Case Law (15)

Question 1

Which case is applicable to non-conventional trade marks (registrability)?

Answer 1

Sieckmann v German Patent and Trademark Office (C-273/00)

Question 2

Describe the background in Sieckmann vs German Patent and Trademark Office.

Answer 2

A trade mark must be represented in a manner that enables the public to determine the clear and precise subject matter of the protection acquired. How does this apply to applications for trade marks that cannot be perceived visually such as smells, tastes, or sounds?

The applicant applied to the German Patent Office (GPO) to register a smell as a trade mark. The application was made under the old law, which required that a sign be “represented graphically”. Note that this requirement has now changed.

The description was of an olfactory mark of the pure chemical substance methyl cinnamate. The applicant also submitted an odour sample in a container and a description of the scent. The GPO refused the application on the grounds that it lacked distinctive character. On appeal, the Bundespatentgericht held that although the smell may be able to distinguish different undertakings, there were doubts as to whether an olfactory mark (such as a smell) was capable of being represented graphically.

Question 3

Describe the decision in Sieckmann vs German Patent and Trademark Office.

Answer 3

A trade mark may consist of a sign which cannot be perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

Submission of a chemical formula, a written description and an odour sample (or any combination of those elements) does not satisfy the requirements of graphic representability. A chemical formula is a representation of a substance rather than its odour and is not sufficiently intelligible, clear and precise. A description of an odour (although graphic) is not sufficiently clear and precise and does not constitute a representation. A sample of an odour does not constitute a graphic representation; nor is it sufficiently stable or durable.

• A trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is:
o clear
o precise
o self-contained,
o easily accessible
o intelligible,
o durable (e.g. colour must not fade over time); and
o objective.

to the competent authorities and the public.

Question 4

Describe the key takeaways from Sieckmann vs German Patent and Trademark Office.

Answer 4

(note that the graphical representation requirement has now been removed from the Regulation – signs can now be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective).

• Smells are capable of registration as trade marks provided they meet the requirements for registration.
• The case provides useful criteria for the registrability of non-traditional marks.

Question 5

Which cases are applicable to absolute grounds (distinctiveness)?

Answer 5

Nichols plc v Registrar of Trade Marks, (C404/02)

Procter & Gamble Company v OHIM (C-383/99)

OHIM v Wm. Wrigley Jr. Company (C-191/01)

Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) and Boots- und Segelzubehör Walter Huber (C-108/97),

Question 6

Describe the background in Nichols plc v Registrar of Trade Marks, (C404/02).

Answer 6

Nichols applied to the Registrar of Trade Marks for registration of the surname ‘Nichols’ as a trade mark for products including vending machines, and food and drink of the kind typically dispensed through such machines.

Question 7

Describe the decision in Nichols plc v Registrar of Trade Marks, (C404/02).

Answer 7

The criteria for assessment of the distinctive character of trade marks constituted by a personal name are the same as those applicable to the other categories of trade mark.

Stricter general criteria of assessment based, for example, on:
— a predetermined number of persons with the same name, above which that
name may be regarded as devoid of distinctive character,
— the number of undertakings providing products or services of the type covered
by the application for registration, or
— the prevalence or otherwise of the use of surnames in the relevant trade,
cannot be applied to such trade marks.

In the same way as a term used in everyday language, a common surname may serve the trade mark function of indicating origin and therefore distinguish the products or services concerned where it is not subject to a ground of refusal of registration other than the one referred to in Article 3(1)(b) of Directive 89/104, such as, for example, the generic or descriptive character of the mark or the existence of an earlier right.

The assessment of the existence or otherwise of the distinctive character of a trade mark constituted by a surname, even a common one, must be carried out specifically, in accordance with the criteria applicable to any sign …, in relation, first, to the products or services in respect of which registration is applied for and, second, to the perception of the relevant consumers.

Question 8

Describe the key takeaways from Nichols plc v Registrar of Trade Marks, (C404/02).

