Cleveland Scott York’s top tips on how to trade mark a medical device

Our top tips for effectively protecting marks in the medical devices sector split into recommendations which apply generally in relation to all industries, and those which are sector-specific. (more…)

OHIM renamed European Union Intellectual Property Office

As part of a package of reforms of EU trade mark law, OHIM (also known as the CTM Office) has now been renamed the European Union Intellectual Property Office (EUIPO).

 New terminology will also now be used for “Community Trade Marks” (CTMs) – they will now be known as European Union Trade Marks (EUTMs).

 The Office’s revamped website, reflecting these changes, can be found here:

 https://euipo.europa.eu/ohimportal/en/

 We report on the most significant of the trade mark law reforms here.[:]

The Glee Club Wins but What About Series Trade Marks?

The English owner of THE GLEE CLUB trade mark achieves victory against Twentieth Century Fox – but significant questions of law about series trade marks remain.

Comic Enterprises Limited opened a stand-up comedy venue in Birmingham, under the name THE GLEE CLUB, in 1994. It has operated a small number of similar venues in the UK since that date, although latterly also providing live and recorded music, as well as stand-up comedy. In 1999, Comic Enterprises registered its THE GLEE CLUB mark, as a series mark registration, and as represented above. (One of the representations of the mark claims colour as an element and the other is simply in black and white.)

Twentieth Century Fox Film Corporation launched a musical comedy television series in the UK, under the name GLEE, in late 2009 and has since generated significant publicity and audience. Comic Enterprises sued Twentieth Century Fox for infringement of their THE GLEE CLUB registration and were successful in both the High Court and now most recently in the Court of Appeal. A large proportion of the Court of Appeal’s judgment focuses on the question of the evidence of confusion adduced by the Claimant and points of law about the test for a likelihood of confusion.

One issue that was raised by the Court of Appeal, however, and was not resolved was that of the meaning and scope of protection of “series” trade marks under the UK Trade Marks Act. (Series mark registrations, as historically understood, are intended to facilitate protection of variations of marks, where those variations differ only as to “matters of a non-distinctive character”. An example of a historically acceptable series might be a cartoon character in a variety of different poses.)

In fact, the Court of Appeal went so far as to say that the question arose at the appeal hearing as to whether series marks were compatible with EU law. Whilst the Court appreciated the general importance of the issue, it indicated that it would, “if necessary”, give further directions for the resolution of this issue, after giving its main judgment. It is not clear whether the Court of Appeal will at a later date give further judgment on this issue.

In the absence of any further judgment, it is clear that a very serious difference of opinion has been raised between the UK Intellectual Property Office and the High Court as to the meaning and scope of series trade marks. The Court of Appeal explained that the UK IPO’s position, as set out in its written submissions to the Court, is that series marks are wholly compatible with EU law and that:

“a series of trade marks is a bundle of separate and individual trade marks each of which must comply with the requirements of the Directive, and each of which is entitled to the protection afforded to every trade mark under EU law”.

This is in direct contrast to earlier findings of the High Court, for instance in the decision of Mr Justice Birss, in Thomas Pink Limited v Victoria’s Secret UK Limited, where the judge found that:

“When faced with a series mark it is necessary to bear in mind that there is only a single registered trade mark. All the instances in the series are manifestations of the same mark. So in order, for example, to carry out a comparison with a sign so as to assess infringement, it is necessary to work out what the single registered mark is so as to provide a single point of comparison with the sign alleged to infringe”.

This would appear to reflect an entirely different approach to the meaning of a series of trade marks and the infringement rights granted by such a registration. Absent resolution of the issue by the Court of Appeal, therefore, we are left with the following unattractive and contradictory propositions:

1          According to the Court of Appeal, series marks may in fact be contrary to the requirements of the underlying EU Trade Mark Directive (and, as a result, potentially may be invalidly registered);

2          According to the High Court, registration of a series of trade marks constitutes protection for, in essence, a single trade mark and relevant tribunals need to assess what is the underlying single mark protected (that may not be immediately apparent on the face of the register);

3          According to the IPO, registration of a series of trade marks constitutes a bundle of different and separate, but related, trade marks.

