More than a polite poke: Shagbook courts trouble in date with Facebook

This Kat has been a user of Facebook since it was cool to use at Oxford -- when it was considered impolite not to respond to a 'poke' within 8 hours. She has never ever heard of Shagbook until writing this post. However, as this Kat quickly discovered, Shagbook is an adult 'dating' website. On the UK homepage of the its website it states:

"Hook up with hot UK singles looking for hot Casual Dating on Shagbook! Search millions of UK singles looking to date for fun, and meet local members near you. Get a date now! Share pics, swap stories, and meet up tonight!"

And when this Kat investigated further, by trying to join the site (the things she does for the IP community!), she was greet with this text:

"We've got thousands of sexy playmates all waiting to be contacted for naughty chat, filthy fun and erotic encounters. To kick start the action we suggest you complete your profile with as much information as possible and add a recent sexy photo. You can then search to see which hot members get your heart racing. And don't forget to send out some cheeky winks or naughty messages to get things going!"

But what could it possibly be that would lead any modest Kat into such unsavoury investigations? Let us explain. On 24 May 2010, SNRG Ventures LLC (a company incorporated in Wyoming USA) applied to register the mark SHAGBOOK in the US in class 45 for computer dating services. The mark was accepted an advertised on 25 January 2011. A representative for SNRG Ventures told Mashable that the name shagbook.com was conceived 'all perfectly innocently': when SNRG's American owner was living in the UK, he 'referred to his little black book as his little "Shagbook" ... He was amused with the word ‘shag’".

Given the nature of the Shagbook website, it is not surprising that acceptance of the mark would be of concern to Facebook. Facebook filed a notice of opposition on 25 May 2011 based on two grounds: likelihood of confusion and dilution of a famous mark.

As to the likelihood of confusion, Facebook (at [12]) alleged that the SHAGBOOK mark was similar to its own registered FACEBOOK marks in respect of 'appearance, sound, meaning and commercial impression'. Facebook (at [15]) also alleged that SNRG adopted the SHAGBOOK mark 'with knowledge of and the intent to call to mind and create a likelihood of confusion with regard to, and/or trade off the fame of Facebook and the registered FACEBOOK marks'. Accordingly, Facebook (at [19]) alleged that the SHAGBOOK mark is likely to 'cause confusion, or to cause mistake or to deceive'.

As for dilution of a famous mark, Facebook (at [25]) argued that, as a result of the enormous publicity afforded to the FACEBOOK marks, they enjoyed 'a high degree of consumer recognition, are widely recognised by the general consuming public of the United States as a designation of Facebook's services, and are famous'. For Facebook (at [34]), 'SNRG's use of the SHAGBOOK mark for online adult dating and social networking services that provides a platform for users to connect with other users for casual sexual encounters tarnishes the famous FACEBOOK marks and harms the reputation of the FACEBOOK marks to Facebook's severe detriment'.

SNRG lodged its response to Facebook's opposition on 25 July 2011 and argued eight distinct defences. First, (at [35]) Facebook did not 'have the exclusive right to use the term “facebook” as the term was in common use in the English language well before Facebook began using the term in connection with its services. Second, Facebook's opposition should 'be denied under the equitable doctrine of unclean hands. This was because, according to SNRG, Facebook had 'engaged in trademark misuse and trademark bullying by abusively usingoppositions, litigation, and threats of the same to maintain a competitive market advantage'. Third, in the alternative (at [37]), if Facebook does have rights to use the term FACEBOOK, there was no tarnishment or dilution because consumers would have understood it to be a reference to a parody and as such authorised by the First Amendment. Fourth (at [38]), the FACEBOOK marks were 'highly diluted already by others using identical or very similar marks, including numerous uses of the term "book" in connection with online networking'. Fifth (at [39]), Facebook should be estopped from arguing that the two websites provide similar service on the basis that Facebook has made 'public statements that its website at facebook.com is not a dating site and in fact has removed individuals from the siteupon discovering that said individuals had been using the site as a “dating site” to meet newpeople for sexual encounters'. Sixth (at [40]), there is no likelihood of confusion between the services provided by both websites. Seventh (at [41]), the registered FACEBOOK should be cancelled or the specification restricted to the goods and services which Facebook actually provides, namely online social networking. Eighth (at [42]), as Facebook has used the term "facebook" in a generic sense, it is estopped from now claiming that it is not generic.

Both parties have indicated that they will vigorously defend their respective marks.

The IPKat will be watching developments with keen interest -- though he trusts that all the action will be in court, not under the covers.

Someone who finds the word 'shag' hilariously funny here
The shag: a poetical observation by Christopher Isherwood here
Popular shag on the floor here
Why shag is for dogs here and here

Merpel,ever modest, would like to make clear that she is not that kind of Kat!

Likelihood of confusion: too simple to leave to the lawyers?

