The Trade Mark Rules 2008 - ITMA

The Journal of The Institute of Trade Mark Attorneys
Issue no. 358 September 2008
A short guide
to Alicante
Recent Cases in the High
Court and Court of Appeal
The Company Names Tribunal
Trade marks and eBay, part II:
is it the beginning of the end
or the end of the beginning?
Darts-ip – ‘case law galore‘
Sweeping changes on the
horizon as the internet
becomes truly global
The Trade Mark Rules
2008: all change please!

CONTENTS
Public relations
Facebook face-off over Scrabulous
wordgame 2
ITMA business
Letter to the Editor 3
ITMA Council meeting June/July 2008 4
Recent Cases in the High Court
and Court of Appeal 6
Practice amendment notice 1/08 9
Features
The Company Names Tribunal 11
Trade marks and eBay, part II: is it
the beginning of the end or the
end of the beginning? 12
Darts-ip – ‘case law galore‘ gets a
cautious thumbs-up 15
Sweeping changes on the horizon
as the internet becomes truly global 16
The Trade Mark Rules 2008: all
change please! 18
Conference special
A short guide to Alicante 21
Case comment
Difference in marks was not
crystal clear 25
Road closed for esure’s mouse
on wheels 26
The trade mark that always
comes back! 28
Belgian beer giant gets a hangover
opposing pint sized registration 30
A trade mark might be illegible but
that doesn’t mean it’s confusing! 32
It's all in the mind... Advocate-General’s
opinion on trade mark infringement 34
CFI invalidates Lancôme Community
trade mark for make up and cosmetics 36
Knife work if you can get it 37
Procter & Gamble fight beauty mark 38
German taste for Mozart’s sweet music 39
People
ECTA 27th annual conference,
Killarney 40
Michael Heap is appointed
Chairman of IPREG 43
Who’s who in ITMA 43
Student Column 43
And finally...
Runners’ corner... 44
Formalities exam 2008 results 44
Forthcoming events 2008 44
The Institute of Trade
Mark Attorneys
Canterbury House
2-6 Sydenham Road
Croydon, Surrey CRO 9XE
Tel: 020 8686 2052
Fax: 020 8680 5723
Web: www.itma.org.uk
© 2008
PUBLIC RELATIONS
Media Watch
The biggest trade mark story of the
summer concerned the return of the
former “Scrabulous” on Facebook
under a new guise. The game is
now called “Wordscraper” and
incorporates several changes that
the Indian brothers behind it hope
will appease Hasbro Inc in their
opposition to the original game,
which they claimed infringes their
trade mark of SCRABBLE. Since
Hasbro claimed copyright
infringement and also sued
Facebook, this one may still
have some way to run.
The second story of note concerns
eBay and the sale of fake luxury
goods from the site (see Martin
Noble’s article on page 12). At the
time of writing Reuters have reported
that Tiffany are appealing the US
court ruling that the brand owner is
responsible for policing fake Tiffany
jewellery sold on eBay. This is in
contrast to the French Court ruling
that favoured LVMH (owner of Louis
Vuitton and Christian Dior brands)
against eBay who was ordered to
pay $61 million compensation.
This ruling is also expected to be
appealed and so the merry-goround
begins!
For fans of the underdog there was
bad news. The BBC reported that the
Edinburgh family who had registered
the domain www.narnia.mobi for
their son, who is an avid reader of C S
Lewis, have been ordered by WIPO to
hand it over to the company that
owns the rights to the late author’s
work. The family complained that
the ruling was made on bad faith
registration but it seems they their
case was not helped by the father
having also registered domain
names www.freenarnia.com and
www.freenarnia.mobi.
The second David and Goliath tale
that went in favour of Goliath was
even more predictable when the BBC
again reported that a Northampton
restaurateur was facing action from
PUBLIC RELATIONS
Facebook face-off over
Scrabulous wordgame
Easygroup after naming their
restaurant Easycurry. Surely there
has been enough publicity about
Easygroup’s strong IP defences to
dissuade entrepreneurs from using
any form of Easy in their name!
And finally, a headline that appealed
to me – “It’s doubles all round as
Jameson wins court order”. The story
was that Irish Distillers, the makers
of Jameson Irish Whiskey, had
convinced Mr Justice Murphy that
the labels on St Patrick Whiskey
being sold in Russia were confusingly
similar to those on the Jameson
brand and had to be changed.
As for our own contribution to the
world’s awareness of trade marks and
the profession, we have provided a
lengthy article to the Sage Guide To
Setting Up Your Own Business. The
Sage group describes itself as a
leading supplier of software and
business services to 5.7 million
customers worldwide. What an
audience!!
Sponsorship
The silence has been deafening on
the sponsorship front. We have, at
the time of writing, only one taker
who will get a clear run at the
International Meeting. As the key
factor in sponsorship is to get
branding all over conference
materials and publicity, time is fast
running out. If there are any last
minute takers, please get in touch as
soon as possible as we would hope
to be printing the International
Meeting brochure shortly after
the Autumn Conference.
Full details of our new sponsorship
packages were set out in June’s
Review and past copies can be
viewed in the Members’ area of
the ITMA website.
Business advice open days
The autumn round of exhibitions
begins at the home of English Rugby,
Twickenham, on 18 September and
continues with a revised location of
2 ITMA Review September 2008

Torquay on 23 October followed by
Cardiff on 6 November, Walsall on
13 November and finally in Belfast on
19 November. I have volunteers for all
except Belfast and hope to hear from
our Northern Ireland friends very
soon for a name – or I shall be calling!
The 2009 programme begins in
Portsmouth on 5 February and rolls
out to Fivelakes Golf and Country
Club, Essex on 26 February and Derby
on 17 March. Again, volunteers are
invited to step up to the plate.
IP awareness seminars
This awareness programme has
been running for several years and
continues to attract good sized
audiences who are invited to listen to
an excellent presentation by the UK-
IPO on all aspects of IP followed by
speakers form ITMA and CIPA on the
added value of using members of the
profession. There is usually a local
business person or Business Link
representative to give a local angle
and then one-to-one sessions for
members of the public to receive
professional advice from members
of the professions.
The next seminar is to be held in
Newbury on 26 September and the
Institute office have contacted all
qualified members in the region to
Letter to the Editor
The Department of Business
Enterprise and Regulatory
Reform (or BERR to its friends)
is conducting a Review of
Consumer Law in the UK (see
www.berr.gov.uk/files/file45196.pdf)
Whilst much of the Review does not
touch the concerns of trade mark
professionals, this is not true of
Section 4 which deals with
"Securing compliance with the law"
in general and the role of Trading
Standards Services in particular.
Anyone who is concerned with
the creeping criminalisation of IP
enforcement might wish to consult
this Review and, if sufficiently
moved, to comment on Question
22 and 23 which are respectively,
September 2008
PUBLIC RELATIONS
see if they can attend. If you haven’t
heard but would like to attend please
contact Claire Jones at UK-IPO direct
who will provide more information
(claire.jones@ipo.gov.uk). There will
be further seminars in October
(Aberdeen) and December (Royal
Tunbridge Wells). We will be in touch
with members in those regions in
due course.
Darts-IP
In a unique collaboration, the PR
Committee has negotiated a special
deal for ITMA members that enables
them to obtain a 20% discount on
the first year of subscription to dartsip’s
database on European trade mark
case law.
This is all part of our ongoing efforts
to increase benefits to members.
Elsewhere in the Review there is an
article which contains the views of
several leading practitioners. In the
envelope bringing you your copy of
the Review, together with job adverts
and other information from the
Institute, you will find a flyer which
explains more about the work of
darts-ip, what the negotiated deal
offers members, and details of how
you can pursue it.
Ken Storey PR Manager,
ken.storey@btinternet.com
Question 22:
How best can we achieve the proper
balance between the use of civil and
criminal enforcement sanctions?
How do we ensure that
enforcement is proportionate and
appropriate?
Question 23:
Should TSS have access to the full
range of civil sanctions provided for
in the Regulatory Enforcement
Sanctions Bill as an alternative to
criminal prosecution?
Yours sincerely,
Stephen James
RGC Jenkins, London
New Rules
The Government has published
The Trade Mark Rules 2008 which
consolidate, as well as amend, the
previous Trade Mark Rules 2000. The
statutory Instrument (2008 No 1797)
will come into force on 1 October
2008. The main changes that will
be introduced by the new (2008)
Rules can be found at the UK
IPO's website in a Guidance for
Business on the Rules (see
www.ipo.gov.uk/press/pressrelease/press-release-2008.htm).
For a full discussion on the new
rules, see article on page 18.
News from UK-IPO
An updated form TM26(I) will go
live on Monday 1 September 2008.
Please note that the UKIPO will
continue to accept the old form
until Monday, 1 December 2008.
According to the information
emailed by the UK IPO to its
newsletter "TMD Notifications"
subscribers, "The new form has
been designed to make it easier to
identify the relevant grounds of
invalidation and will make the
process of filing an application for
invalidation as straightforward
as possible."
The new form 26(1) will be
available in Microsoft Word format
on the UK-IPO's website at
http://www.ipo.gov.uk/tm/t-forms/tpdfword/t-tm26i.htm
from
1 September 2008 only.
New membership
benefits
Membership of ITMA and CIPA
brings with it a vast array of benefits
and services designed to provide
members with continuous support
in everything they do, both
personally and professionally.
IP Benefits Plus - the unique
membership benefits package -
offers members fantastic cost-saving
discounts on a range of everyday
products and services, from
insurance to health clubs, hotel
stays and cut-price CDs. There is
something for everyone! Available
from 1st October, 2008. For more
information contact the Institute
Office (tel: 020 8686 2052 / email:
tm@itma.org.uk).
ITMA Review 3

ITMA BUSINESS
GENERAL PURPOSES & FINANCE
COMMITTEE
Benevolent Fund
This was making progress.
Application for Registered Trade
Mark Attorney
It was reported that this was now
registered.
Legal Services Board
It was reported that David Edmonds
has been appointed Chair of the LSB.
As Board members needed to be in
place by April, 2009 it was agreed
that President Gillian Deas and PR
Manager Ken Storey would draft a
request to Corporate Members which
would go into the ITMA Review and
onto the website. These were paid
positions, constituting one day’s work
a month for a three-year term.
IPREG
It was reported that IPREG has now
been set up as a company with a
limited guarantee to cover the
regulatory function. A copy of their
draft rules of conduct had been
published on the ITMA website for
comment and the Professional
Guidance & Disciplinary Committee
would review them and submit a
formal response. IPREG were
currently thinking about how
they were going to divorce the
Institute’s regulatory side from
their representative side and it was
thought it would be done under
Nolan principles.
Tribunals, Course & Enforcements
Gillian Deas had attended a meeting
at the Royal Courts of Justice on how
to promote diversity in the judiciary,
as it would be possible for TMAs to
head up tribunals later in the year.
Project Badger
It was reported that Keven Bader has
been appointed as Executive Director
of the Institute. He would commence
his position on 3 November 2008,
and would bring to the Institute
his experience of the UK-IPO,
government bodies, ITMA Members
and staff.
BOOK COMMITTEE
Tutorial Publication
The draft questions for the T4 and T6
ITMA BUSINESS
ITMA Council meeting June/July 2008
papers had been reviewed and those
for the T3 would follow. Introductions
to the T3, T4 and T6 papers were
being finalised.
Trade Mark Handbook
Work on release 34 of the Handbook
had commenced and the next project
would be for the recruitment of new
editors.
DESIGNS COMMITTEE
The Committee were looking for
someone to write an article on the
Hague Agreement.
LAWS & PRACTICES COMMITTEE
Google trade mark policy
An email to Google had been drafted
and approved by the Committee.
It was agreed to have a trade mark
proprietor sign the email and this
would be arranged.
UK-IPO website hearings, appeals
and previous decisions’ pages
The UK-IPO were changing the way
they deal with decisions on the
website. Instead of summaries
they would provide links which it
would be possible to search at the
same time. The Committee had
commented that it would like to
have had both summaries and
searches available.
Trade Marks (earlier trade mark)
Regulations
The Committee had been advised
by the UK-IPO that the SI amending
the Trade Marks Act 1994 had come
into effect on 10 May 2008. The
Committee had no recollection of
having been consulted on this and
had written to the Registry
requesting clarification over the
impact of the transitional provisions
in Section 6. The Registry had
responded but the impact was still
not clear. Stephen James had raised
the matter of the non-consultation
with the RPWG .
Advocate General’s Opinion
A paper had been prepared by
Felicity Hide on the above in the
O2/Hutchison Decision and the
Committee were very happy
with this.
RPWG
The Committee had put in extensive
comments on the Trade Mark Rules
consultation, and there is going to
be a consultation on the CTM.
WIPO
There is to be a British Day in
September and there are three
volunteers attending: Gillian Deas,
Imogen Wiseman and Oscar Benito
from GlaxoSmithKline.
Madrid
Norway had proposed a change in
the Madrid System that applications
should no longer be dependant upon
a home registration so that when
registered they can no longer be
attacked. The Committee was
against this proposal.
Stamp Duty
Andrew Hall of Sense-Sonic Ltd was
very concerned and had expressed
very strong views about stamp duty
and submitted some papers to the
Committee. The matter would be
discussed by the Committee,
following which a short note would
be included in the ITMA Review.
Trade Mark Rules 2008
These were now published and
would come into effect as of October
this year. They included a new twomonth
opposition period.
EDUCATION & TRAINING COMMITTEE
Robert Furneaux reported that the
Committee had held their first
telephone meeting.
Education Review
The Education & Training
Consultation document had been
circulated to members and the
Committee had received plenty
of feedback.
The course on Advocacy & Evidence
had been cancelled due to
insufficient interest.
Degree Entry Only
The Committee had originally
decided to park this. However, the
second ranking had been repealed
and therefore Phillip Harris asked
whether ITMA wished to review
the situation.
4 ITMA Review September 2008

LITIGATORS ACCREDITATION BOARD
It was confirmed that Philip Harris
was the newly elected Chair of
the Board.
Trade Mark & Design Litigation
Certificates: Relevant Experience
Guidelines
The LLM experience guidelines were
now on the Institute’s website.
Philip Harris reported that he was
working on the new Regulations
which would split conduct and
advocacy rights. Once complete,
they would be sent off to the
Ministry of Justice.
LITIGATORS CONDUCT COMMITTEE
Philip Harris reported that comments
were required on CFI Rights and
suggested the best way to progress
this was via a joint Committee with
CIPA. CIPA had been backing ‘Factory
Finish’ and ITMA suggested it was a
good idea to work together.
MEMBERSHIP COMMITTEE
The meeting had touched on the
review of the structure of
membership.
Applications for Membership
The following were elected to
membership:
Student: Miss CL Blakey, Miss AE Blest,
Miss LR Barnett, Mr R Docherty,
Miss S Nally, Miss CL Proctor and
Mrs GK Rai
Affiliate: Miss AAAnim, Dr BH Clark,
Miss J Ho, Dr JO Macintyre and
Ms Ying Jiang
Ordinary: Ms C Barbour, Miss E Hunt,
Mr AS Marsden, Miss JK Norris,
Mr V Povid, Mr DA Slattery and
Ms AT Szpek
Overseas: Miss TO Balogun and
Ms A-L Lim
Election to Fellowship
Tom Farrand, Chris McLeod and
Catherine Wolfe were elected to
Fellowship of the Institute.
PUBLIC RELATIONS COMMITTEE
INTA – Berlin
This had been a success.
IP Review
An interview with Gillian Deas’ would
feature in CPA’s IP Review.
September 2008
ITMA BUSINESS
Members Benefits Group
The contract between ITMA, CIPA and
Parliament Hill had been signed and
would be available to Members, as
well as Institute staff, as of 1 October
2008. Ken Storey would liaise with
Parliament Hill over promoting the
package.
Overseas Visits Group
The Group would be meeting later
that week to go through their
presentations and the final details.
Database
Progress was being made in the ITMA
office in respect of a new database.
Regional Visits
The scheduled visit to Liverpool had
been cancelled and the Committee
had received feedback from
members in the area which they
would be taking on board.
Website
The Committee had received some
useful feedback and were planning to
look at some improvements on the
website with regard to presentation
and better links with advertisers, etc.
The jobs page was the most widely
visited page.
Design Week Awards 2009
The Institute would again be
sponsoring the Design Week Awards
and this would take place on 3 March,
2009.
Itma.org
An offer was being put to the
International Ten Metre Association
to purchase this domain name.
CONTINUING PROFESSIONAL
DEVELOPMENT
The Committee had met and
discussed one case and reviewed
those who had yet to file their
compliant declarations for 2007.
There were only eleven outstanding
declarations in total and the
Committee had agreed to look at
these individually and if necessary,
ring up the Members in question.
PROGRAMME COMMITTEE
Evening Meetings
The meetings for the remainder of
this year were finalised and the
Committee would start considering
meetings for 2009.
Charging for Evening Meetings
The Committee would be taking into
account all the responses received on
this subject.
It was confirmed that the July
evening meeting was the last at
which filming would take place and
from then on, there would be an
audio of the meeting, plus the
Powerpoint presentation.
International Meeting,
25 – 27 March 2008
The meeting was confirmed at the
Waldorf and the Committee were
now looking into the possibility of
having a dinner at Middle Temple, or
possibly Lincoln’s Inn, and thinking
about speakers.
IP Bar Reception, 7 October 2008
This would be held at Unilever and
the list of invitees would be put
together.
FORMALITIES COMMITTEE
The examination had taken place on
13 June and the results would be
published in August.
There was a proposal to change
the name of the Course and the
Committee had sounded out the
participants and most of them
described themselves as Trade Mark
Administrators. Tom Farrand formally
proposed that the Formalities Course
be renamed The Trade Mark
Administrators’ Course. Duncan
Welch seconded the proposal and
it was unanimously agreed.
With regards to the 2009 course, the
Committee were still looking to find a
venue as the UK-IPO were planning
to convert the room that was
traditionally used into three offices.
PROFESSIONAL GUIDANCE &
DISCIPLINARY
It was reported that the member
involved in one of the CPD cases that
the Committee were dealing with
had now resigned and the case has
been closed.
With regard to the second member
against which CPD had complained,
the PG&D Committee had put a
possible solution to the CPD
Committee who had agreed to go
along with the suggestion and this
would now be progressed.
ITMA Review 5

