Publications
European IP Bulletin, Issue 8, January -
Trade Mark
Trade Mark
9. Gerolsteiner Brunnen
v PutschOn
7 January 2004, the ECJ gave its judgement in Gerolsteiner Brunnen v Putsch,
Case C-100/02.
The case at issue refers to the interpretation of ‘honest practices’ where
use of a trade mark poses a likelihood of confusion to an earlier registered
mark. This is used as a defence under Art 6(1)b of Directive 89/104/EC, the
Trade Mark Directive. Under the provision, a trade mark shall not entitle
the proprietor to prohibit a third party from using, in the course of trade,
indications concerning the geographical origin of goods provided the third
party uses it in accordance with honest practices in industrial or
commercial mattersThe
questions that arose were whether Art 6(1)b was also applicable if a third
party uses the indications referred to therein as a trade mark and, if so,
must that use be taken into account when considering whether use has been in
accordance with honest practices in industrial or commercial matters. The
mark at issue was the German trade mark GERRI, which was registered for
various non-alcoholic beverages. KERRY Spring, which was manufactured in
Ireland by a company called Kerry Spring Water and contained water from a
spring called Kerry, was then marketed in Germany by the defendant. The Bundesgerichtshof (German Federal Court of Justice) had already found
that there was a likelihood of aural confusion between the two indicia for
the purposes of Art 5(1)b of the Trade Mark Directive.
After stating the purpose of Art 6 of the Directive, the ECJ ruled that Art
6(1)b draws no distinction between the possible uses of the indications
referred to in Art 6(1)b. Therefore, the Directive is also applicable if a
third party uses the indications referred to therein as a trade mark as long
as the use is in accordance with honest practices in industrial or
commercial matters. As to the issue of honest practices it is up to the
national court to carry out an overall assessment of the circumstances of
any particular case to establish whether the use is honest. 10. Microsoft “Windows”:
A Generic Term or Valid Trade Mark?
In December 2003 both Swedish and
Finnish Courts granted an injunction in favour of Microsoft against its trade rivals Lindows.com in a trade mark dispute,
arising from the use of term ‘Lindows’ by the latter for its operating
systems.
Michael Robertson was the first to use the word ‘Lindows’ when he
established Lindows.com. He developed Lindows OS, a version of Linux that
runs both with Linux and Windows programs, and hence justify the website
name as being derived from the combination of ‘Linux’ and ‘Windows’. However
the use of word Lindows offended Microsoft which developed and has marketed
its Windows Operating System since 1985 under the registered trade mark
‘Windows’.
Microsoft, clearly piqued by the partial adoption of its famous trade mark,
sued Lindows in the United States in December 2001, seeking a court order
prohibiting Lindows sales and use of its name, contending that the same is
causing consumer deception and dilutes the Windows its own trade mark.
However US District Judge John Coughenour denied Microsoft’s request stating
there is a possibility that the word “windows” is generic, a defence raised
by Lindows.com. A full trial is slated for 1 March 2004, after a second
attempt of Microsoft for obtaining injunction was also dismissed by the
court.
The injunction having been denied to Microsoft in the US, it initiated a
series of actions for preliminary injunctions against Lindows and its
distributors in Sweden, Finland and Netherlands, a stronghold market of
Lindows.com. So far the strategy seems successful, with two courts, in
Sweden and Finland, issuing preliminary rulings in favour of Microsoft,
holding that “It may reasonably be expected that Lindows will continue the
infringement and diminish the value of the sole right to the marks. A delay
would imply a risk for damage” and issuing interim injunctions.
Preliminary rulings, while not relief, are an effective tool to clamp down
on the opponent’s business, forcing withdrawal of products or sale
prohibition. But in this case the strategy of Microsoft has opened new
danger, with its “Windows” trade mark facing a threat of being declared
generic and hence invalid.
A cardinal principle of trade mark law is that a mark can only be registered
when it is inherently capable of being distinctive of a particular source of
goods. However, normal words, though not initially distinctive, can gain a
secondary meaning through use, and can then be registered as valid trade
marks associated to a particular supplier. But if a term having acquired a
secondary meaning, which is or may be distinctive of a given supplier,
becomes generic to a type of product, it loses its status as a trade mark
for registration purposes. This arises when a trade mark’s primary
significance is to describe the type of product rather than the producer or
source.
