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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 Peacock marks conceptually 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 ITMA BUSINESS 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 ITMA BUSINESS 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
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Page 7 and 8: complaints. The Legal Services Act
Page 9 and 10: practitioner whose spouse is a shar
Page 11 and 12: Lianne Bulger (Hammonds), Akosua Me
Page 13 and 14: CASE COMMENT Geoff Weller Summary T
Page 15 and 16: elied on at an earlier stage. This
Page 17 and 18: Andy Gilchrist Kureha applied for a
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Page 29 and 30: through showrooms out of the box (a
Page 31 and 32: etween them was concerned. It was b
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