keywords, but use of the mark in the link could be blocked. Generally, therefore, the results generated by ‘use’ of the keyword as a search term simply presented a competing site and the wording of the ‘link’ did not include the registered mark. This led to Google being sued in several EU states for infringement. Similar proceedings were brought against eBay and against the purchasers of the keywords. A series of such cases was referred to the CJEU. 7.23 In Google France v LVMH, 29 the keywords sold by Google, which consisted of the

claimants’ marks, generated links to some sites selling counterfeit products as well as to legitimate competing sites. In its reference to the CJEU, the Cour de Cassation sought guidance as to which of the defendants (Google or the advertisers) might be liable for the infringements. In the Louis Vuitton action, its marks appeared in the advertisements displayed under the ‘sponsored links’ heading, but in the other

27

Belgian Electronic Sorting Technology NV v Bert Peelaers, Visys NV (n 25). The background to this was discussed in detail by Arnold J in L’Oréal SA v eBay (n 14) and Interflora, Inc v Marks & Spencer plc [2013] EWHC 1291 Ch, [2013] FSR 33, in which he explained how Google keywords work at [88]–[111]. Both cases were referred to the CJEU—see 7.24. 29 Google France v Louis Vuitton Malletier/Viaticum/CNRRH, Joined Cases C-236/08, C-237/08, and C-238/08, [2010] ECR I-2417, [2010] RPC 19, [2010] ETMR 30. 28

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The Conditions for Infringement two cases there was no such use of the trade mark in the link. The CJEU held that Google had not itself used the marks in the course of trade, by selling them to its clients as keywords. A service provider does not use the sign sold as a keyword, but simply provides the medium for the use made by the advertiser.30 However, it held that the advertisers (Google’s clients) had selected a sign identical to a competitor’s trade mark as a keyword to offer internet users their competing goods or services, which was a use of that sign by the advertiser, even if the mark did not appear in the sponsored link. Where the keyword was used to mislead, and to advertise counterfeit goods, that too was use of the sign by the advertiser. In L’Oréal SA v eBay 31 a number of individual sellers of allegedly infringing or 7.24 counterfeit products were sued, alongside eBay which was alleged to have infringed by purchasing the registered marks as keywords which triggered sponsored links on third party search engines including Google, MSN, and Yahoo. The search engines were not sued. The complaint related only to the appearance of the mark in the sponsored link in the search results. The CJEU held that the display of the sponsored links was ‘use’ of the signs by eBay, which was using them to advertise its own online marketplace, and could amount to an infringement under s 10(3) (Article 5(2) of the Directive). It also used the marks to promote its customers’ offers for sale of goods identical to those for which the marks are registered. Th is approach was confirmed in BergSpechte 32 and Interflora v Marks & Spencer.33 Jurisdiction: where does use take place? In the great majority of trade mark actions brought to protect UK marks, it will 7.25 be clear that there has been use of the defendant’s sign in the UK. For instance if the sign is used when selling the goods by retail or wholesale in the UK, or on infringing goods imported into the UK, there will be infringement here, regardless of where the defendant is located. Use of a sign in the UK for the purposes of advertising the defendant’s goods/services will also normally be an infringement as long as the advertisement will be perceived as aimed at the UK market. So, in Euromarket Designs, Inc v Peters,34 summary judgment was refused where the claimant complained of infringement in the UK by an advertisement for an Irish shop in a magazine with an Irish and UK circulation, as the advertisement might not be perceived as aimed at the UK.

30

See Och-Ziff (n 14) at [60]. See n 14 and L’Oréal SA v eBay International AG, Case C-324/09, [2011] ECR I-06011, [2011] RPC 27, [2011] ETMR 52, 12 July 2011 at [84] et seq. 32 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmuller GmbH v Guni , Case C-278/08, [2010] ECR I-2517, [2010] ETMR 33, itself following Portakabin Ltd v Primakabin BV, Case C-558/08, [2010] ECR I-6963, [2010] ETMR 52. 33 See n 28, Arnold J, whose questions referred to the CJEU were amended following eBay, and then Case C-323/09, [2011] ECR I-08625, [2012] FSR 3, [2012] ETMR 1, 22 September 2011 at [30]–[31] as to ‘use’ of a mark. 34 [2001] FSR 20, [2000] ETMR 1025. 31

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Infringement of Trade Marks 7.26 The international reach of the internet again raises difficulties in this regard. In

an early UK case, 1-800 Flowers,35 the issue was whether a US applicant for a UK mark could rely on prior use of its mark in the UK. Its problem was that it had no pre-existing UK business; it had evidence of orders placed by UK customers, but could not show that they had been in the UK when the orders were placed. Its attempt to rely upon the use of the name on its website was rejected. It was held that only where a site offers to supply goods or services in the UK is there use in the UK. By contrast, in L’Oréal SA v eBay 36 it was held that a website which gave prices and postage charges in sterling (even if converted from another currency) was targeted at UK purchasers and so making use of the signs in the UK. In Pammer,37 a conflict of laws case, the CJEU similarly held that the test was whether it was apparent from the websites and the trader’s overall activity that the trader was envisaging doing business with consumers domiciled in one or more Member States. 7.27 The issue of the ‘location’ of an infringement on the internet was considered by the

CJEU in L’Oréal SA v eBay 38 which (taking the same approach) held that the mere fact that a website was accessible from the territory covered by the trade mark did not prove that the advertiser was targeting consumers in that territory, but that website must be offering goods/services to consumers in that territory. Then, in Wintersteiger 39 an Austrian national trade mark was alleged to have been infringed by its use by a German company as a Google adword purchased from google.de for its German website. ‘google.de’ can be accessed in Austria, but is directed at Germany only. The CJEU held that infringement proceedings could be brought before the German or Austrian courts. Condition (ii): use in the course of trade 7.28 Each of subsections 10(1)–(3) refers to use of a sign ‘in the course of trade’, as does

Article 9(1) CTMR. Section 103(1) defines ‘trade’ as including any business or profession. The 1994 Act does not restrict the trade concerned to trade in the goods or services for which the mark is registered, and as infringements under s 10(2) and (3) may relate to use of an offending sign upon goods or services which are not the same as those covered in the claimant’s registration, it would seem that the trade concerned must stretch at least that far. 7.29 The CJEU has held that this condition will be satisfied where the use of the sign

takes place in the context of commercial activity with a view to economic advantage,

35

1-800 Flowers, Inc v Phonenames Ltd [2002] FSR 12 CA, affirming [2000] FSR 697. See n 14. 37 Pammer v Reederei Karl Schluter GmbH & Co KG, Case C-585/08, [2010] ECR I-12527, [2011] 2 All ER (Comm) 888, [2012] All ER (EC) 34. 38 See n 31 at [60]–[66]. 39 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH, Case C-523/10, [2012] ETMR 31, 19 April 2012. 36

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The Conditions for Infringement and not as a private matter.40 But, in the right circumstances, even a non-profitmaking organisation may make use of a mark in relation to goods and services.41 In Rxworks v Hunter 42 the claimant’s mark was found on screens within a computer program sold by the defendant; it was not used as the name of the program, and it was not visible at the point of sale but only once the program was being used. It was held that it was not necessary for a mark to ‘motivate the sale’ and be visible at the point of sale in order to satisfy the condition of being used ‘in the course of trade’; after Céline, all that mattered was that the use was made on a commercial rather than a private basis. However, even in a commercial context some acts may be private: in Och-Ziff, use in internal emails was private, not use in the course of trade.43 Condition (iii): without the consent of the proprietor In most cases, the alleged infringer will be using his sign in relation to his own 7.30 goods or services and the real question is whether that falls within one of subsections 10(1)–(3). However, it is possible to infringe a mark by using it upon or in relation to the genuine goods of the proprietor and it is in this context that the question of consent becomes difficult. As a general rule, where goods have been put on the market by the proprietor or with his consent—for instance by his licensee—he cannot subsequently complain about use of the mark in relation to those goods; his rights have been ‘exhausted’. However, there are exceptions to that rule, and there may still be infringement: (1) where the sign was used in relation to goods put on the market outside the European Economic Area (EEA) with the consent of the trade mark proprietor, but the goods are not on the market inside the EEA with such consent44 or, (2) where goods have been put on the market under the mark within the EEA with the consent of the proprietor, but he has legitimate reasons for opposing the further commercialisation of those goods so marked. 45 Exhaustion of trade mark rights is discussed together with issues relating to consent at 7.101 et seq.46

40

See eg Céline (n 13); O2 Holdings (n 4) at [60]. See by analogy the non-use case of Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ , Case C-442/07, [2008] ECR I-9223, [2009] ETMR 14. 42 [2008] RPC 13; also Kabushiki Kaisha Sony Entertainment v Nuplayer Ltd [2006] FSR 9. 43 See n 14 at [54]–[66]. 44 See eg Oracle America, Inc (formerly Sun Microsystems, Inc) v M-Tech Data Ltd [2012] UKSC 27, [2012] 1 WLR 2026. 45 Copad SA v Christian Dior Couture SA, Case C-59/08, [2009] ECR I-3421, [2009] FSR 22, [2009] ETMR 40 discussed at 7.109. 46 s 12; Art 7 of the Directive; Art 13 CTMR. 41

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7.31

Infringement of Trade Marks Condition (iv): use of an identical (similar) sign to the registered mark 7.32 This is the condition applicable in cases of infringement under s 10(1) and Article 9(1)

(a) CTMR. Under s 10(2)(b) and (3), it may be sufficient that the defendant is using a similar sign to the registered mark. What is meant by an identical sign or a similar sign has been discussed at 3.12 et seq. Condition (v): use in relation to goods or services 7.33 Under each of subsection s 10(1)–(3)/Article 9(1)(a)–(c), the defendant must be

shown to be using his sign in relation to goods or services of some kind; identical goods/services for s 10(1), similar or identical goods/services for s 10(2), and any goods or services at all for s 10(3). If the sign is physically on (or in) goods, the condition is implicitly satisfied, but where the sign is not fi xed to the goods, one needs to ask what if any link there is between the sign and the goods. In Rxworks, where the sign was embedded within the defendant’s software and systems, it was held to be at least arguable that all of the uses relied on were uses ‘in relation to’ relevant goods and services—the sign did not need to be visible when the goods were sold.47 7.34 Whether a retailer uses the name of his shop or business ‘in relation to’ the goods

which he sells may depend on whether the goods carry another trade mark. In Céline,48 two French businesses had both made lengthy use of the name Céline: the first had registered a trade mark in relation to clothing and shoes, and the other used the same name for its retail clothing business. The CJEU was asked whether the adoption by the latter business of the registered word mark as its company name and the name of its shop, selling identical goods, amounted to an infringement. The CJEU held that the purpose of a company or trade name is not to distinguish goods or services but to identify the business, so that use of the mark which only does that is not using it ‘in relation to goods or services’. Where the sign is not fixed to the goods the question is whether a link would be perceived between the shop/business name and the goods. Similarly, if an advertisement uses one mark but shows a number of different items, it may be a matter of perception whether or not the mark is being used in relation (perhaps) to a retailer or to some or all such goods.49 7.35 It is not clear to what extent use in terms of infringement is analogous to use for

the purposes of defeating a non-use revocation application (see 5.06 et seq). In Silberquelle, the CJEU held that a trade mark was not being put to genuine use when its proprietor used it on drinks given away as promotional goods to purchasers of the quite different goods covered by the trade mark specification, because the 47 48 49

See n 42 at [45]–[48]. n 13. eg Gina Shoes Ltd v Medici Ltd (2001) 24(5) IPD 24029.

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The Conditions for Infringement intention was not to ‘penetrate the market’ for drinks.50 However, use of the mark on promotional goods as a form of advertising would seem likely to amount to use for infringement purposes, either in relation to the promotional goods or the goods being promoted. Again, it does not matter whether the goods or services in relation to which the 7.36 mark is being used are those of the proprietor or of the defendant, as long as such use is made without the proprietor’s consent. So, for instance, use of the BMW mark in relation to car repair services for BMW cars could be an infringement, depending upon the manner and circumstances of its use,51 and the keyword cases show that use of a mark as a keyword to advertise the user’s competing goods (not the proprietor’s goods) may infringe. Condition (vi): the use affects the functions of the trade mark, in particular the essential function of guaranteeing origin It has always been hard to know whether it is a necessary requirement of infringe- 7.37 ment that the defendant is making ‘trade mark’ use of the sign, rather than using it descriptively (for example by using the name of a pop group as the title of a book about the band), or decoratively (for example as a slogan on a T-shirt).52 The CJEU decisions on the point have not been as consistent as the Court’s own pronouncements would suggest. Some early UK cases under the 1994 Act suggested that non-trade mark use 7.38 might fall within s 10, but would be saved from infringement by a s 11 defence.53 Similarly, in Windsurfing, the CJEU held that where a geographical mark had been registered, others would be protected from infringement under Article 6 (the equivalent to s 11) when using it purely descriptively, rather than because non-trade mark use did not fall within Article 5.54 However, in May 2002, the CJEU decided, in its short judgment in Holterhoff 7.39 v Freiesleben,55 that using the name ‘Spirit Sun’ solely in order to describe the qualities and the type of cut of precious stones, and not so as to indicate origin,

50

Silberquelle GmbH v Maselli-Strickmode GmbH, Case C-495/07, [2009] ECR I-137, [2009] ETMR 28; see too Ansul BV v Ajax Brandbeveiliging BV, Case C-40/01, [2003] ECR I-2439, [2005] 2 CMLR 36, [2005] Ch 97, [2003] RPC 40. 51 BMW AG v Deenik, Case C-63/97, [1999] ECR I-905, [1999] 1 CMLR 1099, [1999] ETMR 339; see Arnold J’s comments in L’Oréal v eBay (n 14) at [292]. 52 Th at was the position before the 1994 Act came into force, eg Mars Ltd v Cadbury Ltd [1987] RPC 387. 53 eg British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, [1997] ETMR 118; Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809 (CA). 54 Windsurfing Chiemsee, Cases C-108/97 and 109/97, [1999] ECR I-2779, [2000] Ch 523, [1999] ETMR 585 at [28]. 55 Case C-2/00, [2002] ECR I-4187, [2002] ETMR 79, [2002] FSR 52.

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Infringement of Trade Marks would not infringe the exclusive right of the proprietor of the identical mark for identical goods. 7.40 The CJEU considered the point further in Arsenal v Reed. Mr Reed had been sell-

ing unofficial Arsenal merchandise, such as scarves, first inside and then (after he was banned) outside the football ground for over 30 years. Arsenal sued him for infringement and passing off. Laddie J considered that Mr Reed’s use of the marks did not indicate the trade origin of the goods, and so did not harm the essential function of the Arsenal marks, as Mr Reed’s signs were just ‘badges of allegiance’.56 On a reference to the CJEU, it identified the essential function of a trade mark as being to guarantee origin, and said that ‘uses for purely descriptive purposes are excluded from the scope of Art. 5(1) of the Directive because they do not affect any of the interests which that provision aims to protect’.57 Nevertheless, the CJEU considered that Mr Reed’s use of the mark did suggest a material link to Arsenal, and so would jeopardise the origin function, even if his use was seen as a badge of allegiance or loyalty.58 Mr Reed’s use was eventually held to infringe on this basis.59 7.41 In Anheuser-Busch 60 the CJEU was asked whether a mark was infringed by the use

of the defendant’s trade name, with reference to Article 16(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The Court referred to Arsenal and the need to protect the origin function, but said that a third party can use a trade name without infringement if such use is for purposes other than to distinguish the goods concerned61 and is in accordance with honest practices in industrial and commercial matters (as to which see 7.81 et seq). This decision was broadly reflected in Céline.62 7.42 In Adam Opel 63 the badge used on Opel car radiators was registered as a mark for

both cars and toys. The defendant sold remote-control scale model cars bearing the badge on the radiator grille, but branded with the defendant’s own trade marks. The German court held that the average consumer was familiar with such replica scale models and would not perceive the sign on the models as an indication that those products came from Opel. In such circumstances, the CJEU said the local court would have to conclude that the use did not affect the essential function of the Opel logo as a trade mark registered for toys. That is what the German court later did.64

56

[2001] RPC 46, [2001] 2 CMLR 23. Arsenal Football Club v Reed , Case C-206/01, [2002] ECR I-10273, [2003] 1 CMLR 345, [2003] Ch 454, [2003] RPC 144 at [54]. 58 Arsenal (n 57) at [56]–[61]. Post-sale confusion was a relevant factor. 59 Arsenal Football Club v Reed (No 2) [2003] 2 CMLR 25, [2003] RPC 39, [2003] ETMR 73. 60 Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik, Case C-245/02, [2004] ECR I-10989, [2005] ETMR 27. 61 Anheuser-Busch, Inc (n 60) at [64]. 62 See n 13. 63 Adam Opel AG v Autec AG, Case C-48/05, [2007] ECR I-1017, [2007] ETMR 33. 64 See report from Bundesgerichtshof, [2010] ETMR 50. 57

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Section 10(1): Identical Mark/Identical Goods In L’Oréal v Bellure,65 however, no confusion as to origin was caused by the use 7.43 of the defendants’ comparison lists, showing which of the claimant’s well-known perfumes was imitated by each of their products. The CJEU held that, in contrast to Holterhoff, the use was not merely descriptive, because it was used for advertising. The local court would therefore have to consider whether the lists affected any of the marks’ functions of communication, investment, or advertisement.66 That decision, again, needs to be read in the light of the keyword cases such as Google France, BergSpechte, etc, limiting infringement in such cases by reference to confusion as to origin. The CJEU held in Google France 67 that the essential function of a trade mark in the area of electronic commerce consists in enabling internet users to distinguish the goods or services of the proprietor of the mark used as their search term from those which have a different origin. In Interflora v M&S,68 in particular, the CJEU held that use of a mark as a keyword would not adversely affect either the advertising or investment functions of the mark unless (at least) there was detriment to the mark’s reputation. But it also held that detriment would not arise in the absence of confusion as to origin on the part of the consumer.69 At trial in Interflora, therefore, Arnold J held that it would be necessary to show an impact on the origin function before such infringement could be found.70

E SECTION 101: IDENTICAL MARK/ IDENTICAL GOODS Subject to the conditions discussed in the previous section, s 10(1)/Article 9(1)(a) 7.44 CTMR prohibit the use of an identical mark to the registered mark upon goods or services for which the mark is registered.71 The defendant may, however, have a defence of consent, acquiescence, or honest concurrent use,72 or one of the statutory defences in s 11 discussed at 7.76.73 In principle, such infringement may be found without evidence of a likelihood 7.45 of confusion, because confusion is presumed. This may still be true in relation to straightforward cases of use of the identical mark directly upon goods within 65 L’Oréal v Bellure, Case C-487/07, [2009] ECR I-5185, [2010] RPC 1, [2009] ETMR 55, discussed further at 7.69 as to comparative advertising. 66 L’Oréal v Bellure (n 65) at [63] and Ch 1. 67 See n 29 at [87]. 68 See n 33 at [54]–[65]. 69 See n 33 at [81]–[83]. 70 n 28 at [277]. The case is subject to appeal. And see 3.59 –3.72 . 71 For the meaning of ‘identity’ of both marks and goods/services, see the discussion in relation to s 5(1) in Ch 3. 72 See Bud [2012] EWCA Civ 880, [2012] 3 All ER 1405, [2013] RPC 12, [2012] ETMR 48 especially at [23], [33] following Case C-482/09, 22 September 2011, [2012] RPC 11, [2012] ETMR 2 and see 3.89–3.90. 73 See Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2009] RPC 9 at [187].

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Infringement of Trade Marks the claimant’s registration. However, the keyword cases have added a significant gloss to this provision. In those cases, the keyword chosen by the advertiser has generally been identical to the registered mark,74 and has been used in relation either to the goods of the proprietor, or directly competing and therefore identical goods. Nevertheless, the CJEU has held consistently since Google France75 that the test for infringement in such circumstances is whether the advertisement ‘does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services’ are those of the proprietor or originate from a third party. This, it seems, has introduced a requirement of a form of likelihood of confusion into double identity cases, although the onus lies on the defendant to show that there is no such likelihood of confusion, and that the advert is ‘transparent’ as to the origin of the goods/services on offer. This narrows, but does not eliminate, the difference between infringement under s 10(1) and (2).76 Confusion on the part of internet users who are ill-informed or unobservant will be discounted.77 In Interflora, it was significant that the claimant operated through a network of suppliers. Arnold J found that the majority of consumers who clicked on M&S’s advertisements did not do so because they believed that M&S was part of the Interflora network, but a significant proportion of the consumers who searched for ‘interflora’ were likely to be so confused. He therefore found infringement under s 10(1).

F SECTION 102: IDENTICAL OR SIMILAR MARKS/IDENTICAL OR SIMILAR GOODS 7.46 Section 10(2)/Article 9(1)(b) reflect the wording of s 5(2). They apply in cases where

the marks are identical but the goods or services are only similar, where the marks are similar but the goods or services are identical, and in cases where the marks are similar and the goods or services are similar. The criteria for assessing the likelihood of confusion will be the same as those applied in relation to s 5(2), as discussed in Chapter 3. 7.47 If the registered mark is not in use, the defendant’s sign will be compared with

it in notional fair use; if the mark is being used, then it will be compared with the alleged infringing sign as it is used, but only in so far as it is used as registered. However, where a mark has been consistently used in a particular colour,

74 Sometimes the advertiser chooses keywords consisting of permutations of the marks, eg ‘interfloral’ or ‘portacabin’ (the mark is Portakabin). See the explanation in Interflora ( n 28). 75 See n 29. See also Eis de GmbH v BBY Vertriebsgesellschaft mbH (‘Bananabay’), Case C-91/09, [2010] ECR I-00043; Portakabin (n 32); Wintersteiger (n 39). 76 per Arnold J in Datacard Corp v Eagle Technologies Ltd [2011] EWHC 244 (Pat), [2011] RPC 17 at [263]; and in Interflora [2013] EWHC 1291 at [235]–[247] and summary at [267]. 77 Interfl ora at [265].

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Section 10(2): Identical or Similar Marks and Goods that may be taken into account in assessing its reputation or distinctiveness.78 In assessing the likelihood of confusion, the Court must take into account all the circumstances that are likely to operate on the average consumer’s mind in considering the defendant’s sign and the impression it is likely to make on him. First, the sign is not to be considered stripped of its context.79 In addition, the offending ‘sign’ needs to be carefully identified. In Hasbro, the defendant’s product was ‘Yummy Dough’ but it used the phrase ‘Yummy Dough—the edible play dough’ on its packaging and its website. Floyd J deemed this to be ‘a brand name extension’ and the words ‘the edible play dough’ would be understood as denoting origin. Th is was a sign being used in a trade mark sense, and so it infringed. 80 A word which may be used descriptively in some contexts may be capable of being used as a badge of origin, and the context and circumstances in which it is used will be crucial to a finding of infringement. 81 Use of more than one registered mark at a time may infringe each of them, even if the combination is itself a registered mark. 82 The protection offered to the mark is wider than the strict ambit of the registration, 7.48 in terms both of the signs to which objection may be taken and the goods and services upon which that sign is used: the mark has a ‘penumbra’ of protection, which may increase its value greatly. For example, ‘32red’ and ‘32’ for gambling services were infringed by ‘32vegas’, 83 a ‘Fine & Country’ device was infringed by a stylised sign ‘Fine’, 84 and ‘Sky’ was infringed by ‘Skydrive’.85 However, it all depends on the facts, and even partially identical signs may not infringe in the circumstances of the particular case.86 In Phones 4u87 Jacob LJ expressed concerns that a mark which has been registered 7.49 only because a device or colour was added to descriptive words might be infringed, due to the global assessment of the likelihood of confusion, by use of those words alone. Arnold J, in Now TV, took a similar view of the alleged infringement of a mark which he considered had been registered only upon adding a ‘figleaf’ of a

78

Specsavers, Case C-252/12, 18 July 2013, [2013] ETMR 46. per Kitchin LJ in Specsavers (n 4) at [87]. 80 Hasbro, Inc v 123 Nahrmittel GmbH [2011] EWHC 199 (Ch), [2011] FSR 21, [2011] ETMR 25 at [202]. 81 Hasbro (n 80) and eg Fox International Group Ltd v Folly [2011] EWPCC 30, [2012] ECC 3 at [43]. 82 Colloseum Holding AG v Levi Strauss & Co, Case C-12/12, [2013] ETMR 34, 18 April 2013; and Specsavers in the CJEU (n 78). 83 32Red plc v WHG (International) Ltd [2012] EWCA Civ 19, [2012] RPC 19, [2012] ETMR 14. 84 Fine & Country Ltd v Okotoks Ltd [2013] EWCA Civ 672. 85 BSkyB v Microsoft Corporation [2013] EWHC 1826 (Ch), 28 June 2013. 86 eg Stichting BDO v BDO Unibank, Inc [2013] EWHC 418 (Ch), [2013] ETMR 31: ‘BDO’ not infringed by ‘BDO Remit’ where services not very similar and there had been no confusion in eight years of use. 87 Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5. See also Th omson Holidays Ltd v Norwegian Cruise Lines Ltd [2003] RPC 32, at [29] as to the impact of broad terms in specifications. 79

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Infringement of Trade Marks device to a descriptive word.88 In Whirlpool 89 the mark was registered only after the applicant added the name KitchenAid to a depiction and description of the mixer, but infringement was alleged based only upon the use of a similar shaped mixer. No infringement was found. 7.50 In Och-Ziff, a likelihood of confusion was found between the sign OCH Capital

and the claimant’s distinctive marks OCH and OCH ZIFF, when used for identical services. Arnold J held that the likelihood of confusion included the possibility of initial interest confusion, namely confusion arising prior to the purchase of the defendant’s goods/services, especially due to the use of its sign in advertising or promotional materials. It was argued that as use can infringe even if no sale takes place, initial interest confusion could suffice. Arnold J agreed; he held that the CJEU’s decisions in BergSpechte and Portakabin90 (both of which related to online advertising) showed that such confusion might cause damage even if it would be dispelled prior to any purchase; there would be no diversion of sales, but there could be damage to the reputation of the proprietor’s goods or services or erosion of the distinctiveness of the trade mark.91

G SECTION 103: DAMAGE TO A MARK WITH A REPUTATION 7.51 The scope of infringement actions under s 10(3)/Article 9(1)(c) CTMR 92 has been

broadened in relation to marks with a reputation by the decisions of the CJEU discussed in relation to s 5(3) at 3.50 et seq. Those decisions showed that use of a sign by a defendant which does not cause confusion as to origin, and so does not affect the essential function of indicating origin, may nonetheless infringe under s 10(3), if the similarity creates a link which affects the functions of communication, investment, or advertising.93 However, as discussed in Chapter 3, the CJEU’s decision in Interflora suggests that reliance on functions other than the origin function may be problematic, and, indeed, Arnold J’s decision at trial turned upon showing

88 Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2012] EWHC 3074 (Ch), [2013] FSR 29 at [116]–[117]. Upheld on appeal, [2013] EWCA Civ 1465, 15 November 2013. 89 Whirlpool Corp v Kenwood Ltd [2009] ETMR 5, upheld on appeal [2009] EWCA Civ 753, [2010] RPC 2, [2010] ETMR 7.  See too Chocolate Bunnies:  Lindt’s mark included its name, which had not been copied:  Chocoladefabriken Lindt & Sprűngli AG v Franz Hauswirth GmbH, Case-529/07, [2009] ECR I-4893, [2009] ETMR 56. 90 See n 32. 91 Och Ziff (n 14) at [87]–[101]. Whether initial interest confusion applies in all kinds of infringement cases is not clear. See the comments by Kitchin LJ in Specsavers (n 4) at [86]–[87] and by Peter Smith J in JW Spear v Zynga Inc [2012] EWHC 3345 (Ch), 1 November 2013 at [60]–[62]. See also 8.65 as to initial interest confusion in cases of passing off. 92 Art 5(2) of the Directive. 93 See n 14. See also Ch 1.

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Section 10(3): Damage to a Mark with a Reputation damage to the origin function (see 7.43). Further, the need for proof of damage in terms of evidence of actual changes in the economic behaviour of consumers may be limited in the infringement context, as much as in the registration context, by the need to show a likelihood of such an impact.94 It may be helpful to give a flavour of the current scope of UK infringement actions 7.52 under s 10(3). Older cases95 may be of interest, but should be treated with some caution, given the development of the law, especially in Interflora. In 32Red,96 detriment to the distinctive character of the marks was found in the 7.53 risk of a false association with 32Vegas, which the judge held was a brand with an inferior reputation which operated in the same market place. The central facts in Specsavers 97 were that Asda had taken Specsavers as ‘its 7.54 main target competitor’ when devising a new marketing campaign for its own opticians. Its intention was to draw comparisons with Specsavers by parodying, or at least referencing, its logos. The evidence of Asda ‘living dangerously’ did not evidence an intention to confuse; however, the advertising strap-lines used made direct comparative references to Specsavers, and made the necessary link to it. Th is was not legitimate comparative advertising (discussed at 7.59 et seq) or simply offering alternatives to Specsavers through something akin to the Adwords service, but Asda intended to take advantage of the power of attraction of the Specsavers marks and exploit Specsavers’ marketing efforts by suggesting to consumers that Asda offered ‘real value in the form of spectacle savings’. Th is took unfair advantage of the marks, as did the use of the logos, without due cause. The Court of Appeal also referred some questions to the CJEU in particular as to whether the fact that Specsavers had consistently used its marks in the same colour (green) could be taken into consideration for the global assessment of the likelihood of confusion and/or unfair advantage. The CJEU held that it could.98 In Red Bull v Sun Mark,99 Red Bull complained that use of the mark ‘Bullet’ in 7.55 relation to an energy drink infringed its mark ‘Bullit’, and that use of the slogan ‘No Bull In This Can’ infringed its mark ‘Red Bull’. The slogan would call Red Bull to the mind of the average consumer, who would appreciate the play on words but not be confused as to origin. The slogan took unfair advantage of the repute of the mark to promote the defendants’ drink as being as good as but cheaper than Red

94 Helena Rubinstein SNC v OHIM, Case C-100/11, [2012] ETMR 40, 10 May 2012 at [95]; Environmental Manufacturing LLP v OHIM, Case C-383/12, 14 November 2013 and see 3.61. 95 See eg Premier Brands UK Ltd v Typhoon Europe [2000] FSR 767; Whirlpool (n 89). 96 See n 83 at [94]. 97 Specsavers (CA) (n 4) and see 3.72. 98 See n 78. 99 [2012] EWHC 1929, 17 July 2012.

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Infringement of Trade Marks Bull. But it was not detrimental to the mark, as the average consumer would not take it as seriously reflecting on the qualities of Red Bull. 7.56 In Stichting100 the claimants asserted that the uniqueness of their mark in the finan-

cial services sector had been undermined by use of the defendants’ similar sign, and therefore the distinctive character of the mark had been reduced. However, the defendants’ use had been lengthy, and there was no evidence that it had weakened the capacity of the mark to identify the claimants’ services, nor evidence of any change in the economic behaviour of relevant consumers. The claim under Article 9(1)(c) failed. Then, upon the trial of Interflora v M&S,101 as discussed earlier, Arnold J found there would have been detriment to Interflora’s mark (by dilution tending to render it generic) only if there was an effect on the origin function. 7.57 Guidance may soon be given by the CJEU as to the meaning of due cause in

relation to another Red Bull infringement case, Leidseplein Beheer BV v Red Bull GmbH,102 in which Red Bull has objected to use of the name The Bulldog for an energy drink by a trader who has used that name for other goods and services (such as for coffee-shops) for many years. Use of the name for his energy drink commenced in 1997. The AG’s Opinion suggests that use of a sign which commenced before the mark was registered or acquired a reputation after registration, is a factor which may be taken into account to establish due cause.

H COMPARATIVE ADVERTISING 7.58 The use by one trader of another trader’s marks to draw comparisons between their

goods or services is known as comparative advertising. There is an obvious tension between the public policy aim of stimulating competition and the desire to protect trade mark rights and goodwill, and this is largely controlled by the Comparative Advertising Directive (EC) 2006/114 (CAD). The CAD, however, has a much broader application than the regulation of straightforward comparisons between one brand and another. As discussed in the next section, it applies to many kinds of uses of or references (direct or indirect) to another trader’s mark which might, if not permitted by the CAD, amount to a trade mark infringement.

I COMPARATIVE ADVERTISING UNDER SECTION 106 7.59 Comparative advertising was dealt with in s 10(6) of the 1994 Act. It permitted

for the first time in English law the use of a mark upon or in relation to genuine 100 101 102

See n 85. See n 14. Case 65/12, AG Kokott’s Opinion 21 March 2013. See discussion at 3.74.

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Comparative Advertising goods of the trade mark proprietor or any of his licensees. In addition, it permitted the use of a mark in comparative advertising. In both instances, use had to be ‘in accordance with honest practices in industrial or commercial matters’. It was a ‘home-grown’103 provision, not reflected in any single part of the Directive, but stemming in part from Article 10bis of the Paris Convention and in part from Article 6(1) of the Directive. It is linked to the concept of exhaustion in s 12 of the 1994 Act and Article 7 of the Directive, discussed at 7.101. In the early case-law, it was held that the essential test was of the objective honesty 7.60 of the comparative advertisement, making due allowance for hyperbole,104 and indeed for ‘vulgar abuse’.105 It now seems that s 10(6) has been displaced by the CAD,106 and by the rules on 7.61 exhaustion of rights. Similarly, reliance upon specific industry practices, regulations, or codes of practice cannot override the requirements of the CAD.

J THE CURRENT RULES ON COMPARATIVE ADVERTISING The CAD codified earlier provisions107 and was implemented in the UK by the 7.62 Business Protection from Misleading Marketing Regulations 2008.108 The recitals to the CAD state that comparative advertising, when it ‘compares material, relevant, verifiable and representative features and is not misleading’, may provide consumers with useful information. As it may be indispensable for such advertising to refer to a competitor’s trade mark, the CAD seeks to reconcile the interests of trade mark proprietors with those of their competitors and consumers.109 In the light of the cases, it seems unlikely that a comparative advertisement permitted by the CAD would infringe trade mark rights. Article 2 of the CAD provides a very broad concept of advertising: ‘a representa- 7.63 tion in any form in connection with a trade, business, craft or profession in order 103

per Laddie J in Barclays Bank plc v RBS Advanta [1996] RPC 307—arguably it is also incompatible with the Directive, see the reasoning of the CJEU in Silhouette International Schmied GmbH & Co KG v Hartlauer Handelsgesellschaft mbH, Case C-355/96, [1998] ECR I-4799, [1999] Ch 77, [1998] 3 WLR 1218, [1998] FSR 729. 104 Barclays Bank v RBS Advanta [1996] RPC 307; Vodaphone Group plc v Orange Personal Communications [1997] FSR 34; Emaco v Dyson [1999] ETMR 903. 105 British Airways plc v Ryanair Ltd [2001] FSR 32, [2001] ETMR 24. 106 Lidl SNC v Vierzon Distribution SA , Case C-159/09, [2010] ECR I-11761, [2011] 2 CMLR 10, [2011] ETMR 6. 107 The main Directives were (EEC) 84/450 on misleading advertising, Directive (EEC) 97/55 which amended Directive (EEC) 84/450 to include comparative advertising, then Directive (EC) 2005/29. 108 SI 2008/1276, in force 26 May 2008. 109 Lidl (n 106).

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Infringement of Trade Marks to promote the supply of goods or services’. This can cover uses which one would not normally described as an ‘advertisement’ such as use of a domain name, or use of metadata which is invisible to the consumer.110 7.64 Misleading advertising ‘deceives or is likely to deceive the persons to whom it is

addressed or whom it reaches and . . . is likely to affect their economic behaviour or . . . injures or is likely to injure a competitor’, whilst comparative advertising means ‘any advertising which explicitly or by implication identifies a competitor or goods or services offered by a competitor’ (emphasis added). Article 4 provides that comparative advertising is permitted if certain conditions are met. It may make objective comparisons of goods/services, but must not mislead, denigrate, or take unfair advantage of the reputation of a trade mark etc; present goods or services as imitations or replicas, or create confusion among traders. It should be interpreted in favour of permitting advertisements which objectively compare the characteristics of goods or services, and are not used anti-competitively, unfairly, or in a manner which affects consumer interests.111 A vital issue is whether the description, trade mark, or promotional statement is liable to mislead or confuse a significant proportion of relevant consumers. 7.65 A number of comparative advertising cases have been considered by the CJEU.

In Toshiba112 spare parts and consumables for Toshiba photocopiers were identified using Toshiba product numbers. The CJEU held that ‘advertising’ could take many different forms, and comparative advertising may identify a competitor or his goods/services ‘explicitly or by implication’. This was permissible comparative advertising (assuming that it was accurate etc) and would not take unfair advantage if it was necessary for effective competition and did not cause confusion as to origin. Siemens113 also related to the sale of spare parts. The CJEU held that the fact that the advertiser self-evidently obtains a benefit from such from comparative advertising is not determinative of whether his conduct is lawful or took unfair advantage. 7.66 In Pippig114 the defendant made price comparisons between its cut-price spectacles

and Pippig’s goods. It also used Pippig’s logo and a picture of its shop-front. The CJEU held that all such uses might be comparative advertising designed to highlight the advantages of the goods or services of the advertiser. These necessarily underline the differences between the goods or services, and will not infringe if they comply with the CAD.115

110

Belgian Electronic Sorting Technology NV v Bert Peelaers, Visys NV, Case C-657/11, 11 July 2013, [2013] ETMR 45. 111 Lidl (n 106) at [21]. See useful summary in Kingspan (n 11) at [222] et seq. 112 Toshiba Europe GmbH v Katun Germany GmbH, Case C-112/99, [2001] ECR I-7945, [2002] 3 CMLR 7, [2002] FRS 39. Contrast the facts of Datacard (see n 76). 113 Siemens AG v VIPA Gesellschaft fur Visualisierung und Prozessautomatisierung mbH, Case C-59/05, [2006] ECR I-2147, [2006] 2 CMLR 32, [2006] CEC 752, [2006] ETMR 47 at [25]–[27]. 114 Pippig Augenoptik GmbH & Co KG v Hartlauer, Case C-44/01, [2003] ECR I-3095, [2004] 1 CMLR 39, [2004] ETMR 5. 115 For a similar case on price comparisons see Lidl (n 106).

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Comparative Advertising De Landtsheer116 was rather different. A new beer was sold in a bottle which looked 7.67 like a champagne bottle. It was advertised as ‘Champagnebier’ and by use of wording like ‘brut réserve’ to suggest champagne-like characteristics. Veuve Clicquot and a trade association sued, saying this was misleading. The brewer agreed to stop use of the word ‘Champagnebier’ but fought the rest. The CJEU held that it would be relevant comparative advertising if a competitor (or a number of competitors) or their goods or services could be identified in it, even if only by implication. Whether undertakings are competing undertakings depends on ‘a certain degree of substitutability’ of their goods/services, meeting the same needs or fulfilling the same purpose. The Court did not give its view as to whether the beer met the same needs as champagne. In O2 v Hutchison117 the defendant used its rival’s marks to make a favourable 7.68 comparison with its own products and prices. However, unlike most of the earlier cases, it did not use an identical sign to O2’s marks, but images reminiscent of O2’s bubble images. O2 accepted that the price comparisons were not misleading, but argued that the bubble imagery could not properly be used in comparative advertisements. The CJEU held that where a comparative advertiser is using the registered mark for his (the advertiser’s) own goods and services, there may be a trade mark infringement. If there is a likelihood of confusion, the conditions of Article 3 of the CAD will not be satisfied and the comparative advert will infringe. In L’Oréal v Bellure118 the defendants’ brand comparison lists set out against the 7.69 claimant’s perfume brand names the names of their corresponding smell-alike products. The CJEU held that the CAD must be interpreted so as to permit advertisements which objectively compare characteristics of goods or services but which are not anti-competitive, do not give rise to unfair competition, and are not adverse to consumer interests. The comparative advertisement must have no misleading effect and not lead to a likelihood of confusion. Advertisements for imitation products take unfair advantage of the trade mark’s reputation, and infringe Article 3 CAD. As for UK cases, in Kingspan119 the claimant complained of a promotional cam- 7.70 paign conducted by Rockwool consisting of road shows and videos which falsely suggested that three of its building products were a fire hazard. This was found to take unfair advantage of and cause detriment to the repute of Kingspan’s marks, and discredited and denigrated its products. The campaign was not, therefore,

116 De Landtsheer Emmanuel SA v Comité Interprofessionnel du Vin de Champagne, Case C-381/05, [2007] ECR I-3115, [2007] 2 CMLR 43, [2007] ETMR 69. See also Lidl Belgium GmbH & Co KG v Etablissementen Franz Colruyt NV, Case C-356/04, [2008] ECR I-3601, [2007] 1 CMLR 9, [2007] ETMR 28. 117 O2 Holdings (n 4); UK CA at [2007] 2 CMLR 15, [2007] RPC 16, [2007] ETMR 19. 118 See n 65. 119 See n 11.

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Infringement of Trade Marks acceptable under the CAD, and the trade marks were infringed. In Hasbro,120 the defendants’ use of the phrase ‘the edible play dough’ was held to go much further than making a comparison, because it would give rise to origin confusion. Floyd J held that was enough to take it outside the CAD. 7.71 The overall result is therefore that a comparative advertisement which is permitted

by the CAD does not infringe a trade mark. A comparative advertisement which is not protected by the CAD, perhaps because there is a likelihood of confusion or unfair advantage, may infringe.

DEFENCES TO INFRINGEMENT K GENERAL 7.72 If faced with a threat of infringement proceedings there are a number of potential

defences which may be raised. First, however, the defendant may wish to challenge the validity of the mark on one of the bases discussed in Chapter 5. Next, he may argue that use of his sign does not affect the functions of the claimant’s trade mark or that the particular acts of which complaint is made do not amount to infringement. This may be difficult where s 10(1)/Article 9(1)(a) infringement is concerned, but where s 10(2) or (3)/Article 9(1)(b) or (c) is invoked there will almost always be scope to argue that the sign is not similar to the mark, that there is no likelihood of confusion, etc. Such arguments may stand a better chance of success if the parties’ marks have been used concurrently without evidence of confusion or damage having come to the attention of the proprietor of the registered mark.121 7.73 There are a number of defences to run under s 11/Article 12 CTMR, potential defences

of consent or exhaustion under s 12/Article 13 CTMR, or acquiescence under s 48/ Article 54 CTMR, as well as considerations of competition law or restraint of trade.

L CHALLENGE TO THE VALIDITY OF THE TRADE MARK REGISTRATION 7.74 Section 72 deems a registration of a trade mark to be prima facie evidence of the

validity of the original registration. However, this does not preclude a challenge to that registration in proceedings based upon the mark. On the contrary, in many infringement actions the defendant will seek to challenge the registration. UK

120 121

See n 80 at [224]. See 9.19 et seq and eg Datacard (n 76) at [332] et seq.

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Section 11 registrations may be revoked under s 46 of the 1994 Act for non-use, or declared invalid under s 47; CTMs may be attacked under the equivalent provisions of Articles 51–3 of the CTMR. See Chapter 5. Sections 46(4) and 47(3) anticipate that an application for revocation/invalidity may be made where infringement proceedings are pending and in that case the application must be made to the Court, by way of counterclaim.122 Acts within the scope of a disclaimer or limitation Where the registration of a trade mark is subject to a disclaimer or limitation, the 7.75 rights conferred by the registration will be limited. So, for instance, a mark limited to particular colours was not infringed by a sign used in different colours.123

M SECTION 11 Section 11 provides a number of somewhat disparate alternative defences. This is in 7.76 part mirrored by Article 12 CTMR, but the provisions are not identical. Section 11(1): concurrent registered trade mark rights By s 11(1), a defendant does not infringe a registered UK trade mark by the use of 7.77 another registered UK trade mark, or an international mark registered in the UK, if that use is upon goods or services in respect of which it is registered. It is probable also that the mark needs to be used in exactly the form in which it is registered. Section 11(1) specifically refers to s 47(6), for if the defendant’s registration is declared invalid it will be deemed never to have been made, and the defence will fall away. Section 11(1) is not derived from the Directive and has no direct equivalent in 7.78 the CTMR. So it is no defence to infringement of a UK mark or a CTM that the defendant is using his own CTM.124 Section 11(2): honest use of own name, or other indications The defences provided by s 11(2)/Article 12 broadly permit the use of signs which 7.79 are identical or similar to registered marks for a wide variety of descriptive purposes. This protection is, of course, important, given the possibility that ss 9 and 10 extend to non-trade mark use. Together with the provisions of s 3, especially 122 See Ch 5 and 9.17. The provisions of Art 104 CTMR are discussed at 9.39. NB the date from which revocation will be ordered may leave a period of validity during which the mark was infringed: see Second Sight Ltd v Novell UK Ltd [1995] RPC 423, and T-Mobile (UK) Ltd v O2 Holdings Ltd, BL O/364/07, 13 Dec 2007. 123 Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5. 124 Federation Cynologique Internationale v Federacion Canina Internacional de Perros de Pura Raza, Case C-561/11, [2013] ETMR 23, 21 February 2013.

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Infringement of Trade Marks s 3(1)(c), this section is designed to ensure that honest traders may make use of terms which they might perfectly fairly want to use and which should be kept free for use by all. Section 11(2) is based upon Article 6(1) of the Directive. 7.80 Section 11(2) first protects a trader who is doing no more than making honest use

of his own name or (theoretically at least) address. Secondly, it protects against descriptive use of signs that are identical or similar to registered marks, as long as such use is in accordance with honest practices in industrial or commercial matters. Lastly, it permits the use of marks which is necessary to indicate the purpose of goods or services. Honest practices in industrial or commercial matters 7.81 The important proviso to s 11(2)/Article 12 CTMR is that there will be no infringement by use made of descriptive terms, as long as such use is ‘in accordance with honest practices in industrial or commercial matters’. Th is phrase, which occurs in a number of contexts in the 1994 Act, the Directive, and the CTMR, has been described by the CJEU as amounting to ‘a duty’ on a trader to act fairly in relation to the legitimate interests of the trade mark owner.125 7.82 The Court will take a number of factors into account. First, the extent to which the

use of the sign or name indicates a link between the third party’s goods or services and those of the trade mark proprietor and, secondly, the extent to which the third party ought to have been aware of that. If there is a misleading impression of a commercial connection to the trade mark proprietor, it will not be fair use, nor will use which affects the value of the trade mark by taking unfair advantage of its distinctive character or repute, or which discredits or denigrates it.126 Again, it will not be honest practice to use the mark in relation to imitation or replica products.127 7.83 Arnold J reviewed the law with respect to honest practices in Samuel Smith.128 He

said that the court should assess whether the defendant is unfairly competing with the trade mark proprietor. Another important factor is whether the use of the sign gives rise to consumer deception etc, although ‘a mere likelihood of confusion will not disqualify the use from being in accordance with honest practices if there is a good reason why such a likelihood of confusion should be tolerated’. He treated the following factors as material:

125

eg Céline (n 13) at [33]. See eg Hasbro (n 80), or Kingspan (see n 11). 127 Gillette Co v LA-Laboratories, Case C-228/03, [2005] ECR I-2337, [2005] 2 CMLR 62, [2005] FSR 37, [41] et seq; L’Oréal v Bellure (n 94). Th is may be altered by Art 14(2) of the proposed Directive and Art 12(2) of the proposed CTMR. 128 Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery) [2012] FSR 7 at [114]– [120]. He referred back to his own rulings in Cipriani (n 73), Och-Ziff (n 14), and Datacard (n 76). See also Redd Solicitors LLP v Red Legal Ltd [2012] EWPCC 54, [2013] ETMR 13 and the follow-up case in Cipriani: Hotel Cipriani Srl v Fred 250 Ltd [2013] EWHC 70 (Ch), [2013] ECC 11, [2013] ETMR 18. 126

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Section 11 i) whether the defendant knew of the trade mark, and if not whether it would have been reasonable for it to conduct a search; ii) whether the defendant relied on competent legal advice based on proper instructions; iii) the nature of the use complained of, and in particular the extent to which it is used as a trade mark for the defendant’s goods or services; iv) whether the defendant knew that the trade mark owner objected to the use of the sign or should have appreciated that there was a likelihood that the owner would object; v) whether the defendant knew, or should have appreciated, that there was a likelihood of confusion; vi) whether there has been actual confusion, and if so whether the defendant knew this; vii) whether the trade mark has a reputation, and if so whether the defendant knew this and whether the defendant knew, or should have appreciated, that the reputation of the trade mark would be adversely affected; viii) whether the defendant’s use of the sign complained of interferes with the owner’s ability to exploit the trade mark; ix) whether the defendant has sufficient justification for using the sign; and x) the timing of the complaint from the trade mark owner. The test of honesty is an objective one.129 The Court will consider all of the cir- 7.84 cumstances, especially how the registered mark is used, how the defendant distinguishes between that mark and his sign, and any effort made to ensure that consumers can distinguish between the respective products.130 So the defence may apply even where the defendant is using the sign as a trade mark.131 Section 11(2)(a): own name and address Section 11(2)(a) provides that there is no infringement where the defendant is using 7.85 his own name or business address. Section 11(2)(a) protects use of a full name, a surname, or (probably) the name by which a person is usually known. The defence also applies to use of a company name,132 whether with or without 7.86 words such as ‘Limited’. Nevertheless, for a new business, or a newer business than that of the claimant, the defendant may have to justify his choice of name

129

See eg Asprey & Garrard Ltd v WRA (Guns) Ltd [2002] FSR 31, [2002] ETMR 47: initially honest intentions were no protection once the defendant learned of confusion. In Samuel Smith, the defendant could not rely on the defence after termination of its arrangement to use the mark as a legitimate reference to a third party. 130 Gillette (n 127) at [46]. 131 Premier Luggage & Bags Ltd v Premier Co (UK) Ltd [2003] FSR 5, [2002] ETMR 69. 132 Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik, Case C-245/02, [2004] ECR I-10989, [2005] ETMR 27.

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Infringement of Trade Marks in a way not applicable to an individual defendant.133 If a company name was adopted years before any question of infringement arose and was used consistently in ordinary commercial ways, the defence should apply.134 Céline135 confirms that use of a trading name may be protected in the same way.136 On the other hand, in the light of the tests set out in 7.82–7.83, if the use by a defendant of its own name will cause confusion or lead to passing off, it may not comply with the proviso. In NAD Electronics137 it was found that the defendant could not rely on s 11(2)(a), even though the company name had originally been chosen in good faith, as the manner of use of the company name had changed after the claimant’s mark was drawn to the defendant’s attention, to use a logo even more like the claimant’s than before. 7.87 In Asprey138 a Mr William Asprey, a member of the family which had founded

(but no longer owned) the Asprey luxury goods business, had set up his own similar business, with full knowledge (obviously) of the claimant’s business, trade marks, and goodwill. The company name was ‘WRA (Guns) Limited’ but it traded as ‘William R. Asprey Esquire’. The defendant did not change the name when it learned that it was causing confusion, so the s 11(2)(a) defence did not apply.139 A similar result was reached in Cipriani: the defendant had no defence to its use of the name ‘Cipriani’ or ‘Cipriani London’ for its restaurant when the company name was ‘Cipriani (Grosvenor Street) Limited’ and Mr Giuseppe Cipriani was not trading in person, but through the company.140 However, in Stichting,141 the defendant was able to rely on the defence where it had used its trade name for some years in ignorance of the claimant’s mark and without any confusion arising. Section 11(2)(b): other descriptive terms 7.88 Section 11(2)(b)/Article 12(b) CTMR provides a defence for the use of indications

of the ‘kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services’. This defence seeks to protect a trader’s right to make honest use of a descriptive term applicable to his goods or services.142

133

See the company name rules, at 9.110. See comments in Scandecor Developments AB v Scandecor Marketing AB [2001] 2 CMLR 30, [2002] FSR 7, and Reed (n 24) at [116]. 135 See n 13 and Cipriani (n 73) on appeal: [2010] EWCA Civ 110, [2010] RPC 16 (CA). 136 But see Art 14 of the proposed Directive/Art 12 of the proposed CTMR. 137 NAD Electronics, Inc v NAD Computer Systems Ltd [1997] FSR 380, 398–9. 138 See n 129. 139 But note the cautious approach taken by Peter Gibson LJ at [45]: he considered it necessary to see exactly what the defendant intended to do using his own name. 140 Cipriani (n 73) at [137]–[141] upheld on appeal (n 135), see summary at [72] and Fred 250 (n 128). 141 See n 85. 142 It reflects Art 17 TRIPS Agreement. 134

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Section 11 In British Sugar Jacob J held that the defence would apply only where the use made 7.89 of the mark by the defendant was purely descriptive.143 Similarly, the CJEU in the Windsurfing case144 said that the problems of registering a mark consisting of a geographical name would not preclude third parties from using the name descriptively, as an indication of geographical origin.145 The test appears to be: is the use complained of likely to be seen by the average consumer as distinctive or descriptive? Where the defendant obtained surplus stock of the claimant’s ‘Laphroaig’ whisky which had been sold for blending, and sold it as a single malt whisky in bottles labelled ‘Islay single malt Scotch whisky from Laphroaig Distillery’ there was a real issue to be tried as to whether the use of the mark was merely descriptive, as well as to whether the defendant’s activities were honest practices.146 By contrast, in Holterhoff,147 where the CJEU held that the defendant’s descriptive use of the term ‘Spirit Sun’ fell outside Article 5 because it was not used to indicate origin, no question arose of having to apply an Article 6 defence.148 In Magic Tree149 the claimants’ marks comprised the outline of a stylised fir tree 7.90 and had been used for many years for ‘Magic Tree’ car air fresheners. The defendant sold car air fresheners in the shape of a fir tree decorated with snow and flashing lights, under the brand name ‘CarPlan’. The defendant relied on s 11(2)(b), saying that the shape of a Christmas tree was an indication of the quality of its product as a Christmas decoration. It also claimed that the use was in accordance with honest practices. Kitchin J held that the defendant had no need to produce an air freshener in the shape of a fir tree, even at Christmas. Its tree gave the impression of a commercial connection to the claimants and was, without due cause, detrimental to the distinctive character or the repute of the marks. As a result, it could not be in accordance with honest practices and there was no defence under s 11(2)(b). The defendants in L’Oréal v Bellure argued that their comparison lists described a 7.91 characteristic of the goods—their smell—but this was not use in accordance with honest practices, nor permitted by the CAD, as the goods were imitations of the claimant’s products. The defence failed.150

143 British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, 299. See eg D Green & Co (Stoke Newington) Ltd and Plastico Ltd v Regalzone Ltd [2002] ETMR 22. 144 Windsurfing Chiemsee Produktions- Und Vertriers GmbH v Boots Und- Segelzubehor Walter Huber and Franz Attenberger, Cases C-108/97 and 109/97, [1999] ECR I-2779, [2000] Ch 523, [1999] ETMR 585 at [28]. 145 See also Gerolsteiner Brunnen GmbH & Co v Putsch GmbH, Case C-100/02, [2004] ECR I-691, [2004] RPC 39. 146 Allied Domecq v Murray McDavid Ltd [1997] FSR 864. 147 Holterhoff v Freiesleben , Case C-2/00, [2002] ECR I-4187, [2002] FSR 52, [2002] ETMR 79. 148 The questions referred to the CJEU related only to Art 5, not to Art 6. 149 Julius Sämaan Ltd v Tetrosyl Ltd (‘Magic Tree’) [2006] FSR 42. 150 See CA [2010] EWCA Civ 535, [2010] RPC 23 at [44]–[45] following the CJEU decision in Case C-487/07 (n 65).

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Infringement of Trade Marks Section 11(2)(c): use necessary to indicate intended purpose 7.92 Section 11(2)(c) (equivalent to Article 6 of the Directive, Article 12(c) CTMR)

provides that it is no infringement to use a trade mark ‘where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts)’. 7.93 In BMW v Deenik151 the defendant was sued for advertising that he would service

BMW cars, although he was not an authorised dealer. One question referred to the CJEU was whether the defendant had a defence under Article 6. It was held that BMW could object to Mr Deenik’s advertising only if it seriously damaged the reputation of BMW or if there was a likelihood that the public would be led to believe that Mr Deenik was authorised to repair BMWs. The mere fact that the use of a mark in otherwise honest and fair advertising lent an aura of quality to the advertiser’s business was not a legitimate reason for the trade mark proprietor to object to it. 7.94 By contrast, in the English case of Aktiebolaget Volvo v Heritage152 an ex-Volvo

dealer had used the expression ‘Independent Volvo specialist’ on signage with prominence given to the word Volvo. He wrote to his clients in deceptive terms, suggesting that he was still an authorised Volvo dealer. He was unable to rely upon s 11(2) as his use was not in accordance with honest practices. 7.95 In Gillette153 both parties sold razors with replaceable blades and also sold the

replacement blades. The defendant sold blades under its own Parason mark, but the packaging bore eye-catching wording to the effect that the blades were compatible with both the Parason and Gillette handles. The Finnish court asked whether the defendant had a defence of ‘necessity’ and the CJEU replied that it would be necessary to use a mark in order to indicate the intended purpose of a product where it was the only means of providing the public with comprehensible and complete information about that purpose, to allow competition in the market. 7.96 Portakabin154 was a keywords case, where the defendant used the Portakabin mark

and permutations of it to drive traffic to its website advertising its business of selling and leasing new and second-hand mobile buildings, including those made by Portakabin. The CJEU held that the legitimacy of the use would depend on the Google France test155 of the impact of the advertising on the average consumer, whether on the facts use was in accordance with honest practices, and also on whether Portakabin had legitimate reasons to prevent the resale.156 Some similar issues (relating

151 152 153 154 155 156

Case C-63/97 (n 51). [2000] FSR 253. See n 127. See n 32. See 7.23. See 7.101 et seq.

196

Section 11 both to the Article 6 defence and exhaustion of rights) arose in Viking Gas A/S v Kosan Gas.157 Kosan Gas sold gas in bottles which bore its name and logo, both of which were registered as CTMs. Existing customers could exchange an empty bottle for a full one filled by Kosan Gas, paying only the price of the gas purchased. Viking Gas sold refilled Kosan bottles to independent dealers to which it had attached adhesive labels bearing its name. Kosan’s marks remained on the bottles. The CJEU held that this was not an infringement unless there was serious damage to the reputation of Kosan’s marks, or the use gave the false impression of a commercial connection between the parties.158 In BMW v Round & Metal,159 the defendant sold replicas of alloy wheels for BMW 7.97 and mini cars to dealers and supplied adhesive stickers with BMW logos together with the wheels. They relied upon the garages drawing to the attention of the end-users that its wheels did not emanate from BMW. That was held insufficient to prove that there was no possibility of confusion from its use of the signs, especially as it was also likely that subsequent purchasers of the cars would be confused. The use was not necessary to indicate the intended purpose of the wheels, which could have been done by using wording such as ‘BMW style’. As a result, the defendant had not acted in accordance with honest practices in industrial and commercial matters. Section 11(3): unregistered concurrent rights Section 11(3) deals with unregistered concurrent rights. It is based on Article 6(2) 7.98 of the Directive, protecting the use of a mark in a particular locality, and its nearest equivalent is Article 111 CTMR. The principle is that registration of a trade mark should not interfere with the continued use of unregistered local marks of earlier provenance, which could be protected in the UK by a passing off action. The provision protects earlier unregistered trade mark rights or other signs which are of no more than local significance and which have been used continuously by the proposed defendant or a predecessor in title of his from before the date of first use or of registration (whichever is earlier) of the registered mark. Continuous use for this purpose is a commercial concept; some interruption might be acceptable if goodwill was maintained.160 Section 11(3) refers only to use of the earlier sign, and does not specifically say that such use must have given rise to goodwill in the earlier mark but, without such goodwill, the earlier mark would not be capable of being protected ‘by virtue of any rule of law’ in the UK, as that is a prerequisite to a passing off action.

157

Viking Gas A/S v Kosan Gas A/S, formerly BP Gas A/S, Case C-46/10, [2011] ECR I-06161, [2011] ETMR 58, 14 July 2011. 158 A case in which refi lled gas bottles did give a false impression of such a connection was Schütz (UK) Ltd, Schütz GmbH & Co KGaA v Delta Containers Ltd, [2011] EWHC 1712 (Ch), 5 July 2011. 159 Bayerische Motoren Werke AG v Round & Metal Ltd [2012] EWHC 2099 (Pat), [2013] FSR 18. 160 See DaimlerChrysler AG v Alavi [2001] RPC 42.

197

Infringement of Trade Marks 7.99 The reference to the marks being used in a particular locality appears to restrict the

use of this provision in two ways. First, it seems that the defence will only apply to use in the original locality in which prior use has been established. So, the proprietor of the earlier right will not be entitled to expand the geographical area in which he exploits his mark by reliance upon the use made of the mark in the initial locality. Such expansion would lead to infringement.161 Secondly, it also seems clear that this subsection will not protect the use of an earlier unregistered mark which is used throughout the UK, due to the reference to the earlier right being a right which applies only in a locality.162 See discussion of Article 8(4) CTMR in 3.82. 7.100 The proprietor of an unregistered mark which has been used more than merely

locally before use or registration of the registered mark began will, it seems, need to seek a declaration of invalidity of the registered mark under s 47, assuming that his right to apply under s 47 has not been affected by acquiescence for a continuous period of five years or more, under s 48.

N CONSENT AND EXHAUSTION OF RIGHTS 7.101 The concept of the exhaustion of trade mark rights is long-established and was

applied in the UK163 and in other Member States of the EU prior to the harmonisation of trade mark law in the Community. It permits a trade mark proprietor to control only the initial marketing or release of his goods on to the market; once he has done so his rights are ‘exhausted’ and he cannot seek subsequently to restrain other dealings with them, at least not by relying on his trade mark rights. 7.102 Prior to the harmonisation of trade mark law, conflicts arose in the Community

between national, territorially limited trade mark rights and the essential Treaty aims of free movement of goods and services and free competition. The CJEU jurisprudence developed so as to allow derogation from the fundamental principle of free movement of goods only where a defendant’s activities harmed the specific subject matter or function of a trade mark. Alternatively, where a trade mark proprietor was using his trade mark right to block free movement of goods for reasons which were not objectively justifiable—perhaps where the market was deliberately divided in some way—the principles of free movement of goods prevailed.164 So by the time the Directive and CTMR came into force, these competing principles

161

See Redd (n 128). See Frost Products Ltd v FC Frost Ltd [2013] EWPCC 34, [2013] ETMR 44. 163 See eg Revlon, Inc v Cripps & Lee Ltd [1980] FSR 85; Colgate-Palmolive Ltd v Markwell Finance Ltd [1989] RPC 497. 164 See analysis by Laddie J in Glaxo Group Ltd v Dowelhurst [2000] FSR 529 and eg the Centrafarm cases such as Centrafarm BV v Winthrop BV, Case 16/74, [1974] ECR 1183, [1974] 2 CMLR 480; see also Doncaster Pharmaceuticals Ltd v Bolton Pharmaceutical Co 100 Ltd [2007] FSR 3, [2006] ETMR 65. 162

198

Consent and Exhaustion of Rights had been well ventilated, and they therefore provide for exhaustion of rights.165 The current exhaustion provisions are found in s 12 of the 1994 Act, Article 7 of the Directive, and Article 13 CTMR. They stop a trade mark proprietor from objecting to use of his mark in relation to goods which have been put on the market in the EEA under that mark by him or with his consent, unless there are legitimate reasons for him to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired. Third parties may make use of a registered mark without infringing it (hardly 7.103 surprisingly perhaps) as long as the use of the mark is in relation to legitimate goods/services and the use is in accordance with honest practices in industrial or commercial matters. Many of the cases relating to the CAD (see 7.62 et seq) deal with these issues. Once the proprietor has obtained his initial economic advantage from his mark, by controlling the first sale of goods/services under that mark on to the market, in principle his rights cease. So, for instance, where a retailer uses a trade mark to advertise that he has legitimately marked goods for sale, or to display genuine goods in a store, there will be no infringement. It is irrelevant whether the first marketing of the goods took place in the same state or in another Member State. Those principles still hold good: see, for instance, Portakabin, discussed at 7.96. If a trade mark proprietor sells different qualities or types of goods under the same 7.104 mark in different territories, that is his prerogative, but it does not permit him to object to the goods being put into free circulation.166 However, if for some reason the reseller is not acting in accordance with honest practices, or he is otherwise damaging the reputation of the mark, the proprietor may still be able to rely on his trade mark rights. If, for instance, ‘seconds’ were sold as perfect goods, or if the condition of goods has been changed, such as by inserting replacement battery cells into the claimant’s marked battery cases,167 the proprietor would be able to object. For goods to qualify as the proprietor’s own goods for these purposes it is not 7.105 enough that they were manufactured to his specification; they must have been adopted by him. In Primark Stores Ltd v Lollypop Clothing Ltd 168 the defendant had acquired a supply of jeans bearing Primark’s mark ‘Denim Co’ on sewn-in labels and the name ‘Primark’ on swing tags. When Primark sought summary judgment for infringement, the defendant argued that it was possible that the jeans were made and labelled as part of a genuine order placed by Primark. Hence, the

165

In line with existing authority on the point: Bristol-Myers Squibb v Paranova , Cases C-427/93, C-429/93, and C-436/93, [1996] ECR I-3457, [1997] 1 CMLR 1151, [1997] FSR 102. 166 Dansk Supermarked A/S v A/S Imerco, Case 58/80, [1981] ECR 181, [1981] 3 CMLR 590. 167 PAG Ltd v Hawk-Woods Ltd [2002] FSR 46. But probably not by refi lling gas canisters—see 7.96. 168 [2001] FSR 37, [2001] ETMR 30.

199

Infringement of Trade Marks jeans were Primark’s jeans and it had a defence under s 10(6). This argument was rejected. It was held that the jeans had to have been adopted by Primark after it had been able to assess their quality. Although in one sense they were not counterfeit jeans, they were not Primark’s jeans either, and s 10(6) did not apply. This decision may be of particular relevance in cases where, as sadly is often the case, a manufacturer sells excess production of goods to third parties. 7.106 In Dior v Evora169 the CJEU considered what is meant by a proprietor’s legitimate

interest. Dior owned a number of trade marks consisting of illustrations of the packaging for its perfume bottles. It distributed its perfumes through a selective distribution system. The defendant, not a selected retailer, obtained legitimate products by parallel imports and advertised them by leaflets showing the bottles and packaging, in a manner customary for retailers in the defendant’s market sector. The CJEU was asked whether the ‘advertising function’ of the mark was damaged if the luxurious image of the mark was affected by such activities. It held that such advertisements must be permitted once the trade mark rights in the goods have been exhausted; it was necessary to strike a balance between the respective legitimate interests of the trade mark owner and the retailer. However, the proprietor might be able to rely on Article 7(2) of the Directive to oppose the use of the trade mark to advertise legitimate goods if it was established that such use of the mark seriously damaged its reputation. That was a question of fact for the national court.

O EXHAUSTION UNDER SECTION 121 OF THE 1994 ACT170 7.107 Where goods have been put on the market under a mark by the proprietor or with

his consent, there is no infringement by use of ‘that’ mark in relation to those goods. The straightforward part of s 12(1) is the reference to ‘that’ trade mark; it covers all national trade marks which are identical to the original mark used and owned by the same proprietor. In addition, sale by a licensee of the proprietor is equivalent to sale by the proprietor himself.171 But difficulties have arisen in relation to the meaning of the term ‘with his consent’ and in relation to the relevance of the place of first marketing. In Martin Y Paz Diff usion SA v David Depuydt,172 the CJEU held that a proprietor was entitled to withdraw his earlier consent (as part of a sort of market-sharing agreement) to use of his mark by a third party.

169 Parfums Christian Dior v Evora , Case C 337/95, [1997] ECR I-6013, [1998] 1 CMLR 737, [1998] RPC 166. 170 Equivalent to the Directive, Art 7, and the CTMR, Art 13. 171 See IHT International Heiztechnik GmbH v Ideal-Standard GmbH, Case C-9/93, [1994] ECR I-2789, [1995] FSR 59. 172 Case C-661/11, [2014] ETMR 6. The Court based its fi ndings on the Directive; it is not clear whether issues of contract or estoppel were raised by the parties or applied by the Belgian court.

200

Exhaustion under Section 12(1) Consent In Peak Holding173 a Factory Outlet shop offered a huge consignment of garments 7.108 for sale under the claimant’s mark. The goods were from previous years’ collections and had been sold to Copad International in France, subject to a contractual obligation to sell only a fraction of the goods in France and otherwise not to resell the bulk of the goods in European countries other than Russia and Slovenia. Factory Outlet claimed it had no knowledge of that contractual restriction when it purchased the consignment of goods from Copad. The CJEU held: ‘A sale which allows the proprietor to realise the economic value of his trade mark exhausts the exclusive rights conferred by the Directive, more particularly the right to prohibit the acquiring third party from reselling the goods.’174 There was no exhaustion merely by importing the goods into the EEA or stocking them for sale, if they were not sold by or on behalf of the trade mark proprietor to an independent third party trader. On the other hand, once the sale took place to Copad in France, the trade mark rights were exhausted and the possibility that territorial restrictions on the right to resell the goods contained in the contract had been breached gave rise only to contractual remedies, not to a potential trade mark infringement by Factory Outlet. In contrast, in Copad SA v Christian Dior Couture175 Dior had granted a licence 7.109 to sell ‘luxury corsetry goods’ under its mark. The licence contained provisions designed to maintain the prestige of its mark that the licensee would not sell to discount stores etc. The licensee got into financial difficulty and asked Dior for permission to sell outside its selective distribution network, which Dior refused to give. Nonetheless, the licensee sold some of the goods to the Copad discount store. Dior sued both of them for trade mark infringement. The CJEU was asked whether in such circumstances the goods had been sold with the consent of the proprietor so it could rely on trade mark law or whether it was limited to contractual remedies. The decision from the CJEU is interesting in the emphasis it places on the prestige attaching to luxury goods. It held that the quality of luxury goods results not only from their material characteristics but also from their ‘allure and prestigious image’, so that damage to the aura of luxury would affect ‘the actual quality of those goods’. Putting the goods on the market in breach of an unequivocal contractual term falling within Article 8(2) of the Directive176 and designed to maintain the quality of the licensee’s goods would mean that the goods were sold without the trade mark proprietor’s consent. On the other hand, if the national court found that there was such consent, the trade mark proprietor would only be entitled to object to the sales by the discount store if that would damage the reputation of the

173 Peak Holding AB v Axolin-Elinor AB , Case C-16/03, [2004] ECR I-11313, [2005] 1 CMLR 45, [2005] Ch 261. 174 Peak Holding (n 173) at [40]. 175 Copad SA v Christian Dior Couture SA , Case C-59/08, [2009] ECR I-3421, [2009] FSR 22. 176 NB this Article has no direct equivalent in the 1994 Act, see s 9(1) and 6.11 et seq.

201

Infringement of Trade Marks trade mark. The case raises tricky questions as to when a mark will be deemed to have the necessary level of allure and prestige. International exhaustion 7.110 Prior to the harmonisation of trade marks law in the Community, certain Member

States, including the UK, applied the exhaustion principle to goods sold with the proprietor’s consent anywhere in the world. Questions arose as to whether individual national laws on international exhaustion had survived harmonisation, despite the wording of s 12 and the equivalent provisions. Application of that principle in one Member State might have led to goods being in free circulation throughout the Community, although no exhaustion would have occurred according either to the terms of the Directive or national trade mark laws based upon it. It is now clear, from the cases discussed in the following paragraphs, that trade mark rights are exhausted only by the first marketing of goods within the EEA. 7.111 In Silhouette177 the defendant imported genuine but out-of-fashion sunglasses bear-

ing the claimant’s mark from outside the EEA, where they had been marketed with the proprietor’s consent but subject to a condition restricting re-export. The question for the CJEU was whether the claimant’s Austrian trade mark rights had been exhausted by the sale. The CJEU held that the Directive effected a complete harmonisation of national trade mark laws, and Member States might not provide in their domestic law for international exhaustion. That decision was reiterated in Sebago,178 in which the goods were genuine but imported from El Salvador. 7.112 Zino Davidoff v A & G Imports concerned the importation from outside the EU of

toilet water bearing the Davidoff trade mark ‘Cool Water’. Davidoff ’s distribution agreements contained territorial restrictions and required the distributor to impose similar restrictions on sub-distributors and agents. Laddie J held that the effect of Silhouette and Sebago was that ‘no Member State may impose international exhaustion, i.e. an automatic and indefeasible termination of the proprietor’s rights, by the back door’.179 However, he asked the CJEU whether in the circumstances, the proprietor’s consent could be implied. The CJEU said that it might, but consent could not be inferred unless the goods were placed on the market in circumstances which unequivocally showed that the proprietor had ‘renounced’ his right to oppose resale of the goods in the Community.180

177

Silhouette International Schmied GmbH & Co KG v Hartlauer Handelsgesellschaft mbH, Case C-355/96, [1998] ECR I-4799, [1998] FSR 729. 178 Sebago, Inc v GB-Unice SA, Case C-173/98, [1999] ECR I-4103, [2000] RPC 63, [1999] ETMR 681. 179 [1999] RPC 631, [1999] ETMR 700, [26]. 180 Joined Cases C-414/99, C/415/99, and C-416/99 [2001] ECR I-8691, [2002] RPC 20, [2002] Ch 109. Also Coty Prestige Lancaster Group GmbH v Simex Trading AG Case C-127/09, [2010] ECR I-04965, [2010] ETMR 41, [2010] FSR 38.

202

Section 12(2) Davidoff was joined to another reference from the UK: Levi Strauss & Co v Tesco 7.113 Stores Ltd. Tesco had tried unsuccessfully to buy ‘501’ jeans directly from Levi. Instead, it obtained supplies of imported jeans, all of which were genuine, first quality goods and although Tesco was aware of Levi’s intentions towards them, the jeans were not marked ‘not for sale in the EU’. Levi sought to rely upon contractual limitations placed upon its US and Canadian outlets to say that it had not consented to the importation. Following the CJEU reference, Pumfrey J held that only express consent to marketing within the EEA would have exhausted Levi’s rights, and no reliance could be placed on s 10(6) to override the express provision of s 12.181 However, in Van Doren182 the CJEU reiterated that the burden of proving consent 7.114 should not be a means to enable a trade mark proprietor to partition the internal market by restricting the free movement within the EEA of goods which had been placed on the market with his consent. Where there is such a risk, the burden will fall on the trade mark proprietor to show that the goods were first marketed outside the EEA. In Oracle v M-Tech,183 the defendant purchased new disk drives from a broker in 7.115 the USA; the disks were genuine and had originally been supplied by Oracle to purchasers in China, Chile, and the USA. However, Oracle contended that the goods had been put on the market in the UK without its consent and so infringed its trade marks. The defendant could adduce no evidence that there had been consent, but raised ‘Euro-defences’ (discussed at 7.118). Kitchin J held that there was only one exception to the general rule concerning exhaustion of rights—consent—so summary judgment was granted against the defendant.

P SECTION 122 Section 12(2) raises a separate issue: what are legitimate reasons to oppose the 7.116 resale of marked products, in particular where the condition of the goods has been changed or impaired after they have been put on the market. This proviso again stems from the Community law precedents on this subject, arising mainly in innumerable cases about the parallel importation of pharmaceuticals, prompted by price differences between Member States. Generally, in order to comply with

181

Levi Strauss & Co v Tesco Stores Ltd [2002] 3 CMLR 11, [2003] RPC 18. See by contrast Mastercigars Direct Ltd v Hunters & Frankau Ltd [2007] EWCA Civ 176, [2007] RPC 24. 182 Van Doren + Q GmbH v Lifestyle Sports + Sportswear Handelsgesellschaft mbH, Case C-244/00, [2003] ECR I-3051, [2003] 2 CMLR 6, [2003] ETMR 75. 183 Oracle America, Inc (formerly Sun Microsystems, Inc) v M-Tech Data Ltd [2012] UKSC 27, [2012] 1 WLR 2026.

203

Infringement of Trade Marks local legislation on sales of pharmaceuticals, parallel importers need to repack the drugs, for instance so that the packets contain an appropriate number of pills, or include a translated information leaflet. In other cases, where the trade marks are not the same in the different Member States, the importers needed to re-mark and hence relabel or repack the goods. Numerous cases considered whether such repacking or relabelling was legitimate, and when it could be successfully opposed by the trade mark proprietors. A full analysis of the cases would be beyond the bounds of this book.184 7.117 The main principles were set out by the CJEU in Bristol-Myers Squibb v Paranova

A/S.185 Without the trade mark owner’s consent, the parallel importer had repackaged pharmaceutical goods, or had re-affi xed the trade mark to the goods without altering the packaging. The CJEU held that where an importer has purchased a product in a Member State where it was placed on the market by the trade mark owner, and repackaged the product, the trade mark owner may object unless certain conditions are met: (a) enforcement of the trade mark right would artificially partition the market; (b) the repackaging does not adversely affect the original condition of the product; (c) the parallel importer complies with certain obligations as to labelling (for example identifying him as the importer); (d) the new packaging does not damage the reputation of the mark; and (e) the importer gives notice and provides samples to the trade mark proprietor. Failure to give notice will make the repackaging an infringement, giving rise to damages or an account of profits.186 Repackaging may be justified by local requirements but the trade mark owner may oppose the use of his trade mark on the repackaged product if the repackaging is unnecessary.187 For a recent CJEU case on point, see Orifarm v Merck.188

Q EUROPEAN DEFENCES 7.118 Apart from the specific defence based on exhaustion of rights, when faced with an

allegation of infringement of trade mark there may be other defences to raise based upon EU law. For instance, a defendant may claim that restrictions placed upon a

184

See Bellamy and Child, European Union Law of Competition (Oxford University Press, 7th edn, 2013); Tritton, Intellectual Property in Europe (Sweet & Maxwell, 3rd edn, 2007, new edn due 2014). 185 See n 165. 186 eg Hollister, Inc and Dansac A/S v Medik Ostomy Supplies Ltd [2012] EWCA Civ 1419, [2013] ETMR 10. 187 See too Boehringer Ingelheim KG v Swingward Ltd , Case C-143/00, [2002] ECR I-3759, [2002] ETMR 78; and Boehringer (No 2), Case C-348/04, [2007] ECR I-3391, [2007] ETMR 71, CA [2008] EWCA Civ 83, [2008] 2 CMLR 22, [2008] ETMR 36. Also see Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd [2013] EWHC 3624 (Ch), 20 November 2013. 188 Orifarm AS and ors v Merck & Co, Inc, Joined Cases C-400/09 and C-207/10, [2011] ECR I-07063, [2011] ETMR 59, 28 July 2011.

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Acquiescence licensee’s power to resell the goods are contrary to Article 101 or that the claimant is disentitled from enforcing his trade mark right as an abuse of a dominant position contrary to Article 102. See 6.51 et seq. However, it must be said that to date the so-called ‘Euro-Defences’ have not met 7.119 with much success in the context of trade mark law in the UK courts. Moreover, in the light of the exhaustion rules just discussed, such defences may rarely be worth running. For instance, an attempt to defend an infringement action on the basis that the proprietor’s marketing practices breached EU competition rules failed, on appeal to the Supreme Court, in Oracle v M-Tech (see 7.115).