Earlier this week the poll closed on a simple question: is there a likelihood of confusion between these two figurative marks? By a four-to-one majority, readers of this blog declared that, in their view, the marks were not likely to be confused with one another.  The final figures were as follows: 141 voters said yes, confusion was a likely outcome; 641 (that's nearly 82% of the total 782 votes case) said no.

The poll was inspired by the Kat's surprise at the ruling of the General Court in Case T-35/08 Codorniu Napa v OHIM - Bodegas Ontañon (ARTESA NAPA VALLEY), noted on Class 46 here by Laetitia Lagarde, that there was indeed a likelihood of confusion.  The General Court was not alone in its view, since it upheld the position taken both by the Opposition Division of the Office for Harmonisation in the Internal Market and by the Fourth Board of Appeal.

The IPKat, who was schooled on a primitive pre-harmonisation notion that likelihood of confusion, in common with likelihood of rain -- or indeed any other likelihood that was based on real-world considerations -- was a statement of probability that was based on real facts.  The modern fashion in Europe trade mark legal thinking is that, since "likelihood of confusion" is a term which forms part of the legislation which lawyers apply and interpret, its real significance is as a question of law, not fact.  You define a set of legal criteria which, if satisfied, constitute a legal state of likelihood of confusion; then you tick the boxes for the various criteria. If the right boxes are ticked, then "likelihood of confusion" exists, whether there is a likelihood of confusion or not.

The fact that the concept has been defined in such complex terms, in spite of the admirable brevity of the terminology used in the Community Trade Mark Regulation and the harmonisation directive, is both the result of too many appeals of points of law and the cause of too many more of them -- and even then the application of the facts to the law often produces decisions which are technically correct, as this decision appears to be, but nonsense in the world in which, for example, shoppers look at wine bottles with figurative marks on them such as these.

A consequence of results such as these, however technically correct they may be in legal terms, is that a lot of marks are excluded from registration even though, on a day-to-day basis, it is hard to imagine them causing anyone any problems in commercial terms.  Much is made of the claim that it is too hard to register new marks because of all the old marks that are already there.  If the existing marks took up less space, because more realistic criteria for likelihood of confusion are imposed, there would be less of a problem.

In a more sensible world, asks the mischievous Merpel, would it not be fun to dispense with the ritual of box-ticking and the pompous formality of pseudo-scientific formulations of legal tests of what the relevant consumer can generally determine at a glance?  Why not engage panels of wine-drinkers, chocolate eaters, washing detergent users, health-insurance seekers or whatever and simply ask them?

The subtle art of comparison: your chance to vote

Don't read the ruling in which a comparison of the two signs displayed here was undertaken (the IPKat isn't even giving its jurisdiction or citation yet). Just bear in mind the fact that they are intended for use on identical goods (let's say wines).

Take a look at these marks and bear in mind that

"... the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. In accordance with that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of marks and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, particularly the interdependence between the similarity of the trade marks and that of the goods or services covered ".

The 'public', for these purposes, consists of average consumers.

Do you consider, on the basis of the above, that there is a likelihood of confusion between the two marks? Please give your answer by clicking the "yes" or "no" button in the poll that appears at the top of the IPKat's side bar.

"IP Golden Oldies": The First Salvo

Following the call from our earlier blogpost, this Kat will be taking a crack at the first of what he hopes is a regular series of discussions on "IP Golden Oldies". At the suggestion of Bob Sacoff from the Patttishall law firm in Chicago, I have now had an opportunity to consider one of the classic articles on trad emark law, "Trade-Marks and the Monopoly Phobia", written by Beverly Pattishall and published in the Michigan Law Review in 1952. The gist of the Pattishall article was to argue elegantly against what he perceived as the shift from seeing trade mark rights based on the likelihood of confusion test to a monopolistic view that tended to view trade mark rights as innimical to competition.

Pattishall described the problem in the following words:

"Business concerns now often find, when in court seeking simply to prevent encroachments upon their individual identify, and thus, good will, that they are accused of striving to preserve unto themselves a monopoly in words and symbols which were and are the heritage of all."

The starkest expression of this view had been stated by Judge Jerome Frank in the Eastern Wine Case of 1943. There, Judge Frank wrote:

"The magna carta of competition of competition, Adam Smith's The Wealth of Nations, made it clear that the consumer's interests were to be the dominant aim of the competitive system ....But the legal protection of trade-names does not engender competition; on the contrary, it creates lawful monopolies, immunities from competition."

Indeed, Pattishall could have reached back to the middle of the 19th century. At that time, when Parliament was first considering the enactment of statutory protection for trade marks, the view was already being expressed, questioning the wisdom of providing an additional form of exclusionary protection for incorporeal rights. Concern over the alleged anti-competitive nature of trade marks was also highlighted by the U.S. Justice Department in connection with the legislation that ultimately took form as the Lanham Act in the U.S. in 1946.

