ITMA Lisbon 2009: a guide for delegates

The Journal of The Institute of Trade Mark Attorneys 

ITMA Lisbon 2009: 

a guide for delegates 

Countdown to regulation: an update on the set-up 

of IPReg and the changes to regulation ahead 

Joint response to the Legal Services Board 

consultation on the levy 

Legal Services Board – consultation on 

Regulatory Independence 

Company Names Tribunal update 

eBay: how much liability for infringements rests 

with the service provider? 

ADR – a dream or reality? 

Issue no. 367 July/August 2009

CONTENTS 

Public relations 

Facebook’s new challenge 

for trade mark owners 2 

ITMA business 

The Intellectual Property Education Trust 3 

Unofficial trade mark registration 

services and other unsolicited offers 4 

Countdown to regulation: an update 

on the set-up of IPReg and the 

changes to regulation ahead 5 

Legal Services Board – consultation 

on Regulatory Independence 10 

Joint response to the Legal Services 

Board consultation on the levy 14 

Newly elected members, May 2009 15 

Features 

Company Names Tribunal update 16 

eBay: how much liability for infringements 

rests with the service provider? 18 

ADR – a dream or reality? 22 

ITMA Lisbon 2009 25 

Facebook: guidance for trademark 

owners 29 

Case comment 

Single letter trade mark can be 

registered says CFI 30 

Wheels fall off Daimler v Sany claim 31 

Milko or Milka? - it’s all Greek to the CFI 32 

CFI fails to find anything distinctive 

in cyber marks 33 

Advocate General clarifies ownership of 

design rights in commissioned works 35 

Appeal succeeds as common usage of 

‘Forex’ was ignored by hearing officer 37 

The importance of maintaining your 

national registrations alongside CTMs 38 

Last Minute: distinction between 

infringement and passing off 39 

Bad faith... another round in the 

ongoing Lindt chocolate bunnies saga 41 

CFI pays tribute to statement of reasons 43 

Use of maple leaf leads to registration 

problem for American Clothing mark 44 

A case of conceptual and phonetic 

similarity, technically speaking 46 

Proof of genuine prior use is essential to 

successful opposition of registration 47 

International 

Malaysia: McCurry thwarts McDonalds 

juggernaut at the Court of Appeal 49 

Chinese update: problems of bad faith 

registrations and piracy hard to tackle 50 

People 

Trade mark of the month 51 

Who’s who in ITMA 51 

And finally... 

News of members 52 

Forthcoming events 2009 52 

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 

© 2009 

PUBLIC RELATIONS 


Facebook’s new challenge 

for trade mark owners 

Media watch 

The main issue covered in the 

media over the last few weeks has 

concerned the decision of Facebook 

to allow users to register personal 

URLs for their Facebook pages. 

Managing Intellectual Property 

quoted Associate Member Nick Wood 

of Com Laude as saying “This is great 

for users but people will register, as 

they have done with Twitter, trade 

marks belonging to other people.” 

ITMA member Campbell Newell of 

Marks and Clerk, Edinburgh, was 

quoted in the Glasgow Chamber of 

Commerce magazine as urging 

Scottish brand owners to act now to 

prevent future problems, and went 

on to say that “There are some checks 

and balances in the system for brand 

owners but companies must move 

quickly to address the issue.” ITMA’s 

PR Committee Chairman Tom Farrand 

was also quoted in the journal of the 

British Computer Society as saying 

that “businesses and individuals 

do not need to worry about the 

possibility of other people cyber 

squatting... as Facebook has already 

taken steps to protect intellectual 

property.” This story will run and run, 

especially when disputes become 

public (see article on page 29). 

Sticking with Scotland, the Glasgow 

Herald reported the decision of the 

Supreme Court of Canada to allow 

Glenora Distillers International of 

Nova Scotia to call its whisky Glen 

Breton Rare, despite the objections 

of the Scotch Whisky Association 

who sought to protect the use of the 

name GLEN for whisky only made in 

Scotland. Apparently the ruling only 

holds for Canada so there are likely 

to be further legal cases as Glenora 

Distillers try to sell the Glen Breton 

Rare in other countries. 

With the holiday season in full swing, 

I thought I would conclude the media 

watch with an airline story. This one 

was picked up by the media oracle 

Press Gazette which reported that 

British Airways had stopped a small 

lifestyle magazine in Lancashire from 

calling itself Highlife as it contravened 

BAs Highlife trade mark for printed 

publications. Most journalists read 

Press Gazette and every few months 

or so there is an article warning 

journalists about trade mark 

infringement. It just goes to show 

how hard it is to get the message of IP 

across to the media and explains why, 

despite efforts from ourselves, the IPO 

and other IP organisations, so many 

journalists still refer to trade marks as 

patents and vice versa! 

On a more upbeat note, it is good to 

report that our President, Gillian Deas, 

was quoted “exclusively” in an article 

in the World Trademark Review on the 

new Regulatory Regime and IPReg as 

saying she hoped that independent 

regulation will give 

UK trade mark attorneys the edge 

against competitors from other EU 

jurisdictions. There was a good deal 

more in the article but you can read 

all about developments on IPReg in 

the Chief Executive’s report (page 5). 

ITMA’s 75th Birthday – 24 November 

2009 

I make no apology for repeating the 

date of our celebratory event. Such is 

the importance of this landmark that 

the ITMA Council has set aside the 

sum of £15,000 so that all categories 

of ITMA membership can have free 

entry to the party to be held in the 

Edward Lumley Hall of the Royal 

College of Surgeons, 35-43 Lincoln’s 

Inn Fields, London between 6.00 and 

8.00 pm. Canapés and wine will be 

2 ITMA Review July/August 2009

flowing freely in conjunction with 

InBev’s bottles of Bass Beer carrying 

the No 1 trade mark red triangle. We 

will be asking members to apply for 

tickets via flyers early in the early 

autumn and we hope that as many 

as possible will attend. There is a 

maximum of 400 so we will be urging 

early applications. Guests will also be 

welcome. For those who are not 

members of our august Institute the 

charge will be a mere £40 inclusive of 

VAT, so please tell your friends to put 

24 November in their diaries – NOW! 

As I reported in June, Trademark 

World is producing a commemorative 

Supplement and is inviting members 

to augment the supplement with 

advertisements. I gather there was a 

hiccup with Trademark World’s initial 

invitation but I hope that won’t put 

firms off from supporting it. 

Design Week 

ITMA has sponsored the Design Week 

Awards for several years, including 

2009. While it has been an interesting 

exercise in promoting the Institute to 

the design community, some 

concerns have been expressed 

about the value for money and return 

on the £10,000 or so that it costs 

annually. We have, therefore 

decided to try an alternative tack of 

advertising in Design Week’s online 

production. The budget has been 

halved but, unlike with many aspects 

of PR, this can be easily measured by 

the number of hits our own website 

gets through this medium. We can 

always return to sponsorship, or 

July/August 2009 


indeed try something else at a future 

date if this does not prove fruitful but 

it is worth persevering with Design 

Week as a continuing dialogue with 

the design community is an 

important part of the Institute’s PR 

and Communications strategy. 

Business Advice Open Days 

The final events of the ‘summer 

season’ of exhibitions concluded in 

Cornwall, Glasgow and Swansea. My 

thanks go to Clare Jackman of Bond 

Pearce for her help at what proved 

to be an exceptionally busy event 

in Saltash, Cornwall. One very 

interesting feature there was the 

depth of feeling for the locality and 

for locally sourced information and 

advice. They are so insular in many 

ways that it shouldn’t have been a 

surprise to find out that they charge 

you £1 to cross the Tamar Bridge back 

into Devon - but it was! It’s a bit like 

going to Newport – except they 

charge you for going in but allow you 

to escape free! As the Glasgow and 

Swansea events follow the deadline 

for writing this, I cannot report on the 

turnout but my thanks in advance are 

due to Alasdair Hume of Ancient 

Hume Limited and Michelle Ward of 

UDL for their help. 

It only remains for me to wish you 

all a relaxing and enjoyable summer 

recess and look forward to seeing 

many of you at the International 

Meeting in Lisbon in September. 

Ken Storey, PR Manager, 

ken.storey@btinternet.com 

Once a darling of the internet, Facebook has recently incurred criticism and resentment due to 

its ‘Big Brother’ policies and lack of respect for IP concerns. This cartoon (not fully credited unfortunately) 

is just one of many posted on blogs or published around the world. 

The Intellectual 

Property 

Education Trust 

Registered Charity 1052500 

The Trustees of IPET met on 14 May 

2009 in order to consider the 15 

applications which had been 

submitted in response to the notices 

at 71 CIPA January 2009 and 38 ITMA 

Review January/February 2009 

advertising their intention to make 

a closing award with the residual 

funds in the Trust. 

All the applications had much to 

commend them but, after a long 

discussion in which they were 

examined in detail, the Trustees have 

made awards to three of the 

applicants, namely: 

• The Institute of Brand and 

Innovation Law (IBIL) at University 

College London (UCL), 

• The Museum of Brands, Packaging 

& Advertising, and 

• The Intellectual Property 

Awareness Network (IPAN). 

Following these closing awards, the 

Trust is now being wound up. The 

Trustees would like to thank all the 

applicants for their submissions, and 

also all those who have helped the 

Trust over the years to achieve its 

aspirations. The Trustees have no 

doubt that over its 15 years of 

existence the Trust has done much 

to help improve the standards of 

education, training and research in 

intellectual property. 

RC Abnett OBE, Chairman 

ITMA Review contributors 

1. To join the mailing list to submit 

case notes for the ITMA Review, 

email the Chair, Tania Clark, on 

tclark@withersrogers.com. 

2. To avoid duplication please email 

Tania Clark in advance before 

sending any case notes. 

3. The copy deadline for all 

contributions for publication in 

the following month’s issue is 

normally the 12th of each month 

or the following working day. 

4. Please include your photograph, 

unless we already have it, and 

examples of any device marks 

referred to in the case notes, 

whenever possible separately 

and in high-resolution. 

ITMA Review 3

ITMA BUSINESS 

NEWS RELEASE: 29 June 2009 

The Institute of Trade Mark 

Attorneys (ITMA) wishes to 

bring to the attention of all 

trade mark holders, whether 

registrants through private 

application or through 

registered trade mark 

attorneys, that we are receiving 

an increasing volume of 

correspondence about 

unofficial trade mark 

registration services and 

unsolicited offers of 

registration. 

Advice and guidance can be 

found on the websites of the key 

registration authorities; the IPO – 

Intellectual Property Office, which 

maintains the register of UK trade 

marks; OHIM – the authority 

maintaining Community Trade Mark 

registrations and WIPO – the World 

Intellectual Property Office, which is 

instrumental in worldwide 

registration of trade marks. 

Gillian Deas, President of ITMA, said, 

“Anyone receiving unsolicited mail 

about registration of trade marks 

should seek advice either from the 

appropriate authority or from 

registered trade mark attorneys, and 

in particular members of ITMA. A list 

of all ITMA members is available on 

the ITMA website at www.itma.org.uk 

and members can be found from the 

home page by a post code or county 

search. 

“For the avoidance of doubt, the 

Institute is not aware that there is 

anything illegal about these letters or 

the activities in question. However, 


Unofficial trade mark 

registration services and 

other unsolicited offers 

many of the ‘registers’, for entry onto 

which these letters invite companies 

and individuals to pay a fee, have no 

legal effect. Indeed, this is often 

made abundantly clear in the relevant 

terms and conditions. 

“It is also worth distinguishing the 

unofficial ‘registers’ from unsolicited 

offers of registration, such as those 

offered by Community Trade Mark 

Filing Service/CTMFS. This company 

will, for a fee, prepare a CTM 

application based on the details of 

a corresponding UK application or 

registration but will not file the 

application or pay any official fees. 

If in any doubt get in touch with a 

trade mark attorney who will be only 

too happy to advise. 

“We are reproducing the advice 

below on each of the main authority 

websites, bringing together, for the 

first time, all advice this matter. 

The IPO website has the following 

warning on its website at: 

http://www.ipo.gov.uk/types/tm/tapplying/t-after/t-unsolicited.htm 

“Warning: Unsolicited mail about 

unofficial registration services 

We are aware that some companies 

and individuals are sending out 

unsolicited mail to applicants and 

owners of UK patents, designs and 

trade marks inviting them to apply for 

entry in various (sometimes official 

sounding) publications and 

“registers” in return for payment of 

a fee. These parties tend to make 

their offers in the form of invoices, 

which are usually sent out after the 

publication of the official UK patent, 

design, or trade mark application. You 

should be aware that these 

companies are not linked to any 

Government or Community 

Institution and there is no obligation 

to pay them. 

The only offices that are able to 

provide legal protection for patents, 

designs and trade marks in the UK are 

the Intellectual Property Office itself, 

the European Patent Office and the 

Community Trade Mark Office (more 

formally known as the Office for 

Harmonisation in the Internal 

Market - OHIM).” 

The Community Trade Mark 

Office has examples of invoices 

and the following message at 

http://oami.europa.eu/ows/rw/pages/ 

CTM/feesPayment/warning.en.do 

“Potentially misleading 

information/trade mark “registers” 

of a non-official nature” 

An increasing number of OHIM users 

are receiving unsolicited mail from 

unofficial registration services asking 

for money in connection with 

Community Trade Marks and 

Registered Community Designs. If 

you receive a letter or invoice please 

check carefully what is being offered 

to you and whether it comes from an 

official source. If you have any doubt, 

please check with your legal advisors 

or contact us at +34 96 513 9100.” 

WIPO also has a brief general notice 

on its website at the following 

location: 

http://www.wipo.int/madrid/en/ 

index.html 

“Warning 

On several occasions, the attention 

of the International Bureau has 

been drawn to the fact that certain 

organizations are sending letters 

to the owners of international 

registrations, inviting them to register 

their marks in publications which 

appear to be of an official nature. 

The International Bureau warns the 

owners of international registrations 

and their agents that such a 

publication has absolutely no legal 

effect in regard to the protection of 

the said marks and is therefore 

unnecessary.” 

Ken Storey, PR Manager, 



IPReg Board 

The IPReg Board (made up of the 

Trade Mark Regulation Board and the 

Patent Regulation Board) is now in its 

substantive form and is no longer 

operating as a shadow board. All the 

Board members have been appointed 

and it is therefore running with a full 

complement of members: Three 

Trade Mark Attorney professionals, 

three Patent Attorney professionals, 

three Lay members and the Lay Chair. 

The biographical details of the IPReg 

Board members are below. 

CHAIRMAN 

Michael Heap 

Michael Heap is the Chairman of the 

newly created Intellectual Property 

Regulation Board, which was set up to 



Countdown to regulation: 

an update on the set-up 

of IPReg and the changes 

to regulation ahead 

The last update on the development and 

progress of IPReg (Intellectual Property 

Regulation Board) was in the April 

edition of the ITMA Review. A lot has 

continued to happen since then and this 

article is aimed at bringing the Trade 

Mark Attorney profession and those with 

an interest in the regulatory changes up 

to speed with all the developments .The 

separation by ITMA of its regulatory 

Keven Bader 

function from its representational role is 

a major change and we are working hard to ensure that for the 

ITMA members, this is conducted as efficiently and cost effetively 

as possible to ensure that the benefits are achieved and 

recognised by all. Keven Bader reports. 

allow Patent and Trade Mark 

Attorneys to perform their functions 

under the Legal Services Act. 

Prior to this Michael was Director of 

Development with the Independent 

Police Complaints Commission being 

responsible for the regulatory and 

financial expansion of the jurisdiction 

of the Commission into the work of 

the Serious and Organised Crime 

Agency and HMRC. 

Michael is a barrister (non 

practising) who had a career in the 

administration of Courts culminating 

in being Chief Executive to the 

London Courts Authority until 2005. 

Michael maintains his interim 

management practice and his 

outside interests include, cooking, 

photography and (still) motorcycling. 

LAY MEMBERS 

Roaslind Burford 

Rosalind began her professional 

life in academia. She did 

postgraduate work in International 

Relations at the University of London 

where she joined the Institute of 

Commonwealth Studies as a research 

fellow. She subsequently developed 

an interest in education policy while 

working as a lecturer. This led to a 

position as a University of Cambridge 

Chief Examiner where she worked on 

new modes of assessment for global 

examinations. 

In mid career Rosalind joined the 

overseas career service of the British 

Council, serving in 12 countries 

over 20 years – in several countries 

as a Country Director and often 

on diplomatic postings. She was 

particularly drawn to working in 

countries undergoing rapid transition. 

These included Poland and the Czech 

Republic (with spells in Bulgaria and 

the former Yugoslavia) immediately 

after the fall of Communism. 

There her main focus was on UK 

government initiatives to support 

eventual EU accession - especially 

new educational policies and 

structures to replace rejected 

Soviet models. 

Work in transitional countries in Asia 

such as Indonesia, Korea and China 

included, in a diverse portfolio, 

working with the then DTI to promote 

UK Creative Industries and address 

related intellectual property issues. 

As Head of Education for the British 

Council in China she worked with the 

UK Higher Education Funding Council 

to initiate UK¬ training programmes 

for Chinese university vice 

chancellors. She was also responsible 

for introducing UK NVQs into China 

providing millions of Chinese workers 

with internationally validated 

qualifications. Elsewhere, as Director 

in post war Sierra Leone she was 

responsible for developing 

infrastructure for a £10m DfID project 

to rebuild the country’s justice and 

security systems. Since retiring 

Rosalind has continued in public 

service as a lay member for the 

General Teaching Council and as 

a college governor. 



Daniel Keenan 

Danny Keenan is a consultant 

cardiothoracic surgeon to the 

Manchester Royal Infirmary, part of 

the Central Manchester Foundation 

Trust, and National Clinical Advisor 

to the Care Quality Commission. 

Surgically he has a very busy cardiac 

surgical practice and is co-principal 

investigator within the cardiovascular 

research group in the University of 

Manchester. 

He has experience in developing, 

leading and modernising services, 

with extensive clinical and 

management experience in the NHS. 

The use of information to support the 

provision of high quality services, the 

development of clinical governance, 

standards and patient involvement 

and the development of new services 

harnessing the multidisciplinary team 

and streamlining of the patient 

pathway have been his particular 

strengths. 

He was appointed as National 

Clinical Advisor to the Healthcare 

Commission in 2005 and 

subsequently the Care Quality 

Commission. He advises on a whole 

spectrum of clinical activities and 

provides a focal point for clinical 

advice and expertise within the 

Commission, including leadership 

for the organisation’s clinical staff. 

He links with the National Institute 

for Health and Clinical Excellence in 

relation to the implementation of 

guidance. 

He is a member of the National 

Clinical Audit Advisory Group and 

represents the Commission on the 

Advisory Board of the National 

Institute for Health Research. 

Philip Portwood 

Philip Portwood was an East Acton 

Councillor for over twenty one years, 

being elected in six successive 

elections. He is a lifelong resident of 

East Acton, where his family have 

lived since the 1880s. Philip is now a 

Non-Executive Director of the Ealing 

NHS Primary Care Trust. 

PROFESSIONAL 

MEMBERS 

Bruce Alexander 

Bruce is a Chartered and European 

6 ITMA Review 


Patent Attorney and a European 

Patent Agent Litigator. He has been a 

partner since 1981 in the Engineering 

and Designs Group. 

Bruce has special expertise advising 

domestic and international clients on 

worldwide protection for their ideas, 

particularly in relation to licensing 

developments and questions of 

infringement. He has a wide ranging 

engineering background with 

particular knowledge in the fields of 

air compressors and medical delivery 

devices. He also has substantial 

experience in the filing and 

prosecution of registered design 

applications and led a successful 

appeal on behalf of Iveco-Fiat in the 

landmark 1993 “Spare Parts” design 

case concerning the Ford and Iveco- 

Fiat design applications. 

Bruce has a MA (Cantab) from 

Cambridge University. He has served 

as the President of the Chartered 

Institute of Patent Attorneys (CIPA) 

and is a member of the European 

Community Trade Mark Association. 

He is also an associate member of the 

Institution of Mechanical Engineers 

and of the Licensing Executives 

Society. 

Ian Buchan 

Ian Buchan, partner Potter-Clarkson’s 

in Trademark Department and 

member of the Board of 

Management, retired at the end of 

December 2007 after 16 years with 

the firm. Ian continues to act as a 

consultant. 

Nicholas Fox 

Nicholas is a British and European 

Patent Attorney and IP litigator 

specialising in computer-related 

inventions. He qualified as a barrister 

and is also admitted to the bar in 

New York State. 

This background enables him to 

represent clients from initial advice 

through to litigation. He recently 

successfully represented five hightech 

British companies before the 

High Court (including as advocate), 

prompting a change of UKIPO policy 

towards claims involving 

computer/software inventions. 

He is author of the book A Guide 

to the EPC 2000 and a frequent 

contributor to legal journals on IP 

issues, and lectures at the European 

Patent Academy and Queen Mary, 

University of London. 

In his spare time, Nicholas is a 

ballroom dancing enthusiast, student 

of Japanese and an avid reader of 

history. 

Philip Harris 

Philip is a Registered Trade Mark 

Attorney, a Certified Trade Mark & 

Design Litigator and a solicitor. He has 

worked in-house, in firms of solicitors 

and since 1996 he has been a Trade 

Mark Partner in Gill Jennings & Every 

LLP, a London-based firm of European 

Patent & Trade Mark Attorneys. 

Although he handles all aspects of 

trade mark work, Philip specialises in 

complex contentious matters, in 

particular opposition and cancellation 

work before UKIPO and OHIM. 

Before joining IPREG, Philip held 

numerous posts in ITMA culminating 

in the Presidency from 2006-8. Coopted 

to Council in 1996 he prepared 

the report which led to the Institute’s 

introduction of CPD. Subsequently 

he restructured the Institute’s 

disciplinary rules and practices. First 

as Vice President and then as 

President, he took a lead role in 

responding to the Clementi Review 

and in developing the Institute’s 

response to and policy concerning 

what became the Legal Services Act 

2007, including the original design 

of IPREG. During the passage of the 

Tribunals, Courts and Enforcement 

Act 2007 Philip and Mike Harrison, the 

then CIPA President, worked closely 

together to secure the extension of 

judicial eligibility to Registered Trade 

Mark and Patent Attorneys. Philip also 

instigated reforms of the Institute’s 

Litigation Regulation and 

qualification regime. 

He lives with his family in Lincolnshire 

where, as an antidote to the calm of 

the countryside, he plays bass guitar, 

mandolin and banjo in a Celtic rock 

group. 

Penelope Nicholls 

Penelope Nicholls is a Partner in D 

Young & Co., registered Patent and 

Trade Mark Attorneys and has 

experience in private practice since 

1979. She specialises in trade mark 

protection and has substantial 

July/August 2009

experience in advising a broad range 

of clients, from multinationals to small 

businesses, acting as an Authorised 

Representative before the IPO and 

Community Trade Mark Office. 

She is a contributor to The Trade Mark 

Handbook and was a member of 

ITMA’s governing body from 1986 – 

1991. She has a particular interest in 

aspects of training and development 

for members of the profession and 

has been an Examiner for ITMA as 

well as a founder member of the 

Joint Education Board (JEB). 

In her spare time, she plays the piano 

and enjoys walking and opera. 

Steve Smith 

Steve is a practicing UK and European 

patent attorney with substantial 

experience in industry (ICI, Zeneca, 

AstraZeneca) and, for the past 8 years, 

as a sole practitioner consulting 

on pharmaceutical technologies 

to a range of European and UK 

companies. He is Managing Director 

of NuPharm Intellectual Property, a 

company he set up in 2001 to provide 

IP consultancy services when he 

retired from AstraZeneca plc where 

he was Global Head of Patents. 

He is a member of the Board of the 

Intellectual Property Institute and 

was a member of the Constitutional 

Affairs Committee of CIPA until 

his appointment to the Patent 

Regulation and IP Regulation Boards. 

He continues to be actively associated 

with pharmaceutical industry IP 

organisations such as INTERPAT, for 

which he is the Director of Secretariat, 

and has lectured frequently on 

various aspects of pharmaceutical 

patent practice. He is a strong 

supporter of promoting better 

understanding of the value of IP to 

society in general and acts (on a 

pro bono basis) as the webmaster 

for the IP Awareness Network – 

www.ipaware.net - for which he 

represents the Association of the 

British Pharmaceutical Industry. 

His career began with ICI 

Pharmaceuticals (the predecessor of 

Zeneca Pharmaceuticals) in 1964, 

where he worked first as a Medicinal 

Chemist before moving to Patents in 

1974. He subsequently became IP 

Manager for the Zeneca Group (which 

then included crop protection and 


specialty chemicals as well as 

pharmaceuticals) prior to the merger 

of Astra and Zeneca to form 

AstraZeneca plc. He now acts as an 

independent IP consultant to both 

large and medium sized pharma 

companies, mainly in Europe. 

Steve is a Chartered Patent Attorney 

and European Patent Attorney. He is 

also a Chartered Chemist, with a BSc 

(Honours) degree from the University 

of Nottingham and a doctorate in 

organic chemistry from the University 

of Sussex. He lives in Cheshire with 

his wife Gill he helps run a small 

equestrian establishment. 

OBSERVERS 

ITMA and CIPA in their 

representational role have observer 

status on the IPReg Board. Currently 

the observers are: 

Keven Bader – ITMA Chief Executive 

Gill Deas – ITMA President 

Kate O’Rourke – Chair of the ITMA 

IPReg Committee 

Dave Bradley – CIPA Past-President 

Mick Ralph – CIPA Secretary / Registrar 

IPReg committees 

As the Board members have all been 

appointed, IPReg have set up three 

committees to handle the main 

business falling to IPReg in this set 

up phase and the work of IPReg in its 

normal day to day operation. Below 

are the committees and the Trade 

Mark Attorney, Patent Attorney and 

Lay members of the Board appointed 

to those committees. 