ITMA BUSINESS
Extended protection for trade marks
with a reputation
There are three cases which may be
regarded as of particular interest
which arose in this context.
The first case is Intel Corporation Inc v
CPM United Kingdom Ltd. This appeal
concerned invalidity proceedings.
The main question that the Court of
Appeal had to consider was whether
a mere ‘bringing to mind’ of an earlier
trade mark with a reputation enough
to (1) prevent a later registration or
(2) to form the basis for liability for
trade mark infringement. The Court of
Appeal made a reference to the ECJ.
On 26 June 2008 Advocate-General
Sharpston delivered her Opinion. The
key points to note from the Opinion
are: (1) that a mere ‘bringing to mind’
is in principle sufficient to meet the
requirement for a ‘link’; (2) the facts
that an earlier mark is unique and has
a huge reputation are not sufficient in
themselves to establish either a ‘link’
or ‘unfair advantage’ or ‘detriment’;
(3) in order to decide whether a ‘link’,
‘unfair advantage’ or ‘detriment’ has
been established all relevant factors
must be assessed; (4) the nature
of goods and or services may be
relevant to the issue of whether there
is a ‘link’; (5) a belief by the average
consumer that there is an economic
connection between the two marks
is not necessary to establish a ‘link’;
and (6) in order to demonstrate
‘detriment’ the earlier mark does
not have to be unique and a first
conflicting use is not of itself
6 ITMA Review
ITMA BUSINESS
ITMA EVENING MEETINGS, LONDON AND MANCHESTER
Recent Cases in the High
Court and Court of Appeal
Emma Himsworth presented a round-up of notable High Court
and Court of Appeal cases at May’s evening meeting in London
and July’s evening in Manchester, highlighting specific points
relevant to trade marks that she considered would be of interest to
members. In some cases judgment was given after the date of her
talk. This article has been written on the basis of the law in the
highlighted cases as of 31 July 2008.
sufficient nor is an effect on the
economic behaviour of the
consumer necessary.
To date the case law in the UK
has adopted a rather different
approach to the question of
extended protection of trade marks.
In particular there has been an
emphasis on the need for an effect
on the economic behaviour of
the consumer rather than a mere
‘bringing to mind’ for the necessary
‘link’ to be established. However in
the light of this Opinion and the
cross-referential approach to use
adopted in the O2 case by the ECJ
(below), it would appear that this
may need to be revisited. The
judgment of the ECJ in Intel is
expected later in the year.
Secondly, there is the case of Esure
Insurance Company v Direct Line
Insurance plc.
The issues arose on an application
for permission for a second tier
appeal. Permission to appeal was
given but the appeal refused. This
case is of importance because of the
guidance that the Court of Appeal
has given in relation to evidence. In
particular: (1) there is no need for an
‘expert’ when evaluating the
likelihood of confusion from the
standpoint of the average consumer
when the tribunal is in a position to
form its own view. That is in all cases
save where expert knowledge of a
particular market is required; and (2)
in the context of consumer surveys
there was much to be said for the
practice of giving case management
directions at an interim stage
requiring the parties to get directions
from the court as to the scope or
methodology of any proposed
consumer survey that the parties may
desire to put in evidence at trial (see
O2 Ltd v Hutchison 3G Ltd [2005]
ETMR 61 and UK Channel
Management Ltd v E! Entertainment
Television Inc [2008] FSR 5 (Rimer J.)
and [2007] EWHC 2339 (Ch)
(Lewison J.)).
Finally, there is the case of L’Oreal SA
v Bellure which concerned smell-alike
and look-alike perfumes. At first
instance L’Oreal were successful
under section 10(1), 10(2) and 10(3) of
the Trade Marks Act 1994. The claim
for passing off was rejected at first
instance and on appeal.
There were two aspects to the
infringement case on appeal: (1)
the question of liability on the basis
of section 10(3) in relation to the
packaging of the product; and (2) the
question of liability for infringement
on the basis of comparison lists which
enabled the defendant to sell their
products on the basis that they
smelled like the trade mark
proprietor’s product. The Court of
Appeal made a reference to the ECJ
on both aspects of the case.
There are three points to note in
relation to the section 10(3) aspect of
the case: (1) the onus of proving ‘due
cause’ is on the defendant; (2) the
question of whether the use is
detrimental to the distinctive
September 2008

character or repute of the mark is one
of pure fact, ie to prove the negative
effect on the earlier mark requires
evidence; and (3) the issue of whether
‘free riding’ is in principle unfair, ie
the fact that a competitor obtains a
positive benefit from the reputation
of the earlier mark is a question to be
referred to the ECJ.
However Jacob LJ expressed the view
that even where there is a degree of
‘free riding’, that is not in principle
unfair and should therefore be lawful
in the context of the infringement
case both in respect of the packaging
and in respect of the comparison lists.
Comparative advertising – the
current position
The judgment of the ECJ was given in
O2 Holdings v Hutchison on 12 June
2008. It answers the first question
referred in L’Oreal and provides
guidance as to the current approach
of the ECJ in relation to issues of
this type.
The key points to be derived from
the O2 judgment are (1) the four
conditions required to establish
liability for infringement were
reiterated (Case C-206/01 Arsenal
Football Club, Case C-245/02
Anheuser-Busch, Case C-120/04
Medion, Case C-48/05 Adam Opel
and Case C-17/06 Celine); (2) the
question of infringement must be
assessed in the context of the specific
use complained of; (3) the use of
a competitor’s trade mark in a
comparative advert can be regarded
as cross-referential use of the mark in
relation to the advertiser’s goods and
is therefore use within the scope of
Article 5 of the Trade Marks Directive;
(4) the rights conferred by a trade
mark are limited to a certain extent
that is to say the proprietor of a
registered trade mark is not entitled
to prevent the use, of an identical or
similar sign, by an advertiser in a
comparative advertisement, which
satisfies all the conditions of Article
3a(1) of Directive 84/450; (5) where
the conditions for liability under
Article 5(1)(b) of Directive 89/104 are
met the comparative advertisement
cannot satisfy Article 3a(1)(d) of
Directive 84/450; and (6) if the
proprietor does not establish liability
under Article 5(1)(b) of Directive
89/104 the fact that the comparative
ITMA BUSINESS
advertisement does or does not
satisfy all the conditions under
Directive 97/55 is irrelevant.
On the basis of this judgment it is
clear that whilst use of a competitor’s
trade mark in a comparative
advertisement may give rise to
liability for trade mark infringement
the scope of such rights in that
context is limited. The judgment in
the O2 was concerned with Article
5(1)(b) of the Trade Marks Directive
the ECJ will have the opportunity to
further consider the position in the
light of Article 5(2) in the L’Oreal case.
The question of the availability of
interim injunctive relief therefore
continues to be relevant. Red Dot
Technologies and Boehringer
Ingelheim Limited v Vetplus Limited
concerned applications for interim
injunctive relief in the context of
comparative advertising. In both
cases the application failed.
The key points to be derived from the
judgments are: (1) in cases involving
free speech section 12(3) of the
Human Rights Act is engaged; (2) the
relevant test for an injunction in such
cases is not American Cyanamid
[1975] AC 396 but Cream Holdings v
Benerjee [2005] 1 AC 253; (3) the
general ‘threshold’ that must be
crossed by the claimant is that he will
probably succeed at trial, the court
must therefore consider the merits
and be satisfied that the prospects of
success are sufficiently favourable to
justify an order being made; and (4)
the general rule is to be applied to
trade mark infringement cases
involving comparative advertising.
In most contexts, however, action in
relation to comparative advertising
is likely to be taken not by way
of proceedings for trade mark
infringement but rather by way of
enforcement under the Business
Protection from Misleading
Marketing Regulations 2008 (SI
2008/1276) and the Consumer
Protection from Unfair Trading
Regulations 2008 (SI 2008/1277)
which came into force on 26 May
2008. These regulations are intended
to implement the Unfair Commercial
Practices Directive (2005/29/EC). The
earlier legislation which covered
misleading and comparative
advertising has been repealed.
Three brief observations on the new
regulations are firstly, that business
complaints are dealt with separately
from consumer complaints; secondly,
that the scope of the protection
under the legislation could be
regarded as more akin to a protection
against “unfair competition” as
envisaged under Article 6bis of the
Paris Convention; and thirdly, that no
civil rights of action are conferred
under the regulations.
Parallel imports
There are three parallel import cases
of the last year that are of note. The
first is Eli Lilly & Co v 8PM Chemist
Ltd. The question for the court was
whether, in relation to genuine
pharmaceutical products which
originated in Turkey, certain activities
carried out in the UK under the
‘Inward Processing Relief Suspension’
procedure, which included sending
prescriptions to patients in the
United States by Royal Mail with
labels bearing an English address,
constituted trade mark infringement.
At first instance an injunction was
granted but on appeal the injunction
was refused on the basis that there
was no arguable case of trade mark
infringement.
The Court of Appeal held that the
genuine goods of a trade mark owner
which never become ‘Community
goods’ cannot interfere with the
proprietor’s right to first marketing
and therefore there can be no
infringement. In the instant case the
goods were not ‘Community goods’
on the basis of the Customs Code.
The fact that the ultimate consumer
of the goods may be given the
impression that the goods emanate
from the UK on the basis of the label
bearing a UK address and the UK
Royal Mail post mark, did not alter
the position.
The second case is Boehringer
Ingelheim KG v Swingward Ltd. The
case concerns the repackaging of
genuine pharmaceutical products by
way of ‘re-boxing’ and ‘re-labeling’. It
required consideration of Article 7 of
the Trade Marks Directive, 89/104.
In order for there to be liability under
Article 7: (1) the proprietor must
prove that there has been repackaging;
(2) the importer must
demonstrate that he has complied
September 2008 ITMA Review 7

ITMA BUSINESS
with each of the ‘BMS’ conditions
(these are the conditions set down in
conjoined Cases C-427/93, C-429/93
and C-436/93) to escape liability but if
he does; (3) the proprietor then has
the opportunity to neutralise the
importer’s compliance with the BMS
conditions by demonstrating damage
to the reputation of the trade mark.
It is now clear that: (1) if there is total
de-branding of a product there is no
trade mark infringement as there is
no ‘use’ of the trade mark; (2) that
the BMS requirement of ‘necessity’
applies to the need to re-label or rebox
and not to the form in which it
was done although the form may
be a factor that the court takes into
account the question of any damage
to the trade mark; (3) where there has
been re-labeling or re-boxing there
is no irrefutable presumption of
damage; (4) the issue of damage
is a question of fact that must be
determined by the national court;
and (5) damage to the reputation of
the trade mark could be caused in
cases other than bad packaging
for example where there is poor
presentation. The importance of the
case is that it once again highlights
the need for evidence of damage.
Cogent evidence of damage to the
reputation of the mark in suit is
essential to establish liability for
infringement by way of Article 7.
Finally, Honda Motor Co Ltd v
Neesam concerned parallel
importation of motorcycles into
the UK from Australia. Motorcycles
were sold by Honda Australia to an
Australian company on the basis that
the goods were for export only and
to be sold only to the trade. The
Australian company sold motorcycles
to the defendants who imported
them into and sold them in the UK.
The court held that unless restrictions
were imposed expressly, there was
implied consent by Honda that the
Australian company was entitled to
sell the motorcycles to members of
the trade anywhere in the world
except Australia. The burden of
proof was on Honda to show that
restrictions had been imposed and, if
not initially imposed, that the consent
had been terminated. Further, there
was no reason to distinguish
between sales to members of the
trade in EEA and non-EEA countries.
8 ITMA Review
ITMA BUSINESS
This case demonstrates that the
MasterCigars case ([2007] EWCA Civ
176) was not a one-off and again
highlights the need for brand
proprietors to ensure that they
establish through evidence that the
necessary consent has not been
given. In many cases this will mean
that brand proprietors should review
their contractual arrangements with
their distributors to ensure that
restrictions in relation to onward
sales are expressly made.
Procedure
The final case is Kitfix Swallow Group
Limited v Great Gizmos Limited. This
case involved an application for a stay
of English proceedings pending the
outcome of proceedings in OHIM.
The English proceedings were
commenced first and were a claim for
trade mark infringement and passing
off brought against the UK distributor
of certain goods. There was a
counterclaim for invalidity. The
proceedings for invalidity in OHIM
were subsequently brought by the
manufacturer of the goods who was
based in Hong Kong.
The important factors of the case
that the judge took into account in
refusing the stay were (1) the relative
timings of any decision at first
instance or on appeal in the UK and
OHIM; (2) the unsatisfactory position
of OHIM which had initially stayed
and then decided to proceed with
the invalidity proceedings before
it; (3) that the claimant had not
deliberately tried to take advantage
of the position; it had no choice but
to proceed against the distributor in
the UK as the manufacturer was not
in the jurisdiction; (4) that the passing
off claim was a separate claim; and (5)
the delay by the manufacturer in
commencing invalidity proceedings
in OHIM. Subsequently OHIM stayed
the invalidity proceedings on the
basis of Article 100 of the CTMR.
Emma Himsworth
Barrister, One Essex Court,
ehimsworth@oeclaw.co.uk
Emma Himsworth was instructed as
junior Counsel for Hutchison 3G UK
Limited and as Counsel for Apollo
Fire Detectors Limited.
Intel Corporation Inc v CPM United Kingdom
Limited Court of Appeal (Mummery, Keene and
Jacob LJJ) 15 May 2007 [2007] EWCA Civ 431;
[2007] RPC 35.
Case C-252/07 Intel Corporation Inc v CPM
United Kingdom Limited European Court of
Justice (Advocate General Sharpston) 26 June
2008.
Esure Insurance Company v Direct Line
Insurance plc Court of Appeal (Arden, Jacob
and Kay) 25 July 2008 [2008] EWCA Civ 842.
L’Oreal SA v Bellure NV Court of Appeal (Keene
and Jacob LJJ and Blackburne J.) 10 October
2007 [2007] EWCA Civ 968.
O2 Holdings Limited v Hutchison 3G UK
Limited European Court of Justice (Judgment)
12 June 2008.
Red Dot Technologies Limited v Apollo Fire
Detectors Limited High Court (David Richards
J.) 24 April 2007 [2007] EWHC 1166 (Ch).
Boehringer Ingelheim Limited v Vetplus
Limited Court of Appeal (Pill, Longmore and
Jacob LJJ) 20 June 2007 [2007] EWCA Civ 583;
[2007] FSR 29.
Eli Lilly & Co v 8PM Chemist Limited Court of
Appeal (Rix and Jacob LJJ and Sir William
Aldous) 5 February 2008 [2008] EWCA Civ 24;
[2008] FSR 12.
Boehringer Ingleheim KG v Swingward Limited
Court of Appeal (Master of the Rolls, Tuckey
and Jacob LJJ) 21 February 2008 [2008] EWCA
Civ 83.
Honda Motor Co Limited v Neesam High Court
(Sir Andrew Park) 28 February 2008 [2008]
EWHC 338 (Ch).
Kitfix Swallow Group Limited v Great Gizmos
Limited High Court (Mann J) 22 November
2007 [2007] EWHC 2668 (Ch); [2008] FSR 9.
September 2008

Work Manual, Chapter 3
10 Use of the Internet by Examiners
and Hearing Officers
Examiners and hearing officers will
observe the following practice
concerning use of Internet references
to support objections taken under
Section 3.
10.1 When are Internet searches
justified?
Web-wide searches need not be
carried out for every case. Searches
should be conducted either where
the Examiner has identified a
descriptive meaning from the
usual references (that is, technical
dictionaries or subject-specific
websites identified by the Registry
as suitable reference sources), or
because the Examiner has suspicions
that an apparently non-descriptive
word(s) has come to be used in trade
as a description. The latter might
arise in fast moving fields, such as
information technology where it is
often difficult to keep up with the
current language of the trade.
However, the same point could apply
wherever the goods/services appear
to be of a new type or are highly
specialised.
10.2 Procedural Requirements
The Registrar must observe principles
of natural justice. This means that
applicants or their representatives,
are entitled to know the case against
them, and be given an opportunity
to respond to any material that has
influenced the Examiner or hearing
officer in coming to a view of the
application which is adverse to the
applicant. Accordingly, where an
Internet search has been conducted
any relevant results should be sent
to the agent or applicant with the
examination report. If a search is
ITMA BUSINESS
Practice amendment notice 1/08
PAN 1/08 - Issued 01/08/2008. This PAN affects Examination practice in numerous areas and
replaces existing paragraphs of Examination and Practice Work Manual, Chapter 3, and the relevant
entries in the Addendum. It also introduces new entries in the Addendum covering AIRPORT,
MIRACLE and ORGANIC marks.
conducted later any relevant
results should be disclosed to the
attorney/applicant. If a hearing is
scheduled within seven days of the
later search, the attorney/applicant
should be given an opportunity to
postpone the hearing.
When a file leaves the examination
team for a hearing, no search results
should be on the file which have not
been disclosed to the attorney/
applicant. If a search reveals no
relevant hits a file note to that
effect is required.
10.3 Relevancy
10.3.1 Section 3(1)(d)
Before an objection is taken under
Section 3(1)(d) it is necessary to
pinpoint sufficient use of the sign by
third parties prior to the date of the
application to show that it was in
use in the ‘customary language’ or
‘established practices of the trade’ at
the relevant date. It is not possible to
lay down a minimum number of uses
required to show this as much
depends upon the nature of the hits
(for example, use in an advert for the
goods/services in a popular daily
newspaper would carry much
more weight than an instance of
journalistic use of the sign in an
article on a website). In order to be
relevant the use should be in the UK
(for example, UK website or extract
from publications circulating in the
UK). The references must show use
that occurred before the relevant
date. Extracts showing use on
overseas websites (unless they
include relevant extracts from UK
publications) should not be used to
support a Section 3(1)(d) objection.
10.3.2 Section 3(1)(c)
If needed a limited number of
examples of use of the sign in the
course of trade in the UK as a
designation of characteristics of the
goods or services may support a
Section 3(1)(c) objection (and a
consequential section 3(1)(b)
objection) where a descriptive
meaning can be adduced from the
ordinary meaning of the sign and the
purpose of citing examples of use is
therefore to illustrate the capacity of
the sign to function as a description
in trade. This is to be contrasted with
the facts in the STASH Trade Mark
case [BL-0-281-04] where the word
lacked any prima facie descriptive
significance (for clothing).
Examples of use of words in other
jurisdictions are not usually
conclusive without more. This is
because the same word can be
descriptive in one country and
distinctive in another. However,
overseas use may be relevant where:
a) the ordinary meaning of the
word(s) identified in the usual
reference sources suggests that the
sign may serve in trade in the UK as
a description and the use made of
the sign in other English speaking
countries is merely confirmation that
the sign is apt for such use here, or
b) the hits suggest that the sign in
question had, at the date of the
application, been adopted in other
English speaking countries as the
name of (or an abbreviation for) a
new sort of product or service.
10.3.3 Use in trade
It should be borne in mind that
objections under Section 3(1)(c) can
only be based upon the existence or
likelihood of the sign being used for
descriptive purposes in trade in the
goods/services. One or two isolated
examples of journalists using a word
September 2008 ITMA Review 9

ITMA BUSINESS
as a description will not, without
more, serve to show that an
apparently meaningless or inapt
word is apt for use in trade as a
description. On the other hand, a
persistent pattern of descriptive use
by journalists (particularly in trade
papers) is sufficient to establish that
the sign is liable to be used in trade
as a description.
28 Domain names and Section 3(1)
A domain name is a written
representation of an Internet
electronic address, for example,
www.ipo.gov.uk, which is the Office’s
website address. It is commonplace
for goods and services to be sold in
the UK under such a name, that is, the
domain name is being used as a trade
name or trade mark, and the Registrar
will, subject to the usual criteria of
the Act, permit domain names to be
registered as trade marks. Elements of
the domain name such as ".com" or
".co.uk" are considered to be totally
non-distinctive. As a general rule,
one should consider whether the
remainder of the mark is descriptive
or non-distinctive; if so, there is likely
to be an objection under Section
3(1)(b) and or (c) of the Act.
There may be exceptions. For
example TWIST AND SEAL would
be liable to an objection for storage
jars on the basis that it describes a
characteristic of the goods, whereas
the addition of ".COM" gives the sign
as a whole a trade mark character.
For further guidance on domain
names see BL O-008-07 , In The
Matter Of Application no 2398973
By FSTC Ltd Foundation for Science
Technology and Civilisation, for the
mark MuslimHeritage.com
Also the Decision of the Second
Board of Appeal of 18 July 2006 Case
R 338/2006-2, DNI Holdings, Ltd. for
the mark SPORTSBETTING.COM
35.8 Use of Geographical
Limitations to overcome objections
As goods travel, the actual
geographical origin of the goods is
not always apparent. An objection
under Section 3(1)(c) cannot
therefore be overcome by a limitation
to exclude goods originating from
the place whose name they carry.
10 ITMA Review
ITMA BUSINESS
In the past the Registrar has
permitted a territorial exclusion to be
entered under s13 of the Act in
respect of services relating to little
known locations (unless the place has
a relevant reputation). This can no
longer be allowed in view of the
comments in Bovemij Verzekeringen
NV v Benelux Merkenbureau, case C-
108/05 [EUROPOLIS], which makes
clear that the mark must be
distinctive in the whole of the
territory of the member state.
Addendum to Chapter 3
AIRPORT
Names of airports such as
BIRMINGHAM AIRPORT will
normally be acceptable for services
without the need for evidence of
distinctiveness to be filed. Objection
should only be taken under Section
3(1)(b)and(c) where specifications
include ‘transport services’ such as
shuttle buses, taxis etc as it is likely
that consumers would expect there
to be more than one undertaking
providing transport services to and
from an airport and would therefore
be descriptive of the destination/
intended purpose of the services.
CONCEPT
The word CONCEPT is defined as
“an idea, especially an abstract idea”.
Although there are goods and
services where the mark, on its
own, or with other matter, may be
regarded as being distinctive, a
cautious approach is required.
Objections under Section 3(1)(b) & (c)
should be raised in circumstances
where the word is considered to be
descriptive for example.
1. CONCEPT OF BIOLOGY in Class 16
2. CONCEPT in relation to modern
construction, design, cars, music,
fashion and art etc.
The word CONCEPT is also used in
advertising to denote innovative and
modern ideas such as DESIGN
CONCEPT & FINANCIAL CONCEPT.
JUST
When meaning “we specialise in”,
for example, JUST EDUCATION,
object under Section 3(1)(b) and (c).
This practice has been updated in
line with High Court Decision
Just Employment (a firm)v Just
Employment Law Ltd [2007]
EWHC 2203 (Ch)
When meaning “pure”, for example,
JUST JUICE, object under Section
3(1)(b) and (c). When meaning “all
that is required” for example, JUST
PLUG IT IN, object under Section
3(1)(b) and (c). When used in a
laudatory phrase, for example, JUST
THE ONE YOU WANT, object under
Section 3(1)(b) and (c).
The same practice will apply to
SIMPLY marks, for example, SIMPLY
WOMEN’S for clothing will attract
an objection under Section 3(1)(b)
and (c).
MIRACLE
Acceptable for many goods and
services when used on its own but
care is required in relation to some
articles of clothing such as MIRACLE
PANTS and goods in for example,
classes 3 & 5 and related services
where claims to a MIRACLE product
are widely used in advertising. When
used in combination with other
words for example, MIRACLE CURE,
MIRACLE OF BIRTH etc, the word is
more likely to have descriptive
connotations.
ORGANIC
Marks containing the word ORGANIC
would lead the average consumer to
assume that the goods were either
produced organically or derived from
organic produce. Consumers would
pay a premium for these goods and
would be deceived if the goods were
not organically produced.
As such an objection under Section
3(3) (b) should be raised if the
specifications are not limited. This
objection can be overcome by
limiting all the goods to being of
organic origin.
An EC directive has made it unlawful
to refer to goods as being organic if
they are not (see Article 2 of Council
Regulation No 2092/91 and the
Judgment in Comité Andaluz de
Agricultura Ecologica, C-107/04).
September 2008