Thus, if during the trial the court holds that the term ‘Windows’ is indeed
a generic term for describing commercial operating systems, then neither
Microsoft nor anyone else can claim exclusive rights to “Windows”.
11. Dixy Fried Chickens
On 3 December 2003, Laddie J handed down his judgment on Dixy Fried
Chickens (Euro) Ltd’s appeal from invalidation of their trade mark in Dixy
Fried Chickens (Euro) v Dixy Fried Chickens (Stratford) [2003] EWHC 2902
(Ch).
Dixy (Euro) had registered the device of a smiling chicken together with the
words DIXY FRIED CHICKENS in the UK for “chicken and chicken products”. Dixy
Fried Chickens (Stratford) Ltd, operator of an unrelated ‘Dixy Fried
Chickens’ fast food outlet, applied to the UK Trade Marks Registry to
invalidate the mark. Their attack under s5(4)(a) of the Trade Marks Act 1994
succeeded; s5(4)(a) provides that a mark shall not be registered if its use
is liable to be prevented by any rule of law protecting unregistered signs.
The basis of the challenge was the use of the mark by Dixy Stratford’s
predecessors in title; one of these, Mr Akhtar, represented the company in
the Registry. Mr Akhtar, allegedly, had bought the goodwill of two outlets,
in West Ham and Chingford, East London. Dixy Euro admitted that the
Chingford outlet had carried on business under the mark, but pursuant to a
franchise agreement whereby goodwill vested in the franchisor, Dixy Euro’s
predecessor in title.
Dixy Stratford alleged that the franchise agreement was a forgery and that
Dixy Euro had intimidated the previous operator at Chingford. These serious
allegations required a high level of proof: Hornal v Neuberger Products [1957] QB 247. Although Dixy Euro’s evidence of the franchise agreement was
not perfect, the burden of proving passing off lay on Dixy Stratford, who
supplied no evidence of goodwill built up at Chingford after purchase from
the ex-franchisee. Likewise, there was no evidence of trade at West Ham, nor
details of how the goodwill generated by a previous operating company had
allegedly migrated to Mr Akhtar and Dixy Stratford. Consequently the appeal
was allowed.
This decision demonstrates that
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care in the preparation of evidence is vital
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although the UK Trade Mark Registry was said to adopt a “fairly relaxed attitude to evidence”, with a view to “cheap and straightforward” procedures, the basic rules of evidence there are no different from the court’s
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allegations of forgery or other dishonestly must be supported by particularly cogent evidence
Laddie J confirmed that
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for s 5(4)(a), the relevant date on which passing off rights must be established is the date of application to register. There was no priority claim in this case; if there were, s 6 of the Trade Marks Act 1994 suggests that the priority date would be the relevant date.
Note: UK passing off rights may be used to attack a Community Trade Mark registration under EC Regulation 40/94, Art 8(4); OHIM officials may be expected to consider UK practice in this area.
12. Audi AG v OHIM
On 3 December 2003, the Court of First
Instance (CFI) delivered its appeal judgment in Audi v OHIM, Case T-16/02.
The issue in this case is the review by the CFI over the refusal by OHIM to
register ‘TDI’ as a trade mark, on the ground that the mark was considered
to be devoid of any distinctive character under Article 7(1)(b) and
descriptive under Article 7(1)(c) of Regulation No 40/94.
In 1996 Audi filed an application before OHIM to register the word mark ‘TDI’.
‘TDI’ is a common abbreviation used in the automobile industry; its common
meanings are ‘Turbo Diesel Injection’ or ‘Turbo Direct Injection’. Examiners
from OHIM estimated the word mark was devoid of any distinctive character
and consequently refused the application.
In a decision on the 8 November 2000, the appeal made by Audi was dismissed
on the ground that the mark was descriptive and then in May 2002 Audi
brought an action before the CFI to revert the decision.
