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TRADE MARK TRADE MARK PROTECTION PROTECTION

IN THE UKIN THE UK

Mike ReynoldsMike Reynolds

Principal Hearing Officer Principal Hearing Officer

UK Trade Marks RegistryUK Trade Marks Registry

24 February 200624 February 2006

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ROUTES INTO THE UKROUTES INTO THE UK

Application to UK Trade Marks Application to UK Trade Marks RegistryRegistry

Application to the European Application to the European Community Trade Mark Office (CTMO)Community Trade Mark Office (CTMO)

Plus …..Plus ….. Designating the UK through the Designating the UK through the

Madrid ProtocolMadrid Protocol Protection in the UK through the Protection in the UK through the

CTMO/Madrid Protocol linkCTMO/Madrid Protocol link

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WHATWHAT DOES THE CTM ROUTE OFFER??

a single application covers 25 countriesa single application covers 25 countries applications can be in any of 20 languagesapplications can be in any of 20 languages a unitary righta unitary right examination only on absolute groundsexamination only on absolute grounds relative grounds left to opposition or relative grounds left to opposition or

invalidityinvalidity applicants notified of potentially applicants notified of potentially

conflicting CTM marks (and some national conflicting CTM marks (and some national marks)marks)

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IN CONTRAST….IN CONTRAST….

UK still examines on relative as UK still examines on relative as well as absolute groundswell as absolute grounds

UK search covers :UK search covers :

UK registerUK register 515,853 marks 515,853 marks

(August 2005)(August 2005)

CTM registerCTM register 294,118 marks294,118 marks

(November 2005)(November 2005)

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CONSEQUENCES FOR UKCONSEQUENCES FOR UK

increasingly difficult to sustain UK systincreasingly difficult to sustain UK systemem

blocking effect of searching two registblocking effect of searching two registersers

difficult to explain to usersdifficult to explain to users(increasingly SMEs)(increasingly SMEs)

UK considering options for changesUK considering options for changes

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POSSIBLE OUTCOMEPOSSIBLE OUTCOME

something closer to the CTM systemsomething closer to the CTM system a TM registration system driven bya TM registration system driven by

circumstances in the marketplacecircumstances in the marketplace rather than notional conflicts on TM rather than notional conflicts on TM

registersregisters already introduced proof of use in already introduced proof of use in

oppositions (where the earlier trade mark oppositions (where the earlier trade mark has been on the register for five years) andhas been on the register for five years) and

an optional cooling-off periodan optional cooling-off period outcome of UK review should be known outcome of UK review should be known

later this yearlater this year

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THE ‘HAVE A BREAK’ CASE THE ‘HAVE A BREAK’ CASE (1)(1)

mark used as part of the sloganmark used as part of the slogan‘‘Have a break …. Have a Kit Kat’Have a break …. Have a Kit Kat’

the European Court was askedthe European Court was asked““Whether the distinctive character of Whether the distinctive character of

a mark….a mark…. may be acquired following or in c may be acquired following or in consequence onsequence of the use of that mark as pa of the use of that mark as part of or inrt of or in conjunction with conjunction with another another mark”mark”

and answered – yes in principleand answered – yes in principleSociete des Produits Nestle v Mars UK LtdSociete des Produits Nestle v Mars UK Ltd Case C – 353/03 2006 FS Case C – 353/03 2006 FSR 2R 2

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HAVE A BREAK (2)HAVE A BREAK (2)

The answer in any given case is likely to depeThe answer in any given case is likely to depend on nd on the strength of the objectionthe strength of the objection the evidence of usethe evidence of use the ‘swamping’ effect of the other elementthe ‘swamping’ effect of the other element

(s) of the mark(s) of the mark the presentation of the mark (if not used on its the presentation of the mark (if not used on its

own)own) whether the public relies on the markwhether the public relies on the mark

(not merely associates it with the proprietor)(not merely associates it with the proprietor) the key is reliance not mere recognitionthe key is reliance not mere recognition

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HAVE A BREAK (3)HAVE A BREAK (3)

Some refusals of slogan marks where Some refusals of slogan marks where statements of grounds can be found on statements of grounds can be found on the UK Patent Office website :the UK Patent Office website :

YOU WON’T BELIEVE YOUR EYESYOU WON’T BELIEVE YOUR EYES– – for a range of chocolate and confectionery for a range of chocolate and confectionery

itemsitems

WHERE PEOPLE MEET PEOPLE MEET PEOPLE WHERE PEOPLE MEET PEOPLE MEET PEOPLE – – for café and restaurant servicesfor café and restaurant services

ABSOLUTE PURITY VISIBLE RESULTS ABSOLUTE PURITY VISIBLE RESULTS – – for a range of cosmetic itemsfor a range of cosmetic items

MAKING PROPERTY WORK MAKING PROPERTY WORK – – for a wide range of property and related for a wide range of property and related

servicesservices

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RETAIL SERVICES RETAIL SERVICES – WHERE DO WE STAND?– WHERE DO WE STAND?

