Coffee wars plunge into shape protection

In the early hours of every morning, this Kat performs a ritual which will be very familiar to some readers. She (a) takes her clean cafetiere from the cupboard; (b) adds two big scoops of ground Italian coffee; (c) adds boiling water; (d) pushes the plunger down and, (e) hopes for the best. Accordingly, she has been reading with interest the recent decision in Australia concerning an alleged case of misleading and deceptive conduct and passing off between two manufacturers of cafetieres.

Peter Bodum A/S ('Bodum'), a Danish company, was founded in 1944. Since at least April 1986, Bodum widely advertised the Bodum Chambord Coffee Plunger (BCCP) and made substantial sales in Australia. The BCCP possessed a number of readily identified and reasonably distinctive features, being marked with the Bodum name in a number of places. When sold it also bore a prominent sticker on which the Bodum logo appeared.

DKSH Australia Pty Limited ('DKSH'), an Australian
company, was a subsidiary of a Swiss company DKSH Holdings Ltd. DKSH imported into Australia, and sold by wholesale, homeware and kitchen products including the Euroline Coffee Plunger. The Euroline Coffee Plunger possessed almost all the same physical features as the BCCP but is not marked in the same way. When sold it carried a sticker on its base which says 'Made in Taiwan'.

Not surprisingly, Bodum was far from pleased by DKSH's Euroline Coffee Plunger product on account of its similarities to the BCCP. It commenced actions for misleading and deceptive conduct under ss 52 and 53 of the Trade Practices Act 1974 and for passing off in the Federal Court. In particular, Bodum contended that the BCCP is packaged for sale in packaging that prominently depicts a photograph of the coffee plunger, thus giving prominence and emphasis to the design features of the plunger within, rendering, it is said, the packaging, in a practical sense, transparent to the consumer. According to Bodum, it had acquired a substantial and valuable reputation in the features and distinctive shape of the BCCP -- which meant that the sale in Australia of coffee plungers which embody those features (or a significant number of them) and the shape signifies to consumers that such a coffee plunger is the BCCP or is otherwise authorised by Bodum. Finally, Bodum contended that (independent of trade marks) a secondary meaning or independent reputation can subsist in the features and shape of an article or the get-up for a product which operates to associate products of that shape or those features in the mind of consumers with a particular trader although it is not necessary that the consumer knows the name of that trader.

At first instance in the Federal Court Justice Middleton found that DKSH had not engaged in misleading or deceptive conduct or passing off by marketing and selling its Euroline coffee plunger: Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23. At [82] he stated:

'I should state from the outset that while I am of the view that the Bodum brand itself has a significant reputation in the homewares/ housewares market, I do not consider that Bodum has the secondary meaning or reputation in the Bodum Chambord Coffee Plunger ... features it identifies. I consider that Bodum’s reputation is distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name. Bodum’s reputation does not exist in the naked Coffee Plunger features ... (without its logo in place) alone. If I am wrong about this, and if Bodum does have a secondary reputation in the features alone, then I am not satisfied that the accused products ... in the way they are packaged or exposed to potential customers in Australia are sufficiently similar to give rise to the misrepresentation alleged by Bodum'.

Bodum appealed to the Full Court of the Federal Court, being was critical of Middleton J's findings that the BCCP had not acquired a secondary meaning or independent reputation. In particular, it submitted (at [66]) that Middleton J 'did not look at the vast body of advertising material put in evidence and relied upon by Bodum as the foundation of its secondary meaning or independent reputation for the features of the product'.

A majority of the Full Federal Court (Greenwood and Tracey JJ; Buchanan J in dissent) reversed the decision of Middleton J and found in favour of Bodum: Bodum v DKSH Australia Pty Ltd [2011] FCAFC 98.

So what changed?

Writing the majority judgment, Greenwood J reviewed the relevant advertising material and was satisfied (at [197]) that

'the evidence establishes a very significant secondary reputation in the features of the Bodum Chambord Coffee Plunger associated in the mind of consumers with Bodum as the manufacturer of the product and, with respect to the primary judge, that reputation is not “distinctly tied” to Bodum in the sense that in the absence of the name Bodum there cannot be a secondary reputation in the features of the product'.

On this basis, according to Greenwood J (at [198]), the real question in the case is 'whether DKSH has done enough having regard to all the relevant differentiation factors to distinguish its rival product from the Bodum product'. Greenwood J answered the question in the negative. His Honour considered that:

• The BCCP enjoyed a substantial or significant reputation by reference to its features and shape (at [220]).


• 'Sales' of the BCCP were substantial, 'dwarfing the respective sales of ... DKSH' (at [222]).


• DKSH had not undertaken any retail advertising of its Euroline Coffee Plunger during 2008 or 2009 (at [223]).


• BCCP's features were 'strikingly similar' to the EuroLine Coffee Plunger (at [225]). Further, 'for all practical purposes, the overall appearance of the two products is the same' (at [227]).


• The Euroline Coffee Plunger had no branding, such as symbol, name or logo, on the product itself (at [231]). The branding was only on the packaging and this was not sufficient.
  


• The Euroline brand was 'not well known', being an 'unknown brand' (at [235]). It was 'not distinctive' and was thus 'very likely to be regarded as an abbreviated description of a product having a provenance as a product within a line of European products' (at [236]).

Having regard to these factors Greenwood J found (at [236]) 'it difficult to accept that DKSH has distinguished its product'.

This Kat says this decision should be welcomed by those seeking to rely on misleading and deceptive conduct and passing off claims to protect their product designs or 'get up'. However, he wonders whether the decision could mark the start of a slippery slope for seeking quasi protection for shapes rather than obtaining a registered trade mark or design.

Merpel, rather cheekily, questions whether the following cartoon (as shown on the Bodum website when trumpeting its success against DKSH) is the best way to encapsulate the majority decision of the Full Federal Court...

