TRADE MARK PROTECTION IN THE UK

1. TRADE MARK PROTECTION IN THE UK Mike Reynolds Principal Hearing Officer UK Trade Marks Registry 24 February 2006

2. ROUTES INTO THE UK • Application to UK Trade Marks Registry • Application to the European Community Trade Mark Office (CTMO) Plus ….. • Designating the UK through the Madrid Protocol • Protection in the UK through the CTMO/Madrid Protocol link

3. WHAT DOES THE CTM ROUTE OFFER? • a single application covers 25 countries • applications can be in any of 20 languages • a unitary right • examination only on absolute grounds • relative grounds left to opposition or invalidity • applicants notified of potentially conflicting CTM marks (and some national marks)

4. IN CONTRAST…. • UK still examines on relative as well as absolute grounds • UK search covers : UK register 515,853 marks (August 2005) CTM register 294,118 marks (November 2005)

5. CONSEQUENCES FOR UK • increasingly difficult to sustain UK system • blocking effect of searching two registers • difficult to explain to users (increasingly SMEs) • UK considering options for changes

6. POSSIBLE OUTCOME • something closer to the CTM system • a TM registration system driven by • circumstances in the marketplace • rather than notional conflicts on TM registers • already introduced proof of use in oppositions (where the earlier trade mark has been on the register for five years) and • an optional cooling-off period • outcome of UK review should be known later this year

7. THE ‘HAVE A BREAK’ CASE (1) • mark used as part of the slogan ‘Have a break …. Have a Kit Kat’ • the European Court was asked “Whether the distinctive character of a mark…. may be acquired following or in consequence of the use of that mark as part of or in conjunction with another mark” • and answered – yes in principle Societe des Produits Nestle v Mars UK Ltd Case C – 353/03 2006 FSR 2

8. HAVE A BREAK (2) The answer in any given case is likely to depend on • the strength of the objection • the evidence of use • the ‘swamping’ effect of the other element(s) of the mark • the presentation of the mark (if not used on its own) • whether the public relies on the mark (not merely associates it with the proprietor) • the key is reliance not mere recognition

9. HAVE A BREAK (3) Some refusals of slogan marks where statements of grounds can be found on the UK Patent Office website : YOU WON’T BELIEVE YOUR EYES – for a range of chocolate and confectionery items WHERE PEOPLE MEET PEOPLE MEET PEOPLE – for café and restaurant services ABSOLUTE PURITY VISIBLE RESULTS – for a range of cosmetic items MAKING PROPERTY WORK – for a wide range of property and related services

10. RETAIL SERVICES – WHERE DO WE STAND? • ECJ has confirmed registrability of ‘retail services’ • subject to applicant specifying the goods or type of goods e.g. retail services connected with clothing or electrical goods • descriptions such as department store services no longer acceptable without a listing of goods areas Praktiker Bau-und Heimwerkermarkte AG– Case C-418/02 • do you need a goods or retail services registration or both?

11. RETAIL SERVICES (2) How should conflicts between goods and services be dealt with? ECJ has not yet answered this question Advocate-General’s advice • confusion is improbable • save in particular circumstances • e.g. the marks are identical or nearly so and the mark is well established on the market

12. EXCLUSIONS – HAVE WE LOST A USEFUL TOOL? In case C-363/99 Postkantoor the ECJ has said : “…. Where registration is applied for in respect of particular goods or services, it cannot be permitted that the competent authority registers the mark only in so far as the goods or services concerned do not possess a particular characteristic. Such a practice would lead to legal uncertainty as to the extent of the protection afforded by the mark”. • Exclusions do not go into the marketplace. • So other traders would be left in doubt as to the protection afforded.

13. EXCLUSIONS (2) UK Appointed Person’s interpretation of Postkantoor : • McQueen Clothing Company v Alexander McQueen (BL O-120-04) • Clothing could not be limited by “… not including items of haute couture” • Incompatible with the comments on legal certainty in the Postkantoor judgment “appear to … prevent the applicant from identifying the goods of interest to him negatively, by reference to the absence of attributes such as those (whatever they might truly be) of haute couture.”

14. EXCLUSIONS (3) UK Appointed Person’s interpretation of Postkantoor : • SVM Asset Management Ltd v Merlin Biosciences Ltd (BL O-043-05) Financial services …“but not including the provision of any such services to the pharmaceutical, biotechnological and bioscientific sectors” • Sufficiently certain : Postkantoor compliant • Noted : services can be partly defined by the recipient (unlike goods) • Not an exclusion of a characteristic of the services

15. EXCLUSIONS (4) Current UK practice • exclusion of specific goods allowed e.g. electronic apparatus but not including computers • exclusion of sub-categories of goods allowed e.g. engines but not including marine engines • exclusions of characteristics of goods not allowed e.g. shirts but not including red shirts • positive limitations preferred • some flexibility where an exclusion is to overcome a cite (but care advised in framing agreements between parties)

16. COLOUR MARKS (1) The ECJ has held in Libertel, Case C-104/01 that : “A colour per se, not spatially delimited, may, in respect of certain goods and services, have a distinctive character provided that, inter alia, it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”

17. COLOUR MARKS (2) Where colour combinations are applied for in the abstract the ECJ has introduced an additional requirement of “…. a systematic arrangement associating the colours concerned in a predetermined and uniform way.” (Heidelberger Bauchemie GmbH, Case C-49/02)

18. COLOUR MARKS (3) Example (No. 2156077) “The mark consists of the colours yellow, black, red and white, in stripes as shown in the application ….”

19. SURNAMES – LIFE AFTER NICHOLS In Nichols, Case C-404/02, the ECJ has said that : • stricter general criteria cannot be applied based on e.g. the number of entries in telephone directories • it must be a case specific assessment • there is no need to deny the first applicant in the interest of protecting third parties

20. SURNAMES (2) But it is permissible to take account of : • the commonness of the surname • the extent to which surnames are used to designate origin in the market sector in question (surnames are, for instance, commonly used in the clothing trade and the professions) • the extent to which full names as opposed to simply surnames are used • the number of traders engaged in the particular sector Providing such tests form part of a case specific assessment

21. RELATIVE GROUNDS (1) Some recent cases on comparison of marks Earlier trade markApplied for mark LIFE THOMSON LIFE (Case C-120/04) WEST WESTLIFE (Case T-22/04) POLO 10 ROYAL BERKSHIRE POLO CLUB (2001 RPC 32) CARDINAL CARDINAL PLACE (O/339/04)

22. RELATIVE GROUNDS (2) Points arising from these cases : • assess the distinctive and dominant parts of the marks • consider whether distinctiveness is evenly distributed • the replicated/conflicting element does not need to be dominant …. • …. but, if it is not, consider whether it has an independent distinctive role in the composite mark • consider the visual, aural and conceptual position • Allow for indirect as well a direct confusion

23. ANY QUESTIONS?