• Qualification, Education and CPD 

(Penny Nichols, Steve Smith, 

Rosalind Burford) 

• Code of Conduct / Disciplinary 

Matters (Phil Harris, Nicholas Fox, 

Philip Portwood) 

• External Matters and Internal 

Governance (Ian Buchan, Bruce 

Alexander, Daniel Keenan) 

These Committees are already in 

touch with their opposite numbers in 

the Institutes, the JEB and the 

Business Practice Committee so that 

they can get up to speed with the 

issues that are currently live. 

Consultations 

IPReg has issued a number of 

documents for consultation over 

recent months, all of which have 

been placed on the ITMA and IPReg 

websites to invite comments. The 

documents that have been / are out 

for consultation include: 

• Continuing Professional 

Development Regulations 

(closed 8 May 2009) 

• Individual Qualification 

Regulations (closed 8 May 2009) 

• Proposed Structure of the new 

Practice Fees (closed 30 June 

2009) 

• Character Assessment 

(closes 31 July 2009) 

• Disciplinary procedures 

(closes 31 July 2009) 

These consultation documents are 

important, as they outline the single 

framework that will be in place for the 

regulation of the two professions 

under the joint working 

arrangements between ITMA and 

CIPA, both of whom are Approved 

Regulators under the Legal Services 

Act. In a number of areas this 

framework means changes which 

will directly effect all Attorneys. 

For example, the consultation 

on Continuing Professional 

Development (CPD) proposed that 

the Patent Attorney and registered 

Trade Mark Attorney professions 

would be required to carry out the 

same level of CPD each year. At 

present there is a difference between 

the CPD requirements for the two 

professions. For registered Trade Mark 

Attorneys, it is proposed that there 

will be an increase from 14 hours 

(points equivalent) to 16 hours CPD. 

But, unlike now, it is proposed that 

there will be a provision for a 

proportion of CPD to be allowed 

for “reading time”. 

The consultation on the Proposed 

Structure of the new Practice Fees 

outlined how the new regulatory 

regime might be funded. Because the 

costs of running IPReg and the Legal 

Services Board (LSB) have to be met 

by registrants, the consultation sets 

out proposals for how the various 

categories of registrants might share 

this burden. It included proposals for 

July/August 2009 ITMA Review 7


individuals, sole traders, as well as 

provisions for entities to be regulated 

and placed on a register along with 

proposals for concessions for dual 

qualified individuals, neither of 

which features as part of the current 

regulatory set up. This consultation 

concentrated on the structure, but 

gave some indicative costs in its 

explanation of the structure it 

proposed. In the near future, IPReg 

will report on the actual costs that 

they will be seeking approval of 

for 2010. 

In addition to these IPReg 

consultations, the LSB has also 

published a number of consultations 

as it begins to draft the Rules to be 

applied to regulators and which will 

underpin the powers provided in 

the Legal Services Act 2007. The 

consultations published by the 

LSB include: 

• Regulatory Independence 

(closed 26 June 2009) 

• Start up Levy costs (closed 2 July 

2009) 

• Alternative Business Structures 

(closes 4 August 2009) 

These consultations have also been 

placed on the ITMA website to enable 

the profession to view and to provide 

comments. The consultations and 

further information can also be 

located on the LSB website – 

www.legalservicesboard.org.uk 

New ITMA IPReg committee 

In order for ITMA, in its 

representational role, to provide 

responses to the plethora of 

consultations and consider issues 

emerging from the work of IPReg, the 

ITMA Council approved (amongst a 

number of other changes) the set up 

of a new ITMA committee entitled 

“IPReg committee” whose remit is: 

“The IPReg committee is responsible 

for liaising with the Intellectual 

Property Regulation Board (IPReg) 

as the transfer of the regulatory 

functions of the Institute to IPReg 

takes place. The committee will be 

responsible for considering and 

responding to consultations from 

IPReg, the Legal Services Board (LSB) 

and the Office for Legal Complaints 

(OLC). In addition, the committee 

will be in charge of overseeing 



Continuing Professional 

Development (CPD), providing advice 

to members on the availability of CPD 

entitlement for activities which do not 

fall clearly within ITMA’s guidelines 

and following up cases in which 

members have failed to provide 

evidence of compliance with CPD 

requirements. The IPReg committee 

will also give guidance to members in 

relation to professional standards and 

will examine disciplinary complaints. 

CPD and disciplinary matters are to be 

transferred to IPReg in 2010 as a result 

of the Legal Services Act 2007.” 

This new committee, chaired by Kate 

O’Rourke, in addition to considering 

IPReg maters, absorbs the roles and 

responsibilities of the previous 

Continued Professional Development 

(CPD) committee and the Professional 

Guidance & Discipline (PG&D) 

committee. The CPD and Disciplinary 

functions will ultimately transfer to 

IPReg when the two Institutes are 

formally designated Approved 

Regulators under the Act and they 

then delegate their responsibilities 

to IPReg early next year. 

The IPReg committee held its 

inaugural meeting on 10 June 2009 

and agreed the text for a response 

on the Regulatory Independence 

consultation from the LSB and 

endorsed the comments made by 

members on the consultation from 

IPReg on the Structure of the new 

Practice Fees. The response to the 


consultation was approved by 

Council on 23 June 2009 along with a 

short letter response to IPReg on the 

Practice Fees consultation (as ITMA 

had been privy to discussions by the 

IPReg Board and had verbally 

communicated comments, it was felt 

a short letter would suffice). These 

responses can be viewed on the ITMA 

website or found at the end of this 

article. With regard to the LSB 

consultation on the Levy it was felt 

that the comments being put forward 

by IPReg were the same as those of 

ITMA (ITMA and IPReg had already 

jointly met the LSB to discuss the Levy 

consultation) and therefore, it was 

more sensible to submit a joint 

response. That response can also be 

found as above. 

The committee will be meeting again 

in July to discuss the remaining 

consultations that are currently live 

and will be producing responses on 

behalf of ITMA. If you do have any 

views on any of these consultations, 

please feel free to send your 

thoughts to Kate O’Rourke 

(Kate.O'Rourke@charlesrussell.co.uk) 

or to the ITMA office where we will 

ensure that they are put to the IPReg 

committee. 

IPReg Board meeting - June 

At the IPReg Board meeting in June, 

the Chief Executive of the LSB – Chris 

Kenney attended the meeting to 

meet the Board members, talk to the 

Board about the development of the 

LSB and in particular to hear from the 

Board about the key issues from 

IPReg’s perspective. 

The main issue from a Trade Marks 

standpoint was the protection of 

the title “Trade Mark Attorney”. 

ITMA for some time now has been 

seeking to have the title “Trade Mark 

Attorney” protected. Currently the 

title “Registered Trade Mark Attorney” 

is a protected title, but the general 

public, do not distinguish between 

these two terms and of course there 

are no guarantees that a person using 

the title Trade Mark Attorney is 

regulated, appropriately trained and 

qualified or adheres to professional 

standards. 

The IPReg Board outlined to Chris 

Kenney, why under the new 

regulatory regime, the protection of 

this title is even more imperative than 

before. The anomaly that currently 

anyone (registered or unregistered) 

can use the title “Trade Mark 

Attorney”, coupled with the average 

consumer test that if a consumer 

were using a Trade Mark Attorney, 

it is likely that they would expect that 

person to be regulated in some form 

were presented to the LSB. The LSB 

appeared sympathetic to our 

concerns that without appropriate 

protection for the title “Trade Mark 

Attorney”, the regulatory objectives, 

to which the LSB and the Approved 

Regulators are working towards, 

might not be achieved. 

The LSB indicated that they would 

welcome a paper that reflected the 

points made at the meeting. The LSB 

would ask their Consumer Panel to 

look at the issue and recommend a 


course of action. This is an 

encouraging step forward and we will 

be working with IPReg on the paper. 

ITMA would like to thank Phil Harris 

for his continuing work in this area; 

his enthusiasm and determination to 

succeed and progress this issue has 

certainly helped enormously. 

In addition to the above point, 

the LSB indicated that they are 

approximately 3-4 months ahead of 

schedule in setting up the LSB. They 

indicated that they are very keen to 

accelerate the programme for 

Alternative Business Structures (ABS) 

and are working towards bringing the 

relevant Rules into force in 2011, a 

year ahead of the original plans. 

They were keen to acknowledge that 

ABS was a difficult policy area but 

they wanted to push on quickly and 

provide a level playing field so that 

there were no bureaucratic hurdles 

which might prevent newcomers 

entering the legal services field. IPReg 

will be on the LSB’s implementation 

working group which will run in 

parallel with the policy development. 

We will establish lines of 

communication so that we know 

what is happening. In the meantime, 

we await further developments. 

The LSB also indicated that there 

would be at least two further 

consultations published by the end of 

the summer, so keep an eye on the 

ITMA website for these and do pass 

on any comments you may have to 

the IPReg committee or the ITMA 

Office. 

The IPReg Board also considered the 

first responses to the consultation on 

the proposed Practice Fee Structure. 

There had been a number of 

comments from sole traders on the 

proposals. It is likely that the outcome 

will be that their burden will not 

be as great as was proposed. IPReg 

certainly seemed to be listening! 

Finally, the IPReg Board agreed that 

they should apply for a Trade Mark 

and Certification Mark which they 

and registrants will be able to use. 

An application has already been 

submitted. 

Individual and Entity Registers 

It has been agreed that ITMA and 

CIPA will maintain the Individual 



Registers for their respective 

professions on behalf of IPReg. In 

addition, the decision has been taken 

that ITMA will also maintain the new 

Entity Register that will incorporate 

both Trade Mark and Patent entities. 

Service Level Agreements will be put 

in place between IPReg and ITMA to 

ensure that there are clear controls in 

place. ITMA and CIPA will receive £20 

per registration from IPReg for the 

cost of administering and maintaining 

the registers. 

Registered Trade Mark Attorneys 

should note that the process for 

payment of registration fee will 

change next year to a less flexible 

regime. The likely process will be: 

• November 2009 – Renewal invoice 

sent to all Registered Trade Mark 

Attorneys 

• January 1st 2010 – Payment due 

• End of January 2010 – First 

reminder sent to those who have 

not paid 

• End of February 2010 – Final 

reminder sent to those who have 

not paid 

• End of March 2010 – Registration 

lapses 

• For a short period of time a 

Registrant will be able to pay a 

late renewal fee (in addition to 

the standard Registration fee 

(amount to be determined) 

• Thereafter, if an Attorney wishes 

to reinstate their registration, they 

are likely to have to satisfy IPReg 

that they still have the necessary 

skills and have maintained their 

professional standards, plus pay 

an additional fee to the standard 

registration fee. 

This is different from the current 

procedure whereby payments can 

be made throughout the calendar 

year, but has been put in place to 

streamline the renewal process and 

reduce costs as well as ensuring that 

the register is up to date. 

IPReg seminars 

IPReg in association with ITMA and 

CIPA have recently decided to run 

seminars for the Patent Attorney and 

Trade Mark Attorney professions, so 

that both can hear first hand what 

IPReg and the new regulatory regime 

will mean for those on the register 

and provide an opportunity for 

questions to be asked. The seminars 

entitled “Countdown to regulation” 

will take place in the following 

locations during September and 

October (based on information 

available at the time of going to print, 

for up to date information, please 

check the ITMA website). 

London - Thursday 3 September at 

The Science Museum, Imperial 

College Road, London, SW7 5NH, 

from 6pm – 8pm 

London - Thursday 10 September at 

The Science Museum, Imperial 

College Road, London, SW7 5NH, 

from 6pm – 8pm 

Manchester – Friday 9 October at the 

Lowry Hotel, 50 Dearmans Place, 

Chapel Wharf, Manchester, M3 5LH, 

time to be confirmed 

Glasgow – TBC – likely to be in 

October 

Bristol – TBC – likely to be in October 

These seminars will carry 2 ITMA CPD 

points and we strongly recommend 

that you attend one of the seminars in 

order to hear what is on the horizon 

as the changes are fast approaching. 

The seminars will be introduced and 

closed by an officer of ITMA and CIPA, 

whilst the main presentations will be 

conducted by the professional and lay 

members of the IPReg Board. There 

will be an opportunity for a Question 

& Answer session at the end of the 

presentation and for informal 

questions over a drink at the end. 

To register for a place at one 

of these seminars, please email 

info@ipreg.org.uk 

In addition to these seminars, we are 

delighted that Michael Heap will be 

speaking at the ITMA Autumn 

conference in Lisbon, which will be 

taking place on the 24/25 September, 

places are still available. 

Useful information 

IPReg website – www.ipreg.org.uk 

General queries – info@ipreg.org.uk 

Keven Bader, Chief Executive 



INTERNAL 

GOVERNANCE 

1 How might an independent 

regulatory arm best be “ringfenced” 

from a representativecontrolled 

approved regulator 

(i.e. requiring a delegation of 

the power to regulate processes 

and procedures; and the power 

to determine strategic 

direction)? 

There may not be a “best way” to ring 

fence the regulatory arm from the 

representational functions, given 

the distinct nature of the various 

Approved Regulators. We agree that 

the rules should require this 

separation, but it must be for each 

Approved Regulator to determine 

how it will be done in order to 

satisfy the LSB. 

ITMA believes that (in conjunction 

with CIPA) this has been achieved in 

the set up of the Intellectual Property 

Regulation Board (IPReg), which will 

be a company limited by guarantee. 

ITMA are making amendments to our 

constitution (our Memorandum & 

Articles of Association) to delegate 

our regulatory powers to IPReg. Any 


Legal Services Board – consultation on 


A formal response by the Institute of Trade Mark Attorneys 

The Institute of Trade Mark Attorneys (ITMA) welcomes the opportunity to comment on this 

important consultation. To assist the LSB, we have simply provided answers to the individual 

questions posed in the consultation document. These are set out below. 

amendment to our constitution 

requires an Annual General Meeting 

or an Extraordinary General Meeting 

for it to be democratically approved. 

The formulation of a legally binding 

“Delegation Document” will ensure 

the regulatory work and policy 

aspects of regulation are handled and 

deliberated over separately to the 

representational function. 

2 What do you think of our 

proposals relating to regulatory 

board appointees? 

ITMA agrees that there is a need to 

ensure that appointments to the 

regulatory arm are done fairly 

The proposals for the appointment of 

all Board Members on the basis of 

Nolan principles is something which 

ITMA can support. In our initial 

appointments of Trade Mark Attorney 

Board members we used an open 

competition arrangement and a 

selection process to identify the 

best applicants. 

Now that IPReg is up and running we 

would be content for it to run the 

process of selection and appointment 

of both professional and Lay 

members on the basis set out in 

paragraph 3.15 as and when current 

appointments expire. We would 

however, wish to stress that this is 

based on the basis that representative 

bodies, like ITMA and CIPA, can and 

will be part of the process. Given the 

position of Patent and Trade Mark 

Attorneys in the scheme of things and 

their ability to practice outside the 

regulated regime it is important that 

they are content that the regulators 

are aware of their interests. One way 

of doing that is to have ITMA involved 

in the selection process for Board 

members. 

The proposal for a majority of 

non professionals on Boards is, 

in our view, not necessary for the 

achievement of any of the regulatory 

objectives. IPReg, which will regulate 

the Trade Mark Attorney and Patent 

Attorney professions, under current 

arrangements, is made up of a Trade 

Mark Attorney Regulation Board and 

a Patent Attorney Regulation Board to 

reflect the position of ITMA and CIPA 

as individual approved regulators. 

Overall, there will be three Trade Mark 

Attorneys and three Patent Attorneys 

on the respective boards along with 

two nominated Lay members of 

IPReg to sit on each of the two 


oards, all under the Lay Chair of 

IPReg. Whilst that doesn’t ensure a 

Lay majority, should the Rules require, 

we can appoint a third to the board to 

ensure Lay members can “block” any 

proposal which emanates from the 

professional members and which the 

former consider not to be in the 

interests of the users of the IP or legal 

systems. However, we do not think 

this necessarily has to be a 

requirement. 

There are provisions in the Code of 

Conduct for Board members of IPReg 

and/or in their Contracts for reappointment 

and for the appraisal 

of the board members, which ITMA 

would support. It must be recognised 

that any appraisal system is likely to 

be expensive to administer and 

burdensome to implement. This 

would provide an onerous, time 

consuming (and therefore expensive) 

burden for the Chairman of IPReg 

to take on. In the circumstances 

of a proportionate regulation 

arrangement we would not want 

to see the LSB insist on such an 

arrangement at this stage of the 

implementation, but rely on 

examples of best practice in 

due course. 

3 Is it necessary to go further than 

our proposals, for example, by 

making it an explicit 

requirement for the chairs of 

independent regulatory 

boards/equivalents to be nonlawyers? 

There is no need to be prescriptive in 

relation to the Chairman of Boards. 

We think that it might be appropriate 

to say that a Chairman may not be a 

member of the profession which 

his/her Board is regulating. But that 

should not mean that, for example, a 

non-practising barrister should not 

Chair the Board regulating Legal 

Executives, or indeed our own Board. 

In the interests of proportionality 

there is no need to go any further 

than the proposals set out in 3.15. 

4 Do you agree with our 

proposals in respect of the 

management of resources, 

including those covering 

‘shared services’ models that 

approved regulators may 

adopt? 


ITMA believes that it is essential for 

shared services to be allowed and 

indeed encouraged, especially for the 

smaller approved regulators. The 

need to keep costs minimised is 

crucial for ITMA and we would 

strongly support the proposals 

provided the added bureaucracy is 

minimised. We fully accept that such 

arrangements should not impinge on 

the independence of the regulatory 

arm and we believe that this is 

possible to achieve. 

The proposals set out appear to 

reflect what should be the right 

balance to ensure that possible 

undue influence by the 

representational organisation is 

negated and that conflict situations 

don’t develop. However, again these 

are areas where prescription is to be 

avoided and as long as there are 

systems in place for problems to be 

aired and resolved – with the 

possibility of involving the LSB as a 

last resort – then the good sense of 

those directly involved can be relied 

on to respect the regulatory 

objectives. The Service Level 

Agreements that we will have in 

place will ensure that mechanisms 

for solving problems are covered. 

5 Is our proposed balance 

between formal rules and less 

formal (non-enforceable) 

guidance right? In what ways 

would further or different 

guidance be helpful? 

ITMA is content with the balance 

between formal rules and less 

formal (non-enforceable) guidance. 

The draft rules are sufficiently 

principle based to ensure, in the view 

of ITMA, a common sense and 

practical approach to regulation. The 

guidance, though informal and not 

enforceable, will be important in 

setting the tone and in particular 

should ensure that the regulatory 

function is allowed to be undertaken 

in a way which respects the need for 

transparent independence and 

reflects the need for user confidence, 

but in a practical way, which reflects 

the relevant sector of Legal Services. 

For example, Trade Mark Attorneys 

provide specialist legal advice and 

services and their users tend not to be 

the man in the street. The processes 

and means by which we with IPReg 

maintain the confidence of users of 

the IP systems should be allowed to 

be different from other mainstream 

providers of legal services. 

6 What are your views on our 

suggested permitted oversight 

role for representativecontrolled 

approved regulators 

over their regulatory arms? 

We agree that to make the changes 

work, the “spirit of the Act” will need 

to be observed by the approved 

regulators. IPReg will be required to 

produce an Annual Report for the 

two Institutes and we are of the 

opinion that this should be 

considered as the basis for 

monitoring how it is discharging 

the Institutes’ responsibilities as 

Approved regulators. ITMA has set 

up a committee, which in the first 

instance will primarily be looking at 

consultation from the LSB and IPReg, 

but we believe that this Committee 

would have the responsibility for 

examining the annual report and 

taking a view, along with CIPA as to 

what if any points need to be 

discussed with IPReg. 

There are questions to be thought 

about and answered in relation to the 

timing of any further reviews and 

whilst it would be an advantage 

to have an independent review 

of IPREg’s operations and 

responsibilities, this must not be 

overly burdensome and flexibility is 

key. We would suggest a review two 

years after IPReg has formally taken 

over the regulatory responsibilities 

would suffice. Thereafter, a review 

every five years would seem 

appropriate. 

7 In principle, what do you think 

about the concept of dual selfcertification? 

We, in principle, support the idea of 

duel self-certification. We believe it 

would potentially provide a cost 

effective solution to the regulatory 

burden placed on the LSB and 

therefore reduce the overall 

costs to the regulated profession. 

Furthermore, we do believe that 

the costs to self certify for the 

representational arm will be 

significantly high; however, we would 

welcome a process that is quick and 



simple to go through to ensure costs 

are minimised. 

8 If a dual self-certification model 

were adopted, how should it 

work in practice? 

As indicated in our response to 

question 6, one possibility for ITMA is 

to use our newly appointed IPReg 

Committee to conduct the necessary 

monitoring with IPReg. This 

committee could then advise our 

Council and put forward a view as to 

whether or not certification should go 

ahead. [DN: This would need to be 

discussed with CIPA] 

As indicated the need for the system 

to be simple is fundamental to ensure 

that we do not drive up the cost of 

the regulatory and representational 

arm on registrants and members. The 

administration attached to the 

process needs to be minimal. 

PRACTISING FEES 

9 Do you agree with the 

mandatory permitted purposes 

currently listed in statute should 

be widened to include explicit 

provision for regulatory 

objective (g), i.e. “increasing 

public understanding of the 

citizen’s legal rights and 

duties”? 

ITMA agrees with the mandatory 

permitted purposes currently listed 

in statute, which can be used to 

formulate and assess budgets 

required for the regulatory arm and to 

hold them to account accordingly. 

ITMA is less inclined to agree with the 

proposal to widen the list to include 

explicit provision for regulatory 

objective (g), i.e. “increasing public 

understanding of the citizen’s legal 

rights and duties” as this is not 

necessarily an important point for 

ITMA and IPReg. We can understand 

from the point of view of the LSB that 

is a laudable objective and one for 

which they are responsible, however, 

it must be recognised that this 

proposed provision is not necessarily 

applicable to all the approved 

regulators and we believe there 

should not be any “invitation” to 

budget for such expenditure by 

specifically indicating that it is an 

acceptable purpose. 



10 Should any other (general or 

specific) purpose be permitted 

under our section 51 rules? 

We could support a general provision 

which provided for expenditure 

which was in the interests of 

regulatory objectives of the Act, but 

there should be some indication that 

this would need the approval of the 

Approved Regulator and the LSB. It 

could not, in our case, be permissible 

for IPReg to seek funds for a PR 

exercise under this banner, for 

example, where ITMA objected but 

LSB did not. 

11.What do you think about our 

proposal to seek evidence that 

links to the regulatory 

objectives of the act? 

We believe that the proposals are 

sensible and provided that the 

process and level of analysis required 

is not set at a significantly detailed 

level (thus driving up costs) the 

proposals should work. 

12.What criteria should the Board 

use to assess applications 

submitted to it? 

No comment 

13 If they are adopted, what should 

Memoranda of Understanding 

between the Board and 

approved regulators contain? 

For approved regulators, are 

there any particular 

implications for your 

organisations? 

In order to ensure that budgetary 

cycles can be managed and to enable 

payment/renewal cycles to run 

effectively, we would urge that the 

MoU have certain timing 

requirements set out to ensure that 

applications are not unduly “sat on” 

and quick responses are received 

from the LSB as to whether the 

proposed change in fee is 

acceptable. 

14 Should there be a requirement 

on approved regulators to 

consult prior to the submission 

of their application each year – 

and if so, who should be 

consulted, ad on what? 

ITMA do not think that there is a need 

to consult prior to the submission of 

an application. Before the 

introduction of the Legal Services Act 

and the separation of the regulatory 

function from the representational 

function, no consultation took place 

with the profession. We could only 

see the need to consult if the change 

to the fee was of a significant level, for 

example, 100% increase, however, we 

do not think that this would be likely. 

15 What degree of detail would be 

most appropriate to require 

when seeking to maximise 

transparency but be 

proportionate in terms of 

bureaucracy? 

We agree there is a need for 

transparency and discussions with 

IPReg have already resulted in an 

agreement that it will need to be 

made clear to registrants what the fee 

imposed actually covers. For example, 

the cost of maintaining the registers 

which will be “sub-contracted” from 

IPReg to ITMA will be included in the 

breakdown. 

16 Are there any issues in respect 

of practising certificate fees that 

you think we should consider as 

part of this consultation 

exercise? 

No comment 

DRAFT RULES 

17 Please comment on our draft 

proposed Rules, both in terms 

of the broad framework and the 

detailed substance. 

No comments at this point in time. 

NEXT STEPS 

18 Are there any comments that 

you wish to make in relation to 

our draft impact assessment? 

No comments at this point in time. 

19 Are there any other issues that 

you would like to raise in 

respect of our consultation that 

has not been covered by 

previous questions? 

No 

Keven Bader – Chief Executive 

for and on behalf of ITMA 

26 June 2009 





The Levy: funding legal services 

regulation 

First of all, can I thank you for meeting 

representatives of IPReg, CIPA and 

ITMA recently and giving us the 

opportunity to put forward our initial 

views on the proposals set out in the 

above consultation document. I have 

also been asked to thank the LSB for 

the informal discussions that have 

taken place on this subject between 

the LSB and IPReg, ITMA and CIPA. 

This has meant that there were few 

surprises in the document when 

published. The views below represent 

confirmation of those expressed by 

IPReg and ITMA. CIPA will let you 

know in due course if they too 

support the points below. 

The comments are set out under the 

questions posed by the document: 

1 Can respondents see any areas 

where defined “fair principles” 

could be improved? 

No. The principles themselves are 

ones which are sensible and 

reasonable and can easily be used as 

the basis for determining the Levy. 

We also consider that the way in 

which transparent, accountable, 

proportionate, consistent, targeted, 

have been applied by the LSB in these 

proposals seem fair and reasonable 

to all. They are, in particular, and 

very importantly, ones which all 

stakeholders would recognise 

as fair and measurable. 

2 Are respondents content for the 

collection mechanisms to be the 

subject of an MOU between 

the LSB and each Approved 

Regulator? What might an 

MOU contain? 