FEATURESITMA BUSINESS
On 1 October 2008, the
Company Names Adjudicator
Rules 2008 will come into force,
giving effect to sections 69-74
of the Companies Act 2006.
Proceedings will be
administered by the Company
Names Tribunal and cases will
be decided by company names
adjudicators (who are also
trade mark inter partes hearing
officers), based at the United
Kingdom Intellectual Property
Office, in Newport (formerly
the Patent Office).
Company names adjudicators will
deal only with disputes about
opportunistic company name
registrations; that is, solely with
applications (complaints) made
under sections 69(1)(a) and (b) of the
Companies Act 2006. These sections
provide for complaints by businesses
or persons who have a goodwill or
reputation associated with a name
and where that name (or a similar
name likely to suggest a connection
with the complainant) has been
opportunistically registered as a
company name by someone else
with a view to obtaining money
from the complainant, or to prevent
the complainant from registering
the name.
Company names adjudicators cannot
deal with cases where someone
feels that another company name
registration is too similar to, or ‘too
like’, their own company name but
FEATURES
The Company Names Tribunal
Adjudicating on opportunistic company name registrations
where there is no suspected
opportunism behind the registration.
These sorts of disputes or complaints
are dealt with by Companies House.
Alternatively, if the company name is
used as a trading name, it may be
actionable under the law of passing
off. However, an application which
is made to the company names
adjudicator because the applicant
is aggrieved that someone has a
company name which is too similar
will not succeed simply on the basis
that the holder is trading under the
name and causing confusion.
The Companies Act 2006 lists the
following defences:
a) that the name was registered
before the start of the activities on
which the applicant relies to show
it has goodwill/reputation; or
b) that the company is operating
under the name or is planning to
do so and has incurred substantial
start-up costs, or was operating
under the name but is now
dormant; or
c) that the name was registered in
the ordinary course of a company
formation business and the
company name is available for
sale to the applicant on the
standard terms of that business
(an ‘off the shelf company’); or
d) that the name was adopted in
good faith; or
e) that the interests of the applicant
are not adversely affected to any
significant extent.
It is very important to note that an
application to the Company Names
Tribunal will only succeed if the
registration holder cannot show
any of the above; or, even if the
registration holder can show that it
satisfies the criteria listed in a), b)
and/or c) that the applicant can prove
that the registration holder’s main
purpose in registering the company
name was to obtain money (or some
other consideration) from the
applicant or to prevent the applicant
from registering the name.
An application to the Company
Names Tribunal must fall within
the bounds of section 69 of the
Companies Act 2006. Applications
outside its remit will not be refunded.
Applicants do not have to have a
registered company name but must
demonstrate goodwill/reputation in
the name at the time that it was
adopted by the registration holder
as the company name.
If the application is successful,
the adjudicator will order the
respondents to change the company
name registration to something
which does not offend. If the
registration holder does not do
this, the company name adjudicator
has power to order the registrar of
companies to change the name to a
name of the adjudicator’s choosing.
Further information is available at
www.ipo.gov.uk/cna.
Judi Pike, the Company Names
Tribunal, UK-IPO
September 2008 ITMA Review 11

FEATURESITMA BUSINESS
How will eBay’s global internet
business be affected by these
decisions in different jurisdictions?
There is a balance to be achieved
between the competing interests
and who should bear the burden of
policing trade marks lies at the heart
of these cases. Before considering
their overall impact, it is worth
considering the judgments in turn:
Christian Dior and Louis Vuitton v
eBay in Paris
Christian Dior Couture and Louis
Vuitton Malletier (both owned by
LVMH) brought proceedings against
eBay. The judgments refer to the Dior,
Christian Dior and Louis Vuitton
brands, which most will know cover
luxury goods such as perfume and
leather goods. The thrust of their
arguments was based on eBay’s
alleged refusal to take effective
measures to fight against
counterfeiting despite repeated
warnings since 1999. Further, it was
argued that the recent measures
taken by eBay in 2006 were
testament to its past failings.
eBay’s response was that it merely
acts as a host (under the Ecommerce
Directive ) and therefore has no direct
responsibility to brand owners. As
mentioned previously, the Directive
affords service providers (such as
eBay) a defence where “mere
technical, automatic and passive”
FEATURES
The lack of guiding case law in relation to eBay’s liability over listings was rectified by two
recent decisions handed down following the publication of my article (“Dealing with trade mark
infringement on eBay”) which was featured in the July/August 2008 edition of the ITMA Review.
The “little success against eBay” previously referred to became judgments totalling €35.48m in
favour of the Christian Dior and Louis Vuitton brands in France. However, on the other side of the
Atlantic in New York, District Court Judge Richard Sullivan ruled in favour of eBay in Tiffany’s
longstanding claim for direct and contributory trade mark infringement and dilution. How much
guidance can be obtained from these decisions therefore depends on where the infringement takes
place, complicated by the fact that eBay’s national sites can generally be accessed by internet users
worldwide. Martin Noble reports again...
Trade marks and eBay, part II:
is it the beginning of the end
or the end of the beginning?
12 ITMA Review
activities are carried out and where
there is no knowledge or control over
the information being transmitted
or stored.
eBay could be held responsible under
the Directive if it is fixed with actual
knowledge in relation to infringing
listing content and does not act
expeditiously to remove it . eBay’s
case was that the responsibility for
listings lies with the sellers and that
measures such as VeRO assist brand
owners in combating the sale of
counterfeit products by enabling
them to request listings to be
removed . The claimants in these
cases wanted eBay to go further than
VeRO by, for instance, requiring
sellers to confirm the authenticity of
products being sold or closing a
seller’s account after a first offence.
In these cases, the brand owners’
position on the Ecommerce Directive
exemption was that eBay is not
simply a mere conduit, but acted
as an online broker with a direct
financial interest in the sale of
counterfeit goods. The French
court was persuaded that eBay’s
encouragement of sales through
tools which promoted online sales
(such as online shops and the
possibility of becoming a
“PowerSeller” ) and the fact that it
received commission from each sale
suggested that eBay should not be
exempt from liability under the
Directive. eBay’s argument that it was
a mere service provider under the
Ecommerce Directive did not fit with
its commercial ‘brokerage’ activities.
Legal opinion has been divided over
whether this judgment is correct or
not. As I suggested in my previous
outing on this subject, knowledge
may be a key element to establishing
liability in future cases. The 2007
German Rolex decision favoured a
shift of responsibility to eBay once
notified. In these French cases,
the court took a similar view: the
notifications sent to eBay established
a level of knowledge which was
sufficient to make eBay liable for all
counterfeit listings on its site relating
to that brand unless sufficient action
was taken. In these cases, the court
sided with the brand owners and
eBay was held to have done too little
to combat the sale of counterfeit
goods. The court then went on to
consider the expert evidence
showing the alleged level of
counterfeit products listed between
2001 and 2006. In both cases this was
apparently an eye-watering 90% of
the products offered on eBay under
the respective brand names.
Damages were subsequently
calculated on those figures.
It would have been a blow to Louis
Vuitton if its case had been turned
away, given that it publicises its anticounterfeiting
widely. It boasts of 91
September 2008

In this case, eBay’s
position was (again)
that brand owners
should be responsible
for monitoring online
sales activities which
might infringe and to
bring counterfeits to
its attention (ie, using
VeRO). eBay claimed
to remove such
listings once notified
and Tiffany’s CEO
(Michael Kowalski)
conceded at trial that
in “virtually all cases
or certainly the
majority of cases
eBay would do so”.
FEATURES
new legal proceedings issued and
three websites pulled down daily, led
by its counterfeiting office in Paris .
In short, it seems that (at least
in France) it might only take a
sufficiently detailed notification letter
from a brand owner addressed to
eBay in order to impose a future
obligation on eBay to monitor all
listings relating to that particular
brand. However, the judgments
appear to be silent on what exactly
eBay’s obligation might amount to
and whether VeRO is still adequate.
eBay’s Senior Vice President, Douglas
McCallum, has confirmed that eBay
will appeal the decision and that it
“will not accept outdated attempts to
restrict unfairly the internet to the
detriment of our community” .
Tiffany v eBay in New York
In this case, Tiffany alleged that
hundreds of thousands of counterfeit
silver jewellery items were offered for
sale on eBay’s website between 2003
and 2006. eBay was accused of
facilitating the sale of these
counterfeit products. Tiffany also
argued that the French decision
should be recognised by the New
York court. This request was later
withdrawn although the reason for
this is unclear from the judgment.
Most likely, the court simply did not
regard itself as bound.
In this case, Tiffany acknowledged
that eBay was not responsible for
the listing and selling of such items.
However, it argued that if eBay was
put on notice of the breadth of this
problem it was therefore obliged to
be proactive in its efforts to control
potential infringing activity. What was
eBay supposed to be doing? Tiffany
suggested that eBay should
prospectively ban listings containing
five or more Tiffany jewellery items .
The court disagreed on the basis that
this was an arbitrary suggestion.
Tiffany put forward evidence of its
“Buying Program” to support its claim
that around 75% of Tiffany items
purchased in 2004 and 2005 were
counterfeit products. The court found
this to be of limited probative
value due to various failures in its
implementation, not least because it
did not focus on multiple sales in one
listing. In any event, eBay accepted in
evidence that at least 30% of Tiffany
listings were likely to be counterfeit.
Tiffany also suggested a “one strike”
rule for suspending sellers’ accounts.
This was also rejected because an
NOCI was not deemed to be
evidence of a counterfeit product,
but only the brand owner’s belief.
In this case, eBay’s position was
(again) that brand owners should be
responsible for monitoring online
sales activities which might infringe
and to bring counterfeits to its
attention (ie, using VeRO). eBay
claimed to remove such listings once
notified and Tiffany’s CEO (Michael
Kowalski) conceded at trial that in
“virtually all cases or certainly the
majority of cases eBay would [do so]”.
In this case, eBay also went further
and implemented a system in 2006 to
delay listings which used particular
brand names (including Tiffany) so
that they could be vetted internally
before listings could be seen by
members of the public .
Ultimately, eBay was held not liable
in this case. In relation to direct
trade mark infringement, eBay
was able to rely on a defence of
nominative fair use (ie, using the
trade mark for identification
purposes). In this case, the eBay’s use
of Tiffany’s mark on its homepage did
not affect its essential function where
eBay’s anti-counterfeiting measures
were also deemed to be sufficient. In
terms of contributory trade mark
infringement, the court found that
eBay did have sufficient control over
its website but Tiffany would need to
show (which it did not) that “eBay
continued to supply its [website]
services “to one whom it knows or
has reason to know is engaging in
trademark infringement” . In this case,
despite having “general knowledge
of infringement … such general
knowledge … does not require
eBay to take action to discontinue
supplying its service to all those who
might be engaged in counterfeiting” .
As the judge also noted: “Quite
simply, the law demands more
specific knowledge as to which items
are infringing and which seller is
listing those items before requiring
eBay to take action” .
Tiffany also alleged that eBay’s own
use of its trade mark amounted to
trade mark dilution by (a) blurring
which resulted in the main function
September 2008 ITMA Review 13

FEATURES
of the trade mark being affected, ie as
a badge of origin; and (b) tarnishing
which harmed its reputation. The
court held that neither applied here,
but even if Tiffany was correct,
eBay could rely on the nominative
use defence.
Notably, the Tiffany judgment
contains several references which are
identical to the French case. For
instance, it too refers to the support
which eBay provides to sellers
by encouraging them to grow
their businesses (online shops,
“PowerSeller” status etc). The periods
of infringement also overlapped –
2001 to 2006 in France, 2003 to 2006
in the US. How did this court come
to a different decision?
The court also looked in detail at the
measures which eBay has in place to
vet listings – something missing from
the French judgment. Apparently, a
quarter of eBay’s 16,000 workforce
are employed to deal with “trust and
safety” on its website. Since May
2002, there has also been a “fraud
engine” in place to monitor listings
using 13,000 different search rules to
weed out objectionable listings.
However, as the US judge noted “For
obvious reasons, the fraud engine
could not determine whether a listed
item was actually counterfeit”.
I could not see any particular
reference to trade mark infringement
provisions in the Paris judgment,
which should have been familiar
to the French court given that the
Community trade mark regime
extends across France. The US
judgment is 66 pages long, in
contrast to the 18- and 19-page
French judgments, and contains a
relatively detailed analysis of each
complaint. It may be relevant that
Tribunal de Commerce judges are not
legally trained. They appear to have
FEATURES
taken a simplistic approach based on
the fact that eBay receives listing fees
and (ultimately) commission from
the sale of counterfeit goods, but
this is not easily reconciled with
the ecommerce and trade mark
legislation. Nor does it really address
how eBay does business – eBay is a
remote platform, never in possession
of the goods, operating online across
the world’s many legal jurisdictions.
The future
Until (and if) the French decision is
reversed, it will no doubt be a thorn
in eBay’s side. The difficulty is that
eBay’s sites are multi-jurisdictional.
For instance, I can buy a product from
the eBay US site in the UK and no
doubt French users can do the same
– although the measures eBay has
put in place since 2006 suggest it is
possible to section the markets (see
above) . This might present an
impossible task for eBay if it has
to section off the French market.
The balance between the parties
must surely be that eBay has to
devote its time and resources to anticounterfeiting
measures in the same
way that brand owners do. Luxury
brand owners (in these cases) will not
be short of monetary resources and a
criticism in the US case was Tiffany’s
failure to police infringers through
the VeRO system or even other
technological measures available to
it. It chose to criticise eBay and the
court disagreed.
The French decision (almost)
suggests that eBay does nothing
to help brand owners, yet the US
judgment (covering the same time
period of infringement) suggests the
opposite. Perhaps the French cases
turns on their own facts (although
the judgment is not detailed enough
to be absolutely certain). The US
judgment clearly shows that eBay
removed listings upon receipt of a
NOCI and took appropriate steps to
review sellers’ accounts following
this. In the French cases, eBay
appeared to ignore the claimants’
pleas.
On a side note, eBay has also recently
announced a change to its listing
policy for expensive jewellery in the
US . This might well have been a
reaction to the Tiffany litigation.
Given that counterfeit items will sell
for substantially less than authentic
goods, the introduction of a “fine”
jewellery section might deter
counterfeiting and also help to
distinguish the authentic luxury
goods from cheaper counterfeit
products.
Which decision is right?
At least the US judgment gives clear
guidelines on how the law is applied.
The French decision is overly
restrictive and (in my view) does not
pay sufficient attention to eBay’s
efforts. eBay is not selling these items
and never has physical possession of
them on behalf of sellers. Clearly, if
eBay did not respond to requests to
remove listings then it can be fairly
criticised. However, to suggest that
it encourages the sale of counterfeit
goods simply because it provides an
online selling platform (which has
proved to be extremely popular and
accessible worldwide) ignores the
need to strike a fair balance between
brand owners and online auction
providers. As new technology
becomes available the balance may
shift, but sneaky sellers will no doubt
find new ways of circumventing
whatever is put in place – can they
ever be stopped?
Martin Noble, Shakespeare Putsman
LLP, martin.noble@sp-legal.co.uk
At least the US judgment gives clear guidelines on how the law is
applied. The French decision is overly restrictive and (in my view) does
not pay sufficient attention to eBay’s efforts. eBay is not selling these
items and never has physical possession of them on behalf of sellers.
14 ITMA Review September 2008

The database offers a different
approach to case law research since
all the decisions are analysed by trade
mark experts. Decisions are classified
using a detailed ‘tree structure’ which
enables users to perform complex
searches on absolute and relative
grounds quickly and easily. It
also offers a search function for
comparing trade marks, either based
on the number of characters/words in
a trade mark or on the type of trade
mark (figurative, 3D etc.), and a
sophisticated goods and services
comparison search function.
One problem noted by users is the
time it takes for decisions to go
through the analysis process.
Generally speaking, although
decisions are put on the darts-ip
website straight away and can be
found searching by party or date, it
can take some time for decisions to
be analysed which means that they
cannot be found using the more
sophisticated search functions.
Typically, for the UK it will take up
to 2 weeks and for the rest of Europe
it can take up to one month.
Also, whilst decision analysis by
practitioners undoubtedly adds
considerable value to the database, it
is perhaps a bit of a double-edged
sword since human analysis can
result in errors.
Also in response to suggestions from
its customers, Darts-ip is exploring
the possibility of indicating when
decisions have been cited as an
authority in a later case or when
a decision has been cited in a
publication, thereby enabling users
September 2008
FEATURES
Darts-ip – ‘case law galore’
This is a case law software database product which is now being
used by many ITMA members and other trade mark practitioners.
The Review committee therefore thought it would be of interest
to those who have heard of the product but perhaps not yet
used it and to those who are not aware of it. This article also
contains views from practitioners who are using the product.
Clearly, the views expressed by those practitioners are their
views and not those of or endorsed by ITMA.
to assess the relative importance of
each decision.
The scope
There are 71,007 decisions in the
database. They have all been
analysed by trade mark
professionals.
There are 4,021 users, all being IP
professionals across Europe.
Generally speaking,
although decisions are put
on the darts-ip website
straight away and can be
found searching by party or
date, it can take some time
for decisions to be analysed
which means that they
cannot be found using
the more sophisticated
search functions.
The database contains decisions
from 22 European countries and
is increasingly covering Eastern
European countries, with the aim
of covering all 27 Member States.
Specific to the UK there are 3,127
UK decisions (High Court, Court of
Appeal, House of Lords, UK IPO,
Appointed Persons and decisions
from Scotland and Northern
Ireland). There are also 35,475
decisions from OHIM, the CFI and
the ECJ.
The database is now used by the
UK IPO, the Appointed Persons.
Darts-ip are also approaching
judges: so far, Robin Jacobs has
access to it.
The future
Dixit Curia, a "knowledge base of CFI
and ECJ case law" has been finalised
and is now fully operational.
Domain Names: darts-ip are in the
process of finalising the database and
in the meantime, customers currently
receive free test access to this.
Patents: a patent database will
be launched by the end of 2008.
The first version will be available
in September but the analysis of
decisions will be a lengthy process.
Costs
The cost of subscription to the
database depends on the level of
access required:
Level 1: 900 euros per year for
75 searches;
Level 2: 1900 euros per year for
250 searches;
Level 3: 3950 euros per year for an
unlimited number of searches.
Users' views
Vanessa Marsland of Clifford
Chance:
“The fact that the decisions are
analysed by practitioners makes
Darts-ip a much more useful research
tool for both litigation and
prosecution”.
“It gives us access to better results
more quickly than we could ever
have found without the system,
which saves us time and can improve
the quality of the service we give
our clients”.
“We look at Darts-ip because we
have a better chance of finding an
authority that might make a
difference to our case”.
“If we get questions from clients on
European matters, we would have
a first check on Darts-ip. Luckily,
there are people in our office who
understand several languages so we
can read the national decisions from
other countries”.
“I'm waiting for the day when the
little ‘Design’ tab appears on the
ITMA Review 15

