Prior to the 1994 Trade Marks Act coming into force, ITMA thought an introductory guide was needed. Together with co-authors Richard Abnett, Adrian Spencer and Jeremy Pennant we produced : UK Trade Marks Act 1994: A Practical Guide. In the Foreword we added the caveat that the new Act would be introducing a number of new concepts and some of our comments in the fullness of time would be proved to be wrong. I am surprised that we were not quite so wide of the mark on a number of key issues. It was not that we were blessed with great prescience, but it struck us that the judiciary and the individuals at the Registry with all their experience and knowledge would not change overnight. After all, a trade mark remained a trade mark; if a mark looked or sounded similar to another for the same or similar goods, then it would be either an infringement or the application for registration would be rejected. Fairly obvious; but these basic tenets are the building blocks of any law on regulating and granting any monopolies in a trade mark.
In fact, looking back on the main issues I would venture to say that we have not seen the type of changes that were being predicted in some quarters. That is hardly surprising. The Trade Marks Act does not exist for the purpose of IP professionals - although some would think that is its only purpose- but trade marks are about trade. The fashions and customers of the users of the systems ultimately dictate the type of names, words, devices that they try to monopolise. Indeed there are two schools of thought. The first are those who take the view that provided they are free to use a word then a registration is no more than mere dressing and the more descriptive that word, the happier they seem to be. The second group is that if they can monopolise any word or device no matter how descriptive or trivial the happier they feel if they can use the trade mark law to protect every aspect of the business. Both these groups at opposite ends of the spectrum have been possibly the most disappointed by the Trade Marks Act and how it has developed.
It was expected that the range of marks that would be registrable was likely to expand. That is the exotics such as shapes, colours, sounds, smells and slogans. It seemed at the time every paper, conference and press release from all and sundry spoke of little else other than trade marks for sounds, smells and shapes. Under the previous Trade Mark Acts some of these types of mark, colours and shapes had been registered. The other type of mark, the quasi- descriptive such as WELDMESH or geographical names such as Yorkshire would now be registrable if it was proved they had acquired distinctiveness. The impression was that there would be no absolute bar as to what could be registered; and the hurdle of registrability was set at a much lower height. There was a period from the Act coming into being and also at a time when the Community Trade Mark Register came on stream when we were seeing a number of marks being accepted with very little distinctiveness. Slowly but surely things started to return to some semblance of normality. The effect of 3(1)(b) “Trade marks which are devoid of distinctive character” started to bite.
The starting point of this review will be the “exotics” i.e. shapes, colours, smells and slogans. We have now seen the Court of First Instance and the European Court of Justice take a conservative view on these. It is clear that such signs are not precluded from being trade marks, e.g. there is no rule, but in the case of smells and sounds the problem is that they need to be represented graphically. See Shield Mark C.283/01. A written description in words of a sound or a chemical formula of a smell is not a graphic representation. The registration of colours alone has fared little better. The ECJ supported the concept that colours are perfectly good trade marks LIBERTEL case C104/01) provided they can be represented graphically and are limited to colour code description, e.g. the Pantone number. Following the ECJ ruling earlier this year in HEIDELBERGER (case C-49/02) colours need to be limited to form. Therefore the hopes of being able to register a single colour, say, a simple square of colour, have been squashed. The registrations that went through in the early days will be tested if and when the owners try to enforce the rights.
The combination marks comprising of shapes and colours, or shapes alone have proved difficult to protect. In the UK we have seen what has happened to the application for the Dyson carpet cleaner, the fate of Philips 3-headed electric razor, and a whole series of cases based around dish-washing tablets. This culminated in the series cases of Proctor & Gamble and Henkle attempted to register the shape and colour of dishwashing tablets.
Even where marks have been used and public opinion surveys show that a particular shape or combination of shapes and colours is well-known, the courts have still displayed a reluctance to say that it is registrable. The recent decision on the opposition involving an application to register the shape and look of the confection which is known by the name VIENETTA suggests that there is still a category of marks that are just as difficult to protect under the 1988 TMA.
