MADAMECOCO, but not CHANEL

In its recent decision, the UKIPO rejected in its entirety an opposition filed by Chanel Limited (Chanel) against an application made by Deha Magazacilik ev Tekstili Urunleri Sanayi Ve Ticaret Anonim Sirketi to register the trade mark MADAMECOCO. The opposition was directed against the following services covered by the contested application:

“retail services connected with the sale of … tools and apparatus included in this class for shaving, epilation, manicure, pedicure and personal beauty care use, … electric hand implements for hair curling, scissors, … shaving brushes, hair brushes, combs, …” in class 35.

Chanel based its opposition on Section 5(3) of the Trade Marks Act 1994, claiming that use of the mark MADAMECOCO without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the Chanel’s earlier marks, namely, COCO MADEMOISELLE (in two different minimally stylised formats) covering “preparations for application to or care of the skin, scalp, hair or nails; soaps; perfumes; … non-medicated toilet preparations” in class 3.

The Applicant admitted Chanel’s reputation in relation to “women’s perfume”. Furthermore, having considered the evidence filed by Chanel, the Hearing Officer made findings that that reputation in relation to women’s perfume was “strong” and that Chanel had also proved reputation, albeit to a lower degree, in respect of “women’s ancillaries” (this category included body creams, body exfoliants, body lotions, body oils, body and hair mists, bath foams, bath gels, deodorants).

Notwithstanding Chanel’s reputation in its earlier COCO MADEMOISELLE marks, the Hearing Officer found that the link between the contested mark MADAMECOCO and Chanel’s earlier marks was not sufficiently strong for a finding of unfair advantage and/or detriment to the repute and or distinctive character of Chanel’s marks.

Whilst both parties’ marks coincided in the element COCO (which the Hearing Office found to be the dominant and distinctive element of Chanel’s earlier marks) and included a French form of addressing a woman, the Hearing Officer noted that:

  • the term MADEMOISELLE in Chanel’s marks was used to address an umarried woman and the term MADAME in the contested mark was used to address a married woman;
  • the order of the words in the contested mark was reversed, COCO being positioned after the word MADAME;
  • the words MADAMECOCO were joined without a space (having the effect of combining to create a single phrase); and
  • MADEMOISELLE and MADAME were of noticeably different lengths.

On conceptual level, the Hearing Officer considered there be a high degree of similarity between the marks should Chanel’s mark be perceived as a reference to a female called COCO (i.e. MADEMOISELLE COCO), but the similarity would be lower if Chanel’s marks were to be perceived as a reference to a primary brand COCO and a secondary word MADEMOISELLE, indicating that the products are intended for young women. The Hearing Officer does not appear to have made a finding whether one or other of these perceived meanings was the more likely for the average consumer but instead has borne the possibility of either meaning in mind in the assessment.

The Hearing Officer then assessed the goods in issue. Notwithstanding Chanel’s reputation in its marks in relation to “women’s perfume”, the Hearing Officer found that there was “a significant jump” from such perfume goods to “tools and apparatus for shaving, epilation, manicure” etc, “and then yet a further leap to the retail of these tools and apparatus”.

In conclusion, despite likely strong conceptual similarities between the marks for at least a proportion of the relevant consumers, the Hearing Officer held that given the “difference between the respective marks and the distance between the respective goods and services”, it was unlikely that the use of the MADAMECOCO mark would result in detriment to the distinctive characterand/or repute of Chanel’s COCO MADEMOISELLE marks or that there would be any unfair advantage derived by the Applicant from Chanel’s marks. The contested mark was thus allowed to proceed to registration and an award of costs was made in the Applicant’s favour.

On the face of it, this decision has a slightly surprising result, given the reputation in the earlier marks, the similarities of the marks in issue and that the applicant was in the general field of beauty/beauty care. But the decision serves as a useful reminder that proving reputation in an earlier mark, even if that reputation is found to be strong, is insufficient on its own to succeed under Section 5(3) of the Act.

By Magda Ostrowska

Changes to the Guidelines for Examination at the European Patent Office

Summary

The European Patent Office Guidelines are updated annually.  The latest update came into force on 1 November 2019, and contains significant changes in relation to how the EPO examines inventions relating to artificial intelligence, selection inventions and inventions in the field of biotechnology. Practitioners need to be aware of these changes in order to obtain meaningful claims in these areas.

