Lecture Delivered
by Eric Ramage
to the
Institute of Trade Mark Attorneys
(September 2006)
The starting point for my talk is Article 13 of the Trade Marks Directive. This stipulates that where grounds for refusal of a registration or for revocation of the trade mark exists in respect of only some of the goods or services concerned, then revocation should cover those goods or services only.
From this, Geoffrey Hobbs QC sitting as an Appointed Person in Opposition 51174 TM 2210663 CITYBOND extrapolated that when the need for corrective action arises, the list of goods or services covered by a trade mark should be reduced so far as necessary to confine it to goods or services for which the trade mark is fully registerable.
Among the relevant case law are Case C-40/01, Ansul BV vs Ajax Brandbeveiliging which deals with “Genuine Use” Case C-416/04P - “Vitafruit” which deals with the “Nature and composition of goods” and Case T-126/03 Reckitt Benckiser (Espana) SL vs OHIM (the ALADDIN trade mark) that deals with the extent to which use on a particular product may be relied upon to preserve the sub category of goods to which the product concerned belongs.
From the United Kingdom come the 1995 case, Mercury Communications Ltd. V Mercury Interactive (UK) Ltd. 1995 FSR 850 the year 2000 cases of Premier Brands UK Ltd v Typhoon Europe Ltd. 2000 FSR 767 and Minerva Trade Mark 2000 FSR 734 the 2001 case, Decon Laboratories Ltd v Fred Baker Scientific Ltd 2001 RPC 293 the 2002 Court of Appeal case, Thomson Holidays Ltd v Norwegian Cruise Lines Ltd 2002 EWCA Civ. 1828 and the 2004 ANIMAL Trade Mark case 2004 FSR 383.
Ansul tells us what constitutes genuine use. Vita Fruit and Aladdin are both opposition cases, but because they turned on evidence filed to show use in the five years prior to the date of the opposed mark they are useful and both regularly appear in OHIM and UK decisions.
From Vita Fruit we learn that all of the relevant features of the relationship between products should be taken into account, particularly nature of the goods, the intended purpose, method of use, and whether or not they are in competition or complimentary.
The ALADDIN case is particularly interesting. Reckitt & Colman had used ALADDIN in Spain since 1912 for a cotton wadding product impregnated with polish. They used to sell a similar product in the United Kingdom as DURAGLIT, and now sell BRASSO wadding. The registration actually covered “polish for metal”, but OHIM Opposition Division said that the evidence demonstrated use only for cotton
impregnated with a polishing agent, and therefore that the goods were too far removed from those of the application for confusion to exist despite the virtual similarity of the marks. Reckitt (by now Reckitt Benckiser) appealed to the CFI.
The CFI said that the principle behind the requirement to demonstrate use operates to ensure that trade marks which have not been used are not rendered unavailable for others to adopt. However, operation of the principle must not result in the proprietor of the earlier mark being stripped of all protection for goods which although not strictly identical to those in respect of which genuine use has been proved, are not in essence different from them, and belong to a single group which cannot be divided other than in an arbitrary manner.
In short, to paraphrase Professor Annand, who mentioned this case in her decision in OMEGA which I will mention later, “pernickety descriptions” are to be avoided.
The 1995 Mercury Communications case involved an application for summary judgement. Hugh Laddie rejecting the application said that the MERCURY specification was very wide and might have been cut down by a non-use attack. A general claim to computer programmes in particular being thought capable of further limitation. Therefore it could not be said that the Defendant had no defence, and the application for summary judgement was refused.
In the TYPHOO case from 2000, Mr Justice Neuberger suggested that one should not dig too deeply, but should consider the category of the item for which use has been shown. The example he used was to consider whether one restricts a specification for “domestic containers” to “red tea caddies”.
In the MINERVA case from the same year, Mr. Justice Jacob as he then was disagreed with Justice Neuberger’s approach and agreed with Justice Laddie. Because the language for specifications is apt to be wide, it is inevitable that at times one must dig more deeply. A domestic container can be a hat box, a jewellery box, or a plastic thing that you put inside the fridge, and therefore it makes commercial nonsense to retain all goods covered by widely drawn descriptions.