Answer 8

• The UKIPO traditionally took a strict approach to the registration of surnames.
• Surnames should now be treated in the same way as other marks and are not subject to special rules of their own.
• It cannot be assumed that surnames are intrinsically devoid of distinctive character. Registrability should not depend on pre-determined criteria, such as how common the name may be. Nor is it legitimate to refuse registration in order to ensure no advantage is given to the first applicant.

Question 9

Describe the background in Procter & Gamble Company v OHIM (C-383/99) – ‘BABY-DRY’.

Answer 9

Procter & Gamble applied to register ‘BABY-DRY’ as an EUTM for disposable nappies made out of paper or cellulose and nappies made out of textile.

The mark was originally refused for consisting exclusively of words which may serve, in trade, to designate the intended purpose of the goods, for being devoid of distinctive character and therefore not eligible for registration.

Question 10

Describe the decision in Procter & Gamble Company v OHIM (C-383/99) – ‘BABY-DRY’.

Answer 10

Trade marks are not to be registered if they are devoid of distinctive character or if they consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering of the service, or other characteristics of the goods or service.

As regards trade marks composed of words, such as the mark at issue here, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. Any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark.

In order to assess whether a word combination such as ‘BABY-DRY is capable of distinctiveness, it is therefore necessary to put oneself in the shoes of an English-speaking consumer. From that point of view, and given that the goods concerned in this case are babies’ nappies, the determination to be made depends on whether the word combination in question may be viewed as a normal way of referring to the goods or of representing their essential characteristics in common parlance.

As it is, that word combination, whilst it does unquestionably allude to the function which the goods are supposed to fulfil, still does not satisfy the
disqualifying criteria. Whilst each of the two words in the combination may form part of expressions used in everyday speech to designate the function of babies’ nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies’ nappies or for describing their essential characteristics.

Word combinations like ‘BABY-DRY cannot therefore be regarded as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctive power on the mark so formed and may not be refused registration under Article 7(l)(c).

Question 11

Describe the takeaways in Procter & Gamble Company v OHIM (C-383/99) – ‘BABY-DRY’.

Answer 11

• BABY-DRY held to be not descriptive of the goods because it was a “syntactically unusual juxtaposition”.
• When a trade mark consists of two ordinary words, is the combination distinctive? Assess the mark as a whole.
• A trade mark may be registered if it is perceptibly different from the separate terms. Is there an element of ‘lexical invention’?
• Strongly criticised case – established low threshold for assessing distinctive character, and case law has since retreated.

Question 12

Describe the background in OHIM v Wm. Wrigley Jr. Company (C-191/01) – ‘DOUBLEMINT’

Answer 12

Appeal against the refusal to register the word DOUBLEMINT as an EUTM for various classes of goods including in particular chewing gum.

Question 13

Describe the decision in OHIM v Wm. Wrigley Jr. Company (C-191/01) – ‘DOUBLEMINT’

Answer 13

By prohibiting the registration as EUTMs of (descriptive) signs and indications, Article 7(1)(c) pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

To refuse to register a trade mark under Article 7(1)(c), it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

Question 14

Describe the takeaways in OHIM v Wm. Wrigley Jr. Company (C-191/01) – ‘DOUBLEMINT’

Answer 14

• DOUBLEMINT held to be descriptive.
• If at least one possible meaning of the mark reflects a characteristic of the goods/services, a mark must be refused.
• In order to ensure that descriptive signs or indications may be freely used by all, the test to be applied is whether the mark is capable of being used by other economic operators to designate a characteristic of the goods/services.
• Does the mark need to be used by other traders to describe their goods/services?

Question 15

Describe the background in Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) and Boots- und Segelzubehör Walter Huber (C-108/97), Franz Attenberger (C-109/97 Joined Cases [1999] ECR l-2779

Answer 15

The Chiemsee is the name of a lake in Bavaria. A company close to the lake registered the name as a trade mark for sportswear. A competitor took objection to this, arguing that because the mark consisted of the name of a lake, it was geographically descriptive.