R UK COMPETITION RULES UK rules on restraint of trade may be relevant to the exercise of trade mark rights. 7.120 In WWF World Wide Fund for Nature v World Wrestling Federation, Inc189 the well-known conservation charity sued the defendant for breach of an agreement made when the parties were in dispute in a number of territories as to their respective rights to use the initials ‘WWF’. The defendant had complied with the limits placed upon its use of the initials for some years, but then ceased to do so. It sought to defend its breaches on the basis that the agreement represented an unreasonable restraint of trade. It failed, on the facts, as the agreement represented a genuine settlement protecting genuine interests. Such a defence might only succeed where there was a real fetter on one party’s trade, going beyond the scope of protection of the other’s trade mark rights. An example of such a case was BAT/Toltecs,190 in which a restrictive agreement was unjustifiably based upon an invalid and probably irrelevant trade mark.

S ACQUIESCENCE Under s 48, where the proprietor of an earlier trade mark or other right has acqui- 7.121 esced for a continuous period of five years in the use of a registered trade mark in the UK, he loses any entitlement to rely on that earlier trade mark or other right to apply for a declaration that the later trade mark is invalid, or to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was applied for in bad faith. Article 54 CTMR makes the same provision for CTMs.

189 190

[2002] FSR 33, [2002] ETMR 53 (CA). BAT v Commission, Case C-35/83, [1985] ECR 363, [1985] 2 CMLR 470.

205

Infringement of Trade Marks 7.122 A defendant in a trade mark infringement action may seek to raise defences based not

upon the 1994 Act itself, but upon general equitable principles, and may claim that the claimant is disentitled by reason of his actions, his conduct, or his inactivity to the relief which he seeks. The defendant might be able to say by way of defence that the claimant knew of his use of the mark, but either consented to it or led the defendant in some way to believe that he would not object to it, so that, in reliance upon that indication, the defendant spent time and money in building up his business under that mark, leading to an estoppel.191 Mere acquiescence or delay not amounting either to estoppel or to acquiescence under s 48 would not amount to a defence. 7.123 However, it is not clear whether such a defence could be raised successfully in

addition to the statutory provision as to acquiescence in s 48 of the 1994 Act. The possibility of relying upon general principles of acquiescence if s 48 did not apply was raised in Bud.192 The Court of Appeal held that a defence of equitable (rather than statutory) estoppel failed on the facts; but it did not suggest that it might not apply in a suitable case, so the issue perhaps remains open for argument. After the reference to the CJEU, the possibility of relying on honest concurrent use would seem likely to be a better option. That was the eventual result in Bud.193

T PROTECTION OF WELLKNOWN TRADE MARKS: SECTION 56 7.124 Section 56 of the 1994 Act introduced into English law a special protection for

well-known trade marks. It does not appear to have been much used or, at least, used with any success. This statutory form of relief bears some resemblance to a passing off action, but permits a mark to be protected here whether or not its proprietor carries on business or has any goodwill in the UK.194 The well-known mark does not need to rely upon a trade mark registration. 7.125 Section 56(1) defines a well-known trade mark, entitled to protection under

Article 6bis of the Paris Convention, as ‘a mark which is well-known in the United Kingdom as being the mark of a person’ who is a national of a Convention country or established in a Convention country, meaning a country (other than the UK) which is a party to the Paris Convention or to the World Trade agreement. The protection is offered ‘whether or not that person carries on business or has any goodwill, in the United Kingdom’. The section therefore envisages marks being

191

See the broad test in eg Habib Bank [1981] 1 WLR 1265; Taylors Fashions [1982] QB 133. per Norris J, [2008] RPC 21, in CA [2009] EWCA Civ 1022, [2010] RPC 7. 193 See Case C-482/09, [2011] ECR I-08701, [2012] RPC 11, [2012] ETMR 2 and on return to the CA: [2012] EWCA Civ 880, [2012] 3 All ER 1405, [2013] RPC 12, [2012] ETMR 48. See also 3.89. 194 See by way of contrast 8.20 – 8.22 on foreign goodwill. 192

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Protection of Well-Known Trade Marks well known in the UK even where they have not been used here at all, or not used enough to have built up goodwill in the UK. In deciding whether a mark is well known, account will be taken of ‘the knowledge of the trade mark in the relevant sector of the public . . . which has been obtained as a result of the promotion of the trade mark’.195 Certainly, it seems to be accepted that as an exceptional protection is offered by s 56, an equally exceptional reputation is necessary.196 It also seems probable that the mark should be well known in relation to particular goods or services.197 Where, exceptionally, such a mark exists, its proprietor is entitled to restrain by 7.126 injunction the use of an identical or substantially similar trade mark in relation to identical or similar goods or services, where the use is likely to cause confusion. The right to the injunction will arise where there is sufficient similarity of marks/goods or services and a likelihood of confusion.198 Naturally, where the proprietor is relying upon a well-known mark which has no goodwill in the UK (for where there is such goodwill, presumably a passing off action would be brought), the likelihood of confusion would not lead to a likelihood of damage or, at any rate, quantifiable damage, and this is not a requisite factor in the application of the section. In this respect, proceedings under s 56(2) differ from passing off proceedings. Indeed, the section makes no provision for any award of damages where such rights are infringed in this way, and the only relief which may be sought is an injunction. Passing off proceedings would therefore be a preferable option, if viable. There are two provisos to s 56(2). First, the right may be lost if the proprietor 7.127 acquiesces in the use of the ‘infringing’ mark (see s 48). Secondly, as in the case of infringements of UK registered trade marks, nothing in s 56(2) affects the continuation of any use of a trade mark begun before the commencement of the 1994 Act. Section 56(3), refers to the bona fide use of such a trade mark begun before 3l October 1994, and there is no guidance as to the meaning of these words in this context. It seems probable that an objective test would be applied. A similar right to seek an injunction is conferred on protected national emblems 7.128 etc by ss 57 and 58.199

195

See the TRIPS Agreement, Art 16(2). See also McDonald’s Corp v Joburgers Drive-In Restaurant (Pty) Ltd [1997] (1) SA 1 for one view of what is meant by a well-known mark, also discussed in Nuño v Franquet, Case C-328/06, [2007] ECR I-10093, [2008] ETMR 12, Melly ’s trade mark application [2008] ETMR 41. 196 See Opinion of AG Jacobs in General Motors Corp v Yplon SA (‘Chevy’), Case C-375/97, [1999] ECR I-5421, [1999] ETMR 950; and Jacob J in Philips v Remington at first instance, see [1998] RPC 283, 313, [1998] ETMR 124, 157. 197 Paco Paco/Paco Life in Colour trade marks [2000] RPC 451. 198 Again, see Philips v Remington (n 196). 199 See 2.127.

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Infringement of Trade Marks

PROTECTION OF NON-TRADE MARK RIGHTS U GEOGRAPHICAL INDICATIONS/ DESIGNATIONS OF ORIGIN 7.129 The scope of the protection of ‘protected designations of origin’ (PDOs) and ‘pro-

tected geographical indications’ (PGIs) is discussed at 2.123–2.126. Such rights may well be linked to or duplicate the protection of a collective mark (as to which see Chapter 4). 7.130 Protected Designations of Origin (PDO) and Protected Geographical Indication

(PGI) rights may be enforced in the UK by trading standards authorities, but they also confer directly enforceable rights upon individuals or, more realistically, trade associations. In Consorzio del Prosciutto di Parma v Asda 200 the CJEU held that Regulation (EC) 2081/92 created not only rights but also obligations for individuals, on which they may rely against other individuals before national courts. Generally, the position is that there will be infringement of a PDO or PGI if there is commercial use of the name for products which are not authentic, use of an imitation of the name, or other false or misleading indications as to the provenance, nature, etc of the products. In the Parma Ham case, the CJEU held that such designations are protected against improper use by third parties seeking to profit from the reputation which they have acquired. They are intended to guarantee the authenticity of the product: that it comes from a specified area and has particular characteristics. The issue was whether objection could be taken to genuine Parma ham being sliced and packaged in England, yet sold under the PDO. The CJEU held that such a limitation on the use of the PDO would have to be justified, as other wise it had equivalent effect to a quantitative restriction on exports, and in any event the limitation could not be enforced as it had not been properly publicised.201

V COMPANY NAMES AND DOMAIN NAMES 7.131 Trade mark infringements often involve defendants whose company name, trade

name, or and/or domain name(s) are also seen to be too close to the claimant’s marks. Apart from seeking relief as part of a trade mark infringement or passing off action, there are separate procedures which may be adopted to resolve such conflicts. These are discussed at 9.13 et seq. 200 Consorzio del Prosciutto di Parma v Asda Stores Ltd , Case C-108/01, [2003] ECR I-5121, [2003] 2 CMLR 21, [2004] ETMR 23. 201 See too Anheuser-Busch, Inc v Budějovický Budvar, Case C-96/09, [2011] ECR I-02131, [2011] ETMR 31 about ‘Bud’ beer; Commission of the European Communities v Germany, Case C-132/05, [2008] ECR I-957, [2008] ETMR 32, about Parmesan cheese; Bavaria NV v Bayerischer Brauerbund eV, Case C-343/07, [2009] ECR I-5491, [2009] ETMR 61, 2 July 2009, about ‘Bayerisches Bier’.

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8 PASSING OFF

A INTRODUCTION B REPUTATION OR GOODWILL C INDICIA WHICH MAY BE PROTECTED D MISREPRESENTATION E REVERSE PASSING OFF F LIKELIHOOD OF DECEPTION G COMMON FIELD OF ACTIVITY

8.01 8.11 8.33 8.46 8.56 8.58 8.66

H CHARACTER MERCHANDISING AND CELEBRITY 8.68 ENDORSEMENT 8.74 I LIKELIHOOD OF DAMAGE J INNOCENCE, FRAUD, OR A DECISION TO LIVE 8.84 DANGEROUSLY 8.87 K DEFENCES

A INTRODUCTION Passing off actions, in one guise or another, pre-dated the first registered trade mark 8.01 law and have continued to coexist with the law of registered marks ever since. Passing off is often relied upon in conjunction with claims for registered trade mark infringement because where registered trade mark claims may fail, passing off actions may succeed.1 The basic principles regulating the tort of passing off have been settled for 8.02 many years. The great advantage that passing off actions have over the protection offered to registered trade marks is the flexibility of the concept. It is a common law action, relatively unhampered by precise definitions, which has adapted itself to the needs of commerce over the years. 2 Passing off is the nearest equivalent in UK law to the laws of unfair competition which exist elsewhere although the Court of Appeal has held that passing off does not extend into unfair competition.3 Even if a passing off action cannot stretch to the full extent of a law against unfair competition, it may be used as a means of

1 See eg Phones 4U Ltd v Phone4U.co.uk Internet Ltd [2006] EWCA Civ 244, [2007] RPC 5 at  25. 2 As noted by Laddie J in Irvine v Talksport Ltd [2002] 1 WLR 2355 at [13]. 3 L’Oréal and ors v Bellure NV [2007] EWCA Civ 968, [2008] RPC 9 at [35]–[61].

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Passing Off ensuring fair trading, 4 and may now be considered to be a ‘form of unfair competition’.5 8.03 Registered trade marks give a monopoly right to the owner. The law of passing off does

not. The common law action for passing off protects against deceptive invasions of the goodwill that is generated from trading.6 The ‘property’ is the goodwill of a business which is likely to suffer damage by virtue of a misrepresentation made by another. Passing off also catches a wider class of infringing activities. Registered trade mark infringement requires the defendant’s use to be in the course of trade, which has been interpreted by the Court of Justice of the European Union (CJEU) as meaning that it occurs ‘in the context of commercial activity with a view to economic advantage and not as a private matter’.7 Passing off is not limited in that way.8 It protects unlicensed use of another’s goodwill. ‘Such use will frequently be damaging in the direct sense that it will involve selling inferior goods or services under the guise that they are from the claimant. But the action is not restricted to protecting against that sort of damage. The law will vindicate the claimant’s exclusive right to the reputation or goodwill. It will not allow others to so use goodwill as to reduce, blur or diminish its exclusivity.’9 8.04 The simplest definition of the traditional basis of the passing off action is that ‘nobody

has any right to represent his goods as the goods of somebody else’.10 However, this definition, whilst probably accurate for the better part of a century, does not cover more recent developments and extensions to the law of passing off. Perhaps a better definition (if there is such a thing) is that ‘no man is entitled to steal another’s trade by deceit’.11 The classic form of passing off 8.05 The classic form of passing off (as a misrepresentation that one’s goods are some-

body else’s) has to be seen merely as a particular manner of committing a wrong ‘included in a wider genus’.12 8.06 Passing off is often defined or expressed by the elements that are needed to prove the tort.

The House of Lords in the Jif Lemon case13 set out those necessary elements as follows: 4

See Lord Morris in Parker-Knoll Ltd v Knoll International Ltd [1962] RPC 265, 278. Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2009] RPC 9 at [192], per Arnold J. The Court of Appeal did not disagree, [2010] EWCA Civ 110, [2010] RPC 16. 6 Phones 4U Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5 at [9], per Jacob LJ. 7 See Google France SARL v Louis Vuitton [2010] ETMR, [2010] RPC 19 at [50]. 8 See Unilever plc v Griffin [2010] EWHC 899 [2010], FSR 33 where Arnold J concluded that use of the Marmite name and livery by the British National Party could be restrained under the tort of passing off but not registered trade mark infringement. 9 per Laddie J in Irvine v Talksport [2002] EWHC 367, [2002] 1 WLR 2355 at [38], cited by Arnold J in Och-Ziff Management v OCH Capital [2011] ETMR 1, [2011] FSR 11 at [159]–[160]. 10 Reddaway v Banham [1896] AC 199, 204, per Halsbury LC. 11 See Lord Oliver in Jif [1990] 1 WLR 491, 509, [1990] RPC 341. 12 In the leading case of Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731, 742, [1979] FSR 397, 404, per Lord Diplock (‘Advocaat’ ). 13 [1990] 1 WLR 491. 5

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Introduction First, [the claimant] must establish a goodwill or reputation attached to the goods or services which he supplied in the minds of the purchasing public by association with the identifying ‘get-up’ (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically as the [claimant’s] goods or services. Second, [the claimant] must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the [claimant]. Whether the public is aware of the [claimant’s] identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the [claimant]. Thirdly, [the claimant] must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the [claimant].

Passing off cases are commonly determined by these three core elements, which 8.07 are often referred to as the ‘classical trinity’:14 (a) goodwill, (b) misrepresentation, and (c) damage or its likelihood. Each of these elements is considered in more detail later. There is an alternative formulation of the necessary elements of passing off, 8.08 which is known as the ‘extended form’ of passing off.15 Th is ‘extended form’ was first formulated in the Advocaat case, although Lord Diplock and Lord Fraser advanced different formulations each comprising five elements. It is typically applied in circumstances where suppliers of products of a particular description have sought to restrain rival traders on the ground of passing off from using that description, or a confusingly similar term, in relation to goods which do not correspond to that description.16 Examples of such descriptions include vodka, sherry, Spanish Champagne, champagne cider, elderflower champagne, and ‘Old English Advocaat’. Claims relying on the extended form of passing off are often based, in part, on a 8.09 geographical description as being part of a designation of origin. However, just following the method of preparation associated or commonly used for a product made within that geographical location will not enable a party to avoid a finding of passing off. The same conclusion follows even if the defendant’s product is indistinguishable from products produced in the particular geographical location.17

14 The ‘classical trinity’ was adopted by Nourse LJ in Consorzio del Prosciutto di Parma v Marks & Spencer plc [1991] RPC 351. 15 See, in particular, Lord Diplock’s formulation in Advocaat (n 12). 16 As Arnold J explained in Diageo North Amercia and anor v Intercontinental Brands (ICB) and ors (‘Vodkat’) [2010] EWHC 173, [2010] ETMR 17. Affirmed by [2010] EWCA Civ 920, [2011] RPC 2. 17 As Laddie J explained in Chocosuisse [1998] RPC 117 at 128 and cited in Fage UK Ltd v Chobani UK [2013] EWHC 630 (Ch), [2013] ETMR 28.

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Passing Off 8.10 Whether the judge is considering the ‘classical trinity’ or the ‘extended form’, every

case of passing off is heavily dependent on its facts. In Advocaat18 Lord Diplock approved the speech of Lord Parker in Spalding v Gamage19 in which Lord Parker had said: The basis of a passing off action being a false representation by the defendant, it must be proved in each case as a fact that the false representation was made . . . The more common cases, where the representation is implied in the use or imitation of the mark, trade mark or get-up with which the goods of another are associated in the minds of the public . . . The point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the goods of the mark, name, or get-up in question impliedly represents such goods to be the goods of the claimant, or the goods of the claimant of the particular class or quality.

B REPUTATION OR GOODWILL 8.11 The best-known definition of the kind of goodwill which is protected by the tort

of passing off was set out by the House of Lords over a hundred years ago. Lord Macnaughton held:20 ‘What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start.’ 8.12 In many cases, the goodwill of a trading entity will not be in issue. However, as

the object of passing off is to protect goodwill, it is important to appreciate the various issues that can arise in resolving disputes involving goodwill. Issues that commonly arise include ownership, territoriality, and whether goodwill attaches to the indicia of trade in issue. It is misleading to suggest that it is sufficient for the purposes of bringing a passing off action to have a reputation in the UK. What is required is that the claimant should have acquired a goodwill in the name or other distinguishing indicia in relation to a business or some form of commercial activity. That goodwill acquired does not have an independent existence, it attaches to a business.21 8.13 The first question to answer, therefore, is whether the claimant has a business bene-

fiting from a protectable goodwill. All kinds of businesses can be protected, but some kind of commercial activity does need to be carried on by the claimant before the court will accept that he or it has a protectable goodwill. The necessary commercial activity is not confined to companies or businesses and includes political 18 19 20 21

See n 12. (1915) 32 RPC 273. IRC v Muller and Co’s Margarine [1901] AC 217, 223. See Muller and Co’s Margarine (n 20).

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Reputation or Goodwill parties, trade associations, 22 charities,23 and individuals.24 For example, the Court of Appeal held that a political party engaged in the promotion of the well-being of a section of the community was engaged in a ‘commercial activity’ which generated sufficient ‘trading goodwill’ to entitle it to protection under the tort of passing off.25 More recently, the Court of Appeal has confirmed that individuals who trade on their reputation through, for example, endorsements of products, have goodwill that attaches to their name and reputation.26 Goodwill does not need to extend throughout the UK in order to support a claim 8.14 for passing off. In Brestian v Try,27 for instance, a hairdresser managed to prevent another from using the same name ‘Charles of London’ when his own reputation was based on salons in London, Wembley, and Brighton and the defendant’s business was in Tunbridge Wells. The geographical separation of the businesses was not sufficient to exclude the possibility of confusion, as customers might travel or the businesses might expand. Moreover, where there is only a local goodwill, it may still be possible to obtain a nationwide injunction.28 The localised nature of goodwill impacts on the crucial question of whom the mark 8.15 denotes and in which region. It may be that in one area the mark denotes the claimant and, in another, the defendant.29 The length of time it takes for a business to develop protectable goodwill depends 8.16 on a number of factors, including the duration of trade, the level of marketing and advertising before and after the commencement of trade, and whether the name under which the business trades is descriptive of the goods or services provided. It is a matter of fact and degree. There comes a point when the reputation may exist among such a small group of people that it will not attract the protection of a claim in passing off. The law will not protect goodwill which a reasonable person would consider to be trivial.30 Usually, it is necessary to have started trading

22

Society of Accountants and Auditors v Goodway [1907] 1 Ch 489. See eg British Legion v British Legion Club (Street) Ltd (1931) 48 RPC 555; and British Diabetic Association v Diabetic Society Ltd [1996] FSR 1, 10. 24 Irvine v Talksport Ltd [2003] FSR 35, [2003] 2 All ER 881 (CA). 25 See Burge v Haycock [2002] RPC 28 where the Court of Appeal distinguished the earlier case of Kean v McGivan and held that the ‘Countryside Alliance’ had generated protectable goodwill. Although the Court of Appeal found the opposite in Kean v McGivan [1982] FSR 119, it expressly stated that it was not formally considering whether the tort of passing off applied to political affairs. Also, the CJEU has found that not-for-profit organisations make genuine use of their marks in accordance with the essential function of a trade mark, see Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’, Case C-442-07, [2008] ECR I-9223. 26 See Irvine (n 24). 27 [1958] RPC 161. See also British Legion and British Diabetic Association (n 23). 28 See Chelsea Man Menswear Ltd v Chelsea Girl Ltd [1987] RPC 189. 29 See Bignall v Just Employment Law Ltd [2008] FSR 6. 30 See Boxing Brands Ltd v Sports Direct International [2013] EWHC 2200 at [93]–[95]; Knight v Beyond Properties Pty Ltd & ors [2007] EWHC 1251 (Ch); and Sutherland v V2 Music Ltd [2002] EMLR 28. 23

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Passing Off or at least be about to commence trading under the name or get-up, particularly if the launch of the new business, product, etc is accompanied by substantial advertising.31 8.17 Trading over the internet can, depending on the particular circumstances of the

website, be relied upon to generate goodwill in the UK, but just because a website can be accessed from anywhere in the world does not mean that that there has been use throughout the world, or more importantly, in the UK. The court will look for the existence of a website directed towards customers in the UK, or, at least, the intention on the part of the website owner to attract UK customers and provide services in the UK.32 8.18 It is immaterial whether the business has a branch or trades directly with customers

without any physical presence, as long as there are customers or ultimate customers in the UK.33 Goodwill will subsist even if the services being provided are overseas, as long as the customers are booking them from the UK.34 It does not matter that the UK-based customers are buying goods or services from overseas, particularly as so much trade is conducted over the internet and via telecommunications systems.35 8.19 It is common for goods to be manufactured in one country and sold in another,

sometimes by a distributor or local agent. This can cause difficulties in determining ownership of the goodwill generated. It is important to identify who the consumers of the goods understand to be the supplier and to be responsible for the products displaying the relevant indicia. This is a question of fact to be determined in each case. For example, a UK distributor of a US manufacturer was held to be the owner of the goodwill in a health care product because the packaging was created by the distributor and only referred to the distributor. There was no reference to the US manufacturer as the source of the product.36 Foreign goodwill 8.20 Overseas businesses may be known in the UK but if they do not trade or have

customers in this country, they only have a reputation, rather than a protectable

31

Contrast Stannard v Ray [1967] RPC 589, where a mere three weeks’ use in a small area was sufficient to build up a reputation for a mobile fish and chip van, with County Sound plc v Ocean Sound Ltd [1991] FSR 367, where six months of transmission of a radio programme under the name ‘The Gold AM’ was not sufficient to establish a reputation in such a descriptive name. 32 See Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2013] EWCA Civ 1465; 1-800 Flowers v Phonenames [2002] FSR 12, affirming [2000] FSR 697. See 7.25 et seq. In Phones 4U the issue was considered in respect of trade mark use but it would seem that the point applies to passing off as well. 33 Cipriani (n 5). 34 Sheraton Corp of America v Sheraton Motels Ltd [1964] RPC 202. 35 Cipriani (n 5), at [216]–[222]. 36 MedGen, Inc v Passion for Life Products Ltd [2001] FSR 30.

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Reputation or Goodwill goodwill, in the UK. Having a reputation in the UK is not enough to found an action for passing off, no matter how big that reputation. It must have local goodwill.37 There are numerous cases in which well-known foreign claimants have sought to 8.21 obtain relief in the UK against defendants seeking to use identical or confusingly similar names to their own or to the names of their businesses. The results of such cases have differed according to whether or not business had been done in the UK. For instance, if the claimant has an agent or representative doing business in the UK, then there will be goodwill in the UK. Alternatively, it may suffice if the foreign claimant has a number of existing customers in this country.38 Where there has been no trading at all in the UK, despite a strong foreign reputation, relief will generally be refused.39 Similarly, awareness of a brand name, coupled with preparatory steps to trade in the UK is likely to be insufficient.40 It is important to remember that trading in this jurisdiction is interpreted broadly and what matters is whether or not there are customers in the UK. It is immaterial whether there is a branch of the business in this jurisdiction, whether there is any direct trade with customers, or whether there is any physical presence in the jurisdiction.41 Determining who constitutes a UK customer may not be easy and may ‘involve tricky questions’.42 The universal presence and accessibility of the internet can make the identifying goodwill in the UK problematic. In Starbucks, the Court of Appeal explained that a TV service viewable over the internet in the UK but intended for a foreign market was insufficient to establish goodwill because there was no business connection between the UK viewers and the company responsible for the content of the transmission. The viewers in the UK were not really customers of the service.43 The court held that there was insufficient evidence to support goodwill even when there was evidence of preparatory steps to extend the subscription base to the UK. If a business is known in the UK before it commences trade here or has only lim- 8.22 ited trade here, then an overseas reputation may assist that business in acquiring a protectable goodwill which it would otherwise have struggled to acquire by virtue of its limited trade in the UK.44

37

Starbucks (n 32); Plentyoffish Media, Inc v Plenty More LLP [2012] RPC 5 at [23]–[28]; Hotel Cipriani (n 5); Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik [1984] FSR 413; Alain Bernardin et Cie v Pavilion Properties (Crazy Horse) [1967] RPC 581. 38 Cipriani (n 5); SA Des Anciens Etablissements Panhard et Levassor v Panhard Levassor Motor Co [1901] 2 Ch 513; or Globelegance v Sarkissian [1974] RPC 603. 39 See eg Athletes Foot Marketing Associates Ltd v Cobra Sports Ltd [1980] RPC 343. 40 Athletes Foot Marketing Associates Ltd (n 39). 41 per Arnold J in Hotel Cipriani (n 5)  at [216]–[217] and cited by the Court of Appeal at [113]–[115]. 42 per Arnold J in Plentyoffish (n 37) at [28]. 43 Starbucks (n 32) at [104]. 44 See Home Box Office, Inc v Channel 5 Home Box Office Ltd [1982] FSR 449.

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Passing Off 8.23 On the other hand, where there is a well-known foreign mark or name, which

enjoys a reputation in the UK, but has no goodwill here, then it may be that the difficulties of bringing a passing off action by reason of this line of authority will be of historic interest only, as an action might be brought instead under section 56 of the Trade Marks Act 1994.45 8.24 The relevant date for assessing whether the claimant has the required protectable

goodwill is the date when the defendant’s products or services were fi rst put onto the market or the misrepresentation is first made.46 Pre-trading reputation 8.25 It is not certain whether an action may be brought for passing off before the claim-

ant commences trading. If acts have been carried out in preparation for the launch of a new product, including pre-launch publicity and advertising, it may be that such an action would succeed, although this would depend upon the facts. Where rival publishers both intended to launch new magazines under the name ‘Leisure News’, the Court of Appeal found that neither of them had acquired a sufficient reputation or goodwill to bring a claim for passing off, despite a certain amount of pre-launch trade publicity.47 8.26 However, pre-trading reputation is a relevant factor in determining whether a short

period of trading is sufficient to generate goodwill. The benefit of a significant amount of pre-trading activities may be to shorten the period of actual trading necessary to acquire protectable goodwill.48 Residual and abandoned goodwill 8.27 Where a business has ceased trading, it may retain some residual goodwill for a

period after the business has closed down. Alternatively, it may be deemed to have abandoned the goodwill and care needs to be taken to distinguish between cessation of use and abandonment.49 The residual goodwill may only be protected where the claimant has not abandoned his goodwill, perhaps because there is an intention to resume the business at some stage or because there has been continued use in commerce.50 It will be a question of fact in each case as to whether the claimant’s 45

See 7.124 et seq. See Chocosuisse Union Des Fabricants Suisse de Chocolat v Cadbury Ltd [1999] RPC 826; Fage UK Ltd v Chobani (n 17) [2013] FSR 32; Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] RPC 429, [1981] 1 WLR 193; Anheuser-Busch (n 37) (CA), 462, per Oliver LJ; 473, per Dillon LJ; Croom’s trade mark application [2005] RPC 2; and most recently Starbucks (n 32) at [32]. 47 See Marcus Publishing plc v Hutton-Wild Communications Ltd [1990] RPC 576. 48 See Home Box Office (n 44). 49 See Maslyukov v Diageo Distilling Ltd and anor [2010] RPC 21, [2010] ETMR 37 at [73]–[81], and Mary Wilson Enterprises, Inc’s trade mark application (The Supremes) [2003] EMLR 13, AP. 50 Such as the continued sales of recordings by a band called ‘The Animals’ long after the original line-up had broken up, the playing of those recordings on the radio and television and 46

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Reputation or Goodwill link with the goodwill has become so remote as to have lost its right to protection.51 The law of passing off will not intervene to protect goodwill which any reasonable person would consider trivial.52 Goodwill has no free-standing existence apart from the business to which it is attached, for example where a business has been discontinued, with no prospect of restarting and its assets have been broken up and sold.53 If the business dies, so does the goodwill. In determining whether the goodwill has been abandoned, intention has no role.54 The factors that the court is likely to consider include the strength of the goodwill 8.28 when the use stopped, how lasting in the public eye are the goods or services to which the mark is attached, and how the person claiming the goodwill has tried to maintain that goodwill. The greater each of these elements, the longer the goodwill will last.55 Shared goodwill It is a long-established principle that the goodwill or reputation in the name or 8.29 mark may be shared.56 In order to have the capacity to bring proceedings the claimant must, whether acting in a representative capacity or not, have some proprietary interest in the goodwill which is likely to be damaged by the misrepresentation.57 Cases on this point have generally concerned alcoholic drinks. Individual producers of champagne,58 sherry,59 whisky,60 and vodka61 have all been found to have the necessary share in a joint goodwill and reputation to prevent the use of the shared mark on goods lacking the necessary geographical origin, traditional mode of production, or characteristics of the goods to which such description could properly be applied. In Bollinger, one champagne house was entitled to sue to prevent the name ‘champagne’ being used in relation to Spanish sparkling wine. In Vine Products an attempt to stop the term ‘sherry’ being used in relation to wine

use in advertising soundtracks:  Eric Burden’s trade mark application , O/369/13 12 September 2013 (AP). 51 Contrast Ad-Lib Club v Granville [1972] RPC 673 with Norman Kark Publications v Odhams Press Ltd [1962] RPC 163. 52 Boxing Brands Ltd v Sports Direct International [2013] EWHC 2200 at [93]–[95]; Sutherland v V2 Music Ltd [2002] EMLR 28. 53 An example given by Lewison J, Ultraframe (UK) Ltd v Fielding [2005] EWHC 1638, [2006] FSR 17. 54 per Lewison J in Ultraframe (n 53) at [1877] and [1888]. 55 Minimax GmbH v Chubb Fire Ltd [2008] EWCA 1960, 29 July 2008. 56 See eg Dent v Turpin (1861) 2 J&H 139: held that either of two watchmakers with separate reputations in the name Dent might sue a third party for use of the same name. 57 See Chocosuisse Union v Cadbury Ltd [1999] RPC 826 where the Court of Appeal held that the trade association had no goodwill or interest in the UK which it was entitled to protect. 58 Bollinger v Costa Brava Wine Co Ltd [1960] RPC 16. 59 Vine Products Ltd v Mackenzie & Co Ltd [1969] RPC 1. 60 John Walker & Sons Ltd v Henry Ost & Co Ltd [1970] RPC 489. 61 Vodkat (n 16).

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Passing Off manufactured in the UK from rehydrated grape juice imported from a number of different countries, it was held that the name ‘sherry’ could not be used alone as it was misleading. However, the claimant’s long acquiescence in the use of the term ‘British sherry’ was such as to prevent it obtaining an injunction against use of that term. 8.30 In the Advocaat case62 the House of Lords restrained the use of the name ‘Advocaat’

on any drink other than that made according to a traditional recipe, as used by the claimant and others. The action was therefore used to protect the reputation of the product as much as of the particular trader and it seems from the judgment that anyone who produced Advocaat according to that traditional recipe would be entitled to use the name, regardless of whether the product was made in the Netherlands (the traditional source of the product) or elsewhere. The larger the class of traders sharing the goodwill, the harder it will be to prove the existence of the reputation, but: It is the reputation that that type of product itself has gained in the market by reason of its recognisable and distinctive qualities that has generated the relevant goodwill. So if one can define with reasonable precision the type of product that has acquired the reputation, one can identify the members of the class entitled to share in the goodwill as being all those traders who have supplied and still supply to the English market a product which possesses those recognisable and distinctive qualities.63 8.31 There is no need for the claimant’s goods to be of superior quality or even have

a ‘cachet’ to generate the necessary protectable goodwill as long as the description denotes a product endowed with recognisable qualities which distinguish it from others in the same market.64 What matters is whether the product with that description is perceived to be distinctive. Nor is there a need for the description to denote a geographical area, but doing so helps to define the distinctive qualities, for example in the cases of champagne and sherry. Protectable goodwill can still be acquired as long as the descriptive term has a defined meaning, such as for whisky or vodka.65 In the case of vodka, the Court of Appeal upheld Arnold J’s decision that vodka’s distinctive qualities were that it was clear, tasteless, distilled, and high-strength.66 8.32 Moreover, a producer of Greek yoghurt was held to have protectable goodwill in the

description ‘Greek yoghurt’.67 In contrast to Vodkat, Greek yoghurt had a geographical designation but merely having a geographical location as a place of production or

62

See n 8. At p 747, per Lord Diplock. 64 per Lord Diplock in Advocaat at p 95; Laddie J in Swiss Chalet at pp 127–9 and cited by Arnold J in Vodkat at [26]. The Court of Appeal in Vodkat confirmed that there was no need for the claimant to establish a cachet. 65 per Patten LJ in Vodkat [2011] RPC 2 at [25]–[26]. 66 Vodkat at [53]. 67 FageUK Ltd v Chobani UK (n 17). 63

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Indicia Which May Be Protected manufacture is not enough for a mark to acquire protectable goodwill. Some other distinguishing characteristics are necessary, such as the thick and creamy texture of the yoghurt, achieved by the manner in which it was made.68 The mark must mean more to the public than as its place of manufacture. It must have ‘some drawing power’.69

C INDICIA WHICH MAY BE PROTECTED The indicia which may be protected in a passing off action include all of those 8.33 which may be registered as trade marks under the Trade Marks Act 1994 (the 1994 Act). Passing off will protect the get-up of a product or even the characteristics of a product or service. As long as that characteristic or sign is recognised by customers as denoting a particular source of goods or services, then it is likely to have acquired goodwill in relation to those goods or services. Names of any kind can be protected, whether they are names which have some 8.34 relation to the proprietor, invented names, or names given to a product or service. There have been numerous cases in which a reputation has been found in a name by which a product has become known, whether or not this was the name actually applied to the product by the proprietor. There are problems, however, where the name is used to describe the goods or services provided under it. The names or images of fictional characters, or cartoon characters, can also be 8.35 protected, see further 8.68 et seq on character merchandising. Descriptive marks Marks or signs which are primarily descriptive of the goods or services provided 8.36 under the mark are more difficult to protect than those which are primarily distinctive.70 The more descriptive the mark, the more trading that is required before the mark will denote a particular trader.71 The use by a defendant of a mere description of the goods and services provided under that mark, such as the use of the mark ‘book’ by a trader in the name of his bookshop, will not amount to a misrepresentation because, at its most basic, a claimant cannot prevent other traders from describing their goods.72 Whilst there may be commercial reasons for a trader to use a mark which is descriptive of the goods or services provided under that mark, 68

As pointed out by Chadwick LJ, in Chocosuisse at p 832 and in Fage v Chobani at [122]. per Briggs J in Fage v Chobani (n 17) at [124]. 70 The leading case on this remains Office Cleaning Services v Westminster Windows (1946) 63 RPC 39 as recently explained by Lewison LJ in Okotoks Ltd v Fine & Country [2013] EWCA Civ 672 at [59]–[60]. See 8.62 – 8.63 on tolerated instances of confusion. 71 See Bignall (n 29) at [55]. 72 An example being A&E Television Networks LLC v Discovery Communications [2013] EWHC 109 (Ch) [2013] ETMR 32 where the defendant provided history programmes under the name ‘History’. 69

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Passing Off he runs the ‘risk that the defendants cannot be prevented from using those same descriptive words so long as they make it clear that their products are not the same as the [claimant’s] products’.73 8.37 As in the case of registered trade marks, it will generally be much easier to prove

that a fancy or invented word mark is distinctive than it will be to prove that there is goodwill attached to a descriptive mark where the description relates to the character, quality, or nature of the product or services or some geographical connotation. Many marks are to some extent descriptive of the goods or services provided under them. Sometimes the name, whilst initially being a distinctive ‘brand’ name, has become so widely used that it is used to describe the product, such as ‘Linoleum’.74 Alternatively, a mark may only describe characteristics of the products, such as that the garment is a ‘slip-on’,75 the place of origin of the goods, such as ‘Rugby Portland Cement’,76 or what is required of a player in a game.77 8.38 Such descriptive marks present problems for their proprietors, since the courts will

not accept that there can be goodwill attaching to them unless they have acquired a ‘secondary meaning’, that is to say the mark has come to distinguish the claimant’s goods from those of others, even if it has not lost its primarily descriptive nature.78 Largely descriptive marks require a great deal of trading to establish this ‘secondary meaning’. For example, the word ‘Premier’ when used in respect of luggage was held to be an ordinary English word bearing a laudatory meaning. In the absence of use in the UK, the mark would have been devoid of distinctiveness but had acquired distinctiveness through use. Although the claimant had been trading on a small scale in the UK and did not sell directly to the public, the evidence established that the average consumer would nevertheless appreciate that the mark ‘Premier’ was not used in a laudatory descriptive sense but as distinctive branding.79 8.39 The courts are reluctant to allow the English language to be ‘ring-fenced’ by a

particular trader and will tolerate a low level of confusion which exists as a result of the similarity of descriptive marks.80 Accordingly, minor differences between the descriptive names and marks of the parties have sufficed to distinguish between

73

McCain International Ltd v Country Fair Foods Ltd [1981] RPC 69, 81, per Templeman LJ. Linoleum Manufacturing Co v Nairn (1878) 7 Ch D 834, 836–7. 75 Burberrys v Cording (1909) 26 RPC 693. 76 Rugby Portland Cement Co v Rugby & Newbold Portland Cement Co (1892) 9 RPC 46. 77 The word ‘scramble’ was held to be descriptive in a game where the judge considered the game involved a scramble for words made up by letters in a fi xed period of time. See JW Spear & Sons v Zynga, Inc [2012] EWHC 3345. 78 See Burberrys v Cording (n 75). In Antec v South Western Chicks Ltd [1998] FSR 738, the words ‘Farm Fluid’ had become distinctive of the claimant for farm disinfectant. 79 See Premier Luggage and Bags Ltd v The Premier Co (UK) Ltd [2003] FSR 5. 80 See Bignall (n 29) para 55 and Office Cleaning (n 70), IPC Media v Media 10 Ltd [2013] EWHC 3796 (IPEC), 6 December 2013. 74

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Indicia Which May Be Protected them.81 Where a descriptive term is used as part of the name applied to a product, in addition to the name of the proprietor, it is difficult to prevent the use of the descriptive name or descriptive part of the name by others in conjunction with their own names.82 It is not necessary to show that the customers who know the claimant’s goods also 8.40 know of the claimant’s name or, for that matter, anything about the claimant. It is sufficient for the customers to appreciate and care that there must be a maker or organisation behind the product or services.83 To this extent every manufactured article conveys a representation that it has a maker.84 The names of publications, such as magazines, may be capable of being protected 8.41 by an action for passing off, 85 but again this is an area in which names tend to be very descriptive. In the case of magazines or periodicals, very small differences between the names may be sufficient on the facts to distinguish the parties’ publications, and may be more likely to be taken as distinguishing the products if there are differences in get-up between them as well, or indeed differences in nature.86 Get-up The appearance of a trader’s goods, or the appearance of shops from which goods 8.42 or services are provided by a trader can be, and often is, recognised by customers. Whilst the brand name would usually function as the principal designation of trade origin, the get-up or livery of a product may also do so as long as it can be shown that the public have come to recognise the features of the get-up or livery as coming from a particular source.87 These features of appearance include the

81

See eg Office Cleaning Services (n 70): the claimants traded as ‘Office Cleaning Services’. The defendants started trading as ‘Office Cleaning Association’. Held, the difference between the two descriptive names was sufficient to distinguish the businesses. 82 See eg Horlick’s Malted Milk Co v Summerskill (1917) 34 RPC 63: the claimant could not prevent the sale of ‘Hedley’s malted milk’ on the basis of its reputation in the name ‘Horlicks Malted Milk’; malted milk was a descriptive term and the distinctiveness resided only in the name Horlicks; similarly in McCain International Ltd v Country Fair Foods Ltd [1981] RPC 69, the owners of the name ‘McCain oven chips’ whose product was innovatory and who had coined the phrase ‘oven chips’ to describe it, were not able to prevent the defendants from selling their version of the product under the names ‘Country Fair oven chips’ and ‘Birds Eye oven chips’. 83 See United Biscuits (UK) Ltd v Asda Ltd [1997] RPC 513, 533; Edge & Sons Ltd v William Niccolls & Sons Ltd [1911] AC 693, (1911) 28 RPC 582. 84 Hodgkinson & Corby Ltd v Wards Mobility Services Ltd [1994] 1 WLR 1564, 1574, [1995] FSR 169, 179, per Jacob J. 85 See Emap National Publications Ltd v Security Publications Ltd [1997] FSR 891. 86 See eg Evegate Publishing Ltd v Newsquest Media (Southern) Ltd [2013] EWHC 1975 (Ch); Morning Star Cooperative Society Ltd v Express Newspapers Ltd [1979] FSR 113: the publishers of ‘Morning Star’ could not prevent the publication of ‘Daily Star’; similarly Management Publications Ltd v Blenheim Exhibitions Group plc [1991] FSR 348: ‘Management Today’ would not be connected with ‘Security Management Today’; contrast with Morgan-Grampian plc v Training Personnel Ltd [1992] FSR 267: the publishers of a series of magazines ‘What’s New in . . .’ could prevent ‘What’s New in Training’. 87 See Numatic International Ltd v Qualtex Ltd [2010] EWHC, [2010] RPC 25.

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Passing Off size, shape, and colour schemes of a product as well as distinctive packaging or the arrangement of labels. The ‘get-up’ or livery is often relied upon by a claimant in addition to the name or mark in actions for passing off. For example, the packaging and name of ‘Penguin’ biscuits were held to be distinctive of the claimant in a successful passing off action against the makers of ‘Puffin’ biscuits88 as were the visual features comprising the get-up of a popular vacuum cleaner known as ‘Henry’.89 8.43 The Jif lemon case probably remains the high point of protection of get-up for

goods, where the House of Lords considered that the lemon-shaped, yellow plastic bottle used by the claimant over many years as a container for its lemon juice had become so distinctive that shoppers would disregard the fact that lemon juice contained in the defendant’s similar container bore a completely different label, with a completely different name upon it. It was found, on the evidence, that members of the public would rely upon the lemon-shaped container in making their purchases, believing that such a container indicated that the product was the claimant’s product. In other words, it was found that the plastic lemon-shaped container had acquired a secondary significance.90 8.44 Generally, get-up or packaging can be protected where it has become sufficiently

distinctive, and this is an area in which a combination of features may become capable of being protected by the law of passing off, even where there may be difficulties in obtaining trade mark protection under the 1994 Act. However, it is very much more difficult to protect ‘get-up’ which consists of some attribute of the goods themselves, rather than their packaging.91 8.45 It may be somewhat easier to protect the get-up of business premises, where the

claimant’s business has established a very distinctive decor, consisting of a combination of features, which has been copied by the defendant.92

D MISREPRESENTATION 8.46 Actionable misrepresentations come in just about any form. They may be express

or implied and may consist of the kind of uses of the claimant’s marks or other 88

United Biscuits (n 83). Numatic International (n 87). 90 See Jif (n 11), 414. 91 See eg Politechnika Ipari Szovetkezet v Dallas Print Transfers Ltd [1982] FSR 529: no association of the Rubik’s cube (which had been copied) with any one source, ie the claimant. 92 See My Kinda Town Ltd v Soll [1983] RPC 15 and 407: it was held at fi rst instance that the striking similarity between the decor of the defendant’s restaurant and that of the claimant’s restaurant was likely to contribute to the confusion caused by the similarity of the names. The Court of Appeal rejected these arguments because of the way the case had been pleaded. Cases in which copying of get-up has not amounted to passing off include Dalgety Spillers Foods Ltd v Food Brokers Ltd (‘Pot Noodles’) [1994] FSR 504: it was found that the claimant’s get-up was distinctive but that the defendant’s get-up was not close enough to cause confusion. 89

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Misrepresentation indicia which would amount to infringement of a registered trade mark. Common misrepresentations include using a trade mark or ‘get-up’ that is similar to that used by another business. The misrepresentation may be direct. In other words, the defendant states that 8.47 it is the claimant, or that it is selling the claimant’s goods, or that it is providing the same services as the claimant. This type of misrepresentation commonly occurs where, for example, the defendant makes a statement to that effect in its advertising. The misrepresentation may be indirect and cover the situation where the use of 8.48 the claimant’s distinguishing signs or ‘get-up’ is such as to imply some connection in the course of trade to the claimant, such as an agency or licence.93 This type of implied representation can come in any form, as long as it is a statement that conveys an impression to likely customers of the claimant’s goods or services. For example, it was considered to be an actionable misrepresentation to use a picture in a promotional flyer of a racing driver holding and listening to a radio that had been altered to display the logo of a particular radio station.94 The impression conveyed to someone looking at the flyer was that the racing driver was endorsing or promoting the radio station. Such a representation will only be actionable if it is a misrepresentation. It is not 8.49 a misrepresentation to state truthfully that there was some connection in the past between the parties, although care must be taken with the way in which such a connection is expressed. It is not passing off to describe one’s goods or services as being a ‘substitute for’ or 8.50 ‘the same as’ the claimant’s goods or services (if this is true), but it may be passing off to suggest that the defendant’s goods or services are the same as those which have been ‘shown on television’ by the claimant,95 or to claim that certain tests carried out on the claimant’s goods had in fact been carried out on the defendant’s goods.96 Such misleading or untruthful advertisements might, of course, today be caught by the various regulations on advertisements which are discussed in relation to comparative advertising in Chapter 7.97 It is more common for a passing off action to be founded on an indirect misrep- 8.51 resentation, such as an appropriation by the defendant of features of the claimant’s distinctive name, get-up, or logo or the use of a confusingly similar name. Provided that the claimant can establish that the features relied upon and used by

93

As to a misrepresentation regarding agency, see Sony KK v Saray Electronics (London) Ltd [1983] FSR 302. 94 See Irvine v Talksport [2003] FSR 35, [2003] 2 All ER 881 (CA). 95 Copydex Ltd v Noso Products Ltd (1952) 69 RPC 38. 96 Plomien Fuel Economiser Co Ltd v National School of Salesmanship Ltd (1943) 60 RPC 209. 97 See 7.58 et seq.

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Passing Off the defendant are distinctive of the claimant, the untrue statement implied by the defendant could be, for instance, that the defendant’s product is associated with the claimant’s or is an extension to the claimant’s existing product range. 8.52 Using a domain name that contains the mark of another business can constitute an

actionable misrepresentation but the position is more difficult when considering use which is ordinarily ‘invisible’ to the consumer, such as the use of ‘metatags’ and ‘adwords’.98 8.53 The relevant misrepresentation may also be a subtler one which would indicate

merely some business relationship between the parties. Such was the case in Associated Newspapers plc v Insert Media Ltd,99 in which it was held that the introduction of unauthorised advertising material between the pages of magazines constituted a misrepresentation that the inserts were connected or associated with the claimants and their publication.100 See further the discussion of ‘likelihood of association’ in Chapter 3. 8.54 It is an actionable misrepresentation to equip or enable others to pass off, even if

there is no deception at the point in the commercial chain which directly involves the maker of the false statement. An example is the manufacturer who produces goods which are unlikely to deceive members of the trade but will be likely to deceive the purchasing public. Labels may not be deceptive until they are applied to the product but the makers of the deceptive labels are equipping, enabling, or intending to equip or enable others to pass off. Another example is the registration of domain names comprising third party company names. In BT v One in a Million101 the Court of Appeal decided that people who had registered domain names of well-known companies such as ‘marksandspencer.com’ and were offering them for sale, were intending to equip others with instruments of fraud even though the defendant cybersquatters did not intend to use the domain names themselves.102 8.55 It is essential for the indicia complained of to be inherently deceptive. If the

indicia only become deceptive because of something said or done down the commercial chain, the party responsible for the indicia is not liable for passing off.103 It is not, however, a defence to say that there are circumstances where the indicia would not be deceptive, as the unsuccessful defendants claimed in One in a Million.

98

See 7.20 et seq and 7.43. [1990] 1 WLR 900. See also Kimberley Clark Ltd v Fort Sterling Ltd [1997] FSR 877. 100 See Associated Newspapers (n 99) at p 908. 101 [1999] FSR 1. 102 A more recent decision, which cited BT v One in a Million is SmithKline Beecham and ors v GSKline Ltd [2011] EWHC 169. Arnold J granted summary judgment. 103 L’Oréal v Bellure [2008] RPC 9, [2008] ETMR 1 (CA), at [132]. 99

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Likelihood of Deception

E REVERSE PASSING OFF A different sort of misrepresentation was held to amount to passing off in Bristol 8.56 Conservatories Ltd v Conservatories Custom Built Ltd.104 The defendant’s salesman had shown prospective customers a portfolio of photographs of conservatories, indicating that they illustrated examples of the defendant’s goods and workmanship. The photographs were, in fact, photographs of conservatories built by the claimant. It was held that this constituted passing off, since the defendant by its misrepresentations was seeking to induce customers to purchase conservatories from the defendant, in the belief that they would be obtaining a conservatory from the same source as that shown in the photograph. It seems that the basis of the decision was that showing the photographs to the prospective customers created the goodwill that the defendants misappropriated by showing the pictures.105 There would have been no misrepresentation if the defendant had merely said that he could produce goods or workmanship etc equivalent to that shown to the prospective customer.106 This has become known as ‘reverse’ passing off because it involves a misrepresentation that the claimant’s goods or services are connected with the defendant. The Bristol Conservatories case is merely an example of an unusual type of pass- 8.57 ing off rather than a definition of a new type, and the borderline between reverse passing off and situations falling outside the tort of passing off can be difficult to define.107

F LIKELIHOOD OF DECEPTION Whatever the nature of the misrepresentation made by the defendant, there will 8.58 be no passing off unless the misrepresentation is likely to cause members of the relevant public and/or trade to be deceived by the misrepresentation at the time of the purchase of the goods or services.108 This is a question of fact, to be considered in all the circumstances of the case and upon the evidence before the court.109 There is a tension between the tort of passing off and registered trade mark infringe- 8.59 ment when considering the mind of the consumer who is allegedly likely to be

104

[1989] RPC 455; and see also John Robert Powers School, Inc v Tessensohn [1995] FSR 947 (Singapore CA). 105 Bristol Conservatories (n 104), 464–5. 106 per Laddie J in Leec Ltd v Morquip Ltd , 7 February 1996. A case comment is in the EIPR (1996) 18(6). 107 Gloag & Son Ltd v Welsh Distillers Ltd [1998] FSR 718, 723, per Laddie J. 108 See the speech of Lord Oliver in Jif (n 11), 500. 109 See the discussion of likelihood of confusion at 3.25 et seq.

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Passing Off deceived. In registered trade mark law, the notional average consumer is ‘reasonably well informed and reasonably circumspect and observant’.110 That person is a legal construct. In passing off, there is no ‘average consumer’ test. It is a ‘substantial proportion of the public’ test. The court must first identify the relevant class of public or trade. Identifying how big that class is can be problematic but the representation must be made to the prospective customers or ultimate consumers of the goods and services.111 It must also take the customer of those goods or services as it finds them and it is no answer to say that the public would not have been deceived had they been more careful or perspicacious.112 8.60 The issue is whether enough consumers would be deceived by the false statement.

What is meant by ‘enough’ varies. There is no set percentage or number but there must be enough consumers that are likely to be deceived for there to be a real effect on the claimant’s goodwill.113 There is no need for the majority of the public to be likely to be deceived and a claim can succeed even though most people are not deceived.114 Whilst these two tests differ, the result in many cases is likely to be the same.115 If a substantial proportion of the relevant consumers are likely to be deceived, so will the average consumer of those goods and services. Notably, both tests require a global or overall assessment or value judgment. In Interflora, Lewison LJ considered that the same result would not be inevitable and doubted whether in circumstances where the majority of the consumers were not confused it could be said that the average consumer would be.116 8.61 Providing evidence of actual confusion or deception is notoriously difficult. There

are many reasons why people do not come forward in the first place, let alone come to give evidence in court. So the absence of evidence of actual confusion or deception is not decisive, whereas the presence of such evidence often is very telling.117 Further, in cases involving ordinary consumer products or services, the court can form its own view as to whether there is a likelihood of confusion, without the need for there to be evidence of actual confusion.118

110 See Sabel BV v Puma AG, Case C-251/95, [1997] ECR I-6191, [1998] RPC 199, [1998] ETMR 1, at [23] and Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV, Case C-342/97, [1999] ECR I-3819, [1999] ETMR 690, at [27]. See 3.30. 111 per Lord Diplock in Advocaat at p 742 and applied more recently by Lloyd LJ in Fine & Country v Okotoks Ltd [2013] EWCA Civ 672 at [70]–[71]. 112 per Lord Oliver in Jif (n 11), 508. 113 Neutrogena v Golden [1996] RPC 473. 114 per Lewison LJ in Marks & Spencer plc v Interfl ora [2012] EWCA Civ 1501 at [26]–[36], citing Neutrogena and Chocosuisse. 115 As Jacob LJ commented in Reed Executive v Reed Business Information [2004] EWCA Civ 159, [2004] ETMR 56, [2004] RPC 40 at [82]. 116 n 114 at [34]. 117 As was explained in Fine & Country Ltd v Okotoks Ltd [2012] 2230 at [84]. Upheld on appeal. 118 As Daniel Alexander QC, sitting as a judge in the IPEC explained in Bocacina Ltd v Boca Cafes Ltd [2013] EWHC 3090 (IPEC) at [24]–[29].

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Likelihood of Deception Sometimes claimants encounter the problem of having evidence of the ‘wrong 8.62 sort’ of confusion or ‘mere’ confusion119 which lacks the causative effect required to prove the tort of passing off. As Lord Greene said in Marengo v Daily Sketch:120 ‘No one is entitled to be protected against confusion as such . . . The protection to which a man is entitled is protection against passing off, which is quite a different thing from mere confusion.’ It should also be remembered that there are cases where what at first sight may look like deception, and indeed will involve deception, is nonetheless justified in law, such as instances of honest concurrent use and legitimate use of descriptive marks, which are instances of tolerated deception.121 There are limits, and Jacob LJ explained in Phones 4U that it was a question of degree: ‘there will be some wonderers and some assumers—there will normally be passing off if there is a substantial number of the latter even if there is also a substantial number of the former’.122 It is a question of fact in each case whether the confusion or deception actually 8.63 stemming from the misrepresentation is likely to cause damage. Some common examples of the ‘wrong sort’ of confusion are: (1) confusion experienced by members of the public who do not really care whether they are buying the claimant’s or defendant’s goods and were not moved to purchase them by virtue of the defendant’s misrepresentation, for example in a get-up case where the appearance of the goods is not self-evidently a badge of trade origin: see Hodgkinson & Corby Ltd v Wards Mobility Ltd 123 (2) confusion caused by features which are common to the trade or are generic or descriptive in some way: see Jif, 124 My Kinda Town v Soll 125 (3) confusion caused by the claimant previously being the only trader dealing with those goods. The cessation of such a de facto monopoly could mean that the public believes that all similar products emanate from the claimant rather than being deceived by the defendant’s misrepresentation: see Jif.

119 HFC Bank plc v Midland Bank plc [2000] FSR 176. Lloyd J held that the customers put forward by the claimant as being ‘confused’ had not heard of the claimant and did not come within the scope of the claimant’s goodwill. 120 (1946), [1992] FSR 1 at 2. Although this case was decided in 1946, it was only reported in 1992. 121 As pointed out by Jacob LJ in Phones 4U Ltd v Phone4U.co.uk Internet Ltd [2006] EWCA Civ 244, [2007] RPC 5. 122 Phones 4U at [17]. More recently, Recorder Iain Purvis QC observed in WS Foster & Son Ltd v Brooks Brothers Ltd [2013] EWPCC 18, that ‘the “wondering” situation will generally arise where there is a reasonable possibility that the similarities between the Defendant’s and Claimant’s mark, logos or get-ups might be due to pure coincidence. This will commonly be the case where the Claimant’s mark, logo or get-up is not particularly distinctive or the similarities are not particularly striking.’ 123 Hodgkinson (n 84): the goods were wheelchair cushions. 124 Jif (n 11), 412, per Lord Oliver. 125 [1983] RPC 407.

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Passing Off 8.64 Moreover, any misrepresentation which may be made must take effect prior to

the purchase of the goods or services. For instance in Bostick Ltd v Sellotape126 the claimant based its case of passing off upon the colour of the product produced by the defendant in competition to the claimant’s blue ‘Blu-tak’. It was held there was no passing off as the colour of the defendant’s product could not be seen until after it had been taken out of the packet. For the purposes of an interim injunction, Blackburne J was not impressed by the unlikely possibility that there might be confusion in respect of repeat purchases, if not in relation to initial purchases.127 8.65 Initial interest confusion, akin to that relied upon in registered trade mark infringe-

ment, can apply to passing off too.128 Even if the deception is effective and dispelled before a purchase, it can function to attract customers and influence those customers into opening negotiations; that can be sufficient to find passing off as the deception has a causative effect.129 It will be a question of evidence and inference whether any such deception has a causative effect damaging the goodwill. Without a likelihood of damage, there is no passing off. Turning off the road to a petrol station believing one has recognised the colours of the petrol station forecourt is an often cited example of initial interest confusion, where the confusion was dispelled by the time that the petrol was being purchased.130 Care needs to be taken, however, as the concept of initial interest deception does not apply just because a consumer wonders whether or even assumes131 there is a connection before a purchasing decision is made.

G COMMON FIELD OF ACTIVITY 8.66 Historically, it was necessary to have a ‘common field of activity’ between the

businesses of the parties before there could be passing off.132 However, the impact of this doctrine was greatly lessened by the judgment of Falconer J in Lego,133 in which it was held that a common field of activity was essentially no more than

126

[1994] RPC 556. See also Hodgkinson (n 84): no confusion where product would be purchased through a professional, who would know the source of supply. 128 For its role in registered trade mark infringement see 7.50. 129 Doosan Power Systems Ltd v Babcock International Group [2013] EWHC 1364, [2013] ETMR 40. 130 See BP Amoco plc v John Kelly Ltd [2002] FSR 5, [2001] ETMR 14. This case succeeded on the registered trade mark claim but failed on passing off. The court concluded that there was no likelihood that the purchaser would have been deceived into making the purchase (see para 68). Citing Lord Jauncey in Jif Lemon, the court held that mere confusion which does not lead to a sale is not enough. 131 per Jacob LJ in Phones 4U. See 8.62 . 132 See eg McCulloch v Lewis A May (1947) 65 RPC 58; Wombles Ltd v Wombles Skips [1975] FSR 488. 133 Lego System Aktieselskab v Lego M Lemelstrich Ltd [1983] FSR 155. 127

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Character Merchandising and Celebrity Endorsement an indication of the likelihood of confusion between the parties’ goods leading to a likelihood of damage. That principle continues to apply today. In Lego the makers of the well-known plastic toys were successful in preventing the use of the name ‘Lego’ upon plastic garden irrigation equipment, which had legitimately been made under that name in Israel. It was held that the public might think that the claimant had expanded its business into that field or had licensed the use of its name on the defendant’s goods and that such confusion could lead to damage because the claimant would lose the possibility of licensing or franchising another trader to use the mark Lego in the gardening equipment field.134 So, the question of whether there is a common field of activity between the parties really goes to whether one is able to show the necessary likelihood of confusion and damage.135 Accordingly, the absence of a common field of activity is not fatal, but it is relevant, 8.67 and will make the claimant’s task in establishing the likelihood of confusion and damage more difficult. In the absence of a common field of activity the burden on the claimant of proving a likelihood of damage is a heavy one.136

H CHARACTER MERCHANDISING AND CELEBRITY ENDORSEMENT Whilst ‘character merchandising’ has been included within the law of passing off 8.68 for some time, the scope of the tort has been extended in recent years to include celebrity endorsement.137 This is not a surprising extension of the law of passing off. Just as the marketplace has developed in such a way as to generate goodwill for celebrities who endorse goods, so the law of passing off has developed to protect that goodwill. In order to succeed in a passing off claim based on false endorsement or false state- 8.69 ments of being official merchandise, a claimant needs to show more than that the personality involved was well known. Under English law there is no law of personality as such. As Laddie J held in Elvis:138 ‘Even if Elvis 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 reason of the fact that it was the name given to him at birth by his parents.’ 134

Lego (n 133) at p 194. See Boxing Brands Ltd v Sports Direct International [2013] EWHC 2200 at [94]–[95]; [2013] ETMR 48; Harrods Ltd v Harrodian School Ltd [1996] RPC 697, in particular at p 714 where Millett LJ also considered the Lego case and the common field of activity. 136 See Stringfellow v McCain Foods (GB) Ltd [1984] RPC 501, 547. 137 See Robyn Rihanna Fenty and ors v Arcadia Group Brands [2013] EWHC 2310; Irvine v Talksport [2003] FSR 35. 138 Elvis Presley trade marks [1997] RPC 543, 547, affi rmed [1999] RPC 567 (CA). 135

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Passing Off 8.70 It is essential to show that the personality, fictional or real, had goodwill that

extended to merchandising or endorsement, at the time that the false representation was made. In the case of most performing artists, merchandising and endorsement is part of the job from an early stage in their careers. It is necessary to distinguish between endorsement and merchandising. When someone endorses a product or service they are telling the relevant public that they approve of it or are happy to be associated with it. On the other hand when, for example, a film company engages in merchandising, images or characters from that film are exploited by selling all kinds of products, such as clothing and toys. It is not a necessary feature of merchandising that members of the public will think the products are in any sense endorsed by the film-makers or actors in the film. They are bought by members of the public who found the film enjoyable and want a reminder of it. 8.71 It is necessary to consider carefully the particular nature of the false representa-

tion. Usually it will be that the personality had endorsed the defendant’s products, services, or business or that the goods are the claimant’s official merchandise.139 Whether that misrepresentation is likely to cause deception is dependent upon why a consumer is moved to buy the product. If they buy it because they want an image of the performing artist, then there is not an actionable misrepresentation because the representation made is not about the trade origin.140 In other words, simply being a recognisable image of a celebrity is not enough. For there to be passing off, a false belief must be engendered in the mind of the consumer that plays a role in the decision to purchase the product. 8.72 Historically, the common field of activity doctrine was applied in cases relating

to the use of the names of fictional characters by unauthorised defendants, so as to deny the makers of the fictional characters protection through a passing off action.141 This is not surprising as there is no immediate link between the production of films etc and the manufacture of toys, for example. However, the awareness of merchandising and endorsement in the mind of the consumer has developed significantly and this absence of common field of activity is not a bar to succeeding in a passing off claim. 8.73 The courts recognise that the public is aware of the widespread use of character mer-

chandising relating to the use of names or photographs of pop stars, sportsmen,142 or other famous people, and the names or images of popular cartoon or fictional 139 See Robyn Rihanna Fenty and ors v Arcadia Group Brands [2013] EWHC 2310 where the false representation was that Topshop’s T-shirts displaying an image of Rihanna while making a video of a single ‘We Found Love’ were part of her official merchandise range. 140 See eg Hodgkinson v Wards Mobility [1995] FSR 169; Harrods v Harrodian School (n 135). 141 See Wombles (n 132); Taverner Rutledge Ltd v Trexalpalm (‘Kojak’) [1977] RPC 275, [1975] FSR 479; Lyngstad v Anabas Products Ltd (‘Abba’) [1977] FSR 62. Contrast to the position under registered trade mark law, see Rawhide trade mark [1962] RPC 133, [1962] 1 WLR 543. 142 Or even the football league: see Football Association Premier League v Graymore Marketing Ltd [1995] EIPR D 15.

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Likelihood of Damage characters,143 upon all sorts of goods and services. This recognition of the realities of character merchandising was expressed in the Ninja Turtles case.144 The defendant had made drawings of humanoid turtle characters similar in appearance to the claimants’ cartoon characters and began to license the drawings to various garment manufacturers. The claimants did not manufacture or market any goods themselves but were the owners of the copyright in drawings of the original characters and a significant part of their business consisted of making and marketing cartoons and Turtles films. However, their business also included the merchandising of those characters and a significant part of their income arose from such activities. It was held that the latter facts would be well known to the public in general and that the public would connect goods bearing the defendant’s turtles with the claimants. Damage would be caused either by a genuine loss of royalties or by the depreciation of the image caused by using the copy turtle pictures on inferior goods.

I LIKELIHOOD OF DAMAGE The defendant’s misrepresentation must not only be likely to deceive members of 8.74 the relevant trade or public but also be likely to cause damage to the claimant. In Harrods, Millett LJ held that the claimant needed to prove ‘a real likelihood of more than minimal damage to the [claimant’s] goodwill’.145 Commonly, damage will be likely to occur where there is a direct loss of sales caused 8.75 by the defendant’s activities. This may be because the defendant is diverting custom from the claimant to himself. Alternatively, there may be a loss of sales where the defendant’s acts impinge upon the reputation of the claimant’s mark, goods, and/ or services, particularly where the defendant’s goods or services are inferior to those of the claimant.146 In Phones 4U the Court of Appeal referred to the decision of Slade LJ in Chelsea 8.76 Man147 and went on to restate the sort of damage which, if caused by misrepresentation, would be actionable.148 This was damage caused: (a) by diverting trade from the plaintiffs to the defendants; (b) by injuring the trade reputation of the plaintiffs whose men’s clothing is admittedly superior in quality to that of the defendants; and (c) by the injury which is inherently likely to be suffered by any business when on frequent occasions it is confused by customers or potential customers with a business owned by another proprietor or is wrongly connected with that business.

143 144 145 146 147 148

BBC Worldwide Ltd v Pally Screen Printing Ltd [1998] FSR 665. Mirage Studios v Counter-Feat Clothing Co Ltd (‘Ninja Turtles’) [1991] FSR 145. [1996] RPC 697, 718. See eg Chelsea Man Menswear Ltd v Chelsea Girl Ltd [1987] RPC 189. Chelsea Man (n 146), 202. Phones 4U Ltd v Phones 4U.co.uk Internet Ltd [2007] RPC 5, at [14], per Jacob LJ.

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Passing Off 8.77 In the common field of activity cases mentioned earlier, relief was refused because

it was considered that there was no real likelihood of deception and also because the distinction in the activities of the parties led the court to think it unlikely that damage would be caused to the claimant. Decisions in cases such as Lego, Ninja Turtles, and, more particularly, Harrods,149 indicate that the courts now take a realistic view of the likelihood of damage being caused to a claimant, even where he does not trade directly in the relevant field.150 Cases such as Taittinger151 and Harrods152 show that damage can still be caused to the claimant where the parties are not in competition with each other. Damage by ‘dilution’ 8.78 One area of damage which has been recognised by the courts relates to the difficulties

which may be caused by a loss of exclusivity, by erosion or swamping of the distinctiveness of the claimant’s mark, and by dilution. Swamping of distinctiveness may occur where the claimant’s mark is used on a small scale in relation to high quality goods and the defendant’s mark would be used on a large scale on lower quality goods.153 8.79 The relevance of dilution in passing off was recognised in the Elderflower Champagne

case.154 The defendants had produced a drink which they had called ‘Elderflower Champagne’. It was sold in bottles of the same shape, size, and colour as champagne, with labels and wired corks similar to those used for champagne, but the content of the bottles was a carbonated, soft drink containing elderflower cordial. It sold for about £2.45 per bottle. The claimants sued in a representative capacity on behalf of the producers of genuine champagne, and the Court of Appeal found that there had been a misrepresentation that the defendants’ product was champagne or in some way associated with champagne. It was found that there would be confusion in that some members of the public would buy elderflower champagne in the belief that it was real champagne, and others would be confused into thinking that the defendants’ product had some association with genuine champagne, when it did not.155 8.80 In Taittinger Peter Gibson LJ referred to the speech of Lord Diplock in Advocaat,156

which had referred to the ‘debasement of reputation’ of advocaat and agreed that 149

See nn 133, 144, and 135 respectively. See eg Blazer plc v Yardley & Co Ltd [1992] FSR 501. 151 Taittinger v Allbev (‘Elderfl ower Champagne’) [1994] 4 ALL ER 75, [1993] FSR 641. 152 n 135. 153 See eg Parfums Givenchy SA v Designer Alternatives Ltd [1994] RPC 243: the argument was made in the context of trade mark infringement, although passing off had also been pleaded. 154 Taittinger (n 151). More recently, the Court of Appeal accepted this head of damage in the case of BT v One in a Million [1999] FSR 1. 155 See similarly, the comparative advertising case De Landtsheer Emmanuel SA v Comité Interprofessionnel du Vin de Champagne and Veuve Clicquot Ponsardin SA, Case C-381/05, [2007] ECR I-3115, [2007] 2 CMLR 43, [2007] ETMR 69, and see 7.67. 156 Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731, 740. 150

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Likelihood of Damage it was obvious that erosion of the distinctiveness of the name champagne would be a form of damage to the claimants’ goodwill.157 He found, in effect, that allowing the defendants to make such use of the name champagne would be but the thin end of a wedge, so that subsequently any other fizzy fruit cordial might be marketed by reference to the description champagne. The damage to the claimants, minimal in the case of the defendants’ drink alone, would then be ‘incalculable but severe’. Taittinger did not represent a significant change in the law of passing off in relation 8.81 to what may amount to an actionable misrepresentation, since the sort of representation described by the Court of Appeal is similar to the kinds of ‘association’ already discussed, but it is more interesting on the question of damage. It had already been suggested in Bulmer v Bollinger,158 where the claimants were seeking declarations that they were entitled to use the expressions ‘champagne cider’ and ‘champagne perry’, that there could be damaging effects from such an association. Gough LJ stated: In my view there can be a passing off of goods without representing that they are actually the well-known goods which the claimant produces or a new line which he is supposed to have started. It is sufficient in my view if what is done represents the defendant’s goods to be connected with the claimants in such a way as would lead people to accept them on the face of the claimant ’s reputation. Thus for example it would be sufficient if they were taken to be made under licence, or under some trading arrangement which would give the claimant some control over them (emphasis added).

He went on to find:159 ‘The possibility of members of the public thinking that this is a new cheap Champagne product cannot be ruled out, and that impression if created, could well be very damaging to the Champagne goodwill.’ The principle that goodwill can be damaged by a ‘blurring, diminishing or erosion’ 8.82 of the distinctiveness of a mark has been applied in ‘classic’ forms of passing off too.160 It does not, however, extend passing off to cases where there is no confusion caused by the misrepresentation. Instead it makes it plain that the damage which the misrepresentation may cause may not be in terms of loss of sales or even direct damage to reputation, but may be some more intangible damage to the reputation of the famous mark.161 These cases show that the kind of damage which it may be necessary to demonstrate in order to succeed in a passing off action need not be very direct or specific.

157

Taittinger (n 151) 670. HP Bulmer Ltd v J Bollinger SA [1978] RPC 79. 159 HP Bulmer Ltd (n 158), 126. 160 Sir Robert McAlpine Ltd v Alfred McAlpine plc [2004] RPC 36 at [49] where, Mann J relied upon the dicta of Peter Gibson LJ in Taittinger. 161 In The Scotch Whisky Association v Glen Kella [1997] ETMR 470, Rattee J held that there was a real risk that the integrity of the reputation or ‘aura’ of true whisky could be damaged by sales of a redistilled product called ‘white whisky’. 158

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Passing Off 8.83 The difficulty with this head of damage is that it is not necessarily dependent on

‘classic’ confusion for it to arise. Also, as a matter of practice, this head of damage is often raised by a claimant who has some difficulty in proving other, more conventional, heads of damage and care must be taken when relying on it. As Millett LJ held in the Harrods case:162 Erosion of the distinctiveness of a brand name has been recognised as a form of damage to the goodwill of the business . . . but unless care is taken this could mark an unacceptable extension to the tort of passing off . . . I have an intellectual difficulty in accepting the concept that the law [of passing off ] insists upon the presence of both confusion and damage and yet recognises as sufficient a head of damage which does not depend on confusion.

J INNOCENCE, FRAUD, OR A DECISION TO LIVE DANGEROUSLY 8.84 Although passing off may have had its roots historically in the tort of deceit, which

does include elements of fraud, a fraudulent or dishonest intention on the part of the defendant is not a necessary element of the law of passing off today. Passing off can be established despite the defendant being wholly innocent or unaware of the claimant. Such innocence will not even preclude the defendant from having to pay damages.163 8.85 However, where it can be shown that the defendant had the dishonest intention of

appropriating to himself some of the benefit of the claimant’s reputation or goodwill, the courts will be inclined to find that he has succeeded in achieving that aim. There is no doubt that in cases where the court considers that there is an intention to cash in on the claimant’s reputation and goodwill, it will be more inclined to find that deception is likely. This was the case in Elderflower Champagne.164 A deliberate choice of a deceptive trading name is also highly relevant. Millett LJ summarised the current position in the Harrods case:165 Deception is the gist of the tort of passing off, but it is not necessary for a [claimant] to establish that the defendant consciously intended to deceive the public if that is the probable result of his conduct. Nevertheless, the question why the defendant chose to adopt a particular name or get up is always highly relevant. It is ‘a question which falls to be asked and answered’: see Sodastream Ltd. Thorn Cascade Co. Ltd. [1982] RPC 459 at page 466 per Kerr LJ. If it is shown that the defendant deliberately sought to take the benefit of the [claimant’s] goodwill for himself, the court will not ‘be astute to say that he cannot succeed in doing that which he is straining every nerve to do’: see Slazenger & Sons v Feltham & Co. (1889) RPC 531 at page 538 per Lindley LJ. 162

[1996] RPC 697, 715–16. See also the discussion of ss 5(3) and 10(3) in 3.50 et seq. See County Sound plc v Ocean Sound Ltd [1991] FSR 367; Gillette UK v Eden West Ltd [1994] RPC 279. 164 Taittinger SA v Allbev Ltd (n 151). 165 Harrods (n 135) at [706]. 163

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Defences Robert Walker J stated, after reciting this passage, in United Biscuits (UK) Ltd v 8.86 Asda Stores Ltd:166 ‘I cannot escape the conclusion that, while aiming to avoid what the law would characterise as deception, [the defendant is] taking a conscious decision to live dangerously. That is not in my judgment something that the court is bound to disregard.’ More recently Kitchin LJ distinguished between a trader who has taken the conscious decision to live dangerously and one who intends to cause deception and deliberately seeks to take the benefit of another trader’s goodwill.167

K DEFENCES Most defences in relation to passing off actions really amount to countering the ele- 8.87 ments of the claimant’s case, either by showing that the claimant does not have the necessary reputation or goodwill or showing that there has been no misrepresentation168 or no likelihood of deception caused by any misrepresentation made by the defendant. The defendant may also be able to show that damage is unlikely to arise by reason of any confusion. Other possible defences include the defendant’s bona fide use of his own name, 8.88 the defendant’s concurrent right to the name or get-up, or that the claimant is prevented from seeking relief by virtue of an agreement, an estoppel, excessive delay, or some other equitable defence. It is well-established that where a defendant can justify its use of a mark on the basis of its own goodwill built up independently of the claimant, the court will not restrain the use of a confusingly similar mark, despite satisfying ‘the classical trinity’ of elements comprising the tort of passing off.169 In Phones 4U, the Court of Appeal described such examples of honest concurrent use as ‘tolerated deception’.170 There are two types of case where this defence can arise. First, there is the independent goodwill built up over the years in discrete localities by different traders who collide through an expansion of business.171 Secondly, there is a common lineage where both parties derive their use from a common ancestor.172 Following the authorities, the requirements of the defence appear to be:

166

[1997] RPC 513, 531. See Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24, [2012] FA 19 at [115]. 168 See eg IBM v Phoenix International Computers Ltd [1994] RPC 251: could the defendant sell cards genuinely made by IBM, to which it had made various alterations, as ‘reworked IBM cards’? 169 Hotel Cipriani v Cipriani (n 5) at [232]; General Electric [1972] 1 WLR 729, 743. 170 Phones 4U at [21]. 171 eg General Electric (n 169). 172 eg Dent v Turpin (1861) 2 J&H 139 where a father who had two clock shops bequeathed one to each son. A more recent example that illustrates the limit of the doctrine is Sir Robert McAlpine v Alfred McAlpine [2004] RPC 36 as one party commenced trading in a materially different way. 167

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Passing Off (1) The first use by the defendant (or predecessor) must have been legitimate. (2) By the date that the claimant complains about the defendant’s use, the defendant must have protectable goodwill. (3) The acts alleged to amount to passing off must not be materially different from the way that the defendant had previously carried on business when the sign was legitimately used. 8.89 The defendant’s bona fide use of his own name may be a defence available in a

passing off action but it seems that, even if the defence exists, the defendant may only use that name as a trade name and not as a mark for his goods or services.173 The defence may extend to established company names but does not extend to established companies using a new name or new companies trading for the first time.174 If the court finds the defendant has made a misrepresentation, even unintentionally, then the fact that the defendant has used his own name may not be relevant.175 8.90 As Peter Gibson LJ held in Asprey & Garrard,176 ‘the general rule that no man is

entitled to carry on his business in such a way as to represent that it is the business of another is subject to a limited exception. That is that he is entitled to carry on business in his own name subject to two conditions: (1) he must not do anything more than that to cause confusion with the business of another, and (2) he must do it honestly.’ 8.91 In circumstances where the defendant has been using the name or mark for almost

as long as the claimant has been using his, it could be argued that each party is as entitled to use the mark or name as the other.177 8.92 Finally, it is no defence to a passing off claim that the defendant’s mark is reg-

istered, even when the goodwill relied upon was generated after the date of the application for the registered trade mark.178

173

See the discussion in Parker-Knoll Ltd v Knoll International Ltd [1962] RPC 265. Asprey & Garrard Ltd v WRA (Guns) Ltd (t/a William R Asprey Esq) [2002] FSR 31, [2002] ETMR 47 at [42] and [43]. 175 See NAD Electronics, Inc v NAD Computer Systems Ltd [1997] FSR 380 where the defendant relied unsuccessfully on his nickname as a defence; and Asprey & Garrard (n 174). 176 n 174 at [45]. 177 See 3.89 –3.90 and 5.53. 178 Inter Lotto (UK) Camelot Group plc [2004] RPC 9, at [36]–[41]. See also 7.05. 174

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9 PROCEDUR E AND R EMEDIES FOR INFR INGEMENT OF TR ADE M AR KS AND PASSING OFF

A B C D

INTRODUCTION CIVIL PROCEDURE EVIDENCE JURISDICTION

9.01 9.07 9.19 9.33

REMEDIES 

9.42

E REMEDIES: INTERIM INJUNCTIONS F INJUNCTIONS G INTERIM INJUNCTIONS H THE PRINCIPLES APPLIED IN GRANTING INTERIM INJUNCTIONS I PERMANENT INJUNCTIONS J PECUNIARY REMEDIES

9.42 9.46 9.51

9.61 9.76 9.79

K DELIVERY UP AND OBLITERATION OF OFFENDING MARKS OR SIGNS L CERTIFICATE OF CONTESTED VALIDITY M DETENTION OF IMPORTED GOODS BY CUSTOMS AND EXCISE N DOMAIN NAME DISPUTE RESOLUTION O ‘OPPORTUNISTIC’ COMPANY NAME REGISTRATIONS P THREATS ACTIONS Q CRIMINAL OFFENCES UNDER THE 1994 ACT R CRIMINAL PROCEDURE

9.104 9.110

9.111 9.131 9.134 9.139 9.149 9.170

A INTRODUCTION Registered trade mark and passing off claims can be brought in the Chancery 9.01 Division of the High Court (the Court of Session in Scotland) and the specialist division of the High Court called the Intellectual Property and Enterprise Court (IPEC), formerly known as the Patents County Court. IPEC follows a procedure that is distinct from normal High Court procedure. It has a multi-track and small claims track. There are various Chancery District Registries around England and Wales that have varying degrees of jurisdiction to hear these claims too.1 1 Birmingham, Bristol, Caernarfon, Cardiff, Leeds, Liverpool, Manchester, Mold, Newcastle Upon Tyne, and Preston per CPR 63 PD 16. See also Sections D and E herein.

