Damages for Breach of Confidence – Get the Claim Right
The key issues when claiming damages is evaluating loss. Sometimes the basis is rough and ready; sometimes it is perfectly scientific. In the case of Marathon Asset Management (read the full judgment here) the judge took the view that this was a high risk attempt to obtain jackpot damages – in this case £15M – on what proved to be a spurious basis. The case explores the bases for damages, and the Court ultimately gives a very low award – £2!
The case pertained to the misuse of confidential information by exiting employees who intended to set up a competitor. The defendants took a large number of electronic files, which they kept (largely unused) for a period of time and gave up to the other side when proceedings were threatened. You might think that was the end of the matter… but no!
The Claimant company Marathon brought the claim for £15M on the basis that the files had been taken (albeit largely unused) and damages were required to be paid on the basis of what the defendants would need to pay to make unlimited use of the data. They claimed this figure on a basis taken from a case called Wrotham Park, which the Court called “licence fee damages”. Marathon said that the figure on that basis was £15M.
Rejecting that figure, the Court noted that Marathon was unable to point to any loss to them (or gain to the Defendants) through the “taking” of these electronic files. The Court concluded that in fact the “wrong” for which the Court was giving compensation was the mere copying onto the USB drives – remember that there was no claim that these files had been used. As a result, and in the absence of solid reasons to value that act higher, the Court awarded nominal damages of £2.
This case shows a number of interesting points about claims of infringement and how to defend them:
- In breach of confidence cases, the KEY remedy (unless the other side have made use of the information) is the injunction from use of the information, and the handing over of the information;
- Any claims for damages must have as their basis EITHER compensating the person who had the rights for their loss OR removing the profits occasioned by the wrong-doing;
- Blank/broadbrush requests for damages which are not principled will leave the claiming company open to an award of nominal damages – the Court needs to award SOME damages, but if you don’t put forward a reasoned and reasonable explanation as to why your figure is sound you leave the Court in difficulties;
- If you have confidential information give it back quickly and give undertakings not to use it.
- If the owner of confidential information seeks a high figure (or has no real basis for their claim to damages) then make an offer to pay a token figure in recompense.
It is not clear whether the Defendants made what is called a Part 36 offer – which is an offer which has cost consequences if the claimant doesn’t beat it (notably that the Claimant would need to pay the costs of the Defendant even though the claimant “won” nominal damages). If they did then this could be a costly battle, although given that the claimant is an investment management business the legal fees may not be that much of an issue!
Wood IP supports IP Pro Bono Scheme
Wood IP is pleased to be a part of the IP Pro Bono Scheme launched today (17 October 2016) by HHJ Hacon of the UK Intellectual Property Enterprise Court.
Offering pro bono services has been part of the fabric of the firm since its inception, and the new scheme provides further support and scope to help those who cannot otherwise obtain top quality legal assistance. Wood IP will be one of the first firms offering its services to the public via the scheme, and we are honoured to be able to take our place in doing the right thing
UK Courts Extend cases Where Internet Service Providers can be targeted
In the world of counterfeits, the internet is often a massive game of “WHACK-A-MOLE”. Hit one website and another pops up – quite often the same one on a different server and/or under a different domain.
If you are chasing this then one option is to move from attacking the supply of internet services to the infringer to attacking the supply of internet services to the consumers. If consumers cannot access the sites then that removes the issue. It is not an entirely new strategy for copyright infringement – for some time the English Football Association has been seeking orders from the Courts that the UK internet providers should block access to infringing sites.
The UK courts extended this, however, in the recent Cartier case – the Court held that it had the right to make similar orders in the case of trade mark infringement, and that the cost of implementing the orders was to be borne by the internet service providers (ISPs). This was important for two reasons:
- In the case of copyright, these orders had been obtained based upon provisions of the copyright legislation introduced to bring European law into effect – there was no corresponding provision in trade mark law. The Court found that its general jurisdiction, or alternatively implementation of the enforcement directive, gave it the power notwithstanding that trade mark law did not give the right.
- The ISPs argued that there was a cost to implementing the orders and any subsequent changes to the orders (such as when a site moves and the block has to extend to cover the additional site). The ISPs believed that the brand owner should bear this cost. The Court rejected this, much to the concern of the ISPs.
These conclusions have been confirmed by the Court of Appeal, and it therefore seems unlikely that they will be overturned in the near future. By indicating that the right to make the order comes from the general jurisdiction of the Court, the Court of Appeal also made the decision “BREXIT-proof”, in that it does not rely upon the Court having to aply European law.
Time will tell whether this leads to further innovative orders from the Court – as technology increases, it is inevitable that the Courts will be asked to assist brand owners to fight infringements effectively and innovatively.
If you would like to discuss this decision or any infringement issues you have then please get in touch!
Clarification over Court Fees for IP Claims – cheaper than you thought!
With the rise a while back in court fees, there has been some question over what fees are payable (and how to reduce the fees paid upfront). On claims for damages over GB£200k the court fees are GB£10k for the damages sought.