Question 16

Describe the decision relating to the registrability of geographical names in Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) and Boots- und Segelzubehör Walter Huber (C-108/97), Franz Attenberger (C-109/97 Joined Cases [1999] ECR l-2779

Answer 16

i) whilst an indication of the geographical origin of goods … usually indicates the
place where the goods were or could be manufactured, the connection between a category of goods and a geographical location might depend on other ties, such as the fact that the goods were conceived and designed in the geographical location concerned. Windsurfing Chiemsee para 36

ii) [the Directive] does not prohibit the registration of geographical names as trade marks solely where the names designate places which are, in the mind of the relevant class of persons, currently associated with the category of goods in question; it also applies to geographical names which are liable to be used in future by the undertakings concerned as an indication of the geographical origin of that category of goods. Windsurfing Chiemsee para 36
iii) where there is currently no association in the mind of the relevant class of persons between the geographical name and the category of goods in question, the competent authority must assess whether it is reasonable to assume that such a name is, in the mind of the relevant class of persons, capable of designating the geographical origin of that category of goods. Windsurfing Chiemsee para 36
iv) in making that assessment, particular consideration should be given to the degree of familiarity amongst the relevant class of persons with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods concerned. Windsurfing Chiemsee para 36
v) it is not necessary for the goods to be manufactured in the geographical location in order for them to be associated with it. Windsurfing Chiemsee para 36

Question 17

Describe the decision relating to the registrability of evidence of acquired distinctiveness in Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) and Boots- und Segelzubehör Walter Huber (C-108/97), Franz Attenberger (C-109/97 Joined Cases [1999] ECR l-2779

Answer 17

i) In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations. Windsurfing Chiemsee para 51
ii) the circumstances in which that requirement may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages. Windsurfing Chiemsee para 52
iii) a trade mark acquires distinctive character following the use which has been made of it where the mark has come to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings. Windsurfing Chiemsee para 54
iv) it precludes differentiation as regards distinctiveness by reference to the perceived importance of keeping the geographical name available for use by other undertakings. Windsurfing Chiemsee para 54
v) in determining whether a trade mark has acquired distinctive character following the use which has been made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings. Windsurfing Chiemsee para 54
vi) if the competent authority finds that a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be satisfied. Windsurfing Chiemsee para 54
vii) where the competent authority has particular difficulty in assessing the distinctive character of a mark in respect of which registration is applied for, Community law does not preclude it from having recourse, under the conditions laid down by its own national law, to an opinion poll as guidance for its judgment. Windsurfing Chiemsee para 54

Question 18

Describe the takeaways in Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) and Boots- und Segelzubehör Walter Huber (C-108/97), Franz Attenberger (C-109/97 Joined Cases [1999] ECR l-2779

Answer 18

• Geographic names can be registered as long as the public associates the mark with the trade mark owner and not with the geographic area.
• Case gives useful guidance on what is required to show acquired distinctiveness of a trade mark through use.

Question 19

Which cases are applicable to 3D shapes – limits of the protection available from trade mark law?

Answer 19

Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (C-299/99)

Societe des Produits Nestle SA v Cadbury UK Ltd, ECJ (C-215/14) and Ch D [2016] EWHC 50

Linde AG, Winward Industries Inc. and Rado Uhren AG (Joined Cases C-53/01 to 55/01)

Question 20

Describe the background in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (C-299/99).

Answer 20

Philips had registered a picture of its three-headed rotary shaver as a trade mark, for shavers. In infringement proceedings, Remington counterclaimed for invalidity of the mark. The main issue in dispute was the interpretation of s3(2)(b) UK TMA. Does the mark consist exclusively of the shape of goods which is necessary to obtain a technical result?

Question 21

Describe the decision in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (C-299/99).