Joint response to the Legal Services 

Board consultation on the levy 

A letter from The Chief Executive to Edwin Josephs, Director of Finance and Services, Legal Services 

Board, 7th Floor Victoria House, Southampton Row, London WC1B 4AD, 25 June 2009. 

An MOU is a sensible way to approach 

the collection mechanisms. In 

particular, the MOU should cover the 

timetable for the agreement of the 

Levy and any consequences for 

practice fees. This will be important 

for IPReg where there will need to be 

consultations with two representative 

bodies as well as members of two 

professions. Also, if we are to meet 

the LSB timetable for payment each 

year, the LSB will need to meet ours 

for approval of any variation to 

practice fees. For example, if the LSB 

Levy (in respect of each individual 

regulator) is not determined by, say, 

May, then the MOU should provide 

for the Levy to be no more than 

that applied in the previous year. 

In that way the IPReg budget and 

subsequent practice fee proposals 

can proceed without delay. 

3&4 Comments on timetable for 

first year? Other options? 

The document proposes the payment 

of the Levy by February 2010. You 

explained that this was necessary in 

order that the monies for the start 

up costs could be transmitted to the 

Ministry of Justice by the end of the 

financial year. From our standpoint, 

the Levy is likely to be included in 

the 2010 practice fee but it is most 

unlikely that we will have received 

sufficient fees in time to pay the 

Levy by the proposed date. We may 

therefore miss the date or be in a 

position to make only a part 

payment then. 

5 Views on staged payments? 

The LSB is proposing to collect the 

first Levy over three years on the basis 

of 70%, 20% and 10%. This will clearly 

benefit some, in particular those 

regulators which will have to pay a 

share of the OLC start up costs. From 

our stand point, however, the need to 

collect this Levy over three years is 

likely to add to the administrative 

costs of IPReg and in the consultation 

document issued by IPReg on 

practice fee structure,(and with the 

agreement of CIPA and ITMA) we 

have proposed that we should collect 

the whole sum next year. There does 

not appear to be any objection to this 

– but the consultation is not yet 

closed. We would therefore wish to 

have the provision to pass the whole 

amount to the LSB in 2010. 

6 Do respondents agree that 

there are no suitable metrics for 

the regulatory risk attached to 

Approved Regulators which 

could be used to apportion LSB 

costs? 


there are no suitable metrics 

for the assessment of volume 

activity to enable it to be used 

as an apportionment tool for 

2010? 

8 Views on apportionment based 

on per capita? 

9 Any other options? 

These questions are linked. There are 

no readily available metrics to help 

determine the apportionment of LSB 

costs and therefore we can agree that 

the per capita approach is a fair and 

reasonable basis for determining the 

Levy in relation to the LSB’s start up 

costs and first quarter running costs in 

the first year. It enables the LSB and 

the regulatory arrangements for 

Approved Regulators to be put in 


place and uncertainty quickly 

removed. However, this does not 

mean that metrics should not be 

used in the future to help determine 

the proportion of the LSB’s costs to 

be met by each Approved Regulator. 

We are pleased to see that the LSB 

have not ruled this out. From the 

point of view of the Patent Attorney 

and Trade Mark Attorney professions, 

the LSB is unlikely to be troubled by 

any regulatory professional policy, 

rules or independence issues which 

might put IPReg on the LSB’s radar 

and we would want that reflected at 

the end of each year in terms of the 

Levy to be applied the next year. Even 

the application of simple statistics on 

“time spent “on individual regulator’s 

issues might be an indicator of the 

burden imposed on the LSB, and 

therefore on its running costs, as time 

moves on and the regulatory rules 

and framework are in place. This topic 

is one which might be the subject of a 

separate workshop with Approved 

Regulators. 


apportionment based on a per 

capita basis for OLC costs does 

not meet the “fairness 

principles?” 

11 Views on the proposal that set 

up costs are met by those the 

subject of most complaints? 

12 Any other options? 

We agree with the views reached 

by the LSB in relation to the 

apportionment of OLC. As 

representatives of two of the smaller 

professions, neither of whom have a 

track record of service (or conduct) 

complaints of any significance it 

would be unfair for registrants in the 

IP field to have to contribute to the 

start up costs of the OLC. The 

proposals are sound and have an 

intellectual rigour. In terms of future 

running costs of the OLC, they will be 

met by those, including those on the 

Patent and Trade Mark Attorney 

registers, who are the subject of 

service complaints which are upheld. 

That will be a fair and reasonable 

approach and one which was 

envisaged from the start. 

Please let me know if you have any 

questions on these submissions. 

Mike Knight 



Newly elected 

members, 

May 2009 

STUDENT 

The proposals are sound and have an 

intellectual rigour. In terms of future 

running costs of the OLC, they will be 

met by those, including those on the 

Patent and Trade Mark Attorney 

registers, who are the subject of 

service complaints which are upheld. 

That will be a fair and reasonable 

approach and one which was 

envisaged from the start. 

Mrs J Daneel 

Mr CD Everitt, Samsonite 

Ms ELGreen, City Inn Limited 

Miss C Loock, Baker & McKenzie LLP 

Mr NJ March, Clifford Chance LLP 

Mr RC Sessford, Forresters 

Mr TA Sharman, Reddie & Grose 

Dr AJ Teasdale, Wilson Gunn 

Mr C Tevlin, Wilson Gunn 

Miss AE Toms, AstraZeneca 

Mr BD Travers, Ashfords 

Ms M Walsh, Ansons 

Miss CE Ward, Sanderson & Co 

Mr KM Wilson, Baker & McKenzie LLP 

Ms KA Wright, Astellas Pharma 

Europe Ltd 

AFFILIATE 

Mr TM Ashton, Forresters 

Miss C Argent, Forresters 

Ms SL Britton, SK Sport & 

Entertainment 

Miss SA Burns, Withers & Rogers LLP 

Dr DJ Fulton, Lincoln IP Limited 

Ms E Harding, Harding Legal Limited 

Mr R Knight , Sanderson & Co 

Mr JT McAllister 

Miss P Sharma , Baker & McKenzie LLP 

Miss RD Wilkinson, Baker & McKenzie 

LLP 

Miss KL Wilson, Addleshaw Goddard 

LLP 

ORDINARY 

Mr GA Apaya, BBC Worldwide 

Limited 

Miss AC Blackburn, fJ Cleveland 

Mr LL Bond, Laurence Bond Solicitors 

Mr AJ Clemson, fJ Cleveland 

Miss CPE Duly, Boult Wade Tennant 

Mrs R Heard, Simmons & Simmons 

Miss SE Jones, Maze 

Miss L Kemp, Humphreys & Co 

Mr CS MacPherson, Page Hargrave 

Mr AR Minto, JT International SA 

Mr M Playle, The Chanel Company 

Limited 

FELLOW 

Mr RD Heath, Unilever 

OVERSEAS 

Ms BS Gogadi, BS Gogadi Advocate 

ASSOCIATE 

Mr JD Coldham, Wragge & Co LLP 

Mr CJK Hulme, Burness LLP 


FEATURES 

Briefly, why was the tribunal set up? It 

was set up to deal with opportunistic 

company name registrations, based 

at the Intellectual Property Office in 

Newport. Until October 2008, brand 

owners could only follow the 

‘traditional’ passing off and/or trade 

mark infringement routes against a 

company with the same or similar 

registered company name. The likely 

arguments would be similar to the 

domain name dispute between BT 

and One in a Million Ltd 1 where the 

mere registration was found to 

amount to passing off 2 . Alternatively, 

objections could be made through 

Companies House (in Cardiff) under 

existing Companies Act legislation 

on the basis that a third party’s 

registered company name was the 

same as, or too like, the name of a 

registered company already owned 

by the brand owner. Note here, that 

the brand owner needs to have a 

previously registered company in 

order to object on this basis. 

Applicants to the new tribunal need 

to show: 

a) that the objectionable name is the 

same as a name associated with 

the applicant in which he has 

goodwill; or 

b) that it is sufficiently similar to such 

a name that its use in the United 

Kingdom would be likely to 

mislead by suggesting a 

connection between the 

company and the applicant 3 . 

On being able to show either of the 

above grounds, the burden then 

shifts to the respondent to show as 

follows: 

“a) that the name was registered 

before the commencement of the 

activities on which the applicant 

relies to show goodwill; or 

b) that the company– 


FEATURES 

Company Names Tribunal update 

Martin Noble 

Much has already been written about the Company Names Tribunal, the majority 

of which appeared before or at the time it was set up on 1 October 2008. Eight 

months on, it seems fitting to re-visit this topic particularly given that there are 

now some decisions publicly available. They suggest that there is a clear 

demarcation between the new procedure and traditional actions for trade mark 

infringement and/or passing off. Martin Noble reports. 

i) is operating under the name, or 

ii) is proposing to do so and has 

incurred substantial start-up costs 

in preparation, or 

iii) was formerly operating under the 

name and is now dormant; or 

c) that the name was registered in 

the ordinary course of a company 

formation business and the 

company is available for sale to 

the applicant on the standard 

terms of that business; 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.” 4 

If none of the above can be shown by 

the respondent then the applicant’s 

objection will be successful. In that 

case, the adjudicator ultimately has 

the power to change the company’s 

name if it does not do so following 

the adjudicator’s order 5 . If any of the 

defences in (a), (b) or (c) are shown, 

then in order to succeed the applicant 

does have to show opportunism on 

the part of the respondent, ie that the 

main purpose of the respondent in 

registering the name was to obtain 

money (or other consideration) from 

the applicant, or to prevent it from 

registering the name 6 . 

There are parts of the new legislation 

which are unclear and untested. How 

much goodwill has to be shown by an 

applicant? What level of costs has to 

be incurred by a respondent to be 

classed as “substantial”? What are the 

standard terms of sale if the name is 

available for sale to the applicant – 

would a fee of £20,000 be considered 

to be standard (and/or reasonable, if 

this is also a relevant factor) 7 ? What 

has to be shown in order to satisfy the 

adjudicator that there would be no 

significant adverse affect to the 

applicant – presumably, some 

adverse affect is still acceptable, 

but to what degree? 

The first recorded application was 

made on 1 October 2008 by The 

Coca-Cola Company in relation to 

Coke Cola Limited, a name which had 

been registered since 29 February 

2008. No counter-statement was filed 

within the stipulated one-month 

period. The application was treated 

as unopposed and an order was 

made in the terms requested; no 

more, no less. The respondent’s 

name was consequently changed to 

06519140 Limited by an order of the 

adjudicator dated 9 January 2009 as 

the decision was not complied with. 

As at the time of writing this article, 

there have been a further 24 

published decisions by the Company 

Names adjudicator, most on the basis 

that no response was filed by the 

respondent. Three of the decisions 

were not reached on the basis of nonresponse, 

which I have set out in 

more detail below. 

Lack of “opportunism” 

Clear guidance on the use of the new 

tribunal procedure was given by the 

adjudicator in the recent case of 

Barloworld Handling Ltd (O-127-09). 

Barloworld objected to the company 

name Unilift South Wales Ltd (“USW 

Ltd”) in the light of Barloworld’s 

alleged “considerable reputation 

in the past six years through its 

marketing, hiring and servicing of 

fork lift trucks in the Swansea and 

Cardiff areas under the Unilift name” 

through its company Unilift Ltd. The 

application also referred to instances 

of confusion, which appears to have 

been the main objection and reason 

for Barloworld wanting USW Ltd to 

change its name. 

The adjudicator initially wrote to 

Barloworld pointing out that even on 


its own evidence (referred to in the 

application form), USW Ltd had a 

defence based on s69(4)(b)(i) of the 

Companies Act 2006 because the 

applicant accepted it was “operating 

under the name”. On that basis, the 

burden shifted back to Barloworld to 

establish under s69(5) that the main 

purpose of USW Ltd in registering the 

name was to obtain money (or other 

consideration) from Barloworld, or to 

prevent it from registering the name. 

There was nothing in Barloworld’s 

application to suggest this and 

Barloworld did not provide any 

further evidence to support this, after 

being given the opportunity to do so 

by the adjudicator. The application 

was therefore struck out as having no 

reasonable prospect of success and 

being misconceived. 

The adjudicator’s message was 

as follows: “Applications to the 

Company Names Adjudicator are 

neither an alternative nor an 

equivalent to an action for passingoff” 

– something which should 

be borne in mind when drafting 

applications in future (do not get 

sidetracked when filling in boxes 12 

and 14 on the application form, CAN 

1). It is also noticeable that all this 

appeared to happen without any 

input from USW Ltd (none being 

referred to the published decision), 

showing that the adjudicator will 

scrutinise applications carefully, 

rather than simply leaving the parties 

to fight it out amongst themselves. 

Evidence 

In the case of Credo Group (UK) 

Limited (O-145-09), evidence of 

goodwill was included in the 

application, comprising pages 

downloaded from the internet 

containing press releases and 

articles. On the facts alleged in the 

application, the respondent (Credo 

Financial Solutions Limited) was 

incorporated shortly after a wholly 

owned subsidiary of the applicant, 

Credo Financial Solutions (UK) 

Limited, had been dissolved. Whilst 

suggesting that the respondent’s 

name would be likely to mislead 

(s69(1)(b)) the applicant also argued 

that existing and new customers 

could be “confused”. 

The defence alleged that there was 

no competition: the applicant being a 

financial services company for high 


FEATURES 

net worth individuals and the 

respondent supplying finance for the 

motor trade. The respondent also 

claimed costs had amounted to 

around £8,000 in setting up the 

company so far (no doubt an attempt 

to rely on the “substantial start-up 

costs in preparation” defence). 

The parties were then given time to 

file evidence in support of their cases. 

Neither party did. The adjudicator 

held that the applicant had the 

burden of proving the requisite 

goodwill, which could only be 

established by filing evidence 

which could be tested (ie a witness 

statement with a statement of truth, 

affidavit, or statutory declaration). The 

extracts from the internet were, on 

their own, deemed insufficient. 

Despite the respondent not filing any 

evidence either, the adjudicator 

indicated that there appeared to be 

good faith on the respondent’s part 

(a defence under s69(4)(d)). Further, 

there was nothing to suggest that the 

company had been registered on an 

opportunistic basis. 

A costs order was made against the 

applicant on the basis that the 

application was treated as having 

been withdrawn because the 

applicant filed no evidence (rule 5(1) 8 ). 

The adjudicator also noted that 

there did not seem to be any preapplication 

correspondence between 

the parties, no doubt a factor 

relevant to the costs decision (ie 

the application might have been 

avoided). 

Finally, the adjudicator also noted 

that the reference to “confusion” by 

the application was a “misconception 

by the applicant as to the purpose of 

applications before the tribunal”, not 

being a determinative factor where 

any defences under s69(4) are raised. 

Costs 

The adjudicator also has the power 

to make an award for costs at their 

discretion 9 . This follows a scale 

which reaches just over £5,000 plus 

expenses in a substantial case, 

although it can be ignored if a party 

has behaved unreasonably. No 

account is taken of any conditional 

or other fee agreement which 

might be in place between a legal 

representative and their client. 

In the case of Albourne Property plc 

(O-132-09) it complained of the 

registration of Albourne Properties 

Limited. The respondent filed a 

defence, which appears to have 

prompted Albourne Property 

to withdraw its application. The 

respondent then sought to recover 

its costs for filing a defence: £150 fee, 

£200 for preparing the defence 

and £500 for preparing evidence 

(preparation costs which appear to 

have been incurred through a 

solicitor). 

In this case, the applicant’s solicitors 

had written to the respondent several 

times before filing the application, 

asking for reasons why it had chosen 

that name and requesting the name 

be changed. No response was 

received from the respondent, who 

later explained in the defence that it 

was simply down to lack of time. The 

applicant said in correspondence 

after filing the application: “We were 

simply trying to protect the name in 

case you were a ‘baddy’ which clearly 

you are not”, hence the withdrawal. 

The adjudicator dismissed the 

respondent’s claim for costs on the 

basis that no formal evidence had 

actually been filed (it was effectively 

a claim for compensation for the 

defence twice) and that a response 

prior to the application being made 

would no doubt have avoided it 

(and the associated costs). In the 

adjudicator’s words: “It would have 

been prudent for the respondent to 

have made a response. It had plenty 

of time to do so”. In the end, each 

party had to bear its own costs. 

This decision suggests that potential 

applicants and respondents should 

be careful when corresponding with 

each other in the pre-application 

stage. The adjudicator will consider 

all the relevant circumstances when 

awarding costs, including such 

correspondence. In the same way that 

pre-litigation correspondence can 

be taken into account by the court 

when considering what costs order 

should be made, pre-application 

correspondence is (not 

unsurprisingly) just as important 

in this forum. 

The future 

What do the published decisions tell 

us? So far, it suggests that against the 

might of brands such as Coca-Cola, 

Harrods, Zurich, Reebok, Adidas and 


FEATURES 

Adecco, respondents have chosen to 

give up any rights they may have had 

by not responding — or they never 

got the paperwork in the first place. 

There is of course a right to appeal, 

but this is to the court. The fees and 

legal costs are likely to make such a 

course of action unpalatable, unless 

there has been a miscarriage of 

justice. The lack of response may also 

suggest that in some cases there was 

an element of opportunism involved. 

To date, the majority of cases have 

involved brand owners who are, in 

my view, very well-known within their 

own sectors and in some cases, 

beyond them. Where well-known 

brands are concerned, it might be 

easier to prove opportunism on the 

part of respondents — they are 

more likely to know of these brands 

(although the decisions so far do 

not include findings of fact on this 

point given the lack of response by 

respondents). It will be interesting to 

see what benefit the new system will 

bring to smaller brands and how the 

legislation will be interpreted further 

by the adjudicator in future. However, 

it is clear that applicants should be 

wary of allowing trade mark and 

passing off concepts to ‘muddy’ 

their applications to a tribunal 

which has a specific remit. 

At the time of submitting this article, 

25 published decisions were available 10 , 

the most recent being application 

49 (Imperial College of Science 

Technology and Medicine O-153-09). 

There are therefore at least 24 other 

cases ‘in the pipeline’, including 

earlier cases which would have been 

issued in 2008 (ie at least six months 

ago). This suggests that these include 

a number of contested cases which 

will only reach final decisions after 

evidence has been submitted. In 

conclusion, there is likely to be much 

further guidance on this subject in 

the near future. Watch this space! 

Martin Noble, Shakespeare Putsman 

LLP, martin.noble@sp-legal.co.uk 

1. British Telecommunications plc v One in a Million Ltd [1999] FSR 

1, CA. This case also referred to other cases concerning 

company names: Glaxo v Glaxowellcome [1996] FSR 388 and 

Direct Line Group v Direct Line Estate Agency Ltd [1997] 

FSR 374. 

2. Either being a ‘classic’ misrepresentation to anyone looking at 

the domain names register or as an “instrument of fraud” 

3. s. 69(1) Companies Act 2006 


5. s. 73 Companies Act 2006 


7. Standard ‘off the shelf’ packages are often less than £500 where 

the name is non-specific (i.e. ABC123 Limited), but prices are 

often higher with older companies and where specific names 

have already been registered. 

8. The Company Names Adjudicator Rules 2008 

9. s. 11 The Company Names Adjudicator Rules 2008 

10. The last update on the IPO decisions web page being on 

4 June 2009 


FEATURES 

eBay: how much liability 

for infringements rests 

with the service provider? 

L'Oreal SA & Ors v EBay International AG & Ors [2009] EWHC 1094 (Ch) (22 May 

2009), High Court of Justice, Arnold J. In the rush to respond to the UK 

courts' first judgment considering the potential liability of eBay 

for trade mark infringement, many commentators have published 

accounts which may be misleading. Is eBay an IP pirate or 

merely the unaware ocean over which such pirates may sail? 

Bonita Trimmer reports. 

A win for eBay? 

“eBay Europe do facilitate the 

infringement of third parties' trade 

marks, including L'Oréal's trade 

marks, by sellers; they do know that 

that such infringements have 

occurred and are likely to continue 

to occur; and they profit from such 

infringements except where the 

rights owner makes a VeRO complaint 

in sufficient time.” 

“eBay and its competitors have 

created a new form of trade which 

carries with it a higher risk of 

infringement than more traditional 

methods of trade. I consider that 

there is much to be said for the view 

that, having created that increased 

risk and profited from it, the 

consequences of that increased risk 

should fall upon eBay rather than 

upon the owners of the intellectual 

property rights that are infringed.” 

The above quotes from Arnold J’s 

judgment may lead one to suspect 

that the press reports stating that 

eBay had scored a big “win” must 

be wrong. However, despite the 

apparent tone of the above 

quotation Arnold J in fact: 

• held that eBay was not jointly 

liable for the trade mark 

infringements committed by 

several users of its website 

(named in the action as the fourth 

to tenth defendants); but 

• referred several questions to the 

European Court of Justice (ECJ) 

regarding eBay’s potential primary 

liability, the availability of a 

defence under the e-commerce 

directive, and the scope of 

injunctions to prevent 

intermediaries to the 

infringements to allow 

infringements to continue. 

In addition, Arnold J’s finding on joint 

liability was made on the basis of a 

strict application of the House of 

Lords judgment in CBS v Amstrad 

(CBS Songs Ltd v Amstrad Consumer 

Electronics Plc [1988] UKHL 15 (12 

May 1988)), as the parties had all 

agreed that there was no conflict 

between UK domestic law and EU 

law on the issue of secondary/ 

accessory liability. 

He acknowledged however that he 

could “conceive” that it might be 

argued the EU Trade Marks Directive 

had harmonized (and therefore 

possibly changed) the UK domestic 

law on this issue to some extent. It 

must accordingly be conceivable that 


a reference to the ECJ may be made 

on this issue in a future case. 

Furthermore if there has been no 

harmonisation of secondary liability 

for infringements of harmonised 

intellectual property rights, then we 

can expect the EU to be lobbied to 

provide it. It is easy to see how legal 

disparities in this respect distort the 

freedom of movement of goods in 

the common market. 

In any event, as is clear from the 

above-mentioned references to the 

ECJ, eBay is far from off the hook in 

this dispute yet. Even though the 

judge held eBay was not liable as a 

joint tortfeasor, he acknowledged 

that it may be subject to an injunction 

for acting as an intermediary in 

respect of these infringements. He 

therefore decided to refer a question 

to the ECJ seeking guidance on the 

scope of the injunction which the IP 

Enforcement Directive required to be 

available to be granted by member 

states’ national courts against 

intermediaries. Was it an injunction 

merely to prevent the continuation of 

the specific act of infringement which 

he had found had been committed by 

the relevant eBay users (the fourth to 

tenth defendants)? Alternatively, 

must it extend to preventing the 

same and/or similar infringements 

in the future by those defendants, 

or by others? 

The relevant provision of the IP 

Enforcement Directive states: 

“Member states shall also ensure 

that rightholders are in a position 

to apply for an injunction against 

intermediaries whose services are 

used by a third party to infringe an 

intellectual property right, without 

prejudice to Article 8(3) of Directive 

2001/29/EC.” 

Article 8(3) of Directive 2001/29/EC 

(the Copyright in the Information 

Society Directive) states “Member 

States shall ensure that rightholders 

are in a position to apply for an 

injunction against intermediaries 

whose services are used by a third 

party to infringe a copyright or 

related right.” 

The judge noted that although 

injunctions against intermediaries to 

IP infringements who were not jointly 

liable for those infringement had not 

been granted by a UK court before, 

FEATURES 

our law is already in compliance 

with this provision due to the wideranging 

equitable powers the UK 

courts have to grant an injunction 

where justice would be served by it. 

Nevertheless, the UK judge will still 

have discretion as to whether or not 

to grant such an injunction. 

Furthermore, the judge decided he 

was unable to determine whether 

eBay was primarily liable for 

infringement by virtue of certain uses 

it made itself of the trade marks in 

question, until he had received 

guidance on the interpretation of 

the trade marks Directive from the 

ECJ - see further below. 

Should eBay do more to prevent 

infringement? 

On the flip side of the coin, it has also 

been reported that the judge had 

“agreed” with L'Oreal that eBay could 

do more to prevent its site being used 

to sell infringements; the implication 

being that it should do so. 

In fact the judge made clear 

distinctions between what was 

technically “possible”, what may be 

economically viable and what eBay 

was current legally required to do. 

In respect of what was possible he 

noted that eBay could (but didn't): 

• “filter listings before they are 

posted on the site; 

• use additional filters, including 

filters to detect listings of testers 

and other not-for-sale products 

and unboxed products; 

• filter descriptions as well as titles; 

• require sellers to disclose their 

names and addresses when listing 

items, at least when listing items 

in a manner which suggests that 

they are selling in the course of 

trade; 

• impose additional restrictions on 

the volumes of high-risk products, 

such as fragrances and cosmetics, 

that can be listed at any one time; 

• be more consistent in their 

policies, for example regarding 

sales of unboxed products; 

• adopt policies to combat types of 

infringement which are not 

presently addressed, and in 

particular the sale of non- 

European Economic Area (EEA) 

goods without the consent of the 

trade mark owners; 

• take greater account of negative 

feedback, particularly feedback 

concerning counterfeits; 

• apply sanctions more rigorously; 

and 

• be more rigorous in suspending 

accounts linked to those of users 

whose accounts have been 

suspended.” 

However, the judge noted that 

PriceMinister (another online market 

place) had accepted through its 

General Counsel (who had given 

evidence for eBay) that the measures 

PriceMinister had agreed to take in 

response to L'Oreal's concerns were 

“uneconomic”. Further the judge 

indicated that PriceMinister was “not 

a useful comparator...because it 

operates according to a different 

business model and on a different 

scale”. The implication appears to be 

that should eBay be required to adopt 

similar measures in relation to all 

trade marks its business model 

would not be financially viable. 