In any event, Pattishall sought to refute this alleged tension between trade marks and free competition by a simple exercise of logical argument:

"Obviously, trade, as we know it, is impossible without individual identify; and equally obviously, identity in trade without trade-marks cannot be had. The avowed purpose of the anti-trust acts is to encourage competitive trade and to prohibit unfair monopoly. Thus, to affirm and further the doctrines of the anti-trust acts, but to inhibit the protection of trade-marks and other means of commercial identification, is patently contradictory."

Pattishall then went on the elaborate the nature of the likelihood of confusion test as the raison d'etre of trade mark protection and to explain how trademark protection, properly understood in this way, does not implicate any concern about any restraint on competition. He wrote:

"What the law need protect is the right to individual identity, not the word or mark which, used in a certain finite way, is the means for achieving it....In a trade-mark or similar case no court is required to make any academic determination of whether the mark involved is a part of the public property. It need have no fear that in protecting a trade-mark a monopoly may be granted that is public property so long as it adheres to the likelihood of confusion test." (Emphasis added.)

Pattishall devoted particular attention to what he perceived as the unfortunate use of certain terms, namely, "monopoly", "infringement", "property", and "ownership". In his view, reliance on these terms "only lead to error and contradiction in resolving the questions which arise in trade identification cases." The reason for this is that "there is actually involved no vesting of specific proprietary right in any word or mark in protecting trade identity within the limits of the area of likelihood of confusion." If there is any property right that is involved, "it is in the trader's good-will."

Towards the end of the article, Pattishall also addresses the issue of whether a given word is desirable because, in and of itself, it has value in promoting the sale of the product. If so, words threaten to imbue such trade marks with a potentially anticompetitive character. This is so, because they confer on the owner of such word not simply the right to have its product identified by the mark but also an exclusionary right to enjoy the inherent commercial drawing power of the mark.

Pattishall dismissed this claim in the following terms:

"But when it is comprehended that by the likelihood of confusion test, all that can be protected as to any trade-mark is its identification function, it is clear there can be no argument that, certain words being eminently desirable as trade-marks, a denial of their identifying use to the latecomer grants an unjust monopoly to the prior user."

From the distance of nearly 60 years fast-forward, what do we make of Pattishall's arguments?

First, Pattishall does not address the current of argument that had been raised by Frank Schechter in 1927 ("The Rational Basis of Trademark Protection") in favour of what we now recognize as trade mark dilution. That said, it can be said that Schechter was not proposing a proprietary view of trade marks, but rather an extension of the way that trade marks might function within trade in certain circumstances. On the "likelihood of confusion"/"proprietary monoply" spectrum, "dilution" is more in line with the former rather than the latter view of trade marks.

Second, one wonders how Pattishall would weave his arguments into a trade mark system that does not require use as a prerequisite for establishing the goods and services to be protected by the registration. The window of time within which goods and services may be protected even in the absence of actual use would seem to straddle the boundary between the two poles considered by Pattishall.

Third, there remains the "dirty little secret" of likelihood of confusion. By this I mean that a pure confusion-based system should ideally rest on a showing of actual confusion only. The "likelihood of confusion" test can be seen as extending the scope of trade mark protection in a way that argubably goes beyond what is strictly required. But a fuller consideration of this point is for another time.

When all is said and done, a consideration of the Pattishall article forces one to consider once again the first principles of trade mark law. In so doing, and in reminding us, in an elegant and tighly reasoned fashion, of the "likelihood of confusion" foundation of trademark law, he has left the trade mark profession with a continuing rich conceptual legacy.

Absolution for Absolute as dispute with Absolut settles

An article in The Guardian today, "Absolute Radio settles trademark fight with Absolut vodka", reports on the end of what might have been a long and entertaining court dispute between Absolute Radio and Swedish vodka brand Absolut. The vodka maker sued the UK music station for trade mark infringement and passing off but today's settlement, the terms of which are confidential, has scotched the chance of further proceedings.

Absolut, the jewel in the crown of V&S Vin&Sprit, was not best pleased when the Times of India Group purchased Virgin Radio and renamed it Absolute, being concerned that there would be a risk of confusion between the two. A spokesman for V&S has now expressed pleasure at the outcome of this dispute, "which will enable us to continue to develop the iconic Absolut brand without risk of confusion to the public." Absolute Radio is equally pleased, for obvious reasons.

While the terms of settlement are confidential, says the IPKat, it shouldn't be long before the public gets some idea of what they contain: all they have to do is watch carefully and see how the two brands market their respective goods and services nonconfusingly. Merpel adds, I wonder whether there's more to this matter than the report suggests: likelihood of confusion is something I associate with similar goods and services: it's not obvious to everyone, though, that radio stations and vodka can be termed "similar".