Answer 21

• The criteria for assessing distinctive character of 3-D marks which consist of the appearance of the product itself are the same as those for other categories of trade mark. However, the average consumer’s perception may not be the same for a mark consisting of the appearance of the product itself, as for a word or device mark. Average consumers are not accustomed to identifying the origin of products by their shape alone.
  • Therefore it is more difficult to establish distinctiveness in relation to 3-D marks.
  • Shapes which depart significantly from the norm may have the necessary distinctive character but this does not mean that a shape needs to have some fancy or capricious addition or embellishment in order to be registered.
  • In Philips, there had been lengthy and substantial use of the shaver head shape and Philips had been the only company selling such shavers in the UK, yet the Court of Appeal did not consider that the public relied on the shape to identify the origin of the product.
  • S3(2) offers significant additional difficulties for the registration of a shape, that cannot be overcome with evidence of acquired distinctiveness.
  • There’s a public policy requirement to keep technically necessary shapes available to all and to prevent the registration of trade marks as an alternative to patents and designs, so as to extend monopoly rights i.e. no monopoly on technical solutions or functional characteristics of a product.
  • Proving that other shapes could achieve the same technical result is not enough to overcome the objection.
  • Where the essential functional characteristics of the shape are attributable solely to technical result, registration must be prohibited, even if that technical result can be achieved by other shapes, too.
  • The court must look at the functionality of the shape as a whole, rather than dissect each individual element.
  • Assess in light of the average consumer for the product.

Question 22

Describe the background in Societe des Produits Nestle SA v Cadbury UK Ltd, ECJ (C-215/14) and Ch D [2016] EWHC 50

Answer 22

Nestle sought to register the shape of a four-fingered KatKat bar as a trade mark (without the KitKat logo embossed onto the fingers). Cadbury opposed on the basis that it was not sufficiently distinctive. Nestle argued that the mark was distinctive and had acquired distinctive character through use.

Question 23

Describe the decision in Societe des Produits Nestle SA v Cadbury UK Ltd, ECJ (C-215/14) and Ch D [2016] EWHC 50

Answer 23

Registration as a trade mark of a sign consisting of the shape of goods is precluded, where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue.

• Registration may be refused of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result. This must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured.
• In order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company.
• To show that a mark has acquired distinctiveness, it is necessary to show that the average consumer must rely on the mark, in isolation, to indicate the origin of the product. The mark would have to be the sole indication of origin to a consumer. Show that consumers would purchase the product on the basis of the shape, alone, and no other marks (such as KitKat name).
Mr Justice Arnold:
“in order to demonstrate that a sign has acquired distinctive character, the applicant or trade mark proprietor must prove that, at the relevant date, a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question (as opposed to any other trade mark which may also be present).” (para 57)

Question 24

Describe the takeaway in Societe des Produits Nestle SA v Cadbury UK Ltd, ECJ (C-215/14) and Ch D [2016] EWHC 50

Answer 24

How do you show that a consumer not only recognises the sign, but relies on it, too?

Question 25

Describe the background in Linde AG, Winward Industries Inc. and Rado Uhren AG (Joined Cases C-53/01 to 55/01)

Answer 25

Linde sought registration of a vehicle as a 3-D mark for fork-lift trucks,
Winward sought registration of a torch as a 3-D mark, Rado sought registration of a graphic representation of a wrist watch.

Question 26

Describe the decision in Linde AG, Winward Industries Inc. and Rado Uhren AG (Joined Cases C-53/01 to 55/01)

Answer 26

• Clarified that once a shape mark has cleared absolute grounds in s3(2)(a),(b),(c) the test of distinctiveness applied to shape marks is the same as that applied to any other mark.
• The criteria for assessing the distinctiveness of three-dimensional product shape marks are no different from those to be applied to other types of trade marks.
• In practice, it might be more difficult to establish distinctiveness in relation to a product shape mark than a word or figurative trade mark.
• Regard must be had to the public interest - all 3-D shape trade marks which consist exclusively of signs or indications which may serve to designate the characteristics of the goods or services should be freely available to all and are not registrable.