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

Use of financial services sector mark in City of London of 'more than local significance;

The Fortress Participations BV logo

The extent to which the scope of use of an earlier mark which is cited in aid of a Community trade mark opposition or cancellation is becoming an increasingly lively topic.  It was no surprise to the IPKat, therefore, when his friend Roland Mallinson (Taylor Wessing) just happened to wonder whether the readers of this weblog might be interested in a recent decision of the OHIM Board of Appeal in Case R 355/2009-2 Fortress Investment Group LLC and Fortress Investment Group (UK) Ltd v Fortress Participations BV, a decision of 8 March 2011 which, at the time of checking, was not yet available online -- but you can read it here.  Let Roland (who acted for the two applicants/appellants, 'FIG') take up the story:

"FIG had sought to cancel FP's two Community trade marks for the mark FORTRESS (one a word and the other a device) on the basis of an earlier UK passing off right. The OHIM Cancellation Division rejected the applications for cancellation but the OHIM Board of Appeal has reversed these decisions.  Since the two mirror each other, I'll just deal with one of them here. In each case the Board accepted the evidence of the prior passing off right that had previously been rejected at first instance.

In terms of interesting law: 

• Use of a mark on financial services in the City of London was held to be use of "more than mere local significance" and so could give rise to a prior right to be relied upon in an objection under Article 8(4) of the Community Trade Mark Regulation (CTMR). The test is not just geographic but also economic. London is the seat of all government institutions and bodies and the City is one of the leading financial centres of the world (para 46). The same could presumably be true in other sectors which may have limited or very focused geographic markets (perhaps diamonds and Amsterdam?). 

• The Board held that its discretion to admit additional evidence at appeal stage is broader than in oppositions due to public policy considerations; unlike an opposition, a cancellation action is a final process. It also helped in this case that the new evidence merely corroborated and confirmed the previous evidence (para 33). 

• Contrary to the decision of the Cancellation Division, there is no obligation under Article 8(4) to show use of the brand relied upon during the five year period prior to filing the cancellation action. The Board distinguished reliance on a prior (unregistered) passing off right to reliance on a prior CTM or national mark. However, the Board nevertheless still ruled that use of the prior mark had to be shown not only for the period prior to the CTM filing date (in order to establish the earlier unregistered right) but also that the use had to be continuous right up the date of filing the cancellation action (para 44). This requirement was stated to be independent of national law. It seems to derive from the CTMR, perhaps from Article 8(4) itself, but the Board does not make this clear. Article 8(4) requires the prior mark relied upon to be "used in the course of trade". Does the passive past participle "used" mean the use has to be right up to the date of filing the opposition/cancellation action or just previously used in the past? The Board referred also to Rule 19(2)(d) CTM Implementing Regulations. However, this just requires the submission of evidence of the "acquisition, continued existence and scope of protection" of the prior right. Under English law, the "continued existence" today of a prior passing off right doesn't require use today. It is possible to sue in reliance on historic or residual goodwill in a brand that has not been used for some years (cf Ad-Lib Club v Granville [1972] RPC 673). In fact, in this case, it didn't matter since it was accepted that FIG was still using the brand".

If anyone fancies answering these questions, this weblog makes itself available for that very purpose.

Flying fortress here
Fortress Europe 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.

Irish paper folds, but it's no O'Rigami ...

In "'Mail' sued over 'Tribune' cover" the Irish Times reports that the Irish Mail on Sunday is being sued for passing off over its alleged “brazen and outrageous” publication last month of a fake copy of the Sunday Tribune, only days after the latter went into receivership.  Lawyers for the receiver say the newspaper is to seek damages, including “exemplary damages” over this “direct attack” on the goodwill of the Sunday Tribune.

The Irish Mail on Sunday however described the Sunday Tribune as “a dead man walking, if it was even walking” at the time of the disputed publication in early February, claiming that the goodwill of the Sunday Tribune was not even worth the €40,000 cost of the libel insurance which would have been necessary to publish it.

Mr Justice Peter Kelly has said that he would transfer the proceedings to the Commercial Court since the action was admissible within the rules relating to passing off cases, there no longer being a monetary threshold for passing off actions.  The trial has been listed for 21 March.

The IPKat, aided by legions of amicable Irish IP enthusiasts, of which Gemma O'Farrell is not the least to be reckoned with, suspects that he will have more to report to readers of this weblog in due course.

Origami here
Irish origami, or what to do with your newspaper when it folds, here

Passing off and the CTM - three questions from Japan

The IPKat has been contacted by his learned friend Japanese attorney Masahiro Tomabechi with three detailed questions concerning "passing off" and Community trade marks.

Masahiro has spent the last few weeks on secondment in London to 'carefully and sincerely' study European and UK trade mark laws and he has clearly made good use of his time as his three questions below serve to prove. This Kat, herself originally coming from a non-Common Law jurisdiction, has given Masahiro answers to his questions but thought it would be so much more fun to see what our readers think the answers should be -- somewhat reminiscent of the old German saying that 'if you ask two lawyers the same question, you will at least get three different answers' ('yes', 'no', 'perhaps, but I have never seen it...'). Merpel, however, wonders whether the German Kat might perhaps not trust her own answers....

Please post your responses in the comment field below.

[Question 1]
In a case where a French company (hereinafter called “the proprietor”) owns a Community Trade Mark right, if the Community Trade Mark is threatened by infringement activities of a British company in the UK and then the proprietor sues before a CTM court in the UK, is it possible to claim the “Passing-Off” right together with the CTM’s right in order to prohibit the British company from using its mark in the UK?

[Question 2]
If the Community Trade Mark is threatened by the infringement activities of the British company not only in the UK but also in France and then the proprietor sues before the CTM court in the UK, is it possible to claim the “Passing-Off” right together with the CTM’s right in order to prohibit the British company from using its mark in France and the UK? That is, when the “Passing-Off” right is claimed together with the CTM right, is the “Passing-Off” right applicable in France as well as the UK, although France is not a common-law country?

