case comment - ITMA

The Journal of The Institute of Trade Mark Attorneys 

Numatic’s passing-off 

victory turned on 

the perceptions 

of consumers 

Bulldog case proves an 

expensive victory for Sun 

The pen is mightier than 

the figurative mark? 

Peacock marks conceptually 

similar but visually distinct 

Cuvée Palomar application is 

rejected under geographical 

indication rules 

Issue no. 377 July/August 2010

ITMA business 

Public relations: Mama Mia! 

here we go again . . . . . . . . . . . . . . . . . .2 

Chief Executive’s Bulletin: 

gearing up for summer? . . . . . . . . . . .5 

Northern Seminar 24 June 2010 . . .6 

Presentation by the Legal Services 

Board on Alternative Business 

Structures . . . . . . . . . . . . . . . . . . . . . . . . . . .8 

ITMA Summer Reception, 

8 July 2010 . . . . . . . . . . . . . . . . . . . . . . .10 

Book review 

Practical, but not quite there 

in practice . . . . . . . . . . . . . . . . . . . . . . . .12 

Case comment 

Bulldog case proves an expensive 

victory for Sun . . . . . . . . . . . . . . . . . . .13 

The pen is mightier than the 

figurative mark? . . . . . . . . . . . . . . . . . .14 

Unibanco: late submission 

meant OHIM did not consider 

‘uni’ prefix evidence . . . . . . . . . . . . . .16 

Kremezin encroaches on 

Krenosin’s development . . . . . . . . .17 

Golden Toast registration goes 

up in smoke after ‘descriptive’ 

decision . . . . . . . . . . . . . . . . . . . . . . . . . .18 

Hypnotizer and Hpnotiq at 

higher end of similarity scale . . . . .20 

Court of Appeal applies ECJ’s 

guidance reluctantly . . . . . . . . . . . . .22 

Firstrung bad faith verdict . . . . . . . .23 

General Court decision means 

game over in trade mark 

invalidity action . . . . . . . . . . . . . . . . . .24 

Intelligent Sensor fails . . . . . . . . . . . .25 


similar but visually distinct . . . . . . .26 

Numatic’s passing-off victory 

turned on the perceptions of 

consumers . . . . . . . . . . . . . . . . . . . . . . .28 

Rioja regulators toast vinegar 

label decision . . . . . . . . . . . . . . . . . . . .30 

Cuvée Palomar application is 

rejected under geographical 

indication rules . . . . . . . . . . . . . . . . . . .32 

International 

Malaysia: first user has stronger 

claim to Jost . . . . . . . . . . . . . . . . . . . . .34 

CONTENTS 

Noticeboard 

Who’s who in ITMA . . . . . . . . . . . . . . . .35 

And finally... 

Chris Gibson, 1943-2010 . . . . . . . . . .36 

Forthcoming events 2010 . . . . . . . .36 

Cover picture: the new Henry ‘Flower’ 

model, courtesy of Numatic International. 

The views expressed in the articles in the 

Review are personal to the authors and we 

make no representations nor warranties 

of any kind about the accuracy of the 

information contained in the articles. 

ITMA Review copy deadlines 

Contributions to the Review must be 

received by the 12th of the month for 

publication in the following month’s 

issue, including whenever possible highresolution 

images of authors and relevant 

graphics. These are best sent as separate 

files rather than embedded in Word 

documents. Illustrations or photos often 

add interest and aid understanding of the 

issues covered in articles. Please email 

material to Kelly Robson, Editor, at 

kellyrobson@btinternet.com and Tania 

Clarke at tclarke@withersrogers.com 

The Institute of Trade 

Mark Attorneys 

5th Floor 

Outer Temple 

222-225 Strand 

London WC2R 1BA 

Tel: 020 7101 6090 

Fax: 020 7101 6099 

Web: www.itma.org.uk 

© 2010 

ITMA BUSINESS 

Media watch 


PUBLIC 

RELATIONS 

Mama Mia! 

here we 

go again... 

Three very famous brands feature 

in this month’s review of the press. 

Firstly, a case that is just about to 

embark as I pen this column, so the 

situation may well have moved on 

by the time you are reading this. Sir 

Stellios – no surname required – is 

fighting the company he formed, 

EASYJET, over the ancillary services 

that the airline can offer. The dispute 

centres on an agreement drawn up 

when the airline floated on the 

London Stock Exchange in 2000 and 

the Independent used the story to 

highlight previous cases including 

APPLE and BUDWEISER. I suspect 

this story will “fly” for a while! 

The second “iconic” brand to feature 

is HARRODS who attracted much 

media interest when they threatened 

legal action against a small cafe in 

Witham, Essex, over the stylised use 

of HOLLANDS in the name Hollands 

Cafe Lounge which Harrods claim is 

too similar to the Harrods stylised 

logo. Again, stories of small 

companies receiving legal notices 

from large companies are often 

newsworthy, regardless of who is 

in the right. 

The third “big name” to feature in this 

round-up is the band ABBA, which 

has decided to take action against 15 

ABBA tribute groups who all include 

the name ABBA in their names. 

Apparently there are over 40 ABBA 

2 ITMA Review July/August 2010

tribute groups in the UK alone and 

the quality of some has prompted 

Universal Music in Sweden to take 

action. I’m sure you can all think of 

puns to describe the action but one 

line comes to my mind – “Mama Mia, 

here we go again ... ” Sorry! 

The last story I picked up didn’t 

feature a famous brand but it did 

have a famous personality behind 

the story – Tony Benn – who, the 

Daily Mail reported at length, had 

“invented” a method of taking the 

strain while waiting for trains, planes 

and other forms of transport. His 

SEATCASE has just had approval 

from the Furniture Industry Research 

Association (FIRA) which he could 

take to market. As you all know, he 

should check whether anyone is 

already using SEATCASE and I have to 

report that there is already a company 

out there with a UK registration for 

luggage. His earlier invention of 

Backbencher for a similar application 

might serve him better though I’m 

sure a good attorney will plead his 

case with whatever name he goes 

with – and get some decent publicity 

into the bargain. 

Incidentally, one of our members 

who helped out at one of our 

Business Advice Open Days has 

come across a useful search facility, 

www.tmview.europa.eu/tmview, 

which includes data from official trade 

mark offices who have signed up. 

Currently eight offices (including the 

UK), OHIM and WIPO have signed up 

and they aim to cover the whole EU. 

It may be worth a look. 

As for our own efforts, we issued 

a press release announcing the 

new Nottingham Law School skillsbased 

qualification, which offers a 

transitional course from this October 

and, subject to validation, a full 

Certificate in Trade Mark Practice 

in 2011. The press release also 

announced the ITMA Litigator 

Certificate and ITMA Advocacy 

Certificate, which allows trade mark 

attorneys to practice litigation and 

appear as advocates before the 

Patents County Court. 

As usual we issued local press 

releases announcing our presence at 

the Business Advice Open Days. BBC 

Radio Oxford took up our offer of 

an interview and Janice Trebble of 

July/August 2010 


Saunders and Dolleymore gave an 

eight-minute live interview on their 

breakfast show on the morning of the 

exhibition. With excerpts repeated 

on the news headlines, this was a 

fantastic piece of free publicity for us; 

all for the price of a stamp and a little 

bit of effort. We put a link to her 

interview on the ITMA website, 

although we could only do this for 

one week without hitting copyright 

issues. 

Finally under Media Watch, we have 

written another two articles: one for 

the UK Science Parks Journal – which 

invite us to write for them every year, 

so we must be doing something right 

– and a new request from Financier 

Worldwide, which claims to have 

a readership of 90,000 over 42 

countries. These, again, are always 

useful sources of free publicity for 

ITMA and the profession. 

Business Advice Open Days 

My thanks go to Kieron Taylor of 

Swindell and Pearson and Rob 

Furneaux of Rouse & Co for their 

assistance at the Coventry Advice Day 

and to Natalie Brindle of Harrison IP 

and to Sam Bristow and Jeni Casey of 

Walker Morris who are due to help 

out in Llandudno and Sunderland 

respectively to complete the summer 

term of exhibitions. 

Liaison with IPO 

Kieron Taylor is also due to present 

an IPO Masterclass in Coventry on 

29 July on behalf of ITMA in a 

joint presentation with a CIPA 

representative. These Masterclasses 

are aimed at business advisers who 

complete a two-and-a-half-day 

course developed by the IPO in 

partnership with Coventry University 

and the British Library. The main 

purpose of Kieron’s presentation is to 

explain what attorneys do and to 

emphasise that professional advice is 

available and that advisers need to 

know where to draw the line between 

information and advice. A little 

knowledge is sometimes a very 

dangerous thing and, while these 

courses have been developed by 

others, it is important that we make 

an input to demonstrate the added 

value of using ITMA members. 

Similarly, ITMA members attend IPO 

branding seminars. Gareth Jenkins of 

Wynne-Jones, Laine & James made 

the ITMA presentation in Cardiff on 

29 June and was supported by other 

members of his firm, as well as 

attorneys from other firms in the 

region who provided one-to-one 

sessions for the audience. My thanks 

go to all those members who 

volunteered and I would urge 

everyone to keep a lookout for events 

occurring in their region as they 

provide an invaluable platform to 

demonstrate the professionalism of 

Institute members. The ITMA office 

tries to ensure all members in the 

regions where these occur are 

notified but it is always worth keeping 

an eye out for news of them on the 

IPO website. 

Liaison with Business Link 

For some time we have been 

conscious that we need to do more 

with other government departments 

and agencies to ensure the messages 

about trade marks and the value of 

the trade mark attorney profession 

are foremost in the minds of those 

people advising business. ITMA Chief 

Executive Keven Bader and I as PR 

Manager met with the Theme 

Manager for Exploit Your Ideas 

and Grow Your Business of 

businesslink.gov.uk to discuss how 

the Institute can ensure the 

information on their website is 

accurate in respect of trade marks and 

to improve the links from their site to 

ours. We have agreed to be what is 

termed a secondary Proxy Approver 

for content, on an ad hoc basis, so 

that at least content will be accurate. 

With a bit of luck we should also be 

able to raise the profile of the Institute 

with links and our logo on the 

businesslink.gov website. 

We have also been in touch with 

the Theme Manager for Starting Up 

and already drawn his attention to 

the importance to business of 

recognising that registering company 

names at Companies House does not 

cover trade mark registration. These 

are long term projects for the PR & 

Communications Committee to take 

forward and we will be considering 

what other activities we can 

undertake that will result in a better 

service for business, such as how we 

can also influence content on the 

other main government portal 

direct.gov.uk. 

ITMA Review 3


Below are examples of the savings 

members made by using IP Benefits 

Plus in the last quarter. 

It is certainly worth looking at 

the offers, some of which are 

highlighted in the Public Relations 

column, and is yet another example 

of the advantages of being an ITMA 

member. 

To access IP Benefits go to the 

members section of the ITMA 

website, click on Members Home 

IP Benefits 

This month the IP Benefits Team at 

Parliament Hill has asked us to 

highlight the following deals: 

Beautiful flowers and gifts at 

amazing discounted prices 

delivered direct to your door. 

Exclusive 10% discount, from 

Flowers Direct. 

CDs from as little as £7.49 with 

free worldwide delivery from CD 

WOW. DVDs and games are also 

discounted. 

CDs from as little as £6.49 with 

free worldwide delivery from 

Bang CD. 

You can now save up to 75% on 

work and leisure magazines by 

subscribing through the Magazine 

Group – and postage is free. 

Pay less than half price on shirts 

and accessories from TM Lewin. 

Up to 20% discount on family days 

out with Merlin Attractions. Alton 

Towers, Chessington World of 

Adventures, The London 

Dungeon and many more are 

covered with these discounts. 

The Gourmet Society has teamed 

up with over 3,000 leading 

restaurants across the country 

to offer some fantastic discounts. 

Enjoy 2-for-1 meals or 25% off 

your bill – including drinks – at 


(top left) and then click on the IP 

Benefits graphic. 

One member saved £200.40 

with Old English Inns. 

Mr V saved £183.42 with 

HotelStayUK. 

Mr A saved £58.38 with Holiday 

Autos. 

One member saved £152.64 

with Buying Support Agency. 

One member saved £36.33 with 

CottageStayUK. 

a wide variety of participating 

establishments, from Michelinstarred 

establishments to awardwinning 

independents and 

famous names like Pizza Express, 

Café Rouge, Loch Fyne, The 

Living Room and Prezzo. 

Members can now take advantage 

of an exclusive 7.5% discount on 

the SayShopping Pass – the multiretailer 

gift voucher that can be 

spent in some of the UK's biggest 

and best shopping, activity, 

entertainment and dining outlets. 

This versatile voucher covers over 

12,000 UK outlets including Comet, 

Debenhams, JJB Sports, Boots and 

River Island, making it a suitable 

gift for any occasion. Many people 

also use the vouchers to save 

money on their own retail 

expenditure: if you buy, for 

example, £100 of vouchers, you’ll 

only pay £92.50 plus delivery. 

For more information on how to 

obtain these discounts and special 

offers members should access the 

IP Benefits website from the ITMA 

website members’ area; click on 

Members Home (top of the list on 

the left hand side) and then click on 

the IP Benefits graphic – see also the 

box at the end of the Review which 

gives examples of savings made by 

members using the scheme. 

Ken Storey, PR Manager, 

ken.storey@btinternet.com 

“...we need to do 

more with other 

government 

departments and 

agencies to ensure 

the messages about 

trade marks and the 

value of the trade 

mark attorney 

profession are 

foremost in the 

minds of those 

people advising 

business.” 





Chief Executive’s Bulletin: 

gearing up for summer? 

As you all gear up for the holiday season and a well-earned 

break, I thought it best to provide an update on recent matters 

that are of interest to you and the Institute. Emailed to members 

on 23 June. 

In this bulletin you will find 

information on: 

Hearings before the IPO 

Membership subscriptions 

ITMA survey 

Accommodation update 

ITMA Staff news 

Hearings before the IPO 

Have you had any problems 

conducting ex-parte and/or interpartes 

hearings before the IPO via the 

telephone or video link service? 

ITMA continue to be in dialogue with 

the IPO regarding the use of these 

services and the perceived desire by 

the IPO for all hearings to be 

conducted via one of these methods 

rather than face-to-face. We are of the 

view that there are occasions where a 

face-to-face hearing might be more 

appropriate (and indeed necessary) 

than the preferred methods, for 

example in cases where cross 

examination takes place. We feel that 

the choice should not be removed 

from the attorney/client. The IPO have 

been receptive to our comments and 

would welcome evidence to support 

out requests. 

In order to assist the IPO, we are 

asking you as members to provide 

examples of where the use of the 

telephone or video link has been 

detrimental and caused problems, 

both from a technical perspective, ie 

technology not working, and from a 

logistic/handling perspective. Not 

necessarily just because you lost that 

particular case! If you have any 

examples or have thoughts that you 

would like to share, please email me 

at keven@itma.org.uk. 

Membership subscriptions 

The ITMA Office has been working 

hard to chase for outstanding 

renewal subscriptions. We are 

grateful for all those that have 

renewed their membership for 2010. 

At the end of June, we will be lapsing 

all membership subscriptions where a 

renewal fee for 2010 has not been 

paid. This will result in all the benefits 

of being a member of ITMA being 

removed and even worse, you will 

not receive any more of my bulletins! 

If you are in any doubts about 

whether your renewal has been 

paid, please check with the Office to 

ensure that you remain a valid 

member. 

For 2011 we will be looking at 

the option of paying renewal 

subscriptions by Direct Debit. For 

those individuals whose firm pays 

for membership, this will also be a 

function available for your firm to use. 

We believe a Direct Debit system will 

make the whole renewal process 

much more efficient for both you 

and the ITMA office and further 

information on the set up of this 

will be sent in due course. 

ITMA membership survey 

In my last bulletin I mentioned that 

it has been agreed in principle that 

ITMA should canvas the membership 

to obtain important information 

about the trade mark profession and 

membership of ITMA. We will be 

sending out a separate email with 

information about the online survey. 

The survey is short (only ten 

questions) and we really would like 

everyone to submit a response to 

help shape the Institute for the future. 

Accommodation 

Having been in the new HQ for a 

couple of months, we now consider 

ourselves ‘settled in’ and the 

relocation project complete. 

We would like to thank Thorne- 

Hiley Property consultants 

(www.thornehiley.co.uk) who helped 

in all aspects of the move. Their 

expertise, clear advice and friendly 

approach took away much of the 

pressure and ensured that we found 

our new home, completing the 

project on time and within budget. 

ITMA Staff 

As you are probably aware, last year 

Margaret Tyler reduced her working 

hours as she approached retirement. 

Margaret has now confirmed that she 

would like to fully retire and her last 

day will be 20 August 2010. 

This is a huge moment in the history 

of ITMA, as Margaret has provided 

well over 20 years of service and has 

been instrumental in building the 

Institute during her time. I for one will 

be very sorry to see Margaret leave, 

having helped me settle into my role. 