One way that had been suggested was to make a declaration of likely damages and to undertake to pay the difference if the level of damages proves to be higher (particularly if the level of infringement is shown to be higher at the inspection stage). This could be subject to abuse, and there was some concern that the stated figure for estimated damages could “box in” a claimant to a limited amount of damages, particularly where the likely level of infringement was known.
The decision of Master Clark in Lifestyles Equities and Anor v. Sportsdirect.com Retail Limited and Ors clarifies that where a claim is made for an inquiry as to damages or an account of profits, this is to be treated as “non-money” relief alongside the non-money relief of an injunction such that only the non-money fee is payable – £528. Given that IP cases are typically split trials (meaning that there is a first trial to decide if there has been infringement and a second trial – if the first is successful – to decide the amount of damages to be paid by the infringer), at the first (liability) stage all that is required to be paid is that small amount.
Whilst this is only a small part of the cost of litigation, for some this will make a big difference and of course it drops the potential upfront cost and disbursements you may need to find or seek from a client. The decision does seem to suggest an awfully low fee for what can be lengthy and complicated cases before the courts, so it is possible that this decision will be challenged in the future. We will keep you informed!
Wood IP is one of the few specialist trade mark and design attorney firms in the UK actively engaged in IP litigation. If you do have infringement issues then please do consider us, and if you have any questions or concerns then please get in touch for a no-obligation discussion.
UK Court clarifies position on “Colour/Colour Combination” marks
Energy drink.. blue and silver… any ideas? I would imagine most people would say RED BULL. Colour combinations, or the use of a particular colour on packaging, can be a key brand indicator. A product with such strong recognition is likely to have competitors that seek to use similar colour combinations, and so at some point the most popular brands seek to protect what some call “unconventional trade marks”. A recent decision of the UK High Court (28 June 2016) has confirmed that in choosing a mark, it is important to ensure that it does not disclose multiple possible marks.
The decision resulted from an application by Sandoz to invalidate a registration of Glaxo Wellcome of a mark represented by the image below and a description:
“The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler.”
Sandoz argued that this mark was invalid since it did not disclose a sign and the mark failed to comply with the requirements for it to be deemed to be “graphically represented”. Whilst this outcome seemed likely given the outcome in the “Cadbury purple” case, prior cases put this in doubt. Many years prior there had been a case (“Heidelberger Bauchemie“) indicating that colour combinations could be trade marks, and there is a pending case pertaining to Red Bull’s blue/silver colour combination. Glaxo argued that due to the European Court’s confirmation that a colour combination could be a trade mark in Heidelberger Bauchemie, it must be the case that Glaxo’s registration was valid.
HJH Hacon, sitting as a judge of the High Court, found for Sandoz. Heidelberger Bauchemie can be reconciled as it merely found that a colour combination could be a trade mark, but it confirmed that the other requirements needed to be complied with (which the Cadbury mark and the Glaxo mark ultimately did not do). In his view the mark set a puzzle in defining the meaning of the mark, and even where it could be understood the form was unclear. As a result the registration was cancelled.
The Cadbury case was a turning point. Other than the parties, not many expected Cadbury to lose on the basis that their colour mark was not acceptable because it was not a sign but multiple signs – most thought it was simply unclear. The problem is that where a party wants to protect a colour (for example, Coca Cola might want their specific shade of the colour red) this will in most cases produce a result where multiple marks are protected. Brand owners might argue (and I would agree) that a description of “the colour red as applied to the surface area of packaging” is not unclear – a person looking at the register would understand that ANY use of a similar colour would infringe. The question of whether a brand owner should be entitled to such a broad registration is another matter, and one which would require a huge amount of evidence.. but should be open to a brand owner.
For the moment brand owners need to file a representation which identifies a single mark – an exemplary version – and then need to argue that the third party’s use is confusingly similar. This is less beneficial for brand owners than having them obtain broader (but clearly defined) rights via the trade mark registries which then encompass variants, but that is the law. It is worth noting that whilst EU trade mark law is set for amendment – including the law on how a mark may be represented – this will not affect the position on colour marks and colour combinations.
If you have any questions about this case then please get in touch – if you want us to check whether any of your rights are vulnerable also get in touch.
SUPER HEROES Trade Mark – nearly an Achilles Heel for DC/Marvel
Last week the press in the UK was full of the story of a case in which a “David” called Graham Jules vanquished DC and Marvel in a case about the use and registration of the mark BUSINESS ZERO TO SUPERHERO (DC and Marvel jointly owning a registration of the mark SUPER HEROES (amongst other variants)). At the time of the story there were two pending actions before the UK Intellectual Property Office due for a hearing – the opposition by DC/Marvel and the counter – an invalidity action by Mr Jules. The assumption at the time was that DC/Marvel would have settled the matter partially on the basis that the invalidity action was to be withdrawn. It was a surprise that the invalidity case had its decision published a few days ago.
In summary, the outcome is that DC/Marvel win, but in my opinion the arguments they made to win could place a dent in future cases. Mr Jules’ argument was that the marks were void as at the date of filing in December 1979. This meant that Mr Jules had to file evidence demonstrating the position as at this date, which ultimately he did not succeed in doing (although there was evidence from before the filing date and some instances of use from after that date).
