Plumber cleared of internet harassment

This Kat is always amazed at the opportunities, both for good deeds and for bad deeds, that are available due to advances in internet technology. It is on this basis that she was intrigued by the proceedings against Ian Puddick, a plumber from Enfield, North London, in Westminster Magistrates Court concerning claims of harrassing his wife Leena's millionaire lover, Timothy Haynes, over the internet.


Mrs Puddick met Mr Haynes when she joined the global insurance firm Guy Carpenter as a secretary where he worked as a director in 1997. The affair began after a Christmas party in 2002 and would continue for several years. It was alleged that Mr Haynes sent Mrs Puddick some 30 to 40 text messages a day. Some were sexually explicity such as 'Where do you want to have sex next — in the office, al fresco, at the flat, or all three? You greedy girl'. Others said Mrs Puddick was 'the most desirable girl in the world' and 'reassuringly expensive' because of her lavish taste in champagne.


The affair came to light when Mr Puddick discovered one such text whilst he was sunbathing in his garden and a message came through on Mrs Puddick's phone. The message was from Mr Haynes and included graphic references to a sex act he had performed on Leena, ­accompanied by a picture of him performing a sex act on himself. The pictures were accompanied by the words 'You are such a sensual girl'.

Mr Puddick decided publicise the affair. He contacted Mr Haynes’ boss, his clients and his wife to claim that Mr Haynes had abused his expense account to ­seduce Mrs Puddick. Next, Mr Puddick even spoke at Hyde Park’s Speakers’ Corner in London and camped for seven days outside ­Parliament to tell his story to anyone who would listen. Still enraged, Mr Puddick flooded the internet with evidence of the affair. He created numerous websites with his allegations against Mr Haynes (including videos and excerpts from Mr Haynes’ love letters). He detailed the affair on Twitter and FaceBook and created a fake page on LinkedIn in the name of Mr Haynes so that potential clients would learn of Mr Haynes' behaviour.


Was this harassment?

In the UK, the Protection of Harassment Act 1997 provides both civil and criminal remedies for harassment. In relation to civil provisions, section 1(1) provides that a person must not pursue a course of conduct (a)which amounts to harassment of another, and (b)which he knows or ought to know amounts to harassment of the other. According to section 1(2), the person whose course of conduct is in question ought to know that it amounts to harassment of another if a reasonable person in possession of the same information would think the course of conduct amounted to harassment of the other. In relation to the criminal provisions, section 2(1) states that a person who pursues a course of conduct in breach of section 1 is guilty of an offence. Under section 2(2), a person guilty of an offence under this section is liable on summary conviction to imprisonment for a term not exceeding six months, or a fine not exceeding level 5 on the standard scale, or both. These provisions are sufficiently wide to cover posting on the internet and 'anti harassment' injunctions have been granted in a number of cases to restrain the publication of material on Wikipedia and Facebook.


Ultimately Mr Puddick was charged with two counts of harassing Mr Haynes and his family on Facebook and Twitter under the criminal provisions in the 1997 Act. After a three day trial in Westmister Magistrates Court, District Judge Elizabeth Roscoe delivered a verdict of not guilty. The judge ruled Puddick's actions did not form a 'course of conduct' and dismissed the charges.

In an interview, Mr Puddick told the Sunday Mirror: 'Haynes abused his position of authority to sleep with my wife, and then he thought he could use his money and influence to bully me all the way to jail. Well this is a ­victory for the little guy over the bullies and it is a victory for free speech'.

The IPKat ponders that in pursuing Mr Puddick for harassment, Mr Haynes gave his philandering such public exposure that it would otherwise have achieved. Indeed, Mr Haynes said in court that 'I think most of the country - thanks to the internet - is aware I had an affair'.

Merpel poses the question: would you have used the internet like Mr Puddick if you found yourself in similar circumstances?

BGH decides in Opel toy car case ("Opel-Blitz II")

Yes, it is that Opel/Autec case again!

On 14 January 2010 the German Federal Supreme Court (Bundesgerichtshof) has handed down its eagerly awaited decision in the Opel replica car decision (case reference I ZR 88/08 – Opel-Blitz II of 14 January 2010). While the full decision is not yet available, the Bundesgerichtshof has published a press release concerning this case (press release No. 9/10 of 15 January 2010 ) which the IPKat has summarised and translated below.