In THE GLEE CLUB case, the registration in issue comprised two quite closely related, though not identical, trade marks. There are, however, a very large number of series mark registrations on the UK register which comprise more significant numbers of marks, with more significant variations. It is hoped that the UK Courts will soon have the opportunity to bring clarity to this issue, given the uncertainty that now is placed on the meaning and scope of protection of those series marks.

Brexit: its impact on trade marks in the UK

David Cameron’s attempt to renegotiate a new settlement between Britain and the other 27 countries of the EU is a hot-news topic, but very little has been written about the impact of a Brexit on Trade Mark law in the UK. As most of our clients will know, whilst it is possible to protect trade marks in the UK by filing national applications at the UK IPO, it is also possible to protect them in the UK via the Community Trade Mark (CTM) system – soon to be renamed the EU Trade Mark system. The CTM system, operating in parallel with the national filing systems in each EU country, has been remarkably successful, given that it is a relatively inexpensive way of protecting marks in all 28 member states. Indeed, many of our clients have opted for the CTM system over the years precisely because of the cost benefits.

If the UK were to leave the EU, the option of protecting trade marks in the UK via the CTM system would disappear. But what would happen to existing CTMs?  We have the example of how the CTM system was affected by new member states joining the EU – in those cases, complex transitional measures were implemented to seek to adjudicate on the trade mark conflicts that would inevitably arise. Little has been written about what would happen if a country were to leave the EU. Given Britain’s complex relationship with the EU, there is likely to be a long transitional period, and events would not move quickly. But one option may be for existing CTMs to be divided into CTMs and national UK marks, as an automatic process, or as a process which requires the Trade Mark owner to make an application to do so. And once the CTM has been divided in this way, it is clear that any remaining CTM registration would not be sustained on the basis of use in the UK, and would have no further effect in the UK. Nevertheless, there will likely be vigorous negotiation on precisely how the restructuring is achieved since both British companies, and companies abroad, will likely have a keen interest in maintaining trade mark protection in the UK, given the size and importance of its market.

For the moment, whilst we know that a referendum will take place, we do not know when this will be, or, of course, the outcome. In the event, however, that the UK opts to leave the EU, there remain wholly unanswered questions as to how this would affect trade marks and other intellectual property rights in the UK which have been the subject of European harmonisation for the past thirty years at least.

High Court Ruling on Nestle’s Four Finger Chocolate Bar Shape – Not Registrable As A Trade Mark

The High Court of England and Wales has just rejected Nestle’s appeal against the Registrar of Trade Mark’s decision to reject the shape of its four-finger KITKAT chocolate bar for trade mark registration in the UK.

The UK Registrar found the shape applied for to be unregistrable for all goods except “cakes” and “pastries”, and, found that Nestle had demonstrated insufficient evidence of its acquired distinctiveness through use.

Nestle’s appeal challenged the Registrar’s findings. In particular Nestle argued that it had shown sufficient distinctive character acquired through use, via the results of a survey in which over half of those who took part recognized or used the word “KitKat” in their response, thus identifying the image of the four-finger shape with Nestle’s KITKAT product.

Cadbury cross-appealed against the acceptance by the Registrar of the mark for “cakes” and “pastries”.

In an earlier judgement last year, Justice Arnold allowed Cadbury’s cross-appeal and found that the Registrar was incorrect to accept the mark for registration for “cakes” and “pastries”. Arnold referred to the CJEU for a preliminary ruling on 3 questions (concerning acquired distinctiveness of the mark through use, and, necessity for the product to be shaped in a particular way in order to obtain an technical result).