There will be numerous opportunities 

to thank Margaret, but I would like to 

take this particular one to thank her 

publicly for everything that she has 

done for the Institute. We will be 

looking to mark the occasion 

accordingly (probably with a party) 

and further information will be made 

available as we have the details. 

If you are heading off on your 

summer holidays soon, have a 

wonderful break. 

Until the next time... 

Keven Bader, Chief Executive, 

keven@itma.org.uk 



Northern 

Seminar 

24 June 2010 

Radisson BLU Hotel, Leeds 

Rowena Bercow 

The meeting began with ITMA 

President Maggie Ramage reminding 

us that external regulation of our 

profession became compulsory once 

the Legal Services Act 2007 had been 

passed and that as of the beginning of 

this year we are regulated by IPREG, a 

board set up jointly with CIPA for that 

purpose, which is itself overseen by the 

Legal Ombudsman. 

IPREG consists of three patent 

attorneys, three trade mark attorneys 

and three lay members. These are 

divided into three committees to deal 

with the necessary matters for 

regulation; namely, Education and 

Qualifications, Internal/External 

Governance and Conduct and 

Discipline. There is an overriding 

objective to be transparent to the 

public and IPREG has worked hard to 

come up with a code of conduct. The 

relative cost of regulation is higher 

than for solicitors and IPREG has tried 

to arrive at something workable. 

IPREG Update 

Next, Penny Nicholls, an IPREG 

member, talked about how the board 

was operating. The backgrounds of 

the lay members are Rosalind Burford 

(education), Philip Portwood (local 

government) and Danny Keenan 

(medical council). The whole board 

meets every two months but the 

committees meet more frequently. The 

chief executive is Ann Wright, who is a 

part-time solicitor. They are trying not 

to be too interventionist but want to 

keep lines of communication open and 


are taking soundings about potential 

issues arising. They do not want to 

impose expensive rules. 

Insurance 

One issue which had come up 

concerned insurance. There was 

confusion between the relevant rules 

and guidance. Rule 17 of the Code of 

Practice requires that the level of 

insurance is commensurate with the 

practice, whereas the guideline 

suggests £1 million. In practice the 

actual amount will not have to be 

given on the application for 

registration, and is for the practitioner 

to decide, but IPREG has authority to 

obtain details from the insurers. 

Complaints handling 

Responsibility for complaints is 

currently being transferred from ITMA. 

Trade mark practitioners must have 

a procedure for complaints and 

must include that in the terms of 

engagement for new clients. That 

should probably consist of a reference 

to IPREG, mentioning the name of the 

chief executive. Complaints relating 

to conduct will be dealt with by a 

separate disciplinary board which will 

have two lay members and one 

professional member (drawn from a 

panel). Complaints will initially be 

sifted by IPREG board members to 

reject claims that are vexatious or 

with no grounds. 

The Legal Ombudsman will be 

operational in October and will deal 

with complaints in relation to service. 

Education, qualifications and CPD 

There is a commitment to promoting 

diversity amongst members of the 

profession imposed by the legislation. 

However, educational standards could 

not be compromised. 

Continuing professional development 

involves self-certification. CIPA and 

ITMA can decide how many hours can 

be claimed for its events. Events 

organised by other bodies in the legal 

profession also count. For individual 

study and in-house activity it is 

necessary to describe how it was 

worthwhile. 

Entity registration 

Entities have to be registered as well 

as individuals. There is a fee for each 

entity and an additional fee for each 

registered or other professional. An 

entity will be bound for the acts and 

omissions of its other professionals. 

Legal Services Board 

IPREG is regulated by the Legal 

Services Board, to which it pays an 

annual fee. That is the same board that 

regulates barristers, solicitors, notaries, 

etc. IPREG can compete to regulate 

other business and is interested in 

doing that with regard to Alternative 

Business Structures. 

The Legal Ombudsman 

There followed a short presentation 

by Gary Garland, Deputy Chief 

Ombudsman of the Legal 

Ombudsman. He is barrister with 

experience in the war crimes tribunal 

at the Hague, among other things. 

Office for Legal Complaints - Procedure 

This is the same as the Legal 

Ombudsman. It provides the 

complaints handling service for all 

seven branches of the legal profession. 

A customer must try to resolve the 

matter with the practitioner first. 

Practitioners must have a procedure 

for dealing with complaints and when 

responding to a client must advise 

that they have recourse to the Legal 

Ombudsman. Time runs from that 

response for the customer to pursue 

the matter (six months). 

The office examines the complaint to 

try to find a resolution and, if that is not 

possible, will make a decision which is 

binding on the professional. They can 

award up to £30,000. 

There is a right of appeal by the 

client to the High Court, but for the 

professional a decision can only be 

challenged by means of a judicial 

review. Complying with the 

Ombudsman’s decision is a defence 

to litigation. 

Guidance for Practitioners 

It is compulsory to respond to 

complaint correspondence from a 

customer; it would be considered 

professional misconduct not to. When 

responding, it is suggested to be 

realistic, pragmatic and businesslike 

and to use contrition when responding 

to a complaint. 

There is a statutory obligation to tell a 

client who to contact if they disagree, 

which triggers the six-month period for 

the client to pursue the matter. 

Publication 

No policy had been agreed with regard 

the publication of decisions on 


complaints. The Legal Services Act 

does not allow the complainant to be 

identified, but the professional can be 

named at discretion. Protagonists will 

probably be kept anonymous except in 

the case of overriding public interest, 

for example theft or fraud. 

Intellectual Property Office 

After a break for refreshment, Oliver 

Morris, one of the principal hearing 

officers, gave a presentation in respect 

of hot topics including the first two 

substantive decisions to be issued by 

the Company Names Tribunal: MB 

Inspection Ltd v HI-ROPE LTD [2010] 

RPC 18 and Zurich Insurance Company 

v Zurich Investments Ltd BL O/197/10 

The Company Names Tribunal 

Decisions on these first two cases were 

made by a panel of three adjudicators. 

Only a small proportion of cases so far 

have been defended. If there is no 

reply to the tribunal from the owner of 

the company name objected to, a 

simple default decision is likely to be 

issued. 

The decisions deal with matters as 

a sequence of steps, deciding first 

whether the complainant has the 

requisite goodwill, next whether the 

respective names are the same or 

similar (depending upon whether 

both have been pleaded) and then 

considering any defences that the 

respondent may have put forward 

under section 69(4) of the Companies 

Act 2006. 

Some useful guidance has already 

resulted from the first two decisions 

with regard to goodwill and identity 

and similarity of names. 

With regard to the requirement for 

goodwill, it was decided that goodwill 

in the traditional sense was sufficient 

(as per Muller & Co’s Margarine Ltd 

[1901] AC217). 

Concerning sameness and similarity of 

names, in the case of “HI ROPE”, the 

only difference between the names in 

issue was the designation “Ltd”. As a 

company name must be identified by 

a reference to the designation of the 

nature of the company (with certain 

exceptions) and as an undertaking 

cannot trade by reference to a 

company name under which it is not 

incorporated, the defence was found 

to be virtually redundant if the name 

upon which the complainant relied 

had to include the company 

designation. It was decided that the 



names should be regarded as the same 

if the only difference that arises is from 

the company designation. 

In “Zurich” the names to be compared 

were Zurich and Zurich Investments 

Ltd. The complainant had claimed 

both that the company name was the 

same and that it was, in the alternative, 

similar. Upon examining the case-law it 

was decided that the names were not 

the same even though the difference 

between them resided in a descriptive 

term (cf Reed v Reed [2004] EWCA Civ 

159) but that they were similar. It was 

noted that it was not necessary to 

factor in any goods or services when 

considering similarity because a 

company can operate in any area. 

Defences 

In HI-ROPE, section 69(4)e, that the 

complainant would not be adversely 

affected to any significant extent, 

was claimed. That was unsuccessful, 

despite submissions that the 

respective businesses of industrial rope 

access, and walking holidays, were 

different so that there would be no 

adverse affect. It was held that a 

company name can be used in any 

field of activity but, in any event, there 

was a potential overlap because a 

walking business might use ropes, 

which, in turn, could compromise the 

complainant’s safety reputation. 

In Zurich, section 69(4)b, that the 

company had operated or was 

planning to do so, was claimed. Again, 

that was unsuccessful despite evidence 

that the company name had been held 

in succession by three different but 

associated companies of which one, 

but not the current one, had traded. It 

was held that the company that had 

traded could not be taken to be the 

company in issue because the former 

was a separate legal entity, and also 

there was no evidence of substantial 

start-up costs (which are specifically 

mentioned in the provision) for the 

complained of company. 

In both cases, section 69(4)d, that 

registration had been made in good 

faith, was claimed. The defence failed 

in HI-ROPE as there was little to show 

any good faith such as evidence 

relating to the genesis of the name or 

evidence of business plans etc. 

However the good faith defence 

succeeded for Zurich Investments 

because it was relevant to consider the 

activities of the earlier two companies 

dating back to 1989 as this could 

inform as to the motivation in the 

registration of the company name 

complained of. Taking this into 

account, and the overall circumstances, 

good faith was found. 

In conclusion the complainant 

succeeded in HI- ROPE, but not in 

Zurich. It should be noted that at the 

time of going to print the Zurich 

decision is still subject to appeal. 

Firecraft 

Following the Firecraft case, in which 

the decision of the office on passingoff 

enabled a successful applicant for 

invalidation to obtain summary 

judgment in the High Court, it had 

been decided that in future all such 

decisions will only be made after a 

hearing. 

Section 5(3) TMA 1994 

The Office would like more detail on 

Notices of Opposition of objections on 

the basis of this provision, which seems 

to be used routinely as a make-weight 

ground, for instance with reference to 

the detriment identified in L’Oreal v 

Bellure[2010] EWCA Civ 535. It has 

formulated additional questions for 

the Form TM7 to that end which have 

been submitted to ITMA for their 

comments. 

Case-management conferences 

There had been an increase in casemanagement 

conferences and the 

Office would like to encourage them. 

General View on Regulation 

The afternoon was concluded by 

comments from Michael Harrison, who 

is both an ITMA and a CIPA member, 

on the new regulatory regime. 

He said that it had been seen as an 

opportunity to come within the same 

scope as lawyers and to show 

transparency and a commitment to 

consumer interests and to promote 

best practice. So far the cost seemed to 

be relatively low (not much more than 

previously) and the regulation fairly 

light-touch. As far as ongoing costs 

were concerned, the levies should 

reflect the complaint levels which were 

not expected to be high. The CPD 

provisions appeared to be reasonable 

and it was particularly good that those 

could cover both professions. It has 

certainly improved our credibility. 

Rowena Bercow, 

rowenabercow@gmail.com 




Presentation by the Legal Services Board 

on Alternative Business Structures 

On 6 June CIPA and ITMA 

with IPReg hosted the Legal 

Services Board “Road Show” on 

Alternative Business Structures. 

The presentation was given by 

Chris Kenny, Chief Executive 

of the Legal Services Board, 

and he was joined by his 

colleague Fran Gillo Director 

of Regulatory Practice, for the 

question and answer session. 

The event was chaired by Michael 

Heap, Chairman of IPReg. 

A large number of the attorney 

profession attended representing 

both the large and smaller firms. 

There were a number of key themes 

in the presentation. 

The external environment has 

changed with new technology 

and changed consumer 

expectations and the legal 

regulatory framework needs to 

catch up to give commercial 

flexibility to legal services 

providers. 

Business excellence and creativity 

is as important as legal excellence. 

We are already seeing a shift from 

individual towards entity-based 

regulation and ABS is a part of 

that shift. 

The timeline was announced by the 

Legal Services Board in March this 

year. Prospective ABS can apply for 

licence from mid-2011 and open for 

trading from October 2011. There will 

be transitional arrangements for 

entities that are currently “ABS like” 

until 6 October 2012, following which 

they must be licensed. 

After the formal presentation there 

8 ITMA Review 

was a wide reaching question and 

answer session. Because of the quite 

forensic but very pertinent nature of 

some of the questions, the Legal 

Service Board have written up the 

questions and their answers and 

these are set out at the end of this 

article. 

IPReg has issued its own 

questionnaire about ABS and are very 

grateful to those who have replied. 

This will inform, although not 

determine, whether CIPA and ITMA 

with IPReg wish to make an 

application to be a Licensing 

Authority. 

The responses will be collated and a 

summary will be posted on the IPReg 

website. 

At the time of going to press, the 

Solicitors Regulation Authority and 

the Council of Licenced Conveyancers 

have both confirmed that they will be 

making applications. 

The LSB section of the IPReg website 

contains useful material on ABS and 

we will be updating this section 

regularly. 

Finally, a question was raised about 

complaints handling and the new 

Legal Services Board requirement. 

IPReg are urgently working on this 

and will be sending information out 

as soon as possible. However you can 

access the Legal Services Board 

documentation via their section on 

the IPReg website. 

Ann Wright, IPReg Chief Executive 

Q & A s 

1. LSB’s desire is for a level playing field 

between ABS and non-ABS, but 

there are key tests for ABS 

(eg on fitness to own and 

requirements for a Head of Legal 

Practice (HoLP) and Head of 

Finance and Administration 

(HoFA)) that are more onerous than 

those for non-ABS. 

It is true that there are 

requirements set out in the Legal 

Services Act (LSA) that apply only 

to ABS. Where this is the case, we 

have tried to ensure that these are 

implemented in a pragmatic way. 

So, for example, we have said that 

we consider that the qualifications 

and experience of a HoLP are, 

broadly, matters for the ABS to 

decide rather than the regulator. 

Where tests do currently exist 

(such as a requirement for criminal 

records checks, or disclosure of 

being declared bankrupt), they 

should not be any more onerous 

for ABS than for non-ABS. There 

may be some aspects of ABS 

regulation that Approved 

Regulators (ARs) consider should 

be copied across into non-ABS 

regulation. In such cases we 

would expect the AR to have 

evidence to justify any additional 

requirements. 

2. ABS may raise issues about legal 

professional privilege for intellectual 

property attorneys. In the current 

framework, for an MDP privilege 

rests with the entity. Are there 

similar protections for ABS? This is 

particularly an issue for those 

firms that deal with the USA. 

Legal professional privilege is 

covered in LSA s190. However we 

recognise that this is an important 

issue and we will work with IPReg, 

CIPA and ITMA to identify whether 

there are gaps/differences and 

how these could be addressed. 

3. Will the change in regulating for 

outcomes be able to deal 

appropriately with different ABS 

structures – for example a sole 

July/August 2010

practitioner whose spouse is a 

shareholder, compared to a large 

corporation? 

For both ABS and non-ABS, in 

order to implement outcomes 

regulation successfully, ARs/LAs 

will have to adopt a risk based 

approach. This would mean that 

the AR/LA would be aware of the 

risks posed by a sole practitioner 

compared to a large corporation 

and would adapt a proportionate 

approach to each one. 

4. IPReg as a possible Licensing 

Authority for ABS: 

IPReg may not have the resources to 

be able to check fully the owners of 

a complex corporate structure 

LSB anticipates that there will be 

some types of ABS that a LA is not 

competent to regulate. Although 

the LSB can become a LA we hope 

that we will not need to. If it 

appears that IPReg is not going to 

be a LA, there would need to be 

discussions between it and 

existing LAs to see which one 

appeared competent to regulate 

intellectual property attorneys 

and whether any changes needed 

to be made to regulatory 

arrangements. Alternatively it may 

be possible to set up outsourcing 

arrangements to carry out the 

required checks. 

LSB would expect LAs to put 

the onus to provide sufficient 

information on the ABS licence 

applicant, although there would 

need to be some checks carried 

out to ensure that the information 

was correct. 

Licence application fees can be 

structured so that they are cost 

reflective – so those whose 

applications required substantial 

resources to check would pay 

more than those with 

straightforward applications. 

Can there be a joint application 

from CIPA/ITMA to avoid the need 

to pay two application fees, since 

regulation will be carried out by 

IPReg? 

LSB will check the application 

rules. 


Will the costs of regulating ABS be 

borne by ABS or smeared across all 

those regulated? 

This is for the AR/LA to decide. As 

a general principle, it is preferable 

for costs to be able to be allocated 

as accurately and transparently as 

possible. 

Currently IPReg does not have 

sufficient information to be able to 

assess the likely demand for ABS 

licences from those it regulates or 

new entrants. 

We understand that IPReg has 

started to gather information 

about the entities it regulates. This 

should help it to assess which are 

likely to need an ABS licence. 

5. If a TMA/PA LLP is owned by a 

limited company provides services 

to it, but the reserved activity is only 

provided by the LLP, is the limited 

company an ABS? 

A - Who the licensee is will always 

depend on the precise 

circumstances. But even if the 

limited company is not the 

licensee (and the LLP is), the 

owners of the limited company 

would need to pass a fit and 

proper person test. 

6. There will be a wide range of ABS – 

what are the boundaries of 

regulation? 

We agree that this is an important 

issue. The SRA is facilitating a 

working group that includes all 

the ARs as well as other regulatory 

bodies such as the FSA and the 

accountancy bodies to discuss 

how to deal with regulatory 

overlaps in the least burdensome 

way possible. The LSB will also be 

looking more widely at where 

regulation now bites and whether 

it provides appropriate levels of 

consumer protection. 