[Question 3]
If the Community Trade Mark is threatened by infringement activities of a German company in the UK and then the proprietor sues before a CTM court in Germany, is it possible to claim the “passing-off” right together with the CTM’s right in order to prohibit the German company from using its mark in the UK? That is, does the German court have ability to examine the existence of the “Passing Off” right, although the “Passing Off” right is a right derived from the UK Common Law?

A sight for sore eyes?

Readers with long memories and lawyers-turned-shelf-fillers will remember the IPKat's posts last year on a thoroughly respectable law firm making a bit of a spectacle of itself in the dispute between Specsavers International Healthcare and Asda Stores (see here and here). Late last week came news that Mr Justice Mann was giving judgment in the sequel, Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch), a decision of the Chancery Division for England and Wales.

High-street budget optician chain Specsavers sued Wal-mart's UK avatar Asda Stores for infringing its SPECSAVERS word and figurative trade marks and for passing off. What had Asda done to deserve this attention? It opened some opticians' stores in its supermarkets, marketing them with a campaign featuring logos consisting of non-overlapping white ovals with "Asda Opticians" written on them in a light green colour favoured by Specsavers but which was not specified in its non-colour-specific trade mark registrations. Its promotional material carried straplines which really invited trouble: "be a real spec saver at Asda" and "spec savings at Asda" [Readers who can't spot the bit that annoyed Specsavers should get their eyes tested, says Merpel]. There was evidence that Asda (i) initially planned to parody Specsavers' logos and advertising, thus inviting the public to compare its offering to that of Specsavers in a fairly blatant manner and (ii) took legal advice on whether Specsavers could legitimately object to various designs and straplines, before choosing those which led to this action.

Apart from alleging passing off Specsavers argued that, by using its logos and straplines, Asda committed regular similar-mark/same services infringement under Article 9(1)(b) of the Community Trade Mark Regulation and took unfair advantage of the earlier marks under Article 9(1)(c) of the same Regulation.

Mann J gave judgment in part in Specsaver's favour.

* The claim based on similar-mark/same service confusion failed: if a registered mark was unlimited as to colour it was registered for all colours and the colour of the allegedly offending sign became irrelevant. In this case, once colour was eliminated there was a degree of similarity between the respective logos, but there was also a significant visual difference in that Specsavers' ovals overlapped but Asda's didn't. While the ovals were an important part of the logos, they did not dominate them to the point that they subordinated the wording when considering the logo's overall appearance. What's more, the wording introduced a very significant difference, giving a very different overall impression and a reasonably circumspect consumer would not be confused by the presence of ovals if they were the only real element in common.

* The fact that Asda -- not for the first time in its trading life [Remember Penguins v Puffins, says the Kat, reported as United Biscuits v Asda [1997] RPC 51] -- was "living dangerously" did not make any difference to this conclusion and did not amount to evidence of an intention to confuse.

* The unfair advantage claim succeeded in respect of the first strapline but failed in respect of the logos and second strapline. This was because there was a link between the first strapline and the mark in that "spec saver" plainly called to mind the claimants' "SPECSAVERS" trade mark, and Asda clearly intentionally gained an advantage by drawing on the reputation already established by Specsavers' brand. As to the logo, the "living dangerously" evidence showed that Asda did indeed think its logo would have a resonance with Specsavers', but did not distance itself sufficiently from the earlier brand to remove that resonance. That amounted to "bringing to mind", but obly very weakly: any advantage from it was too slight to be unfair.

* Misrepresentation lay at the heart of passing off and there was none here: despite the similarities, there was simply too much of Asda's own branding on its own services to give rise to any misrepresentation.

* One of Specsavers' logos was revoked for non-use: it was a wordless one, it had not been used by itself in connection with the services for which it had been registered and its use with words written across it altered its distinctive character.

Says the IPKat, Specsavers probably feel quite sore about this, even though they have secured a small measure of what they sought to achieve. He also notes that, once again, survey evidence was put together by the claimant and then pulled apart by the court. When will claimants in cases involving proof of confusion and/or reputation finally work out how to address the methodological and inferential issues that seem to trip them up on almost every occasion? Merpel is unhappy in general about the conclusions relating to likelihood of confusion: if the relevant consumer of Specsavers' and Asda's optician services has poor eyesight, is he or she not more likely to be confused by the similarities in overall appearance between the two than the keen-sighted Mr Justice Mann?

Breaking news: Vodkat appeal dismissed

In a super judgment in January, noted by the IPKat here, Mr Justice Arnold (Chancery Division, England and Wales) held in Diageo v Intercontinental Brands that the sale of a product under the name VODKAT was a form of "extended passing off" which makers of genuine vodka were entitled to prevent. This morning the Court of Appeal (Lords Justices Rix and Patten and Mr Justice Peter Smith) dismissed the appeal.

Intercontinental Brands had argued that only products which have a cachet should be protectable and that vodka, being a generic term, did not possess such a cachet. In its decision -- largely given by Patten LJ with a little augmentation from Rix LJ -- the Court reaffirmed that cachet is not a legal requirement and therefore dismissed the appeal, refusing permission to appeal to the Supreme Court.

The injunction prohibiting Intercontinental Brands from continuing to sell its VODKAT non-vodka product will not come into force until such time as any application to the Supreme Court for permission to appeal has been dealt with.

The judgment (77 paragraphs) is not yet on BAILII, but you can read it in full here.

STOP PRESS: the judgment is now available on BAILII, here.

When picking a vacuum cleaner design, watch for the sucker punch ...

In a world of sadness and misery, a smiling face can make all the difference. This was perhaps what Qualtex UK thought, when they wiped the smile off the face of Henry the Smiling Vacuum Cleaner. Qualtex, one of the UK's less successful IP litigants in recent years (see here and here), must have had the smile wiped from their own faces when they lost again -- this time in Numatic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (C), a Chancery Division ruling from Mr Justice Floyd on 28 May.