Introduction

The Guidelines for Examination in the European Patent Office (“the EPO Guidelines”) are important as they provide instructions to the Examiners in their handling of European Patent Applications. They contain guidance as to how the EPO deals with substantive as well as procedural aspects of examination, and represent a distillation of how significant decisions of the Boards of Appeal of the EPO are implemented in practice.

Although the EPO Guidelines are not legally binding, they are very influential on Examiners, and they are frequently referred to by attorneys in responding to objections raised during examination, and in preparation of appropriate claim language to pre-empt such objections. In particular, the EPO Guidelines give examples of how specific types of invention may be claimed, and how Examiners apply tests in order to evaluate patentability in different technical fields.

The most recent revision to the Guidelines occurred on 1 November 2019. There are a number of changes, some of a procedural nature, and others having a substantive aspect. In this article, I focus on the substantive changes, and briefly summarise the other revisions.

Technical character – inventions employing artificial intelligence

The section of the Guidelines dealing with inventions in the field of artificial intelligence was introduced in the previous revision. It was clear that classification, clustering, and other models and algorithms are per se of an abstract mathematical nature, irrespective of whether they can be “trained” based on training data. Consequently, they are excluded from patentability at the EPO[1].

The revisions clarify, however, that if a mathematical method produces a technical effect when it is applied to a field of technology and/or adapted to a specific technical implementation, the computational efficiency of the steps affecting that established technical effect is to be taken into account when assessing inventive step. This is an indication that EPO is prepared to recognise contributions that machine learning can make to patentable inventions.

Special attention must be paid to the clarity of terms used in claims related to mathematical methods. This is of particular importance where such terms are used in significantly different ways to relevant prior art documents. This may be indicative of a lack of a generally accepted technical meaning, which may lead to findings of lack of technical character of the claims.

Selection Inventions

Especially in the fields of chemistry and pharmaceuticals, selection inventions, namely those which concern the selection of a subrange of a parameter from the broader disclosure of the prior art, are important.  Formerly the EPO applied a three-step test for assessing the novelty of a sub-range, the final step of which was establishing that the selection was a “purposive” one, i.e. the selection had a purpose, utility or effect that was not shared by the broader class.

In light of a decision of the Boards of Appeal (T261/15), the requirement for a purposive selection has been dropped, and it is now sufficient merely to demonstrate that the sub-range is narrow, and far removed from any specific examples and end-points in the prior art.  Assessment of purpose, utility or effect is done under inventive step.

This change is beneficial to applicants, as it makes it easier to demonstrate novelty of claim that includes a sub-range, particularly in chemistry and pharmaceutical cases.

“Obvious to Try” Test

One of the earliest cases of the Boards of Appeal of the EPO concerned the assessment of inventive step, and in set out that the proper question to be asked was not whether the skilled man could have could have tried the technical solution framed by the claims, but whether they would have done so in expectation of success.

The Guidelines previously stated that the question to be asked was whether the skilled person would have modified the closest prior art in the hope of solving the objective technical problem”.  Clearly, hope is a very different emotional state from expectation.  The revisions clarify that the skilled person must have a degree of confidence of success when embarking on the proposed solution, rather than a try-and-see attitude.  This change is also favourable to applicants, as the Examiner must demonstrate why the skilled person was motivated to try the proposed solution, as well as demonstrating that they would have expected success.

A new section of the EPO Guidelines directed to biotechnological inventions also stresses the difference between a “reasonable expectation of success” and a “hope to succeed”. Specifically, if researchers are aware when embarking on their research that, in order to reach a technical solution, they will need not only technical skill but also the ability to make the right non-trivial decisions along the way, this cannot be regarded as a “reasonable expectation of success”.

Clarity – Parameters and Purposes

The section dealing with parameters and their use in claims has been updated in light of Board of Appeal decision T849/11.  The EPO Guidelines now state that the use of parameters in claims should be self-contained, in that the skilled person must not need to resort to studying the description in order to divine their meaning.

A significant change has been made to the portion of the EPO Guidelines dealing with means-plus-function features.  Ordinarily, any prior art feature suitable for carrying out the function of a means-plus-function feature will anticipate the latter.  The example given in the EPO Guidelines is that the feature “means for opening a door” is anticipated by both the door key and a crowbar.

An important exception to the rule is where the function of the means-plus-function feature is carried out by a computer.  In such cases, are interpreted as means adapted to carry out the relevant steps/functions, rather than merely being suitable for carrying them out.