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Procedure and Remedies for Infringement of Trade Marks 9.02 There are a large number of remedies available for trade mark infringement, most

of which are also available in cases of passing off.2 The remedies available include an injunction to prevent repetition of the acts of infringement or passing off,3 pecuniary remedies in the form of an inquiry as to damages or an account of profits, and an order forcing the defendant to publicise the judgment (a so-called publicity order). Publicity orders should only be made if there is a need for a supplementary deterrent or to contribute to the awareness of the public.4 The publicity order can also be awarded against an unsuccessful claimant to clarify any commercial uncertainty that has arisen as a result of the litigation and the conduct of the parties.5 There are also remedies available in relation to the infringing goods and/or the infringing marks upon such goods or other articles, including packaging. Such remedies include an order for erasure or obliteration of infringing marks, or, if necessary, an order for destruction of the infringing goods, or an order for delivery up of infringing goods, material, or articles. A successful claimant is usually also entitled to disclosure of the names, addresses, and contact details of the people who supplied the infringing goods to the defendant and who were supplied with the infringing goods by the defendant. 9.03 Under Part 25 of the Civil Procedure Rules the court has a discretion to grant a

variety of remedies pending a trial. These include an interim injunction, stopping infringing acts; an order freezing the assets of an allegedly infringing party, known as a ‘freezing order’;6 and an order allowing entry to premises and seizure of allegedly infringing goods, known as a ‘search order’.7 Apart from differences in the procedure between the various courts, there is an important distinction between the powers of the different courts to grant remedies. The IPEC small claims track is not able to grant such interim remedies whereas the IPEC multi-track and the High Court are both able to grant interim and final remedies. The remedy available does not depend on whether the action is brought in the Chancery Division of the High Court or the IPEC. Both courts can grant the same civil remedies for passing off and trade mark infringement.8 9.04 These remedies are available under the Civil Procedure Rules to the proprietor of

the registered mark and, in circumstances prescribed by ss 30 and 31 of the Trade

2

For UK registered trade marks, see ss 14(2), 15, 16, 19, 97, and 99 of the 1994 Act. For Community Trade Marks (CTMs), see Regulation (EC) 207/2009 (the CTMR), Art 9. 3 Or a quia timet injunction to stop a threatened act. 4 Art 27 of Directive (EC) 2004/48 (Enforcement Directive). 5 Samsung Electronics (UK) Ltd v Apple, Inc [2012] EWCA Civ 1339, per Sir Robin Jacob at [64]–[75]. 6 See Civil Procedure Rules (CPR) Part 25.1(1)(f), previously known as a ‘Mareva’ injunction. 7 See CPR Part 25.1(1)(h), previously known as an ‘Anton Piller’ order. 8 The IPEC has jurisdiction to hear UK trade mark cases by virtue of the High Court and County Courts Jurisdiction (Amendment) Order 2005. See also the Trade Marks (International Registrations Designating the European Community, etc) Regulations 2004, SI 2004/2332 giving the Patents County Court and the Chancery Division jurisdiction to deal with CTM cases.

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Civil Procedure Marks Act 1994 (the 1994 Act), to his licensees. For a discussion on the rights of licensees to bring proceedings in relation to infringement, see Chapter 6. The Intellectual Property (Enforcement, etc) Regulations 2006 give effect so far as 9.05 necessary to the Enforcement Directive, which was intended to provide for a minimum level of civil enforcement for intellectual property rights across Europe.9 Few changes were needed to UK legislation to implement the Enforcement Directive but one impact of the Enforcement Regulations relates to the consequences of parties failing to register assignments and licences with the Registry.10 Regulation 3 of the Enforcement Regulations requires the remedy to be proportionate and Arnold J took that into consideration when granting an order for the disclosure of the identity of online infringers.11 Another effect of the Enforcement Regulations is in the granting of so-called publicity orders and whether such an order was proportionate.12 The granting of that remedy is not meant to be punitive. It is common for claimants to include the directors and shareholders of small com- 9.06 panies as additional defendants in proceedings against the company itself, on the basis that as the company only functions through the acts of the director, the director is jointly and severally liable for the acts of the company.13 Acting only as an administrative officer of the company does not give rise to liability.14

B CIVIL PROCEDURE When a proprietor or exclusive licensee15 discovers an infringement of his regis- 9.07 tered mark or that there has been passing off, he should check his entitlement to bring an action by ensuring that the trade mark is currently registered or, in the case of passing off, that he has made sufficient use of the mark in the UK to give him protectable goodwill.16 The proprietor should then write a letter to the party allegedly infringing the mark 9.08 and inform that party of the registration if there is one, the grounds of complaint,

9 SI 2006/1028. The Enforcement Regulations implemented not only the Enforcement Directive but also other Directives relating to other areas of intellectual property. 10 See 6.09 and 6.19. 11 Golden Eye (International) Ltd v Telefonica UK Ltd [2012] EWHC 723, [2012] RPC 28. 12 See Samsung Electronics (UK) Ltd v Apple, Inc [2012] EWCA Civ 1339, [2013] ECDR 2. 13 MCA Records v Charly Records [2002] FSR 26. But note Premier Luggage v The Premier Co [2003] FSR 5 (CA), where one of three directors was sued and there was no evidence that he had done the acts concerned. For a more recent application of this principle, see Boegli-Gravures SA v Darsail-ASP [2009] EWHC 2690 (Pat). 14 Sabaf SpA v MFI Furniture Centres Ltd [2002] EWCA Civ 976 at [57]–[59]. Although the case was overturned in the House of Lords, this aspect was not appealed. 15 See Ch 6 on the rights of exclusive licensees. 16 See Ch 8 on reputation and goodwill.

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Procedure and Remedies for Infringement of Trade Marks and attempt to resolve the dispute without commencing proceedings.17 The proprietor should, if possible, be careful not to make an actionable threat of trade mark infringement.18 If an actionable threat is made, it can mean that the prospective claimant and his representatives, be they solicitors or trade mark attorneys, become the defendants in a related threats action. When relying on a Community Trade Mark (CTM), care needs to be taken to avoid giving the potential defendant the opportunity to torpedo the intended claim by filing an application to invalidate the registration at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), thus resulting in any subsequent UK litigation being stayed pending final determination of the invalidity proceedings.19 9.09 If the dispute cannot be resolved through correspondence or other negotiations,

then the claimant can commence proceedings by issuing a claim form.20 This procedure is followed whether the claim is for passing off or infringement of a CTM or a UK registered trade mark, or both. 9.10 The claimant will need to decide whether to issue proceedings in the High Court,

the IPEC multi-track, or IPEC small claims track. Claims that are valued at less than £10,000 may be suitable for the small claims track but if the registration’s validity is in dispute then the small claims track is unlikely to be suitable.21 The small claims track is intended for simple claims with limited disputes of law. It has no power to grant interim remedies. 9.11 The IPEC procedure is designed to be simpler and cheaper than the High Court

procedure and is intended for cases with fewer issues in dispute than for other High Court cases. Cases in the IPEC multi-track have a damages cap of £500,00022 and trials generally need to be listed for two days or less. As a result there is limited disclosure, limited cross-examination, and limited oral submissions. The statements of case need to contain the facts and arguments relied upon by the parties, 23 meaning that there is an emphasis on arguing the case on paper, rather than at a hearing. The case management conference (CMC) plays a critical role in IPEC cases as the judge will determine what steps the parties may take in preparing for the trial. The judge has the discretion not to allow any disclosure, witness statements, or cross-examination or, as is typical, to direct that such steps are restricted to a series of defined issues. The parties need to attempt to agree a list of issues in advance of the CMC and justify why a particular procedural step is necessary. 17 Th is process of trying to resolve disputes without commencing proceedings is strongly encouraged under the CPR and will, if the dispute is not resolved, help to provide some protection on costs. 18 See 9.139 on actionable threats. 19 See 9.39. 20 See CPR Part 7. 21 See para 1.7 of the Guide to the Patents County Court Small Claim Track. 22 See the Patents County Court (Financial Limits) Order 2011 which came into effect on 14 June 2011. 23 See 63.20(1).

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Civil Procedure In an IPEC multi-track case, the costs that a party can recover from the other side 9.12 are capped. The costs are capped for particular stages as the claim progresses. The overall cap on the recovery of costs is capped at £50,000 for a trial of liability and £25,000 for an enquiry as to damages. Actual recovery is often less than those maximum sums. The procedure of the small claims track follows the small claims procedure of the 9.13 CPR but within the framework of the IPEC. This means that small claims track cases follow the IPEC rules on content and timetable for the statements of case. A distinction between the IPEC small claims track and the multi-track cases is that there is very limited scope for any costs recovery in the small claims track. Sometimes the extent of the dispute between the parties changes during the prepar- 9.14 ation of the case for the trial and it may become necessary to transfer the matter to or from the normal High Court procedure and the IPEC procedure. The same situation may arise between a small claims track and multi-track case too. In such situations, an application will need to be filed or, as is commonly the position, the matter will be raised at the CMC. If the claimant decides to seek interim relief then an application notice, draft order, 9.15 and supporting evidence will need to be served. The Particulars of Claim, setting out the claimant’s case, can either be served with the claim form or within 14 days after the service of the claim form. The Acknowledgement of Service accompanied by a statement of an intention to defend the claim, if the defendant has such an intention, must be served within 14 days after the service of the claim form, or if the Particulars of Claim is served separately to the claim form, 14 days after the service of the Particulars of Claim. In the High Court procedure, the Defence must be served within 14 days of the 9.16 service of the Particulars of Claim, if served separately to the claim form, otherwise within 28 days of service of the claim form. In the IPEC procedure, both small claims and multi-track, the defendant has 42 days to serve its Defence, or 70 days if the claimant has not stated that it has complied with the Practice Direction on Pre-Action Conduct.24 The time limit for the Reply to the Defence is 28 days from the service of the Defence and 14 days for service of a Defence to a Counterclaim. If the parties wish to extend those time limits they must obtain the consent of the judge but if the parties agree to such an extension the judge is much less likely to refuse. Often the defendant counterclaims, in a registered trade mark case, seeking revo- 9.17 cation of the registration or a declaration that the registration is invalid. Such a counterclaim should be supported by Particulars of Objection, setting out the grounds of the trade mark’s invalidity. In IPEC cases, the Particulars of Objection 24

See CPR 63.22.

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Procedure and Remedies for Infringement of Trade Marks are incorporated into the Defence and Counterclaim. If a defendant seeks to declare the registration invalid or revoke it, he must serve a copy on the Registry. If the counterclaim relates to a CTM, the party making the counterclaim must notify the court25 and the court then must notify OHIM.26 Otherwise, the case proceeds in the normal way. 9.18 Parties will commonly try to protect themselves against an adverse costs order by

making offers and, in particular, offers under CPR Part 36, to the other side. When a party does better at trial than the offer previously made, he is entitled to recover his costs from the period starting shortly after the time that the offer was made. The CPR sets out requirements for a valid Part 36 offer but offers that fail to comply with those requirements are still taken into consideration by the court. The difficulty in trade mark and passing off cases is often in determining whether a party has done better than the offer made, particularly before the outcome of a damages enquiry. This will require a comparison to be made between the order made by the court and the various offers made.

C EVIDENCE 9.19 The evidence that a claimant needs to bring before the court will vary according to

the circumstances of the case. There have been changes as to the sort of evidence which is allowed or is desirable in registered trade mark and passing off cases in recent years. Those changes have been introduced through case-law and reform of the CPR.27 9.20 The High Court procedure has changed the requirements for producing docu-

ments, namely disclosure, witness statements, and expert evidence. There is no longer an assumption that standard disclosure applies in the form of a need to list all documents adversely affecting the claimant’s or defendant’s case in relation to all the disputed issues. There is now a range of types of possible disclosure, such as seeking standard disclosure, confining disclosure to certain issues, or dispensing with disclosure completely.28 The parties will need to justify their preference at the CMC. There are also restrictions limiting the production of witness statements which mean that the parties may be limited to producing witness statements addressing defined issues only.29 In relation to expert evidence, parties now need to produce an estimate of how much it will cost to produce the desired expert

25

Pursuant to CPR 63 PD para 21.3. Pursuant to CPR 63 PD para 21.2. 27 Implementing the core recommendations of the Review of Civil Litigation Costs Final Report on 1 April 2013. 28 CPR 31.5. 29 CPR 32.2(3). 26

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Evidence evidence when seeking permission to adduce such evidence.30 These rules do not apply to IPEC cases and IPEC cases are subject to the existing rules and guidelines of that court. In reality, these rules bring the High Court procedure into line with the existing IPEC procedure. The recent decisions in Interflora (there are two decisions of the Court of Appeal)31 9.21 and BSkyB v Microsoft32 have made clear that there is limited room for survey evidence in trade mark litigation and only marginally more room in passing off cases (see 9.30). These judgments have also highlighted the need to produce evidence to support the right legal test. For trade mark infringement, the evidence needs to address the characteristics of the average consumer because what matters is what that notional average consumer would think, taking all the relevant circumstances into consideration.33 The evidence may be (but is not always) the same in practice for passing off cases, where the evidence needs to address the central issue of whether a substantial number of members of the relevant public are likely to be deceived.34 Given the distinction between the tests it is possible that the results will differ and in Interflora (CA 1), Lewison LJ considered that the same result would not be inevitable and indicated that in circumstances where the majority of the consumers were not confused, it could not be said that the average consumer would be.35 In the case of an infringement action, in addition, the claimant will need to prove 9.22 his title to the registered mark, and where he relies upon reputation or prestige as well as the registration he will need to show that he has made sufficient use of the mark to have acquired a distinctive protectable reputation or prestige. Typically that requires evidence of sales, advertising, and awareness of the mark on the part of members of the trade and public, and commentary from third parties in relation to the mark, its reputation, and prestige.36 In passing off actions, evidence of the extent and nature of the use is crucial in 9.23 establishing a protectable goodwill. The nature of the evidence will vary from case to case, but in passing off actions the relevant facts are typically at least as important as the relevant law.37 The relevant evidence will include the duration of trade under the mark, the sales and advertising figures, to what extent there is brand recognition in the minds of the trade or public, and the ways in which the mark is

30

CPR 35.4(2). Interflora v Marks & Spencer [2012] EWCA Civ 1501, [2013] FSR 21, [2013] ETMR 11, and [2013] EWCA Civ 319, [2013] FSR 26. 32 British Sky Broadcasting Group plc, Sky IP International Ltd v Microsoft Corporation [2013] EWHC 1826 (Ch), 28 June 2013. 33 See Ch 7, conditions for infringement. 34 See 8.59 – 8.60. 35 Interfl ora v Marks & Spencer [2012] EWCA Civ 1501, [2013] FSR 21, [2013] ETMR 11 at [34]. 36 See also 3.31, 3.55, 7.47, and 7.51 et seq. 37 See Wild Child trade mark [1998] RPC 455. 31

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Procedure and Remedies for Infringement of Trade Marks used by the proprietor on products and advertising. There may be agreements that need to be produced establishing licensing or franchising regimes. 9.24 The evidence will equally need to cover the defendant’s actions, how a likelihood of

damage could arise, and the resulting likely damage. It should also describe, if part of the claim, any motive or intention on the part of the defendant to ‘pass off ’ his product or services as those of the claimant. The actual or threatened infringement or misrepresentation will need to be set out and details of any known instances of confusion should be provided. 9.25 Naturally, where action is taken very swiftly—either before the defendant has

started using the mark, or where he has only been using it for a very short time—it may well be that no evidence of actual confusion will have come to the claimant’s notice. In many ways taking prompt action can be a benefit to the claimant, assuming that a likelihood of confusion needs to be shown, since the court might not expect the claimant to have discovered instances of confusion at the outset of the activity of which he complains. The court will therefore have to look at the claimant’s mark and/or reputation, the acts complained of, and simply assess the likelihood of confusion. Where the defendant’s activity has been going on for some time, a lack of evidence of confusion may be damaging to a claimant’s case. Getting that evidence before the court is notoriously difficult. First, members of the public are reluctant to attend court. Secondly, people who are confused or deceived may remain so and may never come to the attention of the parties. Thirdly, if they were confused or deceived but then appreciate that they were misled, they may have no reason to bring this to the attention of the parties. Accordingly, evidence of actual confusion and deception is often decisive but its absence is not.38 9.26 The question of likelihood of confusion is one for the judge to decide following the

established criteria.39 It is a kind of jury question for the judge. This issue is certainly not a matter for expert evidence. Reliance on an expert report is contrary to clear guidance given by the Court of Appeal.40 The point was most succinctly put by Maurice Kay LJ: ‘neither a hearing officer nor a judge in the Chancery Division requires the assistance of an “expert” when evaluating the likelihood of confusion from the standpoint of the average consumer’.41 9.27 Even if the marks are prima facie similar, a claimant may have difficulty proving

that there is the necessary likelihood of confusion or that there have been instances of actual confusion. If ordinary members of the public can be found who can be

38

See Fine & Country Ltd v Okotoks Ltd [2012] EWHC 2230; Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2006] EWCA Civ 244, [2007] RPC 5, per Jacob LJ at [45]; Harrods Ltd v Harrodian School Ltd [1996] RPC 697, per Millet LJ and Kerr LJ. See 8.61. 39 See 3.25 et seq. See Julius Sämaan Ltd v Tetrosyl Ltd [2006] FSR 42, at [46]–[53]. 40 See esure Insurance v Direct Line Insurance plc [2008] RPC 34. 41 esure Insurance (n 40), at [82].

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Evidence shown to have been confused, theirs will generally be the best evidence available. The judge will also have to assess how representative the witnesses of confusion are: ‘are they unique or are they only those that have come to light . . .? The court has to make such use of them as it can in assessing the global impact of what the defendant is doing.’42 Judges are generally wary of the evidence of members of the trade but they may 9.28 assist if the factual circumstances of the trade require some explanation. Sometimes it may be helpful to provide evidence in the trade explaining the likely reaction of others in a particular sphere of work.43 In practice, such witnesses have been called as witnesses of fact rather than expert witnesses. For example, in the Rihanna case,44 the judge allowed and later accepted evidence from members of the trade, relating to the particular circumstances of the music merchandising business and how it had changed in recent years. Further, in IBM v Phoenix International Computers Ltd 45 Ferris J held that, where there is a specialised market, evidence from those in the trade as to what is usual will be essential. It is important to determine whether the evidence is expert evidence or not. Permission is required to adduce expert evidence and such evidence must comply with the expert witness regime. Also, the current view is to restrict expert evidence in trade mark and passing off cases, particularly if it is of limited probative value.46 In contrast, witnesses of fact have no such restrictions save for those general limitations now imposed by the CPR. Lewison LJ stressed in Interflora (CA 1),47 a case concerning ordinary consumer 9.29 goods and services, that the court is able to put itself into the position of the average consumer without requiring expert evidence or a consumer survey. As Chadwick LJ said in Bach and Bach Flower Remedies trade marks,48 in a passage which Lewison LJ emphasised in Interflora (CA 1), ‘The task for the court is to inform itself, by evidence, of the matters of which a reasonably well informed and reasonably observant and circumspect consumer of the products would know; and then, treating itself as competent to evaluate the effect which those matters would have on the mind of such a person with that knowledge, ask the [relevant] question.’ Many attempts have been made over a number of years to rely upon survey evi- 9.30 dence to establish a likelihood of confusion, with extremely limited success. The results of the survey could be relied upon, namely the percentage of respondents who had a particular belief upon seeing a mark, or the best responses could be used

42

Asprey & Garrard Ltd v WRA (Guns) Ltd [2002] FSR 31 (CA), affirming [2002] FSR 30. See Sodastream v Thorn Cascade [1982] RPC 459, per Kerr LJ; and George Ballantine & Sons v Ballantyne Stewart & Co [1959] RPC 273. 44 See Birss J in Robyn Rihanna Fenty v Arcadia Group Brands (t/a Topshop) [2013] EWHC 1945. 45 [1994] RPC 251, applying GE [1973] RPC 297, 321. 46 See both Interfl ora cases (CA 1 and 2). 47 (CA 1) at [45]–[56]. 48 [2000] RPC 513 at [41]. 43

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Procedure and Remedies for Infringement of Trade Marks to generate witness statements. That practice is now heavily regulated and it is a requirement to seek permission to conduct a survey and adduce survey evidence. Permission to adduce survey and expert evidence is required in the Registry too.49 Permission will only be granted where the resulting evidence would be of real value, taking into consideration the costs involved. In Interflora (CA 1), Lewison LJ set out the position as follows:50 a. A party may conduct a true pilot without permission, but at its own risk as to costs. b. No further survey may be conducted or adduced in evidence without the court’s permission. c. No party may adduce evidence from respondents to any survey without the court’s permission. 9.31 The same parties returned to Lewison LJ in the same case on the same issue a short

while later and he said:51 ‘With the benefit of hindsight, perhaps I did not make my message clear enough in Interflora 1. Let me say it again but more loudly. A Judge should not let in evidence of this kind unless the party seeking to call that evidence satisfies him (a) that it is likely to be of REAL value; and (b) that the likely value of the evidence justifies the cost.’ 9.32 A pilot survey may well be needed in order for the preliminary results to be relied

upon at the application for permission to conduct and rely upon the full survey. The application needs to include an explanation of the likely costs, too, as they likely are a relevant factor in determining whether permission is granted. Finally, a party is more likely to get permission to conduct a survey directed towards the issue of distinctiveness than to a likelihood of confusion.

D JURISDICTION General 9.33 A UK trade mark can only be infringed through use of a sign in the UK.52 In

contrast, a CTM has effect throughout the European Union and can be infringed through use of a sign in any Member State. In respect of a UK trade mark or a CTM, a defendant who is resident in this country can be sued in this country and jurisdiction poses no problem. A defendant who is resident abroad can also be sued in this country but, depending on where that defendant is resident, the permission of the court may be required to serve him with the proceedings.53 The general rule 49 50 51 52 53

TPN 2/2012. n 31. Interflora, Inc v Marks & Spencer [2013] EWCA Civ 319 at [26]. Pursuant to s 9 of the 1994 Act. See Ch 7. Service out of the jurisdiction is dealt with in CPR Part 6.

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Jurisdiction is that the defendant should be sued in the country of his domicile.54 However, if the infringing act occurred in this country and the defendant is resident in a country subscribing to the Brussels Regulation55 or Lugano Convention and that same cause of action is not being litigated in another country, then proceedings can be commenced in this country and no permission is required.56 Permission from the court will be required to serve proceedings on a defendant 9.34 resident in a country which is not party to the Brussels Regulation,57 such as the US.58 If damage was suffered in this country, or if the harmful act was committed in this country, then permission may be granted. When making an application for leave to serve abroad, the claimant must satisfy the court that the High Court is the appropriate forum for the hearing and that there is a serious issue to be tried.59 In principle,60 Member States can determine claims made in respect of a trade 9.35 mark registered in another country but the only country which can determine the issue of validity is the country where that trade mark was granted.61 This principle of suing in the UK in respect of another Member State’s intellectual property right was confirmed by the Court of Appeal in Pearce v Ove Arup.62 CTMs The effects of a CTM are governed by Article 14 of Regulation (EC) 207/2009 (the 9.36 CTMR), but otherwise questions of infringement of a CTM are governed by the national law of the country where the infringement occurs. Title X of the CTMR provides for infringement actions to be heard in the appropriate national courts. By Article 95, each Member State has to designate a court as a ‘Community trade mark court’. In England, Wales, and Northern Ireland the designated courts are the High Court, including IPEC.63 In Scotland, it is the Court of Session. Such courts have exclusive jurisdiction over infringement actions, actions for declarations of non-infringement, and compensation for infringement, under Article 9(3). The question of which jurisdiction is the appropriate forum for disputes concern- 9.37 ing a CTM is dealt with in Article 97 CTMR. If the proposed defendant is domiciled in the EU, an infringement action should normally be brought in the place of

54

Brussels Regulation, Art 2. Council Regulation (EC) 44/2001 of 22 December 2000. Countries subscribing to this Regulation include the Member States of the EU. If the defendant is resident in Iceland, Norway, or Switzerland, the Lugano Convention still applies. 56 See CPR r 6.08 and 6.32 – 6.33. 57 Council Regulation (EC) 44/2001 of 22 December 2000. 58 See CPR r 6.36. 59 See Seaconsar Far East Ltd v Bank Markazi Jomhouri Islami Iran [1994] AC 438. 60 Under the Brussels and Lugano Conventions. 61 Pursuant to the Brussels Convention, Art 16. 62 [1999] FSR 525. 63 See the Community Trade Mark Regulations 2006, SI 2006/1027, reg 12. 55

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Procedure and Remedies for Infringement of Trade Marks his domicile. This rule is subject to the general provisions of the Civil Jurisdiction and Judgment Act 1982, which, for example, allow a party to sue in the state where the damage caused by an infringement occurs, potentially offering a choice of forum to the claimant. That provision is echoed specifically in Article 97(5) which allows the action to be brought in the state in which the infringement occurs. If the proposed defendant is not domiciled or established anywhere in the EU, the action should be brought in the claimant’s home state. If neither party is domiciled in the EU, the action is to be brought in Spain, as the home of OHIM. In all such cases, although not under Article 97(5), the court hearing the case may deal with infringements or threatened infringements in all Member States. There is a power to grant both interim and permanent injunctions on a pan-EU basis too (Articles 102 and 103).64 National rules on appeals apply, and there is also the possibility of a reference to the Court of Justice of the European Court (CJEU) if necessary.65 9.38 As with national trade mark actions, a defendant to such an action may, by Article

100 CTMR, counterclaim for revocation or a declaration of invalidity of the CTM in such an infringement action, on any of the grounds in the CTMR. Such a step can otherwise only be taken at OHIM itself. However, if the same issue has already been decided by OHIM, as between the same parties, the court should reject such a counterclaim (Article 100(2)). If the matter has not been decided but the validity of a trade mark is already in issue on account of a counterclaim in pre-existing domestic proceedings, OHIM will normally stay its own hearing of an application for a declaration of invalidity, or for revocation, unless there are special grounds for continuing the hearing. It is not easy to establish such grounds.66 9.39 If the court is not seized of the issue, then once OHIM is seized of the matter, the

national court must stay the case pending resolution of the validity by OHIM pursuant to Article 104 CTMR, unless there are special grounds for not doing so.67 Accordingly, care needs to be taken when sending a letter before action in relation to a claim for infringement of a CTM because the intended defendant may well apply to invalidate the CTM at OHIM before the claimant has commenced proceedings, thus seizing OHIM with jurisdiction over the validity of the CTM resulting in the UK court staying the claim. Th is is the so-called ‘Alicante torpedo’.

64

See DHL Express France SAS v Chronopost SA case (C-235/09), [2011] ECR I-02801 [2011] FSR 38 where the court held that, as a matter of principle, CTM courts had jurisdiction over the entire EU but that they could grant an injunction over part of the territory of the EU, such as a Member State if it considered it appropriate (see [48]). 65 Pursuant to the Treaty Establishing the European Communities, Art 234, now Art 267 following the Lisbon Treaty. 66 See Kitfi x Swallow Group Ltd v Great Gizmos Ltd [2008] FSR 9. 67 See the Court of Appeal’s decision in the joined appeals of Starbucks (HK) Ltd v British Sky Broadcasting Group plc and EMI (IP) Ltd v British Sky Broadcasting plc [2012] EWCA Civ 1201, [2012] Bus LR 633.

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Remedies: Interim Injunctions As CTMs are unitary in nature and apply across the EU, an injunction granted in 9.40 relation to a CTM in one country can apply throughout the EU. The scope of the relief obtained depends upon various factors, including the domicile of the defendant and where the claim is brought.68 Differences between the approaches of national courts may affect the outcome of 9.41 an infringement case, and lead to a danger of ‘forum shopping’. Except in the most blatant cases of infringement, the courts will naturally have to determine whether or not there is a conflicting similarity between the two marks, and difficulty may well arise because national views of this concept differ. For instance, in the Deutsche Renault case69 in the CJEU, it was pointed out that whereas in Germany there was seen to be a clash between the marks ‘Quattro’ and ‘Quadra’, the same marks coexisted on the UK Register. Linguistic differences between Member States may affect the result of such a case. This would mean that a mark might be found to infringe in one state but not another and the extent of the injunctive relief may vary and be restricted to certain Member States.

REMEDIES E REMEDIES: INTERIM INJUNCTIONS Before going on to deal with the various remedies available in more detail, there 9.42 is one point to be made which cannot be stressed too greatly. Usually, the major concern of the proprietor of a mark which is being infringed, or which is the subject of passing off, is to stop the defendant from carrying out the acts complained of as rapidly as possible. A claimant can obtain an interim, that is to say a temporary, injunction from the High Court, including IPEC, if he moves quickly enough and if the circumstances merit such immediate relief. This type of urgent interim injunction can be obtained very quickly, without necessarily putting the defendant or potential defendant on notice, if there are extreme circumstances which warrant granting an injunction. The availability of these interim injunctions is the greatest weapon in the trade 9.43 mark proprietor’s armoury. It cannot be stressed too greatly how important it is on discovering an infringement or a threatened infringement to seek advice at once

68 See Art 98 CTMR and DHL Express France SAS v Chronopost SA (n 64) where the court held that, as a matter of principle, CTM courts had jurisdiction over the entire EU but that they could grant an injunction over part of the territory of the EU, such as a Member State if it considered it appropriate (see [48]). 69 Deutsche Renault AG v Audi AG, Case C-317/91, [1993] ECR I-6227, [1995] FSR 738.

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Procedure and Remedies for Infringement of Trade Marks and to ensure that the possibility of obtaining interim relief is immediately considered and pursued if appropriate. 9.44 Delay can be fatal to an application for interim relief. It cannot be judged in advance

how long a period of delay may be acceptable in any particular case, since this will depend upon all the circumstances, many of which may well not be known to the claimant at the outset. It is therefore vital for a trade mark proprietor to move as swiftly as he can. In the vast majority of cases where an interim injunction is granted in favour of a claimant, the injunction puts an end to the acts or threatened acts of infringement and there is never a trial of the action. This is because once the defendant has launched its goods or service under a new trade mark, it will be reluctant to make another change. 9.45 When seeking an interim injunction in a comparative advertising case, the claim-

ant will need to satisfy a higher threshold on the merits than that normally applied. The claimant will need to show that it would probably succeed at a trial rather than merely show that it has an arguable case.70

F INJUNCTIONS 9.46 An injunction is an order of the court requiring the defendant (and others

through whom he might act, such as his employees or agents) either to refrain from doing certain specified acts, or to carry out certain specified acts. It will only be granted where the court considers there to be a risk of the infringement continuing. 9.47 In the case of trade mark infringement or passing off, the type of injunction most

generally sought is one to restrain the defendant from carrying out the acts of infringement or passing off. Mandatory orders may be sought too, such as ordering the disclosure of the defendant’s customer list or the names of his suppliers. Alternatively, an order might be made that a defendant change its company or trade name, and amend all business documentation, where the use of the name amounts to an infringement or an act of passing off. The court may also order that a company name or domain name be transferred to the claimant, as a final order rather than an order pending a trial. 9.48 Remedies are also available against someone who is not himself an infringer or

a party to the proceedings but has become mixed up with the infringement. For example, it is possible to obtain an order for disclosure of the identity and contact details of a seller on an online auction website where the seller uses a pseudonym.

70

Boehringer Ingelheim Ltd v Vetplus Ltd [2007] EWCA Civ 583, [2007] ETMR 67, [2007] FSR 29.

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Interim Injunctions This remedy is available applying the principle from Norwich Pharmacal Co v Commissioners of Customs & Excise.71 Whether the injunction sought is interim or final, it may be difficult to decide pre- 9.49 cisely what wording is appropriate to restrain the defendant from continuing acts of infringement or passing off, but otherwise leaving him free to run his business. At the interim stage, the terms of the injunction should be specifically directed to those acts which it is alleged constitute the acts of infringement or passing off and should not merely say that the defendant must not infringe the claimant’s trade mark or commit acts of passing off. The principle is that the defendant should know with a reasonable degree of certainty what is and is not permitted pending the trial of the action.72 As to the wording of a permanent form of injunction, this will again depend upon 9.50 the circumstances of the case. An absolute prohibition against infringement of a registered trade mark is usual, although the court does retain a discretion to restrict the form of the injunction when an absolute prohibition would be oppressive and unfair. For instance, if the infringement was innocent, or the result of a mistake, the court may order a narrow form of injunction in relation to proven specific acts of infringement.73 Further, in cases of passing off, it may be that the mark or other sign being used by the defendant would not cause confusion if used in a way that would prevent the actionable misrepresentation arising. It is not unknown for the injunction in such cases to be granted subject to the limitation that the injunction only covers use of the claimant’s mark which is made ‘without clearly distinguishing’ the defendant’s goods or services from the claimant’s goods or services. Naturally, such a qualified injunction may represent something of a hollow victory to the claimant and is apt to lead to further disputes between the parties as to whether any steps taken by the defendant to distinguish his goods or services from those of the claimant are sufficient to avoid a breach of the order.

G INTERIM INJUNCTIONS The principles to be applied in seeking an interim injunction are quite different 9.51 from those relating to the grant of a permanent injunction after success at trial. 71

[1974] AC 133. Pursuant to CPR Part 25.5. An example being eBay, where sellers do not need to provide an address or contact details. 72 See Video Arts Ltd v Paget Industries Ltd [1988] FSR 501; Th e Staver Co, Inc v Digitext Display Ltd [1985] FSR 512. 73 See Cofl exip SA v Stolt Comex Seaways MS Ltd [2001] RPC 9 (CA). See also Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd [2000] FSR 267, where Neuberger J granted a narrow form of injunction and refused an inquiry as to damages, as no damage was shown. See also Sun Microsystems, Inc v Amtec Computer Systems Corp Ltd [2006] FSR 35, where the court granted an order requiring the claimant to confirm that the goods were not authorised for resale in the European Economic Area (EEA) before the prohibition applied. See 9.77.

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Procedure and Remedies for Infringement of Trade Marks 9.52 An interim injunction is, as stated earlier, probably the most important remedy

available to a trade mark proprietor. When an infringement or an act of passing off is discovered or threatened, the interim injunction offers an opportunity of stopping the defendant in his tracks, sometimes extremely quickly. In cases of real urgency, an application for interim relief can be made without giving notice (or without giving formal notice, at least) to the defendant. When making such an urgent application there is a duty on the claimant to disclose to the court all the facts which are material to the application, whether they support the application or not.74 9.53 The length of time between discovering the infringement and obtaining an injunc-

tion will depend upon the speed with which the claimant is able to act and to provide any necessary information or evidence to his lawyers, and upon judicial availability. Where counsel is able to persuade the court of the urgency of the application, it is not unusual for such an application to be made on the day advice is first sought, or at least within a few days of seeking advice. It may not even be necessary to issue a claim form first, as long as the claimant undertakes to do so ‘forthwith’, in other words as soon as possible after the hearing. 9.54 Generally, if an application without notice is not required, the procedure will be

as follows: the claimant will issue a claim form, a separate application notice, and a copy of the draft order in which he sets out the specific order which he would wish the court to make on a temporary basis. These documents must be supported by evidence either in the application notice itself 75 or, more usually, in the form of witness statements sworn on behalf of the claimant and incorporating whatever supporting documentation is appropriate. All of those documents will be served upon the defendant, who needs to be given three clear days’ notice of the application. In cases of urgency, that period can be abridged by the court. 9.55 What happens upon the first hearing of the application depends on the circum-

stances of the case. If the defendant does not appear, then the claimant will make his application and seek his order from the judge. If the defendant does appear, he may indicate that he wishes to put in evidence in answer and the matter will then be adjourned until the evidence is complete and a hearing date can be found. Where that happens, the claimant may wish for some protection in the meantime. Sometimes, defendants are prepared to offer an undertaking, possibly in a form which is somewhat less restrictive than the order sought in the draft order, which may satisfy the claimant or, possibly, the judge. If the claimant is not satisfied with any undertaking which is offered, then an application will be made at that first hearing date to the judge for an interim order lasting only until the full hearing of the application.

74 75

There are other procedural requirements set out in CPR Part 25. As evidence in the application notice, Part C.

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Interim Injunctions Instead of an interim injunction the court may order that there be a ‘speedy’ trial. 9.56 This means that the parties proceed with rapid preparation for a full trial of the action to be heard a few months later. The usual theoretical time limits are squeezed to a minimum. If a speedy or expedited trial is ordered, a trial can take place as little as two to four months after commencing proceedings. A speedy trial may be an appropriate alternative to an interim injunction where it seems that it would be particularly important to hear oral evidence or where it is clear from both parties’ points of view that an interim order would not have the effect of determining the dispute between the parties and there is some urgency in having a final determination of the dispute. Sometimes the court will order the speedy trial in addition to the interim injunction. The possibility of seeking interim relief is generally attractive to the proposed 9.57 claimant but there are two financial considerations. First, it may be quite expensive if the application for interim relief develops into a full-blown battle between the parties, with an exchange of voluminous evidence and a hearing lasting one or more days. If the claimant is successful in obtaining the relief sought, those costs may have been well spent and he may get an order for costs against the defendant in one form or another. On the other hand, if no interim relief is granted, it may have been an expensive and possibly time-wasting process. If the hearing of the interim application lasts one day or less, then the court gener- 9.58 ally makes an immediate assessment of costs which will usually need to be paid within the next fourteen days.76 Where the interim injunction is granted then, save for cases in which the judge considers that it was unreasonable to defend the application for an interim injunction, the court may decide that despite the hearing lasting less than one day the costs of the interim application should be reserved until the trial. In Desquenne77 the Court of Appeal held that in granting an interim injunction on the balance of convenience, the court was ‘holding the ring’ until trial and there was no successful or unsuccessful party. Accordingly, the costs should be reserved until trial. Neuberger J, in Picnic at Ascot,78 followed Desquenne but held that there were circumstances where it would be appropriate for the court to make an immediate costs order, such as when it should have been clear to the defendant that the interim injunction would be likely to be made. The costs order made will vary with the particular circumstances of the case though.79 The second financial consideration relates to what is called the ‘cross-undertaking 9.59 in damages’. This undertaking is normally required as a condition of granting an interim injunction. The purpose of the claimant giving the cross-undertaking in damages is to ensure that the parties affected by the injunction are compensated if 76 77 78 79

See CPR Part 44.8. Desquenne et Giral UK Ltd v Richardson [2001] FSR 1 (CA). Picnic at Ascot v Derigs and ors [2001] FSR 8. See Chemistree Homecare Ltd v Teva Pharmaceuticals Ltd [2011] EWHC 2622.

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Procedure and Remedies for Infringement of Trade Marks it later turns out that the injunction should not have been granted. When enforcing the cross-undertaking the court will look to compensate the parties affected, rather than punish the party who obtained the injunction.80 The cross-undertaking, therefore, is an important means of ensuring that justice is done. The requirement to offer such a cross-undertaking may be off-putting to a claimant in a small business or with limited means who is faced with a large, corporate defendant whose claim for damages under the cross-undertaking might be substantial. 9.60 The court will need evidence of the claimant’s means and his ability to pay any

damages which may be assessed under the cross-undertaking, and will weigh his ability to pay against the likely measure of such damages. Normally, the claimant provides evidence of his ability to meet such a likely award in his witness statement, with any company accounts exhibited. In appropriate cases, the court may require the claimant to give some security for the cross-undertaking. On the other hand, the court will not refuse an injunction merely on the grounds of the claimant’s inability to meet a cross-undertaking in damages, if to refuse the injunction would be to do an injustice.81

H THE PRINCIPLES APPLIED IN GRANTING INTERIM INJUNCTIONS 9.61 The underlying principles which apply to the grant of interim injunctions are the

same in cases of trade mark infringement and passing off 82 and it has been generally accepted for some years that the principles to be applied are those adopted in the case of American Cyanamid Co v Ethicon Ltd.83 9.62 There is an exception which relates to cases involving comparative advertising. In

these cases, the American Cyanamid test does not apply and a court will only grant an interim injunction if it is more likely than not that the disparagement made in the comparative advertisement is wrong and misleading. In Boehringer, 84 the Court of Appeal held that the American Cyanamid test would be inappropriate because comparative advertising falls within the scope of s 12(3) of the Human Rights Act 1998, despite being a commercial dispute, and granting an interim injunction on that basis amounted to an interference in a party’s freedom of expression.

80 For a detailed explanation of the principles, see the decision of Arnold J in Lilly Icos LLC and ors v 8pm Chemists and ors [2009] EWHC 1905 (Ch), 31 July 2009. 81 See eg Allen v Jambo Holdings [1980] 1 WLR 1252. 82 See County Sound plc v Ocean Sound Ltd [1991] FSR 367. 83 [1975] AC 396, [1975] RPC 513. Th is happened to be a patent case in which the House of Lords set out the basic principles relating to interim injunctions in all kinds of cases. 84 per Jacob LJ in Boehringer Ingelheim Ltd v Vetplus Ltd [2007] FSR 29 at [48].

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The Principles Applied in Granting Interim Injunctions Following American Cyanamid, the principles to be applied in deciding whether to 9.63 grant an interim injunction are as follows: Arguable case The first question to ask is: has the claimant established that he has a ‘good argu- 9.64 able claim’ to the relief he seeks? To put it another way: has the claimant shown ‘that there is a serious question to be tried’? The claimant does not need to show that he has such a strong case that he is likely to win at trial, but he does need to show that his claim is not frivolous or vexatious or so weak that it would be wrong to grant any injunction without having a full hearing of the evidence. If the court is persuaded that the result of the interim application may, in effect, be final and that the matter will never go to a full trial, then the court is likely to examine the merits of the case more closely than it would otherwise. This is because frequently in infringement or passing off actions, the defendant will not wish to revert to use of a name or mark which he had been prevented from using by an interim injunction, particularly, if between that time and the trial of the action, perhaps one or even two years later, he has invested time, money, and effort in building up a non-infringing mark or name.85 In Series 5 86 Laddie J held that the court will assess the merits of the case if there is 9.65 enough evidence for it to do so and, if it comes to a clear view that one party has a significantly stronger case than the other, it may take that factor into consideration when deciding to grant an interim injunction. Laddie J added that it was common knowledge that the practice of the court was to consider the relative strengths of the parties’ arguments, where possible, when hearing applications for an interim injunction. Damages an inadequate remedy to the claimant Assuming that the claimant does show that he has an arguable case, he will then 9.66 have to show that damages awarded at an eventual trial would not be an adequate remedy to him if an interim injunction were not granted and he had to be compensated for the loss suffered pending trial. Alternatively, or in addition to the argument that damages would not be an adequate remedy, the claimant needs to show (as best he can at that stage) that the defendant would not be able to pay an award of damages were he allowed to continue to use the mark until the trial.87 The sort of damage suffered which is relevant includes damage to the claimant’s 9.67 reputation, goodwill, existing agreements, future commercial prospects, and property. It is common to argue that there may be an incalculable element of damage 85 86 87

See eg Elan Digital Systems Ltd v Elan Computers Ltd [1984] FSR 373, 386. Series 5 Software Ltd v Philip Clarke [1996] FSR 273, [1996] 1 All ER 853. See eg Missing Link Software v Magee [1989] FSR 361, 368.

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Procedure and Remedies for Infringement of Trade Marks that would be caused to the claimant’s goodwill by the defendant’s actions, and this will be the case particularly if the defendant’s goods or services can be shown to be inferior to those of the claimant. Where, for example, the type of confusion complained of is a belief that the defendant’s goods or services have been licensed by the claimant, consideration of the quality of the defendant’s goods or services may be particularly important.88 9.68 Where it can be shown that damages would be an adequate remedy and that the

defendant would be able to pay any likely award, an injunction will not normally be granted. Damages an adequate remedy for the defendant 9.69 The court will also consider the converse situation: would damages be a sufficient

remedy to the defendant if an injunction were granted but the defendant were to succeed at trial? If so, and assuming the claimant could satisfy such an award of damages, an injunction may be granted. A defendant can often find some element of unquantifiable damage where he is to be prevented from starting or continuing with a planned expansion to his business or a new business venture. Balance of convenience 9.70 If the court reaches this stage, then it will seek to resolve the matter upon a con-

sideration of the ‘balance of convenience’, although it is more accurately described as the ‘balance of injustice’. This amounts to a comprehensive consideration of all the circumstances of the case and an attempt to weigh up the competing claims of each side and the likely effects of granting or not granting an injunction upon each side. This process has been described as ‘choosing the course which appears to involve the least risk of causing injustice in the sense of causing uncompensatable damage to a party who is refused an injunction which should have been granted or injuncted when the injunction should have been refused’.89 A multitude of factors may be considered by the court in seeking to achieve this balance of convenience and do the best it can, in the absence of the full evidence, to do the least injustice. Such factors can include the parties’ respective positions in the marketplace in terms of size, market share, and length of establishment of the business, the effect of any injunction or the refusal of an injunction on their business, and the parties’ general approach to the proceedings, and in particular any delay which may have occurred in the claimant’s application to the court.

88

See eg Mirage Studios v Counter-feat Clothing Co Ltd (‘Ninja Turtles’) [1991] FSR 145. Management Publications Ltd v Blenheim Exhibitions Group plc [1991] FSR 348, 352, per Hoffmann J. 89

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The Principles Applied in Granting Interim Injunctions Delay The stage which the defendant has reached in its plans or activities may be vital.90 9.71 It is for this reason that delay on the part of the claimant can frequently be fatal to his application for interim relief. If the delay has been such that the defendant has made progress in his steps towards establishing the conduct complained of, which it would be difficult or damaging to alter, or if the defendant has, during the period of the claimant’s delay, actually started the activities complained of or has consolidated those activities, the prejudice caused to the defendant by the delay may be such as to tip the balance of convenience in the defendant’s favour. For example, if a claimant becomes aware of a defendant’s forthcoming launch of a product with the new trade mark but stands by and allows the defendant to launch, a court is likely to be reluctant to grant an interim injunction forcing the defendant off the market pending a trial. It is because the question of delay is related to the prejudice caused to the defendant 9.72 that it is impossible to say precisely how much delay may be fatal to an application for interim relief. In some cases, a few days’ delay is too much, if the claimant ought to have been able to move more rapidly and those few days were vital to the defendant.91 The effects of delay may be mitigated if the defendant is well aware of the claimant’s genuine intention to issue proceedings if forced to do so. Quite when delay becomes fatal to an application for an interim injunction will depend on the circumstances of the case but, on the whole, a delay of more than a month will require some good explanation on the part of the claimant. There are many cases in which delay of a few months has not been fatal to the application for interim relief.92 A claimant will be deemed to be on notice of a defendant’s intentions even though 9.73 the notification was made in confidence.93 Any excessive delay may also be seen by the court as indicating a lack of genuine concern on the part of the claimant to protect its marks. For instance, in Gala of London v Chandler 94 an injunction was refused where the claimant had delayed in bringing its proceedings and had sought to relaunch its own unused mark in the interim, using the ‘spoiling tactics’ of selling goods under that mark at knock-down prices. Not surprisingly, perhaps, no injunction was granted where the merits were so adversely affected by the claimant’s unmeritorious behaviour. 90

See eg Blazer v Yardley [1992] FSR 501. See eg The Financial Times Ltd v Evening Standard Co Ltd [1991] FSR 7, where only about 11 days’ delay was too long. 92 See CPC (United Kingdom) Ltd v Keenan [1986] FSR 527: a delay of several months caused by genuine attempts to settle without litigation was no bar to an injunction. Peter Gibson J held that delay per se was not fatal to an application. What mattered was whether the delay made it unjust to grant an injunction. 93 Silicon Graphics, Inc v Indigo Graphic System (UK) Ltd [1994] FSR 403. 94 [1991] FSR 294. 91

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Procedure and Remedies for Infringement of Trade Marks Status quo 9.74 If the court finds the balance of convenience equal between the parties, it is likely

to preserve the status quo, which is to say to preserve the state of affairs existing immediately preceding the issue of the claim form or, if there has been some unreasonable delay between the issue of the claim form and the hearing for interim relief, the period immediately preceding that hearing.95 In appropriate circumstances, it may be possible to argue that the status quo should be taken at some slightly earlier time, where, for example, there has been a letter before action written shortly before the issue of the claim form and the defendant took some precipitate action upon receipt of the letter. Preserving the status quo will not necessarily favour a claimant, especially where the defendant’s activities are well advanced at the relevant time.96 However, if the defendant has pressed ahead in his preparations for the launch of particular goods or services with his eyes open to the risks involved, he could not then rely on his advanced state of preparations to tip the status quo or balance of convenience in his favour.97 9.75 Most applications for relief pending a trial relate to obtaining an injunction pre-

venting the use of a particular trade mark. The courts can also grant other types of interim relief, such as an order to disclose the names and addresses of the suppliers of the defendant’s products bearing the mark in issue. The court has broad powers to grant such relief even before a trial, in an appropriate case. The court will need evidence to justify the disclosure of contact details, for example, before the trial, but in circumstances where there is good reason to seek relief further up the commercial chain, a court is likely to grant the relief.

I PERMANENT INJUNCTIONS 9.76 Where an infringement action or passing off action goes to trial, the injunction will

probably be the most important remedy to be sought. When an infringement of a registered trade mark has been established then an injunction will often be appropriate.98 The court will not, however, grant relief which is wholly unnecessary. If a defendant can show that there is no existing risk of that conduct being repeated then a court may not grant an injunction or grant a qualified injunction. It is not necessary to show that there has been infringement in the past, since proceedings

95

See Garden Cottage Foods v Milk Marketing Board [1984] AC 130. See Blazer v Yardley (n 90). 97 See Peaudouce SA and anor v Kimberley-Clark and anor [1996] FSR 680, 696: although a patent case, Robert Walker J applied the earlier decisions of Jian Tools For Sales, Inc v Roderick Manhattan Group Ltd [1995] FSR 924, 943 and Hymac v Priestman Bros [1978] RPC 495, 500. 98 See Specsavers International Healthcare Ltd v Asda Stores Ltd (No 2) [2012] EWCA Civ 494, [2012] FSR 20 at [8]; and Spectravest, Inc v Aperknit Ltd [1988] FSR 161, per Millet J at [174]. 96

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Pecuniary Remedies may be brought on a quia timet basis (namely before the defendant commences his acts of infringement or passing off ) but it is necessary to show a continuing threat of infringement or passing off. The innocence of the defendant’s acts or the absence of fraud are not grounds for 9.77 refusal of a claim for an injunction99 but may affect the scope of the order.100 In Microsoft v Plato101 the court sympathised with the defendant who had inadvertently purchased counterfeit goods, and ordered that the defendant be restrained from selling goods that he knew or had reason to believe were counterfeit, but not otherwise. The court can limit the scope of the injunction where the circumstances warrant such a restriction. In the later case of Sun v Amtec102 the court granted a qualified injunction allowing the defendant to deal in the goods if it informed the claimant of the identity of the goods to be sold, and the claimant failed to respond within a reasonable period notifying the defendant that the goods were not for resale in the European Economic Area (EEA) and had not been sold in the EEA with its consent. As Kitchin LJ recently explained: ‘The court will always have in mind that the scope of any injunction must be fair to the defendant and should not extend any further than necessary. If, for example, an injunction in general form would have the practical effect of stifling a legitimate business then it may be appropriate to craft a qualified injunction.’103 If a permanent injunction is granted, steps may be taken by the court if necessary 9.78 to enforce its terms. There are a number of procedures available where a defendant breaches an injunction, such as committal to prison for contempt of court or sequestration of his assets; alternatively the court may impose fines for a breach of an injunction. All of these remedies require that the order be properly served upon the defendant, including its directors if the defendant is a company, and, obviously, it is vital to ensure that the wording of the order is sufficiently precise.

J PECUNIARY REMEDIES There are two kinds of pecuniary remedy available in trade mark infringement or 9.79 passing off actions. The claimant may wish to claim damages from the defendant and in all kinds of intellectual property cases it is the general practice that damages are not assessed at trial but are assessed at a subsequent, separate hearing. In advance of that subsequent hearing the parties will need to set out their case as to

99 100 101 102 103

Millington v Fox (1838) 3 My & Cr 338. See Coflexip v Stolt Comex (n 73). Microsoft Corp v Plato Technology Ltd [1999] FSR 834 (Ch D) (CA, 15 July 1999, unreported). Sun Microsystems, Inc v Amtec Computer Systems Corp Ltd [2006] FSR 35. Specsavers (n 98) at [10].

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Procedure and Remedies for Infringement of Trade Marks damage in new statements of case, provide disclosure, and serve witness statements and often expert reports. 9.80 The first type of pecuniary remedy is an inquiry as to damages. The object of the

inquiry is to calculate the damage suffered by the claimant as a result of the defendant’s acts. The second type is an account of profits, which calculates the net profits the defendant has made by reason of his acts of infringement or passing off. 9.81 The remedies of an inquiry as to damages or an account of profits are alternative ones.

It is for the claimant to choose its preferred course to pursue. Where there is more than one claimant, they must elect the same remedy.104 An account of profits is an equitable remedy and the court has a discretion to refuse to grant one, perhaps where the likely sums to be recovered are small or the defendant has been found to be an innocent infringer. By contrast, damages are available under the 1994 Act once infringement has been established, whether or not the defendant’s behaviour was innocent.105 Nevertheless the court does retain a discretion to refuse an inquiry, and if the court believes that only nominal damages are likely to be awarded it may award a fixed sum without ordering an inquiry or an account.106 If a claimant has succeeded in an application for summary judgment, the court will allow him to produce evidence to support a claim to an inquiry before making, or not making, an order for an inquiry.107 9.82 The court will normally only order an inquiry if it finds that there is sufficient evi-

dence of damage to justify the costs of the inquiry, even though the claimant would be at risk as to those costs. In McDonald’s Hamburgers Ltd v Burgerking (UK) Ltd108 the Court of Appeal held that the mere fact that an injunction had been granted did not establish that damage had been suffered by the claimant and the court has a degree of discretion to refuse an inquiry if it is satisfied that it would be a fruitless exercise.109 However, in Brain v Ingledew Brown,110 Laddie J allowed an inquiry to proceed despite strong suspicions that little would be recovered by way of damages, as the claimant was not to be deprived of the opportunity of at least arguing the matter on an inquiry. 9.83 If the claimant has the choice of an inquiry as to damages or an account of profits,

there is usually a question of what information should be made available to him in order for him to decide which remedy he would prefer. Commonly, the trial of liability is split from the question of the quantum of damages/account of profits and 104

Spring Form, Inc v Toy Brokers Ltd [2002] FSR 17. See Gillette UK v Edenwest Ltd [1994] RPC 279. 106 Emaco Ltd and anor v Dyson Appliances Ltd [1999] ETMR 902; Waterford Wedgewood plc v David Nagli Ltd [1998] FSR 92; Brain v Ingledew Brown Bennison [1997] FSR 511. 107 Prince plc v Prince Sports Group, Inc [1998] FSR 21; Beautimatic (n 73). 108 McDonald’s Hamburgers Ltd v Burgerking (UK) Ltd [1987] FSR 112. 109 McDonald’s (n 108), at p 118, per Fox LJ; see also Second Sight Ltd v Novell UK Ltd [1995] RPC 423, 436. 110 [1997] FSR 511. See also Beautimatic (n 73) where Neuberger J refused an inquiry as no damage was shown. 105

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Pecuniary Remedies disclosure of documentation for the trial will have been restricted to documents concerning liability. Therefore, after succeeding at trial, the claimant may have no clear idea whether an inquiry as to damages or an account of profits would be the better remedy to pursue. According to the principles set out in Island Records Ltd v Tring International plc,111 that choice may be postponed until after there has been disclosure as to quantum. There, Lightman J ordered that the defendants were to provide the claimant with an audited schedule detailing information concerning sales, amounts in stock, and so on within two months and thereafter the claimant was to have seven days to choose which of the two remedies it preferred to pursue. Lightman J identified four principles: (1) A claimant can seek damages or an account of profits, but he cannot obtain judgment for both. (2) Once judgment has been entered, either for damages or an account of profits, any claim for the alternative remedy is forever lost. (3) A party should not, in general, be required to elect unless and until he is able to make an informed choice, otherwise the right is meaningless. (4) The exercise of the right of election should not be unreasonably delayed to the prejudice of the defendant. Assessment of damages If an inquiry as to damages is ordered, then further procedural steps have to be 9.84 taken to pursue the claim, generally with exchange of further statements of case and further disclosure being necessary, culminating in a hearing which takes place before a Master of the High Court or a judge in the IPEC. The basic principle is that damages are liberally assessed but are compensatory. 9.85 They should not contain a punitive element and should be aimed at putting the claimant into the same position which he would have been in had the tort not been committed.112 The Intellectual Property (Enforcement, etc) Regulations 2006 contain a provision relating to the assessment of damages113 but it has not yet had an impact on the assessment of damages, although this may be due to the lack of cases proceeding to an inquiry. In Xena Systems it was argued that the Regulations entitle a claimant to damages for unfair profits and moral prejudice but the judge rejected the claim and stated that the defendant’s conduct is more likely to have an impact when dealing with costs.114

111 [1996] 1 WLR 1256, [1995] FSR 560. See also Brugger v Medicaid [1996] FSR 362 as to the extent of the information the defendant must disclose. 112 General Tire v Firestone [1976] RPC 197. 113 See the 2006 Regulations, SI 2006/1028, reg 3, and the possibility of punitive damages. 114 Xena Systems Ltd v Cantideck [2013] EWPCC 1, [2013] FSR 41 (a patent infringement case).

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Procedure and Remedies for Infringement of Trade Marks 9.86 In pursuing the inquiry, the onus is upon the claimant to show that he has suffered

loss which was caused by the defendant’s wrongdoing.115 Commonly, damages assessments comprise four heads of damage: lost sales, price erosion,116 dilution, and damage to the reputation of the mark or goodwill through the defendant’s poor quality product. 9.87 The court should determine what proportion of the defendant’s customers were

confused, as the claimant is not entitled to damages in respect of people who were not deceived. Awarding damages in respect of customers who were not confused would be punitive as the defendant would be paying damages on sales where no actionable tort had been committed. This limit on damages distinguishes trade mark infringement and passing off from the principles governing awards of damages in other areas of intellectual property. 9.88 The cases on this point indicate that a claimant may be able to recover damages in

respect of all sales by the defendant, although two decisions of the Court of Appeal seem to conflict with each other. In Blayney v Clogau St Davids117 the Court of Appeal held that damages are recoverable in respect of all infringements whether these are proved to have resulted in lost sales or not. The relevance of lost sales is to enable the court to assess the damages by reference to lost profits; it is not a limitation on the recoverable loss. Although a copyright case, the Court of Appeal held that those principles applied to all intellectual property cases.118 Shortly afterwards, a differently constituted Court of Appeal doubted whether that principle applied and distinguished between damages for trade mark infringement and damages for patent infringement.119 Jacob LJ held:120 ‘The ordinary case is one that just protects goodwill. For damages to be awarded on the user principle is close to saying there is no damage so some will be invented. It is not the same sort of thing as having to pay for use of an invention (the basis of the user principle in patents).’ More recently, after considering those cases, HHJ Birss concluded that there was no reason why damages in trade mark and passing off cases should not be calculated on the user principle.121 His reasoning was that damage can occur to the goodwill or mark whether or not a sale has been lost and an infringement is an unlawful invasion of a monopoly right, like a patent infringement.122 115

Spalding v Gamage (1918) 35 RPC 101. See Gerber Garment Technology, Inc v Lectra Systems Ltd [1995] RPC 383 (Ch D), [1997] RPC 443 (CA). 117 Blayney t/a Aardvark Jewellery v Clogau St David’s Gold Mines Ltd and ors [2003] FSR 19. For earlier examples, see Stoke-on-Trent Council v W & J Wass Ltd [1988] 1 WLR 1406. Although the point was not decided in Second Sight Ltd v Novell UK Ltd [1995] RPC 423, 436, it was not dismissed. 118 Blayney (n 117), at [20]. 119 Reed Executive plc and ors v Reed Business Information Ltd [2004] RPC 40, [2004] ETMR 56. 120 Reed (n 119), at [165]. 121 National Guild of Removers & Storers Ltd v Silveria (t/a CS Movers) [2010] EWPCC 15, [2011] FSR 9. However, the defendant took no part in the hearing. 122 See [17] of the decision. 116

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Pecuniary Remedies In patent or copyright infringement cases it is common for damages to be assessed 9.89 upon the basis of a notional licence fee, namely the sum which the claimant would have charged the defendant had the infringing use been licensed (the ‘user’ principle). Again, this basis of calculation of damages will not always apply to a trade mark infringement or passing off case. In Dormeuil Freres SA v Feraglow Ltd 123 the claimants claimed that 75 per cent of the sales made by the defendant had led to a direct loss of sales by the claimant and claimed that the defendant should pay a royalty on the remaining 25 per cent of its sales at 28 per cent of the gross price of the defendant’s goods. This notional licence fee was based upon a single transaction in which the claimant had licensed the manufacture of some of its cloth by a third party. The matter was heard in the context of an application for an interim payment by the claimant and it was held that there was no authority for this royalty basis of assessment of damages and that such a basis for damages would be difficult to reconcile with the rule (mentioned earlier) that not every sale made by the defendant can necessarily be attributed to the claimant. More specifically, in Reed the Court of Appeal doubted whether the ‘user’ principle 9.90 applied to trade marks or passing off, especially where the mark in issue was not the sort of mark that was ‘available for hire’124 —the assumption being that if the evidence shows that the mark was available for hire, then the ‘user’ principle applies to trade mark infringement and passing off. An example where the mark in issue was ‘available for hire’ was Irvine v Talksport. The claim for passing off succeeded and Eddie Irvine had produced evidence of what he normally charged by way of an endorsement fee.125 The claimant may also claim damages which are not based directly on loss of sales 9.91 or loss of profit. In particular, it is possible to recover damages for injury to the claimant’s reputation where the infringing goods were of an inferior or different quality.126 An additional head of damage may be the cost of having pursued inquiries in relation to the infringements or passing off, whether in terms of seeking disclosure against innocent third parties, or in having pursued inquiries in relation to foreign suppliers, manufacturers, or other infringers.127 Damages can only be recovered for infringements which were committed in the six 9.92 years prior to the issue of the claim form.128 A claimant may seek to recover interest on any damages by virtue of the Senior 9.93 Courts Act 1981. Generally, the court will award interest at a commercial rate, 123

[1990] RPC 449. Reed (n 119), at [165]. 125 Irvine v Talksport [2003] 2 All ER 881, [2003] FSR 35. 126 See Spalding (n 115). 127 See eg Morton-Norwich Products, Inc v Intercen Ltd (No 2) [1981] FSR 337; and see Dormeuil (n 123). 128 Limitation Act 1980, s 2. 124

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Procedure and Remedies for Infringement of Trade Marks over whatever period it considers to be appropriate. VAT may also be payable on any sum paid by way of settlement.129 Interest at the much higher ‘judgment rate’, currently eight per cent, will accrue on damages from judgment until payment is made. 9.94 The costs of the inquiry will be reserved until the end of the inquiry itself. This

means that a claimant will be at risk as to his costs, and if it turns out that the inquiry was a fruitless exercise, he may be penalised in costs. A defendant may, however, take steps to protect himself against the risk of the costs of an account or inquiry by making an offer or payment into court. Early offers, including Part 36 offers, provide useful tools to protect litigants from the costs of an inquiry. 9.95 Lastly, note the effects of ss 30 and 31 of the 1994 Act on taking into account the

losses of all relevant parties when assessing the damages and ensuring that the damages are held in appropriate shares for each party (see Chapter 6). Account of profits 9.96 This is an equitable and discretionary remedy which will not normally be granted

against an innocent infringer and may also be refused to a claimant who has delayed in bringing his action after becoming aware of the infringement130 or against a defendant who has not made any profits.131 9.97 Accounts of profits in trade mark cases are rare, but the principle upon which the

court will grant an account of profits has been stated to be ‘that where one party owes a duty to another, the person to whom that duty is owed is entitled to recover from the other party every benefit which that other party has received by virtue of his fiduciary position if in fact he has obtained it without the knowledge or consent of the party to whom he owed the duty’.132 The principles applied in account of profits cases for patent infringement133 would probably apply to trade mark cases. As a basic rule, the account will seek to identify the profits made through the infringement to ensure that the defendant has not unjustly enriched himself.134 Greatly summarised, the guidelines are that:

129

See Cooper Chasney Ltd v Commissioners of Customs and Excise [1992] FSR 298. eg in Lever Brothers, Portsunlight Ltd v Sunnywhite Products Ltd (1949) 66 RPC 84, where the claimant had learned of the defendant’s infringement in August 1946 but had not written a letter before action until April 1947, the account of profits was ordered to be taken from the date of the letter before action. 131 See Waterford (n 106). 132 Electrolux Ltd v Electrix Ltd (1953) 70 RPC 158, 159, per Lloyd-Jacob J. Again, this was a case in which there had been substantial delay by the claimant which affected its right to the account. 133 Hoechst Celanese International Corp v BP Chemicals Ltd [1999] RPC 203. 134 Hollister, Inc v Medik Ostomy Supplies Ltd [2012] EWCA Civ 1419, [2013] FSR 24. 130

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Pecuniary Remedies (1) The account should be concerned with identifying the profits generated by the infringement alone. The infringer should be deprived of the profits he has made from the infringing activity. The damage to the claimant is not relevant.135 (2) The claimant must take the defendant as he finds him and profits that could have been made had the defendant chosen a more profitable course are not recoverable. For a defendant to deduct general overheads it must establish that the overheads are properly attributable to the infringement.136 (3) The account should not be a camouflaged method of making the defendant pay punitive compensation. The purpose of an account of profits is very different from an inquiry. It is to 9.98 deprive the infringer of the profits he has made by the infringement.137 The purpose has also been said to be ‘to prevent an unjust enrichment of the defendant by compelling him to surrender those profits, or those parts of the profits, actually made by him which were improperly made and nothing beyond this’.138 The purpose of the account is not, therefore, to punish the defendant, but to ensure that all profits which he made by use of the infringing matter or by the act of passing off should be passed on to the claimant: ‘Before specifying the form of the account, the court therefore should, I think, initially ask itself this question: what categories of the relevant profits or parts of such profits ought to be treated as having been properly made by the defendants? The facts of many particular cases may justify the conclusion that the whole of the relevant profits should be so treated.’ The test is in effect a ‘but for’ test. The consequences are rather different for patents 9.99 and copyrights, on the one hand, and trade marks, on the other. Windeyer J in Colbeam (a decision of the Australian High Court) pointed this out:139 It was suggested that the defendant’s profit should be measured by the difference between the amount it received for painting sets bearing the trade mark and the amount it had paid to obtain them. The account taken when a patent has been infringed was suggested as an analogy. But to my mind there is an important distinction. If the infringer of a patent sells an article made wholly in accordance with the invention and thereby obtains more than it cost him to make or acquire it, he is accountable for the difference as profit. That is because he has infringed the patentee’s monopoly right to make, use, exercise and vend the invention. But in the case of a registered trade mark, infringement consists in the unauthorised use of the mark in the course of trade in relation to goods in respect of which it is registered. The profit for which the infringer of a trade mark must account is thus not the profit he made from selling the article itself, but, as the ordinary form of order shews, the profit made in selling it under the trade mark.

135

See the Court of Appeal in Hollister (n 134) at [69] and [71]. Hollister (n 134) at [74]–[85]. 137 See the Court of Appeal in Hollister (n 134) at [55]. 138 Th is quotation and the next come from the judgment of Slade J in My Kinda Town Ltd v Soll [1982] FSR 147, 156, reversed on liability at [1983] RPC 407 (CA). 139 Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1972] RPC 303. 136

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Procedure and Remedies for Infringement of Trade Marks 9.100 Inevitably, only a fraction of the profits made by the defendant in relation to the

product or service will derive from the infringing acts. My Kinda Town was a case in which the defendant had used various elements of get-up distinctive of the claimant’s restaurant, but it was solely the use by the defendant of the name of the business which the judge had found to amount to a misrepresentation. Slade J held that it was necessary to ascertain how much of the profits made by the defendant over the relevant period was properly attributable to the use of the name: profits made by the defendant by the sale of meals to customers who were not confused were not attributable to the infringing use and should not be passed on to the claimant. This case clearly illustrates the difficulties which may be experienced in seeking to take an account of profits, since the account may be directed to be taken months or even years after the infringing acts and at that stage it may be very difficult to distinguish between profits made by the infringing use and profits made legitimately. 9.101 Usually, the costs of taking the account of profits will be reserved until after taking

the account and when it is clear whether or not the claimant will recover a substantial amount through the account. 9.102 Again, the profits claimed may only be awarded in respect of the six years prior to

the issue of the claim form. 9.103 And, as in the case of an inquiry as to damages, the court must take into account

the relative positions of the proprietor and licensees of trade marks.140

K DELIVERY UP AND OBLITERATION OF OFFENDING MARKS OR SIGNS 9.104 An order for delivery up of infringing goods or for the obliteration of infringing

marks or signs upon goods or other materials has always been a remedy available in cases both of trade mark infringement and passing off. It is an order that is commonly granted, unless there are no infringing goods or materials in the possession of the defendant and such an order would have no utility. As far as passing off is concerned, it is still governed by the common law, but in relation to trade mark infringements this remedy is dealt with by ss 15–19 of the 1994 Act. The substance of the common law remedy is the same as under the 1994 Act, and will not be dealt with separately. 9.105 Section 15 provides for the remedies which may be ordered against an infringer

in relation to infringing goods, material, or articles in his possession, custody, or control. Infringing goods, materials, or articles are defined in s 17 as goods or packaging which bear a sign identical or similar to the trade mark, where the application of the sign to the goods or packaging was an infringement of the mark, or the

140

See ss 30 and 31 and Ch 6.

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Delivery Up and Obliteration of Off ending Marks or Signs goods are proposed to be imported into the UK and the application of the sign in the UK to them or to their packaging would be an infringement, or where the sign has otherwise been used in relation to the goods in such a way as to infringe. The application of this section may be relatively simple where the goods were manufactured and/or marked in the UK. An infringer may be ordered to have the offending sign erased, removed, or obliterated 9.106 from any infringing goods, material, or articles in his possession, custody, or control. It seems plain from the wording of s 15 that it is only if it is not reasonably practicable for the offending sign to be erased, removed, or obliterated that an order would be made under s 15(1)(b) that the infringing goods, material, or articles be destroyed. Which of these remedies is most appropriate will obviously depend upon the circumstances of the case. There may be many cases in which it is possible for the offending mark easily to be removed from labelling or packaging, but it may be very much more difficult to do this where the mark has to be removed from the goods themselves or from related documentation. The court also has the power to order delivery up to such persons as the court may direct where the infringer does not comply with an order made under s 15(1), so that the erasure etc which has been ordered can be carried out. Section 16 provides a mechanism for seeking an order for delivery up of infringing 9.107 goods, materials, or articles which someone other than an infringer has in his possession in the course of a business. By analogy with s 99 of the Copyright, Designs and Patents Act 1988, it would seem that such a person might be wholly innocent of the infringing nature of the goods, materials, or articles in his possession, such as a distributor, yet still be the subject of an order under this section.141 Moreover, the Lagenes case would suggest that any issue as to whether or not the goods, material, or articles are infringing may be decided at a later stage, and the fact that it has not yet been established that they are infringing copies is no bar to the exercise of the jurisdiction to order such delivery up.142 Nonetheless, the court would need to be satisfied that there is at the very least a good arguable case that the goods are infringing goods before an order would be made against an innocent person. Section 16(2) imposes two restrictions on the generality of the power given by 9.108 s 16(1). First, no such order is to be made after the end of the six-year limitation period which is provided by s 18.143 Secondly, no order is to be made unless the court also makes or considers that it could make an order under s 19, which provides that, where infringing goods etc have been delivered up under s 16, an application may be made for an order that they be destroyed or forfeited to such persons as the court may think fit.

141

See in relation to the Copyright, Designs and Patents Act 1988; Lagenes Ltd v It’s At (UK) Ltd [1991] FSR 492, 504. 142 Lagenes (n 141), at p 505. 143 The section is more complicated that this, but is also self-explanatory.

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Procedure and Remedies for Infringement of Trade Marks 9.109 The court should consider whether there are other adequate remedies available to

the trade mark proprietor before exercising the powers under s 19. It must also make such order as seems just bearing in mind the various people interested in the goods.144

L CERTIFICATE OF CONTESTED VALIDITY 9.110 If after litigation in which the validity of a registered mark is contested, the court

finds that a trade mark is validly registered, the court may give a certificate to that effect. The only benefit of such a certificate, however, is that it gives better protection to the proprietor in relation to his costs of any further proceedings relating to the validity of the mark.145

M DETENTION OF IMPORTED GOODS BY CUSTOMS AND EXCISE 9.111 There are two schemes that enable a trade mark proprietor to have goods entering

into the UK seized by the Commissioners of Customs and Excise. One is a national scheme derived from the Customs and Excise Management Act 1979 and s 89 of the 1994 Act.146 The national scheme is aimed at preventing the importation and unloading of prohibited goods into the UK. The other is a European scheme derived from a Council Regulation,147 which is aimed at restricting the circulation of ‘counterfeit’ goods in the EU. 9.112 The two schemes are intended to operate exclusively of each other. Pursuant to s 89(3)

of the 1994 Act, the national scheme is excluded when the European scheme applies, so a rights owner proceeding under the national scheme may not also proceed under the European scheme. In any event, the schemes differ in the categories of goods to which they are directed, namely ‘infringing’ goods or ‘counterfeit’ goods.148 The definition of ‘infringing’ goods under the 1994 Act is wider than the definition of ‘counterfeit’ goods under the European scheme. For example, goods which are made by the rights holder outside the EU do not qualify as counterfeit, as they were made by the rights owner or with his permission, but they could qualify as ‘infringing’ goods if they cannot lawfully be put on to the market in the EEA. In those circumstances, the national scheme would apply but the European scheme would not.

144

See s 19(2) and (4). See generally, s 73. 146 As amended by the Goods Infringing Intellectual Property Rights (Customs) Regulations 2004, SI 2004/1473. 147 Council Regulation (EC) 1383/2003 of 22 July 2003, amended by Council Regulation 608/2013, which came into force on 1 January 2014. 148 See the defi nition of ‘counterfeit goods’ in the Regulation, Art 2(1). 145

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Detention of Imported Goods by Customs and Excise The national scheme Under s 89 of the 1994 Act, where a trade mark owner or licensee of a trade mark 9.113 has reason to believe that infringing goods, materials or articles are to be imported into the UK, he may notify the Commissioners of Customs and Excise in writing that he is a proprietor/licensee of the trade mark and that the infringing items are expected to arrive in the UK either from outside the EEA or from within that area but not having been entered for free circulation within it. The national scheme applies to UK registered marks and CTMs.149 The proprietor/licensee is to provide information to Customs in accordance with 9.114 the Trade Marks (Customs) Regulations 1994 to enable Customs to carry out their powers pursuant to s 89. Quite detailed information needs be supplied, such as details of the trade mark registration; the infringing goods, materials, or articles upon which it is believed the mark will be found; the details of the time, place, and method of importation and expected date of arrival etc. By the notice, the proprietor requests Customs to treat the goods etc as prohibited goods and when a notice is in force under s 89, the importation of the goods is prohibited if done otherwise than for private and domestic use (see s 89(2)). Before Customs will detain infringing goods they require from the person giving 9.115 the notice the payment of a fee, a copy of the certificate of registration of the trade mark, and some form of an indemnity against any costs incurred by Customs and any liability for detaining the goods.150 Imported goods which are ‘prohibited’ pursuant to this scheme fall under the provi- 9.116 sions of the Customs and Excise Management Act 1979 (CEMA). This means that they are liable to be seized or detained as being liable to forfeiture pursuant to CEMA. If the goods are seized, the Commissioner must initiate condemnation proceed- 9.117 ings pursuant to s 139 CEMA. The procedure followed by the Commissioners is set out in Schedule 3 CEMA. Customs will only seize or detain goods that are covered by the notice. Under the 9.118 national scheme, they will not interfere with goods that they consider to be infringing but which are not specifically detailed in the s 89 notice. The European scheme Council Regulation (EC) 1383/2003 is broadly similar to s 89 of the 1994 Act but, 9.119 pursuant to s 89(3), where the Regulation applies it does so in place of the provisions of the 1994 Act. It applies to goods that are being imported or exported or are

149 150

Pursuant to the Community Trade Mark Regulations 1996, SI 1996/1908, Art 6. Pursuant to the Trade Marks (Customs) Regulations 1994, Art 4.

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Procedure and Remedies for Infringement of Trade Marks in transit across the external borders of the EEA. Once the goods have crossed into the EEA, this scheme has no application. 9.120 Following a case brought before the Belfast Magistrates’ Court,151 HMRC revised

its procedures. The burden is on the rights holder to commence proceedings within a short period of time or the goods will be released. This is a significant change to previous procedures. 9.121 As under the national scheme, the trade mark proprietor/licensee must fi ll in the

requisite form, pay the fee, and provide security and some form of indemnity against any costs incurred by Customs and any liability for detaining the goods. 9.122 Unlike the national scheme, the European scheme can apply to goods seized by

Customs on its own initiative without being given notice by the rights holder. The European scheme does not cover parallel imports, as they do not come within the definition of ‘counterfeit’ goods.152 9.123 Under the European scheme, ‘counterfeit’ goods may be seized. The definition

of ‘counterfeit’ goods under the Regulation is narrower than its equivalent under the 1994 Act in that it only covers goods which are not made with the consent of the relevant trade mark owner. Genuine goods imported without the proprietor’s consent do not fall within this scheme.153 The Regulation also covers other intellectual property rights, such as patents and design rights (‘pirated goods’), but this discussion relates only to its application to trade marks. 9.124 In order for the goods to be ‘counterfeit’ they need to infringe either a UK registered

trade mark or a CTM and infringement of a registered trade mark requires goods to be placed on the market. If they are being imported into a Member State then this requirement is satisfied. If the goods are passing through a port in a Member State, then the situation is different. Goods in transit and goods subject to suspensive customs procedures are not, without more, ‘on the market’ and do not qualify as ‘counterfeit’ goods in accordance with the Regulation.154 There is an exception, however, if the goods are subject to the act of a third party whilst placed under the transit procedure which necessarily entails their being put on the market.155 9.125 Under the Regulation, a rights holder can lodge an application with the Customs

Authority to prohibit entry into the Community and prohibit the export or re-export of counterfeit goods. Customs authorities throughout the EU are alerted.

