accountant .agency.amazon .baby .beer .business.caravan .chanel ...

Consistency is
needed at OHIM
Jonathan Clegg p10
Budweiser
in the UK
Kirsten Gilbert p16
ITMA
RevIew
The journal of the Institute of Trade Mark Attorneys
.ACCOUNTANT .AGENCY .AMAZON .BABY
.BEER .BUSINESS .CARAVAN .CHANEL .COOL
.DATING .DOG .DOT .EARTH .ENGINEERING
.EXTRASPACE .FAIL .FILM .FOUNDATION
.GAY .GOODHANDS .GURU .HAMBURG .HELP
.HYATT .IMAMAT .INDIANS .JCB .JOY .JUNIPER
.KIDS .KOSHER .KYOTO .LAMBORGHINI
.LIAISON .LOL .MAN .MEME .MONSTER
.NETAPORTER .NEwS .NOw .OLDNAVY
.OSAKA .OTT .PANASONIC .PHONE .PwC
.RODEO .RUN .SALE .SEXY .STAPLES .THEATRE
.TRANSFORMERS .TUNES .ULTRABOOK
.UNICORN .UNIVERSITY .VANGUARD .VEGAS
.VERISIGN .wANG .wEATHERCHANNEL .wOw
.XBOX .XFINITY .XPERIA .YELLOwPAGES .YOU
.YUN .ZARA .ZERO .ZULU
Plus
IP Translator:
words of warning
Imogen Wiseman p18
Will trade mark professionals rise to the challenge of the
new top-level domains, and who has applied so far? p12
Media Watch p6 Summer Reception p9
Recruitment round table p24 Events p42
Malaysia’s
year in marks
Geetha K p21
Issue 396 September 2012 itma.org.uk

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New starts are
on the agenda
his is the back-to-school time of year, when many people begin a new course, school
T or college. For those who are starting a new job or thinking about recruitment, our
Q&A with recruitment professionals will be a very interesting read. Meanwhile, the IP
Translator decision from the Court of Justice of the EU means that all our working
lives are beginning slightly anew; Imogen Wiseman, Chair of the Law & Practice
Committee, gives her excellent analysis in this issue. In addition, Jonathan Clegg has
written an OHIM update, following his recent evening meeting lecture, and the latest
stages in Budweiser are reported by Kirsten Gilbert, who recently held a webinar on
this topic, while Nick Wood kindly outlines some of the latest moves on gTLDs.
I hope to see you at our Birmingham seminar in a few weeks’ time, and six months
from now at our Spring Conference in London on 20 March. Buy your 20ı3 diary now
and mark the date!
Yours
Catherine Wolfe
ITMA President
In this issue
04 ITMA Business member benefits, moves, media Watch and more
09 Summer Reception Photos from this popular mid-year gathering
10 OHIM update Jonathan Clegg examines an active year at the european office
12 New gTLDs Who’s rising to the challenge? Nick Wood has the answer
16 Bud in the UK Kirsten Gilbert considers the impact of a battle of the beers
18 IP Translator Some words of warning from Imogen Wiseman
21 Malaysia Geetha K reflects on some key decisions related to the country’s marks
24 What’s on the horizon? experts offer answers on trade mark recruitment
29 Familiar form falls short robert Cumming explains why Lindt’s bunny isn’t a Ctm
30 Smooth sailing for Botox beauty brand beats Ctm challengers. by Kate Swaine
32 No light for Universal Its invented term is now common parlance, says Nicole Giblin
33 Common flavour Olive marks found too similar, writes richard burton
34 War of words Anne Wong reminds us of the need to choose terms with care
36 Program problem edwin Coe authors review a recent ruling on software protection
38 Crocodilio lacks force Despite the AP going back to basics. by Philippa Caddick
40 Gene Signature Case highlights question of applicant intention, says emma reeve
41 The Feel Good factor Context was crucial in this case, as Peter Vaughan explains
42 Events Forthcoming diary dates and events of interest for ItmA members
ITMA SePtember 2012
ItmA contacts
General enquiries
ItmA Office, 5th Floor, Outer temple,
222-225 Strand, London WC2r 1bA
email: tm@itma.org.uk
tel: 020 7101 6090
Committee chairs
General Purpose & Finance:
maggie ramage,
maggie@ramage.co.uk
Programme: Katie Cameron,
kcameron@jenkins.eu
Book: mark Hiddleston,
m.hiddleston@elkfife.co.uk
ITMA Review: tania Clark,
tclark@withersrogers.com
Law & Practice: Imogen Wiseman,
i.wiseman@cleveland-ip.com
Public Relations & Communications:
James Setchell, james@ramage.co.uk
Education & Training: Sanjay Kapur,
sanjay.kapur@potterclarkson.com
Designs: Chris mcLeod,
chris.mcleod@ssd.com
Trade Mark Administrators Course:
richard Goddard,
richard.goddard2@uk.bp.com
Published on behalf of ITMA by:
think, the Pall mall Deposit, 124-128
barlby road, London W10 6bL
tel: 020 8962 3020
www.thinkpublishing.co.uk
Editor: Caitlin mackesy Davies,
caitlin@thinkpublishing.co.uk
Advertising: Dalia Dawood,
dalia.dawood@thinkpublishing.co.uk
Account director: Sam Gallagher
Publisher: Ian mcAuliffe
ITMA Review
Review content is provided by
members on a voluntary basis, and
reader suggestions and contributions
are welcome. If you would like to
contribute an article to a future issue,
please contact tania Clark by email
at tclark@withersrogers.com and
Caitlin mackesy Davies at
caitlin@thinkpublishing.co.uk.
the views expressed in the articles
in the Review and at any ItmA talk
or event are personal to the authors,
and do not necessarily represent the
views of the Institute. ItmA makes
no representations nor warranties
of any kind about the accuracy of the
information contained in the articles,
talks or events.
© ItmA 2012
03 3

404
itma.org.uk September 2012
business
ITMA
Chief Executive’s Bulletin
We hope you had a productive summer, and that those
in London have weathered the Olympic period well.
Here’s a little about what we’ve been doing here at HQ
IP Translator
Around the cyber-lanes and cul-de-sacs
of the internet, and on the street corners
of the IP community, the decision from
the Court of Justice of the EU (CJEU)
in respect of the IP TRANSLATOR case
has been under discussion (and in the
ITMA Review also). ITMA issued a
statement to welcome the decision,
which provides greater clarity, and, as
reported, the OHIM was quick to issue
a response and change to practice with
Communication Nº 2/ı2, issued on 20
June. The UKIPO has been considering
the impact on UK practice and a
Practice Amendment Notice may be
issued shortly. However, the decision
from the CJEU is not likely to have
brought an end to matters. ITMA will
try to keep you up to date with any
developments on this important matter
for the IP practitioner and for businesses
inside and outside the EU.
Regulation
Alternative business structures are
increasingly real, and something that
firms, partners and the membership at
large should be aware of and know more
about. IPReg is applying to become a
licensing authority and has launched
a consultation on the matter. This closes
on ı7 September and we encourage
members to respond.
Commercial Skills
ITMA President Catherine Wolfe
reported in her inaugural speech the
desire to progress the education and
training of non-core skills among the
profession. It has since been termed
Commercial Skills and the aim is to
enable professionals to develop areas
that are part of their regular work,
but not necessarily a formal part of
traditional IP training. ITMA started
the ball rolling by offering a series of
webinars to ITMA and CIPA members,
which looked at various marketing
elements. In addition, ITMA has looked
at the possibility of producing sessions
that focus on accounting and finance.
ITMA hopes to make these available
before the end of the year.
Stays of proceedings
Several practitioners have raised
concerns about the implementation
of the UKIPO’s Tribunal Practice
Notice 2/20ıı, which clarified its policy
on stays of proceedings while parties
negotiate settlement. In particular, that
stays are being refused even though the
parties are genuinely attempting to settle.
The Law and Practice Committee
has been discussing these concerns with
the UKIPO and is interested in
hearing from practitioners who
feel that their requests have been
unreasonably refused, so that these
can be presented to the UKIPO.
ITMA is interested in all your cases,
but particularly those where first or
second requests for stays have been
refused. If you have any such cases,
please email details to keven@itma.org.
uk. All cases will be kept confidential
and will only be shared with the
UKIPO as possible evidence.
British Brands
Group – research
ITMA was invited to and attended the
launch of an interesting report by the
British Brands Group (BBG) entitled
Unwrapped – The hidden power of
packaging, which looks at three areas:
Packaging in a market economy –
a study by Norwich Business School
on the consumer, competition and
economic importance of packaging.
The effect of branding on consumer
choice – original consumer research
from Mountainview Learning on the
effect of changes to the size of branding
on consumer behaviour and the
effect where choices include packs
of similar design.
Confusion, heuristics and the
consumer – a report by Speechly
Bircham LLP exploring how consumers
use mental shortcuts (heuristics) when
shopping and how these heuristics may

e misappropriated. It explores how the
courts assess whether confusion may arise
and how new research tools may lead to
quantifiable and more predictable results.
The full reports, along with a
summary, can be found on the BBG
website - britishbrandsgroup.org.uk/
pages/packaging. Well worth a read.
Autumn Seminar
Building on the success of previous
years, ITMA is again running a
one-day seminar in the autumn.
This year’s event will be held on
ıı October at the Hyatt Regency,
Birmingham. The presentations
and discussions will focus on a general
theme of “Progress, problems and
avoiding the gaps – the OHIM and
WIPO systems after ı5 years”.
Responses to consultations
ITMA filed two official responses
that you may wish to read. The first
response contained comments on
the discussion paper issued by the
UKIPO entitled From Ideas to
Growth: Helping SMEs get value
from their Intellectual Property.
In general, ITMA supported
the ideas presented in the paper,
but highlighted some areas where
it was felt caution needed to be taken.
Robert Ackroyd of WP Thompson reports
on how ITMA’s team performed:
16 May 2012, CIPA-ITMA beat Defra by
32 runs: CIPA-ItmA 105-7 (Hull 28*,
Duffy 15) (20.0 overs); Defra 73 a/o
(Lumsden 4-7, Jolly 2-30) (19.0 overs).
Some controlled bowling put Defra under
pressure early on, and as the required run rate
ramped up, the wickets fell. Stuart Lumsden was
bowling accurately and was rewarded with four
wickets for seven runs. Chris Milton also bowled
economically, with six runs from his four overs.
22 May 2012, against the Science
Museum, abandoned due to bad weather.
31 May 2012, CIPA-ITMA beat the
Institute of Child Health (ICH) by 108
runs: CIPA-ItmA 192-5 (Wilson 31*,
Lumsden 29*) (20.0 overs); ICH 74 a/o
(Spurr 3-6, Lumsden 2-5) (14.1 overs).
A fine performance posted a total of
192 for 5 at the end of the 20 overs.
Notable performances included Justin
Wilson scoring 31 not out and James
Shearman with the first golden duck.
7 and 12 June 2012, against
ICR and Thomson Reuters,
abandoned due to bad weather.
ITMA encouraged the UKIPO to
do more to support and promote
the use of professional technical advice
and to recognise that consumers
need to be aware of the availability
and benefit of this professional
advice, at an early stage, particularly
before it is too late.
The second response contained
comments on the consultation by
the Department of Health entitled
Standardised Packaging of Tobacco
Products. The main point in this
response stated that ITMA was
nonpartisan on the generality of
plain packaging per se, but if the
Secretary of State for Health were
to decide to make changes to the
present range of appearances of
tobacco products, ITMA would
urge him to use mechanisms
that do not affect trade mark
law to deliver those objectives.
The responses can be found in the
secure members’ area of the ITMA
website, in the library section, filed
under “official responses”.
Keven Bader
Chief Executive
This is an edited version of the bulletin
sent to members on 20 July 2012.
Season summary – CIPA-ITMA Cricket Club
21 June 2012, CIPA-ITMA beat
Transport for London (TfL)/Docklands
Light Railway (DLR) by 116 runs:
CIPA-ItmA 181-3 (milton 30*, Spurr 30*)
(20.0 overs); tfL/DLr 65 a/o (Lumsden
4-3, Flint 2-17) (12.1 overs).
CIPA-ITMA batted first, and after an uncertain
start due to Jake Flint getting another golden
duck, the team put on 164 runs for the second
wicket. This stand included two maximums (by
hitting a 6 when on 24) by Chris Milton and Andy
Spurr (from just 9 balls). Roger Lush and Stuart
Lumsden managed to surpass the 25 retirement
level, bringing up 182 for 3. The game ended with
Heston Orchard becoming the second player this
year to have a 100 per cent strike rate.
26 June 2012, CIPA-ITMA beat Carpmaels
& Ransford by 116 runs: CIPA-ItmA 185-5
(Shearman 30*, Lindsey 26*) (20.0 overs);
Carpmaels & ransford 91 a/o (milton 3-8,
Jolly 3-18) (18.2 overs).
A great start from the Lindsey family had
the run rate over 12 with ten overs
down. This slowed towards the end,
but a great 185 for 5 was posted.
3 and 10 July 2012 against
BAT and The Times were
both abandoned due to
inclement weather.
ITMA bUSINeSS
Meetings and
party venues
Member
benefits
If you’re looking at where to hold
your next meeting or this year’s office
Christmas party, let IP Benefits Plus
help. The Venue Team is a wellrespected
and highly creative venuefinding
agency. They can arrange
anything from one-to-one meetings
to dinner dances for more than 1,000
delegates. The FREE (to you) venuefinding
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next event is a great success. What’s
more, their cost savings are backed
with a price promise, meaning you
will be getting the best price available,
without the need to shop around.
Venues include Hilton, Ramada Jarvis,
Marriott, De Vere venues and more.
For more information, visit IP
Benefits Plus via itma.org.uk
Terms and conditions apply. See website
for further details. IP Benefits Plus is
managed on behalf of ITMA by Parliament
Hill Limited of 3rd Floor, 127 Cheapside,
London EC2V 6BT. Neither are part
of the same group as a provider.
Calling all litigators
Judge Birss QC has kindly offered to
undertake a marshalling scheme, which
will be available to ITMA trade mark and
design litigators in late 2012/early 2013.
The scheme offers qualified trade mark
and design litigators the opportunity to
spend two days shadowing Judge Birss QC
observing his work, both in and out of
court. Historically, this has been largely
the preserve of the Bar.
The marshalling scheme will take
place between November 2012 and
February 2013.
If you are a qualified trade mark
and design litigator and wish to apply,
please email gillian@itma.org.uk by
14 September. There are limited places
available and, if oversubscribed,
names will be drawn from a lottery.
05 5

606
itma.org.uk September 2012
Media Watch
An international edition
News from far and wide has caught Ken Storey’s attention this time
This edition of Media Watch
takes on an international
flavour, with stories from
China, Russia, Switzerland,
Austria and, closer to home,
Guernsey and Scotland, not
to mention the global impact
of world wide web issues.
China hit the headlines
in most broadsheets and
broadcast media with the
resolution of the dispute
between Proview and Apple
over the use of the term
“iPad”. Regular readers
will recall that Proview had
claimed earlier rights to
the term in China, claiming
its affiliate company had
no right to sell the “iPad”
name to Apple. Proview will
receive £38m from Apple,
which can now use the term
in China where sales had
been suspended pending
a settlement. It may not
be the last we hear of this,
however, as the dispute
continues in the US.
Still in China, Scotland
on Sunday reported that the
whisky giant Chivas Regal
failed in its bid to prevent a
Chinese businessman from
manufacturing clothing
bearing the Chivas Regal
logo. The newspaper reported
that the dispute centred on
the practice of trade mark
squatting in China, where it
is the first to file that has the
rights. Pernod Ricard, which
owns the whisky brand, is
quoted as pledging to fight on.
The Scottish press has also
taken up the cudgels on behalf
of one of Scotland’s most
iconic drinks, Irn-Bru, which
is under threat from Russian
imitations. According to the
Daily Record, Irn-Bru is the
third most popular soft drink
in Russia (behind Coca-Cola
and Pepsi). AG Barr, which
owns the trade mark in Russia,
is being challenged by Business
Investment Group Holdings,
which wants to cancel the
trade mark protection, in
Moscow’s Commercial Court. A
spokeswoman for AG Barr said:
“We will vigorously defend
our trade marks in all relevant
territories and this case is
no exception.” I had no idea
Irn-Bru was so popular outside
Scotland, but it is clearly
a huge market, so it is quite
understandable that AG Barr
will want to take such strong
steps to protect its interests.
Another example of
protecting interests was
covered by the Guardian
at the end of June when it
reported that the Guernsey
Government has approved the
introduction of legislation to
allow celebrities, sports
professionals and other media
personalities to earn a fortune
from not just their faces,
but also their catchphrases,
mannerisms and gestures.
Usain Bolt, for example, would
be able to register his victory
bow-and-arrow pose. If a
company were to commercially
exploit that pose, and if that
exploitation was viewable in
Guernsey, a financial claim
could be made in Guernsey.
According to the Guardian,
opinions differed as to the

