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European IP Bulletin, Issue 35, October 2006 - Trade Marks

5. Cheeses to choose

On 15 August 2006, the decision was handed down in respect of a complaint with regard to domain name www.finecheeses.co.uk registered by the respondent.

The complainant’s case was that they had been trading under the name ‘The Fine Cheese Company’ since 1987, and started on-line trading in 1999 when they registered their domain name www.finecheese.co.uk. The respondents, on the other hand, registered the domain name www.finecheeses.co.uk in 2004 and had other websites such as yorkshirecheese.co.uk, cheese4all.co.uk, lawsoncheeses.co.uk. All these websites were linked to the respondent’s shopping site, www.cheesesdirect.co.uk, so that any customer clicking on any of the other sites were sent to this site for on-line ordering.

According to the complainant, if anyone accidentally adds an ‘s’ to ‘finecheese’ then the search is directed towards the respondent’s site, thus causing enough confusion to divert the traffic of customers away. Therefore, they alleged that the registration of the domain name ‘finecheeses’ instead of ‘good cheeses’, ‘best cheeses’ or similar adjective driven domain was an abusive registration for the purpose of exploiting their name and reputation.

An independent expert deciding on the twin issue of domain name right and abusive registration, upheld the common law right of the complainant over the trade name ‘The Fine Cheese Company’ as it has been trading under the same since 1987.

On the second issue of abusive registration, it was held that since the website complained of was a site that was owned by a competitor of the complainant offering very similar goods and services as that of complainant, it constituted abusive registration under paragraph 1 of the UK Dispute Resolution Policy and thus took unfair advantage of complaint’s rights. It was decided that such registration was an abusive registration under paragraph 3i-B as it was ‘for the purpose of’ blocking a mark or name in which the complainant has rights or has acquired rights.

It is significant to note that although the term ‘cheese’ is a generic term and the trade name ‘fine cheese’ was descriptive of the products sold by both parties, the registration of domain name was allowed to remain. The decision clarifies this aspect by holding that complainant’s domain name had attained secondary meaning and a goodwill in the business of cheese.

The decision is important on two counts. First, neither of the parties had any property rights in the name to raise an actionable passing off case against registration of a domain name. Secondly, it clarified that not all later domain name registrations of similar names would amount to a blocking and/or abusive registration unless such site was a competitor selling similar goods and services. Therefore, if a site is registered as finecheeses.co.uk for some charitable work, then it would not amount to abusive registration under the policy but such a use can still be held to be misleading and diluting the earlier domain name by bringing the principles of trade mark laws in the domain of domain names.

6. Hormel Foods Corporation

On 19 July 2006, the Second Board of Appeal of the Office for the Harmonisation of the Internal Market (OHIM) gave its decision in Hormel Foods Corporation, case C-450/2006-2.

Hormel Foods Corporation owns the trade mark for SPAM, a spicy luncheon meat.  Hormel had applied to OHIM to register "spam" as a Community Trade Mark (CTM) in relation to "economic consultancy, particularly in combination with network services; providing of expertise, engineering services and computer programming; economic consulting services" in class 36.

The application was also for the registration of the CTM for "services to avoid or suppress unsolicited e-mails" and "creation and maintenance of computer software in class 38, and for technical consultancy, particularly in combination with network services; providing of expertise, engineering services and technical consulting services" in class 42. The examiner rejected Hormel's application under article 3 of First Council Directive 89/104/EEC on the grounds of descriptiveness and non-distinctiveness, stating that the mark consisted exclusively of a descriptive term used in trade which refers directly and unequivocally to characteristics of the services applied for. When applied to the services applied for, the mark would immediately be perceived as a descriptive indication of their object or their intended purpose. In addition, being primarily descriptive, the mark was devoid of any distinctive character.

In its appeal, Hormel argued that an average English speaking person would not necessarily associate 'spam' with junk email, but would instead associate it with "a kind of spicy ham" food product. That argument was rejected by the Second Board of Appeal. The Board noted that the term SPAM is not only listed in technical dictionaries as a technical term for ‘unsolicited commercial e-mail’ but is also cited in general dictionaries. Thus, according to the Board, the term SPAM would be understood by professionals and those with a knowledge of computers as unambiguously indicating that the goods or services were intended to guarantee SPAM-free communication.

Also, a Google search returned more hits for "spam" junk email than for the canned meat, which satisfied OHIM that the word was also in use by the general public to refer to unsolicited mail.

The fact that the term SPAM had other meanings didn’t prevent it from describing the services in question.

It would be interesting to see where Hormel goes from here as it has been trying to prevent the use of SPAM as a generic term for years, including a 2004 advertising campaign. It also failed in its bid to invalidate the SPAMBUSTER name in the UK High Court in 2005. It is not believed that Hormel has serious plans of going into the email filtering business but, for whatever reason, it wants a monopoly over the term SPAM for junk emails. Even if its CTM application had been successful, one wonders how it would have worked in practice based on a registration for services to stop spam.