151

Her Majesty’s Revenue Commissioners v Penbrook Enterprises Ltd [2008] NI Mag 2, delivered on 9 December 2008 by DJ Rafferty. 152 See 9.112. 153 See recital 6 to Regulation 608/2013 and Art 2(1)(b) of Regulation 1383/2003—they may fall within the UK scheme. 154 Nokia Corp v Her Majesty’s Revenue Commissioners [2009] ETMR 59 and see 7.18. 155 Referred to as the ‘Montex’ exception after the decision of the CJEU in Montex Holdings v Diesel SpA, Case C-281/05, [2006] ECR I-10881, [2006] 1 CMLR 14, [2006] Ch 154, [2007] ETMR 13l.

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Domain Name Dispute Resolution The application need not contain details of a particular consignment and is valid for up to one year.156 The more details that are provided, however, the greater the chances that the Customs authorities will be able to intervene. The sort of information that can be supplied includes the identities of the importers, the time and date of shipments, or the transport routes. If an application has not been lodged, Article 4 of the Regulation also enables 9.126 Customs to contact a rights holder if they come across suspected counterfeit goods during the course of their checks. The goods may be detained for three days to allow the rights holder to lodge an application.157 This deadline may not be extended. Whether the goods have been detained pursuant to a ‘watch notice’ or applica- 9.127 tion by the rights holder, the rights holder has ten days from being notified of the detention to commence proceedings against the importer. It may inspect the goods during that period or request samples to be sent.158 That ten-day period may be extended by up to another ten days.159 Once detained, Customs cannot release the goods simply on information provided by the importer/exporter. Unless customs are notified that proceedings have been commenced, the goods will be released. The rights holder needs to send Customs a copy of the claim form, once proceed- 9.128 ings have been commenced. If proceedings are not commenced, the goods will be released from detention, unless the importer/exporter has agreed to their destruction. If the rights holder can establish that the importer/exporter has no objection to them being destroyed or that they have agreed to abandon the goods, they will be destroyed. Commonly, the importer/exporter does not wish to get involved in litigation with the rights owner and does not respond to communications at all, in which case, the goods would be destroyed. Notification of the detention by Customs is made pursuant to Article 9 of the 9.129 Regulation. The customs officer should inform the rights holder of the approximate quantity and the nature of the detained goods. Destruction is carried out at the expense of the rights holder, but such costs may be 9.130 eventually recovered from the defendant.

N DOMAIN NAME DISPUTE RESOLUTION It is not necessary to commence court proceedings to stop another party using a 9.131 domain name. The bodies responsible for administering the particular domain

156

Regulation (EC) 1383/2003, Art 8(1). Regulation (EC) 1383/2003, Art 4. 158 See para 5.2.1 of the Guidance Notice 34 on Customer procedures published by HMRC in November 2012. 159 The Regulation, Art 13. 157

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Procedure and Remedies for Infringement of Trade Marks names, for example Nominet160 and the World Intellectual Property Organization (WIPO),161 have their own dispute resolution procedures. Both bodies follow similar procedures and provide a decision in a matter of weeks with limited costs exposure. Both procedures are commenced by the filing of a complaint online. The existing registrant files a response online, if he so wishes. There are no pleadings, rarely any disclosure, and there is no hearing. All documents relied upon are served with the complaint or the response. Occasionally, a further round of written responses is allowed. The parties are encouraged to mediate their dispute once these documents have been filed and if that is unsuccessful a specialist practitioner is appointed from a panel to make a decision. The remedy is confined to transferring ownership of the domain name registration or cancelling the registration. 9.132 The precise grounds on which a decision is made vary depending on whether the

decision is being made by Nominet or WIPO. Both bodies set out their policy and details of the procedure at their respective websites. Commonly, however, the complainant bases his application on trade mark rights that existed at the time of the domain name registration and sets out in his complaint the nature and extent of his use of the prior mark and any registrations relied on. 9.133 Cybersquatting, those who register a domain in bad faith in an attempt to

secure a commercial advantage, and those who register domain names because of a grudge or gripe, form a large proportion of the complaints fi led. Commonly, the registrar will transfer such sites to the right holder but difficulties can arise because it is usually a requirement that the rights owner needs to establish that the domain name was registered in bad faith or that the registrant had no legitimate interest in the domain name. If a rights owner is unable to identify bad faith on the part of the registrant, it may well be a safer option to commence proceedings in the IPEC.

O ‘OPPORTUNISTIC’ COMPANY NAME REGISTRATIONS 9.134 Under s 69(1)(a) and (b) of the Companies Act 2006, a person may object to

a company’s registered name or the name of a limited liability partnership on the ground that it is the same as a name in which he has goodwill, or that it is sufficiently similar to such a name that its use in the UK would be likely to mislead by suggesting a connection between the company and the applicant. An example might be when someone registers one or more variations of the name of a well-known company in order to get the latter company to buy the registration. The provision is designed to stop ‘opportunistic’ company name 160 161

For domain names ending in ‘.uk’. For domain names ending in ‘.com’ and most other types of domain name, except ‘.co.uk’.

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Threats Actions registrations, where the registration is intended to obtain money from the complainant or prevent the complainant from registering the name, along the lines of cybersquatting. The provisions do not apply to registrations by persons claiming a legitimate 9.135 right to a name, nor to cases in which it is alleged that the new company name is too similar to an earlier company name but opportunism is not suspected. Complaints of that sort must be pursued by trade mark or passing off proceedings. A complaint under s 69(1) of the 2006 Act is made to the Company Names 9.136 Tribunal, whose adjudicators are officials of UKIPO, and who also act as hearing officers in trade mark matters. If the primary complaint is made out, the new company may respond and justify its position, in the terms set out in s 69(4), for example by showing that the name was registered before the commencement of the activities on which the applicant relies to show goodwill, was registered in good faith or the rights of the applicant are not adversely affected to any significant extent. Unless the registrant is able to establish one of these defences, the Company Names Tribunal will normally find for the applicant. The onus is on the respondent. A salient distinction between an application in the Companies Name Tribunal 9.137 and the courts is that, unlike a claim for passing off, an application can succeed on the basis of reputation per se. There is no need to have a business or customers in the UK, or any goodwill as long as there is some reputation.162 The UKIPO has determined many applications since the Tribunal started oper- 9.138 ations in October 2008. Most applications are not defended and those that are defended often succeed. It is unusual to have an oral hearing, substantive or otherwise. Typically, the UKIPO issues between six and eight contested decisions a year. The procedure is set out in the Company Names Adjudicator Rules 2008. Details of the procedure, the forms to be used, and fees are all to be found on the UKIPO website.

P THREATS ACTIONS Where a person threatens another with proceedings for infringement of a regis- 9.139 tered trade mark, a person aggrieved (not necessarily the person threatened) can claim a remedy if it is shown that the threat was unjustified.163 Hence care must be taken when writing a letter before action, otherwise the prospective claimant

162 See s 69 of the Companies Act 2006 and the decision of William Harvey Medical Research Ltd (O/359/13) 5 September 2013 at [21] and [22]. See 8.20 – 8.23. 163 See s 21.

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Procedure and Remedies for Infringement of Trade Marks in an infringement action can become the defendant in a related threats action. Nevertheless, relatively few threats cases have been brought in recent years. The Law Commission is proposing to amend the 1994 Act to broaden the categories of communication that are exempted from being considered a groundless threat, to bring them into line with the corresponding provisions in the Patents Act 1977. A final report is due in Spring 2014. 9.140 Section 21(1) provides that a person aggrieved may bring proceedings for relief

where a person threatens another with proceedings for infringement of a registered trade mark, other than in relation to: (1) the application of the mark to goods or their packaging or (2) the importation of goods to which the mark has been applied or (3) the supply of services under the mark. Thus, the section does not cover threats made to a ‘primary’ infringer in the commercial chain nor threats made in relation to the provision of services. 9.141 Section 21(2) provides that the relief which may be claimed is a declaration that the

threats were unjustifiable, an injunction against the continuation of the threats, and damages for any loss that has been suffered. The person who has made the threats may defend the claim by showing that the acts in respect of which proceedings were threatened constituted an infringement of a registered trade mark. However, by s 21(3) the defence will not succeed if the registration is invalid or liable to be revoked. 9.142 It is not just the recipient of the threat who may qualify as a person ‘aggrieved’. For

example, where the threat is made to a distributor of marked products, the supplier or manufacturer of the goods in question might be a person aggrieved for the purposes of s 21(1).164 9.143 An actionable threat can be made in respect of a CTM, a UK trade mark, or an

international registration in relation to which an extension for protection has been made to the European Community under the Madrid Protocol.165 It also includes Europe-wide threats that implicitly include the UK.166 The recipient of the threat bears the burden of proving that an actionable threat has been made. 9.144 A ‘threat’ covers any intimation that would convey to a reasonable man that some

person has trade mark rights and intends to enforce them against another.167 A threat can be made directly or indirectly, orally or in writing.168 There is no

164

See Prince v Prince (n 107). See the Community Trade Mark Regulations 2006 SI 2006/1027, Art 6. 166 Best Buy Co, Inc v Worldwide Sales Corp Espana SL [2001] EWCA Civ 618, [2011] FSR 30. 167 See Reckitt Benckiser UK v Home Pairfum Ltd [2004] FSR 37; L’Oréal v Johnson & Johnson [2000] FSR 686. 168 Best Buy (n 166) at [20] and [21]. 165

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Criminal Off ences under the 1994 Act requirement that the person who makes the threat needs to own, or even claim to own, the registered trade mark. So a solicitor or trade mark attorney writing a letter on behalf of his client can be liable jointly with the client. Whether a statement constitutes a threat is a jury-type question and should be 9.145 determined by adopting what a reasonable person would understand to be the ordinary meaning of the words in the circumstances in which the statement was made at that date. Subsequent correspondence is unlikely to be relevant.169 In other words, the statement needs to be placed in the context in which it was made.170 Mere notification that the trade mark is registered is expressly excluded from being 9.146 actionable pursuant to s 21(4), but even a threat which is carefully constructed so as to avoid the provisions of s 21 can still be found by the court to be actionable. In L’Oréal v Johnson & Johnson171 the judge held that the assertion made by the trade mark owner that he had not decided whether to sue was an implicit threat, when made in a letter which was the response to a request for an assurance that proceedings would not be brought in the UK. The letter in that case also contained a statement to the effect that the trade mark owner had already commenced proceedings in respect of the same trade mark in Ireland and had six years to commence proceedings in the UK if so minded. As with trade mark infringement, the court retains a discretion not to order an 9.147 inquiry in respect of the loss suffered by the threats172 and, unless loss was actually caused by the threat, no damages will be awarded.173 Threats made during without prejudice negotiations or in without prejudice cor- 9.148 respondence will not be admissible in evidence and a claim based on such threats is likely to be struck out as being an abuse of process.174 It is possible for parts of a letter to be excluded from proceedings but if the meaning of what remains is altered then it is likely that the whole letter will be excluded.175

Q CRIMINAL OFFENCES UNDER THE 1994 ACT Applying etc a mark to goods Although the vast majority of trade mark cases are resolved in the civil courts, there 9.149 are a variety of criminal offences under the 1994 Act: ss 92–8 set out a variety of 169

Best Buy (n 166) at [18]. See L’Oréal v Johnson & Johnson (n 167). 171 See n 167. 172 Scandecor Development v Scandecor Marketing [1999] FSR 26 (CA). 173 Carfl ow Products v Linwood Securities [1998] FSR 691: a registered design case, in which the products were removed from the shelves after the service of the writ rather than after the threat. 174 Unilever v Proctor & Gamble [2000] FSR 344. 175 Best Buy (n 166) at [39]. 170

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Procedure and Remedies for Infringement of Trade Marks criminal offences in relation to registered trade marks.176 The most important of these in practice is s 92, which defines a number of offences concerning the application of a sign identical or likely to be mistaken for a registered trade mark to goods or their packaging, possessing or dealing with such goods, applying such a sign to other material, possessing or dealing with such material, and making or possessing articles designed or adapted for making copies of such signs. Sometimes, criminal sanctions are seen as providing a more effective remedy then civil proceedings, for instance against market traders. 9.150 Criminal proceedings are usually brought by Local Weights and Measures

Authorities, rather than the rights holder. An advantage of trading standards officers bringing criminal proceedings is that the rights holder does not have to pay for the litigation, the drawback being that the trading standards officers manage the litigation and not the rights holder. 9.151 The House of Lords made clear in R v Johnstone177 that for an offence to be commit-

ted under s 92, there must be a civil infringement of the registered mark in issue. This means that civil defences under s 11 are defences under s 92 as well. 9.152 Each of subsections 92(1), (2), and (3) contains offences which are committed

if the offender acts ‘with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor’. This mens rea element, which applies to all three parts of s 92, does not require the prosecution to show dishonesty. In the majority of cases, it must be assumed that someone selling spuriously marked goods does so at the very least with an intention of achieving some gain for himself, regardless of his intentions with regard to the trade mark proprietor. Accordingly, this element is unlikely to be difficult for the prosecution to prove. In R v Zaman178 the defendant argued that ‘view’ and ‘intent’ had the same meaning, but the Court of Appeal held that ‘view’ was not the same as intent. Parliament had used different words and so must have intended there to be a different meaning. The Court concluded it was enough for the prosecution to prove that gain was in the defendant’s mind as a real possibility. 9.153 It is also a requirement of the offence that there was no consent from the trade

mark proprietor. In Houghton v Liverpool City Council 179 the prosecution contended that it was for the defence to prove on the balance of probabilities that the defendant had the proprietor’s consent, rather than for the prosecution to prove

176 A number of other offences may be committed in the trade mark context. Examples are offences under the Trade Descriptions Act 1968 and the common law offence of conspiracy to defraud. The discussion that follows is confined to the offences specifically provided for in the 1994 Act. 177 R v Johnstone [2003] FSR 42. 178 R v Zaman [2003] FSR 13 (CA) Criminal Division. 179 [2000] Crim LR 574.

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Criminal Off ences under the 1994 Act beyond reasonable doubt that he did not. The Divisional Court (obiter) expressed considerable doubt about that argument. However, the Court also made the point that assuming the burden lies on the prosecution to prove absence of consent, it by no means follows that prosecutions under s 92 are only good if there is express evidence of want of consent on the proprietor’s part. The court may draw proper inferences as to consent. On the facts, which concerned the possession of watches and jackets bearing a mark identical to the Tommy Hilfiger trade mark, it was held that absence of consent had rightly been inferred from the fact that the prosecution had proved by expert evidence that Tommy Hilfiger did not make watches at all and that the jackets were of inferior quality.180 Following the House of Lords in R v Johnstone, the criminal and civil aspects of the 9.154 1994 Act must be read as being consistent with each other.181 The section covers marks that are identical to the registered mark but also marks 9.155 that are ‘likely to be mistaken’ for the mark. Th is wording is not the same as the equivalent civil section, namely—s 10(2)—but, since R v Johnstone,182 the prosecution will need to establish infringement under s 10(2) anyway. A district judge has held that when assessing whether the sign was likely to be mistaken for the mark, the test is whether an average consumer, looking at the sign and the mark and noting similarities and dissimilarities, would be likely to mistake one for the other. Th is test interprets the words of the statute literally and does not add any gloss to them; surrounding circumstances, such as the design of swing tags to which the mark in issue has been applied, should be ignored.183 In R v Boulner184 it was held that where the sign was identical to the mark it was not open to the defence to argue that the poor quality of the reproduction gave rise to a defence. Section 92(1) describes a variety of acts by which an offence may be committed in 9.156 relation to goods. Where all of the matters discussed above have been satisfied, an offence will be committed where the defendant applies185 to goods or their packaging a sign identical to or likely to be mistaken for a registered mark, or sells or lets for hire, offers or exposes for sale or hire, or distributes goods bearing or having packaging bearing such a sign, or where the defendant has in his possession, custody or control in the course of a business any such goods with a view to doing any such things by himself or by another.

180 As to the admissibility of expert evidence in such cases, see also Akhtar v Grout (1998) 162 JP 714. See also R v Johnstone (n 177) at [28]: absence of consent is an ingredient of the offence. 181 See the discussion on consent in relation to parallel imports at 7.107 et seq and 7.116 et seq. 182 R v Johnstone (n 177). 183 See Nottinghamshire County Council v Woolworths plc [2007] FSR 19, at [31(a)]. 184 [2008] EWCA Crim 2375. 185 For the meaning of ‘applies’ and ‘affi x’, see Nottinghamshire County Council (n 183).

277

Procedure and Remedies for Infringement of Trade Marks 9.157 An offence will be committed pursuant to s 92(2) if an ‘infringing’ sign is

applied to material intended to be used for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods, or where the offender uses such business material in the course of a business or has such material in his possession, custody, or control in the course of a business with a view to doing anything by himself or by another which would be an offence under s 92(2)(b). 9.158 Under s 92(3) it is an offence to make an article specifically designed or adapted for

making copies of a sign identical to or likely to be mistaken for a trade mark or to have such an article in one’s possession, custody, or control in the course of a business. This section does, however, have the further requirement that an offence will only be committed where the person knows or has reason to believe that the article has been or is to be used to produce goods or material for labelling or packaging goods etc. This proviso would seem to have somewhat limited scope, since such articles would generally obviously be designed for such a purpose. 9.159 By s 92(4), no offence is committed under any of subsections (1)–(3) unless the

goods in relation to which the acts are carried out are goods in respect of which the trade mark is registered, or the goods differ but the trade mark has a reputation in the UK, so that the use of the sign will take unfair advantage of or be detrimental to the distinctive character or the repute of the trade mark. In practice, prosecutions almost always proceed on the basis that the goods are goods in respect of which the mark is registered. 9.160 A defence is provided by s 92(5). It is a defence for someone to show that he believed

on reasonable grounds that the use of the sign was not an infringement of the mark.186 Where the marks and/or the goods are not identical, therefore, there may be room to argue for the reasonableness of the defendant’s belief depending upon the strength of the likelihood of confusion between the marks.187 It is clear, following R v Johnstone,188 that the burden is on the defendant to prove this defence. He must show on the balance of probability that he did, in fact, have the belief that his acts were not infringements and he must also show that there were reasonable grounds for that belief. Lord Nicholls stated:189 Section 92(5) is concerned to provide a defence where the person charged has a reasonable belief in the lawfulness of what he did. Those who act honestly and reasonably are not to be visited with criminal sanctions. It makes no sense to confine this defence to cases where the defendant is aware of the existence of the registered trade mark and exclude altogether those cases where the defendant is not. Section 92(5) provides a defence where the defendant believes on reasonable grounds his use

186 187 188 189

The Court of Appeal considered the provision in R v McCrudden [2005] EWCA Crim 466. See the commentary on s 92 by Rawlinson in [1995] EIPR 54. R v Johnstone (n 177). R v Johnstone (n 177), at [43].

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Criminal Off ences under the 1994 Act of the sign does not infringe a registered trade mark of whose existence he is aware. It would be extraordinary if the subsection does not equally furnish a defence in the stronger case where the reason why the defendant believes his use of the sign does not infringe a registered trade mark is that he reasonably believes no relevant trade mark is registered. Section 92(5) is to be interpreted as including the latter case as well as the former.190

Few recent attempts to rely on s 92(5) have succeeded. Lord Justice Rix com- 9.161 mented on the difficulties that faced a defendant raising that defence in R v Ashok Malik [2011] EWCA Crim 1107. This defence should not be viewed as a defence of good faith. Rix LJ held in R v Ashok Malik:191 There is no general defence of good faith in section 92(5) because what section 92(5) requires is both a subjective belief and a belief on reasonable grounds. Therefore, there has to be both a subjective belief on the part of the defendant, but also there have to be objectively reasonable grounds for him to be able to rely upon. That requirement of objectively reasonable grounds is the explanation of why there is no general defence of good faith. If there were a general defence of good faith then a defendant could simply say I acted honestly, I may have acted very negligently, even grossly negligently, but I  acted honestly. If there was a general defence of good faith, that would be a defence. Th at, however, is not the section 92(5) defence.

Offences under s 92 are ‘triable either way’. In other words, they can be heard either 9.162 in the magistrates’ court or the Crown Court. Section 92(6) provides the penalties for committing an offence under s 92, which are: (a) on summary conviction, imprisonment for up to 6 months or a fine of up to the statutory maximum,192 or both; or (b) on conviction in the Crown Court, an unlimited fine or imprisonment for up to 10 years, or both.

A conviction for an offence under s 92 may well to lead to a sentence of imprison- 9.163 ment. If the offence involves the manufacture or distribution of counterfeit items on a commercial scale and there are no strong mitigating circumstances, this will lead to a substantial period of imprisonment.193 The court can also confiscate assets pursuant to the Proceeds of Crime Act 2002, as offences under these sections are deemed so-called ‘lifestyle offences’.194 If, on the other hand, the defendant has only

190

For a case where the defence failed, see Essex Trading Standards v Singh [2009] WLR (D) 81, [2009] EWHC 520 (Admin); and, more recently, R v Beazley [2013] EWCA Crim 567. 191 At [15]. 192 Currently £5,000. 193 See eg R v Guest [2013] EWCA Crim 1437; R v Brayford [2011] 1 Cr App R 107: two years’ imprisonment for the importation of 25,000 kg of washing powder; R v Kilcourse [2009] EWCA Crim 445; R v Ansari [2000] 1 CAR (S) 94: two to three years’ imprisonment upheld for members of a gang involved in the manufacture and distribution of counterfeit clothing worth over £ 800,000. 194 See s 75 and Sch 2 para 7(2) and for an application of that see R v Beazley [2013] EWCA Crim 567.

279

Procedure and Remedies for Infringement of Trade Marks been involved on the retail side, any prison term will be much shorter.195 The main indicators that the courts follow are the knowledge of the defendant, the numbers of products dealt with, the particular role the defendant had in the operation, the profit made, and any danger to the public resulting from the products in issue.196 Offences by partnerships and bodies corporate 9.164 Section 101 contains specific provisions relating to offences committed by part-

nerships and bodies corporate. Proceedings for an offence alleged to have been committed by a partnership must be brought against the partnership rather than the partners individually (subsection (1)). If it is not clear whether the offence has been committed by the partnership, there is nothing to stop the prosecution from proceeding against partners individually if they have committed the actus reus of the offence and are unable to satisfy s 92(5). In relation to bodies corporate, the provision is the usual one: where an offence committed by such a body is proved to have been committed with the consent or connivance197 of a director,198 manager,199 secretary, or similar officer of the body or a person purporting to act in any such capacity,200 he as well as the body corporate is guilty of the offence and liable to be proceeded against and punished accordingly. Enforcement by local authorities 9.165 By s 93, a duty is imposed on every local weights and measures authority to enforce

s 92 within their area. Various specific powers given to such officers by the Trade Descriptions Act 1968 are also given to them in relation to the enforcement of s 92, including a power to make test purchases and a power to enter premises and inspect and seize goods and documents. Falsification of register 9.166 Section 94 makes it an offence for a person to make a false entry in the Trade Marks

Register, knowing or having reason to believe that it is false. By s 94(2) it is also an 195 eg R v Kemp (1995) 16 CAR (S) 941: selling counterfeit watches and other goods, other offences involved, nine months reduced to six months; R v Kelly [1996] 1 CAR (S) 61: possessing counterfeit watches, six months reduced to three; and R v Adam [1998] 2 CAR (S) 403: selling counterfeit clothing, seven months upheld. 196 See the Powers of Criminal Courts (Sentencing) Act 2000 and the sentencing guidelines for trade marks, effective from 4 August 2008. 197 A person consents to the commission of an offence where he is well aware of what is going on and agrees to it. He connives in the commission of the offence if he is equally well aware of what is going on, but his agreement is tacit, not actively encouraging what happens but letting it continue and saying nothing about it: Huckerby v Elliott [1970] 1 All ER 189, 194 (obiter). 198 In relation to a body corporate whose aff airs are managed by its members, ‘director’ means any member of the body: see s 103(1). 199 This means a person with real authority in the company with power to decide corporate policy and strategy: R v Boal [1992] 1 QB 591. 200 eg a shadow director.

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Criminal Procedure offence to produce a document which falsely purports to be a copy of an entry in the Register. Falsely representing a trade mark as registered Section 95 provides that it is an offence to represent a mark falsely as a registered 9.167 trade mark or to make a false representation as to the goods or services for which a mark is registered knowing or having reason to believe that the representation is false. Section 95(2) provides that the use of the word ‘registered’ or any symbol importing a reference to registration (such as the much-used R in a circle) is deemed to be a representation as to registration. However, it will be a defence to show that the mark is in fact registered elsewhere than in the UK for the goods or services in question. In Second Sight Ltd v Novell (UK) Ltd 201 the defendant had used the® symbol and the word ‘registered’ beside the mark ‘Tuxedo’, which was not registered in the UK. Lightman J held that the true question under s 95(2) is ‘whether it is sufficient that the reference is consistent with registration elsewhere’.202 Forfeiture Sections 97 and 98 contain provisions for the forfeiture of goods, material, or 9.168 articles, such as are described in s 92(1)–(3). The purpose of these provisions is to prevent infringing articles from entering into circulation in the market to the prejudice of the proprietor of the mark and of consumers.203 Section 97(2) provides that an application may be made to any court which has heard 9.169 criminal proceedings relating to the goods, material, or articles, whether under s 92 or under the Trade Descriptions Act 1968, or any offence involving dishonesty or deception,204 or by way of complaint to a magistrates’ court. The court shall make an order for forfeiture only if it is satisfied that a relevant offence (again as defined in s 97(8)) has been committed. However, by s 97(4) the court may infer that such an offence has been committed if it is satisfied that such an offence has been committed in relation to goods, material, or articles which are representative of the goods which it is sought to forfeit. By s 97(6), the court may order that the forfeited goods be destroyed.

R CRIMINAL PROCEDURE 205 Criminal proceedings may be brought by the Crown Prosecution Service but 9.170 in this field they are often brought by Local Weights and Measures Authorities 201

[1995] RPC 423. n 201, in particular, at p 437. 203 R v Harrow Crown Court, ex p UNIC Centre SARL [2000] 1 WLR 2112, [2000] FSR 667. 204 See s 97(8). 205 What follows is only the barest outline. For detailed analysis, see Richardson, Archbold:  Criminal Pleading, Evidence and Prac tice (Sweet & Maxwell, 2009)  and Ormerod, Blackstone’s Criminal Practice (Oxford University Press, 2010). 202

281

Procedure and Remedies for Infringement of Trade Marks (acting pursuant to s 93 of the 1994 Act) or by the trade mark proprietor as a private prosecution. They are likely to be preceded by an investigation which may involve the making of trap purchases, the execution of search warrants, and the interviewing of the accused. 9.171 If brought by trading standards officers or private individuals, prosecutions are

commenced by the laying of information at the magistrates’ court followed by the issue of a summons to the accused to attend. Trial may be either in the magistrates’ court or (if the magistrates’ court so orders or the defendant so elects) on indictment in the Crown Court before a jury. Unlike in the civil courts, there are no statements of case of the type deployed in civil proceedings, although in some circumstances the defence supplies a case statement and skeleton arguments. 9.172 Evidence at trial is mainly given orally. Expert evidence will be admitted on the

issue of whether goods are counterfeit and in relation to the statutory defence under s 92(5).206 9.173 The court has the power to award a defendant who has been acquitted his costs

out of central (Government) funds. It also has the power to order a defendant who has been convicted to pay the prosecution’s costs, although any costs order must be proportionate to the defendant’s means. A successful private prosecutor (but not a public authority) may be awarded costs out of central funds and such an order should be made unless there is good reason for not doing so. 9.174 An appeal against conviction lies from the magistrates’ court to a Crown Court

judge sitting with lay justices in what is essentially a rehearing. Alternatively, an appeal on a question of law lies to the Divisional Court. An appeal from the Crown Court (whether sitting in its first instance or appellate capacity) lies to the Court of Appeal.

206

Houghton v Liverpool City Council [2000] Crim LR 574; Akhtar v Grout (1998) 162 JP 714.

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Appendices

Appendix 1: Appendix 2: Appendix 3: Appendix 4: Appendix 5:

Trade Marks Act 1994 Directive (EC) 2008/95 Council Regulation (EC) 207/2009 The Trade Mark Rules 2008 Nice Class Headings

285 331 341 395 429

A PPENDIX 1

Trade Marks Act 1994 An unofficial consolidation of the Trade Marks Act 1994 as amended by: • the Trade Marks (EC Measures Relating to Counterfeit Goods) Regulations 1995 (SI 1995/1444) (1st July 1995); • Section 13 of the Olympic Symbol etc (Protection) Act 1995 (21st September 1995); • Part IV of the Patents and Trade Marks (World Trade Organisation) Regulations 1999 (SI 1999/1899) (29th July 1999); • Section 6 of the Copyright, etc. and Trade Marks (Offences and Enforcement) Act 2002 (20th November 2002); • the Trade Marks (Proof of Use, etc.) Regulations 2004 (SI 2004/946) (5th May 2004); • the Trade Marks (International Registrations Designating the European Community, etc.) Regulations 2004 (SI 2004/2332) (1st October 2004); • the Serious Organised Crime and Police Act 2005 (19th April 2005); and • the Intellectual Property (Enforcement, etc.) Regulations 2006 (SI 2006/1028) (29th April 2006). • The Trade Marks (Earlier Trade Marks) Regulations 2008 (SI 2008/1067) (10th May 2008) Major changes are shown by an asterisk in the text with a reference to the relevant legislation. All changes may be viewed by referring to the original legislation.

Arrangement of Sections PA RT I R EGISTER ED TR A DE M A R KS Introductory 1. Trade marks. 2. Registered trade marks.

Grounds for refusal of registr ation 3. Absolute grounds for refusal of registration. 4. Specially protected emblems. 5. Relative grounds for refusal of registration. 6. Meaning of ‘earlier trade mark’. 6A. Raising of relative grounds in opposition proceedings in case of non-use. 7. Raising of relative grounds in case of honest concurrent use. 8. Power to require that relative grounds be raised in opposition proceedings.

Effects of registered tr ade mark 9. 10. 11. 12. 13.

Rights conferred by registered trade mark. Infringement of registered trade mark. Limits on effect of registered trade mark. Exhaustion of rights conferred by registered trade mark. Registration subject to disclaimer or limitation.

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Appendix 1: Trade Marks Act 1994 Infringement proceedings 14. 15. 16. 17. 18. 19. 20. 21.

Action for infringement. Order for erasure, &c. of offending sign. Order for delivery up of infringing goods, material or articles. Meaning of ‘infringing goods, material or articles’. Period after which remedy of delivery up not available. Order as to disposal of infringing goods, material or articles. Jurisdiction of sheriff court or county court in Northern Ireland. Remedy for groundless threats of infringement proceedings.

R egistered tr ade mark as object of property 22. 23. 24. 25. 26. 27.

Nature of registered trade mark. Co-ownership of registered trade mark. Assignment, &c. of registered trade mark. Registration of transactions affecting registered trade mark. Trusts and equities. Application for registration of trade mark as an object of property.

Licensing 28. 29. 30. 31.

Licensing of registered trade mark. Exclusive licences. General provisions as to rights of licensees in case of infringement. Exclusive licensee having rights and remedies of assignee.

Application for registered tr ade mark 32. Application for registration. 33. Date of filing. 34. Classification of trade marks.

Priority 35. Claim to priority of Convention application. 36. Claim to priority from other relevant overseas application.

R egistr ation procedure 37. 38. 39. 40. 41.

Examination of application. Publication, opposition proceedings and observations. Withdrawal, restriction or amendment of application. Registration. Registration: supplementary provisions.

Dur ation, renewal and alter ation of registered tr ade mark 42. Duration of registration. 43. Renewal of registration. 44. Alteration of registered trade mark.

Surrender, revocation and invalidity 45. 46. 47. 48.

Surrender of registered trade mark. Revocation of registration. Grounds for invalidity of registration. Effect of acquiescence.

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Appendix 1: Trade Marks Act 1994 Collective marks 49. Collective marks.

Certification marks 50. Certification marks.

PA RT II COMMU NIT Y TR A DE M A R KS A ND INTER NATIONA L M AT TER S Community tr ade marks 51. Meaning of ‘Community trade mark’. 52. Power to make provision in connection with Community Trade Mark Regulation.

The madrid protocol: international registr ation 53. The Madrid Protocol. 54. Power to make provision giving effect to Madrid Protocol.

The paris convention: supplementary provisions 55. 56. 57. 58. 59. 60.

The Paris Convention. Protection of well-known trade marks: Article 6bis. National emblems, &c. of Convention countries: Article 6ter. Emblems, &c. of certain international organisations: Article 6ter. Notification under Article 6ter of the Convention. Act of agent or representative: Article 6septies.

Miscellaneous 61. Stamp duty.

PA RT III A DMINISTR ATIV E A ND OTHER SUPPLEMENTA RY PROV ISIONS The registr ar 62. The registrar.

The register 63. The register. 64. Rectification or correction of the register. 65. Adaptation of entries to new classification.

Powers and duties of the registr ar 66. 67. 68. 69. 70. 71.

Power to require use of forms. Information about applications and registered trade marks. Costs and security for costs. Evidence before registrar. Exclusion of liability in respect of official acts. Registrar’s annual report.

287

Appendix 1: Trade Marks Act 1994 Legal proceedings and appeals 72. 73. 74. 75. 76. 77.

Registration to be prima facie evidence of validity. Certificate of validity of contested registration. Registrar’s appearance in proceedings involving the register. The court. Appeals from the registrar. Persons appointed to hear and determine appeals.

Rules, fees, hours of business, &c. 78. 79. 80. 81.

Power of Secretary of State to make rules. Fees. Hours of business and business days. The trade marks journal.

Tr ade mark agents, &c. 82. 83. 84. 85. 86. 87. 88.

Recognition of agents. The register of trade mark agents. Unregistered persons not to be described as registered trade mark agents. Power to prescribe conditions, &c. for mixed partnerships and bodies corporate. Use of the term ‘trade mark attorney’. Privilege for communications with registered trade mark agents. Power of registrar to refuse to deal with certain agents.

Importation of infringing goods, material or articles 89. Infringing goods, material or articles may be treated as prohibited goods. 90. Power of Commissioners of Customs and Excise to make regulations. 91. Power of Commissioners of Customs and Excise to disclose information.

Offences 92. 92A. 93. 94. 95. 96.

Unauthorised use of trade mark, &c. in relation to goods. Search warrants. Enforcement function of local weights and measures authority. Falsification of register, &c. Falsely representing trade mark as registered. Supplementary provisions as to summary proceedings in Scotland.

Forfeiture of counterfeit goods, &c. 97. Forfeiture: England and Wales or Northern Ireland. 98. Forfeiture: Scotland.

PA RT IV MISCELL A NEOUS A ND GENER A L PROV ISIONS Miscellaneous 99. Unauthorised use of Royal arms, &c. 100. Burden of proving use of trade mark. 101. Offences committed by partnerships and bodies corporate.

Interpretation 102. Adaptation of expressions for Scotland. 103. Minor definitions. 104. Index of defined expressions.

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Appendix 1: Trade Marks Act 1994 Other gener al provisions 105. 106. 107. 108. 109. 110.

Transitional provisions. Consequential amendments and repeals. Territorial waters and the continental shelf. Extent. Commencement. Short title.

SCHEDULES: Schedule 1—Collective marks. Schedule 2—Certification marks. Schedule 3—Repeals and revocations.

1994 Chapter 26 An Act to make new provision for registered trade marks, implementing Council Directive No. 89/104/EEC of 21st December 1988 to approximate the laws of the Member States relating to trade marks; to make provisions in connection with Council Regulation (EC) No. 40/94 of 20th December 1993 on the Community trade mark; to give effect to the Madrid Protocol Relating to the International Registration of Marks of 27th June 1989, and to certain provisions of the Paris Convention for the Protection of Industrial Property of 20th March 1883, as revised and amended; and for connected purposes. [21st July 1994] Be it enacted by the Queen’s most Excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows:-

PA RT I R EGISTER ED TR A DE M A R KS Introductory 1. - (1) In this Act a ‘trade mark’ means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging. (2) References in this Act to a trade mark include, unless the context otherwise requires, references to a collective mark (see section 49) or certification mark (see section 50). 2. - (1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act. (2) No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off.

Grounds for refusal of registr ation 3. - (1) The following shall not be registered (a) signs which do not satisfy the requirements of section 1(1), (b) trade marks which are devoid of any distinctive character, (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value,geographical origin, the

289

Appendix 1: Trade Marks Act 1994 time of production of goods or of rendering of services, or other characteristics of goods or services, (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade: Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c)  or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it. (2) A sign shall not be registered as a trade mark if it consists exclusively of(a) the shape which results from the nature of the goods themselves, (b) the shape of goods which is necessary to obtain a technical result, or (c) the shape which gives substantial value to the goods. (3) A trade mark shall not be registered if it is(a) contrary to public policy or to accepted principles of morality, or (b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service). (4) A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of Community law. (5) A trade mark shall not be registered in the cases specified, or referred to, in section 4 (specially protected emblems). (6) A trade mark shall not be registered if or to the extent that the application is made in bad faith. 4. - (1) A trade mark which consists of or contains(a) the Royal arms, or any of the principal armorial bearings of the Royal arms, or any insignia or device so nearly resembling the Royal arms or any such armorial bearing as to be likely to be mistaken for them, or it, (b) a representation of the Royal crown or any of the Royal flags, (c) a representation of Her Majesty or any member of the Royal family, or any colourable imitation thereof, or (d) words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation, shall not be registered unless it appears to the registrar that consent has been given by or on behalf of Her Majesty or, as the case may be, the relevant member of the Royal family. (2) A trade mark which consists of or contains a representation of(a) the national flag of the United Kingdom (commonly known as the Union Jack), or (b) the flag of England, Wales, Scotland, Northern Ireland or the Isle of Man, shall not be registered if it appears to the registrar that the use of the trade mark would be misleading or grossly offensive. Provision may be made by rules identifying the flags to which paragraph (b) applies. (3) A trade mark shall not be registered in the cases specified insection 57 (national emblems, &c. of Convention countries), or section 58 (emblems, &c. of certain international organisations). (4) Provision may be made by rules prohibiting in such cases as may be prescribed the registration of a trade mark which consists of or contains(a) arms to which a person is entitled by virtue of a grant of arms by the Crown, or (b) insignia so nearly resembling such arms as to be likely to be mistaken for them, unless it appears to the registrar that consent has been given by or on behalf of that person. Where such a mark is registered, nothing in this Act shall be construed as authorising its use in any way contrary to the laws of arms. (5) * A trade mark which consists of or contains a controlled representation within the meaning of the Olympic Symbol etc (Protection) Act 1995 shall not be registered unless it appears to the registrar-

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Appendix 1: Trade Marks Act 1994 (a) that the application is made by the person for the time being appointed under Section 1(2) of the Olympic Symbol etc (Protection) Act 1995 (power of Secretary of State to appoint a person as the proprietor of the Olympics Association Right), or (b) that consent has been given by or on behalf of the person mentioned in paragraph (a) above. * Note: This subsection is an addition to the original Act, by virtue of Section 13 of the Olympic Symbol etc (Protection) Act 1995 which came into force 21st September 1995. 5. - (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected. (2) A trade mark shall not be registered if because(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. (3) A trade mark which(a) is identical with or similar to an earlier trade mark, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark or international trade mark (EC) in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. (4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, or (b) by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) above, in particular by virtue of the law of copyright, design right or registered designs. A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an ‘earlier right’ in relation to the trade mark. (5) Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration. 6. - (1) In this Act an ‘earlier trade mark’ means(a) a registered trade mark, international trade mark (UK), Community trade mark or international trade mark (EC) which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks, (b) a Community trade mark or international trade mark (EC) which has a valid claim to seniority from an earlier registered trade mark or international trade mark (UK), (ba) a registered trade mark or international trade mark (UK) which(i) has been converted from a Community trade mark or international trade mark (EC) which itself had a valid claim to seniority within paragraph (b) from an earlier trade mark, and (ii) accordingly has the same claim to seniority, or (c) a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark. (2) References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made and which, if registered, would be an earlier trade mark by virtue of subsection (1)(a) or (b), subject to its being so registered.

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Appendix 1: Trade Marks Act 1994 (3) A trade mark within subsection (1)(a) or (b) whose registration expires shall continue to be taken into account in determining the registrability of a later mark for a period of one year after the expiry unless the registrar is satisfied that there was no bona fide use of the mark during the two years immediately preceding the expiry. 6A* Raising of relative grounds in opposition proceedings in case of non-use (1) This section applies where(a) an application for registration of a trade mark has been published, (b) there is an earlier trade mark of a kind falling within section 6(1)(a), (b) or (ba)in relation to which the conditions set out in section 5(1), (2) or (3) obtain, and (c) the registration procedure for the earlier trade mark was completed before the start of the period of five years ending with the date of publication. (2) In opposition proceedings, the registrar shall not refuse to register the trade mark by reason of the earlier trade mark unless the use conditions are met. (3) The use conditions are met if(a) within the period of five years ending with the date of publication of the application the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with his consent in relation to the goods or services for which it is registered, or (b) the earlier trade mark has not been so used, but there are proper reasons for non-use. (4) For these purposes(a) use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and (b) use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes. (5) In relation to a Community trade mark or international trade mark (EC), any reference in subsection (3) or (4) to the United Kingdom shall be construed as a reference to the European Community. (6) Where an earlier trade mark satisfies the use conditions in respect of some only of the goods or services for which it is registered, it shall be treated for the purposes of this section as if it were registered only in respect of those goods or services. (7) Nothing in this section affects(a) the refusal of registration on the grounds mentioned in section 3 (absolute grounds for refusal) or section 5(4)(relative grounds of refusal on the basis of an earlier right), or (b) the making of an application for a declaration of invalidity under section 47(2) (application on relative grounds where no consent to registration). * Note: This section is an addition to the original Act, by virtue of the Trade Marks (Proof of Use, etc.) Regulations 2004 (SI 2004/946) which came into force 5th May 2004. 7. - (1) This section applies where on an application for the registration of a trade mark it appears to the registrar(a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or (b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied, but the applicant shows to the satisfaction of the registrar that there has been honest concurrent use of the trade mark for which registration is sought. (2) In that case the registrar shall not refuse the application by reason of the earlier trade mark or other earlier right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right. (3) For the purposes of this section ‘honest concurrent use’ means such use in the United Kingdom, by the applicant or with his consent, as would formerly have amounted to honest concurrent use for the purposes of section 12(2) of the Trade Marks Act 1938. (4) Nothing in this section affects(a) the refusal of registration on the grounds mentioned in section 3 (absolute grounds for refusal), or

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Appendix 1: Trade Marks Act 1994 (b) the making of an application for a declaration of invalidity under section 47(2) (application on relative grounds, where no consent to registration). (5) This section does not apply when there is an order in force under section 8 below. 8. - (1) The Secretary of State may by order provide that in any case a trade mark shall not be refused registration on a ground mentioned in section 5 (relative grounds for refusal) unless objection on that ground is raised in opposition proceedings by the proprietor of the earlier trade mark or other earlier right. (2) The order may make such consequential provision as appears to the Secretary of State appropriate(a) with respect to the carrying out by the registrar of searches of earlier trade marks, and (b) as to the persons by whom an application for a declaration of invalidity may be made on the grounds specified in section 47(2) (relative grounds). (3) An order making such provision as is mentioned in subsection (2)(a) may direct that so much of section 37 (examination of application) as requires a search to be carried out shall cease to have effect. (4) An order making such provisions as is mentioned in subsection (2)(b) may provide that so much of section 47(3) as provides that any person may make an application for a declaration of invalidity shall have effect subject to the provisions of the order. (5) An order under this section shall be made by statutory instrument, and no order shall be made unless a draft of it has been laid before and approved by a resolution of each House of Parliament. No such draft of an order making such provision as is mentioned in subsection (1) shall be laid before Parliament until after the end of the period of ten years beginning with the day on which applications for Community trade marks may first be filed in pursuance of the Community Trade Mark Regulation. (6) An order under this section may contain such transitional provisions as appear to the Secretary of State to be appropriate.

EFFECTS OF R EGISTER ED TR A DE M A R K 9. - (1) The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent. The acts amounting to infringement, if done without the consent of the proprietor, are specified in section 10. (2) References in this Act to the infringement of a registered trade mark are to any such infringement of the rights of the proprietor. (3) The rights of the proprietor have effect from the date of registration (which in accordance with section 40(3) is the date of filing of the application for registration): Provided that (a) no infringement proceedings may be begun before the date on which the trade mark is in fact registered; and (b) no offence under section 92 (unauthorised use of trade mark, &c. in relation to goods) is committed by anything done before the date of publication of the registration. 10. - (1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered. (2) A person infringes a registered trade mark if he uses in the course of trade a sign where because (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

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Appendix 1: Trade Marks Act 1994 (3) A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services a sign which(a) is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. (4) For the purposes of this section a person uses a sign if, in particular, he(a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign; (c) imports or exports goods under the sign; or (d) uses the sign on business papers or in advertising. (5) A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as a party to any use of the material which infringes the registered trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee. (6) Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee. But any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. 11. - (1) A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration)). (2) A registered trade mark is not infringed by(a) the use by a person of his own name or address. (b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or (c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts), provided the use is in accordance with honest practices in industrial or commercial matters. (3) A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality. For this purpose an ‘earlier right’ means an unregistered trade mark or other sign continuously used in relation to goods or services by a person or a predecessor in title of his from a date prior to whichever is the earlier of(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his, or (b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his; and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by virtue of any rule of law (in particular, the law of passing off ). 12. - (1) A registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent. (2) Subsection (1) does not apply where there exist legitimate reasons for the proprietor to oppose further dealings in the goods (in particular, where the condition of the goods has been changed or impaired after they have been put on the market). 13. - (1) An applicant for registration of a trade mark, or the proprietor of a registered trade mark, may-

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Appendix 1: Trade Marks Act 1994 (a) disclaim any right to the exclusive use of any specified element of the trade mark, or (b) agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation; and where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 9 (rights conferred by registered trade mark) are restricted accordingly. (2) Provision shall be made by rules as to the publication and entry in the register of a disclaimer or limitation.

INFR INGEMENT PROCEEDINGS 14. - (1) An infringement of a registered trade mark is actionable by the proprietor of the trade mark. (2) In an action for infringement all such relief by way of damages, injunctions, accounts or otherwise is available to him as is available in respect of the infringement of any other property right. 15. - (1) Where a person is found to have infringed a registered trade mark, the court may make an order requiring him(a) to cause the offending sign to be erased, removed or obliterated from any infringing goods, material or articles in his possession, custody or control, or (b) if it is not reasonably practicable for the offending sign to be erased, removed or obliterated, to secure the destruction of the infringing goods, material or articles in question. (2) If an order under subsection (1) is not complied with, or it appears to the court likely that such an order would not be complied with, the court may order that the infringing goods, material or articles be delivered to such person as the court may direct for erasure, removal or obliteration of the sign, or for destruction, as the case may be. 16. - (1) The proprietor of a registered trademark may apply to the court for an order for the delivery up to him, or such other person as the court may direct, or any infringing goods, material or articles which a person has in his possession, custody or control in the course of a business. (2) An application shall not be made after the end of the period specified in section 18 (period after which remedy of delivery up not available); and no order shall be made unless the court also makes, or it appears to the court that there are grounds for making, an order under section 19 (order as to disposal of infringing goods, &c.). (3) A person to whom any infringing goods, material or articles are delivered up in pursuance of an order under this section shall, if an order under section 19 is not made, retain them pending the making of an order, or the decision not to make an order, under that section. (4) Nothing in this section affects any other power of the court. 17. - (1) In this Act the expressions ‘infringing goods’, ‘infringing material’ and ‘infringing articles’ shall be construed as follows. (2) Goods are ‘infringing goods’, in relation to a registered trade mark, if they or their packaging bear a sign identical or similar to that mark and(a) the application of the sign to the goods or their packaging was an infringement of the registered trade mark, or (b) the goods are proposed to be imported into the United Kingdom and the application of the sign in the United Kingdom to them or their packaging would be an infringement of the registered trade mark, or (c) the sign has otherwise been used in relation to the goods in such a way as to infringe the registered mark. (3) Nothing in subsection (2)  shall be construed as affecting the importation of goods which may lawfully be imported into the United Kingdom by virtue of an enforceable Community right. (4) Material is ‘infringing material’, in relation to a registered trade mark if it bears a sign identical or similar to that mark and either-

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Appendix 1: Trade Marks Act 1994 (a) it is used for labelling or packaging goods, as a business paper, or for advertising goods or services, in such a way as to infringe the registered trade mark, or (b) it is intended to be so used and such use would infringe the registered trade mark. (5) ‘Infringing articles’, in relation to a registered trade mark, means articles(a) which are specifically designed or adapted for making copies of a sign identical or similar to that mark, and (b) which a person has in his possession, custody or control, knowing or having reason to believe that they have been or are to be used to produce infringing goods or material. 18. - (1) An application for an order under section 16 (order for delivery up of infringing goods, material or articles) may not be made after the end of the period of six years from(a) in the case of infringing goods, the date on which the trade mark was applied to the goods or their packaging, (b) in the case of infringing material, the date on which the trade mark was applied to the material, or (c) in the case of infringing articles, the date on which they were made, except as mentioned in the following provisions. (2) If during the whole or part of that period the proprietor of the registered trade mark(a) is under a disability, or (b) is prevented by fraud or concealment from discovering the facts entitling him to apply for an order, an application may be made at any time before the end of the period of six years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts. (3) In subsection (2) ‘disability’(a) in England and Wales, has the same meaning as in the Limitation Act 1980; (b) in Scotland, means legal disability within the meaning of the Prescription and Limitation (Scotland) Act 1973; (c) in Northern Ireland, has the same meaning as in the Limitation (Northern Ireland) Order 1989. 19. - (1) Where infringing goods, material or articles have been delivered up in pursuance of an order under section 16, an application may be made to the court(a) for an order that they be destroyed or forfeited to such person as the court may think fit, or (b) for a decision that no such order should be made. (2) In considering what order (if any) should be made, the court shall consider whether other remedies available in an action for infringement of the registered trade mark would be adequate to compensate the proprietor and any licensee and protect their interests. (3) Provision shall be made by rules of court as to the service of notice on persons having an interest in the goods, material or articles, and any such person is entitled(a) to appear in proceedings for an order under this section, whether or not he was served with notice, and (b) to appeal against any order made, whether or not he appeared; and an order shall not take effect until the end of the period within which notice of an appeal may be given or, if before the end of that period notice of appeal is duly given, until the final determination or abandonment of the proceedings on the appeal. (4) Where there is more than one person interested in the goods, material or articles, the court shall make such order as it thinks just. (5) If the court decides that no order should be made under this section, the person in whose possession, custody or control the goods, material or articles were before being delivered up is entitled to their return. (6) References in this section to a person having an interest in goods, material or articles include any person in whose favour an order could be made(a) under this section (including that section as applied by regulation 4 of the Community Trade Mark Regulations 2006 (SI 2006/1027));

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Appendix 1: Trade Marks Act 1994 (b) under section 24D of the Registered Designs Act 1949; (c) under section 114, 204 or 231 of the Copyright, Designs and Patents Act 1988; or (d) under regulation 1C of the Community Design Regulations 2005 (SI 2005/2339) 20. - Proceedings for an order under section 16 (order for delivery up of infringing goods, material or articles) or section 19 (order as to disposal of infringing goods, &c.) may be brought(a) in the sheriff court in Scotland, or (b) in a county court in Northern Ireland. This does not affect the jurisdiction of the Court of Session or the High Court in Northern Ireland. 21. - (1) Where a person threatens another with proceedings for infringement of a registered trade mark other than(a) the application of the mark to goods or their packaging, (b) the importation of goods to which, or to the packaging of which, the mark has been applied, or (c) the supply of services under the mark, any person aggrieved may bring proceedings for relief under this section. (2) The relief which may be applied for is any of the following(a) a declaration that the threats are unjustifiable, (b) an injunction against the continuance of the threats, (c) damages in respect of any loss he has sustained by the threats; and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned. (3) If that is shown by the defendant, the plaintiff is nevertheless entitled to relief if he shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect. (4) The mere notification that a trade mark is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section.

R EGISTER ED TR A DE M A R K AS OBJECT OF PROPERT Y 22. - A registered trade mark is personal property (in Scotland, incorporeal moveable property). 23. - (1) Where a registered trade mark is granted to two or more persons jointly, each of them is entitled, subject to any agreement to the contrary, to an equal undivided share in the registered trade mark. (2) The following provisions apply where two or more persons are co-proprietors of a registered trade mark, by virtue of subsection (1) or otherwise. (3) Subject to any agreement to the contrary, each co-proprietor is entitled, by himself or his agents, to do for his own benefit and without the consent of or the need to account to the other or others, any act which would otherwise amount to an infringement of the registered trade mark. (4) One co-proprietor may not without consent of the other or others(a) grant a licence to use the registered trade mark, or (b) assign or charge his share in the registered trade mark (or, in Scotland, cause or permit security to be granted over it). (5) Infringement proceedings may be brought by any co-proprietor, but he may not, without the leave of the court, proceed with the action unless the other, or each of the others, is either joined as a plaintiff or added as a defendant. A co-proprietor who is thus added as a defendant shall not be made liable for any costs in the action unless he takes part in the proceedings. Nothing in this subsection affects the granting of interlocutory relief on the application of a single co-proprietor. (6) Nothing in this section affects the mutual rights and obligations of trustees or personal representatives, or their rights and obligations as such.

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Appendix 1: Trade Marks Act 1994 24. - (1) A  registered trade mark is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property. It is so transmissible either in connection with the goodwill of a business or independently. (2) An assignment or other transmission of a registered trade mark may be partial, that is, limited so as to apply(a) in relation to some but not all of the goods or services for which the trade mark is registered, or (b) in relation to use of the trade mark in a particular manner or a particular locality. (3) An assignment of a registered trade mark, or an assent relating to a registered trade mark, is not effective unless it is in writing signed by or on behalf of the assignor or, as the case may be, a personal representative. Except in Scotland, this requirement may be satisfied in a case where the assignor or personal representative is a body corporate by the affi xing of its seal. (4) The above provisions apply to assignment by way of security as in relation to any other assignment. (5) A registered trade mark may be the subject of a charge (in Scotland, security) in the same way as other personal or moveable property. (6) Nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trade mark as part of the goodwill of a business. 25. - (1) On application being made to the registrar by(a) a person claiming to be entitled to an interest in or under a registered trade mark by virtue of a registrable transaction, or (b) any other person claiming to be affected by such a transaction, the prescribed particulars of the transaction shall be entered in the register. (2) The following are registrable transactions(a) an assignment of a registered trade mark or any right in it; (b) the grant of a licence under a registered trade mark; (c) the granting of any security interest (whether fixed or floating) over a registered trade mark or any right in or under it; (d) the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it; (e) an order of a court or other competent authority transferring a registered trade mark or any right in or under it. (3) Until an application has been made for registration of the prescribed particulars of a registrable transaction(a) the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trademark in ignorance of it, and (b) a person claiming to be a licensee by virtue of the transaction does not have the protection of section 30 or 31 (rights and remedies of licensee in relation to infringement). (4) Where a person becomes the proprietor or a licensee of a registered trade mark by virtue of a registrable transaction and the mark is infringed before the prescribed particulars of the transaction are registered, in proceedings for such an infringement, the court shall not award him costs unless(a) an application for registration of the prescribed particulars of the transaction is made before the end of the period of six months beginning with its date, or (b) the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter. (5) Provision may be made by rules as to(a) the amendment of registered particulars relating to a licence so as to reflect any alteration of the terms of the licence, and (b) the removal of such particulars from the register(i) where it appears from the registered particulars that the licence was granted for a fixed period and that period has expired, or (ii) where no such period is indicated and, after such period as may be prescribed, the registrar has notified the parties of his intention to remove the particulars from the register.

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Appendix 1: Trade Marks Act 1994 (6) Provision may also be made by rules as to the amendment or removal from the register of particulars relating to a security interest on the application of, or with the consent of, the person entitled to the benefit of that interest. 26. - (1) No notice of any trust (express, implied or constructive) shall be entered in the register; and the register shall not be affected by any such notice. (2) Subject to the provisions of this Act, equities (in Scotland, rights) in respect of a registered trade mark may be enforced in like manner as in respect of other personal or moveable property. 27. - (1) The provisions of section 22 to 26 (which relate to a registered trade mark as an object of property) apply, with the necessary modifications, in relation to an application for the registration of a trade mark as in relation to a registered trade mark. (2) In section 23 (co-ownership of registered trade mark) as it applies in relation to an application for registration the reference in subsection (1) to the granting of the registration shall be construed as a reference to the making of the application. (3) In section 25 (registration of transactions affecting registered trade marks) as it applies in relation to a transaction affecting an application for the registration of a trade mark, the references to the entry of particulars in the register, and to the making of an application to register particulars, shall be construed as references to the giving of notice to the registrar of those particulars.

Licensing 28. - (1) A licence to use a registered trade mark may be general or limited. A limited licence may, in particular, apply(a) in relation to some but not all of the goods or services for which the trade mark is registered, or (b) in relation to use of the trade mark in a particular manner or a particular locality. (2) A licence is not effective unless it is in writing signed by or on behalf of the grantor. Except in Scotland, this requirement may be satisfied in a case where the grantor is a body corporate by the affi xing of its seal. (3) Unless the licence proves otherwise, it is binding on a successor in title to the grantor’s interest. References in this Act to doing anything with, or without, the consent of the proprietor of a registered trade mark shall be construed accordingly. (4) Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence or licensee include a sub-licence or sub-licensee. 29. - (1) In this Act an ‘exclusive licence’ means a licence (whether general or limited) authorising the licensee to the exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorised by the licence. The expression ‘exclusive licensee’ shall be construed accordingly. (2) An exclusive licensee has the same rights against a successor in title who is bound by the licence as he has against the person granting the licence. 30. - (1) This section has effect with respect to the rights of a licensee in relation to infringement of a registered trademark. The provisions of this section do not apply where or to the extent that, by virtue of section 31(1) below (exclusive licensee having rights and remedies of assignee), the licensee has a right to bring proceedings in his own name. (2) A licensee is entitled, unless his licence, or any licence through which his interest is derived, provides otherwise, to call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects his interests. (3) If the proprietor(a) refuses to do so, or (b) fails to do so within two months after being called upon, the licensee may bring the proceedings in his own name as if he were the proprietor.

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Appendix 1: Trade Marks Act 1994 (4) Where infringement proceedings are brought by a licensee by virtue of this section, the licensee may not, without the leave of the court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant. This does not affect the granting of interlocutory relief on an application by a licensee alone. (5) A proprietor who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings. (6) In infringement proceedings brought by the proprietor of a registered trade mark any loss suffered or likely to be suffered by licensees shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of licensees. (7) The provisions of this section apply in relation to an exclusive licensee if or to the extent that he has, by virtue of section 31(1), the rights and remedies of an assignee as if he were the proprietor of the registered trade mark. 31. - (1) An exclusive licence may provide that the licensee shall have, to such extent as may be provided by licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment. Where or to the extent that such provision is made, the licensee is entitled, subject to the provisions of the licence and to the following provisions of this section, to bring infringement proceedings, against any person other than the proprietor, in his own name. (2) Any such rights and remedies of an exclusive licensee are concurrent with those of the proprietor of the registered trade mark; and references to the proprietor of a registered trade mark in the provisions of this Act relating to infringement shall be construed accordingly. (3) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the proprietor of the registered trade mark. (4) Where proceedings for infringement of a registered trade mark brought by the proprietor or an exclusive licensee relate wholly or partly to an infringement in respect of which they have concurrent rights of action, the proprietor or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant. This does not affect the granting of interlocutory relief on an application by a proprietor or exclusive licensee alone. (5) A person who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings. (6) Where an action for infringement of a registered trade mark is brought which relates wholly or partly to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action(a) the court shall in assessing damages take into account(i) the terms of the licence, and (ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement; (b) no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and (c) the court shall if an account of profits is directed apportion the profits between them as the court considers just, subject to any agreement between them. The provisions of this subsection apply whether or not the proprietor and the exclusive licensee are both parties to the action; and if they are not both parties the court may give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other. (7) The proprietor of a registered trade mark shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 16 (order for delivery up); and the court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence.

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Appendix 1: Trade Marks Act 1994 (8) The provisions of subsections (4) to (7) above have effect subject to any agreement to the contrary between the exclusive licensee and the proprietor.

A PPLIC ATION FOR R EGISTER ED TR A DE M A R K 32. - (1) An application for registration of a trade mark shall be made to the registrar. (2) The application shall contain(a) a request for registration of a trade mark, (b) the name and address of the applicant, (c) a statement of the goods or services in relation to which it is sought to register the trade mark, and (d) a representation of the trade mark. (3) The application shall state that the trade mark is being used, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used. (4) The application shall be subject to the payment of the application fee and such class fees as may be appropriate. 33. - (1) The date of filing of an application for registration of a trade mark is the date on which documents containing everything required by section 32(2) are furnished to the registrar by the applicant. If the documents are furnished on different days, the date of filing is the last of those days. (2) References in this Act to the date of application for registration are to the date of filing of the application. 34. - (1) Goods and services shall be classified for the purposes of the registration of trade marks according to a prescribed system of classification. (2) Any questions arising as to the class within which any goods or services fall shall be determined by the registrar, whose decision shall be final.

PR IOR IT Y 35. - (1) A person who has duly filed an application for protection of a trade mark in a Convention country (a ‘Convention application’), or his successor in title, has a right to priority, for the purposes of registering the same trade mark under this Act for some or all of the same goods or services, for a period of six months from the date of filing of the first such application. (2) If the application for registration under this Act is made within that six-month period(a) the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the first Convention application, and (b) the registrability of the trade mark shall not be affected by any use of the mark in the United Kingdom in the period between that date and the date of the application under this Act. (3) Any filing which in a Convention country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority. A ‘regular national filing’ means a filing which is adequate to establish the date on which the application was filed in that country, whatever may be the subsequent fate of the application. (4) A subsequent application concerning the same subject as the first Convention application, filed in the same Convention country, shall be considered the first Convention application (of which the filing date is the starting date of the period of priority), if at the time of the subsequent application(a) the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding, and (b) it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.

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Appendix 1: Trade Marks Act 1994 (5) Provision may be made by rules as to the manner of claiming a right to priority on the basis of a Convention application. (6) A right to priority arising as a result of a Convention application may be assigned or otherwise transmitted, either with the application or independently. The reference in subsection (1)  to the applicant’s ‘successor in title’ shall be construed accordingly. 36. - (1) Her Majesty may by Order in Council make provision for conferring on a person who has duly filed an application for protection of a trade mark in(a) any of the Channel Islands or a colony, or (b) a country or territory in relation to which Her Majesty’s Government in the United Kingdom have entered into a treaty, convention, arrangement or engagement for the reciprocal protection of trade marks, a right to priority, for the purpose of registering the same trade mark under this Act for some or all of the same goods or services, for a specified period from the date of filing of that application. (2) An Order in Council under this section may make provision corresponding to that made by section 35 in relation to Convention countries or such other provisions as appears to Her Majesty to be appropriate. (3) A statutory instrument containing an Order in Council under this section shall be subject to annulment in pursuance of a resolution of either House of Parliament.

R EGISTR ATION PROCEDUR E 37. - (1) The registrar shall examine whether an application for registration of a trade mark satisfies the requirement of this Act (including any requirements imposed by rules). (2) For that purpose he shall carry out a search, to such extent as he considers necessary, of earlier trade marks. (3) If it appears to the registrar that the requirements for registration are not met, he shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to amend the application. (4) If the applicant fails to satisfy the registrar that those requirements are met, or to amend the application so as to meet them, or fails to respond before the end of the specified period, the registrar shall refuse to accept the application. (5) If it appears to the registrar that the requirements for registration are met, he shall accept the application. 38. - (1) When an application for registration has been accepted, the registrar shall cause the application to be published in the prescribed manner. (2) Any person may, within the prescribed time from the date of the publication of the application, give notice to the registrar of opposition to the registration. The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition. (3) Where an application has been published, any person may, at any time before the registration of the trade mark, make observations in writing to the registrar as to whether the trade mark should be registered; and the registrar shall inform the applicant of any such observations. A person who makes observations does not thereby become a party to the proceedings on the application. 39. - (1) The applicant may at any time withdraw his application or restrict the goods or services covered by the application. If the application has been published, the withdrawal or restriction shall also be published. (2) In other respects, an application may be amended, at the request of the applicant, only by correcting(a) the name or address of the applicant, (b) errors of wording or of copying, or (c) obvious mistakes,

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Appendix 1: Trade Marks Act 1994 and then only where the correction does not substantially affect the identity of the trade mark or extend the goods or services covered by the application. (3) Provision shall be made by rules for the publication of any amendment which affects the representation of the trade mark, or the goods or services covered by the application, and for the making of objections by any person claiming to be affected by it. 40. - (1) Where an application has been accepted and(a) no notice of opposition is given within the period referred to in section 38(2), or (b) all opposition proceedings are withdrawn or decided in favour of the applicant, the registrar shall register the trade mark, unless it appears to him having regard to matters coming to his notice since the application was accepted that the registration requirements (other than those mentioned in section 5(1), (2) or (3)) were not met at that time. (2) A trade mark shall not be registered unless any fee prescribed for the registration is paid within the prescribed period. If the fee is not paid within that period, the application shall be deemed to be withdrawn. (3) A trade mark when registered shall be registered as of the date of filing of the application for registration; and that date shall be deemed for the purposes of this Act to be the date of registration. (4) On the registration of a trade mark the registrar shall publish the registration in the prescribed manner and issue to the applicant a certificate of registration. 41. - (1) Provision may be made by rules as to(a) the division of an application for the registration of a trade mark into several applications; (b) the merging of separate applications or registrations; (c) the registration of a series of trade marks. (2) A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark. (3) Rules under this section may include provision as to(a) the circumstances in which, and conditions subject to which, division, merger or registration of a series is permitted, and (b) the purposes for which an application to which the rules apply is to be treated as a single application and those for which it is to be treated as a number of separate applications.

DUR ATION, R ENEWA L A ND A LTER ATION OF R EGISTER ED TR A DE M A R K 42. - (1) A trade mark shall be registered for a period of ten years from the date of registration. (2) Registration may be renewed in accordance with section 43 for further periods of ten years. 43. - (1) The registration of a trade mark may be renewed at the request of the proprietor, subject to payment of a renewal fee. (2) Provision shall be made by rules for the registrar to inform the proprietor of a registered trade mark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed. (3) A request for renewal must be made, and the renewal fee paid, before the expiry of the registration. Failing this, the request may be made and the fee paid within such further period (of not less than six months) as may be prescribed, in which case an additional renewal fee must also be paid within that period. (4) Renewal shall take effect from the expiry of the previous registration. (5) If the registration is not renewed in accordance with the above provisions, the registrar shall remove the trade mark from the register. Provision may be made by rules for the restoration of the registration of a trade mark which has been removed from the register, subject to such conditions (if any) as may be prescribed. (6) The renewal or restoration of the registration of a trade mark shall be published in the prescribed manner.

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Appendix 1: Trade Marks Act 1994 44. - (1) A registered trade mark shall not be altered in the register, during the period of registration or on renewal. (2) Nevertheless, the registrar may, at the request of the proprietor, allow the alteration of a registered trade mark where the mark includes the proprietor’s name or address and the alteration is limited to alteration of that name or address and does not substantially affect the identity of the mark. (3) Provision shall be made by rules for the publication of any such alteration and the making of objections by any person claiming to be affected by it.

SUR R ENDER, R EVOC ATION A ND IN VA LIDIT Y 45. - (1) A registered trade mark may be surrendered by the proprietor in respect of some or all of the goods or services for which it is registered. (2) Provision may be made by rules(a) as to the manner and effect of a surrender, and (b) for protecting the interests of other persons having a right in the registered trade mark. 46. - (1) The registration of a trade mark may be revoked on any of the following grounds(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use; (c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered; (d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. (2) For the purpose of subsection (1) use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in the United Kingdom includes affi xing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes. (3) The registration of a trade mark shall not be revoked on the ground mentioned in subsection (1)(a) or (b)  if such use as in referred to in that paragraph is commenced or resumed after the expiry of the five year period and before the application for revocation is made. Provided that, any such commencement or resumption of use after the expiry of the five year period but within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made. (4) An application for revocation may be made by any person, and may be made either to the registrar or to the court, except that(a) if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and (b) if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court. (5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only. (6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from(a) the date of the application for revocation, or (b) if the registrar or court is satisfied that the grounds for revocation existing at an earlier date, that date.

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Appendix 1: Trade Marks Act 1994 47. - (1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration). Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. (2) The registration of a trade mark may be declared invalid on the ground(a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or (b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied, unless the proprietor of that earlier trade mark or other earlier right has consented to the registration. (2A) * But the registration of a trade mark may not be declared invalid on the ground that there is an earlier trade mark unless(a) the registration procedure for the earlier trade mark was completed within the period of five years ending with the date of the application for the declaration, (b) the registration procedure for the earlier trade mark was not completed before that date, or (c) the use conditions are met. (2B) The use conditions are met if(a) within the period of five years ending with the date of the application for the declaration the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with his consent in relation to the goods or services for which it is registered, or (b) it has not been so used, but there are proper reasons for non-use. (2C) For these purposes(a) use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and (b) use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes. (2D) In relation to a Community trade mark or international trade mark (EC), any reference in subsection (2B) or (2C) to the United Kingdom shall be construed as a reference to the European Community. (2E) Where an earlier trade mark satisfies the use conditions in respect of some only of the goods or services for which it is registered, it shall be treated for the purposes of this section as if it were registered only in respect of those goods or services. * Note: Sub-sections 2A to 2E are an addition to the original Act, by virtue of the Trade Marks (Proof of Use, etc.) Regulations 2004 (SI 2004/946) which came into force 5th May 2004. (2F) Subsection (2A) does not apply where the earlier trade mark is a trade mark within section 6(1)(c). (3) An application for a declaration of invalidity may be made by any person, and may be made either to the registrar or to the court, except that(a) if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and (b) if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court. (4) In the case of bad faith in the registration of a trade mark, the registrar himself may apply to the court for a declaration of the invalidity of the registration. (5) Where the grounds of invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only. (6) Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made.

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Appendix 1: Trade Marks Act 1994 Provided that this shall not affect transactions past and closed. 48. - (1) Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trade mark in the United Kingdom, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark or other right(a) to apply for a declaration that the registration of the later trade mark is invalid, or (b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was applied for in bad faith. (2) Where subsection (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark or right may no longer be invoked against his later trade mark.

COLLECTIV E M A R KS 49. - (1) A collective mark is a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings. (2) The provisions of this Act apply to collective marks subject to the provisions of Schedule 1.

CERTIFIC ATION M A R KS 50. - (1) A certification mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics. (2) The provisions of this Act apply to certification marks subject to the provisions of Schedule 2.

Part II Community Trade Marks and International Matters COMMU NIT Y TR A DE M A R KS 51. In this Act‘Community trade mark’ has the meaning given by Article 1(1) of the Community Trade Mark Regulation; and ‘the Community Trade Mark Regulation’ means Council Regulation (EC) No. 40/94 of 20th December 1993 on the Community trade mark. 52. - (1) The Secretary of State may by regulations make such provision as he considers appropriate in connection with the operation of the Community Trade Mark Regulation. (2) Provision may, in particular, be made with respect to(a) the making of applications for Community trade marks by way of the Patent Office; (b) the procedures for determining a posteriori the invalidity, or liability to revocation, of the registration of a trade mark from which a Community trade mark claims seniority; (c) the conversion of a Community trade mark, or an application for a Community trade mark, into an application for registration under this Act; (d) the designation of courts in the United Kingdom having jurisdiction over proceedings arising out of the Community Trade Mark Regulation. (3) Without prejudice to the generality of subsection (1), provision may be made by regulations under this section(a) applying in relation to a Community trade mark the provisions of-

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Appendix 1: Trade Marks Act 1994 (i) section 21 (remedy for groundless threats of infringement proceedings); (ii) sections 89 to 91 (importation of infringing goods, material or articles); and (iii) sections 92, 93, 95 and 96 (offences); and (b) making in relation to the list of professional representatives maintained in pursuance of Article 89 of the Community Trade Mark Regulation, and persons on that list, provision corresponding to that made by, or capable of being made under, sections 84 to 88 in relation to the register of trade mark agents and registered trade mark agents. (4) Regulations under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

THE M A DR ID PROTOCOL: INTER NATIONA L R EGISTR ATION 53. In this Act‘the Madrid Protocol’ means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted at Madrid on 27th June 1989; ‘the International Bureau’ has the meaning given by Article 2(1) of that Protocol; ‘international trade mark (EC)’ means a trade mark which is entitled to protection in the European Community under that Protocol; and ‘international trade mark (UK)’ means a trade mark which is entitled to protection in the United Kingdom under that Protocol. 54. - (1) The Secretary of State may by order make such provisions as he thinks fit for giving effect in the United Kingdom to the provisions of the Madrid Protocol. (2) Provision may, in particular, be made with respect to(a) the making of applications for international registrations by way of the Patent Office as office of origin; (b) the procedures to be followed where the basic United Kingdom application or registration fails or ceases to be in force; (c) the procedures to be followed where the Patent Office receives from the International Bureau a request for extension of protection to the United Kingdom; (d) the effects of a successful request for extension of protection to the United Kingdom; (e) the transformation of an application for an international registration, or an international registration, into a national application for registration; (f) the communication of information to the International Bureau; (g) the payment of fees and amounts prescribed in respect of applications for international registrations, extensions of protection and renewals. (3) Without prejudice to the generality of subsection (1), provision may be made by regulations under this section applying in relation to an international trade mark (UK) the provisions of(a) section 21 (remedy for groundless threats of infringement proceedings); (b) sections 89 to 91 (importation of infringing goods, material or articles); and (c) sections 92, 93, 95 and 96 (offences). (4) An order under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

THE PA R IS CON V ENTION: SUPPLEMENTA RY PROV ISIONS 55. - (1) In this Act(a) ‘the Paris Convention’ means the Paris Convention for the Protection of Industrial Property of March 20th 1883, as revised or amended from time to time, (aa) ‘the WTO agreement’ means the Agreement establishing the World Trade Organisation signed at Marrakesh on 15th April 1994, and (b) a ‘Convention country’ means a country, other than the United Kingdom, which is a party to that Convention or to that Agreement. (2) The Secretary of State may by order make such amendments of this Act, and rules made under this Act, as appear to him appropriate in consequence of any revision

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(3) 57. - (1)

(2)

(3)

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(5)

(6)

58. - (1)

(2)

or amendment of the Paris Convention or the WTO agreement after the passing of this Act. Any such order shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament. References in this Act to a trade mark which is entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark are to a mark which is well-known in the United Kingdom as being the mark of a person who(a) is a national of a Convention country, or (b) is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country, whether or not that person carries on business, or has any goodwill, in the United Kingdom. References to the proprietor of such a mark shall be construed accordingly. The proprietor of a trade mark which is entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark is entitled to restrain by injunction the use in the United Kingdom of a trade mark which, or the essential part of which, is identical or similar to his mark, in relation to identical or similar goods or services, where the use is likely to cause confusion. Th is right is subject to section 48 (effect of acquiescence by proprietor of earlier trade mark). Nothing in subsection (2) affects the continuation of any bona fide use of a trade mark begun before the commencement of this section. A trade mark which consists of or contains the flag of a Convention country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the registrar that use of the flag in the manner proposed is permitted without such authorisation. A trade mark which consists of or contains the armorial bearings or any other state emblem of a Convention country which is protected under the Paris Convention or the WTO agreement shall not be registered without the authorisation of the competent authorities of that country. A trade mark which consists of or contains an official sign or hallmark adopted by a Convention country and indicating control and warranty shall not, where the sign or hallmark is protected under the Paris Convention or the WTO agreement, be registered in relation to goods or services of the same, or a similar kind, as those in relation to which it indicates control and warranty, without the authorisation of the competent authorities of the country concerned. The provisions of this section as to national flags and other state emblems, and official signs or hallmarks, apply equally to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark. Nothing in this section prevents the registration of a trade mark on the application of a national of a country who is authorised to make use of a state emblem, or official sign or hallmark, of that country, notwithstanding that it is similar to that of another country. Where by virtue of this section the authorisation of the competent authorities of a Convention country is or would be required for the registration of a trade mark, those authorities are entitled to restrain by injunction any use of the mark in the United Kingdom without their authorisation. This section applies to(a) the armorial bearings, flags or other emblems, and (b) the abbreviations and names, of international intergovernmental organisations of which one or more Convention countries are members. A trade mark which consists of or contains any such emblem, abbreviation or name which is protected under the Paris Convention or the WTO agreement shall not be registered without the authorisation of the international organisation concerned, unless it

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(3) (4)

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(2) (3)

(4)

appears to the registrar that the use of the emblem, abbreviation or name in the manner proposed(a) is not such as to suggest to the public that a connection exists between the organisation and the trade mark, or (b) is not likely to mislead the public as to the existence of a connection between the user and the organisation. The provisions of this section as to emblems of an international organisation apply equally to anything which from a heraldic point of view imitates any such emblem. Where by virtue of this section the authorisation of an international organisation is or would be required for the registration of a trade mark, that organisation is entitled to restrain by injunction any use of the mark in the United Kingdom without its authorisation. Nothing in this section affects the rights of a person whose bona fide use of the trade mark in question began before 4th January 1962 (when the relevant provisions of the Paris Convention entered into force in relation to the United Kingdom). For the purpose of section 57 state emblems of a Convention country (other than the national flag), and official signs or hallmarks, shall be regarded as protected under the Paris Convention only if, or to the extent that(a) the country in question has notified the United Kingdom in accordance with Article 6ter (3) of the Convention that it desires to protect that emblem, sign or hallmark, (b) the notification remains in force, and (c) the United Kingdom has not objected to it in accordance with Article 6ter (4) or any such objection has been withdrawn. For the purposes of section 58 the emblems, abbreviations and names of an international organisation shall be regarded as protected under the Paris Convention only if, or to the extent that(a) the organisation in question has notified the United Kingdom in accordance with Article 6ter (3) of the Convention that it desires to protect that emblem, abbreviation or name, (b) the notification remains in force, and (c) the United Kingdom has not objected to it in accordance with Article 6ter (4) or any such objection has been withdrawn. Notification under Article 6ter (3) of the Paris Convention shall have effect only in relation to applications for registration made more than two months after the receipt of the notification. The registrar shall keep and make available for public inspection by any person, at all reasonable hours and free of charge, a list of (a) the state emblems and official signs or hallmarks, and (b) the emblems, abbreviations and names of international organisations, which are for the time being protected under the Paris Convention by virtue of notification under Article 6ter (3). Any reference in this section to Article 6ter of the Paris Convention shall be construed as including a reference to that Article as applied by the WTO agreement. The following provisions apply where an application for registration of a trade mark is made by a person who is an agent or representative of a person who is the proprietor of the mark in a Convention country. If the proprietor opposes the application, registration shall be refused. If the application (not being so opposed) is granted, the proprietor may(a) apply for a declaration of the invalidity of the registration, or (b) apply for the rectification of the register so as to substitute his name as the proprietor of the registered trade mark. The proprietor may (notwithstanding the rights conferred by this Act in relation to a registered trade mark) by injunction restrain any use of the trade mark in the United Kingdom which is not authorised by him.

