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European IP Bulletin, Issue 16, October - Trade Mark
Trade Mark
8. Nichols PLC V Registrar of Trade Marks
On 16 September 2004, the European Court of Justice (ECJ) gave its judgement in Nichols plc v Registrar of Trade Marks, case C-404/02.
In 2001, Nichols Plc, a food and drinks company, applied for registration of the name ‘Nichols’ as a trade mark in respect of vending machines and food and drinks supplied by them. The UK Trade Marks Registry (The Registry) had refused the registration.
The Examiner had followed the Registry’s guidelines and the mark was assessed by looking at how common the name was in the London telephone directory. It was decided that the name was phonetically similar to the common surname Nicholls, and as such it was too common to sufficiently distinguish the applicant from other traders. However, the application was accepted in respect of vending machines due to the fact that it concerned a niche market. The decision was appealed to the High Court.
The High Court referred issues relating to Articles 3 and 6 of the Trade Marks Directive 89/104/EC to the ECJ. Article 3(1)(b) provides for registration to be refused to marks which are devoid of any distinctive character, and article 6(1) provides that a trade mark should not entitle the proprietor to prevent a third party from using, in the course of trade, his own name or address.
The ECJ said that the distinctive character of a mark was to be assessed in relation to (i) the goods or services involved and (ii) the perception of the relevant consumers, with a specific assessment in each case, and applying the same criteria to all categories of mark referred to in article 2 of the Directive, even in the case of a common surname. More stringent criteria for marks consisting of personal names based, for example, on a predetermined number of persons with the same name, or the number of undertakings engaged in the trade in question, or the prevalence or otherwise of the use of surnames in that trade, were therefore not to be applied. The Article 6(1)(a) limitation, which was for the benefit of operators with an identical or similar name, only took effect after the registration of the mark, that is, after its distinctive character had been established. That provision therefore could not be taken into account in the assessment of distinctive character before the mark was registered.
The ECJ’s decision establishes that the assessment of surnames as trade marks do not fall under a different criteria of assessment and must come under the same umbrella of assessment for registrability as any other trade mark. The implication of this case is that the UK Registry will have to change its practice. However beyond this procedural effect, it is unlikely that the ruling will have an impact on the substance of individual applications. Unusual names may have an inherent advantage over more common ones but they will all have to be considered on a par in the registration process.
9. Distinctiveness to be Viewed as a Whole: ECJ in SAT.1 V OHIM
On 16 September 2004, the ECJ gave its judgment in the case of Sat.1 SatellitenFernsehen GmbH v OHIM. C-329/02 P.
SAT.1 (appellant) had filed its appeal against the decision of Court of First Instance (CFI) rejecting its application for setting aside the decision of Office of Harmonisation of Internal Market (OHIM). OHIM had earlier rejected the appellant’s application to register the term ‘SAT.2’ as a trademark in respect of Classes 35, 38, 41 and 42 of Nice Treaty. The ground of refusal was that the term ‘SAT’ was the usual German and English abbreviation of a link to satellite broadcasting, the number ‘2’ and the punctuation ‘.’ are commonly used in the trade; thus the mark as a whole, constituted by these commonly used elements, was devoid of any distinctive character. On appeal the CFI upheld the decision of OHIM, although the ground of rejection was limited to Article 7 (1) (b) of Council Regulation No. 40/94.
SAT.1 filed its appeal on the ground that the CFI had erred in law so far as:
- It interpreted the aim of Article 7 (1) (b) of Regulation No. 40/94. to keep signs available to be freely used by all; and
- It presumed that when a mark consists of elements which individually lack distinctive character, the mark as a whole also lacks distinctive character, and therefore, the assessment of the whole mark is irrelevant.
The ECJ agreed with the appellant and set aside the judgement of CFI, holding that:
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There is no presumption that a trade mark’s elements that are individually devoid of distinctive character cannot, on being combined, produce an overall perception of distinctiveness to the average customer.
There is no specific level of linguistic or artistic creativity or imaginativeness required before a trade mark can be registered. It is sufficient if the mark enables the relevant public to identify the origin of the goods or services, and to distinguish them from those of other undertakings.
This decision is in line with the positive approach adopted by ECJ in relation to the compound trade marks in the earlier case of Baby-Dry (C-383/99P Procter & Gamble Company v OHIM). This judgment significantly increases the range of trademarks that can be registered in the Community, especially in the telecommunications sector.
10. Opposition Procedure, Article 58 and Article 108 of Regulation 40/94: Metro-Goldwyn -Mayer Lion Corp. V OHIM
On 16 September 2004, the CFI gave its judgment in the case of Metro-Goldwyn-Mayer Lion Corp. v OHIM. T-342/02.
Metro-Goldwyn-Mayer-Lion Corp. (Metro-Goldwyn) brought the present action against the decision of the Third Board of Appeal of OHIM, which declared as inadmissible its appeal against the decision of Opposition Division relating to opposition proceedings between Moser Grupo Media SL (Moser Grupo) and Metro-Goldwyn.
