Trade mark victory for the Queen

The IPKat has come across a rare instance of a mark being refused registration because of the inclusion of a crown, contrary to Sections 4(1)(d) and 4(2)(a) of the Trade Marks Act 1994.

The Combined Armed Forces Federation, a trade association for members of the armed forces, applied to register a mark (right) consisting of the words 'THE COMBINED ARMED FORCES FEDERATION EST 2004', together with a Union Jack featuring a crown in its centre. The registration was opposed by another armed forces trade association, the British Armed Forces Federation. Instead of arguing that there would be confusion with its operations, the BAFF argued that the logo included the Royal crown (a problem in itself) and as a consequence suggested Royal patronage. Additionally, the use of the Union Jack suggested authorisation by the either the armed forces or the British Government.

The opposition succeeded. Following its initial filing of the mark, the CAFF had, on the advice of the IPO, written to the Lord Chamberlain, seeking permission to use the Crown in its logo. The request was refused, but the Lord Chamberlain provided the CAFF with examples of alternative crowns, less similar to the Royal crown, which could be used. The CAFF adopted one of these other crowns. However, according to Mr Hearing Officer Salthouse, this was not the end of the matter. The use of the crown could still be blocked in case consumers would think that the crown depicted was the Royal crown. While consumers would not know what the Royal crown looked like, and so would not take the crown to indicate Royal patronage, the combination of the Union Jack, the crown and the words 'Armed Forces' (the armed forces being a state body) could mislead the average consumer into believing that the CAFF had Royal Patronage, or was an organ of the state. While the Lord Chamberlain had permitted the use, he did not have any expertise in trade mark issues, and did not have to consider the same criteria as the Hearing Officer.

The IPKat notes that this is a neat demonstration of the fact that, although the Lord Chamberlain's main concerns are to protect the property of the Queen, and also perhaps her reputation, the Registry maintains a role to protect consumers from being confused (although Merpel pipes up, hasn't the Registry limited this role with the changes to relative grounds examination, since it leaves it for trade mark owners to decide whether to oppose confusing marks?)

Is Barbie just a brat? Does the UK IPO hold the key?

Hello Dolly


The BBC (and lots of others) report that the trial which says the makers of Barbie, Mattel, take on MGA, the makers of the Bratz dolls in the US. The claim isn't that the Bratz are too similar to Barbie. Instead, it's that Mattel actually owns the rights to the Bratz dolls because their designer was working for Mattel at the time the dolls were thought up and then defected to MGA.

The IPKat notes that this one's a jury trial, just to add that little wildcard factor.

Does this describe a key?


The UKIPO thinks it does (see decision here). According to Mr Hearing Officer Pike, "In relation to the goods in question [“Metal keys, metal key blanks, metal locks (other than electric)”] it is my view that this mark will be perceived as no more than an outline of a key." The Hearing Officer drew attention to the fact that shops which offered a range of goods (rather than being specialist key cutters) might need to use such images to draw attention to the fact that they also cut keys.

The IPKat reckons that this is one of the relatively rare decisions where the need to keep certain marks free under s.3(1)(c) has actually made a difference. He's not sure though. Will consumers really see this as the outline of a key? Even if they do, isn't it just a part of a key, which gives it a sort of abstract quality?

Who says there ain't no F in justice?

Professor Ruth Anand, sitting as Appointed Person, has overturned the decision of Mr Hearing Officer Jones to refuse to register THERE AIN'T NO F IN JUSTICE for t-shirts (reported by the IPKat here).

As the Kat previously pointed out, the registrability of this mark hasn't turned on morality, but rather on distinctiveness and, according to the Appointed Person, the test for distinctiveness applied was too strict. The Kat can do not better than quote her conclusion:

The mark in suit THERE AIN’T NO F IN JUSTICE, has no meaning in relation to the goods, is grammatically correct and contains an element of irony in its double entendre. I believe it has the necessary capacity to distinguish in relation to tee shirts, sweatshirts and baseball caps in the same way as it has already been found by the Registry to be distinctive for other items of clothing, footwear and headgear. Like any other trade mark, if THERE AIN’T NO F IN JUSTICE is not used in accordance with its essential origin function then it will be liable to revocation under section 46 of the Act.

The IPKat finds it a little strange that one of the things that renders this mark registrable is the second, arguably immoral meaning, but then double entendres tend to be considered socially acceptable in the UK. He's also a little surprised that use of the word "ain't" is considered grammatically correct (though the IPKat wonders if that's a typo for "incorrect").

Fianna didn't Fail

The IPKat has come across a rare example of two major political parties working together with a single aim. The two parties in question are the Irish parties, Fianna Fail and Fine Gael and the aim was to defeat an application by a third party to register their names (and that of Sinn Fein) as UK trade marks.

The third party was a Mr Patrick Melly. He applied to register the three names as trade marks for fresh fruit, vegetables and salad, potatoes, tomatoes, malt, all the produce of Ireland, lemons, bananas in Class 31 and business administration, office functions in Class 35.

He then sent letters to the General Secretaries of Finna Fail and Fine Gael which read:

We are instructed by Fine Gael Limited, a Company registered in England under registration number 05473574. The Company has recently filed an application to register the name “Fine Gael” with the UK Patent Office and the European Trade Mark Office as a Trade Mark.

Our client is now planning to commence trading in Northern Ireland and the Republic in the name of Fine Gael Limited and intends to fully enforce its rights as the proprietor of the trademark. It would appear to our client that your party may inadvertently breach the terms of the trademark and it would not wish to see your client embarrassed by having to make any public retractions or apologies to our client. Our client would also not wish to put the party into a position whereby it is forced to change its name in some material way.