The first civil senate (I. Zivilsenat) has decided that a car manufacturer cannot rely on its trade marks rights in order to prevent the distribution of toy model cars that are scale models of the original cars bearing the original car manufacturer's trade mark on the relevant space. The claimant, Adam Opel GmbH, was the proprietor of a device trade mark for the so-called "Opel-Blitz" covering motor vehicles and toys. Opel tried to prevent the distribution of toy cars manufactured by the defendant which were copies of Opel's Astra V8 Coupé car in a reduced scale including the Opel-Blitz device mark affixed to their grille.

The court of first instance, the Regional Court (Landgericht) Nürnberg-Fürth had referred this matter to the ECJ for a preliminary ruling. The ECJ (C-48/05) ruled that "the affixing by a third party of a sign identical to a trade mark registered for toys to scale models of vehicles cannot be prohibited under Article 5(1)(a) of the directive unless it affects or is liable to affect the functions of that trade mark." In its decision the ECJ further took the view that it was "... for the referring court to determine, by reference to the average consumer of toys in Germany, whether the use at issue in the main proceedings affects the functions of the Opel logo as a trade mark registered for toys." The relevant question hence was whether the relevant consumers would interpret the logo device affixed on the model toy as a reference of trade origin and believe that the model car was manufactured by the claimant or a economically linked undertaking.

In light of the ECJ decision, the Regional Court (Landgericht) Nürnberg-Fürth dismissed the claimant's case. The Nürnberg-Fürth court (case reference 4HK O 4480/04 of 11 May 2007) decided that the relevant consumer would regard the logo affixed on a scale model car's grille merely as "part of the model car" and would not attribute the logo to the manufacturer of the original car in the sense of a reference of trade origin or believe that there was an economic link or a licence agreement in place between the toy car manufacturer and the manufacturer of the original car. The court of appeal (OLG Nürnberg, case reference 3 U 1240/07 of 29 April 2008) as well as the Bundesgerichtshof confirmed this view.

In its 14 January 2010 decision the Bundesgerichtshof denied an infringement of the claimant's Opel-Blitz mark. The requirements of trade mark infringement were met insofar as the affixing of the Opel-Blitz device on the defendant's toy car constituted use of a sign that was identical to the claimant's mark on identical goods (toys). However, this use did not affect the main function of the mark, which is indicating the trade origin of the goods (here: toy car), nor did this use affect any other functions of the trade mark because the relevant consumer would merely regard the Opel-Blitz device affixed on the defendant's model car as an exact copy of the mark that the original car had affixed on exactly the same space. Consequently, the Opel-Bliz mark would only be seen as a reproduction of a detail of the original car. The court stressed that the relevant consumers would not regard it as a reference to the trade origin of the toy car.

Insofar as the claimant's mark was registered for motor vehicles, the goods concerned (model cars and motor vehicles) were not similar so that there was no trade mark infringement based on a likelihood of confusion.

Finally, there was also no infringement of a mark with a reputation because there was no unfair advantage taken of or detriment caused to the repute of the claimant's mark insofar as it was registered for motor vehicles.

IPKat comment: The outcome was not really much of a surprise given the German consumers' perspective when it comes to model cars and may I say -- based on my personal experience as a German consumer -- it was the right decision. However, this is an interesting case that perhaps may have been decided differently in a different country taking into account "local" customs and views relating to (toy) cars.

The Bundesgerichtshof's press release can be retrieved here (in German). The full decision will (eventually) be available via this link (in German).

Now we know: Austria is as significant as bits of Benelux

The IPKat, pink-faced and fluffy-tailed after a day away from the smoke of Central London, has just encountered Case C‑301/07, PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH, today's ruling by the Court of Justice of the European Communities on a reference for a preliminary ruling from the Oberster Gerichtshof (Austria) some two and a quarter years ago.

The facts giving rise to the reference were these. Ever since 2001 PAGO owned a Community figurative trade mark for fruit drinks and fruit juices. The essential element of this mark was the representation of a green glass bottle with a distinctive label and lid. In Austria PAGO sold a fruit juice called ‘Pago’ in exactly those bottles, this mark accordingly being widely known there.

Tirolmilch, a local Austrian competitor, sold a fruit and whey drink called ‘Lattella’ there. That drink, initially sold in cartons, was subsequently packaged in glass bottles which in some respects resembled those in PAGO's trade mark. In its advertising, Tirolmilch used a representation which also showed a bottle next to a full glass. PAGO sued Tirolmilch for trade mark infringement and sought interim relief to stop Tirolmilch promoting, offering for sale, marketing or otherwise using its drink in its bottles and from advertising by means of a representation of the bottles together with a full glass of fruit juice. The Handelsgericht Wien granted the application, but on appeal PAGO’s application was dismissed by the Oberlandesgericht Wien. PAGO then appealed to the Oberster Gerichtshof, which felt there was no likelihood of confusion between Tirolmilch's bottles and PAGO’s trade mark since the labels on the bottles read respectively ‘Pago’ and ‘Lattella’, both of which were widely known in Austria.