Following the CJEU ruling, Justice Arnold has now completed his decision, and has found that the Registrar of Trade Marks correctly held that the shape of the bar was devoid of inherent distinctive character, and, that Nestle had not shown sufficient acquired distinctive character in it, as a trade mark.

In particular, the Registrar had been correct to conclude that whilst Nestle’s survey had shown association of the chocolate bar shape among consumers with the KitKat product/Nestle,  it hadn’t shown that consumers were, in fact, relying on the shape itself in a trade mark sense, ie as the indicator of the source of the product:

“In my view, the applicant has shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery (only), but not that consumers have come to rely on the shape to identify the origin of the goods. This is because:

  1. i) There is no evidence that the shape of the product has featured in the applicant’s promotions for the goods for many years prior to the date of the application;
  2. ii) The product is sold in an opaque wrapper and (until a few months before the filing of the application – and then only for a subset of the goods placed on the market), the wrapper did not show the shape of the goods;

iii) There is no evidence – and it does not seem likely – that consumers use the shape of the goods post purchase in order to check that they have chosen the product from their intended trade source.

In these circumstances it seems likely that consumers rely only on the word mark KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KIT KAT (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

The full judgment of the court can be found here.[:zh]The High Court of England and Wales has just rejected Nestle’s appeal against the Registrar of Trade Mark’s decision to reject the shape of its four-finger KITKAT chocolate bar for trade mark registration in the UK.

The UK Registrar found the shape applied for to be unregistrable for all goods except “cakes” and “pastries”, and, found that Nestle had demonstrated insufficient evidence of its acquired distinctiveness through use.

Nestle’s appeal challenged the Registrar’s findings. In particular Nestle argued that it had shown sufficient distinctive character acquired through use, via the results of a survey in which over half of those who took part recognized or used the word “KitKat” in their response, thus identifying the image of the four-finger shape with Nestle’s KITKAT product.

Cadbury cross-appealed against the acceptance by the Registrar of the mark for “cakes” and “pastries”.

In an earlier judgement last year, Justice Arnold allowed Cadbury’s cross-appeal and found that the Registrar was incorrect to accept the mark for registration for “cakes” and “pastries”. Arnold referred to the CJEU for a preliminary ruling on 3 questions (concerning acquired distinctiveness of the mark through use, and, necessity for the product to be shaped in a particular way in order to obtain an technical result).

Following the CJEU ruling, Justice Arnold has now completed his decision, and has found that the Registrar of Trade Marks correctly held that the shape of the bar was devoid of inherent distinctive character, and, that Nestle had not shown sufficient acquired distinctive character in it, as a trade mark.

In particular, the Registrar had been correct to conclude that whilst Nestle’s survey had shown association of the chocolate bar shape among consumers with the KitKat product/Nestle,  it hadn’t shown that consumers were, in fact, relying on the shape itself in a trade mark sense, ie as the indicator of the source of the product:

“In my view, the applicant has shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery (only), but not that consumers have come to rely on the shape to identify the origin of the goods. This is because:

  1. i) There is no evidence that the shape of the product has featured in the applicant’s promotions for the goods for many years prior to the date of the application;
  2. ii) The product is sold in an opaque wrapper and (until a few months before the filing of the application – and then only for a subset of the goods placed on the market), the wrapper did not show the shape of the goods;

iii) There is no evidence – and it does not seem likely – that consumers use the shape of the goods post purchase in order to check that they have chosen the product from their intended trade source.

In these circumstances it seems likely that consumers rely only on the word mark KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KIT KAT (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

The full judgment of the court can be found here.[:ja]The High Court of England and Wales has just rejected Nestle’s appeal against the Registrar of Trade Mark’s decision to reject the shape of its four-finger KITKAT chocolate bar for trade mark registration in the UK.

The UK Registrar found the shape applied for to be unregistrable for all goods except “cakes” and “pastries”, and, found that Nestle had demonstrated insufficient evidence of its acquired distinctiveness through use.