Other Changes

Other changes relating to procedural aspects of the work of the EPO are also made.  These include the fact that certain procedural acts, such as payment of some fees, can be made by a representative other than the representative of record, which will be useful for applicants making use of validation companies to handle the EPO grant stage.  The section on PCT applications entering the European Regional Phase has also been re-written, giving further detail on the steps and options.

[1] European Patent Convention, Article 52 (2) (c)

By Adrian Bradley

UK Supreme Court decision regarding inventor compensation – “outstanding” result for disgruntled employees? Shanks v Unilever Plc

Headnote

The UK Supreme Court[i] yesterday handed down its decision to award £2M to the inventor of a glucose testing kit, finding that the patent covering the technology was of “outstanding benefit” to his employer. The decision will cause concern to organisations investing in research, as they find themselves potentially liable to make payments to inventors of technologies which proved successful in the market. Employers should review their employee compensation schemes (if they have them) to minimise this risk.

Background

UK law provides that inventors may be entitled to compensation if the invention proves to be of “outstanding benefit” to their employers.[ii] This provision was famous as never having been the subject of a successful claim by an employee, until a landmark decision in 2009.[iii]

In the case in question, the claimant, Professor Shanks, was an employee of Unilever (the defendant). During the course of his work, he developed a technology that was patented. This technology was subsequently widely adopted in medical diagnostic kits, including those used for glucose monitoring. Whilst Unilever did not commercialise such kits themselves, they licensed the patents to a number of other companies, attracting royalties of around £24M (US$31M).

Prof. Shanks sought compensation under Section 40 of the UK Patents Act.[iv]  Two lower courts, and the UK Intellectual Property Office (IPO), had previously held that the value derived from the patents were relatively small in the context of Unilever’s wider business.

Decision

The Supreme Court disagreed with the reasoning of the previous instances. The court found that because Prof. Shanks was associated with a subsidiary of Unilever, that the subsidiary was the relevant entity for determination of whether the benefit was outstanding, rather than the group as a whole. This turned out to be significant, as group as a whole had revenues running into billions of pounds.

A further point persuading the Supreme Court that the benefit to the subsidiary was “outstanding” was that in the context of Unilever’s main business (consumer products), the patents and associated licenses, in a different field (medical diagnostics) were unusually lucrative.

Analysis

The decision will be of less concern to companies exclusively active in one field, such as pharmaceuticals, biotechnology or electronics. For these organisations, there is less likelihood that any particular invention (or patent) will provide an “outstanding” benefit, as the benchmark will be more uniform.

Diversified concerns operating across a range of markets appear more likely to be challenged if a patent is the subject of a lucrative licensing deal.

The decision appears more relevant to situations in which patents are licensed, as opposed to commercialised by the patent owner. In the latter case, it will be harder to disentangle the contribution made by the patent or invention from the other factors contributing to commercial success, such as marketing and access to distribution channels.

Actions for Patent Owners

One way to limit a patent owner’s exposure to claims for compensation for inventions which prove very successful is to proactively implement an employee compensation scheme. It is then clear from the outset where the inventors stand.

Businesses need to be aware that if they structure their activities with subsidiaries which hold intellectual property, the subsidiary may be scrutinised when assessing “outstanding benefit”.

Cleveland Scott York attorneys can advise on the drafting and implementation of suitable employee compensation schemes, and defending against claims for employee compensation.

By Adrian Bradley

[i] Shanks (Appellant)vUnilever Plc and others (Respondents) [2019] UKSC45

[ii] UK Patents Act 1977, (Section 40) as amended.

[iii] James Duncan Kelly and Kwok Wai Chiu v GE Healthcare Limited [2009] EWHC 181 (Pat)

[iv] This was under a previous version of the Act, specifying the patent, rather than the invention, must be of outstanding benefit.

Advocate General’s opinion in the Sky v Skykick case – lack of clarity of a specification of goods/services is not a ground for invalidation, but lack of intention to use could well be

Advocate General Tanchev delivered his opinion on the Sky v Skykick case on 16 October 2019. This is the decision of the decade so far as European practitioners are concerned, we have truly been waiting with bated breath for the outcome of this matter.

For background detail, Peter Houlihan’s article, regarding the original reference to the Court of Justice of the European Communities (CJEU) sets the scene.

