ITMA 322 APRIL 2005

Contents
ITMA business
Public Relations 2
ACG Silver Jubilee Autumn
Conference 3
PTMG Autumn 2005
Conference, Cannes 4
Community Trade Mark
Renewals 5
Council Meeting 6
Nation as Brand – the ultimate
IP Challenge? 7
A Patent Office for the 21st
Century 8
Feature
What’s in a Brand? 9
Design & Copyright
The Costs of Copying
Precedents 11
Oakley v Animal: A True
Spectacle 12
Case comments
On Your Bike 15
Pass the Dictionary,
would you 17
Skorpi 18
Stone Island 19
People
Alexander von Mühlendahl 21
ITMA Advanced Trademark
Law and Practice Course 21
News of Members 22
Notice to Students 22
Christmas Party 22
Guess Who? 23
Membership List 23
Proposed publication
of tutorial material 23
Diary 24
We welcome your
contributions . . .
Please send to
Kelly Robson
57 Hyde Vale
London,
SE10 8QQ
kellyrobson@btinternet.com
The final date for copy
is the 10th of each month.
ITMA Review
The Institute of Trade Mark Attorneys
No. 329 December 2005
President’s Christmas Message
I was
recently
asked to
fill in a
questionnaire
about
myself for
the PTMG
newsletter,
Law Lore
& Practice.
You know
the sort of
thing,
favourite cuisine (anything containing
potatoes), which famous historical
person would you like to have
been and why? (Lord Nelson – loved
by a beautiful woman and died a
hero’s death), what will you be doing
in ten years’ time? (still filling in this
questionnaire). I found many of the
questions difficult to answer because,
for once, I had decided to present my
less-flippant side. However, one
question, what is your all-time
favourite film, presented no such difficulties.
My favourite film is – and
has been for many years – It’s A
Wonderful Life, Frank Capra’s homage
to the values of a selfless man
living in small town America during
the Depression and The Second
World War. The film’s central message,
that a man has just as great a
duty to serve others as himself, mirrors
the way I was brought up, both
at home and at school. I suppose, in
a way, this explains why I find
myself writing this Christmas message.
ITMA is a small, though perfectly
formed, professional body. It relies to
a considerable degree on the efforts
of volunteers to serve its membership
in areas such as education and
training, programme, public relations
and professional development.
Without those efforts, there would be
no lectures, no conferences and no
litigators’ rights. Without those
efforts, the possibility of trade mark
attorneys being included in the
future pool for judicial appointment
would not exist and the position of
the Institute in the post-Clementi regulatory
process would be left completely
to chance. Without those
efforts, individual members and individual
firms would find themselves
having to fend alone in an increasingly
complex professional world.
So my (professional) Christmas
Message is – to paraphrase John F
Kennedy – ask not what ITMA can
do for you, ask what you can do for
ITMA. Volunteer to assist in the
Institute’s activities, to put something
back into a profession that provides
us all with a fascinating way of
making a living. Who knows, you
might even find that you enjoy it!
Thus endeth the lesson.
Meanwhile, back in the world of
seasonal excess, it’s time to put the
Julian Clary look-alike fairy on top of
the James’ Christmas tree and for the
present Mrs J to buff up the dumbwaiter
in preparation for our annual
British sherry party. Given my wife’s
present preoccupation with the
Terpsichorean arts (every Saturday
night, BBC1, 6.20pm), I have decided
to buy her an appropriate gift. A
competitively priced copy of “Naked
Irish Dancing Volume 2: What to do
with your arms” seems to fit the bill
perfectly. And with this picture of
domestic bliss, all that remains for
me to do is to wish you all a Merry
Christmas and a Happy and Healthy
New Year.
Stephen James, President

ITMA business
Public Relations
Media watch & press releases
On 18 October, the government published its proposals
for reform of the legal services. The DCA news
release gave it the headline “Consumers at the heart
of legal reforms” and said the three key proposals
would a) set up an Office for Legal Complaints (OLC)
independently to investigate complaints; b) set up a
Legal Services Board (LSB) to regulate legal services;
and c) enable different kinds of lawyers and nonlawyers
to work together on equal footing to provide
legal and other services.
The news was not very widely reported, though the
broadsheets carried brief items, as did the specialist
press. It was totally ignored by the popular press and
I didn’t see anything on TV or hear anything on
radio.
But talking of radio, the Institute was invited to do
a live interview with BBC Radio Leeds on the morning
of our attendance at the Leeds Business Advice
Day on 9 November. Robert Franks of Franks and Co,
who was assisting on the day, agreed to do the interview
which followed a local press release we issued
covering our attendance at the event. I should mention
that Alan Fiddes of Urquhart Dykes and Lord
also helped out at the Business Advice Day exhibition.
Alan himself had already attracted much media
coverage the previous month when he was extensively
quoted by the Times on a story covered by the BBC,
Guardian and Daily Mirror newspapers about the
refusal by the Patent Office to allow Sir Alec Ferguson
to register his name as a trade mark for posters. They
claimed he was too famous for the name to have any
distinctive character and Alan was quoted as saying
the ruling was in breach of Sir Alec’s human rights.
Chris McLeod, Hammonds, chair of the ITMA
Review Committee and a member of the Public
Relations Committee, was interviewed by BBC 2’s
Working Lunch programme in mid-November. The
topic was the ECJ judgment which went against a
local Yorkshire producer who had wanted to call her
cheese Yorkshire FETA. Chris took the line that it was
good that products which are produced in a particular
way or in a particular area could be protected and
that, in this case, it was right to allow FETA to be a
PDO (protected designation of origin) and applicable
to Greek cheese.
The media also became interested in another case
where an application was rejected. This time it concerned
the refusal to grant a French company a CTM
for the smell of strawberries on the grounds that the
olfactory sign was not capable of being represented
graphically as the fruit’s smell varied according to
variety of strawberry. The BBC, Guardian and FT all
reported this story.
Another story to excite the press was the decision
by GOOGLE to drop the name Gmail in the light of
prior claims to the mark from various quarters including
a small research company in London, IIIR, and
also a German company Giersch who registered
Gmail in Germany in 2000. GOOGLE is apparently
now offering email addresses @googlemail.com rather
than @gmail.com.
And finally, as they say, to the Sun newspaper,
which ran the story of Digby Milo Jones, of
Newburgh, Aberdeenshire who was teased at school
and found it difficult to get a girlfriend because of his
name. He wrote a book entitled I Hate My Name or
How Not To Name Your Baby which offered suitable
names for children. He subsequently decided to register
ihatemyname.com as a trade mark so that he
could follow up his book with t-shirts and other merchandise.
He may not have had much luck with the
ladies in his youth but he certainly knows how to
make the most of his misfortune now.
Business Advice Open Days
As mentioned above, the Leeds event was held on 9
November. We now have the full programme for
2006, for which I am seeking volunteers for all bar
Cumbria in May. The programme is Aintree
Racecourse, Liverpool on 16 February 2006; the NEC
Birmingham on 21 March; The Stadium, Swansea on 6
April; The Ramada Hotel, Belfast on 26 April; the
Rheged Centre, Cumbria on 10 May; The Highland
Resort, Aviemore on 18 May; Wembley Conference
Centre on 25 May; Cornwall on 26 June; Cheltenham
Racecourse on 28 September; and the Marriott Hotel,
Peterborough on 10 October. As usual, if you would
like to help out at any of these events please contact
me at ken.storey@btinternet.com or telephone 020
8941 6079.
New membership brochure
The PR Committee have now approved a final draft
of a new leaflet which is aimed at attracting more
members to the Institute. The draft was also viewed
by the Membership Committee. The leaflet aims to
tell people about the work of ITMA, demonstrate the
importance of affiliation and explain how professional
body affiliation can give them, their clients and the
trade mark industry in general an informed advantage.
When published we aim to target those contacts
we made when we attended INTA as well as IP solicitors,
journalists, business organisations and other
groups identified by both committees.
Careers
We are scheduled to attend the University of
London’s Law Fair on Wednesday 18 January
between 12 noon and 3.00 pm in the Strand. It would
be helpful if I had a newly qualified trade mark attorney
to help out, basically explaining the nature of the
job and the examination system. It is not a formal
presentation, merely standing behind a table handing
out our careers leaflets and answering students’ question.
If you would like to volunteer please contact me
in the usual way.
My thanks are due to Duncan Welch of JE Evans-
Jackson & Co Ltd who kindly stepped into the breach
and spoke to the University’s law students earlier last
month (November) in an Alternative to Law Forum.
2 ITMA Review December 2005

This note was written before the event but I am sure
Duncan will let us know if it went badly!
ITMA website
The PR Committee has selected a company called
Aardvark Media to redesign and overhaul the
Institute’s website. The detailed work is likely to commence
in the New Year, but for those wanting to
know more about the winning project team they
could look at www.squaremeal.co.uk which is a website
they designed and which many Londoners will
know.
ACG Silver Jubilee Autumn Conference
13 October 2005, London
The Anti-Counterfeiting Group (ACG) is currently
celebrating its Silver Jubilee year. ACG was founded
in 1980 by 18 companies which shared concerns about
their brands being faked. To give an idea of the historical
context, 1980 was the year that Willie Carson won
his second Derby on Henbit, West Ham beat Arsenal
in the FA Cup final, Nottingham Forest were champions
of Europe and England held the Ashes (having
won the series 5-1 in Australia the year before).
Founder member companies could not possibly have
envisaged that the ACG autumn conference in 2005
would have the title “Cybercrime” and that ACG
membership and speakers would be drawn from corporate
names such as Microsoft, Vodafone and eBay.
The opening session of the conference was called
“The Big Picture” and focused on security and the
changing face of enforcement in relation to IP crime.
Leslie Bryant, head of the IPR/Cybercrime unit of the
FBI, explained the commitment of the FBI to counterfeiting
and gave interesting examples of different
approaches that have been taken against counterfeit
problems in California and New York. The use of the
FBI warning logo on DVD films was of general interest
and drew questions from the audience.
Ed Gibson, former FBI agent and now Chief
Security Advisor of Microsoft UK, spoke about
Microsoft’s commitment to ‘trustworthy computing’,
which is central to the Microsoft innovation process.
A speaker from the National Criminal Intelligence
Service (NCIS) spoke openly about the enforcement
issues in a UK political context. He also explained
about the formation of the Serious Organised Crime
Agency (SOCA) which formally begins on 1 April
2006. The single agency will bring together the
responsibilities that are currently shared by NCIS and
the National Crime Squad (NCS). It will also take
over organised crime investigations currently handled
by the immigration service and HM Customs.
The second session was given over to the specialist
investigation services that are required to combat
counterfeiting in the internet age. Peter Anaman,
from law firm Covington & Burling (although he
went out of his way to stress that he is a non-lawyer),
talked about identity theft and the concept of ‘phishing’.
The examples given shocked many of the audience
as they showed how this type of fraud works.
He used actual examples of emails and websites that
ITMA BUSINESS
University Challenge –The Professionals
Application forms have now been submitted for the
ITMA team of Alan Porteous (captain), Ian Bartlett,
Tibor Gold and Catherine Wolfe. CIPA has been invited
to enter a team and it will be interesting to see a)
whether either team gets through the preliminary
selection and b) what happens if we are drawn
against each other’s. Some might say that ITMA
would win hands down, but I couldn’t possibly comment!
Ken Storey, PR Manager, ken.storey@btinternet.com
are virtually indistinguishable from the genuine web
identity. Many of the individuals in the audience
went away from this presentation questioning how
they personally use the internet and email and
whether their personal data is as safe as it should be.
Barry Watters and Rob Trevelyan from the investigation
firm Alternative Investigation Management
(AIM) talked about investigation practice in the context
of tracking sources of counterfeit products that
are sold over the internet. Gavin Hyde-Blake from
investigation firm Carratu International focused on
explaining the importance of experienced investigators
and good procedure when dealing with potential
evidence in a computerised format. Gavin gave a very
clear explanation about how a computer works and
how information can be retrieved in some cases even
when the files concerned have been deleted, which
many of the non-technically minded people amongst
the audience found very helpful.
The final session was entitled “Brand protection
strategies”. Ravi Mohindra, a solicitor with Vodafone
Group, opened with a presentation on domain name
registration and dispute strategies that showed that
Vodafone have a structured approach to the management
of their domain name portfolio.
The final presentations of the conference were
devoted to the trading platform eBay. Jo Grist and
Jyrki Nikula of eBay explained the commitment of
eBay to protect the IP rights of third parties and the
process they operate under their VeRO programme
(Verified Rights Owner) where eBay work with right
holders to remove infringing items from auction. A
“user education tutorial” is a recent addition to the
eBay site. Stuart Lockyear and Georgina Jackson of
Burberry Limited followed, explaining the scale of the
problem Burberry face with counterfeits on eBay.
They explained that they continuously work with
eBay to remove counterfeit items from sale, and the
information contained within eBay listings has resulted
in significant seizures at wholesaler/importer
level.
ACG organised a very interesting and informative
conference with excellent speakers who held the
attention of the audience to the very end of the last
session. The informal environment of an ACG conference
provides opportunity for delegates to share
experiences and know-how, and to make useful con-
Continued on page 4
December 2005 ITMA Review 3