Finally the judge concluded that 

as long as eBay did not positively 

procure or authorise infringement, 

legally it was not required to do 

anything to prevent such use of its 

site (save to the extent it may be 

injuncted to stop a continuing 

infringement or prevent future ones 

under the IP Enforcement Directive – 

see above). 

He concluded that “as a matter of 

domestic common law, eBay Europe 

are under no legal duty or obligation 

to prevent infringement of third 

parties' registered trade marks”. 

CBS v Amstrad 

The judge confirmed that for eBay to 

be jointly liable for the infringing acts 

of the fourth to tenth Defendants it 

needed to have procured those 

infringements (by inducement, 

incitement or persuasion) or to have 

at least participated in a common 

design to so infringe. This had not 

been established and “facilitation 

with knowledge and an intention 

to profit is not enough”. 


FEATURES 

The other issues 

In summary the judge held that the 

pleaded acts of the fourth to tenth 

defendants (who had all settled their 

claims with eBay) did amount to trade 

mark infringement but eBay was not 

jointly liable for those acts. The judge 

then went on to decide that all the 

other key issues of the case required 

the guidance from the ECJ. 

Primary liability 

eBay admitted to having purchased 

keywords consisting of some of the 

marks in issue. These keywords 

triggered sponsored links on third 

party search engines including 

Google, MSN and Yahoo. The effect of 

that was that a search on e.g. Google, 

using one of these marks as the 

search term, caused a sponsored link 

to the eBay website to be displayed. 

If the user clicked on the sponsored 

link, he or she was taken to a display 

of search results on the eBay website 

itself for goods by reference to that 

mark as a search term. 

L'Oreal alleged that eBay listings 

search results produced in this way 

included both genuine and infringing 

products. Accordingly L'Oreal claimed 

this amounted to infringing use by 

eBay itself of L'Oreal's marks. 

Additionally the eBay Europe website 

enables users to browse and search 

the website by clicking one of 17 

goods' categories and then “drilling 

down” by sub-categories. One of 

these 17 is “Health & Beauty”. Within 

each top level category is a number of 

sub-categories such as “Fragrances”, 

“Hair Care” and “Skin/Face Care”. 

Within these are sub-divisions such as 

“Women's Fragrances”, “Conditioner” 

and “Cleansers”. Various options are 

then offered to refine the search 

further, including by reference to a list 

of brand names. These brand names 

include several of the trade marks in 

issue. 

As L'Oreal alleged that clicking on one 

of these led the eBay user to eBay 

listings search results which again 

included both genuine and infringing 

products, L'Oreal claimed this also 

amounted to infringing use by eBay 

itself of L'Oreal's trade marks. 

The judge concluded that questions 

needed to be referred to the ECJ 

FEATURES 

before he could determine whether 

or not eBay was directly liable for 

trade mark infringement as a result 

of these activities. 

The issues the UK court needed 

guidance on: 

1. Whether or not display of the 

sponsored link (which resulted 

from eBay's purchase of search 

engine keywords identical to the 

marks) involved “use” of the mark 

in question by eBay Europe albeit 

that the search result is displayed 

to the user by the search engine in 

response to a search request 

made by the user employing the 

sign in question? 

2. If so, whether that use is use “in 

relation to” all the relevant goods 

listed on the eBay site at the time 

when the sponsored link is 

displayed, ie the listings which 

would be displayed if and when 

the user clicked on the hyperlink? 

Accordingly, where those listings 

include both infringing and noninfringing 

goods, was such use, 

“use” in relation to both infringing 

and non-infringing goods (and 

therefore was potentially an 

infringement in so far as it is in 

relation to infringing goods)? 

3. Whether or not the display of 

sub-category links on the eBay 

website, in order to assist users 

with their searches, involved “use” 

of the mark in question by eBay 

Europe albeit that it was the user 

who chose to click on the link in 

order to view a goods list? 

4. If so, whether that use is use “in 

relation to” all the relevant goods 

listed on the eBay site at the time 

when the user clicked on the link? 

Accordingly, where those listings 

include both infringing and noninfringing 

goods, whether such 

use amounted to use in relation to 

both infringing and non-infringing 

goods (and therefore was 

potentially an infringement in 

relation to infringing goods)? 

5. Did the use of the mark in an 

advertisement for genuine but 

non-EEA goods on a website 

which targeted consumers in an 

EEA member state (where the 

proprietor had not consented to 

them being put on the market in 

the EEA) constitute an infringing 

act if it was unclear whether this 

would lead to putting the goods 

on the market inside or outside 

the EEA? 

6. If yes, then was eBay keyword or 

sub-category use of the mark, 

which led to a goods list which 

included such an advertisement, 

use in relation to infringing goods? 

Arnold J also indicated that issues 

relating to the E-Commerce Directive 

and the Intellectual Property 

Enforcement Directive required 

clarification by the ECJ (see 7 to 9 

below). 

The wording of the questions has 

yet to be decided. 

An e-commerce defence? 

Furthermore, even if eBay was 

otherwise so liable, it argued it had a 

defence under article 14 of the E- 

Commerce Directive EC/2000/31. 

Article 14 states... 

“Where an information society service 

is provided that consists of the 

storage of information provided by 

a recipient of the service, Member 

States shall ensure that the service 

provider is not liable for the 

information stored at the request 

of a recipient of the service, on 

condition that: 

- the provider does not have actual 

knowledge of illegal activity or 

information and, as regards claims 

for damages, is not aware of facts or 

circumstances from which the illegal 

activity or information is apparent; or 

- the provider, upon obtaining such 

knowledge or awareness, acts 

expeditiously to remove or to 

disable access to the information. 

Paragraph 1 shall not apply when the 

recipient of the service is acting under 

the authority or the control of the 

provider. 

This Article shall not affect 

the possibility for a court or 

administrative authority, in 

accordance with Member States' 

legal systems, of requiring the service 

provider to terminate or prevent an 

infringement, nor does it affect the 

possibility for Member States of 

establishing procedures governing 


the removal or disabling of access to 

information.” 

It appears from the above that this 

defence is intended to benefit an 

information service provider which 

passively receives and stores 

information from its users, without 

being aware of the contents of that 

information. Here, however, eBay 

itself provided information (i.e. the 

brand sub-categories) which at least 

in part resulted in its potential 

primary liability for infringement. 

Nevertheless, eBay argued it had a 

defence under this provision because 

whether or not its sub-category/ 

keyword use could arguably infringe 

was contingent on the information 

which was provided by its users and 

stored passively by it on the eBay 

website. 

Its own use of L'Oreal as a subcategory/keyword 

could only 

arguably infringe, eBay asserted, if 

some of its users had placed listings 

on its website for infringing products. 

Only then would clicking on the 

L'Oreal sub-category result in the 

display of a listing for an infringing 

product, and only then could its subcategory/keyword 

use of L'Oreal be 

argued to be “in relation to” infringing 

goods. As eBay claimed it did not 

have knowledge of the contents of 

such listings, unless and until it was 

notified about the alleged 

infringement, therefore it claimed 

this defence applied. 

7. The judge considered it unlikely 

that this provision would apply to 

provide eBay with a defence in 

relation to its alleged primary 

liability but nevertheless 

considered the matter sufficiently 

unclear as to require guidance 

from the ECJ. 

A no-liability injunction to prevent 

what? 

8. The judge considered that a 

question should also be referred 

to the ECJ to determine the 

required scope of the injunction 

the UK courts had in their power 

to grant against eBay, as an 

“intermediary” to the 

infringements of the fourth to 

the tenth defendants. 

9. In the light of this power, and the 

possibility that the injunction 

FEATURES 

would be required to cover future 

“similar” infringements, it was 

necessary to determine: 

a) Whether by providing retailers 

(assumed for this purpose to be 

within the EEA) with large tester 

bottles of genuine product which 

were not intended for sale but 

only to be used on customers to 

promote the sale of retail product, 

L'Oreal had put such goods on the 

market and hence had exhausted 

its rights to prevent their further 

commercialisation (i.e. such 

products could not be regarded 

as infringing goods)? 

b) Whether in respect of goods (which 

for this purpose are to be assumed 

to have been put on the market 

by L'Oreal within the EEA or with 

their consent) but which were 

now offered for sale under the 

mark but unboxed resulting in 

them being in contravention of 

the Cosmetics Products Directive 

76/768/EEC this provided L'Oreal 

with legitimate grounds to 

oppose their further 

commercialisation? If so, was this 

still true where no claim had been 

made that the sale of such 

unboxed goods harmed L'Oreal's 

reputation and therefore the 

seller's contravention of 

76/768/EEC alone was relied 

upon? 

In fact, of the 17 pleaded sales of 

allegedly infringing goods by the 

fourth to tenth defendants via the 

eBay site, only two had been held to 

be counterfeits. Four had been a 

tester product of the nature described 

above and the remainder had been of 

unboxed products. However all the 

sales in the latter two categories had 

been held by the judge to have been 

put on the market by L'Oreal outside 

the EEA and eBay had not been able 

to establish that L'Oreal had 

consented to their marketing in the 

EEA. Accordingly, the judge held that 

they all infringed without the need for 

further guidance from the ECJ. The 

clarification sought above in respect 

of whether EEA goods of this nature 

also infringed arose because, if they 

did, they may also be caught by an 

injunction granted on the basis of the 

past infringements if this was worded 

so as to catch “similar” future 

infringements. 

Comment 

Whether or not internet-based service 

providers (such as eBay, Google, 

Yahoo, P2P sites etc) may be jointly 

liable for the intellectual property 

infringements of their users is a 

significant issue perplexing the courts 

of many of the EU member states. 

The fact the legal position in relation 

to such issues may differ legitimately 

from jurisdiction to jurisdiction is far 

from satisfactory in a common 

market. 

Reports elsewhere that we can look 

forward to guidance from the ECJ on 

the issue of secondary liability as a 

result of the questions to be referred 

in this case are clearly incorrect. 

The only guidance we may receive 

in this case that relates to this very 

significant issue is in respect of 

the extent to which such an 

“intermediary” may be subjected 

to an injunction where it is not 

legally liable. 

However a reference in a different 

case (one of several pending relating 

to Google's AdWord service for 

sponsored search results) may result 

in some guidance as to where such 

secondary liability has been alleged, 

there will be a defence under the E- 

Commerce Directive. The second 

question in Google France v Viaticum, 

Luteciel (C-237/08) is: 

“In the event that such use [ie 

Google's own alleged “use” of the 

mark in issue] does not constitute a 

use which may be prevented by the 

trade mark proprietor under the 

directive... may the provider of the 

paid referencing service [i.e. Google] 

be regarded as providing an 

information society service consisting 

of the storage of information 

provided by the recipient of the 

service, within the meaning of Article 

14 of Directive 2000/31 of 8 June 

2000, so that that provider cannot 

incur liability before it has been 

informed by the trade mark 

proprietor of the unlawful use 

of the sign by the advertiser?” 

Bonita Trimmer, Wragge & Co, 

bonita_trimmer@wragge.com 


FEATURES 

Choice of mediator – specialist 

mediators for a specialist job? 

A key choice regarding the 

appointment of a mediator is often 

his or her actual or perceived 

“suitability” for the task. In many 

IP cases an IP specialist seems an 

obvious, sensible and practical 

choice. However, in others, conscious 

detachments from the foibles and 

details of IP law can prove an 

advantage, or at least be perceived by 

lay-clients to be of benefit. Speaking 

from a personal perspective, I have 

always found that a broad-based 

background in IP helps enormously 

in dealing with IP disputes. Such a 

specialist knowledge means that as 

a mediator my exploration of issues 

with the parties and /or their legal 

teams is focused and meaningful. 

It is more difficult for anyone to pull 

the wool over the mediator’s eyes if 

the mediator is knowledgeable. He or 

she is not likely to be blinded by the 

science of a trade mark, patent or 

design right pleading if he can see 

through the legalese and recognise a 

strong/weak case or relevant issues. 

Equally he or she can try and get 

the respective parties to focus 

individually on serious issues which 

may underpin their cases but which 

have not yet been explored in the 

pleadings or complaints currently 

raised by or between the parties. It 

FEATURES 

ADR – a dream or reality? 

Denise McFarland 

There is absolutely no doubt that in many cases, the prospects of an early 

settlement of issues in dispute is both possible and achievable, and for all 

practitioners there are manifest reasons for putting sufficient efforts into 

seeking such resolution. However, it is lamentable that in many cases, a 

promising framework for agreement can unravel, often when it is wholly 

avoidable. In this article Denise McFarland seeks to discuss some of the 

most regular pitfalls and areas of difficulty and suggests ways in which the 

practitioner can try to optimise the chances of reaching successful ADR. 

can be a case of the experienced 

mediator gently encouraging the 

unpleasant business of uncovering 

the rot, and urging parties to 

undertake a true reality check. 

Inevitably it is more difficult for a 

mediator or neutral who has no IP 

experience to undertake this task, 

notwithstanding that he or she may 

have other myriad special skills and 

experience that they can offer to 

the parties. 

In the final analysis, the choice of a 

mediator is very much picking the 

right horse for the right course, 

recognising that the course may 

change over time (ie, during the 

process of the mediation) and also 

that what may appear a perfectly 

sound horse can prove to be 

somewhat lame at the end of the day! 

A second common problem when 

seeking agreement to the nomination 

of a mediator is whether or not the 

name proposed is seen by all parties 

as being sufficiently independent. 

Very often tempers run high and 

parties will shy and baulk at the most 

minor issue, and in many instances I 

have seen otherwise sane individuals 

take utterly silly points over a 

perceived bias or lack of impartiality. 

It is important to therefore thrash out 

any possibility of hidden conflicts or 

perceived partisanship early on. One 

suitable compromise can be to leave 

the final nomination to an 

independent third party, or chance. 

In one case, after several rounds of 

wrangling, the parties agreed to allow 

one of the parties’ bank managers to 

pick out of the hat a name, from a 

pool of mediators, none of whom 

were initially agreed upon by both 

parties. This is an extreme step to 

take, but it avoided the rabid aversion 

of both sides to any name on the 

simple basis that it was picked by 

the other side! 

A genuinely consensual process 

There is an old adage that you can 

take a horse to water but you can’t 

make him drink. This has a relevance 

and resonance in many instances. 

If any party or any decision-maker 

within a team comes to the mediation 

or settlement meeting with extreme 

reluctance or having been forced to 

do so there is usually a poor prospect 

of moving forward to a resolution. 

Clearly much depends on the 

physiology of an individual and 

other commercial factors, but , 

notwithstanding a signature on a 

mediation agreement , confirming 

that all the parties agree to the 

process, if there is a deep-seated 

annoyance or resentment one can be 

faced with an uphill struggle before 

the days proceedings begin. It is 

therefore to be urged that you try 

to engage your client and all the 


elevant team members early on in 

the process of preparation for the 

ADR forum and understanding that 

it is their day. 

Lawyers – learn to stand back 

As a legal professional with your 

client’s best interests at heart, it is 

natural that you will be likely to try 

and protect your client(s) and speak 

for them. However, try to recognise 

that there can be times when 

stepping back and allowing your 

client to have his own air time is 

important. He or she may want to 

address the mediator and the parties 

during the opening joint session or a 

mediation, or may wish to put their 

point across in their own way at any 

stage during an ADR process. Some 

people will be so passionate about 

the issues that their comments and 

address may seem inflammatory or 

irrelevant to any core issues, to us as 

lawyers, but the cathartic effect of 

getting matters off their chest can be 

greatly beneficial. Remain ready and 

able to step in an stop ill-advised 

ramblings or purely defamatory or 

inflammatory comments, but do 

consider carefully with your client in 

advance of the meeting whether he 

or she wishes to advocate his or her 

own case, and /or when and how they 

would like their opportunity to speak, 

or draw on a flip chart, or show a 

video clip, or make a practical 

demonstration, etc. 

Costs implications 

There can be bitter wrangles about 

costs sharing, and responsibility for 

the costs of and occasioned by the 

mediator or other form of ADR, after 

the event, especially if the process 

does not achieve settlement. In order 

to minimise (insofar as possible) 

such additional discord, ideally, the 

mediation agreement (or other 

confirmation of process) should make 

clear provision for costs. These will 

include the costs of the mediator (if 

applicable) as well as any copying 

costs, attendance fees, etc. Nowadays 

it is also recommended that the 

parties seek to agree in advance 

that if resolution is not achieved , 

but litigation ensues, then are 

the mediation/ADR costs to be 

considered “costs in the proceedings” 

or are they to be expressly excluded? 

If resolution is achieved then clearly it 


FEATURES 

is wise to include as part of the 

settlement terms, a clear indication 

of such matters/apportionment/ 

payment periods, etc. 

Wars of attrition & other dirty tricks 

Physicists will tell us that gas will 

expand to occupy the entire volume 

of fixed space provided, and we all 

know from bitter practical experience 

that coffee spilled a distance from a 

computer keyboard will, inevitably, 

expand its flow rate and distance to 

ensure full ingress into the said 

keyboard… Likewise, it can be said 

with a high degree of certainty that 

any negotiations will tend to over-fill 

any allocated time. It is therefore in 

my view unhealthy, unhelpful and 

unwise to embark on any ADR 

process without at least the bare 

bones of an outline timetable being 

discussed and/or agreed upon. This 

should not be set in stone and should 

permit for flexibility, but it is useful to 

have potentially fixed point at which 

stumps can be drawn, ie 6 or 7 pm if 

there is no reasonable prospect of 

reaching a useful goal if matters 

nevertheless drag on beyond that 

time. As a matter of common sense, 

all parties should be encouraged early 

on in proceedings to identify if they 

have any practical end point (for 

example, flights home or child 

minding deadlines). 

The conducting person, be it a 

mediator or other neutral or the 

host party, should also ensure that 

sufficient break points are provided 

for the parties, and, if the weather 

permits, the parties are positively 

poked out of the door for an enforced 

breath of fresh air; otherwise, the 

(literal) “hot house” atmosphere of 

the (usually) small rooms devoted 

to the parties conspire with the 

frustration felt by many of the parties 

to create a tension that is not at all 

conducive to reasonable negotiation. 

Participants should also be generally 

encouraged to eat and drink 

sufficiently, and not feel boxed into 

the cramped room in which the air 

conditioning has failed (or, as they 

often believe, been deliberately 

switched off by the opposing parties 

whose offices are playing host for 

the event). In cases where I am the 

appointed mediator I always try and 

ensure parity of room size, location or 

Try to recognise that 

there can be times 

when stepping back 

and allowing your 

client to have his own 

air time is important. 

He or she may want to 

address the mediator 

and the parties during 

the opening joint 

session or a mediation, 

or may wish to put their 

point across in their 

own way at any stage 

during an ADR process. 

Some people will be 

so passionate about 

the issues that their 

comments and 

address may seem 

inflammatory or 

irrelevant to any core 

issues, to us as lawyers, 

but the cathartic effect 

of getting matters 

off their chest can be 

greatly beneficial. 


FEATURES 

other features and facilities, if 

possible. Or at least suitability for the 

parties in issue, and if there is a real 

gripe, then I suggest that at a half 

time point in the day, the rooms 

are swapped between them. 

There is little that is more likely to 

create hostility at the outset than the 

visiting party feeling snubbed or 

disrespected by the host party 

allocating the visitors the tiny room, 

by the lavatories, with a broken coffee 

machine and wobbly chairs. The 

mediator should be alert to such 

matters as, small though they may 

seem in the overall scheme of things, 

if they are likely to dilute the chances 

of successful resolution they should 

be addressed – early on! So, please try 

to be alert to your client’s concerns in 

this (or any other) regard and do 

convey these matters immediately to 

the attention of the mediator, or your 

opposite number and request that 

they are addressed to your client’s 

satisfaction. 

The mediator is not God 

Neither is he or she a judge, or a 

jury or a headmaster or parent. It is 

often the most difficult part of the 

mediator’s role for otherwise 

judgmental and forceful personalities, 

who may spend their professional 

lives being in charge and being paid 

for their opinion, to step back and 

adopt the mantle of the neutral, the 

facilitator, the non-judgmental guide 

and assistant. But, however, difficult it 

may be, a trained mediator must be 

able to inhabit the role and not slide 

into a God-mode. Parties should be 

wary of mediators who lose their 

temper or seek to unilaterally impose 

his or her own views of merits. The 

mediator who begins a joint or 

individual session with the words 

“In my judgment …..” or “In my 

considered opinion, having reviewed 

the evidence…” is likely to have 

confused his or her role in this forum 

with his or her role as a deputy 

judge or master! 

Outside the box 

In my experience of mediations and 

ADR meetings (both as the appointed 

mediator and also as counsel for one 

or other party) the best chances of 

a positive outcome are when the 

parties approach the process on the 

basis that all is in nothing is out. In 

FEATURES 

other words, there are either no or 

few issues that are “over my dead 

body” matters, and any and all 

grievances, concerns and irritations 

are borne in mind, and are ready to be 

deployed. Too often, litigators, 

lawyers and other legal professionals 

tend to be overly focused and tied 

to the familiar and well trodden 

delineation of issues that we 

regularly see in pleadings, evidence, 

assignments, contracts, etc. We can 

lose sight of the other (often equally 

or more) important factors and 

features which can make or break the 

landscape of a successful settlement. 

Any form of ADR is an ideal time to 

get all the issues out and on the table. 

It really is a time when scores can be 

settled or at least attempts can be 

made to clear the decks. 

The adversaries may be ex-trading 

partners or have a potential for doing 

business in the future, but they may 

have allowed old wounds, perceived 

injustices or simply silly prejudices to 

confound the fruition of such cooperative 

commercial enterprise. 

As an objective observer, an effective 

mediator can try and identify and 

tease out such issues, but in order to 

ease the process you can ensure that 

your client understands that the 

mediation or meeting is the time 

when his soap box should be dusted 

off and climbed onto, if he wishes. It is 

not a time to seek to gag your client 

or limit his exploration of issues to 

those that are rigidly set out in the 

pleadings, letter before action, etc. 

Go for bronze 

All too often litigants can become 

fixated on a single goal. They seem 

to forget that achieving the bronze 

medal instead of the gold is still a 

high achievement. In other words, 

seeking to resolve just some of the 

issues, even if not all can be of 

enormous benefit. Not only may the 

trial costs be minimised, but the 

scope of any disclosure, evidence, 

and witness statements can be 

slashed with the commensurate 

saving in court time and focus on 

more meritorious parts of a case. 

Be creative 

Gordian knots can be cut with the 

most surprising scissors. Some of the 

most viciously entrenched battles 

occur between family members. 

Often they are the cases where there 

is the most vitriol poured out and 

never more so than when one or 

other party wants money to be paid 

by the other. The sums sought may 

be modest and they may relate to 

perfectly reasonable legal costs claims 

or unpaid invoices over which there is 

no real dispute, however, the party 

from whom the cheque is sought 

would “rather swallow cyanide than 

pay a penny to that b***** !”. 

The same person can be perfectly 

amenable to pay much larger sums 

than the quoted penny to a charity or 

good cause of either his choosing or 

the choice of the other party. This 

“payment to third party” ploy has 

regularly worked wonders to 

overcome a seemingly unyielding 

problem. Once the concept is 

accepted, the parties can, jointly, 

become quite enthused with the feelgood 

factor of doing good and can 

end up with joint press releases and 

nice publicity photos associated with 

the handing over of the giant cheque. 

In a similar vein, it is unwise to 

underestimate the power of the 

simple, but sincere apology. A 

handshake can make up for a lot. 

A written acknowledgement 

of wrongdoing – even if kept 

confidential – can be a hugely 

powerful and tangible mark of 

vindication to an aggrieved party. 

You don’t get if you don’t ask 

Whilst being mindful of seeking 

realistic achievements, equally, if 

you or your clients talk yourselves 

out of floating an issue or asking for 

clarification or seeking a concession, 

for fear of rejection or failure, then 

please re-think. Neither the mediator 

nor the other party are clairvoyant. 

They cannot read your mind or that 

of your client. There is never a better 

time than a mediation or ADR forum 

to lay all your cards on the table and 

try and explore all options, no matter 

how far-fetched they may seem. You 

may be surprised by the warmth of 

the reception of the other party! 

Good luck with gaining successful 

resolutions of all your clients’ 

disputes, by whatever (fair!) means. 

Denise McFarland, 

Three New Square IP Chambers, 

clerks@3newsquare.co.uk 


ITMA Lisbon 2009 

GETTING THERE 

HOW TO GET AROUND 

PLACES TO VISIT 

MUSEUMS 

PLACES OF INTEREST 

SHOPPING 

RESTAURANTS 

CLIMATE 



FEATURES 

ITMA LISBON 2009 

An introduction 

to Lisbon 

The capital of Portugal is a legendary city with over 20 centuries of 

history. Lisbon was under Roman rule from 205 BC, when it was 

already 1000 years old. Julius Caesar made it a municipium called 

Felicitas Julia, adding to the name Olissipo. Ruled by a series of 

Germanic tribes from the 5th century, it was captured by Moors in 

the 8th century. In 1147, the Crusaders under Afonso Henriques 

reconquered the city for the Christians and since then it has 

been a major political, economic and cultural centre. Due to its 

economic output, standard of living and market size, the Grande 

Lisboa (Greater Lisbon) region is considered the second most 

important financial and economic center of the Iberian Peninsula. 

From the airport to the city centre 

Lisbon’s airport, known as Portela 

Airport, is located about eight 

kilometers from the city centre. The 

main ways to get to the centre are 

either by taxi (average cost €10) or by 

bus. If you wish to visit places outside 

Lisbon, for instance, Sintra, Estoril or 

Cascais, it is possible to rent a car at 

the airport (where all the major 

companies have an office). 

How to get around 

Lisbon’s public transport network is 

extremely far-reaching and reliable 

25 de Abril Bridge 

and has the Metro (www.metrolisboa.pt) 

as its main artery, connecting the city 

centre with the upper and eastern 

districts, and now reaching the 

suburbs. Bus, funicular and tram 

services have been supplied by the 

Companhia de Carris de Ferro de 

Lisboa (Carris), for over a century. 