AG Tanchev’s opinion, if adopted by the CJEU, could have far-ranging effects. While existing registrations will not see challenges on the basis that terms in the specification are too vague, we can certainly expect a flood of challenges based on an abusive lack of intention to use a trade mark, when filing the application. Registrations which have been filed with a bona fide intention to use for part, but not all of the items covered, will not stand to be cancelled in their entirety, though, so the filing of such challenges will require considerable forethought.

We can also expect to see the registration authorities tightening up their practice again on what terms are considered too imprecise to be included in specifications of goods and services. Filing for ‘computer software’ in general certainly seems likely to be a thing of the past in the not too distant future.

The provision of UK law which requires an applicant to declare a bona fide intention to use the trade mark when filing the application was held not to be contrary to EU law, provided that this is not the sole basis for claiming bad faith. Paragraph 140 of the opinion clarifies this further. The provision in question is held to be merely a procedural requirement, which assists in adducing evidence of bad faith in all the circumstances of the case. This doesn’t seem likely to cause much of a shift in practice before the UK tribunals, given that in a case involving bad faith arising from a lack of intention to use a trade mark, one is generally looking at a situation involving some form of abuse of the trade mark system. AG Tanchev refers to such applications, in paragraph 110 of his opinion as being anticompetitive applications to prevent third parties from developing their own commercial activities, and it’s difficult to think of lack of bona fide intention to use cases which would not fall in that category.

We now await the ruling of the CJEU, and then, the application of that ruling to the UK legal proceedings, in relation to which Skykick must now be feeling much more optimistic!

By Cathy Ayers

Inadmissible appeal vs Appeal deemed not to have been filed – what is the distinction?

The European Patent Office (EPO) Enlarged Board of Appeal (EBA) recently issued its decision in respect of case G1/18.

The question before the EBA was:

When filing an appeal, does failure to observe the two-month time limit set out in Article 108 of the European Patent Convention (EPC), through late payment of the appeal fee and/or belated filing of the notice of appeal, result in the appeal being treated as not filed or as inadmissible?

The decision was in response to a referral by the President of the EPO, who, under Article 112(1)(b) EPC, has the power to refer a point of law to the EBA when two (lower) boards of appeal have given differing decisions on corresponding legal questions.

The referred question is relevant because if an appeal is deemed inadmissible a reimbursement of any appeal fee already paid would not ensue since there are no legal grounds to permit a refund, whereas if an appeal is instead deemed not to have been filed the payment of any appeal fee would consequently be without a legal basis, since no appeal exists, and therefore the fee must be refunded.  The point of law in issue was which of the above determinations should be applied in a situation where an applicant fails to observe the two-month time limit under Article 108 EPC.

The EBA answered the referred question as follows:

  1. An appeal is deemed not to have been filed in the following cases:

(a) where notice of appeal was filed within the two‑month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two‑month time limit;

(b) where notice of appeal was filed after expiry of the two‑month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two‑month time limit;

(c) where the appeal fee was paid within the two‑month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND notice of appeal was filed after expiry of that two‑month time limit.

  1. In the cases referred to in answers 1(a) to (c), reimbursement of the appeal fee is to be ordered ex officio.
  2. Where the appeal fee was paid within or after the two‑month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND no notice of appeal was filed at all, the appeal fee is to be reimbursed.

Thus, the EBA has taken the view that “the consequence in law of a failure to observe the two‑month time limit under Article 108 EPC is that the appeal is deemed not to have been filed, and not that it is to be rejected as inadmissible, and that, accordingly, the appeal fee will be reimbursed in such cases”.

In other words, where an appeal fee is paid late and/or a notice of appeal is filed late, appellants now have more certainly as to the state of their appeal and the fate of any fees paid – the appeal will be deemed not to have been filed and a refund will be issued.

Moving Times – motion and other non-traditional trade marks

At the beginning of 2019, UK Trade Mark law was updated in order to implement EU Directive 2015/2436 and to further harmonise the laws of the EU Member States. One of the changes abolished the requirement for a sign to be graphically represented on trade mark application forms. Marks can now be submitted to the UKIPO in multiple formats, including digitally. This makes it easier to apply for non-traditional marks such as sound, motion, multimedia and hologram marks. It also means that those viewing the register can more easily understand the mark for which protection is claimed. For example, sounds marks could previously be represented as musical notes (fulfilling the now redundant graphical representation requirement), but now a sound file can be submitted instead, meaning that anyone viewing the register can actually listen to the sound mark rather than simply looking at a musical score. In the UK, the following electronic file formats are now acceptable: JPEG, MP3, MP4.