‘Hopefully, Catherine Wolfe’s Olympic
warning will have been picked up and
raised ITMA’s profile even further’
practical application of the
legislation, but it is yet another
example of the growing
importance of image rights
and the influence of modern
media, the internet and other
electronic communication.
Similarly, the Metro
newspaper, among many
others, reported that Facebook
has paid more than £6m to
charity to settle a lawsuit
claiming violation of users’
rights regarding the use of their
names, photographs and
likenesses in the adverts that
appear on a member’s page.
I am not sure what legislation
this actually comes under,
but it does highlight how
the apparently innocent
development of new
technologies can infringe
legal rights.
Regarding news of ITMA,
the IP Translator case received
good coverage in the specialist
press and will no doubt
continue to garner interest
(see page 18 of this issue for
more comment). ITMA issued
a press release welcoming the
“greater clarity” resulting from
the EU Court decision and
quoted ITMA Review author
and Council member Imogen
Wiseman, partner at Cleveland,
as saying: “The Court’s decision
should take away much of the
ambiguity and inconsistency in
the system.” The EU Court also
featured in another of ITMA’s
press releases when First Vice
President Chris McLeod
commented on the ruling that
Czech brewer Budvar and
American brewer Anheuser-
Busch could both continue
to own registrations of the
Budweiser brand name in the
UK. ITMA President Catherine
Wolfe also issued a statement
warning that the unauthorised
use of the five-rings Olympic
symbol, or even the words
“London 2012”, could be a risky
business and that trade mark
attorneys could advise on any
grey areas. Hopefully these
comments, made in early July,
will have been picked up by
the media and will raise ITMA’s
profile and that of trade mark
attorneys even further.
Startups.co.uk carried a good
article by trade mark attorney
Trevor Wright that explained
the importance of trade marks
to business and outlined the
trade mark registration process.
The piece concluded with a
reference to the availability of
professional advice from trade
mark attorneys throughout
the UK on the ITMA website.
Meanwhile, the Midweek Herald,
based in East Devon, carried
a warning notice from Giles
Chichester, MEP for South West
England and Gibraltar, about the
scam notices for Community
Trade Mark renewals. I haven’t
seen any similar pieces from
his MEP counterparts, but I was
impressed that he made the
point that OHIM never sends
requests for direct renewal
payments and that the
official-looking invoices are,
in fact, “illegal”. The newspaper
itself called them scams, but
at least the message is
getting across.
Finally, I was drawn to the
Guardian’s coverage of the new
Twitter logo, which set out all the
guidelines for use. In particular,
the paragraph that said: “Twitter,
too, is taking its trade mark
guidelines seriously: its policy
page warmly advises that the
rules are there so users do not
have to ‘worry about negotiating
a separate agreement with us or
talking to our lawyers’. No one
likes talking to trade mark
lawyers.” They might very well
say that, but I couldn’t possibly
comment! (With apologies
to Francis Urquhart, House
of Cards)
Ken Storey
ken.storey@btinternet.com
Member
moves
ITMA bUSINeSS
Gareth Jenkins
has been made a partner
at Wynne-Jones IP. Gareth
qualified as a registered
trade mark Attorney in
2005 and joined the firm
in 2008. He currently
acts for a variety of
clients, from individuals
to multinationals, and has
particular experience in
the management of global
trade mark portfolios and
counterfeiting. He splits his
time between the firm’s
Cheltenham and Cardiff
offices. Contact Gareth
at gareth.jenkins@
wynne-jones.com
Ben Mooneapillay
was appointed as a partner
at the Oxford office of
JA Kemp with effect from
1 may 2012. He joins the
firm from another local
practice, having started
his career at a global law
firm. Contact ben at
bmooneapillay@jakemp.
com or on 01865 406100.
07 7

11 OCTOBER 2012 HyATT REGENCy HOTEL, BIRMINGHAM
ITMA
AuTuMn seMInAR
and drinks reception
Progress, Problems and
avoiding the gaPs – the ohim and
WiPo systems after 15 years
C O N F I R M E D S P E A K E R S
Dimitris Botis OHIM Update
Mary Bagnall Descriptive Marks – Enforcement Implications
Katie Cameron 3 Dimensional Brands, Trade Marks and Designs
Amanda Michaels Falling through the gaps – when it all goes wrong
DRInKS RECEPTIOn OPEn TO nOn-DELEGATES
For more details and to register visit itma.org.uk
sponsored by
5 iPreg
CPd
hours

Summer in the City
Damp weather failed to dull the spirits of ITMA members at the
annual Summer Reception on ı0 July in Stationers’ Hall, London
1
3
4
2
5
6
7
8
9
10
11
12
SUMMER reCePtION
1 stationers’ Hall’s historic signage
2 Alice Manisty and Geoff Steward
(macfarlanes), Catherine Wolfe
(ItmA President)
3 Kenneth Mullen (Withers LLP),
Fiona Conan and Paul Harris (Gowlings)
4 Theresa Castle (bristows),
Bobby Mukherjee (bAe Systems,
Farnborough), Kate O’Rourke (Charles
russell LLP), Sally Dunstan (bristows)
5 Vicky Butterworth (Charles russell), Mark
Finn (emW), Heather Newton and
Joanna Silver (Herbert Smith)
6 Tom Sharman (reddie & Grose LLP),
Flora Cook (Kilburn & Strode LLP),
Rebecca Brenikov and Zoe Dewhurst
(reddie & Grose LLP)
7 Felicity Hide (boult Wade tennant),
Hilde Vold Aunebakk (Acapo AS, Norway),
Spencer Burgess (eccora)
8 Ese Akpogheneta and Tim Coleman
(rouse), Kathy Wright (Aftellas Pharma),
Tabea Trabe and Catherine Barbour (rouse)
9 Lianne Bulger (Squire Sanders),
Patsy Heavey (Formula One management),
Amandeep Sander (Squire Sanders),
Sean Corbett (Formula One management),
Florian Traub (Squire Sanders)
10 Andrew MacGowan and Trevor Whitehouse
(mac eleven)
11 Rita Sunny-yangs (GH Sigurgeirsson, Iceland),
Mark Newton (thomson reuters)
12 Linda Bray (Wildbore & Gibbons),
Aidan Robson (reddie & Grose LLP),
Katherine Stephens (bird & bird LLP)
09

10
itma.org.uk September 2012
Consistency remains
a challenge at OHIM
Jonathan Clegg of Cleveland reviews an active
year of filings for the Office and finds two
Articles in need of attention
How does one summarise a year’s
worth of decisions at OHIM on
two pages? The answer is with great
difficulty, but Article 7 seems a good
place to start. Ex parte appeals at OHIM
are on track to increase from 344 in 20ıı
to more than 400 in 20ı2, with about
one in eight being fully reversed from
the Examination Division. Many of
these are unsurprising – ECOBOND
refused for “backing for carpet tiles”
(R2097/20ıı-4), PRECISION for
class 9/ı0/ı6 goods (Rı270/20ıı-ı) and
SUSTAIN for “implantable cardiac
pacemakers” (Rı520/20ıı-2), but one
or two catch the eye.
The mark shown in figure one was
accepted in classes 35/42 (Rı279/20ıı-2),
Fig. 1
Fig. 2 R637/2011–4 and R1168/2011-4
Opposed by
MASIA DE CARO
Fig. 3
Opposed by
DOKO
with the Board of Appeal (BoA)
delivering a decision that was highly
critical of the Examination Division.
This followed the Court of Justice of
the EU decision on the Greek letter α
(C-265/09P), which reiterated that no
special criteria or level of creativity is
required for a sign to be registrable.
The BoA’s decision is well argued,
although it may be pushing it to
suggest that the fact that the letter
“π” appears against a black circular
background “is nevertheless a factor
which makes it less likely that the π will
be overlooked or disregarded or passed
over as some inconsequential detail”.
Some word marks were lucky to be
accepted by the Examination Division
on a prima facie basis, including:
SOLUTION in class 16 (Ctm 9590481)
– how can any goods or services
realistically be said not to offer
some kind of “solution”?
REQUISITE SOFTWARE (Ctm
9868902) for, inter alia, “software
to enable purchasing of products
via computer” in class 9.
No comment necessary.
ROAD SOLUTION for services including
transport and travel arrangement
(Ctm 10060911).
REIMAGINING BUSINESS for,
inter alia, business-related services
(Ctm 10088623).
Most slogans and straplines that went
to appeal were refused, for example
VODKA AS IT SHOULD BE for
“vodka” (R6ı4/20ıı-4), but one bucked
the trend: DEFINING TOMORROW,
TODAY, which probably does fall on
the right side of the line (Rı264/ı2ıı-2).
The Bang & Olufsen (“B&O”)
loudspeaker decision of the General
Court (T-508/08) caused a lot of
debate, not least because B&O seemed
to be caught between a rock and a hard
place: while the General Court initially
agreed (in earlier appeal T-460/05) that
the design “departed significantly from
the industry norms” and waived the
Article 7(ı)(b) objection, OHIM then
raised an Article 7(ı)(e)(iii) objection
that the shape gives “substantial value”
to the goods – by virtue of the same
attractive qualities that caused the
Article 7(ı)(b) objection to be waived.
In other words, they seemed to be
penalised for coming up with a design
that was too distinctive. No appeal
decisions since then seem to have
had to tackle this tension between
Article 7(ı)(b) and Article 7(ı)(e)(iii).
OHIM, however, continues to be
reluctant to allow three-dimensional
marks without evidence of acquired
distinctiveness.
On this subject, there were 27
appeals between June 20ıı and June
20ı2 in which acquired distinctiveness
under Article 7(3) was specifically
considered, but only one of these
appeals was allowed, and a further
single case remitted to the Examination
Division. Of course, many marks
continue to be accepted for registration
on the basis of acquired distinctiveness,
but it is interesting that the
success rate on appeal is so low.
There still seem to be some
inconsistencies on how acquired
distinctiveness is evaluated by
OHIM, including on the issue

of the geographical extent of evidence
required, especially where there are
issues of language. The Max Planck
Institute’s recommendations on
acquired distinctiveness include
a relaxation of the necessary
geographical extent of evidence,
on the basis that the assessment
should treat the EU as a single
territory and not compartmentalise
it country by country.
Article 8
Turning to Article 8, there have
been some interesting decisions
by the BoA. A likelihood of
confusion was held in respect
of both the pairs of marks
shown in figure two.
Turning to word marks, a likelihood
of confusion was held between
KELLFRI and KELLY for identical class
ı2 goods (R48ı/20ıı-4), but not between
JUP and JOOP! for identical or similar
goods in classes 9/ı8/25 (R474/20ıı-2).
The BoA took leave of its senses
when it overturned an Opposition
Division decision on the marks
FERRACINI 24h (see figure three)
v 24 HRS DUO, finding a likelihood
of confusion in a bewildering decision
that gave virtually no credence to
the presence of the invented and
distinctive word FERRACINI in
making its comparison.
Nine decisions of the BoA were
decided on Article 8(4) only. Six of
these were dismissed at first instance
and not reversed on appeal; two were
allowed at first instance and again on
appeal – for a trade name in Spain
(R3ı6/20ıı-ı) and for a company or
trade name in France (R2486/20ı0-2);
and one was allowed at first instance
but refused on appeal (R2488/20ı0-ı).
The clear impression formed from
these nine decisions is that a methodical
and thorough approach to evidence
is needed for a positive decision. In
many cases, opponents fell foul of
the clear requirements of Article 8(4),
most commonly “used in the course of
trade…”, which is, of course, necessary
irrespective of whether use is required
under national law in relation to
the relevant earlier right.
Decisions under Article 8(3)
are rare, but one case went to
the BoA (R85/20ı0-4), and its
factual background to this case draws
out many of the key points of this
provision – including the fact that a
“Memorandum of Understandings
for Worldwide Licence Rights” was
insufficient to establish a fiduciary
relationship between the parties.
To end on a slightly depressing
note, one of the relatively rare decisions
on restitutio in integrum (opposition
Bı763500), which revolved around
‘The clear impression formed from these nine decisions
is that a methodical and thorough approach to evidence
is needed for a positive decision’
ABOUT THE
AUTHOR
OHIM UPDAte
the fact that a deadline for filing
observations-in-reply in an opposition
was missed, is yet another example
of restitutio being refused, and of
how difficult it is for an applicant
to meet the “all due care” requirement.
In summary, the overall level
of activity at OHIM, including
filing figures and output of decisions,
has remained high throughout 20ıı
and 20ı2 against a tough economic
backdrop. Its big challenge, however,
remains consistency of decisions,
especially under Articles 7 and 8.
Jonathan spoke on this topic at
an ITMA Evening Meeting on
19 June 2012. See page 42 for
forthcoming meetings.
Jonathan Clegg
is a Partner at Cleveland
j.clegg@cleveland-ip.com
Jonathan specialises in trade
mark clearance and strategy,
with a particular emphasis on
uk and ctm oppositions and
portfolio management.
11

12
nEW gTLDs REqUIRE
fRESH THInKInG
Nick Wood of Valideus considers the impact of the first round
of ICANN’s new gTLD process and wonders whether trade
mark professionals will rise to the challenges

Imagine it is this time next year.
Suppose that you are an in-house
trade mark manager and that the global
head of IP of your company wants
a memo from you on developments
in the domain name system. If you
ignored the changes that are currently
underway, here’s what you might
have to say:
“The irresponsible approach of the
Internet Corporation for Assigned
Names and Numbers (ICANN) to
the expansion of the generic top-level
domain (gTLD) space has led to an
unprecedented rise in the number
of challenges we face. Infringers are
filing abusive registrations in registries
opened by internet speculators that
we did not want, some of which
correspond with key areas of
importance to us. We must find a
way of reinforcing trust in our online
identity because the search engines
are starting to rank natural and paidfor
listings for new gTLDs above
those under .com.
“We are faced with between 50
and 80 new registries launching with
a Sunrise every month until the end
of 20ı4. The new rights protection
mechanisms are of some assistance, but
we need to re-forecast our budgets.”
On the other hand, if you anticipated
the changes, your memo might read
very differently:
“We monitored the ICANN new
gTLD expansion plans during its
six-year development and formed a
team in the autumn of 20ı2 to ensure
we were prepared when the first
applications went live in July 20ı3. We
have developed relationships with the
operators of registries that are important
to us and our customers, filing several
brand, product or service 637
keyword 899
brand keyword 255
community 73
geographic 55
community/geographic 11
new registrations that have, in part,
been made affordable because we have
lapsed domains in older registries that
attracted little traffic. We budgeted to
ensure that we can use the Trademark
Clearinghouse and the Uniform Rapid
Suspension System effectively.
“We are working with our public
affairs colleagues and our Government
representatives through some of our
industry associations to ensure that
ICANN’s policy development process
takes greater heed of business needs.
We are participating in ICANN
discussions that should lead to
enhanced measures to reduce defensive
registrations and we expect mandatory
Whois accuracy to be introduced later
this year. We are also co-operating
with our marketing colleagues, who
are monitoring consumer reaction
to the new gTLDs, including how
Google, Yahoo! and Bing are changing
their algorithms and whether the
internationalised domain name (IDN)
registries (in scripts other than English
or Ascii) are making an impact on
local markets. Once we have this
information, we will make an informed
decision whether to apply ourselves
when application re-opens in 20ı5.”
If you prefer the second memo to
the first (and who wouldn’t?), here is
some background information gleaned
from ICANN’s Reveal Day data on
who applied. It might just help you
assemble the cross-disciplinary team
you’ll need to create a strategic plan to
respond to the new gTLDs, and make
that second memo a reality.
Unexpected response
ICANN anticipated 500 applications,
but received 2,09ı applications for
APPLICATIOnS By TyPE Of TLD
gTLD
GLOSSARy
TLD (top-level
domain)
the final part of an
internet address, eg
.com in google.com
ICANN
gTLD (generic
top-level domain)
a suffix affixed to an
internet address that
does not relate to a
specific geographic
location/country,
such as .com, .net
or .gov
Sunrise
a priority registration
period for rights
owners, after which
a registry opens to
the general public.
Character strings
the sequence or
combination of
characters applied for.
IDN
(internationalised
domain names)
domain names in
local scripts, such
as arabic or cyrillic,
rather than ascii
(the latin alphabet
– a to z).
Dot Brand
a corporate
applicant for a gtld
registry, such as
philips (which has
applied for .philips).
whois
a programme that
enables internet
users to determine
“who is” the owner of
a registration. Whois
records should
show the name
and contact details
of the registrant.
13