FEATURES
Darts-ip web site so it will be as easy
to look for design cases as it is to
search for trade mark case law!”
Stephen Kinsey of Wildbore
& Gibbons
“Having access to the same quality
of decisions as the larger law firms is
very important since we don’t have a
large team of technical assistants to
research case law and we have to be
able to respond quickly to clients’
questions”.
“The exhaustiveness and up-todateness
of the database is vital.
It is much more up to date than the
notes on the cases seen reported”.
“The costs are minimal, especially
when compared with the time we
would have to spend looking for
cases. Since the cost is based on
usage, one major advantage is that it
is easy to identify searches performed
for a specific client and this gives us
the option to transfer the cost of the
search back to the client”.
Jean-Pierre Maeder of Nestlé:
“Darts-ip is a vital tool in our daily
practice that allows us to keep
abreast of current legal trends and to
search for particular cases and points
of law on specific areas of interest
(e.g. 3-D marks)”.
“It is important to have access to a
common tool used by everyone in
the company that comprises case law
from all over the European Union”.
“At Nestlé, we would be keen to see
coverage extended to include the
Eastern European countries but also
to design decisions”.
Dr. Alexander von Mühlendahl
of Bardehle Pagenberg:
“It just didn’t seem possible to
have full-text systematic access to
European and national case law on
trade marks”.
“The willingness or ability to invoke
other national case law is still limited.
Darts-ip could help to overcome this
obstacle and certainly make the
situation more transparent”.
“Darts-ip has done an enormous job
and I am full of admiration. It is a
marvellous instrument”.
Chris McLeod, Hammonds LLP
FEATURES
Sweeping changes on the
horizon as the internet
becomes truly global
As a result of the phenomenal
success of the Internet over the last
ten years or so there have been
increasing pressures upon the
domain naming system, and these
had given rise to rumours that
Internet was in danger of running out
of address space. Consequently, in his
speech to the International Chamber
of Commerce on 21 March 2007, Paul
Twomey (President and CEO of
ICANN) sought to calm these fears
when informing his audience that “a
contingency plan is already in place
and operating smoothly”, with
literally trillions of additional address
spaces available.
It would now appear that there
was possibly more behind this
announcement than had appeared
so at the time – judging by ICANN’s
recent decision to approve proposals
to relax its rules on what can be
On 26 June 2008 the Internet Corporation
for Assigned Names and Numbers
(ICANN) concluded its 32nd, and arguably
most momentous, International Public
Meeting. The body, which manages and
co-ordinates the entire domain name
system and is responsible for accrediting
domain name registrars, accepted a
recommendation dramatically to alter and
enlarge the number and type of domain
names which might be registered.
Robert J Hawley reports...
accredited a Top Level Domain
name (‘TLD’) and to allow for the
registration of TLDs in non-Latin
scripts.
At present ICANN accredits domain
name registrars for only 21 ‘generic’
TLDs (such as .com, .net, .biz) plus
numerous country codes (such as .uk,
.nz, .tv). However, the first of its new
proposals envisages making it
possible for applicants to register
the TLD of their choice. As a result
companies will, for instance, be able
to acquire domain names based
upon or comprising their brands and,
providing they are in a position to
demonstrate that they have a
“business plan and technical
capacity”, individuals will be able
to register their names as TLDs.
Furthermore, it is believed that there
will be significant interest in the
establishment of city-based TLDs
16 ITMA Review September 2008

such as .ldn (London), .nyc (New York
City), .paris, and .berlin.
It is therefore anticipated that many
thousands, even millions, of new
domain names could become
registered within the next few years.
However, this is unlikely to occur
overnight, as Dr Twomey has gone
on record as saying that he expects
the cost of setting up a new domain
name will – at least initially – “be in
the low six-figure dollar amounts”.
In the shorter term, therefore, it
would not seem unreasonable to
suspect that greater activity will
be experienced in relation to
the registration of so-called
‘internationalised’ domain names;
particularly when one considers it is
estimated that although something
in the region of 70% of websites are
presented in English, only about one
third of Internet users are native
English speakers.
Consequently it has long been
recognised that in order to make the
Internet truly global, users need to
have access domain names in their
local language script, and not just to
websites with content in that script.
It is with this in mind that ICANN
recently gave approval for the
registration of generic and country
code TLDs written in scripts deriving
from, amongst others, Arabic, Asian
and Cyrillic alphabets. That is, it will
become possible to depict the
entirety of a domain name (inclusive
of the .com, .net, .biz or whatever,
element) in non-Latin / Roman
characters.
Although this proposed development
might perhaps seem of little obvious
consequence to the average English
speaker, the Chairman of ICANN
(Peter Dengate Thrush) has declared
that he believes it “is going to be
very important for the future of the
Internet in Asia, the Middle East,
Eastern Europe and Russia”.
The new procedures will not,
however, be implemented until
finalised versions of the proposals
have been approved by the Board of
ICANN; which it is hoped will take
place during the first quarter of next
year. Should this indeed prove to be
the case, it is anticipated that ICANN
will start accepting domain name
September 2008
FEATURES
applications sometime during mid-
2009.
However, for now the finer points of
the proposed new system remain
unresolved, leading to speculation
that generic TLDs of potentially broad
appeal (such as, for example, .news
and .sport) will become the subject
of dispute. Matters have not been
assisted by ICANN’s Dr Twomey
advising that, in such circumstances,
his organisation “will try and get the
parties together to work [things] out,
but if that fails there will be an
auction and the domain will go to
the highest bidder”.
Fortunately, the same is unlikely
to apply in situations involving
registered trade marks, as brand
owners will in all probability be given
the opportunity to pursue dispute
proceedings against invalid/nonlegitimate
attempts to register
domain names incorporating
their mark(s).
Nevertheless, the uncertainty has
caused informed observers such as
Marcus Eggensperger, legal director
at Lycos Europe GmbH, to assert that
“the major issue with the potentially
large number of new TLDs is going to
be for brand owners who will want
to protect their trade marks”.
Clearly, therefore, implementation
of the proposed new domain name
registration system will mean that
trade mark owners, and particularly
those with large international
portfolios, will inevitably find
themselves obliged to formulate
effective strategies for protecting
their brands; whether by way of
additional trade mark registrations
(in one or a number of local language
scripts), through the registration of
‘internationalised’ domain names
or, more likely still, a combination
of both.
As such, at this relatively early
juncture the message to brand
owners must surely be to monitor
developments before ICANN closely
and give early (if not immediate)
consideration to the strategic filing
of local language trade mark
applications.
Robert J Hawley, Mathys & Squire,
rjhawley@mathys-squire.com
...implementation
of the proposed
new domain name
registration system
will mean that
trade mark owners,
and particularly
those with large
international
portfolios, will
inevitably find
themselves obliged
to formulate
effective strategies
for protecting
their brands.
ITMA Review 17

FEATURES
The updating process has not
received as much attention as it
might have, given the scope and
importance of the amendments
being made. A consultation paper on
the future of the Trade Marks Rules
2000 (which currently govern Trade
Marks Registry proceedings) and,
in particular, on various draft
amendments to a number of the
present Rules, was published by the
UK Intellectual Property Office in
March 2008.
The consultation attached a full
redraft of the Trade Marks Rules for
comment. Practitioners were polled
for their views on the paper/redraft
of the Rules in the ensuing 12 weeks
and, once this process was complete,
the consultation closed on 27 May
2008.
A Response document published on
8 July 2008 has now indicated that
the existing Rules (which came
into force in 2000 and have been
amended seven times since then!)
will undergo a number of important
changes. The Response sets these out
in detail and the new Rules, the Trade
Mark Rules 2008, come into effect on
FEATURES
The Trade Mark Rules
2008: all change please!
18 ITMA Review
A new Statutory Instrument laid before
Parliament on 8 July 2008 will bring into
effect a raft of amendments to the workings
of the UK Intellectual Property Office’s Trade
Marks Registry. The provisions affect owners
of trade marks, anyone wishing to register
a trade mark, and anyone dealing with
owners of applicants for a registered mark.
Michael Barrett reports...
1 October 2008 (and are available,
together with an Explanatory
Memorandum, published through
OPSI under SI 2008 No 1797).
The purpose of the new statutory
instrument is to consolidate existing
changes to the 2000 Rules, bring
into force the best practice on
retrospective extensions of time
required under the Singapore Treaty
(which the UK adopted on 27 March
2006), to make the tribunal system
more “flexible, efficient and
proportionate” and to increase the
speed and efficiency overall of
proceedings before the Registry.
The key changes can summarised
as follows:
1. Fast-track examinations
These changes were first introduced
by the Trade Marks and Trade Marks
(Fees) (Amendment) Rules 2008 and
took effect on 1 April 2008. The
provisions have now been introduced
into the present Statutory Instrument
as a consolidation of those Rules on
“fast-track examination”. Under the
procedures (which the Registry
brought into effect on 7 April) an
application for registration of a single
trade mark (ie, not a series mark) can
be “fast-tracked” if the applicant:
files on-line through the UK IPO’s
website system; and
pays in full, at the time of filing,
the enhanced application fee (by
debit/credit card or via a firm’s
deposit account with the UK-IPO).
For an “enhanced” fee of £300 (paid
as a one-off fee in addition to the
normal £200 application fee and £50
per class fee required for every class
applied for beyond the first) the fasttrack
offers an applicant a right to
receive an examination report from
the Registry within ten business
days. Rule 5 of the draft statutory
instrument sets out the new position
on the expedited examination
procedure.
2. A reduction of the opposition
period and changes to the
cooling-off procedure
Currently third parties are allowed to
oppose an application for registration
of a trade mark in the three-month
period following publication.
According to guidance issued by
the UK IPO “more than 90% of trade
marks face no opposition”. OPSI’s
Explanatory Memorandum on the
new Rules makes the same point,
adding “This means the registration
of these marks is delayed by three
months unnecessarily”. A decision
has therefore been taken to reduce
the opposition period to two months.
This period is comparable to that
offered by a number of other national
trade mark registries in the EU such as
France, Benelux and Spain (although,
in the case of Spain, the period of
opposition is timed to follow the
completion of the registry’s
examination for formalities, and
substantive examination only follows
conclusion of the opposition period).
However, under the new UK Rules, a
third party contemplating lodging an
opposition against an application will
be able to apply (during the initial
two months allowed for raising
opposition) for a (free) extension (of
one month) to the opposition period.
If extended, the opposition period
therefore becomes three months
(running from the date of
publication) as at present.
September 2008

If no notice of opposition is received
by the Registry in the two-month
period, the application will proceed
immediately to registration.
Interestingly, the extension request
shall need to be made via a “no cost”
on-line filing of new Form TM7a
(which the Response, at present,
suggests will need to be copied to
the applicant or his representative by
the opponent). This, of course, means
that applicants may receive notice of
an imminent opposition in advance
of an actual opposition notice being
filed upon them.
The advantage for the bulk of
applicants for UK trade mark
registrations is that the new Rules will
accelerate the registration process.
Potential opponents should now
gear themselves up to keep a more
vigilant watch over new applications
for registration of marks against
which they might wish to object.
Other minor changes (such as
removal of the requirement to
include, in a statement of grounds,
the classes for which the earlier mark
is registered) have been drafted into
the new Statutory Instrument as well.
Subject to the cooling off period (see
below) the period now allowed to an
applicant for registration of a mark to
file a counterstatement has been
reduced from three months to
two months.
The other major change that has
been made to the opposition process
is a change in the length of the
“cooling-off period” (the time allowed
for the parties to arrive at a
negotiated settlement after an
opposition notice has been filed). The
new Rules now set the cooling off
period at nine months (initially) but
allow for the possibility of an
extension of the period to 18 months
(with consent of the other party to
the opposition). This falls short of the
24-month cooling off period allowed
by the Community Trade Marks
Office.
It will be a relief to professional
advisers and their clients that the
Registry’s initial proposals ((a) that
there be confirmation by the parties
that negotiations are under way by
the time the “nine-to-18 months”
extension request (on Form TM9e )
is filed and (b) that the confirmation
FEATURES
be accompanied by a statement of
truth) have now been narrowed so
that a statement of truth is not a
requirement.
3. Treatment of the preliminary
indication in opposition
proceedings
The new Rules seem to have
“dropped” the present provision
(in Rule 13B(4)(b)(ii)) allowing the
applicant two months from the socalled
“indication date” (the date that
the Registrar sends to both parties his
preliminary indication as to whether
or not the mark should be registered)
to limit his/her specification to
goods/services which the Registrar
deems acceptable for registration.
Accordingly, the applicant’s options
are now narrowed so that he/she has
to file a notice of continuance and
this must be filed within one month
from the indication date. There are
also technical changes (which cannot
be dealt with here) concerning
preliminary indications adverse to
an opponent.
4. Time periods relating to other
forms of opposition
The regulations contained in the
Statutory Instrument propose
corresponding reductions of
deadlines (from three to two months)
for filing oppositions to the following:
amendment of the regulations
governing a collective or
certification mark (new Rule 30);
alteration of registered trade
marks (new Rule 32);
removal of material from the
Register (new Rule 33); and
proposals for a change to
classification (new Rule 35).
5. Periods for filing counterstatements
including late filing
The period for filing counterstatements
(presently three months
for an opposition, but only six weeks
for the proprietor in a postregistration
invalidation or an action
for revocation on grounds other than
non-use) have been harmonised
with the equivalent period proposed
by the new Rules in opposition
proceedings (see above) at two
months. Thus, from October, two
months will become the standard
timeframe allowed for filing counterstatements
(or “defences”) in
opposition, invalidation and
revocation proceedings. In the case
of revocation proceedings, the twomonth
time frame for filing of
counterstatements will apply to all
revocations brought under Section
46(1) of the 1994 Act (ie, to non-use
revocations and revocations on
grounds other than non-use alike).
There will also be a discretion
available to the Registrar to allow
defences to be filed up to six months
late. New Rule 43 allows defendants
(in opposition, invalidity and
revocation proceedings) who
become aware (in the six-month
period following expiry of the
deadline for filing a counterstatement)
that an action has been
brought against them (and who
have consequently failed to file their
defence “in time”) as a result of
not having received notice of the
proceedings, to apply for relief
and have their late-filed defence
admitted. The defendant will have to
show the Registry that he/she acted
“promptly” upon becoming aware of
the original decision against him/her
and the Registry will need to be
satisfied that the applicant is not
“prejudiced” by the late admission
of the defence.
6. Evidence and case management
Under the new Rules, the Registrar
is given express power to set a
timetable for filing of evidence by the
parties and to manage proceedings.
He is also given power to decide
which issues require evidence to be
adduced, the sort of evidence that is
to be adduced and the form in which
it is to be adduced (new Rules 62 and
64).
7. Applications for revocation based
on non-use
The Statutory Instrument appears
to have “dropped” the need for a
Statement of Grounds to accompany
the initial application (on Form
TM26(N)). The reason for this is that
the Registry has been preparing a
new form TM26(N) which will include
fields to be completed by the
applicant alleging periods of
non-use in relation to particular
goods/services in the registration.
The form will also include a box
inviting the applicant to state further
grounds for non-use revocation.
September 2008 ITMA Review 19

FEATURES
Accordingly the only requirement
under the new Rules will be to
complete Form TM26(N), which will
include all possible grounds that an
applicant could wish to cite.
The next point to note is that the
proprietor has two months (reduced
from three months) from when he
receives a copy of the TM26(N) from
the Registrar to file a counter
statement on Form TM8N (see above).
No longer need the trade mark
proprietor lodge two copies of the
evidence of use of his mark or, or in
the alternative, reasons for non-use
of the mark under cover of the Form
TM8/counter statement. Instead the
new Rules drop the need for the
proprietor to file evidence with its
defence. The proprietor will now be
allowed a further two months (from
the end of the two months referred
to above for filing the TM8N – note
the new denomination of this form!)
to file its evidence. This effectively
extends to four months the period
allowed for filing of evidence
pursuant to the defence. This will be
welcome news to trade mark owners
as previously the deadline was a
(non-extendable) three months.
Another obvious change introduced
by the statutory instrument is that
the trade mark proprietor no longer
enjoys the luxury of filing its evidence
of use to support the existence of its
trade mark at more than one stage
of the proceedings. Under the old
Rules the proprietor was the party
first required to cite evidence of
use/reasons for non-use. The
applicant for revocation was then
entitled to file evidence in support
of its application to revoke. The
proprietor then had a further
opportunity to file evidence in
support and, finally, the applicant
for revocation was entitled to file
further evidence strictly in reply to
the proprietor’s evidence.
Accordingly, the new Rules have
abbreviated the four rounds of
evidence previously available to the
parties. From October, the trade mark
owner has only one opportunity to
file evidence of use in support of its
defence, and the applicant has one
opportunity to file evidence in reply
(to be filed, according to the Registry,
within one month of receipt of the
20 ITMA Review
FEATURES
owner's evidence; there is no direct
rule on this point but the right to file
evidence in reply will fall within Rule
38(8): "The Registrar may, at any time,
give leave to either party to file
evidence upon such terms as the
Registrar thinks fit").
The owner will have one further
opportunity to file evidence (and, as
above, this right will derive from Rule
38(8); according to the Registry's
current proposals, this will have to be
filed within a further one month).
More detailed rules on what may be
called second and third rounds of
evidence will be set out in due course
in a Registry Practice Notice.
In summary, the maximum nimber of
evidence rounds possible will be
three (and not four as present) and
the proprietor will be given the final
say (so far as filing of evidence is
concerened) and not the applicant, as
at present.
8. Procedural appeals
From 1 October 2008, an appeal
made prior to a “final decision” in
contentious proceedings before the
Registry may only be made with the
leave of the Registrar. This is a change
from the present position where an
appeal may be lodged as of right
from any (including any procedural)
decision of the Registrar. New Rule 70
sets out the details and the Registry
has indicated that the length and cost
of proceedings should be reduced in
the longer term.
9. Extension of time limits in ex
parte proceedings and the
Singapore Treaty
Under Article 14 of the Singapore
Treaty (to which the UK acceded in
March 2006 as one of the initial
signatories), participating states were
required to offer reliefs to those who
failed to meet time limits in ex parte
proceedings (not including appeals)
before a Registry. Accordingly an
applicant will have the right to an
extension of time to complete an
action begun before a Registry
subject to (a) making an extension of
time request (on Form TM9) within
two months of the deadline expiring
and (b) paying a £50 filing fee. New
Rule 77 sets out the position.
10. Remedying deficiencies in an
application for registration
This has been reduced from two
months to “a period of not less than
one month” determined by the
Registrar. New Rule 13 clarifies
the position.
11. Determination of classification
Representatives will be familiar with
Rules 8A and 11 of the Trade Marks
Rules 2000 which allow applicants for
trade mark registrations a period
of two months to respond to
classification objections from the
Registry under Rule 8. This will
change from October. Under new
Rule 9, any failure to provide the
goods/services in the application
and the class to which they
belong or which fails to group the
goods/services into relevant class
numbers shall receive an objection.
Under new Rule 9 the applicant must
respond to such objection within a
period of not less than one month as
the Registrar shall specify.
12. Respondent’s notice in appeals to
the Appointed Person
The informal current practice of
allowing the respondent to set out
formal reasons why the Registrar’s
decision should not be overturned on
appeal has been formalised in Rule 71.
13. Other minor amendments
These include changes to Rules
governing evidence in support of a
claim to priority (such that the UK-IPO
shall soon be able to verify priority
claims using means not previously
allowed). Also (in line with OHIM
practice) formal certification may not
be required for all claims.
Proposed amendments not contained
in the final form of the Statutory
Instrument
Interestingly, one key proposal that
has not made its way forwards from
the draft consultation paper into the
new Rules is a provision permitting
addresses for service anywhere in the
EEA and Channel Islands in respect
of dealings (both contentious and
non-contentious) before the UKIPO.
It seems as if the objections of
representatives have here, at least,
carried the day!
Michael Barrett, Lockharts Solicitors,
(mb@lockharts.co.uk)
September 2008

ALICANTE
ALICANTE
Alicante, apart from being, as everybody knows, OHIM´s headquarters, is a lively medium-sized city
located in the southeast of Spain by the Mediterranean Sea. Its just over 320,000 residents enjoy
privileged weather during most of the year; in particular, temperatures from May to October are quite
hot and people often visit and spend many hours on its sand beaches. Elena Perez leads the way.
A short guide to
Alicante
Alicante has more than 3,000 years of
history, as revealed by archaeological
remains found. It was the scene of
battles between Christian kings and
the Moorish, and due to its position
on the coast, was attacked many
times from the sea. It was only in
the 19th and 20th centuries when
Alicante recovered its position as
an important commercial harbour,
and began to expand until being
considered the important location
in the Costa Blanca that it is now.
The city centre is quite small and you
can visit the main parts by walking,
although convenient buses are
available all around the city.
From the airport to the city
Alicante´s airport, called El Altet, is
located about 12 kilometres away
from the city centre. The main
alternatives to get to the centre are
either by taxi (average cost 17 euros)
or by bus. It is possible to rent a car
at the airport (where all the major
companies have an office), which is a
good idea if you would like to visit
places outside the city centre.
How to get around
Once you are in Alicante, the best
way to travel in the city centre is by
walking. However, should visitors
wish to visit the surroundings,
including the very nice San Juan
beach, which is about 10 kilometres
away, it is necessary to take
transport. Alternatives are – apart
from renting a car – taking a taxi or
using the bus or tram. Please note
that there are very few taxi stops in
Alicante and it is not easy to stop a
taxi in the street. Therefore, if you
would like to have a taxi, the best
thing to do is to ring to order one
(+34 965101611 (Tele Taxi) or +34
965252511 (Radio Taxi)).
For visits to the San Juan Beach area,
the brand new tram system is very
convenient. There is a tram stop very
close to Hotel Melia, in front of Playa
de El Postiguet beach beside
the hotel.
PLACES TO VISIT
Monuments
SANTA BÁRBARA CASTLE is right
above Mount Benacantil facing the
sea. Curiously, when seen from the
sea, Mount Benacantil looks like a
human face and it is called La cara del
moro or the “Moor face” and it is one
of the most emblematic images of
the city. The castle may be seen from
the back of Hotel Meliá. Usually, there
is a lift to the castle; however, it is
currently under renovation and the
only way to visit the castle is by car.
It is one of Spain’s largest mediaeval
fortresses and it provides very nice
views of Alicante´s bay.
Address: Mount Benacantil
Opening hours: Monday to Sunday
10am to 8 pm
The TOWN HALL, also very close
to Hotel Meliá, is a baroque building
with two towers and is worth a visit. It
is in the square where it used to be
the old town hall back in the 18th
century. Behind the Town Hall is the
Calle Mayor, a very nice pedestrian
street.
Address: Plaza del Ayuntamiento 1
SAN NICOLÁS CATHEDRAL. Walking
from Calle Mayor I would recommend
visiting San Nicolas Cathedral, a
Renaissance monument. The
Cathedral of Alicante is a former
mosque that was transformed into a
Christina church by King Alfonso X
“The Wise” (so-called). Once in San
Nicolas Cathedral, you are at the
beginning of the old part of town,
which is quiet during the day but very
lively on weekend evenings, since it is
full of bars. Also, there are a few Irish
pubs where one could have a drink
after the walk.
September 2008 ITMA Review 21