At the time of writing, we are not aware of anyone that has registered a sound mark using digital format in the UK. The Toshiba Corporation has, however, taken advantage of the change in law and registered the first ever motion mark (i.e. a moving logo) in digital format in the UK in respect of a wide range of goods and services. The mark can be viewed on the register here.

Notwithstanding the above, the most popular or common marks are still likely to be traditional word and image marks. Toshiba’s registration nevertheless represents a landmark moment in UK trade mark history and is likely to pave the way for other marks of its kind.

Interestingly, the London Deaf Information Service has applied for a multimedia mark for a three second video clip which can be viewed here. It is yet to be seen if this mark will proceed to registration.

At present there is unfortunately no facility on the UKIPO database to specifically search marks that utilise electronic file formats and there are no separate categories to search for motion and hologram marks. It is hoped that this will be available in time. It is also worth noting that for the purposes of conducting clearance searches, there are added challenges and difficulties in doing this in respect of non-traditional marks. More sophisticated searching tools will no doubt be developed in the future to keep pace with changing times.

Whilst the change in law has made it easier to apply to register non-traditional marks, it is important to remember that such marks must still fulfil other criteria in order to achieve protection. For example, marks must still be distinctive and must truly be perceived by the public as an indication of origin distinguishing one trader’s goods and services from those of others. In addition, whatever format is chosen for representing a mark, it must still fulfil the “Sieckmann” criteria and be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. Digital formats will no doubt assist with satisfying this criteria.

By Rebecca Silva

Three Stripes You’re Out – Adidas loses the Three Stripes trade mark

In a recent case, the General Court upheld the Board of Appeal’s decision, and invalidated one of Adidas’ three stripe EU trade mark registrations. Whilst Adidas did not appeal the Board of Appeal’s finding on lack of inherent distinctiveness, they appealed the finding on acquired distinctiveness.

The three stripes trade mark in question had been registered since 2014 in relation to clothing, footwear, and headgear in class 25 and was now being challenged by a competitor Shoe Branding Europe BVBA.  Adidas’ trade mark consisted of this image:

On the register the mark was described as ‘consist(ing) of three parallel equidistant stripes of equal width applied to the product in whichever direction’, and the figure depicted was three black (or dark) stripes on a white (or light) background.  Adidas filed evidence of use of the mark (and variations of the mark) on clothing, bags, and shoes to support the claim to acquired distinctiveness.  In addition, Adidas’ evidence was also intended to prove that the registered mark was a pattern, and thus could be used in various forms.

The General Court held that when a trade mark is extremely simple, like the Adidas three stripe mark, even minor changes can affect the mark’s distinctive character.  In such cases, variations of the mark may not be considered as equivalent to the registered mark.  Adidas provided evidence of use that deviated from the registered mark including: by use of inverse colours (three white/light stripes on a black/dark background), by use of three stripes in a different scale to that of the registered mark, and by use of stripes applied diagonally. Examples are here:

Since a majority of the evidence provided by Adidas related to these variations of the mark, the evidence was held not to represent the mark as registered (or any permissible variation) and, accordingly, the evidence could not support the claim to acquired distinctiveness.  In addition, the General Court held that Adidas had registered a figurative mark, not a pattern mark, and as a result the mark had to be used as registered, and despite the description of the mark that Adidas included, could not be extended, cut, or applied in various directions.

Adidas also presented evidence including 23 market surveys to show acquired distinctiveness.  However, 18 of the market surveys were in relation to variations of the three stripes, which differed from the registered mark, and thus again were deemed irrelevant.  The General Court held that the remaining 5 market surveys, which only covered Germany, Estonia, Spain, France, and Romania, did not prove use of the mark in every Member State and therefore had not proven acquired distinctiveness throughout the territory of the European Union. The court held, consequently, that the registration must be declared invalid.

Adidas has not indicated if they plan to appeal the decision.  However, even if Adidas does not appeal, they have several other EU registrations for their three stripe mark in various forms, which still allows broad protection of their three stripe mark.

The case nevertheless gives clear warning to registered proprietors that for simple figurative trade marks, minor variations in form or format may not support their existing registrations. If full protection is required for the variations, multiple registrations will be required.

By Rachel Christenson

Can a trader assert rights in passing off in a descriptive name?

This issue was recently before the Intellectual Property Enterprise Court in the case “Asian Achievers Awards v British Asian Achievers Awards”. (The decision can be found here.)