In this action Numatic sued Qualtex for passing off. Numatic was the maker of the beloved Henry vacuum cleaner. Henry was basically a tub with a domed black "bowler hat" lid, below which a red cylinder bore a printed smiling face, the hole where the hose emerged serving as his nose. Numatic had invested significant resources in giving Henry an anthropomorphic character and appearance. Apart from looking cute, Henry was a hard and effective worker who earned his reputation through years of successful use.

Qualtex, which also made vacuum cleaner markets, planned to make and sell a Henry replica -- but without Henry's name or smiling face -- and told Numatic accordingly. Numatic said it had rights in the shape even independently of the name, face and the red- and- black livery, and [while no doubt delighted at the prospect of such close competition] asked Qualtex for undertakings not to market the product. Qualtex promised to take active steps to distinguish its product but, at a subsequent cleaning trade show, exhibited a prototype of the product which, while blue, faceless and sporting a circumferential flange or skirt around its base, had a bowler-hatted lid in shiny black.

Numatic issued quia timet proceedings [How funny that this Latin tag has survived, when other Latin, and indeed English, words were driven from the legal system by the previous government] and applied for an interim injunction, and Qualtex promised not to sell vacuum cleaners with that appearance. Qualtex also argued, that since the cleaning trade show, it had done further work on the design and branding of the prototype and that the machine which it intended to sell had a bumper band and tool caddy, with the words "Quick Clean Equipment" and "Commercial" on it.

In these proceedings the judge was asked to determine (i) what, if anything, Qualtex was threatening to do at the date of their commencement, (ii) whether any live threat survived the service of Qualtex's defence and (iii) whether anything which Qualtex threatened to do amounted to passing off.

Floyd J held, for Numatic, that the company was entitled to quia timet relief on the basis that there was an impending passing-off.

* After summarising the criteria for succeeding in an action for passing-off, he explained that any claimant who brought a quia timet action was necessarily obliged to prove the elements of its case on a somewhat theoretical basis since they hadn't actually happened yet. Numatic thus had to show that it was justified in commencing proceedings because Qualtex was threatening to do acts which would amount to passing off.

* On the evidence, at the date of the show and until the date that proceedings were commenced, Qualtex was both threatening and intending to launch a machine with substantially the same appearance as its prototype, although that threat was removed after the defence was served.

* There was no real dispute that Numatic had a protectable goodwill and reputation in the combination of features which made up the appearance of the Henry vacuum cleaner. Given that reputation, the sale of the replica (even if it lacked the smiley face and name but retained the shape and bowler hat) would make a damaging misrepresentation.

Right: not a prototype, but Henry VIII -- better at gathering wives than dust ...

* Survey evidence from members of the public supported the view that the replica prototype conveyed a strong message that it was a genuine Henry; there was thus a real likelihood that at least some people would buy it, thinking that it was so.

* Henry was seen by the public as having the appearance of a small person, and to that extent his shape had a secondary meaning.

* One might suppose that members of the public would still recognise the product even if one or more of the elements which gave it that character were removed, so long as enough remained to convey the same message. Removing the face and name from the replica was not sufficient to avoid passing off, since not all sensible purchasers would be put on enquiry by their absence.

The IPKat believes that this is a question of winning the battle but losing the war: Qualtex will eventually be on the market with a product which is just sufficiently distant from Henry to avoid any IP infringement, but which will still be close enough for consumers to view it as a generic look-not-quite-alike product. Merpel says, now that there's a new government and we are allowed to say "quia timet", can we go back to saying nice words like 'affidavit' and 'plaintiff' again, please?

Cat and dog vacuum cleaners here

Some famous Henrys here, here and here

One infamous Henry here

Song about lots of Henrys here

British election latest: Marmite takes on the BNP

The BBC has reported today that leading global brand owner Unilever is threatening legal action against the British National Party in order to prevent it from using a jar of the popular Marmite spread in a party political broadcast. According to the BBC article,

"Unilever said it had not given the BNP permission to use its product and was looking into taking out an injunction. The BNP's online broadcast was removed from its website, but it can still be seen on video hosting website YouTube. The party initially said the clip was a spoof, but then claimed it had not been responsible for adding the Marmite jar.

In the broadcast, a jar of Marmite appears in the top left hand corner of the screen as BNP leader Nick Griffin addresses the camera. In a statement, BNP leader Nick Griffin said the jar had "apparently" been inserted by "one of the people to whom we had given the broadcast to review". He added that it was not included in the official version of the broadcast.

Neither Marmite nor any other Unilever brand are aligned to any political party.
However, Mr Griffin went on to say that the Marmite jar had been added in reaction to a recent advertising campaign for Marmite which he said mocked the BNP. In the Marmite campaign two spoof political parties, the Love Party and the Hate Party, compete in a mock election. The BNP claims the Hate Party was "clearly based" on itself. "Quite simply, if you start a spoof, you should expect to get spoofed," added Mr Griffin. "Although we are not responsible for whoever it was who inserted the Marmite jars into the internet version of the broadcast, we do see the amusing side."

Unilever said in a statement: "Neither Marmite nor any other Unilever brand are aligned to any political party. We are currently initiating injunction proceedings against the BNP to remove the Marmite jar from the online broadcast and prevent them from using it in future."

The IPKat speculates that Unilever's claim will be based on trade mark infringement though either deriving an unfair advantage or damaging the reputation of the brand without due cause, as well as for passing off on the basis that the positioning of the Marmite jar constitutes a false representation that Marmite or its brand owner has endorsed or sponsored the BNP.