ALICANTE
Address: Plaza Abad Penalva 1
Opening hours: Monday to Saturday:
8am - 12pm / 5.30pm - 5.45pm
Sunday: 8.30am - 1.30pm / 5.30pm -
8.30pm
EDIFICIO CARBONELL and LA
EXPLANADA. The Carbonell
building, also called Casa Carbonell,
stands at the beginning of the Paseo
de la Explanada, a pedestrian walk
famous by its floor, made of a mosaic
of white, blue and red stones forming
waves and its palm trees all along the
walk. La Explanada is right in front of
the sea and the harbour and only a
couple of minutes walking from Hotel
Melia. Visitors will enjoy walking
along it and maybe having an icecream
or an “horchata”, a typical nonalcoholic
drink made of tiger nuts, at
the Peret kiosk. Peret is the most
famous place for horchata in the
city, and it is right in front of Casa
Carbonell. It is one of the most
beautiful buildings in Alicante and
was built in the 1920s.
SANTA MARÍA BASILICA. Dating
back to the 14th century, Santa Maria
is the oldest church in Alicante,
although it had to be rebuilt
following a devastating fire a century
later. Like the San Nicolas Cathedral,
Santa Maria was also built over the
22 ITMA Review
ALICANTE
ruins of a huge mosque. The basilica
has a single, non-cruciform nave with
side chapels and it is very pretty,
definitely worth visiting.
Address: Plaza de Santa Maria (old
part of the city)
Opening hours: Monday to Sunday
from 10 am to 12 am and from 6 pm
to 7:30 pm
The LAS AGUSTINAS CONVENT is
also in the old part of the city, in a
very narrow street. It was built in the
18th century to house Jesuits. Inside
is the famous image “Virgen de la
Soledad”.
Address: Calle Monjas, 1
Beaches
The POSTIGUET BEACH is in the city,
right in front of Hotel Melia and at
the foot of Santa Barbara castle. It is
known by the quality of its sand and
the palm tree-lined walk alongside
the beach. I recommend spending
some time enjoying a coffee in one
of the several cafes placed alongside
the beach.
The SAN JUAN BEACH is the most
famous and popular beach in
Alicante. Its sand goes along from El
Campello, a fishermen’s village, to El
Cabo de las Huertas. San Juan beach
Left: Hotel Meliá and the Port
Top: Casa Carbonell and Peret kiosk
Above: Luceros
Right: Santa Barbara´s Castle
is a very open and attractive beach
and is absolutely worth to visit if you
are in Alicante. It is well equipped
with restaurants and bars to have
lunch, even in the sand, so it would
be a good idea to spend a whole
morning there (unless you’re at a
conference!). The best way to get
there is either by car or bus (routes 21
and 22) or tram (routes L3 and L4).
Museums
MARQ (Provincial Archaeology
Museum) was founded in 1932 and
visitors can enjoy its innovative and
dynamic approach to archaeology.
Address: Plaza del doctor Gomez Ulla
s/n Website: www.marqalicante.com
Opening hours: Tuesday to Saturday
from 10 am to 7pm, Sunday and bank
holidays from 10 am to 2pm
MUBAG (Gravina Fine Arts Museum),
located at the 18th century Gravina
Palace. It exhibits works of art created
in Alicante from the middle ages to
the 20th century.
Address: Gravina 13 (old part of town)
Website: www.mubag.org
Opening hours: Tuesday to Saturday
from 10 am to 2pm and from 5pm to
9 pm, Sundays from 10 am to 2pm
September 2008

EATING AND DRINKING
Restaurants
Alicante´s cuisine is typically
Mediterranean and visitors may enjoy
its renowned rice dishes (made will all
kind of combinations of vegetables
and fish or meat), its tapas and
montaditos, and its very good quality
fish. Recommended restaurants are
the following:
Darsena, www.darsena.com
Nou Manolin, www.noumanolin.com
(in particular, I like having a meal at
the bar!)
Piripi, www.noumanolin.com (it
belongs to the owners of Nou
Manolin)
Monastrell, www.monastrell.com
Tapelia, www.tapelia.com
La Ereta is quite a formal restaurant
which enjoys a spectacular location
on Mount Benacantil with
astonishing views of the sea, port,
Postiguet beach and Explanada.
Open on Monday, Tuesday and
Wednesday lunch time, and
Thursday, Friday and Saturday
both lunch and dinner time.
September 2008
ALICANTE
Amerigo is a gourmet restaurant
with a stylish contemporary
decoration in the heart of Alicante.
Located at the ground floor of Hotel
Hospes Amerigo (c/ Rafael Altamira 7
– Tel. +34 965 14 65 70),
www.hospes.es.
Booking a table in advance is highly
recommended for these restaurants.
Bars
There are two main areas in Alicante
for bars. These are in the old part of
town (approximately 10 minutes’
walk from Hotel Meliá) which is the
neighbourhood right below the
Santa Bárbara Castle.
The best way to reach the old part of
town from the Meliá Hotel is to walk
along La Explanada to the main street
La Rambla, and then to the Provincial
Tower. There to the right is the
entrance of the old part of town, with
its narrow streets full of bars and
restaurants. There are also a few Irish
bars near the Provincial Tower.
The second main area is the marina
deportiva – muelle de levante, which
is the leisure area right in front of
Hotel Meliá (approximately two
minutes’ walk).
SHOPPING
The main shopping area is Calle
Maisonnave and its surroundings. I
would recommend visiting El Corte
Inglés (www.elcorteingles.es), the
main commercial group in Spain,
where the visitor may find almost
anything. There are two El Corte
Inglés buildings in Alicante, each one
placed on one extreme of Calle
Maisonnave.
The building near the Calle Soto
is dedicated to books, music,
supermarket, apparel, and audio and
video equipment. In the other
building, near the Calle Oscar Esplá,
the visitor may find souvenirs,
perfumes and cosmetics, sports
articles and clothing. Both buildings
have a really interesting supermarket,
in case the visitor wishes to take
something special from Spain home.
In particular, there is an area called El
Club del Gourmet, where one can
buy fantastic wines and very good
quality typical Spanish food, such as
jamón Serrano (cured ham) and
olive oil.
Also, around Calle Maisonnave there
are many shops where the visitor will
find a lot of attractive things to buy
for presents. Spanish prices are
considerably cheaper that London
ITMA Review 23

ALICANTE
prices, so the UK visitor will probably
enjoy his time shopping in Alicante!
DAY TRIPS
Tabarca Island. For those lucky
enough to stay in Alicante for the
weekend, a day trip to Tabarca Island
is strongly recommended. It is 11
nautical miles away from Alicante and
in the past it was a refuge for Berber
pirates. The walls were ordered to be
built by King Carlos III in the 18th
century, creating a town to house
families of Genovese fishermen who
were being held prisoner in the
Tunisian city of Tabarka. They have
been officially declared a Historical
and Artistic Site and an Asset of
Cultural Interest. Also, the island´s
waters have been officially declared
a Mediterranean Marine Reserve for
their excellent quality.
How to get there: A boat trip from
The Alicante Marina (by the harbour
Top: Parque Canalejas
Above: Explanada
Right: Town Hall
ALICANTE
in front of Paseo de la Explanada) can
be made comfortably. The company
that runs the boats is Empresa Kontiki
(tel +34 965 21 63 96). There are
several departures every day of the
week, approximately every hour.
Journey time is approximately
one hour.
Once on the island, the visitor can
enjoy its coves and beaches and in
particular, its crystal-clear sea and, if
the day is sunny, its great views.
Regarding where to eat, visitor will
see many typical fish restaurants all
around the village. Amongst them,
Don Jeronimo at C/ Virgen del
Carmen 1, tel. +34 965 96 12 83
or La Gloria at C/ Playa,
www.gloria.restaurantesok.com,
are recommended. In almost all the
restaurants placed at lovely Tabarca´s
port, visitor will have the opportunity
to try the typical caldero, a stew
made of rice, fish and seafood.
Altea is an astonishing village with
a very beautiful old quarter full of
whitewashed houses with blue roofs.
It is very lively, particularly during
weekends. I would recommend
spending the day at the beach and
then having dinner at any of its nice
restaurants. A visitor will not be
wrong if he decides to visit the
restaurant La Claudia with a terrace
overlooking the sea and lovely views,
www.la-claudia.com. It is important
to make a reservation in advance.
Other restaurants can be found at
www.altea.salir.com/restaurantes.
How to get there: AP-7 toll motorway
or the N-332 dual carriageway.
To organise the route, check
www.viamichelin.es. I sincerely hope
that you enjoy your stay in Alicante!
Elena Perez, Estudio Juridico Baylos
(Spain), e.perez@baylos.com
24 ITMA Review September 2008

CASE COMMENT
The Opposition Division and Board
of Appeal refused the application,
deciding that the marks at issue were
almost identical so, in spite of a lesser
degree of similarity between the
goods and services, there was likely
to be confusion of origin between
goods with the earlier mark and
goods bearing the mark applied for
Art 8(1)(b) CTM Regulation 40/94 (the
Regulation)). Apple appealed to the
Court of First Instance (CFI).
Appeal
Apple argued that (1) the Board
of Appeal had not considered the
high level of attention information
technology specialists (the relevant
public) would pay; and (2) OHIM
was granting TKS an unjustified
monopoly, infringing free movement
of goods and competition contrary
to the EC Treaty. The CFI dismissed
both points.
The earlier mark, a “complex mark”,
featured the word QUARTZ and
negligible figurative elements. The
word QUARTZ dominated the image
the relevant public would keep in
mind within the overall impression
created by the earlier mark. The
marks at issue were almost identical.
September 2008
CASE COMMENT
Difference in marks was not crystal clear
T-328/05: Apple Computer Inc v OHIM: “QUARTZ” Court of First Instance (Third Chamber), 1 July 2008
Apple Computer Inc (Apple) applied to register the word QUARTZ
as a Community trade mark (application 1421130) (application),
in class 9: computer operating system for use by information
technology developers for improving the reproduction of digital
images, but specifically excluding products intended for the
banking sector. TKS-Tekensoft SA (TKS) opposed on the basis of its
Community trade mark registration 368324 (earlier mark) for the
following figurative mark, registered for goods in class 9: packets
of programs for banking and for services in class 42: including
computer programming and computer software development,
but all being linked to banking. John Colbourn reports...
Apple argued that TKS’s goods and
services were intended for users of
banking software and its own for
information systems developers. The
CFI recognised differences in the
goods but they were both designed
to be installed in computers. An
information technology specialist
might use TKS’s product in a bank
and use Apple’s software in a more
general application. There was
some degree of similarity between
the goods.
The important issue was whether
the product, although intended for
banking, bore to the relevant public
some similarity to the product
covered by the application. In
the CFI’s view they did.
Likelihood of confusion must be
assessed globally. The marks were
almost identical, so less resemblance
between the goods was needed for
likelihood of confusion. The different
applications of the goods were not
enough — the relevant public would
conclude that that the goods might
have the same commercial origin.
The EC Treaty (free movement and
competition) was not infringed.
Apple had not explained how it was
infringed. The Regulation conferred
exclusive rights on the owner of a
Community trade mark and, since
likelihood of confusion was
established, TKS was legitimately
exercising those rights.
Comment
A word incorporated in a “complex
mark”, if it is the dominant element,
can enjoy a high level of protection.
Jacob LJ commented on this in
Phones4u Ltd v Phone4u.co.uk Ltd
[2006] EWCA Civ 244 (Court of
Appeal).
However, national decisions cannot
be used to question decisions made
in the Community trade mark system.
Apple, relying on national decisions,
criticised the Opposition Division
and Board of Appeal decisions
on similarity of goods. The CFI
emphasised that the Community
trade mark system was autonomous,
had its own rules and was
independent of any national system.
John Colbourn, Redd Solicitors LLP,
john.colbourn@redd.eu
ITMA Review 25

CASE COMMENT
Background
The appellant, esure, made an
application to register a device mark
of a computer mouse on wheels in
relation to insurance and financial
services in Class 36. No colour
was specified in relation to this
application. The respondent, Direct
Line objected to the registration of
esure’s mark on the basis that it was
similar and confusing with Direct
Line’s earlier registered trade marks in
respect of a red telephone on wheels.
Direct Line also asserted that the
esure mark took unfair advantage of
the reputation in its earlier mark.
Decision of the hearing officer
The hearing officer upheld Direct
Line’s opposition that on an overall
assessment of the marks there were
visual and conceptual similarities
between them resulting in indirect
confusion. Direct Line adduced
survey evidence in support of its
evidence as to confusion; however,
this was disregarded as the results
may have been influenced by a wide
CASE COMMENT
esure Insurance Ltd v Direct Line Insurance Plc,Court of Appeal (Arden, Jacob
and Maurice Kay LJJ) 23 July 2008. The Court of Appeal (CoA) upheld
the hearing officer’s decision that there was indirect confusion
between esure’s mouse on wheels and Direct Line’s earlier mark
of a red telephone on wheels and overturned the decision of the
High Court. The hearing officer had reached this decision on the
basis of his own assessment and without the use of additional
evidence. The use of expert evidence in relation to confusion
issues was strongly criticised as being of no use since the
confusion analysis could be carried out by the court. The CoA
approved the practice of seeking case management directions in
relation to survey evidence as instigated by the late Pumfrey LJ
in O2 Ltd v Hutchison 3G Ltd. Emily Peters reports...
Road closed for esure’s mouse on wheels
26 ITMA Review
ranging advertising campaign run by
Direct Line including both a red
computer mouse on wheels and a
red telephone on wheels. The hearing
officer upheld Direct Line’s
opposition that the mark would be
detrimental to the distinctive
character of Direct Line’s earlier mark
as the public would make a link
between the marks.
First appeal
On appeal Lindsay J overturned the
decision of the hearing officer under
s5(2)(b) Trade Marks Act 1994 (TMA),
holding that no evidence of a
likelihood of confusion had been
adduced. The judge made his own
assessment of the likelihood of
confusion and held that there was
a minimum level of similarity to be
shown and if this was not fulfilled, an
assessment of confusion was not
required. The judge assessed the
marks and found that the similarity of
the marks was above the threshold.
However, he concluded that the
differences were such that an average
consumer would conclude that the
parties were competitors rather than
associated enterprises operating
through different media, the
telephone and the computer, and
as such there was no likelihood
of confusion.
The judge however, upheld the
decision of the hearing officer under
s5(3) TMA, holding that the average
consumer must perceive an
additional link between the marks,
distinct from confusion. In reaching
his conclusion, the judge relied
heavily on the evidence of a branding
expert who had given evidence
on a number of factors including
consumer perception, confusion and
the likelihood of association of the
mark applied for and Direct Line’s
earlier mark. The branding expert
gave evidence that the Direct Line
mark was striking and original. He
opined that people would confuse
the marks as they were both desk top
objects of a similar oblong, block-like
shape on chunky wheels. The judge
held that esure’s proposed mark
would exploit the reputation built
up in Direct Line’s mark.
September 2008

esure appealed on the grounds that
parts of the evidence given by the
expert were topics for consideration
by the tribunal and were given undue
weight by the judge in reaching his
decision under s5(3). In addition, the
judge should have used the same
comparison of the marks for reaching
his decision under s5(2) and s5(3).
Decision of the Court of Appeal
The Court of Appeal considered the
role of expert evidence under s5 and
whether an opposition can be upheld
where there is non-confusing
similarity between marks which
are not identical.
The Court of Appeal followed the
assessment in respect of confusing
similarity in SABEL, Case C-251/95
[1997] ECR 1-6191. In that case the
two factors required for consideration
were similarity and the likelihood
of confusion. The likelihood of
confusion should be determined
globally from an overall impression
of aural, visual and conceptual
similarities of the marks together with
the goods or services to which they
relate from the standpoint of the
average consumer.
The assessment of the similarities
in the services, the marks and
the likelihood of confusion are
interdependent and cannot be
treated as discrete tests but must be
assessed taking into account the
circumstances of each case. The Court
of Appeal held that there was no
minimum threshold level of similarity,
rather if the marks are not similar
then there could be no likelihood
of confusion to consider.
The Court of Appeal rejected the
submission that consumer surveys
should ordinarily be adduced to show
consumer perception. The court
approved the approach outlined
by the late Pumfrey LJ in O2 Ltd v
Hutchison 3G Ltd [2005] ETMR 61
(the “bubbles” case) which requires
parties to seek directions from the
court as to the scope or methodology
of proposed consumer surveys to
avoid irrelevant or unhelpful
responses arising out of questions
asked incorrectly.
The Court of Appeal strongly
criticised the use of expert evidence
stating that this need only be carried
CASE COMMENT
out by an expert where the market in
question was unfamiliar to a layman.
The evidence of the branding expert
in this case was of no use as the
expert had compared oblong, blocklike
shaped desk top objects when
the average consumer would have
compared a mouse on wheels with
a telephone on wheels. The court
stated that when used, expert
evidence should refer to the markets
in question and not be directed at
the question of confusing similarity.
The Court of Appeal held that the
judge was wrong to interfere with the
hearing officer’s decision. It held that
the hearing officer could decide the
issue of similarity on a comparison
of the marks themselves and the
services they related to without any
other evidence as the services were
identical and would be familiar to
members of the public and therefore
the judge. In condemning the use of
expert evidence, Maurice Kay LJ
advised that hearing officers in the
Trade Marks Registry should take
note of the expert evidence rules
under the CPR when exercising their
freedom to control the nature and
quality of evidence sought.
Comment
The court’s confirmation of
the approach of seeking case
management directions prior to
obtaining survey evidence will assist
in reducing the costs of bringing a
trade mark action, particularly given
the difficulties involved in producing
useful survey evidence. The strong
criticism by all members of the Court
of Appeal in this case of the use of
expert evidence in relation to
confusion highlights that the
approach to assessing the likelihood
of confusion must be from the
viewpoint of the average consumer.
As such no expert is required as this
can be an assessment made by the
judge who can put himself in the
place of the average consumer.
It is now clear that expert evidence
should be confined to an analysis of
the relevant market and branding
in general and should not extend
beyond this to areas in which the
court can make its own assessment.
Emily Peters, Bird & Bird,
emily.peters@twobirds.com
In reaching his
conclusion, the judge
relied heavily on
the evidence of a
branding expert who
had given evidence
on a number of factors
including consumer
perception, confusion
and the likelihood
of association of
the mark applied for
and Direct Line’s
earlier mark.
September 2008 ITMA Review 27

CASE COMMENT
The opposition was based on a
number of earlier, figurative rights,
some of which are set out above.
The various earlier rights covered
goods and services in Classes 8, 11,
18, 24, 25, 28, 38, 41, and the grounds
of the opposition were Article 8(1)(a)
and (b) and 8(5) of Regulation No
40/94.
OHIM notified the opponent that
certain of the earlier rights would not
be taken into consideration as they
had failed to provide translations into
the language of the proceedings
prior to the deadline for doing so.
Following this, the applicants
restricted their application to the
following services in Class 41 “cinema
and recording studios, rent of videos,
concourse (scattering), installation
of television and radiophones,
production of films”.
Nevertheless, the opponent
maintained its opposition, and
CASE COMMENT
The trade mark that always comes back!
Below: the new mark.
Right: two of the previous
registrations.
28 ITMA Review
El Corte Inglés, SA v OHMI, José Matías Sánchez and Pedro Ricote Saugar (BOOMERANG),
Case T-420/03, 17 June 2008.
The applicants, José Matías Sánchez and Pedro Ricote Saugar, sought
registration of the following figurative mark in Classes 38 and 41: the
application was advertised and on 18 February 2000, El Corte Inglés
filed opposition against all of the services covered by the application.
Stephanie Burns tracks its curved flight through the CFI.
lodged a number of documents in
order to attempt to prove reputation.
The applicants filed observations
stating that the opponent had failed
to provide evidence of use of its rights.
The Opposition Division formally
rejected the opposition on the basis
that the opponent had failed to
submit a full list of goods and services
in relation to a number of its earlier
rights and proper translations
therefore, and furthermore, had failed
to provide sufficient evidence by
which to prove that some of the
earlier marks were well known by
way of Article 6bis of the Paris
Convention. Finally, the Opposition
Division concluded that the
opponents had not met the
conditions of Article 8(1)(a) and (b)
and 8(5) on the basis that the
remaining marks for which proof of
use had been successfully provided
were not similar to the services for
which the applicants had sought
registration in Class 41, and there was
not sufficient evidence provided to
demonstrate the extent of their
alleged reputation.
The opponent appealed the decision
and provided information regarding
a number of its earlier registrations,
and documentary evidence in the
form of a press article which signified
the extent of its commercial activities
in Spain.
The Second Board of Appeal
dismissed the appeal and regarded
the documents supplied with the
appeal document as inadmissible.
It also upheld the decision of the
Opposition Division on the basis
that it was entitled to reject the
opposition under Rule 16(1) to (3),
17(2) and 20(2) on the grounds that
the opponent had not qualified its
earlier rights in the language of the
proceedings prior to the deadline
for so doing, and that the evidence
submitted to claim reputation and to
argue the existence of a well-known
September 2008

