#3612 - Trade Marks 2 Cases - Intellectual Property Law

TRADE MARKS 2

Similarity of Goods

Muhlens v OHIM [2007]

Perfume and clothes are not similar.

Two different but complementary goods are only similar if one is “indispensable or important” for use of the other.

El Corte Ingles [2007] (CFI)

Bags and clothes are similar.

This is because they are sufficiently complementary to be regarded as similar.

Likelihood of Confusion

Ruiz-Picasso v OHIM [2006]

D sought to register French trade mark ‘Picaro’ in relation to vehicles; C, estate of Pablo Picasso, sought to block registration, on grounds that earlier TM ‘Picasso’ already existed in respect of vehicles – and that thus marks and goods were similar, and would cause confusion amongst relevant public. Held:

See notes.

Is true that members of public viewing D’s mark post-purchase would pay far less attention to it than purchaser (and therefore be likely to be confused)

However this does not mean there is confusion

Facts

Relative ground of refusal rejected

Two reasons:

1. Nature of goods means that consumer will inspect them closely before buying

• i.e. goods in question (cars) are highly technological

• thus aural/visual differences are less important

2. Conceptual differences outweigh aural and visual similarities between signs

• Picasso is well known painter, whereas Picaro has no meaning outside Spain

• Reputation of Picasso means consumers will inevitably think of him when looking car

Datacard v Eagle Technologies [2011] (English Case)

C (Datacard) was supplier of printers; owned trade mark ‘DATACARD’. D (Eagle Technologies) was seller of card printers. D used C’s trade mark on its website, and also on labels applied to packaging of printer products sold by D. C sued for infringement of trade mark. Held:

Was infringement under Article 5(1)(b)

On basis of ECJ authority, post-sale confusion suffices to show infringement.

Even if consumer is not confused about origin when purchasing goods on website, may be confused later upon delivery of products

i.e. consumer might not, when buying printer, have any belief at all that that printer is connected to Datacard

but when printer then arrives with ‘DATACARD’ on product label, consumer may only at that point form incorrect belief they are connected to Datacard

Protection of Non-Origin Function

When Does Provision Apply?

Davidoff v Gofkid [2003]

Question was referred to ECJ whether section 5(2) also applied where the good in respect of which earlier and later mark are registered are not similar or identical (despite the wording in Trade Mark Directive itself). Held:

Section also applies to protect reputation of an earlier mark where the later good or service is similar or identical to goods or service for which earlier mark was registered.

Would be bizarre if non-similar goods got wider protection than similar goods

32Red plc v WHG (International) [2011]

C ran online casino called ‘32Red’ which had high reputation. D created website called ‘32Vegas’ which was also an online casino. C sued for infringement. Held:

Is no need for direct evidence of change in economic behaviour as result of similarity.

Here, similarity between two marks mean consumers would be much more prepared to switch allegiance form 32Red to 32Vegas, or to play with 32Vegas in first place, than if there had been no similarity.

Thus there is change in economic behaviour.

Reputation

Hollywood Case [2002]

D sought to register mark ‘HOLLYWOOD’ for tobacco. C, owner of earlier identical mark in relation to chewing gum, opposed registration on grounds this would damage reputation of earlier mark. Held:

Registration of ‘HOLLYWOOD’ for tobacco would harm reputation of C’s trade mark.

I.e. manufacturer of confectionary does not want his products to be associated with those that cause death

Sheimer’s Trade Mark Application [2000]

C not permitted to use mark ‘VISA’ on condoms: this would reflect negatively on VISA card services

Interflora v Marks and Spencers [2011]

Google ran an ‘AdWords’ service, whereby economic operators could pay to have a link to their website com up in event that a certain keyword was entered into search bar. Under this service, advertiser could pay to have his advert featured more prominently upon search of keywords by paying a ‘maximum price per click’.

D, Marks and Spencer, paid to have a link to their flower delivery service come up when people entered term ‘Interflora’. C sued for infringement of its trademark. Relevant issues were whether D’s actions constituted infringement under Article 5(2) of Trade Mark Directive. Held:

Detriment to Distinctive Character

Use of sign identical/similar to an earlier trade mark is detrimental to distinctive character where it turns that mark into a generic term.