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Appendix 1: Trade Marks Act 1994 (5) Subsections (2), (3) and (4) do not apply if, or to the extent that, the agent or representative justifies his action. (6) An application under subsection (3)(a) or (b) must be made within three years of the proprietor becoming aware of the registration; and no injunction shall be granted under subsection (4) in respect of a use in which the proprietor has acquiesced for a continuous period of three years or more.

MISCELL A NEOUS 61. Stamp duty shall not be chargeable on an instrument relating to a Community trade mark or an international trade mark (UK), or an application for any such mark, by reason only of the fact that such a mark has legal effect in the United Kingdom.

Part III Administrative and Other Supplementary Provisions THE R EGISTR A R 62. In this Act ‘the registrar’ means the Comptroller-General of Patents, Designs and Trade Marks.

THE R EGISTER 63. - (1) The registrar shall maintain a register of trade marks. References in this Act to ‘the register’ are to that register; and references to registration (in particular, in the expression ‘registered trade mark’) are, unless the context otherwise requires, to registration in that register. (2) There shall be entered in the register in accordance with this Act(a) registered trade marks, (b) such particulars as may be prescribed of registrable transactions affecting a registered trade mark, and (c) such other matters relating to registered trade marks as may be prescribed. (3) The register shall be kept in such manner as may be prescribed, and provisions shall in particular be made for(a) public inspection of the register, and (b) the supply of certified or uncertified copies, or extracts, of entries in the register. 64. - (1) Any person having a sufficient interest may apply for the rectification of an error or omission in the register: Provided that an application for rectification may not be made in respect of a matter affecting the validity of the registration of a trade mark. (2) An application for rectification may be made either to the registrar or to the court, except that(a) if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and (b) if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court. (3) Except where the registrar or the court directs otherwise, the effect of rectification of the register is that the error or omission in question shall be deemed never to have been made. (4) The registrar may, on request made in the prescribed manner by the proprietor of a registered trade mark, or a licensee, enter any change in his name or address as recorded in the register. (5) The registrar may remove from the register matter appearing to him to have ceased to have effect.

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Appendix 1: Trade Marks Act 1994 65. - (1) Provision may be made by rules empowering the registrar to do such things as he considers necessary to implement any amended or substituted classification of goods or services for the purposes of the registration of trade marks. (2) Provision may in particular be made for the amendment of existing entries on the register so as to accord with the new classification. (3) Any such power of amendment shall not be exercised so as to extend the rights conferred by the registration, except where it appears to the registrar that compliance with this requirement would involve undue complexity and that any extension would not be substantial and would not adversely affect the rights of any person. (4) The rules may empower the registrar(a) to require the proprietor of a registered trade mark, within such time as may be prescribed, to file a proposal for amendment of the register, and (b) to cancel or refuse to renew the registration of the trade mark in the event of his failing to do so. (5) Any such proposal shall be advertised, and may be opposed, in such manner as may be prescribed.

POW ER S A ND DUTIES OF THE R EGISTR A R 66. - (1) The registrar may require the use of such forms as he may direct for any purpose relating to the registration of a trade mark or any other proceeding before him under this Act. (2) The forms, and any directions of the registrar with respect to their use, shall be published in the prescribed manner. 67. - (1) After publication of an application for registration of a trade mark, the registrar shall on request provide a person with such information and permit him to inspect such documents relating to the application, or to any registered trade mark resulting from it, as may be specified in the request, subject, however, to any prescribed restrictions. Any request must be made in the prescribed manner and be accompanied by the appropriate fee (if any). (2) Before publication of an application for registration of a trade mark, documents or information constituting or relating to the application shall not be published by the registrar or communicated by him to any person except(a) in such cases and to such extent as may be prescribed, or (b) with the consent of the applicant; but subject as follows. (3) Where a person has been notified that an application for registration of a trade mark has been made, and that the applicant will if the application is granted bring proceedings against him in respect of acts done after publication of the application, he may make a request under subsection (1) notwithstanding that the application has not been published and that subsection shall apply accordingly. 68. - (1) Provision may be made by rules empowering the registrar, in any proceedings before him under this Act(a) to award any party such costs as he may consider reasonable, and (b) to direct how and by what parties they are to be paid. (2) Any such order of the registrar may be enforced(a) in England and Wales or Northern Ireland, in the same way as an order of the High Court; (b) in Scotland, in the same way as a decree for expenses granted by the Court of Session. (3) Provision may be made by rules empowering the registrar, in such cases as may be prescribed, to require a party to proceedings before him to give security for costs, in relation to those proceedings or to proceedings on appeal, and as to the consequences if security is not given. 69. Provision may be made by rules-

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70. - (1)

(2)

(3) 71. - (1)

(2)

(a) as to the giving of evidence in proceedings before the registrar under this Act by affidavit or statutory declaration; (b) conferring on the registrar the powers of an official referee of the Supreme Court as regards the examination of witnesses on oath and the discovery and production of documents; and (c) applying in relation to the attendance of witnesses in proceedings before the registrar the rules applicable to the attendance of witnesses before such a referee. The registrar shall not be taken to warrant the validity of the registration of a trade mark under this Act or under any treaty, convention, arrangement or engagement to which the United Kingdom is a party. The registrar is not subject to any liability by reason of, or in connection with, any examination required or authorised by this Act, or any such treaty, convention, arrangement or engagement, or any report or other proceedings consequent on such examination. No proceedings lie against an officer of the registrar in respect of any matter for which, by virtue of this section, the registrar is not liable. The Comptroller-General of Patents, Designs and Trade Marks shall in his annual report under section 121 of the Patents Act 1977, include a report on the execution of this Act, including the discharge of his functions under the Madrid Protocol. The report shall include an account of all money received and paid by him under or by virtue of this Act.

LEGA L PROCEEDINGS A ND A PPE A LS 72. In all legal proceedings relating to a registered trade mark (including proceedings for rectification of the register) the registration of a person as proprietor of a trade mark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it. 73. - (1) If in proceedings before the court the validity of the registration of a trade mark is contested and it is found by the court that the trade mark is validly registered, the court may give a certificate to that effect. (2) If the court gives such a certificate and in subsequent proceedings(a) the validity of the registration is again questioned, and (b) the proprietor obtains a final order or judgement in his favour, he is entitled to his costs as between solicitor and client unless the court directs otherwise. This subsection does not extend to the costs of an appeal in any such proceedings 74. - (1) In proceedings before the court involving an application for(a) the revocation of the registration of a trade mark, (b) the declaration of the invalidity of the registration of a trade mark, or (c) the rectification of the register, the registrar is entitled to appear and be heard, and shall appear if so directed by the court. (2) Unless otherwise directed by the court, the registrar may instead of appearing submit to the court a statement in writing signed by him, giving particulars of(a) any proceedings before him in relation to the matter in issue, (b) the grounds of any decision given by him affecting it, (c) the practice of the Patent Office in like cases, or (d) such matters relevant to the issues and within his knowledge as registrar as he thinks fit; and the statement shall be deemed to form part of the evidence in the proceedings. (3) Anything which the registrar is or may be authorised or required to do under this section may be done on his behalf by a duly authorised officer. 75. In this Act, unless the context otherwise requires, ‘the court’ means(a) in England and Wales and Northern Ireland, the High Court, and (b) in Scotland, the Court of Session.

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Appendix 1: Trade Marks Act 1994 76. - (1) An appeal lies from any decision of the registrar under this Act, except as otherwise expressly provided by rules. For this purpose ‘decision’ includes any act of the registrar in exercise of a discretion vested in him by or under this Act. (2) Any such appeal may be brought either to an appointed person or to the court. (3) Where an appeal is made to an appointed person, he may refer the appeal to the court if(a) it appears to him that a point of general legal importance is involved, (b) the registrar requests that it be so referred, or (c) such a request is made by any party to the proceedings before the registrar in which the decision appealed against was made. Before doing so the appointed person shall give the appellant and any other party to the appeal an opportunity to make representations as to whether the appeal should be referred to the court. (4) Where an appeal is made to an appointed person and he does not refer it to the court, he shall hear and determine the appeal and his decision shall be final. (5) The provisions of sections 68 and 69 (costs and security for costs; evidence) apply in relation to proceedings before an appointed person as in relation to proceedings before the registrar. 77. - (1) For the purposes of section 76 an ‘appointed person’ means a person appointed by the Lord Chancellor to hear and decide appeals under this Act. (2) A person is not eligible for such appointment unless(a) he has a 7 year general qualification, within the meaning of section 71 of the Courts and Legal Services Act 1990; (b) he is an advocate or solicitor in Scotland of at least 7 years’ standing; (c) he is a member of the Bar of Northern Ireland or solicitor of the Supreme Court of Northern Ireland of at least 7 years’ standing; or (d) he has held judicial office. (3) An appointed person shall hold and vacate office in accordance with his terms of appointment, subject to the following provisions(a) there shall be paid to him such remuneration (whether by way of salary or fees), and such allowances, as the Secretary of State with the approval of the Treasury may determine; (b) he may resign his office by notice in writing to the Lord Chancellor; (c) the Lord Chancellor may by notice in writing remove him from office if(i) he has become bankrupt or made an arrangement with his creditors or, in Scotland, his estate has been sequestrated or he has executed a trust deed for his creditors or entered into a composition contract, or (ii) he is incapacitated by physical or mental illness, or if he is in the opinion of the Lord Chancellor otherwise unable or unfit to perform his duties as an appointed person. (4) The Lord Chancellor shall consult the Lord Advocate before exercising his powers under this section.

RULES, FEES, HOURS OF BUSINESS, &C. 78. - (1) The Secretary of State may make rules(a) for the purposes of any provision of this Act authorising the making of rules with respect to any matter, and (b) for prescribing anything unauthorised or required by any provision of this Act to be prescribed, and generally for regulating practice and procedure under this Act. (2) Provision may, in particular, be made(a) as to the manner of filing of applications and other documents; (b) requiring and regulating the translation of documents and the filing and authentication of any translation;

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Appendix 1: Trade Marks Act 1994 (c) as to the service of documents; (d) authorising the rectification of irregularities of procedure; (e) prescribing time limits for anything required to be done in connection with any proceedings under this Act; (f) providing for the extension of any time limit so prescribed, or specified by the registrar, whether or not it has already expired. (3) Rules under this Act shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament. 79. - (1) There shall be paid in respect of applications and registration and other matters under this Act such fees as may be prescribed. (2) Provision may be made by rules as to(a) the payment of a single fee in respect of two or more matters, and (b) the circumstances (if any) in which a fee may be repaid or remitted. 80. - (1) The registrar may give directions specifying the hours of business of the Patent Office for the purpose of the transaction by the public of business under this Act, and the days which are business days for that purpose. (2) Business done on any day after the specified hours of business, or on a day which is not a business day, shall be deemed to have been done on the next business day; and where the time for doing anything under this Act expires on a day which is not a business day, that time shall be extended to the next business day. (3) Directions under this section may make different provision for different classes of business and shall be published in the prescribed manner. 81. Provision shall be made by rules for the publication by the registrar of a journal containing particulars of any application for the registration of a trade mark (including a representation of the mark) and such other information relating to trade marks as the registrar thinks fit.

TR A DE M A R K AGENTS 82. Except as otherwise provided by rules, any act required or authorised by this Act to be done by or to a person in connection with the registration of a trade mark, or any procedure relating to a registered trade mark, may be done by or to an agent authorised by that person orally or in writing. 83. - (1) The Secretary of State may make rules requiring the keeping of a register of person who act as agent for others for the purpose of applying for or obtaining the registration of trade marks; and in this Act a ‘registered trade mark agent’ means a person whose name is entered in the register kept under this section. (2) The rules may contain such provisions as the Secretary of State thinks fit regulating the registration of persons, and may in particular(a) require the payment of such fees as may be prescribed, and (b) authorise in prescribed cases the erasure from the register of the name of any person registered in it, or the suspension of a person’s registration. (3) The rules may delegate the keeping of the register to another person, and may confer on that person(a) power to make regulations(i) with respect to the payment of fees, in the cases and subject to the limits prescribed by the rules, and (ii) with respect to any other matter which could be regulated by the rules, and (b) such other functions, including disciplinary functions, as may be prescribed by the rules. 84. - (1) An individual who is not a registered trade mark agent shall not(a) carry on a business (otherwise than in partnership) under any name or other description which contains the words ‘registered trade mark agent’; or (b) in the course of a business otherwise described or hold himself out, or permit himself to be described or held out, as a registered trade mark agent. (2) A partnership shall not-

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(3)

(4)

85. - (1)

(2)

(3) (4) 86. - (1)

(2)

87. - (1) (2)

(3)

(a) carry on a business under any name or other description which contains the words ‘registered trade mark agent’; or (b) in the course of a business otherwise describe or hold itself out, or permit itself to be described or held out, as a firm of registered trade mark agents, unless all partners are registered trade mark agents or the partnership satisfies such conditions as may be prescribed for the purposes of this section. A body corporate shall not(a) carry on a business (otherwise than in partnership) under any name or other description which contains the words ‘registered trade mark agent’; or (b) in the course of a business otherwise describe or hold itself out, or permit itself to be described or held out, as a registered trade mark agent, unless all the directors of the body corporate are registered trade mark agents or the body satisfies such conditions as may be prescribed for the purposes of this section. A person who contravenes this section commits an offence and is liable on summary conviction to a fine not exceeding level 5 on the standard scale; and proceedings for such an offence may be begun at any time within a year from the date of the offence. The Secretary of State may make rules prescribing the conditions to be satisfied for the purposes of section 84 (persons entitled to be described as registered trade mark agents)(a) in relation to a partnership where not all the partners are qualified persons, or (b) in relation to a body corporate where not all the directors are qualified persons, and imposing requirements to be complied with by such partnerships or bodies corporate. The rules may, in particular(a) prescribe conditions as to the number or proportion of partners or directors who must be qualified persons; (b) impose requirements as to(i) the identification of qualified and unqualified persons in professional advertisements, circulars or letters issued by or with the consent of the partnership or body corporate and which relate to its business, and (ii) the manner in which a partnership or body corporate is to organise its affairs so as to secure that qualified persons exercise a sufficient degree of control over the activities of unqualified persons. Contravention of a requirement imposed by the rules is an offence for which a person is liable on summary conviction to a fine not exceeding level 5 on the standard scale. In this section ‘qualified person’ means a registered trade mark agent. No offence is committed under the enactments restricting the use of certain expressions in reference to persons not qualified to act as solicitors by the use of the term ‘trade mark attorney’ in reference to a registered trade mark agent. The enactments referred to in subsection (1) are section 21 of the Solicitors Act 1974, section 31 of the Solicitors (Scotland) Act 1980 and Article 22 of the Solicitors (Northern Ireland) Order 1976. This section applies to communications as to any matter relating to the protection of any design or trade mark, or as to any matter involving passing off. Any such communication(a) between a person and his trade mark agent, or (b) for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his trade mark agent, is privileged from, or in Scotland protected against, disclosure in legal proceedings in the same way as a communication between a person and his solicitor or, as the case may be, a communication for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his solicitor. In subsection (2) ‘trade mark agent’ means(a) a registered trade mark agent, or (b) a partnership entitled to describe itself as a firm of registered trade mark agents, or (c) a body corporate entitled to describe itself as a registered trade mark agent.

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Appendix 1: Trade Marks Act 1994 88. - (1) The Secretary of State may make rules authorising the registrar to refuse to recognise as agent in respect of any business under this Act(a) a person who has been convicted of an offence under section 84 (unregistered persons describing themselves as registered trade mark agents); (b) an individual whose name has been erased from and not restored to, or who is suspended from, the register of trade mark agents on the ground of misconduct; (c) a person who is found by the Secretary of State to have been guilty of such conduct as would, in the case of an individual registered in the register of trade mark agents, render him liable to have his name erased from the register on the ground of misconduct; (d) a partnership or body corporate of which one of the partners or directors is a person whom the registrar could refuse to recognise under paragraph (a), (b) or (c) above. (2) The rules may contain such incidental and supplementary provisions as appear to the Secretary of State to be appropriate and may, in particular, prescribe circumstances in which a person is or is not to be taken to have been guilty of misconduct.

IMPORTATION OF INFR INGING GOODS, M ATER I A L OR A RTICLES 89. - (1) The proprietor of a registered trade mark, or a licensee, may give notice in writing to the Commissioners of Customs and Excise(a) that he is the proprietor or, as the case may be, a licensee of the registered trade mark, (b) that, at a time and place specified in the notice, goods which are, in relation to that registered trade mark, infringing goods, material or articles are expected to arrive in the United Kingdom(i) from outside the European Economic Area, or (ii) from within that Area but not having been entered for free circulation, and (c) that he requests the Commissioners to treat them as prohibited goods. (2) When a notice is in force under this section the importation of the goods to which the notice relates, otherwise than by a person for his private and domestic use, is prohibited; but a person is not by reason of the prohibition liable to any penalty other than forfeiture of the goods. (3) * This section does not apply to goods entered, or expected to be entered, for free circulation, export, re-export or for a suspensive procedure in respect of which an application may be made under Article 3(1) of Council Regulation (EC) No. 3295/94 [O.J. No. L341, 30.12.94, p.8.] laying down measures to prohibit the release for free circulation, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods. * Note: This sub-section replaces the original, by virtue of the Trade Marks (EC Measures Relating to Counterfeit Goods) Regulations 1995 (SI 1995/1444) which came into force 1th July 1995. 90. - (1) The Commissioners of Customs and Excise may make regulations prescribing the form in which notice is to be given under section 89 and requiring a person giving notice(a) to furnish the Commissioners with such evidence as may be specified in the regulations, either on giving notice or when the goods are imported, or at both those times, and (b) to comply with such other conditions as may be specified in the regulations. (2) The regulations may, in particular, require a person giving such a notice(a) to pay such fees in respect of the notice as may be specified by the regulations; (b) to give such security as may be so specified in respect of any liability or expense which the Commissioners may incur in consequence of the notice by reason of the detention of any goods or anything done to goods detained; (c) to indemnify the Commissioners against any such liability or expense, whether security has been given or not.

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Appendix 1: Trade Marks Act 1994 (3) The regulations may make different provision as respects different classes of case to which they apply and may include such incidental and supplementary provisions as the Commissioners consider expedient. (4) Regulations under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament. (5) Section 17 of the Customs and Excise Management Act 1979 (general provisions as to Commissioners’ receipts) applies to fees paid in pursuance of regulations under this section as to receipts under the enactments relating to customs and excise. 91. Where information relating to infringing goods, material or articles has been obtained by the Commissioners of Customs and Excise for the purposes of, or in connection with, the exercise of their functions in relation to imported goods, the Commissioners may authorise the disclosure of that information for the purpose of facilitating the exercise by any person of any function in connection with the investigation or prosecution of an offence under section 92 below (unauthorised use of trade mark, &c. in relation to goods) or under the Trade Descriptions Act 1968.

OFFENCES 92. - (1) A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor(a) applies to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trade mark, or (b) sells or lets for hire, offers or exposes for sale or hire or distributes goods which bear, or the packaging of which bears, such a sign, or (c) has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything, by himself or another, which would be an offence under paragraph (b). (2) A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor(a) applies a sign identical to, or likely to be mistaken for, a registered trade mark to material intended to be used(i) for labelling or packaging goods, (ii) as a business paper in relation to goods, or (iii) for advertising goods, or (b) uses in the course of a business material bearing such a sign for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods, or (c) has in his possession, custody or control in the course of a business any such material with a view to the doing to anything, by himself or another, which would be an offence under paragraph (b). (3) A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor(a) makes an article specifically designed or adapted for making copies of a sign identical to, or likely to be mistaken for, a registered trade mark, or (b) has such an article in his possession, custody or control in the course of a business, knowing or having reason to believe that is has been, or is to be, used to produce goods, or material for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods. (4) A person does not commit an offence under this section unless(a) the goods are goods in respect of which the trade mark is registered, or (b) the trade mark has a reputation in the United Kingdom and the use of the sign takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the trade mark. (5) It is a defence for a person charged with an offence under this section to show that he believed on reasonable grounds that the use of the sign in the manner in which it was used, or was to be used, was not an infringement of the registered trade mark.

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Appendix 1: Trade Marks Act 1994 (6) A person guilty of an offence under this section is liable(a) on summary conviction to imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum, or both; (b) on conviction on indictment to a fine or imprisonment for a term not exceeding ten years, or both.

92A* SE A RCH WA R R A NTS (1) Where a justice of the peace (in Scotland, a sheriff or justice of the peace) is satisfied by information on oath given by a constable (in Scotland, by evidence on oath) that there are reasonable grounds for believing(a) that an offence under section 92 (unauthorised use of trade mark, etc. in relation to goods) has been or is about to be committed in any premises, and (b) that evidence that such an offence has been or is about to be committed is in those premises, he may issue a warrant authorising a constable to enter and search the premises, using such reasonable force as is necessary. (2) The power conferred by subsection (1)  does not, in England and Wales, extend to authorising a search for material of the kinds mentioned in section 9(2) of the Police and Criminal Evidence Act 1984 (c. 60) (certain classes of personal or confidential material). (3) A warrant under subsection (1)(a) may authorise persons to accompany any constable executing the warrant, and (b) remains in force for three months from the date of its issue. (4) In executing a warrant issued under subsection (1) a constable may seize an article if he reasonably believes that it is evidence that any offence under section 92 has been or is about to be committed. (5) In this section ‘premises’ includes land, buildings, fi xed or moveable structures, vehicles, vessels, aircraft and hovercraft. * Note: This section is an addition to the original Act, by virtue of Section 6 of the Copyright, etc. and Trade Marks (Off ences and Enforcement) Act 2002 which came into force 20th November 2002. 93. - (1) It is the duty of every local weights and measures authority to enforce within their area the provisions of section 92 (unauthorised use of trade mark, &c. in relation to goods). (2) The following provisions of the Trade Descriptions Act 1968 apply in relation to the enforcement of that section as in relation to the enforcement of that Actsection 27(power to make test purchases) section 28 (power to enter premises and inspect and seize goods and documents), section 29 (obstruction of authorised officers), and section 33 (compensation for loss, &c. of goods seized). (3) Subsection (1)  above does not apply in relation to the enforcement of section 92 in Northern Ireland, but it is the duty of the Department of Economic Development to enforce that section in Northern Ireland. For that purpose the provisions of the Trade Descriptions Act 1968 specified in subsection (2) apply as if for the references to a local weights and measures authority and any officer of such an authority there were substituted references to that Department and any of its officers. (4) Any enactment which authorises the disclosure of information for the purpose of facilitating the enforcement of the Trade Descriptions Act 1968 shall apply as if section 92 above were contained in that Act and as if the functions of any person in relation to the enforcement of that section were functions under that Act. (5) Nothing in this section shall be construed as authorising a local weights and measures authority to bring proceedings in Scotland for an offence. 94. - (1) It is an offence for a person to make, or cause to be made, a false entry in the register of trade marks, knowing or having reason to believe that it is false. (2) It is an offence for a person-

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(3)

95. - (1)

(2)

(3) 96. - (1)

(2)

(a) to make or cause to be made anything falsely purporting to be a copy of an entry in the register, or (b) to produce or tender or cause to be produced or tendered in evidence any such thing, knowing or having reason to believe that it is false. A person guilty of an offence under this section is liable(a) on conviction on indictment, to imprisonment for a term not exceeding two years or a fine, or both; (b) on summary conviction, to imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum, or both. It is an offence for a person(a) falsely to represent that a mark is a registered trade mark, or (b) to make a false representation as to the goods or services for which a trade mark is registered knowing or having reason to believe that the representation is false. For the purposes of this section, the use in the United Kingdom in relation to a trade mark(a) of the word ‘registered’, or (b) of any other word or symbol importing a reference (express or implied) to registration, shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration elsewhere than in the United Kingdom and that the trade mark is in fact so registered for the goods or services in question. A person guilty of an offence under this section is liable on summary conviction to a fine not exceeding level 3 on the standard scale. Notwithstanding anything in section 331 of the Criminal Procedure (Scotland) Act 1975, summary proceedings in Scotland for an offence under this Act may be begun at any time within six months after the date on which evidence sufficient in the Lord Advocate’s opinion to justify the proceedings came to his knowledge. For this purpose a certificate of the Lord Advocate as to the date on which such evidence came to his knowledge is conclusive evidence. For the purposes of subsection (1) and of any other provision of this Act as to the time within which summary proceedings for an offence may be brought, proceedings in Scotland shall be deemed to be begun on the date on which a warrant to apprehend or to cite the accused is granted, if such warrant is executed without undue delay.

FOR FEITUR E OF COU NTER FEIT GOODS, &C. 97. - (1) In England and Wales or Northern Ireland where there has come into the possession of any person in connection with the investigation or prosecution of a relevant offence(a) goods which, or the packaging of which, bears a sign identical to or likely to be mistaken for a registered trade mark, (b) material bearing such a sign and intended to be used for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods, or (c) articles specifically designed or adapted for making copies of such a sign, that person may apply under this section for an order for the forfeiture of the goods, material or articles. (2) An application under this section may be made(a) where proceedings have been brought in any court for a relevant offence relating to some or all of the goods, material or articles, to that court; (b) where no application for the forfeiture of the goods, material or articles has been made under paragraph (a), by way of complaint to a magistrates’ court. (3) On an application under this section the court shall make an order for the forfeiture of any goods, material or articles only if it is satisfied that a relevant offence has been committed in relation to the goods, material or articles. (4) A court may infer for the purposes of this section that such an offence has been committed in relation to any goods, material or articles if it is satisfied that such an offence

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(5)

(6) (7)

(8)

98. - (1)

(2)

(3)

(4)

(5)

(6)

(7)

has been committed in relation to goods, material or articles which are representative of them (whether by reason of being of the same design or part of the same consignment or batch or otherwise). Any person aggrieved by an order made under this section by a magistrates’ court, or by a decision of such a court not to make such an order, may appeal against that order or decision(a) in England and Wales, to the Crown Court; (b) in Northern Ireland, to the county court; and an order so made may contain such provisions as appears to the court to be appropriate for delaying the coming into force of the order pending the making and determination of any appeal (including any application under section 111 of the Magistrates’ Courts Act 1980 or Article 146 of the Magistrates’ Court (Northern Ireland) Order 1981 (statement of case)). Subject to subsection (7), where any goods, material or articles are forfeited under this section they shall be destroyed in accordance with such directions as the court may give. On making an order under this section the court may, if it considers it appropriate to do so, direct that the goods, material or articles to which the order relates shall (instead of being destroyed) be released, to such person as the court may specify, on condition that that person(a) causes the offending sign to be erased, removed or obliterated, and (b) complies with any order to pay costs which has been made against him in the proceedings for the order for forfeiture. For the purposes of this section a ‘relevant offence’ means an offence under section 92 above (unauthorised use of trade mark, &c. in relation to goods) or under the Trade Descriptions Act 1968 or any offence involving dishonesty or deception. In Scotland the court may make an order for the forfeiture of any(a) goods which bear, or the packaging of which bears, a sign identical to or likely to be mistaken for a registered trade mark, (b) material bearing such a sign and intended to be used for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods, or (c) articles specifically designed or adapted for making copies of such a sign. An order under this section may be made(a) on an application by the procurator-fiscal made in the manner specified in section 310 of the Criminal Procedure (Scotland) Act 1975, or (b) where a person is convicted of a relevant offence, in addition to any other penalty which the court may impose. On an application under subsection (2)(a), the court shall make an order for the forfeiture of any goods, material or articles only if it is satisfied that a relevant offence has been committed in relation to the goods, material or articles. The court may infer for the purposes of this section that such an offence has been committed in relation to any goods, material or articles if it is satisfied that such an offence has been committed in relation to goods, material or articles which are representative of them (whether by reason of being of the same design or part of the same consignment or batch or otherwise). The procurator-fiscal making the application under subsection (2)(a) shall serve on any person appearing to him to be the owner of, or otherwise to have an interest in, the goods, material or articles to which the application relates a copy of the application, together with a notice giving him the opportunity to appear at the hearing of the application to show cause why the goods, material or articles should not be forfeited. Service under subsection (5) shall be carried out, and such service may be proved, in the manner specified for citation of an accused in summary proceedings under the Criminal Procedure (Scotland) Act 1975. Any person upon whom notice is served under subsection (5) and any other person claiming to be the owner of, or otherwise to have an interest in, goods, material or articles to which an application under this section relates shall be entitled to appear

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Appendix 1: Trade Marks Act 1994 at the hearing of the application to show cause why the goods, material or articles should not be forfeited. (8) The court shall not make an order following an application under subsection (2)(a)(a) if any person on whom the notice is served under subsection (5) does not appear, unless service of the notice on that person is proved; or (b) if no notice under subsection (5) has been served, unless the court is satisfied that in the circumstances it was reasonable not to serve such notice. (9) Where an order for the forfeiture of any goods, material or articles is made following an application under subsection (2)(a), any person who appeared, or was entitled to appear, to show cause why goods, material or articles should not be forfeited may, within 21 days of the making of the order, appeal to the High Court by Bill of Suspension; and section 452(4)(a) to (e) of the Criminal Procedure (Scotland) Act 1975 shall apply to an appeal under this subsection as it applies to a stated case under Part II of that Act. (10) In order following an application under subsection (2)(a) shall not take effect(a) until the end of the period of 21 days beginning with the day after the day on which the order is made; or (b) if an appeal is made under subsection (9) above within that period, until the appeal is determined or abandoned. (11) An order under subsection (2)(b) shall not take effect(a) until the end of the period within which an appeal against the order could be brought under the Criminal Procedure (Scotland) Act 1975; or (b) if an appeal is made within that period, until the appeal is determined or abandoned. (12) Subject to subsection (13), goods, material or articles forfeited under this section shall be destroyed in accordance with such directions as the court may give. (13) On making an order under this section the court may if it considers it appropriate to do so, direct that the goods, material or articles to which the order relates shall (instead of being destroyed) be released, to such person as the court may specify, on condition that that person causes the offending sign to be erased, removed or obliterated. (14) For the purposes of this section‘relevant offence’ means an offence under section 92 (unauthorised use of trade mark, &c. in relation to goods) or under the Trade Descriptions Act 1968 or any offence involving dishonesty or deception, ‘the court’ means(a) in relation to an order made on an application under subsection (2)(a), the sheriff, and (b) in relation to an order made under subsection (2)(b), the court which imposed the penalty.

Part IV Miscellaneous and General Provisions MISCELL A NEOUS 99. - (1) A person shall not without the authority of Her Majesty use in connection with any business the Royal arms (or arms so closely resembling the Royal arms as to be calculated to deceive) in such manner as to be calculated to lead to the belief that he is duly authorised to use the Royal arms. (2) A person shall not without the authority of Her Majesty or of a member of the Royal family use in connection with any business any device, emblem or title in such a manner as to be calculated to lead to the belief that he is employed by, or supplies goods or services to, Her Majesty or that member of the Royal family. (3) A person who contravenes subsection (1) commits an offence and is liable on summary conviction to a fine not exceeding level 2 on the standard scale. (4) Contravention of subsection (1) or (2) may be restrained by injunction in proceedings brought by(a) any person who is authorised to use the arms, device or emblem or title in question, or

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Appendix 1: Trade Marks Act 1994 (b) any person authorised by the Lord Chamberlain to take such proceedings. (5) Nothing in this section affects any right of the proprietor of a trade mark containing any such arms, device, emblem or title to use that trade mark. 100. If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it. 101. - (1) Proceedings for an offence under this Act alleged to have been committed by a partnership shall be brought against the partnership in the name of the firm and not in that of the partners; but without prejudice to any liability of the partners under subsection (4) below. (2) The following provisions apply for the purposes of such proceedings as in relation to a body corporate(a) any rules of court relating to the service of documents; (b) in England and Wales or Northern Ireland, Schedule 3 to the Magistrates’ Courts Act 1980 or Schedule 4 to the Magistrates’ Courts (Northern Ireland) Order 1981 (procedure on charge of offence). (3) A fine imposed on a partnership on its conviction in such proceedings shall be paid out of the partnership assets. (4) Where a partnership is guilty of an offence under this Act, every partner, other than a partner who is proved to have been ignorant of or to have attempted to prevent the commission of the offence, is also guilty of the offence and liable to be proceeded against and punished accordingly. (5) Where an offence under this Act committed by a body corporate is proved to have been committed with the consent or connivance of a director, manager, secretary or other similar officer of the body, or a person purporting to act in any such capacity, he as well as the body corporate is guilty of the offence and liable to be proceeded against and punished accordingly.

INTER PR ETATION 102. In the application of this Act to Scotland‘account of profits’ means accounting and payment of profits; ‘accounts’ means count, reckoning and payment; ‘assignment’ means assignation; ‘costs’ means expenses; ‘declaration’ means declarator; ‘defendant’ means defender; ‘delivery up’ means delivery; ‘injunction’ means interdict; ‘interlocutory relief ’ means interim remedy; and ‘plaintiff ’ means pursuer. 103. - (1) In this Act‘business’ includes a trade or profession; ‘director’, in relation to a body corporate whose affairs are managed by its members, means any member of the body; ‘infringement proceedings’, in relation to a registered trade mark, includes proceedings under section 16 (order for delivery up of infringing goods, &c.); ‘publish’ means make available to the public, and references to publication(a) in relation to an application for registration, are to publication under section 38(1), and (b) in relation to registration, are to publication under section 40(4); ‘statutory provisions’ includes provisions of subordinate legislation within the meaning of the Interpretation Act 1978; ‘trade’ includes any business or profession.

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Appendix 1: Trade Marks Act 1994 (2) References in this Act to use (or any particular description of use) of a trade mark, or of a sign identical with, similar to, or likely to be mistaken for a trade mark, include use (or that description of use) otherwise than by means of a graphic representation. (3) References in this Act to a Community instrument include references to any instrument amending or replacing that instrument. 104. In this Act the expressions listed below are defined by or otherwise fall to be construed in accordance with the provisions indicatedaccount of profits and accounts (in Scotland) section 102 appointed person (for purposes of section 76) section 77 assignment (in Scotland) section 102 business section 103(1) certification mark section 50(1) collective mark section 49(1) commencement (of this Act) section 109(2) Community trade mark section 51 Community Trade Mark Regulation section 51 Convention country section 55(1)(b) costs (in Scotland) section 102 the court section 75 date of application section 33(2) date of filing section 33(1) date of registration section 40(3) defendant (in Scotland) section 102 delivery up (in Scotland) section 102 director section 103(1) earlier right section 5(4) earlier trade mark section 6 exclusive licence and licensee section 29(1) infringement (of registered trade mark) sections 9(1) and (2) and 10 infringement proceedings section 103(1) infringing articles section 17 infringing goods section 17 infringing material section 17 injunction (in Scotland) section 102 interlocutory relief (in Scotland) section 102 the International Bureau section 53 the international trade mark (EC) section 53 international trade mark (UK) section 53 Madrid Protocol section 53 Paris Convention section 55(1)(a) plaintiff (in Scotland) section 102 prescribed section 78(1)(b) protected under the Paris Convention - well-known trade marks section 56(1) - state emblems and official signs or hallmarks section 57(1) - emblems, &c. of international organisations section 58(2) publish and references to publication section 103(1) register, registered (and related expressions) section 63(1) registered trade mark agent section 83(1) registrable transaction section 25(2) the registrar section 62 rules section 78 statutory provisions section 103(1) trade section 103(1) trade mark

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section 1(1) section 1(2) section 108(2) section 103(2) section 56(1)

OTHER GENER A L PROV ISIONS 105. The provisions of Schedule 3 have eff ect with respect to transitional matters, including the treatment of marks registered under the Trade Marks Act 1938, and applications for registration and other proceedings pending under that Act, on the commencement of this Act. 106. - (1) The enactments specified in Schedule 4 are amended in accordance with that Schedule, the amendments being consequential on the provisions of this Act. (2) The enactments specified in Schedule 5 are repealed to the extent specified. 107. - (1) For the purposes of this Act the territorial waters of the United Kingdom shall be treated as part of the United Kingdom. (2) This Act applies to things done in the United Kingdom sector of the continental shelf on a structure or vessel which is present there for purposes directly connected with the exploration of the sea bed or subsoil or the exploitation of their natural resources as it applies to things done in the United Kingdom. (3) The United Kingdom sector of the continental shelf means the areas designated by order under section 1(7) of the Continental Shelf Act 1964. 108. - (1) This Act extends to England and Wales, Scotland and Northern Ireland. (2) This Act also extends to the Isle of Man, subject to such exceptions and modifications as Her Majesty may specify by Order in Council; and subject to any such Order references in this Act to the United Kingdom shall be construed as including the Isle of Man. 109. - (1) The provisions of this Act come into force on such day as the Secretary of State may appoint by order made by statutory instrument. Different days may be appointed for different provisions and different purposes. (2) The references to the commencement of this Act in Schedules 3 and 4 (transitional provisions and consequential amendments) are to the commencement of the main substantive provisions of Parts I and III of this Act and the consequential repeal of the Trade Marks Act 1938. Provision may be made by order under this section identifying the date of that commencement. 110. This Act may be cited as the Trade Marks Act 1994.

Schedules Schedule 1 Collective Marks GENER A L 1. The provisions of this Act apply to collective marks subject to the following provisions.

SIGNS OF W HICH A COLLECTIV E M A R K M AY CONSIST 2. In relation to a collective mark the reference in section 1(1) (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings.

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Appendix 1: Trade Marks Act 1994 INDIC ATION OF GEOGR A PHIC A L OR IGIN 3. - (1) Notwithstanding section 3(1)(c), a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services. (2) However, the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, by a person who is entitled to use a geographical name).

M A R K NOT TO BE MISLE A DING AS TO CH A R ACTER OR SIGNIFIC A NCE 4. - (1) A collective mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a collective mark. (2) The registrar may accordingly require that a mark in respect of which application is made for registration include some indication that it is a collective mark. Notwithstanding section 39(2), an application may be amended so as to comply with any such requirement.

R EGUL ATIONS GOV ER NING USE OF COLLECTIV E M A R K 5. - (1) An applicant for registration of a collective mark must file with the registrar regulations governing the use of the mark. (2) The regulations must specify the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including any sanctions against misuse. Further requirements with which the regulations have to comply may be imposed by rules.

A PPROVA L OF R EGUL ATIONS BY R EGISTR A R 6. - (1) A  collective mark shall not be registered unless the registrations governing the use of the mark(a) comply with paragraph 5(2) and any further requirements imposed by rules, and (b) are not contrary to public policy or to accepted principles of morality. (2) Before the end of the prescribed period after the date of the application for registration of a collective mark, the applicant must file the regulations with the registrar and pay the prescribed fee. If he does not do so, the application shall be deemed to be withdrawn. 7. - (1) The registrar shall consider whether the requirements mentioned in paragraph 6 (1) are met. (2) If it appears to the registrar that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to file amended regulations. (3) If the applicant fails to satisfy the registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the registrar shall refuse the application. (4) If it appears to the registrar that those requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 38 (publication, opposition proceedings and observations). 8. The regulations shall be published and notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 6(1). This is in addition to any other grounds on which the application may be opposed or observations made.

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Appendix 1: Trade Marks Act 1994 R EGUL ATIONS TO BE OPEN TO INSPECTION 9. The regulations governing the use of a registered collective mark shall be open to public inspection in the same way as the register.

A MENDMENT OF R EGUL ATIONS 10. - (1) An amendment of the regulations governing the use of a registered collective mark is not effective unless and until the amended regulations are filed with the registrar and accepted by him. (2) Before accepting any amended regulations the registrar may in any case where it appears to him expedient to do so cause them to be published. (3) If he does so, notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 6(1).

INFR INGEMENT: R IGHTS OF AUTHOR ISED USERS 11. The following provisions apply in relation to an authorised user of a registered collective mark as in relation to a licensee of a trade mark(a) section 10(5) (definition of infringement: unauthorised application of mark to certain material); (b) section 19(2) (order as to disposal of infringing goods, material or articles: adequacy of other remedies); (c) section 89 (prohibition of importation of infringing goods, material or articles: request to Commissioners of Customs and Excise). 12. - (1) The following provisions (which correspond to the provisions of section 30 (general provisions as to rights of licensees in case of infringement)) have effect as regards the rights of an authorised user in relation to infringement of a registered collective mark. (2) An authorised user is entitled, subject to any agreement to the contrary between him and the proprietor, to call on the proprietor to take infringement proceedings in respect of any matter which affects his interests. (3) If the proprietor(a) refuses to do so, or (b) fails to do so within two months after being called upon, the authorised user may bring the proceedings in his own name as if he were the proprietor. (4) Where infringement proceedings are brought by virtue of this paragraph, the authorised user may not, without the leave of the court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant. This does not affect the granting of interlocutory relief on an application by an authorised user alone. (5) A proprietor who is added as a defendant as mentioned in sub-paragraph (4) shall not be made liable for any costs in the action unless he takes part in the proceedings. (6) In infringement proceedings brought by the proprietor of a registered collective mark any loss suffered or likely to be suffered by authorised users shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users.

GROU NDS FOR R EVOC ATION OF R EGISTR ATION 13. Apart from the grounds of revocation provided for in section 46, the registration of a collective mark may be revoked on the ground(a) that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in paragraph 4(1), or

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Appendix 1: Trade Marks Act 1994 (b) that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark, or (c) that an amendment of the regulations has been made so that the regulations(i) no longer comply with paragraph 5(2) and any further conditions imposed by rules, or (ii) are contrary to public policy or to accepted principles of morality.

GROU NDS FOR IN VA LIDIT Y OF R EGISTR ATION 14. Apart from the grounds of invalidity provided for in section 47, the registration of a collective mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 4(1) or 6(1).

Schedule 2 Certification Marks GENER A L 1. The provisions of this Act apply to certification marks subject to the following provisions.

SIGNS OF W HICH A CERTIFIC ATION M A R K M AY CONSIST 2. In relation to a certification mark the reference in section 1(1) (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services which are certified from those which are not.

INDIC ATION OF GEOGR A PHIC A L OR IGIN 3. - (1) Notwithstanding section 3(1)(c), a certification mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services. (2) However, the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, by a person who is entitled to use a geographical name).

NATUR E OF PROPR IETOR’S BUSINESS 4. A certification mark shall not be registered if the proprietor carries on a business involving supply of goods or services of the kind certified.

M A R K NOT TO BE MISLE A DING AS TO CH A R ACTER OR SIGNIFIC A NCE 5. - (1) A certification mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a certification mark. (2) The registrar may accordingly require that a mark in respect of which application is made for registration include some indication that it is a certification mark. Notwithstanding section 39(2), an application may be amended so as to comply with any such requirement.

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Appendix 1: Trade Marks Act 1994 R EGUL ATIONS GOV ER NING USE OF CERTIFIC ATION M A R K 6. - (1) An applicant for registration of a certification mark must file with the registrar regulations governing the use of the mark. (2) The regulations must indicate who is authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes. Further requirements with which the regulations have to comply may be imposed by rules.

A PPROVA L OF R EGUL ATIONS, &C. 7. - (1) A certification mark shall not be registered unless(a) the regulations governing the use of the mark(i) comply with paragraph 6(2) and any further requirements imposed by rules, and (ii) are not contrary to public policy or to accepted principles of morality, and (b) the applicant is competent to certify the goods or services for which the mark is to be registered. (2) Before the end of the prescribed period after the date of the application for registration of a certification mark, the applicant must file the regulations with the registrar and pay the prescribed fee. If he does not do so, the application shall be deemed to be withdrawn. 8. - (1) The registrar shall consider whether the requirements mentioned on paragraph 7 (1) are met. (2) If it appears to the registrar that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to file amended regulations. (3) If the applicant fails to satisfy the registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the registrar shall refuse the application. (4) If it appears to the registrar that those requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 38 (publication, opposition proceedings and observations). 9. The regulations shall be published and notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 7(1). This is in addition to any other grounds on which the application may be opposed or observations made.

R EGUL ATIONS TO BE OPEN TO INSPECTION 10. The regulations governing the use of a registered certification mark shall be open to public inspection in the same way as the register.

A MENDMENT OF R EGUL ATIONS 11. - (1) An amendment of the regulations governing the use of a registered certification mark is not effective unless and until the amended regulations are filed with the registrar and accepted by him. (2) Before accepting any amended regulations the registrar may in any case where it appears to him expedient to do so cause them to be published. (3) If he does so, notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 7(1).

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Appendix 1: Trade Marks Act 1994 CONSENT TO ASSIGNMENT OF R EGISTER ED CERTIFIC ATION M A R K 12. The assignment or other transmission of a registered certification mark is not effective without the consent of the registrar.

INFR INGEMENT: R IGHTS OF AUTHOR ISED USERS 13. The following provisions apply in relation to an authorised user of a registered certification mark as in relation to a licensee of a trade mark(a) section 10(5) (definition of infringement: unauthorised application of mark to certain material); (b) section 19(2) (order as to disposal of infringing goods, material or articles: adequacy of other remedies); (c) section 89 (prohibition of importation of infringing goods, material or articles: request to Commissioners of Customs and Excise). 14. In infringement proceedings brought by the proprietor of a registered certification mark any loss suffered or likely to be suffered by authorised users shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users.

GROU NDS FOR R EVOC ATION OF R EGISTR ATION 15. Apart from the grounds of revocation provided for in section 46, the registration of a certification mark may be revoked on the ground(a) that the proprietor has begun to carry on such a business as is mentioned in paragraph 4, (b) that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in paragraph 5(1), (c) that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark, (d) that an amendment of the regulations has been made so that the regulations(i) no longer comply with paragraph 6(2) and any further conditions imposed by rules, or (ii) are contrary to public policy or to accepted principles of morality, or (e) that the proprietor is no longer competent to certify the goods or services for which the mark is registered.

GROU NDS FOR IN VA LIDIT Y OF R EGISTR ATION 16. Apart from the grounds of invalidity provided for in section 47, the registration of a certification mark may be declared invalid on the ground that the mark was registered in breach of the provision of paragraph 4, 5(1) or 7(1).

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Schedule 3 Repeals and Revocations Chapter or number

Short title

1891 c. 50.

Commissioners for Oaths Act 1891.

1907 c. 29. 1938 c. 22. 1947 c. 44. 1949 c. 87. 1964 c. 14. 1967 c. 80. 1978 c. 23. 1984 c. 19.

1985 c. 6.

1986 c. 12 1986 c. 39. S.I.1986/1032 (N.I.6).

1987 c. 43.

S.I.1987/2049.

1988 c. 1.

1988 c. 48.

1992 c. 12.

Extent of repeal or revocation

In section 1, the words ‘or the Patents, Designs and Trade Marks Act, 1883 to 1888,’. Patents and Designs In section 63(2), the words from ‘and those Act 1907. salaries’ to the end. Trade Marks Act 1938. The whole Act. Crown Proceedings Act In section 3(1)(b), the words ‘or registered 1947. service mark’. Patents Act 1949. Section 92(2). Plant Varieties and In section 5A(4), the words ‘under the Trade Seeds Act 1964. Marks Act 1938’ Criminal Justice Act In Schedule 3, in Parts I and IV, the entries 1967. relating to the Trade Marks Act 1938. Judicature (Northern In Schedule 5, in Part II, the paragraphs Ireland) Act 1978. amending the Trade Marks Act 1938. Trade Marks The whole Act. (Amendment) Act 1984. Companies Act 1985. In section 396- (a) in subsection (3A)(a), and (b) in subsection (2)(d)(i) as inserted by the Companies Act 1989, the words ‘service mark,’. Statute Law (Repeals) In Schedule 2, paragraph 2. Act 1986. Patents, Designs and Section 2. Section 4(4). In Schedule 1, Marks Act 1986. paragraphs 1 and 2. Schedule 2. Companies (Northern In article 403- (a) in paragraph (3A)(a) and Ireland) Order 1986. (b) in paragraph (2)(d)(i) as inserted by the Companies (No.2) (Northern Ireland) Order 1990, the words ‘service mark,’. Consumer Protection In section 45- (a) in subsection (1), the Act 1987. definition of ‘mark’ and ‘trade mark’; (b) subsection (4). In article 2- (a) in paragraph (2), the Consumer Protection definitions of “mark and ‘trade mark’; (Northern Ireland) (b) paragraph (3). Order 1987. In section 83, the words from ‘References in Income and Corporation Taxes Act this section’ to the end. 1988. Copyright, Designs and Sections 282 to 284. In section 286, the Patents Act 1988. definition of ‘registered trade mark agent’. Section 300. Taxation of Chargeable In section 275(h), the words ‘service marks’ Gains Act 1992. and “service mark.

© Crown copyright 2004

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Directive 2008/95/EC of the European Parliament and of the Council OF 22 OCTOBER 2008 TO A PPROX IM ATE THE L AWS OF THE MEMBER STATES R EL ATING TO TR A DE M A R KS (CODIFIED V ER SION) (TE XT W ITH EE A R ELEVA NCE) THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION, Having regard to the Treaty establishing the European Community, and in particular Article 95 thereof, Having regard to the proposal from the Commission, Having regard to the opinion of the European Economic and Social Committee (1), Acting in accordance with the procedure laid down in Article 251 of the Treaty (2), Whereas: (1) The content of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (3) has been amended (4). In the interests of clarity and rationality the said Directive should be codified. (2) The trade mark laws applicable in the Member States before the entry into force of Directive 89/104/EEC contained disparities which may have impeded the free movement of goods and freedom to provide services and may have distorted competition within the common market. It was therefore necessary to approximate the laws of the Member States in order to ensure the proper functioning of the internal market. (3) It is important not to disregard the solutions and advantages which the Community trade mark system may afford to undertakings wishing to acquire trade marks. (4) It does not appear to be necessary to undertake full-scale approximation of the trade mark laws of the Member States. It will be sufficient if approximation is limited to those national provisions of law which most directly affect the functioning of the internal market. (5) This Directive should not deprive the Member States of the right to continue to protect trade marks acquired through use but should take them into account only in regard to the relationship between them and trade marks acquired by registration. (6) Member States should also remain free to fi x the provisions of procedure concerning the registration, the revocation and the invalidity of trade marks acquired by registration. They can, for example, determine the form of trade mark registration and invalidity procedures, decide whether earlier rights should be invoked either in the registration procedure or in the invalidity procedure or in both and, if they allow earlier rights to be invoked in the registration procedure, have an opposition procedure or an ex officio examination procedure or both. Member States should remain free to determine the effects of revocation or invalidity of trade marks. (7) This Directive should not exclude the application to trade marks of provisions of law of the Member States other than trade mark law, such as the provisions relating to unfair competition, civil liability or consumer protection. (8) Attainment of the objectives at which this approximation of laws is aiming requires that the conditions for obtaining and continuing to hold a registered trade mark be, in general, identical in all Member States. To this end, it is necessary to list examples of signs which may constitute a trade mark, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. The grounds for refusal or invalidity concerning the trade mark itself, for example, the absence of any distinctive

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Appendix 2: Directive (EC) 2008/95 character, or concerning conflicts between the trade mark and earlier rights, should be listed in an exhaustive manner, even if some of these grounds are listed as an option for the Member States which should therefore be able to maintain or introduce those grounds in their legislation. Member States should be able to maintain or introduce into their legislation grounds of refusal or invalidity linked to conditions for obtaining and continuing to hold a trade mark for which there is no provision of approximation, concerning, for example, the eligibility for the grant of a trade mark, the renewal of the trade mark or rules on fees, or related to the noncompliance with procedural rules. (9) In order to reduce the total number of trade marks registered and protected in the Community and, consequently, the number of confl icts which arise between them, it is essential to require that registered trade marks must actually be used or, if not used, be subject to revocation. It is necessary to provide that a trade mark cannot be invalidated on the basis of the existence of a non-used earlier trade mark, while the Member States should remain free to apply the same principle in respect of the registration of a trade mark or to provide that a trade mark may not be successfully invoked in infringement proceedings if it is established as a result of a plea that the trade mark could be revoked. In all these cases it is up to the Member States to establish the applicable rules of procedure. (10) It is fundamental, in order to facilitate the free movement of goods and services, to ensure that registered trade marks enjoy the same protection under the legal systems of all the Member States. This should not, however, prevent the Member States from granting at their option extensive protection to those trade marks which have a reputation. (11) The protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, should be absolute in the case of identity between the mark and the sign and the goods or services. The protection should apply also in the case of similarity between the mark and the sign and the goods or services. It is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion. The likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection. The ways in which likelihood of confusion may be established, and in particular the onus of proof, should be a matter for national procedural rules which should not be prejudiced by this Directive. (12) It is important, for reasons of legal certainty and without inequitably prejudicing the interests of a proprietor of an earlier trade mark, to provide that the latter may no longer request a declaration of invalidity nor may he oppose the use of a trade mark subsequent to his own of which he has knowingly tolerated the use for a substantial length of time, unless the application for the subsequent trade mark was made in bad faith. (13) All Member States are bound by the Paris Convention for the Protection of Industrial Property. It is necessary that the provisions of this Directive should be entirely consistent with those of the said Convention. The obligations of the Member States resulting from that Convention should not be affected by this Directive. Where appropriate, the second paragraph of Article 307 of the Treaty should apply. (14) This Directive should be without prejudice to the obligations of the Member States relating to the time limit for transposition into national law of Directive 89/104/EEC set out in Annex I, Part B, HAVE ADOPTED THIS DIRECTIVE: Article 1 Scope This Directive shall apply to every trade mark in respect of goods or services which is the subject of registration or of an application in a Member State for registration as an individual trade mark, a collective mark or a guarantee or certification mark, or which is the subject of a registration or an

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Appendix 2: Directive (EC) 2008/95 application for registration in the Benelux Office for Intellectual Property or of an international registration having effect in a Member State. Article 2 Signs of which a trade mark may consist A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. Article 3 Grounds for refusal or invalidity 1. The following shall not be registered or, if registered, shall be liable to be declared invalid: (a) signs which cannot constitute a trade mark; (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services; (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; (e) signs which consist exclusively of: (i) the shape which results from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; (iii) the shape which gives substantial value to the goods; (f) trade marks which are contrary to public policy or to accepted principles of morality; (g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service; (h) trade marks which have not been authorised by the competent authorities and are to be refused or invalidated pursuant to Article 6 ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the ‘Paris Convention’. 2. Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that: (a) the use of that trade mark may be prohibited pursuant to provisions of law other than trade mark law of the Member State concerned or of the Community; (b) the trade mark covers a sign of high symbolic value, in particular a religious symbol; (c) the trade mark includes badges, emblems and escutcheons other than those covered by Article 6 ter of the Paris Convention and which are of public interest, unless the consent of the competent authority to their registration has been given in conformity with the legislation of the Member State; (d) the application for registration of the trade mark was made in bad faith by the applicant. 3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration. 4. Any Member State may provide that, by derogation from paragraphs 1, 2 and 3, the grounds of refusal of registration or invalidity in force in that State prior to the date of entry into force of the provisions necessary to comply with Directive 89/104/EEC, shall apply to trade marks for which application has been made prior to that date.

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Article 4 Further grounds for refusal or invalidity concerning conflicts with earlier rights A trade mark shall not be registered or, if registered, shall be liable to be declared invalid: (a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected; (b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark. ‘Earlier trade marks’ within the meaning of paragraph 1 means: (a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks; (i) Community trade marks; (ii) trade marks registered in the Member State or, in the case of Belgium, Luxembourg or the Netherlands, at the Benelux Office for Intellectual Property; (iii) trade marks registered under international arrangements which have effect in the Member State; (b) Community trade marks which validly claim seniority, in accordance with Council Regulation (EC) No 40/94 (5) of 20 December 1993 on the Community trade mark, from a trade mark referred to in (a)(ii) and (iii), even when the latter trade mark has been surrendered or allowed to lapse; (c) applications for the trade marks referred to in points (a) and (b), subject to their registration; (d) trade marks which, on the date of application for registration of the trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6 bis of the Paris Convention. A trade mark shall furthermore not be registered or, if registered, shall be liable to be declared invalid if it is identical with, or similar to, an earlier Community trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier Community trade mark is registered, where the earlier Community trade mark has a reputation in the Community and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier Community trade mark. Any Member State may, in addition, provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that: (a) the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark; (b) rights to a non-registered trade mark or to another sign used in the course of trade were acquired prior to the date of application for registration of the subsequent trade mark, or the date of the priority claimed for the application for registration of the subsequent trade mark, and that nonregistered trade mark or other sign confers on its proprietor the right to prohibit the use of a subsequent trade mark; (c) the use of the trade mark may be prohibited by virtue of an earlier right other than the rights referred to in paragraph 2 and point (b) of this paragraph and in particular: (i) a right to a name; (ii) a right of personal portrayal; (iii) a copyright; (iv) an industrial property right;

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Appendix 2: Directive (EC) 2008/95 (d) the trade mark is identical with, or similar to, an earlier collective trade mark conferring a right which expired within a period of a maximum of three years preceding application; (e) the trade mark is identical with, or similar to, an earlier guarantee or certification mark conferring a right which expired within a period preceding application the length of which is fi xed by the Member State; (f) the trade mark is identical with, or similar to, an earlier trade mark which was registered for identical or similar goods or services and conferred on them a right which has expired for failure to renew within a period of a maximum of two years preceding application, unless the proprietor of the earlier trade mark gave his agreement for the registration of the later mark or did not use his trade mark; (g) the trade mark is liable to be confused with a mark which was in use abroad on the filing date of the application and which is still in use there, provided that at the date of the application the applicant was acting in bad faith. 5. The Member States may permit that in appropriate circumstances registration need not be refused or the trade mark need not be declared invalid where the proprietor of the earlier trade mark or other earlier right consents to the registration of the later trade mark. 6. Any Member State may provide that, by derogation from paragraphs 1 to 5, the grounds for refusal of registration or invalidity in force in that State prior to the date of the entry into force of the provisions necessary to comply with Directive 89/104/EEC, shall apply to trade marks for which application has been made prior to that date.

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Article 5 Rights conferred by a trade mark The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. The following, inter alia, may be prohibited under paragraphs 1 and 2: (a) affi xing the sign to the goods or to the packaging thereof; (b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; (c) importing or exporting the goods under the sign; (d) using the sign on business papers and in advertising. Where, under the law of the Member State, the use of a sign under the conditions referred to in paragraph 1(b) or paragraph 2 could not be prohibited before the date of entry into force of the provisions necessary to comply with Directive 89/104/EEC in the Member State concerned, the rights conferred by the trade mark may not be relied on to prevent the continued use of the sign. Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

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Appendix 2: Directive (EC) 2008/95 Article 6 Limitation of the effects of a trade mark 1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade: (a) his own name or address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts; provided he uses them in accordance with honest practices in industrial or commercial matters. 2. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognised by the laws of the Member State in question and within the limits of the territory in which it is recognised. Article 7 Exhaustion of the rights conferred by a trade mark 1. The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. 2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market. Article 8 Licensing 1. A trade mark may be licensed for some or all of the goods or services for which it is registered and for the whole or part of the Member State concerned. A  licence may be exclusive or non-exclusive. 2. The proprietor of a trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in his licensing contract with regard to: (a) its duration; (b) the form covered by the registration in which the trade mark may be used; (c) the scope of the goods or services for which the licence is granted; (d) the territory in which the trade mark may be affi xed; or (e) the quality of the goods manufactured or of the services provided by the licensee. Article 9 Limitation in consequence of acquiescence 1. Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 4(2) has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith. 2. Any Member State may provide that paragraph 1 shall apply mutatis mutandis to the proprietor of an earlier trade mark referred to in Article 4(4)(a) or an other earlier right referred to in Article 4(4)(b) or (c). 3. In the cases referred to in paragraphs 1 and 2, the proprietor of a later registered trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later trade mark.

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Appendix 2: Directive (EC) 2008/95 Article 10 Use of trade marks 1. If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use. The following shall also constitute use within the meaning of the first subparagraph: (a) use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered; (b) affi xing of the trade mark to goods or to the packaging thereof in the Member State concerned solely for export purposes. 2. Use of the trade mark with the consent of the proprietor or by any person who has authority to use a collective mark or a guarantee or certification mark shall be deemed to constitute use by the proprietor. 3. In relation to trade marks registered before the date of entry into force in the Member State concerned of the provisions necessary to comply with Directive 89/104/EEC: (a) where a provision in force prior to that date attached sanctions to non-use of a trade mark during an uninterrupted period, the relevant period of five years mentioned in the first subparagraph of paragraph 1 shall be deemed to have begun to run at the same time as any period of nonuse which is already running at that date; (b) where there was no use provision in force prior to that date, the periods of fi ve years mentioned in the first subparagraph of paragraph 1 shall be deemed to run from that date at the earliest.

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Article 11 Sanctions for non-use of a trade mark in legal or administrative proceedings A trade mark may not be declared invalid on the ground that there is an earlier conflicting trade mark if the latter does not fulfil the requirements of use set out in Article 10(1) and (2), or in Article 10(3), as the case may be. Any Member State may provide that registration of a trade mark may not be refused on the ground that there is an earlier conflicting trade mark if the latter does not fulfil the requirements of use set out in Article 10(1) and (2) or in Article 10(3), as the case may be. Without prejudice to the application of Article 12, where a counter-claim for revocation is made, any Member State may provide that a trade mark may not be successfully invoked in infringement proceedings if it is established as a result of a plea that the trade mark could be revoked pursuant to Article 12(1). If the earlier trade mark has been used in relation to part only of the goods or services for which it is registered, it shall, for purposes of applying paragraphs 1, 2 and 3, be deemed to be registered in respect only of that part of the goods or services.

Article 12 Grounds for revocation 1. A trade mark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in the Member State in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. However, no person may claim that the proprietor’s rights in a trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application for revocation, genuine use of the trade mark has been started or resumed. The commencement or resumption of use within a period of three months preceding the filing of the application for revocation which began at the earliest on expiry of the continuous period of five years of non-use shall be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application for revocation may be filed.

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Appendix 2: Directive (EC) 2008/95 2. Without prejudice to paragraph 1, a trade mark shall be liable to revocation if, after the date on which it was registered: (a) in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered; (b) in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. Article 13 Grounds for refusal or revocation or invalidity relating to only some of the goods or services Where grounds for refusal of registration or for revocation or invalidity of a trade mark exist in respect of only some of the goods or services for which that trade mark has been applied for or registered, refusal of registration or revocation or invalidity shall cover those goods or services only. Article 14 Establishment a posteriori of invalidity or revocation of a trade mark Where the seniority of an earlier trade mark which has been surrendered or allowed to lapse is claimed for a Community trade mark, the invalidity or revocation of the earlier trade mark may be established a posteriori. Article 15 Special provisions in respect of collective marks, guarantee marks and certification marks 1. Without prejudice to Article 4, Member States whose laws authorise the registration of collective marks or of guarantee or certification marks may provide that such marks shall not be registered, or shall be revoked or declared invalid, on grounds additional to those specified in Articles 3 and 12 where the function of those marks so requires. 2. By way of derogation from Article 3(1)(c), Member States may provide that signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute collective, guarantee or certification marks. Such a mark does not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name. Article 16 Communication Member States shall communicate to the Commission the text of the main provisions of national law adopted in the field governed by this Directive. Article 17 Repeal Directive 89/104/EEC, as amended by the Decision listed in Annex I, Part A, is repealed, without prejudice to the obligations of the Member States relating to the time limit for transposition into national law of that Directive, set out in Annex I, Part B. References to the repealed Directive shall be construed as references to this Directive and shall be read in accordance with the correlation table in Annex II. Article 18 Entry into force This Directive shall enter into force on the 20th day following its publication in the Official Journal of the European Union.

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Appendix 2: Directive (EC) 2008/95 Article 19 Addressees This Directive is addressed to the Member States. Done at Strasbourg, 22 October 2008. For the European Parliament The President H.-G.PÖTTERING For the Council The President J.-P. JOUYET

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Council Regulation (EC) No 207/2009 OF 26 FEBRUA RY 2009 ON THE COMMU NIT Y TR A DE M A R K (CODIFIED V ER SION) (TE XT W ITH EE A R ELEVA NCE) THE COUNCIL OF THE EUROPEAN UNION, Having regard to the Treaty establishing the European Community, and in particular Article 308 thereof, Having regard to the proposal from the Commission, Having regard to the opinion of the European Parliament(1), Whereas: (1) Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (2) has been substantially amended several times (3). In the interests of clarity and rationality the said Regulation should be codified. (2) It is desirable to promote throughout the Community a harmonious development of economic activities and a continuous and balanced expansion by completing an internal market which functions properly and offers conditions which are similar to those obtaining in a national market. In order to create a market of this kind and make it increasingly a single market, not only must barriers to free movement of goods and services be removed and arrangements be instituted which ensure that competition is not distorted, but, in addition, legal conditions must be created which enable undertakings to adapt their activities to the scale of the Community, whether in manufacturing and distributing goods or in providing services. For those purposes, trade marks enabling the products and services of undertakings to be distinguished by identical means throughout the entire Community, regardless of frontiers, should feature amongst the legal instruments which undertakings have at their disposal. (3) For the purpose of pursuing the Community’s said objectives it would appear necessary to provide for Community arrangements for trade marks whereby undertakings can by means of one procedural system obtain Community trade marks to which uniform protection is given and which produce their effects throughout the entire area of the Community. The principle of the unitary character of the Community trade mark thus stated should apply unless otherwise provided for in this Regulation. (4) The barrier of territoriality of the rights conferred on proprietors of trade marks by the laws of the Member States cannot be removed by approximation of laws. In order to open up unrestricted economic activity in the whole of the internal market for the benefit of undertakings, trade marks should be created which are governed by a uniform Community law directly applicable in all Member States. (5) Since the Treaty has not provided the specific powers to establish such a legal instrument, Article 308 of the Treaty should be applied. (6) The Community law relating to trade marks nevertheless does not replace the laws of the Member States on trade marks. It would not in fact appear to be justified to require undertakings to apply for registration of their trade marks as Community trade marks. National trade marks continue to be necessary for those undertakings which do not want protection of their trade marks at Community level. (7) The rights in a Community trade mark should not be obtained otherwise than by registration, and registration should be refused in particular if the trade mark is not distinctive, if it is unlawful or if it conflicts with earlier rights.

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The protection afforded by a Community trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, should be absolute in the case of identity between the mark and the sign and the goods or services. The protection should apply also in cases of similarity between the mark and the sign and the goods or services. An interpretation should be given of the concept of similarity in relation to the likelihood of confusion. The likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection. It follows from the principle of free movement of goods that the proprietor of a Community trade mark must not be entitled to prohibit its use by a third party in relation to goods which have been put into circulation in the Community, under the trade mark, by him or with his consent, save where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods. There is no justification for protecting Community trade marks or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used. A Community trade mark is to be regarded as an object of property which exists separately from the undertakings whose goods or services are designated by it. Accordingly, it should be capable of being transferred, subject to the overriding need to prevent the public being misled as a result of the transfer. It should also be capable of being charged as security in favour of a third party and of being the subject matter of licences. Administrative measures are necessary at Community level for implementing in relation to every trade mark the trade mark law created by this Regulation. It is therefore essential, while retaining the Community’s existing institutional structure and balance of powers, to provide for an Office for Harmonisation in the Internal Market (trade marks and designs) which is independent in relation to technical matters and has legal, administrative and financial autonomy. To this end it is necessary and appropriate that that Office should be a body of the Community having legal personality and exercising the implementing powers which are conferred on it by this Regulation, and that it should operate within the framework of Community law without detracting from the competencies exercised by the Community institutions. It is necessary to ensure that parties who are affected by decisions made by the Office are protected by the law in a manner which is suited to the special character of trade mark law. To that end provision is made for an appeal to lie from decisions of the examiners and of the various divisions of the Office. If the department whose decision is contested does not rectify its decision it is to remit the appeal to a Board of Appeal of the Office, which is to decide on it. Decisions of the Boards of Appeal are, in turn, amenable to actions before the Court of Justice of the European Communities, which has jurisdiction to annul or to alter the contested decision. Under the first subparagraph of Article 225(1) of the EC Treaty the Court of First Instance of the European Communities has jurisdiction to hear and determine at first instance the actions referred to in particular in Article 230 of the EC Treaty with the exception of those assigned to a judicial panel and those reserved in the Statute to the Court of Justice. The jurisdiction which this Regulation confers on the Court of Justice to cancel and alter decisions of the Boards of Appeal should accordingly be exercised at first instance by the Court. In order to strengthen the protection of Community trade marks the Member States should designate, having regard to their own national system, as limited a number as possible of national courts of first and second instance having jurisdiction in matters of infringement and validity of Community trade marks. Decisions regarding the validity and infringement of Community trade marks must have effect and cover the entire area of the Community, as this is the only way of preventing inconsistent decisions on the part of the courts and the Office and of ensuring that the unitary character of Community trade marks is not undermined. The provisions of Council

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Appendix 3: Council Regulation (EC) 207/2009 Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (4) should apply to all actions at law relating to Community trade marks, save where this Regulation derogates from those rules. (17) Contradictory judgments should be avoided in actions which involve the same acts and the same parties and which are brought on the basis of a Community trade mark and parallel national trade marks. For this purpose, when the actions are brought in the same Member State, the way in which this is to be achieved is a matter for national procedural rules, which are not prejudiced by this Regulation, whilst when the actions are brought in different Member States, provisions modelled on the rules on lis pendens and related actions of Regulation (EC) No 44/2001 appear appropriate. (18) In order to guarantee the full autonomy and independence of the Office, it is considered necessary to grant it an autonomous budget whose revenue comes principally from fees paid by the users of the system. However, the Community budgetary procedure remains applicable as far as any subsidies chargeable to the general budget of the European Communities are concerned. Moreover, the auditing of accounts should be undertaken by the Court of Auditors. (19) Measures necessary for the implementation of this Regulation should be adopted, particularly as regards fees regulations and an Implementing Regulation, in accordance with Council Decision 1999/468/EC of 28 June 1999 laying down the procedures for the exercise of implementing powers conferred on the Commission(5), HAS ADOPTED THIS REGULATION:

Title I General Provisions Article 1 Community trade mark 1. A trade mark for goods or services which is registered in accordance with the conditions contained in this Regulation and in the manner herein provided is hereinafter referred to as a ‘Community trade mark’. 2. A Community trade mark shall have a unitary character. It shall have equal effect throughout the Community: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle shall apply unless otherwise provided in this Regulation. Article 2 Office An Office for Harmonisation in the Internal Market (trade marks and designs), hereinafter referred to as ‘the Office’, is hereby established. Article 3 Capacity to act For the purpose of implementing this Regulation, companies or firms and other legal bodies shall be regarded as legal persons if, under the terms of the law governing them, they have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued.

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Title II The Law Relating to Trade Marks SECTION 1 Definition of a community trade mark and obtaining a community trade mark Article 4 Signs of which a Community trade mark may consist A Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. Article 5 Persons who can be proprietors of Community trade marks Any natural or legal person, including authorities established under public law, may be the proprietor of a Community trade mark. Article 6 Means whereby a Community trade mark is obtained A Community trade mark shall be obtained by registration. Article 7 Absolute grounds for refusal 1. The following shall not be registered: (a) signs which do not conform to the requirements of Article 4; (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; (e) signs which consist exclusively of: (i) the shape which results from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; (iii) the shape which gives substantial value to the goods; (f) trade marks which are contrary to public policy or to accepted principles of morality; (g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service; (h) trade marks which have not been authorised by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the ‘Paris Convention’; (i) trade marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given; (j) trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin; (k) trade marks which contain or consist of a designation of origin or a geographical indication registered in accordance with Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and food-stuffs (6) when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of

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Appendix 3: Council Regulation (EC) 207/2009 filing with the Commission of the application for registration of the designation of origin or geographical indication. 2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. 3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. Article 8 Relative grounds for refusal 1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: (a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected; (b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. 2. For the purposes of paragraph 1, ‘earlier trade marks’ means: (a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks: (i) Community trade marks; (ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property; (iii) trade marks registered under international arrangements which have effect in a Member State; (iv) trade marks registered under international arrangements which have effect in the Community; (b) applications for the trade marks referred to in subparagraph (a), subject to their registration; (c) trade marks which, on the date of application for registration of the Community trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the Community trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention. 3. Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action. 4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign: (a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. 5. Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

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Appendix 3: Council Regulation (EC) 207/2009 SECTION 2 Effects of Community trade marks Article 9 Rights conferred by a Community trade mark 1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark. 2. The following, inter alia, may be prohibited under paragraph 1: (a) affi xing the sign to the goods or to the packaging thereof; (b) offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services there under; (c) importing or exporting the goods under that sign; (d) using the sign on business papers and in advertising. 3. The rights conferred by a Community trade mark shall prevail against third parties from the date of publication of registration of the trade mark. Reasonable compensation may, however, be claimed in respect of acts occurring after the date of publication of a Community trade mark application, which acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. The court seized of the case may not decide upon the merits of the case until the registration has been published. Article 10 Reproduction of Community trade marks in dictionaries If the reproduction of a Community trade mark in a dictionary, encyclopaedia or similar reference work gives the impression that it constitutes the generic name of the goods or services for which the trade mark is registered, the publisher of the work shall, at the request of the proprietor of the Community trade mark, ensure that the reproduction of the trade mark at the latest in the next edition of the publication is accompanied by an indication that it is a registered trade mark. Article 11 Prohibition on the use of a Community trade mark registered in the name of an agent or representative Where a Community trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor’s authorisation, the latter shall be entitled to oppose the use of his mark by his agent or representative if he has not authorised such use, unless the agent or representative justifies his action. Article 12 Limitation of the effects of a Community trade mark A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: (a) his own name or address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

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Appendix 3: Council Regulation (EC) 207/2009 (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he uses them in accordance with honest practices in industrial or commercial matters. Article 13 Exhaustion of the rights conferred by a Community trade mark 1. A Community trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. 2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market. Article 14 Complementary application of national law relating to infringement 1. The effects of Community trade marks shall be governed solely by the provisions of this Regulation. In other respects, infringement of a Community trade mark shall be governed by the national law relating to infringement of a national trade mark in accordance with the provisions of Title X. 2. This Regulation shall not prevent actions concerning a Community trade mark being brought under the law of Member States relating in particular to civil liability and unfair competition. 3. The rules of procedure to be applied shall be determined in accordance with the provisions of Title X. SECTION 3 Use of Community trade marks Article 15 Use of Community trade marks 1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non use. The following shall also constitute use within the meaning of the first subparagraph: (a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered; (b) affi xing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes. 2. Use of the Community trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. SECTION 4 Community trade marks as objects of property Article 16 Dealing with Community trade marks as national trade marks 1. Unless Articles 17 to 24 provide otherwise, a Community trade mark as an object of property shall be dealt with in its entirety, and for the whole area of the Community, as a national trade mark registered in the Member State in which, according to the Register of Community trade marks: (a) the proprietor has his seat or his domicile on the relevant date; (b) where point (a) does not apply, the proprietor has an establishment on the relevant date. 2. In cases which are not provided for by paragraph 1, the Member State referred to in that paragraph shall be the Member State in which the seat of the Office is situated. 3. If two or more persons are mentioned in the Register of Community trade marks as joint proprietors, paragraph 1 shall apply to the joint proprietor first mentioned; failing this, it shall

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Appendix 3: Council Regulation (EC) 207/2009 apply to the subsequent joint proprietors in the order in which they are mentioned. Where paragraph 1 does not apply to any of the joint proprietors, paragraph 2 shall apply.

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Article 17 Transfer A Community trade mark may be transferred, separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered. A transfer of the whole of the undertaking shall include the transfer of the Community trade mark except where, in accordance with the law governing the transfer, there is agreement to the contrary or circumstances clearly dictate otherwise. This provision shall apply to the contractual obligation to transfer the undertaking. Without prejudice to paragraph 2, an assignment of the Community trade mark shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment; otherwise it shall be void. Where it is clear from the transfer documents that because of the transfer the Community trade mark is likely to mislead the public concerning the nature, quality or geographical origin of the goods or services in respect of which it is registered, the Office shall not register the transfer unless the successor agrees to limit registration of the Community trade mark to goods or services in respect of which it is not likely to mislead. On request of one of the parties a transfer shall be entered in the Register and published. As long as the transfer has not been entered in the Register, the successor in title may not invoke the rights arising from the registration of the Community trade mark. Where there are time limits to be observed vis-à-vis the Office, the successor in title may make the corresponding statements to the Office once the request for registration of the transfer has been received by the Office. All documents which require notification to the proprietor of the Community trade mark in accordance with Article 79 shall be addressed to the person registered as proprietor.

Article 18 Transfer of a trade mark registered in the name of an agent Where a Community trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor’s authorisation, the latter shall be entitled to demand the assignment in his favour of the said registration, unless such agent or representative justifies his action. Article 19 Rights in rem 1. A Community trade mark may, independently of the undertaking, be given as security or be the subject of rights in rem. 2. On request of one of the parties, rights mentioned in paragraph 1 shall be entered in the Register and published. Article 20 Levy of execution 1. A Community trade mark may be levied in execution. 2. As regards the procedure for levy of execution in respect of a Community trade mark, the courts and authorities of the Member States determined in accordance with Article 16 shall have exclusive jurisdiction. 3. On request of one the parties, levy of execution shall be entered in the Register and published. Article 21 Insolvency proceedings 1. The only insolvency proceedings in which a Community trade mark may be involved are those opened in the Member State in the territory of which the debtor has his centre of main interests.

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Appendix 3: Council Regulation (EC) 207/2009 However, where the debtor is an insurance undertaking or a credit institution as defined in Directive 2001/17/EC of the European Parliament and of the Council of 19 March 2001 on the reorganisation and winding-up of insurance undertakings (7) and Directive 2001/24/EC of the European Parliament and of the Council of 4 April 2001 on the reorganisation and winding up of credit institutions (8), respectively, the only insolvency proceedings in which a Community trade mark may be involved are those opened in the Member State where that undertaking or institution has been authorised. 2. In the case of joint proprietorship of a Community trade mark, paragraph 1 shall apply to the share of the joint proprietor. 3. Where a Community trade mark is involved in insolvency proceedings, on request of the competent national authority an entry to this effect shall be made in the Register and published in the Community Trade Marks Bulletin referred to in Article 89.

