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.

Be circumspect about your salami

Back in May, as readers of this weblog will surely remember, Advocate General Eleanor Sharpston QC gave her Opinion to the Court of Justice of the European Communities in Case C‑446/07 Alberto Severi, in his own name and representing Cavazzuti e figli SpA, now known as Grandi Salumifici Italiani SpA v Regione Emilia-Romagna, a reference for a preliminary ruling from the Tribunale Civile di Modena, Italy. Well, earlier this month -- on 10 September -- the Court gave its ruling here.

Right: Salame Felino, straight from the Museo del Cibo website

To recap: Felino is a small town in the Emilia-Romagna region of Italy. Cavazzuti (now Grandi Salumifici Italiani SpA -- GSI for short) makes local salami sausages which it sells as ‘Salame Felino’ and/or ‘Salame tipo Felino’ [Feline salami? Salami fit for a Kat?]. Since 1970 it made this salami around 50 km down the road in nearby Modena. In May 2006 the region of Emilia-Romagna imposed an administrative penalty on GSI for using the name ‘Salame tipo Felino’ on its labelling in a way that was misleading to consumers. The region took the view that GSI infringed Article 2 of Legislative Decree 109/92, which transposed Article 2 of Directive 2000/13 into national law in Italy [essentially: thou shalt not mislead consumers by mislabelling goods]. At the operative time, the term ‘Salame Felino’ was neither registered as a Protected Designation of Origin (PDO) nor as a Protected Geographical Indication (PGI). An application had however been made to protect ‘Salame Felino’ as a PGI.

GSI applied to the Tribunale Civile di Modena to have the administrative penalty overturned on the grounds that ‘Salame Felino’ was generic and had been used for a number of years and in good faith outside the municipality of Felino, including in respect of a collective trade mark. The Tribunale Civile stayed the proceedings and referred the following questions to the Court of Justice:

‘1. Must Articles 3(1) and 13(3) of Regulation ... 2081/92 (now Articles 3(1) and 13(2) of Regulation ... 510/06), read with Article 2 of Legislative Decree 109/92 (Article 2 of Directive 2000/13/EC), be interpreted as meaning that the name of a food product containing geographical references, for which, at national level, the submission of an application to the Commission for registration as a protected designation of origin (PDO) or a protected geographical indication (PGI) within the meaning of those regulations has been “rejected” or blocked, must be considered generic at least throughout the period for which such “rejection” or blocking remains effective?

2. Must [the same provisions] be interpreted as meaning that the name of a food product which is evocative of a place, but not registered as a PDO or PGI within the meaning of those regulations, may be legitimately used in the European market by producers who have used it in good faith and uninterruptedly for a considerable period before the entry into force of Regulation ... 2081/92 (now Regulation ... 510/06) and in the period following the entry into force of that regulation?

3. Must Article 15(2) of the First Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks be interpreted as meaning that the proprietor of a collective mark for a food product containing a geographical reference is not allowed to prevent producers of a product having the same characteristics from using to describe it a name similar to that contained in the collective mark, where those producers have used that name in good faith and uninterruptedly over a period of time considerably pre-dating the registration of that collective mark?’

Now we have our answer. Said the Court, in its inimitable fashion:

"1. Articles 3(1) and 13(3) ... must be interpreted as meaning that the designation of a foodstuff containing geographical references, which has been the subject of an application for registration as a protected designation of origin or a protected geographical indication within the meaning of Regulation No 2081/92, as amended by Regulation No 2796/2000, cannot be regarded as generic pending the possible forwarding of the application for registration to the Commission of the European Communities by the national authorities. A designation cannot be presumed to be generic, within the meaning of Regulation No 2081/92, as amended ..., for as long as the Commission has not taken a decision on the application for registration of the designation, as the case may be, by rejecting it on the specific ground that that designation has become generic.

2. Articles 3(1) and 13(3) ... must be interpreted as meaning that the designation of a foodstuff containing geographical references, which is not registered as a protected designation of origin or a protected geographical indication, may legitimately be used, on condition that the labelling of the product so named does not mislead the average reasonably well informed, observant and circumspect consumer. For the purpose of assessing whether that is the case, national courts may have regard to the length of time during which the name has been used. By contrast, any good faith on the part of the manufacturer or retailer is irrelevant in that regard".

The Court agreed with AG Sharpston that the third question was inadmissable: at para. 68 it said:

"... the question whether the proprietor of a collective trade mark relating to a foodstuff and containing a geographical reference identical to the designation at issue in the main proceedings may oppose the use of that designation is manifestly irrelevant to the resolution of the dispute in the main proceedings and must for that reason be declared inadmissible".

The result, the IPKat considers, is quite cheerful for purveyors of the contentious sausage. While the Salame Felino cannot be deemed generic, or indeed anything else, until the Commission have sniffed it and passed judgment, Severi and his merry men can carry on selling it so long as "the average reasonably well informed, observant and circumspect consumer" is not misled by its appellation ['Misled' here is an interesting concept, says Merpel. Most local Italians won't be misled because they are circumspect about their salamis; most non-locals aren't materially misled unless they assume that salami from Felino and Modena respectively are different entities].

Salame Felino here; Felino here; Fellini here; Fellaini here. Confused yet?

Good faith irrelevant when selling non-misleading sausages

The highest courts of the European Union have this week been commemorating National Sausage Week.  On Wednesday the Court of First Instance gave its verdict on an appeal against OHIM's refusal to allow registration of a very pretty pretzel configuration of five sausages (see earlier post here). Yesterday, moving the focus from German to Italian sausages, Advocate General Eleanor Sharpston QC gave her Opinion to the Court of Justice of the European Communities in Case C‑446/07 Alberto Severi, in his own name and representing Cavazzuti e figli SpA, now known as Grandi Salumifici Italiani SpA v Regione Emilia-Romagna, a reference for a preliminary ruling from the Tribunale Civile di Modena, Italy.