Why cats like Marmite here and here

Love Marmite -- or hate it here

Pale foreign imitation of Marmite here

Something you should never confuse with Marmite here

No short-cut to passing-off where forgery alleged

A couple of years ago, the IPKat seemed to come across cases involving applications for summary judgment almost every week; these days, however, applications for a knock-out order on the basis that the defendant hasn't a hope of defending the action are not nearly so common. Radiocomms Systems Ltd v Radio Communications Systems Ltd & Tomlinson [2010] EWHC 149 (Ch), a decision of Mr Justice Floyd (Chancery Division, England and Wales, 15 January 2010), is one such case. It's not yet on BAILII -- but the IPKat spotted it on a news round-up from the excellent subscription-based PLC.

In short, Radiocomms Systems Limited (Radiocomms) alleged that Radio Communications Systems Limited (RCS) was passing itself off as Radiocomms through the actions of Mr Tomlinson, who worked for RCS. The alleged passing off consisted of Tomlinson giving Radiocomms' company registration number instead of that of RCS and by saying that company was "Radiocomms from Croydon", the borough in which Radiocomms' head office was situated. Tomlinson denied engaging in the conduct complained of, adding that some of the documents relied on by Radiocomms had been forged.

Rejecting Radiocomms' application for summary judgment, Mr Justice Floyd ruled that some of Radiocomms' evidence was given at second- or third-hand and could take on a different character after cross-examination. Adding that there were other questions regarding the evidence which had to be left for trial, the judge concluded that Radiocomms had not demonstrated that the defence had no realistic prospect of success. What's more, even if the evidence had been sufficiently conclusive, Floyd J would still have ordered a trial because assessment of the claim would involve an enquiry into the veracity of all the witnesses, including Tomlinson himself.

The IPKat notes that, while applications for summary judgment can save a huge amount of time, money and effort, where they are unsuccessful they simply add a further layer of litigation to the dispute resolution process. Curiously enough, they don't seem to have been given much coverage in last month's Review of Civil Litigation Costs (the Jackson Review).

Facts about Croydon here
What's so funny about Croydon here

Breaking news: Vodkat falls foul of extended passing-off

A swiftly-issued release from Rouse Legal gave the IPKat the news that the sale of a non-vodka product as Vodkat was a form of extended passing-off. So held Mr Justice Arnold this morning in Diageo v Intercontinental Brands [2010] EWHC 17 (Ch). This 45-page extravaganza is the latest in that long line of ‘extended form’ passing off cases which began back in 1960 with the first ‘Champagne’ case, Bollinger v Costa Brava Wine Co Ltd [1960] Ch 262 and which has taken us on a tour through ‘Sherry’, ‘Scotch whisky’ and ‘advocaat’and even ‘Swiss chocolate’. According to the press release,

" ... the defendants’ product, VODKAT, [was] not a vodka, but a 22% alcohol by volume (ABV) mixture of fermented alcohol and vodka. To be a vodka a product has to be inter alia 100% distilled alcohol and at least 37.5% ABV.

According to the defendants the brand name, VODKAT, was selected to indicate that vodka was one of the product’s ingredients. The defendants conceded that the product was targeted at the core vodka market (females aged 18 to 25) and the judge found that it had been marketed under a get-up strongly reminiscent of a vodka get-up.

Diageo, the proprietors of SMIRNOFF, the UK’s leading brand of vodka, objected to VODKAT, claiming that it was being passed off as vodka. Evidence was produced of retailers and wholesalers categorising [Kat-egorising?] the product as a vodka, displaying it among the vodkas and in some cases expressly stating it to be a vodka. Evidence was also produced of journalists and others believing it to be a vodka [judging by what some journalists write, they'll believe anything, particularly after the first few glasses] and this was supported by evidence of consumers who had bought it believing it to be a vodka.

The defendants defended the case primarily on the basis that ‘Vodka’ is not a sufficiently well-defined category of product and does not have the necessary cachet to merit protection by way of a passing off action. They also contended that the claimants’ evidence of deception was not sufficiently substantial in the context of the massive sales achieved by VODKAT over the last five years.

In his judgment, the judge relates in some detail the development of the law in this area and concludes that vodka is sufficiently well-recognised as a product category to merit protection by way of this form of action. He rejected an argument put forward by the defendants that for vodka to merit protection it had to have a reputation for superiority. He found that “vodka was generally perceived by consumers to be a clear, tasteless, distilled high strength spirit” and that “an important aspect of the reputation of vodka [is that] it can alcoholically enhance any chosen mixer without
detracting from the taste of the mixer”. He concluded that “the term ‘vodka’ does have a reputation giving rise to a protectable goodwill”.

As to the evidence of deception, the judge was satisfied “that the instances of actual
confusion proved in evidence are representative of a significantly greater number that will have occurred”. The judge was also satisfied that Diageo will have suffered resultant damage in the form of both lost sales and erosion of the distinctiveness of the term ‘vodka’. In the result the judge concluded that the defendants had passed off VODKAT as vodka. The form of the final order has yet to be determined [It usually starts with the words "Last orders, please ..."].

Aspects of the judgment, which may be of interest to practitioners, are the sections dealing with the judge’s analysis of the basis of the action and his comments in relation to the trap order and survey evidence”.

The IPKat looks forward to reading the details and may return to this case if/when he finds something exciting.

More on vodka here
Vodka cocktails here

God Save the Cream – when punk rock icons and subversive ice cream collide

The Sex Pistols are threatening boutique ice-cream maker Icecreamists with actions for passing off and trade mark and copyright infringement for utilizing the slogan “God Save the Cream”, the band name and images from the band’s seminal 1977 single God Save the Queen. The images and signs were used in their advertising campaign based online and at their Selfridges-based concession store. Selfridges distributed promotional material bearing the quote “More Sid & Nancy than Ben & Jerry”.

Icecreamists also sell an ice cream cocktail called the “Sex Pistol” which apparently comprises of “natural stimulants and absinthe ice cream served with a shot of absinthe in a pink water pistol”.