ITMA BUSINESS
tacts. Delegates are drawn from a very wide range of
backgrounds including brand owners, barristers, law
firms, investigators, anti-counterfeiting technology
companies, police and trading standards authorities,
HM Customs and Excise, university academics and
the Patent Office. The conference also serves as an
important reminder to attendees of the practical constraints
and pressures that law enforcement organisations
in the UK are under, and the dedication of many
individual members within these organisations.
Many things have changed since 1980. West Ham
and Nottingham Forest fans continue to believe that
PTMG Autumn 2005 Conference, Cannes
It’s official. “The internet is a headache” confirmed
the Deputy Secretary General of the World Customs
Association at this year’s PTMG autumn conference.
Many of the speakers in Cannes discussed this symptom
and the other problems arising in the field of
pharmaceutical counterfeiting and the seeming conflict
between the private rights of brand holders and
public interests in using the internet, online auctions
and credit cards.
Nikolay Livadkin of Louis Vuitton began the conference
by discussing the problem of counterfeit sales
online. He commented that up to 30% of counterfeit
sales may be via the web, in an arena which is evolving
fast, but where the legal position is often
unfavourable, public authorities unmotivated and
brand owners often uncertain of the factual position.
He feared that the main beneficiary of counterfeits
was organised crime and hoped that there would be
more involvement by auction site companies in dealing
with the problem.
Jyrki Nikula of eBay responded to this, by stressing
that they are simply a venue for trade, but that they
do take active measures to protect IP rights, much of
it on a voluntary basis. They educate users, search for
suspicious items, let rights holders request the
removal of infringing items, suspend offenders, cooperate
with law enforcers and provide information
on certain sellers.
The attorney J Scott Evans surfed into the lecture
room to discuss the problems of counterfeiting and
spoofing on the web. He stressed that companies
should talk and work together with competitors, law
enforcers, legislators, the public and internally, and
that better communication and co-operation is
required. He provided some compelling statistics,
such as that in one case 13 arrested people were
found to operate 4,600 websites and that 40% or more
of pharmaceuticals in some countries are counterfeit.
This issue was followed by Eli Lilly and Company’s
Bruce Longbottom who provided useful substantive
suggestions for dealing with a problem he compared
to weeding. Even if some weeds come back, you have
to keep weeding to reduce the problem. To tackle the
weeds, he particularly recommended criminal
enforcement, working with law enforcers, UDRP
actions, seeking stronger laws, educating the public
better, sharing information within the industry and
contacting internet auction companies, customers,
the glory days will return one day, and the recent success
by the English cricket team has helped to ease the
pain for their long-suffering supporters. Brand owners,
enforcement groups and consumers today face an
increased risk of counterfeits and IP related fraud,
most of which originates from and/or are distributed
by well organised criminal networks. ACG now represents
the interests of over 200 companies in 30 different
countries and its core objectives — lobbying,
awareness and networking — remain as relevant
today as they did in 1980.
Steve Beale, Unilever plc and Forest fan
ISPs, and possibly credit card companies.
The complexities of key words on the web were
then discussed by Nick Wood of Com Laude. Like
other new technology issues, this is resulting in IP
infringement litigation, although he believes creative
solutions and working flexibly with search engines
may lead to better results. He commented on the benefits
and problems of key words, the steps taken by
search engine companies and the litigation against
them. He believed that brand owners should understand
and profile the people who surf for their brands
and those who infringe them, they should get to
know the search engine companies, how they differ,
the litigation against them and whether there are
more appropriate targets for litigation.
When counterfeits are purchased online, credit
cards are often used and Lewis Segall of VISA
explained how the credit card system operates. The
contracts with the banks issuing the cards prevent the
illegal use of cards, but moreover, the retail merchant’s
bank is likely to terminate its contract with the
merchant, if there are many charge backs against the
merchant, where purchasers refuse to pay.
The internet is not simply a source of counterfeits,
but also of inaccurate medical information, as
Professor Trevor Jones explained. In a poll 84% of
people said that they trusted information on the internet,
but only 51% said they trusted information from
pharmaceutical companies. Patients are acquiring
medical information from questionable sources and
are not taking their prescribed pills as a result. The
answer he feels is more information from GPs, so
patients have an information relationship with their
GPs which, in turn, will help preserve trade marks.
Pharmaceutical counterfeits do not simply cross
“virtual” borders, as Kunio Mikuriya explained in a
talk on the World Customs Organisation. WCO is
improving the legal framework, legal powers, interparty
co-operation and information sharing, as well
as analysing the risks. They hope to raise the awareness
of the public and governments, develop legal
standards and controls and work together with businesses,
in what they regard as a war of many long
battles.
WIPO was also represented at PTMG: Matthijs
Geuze, along with three other people in WIPO’s
“enforcement section”, is active in educating the public
and helping states, the exchange of information
4 ITMA Review December 2005

and the co-ordination of official bodies. He recommended
the forum on the WIPO website that allows
the exchange of information, co-operation and training
benefits.
Christophe Zimmermann of the European
Commission gave a useful pro-active, practical guide
to customs seizures and stressed that brand owners
should set up customs watches and co-operate more
actively with customs. More fake medicines are being
seized, but counterfeiters are switching routes,
improving their concealment methods, securing entire
trafficking routes and setting up complex structured
organisations. Setting up customs watches, he
believed, is a step in the right direction in the protection
of the health of our families and society as a
whole.
Practical guidance was also given on packaging
security by Geoff Power of GSK. Different strategies
and different tools are appropriate to different situations
and he discussed bar codes, RFID, overt protection
using holograms and inks, secret security measures
and forensic tags which each have their benefits
and their disadvantages. Creativeness has led to several
successful prosecutions connected with Glaxo.
Stacey Hallerman of Pfizer then discussed the benefits
of branding clinical trials and protecting those
names. Branding can give value, a sense of community
with a patient, assist with data analysis and have
industry benefits. Often the exhibition booth concerning
a clinical trial may be more visited than that of the
finished product. It may well be appropriate to do
Community Trade Mark Renewals
1 November 2005 marked an important milestone in
the ten years since OHIM opened its doors in
Alicante. Proprietors of registered Community trade
marks filed back in 1996 now have the opportunity to
apply to OHIM for the renewal of these rights for a
further ten-year period.
Time frame
Applications to renew a registered CTM can be made
before OHIM at any time during a six-month period
which expires on the last day of the month in which
the CTM itself expires.
If the renewal application is not submitted within
this initial six-month period, a further six-month period
is available, with a 25% surcharge added to the
corresponding renewal fee, up to a maximum of
€1,500 per application.
E-Renewal
Of particular interest at this time will be the two electronic
renewal interfaces, which have been developed
as part of OHIM’s ongoing e-business programme,
and which will offer CTM proprietors the maximum
degree of flexibility when renewing their CTMs.
A publicly accessible e-renewal form with both single
and multiple filing options is available on the
Office’s homepage, and registered users of MYPAGE
have the possibility of using the Renewal Manager
ITMA BUSINESS
availability searches for the names for clinical trials
and register those names.
Regulatory affairs for pharmaceutical marks was
discussed by Beatrix Friedeberg of AstraZeneca. The
US and EU authorities both have the same aims of
ensuring safe dispensing, but adopt different strategies,
which she compared. In relation to the EMEA, it
may be worth asking colleagues elsewhere in Europe
if they foresee a problem with a proposed name,
reviewing the EMEA website for other approved
names, starting the process early and at first seeing if
the preferred name is allowed, before trying others
(whilst in the US it may be more appropriate to start
by filing for two names for the same product).
Finally, infringement issues concerning get-up were
discussed by David Bernstein of Debevoise &
Plympton and Mary Lehany of Novartis. They considered
what evidence to file to prove confusion, such
as evidence of motive (including what the defendants
have tried in the past), evidence to show how they
could trade without using your get-up, survey evidence,
evidence of actual confusion on chatrooms etc,
and evidence of how products will look side by side
on shelves. They advised the protection of copyright,
designs and trade marks for get-up where possible
and the need to act quickly and talk internally as well
as with competitors when faced with supermarket
own brand products.
James Cornish, Page White and Farrar,
james.cornish@pagewhite.com
which automatically lists all CTMs in their name
which are pending renewal.
Fees
The recent fee reductions have seen a significant
decrease in the cost of a CTM renewal, making a further
ten years of Community-wide protection a more
attractive and cost-effective option than ever for businesses
worldwide. Electronic renewal of a CTM costs
€1,350, with a fee of €1,500 for proprietors who opt to
use the other mail, fax and personal delivery methods.
Prospects
OHIM looks forward to a positive response from its
users as the CTM renewal period commences, with
around 40,000 renewal applications expected in the
first two years of activity. With this in mind, the
Office has worked hard to ensure that all systems
relating to the renewal procedure are fully operational
on 1 November, and we hope that this effort will benefit
our users as they extend their CTM protection
into the next decade.
More Information
Link to OHIM’s website: http://oami.eu.int/
Link to e-renewal: http://oami.eu.int/en/erenew.htm
Link to List of Fees:
http://oami.eu.int/en/office/marque/taxes.htm
December 2005 ITMA Review 5