14
itma.org.uk September 2012
SECTOR nUMBER Of APPLICAnTS
banking and finance 55
Industry and manufacturing 48
Internet and It 45
retail 41
Communications and post 36
electronics 32
media and publishing 27
Insurance 23
Automobiles 21
Not for profit and industry body 20
biotech and pharma 19
entertainment 18
Hotels and travel 15
Consultancy 11
Luxury 10
transportation 8
Sports 8
Other 8
Food, beverages and restaurants 6
Fashion 4
Grand total 455
character strings in the initial period.
When the application period finally
closed, after a systems failure that
ICANN characterised as a glitch caused
a six-week delay, ı6ı strings had been
withdrawn, leaving a total of ı,930
applications for ı,409 unique strings.
Of ıı6 applications for IDN registries
(which include characters in scripts
other than English or Ascii), the most
popular are Chinese (67), Arabic (ı5),
Japanese (ı0), Russian Cyrillic (8),
Korean (3) and Hebrew (ı). Fourteen
IDN strings were applied for by more
than one applicant.
There were 84 self-designated
community applications (.ngo,
.gay, .tennis) and 66 geographic
applications (.swiss, .tirol, .zuerich).
Despite much-vaunted efforts
by ICANN to market the concept
of the new gTLDs around the world,
applicants from North America and
Europe dominated the application
process. Africa, Latin America and Asia,
including Australasia, accounted for just
over ı7 per cent of applicants.
Dot Brand applicants
It is hard to calculate the exact number
of Dot Brand applicants because some
organisations chose to apply through
holding companies and a few are not
well known. However, it appears that
33 per cent of all applications (637)
were submitted by brand owners.
The largest brand applicants were
Google (ı0ı), Amazon (76), Richemont
(ı5) and Microsoft (ıı). In total, 36 of
the Fortune ı00 companies applied.
The distribution of Dot Brand
applicants is marginally more even than
the overall distribution of applicants,
thanks to applications from China and
Australia in particular.
Some interesting brand applicants
emerged with IDN applications
from beyond North America and
Europe, including the Emirates
Telecommunications Corporation,
Kuwait Finance House, Qatar Telecom,
Beijing Tele-info and Xinhua News.
Bridgestone, Nokia, L’Oréal, Philips
and Samsung applied in both English
and for IDNs of their key brands.
Dot Brand applicants featured
companies concerned to protect their
key brands from third parties with
a competing claim, such as Delta Air
Lines (.delta) and Ralph Lauren (.polo);
to exploit the new gTLDs to support
internet marketing and sales (.hilton,
.homedepot); to explore the platform
of innovation that a new gTLD registry
brings for digital distribution (.hbo,
.fox); and to enhance security and
trust (.barclays, .hermes). Some brands
were working on the principle that:
“If it does not end in Chanel, it’s
not Chanel.” We know this from
the answers given to question ı8
on the application form, which
required applicants to set out the
mission and purpose of their registry
(for more, click More Information
at http://newgtlds.icann.org/en/
program-status/application-results/
strings-ı200utc-ı3junı2-en).
A further 255 applications were
made by brand owners for keywords.
For example, Google has applied for .app,
.cloud, .map, .movie, .music, .search, etc.
Where there is more than one
application for a character string,
‘ICANN received $357 million in application fees from
this first application round. Trade mark professionals
now need to consider not whether but how to get involved
with the new gTLD programme – it’s here to stay’

1000 911
800
600
400
200
0
North
America
nUMBER Of APPLICATIOnS By REGIOn
675
303
ICANN will place the applications
into a contention set. If all the
applicants in a contention set pass
initial evaluation, they will be placed
into a highest bid auction from August
20ı3, unless the parties involved come
to a private arrangement.
There a few notable clashes between
brand owners. For example, the
American Institute of Certified Public
Accountants is competing with the
Australian Institute of Certified Public
Accountants and three others, including
Google, for .cpa, while the Guardian
Life Insurance Company of America is
up against Guardian News and Media
Limited for .guardian.
All told, ICANN received
$357 million in application fees
from this first application round.
In addition to this windfall, it will
point to nearly 2,000 applications, a
third of which come from brand
owners, as justification for a second
round. Trade mark professionals now
need to consider not whether but how
to get involved with the new gTLD
programme – it’s here to stay. By 20ı5,
the number of domain registries in the
world will have grown from the 300
that exist today to more than ı,500.
New thinking is required.
24
Europe Asia Pacific Latin
America
Africa
17
ABOUT THE
AUTHOR
ICANN
Nick Wood
is Managing
Director of Valideus
nick.wood@comlaude.com
nick is the managing director
of accredited registrar com
laude and consultancy
valideus, which assisted
brand owners to make more
than 120 new gtld applications
(six per cent of the total).
BRAnD APPLICATIOnS By REGIOn
north america 269
africa 6
latin america 7
asia pacific 155
europe 200
15

16
itma.org.uk September 2012
Budweiser in the UK
Kirsten Gilbert of Marks & Clerk Solicitors
LLP considers the effect on trade mark
practice of one long-running battle of the beers
The latest stage of the dispute
between Anheuser-Busch Inc
(“Anheuser-Busch”) and Budêjovický
Budvar Národní Podnik (“Budvar”),
concerning the UK word mark
BUDWEISER, had its most recent
chapter written on 3 July, when
Ward LJ and Warren J agreed
to allow a Budvar appeal.
Dispute in brief
Both Anheuser-Busch and
Budvar applied to register the
word BUDWEISER in class 32
in respect of beers. Both
Anheuser-Busch and Budvar
filed cross-oppositions, but the
Court of Appeal ultimately
allowed both marks to be
registered on ı9 May 2000. The
oppositions were determined
under the Trade Marks Act ı938.
Under the Trade Marks
Act ı994, however, Anheuser-
Busch considered that it had
an opportunity to seek to
invalidate the Budvar word
mark on the basis that the
Anheuser-Busch mark was
an earlier identical mark
registered in respect of
identical goods. There
appeared to be nothing in
the ı994 Act or the transitional
provisions to prevent this and
so, four years and 364 days
after the registration of the
Budvar mark, Anheuser-
Busch applied to invalidate
Budvar’s registration.
The basis of Budvar’s entitlement
to the registration had been “honest
concurrent use” under the ı938 Act and
this was not thought to have a place in
First Council Directive 89/ı04/EEC
or in the ı994 Act that followed.
Anheuser-Busch was successful in
the Trade Mark Registry and in the
High Court. Budvar appealed to the
Court of Appeal. The main point at
issue was whether there was room in
the Directive for consideration of the
effect of long concurrent use. The
arguments focused on the possible
accommodation of honest concurrent
use in either Article 9 – acquiescence –
or Article 4(ı)(a) of the Directive when
considering the effect on the essential
function of a trade mark.
Article 9
The key issue under Article 9 was
when the five-year period, after which
acquiescence would be presumed,
commenced. Could it take into
consideration long-term honest
concurrent use before the later mark
was registered? Budvar had been using
the BUDWEISER mark in the UK
since ı973 – some 32 years by the time
Anheuser-Busch applied to invalidate
the mark. Anheuser-Busch had known
of the use for all of that time and
certainly since ı976, when it sued
Budvar for passing off as a result of
Budvar’s use of the BUDWEISER name.
The Court of Justice of the European
Union (CJEU) made it clear that the
conditions that are necessary for the
five-year period to start running are:

‘In cases where there has been long concurrent use, it may be
advisable to expressly plead in a double identity case that the
later mark will have an adverse effect on the earlier mark’
• registration of the later mark;
• application of the later mark made
in good faith;
• use of the later mark in a Member State
where it has been registered; and
• knowledge by the proprietor of the
earlier mark that the later trade mark
has been registered and has been
used after its registration.
There was some discussion as to
the meaning of acquiescence in the
submission made by the European
Commission to the CJEU. In the view
of the Commission it may be helpful
to compare acquiescence with consent,
which has been interpreted several
times by the CJEU in the context of
exhaustion of rights. There must be an
express and positive statement of consent.
In contrast, acquiescence is characterised
by more passive behaviour that is a tacit
acknowledgement of the use of the other
mark. The CJEU did state that a person
can only acquiesce to the conduct of
another if they are in a position to stop
such conduct. It contrasted this with the
position in which a person tolerates a
situation they have no ability to stop.
One of the points to which the CJEU
referred was the need for legal certainty,
but it is not at all clear that this will be
achieved. One of the conditions for
deciding that the five-year period has
begun is a determination of the moment
from which the owner of the earlier mark
has knowledge that the later mark is
being used, and it is very difficult for the
proprietor of the later mark to be certain
of when the owner of the earlier mark
acquired the requisite knowledge.
On the question of awareness of use,
the Commission submitted that it is a
subjective matter and so, to make up
for the difficulty of adducing proof in
relation to awareness of use, a national
court may rely on presumptions such
as the general knowledge in the section
and the duration of the use.
Article 4(1)(a)
If Article 9 cannot accommodate honest
concurrent use, is there room for it in
Article 4(ı)(a)? The CJEU ruled that
where there has been a long period
of honest concurrent use of two trade
marks, and where that use neither has
nor is liable to have an adverse effect
on the essential function of the trade
mark, Article 4(ı)(a) will not apply.
The CJEU referred to the fact that
Anheuser-Busch and Budvar had both
used the BUDWEISER mark for almost
30 years prior to the registration of the
marks, that they had been authorised to
use the marks after the Court of Appeal
judgment in the earlier oppositions, that
both were using the marks in good faith
and that UK consumers were aware of
the differences between the products,
which are clearly identifiable as being
produced by different companies.
On the basis of the CJEU ruling,
the Court of Appeal in its recent
decision of 3 July allowed Budvar’s
appeal and rejected Anheuser-Busch’s
application for invalidity of Budvar’s
UK trade mark for BUDWEISER.
In cases where there has been long
concurrent use (it is not yet clear how
long the use has to be), it may be
ABOUT THE
AUTHOR
wEBINAR
Kirsten Gilbert
is a Partner at Marks & Clerk
Solicitors LLP
kgilbert@marks-clerk.com
Kirsten advises on all aspects
of IP and works with clients
in a wide range of business
sectors. She has particular
expertise in litigation and
has represented clients in
the High Court, the Patents
County Court and the Court
of Appeal, as well as in
proceedings before the Court
of Justice and the General
Court of the european Union.
advisable to expressly plead in a double
identity case that the later mark will
have an adverse effect on the essential
function of the earlier mark, as this is
now a condition for the application
of Article 4(ı)(a).
It is interesting to see requirements,
such as an adverse effect on the essential
function of a trade mark, that we
are used to considering in cases on
infringement also having a place for
consideration in cases on registrability.
The long and interesting battle
between these two trade mark owners
continues to provide us with thoughtprovoking
decisions on trade mark law.
Kirsten spoke on this topic at a joint
ITMA/CIPA webinar in June.
For details of forthcoming events in
this continuing programme, see page 42.
Marks & Clerk Solicitors LLP acted
for Budêjovický Budvar Národní Podnik.
17

18
itma.org.uk September 2012
Words of warning
The CJEU decision in the IP Translator case still leave much
open to interpretation, says Imogen Wiseman of Cleveland
For many practitioners in the UK,
interpreting the scope of a trade
mark registration has traditionally
been a question of reading the list
of goods and services included in the
specification. However, the Court of
Justice of the EU (CJEU) decision
in the IP TRANSLATOR case
suggests there may be more to many
specifications than meets the eye; in
fact, their ultimate scope may come
down to what the Applicant intended
to be covered, rather than what is
actually stated.
The problem can be traced back
to June 2003, when OHIM published
Communication 4/03, “concerning the
use of class headings in lists of goods
and services for Community Trade
Mark applications and registrations”.
This included an apparently innocuous
statement that the use of a class heading
would constitute a claim to all the
goods or services within that class, as
well as a statement that, going forward,
the UKIPO would not object to any
of the class headings as being too vague,
even though this was a practice that
was employed by some national
offices in the EU.
Initially, this Communication, which
was probably motivated by OHIM’s
desire to avoid the cost and delay of
translating long, bespoke specifications
into the various different EU languages,
seemed relatively uncontroversial.
Over time, however, problems began
to surface. Many of these arose from the
fact that other IP offices in the EU, and
beyond, interpreted the class heading
differently, which gave rise to issues on
priority and seniority for example. There

were also concerns about whether the
“all goods in class” interpretation of the
class heading was sufficiently clear and
precise for third parties to appreciate
the scope of a registration.
CIPA’s application
In October 2009, CIPA decided
enough was enough and filed a UK
application to register the trade mark
IP TRANSLATOR. The application
was filed for the Nice class heading in
class 4ı, which reads: “Education;
providing of training; entertainment;
sporting and cultural activities.”
The UKIPO raised objections under
sections 3(ı)(b) and (c) of the Trade
Marks Act ı994 that the mark was
non-distinctive and descriptive in relation
to translation services, which according
to the practice set out in OHIM’s
Communication 4/03, were implicitly
covered by the class 4ı specification.
CIPA appealed the decision to the
Appointed Person, arguing that the
application did not cover translation
services and that, as such, the UKIPO’s
objections were unfounded.
Geoffrey Hobbs QC, sitting as the
Appointed Person stayed the proceedings
and referred three questions to the
CJEU, as follows:
1. Is it necessary for the various goods
or services covered by a trade mark
application to be identified with any,
and if so what particular, degree of
clarity and precision?
2. Is it permissible to use the general
words of the class headings of the
[Nice Classification] for the purpose of
identifying the various goods or services
covered by a trade mark application?
3. Is it necessary or permissible for such
use of the general words of the class
headings of [the Nice Classification]
to be interpreted in accordance with
Communication 4/03?
IP trANSLAtOr
‘The CJEU held that a class heading does not clearly
establish whether the applicant intends to cover all
or only some of the goods in that class cannot be
considered sufficiently clear or precise. This introduces
a new concept, that of the applicant’s intention, which
was not present in the Appointed Person’s reference
or the Advocate General’s opinion’
The AG’s opinion
The Advocate General argued that
according to Article 2(2) of the CTM
Regulation, the description of goods
and services must be sufficiently clear
and precise to enable the authorities
and economic operators to accurately
determine the protection conferred by
a trade mark. Those requirements may
be satisfied by a specific list of goods or
by an identification of the basic goods
and services so that their essential
characteristics are clear to both the
authorities and economic operators.
However, he also argued that the
Regulation does not preclude use
of the Nice class headings, provided
that they are clear and precise.
However, the Advocate General also
found Communication 4/03 in conflict
with the principles in the Regulation.
Specifically, he found that the UKIPO’s
decision not to object to a class heading
on grounds that it was too vague
was contrary to the direction in the
Regulation that specifications should
clearly indicate the nature of the goods
and services, and that this would make it
difficult for the authorities and economic
operators to accurately determine the
scope of protection. Furthermore, he
felt that this could lead to an increase
in the number of trade marks and, in
turn, in the number of conflicts.
The CJEU’s decision
The CJEU issued its decision in case
C307-ı0 on ı9 June 20ı2. Its answers to
the first two questions largely mirrored
the Advocate General’s. First, the CJEU
held that the Directive requires that
goods and services are sufficiently clear
and precise to enable the authorities and
economic operators to determine the
extent of the protection sought, although
it didn’t go as far as to suggest how those
requirements might be satisfied. Second,
the CJEU held that this does not
preclude the use of the
class headings, provided that they
are sufficiently clear and precise.
However, the CJEU’s answer to
the third question did deviate from the
Advocate General’s. Specifically, it held
that a class heading that does not clearly
establish whether the applicant intends
to cover all or only some of the goods
in that class cannot be considered
sufficiently clear and precise. While
on the face of it this would seem to
suggest that some class headings are
not clear enough to be acceptable, it
also introduces a new concept, that of
the applicant’s intention, which was
not present in the Appointed Person’s
reference or the Advocate General’s
opinion. This seems to allow the
CJEU to go on to state that where
an applicant uses a class heading, it
must specify whether the application
is intended to cover all the goods or
services included in the alphabetical
list of that class or only those goods or
services included in the specification.
Communication 2/12
The day after the CJEU’s decision,
OHIM published Communication 2/ı2.
This repealed Communication 4/03
and stated that OHIM would continue
to accept applications covering class
headings, provided they meet the
requisite level of clarity and precision.
In terms of applications filed
on or after 2ı June 20ı2, the new
Communication states that an
application that includes a class heading
must expressly include an indication
of whether it is meant to cover all
of the goods and services listed in
the alphabetical list or only some of
those goods and services. This is done by
signing the “declaration on list of goods
and services applied for”, which states:
19