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Article 22 Licensing A Community trade mark may be licensed for some or all of the goods or services for which it is registered and for the whole or part of the Community. A licence may be exclusive or non-exclusive. The proprietor of a Community trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in his licensing contract with regard to: (a) its duration; (b) the form covered by the registration in which the trade mark may be used; (c) the scope of the goods or services for which the licence is granted; (d) the territory in which the trade mark may be affi xed; or (e) the quality of the goods manufactured or of the services provided by the licensee. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a Community trade mark only if its proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor of the trade mark, after formal notice, does not himself bring infringement proceedings within an appropriate period. A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in infringement proceedings brought by the proprietor of the Community trade mark. On request of one of the parties the grant or transfer of a licence in respect of a Community trade mark shall be entered in the Register and published. Article 23 Effects vis-à-vis third parties Legal acts referred to in Articles 17, 19 and 22 concerning a Community trade mark shall have effects vis-à-vis third parties in all the Member States only after entry in the Register. Nevertheless, such an act, before it is so entered, shall have effect vis-à-vis third parties who have acquired rights in the trade mark after the date of that act but who knew of the act at the date on which the rights were acquired. Paragraph 1 shall not apply in the case of a person who acquires the Community trade mark or a right concerning the Community trade mark by way of transfer of the whole of the undertaking or by any other universal succession. The effects vis-à-vis third parties of the legal acts referred to in Article 20 shall be governed by the law of the Member State determined in accordance with Article 16. Until such time as common rules for the Member States in the field of bankruptcy enter into force, the effects vis-à-vis third parties of bankruptcy or like proceedings shall be governed by the law of the Member State in which such proceedings are first brought within the meaning of national law or of conventions applicable in this field.

Article 24 The application for a Community trade mark as an object of property Articles 16 to 23 shall apply to applications for Community trade marks.

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Title III Application for Community Trade Marks

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SECTION 1 Filing of applications and the conditions which govern them Article 25 Filing of applications An application for a Community trade mark shall be filed, at the choice of the applicant: (a) at the Office; (b) at the central industrial property office of a Member State or at the Benelux Office for Intellectual Property. An application filed in this way shall have the same effect as if it had been filed on the same date at the Office. Where the application is filed at the central industrial property office of a Member State or at the Benelux Office for Intellectual Property, that office shall take all steps to forward the application to the Office within two weeks after filing. It may charge the applicant a fee which shall not exceed the administrative costs of receiving and forwarding the application. Applications referred to in paragraph 2 which reach the Office more than two months after filing shall be deemed to have been filed on the date on which the application reached the Office. Ten years after the entry into force of Regulation (EC) No 40/94, the Commission shall draw up a report on the operation of the system of filing applications for Community trade marks, together with any proposals for modifying this system.

Article 26 Conditions with which applications must comply 1. An application for a Community trade mark shall contain: (a) a request for the registration of a Community trade mark; (b) information identifying the applicant; (c) a list of the goods or services in respect of which the registration is requested; (d) a representation of the trade mark. 2. The application for a Community trade mark shall be subject to the payment of the application fee and, when appropriate, of one or more class fees. 3. An application for a Community trade mark must comply with the conditions laid down in the Implementing Regulation referred to in Article 162(1), hereinafter referred to as the ‘Implementing Regulation’. Article 27 Date of fi ling The date of filing of a Community trade mark application shall be the date on which documents containing the information specified in Article 26(1) are filed with the Office by the applicant or, if the application has been filed with the central office of a Member State or with the Benelux Office for Intellectual Property, with that office, subject to payment of the application fee within a period of one month of filing the abovementioned documents. Article 28 Classification Goods and services in respect of which Community trade marks are applied for shall be classified in conformity with the system of classification specified in the Implementing Regulation. SECTION 2 Priority Article 29 Right of priority 1. A person who has duly filed an application for a trade mark in or in respect of any State party to the Paris Convention or to the Agreement establishing the World Trade Organisation, or his successors in title, shall enjoy, for the purpose of filing a Community trade mark application

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for the same trade mark in respect of goods or services which are identical with or contained within those for which the application has been filed, a right of priority during a period of six months from the date of filing of the first application. Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements shall be recognised as giving rise to a right of priority. By a regular national filing is meant any filing that is sufficient to establish the date on which the application was filed, whatever may be the outcome of the application. A subsequent application for a trade mark which was the subject of a previous first application in respect of the same goods or services and which is filed in or in respect of the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing of the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority. If the first fi ling has been made in a State which is not a party to the Paris Convention or to the Agreement establishing the World Trade Organisation, paragraphs 1 to 4 shall apply only in so far as that State, according to published findings, grants, on the basis of the first filing made at the Office and subject to conditions equivalent to those laid down in this Regulation, a right of priority having equivalent effect.

Article 30 Claiming priority An applicant desiring to take advantage of the priority of a previous application shall file a declaration of priority and a copy of the previous application. If the language of the latter is not one of the languages of the Office, the applicant shall file a translation of the previous application in one of those languages. Article 31 Effect of priority right The right of priority shall have the effect that the date of priority shall count as the date of filing of the Community trade mark application for the purposes of establishing which rights take precedence. Article 32 Equivalence of Community fi ling with national fi ling A Community trade mark application which has been accorded a date of filing shall, in the Member States, be equivalent to a regular national filing, where appropriate with the priority claimed for the Community trade mark application. SECTION 3 Exhibition priority Article 33 Exhibition priority 1. If an applicant for a Community trade mark has displayed goods or services under the mark applied for, at an official or officially recognised international exhibition falling within the terms of the Convention on International Exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972, he may, if he files the application within a period of six months from the date of the first display of the goods or services under the mark applied for, claim a right of priority from that date within the meaning of Article 31. 2. An applicant who wishes to claim priority pursuant to paragraph 1 must file evidence of the display of goods or services under the mark applied for under the conditions laid down in the Implementing Regulation. 3. An exhibition priority granted in a Member State or in a third country does not extend the period of priority laid down in Article 29.

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Appendix 3: Council Regulation (EC) 207/2009 SECTION 4 Claiming the seniority of a national trade mark Article 34 Claiming the seniority of a national trade mark 1. The proprietor of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, who applies for an identical trade mark for registration as a Community trade mark for goods or services which are identical with or contained within those for which the earlier trade mark has been registered, may claim for the Community trade mark the seniority of the earlier trade mark in respect of the Member State in or for which it is registered. 2. Seniority shall have the sole effect under this Regulation that, where the proprietor of the Community trade mark surrenders the earlier trade mark or allows it to lapse, he shall be deemed to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered. 3. The seniority claimed for the Community trade mark shall lapse if the earlier trade mark the seniority of which is claimed is declared to have been revoked or to be invalid or if it is surrendered prior to the registration of the Community trade mark. Article 35 Claiming seniority after registration of the Community trade mark 1. The proprietor of a Community trade mark who is the proprietor of an earlier identical trade mark registered in a Member State, including a trade mark registered in the Benelux countries or of an earlier identical trade mark, with an international registration effective in a Member State, for goods or services which are identical to those for which the earlier trade mark has been registered, or contained within them, may claim the seniority of the earlier trade mark in respect of the Member State in or for which it was registered. 2. Article 34(2) and (3) shall apply.

Title IV Registration Procedure

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SECTION 1 Examination of applications Article 36 Examination of the conditions of filing The Office shall examine whether: (a) the Community trade mark application satisfies the requirements for the accordance of a date of filing in accordance with Article 27; (b) the Community trade mark application complies with the conditions laid down in this Regulation and with the conditions laid down in the Implementing Regulation; (c) where appropriate, the class fees have been paid within the prescribed period. Where the Community trade mark application does not satisfy the requirements referred to in paragraph 1, the Office shall request the applicant to remedy the deficiencies or the default on payment within the prescribed period. If the deficiencies or the default on payment established pursuant to paragraph 1(a) are not remedied within this period, the application shall not be dealt with as a Community trade mark application. If the applicant complies with the Office’s request, the Office shall accord as the date of filing of the application the date on which the deficiencies or the default on payment established are remedied. If the deficiencies established pursuant to paragraph 1(b) are not remedied within the prescribed period, the Office shall refuse the application. If the default on payment established pursuant to paragraph 1(c) is not remedied within the prescribed period, the application shall be deemed to be withdrawn unless it is clear which categories of goods or services the amount paid is intended to cover.

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Appendix 3: Council Regulation (EC) 207/2009 6. Failure to satisfy the requirements concerning the claim to priority shall result in loss of the right of priority for the application. 7. Failure to satisfy the requirements concerning the claiming of seniority of a national trade mark shall result in loss of that right for the application. Article 37 Examination as to absolute grounds for refusal 1. Where, under Article 7, a trade mark is ineligible for registration in respect of some or all of the goods or services covered by the Community trade mark application, the application shall be refused as regards those goods or services. 2. Where the trade mark contains an element which is not distinctive, and where the inclusion of that element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, the Office may request, as a condition for registration of said trade mark, that the applicant state that he disclaims any exclusive right to such element. Any disclaimer shall be published together with the application or the registration of the Community trade mark, as the case may be. 3. The application shall not be refused before the applicant has been allowed the opportunity of withdrawing or amending the application or of submitting his observations.

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SECTION 2 Search Article 38 Search Once the Office has accorded a date of filing, it shall draw up a Community search report citing those earlier Community trade marks or Community trade mark applications discovered which may be invoked under Article 8 against the registration of the Community trade mark applied for. Where, at the time of filing a Community trade mark application, the applicant requests that a search report also be prepared by the central industrial property offices of the Member States and where the appropriate search fee has been paid within the time limit for the payment of the filing fee, the Office shall, as soon as a Community trade mark application has been accorded a date of filing, transmit a copy thereof to the central industrial property office of each Member State which has informed the Office of its decision to operate a search in its own register of trade marks in respect of Community trade mark applications. Each of the central industrial property offices referred to in paragraph 2 shall communicate to the Office within two months as from the date on which it received the Community trade mark application a search report which shall either cite those earlier national trade marks or trade mark applications discovered which may be invoked under Article 8 against the registration of the Community trade mark applied for, or state that the search has revealed no such rights. The search reports referred to in paragraph 3 shall be prepared on a standard form drawn up by the Office, after consulting the Administrative Board provided for in Article 126(1), hereinafter referred to as ‘the Administrative Board’. The essential contents of this form shall be set out in the Implementing Regulation. An amount shall be paid by the Office to each central industrial property office for each search report provided by that office in accordance with paragraph 3. The amount, which shall be the same for each office, shall be fi xed by the Budget Committee by means of a decision adopted by a majority of three-quarters of the representatives of the Member States. The Office shall transmit without delay to the applicant for the Community trade mark the Community search report and any requested national search reports received within the time limit laid down in paragraph 3. Upon publication of the Community trade mark application, which may not take place before the expiry of a period of one month as from the date on which the Office transmits the search reports to the applicant, the Office shall inform the proprietors of any earlier Community trade marks or Community trade mark applications cited in the Community search report of the publication of the Community trade mark application.

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Appendix 3: Council Regulation (EC) 207/2009 SECTION 3 Publication of the application Article 39 Publication of the application 1. If the conditions which the application for a Community trade mark must satisfy have been fulfilled and if the period referred to in Article 38(7) has expired, the application shall be published to the extent that it has not been refused pursuant to Article 37. 2. Where, after publication, the application is refused under Article 37, the decision that it has been refused shall be published upon becoming final. SECTION 4 Observations by third parties and opposition Article 40 Observations by third parties 1. Following the publication of the Community trade mark application, any natural or legal person and any group or body representing manufacturers, producers, suppliers of services, traders or consumers may submit to the Office written observations, explaining on which grounds under Article 7, in particular, the trade mark shall not be registered ex officio. They shall not be parties to the proceedings before the Office. 2. The observations referred to in paragraph 1 shall be communicated to the applicant who may comment on them. Article 41 Opposition 1. Within a period of three months following the publication of a Community trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8: (a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (5); (b) by the proprietors of trade marks referred to in Article 8(3); (c) by the proprietors of earlier marks or signs referred to in Article 8(4) and by persons authorised under the relevant national law to exercise these rights. 2. Notice of opposition to registration of the trade mark may also be given, subject to the conditions laid down in paragraph 1, in the event of the publication of an amended application in accordance with the second sentence of Article 43(2). 3. Opposition must be expressed in writing and must specify the grounds on which it is made. It shall not be treated as duly entered until the opposition fee has been paid. Within a period fi xed by the Office, the opponent may submit in support of his case facts, evidence and arguments. Article 42 Examination of opposition 1. In the examination of the opposition the Office shall invite the parties, as often as necessary, to file observations, within a period set them by the Office, on communications from the other parties or issued by itself. 2. If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation

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to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community. The Office may, if it thinks fit, invite the parties to make a friendly settlement. If examination of the opposition reveals that the trade mark may not be registered in respect of some or all of the goods or services for which the Community trade mark application has been made, the application shall be refused in respect of those goods or services. Otherwise the opposition shall be rejected. The decision refusing the application shall be published upon becoming final.

SECTION 5 Withdrawal, restriction, amendment and division of the application Article 43 Withdrawal, restriction and amendment of the application 1. The applicant may at any time withdraw his Community trade mark application or restrict the list of goods or services contained therein. Where the application has already been published, the withdrawal or restriction shall also be published. 2. In other respects, a Community trade mark application may be amended, upon request of the applicant, only by correcting the name and address of the applicant, errors of wording or of copying, or obvious mistakes, provided that such correction does not substantially change the trade mark or extend the list of goods or services. Where the amendments affect the representation of the trade mark or the list of goods or services and are made after publication of the application, the trade mark application shall be published as amended.

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Article 44 Division of the application The applicant may divide the application by declaring that some of the goods or services included in the original application will be the subject of one or more divisional applications. The goods or services in the divisional application shall not overlap with the goods or services which remain in the original application or those which are included in other divisional applications. The declaration of division shall not be admissible: (a) if, where an opposition has been entered against the original application, such a divisional application has the effect of introducing a division amongst the goods or services against which the opposition has been directed, until the decision of the Opposition Division has become final or the opposition proceedings are finally terminated otherwise; (b) during the periods laid down in the Implementing Regulation. The declaration of division must comply with the provisions set out in the Implementing Regulation. The declaration of division shall be subject to a fee. The declaration shall be deemed not to have been made until the fee has been paid. The division shall take effect on the date on which it is recorded in the files kept by the Office concerning the original application. All requests and applications submitted and all fees paid with regard to the original application prior to the date on which the Office receives the declaration of division are deemed also to have been submitted or paid with regard to the divisional application or applications. The fees for the original application which have been duly paid prior to the date on which the declaration of division is received shall not be refunded. The divisional application shall preserve the filing date and any priority date and seniority date of the original application.

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Appendix 3: Council Regulation (EC) 207/2009 SECTION 6 Registration Article 45 Registration Where an application meets the requirements of this Regulation and where no notice of opposition has been given within the period referred to in Article 41(1) or where opposition has been rejected by a definitive decision, the trade mark shall be registered as a Community trade mark, provided that the registration fee has been paid within the period prescribed. If the fee is not paid within this period the application shall be deemed to be withdrawn.

Title V Duration, Renewal, Alteration and Division of Community Trade Marks Article 46 Duration of registration Community trade marks shall be registered for a period of 10 years from the date of filing of the application. Registration may be renewed in accordance with Article 47 for further periods of 10 years.

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Article 47 Renewal Registration of the Community trade mark shall be renewed at the request of the proprietor of the trade mark or any person expressly authorised by him, provided that the fees have been paid. The Office shall inform the proprietor of the Community trade mark, and any person having a registered right in respect of the Community trade mark, of the expiry of the registration in good time before the said expiry. Failure to give such information shall not involve the responsibility of the Office. The request for renewal shall be submitted within a period of six months ending on the last day of the month in which protection ends. The fees shall also be paid within this period. Failing this, the request may be submitted and the fees paid with in a further period of six months following the day referred to in the first sentence, provided that an additional fee is paid within this further period. Where the request is submitted or the fees paid in respect of only some of the goods or services for which the Community trade mark is registered, registration shall be renewed for those goods or services only. Renewal shall take effect from the day following the date on which the existing registration expires. The renewal shall be registered.

Article 48 Alteration 1. The Community trade mark shall not be altered in the Register during the period of registration or on renewal thereof. 2. Nevertheless, where the Community trade mark includes the name and address of the proprietor, any alteration thereof not substantially affecting the identity of the trade mark as originally registered may be registered at the request of the proprietor. 3. The publication of the registration of the alteration shall contain a representation of the Community trade mark as altered. Third parties whose rights may be affected by the alteration may challenge the registration thereof within a period of three months following publication. Article 49 Division of the registration 1. The proprietor of the Community trade mark may divide the registration by declaring that some of the goods or services included in the original registration will be the subject of one

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or more divisional registrations. The goods or services in the divisional registration shall not overlap with the goods or services which remain in the original registration or those which are included in other divisional registrations. The declaration of division shall not be admissible: (a) if, where an application for revocation of rights or for a declaration of invalidity has been entered at the Office against the original registration, such a divisional declaration has the effect of introducing a division amongst the goods or services against which the application for revocation of rights or for a declaration of invalidity is directed, until the decision of the Cancellation Division has become final or the proceedings are finally terminated otherwise; (b) if, where a counterclaim for revocation or for a declaration of invalidity has been entered in a case before a Community trade mark court, such a divisional declaration has the effect of introducing a division amongst the goods or services against which the counterclaim is directed, until the mention of the Community trade mark court’s judgment is recorded in the Register pursuant to Article 100(6). The declaration of division must comply with the provisions set out in the Implementing Regulation. The declaration of division shall be subject to a fee. The declaration shall be deemed not to have been made until the fee has been paid. The division shall take effect on the date on which it is entered in the Register. All requests and applications submitted and all fees paid with regard to the original registration prior to the date on which the Office receives the declaration of division shall be deemed also to have been submitted or paid with regard to the divisional registration or registrations. The fees for the original registration which have been duly paid prior to the date on which the declaration of division is received shall not be refunded. The divisional registration shall preserve the filing date and any priority date and seniority date of the original registration.

Title VI Surrender, Revocation and Invalidity SECTION 1 Surrender Article 50 Surrender 1. A Community trade mark may be surrendered in respect of some or all of the goods or services for which it is registered. 2. The surrender shall be declared to the Office in writing by the proprietor of the trade mark. It shall not have effect until it has been entered in the Register. 3. Surrender shall be entered only with the agreement of the proprietor of a right entered in the Register. If a licence has been registered, surrender shall be entered in the Register only if the proprietor of the trade mark proves that he has informed the licensee of his intention to surrender; this entry shall be made on expiry of the period prescribed by the Implementing Regulation. SECTION 2 Grounds for revocation Article 51 Grounds for revocation 1. The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is

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Appendix 3: Council Regulation (EC) 207/2009 registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor’s rights in a Community trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed; (b) if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered; (c) if, in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. 2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only. SECTION 3 Grounds for invalidity Article 52 Absolute grounds for invalidity 1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) where the Community trade mark has been registered contrary to the provisions of Article 7; (b) where the applicant was acting in bad faith when he filed the application for the trade mark. 2. Where the Community trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. 3. Where the ground for invalidity exists in respect of only some of the goods or services for which the Community trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only. Article 53 Relative grounds for invalidity 1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or paragraph 5 of that Article are fulfilled; (b) where there is a trade mark as referred to in Article 8(3) and the conditions set out in that paragraph are fulfilled; (c) where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled. 2. A Community trade mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Community legislation or national law governing its protection, and in particular: (a) a right to a name; (b) a right of personal portrayal;

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Appendix 3: Council Regulation (EC) 207/2009 (c) a copyright; (d) an industrial property right. 3. A Community trade mark may not be declared invalid where the proprietor of a right referred to in paragraphs 1 or 2 consents expressly to the registration of the Community trade mark before submission of the application for a declaration of invalidity or the counterclaim. 4. Where the proprietor of one of the rights referred to in paragraphs 1 or 2 has previously applied for a declaration that a Community trade mark is invalid or made a counterclaim in infringement proceedings, he may not submit a new application for a declaration of invalidity or lodge a counterclaim on the basis of another of the said rights which he could have invoked in support of his first application or counterclaim. 5. Article 52(3) shall apply. Article 54 Limitation in consequence of acquiescence 1. Where the proprietor of a Community trade mark has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Community while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith. 2. Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith. 3. In the cases referred to in paragraphs 1 and 2, the proprietor of a later Community trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later Community trade mark. SECTION 4 Consequences of revocation and invalidity Article 55 Consequences of revocation and invalidity 1. The Community trade mark shall be deemed not to have had, as from the date of the application for revocation or of the counterclaim, the effects specified in this Regulation, to the extent that the rights of the proprietor have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be fi xed in the decision at the request of one of the parties. 2. The Community trade mark shall be deemed not to have had, as from the outset, the effects specified in this Regulation, to the extent that the trade mark has been declared invalid. 3. Subject to the national provisions relating either to claims for compensation for damage caused by negligence or lack of good faith on the part of the proprietor of the trade mark, or to unjust enrichment, the retroactive effect of revocation or invalidity of the trade mark shall not affect: (a) any decision on infringement which has acquired the authority of a final decision and been enforced prior to the revocation or invalidity decision; (b) any contract concluded prior to the revocation or invalidity decision, in so far as it has been performed before that decision; however, repayment, to an extent justified by the circumstances, of sums paid under the relevant contract, may be claimed on grounds of equity.

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Appendix 3: Council Regulation (EC) 207/2009 SECTION 5 Proceedings in the Office in relation to revocation or invalidity Article 56 Application for revocation or for a declaration of invalidity 1. An application for revocation of the rights of the proprietor of a Community trade mark or for a declaration that the trade mark is invalid may be submitted to the Office: (a) where Articles 51 and 52 apply, by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which under the terms of the law governing it has the capacity in its own name to sue and be sued; (b) where Article 53(1) applies, by the persons referred to in Article 41(1); (c) where Article 53(2) applies, by the owners of the earlier rights referred to in that provision or by the persons who are entitled under the law of the Member State concerned to exercise the rights in question. 2. The application shall be filed in a written reasoned statement. It shall not be deemed to have been filed until the fee has been paid. 3. An application for revocation or for a declaration of invalidity shall be inadmissible if an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on by a court in a Member State and has acquired the authority of a final decision.

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Article 57 Examination of the application On the examination of the application for revocation of rights or for a declaration of invalidity, the Office shall invite the parties, as often as necessary, to file observations, within a period to be fi xed by the Office, on communications from the other parties or issued by itself. If the proprietor of the Community trade mark so requests, the proprietor of an earlier Community trade mark, being a party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his application, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. If, at the date on which the Community trade mark application was published, the earlier Community trade mark had been registered for not less than five years, the proprietor of the earlier Community trade mark shall furnish proof that, in addition, the conditions contained in Article 42(2) were satisfied at that date. In the absence of proof to this effect the application for a declaration of invalidity shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered, it shall, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect only of that part of the goods or services. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community. The Office may, if it thinks fit, invite the parties to make a friendly settlement. If the examination of the application for revocation of rights or for a declaration of invalidity reveals that the trade mark should not have been registered in respect of some or all of the goods or services for which it is registered, the rights of the proprietor of the Community trade mark shall be revoked or it shall be declared invalid in respect of those goods or services. Otherwise the application for revocation of rights or for a declaration of invalidity shall be rejected. A record of the Office’s decision on the application for revocation of rights or for a declaration of invalidity shall be entered in the Register once it has become final.

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Title VII Appeals Article 58 Decisions subject to appeal 1. An appeal shall lie from decisions of the examiners, Opposition Divisions, Administration of Trade Marks and Legal Divisions and Cancellation Divisions. It shall have suspensive effect. 2. A decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows separate appeal. Article 59 Persons entitled to appeal and to be parties to appeal proceedings Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right. Article 60 Time limit and form of appeal Notice of appeal must be filed in writing at the Office within two months after the date of notification of the decision appealed from. The notice shall be deemed to have been filed only when the fee for appeal has been paid. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed. Article 61 Revision of decisions in ex parte cases 1. If the party which has lodged the appeal is the sole party to the procedure, and if the department whose decision is contested considers the appeal to be admissible and well founded, the department shall rectify its decision. 2. If the decision is not rectified within one month after receipt of the statement of grounds, the appeal shall be remitted to the Board of Appeal without delay, and without comment as to its merit.

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Article 62 Revision of decisions in inter parties cases Where the party which has lodged the appeal is opposed by another party and if the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision. The decision may be rectified only if the department whose decision is contested notifies the other party of its intention to rectify it, and that party accepts it within two months of the date on which it received the notification. If, within two months of receiving the notification referred to in paragraph 2, the other party does not accept that the contested decision is to be rectified and makes a declaration to that effect or does not make any declaration within the period laid down, the appeal shall be remitted to the Board of Appeal without delay, and without comment as to its merit. However, if the department whose decision is contested does not consider the appeal to be admissible and well founded within one month after receipt of the statement of grounds, it shall, instead of taking the measures provided for in paragraphs 2 and 3, remit the appeal to the Board of Appeal without delay, and without comment as to its merit.

Article 63 Examination of appeals 1. If the appeal is admissible, the Board of Appeal shall examine whether the appeal is allowable. 2. In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be fi xed by the Board of Appeal, on communications from the other parties or issued by itself.

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Appendix 3: Council Regulation (EC) 207/2009 Article 64 Decisions in respect of appeals 1. Following the examination as to the allow ability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. 2. If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same. 3. The decisions of the Boards of Appeal shall take effect only as from the date of expiration of the period referred to in Article 65(5) or, if an action has been brought before the Court of Justice within that period, as from the date of dismissal of such action.

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Article 65 Actions before the Court of Justice Actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals. The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power. The Court of Justice has jurisdiction to annul or to alter the contested decision. The action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision. The action shall be brought before the Court of Justice within two months of the date of notification of the decision of the Board of Appeal. The Office shall be required to take the necessary measures to comply with the judgment of the Court of Justice.

Title VIII Community Collective Marks Article 66 Community collective marks 1. A Community collective mark shall be a Community trade mark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. Associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued, as well as legal persons governed by public law, may apply for Community collective marks. 2. In derogation from Article 7(1)(c), signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks within the meaning of paragraph 1. A collective mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name. 3. The provisions of this Regulation shall apply to Community collective marks, unless Articles 67 to 74 provide otherwise. Article 67 Regulations governing use of the mark 1. An applicant for a Community collective mark must submit regulations governing its use within the period prescribed.

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Appendix 3: Council Regulation (EC) 207/2009 2. The regulations governing use shall specify the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including sanctions. The regulations governing use of a mark referred to in Article 66(2) must authorise any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark. Article 68 Refusal of the application 1. In addition to the grounds for refusal of a Community trade mark application provided for in Articles 36 and 37, an application for a Community collective mark shall be refused where the provisions of Articles 66 or 67 are not satisfied, or where the regulations governing use are contrary to public policy or to accepted principles of morality. 2. An application for a Community collective mark shall also be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a collective mark. 3. An application shall not be refused if the applicant, as a result of amendment of the regulations governing use, meets the requirements of paragraphs 1 and 2. Article 69 Observations by third parties Apart from the cases mentioned in Article 40, any person, group or body referred to in that Article may submit to the Office written observations based on the particular grounds on which the application for a Community collective mark should be refused under the terms of Article 68. Article 70 Use of marks Use of a Community collective mark by any person who has authority to use it shall satisfy the requirements of this Regulation, provided that the other conditions which this Regulation imposes with regard to the use of Community trade marks are fulfilled.

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Article 71 Amendment of the regulations governing use of the mark The proprietor of a Community collective mark must submit to the Office any amended regulations governing use. The amendment shall not be mentioned in the Register if the amended regulations do not satisfy the requirements of Article 67 or involve one of the grounds for refusal referred to in Article 68. Article 69 shall apply to amended regulations governing use. For the purposes of applying this Regulation, amendments to the regulations governing use shall take effect only from the date of entry of the mention of the amendment in the Register.

Article 72 Persons who are entitled to bring an action for infringement 1. The provisions of Article 22(3) and (4) concerning the rights of licensees shall apply to every person who has authority to use a Community collective mark. 2. The proprietor of a Community collective mark shall be entitled to claim compensation on behalf of persons who have authority to use the mark where they have sustained damage in consequence of unauthorised use of the mark. Article 73 Grounds for revocation Apart from the grounds for revocation provided for in Article 51, the rights of the proprietor of a Community collective mark shall be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings, if: (a) the proprietor does not take reasonable steps to prevent the mark being used in a manner incompatible with the conditions of use, where these exist, laid down in the regulations

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Title IX Procedure SECTION 1 General provisions Article 75 Statement of reasons on which decisions are based Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments. Article 76 Examination of the facts by the Office of its own motion 1. In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. 2. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned. Article 77 Oral proceedings 1. If the Office considers that oral proceedings would be expedient they shall be held either at the instance of the Office or at the request of any party to the proceedings. 2. Oral proceedings before the examiners, the Opposition Division and the Administration of Trade Marks and Legal Division shall not be public. 3. Oral proceedings, including delivery of the decision, shall be public before the Cancellation Division and the Boards of Appeal, in so far as the department before which the proceedings are taking place does not decide otherwise in cases where admission of the public could have serious and unjustified disadvantages, in particular for a party to the proceedings. Article 78 Taking of evidence 1. In any proceedings before the Office, the means of giving or obtaining evidence shall include the following: (a) hearing the parties; (b) requests for information; (c) the production of documents and items of evidence;

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Appendix 3: Council Regulation (EC) 207/2009 (d) hearing witnesses; (e) opinions by experts; (f) statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up. 2. The relevant department may commission one of its members to examine the evidence adduced. 3. If the Office considers it necessary for a party, witness or expert to give evidence orally, it shall issue a summons to the person concerned to appear before it. 4. The parties shall be informed of the hearing of a witness or expert before the Office. They shall have the right to be present and to put questions to the witness or expert. Article 79 Notification The Office shall, as a matter of course, notify those concerned of decisions and summonses and of any notice or other communication from which a time limit is reckoned, or of which those concerned must be notified under other provisions of this Regulation or of the Implementing Regulation, or of which notification has been ordered by the President of the Office. Article 80 Revocation of decisions 1. Where the Office has made an entry in the Register or taken a decision which contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked. Where there is only one party to the proceedings and the entry or the act affects its rights, cancellation or revocation shall be determined even if the error was not evident to the party. 2. Cancellation or revocation as referred to in paragraph 1 shall be determined, ex officio or at the request of one of the parties to the proceedings, by the department which made the entry or took the decision. Cancellation or revocation shall be determined within six months from the date on which the entry was made in the Register or the decision was taken, after consultation with the parties to the proceedings and any proprietor of rights to the Community trade mark in question that are entered in the Register. 3. This Article shall be without prejudice to the right of the parties to submit an appeal under Articles 58 and 65, or to the possibility, under the procedures and conditions laid down by the Implementing Regulation, of correcting any linguistic errors or errors of transcription and obvious errors in the Office’s decisions or errors attributable to the Office in registering the trade mark or in publishing its registration.

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Article 81 Restitutio in integrum The applicant for or proprietor of a Community trade mark or any other party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time limit vis-à-vis the Office shall, upon application, have his rights re-established if the obstacle to compliance has the direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any right or means of redress. The application must be filed in writing within two months from the removal of the obstacle to compliance with the time limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time limit. In the case of non-submission of the request for renewal of registration or of non-payment of a renewal fee, the further period of six months provided in Article 47(3), third sentence, shall be deducted from the period of one year. The application must state the grounds on which it is based and must set out the facts on which it relies. It shall not be deemed to be filed until the fee for re-establishment of rights has been paid. The department competent to decide on the omitted act shall decide upon the application.

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Appendix 3: Council Regulation (EC) 207/2009 5. This Article shall not be applicable to the time limits referred to in paragraph 2 of this Article, Article 41(1) and (3) and Article 82. 6. Where the applicant for or proprietor of a Community trade mark has his rights re-established, he may not invoke his rights vis-à-vis a third party who, in good faith, has put goods on the market or supplied services under a sign which is identical with, or similar to, the Community trade mark in the course of the period between the loss of rights in the application or in the Community trade mark and publication of the mention of re-establishment of those rights. 7. A third party who may avail himself of the provisions of paragraph 6 may bring third party proceedings against the decision re-establishing the rights of the applicant for or proprietor of a Community trade mark within a period of two months as from the date of publication of the mention of re-establishment of those rights. 8. Nothing in this Article shall limit the right of a Member State to grant restitutio in integrum in respect of time limits provided for in this Regulation and to be observed vis-à-vis the authorities of such State.

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Article 82 Continuation of proceedings An applicant for or proprietor of a Community trade mark or any other party to proceedings before the Office who has omitted to observe a time limit vis-à-vis the Office may, upon request, obtain the continuation of proceedings, provided that at the time the request is made the omitted act has been carried out. The request for continuation of proceedings shall be admissible only if it is presented within two months following the expiry of the unobserved time limit. The request shall not be deemed to have been filed until the fee for continuation of the proceedings has been paid. This Article shall not be applicable to the time limits laid down in Article 25(3), Article 27, Article 29(1), Article 33(1), Article 36(2), Article 41, Article 42, Article 47(3), Article 60, Article 62, Article 65(5), Article 81, Article 112, or to the time limits laid down in this Article or the time limits laid down by the Implementing Regulation for claiming, after the application has been filed, priority within the meaning of Article 30, exhibition priority within the meaning of Article 33 or seniority within the meaning of Article 34. The department competent to decide on the omitted act shall decide upon the application. If the Office accepts the application, the consequences of having failed to observe the time limit shall be deemed not to have occurred. If the Office rejects the application, the fee shall be refunded.

Article 83 Reference to general principles In the absence of procedural provisions in this Regulation, the Implementing Regulation, the fees regulations or the rules of procedure of the Boards of Appeal, the Office shall take into account the principles of procedural law generally recognised in the Member States. Article 84 Termination of financial obligations 1. Rights of the Office to the payment of a fee shall be extinguished after four years from the end of the calendar year in which the fee fell due. 2. Rights against the Office for the refunding of fees or sums of money paid in excess of a fee shall be extinguished after four years from the end of the calendar year in which the right arose. 3. The period laid down in paragraphs 1 and 2 shall be interrupted, in the case covered by paragraph 1, by a request for payment of the fee, and in the case covered by paragraph 2, by a reasoned claim in writing. On interruption it shall begin again immediately and shall end at the latest six years after the end of the year in which it originally began, unless, in the meantime, judicial proceedings to enforce the right have begun; in this case the period shall end at the earliest one year after the judgment has acquired the authority of a final decision.

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SECTION 2 Costs Article 85 Costs The losing party in opposition proceedings, proceedings for revocation, proceedings for a declaration of invalidity or appeal proceedings shall bear the fees incurred by the other party as well as all costs, without prejudice to Article 119(6), incurred by him essential to the proceedings, including travel and subsistence and the remuneration of an agent, adviser or advocate, within the limits of the scales set for each category of costs under the conditions laid down in the Implementing Regulation. However, where each party succeeds on some and fails on other heads, or if reasons of equity so dictate, the Opposition Division, Cancellation Division or Board of Appeal shall decide a different apportionment of costs. The party who terminates the proceedings by withdrawing the Community trade mark application, the opposition, the application for revocation of rights, the application for a declaration of invalidity or the appeal, or by not renewing registration of the Community trade mark or by surrendering the Community trade mark, shall bear the fees and the costs incurred by the other party as stipulated in paragraphs 1 and 2. Where a case does not proceed to judgment the costs shall be at the discretion of the Opposition Division, Cancellation Division or Board of Appeal. Where the parties conclude before the Opposition Division, Cancellation Division or Board of Appeal a settlement of costs differing from that provided for in the preceding paragraphs, the department concerned shall take note of that agreement. The Opposition Division or Cancellation Division or Board of Appeal shall fix the amount of the costs to be paid pursuant to the preceding paragraphs when the costs to be paid are limited to the fees paid to the Office and the representation costs. In all other cases, the registry of the Board of Appeal or a member of the staff of the Opposition Division or Cancellation Division shall fix the amount of the costs to be reimbursed on request. The request is admissible only within two months of the date on which the decision for which an application was made for the costs to be fixed became final. The amount so determined may be reviewed by a decision of the Opposition Division or Cancellation Division or Board of Appeal on a request filed within the prescribed period. Article 86 Enforcement of decisions fi xing the amount of costs Any final decision of the Office fi xing the amount of costs shall be enforceable. Enforcement shall be governed by the rules of civil procedure in force in the State in the territory of which it is carried out. The order for its enforcement shall be appended to the decision, without other formality than verification of the authenticity of the decision, by the national authority which the Government of each Member State shall designate for this purpose and shall make known to the Office and to the Court of Justice. When these formalities have been completed on application by the party concerned, the latter may proceed to enforcement in accordance with the national law, by bringing the matter directly before the competent authority. Enforcement may be suspended only by a decision of the Court of Justice. However, the courts of the country concerned shall have jurisdiction over complaints that enforcement is being carried out in an irregular manner.

SECTION 3 Information which may be made available to the public and of the authorities of the Member States Article 87 Register of Community trade marks The Office shall keep a register to be known as the Register of Community trade marks, which shall contain those particulars the registration or inclusion of which is provided for by this Regulation or by the Implementing Regulation. The Register shall be open to public inspection.

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Article 88 Inspection of fi les The files relating to Community trade mark applications which have not yet been published shall not be made available for inspection without the consent of the applicant. Any person who can prove that the applicant for a Community trade mark has stated that after the trade mark has been registered he will invoke the rights under it against him may obtain inspection of the files prior to the publication of that application and without the consent of the applicant. Subsequent to the publication of the Community trade mark application, the files relating to such application and the resulting trade mark may be inspected on request. However, where the files are inspected pursuant to paragraphs 2 or 3, certain documents in the file may be withheld from inspection in accordance with the provisions of the Implementing Regulation. Article 89 Periodical publications

The Office shall periodically publish: (a) a Community Trade Marks Bulletin containing entries made in the Register of Community trade marks as well as other particulars the publication of which is prescribed by this Regulation or by the Implementing Regulation; (b) an Official Journal containing notices and information of a general character issued by the President of the Office, as well as any other information relevant to this Regulation or its implementation. Article 90 Administrative cooperation Unless otherwise provided in this Regulation or in national laws, the Office and the courts or authorities of the Member States shall on request give assistance to each other by communicating information or opening files for inspection. Where the Office lays files open to inspection by courts, Public Prosecutors’ Offices or central industrial property offices, the inspection shall not be subject to the restrictions laid down in Article 88. Article 91 Exchange of publications 1. The Office and the central industrial property offices of the Member States shall despatch to each other on request and for their own use one or more copies of their respective publications free of charge. 2. The Office may conclude agreements relating to the exchange or supply of publications. SECTION 4 Representation Article 92 General principles of representation 1. Subject to the provisions of paragraph 2, no person shall be compelled to be represented before the Office. 2. Without prejudice to paragraph 3, second sentence, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the Community must be represented before the Office in accordance with Article 93(1) in all proceedings established by this Regulation, other than in filing an application for a Community trade mark; the Implementing Regulation may permit other exceptions. 3. Natural or legal persons having their domicile or principal place of business or a real and effective industrial or commercial establishment in the Community may be represented before the Office by an employee. An employee of a legal person to which this paragraph applies may

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Appendix 3: Council Regulation (EC) 207/2009 also represent other legal persons which have economic connections with the first legal person, even if those other legal persons have neither their domicile nor their principal place of business nor a real and effective industrial or commercial establishment within the Community. 4. The Implementing Regulation shall specify whether and under what conditions an employee must file with the Office a signed authorisation for insertion on the file.

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Article 93 Professional representatives Representation of natural or legal persons before the Office may only be undertaken by: (a) any legal practitioner qualified in one of the Member States and having his place of business within the Community, to the extent that he is entitled, within the said State, to act as a representative in trade mark matters; (b) professional representatives whose names appear on the list maintained for this purpose by the Office. The Implementing Regulation shall specify whether and under what conditions the representatives before the Office must file with the Office a signed authorisation for insertion on the file. Representatives acting before the Office must file with it a signed authorisation for insertion on the files, the details of which are set out in the Implementing Regulation. Any natural person who fulfils the following conditions may be entered on the list of professional representatives: (a) he must be a national of one of the Member States; (b) he must have his place of business or employment in the Community; (c) he must be entitled to represent natural or legal persons in trade mark matters before the central industrial property office of a Member State. Where, in that State, the entitlement is not conditional upon the requirement of special professional qualifications, persons applying to be entered on the list who act in trade mark matters before the central industrial property office of the said State must have habitually so acted for at least five years. However, persons whose professional qualification to represent natural or legal persons in trade mark matters before the central industrial property office of one of the Member States is officially recognised in accordance with the regulations laid down by such State shall not be subject to the condition of having exercised the profession. Entry shall be effected upon request, accompanied by a certificate furnished by the central industrial property office of the Member State concerned, which must indicate that the conditions laid down in paragraph 2 are fulfilled. The President of the Office may grant exemption from: (a) the requirement of paragraph 2(c), second sentence, if the applicant furnishes proof that he has acquired the requisite qualification in another way; (b) the requirement of paragraph 2(a) in special circumstances. The conditions under which a person may be removed from the list of professional representatives shall be laid down in the Implementing Regulation.

Title X Jurisdiction and Procedure in Legal Actions Relating to Community Trade Marks SECTION 1 Application of Regulation (EC) No 44/2001 Article 94 Application of Regulation (EC) No 44/2001 1. Unless otherwise specified in this Regulation, Regulation (EC) No 44/2001 shall apply to proceedings relating to Community trade marks and applications for Community trade

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Appendix 3: Council Regulation (EC) 207/2009 marks, as well as to proceedings relating to simultaneous and successive actions on the basis of Community trade marks and national trade marks. 2. In the case of proceedings in respect of the actions and claims referred to in Article 96: (a) Articles 2 and 4, points 1, 3, 4 and 5 of Article 5 and Article 31 of Regulation (EC) No 44/2001 shall not apply; (b) Articles 23 and 24 of Regulation (EC) No 44/2001 shall apply subject to the limitations in Article 97(4) of this Regulation; (c) the provisions of Chapter II of Regulation (EC) No 44/2001 which are applicable to persons domiciled in a Member State shall also be applicable to persons who do not have a domicile in any Member State but have an establishment therein.

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SECTION 2 Disputes concerning the infringement and validity of Community trade marks Article 95 Community trade mark courts The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance, hereinafter referred to as ‘Community trade mark courts’, which shall perform the functions assigned to them by this Regulation. Each Member State shall communicate to the Commission within three years of the entry into force of Regulation (EC) No 40/94 a list of Community trade mark courts indicating their names and their territorial jurisdiction. Any change made after communication of the list referred to in paragraph 2 in the number, names or territorial jurisdiction of the courts shall be notified without delay by the Member State concerned to the Commission. The information referred to in paragraphs 2 and 3 shall be notified by the Commission to the Member States and published in the Official Journal of the European Union. As long as a Member State has not communicated the list as stipulated in paragraph 2, jurisdiction for any proceedings resulting from an action or application covered by Article 96, and for which the courts of that State have jurisdiction under Article 97, shall lie with that court of the State in question which would have jurisdiction ratione loci and ratione materiae in the case of proceedings relating to a national trade mark registered in that State.

Article 96 Jurisdiction over infringement and validity The Community trade mark courts shall have exclusive jurisdiction: (a) for all infringement actions and—if they are permitted under national law—actions in respect of threatened infringement relating to Community trade marks; (b) for actions for declaration of non-infringement, if they are permitted under national law; (c) for all actions brought as a result of acts referred to in Article 9(3), second sentence; (d) for counterclaims for revocation or for a declaration of invalidity of the Community trade mark pursuant to Article 100. Article 97 International jurisdiction 1. Subject to the provisions of this Regulation as well as to any provisions of Regulation (EC) No 44/2001 applicable by virtue of Article 94, proceedings in respect of the actions and claims referred to in Article 96 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment. 2. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment. 3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Member State where the Office has its seat.

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Appendix 3: Council Regulation (EC) 207/2009 4. Notwithstanding the provisions of paragraphs 1, 2 and 3: (a) Article 23 of Regulation (EC) No 44/2001 shall apply if the parties agree that a different Community trade mark court shall have jurisdiction; (b) Article 24 of Regulation (EC) No 44/2001 shall apply if the defendant enters an appearance before a different Community trade mark court. 5. Proceedings in respect of the actions and claims referred to in Article 96, with the exception of actions for a declaration of non-infringement of a Community trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act within the meaning of Article 9(3), second sentence, has been committed. Article 98 Extent of jurisdiction 1. A Community trade mark court whose jurisdiction is based on Article 97(1) to (4) shall have jurisdiction in respect of: (a) acts of infringement committed or threatened within the territory of any of the Member States; (b) acts within the meaning of Article 9(3), second sentence, committed within the territory of any of the Member States. 2. A Community trade mark court whose jurisdiction is based on Article 97(5) shall have jurisdiction only in respect of acts committed or threatened within the territory of the Member State in which that court is situated. Article 99 Presumption of validity—Defence as to the merits 1. The Community trade mark courts shall treat the Community trade mark as valid unless its validity is put in issue by the defendant with a counterclaim for revocation or for a declaration of invalidity. 2. The validity of a Community trade mark may not be put in issue in an action for a declaration of non-infringement. 3. In the actions referred to in Article 96(a) and (c) a plea relating to revocation or invalidity of the Community trade mark submitted otherwise than by way of a counterclaim shall be admissible in so far as the defendant claims that the rights of the proprietor of the Community trade mark could be revoked for lack of use or that the Community trade mark could be declared invalid on account of an earlier right of the defendant.

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Article 100 Counterclaims A counterclaim for revocation or for a declaration of invalidity may only be based on the grounds for revocation or invalidity mentioned in this Regulation. A Community trade mark court shall reject a counterclaim for revocation or for a declaration of invalidity if a decision taken by the Office relating to the same subject matter and cause of action and involving the same parties has already become final. If the counterclaim is brought in a legal action to which the proprietor of the trade mark is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the conditions set out in national law. The Community trade mark court with which a counterclaim for revocation or for a declaration of invalidity of the Community trade mark has been filed shall inform the Office of the date on which the counterclaim was filed. The latter shall record this fact in the Register of Community trade marks. Article 57(2) to (5) shall apply. There a Community trade mark court has given a judgment which has become final on a counter claim for revocation or for invalidity of a Community trade mark, a copy of the judgment shall be sent to the Office. Any party may request information about such transmission. The Office shall mention the judgment in the Register of Community trade marks in accordance with the provisions of the Implementing Regulation.

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Appendix 3: Council Regulation (EC) 207/2009 7. The Community trade mark court hearing a counterclaim for revocation or for a declaration of invalidity may stay the proceedings on application by the proprietor of the Community trade mark and after hearing the other parties and may request the defendant to submit an application for revocation or for a declaration of invalidity to the Office within a time limit which it shall determine. If the application is not made within the time limit, the proceedings shall continue; the counterclaim shall be deemed withdrawn. Article 104(3) shall apply. Article 101 Applicable law 1. The Community trade mark courts shall apply the provisions of this Regulation. 2. On all matters not covered by this Regulation a Community trade mark court shall apply its national law, including its private international law. 3. Unless otherwise provided in this Regulation, a Community trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located. Article 102 Sanctions 1. Where a Community trade mark court finds that the defendant has infringed or threatened to infringe a Community trade mark, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with. 2. In all other respects the Community trade mark court shall apply the law of the Member State in which the acts of infringement or threatened infringement were committed, including the private international law. Article 103 Provisional and protective measures 1. Application may be made to the courts of a Member State, including Community trade mark courts, for such provisional, including protective, measures in respect of a Community trade mark or Community trade mark application as may be available under the law of that State in respect of a national trade mark, even if, under this Regulation, a Community trade mark court of another Member State has jurisdiction as to the substance of the matter. 2. A Community trade mark court whose jurisdiction is based on Article 97(1), (2), (3) or (4) shall have jurisdiction to grant provisional and protective measures which, subject to any necessary procedure for recognition and enforcement pursuant to Title III of Regulation (EC) No 44/2001, are applicable in the territory of any Member State. No other court shall have such jurisdiction. Article 104 Specific rules on related actions 1. A Community trade mark court hearing an action referred to in Article 96, other than an action for a declaration of non-infringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue before another Community trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office. 2. The Office, when hearing an application for revocation or for a declaration of invalidity shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue on account of a counterclaim before a Community trade mark court. However, if one of the parties to the proceedings before the Community trade mark court so requests, the court may, after hearing the other parties to these proceedings, stay the proceedings. The Office shall in this instance continue the proceedings pending before it.

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Appendix 3: Council Regulation (EC) 207/2009 3. Where the Community trade mark court stays the proceedings it may order provisional and protective measures for the duration of the stay. Article 105 Jurisdiction of Community trade mark courts of second instance—Further appeal 1. An appeal to the Community trade mark courts of second instance shall lie from judgments of the Community trade mark courts of first instance in respect of proceedings arising from the actions and claims referred to in Article 96. 2. The conditions under which an appeal may be lodged with a Community trade mark court of second instance shall be determined by the national law of the Member State in which that court is located. 3. The national rules concerning further appeal shall be applicable in respect of judgments of Community trade mark courts of second instance. SECTION 3 Other disputes concerning Community trade marks Article 106 Supplementary provisions on the jurisdiction of national courts other than Community trade mark courts 1. Within the Member State whose courts have jurisdiction under Article 94(1) those courts shall have jurisdiction for actions other than those referred to in Article 96, which would have jurisdiction ratione loci and ratione materiae in the case of actions relating to a national trade mark registered in that State. 2. Actions relating to a Community trade mark, other than those referred to in Article 96, for which no court has jurisdiction under Article 94(1) and paragraph 1 of this Article maybe heard before the courts of the Member State in which the Office has its seat. Article 107 Obligation of the national court A national court which is dealing with an action relating to a Community trade mark, other than the action referred to in Article 96, shall treat the trade mark as valid. SECTION 4 Transitional provision Article 108 Transitional provision relating to the application of the Convention on Jurisdiction and Enforcement The provisions of Regulation (EC) No 44/2001 which are rendered applicable by the preceding Articles shall have effect in respect of any Member State solely in the text of the Regulation which is in force in respect of that State at any given time.

Title XI Effects on the Laws of the Member States SECTION 1 Civil actions on the basis of more than one trade mark Article 109 Simultaneous and successive civil actions on the basis of Community trade marks and national trade marks 1. Where actions for infringement involving the same cause of action and between the same parties are brought in the courts of different Member States, one seized on the basis of a Community trade mark and the other seized on the basis of a national trade mark: (a) the court other than the court first seized shall of its own motion decline jurisdiction in favour of that court where the trade marks concerned are identical and valid for identical

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Appendix 3: Council Regulation (EC) 207/2009 goods or services. The court which would be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested; (b) the court other than the court first seized may stay its proceedings where the trade marks concerned are identical and valid for similar goods or services and where the trade marks concerned are similar and valid for identical or similar goods or services. 2. The court hearing an action for infringement on the basis of a Community trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical national trade mark valid for identical goods or services. 3. The court hearing an action for infringement on the basis of a national trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical Community trade mark valid for identical goods or services. 4. Paragraphs 1, 2 and 3 shall not apply in respect of provisional, including protective, measures. Section 2 Application of national laws for the purpose of prohibiting the use of Community trade marks Article 110 Prohibition of use of Community trade marks 1. This Regulation shall, unless otherwise provided for, not affect the right existing under the laws of the Member States to invoke claims for infringement of earlier rights within the meaning of Article 8 or Article 53(2) in relation to the use of a later Community trade mark. Claims for infringement of earlier rights within the meaning of Article 8(2) and (4) may, however, no longer be invoked if the proprietor of the earlier right may no longer apply for a declaration that the Community trade mark is invalid in accordance with Article 54(2). 2. This Regulation shall, unless otherwise provided for, not affect the right to bring proceedings under the civil, administrative or criminal law of a Member State or under provisions of Community law for the purpose of prohibiting the use of a Community trade mark to the extent that the use of a national trade mark may be prohibited under the law of that Member State or under Community law. Article 111 Prior rights applicable to particular localities 1. The proprietor of an earlier right which only applies to a particular locality may oppose the use of the Community trade mark in the territory where his right is protected in so far as the law of the Member State concerned so permits. 2. Paragraph 1 shall cease to apply if the proprietor of the earlier right has acquiesced in the use of the Community trade mark in the territory where his right is protected for a period of five successive years, being aware of such use, unless the Community trade mark was applied for in bad faith. 3. The proprietor of the Community trade mark shall not be entitled to oppose use of the right referred to in paragraph 1 even though that right may no longer be invoked against the Community trade mark. SECTION 3 Conversion into a national trade mark application Article 112 Request for the application of national procedure 1. The applicant for or proprietor of a Community trade mark may request the conversion of his Community trade mark application or Community trade mark into a national trade mark application: (a) to the extent that the Community trade mark application is refused, withdrawn, or deemed to be withdrawn; (b) to the extent that the Community trade mark ceases to have effect.

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Appendix 3: Council Regulation (EC) 207/2009 2. Conversion shall not take place: (a) where the rights of the proprietor of the Community trade mark have been revoked on the grounds of non-use, unless in the Member State for which conversion is requested the Community trade mark has been put to use which would be considered to be genuine use under the laws of that Member State; (b) for the purpose of protection in a Member State in which, in accordance with the decision of the Office or of the national court, grounds for refusal of registration or grounds for revocation or invalidity apply to the Community trade mark application or Community trade mark. 3. The national trade mark application resulting from the conversion of a Community trade mark application or a Community trade mark shall enjoy in respect of the Member State concerned the date of filing or the date of priority of that application or trade mark and, where appropriate, the seniority of a trade mark of that State claimed under Articles 34 or 35. 4. In cases where a Community trade mark application is deemed to be withdrawn, the Office shall send to the applicant a communication fi xing a period of three months from the date of that communication in which a request for conversion may be filed. 5. Where the Community trade mark application is withdrawn or the Community trade mark ceases to have effect as a result of a surrender being recorded or of failure to renew the registration, the request for conversion shall be filed within three months after the date on which the Community trade mark application has been withdrawn or on which the Community trade mark ceases to have effect. 6. Where the Community trade mark application is refused by decision of the Office or where the Community trade mark ceases to have effect as a result of a decision of the Office or of a Community trade mark court, the request for conversion shall be filed within three months after the date on which that decision acquired the authority of a final decision. 7. The effect referred to in Article 32 shall lapse if the request is not filed in due time. Article 113 Submission, publication and transmission of the request for conversion 1. A request for conversion shall be filed with the Office and shall specify the Member States in which application of the procedure for registration of a national trade mark is desired. The request shall not be deemed to be filed until the conversion fee has been paid. 2. If the Community trade mark application has been published, receipt of any such request shall be recorded in the Register of Community trade marks and the request for conversion shall be published. 3. The Office shall check whether the conversion requested fulfils the conditions set out in this Regulation, in particular Article 112(1), (2), (4), (5) and (6), and paragraph 1 of this Article, together with the formal conditions laid down in the Implementing Regulation. If these conditions are fulfilled, the Office shall transmit the request for conversion to the industrial property offices of the Member States specified therein. Article 114 Formal requirements for conversion 1. Any central industrial property office to which the request for conversion is transmitted may obtain from the Office any additional information concerning the request enabling that office to make a decision regarding the national trade mark resulting from the conversion. 2. A Community trade mark application or a Community trade mark transmitted in accordance with Article 113 shall not be subjected to formal requirements of national law which are different from or additional to those provided for in this Regulation or in the Implementing Regulation. 3. Any central industrial property office to which the request is transmitted may require that the applicant shall, within not less than two months: (a) pay the national application fee; (b) file a translation in one of the official languages of the State in question of the request and of the documents accompanying it;

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Title XII The Office SECTION 1 General provisions Article 115 Legal status 1. The Office shall be a body of the Community. It shall have legal personality. 2. In each of the Member States the Office shall enjoy the most extensive legal capacity accorded to legal persons under their laws; it may, in particular, acquire or dispose of movable and immovable property and may be a party to legal proceedings. 3. The Office shall be represented by its President. Article 116 Staff 1. The Staff Regulations of officials of the European Communities, hereinafter referred to as ‘the Staff Regulations’, the Conditions of Employment of other servants of the European Communities, and the rules adopted by agreement between the Institutions of the European Communities for giving effect to those Staff Regulations and Conditions of Employment shall apply to the staff of the Office, without prejudice to the application of Article 136 to the members of the Boards of Appeal. 2. Without prejudice to Article 125, the powers conferred on each Institution by the Staff Regulations and by the Conditions of Employment of other servants shall be exercised by the Office in respect of its staff. Article 117 Privileges and immunities The Protocol on the Privileges and Immunities of the European Communities shall apply to the Office.

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Article 118 Liability The contractual liability of the Office shall be governed by the law applicable to the contract in question. The Court of Justice shall be competent to give judgment pursuant to any arbitration clause contained in a contract concluded by the Office. In the case of non-contractual liability, the Office shall, in accordance with the general principles common to the laws of the Member States, make good any damage caused by its departments or by its servants in the performance of their duties. The Court of Justice shall have jurisdiction in disputes relating to compensation for the damage referred to in paragraph 3. The personal liability of its servants towards the Office shall be governed by the provisions laid down in their Staff Regulations or in the Conditions of Employment applicable to them.

Article 119 Languages 1. The application for a Community trade mark shall be filed in one of the official languages of the European Community. 2. The languages of the Office shall be English, French, German, Italian and Spanish.

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Appendix 3: Council Regulation (EC) 207/2009 3. The applicant must indicate a second language which shall be a language of the Office the use of which he accepts as a possible language of proceedings for opposition, revocation or invalidity proceedings. If the application was filed in a language which is not one of the languages of the Office, the Office shall arrange to have the application, as described in Article 26(1), translated into the language indicated by the applicant. 4. Where the applicant for a Community trade mark is the sole party to proceedings before the Office, the language of proceedings shall be the language used for filing the application for a Community trade mark. If the application was made in a language other than the languages of the Office, the Office may send written communications to the applicant in the second language indicated by the applicant in his application. 5. The notice of opposition and an application for revocation or invalidity shall be filed in one of the languages of the Office. 6. If the language chosen, in accordance with paragraph 5, for the notice of opposition or the application for revocation or invalidity is the language of the application for a trade mark or the second language indicated when the application was filed, that language shall be the language of the proceedings. If the language chosen, in accordance with paragraph 5, for the notice of opposition or the application for revocation or invalidity is neither the language of the application for a trade mark nor the second language indicated when the application was filed, the opposing party or the party seeking revocation or invalidity shall be required to produce, at his own expense, a translation of his application either into the language of the application for a trade mark, provided that it is a language of the Office, or into the second language indicated when the application was filed. The translation shall be produced within the period prescribed in the Implementing Regulation. The language into which the application has been translated shall then become the language of the proceedings. 7. Parties to opposition, revocation, invalidity or appeal proceedings may agree that a different official language of the European Community is to be the language of the proceedings. Article 120 Publication and entries in the Register 1. An application for a Community trade mark, as described in Article 26(1), and all other information the publication of which is prescribed by this Regulation or the Implementing Regulation, shall be published in all the official languages of the European Community. 2. All entries in the Register of Community trade marks shall be made in all the official languages of the European Community. 3. In cases of doubt, the text in the language of the Office in which the application for the Community trade mark was filed shall be authentic. If the application was filed in an official language of the European Community other than one of the languages of the Office, the text in the second language indicated by the applicant shall be authentic. Article 121 The translation services required for the functioning of the Office shall be provided by the Translation Centre for the Bodies of the European Union. Article 122 Control of legality 1. The Commission shall check the legality of those acts of the President of the Office in respect of which Community law does not provide for any check on legality by another body and of acts of the Budget Committee attached to the Office pursuant to Article 138. 2. It shall require that any unlawful acts as referred to in paragraph 1 be altered or annulled. 3. Member States and any person directly and individually concerned may refer to the Commission any act as referred to in paragraph 1, whether express or implied, for the Commission to examine the legality of that act. Referral shall be made to the Commission within one month of the day on which the party concerned first became aware of the act in question. The Commission shall take a decision within three months. If no decision has been taken within this period, the case shall be deemed to have been dismissed.

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Appendix 3: Council Regulation (EC) 207/2009 Article 123 Access to documents 1. Regulation (EC) No 1049/2001 of the European Parliament and of the Council of 30 May 2001 regarding public access to European Parliament, Council and Commission documents(9) shall apply to documents held by the Office. 2. The Administrative Board shall adopt the practical arrangements for Implementing Regulation (EC) No 1049/2001 with regard to this Regulation. 3. Decisions taken by the Office pursuant to Article 8 of Regulation (EC) No 1049/2001 may give rise to the lodging of a complaint to the Ombudsman or form the subject of an action before the Court of Justice, under the conditions laid down in Articles 195 and 230 of the Treaty respectively. SECTION 2 Management of the Office Article 124 Powers of the President 1. The Office shall be managed by the President. 2. To this end the President shall have in particular the following functions and powers: (a) he shall take all necessary steps, including the adoption of internal administrative instructions and the publication of notices, to ensure the functioning of the Office; (b) he may place before the Commission any proposal to amend this Regulation, the Implementing Regulation, the rules of procedure of the Boards of Appeal, the fees regulations and any other rules applying to Community trade marks after consulting the Administrative Board and, in the case of the fees regulations and the budgetary provisions of this Regulation, the Budget Committee; (c) he shall draw up the estimates of the revenue and expenditure of the Office and shall implement the budget; (d) he shall submit a management report to the Commission, the European Parliament and the Administrative Board each year; (e) he shall exercise in respect of the staff the powers laid down in Article 116(2); (f) he may delegate his powers. 3. The President shall be assisted by one or more Vice-Presidents. If the President is absent or indisposed, the Vice-President or one of the Vice-Presidents shall take his place in accordance with the procedure laid down by the Administrative Board.

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Article 125 Appointment of senior officials The President of the Office shall be appointed by the Council from a list of at most three candidates, which shall be prepared by the Administrative Board. Power to dismiss the President shall lie with the Council, acting on a proposal from the Administrative Board. The term of office of the President shall not exceed five years. This term of office shall be renewable. The Vice-President or Vice-Presidents of the Office shall be appointed or dismissed as in paragraph 1, after consultation of the President. The Council shall exercise disciplinary authority over the officials referred to in paragraphs 1 and 3.

Section 3 Administrative Board Article 126 Creation and powers 1. An Administrative Board is hereby set up, attached to the Office. Without prejudice to the powers attributed to the Budget Committee in Section 5—budget and financial control—the Administrative Board shall have the powers defined below.

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Appendix 3: Council Regulation (EC) 207/2009 2. The Administrative Board shall draw up the lists of candidates provided for in Article 125. 3. It shall advise the President on matters for which the Office is responsible. 4. It shall be consulted before adoption of the guidelines for examination in the Office and in the other cases provided for in this Regulation. 5. It may be deliver options and requests for information to the President and to the Commission where it considers that this is necessary. Article 127 Composition 1. The Administrative Board shall be composed of one representative of each Member State and one representative of the Commission and their alternates. 2. The members of the Administrative Board may, subject to the provisions of its rules of procedure, be assisted by advisers or experts. Article 128 Chairmanship 1. The Administrative Board shall elect a chairman and a deputy chairman from among its members. The deputy chairman shall ex officio replace the chairman in the event of his being prevented from attending to his duties. 2. The duration of the terms of office of the chairman and the deputy chairman shall be three years. The terms of office shall be renewable.

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Article 129 Meetings Meetings of the Administrative Board shall be convened by its chairman. The President of the Office shall take part in the deliberations, unless the Administrative Board decides otherwise. The Administrative Board shall hold an ordinary meeting once a year; in addition, it shall meet on the initiative of its chairman or at the request of the Commission or of one-third of the Member States. The Administrative Board shall adopt rules of procedure. The Administrative Board shall take its decisions by a simple majority of the representatives of the Member States. However, a majority of three-quarters of the representatives of the Member States shall be required for the decisions which the Administrative Board is empowered to take under Article 125(1) and (3). In both cases each Member State shall have one vote. The Administrative Board may invite observers to attend its meetings. The Secretariat for the Administrative Board shall be provided by the Office.

SECTION 4 Implementation of procedures Article 130 Competence For taking decisions in connection with the procedures laid down in this Regulation, the following shall be competent: (a) (b) (c) (d) (e)

examiners; Opposition Divisions; an Administration of Trade Marks and Legal Division; Cancellation Divisions; Boards of Appeal.

Article 131 Examiners An examiner shall be responsible for taking decisions on behalf of the Office in relation to an application for registration of a Community trade mark, including the matters referred to in Articles 36, 37 and 68, except in so far as an Opposition Division is responsible.

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Appendix 3: Council Regulation (EC) 207/2009 Article 132 Opposition Divisions 1. An Opposition Division shall be responsible for taking decisions on an opposition to an application to register a Community trade mark. 2. The decisions of the Opposition Divisions shall be taken by three-member groups. At least one member shall be legally qualified. In certain specific cases provided for in the Implementing Regulation, the decisions shall be taken by a single member. Article 133 Administration of Trade Marks and Legal Division 1. The Administration of Trade Marks and Legal Division shall be responsible for those decisions required by this Regulation which do not fall within the competence of an examiner, an Opposition Division or a Cancellation Division. It shall in particular be responsible for decisions in respect of entries in the Register of Community trade marks. 2. It shall also be responsible for keeping the list of professional representatives which is referred to in Article 93. 3. A decision of the Division shall be taken by one member. Article 134 Cancellation Divisions 1. A Cancellation Division shall be responsible for taking decisions in relation to an application for the revocation or declaration of invalidity of a Community trade mark. 2. The decisions of the Cancellation Divisions shall be taken by three-member groups. At least one member shall be legally qualified. In certain specific cases provided for in the Implementing Regulation, the decisions shall be taken by a single member.

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Article 135 Boards of Appeal The Boards of Appeal shall be responsible for deciding on appeals from decisions of the examiners, Opposition Divisions, Administration of Trade Marks and Legal Division and Cancellation Divisions. The decisions of the Boards of Appeal shall be taken by three members, at least two of whom are legally qualified. In certain specific cases, decisions shall be taken by an enlarged Board chaired by the President of the Boards of Appeal or by a single member, who must be legally qualified. In order to determine the special cases which fall under the jurisdiction of the enlarged Board, account should be taken of the legal difficulty or the importance of the case or of special circumstances which justify it. Such cases may be referred to the enlarged Board: (a) by the authority of the Boards of Appeal set up in accordance with the rules of procedure of the Boards referred to in Article 162(3); or (b) by the Board handling the case. The composition of the enlarged Board and the rules on referrals to it shall be laid down pursuant to the rules of procedure of the Boards referred to in Article 162(3). To determine which specific cases fall under the authority of a single member, account should be taken of the lack of difficulty of the legal or factual matters raised, the limited importance of the individual case or the absence of other specific circumstances. The decision to confer a case on one member in the cases referred to shall be adopted by the Board handling the case. Further details shall be laid down in the rules of procedure of the Boards referred to in Article 162(3).

Article 136 Independence of the members of the Boards of Appeal 1. The President of the Boards of Appeal and the chairmen of the Boards shall be appointed, in accordance with the procedure laid down in Article 125 for the appointment of the President

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of the Office, for a term of five years. They may not be removed from office during this term, unless there are serious grounds for such removal and the Court of Justice, on application by the institution which appointed them, takes a decision to this effect. The term of office of the President of the Boards of Appeal and the chairmen of the Boards may be renewed for additional five-year periods, or until retirement age if this age is reached during the new term of office. The President of the Boards of Appeal shall, inter alia, have managerial and organisational powers, principally to: (a) chair the authority of the Boards of Appeal responsible for laying down the rules and organising the work of the Boards, which authority is provided for in the rules of procedure of the Boards referred to in Article 162(3); (b) ensure the implementation of the authority’s decisions; (c) allocate cases to a Board on the basis of objective criteria determined by the authority of the Boards of Appeal; (d) forward to the President of the Office the Boards’ expenditure requirements, with a view to drawing up the expenditure estimates. The President of the Boards of Appeal shall chair the enlarged Board. Further details shall be laid down in the rules of procedure of the Boards referred to in Article 162(3). The members of the Boards of Appeal shall be appointed by the Administrative Board for a term of five years. Their term of office may be renewed for additional five-year periods, or until retirement age if that age is reached during the new term of office. The members of the Boards of Appeal may not be removed from office unless there are serious grounds for such removal and the Court of Justice, after the case has been referred to it by the Administrative Board on the recommendation of the President of the Boards of Appeal, after consulting the chairman of the Board to which the member concerned belongs, takes a decision to this effect. The President of the Boards of Appeal and the chairmen and members of the Boards of Appeal shall be independent. In their decisions they shall not be bound by any instructions. The President of the Boards of Appeal and the chairmen and members of the Boards of Appeal may not be examiners or members of the Opposition Divisions, Administration of Trade Marks and Legal Division or Cancellation Divisions. Article 137 Exclusion and objection Examiners and members of the Divisions set up within the Office or of the Boards of Appeal may not take part in any proceedings if they have any personal interest therein, or if they have previously been involved as representatives of one of the parties. Two of the three members of an Opposition Division shall not have taken part in examining the application. Members of the Cancellation Divisions may not take part in any proceedings if they have participated in the final decision on the case in the proceedings for registration or opposition proceedings. Members of the Boards of Appeal may not take part in appeal proceedings if they participated in the decision under appeal. If, for one of the reasons mentioned in paragraph 1 or for any other reason, a member of a Division or of a Board of Appeal considers that he should not take part in any proceedings, he shall inform the Division or Board accordingly. Examiners and members of the Divisions or of a Board of Appeal may be objected to by any party for one of the reasons mentioned in paragraph 1, or if suspected of partiality. An objection shall not be admissible if, while being aware of a reason for objection, the party has taken a procedural step. No objection may be based upon the nationality of examiners or members. The Divisions and the Boards of Appeal shall decide as to the action to be taken in the cases specified in paragraphs 2 and 3 without the participation of the member concerned. For the purposes of taking this decision the member who withdraws or has been objected to shall be replaced in the Division or Board of Appeal by his alternate.

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Appendix 3: Council Regulation (EC) 207/2009 SECTION 5 Budget and financial control Article 138 Budget Committee 1. A Budget Committee is hereby set up, attached to the Office. The Budget Committee shall have the powers assigned to it in this Section and in Article 38(4). 2. Articles 126(6), 127, 128 and 129(1) to (4), (6) and (7) shall apply to the Budget Committee mutatis mutandis. 3. The Budget Committee shall take its decisions by a simple majority of the representatives of the Member States. However, a majority of three-quarters of the representatives of the Member States shall be required for the decisions which the Budget Committee is empowered to take under Articles 38(4), 140(3) and 143. In both cases each Member State shall have one vote. Article 139 Budget 1. Estimates of all the Office’s revenue and expenditure shall be prepared for each financial year and shall be shown in the Office’s budget, and each financial year shall correspond with the calendar year. 2. The revenue and expenditure shown in the budget shall be in balance. 3. Revenue shall comprise, without prejudice to other types of income, total fees payable under the fees regulations, total fees payable under the Madrid Protocol referred to in Article 140 of this Regulation for an international registration designating the European Community and other payments made to Contracting Parties to the Madrid Protocol, total fees payable under the Geneva Act referred to in Article 106c of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (10) for an international registration designating the European Community and other payments made to Contracting Parties to the Geneva Act, and, to the extent necessary, a subsidy entered against a specific heading of the general budget of the European Communities, Commission section. Article 140 Preparation of the budget 1. The President shall draw up each year an estimate of the Office’s revenue and expenditure for the following year and shall send it to the Budget Committee not later than 31 March in each year, together with a list of posts. 2. Should the budget estimates provide for a Community subsidy, the Budget Committee shall immediately forward the estimate to the Commission, which shall forward it to the budget authority of the Communities. The Commission may attach an opinion on the estimate along with an alternative estimate. 3. The Budget Committee shall adopt the budget, which shall include the Office’s list of posts. Should the budget estimates contain a subsidy from the general budget of the Communities, the Office’s budget shall, if necessary, be adjusted. Article 141 Audit and control 1. An internal audit function shall be set up within the Office, to be performed in compliance with the relevant international standards. The internal auditor, appointed by the President, shall be responsible to him for verifying the proper operation of budget implementation systems and procedures of the Office. 2. The internal auditor shall advise the President on dealing with risks, by issuing independent opinions on the quality of management and control systems and by issuing recommendations for improving the conditions of implementation of operations and promoting sound financial management. 3. The responsibility for putting in place internal control systems and procedures suitable for carrying out his tasks shall lie with the authorising officer.

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Appendix 3: Council Regulation (EC) 207/2009 Article 142 Auditing of accounts 1. Not later than 31 March in each year the President shall transmit to the Commission, the European Parliament, the Budget Committee and the Court of Auditors accounts of the Office’s total revenue and expenditure for the preceding financial year. The Court of Auditors shall examine them in accordance with Article 248 of the Treaty. 2. The Budget Committee shall give a discharge to the President of the Office in respect of the implementation of the budget. Article 143 Financial provisions The Budget Committee shall, after consulting the Court of Auditors of the European Communities and the Commission, adopt internal financial provisions specifying, in particular, the procedure for establishing and implementing the Office’s budget. As far as is compatible with the particular nature of the Office, the financial provisions shall be based on the financial regulations adopted for other bodies set up by the Community. Article 144 Fees regulations 1. The fees regulations shall determine in particular the amounts of the fees and the ways in which they are to be paid. 2. The amounts of the fees shall be fi xed at such a level as to ensure that the revenue in respect thereof is in principle sufficient for the budget of the Office to be balanced. 3. The fees regulations shall be adopted and amended in accordance with the procedure referred to in Article 163(2).

Title XIII International Registration of Marks SECTION I General provisions Article 145 Application of provisions Unless otherwise specified in this title, this Regulation and its Implementing Regulations shall apply to applications for international registrations under the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (hereafter referred to as ‘international applications’ and ‘the Madrid Protocol’ respectively), based on an application for a Community trade mark or on a Community trade mark and to registrations of marks in the international register maintained by the International Bureau of the World Intellectual Property Organisation (hereafter referred to as ‘international registrations’ and ‘the International Bureau’, respectively) designating the European Community. SECTION 2 International registration on the basis of applications for a Community trade mark and of Community trade marks Article 146 Filing of an international application 1. International applications pursuant to Article 3 of the Madrid Protocol based on an application for a Community trade mark or on a Community trade mark shall be filed at the Office. 2. Where an international application is filed before the mark on which the international registration is to be based has been registered as a Community trade mark, the applicant for the international registration must indicate whether the international registration is to be based on a Community trade mark application or registration. Where the international registration is to be based on a Community trade mark once it is registered, the international

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Article 147 Form and contents of the international application The international application shall be filed in one of the official languages of the European Community, using a form provided by the Office. Unless otherwise specified by the applicant on that form when he files the international application, the Office shall correspond with the applicant in the language of filing in a standard form. If the international application is filed in a language which is not one of the languages allowed under the Madrid Protocol, the applicant must indicate a second language from among those languages. This shall be the language in which the Office submits the international application to the International Bureau. Where the international application is filed in a language other than one of the languages allowed under the Madrid Protocol for the filing of international applications, the applicant may provide a translation of the list of goods or services in the language in which the international application is to be submitted to the International Bureau pursuant to paragraph 2. The Office shall forward the international application to the International Bureau as soon as possible. The filing of an international application shall be subject to the payment of a fee to the Office. In the cases referred to in the second sentence of Article 146(2), the fee shall be due on the date of registration of the Community trade mark. The application shall be deemed not to have been filed until the required fee has been paid. The international application must fulfil the relevant conditions laid down in the Implementing Regulation. Article 148 Recordal in the fi les and in the Register

1. The date and number of an international registration based on a Community trade mark application shall be recorded in the files of that application. When the application results in a Community trade mark, the date and number of the international registration shall be entered in the Register. 2. The date and number of an international registration based on a Community trade mark shall be entered in the Register. Article 149 Request for territorial extension subsequent to the international registration A request for territorial extension made subsequent to the international registration pursuant to Article 3ter(2) of the Madrid Protocol may be filed through the intermediary of the Office. The request must be filed in the language in which the international application was filed pursuant to Article 147. Article 150 International fees Any fees payable to the International Bureau under the Madrid Protocol shall be paid direct to the International Bureau. SECTION 3 International registrations designating the European Community Article 151 Effects of international registrations designating the European Community 1. An international registration designating the European Community shall, from the date of its registration pursuant to Article 3(4) of the Madrid Protocol or from the date of the subsequent designation of the European Community pursuant to Article 3ter (2) of the Madrid Protocol, have the same effect as an application for a Community trade mark. 2. If no refusal has been notified in accordance with Article 5(1) and (2) of the Madrid Protocol or if any such refusal has been withdrawn, the international registration of a mark designating

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Appendix 3: Council Regulation (EC) 207/2009 the European Community shall, from the date referred to in paragraph 1, have the same effect as the registration of a mark as a Community trade mark. 3. For the purposes of applying Article 9(3), publication of the particulars of the international registration designating the European Community pursuant to Article 152(1) shall take the place of publication of a Community trade mark application, and publication pursuant to Article 152(2) shall take the place of publication of the registration of a Community trade mark. Article 152 Publication 1. The Office shall publish the date of registration of a mark designating the European Community pursuant to Article 3 (4) of the Madrid Protocol or the date of the subsequent designation of the European Community pursuant to Article 3ter (2) of the Madrid Protocol, the language of filing of the international application and the second language indicated by the applicant, the number of the international registration and the date of publication of such registration in the Gazette published by the International Bureau, a reproduction of the mark and the numbers of the classes of the goods or services in respect of which protection is claimed. 2. If no refusal of protection of an international registration designating the European Community has been notified in accordance with Article 5(1) and (2) of the Madrid Protocol or if any such refusal has been withdrawn, the Office shall publish this fact, together with the number of the international registration and, where applicable, the date of publication of such registration in the Gazette published by the International Bureau. Article 153 Seniority 1. The applicant for an international registration designating the European Community may claim, in the international application, the seniority of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, as provided for in Article 34. 2. The holder of an international registration designating the European Community may, as from the date of publication of the effects of such registration pursuant to Article 152(2), claim at the Office the seniority of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, as provided for in Article 35. The Office shall notify the International Bureau accordingly.

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Article 154 Examination as to absolute grounds for refusal International registrations designating the European Community shall be subject to examination as to absolute grounds for refusal in the same way as applications for Community trade marks. Protection of an international registration shall not be refused before the holder of the international registration has been allowed the opportunity to renounce or limit the protection in respect of the European Community or of submitting his observations. Refusal of protection shall take the place of refusal of a Community trade mark application. Where protection of an international registration is refused by a decision under this Article which has become final or where the holder of the international registration has renounced the protection in respect of the European Community pursuant to paragraph 2, the Office shall refund the holder of the international registration a part of the individual fee to be laid down in the Implementing Regulation.

Article 155 Search 1. Once the Office has received a notification of an international registration designating the European Community, it shall draw up a Community search report as provided for in Article 38(1).

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Appendix 3: Council Regulation (EC) 207/2009 2. As soon as the Office has received a notification of an international registration designating the European Community, the Office shall transmit a copy thereof to the central industrial property office of each Member State which has informed the Office of its decision to operate a search in its own register of trade marks as provided for in Article 38(2). 3. Article 38(3) to (6) shall apply mutatis mutandis. 4. The Office shall inform the proprietors of any earlier Community trade marks or Community trade mark applications cited in the Community search report of the publication of the international registration designating the European Community as provided for in Article 152(1).