ITMA BUSINESS
Council Meeting, September – October 2005
Joint APRAM/BMM/GRUR/MARQUES/ ITMA/ECTA
Council Meeting
The next Joint Council Meeting would be held on 3
March 2006 in Girona Spain. A number of volunteers
from the GP&F Committee were willing to attend the
meeting and representatives from the L&P Committee
might also attend.
General Purposes & Finance Committee
Money Laundering: A flyer had been circulated to members
advertising the joint ITMA/CIPA seminar on
money laundering on 14 December.
JEB: The Committee had considered the JEB business
plan and had passed it comments back to the Board.
Crash Course 2006: Three weekends had been selected
on which to hold the 2006 Crash Course run by
Nottingham Trent University.
Overseas Visits: Mrs Deas and the team that had accompanied
her were thanked for the fantastic job that they
did in the Far East. The visit to Japan and China had
been an outrageous success and it was felt that the trip
should be repeated. The seminars had been very well
attended with translations of presentations and scripts
being provided. The China Trade Mark Association
spoke of their intentions to develop close relations with
ITMA and feedback from Japan included their interest
in the CTM and Designs. The team were now focusing
on the visit to the US in early 2006 and would travel to
Washington, Chicago and New York City, where they
would hold seminars and drinks receptions on appropriate
subjects.
Trade mark moots: It was hoped that three to four moots
would be run in Leeds and London next year. Mike
Knight from the Patent Office had offered to assist and
to judge candidates performance and to declare a winner
at the end of the year.
Book Committee
Mr Manish Joshi had joined the Committee as a coopted
member. The edited proofs of the UK Trade
Mark Handbook had been sent back to Sweet &
Maxwell and the Committee were now awaiting publication
of the next release.
Designs Committee
A formal response was submitted on the proposed
changes to the UK design registration system.
Education & Training Committee
New Short Term Working Group
The new Short Term Working Group were in the
process of reviewing the syllabi so that it focused more
on the core skills that were required of a trade mark
attorney.
QM Course: Mr Hiddleston had stepped down from his
position as coordinator for the QM Course and was
thanked for all the work he had done over the years.
Responsibility for the course had been handed over to
Ms Wiseman, Ms Moya and Ms Ambrose.
One-to-one consultations/extended tutorials: This year the
consultations had proved very popular, although the
number of students applying for extended tutorials
were decreasing.
Student representatives: The Committee were in need of
one more member to assist Mr Wood in the role of
Student Rep. Ideally they would be trainees at foundation
level.
UK Drafting Seminar: A number of half-day seminars
were planned for 2006, designed to cover core skills
and aimed at advanced level students.
Examiner/Student Afternoon Session: The Committee was
keen to set up an afternoon session for examiners and
students, which would really be an oral expression of
the examiners comments.
Litigators Accreditation Board
A letter had been sent to all corporate members advising
them of the deadline date for applying to the Board
for a ruling on eligibility for the Crash Course. The
notice would be added to the Institute website.
Joint Examination Board
It was confirmed that the JEB Secretarial had moved to
the CIPA offices in Chancery Lane.
Membership Committee
Membership Drives: A new brochure aimed at recruiting
new members had been produced and this would be
used by the Committee in their drive to increase associate
and overseas members.
Honorary membership: Council agreed to invite Mr DC
Evans to become an honorary member.
Applications for membership: The following applicants
were recommended to Council:
Student: Mr ME Barrett, Ms AC Blackburn, Ms M Kelly
and Mr RE Pixton
Affiliate: Mrs KH Adams, Mr D Carter and Ms SM
Dacre
Ordinary: Mr DS Moore
Fellow: Mr JW Mears and Mrs MA Ramage
Associate: Mr PA Bird, Ms G Kelly, Dr J McCarter, Mr EJ
Powell, Ms LE Walker and Ms L Zafer
Public Relations Committee
Sponsorship Budget: The Committee’s request for a yearly
budget to use for sponsorship had been approved.
This could be used at their discretion and could take
the form of the Design Awards which were being sponsored
next year, or other smaller causes as appropriate.
University Challenge: The second round of the selection
process had taken place in September.
Website review project: Aardvark Media had been chosen
and the consultation process would begin shortly to
ensure that all aspects of the project were covered.
What is the Key? Campaign:
The closing event for the Patent Office’s ‘What is the
Key?’ campaign was held at the British Library in
London on 24 October. Mr Storey had attended the day
6 ITMA Review December 2005

ITMA BUSINESS
and Mrs Ramage gave a talk on behalf of the Institute.
The event was very well attended with around 120
people present.
Continuing Professional Development
CPD Accreditation: The Committee had agreed that it
should be made quite clear to bodies who asked for
ITMA CPD accreditation that they could only state in
their literature that the event was ‘accredited by ITMA’,
rather than sponsored or supported by ITMA.
ITMA Review Committee
It was reported that there had been a problem with the
quality of the photos featured in the July/August edition
of the ITMA Review and this was due to a change
in the resolution of the images. A reassurance was
given by the printer that this would not happen again.
Redesign of the ITMA Review: The Committee were considering
a re-design of the ITMA Review in conjunction
with the re-design of the ITMA website and it was
hoped this might include more colour.
Programme Committee
Autumn Conference 2005: The conference had taken
place on 29 and 30 September in Barcelona and had
Nation as Brand – the ultimate IP Challenge?
Seminar Review
On 31 October, there was a lunchtime seminar at the
Intellectual Property Research Institute at Queen Mary,
University of London. The speaker was Simon Anholt,
the author of a number of books on the branding of a
nation (for further information, see www.earthspeak.com).
He considered what is not a brand first. It is not one
of the tools of marketing such as advertising, or a logo.
It is more than externally visible factors. It is not just a
sense of common purpose. It is a complex concept. It
could be described as “the perception in the minds of
people in the market place”.
Simon gave numerous examples of good and bad
brands and why efforts by those brands to improve
their market perception may have failed. These examples
reinforced his view that brand is not the message
but the context in which it is received. It is “the fertile
soil or the stony ground”, is how he put it, and is
formed by an uncountable number of factors. That is
what makes it so complex.
Imagine that instead of creating a brand for a tin of
beans, these factors are applied to create a brand for a
nation? Can all of the factors apply or are only some
aspects scalable?
Why brand a country in the first place? By giving
numerous anecdotal examples, Simon filled in his talk
like a painting, applying texture and colour as he went.
Starting with the little village of Scratbury in Norfolk
and its unique identity and where this comes from,
Simon developed the ideas which could equally apply
to Ethiopia, Nigeria, Turkey and Mongolia, to name a
few of the destinations mentioned.
Whilst is it possible to see the direction of this particular
“supertanker” (the subject is vast and its implications
and effects of such scale that I could sense the
been a great success. The Committee had received very
positive feedback on the event which had made a small
profit.
OHIM Seminar: The Committee were liasing with
OHIM over holding a day-long seminar later on in
2006. This was thought to be great news as OHIM were
becoming more approachable.
Registry Seminars
Four half-day seminars would take place in January
2006 which would see Mike Knight of the Registry discussing
respective opposition systems. The seminars
would travel to four locations round the country.
Christmas Lunch: Flyers had gone out advertising the
London and Northern Christmas Lunches.
Formalities Committee
Everything was running smoothly in terms of the
preparation for the courses in Jersey and London in
2006. A new course would be run in Birmingham.
Internet Committee
Council would consider registering ‘www.itma.eu’ as a
domain name.
supertanker analogy bubbling to my own linguistic
surface), it is also easy to see how it must take hours to
slow down or turn. So too must a nation have a longterm
outlook; difficult in this fickle world.
Another interesting thread, worthy of far more discussion
than the time allowed, revealed itself as the
conflict which arises between different entities within
the nation wanting the new brand. For example, the
tourist board, which often has great marketing purchasing
power, would like a view of the nation which
lends itself to tourism. This frequently conflicts with
the nation view the business community would like.
Simon gave Scotland as an example of this. The tourist
board spends a large sum of money enhancing the
view people have of Scotland as 150 years behind the
times: few roads, rural and relaxing; whereas it is a
modern country and the B2B contingent want to get
over an image of modernity and economic success so
as to attract investors.
Full of realism, it is hard to disagree too strongly
with the view that perceptions of countries and the
people in them are often justified. It is for the nation
itself and the people in it to work with their good qualities
to create the brand for their nation and
people which they know is true and which they can
sustain at an international level. Only then will the
branding nation have something to shout about.
How does all this interact with pure IP in terms of
protection and exploitation — well there was not
enough time to cover that. Perhaps a Branding Nations
2 is in order? I would highly recommend it.
The seminar programme for the IPI at Queen Mary
can be seen at http://www.ccls.edu/events/
Amanda Maclachlan, Allen & Overy LLP
December 2005 ITMA Review 7

A Patent Office for the 21st Century
The United Kingdom Patent Office is changing to
meet the challenges and demands of the 21st century.
Observers may ask, why is there a need for change?
The UK Patent Office has a very high reputation for
the quality of the intellectual property rights it grants:
patents, trade marks and designs; also for the speed
with which the process takes. So apart from doing
better in these areas what else is there to focus on?
First of all, the government has put a significant
emphasis in its policy making on the need to support
innovation. Innovation is the key to global competitiveness,
especially with respect to transition
economies such as China and India. The intelligent
use of intellectual property underpins successful
innovation and the UK Patent Office and its resources
has to be at the centre of enabling business and industry
in that activity. Ministers want and expect us to
help create, nationally and internationally, the policy
framework to support their innovation agenda, which
aims to increase the nation’s economic well being.
Users too want the UK Patent Office to broaden its
activities to help them enforce and protect their intellectual
property rights. Litigation costs are significantly
higher in the UK than elsewhere and therefore
there is an onus on us to help ensure that there are
processes in place and available which can ensure the
resolution of disputes between IP owners at reasonable
costs. Also, through and as a result of the IP
Crime Strategy there is pressure to help owners protect
their IP against counterfeiting and piracy, which
all the figures show is on the increase. Finally, both
the government and users want us to increase the
amount of effort put into the task of raising awareness
of IP, its value and benefits, so that industry and commerce
have the information necessary to determine
whether and how to protect the fruits of their innovation.
All of this means that we need here in the UK
Patent Office in Wales to change and adapt what we
do to meet the demands placed upon us.
But what does that mean in practical terms? First of
all it does not mean any compromise to the reputation
of the Office for quality of product and service. But it
does mean that we need, in addition to delivering the
world class services in real time and in an e-business
environment, to deploy resources to help create the
policy frameworks which meet the changing world of
the 21st century, both domestically and internationally.
There will be significant issues such as patenting in
Europe , the level of fees and services provided by the
Office of Harmonisation in the Internal Market
(OHIM), or the development of the various international
treaties, from the Paris Convention onwards
which will need to be addressed and adapted to meet
the need of industry and commerce in a fast-moving
global economic environment. There is the need to
help provide a user-friendly enforcement regime
which enables rights holders to protect their interests
at reasonable costs in order to reap the rewards for
their innovation. In this area there are both significant
ITMA BUSINESS
policy considerations, eg in the copyright field, as
well as practical issues. In that connection, the UK
Patent Office is already discussing with user interests
the greater use of mediation to solve IP disputes, as
well as the possibility of the UK Patent Office providing
a mediation service itself.
Finally, there is the strand of work aimed at increasing
the understanding of industry and commerce in
the UK of the effective use of intellectual property. We
have to be imaginative in our approach and collaborative
in our efforts. Working with CIPA and ITMA
recently on ‘The Key’ campaign is a good example of
this. We will be looking to learn lessons from this
approach and develop our joint efforts further.
How will all of this be brought into effect? Well,
first of all we are in discussions with the Department
of Trade and Industry and the Treasury to ensure that
our ideas for a re-focussed and changed Patent Office
fit with the political agenda and that our fee income
can be allocated to fund this wide range of activities.
That said, any move to develop commercial services
which users — trade mark attorneys and patent
agents — as well as government, industry and commerce
would be prepared to pay for (eg, a mediation
service) will have to cover their costs (and indeed
make a profit!). We are also looking internally at our
structures, communications and information technology,
customer management and HR issues in order to
ensure that we can develop the skills and the technological
support to integrate these strands of work
smoothly.
The UK Patent Office believes there is a need for it
to change and adapt to meet the challenges that trade
mark attorneys, patent agents and their customers
have given us. We need also to meet the needs of the
economic and political agenda. We have a common
interest in the development and encouragement of
innovation (and therefore the grant of IP rights) to
further economic growth within the UK. At the heart
of the Patent Office will remain the capacity to provide
the high-quality service of granting IP rights, but
in the future ranked alongside this will be the work
involved in developing the best possible policy framework
nationally and internationally to support those
rights, and in providing the appropriate enforcement
strategies and the processes which increase the understanding
of IP and its contribution to society’s economic
and social well-being: a broad and coherent
front.
It is a challenge, but I and all of my colleagues in
the Patent Office are ready for it and are confident,
based on our successful development of reputation
and performance, we can deliver these changes for
the benefit of the economy, industry, commerce, in
partnership with modern and competitive professions
of attorneys and agents.
Ron Marchant, Patent Office Chief Executive,
ron.marchant@patent.gov.uk
8 ITMA Review December 2005