mark was not sufficient to prove the
same. Out of the remaining marks,
the Board of Appeal upheld the
earlier decision of the Opposition
Division and found no likelihood of
confusion between the subject
application and the opponent’s
remaining earlier rights.
Proceedings at the CFI
The opponent lodged four main
grounds of appeal, based on the
failure of the OHIM to consider
evidence presented and errors made
in relation to the assessment of
evidence presented to substantiate
the opponent’s earlier rights.
Furthermore, it submitted that
Articles 8(1)(b) and 8(5) had not
been correctly applied.
The CFI ruled that subject to Article
135(4) of the Rules of Procedure, the
OHIM Board of Appeal should not be
reviewing facts in light of new
documentary evidence provided for
the first time before it, and as such,
any such evidence was inadmissible,
and further that the opponent’s offer
to submit extra evidence must be
refused. Whilst it may be possible in
some circumstances to submit
evidence out of time, and the nature
of the evidence is a factor which
OHIM will take into account in this
regard (OHIM v Kaul [2007] ECR I-
2213), and a party to proceedings
does not have automatically have
the right to do so.
Turning to assessment of evidence,
under Rules 16(2) and (3) of
Regulation 2868/95, the notice of
opposition should be accompanied
by evidence of the earlier rights
upon which it is based, and if not
submitted at the time, must be
submitted within a time frame given
by OHIM. Furthermore, under Rule
17(2) of the same Regulation, where
evidence is not filed in the language
of the proceedings, a translation must
be filed within one month or within
a time frame set by OHIM as above.
Therefore, these factors are not
conditions relating to admissibility of
the opposition, but rather relate to
the substance of the opposition. If
evidence is not presented prior to the
expiry of a time limit set by OHIM, it is
possible for OHIM to simply give a
ruling based on the evidence already
before it.
CASE COMMENT
In relation to evidence submitted on
the basis that the marks were “wellknown”
under Article 6bis of the Paris
Convention in Spain, Ireland, Greece
and the United Kingdom, the
opponent submitted catalogue
extracts showing the BOOMERANG
mark used in relation to sports
clothing, accessories and equipment,
photographs of the mark used at
a sporting event and newspaper
articles referring to an event
sponsored by the opponent.
However, this evidence related to
use in Spain only and did not show
that the marks were well-known in
Ireland, Greece or the United
Kingdom. Furthermore, the evidence
submitted was basic; it did not
provide the assessor with any
information as to extent of use,
duration of use or evidence that the
marks were recognisable in Spain or
to substantial part of the Spanish
public.
Therefore, the CFI agreed with the
Boards of Appeal in relation to its
decision on evidence submitted.
With respect to infringement of the
application of Article 8(1)(b), the
opponent submitted that the word
“boomerang” was the dominant
aspect of both its family of marks and
the applicant’s mark. Further, the “tv”
element of the applicant’s mark was
“generic and descriptive”. Whilst the
applicants had sought registration in
Class 41 following their restriction of
services, the opponent argued their
goods and services were identical or
similar, and indeed complementary in
the sense that clothing and related
accessories may be used to advertise
television services, and the
opponent’s interest in the sports
sector would overlap with televised
events of the applicant’s specification.
Furthermore, the applicants had
made an application in Benelux
which was rejected on the basis of
the opponent’s earlier rights.
The CFI had already ruled on the
basis that several of the documents
produced to support these
arguments and therefore, some of
the earlier rights, were inadmissible,
and were left to assess the opposition
on the basis of the remaining earlier
rights. The Board of Appeal relied
solely on the lack of confusion
between the goods and services on
making this assessment, and the CFI
considered that, based on existing
case law, all factors should have been
taken into consideration, for example,
nature of the goods/services, their
intended purpose, whether they are
in competition or complementary.
Using these comparators, the CFI
still found the goods and services
covered by the earlier marks were not
similar to the services of the subject
application, and therefore, the Board
of Appeal was correct to say there
was no likelihood of confusion.
The final plea of the opponent was
that Article 8(5) had been infringed
and not correctly applied by OHIM,
and that the earlier marks of the
opponent, particularly those
registered in Classes 18, 24, 25 and 28
possess a reputation in relation to
clothing, sports fashion wear and the
sports sector. The opponent argued
that use by the applicants of their
trade mark would take unfair
advantage of, or would be
detrimental to the distinctive
character or repute of the opponent’s
earlier trade marks, and specifically if
the services offered by the applicants
were of a low standard, this could be
detrimental to their reputation.
However, the applicants and OHIM
contend that the opponent did not
establish their reputation by the
evidence filed.
The CFI concluded that, in order
to meet the criteria to rely on
reputation, the opponent must show
that a significant part of the public in
the territory are aware of the goods
and services covered by their trade
marks, and this can be shown by
criteria such as geographical extent of
use, advertising figures, duration of
use, market share etc. The opponent
had not provided sufficient evidence
to enable them to rely on this ground
and therefore could not argue that
their earlier rights were known to a
significant part of the relevant public.
Therefore, in conclusion, the CFI
agreed with the findings of the OHIM
Boards of Appeal, and the opposition
failed on all grounds, with El Corte
Inglés ordered to pay costs.
Stephanie Burns,
Withers & Rogers LLP,
sburns@withersrogers.com
September 2008 ITMA Review 29

CASE COMMENT
It is not surprising that InBev had
chosen to oppose the mark SOUTH
BECK in Class 33 based on their UK
and CTM registrations. The mark was
opposed under sections 5(2)(b), 5(3)
and 5(4)(a). The hearing officer
dismissed the opposition on the basis
that the marks are conceptually
distinguishable. The opponents
argued that the consumers would
ignore the initial word and look at the
second word in the mark and would
be confused as to the trade origin of
the applicants’ goods. However, the
hearing officer rightly rejected the
argument as no reason was given
why the first word would not be
noticed.
It is important to note that the
hearing officer agreed that BECK’s
is inherently distinctive and the
applicants accepted that BECK’s
has a worldwide reputation and is
highly distinctive.
The hearing officer observed that
the term SOUTH BECK would be
understood to be a geographical
location and BECK’S would be seen as
a name of a person or family and that
the beer is provided by them hence
the apostrophe ‘s’. The hearing officer
stated that he is fortified by the view
expressed by Geoffrey Hobbs QC
acting as the Appointed Person in the
CARDINAL PLACE case (O/339/04)
where at paragraph 15 he stated:
“ The perceptions and recollections
triggered by the earlier mark are likely
to have been ecclesiastical whereas
the perceptions and recollections
triggered by the Applicant’s mark are
likely to have been locational as a
CASE COMMENT
Belgian beer giant gets a hangover
opposing pint sized registration
O-160-08, In the matter of application no 2388686 in the name of Air Parts Europe Limited and in the matter of
opposition no 93708 by InBev SA. Air Parts Europe Ltd applied for registration of the mark SOUTH BECK
for “wines, spirits, liqueurs, alcopops” in Class 33. The application was opposed by InBev SA,
headquartered in Leuven, Belgium. It is quite interesting to note from their website
(www.inbev.com) that they have a sales volume of 273.9 million hectolitres in 2007. InBev employs
89,000 people worldwide. The company’s well-known brand BECK’s is displayed on the website
with a note “Every Beck’s Beer is brewed according to the ancient German Beer purity law, the
Reinheitsgebot which originated in 1516”.
result of the qualifying effect of the
word PLACE upon the word
CARDINAL. A qualifying effect of that
kind can be quite powerful as
indicated by the examples cited in
argument on behalf of the Applicant:
SOMERSET as compared with
SOMERSET HOUSE: COUNTY as
compared with COUNTY HALL:
CANARY as compared with
CANARY WHARF.”
The opposition failed under section
5(2)(b).
The hearing officer also dismissed the
opposition under section 5(3). He did
not consider the similarities in the
marks to be such that the public will
believe that the marks are from a
single undertaking. The hearing
officer stated that he did not consider
that registration of the applicant’s
mark could dilute the opponents’
mark. In this regard, the hearing
officer relied on Inlima SL’s
Application [2000] RPC 61.
Appeal
The opponents alleged that the
hearing officer omitted to consider
the three important principles laid
down by the European Court of
Justice in Matratzen and Medion
Cases. The principles are as follows:
1 The assessment of the similarity
between two marks does not
amount to taking into account
only one component of a
complex trade mark and
comparing it with another mark.
On the contrary, the comparison
must be made by examining each
of the marks as a whole, although
this doesn’t mean that the overall
impression conveyed to the
relevant public by a composite
trade mark may not, in certain
circumstances, be dominated by
one or more of its components.
(Matratzen)
2 It is possible for a likelihood of
confusion to arise when an earlier
mark consisting of a company
name is included as a part of a
later composite element trade
mark even though that earlier
mark does not form the dominant
element of later mark. (Medion)
3 To establish a likelihood of
confusion it is not necessary to
show that the overall impression
of a composite mark which
includes an earlier trade mark be
dominated by that earlier trade
mark, but is necessary to show
that the earlier trade mark still has
an independent distinctive role in
the composite mark. (Medion)
The Appointed Person agreed that
it is necessary for the hearing officer
to take into account the relevant
principles and added Case C-334/05P
Office for Harmonisation in the
Internal Market v Shaker di L Laudato
& C.Sas [2007] ECR 1-4529. However,
he observed that the present case is
distinguishable from Medion and
from the recent case of Rousselon
Freres et Cie v Horwood Homewares
Ltd [2008] WHC 881 (Ch). The
Appointed Person observed as
follows:
1 First, this is not the case where the
entirety of the opponents’ trade
mark is contained within the
30 ITMA Review September 2008

applicants’ trade mark: the
opponents’ trade mark is BECK’s
and not BECK. The opponents’
evidence does not come close to
establishing that its beer is known
or referred to as BECK.
2 Secondly, the additional element
in the applicants’ trade mark is
not a company name or house
mark. On the contrary, it is a
geographical term.
3 Thirdly, the nature of the
applicants’ trade mark is such that
the two words form (to adopt
Geoffrey Hobbs QC’s well-known
formulation) a blend of meaning
and significance, rather than
having separate roles in the
manner (of say) FORD FOCUS.
4 Fourthly, and least importantly,
the goods are not identical.
The Appointed Person agreed to the
hearing officer’s decision that there
was no reason to think that the
average consumer would ignore the
first word in the applicants’ mark and
also stated that the hearing officer
was right to rely on the decision in
CARDINAL PLACE.
The applicants had drawn attention
to the mark GRAHAM BECK for wines,
which is co-existing in the UK market
with BECK’s. There is no reason why
use of SOUTH BECK should give rise
to a likelihood of confusion.
The Appointed Person also rejected
the opponents’ arguments that the
hearing officer failed to take into
account the evidence of two
independent witnesses that BECK
was highly distinctive. This is
because the statements were
personal opinion of two relatively
inexperienced individuals in the
drinks industry. The evidence does
not suggest that either witness had
addressed his mind to the distinctive
between BECK’s and BECK.
The counsel for the opponents also
argued that the hearing officer was
wrong in relying on the dictionary
meaning of BECK, as it is in relation to
spring waters. The counsel argued
that the consumers would not
associate the mark with wines, spirits
etc. The Appointed Person rejected
the argument on the basis that if the
hearing officer had relied upon his
September 2008
CASE COMMENT
own knowledge of the English
language in reaching his conclusion
as to how the word would be
understood by the average
consumer, that conclusion would
not have been open to challenge.
Accordingly, the Appointed Person
dismissed the opposition under
Section 5(3). The Appointed Person
pointed out that some of the cases
referred to by the hearing officer
have been superseded by later case
law, in particular Case C-408/01
(Adidas-Salmon AG v Fitness World),
T-67/04 (Spa Monopole v OHIM) and
esure Insurance Ltd v Direct Line
Insurance Plc.
Costs
The opponents appealed against
the hearing officer’s order for costs.
The hearing officer had ordered the
opponents to pay a sum of £1,600.
The counsel argued that the hearing
officer appeared to have awarded the
applicant two-thirds of the scale
figure which he would have awarded
a represented party and that this
could not be justified since there
was not any financial loss and the
applicants very unlikely to have spent
over 160 hours on the matter.
The Appointed Person agreed that
the hearing officer misapplied CPR
r48.6. The hearing officer should
direct the litigant in person pursuant
to r57 Rules to file a brief schedule
or statement setting out any
disbursements incurred, financial
losses claimed and the time spent
by the litigant in dealing with the
proceedings. The hearing officer
should then make an assessment of
the costs under r48.6. The Appointed
Person observed that the objective
should be to ensure that the litigants
in person are neither disadvantaged
nor over compensated by
comparison with professionally
represented litigants.
The Appointed Person set aside the
hearing officer’s costs order and
substituted that the opponents pay
the applicant £865.25 in respect of
the first instance proceedings. He also
ordered the opponents to pay the
applicant £291.75 in respect of
the appeal.
Remya Suresh, remya@ipravi.com,
Ravindran Associates
The opponents argued
that the consumers
would ignore the
initial word and look
at the second word in
the mark and would
be confused as to the
trade origin of the
applicants’ goods.
However, the hearing
officer rightly rejected
the argument as no
reason was given why
the first word would
not be noticed.
ITMA Review 31

CASE COMMENT
Summary
In Stradivarius Espana, SA v OHIM
the Court of First Instance provided
guidance on what “illegible” means in
the context of a trade mark and how
illegibility affects the assessment of
the likelihood of confusion between
two marks, where the marks are
both device marks which contain
variations on the same word, but one
is illegible. In particular, the court
held that:
A mark will be illegible not only if
it is effectively impossible to read
or decipher, but also if it is so
difficult to decipher, understand
or read that a reasonably attentive
and well-informed consumer
could only understand it by
undertaking an analysis which
goes further than the limit of the
analysis he could reasonably be
expected to undertake when
acquiring the goods in question.
If part of a mark is illegible, the
owner will only be able to rely on
other (legible) parts of the mark to
inform the average consumer of
what the illegible part means if
the link between the legible and
the illegible parts form part of the
average consumers “cultural
baggage”.
In the present case, the illegible
part of the device mark “Stradivari
1715” (Figure 1) was the signature
“Stradivari” and the legible part
the number “1715”, which
referred to the year in which the
32 ITMA Review
CASE COMMENT
A trade mark might be
illegible but that doesn’t
mean it’s confusing!
Case T-340/06: Stradivarius Espana, SA (Appellant) v OHIM (Respondent) (Cristina
Ricci – Interested Party). Court of First Instance, Eight Session, 2 July 2008. On
appeal from the Appeal Tribunal - original language: Italian. The Court of
First Instance rules on the meaning of “illegible” and how to
deal with illegible marks, including the importance of “cultural
baggage”, when refusing to deny registration to a similar mark for
similar or identical goods under article 8(2)(b) of the Community
Trade Mark Regulations (40/94/EEC). Andrew Maggs reports...
“Stradivari Cremonese” (possibly
the most famous Stradivari
violin) was made. However, this
knowledge was not part of the
cultural baggage of the average
consumer of the goods in
question, and therefore the
appellant could not rely on this to
show that the Interested Party’s
trade mark was sufficiently
similar to its prior device mark
(“Stradivarius” – Figure 2) to deny
it registration on the grounds
set out in article 8(1)(b) of the
Community Trade Mark
Regulation (40/94/EEC) (the
Regulation).
Facts
On 20 June 2001 Cristina Ricci’s
predecessor in title applied to register
the device mark “Stradivari 1715” (the
“contested mark”) as a CTM for goods
in classes 14, 16 and 18 (jewellery
made of precious metals, articles
made of paper, and leather articles).
That application was opposed by
Stradivarius Espana, SA under article
8(1)(b) of the Community Trade Mark
Regulation on the grounds that it was
a similar mark, registered for similar
or identical goods (Stradivaruis
Espana’s mark was registered for
jewellery made of precious metals
under class 14 and articles made of
paper under class 16), to its mark
“Stradivarius” (the prior mark), and as
such, was likely to cause confusion.
That application was dismissed, as
was an appeal from it, on the
grounds that the marks were
not similar.
In reaching his decision that there
was no likelihood of confusion
between the two marks, the
Opposition Officer found that the
contested mark was partly illegible,
and would be read by the average
consumer as “stvadinari 1715”,
“jtvadinari 1715”, “stvdivari 1715”,
“jtvdivari 1715” or “jeudivari 1715”
but not as “Stradivari 1715”, and that
therefore as well as there being no
visual or aural similarity between the
marks, there was also no conceptual
similarity between them.
The Appeal Tribunal agreed with
his decision.
Stradivarius Espana therefore
appealed to the Court of First
Instance.
The decision of the court
The Court of First Instance dismissed
the appeal, holding that:
A mark will be illegible not only if
it is effectively impossible to read
or decipher, but also if it is so
difficult to decipher, understand
or read that a reasonably attentive
and well informed consumer
could only understand it by
undertaking an analysis which
goes further than the limit of the
analysis he could reasonable be
expected to undertake when
acquiring the goods in question.
September 2008

Above: the contested mark
Below: the prior mark
With regards to the prior mark,
the average consumer would
almost immediately recognise
the letters “tradivarius”, and the
stylised treble clef would bring to
mind a capital S, especially since
Stradivari violins are sufficiently
well known by the average
consumer to make the link
between the letters “tradivarius”,
the treble clef, and the Latinised
name of Antonio Stradivari.
Therefore the average consumer
would identify the term
“Stradivarius” when buying
the goods.
With regards to the contested
mark, the number “1715” is
immediately legible and
understandable. However, the
word “Stradivari” is not, and the
average consumer is likely to
interpret it as being “stvadinari”,
“jtvadinari”, “stvdivari”, “jtvdivari”
or “jeudivari” and not “Stradivari”.
Knowledge of the signature of
Antonio Stradivari is not part of
the “cultural baggage” of the
average consumer of the goods in
question.
Since there is no other connection
with music in the contested mark,
the average consumer will not
create a link between it and
Antonio Stradivari.
Given the differences in the font
used, the inclusion of 1715 in the
INTERNATIONAL
contested mark, and the different
backgrounds used in the marks,
the contested mark and the prior
mark are not visually similar.
In assessing the aural similarity
of two marks, it is necessary to
consider all their elements.
In the present case, the only
pronounceable element of
the prior mark was the word
“Stradivarius”. By contrast,
the contested mark had two
pronounceable elements:
“Stradivari” and “1715”. It could
not be excluded that consumers
may only pronounce some parts
of the contested mark. The CFI
therefore agreed with the hearing
officer that, given the varying
ways in which “Stradivari” can be
read by consumers, it could not
be said that the two marks were
aurally similar.
In assessing conceptual similarity,
with regards to the prior mark, the
average consumer would make
a link between it and Antonio
Stradivari. The average consumer
will not, however, make a link
between the contested mark and
Antonio Stradivari. In this respect,
the number “1715” and
Stradivari’s signature will only
allow specialists to make an
association between the mark and
the “Stradivari Cremonese” violin,
and hence Antonio Stradivari.
Therefore, the marks are not
conceptually similar.
Therefore the prior mark and the
contested mark were not similar.
Comment
The court’s decision on the meaning
of “illegible” seems to equate the
effort incurred by the average
consumer to decipher an illegible
trade mark with the effort which the
court assumes an average consumer
incurs when inspecting the marks so
that the court can ascertain whether
there is a likelihood of confusion. This
may seem somewhat harsh on
proprietors of existing marks, since
this may provide a way out for
applicants seeking to register marks
which are relatively indecipherable,
although once deciphered are similar
to their existing marks. We expect
trade mark owners to use their marks,
and in the process to educate their
users about them, so that eventually
consumers may well see the
contested mark and know that it
means “Stradivari 1715”. Existing
owners may therefore have been
denied their right to object until it is
too late to do so. It could therefore
be argued that at least conceptual
and aural (if not visual) comparison of
the marks should be done on the
basis of assumed comprehension.
However, whilst Cristina Ricci may
have secured a registration, it is likely
that her registration will be severely
restricted. The court based its
decision that the contested mark was
not confusingly similar to the prior
mark on a finding that the average
consumer would not read the mark
as “Stradivari 1715”. The scope of her
monopoly does not, it seems,
therefore extend to any aural use
of the words “Stradivari 1715”.
Therefore, if she uses her mark
aurally, it is likely that Stradivarius
Espana could sue for trade mark
infringement. In England, this should
also have the effect that, in a similar
circumstance, but with UK trade
marks, Ms Ricci would not be able to
rely on section 11(1) Trade Marks Act.
This, it is argued, must be correct.
Consider the owner of a CTM which
consists of a stylised word written in
the Cyrillic alphabet. It would be
unacceptable if the owner could rely
on the CTM (i) to prevent others
using a visually identical or similar
graphic mark; (ii) as a defence to his
own use of the sound it produces:
and (iii) to prevent registrations of
marks written in English which
produce an identical or a similar
sound to it since neither pre-existing
owners of trade marks nor potential
infringers can identify the subjectmatter
of the mark with sufficient
certainty from its registration to
oppose it or know if they will infringe.
Andrew Maggs, Wragge & Co LLP,
andrew_maggs@wragge.com
September 2008 ITMA Review 33