The Hearing Officer found that it was not sufficient that he “[made] a finding that today’s average consumer would perceive the mark as indicating solely that such goods are decorated with depictions of super heroes”. It was also submitted by DC/Marvel’s representative that:
“the modern entertainment and commercial landscapes are very different to what they were in 1979. She pointed out that, in recent years there has been an explosion of comic book genre movies and related merchandising. I note this submission. It has not been supported by evidence but as an average consumer of main stream entertainment of this kind, the submission would appear to have some basis”.
Although DC/Marvel won on this occasion, I think it is likely that the DC/Marvel portfolio will come under attack in the future, possibly armed with the concessions and arguments made in this case by their representative and with the finding of the UKIPO. A number of their registrations seem vulnerable if the finding in this case is followed. It is not clear why the settlement did not cover the invalidity proceedings, as the usual agreement would involve the parties ceasing all actions. Given that DC/Marvel have already had to face Mr Jules parading his “win” in the press, this further decision must make for further painful reading.
UKIPO Trade Mark Cases – Week to 18 December 2015
SCA had sought to protect the mark INSTADRY in the UK via an international registration. Proctor & Gamble opposed this based upon an earlier CTM for the mark InstantDry, a mark which was sufficiently old that proof of use was required. In both cases the goods included feminine hygiene products, including sanitary pads. Late in the process SCA requested that feminine hygiene products be deleted from the application, leaving the goods of the application as including incontinence products.
P&G had used its INSTANTDRY mark together with other marks, and had done so with and without the “TM” symbol. Notwithstanding this, the Hearing Officer concluded it would be possible for the use to be accepted. The exhibits showed that there was mention of the products on various websites. P&G did not, however, include turnover figures (or any attempt at turnover figures) and as a result the Hearing Officer concluded it was not possible to conclude that there had been genuine use of the earlier mark. The result of this was that the opposition failed.
COMMENT: this is a very hard-line approach to the evidence. There was evidence of the goods being sold by prominent retailers and examples of websites showing the product, but the lack of turnover figures was deemed decisive. The Hearing Officer based the decision to reject the assertion that there had been genuine use on the PLYMOUTH LIFE CENTRE and CATWALK decisions, which made it clear that the appreciation of the evidence needs to take into account what was shown and what was not shown, and remembering who is in a position to prove a point. If a party has the ability to prove a point and does not do so then it is open to the Hearing Officer to make an adverse finding or be highly sceptical. Clearly, of all the evidence, the turnover figures are ostensibly the easiest to provide (or, if not, volumes). I can only imagine there is something more to why the details were not provided.
O/593/15 ASTON HILL
Aston Hill Limited applied to register ASTON HILL for retail services connected with motor vehicles, servicing of motor vehicles and events pertaining to motor vehicles. You may be unsurprised to learn that Aston Martin Lagonda, owners of the ASTON MARTIN trade mark, opposed the registration. It is worth noting that as part of its grounds for claiming that the use of the application would take advantage of the repute in its mark it stated:
The name of the company was inspired by the racing exploits of one of the founders, Lionel Martin, at the Aston Hill Climb race in 1914. His success at this event helped create an automotive icon that has become synonymous with British motor manufacturing. The Aston Hill-Martin story is a fundamental part of our client’s heritage and is one that is known the world over..
So far so good? What if I told you that the Hearing Officer accepted as a notorious fact (i.e. accepted without evidence) that ASTON MARTIN is a world famous luxury car marque? What if I now told you they lost?
The Hearing Officer found that the marks were simply not similar enough for there to be a likelihood of confusion (and rejected the “passing-off” ground concisely on the same findings) and concluded that the claim to repute on services was minimal. It is worth noting that they did not rely upon any reputation for the vehicles themselves.
COMMENT: Although the Hearing Officer gave an indication that the same outcome would have been achieved if the repute in ASTON MARTIN for cars was relied upon, I simply cannot accept that the Hearing Officer can have such clairvoyance, since the arguments would have needed to be quite different. If the Hearing Officer meant with this evidence alone and a claim to repute in the cars then it would have failed then I can accept that.
The main factual assertions which Aston Martin had to prove were the meaning of the words ASTON HILL, its historical context, and (most importantly) that there was broad awareness of this meaning. Whilst they alleged that there were references in books, and whilst they tried (unsuccessfully) to introduce footage from a TV programme into the evidence, the evidence simply did not prove this.
They also provided arguments that marques are often shortened (e.g. ROLLS ROYCE becomes “Rolls”). It seems from the report that they did not then take that to the next level of argument regarding the services, i.e. did not provide evidence as to how garages and other services are referred to. I can only speculate that if there had been evidence to the point that an ALFA ROMEO garage in the Chelsea area of London would be referred to as ALFA CHELSEA, perhaps the case might have succeeded. Perhaps no such evidence exists, or could be obtained at reasonable cost.
O/592/15 VDL car hire.com
VDL Car Hire Ltd applied to register the word mark VDL in relation to vehicle hire/transportation services. This was opposed by VD Leegte Behher B.V. on the basis of an earlier registration of a logo which contained the letters VDL and covered vehicles. The earlier right being old enough to be subject to proof of use, the applicant demanded as part of the procedure that the opponent prove genuine use of it.