Features
What’s in a Brand? Brand Valuation
Neil Coulson
“Groupe Danone is recognised for the dynamism and
strength of its brands”
(www.danone.com)
“We cherish our brands; we are creative and courageous in
pursuing their full potential”
(www.diageo.com)
Brands are big business. Brand owners recognise that
much of the value of their company exists in their
brands and their intangible assets. According to
research undertaken by PricewaterhouseCoopers,
intangible assets and goodwill accounted for up to
74% of the average purchase price of companies in
20031 .
The trade mark
Most brands are protected and underpinned by registered
trade marks and the trade mark itself is a valuable
asset, forming part of the wider concept of intangible
assets or “brand value”. The value of the brand
to a company will be reflected not just in its trade
mark portfolio, which is vital as the base unit of protection,
but also in less easily quantifiable terms such
as market perception and positioning. The two exemplars
quoted above, Diageo and Groupe Danone,
advertise on their websites that not only do they protect
of their brands — both will have extensive portfolios
with sophisticated, proactive management — but
also that they look to extend their brands to their full
value and potential. Their approach is typical of all
successful brand-owning companies. To do this effectively,
though, companies need to quantify the
abstract concept of the brand. This enables effective
management, development and the addition of corporate
value.
Trade marks are vital for the protection of brand
value and, almost invariably, brand development will
centre on promotion of the trade mark or marks
(which may or may not be the name of the product)
in the mind of the consumer. The role of the trade
mark arises from its very nature. Its function is to distinguish
the goods or services of one undertaking
from those of other undertakings, thereby indicating
the origin of those goods or services to the consumer.
The market distinction created by a strong trade mark
by which the consumer recognises the brand underpins
the performance of the brand (as a general concept)
in national and international markets.
Brand reputation
The value of a brand depends to a large extent on its
reputation, which is important both offensively in the
generation of sales (and perhaps expansion into new
markets) and defensively in the protection of the
brand from encroachment by third parties. In litigation
to protect investment in a brand, either for trade
mark infringement or passing off, reputation can play
a key role. Indeed, in a passing off action, reputation
is the first requirement of Lord Oliver’s classic trinity
of reputation, misrepresentation and damage that he
set out in the Jif Lemon case. Active management of
the brand contributes to the strengthening of this reputation.
Brand valuation
So we have the trade mark and we have established a
reputation in the market. But how do the trade mark
and other intangibles together create brand value?
And how is it measured? Goodwill, market perception
and position, pricing, quality — all these factors
combine with a strong trade mark to drive the
brand’s development and value. But, the presence of
intangibles creates valuation questions beyond those
of valuing the trade mark per se. They are, after all,
“intangibles”. Why should you value your brand?
How can it be done? What impact does the brand
value have on the brand owner’s business?
Specialist valuation groups in accountancy and
finance practices offer brand valuation services.
Indicators of brand value can be derived from the cost
of creation of the brand (including the cost of development
of the trade mark, although this generally
bears little relation to current value); comparative
market analysis; royalty streams (actual or potential)
and economic use. All are useful indicators, none on
its own provides the complete answer and, as we are
dealing with intangible assets, there will always be a
certain degree of value judgment. However, as precise
a valuation as possible provides key information for a
company’s internal management of its brands and in
its external relations with its shareholders and potential
investors. Further, as its brands can be a company’s
main assets, an accurate valuation is essential for
the purposes of a merger or acquisition. The concept
of brand value in general and quantification of it
needs to be communicated to a company’s internal
and external market.
Active and effective brand management
Key performance indicators assist in a valuation
process and provide effective management tools for a
company’s brand team. Advertising and promotion
constitutes a large proportion of spend and a correlation
of the amount spent on advertising and promotion
to overall brand value can facilitate a precise
evaluation of the success or otherwise of the advertising
and promotional activity to the brand value. This
in turn can drive budget allocation, but above all it
means that advertising and promotional spend is seen
as an asset value rather than simply an expense cost.
External market analysis of the impact of either specific
campaigns or corporate advertising in general on
brand value (most likely to be measured through
sales) contributes valuable data to the brand manager
and this data can be converted into financial informa-
Continued on page 10
December 2005 ITMA Review 9

FEATURE
tion related to brand performance and reach, both
within the brand’s own sector and its cross-market
appeal.
Through such effective management, valuation and
market positioning, brands as concepts have developed
their own corporate history, with companies
keen to share information with the consumer, who
then buys into this history. For example, Cadbury-
Schweppes (www.cadburyschweppes.com) proudly
tell the browser of their website:
“Millions of you enjoy our brands around the world and
we would love to tell you more about them. You can find
out how a brand was born, famous slogans, momentous
milestones and take an amusing, amazing or alternative
look at what makes it so special.”
The brand management team, which must include
the trade mark professional at its very heart, can take
advantage of market and economic use information to
add value to the brand by targeting brand development,
based on useable data generated through careful
analysis of market positioning, consumer perception
and awareness, sales trends by market and by
core values that consumers associate with the brand.
The brand history is developed accordingly. A strong
brand permits a premium price to be charged and
(hopefully) generates high sales levels. Advertising
and promotional strategies, market expansion (both
regional and sector cross-over) and development of
brand potential are much more feasible when the
brand management team actively manages its brand.
The keystone of brand management and its protective
tool is the trade mark portfolio.
The result
Development of a brand utilises the overall brand
perception and the intangible assets it represents.
Goodwill is the “attractive force which brings in custom”
to quote Lord MacNaghten. While Lord MacNaghten
spoke of the common law concept of goodwill, he
could just as easily have been referring to the ethereal
concept of the brand. It is an invisible force because it
is an intangible asset, but its worth is precisely that
attractive force which persuades a consumer to part
with their money for that brand of goods or services
rather than any other. Putting a value on it allows the
brand management team to develop and protect it
effectively.
Neil Coulson, Jones Day,
ncoulson@jonesday.com,
www.jonesday.com
1 “Valuing IP and determining the cost of capital”; John Rugman and Tony Hadjiloucas in “Building and
Enforcing Intellectual Property Value”, PricewaterhouseCoopers, 2005.
ITMA
needs
you!
The Review tries to cover as much case law as possible
to keep members informed of changes. We already have a
trusty band of volunteers who supply case reports.
However, we are sure that there are budding writers
out there who would like to see their names in print.
If you would like to be on the monthly circulation list for
cases intended for publication in the Review so that you can
offer your services, please contact Chris McLeod,
chris.mcleod@hammonds.com.
10 ITMA Review December 2005

Design & Copyright
The Costs of Copying Precedents
London General Holdings Ltd & Ors v USP PLC & Anor [2005] EWCA Civ 931
This was an appeal regarding the level and basis of
damages and royalty awarded in respect of a precedent
document that had been copied by a competitor.
The defendants offered a wide range of financial
services including extended warranties for electrical
goods. These extended warranties were classified as a
form of insurance and consequently attracted insurance
tax. In the 1997 budget, the insurance tax
payable on premiums was raised from 2.5 % to 17.5%.
In 1998 a series of draft documents was developed
by the second claimant, Unicorn, to provide an
extended warranties scheme which would not be
liable for insurance tax (the New Scheme). One of the
documents was the Collections Account Agreement
(CAA). This was not a finished document as it
required alteration and development to be effective,
but it contained the ideas on which the New Scheme
was based. These included the implementation of a
trust which was a necessary component if the New
Scheme were to avoid insurance tax liability.
In 1999 Unicorn assigned all of its intellectual property
rights, including the copyright in the New
Scheme including the CAA and other documents, to
the First Claimant, USP.
Scottish Power
In 1997/1998 Scottish Power, one of the first defendant’s
(LGH) customers, was interested in setting up
an extended warranty scheme which avoided the
insurance tax premiums. Both LGH and Unicorn
made presentations to Scottish Power, who favoured
Unicorn’s scheme. However, the new Scottish Power
scheme was to be administered by LGH.
During negotiations to determine the exact wording
of the documents required for the Scottish Power
scheme, LGH and Unicorn signed a mutual confidentiality
agreement. The CAA was then sent to LGH.
This draft was subsequently reworked to create an
effective document, but in essence remained faithful
to the substance of the draft CAA. LGH saved an
electronic version of the redraft. It was this electronic
version of the redrafted CAA, and clones of this
redraft, which made up the infringing copies and on 8
November 2002 the High Court held that LGH had
infringed USP’s copyright and was entitled to damages.
The Apollo contract
In April and early May 1999 LGH used the saved
electronic version of the redrafted CAA to prepare a
document as part of a trust-based scheme for Apollo
2000 Limited (Apollo). LGH also sent the redrafted
CAA to a firm of solicitors for advice.
At the trial for liability only, Judge Weeks held that
the use of the redrafted CAA infringed the copyright
in the original draft CAA. At the damages inquiry
LGH was found to be liable for the infringements
relating to Apollo. However, there were two other
incidents of the redrafted CAA being used in similar
ways to the Apollo contract.
In the damages inquiry Master Price held, in relation
to Apollo, that “the right way to proceed to
assess these damages is by way of notional royalty”.
He then awarded £15,000 by way of compensation for
the labour and skill involved in producing the template
CAA as a notional royalty, but did not comment
on the other times LGH used the redrafted CAA to
provide extended warranty schemes which were
based on the New Scheme.
The Powerhouse contract
The main issue in the appeal related to a claim for
damages in respect of a contract to provide this trustbased
extended warranty scheme with another company,
Powerhouse. LGH and USP were in competition
with each other for this contract.
LGH used the electronic version of the redrafted
CAA to prepare documents for a trust-based extended
warranty scheme. LGH disclosed the existence, but
not the actual text, of the redrafted CAA to
Powerhouse as the basis for LGH’s scheme.
Powerhouse was initially concerned about the robustness
of LGH’s scheme although it was “keener on
price” than the scheme offered by USP. Accordingly,
LGH took advice and after further discussions,
Powerhouse was persuaded that LGH’s scheme was
sufficiently robust. It was not suggested by either of
the parties that Powerhouse had actually seen a copy
of the redrafted CAA.
Powerhouse then told USP about the alternative
LGH scheme. As a result, USP subsequently reduced
its price, to the effect that USP would make £111,720
less profit over the lifetime of the scheme. USP was
awarded the contract and sought to claim the loss of
profit from LGH for infringement of copyright.
At the damages inquiry Master Price awarded USP
damages of £126,720 consisting of £111,720 for loss of
profit in relation to the Powerhouse contract and a
notional royalty of £15,000 in relation to the Apollo
contract.
Appeal
At the appeal LGH argued that there had been double
recovery because USP had been awarded both damages
and notional royalty in respect of the contract
with Powerhouse. However, the Court of Appeal said
that this argument was “misconceived”, as an infringing
copy could be put to several uses, each of which
could give rise to a separate damages claim.
The Court of Appeal also dismissed LGH’s arguments
that a lack of foreseeability and lack of causation
meant that the loss of profit in the Powerhouse
contract was not attributable to the breach of copyright
in respect of the draft CAA. The court dismissed
this argument, but said that the damages award for
the loss of profit should be struck off in any event,
Continued on page 12
December 2005 ITMA Review 11