1. 2.

3. 4.

Article 156 Opposition International registration designating the European Community shall be subject to opposition in the same way as published Community trade mark applications. Notice of opposition shall be filed within a period of three months which shall begin six months following the date of the publication pursuant to Article 152(1). The opposition shall not be treated as duly entered until the opposition fee has been paid. Refusal of protection shall take the place of refusal of a Community trade mark application. Where protection of an international registration is refused by a decision under this Article which has become final or where the holder of the international registration has renounced the protection in respect of the European Community prior to a decision under this Article which has become final, the Office shall refund the holder of the international registration a part of the individual fee to be laid down in the Implementing Regulation.

Article 157 Replacement of a Community trade mark by an international registration The Office shall, upon request, enter a notice in the Register that a Community trade mark is deemed to have been replaced by an international registration in accordance with Article 4bis of the Madrid Protocol. Article 158 Invalidation of the effects of an international registration 1. The effects of an international registration designating the European Community may be declared invalid. 2. The application for invalidation of the effects of an international registration designating the European Community shall take the place of an application for a declaration of revocation as provided for in Article 51 or for a declaration of invalidity as provided for in Article 52 or Article 53. Article 159 Conversion of a designation of the European Community through an international registration into a national trade mark application or into a designation of Member States 1. Where a designation of the European Community through an international registration has been refused or ceases to have effect, the holder of the international registration may request the conversion of the designation of the European Community: (a) into a national trade mark application pursuant to Articles 112, 113 and 114; (b) into a designation of a Member State party to the Madrid Protocol or the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 14 April 1891, as revised and amended (hereafter referred to as the ‘Madrid Agreement’), provided that on the date when conversion was requested it was possible to have designated that Member State directly under the Madrid Protocol or the Madrid Agreement. Articles 112, 113 and 114 shall apply. 2. The national trade mark application or the designation of a Member State party to the Madrid Protocol or the Madrid Agreement resulting from the conversion of the designation of the European Community through an international registration shall enjoy, in respect of the Member State concerned, the date of the international registration pursuant to Article 3(4)

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Appendix 3: Council Regulation (EC) 207/2009 of the Madrid Protocol or the date of the extension to the European Community pursuant to Article 3ter (2) of the Madrid Protocol if the latter was made subsequently to the international registration, or the date of priority of that registration and, where appropriate, the seniority of a trade mark of that State claimed under Article 153. 3. The request for conversion shall be published. Article 160 Use of a mark subject of an international registration For the purposes of applying Article 15(1), Article 42(2), Article 51(1)(a) and Article 57(2), the date of publication pursuant to Article 152(2) shall take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the European Community must be put to genuine use in the Community. Article 161 Transformation 1. Subject to paragraph 2, the provisions applicable to Community trade mark applications shall apply mutatis mutandis to applications for transformation of an international registration into a Community trade mark application pursuant to Article 9quinquies of the Madrid Protocol. 2. When the application for transformation relates to an international registration designating the European Community the particulars of which have been published pursuant to Article 152(2), Articles 37 to 42 shall not apply.

Title XIV Final Provisions Article 162 Community implementing provisions 1. The rules implementing this Regulation shall be adopted in an Implementing Regulation. 2. In addition to the fees provided for in the preceding Articles, fees shall be charged, in accordance with the detailed rules of application laid down in the Implementing Regulation, in the cases listed below: (a) late payment of the registration fee; (b) issue of a copy of the certificate of registration; (c) registration of a licence or another right in respect of a Community trade mark; (d) registration of a licence or another right in respect of an application for a Community trade mark; (e) cancellation of the registration of a licence or another right; (f) alteration of a registered Community trade mark; (g) issue of an extract from the Register; (h) inspection of the files; (i) issue of copies of file documents; (j) issue of certified copies of the application; (k) communication of information in a file; (l) review of the determination of the procedural costs to be refunded. 3. The Implementing Regulation and the rules of procedure of the Boards of Appeal shall be adopted and amended in accordance with the procedure referred to in Article 163(2). Article 163 Establishment of a committee and procedure for the adoption of implementing regulations 1. The Commission shall be assisted by a committee referred to as the ‘Committee on Fees, Implementation Rules and the Procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (trade marks and designs)’. 2. Where reference is made to this paragraph, Articles 5 and 7 of Decision 1999/468/EC shall apply. The period laid down in Article 5(6) of Decision 1999/468/EC shall be set at three months.

387

Appendix 3: Council Regulation (EC) 207/2009 Article 164 Compatibility with other Community legal provisions This Regulation shall not affect Council Regulation (EC) No 510/2006, and in particular Article 14 thereof.

1.

2.

3.

4.

5.

Article 165 Provisions relating to the enlargement of the Community As from the date of accession of Bulgaria, the Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Romania, Slovenia and Slovakia (hereinafter referred to as ‘new Member State(s)’), a Community trade mark registered or applied for pursuant to this Regulation before the respective dates of accession shall be extended to the territory of those Member States in order to have equal effect throughout the Community. The registration of a Community trade mark which is under application at the date of accession may not be refused on the basis of any of the absolute grounds for refusal listed in Article 7(1), if these grounds became applicable merely because of the accession of a new Member State. Where an application for the registration of a Community trade mark has been filed during the six months prior to the date of accession, notice of opposition may be given pursuant to Article 41 where an earlier trade mark or another earlier right within the meaning of Article 8 was acquired in a new Member State prior to accession, provided that it was acquired in good faith and that the filing date or, where applicable, the priority date or the date of acquisition in the new Member State of the earlier trade mark or other earlier right precedes the filing date or, where applicable, the priority date of the Community trade mark applied for. A Community trade mark as referred to in paragraph 1 may not be declared invalid: (a) pursuant to Article 52 if the grounds for invalidity became applicable merely because of the accession of a new Member State; (b) pursuant to Article 53(1) and (2) if the earlier national right was registered, applied for or acquired in a new Member State prior to the date of accession. The use of a Community trade mark as referred to in paragraph 1 may be prohibited pursuant to Articles 110 and 111, if the earlier trade mark or other earlier right was registered, applied for or acquired in good faith in the new Member State prior to the date of accession of that State; or, where applicable, has a priority date prior to the date of accession of that State.

Article 166 Repeal Regulation (EC) No 40/94, as amended by the instruments set out in Annex I, is repealed. References to the repealed Regulation shall be construed as references to this Regulation and shall be read in accordance with the correlation table in Annex II. Article 167 Entry into force 1. This Regulation shall enter into force on the 20th day following its publication in the Official Journal of the European Union. 2. The Member States shall within three years following entry into force of Regulation (EC) No 40/94 take the necessary measures for the purpose of implementing Articles 95 and 114. This Regulation shall be binding in its entirety and directly applicable in all Member States. Done at Brussels, 26 February 2009. For the Council The President I. LANGER

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Appendix 3: Council Regulation (EC) 207/2009

ANNEX I R EPE A LED R EGUL ATION W ITH LIST OF ITS SUCCESSIV E A MENDMENTS (R EFER R ED TO IN A RTICLE 166) Council Regulation (EC) No 40/94 (OJ L 11, 14.1.1994, p. 1) Council Regulation (EC) No 3288/94 (OJ L 349, 31.12.1994, p. 83) Council Regulation (EC) No 807/2003

Only point 48 of Annex III

(OJ L 122, 16.5.2003, p. 36) Council Regulation (EC) No 1653/2003 (OJ L 245, 29.9.2003, p. 36) Council Regulation (EC) No 1992/2003 (OJ L 296, 14.11.2003, p. 1) Council Regulation (EC) No 422/2004 (OJ L 70, 9.3.2004, p. 1) Council Regulation (EC) No 1891/2006

Only Article 1

(OJ L 386, 29.12.2006, p. 14) Annex II, Part 4 (C)(I) of the 2003 Act of Accession (OJ L 236, 23.9.2003, p. 342) Annex III, Point 1.I of the 2005 Act of Accession (OJ L 157, 21.6.2005, p. 231)

ANNEX II COR R EL ATION TA BLE Regulation (EC) No 40/94

This Regulation

Articles 1 to 14

Articles 1 to 14

Article 15(1)

Article 15(1), first subparagraph

Article 15(2), introductory words

Article 15(1), second subparagraph, introductory words

Article 15(2), point a

Article 15(1), second subparagraph, point a

Article 15(2), point b

Article 15(1), second subparagraph, point b

Article 15(3)

Article 15(2)

Articles 16 to 36

Articles 16 to 36

Article 37

—

Article 38

Article 37

Article 39

Article 38

Article 40

Article 39

Article 41

Article 40

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Appendix 3: Council Regulation (EC) 207/2009 Regulation (EC) No 40/94

This Regulation

Article 42

Article 41

Article 43

Article 42

Article 44

Article 43

Article 44a

Article 44

Articles 45 to 48

Articles 45 to 48

Article 48a

Article 49

Article 49

Article 50

Article 50

Article 51

Article 51

Article 52

Article 52

Article 53

Article 53

Article 54

Article 54

Article 55

Article 55

Article 56

Article 56

Article 57

Article 57

Article 58

Article 58

Article 59

Article 59

Article 60

Article 60

Article 61

Article 60a

Article 62

Article 61

Article 63

Article 62

Article 64

Article 63

Article 65

Article 64

Article 66

Article 65

Article 67

Article 66

Article 68

Article 67

Article 69

Article 68

Article 70

Article 69

Article 71

Article 70

Article 72

Article 71

Article 73

Article 72

Article 74

Article 73

Article 75

Article 74

Article 76

Article 75

Article 77

Article 76

Article 78

Article 77

Article 79

Article 77a

Article 80

Article 78

Article 81

Article 78a

Article 82

Article 79

Article 83

Article 80

Article 84

390

Appendix 3: Council Regulation (EC) 207/2009 Regulation (EC) No 40/94

This Regulation

Article 81

Article 85

Article 82

Article 86

Article 83

Article 87

Article 84

Article 88

Article 85

Article 89

Article 86

Article 90

Article 87

Article 91

Article 88

Article 92

Article 89

Article 93

Article 90

Article 94

Article 91

Article 95

Article 92

Article 96

Article 93

Article 97

Article 94(1), introductory wording

Article 98(1), introductory wording

Article 94(1), first indent

Article 98(1)(a)

Article 94(1), second indent

Article 98(1)(b)

Article 94(2)

Article 98(2)

Article 95

Article 99

Article 96

Article 100

Article 97

Article 101

Article 98

Article 102

Article 99

Article 103

Article 100

Article 104

Article 101

Article 105

Article 102

Article 106

Article 103

Article 107

Article 104

Article 108

Article 105

Article 109

Article 106

Article 110

Article 107

Article 111

Article 108

Article 112

Article 109

Article 113

Article 110

Article 114

Article 111

Article 115

Article 112

Article 116

Article 113

Article 117

Article 114

Article 118

Article 115

Article 119

Article 116

Article 120

Article 117

Article 121

Article 118

Article 122

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Appendix 3: Council Regulation (EC) 207/2009 Regulation (EC) No 40/94

This Regulation

Article 118a

Article 123

Article 119

Article 124

Article 120

Article 125

Article 121(1) and (2)

Article 126(1) and (2)

Article 121(3)

—

Article 121(4)

Article 126(3)

Article 121(5)

Article 126(4)

Article 121(6)

Article 126(5)

Article 122

Article 127

Article 123

Article 128

Article 124

Article 129

Article 125

Article 130

Article 126

Article 131

Article 127

Article 132

Article 128

Article 133

Article 129

Article 134

Article 130

Article 135

Article 131

Article 136

Article 132

Article 137

Article 133

Article 138

Article 134

Article 139

Article 135

Article 140

Article 136

Article 141

Article 137

Article 142

Article 138

Article 143

Article 139

Article 144

Article 140

Article 145

Article 141

Article 146

Article 142

Article 147

Article 143

Article 148

Article 144

Article 149

Article 145

Article 150

Article 146

Article 151

Article 147

Article 152

Article 148

Article 153

Article 149

Article 154

Article 150

Article 155

Article 151

Article 156

Article 152

Article 157

Article 153

Article 158

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Appendix 3: Council Regulation (EC) 207/2009 Regulation (EC) No 40/94

This Regulation

Article 154

Article 159

Article 155

Article 160

Article 156

Article 161

Article 157(1)

Article 162(1)

Article 157(2), introductory wording

Article 162(2), introductory wording

Article 157(2)(2)

Article 162(2)(a)

Article 157(2)(3)

Article 162(2)(b)

Article 157(2)(5)

Article 162(2)(c)

Article 157(2)(6)

Article 162(2)(d)

Article 157(2)(7)

Article 162(2)(e)

Article 157(2)(8)

Article 162(2)(f)

Article 157(2)(9)

Article 162(2)(g)

Article 157(2)(10)

Article 162(2)(h)

Article 157(2)(11)

Article 162(2)(i)

Article 157(2)(12)

Article 162(2)(j)

Article 157(2)(13)

Article 162(2)(k)

Article 157(2)(14)

Article 162(2)(l)

Article 157(3)

Article 162(3)

Article 158

Article 163

Article 159

Article 164

Article 159a(1), (2) and (3)

Article 165(1), (2) and (3)

Article 159a(4), initial wording

Article 165(4), initial wording

Article 159a(4), first indent

Article 165(4)(a)

Article 159a(4), second indent

Article 165(4)(b)

Article 159a(5)

Article 165(5)

—

Article 166

Article 160(1)

Article 167(1)

Article 160(2)

Article 167(2)

Article 160(3) and (4)

—

—

Annex I

—

Annex II

1 OJC 146E, 12.6.2008, p. 79. 2 OJL 11, 14.1.1994, p. 1. 3 See Annex I. 4 OJ L 12, 16.1.2001, p. 1. 5 OJ L 184, 17.7.1999, p. 23. 6 OJ L 93, 31.3.2006, p. 12. 7 OJ L 110, 20.4.2001, p. 28. 8 OJ L 125, 5.5.2001, p. 15. 9 OJ L 145, 31.5.2001, p. 43. 10 OJ L 3, 5.1.2002, p. 1.

393

APPENDI X 4

The Trade Marks Rules 2008 S.I. 2008 No. 1797 (as amended)* Made --Laid before Parliament Coming into force --

7th July 2008 8th July 2008 1st October 2008

CONTENTS Preliminary 1. 2. 3. 4.

Citation and commencement Interpretation Forms and directions of the registrar; section 66 Requirement as to fees

Application for registration 5. 6. 7. 8. 9. 10. 11. 12. 13. 14. 15.

Application for registration; section 32 (Form TM3) Claim to priority; sections 35 & 36 Classification of goods and services; section 34 Application may relate to more than one class and shall specify the class (Form TM3A) Determination of classification Prohibition on registration of mark consisting of arms; section 4 Address for service Failure to provide an address for service Deficiencies in application; section 32 Notifying results of search Compliance with request for expedited examination

Publication, observations, oppositions and registration 16. Publication of application for registration; section 38(1) 17. Opposition proceedings: filing of notice of opposition; section 38(2) (Form TM7) 17A. Opposition proceedings: filing of notice of fast track opposition; section 38(2) (Form TM7F). 18. Opposition proceedings: filing of counter-statement and cooling off period (Forms TM8, TM9c & TM9t) 19. Opposition proceedings: preliminary indication (Form TM53) 20. Opposition proceedings: evidence rounds 21. Procedure for intervention 22. Observations on application to be sent to applicant; section 38(3) 23. Publication of registration; section 40

Amendment of application 24. 25.

Amendment of application; section 39 (Form TM21) Amendment of application after publication; section 39 (Form TM7)

* See especially Trade Marks (Fast Track Opposition) (Amendment) Rules 2013/2235, and the Trade Marks and Registered Designs (Amendment) Rules 2013/444.

395

Appendix 4: Trade Mark Rules 2008 Division, merger and series of marks 26. Division of application; section 41 (Form TM12) 27. Merger of separate applications or registrations; section 41 (Form TM17) 28. Registration of a series of trade marks; section 41 (Form TM12)

Collective and certification marks 29. Filing of regulations for collective and certification marks; Schedules 1 & 2 (Form TM35) 30. Amendment of regulations of collective and certification marks; Schedule 1 paragraph 10 and Schedule 2 paragraph 11 (Forms TM36 & TM7) 31. Registration subject to disclaimer or limitation; section 13 32. Alteration of registered trade marks; section 44 (Forms TM25 & TM7) 33. Surrender of registered trade mark; section 45 (Forms TM22 & TM23)

Renewal and restoration 34. 35. 36. 37.

Reminder of renewal of registration; section 43 Renewal of registration; section 43 (Form TM11) Delayed renewal and removal of registration; section 43 (Form TM11) Restoration of registration; section 43 (Form TM13)

Revocation, invalidation and rectification 38. Application for revocation (on the grounds of non-use); section 46(1)(a) or (b) (Forms TM8(N) & TM26(N)) 39. Application for revocation (on grounds other than non-use); section 46(1)(c) or (d) (Forms TM8 & TM26(O)) 40. Application for revocation (on grounds other than non-use): evidence rounds 41. Application for invalidation: filing of application and counter-statement; section 47 (Forms TM8 & TM26(I)) 42. Application for invalidation: evidence rounds 43. Setting aside cancellation of application or revocation or invalidation of registration; (Form TM29) 44. Procedure on application for rectification; section 64 (Form TM26(R)) 45. Procedure for intervention

The register 46. 47. 48. 49. 50. 51. 52. 53.

Form of register; section 63(1) Entry in register of particulars of registered trade marks; section 63(2) (Form TM24) Entry in register of particulars of registrable transactions; section 25 Application to register or give notice of transaction; sections 25 & 27(3) (Form TM16, TM24, TM50 & TM51) Public inspection of register; section 63(3) Supply of certified copies etc; section 63(3) (Form TM31R) Request for change of name or address in register; section 64(4) (Form TM21) Removal of matter from register; sections 25(5)(b) and 64(5) (Form TM7)

Change of classification 54. Change of classification; sections 65(2) & 76(1) 55. Opposition to proposals; sections 65(3), (5) & 76(1) (Form TM7)

Request for information, inspection of documents and confidentiality 56. 57. 58. 59.

Request for information; section 67(1) (Form TM31C) Information available before publication; section 67(2) Inspection of documents; sections 67 & 76(1) Confidential documents

396

Appendix 4: Trade Mark Rules 2008 Agents 60. Proof of authorisation of agent may be required; section 82 (Form TM33) 61. Registrar may refuse to deal with certain agents; section 88

Proceedings before and decision of registrar, evidence and costs 62. 63. 64. 65. 66. 67. 68. 69.

General powers of registrar in relation to proceedings Decisions of registrar to be taken after hearing Evidence in proceedings before the registrar; section 69 Registrar to have power of an official referee; section 69 Hearings before registrar to be in public Costs of proceedings; section 68 Security for costs; section 68 Decision of registrar (Form TM5)

Appeals 70. 71. 72. 73.

Decisions subject to appeal; section 76(1) Appeal to person appointed; section 76 Determination whether appeal should be referred to court; section 76(3) Hearing and determination of appeal; section 76(4)

Correction of irregularities, calculation and extension of time 74. 75. 76. 77.

Correction of irregularities in procedure Interrupted day Delays in communication services Alteration of time limits (Form TM9)

Filing of documents, hours of business, Trade Marks Journal and translations 78. 79. 80. 81. 82.

Filing of documents by electronic means Electronic communications Directions on hours of business; section 80 Trade Marks Journal; section 81 Translations

Transitional provisions and revocations 83. Revocation of previous rules and proceedings commenced under previous rules Schedule 1—Extension of time limits Schedule 2—Revocations The Secretary of State makes the following rules in exercise of the powers conferred upon the Secretary of State by sections 4(4), 13(2), 25(1), (5) and (6), 34(1), 35(5), 38(1) and (2), 39(3), 40(4), 41(1) and (3), 43(2), (3), (5) and (6), 44(3), 45(2), 63(2) and (3), 64(4), 65(1) and (2), 66(2), 67(1) and (2), 68(1) and (3), 69, 76(1), 78, 80(3), 81, 82 and 88 of, paragraph 6(2) of Schedule 1 to, and paragraph 7(2) of Schedule 2 to, the Trade Marks Act 1994(a). In accordance with section 8 of the Tribunals and Inquiries Act 1992(b), the Secretary of State has consulted the Administrative Justice and Tribunals Council before making these Rules. (a) 1994 c.26; section 69 was amended by the Constitutional Reform Act 2005 (c.4), s 59(5), schedule 11, Part 4, paragraph 31, as from a day to be appointed. (b) 1992 c.53; the definition of “Council” has been amended by the Tribunals, Courts and Enforcement Act 2007 (c.15), Schedule 8, paragraph 30.

397

Appendix 4: Trade Mark Rules 2008

Preliminary Citation and commencement 1. These Rules may be cited as the Trade Marks Rules 2008 and shall come into force on 1st October 2008.

Interpretation 2—(1) In these Rules— “fast track opposition” means an opposition; (a) brought solely on grounds under section 5(1) or 5 (2) of the Act, (b) based on no more than 3 earlier trade marks, each of which is registered in the UK or in the EU, or is protected in one or another of those territories as an international trade mark (UK) or (EU), (c) where proof of use of the earlier marks can be provided with the notice of opposition, and (d) which the opponent considers may be determined without the need for further evidence and without an oral hearing; “the Act” means the Trade Marks Act 1994; “the Journal” means the Trade Marks Journal published in accordance with rule 81; “the Nice Agreement” means the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15th June 1957(a), which was last amended on 28th September 1979; “the Nice Classification” means the system of classification under the Nice Agreement(b); “the Office” means the Patent Office which operates under the name “Intellectual Property Office”; “send” includes give; “specification” means the statement of goods or services in respect of which a trade mark is registered or proposed to be registered; “transformation application” means an application to register a trade mark under the Act where that mark was the subject of an international registration prior to that registration being cancelled. (2) In these Rules a reference to a section is a reference to that section in the Act and a reference to a form is a reference to that form as published under rule 3. (3) In these Rules references to the filing of any application, notice or other document, unless the contrary intention appears, are to be construed as references to its being delivered to the registrar at the Office.

Forms and directions of the registrar; section 66 3— (1) Any forms required by the registrar to be used for the purpose of registration of a trade mark or any other proceedings before the registrar under the Act pursuant to section 66 and any directions with respect to their use shall be published on the Office website and any amendment or modification of a form or of the directions with respect to its use shall also be published on the Office website. (2) Except in relation to Forms TM6 and TM7A a requirement under this rule to use a form as published is satisfied by the use either of a replica of that form or of a form which is acceptable to the registrar and contains the information required by the form as published and complies with any directions as to the use of such a form.

398

Appendix 4: Trade Mark Rules 2008 Requirement as to fees 4. — (1) The fees to be paid in respect of any application, registration or any other matter under the Act and these Rules shall be those (if any) prescribed in relation to such matter by rules under section 79 (fees).

(a) Cmnd 6898. (b) The current version of the classification is the Ninth Edition which entered into force on 1st January 2007 and is available on the WIPO website.

(2) Any form required to be filed with the registrar in respect of any specified matter shall be subject to the payment of the fee (if any) prescribed in respect of that matter by those rules.

Application for registration Application for registration; section 32 (Form TM3) 5—(1)

An application for the registration of a trade mark (other than a transformation application, which shall be filed on Form TM4) shall be filed on Form TM3 or, where the application is filed in electronic form using the filing system provided on the Office website, on Form e-TM3. (1A) Where an application is filed on Form TM3 (a “standard application”) the application shall be subject to the payment of the standard application fee and such class and series fees as may be appropriate. (1B) Where an application is filed on Form e-TM3 (an “electronic application”) the application shall be subject to the payment of the e-filed application fee and such class and series fees as may appropriate, which shall be payable at the time the electronic application is made and if they are not so paid the application shall be subject to the payment of the standard application fee referred to in paragraph (1A) and such class and series fees as may be appropriate. (2) Subject to paragraph 6, where an application is for the registration of a single trade mark, an applicant may request the registrar to undertake an expedited examination of the application. (3) A request for expedited examination shall be made on Form e-TM3, and shall be subject to payment of the prescribed fee. (4) Where an applicant makes a request for expedited examination, the application fee and any class fees payable in respect of the application shall be payable at the time the application is made and accordingly rule 13 shall not apply insofar as it relates to the failure of an application to satisfy the requirements of section 32(4). (5) In this rule and rule 15 a “request for expedited examination” means a request that, following an examination under section 37, the registrar notify the applicant within a period of ten business days (as specified in a direction given by the registrar under section 80) beginning on the business day after the date of filing of the application for registration whether or not it appears to the registrar that the requirements for registration are met. (6) Where it appears to the registrar that the period (the “routine period”) within which applicants are routinely notified of the outcome of an examination under section 37 is equal to or less than the period specified in paragraph (5), the registrar may suspend the right of applicants to file a request for expedited examination until such time as the routine period exceeds the period specified in paragraph (5) and the registrar shall, in each case, publish a notice on the Office website to this effect.

Claim to priority; sections 35 & 36 6—(1)

Where a right to priority is claimed by reason of an application for protection of a trade mark duly filed in a Convention country under section 35 or in another country or territory in respect of which provision corresponding to that made by section 35 is made

399

Appendix 4: Trade Mark Rules 2008 under section 36 (an “overseas application”), the application for registration under rule 5 shall specify— (a) the number accorded to the overseas application by the registering or other competent authority of the relevant country; (b) the country in which the overseas application was filed; and (c) the date of filing. (2) The registrar may, in any particular case, by notice require the applicant to fi le, within such period of not less than one month as the notice may specify, such documentary evidence as the registrar may require certifying, or verifying to the satisfaction of the registrar, the date of the fi ling of the overseas application, the country or registering or competent authority, the representation of the mark and the goods or services covered by the overseas application.

Classification of goods and services; section 34 7—(1) The prescribed system of classification for the purposes of the registration of trade marks is the Nice Classification. (2) When a trade mark is registered it shall be classified according to the version of the Nice Classification that had effect on the date of application for registration.

Application may relate to more than one class and shall specify the class (Form TM3A) 8.—(1) An application may be made in more than one class of the Nice Classification. (2) Every application shall specify— (a) the class in the Nice Classification to which it relates; and (a) the goods or services which are appropriate to the class and they shall be described in such a way as to indicate clearly the nature of those goods or services and to allow them to be classified in the classes in the Nice Classification. (3) If the application relates to more than one class in the Nice Classification the specification contained in it shall set out the classes in consecutive numerical order and the specification of the goods or services shall be grouped accordingly. (4) If the specification contained in the application lists items by reference to a class in the Nice Classification in which they do not fall, the applicant may request, by filing Form TM3A, that the application be amended to include the appropriate class for those items, and upon the payment of such class fee as may be appropriate the registrar shall amend the application accordingly.

Determination of classification 9.—(1) Where an application does not satisfy the requirements of rule 8(2) or (3), the registrar shall send notice to the applicant. (2) A notice sent under paragraph (1) shall specify a period, of not less than one month, within which the applicant must satisfy those requirements. (3) Where the applicant fails to satisfy the requirements of rule 8(2) before the expiry of the period specified under paragraph (2), the application for registration, insofar as it relates to any goods or services which failed that requirement, shall be treated as abandoned. (4) Where the applicant fails to satisfy the requirements of rule 8(3) before the expiry of the period specified under paragraph (2), the application for registration shall be treated as abandoned.

Prohibition on registration of mark consisting of arms; section 4 10. Where having regard to matters coming to the notice of the registrar it appears to the registrar that a representation of any arms or insignia as is referred to in section 4(4) appears in a mark, the registrar shall refuse to accept an application for the registration of the mark unless satisfied that the consent of the person entitled to the arms has been obtained.

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Appendix 4: Trade Mark Rules 2008 Address for service 11.—(1) For the purposes of any proceedings under the Act or these Rules, an address for service shall be filed by— (a) an applicant for the registration of a trade mark; (b) any person who opposes the registration of a trade mark in opposition proceedings; (c) any person who applies for revocation, a declaration of invalidity or rectification under the Act; (d) the proprietor of the registered trade mark who opposes such an application. (2) The proprietor of a registered trade mark, or any person who has registered an interest in a registered trade mark, may fi le an address for service on Form TM33 or, in the case of an assignment of a registered trade mark, on Form TM16. (3) Where a person has provided an address for service under paragraph (1) or (2), that person may substitute a new address for service by notifying the registrar on Form TM33. (4) An address for service fi led under this Rule shall be an address in the United Kingdom, another EEA state or the Channel Islands.

Failure to provide an address for service 12—(1) Where— (a) a person has failed to file an address for service under rule 11(1); and (b) the registrar has sufficient information enabling the registrar to contact that person, the registrar shall direct that person to file an address for service. (2) Where a direction has been given under paragraph (1), the person directed shall, before the end of the period of one month beginning immediately after the date of the direction, fi le an address for service. (3) Paragraph (4) applies where— (a) a direction was given under paragraph (1) and the period prescribed by paragraph (2) has expired; or (b) the registrar had insufficient information to give a direction under paragraph (1), and the person has failed to provide an address for service. (4) Where this paragraph applies— (a) in the case of an applicant for registration of a trade mark, the application shall be treated as withdrawn; (b) in the case of a person opposing the registration of a trade mark, that person’s opposition shall be treated as withdrawn; (c) in the case of a person applying for revocation, a declaration of invalidity or rectification, that person’s application shall be treated as withdrawn; and (d) in the case of the proprietor opposing such an application, the proprietor shall be deemed to have withdrawn from the proceedings. (5) In this rule an “address for service” means an address which complies with the requirements of rule 11(4).

Deficiencies in application; section 32 13.—(1) Where an application for registration of a trade mark does not satisfy the requirements of section 32(2), (3) or (4) or rule 5(1), the registrar shall send notice to the applicant to remedy the deficiencies or, in the case of section 32(4), the default of payment. (2) A notice sent under paragraph (1) shall specify a period, of not less than 14 days, within which the applicant must remedy the deficiencies or the default of payment. (3) Where, before the expiry of the period specified under paragraph (2), the applicant— fails to remedy any deficiency notified to the applicant in respect of section 32(2), the application shall be deemed never to have been made; or

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Appendix 4: Trade Mark Rules 2008 (b) fails to remedy any deficiency notified to the applicant in respect of section 32(3) or rule 5(1) or fails to make payment as required by section 32(4), the application shall be treated as abandoned.

Notifying results of search 14.—(1) Where, following any search under article 4 of the Trade Marks (Relative Grounds) Order 2007(a), it appears to the registrar that the requirements for registration mentioned in section 5 are not met, the registrar shall notify this fact to— (a) the applicant; and (b) any relevant proprietor. (2) In paragraph (1), “relevant proprietor” means

(a) S.I. 2007/1976

the proprietor of a registered trade mark or international trade mark (UK) which is an earlier trade mark in relation to which it appears to the registrar that the conditions set out in section 5(1) or (2) obtain but does not include a proprietor who does not wish to be notified and who has notified the registrar to this effect. (3) References in paragraph (2) to the proprietor of a trade mark include a person who has applied for registration of a trade mark which, if registered, would be an earlier trade mark by virtue of section 6(1)(a) or (b). .... (7) Rule 63 shall not apply to any decision made in pursuance of this rule. (8) No decision made in pursuance of this rule shall be subject to appeal.

Compliance with request for expedited examination 15. Where the registrar receives a request for expedited examination under rule 5, the date on which the registrar shall be deemed to have notified the applicant whether or not it appears to the registrar that the requirements for registration are met shall be the date on which notice is sent to the applicant.

Publication, observations, oppositions and registration Publication of application for registration; section 38(1) 16. An application which has been accepted for registration shall be published in the Journal.

Opposition proceedings: filing of notice of opposition; section 38(2) (Form TM7) 17. —(1) Subject to Rule 17A, any notice to the registrar of opposition to the registration, including the statement of the grounds of opposition, shall be filed on Form TM7. (2) Unless paragraph (3) applies, the time prescribed for the purposes of section 38(2) shall be the period of two months beginning immediately after the date on which the application was published. (3) Th is paragraph applies where a request for an extension of time for the fi ling of Form TM7 has been made on Form TM7A, before the expiry of the period referred to in paragraph (2) and where this paragraph applies, the time prescribed for the purposes of section 38(2) in relation to any person having fi led a Form TM7A (or, in the case of a company, any subsidiary or holding company of that company or any other subsidiary of that holding company) shall be the period of three months beginning immediately after the date on which the application was published. (4) Where a person makes a request for an extension of time under paragraph (3), Form TM7A shall be fi led electronically using the fi ling system provided on the Office website or by such other means as the registrar may permit.

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Appendix 4: Trade Mark Rules 2008 (5) Where the opposition is based on a trade mark which has been registered, there shall be included in the statement of the grounds of opposition a representation of that mark and— (a) the details of the authority with which the mark is registered; (b) the registration number of that mark; (c) the goods and services in respect of which— (i) that mark is registered, and (ii) the opposition is based; and (d) where the registration procedure for the mark was completed before the start of the period of five years ending with the date of publication, a statement detailing whether during the period referred to in section 6A(3)(a) the mark has been put to genuine use in relation to each of the goods and services in respect of which the opposition is based or whether there are proper reasons for non-use (for the purposes of rule 20 this is the “statement of use”). (6) Where the opposition is based on a trade mark in respect of which an application for registration has been made, there shall be included in the statement of the grounds of opposition a representation of that mark and those matters set out in paragraph (5)(a) to (c), with references to registration being construed as references to the application for registration. (7) Where the opposition is based on an unregistered trade mark or other sign which the person opposing the application claims to be protected by virtue of any rule of law (in particular, the law of passing off ), there shall be included in the statement of the grounds of opposition a representation of that mark or sign and the goods and services in respect of which such protection is claimed. (8) The registrar shall send a copy of Form TM7 to the applicant and the date upon which this is sent shall, for the purposes of rule 18, be the “notification date”. (9) In this rule “subsidiary” and “holding company” have the same meaning as in the Companies Act 2006(a).

17A.— Opposition proceedings: filing of notice of fast track opposition; section 38(2) (Form TM7F) (1) A notice to the registrar of fast track opposition to the registration, including the statement of the grounds of opposition, may be fi led on Form TM7F. (2) A notice of fast track opposition to the registration fi led on Form TM7F and a notice of opposition to the registration fi led on Form TM7 shall constitute alternatives and an opponent shall not maintain more than one opposition against the same trade mark application. (3) Unless paragraph (4) applies, the time prescribed for the purposes of section 38(2) shall be the period of two months beginning immediately after the date on which the application was published. (4) Th is paragraph applies where a request for an extension of time for the fi ling of Form TM7 or TM7F has been made on Form TM7A, before the expiry of the period referred to in paragraph (3) and where this paragraph applies, the time prescribed for the purposes of section 38(2) in relation to any person having fi led a Form TM7A (or, in the case of a company, any subsidiary or holding company of that company or any other subsidiary of that holding company) shall be the period of three months beginning immediately after the date on which the application was published. (5) Forms TM7F and TM7A shall be fi led electronically using the fi ling system provided on the Office website or by such other means as the registrar may permit. (6) There shall be included in the statement of the grounds of opposition a representation of that mark and— (a) the details of the authority with which the mark is registered or protected; (b) the registration number of that mark;

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Appendix 4: Trade Mark Rules 2008 (c) the goods and services in respect of which— (i) that mark is registered, and (ii) the opposition is based; (d) the date of completion of the registration procedure or of granting protection to an international trade mark (UK) or (EU); and (e) where the registration or protection procedure for the mark was completed before the start of the period of five years ending with the date of publication, a statement detailing whether during the period referred to in section 6A(3)(a) 2 the mark has been put to genuine use in relation to each of the goods and services in respect of which the opposition is based. (7) Where the earlier mark is subject to proof of use under section 6A of the Act, the proof of use that the opponent wishes to rely upon shall be provided with the notice of fast track opposition. (8) The registrar shall send a copy of Form TM7F to the applicant and the date upon which this is sent shall, for the purposes of rule 18, be the “notification date”. (9) In this rule “subsidiary” and “holding company” have the same meaning as in the Companies Act 2006.

Opposition proceedings: filing of counter-statement and cooling off period (Forms TM8, TM9c & TM9t) 18.—(1) The applicant shall, within the relevant period, file a Form TM8, which shall include a counter-statement. (2) Where the applicant fails to fi le a Form TM8 or counter-statement within the relevant period, the application for registration, insofar as it relates to the goods and services in respect of which the opposition is directed, shall, unless the registrar otherwise directs, be treated as abandoned. (3) Unless either paragraph (4), (5) or (6) applies, the relevant period is the period of two months beginning immediately after the notification date. (4) Th is paragraph applies where— (a) the applicant and the person opposing the registration agree to an extension of time for the filing of Form TM8; (b) within the period of two months beginning immediately after the notification date, either party files Form TM9c requesting an extension of time for the filing of Form TM8; and (c) during the period beginning on the date Form TM9c was filed and ending nine months after the notification date, no notice to continue on Form TM9t is filed by the person opposing the registration and no request for a further extension of time for the filing of Form TM8 is filed on Form TM9e, and where this paragraph applies the relevant period is the period of nine months beginning immediately after the notification date. (5) Th is paragraph applies where— (a) 2006 c.46.

(a) a request for an extension of time for the filing of Form TM8 has been filed on Form TM9c in accordance with paragraph (4)(b); (b) during the period referred to in paragraph (4)(c), either party files Form TM9e requesting a further extension of time for the filing of Form TM8 which request includes a statement confirming that the parties are seeking to negotiate a settlement of the opposition proceedings; and (c) the other party agrees to the further extension of time for the filing of Form TM8,

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Appendix 4: Trade Mark Rules 2008 and where this paragraph applies the relevant period is the period of eighteen months beginning immediately after the notification date. (6) Th is paragraph applies where— (a) a request for an extension of time for the filing of Form TM8 has been filed on Form TM9c in accordance with paragraph (4)(b); and (b) the person opposing the registration has filed a notice to continue on Form TM9t, and where this paragraph applies the relevant period shall begin on the notification date and end one month after the date on which Form TM9t was fi led or two months beginning immediately after the notification date, whichever is the later. (7) The registrar shall send a copy of Form TM8 to the person opposing the registration.

Opposition proceedings: preliminary indication (Form TM53) 19.—(1) This rule applies if— (a) the opposition or part of it is based on the relative grounds of refusal set out in section 5(1) or (2); and (b) the registrar has not indicated to the parties that the registrar thinks that it is inappropriate for this rule to apply. (1A) Th is rule shall not apply to fast track oppositions. (2) After considering the statement of the grounds of opposition and the counter-statement the registrar shall send notice to the parties (“the preliminary indication”) stating whether it appears to the registrar that— (a) registration of the mark should not be refused in respect of all or any of the goods and services listed in the application on the grounds set out in section 5(1) or (2); or (b) registration of the mark should be refused in respect of all or any of the goods and services listed in the application on the grounds set out in section 5(1) or (2). (3) The date upon which the preliminary indication is sent shall be the “indication date”. (4) Where it appeared to the registrar under paragraph (2) that registration of the mark should not be refused in respect of all or any of the goods or services listed in the application on the grounds set out in section 5(1) or (2), the person opposing the registration shall, within one month of the indication date, fi le a notice of intention to proceed with the opposition based on those grounds by fi ling a Form TM53, otherwise that person’s opposition to the registration of the mark in relation to those goods or services on the grounds set in section 5(1) or (2) shall be deemed to have been withdrawn. (5) Where it appeared to the registrar under paragraph (2) that registration of the mark should be refused in respect of all or any of the goods or services listed in the application on the grounds set out in section 5(1) or (2), the applicant shall, within one month of the indication date, fi le a notice of intention to proceed on Form TM53, otherwise the applicant shall be deemed to have withdrawn the request to register the mark in respect of the goods or services for which the registrar indicated registration should be refused. (6) A person who fi les a Form TM53 shall, at the same time, send a copy to all other parties to the proceedings. (7) The registrar need not give reasons for the preliminary indication nor shall the preliminary indication be subject to appeal.

Opposition proceedings: evidence rounds 20—(1) Where— (a) Form TM53 has been filed by either party; (b) the opposition or part of it is based on grounds other than those set out in section 5(1) or (2) and the applicant has fi led a Form TM8; or (c) the registrar has indicated to the parties that it is inappropriate for rule 19 to apply,

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Appendix 4: Trade Mark Rules 2008 the registrar shall specify the periods within which evidence and submissions may be filed by the parties. (2) Where— (a) the opposition is based on an earlier trade mark of a kind falling within section 6(1)(c); or (b) the opposition or part of it is based on grounds other than those set out in section 5(1) or (2); or (c) the truth of a matter set out in the statement of use is either denied or not admitted by the applicant, the person opposing the registration (“the opposer”) shall file evidence supporting the opposition. (3) Where the opposer fi les no evidence under paragraph (2), the opposer shall be deemed to have withdrawn the opposition to the registration to the extent that it is based on— (a) the matters in paragraph (2)(a) or (b); or (b) an earlier trade mark which has been registered and which is the subject of the statement of use referred to in paragraph (2)(c). (4) The registrar may, at any time, give leave to either party to fi le evidence upon such terms as the registrar thinks fit. (5) Paragraphs (1)-(3) of this Rule shall not apply to fast track oppositions but paragraph (4) shall apply.

Procedure for intervention 21—(1) If the opposition or part of it is based on the relative grounds for refusal set out in section 5(1), (2) or (3), any person in paragraph (3) may file an application to the registrar on Form TM27 for leave to intervene and the registrar may, after hearing the parties concerned if so required, refuse such leave or grant leave upon such terms and conditions (including any undertaking as to costs) as the registrar thinks fit. (2) Any person granted leave to intervene shall, subject to any terms and conditions imposed in respect of the intervention, be treated as a party to the proceedings for the purposes of the application of the provisions of rules 19, 20 and 62 to 73. (3) The persons referred to in paragraph (1) are— (a) where the opposition is based on an earlier trade mark, a licensee of that mark; and (b) where the opposition is based on an earlier collective mark or certification mark, an authorised user of that mark.

Observations on application to be sent to applicant; section 38(3) 22. The registrar shall send to the applicant a copy of any document containing observations made under section 38(3).

Publication of registration; section 40 23. On the registration of the trade mark the registrar shall publish the registration on the Office website, specifying the date upon which the trade mark was entered in the register.

Amendment of application Amendment of application; section 39 (Form TM21) 24. A request for an amendment of an application to correct an error or to change the name or address of the applicant or in respect of any amendment requested after publication of the application shall be made on Form TM21.

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Appendix 4: Trade Mark Rules 2008 Amendment of application after publication; section 39 (Form TM7) 25.— (1) Where, pursuant to section 39, a request is made for amendment of an application which has been published in the Journal and the amendment affects the representation of the trade mark or the goods or services covered by the application, the amendment or a statement of the effect of the amendment shall also be published in the Journal. (2) Any person claiming to be affected by the amendment may, within one month of the date on which the amendment or a statement of the effect of the amendment was published under paragraph (1), give notice to the registrar of objection to the amendment on Form TM7 which shall include a statement of the grounds of objection which shall, in particular, indicate why the amendment would not fall within section 39(2). (3) The registrar shall send a copy of Form TM7 to the applicant and the procedure in rules 17, 18 and 20 shall apply to the proceedings relating to the objection to the amendment as they apply to proceedings relating to opposition to an application for registration, but with the following modifications— (a) any reference to— (i) an application for registration shall be construed as a reference to a request for amendment of an application, (ii) the person opposing the registration shall be construed as a reference to the person objecting to the amendment of an application, (iii) the opposition shall be construed as a reference to the objection; (b) the relevant period, referred to in rule 18(1), shall for these purposes be the period of two months beginning immediately after the date upon which the registrar sent a copy of Form TM7 to the applicant; and (c) rules 18(3) to (6), 20(2) and (3) shall not apply.

Division, merger and series of marks Division of application; section 41 (Form TM12) 26. —(1) At any time before registration an applicant may send to the registrar a request on Form TM12 to divide the specification of the application for registration (the original application) into two or more separate applications (divisional applications), indicating for each division the specification of goods or services. (2) Each divisional application shall be treated as a separate application for registration with the same fi ling date as the original application. (3) Where the request to divide an application is sent after publication of the application, any objections in respect of, or opposition to, the original application shall be taken to apply to each divisional application and shall be proceeded with accordingly. (4) Upon division of an original application in respect of which notice has been given to the registrar of particulars relating to the grant of a licence, or a security interest or any right in or under it, the notice and the particulars shall be deemed to apply in relation to each of the applications into which the original application has been divided.

Merger of separate applications or registrations; section 41 (Form TM17) 27.

.... (3) The proprietor of two or more registrations of a trade mark, the applications relating to which were fi led on the same date, may request the registrar on Form TM17 to merge them into a single registration and the registrar shall, if satisfied that the registrations are in respect of the same trade mark, merge them into a single registration.

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Appendix 4: Trade Mark Rules 2008 (3A) No application under paragraph (3) may be granted in respect of the registration of a trade mark which— (a) is the subject of proceedings for its revocation or invalidation; or (b) is the subject of an international registration within the meaning of article 2 of the Trade Marks (International Registration) Order 2008 which has not become independent of the trade mark as provided for in accordance with Article 6 of the Madrid Protocol. (4) Where any registration of a trade mark to be merged under paragraph (3) is subject to a disclaimer or limitation, the merged registration shall also be restricted accordingly. (5) Where any registration of a trade mark to be merged under paragraph (3) has had registered in relation to it particulars relating to the grant of a licence or a security interest or any right in or under it, or of any memorandum or statement of the effect of a memorandum, the registrar shall enter in the register the same particulars in relation to the merged registration. (6) The date of registration of the merged registration shall, where the separate registrations bear different dates of registration, be the latest of those dates.

Registration of a series of trade marks; section 41 (Form TM12) 28.—(1)

An application may be made in accordance with rule 5 for the registration of a series of trade marks in a single registration provided that the series comprises of no more than six trade marks. (1A) Where an application for registration of a series of trade marks comprises three or more trade marks, the application shall be subject to the payment of the prescribed fee for each trade mark in excess of two trade marks. (2) Following an application under paragraph (1) the registrar shall, if satisfied that the marks constitute a series, accept the application. .... (5) At any time the applicant for registration of a series of trade marks or the proprietor of a registered series of trade marks may request the deletion of a mark in that series and, following such request, the registrar shall delete the mark accordingly. (6) Where under paragraph (5) the registrar deletes a trade mark from an application for registration, the application, in so far as it relates to the deleted mark, shall be treated as withdrawn.

Collective and certification marks Filing of regulations for collective and certification marks; Schedules 1 & 2 (Form TM35) 29. Where an application for registration of a collective or certification mark is filed, the applicant shall, within such period of not less than three months as the registrar may specify, file Form TM35 accompanied by a copy of the regulations governing the use of the mark.

Amendment of regulations of collective and certification marks; Schedule 1 paragraph 10 and Schedule 2 paragraph 11 (Forms TM36 & TM7) 30.—(1) An application for the amendment of the regulations governing the use of a registered collective or certification mark shall be filed on Form TM36. (2) Where it appears to be expedient to the registrar that the amended regulations should be made available to the public the registrar shall publish a notice in the Journal indicating where copies of the amended regulations may be inspected.

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Appendix 4: Trade Mark Rules 2008 (3) Any person may, within two months of the date of publication of the notice under paragraph (2), make observations to the registrar on the amendments relating to the matters referred to in paragraph 6(1) of Schedule 1 to the Act in relation to a collective mark, or paragraph 7(1) of Schedule 2 to the Act in relation to a certification mark and the registrar shall send a copy of those observations to the proprietor. (4) Any person may, within two months of the date on which the notice was published under paragraph (2), give notice to the registrar of opposition to the amendment on Form TM7 which shall include a statement of the grounds of opposition indicating why the amended regulations do not comply with the requirements of paragraph 6(1) of Schedule 1 to the Act, or, as the case may be, paragraph 7(1) of Schedule 2 to the Act. (5) The registrar shall send a copy of Form TM7 to the proprietor and the procedure in rules 18 and 20 shall apply to the proceedings relating to the opposition to the amendment as they apply to proceedings relating to opposition to an application for registration, but with the following modifications— (a) any reference to— (i) the applicant shall be construed as a reference to the proprietor, (ii) an application for registration shall be construed as a reference to an application for the amendment of the regulations, (iii) the person opposing the registration shall be construed as a reference to the person opposing the amendment of the regulations; (b) the relevant period, referred to in rule 18(1), shall for these purposes be the period of two months beginning immediately after the date upon which the registrar sent a copy of Form TM7 to the proprietor; (c) rules 18(3) to (6), 20(2) and (3) shall not apply.

Registration subject to disclaimer or limitation; section 13 31. Where the applicant for registration of a trade mark or the proprietor by notice in writing sent to the registrar— (a) disclaims any right to the exclusive use of any specified element of the trade mark; or (b) agrees that the rights conferred by the registration shall be subject to a specified territorial or other limitation, the registrar shall make the appropriate entry in the register and publish such disclaimer or limitation.

Alteration of registered trade marks; section 44 (Forms TM25 & TM7) 32—(1) The proprietor of a registered trade mark may request the registrar on Form TM25 for such alteration of the mark as is permitted under section 44 and following such request the registrar may require evidence as to the circumstances in which the application is made. (2) Where, upon the request of the proprietor, the registrar proposes to allow such alteration, the registrar shall publish the mark as altered in the Journal. (3) Any person claiming to be affected by the alteration may, within two months of the date on which the mark as altered was published under paragraph (2), give notice to the registrar of objection to the alteration on Form TM7 which shall include a statement of the grounds of objection. (4) The registrar shall send a copy of Form TM7 to the proprietor and the procedure in rules 18 and 20 shall apply to the proceedings relating to the objection to the alteration as they apply to proceedings relating to opposition to an application for registration, but with the following modifications— (a) any reference to—

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Appendix 4: Trade Mark Rules 2008 (i) the applicant shall be construed as a reference to the proprietor, (ii) an application for registration shall be construed as a reference to a request for alteration, (iii) the person opposing the registration shall be construed as a reference to the person objecting to the alteration, (iv) the opposition shall be construed as a reference to the objection; (b) the relevant period, referred to in rule 18(1), shall for these purposes be the period of two months beginning immediately after the date upon which the registrar sent a copy of Form TM7 to the proprietor; (c) rules 18(3) to (6), 20(2) and (3) shall not apply.

Surrender of registered trade mark; section 45 (Forms TM22 & TM23) 33.—(1) Subject to paragraph (2), the proprietor may surrender a registered trade mark, by sending notice to the registrar— (a) on Form TM22 in respect of all the goods or services for which it is registered; or (b) on Form TM23, in respect only of those goods or services specified by the proprietor in the notice. (2) A notice under paragraph (1) shall be of no effect unless the proprietor in that notice— (a) gives the name and address of any person having a registered interest in the mark; and (b) certifies that any such person— (i) has been sent not less than three months’ notice of the proprietor’s intention to surrender the mark, or (ii) is not affected or if affected consents to the surrender. (3) The registrar shall, upon the surrender taking effect, make the appropriate entry in the register and publish the date of surrender on the Office website.

Renewal and restoration Reminder of renewal of registration; section 43 34.—(1) Subject to paragraph (2) below, at any time not earlier than six months nor later than one month before the expiration of the last registration of a trade mark, the registrar shall (except where renewal has already been affected under rule 35) send to the registered proprietor notice of the approaching expiration and inform the proprietor at the same time that the registration may be renewed in the manner described in rule 35. (2) If it appears to the registrar that a trade mark may be registered under section 40 at any time within six months before or at any time on or after the date on which renewal would be due (by reference to the date of application for registration), the registrar shall be taken to have complied with paragraph (1) if the registrar sends to the applicant notice to that eff ect within one month following the date of actual registration.

Renewal of registration; section 43 (Form TM11) 35. Renewal of registration shall be effected by filing a request for renewal on Form TM11 at any time within the period of six months ending on the date of the expiration of the registration.

Delayed renewal and removal of registration; section 43 (Form TM11) 36.—(1) If on the expiration of the last registration of a trade mark the renewal fee has not been paid, the registrar shall publish that fact. (2) If, within six months from the date of the expiration of the last registration, a request for renewal is fi led on Form TM11 accompanied by the appropriate renewal fee and additional renewal fee, the registrar shall renew the registration without removing the mark from the register.

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Appendix 4: Trade Mark Rules 2008 (3) Where no request for renewal is fi led, the registrar shall, subject to rule 37, remove the mark from the register. (4) Where a mark is due to be registered after the date on which it is due for renewal (by reference to the date of application for registration), the request for renewal shall be fi led together with the renewal fee and additional renewal fee within six months after the date of actual registration. (5) The removal of the registration of a trade mark shall be published on the Office website.

Restoration of registration; section 43 (Form TM13) 37.—(1) Where the registrar has removed the mark from the register for failure to renew its registration in accordance with rule 36, the registrar may, following receipt of a request filed on Form TM13 within six months of the date of the removal of the mark accompanied by the appropriate renewal fee and appropriate restoration fee— (a) restore the mark to the register; and (b) renew its registration, if, having regard to the circumstances of the failure to renew, the registrar is satisfied that it is just to do so. (2) The restoration of the registration, including the date of restoration, shall be published on the Office website.

Revocation, invalidation and rectification Application for revocation (on the grounds of non-use); section 46(1)(a) or (b) (Forms TM8(N) & TM26(N)) 38.—(1) An application to the registrar for revocation of a trade mark under section 46, on the grounds set out in section 46(1)(a) or (b), shall be made on Form TM26(N). (2) The registrar shall send a copy of Form TM26(N) to the proprietor. (3) The proprietor shall, within two months of the date on which he was sent a copy of Form TM26(N) by the registrar, fi le a Form TM8(N), which shall include a counter-statement. (4) Where the proprietor fails to file evidence of use of the mark or evidence supporting the reasons for non-use of the mark within the period specified in paragraph (3) above the registrar shall specify a further period of not less than two months within which the evidence shall be filed. (5) The registrar shall send a copy of Form TM8(N) and any evidence of use, or evidence supporting reasons for non-use, fi led by the proprietor to the applicant. (6) Where the proprietor fails to file a Form TM8(N) within the period specified in paragraph (3) the registration of the mark shall, unless the registrar directs otherwise, be revoked. (7) Where the proprietor fails to fi le evidence within the period specified under paragraph (3) or any further period specified under paragraph (4), the registrar may treat the proprietor as not opposing the application and the registration of the mark shall, unless the registrar directs otherwise, be revoked. (8) The registrar may, at any time, give leave to either party to fi le evidence upon such terms as the registrar thinks fit.

Application for revocation (on grounds other than non-use); section 46(1)(c) or (d) (Forms TM8 & TM26(O)) 39.—(1) An application to the registrar for revocation of a trade mark under section 46, on the grounds set out in section 46(1)(c) or (d), shall be made on Form TM26(O) and shall include a statement of the grounds on which the application is made and be accompanied by a statement of truth.

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Appendix 4: Trade Mark Rules 2008 (2) The registrar shall send a copy of Form TM26(O) and the statement of the grounds on which the application is made to the proprietor. (3) The proprietor shall, within two months of the date on which he was sent a copy of Form TM26(O) and the statement by the registrar, file a Form TM8 which shall include a counterstatement, otherwise the registrar may treat the proprietor as not opposing the application and the registration of the mark shall, unless the registrar directs otherwise, be revoked. (4) The registrar shall send a copy of Form TM8 to the applicant.

Application for revocation (on grounds other than non-use): evidence rounds 40.—(1) Where the proprietor has filed a Form TM8, the registrar shall specify the periods within which further evidence may be filed by the parties. (2) Where the applicant fi les no further evidence in support of the application the applicant, shall, unless the registrar otherwise directs, be deemed to have withdrawn the application. (3) The registrar shall notify the proprietor of any direction given under paragraph (2). (4) The registrar may, at any time give leave to either party to fi le evidence upon such terms as the registrar thinks fit.

Application for invalidation: filing of application and counter-statement; section 47 (Forms TM8 & TM26(I)) 41.— (1) An application to the registrar for a declaration of invalidity under section 47 shall be filed on Form TM26(I) and shall include a statement of the grounds on which the application is made and be accompanied by a statement of truth. (2) Where the application is based on a trade mark which has been registered, there shall be included in the statement of the grounds on which the application is made a representation of that mark and— (a) the details of the authority with which the mark is registered; (b) the registration number of that mark; (c) the goods and services in respect of which— (i) that mark is registered, and (ii) the application is based; and (d) where neither section 47(2A)(a) nor (b) applies to the mark, a statement detailing whether during the period referred to in section 47(2B)(a) it has been put to genuine use in relation to each of the goods and services in respect of which the application is based or whether there are proper reasons for non-use (for the purposes of rule 42 this is the “statement of use”). (3) Where the application is based on a trade mark in respect of which an application for registration has been made, there shall be included in the statement of the grounds on which the application is made a representation of that mark and those matters set out in paragraph (2)(a) to (c), with references to registration being construed as references to the application for registration. (4) Where the application is based on an unregistered trade mark or other sign which the applicant claims to be protected by virtue of any rule of law (in particular, the law of passing off ), there shall be included in the statement of the grounds on which the application is made a representation of that mark or sign and the goods and services in respect of which such protection is claimed. (5) The registrar shall send a copy of Form TM26(I) and the statement of the grounds on which the application is made to the proprietor. (6) The proprietor shall, within two months of the date on which a copy of Form TM26(I) and the statement was sent by the registrar, fi le a Form TM8, which shall include a counter-statement, otherwise the registrar may treat the proprietor as not

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Appendix 4: Trade Mark Rules 2008 opposing the application and registration of the mark shall, unless the registrar otherwise directs, be declared invalid. (7) The registrar shall send a copy of Form TM8 to the applicant.

Application for invalidation: evidence rounds 42.—(1) Where the proprietor has fi led Form TM8, the registrar shall send notice to the applicant inviting the applicant to fi le evidence in support of the grounds on which the application is made and any submissions and to send a copy to all the other parties. (2) The registrar shall specify the periods within which evidence and submissions may be fi led by the parties. (3) Where— (a) the application is based on an earlier trade mark of a kind falling within section 6(1) (c); or (b) the application or part of it is based on grounds other than those set out in section 5(1) or (2); or (c) the truth of a matter set out in the statement of use is either denied or not admitted by the proprietor, the applicant shall file evidence supporting the application. (4) Where the applicant fi les no evidence under paragraph (3), the applicant shall be deemed to have withdrawn the application to the extent that it is based on— (a) the matters in paragraph (3)(a) or (b); or (b) an earlier trade mark which has been registered and is the subject of the statement of use referred to in paragraph (3)(c). (5) The registrar may, at any time give leave to either party to fi le evidence upon such terms as the registrar thinks fit.

Setting aside cancellation of application or revocation or invalidation of registration; (Form TM29) 43.— (1) This rule applies where— (a) an application for registration is treated as abandoned under rule 18(2); (b) the registration of a mark is revoked under rule 38(6) or rule 39(3); or (c) the registration of a mark is declared invalid under rule 41(6), and the applicant or the proprietor (as the case may be) claims that the decision of the registrar to treat the application as abandoned or revoke the registration of the mark or declare the mark invalid (as the case may be) (“the original decision”) should be set aside on the grounds set out in paragraph (4). (2) Where this rule applies, the applicant or the proprietor shall, within a period of six months beginning immediately after the date that the application was refused or the register was amended to reflect the revocation or the declaration of invalidity (as the case may be), fi le an application on Form TM29 to set aside the decision of the registrar and shall include evidence in support of the application and shall copy the form and the evidence to the other party to the original proceedings under the rules referred to in paragraph (1). (3) Where the applicant or the proprietor demonstrates to the reasonable satisfaction of the registrar that the failure to fi le Form TM8 within the period specified in the rules referred to in paragraph (1) was due to a failure to receive Form TM7, Form TM26(N), Form TM26(O) or Form TM26(I) (as the case may be), the original decision may be set aside on such terms and conditions as the registrar thinks fit. (4) In considering whether to set aside the original decision the matters to which the registrar must have regard include whether the person seeking to set aside the decision

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Appendix 4: Trade Mark Rules 2008 made an application to do so promptly upon becoming aware of the original decision and any prejudice which may be caused to the other party to the original proceedings if the original decision were to be set aside.

Procedure on application for rectification; section 64 (Form TM26(R)) 44.—(1) An application for rectification of an error or omission in the register under section 64(1) shall be made on Form TM26(R) together with: (a) a statement of the grounds on which the application is made; and (b) any evidence to support those grounds. (2) Where any application is made under paragraph (1) by a person other than the proprietor of the registered trade mark the registrar (a) shall send a copy of the application and the statement, together with any evidence filed, to the proprietor; and (b) may give such direction with regard to the filing of subsequent evidence and upon such terms as the registrar thinks fit.

Procedure for intervention 45.—(1) Any person, other than the registered proprietor, claiming to have an interest in proceedings on an application under rule 38, 39, 41 or 44, may file an application to the registrar on Form TM27 for leave to intervene, stating the nature of the person’s interest and the registrar may, after hearing the parties concerned if they request a hearing, refuse leave or grant leave upon such terms and conditions (including any undertaking as to costs) as the registrar thinks fit. (2) Any person granted leave to intervene shall, subject to any terms and conditions imposed in respect of the intervention, be treated as a party to the proceedings for the purposes of the application of the provisions of rules 38 to 40, 41 and 42 or 44 (as appropriate) and rules 62 to 73.

The register Form of register; section 63(1) 46. The register required to be maintained by the registrar under section 63(1) need not be kept in documentary form.

Entry in register of particulars of registered trade marks; section 63(2) (Form TM24) 47. In addition to the entries in the register of registered trade marks required to be made by section 63(2)(a), there shall be entered in the register in respect of each trade mark the following particulars— (a) the date of registration as determined in accordance with section 40(3) (that is to say, the date of the fi ling of the application for registration); (b) the date of completion of the registration procedure; (c) the priority date (if any) to be accorded pursuant to a claim to a right to priority made under section 35 or 36; (d) the name and address of the proprietor; (e) the address for service (if any) fi led under rule 11; (f ) any disclaimer or limitation of rights under section 13(1)(a) or (b); (g) any memorandum or statement of the effect of any memorandum relating to a trade mark of which the registrar has been notified on Form TM24; (h) the goods or services in respect of which the mark is registered; (i) where the mark is a collective or certification mark, that fact; (j) where the mark is registered pursuant to section 5(5) with the consent of the proprietor of an earlier trade mark or other earlier right, that fact;

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Appendix 4: Trade Mark Rules 2008 (k) where the mark is registered pursuant to a transformation application, (i) the number of the international registration, and (ii) either:—(aa) the date accorded to the international registration under Article 3(4), or (bb) the date of recordal of the request for extension to the United Kingdom of the international registration under Article 3ter, as the case may be, of the Madrid Protocol; (l) where the mark arises from the conversion of a Community trade mark or an application for a Community trade mark, the number of any other registered trade mark from which the Community trade mark or the application for a Community trade mark claimed seniority and the earliest seniority date.

Entry in register of particulars of registrable transactions; section 25 48. Upon application made to the registrar by such person as is mentioned in section 25(1)(a) or (b) there shall be entered in the register in respect of each trade mark the following particulars of registrable transactions together with the date on which the entry is made— (a) in the case of an assignment of a registered trade mark or any right in it— (i) the name and address of the assignee, (ii) the date of the assignment, and (iii) where the assignment is in respect of any right in the mark, a description of the right assigned; (b) in the case of the grant of a licence under a registered trade mark— (i) the name and address of the licensee, (ii) where the licence is an exclusive licence, that fact, (iii) where the licence is limited, a description of the limitation, and (iv) the duration of the licence if the same is or is ascertainable as a definite period; (c) in the case of the grant of any security interest over a registered trade mark or any right in or under it— (i) the name and address of the grantee, (ii) the nature of the interest (whether fi xed or floating), and (iii) the extent of the security and the right in or under the mark secured; (d) in the case of the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it— (i) the name and address of the person in whom the mark or any right in or under it vests by virtue of the assent, and (ii) the date of the assent; (e) in the case of a court or other competent authority transferring a registered trade mark or any right in or under it— (i) the name and address of the transferee, (ii) the date of the order, and (iii) where the transfer is in respect of a right in the mark, a description of the right transferred; and (f ) in the case of any amendment of the registered particulars relating to a licence under a registered trade mark or a security interest over a registered trade mark or any right in or under it, particulars to reflect such amendment.

Application to register or give notice of transaction; sections 25 & 27(3) (Form TM16, TM24, TM50 & TM51) 49.—(1) An application to register particulars of a transaction to which section 25 applies or to give notice to the registrar of particulars of a transaction to which section 27(3) applies shall be made— (a) relating to an assignment or transaction other than a transaction referred to in subparagraphs (b) to (d) below, on Form TM16;

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Appendix 4: Trade Mark Rules 2008 (b) relating to a grant of a licence, on Form TM50; (c) relating to an amendment to, or termination of a licence, on Form TM51; (d) relating to the grant, amendment or termination of any security interest, on Form TM24; and (e) relating to the making by personal representatives of an assent or to an order of a court or other competent authority, on Form TM24. (2) An application under paragraph (1) shall— (a) where the transaction is an assignment, be signed by or on behalf of the parties to the assignment; (b) where the transaction falls within sub-paragraphs (b), (c) or (d) of paragraph (1), be signed by or on behalf of the grantor of the licence or security interest, or be accompanied by such documentary evidence as suffices to establish the transaction. (3) Where an application to give notice to the registrar has been made of particulars relating to an application for registration of a trade mark, upon registration of the trade mark, the registrar shall enter those particulars in the register.

Public inspection of register; section 63(3) 50.—(1) The register shall be open for public inspection at the Office during the hours of business of the Office as published in accordance with rule 80. (2) Where any portion of the register is kept otherwise than in documentary form, the right of inspection is a right to inspect the material on the register.

Supply of certified copies etc; section 63(3) (Form TM31R) 51. The registrar shall supply a certified copy or extract or uncertified copy or extract, as requested on Form TM31R, of any entry in the register.

Request for change of name or address in register; section 64(4) (Form TM21) 52. The registrar shall, on a request made on Form TM21 by the proprietor of a registered trade mark or a licensee or any person having an interest in or charge on a registered trade mark which has been registered under rule 48 (“the applicant”), enter a change in the applicant’s name or address as recorded in the register.

Removal of matter from register; sections 25(5)(b) and 64(5) (Form TM7) 53.—(1) Where it appears to the registrar that any matter in the register has ceased to have effect, before removing it from the register— (a) the registrar may publish in the Journal the fact that it is intended to remove that matter, and (b) where any person appears to the registrar to be affected by the removal, notice of the intended removal shall be sent to that person. (2) Within two months of the date on which the intention to remove the matter is published, or notice of the intended removal is sent, as the case may be— (a) any person may file notice of opposition to the removal on form TM7; and (b) the person to whom a notice is sent under paragraph (1)(b) may file in writing their objections, if any, to the removal, and where such opposition or objections are made, rule 63 shall apply. (3) If the registrar is satisfied after considering any objections or opposition to the removal that the matter has not ceased to have effect, the registrar shall not remove it. (4) Where there has been no response to the registrar’s notice the registrar may remove the matter and where representations objecting to the removal of the entry have been made the registrar may, if after considering the objections the registrar is of the view that the entry or any part of it has ceased to have effect, remove it or the appropriate part of it.

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Change of classification Change of classification; sections 65(2) & 76(1) 54.—(1) The registrar may at any time amend an entry in the register which relates to the classification of a registered trade mark so that it accords with the version of the Nice Classification that has effect at that time. (2) Before making any amendment to the register under paragraph (1) the registrar shall give the proprietor of the mark written notice of the proposed amendments and shall at the same time advise the proprietor that— (a) the proprietor may make written objections to the proposals, within two months of the date of the notice, stating the grounds of those objections; and (b) if no written objections are received within the period specified the registrar shall publish the proposals and the proprietor shall not be entitled to make any objections to the proposals upon such publication. (3) If the proprietor makes no written objections within the period specified in paragraph (2)(a) or at any time before the expiration of that period decides not to make any objections and gives the registrar written notice to this effect, the registrar shall as soon as practicable after the expiration of that period or upon receipt of the notice publish the proposals in the Journal. (4) Where the proprietor makes written objections within the period specified in paragraph (2)(a), the registrar shall, as soon as practicable after having considered the objections, publish the proposals in the Journal or, where the registrar has amended the proposals, publish the proposals as amended in the Journal; and the registrar’s decision shall be fi nal and not subject to appeal.

Opposition to proposals; sections 65(3), (5) & 76(1) (Form TM7) 55.—(1) Any person may, within two months of the date on which the proposals were published under rule 54, give notice to the registrar of opposition to the proposals on Form TM7 which shall include a statement of the grounds of opposition which shall, in particular, indicate why the proposed amendments would be contrary to section 65(3). (2) If no notice of opposition under paragraph (1) is fi led within the time specified, or where any opposition has been determined, the registrar shall make the amendments as proposed and shall enter in the register the date when they were made; and the registrar’s decision shall be fi nal and not subject to appeal.

Request for information, inspection of documents and confidentiality Request for information; section 67(1) (Form TM31C) 56. A request for information relating to an application for registration or to a registered trade mark shall be made on Form TM31C.

Information available before publication; section 67(2) 57.—(1) Before publication of an application for registration the registrar shall make available for inspection by the public the application and any amendments made to it and any particulars contained in a notice given to the registrar under rule 49. (2) Nothing in section 67(2) relating to publication of information shall be construed as preventing the publication of decisions on cases relating to trade marks decided by the registrar.

Inspection of documents; sections 67 & 76(1) 58.—(1) Subject to paragraphs (2) and (3), the registrar shall permit all documents filed or kept at the Office in relation to a registered mark or, where an application for the registration of a trade mark has been published, in relation to that application, to be inspected.

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Appendix 4: Trade Mark Rules 2008 (2) The registrar shall not be obliged to permit the inspection of any such document as is mentioned in paragraph (1) until the completion of any procedure, or the stage in the procedure which is relevant to the document in question, which the registrar is required or permitted to carry out under the Act or these Rules. (3) The right of inspection under paragraph (1) does not apply to— (a) any document prepared in the Office solely for its own use; (b) any document sent to the Office, whether at its request or otherwise, for inspection and subsequent return to the sender; (c) any request for information under rule 56; (d) any document received by the Office which the registrar considers should be treated as confidential; (e) any document in respect of which the registrar issues directions under rule 59 that it be treated as confidential. (4) Nothing in paragraph (1) shall be construed as imposing on the registrar any duty of making available for public inspection— (a) any document or part of a document which in the registrar’s opinion disparages any person in a way likely to cause damage to that person; or (b) any document or information filed at or sent to or by the Office before 31st October 1994; or (c) any document or information filed at or sent to or by the Office after 31st October 1994 relating to an application for registration of a trade mark under the Trade Marks Act 1938(a). (5) No appeal shall lie from a decision of the registrar under paragraph (4) not to make any document or part of a document available for public inspection. Confidential documents 59.—(1) Where a document (other than a form required by the registrar and published in accordance with rule 3) is filed at the Office and the person filing it requests at the time of filing that it or a specified part of it be treated as confidential, giving reasons for the request, the registrar may direct that it or part of it, as the case may be, be treated as confidential, and the document shall not be open to public inspection while the matter is being determined by the registrar. (2) Where such direction has been given and not withdrawn, nothing in this rule shall be taken to authorise or require any person to be allowed to inspect the document or part of it to which the direction relates except by leave of the registrar. (3) The registrar shall not withdraw any direction given under this rule without prior consultation with the person at whose request the direction was given, unless the registrar is satisfied that such prior consultation is not reasonably practical. (4) The registrar may where the registrar considers that any document issued by the Office should be treated as confidential so direct, and upon such direction that document shall not be open to public inspection except by leave of the registrar. (5) Where a direction is given under this rule for a document to be treated as confidential a record of the fact shall be fi led with the document.

Agents Proof of authorisation of agent may be required; section 82 (Form TM33) 60.—(1) Where an agent has been authorised under section 82, the registrar may in a particular case require the personal signature or presence of the agent or the person authorising the agent to act as agent. (2) Subject to paragraph (3), where a person appoints an agent for the fi rst time or appoints one agent in substitution for another, the newly appointed agent shall fi le Form TM33.

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Appendix 4: Trade Mark Rules 2008 (3) Where after a person has become a party to proceedings involving a third party before the registrar, the person appoints an agent for the fi rst time or appoints one agent in substitution for another, the newly appointed agent shall fi le Form TM33P. (4) Any act required or authorised by the Act in connection with the registration of a trade mark or any procedure relating to a trade mark may not be done by or to the newly appointed agent until on or after the date on which the newly appointed agent fi les Form TM33 or TM33P as appropriate. (5) The registrar may by notice in writing require an agent to produce evidence of his authority under section 82.

Registrar may refuse to deal with certain agents; section 88 61. The registrar may refuse to recognise as agent in respect of any business under the Act— (a) a person who has been convicted of an offence under section 84; (b) an individual whose name has been erased from and not restored to, or who is suspended from, the register of trade mark agents on the ground of misconduct; (c) a person who is found by the Secretary of State to have been guilty of such conduct as would, in the case of an individual registered in that register, render that person liable to have their name erased from it on the ground of misconduct; (d) a partnership or body corporate of which one of the partners or directors is a person whom the registrar could refuse to recognise under paragraph (a), (b) or (c).

Proceedings before and decision of registrar, evidence and costs General powers of registrar in relation to proceedings 62.—(1) Except where the Act or these Rules otherwise provide, the registrar may give such directions as to the management of any proceedings as the registrar thinks fit, and in particular may— (a) require a document, information or evidence to be filed within such period as the registrar may specify; (b) require a translation of any document; (c) require a party or a party’s legal representative to attend a hearing; (d) hold a hearing by telephone or by using any other method of direct oral communication; (e) allow a statement of case to be amended, provided that— (i) where an application is made to add grounds of opposition other than under subsections 5(1) or (2) of the Act, the application shall be made on Form TM7G; and (ii) in the case of fast track oppositions the registrar may only permit a statement of case to be amended to add additional or alternative earlier registered or protected trade marks as additional grounds of opposition under subsections 5(1) or 5(2) of the Act, provided that the total number of earlier trade marks relied upon may not exceed three; (f) stay the whole, or any part, of the proceedings either generally or until a specified date or event; (g) consolidate proceedings provided that where a fast track opposition is consolidated with other non-fast track proceedings, it shall no longer be treated as a fast track opposition; (h) direct that part of any proceedings be dealt with as separate proceedings; (i) exclude any evidence which the registrar considers to be inadmissible; (j) direct that with effect from the date specified in the direction opposition proceedings which have been commenced on Form TM7F as a fast track opposition but which do not satisfy the criteria for a fast track opposition may continue as if the opposition proceedings were an opposition to the registration commenced under Rule 17 on Form TM7.

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Appendix 4: Trade Mark Rules 2008 (2) The registrar may control the evidence by giving directions as to— (a) the issues on which evidence is required; and (b) the way in which the evidence is to be placed before the registrar. (3) When the registrar gives directions under any provision of these Rules, the registrar may— (a) make them subject to conditions; and (b) specify the consequences of failure to comply with the directions or a condition. (4) The registrar may at any stage of any proceedings direct that the parties to the proceedings attend a case management conference or pre-hearing review. (5) In the case of a fast track opposition— (a) proceedings shall be held orally only if the Office requests it or if either party to the proceedings requests it and the registrar considers that oral proceedings are necessary to deal with the case justly and at proportionate cost; and (b) the parties shall be given at least fourteen days’ notice beginning on the date on which the notice is sent, of the time when the oral proceedings are to take place unless each party to the proceedings consents to shorter notice. (6) In the case of a fast track opposition, where no oral hearing is held, the registrar shall give the parties the opportunity to provide arguments in writing before reaching a decision that is adverse to either party.

Decisions of registrar to be taken after hearing 63.—(1) Without prejudice to any provisions of the Act or these Rules requiring the registrar to hear any party to proceedings under the Act or these Rules, or to give such party an opportunity to be heard, the registrar shall, before taking any decision on any matter under the Act or these Rules which is or may be adverse to any party to any proceedings, give that party an opportunity to be heard. (2) The registrar shall give that party at least fourteen days’ notice, beginning on the date on which notice is sent, of the time when the party may be heard unless the party consents to shorter notice. (3) Th is Rule shall not apply to fast track opposition proceedings.

Evidence in proceedings before the registrar; section 69 64.—(1) Subject to rule 62(2) and as follows, evidence filed in any proceedings under the Act or these Rules may be given— (a) by witness statement, affidavit, statutory declaration; or (b) in any other form which would be admissible as evidence in proceedings before the court. (2) A witness statement may only be given in evidence if it includes a statement of truth. (3) The general rule is that evidence at hearings is to be by witness statement unless the registrar or any enactment requires otherwise. (4) For the purposes of these Rules, a statement of truth— (a) means a statement that the person making the statement believes that the facts stated in a particular document are true; and (b) shall be dated and signed by— (i) in the case of a witness statement, the maker of the statement, (ii) in any other case, the party or legal representative of such party. (5) In these Rules, a witness statement is a written statement signed by a person that contains the evidence which that person would be allowed to give orally. (6) Under these Rules, evidence shall only be considered fi led when— (a) it has been received by the registrar; and (b) it has been sent to all other parties to the proceedings.

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Appendix 4: Trade Mark Rules 2008 Registrar to have power of an official referee; section 69 65. The registrar shall have the powers of an official referee of the Supreme Court as regards— (a) the attendance of witnesses and their examination on oath; and (b) the discovery and production of documents, but the registrar shall have no power to punish summarily for contempt.

Hearings before registrar to be in public 66.—(1) The hearing before the registrar of any dispute between two or more parties relating to any matter in connection with an application for the registration of a mark or a registered mark shall be in public unless the registrar, after consultation with those parties who appear in person or are represented at the hearing, otherwise directs. . . . .

Costs of proceedings; section 68 67. The registrar may, in any proceedings under the Act or these Rules, by order award to any party such costs as the registrar may consider reasonable, and direct how and by what parties they are to be paid.

Security for costs; section 68 68.—(1) The registrar may require any person who is a party in any proceedings under the Act or these Rules to give security for costs in relation to those proceedings; and may also require security for the costs of any appeal from the registrar’s decision. (2) In default of such security being given, the registrar, in the case of the proceedings before the registrar, or in the case of an appeal, the person appointed under section 76 may treat the party in default as having withdrawn their application, opposition, objection or intervention, as the case may be.

Decision of registrar (Form TM5) 69.—(1) The registrar shall send to each party to the proceedings written notice of any decision made in any proceedings before the registrar stating the reasons for that decision and for the purposes of any appeal against that decision, subject to paragraph (2), the date on which the notice is sent shall be taken to be the date of the decision. (2) Where a statement of the reasons for the decision is not included in the notice sent under paragraph (1), any party may, within one month of the date on which the notice was sent to that party, request the registrar on Form TM5 to send a statement of the reasons for the decision and upon such request the registrar shall send such a statement, and the date on which that statement is sent shall be deemed to be the date of the registrar’s decision for the purpose of any appeal against it.