In speculating in 1994 on the registrability of slogans, we gave an example of HAVE A BREAK that might now be acceptable whereas hitherto it had been held not to be. We were wrong on that issue. It is not that HAVE A BREAK could not have functioned as a perfectly good trade mark, but the fact is that if it is a slogan then clearly it has to be used without the support of any other words or features that make it distinctive! Indeed, under the TMA 1994 we have seen the court use the expression a “limping trade mark”. It may well be more difficult today to register a slogan and the ECJ and Court of First Instance have given recent decisions on this which probably are the last word on the issue. See REAL PEOPLE REAL SOLUTIONS (2002) ECR II-5179 and more recently the Court of First Instance in MEHR FUR IHR GELD (Case T-28100).
When it came to registrability of ordinary words the expectation was that the quasi-descriptive marks would be more readily accepted. The high water mark for this type of trade mark is the ECJ decision in BABY-DRY (2002) CH.82. We saw the court take the view that BABY-DRY would be registrable because it was a “syntactically unusual juxtaposition of words not a familiar expression in the English language”. Thereafter, this phrase entered into the vocabulary of every trade mark lawyer who would claim that all two word combinations were a lexical invention. There has been some clarification and retreating from that position and the matter has been put into some context with the later decisions in DOUBLEMINT (2004) ETMR 9 and in the case of BIOMILD (case C-265/00). As a consequence possibly BABY-DRY will have less influence on the question of whether a mark is or is not devoid of any distinctive character.
Establishing that a mark has acquired distinctiveness is proving to be every bit as difficult as it was under the previous Act, more so with some category of marks. When we were considering the Guide and what may or may not be registrable we formed a view that not every word could be registrable simply on the basis that it had been used. It followed that Jacob J (as he then was), was rather critical of the Registrar in TREAT (British Sugar v. James Robertson (1196) RPC 287) that use could not always equate to distinctiveness. As a result the Registry changed its approach on evidence of user.
There will always be the argument as to the threshold test on distinctiveness but that will evolve. One of the issues that is outstanding at present is whether or not the UK Registry is out of step with Europe on the registrabilty of surnames and a decision on an application for NICHOLS rejected by the UK Registry is under appeal and a ruling from the ECJ is expected by the end of this year. The opinion of the Advocate General ( case C404/02) suggests that some degree of test should be in place, but not that which the UK has developed.
We were critical that the TMA 1994 gave no clear indication on the protection of marks for retail services. Indeed, it was 6 years before the Registrar was persuaded, as a result of a test case, to accept retail services. This followed the OHIM Second Board of Appeal in the GIACOMELLI SPORT case (2000) ETMR 277 who had decided that, once properly defined, “retail services” can be the subject of a Community registration. We have come full circle in a Registry decision BIG BLUE (unreported decision) on the revocation of trade mark the Hearing Office held that a registration for goods was no longer viable when clearly the proprietor was offering retail services. The Hearing Officer was guided by the court in the case of Euromark Designs Inc. (2000) AU ER D105 (the “Crate & Barrel” case).
In 1994, no-one really expected too many changes on deceptive resemblance and similar goods; the test would rely on the body of case law and acquired knowledge – see the judgement of Laddie J in WAGAMAMMA (1995) FSR 713. The current test as to whether or not one mark is deceptively similar has been to a large extent based on several decisions from the ECJ; and in the Registrar’s guidance as summarised in the Registrar’s current practice (and recently approved by Geoffrey Hobbs as a deputy judge in Electrotron Automatics (2004) EWHC which reads:-
“(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; Sabel BV v. Puma AG, paragraph 22;
(b) the matter must be judged through the eyes of the average consumer of the goods/services in question; Sabel BV v.Puma AG, paragraph 23; who is deemed to be reasonably well informed and reasonably circumspect and observant – but who rarely has the chance to make direct comparisons between marks and who must instead rely upon the imperfect picture of them he has kept in his mind; Lloyd Schufabrick Meyer & Co. GmbH v. Klijsen BV, paragraph 23;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; Sabel BV v. Puma AG, paragraph 23;
(d) the visual, aural and conceptual similarities of the marks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components; Sabel BV v. Puma AG, paragraph 23;
(e) a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods/services and vice versa; Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc., paragraph 17;
(f) there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character either per se or because of the use that has been made of it; Sabel BV v. Puma AG, paragraph 24;
(g) mere association , in the sense that the later mark brings the earlier mark to mind, is not sufficient; Sabel BV v. Puma AG, paragraph 26;
(h) further, the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of associations in the strict sense; Marca Mode CV v. Adidas AG, paragraph 41;
(i) but if the association between the marks causes the public to wrongly believe that the respective goods/services come from the same or economically linked undertakings, there is a likelihood of confusion; Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer, Inc., paragraph 29."
