NEWS UPDATE...

Latest news in the world of Trade Marks

New Company Names Tribunal explained

Any person can object to a company's registered name if that name (i) is the same as a name which is associated with the objector and (ii) in which the objector has established goodwill (a reputation of any kind), and (iii) which is the same as the name in which the objector has established the goodwill, or (iv) if it is so similar to it that use of the registered company name in the United Kingdom would be likely to mislead by suggesting a connection between the limited company and the objector.

Objections are made to the Company Names Tribunal which is part of the UK-IPO (with whom we deal routinely on trade mark issues, and we have one of the country's few specialist Trade Mark Advocate Litigators).

The limited company against which the objection is laid will be the "primary respondent" but any of its members (shareholders) or directors may be joined as respondents.

If the basic grounds of objection set out above (that the name is the same as one in which the objector has an established reputation or is so similar to it to mislead) is made out, it is then for the respondents to show—

(a) that the name was registered before the commencement of the activities on which the applicant relies to show goodwill; or

(b) that the limited company—

(i) is operating under the name, or

(ii) is proposing to do so and has incurred substantial start-up costs in preparation, or

(iii) was formerly operating under the name and is now dormant; or

(c) that the name was registered in the ordinary course of a company formation business and the company is available for sale to the applicant on the standard terms of that business; or

(d) that the name was adopted in good faith; or

(e) that the interests of the applicant are not adversely affected to any significant extent.

If none of those is shown, the objection will be upheld.

Even if the facts listed at (a), (b) or (c) are established, the objection will be upheld if the objector shows that the main purpose of any of the respondents in registering the name was to obtain money (or other consideration) from the objector or prevent the objector from registering the name.

Grounds for refusal unfair to UK applicants?

At present an application for a UK trade mark must be refused by the trade marks registry on "relative grounds" if the UK registry officials think it is identical or similar to any earlier trade marks registered or applied for covering the same or similar goods. However, the UK Trade Mark Registry is considering amending these grounds so that an application will only be refused if the owner of an earlier right brings successful opposition.

This would bring the position in the UK into line with Community Trade Marks, where it is left to existing trade mark owners to oppose an application. Applicants to the UK Trade Mark Registry might be disadvantaged, since their applications will be refused if registry officials take the view that they are similar to applications or registrations on file at the Community Trade Mark Office (OHIM). The UK Trade Mark Registry is not able to refuse conflicting applications made to the OHIM, but is obliged to object to applications made to the UK Office even if the conflict is solely with a Community Trade Mark.

Since 1996, it has been possible to register trade marks valid throughout the EU via OHIM. Although the differences between the two systems were not very important to UK users initially, the rapid growth of the EU system has begun to make an impact.

The case for abolition of relative grounds is not clear cut, however, and professional opinion is divided. For example, if the proposal is implemented, it will be much more difficult to give a clear cut opinion on whether a new mark is free for use. UK registrations would be much more susceptible to challenge and invalidation than at present. Registered owners would also need to commission regular "watching searches" to check for competitive registration attempts, because UK registry officials would no longer refuse to accept conflicting marks unless the earlier owner initiated successful opposition proceedings.

Following a series of pre-consultation seminars on this subject earlier in the year, a consultation document has been prepared by the Trade Mark Registry, setting out in detail the arguments for and against the change. Comments from interested parties are welcomed by the Trade Mark Registry.

Trade Mark Case decides a 'genuine, properly substantiated likelihood of confusion' is required when objecting to an application

A key trade mark case was recently decided on appeal, setting out the fact that an objection to an application will not succeed in the absence of a 'genuine and properly substantiated likelihood of confusion.' The case also illustrates how important it is for smaller companies to register their trade marks to prevent them being bullied into giving up their rights and being overshadowed by large multi-nationals.

In the case (the full text of which can be found at 2001 RPC 32), the applicant had applied for the device mark '10 Royal Berkshire POLO CLUB' to cover a variety of cosmetics including perfumery in class 3. This was objected to by the Polo Ralph Lauren Company under section 5(2) of the Trade Marks Act 1994 alleging the mark to be a similar mark on identical goods, giving rise to a likelihood of confusion on the part of the public.