Icecreamists describe themselves on their website as

“an anonymous troupe of provocateurs and iconoclasts with a background in staging dramatic high-profile events. Whilst engaged on these clandestine and legally dubious pursuits, they would on occasion be discovered by law enforcement officers, enjoying illicit chills with a tub of freshly made gelato. One day they read that ice cream could be subversive...” [Did ice cream lose its innocence when the IPKat wasn’t looking?]

As reported in the Guardian, lawyers acting for the band are understood to have written a letter compelling the company to stop their use of the slogan, images, band name and related get-up as well as demanding damages in relation to lost licensing fees incurred by the band.

Following Icecreamists summer launch, Glitterbest, the Sex Pistols’ holding company, lodged this trade mark application with the IPO this August for the Sex Pistols' band name ,which includes registration for ice cream and ice cream parlours (Class 30).

The Guardian reports that Matt O’Connor, founder of the Icecreamists stated:

"We are a bit dumbfounded that a group that made its reputation for being banned is trying to ban one of our ice creams and claim copyright over the national anthem and the Queen."

Given that John Lydon (a.k.a. Johnny Rotten) already employed his, and impliedly the Sex Pistols’, punk image in a media campaign for Country Life (seen here), perhaps the leap from the band to ice cream in the consumer's mind is not so lengthy.

Who knew punk rock and dairy could be so harmonious…?

McDonald's final defeat by McCurry

The IPKat has learned from The Star that McDonald's has lost its final appeal against a Malaysian restaurant's use of the name McCurry (see previous coverage from the IPKat here). The Malaysian Federal Court refused leave to appeal against an earlier decision holding that confusion between the fast food chain and McCurry, which sells Malaysian chicken and fish head curries, was unlikely. McDonald's was also ordered to pay costs after failing to adquately explain how the earlier decision was flawed.

The IPKat has a sneaking sympathy for McDonald's here. He agrees that confusion is unlikely (he can't see fish heads appearing on McDonald's menus any time soon). However, he can't help but wonder if there wasn't just a tiny intention to create an association. Even if the 'Mc' stands for 'Malysian Chicken' as the owner has suggested, isn't it a little odd that a small 'c' is used. What really puzzles the IPKat though is whether an association with McDonald's would really help to shift chicken curry.

Shhh ... it's a secret, as spicy burgers go to court

Thanks are due to the IPKat's friend Gemma O'Farrell for sending him this item from the Irish Times, entitled "Legal row over recipe for spice burger". According to this article,

"The makers of the spice burger have secured a number of [interim] High Court injunctions against a former director who it is claimed has been passing off burgers made by him as their product.

Walsh Family Foods Limited have sought the orders against one of its former directors Patrick Walsh, .. the son of the person credited with inventing popular chipper staple [the IPKat is unfamiliar with this term, which has no corresponding Wikipedia entry. An internet search revealed just 47 'hits', so it may be an obscure Irish term of art ...], and is one of the few people who knows the burger's secret recipe. ...

The injunctions restrain Mr Walsh from destroying any information or interfering with any of the companies property, in particular any documentation sent by the suppliers of ingredients for the spice burger. ...

The orders also restrain Mr Walsh deleting or destroying any confidential information that relate to any scope of the company’s business acquired by Mr Walsh during his employment with or in his capacity as a director of the company. ...

Mr Walsh, counsel said, sells the burgers as “Paddy Walsh Spice Burgers,” and the “Original Spice Burger Company”.

Those actions, counsel claimed, are in breach of the provisions of his contract of employment, which prevents him from revealing any trade secrets to any group or company. ...

[Evidence was given] that the spice burgers being made by Mr Walsh look indistinguishable from those made by the company [The Kat wonders whether this was on the basis of the ECJ's beloved "global appreciation" basis, or was there a burger-for-burger comparison of individual characteristics. Merpel wonders whether, strictly speaking, the burger is just the bit in the middle, the bun being merely an outer casing] [but] that Mr Walsh had re-introduced MSG into the product to give it a slightly stronger flavour"".

Speculation is rife as to whether counsel for the parties belong to the Burger Bar ...
Wikipedia on burgers here
Spice burger recipes with video here
Kangaroo burger here
Warren Burger here

Judge puts Strip Party on hold

Interim injunctive relief to stop use of the word "nude" may not have been granted (see earlier IPKat post here and Class 46 post here), but the word "strip" has fared rather better.

Right: from the safety of her vantage point on the roof, Tiddles looked down to see whether the Feline Depilator Squad had left the area yet ...

In Strip Ltd v Strip Pte Ltd and Strip UK Ltd [2009] EWHC 2070 (Ch) Mr Justice David Richards (Chancery Division, England and Wales) granted interim relief in an action for passing off brought by a celebrity waxing and depilatory business against another which, having traded in Singapore, Malaysia, Indonesia and Dubai under the names “Strip” and “Strip Co-Ed”, was about to open up in London under the name "Strip Co-Ed" and was just one day away from its launch party. The claimant had traded as "Strip" in London since 2005 and was the only local business to do so. The invading depilators had traded under their names since 2002.

Could the claimant legitimately seek to monopolise the word "Strip"? The judge thought so:

"22. Mr. Baldwin [for the defendants] submits further that any loss of business which is associated with the name “Strip” is not capable of protection by the law of passing off because in connection with depilatory services the word “strip” is no more than descriptive and that it has no real distinctive quality. ...

23. On this interim application, I am satisfied that the claimant has a very serious argument to the effect that the word “Strip” in this context – I say absolutely nothing of completely different businesses – is, or may well be distinctive and is not simply a descriptive term".

The judge accepted that there was a real prospect of damage to the claimant if no interim injunction were granted, and a real prospect of damage to the defendants if it were. The clincher was the fact that the claimant was already trading in London but the defendants weren't. He added:

"29. ... The fact that [the defendants' business] is due to open this week and this application is being heard the day before the launch party is, in my view on the evidence before me, the almost exclusive responsibility of the defendants".