7. Question for IPReg – it would be 

very helpful for some guidance 

about where the reserved legal 

activities are actually carried out by 

intellectual property attorneys. 

Legal Services Board 

9 June 2010 

“The SRA is facilitating 

a working group that 

includes all the ARs as 

well as other regulatory 

bodies such as the FSA 

and the accountancy 

bodies to discuss how 

to deal with regulatory 

overlaps in the least 

burdensome way 

possible. The LSB will 

also be looking more 

widely at where 

regulation now bites 

and whether it provides 

appropriate levels of 

consumer protection.” 

July/August 2010 ITMA Review 9


ITMA Summer 

Reception 

8 July 2010 

Westminster Boating Centre. 

Pictures by Stewart Rayment. 

Rachel Gillard-Jones and Michael Keogh (BP) 

Manish Joshi (Joshi & Welch), Haakon Vold-Aunebakk 

and Spencer Burgess (Eccora) 



George Apaya (BBC Worldwide), 

Anusha Arunasalam (Boult Wade Tennant). 

Daniel Sullivan, Duncan Welch, Anna Claudia 

Turchetto, Rachel Harrison, Manish Joshi (all 

Joshi & Welch); Rear: Bob Boad (Joshi & Welch), 

Mary Bagnall (Mayer Brown International), 

Donald Pennant (Akzo Nobel) 

Florian Treub and Triona Desmond, 

(Hammonds), Jeremy Dickerson (Burges 

Salmon), Lianne Bulger (Hammonds) 

July/August 2010

Lianne Bulger (Hammonds), Akosua 

Mensah (Formula One Management) 


Mark Finn (EMW Picton Howell), 

Giovanni Visintini (BP), Ian Wood 

(Mayer Brown International) 

Declan Cushley (Browne Jacobson), Jeremy Dickerson (Burges Salmon), 

Hilde Vold-Aunebakk (Acapo AS), Emma Tuck and Mark Daniels (Browne Jacobson) 

Matthew Stokes, David Sheppard, Dipthi 

Bryant and Robert Davey (Thomson Reuters) 


BOOK REVIEW 

How many markets are there 

for trade mark books? There is 

the higher-end market, served 

by the bound encyclopaedia 

and loose-leaf tomes that fill 

shelves and exude gravitas. 

There are the thinner academic 

books that display that the 

reader is interested in the 

underlying principles, the 

history and the economic 

justifications for trade 

mark law. 

Then there is the middle ground. The 

middle ground is troublesome. I can 

imagine the author must question 

how far to go – what subjects stay in, 

which are omitted and how much 

detail does one give? Is it intended to 

address the dryness of some of the 

practitioner texts, perhaps making a 

reference text which is easy to read 

and which begins not from the cases, 

but from the principle? Is it a text 

which covers most of what a 

practitioner will face, leaving more 

difficult questions to the specialist 

practitioner texts? 

A Practical Approach to Trade Mark 

Law is a book in the middle ground. 

At £44.95 it is substantially cheaper 

than many other texts, and in its 

writing it is clear that its intentions 

are not to compete with Kerly. It 

describes itself as “providing a 

comprehensive overview of the 

subject complete with clear, practical 

advice and tips on issues likely to 

arise in practice”. It also says it is “an 

excellent resource for those new to 

the law, where the expert overview 

and clear layout promote clarity and 

ease of use”. I think it is half right. 

BOOK REVIEW 

Practical, but not quite there in practice 

A Practical Approach to Trade Mark Law (4th Ed). Michaels and Norris. Published March 2010, £44.95 

Oxford University Press. Reviewed by Aaron Wood. 

It is certainly easy to use, and the text 

provides a clear introduction to all of 

the essential aspects of trade mark 

law. If it were to have included a 

chapter explaining how everything 

fits together – questions of validity, 

infringement, defences and the like – 

then it would be an outstanding text 

to give to someone new to the 

profession. What it does particularly 

well is to give a few sentences of 

explanation to the cases it mentions, 

something which is missing from a 

number of other texts, whose method 

is simply to cite. By leading readers on 

a journey with these cases, the text 

is rendered memorable. It is to be 

regretted that barristers are taught 

the foundations of outstanding public 

speaking, including the importance 

of story-telling, yet so few barristers 

extend this to their written work. 

Where the text does fall down, 

unfortunately, is in depth. The writing 

extends to 234 pages (by way of 

comparison, the chapter on passingoff 

alone in Kerly extends to 125 

pages). Most texts on trade marks 

give scant regard to collective and 

certification marks – this text gives a 

mere six paragraphs. Brevity is 

something to be admired where it 

can be done well. There is much skill 

in explaining something in fewer 

words. In being brief, however, it is 

easy to omit or be inaccurate. I think 

this has happened in this work. 

In the chapter relating to 

assignments, for example, it is said 

that an assignment must be in writing 

and must be signed by the assignor or 

their personal representative. Given 

that this book addresses both UK and 

CTM law and practice, I think that this 

is a dangerous omission. How easy 

would it be to take that paragraph 

on trust, and later find that the 

assignment of the CTMs was not 

valid? Likewise, the explanation of 

the difference between “capable of 

distinguishing” and “distinctive” was 

not well expressed, and overlooks 

the quite clear comments in the 

POSTKANTOOR case. The text 

also makes a misleading mess of 

explaining how the notification 

system at the UKIPO works. Having 

tried to explain this to a client, I can 

profess that it is somewhat akin to 

explaining the offside rule to an 

Amazonian pygmy, but it should 

be possible to explain it. 

That is not to say that this book does 

not treat some subjects well. I was 

particularly pleased with the section 

on remedies, the section explaining 

the interaction between s10(6) 

and the Comparative Advertising 

Directive and the section on 

exhaustion of rights in the context of 

rebranding and re-boxing. This brings 

me back to my first paragraph, and 

the question of where this book lies 

in the market – who should buy it? I 

would recommend it to new trainees, 

as its length is not off-putting. A new 

trainee could easily grasp many of the 

overarching concepts in trade mark 

law over a short period of time thanks 

to the storytelling style of this book. 

Would I use it as the sole manual in 

my practice? No, but I don’t think that 

this was the intention of the authors. 

I would, however, consider lending it 

to a more experienced trainee who 

had a “blind-spot” – some area of 

trade mark law where the law is 

difficult to understand because of 

the many strands. I think that the 

explanations in this book would 

generally serve as a good starting 

place for further study. 

Aaron Wood, Wood Trade Marks, 

aaron@woodtmd.com 


CASE COMMENT 

Geoff Weller 

Summary 

This was the Appointed Person 

decision on the costs to be awarded 

following the unsuccessful appeal by 

Red Bull GmbH in their opposition 

to the trade mark application for 

BULLDOG by Sun Ltd. The appeal was 

reported in the May issue of the ITMA 

Review. In that decision Ms Michaels 

had indicated Sun (which was not 

legally represented) was entitled to a 

contribution towards its costs in the 

appeal. In this decision Ms Michaels 

was presented with a five-figure costs 

claim by Sun which, on application of 

the principles of cost awards at the 

Registry in general and in particular 

for unrepresented parties, came 

down to just £367.50. 

Decision 

Ms Michaels noted that costs before 

the Registry and Appointed Person 

are intended to make a contribution 

to the costs of the action not to 

compensate for the expense the party 

has been put to. In most cases, which 

do not qualify for “off the scale” 

awards, the award is according to the 

“modest” published scale which it is 

generally accepted is unlikely to ever 


CASE COMMENT 

Bulldog case proves an 

expensive victory for Sun 

Appointed Person decision O-108-10 of Amanda Michaels on 

31 March 2010 in the matter of UK tm application no 2442910 

BULLDOG in class 32 by Sun Mark Ltd and opposition no 95303 

thereto by Red Bull GmbH. Geoff Weller reports... 

reflect the actual costs incurred. 

Ms Michaels noted the case law 

guidance for when the party to be 

awarded costs was not professionally 

represented, which is to apply by 

analogy the principles of the High 

Court as set out in particular in the 

Civil Procedure Rules 48.6. Essentially 

this says an unrepresented party can 

only ever get two thirds of what a 

represented party can get and the 

amount will depend on whether he 

can prove a financial loss. If can not 

then the amount he can get is the 

amount calculated for the reasonable 

time spent doing the work at the 

fixed rate of £9.25 an hour. 

Sun claimed a total of £14,000 as 

costs in the appeal alone. Ms 

Michaels, noting this was not a case 

with reasons to award off the scale, 

felt that this claim was both at a rate 

unsupported by evidence – rates 

claimed were up to £250 per hour, 

and at an amount of time that was 

not objectively reasonable for this 

case – 74 man hours. As no actual 

financial loss was shown by Sun in 

evidence, she awarded an amount 

based on time she considered would 

have reasonably be spent on doing 

the work in this appeal and hearing 

(30 hours preparation plus four hours 

per person to attend the hearing) and 

on the £9.25 per hour rate. This came 

to £367.50 to be added on top of the 

£1,650 awarded by the hearing officer 

(whose decision had been upheld in 

the appeal). 

Comment 

This decision is a reminder to all that 

costs awards in cases at the Registry 

are, as a policy, contributory and not 

compensatory. Parties involved in or 

considering matters before the 

Registry must bear in mind the actual 

costs expended on cases will almost 

always far exceed the scale even for 

unrepresented parties. This case 

gives a factual example of the time 

considered reasonable on a particular 

case and how that then translates into 

a financial award. I suggest this case 

also makes it imperative that an 

unrepresented party document 

carefully the loss to their business 

whilst dealing with the action so as 

to give themselves the best possible 

position with the modest cost 

award envelope. 

Geoff Weller, IPULSE, 

gweller@ipulseip.com 


CASE COMMENT 

CASE COMMENT 

The pen is mightier than 

the figurative mark? 

Beifa Group Co Ltd v OHIM (defendant) & Schwan-Stabilo Schwanhaüßer 

(intervener), Case T-148/08. Almost five years after Beifa’s Community 

registered design for a highlighter pen prompted an objection by 

Schwan-Stabilo, judgment of the General Court came down on 

12 May 2010. Arguably the most arresting aspect of the decision is 

the result itself, but there’s more to this case than meets the eye, 

says Ben Longstaff. 

What happens if you register a 

Community design for a product, and 

a competitor objects that your design 

is too much like one or more of their 

registered trade marks for the same 

product? It shouldn’t be too difficult 

to sort out, or at least you might hope 

not. Yet after just such unremarkable 

beginnings, this seemingly simple 

dispute over highlighter pens has 

become the first Community 

registered design appeal to reach 

judgment in the General Court. 

Beifa’s registration (no 352315-0007, 

published on 26 July 2005) was for 

a highlighter pen. The following 

summer, Stabilo succeeded in 

invalidating the registration under Art 

25(1)(e) of the Community Design 

Regulation (6/2002), which refers to 

earlier rights arising out of either 

national or Community law. In this 

case Stabilo relied on its rights under 

national law – the Markengesetz, 

which is Germany’s implementation 

of the Trade Mark Directive. 

The Stabilo trade mark in question 

showed a figurative drawing of a 

highlighter pen, with, it must be said, 

at least some resemblance to the 

Beifa design (see German trade 

mark 300454708). 

Beifa’s appeal from the Cancellation 

Division was dismissed at OHIM in 

January 2008. The Third Board of 

Appeal found that use of the sign 

would breach Stabilo’s rights under 

the Markengesetz, despite certain 

differences between the design and 

the mark. Consequently there was 

no need to consider Stabilo’s other 

evidence on invalidity (this conclusion 

was to have a crucial bearing on the 

outcome). Beifa then took its case to 


the General Court, arguing that the 

decision should be annulled and sent 

back to the Cancellation Division to 

hear the remaining points. 

Beifa made three particular pleas on 

the substance: 

1) Art 25(1)(e) should be restricted 

to designs identical to the earlier 

mark; 

2) Beifa was entitled to request proof 

of use of the earlier mark; and 

3) Art 25(1)(e) had been incorrectly 

applied, since there had not been 

a proper assessment of the 

likelihood of confusion 

Perhaps unsurprisingly, Beifa lost on 

the first point. The General Court held 

that there was no reason to interpret 

Art 25(1)(e) so restrictively – that 

would prevent trade mark owners 

objecting to all but identical signs, 

and would be at odds with the recitals 

to the designs Regulation. 

The second point provided at least a 

technical victory for Beifa. The court 

ruled that the company was certainly 

entitled to rely on the proof-of-use 

provisions in the Markengesetz, 

despite the fact that there are no 

equivalent entitlements in the 

Regulation. This suggests that Art 

25(1)(e) imports not just earlier rights 

arising under the national law, but 

also any corresponding limitations 

that qualify those rights. 

The catch was the General Court’s 

next finding: the correct time to ask 

for proof of use of the mark was 

during the period for preliminary 

observations by the proprietor. 

Unfortunately for Beifa, this request 

was therefore way out of time. 

Ben Longstaff 

The third of Beifa’s pleas created a 

lengthy discussion in the judgment. 

The appellant’s argument was 

that OHIM had not undertaken an 

assessment of the likelihood of 

confusion on the part of the relevant 

public. Again, the court turned to the 

national law relied on by Stabilo, the 

Markengesetz, which does indeed 

require a likelihood of confusion, in 

line with Art 5(1)(b) of the Trade 

Mark Directive. The correct test was 

therefore to apply the case law 

derived from that article – global 

assessment, overall impression and 

so on. 

The court duly identified the relevant 

public and the nature of the visual 

comparison to be made in this case 

(conceptual and aural considerations 

being largely impossible for the shape 

of pens), apparently endorsing the 

approach taken by the Board at 

OHIM. In fact it all appeared to look 

very promising for Stabilo, until the 

issue of the mark itself came under 

scrutiny. 

Here things veered badly off course 

for the trade mark proprietor. 

The General Court noted that the 

Cancellation Division’s judgment had 

referred to the “three-dimensional 

shape” of the earlier trade mark. It also 

noted that the parties all agreed that 

the mark was in reality a figurative 

mark, as recorded in the minutes. 

The “inescapable conclusion” of this 

paradox was that the comparison 

made by the Cancellation Division 

was between the design and some 

other, unidentified three-dimensional 

mark. The suggestion was that the 

rogue mark might well have been a 

German 3D mark that Stabilo had 

July/August 2010

elied on at an earlier stage. This error 

in law was fatal to the outcome, and 

since it had not been corrected by the 

Board of Appeal, the decision had to 

be annulled. 

OHIM and Stabilo argued that it was 

enough that the earlier mark was 

similar to a different sign, which was 

in turn similar to the design – a sort of 

chain of similarity. As one might 

expect, the General Court had little 

time for that argument, stating that 

there is no presumption that similarity 

will hold by extension via an 

intermediate sign. The comparison 

must be with the exact sign relied on. 

Moreover, to hold otherwise would 

require the court to make fresh 

findings of fact on similarity, and the 

court had already made quite clear 

that it was not able to rule on the 

merits of issues not already 

discussed below. 

The outcome of all this was that 

Stabilo’s earlier wins were overturned, 

restoring Beifa’s registered 

Community design. In a further 

unfortunate twist for Stabilo, the 

court held that even though the 

respondent had no less than four 

other grounds for challenging the 

registration, these had not been 

considered by the Board of Appeal, 

and so could not be looked at by 

the General Court. 

For reasons best known to Stabilo, 

it had not sought to have the case 

remitted to the Cancellation Division 

for hearing its other arguments in the 

event of Beifa winning the appeal. In 

contrast, Beifa had sought hearing of 

those other arguments, presumably 

expecting that this would be the 

normal course of events, so the 

appellant must have been rather 

relieved when the court held that it’s 

interests were “sufficiently 

safeguarded by annulment of the 

contested decision” without needing 

to give Stabilo the chance to run 

further arguments. Whether 

Stabilo’s interests have been equally 

safeguarded is presumably 

something its lawyers are exploring. 

The judgment also produced a couple 

of jurisdictional and procedural 

points. Notably, the court rejected 

OHIM’s argument that remitting the 

case to the Cancellation Division 

would amount to the General Court 

giving an order to OHIM, which it had 

CASE COMMENT 

no jurisdiction to do. The court held 

that all it would be doing in such a 

situation is making a decision that 

Board of Appeal ought to have taken, 

and it noted that OHIM was bound to 

do whatever was necessary to comply 

with its judgments. 

The court further held that although 

new pleas in law are not admissible 

on appeal as a general rule, a party 

can bring a plea that amplifies or is 

closely connected with a plea 

previously put forward, whether 

directly or by implication. 

Where does all this leave trade mark 

proprietors? The judgment certainly 

seems to strengthen the position of 

Community designs as against 

figurative marks. It also emphasises 

the need to make absolutely clear 

that a 3D mark is being registered 

as such rather than just a figurative 

image (see for example rule 3.4 of the 

Implementing Regulation 2868/95, 

as amended). Even so, the judgment 

also emphasised that the relevant 

public will perceive threedimensional 

marks differently to 

figurative marks, presumably 

referring to the lower inherent 

distinctiveness of shape marks. 