20
itma.org.uk September 2012
‘In introducing the concept of the
applicant’s intentions, the CJEU
seems to have paved the way for
OHIM to accept class headings
for all classes, with only one small
amendment to the application
process needed’
“By using the Nice Agreement
class headings in my list of goods
and services, I hereby confirm
that I am applying for all of the
goods or services included in
the alphabetical list of each
class filed.”
The declaration must be filed
with the application form. If the
declaration is not attached at the
time of filing, OHIM will assume
that the applicant only seeks protection
for each of the general terms and
not all goods or services in the class.
Where an application covers the
class heading, the Register will
indicate whether or not it covers
all the goods and services in a
particular class.
As such, by introducing the
concept of the applicant’s intention,
the CJEU seems to have paved the
way for OHIM to accept class headings
for all classes, with only one small
amendment to the application process.
However, while the change allows
OHIM to avoid the problems of
translating bespoke specifications,
there are still arguments about
whether this workaround results
in specifications that are sufficiently
clear and precise to satisfy the
requirements of Article 2(2) of
the CTM Regulation. Certainly,
specifications are not self-contained
if they have to be read in conjunction
with the Nice list that existed at the
time the application or registration
was filed. Furthermore, although
OHIM is doing what it can to
inform CTM applicants of the
change, the new practice is perhaps
less obvious to those filing through
the Madrid system.
But the problem is really what
happens to all of the applications
and registrations listing class headings
that were applied for before 20 June
20ı2. Communication 2/ı2 states that
OHIM will consider these to cover
the whole alphabetical list of goods
and services on the basis that this is
what the applicant intended to cover.
The Communication does not explain
this insight into the applicant’s motives,
but presumably this is because the
applications would have been filed
in the context of Communication 4/03.
In the meantime, the Communication
states that OHIM will continue working
with EU national offices towards a
common practice in relation to the
acceptability of class headings.
UK registrations
So presumably this means that
when CIPA’s case is remitted,
the Appointed Person will decide
that CIPA intended to cover all
the services in that class, including
translation services.
However, the UKIPO is not
bound by OHIM’s Communication
2/ı2 and judging solely from the
Appointed Person’s comments in
his reference to the CJEU, it seems
unlikely that it would decide in
this way. This is not least because,
from a technical perspective, the
Appointed Person did not consider
translation services an obvious
sub-category of any of the services
listed in the class heading for class 4ı,
and it is far from clear whether CIPA’s
intentions could be contextualised
by the existence of OHIM’s
Communication 4/03.
This is a practice area that is
still developing. At the time of
going to print, OHIM was still
reviewing its practice and the
UKIPO was still working on
its own guidance. However, it
is possible that we might face a
new era of different, divergent
practices across the EU, which
makes the success of OHIM’s
Convergence Programme all
the more critical.
ABOUT THE
AUTHOR
Imogen Wiseman
is a Partner at Cleveland
i.wiseman@cleveland-ip.com
imogen serves as chair
of itma’s law and
practice committee.

Malaysia’s year in marks
Geetha K of KASS International in Kuala Lumpur reflects on a
medley of cases that have made the past ı2 months memorable for
IP rights-holders and offer encouragement to trade mark holders
1 “Fair” outcome for exhibition organisers?
In this case, two Malaysian organisers
of exhibitions for computerware were in
dispute over the selection and use of a
name for trade fairs. The Association of
the Computer and Multimedia Industry
of Malaysia (known as PIKOM) had
been organising IT and computer fairs
under the name PIKOM PC FAIR in
the country for ı5 years.
An ex-employee of PIKOM started to
organise an IT and PC exhibition under
the name PC EXPO, which attracted a
large number of exhibitors who were in
the IT industry, some of whom were
members of PIKOM. Shortly after the
first PC EXPO exhibition was held,
PIKOM commenced an action for
infringement of its registered trade mark
PC FAIR, tort of passing off and breach
of confidential information against its
ex-employee and her company.
The Court eventually held that
the word PC FAIR has a primary
dictionary meaning, being a “computer
fair”, and to grant the Plaintiff such a
monopoly would deprive the public
from using words that are part of the
English vocabulary and commonly
used by the IT industry. The Court
further held that the mark PC FAIR
was always used together with the
Plaintiff’s mark PIKOM, and therefore
the distinctiveness and goodwill reside
with the mark PIKOM PC FAIR and
country focus
not the words PC FAIR solely.
As a result, the Plaintiff’s infringement
and passing off action failed.
As for the confidential information
claim, the Court held that although
most of the information claimed to be
confidential fell into the public domain,
the information contained in the
Plaintiff’s exhibitor database was
confidential. Considering the short
period of time elapsed between the
Defendant’s previous employment and
the time she sent the first introductory
email about her exhibition to relevant
exhibitors, the Court concluded that
the Defendant had contacted exhibitors
from the Plaintiff’s database.
021-023_ITMA_Malaysia.indd 21 13/08/2012 11:25
21

22
itma.org.uk September 2012
2 Why Artril is too similar to Viartril
This case is a passing off action in the
pharmaceutical field. In the case of
Rotta Research Laboratorium SpA
& Antah Pharma SDN BHD v Ho
Tack Sien Ors, the latter claimed to
have independently developed the
glucosamine sulphate-based drug –
Artril 250 – which was similar to
Viartril-S, a drug developed and sold
by the Plaintiffs. Both products were
used to treat osteoarthritis.
The Plaintiffs accused the Defendants
– Ho Tack Sien, Chai Yuet Ying and the
companies they enlisted to trade mark,
manufacture and distribute their product
– of infringement upon their trade
mark rights and of passing off. This
was achieved, it was said, by the misuse
of confidential information passed
down from the Plaintiffs to their
former employees, the Defendants, in
an attempt to steal business from and
damage the reputation and goodwill of
the Plaintiffs. Following a seven-day trial,
the Court decided that the Plaintiffs had
proven their case against all Defendants
except for the first company hired to
manufacture Artril 250.
Among the issues of concern
in the final judgment were trade
mark infringement and passing off
by the Defendants. In arguing this,
the Plaintiffs had to provide sufficient
evidence that the two products were
deceptively similar to the point of a
likelihood of confusion and possible
misrepresentation. This was achieved
by demonstrating aural and visual
similarities, the former being in the
names of each – “Vi-artril” versus
“Artril” – despite the presence of
the unique suffixes “S” and “250”,
respectively. The visual resemblances
were evident in many aspects, from the
red and white tablets to the uniform
red and white box with an image of a
knee. Possible confusion could arise for
the intended recipients of these drugs,
as they sat side-by-side on the shelves
in pharmacies. Two independent
witnesses, Dr Ng Suan Thoong and
pharmacist Che Suraya binti Haji
Mohd Zain, also testified to instances of
actual confusion and had contacted the
Plaintiffs with regard to Artril 250.
Misrepresentation came into play
when it was brought to light that the
Plaintiffs had previously released a
drug by the name of Arthryl. As
former employees of the Plaintiffs,
the Defendants were aware of this
product when they coined the name
“Artril”. Electing a name resembling
that of the Plaintiffs’ product led the
public to believe that the goodwill and
reputation the Plaintiffs have developed
‘Ho Tack Sien and Chai yuet ying lacked credibility as
witnesses when testifying as Ho contradicted himself
during the cross-examination and both refused to answer
questions or gave curt responses in the form of “don’t
know”, “can’t remember” and “no comment”’
over years of service could be associated
with that of the Defendants.
The breach of obligation of
confidentiality by Ho and Chai as
per their employment contract with
the Plaintiffs was apparent as both
individuals had access to confidential
material regarding the development and
manufacturing of Viartril-S, which
surpasses the general information on
glucosamine sulphate available on the
internet. Furthermore, the Defendants’
document “Annex B”, containing
information on the development
and manufacture of Artril 250, bore
a significant resemblance to the
corresponding document for that
of Viartril-S.
To weaken their case further, the
two lacked credibility as witnesses
when testifying as Ho contradicted
himself during the cross-examination
and both refused to answer questions
or gave curt responses in the form
of “don’t know”, “can’t remember”
and “no comment”.
The Court eventually decided in
favour of the Plaintiffs and expunged
the trade mark registration for “Artril
250” and costs of RM25,000 against
each Defendant were awarded to
the Plaintiffs.

This feud between two different parties
claiming to be owners of the trade
mark SRI PAANDI is also noteworthy.
Specifi cally, a dispute arose when the
two parties each opened a South Indian
restaurant within very close proximity
to each other in the city of Petaling Jaya.
The situation resulted in confusion
among customers as not only did the
restaurants display their name in the
same type font, but the waiters of
both restaurants were clad in a
purple-coloured uniform. It did not
help that both restaurants claimed to
originate from the Sri Paandi restaurant
in Brickfi elds (an area known as the
Little India of Kuala Lumpur), which
is widely known for its delicious South
Indian food, particularly its banana
leaf rice.
The existence of two similar
restaurants in Petaling Jaya left customers
confused as to which restaurant was
the true Sri Paandi restaurant.
In what turned out to be an
extremely twisted case with evidence
dating back to ı987 (when the original
Sri Paandi restaurant was set up by the
fi ve founders in Brickfi elds), the IP
Court decided, on 3ı January 20ıı, that
the core issue in this case was the issue
of ownership. Who owns the mark?
Is it the Plaintiff, a company run by
K Saraswathy, which was incorporated
in 2003 and claimed to be bona fi de
owner of the trade mark SRI PAANDI
during its registration of the mark SRI
PAANDI under classes 30 and 43 in
2005? Or is it the Defendants, the Sri
Paandi Restaurant enterprise and Sri
Paandi Restaurant Sdn Bhd company,
comprised of individuals who are not
the fi ve founders of the original Sri
ABOUT THE
AUTHOR
COUNTRY FOCUS
3 The case of the banana leaf restaurant
Paandi restaurant in Brickfi elds, but
who took over the operations of that
restaurant from the founders and
continue to run operations there?
Ample evidence was adduced by
the Defendants to show that the trade
mark was owned by the original
fi ve founders of the original Sri
Paandi restaurant since ı987 and was
transferred to the subsequent owners
of the restaurant. Unfortunately, the
transfer of the trade mark was verbal
and implied by the parties, and there
was no written agreement to prove
the transfer.
Despite the lack of evidence to
show the transfer of the mark, the
Court found that the Plaintiff was
not the bona fi de owner of the
trade mark SRI PAANDI due to the
following facts revealed during trial:
(i) K Saraswathy from the Plaintiff
company knew when she signed the
statutory declaration declaring that
the Plaintiff was the true owner of
the mark that there was a Sri Paandi
restaurant in Brickfi elds; (ii) her
husband was a part-time worker at
the Brickfi elds restaurant as early as
ı990; (iii) the restaurant in Brickfi elds
was established in March ı987; and
(iv) the Plaintiff was incorporated in
2003 and registered the SRI PAANDI
mark in 2004. These facts prove that
the Plaintiff was neither the fi rst user
nor the author of the SRI PAANDI
mark. The Court thus decided that
the registered SRI PAANDI marks
in classes 30 and 43 were wrongfully
remaining on the Trademark Register
and should be removed. Accordingly,
the claims made by the Plaintiff
were dismissed.
Geetha K
is Director of the Trade Marks and Industrial
Designs Division at KASS International
ipr@kass.com.my
Geetha K has extensive experience in handling
all aspects of trade marks and designs in various
industries, including pharmaceutical, food and
beverage, property development, automotive
and apparel industries, and manages local,
regional and international portfolios.
23

24
itma.org.uk September 2012
What’s on the horizon?
September brings us back to serious subjects such as career
progress and future moves. With this in mind, ITMA asked
industry experts to weigh in on the state of the recruitment
environment for trade mark professionals and employers
What trends are you seeing
– positive or negative – in
trade mark recruitment?
Chris Ball, Senior Consultant,
Sacco Mann: On the plus side,
recruitment activity in trade marks
has risen over the past six months,
with a signifi cant increase in roles
available. This is not something that
can continue ad infi nitum, but indications
are that this remains a buoyant sector
when set against other niche areas of
legal recruitment and other sectors
more generally.
However, employers increasingly
look to fi nd more value for money
from those they recruit. If a two-year
qualifi ed attorney can do a particular
role just as well as a fi ve-year qualifi ed
attorney, and they’re looking for
£ı0,000 less as a salary, they’re more
likely to be offered the job.
Joe Neilson, Director, Career Legal
Limited: It takes courage to predict the
future in this economy. Nevertheless,
we have seen IP maintaining a steady
upward curve and trade marks holding
strong in terms of recruitment hires.
We are optimistic that we will see a
similar pattern over the next ı2 months.
The fi nancial climate has had an
obvious effect on trade mark portfolios
– less work, less recruitment! On a
positive level, there is talent seeking
new opportunities – individuals still
have ambition and demand successful
companies in which to develop
their careers.
Pete Fellows, Managing Director,
Fellows & Associates: There were
not many trade mark positions available
in the second half of 20ıı, but things
appear to have got better in 20ı2. We
have also noticed a fairly recent increase
‘The fi nancial climate has had an obvious e ect on trade
mark portfolios – less work, less recruitment! On a positive
level, there is talent seeking new opportunities – individuals
still have ambition and demand successful companies in
which to develop their careers’
in trade mark attorney positions at
the newly qualifi ed to circa-fi ve-years
post-qualifi ed level, as well as some
fi rms interested in partner-level hires.
This is most evident in London and
we are busier now with respect to
trade marks than we have been
since our launch in 2009.

