ITMA 322 APRIL 2005

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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 The hearing officer observed that the opponents had withdrawn the opposition under EXEL trade mark but he remained quiet regarding opponents’ request for reconsideration of the issue.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
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 and 14: would be off the hook in relation t
Page 15: Case comments On Your Bikes In the
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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