Evolution of EC and UK case law: relevance to HKSAR

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Evolution of EC and Evolution of EC and UK case law: UK case law:

relevance to HKSARrelevance to HKSAR

Mike ReynoldsMike ReynoldsPrincipal Hearing Officer with Principal Hearing Officer with

UK Trade Marks RegistryUK Trade Marks Registry

4 February 2005

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TRADE MARK LAW IN TRADE MARK LAW IN EUROPE AND THE UK EUROPE AND THE UK

• National laws of Member States based on the European Community Directive

• In terms of the mandatory provisions of the Directive all Member States operate on the basis of harmonised law

• Community Trade Mark (CTM) is subject to its own Regulation but in key absolute ground areas mirrors the Directive provisions

• Likewise in relation to relative ground issues save that such matters are left to opposition rather than being dealt with at the examination stage

• The European Court of Justice (ECJ) is the final arbiter for both Directive and CTM Regulation provisions

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MAIN LEGAL INFLUENCES MAIN LEGAL INFLUENCES ON THE UK REGISTRYON THE UK REGISTRY

Decisions of the European Court of Justice (binding)

Decisions of the UK Courts (binding)

Decisions of the Appointed Persons (persuasive)

Decisions of the European Court of First Instance (persuasive/of interest)

Decisions of the Community Trade Mark Office (of interest)

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MAIN BUSINESS MAIN BUSINESS INFLUENCES ON THE UK INFLUENCES ON THE UK

REGISTRYREGISTRY Practices cannot be too far out of line with Europe

Competition from the CTMO

Need to consider the position of SMEs

Future of relative ground objections?

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POSITION IN HONG KONGPOSITION IN HONG KONG

Stand-alone law

Provisions broadly the same as UK/Europe on most absolute and relative ground issues (but care needed in some areas)

Not subject to some of the external constraints that influence UK practice

Not bound by decisions of the ECJ………

……but can draw on guidance from ECJ and UK Courts

Can afford to react in a measured way

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GRAPHICAL GRAPHICAL REPRESENTATIONREPRESENTATION

Problem areas

olfactory marks

Mark described in the Sieckmann case as:

“…..olfactory mark deposited with the Deutsches Patent-und Markenamt of the pure chemical substance methyl cinnamate (=cinnamic acid methyl ester), whose structural formula is set out below. Samples of this olfactory mark can also be obtained via local laboratories listed in the Gelbe Seiten (Yellow Pages) of Deutsche Telekom AG or, for example, via the firm E. Merck in Darmstadt. C6H5-CH = CHCOOCH3”

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ECJ’s answer

The representation of a mark needs to be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”

In the case of an olfactory mark “the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements”.


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colour marks

(i) the Ty Nant blue bottle (for Class 32 goods) described as

“a blue bottle of optical characteristics such that if the wall thickness is 3mm the bottle has, in air, a dominant wavelength of 472 to 474 nanometres, a purity of 44 to 48%, an optical brightness of 28 to 32%”

Not accepted – because the particular hue had not been specified. Nor had an example of the colour been filed


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colour marks

(ii) the three dimensional shape of a washing powder tablet (Class 3)

The mark was applied for with the claim that one half of the mark was in the colour yellow and the other half white.

Not accepted - because the colour yellow had not been adequately defined (no colour sample deposited or Pantone or other reference supplied).


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shape marks

the POLO case

Mark filed as the three-dimensional shape of a piece of confectionery but without limitation as to size or colour

Hearing Officer allowed the application to proceed (on evidence) on a restriction to the particular size, shape and colour of the sweet in question

Held on appeal that this was not a limitation [S15 of Cap 559] but an impermissible attempt to amend the application [S46(4) of Cap 559]

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Message from these cases

think carefully about how an unusual mark type is to be described on the application form

the ability to amend once an application has been filed is very restricted

avoid limiting marks to colour unless essential to the issue of registrability (because of the effect on infringement rights)

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ABSOLUTE GROUNDS (1)ABSOLUTE GROUNDS (1)Examination standardExamination standard

In the wake of Baby-Dry:

it seemed that the threshold test had been set very low

as a consequence other traders would have to look to the ‘Exceptions to infringement’ provisions [Section 19 of Cap 559] as a defence for normal descriptive use

New Born Baby appeared to confirm that position

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Effect on objection rates in UKEffect on objection rates in UK

Section 3(1) Objections

0

5

10

15

20

25

Jan Feb Mar Apr May Jun Jul Aug Sep Oct Nov Dec

%

2001

2002

2003

2004

BABY-DRY

NEW BORN BABY

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Clarification since Baby-Dry:

confirmation of standard of test in Libertel

in particular the ECJ said:

“It must be a stringent and full examination, in order to prevent trade marks from being improperly registered. As the Court has already held, for reasons of legal certainty and good administration, it is necessary to ensure that trade marks whose use could be successfully challenged before the courts are not registered.”