Edward Jones, Managing Director,
Huntley Spence: It does feel like a
diffi cult market at the moment for
people looking to move jobs. There
are still openings for part-qualifi ed and
recently qualifi ed attorneys, but few fi rms
seem to be recruiting opportunistically
or expanding their trade marks business.
The most valuable bracket remains the
newly qualifi ed attorneys, because fi rms
don’t have to worry about training and
they can acquire someone relatively
cheap whom they can charge out at
a reasonable rate, and who can be
moulded to fi t into the fi rm’s culture.
Interestingly, there are plenty of patent
attorney fi rms looking for a trade mark
attorney in regional locations, to service
local clients and build a trade marks
practice working alongside their patent
attorneys. Similar opportunities exist
with law fi rms to set up a specialist trade
mark fi ling practice. However, in this
particular scenario, those employers often
can’t fi nd what they are looking for
among the candidate pool, owing to the
small number of trade mark attorneys
wanting to work in regional locations
outside London, and the fact that most
attorneys aren’t happy working on their
own or being the fi rst in the door to
get a practice off the ground.
How tough is the market
for in-house roles?
CB Traditionally, there have been more
roles available in private practice than
in-house, and this has continued over
the past year. In-house roles, however,
remain attractive to candidates and thus
those employers looking for in-house
attorneys invariably have a broader
range of candidates to choose from.
There seems to have been a trend
for in-house teams to outsource work
ABOUT THE
AUTHORS
Chris Ball,
Senior Consultant,
Sacco Mann
Joe Neilson,
Director, Career
Legal Limited
to private practice, accounting for the
rise in private practice opportunities at
the expense of in-house roles. This may
change, however, and even reverse as
confi dence returns to the market and
work is brought back in-house.
JN Many candidates are eager to
explore in-house roles, but the
availability of these roles is rare.
Opportunities over the past year, in our
experience, have been on a contract
basis, because large companies can
adapt very quickly to the economy –
they will manage a budget and can cut
the recruitment spend across a whole
company with immediate effect. Private
practices are also squeezed as clients are
being prudent in the current market,
perhaps in-sourcing their trade mark
portfolio. A trade mark attorney will
nevertheless think very carefully before
leaving the safe haven of their present
fi rm, unless their work is diminishing.
PF In general, there are far more
private practice positions available
than in-house ones. If anything, this
has been driven by corporate cutbacks,
which has perhaps meant that work
that would previously have been kept
in-house is now being outsourced.
EJ A move in-house is still attractive
to many attorneys, particularly in
preference to a role with a remit
for business development in private
practice. However, there aren’t that many
companies with in-house teams, and
those attorneys that are working in good
roles in-house rarely leave their posts.
Have you seen a di erence
between salaries in London
and the regions?
CB There is a noticeable difference
in the salary levels between London
and the regions (see table, page 26).
Pete Fellows,
Managing Director,
Fellows & Associates
RECRUITMENT
It should be noted that for those
working in legal fi rms, this difference
is far less pronounced than in the
legal sector, where there is a marked
difference between the level of
earnings in London and the regions.
London continues to set the upper
benchmark and salaries are placed
under greatest scrutiny in Scotland.
JN We have seen the highest salaries
on offer in London, with Wales, the
South West and South East of England
in the next tier. Scotland, the North
West and North East of England see
candidates earning least for positions.
In general, the highest paying areas are
the areas in which there is a greater
demand for candidates.
PF Not particularly. Scotland can
be a little lower than England (a
small percentage difference), but
trade mark attorneys mainly earn
the same irrespective of their location,
so working outside London can be
fi nancially benefi cial due to lower
living costs.
EJ This depends on the fi rm (and its
client base). Local fi rms will probably
pay a bit less and expect people to take
into account location and cost of living
in joining them. However, there are
other regional fi rms – often fi rms with
several offi ces, including a London
offi ce, or fi rms that actively compete
with the London fi rms for the larger
clients or overseas work – whose pay
will be on a par with London practices.
How quickly are vacancies
being fi lled?
CB The ideal time to fi ll a role can
be four to six weeks. This includes
one to two weeks to search and
advertise the role, two to three weeks
to conduct two rounds of interviews,
Edward Jones,
Managing Director,
Huntley Spence
25
25

26
itma.org.uk September 2012
‘Over the past few years, the rise of the commercial IP
attorney has been noticeable. Our advice to attorneys
at all levels is to consider your future position – the
sector’s top earners are the commercially minded,
business-savvy attorneys who are winning new clients’
and a week or so to select the preferred
candidate, offer and fi nalise all the
details. In reality, this often takes longer
depending on the availability and
suitability of candidates, so advice
to those looking to recruit is to
consider the picture two or three
months forward and if you feel you
will need someone, prepare to recruit
and instruct your agent this far in
advance. Most candidates will have
between one and three months’ notice,
so employers should also factor this in
when planning recruitment strategy.
Partnership recruitment can take
up to six months as it often includes
drafting and scrutiny of a business plan,
and discussions around potential
following. Notice periods for partners
are usually between six to ı2 months.
On the candidate side, expectations
often move during a job search
depending on availability of roles, a shift
in candidate perceptions or a change in
personal circumstances. The one aspect
candidates are often unrealistic about is
timing, and they often wait until they
really cannot stand to walk through
the door of their current employer
or have already been made redundant
before registering. Even if you are only
considering a move, be registered with
your agent and visible to them. Having
an ongoing dialogue about opportunities
and what that could mean for you as
a candidate is important in assessing
the options and knowing about them.
Knowing about alternative roles will
also allow you to compare these
with your current position.
JN Fully qualifi ed positions are
generally fi lled quite quickly – given
the attorney is qualifi ed, it is easy to
ascertain the depth of their experience
and the cultural fi t and commercial
expectations. Part-qualifi ed positions
are at an interesting stage whereby the
new qualifi cation system will produce
qualifi ed attorneys with relatively little
or no commercial experience under
their belt.
PF I don’t think there is an easy answer
to this – it depends on what position
the fi rm wants to hire, the availability
of candidates, the attractiveness of
the position, its location, etc. There
are good candidates to be found,
so it is probably a little easier to
recruit trade mark attorneys than
patent attorneys.
EJ This really depends on what the
fi rm is looking for. If it is simply a
capable attorney, for example because
they are busy or because someone has
handed in their notice, they can usually
fi nd someone within a couple of
months. If, however, they want a really
top-quality trainee, or an attorney with
the all-round skillset to be a business
builder, it can take six to ı2 months
for the right person to come along.
What is driving candidates
to seek a move?
CB Common among the reasons
for moving on include: a desire to
capitalise on becoming newly qualifi ed,
dissatisfaction with salary levels, concerns
about the level of work being handled
and a desire to move sector (private
practice to in-house or vice versa). In
addition, attorneys are increasingly
considering multiple moves as a way
of developing their career as they seek
the best fi t for them, rather than being
satisfi ed with the fi rst place they work in.
One reason often cited by candidates
and which is unique to trade mark
attorneys is the feeling of being a poor
relation to other professions – either
patent professionals in an IP fi rm or
legal professionals in a legal practice.
JN The most commonly cited reason is
the desire to achieve promotion or a
more senior standing in a new fi rm,
perhaps a newly qualifi ed wanting to
be perceived as a qualifi ed attorney by
their peers in a new fi rm, as opposed to
a relatively junior fee-earner in their
present fi rm.
PF It is generally a lack of autonomy
and a desire for career advancement
that drives decisions. Salary as an end
in itself is less of a driving factor (unless
an attorney is particularly underpaid
by their current fi rm). Attorneys are
well aware that the path to partnership
requires business development and
networking experience, as well as
having one’s own client portfolio if
possible; therefore fi rms that limit
this are more likely to have diffi culty
retaining staff.
EJ Trade marks is a career where,
at least in the training years, job
satisfaction is often almost entirely
dependent on one person. Trainees
can move, therefore, if they don’t
click with their supervisor, or if they
have other frustrations with their
general learning and development.
Increased exposure to clients can
sometimes be appealing, but most
trainees will be trying to fi nd
someone with whom they have
a better working relationship, or
to get exposure to different types
of work.
Money is not usually a factor
prior to qualifi cation. Once
qualifi ed, attorneys start to look
for the opportunity to work more
autonomously, to do more strategic
and complex work, and to be given
TRADE MARK SALARIES: WHAT TO EXPECT?
CAREER LEGAL SACCO MANN FELLOWS & ASSOCIATES
SALARY (AVERAGE) (£) UK-WIDE LONDON/REGIONS
Trainee Trade Mark Attorney 22,500-32,000 26,800/23,875 25,000-30,000
Part-Qualifi ed Trade Mark Attorney 32,000-43,500 37,650/31,250 30,000-45,000
Newly Qualifi ed Trade Mark Attorney 43,500-54,000 51,888/40,000 50,000-55,000
3/4 years’ post-qualifi cation experience 59,500-75,500 (Associate) 63,277/45,900 65,000-75,000
5 years’ post-qualifi cation experience 66,500-100,000 (Snr Assoc) 77,850/61,400 (Snr Assoc) 75,000-80,000
Salaried Partner 85,000+ 103,200/71,750 110,000-180,000
Trade Mark Administration Manager 36,000-59,000 n/a n/a
FOR ADDITIONAL SALARY SURVEY INFORMATION SEE SACCOMANN.COM, CAREERLEGAL.CO.UK AND FELLOWSANDASSOCIATES.COM/SURVEY

more responsibility with clients.
Naturally, this is always something
an employer has to weigh up as
they assess someone’s capabilities.
However, for many qualifi ed attorneys,
if these things don’t seem to be
changing after a few years, either
because of the people above them
or because of the ethos of the fi rm
in general, these are the main things
that can provoke a move.
Another thing that will make
an attorney move once they are
qualifi ed is better partnership or
career progression prospects. Most
attorneys in private practice still
want to become partners. However,
the recession has had an impact here,
too. With clients not instructing as
much work and fi rms struggling to
keep up profi ts, there seems to be less
access to partnership for qualifi ed
attorneys than there may have been
in the past. Firms are becoming
more stringent on the criteria for
new partners, and again it is those
attorneys who are capable of generating
work, including new business, who
are more likely to be offered the
partnership they want.
What factors or
training can improve
a candidate’s options?
CB Over the past few years, the rise
of the commercial IP attorney has
been noticeable. Our advice to
attorneys at all levels is to consider
your future position – the sector’s
top earners are the commercially
minded, business-savvy attorneys
who are not only doing great technical
work but winning new clients as
well. As far as additional training,
a Litigator’s Certifi cate certainly
adds weight to a CV, but we are yet
to get briefed on roles that require
this as standard.
On average, a £3,000 to £5,000
increase in salary can be expected
for a candidate with the ITMA
Administrators’ Course. Job descriptions
will often say something like: “ITMA
Administrators’ Course preferred.”
This has to be viewed in the overall
context of the CV – experience,
level of responsibility and where
the candidate is currently working.
However, the ITMA course adds an
accreditation to the CV, which gives
an employer confi dence in it. In short,
it increases the chances of being called
for interview.
WHAT DICTATES AN INCREASE IN SALARY?
INDIVIDUAL PERFORMANCE 26%
JN To weigh in on some of the
specifi c training mentioned, a holder
of the Litigator’s Certifi cate will, in my
experience, be rewarded with a higher
salary. The ITMA certifi cate does not
necessarily mean the candidate will
attract a higher salary, but a fi rm may
suggest that criteria for a given vacancy
must include that successful candidates
have the ITMA accreditation. In
doing so, they are therefore seeking
an administrator with a higher level
of attainment in trade mark knowledge.
However, not all fi rms offer the course
to their administrative staff, so it would
not be correct to say that a candidate
who completed the ITMA course
will be a higher-calibre candidate.
PF From a practical point of view,
candidates can sometimes benefi t
from interview coaching, particularly
if they have been with one employer
since graduation. In addition, more
fi rms of patent and trade mark
attorneys seem to be offering
litigation as part of their service,
so I expect recognition for the
Litigator’s Certifi cate to increase.
LONDON
REGIONS
COST OF LIVING 26% BUSINESS PERFORMANCE 48%
COST OF LIVING 35% BUSINESS PERFORMANCE 35% INDIVIDUAL PERFORMANCE 30%
RECRUITMENT
SOURCE: SACCO
MANN PATENT & TRADE
MARK SURVEY 2011/12
EJ Although trade marks do have
commercial relevance, at its heart
the job is a legal one, based on
complex procedure and case law.
For new trainees, fi rms therefore
look for an academic record that
would indicate the intellectual
capacity required to master the legal
side of the job. The most valued
trainees are those who communicate
well, who will research the advice
they are drafting thoroughly, but
who make clear what they understand
and what they don’t understand,
and endeavour to discuss the fi ner
points with their supervisor.
How many people is
the average candidate
competing with?
CB Typically, we see four candidates
called for fi rst stage interviews and
two for second stage, with the preferred
candidate going in for a less formal
third stage.
Higher-level candidates (partners
or potential partners) are different
as these are often opportunistic hires,
27

28
itma.org.uk September 2012
driven by the availability of higherlevel
candidates and their potential
to add value or bring work. Thus
recruitment at this level is often
a more bespoke process driven
by the circumstances of the
individual candidate.
The number of CVs is diffi cult to
determine or average. Trade marks has
typically been a candidate-heavy sector.
This may (falsely) give the impression
that recruiting can be easy. However,
the challenge is often one of managing
client expectations versus the reality
of available candidates. The support of
an IP recruitment specialist is important
in assessing available candidates and
current trends in the IP recruitment
market to fi nd a candidate who is
in line with their expectations and
recruited in an effi cient and
informed manner.
JN It doesn’t seem to be a case of
candidates competing for a position, it
is more a case of fi rms competing for
candidates… it is a candidate’s market
at present.
PF At the mid-level (newly qualifi ed
to circa four years post-qualifi ed) where
the majority of the recruitment takes
place, there are something in the region
of three to fi ve applicants competing
for a position (being interviewed by
a fi rm and with a genuine chance of
securing the position), with perhaps
another fi ve to ı0 applications from
unsuitable candidates.
What are employers
looking for?
CB The ability to hit the ground
running – the sector has become
increasingly busy and thus the
pressure on time to invest in training
is greater. The ability to step into a
new role and pick up a caseload from
day one is crucial for many fi rms.
This can be driven by a signifi cant
increase in work or the desire to see
a return for their investment at the
earliest opportunity.
More recently, the imminent
(and fi nal) change over to the new
qualifi cation system for trade mark
attorneys has resulted in several
newly qualifi ed or soon-to-qualify
opportunities on the market, as
employers seek to minimise their
exposure to more expensive course
fees. Longer term, we have already
started to see fi rms introduce
contractual clawback provisions
to protect their investment (ie the
SALARY X £1,000
AVERAGE SALARY BY YEAR OF FIRST QUALIFICATION
100
90
80
70
60
50
40
30
20
10
-
course fees) in trainee trade mark
attorneys if that the attorney leaves
shortly after qualifi cation.
For many, the team fi t and cultural
fi t for the business will often trump
the level of technical expertise. We
often tell clients and candidates that
it is “not about the best candidate,
but the most appropriate candidate!”
JN They are looking for candidates
they would feel comfortable putting
in front of their clients. Another
factor is that fi rms now have a much
greater focus on business development.
Candidates need to have experience at
being much more client-facing than
they used to. Every fi rm wants to
attract attorneys who will add value.
If a qualifi ed trade mark attorney can
bring a client following, that attorney
is going to be courted by many fi rms.
PF At the moment, business
development and networking skills are
coming to the fore. In other words, the
ability to do these tasks rather than
having a client or contact following.
EJ The recession and the effect it
has had on trade mark fi rms, as well
as their clients, has caused fi rms
to place a higher store in fi nding
well-rounded individuals – trainees
who, once they’ve mastered the
1996 or earlier
1997 to 2001
2002 to 2003
2004 to 2005
2006
2007
2008
2009
2010
2011
2012
2013
2014
2015
2016
2017 or later
SOURCE: REPORT OF THE 2012 SALARY SURVEY OF THE IP PROFESSION IN THE UK, FELLOWS AND ASSOCIATES
‘Firms do recognise that there are very few rainmakers
around. But they are looking for someone who is at least
capable of managing and communicating well with clients,
building a relationship and spotting obvious opportunities
to generate more work out of clients’
technical side of trade mark work,
will then be able to grow into the
client-facing side of the job.
At a qualifi ed level, fi rms look
for in-depth technical knowledge
and someone who they are confi dent
will give sound advice, who
can handle a caseload relatively
autonomously, but also converse
with their colleagues and continue
to learn on more complex matters.
Firms do recognise that there
are very few rainmakers around.
But they are looking for someone
who is at least capable of managing
and communicating well with clients,
building a relationship and spotting
obvious opportunities to generate
more work out of those clients, even
if they are not going out trying to
bring in the next Apple.
At fi ve or more years qualifi ed, fi rms
are increasingly asking for a following,
given how expensive attorneys start
to get. The reality is, however, that
not many attorneys at that level have
a following or a track record of business
development. Usually partners will
continue to control client relationships,
and even where those relationships
are shared, it takes a lot for a client to
move all of its work and its records.