The Claimant, Asian Business Publications Ltd (ABP), is a publisher of newspapers and has run the ASIAN ACHIEVERS AWARDS event annually since 2000. The ceremony is now a lavish event with more than 1000 attendees and sponsors. Since 2012 the event has been held at the Grosvenor Hotel on Park Lane. Evidence was submitted that the event was well advertised and promoted in the Claimant’s newspapers, social media accounts and on television and radio. The event had also been televised since 2008 by a Hindi language television channel on cable and satellite. The event celebrates the achievements of the British Asian community and is supported by corporate sponsors with profits being donated to charity. The 2017 awards raised £170,000 for charity.

The First Defendant, British Asian Achievers Awards Limited (BAAA), was incorporated in 2016 and the Second Defendant, Mr. Kumar, is the sole director of the First Defendant. Mr Kumar had also been a director of Jagatwani Ltd since 2011. Jagatwani Ltd published a Hindi language newspaper in the UK for about 10 years under the name ‘Jagatwani’. BAAA was incorporated for the purpose of running an awards ceremony under the name BRITISH ASIAN ACHIEVERS AWARDS with the first ceremony being held in 2016. Despite correspondence from the Claimant’s solicitor complaining of passing off to which no reply was received, the First Defendant planned to hold a second British Asian Achievers Awards in 2017. Further correspondence from the Claimant’s solicitor went unanswered and in October the Claimant issued proceedings and applied for an interim injunction to prevent the Fist Defendant from running its event under the name British Asian Achievers Awards. Marcus Smith J granted a limited injunction allowing the event to go ahead under the name British Asian Achievers Awards subject to certain disclaimers of any connection with the Claimant’s event being made. An injunction was then later granted by Birss J restraining the First Defendant from using the name for an awards ceremony until after trial.

The passing off issues to be decided were as follows:

  1. Had the Claimant acquired a goodwill in the UK in relation to the name ASIAN ACHIEVERS AWARDS?
  2. By using BRITISH ASIAN ACHIEVERS AWARDS, had the Defendants misrepresented that the event was connected or associated with the Claimant or was in some way authorised by the Claimant?
  3. Had the Claimant suffered or likely to suffer loss and/or damage?

The Defendants conceded that the Claimants had a goodwill in the UK associated with the name. They also accepted that if there had been a misrepresentation, damage to the Claimant would follow.

The only contentious issue was whether there had been a misrepresentation.

The Defendants relied on the well-known case Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 which looked at whether “Office Cleaning Association” amounted to passing off of “Office Cleaning Services”. In that case it was decided that where passing off is alleged in relation to descriptive marks, small differences are sufficient to preclude a misrepresentation. The Defendant accordingly argued that ASIAN ACHIEVERS AWARDS was essentially descriptive and the addition of ’British’ should be sufficient to distinguish the two names and thus avoid any misrepresentation – also bearing in mind that the general get up or branding of the parties also assisted in distinguishing them.

The Claimants argued that there was not only a risk of misrepresentation but also that there had been actual instances of confusion between the names; they presented a number of emails and letters in support of this allegation. The most critical piece of evidence was the testimony of a Mr. Iyer, who received an email from the Defendants inviting him to the BRITISH ASIAN ACHIEVERS AWARDS. Mr. Iyer had been a regular attendee and supporter of the ASIAN ACHIEVERS AWARDS and had thought it strange that he had not received an invitation direct from Mr. Liji the CEO of the Clamant, as he had done in previous years. Mr. Iyer called Mr. Liji to find out why and it was during this call that Mr. Iyer realised his mistake. The Defendants suggested that Mr. Iyer should have noticed the references to Jagatwani in the email from the Defendants and the fact that the event was being promoted as the “1st British Asian Achievers Awards” and should thus have realised that the event was not connected to the Claimant’s event . But the court concluded that there was nothing to suggest that Mr. Iyer was anything other than a satisfactory witness and further that Mr Iyer had indeed been confused into thinking that the event was the Claimant’s event.

Ultimately, the Court found that the addition of the word ‘British’ to ‘Asian Achievers Awards’ was not sufficient to distinguish the names, because the evidence showed that the Claimant’s event was a long established British-based event aimed at the British Asian community and so the addition of ‘British’ would have no material impact on a member of the public already familiar with Asian Achievers Awards. The allegation of misrepresentation was supported by Mr. Iyer’s confusion, which, whilst only being one instance of confusion, was held to be significant.

