It works! Money-saver saves money litigating his trade mark

The IPKat is thinking of taking Mark with him the next
time he goes to The Old Nick for a pint of Badger, currently
the most extortionately expensive thing he does these days

The carpet of this Kat's little upstairs office has been festooned of late with a splendid selection of recent judgments from various jurisdictions which he has printed out with the best of intentions but hasn't yet had the chance to read, let alone write about. One such case is the "Money Saving Expert" litigation earlier this month in the form of Lewis v Client Connection Ltd [2011] EWHC 1627 (Ch). Fortunately, while the Kat was sitting at his computer wracked by his conscience and wondering which readers to disappoint, the following offering arrived, quite by chance, from his old friend Mark Weston (Matthew Arnold & Baldwin LLP), who has taken a keen interest in the saving of money and its point of intersection with intellectual property.  Mark writes:

"Be a money saving expert – go for a summary judgment, it’s cheaper!

To most people, the tag “Money Saving Expert” conjures up Martin Lewis – he of the “save-as-much-cash-as you-can-by-not-wasting-it-if-you-don’t-have-to” fame. He is known to talk as fast as that on his frequent television appearances, on his own show, on BBC Watchdog and elsewhere. And in those appearances, he frequently mentions his website www.moneysavingexpert.com which now has a dedicated following of over 5 million users [Says Merpel, with 5 million consumers all spending prudently and saving their cash, it's hardly surprising that the British economy is limping along]. As a successful consumer financial journalist, his numerous various newspaper columns also mention his website, which is used nationally by ever-increasing numbers for the money saving tips and tricks it promotes. In 2009 Lewis was the UK’s most searched-for person online. But this article is not an advert for Mr Lewis. It is about his successful day in court.

Lewis owns two UK registered trade marks for the word mark MONEY SAVING EXPERT dating respectively from 2004 and 2007. They both cover advisory services relating to financial matters provided via an internet website [if you haven't thought, hey, isn't that a trifle descriptive, give yourself a black mark -- but read on ...]. Client Connection Limited (CCL), operates a claims management business which uses cold-calling. Until last September, CCL was operating using the tag “Money Claiming Experts”. Say the different tags quickly. Get the difference? No, nor did a lot of people apparently.

In December 2010, Lewis sued CCL for trade mark infringement under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994. He sued for summary judgment – which is used when a case is so “open and shut” that a full trial is not needed. CCL used a common defence, counter-claiming that Lewis' trade marks were invalid because they were non-distinctive and descriptive of the services in question and asking for a declaration that this was so (this is based on section 3 of the Act which says that a trade mark must not be registered if, among other things, it is devoid of distinctive character or consists exclusively of signs designating a characteristic. CCL was asking for a declaration that the trade marks were invalid and should not have been accepted for registration in the first place).

Section 10(1) infringement happens when a third party uses, in the course of trade, a sign which is identical to the registered trade mark, for goods or services which are identical with those for which the trade mark is registered. This was a non-starter [someone should keep a score of how many times it's raised by perfectly serious lawyers when we all know it's a non-starter -- and whoever raises the argument in vain most often should be made to pay for the next round of drinks]. Lewis had argued that, at the start of CCL each cold call, the term “money claiming expert” (which CCL admitted using) was aurally identical with “money saving expert” - and any recipient of the cold call would not notice the difference in the phrases. CCL denied using, authorising or promoting the use of the term “money saving expert” on the telephone or otherwise. Mr Justice Norris said that investigation of possible aural similarity was needed – which was not something for a summary judgment claim. The court also doubted whether CCL's services were identical with the services covered by Lewis' trade marks. So “Strike one!”; this was a non-starter.

Section 10(2) infringement happens when a third party uses, in the course of trade, a sign which is (i) identical to the registered trade mark, for goods or services which are similar to those for which the trade mark is registered or (ii) similar to the registered trade mark, for goods or services which are similar or identical to those for which the trade mark is registered; and (in either case) there exists a likelihood of confusion on the part of the public - which includes the likelihood of association between the sign and the registered trade mark. 

The judge had more sympathy with this head of claim. The evidence consisted of witness statements from people who had been cold-called [or "called cold"?] by CCL, who had then contacted Lewis to complain (wrongly!) about being cold-called by Lewis’ organisation or to warn Lewis that someone else was using his “name”. CCL's tactic was to question the truth and reliability of these statements, saying it was a small sample and many did not show the necessary “confusion”, etc. 

Mr Justice Norris said that, if unchallenged, this evidence would be enough to prove the section 10(2) claim and he confirmed that he considered Lewis to have demonstrated that there was no real prospect of CCL successfully defending the claim at trial – which is the basis for a successful summary judgment claim. His reasoning was that CCL’s points all amounted to a hope that if there was a trial, some other evidence might turn up to paint a different picture to the witness statements presented. Further, CCL’s claim that some of the evidence showed a lack of confusion by witnesses about call origin was also irrelevant because Lewis only had to demonstrate a likelihood of confusion (i.e. not actual confusion) and this included the likelihood of association with Lewis' marks - which the judge said had been demonstrated beyond real challenge. Also, even though the sample of phone calls was small, it was right to infer that the aural similarity of the phrase used at the start of the cold calls was common to all the calls made. Finally, CCL’s argument that “MONEY SAVING EXPERT” was inherently descriptive (which reduced the likelihood of confusion) was wrong as the mark had acquired a highly distinctive character through use. Everyone, it seems recognises it. Game set and match to Lewis!

Section 10(3) infringement happens when a third party uses, in the course of trade, a sign which is identical with or similar to the registered trade mark where the trade mark has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. The judge did not need to consider this as Lewis had already won under section 10(2). However, he did say that he would also have given summary judgment under section 10(3) as he considered that anyone who heard the name "Money Claiming Experts" would link it to Lewis’ mark, and that CCL’s use of its own phrase took advantage of and benefited from the power of attraction, reputation and prestige of Lewis’ marks. He said that a full trial would not reach any different conclusion. Finally, for good measure, he added that CCL’s cold-calling practices would have tarnished Lewis’ marks.

So Lewis won his legal victory – on the cheap – because, when all was said and done, the evidence demonstrated that witnesses identified Lewis - and only Lewis - with the name "money saving expert"".

The IPKat is quite fascinated by this, since he had innocently imagined that, while an application for summary judgment under s.10(1) [if relevant] or s.10(2) would be relatively straightforward, there would be enough arguable obstacles to an application under s.10(3) in respect of a trade mark which was not a leading consumer brand and which suffered from the handicap of being prima facie descriptive and therefore at least capable of being deployed in a descriptive non-trade-mark-use sort of way. Merpel says, if Mr Justice Norris is as robust as this in summary applications, it will be fun to see how he handles those pesky defendants who raise Euro-defences.