Rejecting the opposition, the Hearing Officer found that the evidence did not prove genuine use of the earlier mark. The form of the mark was different from that registered in a way which altered the distinctive character, and there was cogent evidence missing which meant that the Hearing Officer could not conclude that the mark had been used on goods. He was, however, willing to consider the evidence of the way in which the mark was used on the basis of “preparations for use”.
COMMENT: The Hearing Officer could have rejected the evidence on the basis that it did not show use, since the volume and value of the alleged use were missing, as they were in the INSTADRY case also reported this week. That he went on to consider the manner of use notwithstanding this on the basis that he could consider the use as preparations to use could be seen to reflect a desire to answer all the relevant points (and the Hearing Officer is to be applauded for that). Evidence of genuine use can be rejected on multiple grounds and parties tend to attack the use on a number of fronts. Hearing Officers sometimes only decide on the basis of one of those grounds and make no mention of the others, leaving the owner of the right with the temptation to appeal on that single point. It is far better for the parties if the Hearing Officer answers them all, and effectively closes the door on a successful appeal.
The case also underlines the importance of getting the basic evidence together if it is available. Proof of use should not be difficult if there is use, and parties can even use investigators to find the evidence for them rather than use internal staff.
O/590/15 handsam Schooltripsadvisor
An application was filed for the mark HANDSAM SCHOOLTRIPSADVISOR in the following for what can broadly be described as printed matter, business advisory services, advisory services pertaining to education and consultancy pertaining to health and safety. The mark of the application had dots in the C and the second O of SCHOOL, suggesting eyes.
The application was opposed by TRIPADVISOR LLC, the owner of earlier rights in the mark TRIPADVISOR, which is uses with an “owl” device which has two circular eyes. Prior to the hearing, the parties agreed a list of agreed facts, including that the TRIPADVISOR marks were well-known in the UK, with high recognition and trust, and that the users of the applicant’s services would be amongst the consumers of TRIPADVISOR.
The Hearing Officer considered that there was at best a moderate level of similarity between the respective services, and that at best there was a moderate level of similarity between the application and the word mark, and a low level for the version which encompassed the “owl”. It was the case that for the agreed services there was a high repute, and this led to enhanced distinctiveness for those services only. Taking all the above into account the Hearing Officer concluded that the marks would not be directly confused. At best, there might be indirect confusion, and as a result the opposition succeeded for :
Class 16: Magazines; Books; Leaflets; Printed guides.
Class 41: Advisory services relating to the organisation of events; Advisory services relating to the organisation of field trips and visits.
But failed for:
Class 16: Printed manuals; Printed matter for educational purposes; Teaching materials for education; Printed matter for instructional purposes.
Class 35: Business advice; Business management advisory services; Advice relating to business information systems; Consultancy relating to business management; Business advisory services for educational establishments.
Class 41: Advisory services relating to education.
Class 45: Consultancy services relating to health and safety; Information services relating to health and safety; Fire safety consultancy services.
COMMENT: The outcome seems fair on likelihood of confusion with the exception of class 41. There must be some question as to the construction of the term “advisory services relating to education” – namely whether “education” includes the provision of trips. If it does then there is a good argument that coverage for these services should have also been refused. We are left with a range of services with little or no obvious connection to TRIPADVISOR, and one wonders commercially where that leaves the applicant.
On a final interesting note, the Hearing Officer found that while the applicant had been more successful, most of the argument and time had be about items on which the opponent had succeeded. As such, each side was to bear its own costs.
An application for the mark WELLBLOCKS for massage equipment and services was opposed on the basis of rights in the mark WELLBOX for identical goods and services found to be identical (“Hygienic, health and beauty care for human beings”) on the basis that massage can be for medical or wellbeing purposes.
The Hearing Officer concluded a reasonable degree of visual and conceptual similarity (box and blocks meaning square or rectangular objects) and a very high degree of phonetic similarity. Whilst the opponent’s evidence did not improve that position, the Hearing Officer concluded that there was a likelihood of confusion, being direct confusion where one is mistaken for the other.
COMMENT: There is not much to add to this case – it seems pretty straightforward!
An application to register the mark EVONTRUS for “pharmaceutical and medicinal preparations and substances; vaccines” was opposed on the basis of a registration for the mark EVONIK covering goods which were conceded by the other side to be either identical or similar.
After finding no likelihood of confusion in relation to vaccines on the basis that these would be administered by medical professionals used to distinguishing between similar marks, the Hearing Officer went on to conclude that there was such a likelihood for products which could be obtained by the average consumer. As a result he invited the applicant to amend “pharmaceutical and medicinal preparations and substances” clearly such as to exclude occasion for confusion on the part of consumers who are not medical or healthcare professionals, indicating that if no amendment was submitted these goods would be refused.
COMMENT: Whilst this is possible, the choice to allow amendment is still relatively unusual. The case was one which was low on evidence, and the parties appear to have simply left much of the work to the Hearing Officer. At various points the Hearing Officer mentions a lack of evidence either way on key issues, and one can imagine the decision going either way.