Make your own radio station here
Make your own vodka here

"Advantage Becker ..., er, Barbara, that is ..."

Having been quite puzzled both by the reasoning and the result of the Court of First Instance's decision in Case C‑51/09 P Barbara Becker, the IPKat is heartened by the Advocate General's Opinion in her appeal against the Court's decision that her full name is confusingly similar to her husband's surname.

Right: "Barbara Becker appeals to the Court of Justice" -- in more ways than one?

So what's the story? Barbara Becker, formerly married to tennis champion Boris Becker, applied to register her name as a Community word mark for a variety of goods in Class 9 (including, notes the amused Kat, automatic vending machines and mechanisms for coin operated apparatus; cash registers and calculating machines). Harman Int. Industries opposed, citing its earlier Community word mark BECKER ONLINE PRO and an application for the Community word mark BECKER, both for identical and similar goods in Class 9. The Opposition Division, taking the view that there was a likelihood of confusion between the signs at issue, upheld the opposition. Barbara Becker appealed successfully to the First Board of Appeal. Considering, for reasons of procedural economy, only the earlier word mark BECKER and the mark Barbara Becker for which registration was sought, the Board of Appeal merely found that visually and phonetically there was some degree of similarity between the signs at issue, given that another component, the first name Barbara, was placed at the start of the trade mark applied for. Conceptually the signs at issue were clearly distinct since the surname Becker was not the dominant and distinctive element of the trade mark applied for, on account of the fact that the relevant public would perceive the mark in its entirety, that is to say Barbara Becker, rather than as a combination of the first name and surname. It also noted that Barbara Becker had ‘acquired celebrity status’ in Germany, while the name Becker was generally recognised as an ordinary and widespread surname. Dilution under Article 8(5) of Regulation 40/94 was a non-starter too, since it requires such a degree of similarity between the marks at issue that the relevant public establishes a link between them, but this had not been satisfied.

Harman Int. Industries brought an action before the Court of First Instance, which held that the Board of Appeal had wrongly stated that the marks at issue were clearly distinct. Regardless of the greater or lesser differences between the two marks visually and phonetically, the Court rejected the Board of Appeal’s assessment of the relative importance of the component ‘Becker’ compared to the component ‘Barbara’ in the mark Barbara Becker based on the following reasoning.

First, the Court considered that, even if the perception of marks consisting of personal names can vary in the different countries in the Community, at least in Italy, consumers generally attribute greater distinctiveness to the surname than to the forename contained in trade marks: it followed that the surname Becker is likely to have attributed to it a stronger distinctive character than the first name Barbara in the mark Barbara Becker. Secondly the Court rejected the argument that the fact that Barbara Becker enjoys celebrity status in Germany as the former wife of Boris Becker does not mean that, conceptually, the marks at issue are not similar, as both marks refer to the same surname Becker. Indeed, such similarity was reinforced by the fact that, in part of the Community, the component ‘becker’ is likely to be attributed a stronger distinctive character than the component ‘barbara’, which is simply a first name. Thirdly the Court cited the judgment in Case C-120/04 Medion, where a composite mark, created by the juxtaposition of a component and the sign of another earlier registered mark, may be regarded as similar to that other mark where the latter has an independent distinctive role in the composite mark, although it is not the dominant component. Applying that criterion, the component ‘becker’ was a surname which is commonly used to describe a person, retaining an independent distinctive role in the mark Barbara Becker, which was sufficient for a finding of a likelihood of confusion. Finally, given that the parties did not deny that the goods at issue were identical or similar, and also taking account of the visual and phonetic similarities of the marks Barbara Becker and BECKER, there was a likelihood of confusion between the marks, even though the goods were directed at a public with a relatively high level of attention.

Barbara Becker then appealed to the Court of Justice and on Thursday, while the rest of us were sifting the entrails of its decision last Tuesday in Google France v Louis Vuitton, Advocate General Cruz Villalón quietly delivered an Opinion strongly critical of the Court of First Instance decision.

"56. It is abundantly clear from all of the foregoing that, if the Court in the judgment under appeal wished to base its reasoning definitively on the doctrine in Medion in order to assess the likelihood of confusion between the marks at issue,... it had to explain why exceptionally in that case it was necessary to dispense with the general requirement with respect to an application for a composite trade mark to examine the overall impression, bearing in mind, in particular, its distinctive and dominant components. In other words, it should have dealt with, in that context, the possible conceptual similarity between ‘barbara becker’ and ‘becker’, because in this case it is not necessary for the component ‘becker’ to have a dominant position in the mark as a whole.

57. However, none of that is to be found in the reasoning in the judgment under appeal. Instead, there is scarcely any consideration to be found other than that ... that ‘becker’ is a surname, which is not in dispute, and which would be hard to refute. It is on that basis that the Court directly concludes that ‘becker’ and ‘barbara becker’ are similar ... and, therefore that the Board of Appeal had erred in law...