In the DECON LABORATORIES case from 2001, Mr. Justice Pumfrey distinguished Justice Neuberger’s formula because it did not deal with huge classes of goods such as cleaning substances and preparations. He agreed with Justice Jacob that it is inevitable at times to dig deeper.
The definitive UK case is probably the 2002 Court of Appeal decision in Thomson Holidays. Thomson had the trade mark FREESTYLE registered for a range of services including arrangement and booking of travel tours and cruises, and the booking and provision of accommodation and catering services for travellers.
They claimed that Norwegian Cruise Line Limited infringed their trade marks by promoting cruises by reference to FREESTYLE. Norwegian Cruise Line counter-claimed that the trade marks were invalid on grounds of non-use so far as they covered services relating to cruises. The trial judge (David Young, sitting as a deputy judge) said that specific reference to cruises should be omitted; and that the specification should be limited to exclude services in relation to cruises on a cruise ship. He also held that there was no infringement of these restricted registrations. Thomson appealed successfully.
In his decision Lord Justice Aldous reviewed TYPHOO, MINERVA and DECON before concluding that he had no doubt that Justice Pumfrey was correct to reject the approach advocated in TYPHOO. Fairness to a proprietor does not require a wide specification of goods.
The starting point must be for the Court to find as a matter of fact what use has been made of the trade mark. The next task is to decide how those goods for which use has been shown should be described. The difficult bit is to decide what is fair. Lord Justice Aldous took the view that the specification should be limited so as to reflect the circumstances of the particular trade and the way that the public would perceive the use.
The Trial Judge had concluded that cruises in the sense of cruise ship holidays form a distinct category of holiday product, which differs both in kind and customer profile to land based package holiday products such as those offered by Thomson.
Lord Justice Aldous accepted there was ample evidence on which the Judge could come to this conclusion, but even so, that could not form the basis of the Judge’s conclusion that the specifications should be limited to exclude cruises. If the Judge’s reasoning had been right then all other types of holiday that Thomson did not offer under the FREESTYLE name should also have been excluded. Such as for example safari holidays.
At paragraphs 38 and 39 Lord Justice Aldous poses and answers the question “how would the average consumer describe the services offered by Thomson under the FREESTYLE mark”. He said this would be as “package holidays”. That term is a fair description of the use made and therefore his solution was to add to the original specifications words to the effect that the services were all for package holidays, and to revoke all other services within the specifications.
THE UK REGISTRY
How are all these words of guidance being interpreted by the UK Registry? It will be helpful to look at some decisions of Appointed Persons, the WISI case, decided by Geoffrey Hobbs, Professor Annand’s decisions in two of the OMEGA cases, and her decision in TRIDENT.
The WISI Case O-251- 05
In 1960 the German company Wilhem Sihn JR.Kg had registered the word WISI in respect of “electrical and electronic apparatus and instruments included in Class 9”.
On 15th May 2002 the Wireless Ethernet Compatibility Alliance which is now called WI-FI ALLIANCE applied to cancel the mark on the grounds that it had not been brought into genuine use within five years following completion of the registration procedure, or, in the alternative, use had been suspended for an uninterrupted period of five years.
The proprietor replied and claimed to have used WISI in the United Kingdom
“since at least 1960 in relation to electrical and electronic apparatus and instruments, being the goods for which the trade mark is registered in Class 9”.
The pleading gave no particulars of the apparatus or instruments for which the trade mark had been used. It sought retention of the registration for the full specification and made no concession with regard to the possibility of part cancellation. It appears to have been assumed that use within the language of the specification of goods, no matter how broadly described, was sufficient to negate the request for revocation. This stance was reflected in the evidence filed.
On the other hand, once the applicant had seen the proprietor’s Rule 31 (2) evidence it retreated from its position that WISI had not been used at all, and argued that use had been confined to “television transmission and reception apparatus”.
Having reviewed the evidence, Mr. MacGillivray acting for the Registrar gave a decision (O-002-05) on 4th January 2005 that the specification should be restricted to read:
“apparatus and instruments for receiving and transmitting television signals, apparatus and instruments for receiving and transmitting radio signals; apparatus and instruments for satellite receiving systems; fibre optical transmission and receiving apparatus; directional video and audio systems for monitoring and security purposes”.