A traditional form of public transport 

in Lisbon is the tram. Originally 

introduced in the 19th century, the 

trams were originally imported from 

the US and called americanos. The 

original trams can still be seen in the 

Museu da Carris (the Public Transport 

Museum). Other than on the modern 

Line 15, the Lisbon tramway system 

still employs small (four wheel) 

vehicles of a design dating from the 

early part of the 20th century. These 

distinctive yellow trams are one of the 

tourist icons of modern Lisbon, and 

their size is well suited to the steep 

hills and narrow streets of the 

central city. 

There are four commuter train lines 

departing from Lisbon: the Cascais, 

Sintra and Azambuja lines (operated 

by Comboios de Portugal (CP)), as 

well as a fourth line to Setúbal 

(operated by Fertagus) crossing the 

Tagus river over the 25 de Abril 

Bridge. The major railway stations 

are Santa Apolónia, Rossio, Gare do 

Oriente and Cais do Sodré. 

The city is connected to the far side of 

the Tagus by two important bridges: 

• The 25 de Abril Bridge, 

inaugurated (as Ponte Salazar) on 

August 6, 1966, and later renamed 

after the date of the Carnation 

Revolution, is the longest 

suspension bridge in Europe and 

although made by the same 

engineers as the Golden Gate 

Bridge in San Francisco, it is not, 

as thought by some, a replica (the 

Golden Gate Bridge does not 

have X braces). 

• The Vasco da Gama Bridge, 

inaugurated on May 1998 is, at 

17.2 km (10.7 mi), the longest 

bridge in Europe. 


Places to visit 

Belém - along the Rio Tejo (Tagus 

River), is the historic neighbourhood 

of Belém. Its prime attraction is 

the grand Jerónimos Monastery. 

Construction started in 1501, and 

took 70 years to complete. Most of 

the construction costs were financed 

through the spice trade. It is a prime 

example of what is called Manueline 

architecture, with inspiration brought 

back from the explorations, as well as 

being influenced by the Gothic and 

Renaissance periods. Other 

attractions within the area are: 

• Padrão dos Descobrimentos 

(Monument of the Discoveries), 

built in mid-20th century, during 

Estado Novo dictatorial regime 

• Belem Cultural Centre, example 

of Portuguese contemporary 

architecture, finished in 1994 

• Belem Tower, an ex-libris of the 

city, built in the 16th century 

• Belem Palace, 18th century palace, 

which is now the official residence 

of the President of the Republic 

• Coach Museum, displaying most 

relevant and spectacular carriages 

from 17th to 19th century. 

Alfama - The oldest district of the city 

is Alfama, close to the Tagus, which 

has made it relatively unscathed 

through the various earthquakes. 

The Castle of São Jorge and the 

Lisbon Cathedral are located in this 

area. Other attractions include: 

• Monastery of São Vicente de Fora 

• Church of Santo António 

• Santa Luzia Belvedere 

• Largo das Portas ao Sol 

One of the old Lisbon tramcars 



Monument of the Discoveries (detail) 

Downtown Lisbon (Baixa) - The heart 

of the city is the Baixa (downtown) or 

city centre; this area of the city is 

being considered for UNESCO World 

Heritage Site status. The Baixa is 

organised in a grid system and a 

network of squares built after the 

1755 Lisbon earthquake, which 

levelled a great portion of the 

medieval city. Other monuments 

in this area include: 

• Praça do Comércio (Commerce 

Square) and Rossio Square: the 

oldest and historically most 

important squares in Lisbon 

• Church of Nossa Senhora da 

Conceição Velha, which has a 

beautiful manueline façade 

• Church of São Domingos 

• Restauradores Square 

• Elevador de Santa Justa, an 

elevator (lift) in Gothic revival 

style, built around 1900 to 

connect the Baixa and Chiado. 

Chiado - the trendiest area in the city, 

Chiado is home to cafes, galleries, 

bookshops and relevant examples of 

18th century religious architecture. 

Attractions include: 

• Basilica dos Mártires 

• Brasileira Cafe 

• Carmo Convent 

• Church of Corpo Santo 

• Church of Nossa Senhora do Loreto 

• Museu do Chiado, which houses 

most important works of 

Portuguese contemporary art 

• The richly-decorated Church of 

São Roque is located nearby 

Bairro Alto - Bairro Alto (literally 

upper quarter in Portuguese) is an 

area of central Lisbon. It functions 

as a residential, shopping and 

entertainment district. Today, the 

Bairro Alto is the heart of Lisbon’s 

youth and of the Portuguese capital’s 

nightlife. Lisbon’s punk, metal, goth, 

hip hop and reggae scenes all have 

the Bairro as their home, due to the 

number of clubs and bars dedicated 

to each of them. The fado, Portugal’s 

national song, still survives in the new 

Lisbon’s nightlife. The crowd is a mix 

of local and tourist and almost 

anything else imagined. 


FEATURES 

Typical picturesque view in downtown Lisbon 

Parque das Nações - site of the 1998 

World Expo, which includes Lisbon’s 

oceanarium entirely dedicated to the 

oceans and their conservation. 

Museums 

• The National Museum of Ancient 

Art 

• The Museum of Portuguese-style 

tile mosaics (Museu do Azulejo), 

• The Calouste Gulbenkian 

Foundation 

• The Lisbon Orient Museum 

• Chiado Museum 

• Coach Museum 

Places of interest 

• Eduardo VII Park 

• Monsanto Park (the largest 

city park) 

• Monastery of São Vicente de Fora 

and the National Pantheon 

Typical 18th Century facade 


• Basílica da Estrela 

• Elevador Santa Justa 

• Castelo São Jorge (Castle) 

• Lisbon Cathedral 

Shopping 

• Colombo Shopping Center 

(Benfica - metro blue line) 

• Vasco da Gama Shopping Center 

(Parque das Nações - metro red 

line) 

• Amoreiras Shopping Center 

(Campolide) 

• Chiado (metro blue line) 

• El Corte Inglés (metro blue line) 

Restaurants 

Lisbon boasts a wide range of 

restaurants to suit most tastes and 

budgets, from traditional Portuguese 

to international cuisine. Many have 

striking interiors such as Tavares Rico, 

Casa do Alentejo, and Cervejaria 

Trindade, while others have stylish 

contemporary décor as is the case 

with the trendy Bica do Sapato and 

Alcântara Café. And in a city known 

for its hilltop vistas, many offer superb 

views as you eat, like Chapitô, Casa 

do Leão, Tágide, and Via Graça. And 

don’t forget that Lisbon also has 

some of the best-value eateries 

of any European city along with 

sophisticated, more expensive 

restaurants such as the Michelinstarred 

Eleven. The Bairro Alto 

district has the biggest cluster of 

good restaurants (Pap’Açorda for 

Portuguese cuisine and Casa Nostra is 

a good choice for Italian), while Docas 

and Parque das Nações offer some 

international options for the more 

unadventurous palates. Vegetarians 

The Vasco da Gama Bridge 

have some good choices in a few 

relatively recent restaurants - Jardim 

dos Sentidos has a pleasant 

ambience, and Terra has varied 

dishes that are also excellent 

selections for vegans. 

For more information 

http://www.golisbon.com/food/ 

restaurants. Bom apetite! 

Climate 

Lisbon has a Mediterranean climate 

that is strongly influenced by the Gulf 

Stream, giving it one of the mildest 

climates in Europe. The city is sunny 

throughout the year. Summers are 

warm and dry with average daytime 

temperatures of 26–29°C, falling to 

16–18°C at night. Winters are cool and 

rainy with temperatures around 8– 

15°C, while spring and autumn are 

generally mild, or even warm during 

daytime. Extreme temperatures may 

reach 36°C in some of the warmest 

summer afternoons and 2°C in the 

coldest winter mornings. From May to 

September the weather tends to be 

settled most of the time with blues 

skies and some wind as well. 

Special note - when visiting Lisbon, 

spending a night at a “casa de Fado” 

or Fado restaurant is an essential 

experience. There are many in the 

Bairro Alto district, but the most 

authentic are found in Alfama. 

Consider Clube de Fado or Parreirinha 

de Alfama in Alfama, but for the very 

best Fado experience, head to Senhor 

Vinho in the Lapa district. 

Gonçalo Paiva e Sousa, JE Dias Costa 

Lda, Lisboa, jedc@jedc.pt 


Although there is nothing particularly 

new about this feature (users of 

LinkedIn, MySpace and Twitter have 

benefited from personalised URLs 

for some time now), the enormous 

reach of the social networking 

phenomenon that is Facebook is no 

doubt cause concern for brand 

owners. 

The username feature 

Facebook has announced that the 

new feature has been rolled out in 

two phases a few weeks apart – the 

first for users whose Facebook pages 

were active before 31 May 2009 and 

who have at least 1,000 friends. The 

second phase enables all other users 

to select their chosen username. 

Usernames are allocated on a first 

come, first served basis and users will 

be able to select a name (which will 

be non-transferrable) chosen by 

Facebook or of their own choosing. 

The delay between the two phases 

and the policy of non-transferability 

were intended, as Facebook argues, 

to prevent abusive registrations and 

the so-called practice of ‘name 

squatting’ by the creation of fake 

accounts. 

Protections 

In addition, there are certain 

protections envisaged by Facebook 

which may help to preserve the rights 

of trade mark owners. Facebook has 

already reserved the right to “remove 

and/or reclaim any username at any 

time for any reason” which may 

provide them with an escape strategy 

for usernames which infringe trade 

mark rights. Usernames which are 

chosen must also comply with 

Facebook’s Statement of Rights 

and Responsibilities which contain 

restrictions on the posting of material 

and “taking any action” which may 

infringe another’s rights. 

Of particular note is a form for rights 

owners to reserve their username and 

an automated ‘IP infringement form’ 

available on the Facebook blog which 


FEATURES 

Facebook: guidance for 

trade mark owners 

announced the launch of the feature 

(www.facebook.com/copyright.php? 

noncopyright_notice=1). The form 

provides registered rights owners 

with an ‘after-the-event’ opportunity 

to report an infringement of their 

rights and request formal removal of 

the infringing username. Significantly, 

Facebook do not promise to remove 

the name on receipt of this request. 

IP commentators remain concerned 

over whether the proposed system 

will provide anything like an 

adequate protection for brand 

owners. Even if the resolution process 

works successfully, the system 

envisaged by Facebook takes no 

account of the complexity of trade 

mark systems which permit identical 

marks to be registered for dissimilar 

goods. At a further level of generality, 

there will be many who feel 

uncomfortable at the creation of 

what amounts to a private monopoly 

(particularly after the host of domain 

suffixes that have been created over 

recent years to add still further to the 

burdens of those seeking to protect 

their rights. 

Options for trade mark owners 

Whilst at present the usernames will 

only function as ‘locators’ for each 

user’s profile, Facebook has expressed 

a desire to develop “more ways” to 

exploit username URLs in the future. 

Considering the unknown but 

potentially vast scope of any future 

exploitation of username URLs, it may 

be best to adopt a ‘belt and braces’ 

approach by taking full advantage of 

Facebook’s protection systems in the 

following ways: 

1. Where your business has a trade 

mark and a Facebook account 

that was live before 31May 2009: 

• Fill in the online reservation form 

today at www.facebook.com/ 

help/contact.php?show_form=us 

ername_rights). The information 

required includes a contact email, 

company name and title, details 

of your mark and its registration 

At one minute past midnight on 

Saturday, 13 June 2009, 200 million 

Facebook users worldwide were given 

the opportunity to sign up for a URL 

incorporating their chosen username. 

number (note that unregistered 

rights are still unprotected). 

• Request a username which is in 

line with your business and/or 

trade mark name. 


mark but does not yet have a 

Facebook account: 

• Fill in the online reservation 

form (see link above). 

• Sign up for a Facebook account 

as soon as possible. 

• Apply online for a username 

which is in line with your business 

and/or trade mark name 


mark but does not have a 

Facebook account and another 

person has already registered your 

trade mark as their username: 

• Fill in the automated IP 

infringement form 

(www.facebook.com/copyright.ph 

p?noncopyright_notice=1). The 

information required includes 

contact information, details of 

how the right was infringed and 

confirmation that the person 

contesting the username is the 

owner of the mark. 

• Sign up for a Facebook account 

as soon as possible. 


mark and a Facebook account 

that was live before 31 May but 

another person has already 

registered your trade mark as 

their username before you: 

• Fill in the IP infringement form 

(see link above). By following 

these procedures, rights owners 

will have the best prospect of 

maintaining protection of their IP 

rights and may even be able to 

take advantage of the business 

perks of Facebook by enjoying 

contact with millions of users. 

Chris McLeod & Carl Rohsler, 

Hammonds LLP 

chris.mcleod@hammonds.com 

carl.rohsler@hammonds.com 


CASE COMMENT 

Antony Craggs 

Background 

On 14 September 2005, BORCO- 

Marken-Import Matthiesen GmbH 

(BMIM) filed an application for a 

Community Trade Mark for ‘α’ in 

respect of “alcoholic beverages 

(except beers), wine, sparkling wines 

and beverages containing wine” in 

Class 33. In its decision on 31 May 

2006, the OHIM examiner rejected 

the application for registration on the 

ground of lack of distinctive character 

(Art 7(1)(b) of the Regulation). The 

examiner reasoned that the sign in 

issue constituted a reproduction of 

the Greek lower case letter ‘α’ and 

that Greek-speaking purchasers 

would not understand the sign 

to be an indication of origin. 

BMIM appealed the decision. 

Board of Appeal’s Decision 

On 30 November 2006, the Fourth 

Board of Appeal of OHIM dismissed 

BMIM’s appeal, concluding that the 

sign was devoid of distinctive 

character and reasoning that: 

• single letters have no distinctive 

character where no graphical 

elements creating an overall 

graphical effect have been added; 

in essence, by definition, a letter 

without modification is incapable 

of being distinctive; and 

• single letters, as fundamental 

elements, must remain available 

to all as a ‘general reserve’ for 

the purposes of identification, 

description or other uses; in 

support of this it relied on Case 

CASE COMMENT 

Single letter trade mark 

can be registered says CFI 

BORCO-Marken-Import Matthiesen GmbH & Co KG v Office for Harmonisation in 

the Internal Market, Case T-23/07, Judgment of the Court of First Instance. 

The CFI has: a) annulled the Board of Appeal's ruling that the sign 

‘α’ lacked distinctive character for wines and alcoholic beverages 

under Article 7(1)(b) of the Community Trade Mark Regulation 

(40/94/EEC) (the Regulation); and b) overruled the Board of 

Appeal’s dicta that a letter (without graphic modification) is, by 

definition, devoid of distinctive character. Antony Craggs reports. 

C-104/01 Libertel [2003] ECR I- 

3793 in which it was 

acknowledged that it is in the 

public interest to not unduly 

restrict the availability of colours 

for other economic operators. 

CFI decision 

BMIM subsequently appealed to the 

CFI asking it to annul the contested 

decision. BMIM argued that, as Art 4 

of the Regulation states that marks 

may consist of letters (“[a] Community 

trade mark may consists of any signs 

capable of being represented 

graphically … including … letters 

…”), it cannot be assumed that, by 

definition, such signs lack distinctive 

character. Further, BMIM argued that 

the effect of assuming that letters, by 

definition, lack distinctive character, 

would be to ignore the defence that a 

trade mark can be used descriptively 

(Art 12 of the Regulation). BMIM also 

noted that a rule that letters were 

incapable of registrations was 

nonsensical given that colours 

were capable of registration. 

The CFI upheld BMIM’s appeal and 

concluded that: 

• a letter is prima facie capable of 

being a trade mark provided that 

it is capable of fulfilling the trade 

mark’s function of identifying the 

origin of those goods or services; 

ie it is distinctive in a “trade mark” 

sense; 

• the distinctiveness of the letter 

must be assessed by reference: a) 

to the goods or services in respect 

of which the registration is sought; 

and b) by the perception of the 

relevant persons, namely the 

consumers of the goods or 

services; 

• therefore, the question which 

the Board of Appeal should have 

asked (but failed to) was whether 

the sign ‘α’ was capable of 

distinguishing, in the eyes of 

the average Greek-speaking 

consumer, BMIM’s alcoholic 

beverages from others of a 

different origin (it noted that 

a minimum degree of 

distinctiveness is sufficient); and 

• the CFI dismissed the Board of 

Appeal’s reasoning that, unless 

graphically modified, a single 

letter had no distinctive character, 

noting that nothing within 

the Regulations states that 

registration of a sign as a trade 

mark is conditional upon a finding 

of a specific level of creativity or 

artistic imaginativeness. Further, 

the CFI noted that, while the court 

had acknowledged in Libertel that 

it is in the public interest to not 

unduly restrict the availability of 

colours for other economic 

operators, the court had found 

that a colour was nevertheless 

capable of distinctive character. 

The CFI ordered that OHIM reexamine 

the application in light of 

the judgment. 

Antony Craggs, Wragge & Co LLP, 

anthony_craggs@wragge.com 


CASE COMMENT 

Wheels fall 

off Daimler 

v Sany claim 

Facts 

Daimler, the well known car 

manufacturer, had brought 

proceedings against Sany, the 

Chinese parent company of a group 

which designs, manufactures and 

sells heavy construction machinery. 

The claim was based on six of 

Daimler’s UK trade mark registrations 

and CTMs for their 3-pointed star 

device, registered in (among others) 

classes 7 and 12 (see top left & centre). 

Daimler claimed that Sany’s use 

of the Sany logo (depicted above 

right) amounted to trade mark 

infringement under s10(2) and s 

10(3) TMA, and passing off. Sany 

counterclaimed for partial revocation 

of the trade marks relied on by 

Daimler on grounds of non-use in 

relation to some of the goods 

covered by Daimler’s class 7 and 

12 specifications. 

Daimler applied for summary 

judgment on the s10(2) part of its 

claim, seeking an injunction against 

Sany in relation to certain goods. 

Decision 

The deputy judge dismissed Daimler’s 

application in its entirety, ruling that 

in the circumstances the claim was 

June 2008 

CASE COMMENT 

Daimler AG v Sany Group Co Ltd, High Court (Mr Geoffrey Hobbs QC sitting as a Deputy Judge), 14 May 2009. The deputy 

judge dismissed the application by Daimler AG for summary judgment on its s10(2) Trade Marks Act 

1994 (TMA) claim against Sany Group Co Ltd. The evaluation of similarity which needed to be made 

for the purposes of determining Daimler’s claim based on the contended existence of a likelihood of 

confusion should be made in the light of the whole evidence intended to be adduced at trial. The 

deputy judge identified a number of questions which could not properly be assessed on a summary 

basis. Of particular interest to practitioners are the deputy judge’s comments on the effect of using 

class headings in the specification of a registered trade mark. Nick Aries reports. 

inappropriate for summary 

assessment for a number of reasons. 

One of the reasons for the decision 

was that the goods for which the 

trade marks relied on had actually 

been used were not identified with 

sufficient precision in the registrations 

as they currently stand. The process of 

revision of the registrations pursuant 

to the counterclaim would depend 

on: (i) the relevant date at which the 

wording of the specifications should 

be interpreted (referring to Reed v 

Reed [2004] RPC 40, p.767 at 

paragraphs 46 to 50 per Jacob LJ); 

and (ii) the way in which 

specifications should be interpreted 

where goods are identified using class 

headings for classes 7 and 12 of the 

Nice Classification. The first question 

was relevant because some of 

Daimler’s UK registrations dated back 

to the 1930s; the second question 

applied because two of Daimler’s UK 

registrations and both CTMs used 

wording from the class headings of 

the relevant Classes in the Fourth 

Schedule to the TM Rules 1938 and 

the Nice Agreement, respectively. 

Regarding the second question, the 

deputy judge identified a divergence 

in the practices of Community Trade 

Marks Office at OHIM and the UK IPO. 

OHIM’s practice, as set out in OJ OHIM 

2003, 1647, is to interpret the use of 

class headings as a claim to all goods 

or services falling within the pertinent 

class, and the use of a general 

indication mentioned in the class 

heading as a claim to all goods or 

services falling under the general 

indication. In contrast, the UK Trade 

Marks Registry Work Manual takes a 

literal approach to what is covered by 

class headings (e.g. the heading for 

Class 15 is ‘musical instruments’; 

music stands, although included in 

the class, would not be covered by 

the scope of the heading). This gave 

rise to a real issue as to the effect of 

allowing class heading wording to 

remain in Daimler’s registrations, an 

issue which Daimler could not avoid 

by electing to rely only on goods for 

which it contended it had clearly 

used the mark. 

Comment 

The deputy judge considered there 

was not room for the divergent 

approaches of OHIM and the UK IPO 

to co-exist within the framework 

established for the coordinated 

protection of trade marks in the EU. 

Nick Aries, Bird & Bird LLP, 

nick.aries@twobirds.com (Bird & Bird 

LLP represented Sany) 


CASE COMMENT 

Background 

In September 2002, Vivartia applied 

to register the mark ((right) as a CTM 

for goods in Class 30. Kraft opposed 

the application on the grounds that 

the Vivartia mark was similar to and 

therefore likely to be confused with 

Kraft’s own earlier CTM (far right)) 

registered in Classes 29 and 30. 

Both the Opposition Division and 

OHIM’s Board of Appeal found that 

there was a likelihood of confusion 

between the Vivartia mark and Kraft’s 

earlier registered mark. Vivartia 

appealed to the CFI to annul the 

contested decision. 

Vivartia’s arguments 

Vivartia raised several arguments 

in its claim that the two marks 

were visually, phonetically and 

conceptually different, including 

the following: 

• the marks were very different 

visually on the basis that the 

Vivartia mark had two other 

figurative elements that were of 

equal prominence to the word 

“Milko” and the “ΔΕΛΤΑ” 

component was a dominant 

element of the Vivartia mark; 

• European consumers would 

pronounce the “ΔΕΛΤΑ” 

component or, at least read it as 

the Latin word “Delta”, and so the 

overall phonetic impression of the 

CASE COMMENT 

Vivartia ABEE Proïonton Diatrofis kai Ypiresion Estiasis, formerly Delta Protypes Viomichania Galaktos AE v Office for 

Harmonisation in the Internal Market (Trade Marks and Designs). The CFI has upheld an opposition to a CTM 

application to register a Community trade mark for MILKO and device in the case of Vivartia ABEE 

Proïonton Diatrofis kai Ypiresion Estiasis (Vivartia) v Office for Harmonisation in the Internal Market 

(OHIM) with Kraft Foods Schweiz Holding AG intervening (Kraft). The ground of the opposition 

was that there was a likelihood of confusion between the mark applied for and an earlier registered 

mark based on the similarity between them. Rebecca Plumbley reports 

Milko or Milka? - it’s all Greek to the CFI 

Vivartia mark was “Milko delta” 

and therefore different from the 

phonetic impression created by 

Kraft’s mark; 

• from a conceptual viewpoint, the 

term “Milko” was descriptive and 

Kraft’s mark did not have any 

further conceptual meaning. As 

the Vivartia mark contained the 

“ΔΕΛΤΑ” component, this gave it a 

very different meaning from the 

Kraft’s mark. 

Vivartia submitted that due to the 

above differences there was no 

similarity in the overall impression 

created by the two marks and any 

resemblance that there may be 

between the marks was not sufficient 

to give rise to a likelihood of 

confusion. 

Decision 

Similarity 

Vivartia’s mark (left) and 

Kraft’s mark (above) 

The CFI confirmed that although the 

average consumer normally perceives 

a mark as a whole and does not 

analyse its various details separately, 

one or more components of a 

composite mark may, in certain 

circumstances, dominate the 

overall impression conveyed to 

the relevant public. Where all the 

other components of the mark are 

negligible the assessment of similarity 

can be carried out solely on the basis 

of the dominant element. 

In the Vivartia mark, the word “Milko” 

was more distinctive then the other 

components as it was the largest 

component and was located at the 

top of the Vivartia mark. This made it 

more likely to attract the attention of 

the relevant public when compared 

with the “ΔΕΛΤΑ” component (which 

the CFI found had a position of 

secondary importance due to its 

size and positioning) and therefore it 

was the word “Milko” that would be 

noticed and remembered. The 

similarity between the words “Milko” 

and “Milka” made the marks very 

similar visually. 

The relevant public (being ordinary 

consumers in the European Union) 

would perceive the milkmaid element 

of the Vivartia mark as ornamental as 

it was not especially original or 

fanciful and so was unlikely to 

attract their attention. 

There was phonetic similarity 

between the words “Milko” and 

“Milka” and the addition of the 

“ΔΕΛΤΑ” component did not call into 

question the similarities of the marks. 

Even if the relevant public were to 

CFI confirmed the Board of Appeal’s finding that the word elements “Milka” 

and “Milko” were invented words with no meaning in the official languages 

of the Community. Therefore the relevant public would associate the word 

element “Milko” with “Milka” because those words did not have any meaning. 

32 ITMA Review June 2008

perceive “ΔΕΛΤΑ” as a Greek word, a 

significant part of the public would 

not know how to pronounce it and 

would accordingly tend to omit 

referring to it when talking about 

the Vivartia mark. 

With regard to conceptual 

comparison the CFI confirmed the 

Board of Appeal’s finding that the 

word elements “Milka” and “Milko” 

were invented words with no 

meaning in the official languages 

of the Community. Therefore the 

relevant public would associate the 

word element “Milko” with “Milka” 

because those words did not have 

any meaning. 

The likelihood of confusion 

Kraft was able to present evidence to 

the CFI showing that its trade mark 

had obtained a distinctiveness 

enhanced through its use in the EU. 

The CFI concluded that in the context 

of the overall assessment of the 

likelihood of confusion, the degree 

of similarities of the marks and the 

degree of similarities of the goods 

covered by them, were sufficiently 

high to conclude that there was a 

likelihood of confusion on the part 

of the public between the marks. 

This was more likely because of the 

high degree of distinctiveness of 

earlier mark. 