O/585/15 RAW AUTOMOTIVE
An application for the mark RAW AUTOMOTIVE in a logo format in respect of “vehicle maintenance, vehicle repairs, automotive servicing” was opposed on the basis of rights in RAW in respect of “vehicles” of clothing company G Star Raw C.V. The right relied upon was not of an age where it could be challenged on the basis of non-use.
Concluding that there was a likelihood of confusion, the Hearing Officer concluded that there was a reasonable degree of similarity between “vehicles” and the services of the application. Between the marks there was also a reasonable level of visual similarity, not least because the element RAW of the application was larger than the other elements and the word AUTOMOTIVE is descriptive of the services sought.
COMMENT: It is a classic example of a case where a company has, through its registrations, obtained broad rights which far outstrip its commercial interests. It is easy to criticise G-Star Raw for its monopolistic behaviour, but until a company takes them on and invalidates much of their portfolio through an allegation that their behaviour is “bad faith”, there is not much one can say!
An application for the mark GUSTO for foodservice was opposed based upon a number of rights covering foodservice, most notably the mark CAFFE GUSTO. Although the applicant’s attorney sought to prove that the word GUSTO had a meaning in Italian and Spanish which would be readily understood (thus reducing the distinctiveness of that mark) this was not accepted as known to the UK public. Evidence that the mark was used by others was accepted to some extent, but the Hearing Officer would only conclude that the distinctiveness was at the lower end of the spectrum.
Rejecting an allegation that there could be no likelihood of confusion on the basis that there had been parallel trading, the Hearing Officer suggested that for such an argument to work it must be shown that consumers had been exposed to both marks and had been able to differentiate – there was no such evidence in the case. Taking all the factors into account there was such a likelihood.
COMMENT: The case underlines the difficulties in cases where a word is of low distinctiveness. Whilst the applicant had all the right arguments, on this occasion it did not hit home. The fact that the meaning would not be understood by all was a damaging finding, and one is left to wonder whether a better course might have been to seek to invalidate on the basis that to come the mark CAFFE GUSTO would be understood as descriptive. In these types of cases the bar for invalidation is lower than that in the case of infringement, and a party will find it easier to argue that a mark is completely descriptive (if it is) than to argue that all distinctive value can be stripped from a mark for all of the public so as to rule out confusion.
O/583/15 Grunting Growler
An application to register GRUNTING GROWLER for beer and the retail of beer, beer jugs and beer mugs was opposed on the basis of a logo which incorporated the words GROWLER BEERS UK and covered beer mugs, beer jugs and retail of the same. For those not in the know, a “growler” is a traditional carrier for ale (although the opponent denied that the term was generic).
Accepting that the services were similar, the Hearing Officer noted that the GROWLER element was in different parts of the marks and that there was only a low level of similarity in the marks based around the inclusion of the word GROWLER. He then concluded that the word GROWLER was in fact descriptive of drinking vessels such that there was no likelihood of confusion and the opposition failed on that basis. As confusion would not arise, the Hearing Officer concluded that misrepresentation would not, either. Finally, the Hearing Officer concluded that the mere fact that the applicant may have been aware of the opponent did not make the application one which was made in bad faith, and this ground was also rejected.
COMMENT: This was all about knowledge of the term GROWLER, and the evidence clearly pointed to it being known. Once that finding was made, the rest of the decision had to follow.
UKIPO Trade Mark Cases – Week to 11 December 2015
Another set of reports – do leave comments or get in touch if you wish to discuss them!
An application to register the mark TRADEMARKERS in a logo format was opposed by Mr Mark Kingsley-Williams, who operates and owns the trade marks pertaining to TRADE MARK DIRECT, a firm which registers trade marks. The opposition was based upon grounds that there existed a likelihood of confusion, unregistered “passing-off” rights, that there was a reputation in the mark TRADE MARK DIRECT and also that the mark TRADEMARKERS was descriptive and non-distinctive.
All of the grounds but that there existed a likelihood of confusion were deemed withdrawn on the basis that no evidence was filed, and on the allegation of likelihood of confusion the Hearing Officer concluded that there was no likelihood of confusion. Although there was moderate or above moderate levels of visual, phonetic and conceptual similarity, it was concluded that the mark TRADE MARK DIRECT had only a low level of inherent distinctiveness.
COMMENT: this seems to be the correct outcome, at least without evidence to improve the position of Trade Mark Direct. The case demonstrates the need to file evidence to improve a case where the mark relied upon is weak, and given that the opponent in this case is a company that represents others before the Registry there must have been good reason why evidence was not prepared and filed. Equally, it is not immediately clear why an allegation was made that the mark of the application (TRADEMARKERS in a logo format) was descriptive and non-distinctive when the right relied upon was TRADE MARK DIRECT in plain text, which is arguably far more likely to be deemed non-distinctive and descriptive. Again, there must be a reason which is not clear from the case report.