In summary, the Court decided that use of BRITISH ASIAN ACHIEVERS AWARDS in relation to the Defendant’s event was liable to cause, and will have caused, passing off.

This case shows that the broad principle that descriptive marks are hard to protect (as set out in Office Cleaning Services Ltd) does not apply in every case. In the right set of circumstances, most obviously where the variations in the defendant’s trade mark are immaterial, it is possible for a trader to succeed in a passing off action on the basis of a descriptive trade mark.

By Claire Birro

Domain name Developments

An important deadline to note for .uk registrants

Up until 10 June 2014, Nominet, the registry in control of the .uk ccTLD (country code Top Level Domain), offered only domain names that were unique at the third level – i.e. google.co.uk, mind.org.uk or ipo.gov.uk.  The second level was a generic identifier indicating the type of registrant entity.

After a five-year lead in period, however, it will shortly be possible for anyone to register .uk domain names that are unique at the second level – e.g. nominet.uk.

The creation of this new patch of internet real estate comes with an increased risk of cybersquatting and to counter this Nominet reserved, for existing holders of 10 million qualifying unique third level domains, the corresponding second level domain.  This five year “Right of Registration” period expires at 6am BST on 25 June 2019.

Any .uk domain which has not been registered by the deadline will be released for registration on 1 July 2019 on a first-come, first-served basis.

Holders of .co.uk, .org.uk, .me.uk, .net.uk, .plc.uk or .ltd.uk domains can check to see if their .uk domain has been reserved for them by following this link:

https://www.theukdomain.uk/do-i-have-uk-rights/

Figures recently released by Nominet suggest that the take up has been low so far with only 2 million domains registered and 3.2 million still available for registration.

Of course, there is likely to be a flurry of activity as the deadline draws closer but brands should consider now whether the .uk domain is one that should be added to their defensive portfolio or, indeed, if they would like to migrate their entire on-line presence to the new, snappier domain.

New initiative by the EUIPO and EURid

EURid and the EUIPO have signed a deal to strengthen their cooperation and to reduce instances of bad faith registration in the .eu ccTLD (country code Top Level Domain).

As of 18 May 2019, owners of EU trade marks (whether registered or pending) will be able to opt-in to receive notifications when a letter string corresponding to their trade mark is registered as a .eu domain name.  Such notification will of course allow the trade mark owner to take any appropriate action at the earliest opportunity.

The service is operated by the EUIPO and there is no official fee payable.

This new service bears some resemblance to the Trademarks Claims service operated by new gTLD registries – with the notable differences that:

i)  the .eu registrant itself is not notified and is not required to make any statement that to the best of its knowledge it is not infringing the EUTM concerned;

ii)  even pending EUTMs are entitled to opt-in for notifications and there is no need to have a validated record on the Trademark Clearinghouse database; and

iii)  the Trademarks Claims service is in place only for the first 90-days of a new gTLD going live (unless a fee is paid) whereas the EUIPO notification appears to be limited only by the life of the underlying trade mark registration.

This is a welcome addition to the armoury of brand owners seeking to protect their rights in the .eu namespace.

Time will tell if it proves to be popular but I see no reason why a brand owner would not want to avail itself of this new service.

By Andy Clemson

LEGO v LEPIN: Lego continues to build strong protection around its marks

In the latest case between LEGO and the Chinese product, LEPIN, the UKIPO has ruled in favour of invalidating the latter’s mark on the basis of likelihood of confusion, unfair advantage and passing off.

The mark in question was , registered in the name of Shantou Chenghai District Longjun Toys Factory Co., Ltd, and covered, inter alia, “toys” and “building blocks” in class 28. LEGO requested the registration be declared invalid on the basis of s.5 (2) (b), s.5 (3) and 5(4) (a) of the Trade Marks Act 1994. For the grounds of s.5 (2) (b) and s.5 (3), LEGO relied on earlier EU Trade Mark No. 2829463 , which was registered for, inter alia, “games and playthings” in class 28.