DESIGN & COPYRIGHT
because USP’s loss was not attributable to the breach
of copyright. Such loss lay beyond the scope of the
protection of the law of copyright. Laws LJ pointed
out that where a copyright is in a written document
the breach in question consists of the unauthorised
use of the actual text of the document. The pirating of
the ideas in the actual text is not a breach of copyright.
As both parties had acknowledged that Powerhouse
had not seen the actual text of the CAA, and nor, on
the facts, was the specific text of any importance to
Powerhouse, it was held that although USP had suffered
loss from the use of the ideas in the template,
such loss was outside the scope of protection of the
law of copyright. LGH had, in using the CAA as a
basis for its redrafted documents, appropriated the
labour and skill of the authors of the documents and
had therefore infringed the copyright in the document.
However, this appropriation of labour and skill
did not cause the loss. Consequently, the Court of
Appeal set aside the Master’s loss of profit award.
Oakley v Animal: A True Spectacle
USP had cross-appealed, arguing that if LGH succeeded
in reducing the amount of damages the
notional royalty should be increased and that they
should be awarded damages to reimburse them for
the loss of the full implementation fee of £40,000.
However, the Court of Appeal held that there was no
basis that USP could claim in damages the loss of the
full implementation fee.
The Court of Appeal did say, however, that the royalty
of £15,000, awarded by Master Price, had only
related to the infringement committed in connection
with Apollo. Consequently the royalty award had to
be uplifted to £35,000 to take into account the later
infringements by LGH.
This case follows the doctrine that copyright protection
will only protect the unauthorised use of the
actual text, rather than the ideas contained within that
text. To quote the age old adage, there is no copyright
in an idea.
Shelley Blythe and Simon Bennett,
Arnold & Porter (UK) LLP
Oakley Inc v (1) Animal Limited & Ors and (2) The Secretary of State for Trade and Industry [2005] EWCA Civ 1191
The recent Court of Appeal judgment in the case of
Oakley Inc v Animal Limited examines what started off
as an ostensibly simple dispute concerning the
Registered Designs Regulations 2001. This unlikely
case has now provoked one of the most important
administrative law discussions of recent times, with
weighty implications for not only the Registered
Design Regulations but for all subordinate legislation
made in the UK, including that relating to other intellectual
property rights.
Background
In 2001 the Registered Designs Regulations were
introduced, creating new law applicable to registered
designs from 9 December 2001. The purpose of the
Regulations was to implement European Community
Directive 98/71/EC, which provided for a more harmonised
system relating to registered designs across
Member States. The Directive was incorporated into
UK law by way of s2(2) of the European Communities
Act 1972 (‘the 1972 Act’) which, broadly, gives ministers
the power to make regulations for the purpose of
implementing Community laws.
The case arose specifically in relation to the transitional
provisions of the new legislation. What was to
happen in relation to designs registered prior to 9
December 2001 (ie, under the existing Registered
Designs Act 1949) was not conclusively determined
by the Directive. Instead of applying the new law
indiscriminately, the Directive gave member states an
option to derogate1 and retain in force existing legislation
on validity for all designs already registered
under such legislation.
Such options are frequently seen in Community leg-
islation and, although potential difficulties had been
predicted by some2 due to the fact that it would be a
government minister and not Parliament who chose
whether the option should be exercised, there was no
case law which dealt with the subject convincingly.
The Secretary of State chose to exercise the option
given by the Directive, with the effect that all existing
design registrations would continue to be subject to
the old law. This was expressed in Regulation 12 of
the 2001 Regulations.
The position following the introduction of the
Regulations was therefore that the old law on validity
would apply to designs registered prior to 9
December 2001, and the new law would apply to
those registered after. Oakley was the owner of a registered
design for sunglasses which was registered
before 9 December 2001 and so, according to the
Regulations, subject to the old law.
Shortly before the start of a trial in which Oakley
was attempting to assert its registered design rights in
certain sunglasses against Animal, it was learnt that
Oakley had published one of the designs a month
before it had been registered. Under the old law a
design registration must be ‘new’ in the UK in order
for registration to be valid. If it could be shown that
the design had been published in the UK by someone
free to do so before the design was registered here,
then novelty would not be established and the design
would not be validly registered. Animal Limited used
this information to challenge the validity of Oakley’s
registered design right and Oakley put forward the
defence that it wasn’t in fact the old law which
applied to the case, but rather the new law contained
in the Regulations. If this was correct then Oakley
1 Article 11.8 of EC Directive 98/71/EC
2 ‘The Modern Law of Copyright and Designs’, 3rd edition, Laddie, Prescott, Vitoria, Speck, Lane
12 ITMA Review December 2005

would be off the hook in relation to the prior disclosure,
because, in contrast to the old law, the
Regulations provide for a grace period of one year
during which prior use of the design by the design
owner does not destroy the necessary element of
‘novelty’.
s2(2) European Communities Act 1972
In support of its argument Oakley looked at s2(2) of
the 1972 Act:
2(2) Subject to Schedule 2 to this Act, at any time after
its passing Her Majesty may by Order in Council, and any
designated Minister or department may by regulations,
make provision-
(a) for the purpose of implementing any Community
obligation of the United Kingdom, or enabling any such
obligation to be implemented, or of enabling any rights
enjoyed or to be enjoyed by the United Kingdom under or
by virtue of the Treaties to be exercised; or
(b) for the purpose of dealing with matters arising out of
or related to any such obligation or rights or the coming
into force, or the operation from time to time, of subsection
(1) above; …
Oakley submitted that s2(2) of the 1972 Act gave the
executive a limited power to implement Community
obligations, but only where those obligations were
clear and would involve no element of policy making.
Policy making of any kind, said Oakley, is the sole
prerogative of Parliament. In exercising the option to
derogate from the Directive and deciding that the
new design law would not apply to certain registered
designs, Oakley contended that the ambit of s2(2) had
been exceeded and that Regulation 12 was therefore
ultra vires and should be struck out. The effect of
striking out Regulation 12 would be to make the
Regulations applicable to all design registrations –
past and future – with the result that Oakley could
take advantage of the extended grace period.
Animal argued that a proper interpretation of s2(2)
showed that the Secretary of State was perfectly within
her powers when she chose to exercise the option,
and that regulation 12 was therefore valid.
Decision at first instance
The case was heard at first instance by Peter Prescott
QC 3 . In a judgment dated 17 February 2005 4 he held
that, in so far as the Secretary of State had by the 2001
Regulations exercised the option to retain existing legislation
in relation to old registered designs, she had
acted ultra vires. He found that Regulation 12 was not
valid under either s2(2)(a) for the purpose of “implementing
any Community obligation” or “enabling
any such obligation to be implemented”. Nor could it
be allowed under s2(2)(b) in relation to “dealing with
matters arising out of or relating to” any such obligation.
His reasoning for this decision was based on his
opinion that the decision left open by the Directive
was a “significant policy choice” which “had to be
implemented by primary legislation”.
Despite finding that Regulation 12 was ultra vires,
the judge refused to sever it from the remainder of the
Regulations. He reasoned that this would bring into
3 Sitting as a Deputy High Court Judge of the Chancery Division.
4 [2005] EWHC 210 (Ch)
DESIGN & COPYRIGHT
force Regulations which the Secretary of State had not
intended to pass.
English law governing severance is clearly established
and the basic principle is that subordinate legislation
will be held invalid as a whole if it contains a
provision which is ultra vires. One of the few exceptions
that may prevent a provision being struck out is
where a court can remove the offending matter and
be satisfied that it is causing no change in the substantial
purpose and effect of the impugned legislation.
Where it cannot be so satisfied, it may not strike
out the offending provision – the whole piece of legislation
must be taken together and treated as invalid.
Peter Prescott QC concluded that the removal of
Regulation 12 would indeed be effecting a change in
the overall purpose and effect of the legislation, and
necessarily arrived at the conclusion that the 2001
Regulations were invalid as a whole.
This decision could be classified as something of a
pyrrhic victory for Oakley. Although Oakley needed
Regulation 12 to be found ultra vires, this finding in
itself was of no use if Regulation 12 could not be severed
from the rest of the Regulations. The finding that
the entire Regulations were invalid meant that the
position reverted to what it was before the introduction
of the Regulations – the applicable law was therefore
the 1949 Act, and precisely what Oakley wanted
to avoid!
Both parties appealed. Animal argued that Mr
Prescott was incorrect to find that Regulation 12 was
ultra vires and Oakley appealed on the basis that,
although it was correct to find that Regulation 12 was
ultra vires, the judge had been wrong to say that
Regulation 12 could not be severed.
Court of Appeal
The Secretary of State also appealed that decision and
was represented in the Court of Appeal by the
Attorney General himself, Lord Goldsmith QC. The
appeal opened with the Attorney General’s submissions
on validity, on which topic he was supported by
Animal. By taking the validity issue first, if the earlier
court’s findings were found to be incorrect and the
Regulations were in fact valid, there would then be no
need to look at the severability point central to
Oakley’s appeal.
The case was heard in the Court of Appeal by Lord
Justices Waller, May and Jacob, with the leading judgment
being given by Waller LJ. In a judgment published
on 20 October 2005, all three judges agreed that
the findings of the lower court should be reversed.
They held that the 2001 Regulations, including the
provisions in Regulation 12 relating to the continuing
validity of old law, were validly passed and were not
ultra vires.
The basis for the decision differed slightly from
judgment to judgment. It is common ground between
them, however, that the decision to opt out of the
Directive for the purposes of Regulation 12 lay firmly
within the realm of the Secretary of State’s powers
under s2(2) when creating subordinate legislation
Continued on page 14
December 2005 ITMA Review 13

DESIGN & COPYRIGHT
through the implementation of a Community
Directive.
The significance of the decision for Animal and
Oakley was that the 2001 Design Regulations became
binding law, including Regulation 12. As the particular
design in dispute was registered prior to 9
December 2001 it came under the opt out and was
therefore subject to the old law. In the absence of the
year’s grace period that new registrations now enjoy,
proof that the Oakley sunglasses had been validly
brought into the UK before the design was registered
meant that the registration of the design was invalid
and therefore ineffective. Animal’s challenge was successful
and Oakley was unable to prove it had a
design right to assert against Animal.
Emily Bennett, Bird & Bird,
emily.bennett@twobirds.com
19 January 2006
Whisky tasting
Diageo
Fine Dining Room
21 February 2006
Quiz Night
London venue
(tbc)
The Designs Committee is looking for
contributors for the Design & Copyright
section of the ITMA Review.
If you are interested,
please contact John Reddington
jreddington@jonesday.com
14 ITMA Review December 2005

Case comments
On Your Bikes
In the matter of application no 2315408 by Professional Cycle Manufacturing Limited and in the matter of
opposition no 92249 thereto by Halfords Limited, 31 August 2005, Richard Arnold QC
Professional Cycle Manufacturing Ltd (the applicants)
applied for registration on 9 November 2002 of their
trade mark EXCEL in Class 12 for “bicycles”. The UK
Registry cited the trade mark APOLLO EXCEL
against the applicants’ mark, which was registered for
“bicycles; tricycles; parts and fittings for all of the
aforesaid goods” in class 12. The applicants had overcome
the objection on the basis of honest concurrent
use of the mark.
Halfords Ltd (the opponents) opposed the applicants’
mark under section 5(2)(b) 1 for their own mark
APOLLO EXCEL and also with respect to another
CTM registration for EXEL in Classes 7, 8 and 12
(“land vehicles”), owned by Exel SA, a French company,
which is not related to the opponents.
The hearing officer found that the applicants’ mark
was similar to the opponents’ registration and upheld
the ground of opposition under section 5(2)(b).
Regarding the EXEL trade mark, the hearing officer
stated that a mark which was not cited during the
examination couldn’t be used to oppose except by its
proprietors. The applicants and the opponents
appealed against this decision.
In the appeal, the Appointed Person held that the
marks were not in concurrent use during the relevant
period and there is a likelihood of confusion in the
minds of the relevant public. Allowing the opponents’
appeal, it was also held that there is a likelihood of
confusion between the applicants’ mark and the EXEL
trade mark.
Arguments before the hearing officer
The opponents had argued before the hearing officer
that the applicants’ mark EXCEL was confusingly
similar to their trade mark APOLLO EXCEL and to
the EXEL trade mark of Exel SA. In response to the
argument by the applicants that the opponents had
not shown any evidence of confusion, the opponents
responded that the absence of evidence of actual confusion
was immaterial since the test was one of normal
and fair use.
The applicants contended that the opponents had
not filed evidence to justify its entitlement to base its
opposition on CTM registration of EXEL trade mark.
They also argued that their mark and the opponents’
mark would give rise to any confusion in the market.
The applicants relied on CODAS Trade Mark [2001]
RPC 14 and argued that the absence of evidence of
confusion despite a lengthy period of honest concurrent
use by the applicant showed that there was no
likelihood of confusion.
During the hearing, the hearing officer had drawn
the attention of the opponents’ solicitors to the commentary
on section 7(2) 2 FOOTNOTE in paragraph 8-
115 of Kerly’s Law of Trade Marks (13th ed), which
states:
“Curiously section 7(2) refers only to an opposition
by the proprietor of the earlier trade mark or other
earlier right. On the words of the section it appears
that if an opposition is entered by a party other than
the proprietor of the earlier trade mark or other earlier
right and such a party relies upon that earlier trade
mark or other earlier right, as he is entitled to, then
the Registrar must take into account honest concurrent
use and, in an appropriate case, allow the mark
to proceed to registration. That party would then
have to bring an application for a declaration under
section 47 following registration. It is hard to reconcile
this with the mandatory words of Article 4 of the TM
Directive.”
The opponents’ solicitors responded that they
would concentrate on their trade mark and when the
hearing officer asked if they want to withdraw the
opposition under the EXEL mark, they replied that it
would appear necessary to do so. However, the opponents’
solicitors wrote to the hearing officer after the
hearing that they could rely upon EXEL registration,
because the examiner did not raise this mark as a citation
against the applicants’ mark, and the said mark
has not been overcome on the grounds of honest concurrent
use and section 7(2) does not apply to the said
mark. The opponents’ solicitors requested the hearing
officer to reconsider the matter and give them an
opportunity to address the issue.
Continued on page 16
1 A trade mark shall not be registered if because it is similar to an earlier trade mark and is to be registered for
goods or services identical with or similar to those for which the earlier mark is protected, there exists a likelihood
of confusion on the part of the public, which includes the likelihood of association with the earlier trade
mark.
2 Section 7 (1) This section applies where on an application for the registration of a trade mark it appears to the
registrar
(a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or
(b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,
but the applicant shows to the satisfaction of the registrar that there has been honest concurrent use of the trade
mark for which registration is sought.
(2) In that case the registrar shall not refuse the application by reason of the earlier trade mark or other earlier
right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade
mark or other earlier right.
December 2005 ITMA Review 15