Case in point: C-98/11 P, Chocoladefabriken Lindt
& Sprüngli AG v OHIM, CJEU, 24 May 2012
Familiar form still
falls short of CTM
Only EU legislative reform would
help Lindt’s shape mark case, argues
Robert Cumming of Walker Morris
This is an appeal by a Swiss
confectioner (“Lindt”) against
a decision to refuse protection as
a Community Trade Mark for
the shape of a rabbit in respect of
“chocolate and chocolate products”.
Refusing the appeal, the Court of
Justice of the EU (CJEU) upheld the
decision of the General Court, the
Fourth Board of Appeal and OHIM.
Lindt’s appeal to the CJEU was that,
essentially, the mark was not devoid of
distinctive character under Article 7(ı)
(b) of Council Regulation (EC) 40/94
and that OHIM’s analysis in reaching
the opposite conclusion was based on
conjecture. In addition, Lindt appealed
under Article 7(3) on the grounds that
the mark had inherent distinctive
character in ı5 of the 25 Member
States that formed the EU at the
time the application was fi led.
It is well-established case law
that the assessment of distinctiveness
under Article 7(ı)(b) should be applied
consistently whether the mark is a
shape, a word or a logo. However, the
registration of shape marks has been
notoriously diffi cult in comparison
to a fi gurative mark. Some justifi cation
might be found for this due to the
fact that consumers are less likely to
perceive a shape as an indication of
commercial origin, particularly where
it does not differ signifi cantly from
the norms or customs of the sector.
The CJEU held that the analysis
of the mark by the General Court
was consistent with the criteria
established by settled case law, namely
that the features of the mark were
typical of those of similar products
and that, on a global assessment, none
of them were suffi ciently different
individually or in aggregate such that
a consumer would perceive them as
being an indication of the origin of the
goods. As a consequence, the CJEU
was unable to apply its own evaluation
of the facts because to do so would go
beyond the scope of a review in the
context of an appeal. The CJEU also
noted that registrations in Member
States are only one factor that may be
taken into account, and OHIM is under
no obligation to follow the assessment
of the competent national authorities.
In respect of its appeal under Article
7(3), Lindt argued that where a mark has
inherent distinctive character by virtue
of registrations in ı5 out of 25 Member
States covering 75 per cent of the EU’s
population, there should be an inference
that the mark has acquired distinctive
character throughout most of the EU.
The CJEU reiterated that a mark
may only be registered under the
Article 7(3) proviso if the conditions
for registration are satisfi ed across the
entire area in which the objection
applies. For shape marks, this effectively
means all parts of the EU.
The CJEU again gave short shrift
to the argument that several national
registrations could somehow be
aggregated to entitle a mark to lurch
over the threshold for registration
as a Community Trade Mark. This is
unlikely to change, as a linear emphasis
on political boundaries gives undue
weight to smaller jurisdictions and
omits large economic areas. Yorkshire,
for example, has a population similar
to the Republic of Ireland and larger
than that of seven EU Member
States, but has no local registry.
Instead, the CJEU reiterated the
unitary nature of the Community
Trade Mark and the emphasis on
the EU market as a whole. In Lindt’s
case, registered protection across
75 per cent of the population
of the EU was insuffi cient.
In its Study of the Overall Functioning
of the European Trade Mark System,
the Max Planck Institute for
CASE COMMENT
ABOUT THE
AUTHOR
Robert Cumming
is a Registered Trade Mark
Attorney and Solicitor at
Walker Morris
robert.cumming@
walkermorris.co.uk
Robert advises clients in the
beauty, fashion and dance
music industries on the
protection of their IP Rights.
Intellectual Property and Competition
Law acknowledged that for some
marks it is virtually impossible to
demonstrate acquired distinctiveness
(at 3.77). The report proposed that
acquired distinctiveness should be
considered to be present if the applicant
can show substantially exclusive use in
the relevant territory without being
forced to submit proof of market
share or the amount of investment
in promoting the mark.
Despite the common diffi culty
faced by brand owners in Lindt’s
position, the case law seems
entrenched and it appears likely
that only legislative reform will
allow a relaxation of the position.
It is submitted that such reform
may allow more rapid harmonisation
of the internal market than under
the present policy.
29

30
itma.org.uk September 2012
Case in point: C-100/11P, Helena rubinstein SNC & L’Oréal SA v
OHIm & Allergan Inc, CJeU, 10 may 2012
Smooth sailing for Botox CTM
Kate Swaine of Wragge & Co LLP sets out the facts in a case
of a well-known health and beauty name
In considering an appeal from the
General Court’s decision under
Articles 8(ı)(b) and 8(4) and Article 52
of the Community Trade Mark (CTM)
Regulations (Council Regulation (EC)
207/2009), the Court of Justice of the
EU (CJEU) again confirmed the
evidential requirements for the taking
of unfair advantage and detriment to
distinctive character and reputation.
The CJEU, however, did not make a
finding as to whether a trade mark
applicant may include an element
shared with an earlier mark where the
element is descriptive.
Application timeline
In May 2002, Helena Rubinstein
filed an application for a CTM for
the word BOTOLIST, while L’Oréal
filed an application for a CTM
for the word BOTOCYL. Both
applications were in class 3 including:
“Perfumes, eau de toilette; bath
and shower gels... cosmetics among
other creams, milks, lotions, gels
and powders.” Both marks proceeded
to registration.
Allergan is the registered proprietor
for CTM and national marks in both
figurative and word form for BOTOX
in class 5, including “pharmaceutical
preparations for the treatment of
Allergan’s UK mark 2255854

‘In response to the Appellants’ argument, the CJEU concluded
that, as it has no jurisdiction to establish the facts or examine
the evidence in support of those facts in the absence of a clear
distortion of the evidence, the argument had to be rejected’
neurological disorders” (see mark
on page 30). Its earliest mark was
registered in April ı99ı. Allergan
sought the invalidity of BOTOCYL
and BOTOLIST on the basis of its
earlier marks.
OHIM rejected both applications for
invalidity. OHIM’s Board of Appeal then
upheld the appeals, although there was
found to be no likelihood of confusion.
fighting back
Helena Rubinstein and L’Oréal sought
the annulment of the contested
decisions by the General Court, and
when the Court rejected the actions
the matters were appealed to the CJEU.
The appeal was based on a number of
grounds, which included the following:
• the General Court wrongly based its
findings on two UK marks owned by
Allergan that did not form part of
OHIm’s decision. the Appellants
argued that OHIm’s decision was based
on a Ctm for the figurative sign bOtOX.
• the General Court did not consider
whether the bOtOX marks enjoyed a
reputation with both the general public
and healthcare professionals.
• the General Court wrongly found
a link between bOtOX, bOtOLISt
and bOtOCyL based on the common
element “bot” or “boto”, which the
Appellants argued is descriptive
or generic.
• the General Court wrongly found there
was a risk of detriment. the Appellants
claimed that they did not seek or intend
any association with bOtOX and nor
could such an association be made as
the bOtOX mark is registered in relation
to pharmaceutical products issued only
on medical prescription.
CJEU findings
Dealing first with the basis on which
the assessment of the application was
made, OHIM had based its decision on
an earlier figurative CTM for BOTOX.
The Board of Appeal then found that
Allergan had acquired a reputation in
figurative and word marks for BOTOX,
both Community and national marks.
In view of this, the CJEU concluded
that the General Court had legitimately
confined its review to earlier UK marks
for BOTOX on the basis that the UK
was the territory in respect of which
Allergan had produced most evidence.
With regard to consideration of the
reputation of BOTOX, the CJEU
concluded that the Appellants had
misread the judgment of the General
Court. The General Court had
examined the promotion of BOTOX
through both scientific articles and the
“general-interest press”. Further, the
CJEU agreed with OHIM that “if a
trade mark enjoys a reputation with the
general public then, in principle, it is
assumed to be known to professionals”.
The General Court had carried out an
analysis of the reputation of the mark
with each of the two classes of person
comprising the relevant public and was
also correct in finding that BOTOX
had a reputation in the UK in relation
to “pharmaceutical preparations for the
treatment of wrinkles”.
In response to the Appellants’
argument as to the probative value
of the evidence of reputation, the
CJEU concluded that, as it has no
jurisdiction to establish the facts or
examine the evidence in support of
those facts in the absence of a clear
distortion of the evidence, the
argument had to be rejected.
Continuing the question of
appraising factual evidence, the CJEU
stated that the question of whether or
not “bot” or “boto” is a descriptive
prefix (being derived from botulinum
toxin) is also a factual assessment and
one that did not fall in its jurisdiction.
The CJEU reiterated that appeals lie
on points of law only and rejected the
ground of appeal that the General
Court erred in finding a link between
BOTOX and the disputed marks.
With regard to the legal (and most
interesting) question of whether it is
permissible for an applicant for a trade
mark to include in a mark an element
that forms part of an earlier mark to
the extent that the common element
is descriptive, the CJEU held the
ground of appeal ineffective as the
General Court had not found “bot”
CASE COmmeNt
ABOUT THE
AUTHOR
Kate Swaine
is a Director at
Wragge & Co LLP
kate_swaine@wragge.com
based in the ip team,
kate specialises in the
enforcement and clearance
of brands and designs.
or “boto” to be descriptive and
the matter was a factual appraisal.
Accordingly, no conclusion was
reached on this question.
In considering detriment, the
CJEU reiterated that the proprietor
of an earlier mark must prove that
there is a serious risk that injury will
be done to the earlier mark in the
future, as stated in Intel Corporation
[2008] ECR ı-8823. The General
Court was therefore correct in stating
that the proprietor must not produce
evidence of actual harm but must:
“Adduce prima facie evidence of a future
risk, which is not hypothetical, of
unfair advantage or detriment, and
such a conclusion may be established,
in particular, on the basis of logical
deductions made from an analysis
of the probabilities and by taking
account of the normal practice in
the relevant commercial sector, as
well as all the other circumstances
of the case.”
The CJEU concluded that it was
an overall assessment of the factors that
led the General Court to determine
that the disputed marks sought to take
advantage of the distinctive character
and repute of the BOTOX marks. It is
not for the CJEU to review a factual
assessment. The appeal was rejected.
31

32
itma.org.uk September 2012
Case in point: t-435/11, Universal Display Corp v OHIm,
General Court (eighth Chamber), 2 may 2012
no light for Universal appeal
Its invented term has passed into common
parlance, leaving no room for distinctiveness.
Nicole Giblin of Withers & Rogers LLP reports
In September 2009, Universal
Display Corp filed an International
Registration for the word sign
UniversalPHOLED and designated the
EU. The Application covered “chemicals
for use in the manufacture of organic
light-emitting devices and other
organic electronic devices” in class ı.
On examination, OHIM raised
objection under 7(ı)(b) and (c)
of Council Regulation (EC)
207/2009, namely that the mark
UniversalPHOLED was made up of
two descriptive words that together
did nothing more than convey clear
and direct information about the
kind and quality of the goods applied
for. In particular, it held that the
word UNIVERSAL indicated that
the goods were capable of an “allround
application” and that the word
PHOLED was a known abbreviation of
photophorescent organic light-emitting
diodes. Overall, the relevant consumer,
who in this instance would be an
industry specialist, would consider the
mark to be a description of the materials
used in the manufacture of the goods.
Universal was unsuccessful in its
initial arguments and appealed to the
Second Board of Appeal. However,
the Board was unwilling to accept
that UniversalPHOLED would not
immediately inform the consumer
about the kind and quality of the
goods covered by the application.
Unwilling to back down, Universal
appealed to the General Court, claiming
that the mark was not descriptive of
the goods concerned and did, in fact,
hold the necessary degree of distinctive
character required for registration. In
particular, Universal claimed that the
word “Universal” was a direct reference
to its company name, which was well
known in the sector. Furthermore,
Universal outlined that it had a large
family of Universal prefixed marks and
that the consumer would immediately
recognise UniversalPHOLED as
another branch of goods provided
by the parent company.
Universal went on to argue that the
mark as a whole was not descriptive,
as photophorescent organic lightemitting
diodes are not chemicals and
are not proper to class ı. Instead, they
are proper to class 9 and so use of the
abbreviation PHOLED for goods in
class ı could not possibly be descriptive.
Finally, Universal argued that it
is the market leader in producing
photophorescent organic light-emitting
diodes and had coined the abbreviation
PHOLED to make the mark more
distinctive. Universal argued that because
it created the word PHOLED, and
because of its extensive reputation in the
field, the consumer would immediately
recognise that UniversalPHOLED
referred solely to Universal’s goods.
The General Court was unwilling to
accept any of Universal’s arguments. It
was held that although Universal may be
the company name, in the context of the
trade mark application, the dictionary
meaning of the word could not be
ignored. While Universal’s family of
“Universal” marks were acknowledged,
they could play no part in the current
decision as OHIM must examine a trade
mark based on the Regulation, and not
on the basis of previous practices.
Furthermore, although Universal may
have coined the word PHOLED, it had
not sought trade mark protection for the
word at the time it was created. Since
then, the word PHOLED had become
understood in the industry to have a
specific meaning, and therefore lacked
distinctive character. Similarly, Universal’s
argument that its company name was
well known and that it had a reputation
for photophorescent organic lightemitting
diodes, it had not opted to show
that the mark applied for had acquired
distinctiveness through use, nor had it
provided evidence of such a reputation.
This argument was therefore fruitless and
had no standing in the matter at hand.
Finally, although photophorescent
organic light-emitting diodes may be
proper to class 9, the General Court
held that chemical substances in class ı,
Decision in brief:
The General Court has upheld the
Second Board of Appeal’s decision
that the mark UniversalPHOLED was
descriptive of photophorescent organic
light-emitting diodes with an all-round
application. Although the Applicant
had created the acronym PHOLED, it
had not obtained trade mark protection
for the word PHOLED or attempted to
show acquired distinctiveness through
use. Although the Applicant had a
family of UNIVERSAL marks, the word
“UNIVERSAL” could not be considered
to have distinctive character.
such as phosphorus, are used in the
manufacturing of photophorescent
organic light-emitting diodes.
Furthermore, it was clear from Universal’s
list of goods in class ı that protection
was required for substances used to
manufacture organic light-emitting
devices, which includes photophorescent
organic light-emitting diodes.
In the concluding paragraphs, the
General Court upheld the Second
Board of Appeal’s evaluation that
UniveralPHOLED was descriptive
of the goods concerned and lacked
distinctive character. Universal
was instructed to pay costs.
ABOUT THE
AUTHOR
Nicole Giblin
is a Trainee Trade
Mark Attorney at
Withers & Rogers LLP
ngiblin@withersrogers.com
nicole joined Withers & rogers
llp in march 2011 and spends
time in both the bristol and
leamington spa offices.

Case in point: t-273/10, Olive Line International v OHIm – Umbria
Olii International (O LIVe), General Court, 22 may 2012
Olive marks share
common flavour
Global appreciation tips the balance
towards similarity, says Richard
Burton of D Young & Co
In 2007, Olivella Srl filed a
Community Trade Mark
(CTM) application in classes 3
and 44 for the figurative O LIVE
mark shown below (figure ı).
The application (which was later
acquired by Umbria Olii International
Srl) was opposed under Article 8(ı)(b)
of Council Regulation (EC) 207/2009
(“the CTM Regulation”) by Olive Line
International SL, based on its earlier
rights (all of which covered goods in
class 3), namely a Spanish national
registration for the word mark OLIVE
LINE, and CTM and Spanish national
registrations for the figurative mark,
figure 2, shown below.
Board of Appeal decision
OHIM and subsequently the Board of
Appeal found the goods and services
applied for to be identical and similar
to those covered by the earlier marks.
Comparing the marks, the Board
of Appeal took the view that the
only common element between the
applied-for mark and the earlier word
mark, OLIVE, described an important
characteristic of the goods concerned,
namely their ingredients. It was
considered that the word OLIVE would
be understood throughout the relevant
territory, since it is an English word and
because identical or similar words exist
in other languages of the EU.
The second element of the earlier
mark, LINE, would, according to the
Board of Appeal, be perceived by the
relevant consumers as describing a line of
products. The Board of Appeal therefore
Contested marks
Figure 1 Figure 2
found that the distinctive character of
this mark was only in the combination
of the words OLIVE and LINE. The
descriptive and non-distinctive character
of the mark and the lack of similarity
to the applied-for O LIVE figurative
mark was held to be sufficient to
exclude a likelihood of confusion.
General Court appeal
The decision was appealed to the
General Court, which overturned the
Board of Appeal’s decision and found
that there was a likelihood of confusion
under Article 8(ı)(b) of the CTM
Regulation in respect of the identical
and similar goods in class 3, including
cosmetics, and most of the hygiene and
beauty care services in Class 44, which
were held to be similar.
The Court found that there was
an average degree of visual similarity
between the marks and that the word
element OLIVE in the applied-for
mark would be remembered by
consumers. The Court said that
consumers might either fail to notice
the differences between the marks or
incorrectly believe that the goods and
services applied for came from the same
undertaking or at least economically
linked undertakings.
With regard to the device elements in
the applied-for mark, the Court found
that the colours and background served
only a decorative function. The phonetic
similarity between the marks was
therefore held to be more significant
than the visual similarity. Contrary to the
Board of Appeal’s decision, the Court
held that, given that the element OLIVE
appeared at the beginning of the earlier
mark, that element could not be ignored.
Further, it said the Board of Appeal
was wrong to find that there was no
conceptual similarity between the marks
and that the weak distinctive character of
the word element OLIVE did not mean
that there was no similarity conceptually.
CASE COmmeNt
ABOUT THE
AUTHOR
richard burton is a
Trade Mark Attorney at
D Young & Co LLP
rpb@dyoung.co.uk
richard joined d young &
co llp in 2006 and recently
became fully qualified. richard
specialises in trade marks
and designs, and deals
with all aspects of portfolio
handling, prosecution and
contentious matters.
Overall, the General Court found
that the weak distinctive character of
the earlier word mark could not play
a decisive role in the assessment of a
likelihood of confusion. This was found
to be only one factor among many
involved in the global appreciation test.
The Court concluded that there was a
likelihood of confusion in relation to
the majority of the goods and services
covered by the application (in classes 3
and 44) and annulled the Board of
Appeal’s decision.
This case serves as a reminder that
even in a case involving an earlier mark
of weak distinctive character, there
may still be a likelihood of confusion
where the marks are similar and the
goods or services are identical or
closely similar.
33