58. ... the judgment now under appeal makes no observations or assessment of the surname Becker in order to determine whether it retains an independent distinctive role, without necessarily constituting the dominant element in the mark as a whole, to which the judgment in Medion refers, whereas, in the circumstances of the case, it was essential to carry out an assessment of the distinctive character of the earlier mark BECKER. Since the latter had enjoyed a high level of notoriety with the public, any other mark which sought to designate identical goods would have more difficulties in appropriating that surname.

59. To sum up, based on a generalised understanding, in part incorrect, of the combined effects of the judgments in Fusco and Medion, the judgment under appeal may give rise to the belief, wrong in itself, that, in principle, any surname which coincides with an earlier mark may effectively prevent registration of a composite mark including a first name and the surname in question on the basis of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

60. In other words, the result of adding a purported rule of principle derived from a previous judgment of the Court of First Instance to another from a judgment of the Court of Justice, appears to lead to a result which is almost inevitable, which is that the issue of conceptual similarity is practically superseded in as much as the Court failed to take account of all the facts of the case, as it was required to do in accordance with the case-law. Most particularly, it failed to examine the influence of the first name from a conceptual point of view of the mark Barbara Becker and the greater or lesser degree of distinctiveness of a mark composed of a single surname.

61. In the light of the foregoing, I consider that the judgment under appeal is vitiated by an error of law, and that the single ground of appeal should be upheld and the judgment set aside.

62. As the error detected may be remedied only by undertaking the assessments of fact referred to in the preceding paragraph, ... I propose that the case should be referred back to the General Court in order for the latter to undertake those assessments and to give another ruling consistent with them".

Bravo, says the IPKat -- now here's an Advocate General who speaks his mind and knows how to give the Court of First Instance -- now the General Court -- a sharp cuff around the ear when necessary. He will be a worthy successor to the sadly mourned Advocate General Ruiz-Jarabo Colomer whom he so speedily replaced.

More on Barbara Becker here

Another person with whom to confuse Barbara Becker here

IPKAT v IPAT: your chance to advise!

The IPKat is not just a commentator on IP-related matters; he also owns a little patch of intangible estate. This is his Community trade mark registration E8150286 for the word IPKAT, with a filing date of 11 March 2009 and a publication date of 25 May 2009. As a goodwill gesture to the entente cordiale, he opted for French as the mark's second language and the mark is registered for, among other things, "Education services; training services; arranging and conducting conferences, seminars, symposiums" in Class 41.

Artwork: there are various other IPATs around, it appears, but only one IPKat ...

OHIM has now notified the IPKat that his precious mark has been revealed as a possible obstacle following the Office's search in relation to this application to register the word mark IPAT. This application has been made by a Dutch company, AT Osborne BV, and it covers, among other things, "Education; provision of training; entertainment; sporting and cultural activities", also in Class 41. This application has a filing date of 4 April 2009 and was published on 9 November 2009.

At this point the IPKat has to decide: should he (a) oppose the application by AT Osborne BV on the ground that, given the similarity of the marks and the identity/similarity of the services, there is a likelihood of confusion among relevant consumers, (b) seek an assurance or undertaking from AT Osborne BV that it will limit its specification to reflect the services it actually provides or to exclude the services provided in the field of law, business, finance, media, telecommunications, information technology, intellectual property, property, management, banking, security and tax -- these being areas specified in the IPKat's registration; (c) do nothing because, while the marks are only one letter different and have some visual and possible aural similarity, the meaning of "IPKAT" as an "Intellectual Property Cat" results in there being so strong a conceptual contrast that the marks are insufficiently similar to be confused; (d) do nothing on the basis that there's no realistic likelihood of confusion; (e) adopt some other strategy?

At the top of the side bar of this weblog there's a poll. Do please let the IPKat know what you think he should do. He's ever so curious to see if there's a consensus. Merpel moans, why didn't you register me too? Aren't I worth anything?

Greek cocoa-milk marketers delta severe blow as Kraft steals the milk

The Court of First Instance of the European Communities gave its ruling today in Case T‑204/06, Vivartia ABEE Proïonton Diatrofis kai Ypiresion Estiasis, formerly Delta Protypos Viomichania Galaktos AE v Office for Harmonisation in the Internal Market, Kraft Foods Schweiz Holding AG intervening. This was Vivartia's second appeal against a decision to uphold an opposition to its application to register the above mark in Class 30 for 'milk with cocoa'. The opponent alleged that this mark was likely to be confused with its own earlier marks for various milky and chocolaty items in Classes 29 and 30, including the Community trade mark reproduced below.