Our client would wish to enter into negotiations with your party for the grant of a license for the use of the trademark “Fine Gael” and would hope that this is of interest to your party.

Melly also appears to have written to the UK Treasury Solicitor indicating that if he did grant licences to the parties, he would place political conditions on them relating to the way in which public appointments were made.

The remarkable (though understandable on the state of the law) thing is that the Hearing Officer held that the parties could not oppose the registration.

Mr Geoffrey Hobbs QC reached the same argument on three of the four arguments put forward by the parties.

The party names could not benefit from Art.6bis protection as famous marks because there was no proof that the party names had been used as (unregistered) trade marks, nor was the evidence submitted sufficient to establish that they were well known in the UK.

The party names were also not protected by passing off as the parties had no goodwill in the UK.

The ban on registering deception marks also couldn’t help the parties. Mr Hobbs QC divided deceptive registration situations into two types: absolute and relative. Absolute covers deception as to what is being made available, relative covers deception as to who is making it available. The ban on registering deceptive marks was said to only be absolute deception. Concerns about who is making it available should be left to the relative grounds for the refusal of registration. The fear was that UK consumers would wrongly believe that the parties were using their name for fundraising purposes, which would be a relative type of deception, and consequently not covered under the absolute grounds.

However, the parties did succeed in showing bad faith. Although there is no ECJ case law on bad faith, the LCAP thought it legitimate to pay attention to the well-established Community law principle that “Community law should be interpreted and applied so as to confer no legitimacy on improper behaviour. Returning to the theme of absolutes and relatives, the LCAP found that the hearing officer was entitled to find that the relative position of the parties was not harmed, in that they would still be able to continue with their previous activities, even if Mr Melly’s application proceeded to registration. However, the hearing officer had paid insufficient attention to the absolute position of Mr Melly, who displayed a lack of integrity in threating to use the registrations in a way which would stop the parties from using their names or, more seriously (because the previous threat could probably be avoided with some good legal advice), by forcing the parties to distance themselves from his use of their names.

The IPKat finds it remarkable that the application for registration almost got away with registering the name of the major political parties in our very near neighbour. The parties didn’t help themselves here by failing to adduce evidence of recognition in the that went beyond mere assertions. Even if they had though, this wouldn’t have helped too much because the problem here was essentially lack of use as a trade mark. This put pay to both Art.6bis and goodwill for the purposes of passing off.

Adidas v H&M

Thanks to the many people who have sent in translations. You can find one example in the comments section on this post.

A couple of weeks ago, the IPKat warned readers that Adidas v H&M was on the way. This is a reference concerning the role of the need to keep certain marks free for other traders once a mark has acquired distinctiveness, and also on the role of consumers' perceptions that the mark is an embellishment.

The decision of AG Ruiz-Colomer is now out, but sadly only in languages that the IPKat isn't clever enough to speak. Still, for the benefit of French-speaking readers, he concludes as follows:

Au vu des considérations qui précèdent, je propose à la Cour de répondre au Hoge Raad de la façon suivante:

«En appréciant l’étendue de la protection d’une marque qui ne consiste qu’en un signe correspondant à une des indications visées à l’article 3, paragraphe 1, sous c), de la première directive 89/104/CEE, du Conseil, du 21 décembre 1988, rapprochant les législations des États membres sur les marques, mais qui a acquis un caractère distinctif par l’usage et qui a été enregistrée en tant que telle, il convient de tenir compte de l’intérêt général à ne pas restreindre indûment la disponibilité de certains signes pour les autres opérateurs offrant des produits ou services semblables.

En revanche, lorsque le signe évoqué était initialement dépourvu de caractère distinctif, mais qu’il l’a acquis postérieurement par l’usage, les droits du titulaire de la marque ne sauraient être examinés à la lumière de l’impératif de disponibilité.»

Can anyone help the more linguistically challenged?

STOP PRESS!!

Olivier Van Droogenbroek (Crowell & Moring, Brussels) has just emailed the IPKat to say:

"I read the Dutch version of the AG's opinion.

„Bij de bepaling van de beschermingsomvang van een merk dat wordt gevormd door een aanduiding die beantwoordt aan de omschrijving in artikel 3, lid 1, sub c, van de Eerste richtlijn (89/104/EEG) van de Raad van 21 december 1988 betreffende de aanpassing van het merkenrecht der lidstaten, maar door het gebruik onderscheidend vermogen heeft verkregen en is ingeschreven, moet rekening worden gehouden met het algemene belang, dat de beschikbaarheid van bepaalde tekens niet ongerechtvaardigd wordt beperkt voor de andere marktdeelnemers die soortgelijke waren of diensten aanbieden.

Wanneer ditzelfde teken daarentegen geen intrinsiek onderscheidend vermogen bezit, maar later onderscheidend vermogen heeft verkregen als gevolg van het gebruik dat ervan is gemaakt, kunnen de rechten van de merkhouder niet aan de vrijhoudingsbehoefte worden getoetst.”

This means

"When determining the scope of protection of a trade mark which consists of an indication corresponding to the description given by article 3 § 1 sub c of the First Directive 89/104/EEC of the Council of 21 December 1988 to approximate the laws of the Member States relating to trade marks, but which through use has obtained distinctiveness and is registered, one must take account of the general interest that the availability of certain signs is not unduly limited to other market players offering similar goods or services.

When on the contrary said sign has no intrinsic distinctiveness, but obtained distinctiveness later on as a result of its use, the rights of the trade mark holder cannot be tested to the freihaltebedurfnis".

Olivier adds: "Don't know if it makes sense".