Trade Marks Update

The last two months have seen Beck Greener’s trade mark group scoring a number of significant wins for its clients. In this newsletter we report on three such cases.

Aveda Corporation v Dabur (India) Limited tm: DABUR UVEDA 13th March 2013

In 2006 the European Court in Medion v Thomson had found that a defendant does not necessarily avoid infringement by putting its company name in front of an earlier trade mark, so long as in the combination which is formed, the common element
retains an “independent distinctive role”.

Medion concerned the alleged conflict between the marks LIFE and THOMSON LIFE. There is no obvious conceptual synergy between “THOMSON” and “LIFE” and accordingly, the word LIFE in THOMSON LIFE retained the required “independent distinctive role”. Compare for instance the marks JOY and COMFORT & JOY. The latter is likely to be read as a whole since COMFORT & JOY is, itself, a well-known phrase. Accordingly JOY would probably not retain the required “independent distinctive role” in the combined mark, and the likelihood of confusion with JOY significantly diminished.

The principle set out in Medion is a matter of common sense. There would be mass publication confusion if Pepsi were to sell its products as PEPSI COCA COLA or vice versa.

In its opposition to an application for the mark DABUR UVEDA, Aveda argued that the same principle should apply. The UKIPO tribunal agreed that UVEDA was close to AVEDA and that further, there was no conceptual synergy between UVEDA and DABUR. However, it concluded that the word UVEDA was not dominant in DABUR UVEDA and that there was no likelihood of confusion.

Aveda appealed against the UKIPO’s finding to the UK High Court. In his decision Mr. Justice Arnold carefully reviewed the case law and confirmed first, there is no requirement in Medion that the common element between the marks in question be “dominant”. Second, he rejected Dabur’s contention that Medion was an exception to the usual requirement that the similarity of marks be appreciated globally, and that the principles arising from Medion should therefore be narrowly construed. He found that Medion was simply the application of the usual rules of comparison to a particular kind of case. He therefore dismissed the suggestion that Medion was confined to situations where the “common” element of the marks concerned was identical. He allowed Aveda’s appeal and refused Dabur’s application for the identical and similar goods concerned in question.

On a separate issue, the judge also considered the question of whether the term “cleaning, polishing, scouring and abrasive preparations and substances” which was amongst the class 3 goods claimed in Dabur’s application, included such goods “for use on the body”. The judge acknowledged that such items as exfoliants, derma-abrasives and skin polishers, as well as soaps, were commonly found amongst skin care ranges. However, he considered that these were more properly subsumed under the category “cosmetics” and “skin care preparations” and that they were not included within the general term “cleaning, polishing, scouring and abrasive preparations and substances” which, he found, means industrial or household products.

Ian Bartlett of Beck Greener presented the case in the High Court for the successful appellant Aveda Corporation.

Moral and action points

Adding a “house mark” or some other distinctive element to what would otherwise be a potentially conflicting mark will not necessarily avoid infringement even where the “common” elements are non-identical.

Applicants should not rely exclusively on broad terms when framing specifications of goods and services. Broad terms should be claimed where appropriate but the specific goods, using their common commercial names, should be separately claimed.

Sylvester Stewart (aka Sly Stone) v Even Street Productions Limited tm SLY & THE FAMILY STONE 3rd April 2013

Sly Stone had been the frontman of the US music group SLY & THE FAMILY STONE. The group came to prominence in the 1960s and early 70s with a string of hit records. Sly Stone is considered as one of the founding fathers of funk and was inducted into the Rock & Roll Music Hall of Fame in 1993.

In 2004 Even Street Productions, a US company controlled by Jerry Goldstein, whom Sly Stone had previously engaged as his business manager, filed a Community Trade Mark application for SLY & THE FAMILY STONE covering music recordings and providing online music group information.

Sly Stone commenced cancellation proceedings before OHIM in September 2010 claiming that the application to register the mark had been filed in bad faith. Even Street relied on documents purporting to show that Sly Stone and other members of the group had assigned their rights in the name SLY & THE FAMILY STONE to Even Street in the early 1990s. Sly Stone contended that the documentation did not show any such assignment but at most assigned the right to collect royalties on his behalf. He argued that the other members of the group had no right to the name capable of being assigned.

In an unusually lengthy decision, OHIM’s Cancellation Division carefully reviewed the evidence filed by the parties. It concluded that the documentation evidenced by Even Street did not demonstrate an assignment of any proprietary right in the name and trade mark SLY & THE FAMILY STONE. It made no finding as to whether Sly Stone exclusively owned the mark, as against the other members of the group, but found that he at least had a substantial economic interest in mark. The tribunal concluded that the contractual relations between the parties had imposed a duty of “fair play” on Even Street and towards Sly Stone. It went on to explain that “fair play” can be understood as honest commercial practices and accepted business ethics. It found Even Street had breached this duty and that by filing the application it had attempted to misappropriate the goodwill associated with the name of the group. It therefore ordered that the registration be removed from the CTM register.