O-576-15 NO BULL
These were a set of intertwined proceedings, with two parties in different fields (no pun intended) attempting to object to the registration of the other’s application. Duncan Taylor Scotch Whisky Limited had applied to register the mark NO BULL in classes 25 (clothing) and 33 (alcoholic beverages) and class 25 of this application had been opposed by Mole Valley Farmers Limited. Duncan Taylor argued in their defence that they had prior user but did not apply to invalidate any of the rights of Mole Valley. Mole Valley subsequently applied to register a series of two “NO BULL” logos and these were opposed by Duncan Taylor on the basis of their (opposed) application and earlier unregistered rights.
Concluding that the opposition to Mole Valley’s application would fail and the opposition to Duncan Taylor’s application would succeed, the Hearing Officer noted that the use by Duncan Taylor was promotional, was often in the form NO BULL JUST WHISKY and the evidence was no more than trivial, relying upon the WILD CHILD case to the effect that mere decorative use was not enough to found a claim to passing off
COMMENT: It is not clear if there was better evidence, but that which was filed was simply insufficient. It seems from the evidence that Duncan Taylor have a very popular whisky which was the subject of a lot of promotional activity, and we can only speculate that this brought them into conflict with the owners of the clothing brand when they wanted to sell merchandise. A quick search suggests they have not applied to register NO BULL JUST WHISKY, which you might have expected as soon as the NO BULL application was filed, but as always there may be other reasons.
An application was filed to invalidate a registration for a mark which contained the term SAMEDAYDOCTOR and oppose applications number of stylised depictions of the term SAMEDAYDOCTOR on the basis that this was descriptive and/or non-distinctive. The trade mark owner filed evidence to support a claim that the mark had become distinctive through use as well as arguing that it was distinctive without such use. There was a procedural issue as just before the original hearing date the trade mark owner informed the registry that it intended to rely upon evidence before the registry as part of the application process.
Allowing the oppositions and application for invalidity, the Hearing Officer accepted that the marks were prima facie unregistrable, being understood as abbreviations of entirely descriptive words. The addition of stylisation and a device element on the variants was not enough to render them distinctive. Turning to the evidence of use, this was deemed to be insufficient, notably because the evidence of spending large sums on Google AdWords did not detail the adwords used and on the basis that the centres were based in only a few locations.
On the matter of costs, the Hearing Officer allowed an amount by way of compensation for the lost hearing date, but this was not the full amount sought. The Hearing Officer concluded that some items were not appropriate to be claimed (such as research), others were overstated and that the cost of the eventual hearing should be reduced on the basis that the representatives of the applicant/opponent took far too long at the oral hearing.
COMMENT: the case highlights a number of interesting issues. Firstly, it would appear that the evidence of marketing was simply not detailed enough, and this weighed heavily against the trade mark owner. It is also worth noting that much of the evidence relied upon had already been seen by the UKIPO at the examination stage, and yet the applicant/opponent convinced the Hearing Officer to come to a different conclusion on the strength of this evidence. Whilst it is not impossible to overturn findings that the evidence of acquired distinctiveness was sufficient, one might have hoped that the Hearing Officer would have been a little more deferential to the earlier views of the Examination Division.
Finally, whilst the applicant/opponent was ultimately successful, the tribunal pointed to the erroneous financial claims of its attorneys and also its misuse of the oral hearing. It seems that the representative filed a “very full” skeleton argument (code for far too long?) and as a result there was less need for the hearing. A skeleton is meant to guide the tribunal and help identify the arguments, and the oral hearing is intended to assist the tribunal. If you provide what are effectively written final arguments, you should expect that the tribunal takes the view that the oral hearing need not be as long.
This was an opposition to the registration of the word mark MADEWEAR for class 25 (clothing) based upon an allegation that the mark was non-distinctive and was a term customary in the current language or in the bona fide and established practices of the trade. Within the oral hearing the (unrepresented) opponent also sought to rely upon an allegation that the mark was descriptive. Rejecting the opposition, the Hearing Officer found that even though the elements of the mark each had independent meanings which could have some relevance to the goods in question, that was some way from leading to a finding that the mark as a whole could not act to distinguish the relevant goods. As such the allegation that the mark was inherently non-distinctive failed. With regard to the allegation that the term was customary in trade, the evidence provided simply did not show this and the argument failed.
COMMENT: it is notable that the opponent was unrepresented. The case based upon “customary use” showed instances of “made” and “wear” in the same sentence, but not in the right way (e.g. it might say “ready-made ladies wear”) and as such they were insufficient. One wonders whether the case would have been filed at all had the opponent had the benefit of advice at the outset.
As regards distinctiveness, the outcome seems correct. The mark is one which clearly has elements with descriptive connotations, but the resulting mark is effectively nonsensical.
The case pertained to an opposition to registration of the word mark RELATED for “clothing” by Relate, which is a UK-based charity providing relationship counselling which is widely known within the UK. Relate had a number of earlier registrations covering a range of goods and services, including jewellery, clothing, books, printed matter and the like. As well as alleging a likelihood of confusion, Relate also alleged that the use of RELATED would take advantage of the repute in the RELATE mark. Applications to revoke Relate’s earlier rights on the basis of non-use were filed, and it is those revocation actions which were the largest part of the decision.