Question 27

Describe the takeaways in Linde AG, Winward Industries Inc. and Rado Uhren AG (Joined Cases C-53/01 to 55/01)

Answer 27

• Criteria for assessing distinctiveness is technically the same.
• However, more difficult to establish distinctiveness due to public perception – average consumers are not in habit of making assumptions about the origin of goods based on the shape of their packaging (as they might with figurative marks or words).
• To be distinctive, the shape must therefore be special, depart significantly from the norm and customs in the sector.
• Acquisition of secondary meaning is possible but must prove that shape alone identifies particular origin of goods.
• Has the shape acquired the ability to demonstrate exclusive origin?
• And note, use of a trade mark will not overcome requirement that shape does not result from nature of goods, shape is not necessary to obtain technical result, and shape does not give substantial value to goods.

Question 28

Which cases are applicable to Relative Grounds – Procedure for assessing “similarity” of marks and goods/services?

Answer 28

Sabel BV v Puma AG, Rudolf Dassler Sport (C-251/95)

Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. (C-39/97)

Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV (C-342/97)

Question 29

Which cases are applicable to Infringement – requirement for “prejudicial use”?

Answer 29

Arsenal Football Club plc v Mathew Reed ECJ (C-206/01) and CA [2003] EWCA Civ 696

Adam Opel AG v Autec AG (C-48/05)

Question 30

Describe the background in Sabel BV v Puma AG, Rudolf Dassler Sport (C-251/95) [1997] ECR l-6191.

Answer 30

Puma had objected to Sabel’s TM application to register the image of a cheetah over the word “sabel” on the grounds that the mark, depicting a running cat, was similar to its own mark covering the silhouette of a puma and likely to confuse the public.

Question 31

Describe the decision in Sabel BV v Puma AG, Rudolf Dassler Sport (C-251/95) [1997] ECR l-6191.

Answer 31

Similarity of signs

i) [I]t is clear from the tenth recital in the preamble to the Directive that the appreciation of the likelihood of confusion ‘depends on numerous elements and, in particular, on the recognition of the trade mark on the market, of the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods or services identified‘. Sabel v Puma para 22
ii) The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case. Sabel v Puma para 22
iii) That global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. Sabel v Puma para 23
iv) [T]he perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. Sabel v Puma para 23
v) The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Sabel v Puma para 23
vi) [T]he more distinctive the earlier mark, the greater will be the likelihood of confusion. Sabel v Puma para 24

vii) It is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public. Sabel v Puma para 24
This is known as enhanced distinctiveness – the familiarity through use of a trade mark amongst its customers being sufficiently great that, upon seeing an identical or similar sign on similar or identical goods, those customers are more likely to be confused than would be the case with a sign with which they were not familiar.

viii) [W]here the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion. Sabel v Puma para 25
ix) [T]he criterion of ‘likelihood of confusion which includes the likelihood of association with the earlier mark‘ is to be interpreted as meaning that the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of that provision. Sabel v Puma para 26

• Test for similarity is also driven by “global appreciation” approach.
• Global appreciation test from point of view of average consumer.
• A mere likelihood of association is not enough.

Question 32

Describe the background in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. (C39/97) [1998] ECR l-5507, [1999] RPC 117.

Answer 32

Canon objected to an attempt by MGM to register the mark CANNON for video tapes because they had a registration covering various electrical goods such as tvs, video recorders and filming equipment. They argued that the goods were similar, leading to confusion.

Question 33

Describe the decision in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. (C39/97) [1998] ECR l-5507, [1999] RPC 117.

Answer 33

Similarity of goods/services and LOC

i) [T]he tenth recital of the preamble to the Directive states that ‘the protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, is absolute in the case of identity between the mark and the sign and goods or services; … the protection applies also in case of similarity between the mark and the sign and the goods or services; … it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion; … the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, [on] the association which can be made with the used or registered sign, [and on] the degree of similarity between the trade mark and the sign and between the goods or services identified, constitutes the specific condition for such protection‘. Canon v MGM para 15
ii) A global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between these goods or services. Canon v MGM para 17
iii) [A] lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Canon v MGM para 17
iv) The interdependence of these factors is expressly mentioned in the tenth recital of the preamble to the Directive, which states that it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services identified. Canon v MGM para 17
v) Since protection of a trade mark depends … on there being a likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character. Canon v MGM para 18