It may not seem a heartwarming 

judgment for trade mark owners, 

but clearly a great deal turned on 

the elementary error of making the 

comparison with the wrong mark. 

It sounds as though relying on the 

interloping mark, whatever it may 

have been, would have been a much 

better bet for Stabilo (OHIM seemed 

to think so), and of course it is also 

possible that Stabilo could have 

romped home on its other 

arguments. 

That doesn’t make the General Court 

ruling wrong, however. Rather, it 

highlights the potential inefficiency 

and uncertainty that can result from 

not deciding on all the issues at first 

instance, but instead allowing a single 

issue to determine the outcome as 

far as the General Court. As such, this 

decision probably says much more 

about the importance of well 

structured litigation than it does 

about the inherent strength of trade 

mark rights. 

Ben Longstaff is a pupil at Hogarth 

Chambers, where he has been sitting 

with Richard Davis, counsel for Beifa 

“The judgment 

certainly seems to 

strengthen the 

position of 

Community designs 

as against figurative 

marks. It also 

emphasises the need 

to make absolutely 

clear that a 3D mark is 

being registered as 

such rather than just a 

figurative image (see 

for example rule 3.4 

of the Implementing 

Regulation 2868/95, 

as amended). Even so, 

the judgment also 

emphasised that the 

relevant public will 

perceive threedimensional 

marks 

differently to 

figurative marks, 

presumably referring 

to the lower inherent 

distinctiveness of 

shape marks. “ 


CASE COMMENT 

CASE COMMENT 

Unibanco: late submission meant OHIM 

did not consider ‘uni’ prefix evidence 

Union Investment Privatfonds GmbH v OHIM, Case No: T-392/06, ECJ (Third Chamber). In September 2000, Unicre- 

Cartão International De Credito SA (Unicre) applied for a Community Trade Mark for the device mark, 

‘Unibanco’ in respect of services in classes 36 and 38 relating to credit card services and internet 

communications. Emma Blake reports... 

Union Investment Privatfonds GmbH 

(UIP) submitted an opposition to the 

registration of the mark in July 2001 

on the basis of its earlier German 

registrations for the device marks, 

UniFLEXIO, UniZERO and UniVARIO 

for services in class 36 (earlier marks). 

OHIM's Opposition Division notified 

both parties that the deadline for the 

service of submissions was 5 June 

2002. On 29 May 2002 OHIM received 

a fax from UIP responding to the 

submissions made by Unicre. On 6 

June 2002, the Opposition Division 

received a further submission from 

UIP referring to a decision by the 

High Court in Frankfurt as to the 

registration of marks with prefix ‘Uni’. 

On 4 February 2003, UIP submitted 

further evidence as to use of the 

earlier marks including extracts from 

a number of economic journals. The 

evidence supported the view that 

products with the prefix ‘Uni’ were 

likely to be understood by the 

relevant public as originating from 

the same provider. 

OHIM’s Opposition Division rejected 

the opposition on the basis that 

there was no likelihood of confusion 

between the marks applied for and 

the series of earlier marks and that UIP 

had not submitted sufficient evidence 

in relation to use of the earlier marks. 

The evidence submitted on 6 June 

2002 or 4 February 2003 was not 

considered, as it had been served 

after the expiry of the deadline date. 

The decision was upheld by the Board 

of Appeal who agreed that the 


evidence submitted by UIP had been 

submitted after the deadline with no 

justifiable reason, and as such, 

considered. 

UIP appealed the Board of Appeal’s 

decision on the basis that OHIM 

had not exercised its discretion to 

consider the evidence as to the use 

of the earlier marks. 

OHIM had not considered the 

likelihood of confusion between the 

earlier marks and the mark applied 

for. The evidence submitted on 6 

June 2002 was of particular relevance 

as the German court decision was 

persuasive evidence as to the use of 

the earlier marks and supported the 

argument that the mark applied for 

would be likely to cause confusion in 

the minds of the public. 

The ECJ held that there was no 

duty on OHIM to consider the late 

submissions of evidence. Both parties 

had received prior notification of the 

deadline and both submissions had 

been made after the relevant 

deadline had passed. 

The ECJ referred to the previous case 

of Kaul v OHIM which suggested that 

evidence submitted after a deadline 

date should be considered if the 

evidence is of vital relevance to a key 

issue in dispute. There was, however, 

no duty on OHIM to do so. 

In this case OHIM had been aware of 

its discretion and, having reviewed 

the evidence submitted on 6 June 

2002, had decided that it was not of 

vital relevance. 

The same applied in respect of the 

evidence filed on 3 February 2003. 

The ECJ also upheld the Board of 

Appeal’s decision that the evidence 

sought to raise new issues as to the 

recognition of the prefix ‘Uni’ in 

respect of banking products. 

The ECJ stated that it was not the role 

of the court to debate what the Board 

of Appeal’s decision would have been 

if it had taken into consideration the 

late submissions of evidence, the role 

of the court was to decide whether 

the Board of Appeal had been 

correct in its decision not to exercise 

its discretion to consider the 

late submitted evidence. The 

ECJ reiterated that it was the 

responsibility of the parties to provide 

evidence and respond to objections 

within stipulated timescales. 

The Board of Appeal had been correct 

in exercising its discretion not to 

consider the late filed evidence and 

the admissible evidence filed before 

the deadline did not prove a 

likelihood of confusion between the 

mark applied for and the earlier 

marks. The ECJ therefore rejected 

the appeal in its entirety. 

The case is a good reminder of the 

need to comply with timescales set 

by OHIM in relation to the filing of 

evidence. Even the most persuasive 

of evidence is likely to be rejected if 

not served in time. 

Emma Blake, 

DLA Piper UK LLP, Birmingham, 

emma.blake@dlapiper.com 

July/August 2010

Andy Gilchrist 

Kureha applied for a Community 

Trade Mark for the word KREMEZIN 

in class 5, for various forms of oral 

treatment for medical conditions 

including renal and liver disease. 

The application was successfully 

opposed by Sanofi-Aventis SA on the 

basis it had registered the earlier 

international trade mark KRENOSIN 

for pharmaceutical, veterinary and 

sanitary products in various 

designated countries, including Italy. 

Kureha appealed OHIM's decision to 

uphold the opposition on various 

grounds, including that OHIM had 

erred in adopting an excessively wide 

classification of the goods covered 

by Sanofi’s earlier mark. 

Sanofi had been asked, in its original 

opposition, to provide evidence of 

genuine use of its earlier trade mark, 

but had only been able to adduce 

such evidence in relation to one 

product in Italy; being an intravenous 

treatment for use in a specific heart 

condition. OHIM concluded that 

the earlier mark was used for 

“pharmaceutical preparations for 

the treatment of the heart”. 

Kureha argued that OHIM’s 

construction was too wide, and that, 

applying the principals of Article 43(2) 

and (3) of Regulation No 40/94, the 

class of goods protected by Sanofi’s 

earlier trade mark should be 

interpreted more narrowly to include 

only intravenous treatment for heart 

conditions. Kureha had (somewhat 

fortuitously) sought to exclude this 

CASE COMMENT 

Kremezin encroaches on 

Krenosin’s development 

Case T-487/08 Kureha Corp v OHIM, General Court (Court of Justice of the 

European Union), 16 June 2010. The General Court has dismissed an 

appeal by Kureha Corporation, a Japanese company engaged in 

the manufacture and sale of specialty chemicals, to set aside the 

opposition of its trade mark application for the word KREMEZIN. 

In doing so it had to consider whether partial use of an earlier 

trade mark was enough to prevent a subsequent trade mark 

registration. Andy Gilchrist reports... 

particular subset of goods from its 

own class 5 application. 

The General Court rejected Kureha’s 

proposed sub-categorisation as being 

far too narrow, on the basis this 

would undermine Sanofi's legitimate 

interest in being able, in future, to 

extend its range of goods or services 

under the protection of its trade mark. 

In doing so, the General Court 

stressed that the purpose of Articles 

43(2) and (3) was to restrict the 

number of conflicts between two 

marks where there is no commercial 

justification deriving from the active 

functioning of the mark on the 

market. It was not intended to restrict 

trade mark protection to cases where 

large-scale commercial use has been 

made of the mark. Moreover, it is 

impossible in practice for the 

proprietor of a trade mark to prove 

that the mark has been used for all 

conceivable variations of the goods 

concerned by the registration. 

Kureha also argued that Sanofi 

had failed to comply with various 

procedural requirements of 

Commission Regulation (EC) No 

2868/95, and particularly that Kureha 

had failed to sufficiently prove the 

existence of its earlier right within the 

timeframe set by OHIM. Whilst the 

General Court held that there had 

been “regrettable delay” (three years, 

in fact) by OHIM in dealing with 

Kureha’s request for Sanofi to provide 

this evidence, it held that OHIM’s 

only obligation was to request this 

evidence – it was not prevented from 

considering this evidence after any 

deadline it may have previously set. 

Kureha also failed to convince the 

General Court that OHIM had erred in 

assessing the likelihood of confusion 

with respect to the two marks under 

Article 8(1)(b) of Regulation (EC) No 

40/94. The General Court confirmed 

that a likelihood of confusion was 

made out, notwithstanding the fact 

that the relevant public here was 

composed of persons whose level of 

attentiveness may be considered to 

be high. 

This case is of interest as it 

demonstrates the General Court’s 

approach with respect to the principal 

of partial use. Kureha may have 

attempted to carve out certain 

categories of goods from its trade 

mark application, knowing that 

another company was already using a 

similar registered mark with respect 

to such goods. However, as this 

decision shows, it is unlikely that the 

court will limit a trade mark owner’s 

protection to those particular goods 

in respect of which he can show 

genuine use of his trade mark. A 

trade mark owner must be afforded 

enough scope to develop his product 

in future. It may still be wise, 

therefore, to draft specifications 

as widely as possible to ensure 

maximum protection for your or 

your client’s brand. 

Andy Gilchrist, 

DLA Piper UK LLP, Birmingham, 

andy.gilchrist@dlapiper.com 


CASE COMMENT 

Nick Boydell 

Golden Toast eV filed a Community 

Trade Mark application for 

registration of the word mark Golden 

Toast in relation to, amongst others, 

goods in class 11 for electrical 

household goods and baking 

machines and goods in class 30 

including bread and other bakery 

goods, in particular for toasting or 

self baking. 

The application was partially rejected 

by the Examiner in relation to the 

goods specified above under Articles 

7(1) (b) and (c) and 7(2) of Council 

Regulation (EC) 207/2009 (formerly 

Council Regulation (EC) 40/94) on 

the grounds that the mark was 

descriptive and lacked distinctive 

character in relation to those goods. 

This decision was approved by the 

OHIM Board of Appeal. In particular, 

the BoA found that the relevant 

public would consider the mark to 

mean that the relevant goods were 

designed for toasting and the end 

product would be “golden”, ie 

perfectly browned. 

Appeal to the GC 

Golden Toast eV put the following 

arguments to the GC: 

CASE COMMENT 

Golden Toast registration 

goes up in smoke after 

‘descriptive’ decision 

Arbeitsgemeinschaft Golden Toast eV v OHIM, GC T-163/08, 19 May 2010. 

Review based on German-language judgment. The General 

Court recently rejected an appeal by Arbeitsgemeinschaft Golden 

Toast eV against OHIM’s partial refusal to register the word 

mark Golden Toast on the ground that it was descriptive. 

Nick Boydell reports... 

The BoA had given no reason for 

its finding that the mark lacked 

distinctive character; 

The BoA had not tested whether 

the mark is in fact descriptive. In 

reality the phrase “golden toast” 

was not used in a descriptive 

manner. The results of an internet 

search were submitted in support 

of this. 

The fact that each element of the 

mark could be seen as descriptive 

did not mean that the mark was 

descriptive as a whole. The 

relevant public would not see 

a link between the element 

“Golden” and the goods. In 

particular, the goods as sold were 

raw and Golden Toast eV disputed 

the relevancy of the Board of 

Appeal’s assumption that the 

relevant public would wish their 

baking machines to bake bread 

that was “golden”. 

The mark had been registered in 

Germany and has been used in 

that jurisdiction for 45 years. For 

the German public, the mark 

was not descriptive and was an 

adequate guarantee of origin 

of the goods. 

The GC’s findings 

The GC upheld the BoA’s finding that 

the relevant public was the general 

normally informed and rational 

consumers of the European Union. 

This was not disputed by Golden 

Toast eV. 

The GC found that Golden Toast eV 

had not successfully shown that the 

BoA had made a mistake in law in 

finding that the mark was descriptive. 

The GC found that both an Englishspeaking 

and a German-speaking 

public would understand “golden” to 

be a way of describing toasted bakery 

goods that are perfectly browned. 

The element “golden” was thus an 

aspirational description of the 

relevant goods, including both bakery 

goods and baking machines. The 

submission that the bakery goods 

were sold raw did not change this 

conclusion as the goods were 

intended for toasting. 

In addition, Golden Toast eV did not 

dispute the finding of descriptiveness 

in relation to the element “Toast”. It 

thus followed that both elements of 

the mark were descriptive. However, 

the GC stated that showing that each 


of the elements of a mark is 

descriptive is not enough to show 

descriptiveness of the whole mark. 

The court referred to its previous 

decision in Case T-343/07, allsafe 

Jungfalk v OHIM [ALLSAFE]. In that 

case the CFI found that when all the 

elements of a single word mark are 

descriptive, the mark will be 

descriptive itself unless the 

combination of the elements gives a 

different impression to the mere sum 

of its parts – for example, where the 

combination is particularly unusual in 

relation to the relevant goods and 

services. The GC did not find that the 

mark combined the elements in such 

an unusual way to give a different 

impression than the mere sum 

of its parts. 

In relation to Golden Toast eV’s 

submission that the phrase “golden 

toast” was not in fact used for 

descriptive purposes, the court stated 

that it is not necessary for a finding of 

descriptiveness that the mark is as a 

matter of fact being used to describe 

the relevant goods and services. 

The only requirement is one of the 

possible meanings of a mark is 

descriptive (Case C-191/01 P, OHIM v 

Wrigley). The internet search results 

submitted by Golden Toast eV could 

thus not have any influence on the 

court’s findings. 

Furthermore, the assertion that there 

was no need to hold the phrase 

“golden toast” free for the trade was 

not relevant to the consideration of 

descriptiveness. 

If the grounds of non-registrability 

only apply in one part of the 

European Union, a Community trade 

mark cannot be registered (Article 

7(2) CTM Regulation). Thus the fact 

that the mark had been used in 

Germany and Golden Toast eV’s 

submission that the mark had thus 

lost its descriptive character in 

Germany could not affect the court’s 

findings in this case as the grounds 

still applied in other parts of the EU. 

Furthermore Golden Toast eV had not 

put any evidence forward to support 

any contention that the mark had 

acquired distinctiveness through use 


CASE COMMENT 

and as such an argument had not 

been put forward before the BoA it 

could not be introduced at this stage. 

Thus the mark was descriptive of the 

real or desired characteristics of the 

relevant goods and Golden Toast 

eV’s appeal was thus dismissed. The 

finding of descriptiveness meant that 

it was not necessary to consider 

whether the mark had distinctive 

character. 

Comment 

This case is an example of where 

the court has found a combination 

mark descriptive by holding that its 

component elements are descriptive 

and that the combination itself does 

not give a different impression to the 

sum of its parts. Following ALLSAFE, 

the combination may have to be 

particularly unusual to be registrable 

and the court did not consider this to 

be the case for Golden Toast. 

The finding of descriptiveness in 

relation to untoasted bread products 

and baking machines demonstrates 

that the court will examine the 

potential use of the relevant goods 

and services when considering 

descriptiveness rather than simply 

considering whether the mark is 

descriptive in relation to the product 

as sold. 

This case is also a reminder that 

in order for an objection of 

descriptiveness to be overcome, it is 

not enough to submit evidence that, 

in fact, a mark is not being used for 

descriptive purposes. Instead, it 

should be shown that the mark is 

not capable of being descriptive in 

relation to any of its possible 

meanings. 

Finally this case is a reminder of the 

added challenge when registering a 

Community Trade Mark over national 

marks in that grounds of nonregistrability 

that apply in one part of 

the European Union will defeat an 

application despite long use and 

acquired distinctiveness in another 

part of the European Union. 

Nick Boydell, Solicitor, Bird & Bird LLP, 

nick.boydell@twobirds.com 

“This case is also a 

reminder that in order 

for an objection of 

descriptiveness to be 

overcome, it is not 

enough to submit 

evidence that, in fact, 

a mark is not being 

used for descriptive 

purposes. Instead, 

it should be shown 

that the mark is 

not capable of being 

descriptive in relation 

to any of its possible 

meanings.” 