How to make money here
How to save money here
Money plants here; money spiders here

The trigonometry of trade mark law: Sign, Kosan and Tangent

Following all the excitement this week over the high-tech aspects of European trade mark law where brand owners tussle with internet service providers over the extent to which hosted sales can and should be controlled by the latter, the Court of Justice of the European Union (ECJ) returned today to a very much less exalted and non-digital product -- refillable gas bottles.  This return to earth, as it were, manifested itself in a short ruling of just 43 paragraphs inclusive of the recitation of the relevant legal provisions, the summary of facts and the costs order.  The Case is C-46/10 Viking Gas A/S v Kosan Gas A/S, formerly BP Gas A/S, a reference for a preliminary ruling under from the Danish Højesteret [the IPKat interjects to add that, since the Danes are so good at speaking other languages, it is easy to forget that they speak Danish too: Højesteret is the Danish for 'Supreme Court' and is not, as Merpel mischievously tells people, a tasty dessert].

Kosan made and sold bottled gas to private and commercial customers, using 'composite’ lightweight bottles the shape of which is both a three-dimensional Community trade mark and a three-dimensional Danish trade mark for "gaseous fuels and containers used for liquid fuels". In accordance with a sole distribution agreement which it made with the Norwegian producer of the bottle, Kosan enjoyed an exclusive licence to use those bottles as a shape trade mark in Denmark as well as the right to take legal proceedings against infringements of the mark.  When it used the bottles, Kosan fixed its name and logo (both of which were registered as Community word and figurative marks for gas) on to them. Consumers paying for a composite bottle filled with gas from one of Kosan’s dealers became owners of the bottle as well as the gas.

Another aspect of Kosan's business was the refilling of empty composite bottles for consumers who came back for more gas. A consumer thus had a choice when going to any Kosan dealer: he could either buy a new bottle of gas or swap his empty one for a refilled one, paying only the price of the gas.

Viking, which sold but didn't produce gas, had a filling station in Denmark from which composite bottles were dispatched, after being filled with gas, to independent dealers. Viking's bottles bore a sticky label containing its name and the filling station number, plus another sticky label with all the legal rubric on it. They also, by the purest of coincidences, featured Kosan's word and figurative marks which were neither removed nor covered. As with Kosan, a consumer could either buy a new bottle or exchange his old one for a refill.

Kosan used to sell its gas in the same yellow steel canisters as were used by most other gas suppliers, which were not registered as shape trade marks but which, like the composite bottles, bore Kosan's marks and which, Viking asserted, were refilled by others without Kosan ever objecting.

In December 2005 Kosan sued Viking and got injunctive relief which was confirmed a year late; Kosan was also awarded damages.  Viking's appeal to the Højesteret was stayed so that the court could get a preliminary ruling from the ECJ on the following questions:

‘(1) Is Article 5, in conjunction with Article 7, of [Trade Mark Directive 89/104, long-repealed now by Directive 2008/95 but still religiously cited wherever possible] to be interpreted in such a way that company B is guilty of an infringement of a trade mark if it fills gas bottles which originate from company A with gas which it then sells, where the following circumstances apply: 

(a) Company A sells gas in so-called ‘composite’ bottles with a special shape, which is registered as such, that is to say, as a shape trade mark, under a Danish trade mark and a Community trade mark. Company A is not the proprietor of those shape trade marks but has an exclusive licence to use them in Denmark and has the right to take legal proceedings in respect of infringements in Denmark; 

(b) On first purchase of a composite bottle filled with gas from one of company A’s dealers the consumer also pays for the bottle, which thus becomes the consumer’s property; 

(c) Company A refills the composite bottles by a procedure under which the consumer goes to one of company A’s dealers and, on payment for the gas, has an empty composite bottle exchanged for a similar one filled by company A; 

(d) Company B’s business consists in filling gas into bottles, including composite bottles covered by the shape trade mark referred to in point (a), by a procedure under which consumers go to a dealer associated with company B and, on payment for the gas, can have an empty composite bottle exchanged for a similar one filled by company B; 

(e) When the composite bottles in question are filled with gas by company B, adhesive labels are attached to the bottles indicating that the filling was undertaken by company B? 

(2) If it may be assumed that consumers will generally receive the impression that there is an association between companies A and B, is this to be regarded as significant for the purpose of answering Question 1? 

(3) If Question 1 is answered in the negative, may the outcome be different if the composite bottles – apart from being covered by the shape trade mark referred to – also feature (are imprinted with) the registered figurative and/or word mark of company A, which is still visible irrespective of any adhesive labels affixed by company B? 

(4) If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if it is assumed that, with regard to other types of bottle which are not covered by the shape trade mark referred to but which feature company A’s word and/or figurative mark, company A has for many years accepted, and continues to accept, the refilling of the bottles by other companies? 

(5) If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if the consumer himself goes to company B directly and there: 

(a) on payment for the gas, obtains, in exchange for an empty composite bottle, a similar one filled by company B, or 

(b) on payment, has a composite bottle which he has brought filled with gas?’

The Court this morning ruled as follows:

" Articles 5 and 7 ... must be interpreted as meaning that the holder of an exclusive licence for the use of composite gas bottles intended for re-use, the shape of which is protected as a three-dimensional mark and to which the holder has affixed its own name and logo that are registered as word and figurative marks, may not prevent those bottles, after consumers have purchased them and consumed the gas initially contained in them, from being exchanged by a third party, on payment, for composite bottles filled with gas which does not come from the holder of that licence, unless that holder is able to rely on a proper reason for the purposes of Article 7(2) of Directive 89/104".

The IPKat feels that there's nothing radical or surprising in this ruling and he is pleased that the time between it being received by the ECJ and the questions being answered was only 18 months, inclusive of a hearing the Advocate General's Opinion. He is however disappointed that the Opinion remains untranslated into English and five other official languages of the European Union more than three months after it was issued.

"It's definitely gas", thought
Henry, "... but whose?"

Says Merpel: this may be simplified as follows: "A person who has right to control the use of a trade mark which he fixes to a reusable container can't stop them being commercially refilled by a competitor because of exhaustion of rights -- unless he has a legitimate reason for doing so" -- which is surely what the parties must have known pretty well before they even started litigating back in 2005, no? Is it really worth referring cases like this to the ECJ where the real issue is whether the facts support or detract from exhaustion of rights and any utterance by the court is, at best, tangential to the resolution of the dispute before the referring court?

Sine, cosine and tangent: teach yourself trigonometry here
A gas gas gas here

L’Oréal v eBay Part III: what the world says ...

Here in Part III, in alphabetical order, are some early responses to this morning's Court of Justice ruling in Case C‑324/09 L’Oréal SA, Lancôme parfums et beauté & Cie, Laboratoire Garnier & Cie, L’Oréal (UK) Limited v eBay International AG, eBay Europe SARL and eBay (UK) Limited (see Part I for background, Part II for the ruling and an easy summary).

Ashursts IP partner Dominic Batchelor: "eBay will be concerned by this decision, which means it could be forced to prevent intellectual property infringements by its users. The practical and cost implications could be extensive, and any additional costs will presumably be passed on to eBay's users".

