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European IP Bulletin, Issue 25, September - Trade Mark
Trade Mark
10. Kabushiki Kaisha Sony Computer Entertainment V Nuplayer
On 14 July 2005, the Chancery Division of the High Court delivered its judgement in the case of Sony Computer Entertainment v Nuplayer Ltd. This case concerned the question whether a trade mark owner can prevent internet sales in the United Kingdom of parallel imports from outside the European Economic Area (“EEA”).
The Claimant, Sony Computer Entertainment (“Sony”) developed the “PlayStation Portable” hand-held console (“the PSP console”), a personal multimedia entertainment system which was launched in Japan on 12 December 2004. In January 2005, prior to 1 September 2005, Sony’s planned launch date of the consoles in Europe, the Defendant company, Nuplayer, started importing PSP consoles from Japan into the United Kingdom and selling them via its website without the consent of Sony.
On 15 June 2005, Sony issued proceedings against Nuplayer for trade mark infringement of a number of its European and UK trade marks, respectively, the stylised “PS” logo, the PlayStation controller button symbols and the word mark “PlayStation”, and sought summary judgement. It argued that Nuplayer was infringing its mark under section 10(4)(b) and (c) of the Trade Marks Act 1994 by (i) offering or exposing goods for sale, putting them on the market or stocking them for those purposes under the sign, or offering or supplying services under the sign and (ii) importing or exporting goods under the sign.
Nuplayer argued that the Claimant’s marks had been removed from its website so that they could not be seen before the product was delivered and that the PlayStation controller button symbols would be covered with ink and the console supplied with a “skin”. In addition, it argued that for infringement to arise there had to be infringing “use” of the mark. It argued that as it sells on the Internet, does not display the products for inspection and describes the products merely as “PSP consoles”, there is no trade mark registration which is thereby offended.
Mr Justice Lawrence Collins stated that the proprietor of a trade mark has exclusive rights in the trade mark, which are infringed by the use in the United Kingdom without his consent, that the trade mark is also infringed where goods are imported from outside the EEA without the consent of the proprietor.
He held that the fact that Nuplayer was selling imported PSP consoles via the Internet did not mean that it was not using the marks since Section 10(4)(b) specifically included “stocking” products under the sign as an infringing act. Also, he held that “use” was to be given a wide interpretation and included matters arising after the sale. In addition, Nuplayer’s offer to obliterate the trade marks from the PSP consoles would not make any difference. Indeed, even though Section 15(1) of the Act provides that where infringement has taken place the court may order the infringer to cause the offending sign to be “erased, removed or obliterated” from any infringing goods, this is merely one of the possible remedies, and cannot possibly found an argument that products which would otherwise be infringing cease to be so when the marks are erased or obliterated. Mr Justice Collins considered that the Defendant had no arguable defence and he allowed the application for summary judgement.
11. Laboratories Goemar V La Mer Technology
On 29 July 2005, the Court of Appeal (Civil Division) delivered its judgment in Laboratoires Goëmar SA v La Mer Technology Inc. [2005] EWCA Civ. 978. The Court of Appeal allowed the trade mark owner’s appeal against a ruling of the Chancery Division that it had not made “genuine use” of its trade mark.
The appellant, Goëmar, a French company specialising in seaweed products, owned the UK registered trade mark LABORATOIRE DE LA MER for “perfumes and cosmetics containing marine products”. Limited sales of the relevant products bearing the mark were made by Goëmar pursuant to several orders placed by Health Scope Direct Ltd a small enterprise Goëmar had appointed as its agent in the UK. However, there was no evidence of any sales of the goods to members of the public as consumers or end-users. La Mer Technology Inc. (a US company which is part of the Estee Lauder Cosmetics Group) sought to revoke Goëmar’s mark on the ground of non-use for a period of five years. The Registrar dismissed La Mer’s application. The appeal judge (Jacob J.) stayed the appeal and referred the case to the European Court of Justice for a preliminary ruling on the factors (including, amount and types of use) which should be taken into account when deciding whether a mark has been put into “genuine use” in a member state within the Trade Marks Directive EEC/89/104.
On January 2004, the Court of Justice (Third Chamber) gave its decision. The rulings were included in a reasoned order rather than in a judgment, as the Court of Justice thought that the answers to the questions could be deduced from its judgment in Ansul BV v Ajax Brandbeveiliging BV ECJ Case 40/01 (11 March 2003).
The hearing of the appeal from the Registrar was resumed after the reasoned order of the Court of Justice. It took place before Blackburne J. who concluded that there had been no “genuine use” of the mark in the UK, having found that genuine use of the mark required that it come to the attention of the end-users and consumers during the relevant period. He ruled that the acts of importation during the relevant period by an independent importer into the UK of goods bearing the mark did not by themselves amount to genuine use of the mark; and that the proven use by the registered proprietor was not sufficient to create a market share for the goods protected by the mark.
