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2007 - A YEAR OF CHANGE2007 - A YEAR OF CHANGEDevelopments in procedures Developments in procedures

and practices in the UK and practices in the UK

Mike ReynoldsMike ReynoldsPrincipal Hearing Officer Principal Hearing Officer UK Trade Marks RegistryUK Trade Marks Registry

30 March 200730 March 2007

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IssuesIssues Relative grounds for refusal - the Relative grounds for refusal - the

future future Proof of use in oppositions and Proof of use in oppositions and

invalidations invalidations Gowers report Gowers report Spambuster and Special Effects Spambuster and Special Effects

(estoppel) (estoppel) Case law snapshots Case law snapshots

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Relative grounds for refusal Relative grounds for refusal (1)(1)

Some facts and figures Some facts and figures UK CTMO

37k filings in 2005/06 66k filings in 2005/06

550k registered marks 400k registered marks

900k classes 1 million classes

30% of applications face objections on relative grounds

19% of applications face objections on relative grounds

7% fully refused 2% fully refused

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clogging effect of searching two registers clogging effect of searching two registers UK refusing on relative grounds based on UK refusing on relative grounds based on

CTMs which have not been examined on CTMs which have not been examined on relative groundsrelative grounds

objections may be based on CTMs that objections may be based on CTMs that appear to be in conflict with one another or appear to be in conflict with one another or earlier UK trade marksearlier UK trade marks

Registrar enforcing some marks which the Registrar enforcing some marks which the owners could not enforce themselvesowners could not enforce themselves

CTM route being used to avoid UK objections CTM route being used to avoid UK objections

Problems Problems

Relative grounds (2)Relative grounds (2)

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Relative grounds for refusal Relative grounds for refusal (3)(3)

Consultation on future of relative Consultation on future of relative grounds for refusal during 2006grounds for refusal during 2006

Five options put forwardFive options put forward1. status quo1. status quo2. search and cite with notice 2. search and cite with notice 3. search and cite with proof of use3. search and cite with proof of use4. search and notify (applicant only)4. search and notify (applicant only)5. search and notify (applicant and 5. search and notify (applicant and

owners of earlier owners of earlier trade marks) trade marks)

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Relative grounds (4)Relative grounds (4) OutcomeOutcome

decision to cease raising relative grounds decision to cease raising relative grounds objections ex officioobjections ex officio

outcome of consultation in favour of outcome of consultation in favour of system of search and notifysystem of search and notify

notification to go to applicant and owners notification to go to applicant and owners of earlier trade marks (but not all)of earlier trade marks (but not all)

October 2007 implementation date October 2007 implementation date

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Proof of use (1)Proof of use (1) proof of use provision introduced in May 2004proof of use provision introduced in May 2004 applies in oppositions and invalidations where applies in oppositions and invalidations where

the earlier trade mark is over 5 years old at the earlier trade mark is over 5 years old at the relevant timethe relevant time

opponent/applicant for invalidity can be opponent/applicant for invalidity can be called on to show use of the mark(s)called on to show use of the mark(s)

the standard is that of ‘genuine use’ as if the standard is that of ‘genuine use’ as if defending a revocation actiondefending a revocation action

but does but does notnot result in revocation if use is not result in revocation if use is not substantiated substantiated

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Proof of use (2)Proof of use (2) Brings UK into line with CTMOBrings UK into line with CTMO

disputes more related to actual trading disputes more related to actual trading circumstances than notional conflicts on circumstances than notional conflicts on trade marks registerstrade marks registers

can make inter partes actions more complexcan make inter partes actions more complex

opponents need to consider their position opponents need to consider their position carefully before launching an attack carefully before launching an attack

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Gowers reportGowers report Independent review of the Intellectual Property Independent review of the Intellectual Property

framework framework

Commissioned by the Chancellor of the Commissioned by the Chancellor of the ExchequerExchequer

Available through Available through www.hm-treasury.gov.ukwww.hm-treasury.gov.uk websitewebsite

Main changes affecting trade marksMain changes affecting trade marks proposal for fast track application systemproposal for fast track application system call for clear separation of functions between rights call for clear separation of functions between rights

granting and tribunal areasgranting and tribunal areas new name for the UK Office (UKIPO)new name for the UK Office (UKIPO)

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Estoppel – the Spambuster Estoppel – the Spambuster and and

Special Effects casesSpecial Effects cases Do Registry decisions debar parties from pursuing Do Registry decisions debar parties from pursuing

or defending subsequent High Court actions? or defending subsequent High Court actions? SpambusterSpambuster