CASE COMMENT 

Ben Mark 

This was an appeal to the Appointed 

Person by an individual, Patrice Yassinn 

Diallo, against the hearing officer’s 

decision to refuse his UK trade mark 

application for the mark HYPNOTIZER 

for “alcoholic beverages, wines, sprits” 

in Class 33, under section 5(2)(b) of the 

Trade Marks Act 1994. In addition to 

the substantive issues, this decision 

deals with interesting procedural 

questions regarding the identification 

of errors of principle in Notices of 

Appeal and the fair treatment of 

litigants in person. 

On 30 July 2007, Mr Diallo filed 

a UK trade mark application for 

HYPNOTIZER for “alcoholic beverages, 

wines, sprits” (Class 33). 

On 13 December 2007, Heaven Hill 

filed a notice of opposition against the 

application based on its two earlier 

Community trade mark registrations, 

for HPNOTIQ word mark (no 2620466) 

and in a figurative form (no 2989085), 

under section 5(2)(b) of the Act. Both 

registrations are for “liqueur” in class 

33. Heaven Hill also relied on alleged 

rights in passing off under section 

5(4)(a) of the Act. 

The opposition succeeded under 

section 5(2)(b) of the Act on the basis 

of the earlier HPNOTIQ word mark 

(and, therefore, the hearing officer did 

not consider the figurative mark or the 

section 5(4)(a) grounds). Having 

reviewed Heaven Hill’s evidence, the 

hearing officer held that the earlier 

trade mark HPNOTIQ was not known 

to a significant proportion of the 

relevant consumers in the UK, and that 

Heaven Hill could not therefore rely on 

any enhanced reputation in the UK. 

However, the hearing officer 

concluded that the similarity between 

HYPNOTIZER and HPNOTIQ was at 

the “higher end of the scale” and, 

furthermore, HPNOTIQ was a highly 

CASE COMMENT 

Hypnotizer and Hpnotiq at 

higher end of similarity scale 

In the matter of trade mark application no 2462677 by Patrice Yassinn 

Diallo to register the trade mark HYPNOTIZER in Class 33, and in the 

matter of Opposition thereto by Heaven Hill Distilleries, Appeal to the 

Appointed Person Iain Purvis QC, 30 March 2010. Ben Mark reports... 

distinctive mark in relation to liqueurs. 

Accordingly, he decided that there was 

a likelihood of confusion in respect of 

liqueurs and spirits (identical goods) 

and also in respect of wines (goods 

with a relatively low degree of 

similarity). 

Mr Diallo appealed the hearing officer’s 

decision on a number of grounds. 

Before dealing with the substantive 

issues, it is worth mentioning some of 

the preliminary procedural issues that 

were raised in this case. 

Preliminary Issues 

(i) Preliminary Objection 

Heaven Hill, referring to the guidance 

of the Court of Appeal in Reef Trade 

Mark [2003] RPC 5, contended that 

Mr Diallo’s Notice of Appeal had not 

identified any error of principle in the 

hearing officer’s decision, but had 

simply alleged that he was wrong 

to make a finding of likelihood of 

confusion for the same reasons 

argued before the hearing officer. 

The Appointed Person said that this 

submission was a misreading of Reef 

and referred to the actual words used 

by Robert Walker LJ (paragraph 28): 

“In such circumstances an appellate 

court should in my view show a real 

reluctance, but not the very highest 

degree of reluctance, to interfere in the 

absence of a distinct and material error 

of principle.” 

According to the Appointed Person, a 

“real reluctance” is different from an 

absolute bar. He went on to conclude 

that there is no reason why a party 

should not be permitted to argue an 

appeal to the Appointed Person on the 

simple basis that the hearing officer’s 

view on likelihood of confusion was 

wrong in all the circumstances. Of 

course, he pointed out, a party will be 

more likely to succeed if an error of 

principle can be shown but, even if an 

error of principle is not identified, the 

appeal will succeed if the Appointed 

Person is satisfied the hearing officer’s 

finding was clearly wrong. On this 

basis, the Appointed Person concluded 

that Mr Diallo’s Notice of Appeal was 

not defective. In any event, the 

Appointed Person stated that if, an 

application is to be made to dismiss a 

Notice of Appeal, then it should be 

made well in advance of the appeal 

hearing to allow the appellant to 

correct the notice if possible. 

(ii) Litigants without representation 

As Mr Diallo was not legally 

represented at the hearing and did not 

appear in person (he had made written 

submissions), the hearing took the 

form of oral submissions on behalf of 

Heaven Hill with interventions from 

the Appointed Person. During the 

proceedings, Heaven Hill’s legal 

representative objected to the 

Appointed Person taking certain points 

on behalf of Mr Diallo which he may 

not himself have properly identified, ie 

he was said to be “doing the job for the 

appellant”. The Appointed Person 

therefore set out the following policies 

which should be borne in mind when 

one party is not legally represented: 

Some degree of assistance from the 

tribunal in terms of explaining the 

relevant law and procedure which 

applies to the dispute is likely to be 

necessary. 

The “overriding objective” of 

“dealing with cases justly” is said by 

Part 1.1(2)(a) [of the CPR Rules] to 

be served firstly by “ensuring that 

the parties are on an equal footing.” 

The litigant in person has the right 

to know the case which is being 


put against them and a proper 

opportunity to deal with it. 

Although the ultimate aim of 

proceedings before the Appointed 

Person (and indeed the hearing 

officer) is, like any legal process, to 

reach a just result, the process is an 

adversarial one. The Appointed 

Person (and the hearing officer) is 

a neutral arbiter in that process. 

In the Appointed Person’s view, whilst 

it was important for the Appointed 

Person to stay neutral in the 

proceedings, and in particular, not to 

introduce new points on behalf of the 

absent litigant in person, this did not 

mean that the tribunal must take a 

narrow or literal view of the written 

submissions which had been made. 

He went further by saying that: 

“one should err on the generous side 

when construing written submissions 

which have been advanced by litigants 

in person (provided always that the 

other side are protected against any 

prejudice as a result of having 

reasonably construed the submissions 

more narrowly).” 

Substantive Issues 

In his written submissions, Mr Diallo 

had raised a number of grounds of 

appeal, namely that the hearing officer 

was wrong to find (i) that the marks 

were similar and that the similarity was 

at “the higher end of the scale”; (ii) that 

there was identity and/or similarity 

between the goods for which the trade 

mark was applied for and the goods for 

which the earlier mark was registered; 

and (iii) that there was a likelihood of 

confusion between the marks. 

The Appointed Person did note a 

criticism in relation to the hearing 

officer’s approach to the comparison 

of the marks. The hearing officer had 

stated that neither mark could be 

divided into distinctive and dominant 

components and that they “[stood] 

or fell in their entireties”, a passage 

which the Appointed Person said 

was not very “well expressed”. 

However, he had then gone on to 

notionally divide up the marks by 

considering whether their beginnings 

were more important than their 

endings and referring to the visually 

striking nature of certain parts of the 

earlier HPNOTIQ mark. The Appointed 

Person concluded that the hearing 

officer had not misdirected himself. 

CASE COMMENT 

A comparison of marks should look at 

the marks as a whole, and not simply 

individual components of those marks. 

However, it should also take into 

account the “distinctive and dominant 

components”. The hearing officer 

had clearly considered the similarity 

of the marks taking into account the 

distinctive and dominant elements of 

the marks (for example, the absence 

of the Y in HPNOTIQ). The Appointed 

Person went on to conclude that, 

overall, the finding of similarity at the 

higher end of the scale was a perfectly 

reasonable conclusion the hearing 

officer could have reached. 

As for the comparison between the 

goods, it was established case law that 

there was identity between “liqueurs” 

and the general category of “alcoholic 

beverages” for which the mark was 

applied for (Meric v OHIM T-133/05). 

Identity was also established between 

“spirits” and “liqueurs”. With respect to 

the similarity between “wines” and 

“liqueurs”, the hearing officer had held, 

correctly in the Appointed Person’s 

view, that there was similarity, albeit 

at “the lower end of the scale”. 

Finally, the Appointed Person said that, 

while he may have come to a different 

view to the hearing officer on the 

likelihood of confusion in respect of 

those goods with a low degree of 

similarity (ie, wines), he considered that 

the hearing officer was well within the 

set of reasonable conclusions open to 

him, with which an appellate tribunal 

exercising “real reluctance” ought not 

to interfere. As no error in principle in 

the hearing officer’s approach had 

been identified, the Appointed Person 

upheld the decision. 

Comment 

This decision demonstrates the 

difficulty in successfully appealing a 

decision of a hearing officer where 

no error of principle per se has been 

identified. Although the Appointed 

Person thought that this was “not a 

clear-cut case” and that, in respect of 

those goods with a low degree of 

similarity, he might have reached a 

different conclusion, ultimately, the 

Appointed Person was reluctant to 

interfere with the hearing officer’s 

decision, which was “well within the set 

of reasonable conclusions open to him”. 

Ben Mark, SJ Berwin LLP, 

ben.mark@sjberwin.com 

According to the 

Appointed Person, a 

“real reluctance” is 

different from an 

absolute bar. He 

went on to conclude 

that there is no 

reason why a party 

should not be 

permitted to argue 

an appeal to the 

Appointed Person on 

the simple basis that 

the hearing officer’s 

view on likelihood 

of confusion was 

wrong in all the 

circumstances. 


CASE COMMENT 

Jennifer Sunderland 

The Court of Appeal has handed 

down its long-awaited decision in 

L’Oreal v Bellure. The decision 

implements the responses given by 

the ECJ (as it then was) in June 2009 

to questions referred to it by the 

Court of Appeal. Notably, it also 

includes an extensive explanation by 

Lord Justice Jacob of the reasons why 

he disagrees with the ECJ’s approach, 

although he recognises that the 

Court of Appeal is bound by it. 

This is a long-running dispute 

concerning fragrances intended to be 

“smell-alikes” for some of L’Oreal’s 

most famous perfumes. The 

defendants – Bellure, Malaika and 

Starion – had been using comparison 

lists which matched their copy 

perfumes to some of L’Oreal’s wellknown 

perfumes, using the L’Oreal 

registered marks. L’Oreal contended 

that this was an infringement under 

Article 5(1)(a) of the Trade Marks 

Directive (89/104). Historically there 

were also issues relating to the design 

of the defendants’ packaging, which 

the defendants had conceded. 

The Court of Appeal’s questions 

to the ECJ related to whether 

the defendants’ use of look-alike 

packaging had taken unfair 

advantage of the reputation of the 

relevant L’Oreal marks even though 

it did not “jeopardise the essential 

function of the registered trade mark 

as a guarantee of origin”. They also 

concerned the use of comparison 

lists. 

Further background may be 

found in an article on the ECJ’s 

decision by Cerryg Jones of 

CASE COMMENT 

Court of Appeal applies 

ECJ’s guidance reluctantly 

L'Oréal SA, Lancome Parfums et Beaute & CIE, Laboratoire Garnier 

& CIE –and- Bellure NV, Malaika Investments Ltd (t/a Honeypot 

Cosmetic & Perfumery Sales), Starion International Ltd, Court of 

Appeal [2010] EWCA Civ 535, Lord Justice Jacob, Lord Justice Wall 

and Lord Justice Rimer, 21 May 2010, Original Language: English. 

Jennifer Sunderland reports... 

Wragge & Co, available at 

www.wragge.com/analysis_4657.asp. 

Outcome 

Jacob LJ provided the leading 

judgment; Rimer LJ and Wall LJ 

concurred. He noted that it is lawful to 

make and sell a smell-alike product, 

that there was no customer confusion 

between L’Oreal’s perfumes and the 

cheap copies and that there was no 

tarnishment or blurring to the image 

or the distinctiveness of L’Oreal’s 

trade marks. Nor was there any effect 

on sales of the corresponding fine 

fragrances, since consumers who buy 

a “smell-alike” do so knowingly and 

would not purchase the genuine 

product. Nevertheless the evidence 

showed that the defendants achieved 

a promotional advantage by 

informing consumers which luxury 

perfumes the copy perfumes 

imitated, by reference to the 

claimant’s trade marks. 

Policy decision 

Jacob LJ’s view is that the ECJ has 

gone a step too far. He says that 

traders should not be prevented from 

making honest statements about 

lawful products, or competition will 

be impaired. In his view the ECJ’s 

approach is unnecessary and 

amounts to muzzling free speech; it 

also deprives consumers of choice. In 

his view the ECJ’s approach imposes 

a more restrictive and protective 

approach than in many other 

jurisdictions. These are substantive 

and very serious comments, aimed in 

part at the Commission’s forthcoming 

review of EU trade mark law and 

referencing also the Commission’s 

submissions in a current reference to 

the Court of Justice of the European 

Union (the ECJ as was) in a current 

“Adwords” case (Interflora Inc v Marks 

and Spencer Plc [2010] EWHC 925 

(Ch)). 

Article 5(1)(a) 

The ECJ concluded that use of the 

trade marks to refer to L’Oreal’s 

product was not an infringement 

under Article 5(1)(a). However it 

held that use of the marks in the 

comparison lists also included use 

with reference to the copy perfumes 

for the purpose of advertising 

them, and such use did amount to 

infringement under Article 5(1)(a). 

The defendants had argued that 

such use is merely descriptive (as, for 

instance, in the case C-200 Hölterhoff 

[2002] EC I-4187). However the ECJ 

found that whilst the defendants’ 

use of the marks did not affect their 

essential function it nevertheless 

affected other functions. Such 

functions include the guarantee 

of quality, and the advertising, 

communication and investment 

functions. Jacob LJ has commented 

that these functions are ill-defined 

and vague, and this is an aspect of the 

case which he wishes to draw to the 

attention of the Commission. In his 

view Article 5(1)(a) infringement 

should be confined to the essential 

function of distinguishing origin. 

What is not clear from the ECJ’s 

reasoning is whether Article 5(1)(a) 

can, like Article 5(2) in respect 

of unfair advantage, cover 


circumstances where there is no 

direct harm to the mark. The result 

is that trade mark owners in similar 

situations as L’Oreal should always 

allege infringement or Article 5(2) in 

order to ensure that unfair advantage 

(or “free-riding” – a term to which 

Jacob LJ takes exception) is covered. 

Comparative Advertising Directive 

Defendants have a ‘get out of jail free 

card’ if the trade mark use complies 

with all the conditions set out in Art 

3a(1) of the Comparative Advertising 

Directive (CAD). The conditions in 

issue were (g); it does not take unfair 

advantage of the reputation of a 

trade mark or of the designation of 

origin and (h); it does not present 

goods or services as imitations or 

replicas of goods or services bearing 

a protected trade mark. 

The defendants argued that (h) 

was confined to counterfeits; that is 

what imitations and replicas means. 

However, the ECJ gave the condition 

a wide meaning and held that the 

imitation does not have to be explicit, 

it can be implicitly communicated 

by the advertisement and that the 

imitation does not have to be in 

relation to the product as a whole, 

it can merely be the imitation of 

an essential characteristic of that 

product, such as the smell of the 

product. 

Jacob LJ felt bound to follow this 

reasoning although he commented 

that he could not see any rational 

basis for the rule. Failure by the 

defendants to comply with CAD 

means that they do not fall within 

the exception for trade mark 

infringement under CAD and 

therefore were not acting in 

accordance with honest practices. 

Article 5(2) 

For Article 5(2) infringement it is 

necessary to show detriment to either 

distinctive character or repute of the 

mark or unfair advantage taken of the 

distinctive character or repute of the 

mark. The ECJ ruled that use of the 

L’Oreal marks amounted to “freeriding”, 

which was per se taking an 

unfair advantage. Jacob LJ observed 

that this was far too broad a 

conclusion. 

Jennifer Sunderland, Wragge & Co 

LLP, jennifer_sunderland@wragge.com 


CASE COMMENT 

Firstrung bad faith verdict 

Decision O-107-10 of the Appointed Person Professor Ruth 

Annand of 31 March 2010 in the matter of UK trade mark 

application no 2423826 FirstRung in the name of Helen Adams 

and opposition no 94845 thereto by Firstrung.com Limited. 

Geoff Weller reports... 

In this decision the Appointed 

Person upheld the finding that the 

application had been made in 

bad faith, given the applicant’s 

knowledge of the existing conflict 

between the parties over the name. 

The applicant for the FirstRung 

mark was the managing director 

of FirstRungNow Limited. That 

company owned and used the 

FirstRungNow (stylised) trade mark in 

relation to its online property and 

mortgage advice services. Ms Adam’s 

application was opposed by her 

company’s main competitor 

Firstrung.Com Limited. The 

opposition was based on section 5(4) 

(the application should be refused on 

the basis of the opponent’s earlier 

unregistered rights in a number of 

stylised “firstrung” marks) and 

section 3(6) (the application should 

be refused as it was made in bad 

faith) of the Trade Marks Act 1994. 