“Brand owners like L’Oréal will be jubilant at today’s ruling. Trade mark owners are no longer alone in their fight for online brand protection. Instead, as is the case on the High Street, companies which facilitate sales can be held accountable for the goods which pass through their hands", says Kirsten Gilbert (Marks & Clerk), adding "Brands have been concerned for years now that the internet has facilitated the trade of counterfeit goods. Items which would otherwise be available only from back-street traders have become instantly available to consumers in the privacy of their own homes. L’Oréal and other brand owners will be hoping that online marketplaces like eBay now sit up and pay attention to the sales of counterfeit items which go through their sites. ... Brand owners will now be working with a legal system which protects one of their key assets – their brand identity.”

Stefan Krawczyk, eBay’s European government-relations director: “The judgment provides some clarity on certain issues, and ensures that all brands can be traded online in Europe. A lot of cases will still have to be assessed by the national courts. We’ve moved on -- we fulfill most of these conditions now anyways”.

At the time this item was posted, L’Oréal had yet to issue a public statement, confirming only that the company was studying the ruling. Given the fact that L’Oréal must not only decide what it thinks about the judgment but must also determine what it should say about its own corporate policy in the wake of the ruling, any delay in issuing a statement is probably prudent.

Managing Internet IP's James Nurton said this morning's press release from the court "makes grim reading for the online marketplace".

Adam Smith (World Trademark Review blog): "the court clarified that an online marketplace is not exempted from liability when it has played an “active role” in the sale, which includes “optimising the presentation of the offers for sale in question or promoting them”. This would appear to challenge eBay’s current business practices, and its arguments that it is not responsible for third parties selling counterfeit goods, especially because it takes active steps to stop them with its Verifed Rights Owner programme".

While these responses, which the perhaps inevitable exception of that of eBay, reflect the opinion that this ruling is bad news for online market operators, this Kat is not expecting an avalanche of litigation against eBay. The fact that the company cannot automatically escape liability under the E-Commerce Directive does not mean that it is automatically liable. Apart from the fact that the success of each prospective trade mark infringement action will still turn on its facts, the cost of litigation is itself a deterrent where the infringement is small and injunctive relief -- which is pretty well automatic in the case of Community trade mark infringement even when infringement has ceased -- is not a per se remedy in the case of infringement of national marks.  Merpel adds, while the injured trade mark owner can derive some justifiable satisfaction from having brought a successful action, the biggest benefit to the consumer, and therefore to the protection of the goodwill in each brand, is for eBay and the brand owners to cooperate more fully and effectively in producing the best-possible system for notice and take-down.

L’Oréal v eBay Part II: what the Court says

KATNOTE: IF YOU NEED TO CHECK THE FACTS THAT TRIGGERED THIS PIECE OF LITIGATION, THE QUESTIONS REFERRED FOR A PRELIMINARY RULING BY THE COURT OF JUSTICE OF THE EUROPEAN UNION AND THE ADVOCATE GENERAL'S OPINION, READ L’Oréal  v eBay I: background to this morning's ruling BEFORE YOU READ THIS POST

The ruling in  Case C‑324/09 L’Oréal SA, Lancôme parfums et beauté & Cie, Laboratoire Garnier & Cie, L’Oréal (UK) Limited v eBay International AG, eBay Europe SARL and eBay (UK) Limited has now been posted on the Curia website. 

The active part of the Court's ruling reads thus:

"1. Where goods located in a third State, which bear a trade mark registered in a Member State of the European Union or a Community trade mark and have not previously been put on the market in the European Economic Area or, in the case of a Community trade mark, in the European Union, (i) are sold by an economic operator on an online marketplace without the consent of the trade mark proprietor to a consumer located in the territory covered by the trade mark or (ii) are offered for sale or advertised on such a marketplace targeted at consumers located in that territory, the trade mark proprietor may prevent that sale, offer for sale or advertising by virtue of the rules set out in Article 5 of First Council Directive 89/104 ..., as amended ..., or in Article 9 of Council Regulation ... 40/94 ... on the Community trade mark. [there's no surprise here ...] It is the task of the national courts to assess on a case-by-case basis whether relevant factors exist, on the basis of which it may be concluded that an offer for sale or an advertisement displayed on an online marketplace accessible from the territory covered by the trade mark is targeted at consumers in that territory [... or here].

2. Where the proprietor of a trade mark supplies to its authorised distributors items bearing that mark, intended for demonstration to consumers in authorised retail outlets, and bottles bearing the mark from which small quantities can be taken for supply to consumers as free samples, those goods, in the absence of any evidence to the contrary, are not put on the market within the meaning of Directive 89/104 and Regulation No 40/94 [= Case C-127/09 Coty Prestige Lancaster v Simex, here].

3. Article 5 of Directive 89/104 and Article 9 of Regulation No 40/94 must be interpreted as meaning that the proprietor of a trade mark may, by virtue of the exclusive right conferred by the mark, oppose the resale of goods such as those at issue in the main proceedings, on the ground that the person reselling the goods has removed their packaging, where the consequence of that removal is that essential information, such as information relating to the identity of the manufacturer or the person responsible for marketing the cosmetic product, is missing [in which case repackaging in different information-bearing boxes would still be fine ...]. Where the removal of the packaging has not resulted in the absence of that information, the trade mark proprietor may nevertheless oppose the resale of an unboxed perfume or cosmetic product bearing his trade mark, if he establishes that the removal of the packaging has damaged the image of the product and, hence, the reputation of the trade mark [... though the repackager may need to use a reputation-neutral package].

4. On a proper construction of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94, the proprietor of a trade mark is entitled to prevent an online marketplace operator from advertising – on the basis of a keyword which is identical to his trade mark and which has been selected in an internet referencing service by that operator – goods bearing that trade mark which are offered for sale on the marketplace, where the advertising does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods concerned originate from the proprietor of the trade mark or from an undertaking economically linked to that proprietor or, on the contrary, originate from a third party [this looks like an application of the Court's Case C-238/06 Google France formula].

5. The operator of an online marketplace does not ‘use’ – for the purposes of Article 5 of Directive 89/104 or Article 9 of Regulation No 40/94 – signs identical with or similar to trade marks which appear in offers for sale displayed on its site.

6. Article 14(1) of Directive 2000/31 ...on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as applying to the operator of an online marketplace where that operator has not played an active role allowing it to have knowledge or control of the data stored.

[... but ...] The operator plays such a role when it provides assistance which entails, in particular, optimising the presentation of the offers for sale in question or promoting them.

Where the operator of the online marketplace has not played an active role within the meaning of the preceding paragraph and the service provided falls, as a consequence, within the scope of Article 14(1) of Directive 2000/31, the operator none the less cannot, in a case which may result in an order to pay damages, rely on the exemption from liability provided for in that provision if it was aware of facts or circumstances on the basis of which a diligent economic operator should have realised that the offers for sale in question were unlawful and, in the event of it being so aware, failed to act expeditiously in accordance with Article 14(1)(b) of Directive 2000/31. [no surprise here]

7. The third sentence of Article 11 of Directive 2004/48 ... on the enforcement of intellectual property rights must be interpreted as requiring the Member States to ensure that the national courts with jurisdiction in relation to the protection of intellectual property rights are able to order the operator of an online marketplace to take measures which contribute, not only to bringing to an end infringements of those rights by users of that marketplace, but also to preventing further infringements of that kind. Those injunctions must be effective, proportionate, and dissuasive and must not create barriers to legitimate trade" [Good news for trade mark owners, and a headache for courts when they have to determine what is not only effective -- that's the easy bit -- but proportionate and dissuasive].