ECJ has confirmed registrability of ‘retail serECJ has confirmed registrability of ‘retail services’vices’

subject to applicant specifying the goods or tysubject to applicant specifying the goods or type of goodspe of goodse.g. retail services connected with clothing or e.g. retail services connected with clothing or electrical goodselectrical goods

descriptions such as department store services descriptions such as department store services no longer acceptable without a listing of goods no longer acceptable without a listing of goods areasareasPraktiker Bau-und Heimwerkermarkte AGPraktiker Bau-und Heimwerkermarkte AG – Case C-418/02 – Case C-418/02

do you need a goods or retail services registratdo you need a goods or retail services registration or both?ion or both?

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RETAIL SERVICES (2)RETAIL SERVICES (2)

How should conflicts between goods How should conflicts between goods and services be dealt with?and services be dealt with?

ECJ has not yet answered this questionECJ has not yet answered this questionAdvocate-General’s adviceAdvocate-General’s advice

confusion is improbableconfusion is improbable save in particular circumstancessave in particular circumstances e.g. the marks are identical or nearly so e.g. the marks are identical or nearly so

and the mark is well established on the and the mark is well established on the marketmarket

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EXCLUSIONS EXCLUSIONS – HAVE WE LOST A USEFUL – HAVE WE LOST A USEFUL

TOOL?TOOL?

In case C-363/99 In case C-363/99 PostkantoorPostkantoor the ECJ has sai the ECJ has said :d :

“…“…. Where registration is applied for in respect . Where registration is applied for in respect of particular goods or services, it cannot be permiof particular goods or services, it cannot be permitted that the competent authority registers the matted that the competent authority registers the mark only in so far as the goods or services concernerk only in so far as the goods or services concerned do not possess a particular characteristic.d do not possess a particular characteristic.Such a practice would lead to legal uncertainty as Such a practice would lead to legal uncertainty as to the extent of the protection afforded by the mato the extent of the protection afforded by the mark”.rk”.

Exclusions do not go into the marketplace.Exclusions do not go into the marketplace. So other traders would be left in doubt as tSo other traders would be left in doubt as t

o the protection afforded.o the protection afforded.

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EXCLUSIONS (2)EXCLUSIONS (2)

UK Appointed Person’s interpretation of UK Appointed Person’s interpretation of PostkPostkantoorantoor : :

McQueen Clothing Company McQueen Clothing Company v v Alexander McQueenAlexander McQueen (BL O-120-04)(BL O-120-04)

Clothing could not be limited by “… not including items Clothing could not be limited by “… not including items of haute couture”of haute couture”

Incompatible with the comments on legal certainty in the Incompatible with the comments on legal certainty in the PostkantoorPostkantoor judgment judgment

““appear to … prevent the applicant from identifyinappear to … prevent the applicant from identifying the goods of interest to him negatively, by refereg the goods of interest to him negatively, by reference to the absence of attributes such as those (whnce to the absence of attributes such as those (whatever they might truly be) of haute couture.”atever they might truly be) of haute couture.”

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EXCLUSIONS (3)EXCLUSIONS (3)

UK Appointed Person’s interpretation of UK Appointed Person’s interpretation of PostkantoorPostkantoor : :

SVM Asset Management Ltd SVM Asset Management Ltd v v Merlin Biosciences Merlin Biosciences LtdLtd (BL O-043-05)(BL O-043-05)Financial services … “but not including the proviFinancial services … “but not including the provision of any such services to the pharmaceutical, bision of any such services to the pharmaceutical, biotechnological and bioscientific sectors”otechnological and bioscientific sectors”

Sufficiently certain : Sufficiently certain : PostkantoorPostkantoor compliant compliant Noted : services can be partly defined by the recipiNoted : services can be partly defined by the recipi

ent (unlike goods)ent (unlike goods) Not an exclusion of a characteristic of the servicesNot an exclusion of a characteristic of the services

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EXCLUSIONS (4)EXCLUSIONS (4)