The main issue was that of similarity of marks. The Opposition Division, Board of Appeal and Court of First Instance all concluded that they were sufficiently similar to produce a likelihood of confusion in the relevant consumer. On similarity of marks the Court had this to say:

"37 ... the mark applied for is composed of two components ‘milko’ and ‘ΔΕΛΤΑ’ [a Greek word, pronounced "delta"], a design representing a white milkmaid inside a green triangle against a background of red lines and coloured motifs surrounding the word ‘milko’. As regards the earlier mark, which was registered in black and white, that is composed of a single word element ‘milka’ inscribed in white letters on a dark rectangle. Because the rectangle is insignificant, the word ‘milka’ is the dominant element of the earlier mark.

38 First, as regards visual comparison, certainly the word element ‘milko’ occupies a more distinctive position in the mark applied for. That component is ... clearly the largest. Next, it is located at the top of the mark applied for. It is therefore more likely to attract the attention of the relevant public and to be easily noticed and remembered. That word element closely resembles the dominant word element ‘milka’ in the earlier mark. The Board of Appeal rightly states that both marks use a similar diagonal written representation for the words ‘milko’ and ‘milka’, and that the peculiarly stylised letter ‘m’ in both components is very similar. In addition, the vowels ‘o’ and ‘a’ of those components have practically the same shape.

39 Admittedly, the mark applied for contains a number of additional elements that distinguish it from the earlier mark. However, the Board of Appeal rightly states that the figurative element, comprising a milkmaid inside a green triangle against a background of red lines, will be perceived by the relevant public as ornamental. The figurative element of the milkmaid, particularly for milk products, is not, moreover, an especially original or fanciful representation likely to attract the attention of the average consumers of the goods in question.

40 As regards the ‘ΔΕΛΤΑ’ component, that occupies a position of clearly secondary importance in the mark applied for when taken as a whole. It is located at the very bottom of the mark and is much smaller than the word element ‘milko’ and even the figurative element of the milkmaid. In addition, the ‘ΔΕΛΤΑ’ component is difficult to understand for European consumers who are not familiar with the Greek alphabet, which is an additional reason for asserting that the relevant public will focus more on the word element ‘milko’.

41 Thus, the differences ... are not sufficiently great to overcome the similarity arising from the word ‘milko’. In the light of those circumstances, the Board of Appeal did not err ... in holding that the signs at issue were similar, when it compared them visually, taking each sign as a whole.

42 Second, as regards phonetic comparison, ... the words ‘milko’ and ‘milka’ are very similar phonetically. The addition of the ‘ΔΕΛΤΑ’ component cannot call into question that similarity. Even if the relevant public were to perceive ‘ΔΕΛΤΑ’ as a Greek word, a significant part of that public would not know how to pronounce that word, and will accordingly tend to omit it when referring to the mark applied for orally.

43 In that connection, the applicant’s submission that, if they are unable to read the ‘ΔΕΛΤΑ’ component correctly in Greek, most consumers will tend to pronounce its Latin equivalent ‘delta’ must be rejected. Such an argument is based on the premiss that those consumers are familiar with the capital letters ‘Δ’ and ‘Λ’ in the Greek alphabet. The goods covered by the marks at issue are everyday consumer goods and are therefore targeted at the general public. ... most European consumers do not know the Greek alphabet and that only a category of more erudite consumers would know it.

44 Therefore, the Board of Appeal’s finding ... that at least a significant part of the public will not pronounce the ‘ΔΕΛΤΑ’ component when referring to the signs orally, since it does not know how to, must be upheld.

45 Third, as regards conceptual comparison, the Board of Appeal correctly states that the word elements ‘milka’ and ‘milko’ are invented words and do not have any meaning in any of the official languages of the Community. Therefore, as the Board observes ..., the relevant public will associate the word element ‘milko’ with ‘milka’ because those words do not have any meaning.

46 In addition, for non-Greek-speaking consumers, the signs at issue do not have any conceptual differentiating elements that can counteract the visual and phonetic similarities. The ‘ΔΕΛΤΑ’ component cannot have the impact that the applicant wishes to have accepted on the conceptual comparison. ... a large proportion of European consumers will not be able to read or understand that word written in Greek. In those circumstances, that word element cannot be regarded as introducing a new concept that the consumer will associate with the mark applied for".

The IPKat really struggles with the bit that says "the relevant public will associate the word element ‘milko’ with ‘milka’ because those words do not have any meaning". To him, as a milk-drinking cat, milko and milka both mean "milk" with a redundant syllable at the end, just as Orlwoola suggests "all wool" with a redundant final syllable. Merpel says, it seems that Milko has been on the market in Greece for a while. Could it be that, it Milko is confusingly similar to Milka in Europe, Milka is confusingly similar to Milko in the cradle of democracy too?