If this is all too much to take in, here's this morning's press release from the court,

"National courts must be able to order those companies to take measures intended not only to bring to an end infringements of intellectual property rights but also to prevent further infringements of that kind

eBay operates a global electronic marketplace on the internet, where individuals and businesses can buy and sell a broad variety of goods and services.

L’Oréal is the owner of a wide range of well-known trade marks. Its products (especially cosmetics and perfumes) are distributed through a closed distribution network, in which authorised distributors are restrained from supplying products to other distributors.

L’Oréal complains that eBay is involved in trade mark infringements committed by users of its website. Moreover, it claims that, by purchasing from paid internet referencing services (such as Google’s AdWords) keywords corresponding to the names of L’Oréal trade marks, eBay directs its users towards goods that infringe trade mark law, which are offered for sale on its website.

Furthermore, L’Oréal is of the view that eBay’s efforts to prevent the sale of counterfeit goods on its website are inadequate. L’Oréal has identified various forms of infringement, including, inter alia, the sale and offer for sale, to consumers in the EU, of goods bearing L’Oréal’s trade marks intended, by L’Oréal, for sale in third States (parallel importation).

The High Court (United Kingdom), before which the dispute is pending, has asked the Court of Justice a number of questions concerning the obligations to which a company operating an internet marketplace may be subject in order to prevent trade mark infringements by its users.

The Court states, as a preliminary point, that the proprietor of the trade mark may rely on his exclusive right as against an individual who sells trade-marked goods online only when those sales take place in the context of a commercial activity. That is the case, in particular, if the sales, owing to their volume and frequency, go beyond the realms of a private activity.

The Court rules first of all on commercial activities directed towards the EU by means of online marketplaces such as eBay. It states that the EU trade mark rules apply to offers for sale and advertisements relating to trade-marked goods located in third States as soon as it is clear that those offers for sale and advertisements are targeted at consumers in the EU.

It is for the national courts to assess, on a case-by-case basis, whether there are any relevant factors on the basis of which it may be concluded that an offer for sale or an advertisement, displayed on an online marketplace, is targeted at EU consumers. For example, the national courts will be able to take into account the geographic areas to which the seller is willing to dispatch the product.

Next, the Court holds that the operator of an internet marketplace does not itself ‘use’ trade marks within the meaning of the EU legislation if it provides a service consisting merely in enabling its customers to display on its website, in the course of their commercial activities, signs corresponding to trade marks.

The Court also specifically mentions certain matters concerning the liability of the operator of an online marketplace. Whilst making clear that it is for the national courts to carry out the assessment concerned, the Court considers that the operator plays an active role of such a kind as to give it knowledge of, or control over, the data relating to the offers for sale, when it provides assistance which entails, in particular, optimising the presentation of the online offers for sale or promoting those offers.

When the operator has played an ‘active role’ of that kind, it cannot rely on the exemption from liability which EU law confers, under certain conditions, on online service providers such as operators of internet marketplaces.

Moreover, even in cases in which the operator has not played an active role of that kind, it cannot rely on that exemption from liability if it was aware of facts or circumstances on the basis of which a diligent economic operator should have realised that the online offers for sale were unlawful and, in the event of it being so aware, failed to act promptly to remove the data concerned from its website or to disable access to them.

Finally, the Court rules on the question of injunctions which may be granted against the operator of an online marketplace when it does not decide, on its own initiative, to bring to an end infringements of intellectual property rights and to prevent further such infringements occurring.
Thus, the operator may be ordered to take measures making it easier to identify the sellers who are its customers. In that regard, although it is necessary to respect the protection of personal data, the fact remains that when the perpetrator of the infringement is operating in the course of trade, and not in a private matter, that person must be clearly identifiable.

Consequently, the Court holds that EU law requires the Member States to ensure that the national courts with jurisdiction in relation to the protection of intellectual property rights are able to order the operator to take measures which contribute, not only to bringing to an end infringements of those rights by the users, but also to preventing further infringements of that kind. Those injunctions must be".

The IPKat reminds readers that this is not an end to the litigation. The ruling must now be applied to the referring court and, whatever that court does, an appeal may be confidently expected. Readers' comments may also be expected ...

L’Oréal v eBay Part I: background to this morning's ruling

KATNOTE: IF YOU ARE QUITE FAMILIAR WITH THE FACTS THAT TRIGGERED THIS PIECE OF LITIGATION, THE QUESTIONS REFERRED FOR A PRELIMINARY RULING BY THE COURT OF JUSTICE OF THE EUROPEAN UNION AND THE ADVOCATE GENERAL'S OPINION, YOU CAN SKIP THIS POST AND MOVE STRAIGHT ON TO L’Oréal  v eBay II: what the Court says  

It was only two short years ago that Mr Justice Arnold told us that he was referring a number of questions to the Court of Justice of the European Union for a preliminary reference in one of the most exciting and potentially important trade mark law disputes to be heard in England and Wales in recent times -- the titan struggle between luxury cosmetic kings L’Oréal SA and online auction host eBay which reaches a critical point in today's ruling in  Case C‑324/09 L’Oréal SA, Lancôme parfums et beauté & Cie, Laboratoire Garnier & Cie, L’Oréal (UK) Limited v eBay International AG, eBay Europe SARL and eBay (UK) Limited.


The facts in brief: Paris-based L'Oréal, which had brought similar proceedings in several European countries, objected that online auction site eBay did not do enough to prevent the sale of counterfeit goods such as perfumes and cosmetics. Broadly speaking L'Oréal's position was that eBay should be liable for counterfeit and parallel imported goods sold via its website, and that eBay should do more to prevent the sale of such trade mark infringing goods. 


The facts at length: the detailed facts can be found in a whopping big judgment of some 482 paragraphs, which you can read at your leisure on BAILII here.

To refresh readers' memories, the questions referred for a preliminary ruling were as follows:

‘(1) Where perfume and cosmetic testers (i.e. samples for use in demonstrating products to consumers in retail outlets) and dramming bottles (i.e. containers from which small aliquots can be taken for supply to consumers as free samples) which are not intended for sale to consumers (and are often marked “not for sale” or “not for individual sale”) are supplied without charge to the trade mark proprietor’s authorised distributors, are such goods “put on the market” within the meaning of Article 7(1) of [Directive 89/104] and Article 13(1) of [Regulation No 40/94]?

(2) Where the boxes (or other outer packaging) have been removed from perfumes and cosmetics without the consent of the trade mark proprietor, does this constitute a “legitimate reason” for the trade mark proprietor to oppose further commercialisation of the unboxed products within the meaning of Article 7(2) of [Directive 89/104] and Article 13(2) of [Regulation No 40/94]?

(3) Does it make a difference to the answer to question 2 above if:

(a) as a result of the removal of the boxes (or other outer packaging), the unboxed products do not bear the information required by Article 6(1) of [Directive 76/768], and in particular do not bear a list of ingredients or a “best before date”?