vi) [R]egistration of a trade mark may have to be refused, despite a lesser degree of similarity between the goods or services covered, where the marks are very similar and the earlier mark, in particular its reputation, is highly distinctive. Canon v MGM para 19
vii) [E]ven where a mark is identical to another with a highly distinctive character, it is still necessary to adduce evidence of similarity between the goods or services covered. Canon v MGM para 22

viii) [T]he likelihood of confusion presupposes that the goods or services covered are identical or similar. Canon v MGM para 22
ix) In assessing the similarity of the goods or services concerned … all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their end users and their method of use and whether they are in competition with each other or are complementary. Canon v MGM para 23
x) [T]he distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to the likelihood of confusion. Canon v MGM para 24
xi) There is a likelihood of confusion … where the public can be mistaken as to the origin of the goods or services in question. Canon v MGM para 26
xii) [T]he risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. Canon v MGM para 29
xiii) [I]n order to demonstrate that there is no likelihood of confusion, it is not sufficient to show simply that there is no likelihood of the public being confused as to the place of production of the goods or services. Canon v MGM para 29
xiv) [T]here may be a likelihood of confusion … even where the public perception is that the goods or services have different places of production. Canon v MGM para 30
xv) By contrast, there can be no such likelihood where it does not appear that the public could believe that the goods or services come from the same undertaking or, as the case may be, from economically-linked undertakings. Canon v MGM para 30

• Note “principle of interdependence” - high similarity of goods can offset low similarity of marks, and vice versa.

Question 34

Describe the key takeaway in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. (C39/97) [1998] ECR l-5507, [1999] RPC 117.

Answer 34

“principle of interdependence” - high similarity of goods can offset low similarity of marks, and vice versa.

Question 35

Describe the background in Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV (C-342/97)

Answer 35

LLOYD vs LOINT’S for shoes. Lloyd had a strong standing in the market.

Question 36

Describe the decision in Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV (C-342/97)

Answer 36

• LOC is determined by average consumer.
• For the purposes of the global appreciation test, the matter must be judged through the eyes of the average consumer of the goods at issue, who is deemed to be reasonably well informed (level of sophistication) and reasonably observant (attention) and circumspect.
• The average consumer rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind. Further, the average consumer’s level of attention is likely to vary according to the category of goods in question.
• The matter In order to assess the degree of similarity between the marks concerned, the court must determine the degree of visual, aural or conceptual similarity between them, and where appropriate, evaluate the importance attached to those different elements taking into account the nature of the goods in question and the circumstances in which they are marketed.
• It is possible that mere aural similarity between marks, used for identical and similar products, may create a likelihood of confusion.
• The more similar the goods or services covered and the more distinctive the earlier mark, either per se or because of the use that has been made of it, the greater will be the likelihood of confusion. Distinctive marks enjoy even broader protection, so there may be a LOC even where there is a lower level of similarity between the marks.
• In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings.
• In making that assessment, account should be taken of all relevant factors and, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered.

Question 37

Which cases are applicable to Infringement – requirement for “trade mark use”?

Answer 37

Arsenal Football Club plc v Mathew Reed ECJ (C-206/01) and CA [2003]
EWCA Civ 696

Adam Opel AG v Autec AG (C-48/05)

Question 38

Describe the background in Arsenal Football Club plc v Mathew Reed ECJ (C-206/01) and CA [2003]
EWCA Civ 696

Answer 38

The case concerned the sale of unofficial Arsenal merchandise, such as scarves.
The club sued Mr Reed for trade mark infringement and passing off, despite the fact
that he had been selling Arsenal merchandise first inside and then (after he was
banned) outside the ground for over 30 years. Laddie J considered that Mr Reed’s
use of the marks did not indicate the trade origin of the goods, and so did not harm
the essential function of the Arsenal marks, as Mr Reed’s signs were merely showing
a badge of allegiance.