34
itma.org.uk September 2012
Case in point: O/160/12, Associated Newspapers Limited v mIP metro
Group Intellectual Property GmbH & Co KG, UKIPO, Appeal to the
Appointed Person Amanda michaels, 11 April 2012
War of words
Anne Wong of MW Trade Marks remarks
on a case that once again emphasises the need
to ensure registration terms are right on target
This is an appeal against the UKIPO
decision in consolidated proceedings
in which (a) Associated Newspapers
Limited (“Associated”) opposed
registration of a stylised mark, METRO,
by MIP Metro Group Intellectual
Property GmbH & Co (“MIP”), and (b)
MIP sought revocation of Associated’s
earlier marks. The Hearing Officer
(“HO”) decided that the revocation
proceedings failed almost in their entirety,
and upheld the opposition. MIP appealed.
Back story
MIP filed a Community Trade Mark
application for METRO, as shown below.
The application was opposed by a
third party and, as a result, was converted
to a UK national application, number
2356356. The application covered goods
and services in two classes: ı6 – goods
made from paper, printed matter,
instructional and teaching materials in
form of printed matter; 4ı – publication
of books, newspapers and periodicals.
Associated opposed under sections 5(ı),
5(2)(a) and 5(2)(b) of the Trade Marks
Act ı994 on the basis of two earlier UK
registrations for METRO in class ı6:
Number ı084267 – magazines
(publications), but not including
magazines relating to city life or travel.
Number ı586405 – books,
magazines, printed publications and
diaries, all included in Class ı6; but not
including timetables and not including
any such goods relating to railway
The mark
Associated Newspapers Limited
opposed registration of this mark
by MIP Metro Group Intellectual
Property GmbH & Co.
systems; or printed publications for use
in operating, servicing, and/or repairing
motor vehicles, vehicle handbooks
and vehicle parts catalogues.
The earlier registrations were
more than five years old, so MIP
put Associated to proof of use of the
marks. The HO found in favour of
use on books, magazines and printed
publications. MIP’s revocation action
against number ı084267 failed, and
Associated was entitled to retain its
specification. MIP’s revocation action
against number ı586405 succeeded,
but only in respect of diaries.
The HO found in favour of
Associated’s opposition in its entirety.
Grounds of appeal
MIP appealed on the grounds that:
a) the HO erred in finding that use of
Associated’s mark on certain types
of books was sufficient to justify the
retention of “books” in the specification;
b) the HO was wrong to say that “printed
publications” could not be divided save
in an arbitrary manner and so failed to
formulate a fair specification reflecting
Associated’s use on a limited number
of types of publication;
c) the HO was wrong to say that it was
“self evident” that “goods made from
paper” in mIP’s specification could
include magazines, books and printed
publications such as newspapers;
d) the HO was wrong to find that
“instructional and teaching materials
in the form of printed matter” were
“printed publications”; and
e) the HO was wrong to find that
“publication of books” and “books”
were similar goods or services.
The Appointed Person (“AP”) was
referred to several authorities, including
NIRVANA BL O/262/06, in which
Richard Arnold QC concluded that,
in arriving at a fair specification, the
Tribunal should strike a balance between
the respective interests of the proprietor,
other traders and the public, having
regard to the protection afforded by the
registered mark. The Tribunal should
inform itself about the relevant trade and
decide how consumers would describe
the goods and services in relation to
which the mark has been used, and
it is for the Tribunal to frame a fair
specification, not the parties.
With this in mind, the following
decisions were made.
Books – MIP argued that the term
books should have been reduced to
“guide books for travel and for city pubs,
bars and clubs”. Associated argued that
evidence of use on a guide to events, as
well as travel guides, had been submitted.
According to the test discussed in the
NIRVANA case, the AP was satisfied
that this justified the retention of
“books” as a description of the
goods. This ground was rejected.
Printed publications – MIP argued
that “printed publications” remained
too wide, but did not identify any

sub-category of “printed publications”
appropriate to books, magazines and
newspapers. The AP was of the view that
books, magazines and newspapers are
goods within the description “printed
publications” and that consumers
would describe the goods as “printed
publications”. The term would protect
the proprietor’s interest to be able to
extend their range of goods in the
confines of the registration. The AP held
that there was no error of principle or
material error in the HO’s conclusion.
Goods made from paper – Was the
HO wrong to uphold the opposition
for “goods made from paper”? MIP
appealed the finding that “goods made
from paper” may include magazines,
books and printed publications so that
those goods are identical. The HO
relied on the case Gérard Meric v
OHIM T-ı33/05, which held that an
overlap of identical goods is sufficient
for an opposition to succeed whether
the wider category is in the earlier
CASE COmmeNt
‘this case is a reminder of the danger of relying on
broad terms in a specification. Where a specification
includes individual items, a comparison of each item
will be made with the earlier right, which enhances
the prospect of maintaining some of the items’
or the later specification. MIP argued
that Meric did not remove the need
to perform the assessment of similarity
in relation to the whole range of
goods in the specification. The AP
considered there to be no need
to go further.
MIP submitted that the HO
was wrong to say that it was “selfevident”
that “goods made from
paper” in MIP’s specification could
include magazines, books and printed
publications. The AP concluded that
this was a finding that it was open
to the HO to make and so the
impact of the Meric case is such
as to deem the overlap to affect
the whole of “goods made
from paper”.
Instructional and teaching
materials in the form of printed
matter v printed publications –
The AP found that it was open to the
HO to make the determination that
“instructional and teaching materials
in the form of printed matter” are
“printed publications”.
Publication of books v books –
The HO found that there was a high
level of similarity between “books” and
“publication of books”. The AP found
that there was no error of principle
or material error in the finding that
the service “publication of books” is
complementary and similar to “books”.
ABOUT THE
AUTHOR
Submission of a
revised specification
MIP submitted that the HO was wrong
not to permit it an opportunity to submit
a revised specification of goods made
from paper that did not include printed
publications. No application was made
to the HO to consider an amended
specification. On appeal, no formal
application was made to amend the
specification and no attempt was made
to provide an alternate specification.
The AP found there were several factors
militating against permitting MIP to
amend at that stage, including the fact
that MIP should have addressed this
request earlier and should have been
aware of the risk that the HO would
find the goods to be identical. The AP
decided that it would be inappropriate,
and unfair to Associated, to permit MIP
to extend the opposition by seeking to
amend its specification at that stage.
MIP lost the appeal
on all counts
This case is a reminder of the danger of
relying on broad terms in a specification.
Where a specification includes individual
items, a comparison of each item will
be made with the earlier right, which
enhances the prospect of maintaining
some of the items.
This case warns of the need to include
all grounds of appeal at the outset and
to make any special requests as early as
possible, as late requests can be refused.
Anne Wong
is a Partner at
MW Trade Marks
anne@mwtrademarks.com
anne focuses on trade
mark strategy, clearance,
conflicts and domain
name work for clients with
international interests.
35

36
itma.org.uk September 2012
Case in point: C-406/10, SAS Institute Inc v World Programming Limited,
CJeU, Grand Chamber, 2 may 2012
The problem with programs
Thirteen judges sitting in the Grand Chamber indicate the
importance of this recent ruling on software protection. Charlie
White and Simon Miles of Edwin Coe LLP fill in the details
SAS Institute Inc (“SAS”)
developed certain analytical
software with a core component that
enables users to write and execute
application programs written in the
programming language created
by SAS (“SAS Language”).
World Programming Limited
(“WPL”) lawfully acquired copies
of the Learning Edition of the SAS
software, which it then studied to
understand how the SAS software
functioned. WPL subsequently
developed its own software that
enabled users to execute application
programs written in the SAS
Language. The WPL software emulates
the functionality of the SAS software
to a high degree, although it was not
suggested that WPL had access to the
source code of the SAS software.
Several important areas of
legislation are relevant to the case:
1. Article 1(2) of the Council Directive of
14 May 1991 on the legal protection
of computer programs (91/250/EEC)
– the “Software Directive” – provides
that: “Protection in accordance with this
Directive shall apply to the expression
in any form of a computer program.
Ideas and principles which underlie
any element of a computer program,
including those which underlie its
interfaces, are not protected by
copyright under this Directive.”
2. Article 5(3) of the Software Directive
states: “The person having a right to use
a copy of a computer program shall be
entitled, without the authorisation of
the rightholder, to observe, study or test
the functioning of the program in order
to determine the ideas and principles
which underlie any element of the
program if he does so while performing
any of the acts of loading, displaying,
running, transmitting or storing the
program which he is entitled to do.”
Further, pursuant to Article 9 of the
Software Directive, any contractual
provisions that are contrary to Article
5(3) (among others) are null and void.
3. Article 2(a) of the Directive 2001/29/
EC of the European Parliament and of
the Council of 22 May 2001 on the
harmonisation of certain aspects of
copyright and related rights in the
information society (the “Information
Society Directive”) provides that:
“Member States shall provide for
the exclusive right to authorise or
prohibit direct or indirect, temporary or
permanent reproduction by any means
and in any form, in whole or in part:
(a) for authors, of their works…”
questions referred
In the High Court, Arnold J broadly
agreed with the view taken by
Pumfrey LJ in Navitaire Inc v (ı)
Easyjet Airline Company and (2)
Bulletproof Technologies Inc [2004]
EWHC ı725 (Ch) that Article ı(2) of
the Software Directive did not protect
programming languages, interfaces
or the functionality of computer
programs from being copied. Arnold J
considered, however, that the extent
of protection was not clear and a
reference should be made to the
Court of Justice of the EU (CJEU).
A total of nine questions
were referred to the CJEU by the
High Court, which were helpfully
summarised by the court as follows:

1. Whether Article 1(2) of the Software
Directive must be interpreted as
meaning that the functionality of a
computer program, the programming
language and the format of data files
used in a computer program to exploit
certain functions constitute a form of
expression of that program and may
be protected by copyright in computer
programs for the purposes of
that Directive.
2. Whether Article 5(3) of the Software
Directive must be interpreted as meaning
that a person who has obtained a copy of
a computer program under a licence is
entitled, without the authorisation of the
owner of the copyright in that program,
to observe, study or test the functioning
of that program to determine the ideas
and principles that underlie any element
of the program, in the case where that
person carries out acts covered by
that licence with a purpose that goes
beyond the framework established
by the licence.
3. Whether Article 2(a) of the Information
Society Directive must be interpreted as
meaning that the reproduction, in a
computer program or a user manual
for that program, of certain elements
described in the user manual for another
computer program protected by
copyright constitutes an infringement
of that right in the latter manual.
On these questions, the CJEU
ruled as follows:
First, Article ı(2) of the
Software Directive must be
interpreted as meaning that neither
the functionality of a computer
program nor the programming
language and the format of data
files used in a computer program to
exploit certain functions constitute a
form of expression of that program
and, as such, are not protected by
copyright in computer programs
for the purposes of that Directive.
Second, Article 5(3) must be
interpreted as meaning that a
person who has obtained a copy of
a computer program under a licence
is entitled, without the authorisation
of the owner of the copyright, to
observe, study or test the functioning
of that program so as to determine
the ideas and principles that underlie
any element of the program, in the
case where that person carries out
acts covered by that licence and acts
of loading and running necessary for
the use of the computer program,
and on condition that the person
does not infringe the exclusive rights
of the owner of the copyright in
that program.
And finally, that Article 2(a) of
the Information Society Directive
must be interpreted as meaning
that the reproduction, in a program
or a user manual for it, of certain
elements described in the manual
for another program protected
by copyright can constitute an
infringement of the copyright in the
latter manual if – this being a matter
for the national court to ascertain
– that reproduction constitutes the
expression of the intellectual creation
of the author of the user manual for
the program protected by copyright.
Monopoly concern
At paragraph 40 of its judgment,
the CJEU was concerned that, if the
functionality of a computer program
was allowed to be protected by
copyright, this could mean that ideas
may be monopolised, which would,
of course, be against the wording of
Article ı(2) of the Software Directive.
Further, at paragraph 4ı, the CJEU
pointed to the advantage of other
authors being able “to create similar
or even identical programs provided
that they refrain from copying”.
Rightly or wrongly, this ruling may
mean that manufacturers of original
software will become less willing
to spend money on research and
development of software for Europe.
At paragraph 45, the CJEU
explained that, while the language
and format of data files used in
a computer program might not
be protected under the Software
Directive, they may be protected, as
literary works, by copyright under
the Information Society Directive if
it can be shown that they are their
author’s own intellectual creation (See
Bezpecnostní softwarová asociace v
Svaz softwarové ochrany ([20ı0] CJEU
C-393/09) (“BSA”) paragraphs 44 to
46 and Infopaq International A/S v
Danske Dagblades Forening [2009]
CJEU C-5/08, paragraphs 33 to 37).
In Nova Productions Limited v
Mazooma Games Limited and others,
and Nova Productions Limited v Bell
Fruit Games Limited [2006] EWCA
Civ ı044, the Court of Appeal did not
refer certain questions to the CJEU
relating to arguments about whether
“preparatory design material”
was included in the definition of
“computer program” under the
Software Directive and the extent
CASE COmmeNt
ABOUT THE
AUTHORS
Charlie White
is an Associate and member of
the IP team at Edwin Coe LLP
charlie.white@edwincoe.com
Simon miles
is a Partner and Head
of IP at Edwin Coe LLP
simon.miles@edwincoe.com
to which the Copyright, Designs
and Patents Act ı988 had therefore
correctly implemented the Software
Directive. It is interesting to note that
in both BSA (paragraphs 36 to 37)
and SAS Institute Inc (paragraphs 36
to 37) the CJEU stated that: “the term
‘computer program’ also includes
preparatory design work leading
to the development of a computer
program, provided that the nature of
the preparatory work is such that a
computer program can result from it
at a later stage,” and such work is
stated to be an object of protection
under the Software Directive.
The judgment in SAS Institute
Inc is not surprising. One possible
reaction could be a renewed focus
by manufacturers of original
software on their attempts to
extend the scope of patent
protection for computer programs.
Currently in Europe, the position
is that the application of a program
may be patentable if it possesses
a technical characteristic. However,
this can be difficult to prove.
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38
itma.org.uk September 2012
Case in point: O/185/12, FeeDbACK mAtterS (2537918), UKIPO,
Appointed Person Anna Carboni, 20 April 2012
Back to basics for
Crocodilio appeal
Yet the Appointed Person’s full assessment failed
to find a new outcome, as Philippa Caddick of
Edwards Wildman Palmer UK LLP reports
The Appellant, Crocodilio Limited,
applied to register the mark
FEEDBACK MATTERS (“the Mark”)
as a series of three in respect of a range
of advertising and business services
in class 35.
The Mark was provisionally refused
by the Registrar on the grounds that
it lacked distinctive character. The
Appellant submitted written arguments
and then attended a hearing to try to
overcome the objection. The Hearing
Officer, Linda Smith, suspended the
hearing to consider the matter further.
Later the same day, she telephoned
the Appellant to inform it that, in
her opinion, the Mark was devoid
of distinctive character and the refusal
was to be maintained. The Appellant
informed the Hearing Officer during
the same telephone call that it had
already posted a letter to her, which
contained additional submissions.
The Hearing Officer therefore
agreed to delay an official decision
until she had received and considered
the Appellant’s letter containing these
additional submissions. A week later,
the Hearing Officer had still not
received the Appellant’s letter, so
she issued a hearing record that
confirmed the refusal of the Mark
under section 3(ı)(b) of the Trade
Marks Act ı994 (“the Act”).
The Appellant’s letter had, in fact,
been received by the UKIPO the day
after it had been sent and had been
forwarded to the Directorate four days
later. However, it was not passed to the
Hearing Officer until after she had
confirmed the refusal. In the meantime,
the Appellant had also written to
the Chief Executive of the UKIPO
to complain about the manner in
which the application had been
conducted, alleging that there had
been various procedural errors. The
Appellant also indicated that it had
made requests under the Freedom of
Information Act 2000 in connection
with these procedures.
The Appellant subsequently
requested a formal statement of reasons
for the refusal, which led to the official
decision being issued. In the official
refusal letter, the Hearing Officer did
not make any express reference to the
Appellant’s letter and it was therefore
unclear whether the additional
correspondence had been taken into
account before the Hearing Officer’s
decision was made.
AP appeal
The Appellant filed an appeal to the
Appointed Person and the issue was
essentially whether the Appellant had
a fair hearing, bearing in mind that
the Hearing Officer had stated that
she would delay a decision until the
Appellant’s additional submissions
had been considered. However, due
to the delay in the UKIPO, it appeared
that those submissions were not taken
into account.
The Appointed Person stressed that
the crucial factor was not only that
justice was done, but also that it was
seen to be done, and the absence of any
reference to the Appellant’s letter
following the hearing was cause for
concern. On this basis, the Appointed
Person decided to assess not only
whether the Hearing Officer made
any error of principle, but also whether
she agreed with the outcome.
The Appointed Person undertook a
review of the submissions and arguments
provided by the Appellant in support of
the application, concluding that the only
real procedural error appeared to be the
‘The crucial factor was not only that justice was done, but also that it was seen to be
done. On this basis, the Appointed Person decided to assess not only whether the Hearing
Officer made any error of principle, but also whether she agreed with the outcome’
failure to take into account the contents
of the letter sent after the hearing.
The Appointed Person determined
that some of the procedural errors
suggested by the Appellant were, in
fact, complaints about errors in the
UKIPO’s approach to distinctiveness.
Distinctiveness
On the issue of distinctiveness,
the Appointed Person first held that
the Hearing Officer was aware of the
analysis laid down by the various
court decisions. She then proceeded
to assess the Appellant’s complaints
individually.