7. PAMPAM and PAMPIM Confused OHIM

In Gérard Meric v the Office for Harmonization in the Internal Market (OHIM) [CFI T-133/05 ], the Court of First Instance (CFI) revisited the global appreciation test as adopted in Puma v Sabel (1998 RPC 199).

Gérard, the owner of the trade mark ‘PAM-PIM’S BABY-PROP’, brought an appeal against OHIM for rejecting the registration of its mark as a community trade mark for the product ‘napkin-pants made out of paper or cellulose (disposable)’. In the decision, the CFI was required to investigate whether there was a similarity between the appellant’s trade mark, ‘PAM-PIM’S BABY-PROP’, and an earlier Spanish registered trade mark, ‘PAM-PAM’, resulting in a likelihood of confusion. During this analysis, the court considered the notion that “two marks are similar when they are at least partially identical as regards one or more visual, aural and conceptual aspects”.

When applying this test to the case in hand, the CFI agreed that the word ‘PAM-PIM’S’ was dominant from BABY-PROP and it also played an important role in the visual and aural assessment of the earlier mark. BABY-PROP was not a significant feature to find similarity between the marks and hence, could be ignored. The court would, therefore, consider the visual and aural similarity between ‘PAM-PIM’S’ and ‘PAM-PAM’ only. Accordingly, from a visual point of view, the Board held that PAM-PIM’S and PAM-PAM are visually similar because they are made up of two words linked by a hyphen and the difference between the vowels ‘a’ and ‘i’, while the addition of an ‘s’ is not sufficiently significant. From the phonetic point of view, PAM-PIM’S and PAM-PAM are also similar because they are made up of two monosyllabic words starting with the same consonant ‘P’ and finishing with the same consonant ‘m’. At the same time, the difference between vowels ‘a’ and ‘i’ is not sufficiently distinct to differentiate the marks.

Lastly, from the conceptual point of view, PAM-PAM and the dominant part PAM-PIM’S did not have a clear and specified semantic content since it did not have any particular meaning in Spanish, the language of the territory of the earlier mark. There were no conceptual differences in the sign concerned and both marks were found to be confusingly similar.

The similarity between trade marks was considered together with the identity of goods under these marks and the existence of the likelihood of confusion in some parts of Spain where PAM-PAM has been protected. This case applied an accepted methodology of testing distinctiveness (i.e. the global appreciation test), but its interpretation, especially in relation to the aural aspects of the mark, demonstrates that a mark would need more differentiation over a range of aspects (including visual and phonetic) so as to rebut the conclusion of “likelihood of confusion”.

8. L & D v OHIM & Julius Sämann Ltd:  Likelihood  of Confusion?

On 7 September 2006, the Court of First Instance dismissed the action by L&D SA to annul the decision of the Second Board of Appeal of OHIM relating to opposition proceedings between Julius Sämann Ltd and L&D, SA (the “contested decision”).
On 30 April 1996 L&D SA filed an application for Community trade marks in classes 3, 5 and 35. Sämann opposed this application, citing a likelihood of confusion with its earlier registered Community and national trade marks that, it alleged, comprised of similar visual pictures, for similar goods. The Opposition Division dismissed the opposition in its entirety.  The Board of Appeal dismissed Sämann's appeal in respect of the Class 35 services, but allowed it in respect of goods in question.

The Board of Appeal pointed out that the conflicting marks both comprised of a fir tree shown with branches formed by outgrowths and indents on the sides and a very short trunk on top of a wider part serving as a base. The Board held that there was a conceptual confusion between the marks, at least in Italy, based on the acceptance of the prolonged use, well-known nature and distinctive character of Sämann’s earlier mark. Furthermore, L&D’ s sign, which included the design of an animated character and the verbal element ‘aire limpio’, would not prevent that likelihood of confusion under Article 8(1) (b) of Regulation No 40/94 because L&D’ s sign could be perceived by the public concerned as an amusing and animated variant of Sämann’s earlier mark.

The CFI held that:

• The Board of Appeal was correct that the earlier mark had distinctive character.
• L&D’s mark was a fanciful impression of the graphic representation of a fir tree, and could have been regarded by the public as an amusing and animated variant of the earlier mark.
• The applicant had an opportunity to present its comments on all the factors on which the contested decision was based and also on the use of the evidence relating to the use of the earlier marks. Infringement of Article 73 of Regulation No 40/94 was not established

Pursuant to the case of LaboratoriosRTB v OHIMGiorgioBeverlyHills (T-162/01), the likelihood of confusion must be assessed globally on the basis of the perception that the relevant public has of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, such as their distinctive and dominant components. In this case, L&D thought they had a distinguishable mark; however, judging by the nature of the product and the relevant market, L&D’s sign was too similar for goods that were too similar.  Slight variations from earlier distinctive marks are generally not enough to make the latter sign sufficiently different to allow trade mark protection.

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