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ABSOLUTE GROUNDS (2)ABSOLUTE GROUNDS (2)Section 11(1)(b) – Non-Section 11(1)(b) – Non-

conventional marksconventional marks Such as:

Shapes of goods Packaging Colours Slogans Sounds Smells (if capable of being graphically represented at all)

Guidance in:

Libertel, Linde and the various cases dealing with washing powder tablets involving Procter & Gamble and Henkel

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Consistent position adopted by the ECJ

such marks are in principle registrable

the legal test for distinctive character is the same for all types of marks

a stricter criteria should not be applied

but like other mark types non-conventional marks must denote the goods/services of a particular undertaking (i.e. must indicate trade origin)


conventional marksconventional marks

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Consistent position adopted by the ECJ (cont’d)

distinctiveness must be assessed by reference to the goods/services and the perception of the relevant consumers

consumers do not react in the same way to these types of marks as they do to word or figurative marks

so for practical purposes it may be more difficult to establish distinctiveness for such marks



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Henkel

"………… the relevant public's perception is not necessarily the same in relation to a three-dimensional mark consisting of the shape and colours of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent from the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see, to that effect, Linde, paragraph 48, and Case C218/01 Henkel [2004] ECR I0000, paragraph 52).

39. In those circumstances, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94. Only a trade mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of that provision (see, in relation to the identical provision in Article 3(1)(b) of First Directive 89/104, Henkel, paragraph 49)."



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Points for consideration

is it a shape which is markedly different from the shapes normally employed in relation to the goods in question?

has the applicant promoted the non-conventional mark as being a trade mark?

is it used with or without another mark? (though not conclusive, use with more obviously trade mark matter is likely to dilute the impact of the non-conventional mark whereas use on its own may enhance the prospects of consumers relying on it as an origin indicator)

has it been promoted independently of the other mark?

has the non-conventional mark been used across a range of products/models (cf the jeep radiator grille)?

has it been used across a range of different goods?



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Key issue

the relevant question is not whether it would be recognised on being seen a second time

or whether it is simply different from other such signs in the marketplace

but whether it would convey trade mark significance to the average consumer



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ABSOLUTE GROUNDS (3)ABSOLUTE GROUNDS (3)Section 11(1)(b) – Section 11(1)(b) –

Conventional marks Conventional marks Such as words and figurative marks

Guidance in two recent cases – ‘SAT2’ and Nichols

Confirmation that 11(1)(b) is an independent ground of objection

it focuses on the perception of the consumer

the public interest underlying the provision is “….indissociable from the essential function of a trade mark”

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‘SAT2’

Mark applied for in respect of satellite broadcasting services

Objected to on the basis that SAT meant satellite and numbers were commonly used in the telecommunications/broadcasting field

ECJ overturned CFI on the basis that the lower court had failed to consider the effect of the combination on the average consumer and that it was wrong under 11(1)(b) to consider whether the mark is capable of common use in trade (the latter being appropriate to 11(1)(c)

ECJ found that it was common in the sector to use descriptive word/numeral combinations as trade marks

ABSOLUTE GROUNDS (3)ABSOLUTE GROUNDS (3)Section 11(1)(b) – Section 11(1)(b) –

Conventional marks Conventional marks

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ABSOLUTE GROUNDS (3)ABSOLUTE GROUNDS (3)NICHOLSNICHOLS

Public interest does not figure in determining a surname’s distinctive Public interest does not figure in determining a surname’s distinctive charactercharacter

The ECJ has said that such marks should not be refused to avoid the first The ECJ has said that such marks should not be refused to avoid the first applicant enjoying an unfair advantageapplicant enjoying an unfair advantage

Another type of sign which Another type of sign which may may be used in a particular sector be used in a particular sector as trade as trade marksmarks

Cannot apply pre-determined criteria Cannot apply pre-determined criteria But ECJ has not said what criteria should be applied other than that…But ECJ has not said what criteria should be applied other than that… …………distinctiveness must be assessed according to the specific distinctiveness must be assessed according to the specific

circumstances of the casecircumstances of the case UK not yet finally decided its position UK not yet finally decided its position Too soon to say how the issue will play out hereToo soon to say how the issue will play out here

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ABSOLUTE GROUNDS (4)ABSOLUTE GROUNDS (4)Section 11(1)(c) - word marksSection 11(1)(c) - word marks

