ITMA 322 APRIL 2005

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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
Page 1 and 2: Contents ITMA business Public Relat
Page 3 and 4: This note was written before the ev
Page 5 and 6: and the co-ordination of official b
Page 7 and 8: ITMA BUSINESS and Mrs Ramage gave a
Page 9 and 10: Features What’s in a Brand? Brand
Page 11 and 12: Design & Copyright The Costs of Cop
Page 13: would be off the hook in relation t
Page 17 and 18: fully registered if there were an a
Page 19 and 20: Stone Island CASE COMMENTS Sportswe
Page 21 and 22: People Alexander von Mühlendahl re
Page 23 and 24: Proposed publication of tutorial ma

ITMA 322 APRIL 2005

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