CASE COMMENTS
Evidence filed by the parties
The applicants’ evidence in support of honest concurrent
use of the mark consisted of a witness statement
by Ms Sharon Kelly, the director of the applicants’
company. Ms Kelly stated that the trade mark EXCEL
has been used by the applicants in the United
Kingdom for bicycles since 1996 and the turnover was
12.5 million pounds in five years from 1998 to 2002
and an amount of £300,000 was spent on promotions
and advertisements; and 19,000 to 44,000 bicycles
were sold in each of those years.
The applicants also submitted copies of advertisements
in Makro Mail together with the copies of
invoices.
The opponents evidence were mainly witness statement,
stating that the substantial use of the applicants’
mark commenced only in 1998 and that they
have not used the mark alone, but with logos or with
another word, and finally that the trade mark is not
distinctive and therefore turnover figures were not
sufficient to make it stand out in the market place.
Decision of the hearing officer
The hearing officer commented that the applicants
had not used the EXCEL mark alone, but in combination
with another word, such as, EXCEL STARBURST,
EXCEL REVOLUTION, EXCEL BLACK BULLET.
The hearing officer observed that the opponents
had withdrawn the opposition under EXEL trade
mark but he remained quiet regarding opponents’
request for reconsideration of the issue. He observed
that the goods were identical. He held that the opponents’
trade mark APOLLO EXCEL was inherently
distinctive. He observed that the similarities of the
mark outweigh the differences and if the applicant
had sought registration of the mark actually used, the
outcome might have been different. He held that
there is a likelihood of consumers being confused into
believing that the goods provided by the applicants
are those of the opponents or provided by some
undertaking linked to them.
Appointed Officer’s decision in appeal
The applicants had contended that the hearing officer
did not refer to the CODAS case and neither did he
give reasons for the same, which is important for
arriving at a decision on the likelihood of confusion.
The Appointed Person agreed with the applicants and
in this regard referred to the decision in English v
Emery Reimbold & Strick Ltd [2002] EWCA Civ 605,
[2002] 1 WLR 2409, in which the Court of Appeal has
stated that the giving of reasons is the fundamental
part of the judicial process. The Appointed Person
decided to treat the appeal as re-hearing. He also criticised
that the opponents’ solicitors did not take issue
with the correctness of CODAS as a matter of law. He
observed that no argument was presented based on
Road Tech Computer Systems Ltd v Unison Software (UK)
Ltd [1996] FSR 805. The Practice Direction states: “If an
application which has been accepted on the basis of honest
concurrent use is then opposed, the mere fact of honest concurrent
use will not save the application from refusal”.
This was referred in CODAS case.
The Appointed Person decided that the applicants’
evidence does not show that there is no likelihood of
confusion. He stated that the hearing officer had correctly
assessed the likelihood of confusion based on a
comparison between the mark applied for registration
and the earlier trade mark “assuming normal and fair
use of the marks on a full range of the goods covered
within the respective specifications”. The Appointed
Person pointed out that this is a hypothetical test,
which does not necessarily correspond to the use that
the parties have actually made use of the respective
marks. He also referred to the comments made in the
context of infringement by Laddie J in Compass
Publishing BV v Compass Logistics Ltd [2004] EWHC
520 (ch), [2004] RPC 41 AT [22]-[23].
The Appointed Person stated that the applicants
couldn’t rely on the CODAS case, because in that the
applicant and the opponent had concurrently used
their marks for upwards of 14 years. The respective
marks were CODAS and CODA for computer software.
The parties had traded in different markets and
there was no evidence of confusion. It was proved in
CODAS that the respective marks have been able to
function as trade marks in the market without any
confusion.
The Appointed Person stated that there is no evidence
to show that the opponents had been using the
mark during most of the period in which the applicants
claim to have been using their marks (1996 to
1998). Therefore, he decided that it is impossible to
conclude that the use of the two marks that has been
made shows that there would be no likelihood of confusion
if the opponents’ mark were to be used normally
and fairly in respect of the full range of goods
for which it is registered.
The Appointed Person stated that the opponent is
entitled to appeal against the hearing officer’s interpretation
of section 7 that Exel SA’s registration cannot
be relied upon. He commented that the opponents’
position was that of a defendant in a criminal
case who enters a guilty plea after an adverse ruling
by the judge on a point of law. The applicants’ solicitors
argued that they would be unfairly prejudiced if
opponents were permitted to rely on Exel SA’s registration
because they would be deprived of an opportunity
of adducing evidence, seeking their consent or
attacking the validity of the registration. The
Appointed Person agreed to the opponents’ solicitors’
point that they could have done these things before
the hearing. He decided that the opponents could rely
upon EXEL trade mark even if they were not the registered
proprietors. He referred to BALMORAL Trade
Mark [1999] RPC 297 and cf WILD CHILD Trade Mark
[1998] RPC 455. He commented that it is unnecessary
for him to consider whether section 7(2) is inconsistent
with the Directive as suggested in Kerly’s 13 ed.
The Appointed Person held that the Exel SA’s trade
mark EXEL is very similar to the applicants’ EXCEL
trade mark and the goods in EXEL, which is “land
vehicles” would also cover “bicycles” and therefore
are identical to the goods in the applicants’ mark.
The applicants were ordered to pay the costs.
Comments
Trade mark owners should be careful with marks containing
solely parts of registered marks without any
additional element. EXCEL would have been success-
16 ITMA Review December 2005

fully registered if there were an additional element to
support it, which again cannot be phonetically or conceptually
identical or similar to any other marks. The
word APOLLO is the name of a Roman god and
EXCEL is laudatory of the goods. I believe that these
Pass the dictionary, would you?
CASE COMMENTS
terms should be left free for others traders to use
them to describe their goods/services.
Remya Suresh, Ravindran Associates, Singapore,
remya@ipravi.com
Decision O-253-05 GA Modefine’s Opposition (Trade Marks Registry) 12 September 2005
The review of European case law in this decision of
the Appointed Person Geoffrey Hobbs QC rejecting
an opposition to an application for UK protection for
the word mark LE SPOSE DI GIO’ demonstrates that
an international mark will not be refused protection
in the UK merely because it is descriptive in the language
of another EU member state and that the UK
Registry will be slow to infer confusion between
opposing marks from their descriptiveness in another
language. However, as we shall see, that does preclude
other elements from rendering opposing word
marks in a foreign language from being sufficiently
similar so as to give rise to a likelihood of confusion.
Background
On 16 November 2000 Di Gio’ Srl requested protection
in the UK for the international trade mark LE
SPOSE DI GIO’ in relation to clothing of all types,
including bridal gowns, formal wear etc. The request
was opposed by GA Modefine SA, who owned the
earlier Community trade marks ACQUA DI GIO’ and
GIO’, on the grounds that because of the similarities
in the marks and in the goods there existed a likelihood
of confusion under s 5(2)(b) of the Trade Marks
Act 1994.
In allowing the opposition, the hearing officer
rejected Di Gio’s claims that GIO’ was a well-known
trade mark synonymous with GIORGIO ARMANI.
On the basis that the mark was used mainly in relation
to websites with the suffixes .com and .it and
Italian language magazines in circulation in the UK,
the hearing officer held that the mark was primarily
used in a context requiring familiarity with the Italian
language and that the relevant public therefore consisted
of Italian speakers in the UK. In his view, LE
SPOSE would be taken as descriptive of the goods in
question and, although ACQUA DI GIO’ and LE
SPOSE DI GIO’ differed in their first elements, that
difference was counterbalanced, to an extent, by the
descriptive nature of those elements. He concluded
that consumers would be led to believe that the goods
sold under both marks originated from the same
source.
Grounds of appeal
Di Gio’ appealed on the basis that the hearing officer
should not have taken into account that LE SPOSE
was likely to be taken as descriptive by those whose
exposure to the mark was through the medium of
Italian magazines circulating in the UK; nor should he
have concluded that the importance of the DI GIO’
element of the mark had been actively made known
to consumers. Di Gio’ contended that the hearing officer
had no adequate reason to conclude that the average
consumer would understand LE SPOSE to be
descriptive. In their view, the hearing officer was
wrong to have given any weight to the fact that the
use of the mark LE SPOSE DI GIO’ had taken place in
an Italian context.
The Appointed Person’s approach
The Appointed Person dismissed the appeal, although
he did not agree entirely with the hearing officer’s
reasoning, particularly the view that the relevant public
would be familiar with Italian. He noted that the
ECJ had confirmed that, when assessing requests for
protection of a trade mark at a national level, it was
necessary to look at social, linguistic and cultural differences
between member states (see Estée Lauder
Cosmetics GmbH v Lancaster Group GmbH [2000] ECR I-
1117). It was not correct to assume that refusal or
acceptance of registration in one member state was
enough to justify similar treatment in another. He
noted that the relevant language for the purpose of
testing whether a word mark is acceptable for registration
is the officially recognised national and any
regional languages of the territory for which protection
has been sought (see POSTKANTOOR [2004]
ETMR 57). Hence the approach taken by the Court of
First Instance in Case T- 286/02 Oriental Kitchen v
OHIM when considering whether the mark KIAP
MOU conflicted with earlier registrations of the word
MOU, which in Laotian and Thai happens to mean
“pork” whilst KIAP means “crispy”. This was that no
account need be taken of the applicant’s assertion that
the goods referred to in the application were intended
for clientele of Chinese of Indochinese origin living in
Western Europe.
It was clear to Geoffrey Hobbs that the same
approach should be taken in the current case. In the
light of Oriental Kitchen (and also Case C-3/03 P
Matratzen v OHIM), he concluded that in principle it
is impermissible for English equivalents of foreign
words to be used for the purpose of testing issues
relating to the distinctiveness, descriptiveness or
deceptiveness of such words in the UK in the absence
of good reason for thinking significant proportion of
the relevant, predominantly Anglophone, public
would understand their meaning.
Decision
Having said all that, Geoffrey Hobbs still found the
opposing marks sufficiently similar as to give rise to a
Continued on page 18
December 2005 ITMA Review 17