CASE COMMENT
Background
Intel, owner of a number of UK and
Community trade mark registrations
for computers and computer-related
products consisting of, or including,
the word INTEL, applied for a
declaration of invalidity of CPM’s
mark INTELMARK, which was
registered later for marketing and
telemarketing services.
The facts were established by Patten J
on appeal from the Trade Marks
Registry: the INTEL mark had a “huge”
reputation; the parties’ marks were
registered for dissimilar goods and
services (or dissimilar to a substantial
degree); the use of INTELMARK did
not suggest a trade connection
between CPM and Intel; INTEL was an
invented word; the INTEL mark was
unique, ie not used for any other
goods and services other than its
own and those of CPM; and INTEL
would be “brought to mind” by the
average consumer when faced with
CPM’s mark.
The Court of Appeal (CoA) examined
whether the fact that consumers
“bring to mind” a well-known mark
when they see a sign or subsequently
registered mark was enough to
CASE COMMENT
It's all in the mind... Advocate-General’s
opinion on trade mark infringement
34 ITMA Review
Intel Corporation Inc v CPM United Kingdom Limited. Opinion of Advocate-
General Sharpston Delivered on 26 June 2008 in response to a Reference to the
Court of Justice for a Preliminary Ruling from the Court of Appeal (Civil Division)
made on 29 May 2007 Case-252/07. This article summarises Advocate-
General Sharpston's opinion delivered on 26 June 2008 on
questions referred to the ECJ in the case Intel v CPM. In the AG’s
opinion it is what is brought to the mind of an average consumer
that is important when establishing a link between earlier and later
marks. Furthermore, a ‘huge reputation’ in the goods and services
for which the mark is known is not, in itself, sufficient to establish
a link, unfair advantage or detriment. He also thought that an
absence of similarity between the nature of goods and services of
the earlier and later marks does not imply the absence of a link and
that ‘uniqueness’ is not a prerequisite for establishing detriment to
distinctive character. Michelle Watson logged on for the decision.
preclude registration and/or use of
the later mark under Articles 4(4)(a)
and 5(2) of the Trade Marks Directive.
Intel’s submissions were based on the
“dilution” theory summarised in
Adidas-Salomon v Fitness World C-
408/01 [2004] FSR 21. In Adidas-
Salomon it was held that to come
within the scope of Article 5(2) the
mark and the sign should be similar
enough that the relevant public
“establishes a link” between the
sign and the mark.
The CoA decided to refer three
questions to the ECJ.
Questions referred to the ECJ
By its first question the CoA asked
essentially whether the facts of the
case established by Patten J were
sufficient in themselves to establish (i)
“a link” within the meaning of Adidas-
Salomon and/or (ii) unfair
advantage/detriment within the
meaning of Article 4(4)(a).
If the answer to the first question is
no, the CoA asked what factors a
national court should take into
account in deciding whether such
facts are sufficient (specifically, what
significance should be attached to
the goods/services of the later mark).
For its final question the CoA asked
what is required in order to satisfy the
condition of detriment to distinctive
character: (i) does the earlier mark
have to be unique; (ii) is a first
conflicting use sufficient to establish
detriment; and (iii) does the element
of detriment require an effect on
the economic behaviour of the
consumer?
Jacob LJ, giving the leading
judgment for the CoA, gave his own
opinion on the three questions. He
concluded the answer to the first
question should be “no” since a link
requires more than such a tenuous
association between the two marks
if it is to entitle the trade mark owner
to a monopoly in all or virtually all
goods and services.
In response to the second question,
Jacob LJ thought the following
factors should be taken into account:
(a) whether, having regard to the
nature of the goods and services of
the later mark, an average consumer
would consider there is an economic
connection between the owners of
the two marks; and (b) whether the
distinctiveness of the earlier mark is
September 2008

eally likely to be affected by the use
of the later mark.
Finally, in answer to the third
question, Jacob LJ considered that
this depended on “a realistic global
appreciation of the position” taking
into account a non-exhaustive list of
factors, and emphasising the fact that
the harm or prospect of harm must
be real and tangible.
Assessment
AG Sharpston considered how the
law should be interpreted and stated
that the theory of dilution had long
been the subject of disagreement
and that the current US and EU
legislation is criticised for not
protecting highly distinctive marks
rather than simply very famous
marks.
Dilution refers to the concept of
detriment to the distinctive character
of a trade mark. In contrast, the
concept of detriment to the repute
of a trade mark is referred to as
degradation or tarnishment of the
mark and is the situation in this case.
AG Sharpston noted that it was not
the task of the ECJ to consider the
doctrine of dilution but to interpret
the wording of a Community
directive. In addition, it was for the
ECJ to consider the interests of the
public in protecting a trade mark and
preventing dominant traders from
abusing that protection to the
detriment of others – in other words,
there should be a fair balance
between those interests.
The AG then went on to consider
the questions referred to the ECJ,
questions, she felt, overlapped to
a substantial degree and, taken
together, asked “what is needed to
establish a link in the mind of the
public, an unfair advantage,
detriment to distinctiveness
and detriment to repute”.
She concluded as follows:
The fact that the earlier mark is
brought to mind by the average
consumer when he comes across
the later mark used for the goods
or services of the later mark is, in
principle, the equivalent of
establishing a link.
CASE COMMENT
If the earlier mark has a ‘huge
reputation’ for certain specific
types of goods or services, that
those goods or services are
dissimilar to the goods or services
of the later mark, and that the
earlier mark is unique in respect
of any goods or services, is not
sufficient to establish a link, unfair
advantage or detriment.
In order to decide whether a link,
unfair advantage or detriment is
established, the court must take
into account all factors relevant
in the case.
The nature of goods or services
may be relevant in determining
whether there is a link, but an
absence of similarity cannot be
taken to imply the absence of
a link.
In order to establish detriment to
distinctive character, the earlier
mark need not be unique and an
effect on the economic behaviour
of the consumer is not necessary.
Comment
As is not uncommon in ECJ decisions,
AG Sharpston has sought to restate
the questions referred to the ECJ and,
in answering, has not dealt with the
specific questions posed by Jacob LJ.
Whilst Jacob LJ considered that a link
between an earlier and later mark
must be more than a tenuous
association and the harm suffered as
a result of the association must be
real and tangible, AG Sharpston has
stated that the link, whilst a necessary
precondition for establishing
infringement, is not sufficient in itself.
This however begs the question,
what does she deem to be
"sufficient". Similarly, whilst she
suggests that any assessment of
infringement should be based on all
the facts of any given case, she has
not provided assurance or clarity –
more a reformulation of those
questions referred to the ECJ. As such,
we are arguably none the wiser.
It remains to be seen whether the full
court will agree with AG Sharpston's
approach or whether the court will
provide specific answers to the
questions asked.
Michelle Watson, Bird & Bird,
michelle.watson@twobirds.com
If the earlier mark has
a ‘huge reputation’ for
certain specific types
of goods or services,
that those goods or
services are dissimilar
to the goods or
services of the later
mark, and that the
earlier mark is unique
in respect of any
goods or services,
is not sufficient to
establish a link,
unfair advantage
or detriment.
September 2008 ITMA Review 35

CASE COMMENT
CASE COMMENT
Lancôme Parfums et Beauté Cie SNC v OHIM, Court of First Instance, 8 July 2008, T 160/07. Lancôme applied to
register the Community trade mark COLOR EDITION on 9 December 2002 in class 3, for "cosmetic
and make up products". The mark was registered on 11 February 2004. Jennifer Bryant reports...
CFI invalidates Lancôme Community
trade mark for make up and cosmetics
Jennifer Bryant
36 ITMA Review
Norton Rose applied to invalidate the
mark on 12 May 2004 on the basis of
articles 51(1)(a) and 7(1)(b) and (c) EC
40/94 (the Regulation) (absolute
grounds: the sign is devoid of
distinctive character, and consists of
signs or indications which may serve,
in trade, to designate characteristics
of the goods or services). The
Cancellation Division refused to
invalidate the mark on 21 December
2005.
CMS Hasche Sigle (CMS) appealed
against the refusal on 9 February
2006. The Board of Appeal allowed
the appeal on 26 February 2007.
Lancôme appealed to the CFI. On 8
July 2008, the CFI refused Lancôme’s
appeal and invalidated the mark.
Lancôme had put forward two main
arguments. The first was that the CMS
appeal was inadmissible as CMS had
no standing to bring the appeal. They
argued that as a general principle of
law and under EU jurisprudence, CMS
had to show standing. Furthermore,
they argued that an applicant for
invalidity must be affected directly,
individually and personally in order
to bring the action.
The CFI stated that there was a
distinction in article 55 of the
Regulation between absolute and
relative grounds. Where an invalidity
action was brought on absolute
grounds, any party could bring that
action, whereas where it was brought
on relative grounds, the action had
to be brought by someone with an
interest in it. Articles of the
Regulation and previous decisions
which had been cited by Lancôme
to support its arguments were
irrelevant. The CFI reiterated that
decisions are made on the basis of
the Regulation, and not on the basis
of previous decisions.
Lancôme’s second argument was
that the Board of Appeal had failed to
appreciate the distinction between a
wholly descriptive mark and a mark
which was merely suggestive. It
claimed that COLOR EDITION was the
latter; intellectual effort was required
to understand the properties of the
goods covered by the mark. The CFI
disagreed, holding that the mark
expressed a message which was
immediately and directly understood
by the relevant public (which was the
English-speaking general public) as
designating certain characteristics of
the goods. Furthermore, there was no
lexical invention or other mechanism
which served to distance the mark
from the goods. Accordingly there
was a sufficiently direct and concrete
link between the mark and the goods
it designated to render the mark
invalid.
Comment
The CFI’s reasoning on both standing
and descriptiveness is clear and
useful. However, it does not say
anything new and it is therefore
particularly interesting that Lancôme
pursued its arguments on standing in
the face of both the clear wording of
Article 55 of the Regulation and the
often-reiterated position that
previous decisions are not binding.
Jennifer Bryant and Edouard
Fortunet, Bird & Bird,
jennifer.bryant@twobirds.com and
edouard.fortunet@twobirds.com
September 2008

CASE COMMENT
In the High Court, it was held that
Horwood’s registrations for JUDGE
SABATIER and STELLAR SABATIER for
knives in class 8 were invalid in the
light of an earlier registration for
SABATIER. Horwood sought to
suspend the invalidity declaration,
pending the outcome of its
application to invalidate Rousselon’s
own registered marks. The stay
was sought on the basis that if the
invalidity application was successful,
Rousselon’s application to invalidate
Horwood’s marks would fall away.
The Court of Appeal was asked to
consider two questions:
whether the court had jurisdiction
to suspend the making of the
declaration; and
if so, should that discretion be
exercised.
With respect to the first point, the
court drew a distinction between a
stay of proceedings and the issue in
hand; namely, an application to
postpone the practical effect of the
declaration. It is a well-established
principle that the court has an
inherent jurisdiction to grant a stay
of an order pending appeal. This
was contrasted with an application
to suspend the execution or
enforcement of its judgments or
orders, which lies outside of the
general power of the court.
The court was clear that the present
application to suspend declaratory
relief falls under the remit of a
suspension of an order rather than
a stay of proceedings and this is
demonstrated by the form and
ultimate effect of the application,
ie to postpone the removal of
Horwood’s marks from the register so
far as concerned goods in class 8. As a
result, the court was satisfied that it
did in fact have the necessary power
to suspend the declaration to which
Rousselon was entitled.
CASE COMMENT
Knife work if you can get it
In Rousselon Freres et Cie v Horwood Homewares Limited [2008]
EWHC 1660 (Ch) (Case CH/2007/APP0561) it was held that the
court did have the power to suspend an order for a declaration of
invalidity pending the outcome of an application by Horwood to
invalidate an earlier trade mark.
In considering whether the discretion
should be exercised, the court was
concerned with what the effect of
the order would be if it were not
suspended pending appeal. The
consequences for the appellant of a
declaration of invalidity would be
irreversible and effectively result in
a loss of property rights and eight
years' filing time. If successful,
although the appellant may be able
to obtain a new registration, they
would inevitably have been unfairly
prejudiced.
The following arguments were raised
against the grant of a stay:
1. Horwood obtained the marks in
2000 knowing them to be invalid
unless established that the
SABATIER mark was invalid or
generic.
2. Horwood was guilty of gross
delay in commencing its attack on
the SABATIER marks until after the
hearing of Rousselon’s application
had been fixed.
3. Horwood had failed to show the
court that its attack held any
merit.
4. Horwood would not suffer any
material prejudice of its marks
being invalidated as it would still
have registration of its “JUDGE”
and “STELLAR” marks.
5. Rousselon would suffer prejudice
if there were any further delay, in
the form of a risk of dilution of the
distinctiveness of the SABATIER
mark and an inability to
commence proceedings and
recover damages for past acts of
infringement committed by
Horwood.
In addressing these arguments, the
court found that on applying for the
marks, Horwood had submitted that
there was no likelihood of confusion
because SABATIER was nondistinctive;
it could therefore not be
said that Horwood had obtained
the marks knowing that they were
invalid.
Any delay on the part of Horwood
was as a result of the time taken to
gather evidence, and, in any case was
not significant enough to justify a
refusal to grant a stay. The fact that
Horwood could have made the
application for a stay earlier, and
therefore the Registry would have
given its decision earlier, was not
material; an appeal could still
have been launched and a stay
obtained pending appeal. It was
recommended that to prevent any
further delay, the Registrar should
take the necessary steps to enable
the application to be heard later in
the year.
The court considered that:
i) the applications had been made in
good faith with a genuine belief
that a good arguable case for
invalidity existed. In any case, it
was not for the court to consider
the merits of the case;
ii) if “SABATIER” were non-distinctive,
the composite marks, JUDGE
SABATIER and STELLAR SABATIER
could not be said to gain
distinctiveness from addition
of the words “JUDGE” and
“STELLAR”. A composite mark may
have its own distinctiveness and
this is to be decided on the basis
of evidence;
iii) there was not sufficient evidence
to suggest that Rousselon would
be at any greater risk of prejudice
if the declaration were
suspended. Rousselon were still
able to issue a claim form and to
stop time running for limitation
purposes;
iv) on balance, any prejudice to the
parties would be minimised by
a decision to suspend the
declaration of invalidity pending
the outcome of Horwood’s
application to invalidate
Rousselon’s registered marks;
This is the first time that there has
been clarification that the courts do
have the power to suspend an order
for a declaration of invalidity and is
therefore an important precedent.
Rachael Sharples, Hammonds LLP,
rachael.sharples@hammonds.com
September 2008 ITMA Review 37

CASE COMMENT
Procter & Gamble
fight beauty mark
The mark was opposed by Procter
and Gamble Company, as they had
earlier registrations for “SK-II” (UK TM
No 2244934 and CTM No 1569664)
in Class 3 for “soaps, perfumery,
essential oils, cosmetics, hair lotions,
preparations for the cleaning, care
and beautification of the skin, scalp
and hair; antiperspirants and
deodorants for personal use”.
The hearing officer found in favour
of the opponent and rejected the
application on 9 Nov 2007
(O/333/07). The hearing officer found
the marks to be visually, aurally and
conceptually similar. He concluded
that the marks have strong similarity
as the dominant component in each
of the marks is “SK”. The hearing
officer decided that the goods were
similar as they were capable of being
used in the same market sector at the
retail end. He relied on the Treat case,
concluding that there will be
likelihood of confusion in the minds
of the public if the applicant were to
use the mark in the market in respect
of the goods in Class 3 and Class 8.
The applicant appealed in respect of
the goods in Class 8 and sought
permission to submit additional
evidence comprising “materials and
documents explaining the nature
of goods covered by Class 8 and
detailing how the trade mark is
used thereon”.
The evidence was lodged only two
days before the hearing. Due to an
administrative mishap, a copy had
not been sent to the opponent.
38 ITMA Review
CASE COMMENT
The applicant’s counsel argued that
that the additional evidence is
important as it would give a better
idea of the nature of the applicants’
products. According to the counsel,
the additional evidence would help in
differentiating the applicant’s goods
in Class 8 from the opponent’s goods
in Class 3. However, no reason was
given why there has been a delay in
submitting the evidence and why it
could not have been submitted
earlier.
The Appointed Person relied on the
following list of factors identified by
Laddie J in Hunt-Wesson Inc’s Trade
Mark Application (SWISS MISS) [1996]
RPC 233)and rejected the evidence:
(1) Whether the evidence could have
been filed earlier and, if so, how
much earlier.
(2) If it could have been, what
explanation for the late filing has
been offered to explain the delay?
(3) The nature of the mark.
(4) The nature of the objections to it.
(5) The potential significance of the
new evidence.
(6) Whether the other side will be
significantly prejudiced by the
admission of the evidence in a
way which cannot be
compensated, for example by an
order for costs.
(7) The desirability of avoiding a
multiplicity of proceedings.
O-176-08 Decision date: 24 June 2008. Applicant’s Appeal
to an Appointed Person from the decision of Mr Mike
Foley dated 9 November 2007. This is an appeal by
Simon Grogan, the applicant for registration of
the mark displayed below in Classes 3 and 8.
The specifications cover “body and facial gels
and serums for use with electrical beauty
machines for beauty treatments in a place of
business involving a qualified beauty therapist”
and “electrical machines for beauty treatments
(hand operated) including the use of ultrasound,
micro-current and galvanic current, all for use in
a place of business involving a qualified beauty
therapist” in Class 3 and Class 8 respectively.
(8) The public interest in not
admitting onto the Register
invalid marks.
The Appointed Person observed
that it was not clear to him how the
evidence could have really helped
either the applicant or him. The
substantive issue in the appeal is
whether the hearing officer was
right to conclude that the goods in
the Class 8 specification for the
applicant’s mark are similar to the
Class 3 goods of the opponent’s
earlier trade marks. However, the
applicant had shown through the
additional materials the goods on
which he actually uses the mark in
practice. The Appointed Person
stated that it might have been mildly
helpful to the hearing officer to have
seen concrete examples of what the
applicant intended to cover; his main
focus had to be on the meaning of
the words that appeared in the Class
8 specification. He stated further
that his own task will be to see
whether the hearing officer made
the correct comparison between the
goods covered by those words and
the goods covered by the words
of the opponent’s trade mark
specifications, rather than to analyse
the actual use that the applicant has
made of his mark.
Accordingly, the Appointed Person
dismissed the appeal on the basis
that the hearing officer’s decision
was correct.
Remya Suresh, Rajah & Tann LLP
remya.aravamuthan@rajahtann.com
September 2008

CASE COMMENT
T-304/06 Reber v OHMI – Chocoladefabriken Lindt & Sprüngli (Mozart), ECJ, Court of First
Instance, 9 July 2008. Reber (the applicant) had applied in 1996 to have the mark
MOZART registered for goods within Class 30: “Pastry and confectionery,
chocolate products, sugar confectionery”. Despite written observations from
Chocoladefabriken Lindt & Sprüngli AG that the mark was descriptive of the
goods, the mark was registered in January 2000. The Cancellation Division of
OHIM subsequently allowed an application for a declaration of invalidity, on
the grounds that the mark was descriptive for the purpose of Article 7(1)(c) of
Council Regulation 40/94 of all the goods covered, in consisting exclusively of
an indication of their kind and quality. Victoria Bentley savours the decision...
German taste for Mozart’s sweet music
The average consumer
in German-speaking
countries confronted
with a chocolatecoated
ball called a
“Mozart” would see
that as a reference to
the characteristic
recipe, rather than
information as to the
commercial origin.
The applicant appealed against the
decision of the Board of Appeal,
which had upheld the finding that
the mark was descriptive. It claimed
that the decision should be annulled
or, alternatively, annulled so far as
to restrict the description of the
goods to exclude “Mozartkugeln”,
confectionery in Germany and Austria
of chocolate-coated marzipan and
praline balls.
Whilst it would be permissible to
withdraw one or more of the
categories of goods covered by the
CTM, the proposed restriction would
instead alter the description of each
category by specifying that such
goods were not to be in the form
of “Mozartkugeln”. As such, the
alternative claim was inadmissible.
In adopting the grounds of the
Cancellation Division’s decision, the
Board had met its duty to indicate the
ground for refusal and set out the
facts which it found to justify
application of the provision relied on.
The Board considered that the mark
had been registered in disregard of
the absolute ground for refusal in
Article 7(1)(c) of Regulation 40/94 —
since to the German-speaking
consumer the term “Mozartkugeln” is
descriptive of chocolate-coated balls
of marzipan and praline, and the
component “Kugeln” (balls) clearly
refers to the shape of the delicacy.
It was sufficiently clear that the
absolute ground for refusal applied
related to all the goods covered.
In order to refuse registration under
Article 7(1)(c), there had to be a
sufficiently direct and specific
relationship between the sign
and goods to enable the public
immediately to perceive a description
of the goods in question or one or
more of their characteristics. The
Board had correctly taken account of
the public’s perception of the mark.
Further, in adopting the Cancellation
Division’s reasoning described above,
the Board had concluded that the
mark was descriptive of the goods
covered, since it constituted an
indication as to how the goods
were manufactured and therefore
designated their kind and quality.
The component “Kugeln” would
be taken by German speakers as a
description of the shape of the goods,
so that they would necessarily
perceive the word “Mozart” as a
reference to the characteristic recipe
of Mozartkugeln. The average
consumer in German-speaking
countries confronted with a
chocolate-coated ball called a
“Mozart” would see that as a
reference to the characteristic recipe,
rather than information as to the
commercial origin. Omission of
“Kugeln” did not alter this, since it
refers to the self-evident shape of
the goods.
Although the public perceives
“Mozart” above all as a reference to
the famous composer, this does not
prevent that word from being an
indication of a descriptive character.
Victoria Bentley, Wragge & Co LLP,
victoria_bentley@wragge.com
September 2008 ITMA Review 39