The CFI found that the differences 

claimed by Vivartia were not 

sufficient to overcome the similarity 

between the two marks and so there 

was a likelihood of confusion on the 

part of the relevant public between 

the Vivartia mark and Kraft’s earlier 

registered mark. 

Comment 

Although the decision in this instance 

did not produce any particular 

controversy as it was in line with the 

anticipated outcome, the case does 

aid in showing how the courts look 

at and assess the dominant elements 

of a trade mark and in particular it 

highlights the value of distinctiveness 

through use and asserting this in inter 

partes proceedings. 

Rebecca Plumbley, Hammonds LLP, 

rebecca.plumbley@hammonds.com 


CASE COMMENT 

CFI fails to find anything 

distinctive in cyber marks 

In Européenne de traitement de l’information (Euro-Information) v 

OHIM (Cases T-211/06, T-213/06, T-245/06, T-155/07, T-178/07, 

19 May 2009), the CFI has upheld the decision of the Board of Appeal in 

which the latter had held that the marks CYBERCREDIT, CYBERGUICHET, 

CYBERBOURSE and CYBERHOME lacked distinctive character and that 

the mark CYBERGESTION had not acquired distinctive character 

through use. Myrsini Feliou and Chris McLeod report. 

Background 

In October and November 2004, 

Euro-Information applied to register 

CYBERGESTION, CYBERCREDIT, 

CYBERGUICHET, CYBERBOURCHE and 

CYBERHOME as CTMs in classes 9, 36 

and 38, for financial services and 

related goods and services. 

In November 2005 (Cases T-211/06, 

T-213/06 and T-245/06), May 2006 

(Case T-155/07) and July 2006 (Case 

T-178/07), the examiner refused 

registration of the applications on 

the grounds that they lacked 

distinctiveness, on the basis of Article 

7(1)(b) and (c). In addition, it held that 

CYBERGESTION had not acquired 

distinctiveness through use, on the 

basis of Article 7(3). In January, July 

and September 2006, Euro- 

Information appealed to OHIM’s 

Board of Appeal. 

In May 2006 (Case T-213/06), June 

2006 (Case T-211/06), July 2006 (Case 

T-245/06), February 2007 (Case T- 

155/07) and March 2007 (Case T- 

178/07), the First Board of Appeal 

rejected the appeals and upheld the 

examiner’s decisions. In particular 

regarding CYBERGESTION, the Board 

held that the evidence presented was 

not sufficient to prove that the mark 

had acquired distinctiveness through 

use by the application date. Euro- 

Information appealed to the CFI to 

have the above mentioned decisions 

reversed. In October 2008, after the 

oral hearing, the five cases were 

conjoined. 

The case before the CFI 

Euro-Information, in support of its 

appeal, invoked arguments regarding 

the violation of Article 7(1)(b) of the 

40/94 Regulation regarding inherent 

distinctiveness and Article 7(3) 

regarding acquired distinctiveness in 

respect of CYBERGESTION. 

It first claimed that the Board had 

taken into account a very restricted 

view of the notion of ‘cyber’ based on 

the proposed meaning by a French 

dictionary published in Canada. It 

added that the meaning of the term 

differed for French speakers in the EU 

and Canadian French speakers. It 

argued further that the distinctive 

character of the marks was based on 

the fact that relevant consumers were 

surprised by the contradiction 

between their elements which 

referred on one hand to the 

immaterial/virtual world and on the 

other to the material/physical world. 

In particular, it argued that this 

contradiction made the marks fanciful 

and as a result it was not necessary for 

competitors to be able to use them 

for their goods and services. Euro- 

Information also claimed that the 

Board went beyond the meaning of 

the terms cyber, bourse and home 

and gave a complex reasoning which 

did not reflect the link between the 

designated goods and services nor 

the impression perceived by the 

relevant public. It added that the 

marks in question fulfilled the 

minimum distinctive character as 

required by case law, even if one of 

the terms of these combinations or 

the combinations as a whole could 

appear suggestive of certain 

designated goods or services. It 

claimed that there was no proof that 

these terms were used on the internet 

in relation to the goods and services 

applied for and cited previous 

decisions by OHIM and INPI (the 

French trade mark office), according 

to which similar marks had been 

registered. Finally, in respect of 

CYBERGESTION it claimed that a large 


CASE COMMENT 

party of the relevant public 

recognized the sign as a mark used 

for its software. 

The CFI’s judgement 

The CFI reiterated its case law 

regarding signs that were devoid of 

distinctive character, according to 

which those signs were incapable of 

distinguishing the origin of the goods 

or services applied for as and were 

therefore incapable of distinguishing 

them from goods or services of other 

undertakings. It added that these 

signs did not allow the relevant 

public, having purchased their 

designated goods or services, to 

repeat the purchase or avoid it. The 

CFI also highlighted the fact that a 

mark consisting of an advertising 

slogan, an indication of quality or an 

expression that encouraged the 

purchase of goods or services under 

the mark could not be used to 

exclude it from registration if it could 

be immediately perceived as an 

indication of the origin of the 

designated goods or services, but 

held that in this case the marks were 

unable to identify their origin. 

The CFI went on to examine the link 

between the goods and services 

applied for and the perception of the 

relevant public. Following this logic, 

it stated that the relevant public 

consisted of average French-speaking 

consumers, since the marks applied 

for consisted of terms that were often 

used in French. In fact, it observed 

that the words that formed the marks 

in question had the exact same 

meaning as when combined. 

Thus, the marks did not represent 

more than a simple sum of their 

component parts. The marks still 

lacked distinctiveness although they 

could be read in a variety of ways or 

have a more vague meaning due to 

the fact that they could constitute a 

play on words or be perceived as 

ironic, surprising or unexpected. 

Consequently, the relevant public 

would perceive the marks in question 

as promotional expressions because 

they were laudatory in relation to the 

quality of the goods or services, such 

as modernity and adaptation to new 

information technologies. 

In particular, it held that CYBERCREDIT 

suggested online credit operations, 

CYBERGESTION online financial 

administration, CYBERGUICHET online 

banking and financial operations, 

CASE COMMENT 

CYBERBOURSE online financial 

transactions and CYBERHOME home 

telecommunications connections. 

It then reasserted that the legality of 

the decisions of the Board of Appeal 

should be assessed solely on the basis 

of Community Regulation 40/94, as 

interpreted by the community judges, 

and not on the basis of previous 

case law. It cited the complete 

independence of the CTM’s legal 

regime from non-EU legal systems. 

Finally, when examining the acquired 

distinctiveness of CYBERGESTION, the 

CFI clarified that for a mark to have 

acquired distinctiveness through 

use it had to be distinctive in the 

perception of a significant proportion 

of the relevant consumers and also 

acquired its distinctive character prior 

to the application date. It added that 

the acquisition of distinctiveness had 

to be examined also in relation to the 

market share, intensity, geographical 

scope, duration of use and advertising 

expenditure. It also underlined the 

fact that distinctiveness acquired 

through use should be proved in a 

substantial part of the Community in 

which the mark was prima facie 

devoid of distinctive character on the 

basis of Article 7(1)(b). Therefore, it 

concluded that CYBERGESTION was 

only recognisable in France, but not 

in Belgium nor in Luxembourg, which 

together comprised the Frenchspeaking 

part of the Community. In 

addition, the applicant had failed to 

provide objective evidence of use of 

its mark. As a result, the CFI rejected 

both arguments of the applicant and 

upheld the Board’s rejection of the 

applications. 

Comment 

In this judgment, the CFI confirms 

that, although acquired 

distinctiveness is one way of 

obtaining registration of a mark, the 

evidence must meet certain criteria in 

order to be accepted. The judgment 

also reiterates the difficulty in 

registration of marks which combine 

known terms if there is at least an 

argument that the combination 

constitutes a clear and direct 

indication of the nature of the 

goods or services in question. 

Myrsini Feliou and Chris McLeod, 

Hammonds LLP 

The marks still lacked 

distinctiveness 

although they could 

be read in a variety of 

ways or have a more 

vague meaning due to 

the fact that they could 

constitute a play on 

words or be perceived 

as ironic, surprising 

or unexpected. 

Consequently, the 

relevant public would 

perceive the marks 

in question as 

promotional 

expressions because 

they were laudatory 

in relation to the 

quality of the goods 

or services, such as 

modernity and 

adaptation to 

new information 

technologies. 



CASE COMMENT 

Advocate General clarifies ownership of 

design rights in commissioned works 

In Fundación Española para la Innovación de la Artesanía v Cul de Sac Espacio Creativo SL (Case C- 

32/08, 26 March 2009), Advocate General Mengozzi gave his opinion on the request for a preliminary 

ruling from the Spanish Commercial Court regarding the ownership of unregistered design rights. 

Myrsini Feliou and Chris McLeod report. 

Background 

Fundación Española para la 

Innovación de la Artesanía (FEIA) 

produced and marketed a variety 

of products that were made in 

traditional workshops and were 

based on designs and patterns 

created by industrial design 

specialists. FEIA commissioned 

AC&G, SA (AC&G) to select designers 

and reach an agreement with 

them in order to create designs and 

provide technical assistance at the 

time of manufacture. AC&G entered 

into a contract with Cul de Sac 

Espacio Creativo, SL (Cul de Sac), 

as a result of which the latter 

produced a series of cuckoo clocks 

known as the “Santamaría” 

collection. 

In 2006, Cul de Sac and Acierta 

Product & Position, SA (Acierta) 

marketed a range of cuckoo clocks 

under the trade mark “Timeless”. 

FEIA perceived this marketing as a 

violation of its rights deriving from 

the “Santamaría” collection. 

Therefore, it claimed ownership of 

the rights in the designs in question 

under European and Spanish 

legislation. The Spanish Commercial 

Court referred the following 

questions to the ECJ for a 

preliminary ruling: 

“Must Article 14 (3) of Regulation 

6/2002 be interpreted as referring 

only to Community designs created in 

the course of an employment 

relationship whose provisions are 

such that the designer works under 

the direction and in the employ of 

another? 

or 

Must the terms “employee” and 

“employer” be interpreted broadly so 

as to include situations other than 

employment relationships, such as a 

relationship where, in accordance 

with a civil/commercial contract (and 

therefore one which does not provide 

that an individual habitually works 

under the direction and in the employ 

of another), an individual (the 

designer) undertakes to create a 

design for someone else for an 

agreed price, and as a result, is it 

understood that the design belongs 

to the person who commissioned it, 

unless contractually stipulated 

otherwise? 

If the second question were answered 

in the negative, because the creation 

of designs within an employment 

relationship and the production of 

designs within a non-employment 

relationship constitute different 

factual situations, 

a) is it necessary to apply the general 

rule in Article 14(1) of Regulation 

6/2002 and, consequently, must 

the designs be construed as 

belonging to the designer, unless 

the parties stipulate otherwise in 

the contract? 

or 

b) must the Community design court 

rely on national law governing 

designs in accordance with Article 

88(2)? 

In the event that national law is to 

prevail, is it possible to apply national 

law where it places on an equal 

footing (as Spanish law does) designs 

produced as a result of a commission 

(the designs belong to the party 

which commissioned them, in the 

absence of an agreement to the 

contrary)? 

In the event the answer to the fourth 

question is in the affirmative, would 

such a solution (the designs belong to 

the party who commissioned them, in 

the absence of an agreement to the 

contrary) conflict with the negative 

answer to the second question?” 

“Must Article 14 (3) of Regulation 6/2002 be interpreted as 

referring only to Community designs created in the course of an 

employment relationship whose provisions are such that the 

designer works under the direction and in the employ of another? 


CASE COMMENT 

The Advocate’s General opinion 

The Advocate General first referred 

to Article 14(3) of the Regulation, 

namely to the ownership of design 

right. For this purpose, he examined 

whether the right to the Community 

design that vested in the employer, 

where a design was developed by 

an employee in the execution of his 

duties or following instructions given 

by his employer, unless otherwise 

agreed or specified under national 

law, could also be applied in analogy 

when an independent individual 

contracted to supply services created 

designs under commission. 

The Advocate General held that an 

interpretation of Article 14(3) within 

the context of the general economy, 

as propounded by FEIA, would 

change the meaning of “employer” 

and would therefore be contrary to 

the wording of the Regulation. He 

added that the reference in Article 

14(3) to designs created by the 

employee, following instructions 

given by his employer, should not be 

interpreted as an intention on the 

part of the Community legislator to 

extend its provisions and include 

designs made within the context of a 

contract for the supply of services. 

Following this logic, the Advocate 

General concluded that Article 14(3) 

related exclusively to designs created 

in the framework of work under an 

employment contract and he went 

on to analyse the purpose of such 

an arrangement and the travaux 

préparatoires for the Regulation in 

order to verify whether such a 

principle could apply where designs 

were created as part of a commission. 

He underlined the all-encompassing 

of employment relationships that 

enabled the employer to acquire all 

economic rights in works created by 

employees. As a result, such legal 

reasoning by analogy did not appear 

in the travaux préparatoires. 

Further, since Article 14(3) did not 

apply to designs created under a 

contract for the supply of services, the 

Advocate General considered Article 

14(1), which provided that design 

right vested in the designer or his 

successor in title, and Article 88(2) 

which provides for member states to 

plug legal loopholes in the Regulation 

with their own national legislation. 

CASE COMMENT 

Therefore, he clarified further the 

meaning of “successor in title”. In light 

of the travaux préparatoires for the 

Regulation, the notion of successsor 

in title referred to the assignee of 

the design rights. Consequently, 

a successor could be both the 

employer and the comissioner. On 

one hand, in terms of the employer 

the right to the design right arose 

automatically, whereas for the 

commissioner the ownership of the 

design right was defined by the 

parties in the relevant contract and 

the applicable law at issue. 

Finally, the Advocate General held 

that the Spanish court should apply 

the relevant provisions of Spanish law 

as a result of the contract between 

AC&G and Cul de Sac in order to 

determine the ownership of the 

unregistered design. 

In summary, Advocate General stated 

that article 14(3) of the Regulation 

should be viewed in the light of a 

subordinate link in the employment 

relationship and clarified that, 

in respect of ownership of 

unregistered design right involving 

a commissioned party, the legislation 

of a member state which transferred 

the owner of the design right 

with the employer as if there 

were a subordinate employment 

relationship was not contrary to the 

meaning of Article 14(3) of the 

Regulation. 

Comment 

It is clear that in employment 

relationships the ownership of 

design rights vests in the employer. 

However, the term “employee” can 

not be interpreted broadly and 

include relationships with a 

commissioned party. Nor can it be 

assessed by analogy, where designs 

were created as part of a comission, 

that all economic rights vest in the 

comissioner. Therefore, this opinion 

seems to confirm that the ownership 

of design rights which were created 

within the framework of a contract 

for the supply of services vests in the 

designer or his successor in title 

(employer or commissioner), unless 

national law provides otherwise, 

as in Spain. 


Hammonds LLP 

It is clear that 

in employment 

relationships the 

ownership of design 

rights vests in the 

employer. However, 

the term “employee” 

can not be interpreted 

broadly and include 

relationships with a 

commissioned party. 

Nor can it be assessed 

by analogy, where 

designs were created 

as part of a comission, 

that all economic 

rights vest in the 

comissioner. 


Appeal succeeds as common usage of 

‘Forex’ was ignored by hearing officer 

O-100-09 – Opposition No 94857 in the name of Chartered Forex Inc against Trade Mark Application No 2408890 in the 

name of Forex Bank AB, Appointed Person Geoffrey Hobbs QC. 

Forex Bank AB (applicant) applied to 

register its trade mark in Classes 9, 16, 

35, 36, 41 and 42 for variety of goods 

and services. 

The mark was opposed by Chartered 

Forex (opponent) on the basis of its 

earlier trade mark registration in 

Classes 36 (arranging monetary 

transfers and currency exchange) 

and 39 (Packaging, transportation 

and delivery of articles, goods and 

valuables). 

The opponent contended that the 

applicant’s registration should be 

refused in Classes 9, 16 35, 36 and 41 

on the ground that there would 

be a likelihood of confusion if the 

applicant’s mark and its mark were 

used concurrently in the United 

Kingdom. The opponent partially 

succeeded in the opposition. The 

hearing officer refused registration of 

the applicant’s mark for certain goods 

and services in Classes 9 (debit cards, 

registered software), 16 (printed 

materials, plastic cards), and 36 

(financial services). 

The hearing officer found that the 

marks differ in their presentational 

features and graphical components, 

but are, in overall terms, similar to a 

reasonable degree as a result of the 

presence of the “Forex” element. 

With respect to the meaning of the 

word element “Forex”, the hearing 

officer did not refer to any works of 

reference. As there was no evidence 

from either party regarding the 

message conveyed by the marks, the 

hearing officer did not rely on his own 

understanding of the word “Forex”. 

He felt that it would be a step 

too far to take judicial notice of the 

widespread public understanding 

of the word “Forex” and proceeded 

on the basis that the word “Forex” 

was likely to be perceived as an 

independent distinctive element 

in each of the marks. 


CASE COMMENT 

The hearing officer arrived at the 

above reasoning based on the two 

decided cases, Chorkee Trade Mark, 

O-048-08 (Anna Carboni, sitting as the 

Appointed Person) and Citigroup, Inc., 

v OHIM, Case T-325/04. 

The applicant filed an appeal 

contending in substance that any 

doubt as to the normality of the 

hearing officer’s own understanding 

of the word “Forex” would have been 

dispelled by looking at the Registry’s 

guidelines on examination and 

appropriate works of reference. 

The Appointed Person observed 

that the hearing officer should have 

checked his own understanding 

of the word “Forex” against the 

meanings indicated in appropriate 

works of reference. He referred to 

The Coca-Cola Co. of Canada Ltd v 

Pepsi Cola Co. of Canada Ltd. In that, 

Lord Russell of Killowen stated: 

“While questions may sometimes 

arise as to the extent to which a court 

may inform itself by reference to 

dictionaries, there can, their Lordships 

think, be no doubt that dictionaries 

may properly referred to in order to 

ascertain not only the meaning of the 

word, but also the use to which the 

thing (if it be a thing) denoted by the 

word is commonly put.” 

According to caveat in the 

Addendum to Chapter 3 of the Trade 

Marks Registry Work Manual, the 

word “FOREX” is unregistrable for 

foreign exchange or financial related 

services unless it is combined with 

other matter to make an acceptable 

whole. The word “FOREX” should be 

regarded as a sign or indication which 

is customary in the current language 

or in the bona fide and established 

practices of the trade in relation to 

financial related services. The entries 

in the Collins English Dictionary and 

Shorter Oxford English Dictionary 

clearly indicate that “FOREX” would 

be understood as an abbreviation for, 

or recognised reference to, foreign 

exchange. 

In Kirin-Amgen Inc v Hoechst Marion 

Rousell Ltd, Lord Hoffmann stated 

that the meaning of the words not 

only depends on the words used 

by the author but also upon the 

audience he has been addressing and 

the knowledge and assumptions 

which one attributes to the audience. 

The Appointed Person took the view 

that the objection to registration 

under section 5 (2) (b) ought to have 

been assessed upon the footing that 

the marks in issue were similar by 

reason only of the fact that they both 

contained graphic representations 

of the word which was likely to be 

understood in the relevant sectors 

of commerce as denoting “Foreign 

Exchange”. 

The Appointed Person considered 

that the word element is prominent 

but is not distinctive in relation to 

financial goods and services. Taken 

as a whole, the marks are visually, 

aurally and conceptually similar 

without being in any of those 

respects distinctively similar. The 

marks are visually and conceptually 

dissimilar to a degree that each of 

them taken as a whole is distinctively 

different from the other. On weighing 

the similarities and differences, the 

Appointed Person concluded that the 

marks could co-exist in the market 

place for goods and services of the 

kind in issue without giving rise to a 

likelihood of confusion. 

The Appeal was allowed by setting 

aside the hearing officer’s decision. 

The opponent was ordered to pay 

£750 to the applicant towards the 

costs of the proceedings in the 

Registry and appeal. 

Remya Aravamuthan, 

Rajah & Tann LLP 


CASE COMMENT 

Tim Harris 

Background 

Pago is the proprietor of a Community 

trade mark for, inter alia, fruit drinks 

and fruit juices. Important elements of 

Pago’s mark are the representation of 

a green glass bottle with a distinctive 

label and cap next to a full glass of 

fruit drink identified in large characters 

known as ‘PAGO’. Tirol Milch 

marketed in Austria a fruit and whey 

drink ‘Latellea’, packaged in glass 

bottles with a design that resembled 

in several aspects (shape, colour, label 

and cap) Pago’s trade mark. 

Pago sought an injunction before the 

Handelsgericht Wien prohibiting Tirol 

Milch from infringing its trade mark 

on the basis of Article 9(1)(c) (it was 

common ground that there was no 

likelihood of confusion). The court 

granted the injunction but the 

decision was reversed by the 

Landesgericht Wien. Pago appealed 

to the Oberster Gerichtshof. 

On the basis that Pago’s trade mark 

was widely known in Austria but not 

necessarily in other member states, 

guidance was sought from the ECJ 

as to whether a Community trade 

mark is protected in the whole of the 

Community as a ‘trade mark with a 

reputation’ for the purposes of Article 

CASE COMMENT 

PAGO International GmbH v Tirol Milch registrierte Genossenschaft mbH, Case C-301/07, 

Opinion of Advocate General Sharpston, 30 April 200. AG Sharpston has provided her 

opinion clarifying what is required for a Community trade mark to have a 

reputation for the purpose of Article 9(1)(c) of Regulation 40/94, stating that 

a CTM must have a reputation in a ‘substantial part’ of the Community. 

Given the unitary nature of a CTM, national boundaries are not relevant 

when determining what constitutes a ‘substantial part’: an assessment of all 

relevant circumstances of the case should be made taking into account, in 

particular the public concerned by the products or services covered by the 

mark and the proportion of the public that know of the mark, and the 

importance of the area in which the reputation exists. Tim Harris reports. 

The importance of maintaining your 

national registrations alongside CTMs 

9(1)(c) if it only has a reputation in 

one member state and, if not, if it is 

possible to limit the prohibition to 

the one member state where the 

reputation exists. 

Decision 

AG Sharpston agreed with the parties 

that the starting point for the analysis 

should be Case C-375/97 General 

Motors Corporation v Yplon SA, which 

considered what was required for a 

trade mark to have a ‘reputation’ 

in a particular member state for the 

purpose of Article 5(2) of Directive 

89/104 (the parallel provision to 

Article 9(1)(c) of the Regulation). 

There are two aspects to the 

‘reputation condition’, both of which 

must be satisfied: first, the trade mark 

must have the requisite reputation 

and second that reputation must exist 

in a specified geographical area. 

In order to establish whether the 

trade mark has a ‘reputation’, the 

national court should first identify the 

public concerned by the trade mark 

and second determine whether 

the reputation exists amongst a 

significant part of that public. All 

relevant facts of the case should be 

considered, in particular the market 

share held by the trade mark, the 

intensity, geographical extent and 

duration of its use, and the size of the 

investment made by the undertaking 

in promoting it. 

With regards to the specified 

geographical area, AG Sharpston 

applied General Motors by analogy. 

She considered that it is not 

necessary for a trade mark owner 

to demonstrate that his trade mark 

enjoys a reputation throughout the 

Community in order to trigger the 

Article 9(1)(c) protection: a reputation 

in a ‘substantial part’ of the 

Community would suffice. The 

obvious corollary of this conclusion is 

what constitutes a substantial part of 

the Community? Can it be a single 

member state? 

The Regulation is based on the 

premise that a Community trade 

mark is unitary in character. Therefore, 

any approach that focussed on 

member state boundaries to establish 

the extent of a Community trade 

mark’s reputation was fundamentally 

misconceived. The territory of the 

Community must be considered as a 

single indivisible whole regardless of 

frontiers: whether a reputation exists 

in one or any given number of 

member states and the size of those 

member states is irrelevant. 


An overall assessment of the 

territorial aspect must be made in 

conjunction with establishing the 

public amongst whom the 

trade mark is known. Particular 

considerations are (i) the public 

concerned by the products or 

services covered by the trade mark 

and the proportion of that public 

which knows of the mark, and (ii) the 

importance of the area in which the 

reputation exists, as defined by 

factors such as its geographical 

extent, population and economic 

significance. 

The answer to the second question 

posed by the national court follows 

directly from AG Sharpston’s answer 

to the first. The existence of a 

‘reputation in the Community’ is a 

specific condition to trigger Article 

9(1)(c) protection, which is not 

satisfied if a trade mark only has a 

reputation in a single member state 

(or an area that is not a substantial 

area of the Community) and 

so no right to protection arises. 

Consequently, a prohibition to 

infringement limited to that area 

may not be issued. 

An alternative reading of the second 

question was could a national court, 

in the unlikely event that it decided a 

single member state constituted the 

requisite ‘substantial area’ for Article 

9(1)(c) to bite, grant relief limited to 

that member state? AG Sharpston 

considered this situation to be merely 

theoretical but stated that if it 

occurred, a competent court could 

confine its order to a single member 

state as it would seldom, if ever, be 

appropriate to make an order in 

terms than are wider than necessary. 

Comment 

If AG Sharpston’s opinion is followed, 

it will underline the importance of 

maintaining national trade mark 

registrations in addition to a 

community trade mark. If a trade 

mark enjoys a reputation only in a 

particular member state, the national 

trade mark will be necessary in order 

to be able to rely on Article 5(1) of the 

Directive as Article 9(1)(c) of the 

Regulation will not be engaged. 

Tim Harris, Bird & Bird, 

tim.harris@twobirds.com 


CASE COMMENT 

Last Minute: distinction 

between infringement 

and passing off 

Last Minute Network Ltd v Last Minute Tour SpA, 

Joined Cases T-114/07 and T-115/07, Judgment 

of the Court of First Instance, 11 June 2009. On 

11 June 2009, the Court of First Instance 

(CFI) annulled an OHIM Board of Appeal 

decision to reject an application for a 

declaration of invalidity filed by Last 

Minute Network Ltd (LMN) against Last 

Minute Tour SpA (LMT). In what may 

be the first case in which the CFI has 

Hilary Atherton 

analysed the differences between the 

law of passing off and trade mark infringement, it held that 

OHIM was wrong to apply the test for establishing trade mark 

infringement where the basis of the invalidity action was the 

law of passing off. Hilary Atherton reports. 