(b) as a result of the absence of such information, the offer for sale or sale of the unboxed products constitutes a criminal offence according to the law of the Member State of the Community in which they are offered for sale or sold by third parties?

(4) Does it make a difference to the answer to question 2 above if the further commercialisation damages, or is likely to damage, the image of the goods and hence the reputation of the trade mark? If so, is that effect to be presumed, or is it required to be proved by the trade mark proprietor?

(5) Where a trader which operates an online marketplace purchases the use of a sign which is identical to a registered trade mark as a keyword from a search engine operator so that the sign is displayed to a user by the search engine in a sponsored link to the website of the operator of the online marketplace, does the display of the sign in the sponsored link constitute “use” of the sign within the meaning of Article 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94]?

(6) Where clicking on the sponsored link referred to in question 5 above leads the user directly to advertisements or offers for sale of goods identical to those for which the trade mark is registered under the sign placed on the website by other parties, some of which infringe the trade mark and some which do not infringe the trade mark by virtue of the differing statuses of the respective goods, does that constitute use of the sign by the operator of the online marketplace “in relation to” the infringing goods within the meaning of 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94]?

(7) Where the goods advertised and offered for sale on the website referred to in question 6 above include goods which have not been put on the market within the EEA by or with the consent of the trade mark proprietor, is it sufficient for such use to fall within the scope of Article 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94] and outside Article 7(1) of [Directive 89/104] and Article 13(1) of [Regulation No 40/94] that the advertisement or offer for sale is targeted at consumers in the territory covered by the trade mark or must the trade mark proprietor show that the advertisement or offer for sale necessarily entails putting the goods in question on the market within the territory covered by the trade mark?

(8) Does it make any difference to the answers to questions 5 to 7 above if the use complained of by the trade mark proprietor consists of the display of the sign on the web site of the operator of the online marketplace itself rather than in a sponsored link?

(9) If it is sufficient for such use to fall within the scope of Article 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94] and outside Article 7(1) of [Directive 89/104] and Article 13(1) of [Regulation No 40/94] that the advertisement or offer for sale is targeted at consumers in the territory covered by the trade mark:

(a) does such use consist of or include “the storage of information provided by a recipient of the service” within the meaning of Article 14(1) of [Directive 2000/31]?

(b) if the use does not consist exclusively of activities falling within the scope of Article 14(1) of [Directive 2000/31], but includes such activities, is the operator of the online marketplace exempted from liability to the extent that the use consists of such activities and if so may damages or other financial remedies be granted in respect of such use to the extent that it is not exempted from liability?

(c) in circumstances where the operator of the online marketplace has knowledge that goods have been advertised, offered for sale and sold on its website in infringement of registered trade marks, and that infringements of such registered trade marks are likely to continue to occur through the advertisement, offer for sale and sale of the same or similar goods by the same or different users of the website, does this constitute “actual knowledge” or “awareness” within the meaning of Article 14(1) of [Directive 2000/31]?

(10) Where the services of an intermediary such as an operator of a website have been used by a third party to infringe a registered trade mark, does Article 11 of [Directive 2004/48] require Member States to ensure that the trade mark proprietor can obtain an injunction against the intermediary to prevent further infringements of the said trade mark, as opposed to continuation of that specific act of infringement, and if so what is the scope of the injunction that shall be made available?’

Advocate General Jääskinen advised the Court to rule thus:

'(1) Where perfume and cosmetic testers and dramming bottles which are not intended for sale to consumers are supplied without charge to the trade mark proprietor’s authorised distributors, such goods are not put on the market within the meaning of Article 7(1) of ... Council Directive 89/104 ...and Article 13(1) of ... Regulation ...40/94 .... [this fits with the Court's ruling in Case C-127/09 Coty Prestige Lancaster v Simex, noted by the IPKat here]

(2), (3) and (4) The trade mark proprietor is entitled to oppose further commercialisation of the unboxed products within the meaning of Article 7(2) of Directive 89/104 and Article 13(2) of Regulation No 40/94 where the outer packaging have been removed from perfumes and cosmetics without the consent of the trade mark proprietor if, as a result of the removal of the outer packaging, the products do not bear the information required by Article 6(1) of Council Directive 76/768 ... on the approximation of the laws of the Member States relating to cosmetic products, or if the removal of outer packaging can be considered as such as changing or impairing the condition of the goods or if the further commercialisation damages, or is likely to damage, the image of the goods and therefore the reputation of the trade mark. Under the circumstances of the main proceedings that effect is to be presumed unless the offer concerns a single item or few items offered by a seller clearly not acting in the course of trade.

(5) Where a trader operating an electronic marketplace purchases the use of a sign which is identical to a registered trade mark as a keyword from a search engine operator so that the sign is displayed to a user by the search engine in a sponsored link to the website of the operator of the electronic marketplace, the display of the sign in the sponsored link constitutes ‘use’ of the sign within the meaning of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94.

(6) Where clicking on the sponsored link referred to in point 5 above leads the user directly to advertisements or offers for sale of goods identical to those for which the trade mark is registered under the sign placed on the website by other parties, some of which infringe the trade mark and some which do not infringe the trade mark by virtue of the differing statuses of the respective goods, that fact constitutes use of the sign by the operator of the electronic marketplace ‘in relation to’ the infringing goods within the meaning of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94, but it does not have an adverse effect on the functions of the trade mark provided that a reasonable average consumer understands on the basis of information included in the sponsored link that the operator of the electronic marketplace stores in his system advertisements or offers for sale of third parties.

(7) Where the goods offered for sale on the electronic marketplace have not yet been put on the market within the EEA by or with the consent of the trade mark proprietor, it is none the less sufficient for the exclusive right conferred by the national or Community trade mark to apply to show that the advertisement is targeted at consumers within the territory covered by the trade mark.

(8) If the use complained of by the trade mark proprietor consists of the display of the sign on the website of the operator of the electronic marketplace itself rather than in a sponsored link on the website of a search engine operator, the sign is not used by the operator of the electronic marketplace ‘in relation to’ the infringing goods within the meaning of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94.

(9)(a) The use referred to in point 5 does not consist of or include ‘the storage of information provided by a recipient of the service’ by the electronic marketplace operator within the meaning of Article 14(1) of Directive 2000/31 ... on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market, whereas the use referred to in point 6 may consist of or include such storage.

(9)(b) Where the use does not consist exclusively of activities falling within the scope of Article 14(1) of Directive 2000/31, but includes such activities, the operator of the electronic marketplace is exempted from liability to the extent that the use consists of such activities, but damages or other financial remedies may be granted pursuant to national law in respect of such use to the extent that it is not exempted from liability.

(9)(c) There is ‘actual knowledge’ of illegal activity or information or ‘awareness’ of facts or circumstances within the meaning of Article 14(1) of Directive 2000/31 where the operator of the electronic marketplace has knowledge that goods have been advertised, offered for sale and sold on its website in infringement of a registered trade mark, and that infringements of that registered trade mark are likely to continue regarding the same or similar goods by the same user of the website.