However use of sign identical/similar to trade mark in keyword search does not necessarily make that term generic

i.e. provided that average internet user looking at the advert realises that goods being advertised do not originate from trade mark owner, distinctiveness of trade mark has not been reduced

Unfair Advantage

See notes

L’Oreal v Bellure [2007-2011]

D produced 3 “smell-a-likes” of 3 perfumes made by C (L’Oreal). The names of each of the perfumes imitated was protected by a trade mark. C claimed that its trade marks relating to the 3 perfumes were infringed by:

1. D’s packaging, which sought to imitate that of C; however this claim dropped.

2. “Comparison lists” used by D (i.e. lists on the back of packages indicating which of D’s perfumes smelled like which of C’s)

• E.g. “Stitch No 7 smells like Trésor”

Held:

ECJ (2009):

Article 5(1)(a)

See notes.

Facts

In present case, use of trade mark was not descriptive (as in Arsenal FC)

Rather it was for comparative purposes

Thus was used for purpose of advertising

Court of Appeal (2010):

Jacobs LJ

Article 5(1)(a)

“I have real difficulty” in dealing with the communication/advertisement/investment functions

Is nothing in legislation about them

Are conceptually vague and ill-defined

Appears to be that any comparative advertising is banned.

i.e. as it will automatically impinge on advertisement function.

Article 5(2)

Court appears to be saying that where advantage is taken of an earlier trademark, this is automatically unfair.

Thus is no distinction between:

1. Permissible free-riding

2. Impermissible free-riding

   This amounts to pointless monopoly.

Facts

On basis of ECJ’s preliminary judgment:

1. Comparison lists breach Article 5(1)(a)

• As they adversely affect advertising function of C’s mark

2. Comparison lists also breach of Article 5(2)

• As they take advantage of reputation of C’s mark

Infringement

L’Oreal v Ebay [2011]

Various individuals sold unauthorised L’Oreal products on Ebay; were unauthorised as they had been intended for sale outside of EU. Held:

Sale of product bearing a trade mark is only infringement where this is a “commercial activity”

Thus such sales must meet a certain threshold of volume or frequency before they become a commercial activity

If this is not case, sale is simply a private matter

Thus no infringement

Origin Function

Arsenal v Reed [2003] (ECJ)

D sold merchandise from a stall near Arsenal’s football ground; these goods contained a number of Arsenal’s trade marks which were registered for same goods. Was a notice on D’s stall, stating that his goods were not ‘official’ Arsenal merchandise. C sued for infringement under Section 10(1) (identical goods and identical marks). Held:

ECJ

Use of mark is in course of sale of goods to consumers

Thus is not for descriptive purposes

Rather it creates impression of ‘link’ between C and D.

Exclusion notice is irrelevant

Court of Appeal

Is possible for use of a trade mark which is not understood by public to denote origin to be infringement.

This case where origin function of trade mark is liable to be harmed by D’s use.

Thus on facts, is infringement

Is irrelevant that sign is perceived as badge of loyalty and not origin

Adam Opel v Autec [2007] (ECJ)

C, car manufacturer, had trade mark for its logo for cars and toys. D sold remote-controlled scale-models of one of C’s cars, with C’s trade mark on them. C sued for infringement under Article 5(1)(a). Held:

Is no infringement where average consumer does not believe goods come from owner or economically-linked undertaking.

Thus if German consumers do not see D’s use of C’s mark as indicating origin of scale-models, no infringement.

Holterhoff v Freiesleben [2002] (ECJ)

C owned trade mark ‘SPIRIT SUN’ for precious stones. D, a jeweller, promised customers he could cut a diamond in the shape of SPIRIT SUN. However customers in question did not believe that use of trade mark indicated that jewels to be made came from C. C sued for infringement. Held:

Is no infringement where D uses trade mark to denote characteristics of goods, and trade mark is not perceived as a sign of origin

i.e. where use is descriptive

R v Johnstone [2005]

D sold bootlegged CDs with ‘Bon Jovi’ printed on them. ‘Bon Jovi’ was a registered trade mark. Was prosecuted, and in his defence claimed that he had used names not as indication of origin, but to indicate who performed on CDs. Held:

Lord Nicholls

If mark was used exclusively as description of name of performer, is no infringement.

Other Functions

Interflora v Marks and Spencer [2011] (CJEU)

Facts above. Held:

Origin Function vs. Other Functions

**Is NOT case that only trade marks with a reputation are capable of having functions other than that of indicating origin.

Thus act can fall under Article 5(1)(a) or 5(1)(b) where it adversely affects investment/advertising/communication functions of a registered trade mark.

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