To compare and contrast how far we have progressed, apply the test of 1906, Parker J in the PIANOTIST who said:-
“You must take the two words. You must judge them, both by their look and by their sound. You must consider the nature and kind of customer who would be likely to buy the goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in the normal way as a trade mark for the goods of the respective owner of the marks. If, considering all those circumstances, you come to the conclusion that there will be confusion – that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but there will be a confusion in the minds of the public which will lead to a confusion in the goods – then you may refuse registration, or rather you must refuse registration in that case.”
The new test is more sophisticated but at its very heart not much has changed since 1906 – nearly 100 years ago. One test required taking “all the surrounding circumstances” and the second says that you take a “global view”; is that very much different?
The most difficult case to understand from the standpoint of conflict is the position the ECJ took in CANON (1999 RPC 117; 1999 ETMR). On the issue of similarity of goods, the ECJ said that it depends on the distinctiveness of the mark! That seems to be one of the most eccentric and least helpful decisions of the ECJ. It is one thing to say the more well-known a mark, the wider the scope of protection it should be given – but that should have nothing to do with similarity of goods. From a practical point of view the Registry still takes guidance and support from the test proposed by Jacob J (as he then was) in TREAT. In fact if one were to apply a similar view of the points that Jacob set out and looked at that against the test under the 1938 Act, Jellineck’s application (1946) 63 RPC 59 again one would see more similarities than dissimilarities.
The question which more than any other gave us some cause for concern was what the courts would make of use of a sign in the course of trade. In 1994 we wondered whether a different approach would be taken to that adopted in Mothercare v. Penguin Books (1998) RPC and Unidoor Limited v. Marks & Spencer (COAST TO COAST). It may be that we are no farther forward today than we were then. On the one hand there was a series of cases of Arsenal v. Reed culminating in the Court of Appeal decision which seemed at first glance to say something rather different to the view expressed by the House of Lords in the R v. Johnson case. However, I think the conclusion was Reed did use the name Arsenal as a trade mark and not a badge of allegiance. We had Jacob J and Aldous LJ – saying that it was no longer the test that the sign be used as a trade mark, (see TREAT and Philips) –but that seems to defy common sense. Maybe all of these cases are best viewed from a distance and the latest statement on the law is in Electrotron Automatics. It must now be reasonable to say that if the name or device cannot be seen by the ordinary person as an indication of origin then the use of that name or device is not an infringement of the registration of the same or similar name or device! On the other hand maybe not, it will depend on the facts of the specific case. Who knows?
The guidelines and lessons of the ECJ is that the wording of the Directive – and ultimately the TMA 1994 should not be taken literally – and if a word is clearly not a trade mark indicating origin then maybe it is not an infringement. Who knows?
This leads on to a general point. The UK Court has mused on the value of the home grown provisions and different language of the TMA 1994 compared to the Directive and the benefit that there would have been to have adopted word for word the Directive. We see that where the UK Act in Section 5(3) and 10(3) followed the wording in Article 5(2) – we learn from the ECJ in Adias v.Fitness World (case C-408/01)- that this must be read and applied by tasking the whole of Article 5(1) into account – that is what the Commission intended. The result was the amendment of Sections 5(3) and 10(3) of TMA 1994 in May 2004. It does not do well to look at the wording of the Directive – but the Courts must go to the intentions of the Commission.