Moser Grupo had filed an application for registration of a Community trade mark in respect of Classes 9, 16, 38, 39 and 41 of Nice Agreement. When the application was published, see the Community Trade Marks Bulletin No. 16/1998, Metro Goldwyn gave notice of opposition under Article 42 of the Regulation, in respect of the goods and services covered under the application. The opposition was based on its trade mark ‘MGM’ registered in Denmark, Finland, France, Germany, Italy, Portugal, Sweden, Benelux countries, Greece, United Kingdom and Austria, and also on Community trade mark application No. 141820. The Opposition Division upheld the opposition in respect of all the goods and services concerned, on ground of likelihood of confusion within the meaning of Article 8 (1) (b) of the Regulation No. 40/94; however, it did not consider the earlier national trade marks in Austria, Greece and the United Kingdom, or the Community trade mark application.
Aggrieved with the decision, Metro-Goldwyn filed an appeal to incorporate such national rights within the refusal to the registration of Moser Grupo application in relation to the whole of European Union; but it was rejected by the Third Board of Appeal on the ground that Metro-Goldwyn was not adversely affected by the decision of Opposition Division.
In the present appeal, Metro-Goldwyn claimed that non-consideration of its rights in Greece, Austria and the United Kingdom, as well as the application for registration of Community trade mark, has adversely affected it because it leaves open the possibility of conversion by Moser Grupo of its Community trade mark application into a national trade mark application pursuant to Article 108 of Regulation No. 40/94.
In rejecting Metro-Goldwyn’s claim to annul that part of Opposition Division decision, the CFI held that:
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The principle aim of opposition proceedings is to prevent Community trade marks being registered which are in conflict with earlier marks or rights. It gives undertakings an opportunity to challenge, by means of one procedural system, applications for Community trade marks which might give rise to likelihood of confusion with their earlier marks or rights, but not to settle pre-emptive potential conflicts at national level.
- The conversion of a Community trade mark application into a national trade mark application is merely optional for a Community trade mark applicant. Moreover, the conversion procedure does not confer applicants the right to have their applications registered by the competent national authorities. Thus, this present situation concerns a future and uncertain legal situation on which Metro-Goldwyn can not claim to have been adversely affected within the meaning of Article 58.
- The considerations of procedural economy require that, when the opposition can be upheld on the basis of a number of earlier national marks, it is not necessary to prolong the proceedings in order to wait until the Community trade mark of Metro-Goldwyn would be registered for rejecting the application. Suspension under Rule 26 of Regulation No 2868/95 is merely a discretion vested in favour of OHIM.
- There is no obligation on the Opposition Division, either expressly or impliedly, to give a decision on the opposition with the widest possible effects, namely a decision encompassing all the earlier national marks and the application for Community trade mark application by Metro-Goldwyn.
11. The Professional Golfer's Association of America V Provisions LLC.: is Charity Fair Use?
On 13 September 2004, WIPO Arbitration and Mediation Center delivered its decision in The Professional Golfers’ Association of America v Provisions LLC, case No. D2004-0576.
This case is related to the use and registration of the domain name ryder2004.com. The main issues were whether (i) adding the date 2004 to the distinctive component of the Complainant’s trademark (Ryder) created a distinctive new name, or whether it was confusingly similar to the Complainant’s trademark (ii) the Respondent had any rights or legitimate interests in the domain name (iii) the Respondent had registered and was using the disputed domain name in bad faith.
The Complainant is an organisation promoting the game of golf, golf tournaments and golf related services in the United States. It markets a wide variety of golf-related products and services under the mark Ryder Cup, and is also a sponsor of the Ryder Cup Matches. The Complainant owns the trade marks ‘Ryder Cup’ in class 25 and 28 and ‘Ryder Cup Matches’ in class 41.
On 3 December 2003, the Respondent registered the disputed domain name, ryder2004.com. On 3 August 2004, the Complaint was filed with the WIPO Arbitration and Mediation Center.
The Complainant argued as follows:
The disputed domain name, ryder2004.com, is visually and aurally identical to the first word of the well-known Ryder Cup mark followed by the year of the next matches. Internet users who intend to visit one of the official PGA websites may intentionally, or even inadvertently, type ryder2004.com into the address bar of their web browser only to be misdirected to the Respondent’s website. Thus the ryder2004.com domain name clearly is confusingly similar to the famous Ryder Cup marks.