Revoking a large part of the earlier registrations, the Hearing Officer noted that it was not clarified in the evidence that the alleged use “in relation to” clothing consisted of sales of clothing having Relate as its origin. The Hearing Officer concluded (accepting the applicant’s submissions) that such use were sales of clothing through charity shops such that the use would be deemed to be use on “retail services”. Although Relate showed some evidence of sales of lapel pins, the Hearing Officer could not accept that these were “jewellery” (i.e. made of precious metals). As a result, the earlier rights were ordered to be revoked in respect of a large amount of the specification.
Returning to the opposition, the restriction of the earlier rights led to the rejection of the opposition. On the question of confusion, Relate had only alleged confusion based upon its earlier rights in “clothing”. Since the earlier right had been revoked insofar as it covered clothing, this ground failed. In relation to the allegation of a reputation, the Hearing Officer concluded that there would be no mental link on the basis that due to the very different field Relate’s mark would not be called to mind.
COMMENT : the decision is interesting for a number of reasons. Firstly, that the Hearing Officer concluded that each party had achieved a measure of success in the revocations such that Relate would only need to pay the applicant £1000; secondly, in the evidence in reply filed by Relate in relation to clothing; thirdly, in the Hearing Officer’s willingness to accept the “overall impression” of the evidence in the face of a lack of evidence.
On the first point, the applicant was successful to a large degree in its application to revoke the earlier rights and my impression from the outside is that Relate crafted its evidence obtusely. Moreover, the opposition failed in its entirety. What may have weighed in the Hearing Officer’s mind is that revocation was sought for the full specification, when it was clear that there had been use for some services at the very least. If the revocation had been more targeted perhaps that might have changed matters.
On the second, we see that in its initial evidence Relate said it did not keep breakdowns of the income from the various new and second hand goods sold in the charity stores, but stated that most stores sold clothing. The applicant alleged that most charities obtain stock from donations (i.e. that the goods are most likely not RELATE-branded); Relate replied with evidence that some charity shops DO sell branded goods. With respect, the evidence in reply avoided the very clear response which was needed, which was evidence (if available) that Relate sold branded clothing. It is unsurprising that the registration was revoked in relation to clothing.
On the third, it is notable that some of the evidence of Relate pertained to periods outside the relevant period. The impression given by the witness statement appears to be that some items were sold consistently within the period, and the evidence included supporting evidence for other items. As a result the Hearing Officer accepted that there would have been use within the relevant period for certain items (namely lapel pins) even though there was no evidence from within the relevant period directly showing this. It is an example of the UKIPO taking a view of the evidence as a whole, and of the overall credibility of the witness leading the UKIPO to reach useful inferences.
An application to register the mark QUBANA was opposed based upon earlier rights in CUBANA (stylised). The opponent alleged that it had already objected to the applicant’s use of CUBANA, whilst the applicant pointed to the fact that the opponent’s rights had a geographical limitation, that they were subject to proof of use and that the QUBANA mark was adopted as part of a settlement such that the opponent was estopped from opposing.
The Hearing Officer concluded that the geographical restrictions only had effect in relation to infringement, and did not prevent them being relied upon since an application had UK-wide effect. On the argument of estoppel, the Hearing Officer found that the evidence of the earlier agreement was insufficient (a copy of the agreement signed by just the applicant, and no further explanatory material) and that estoppel had not been made out.
On the question of proof of use, the Hearing Officer concluded that whilst the examples of use were insufficient to demonstrate use, the fact that an agreement had been reached (the settlement agreement) and the fact that the Applicant did not reject the assertion that there had been a Cuban restaurant under that name since 2009 meant that (when taken in combination with the evidence of turnover of the business) the Hearing Officer was willing to find use of the word mark CUBANA for restaurant services. Going on to consider the merits of the opposition, the Hearing Officer concluded that there was a likelihood of confusion and that an offer to limit the trade mark to exclude the geographical areas where the opponent had rights would not assist.
COMMENT : This case strongly shows the issues in “half-cases”. The evidence of the agreement was not enough to support the assertion of estoppel (since the terms were not shown), but the existence of the agreement allowed the Hearing Officer to conclude there must have been use in CUBANA, otherwise the applicant would not have changed names or entered into discussions. It is essential to always consider whether there is enough evidence for the Hearing Officer to reach the conclusions or inferences you seek. The opponent had no legal representation, and it is possible that these inferences may not have been reached so easily with a represented party.
It is worth noting that the opponent did not have it all his own way, though. The Opponent sought to rely upon a further mark, which was mentioned in the second witness statement of the opponent. This was refused since formal leave to introduce the extra mark (by way of amendment to the statement of case) was never made. It shows the traps an unrepresented party may face.
No S-topping Pizza Defendant who Built up Rights
How do you deal with the situation where you launch first, then someone else does and you subsequently register the mark? This became the question in this messy case presented as a franchise gone wrong. In the process the court gave some rather important comments about the transfer of goodwill.
The background was that the claimants owned a number of pizza restaurants around Birmingham, trading under the mark CASPIAN PIZZA since 1991. It applied to register the word mark CASPIAN in 2005 and its logo in 2010.
The defendants ran a number of pizza restaurants in and around Worcester, and the claimants alleged that it had operated subject to a franchise agreement with the claimant, with all goodwill accrued by the defendants flowing to the claimant.