Registry invalidation action on relative groundRegistry invalidation action on relative ground unsuccessful and no appealunsuccessful and no appeal subsequent High Court action on different groundssubsequent High Court action on different grounds defence that the proceedings were oppressive and defence that the proceedings were oppressive and

vexatiousvexatious cause of action estoppel and abuse of processcause of action estoppel and abuse of process

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Estoppel (2) - Special Estoppel (2) - Special EffectsEffects

Registry opposition proceedings on absolute and Registry opposition proceedings on absolute and relative groundsrelative grounds

again the action failed and there was no appealagain the action failed and there was no appeal

subsequent infringement action in the HC by the subsequent infringement action in the HC by the proprietor proprietor

claim in defence that the registration was invalidclaim in defence that the registration was invalid

HC held that cause of action estoppel applied HC held that cause of action estoppel applied against the defenceagainst the defence

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Estoppel (3) - the profession’s Estoppel (3) - the profession’s concernsconcerns

more complex/expensive proceedings in the more complex/expensive proceedings in the RegistryRegistry

greater use of cross-examination and greater use of cross-examination and disclosure etc disclosure etc

longer hearingslonger hearings undermines role of Registry as low cost and undermines role of Registry as low cost and

expeditious tribunalexpeditious tribunal greater reluctance to opposegreater reluctance to oppose more appealsmore appeals public interest not servedpublic interest not served

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Estoppel (4) - outcome of Estoppel (4) - outcome of appeal to appeal to

Court of AppealCourt of Appeal opposition does not create a cause of actionopposition does not create a cause of action issue estoppel requires a final decision by a court of issue estoppel requires a final decision by a court of

competent jurisdictioncompetent jurisdiction Registry opposition proceedings not final because Registry opposition proceedings not final because

invalidation action is still possibleinvalidation action is still possible generally no abuse of processgenerally no abuse of process but care needed if cross-examination, disclosure etc but care needed if cross-examination, disclosure etc

usedused position on successive invalidations?position on successive invalidations?

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Lawful deception – Lawful deception – the Elizabeth Emanuel casethe Elizabeth Emanuel case

well known designer of wedding wear since 1990well known designer of wedding wear since 1990 in 1997 the company through which Ms Emanuel in 1997 the company through which Ms Emanuel

operated was sold to a third partyoperated was sold to a third party Ms E employed in the business for a very short periodMs E employed in the business for a very short period significant proportion of public mistakenly believed Ms significant proportion of public mistakenly believed Ms

E was still involved in design workE was still involved in design work in 1999 Ms E launched opposition and revocation in 1999 Ms E launched opposition and revocation

actions against the assignee company actions against the assignee company the basis of both actions was deception of the publicthe basis of both actions was deception of the public

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Lawful deception (2)Lawful deception (2) the issue was referred to the European Court who the issue was referred to the European Court who

advised:advised:“…………“…………..a trade mark corresponding to the name of ..a trade mark corresponding to the name of the designer and first manufacturer of the goods the designer and first manufacturer of the goods bearing that mark may not, by reason of that particular bearing that mark may not, by reason of that particular feature alone, be refused registration on the ground feature alone, be refused registration on the ground that it would deceive the public, ……in particular that it would deceive the public, ……in particular where the goodwill associated with that trade mark… where the goodwill associated with that trade mark… has been assigned together with the business making has been assigned together with the business making the goods to which the mark relates.”the goods to which the mark relates.”

thus the assignee’s use even if deceptive was lawful.thus the assignee’s use even if deceptive was lawful. no suggestion of fraudulent conduct on the assignee’s no suggestion of fraudulent conduct on the assignee’s

part.part.

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Shape marks (1) – Shape marks (1) – the Stressless chair the Stressless chair

(O/017/06)(O/017/06)

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Shape marks – the Shape marks – the Stressless chairStressless chair

Objected to by the UK Office as being Objected to by the UK Office as being a functional shapea functional shape devoid of distinctive character because it was devoid of distinctive character because it was

insufficiently different from other such products on insufficiently different from other such products on the market the market

On appeal On appeal functionality objection overturned (the Appointed functionality objection overturned (the Appointed

Person considered “the surplus of form over Person considered “the surplus of form over function to be aesthetically significant”)function to be aesthetically significant”)

lack of distinctiveness objection upheldlack of distinctiveness objection upheld hint that there may have been an objection on the hint that there may have been an objection on the

basis that it was a shape that gave substantial basis that it was a shape that gave substantial value to the goods value to the goods

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Shape marks (2) – Shape marks (2) – the Dyson clear bin (Case the Dyson clear bin (Case

C-321/03)C-321/03)

The marks consist of a transparent bin or collection chamber forming part of The marks consist of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representations.the external surface of a vacuum cleaner as shown in the representations.