What was this reference all about? Felino is a small town in the Emilia-Romagna region of Italy. Cavazzuti (now Grandi Salumifici Italiani SpA -- GSI for short) makes local salami sausages which it sells as ‘Salame Felino’ and/or ‘Salame tipo Felino’. Since 1970 it has produced this salami around 50 km down the road in nearby Modena. In May 2006 the region of Emilia-Romagna imposed an administrative penalty on GSI for using the name ‘Salame tipo Felino’ on its labelling in a way that was misleading to consumers. The region took the view that GSI had infringed Article 2 of Legislative Decree 109/92, which transposed Article 2 of Directive 2000/13 into national law in Italy (essentially: thou shalt not mislead consumers by mislabelling goods). At this crucial phase of Italian history the term ‘Salame Felino’ was neither registered as a Protected Designation of Origin (PDO) nor as a Protected Geographical Indication (PGI). An application had however been made to protect ‘Salame Felino’ as a PGI.

GSI applied to the Tribunale Civile di Modena to have the administrative penalty overturned on the grounds that ‘Salame Felino’ was generic and had been used for a number of years and in good faith outside the municipality of Felino, including in respect of a collective trade mark. The Tribunale Civile stayed the proceedings and referred the following questions to the Court of Justice:

‘1. Must Articles 3(1) and 13(3) of Regulation ... 2081/92 (now Articles 3(1) and 13(2) of Regulation ... 510/06), read with Article 2 of Legislative Decree 109/92 (Article 2 of Directive 2000/13/EC), be interpreted as meaning that the name of a food product containing geographical references, for which, at national level, the submission of an application to the Commission for registration as a protected designation of origin (PDO) or a protected geographical indication (PGI) within the meaning of those regulations has been “rejected” or blocked, must be considered generic at least throughout the period for which such “rejection” or blocking remains effective?

2. Must [the same provisions] be interpreted as meaning that the name of a food product which is evocative of a place, but not registered as a PDO or PGI within the meaning of those regulations, may be legitimately used in the European market by producers who have used it in good faith and uninterruptedly for a considerable period before the entry into force of Regulation ... 2081/92 (now Regulation ... 510/06) and in the period following the entry into force of that regulation?

3. Must Article 15(2) of the First Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks be interpreted as meaning that the proprietor of a collective mark for a food product containing a geographical reference is not allowed to prevent producers of a product having the same characteristics from using to describe it a name similar to that contained in the collective mark, where those producers have used that name in good faith and uninterruptedly over a period of time considerably pre-dating the registration of that collective mark?’

Yesterday AG Sharpston recommended that the Court should answer the first two questions referred by the Tribunale Civile di Modena as follows:

(1) [The relevant provisions] must be interpreted as meaning that the name of a food product containing geographical references, for which an application has been made for registration as a protected designation of origin or a protected geographical indication within the meaning of those regulations, cannot be assumed to be generic unless and until the application has been rejected by the Commission on the ground that the name has become generic.

(2) The same provisions, read with Article 2 of Directive 2000/13/EC ... on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs, must be interpreted as meaning that the name of a food product which is evocative of a place, but not registered as a protected designation of origin or a protected geographical indication within the meaning of those regulations, may legitimately be used provided that the name is not used in a way which is likely to mislead the average reasonably well-informed, observant and circumspect consumer. In assessing whether that is the case, national jurisdictions may have regard to the length of time during which the name has been used. The good faith (or otherwise) of the producer is, however, irrelevant".

What, the Kats hear you ask, happened to the third question? AG Sharpston deemed it inadmissable:

"The Italian Government argues that the third question is inadmissible because the case before the national court does not concern collective trade marks. The region of Emilia-Romagna neither holds the mark, nor alleges that GSI infringed it. Moreover, the Italian Government suggested at the hearing that the referring court was concerned only with whether GSI’s labelling was likely to mislead the consumer, and that despite the APTSF’s intervention in the proceedings, an allegation that a collective trade mark had been infringed was no part of the case before the national court.

72. The Court may decline to answer a question referred for a preliminary ruling if it has no relation to the actual facts of the main action or to its purpose.  The third question referred asks whether Directive 89/104 might provide another basis for preventing GSI from using the name ‘Salame Felino’. However, the administrative penalty contested in the main proceedings was based solely on an alleged infringement of the national provisions transposing Article 2 of Directive 2000/13.

73. Although the administrative penalty noted that ‘Salame Felino’ is a registered mark, that was in the course of establishing that GSI’s use of ‘Salame tipo Felino’ was misleading to consumers. Similarly, GSI referred to the use in good faith of the name ‘Salame Felino’ by traders outside the municipality of Felino in relation to a collective trade mark as part of its argument that its use of the name on labelling did not mislead consumers.

74. The absence of any allegation that there has been an infringement of a collective trade mark indicates that the question of whether a holder of a collective trade mark may oppose the use in good faith of a name similar to that found in the collective mark is irrelevant to the central issue before the national court, namely, the circumstances in which a company is likely to mislead consumers by the use of a geographical name on the labelling of its products.

75. The third question is therefore inadmissible".

The IPKat will be watching this one with interest, since there isn't what you'd call a large volume of jurisprudence in Europe on the interface between trade marks, collective marks and geographical indications and whatever happens in the final ruling will affect both strategic thinking and porfolio development issues involving the exploitation of terms where that exploitation is not coextensive with the area they signify. Merpel and Tufty chime in, Salame Felino sounds like an exotic cat!

Salame Felino here

Make your own salami here

Health risks of sausages here, here and here

Sausage that intellectual property lawyers find indigestible here