Nestle’s appeal challenged the Registrar’s findings. In particular Nestle argued that it had shown sufficient distinctive character acquired through use, via the results of a survey in which over half of those who took part recognized or used the word “KitKat” in their response, thus identifying the image of the four-finger shape with Nestle’s KITKAT product.

Cadbury cross-appealed against the acceptance by the Registrar of the mark for “cakes” and “pastries”.

In an earlier judgement last year, Justice Arnold allowed Cadbury’s cross-appeal and found that the Registrar was incorrect to accept the mark for registration for “cakes” and “pastries”. Arnold referred to the CJEU for a preliminary ruling on 3 questions (concerning acquired distinctiveness of the mark through use, and, necessity for the product to be shaped in a particular way in order to obtain an technical result).

Following the CJEU ruling, Justice Arnold has now completed his decision, and has found that the Registrar of Trade Marks correctly held that the shape of the bar was devoid of inherent distinctive character, and, that Nestle had not shown sufficient acquired distinctive character in it, as a trade mark.

In particular, the Registrar had been correct to conclude that whilst Nestle’s survey had shown association of the chocolate bar shape among consumers with the KitKat product/Nestle,  it hadn’t shown that consumers were, in fact, relying on the shape itself in a trade mark sense, ie as the indicator of the source of the product:

“In my view, the applicant has shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery (only), but not that consumers have come to rely on the shape to identify the origin of the goods. This is because:

  1. i) There is no evidence that the shape of the product has featured in the applicant’s promotions for the goods for many years prior to the date of the application;
  2. ii) The product is sold in an opaque wrapper and (until a few months before the filing of the application – and then only for a subset of the goods placed on the market), the wrapper did not show the shape of the goods;

iii) There is no evidence – and it does not seem likely – that consumers use the shape of the goods post purchase in order to check that they have chosen the product from their intended trade source.

In these circumstances it seems likely that consumers rely only on the word mark KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KIT KAT (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

The full judgment of the court can be found here.[:]

EU Trade Mark Law Reform

The Community Trade Mark Amending Regulation was published in December and will enter into force on 23 March 2016. This new legislation implements long-discussed proposals for reform of EU trade mark law. As part of the reform and updating package, OHIM (the CTM Office) will be renamed the EU Intellectual Property Office (EUIPO) and the CTM will be known as the European Union Trade Mark.

There are a wide range of substantive changes to the law including most prominently:

• the abolition of the “3 for the price of 1” class fee structure for both trade mark applications and renewals. Instead, fees are incurred on a class by class basis. Notwithstanding this, applicants can expect to make significant savings as fees in general will be reduced (starting at €850 for filing in one class and an additional €50 for each extra class).

• an amendment to the period for filing opposition to EU designations of International Trade Mark Registrations. This period currently begins 6 months after publication and expires 9 months from publication. Under the new rules, the period runs 1 month from publication and expires 4 months from publication.

• The setting of a six-month period for proprietors of existing trade mark registrations to amend the specification of goods/services under their trade marks to be IP TRANSLATOR-compliant, where they wish to do so. (The IP TRANSLATOR decision of the Court of Justice held that where a proprietor of a trade mark filed before 22 June 2012 had used in its specification the “class heading” description of the Nice Classification, that description would be deemed to include not all of the goods/services of that class but those goods/services in the alphabetical list of the Nice Classification – which could still be a significantly broader range of goods/services than would be the case under a “literal” reading of the class-heading description used. The new Regulation now obliges a proprietor within the grace period to explicitly state that it intended to cover all goods/services in the alphabetical list, when using the class-heading description, in order to obtain that coverage. The intention being to ensure as far as possible that in the future specifications in CTM/EU registrations “mean what they say”.)

• the removal of the requirement to represent a trade mark ‘graphically’ in an application, enabling potentially easier registration of non-conventional marks such as sounds/smells etc.

The broad thrust of these reforms is to modernise the EU trade mark system and increase accessibility for smaller businesses.