Ralph Lauren argued that they had established a significant amount of goodwill and reputation in the word POLO applied to such goods and therefore, the public would be confused into believing that the applicant's goods came from or were connected with Ralph Lauren.

Originally, the Hearing Officer at the Trade Marks Registry refused the registration of the Royal Berkshire mark, effectively granting a monopoly to Ralph Lauren in the word POLO on cosmetic goods.

However, on appeal, Geoffrey Hobbs QC allowed the applicant's appeal and decided that there was no likelihood of confusion when one considers the commercial realities of the market place. He determined that there could be no objection if the public would not believe that the goods under the two marks had come from the same or economically linked businesses.

He also concluded that a mere semantic association between the marks would not be enough to give rise to a likelihood of confusion. Instead, what is required is a 'genuine and properly substantiated likelihood of confusion' which should be assessed from the view of the average, well informed, observant consumer. Therefore, the question to assess with the 'likelihood of confusion' test was to determine the impression that the use of the mark made upon people in the course of its trade.

Clearly, the Royal Berkshire mark taken in its totality is dissimilar to the word POLO alone, especially when you consider that the activity undertaken by the club is the sport of polo. Therefore, 'polo' in their mark is being used in a descriptive context, with the rest of the mark providing the distinctiveness required for it to operate as a trade mark.

On this point, Mr. Hobbs concluded that the more descriptive the major feature of a mark is (ie- the word POLO), then the less chance there is of a likelihood of confusion being established.

The decision therefore found that despite Ralph Lauren's high degree of recognition and popularity on the market, the Royal Berkshire mark's use of the word POLO did not capture the distinctiveness of Ralph Lauren's mark. This was because the combination of the number 10 and the additional words ROYAL BERKSHIRE and CLUB distinguished the two marks sufficiently in the consumer's eyes.

For these reasons, no likelihood of confusion was found and the Royal Berkshire mark was allowed to proceed to registration.

Trade mark turnround for retail services

Following decisions on two recent test cases, the UK Registrar of Trade Marks has decided in principle that trade marks can be registered for retail services. Previously, such services could only be protected by registering trade marks for the goods which were actually sold rather than for the service of selling them.

This meant that an electrical retailer, for example, could only register its name in respect of the category of the appliances it actually sold rather than the service of supplying those appliances.

The change means that retailers can now receive the same protection that has been available to other service providers since 1986. By registering their trade mark they will be able to prevent other traders from setting up retail businesses under the same or a confusingly similar name.

The ruling is a consequence of the Trade Mark Act 1994, which changed UK law in line with an EU Directive, so that the basic law would be the same in all EU countries. The two test cases on behalf of Debenhams and Dewhurst, which were sponsored by the British Retail Consortium, were put forward to establish that trade marks for retail services could be protected under this law.

Previously, case law had held that the purpose of a trade mark was as an indicator of origin of goods or services, and that trading in other people's goods (eg retailing) did not qualify as such a service.

Sun rises on domain name landrush

In November 2000, seven new top-level domains (TLDs) were approved by the Internet Corporation for Assigned Names and Numbers (ICANN). Now two of the more general of these domains, .INFO and .BIZ, are entering their 'Sunrise' periods - intervals of around two months during which trade mark owners have the opportunity to apply for their appropriate domain names ahead of the general public. Companies interested in applying should contact their domain name registrar without delay.

This is a reminder, if one were needed, of the importance of trade marks in the internet age. The global nature of the world wide web has heightened competition for domain names - either from companies with the same name or from cybersquatters hoping to profit from companies who are slow on their feet.

Ensuring that your company's trade marks are registered is an important safeguard in the event of a dispute. They also of course continue to provide valuable protection in the traditional business sphere.

The introduction of the new TLDs is therefore an opportune time for companies to review their trade mark portfolios, particularly as it is likely that further top-level domains will be introduced in the future.