Why cats shouldn't drink chocolate milk here and here

ADDENDUM: after the item above was posted, the IPKat received the following verses from a distinguished gentleman who sometimes supplies this blog with news and comments:

It appears not only curiosity
But also chocolate can kill a cat
Must admit I never intended
To feed you some of that.

I may feed you lots and lots
Of pure bull and crap
But from now on I'll keep
The bars safely under wrap ...

The Sabatiers cross swords over knife marks

The exotic named case of Rousselon Freres et Cie v Horwood Homewares Ltd [2008] EWHC 881 (Ch), which you can read here on BAILII, was a decision of Mr Justice Warren in the Chancery Division of the High Court for England and Wales.

Rousselon applied to invalidate two UK trade marks belonging to Horwood, claiming that there was a likelihood of confusion between Horwood's later marks (right) and three of its own earlier UK trade marks (two of which are shown below, the third being the word mark SABATIER). The bones of contention were mainly goods in Class 8, which included knives, and the word 'Sabatier' -- apparently a surname. The application also covered domestic utensils in Class 21.


In opposition proceedings before the Registry, the hearing officer said, at para.68:

"The words JUDGE and STELLAR do not "hang together" with SABATIER to make a meaningful whole, and even less so when presented in the logo form in which they have been registered. To my mind the positioning and difference in the style of font used and the "star" curve around the "S" suggests that SABATIER is a separate element. As far as I am aware, the words JUDGE and STELLAR are not descriptive of the goods, and by their relative positioning and size are the dominant, distinctive element. The corresponding graphical representations (judge's head and star) serve to emphasize the words but also contribute to the overall visual impact. However, these elements do not overwhelm SABATIER. The question is as put by Geoffrey Hobbs QC in his decision sitting as the Appointed Person in Raleigh International Trade Mark, [2001] RPC 202 is whether the later mark "captures the distinctiveness of the opponents' mark".

Rousselon appealed, arguing (among other things) that the hearing officer had erred in principle in holding that there was no likelihood of confusion, having essentially accepted that the word 'Sabatier' retained an independent distinctive role in Horwood's trade marks.

Warren J allowed the appeal. In his view

* "the actual test ... remains whether, because of similarity of marks, there is a likelihood of confusion. ... It does not say that a composite mark which contains an earlier mark will always carry a likelihood of confusion; rather, it says that there is such likelihood if the earlier mark has an independent distinctive role. However, the assessment whether the earlier mark does have such a role is ... something which has to be decided before answering the question whether there is a likelihood of confusion. To elide the question of an independent distinctive role with the question of the likelihood of confusion runs the risk of answering the former question by first providing an answer to the latter. That would be to answer the question "Is there a likelihood of confusion" with the answer "Yes, if there is a likelihood of confusion" when the answer should be "Yes, if the earlier mark retains an independent distinctive role".

* in this case, the word 'Sabatier' retained an independent distinctive role in Horwood's trade marks. Although the hearing officer had not stated that as a conclusion, it was, in the circumstances, a conclusion which he must have considered to be correct. Accordingly, it was not possible to maintain that there was no likelihood of confusion between Rousselon's 'Sabatier' mark and Horwood's marks;

* this being so, the hearing officer had erred in principle. His error was a significant one which vitiated the basis on which he had formed the view which he had. The court would substitute its own decision to the effect that the applications made under s 47(2) of the Act succeeded so far as the registration in respect of class 8 was concerned.

The IPKat, who remained confused by the marks right through the judgment and hopes he's got them the right way round in this note, laments the over-intellectualisation of the test of likelihood of confusion of composite marks in the wake of the ECJ's decision in Case C-120/04 Medion v Thomson Multimedia (noted by the IPKat here). This judgment ran to over 100 paragraphs and requires a good deal of effort to follow. No wonder hearing officers run into trouble. Merpel says, but how will consumers know whether they are likely to be confused or not if they don't have a lawyer to tell them?

I'm right ... but you're not wrong

Sitting yesterday as a Deputy Judge of the Chancery Division (England and Wales), Daniel Alexander QC had to address a tricky issue in Digipos Store Solutions Group Ltd v Digi International Inc, brought to the IPKat's attention by LexisNexis Butterworths' subscription-based service once again.

Digi was the proprietor of a UK trade mark consisting of a stylised version of the word 'Digi' for 'microcomputer hardware and microcomputer software programs for use in communications between digital electronic devices', as well as the word mark DIGI INTERNATIONAL for 'microcomputer hardware and software for data communications'. Digipos subsequently applied to register the word mark DigiPos for 'computer hardware, computers, servers, point-of-sale terminals, communications and networking systems, keyboards, display terminals, printers, proofing and encoding apparatus, document scanners, bar code scanners, computer software for use in the retail industry'. Digi opposed, maintaining that on account of the similarity of the respective marks and the identicality of the respective goods, there was a likelihood of confusion among the relevant consumers.