Says the IPKat, this was basically because, while there was a history between the parties in relation to trade mark opposition and invalidation proceedings, the defendants didn't invite the claimant to their launch party, and certainly didn't keep the claimant fully informed about its launch plans. Merpel adds, if counsel for the defendants had succeeded on behalf of its depilatory client, it would definitely be a case of a Bald-Win. Indeed, adds Tufty, something to wax lyrical about.

This decision is not yet on BAILII but you can read it here. Thank you, Douglas Campbell (Three New Square), for tipping the Kat off.

Hair removal -- not be confused with unhairing.

How to use an Epilady here

How to remove cat hair here

Hair of the dog here

Last minute reprieve for passing off

An Art.8(4) case from the CFI: Joined Cases T-114/07 and 115/07 Last Minute Network v OHIM - Last Minute Tour. Last Minute Tours registered a word and device mark containing the words Last Minute Tours as a CTM for Class 16 and Classes 39 and 42. Last Minute Network applied for the mark to be invalidated, citing an earlier right protected by passing off in the sign lastminute.com under Art.8(4). The OHIM Second Board of Appeal rejected the application for invalidity citing a lack of confusion.

The CFI found that the Board had erred in a number of respects:

1. The Board had looked at the average consumers of the goods in question, whereas under passing off the relevant public is the earlier user's customers;
2. The Board had wrongly addopted the approach that because the term 'last minute' had a generic meaning, no party could be granted a 'monopoly' in it. This was wrong in the light of the Camel Hair Belting case (Reddaway v Banham [I896]. A. C.. I99);
3. In establishing misrepresentation, the Board had conducted a mark for sign comparison of the two indicia, focusing on their aural, visual and conceputal aspects, as would be appropriate under Art.8(1)(b). Passing off would include a onsideration of other factors such as, in this case, the circumstances in which the goods or services are offered in the United Kingdom under the sign LAST MINUTE TOUR on the date on which the application for the Community trade mark was filed. The Board had also failed to take into account the reputation of lastminute.com in establishing passing off, and the possiblity that its reputation would lead to confusion as to the origin of services which just used the 'last minute' element.

The decision was thus annulled at sent back to OHIM for adjudication.

The IPKat notes that this case demonstrates something that is sometimes easy to forget - that the confusion required for trade mark infringement and misrepresentation under passing off don't necessarily lead to the same result. Once again though, the IPKat feels rather sorry for OHIM, having to apply the assorted unfair competition rules and other laws of 27 Member States under Art.8(4).

Darkness visible at the IPO

The IPKat dabbled with the occult by reading the decision of Mr Hobbs QC, sitting as Appointed Person in the opposition concerning DARKNESS VISIBLE.

One Mr Ross Heaven applied to register DARKNESS VISIBLE for ‘Arranging and conducting workshops’ and ‘Spiritual and lifestyle counselling’ in January 2006. This was opposed by a Simon Buxton, who argued that he had an earlier right protected by passing off dating back to January 2003.

Heaven and Buxton had collaborated, providing workshops and writing a book entitled Darkness Visible, but this collaboration had come to an end by the end of 2005. The key theme was the spiritual effects of living in total darkness for a period of time. However, both claimed that they had come up with the concept first and had invited the other to join him.

Mr Buxton explained that he had been introduced to the use of darkness during his induction into a ‘small, private shamanic group of bee-keepers known as The Path of Pollen’ by a process introduced to his as ‘darkness visible’. He described that

‘I was myself Apis Mellifera, a male drone, surrounded by forty thousand female workers and, somewhere, our queen, our regent. …I was no longer human, but a member of a completely different genus’ and ‘The Bee Master eventually placed me in what appeared to be an oversized, six-sided dog basket…’

Buxton published his experiences in a book which featured an effusive introduction by Heaven, but by the time of the hearing he claimed that he had ghost-written the book and that ‘it was conceived and written as a work of fiction and that the ‘path of pollen’ does not exist’..

Heaven also provided witness statements from those who had been on his 2001/2 workshops, stating that the techniques described in Buxton’s book had been used by Heaven in those pre-2003 workshops. Buxton produced his own witnesses, and there both sides tried to discredit each other’s witnesses (including, it seems, with the use of black magic altars).

One of the witnesses claimed that her original statement had been forged, and was produced to support Heaven without her knowledge. Another witness refuted this claimined that the two statements had been signed together in a pub in Arundel, and that she had lent the other witness her pen. Mr Hobbs QC noted that the two statements were signed in different coloured inks.

The Hearing Officer found that this was a case of shared goodwill, and that the oppositon would have to be rejected because both Heaven and Buxton were just as entitled as each other to register the mark.

Mr Hobbs QC found that the Hearing Officer had erred as he had adopted a ‘selelctive approach’ to the evidence that did not have the breadth and depth required for the case. A structured approach to assessment was necessary, and this revealed that Mr Buxton’s organisation was entitled to claim the mark because of the use of it made in commerce since January 2003. Heaven’s claim to proprietorship was open to doubt, particularly in the light of his claim that he had been part of an elaborate hoax regarding The Path of Pollen. Also, in oral submissions he had made it clear that he had no documentary evidence of his earlier use of the term.

Mr Hobbs QC criticised Heaven for burdening the proceedings with unnecessary evidence and Buxton for ‘using the proceedings as a vehicle for unimpressive evidence about his self-proclaimed initiation into the so-called Path of Pollen’.

As for the supposedly false witness statement, the Appointed Person noted that he could made a reference to the Director of Public Prosecutions but didn’t becaused he did not think ‘the public interest requires more public resources to be devoted to the further unmasking of bad behaviour in the context of what has plainly been an over-emotional dispute that ran out of control.’