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Shape marks - the Dyson Shape marks - the Dyson clear binclear bin mark not actively promoted by the filing date but mark not actively promoted by the filing date but

recognised by consumers as a bagless vacuum cleanerrecognised by consumers as a bagless vacuum cleaner

Dyson had a de facto monopoly at the date of applicationDyson had a de facto monopoly at the date of application

question put to the ECJ as to whether in these question put to the ECJ as to whether in these circumstancescircumstances“is it sufficient, in order for the sign to have acquired a “is it sufficient, in order for the sign to have acquired a distinctive character …that a significant proportion of distinctive character …that a significant proportion of the relevant public has by the date of application for the relevant public has by the date of application for registration come to associate the relevant goods bearing registration come to associate the relevant goods bearing the sign with the applicant and no other manufacturer.”the sign with the applicant and no other manufacturer.”

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Shape marks – the Dyson Shape marks – the Dyson clear binclear bin

ECJ took the view that what the applicant ECJ took the view that what the applicant was seeking to register was a concept (all was seeking to register was a concept (all conceivable shapes of a clear collecting conceivable shapes of a clear collecting bin)bin)

not a signnot a sign not capable of constituting a trade marknot capable of constituting a trade mark

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Shape marks (3) - Shape marks (3) - the sweet wrapper (Case C-the sweet wrapper (Case C-

25/05P)25/05P)

Described as a two-dimensional representation in Described as a two-dimensional representation in perspective of a sweet in a gold coloured wrapper perspective of a sweet in a gold coloured wrapper

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Shape marks – the sweet Shape marks – the sweet wrapperwrapper

not a significant departure from the norms and not a significant departure from the norms and customs of the tradecustoms of the trade

case law on three dimensional shapes to be appliedcase law on three dimensional shapes to be applied

not necessary to give concrete examples of trade not necessary to give concrete examples of trade usage where it is likely to be a matter of common usage where it is likely to be a matter of common knowledgeknowledge

such a mark only likely to be distinctive on use if such a mark only likely to be distinctive on use if “the products which bear it have more than a “the products which bear it have more than a negligible share of the market in the products at negligible share of the market in the products at issue”issue”

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Accepted shape marksAccepted shape marks

No. 2000821 (Class 36 services)No. 2000821 (Class 36 services)

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Confused about confusion?Confused about confusion? Comparison of composite marksComparison of composite marks

Issue – does the replicated element have an Issue – does the replicated element have an independent distinctive role in the composite independent distinctive role in the composite mark? mark?

THOMSON LIFE v LIFETHOMSON LIFE v LIFE(identical goods in the leisure electronics (identical goods in the leisure electronics sector)sector)

ORO/ORO SAIWA v SELEZIONE ORO ORO/ORO SAIWA v SELEZIONE ORO BARILLA BARILLAClass 30 goods Class 30 goods (Selezione Oro = gold selection)(Selezione Oro = gold selection)

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Comparison of composite Comparison of composite marks (2)marks (2) Issues – is the cowhide device descriptive in Issues – is the cowhide device descriptive in

relation to milk and milk products? Case T-153/03relation to milk and milk products? Case T-153/03

vv

Does INEX contribute in a decisive manner?Does INEX contribute in a decisive manner? Conceptual similarity of the (weak?) cowhide Conceptual similarity of the (weak?) cowhide

devices not enough. devices not enough.

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Comparison of composite Comparison of composite marks (3)marks (3)

Issue – is there a clear difference in Issue – is there a clear difference in meaning?meaning?

CARDINAL v CARDINAL PLACECARDINAL v CARDINAL PLACE

Conceptual dissimilarity held on appeal Conceptual dissimilarity held on appeal to be sufficient to distinguish to be sufficient to distinguish

One mark has ecclesiastical One mark has ecclesiastical connotations the other connotations the other geographical/locational geographical/locational

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Comparison of composite Comparison of composite marks (4)marks (4)

Case O/335/00 (2001 R.P.C. Case O/335/00 (2001 R.P.C. 32)32)

v v POLOPOLO

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Comparison of composite Comparison of composite marks (5)marks (5)

Case T-214/04 (2006 E.T.M.R. Case T-214/04 (2006 E.T.M.R. 59)59)

vv

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ANY QUESTIONS?ANY QUESTIONS?