PAGO however claimed that Tirolmilch was taking unfair advantage of the reputation of its mark in Austria without due cause. In this context the Oberster Gerichtshof was unsure what the words ‘has a reputation in the Community’ in Article 9(1)(c) of Regulation 40/94 actually meant in the light of the fact that PAGO's mark only had a reputation in Austria. Accordingly

that court stayed the proceedings and referred the following questions for a preliminary ruling:

‘1. Is a Community trade mark protected in the whole Community as a “trade mark with a reputation” for the purposes of Article 9(1)(c) of [the regulation] if it has a “reputation” only in one Member State?

2. If the answer to the first question is in the negative: is a mark which has a “reputation” only in one Member State protected in that Member State under Article 9(1)(c) of [the regulation], so that a prohibition limited to that Member State may be issued?’

Today the Court (Second Chamber) answered as follows:

Article 9(1)(c) ... must be interpreted as meaning that, in order to benefit from the protection afforded in that provision, a Community trade mark must be known by a significant part of the public concerned by the products or services covered by that trade mark, in a substantial part of the territory of the European Community, and that, in view of the facts of the main proceedings, the territory of the Member State in question may be considered to constitute a substantial part of the territory of the Community.

In other words, the IPKat says, the Court has said "why didn't you read Case C‑375/97 General Motors [1999] ECR I-5421 before troubling us?" After all, if even a significant part of Benelux counts as a substantial part of the European Union's territory, the whole of Austria should be treated the same way. Merpel's still sulking because she wanted to hear some juicy arguments concerning the second question, which is much more fun.

Here's a Pago you won't be drinking ...

... but Pogo's in the drink here

Excited and rapid response from Catch Us If You Can !!! here

PAGO: is Austria "substantial"?

This morning in the Court of Justice of the European Communities Advocate General Eleanor Sharpston QC delivered her Opinion in Case C‑301/07 PAGO International GmbH v Tirol Milch registrierte Genossenschaft mbH, this being a reference for a preliminary ruling from the Oberster Gerichtshof, Austria.  PAGO owns a Community trade mark for, inter alia, fruit drinks and fruit juices. This mark includes a representation of a green glass bottle which Pago had used for a number of years in marketing, plus a distinctive label and cap next to a full glass of fruit drink identified in large characters, known as ‘PAGO’. sold in Austria a fruit and whey drink called ‘Lattella’, packaged in glass bottles the design of which resembled in several respects (shape, colour, label, cap) that depicted in Pago’s Community trade mark. In the advertising for its drink Tirol Milch used a representation which, like Pago’s Community trade mark, shows a bottle next to a full glass. 

It was accepted that there was no likelihood of confusion, since the bottle labels bore the names ‘Pago’ and ‘Latella’ respectively, both being widely known in Austria; the parties proceeded on the basis that the conditions of Article 9(1)(c) of Community Trade Mark Regulation 40/94 (infringement of "any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark") had been met in that (i) Tirol's sign was similar or identical to that for which Pago owned the Community trade mark, and (ii) the drink marketed by Tirol was not considered to be similar to that marketed by Pago.

Pago sought an injunction before the Commercial Court, Vienna, to stop Tirol infringing its trade mark by (i) promoting, offering for sale, marketing or otherwise using its drink in the bottles at issue, and (ii) advertising a representation of the bottles together with a full glass. That court granted the injunction but its decision was reversed by the Higher Regional Court, Vienna. Pago then appealed to the Oberster Gerichtshof, which referred the following questions for a preliminary ruling:

‘(1) Is a Community trade mark protected in the whole of the Community as a “trade mark with a reputation” for the purposes of Article 9(1)(c) of the Regulation if it has a “reputation” only in one Member State?

(2) If the answer to the first question is in the negative: is a mark which has a “reputation” only in one Member State protected in that Member State under Article 9(1)(c) of the Regulation, so that a prohibition limited to that Member State may be issued?’

The recommendation of the Advocate General is should be answered as follows:

"(1) A Community trade mark is protected in the whole of the Community on the ground that it has a ‘reputation in the Community’ within the meaning of Article 9(1)(c) ...  if it has a reputation in a substantial part of the Community. What constitutes a substantial part of the Community for that purpose is not dependent on national boundaries but must be determined by an assessment of all the relevant circumstances of the case, taking account, in particular, of (i) the public concerned by the products or services covered by the trade mark and the proportion of that public which knows of the mark and (ii) the importance of the area in which the reputation exists, as defined by factors such as its geographical extent, population and economic significance.