(10) Where the services of an intermediary such as an operator of a website have been used by a third party to infringe a registered trade mark, Article 11 of Directive 2004/48 ...on the enforcement of intellectual property rights requires Member States to ensure that the trade mark proprietor can obtain an effective, dissuasive and proportionate injunction against the intermediary to prevent continuation or repetition of that infringement by that third party. The conditions and procedures relating to such injunctions are defined in national law'.

Plane users can't tell airlines from airways, rules court

This wasn't quite what the IPKat
meant about an inside story ...

One reason why patent cases are usually easy to blog about than trade mark cases is that the names of the parties are generally quite different from each other.  Woe to the blogger who gets the parties the wrong way round, as was the danger in United Airlines Inc v United Airways Limited, not yet on BAILII, a decision from last Friday in the High Court (Chancery Division), England and Wales.  If you find the identities of the parties here a little confusing, that's because they are -- as Mr Justice Vos so held.

So what happened here to cause Vos J -- the only judge in the Chancery Division, and one of only two judges in the entire High Court, to possess a three-letter surname -- to reach this conclusion? The story goes like this.  United Airlines is a well-known US airline.  United Airways Bangladesh Limited, to give the company's full name, is a less well-known Bangladeshi airline.  Said United Airlines, United Airways was both passings itself off and infringing its UNITED and UNITED AIRLINES trade marks by employing the abbreviated term UNITED AIRWAYS, in either English or Bengali script, on its seven-aircraft fleet in flights between Dhaka and London from 2009.

Leaving no trade mark stone unturned, United Airlines sought summary judgment and alleged pretty well every kind of infringement known to European man -- same mark/same services; similar mark/same services and a likelihood of confusion and takng unfair advantage of its reputed marks without due cause, thereby diluting them.  No way, said United Airways: the marks didn't look alike; the airlines were different, flew different routes and had different point-of-sale outlets; consumers wouldn't be confused and in any event could do their own research if they wanted to check, and so on.

Vos J granted United Airlines' application for injunctive relief straight off on the basis that there was no way that any defence to the action could succeed.  In his view it was obvious that the parties' respective marks were not truly identical since the bits after the word "United" were different.  However it has to be asked whether, on a global appreciation, the differences were so insignificant that they might go unnoticed by the average consumer, this being a question of fact [how good it is to see that, after over 20 years of harmonised trade mark law in the EU, there are still questions of fact and that this test has not been relentlessly hammered into a question of law]. "AIRLINES" and "AIRWAYS" were not synonymous but, when looked at from the point of view of an average consumer, they effectively conveyed the same meaning. This being so, the average consumer, being unconcerned with corporate identity, would be as likely as not to consider that the Bangladeshi operation was United Airlines' subsidiary. Accordingly, viewed as a whole, the differences between the signs were so insignificant that they would go unnoticed by the average consumer and the two marks therefore sufficiently identical for a same marks/same services action under the Trade Marks Act 1994, s.10(1) to succeed.  Oh, and there was one small issue concerning identity of services too: the fact that airlines fly different routes doesn't make them different services for trade mark purposes.

Regarding the similar marks/identical services claim under s.10(2) of the same Act, evidence of actual confusion was not conclusive, and rarely significant [Not much point in adducing it then? But evidence of lack of actual confusion is equally inconclusive and insignificant ...]. The average consumer was likely to be confused if, lacking intimate knowledge as to the difference between "AIRLINES" from "AIRWAYS", he relied on the imperfect picture he had of the marks and signs in his mind. The same would apply if he reached the Bangladeshi airway's website.

United Airways couldn't say they were merely using their own name when they had picked a name that had been well-established for decades -- particularly since they offered no reason why they should have chosen it.  Its conduct was unfair and was caught by the unfair advantage provisions of s.10(3).

United Airlines' argument based on passing off was also irresistable. Goodwill in the company's marks was established on the evidence, as was the fact that members of the public would believe, on the basis of the similarity, that the Bangladeshi business was connected with the US one. The argument that the public could carry out research and discover that there was no link between the parties must fail [If it succeeded here, we could all kiss goodbye to the tort of passing off, since it would succeed on every occasion].

Funnily enough, after coming across this decision, whom should the IPKat bump into at the AIPPI UK Garden Party yesterday evening but a very sunny Isabel Davies, virtuoso trade mark litigator and now Consultant to Boyes Turner, the firm which acted for the victorious United in this very case. Pressed by the Kat to spill the beans on all the behind-the-scenes information that makes these cases so much fun, Isabel would not be drawn into anything less discreet than the tactful observation that "the judge looked very carefully at the evidence when he came to this conclusion, granting summary judgment. He refused leave to appeal on the basis of his view on the case".  Merpel wonders whether, even if leave had been granted, United Airways might spend its money more beneficially in changing its offending livery.

The Damned United here

Walking fingers in Azerbaijan irrelevant to British action, rules judge

Sometimes, if you listen carefully, you can almost hear the sound of inflated expectations being deflated. Here is one such case.  There was only going to be one winner in the proceedings mentioned here, and it wasn't going to be any of the defendants: by name, Yell Ltd v Louis Giboin and others [2011] EWPCC 009, 4 April 2011, a decision of Judge Birss QC in the Patents County Court (PCC), England and Wales.

This logo was still accessible on
Sunday 10 April, here

In short, Yell was the registered proprietor of the YELLOW PAGES trade marks, one of which was a word mark and the other a device mark containing the words YELLOW PAGES.  These marks are well-known, both by the public and by unsuccessful litigants of various descriptions. The defendants' websites -- www.zagg.eu and www.transport-yellow-pages.com -- used the words "transport yellow pages" and a "walking fingers" device in a truck motif (right) in respect of an online directory of transport business and other services.

The defendants agreed that they had used Yell's trade marks but, they said, this was no problem: after all, their websites were not UK-based. Didn't the judge know that they were outside outside the court's jurisdiction?

Now that the PCC has its smart new set of teeth, Yell obviously hoped there would be someone, or something, to bite.  The company was not disappointed.  Even without its new cutting-edge rules, the PCC was well equipped to deal with this claim.  Judge Birss QC found that the average consumer of the defendants' services within the UK would regard their websites as being directed at them for (among other things) services which could be bought in the UK and which were being supplied in the UK.  Not only was there trade mark infringement under the Trade Marks Act 1994, sections 10(2) [similar marks and services plus a likelihood of confusion] and 10(3) [taking unfair advantage, without due cause of the reputation of YELLOW PAGES], but there was passing off too: while Yell's marks were undoubtedly associated with a paper directory service, the British public associated them with UK directory services in whatever form they were delivered --including online.

Says the IPKat, an interesting diversion in this actions was caused by an attempt to raise the defence that the "walking fingers" had become generic, at least when used online. This brave attempt was based on US case law as well as on evidence submitted in respect of Australia and Azerbaijan. Thus

"Mr Giboin relied on a judgment of the United States' Court of Appeals for the Federal Circuit (the CAFC) dated 26th July 1995 in BellSouth Corporation v DataNational Corporation and others case 91-1461. The case was heard by Chief Judge Archer and Circuit Judges Rich and Mayer. BellSouth appealed from the decision of the Trade Mark Trial and Appeal Board of the United States PTO sustaining an opposition against their application to register a walking fingers logo as a design mark for classified telephone directories. The CAFC held that the "walking fingers" logo was a generic identifier of classified telephone directories in a (large) part of the USA.".

