Transcript Evolution of EC and UK case law: relevance to HKSAR

Evolution of EC and UK
case law:
relevance to HKSAR
Mike Reynolds
Principal Hearing Officer with
UK Trade Marks Registry
4 February 2005
1
TRADE MARK LAW IN 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
2
MAIN LEGAL INFLUENCES ON
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)
3
MAIN BUSINESS INFLUENCES ON
THE UK REGISTRY

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?
4
POSITION 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
5
GRAPHICAL REPRESENTATION

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”
6
GRAPHICAL REPRESENTATION
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”.
7
GRAPHICAL REPRESENTATION

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
8
GRAPHICAL REPRESENTATION

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).
9
GRAPHICAL REPRESENTATION

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]
10
GRAPHICAL REPRESENTATION

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)
11
ABSOLUTE GROUNDS (1)
Examination 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
12
ABSOLUTE GROUNDS (1)
Examination standard
Effect on objection rates in UK
Section 3(1) Objections
25
20
2001
15
2002
%

10
5
BABY-DRY
2003
2004
NEW BORN BABY
0
Jan Feb Mar Apr May Jun Jul Aug Sep Oct Nov Dec
13
ABSOLUTE GROUNDS (1)
Examination standard

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.”
14
ABSOLUTE GROUNDS (2)
Section 11(1)(b) – Non-conventional 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
15
ABSOLUTE GROUNDS (2)
Section 11(1)(b) – Non-conventional marks

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)
16
ABSOLUTE GROUNDS (2)
Section 11(1)(b) – Non-conventional marks

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
17
ABSOLUTE GROUNDS (2)
Section 11(1)(b) – Non-conventional marks

Henkel
"………… the relevant public's perception is not necessarily the same in relation to a threedimensional 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)."
18
ABSOLUTE GROUNDS (2)
Section 11(1)(b) – Non-conventional marks

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?
19
ABSOLUTE GROUNDS (2)
Section 11(1)(b) – Non-conventional marks
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
20
ABSOLUTE GROUNDS (3)
Section 11(1)(b) – 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”
21
ABSOLUTE GROUNDS (3)
Section 11(1)(b) – Conventional marks
‘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
22
ABSOLUTE GROUNDS (3)
NICHOLS

Public interest does not figure in determining a surname’s distinctive
character

The ECJ has said that such marks should not be refused to avoid the first
applicant enjoying an unfair advantage

Another type of sign which may be used in a particular sector as trade
marks

Cannot apply pre-determined criteria

But ECJ has not said what criteria should be applied other than that…

……distinctiveness must be assessed according to the specific
circumstances of the case

UK not yet finally decided its position

Too soon to say how the issue will play out here
23
ABSOLUTE GROUNDS (4)
Section 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)
24
ABSOLUTE GROUNDS (4)
Section 11(1)(c) - word marks
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)
25
ABSOLUTE GROUNDS (4)
Section 11(1)(c) - word marks
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)
26
RELATIVE GROUND ISSUES

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
27
RELATIVE GROUND ISSUES (cont’d)

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
28
OTHER 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.”
29
OTHER ISSUES
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)
30
OTHER ISSUES
Precedents (cont’d)

Precedents are likely to have more impact if

Used sparingly

Are directly on point

Relate to the goods/services in issue
31
OTHER ISSUES
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
32
OTHER ISSUES
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
33
OTHER ISSUES
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)
34
OTHER ISSUES
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
35
CONCLUSIONS

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
36
Thank You!
37