The ordinary run-of-the-mill infringement cases showed no dramatic shift in thinking – save CANON. The issues of some of the own name defences have been clarified, although the SCANDECOR (1999) FSR 26 never made its way for a ruling from the ECJ. It is probably now clear that the own name defence will apply to companies provided they adopted the mark in accordance with honest practices. The recent view on this expressed by the court was in WEBMASTER Lewison J (case HC) case 2004 EWCH529. It makes no sense to say that someone out to infringe a trade mark can hide behind the own name defence.
The most obvious change that has had an impact is allowing comparative advertising. If the test is in accordance with “honest industrial practices” the courts have been liberal in the objective view of what is “honest practices”. The high water mark must be British Airways v. Ryanair. It is a difficult test to say that the defendant was taking an objective view and the use that Ryanair was making must have been on the extreme edge of what can be fairly regarded as objective honest practice. However, since that case in October 2000 not much more has really been said on the issue of comparative advertising.
The question we asked ourselves in 1994 was the position of user rights versus registration and how would the defence of use of an earlier right which applies in “particular localities” – Section 11(3). Many felt comforted that earlier user rights would be preserved. It has taken 10 years for this point to be considered in the context of infringement in the UK of a CTM an earlier user lost out to registration – see Compass Publishing BV v. Compass Logistics Ltd (1994) EWHC 520; Laddie J felt considerable sympathy for the Defendant who had traded in the UK for eight years and prior to the CTM and had never heard of the Claimant and there had been no confusion but still lost. A difficult case that will need careful consideration and if applied to all cases then only those who can bring passing-off actions will have the benefit of this defence.
The 1994 Act also introduced new provisions for removing marks from the Register. By and large these have worked well. The interpretation of genuine use and degree of use was considered in the La Mer case (C259/02). The rather exacting test of limiting to the specific goods was used – see Neuberger J in Premier Brands v. Typhoon IPD 23038 and the ESP v. ESB where use on bitter was not considered to be use on beer at large, this is a fine line. The test must provide protection to what the ordinary person would reasonably expect.
The one thing that has been a surprise is the rather exact interpretation that has been given to marks that are substantially the same. The first case to look at this was PENGUIN/PUFFIN United Biscuits v. Asda (1997) RPE513 then one can now see remarkably small changes will have more of an impact and again maybe the high water mark as to what is significant change was considered by the Court of Appeal in the recent Societe Des Produits Nestle v. Mars on the trade mark POLO (2004) EWC. It is clear that if even a limitation would transform a mark from something that was hitherto unregistrable to something that would be registrable that is a significant change that affects the identity of the mark notwithstanding that the actual mark remained unaltered.
Over the last 10 years much has changed but the change has not been quite what some were expecting. To a large extent, industry should be grateful that the change that has been managed because there has been a consistency and quality of decisions. There has been some good work at the Trade Mark Registry no small thanks to Allan James and Mike Knight although others have played important part The role of the Appointed Persons seems to have been a success. The quality of those decisions has helped shape the interpretation of the law. In this respect one only needs to read the decision of Geoffrey Hobbs, Appointed Person in the case of CYCLING IS… which clarified and gave guidance to the way that the decision of the ECJ in BABY-DRY would be applied. Finally during this period of change the high Court has been vital and greatly influenced by Justices Jacob and Laddie.
In conclusion, the 1994 Trade Marks Act as had less impact on our everyday trade mark practices and businesses than the development and expansion of the Madrid Agreement and the internet.
The rules by which oppositions and revocations are conducted have had more of an impact on our day-to-day practice than whether “smells” or “sounds” should be registered. The TMA 1994 was long overdue but it has proved not to be a radical change, but part of a process of the cultural change in the globalisation of business and the recognition of the importance of trade marks to commercial development.