Question 39

Describe the decision in Arsenal Football Club plc v Mathew Reed ECJ (C-206/01) and CA [2003]
EWCA Civ 696

Answer 39

Decision:
• The CJEU identified the essential function of a TM as being to guarantee
origin. As the exclusive right conferred by the TM was to protect the proprietor’s specific interest to protect the function, uses for purely descriptive
purposes are excluded.
• Nevertheless, Mr Reed’s use of the mark did suggest a material link to
Arsenal and so would jeopardise the origin function, even if his use was seen
as a badge of allegiance or loyalty.
• The test was whether the use would jeopardise the essential function of
a trade mark, to guarantee origin.
• Mr Reed’s actions meant that goods were in circulation which did not come
from Arsenal but which nevertheless bore its trade marks, and this affected
Arsenal’s ability to guarantee the origin of the goods. Furthermore, the use of
ARSENAL on hats and scarves denoted trade origin to a substantial number
of consumers (particularly those who might receive them as gifts) and
therefore amounted to trade mark use irrespective of the fact that the
defendant had, at the time of sale, differentiated his goods from the official
club merchandise.
• Trade mark use was a necessary ingredient of infringement.

Question 40

Describe the background in Adam Opel AG v Autec AG (C-48/05)

Answer 40

Opel had registered its logo for motor vehicles and toys. The badge used on Opel
car radiators was recognised as a mark for both cars and toys. The defendant was
selling remote-control scale model cars bearing the badge on the radiator grille. The
models were branded with the defendant’s own trade marks.

Question 41

Describe the decision in Adam Opel AG v Autec AG (C-48/05)

Answer 41

Decision:
• Where a trade mark is registered both for motor vehicles - in respect of
which it is well known - and for toys, the affixing by a third party, without
authorisation from the trade mark proprietor, of a sign identical to that
trade mark on scale models of vehicles bearing that trade mark, in order
faithfully to reproduce those vehicles, and the marketing of those scale
models:
• - constitute a use which the proprietor of the trade mark is entitled to
prevent if that use affects or is liable to affect the functions of the
trade mark as a trade mark registered for toys;
• - constitute a use which the proprietor of the trade mark is entitled to
prevent if, without due cause, use of that sign takes unfair advantage of, or
is detrimental to, the distinctive character or the repute of the trade mark
as a trade mark registered for motor vehicles.
• Opel could stop the defendant from using that logo on its own toy cars if such
use was liable to affect the functions of the registered mark in relation to toys.
• The decision also illustrates that, even in the absence of a trade mark
registration for toys, Opel could have a case for infringement of the mark if it
can show that the mark has a reputation in relation to motor vehicles in
Germany and that Autec’s use of the mark on scale models has taken unfair
advantage of or, is detrimental, to the repute of that mark.
• Opel had successfully argued that it had an interest in the quality of scale models of vehicles bearing the Opel trade mark being good, and in those models being absolutely up to date, as otherwise the reputation of that trade mark, as a trade mark registered for motor vehicles, would be affected.
• Among other things, registration of a trade mark does not entitle the owner to prohibit a third party from using, in the course of trade, indications concerning the kind, quality, intended purpose or other characteristics of goods or services, so long as such use is in accordance with honest practices in industrial or commercial matters (this is a defence).
• The affixing of a sign which was identical to a trade mark registered, among other things, in respect of motor vehicles to scale models of that make of vehicle in order to reproduce those vehicles faithfully was not intended to provide an indication as to a characteristic of those scale models. It was merely an element in the faithful reproduction of the original vehicles.
• Where a trade mark is registered, inter alia, in respect of motor vehicles, the affixing by a third party, without the authorisation of the proprietor of the trade mark, of a sign identical to that mark to scale models of that make of vehicle, in order faithfully to reproduce those vehicles, and the marketing of those scale models, do not constitute use of an indication concerning a characteristic of those scale models, and so the defence does not apply.