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European IP Bulletin, Issue 19, February - Trade Mark
Trade Mark
8. Opinion of Advocate General in Nestle V Mars UK
On 27 Jan 2005, the Advocate General (AG) of the European Court of Justice gave
his opinion on the acquisition of distinctive character through use of a
sequence of words as part of a word mark, in this case "HAVE A BREAK" as part of
"HAVE A BREAK ...HAVE A KIT KAT" (see Nestlé v Mars UK Case C-353/03).
The issue in dispute is whether the word sequence "HAVE A BREAK" from "HAVE A
BREAK ...HAVE A KIT KAT" is inherently distinctive or has acquired
distinctiveness through use for trade mark purposes.
The Hearing Officer from the United Kingdom Patent Office and the Court at
first-instance refused registration of the trade mark based on the fact that
"HAVE A BREAK" was not inherently distinctive and had not acquired the requisite
distinctive character by virtue of the use of "HAVE A BREAK … HAVE A KIT KAT".
On appeal, the Court of Appeal established that the relevant consumers construed
the word sequence "HAVE A BREAK" as a neutral invitation in regard to origin and
therefore devoid of inherent distinctiveness. However, the Court did not rule
out the possibility that part of trade mark could also acquire its own
distinctiveness.
Pursuant to Article 3(1)(b) of First Council Directive 89/104/EEC, trade marks
which are devoid of any distinctive character shall not be registered. However,
the first sentence of Article 3(3) provides an exception to that ground of
refusal: 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’.
Mars, opposing Nestlé’s application, rejected an evaluation of the evidence
relating to use of the principal mark and said validity should be accorded only
to use of the wording for which the trade mark application was made independent
of the “KIT KAT” mark. Mars argued that use as an element of another trade mark
may not be invoked as evidence of distinctive character for the purposes of
Article 3(3). However, this interpretation was not accepted. The AG decided that
since use of a mark literally means both its independent use and its use as part
of another composite mark, any use which conferred on a sign the distinctive
character necessary for registration as a mark must be deemed to be use of a
mark as a trade mark and meets the requirements of Article 3(3).
The UK Government and Mars fear the extension of derivative trade mark
protection. However, a secondary derivative mark will not be able to acquire
distinctive character on the basis of its connection with the primary derivative
mark if a derivative mark possesses no sufficient distinctive character of its
own but acquires distinctiveness only by way of the connection with the
principal mark.
As past cases have shown, the acquisition of distinctive character is essential
where the element in question relates to the mark as a whole. However, the
Opinion agrees with the UK Government in assessing the view of consumers. Trade
marks will not able to be registered if consumers merely wonder about the origin
of the product and even when consumers could naturally connect "HAVE A BREAK"
with "HAVE A KIT KAT".
What is required, according to the Opinion, is a strict interpretation of the
distinctiveness of a derivative mark which is based on a clear understanding of
the origin of goods by consumers.
9. Bongrain Trade Mark Application
On 17 December 2004, the English Court of Appeal upheld the
decisions of the Registrar of Trade Marks and Mr Justice Pumfrey,
who had both refused the registration of a series of two and
three-dimensional marks for the shape of a cheese. Protection was
sought whatever the colour of the cheese or its rind or wrapping and
irrespective of any label, which in real life would almost certainly
be attached to the cheese at least at the point of sale.
Bongrain argued that the shape, especially if confined to cheese,
was strikingly unusual and that was enough to give it a “distinctive
character” entitling it to registration without anything else. In
other words, the significant departure from the norm was enough to
confer distinctive character. To support this, he submitted that the
Court of First Instance decisions in Nestle Waters and Henkel v OHIM demonstrated the correct approach. In both cases, the highly unusual
shape of the bottle was enough to pass the Article 3(1)(b) of First
Council Directive 89/104/EEC test without any proof of
distinctiveness in fact.
As a subsidiary argument, Bongrain submitted that the public
interest in the preservation of certain signs in the interests of
healthy competition did not apply here and that such an interest was
essentially limited to colour marks.
On the main point, it was held that a very fancy shape is not
necessarily enough to confer an inherently distinctive character.
The fact that a shape is unusual for the kind of goods concerned
does not mean that the public will automatically take it as denoting
trade origin or as being the badge of the maker. Therefore, the fact
that the shape of a good is fancy is not enough to entitle a
would-be trader in them the registration as a trade mark. It was
found that there are real differences between creating a fancy shape
to sell as such, and a fancy shape which truly in itself will denote
trade origin.
In relation to the public interest submission, it was held that the
“depletion” public interest was not confined to colour marks, nor
was it an independent ground of objection.
It is interesting to note that although permission to appeal in this
case was granted as long ago as 1 May 2003, this appeal was delayed
whilst a number of cases giving guidance on the question of
registration of three-dimensional marks were decided by the European
Court of Justice.
10. El Corte Ingles V OHIM (Emilio Pucci)
On 13 December 2004, The European Court of First Instance produced its
decision in El Corte Inglés v Office for Harmonisation in the Internal Market (OHIM)
– Pucci (Case T-8/03).
In 1996, the Italian company “Emilio Pucci” submitted an application for
Community Trade Mark (CTM) in respect to goods in classes 3, 18, 24 and 24. In
April 1998, the application was approved and in July of the same year El Corte
Inglés filed a notice of opposition, on the ground of risk of confusion in
respect to its “Emidio Tucci” Spanish trade marks. “Emidio Tucci” was already
registered for classes 3 and 25 and OHIM allowed their opposition and did not
register the “Emilio Pucci” marks in those classes. However the OHIM did
register Emilio Pucci under class 24 and for certain products in class 18. Both
El Corte Inglés and Emilio Pucci lodged appeals against the OHIM decision. In
the second instance, OHIM annulled the previous opposition under class 18, while
the rest of the decision was confirmed.
The principal claim before the Court was in respect of the importance of
'complementary character' between the products of the different classes. If
accepted, this character would grant a wider protection to the right holder. The
Court reiterated that the likelihood of confusion must be assessed
comprehensively and, in particular, should consider the following relevant
factors: nature, end users, method of use, and whether the trade marks are in
competition with each other or are complementary. The Court did not find that
such elements presented enough similarities among the categories considered.
Essentially the use of one was not indispensable for the use of the other.
The second claim raised concerned the arguably superior reputation of Emidio
Tucci trade marks within the relevant territory. The Court held that higher than
normal distinctiveness is to be proven by objective criteria such as market
share, intensity, geographical extent and duration of trade mark use, together
with the amount of promotional investment. The material brought by the claimant
was held to be insufficient proof and the second claim was also dismissed.
The judgement on both claims followed the relevant jurisprudence, explicitly set
out in earlier cases (C-251/95 and C-39/97).
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