Alas for the defendants, both this submission and evidence that "walking fingers" online directories existed in Australia and Azerbaijan was fatally flawed by the fact that this dispute had to be determined in the UK, under British law and in relation to the mindset of the British consumer.

Merpel notes with interest that the word "numpty" appears in the judgment. As the judge explained:

"Yell also relied on the evidence of Luke Humble. He is a specialist in online marketing and website design. He is independent of Yell. He drew Yell's attention to the defendants' websites in the first place. The purpose of this evidence from Yell's point of view is that it submits Mr Humble was misled by the defendants' websites into associating them with Yell. ... Mr Giboin described him as a numpty. For those without the benefit of a Scottish education, a numpty is a derogatory expression referring to an ignorant stupid person. ...".

This is not actually the first time the n-word has been used in British litigation. It can be found, in the plural ("numpties") in Sheffield Wednesday Football Club Ltd and others v Hargreaves [2007] EWHC 2375 (QB), a Queen's Bench ruling of Richard Parkes QC, sitting as an additional High Court judge. Merpel observes that it is only necessary to explain the meaning of this word in County Court proceedings, since those engaged in High Court litigation, being better informed and probably able to converse with one another in Latin, are probably familiar with this term of art. Curiously, since the word is said to be Scottish, a search of the Scottish Courts database reveals no use of the n-word, either in its singular or plural form.

Vikings to go Luxembourg: it's a gas -- and the scent of perfume too

Yesterday the peaceful, leafy glades of Luxembourg were subjected to a Viking invasion. Well, it was the day of the Advocate General's Opinion in Case C-46/10 Viking Gas A/S v BP Gas A/S, a reference for a preliminary ruling from the Højesteret (Denmark), lodged on 28 January 2010. The court had some excellent questions to ask, on the important issue of the application of trade mark law to the refilling of gas bottles. The court asked:

"Is Article 5, in conjunction with Article 7, of ... Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks to be interpreted in such a way that company B is guilty of an infringement of a trade mark if it fills gas bottles which originate from company A with gas which it then sells, where the following circumstances apply: 

1. A sells gas in so-called composite bottles with a special shape, which is registered as such, that is to say, as a shape trade mark, under a Danish trade mark and an EC trade mark. A is not the proprietor of those shape trade marks but has an exclusive licence to use them in Denmark and has the right to take legal proceedings in respect of infringements in Denmark. 

2. On first purchase of a composite bottle filled with gas from one of A's dealers the consumer also pays for the bottle, which thus becomes the consumer's property. 

3. A refills the composite bottles by a procedure under which the consumer goes to one of A's dealers and, on payment for the gas, has an empty composite bottle exchanged for a similar one filled by A. 

4. B's business consists in filling gas into bottles, including composite bottles covered by the shape trade mark referred to in 1., by a procedure under which consumers go to a dealer associated with B and, on payment for the gas, can have an empty composite bottle exchanged for a similar one filled by B. 

5. When the composite bottles in question are filled with gas by B, adhesive labels are attached to the bottles indicating that the filling was undertaken by B? 

If it may be assumed that consumers will generally receive the impression that there is an association between B and A, is this to be regarded as significant for the purpose of answering Question 1? 

If Question 1 is answered in the negative, may the outcome be different if the composite bottles - apart from being covered by the shape trade mark referred to - also feature (are imprinted with) the registered figurative and/or word mark of A, which is still visible irrespective of any adhesive labels affixed by B? 

If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if it is assumed that, with regard to other types of bottle which are not covered by the shape trade mark referred to but which feature A's word and/or figurative mark, A has for many years accepted, and continues to accept, the refilling of the bottles by other companies? 

If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if the consumer himself goes to B directly and there:
(a) on payment for the gas, obtains, in exchange for an empty composite bottle, a similar one filled by B, or
(b) on payment, has a composite bottle which he has brought filled with gas?"

Infuriatingly again, the Opinion has been translated into a smattering of languages, including Latvian (and indeed, why not?) -- but not into English. Advocate General Juliane Kokott's words, French-style, are as follows:

"Le titulaire du droit de marque sur une bouteille de gaz enregistrée en tant que marque ne peut pas s’opposer à la vente de gaz, par une autre entreprise, dans des exemplaires de cette bouteille que le titulaire a mis dans le commerce précédemment lorsqu’il est indiqué de façon suffisamment claire que le gaz vendu ne provient pas du titulaire et qu’il n’existe pas de lien avec ce dernier.".

With the assistance of Google's online translation service this comes out in English as

"The proprietor of the mark on a gas cylinder registered as a trade mark cannot oppose the sale of gas through another company, in copies of this bottle that the holder has previously put on the market when it is stated clearly enough that the gas sold does not come from the holder and there is no link with it".

Unable to study the reasoning, the IPKat can at least appreciate the conclusion.  Without a link, there can be no likelihood of confusion, no association and no taking of unfair advantage or inflicting of detriment, without due cause, regarding the reputation or distinctive character.  Merpel's not so happy though: if, as is generally going to be the case unless gas bottles are going to be filled with fizzy drink, the alleged infringement is an Article 5(1)(a) type -- same mark, same goods -- it shouldn't be necessary to have to show a link unless the Court of Justice's thinking in Google France has spread beyond the use of trade marks as keywords.  Can some kind reader please advise?

Both Kats ask the following question: "If you substitute the word "perfume" for "gas", does the Advocate General suggest that we can put a smell-alike scent in an empty Chanel No.5 bottle and stick a big label on it that says that the contents do not come from Chanel and that there is no link with it?"

Viking Cat cake here
Make your own gas here

Innocent ... until politely requested to be guilty

The IPKat has received various pokes and prompts to write something on the Innocent dispute, which has received some coverage in the British press.  Fortunately, before he could respond to any of them, his friend Fredericka Argent kindly delivered the following note, which pretty well says it all:

"The Daily Mail reports a story about Dawn Reid, a small business owner and vendor of a food supplement called ‘Innocent Vitamins’, who has been asked by Innocent Drinks, the international smoothie company part-owned by Coca Cola, to cease trading under that name. Mrs Reid’s food supplement, in the form of pills, is contained in a tub with the name ‘innocent vitamins’ in lower case letters, followed by the slogan ‘all goodness. no badness’. Since January, the food supplement has been sold for £6.99 per tub in Waitrose supermarkets, but it now faces being taken off the shelves. 

Mrs Reid has argued that the drinks and vitamins markets are separate and non-competing, but Innocent Drinks says that both their drinks and Mrs Reid’s pills are seen as health products and would therefore be competing goods. Innocent Drinks also argues that the lower case typeface of ‘innocent vitamins’, is written in too similar a style to its own logo: “innocent pure fruit smoothie”. The drinks company has claimed that these similarities have led to confusion among their consumers, but Mrs Reid claims that she has: “never had a buyer or customer who’s had any brand confusion.”