Meanwhile, the European Commission has published the new Trade Marks Directive which aims to bring national trade mark systems further into line with each other. This will come into force on 13 January 2016 but Member States have a 3 year period to implement the required changes.

Disclosure Requirements for Proceedings in Intellectual Property Enterprise Court

The specialist IP court for SMEs (the Intellectual Property Enterprise Court) issued a decision this summer in respect of a dispute between the Ukulele Orchestra of Great Britain (UOGB) and the United Kingdom Ukulele Orchestra (UKUO). Our report of that decision is here.

One of the issues raised in that case was the extent to which the German Defendants had complied with the disclosure requirements of the Civil Procedure Rules.  Specifically, the Claimant had applied to strike out the Defendants’ entire defence on the basis that the Defendants had only disclosed redacted electronic documents rather than the original unredacted versions.

The electronic documents in question were third party reviews of the Defendants’ services which the Defendants had placed on their website.  These documents were alleged to include material supportive of the Claimant’s allegations of confusion between the trade marks.  The Defendants consequently redacted the material on their website (with a view to alleviating the dispute between the parties).  Later, in the disclosure process of the proceedings, the Defendants disclosed only the redacted electronic documents when strictly they were under a duty to preserve and disclose the unredacted documents as well.

The Claimant’s argument was that the unredacted reviews, which had not appeared in the Defendants’ disclosure list, made clear that journalists in Germany were not only aware of another Ukulele group trading under the name “Ukulele Orchestra of Great Britain” (i.e. the Claimant) but that the UKUO were inviting confusion.  In the Claimant’s application, it was argued that the failure to disclose the unredacted versions of the stories previously appearing on the Defendants’ site was an abuse of process, justifying the strike out of any defence.

In the event, the Court held that any failings by the Defendants to comply with their disclosure requirements were not so extensive that it was not possible to hold a fair trial or, further, that those failings were suggestive that the Defendants had failed to comply with their disclosure requirements more widely.

Nevertheless, this is an important reminder that parties to proceedings in the UK Courts are under a duty to preserve all documents, including all electronic documents, where litigation is envisaged and to disclose all such documents within the terms of any disclosure order.

It is worth emphasising as well that whilst the specialist court (IPEC) usually limits the terms of the disclosure that parties must make (in the interests of reducing the cost of proceedings), the parties must still preserve all relevant documents to meet any later disclosure order.  This is particularly important where foreign entities are parties to proceedings in the UK Courts and where the specific disclosure requirements under UK law are not necessarily well understood or conventional.  It also emphasises that, whilst the IPEC is a specialised court for SMEs, with a streamlined procedure, that does not mean that the parties are under any less of a burden to comply with the general Civil Procedure Rules.

Renewal Reminder Scams Penalised by Court

Proprietors of registered designs, trade marks and patents pay renewal fees to the Intellectual Property Office (“IPO”) to keep their rights in force. Patent and trade mark attorneys frequently provide renewal reminder services in order to assist with the maintenance of a patent, design or trade mark portfolio.

In recent years, some companies have been established which purport to provide alternative renewal services and frequently those companies have been branded with names and logos which suggest that they are connected with official bodies. The IPO’s previous practice in addressing this issue had been merely to seek to warn proprietors that third parties were operating sharp practices of this type.

A recent example of that practice is the company Intellectual Property Agency Limited (“IPA Ltd”).  In this instance, the IPO took more proactive action and brought proceedings for passing off and trade mark infringement against the IPA Ltd and its sole director and shareholder Mr Harri Mattias Jonasson. Judgment was issued on 10 November 2015.

The court found that IPA Ltd had generated a gross profit of £1,106,510 from its renewal service and found there to be instances of gross overcharging, an example being a charge of £11,520 made to pay a £2,250 renewal fee. Nevertheless, the court also found that in the majority of cases IPA Ltd did in fact pay the renewal fee and it made the point that there was nothing inherently unlawful about such a business model (even at inflated charges).