The Court held that signs and denominations used to mention characteristics
of goods and services must remain within the public domain. The Court noted
that there was a direct link between the word mark ‘TDI’ and the categories
of goods and services for the protection which were intended to be used. The
Court also considered irrelevant the argument that ‘TDI’ may have two
different meanings to revert the decision, remarking that the use of the
combination of letters as ‘TDI’ is an extended practice in the automobile
industry. The Court also dismissed the assertion that the mark has become
distinctive through its use as a Community trade mark, since the evidence of
Audi only related to one single member, Germany.
In relation to the new evidence brought by AUDI about distinctiveness, the
Court recalled the purpose of this procedure of appeal was to evaluate the
legality of the decision of the Board of Appeal and not to re-open the case,
and refused the evidence.
Finally the Court noted that, although the Board of Appeal had failed to
provide the reason for its decision and recalled that it was a duty of the
body, pursuant to Regulation (EC) No 40/94 reasons must be given for
decision adopted by OHIM. However, this failure was not enough of a reason
to annul the decision of the OHIM.
The Court remarked that the purpose of the case was to assess the legality
of the procedure undertaken before OHIM and not to reopen the case as such.
There is also the finding that to assess if a trade mark becomes distinctive
through use, the evidence must be related to the whole Community area and
not only to a single Member State. Finally, all evidence needs to be brought
before the first hearing as subsequent appeals act as a re-hearing and not a
new hearing with fresh evidence.
13. Shield Mark v Kist
On 27 November 2003, the ECJ delivered
its answers to the questions referred by the Hoge Raad der Nederlands in Shield Mark v Kist, ECJ Case C-283/01.
In this case, the ECJ considered whether sound marks are eligible for
registration as trade marks and if so, how they can be graphically
represented in a way that meets the requirements of Article 2 of Directive 89/104. That article states that “A trade mark may consist of any sign
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”.
Shield Mark was the proprietor of Benelux registrations for the first nine
notes of Beethoven’s Für Elise and the sound of a cock’s crow for various
goods and services related to its business. Kist started using the specified
sounds for his business in the same field. Shield Mark sued Kist for trade
mark infringement and unfair competition. However, the Dutch Court of Appeal
dismissed the trade mark infringement action, holding that sounds were
precluded from registration as trade marks. Shield Mark appealed to the Hoge
Raad, which referred various questions on the subject to the ECJ.
The ECJ answered that, as long as sounds are capable of distinguishing the
goods or services from one undertaking from those of other undertakings and
of being graphically represented, they can be registered as trade marks.
They are not by their nature incapable of distinguishing between the goods
of different undertakings and, because they are not precluded from
registration under Article 2, Member States cannot preclude them from
registration as a matter of principle. Furthermore, a trade mark can consist
of a sign that is incapable of being perceived visually (such as a sound or
an olfactory mark) if the sign can be represented graphically, particularly
by means of images, lines or characters and if the representation is clear,
precise, self-contained, easily accessible, intelligible, durable and
objective. National courts must decide whether these criteria have been met
by the signs before them.
Nonetheless, the ECJ provided guidance on the signs held by Shield Mark.
Musical notes represented on a stave did meant the graphic representation
requirements. However, a description in written language such as an
indication that the sign is made up of the melody of a particular musical
work (e.g. “the first nine notes of Für Elise”), an indication that it is
the cry of an animal (e.g. “a cockcrow”), a simple onomatopoeia (e.g. “kukelekuuuuu”)
or a sequence of musical notes (e.g. “E, D#, E, D#, E, B, D, C, A”) without
more did not.
The practice issues are:
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Certain types of sound marks can now be registered, although the graphical representation requirements are quite exacting. In fact, it is hard to see what forms of representation other than musical notation will be acceptable. This would limit sound marks to music. However, before Shield Mark was decided, the OHIM decided that sounds can be registered when represented by a sonogram (Case R0781/1999-4).
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It seems that no types of mark can in principle be excluded from registration, as long as they meet the requirements of: (i) being capable of distinguishing the goods of one undertaking from those of other undertakings and (ii) being capable of being graphically represented. The types of marks that can meet the latter requirement may change over time as means of recording sensory stimuli become more sophisticated.
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