Interestingly, Marketing Week reports that Innocent Drinks’ lawyers wrote to Mrs Reid two weeks after they had applied for a Class 5 trade mark classification. Goods within Class 5 fall under the umbrella term ‘pharmaceuticals’, but include anything from antibiotics to hair care preparations and gluten free food. Also within Class 5 are vitamins, minerals and supplements. This makes one wonder whether Innocent Drinks’ fresh application caused them to scour the ‘Health’ aisle of supermarkets for goods which might be in competition with theirs. 

Objectively, Mrs Reid’s argument may seem like a fair observation, and it may even remind readers of another ‘David and Goliath’ battle in the infamous case of GOLDEN BALLS, the mark owned by Gus and Inez Bodur, who faced opposition in their application for a Community trade mark from Intra Presse, the French company which organises the ‘Ballon D’Or’ (Golden Ball), the European Footballer of the Year Award [on which see the IPKat here and in earlier posts]. In that case, quite rightly, the Office for Harmonisation in the Internal Market (OHIM) ruled that the two marks were visually and phonetically different, not least due to the linguistic differences between them. This decision was followed by bullying tactics from the large French company, which proceeded to file a notice of appeal against the OHIM decision which was 600 pages long.  However, in battle of the two ‘innocents’, it looks like Innocent Drinks may be raising a fair complaint: 

First, the reality of the brands market is that commonplace words often become trade marks, for example through acquired distinctiveness. Some obvious examples of this would be ‘Apple’ for computers, ‘Orange’ for telecommunications and the prefix ‘easy’ when applied to certain services. 

Secondly, here it is not just simply the use of the word ‘Innocent’ that has stirred Innocent Drinks into action: comparing the get-up of the two products, there is little doubt that both the typeface as well as style of the Innocent Vitamins packaging are highly similar to those of Innocent Drinks. The unique selling point of Innocent smoothies has always been that they contain all natural ingredients with no added sugar and ‘no funny business’. This idea has been prevalent in the company’s advertising campaigns and slogans. Similarly, Innocent Vitamins is marketing itself as a healthy, sugar-free food supplement that contains ‘no badness’. As such, while Mrs Reid may not have realised it when branding her products, there is certainly a feeling here of a smaller product trying to take unfair advantage of the success of an earlier global product. This is especially so since both companies are in the business of health foods, even if they are likely to be stocked in separate aisles in the supermarket. 

Thirdly, Innocent Drinks appears to have acted quite reasonably here. Defending his position, Innocent Drinks co-founder Richard Reed says: “Using such a distinctive name in a similar category is not an appropriate thing for another company to do... We have given the company a way out by respectfully asking them to stop using the brand name, and doubt that most other companies would be so tolerant. We have to protect our brand.”

So, while any company that has links with the Coca Cola conglomerate is unlikely to be seen by the public as the ‘good guy’, it does appear that on balance, Innocent Drinks is well within its rights to act in the way that it has. 

In terms of legal action, for the moment it does not look as though this trade mark skirmish will turn into a battle: Mrs Reid has said that she wishes to seek an out-of-court settlement with Innocent Drinks, since she does not consider the link with them to be of any benefit to her. Advice to readers is therefore to watch the space in their local Waitrose ..."

The IPKat hopes that the gently-gently approach of Innocent/Coca Cola will work and that it will encourage other big brand portfolio owners to tread equally gently.  He remembers, in his days as an IP kitten back in the 1970s, asking one of the in-house IP heads at Unilever why it was that, with such a large number of registered IP rights, their name, and the names of their brands, were so rarely featured in the published Law Reports.  He was told that the company's softly-softly approach -- sometimes even offering to contribute towards the cost of reprinting the other party's stationery -- paid for itself in terms of cost-effective dispute resolution and generated respect and even some goodwill from third parties.  Does this still happen, he wonders?

Rocky time for Rockwool

Building solutions manufacturer Kingspan Group plc has just won a trade mark and advertising dispute against Rockwool Limited. According to a press release from Wragge & Co., who acted for the victorious company, Mr Justice Kitchin, in the Chancery Division of the High Court (England and Wales) found that a series of Rockwool demonstrations and video recordings, which compared the fire performance of Kingspan and Rockwool products, was misleading and failed to comply with the Misleading and Comparative Advertising Directive. The judge also ruled that Rockwool took unfair advantage of Kingspan's trade marks, causing damage to its reputation, but dismissed Kingspan's malicious falsehood claim.

The judgment, [2011] EWHC 250 (Ch), has been posted on BAILII here and the IPKat hasn't yet had the chance to read it (it's 251 paragraphs in length), The Kat will revert to this case when the opportunity occurs -- though a swift glance suggests that most of the judgment consists of a painstaking analysis of the facts, but not too much legal argument.

Rockwool here
Stone sheep here
Kingspan here
Kingspeech here
Kingspeach here

"All dough and no play ..."

Having reported very recently on one ultra-descriptive trade mark (NO ANIMALS WERE HARMED, in "King's Speech Suffers New Impediment", here), the IPKat found himself facing another mark of the same species, which again secured a degree of success in terms of enforcement -- but here the IPKat has more sympathy with the trade mark owner.

In the case in point, US-based toy giant Hasbro secured a notable victory last Friday in the High Court, England and Wales, in its trade mark infringement and passing off action against 123 Nährmittel and its UK supplier MAPS Toys.  At the heart of the dispute were the questions whether (i) the defendants' use of the words "play dough" on their YUMMY DOUGH, in the phrase "the edible play dough" product, infringed Hasbro's PLAY-DOH trade mark and (ii) whether PLAY-DOH was even validly registered or should in any event be revoked. Mr Justice Floyd gave judgment in favour of Hasbro, finding that the defendants did not act in accordance with honest practices in industrial and commercial matters.

This decision is not as yet available on BAILII, but he has been able to procure a copy of the 52-page judgment, the product of eight days in court and some careful thought on the part of the judge as to the manner in which he described and listed the considerations relevant to the fairness of the defendants' use.  Considering how descriptive the words "play dough" are, when taken as a term for a doughy product with which you play, crossing the line between a responsible, sensible descriptive use and one which seeks to gain some benefit from a registered trade mark which sounds much the same actually takes some going.  You can read the full text of the judgment here [nb this is a replacement link: the earlier version had the illustrations in black and white only, and careful readers would have detected the absence of a couple of pages].  Paragraph 228 lists the ten relevant considerations which led the judge to conclude that

"... the defendants proceeded on the basis that, in their opinion 'the edible play dough' was a descriptive term and that, accordingly, Hasbro would find it impossible to stop them, no matter what use they made of it. They did not consider whether making it part of the name of the product would have different implications. They did not consider it relevant to consider whether, to others, 'the edible play dough', in the particular context in which they were using it on their packaging and within the toy trade, would mean the Hasbro product, or amount to taking advantage of Hasbro's goodwill, and ignored warnings to that effect".

Edible play dough recipes here and here
Health hazards of play dough here
The constitutional role of play dough in the United States here