The Respondent has no connection with the PGA or any PGA affiliate and has not been granted any form of license or consent to use the Ryder Cup marks in a domain name or in any other manner. Thus, it has no rights or legitimate interests in the ryder2004.com disputed domain name
The Respondent has never sought or obtained any trademark registrations for Ryder or Ryder Cup and, indeed, could never do so because the Ryder Cup mark belongs uniquely to, and is registered to, the Complainant. The Respondent has never made any non-commercial or fair use of the ryder2004.com domain name, without intending to mislead the public for commercial gain. Further, the Respondent has never been known by the disputed domain name ryder2004.com. The website associated with the ryder2004.com domain name merely acts to repackage and sell tickets and hospitality packages, which the Respondent is not authorised to do. Such a use demonstrates neither a bona fide offering of goods or services nor a legitimate interest. Even if Internet users do not immediately associate the Respondent with the Complainant, the Respondent nonetheless unfairly benefits from the good will associated with the Complainant’s well-known Ryder Cup mark by misdirecting Internet traffic to its site. The Respondent thus intentionally co-opted the disputed domain name ryder2004.com to divert users to its site
On the first issue, the Respondent argued that the disputed domain name was not confusingly similar to the disputed domain name as Ryder Cup and Ryder Cup Matches are visually and aurally distinct from the disputed domain name ryder2004.com. However. the Panel was not persuaded by the Respondent’s arguments. It found that the date 2004 was merely a descriptive add-on since it only gives us the year of the tournament, and every event that takes place during the year 2004 will be dated 2004. Thus, the only distinctive part of the disputed domain name ryder2004.com was Ryder, which also is the distinctive component of the Complainant’s trademark. Therefore, the disputed domain name was confusingly similar to the Complainant’s trademarks.
On the second issue, the Respondent argument was that it was making a fair use of the disputed domain name not for commercial gain as permitted by paragraph 4(c)(iii) of the Uniform Domain Name Dispute Resolution Policy (UDNDRP). The Respondent based this on the fact that it has been classified by the United States Internal Revenue Service as a charitable organisation. The Respondent reasoned that, since it devolved some of its profit onto charitable causes, it was free to use the trademarks it needed to generate income. The Panel found there was no basis for the Respondent’s contentions on fair use. It held that a charitable organisation is assumed to be running a business that makes money, and therefore the activities could not be held as fair use notwithstanding the use made of the benefits. Further, under paragraph 4(c)(iii) of the UDNDRP, the ultimate destination of the profits was not an issue.
On the last issue, although the Panel did not find that the Complainant demonstrated its trademark to be as strong as it had implied, it agreed that the Respondent’s conduct in this case squarely violated the bad faith provisions at paragraph 4(b)(iv) of the UDNDRP. The Panel held that the Respondent was using the Complainant’s Ryder trademarks in the disputed domain name, ryder2004.com, to attract members of the public who would be looking for the Complainant. The Respondent was then attempting to sell tickets and other services to the golf events the Complainant had organised, all for the Respondent’s commercial gain. Further, the Respondent was well aware of Complainant’s rights at the time it registered the disputed domain name.
The domain was ordered to be transferred to the complainant.
Using another’s trade mark and/or identity in a domain to derive income is a commercial use under the UDNDRP, and does not constitute a Non-commercial fair use of a protected term. What the charitable organisation does with the money after it makes it is not a relevant concern.
12. Applied Molecular Evolution V OHIM
On 14 September 2004, the CFI delivered its judgment in Applied Molecular Evolution Inc. v OHIM, CFI case T-183/03
This case raised the issue of the application of Article 7(1)(c) of Regulation No 40/94 which provides a ground for absolute refusal of the registration of a trade mark if the mark is held to be descriptive of its related trade. The way descriptiveness is assessed was contested.
On 31 March 2000, the applicant requested the registration of the mark ‘Applied Molecular Evolution’ in class 42 of the Nice Agreement. Registration was refused on 28 November 2001. This decision was appealed by the applicant and the appeal was dismissed. The applicant further appealed to the CFI.
Descriptiveness of a sign is assessed in two ways, first, by considering the related trade, and second, by addressing the understanding the relevant section of the public has of the mark.
As a first plea, the applicant contested the way the relevant public was defined, arguing that it should encompass fewer specialists such as economic operators. However, the court held that the public has to be knowledgeable, particularly well informed customers, and that in considering the intended use of the sign, the economic operators would necessary be knowledgeable.
Secondly, the applicant argued that ‘Evolution’ has different meanings and that one of them was contrary to what was assessed, being a gradual random change instead of a direct and targeted optimising of a molecule, which is part of the applicant’s trade. Again, it was held that a sign must be refused registration whenever at least one possible meaning characterises the trade.
In its third plea, the applicant opposed the fact that the Board provided a definition of ‘Molecular Evolution’ without any evidence of that assertion, and emphasised that its trade covered more services. The CFI held that the definition was appropriate and the term sufficiently common place. Also, that the absolute ground of refusal only requires one of the meanings to be descriptive of one of the aspects of the trade.
The final plea related to the use of the term ‘Applied’ which was said to blur the meaning of the mark as a whole. The court found that ‘Applied’ means a practical application, which increased the descriptiveness, and coincided with the syntax of English.
The claims were dismissed and the applicant ordered to pay the costs.
The court’s decision means that, in cases where there are absolute grounds for refusal, only one of the potential meanings needs to be descriptive in relation to only one aspect into which an applicant is trading. Furthermore, association of terms could lower the descriptiveness when it is inconsistent with the syntax of its related language.
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