This decision was appealed. The proprietor also said that the expression “radio signals” should have read “radio frequency signals”, a point with which Mr. Hobbs readily agreed; and that the revocation should not have taken place prior to the date of application for revocation, a point with which Mr. Hobbs did not agree.
In considering whether the Hearing Officer had unduly restricted the specification, Mr. Hobbs said that this called for consideration of the degree of particularity with which an order reducing the scope of a specification should identify and define the goods for which the trade mark is to remain registered. He identified that task as being to reduce the cover of the registration in such a way as to prevent the proprietor from claiming protection in relation to goods of the kind for which there has been no use, and the goods for which protection is to remain in place should be defined with due regard for the principles of legal certainty and proportionality.
They need to be specified in terms that clearly (as a matter of linguist expression), and fairly (as a matter of commercial reality), define the limits within which it would be appropriate to accept that “a likelihood of confusion shall be presumed” in the event of an unauthorised use of an identical sign for identical goods.
In doing so, he reviewed the decisions of Justice Pumfrey in Decon Laboratories, of the Court of Appeal in Thomson Holidays, and of the CFI in the Reckitt Benckiser ALADDIN case. From the latter he concluded that fair protection is to be achieved by identifying and defining, not the particular examples of goods for which there has been genuine use, but the particular categories of goods they should realistically be taken to exemplify. He took this to be entirely consistent with the process envisaged by Justice Pumfrey in DECON, and with normal trade mark practice.
It is not necessary for the purposes of the Nice Agreement to refer to characteristics that may be present or absent in the specified goods. It is normal for registered trade mark protection to be conferred without reference to such matters as the style or quality of the goods of interest to the proprietor. Consequently, Section 46(5) of the Act does not call for a different approach to be adopted when making an order for revocation “in respect of only some of the goods” for which a trade mark is registered.
We already know from POSTKANTOOR (Case C-363/99) that it is not acceptable for goods to be specified for registration “only in so far as the good [concerned] do not possess a particular characteristic”. In the interests of legal certainty the goods for which registration is retained should be identified and defined in positive terms.
It is clear from Thomson Holidays that the terminology of the resulting specification should accord with the perceptions of the average consumer of the goods concerned. That point was further elaborated by Justice Jacob (as he then was) in ANIMAL Trade Mark (2004 FSR 19) when he had said that “the reason for bringing in the public perception….. is because it is the public which uses and relies upon trade marks”.
As Justice Jacob said, quoting TA Blanco White, “three holed razor blades imported from Venezuela” may be an accurate description of goods, but it is not one which an average consumer would pick for trade mark purposes. The consumer would surely say either “razor blades” or simply “razors”.
Much of course depends upon the nature of the goods, whether they are specialist or of a more general nature, and whether there has been use for just one specific item or for a range of goods. The whole exercise is to consist of a value judgement as to an appropriate specification having regard to the use which has been made.
In Mr. Hobbs’ view, the specification formulated by the Hearing Officer defined the goods in terms which did not fully apply the above considerations to the examples of use provided in the evidence. Consequently, the wording of the specification was elaborated to read as follows:
“apparatus and instruments for receiving, transmitting, amplifying, processing and measuring television signals, apparatus and instruments for receiving, transmitting, amplifying, processing and measuring radio frequency signals, apparatus and instruments for satellite receiving systems; fibre optic transmission and receiving apparatus; directional video and audio systems for monitoring and security purposes; parts and fittings for the aforesaid goods”.
Mr. Hobbs commented that it would have been useful for the Hearing Officer to have received detailed submissions from the proprietor as to what a fair specification would have been on the basis of the evidence on file.
The OMEGA case (O-281-05) and OMEGA CONSTELLATION (Case O-282-05).
These are a pair of cases decided by Mr. Landau, and appealed to Professor Annand. Both of Professor Annand’s decisions are dated 17th October 2005, but the facts and issues are somewhat different.
In both cases Omega Engineering Inc. applied to revoke the registrations on the grounds that the respective trade marks had not been put to genuine use in the United Kingdom for goods in Class 14 except “wrist watches and parts and fittings therefor”.