LEPIN requested LEGO file proof of use in relation to this mark, and LEGO subsequently filed a large amount of evidence, amongst which showed:

  • The mark had been in use in a substantially unchanged way since 1973;
  • Turnover figures between 2013-2017 were £1,265 million;
  • In 2017, 75% of UK children owned LEGO goods;
  • In 2000, LEGO was named Toy of the Century by the British Association of Toy Retailers;
  • The advertising spend in 2013-2014 throughout  the EU was £1,000 million;
  • LEGOLAND Windsor, a LEGO-based theme park, had 2.138 million visitors in 2016;
  • The LEGO movie generated £42 million revenue in the UK and £90 million in the EU;
  • Between 2015-2017, LEGO gained £75 million in royalties from LEGO-branded video games.

The evidence was held to be more than sufficient to prove use in relation to “games and playthings” and the compilation of this evidence undoubtedly influenced the decision by showing LEGO’s immense reputation. The Hearing Officer even noted that it is a “notorious fact” that the mark is in use in relation to toy building bricks and construction sets.

LEPIN tried to argue that the marks were dissimilar as LEPIN is a made-up word consisting of two Chinese characters; LE which means “happy, cheerful, laugh” and PIN which means “spell, piece, risk”, whereas LEGO is a known word, and referenced its inclusion in the Oxford English Dictionary. It was shown, however, that LEGO is recorded in the dictionary as being a trade mark, and so this argument was dismissed. The Hearing Officer ruled that LEGO is an invented word of high inherent distinctiveness, and found likelihood of confusion on the basis of the identical goods, the “no more than average” level of attention paid during purchasing these types of goods, the huge level of distinctiveness and the strong structural similarities, i.e. the fact that in both the marks the letters are slanted forward, with slightly curved edges and with a shaded border around the word.

Colour was another important issue considered in this case. LEPIN had tried to argue that the marks were dissimilar as LEPIN’s mark was registered in black and white, and LEGO’s mark is registered in colour, with a red background, the word LEGO in white and a black and yellow outline around the word. However, the evidence submitted by LEGO clearly showed that LEPIN’s mark was being used in the same colours as LEGO’s prior right.

The UKIPO held that, although the mark was registered in monochrome, LEGO’s evidence showed the use of LEPIN’s mark was in a highly similar/identical colourway to that of LEGO’s registered mark and long-standing use. The Hearing Officer, referred to the case of Specsavers international Healthcare & Others v Asda Stores Limited (Case C-252/12), and reiterated that it is not just the way the mark has been registered that should be considered, but also the way the mark has been used, especially if this mark has been used extensively in particular colours. This is especially true if those colours also reflect the way the earlier trade mark is used and registered, as it did in this case.

It was also held that the use of the LEPIN mark was a clear case of “free-riding”. LEGO had shown an enormous reputation within the UK, and LEPIN would undoubtedly find it easier to sell goods on the back of this reputation and goodwill. The use of the LEPIN mark (with highly similar colours/position on packaging/almost identical pictures of the goods used on the boxes), was considered to be intended to exploit LEGO’s reputation, and take unfair advantage of its reputation without paying financial compensation or the need to invest any marketing expense or effort.

LEGO’s evidence also included a number of complaints received by their Consumer Service Department, which include customers complaining of the quality, some genuine confusion between the marks, and also people getting irate at LEGO seemingly not doing anything to stop LEPIN, which could all be examples of unfair advantage and detriment to the mark, as well as dilution.

LEGO was also successful on the grounds of passing off. There was substantial goodwill in relation to construction toys, with the Hearing Office also noting that “it is the case that sometimes the eye has a tendency to see what it expects to see when a mark is extremely well known”, leading to the assumption that the word represented is LEGO. Also, the Hearing Officer believed that it was likely that consumers would think that the LEPIN products were a Chinese sub-brand or co-brand of LEGO, and this was shown through some of the customer complaints received by LEGO’s Consumer Service Department. The UKIPO ruled that, based on its use of the mark on identical/highly similar packaging and get-up, it was clear that LEPIN intended to benefit from LEGO’s goodwill. It also held, again, that LEPIN’s use would have been damaging to LEGO’s reputation, either through confusion of purchasers, belief by the public that the goods are somehow supplied/licenced by LEGO, or damage caused by inferior goods.

The request for invalidity was upheld on all grounds, and the mark was deemed to never have been registered. It is another win for LEGO, who have been quite successful in gaining broad protection for their brand over the years. Its long-standing reputation and substantively unchanged use for over 35 years no doubt has an influence on this, but it is their ability to show this with substantial evidence, ranging from extensive financial records, examples of LEPIN’s use of the mark, and examples of customer confusion, that demonstrates to other businesses the evidence required to secure this protection.

 By Sian Evans