PEOPLE
Killarney town is situated in County
Kerry in the south western part of
Ireland. County Kerry, known as “The
Kingdom”, provides some of the most
breathtaking views in Ireland and if
you haven’t been, put it on your list
of places to see before you die.
Queen Victoria visited Killarney in
1861 and stayed in Muckross House
which was owned by the Herbert
family. The Herberts were hoping
to receive a peerage from Queen
Victoria on her return to England.
Queen Victoria had planned the trip
six years in advance and arrived with
Albert and a 52-strong entourage
along with 100 soldiers who stayed in
Killarney town, and two fire tenders
which were parked on the front lawn
at Muckross house. Apparently her
nightdress caught fire as a child and
she therefore had a fear of fires, so
anywhere she travelled so did the
two fire tenders.
Arrangements also had to be made at
Muckross House for her
accommodation to be on the ground
floor where all her party could
communicate without the necessity
of passing through corridors. The
Herberts, after carrying out so many
alterations to the House and
spending so much money, really
depended on getting a peerage from
Queen Victoria to boost their income
so they could afford the upkeep of
Muckross House. Unfortunately for
the Herberts, Albert died shortly after
Queen Victoria returned to England
and she went in to mourning for the
rest of her years thereby forgetting
to give a peerage to the Herberts.
The Herberts eventually lost
Muckross House.
On the Tuesday evening a small
reception was hosted by ECTA in The
Brehon Hotel before the start of the
PEOPLE
ECTA 27th annual conference, Killarney
40 ITMA Review
Killarney, Co Kerry, Ireland, 18 to 21 June 2008. The title of the conference
was 40 shades of green – a tour of the IP landscape. Over three days a full
program of IP talks was delivered by experienced lawyers and trade mark
attorneys from across the world. The event was attended by over 700
members and guests who were accommodated in a number of top hotels
around Killarney town. The Brehon Hotel was the conference hotel, a
luxurious 4-star hotel just yards from the International Conference Centre
(INEC) where all the daily activities took place. Seamus Docherty reports...
conference proper welcoming
delegates. However, the majority of
delegates were mostly interested in
the European Championship and the
deplorable match between France
and Italy, which the Italians won 2-0.
The next morning I met Sandrine
Peters, ECTA legal co-ordinator, and
during our conversation she told me
that she was retiring from ECTA in
August and heading off to the Big
Apple with her family to take up a
new position. We wish her and
her family all the best in their
endeavours.
After lunch on Wendnesday the
conference started proper with a
workshop called Asia, The Other Side
of the World, chaired by Gene Kim,
Kim & Chang in Korea. The speakers
were Danny Chen, Unitalen, China;
Atsushi Aoki, Seiwa Patent & Law in
Japan and Jay Young-June Yang, Kim
& Chang in Korea. Each speaker spoke
for approximately 30 minutes with a
question-and-answer session at the
end. Danny Chen gave us an insight
into trade mark law and practice in
China, including protection for well
known trade marks, international
registrations and custom protection.
She also spoke about selecting your
mark carefully and getting the right
protection, whereby a national
application may be more
advantageous than an IR designating
China, as the latter may be difficult
to enforce. She suggested using
national registrations, particularly
if the mark is aimed at the
Chinese market.
This was followed Atsushi Aoki’s talk
on trade mark protection in Japan
and the measures used against
infringement/counterfeit discussing
the MAGLITE and COKE BOTTLE
cases. Finally the session ended with
Jay Young-June Yang advising us on
basic Korean trade mark practice and
recent case law including parallel
imports and anti-counterfeiting
measures.
In the evening there was a welcome
reception at Muckross House
Traditional Farms, where delegates
were entertained with Irish dancing,
butter and bread making, sheep
shearing, wood cutting and Murphy’s
Pipe Band, before embarking into a
marquee to seat and feed more than
700 guests. Mireia Curell, President
of ECTA, gave the opening speech
welcoming the delegates. She also
introduced the Lord Mayor of
Killarney, Michael Healy-Rae, who
told us about his love for Killarney,
calling it the most beautiful county
in Ireland.
After the speeches and the food there
was more entertainment, this time in
the form of Liam O’Connor, “the
fastest fingers in the world” accordion
player, who is in the Guinness Book of
Records for playing an astonishing
11.64 notes per second. The
entertainment and craic (Irish word
for fun) was excellent. When the
evening finished everyone was
ferried back to their respective hotels,
where people adjourned to the
bars for further entertainment.
All in all everyone had a great night.
Thursday, 19 June
The AGM took place followed by a
welcome from Norman MacLachlan,
Chairman of the Organising
Committee. He introduced Paul
Gallagher, Senior Counsel and
Attorney General of the Government
of Ireland, who thanked ECTA for its
vital role in promoting International
discourse on intellectual property
and specifically trade mark related
September 2008

matters. This was followed by a
speech by ECTA President Mireia
Curell thanking both Norman
MacLachlan and the organising
committee and Paul Gallagher for
his complimentary address.
Following this, under the title
Musings of the Bard, incoming
President Simon Reeves chaired
a panel that answered topical
questions from the. The panel
included Oliver Varhelyi, European
Commission, Head of Unit D2 Internal
Market and Services; Wubbo de Boer,
President of OHIM; and Gregoire
Bisson, Head, International
Registration System Legal Services,
WIPO. Delegates got an opportunity
to ask various questions to the panel.
The first question was from Michael
Shortt of Tomkins, who asked if
further reductions in fees at OHIM
would lead to a situation whereby
fewer applications are filed through
the national systems, overloading the
CTM system which may result in
more income for OHIM, defeating
the purpose.
Oliver Varhelyi of the European
Commission said that they were
requested to produce proposals on a
substantial fee reduction as well as a
complete review of the national and
CTM systems. He said they were
currently working on a solution but
did not think that this would result in
a drop in national filings as these two
systems must co-exist. He stated that
when the fees were reduced in 2005
the rate of national filings had not
fallen – in fact they had risen. The
object of the Commission was to
strike a balance and more time was
needed to come up with some
proposals.
Wubbo de Boer added that last year
OHIM had a 60 million surplus, with
an accumulated surplus of 350
million, something that could not be
foreseen. He said it was not fair to
trade mark owners and so it was a
good thing the Council agreed to a
further fee reduction. He said he
didn’t believe that a fee reduction
would have an impact on national
filings, as last year OHIM had nearly
90,000 trade mark applications and
national applications were 10 times
this amount. He also said that he
didn’t believe that the fee reductions
would further increase OHIM’s
surplus.
PEOPLE
Simon Reeves reiterated the question
Andreas Renck submitted on a
parallel issue, given that the large
surplus OHIM have in the bank would
it not be possible to invest some of
the money to improve, for example
the IP structure in Africa. Wubbo de
Boer answered by saying it was not
possible under the current rules.
A second question, asked by
Alexander Von Muhlendahl, Bradehle
Pagenberg, touched on the
Commission’s proposal in December
2006 to re-enact or to co-define the
trade mark directive and regulations.
He mentioned that neither ECTA nor
any other organisation was consulted
on such proposals and that they
seem to many of us to be typical
examples of useless Brussels
activities. He further stated that it
would be of no benefit whatsoever to
users, trade mark authorities, OHIM,
commentators, the courts, or to the
European Community as a whole.
His question was whether the
Commission would be prepared to
withdraw the proposals from the
agenda of the Council and wondered
if OHIM President Wubbo de Boer
would be prepared to join the
opposition to this useless exercise.
Oliver Varhelyi from the EU
Commission answered by saying that
the purpose of the exercise was to
give a full text which contained all the
amendments in which users could
rely on, as the official text of the
Directive. He said, “we believe that it
is a simplified legislative procedure”.
Wubbo de Boer said that because
he had two small children and two
mortgages he would not be joining
forces to oppose it, but that OHIM
was not consulted and he found it
unlikely that they would have
welcomed it. Alexander Von
Muhlendahl replied by saying that
it was a useless exercise and if the
Commission had of asked the users
first, they would have said No.
Alexander Von Muhlendahl repeated
his question: “Am I correct in saying
that the Commission are not
prepared to withdraw the proposal?”.
Oliver Varhelyi replied, “Yes”.
Delegates asked a number of
questions ranging from Article 151
CTMR in relation to an international
designation designating the EU and
the period of 6 to 9 months following
the republication of the mark. Other
questions related to specification
issues at WIPO and the list of
acceptable terms. Further questions
included qualification standards at
OHIM; draft directives on criminal
sanctions of IPR infringements and
regulations of border measures and
custom applications and safe guard
clause, Article 9 sexies of the Protocol.
There was also a question asked in
relation to Rule 88, parts of the file
excluded from inspection, and the
criteria in which the Examiner decides
to grant the request of keeping
confidential or not keeping
confidential parts of the files.
A question was asked regarding
representation before a European
Court of Justice and Court of First
Instance. Philip Harris, Gill Jennings &
Every, asked why OHIM persistently
argue against the CFI and ECJ
recognising trade mark and
design/patent attorney litigators as
“lawyers” under Article 19 of the
Court’s statute which he said aids
the ongoing and unnecessary court
practice of forcing clients against
their wishes to choose an alternative
representative at excessive costs?
David Tatham receiving his
award from the President,
left, and Mrs Tatham.
September 2008 ITMA Review 41

PEOPLE
Indeed, why does OHIM feel it has to
have a position on this issue at all?
Wubbo de Boer answered saying he
concurred with the sentiment of the
last part of the question. He said he
was hastened to add that he’d try
for OHIM not to have an opinion
on this or any other question or
representation.
This was a heavy but interesting
session of questions and answers
and the lunch break was certainly
welcomed.
In the afternoon there was a talk on
the topic Green with Envy. The chair
was Katerina Siotou, Law Offices
Katerina G Sitou, and the first speaker
up was Richard Hirst, AT&T UK. His
topic was global brands in the
telecommunications industry –
contentious strategies. Richard gave
us an insight into the history of AT&T
and on using a brand as a sword as
well as a shield. The second talk
was The challenges presented by
counterfeiting in the pharmaceutical
industry given by Simeon Wilson,
Director of Global Security,
AstraZeneca UK. In the afternoon the
talk was Internet in the landscape.
The topic was diverting searches,
parking domain names and other
trade mark problems that pop up
on the internet. The speakers were
Jane Ginsburg, Professor, Columbia
University, and Alain Strowel,
Covington & Burling LLP and
Professor in the Universities of
Brussels (FUSL) and Liege, Belgium.
They gave us an in-depth insight
into domain name speculation,
metatagging, cyber squatting,
cyberjacking, typosquatting, domain
name spying, domain name tasting,
domain name kiting and relevant EU
case law on metatags and the sale of
ad words as sponsored links, and the
question of whether use of these
words as “use in commerce”. The talk
was very interesting and informative
and this area of law is becoming
more commonplace.
This talk ended Thursday’s session.
That evening delegates were given a
unique dining experience in Killarney.
The organising committee had
selected a number of top restaurants
and in each delegate’s welcome pack
was an envelope with the name of
the restaurant he or she was
allocated. This was a very enjoyable
evening in a friendly and casual
PEOPLE
atmosphere meeting new friends and
renewing old acquaintances along
with enjoying gourmet food at its
best. The meeting point for
everybody after dinner was Scott’s
Bar and Courtyard where delegates
were entertained by live music in
the courtyard.
The weather was pleasant in the
evening and the delegates enjoyed
pints of Guinness and listening to a
live band playing traditional Irish
music. Following this, some
delegates, including myself,
converged on a local hostelry next
door for more refreshments. Not
realising the time, when we decided
to leave (and there was still about 100
people on the premises at this stage)
we were locked in with the locals.
This was an Irish “lock in”. We had to
ask the owner to let us out the side
door once the coast was clear.
Everyone ventured home. The
owner said “bring your friends back
tomorrow night and I’ll look after
them – I’ll know them from the ECTA
badges”. This was Irish hospitality at
its best.
Friday, 20 June
This kicked off with There are two
sides to every story, chaired by
Michael Kiernan from Tomkins and
President of the Irish Association of
Patent and Trade Mark Attorneys.
The panel was Jeremy Pennant, D
Young & Co; Douglas R Bush, Arent
Fox, US; and Ellen Gevers, with
Knijff Trademark Attorneys, The
Netherlands. In this session they
discussed how to show that a trade
mark is distinctive. Confusion – what
evidence is required? Reputation and
dilution, the role of survey evidence,
and the do’s and don’ts for surveys
qwew all discussed. They went over
such cases as Chiemsee and survey
evidence, EUROCOOL/COMPANYLINE
and the problems with CFI and ECJ
judgments including acquired
distinctiveness in the USA, and the
likelihood of confusion in the EU.
This was a very interesting discussion
and very informative.
The next talk was The road out is the
shortest road home chaired by Mark
Engelman, Barrister, Hardwicke
Building, UK. The speakers were Ulla
Wennermark, Member of the First
Board of Appeal, OHIM, who spoke
about distinctiveness, descriptiveness
and deceptiveness; and Vincent
O’Reilly, Director of the Department
for IP Policy at OHIM, whose topic
was “opposition and cancellation
proceedings before OHIM: similarities
and differences”.
The final session of the afternoon
was one worth waiting for under
the heading Patience can conquer
destiny. This was chaired by Joao
Pereira da Cruz, J Pereira da Cruz SA
in Portugal and the topic was EU
case law. The speakers were Arnaud
Folliard, Industrial Property Litigation
Unit, OHIM; Jaap Spoor, Professor
of Intellectual Property Law – VU
University, Amsterdam; and Advocate
and Rt Hon. Lord Justice Robin Jacob.
They reviewed EU case law from
different prospectives. Following
that, Arnaud Folliard and Robin Jacob
got into a contentious debate over
comparative advertising which was
very good viewing for the audience.
Killarney was a place dear to Sir
Robin Jacobs’ heart, as he told me
afterwards that it was his second visit
to the region, the first been his
honeymoon in 1967.
The conference ended with the gala
dinner in the INEC, which had been
transformed beyond recognition for
the gala dinner showcase. It began
with a cocktail reception followed
by dinner and an evening of
entertainment which was second to
none. Mireia Currell again addressed
the delegates and reminisced on her
time as president as she passed over
the reins to the incoming president
Simon Reeves. Presentations of
certificates of honorary membership
of the ECTA Association was given
posthumously to Dr Robert Freitag,
in Germany, which was accepted
on behalf by his son Raphael
accompanied by Robert Freitag’s
widow Syliva, and to David Tatham,
both past presidents of ECTA.
Presentations were also given to
the retiring president Mireia Currell
and to Sandrine Peters and to the
members of the ECTA organising
committee, and to the head of the
local organising company Destination
Killarney, Breffni Ingerton. Following
the meal there was music and
dancing which brought an end
to a wonderful conference in a
wonderful location.
Seamus Doherty, Cruickshank
Intellectual Property Attorneys,
sdoherty@cruickshank.ie
42 ITMA Review September 2008

September 2008
PEOPLE
Michael Heap is appointed Chairman of IPREG
The President of the Institute of
Trade Mark Attorneys (ITMA) and the
President of the Chartered Institute
of Patent Attorneys (CIPA) have
announced the appointment of
Michael Heap as Chairman of the
Intellectual Property Regulation
Board (IPREG). IPREG is the body set
to regulate the two professions of
trade mark and patent attorneys on
behalf of the two Institutes.
Michael Heap said that he was
delighted to be appointed. It was a
unique appointment because unlike
other regulators which have been set
up following the Legal Services Act,
he would have responsibility for two
professions, both with a long and
distinguished history as well a vital
role in industry and commerce. He
looked forward to the challenge.
Gillian Deas, President of the
Institute of Trade Mark Attorneys,
said: “I welcome Michael Heap’s
appointment and look forward to
working with him to ensure the
independent and proportionate
regulation of the professions.”
David Bradley, President of the
Chartered Institute of Patent
Attorneys said, “I also welcome
Michael Heap’s appointment. He
will bring to bear the independence
of someone from outside the
professions but with some very
relevant knowledge and experience
of regulation as well as organizational
change which will stand him and us
in good stead.”
Michael’s background is in the justice
system and professional regulation.
He qualified as a barrister in 1975 and
holds an MBA. He served as a justice’s
clerk and chief executive in South
Wales before taking up the post of
Chief Executive of the Greater London
Courts Authority. His experience
encompasses organisational
development, a number of regulatory
enquiries and he was Director of
Development at the Independent
Police Complaints Commission.
Who’s who in ITMA
Officers:
President: Gillian Deas, gmd@dyoung.co.uk
First Vice President: Maggie Ramage, maggie@ramage.co.uk
Second Vice President: Catherine Wolfe, wolfe.itma@pagewhite.com
Immediate Past President: Philip Harris, pwh-tma@gje.co.uk
Treasurer: Chris McLeod, chris.mcleod@hammonds.com
Secretary and Registrar: Margaret Tyler MBE, margaret@itma.org.uk
Committee Chairmen:
Continuing Professional Development: David Butler, david.c.butler@gsk.com
Designs: Imogen Wiseman, imogen.wiseman@fjcleveland.co.uk
Professional Guidance & Disciplinary: Don Turner, dturner@beresfordpatents.co.uk
Education & Training: Robert Furneaux, rfurneaux@ip.com
Formalities Course: Tom Farrand, tomfarrand@ip21.co.uk
General Purposes & Finance: Alice Mastrovito, alice@mastrovito.com
ITMA Review: Tania Clark, tclark@withersrogers.com
Laws & Practice: Stephen James, sjames@jenkins.eu
Membership: Clare Jackman, clare.jackman@bondpearce.com
Programme: Linda Bray, linda@wildbore.co.uk
Public Relations: Tom Farrand, tomfarrand@ip21.co.uk
Administration:
Gillian Rogers, gillian@itma.org.uk
Joy Dublin, joy@itma.org.uk
Valerie Rice, val@itma.org.uk
Jane Attreed, jane@itma.org.uk
Geraldine Flood, geraldine@itma.org.uk
Public Relations Manager: Ken Storey, ken.storey@btinternet.com
Editor, ITMA Review: Kelly Robson, kellyrobson@btinternet.com
STUDENT
COLUMN
Forms now
available
The summer is upon us and so
thoughts naturally turn to revision.
Past papers and examiners’
comments for 2007 and now
available on the JEB website.
The 2008 examination application
form is also available and the
deadline is 5 September 2008. If
you would like to join or set up
a study group in your area,
please forward your details to
itmastudentreps@hotmail.co.uk.
You should all have received a
copy of the Draft Consolation
Paper from ITMA in relation to the
education changes. If you have any
comments please let us know or,
even better, please submit a
response to ITMA.
From now on there will be
one common source for the
information for the T5 paper, the
Sweet & Maxwell World Trade
Mark Law publication. If any
students have difficulty gaining
access to this please would they
let us know as soon as possible.
Charlotte Duly (Boult Wade
Tennant) & Ruth Bond (EMI).
itmastudentreps@hotmail.co.uk
The ITMA Summer Reception
at the Westminister Boating Base
in July provided lots of good
photographs which will appear
in the October issue, to remind
you of a lovely summer evening.
Albert W Salomone
It is with great sorrow that we
announce the passing away of
former ITMA member Albert W
Salomone, the senior partner
at Salomone, Sansone & Co,
Valetta, Malta.
ITMA Review 43

AND FINALLY...
Runners’ corner...
As reported in the June 2008 issue of the Review,
Chris McLeod was taking part in the Great Capital
Run which he mistakenly said was due to take place
on Sunday, 28 July 2008. Eagle-eyed or underemployed
readers will have spotted that there is no
such day. Was he therefore seeking money under
false pretences to pay for his new kitchen? No, he is
just unable to use a calendar properly (but don't tell
his clients). Anyway, the run did take place on the
real date of Sunday, 20 July 2008.
Chris was just pipped at the post and finished in
2,859th place with a personal best time of 54
minutes and 32 seconds which he is claiming is
respectable for a man of his mental age. He raised
about £900 for CRISIS so a very big thanks to all
those who sponsored him. For anyone who forgot
or otherwise wants to sponsor Chris, they can still
do so at http://www.justgiving.com/chrismcleod.
The photo shows Chris about 40 metres from the
finishing line.
Formalities
exam 2008
results
AND FINALLY...
FORTHCOMING EVENTS 2008
10 September Evening Meeting (5.30) The future of IP (2 ITMA CPD Points) BATmark, 4 Temple Place
Ian Fletcher, CEO UK-IPO
16 September Evening Meeting: ECJ & CFI Update Royal College of Surgeons
(2 ITMA CPD Points) (1 Law Society Hour) (1 Bar Council Hour) Cathy Ayers
16-19 September Marques conference Noordwijk, The Netherlands
24 September INTA/WIPO International Forum on Trade Marks and Radisson SAS Royal Hotel, Brussels
Industrial Designs (6 ITMA CPD Points)
25 – 26 September ITMA Autumn Conference (9 ITMA CPD Points) Alicante
1 – 4 October PTMG (9 ITMA CPD Points) Istanbul
7 October IP Bar reception Unilever, Unilever House
28 October Evening Meeting: OHIM Decisions Royal College of Surgeons
(2 ITMA CPD Points) (1 Law Society Hour) (1 Bar Council Hour) Rowena Powell
30 October IPAG Conference (2 ITMA CPD Points) The Guoman Tower, St Katherine’s Way,
London
12 - 15 November INTA Leadership Meeting (By invitation only) Boca Raton, Florida
25 November Evening Meeting: Licensing tbc Royal College of Surgeons
(2 ITMA CPD Points) (1 Law Society Hour) (1 Bar Council Hour) Simon Chalkley
9 December ITMA Christmas Lunch Royal Lancaster Hotel
More details can be found at www.itma.org.uk. Bold type indicates an ITMA organised event.
44 ITMA Review
The following
candidates were
successful in the
Institute of Trade
Mark Attorneys’
Formalities Exam
held in June, 2008:
Doris Akufo-Addo
José A Cabanillas
Christine Candler
Louise Coey
David Colman
Marilyn Dalton
Annabel Hanratty
Sarah Hayward
Charley Kavanagh
Julie Kinch
Vanessa Martin
Melanie Mitchell
Joanna Moone
John Nelhams
Emma Norris
Fiona Phillips
Lydia Roberton
Simon Rogers
Joanna Speak
Anna Szymczak
Andra Tarling
Johanna van
Doremalen
Nicola Wood
Wendy Woolmore
September 2008