The IPKat can’t help but think that the whole thing was rather a waste of time. The amount of time and effort in assembling the evidence must have far outweighed the value of the mark. As for using the proceedings as a vehicle to publicise the Path of Pollen, the IPKat can think of few less receptive audiences that a roomful of IP lawyers.

Protecting shape marks - the court mixes in

It’s been a few days since Geoffrey Hobbs QC, sitting as a Deputy High Court Judge, handed down his decision in Whirlpool v Kenwood. Weighing in at 48 A4 pages (but oddly, only eighty-odd paragraphs), the case could easily be subtitled ‘foodmixers at dawn’. At issue is the shape of Whirlpool’s retro-looking KitchenAid Artisan mixer and its rival, Kenwood’s kMix. The shape of the Artisan mixer is registered as a Community trade mark. Kenwood launched its kMix to be a rival product, intending to attract design-conscious consumers.

KitchenAid (left)

The average consumer for the purpose of establishing infringement could be taken to be the design-conscious consumer. These were premium-priced products targeted at that niche group of consumers. The question of who the average consumer is should be approached with an eye to the ‘real world’ and empirical evidence, rather than in the normative/regulatory way adopted by some Member States.

kMix (right)

There was no likelihood of confusion and so no infringement under Art.9(1)(b). While the kMix would be recognised as ‘KitchenAid-ish’, it would not be mistaken for a KitchenAid. There wasn’t even confusion of the ‘bait and switch kind’ (though Mr Hobbs QC expressed his belief that this would be actionable), whereby consumers would only realise that the kMix was not a KitchenAid after close examination. Moreover, a consumer who was about to spend upwards of £300 on a mixer would be unlikely to be under a misapprehension as to trade origin. This lack of confusion also meant that there was no misrepresentation for the purposes of passing off.

The kMix made a ‘non-verbal statement to the effect that the kMix is a mixer’. Therefore it was a sign, and Kenwood couldn’t argue that it wasn’t being used as a sign for the purposes of Arts 9(1)(b) and (c).

As for Art.9(1)(c), the ‘mnemonic’ effect of the two marks meant that there was a ‘link’ between them. However, although it might affect its market share, the kMix would not affect the distinctive character or repute of the KitchenAid mark. In the words of Mr Hobbs QC, the KitchenAid was

‘distinctive with relatively little scope for deviation from the paradigm form. I do not think that the bodywork of the kMix is relevantly similar to a degree which impinges upon the distinctiveness of the trade mark so as to satisfy the 'specific condition' for liability. I think it would be excessive, in the realm of product shapes, to apply the concepts of 'free riding', 'blurring', 'tarnishment' or 'dilution' more generally so as to hold that the bodywork of the kMix was too close to the bodywork of the Artisan for
the purposes of Article 9(1)(c).’

The IPKat reckons that this leaves a big question mark over the future of dilution actions where shape marks are involved. Perhaps there wasn’t really a diminution of the distinctiveness of the KitchenAid (though the IPKat reckons that Kenwood much have got a ‘leg up’ by the fact that its device resembled the KitchenAid in its ‘retro-ness’), but the Deputy Judge’s comments as to why this was an inappropriate case for applying free riding, tarnishment or blurring are very vague. To the IPKat this looks like scepticism towards the protection of shape marks through dilution, particularly when coupled with the Deputy Judge’s prefacing comments that ‘the sub-paragraphs of Article 7(1)(e) [functionality] also have a role to play in the determination of the question whether there is similarity between the bodywork of the Artisan and kMix mixers such that the latter without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the former.’ Much as the IPKat is a fan of dilution, he suspects that the sceptical approach is a sensible one. Too much protection for the distinctiveness of shape marks, or even against people taking advantage of earlier shape marks could lead to an earlier user managing to control the market for a type of product, or at least a particular genre of product-type (such as the retro food mixers).

Even Wiser, rule the three wise women

Back in March, the IPKat wrote:

"If you search the Scottish Courts website under "intellectual property" you won't find this -- which is why the IPKat missed it on his prowl -- but Wise Property Care Limited v White Thomson Preservation Limited and others [2008] CSOH 46, a passing-off decision of Lord Matthews (Outer House in the Court of Session), was posted on the Scottish Court website this morning. ... In this action the Pursuer [says the IPKat: that's the Scottish term for 'claimant' or 'plaintiff'] White Preservation, a trading division of Wise Property Care, successfully defended an application for recall of interim interdict (interim injunction) which had been granted without notice against White Thomson Preservation Limited and others. ...

... the surname of the brothers involved was 'White'. The Pursuer successfully argued that the Defenders' use of the name White Thomson Preservation Limited was confusingly similar to their trading division 'White Preservation' and that the Defenders' use of that name passed off their business and services as those of the Pursuer.

As ever it's the facts that make the case quite interesting, with the Defender trying to pick up and run with goodwill which, he was effectively saying, had been lying dormant. The suggestion that this somehow gave him a defence to passing off which is assessed on an objective basis was quite rightly rejected by the judge...."

This information came from the IPKat's valued Scottish friend Gill Grassie of Maclay Murray & Spens, who has now informed him that a three-woman court of appeal has dismissed the Defender's appeal.

Right: it seems the Kat has something to "grouse" about ...

Once again, the decision is not to be found among the IP cases on the Scottish Courts website, but you can read it here. Says Gill:

"The three judges unanimously rejected the appeal and agreed that the first instance judge was entitled to reach the view that he did in granting the interim interdict. Whilst there is no new point of law here it provides a useful reminder of how difficult it can be to challenge a first instance decision on interim interdict successfully, given that it is a discretionary one and that it is therefore necessary to show essentially that the decision was based on a error of law or was an unreasonable one. It seems to me that the approach taken here by the Appeal Court was the correct one and that the first instance judge exercised his discretion appropriately in granting the interim interdict".