Before the Trade Mark Registry the hearing officer upheld the opposition in its entirety: used as a prefix, DIGI would not be taken to be descriptive by the average consumer but was distinctive -- and DigiPos was confusingly similar.

DigiPos appealed, arguing that the hearing officer had erred. Not only was required of him that he assess whether the earlier mark enjoyed an enhanced distinctiveness, and therefore an enhanced protection, as a result of its use -- he also had to assess the opposite: were there were any features of the earlier mark that diminished its distinctiveness [ie, such as the fact that it was the first five letters of the wholly descriptive word 'digital'] and therefore reduced the scope of the protection to which it was entitled.

Daniel Alexander QC dismissed the appeal. In his view

* before the court could interfere with the hearing officer's decision, it had to be satisfied that there had been a distinct and material error of principle in the decision in question, or that the hearing officer was clearly wrong. In undertaking the global assessment of the likelihood of confusion where an earlier mark, or an element of it, was allegedly descriptive of goods or services or otherwise weak, he to take into account the extent to which the sign had a lesser capacity to distinguish as well as whether it had a greater capacity to distinguish.

* alleged errors that consisted of wrongly assessing similarities between marks or attributing too much weight to certain factors when applying a multifactorial global assessment were not errors of principle that entitled the court to interfere with the decision.

When considering and contrasting the characteristics of two marks, an element of the earlier mark might be distinctive in circumstances in which it was not distinctive in the later one. If, in that latter context, that element unlikely to be taken to denote trade origin, this factor had to be taken into account in making the global assessment, since it was an aspect of the lesser capacity to distinguish.

* the fact that a descriptive element had a lesser capacity to distinguish should be taken into account in the global assessment by recognizing that the average consumer was more likely to consider that a descriptive element was not being used, in the mark applied for, to identify the origin of the goods in question. Such a consumer was thus less likely to be confused as to the origin of goods bearing the mark.

* while it was handy to talk of the scope of protection of a weak earlier mark being reduced, that was neither a proposition of law nor a blueprint for assessment. A weak mark, in practice, was likely to have a reduced scope because there was a lower likelihood that other marks would be confused with it, if all that the respective marks had in common was the descriptive element.

* in this particular case, even though the court would have reached a different conclusion, there was nothing in the hearing officer's decision to allow the court to interfere with it. He did not fail to take account of the potential weakness of the 'Digi' element or any of the factors that he needed to consider. Further, it could not be said that he had failed to evaluate those factors of had done so in a way that was plainly erroneous.

Fair enough, says the IPKat, you don't have to agree with the decision so long as you can verify that the grounds on which it was reached were not plainly wrong--but imagine how galling it must be for a litigant to be told that, had his application started at the appellate level and in the Registry, he would have been successful. Merpel adds, the relationship between "digi" and "digital" is rather reminiscent to that between "intel" and "intelligent", don't you think?

How another Alexander solved a knotty problem here
Knotty problems for cats here

If you should meet a crocodile...

You probably haven’t been able to miss coverage of Lacoste’s unsuccessful attempt to oppose a dental practice’s application to register a crocodile device, together with the words ‘The Dental Practice’, but the reasoning of the decision demands a closer look.

The first thing to note is that this was an Art.5(2)(b) opposition, i.e. Lacoste was claiming similarity of goods. It seems that they have a registration for ‘medical services’ in Class 44, which the IPKat finds a little disturbing. Ever the dapper feline, he usually tries not to confuse his dentist with his tailor.

The Appointed Person, Professor Ruth Annand, was asked by Lacoste to find that the words ‘The Dental Practice’ were wholly descriptive, and therefore should have been ignored in comparing the marks, leaving a crocodile for crocodile comparison.

Professor Annand found that this was not the correct approach. One has to distinguish between descriptiveness and similarity of marks. In assessing similarity, the marks must be compared overall. Distinctive elements of a mark will not make it more or less similar to other marks, although the distinctiveness of the mark as a whole may expand its scope of protection.

It was true that the words in the applied for mark were descriptive. Ordinarily, but not inevitably, descriptive elements will not be dominant. However, the Hearing Officer was entitled to find in this case that they were dominant. This, together with the differences between the two crocodile devices, meant that the Hearing Officer was entitled to find that the two marks, when taken as a whole, were not similar.

The IPKat wonders if the Appointed Person has gone a bit far here. Granted, the ECJ has told us to look at marks as a whole, but it has also told us that we can take their distinctive and dominant elements into account. It must be a very rare case where a descriptive term will also be dominant. Having said that, she was exercising what is essentially a reviewing function, and so once she found that in some, probably rare, cases the descriptive element could dominate, it was hard for her to find that the Hearing Officer’s decision was clearly wrong. What’s missing though from the decision is the underlying issue – can a company really claim a monopoly in all depictions of a particular animal?