Goëmar appealed against Blackburne J’s judgment. The Court of Appeal, allowing the appeal and setting aside the order for the revocation ruled on the following:
- Token use: Token use of a mark does not count as “genuine use”. Nevertheless, it would be illogical to assert that every case of non-token use qualifies as genuine use.
- Internal use: Internal use by the registered proprietor does not count as “genuine use”. Although the quantities involved were modest and although there was no evidence of sales by the importer to consumers and end-users, this did not mean that the use of the mark in the UK was internal or akin to internal use by Goëmar.
- Use by single importer: Provided the use was neither token nor internal, imports by a single importer could suffice for determining whether there was “genuine use” of the mark on the market.
- Market use: The modest amount of quantities involved and the more restricted nature of the import market did not prevent the use of the mark on the goods from being “genuine use” on the market.
This decision confirms the guidance given previously by the ECJ in relation to allegations of non-use in that the extent of use is not conclusive to determine whether it is indeed “genuine”. It emphasises the need for good evidence as to the circumstances as there are no clear guidelines based simply on the volume of sales or the identity of the purchasers.
12. English High Court Confirms the Scope of Trade Mark Disclaimers
On 29 July 2005 Lawrence Collins J delivered his judgment in General Cigar Co Inc v Partagas y Cia SA [2005] EWHC 1729 (Ch).
General Cigars was the proprietor of the CIFUENTES WINKS trade mark, which it applied for in 1991 under the Trade Marks Act 1938. General Cigars had to disclaim the CIFUENTES element of the mark since the Registry’s practice at the time was not to grant trade marks in respect of foreign surnames in the absence of proof of acquired distinctiveness (CIFUENTES appeared in a number of instances in the Madrid telephone directory).
Partagas applied to register CIFUENTES as a trade mark for the same goods in 1995. General Cigars opposed Partagas’ application, to which Partagas responded that General Cigar’s opposition had to be rejected because the only element that the two marks had in common, the term CIFUENTES, had been disclaimed by General Cigars. Under the transitional provisions concerning the introduction of the Trade Marks Act 1994, pre-1994 disclaimers had to be treated as if they had been entered on the Register under the 1994 regime.
Under the 1938 Act, an infringement action could not succeed where the only similarity between the two marks was based on the disclaimed element of the earlier mark. However, oppositions to registration were treated differently and in actions before the Registry, disclaimed elements could not be ignored. Thus, the question to be answered in this case was whether the same approach applied under the 1994 Act. A further complication arose from the fact that the Registry had altered its policy on foreign surnames, abandoning the rule that such names were automatically to be considered lacking in inherent distinctiveness, and so it was possible that the disclaimer concerning the CIFUENTES element was liable to being removed.
Lawrence Collins J found that the 1938 Act approach did not apply under the 1994 Act, and instead disclaimed elements were to be disregarded in both opposition proceedings and infringement actions. One reason for this is that a disclaimer operates to affect the scope of protection by influencing the analysis of the likelihood of confusion in both infringement proceedings and opposition proceedings, and it thus stands to reason that disclaimers should have the same effect in both situations. The Courts decision confirmed the case law and practice of the Trade Mark Registry with regard to disclaimers under the 1994 Act.
The outcome of this would be that General Cigar’s opposition would fail. There was an element of unfairness in this result because the Registrar had altered his practice with regard to the registration of surnames, and so there was the possibility that the disclaimer of CIFUENTES had only been necessary under an outdated approach to the registration of surnames. The Court therefore felt that the correct approach in this instance was to stay the case in order to enable General Cigar to apply to have the disclaimer removed under s.64(5) of 1938 Act, which provides that the Registrar may remove from the register matter that appears to him to have ceased to have effect. This was a matter for further argument if General Cigar wanted to make such an application.
This case upholds an approach that focuses on the state of the Register over an alternative approach that contends that it is in the interests of consumers that disclaimed elements should be considered in infringement actions because consumers have no way of knowing of the existence of such disclaimers and will be confused by conflicting signs, whether or not disclaimers are in place. Whilst this may seem artificial, the reason this latter approach was dismissed was because the disclaimed elements have been disclaimed because they have been regarded as incapable of being distinctive, such that their use should not be capable of causing confusion in any even. However, as the use of a mark can lead to acquired distinctiveness in originally non-distinctive, and possible disclaimed elements, it is therefore important for trade mark owners to periodically review the disclaimed elements of their marks and consider whether such marks should be refilled without the disclaimers.
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