CASE COMMENTS
likelihood of confusion. On comparison, it was evident
to him that the marks were structurally and conceptually
(both Italian expressions) similar. The differences
between them might render them the marks for
concurrent use by independent entities if the average
consumer of clothing would attach no particular significance
to the fact that they both used the same formula.
However, in Geoffrey Hobbs’ view, the formula
used word inversion in a way that appeared likely to
be perceived and remembered by the average consumer
as giving weight to a personal name (Gio’) presented
as part of an indication of origin. They were,
he concluded, distinctively similar marks by reason of
their convergence on the elements DI GIO’. Nor did
he think that the use of ACQUA DI GIO’ on the one
hand and GIO’ rather than LE SPOSE DI GIO’ on the
other would have resulted in co-existence without
likelihood of confusion.
Comment
The opposition succeeded for reasons somewhat different
from those given by the hearing officer. Having
Skorpi
International Trade Mark Application No 602064 SKORPI (Class 25) in the name of KE-PRO BV – And
Opposition No 70901 thereto by Amberes SA
Decision O-252-05 of the Appointed Person, Geoffrey Hobbs QC – 12th September 2005
This appeal concerned the UK designation of an
International Application to register the stylised mark
SKORPI in respect of ‘precious metals’ in class 14,
‘clothing, footwear and headgear’ in class 25 and
‘games, toys; gymnastic and sporting articles;
Christmas decorations’ in class 28. Protection of the
UK designation was opposed by Amberes SA, proprietors
of UK Trade Mark Registration No 772654
ESCORPION (device) in class 25, and Community
Trade Mark Registration No 778217 ESCORPION in
classes 22, 24, 25 and 26.
The original opposition was brought under sections
5(2)(b) 5(3) and 5(4)(a). It was rejected by the hearing
officer, who stated that the opponent had failed to
show a reputation and that there were sufficient differences
between the marks to preclude any likelihood
of confusion. However, the hearing officer did
concede that the opponent’s mark was highly distinctive
and that the respective goods of both parties were
either identical or closely related.
An appeal was brought by the opponent on the
basis that the hearing officer had erred in not finding
a likelihood of confusion between the marks. The
opponent argued the conceptual similarity between
the marks was to such a high degree that this rendered
any visual or phonetic differences insignificant
for the purposes of comparison.
Accordingly, for the purposes of the appeal, the
Appointed Person restricted his comments to the section
5(2)(b) element of the opposition. In doing so, he
first reaffirmed that conceptual similarity could
said that the descriptiveness of the marks to Italian
speakers didn’t come into it, Geoffrey Hobbs still felt
that both ACQUA DI GIO’ and LE SPOSE DI GIO’
“spoke Italian” to those by whom they were likely to
be seen and heard. Now this appears to attribute a
familiarity with Italian that the relevant public wasn’t
supposed to have. But on closer analysis, it seems fair
to say that the marks are conceptually similar for
looking and sounding Italian to those who can’t speak
it. And whether or not you agree that the word DI
would signify “of” or “from” to the English and that
we are familiar with word inversion as found in
Romance languages such that the word GIO, aurally
recognisable as the name Joe, would be invested with
“individualising significance”, the principles upon
which Geoffrey Hobbs reaches his decision seem
sound. As for the ECJ’s stance on registrability, trade
mark applicants, it seems, can benefit from the average
consumer’s lack of aptitude for languages.
Natalie Elsborg, Hammonds,
natalie.elsborg@hammonds.com
indeed diminish the significant of visual and phonetic
similarity. However, visual and phonetic elements
were still held to be determinative, when considering
the average consumer’s likely perceptions of it.
At the first instance, the opponent had made a great
deal of ESCORPION being the Spanish equivalent of
SCORPION. Their argument was that the connotations
between these two words would then be transferred
to SKORPI, which was very similar to the
opponent’s mark.
The Appointed Person considered that the word
SKORPI looked and sounded Greek, rather than
Spanish. Nevertheless, there was a link in that the
English word SCORPION was derived from the
Greek SKORPIOS. It was agreed that it could be possible,
by a lengthy process of analysis to link the word
SKORPI to the Greek and English words for SCORPI-
ON.
However, this was perhaps not analysis which
would be undertaken by the average consumer. The
Appointed Person considered that SKORPI was more
likely to be perceived by consumers as a ‘new word’.
And, in that context, it would not carry connotations
of the word SCORPION.
Finally, the Appointed Person stated that the hearing
officer’s assessment and comparison of the marks
was not open to criticism and that his original rejection
of the opposition under section 5(2)(b) should be
upheld. The appeal was dismissed.
Darren Donné, Urquhart-Dykes & Lord LLP,
dxd@udl.co.uk
18 ITMA Review December 2005

Stone Island
CASE COMMENTS
Sportswear Company Spa and Four Marketing Ltd v Sarbeet Ghattaura and Stonestyle Ltd (27 & 28 June 2005)
before the Honourable Justice Warren
The court had to determine whether the requirement
of having garment codes in the clothing supplied by
the claimant Sportswear Company to its distributors
would constitute a breach of Article 81 of the EU
Treaty, and whether this would disentitle the
claimants from initiating a trade mark infringement
proceedings against the defendants. Article 81 prohibits
an agreement or concerted practice which may
affect trade between member states and whose object
or effect is to prevent unfair competition. It requires
that the effect on trade be appreciable, which is determined
by an economic analysis of the relevant market
and the trader’s place in, and share of it. This has
been explained by the ECJ in Volk v Vervaecke [1969]
EC 295 and Miller v EC Commission [1978] 2 CMLR
334.
The claimants, Sportswear Company, alleged
infringement of their trade mark STONE ISLAND
and wanted to prevent the sale of their clothing under
the brand name by the defendants, Sarbeet Ghattaura
and Stonestyle Ltd, because they have been selling
Stone Island clothing with labels defaced and/or
swing tags cut out and defaced. The labels had garment
codes which help the claimants to find out to
which of its distributors/customers their clothing was
originally sold. The defendants alleged that the intention
of the claimants is mainly to locate the person to
whom the clothing was originally supplied through
the garment codes, so that they can cut off supplies
and ruin the defendants’ business.
Beside this, the defendants also rely on the agreements
made by the claimants, which the defendants
believe to be anti-competitive and in breach of Article
81 of the EU Treaty. This refers to Section 12(2)1 of the
Trade Marks Act, 1994, which states that Section 12(1),
which refer to exhaustion of proprietors’ rights, does
not apply where there exists legitimate reasons for the
proprietor to oppose further dealings in the goods (in
particular, where the condition of the goods has been
changed or impaired after they have been put on the
market).
The defences did not clearly state two issues, ie
how the agreements affect trade between member
states in the context of “appreciable effect of trade”,
because the claimants had stated that they are a small
undertaking and therefore their activities would not
have an appreciable effect on trade, and even if there
be a breach of Article 81, how it would be a defence to
a trade mark infringement.
The defendants accepted that they were wrong with
respect to the above point and were given an opportunity
to amend the pleadings. The claimants stated
that there is no nexus between the relief sought and
the breach of Article 81. Actually, the defendants
claim the right to do what they would otherwise be
prohibited because of some contractual relationship
between the claimants and third parties. In this
regard, the judgment of Sir Robert Megarry VC in
Imperial Chemical Industries v Berk Pharmaceuticals,
[1981] FSR 1, 2 CMLR 91 was relied by the judge in
arriving at a decision regarding the defence. In that,
the judge struck out a paragraph in the defence which
pleaded that by reason of breaches of Article 86 [now
Article 82] the plaintiffs were debarred from relief
against passing off on the ground of the lack of nexus
between the abuse pleaded and right claimed by the
defendants. It was decided that there is no nexus
between the alleged anti-competitive agreement made
by the claimants and the current trade mark infringement
proceedings. The judge also relied upon Sandvik
v Pffifner [2000] FSR 17 at p 62, in that Neuberger J
made the point that there needs to be a nexus
between the alleged anti-competitive agreement and
the proceedings in the context of a patent infringement
action where defenses based on breach of
Community law were raised.
The defendants and the claimants referred to the
decision of Laddie J in Philips Electronics NV v Ingman
Ltd [1999] FSR 112. The defendants further relied on
the decision of Court of Appeal in Intel Corporation v
Via Technologies Inc [2002] EWCA Civ 1905 to show
that a breach of Article 81 can give rise to a defence to
patent infringement proceedings and the same
applies to trade mark infringement proceedings.
However in the Philips case, the complainant had
forced the defendant to enter into a licence agreement,
which violated Article 81. Therefore, it was
decided that both the cases were not appropriate to
the current issue.
The defendants submitted arguments to show that
there is a nexus between EU competition law and the
Trade Marks Act 1994. They relied on what was said
in the ECJ case, Frits Loendersloot t/a Loendersloot
Internationale Expeditie v George Ballantine & Sons Ltd.
This case involves removal of identification numbers
from whisky bottles. Paragraph 43 states:
“Where it is established that the identification numbers
have been applied for purposes which are legitimate
from the point of view of Community law, but
are also used by the trade mark owner to enable him
Continued on page 20
1 12 (1) A registered trade mark is not infringed by the use of the trade mark in relation to goods which
have been put on the market in the European Economic Area under that trade mark by the proprietor or
with this consent.
(2) Subsection (1) does not apply where there exist legitimate reasons for the proprietor to oppose further
dealings in the goods (in particular, where the condition of the goods has been changed or impaired after
they have been put on the market).
December 2005 ITMA Review 19

to detect weaknesses in his sales organization and
thus combat parallel trade in his products, it is under
the Treaty provisions on competition that those
engaged in parallel trade should seek protection
against action of the latter type.”
The judge rejected defendants’ arguments and stated
that if the defendants are right in saying that there
is artificial partitioning of markets they may have
good defences to the infringement actions under the
Community law but those will be defences which
have nothing to do with Article 81. The judge rightly
observed that if they do not have any good defenses
under Community law apart from Article 81, he failed
to see how Article 81 gives them any. Accordingly, the
judge rejected the arguments based on achieving the
overall objection of Community competition law as a
justification for the pleading relying on Article 81.
The judge addressed the defendants’ arguments
under the following heads:
First, it is said that application and use of Garment
Codes is contrary to Article 81 and gives rise to a
claim that relief should not be granted, reliance being
placed on British Leyland Motor Corporation Ltd v TI
Silencers Ltd [1981] FSR 213 and Intel Corporation v Via
Technologies Inc.
Secondly, it is said that the instigation of litigation
against third parties pursuant to a concerted practice
(ie, an arrangement between the claimants) is itself
contrary to Article 81 and can prevent a claim to equitable
relief, reliance being placed on Glaxo Group Ltd v
Dowelhurst Ltd [2000] EWHC 134 and Intel Corporation
v Via Technologies Inc at first instance (Lawrence
Collins J) [2002] EWHC (Ch) 1159.
With respect to the first, the judge observed that the
defendants did not plead in the original pleading or
in the draft amended pleading that the use of garment
codes were contrary to Article 81. Even if the
use of garment codes is in breach of Article 81, there
is no nexus between the enforcement of trade mark
rights by the claimants and the breach of Article 81.
The defendants had objected to Clause 13 of the
Distribution Contract, as being restrictive of trading
activities. It provides for the first claimant Sportswear
to contribute a maximum specified sum per annum to
allow Four Marketing Ltd (second claimant) to
“investigate and deal with counterfeit and parallel
issues”. It also provides for any brand protection
activity which will involve legal costs to be sanc-
The Institute of Trade Mark Attorneys,
Canterbury House,
2-6 Sydenham Road,
Croydon, Surrey CRO 9XE
Tel 020 8686 2052.
Fax 020 8680 5723.
www.itma.org.uk
© 2005
CASE COMMENTS
tioned by the first claimant Sportswear. It provides
that any “settlement whether derived by legal action
or not will be split equally between the first claimant
Sportswear and the second claimant Four Marketing
Ltd.
The judge agreed that in certain cases, commencement
of trade mark infringement pursuant to a concerted
practice could be a breach of Article 81. In such
cases, the judge stated that there would be a real
nexus between the breach of Article 81 and the
defence to the infringement action. The judge stated
that the defences have been brought pursuant to the
agreement, but on reading of Clause 13, it is not the
case since there is no obligation on either party to
commence proceedings under the said agreement.
Accordingly, the judge refused to allow the amendment
to the defence. The judge therefore disposed of
the application and observed as follows:
“That is not enough to dispose of the application before
me. However, I would add that, in the light of the first decision
in Glaxo, I would take a great deal of persuading that
there was more than a fanciful claim that the Claimants’
two actions constitute a breach of Article 81 even if the
2004 Distribution Agreement had contained a provision
obliging the parties to commence trade mark infringement
proceedings against the Defendant. As Laddie J explains,
the breach of Article 81 is to be found in the co-operation
between trade mark proprietors in bringing their actions. It
does not follow that, even where there is such improper cooperation,
the individual trade mark owners are deprived of
the right to sue for infringement, the impact of an adverse
finding being only to prevent traders acting in concert.
This can, of course, given rise to difficulties in determining
whether a trade mark owner is acting independently or in
concert. But any relief granted would as Laddie J points
out, have to be carefully worded to prevent the improper
collaboration but without taking away the right to sue for
infringement of trade mark.”
The judge also stated that the decision about the
nexus point is in accordance with the approach of
Laddie J in Hewlett-Packard Development Company LP v
Expansus UK (unreported 23 June 2005).
The judge refused the defendants’ application to
amend the defences and ordered that the defences be
struck out.
Remya Suresh, Ravindran Associates, Singapore,
remya@ipravi.com
20 ITMA Review December 2005