In doing so, she held that the
Hearing Officer determined correctly
that the average consumer was “a
person engaged in commerce” rather
than the general public. If the Appellant
had wanted a much narrower definition
of consumer to be part of the
assessment, it should have narrowed
the specification accordingly.
The Appointed Person then
considered whether the Hearing
Officer had set the distinctiveness
bar too high by the inclusion of
“any” before “distinctive character”.
The Appointed Person concluded on
this point that assessing distinctiveness
is “an art not a science” and that
the assessment does not represent a
measure of a minimum level. With
this in mind, the Appointed Person
held that the Hearing Officer had
correctly concluded that the Mark
does not have “sufficient linguistic
imperfection, peculiarity, inventiveness
or other creative application” to
satisfy section 3(ı)(b).
She then went on to assess whether
the Mark was an unusual conjunction.
Again, she concurred with the Hearing
Officer that the Mark was two relatively
common words that, when placed
together, did not create a different
impression from their ordinary meaning.
The Appointed Person then turned
to whether it was necessary to keep the
words FEEDBACK MATTERS
free for use by other traders. It was
accepted that the Hearing Officer
had erred in her reporting of the
internet search she conducted
of the use of the phrase “feedback
matters”. A correct search of this
phrase revealed fewer hits than those
revealed by the Hearing Officer, but
nevertheless it was held that overall
the phrase was used descriptively by
other traders across different sectors.
Domain name delivery
The Appellant contended that as
the services provided under the Mark
were delivered via its registered domain
names, this should have been taken
into account, especially in light of
guidance that domain names can
be taken as indicators of origin. The
Appointed Person agreed that domain
names could be taken as indicators of
origin, but that they had to pass the
usual distinctiveness tests to do so.
Equal treatment
Finally, the Appointed Person
considered whether the decision
breached principles of equal treatment.
The Appointed Person reiterated that
the principle did not apply to the
examination of trade marks if and to
the extent that an examining body had
erred in applying the law to a previous
CASE COmmeNt
ABOUT THE
AUTHOR
Philippa Caddick
is an Associate at Edwards
Wildman Palmer UK LLP
pcaddick@edwards
wildman.com
philippa is a qualified trade
mark attorney. Her practice
focuses on national and
international trade mark law,
including oppositions,
revocations and invalidity
actions, negotiation of
settlements, brand clearance,
registrations and prosecution
of trade mark portfolios.
case. It was confirmed by a
representative for the Registry
that while there was no system of
precedence, the Office was certainly
guided by previous decisions. The
Appellant referred to the number
of marks that contained the element
MATTERS and whether the UKIPO
had become stricter in its examination
of marks to explain a difference of
previously accepted and recently
rejected marks. The Appointed Person
conducted her own assessment of marks
on the Register pre and post the
Mark, taking into account the list
provided by the Appellant on which
it relied as evidence of inconsistency.
She concluded, however, that there
had been no material change in the
Registry’s approach.
Taking into account all the
circumstances and facts, the
Appointed Person held that the
Hearing Officer’s decision was
correct and that the mark was indeed
devoid of distinctive character.
While this case was decided
very much on its own facts, it
nevertheless provides an interesting
illustration of when the Appointed
Person will conduct its own
assessment of the facts. This is
especially important in cases
where the Appellant has a lay
representative.
39

40
itma.org.uk September 2012
Case in point: O/177/12, GeNe SIGNAtUre (2513140), UKIPO,
Appointed Person Iain Purvis QC, 5 April 2012
Applicant overcomes
spelling error
A common typo ended in appeal, says
Emma Reeve of Groom Wilkes & Wright LLP
On 6 April 2009, Dr Mohammed
Farakh Kamran filed an application
to register a UK Trade Mark for a series
of six trade marks, shown below.
On 30 April 2009, the examiner raised
three objections to the application. First,
it said that the marks were not a proper
series and failed to comply with the
requirement of section 4ı(2) of the Trade
Marks Act ı994 (“the Act”) in that they
differed in matters that subsequently
affected the identity of the trade mark.
It was noted, however, that marks
one, two and three could properly
be grouped together as a series.
A second objection was that
marks four, five and six were also
objectionable under section 3(ı)(b)
and section 3(ı)(c) of the Act, because
they each consisted of the words
“Genetic Signature” and this was
considered to be a sign that would
identify someone or something by
their genes. Thus, the marks may serve
in trade to designate the kind and
intended purpose of the goods or
services for which registration was
applied. A third objection related
to the specification.
Dr Kamran contacted the UKIPO in
response to the examination report and
made two main points. First, Dr Kamran
stated that he had mistyped marks one,
two and three on the application form
and each mark should read GENETIC
1)
2)
3)
4)
5)
6)
SIGNATURE. Dr Kamran asked for the
application to be amended to account
for this error. Second, Dr Kamran
challenged the finding that the marks
were descriptive, and/or offered to
amend the goods and services that
were considered descriptive.
The UKIPO claimed that marks one,
two and three could not be amended
as the change would substantially affect
the identity of the trade mark, since it
would involve replacing an invented
word with a real one.
Following further correspondence,
Dr Kamran was offered a hearing.
The matter came before Ann Corbett
on ı3 July 20ıı and Dr Kamran
represented himself. Following
the hearing, Corbett sent a letter
to Dr Kamran setting out the main
points. The letter included Dr Kamran’s
initial position that trade marks one,
two and three could be read as
GENETIC SIGNATURE. Corbett
summarised that Dr Kamran was to
file a new application for marks one
through three in the form as intended
and that the application would proceed
with the sixth mark only. Amendments
were not made to the specification and
Corbett’s decision was based on the
specification as applied for in respect
of the sixth mark. Corbett concluded
in her final decision to Dr Kamran
that the sixth mark was refused because
it did not comply with sections 3(ı)(b)
and 3(ı)(c) of the Act.
On receipt of the letter,
Dr Kamran contacted the UKIPO
and asked to be granted a series mark
for marks one, two and three. On ı8
November 20ıı, the UKIPO refused
the request, because Dr Karman had
earlier indicated that he wanted to
continue with the sixth mark only.
Dr Kamran appealed the decision
of Corbett, seeking only the grant
of marks one, two and three. The
question on appeal was whether
Dr Kamran had requested the deletion
of all the marks, leaving just the sixth
mark in the application.
Iain Purvis QC, the Appointed
Person, held that Dr Kamran did
not understand that the first hearing
would determine registrability, and
that there was confusion on the part
of Dr Kamran about the options open
to him. Dr Kamran wanted to split the
application to keep marks one through
three. Corbett assumed that he wanted
to amend the spelling mistake contained
in marks one through three; however,
the transcript was ambiguous. There
was no evidence that there had been
a definite request to delete or withdraw
marks one through five. Iain Purvis QC
set aside the decision of the first hearing
due to Corbett’s misunderstanding
of Dr Karman’s intention.
On appeal, Dr Kamran accepted
and proceeded with marks one through
three as a series and they were accepted
for registration.
In respect of the misspelling of marks,
Mr Abraham, representing the Registry,
did not pursue an objection on the lack
of bona fide intention to use the marks.
An objection raised on this basis will
only succeed if the application was made
in bad faith under section 3(6) of the
Act. It was held that Dr Kamran did not
act in bad faith although he claimed that
the marks one to three were misspelt.
ABOUT THE
AUTHOR
emma reeve
is a Trainee Trade Mark
Attorney at Groom Wilkes
& Wright LLP
ereeve@gwwtrademarks.com

Case in point: O/145/12, Ambrosia Feel Good Drinks (2516238), UKIPO,
Appointed Person Professor ruth Annand, 29 April 2012
The feel Good factor
Context was crucial in this decision, writes
Peter Vaughan of Boult Wade Tennant
On ı9 May 2009, Premier
Food Group Limited filed an
application for AMBROSIA FEEL
GOOD PUDS in classes 29 and 30.
The Feel Good Drinks Company
Limited opposed the application on
the basis of sections 5(2)(b), 5(3) and
5(4)(a) of the Trade Marks Act ı994
(“the Act”).
The decision was made on the
basis of section 5(2)(b) and only
two of the earlier rights – FEEL
GOOD SNACKS and FEEL GOOD
CONFECTIONERY – were
considered. The crux of the decision
rested on the distinctiveness of the
marks and the resultant comparison
of them. The Hearing Officer, as
a result of section 72 of the Act,
found it was not possible, outside a
cancellation action, to decide that
the earlier rights were devoid of
distinctive character; rather, they
were of low distinctive character.
Thus the Hearing Officer rejected
the Applicant’s assertions that the
“FEEL GOOD PUDS” element
of its mark was descriptive – to
have found otherwise would have
contradicted earlier findings. While
accepting that AMBROSIA was
the most dominant and distinctive
element of the application, this did
not preclude a likelihood of confusion.
Even marks of low distinctive
character can give rise to a likelihood
of confusion. The opposition was
upheld under section 5(2)(b).
Appeal arguments
The Applicant appealed to the
Appointed Person, arguing that
the Hearing Officer had erred
on several occasions.
The Appellant argued that the
Hearing Officer had been inconsistent
in its approach when finding that the
FEEL GOOD element had a low
distinctive character – asserting it was
descriptive. The Appointed Person
rejected this as “splitting hairs”. The
finding that the FEEL GOOD element
related to snacks and confectionery was
not inconsistent with the marks being
distinctive as a whole, and this actually
provided the distinctive character.
The FEEL GOOD PUDS
element of the application was held to
operate in a similar manner to FEEL
GOOD SNACKS and FEEL GOOD
CONFECTIONERY and was not
descriptive. A tension emerges in the
decision between arguing that a mark
is descriptive when no corresponding
cancellation action has been filed. This
prevented the Applicant from arguing
that an element of its own mark was
descriptive; to do so would have been
to contradict the finding of distinctive
character in the earlier rights, which the
Appointed Person was reluctant to do.
The Appellant also contended that
the Hearing Officer did not consider
its evidence that FEEL GOOD was
descriptive. This was rejected by the
Appointed Person, who, somewhat
surprisingly, considered the Appellant’s
evidence afresh. She concluded it
was insufficient to make out the
descriptive character of FEEL GOOD,
relying on various cases (including
T-ı35/04 GfK AG v OHIM) to
support the view that although use
of FEEL GOOD in some situations
is descriptive, this does not apply to
every instance: context is everything
and evidence should reflect this as
well as be relevant to the time and
jurisdiction – something the Applicant
did not always demonstrate. Again,
a tension emerges between arguing
descriptiveness in the opposition
proceedings and the possibility of
doing so in a cancellation action.
The Appointed Person then
turned to C-235/05 L’Oréal v
OHIM to refute the assertion that
the FEEL GOOD element should
be disregarded when comparing the
marks; the Appellant alleged that not
enough emphasis had been placed
on its well-known AMBROSIA
element, which it said would serve to
distinguish between the two marks.
L’Oréal states that a mark of weak
distinctive character could be sufficient
to create a likelihood of confusion.
To find otherwise would be to allow
CASE COmmeNt
ABOUT THE
AUTHOR
Peter Vaughan
is a Trainee Trade
Mark Attorney at
Boult Wade Tennant
pvaughan@boult.com
located in the firm’s
cambridge office, peter
has broad experience of
filing and prosecuting
applications before the ukipo,
oHim and foreign registries.
marks of weak distinctive character to
prevent only identical later applications
and would place undue importance on
a mark’s distinctiveness. This approach
was rejected by the Appointed Person
in favour of the well-known global
appreciation test – highlighting
that even marks of a low distinctive
character can be sufficient for a
finding of a likelihood of confusion.
Furthermore, the Appointed Person
held that the Hearing Officer was
entitled to find “reverse confusion”,
in that the likelihood of confusion
should be assessed both ways, even
though it had not been argued. The
Opponent was entitled to allege
a likelihood of confusion without
asserting a particular type of confusion.
Appeal refused
This decision demonstrates the
importance of the section 72
presumption of validity and how marks
of a low distinctive character cannot
be discounted when considering
a likelihood of confusion – even
where there are more dominant and
distinctive elements present in the
application. If there are doubts as to the
distinctiveness or descriptiveness of a
mark, the proper forum is a parallel
cancellation action. Failing this, it will
be difficult to argue against validity.
41

42
EVENTS 2012/2013
events
ITMA
More details can be found at itma.org.uk
Our web-based
events continue,
some of which are in
partnership with CIPA
Date Event Location CPD Hrs
6 September ITMA Edinburgh Evening Meeting Pinsent Masons LLP, Edinburgh 1
18 September ITMA London Evening Meeting*
Copyright Update
Luke Dixon, Greenberg Traurig Maher LLP
19 September ITMA Seminar: Preparation and presentation
of evidence before the UKIPO
Royal College of Surgeons, London 1
Royal College of Surgeons, London 3
24 September ITMA & CIPA Webinar
How to network without working the room
Bernard Savage, Size 10.5 Boots
24 September ITMA & CIPA Leeds Evening Meeting
An update on design and copyright law
Michael Edenborough QC, Serle Court
Walker Morris, Leeds 1
9 October ITMA Afternoon Talk: Patent Box
Chris Riley, Littlejohn and
Adrian Tombling, Withers & Rogers LLP
Withers & Rogers LLP, London 1
11 October ITMA Autumn Seminar* Hyatt Regency, Birmingham 5
11 October ITMA Drinks Reception Hyatt Regency, Birmingham
11-12 October IPAG 9th Annual Conference
(day two in association with ITMA)
The Lancaster, London
15 October ITMA Round Table Withers & Rogers LLP, Sheffield 1
18 October ITMA Webinar
IP Translator
Michael Edenborough QC, Serle Court
1
23 October ITMA London Evening Meeting*
Bribery Update
Richard Goddard, BP plc
Royal College of Surgeons, London 1
29 October ITMA & CIPA Webinar
How to use social media to win business
Bernard Savage, Size 10.5 Boots
26 November ITMA & CIPA Webinar
How to sell professional services
Bernard Savage, Size 10.5 Boots
27 November ITMA London Evening Meeting* Royal College of Surgeons, London 1
6 December Northern Christmas Dinner tbc, Manchester
11 December ITMA Christmas Lunch with pre-lunch drinks** InterContinental Park Lane, London
20 March 2013 ITMA Spring Conference begins! Watch this space and itma.org.uk for
further details...
*Kindly sponsored by **Kindly sponsored by

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