Current UK practiceCurrent UK practice exclusion of specific goods allowedexclusion of specific goods allowed

e.g. electronic apparatus but not including e.g. electronic apparatus but not including computerscomputers

exclusion of sub-categories of goods allowedexclusion of sub-categories of goods allowede.g. engines but not including marine enginese.g. engines but not including marine engines

exclusions of characteristics of goods not exclusions of characteristics of goods not allowedallowede.g. shirts but not including red shirtse.g. shirts but not including red shirts

positive limitations preferredpositive limitations preferred some flexibility where an exclusion is to some flexibility where an exclusion is to

overcome a cite overcome a cite (but care advised in (but care advised in framing agreements between parties)framing agreements between parties)

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COLOUR MARKS (1)COLOUR MARKS (1)

The ECJ has held in The ECJ has held in LibertelLibertel, Case C-104/0, Case C-104/01 that :1 that :““A colour A colour per seper se, not spatially delimited, ma, not spatially delimited, ma

y, in respect of certain goods and services, y, in respect of certain goods and services, have a distinctive character provided that, have a distinctive character provided that, iinter alianter alia, it may be represented graphically , it may be represented graphically in a way that is clear, precise, self-containein a way that is clear, precise, self-contained, easily accessible, intelligible, durable and, easily accessible, intelligible, durable and objective.”d objective.”

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COLOUR MARKS (2)COLOUR MARKS (2)

Where colour combinations are applied Where colour combinations are applied for in the abstract the ECJ has introducfor in the abstract the ECJ has introduced an additional requirement ofed an additional requirement of“…“…. a systematic arrangement associating t. a systematic arrangement associating t

he colours concerned in a predetermined he colours concerned in a predetermined and uniform way.”and uniform way.”

(Heidelberger Bauchemie GmbH, Case C-49/02)(Heidelberger Bauchemie GmbH, Case C-49/02)

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COLOUR MARKS (3)COLOUR MARKS (3)

ExampleExample

(No. 2156077)(No. 2156077)

““The mark consists of the colours yellow, blThe mark consists of the colours yellow, black, red and white, in stripes as shown in the ack, red and white, in stripes as shown in the application ….”application ….”

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SURNAMES SURNAMES – LIFE AFTER NICHOLS– LIFE AFTER NICHOLS

In In NicholsNichols, Case C-404/02, the ECJ has said , Case C-404/02, the ECJ has said that :that :

stricter general criteria cannot be applied stricter general criteria cannot be applied based on e.g. the number of entries in based on e.g. the number of entries in telephone directoriestelephone directories

it must be a case specific assessmentit must be a case specific assessment there is no need to deny the first applicant there is no need to deny the first applicant

in the interest of protecting third partiesin the interest of protecting third parties

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SURNAMES (2)SURNAMES (2)

But it is permissible to take account of :But it is permissible to take account of : the commonness of the surnamethe commonness of the surname the extent to which surnames are used to the extent to which surnames are used to

designate origin in the market sector in designate origin in the market sector in question (surnames are, for instance, question (surnames are, for instance, commonly used in the clothing trade and commonly used in the clothing trade and the professions)the professions)

the extent to which full names as opposed the extent to which full names as opposed to simply surnames are usedto simply surnames are used

the number of traders engaged in the the number of traders engaged in the particular sectorparticular sector

ProvidingProviding such tests form part of a case such tests form part of a case specific assessmentspecific assessment

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RELATIVE GROUNDS (1)RELATIVE GROUNDS (1)

Some recent cases on comparison of maSome recent cases on comparison of marksrks

Earlier trade markEarlier trade mark Applied for markApplied for markLIFELIFE THOMSON LIFETHOMSON LIFE

(Case C-120/04)(Case C-120/04)WESTWEST WESTLIFEWESTLIFE

(Case T-22/04)(Case T-22/04)

POLOPOLO 10 ROYAL BERKSH10 ROYAL BERKSHIRE IRE POLO CLUBPOLO CLUB(2001 RPC 32)(2001 RPC 32)

CARDINALCARDINAL CARDINAL PLACECARDINAL PLACE(O/339/04)(O/339/04)

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RELATIVE GROUNDS (2)RELATIVE GROUNDS (2)

Points arising from these cases :Points arising from these cases : assess the distinctive and dominant parts of the assess the distinctive and dominant parts of the

marksmarks consider whether distinctiveness is evenly consider whether distinctiveness is evenly

distributeddistributed the replicated/conflicting element does not need the replicated/conflicting element does not need

to be dominant ….to be dominant …. ……. but, if it is not, consider whether it has an . but, if it is not, consider whether it has an

independent distinctive role in the composite independent distinctive role in the composite markmark

consider the visual, aural and conceptual positionconsider the visual, aural and conceptual position Allow for indirect as well a direct confusionAllow for indirect as well a direct confusion

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ANY QUESTIONS?ANY QUESTIONS?