Key considerations

excludes from registration signs which from a consumer’s point of view designate one or more of the essential characteristics of goods/services (Doublemint, paragraphs 29 and 30)

public interest test in keeping descriptive signs and indications free for all (Doublemint, paragraph 31)

but the sign need not actually be in use at the time of application (Doublemint, paragraph 32 )

it will be open to objection if it could be used for such a purpose (Doublemint, paragraph 32 )

but must be on the basis of reasonable foreseeability not unfounded speculation (by analogy with Windsurfing Chiemsee at paragraph 37 indent 2)

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Key considerations (cont’d)

irrelevant that there may be other ways of designating the characteristic concerned or that there is ambiguity. “Exclusively” not to be read this way. (Doublemint, paragraphs 33 and 34 and Postkantoor, paragraph 57)

irrelevant whether the characteristic is commercially essential (Postkantoor, paragraph 102)

visual and aural impressions must be considered (Postkantoor, paragraph 99) - (but some care needed as the Court was not specifically asked to consider this point)


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Key considerations (cont’d)

whole mark must be considered it is not enough to say that individual components are open to objection the word itself must be so

(Baby-Dry, paragraphs 39 and 40)

but merely bringing together descriptive elements is not enough to avoid objection (Biomild, paragraph 39)

is there any unusual variation in syntax or meaning? (Baby-Dry, paragraph 43)

the issue is whether the whole adds up to more than the sum of the parts (Biomild, paragraph 41)


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RELATIVE GROUND RELATIVE GROUND ISSUESISSUES

Settled jurisprudence

Based on the case law from Sabel v Puma, Canon v MGM and Lloyd Schuhfabrik v Klijsen Handel

HK has adopted the global appreciation test from these cases

The test stresses the principle of interdependency between marks and goods/services

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ECJ has stressed the importance of identifying: what are the distinctive/dominant elements of the marks and how distinctive those elements are taken in the context of the mark as

a whole

What is the net effect of the similarities and differences between the marks and the similarities and differences between the goods? Does it result in a likelihood of confusion?

More realistic reflection of how consumers behave in the marketplace

Allows HK to be broadly consistent with European/UK practice and case law

RELATIVE GROUND ISSUES RELATIVE GROUND ISSUES (cont’d)(cont’d)

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OTHER ISSUESOTHER ISSUES

Precedents UK Registry less favourably disposed to precedents than hitherto

Judicial authority against - see Madame and Treat cases and more recently the following from one of the UK’s Appointed Persons in Zurich Private Banking:

“Finally, it must be appreciated that all assertions of inconsistency between acceptances and refusals within a national registry and all assertions of inconsistency between acceptances and refusals in different registries are, by their very nature, question-begging as to the correctness of each of the various acceptances and refusals that are brought into contention.”

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Precedents (cont’d) Developing jurisprudence means that past acceptances are

not necessarily a good guide

Lower threshold test to start with

More marginal acceptances diminish the value of placing reliance on existing registrations (also the UK Office, for instance, has a published target to keep bad acceptances to less than 1% of the marks published in the Journal)


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Precedents (cont’d)

Precedents are likely to have more impact if Used sparingly Are directly on point Relate to the goods/services in issue


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Disclaimers

UK position

Disclaimers are now voluntary

Unlike the position under the old law disclaimers now directly affect relative ground/infringement issues

Consequences of entering disclaimer considered in the Paco case

Admission by the proprietor that the disclaimed element is not by itself distinctive


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Disclaimers (cont’d)

If the only component of an etm that is similar is disclaimed then it will not normally stand in the way of a later filing

But a Section 12 objection cannot be overcome by volunteering a disclaimer (because the scope of protection of the etm cannot be determined by an admission made by the later applicant)

CTMO understood to take the same line


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Disclaimers (cont’d)

From a trade mark filing point of view

Don’t volunteer a disclaimer unless you have to

For absolute grounds purposes offering a disclaimer should not make any difference. Either a mark is registrable or it is not!

Occasionally a disclaimer may be offered to meet the needs of a co-existence agreement between trade mark owners (i.e. for relative ground purposes)


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Colour claims

Said in the washing tablet case to be another form of limitation

But distinguishable from true limitations.

Merely a claim that colour is a feature not that it is essential to registrability

What is the effect of a colour limit?

Pink elephants and green grass

Consequential impact e.g. on infringement and series issues


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CONCLUSIONSCONCLUSIONS UK/Europe has now had 10 years’ experience of the new law

Sometimes a bumpy ride

Settled jurisprudence in many key areas…

…but more still to come

Considerable awareness of/interest in European and UK jurisprudence in HK

Likely to be areas of practice where local linguistic, cultural and social differences in HK may lead to different outcomes

Hope that both IPD and the profession in HK will see continuing benefit in keeping in touch with developments in Europe/UK

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Thank You!Thank You!

Documents

Evolution of EC and UK case law: relevance to HKSAR