The hearing officer held that there 

was insufficient evidence to support 

the 5(4) ground. He did find the 

opponent successful on the s3(6) 

ground. On the facts he felt that 

Ms Adams had been aware of the 

conflict between her company and 

the opponent (the opponent had 

complained to Ms Adams almost a 

year before her application about 

the use of “Firstrung” (as opposed to 

“FirstRungNow”) on her company's 

website); and had applied for a right 

she knew could prevent (given the 

acknowledged confusion between 

the marks in the same field of 

activity) the opponent continuing to 

conduct its business under the name 

FirstRung. He held her application, 

given the facts, met the requirement 

for having been made in bad faith in 

that it “fell short of the standards of 

acceptable commercial behaviour 

observed by reasonable and 

experienced persons in the particular 

filed being examined” and should be 

refused. Ms Adams appealed. 

Decision 

The actual grounds of appeal 

were that the hearing officer had 

incorrectly relied on without 

prejudice correspondence, 

attributed too little weight to 

relevant factors, made wrong 

findings of fact and given too much 

weight to peripheral matters. In 

essence, the Appointed Person 

found that there had been no 

reliance on without prejudice 

material and there had been no 

material errors in the hearing officer's 

decision requiring a reassessment 

of the facts. The appeal was thus 

unsuccessful and the application 

should be refused. 

The without prejudice finding is 

worth noting by practitioners as on 

the Appointed Person's review she 

found that the alleged without 

prejudice documents (emails from 

applicant to opponent) were never 

actually seen by the hearing officer. 

What was seen was an evidence 

exhibit put in by the applicant 

herself. That exhibit contained an 

open letter from the opponent 

which quoted parts of the alleged 

without prejudice emails. The 

Appointed Person held that in such 

a circumstance even if the (unseen) 

original emails were covered by 

without prejudice it had been 

waived by the actions of the parties. 

Comment 

This case gives an example of facts in 

which a trade mark application will 

be held to be in bad faith. It is also 

useful reminder to be very careful 

what you put in as evidence. 

Geoff Weller, IPULSE, 

gweller@ipulseip.com 


CASE COMMENT 

In March 1997, Educa Borras SA 

applied to register the device mark 

shown below in Class 28 for ‘games 

and playthings’. 

The mark was registered in October 

2002 and in October 2003 

Ravensburger AG (applicant) filed an 

application for a declaration that the 

mark was invalid based on Articles 

8(1)(b) and 8(5) of Council Regulation 

(EC) No 40/94 (now Council 

Regulation (EC) No 207/2009). The 

applicant relied on a number of 

earlier registered trade marks 

including an international registration 

in Austria for the word ‘MEMORY’ and 

a German national registration for the 

word ‘MEMORY’, both in Class 28, for 

‘placing card games’ (earlier marks). 

The Cancellation Division declared 

the mark to be invalid. Despite finding 

that the ‘EDUCA’ element was the 

‘strongest element’ of the mark, it 

determined that the word ‘MEMORY’ 

still had an independent distinctive 

role and although members of the 

relevant German-speaking public 

would understand the meaning of 

the two words ‘MEMORY’ and ‘GAME’, 

it could not be assumed that they 

would perceive the ‘MEMORY GAME’ 

word element of the mark as a 

compound noun rather than as two 

separate words (ie, ‘MEMORY’ and 

‘GAME’). The goods in question were 

found to be identical and the marks 

held to be visually, phonetically and 

conceptually similar due to the 

identical ‘MEMORY’ element, and so 


CASE COMMENT 

General Court decision 

means game over in trade 

mark invalidity action 

T-243/08: Ravensburger AG -v- OHIM and Educa Borras, SA 

(intervener) (“EDUCA Memory Game”), General Court (Eighth 

Chamber), 19 May 2010. Michael Browne reports... 

the Cancellation Division found here 

was a likelihood of confusion. 

On 3 April 2008, the Second Board of 

Appeal of OHIM annulled the 

decision. The Board of Appeal held 

the ‘EDUCA’ element was the 

dominant part and that ‘MEMORY 

GAME’ would indeed be viewed by 

the relevant public as a compound 

noun and, therefore, as a description 

of the type of game to which it 

relates. Thus, the mark and the earlier 

marks were visually, phonetically and 

conceptually different. In coming to 

this decision, The Board of Appeal 

rejected a request by the applicant for 

an oral hearing at which it wished to 

adduce evidence of the well-known 

character and high distinctiveness of 

the earlier marks. The request was 

refused on the basis that such 

evidence would not affect the 

conclusions as to the (dis)similarity 

of the signs in question. 

General Court decision 

The applicant appealed to the 

General Court on four grounds: 

(1) Article 8(1)(b) 

The appellant’s interesting argument 

was that the Board of Appeal had 

erred in failing to take into account 

that the ‘MEMORY’ element of the 

mark was an earlier registered trade 

mark with enhanced distinctive 

character and a reputation. 

The General Court rejected this 

submission, noting that the 

reputation of an earlier mark was 

not relevant to an assessment of the 

similarity of the relevant sign/mark. It 

was relevant to the assessment as to 

whether there was a likelihood of 

confusion between the sign and 

mark(s), an assessment which took 

place at a later stage. The General 

Court also endorsed the Board of 

Appeal’s finding that the mark 

was visually, phonetically and 

conceptually different from the 

earlier marks. 

(2) Article 8(5) 

The appellant submitted that in 

coming to its decision on whether 

the mark took advantage of the 

reputation in, or caused detriment to 

the distinctive character of the earlier 

marks, the Board of Appeal had been 

wrong to import an additional 

requirement that there be a likelihood 

of confusion between them. The 

General Court noted that the Board of 

Appeal had in no way suggested that 

a finding of a likelihood of confusion 

was necessary under Article 8(5) and 

that it had simply found that the mark 

and the earlier marks were neither 

identical nor similar. 

(3) Article 76 

Michael Browne 

The applicant also argued that the 

July/August 2010

Board of Appeal had failed to comply 

with the requirements of Article 76 of 

the Regulation (previously Article 74 

of Regulation 40/94) by not taking 

account of the way in which the 

goods were marketed. The General 

Court disagreed and found that 

the way in which the goods were 

marketed generally did not alter 

the descriptive nature of the words 

‘MEMORY GAME’ and therefore 

was not an important factor in the 

assessment of whether the mark was 

similar or not to the earlier marks. 

(4) Article 77 

The applicant complained it had 

not been granted an oral hearing 

at which to adduce evidence of 

the well-known character and high 

distinctiveness of the earlier marks. 

The General Court found no breach 

of Article 77 (previously Article 75 

of Regulation 40/94), as the Article 

gives the Board of Appeal power 

to allow oral proceedings where 

they are requested. This power is 

discretionary. The Board of Appeal 

correctly found that the proposed 

evidence was not relevant for the 

determination of whether the signs 

were identical or confusingly similar, 

so the Board had been right to find 

that oral submissions on this point 

were not necessary. 

Comment 

This decision of the General Court is a 

useful reminder that evidence as to 

the reputation of an earlier mark is 

relevant to the analysis of a likelihood 

of confusion between a sign and an 

earlier mark. However, that analysis is 

only undertaken once it has been 

established as a matter of fact 

whether or not the sign and earlier 

mark are either identical or similar 

(see Case C 106/03 P Vedial v OHIM 

[2004] ECR I-9573, paragraph 51, and 

Case C 234/06 P Il Ponte Finanziaria v 

OHIM [2007] ECR I-7333, paragraph 

48). Therefore if it has not been 

established as a matter of fact that 

the sign in question is identical or 

similar to the earlier mark on a global 

assessment, evidence as to the 

reputation of the earlier mark or 

marks will not come in to play. 

Michael Browne, Redd Solicitors LLP, 

michael.browne@redd.eu 

CASE COMMENT 

Angela Thornton 

Although the Appointed Person 

could accept that this was a 

borderline case and a trade mark 

which some hearing officers would 

not have found to be objectionable, 

as there was no “distinct and material 

error of principle” in the hearing 

officer’s decision, there was no basis 

for the Appeal Tribunal to overturn 

that decision. 

The applicant sought registration of 

the trade mark INTELLIGENT SENSOR 

in respect of a wide range of goods 

in class 9. The UK IPO hearing officer 

refused the application on the basis 

of both sections 3(1)(b) and (c) of the 

UK Trade Marks Act, finding that 

the mark was non-distinctive and 

descriptive in relation to the relevant 

goods claimed. 

An appeal was lodged against the 

refusal in respect of the claim to 

television receivers (TV sets) and 

cellular phones. 

The appellant argued that the 

hearing officer had erred in finding 

that, in relation to these goods, 

the mark applied for would be 

seen by members of the public 

as designating the nature or 

characteristics of the goods. They 

argued that the term “intelligent 

sensor” would not in “normal usage” 

describe the goods or any essential 

characteristic of the goods and was 

not an “obvious choice” to describe 

the goods. 

Intelligent 

Sensor fails 

Case 0-189-10, Appeal to the 

Appointed Person (Amanda 

Michaels). This case is another 

example to appellants of the 

very narrow remit which now 

exists for appeals from a UKIPO 

hearing officer’s decision. 

Angela Thornton reports... 

However, the Appointed Person did 

not believe that the “obvious choice” 

test was appropriate and found 

that the hearing officer was right 

to consider instead whether the 

average consumer of the goods 

would see the mark as referring to 

a characteristic of the goods (TV 

sets and cellular phones with an 

intelligent senor function) rather 

than as indicating trade origin. 

She similarly dismissed the appeal 

case under s3(1)(b). Even if the 

mark lacked a direct and specific 

relationship with the goods, the 

hearing officer was still entitled to 

refuse registration on the basis that 

the mark would be perceived as a 

promotional slogan and not as an 

indicator of origin. 

From one perspective, there seems 

to have been some force in the 

merits of this appeal, particularly on 

the issue of reasonable forseeability – 

the mark must be apt for descriptive 

use in trade in order to be 

objectionable under section 3(1)(c). 

If it is not in normal usage as a 

description in the trade and would 

not be an obvious choice as a 

description, there is force in the 

argument that consumers are more 

likely to see the term as a trade mark, 

rather than as a description. 

Angela Thornton-Jackson, D Young 

& Co LLP, act@dyoung.co.uk 


CASE COMMENT 

Charlotte Duly 

On 29 October 2004, a CTM application 

was filed in the name of The Office of 

the Permanent Secretary, The Prime 

Minister’s Office, Thailand for the mark 

below left. This application covered 

“silk” in Class 24 and “clothing, made 

of silk” in Class 25. 

Peek & Cloppenburg (Peek) filed an 

opposition on 7 September 2005 

against all of the goods in the 

application based on German 

registration no 30336340 covering 

Classes 18, 25 and 35 for the mark 

shown (see far right). 

On 15 October 2007 the Opposition 

Division dismissed the opposition 

on the grounds that there was no 

likelihood of confusion. Peek filed an 

appeal at the OHIM on 26 October 

2007. On 15 November 2007, Peek 

assigned the German registration to 

Van Graaf GmbH & Co KG (Graaf) and 

this was subsequently recorded with 

effect from 17 November 2007. 

The OHIM’s Fourth Board of Appeal 

issued their decision on 10 June 2008 

dismissing the appeal on the basis 

that their marks were visually, 

phonetically and conceptually 


CASE COMMENT 


similar but visually distinct 

Case T-361/08 judgment of the General Court, Peek & Cloppenburg, Van Graaf GmbH 

& Co KG v OHIM (Intervener: Office of The Permanent Secretary, The Prime Minster’s 

Office, Thailand, replaced with The Queen Sirikit Institute of Sericulture, Office of the 

Permanent Secretary, Ministry of Agriculture & Cooperatives, Thailand). Following 

an appeal to a decision of OHIM’s Fourth Board of Appeal, the Court 

provides guidance on comparing marks with predominately visual 

elements. Charlotte Duly reports... 

different. Due to these differences the 

Board determined that there was no 

need to compare the goods at issue. 

Appeal before the court 

An appeal was brought to the court 

against the decision of the Fourth 

Board of Appeal on 27 August 2008 

by Peek and Graaf. 

On 16 December 2008 the Intervener 

was replaced by The Queen Sirikit 

Institute of Sericulture, Office of 

Permanent Secretary, Ministry of 

Agricultural & Co-Operatives, Thailand 

(Queen Sirikit). Queen Sirikit and the 

OHIM also lodged responses at the 

court on the same date. All parties 

agreed to the replacement and the 

court gave leave to Queen Sirikit to 

intervene on 19 June 2009. 

On 9 July 2009 the court rejected the 

response filed by Queen Sirikit on the 

grounds that it was inadmissible 

because they were only given leave to 

intervene on 19 June 2009 but the 

response was filed on 16 December 

2008 when they were not a party to 

the proceedings. On 24 July 2009 

Queen Sirikit re-lodged their response 

and the court accepted their 

documents. 

The current appeal by Peek and Graaf 

requested that the previous decision 

by the OHIM Board of Appeal be 

annulled and an award of costs in 

their favour. Two main issues were 

examined in the appeal. First, the 

ability of Graaf to bring proceedings 

and second, the alleged infringement 

of Article 8(1)(b). 

Capacity to bring proceedings 

As a precaution the action was 

brought by both Peek and Graaf. The 

OHIM pointed out that only Peek 

were party to the proceedings before 

the Board of Appeal and therefore 

they alone were entitled to bring 

proceedings despite the fact that the 

German mark had been assigned to 

Graaf. However, the court reiterated 

that under Article 63(4) of the then 

relevant Regulation No 40/94 (now 

July/August 2010

Article 65(4) of Regulation No 

207/2009), action could be brought 

against a decision of the Board 

of Appeal by any party to the 

proceedings who was adversely 

affected by the decision. Article 65 

states: 

65(1). Actions may be brought before 

the Court of Justice against decisions 

of the Boards of Appeal on appeals. 

…65(4). The action shall be open to 

any party to proceedings before the 

Board of Appeal adversely affected 

by its decision. 

…It was confirmed that new owners 

of an earlier trade mark may bring 

an action before the court and 

should be accepted as a party to the 

proceedings once they have proven 

ownership of the relevant rights. 

Therefore the action was declared 

admissible and it was confirmed 

that Graaf could be a party to the 

proceedings. 

Infringement of Article 8(1)(b) 

The court agreed with the Board of 

Appeal that the signs at issue were 

visually different despite both 

being composed of an element 

representing an animal. The mark 

applied for was confirmed to be a 

peacock in a stylised form, seen in 

profile standing facing to the right 

with no visible feet and the words 

“Thai Silk” underneath. By 

comparison, the earlier mark also 

featured a winged creature seen in 

profile and facing to the right but this 

time with a crest, feet schematically 

drawn and a tail which appears to be 

covered in scales. In this instance 

the creature was not immediately 

discernable as a peacock since “the 

representation is schematic”. The 

earlier mark had no word elements. 

Even if the relevant public recognised 

the bird within the earlier mark as a 

peacock the representation was 

deemed to be far removed from 

the mark applied for due to the 

stylisation. Furthermore, it was 

concluded that the relevant public 

would use the word element, ie Thai 

Silk, to refer to the mark applied for. 

Even if this element is descriptive it 

does not preclude the fact that the 

relevant public would use these 

words as a reference rather than the 

CASE COMMENT 

animal depicted which created 

distance between the marks at issue. 

With regard to the conceptual 

similarity, the court provided a useful 

reminder that this arises when two 

marks use images with an analogous 

semantic content (as discussed in 

Sabel BV v Puma AG [1998 RPC 199]). 

In this case any conceptual similarity 

was regarded as weak. The court 

placed more weight on the visual and 

aural comparisons due to the way 

the goods at issue are purchased. 

Peek and Graaf claimed that all of 

the goods covered by the opposed 

application were identical to those 

covered by the earlier mark. With 

regard to Class 24, Peek and Graaf 

claimed that both clothing and silk fall 

within the category of textiles and 

that the distribution channels and 

sales outlets are often identical and 

therefore there is an overlap with 

Class 25. The court did compare the 

goods at issue and considered them 

to be identical in relation to both 

Classes 24 and 25. 

With regard to a likelihood of 

confusion, despite the fact that the 

goods at issue were identical it was 

concluded that due to the differences 

in the overall impression given by the 

marks at issue there would be no 

likelihood of confusion in the minds 

of the relevant public (who, in this 

case, were deemed to be the average 

consumer who is reasonably well 

informed, observant and circumspect 

due to the everyday nature of the 

goods). As such the appeal was 

dismissed. 

The court did state that conceptual 

similarity resulting from two marks 

with analogous semantic content 

could give rise to a likelihood of 

confusion in cases where the earlier 

mark is particularly distinctive or has a 

reputation. However, in cases such as 

this where the mark is not especially 

well known and has low imaginative 

content then there will be no 

likelihood of confusion even if the 

marks are conceptually similar. 

This decision provides useful 

guidance on comparing device marks, 

particularly when one has a word 

element and the other consists of 

pictorial elements alone. 

Charlotte Duly, Boult Wade Tennant, 

cduly@boult.com 

“... conceptual 

similarity resulting 

from two marks with 

analogous semantic 

content could give rise 

to a likelihood of 

confusion in cases 

where the earlier 

mark is particularly 

distinctive or has a 

reputation. However, 

in cases such as this 

where the mark is 

not especially well 

known and has low 

imaginative content 

then there will be 

no likelihood of 

confusion even if 

the marks are 

conceptually similar.” 