Relevant Law 

Under Article 52(1)(c) of Regulation 

No 40/94 EEC, the proprietor of an 

unregistered national trade mark 

may, on application to OHIM, obtain 

the cancellation of a more recent 

Community trade mark where there is 

an earlier right as referred to in Article 

8(4) and the conditions set out in that 

paragraph are met. 

Article 8(4) of Regulation 40/90 EEC 

provides that a Community trade 

mark shall not be registered where 

the proprietor of an unregistered 

trade mark or another sign which is 

used in the course of trade and is of 

more than mere local significance 

establishes that, pursuant to national 

law, the rights to that sign were 

acquired prior to the date of 

application for registration of the 

trade mark and that sign confers on 

its proprietor the right to prohibit 

the use of a subsequent mark. 

In the UK, the law of passing off 

protects unregistered trade marks 

against use of a later mark where 

there is goodwill attached to the 

earlier mark; where the offer of goods 

and services under the later mark 

constitutes a misrepresentation 

which is likely to lead the relevant 

public to attribute the commercial 

origin of those goods and services to 

the proprietor of the earlier mark; and 

where the proprietor of the earlier 

mark is likely to suffer commercial 

damage as a result. 

Facts 

In February 2000, LMN, proprietor of 

the website ‘lastminute.com’ applied 

for registration of the word sign 

LASTMINUTE.COM as a Community 

trade mark for a range of travel 

services in classes 39 and 42. OHIM 

rejected the application on the basis 

that the sign was devoid of distinctive 

character within the meaning of 

Article 7(1)(b) of Regulation No 40/94 

(now Regulation No 207/2009). 


CASE COMMENT 

In March 2000, LMT successfully 

applied to OHIM to register the 

following figurative sign above 

as a Community trade mark. 

The mark was registered in classes 39 

and 42 as well as class 16 in May 2003. 

At the end of May 2003, LMN filed 

an application for a declaration of 

invalidity of the Community trade 

mark LAST MINUTE TOUR. LMN relied 

on its earlier national trade mark 

LASTMINUTE.COM and sought to take 

advantage of its right under Article 

8(4) to prohibit the use of a later mark 

and to obtain its cancellation by 

virtue of Article 52(1)(c). OHIM 

accepted LMN’s application in respect 

of all services in classes 39 and 42 but 

rejected the application in respect of 

goods falling within class 16. 

Both LMN and LMT appealed to the 

OHIM Second Board of Appeal. In 

February 2007 the Board allowed 

LMT’s appeal, annulling the decision 

to cancel the registration of LAST 

MINUTE TOUR for services in classes 

39 and 42. It dismissed LMN’s appeal, 

upholding LMT’s registration for 

goods and services in class 16. 

LMN appealed to the CFI. 

The decision of the CFI 

The CFI found that the Board of 

Appeal had made the following 

errors. 

Definition of the relevant public 

In assessing whether there was 

goodwill attached to the services 

offered by LMN in the mind of the 

relevant public, the Board held 

that, having regard to the nature 

of the goods and services and the 

unregistered status of LMN’s earlier 

sign, the relevant public was the 

average consumer of the goods and 

services concerned, residing in the 

UK, and reasonably well informed 

and circumspect. 

The CFI disagreed, finding that it was 

clear from national law (Reckitt v 

Coleman Products Ltd v Borden Inc. 

& Ors) that in an action for passing 

off, the misleading nature of the 

representation of the defendant’s 

goods and services must be assessed 

with regard to the claimant’s 

customers and not to the abstract 

notion of the average consumer. The 

CASE COMMENT 

Board of Appeal had incorrectly 

applied the test in Article 8(1)(b) 

instead of the law of passing off. The 

Board of Appeal’s assumption that 

the distinction was irrelevant because 

the goods and services offered are 

not aimed at a particular group of 

consumers, was wrong. 

Independent reputation enjoyed by 

the expression ‘last minute’ 

The Board of Appeal applied the 

Article 8(1)(b) test which requires the 

existence of likelihood of confusion to 

establish misrepresentation. It held 

that the expression “last minute” was 

composed of two ordinary English 

words used to indicate goods and 

services offered on favourable terms 

because they are purchased late. “Last 

minute” was therefore descriptive 

and devoid of distinctive character. 

LMN’s reputation was associated with 

the sign LASTMINUTE.COM and not 

with the general term “last minute”. 

The CFI held that the Board of Appeal 

was wrong on this point. It could not 

refuse to attribute an independent 

reputation to the expression “last 

minute” solely because of its inherent 

descriptive nature in relation to the 

relevant goods and services. The CFI 

stated that it was clear from national 

case law that a sign may acquire an 

independent reputation on account 

of the way in which it is used, even 

though it originally had a descriptive 

character. LMN had submitted 

evidence of its extensive advertising 

and promotion in the UK in order to 

establish an independent reputation 

in relation to the services at issue. 

Misrepresentation 

The Board of Appeal undertook a 

comparative examination of the 

marks of LMN and LMT and found 

that the distinctive character of the 

two marks was very limited. The 

visual, phonetic and overall impacts 

of the marks were not sufficiently 

similar to give rise to a likelihood of 

confusion in relation to any of the 

services at issue. 

However, the CFI pointed to the case 

of Reckitt v Coleman Products Ltd v 

Borden Inc & Ors which established 

that misrepresentation in passing off 

is a ‘representation which is likely to 

lead the claimant’s customers to 

attribute to the claimant the 

commercial origin of the goods and 

services offered by the defendant’. 

Although a likelihood of confusion 

was needed to satisfy both the 

requirements under Article 8(1)(b) 

and the requirements for passing off, 

the Board of Appeal had erred in 

basing its assessment of the 

likelihood of confusion merely on a 

comparison of the elements of the 

two signs. The examination of the 

existence of misrepresentation for 

the purposes of the law of passing 

off is not limited to a comparative 

assessment of the similarity of the 

two marks, but should also include 

relevant factors such as existence 

of the reputation of the mark 

LASTMINUTE.COM or the reputation 

attached to “last minute”. The CFI 

considered that such factors may 

increase the likelihood of LMN’s 

customers attributing to LMN the 

commercial origin of goods and 

services offered by LMT. The Board of 

Appeal had in this respect again failed 

to have regard to the national law of 

passing off. 

Outcome 

The CFI upheld LMN’s appeal and 

annulled the decisions of the Board of 

Appeal. OHIM must now re-examine 

the application for a declaration of 

invalidity of LAST MINUTE TOUR using 

the correct test under the law of 

passing off. 

Comment 

The decision of the CFI distinguishes 

the tests that are to be applied to 

establish passing off and trade mark 

infringement. The conditions to be 

met for passing off are less formal, 

requiring the court to take into 

account additional factors such as 

independent reputation instead of 

making a strict comparison of the 

marks for similarity, and allowing for 

acquired distinctiveness of a once 

generic expression. The effect of this 

decision has been to highlight the 

benefit in some circumstances of 

national rights over registered trade 

mark rights as grounds for opposition 

or cancellation actions. It may lead to 

an increase in actions based on such 

grounds that will need to be dealt 

with by OHIM. 

Hilary Atherton, Bird & Bird LLP (Bird & 

Bird LLP represented Last Minute 

Network Ltd) 


Background 

In June 2000, Lindt & Sprüngli AG 

(Lindt) applied to register a threedimensional 

Community trade mark 

for a gold-coloured chocolate bunny 

in a seated position, wearing a red 

ribbon around its neck with a bell and 

the words “Lindt GOLDHASE” on its 

hind. Chocolate bunnies had been 

marketed in Austria and German 

since at least 1930 in various shapes 

and colours, but often wrapped in 

gold-coloured foil and with a ribbon 

and/or bell. Lindt had been selling 

bunnies similar to that which was the 

subject matter of its Community trade 

mark registration since the early 

1950s and had been selling such 

bunnies in Austria since 1994. The 

mark was registered on 6 July 2001. 

The defendant in this action was an 

Austrian company, Franz Hauswirth 

GmbH, which had been selling its 

own chocolate bunnies since 1962. 

Hauswirth’s bunnies were also in the 

seated position, wrapped in gold foil 

and usually featured a ribbon, but 

not a bell. 

Lindt commenced proceedings 

against Hauswirth in Austria for trade 

mark infringement under Article 

9(1)(b) of the Regulation, which 

prohibits the use of an identical or 


CASE COMMENT 

Bad faith... another round in the 

ongoing Lindt chocolate bunnies saga 

Case C-529/07 Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (11 June 2009). This was a referral to the 

ECJ arising from a dispute about chocolate Easter bunnies. It is the first time the ECJ has been asked to 

provide guidance on the interpretation of “bad faith” within the meaning of the Community trade 

mark legislation. The trade mark at the centre of this case was a registered CTM and consequently the 

ECJ was asked to interpret the Community Trade Mark Regulation (Council Regulation 40/94). Similar 

concepts are used in the Trade Marks Act 1994, which implemented Trade Marks Directive into English 

law, and which governs UK national trade marks. Claire Salisbury reports. 

similar mark for identical or similar 

goods where there is a likelihood of 

confusion. Hauswirth counterclaimed 

for revocation of Lindt’s mark under 

Article 51(1) of the Regulation, which 

provides that a Community trade 

mark shall be declared invalid where 

the applicant was acting in bad faith 

when it filed the application. 

Round 1 

At first instance, the Commercial 

Court in Vienna dismissed Lindt’s 

claim for trade mark infringement and 

upheld Hauswirth’s counterclaim. 

Lindt appealed to the Higher Regional 

Court, which rejected Hauswirth’s 

counterclaim, but did not uphold 

Lindt’s main claim for trade mark 

infringement. Both parties appealed 

to the Austrian Supreme Court. 

The Austrian Supreme Court was of 

the opinion that that there was a 

likelihood of confusion between 

Hauswirth’s chocolate bunny and that 

marketed by Lindt under its threedimensional 

Community trade mark. 

The issue of bad faith 

However the Supreme Court’s 

decision on Hauswirth’s counterclaim 

depended on whether Lindt was 

acting in “bad faith” within the 

meaning of Article 51(1) of the 

Regulation. The Supreme Court 

stayed proceedings pending a 

reference to the ECJ on the meaning 

of “bad faith”. In particular the 

Austrian Supreme Court was seeking 

guidance on the criteria to be applied 

in order to determine whether Lindt 

was acting in bad faith when it 

applied to register its Community 

trade mark. 

Lindt argued that the fact a trade 

mark applicant is aware of market 

competitors and intends to prevent 

them from entering the market does 

not alone constitute bad faith. In 

order to be acting in bad faith, there 

must be dishonest conduct on the 

part of the applicant, ie the conduct 

must be contrary to accepted 

principles of business ethics. Lindt 

contended that, because it had been 

using its mark over a substantial 

period of time and had spent 

significant sums on advertising, 

its mark had a reputation and 

distinctiveness before it applied 

for a Community trade mark and as 

such the aim of the registration was 

to protect its commercial value 

against imitations. 

Hauswirth’s case was that a trade 

mark applicant acts in bad faith where 

it was aware of the use of an identical 

or similar mark by a competitor who 

had obtained a “valuable right” in that 


CASE COMMENT 

mark as a result and the applicant 

applied for a Community trade mark 

to prevent its competitor from 

continuing to use its sign. It was 

Hauswirth’s contention that Lindt had 

registered its Community trade mark 

with the intention of eliminating all of 

its competitors. Hauswirth further 

argued that no account should be 

taken of the reputation the mark has 

acquired prior to its registration. 

ECJ ruling 

Having heard the Attorney General’s 

opinion on 12 March 2009, the ECJ 

handed down its ruling on 11 June 

2009. In its ruling, the ECJ made clear 

that the relevant date for determining 

whether there was bad faith was the 

date of filing of the trade mark 

application. At the time Lindt made 

its application, there were several 

producers using an identical or 

similar get-up for identical or similar 

products which were capable of 

being confused with the mark that 

Lindt was seeking to register. 

The ECJ stated that, in deciding 

whether a trade mark applicant acted 

in bad faith, account must be taken of 

all factors relevant to the particular 

case. The fact that an applicant knows 

or must know that a third party has 

been using an identical or similar 

mark which could be confused with 

the applicant’s mark, over a long 

period of time, is not sufficient to 

show bad faith. The applicant’s 

intention at the time it made the 

application must also be taken into 

account. This is a subjective factor 

which must be determined by 

reference to the objective 

circumstances of the particular case. 

The ECJ was of the opinion that an 

intention to prevent a third party 

from marketing a product may, in 

certain circumstances, be an element 

of bad faith. The example given by 

the ECJ was where an applicant 

applies for a Community trade mark 

without intending to use it, the sole 

objective being to prevent third 

parties from entering the market. 

Where a third party who has been 

using a sign for a long period of time, 

for an identical or similar product, 

which is capable of being confused 

with the mark applied for, and 

which enjoys some degree of legal 

protection, this is another factor that 

CASE COMMENT 

the ECJ considered to be relevant in 

determining whether the applicant 

has acted in bad faith. In this situation 

the applicant may have the sole 

aim of competing unfairly with a 

competitor. However, the ECJ was 

of the opinion that even in such 

circumstances, the applicant’s 

application may be in pursuit of a 

legitimate objective, for example 

where the applicant knows when 

filing its application that a newcomer 

to the market is trying to take 

advantage of its mark by copying 

the get up and it registers the mark 

to try and prevent this. 

Further, the nature of the mark may 

be relevant. For example where the 

trade mark consists of the entire 

shape and presentation of a product, 

if the competitor’s freedom to choose 

the shape and presentation of its 

product is restricted by technical or 

commercial factors, it may be easier 

to establish bad faith as the applicant 

is able to prevent competitors from 

not only using an identical or similar 

sign, but also from marketing 

comparable products. 

The ECJ also considered the extent of 

the reputation enjoyed by the mark 

when the application is made to be 

relevant, as the extent of reputation 

might justify the applicant’s interest 

in ensuring wider legal protection for 

it. 

Conclusion 

The ECJ’s ruling on the meaning of 

bad faith under Article 51(1) of the 

Regulation represents a broad and 

flexible approach that, unsurprisingly, 

requires the court to take account of 

all relevant factors at the time the 

mark was applied for, including the 

applicant’s intention, the fact that the 

applicant knew or must have known 

that a third party was using an 

indentical or similar sign for an 

identical or similar product capable 

of being confused with the mark 

applied for and the degree of legal 

protection enjoyed by the third 

party’s sign and the mark for which 

registration is sought. The case will 

now be sent back to the Austrian 

Supreme Court for determination 

based on the ECJ’s interpretation of 

the meaning of bad faith. 

Claire Salisbury, Hammonds LLP, 

claire.salisbury@hammonds.com 

The ECJ was of the 

opinion that an 

intention to prevent 

a third party from 

marketing a product 

may, in certain 

circumstances, be an 

element of bad faith. 

The example given by 

the ECJ was where an 

applicant applies for 

a Community trade 

mark without 

intending to use it, 

the sole objective 

being to prevent third 

parties from entering 

the market. 



CASE COMMENT 

CFI pays tribute to statement of reasons 

In Caisse fédérale du Crédit mutuel Centre Est Europe (CFCMCEE) v OHIM (Cases T-405/07and T- 

406/07, 20 May 2009) the CFI has partially reversed a decision of the Board of Appeal in which the 

latter had refused registration of applications for “P@YWEB CARD” and “PAYWEB CARD” on the 

grounds they lacked distinctiveness for goods and services that related broadly to the internet, 

telecommunications and new information technologies in class 9, 36 and 38 and upheld the 

decisions for the remaining goods and services. Myrsini Feliou and Chris McLeod report. 

Background 

In June 2004, CFCMCEE applied for 

registration of “P@YWEB CARD” and 

“PAYWEB CARD” for goods and 

services in classes 9, 36 and 38. In 

December 2006, the examiner rejected 

both applications on the grounds that 

the marks lacked distinctiveness and 

were descriptive. In January 2007, 

CFCMCEE appealed to the Board of 

Appeal to reverse the examiner’s 

decision. In July 2007(Case T-405/07) 

and in September 2007(Case T- 

406/07), the First Board of Appeal 

rejected the appeals. It concluded that 

the examiner had correctly considered 

that the marks were devoid of 

distinctive character on the basis of 

Article 7(1)(b) of the 40/94 Regulation, 

in which case the application of Article 

7(1)(c) regarding the descriptiveness 

of the marks was not necessary. 

The case before the CFI 

CFCMCEE invoked a sole argument in 

support of its appeal to the CFI, namely 

the violation of Article 7(1)(b). First, it 

claimed that the terms “p@y” or “pay” 

referred to the verb “to pay” and did 

not present a link to the internet or 

information technology. In respect of 

“P@YWEB CARD”, it argued that the 

element “p@y” was uncommon and 

surprising. In addition, in respect of the 

element “web”, the applicant argued 

that the English-speaking relevant 

public would perceive the term as an 

allusion to a net, a network or “tangle” 

of nets and therefore did not refer 

directly to the internet or computing 

networks. The applicant also claimed 

that the meaning of the term “card” 

was a piece of paper or cardboard 

which did not allow consumers to 

perceive it as a reference to the 

computing, banking or financial 

sectors. It then argued that the 

uncommon combination of elements 

in “p@yweb” and “payweb” did not 

possess a direct, certain and 

immediately identifiable meaning for 

English-speaking consumers in relation 

to the designated goods or services. As 

result, it required a thorough analysis 

and did not conform to the syntactical 

rules of the English language. 

The marks consisted of arbitrary 

combinations that arose from the 

association of “p@y” or “pay”, “web” 

and “card” and could not be 

considered as descriptive of the 

designated goods or services or of 

their characteristics. Consequently, 

the relevant public would be able to 

perceive the commercial origin of the 

marks in question and the marks 

had distinctive character. 

The CFI’s judgment 

The CFI reiterated its case law on the 

distinctive character of a mark: a mark 

should guarantee the origin of its 

designated goods or services and 

enable consumers to distinguish, 

without any likelihood of confusion, its 

goods or services from those of other 

undertakings. On the contrary, marks 

were devoid of distinctive character if 

they did not allow the relevant public, 

having purchased the designated 

goods or services, to repeat the 

purchase or avoid it. Distinctiveness 

should be assessed both in relation to 

the goods and services for which 

registration has been sought and in 

relation to the perception of the 

relevant public. The CFI went on to 

state that the relevant public consisted 

of average English-speaking 

consumers or of those having an 

elementary knowledge of the English 

language, which represented a large 

part of the Community, due to the 

elements of the marks in question that 

came from the English language used 

in the financial, banking, electronic 

and computing sectors. It added that 

compound word marks should be 

assessed as a whole and not separately 

in respect of each of their terms or 

elements. The fact that an individual 

component lacked distinctiveness 

did not exclude its combination 

from bearing a distinctive character. 

Following this logic, the CFI took into 

account the meaning of the term “pay” 

or “p@y” and its close connection with 

the term “web” and the term “card”, 

which signified in particular a cheque 

guarantee card or a credit or debit 

card. Hence, it held that the average 

consumer would associate these 

elements, without detailed 

consideration, with information 

technology and the internet in general. 

Furthermore, the CFI observed that the 

structure of the combinations was not 

uncommon and was also met in 

English grammatical and syntactical 

rules and neologisms such as 

“payphone” or “paytv”. Therefore, the 

relevant public would perceive the 

marks as a whole as if they were cards 

either for paid access to the internet or 

relating to electronic payment. It was 

also worth remembering that the 

goods and services for which 

registration had been sought in classes 

9, 36 and 38 varied and belonged in 

different groups or categories of 

goods or services. 

The CFI clarified that the Board was 

obliged to give a statement of reasons 

for all goods or services, unless the 

same ground of refusal applied to one 

category or group of goods or services, 

in which case it could give a global 

statement of reasons. The CFI therefore 

examined the designated goods in 

class 9, 36 and 38. 

Primarily, it held that the designated 

goods and services in class 9 did not 

form a homogenous category which 

alluded to shopping cards and the 

provision of communication services 

and online transmission of information 

which were essential to remote or 

online purchase operations. It held that 

the statement of reasons was generic 

and vague. It did not therefore respond 


CASE COMMENT 

to the requirements of Article 253 CE 

and Article 73 of Regulation 40/94 

regarding the effective judicial 

verification of the legality of the 

contested decisions. 

Likewise, regarding the designated 

goods or services in classes 36 and 38 

in total, the CFI held that they did not 

possess as a whole an informative and 

promotional character which created 

an immediate link to electronic 

telecommunication services and 

online services in the banking, financial 

or insurance sectors. It underlined the 

fact that they also covered a wide 

variety of additional services in the 

context of different commercial 

relations. The CFI further explained 

the failure to invoke Article 7(1)(c) 

as a ground for refusal to annul the 

contested decisions since it was not 

the subject of the present appeals. 

Finally, it concluded that there was 

indeed a violation of Article 7(1)(b) 

and annulled the contested decisions 

insofar as they refused registration of 

“PAYWEB” and “P@YWEB” for a range 

of goods and services including 

“photographic and television 

apparatus and instruments”, “acoustic 

discs”, “electronic diaries”, “ticket 

distributors”, “data processing 

apparatus”, “television and telephone 

apparatus”, “memory cards or 

microprocessors”, “magnetic cards or 

microprocessors for payment, credit or 

debit”, “new information agencies in 

the banking, radio communications 

and telecommunications sectors”, 

“broadcasting of television 

programmes”, “radio programming”, 

“rental of apparatus for the 

transmission of messages”, “mobile 

radio telephone services”, and 

“telephone services”. 

Comment 

In this judgment the CFI has 

underlined the importance of the 

assessment of non-distinctiveness 

and/or descriptiveness for all goods 

and services applied for. Sometimes 

the goods or services may form a 

sufficiently homogenous category of 

goods or services within the same class 

and therefore a global assessment is 

permissible; whereas the mere fact 

that goods or services are in the same 

class does not automatically mean that 

the assessment should be abstract or 

general, ignoring their diversity. 


Hammonds LLP 

CASE COMMENT 

Opinion of Advocate General Ruiz-Jarabo Colomer (12 May 2009), Joined Cases 

C-202/08 P and C-208/08 P American Clothing Associates SA v OHIM and OHIM v 

American Clothing Associates SA. These cases concern an application 

to register a figurative mark as a Community trade mark (CTM). In 

reaching his opinion, the Advocate General (AG) has examined 

the scope of protection given to national emblems under Article 

7(1)(h) of Regulation (EC) No 40/94 on the Community trade mark 

(the “CTM Regulation”) and also the interplay between the CTM 

Regulation and the Paris Convention for the Protection of 

Industrial Property (the Convention). Rachel Sharples reports. 

Use of maple leaf leads to 

registration problem for 

American Clothing mark 

In July 2002, American Clothing 

Associates SA (“American Clothing”) 

applied to register, as a CTM, a 

figurative mark consisting of an 

image of a maple leaf along with the 

capital letters “RW” for leather goods 

in class 18, clothing in class 25 and 

services in class 40. 

In October 2005, on the basis of 

Article 7(1)(h) of the CTM Regulation, 

OHIM refused to register the RW 

mark in respect of all the goods and 

services sought. The OHIM examiner 

felt that the maple leaf in the RW 

mark copied the Canadian emblem as 

it appears in the communication of 

the International Bureau of the World 

Intellectual Property Organisation of 

1 February 1967 to the States which 

are parties to the Convention and in 

the WIPO database. On this basis the 

OHIM examiner felt that the RW mark 

would give the public the impression 

of being linked to Canada. 

In May 2006, the Board of Appeal 

dismissed an appeal by American 

Clothing against the examiner’s 

decision, pointing out that the word 

element “RW” did not preclude the 

application of Article 6ter of the 

Convention, which confers protection 

on national emblems. The Board held 

that the characteristics of the RW 

mark, namely an eleven-pointed leaf, 

in the shape of a star on a stem with 

spacing between the points visibly 

identical to that of the Canadian 

emblem would be likely to mislead 

the public as to the origin of goods or 

services if registration was allowed. 

In August 2006, American Clothing 

appealed to the CFI, challenging the 

findings of the Board of Appeal. 

The CFI pointed out that Article 1 

of the Convention mentioned both 

trade marks and service marks 

whereas Article 6ter of the 

Convention only referred to trade 

marks. Had Article 6ter been intended 

to cover service marks, they would 

have been expressly mentioned, 

hence the prohibition contained in 

Article 6ter was not indeed to 

extended to service marks. On this 

basis, the CFI allowed the appeal in 

relation to Class 40, holding that 

OHIM was wrong to refuse to 

register the RW mark in respect of 

the services in Class 40. 


In respect of goods in classes 18 and 

25, the CFI found that the RW mark 

and the Canadian state emblem were 

not sufficiently different. Although 

there were minor differences in 

the design of the leaves and the 

stem, these differences were not 

enough to allow the RW mark to be 

distinguished “from a heraldic point 

of view” and rejected American 

Clothing’s appeal. 

Both parties appealed to the 

European Court of Justice (ECJ). 

The Advocate General’s opinion 

1. In relation to American 

Clothing’s appeal 

American Clothing appealed to have 

the CFI’s decision set aside in so far as 

it held that OHIM’s Board of Appeal 

had not infringed Article 7(1)(h) of the 

CTM Regulation. American Clothing 

argued that the same criteria for 

protection should apply to national 

emblems as apply to trade marks. 

The AG identified that national 

emblems and trade marks perform 

different functions which supports 

them being treated differently in law 

and consequently having different 

criteria governing their protection. 

In particular, the CFI was correct in 

finding that Article 6ter of the 

Convention conferred absolute 

protection on national emblems 

against replicas or imitations of 

the emblem. 