Finding that the defendants had a defence to infringement, His Honour Mr Justice Hacon concluded that no franchise agreement could be inferred from the mere fact that the parties bought identical products. Rather the facts led to a conclusion that the parties merely coordinated purchasing to benefit from economies in the cost of supplies. Finding that the defendants had built up its own goodwill prior to the date of filing of the claimants’ trade marks, he therefore concluded that the defendants could benefit from the defence to infringement that they had an earlier unregistered right under s.11(3) of the Trade Marks Act.
If that was not enough, the defendants had also alleged that the claimants’ registrations were invalid (to avoid a finding of infringement). He concluded that the defendants had built up goodwill in the word mark prior to 2005 within the locale of Worcester and therefore declared the registration of the word mark invalid.
Comment : the case has interesting implications for clients and points which are of greater interest to specialists in intellectual property.
For clients, the key point the case demonstrates is the need to have written agreements and to beware the acquisition of rights by licensees and those with whom you work. In this case the claimant did not have the benefit of a written agreement and because of issues in the evidence (read the decision to see the hole that opened up in the evidence) it was unlikely that the claimants assertions could be believed at face value.
It also underlines the importance of obtaining registered rights at the earliest opportunity. In this case the claimant was the first user but each party was found to have acquired local rights, and the local rights could defeat a later application by the first user.
In reaching this view, the judge contrasted two decisions on the issue – case O-212-06 SWORDERS trade mark of the UKIPO and the later case of Redd Solicitors v Red Legal. In the former case the UKIPO stated that absent a geographic limitation the trade mark was invalid, whilst in the latter the judge (his predecessor at the same court) found that localised small scale use could found a defence to infringement, but not a right to invalidate the registration. His Honour Justice Hacon preferred the view from SWORDERS, commenting that his predecessor had not had the benefit of it in making his decision in Redd Solicitors.
As a result, if a party commences use but waits to register it risks a third party commencing use and obtaining a right which can block a later trade mark application.
Finally, it is worth noting the comments of the judge that even though the prior trading entity of one of the claimants had been dissolved without a formal assignment of the goodwill, this did not mean goodwill had not passed, since there is no formality requirement for an assignment of goodwill. Those acquiring rights from a receiver, liquidator or the bona vacantia unit of the Treasury Solicitor should take note!
Why I am Giving Away My Knowledge
Today I start a series of posts publishing a guide which “gives away” a massive amount of information on how to run a trade mark dispute. It is no exaggeration to say that this is “unusual” – not least because it gives away a substantial amount of my personal advantage only 2 and a half months after setting up as a specialist in IP disputes with particular experience in appearing as advocate.
The first can be found here
It will give not only information but also models, tables and other graphics which should enable anyone to run a trade mark case. At the end of the series I will publish the entirety in a single work and make it available via a few media outlets. This is no gift on the scale of Tesla giving away patents – outside of the IP “bubble” no-one will care and world peace will not suddenly break out – but it does of course give a substantial “leg-up” to my competitors who have not had the benefit of the very good fortune I have had to be involved in a lot of interesting and difficult cases. Pretty much everyone I have spoken has suggested it is commercial suicide, and cannot possibly comprehend why I would give this information away.
The simple answer to why I am doing it is this: there is not enough pro bono assistance of the right kind in the IP profession. Critics of giving pro bono assistance in IP tend to say that it is a “business right” – that it is discretionary, that people can choose not to register trade marks (or trade at all) and that they stand to profit if they have a successful business so should pay for legal services – and that for this reason it is wrong to extend pro bono. Others throw their most junior people at it in exchange for the ability to say in pitches that they do pro bono work (still expecting the juniors to make up the time, classing pro bono as “non-chargeable”).
I believe that at a deeper level IP is an enabler – it is the way many people create something of lasting value and reach self fulfillment. Many people spend their whole lives thinking they are worthless, not appreciating the value of the IP locked within themselves. Trade marks are a small part of that. Not every trade mark owner will be an “innocent”, and if they are squashed in the early stages many will retreat into their shells, not express their creativity fully, and not reach the fullness of their existence. They deserve assistance in the right way, from the right level of experience.
I give this guide away for free and hope it will be an “enabler”. I hope that if a firm cannot provide pro bono support it will at least forward a copy of this to the inquiring party to help them a little. To use the analogy, if you cant offer them a big fish then please send them this and hopefully they can learn to at least catch a minnow. I offer it with a pretty generous right to reproduce the material in the hope that even if you DONT want to pass on my work wholesale because you are a bit sniffy about my name and branding being on it, you might incorporate it into YOUR OWN pro bono material. If you want to use it to teach (including your own staff), go for it. I just ask that you attribute the work and that you don’t use it as the entire basis for a commercial offering (ie. dont be a douchebag).
Finally, I hope those on the opposite side to unrepresented parties might consider directing them to this guide. Yes, they might be a bit tougher to beat as a result of the guide (I hope so anyway!), but it will also be cheaper, more straightforward and the unrepresented party might understand your position and the process a bit better… so we all win really.
Best wishes for 2016 to everyone, and send me any comments