Beck Greener acted for the successful party, Sly Stone, on the instructions of Allens Law Group in California.

Moral and action points

The tribunal’s use of the phrase “fair play” to convey what is meant by “good faith” is worth noting. Taken at face value, “fair play” would seem to require more than just “honesty”. If “fair play” comes to be the norm against which such cases are judged, the scope of what constitutes “bad faith” could well be broadened.

It is also interesting to see that OHIM’s Cancellation Division had no hesitation in construing the meaning of documentation expressly stated to have been created under California law. Indeed it had rejected a request by Even Street to have the proceedings suspended pending the outcome of corresponding litigation in the US. Parties to CTM proceedings should therefore be prepared to bring evidence to show how a document would be construed under the national laws which govern it rather than expecting OHIM to cede or suspend jurisdiction.

Julius Sämann Limited v L&D SA TM Aire Limpio & device 15th April 2013

Julius Samänn Ltd (JSL) makes the “Magic Tree” range of in-car air fresheners, sometimes seen hanging from rear-view mirrors. JSL owns numerous registrations for marks incorporating a silhouette of a fir tree, including a Community Trade Mark registration (image left).

The Spanish company, L&D, also makes in-car air fresheners including a number of ranges of suchproducts in the shape of trees. For many years, and in many countries, the two companies have been involved in trade mark and design litigation including before the CTM office ending in the ECJ’s decision (summarised here), and the UK High Court ending in the decision of Kitchen J (as he then was) in the “Tetrosyl” case.

The present case involved a long standing British designation of a International Registration which L&D had obtained in 1998 (image left).

In 2011 JSL commenced invalidation proceedings before the UK trade mark office claiming that L&D’s registration conflicted with JSL’s registered rights and its rights established through use. L&D claimed, interalia, that the marks in question were dissimilar but that in any event, JSL had acquiesced in the registration and the use of the mark for the statutory 5 year period and was therefore not entitled to the declaration of invalidity it sought. The case was heard in November 2012 and the decision issued earlier this month.

The tribunal considered the marks were not sufficiently similar either to cause a likelihood of confusion, to provide any unfair advantage to L&D or to damage the distinctiveness or repute of JSL marks. JSL’s application for invalidity was therefore refused.

Beck Greener acted for the successful party, L&D.

Moral and action points

The Hearing Officer did not consider the outcomes of the previous disputes between the parties to be of any assistance. This exemplifies how, in the absence of any formal “estoppel”, UK tribunals will generally consider factual matters afresh and will reach their own conclusions on for instance, the question of confusing similarity, independently of findings made in other jurisdictions. This includes findings of OHIM and the EU General Court.

EU EP and EC to change CTMs – OHIM to become EUTMDA

The European Commission has outlined its proposals to amend the trade marks Directive and Regulation. We have highlighted a few of the proposed changes.

Currently a trade mark must be capable of being represented graphically. If the proposed change goes ahead, this will no longer be the case. This will allow trade mark applicants to file, for instance, sound files, without any need for a spectrogram. Clearly this is useful in the case of sound marks. There can be few people who can read a spectrogram with confidence.

The law concerning importing of counterfeit goods into the EU has been seen as unnecessarily burdensome for rights owners, who need to establish that goods are the subject of a commercial act directed at EU consumers before having them declared counterfeit. The new directive will provide clarity, so that rights owners can more immediately prevent third parties from marketing goods bearing an identical or similar mark, whether they are released for distribution or not.

Harmonization of official fees, examination procedure and opposition procedure are all mooted. In some member states, invalidity of a registration is dealt with through the courts, a costly and lengthy procedure in many cases. The proposed new directive will provide for revocation and cancellation for non-use in new administrative procedures before national offices, which is good news for rights owners. Fees too are to be harmonized, with the introduction of a, presumably lower fee for CTMs applications in one class. In future each class of goods or services beyond the first will require an additional class fee.

It is proposed that trade marks in languages from outside the jurisdiction will be examined on absolute grounds after translating them into the official EU Languages, so if a mark is descriptive in Japanese, it will be deemed unregistrable here.

Finally, OHIM, or OAMI, UAMI, and a number of other easily pronounced acronyms, is to become the European Union Trade Marks and Designs Agency, or EUTMDA. That’s easy for them to say.