Appeals Decisions subject to appeal; section 76(1) 70. —(1) Except as otherwise expressly provided by these Rules an appeal lies from any decision of the registrar made under these Rules relating to a dispute between two or more parties in connection with a trade mark, including a decision which terminates the proceedings as regards one of the parties or a decision awarding costs to any party (“a final decision”) or a decision which is made at any point in the proceedings prior to a final decision (“an interim decision”). (2) An interim decision (including a decision refusing leave to appeal under this paragraph) may only be appealed against independently of any appeal against a final decision with the leave of the registrar.

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Appendix 4: Trade Mark Rules 2008 Appeal to person appointed; section 76 71.—(1)

Subject to paragraph (1A), notice of appeal to the person appointed under section 76 shall be fi led on Form TM55 which shall include the appellant’s grounds of appeal and his case in support of the appeal. (1A) Where the appeal arises in proceedings between two or more parties, notice of appeal to the person appointed under section 76 shall be fi led on Form TM55P, which shall include the appellant’s grounds of appeal and his case in support of the appeal. (2) Forms TM55 or TM55P shall be fi led with the registrar within the period of 28 days beginning immediately after the date of the registrar’s decision which is the subject of the appeal (“the original decision”). (3) The registrar shall send the notice and the statement to the person appointed. (4) Where any person other than the appellant was a party to the proceedings before the registrar in which the original decision was made (“the respondent”), the registrar shall send to the respondent a copy of the notice and the statement and the respondent may, within the period of 21 days beginning immediately after the date on which the notice and statement was sent, fi le a notice responding to the notice of appeal. (5) The respondent’s notice shall specify any grounds on which the respondent considers the original decision should be maintained where these differ from or are additional to the grounds given by the registrar in the original decision. (6) The registrar shall send a copy of the respondent’s notice to the person appointed and a copy to the appellant.

Determination whether appeal should be referred to court; section 76(3) 72.—(1) Within 28 days of the date on which the notice of appeal is sent to the respondent by the registrar under rule 71(4); (a) the registrar; or (b) any person who was a party to the proceedings in which the decision appealed against was made, may request that the person appointed refer the appeal to the court. (2) Where the registrar requests that the appeal be referred to the court, the registrar shall send a copy of the request to each party to the proceedings. (3) A request under paragraph (1)(b) shall be sent to the registrar following which the registrar shall send it to the person appointed and shall send a copy of the request to any other party to the proceedings. (4) Within 28 days of the date on which a copy of a request is sent by the registrar under paragraph (2) or (3), the person to whom it is sent may make representations as to whether the appeal should be referred to the court. (5) In any case where it appears to the person appointed that a point of general legal importance is involved in the appeal, the person appointed shall send to the registrar and to every party to the proceedings in which the decision appealed against was made, notice to that effect. (6) Within 28 days of the date on which a notice is sent under paragraph (5), the person to whom it was sent may make representations as to whether the appeal should be referred to the court.

Hearing and determination of appeal; section 76(4) 73. —(1) Where the person appointed does not refer the appeal to the court, the person appointed shall send written notice of the time and place appointed for the oral hearing of the appeal — (a) where no person other than the appellant was a party to the proceedings in which the decision appealed against was made, to the registrar and to the appellant; and (b ) in any other case, to the registrar and to each person who was a party to those proceedings.

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Appendix 4: Trade Mark Rules 2008 (2) The person appointed shall send the notice at least fourteen days before the time appointed for the oral hearing. (3) If all the persons notified under paragraph (1) inform the person appointed that they do not wish to make oral representations then— (a) the person appointed may hear and determine the case on the basis of any written representations; and (b) the time and place appointed for the oral hearing may be vacated. (4) Rules 62, 65, 67 and 68 shall apply to the person appointed and to proceedings before the person appointed as they apply to the registrar and to proceedings before the registrar. (5) If there is an oral hearing of the appeal then rule 66 shall apply to the person appointed and to proceedings before the person appointed as it applies to the registrar and to proceedings before the registrar. (6) A copy of the decision of the appointed person shall be sent, with a statement of the reasons for the decision, to the registrar and to each person who was a party to the appeal.

Correction of irregularities, calculation and extension of time Correction of irregularities in procedure 74.—(1) Subject to rule 77, the registrar may authorise the rectification of any irregularity in procedure (including the rectification of any document filed) connected with any proceeding or other matter before the registrar or the Office. (2) Any rectification made under paragraph (1) shall be made— (a) after giving the parties such notice; and (b) subject to such conditions, as the registrar may direct.

Interrupted day 75—(1) The registrar may certify any day as an interrupted day where— (a) there is an event or circumstance causing an interruption in the normal operation of the Office; or (b) there is a general interruption or subsequent dislocation in the postal services of the United Kingdom. (2) Any certificate of the registrar made under paragraph (1) shall be displayed in the Office and published on the Office website. (3) The registrar shall, where the time for doing anything under these Rules expires on an interrupted day, extend that time to the next following day not being an interrupted day (or an excluded day). (4) In this rule— “excluded day” means a day which is not a business day as specified in a direction given by the registrar under section 80; and “interrupted day” means a day which has been certified as such under paragraph (1).

Delays in communication services 76.—(1) The registrar shall extend any time limit in these Rules where the registrar is satisfied that the failure to do something under these Rules was wholly or mainly attributed to a delay in, or failure of, a communication service. (2) Any extension under paragraph (1) shall be— (a) made after giving the parties such notice; and (b) subject to such conditions, as the registrar may direct. (3) In this rule “communication service” means a service by which documents may be sent and delivered and includes post, facsimile, email and courier.

423

Appendix 4: Trade Mark Rules 2008 Alteration of time limits (Form TM9) 77—(1) Subject to paragraphs (4) and (5), the registrar may, at the request of the person or party concerned or at the registrar’s own initiative extend a time or period prescribed by these Rules or a time or period specified by the registrar for doing any act and any extension under this paragraph shall be made subject to such conditions as the registrar may direct. (2) A request for extension relates to a time period other than one specified under rule 13 and under this rule may be made before or after the time or period in question has expired and shall be made— (a) where the application for registration has not been published and the request for an extension relates to a time or period other than one specified under rule 13 and is made before the time or period in question has expired, in writing ; and (b) in any other case, on Form TM9. (3) Where an extension under paragraph (1) is requested in relation to proceedings before the registrar, the party seeking the extension shall send a copy of the request to every other person who is a party to the proceedings. (4) The registrar shall extend a flexible time limit, except a time or period which applies in relation to proceedings before the registrar or the fi ling of an appeal to the Appointed Person under rule 71, where— (a) the request for extension is made before the end of the period of two months beginning immediately after the date the relevant time or period expired; and (b) no previous request has been made under this paragraph. (5) A time limit listed in Schedule 1 (whether it has already expired or not) may be extended under paragraph (1) if, and only if— (a) the irregularity or prospective irregularity is attributable, wholly or in part, to a default, omission or other error by the registrar, the Office or the International Bureau; and (b) it appears to the registrar that the irregularity should be rectified. (6) In this rule— “flexible time limit” means— (a) a time or period prescribed by these Rules, except a time or period prescribed by the rules listed in Schedule 1, or (b) a time or period specified by the registrar for doing any act or taking any proceedings; and “proceedings before the registrar” means any dispute between two or more parties relating to a matter before the registrar in connection with a trade mark.

Filing of documents, hours of business, Trade Marks Journal and translations Filing of documents by electronic means 78. The registrar may permit as an alternative to the sending by post or delivery of the application, notice or other document in legible form the filing of the application, notice or other document by electronic means subject to such terms or conditions as the registrar may specify either generally by published notice or in any particular case by written notice to the person desiring to file any such documents by such means.

Electronic communications 79.—(1) The delivery using electronic communications to any person by the registrar of any document is deemed to be effected, unless the registrar has otherwise specified, by transmitting an electronic communication containing the document to an address provided or made available to the registrar by that person as an address for the receipt of electronic communications; and unless the contrary is proved such delivery is deemed to be effected immediately upon the transmission of the communication.

424

Appendix 4: Trade Mark Rules 2008 (2) In this rule “electronic communication” has the same meaning as in the Electronic Communications Act 2000(a).

Directions on hours of business; section 80 80. Any directions given by the registrar under section 80 specifying the hours of business of the Office and business days of the Office shall be published on the Office website.

Trade Marks Journal; section 81 81. The registrar shall publish a journal, entitled “The Trade Marks Journal” containing such information as is required to be published in the Journal under these Rules and such other information as the registrar thinks fit.

Translations 82.— (1) Where any document or part thereof which is in a language other than English is filed or sent to the registrar in pursuance of the Act or these Rules, the registrar may require that there be furnished a translation into English of the document or that part, verified to the satisfaction of the registrar as corresponding to the original text. (2) The registrar may refuse to accept any translation which the registrar considers to be inaccurate in which event there shall be furnished another translation of the document in question verified in accordance with paragraph (1).

Transitional provisions and revocations Revocation of previous rules and proceedings commenced under previous rules 83.—(1) The instruments set out in Schedule 2 (“the previous rules”) are revoked to the extent specified. (2) Where immediately before these Rules come into force, any time or period prescribed by the previous rules has effect in relation to any act or proceeding and has not expired, the time or period prescribed by the previous rules and not by these Rules shall apply to that act or proceeding. (3) Except as provided by paragraph (4) where a new step is to be taken on or after 1st October 2008 in relation to any proceedings commenced under the previous rules these Rules shall apply to such proceedings from that date. (4) Subject to paragraph (5) where prior to the entry into force of these Rules (a) a Form TM8 and counter-statement have been filed in(i) opposition proceedings, or (ii) proceedings for the revocation of a trade mark on the grounds set out in section 46(1)(c ) or (d); or (iii) invalidation proceedings; or (b) an application for revocation of a trade mark on the grounds set out in section 46(1) (a) or (b) has been filed, the previous rules shall apply with regard to the filing of any evidence in relation to those proceedings. (5) Where proceedings as described in paragraph (4) are consolidated with proceedings commenced on or after 1st October 2008 these Rules shall apply with regard to the fi ling of any evidence in relation to those consolidated proceedings.

Baroness Morgan of Drefelin Parliamentary Under Secretary of State for Intellectual Property and Quality 7th July 2008 Department for Innovation, Universities and Skills

(a) 2000 c.7

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Appendix 4: Trade Mark Rules 2008

SCHEDULE 1

Rule 77

Extension of time limits rule 17(2) (filing notice of opposition) rule 17(3) (filing notice of opposition: request for extension of time) rule 18(1) (counter-statement in opposition proceedings) rule 19(4) (responding to preliminary indication) rule 25(2) (opposition to amendment after publication) rule 30(4) (opposition to amendment of regulations of collective and certification marks) rule 32(3) (opposition to alteration of mark) rule 35 (renewal of registration) rule 36(2) (delayed renewal) rule 37(1) (restoration of registration) rule 38(3) (counter-statement for revocation on grounds of non-use) rule 39(3) (counter-statement for revocation on grounds other than non-use) rule 41(6) (counter-statement for invalidity) rule 43(2) (setting aside cancellation of application or revocation or invalidation of registration) rule 53(2) (opposition to removal of matter from register) rule 55(1) (opposition to proposals for change of classification) rule 77(4) (period for making a retrospective request to extend a flexible time period).

SCHEDULE 2

Rule 83

Revocations Rules revoked

References

Extent of Revocation

The Trade Marks Rules 2000 The Trade Marks (Amendment) Rules 2001

SI 2000/136 SI 2001/3832

The whole rules The whole rules

The Trade Marks (Amendment) Rules 2004 The Patents, Trade Marks and Designs (Address for Service and Time Limits etc.) Rules 2006

SI 2004/947 SI 2006/760

The whole rules Rules 15 to 20

The Trade Marks and Designs (Address for Service)(Amendment) Rules 2006

SI 2006/1029

The whole rules

The Trade Marks (Amendment) Rules 2006 The Trade Marks (Amendment) Rules 2007 The Trade Marks and Trade Marks (Fees) (Amendment) Rules 2008

SI 2006/3039 SI 2007/2076 SI 2008/11

The whole rules The whole rules Rules 2 to 4

426

Appendix 4: Trade Mark Rules 2008

EXPLANATORY NOTE (This note is not part of the Rules) These Rules revoke and replace the Trade Marks Rules 2000 (SI 2000/136), (“the 2000 Rules”). They re-enact, with modifications and amendments of a drafting nature, the 2000 Rules as amended and make several changes of substance in order to give better effect to the provisions of the Trade Marks Act 1994 (“the Act”). The changes of substance are as follows— 1) the period for filing opposition proceedings has been reduced from three months to two months with a right to extend the period to three months subject to filing Form TM7A (rule 17); 2) the period for filing a counter-statement in actions for opposition to registration of a trade mark has been reduced from three months to two months and the “cooling-off ” period has been reduced to an initial period of nine months but extendible to eighteen months subject to the agreement of both parties (rule 18); 3) in actions for revocation (on non-use grounds) the period for filing a counter-statement has been reduced from three months to two months and the proprietor will now have a single opportunity to file evidence of use (or proper reasons for non-use) which the proprietor intends to rely on in order to defend the registration. The period for filing evidence which shall be specified by the registrar shall be not less than two months (rule 38); 4) in actions for revocation (on grounds other than non-use) and invalidation of a trade mark the period for filing a counter-statement has been increased from six weeks to two months (rules 39 and 41); 5) provision has been made for the registrar to set aside cancellation of an application for registration or the revocation or invalidation of a trade mark registration if the applicant demonstrates that the failure to challenge the proceedings was due to a failure to receive notice of the proceedings. The application to set aside must be made within six months of the relevant decision (rule 43); 6) in any dispute between two or more parties an appeal against a decision (other than a decision awarding costs to any party) which is made at any point of the proceedings prior to a “final decision” may only be made independently of any appeal against a final decision with the leave of the registrar (rule 70); 7) where an applicant for or proprietor of a trade mark has failed to comply with a time period for the doing of any act (except in relation to proceedings before the registrar involving a second party, or the filing of an appeal to the Appointed Person or in the cases listed in schedule 1) the applicant/proprietor will have the right to an extension of time within which to complete the action provided a request for extension has been made within two months of the date when the relevant time period expired. This provision is required in order to comply with the requirements of the Singapore Treaty on the Law of Trademarks (adopted in Singapore on 27 March 2006 to which the United Kingdom is a signatory and available on the WIPO website) (rule 77); 8) where there are deficiencies in an application for registration of a trade mark the period for remedying those deficiencies has been reduced from two months to a period of not less than one month as specified by the registrar (rule 13); 9) the period for correction of queries relating to the classification of a trade mark has been reduced from two months to a period of not less than one month as specified by the registrar (rule 9); 10) where a right to priority is claimed by reason of an application for protection filed in a Convention country the registrar may determine what documentation shall be filed in support of the application (rule 6);

427

Appendix 4: Trade Mark Rules 2008 11) provision has been made for the registrar to set a timetable for the parties to file evidence in proceedings and to direct the form in which evidence must be filed and the taking of oral evidence which follow equivalent provisions relating to proceedings with respect to patents and registered designs (rule 62 and 64); Subject to the exceptions in rule 83(4) where a new step is to be taken on or after 1st October 2008 in relation to any proceedings commenced under the 2000 Rules, these Rules shall apply to such proceedings from that date. A full impact assessment of the effect that this instrument will have on the costs of business and the voluntary sector is available from the UK Intellectual Property Office, Trade Marks Law Section, Concept House, Cardiff Road, Newport NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside the instrument on the OPSI website. Copies have also been placed in the libraries of both Houses of Parliament.

428

A PPENDIX 5

Nice Class Headings (10th edition)* Class List of terms 1

2

3

4

5

6

7

8 9

10 11 12 13 14

Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; Adhesives used in industry Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Colorants; Mordants; Raw natural resins; Metals in foil and powder form for painters, decorators, printers and artists Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices Industrial oils and greases; Lubricants; Dust absorbing, wetting and binding compositions; Fuels (including motor spirit) and illuminants; Candles and wicks for lighting Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides Common metals and their alloys; Metal building materials; Transportable buildings of metal; Materials of metal for railway tracks; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware; Pipes and tubes of metal; Safes; Goods of common metal not included in other classes; Ores Machines and machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Automatic vending machines Hand tools and implements (hand-operated); Cutlery; Side arms; Razors Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes Vehicles; Apparatus for locomotion by land, air or water Firearms; Ammunition and projectiles; Explosives; Fireworks Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments

* See the WIPO website at

429

Appendix 5: Nice Class Headings (10th edition) Class List of terms 15 16

17

18

19 20

21

22

23 24 25 26 27 28 29

30

31

32 33 34 35 36 37 38 39

Musical instruments Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists’ materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers’ type; Printing blocks Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes, not of metal Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery Building materials (non-metallic); Non-metallic rigid pipes for building; Asphalt, pitch and bitumen; Non-metallic transportable buildings; Monuments, not of metal Furniture, mirrors, picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics Household or kitchen utensils and containers; Combs and sponges; Brushes (except paint brushes); Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building); Glassware, porcelain and earthenware not included in other classes Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); Padding and stuffing materials (except of rubber or plastics); Raw fibrous textile materials Yarns and threads, for textile use Textiles and textile goods, not included in other classes; Bed covers; Table covers Clothing, footwear, headgear Lace and embroidery, ribbons and braid; Buttons, hooks and eyes, pins and needles; Artificial flowers Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; Wall hangings (non-textile) Games and playthings; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees Meat, fi sh, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice Grains and agricultural, horticultural and forestry products not included in other classes; Live animals; Fresh fruits and vegetables; Seeds; Natural plants and flowers; Foodstuffs for animals; Malt Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages Alcoholic beverages (except beers) Tobacco; Smokers’ articles; Matches Advertising; Business management; Business administration; Office functions Insurance; Financial affairs; Monetary affairs; Real estate affairs Building construction; Repair; Installation services Telecommunications Transport; Packaging and storage of goods; Travel arrangement

430

Appendix 5: Nice Class Headings (10th edition) Class List of terms 40 41 42

43 44 45

Treatment of materials Education; Providing of training; Entertainment; Sporting and cultural activities Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software Services for providing food and drink; Temporary accommodation Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, horticulture and forestry services Legal services; Security services for the protection of property and individuals; Personal and social services rendered by others to meet the needs of individuals

431

INDEX

absolute grounds for refusal 2.10–2.27 abuse of dominant position see also EU law Art 102 6.52, 6.56 enforcement 6.76 licences 6.75–6.77 purpose 6.75 refusal to grant licence 6.75, 6.77 exercise of intellectual property rights not an abuse 6.76 abuse of process 5.49, 5.50, 5.69 account of profits 9.80, 9.81, 9.83, 9.96–9.103 see also remedies for infringement/passing off ‘but for’ test 9.99 costs of 9.101 equitable and discretionary remedy 9.96 limitation 9.102 principle on which granted 9.97 proprietor and licensees, positions of 9.103 purpose 9.98 acquiescence 5.52–5.57, 5.71 defence, as 7.121–7.123 effect of 5.55 honest concurrent use of trade marks 5.54 non-opposition to earlier mark 5.56 statutory defence 5.52 well-known trade mark, and 7.127 acquired distinctiveness through prior use 2.49 through use after registration 5.42 advertising comparative advertising see comparative advertising function 1.25, 1.27 infringement jurisdiction 7.25–7.27 internet 7.25–7.27 keywords/Adwords 7.21–7.24, 7.43, 7.45 laudatory marks or slogans 2.34, 2.76 misrepresentation 8.47 nature/forms of 7.65 promotional goods as advertising, use of mark on 7.35 agents registration of marks, by 4.75 Agreement on the Trade-Related Aspects of Intellectual Property Rights see TRIPS Agreement alteration of registered mark 4.76 amendment of application 4.12, 4.19, 4.29–4.30 of classification 4.14

anti-competitive behaviour see also EU law Art 101 6.52 enforcement 6.64 exemptions/block exemptions 6.70–6.74 licences 6.62–6.74 penalties for non-exempt infringement 6.68 purpose 6.55 licences 6.60–6.74 clauses not restricting competition 6.65 exclusive distribution agreements/franchise networks 6.67, 6.69 vertical distribution agreements 6.66, 6.69 appeals (criminal) 9.174 appeals (OHIM) 4.97–4.101 appeals (UKIPO) appeals 4.66–4.71 Appointed Persons 4.68, 4.69 Chancery Division 4.66 fresh evidence, admissibility 4.70 jurisdiction 4.66, 4.67, 4.69 permission to appeal 4.66 review, as 4.69 timing 4.66 application to register see OHIM procedure; UKIPO procedure Appointed Person appeals from the Registrar 4.68, 4.69 assignments 6.01, 6.02, 6.05–6.10 EU law and 6.58–6.59 formalities 6.07 goodwill, and 6.05, 6.06 partial assignments 6.05 registration of assignments 6.08, 6.09 unregistered marks, of 6.10 association see confusion bad faith 2.129–2.148 acquiescence in use of mark 5.55 assessment at time of filing 2.133 bar to registration 2.129 certificate of intention to use 4.09 Community Trade Mark, invalidity of 5.66 concept, defined 2.130 dishonesty, meaning of 2.143 intention to use mark 2.134–2.137, 4.09 knowledge, objective assessment of 2.133, 2.143 over-wide specification 2.137

433

Index bad faith (cont.): repeat applications 2.138 third party rights 2.139–2.148 ‘badge of allegiance’ 7.40 balance of convenience see interim injunctions block exemptions 6.70–6.74 Boards of Appeal (OHIM) 4.97 bodies corporate criminal offences, and 9.164 brands similarity, impact of sub–brands 3.41 value to businesses 1.01, 1.16 business names 8.21 cancellation 5.69 capable of distinguishing goods or services acquired distinctiveness through prior use 2.49 through use after registration 2.27, 5.42 criteria for registrability 2.09, 2.20–2.22 device marks, and 2.22 inherent distinctiveness 2.20, 2.28–2.29, 2.39 standard of distinctiveness 2.21, 2.22 the proviso 2.49–2.57 capable of graphical representation criteria for registrability 2.09, 2.10, 2.16–2.19 general issues 2.18–2.19 graphical representation, form of 2.18 non-standard marks, and 2.17 representation contained within application 2.18– 2.19 sufficiency of 2.20 celebrities see characters and famous names celebrity endorsement passing off, and 8.68–8.73 certificate of contested validity 9.110 certificate of intention to use 4.09 certification marks examples 2.153 meaning 2.149 registration 2.152 use, of 2.154 Chancery Division appeals from the Registrar 4.66 character merchandising passing off, and 8.68–8.73 characteristics of goods, marks designating 2.46 characters and famous names celebrities 2.65, 2.66 fictional characters 2.63, 2.67 indication of origin 2.63, 2.65 pop groups 2.65 registration, of 2.63–2.67 charities passing off 8.13 trade mark rights 5.16

civil procedure 9.07–9.18 see also injunctions; infringement; interim injunctions; passing off; remedies for infringement/passing off; threats actions actionable threats 9.08 claims 9.09 costs 9.18 counterclaim for revocation or invalidity 5.02, 9.08, 9.39 CTMs 9.33, 9.36–9.41 defences 7.72, 7.76–7.100, 7.119, 8.87–8.92 evidence see evidence High Court, proceedings in 9.10, 9.11, 9.14, 9.16 inquiry as to damages see under damages interim relief 9.15 IPEC procedure 9.10–9.17 case management conferences 9.11 IPEC multi-track 9.10, 9.11–9.12, 9.14 IPEC small claims track 9.10, 9.13, 9.14 jurisdiction see jurisdiction threats actions see threats actions civil proceedings see infringement; passing off classification of goods 4.13–4.20 amendments, to 4.14, 4.19 Nice Classification 4.13, 4.87 OHIM procedure 4.87 re-classification of registrations 4.14 specification of goods/services 4.17–4.18 collective marks meaning/nature of 2.149, 2.151 registration 2.149 use 2.150 colours colour combinations 2.103, 2.108 consistent use of particular colour 7.47 graphical representation 2.106, 2.107 limiting scope of mark 2.103 origin, indication of 2.108 registration 2.103–2.108 sign, constituting 2.105 combination licences see licences committal for contempt of court 9.78 common field of activity 8.66–8.67 common or customary trade terms registration 2.47–2.48 Community Designs search of Register 2.05 Community Trade Mark Regulation 1.04, 1.06, 1.21, 4.79–4.81 CTMs see Community Trade Marks (CTMs) proposed changes to 1.10–1.11, 1.28 Community Trade Marks (CTMs) see also invalidity of registration (CTMs); OHIM; revocation (CTMs) alteration of mark 4.93 applications 4.83–4.87 classification of goods/services 4.87 fees 4.85, 4.86 OHIM, to 4.83

434

Index repeat applications 2.138 representation 4.84 scale of 1.06 bad faith as ground for invalidity 2.129 Community Trade Mark system 1.06, 4.80 creation, of 1.04 further changes 1.09–1.11 Madrid Protocol, and 4.118 conversion to national mark 5.62, 5.64 distinctiveness, acquisition of 2.49, 2.89 earlier marks CTMs as earlier marks for UK applications 3.02 examined in CTM applications 3.04 earlier rights 4.95 effects, of 4.96 genericism, and 5.63 jurisdiction, infringement claims 9.33, 9.36–9.41 languages 4.83 descriptiveness objections, avoiding 2.24 opposition 4.91–4.92 problems 1.06 registrability 4.79, 4.82 relative grounds for refusal of registration 3.01 revocation 7.74 slogans 2.76 unitary nature, of 4.80 company names infringement 7.131 opportunistic registration 1.31, 9.134–9.138 registration as trade marks 2.60 search of Registers 2.05 comparative advertising 1.30, 7.58–7.61 Comparative Advertising Directive 3.69–3.70.7.58 advantages of comparative advertising 7.62 broad concept of comparative advertising 7.63 cases considered by CJEU 7.65–7.69 UK implementation 7.62 infringement 7.62–7.71 interim injunctions 9.45, 9.62 meaning 7.58 metatags 7.20 misleading advertising, meaning of 7.64 misrepresentation 8.51 permitted comparative advertising not infringing trade mark 7.71 remedies, principles applying to 9.62 rules, of 7.62–7.71 Trade Marks Act 1994, s 10(6) 7.59–7.61 displaced by Directive 7.61 essential test of objective honesty 7.60 competition law 1.20, 6.51, 7.120 see also EU law complementarity 3.46–3.49 composite marks similarity causing confusion 3.36, 3.40 concurrent rights defence of 7.77–7.78 honest concurrent use 1.22

conditions for infringement 7.14–7.43 see also infringement use affecting functions of mark/guaranteeing origin 7.37–7.43 use in relation to goods or services 7.33–7.36 consent, lack of 7.36 ‘in relation to’, meaning of 7.34 promotional goods as advertising, use of mark on 7.35 use in the course of trade 7.28–7.29 commercial activity 7.29 non-profit making organisations 7.29 trade, definition of 7.28 ‘use’ of a mark 7.14–7.27 common infringing acts 7.15 definition of ‘use’ 7.14 incidental use of a mark 7.17 internet see internet jurisdiction 7.25–7.27 perception of the public 7.16 transit goods 7.18 use of an identical (similar) sign to registered mark 7.32 without consent of the proprietor 7.30–7.31 exceptions to rule 7.31 exhaustion of rights 7.30, 7.101 confusion evidence, of 9.24–9.32 ‘family’ of marks 3.30, 3.41 infringement, and 7.45 interdependency principle 3.28–3.32 likelihood of association 3.26 likelihood of confusion 3.30, 3.31 assessment complicated 3.27 evidence, of 9.26–9.32 global assessment 3.25, 3.31 imperfect recollection 3.33 overall impression 3.36 meaning of 3.27 principles of assessment 3.25 passing off (deception), for 8.58–8.65 evidence of actual confusion or deception 8.61–8.62 factual question 8.58 initial interest confusion 8.65 necessity for a likelihood of 8.58–8.65 relevant proportion of consumers confused 8.60 presumed confusion 7.45 principles of law 3.36–3.38 similarity between marks 3.33–3.42 distinctive character of earlier mark 3.31 elements, of 3.28, 3.33 ‘family’ of marks 3.30, 3.41 normal and fair use 3.35 notional average purchaser 3.34 imperfect recollection of consumer 3.33 minimal level of similarity required 3.29, 3.30

435

Index confusion (cont.): similarity between marks (cont.): similarity of goods/services see similarity of goods/services ‘wrong’ sort of confusion 8.63 co-ownership 6.04 copyright protection, of 3.10 costs see also interim injunctions accounts of profit 9.101 civil procedure 9.18 criminal procedure 9.173 indemnities against 9.115, 9.121 infringement proceedings 4.64, 9.57–9.59 inquiry as to damages, and 9.94 interim injunctions 9.57–9.59 UKIPO proceedings, in 4.64 counterclaim for invalidity 7.74, 9.39 counterfeiting see criminal offences Court of First Instance (CFI) see General Court Court of Justice of the European Union (CJEU) 1.06 appeals from General Court 1.13 points of law only considered 1.13 appeals from OHIM 1.12, 4.99 duration of process 4.100 backlog of cases 1.13 binding nature of decisions 1.14 development of case-law 1.12–1.15 difficulty of interpreting decisions 1.14 guidance on identical marks 3.16–3.19 jurisprudence, extent of 1.15 precedent, as 1.14 Reasoned Orders, issue of 1.13 reference from national courts 1.12–1.14 problems of time and cost 1.13, 1.14 role of CJEU to give guidance 1.13, 1.14 criminal offences 9.149–9.169 actus reus 9.156, 9.157 applying a mark to goods 9.149–9.163 burden of proof 9.153, 9.154 consent 9.153 defences 9.160–9.161 falsely representing trade mark as registered 9.167 falsification of Register 9.166 forfeiture, and 9.168–9.169 identical marks 9.155, 9.158 local weights and measures authorities’ role 9.150, 9.170 enforcement powers 9.165 mens rea 9.152 offences partnerships and bodies corporate, committed by 9.164 triable either way 9.162 penalties 9.163 ‘signs likely to be mistaken for the mark’ 9.155, 9.158 statutory offences 9.149, 9.156

trading standards as prosecutor 9.150, 9.171 criminal procedure 9.170–9.174 appeals 9.174 commencement of proceedings 9.171 costs 9.173 evidence 9.172 prosecutors 9.170, 9.171 cross-undertaking in damages see interim injunctions customary in the trade 2.47–2.48 Customs and Excise national scheme for detention of goods 9.111–9.118 condemnation proceedings 9.117 documents 9.115 fees 9.115 indemnity against costs 9.115 information to be supplied to Customs and Excise 9.114 notice in writing 9.113 prohibited goods 9.116 cybersquatting 7.20. 8.54, 9.133, 9.134 damage to mark with a reputation see mark with a reputation damages see also remedies for infringement/passing off assessment of 9.84–9.95 ‘but for’ test 9.99 choice of remedy 9.83 compensatory and not punitive 9.85 damages, inquiry as to 9.80, 9.81, 9.82 assessment of damages 9.84–9.95 confused customers, damages for 9.87 cost of pursuing inquiries 9.91 costs of 9.94 damages as compensatory 9.85 heads of damage 9.86 injury to reputation 9.91 interest on damages 9.93 limitation 9.92 lost sales 9.88 onus on claimant 9.86 proprietor and licensees, positions of 9.95 ‘user’ principle/notional licence fee 9.89, 9.90 interest on damages 9.93 date of filing 4.86 dealings in marks see assignments; licences deceptive marks 2.120–2.122 defences 7.72, 7.76–7.100 see also infringement; passing off acquiescence 7.121–7.123 concurrent registered marks 7.77–7.78 concurrent unregistered rights 7.98–7.100 consent of proprietor 7.30–7.31, 7.101–7.117 ‘Euro-defences’ 7.118–7.119 exhaustion of rights 7.101–7.117

436

Index honest practices in industrial or commercial matters 7.81–7.84 honest use of descriptive terms 7.88–7.91 honest use of own name and address 7.79–7.80, 7.85–7.87 passing off, to 8.87–8.92 promotional use 7.35 use of own registered mark 7.77–7.78 use necessary to indicate intended purpose 7.92–7.97 use not affecting trade mark function 7.37–7.43 delay see interim injunctions delivery up 9.104–9.109 limitation 9.108 statutory provisions 9.104–9.108 descriptive marks 2.07, 2.39–2.46, 2.71 combination of descriptive and trade terms 2.45 exclusively descriptive marks 2.39, 2.43 honest use of descriptive terms 7.88–7.91 passing off, and 8.36–8.41 publications 8.41 registration 2.39–2.46 secondary meaning, establishment of 8.38 descriptive words 2.33–2.34 in foreign language 2.59 designs protection, of 3.10 registration 2.80 detention of goods by Customs and Excise 9.111–9.130 European scheme 9.119–9.130 application by right holder 9.113, 9.114 counterfeit goods 9.123–9.126 counterfeit goods, definition of 9.123, 9.124 destruction of goods 9.128, 9.130 documents 9.121 fees 9.121 goods seized on initiative of Customs and Excise 9.122 indemnity against costs 9.121 notification of detention 9.129 prohibiting entry/export 9.125 time limits 9.120 ‘watch’ notice 9.127 introduction 9.111, 9.112 national scheme for detention of goods 9.111–9.118 condemnation proceedings 9.117 documents 9.115 fees 9.115 indemnity against costs 9.115 information to be supplied to Customs and Excise 9.114 notice in writing 9.113 prohibited goods 9.116 detriment to mark with a reputation 3.64–3.65 see also dilution; mark with a reputation device marks

colour 2.103 distinctiveness 2.22, 2.79 genericism and 5.37 registration 2.79–2.80 similarity causing confusion 3.38 devoid of distinctive character 2.30, 2.31–2.38 see also capable of distinguishing goods or services; distinctiveness acquisition of distinctive character 2.38, 2.49, 5.42 descriptive words 2.33–2.34 laudatory marks or slogans 2.34 public policy 2.32 signs incapable of identifying origin 2.33 ‘spectrum’ of recognition of sign as marks 2.33 surnames 2.36 threshold of distinctiveness 2.31 dilution 3.59, 3.61, 3.70, 8.78–8.83 directors’ liability 9.06 disclaimers 4.31, 4.88 disclosure in civil proceedings 4.60, 9.20, 9.79, 9.83 interim injunctions 9.52 in UKIPO proceedings 4.60 names of infringers/sellers 9.05, 9.48, 9.75 distinctive marks capable of distinguishing 2.20 identification of goods or services 1.16 origin, of 1.18 distinctiveness acquisition of distinctive character 2.29, 2.38, 2.49–2.57, 5.42 limping marks 2.55–2.57 colour, consistent use of particular 7.47 detriment to mark’s distinctive character 3.59–3.63 fulfilling functions dependent on 7.01 inherent 2.20–2.48 loss, of 5.35 dilution, by 8.78–8.83 protecting 1.22 shapes, of 2.84, 2.85 departure from the norm 2.86–2.91 standard, of 2.21–2.22 test for new trade mark 2.03, 2.20 three-dimensional marks 2.84, 2.85 division of application 4.35, 4.93 domain names 1.31 cybersquatting 8.54 dispute resolution 9.131–9.133 infringement, and 7.20, 7.131 misrepresentation 8.52 registration as trade mark 2.60 search of Registers 2.05 dominant position see abuse of dominant position double identity 1.22, 1.28 duration of trade mark rights 4.73, 4.93

437

Index earlier rights consent of earlier proprietor 3.86 CTMs, and 4.95 definition 3.10, 3.82 local significance 3.11, 3.82, 3.84, 3.85 protection, of 3.76 relative grounds for refusal of registration 3.10– 3.11, 3.82–3.85 earlier trade marks 3.02–3.06 acquiescence (UK) 5.52–5.57 conflict between marks 3.12–3.13, 4.33 consent 3.86–3.87 definition 3.02 disclaimers 4.31, 4.88 OHIM 5.69 relative grounds for refusal of registration 3.02–3.06 examination for earlier marks 3.07–3.09 examination procedure, OHIM 3.08 examination procedure, UKIPO 3.07–3.09 pending applications treated as ‘earlier marks’ 3.03 use, requirement to prove 3.05 well-known marks 3.06 ECJ see Court of Justice of the European Union (CJEU) emblems 2.126, 2.127, 2.128, 7.128 estoppel 5.49, 5.50, 5.69 EU law abuse of dominant position see abuse of dominant position anti-competitive behaviour see anti-competitive behaviour assignments 6.58–6.59 exemptions/block exemptions 6.70–6.74 free movement of goods and services 6.51, 6.52, 6.60, 6.61 further changes 1.09–1.11 ground for refusal of registration 2.123–2.126 harmonisation 1.04–1.08 1.21, 6.52 effect, of 1.06, 1.15 main structural changes 1.07 licences 6.60–6.77 quantitative restrictions of imports 6.53 vertical distribution 6.66, 6.69 ‘Euro-defences’ 7.118–7.119 European Commission 1.09–1.10 European Court of Justice (ECJ) see Court of Justice of the European Union (CJEU) European law see EU law European scheme for detention of goods see detention of goods by Customs and Excise evidence 9.19–9.32 confusion, of 9.24–9.32 disclosure 9.20 expert evidence 9.20, 9.26, 9.29 fresh evidence on appeal 4.70 infringement/passing off claims 9.22–9.24 non-use of mark 5.07

surveys 9.21, 9.29–9.32 threats actions 9.08 UKIPO procedure see UKIPO procedure witness statements 9.20, 4.57–4.58 examination see UKIPO procedure; OHIM procedure examination (UKIPO) 4.24–4.28 invalidity, and 5.50–5.51 official searches 3.07 identification of potential conflict 3.07 OHIM 4.88–4.90 opposition 3.07 pending applications 3.03 refusal of registration 3.01, 3.03 relative grounds 3.01–3.09 well-known marks 3.06 exclusive licences see licences; licensees; licensing exhaustion of trade mark rights 7.101–7.117 adoption of goods by proprietor 7.105 concept/effect of 7.101 consent 7.10, 7.30–7.31, 7.107–7.109 control of initial offer of goods 7.103 ‘Euro-defences’ 7.118–7.119 harmonisation of law in EU 7.102, 7.110 international exhaustion 7.110–7.115 licences 6.60–6.61 proprietor’s legitimate interest 7.106 proprietor’s own goods 7.105 reputation damage to the mark 7.104 resale of marked goods 7.104 opposition to, legitimate reasons for 7.106, 7.116–7.117 ‘seconds’, sale of 7.104 third party use of mark 7.103 Trade Marks Act 1994, section 12(2) 7.116–7.117 expert evidence 9.20, 9.26, 9.29 export 7.18 falsely representing mark as registered 9.167 falsification of Register 9.166 ‘family’ of marks 3.30, 3.41 famous people see celebrity endorsement; characters and famous names fees Madrid Protocol procedure 4.103, 4.106, 4.116 OHIM procedure 4.85, 4.86 UKIPO procedure 4.03, 4.08 renewal fee 4.73 series of marks 4.06 figurative marks 2.91 see also distinctiveness similarity to earlier marks 3.41 two-dimensional representations of product 2.91 filing date of filing 4.21–4.23 foreign marks 4.22 priority date, effective as 4.22, 4.23 OHIM procedure 4.86

438

Index revocation procedure (UK) 5.32 UKIPO procedure 4.05 foreign words 2.59 forfeiture of counterfeit goods criminal procedure, and 9.168–9.169 ‘forum shopping’ 9.41 franchises combination licences, for 6.34 competition, affecting 6.67, 6.69 fraud instrument of 8.54 passing off 8.84 free movement of goods and services 1.20, 6.51, 6.52, 6.60, 6.61 see also EU law free trade barriers, to 1.19 freezing orders 9.03 functions of trade marks 1.16–1.28 additional broader functions 1.23–1.28 advertising 1.25, 1.27 distinctiveness, and 7.01 economic functions 1.16 essential function, of 1.20, 2.20 public policy consideration 2.32 guarantee of identity 1.16, 1.17 innovation and investment, protection of 1.25, 1.27 legislative protection, of 1.24 origin function 1.17, 1.18, 2.03 protecting 1.21–1.22 quality, guarantee of 1.25–1.26 reputation, protection of 1.23, 1.24 scope, of 1.16 shapes 2.83 Gazette of International Trade Marks 4.108 General Court appeals CJEU, to 4.99 interpretation of the regulation 1.14 non-binding nature of decisions 1.14 OHIM Boards of Appeal, from 1.12, 4.98 precedent, decisions as 1.14 genericism 5.34–5.37 acts or inactivity of proprietor 5.34–5.35 CTMs 5.63 device marks, application to 5.37 distinctiveness, loss of 5.35 ‘in the trade’, definition 5.36 procedure 5.40 genuine use see non-use of marks Geographical Designations of Origin for Wines and Spirits 2.124, 2.125 geographical indications see also Protected Geographical Indications distinctive character, acquisition of 2.50 infringement 7.129–7.130

marks designating geographical origin 2.46 protection, of 1.31, 7.129–7.130 get-up passing off, and 8.42–8.45 registration as mark 2.101–2.102 goods see also identical marks/identical goods or services; similarity of goods/services registration of name, of 2.72 shape of 2.86, 2.93 goodwill 7.01 abandoned 8.27–8.28 assignment of mark with or without 6.05, 6.06 foreign 8.20–8.24 licensing of mark, and 6.15 passing off, for 8.07, 8.11–8.32 see also passing off personality 8.70 residual 8.27–8.28 shared 8.29–8.32 Grand Board of Appeal (OHIM) 4.97 appeal to General Court and CJEU 1.13, 4.98, 4.99 graphical representation colour 2.106, 2.107 criteria for registrability 2.09, 2.10, 2.16–2.19 general issues 2.18–2.19 form, of 2.16 moving images 2.112 musical or sound marks 2.17, 2.109–2.111 sufficiency, of 2.19 harmonisation of EU law see under EU law hearings, in UKIPO 4.61–4.64 High Court appeals to 4.66–4.67 civil procedure 9.10, 9.11, 9.14, 9.16 honest concurrent use acquiescence 5.54 concurrent rights 1.23 registration of later mark 3.88–3.89 similar marks 3.88–3.89 honest practices in industrial or commercial matters 7.81–7.84 honest use of descriptive terms 7.88–7.91 honest use of own name and address 7.79–7.80, 7.85–7.87 identical marks/identical goods or services see also similarity of goods/services addition of names or words 3.20–3.22 CJEU guidance 3.16–3.19 confusion 3.28–3.32 presumed 7.45 identical marks/signs, meaning of 3.15–3.21 identity as qualified 3.16 insignificant differences 3.16, 3.17 material, adding 3.20–3.21 recollection of average consumer 3.16, 3.24

439

Index identical marks/identical goods or services (cont.): infringement 7.44–7.45 relative grounds for refusal of registration 3.14–3.24 identical marks/signs, meaning of 3.15–3.21 identity of goods/services 3.22–3.24 levels of conflict between marks and earlier registered marks 3.12 specification 3.22–3.24 identical or similar marks/identical or similar goods confusion 3.28–3.32, 7.46 infringement 7.46–7.50 notional fair use 7.47 scope of protection 7.48–7.49 relative grounds for refusal of registration 3.25–3.27 likelihood of confusion 3.27 similarity, meaning of 3.13 identification of goods or services distinctive marks 1.16 illegality grounds for refusal of registration 2.123–2.126 imitation of get up 8.42–8.45 immoral marks 2.118–2.119 imperfect recollection 3.33 importation, infringement by 7.18 incorporeal moveable property registered trade mark, as 6.01 infringement 7.01–7.131 see also civil procedure; passing off; remedies for infringement/passing off advantages over passing off action 7.03 comparative advertising 7.58–7.71 rules, of 7.62–7.71 Trade Marks Act 1994, section 10(6) 7.59–7.61 conditions, for see conditions for infringement confusion see confusion counterclaim for revocation or invalidity 5.02, 7.74 defences 7.72, 7.76–7.100 acquiescence 7.121–7.123 concurrent registered marks 7.77–7.78 concurrent unregistered rights 7.98–7.100 consent of proprietor 7.30–7.31, 7.101–7.117 ‘Euro-defences’ 7.118–7.119 exhaustion of rights 7.101–7.117 honest practices in industrial or commercial matters 7.81–7.84 honest use of descriptive terms 7.88–7.91 honest use of own name and address 7.79–7.80, 7.85–7.87 use of own UK mark 7. 77 use necessary to indicate intended purpose 7.92–7.97 use not affecting trade mark function 7.37–7.43 detriment/unfair advantage 7.51–7.57 current scope of UK infringement actions 7.52–7.56 due cause 7.57

double identity 1.22, 1.28 exhaustion of rights 7.101–7.117 forms, of 7.07–7.08 identical marks 7.44, 7.45 dissimilar goods and services, 7.51–7.57 similar goods and services 7.46, 7.47 importation/goods in transit 7.18 internet, and see internet jurisdiction 9.33, 9.36–9.41 licensees’ rights of action 6.13, 6.20–6.25 parties 6.07, 6.13, 6.20–6.25, 9.06 statutory provisions 7.07–7.08 threats actions see threats actions trade, definition 7.28 trade libel 7.09 ‘trade mark’ use 7.37–7.43 Trade Marks Act (1994) 7.10–7.13 conditions for infringement actions 7.12–7.13 section 10(6) 7.59–7.61 use affecting functions of mark/guaranteeing origin 7.37–7.43 use in relation to goods or services 7.33–7.36 use in the course of trade 7.28–7.29 use of a mark 7.14–7.27 business or company name, as 7.34 consent of the proprietor 7.30–7.31 incidental use 7.17 indicator of origin 7.37–7.43 internet, and 7.19–7.27 promotional 7.35 ‘trade mark’ use 7.37–7.43 UK, within 7.25 visible at point of sale 7.29, 7.33 use of an identical (similar) sign 7.32 use without the consent of the proprietor 7.30–7.31 injunctions 9.46–9.50 see also interim injunctions committal for contempt of court 9.78 definition 9.46 enforcement 9.78 fines 9.78 mandatory orders 9.47 scope of order, matters affecting 9.77 types, of 9.47 interim injunction see interim injunctions permanent injunctions 9.76–9.78 quia timet injunctions 9.76 wording of Order 9.49–9.50, 9.78 Intellectual Property (Enforcement) Regulations 9.05 Intellectual Property Enterprise Court 9.01–9.03 interdependency principle 3.28–3.32 interim injunctions 9.03, 9.42–9.45, 9.51–9.60 American Cyanamid 9.62–9.63 arguable case 9.45, 9.64, 9.65 balance of convenience 9.58, 9.70 comparative advertising cases 9.45, 9.62 costs 9.57–9.59

440

Index cross-undertakings in damages 9.59–9.60 damages cross-undertaking in damages 9.59–9.60 inadequate remedy to the claimant 9.66–9.68 delay 9.44, 9.71–9.73 prejudice to defendant 9.72 disclosure 9.52 freezing orders 9.03 importance of 9.43, 9.52 Norwich Pharmacal orders 9.48 principles applied to grant 9.61–9.75 arguable case 9.45, 9.64, 9.65 balance of convenience 9.58, 9.70 damages as adequate remedy 9.69 damages as inadequate remedy 9.66–9.68 status quo 9.74–9.75 procedure 9.42, 9.54, 9.55 quia timet injunctions 9.76 search orders 9.03 speedy trial 9.56 status quo 9.74–9.75 undertakings, defendant’s 9.55 urgency 9.53 international conventions 4.102–4.125 see also Madrid Protocol; Paris Convention for the Protection of Industrial Property; TRIPS Agreement internet goodwill, trade generating 8.17–8.18 infringement and use of trade mark 7.19–7.27 adwords 7.21–7.24, 7.27, 7.29, 8.52 cybersquatting 7.20 domain name 7.20 jurisdiction 7.19, 7.26–7.27 keywords 7.19, 7.21–7.24, 7.43, 7.45 metadata/metatags 7.14, 7.20, 8.52 signs 7.19 sponsored links 7.21, 7.23, 7.24 misrepresentation, and 8.52 invalidity of registration (CTMs) 5.58–5.59, 5.65–5.70 applicant 5.69 bad faith 5.66 conversion to national mark 5.62, 5.64 earlier rights 5.67 effect 5.70 estoppel, and 5.69 forum 5.73 grounds absolute 5.65 relative 5.67 procedure 5.72 relevant date 5.63 use, proof of 5.68 invalidity of registration (UK marks) 5.01, 5.41–5.51 abuse of process, and 5.49, 5.50 applicant 5.44 application for declaration of 5.46

court, before 5.46 UKIPO, before 5.46 challenges to validity of registration 7.74–7.75 declaration of invalidity, extent of 5.47 distinctiveness acquisition, of 5.42 loss of 5.43 earlier rights, and 5.44–5.45 effect 5.47, 5.48 estoppel, and 5.49, 5.50 partial 5.41 procedure 5.51 relevant date 5.45 issue estoppel 5.33, 5.50 joint applications 4.10 joint liability 9.06 joint ownership 6.04 ‘junior’ marks 2.06 honest concurrent use 1.22, 2.04, 3.89 reputation, and 3.55 jurisdiction see also High Court; Intellectual Property Enterprise Court CJEU 1.15 CTMs 9.33, 9.36–9.41 foreign defendants 9.33–9.34 forum shopping 9.41 infringement claims 9.33–9.41 advertising 7.25–7.27 general rule 9.33 permission, requirement for 9.34 Intellectual Property Enterprise Court 9.01–9.03 internet 7.19, 7.26–7.27 UKIPO appeal procedure 4.66–4.67, 4.69 kind, marks designating 2.46 labels infringement on 7.15 obliteration of 9.106 language for CTM application 4.83 registration of foreign words 2.59 laudatory epithets registration 2.73 slogans 2.75, 2.76 letters and numerals registration 2.77–2.78 licences see also licensees; licensing anti-competitive behaviour see anti-competitive behaviour assignment, of 6.18 bare licence 6.14 breach of, 6.13 combination licences 6.33–6.36 franchises 6.34 merchandising rights 6.35 duration, of 6.46

441

Index licences (cont.): exclusion of statutory rights 6.21 exclusive licences 6.12, 6.17, 6.20, 6.26–6.32, 6.42 closed 6.63 damages, sharing 6.31 defences 6.32 definition 6.26 open 6.63 partial or limited 6.26 rights of action 6.27–6.29 exhaustion 6.60–6.61 see also exhaustion of trade mark rights formalities 6.16 grant, of 6.17 refusal to grant 6.75, 6.77 infringement proceedings 6.13 property rights, in 6.17 provisions 6.37–6.49 exclusivity 6.42 goods or services 6.44 miscellaneous 6.50 parties 6.38, 6.39 rights to be licensed 6.40–6.42 royalties 6.45 term 6.46–6.49 termination 6.46–6.49 territory 6.43 use of the mark 6.41 registration 6.19 succession rights 6.18 licensees see also licences; licensing damages, rights to receive 6.25, 6.31 proprietor and licensees, positions of 9.95, 9.103 defences 6.32 delivery up, and 6.30 exclusive licensees 6.20, 6.26–6.32 interim relief 6.22, 6.24 rights of action 6.20–6.25, 6.27–6.29 initiation of infringement proceedings 6.21, 6.23, 6.27 statutory rights, exclusion of 6.21 licensing 6.02, 6.03, 6.11–6.50 see also licences; licensees bare licence 6.14 competition, fostering 6.69 see also anticompetitive behaviour control, of 6.11, 6.14, 6.15 EU law, and 6.60–6.77 goodwill, and 6.15 infringement proceedings 6.13 likelihood of association see confusion likelihood of confusion see confusion likelihood of deception see passing off ‘limping’ marks distinctive character, acquisition of 2.55–2.57 shapes as 2.88 local significance, marks of see earlier rights

local weights and measures authorities enforcement powers 9.165 prosecutor, as 9.150, 9.170 logos see device marks Madrid Protocol 4.103–4.118 administration 4.105 benefits of system 4.104, 4.118 CTMs, and 4.117 fees 4.103 handling fee 4.106 payable to UKIPO 4.116 international application procedure 4.106–4.112 opposition 4.110 official languages 4.107 priority rights 4.114 protection, limits to 4.113 publication 4.108 registration 4.111–4.112 duration 4.115 refusal by national offices 4.109 renewals 4.112 transformation applications 4.114, 4.116 UK ratification 1.04, 4.103 malicious falsehood 7.09 marks see Community Trade Marks; earlier marks; trade marks; unregistered trade mark rights; well-known marks marks with a reputation see also reputation confusion, and 3.12 likelihood of confusion 3.56 link with earlier mark 3.56–3.58 no confusion as to origin 1.23 dilution 3.59, 3.61, 3.70 infringement 7.51–7.57 link between marks 3.56, 3.57 relative grounds for refusal of registration 3.50–3.72 damage to, as ground for refusal of registration 3.51 detriment to mark’s distinctive character 3.51, 3.59–3.63 detriment to mark’s repute 3.51, 3.64–3.65 link 3.56–3.58 reputation 3.54–3.55 types of injury protected against 3.51 unfair advantage 1.23, 3.51, 3.65–3.72 reputation 3.50, 3.51 scope of protection given by CJEU 1.15, 1.23–1.28 types of injury 3.51 unfair advantage 3.66–3.72 detriment, requirement to prove 3.61 intention 3.68, 3.71 use without due cause 3.73–3.75 memorabilia, registrability of 2.64–2.67 merchandising 8.68–8.73

442

Index metadata and metatags infringement of trade mark, and 7.14, 7.20 passing off 8.52 misleading advertising see comparative advertising misleading marks 2.120–2.122, 5.38–5.39, 5.43, 5.63 bare licence, grant of 5.39 CTMs, and 5.63 registration 2.120 revocation procedure 5.40 use made by proprietor 5.38 misrepresentation advertising, and 8.47 deception evidence of actual confusion, providing 8.61–8.62 factual question 8.58 initial interest confusion 8.65 necessity for a likelihood of 8.58–8.65 proportion of consumers deceived 8.60 ‘wrong’ sort of confusion 8.63 deceptive indicia 8.55 domain names 8.52 forms of 8.46–8.48 indirect 8.48 passing off, and 8.46–8.55 morality, marks contrary to 2.118–2.119 moving images registration 2.112 musical or sound marks graphical representation 2.17, 2.109, 2.111 registration 2.109–2.111 names business names 8.21 characters and famous names passing off 8.68 registration 2.63–2.67 company names infringement 7.131 opportunistic registration 1.31, 9.134–9.138 registration 2.60 search of Registers 2.05 domain names dispute resolution 9.131–9.133 infringement, and 7.20, 7.131 misrepresentation 8.52 passing off 8.54 registration 2.60 search of Registers 2.05 honest use of own name and address defence to infringement, as 7.79–7.80, 7.85–7.87 defence to passing off, as 8.88–8.91 magazine titles 8.41 nicknames, registration of 2.60 publication names 8.41 registration 2.60–2.68

surnames devoid of distinctive character 2.36 registration 2.60 UKIPO practice 2.61–2.62 trade names infringement 7.131 national emblems/flags injunctive relief 7.128 protection, of 2.126 Nice Classification 4.13, 4.87 nicknames see also names registration 2.60 Nominet 9.131, 9.132 non-profit making organisations infringement of a mark in the course of trade 7.28–7.29 trade mark, use of 5.16 passing off 8.13 non-trade mark rights, protection of 7.129–7.131 company names, trade names and domain names 7.131 geographical indications/designations of origin 7.129–7.130 non-use of marks 5.06–5.20 form in which mark used 5.18–5.19 promotional goods 5.15, 5.17 reasons, for 5.23–5.25 examples, of 5.23–5.25 proper reasons 5.23–5.25 use, evidence of 5.07 different form, in 5.18, 5.19 genuine, commercial use 5.08–5.11, 5.13–5.15 non-profit making use 5.16 resumption, of 5.21–5.22 scale, of 5.12–5.13 notional average purchaser 3.34 numerals see letters and numerals obliteration of offending marks/signs 9.104–9.109 limitation 9.108 statutory provisions 9.104–9.108 observations in OHIM 4.91 in UKIPO 4.37, 4.65 offences see criminal offences Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 1.10 OHIM procedure see also invalidity of registration (CTMs); invalidity of registration (UK marks) appeals 4.97–4.101 Boards of Appeal 4.97 CJEU, to 1.12, 4.99 duration 4.100 General Court, to 1.12, 4.98 Grand Board of Appeal 4.97 Internal Boards of Appeal 1.12 jurisdiction 4.97–4.99

443

Index OHIM procedure (cont.): appeals (cont.): permission, to 4.97 point of law, appeal on 4.99 applications 4.83–4.87 classification of goods/services 4.87 contents 4.86 domicile of applicant 4.84 fees 4.85, 4.86 filing 4.86, 4.87 publication 4.90 repeat applications 2.138 representation 4.84 cancellation 5.69 conversion to national mark 4.94 date of filing 4.86 division of application 4.93 earlier marks, examination for 3.08 earlier rights, and 4.95 fees 4.85, 4.86 filing 4.86 official examination 4.88–4.89 official languages 4.83 opposition procedure 4.91, 4.92 time limits 4.91 priority of application 4.86 registration 2.27 alteration 4.93 duration 4.93 surrender 4.93 restitutio in integrum 4.101 revocation 5.61 search of Registers 4.89 Olympic and Paralympic symbols protection of 2.123 opportunistic company name registration 1.31, 9.134–9.138 Company Names Tribunal, complaints to 9.136, 9.138 defences 9.136 objections to names 9.134 reputation per se, application succeeding on basis of 9.137 opposition procedure (UK) 4.37–4.64 case management conferences 4.43, 4.56 costs awards 4.64 counterstatements, 4.49–4.51 decision by hearing officer 4.63 evidence additional evidence 4.59 challenging 4.62 directions 4.56 disclosure 4.60 exchange, of 4.56 form of 4.57–4.59 timing 4.56

witness statements 4.57–4.58 fast track scheme 4.38–4.39 hearings 4.61 importance of 4.41 notice of opposition (Form TM7) 4.44, 4.45, 4.46 observations 4.65 preliminary indications 4.53, 4.55 relative grounds, opposition on 4.40, 4.42, 4.53 response to notice of opposition (Form TM8) 4.49–4.51 rules 4.43 service of Form TM7 4.44, 4.45, 4.46, 4.49 statements of case/grounds 4.46, 4.47, 4.48, 4.49 amendments 4.46 stay of proceedings 3.03 time limits 4.44, 4.50–4.52 origin see also functions of trade marks; Protected Designations of Origin (PDOs); own name and address, use of 7.79–7.80, 7.85–7.87, 8.88–8.91 packaging, get-up and trade dress passing off, and 8.42–8.45 registration of 2.101–2.102 parallel imports 6.58, 6.60, 6.65, 7.116–7.117 Paris Convention for the Protection of Industrial Property (Paris Union) 1.04, 1.05, 4.119–4.123 national treatment 4.120 priority, rights of 4.121 well-known marks, protection of 3.06, 4.122 partial revocation see revocation (CTMs); revocation (UK marks) parties see infringement partnerships criminal offences, and 9.164 passing off 1.02, 1.03, 1.29, 2.06, 8.01–8.92 see also remedies for infringement/passing off celebrity endorsement 8.68–8.73 character merchandising 8.68–8.73 common field of activity 8.66–8.67 common law action, as 8.02–8.03 damage 8.07, 8.74–8.83 actionable damage 8.76, 8.77 causation 8.75–8.76 dilution, by 8.78–8.83 likely to be caused 8.74 misrepresentation, and 8.76, 8.77 proof of 8.74 deception deceptive indicia 8.55 necessity of likelihood of 8.58–8.65 decision to live dangerously, and 8.86 defences 8.87–8.92 name, bona fide use of 8.88–8.91 definition 8.04, 8.06 descriptive marks 8.36–8.41 determinants

444

Index damage 8.07, 8.74–8.83 goodwill 8.07, 8.11–8.32 misrepresentation 8.07, 8.46–8.55 dishonesty 8.84–8.85 foreign goodwill 8.20–8.24 geographical extent 8.14, 8.16–8.19 internet, and 8.17, 8.18 forms, of classic form 8.05–8.10 extended form 8.08, 8.09 fraud, and 8.84 get-up 8.42–8.45 goodwill 8.07, 8.11–8.32 definition 8.11 dishonest appropriation of 8.85 duration 8.16 foreign goodwill 8.20–8.24 protectable goodwill 8.13 protection of goodwill as object of passing off 8.12 residual goodwill 8.27–8.28 shared goodwill 8.29–8.32 infringement action, and 1.08, 7.03 introduction 8.01–8.04 misrepresentation 8.07, 8.46–8.55 advertising, and 8.47 damage, and 8.76, 8.77 deception 8.58–8.65 deceptive indicia 8.55 direct 8.47 domain names 8.52 forms, of 8.46–8.48 indirect 8.48 object of passing off, protection of goodwill as 8.12 principles 8.03 protectable indicia 8.31–8.45 reputation 8.11–8.32 pre–trading reputation 8.25–8.26 shared reputation 8.29–8.32 reverse passing off 8.56–8.57 third party rights, and 7.05, 7.06 Trade Marks Act, and 1.08 Patents County Court see Intellectual Property Enterprise Court pecuniary remedies 9.79–9.103 account of profits 9.80, 9.81, 9.83, 9.96–9.103 ‘but for’ test 9.99 costs of 9.101 equitable and discretionary remedy 9.96 limitation 9.102 principles on which granted 9.97 proprietor and licensees, positions of 9.103 purpose 9.98 damages, inquiry as to 9.80, 9.81, 9.82 assessment of damages 9.84–9.95 confused customers, damages for 9.87 cost of pursuing inquiries 9.91

costs of 9.94 damages as compensatory 9.85 heads of damage 9.86 injury to reputation 9.91 interest on damages 9.93 limitation 9.92 lost sales 9.88 onus on claimant 9.86 proprietor and licensees, positions of 9.95 ‘user’ principle/notional licence fee 9.89, 9.90 penalties 6.68, 9.163 period of registration 4.73 permanent injunctions see injunctions personal property registered trade mark, as 6.01 priority, rights of 4.22, 4.23, 4.86, 4.114, 4.121 procedure see invalidity of registration (CTMs); invalidity of registration (UK marks); OHIM procedure; registration; remedies for infringement/passing off; revocation (CTMs); revocation (UK marks) proceedings see infringement; passing off profits see account of profits Protected Designations of Origin (PDOs) 2.124, 7.129–7.130 Protected Geographical Indications (PGIs) 2.124, 7.129–7.130 public, definition of 2.24 public policy, marks contrary to 2.118 publication of application 4.37, 4.90 publication, title of 8.41 purchaser, notional 3.34 purpose, marks designating 2.46 quality assurance function see functions quality, marks designating 2.46 quantity, marks designating 2.46 quia timet injunctions 9.76 rectification see invalidity; revocation UK Register 4.77 refusal of registration damage to a mark with a reputation see under marks with a reputation earlier trade marks see earlier trade marks examination procedure, OHIM 3.08 examination procedure, UKIPO 3.07–3.09 grounds for refusal absolute grounds 2.117–2.128, 4.32 bad faith 2.129–2.148 deceptiveness 2.45, 2.120–2.122 illegality 2.123–2.126 national emblems 2.126 public policy 2.45, 2.118–2.119 relative grounds 3.14–3.85, 4.33 specification, width of 2.137

445

Index refusal of registration (cont.): opposition proceedings 3.09 earlier rights see earlier rights earlier trade marks see earlier trade marks general scheme of section 5(1)-(3) 3.12–3.13 honest concurrent use 3.88–3.89 identical marks, goods or services see identical marks/identical goods or services identical/similar marks or goods see identical or similar marks/identical or similar goods interdependency principle 3.28–3.32 protection of non-trade mark rights 3.76–3.81 similarity of goods/services see similarity of goods/services similarity between marks 3.33–3.42 without due cause 3.73–3.75 registered designs protection of 2.80 registration 1.02–1.03, 2.01–2.154 see also invalidity of registration (CTMs); invalidity of registration (UK marks ); OHIM procedure; revocation (CTMs); revocation (UK marks); UKIPO procedure absolute qualities for registration 2.04 agents, by 4.75 alteration Community Trade Mark 4.93 UK mark 4.76 application division of 4.35, 4.93 graphical representation, within 2.18–2.19 proper identification, 2.18–2.19 assignments 6.08, 6.09 bad faith 2.129–2.148 capable of distinguishing goods or services 2.09, 2.20–2.22, 2.28–2.29 capable of graphical representation 2.09, 2.10, 2.16–2.19 non-standard marks 2.17 certificate of contested validity 9.110 challenges to validity of 7.74–7.75 characteristics of new marks 2.11 classification of goods/services 4.13–4.14, 4.87 colours 2.103–2.108 common or customary trade terms 2.47–2.48 compatibility with earlier marks 2.04 conditions before registration 2.09–2.22 capable of distinguishing goods or services 2.09, 2.20–2.22, 2.28–2.29 capable of graphical representation 2.09, 2.10, 2.16–2.19 subject matter of application must be ‘a sign’ 2.09–2.15 deceptive marks 2.45, 2.120–2.122 designs 2.80 device marks 2.79–2.80

446

disclaimers 4.31, 4.88 distinctiveness 2.29–2.38, 2.49–2.57 division of application 4.35, 4.93 duration of registration procedure 4.36 earlier marks 3.02–3.13 earlier rights 3.76 essential characteristics of registrable marks 2.09–2.15 exclusively descriptive marks 2.39, 2.43 exhaustion of trade mark rights 7.101–7.117 expiry, notice of 4.73 extent of rights conferred, by 7.04 falsely representing trade mark as registered 9.167 falsification of Register 9.166 global assessment of likelihood of confusion see under confusion goods, name of 2.72 grounds for refusal see under refusal of registration grounds for refusal, relative grounds see under refusal of registration historically 1.03 honest concurrent use 3.88–3.89 illegality 2.123–2.126 laudatory epithets 2.73 letters and numerals 2.77–2.78 licences 6.19 likelihood of confusion see confusion ‘limping’ marks 2.55–2.57 moving images 2.112 musical or sound marks 2.109–2.111 names 2.60–2.68 new trade mark, choice of 2.03–2.08 notice of expiry 4.73 packaging, get-up and trade dress 2.101–2.102 period of registration 4.73 prima facie evidence of validity of original registration, as 7.74 rectification of Register 4.77 removal of mark from the Register 4.74 renewal 4.72–4.75 restoration to the Register 4.74 shapes 2.27, 2.81–2.100 signatures 2.68 slogans 2.74–2.76 smell and taste marks 2.113–2.116 specification of goods/services 4.07, 4.17–4.18 subject matter of application must be ‘a sign’ 2.09–2.15 surrender Community Trade Mark 4.93 UK mark 4.78 tests: section 3(1) 2.23–2.57 detailed and strict examination 2.23 devoid of distinctive character 2.30, 2.31–2.38 marks not generally capable of being trade marks 2.28–2.29 proviso to section 3(1) 2.28, 2.38, 2.49–2.57

Index public perception 2.24, 2.42 registrations on other national registers 2.27 section 3(1)(a) 2.28–2.30 section 3(1)(b) 2.31–2.38 section 3(1)(c) 2.39–2.46 section 3(1)(d) 2.47–2.48 similar marks in relevant trades 2.25, 2.26 state of the Register 2.26 third party rights, and 7.04 three dimensional marks 2.82–2.85 trade mark licences 6.19 unregistered trade mark rights 3.76–3.81 word marks 2.27, 2.56–2.57, 2.58–2.59, 2.69–2.71 Registry appeals see UKIPO procedure Registry hearings see UKIPO procedure remedies for infringement/passing off see also account of profits; criminal offences; damages; threats actions account of profits see account of profits certificate of contested validity 9.110 committal for contempt of court 9.78 counterclaims 5.02, 9.08, 9.39 damages, inquiry as to see under damages delivery up see delivery up detention of goods see detention of goods by Customs and Excise domain name dispute resolution 9.131, 9.132 injunctions see injunctions interim injunctions see interim injunctions introduction 9.01–9.06 jurisdiction see jurisdiction obliteration of offending marks/signs see obliteration of offending marks/signs pecuniary remedies see pecuniary remedies principles applied to grant 9.61–9.75 comparative advertising, and 9.45, 9.62 repackaging 7.116–7.117 reputation 3.54–3.55 see also mark with a reputation colour, consistent use of particular 7.47 evidence of 3.55, 3.79 meaning 3.54 pre-trading reputation 8.25, 8.26 shared reputation 8.29–8.32 territorial extent 3.54 unfair advantage 3.66–3.72 transfer of mark’s image 3.67–3.68 restitutio in integrum 4.101 restraint of trade 7.120 revocation (CTMs) 5.58–5.59 conversion to national mark 5.59, 5.61, 5.64 forum 5.73 genericism 5.63 grounds 5.60 misleading marks 5.63 non-use 5.58 appropriate test 5.61

partial 5.61 procedure 5.72 successful application, effect of 5.70 revocation (UK marks) 5.01 acquiescence 5.52–5.57, 5.71 bad faith 5.55 date of registration 5.53 five year period 5.52, 5.53 application, for (before court) 5.30 application, for (before Registrar) 5.31 cessation of rights 5.33 discretion to revoke 5.05 effect 5.26 extent, of 5.26–5.29 filing 5.32 forms 5.32 genericism 5.34–5.37 acts or inactivity of proprietor 5.34–5.35 device marks and 5.37 distinctiveness, loss of 5.35 ‘in the trade’, definition 5.36 procedure 5.40 grounds, for 5.04 invalidity 7.74 misleading marks 5.38–5.39, 5.43 bare licence, grant of 5.39 procedure 5.40 use of proprietor 5.38 non-use of mark 5.06–5.20, 7.74 evidence of use 5.07 form of a mark 5.18, 5.19 genuine, commercial use 5.08–5.11, 5.13–5.15, 5.32 non-profit making use 5.16 promotional goods 5.15, 5.17 reasons, for 5.23–5.25 resumption of use 5.21–5.22 scale of use 5.12–5.13 use ‘as a mark’ 5.14 partial 5.26–5.29 deletion 5.29 fair specification, finding 5.26–5.27 procedure 5.30–5.33 reasons, for 5.23–5.25 examples, of 5.23–5.25 proper reasons 5.23 resumption of use 5.21–5.22 export goods 5.20 ‘Right Start’ application service 4.26 royalties 6.45 Scotland registered trade mark as incorporeal moveable property 6.01 search orders 9.03 searches Community Designs register 2.05 national trade mark registers 2.05

447

Index searches (cont.): OHIM 2.05, 4.89 UK Register search 4.24 secondary meaning 8.38 series of marks 4.11–4.12 amendments 4.12 definition 4.11 shape marks appearance of product as mark 2.84, 2.91 departure from the norm 2.86–2.91 distinctiveness 2.27 function as mark 2.83 ‘limping’ marks 2.88 nature of the goods 2.93 public policy 2.87, 2.92–2.97 registration 2.81–2.100 acquired distinctiveness 2.27 difficulties in way of registration of shapes as marks 2.92–2.100 exclusions, from 2.91–2.96 function as a mark 2.83 graphical representation 2.82 three-dimensional marks 2.82–2.85 verbal description 2.82 substantial value given to goods 2.96–2.98 technical result, necessary to obtain 2.94, 2.95 signatures registration 2.68 signs capacity to distinguish 2.33 criteria for registrability 2.20–2.22 colour 2.104 common or customary trade terms 2.47–2.48 graphical representation criteria for registrability 2.16–2.19 nature of 2.09–2.15 registrable signs 2.23–2.57 ‘spectrum’ of recognition as marks 2.35 similarity between marks see also confusion assessment on basis of normal and fair use 3.35 aural similarity 3.33, 3.39, 3.42 complex marks 3.37 conceptual differences, impact of 3.33, 3.39 elements, of 3.37 family of marks 3.30, 3.41 nature of goods/services 3.34 sub-brands as extension of main brand 3.41 visual differences, impact of 3.33, 3.39 visual or aural impact 3.39 similarity of goods/services 3.43–3.49 assessment, of 3.44 complementarity 3.46–3.49 evidence of factors affecting similarity 3.45 slogans fanciful or imaginative slogans 2.76 laudatory slogans 2.34, 2.75, 2.76 registration 2.74–2.76 smell and taste marks

registration 2.113–2.116 taste as a mark 2.116 verbal description, adequacy of 2.113 sound marks see musical or sound marks specification of goods and services 4.07, 4.17–4.18 speedy trial 9.56 statements of case 4.45–4.49 contents of 4.46 stay of proceedings 3.03 surnames distinctive character, devoid of 2.36 registration 2.60 UKIPO practice 2.61–2.62 surrender of registered mark 4.78 survey evidence 9.21, 9.29–9.32 tarnishment 3.64 see also marks with a reputation taste marks see smell and taste marks threats actions 9.08, 9.139–9.148 burden of proof 9.143 damages 9.141, 9.147 declaratory relief 9.141 discretionary power of the court 9.147 evidence 9.145 injunctive relief 9.141 person aggrieved 9.139, 9.140, 9.142 relief 9.141 threat, definition of 9.139, 9.140, 9.144, 9.145 unjustified threat 9.139 without prejudice negotiations 9.148 three dimensional marks 2.82–2.100 see shape marks trade definition 7.28 trade libel 7.09 Trade Mark Directive 1.04, 1.21 proposed changes to 1.10–1.11, 1.28 registrability 2.37 trade marks 1.01–1.03 see also registration categories of marks 2.58–2.116 characteristics 2.11 choice of a new mark 2.03–2.08 co-existence of marks 1.22 colours 2.103–2.108 commercial nature of new marks 2.06 conflict between marks 3.12–3.13 definition 2.10 descriptive marks 1.03, 2.07 designs 2.80 device marks 2.79–2.80 describing 2.06 disclaimers 4.31, 4.88 distinction of brand 1.01, 1.16, 1.22 double identity 1.22, 1.28 earlier marks 3.02–3.06 exclusivity conferred by 7.01–7.06 exhaustion of rights see exhaustion of trade mark rights functions of see functions of trade marks

448

Index goods, name of 2.72 historically 1.03, 1.19 identical marks see identical marks/identical goods or services identical/similar marks see identical or similar marks/identical or similar goods incorporeal moveable property, as 6.01 laudatory epithets 2.73 letters and numerals 2.77–2.78 licences 6.19 memorable nature of new marks 2.06, 2.07 misleading marks 5.38–5.39, 5.63 monopoly, as 1.02, 1.15 moving images 2.112 musical or sound marks 2.109–2.111 names 2.60–2.68 national emblems 2.126, 2.127, 2.128 non-use of mark 5.06 see non-use of marks packaging, get-up and trade dress 2.101–2.102 personal property, as 6.01 protection, of 7.08 registrable marks see registration series of marks 4.11–4.12 shapes see shape marks signatures 2.68 slogans see slogans smell and taste marks 2.113–2.116 statutory protection 1.03 surrender of registered mark 4.78 well-known marks, protection of 1.31 word marks 2.08, 2.27, 2.56–2.57, 2.69–2.71 Trade Marks Rules 4.01 trade names infringement 7.131 protection of 7.131 TRIPS Agreement 4.124–4.125 applicability 4.125 national treatment 4.124 UKIPO procedure see also invalidity of registration (UK marks); registration; revocation (UK marks) alteration of registered mark 4.76 appeals 4.66–4.71 Appointed Persons 4.68, 4.69 Chancery Division 4.66 fresh evidence, admissibility 4.70 jurisdiction 4.66, 4.67, 4.69 permission to appeal 4.66 review, as 4.69 timing 4.66 applications to register UK trade marks 4.01–4.23 abandonment, of 4.52 acceptance by Registrar 4.37 amendments 4.19, 4.29, 4.30 co-proprietors 4.10 disclaimer 4.31 division, of 4.35

449

fees 4.03, 4.08 filing 4.05 forms 4.02 official examination, of 4.24–4.28 requirements 4.04 series of marks 4.06 certificate of intention to use 4.09 classification of goods 4.13–4.20 application in multiple classes 4.15 conflict with earlier marks 2.04, 4.33 notice to relevant proprietors 4.35 period to resolve 4.34 costs, hearings 4.64 date of filing 4.21–4.23 foreign marks 4.22 priority date, effective as 4.22, 4.23 date of registration 4.21 division of application 4.35 duration of procedure 4.36 earlier trade marks 3.02 evidence additional evidence 4.59 challenging 4.62 directions 4.56 disclosure 4.60 exchange, of 4.56 form, of 4.57–4.59 timing 4.56 witness statements 4.57–4.58 examination report 4.28 fees 4.03, 4.08 renewal fee 4.73 filing 4.05 date of filing 4.21–4.23 forms 4.02 Form TM3 4.05, 4.07 Form TM7 4.44–4.46, 4.49–4.50, 4.53 Form TM8 4.50–4.53 Form TM11 4.73 hearings 4.61–4.64 appearance, in person or video link 4.61 costs 4.64 cross-examination 4.62 judgments 4.63 Registrar’s powers 4.61 representation 4.61 skeleton arguments 4.61 time limits 4.61 judgments 4.63 notice of opposition 4.44–4.45 objections 4.29 absolute grounds 4.32 relative grounds 4.40, 4.42, 4.53 observations in UKIPO procedure 4.65 official examination of the application 4.24–4.28 duration 4.25 examination report 4.28

Index UKIPO procedure (cont.): official examination of the application (cont.): further information request 4.27 opposition process see opposition procedure (UK) publication of registration 4.37 registrable marks: section 3(1) 2.23–2.57 colour marks 2.107 detailed and strict examination 2.23 devoid of distinctive character 2.30, 2.31–2.38 proviso to section 3(1) 2.28, 2.38, 2.49–2.57 public perception 2.24, 2.42 registrations on other national registers 2.27 section 3(1)(a) 2.28–2.30 section 3(1)(b) 2.31–2.38 section 3(1)(c) 2.39–2.46 section 3(1)(d) 2.47–2.48 signs not generally capable of being trade marks 2.28–2.29 similar marks in relevant trade 2.25, 2.26 sound marks 2.110 state of the Register 2.26 Registrar’s powers 4.62, 4.64 removal from the Register 4.74 renewal 4.73, 4.74 notice of expiry date 4.73 restoration to the Register 4.74 ‘Right Start’ application service 4.26 series of marks 4.11–4.12 amendments 4.12 definition 4.11 single application for 4.06 surrender of registered mark 4.78 UKIPO search 4.24 unfair advantage damage to mark with a reputation 3.66–3.75 intention 3.68, 3.71 use without due cause 3.73–3.75 unregistered trade mark rights 3.76–3.81 see also passing off; well-known marks assignment 6.10

defence to infringement allegation 7.98–7.100 evidence 3.78–3.80 goodwill, protection of 3.78 opposition to registration application 3.78 protecting 3.76 use see non-use of marks use without due cause damage to mark with a reputation 3.73–3.75 user principle 9.89, 9.90 value, marks designating 2.46 websites see internet weights and measures see local weights and measures authorities well-known marks 1.31 acquiescence, and 7.127 definition 7.125 ground for refusal of registration, as 3.04, 3.06 injunctive relief 7.126, 7.127, 7.128 protection, of 1.31, 7.124–7.128 WIPO administration of Madrid Protocol 4.105 domain name dispute resolution procedures 9.131, 9.132 International Classification of Goods and Services 4.13, 4.14 word marks 2.08, 2.58–2.59, 2.69–2.71 CTM registration 2.27 distinctiveness, acquiring 2.56–2.57 used with 3D marks 2.56 foreign words 2.59 importance of 2.58 laudatory marks or slogans 2.34, 2.76 nature of 2.58 objections often raised against 2.40 plain script 3.19 pronounceable 2.08 World Intellectual Property Organization see WIPO

450