(2) A Community trade mark which has a reputation in an area which is not a substantial part of the Community in that sense does not enjoy, under Article 9(1)(c) of Regulation No 40/94, protection limited to that area. Consequently, a prohibition against infringement limited to that area may not be issued".

Of note is the Advocate General's review of the Court's earlier jurisprudence in General Motors and Nieto Nuño:

"30. It is first necessary to establish whether the trade mark has a ‘reputation’. In order to do so, the national court must identify the public concerned by the trade mark in the context of the Community as a whole, without regard to Member States’ borders. Having identified the relevant public, the national court should proceed to determine whether the reputation exists amongst a significant part of the public concerned by the goods or services covered by the trade mark.

31. The national court must then determine whether the trade mark has a reputation ‘in the Community’. It should begin by accepting that the trade mark proprietor need not demonstrate that the trade mark has a reputation throughout the Community. It is sufficient, for Article 9(1)(c) to apply, if the trade mark has a reputation in a ‘substantial part’ of the Community. General Motors does not provide further guidance as to how a ‘substantial part’ of the relevant territory is to be construed.

32. The Court’s case-law does, however, indicate what is not a ‘substantial part’. In Nieto Nuño it was established in relation to the kindred concept of whether a trade mark is ‘well known’ under Article 4(2)(d) of the Directive that the city of Tarragona and its surrounding area within Spain is not a substantial part of that Member State. Applying the same reasoning by analogy to the concept of a ‘substantial part of the Community’, it follows that where the ‘part’ is, viewed objectively by reference to its size and economic weight, paltry in comparison with the Community as a whole and where the relevant public is more widely spread throughout the Community, that part cannot be deemed to constitute a ‘substantial part’ of the Community. That conclusion follows from the ordinary meaning of the term ‘substantial’. It also accords with common sense.

33. The scenarios that may be envisaged are many and various. At one end of the spectrum, a trade mark covering a generic product marketed to the general public which enjoyed a significant reputation amongst that public would be expected to be known throughout a wide geographical area before it could be said to enjoy a ‘reputation in the Community’. At the other extreme, a trade mark for a particular product marketed to a specialised regional public would be expected to be known over a much smaller area. A product that is marketed to a professional public might well cover a wide area (depending on how widespread membership of that profession was) but would probably be known to a smaller number of people, in absolute terms, than a product marketed to the general public.

34. As with the concept of relevant public, the territorial aspect of ‘reputation’ cannot be defined by reference to an abstract figure or a particular number of Member States. The national court will have to evaluate a number of factors to determine whether a particular trade mark enjoys a reputation in a substantial part of the Community. Such factors will include, but not be limited to, the economic significance of the territory within the Community, the geographical extent of the area where the trade mark has a reputation and the demographics of the public concerned.

35. In order to determine whether an earlier trade mark enjoys a reputation in a substantial part of the Community for the purposes of Article 9(1)(c) of the Regulation, the national court must therefore make an overall assessment of the case in conjunction with establishing the public amongst whom that earlier trade mark is known. Any such test must necessarily be flexible".

The IPKat doesn't feel there's anything hugely controversial here. It's simply a reminder to make overall assessments that don't obviously clash with ECJ case law. Merpel says, this is what I've been waiting for -- an appraisal of "substantial part of the Community" that looks at reality instead of national boundaries. On this basis, Luxembourg on its own stands little chance of being a "substantial part" ...

Early comment here from Fabio Angelini ("Catch Us If You Can !!!") here

Why teacakes that suck might hurt marketing consultancies

This link from Ars Technica, via the IPKat's friend Kristof Neefs (Altius), has sparked off an interesting issue. Says the IPKat, if the name of my marketing consultancy is, say, Kudos Consultancy, and someone else uses the word Kudos in a completely different field, let's say teacakes, on the assumption that neither of us is particularly well-known, neither of us can stop the other using the word Kudos. So far, so good. But what happens if the maker of teacakes gets a bad reputation among consumers, which spawns a rash of 'Kudos sucks' sites on the internet? After a while, anyone looking for my consultancy on a search engine and innocently keying in the search term 'kudos' will be deluged with kudos-sucks web links. This in turn may cause searchers to give up looking for entirely, or to view my excellent services in a somewhat suspicious manner, given that they have begun to associate them with the word 'sucks'.

The IPKat asks: what practical and legal advice would you give the IPKat in this situation?

Teacake recipes here and here