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European IP Bulletin, Issue 13, June - Trade Mark
Trade Mark
The case concerned the trade mark Goldfish, in English and German. It had been registered by K in 1960, but had not been properly used in the UK. When IS applied for an essentially similar mark in 1989, it was blocked by K. So it applied to clear the register of K’s marks for 5 years non use, and succeeded in 1997. The 5 year period encompassed the date of application of IS mark.
Next K opposed IS’ application on a number of grounds, including that IS was not the proprietor of the trade mark because of a licensing agreement between K and IS. That was disposed of by a finding of the hearing officer that the license was void under Article 81(1) of the EC Treaty. This was not appealed, and is an object lesson as to why licences need to be carefully drafted, and be in conformity with EU law.
There were a number of other grounds which failed and the opposition was rejected and the trade mark registered in IS name.
K appealed, and having replaced it trade mark agents, sought to adduce new grounds and additional evidence. After IS refused to consent to the additional evidence being admitted, the matter came to court on a preliminary issue.
The additional evidence related to the allegation that there had been some user of the mark by K immediately before IS’s application in US Commissaries on US military bases. Concomitant application to amend the ground of opposition were made.
The only explanation of the earlier failure to raise the new ground was given by an assistant solicitor in the appellant’s lawyer’s firm “This point could have been raised earlier , but was not, because, I understand, its force was not appreciated.”
The judge had no hesitation in rejecting the application to amend and to adduce further evidence. He said the application was deficient, insufficient and should have been fully supported by a witness statement from the client. It was also not allowable in principle as an appeal is a rehearing, and fresh evidence would be required from IS even if K were content not to adduce further evidence.
The evidence of the earlier use was held as inadmissible on the ground of issue estoppel, on the basis that the issue of non use had been conclusively decided in the earlier proceedings and could not now be reopened. The judge also held that 5 years non use was equivalent to common law abandonment of a trade mark, and that all rights in the first owner were extinguished up to the period on which the non ended.
Having denied K the right to amend on the substantive ground of issue estoppel, and resurrected abandonment, the judge then considered whether the evidence should be refused on procedural grounds and held that it should. He relied on an old case of Ladd v Marshall which he said is now indicative rather than binding and as subsequent interpreted by Pumfrey J in Wunderkind TM [2002] RPC 45. In summary if the evidence was available at the date of the hearing below, it will not subsequently be admitted on appeal, and if it was not available it will not be admitted unless the application has a very good excuse why it could not be found, and its admission will make a material difference to the result.
It this case the evidence sought to be adduced was not only available to K, but was contradicted by evidence from another of K’s witnesses, and because of the finding of issue estoppel, would have made no difference even if admitted.
In summary the practitioner should investigate thoroughly for the first tribunal, and bring all of the evidence before the first tribunal. Failure to appreciate the value of evidence before the first tribunal is not reason to have it admitted on appeal. However, it may be ground for a professional negligence action subject to causation, which would be missing in this case because the evidence was inadmissible.
A seventh generation descendant of the Italian violin-maker Antonio Stradivari has successfully stopped an estate agent from using Stradivari as part of its title.
Antonio Stradivari lived and worked in Cremona from 1644 to 1737, where he produced violins, cellos and violas. Antonia Stradivari lives in Cremona and is a children’s theatre director. She is also the only one of the violin maker’s descendants to still be using the unusual Stradivari name and has become angry at the proliferation of companies using her and her ancestor’s name in the course of their business.
“Companies ripping off the name are springing up like mushrooms, to the point where my ancestor will be turning in his grave” she has said. She claims that the use of the name for companies such as a cat and dog breeding business, a furniture company and a shop selling “prosciutto Stradiveri” is a “dishonour” to the legendary maestro.
In response to the growth in the use of the Stradivari name, she has successfully brought a test case against an estate agent calling itself Immobiliare Stradivari Snc. The regional court found that she could protect her own name whether or not she was a descendant of the violin-maker and ordered Immobiliare Stradivari Snc to pay her costs. Now Ms Stradivari has said that she will bring similar action against anyone else using her name. However, she is happy for certain uses that she considers an honour to continue, such as the naming of boats and sports centres after the violinist. Some have claimed that she is motivated by a desire to be able to charge a fee for using the name. She denies that this is her reason for pursuing the action and has said that she just wants to put a stop to her name being improperly used.
This case raises fundamental questions over the scope of protectable interests and relief granted. Ms Stradivari, with apparently no trading reputation, appears to have obtained exclusive rights to the Stradivari name. It is difficult to reconcile this decision with the protection afforded by trade marks or even passing off and it will be interesting to see whether the decision is followed or upheld on appeal.
On 10 May 2004, the Chancery Division delivered its appeal judgment in Coco De Mer v Chanel [2004] EWHC 992 (Ch)
The issue in this case relates to one of the tests to be applied in deciding whether a mark is capable of distinguishing the goods of one undertaking from those of another undertaking. This is the fundamental test for registrability of a trade mark in the UK under the Trade Marks Act 1994.
The question arose whether the trade mark Coco de Mer, for erotica goods and perfume, was sufficiently distinct to the earlier trade mark of Chanel, ‘Coco’, for luxury perfume. The parties agreed that the goods were to a large extent identical for applying the statutory test. The issue became a matter of likelihood of confusion.
Counsel for Coco de Mer explained that the name was a species of palm tree in the Seychelles. The design of the mark represented the nut which grows from the female plant as well as resembling a female bottom and genitalia. He claimed that the device representing this nut was an intrinsic part of the mark.
Patten, J found that COCO was a strong mark and was closely associated with Chanel and that most consumers know nothing of the reproductive activities of palm trees. He further determined that Coco de Mer was not a distinct enough mark even when the device was included. “The strength of the COCO element creates that association with the result that consumers would in [the view of the court] wrongly believe that the respective goods (which are identical) come from the same or economically linked undertakings. There is, therefore, a likelihood of confusion and the opposition [by Chanel] succeeds under Section 5(2)(b)”.
The practice issues are very straightforward:
- If you want to use a similar mark or name, ensure that it is not for similar goods
- If you have similar goods, ensure that the mark is truly distinctive. Bring evidence of distinctiveness in fact
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