Given the name and logo used by IPA Ltd, however, the court held that, for at least a large proportion of the recipients who had acted on the IPA Ltd reminder, such recipients had “accepted IPA Ltd’s misrepresentation that it was the relevant government IP body and paid the fee requested because they took on trust that this was the official fee”.  The court concluded therefore that IPA Ltd’s actions had amounted to passing off. (It held, interestingly, that damage to the IPO’s reputation, by not preventing IPA Ltd’s activity, was sufficient damage for the purposes of a successful claim in passing off.)

The court also held that IPA Ltd had infringed the IPO’s registered trade mark for INTELLECTUAL PROPERTY OFFICE (stylised).  In conclusion, the court ordered the defendants to pay compensation to the IPO, by way of an account of profit of £500,000.

This is an unusual case where the IPO has sought to assert its own intellectual property rights in the courts in order to reduce customer confusion. This may provide a stark warning to other such providers of renewal reminder services but it also underlines that intellectual property proprietors should take caution when receiving any unsolicited approach for payment of renewal fees.

International registration of trade marks has become easier

The International system of registration of trade marks – which is also known as the ‘Madrid’ or ‘WIPO’ system – can bring significant cost savings for brand owners who want to protect their marks in several countries.

That is because the cost of setting up an International registration is generally lower than the total cost of filing separate direct national applications in each country of interest.

Under the International system a single application is filed for registration as an International trade mark, designating within the registration the countries in which protection is wanted. There is no need to use attorneys in the various countries unless an owner wishes to dispute any objection which might be raised to protection being granted. (The national trade mark offices in the countries designated can object to the request for protection, and in some countries third parties can object to protection.)

Currently 95 countries are members of the system. However, until now protection in some member countries has not been available to some owners, due to requirements under two parallel interlocking sets of administrative rules governing the system. Now, from 31 October 2015, all new International registrations will be governed by a single set of rules, so that seeking protection in all member countries will be a possibility for all owners, subject only to the owners being domiciled in or having a commercial establishment in a member country.

Assos v Asos – the end of a saga

On 29 July 2015 the Supreme Court refused to hear Assos’ appeal in the long-standing Assos v Asos trade mark dispute. As a result, the decision of the Court of Appeal handed down in April this year ([2015] EWCA Civ 220) stands.

The Court of Appeal found that whilst use of the trade mark ASOS on clothing, by the online fashion retailer Asos, infringed the ASSOS CTM of the Swiss high-end cycling gear manufacturer Assos, the former could rely on the own name defence.

In finding infringement on the basis of likelihood of confusion with the ASSOS CTM and detriment to the distinctive character of that mark, the Court emphasised the need to consider the notional and fair use of ASSOS in relation to the full spectrum of goods covered by  Assos’ specification, rather than limiting the assessment to only those particular kinds of goods which Assos were likely to sell (cycling clothing).

With regard to the own name defence, whilst Asos did not conduct any clearance searches prior to adopting the ASOS trade mark in relation to its own-branded clothing and continued with the mark after becoming aware of Assos’ CTM, the Court found that the own name defence was made out as Asos acted fairly towards the legitimate interests of Assos in that (1) it adopted the ASOS mark as an acronym for AS SEEN ON SCREEN, and without knowledge of ASSOS (or Assos) (2) it never sold cycling gear or took any steps towards Assos’ business model, and (3) no actual confusion between the businesses occurred.

It is, however, worth noting Lord Justice Sales’ firm dissent on the applicability of the own name defence. In his view, a greater weight should have been given to the interests of the CTM proprietor and the relevant public in the application of the “honest practices” standard. In his judgment, Sales LJ stressed that Asos’ investment in its mark, where it was aware of ASSOS (and Assos) “was in a sense precarious and deserves to carry less weight”. Whilst the Assos v Asos saga has now been concluded, Sales LJ’s comments may echo in future cases.