The AG also identified that the CFI 

was correct to have taken the 

simplest approach to describing the 

national emblem, namely as a redcoloured 

maple leaf. This was in 

response to criticism by American 

Clothing of the CFI’s decision to adopt 

a heraldic rather than a geometric 

description. 

2. In relation to OHIM’s appeal 

OHIM appealed to have part of the 

CFI’s decision set aside for having 

held that Article 7(1)(h) of the CTM 

Regulation did not apply to service 

marks. 

The Advocate General decided that 

the CFI had misinterpreted the 

Convention and the reference 

made to it by Article 7 of the CTM 

Regulation. 

The AG explained that, Article 6ter of 


CASE COMMENT 

the Convention only required that 

contracting states refuse to register 

trade marks that are identical to, or 

contain, a national emblem. However, 

contracting states were free to extend 

this to include service marks. Bearing 

this in mind, the AG felt that OHIM 

was correct when it referred to the 

Convention setting out a minimum 

standard and not a uniform law. 

The AG felt that the absolute ground 

for refusal contained in Article 7(1)(h) 

of the CTM Regulation extended to 

service marks for three main reasons: 

• The recitals to the CTM 

Regulation, along with Article 1, 

state that the same conditions 

apply both to signs for goods 

and services. 

• The CTM Regulation treats signs 

for goods and signs for services in 

the same way, therefore it did not 

make sense that it would restrict 

protection of national emblems 

for services given that they 

constitute the most important 

sector of economic activities in the 

gross domestic product of all the 

member states. Article 7(1)(h) of 

the CTM Regulation must 

therefore be referring to the 

grounds for refusing registration 

but not to the scope. 

• If, as the CFI found, Article 7(1)(h) 

of the CTM Regulation did reduce 

protection for national emblems, 

it was unlikely that this would not 

have gone unnoticed by member 

states when they were required to 

approve the CTM Regulation in 

accordance with Article 235 of the 

EEC. 

Comment 

If the ECJ chooses to follow the AG’s 

opinion, these cases will highlight the 

wide scope of the protection given to 

national emblems by the Convention. 

It would seem that the AG’s opinion 

is a logical conclusion for the ECJ to 

come to given the apparent intention 

behind the CTM Regulation and a lack 

of rationale (at least in this instance) 

for the differing treatment of trade 

marks and service marks. 

Rachael Sharples, Hammonds LLP, 

rachael.sharples@hammonds.com 

The AG identified that 

national emblems and 

trade marks perform 

different functions 

which supports them 

being treated 

differently in law 

and consequently 

having different 

criteria governing 

their protection. 

In particular, the CFI 

was correct in finding 

that Article 6ter of the 

Convention conferred 

absolute protection 

on national emblems 

against replicas or 

imitations of 

the emblem. 


CASE COMMENT 

Stephanie Burns 

Upon publication, the mark was 

opposed on 21 July 2006 by Tecnica 

SpA (the opponent) on the basis of 

its earlier mark (shown below) which 

was registered for “ski, mountain 

and après-ski footwear and sports 

footwear in general” in class 25. 

The opposition proceeded to a 

hearing before Mr Foley on 22 

January 2008. The hearing officer was 

of the opinion, taking into account 

the guidance in Sabel BV v Puma AG 

(C-257/95), that if it was found that 

the words TECNICA and TECHNICALS 

were not similar, then by the same 

reasoning, the stylised form of 

TECNICA as shown above must not be 

similar to the plain word TECHNICALS. 

On further analysis, the hearing officer 

determined that the marks shared 

phonetic and conceptual similarities. 

However, the opponents failed to 

prove that they had established a 

reputation in TECNICA through use, 

as it was determined that such use 

and sales had been too small to 

support this. 

On analysis of the goods, it was 

determined that there was an identity 

or similarity in respect of some of the 

goods in classes 18 and 25. 

Finally, the hearing officer considered 

whether the opposition could be 

successful under s5(4)(a), and on 

the basis that the applicant was 

attempting to register its mark in 

relation to goods for which the 

opponent had developed goodwill, 

namely, in respect of some goods in 

classes 18 and 25, the opposition was 

successful in relation to these goods. 

CASE COMMENT 

A case of conceptual 

and phonetic similarity, 

technically speaking 

O-131-09, In the matter of UK Trade Mark Application No 2386672 TECHNICALS 

in the name of The Outdoor Group Limited; and Opposition thereto by Tecnica 

SpA (Opposition No 94503), Heard by Amanda Michaels. On 10 March 2005, 

the Outdoor Group Limited (the applicant) made an application 

to register TECHNICALS in classes 18, 20, 22 and 25. Stephanie 

Burns reports. 

The hearing officer concluded that it 

was possible that the goodwill would 

extend beyond simply the outdoor 

footwear for which the opponent 

held a registration in class 25. 

The opposition was successful under 

s5(2)(b) and s5(4)(a), but rejected on 

the grounds of opposition based on 

s5(3). For the purposes of the appeal, 

it was only necessary to consider the 

goods in classes 18 and 25. 

The appeal 

In reviewing the matter on appeal, 

the Appointed Person considered 

that the in order to “interfere” in the 

decision making of the hearing 

officer, it must be established that 

there was a “distinct and material 

error of principle in the decision in 

question” (guidance from the case 

of Digipos Store Solutions Group 

Limited v Digi International Inc [2008] 

EWHC 3371). 

The first ground of appeal was that 

the hearing officer had failed to take 

into account the stylisation of the 

opponent’s mark. It is clear from 

review of the hearing officer’s 

judgment that whilst he considered 

the phonetic and conceptual 

elements of the assessment of 

similarity, he did not consider 

whether the marks as presented were 

visually similar and it was felt just to 

reconsider this opinion. The applicant 

argued that it was unfair to confer 

“word only” protection on a highly 

stylised mark. However, the 

Appointed Person determined that 

the average consumer would have 

relatively little trouble in deciphering 

the word TECNICA despite the 

stylisation, and agreed with the 

hearing officer that the word element 

is in fact the prominent part of 

the mark. 

The Appointed Person dismissed 

the second and third grounds of 

appeal based on the hearing officer’s 

assessment of the aural and 

conceptual similarities between the 

marks, on the basis that the applicant 

had not identified any error of 

principle on the part of the hearing 

officer’s analysis. 

The applicant then argued that as 

both marks were essentially 

descriptive, that small differences 

between them would be sufficient 

to distinguish them, based on the 

guidance of Reed Executive plc v 

Reed Business Information Ltd [2004] 

RPC 40. However, the Appointed 

Person did not share this view, and 

determined that the marks were 

allusive or laudatory and so the small 

differences would not overcome 

the conceptual similarity. 

Overall, the Appointed Person arrived 

at the same conclusion as the hearing 

officer, namely that the marks were 

strongly similar. 

The Appointed Person did agree that 

the hearing officer had erred in his 

analysis of the similarity of goods in 


class 25. Whilst the applicant 

accepted that footwear and the 

particular forms of footwear in the 

specification of each mark was to be 

held identical, the same could not be 

said for clothing. However, on further 

analysis and bearing in mind the 

guidance of Avex Inc v OHIM [2005] 

ETMR 30, it is possible for a tribunal 

to take into account everyday facts 

about the way in which ordinary 

consumer goods are sold and 

purchased, in the absence of specific 

evidence in this regard. Applying the 

test for comparison of goods and 

services as set out in the case of 

British Sugar, the Appointed Person 

considered that the hearing officer 

had come to the correct opinion 

when he determined that there was 

an identity or similarity between the 

various conflicting goods in class 25 

which would give rise to a likelihood 

of confusion on the part of the 

average consumer. 

The applicant also appealed against 

the hearing officer’s findings in 

connection with s5(4)(a) claiming that 

there was insufficient evidence of 

goodwill, and none of 

misrepresentation or damage. 

The Appointed Person considered 

that the hearing officer’s analysis 

of goodwill showed a level of 

inconsistency, firstly by finding that 

the opponent’s goodwill went no 

further than that which had been 

established by the evidence 

submitted, and later that it extended 

beyond these goods. Therefore, the 

Appointed Person was of the opinion 

that if the applicant used its mark on 

the footwear for which the opponent 

had established goodwill (supported 

by evidence), and further, for goods 

designed for outdoor pursuits 

in general (an extension of 

footwear), then this would be a 

misrepresentation. Therefore, the 

opposition as based on this ground 

was upheld but the range of the 

applicant’ goods for which it was 

successful was narrower. 

As such, the appeal was partly 

successful in relation to s5(4)(a) but 

failed under s5(2), with each party 

bearing their own costs. 

Stephanie Burns, Withers & Rogers 

LLP, sburns@withersrogers.com 


Background 

CASE COMMENT 

Proof of genuine prior use 

is essential to successful 

opposition of registration 

Schuhpark Fascies GmbH v OHIM; Leder & Schuh AG 

CFI T-183/08, 13 May 2009. Review based on 

German language judgment. The ECJ 

Court of First Instance recently rejected an 

opposition by Schuhpark Fascies GmbH on 

the grounds that it had not sufficiently 

demonstrated genuine use of its earlier mark in relation to the 

goods for which it was registered. Nick Boydell reports. 

Leder & Schuh AG filed a Community 

trade mark application for registration 

of the figurative mark shown above. 

The application was filed in relation to 

class 18 for bags and accessories, class 

21 for shoe shapers, class 25 for shoes 

and accessories and class 26 for shoe 

laces and hair slides. 

However Schuhpark Fascies filed an 

opposition to the mark based on its 

earlier German national mark 

SCHUHPARK (the earlier mark) which 

was registered for various types of 

shoe in class 25. The opposition was 

grounded on the claim that the earlier 

mark was similar to the mark and that 

there thus existed a likelihood of 

confusion on the part of the public 

in Germany (Article 8(1)(b) of the 

Council Regulation (EC) No 40/94 

(the CTM Regulation)). 

The OHIM Opposition Division 

allowed the opposition against the 

mark for all goods except hair slides in 

class 26. The OHIM Board of Appeal 

reversed this decision and rejected 

the opposition on the ground that 

there was insufficient evidence of 

genuine use of the earlier mark in the 

period of five years before publication 

of the mark (Article 43(2) of the CTM 

Regulation) in relation to the goods 

for which the earlier mark was 

registered. 

Evidence of Use 

Schuhpark Fascies had submitted the 

following to the BOA as evidence of 

genuine use in the period of five years 

before publication of the mark: 

• a judgment from the Upper 

Regional Court of Hamm, which 

had found genuine use of the 

earlier mark; 

• labels containing the earlier 

mark for sewing onto shoes; 

• a statement from the sales 

manager of Schuhpark Fascies 

that shoes bearing the earlier 

mark had been sold; 

• six brochures containing the 

earlier mark which had been 

distributed in Schuhpark Fascies’ 

stores; 

• copies of newspaper 

advertisements containing the 

earlier mark; 

• a plastic bag labelled with the 

earlier mark. 

The CFI’s findings 

The CFI stated that genuine use of 

an earlier mark will be demonstrated 

when use in accordance with the 

earlier mark’s primary function can 

be shown (Case C-40/01, Ansul). This 

primary function is a guarantee of 

origin of the goods and services for 

which the earlier mark is registered. 

The CFI found that a firm or company 

name as such merely has the purpose 

of describing a particular business 

and does not have the purpose of 

differentiating goods and services. 

Genuine use of an earlier mark which 

is a company name can therefore 

only be shown when the use 

occurred in relation to the goods or 

services for which that earlier mark is 

registered (Case C-17/06, Céline). 


CASE COMMENT 

Therefore, in order to show genuine 

use of the earlier mark in this case, 

use must be shown which had the 

purpose of a guarantee of origin of 

shoes in class 25, in other words use 

of the mark as a brand for shoes 

themselves. Evidence of use of the 

mark merely for the carrying on of 

the business of selling shoes would 

therefore not suffice. 

The CFI considered the evidence of 

genuine use submitted to the BOA. 

The judgment from the Upper 

Regional Court of Hamm showed that 

this court had found genuine use of 

the earlier mark. This was based on a 

finding that shoes labelled with the 

earlier mark had been sold, as well 

as other evidence of use that was 

unspecified in the judgment. The CFI 

found that this judgment was not 

sufficient evidence of genuine use 

in accordance with Rule 22 of 

Commission Regulation 2868/95 (the 

“Regulations Implementing the CTM 

Regulation”), as it did not consist of 

any indications concerning the 

place, time, extent and nature of the 

earlier use. The fact that the labels 

containing the earlier mark 

themselves had been submitted to 

the BOA as evidence of genuine use 

did not affect this conclusion. 

The CFI considered the brochures 

and newspaper advertisements that 

contained the earlier mark. The CFI 

found that none of this evidence 

demonstrated that shoes bearing 

the earlier mark had been sold. 

The shoes depicted in this material 

were furnished with other marks or 

contained no branding at all. This 

evidence thus merely demonstrated 

use of the earlier mark for the carrying 

on of the business of shoe shops 

and did not demonstrate that “own 

brand” shoes were sold under this 

mark in those shops. Similarly, the 

plastic bag labelled with the earlier 

mark served only as an indication of 

in which particular shop shoes had 

been bought and did not serve to 

guarantee the origin of any products. 

The CFI agreed with the BOA’s 

analysis that the statement from the 

sales manager of Schuhpark Fascies 

was not sworn or affirmed under the 

law of the member state in which the 

statement had been drawn up and 

was thus not valid evidence of 

genuine use under article 76 (1)(f) 

of the CTM Regulation. 

CASE COMMENT 

Schuhpark Fascies submitted a 

previous decision of the BOA in 

relation to the word only mark JELLO 

SCHUHPARK to the CFI in support of 

its opposition. However the CFI 

rejected this submission on the basis 

that it is not bound by the case law 

of the BOA. 

In addition to the evidence submitted 

to the BOA, Schuhpark Fascies 

submitted to the CFI on appeal 

photographs of shoes bearing the 

earlier mark, statements from a 

supplier and an authorised signatory 

of Schuhpark Fascies, and three 

judgments from German courts as 

evidence of genuine use in support of 

its opposition. However the CFI stated 

that its function was merely a review 

of the legality of BOA decisions under 

article 63 of the CTM Regulation. It 

was therefore unable to make new 

findings of fact based on newly 

submitted evidence. 

The CFI therefore affirmed the 

decision of the BOA and rejected 

Schuhpark Fascies’ appeal. 

Comment 

This case demonstrates the 

importance of carefully considering 

the evidence of genuine use of an 

earlier mark submitted in support of 

an opposition. It must be ensured 

that any evidence of genuine 

use conforms to Rule 22 of the 

Regulations Implementing the CTM 

Regulation. In particular the evidence 

should show the place, time, extent 

and nature of use of the earlier mark 

for the goods and services in respect 

of which it is registered. Thus 

evidence of use of an earlier mark as 

a mere company or trading name 

will not be sufficient evidence of 

genuine use of an earlier mark that is 

registered in relation to goods only. 

Furthermore submission of a prior 

judgment containing a finding of 

genuine use of the earlier mark will 

only be sufficient evidence if the 

judgment itself complies with Rule 

22. Parties should also be wary that 

the CFI is restricted to reviewing 

decisions of the BOA under the 

narrow grounds in Article 63 of the 

CTM Regulation. 

Nick Boydell, Bird & Bird LLP, 

nick.boydell@twobirds.com 

The CFI considered 

the brochures 

and newspaper 

advertisements that 

contained the earlier 

mark. The CFI found 

that none of this 

evidence demonstrated 

that shoes bearing 

the earlier mark had 

been sold. The shoes 

depicted in this 

material were 

furnished with other 

marks or contained no 

branding at all. This 

evidence thus merely 

demonstrated use of 

the earlier mark for 

the carrying on of 

the business of shoe 

shops and did not 

demonstrate that 

“own brand” shoes 

were sold under this 

mark in those shops. 


INTERNATIONAL 

McDonalds, Kuala Lumpur 

On 27 April 2009, Justice Datuk 

Gopal Sri Ram delivered a 

favourable judgement to the 

owner of McCurry Restaurant 

at the Court of Appeal. The use 

of the trademark “McCurry” 

in relation to Indian and 

Malaysian food was not found 

to be an act of passing off of 

McDonalds Corporation’s food 

and beverage business. 

Geetha K reports. 

Apart from its famous restaurant 

name “McDonalds” and “McD”, the 


INTERNATIONAL 

Malaysia: McCurry thwarts McDonalds 

juggernaut at the Court of Appeal 

Geetha K 

McCurry restaurant 

”Mc” prefix is used by McDonalds 

Corporation on its food products 

and its marketing material such as 

McChicken, McMuffin, McRendang, 

Mc Value Meals, McNuggets, 

McCrispy, McEgg, McMonday, 

McTwist, McWings, McSausage, 

McSpaceship, McTeddyBears, 

McCafe, McWatchables, 

McWednesday and McNews. 

McCurry Restaurant, which is located 

on Jalan Ipoh, Kuala Lumpur, began 

its operations in 1999 and the name 

“McCurry” has been claimed to 

originate from the phrase “Malaysian 

Chicken Curry”. The words “McCurry” 

on the restaurant’s signage is in white 

and grey while the background is 

in red. 

The three-judge panel at the Court 

of Appeal found that the High Court 

judge had erred in her decision on 

7 September 2006, as among other 

reasons: 

i) McDonalds Corporation did not 

have goodwill and reputation in 

the name “McCurry”; 

ii) McDonalds Corporation did not 

have monopoly over the prefix 

“Mc” singularly; 

iii) due to the different types of food 

sold by both parties, there was no 

likelihood of confusion among the 

public with the co-existence of 

both marks; and 

iv) the customers of McCurry and 

McDonald were substantially 

different. 

Comment 

This decision from the Court of 

Appeal reflects that the grant of 

extreme monopolies to part of a 

trademark is considered in a serious 

manner, and the courts still revert to 

the convention that “marks should 

be compared as a whole and not 

in segments”. 

Nonetheless, as this is not the final 

battle, we shall wait to see whether 

this Court of Appeal decision is 

appealed by McDonalds Corporation 

to the Federal Court. This is another 

episode in the global battle by 

McDonalds against marks, such as 

McIndian, McChinese, McNoodles, 

all used in the food and restaurant 

business in various countries. 

Geetha K, KASS International 

Sdn Bhd, Kuala Lumpur, 

geetha@kass.com.my 


INTERNATIONAL 

“University of Cambridge” trademark 

is filed 

Cambridge is a well-known university, 

but it had no Chinese trade mark. 

On 10 June 2009, a Chinese local 

company filed “剑桥大学” (widely 

used Chinese translation for 

University of Cambridge) trade mark 

application in class 30 for nonmedical 

nutrition capsule, Nutrient 

solution, nutrition cream and 

nutrition powder at Chinese 

Trademark Office. 

On 2 June 2009, Chinese Central TV 

station reported that a company 

affiliated to the University of 

Cambridge had made food 

supplement using lycopene and 

the product would be available 

in the market this July. 

Since lycopene has functions of antioxidation 

and enhancing immunity, 

it is called “plant gold” and has the 

potential of leading a new generation 

functional food. The local Chinese 

company considers that the 

Cambridge company could become a 

competitor in the rapidly expanding 

health care market in China and, 

being afraid of the well-known status 

of Cambridge, decides to take 

advantage of this mark. 

According to Chinese trade mark 

practice, a trade mark application will 

be published after examination. Then, 

if nobody files opposition against the 

trade mark during the three-month 

period after publication, the trade 

mark will be granted. 

Experts say the local company has 

almost no chance to get the trade 

mark. Since University of Cambridge 

is well-known, the examiner may 

reject the application for this reason. 

If not, University of Cambridge may 

INTERNATIONAL 

Chinese update: problems 

of bad faith registrations 

and piracy hard to tackle 

oppose the trade mark when it is 

published or file cancellation even it is 

granted. Some experts even say that 

the local company has only used the 

registration for advertisement. 

In recent years, more and more 

Chinese go to overseas colleges after 

finishing high school in China. Even 

lots of training schools have their 

names associated with famous 

universities. Those overseas colleges 

are strongly recommended to create 

and file Chinese trade marks to 

prevent abuse and bad faith 

registration. 

Apple’s iPhone, three years to wait 

Apple Inc is finding that its hugely 

popular iPhone mobile phone cannot 

enter the Chinese market since the 

IPHONE trade mark for mobile 

phones is owned by a Beijing local 

company, Hanwang. 

In October 2002, Apple Inc filed a 

trade mark application for IPHONE 

which was granted on 21November 

2003, registration no 3339849. 

However, the trademark only covers 

computer software and hardware, 

and it is really difficult to understand 

why no application was filed by Apple 

Inc also to cover telephones and 

mobile phones. 

On 20 May 2004, Hanwang filed a 

trade mark application for “i-phone” 

for telephones, mobile phones and 

video phones. The application was 

published in September 2006. Apple 

Inc filed opposition against the 

trademark within three months from 

the publication date and TRAB made 

the decision in March 2009 to grant 

the “i-phone” trade mark to Hanwang. 

Although Apple Inc may appeal the 

decision at Beijing First Intermediate 

George Jing 

Court, whose decision can be further 

appealed, it may take three to five 

years to get a final decision. 

Alternatively, Apple Inc may file a 

cancellation action against the trade 

mark at TRAB, although it may take 

three years to get decision. 

Whether Apple Inc could win this case 

would largely depends on whether 

Apple Inc could prove that iPhone 

was famous in China before 20 May 

2004, which would be very hard to 

prove since the iPhone was not 

popular in China that time. 

Microsoft v computer retailer 

At the end of last year, Microsoft 

made notarized purchase of 12 

computers at the retailer at different 

dates and found that the Windows XP 

and Office 2003 software installed in 

these computers was pirate software. 

Microsoft then sued the retailer for 

continuous and customary copyright 

infringement and asked for half 

million RMB damage (about 70k US$) 

Since an ordinary DIY computer only 

cost about 2000-3000RMB and 

400RMB for Windows XP and Office 

2003 software is relatively expensive, 

customers usually ask for free 

installation of those programs — 

otherwise they may buy computer 

from another retailer. 

These retailers have figured out a 

strategy. Any customer wants to buy 

a computer should prepare its own 

software and the retailer will turn a 

blind eye to its provenance (illegal 

copies of these software can be 

bought for 10 RMB (just 2.5% of 

authorized copy) nearby). 

George Jing, Wisdom IP Services, 

Beijing, george.jing@wisdom-ip.com 


PEOPLE 


TRADE MARK OF 

THE MONTH 

PEOPLE 

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@gje.co.uk 

Chief Executive: 

Keven Bader, keven@itma.org.uk 

Treasurer: 

Chris McLeod, chris.mcleod@hammonds.com 

Secretary and Registrar: 

Margaret Tyler MBE, margaret@itma.org.uk 

Committee Chairmen: 

IPREG: Kate O'Rourke, 

kate.o'rourke@charlesrussell.co.uk 

Designs: Simon Bentley, 

simon.bentley@patentable.co.uk 

Education & Training: Robert Furneaux, 

rfurneaux@iprights.com 

Trade Mark Administrators' Course: 

Tom Farrand, tfarrand@hgf.com 

General Purposes & Finance: 

Imogen Wiseman, 

imogen.wiseman@fjcleveland.co.uk 

ITMA Review: Tania Clark, 

tclark@withersrogers.com 

Laws & Practice: Stephen James, 

sjames@jenkins.eu 

Membership: Robert Furneaux, 

rfurneaux@iprights.com 

Book: Mark Hiddleston, 

mark.hiddleston@elkfife.com 

Programme: Katie Cameron, 

kcameron@jenkins.eu 

Communications: Tom Farrand, 

tfarrand@hgf.com 

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, 


Editor, ITMA Review: Kelly Robson, 

kellyrobson@btinternet.com 


AND FINALLY... 

NEWS OF 

MEMBERS 

Raworth Moss & Cook became part of 

the Murgitroyd group of companies on 

16 January 2009. Stephen Wise, Graham 

Feakins and their staff are now based in 

Murgitroyd’s Croydon office, and their 

new contact details can be found at 

www.murgitroyd.com. 

Berwin Leighton Paisner LLP are please 

to announce that Ian Gruselle, Head 

of Trade Marks, has been promoted 

to the position of Director. Ian can be 

contacted at the London Office, 

ian.gruselle@blplaw.com. 

Correction 

In the June issue, Chris McLeod’s email 

address appeared incorrectly. It’s 

chris.mcleod@hammonds.com. 

AND FINALLY... 

FORTHCOMING EVENTS 2009 

21 July Evening Meeting: Food & Beverage labelling Royal College of Surgeons 

(2 ITMA CPD Points) Jane Mutimear, Bird & Bird 

3 September IPReg ‘Countdown to Regulation’ Science Museum, London 

(2 ITMA CPD Points) 

3 September IPReg ‘Countdown to Regulation’ Science Museum, London 


15 September Evening Meeting: Well known marks - well known law? Royal College of Surgeons 

(2 ITMA CPD Points) Roman Cholij, Cam Trade Marks 

15 – 18 September Marques Annual Conference Brighton 


24-25 September ITMA Autumn Conference Lisbon 


30 Sept – 3 October PTMG Lisbon 


1 October IPAG 6th Annual Conference The Radisson SAS Portman Hotel, 

(3 ITMA CPD Points) London 

6 October IP Bar Reception tbc 

27 October Evening Meeting: A Practitioner’s Guide to the new UK rules Royal College of Surgeons 

(2 ITMA CPD Points) John Reddington, Williams Powell 

11-14 November INTA Leadership Meeting Miami Beach, Florida 

(by invitation only) 

24 November 75th Anniversary celebration Royal College of Surgeons 

8 December ITMA Christmas Lunch Royal Lancaster Hotel 

FORTHCOMING EVENTS 2010 

24-26 March London International Meeting Waldorf Hotel, London 

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


Ian Gruselle

ITMA Lisbon 2009: a guide for delegates

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