People
Alexander von Mühlendahl retires from OHIM
During the weekend of 21 to 23
October trade mark experts from
all over the world gathered in
Alicante to say farewell to
Alexander von Mühlendahl, who
retired as Vice President of the
OHIM on 31 October 2005. He is
well known to ITMA members and,
of the three principal officers of the
OHIM who shaped its early years,
he is the last to leave office
(although in fact Alberto Cassado
continues working at the Office but
no longer as Second Vice
President).
Alex was unaware of the celebrations
that had been planned for
him during the weekend which
commenced, on the Friday evening,
with ‘Drinking, Tapas, and Dancing’ at a club in
Alicante attended by about 150 people. On the
Saturday all the ‘foreign’ guests joined Alex, Margot
his wife, his son and daughter, his brother and sister
as well as the 19 ‘pioneers’ who had joined the OHIM
in those far-off heady days when it began its life in
1994 and their families, for a cruise to Tabarca island
where we all enjoyed a splendid and lengthy Spanish
lunch in warm sunshine. Returning home, we hardly
had time to don our glad rags before setting out for a
black tie dinner held in the Alicante Archaeological
Museum. This has only recently been opened in the
premises of a former hospital and it is well worth a
visit. The dinner was held in the magnificent surroundings
of the ex-chapel, now a library, under one
of the biggest chandeliers to be seen outside
Versailles. Alex had been told he was going to a small
dinner party so his face, when he came through the
door and was presented with a group of some 60 persons,
was a picture to behold. But the best was yet to
come, for unbeknownst to him, Verena von Bomhard
(Lovells), Jochen Pachenberg (Bardehle Pagenberg
Dost), and Detlef Schennen (OHIM) had spent the
past 18 months or so organising a ‘Festschrift’ for
Alex. There is no equivalent English word for this
typically German institution, which is a specially published
book presented, usually at retirement, to distin-
guished persons. This particular volume
(published by and available
from Carl Heymans Verlag) contains
contributions in Alex’s honour from
29 different well-known personalities
from the world of trade marks, coming
from ten different countries, the
majority of whom were present at
the dinner (including your correspondent).
A copy of this book was
presented to Alex who, once again,
was overcome with surprise and
delight. Generous speeches were
made in his honour to which he
responded equally generously. On
the following day, the firm of
Bardehle Pagenberg Dost hosted a
brunch in Alex’s honour. The UK
was represented at some or all of the
festivities by Geoffrey Hobbs QC, Terry Johnson
(Marks & Clerk) and the undersigned.
But the farewells did not end there for, after the
OAMI Users’ Group Meeting which had conveniently
been arranged for the next day, the members of the
various delegations to that meeting were joined in the
massive hall of the Office at the Avenida de Europa
by a large crowd of members of the OHIM staff for an
emotional farewell to Alex. They all listened to a generous
speech from Mr Wubbo de Boer, the President
of the Office, who presented Alex with a picture
painted by the artist wife of a member of the OHIM
staff, and who announced that henceforth the library
of the Office would be known as the von Mühlendahl
Library. Generous tributes were then paid to Alex by
representatives of several of the Users’ Groups. Alex’s
reply was typically thought-provoking as well as
generous to his many friends and colleagues.
Thus, a great man retires from his official life, firstly
at the German Ministry of Justice and subsequently at
the OHIM. But not from our life. In the future he will
act part-time as a consultant, based in Munich, and
available for advice and opinions at the firm of
Bardehle Pagenberg Dost.
David Tatham, OBE,
tatham@dsl.pipex.com
The ITMA Advanced Trademark Law and Practice Course
2005-6 and 2006-7
Students should have received application forms for attendance on the ITMA Advanced Trade Mark
Law and Practice Course for 2005-6 and 2006-7.
Students are reminded that the deadline for receipt of applications for both courses is
19 December 2005.
December 2005 ITMA Review 21

PEOPLE
ITMA Informals
have joined forces with
CIPA
to bring you a
Christmas Party
Wednesday 14th December
Torts Bar, 78 High Holborn
Tickets a bargain at
£15 in advance
or £20 on the door
For more information please
email itmainformals@hotmail.co.uk
Matt Smith
Abel & Imray
Louise Goodsell
Boult Wade Tennant
Clare Stanmore
Eric Potter Clarkson
News of Members
Emma Pitcher was admitted to
the Boult Wade Tennant partnership
on 1 October 2005. Her
practice is concerned with the
protection and management of
international trade mark portfolios
for major companies, primarily
in the retail, travel and energy
sectors. She also advises on
brand selection, undertakes
rebranding programmes and assists with dispute resolution.
Emma has an LLM in Commercial Law from
King’s College, London and an MA Hons in
Jurisprudence from Oxford University. Boult Wade
Tennant now has 19 partners, 40 other professional
personnel and a total of over 160 staff based in offices
in London, Oxford, Cambridge and Reading.
The partners at Lloyd Wise are
pleased to announce that Kate
Széll (left) became a partner in
the firm on 1 November 2005.
The partners of Forrester Ketley
& Co are pleased to announce
that Michelle Tew joined
their Birmingham office in
September 2005. Michelle can be contacted at
mtew@forresters.co.uk; telephone 0201 236 0484.
News from the Registry
John MacGillivray, Principal Hearing Officer and
Charles Hamilton and Ian Peggie ex parte Hearing
Officers retire from the Trade Marks Registry at the
end of the year. All three have retired early under a
Patent Office-wide scheme.
NOTICE TO ITMA STUDENTS
The following digital recordings are now available on the ITMA website:
03-03-05 Unregistered designs and unregistered designs case law
17-03-05 Copyright: infringement
24-03-05 Comparison & interaction of designs, unregistered designs
and copyright (2 lectures)
31-03-05 What is a trade mark? Registration, renewal, use and marking
07-04-05 Absolute Grounds & objections/official letter
12-05-05 Evidence in Trade Marks Registry
16-06-05 Treaty of Rome & European case law
23-06-05 Introduction to CTM including filing procedure
14-07-05 CTM revocation & invalidity
28-07-05 Madrid Agreement & Protocol
The recordings are accessible from the Members area, under Education & training,
Student notices and software such as Windows Media Player is required.
Where a digital recording is not available a copy of the handout for the lecture is
available from the Institute office.
22 ITMA Review December 2005

Proposed publication
of tutorial material
One of the problems often identified by students sitting the
Advanced Level papers is a lack of exam-style questions to
help in their preparation for these exams. The Institute is
therefore proposing to publish a collection of new examstyle
questions for each of the Advanced Level papers,
together with a set of bullet-points indicating the issues
that were expected to be covered in the answer. It is intended
that these questions can be used by students either on
their own as study aids or as material for tutorials.
However, we need volunteer contributors from the ITMA
membership to provide such questions. If any qualified
members would wish to contribute such a question, please
contact Mark Hiddleston of the Book Committee for further
information. CPD points will be available for any
questions which are submitted and subsequently used.
Mark Hiddleston, Elkington Fife, m.hiddleston@elkfife.co.uk
2005 Membership List
Would you please note that the member set out below
should be added to the 2005 Membership List.
INDIA
Mr CR Bakshi, MA, LLB
De Penning & De Penning
10, Government Place East
Kolkata 700 069
India
Tel: 33 2248 3924
Fax: 33 2248 6820
email: crbakshi@vsnl.net
Date of Election: 20/01/04
WHO’s WHO in ITMA
Officers:
President
Stephen James, sjames@jenkins-ip.co.uk
Senior Vice President
Philip Harris, pwh@gje.co.uk
Junior Vice President
Gillian Deas, gmd@dyoung.co.uk
Immediate Past President
Ian Buchan, ibuchan@eric-potter.com
Treasurer
Maggie Ramage, maggie@ramage.co.uk
Committee Chairmen:
Public Relations
Graeme McKinnon, graeme mckinnon@bat.com
CPD
David Crawford, david.crawford@shell.com
Education & Training
Gary Tarrant, gary.tarrant@manches.co.uk
Internet
Ian Buchan, ibuchan@eric-potter.com
General Purposes & Finance
Ian Buchan, ibuchan@eric-potter.com
Law & Practice
Cathy Ayers, cathy.ayers@gscp.co.uk
Guess Who?
Programme
Alice Mastrovito, alice@mastrovito.com
Professional Guidance & Disciplinary
Brian March, bhm@wildbore.co.uk
Formalities Course
Anne Wong, anw@carpmaels.com
Designs
Imogen Wiseman, imogen.wiseman@fjcleveland.co.uk
Membership
Aidan Clarke, aclarke@marks-clerk.com
ITMA Review
Chris McLeod, chris.mcleod@hammonds.com
Administration:
Public Relations Manager
Ken Storey, ken.storey@btinternet.com
Editor, ITMA Review
Kelly Robson, kellyrobson@btinternet.com
Secretary
Margaret Tyler MBE, margaret@itma.org.uk
Assisted by
Gillian Rogers, gillian@itma.org.uk
Angela Williams, angela@itma.org.uk
Valerie Rice, val@itma.org.uk
Jane Attreed, jane@itma.org.uk
Geraldine Flood, geraldine@itma.org.uk
PEOPLE
Who is this mischievous scamp aged 9?
Now retired, he has been a giant in the
field of trade marks and remains so in
the Institute. We are proud to say that
among his many activities, he was
involved with the ITMA Review right from
the beginning (when it was called something
else).
Meanwhile, the adorable sausage
appearing last month, despite a
number of members’ insistence that
he is David Castle, turns out to be the
Review’s own Aaron Wood.
Answers (and submissions)
to the Editor, please.
kellyrobson@btinternet.com
December 2005 ITMA Review 23

Dates for your Diary
2005
5-6 December INTA Forum Berlin
(12 CPD Points)
6 December Northern Xmas Lunch Midland Hotel, Manchester
13 December ITMA Xmas Lunch Royal Lancaster Hotel
London
14 December Money Laundering Joint
ITMA/CIPA Seminar
(2 CPD Points)
CIPA Hall, London
14 December ITMA/CIPA Christmas Informal Torts Bar, 78 High Holborn
London
2006
17 January Evening Meeting (2 CPD Points) London
19 January Whisky tasting Diageo Fine Dining Room
23 January Seminar on Oppositions Royal College of
OHIM/UK Registry Surgeons, London
(3 CPD Points) (13.45 - 17.15)
24 January Seminar on Oppositions Wynner House Conference
OHIM/UK Registry Centre, 134-143 Bromsgrove
(3 CPD Points) Street, Birmingham (13.45 – 17.15)
25 January Seminar on Oppositions Museum of Transport,
OHIM/UK Registry Kelvin Street, Glasgow
(3 CPD Points) (13.45 – 17.15)
26 January Seminar on Oppositions Sullivan Room, Leeds
OHIM/UK Registry
(3 CPD Points)
Town Hall (13.4 5 – 17.15)
14 February Evening Meeting
(2 CPD Points)
London
13 – 14 February C5-Online Trade Mark
Conference (12 CPD Points)
London
15 February IBC’s Annual Conference
CTM 2005 (6 CPD Points)
Café Royal, London
21 February Quiz Night London venue (tbc)
22-24 March ITMA London International Royal Garden Hotel
Meeting (9 CPD Points) Kensington High Street
28 March Evening Meeting (2 CPD Points) London
25 April Evening Meeting (2 CPD Points) London
23 May Evening Meeting (2 CPD Points) London
7 – 10 June ECTA Annual Conference Warsaw
27 June Evening Meeting (2 CPD Points) London
25 July Evening Meeting (2 CPD Points) London
19 September Evening Meeting (2 CPD Points) London
28 – 29 September ITMA Autumn Conference
(9 CPD Points)
Copthorne Hotel, Newcastle
24 October Evening Meeting (2 CPD Points) London
28 November Evening Meeting (2 CPD Points) London
Further details can be found on www.itma.org.uk
24 ITMA Review December 2005