I will consider the OMEGA case first. The proprietor partially surrendered various goods but attempted to maintain
“jewellery; horological and chronometric instruments; parts and fittings therefor”.
The Hearing Officer perceived the issue in dispute to be whether there had been genuine use in relation to clocks and jewellery. He stated in his decision (O-007-05) that therefore he considered only the evidence relating to clocks and jewellery. He noted that much of the evidence concerned wrist watches for which use had been conceded. One of the proprietor’s complaints was that the Hearing Officer thereby ignored the use shown in evidence for “jewellery watches”. In any event it was clear that the proprietor was defending a wider registration than that contemplated by the Hearing Officer.
Relying on another decision of Professor Annand involving the same parties (Case O-393-03), the Hearing Officer restricted the specification to read:
“Watches and jewel-watches; all being made of precious metals or imitations of precious metals; watches and jewel-watches; parts and fittings for all the aforesaid goods”.
The proprietor appealed claiming entitlement to retain “jewellery; horological and chronometric instruments; parts and fittings therefor”.
Relying on evidence that Professor Annand allowed to be filed on appeal, she held that the proprietor succeeded in providing genuine use of the mark in relation to clocks.
As to the proprietor’s claim to retain “horological and chronometric instruments” the Oxford English Reference Dictionary provides the following definitions:
(a)
Horology, adj, horological - the art of measuring time or making clocks,
watches, etc; the study of this
(b)
Chronometric, adj, chronometric – the science of accurate time measurement
Professor Annand had already found that the proprietor had shown genuine use for clocks. It had been conceded that there had been genuine use of the mark in relation to wrist watches. The Hearing Officer had not taken into account the proprietor’s evidence relating to watches and parts and fittings. Had he done so he would have uncovered numerous references in the evidence to various types of time pieces including chronometers and chronographs.
In conclusion, Professor Annand took the view that the proprietor had shown use of the mark on the main items that the public would perceive as falling within the description “horological and chronometric instruments” and that this is a fair specification having regard to the use that had been made.
The position with regard to Omega’s claim to have sold jewellery is somewhat different. In an earlier decision (Case O-393-03), Professor Annand had dealt with the problem whether watches encrusted with precious stones could be classed as jewellery. Although she thought that they could, she questioned what would be a fair specification bearing in mind that here, Omega had shown use of the mark in relation only to such watches. Omega maintained that use in relation to heavily jewelled watches or “watches made of precious metal” is use in relation to jewellery. Professor Annand thought they had succeeded only in proving use for “Jewellery watches”. (Note there is no comma here between the words, Jewellery appearing as an adjective qualifying the claim to watches).
There was also a subsidiary question concerning whether Omega had been used on pins being items of jewellery, but that primarily was to do with a question of sales.
In the final analysis, Professor Annand’s view was that an appropriate specification for the use made is:
“jewellery watches and pins; horological and chronometric instruments; parts and fittings therefor”.
Again take note that the word jewellery is used as an adjective qualifying the type of watches.
The position with OMEGA CONSTELLATION, was a bit different, much of the appeal being take up with an application to introduce fresh evidence, genuine use, and whether use was in a form that did not alter the distinctive character of the mark as registered. The relevant issue here, being the question whether “horological instruments; parts and fittings therefor” was a fair description of the use that had been shown or conceded of OMEGA CONSTELLATION.
The TRIDENT case (O-053-05)
The third decision I want to mention is the TRIDENT case, being another appeal to Professor Annand, this time from a decision of Mr. Salthouse. Dunlop Tyres Ltd. owned the TRIDENT trade mark covering:
“tyres for land vehicles; inner tubes and valves, all for the aforesaid tyres; all included in Class 12”
Before Mr. Salthouse, much had been made of whether TRIDENT tyres were specifically intended for taxis. The Applicant for rectification had been selling tyres particularly suited for classic cars under the TRIDENT name. Their witness contended that Dunlop made only one size of tyre under the TRIDENT name which he said was suitable only for taxis. He provided a photograph of a TRIDENT tyre manufactured by Dunlop which showed the word TRIDENT in large letters with the words “provincial taxi” in smaller print.