CASE COMMENT 

Numatic International Ltd had sold 

the Henry vacuum cleaner in the UK 

since the early 1980s. There were a 

number of distinctive features about 

the product: the black bowler hat, 

red lower half, smiley face, the nose 

(where the suction hose left the body 

of the vacuum cleaner) and its name, 

Henry. On the domestic market, 

Numatic’s biggest seller by far was 

the Henry, although it did sell other 

“characters” such as Hetty (with a pink 

lower half). In addition, Numatic sold 

vacuum cleaners into the commercial 

market. The main commercial model 

was the NRV200 which was similar 

in appearance to the Henry but 

had a skirting around the base and 

was either branded Numatic or 

unbranded with the name of the 

commercial customer. 

At some stage before 2008, Qualtex 

UK Ltd came up with the idea to make 

and sell a replica of the Henry as the 

design protection had come to an 

end. Their position was that once 

design protection had lapsed and as 

long as they did not use branding 

that was too close to any of Numatic’s 

then they should be free to use the 

Henry concept as they wished. 

Qualtex attempted to clear the 

way with Numatic through 

correspondence. Qualtex confirmed 

to Numatic that whilst they were 

intending to sell a replica product (in 

similar colourways) to the Henry they 

CASE COMMENT 

Numatic’s passing-off 

victory turned on the 

perceptions of consumers 

Numatic International Limited v Qualtex UK Limited, High Court (Mr Justice Floyd), 

28 May 2010. This is a decision about the Henry vacuum cleaner which 

explores the scope of protection afforded in an action for passing-off 

concerning the shape of a product that has come out of design 

protection. James Rowlands reports... 

would not use the smiley face and 

would use distinguishing branding. 

Numatic responded that it was 

the owner of the goodwill in the 

appearance of the Henry including 

its shape and get-up and that any 

attempt to market a replica would 

amount to passing-off. 

The pre-action element of this dispute 

came to a head when Qualtex 

exhibited their replica product at 

the Cleaning Show in March 2009. 

Qualtex’s replica product by this time 

was more like the NRV200 than the 

Henry (it had the black bowler hat, 

skirting round the base and a blue 

base. Qualtex’s replica did not have a 

smiley face). The product at the 

Cleaning Show was unbranded but 

was to be offered for sale with either 

Qualtex’s branding “QuickClean” or 

left unbranded so that the buyer 

could apply their own branding in the 

same way Numatic sold its NRV200. 

The case 

In May 2009, Numatic issued 

proceedings for passing-off and 

issued an application for an interim 

injunction. Mr Justice Floyd clarified 

that it was settled law that it 

was more difficult to acquire 

reputation/goodwill in the shape or 

get-up of a product as historically 

shape or get-up of a product was not 

considered to be an origin indicator 

by consumers. 

James Rowlands 

Mr Justice Floyd had no difficulty 

in finding that the combination 

of features of the Henry had a 

protectable goodwill, being the black 

bowler hat, bright red base, smiley 

face and “nose”. It is noteworthy that 

Numatic had invested heavily in the 

promotion of the anthropomorphic 

nature of the Henry in their 

advertising. For example, Mr Justice 

Floyd refers to a newspaper article 

which said “the Henrys look like small, 

squat, smiley-faced, bowler-hatted 

blimp on casters”. In addition, the 

anthropomorphic character was 

used extensively in adverts during 

primetime TV. The evidence 

suggested that marketing of the 

Henry had personalised the Henry to 

more than just a shape in the minds 

of the public. 

Misrepresentation 

Mr Justice Floyd focused much of 

the judgment in assessing the key 

question of whether a sale of the 

replica (which lacks the smiley face 

and name but retains the shape and 

bowler hat) is capable of making a 

damaging misrepresentation. 

As Qualtex had not made any sales of 

the replica product, Mr Justice Floyd 

had to make some assumptions 

based on the evidence as to how 

Qualtex’s replicas were likely to be 

sold to the public. It was held that at 

least some sales would be made 


through showrooms out of the box 

(although it would be very likely that 

the consumer would at least see the 

box before actually buying the 

replica). It was also held that it would 

be likely that the replica would have 

also been sold via the internet. 

In order to prove that there was 

a misrepresentation, Numatic 

commissioned a survey. As ever, the 

survey received some serious criticism 

from the court. However, on balance 

it was clear that Mr Justice Floyd 

used the survey to find in favour of 

Numatic on the basis that 83 

respondents out of 535 questioned 

said that Qualtex’s replica was a 

Henry and a further 88 respondents 

said it looked like a Henry – although 

the latter was of less relevance on the 

basis that there was little argument 

that Qualtex’s replica looked similar to 

a Henry. Interestingly, there is nothing 

in the judgment that analyses the 

detail of the other 364 respondents 

who presumably were not confused 

at all or at least impartial. 

However, with the combination of 

the survey and Numatic’s witnesses, 

Mr Justice Floyd held that Qualtex’s 

replica would lead customers to be 

confused as to origin and Qualtex was 

liable for passing-off. Mr Justice Floyd 

clearly thought that this was the fair 

outcome and he listed, in obiter, his 

personal reasons why he considered 

that a finding in passing-off was the 

right decision: 

1 He distinguished Hodgkinson & 

Corby v Wards Mobility [1994] 1 

WLR 1564. Numatic’s Henry was 

not just a functional article. The 

public clearly viewed the Henry as 

having the appearance of a small 

person – in other words the shape 

of the product had become 

“characterised” and had gained a 

secondary meaning (not purely 

functional); 

2 Qualtex’s replica was recognised 

by the public as being very close 

to the Henry – even if some of the 

distinctive elements were missing 

(ie, the smiley face and red colour). 

In essence, Mr Justice Floyd is 

suggesting that there is a line to 

be drawn in all passing-off cases 

depending on the evidence – but 

recognition can still occur if some 


CASE COMMENT 

of the distinctive elements have 

been removed; 

3 Even if Qualtex were going to sell 

the replica as a branded product 

“Quickclean”, this may not have 

saved them from being liable 

in passing-off. Firstly, most 

customers did not know that the 

Henry originated from Numatic 

so any branding may not have 

reduced origin confusion. 

Secondly, “QuickClean” was 

neither distinctive nor wellknown. 

Comment 

Whilst this decision could be 

regarded as extending passing-off 

into the sphere of protecting shapes 

of products, it must be read on its 

facts. For example, it is clear from 

the judgment that a great deal of 

weight was placed on the consumer 

perception that the Henry shape and 

get-up was more than just functional 

or aesthetically pleasing. In essence, 

Numatic had given the product a 

"character" which consumers related 

to and from which it had obtained the 

ability to function as a badge of 

origin. 

In addition, it seems that Mr Justice 

Floyd did not find Qualtex’s main 

witness impressive which may have 

been persuasive in the decision. For 

example, in cross-examination some 

of Numatic’s witnesses confirmed 

that they would take care about 

buying a vacuum cleaner so whilst 

they might have experienced “initial 

interest” confusion on encountering 

the Qualtex cleaner in a retail setting 

they would be unlikely to buy it 

believing it to be a Numatic Henry 

or related to Numatic’s products. 

Despite this evidence, Mr Justice 

Floyd held that only a “moderate 

amount of care” would be exercised 

by consumers when they were 

buying vacuum cleaners. In addition, 

Mr Justice Floyd was unsure whether 

or not enquiries by initially confused 

customers would lead them to 

buying the product they intended to 

buy. This was enough to allow the 

Mr Justice Floyd to make a finding of 

passing-off. 

James Rowlands, Wragge & Co LLP, 

james_rowlands@wragge.com 

“... it is clear from 

the judgment that a 

great deal of weight 

was placed on the 

consumer perception 

that the Henry shape 

and get-up was more 

than just functional 

or aesthetically 

pleasing. In essence, 

Numatic had given 

the product a 

“character” which 

consumers related to 

and from which it had 

obtained the ability 

to function as a 

badge of origin. “ 


CASE COMMENT 

CASE COMMENT 

Rioja regulators toast 

vinegar label decision 

Félix Muñoz Arraiza v OHIM (T-138/09), General Court, 9 June 2010. 

The General Court has upheld the Second Board of Appeal’s 

decision in relation to Félix Muñoz Arraiza’s appeal against 

the refusal to register RIOJAVINA on the basis of an earlier 

Community collective registration of the figurative mark RIOJA 

and numerous other figurative RIOJA registrations in the 

name of Consejo Regulador de la Denominación de Origen 

Calificada Rioja (CRD). Triona Desmond reports... 

In November 2004, Félix Muñoz 

Arraiza filed a CTM application for the 

word mark RIOJAVINA for ‘preserves, 

edible oils and fats from la Rioja’ in 

class 29, ‘vinegars, coffee, tea, cocoa, 

sugar, rice, tapioca, sago, artificial 

coffee, flour and preparations made 

from cereals, bread, pastry and 

confectionery, ices, honey, treacle, 

yeast, baking-powder, salt, mustard, 

sauces (including salad dressings), 

spices, ice’ in class 30 and ‘sole 

agencies, representation services, 

wholesaling, retailing, export, import; 

all the aforesaid relating to preserves, 

oils, edible fats, vinegars, coffee, tea, 

cocoa, sugar, rice, tapioca, sago, 

artificial coffee, flour and preparations 

made from cereals, bread, pastry and 

confectionery, ices, honey, treacle, 

yeast, baking-powder, salt, mustard, 

sauces (including salad dressings), 

spices and ice’ in class 35. 

CRD opposed the application on the 

basis of a likelihood of confusion 

under Article 8(1)(b), relying on a 

Community Collective registration 

for the mark illustrated here which 

covered wines. 

The opposition was also based on 

other figurative RIOJA marks, namely 

an International and numerous 

national registrations covering wines. 

The opposition was partially upheld 

for ‘vinegars’ in Class 30 and ‘sole 

agencies, representation services, 

wholesaling, retailing, export, import, 

all the aforesaid relating to vinegars,’ 

in Class 35. The Opposition Division 

rejected the opposition for the other 

goods and services covered in the 

trade mark application, because of 

lack of similarity between those 

goods and services and the goods 

covered by the earlier marks. 

The applicant appealed but the 

appeal was dismissed by the Second 

Board of Appeal. The Appeal Board 

concurred with the Opposition 

Division that there was a low degree 

of similarity between vinegars and 

wines, however this was offset by the 

high degree of similarity between the 

marks. This was also the case for the 

services covered by the application 

and wines. 

The applicant appealed again, 

requesting that the decision be 

annulled. The applicant argued that 

as the CRD was an administrative 

body, and more specifically a local 

agency of the Spanish Ministry of the 

Environment and Rural and Marine 

Affairs responsible for ensuring the 

quality of Rioja wines, and not a 

producer of Rioja wine, it was not an 

undertaking with which the applicant 

would compete. Secondly, the 

applicant argued that it was unlikely 

that a consumer would think that the 

applicant’s goods came from such 

an administrative body. 

Findings of the court 

Triona Desmond 

The court found that the precise 

commercial origin that the relevant 

public would attribute to the goods 

or services covered by each of the two 

marks at issue was of little importance 

so far as a likelihood of confusion 


etween them was concerned. It was 

by contrast important whether that 

commercial origin could be perceived 

by the relevant public as being the 

same in both cases. 

Comparison of the marks 

The court found that the Board of 

Appeal rightly held that the word 

element “RIOJA” covered both marks 

was the dominant element. In 

addition the court found that the 

RIOJA element of the mark attracted 

the attention of the relevant public 

by the position in both of the main 

earlier marks on which the opposition 

was based and by the reputation 

which was enjoyed within most of the 

European Union in connection with 

Rioja wines. Although there were 

other elements of one of the earlier 

marks it was considered that the 

word element RIOJA was the 

distinctive element. In addition, they 

found that there was a high degree of 

phonetic similarity between the 

marks at issue because of the 

common word element RIOJA. The 

element “VINA” of the mark applied 

for, situated at the end of the mark, 

was deemed less phonetically 

important. As to the four other 

elements of the earlier Community 

mark, “consego”, “regulador”, 

“denominacion origen” and 

“calificada”, these were located on 

four sides of the earlier mark, two of 

them positioned vertically and 

therefore difficult to read. As a result 

the court found them to be secondary 

within the mark. 

Furthermore the court considered 

that both marks RIOJA and 

RIOJAVINA had a high degree of 

conceptual similarity on their own. 

However this conceptual similarity 

was strengthened by the 

representation of a bunch of grapes 

and a vine leaf in the RIOJA figurative 

mark therefore strengthening for the 

relevant consumers the association 

with grapevine products and more 

importantly RIOJA wine. 

Comparison of the goods 

When comparing goods, the court 

found that the Board of Appeal was 

correct in concluding that there was a 

low degree of similarity between 

vinegar and wine. Nonetheless they 

found that even though vinegar, 


CASE COMMENT 

unlike wine, was not a drink, both 

products could be used in food 

preparation. In addition vinegar is 

usually obtained by the fermentation 

of wine. 

The court found that the applicant 

did not establish that the Board of 

Appeal was wrong to find that the 

goods and services referred to in the 

trade mark application were similar, 

although only to a low degree, to the 

product covered by the earlier mark. 

Other factors 

Although the applicant was the 

proprietor of the Spanish registration 

for the RIOJAVINA mark and has 

marketed vinegars in Spain under 

that mark for over 50 years, this did 

not prove the absence of a likelihood 

of confusion on the part of Spanish 

consumers as to the commercial 

origin of the vinegar marketed under 

that product. Furthermore, the 

relevant public were European Union 

consumers and not the Spanish 

public alone. 

The applicant’s argument that the 

opposition proceedings brought by 

the CRD sought to monopolise use of 

the word RIOJA whether for vinegar 

and any other products and services, 

was dismissed by the court. 

Conclusion 

The court found that the Board 

of Appeal was correct to find the 

marks visually, phonetically and 

conceptually similar and the low 

degree of similarity between the 

goods and services was offset by the 

high degree of similarity between the 

marks. As a result the General Court 

upheld the decision of the Board of 

Appeal in relation to the likelihood 

of confusion. 

This case demonstrates that 

geographical registrations can be 

used to prevent other similar marks 

from being registered. It also gives 

solace to owners of Community 

Collective marks which can be 

successfully used to prevent the 

registration of similar later marks. 

I’ll happily raise my glass to that. 

Triona Desmond, Hammonds LLP, 

triona.desmond@hammonds.com 

“Although the 

applicant was the 

proprietor of the 

Spanish registration 

for the RIOJAVINA 

mark and has 

marketed vinegars 

in Spain under that 

mark for over 50 

years, this did not 

prove the absence 

of a likelihood of 

confusion on the part 

of Spanish consumers 

as to the commercial 

origin of the vinegar 

marketed under that 

product. Furthermore, 

the relevant public 

were European 

Union consumers 

and not the Spanish 

public alone. 


CASE COMMENT 

CASE COMMENT 

Cuvée Palomar application is rejected 

under geographical indication rules 

Case T-237/08, General Court, Abadía Retuerta, SA v OHIM, 11 May 2010. In 2006 the applicant, owner of the 

Pago Palomar estate, filed a CTM application for the word mark CUVÉE PALOMAR for wines in Class 

33. The application was rejected on the basis of Article 7(1)(j) CTMR, due to similarities with the name 

el Palomar, a small little-known area covered by the designation of origin Valencia, protected as a 

geographical indication for wines. The applicant appealed unsuccessfully to the Board of Appeal, 

and then to the General Court which handed down a decision that reinforces the absolute nature 

of the prohibition in Article 7(1)(j). Patricia Kelly reports... 

Article 7(1)(j) states that the following 

shall not be registered: 

“trade marks for wines which 

contain or consist of a geographical 

indication identifying wines or for 

spirits which contain or consist of a 

geographical indication identifying 

spirits with respect to such wines or 

spirits not having that origin”. 

Article 7(1)(j) was inserted into the 

CTMR to implement the Community’s 

obligations under TRIPS to provide 

additional protection for 

geographical indications for wines 

and spirits. 

Council Regulation (EC) No 1493/1999 

on the common organisation of the 

market in wine lays down rules 

regarding quality wines produced in 

specified regions. (This Regulation has 

now been repealed and replaced by 

Council Regulation (EC) No 479/2008, 

which lays down a similar scheme.) 

Member states are asked to forward 

to the Commission the list of wines 

produced in specified regions which 

they have recognised and details of 

the national provisions governing the 

production and manufacture of the 

wines in question. The Commission 

periodically publishes this list in the 

Official Journal. 

The first such list published by the 

Commission referred, in relation to 

Spain, to the designation of origin 

Valencia, as did subsequent lists. 

The applicable national provisions 

indicate that the area Valencia is 

comprised of various sub-regions and 

local administrative areas, including 

the sub-region Clariano and the 

administrative area Palomar, later 

amended to read el Palomar. 

In light of the inclusion of the term 

PALOMAR in the mark applied for, 

and the similarity of this term with 

the protected name el Palomar, the 

application was rejected by the 

Examiner, a decision upheld by the 

Board of Appeal. 

