2007 - A YEAR OF CHANGE Developments in procedures and practices in the UK

1. 2007 - A YEAR OF CHANGEDevelopments in procedures and practices in the UK Mike Reynolds Principal Hearing Officer UK Trade Marks Registry 30 March 2007

2. Issues • Relative grounds for refusal - the future • Proof of use in oppositions and invalidations • Gowers report • Spambuster and Special Effects (estoppel) • Case law snapshots

3. Relative grounds for refusal (1) • Some facts and figures

4. Relative grounds (2) • Problems • clogging effect of searching two registers • UK refusing on relative grounds based on CTMs which have not been examined on relative grounds • objections may be based on CTMs that appear to be in conflict with one another or earlier UK trade marks • Registrar enforcing some marks which the owners could not enforce themselves • CTM route being used to avoid UK objections

5. Relative grounds for refusal (3) • Consultation on future of relative grounds for refusal during 2006 • Five options put forward 1. status quo 2. search and cite with notice 3. search and cite with proof of use 4. search and notify (applicant only) 5. search and notify (applicant and owners of earlier trade marks)

6. Relative grounds (4) • Outcome • decision to cease raising relative grounds objections ex officio • outcome of consultation in favour of system of search and notify • notification to go to applicant and owners of earlier trade marks (but not all) • October 2007 implementation date

7. Proof of use (1) • proof of use provision introduced in May 2004 • applies in oppositions and invalidations where the earlier trade mark is over 5 years old at the relevant time • opponent/applicant for invalidity can be called on to show use of the mark(s) • the standard is that of ‘genuine use’ as if defending a revocation action • but does not result in revocation if use is not substantiated

8. Proof of use (2) • Brings UK into line with CTMO • disputes more related to actual trading circumstances than notional conflicts on trade marks registers • can make inter partes actions more complex • opponents need to consider their position carefully before launching an attack

9. Gowers report • Independent review of the Intellectual Property framework • Commissioned by the Chancellor of the Exchequer • Available through www.hm-treasury.gov.uk website • Main changes affecting trade marks • proposal for fast track application system • call for clear separation of functions between rights granting and tribunal areas • new name for the UK Office (UKIPO)

10. Estoppel – the Spambuster and Special Effects cases • Do Registry decisions debar parties from pursuing or defending subsequent High Court actions? • Spambuster • Registry invalidation action on relative ground • unsuccessful and no appeal • subsequent High Court action on different grounds • defence that the proceedings were oppressive and vexatious • cause of action estoppel and abuse of process

11. Estoppel (2) - Special Effects • Registry opposition proceedings on absolute and relative grounds • again the action failed and there was no appeal • subsequent infringement action in the HC by the proprietor • claim in defence that the registration was invalid • HC held that cause of action estoppel applied against the defence

12. Estoppel (3) - the profession’s concerns • more complex/expensive proceedings in the Registry • greater use of cross-examination and disclosure etc • longer hearings • undermines role of Registry as low cost and expeditious tribunal • greater reluctance to oppose • more appeals • public interest not served

13. Estoppel (4) - outcome of appeal to Court of Appeal • opposition does not create a cause of action • issue estoppel requires a final decision by a court of competent jurisdiction • Registry opposition proceedings not final because invalidation action is still possible • generally no abuse of process • but care needed if cross-examination, disclosure etc used • position on successive invalidations?

14. Lawful deception –the Elizabeth Emanuel case • well known designer of wedding wear since 1990 • in 1997 the company through which Ms Emanuel operated was sold to a third party • Ms E employed in the business for a very short period • significant proportion of public mistakenly believed Ms E was still involved in design work • in 1999 Ms E launched opposition and revocation actions against the assignee company • the basis of both actions was deception of the public

15. Lawful deception (2) • the issue was referred to the European Court who advised: “…………..a trade mark corresponding to the name of the designer and first manufacturer of the goods bearing that mark may not, by reason of that particular feature alone, be refused registration on the ground that it would deceive the public, ……in particular where the goodwill associated with that trade mark… has been assigned together with the business making the goods to which the mark relates.” • thus the assignee’s use even if deceptive was lawful. • no suggestion of fraudulent conduct on the assignee’s part.

16. Shape marks (1) –the Stressless chair (O/017/06)

17. Shape marks – the Stressless chair • Objected to by the UK Office as being • a functional shape • devoid of distinctive character because it was insufficiently different from other such products on the market • On appeal • functionality objection overturned (the Appointed Person considered “the surplus of form over function to be aesthetically significant”) • lack of distinctiveness objection upheld • hint that there may have been an objection on the basis that it was a shape that gave substantial value to the goods

18. Shape marks (2) –the Dyson clear bin (Case C-321/03) The marks consist of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representations.

19. Shape marks - the Dyson clear bin • mark not actively promoted by the filing date but recognised by consumers as a bagless vacuum cleaner • Dyson had a de facto monopoly at the date of application • question put to the ECJ as to whether in these circumstances“is it sufficient, in order for the sign to have acquired a distinctive character …that a significant proportion of the relevant public has by the date of application for registration come to associate the relevant goods bearing the sign with the applicant and no other manufacturer.”

20. Shape marks – the Dyson clear bin • ECJ took the view that what the applicant was seeking to register was a concept (all conceivable shapes of a clear collecting bin) • not a sign • not capable of constituting a trade mark

21. Shape marks (3) - the sweet wrapper (Case C-25/05P) Described as a two-dimensional representation in perspective of a sweet in a gold coloured wrapper

22. Shape marks – the sweet wrapper • not a significant departure from the norms and customs of the trade • case law on three dimensional shapes to be applied • not necessary to give concrete examples of trade usage where it is likely to be a matter of common knowledge • such a mark only likely to be distinctive on use if “the products which bear it have more than a negligible share of the market in the products at issue”

23. Accepted shape marks No. 2000821 (Class 36 services)

24. Confused about confusion? • Comparison of composite marks • Issue – does the replicated element have an independent distinctive role in the composite mark? THOMSON LIFE v LIFE(identical goods in the leisure electronics sector) ORO/ORO SAIWA v SELEZIONE ORO BARILLAClass 30 goods (Selezione Oro = gold selection)

25. Comparison of composite marks (2) • Issues – is the cowhide device descriptive in relation to milk and milk products? Case T-153/03 v • Does INEX contribute in a decisive manner? • Conceptual similarity of the (weak?) cowhide devices not enough.

26. Comparison of composite marks (3) • Issue – is there a clear difference in meaning? CARDINAL v CARDINAL PLACE • Conceptual dissimilarity held on appeal to be sufficient to distinguish • One mark has ecclesiastical connotations the other geographical/locational

27. Comparison of composite marks (4) Case O/335/00 (2001 R.P.C. 32) v POLO

28. Comparison of composite marks (5) Case T-214/04 (2006 E.T.M.R. 59) v

29. ANY QUESTIONS?