The Board of Appeal pointed out that, 

as the Community is a party to the 

TRIPS Agreement, it is under an 

obligation to interpret its trade mark 

legislation, as far as possible, in light 

of the wording and purpose of that 

agreement. It stated that Article 23(2) 

of TRIPS, which lays down a specific 

prohibition on the registration of 

geographical indications identifying 

wines and spirits, constitutes a lex 

specialis, and was of the view that the 

prohibition in question is both 

absolute and unconditional, as it 

contains no pre-requisites, such as a 

need to deceive the public as to the 

actual place of origin (in contrast to 

the general prohibition on the 

registration of geographical 

indications laid down in Article 22(3) 

of TRIPS). 

The Board of Appeal was therefore of 

the view that el Palomar constitutes 

an area of production protected by 

the registered designation of origin 

Valencia. It felt that there was a large 

degree of similarity between the 

protected designation el Palomar and 

the term PALOMAR included in the 

mark applied for, and thus that use 

of the name CUVÉE PALOMAR was 

prohibited under the applicable 

national provision. It did not matter 

that the administrative area in 

question was now referred to as el 

Palomar, rather than Palomar, as the 

element Palomar is the essential 

element on which the geographical 

indication is based. 

The Board concluded that registration 

of the mark applied for should be 

refused pursuant to Article 7(1)(j) as 

the wines produced by the applicant 

do not originate from el Palomar. 

In response to the applicant’s 

amendment of their specification 

to “wines from an estate known as 

‘Pago Palomar’, situated in the local 

administrative area of Sardón de 

Duero (Valladolid, Spain)”, the Board 

pointed out that this amendment 

did not overcome the objection 

but rather reinforced the fact that 

the mark applied for contains a 

geographical indication which does 

not correspond to the origin of the 

goods which it describes, contrary to 

Article 7(1)(j). 


The applicant appealed to the 

General Court. In rejecting the various 

lines of argument put forward by the 

applicant, the General Court again 

referred to the Community’s 

obligation to interpret its trade mark 

legislation, including Article 7(1)(j), in 

light of the wording and purpose 

of TRIPS. 

Having reviewed the applicable 

Articles of Regulation No 1493/1999 

the court came to the conclusion that 

member states are competent to use 

the name of a local administrative 

area, a part thereof, or a small locality 

to designate a quality wine produced 

in a specified region. When this 

happens, the name in question 

cannot be used to designate wine 

products which do not come from 

that area and to which that name has 

not been assigned in accordance with 

the relevant rules. It is for member 

states to determine, for their 

respective territories, the 

geographical indications which 

they intend to protect. 

The protection of geographical 

indications does not result from an 

autonomous Community procedure 

or from a mechanism incorporating 

geographical indications recognised 

by individual member states in a 

binding Community measure. The 

publication by the Commission 

of the list of protected names, and 

corresponding national laws 

governing use of these names, is 

simply a means of informing the 

public of the protection of 

geographical indications 

implemented by each member 

state under their national laws. 

In the present instance, the court 

found that the name el Palomar 

constitutes a geographical indication 

identifying wines, within the meaning 

of Article 7(1)(j). As the wine in respect 

of which the applicant lodged their 

application did not come from the 

local administrative area el Palomar, 

the mark applied for consists of a 

geographical indication which 

identifies a quality wine produced in 

a specified region even though the 

wine in respect of which the mark was 

sought does not have that origin. 

The Board of Appeal was right to 

reject the application under Article 

7(1)(j). 


CASE COMMENT 

The fact that the wine produced by 

the applicant came from the Pago 

Palomar estate was irrelevant, as 

the only condition for the application 

of Article 7(1)(j) is that the mark 

contains or consists of a geographical 

indication identifying a wine in 

respect of wine not having that origin. 

There is no need to consider whether 

the mark applied for is likely to 

deceive the public, or whether there 

is a likelihood of confusion regarding 

the origin of the product. 

In assessing the applicability of Article 

7(1)(j) it is sufficient that the mark 

applied for contains or consists 

of elements which enable the 

geographical indication in question 

to be identified with certainty. It is not 

necessary to consider the definite or 

indefinite articles which may possibly 

form a part of them, unless the 

geographical indication consists of 

the name of a place containing an 

article which is inseparable from that 

name and which gives that name its 

own autonomous meaning. In this 

case, the presence or absence of ‘el’ 

was irrelevant. 

In dealing with an objection under 

Article 7(1)(j) the fact that a name 

which benefits from a registered 

designation of origin is unknown to 

the general public or the relevant 

class of persons, or that it has many 

meanings which moderate its 

geographically indicative nature, is 

irrelevant. 

Conclusion 

This case provides a clear reminder of 

the absolute nature of the prohibition 

laid down in Article 7(1)(j). Whilst 

finding out exactly which names are 

protected under this provision may 

involve a little research, the message 

is clear – if a name is protected it 

cannot be the subject of a CTM 

application by parties not entitled to 

use the name, irrespective of their 

reasons for wanting to use the name. 

Those involved in the naming of 

wines (and spirits) should therefore 

be careful to ensure that the names 

adopted do not incorporate 

protected names which they are 

not entitled to use. 

Patricia Kelly, IPULSE, 

pkelly@ipulseip.com 

“Whilst finding out 

exactly which names 

are protected under 

this provision may 

involve a little 

research the message 

is clear – if a name is 

protected it cannot be 

the subject of a CTM 

application by parties 

not entitled to use the 

name, irrespective of 

their reasons for 

wanting to use the 

name. Those involved 

in the naming of 

wines (and spirits) 

should therefore be 

careful to ensure that 

the names adopted 

do not incorporate 

protected names 

which they are not 

entitled to use.“ 


INTERNATIONAL 

“... this decision 

comes as a relief to 

foreign companies 

that have yet to 

register their 

trade marks in 

Malaysia. Fret not, 

as first users have 

better rights to a 

mark than the first 

party to file the 

mark. Importers 

and distributors of 

a product have no 

right in claiming 

ownership in the 

mark affixed to 

the product. “ 


INTERNATIONAL 

Malaysia: first user has 

stronger claim to Jost 

Geetha K 

The JOST mark was registered by Jost 

Cranes Sdn Bhd (the respondent) on 

22 July 2003, in Class 7 for cranes 

including parts and accessories 

thereof. 

The German company (the applicant) 

initiated an expungement action in 

2009 on the grounds that the JOST 

mark was wrongfully entered into the 

Register. The applicant argued that 

the respondent could not be the 

owner of the mark since the applicant 

was the first user of the JOST mark 

in Malaysia. 

On the other hand, the respondent 

contended that Franc Jost, the 

inventor of Jost Cranes, entered into 

an agreement with the respondent, 

one on 21 June 2001 and another 

on 28 November 2001. As Franc Jost 

sold the rights of the mark to the 

respondent through the agreement, 

the respondent claimed that the 

ownership of the mark never resided 

in the applicant. Based on the two 

agreements, the respondent had 

In the recently decided case 

of Jost Cranes Gmbh & Co 

KG v Jost Cranes Sdn Bhd, 

which was heard in the 

Kuala Lumpur IP Court, Judge 

Dato’ Azahar bin Mohamed 

decided in favour of the 

German company, 

Jost Cranes GmbH & Co 

KG and expunged the 

registered trade mark from 

the Trade Mark Register. 

Geetha K reports. 

purchased all rights to the cranes and 

the right to use the mark. Due to the 

ownership rights it claims to have, the 

respondent argued that it is the first 

user of the JOST mark. 

Before deciding on the ownership 

of the JOST mark, the IP Court first 

assessed whether the applicant was a 

person aggrieved and had the locus 

standi to initiate this action. This is 

due to the recent decision in a Federal 

Court case in Malaysia, which laid out 

a stringent test for an “aggrieved 

person” – only a person with trading 

interest in the mark can apply for a 

rectification action. In the current 

case, as the applicant had shown a 

commercial interest in the JOST mark 

even before the respondent had 

submitted an application for the 

registration of the mark, the court 

found that the applicant had the 

locus standi, being the ‘person 

aggrieved’. 

The IP Court then considered whether 

the applicant was the first user of the 

July/August 2010

JOST mark in respect of construction 

cranes with reference to various case 

laws. From the evidence adduced, it 

was found that (i) the applicant was 

the manufacturer of the construction 

cranes bearing the JOST mark; (ii) the 

respondent was the importer of the 

cranes manufactured by the 

applicant; (iii) the construction cranes 

bearing the JOST mark were widely 

advertised, published and promoted 

extensively in Malaysia by the 

respondent; and (iv) there was no 

direct binding relationship between 

the applicant and the respondent 

although both parties dealt with 

another party, Franc Jost. 

Based on the court’s judgment, the 

first agreement the respondent 

entered into with Franc Jost related 

only to the designs of the specified 

“Luffer and Topless” tower cranes, 

designs which were created by Franc 

Jost. It made no mention of the JOST 

mark. Thus, it was not an agreement 

on the sale of the JOST mark, as 

contended by the respondent. 

Instead, the sale was in relation to the 

designs of the cranes. The applicant 

was in fact the actual manufacturer 

and supplier of these construction 

cranes (having the “Luffer and 

Topless” design) during the 

subsistence of the first agreement 

Who’s who in ITMA 

Officers: 

INTERNATIONAL 

and the applicant had used the JOST 

mark as an indicator of origin on 

these manufactured construction 

cranes. 

The respondent did not produce any 

evidence to the effect that it had 

manufactured the construction 

cranes of the “Luffer and Topless” 

designs. The applicant produced 

correspondence between itself 

and the respondent as proof of 

manufacture. The correspondence 

which included letters between both 

parties occurred prior to the filing 

date of the JOST mark on 22 July 2003 

by the respondent. The letters proved 

that the JOST mark was first used by 

the applicant in relation to the cranes 

it manufactured in the course of trade 

before the priority filing date of 22 

July 2003 and the respondent was 

the importer of construction cranes 

manufactured by the applicant 

bearing the JOST mark. 

From the evidence, the judge found 

that although the respondent had 

incurred various expenses in its efforts 

to promote and sell the construction 

cranes bearing the JOST mark, such 

goodwill resided with the applicant 

as the manufacturer of the cranes 

bearing the mark. The respondent 

merely acted as a conduit that 

distributed the applicant’s cranes. 

President: Maggie Ramage, maggie@ramage.co.uk 

First Vice President: Catherine Wolfe, cwolfe@boult.com 

Second Vice President: Chris McLeod, chris.mcleod@hammonds.com 

Immediate Past President: Gillian Deas, gmd@dyoung.co.uk 

Chief Executive: Keven Bader, keven@itma.org.uk 

Treasurer: Kate O'Rourke, kate.o'rourke@charlesrussell.co.uk 

The usage of the JOST mark by the 

applicant preceded the priority filing 

date of 22 July 2003 and therefore, 

the court was unable to accept the 

contention that the respondent was 

the one that manufactured the 

construction cranes and owned the 

JOST mark before the applicant. 

The judge found that (i) the applicant 

was the first user of the mark in 

Malaysia; (ii) the respondent had 

unlawfully applied to register the 

JOST mark; and (iii) the JOST mark 

wrongfully remained on the Register. 

The expungement of the JOST mark 

was thus ordered. 

The author views that this decision 

comes as a relief to foreign 

companies that have yet to register 

their trade marks in Malaysia. Fret not, 

as first users have better rights to a 

mark than the first party to file the 

mark. Importers and distributors of a 

product have no right in claiming 

ownership in the mark affixed to the 

product. Should they be interested 

in owning rights to the mark, they 

should seek for an assignment before 

embarking on a heavy marketing 

and promotion exercise. 

Geetha K, KASS International Sdn Bhd, 

Malaysia, ipr@kass.com.my 

Administration: 

Margaret Tyler MBE, margaret@itma.org.uk 

Gillian Rogers, gillian@itma.org.uk 

Joy Dublin, joy@itma.org.uk 

Jane Attreed, jane@itma.org.uk 

Geraldine Flood, geraldine@itma.org.uk 

Lauren Boosey, lauren@itma.org.uk 

Committee Chairs: 

Public Relations Manager: Ken Storey, 

General Purpose & Finance: Gillian Deas, gmd@dyoung.co.uk 

ken.storey@btinternet.com 

Programme: Katie Cameron, kcameron@jenkins.eu 

Editor, ITMA Review: Kelly Robson, 

Book: Mark Hiddleston, m.hiddleston@elkfife.co.uk 

kellyrobson@btinternet.com 

ITMA Review: Tania Clark, tclark@withersrogers.com 

Laws & Practice: Imogen Wiseman, imogen.wiseman@fjcleveland.co.uk 

Public Relations & Communications: Simon Bentley, simon.bentley@patentable.co.uk 

Education & Training: Sanjay Kapur, sanjay.kapur@potterclarkson.com 

Designs: Simon Bentley, simon.bentley@patentable.co.uk 

Trade Mark Administrators Course: Catherine Wolfe, Wolfe.ITMA@Boult.com 

Litigators Accreditation Board: Maggie Ramage, maggie@ramage.co.uk 


AND FINALLY... 

Christian John Robert Gibson, always 

known as Chris Gibson, was born on New 

Year’s Day in 1943 and was educated at 

Harrow School and Oxford University. 

Chris joined Marks & Clerk in 1966, 

qualified at the first time of asking in 

1970, and became a partner in the firm in 

1972, serving M&C with great distinction 

until his retirement in 2009. 

Chris soon built up a large practice in 

the chemical and pharmaceutical fields, 

with two major international firms who 

remain important clients of M&C to this 

day. In particular, he pioneered an 

arrangement whereby M&C were directly 

responsible for the world-wide filings of 

a large Japanese company, and was for 

many years involved in pan-European 

litigation on their behalf. 

In his later years, while still maintaining 

a high level of client contact, Chris 

increasingly became involved in the 

FORTHCOMING EVENTS 2010 

Date Event Location CPD Hours 

20 July ITMA Evening Meeting ’ECJ & CFI Decisions’ 

Rigel Moss-McGrath, WP Thompson & Co 

Royal College of Surgeons, London 1 

14 September ITMA Evening Meeting ’Reputation – where are 

we now?’ Kieron Taylor, Swindell & Pearson 

Mayer Brown International LLP 1 

14 –17 September Marques Conference Berlin 

23-24 September INTA Forum: The Next Level: A Total Immersion Forum 

for Up-and-Coming Trade Mark Lawyers 

Brussels 

29 Sept – 1 Oct PTMG Athens 

30 Sept – 1 Oct CIPA Congress The Lancaster, London 

7 October ITMA Autumn Event ‘A Focus on OHIM and 

Europeancontentious procedures and an update 

on International and European designs’ 

Hyatt Regency, Birmingham 5 

13 – 14 October ACG Autumn Conference London 

21 – 23 October ECTA committee meetings Cracow 

26 October ITMA Evening Meeting ’Brand Valuation’ 

David Haigh, Brand Finance plc 

Charles Russell, London 1 

9-13 November INTA Leadership Meeting Arizona 

16 November Joint ITMA/LES Seminar ‘An update on legal and 

practical issues in licensing IP Rights’ 

RIBA, London 3 

23 November ITMA Evening Meeting ’The Positives, Perils and 

Pitfalls of IP Mediation’ Michael Cover, 

Charles Russell 

Wragge & Co, London 1 

9 December ITMA Manchester Christmas Dinner The Midland, Manchester 0 

14 December ITMA London Christmas Lunch The Lancaster, London 0 

More details can be found at www.itma.org.uk. Bold type indicates an ITMA organised event. 


AND FINALLY... 

Chris Gibson, 1943 - 2010 

management of M&C, and was an 

active Chairman of the firm’s Board of 

Management for nine years from 1998 

to 2007, in particular overseeing the 

consolidation of the firm’s various 

trading entities under the single Marks & 

Clerk name, the establishing of Marks & 

Clerk Solicitors, the merger with the firm 

of Lloyd Wise, and the general expansion 

of Marks & Clerk into a global firm. 

Chris also became involved in the 

management of Computer Patent 

Annuities (CPA) and served as Chairman 

while CPA was transformed from its 

original partnership structure to a 

corporate entity, prior to the successful 

sale of the company at the beginning 

of this year. 

Chris was a highly organised and 

meticulous person, a characteristic which 

served him well during his professional 

life both in terms of his client care and 

management activities. Although Chris 

could sometimes seem a little fierce to 

those who did not know him well, he 

was in private a most considerate person 

who showed great loyalty to those who 

worked with him. 

Sadly, Chris was taken ill less than a year 

into his well deserved retirement, and 

deteriorated fast in a manner that took 

all of us by surprise, and died in the 

company of his family on 4 July. 

Chris leaves behind Philippa, his wife of 

more than 40 years, their son Alex and 

daughter Claire, plus the three young 

grandsons on whom he doted. He will 

be greatly missed by them, as well as by 

those of us who had the privilege to 

work with him for so many years. The 

tributes received from his clients, and 

from the many professional advisors with 

whom he worked on behalf of M&C and 

CPA, speak volumes. 

July/August 2010

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