Brands Update: Quick read

UK

Has Sky v SkyKick settled? Bad faith in trade mark cases

Those eagerly waiting for the Supreme Court to issue its ruling in the SkyKick case might have to wait a bit – or a lot – longer. Our team has noticed that SkyKick has recently withdrawn its claims for invalidity against three of Sky's EUTM registrations, including the two word-only marks at the centre of the UK litigation. While no information on the withdrawal is yet available, one possible explanation is that the case has settled. It would explain why the Supreme Court has not issued a decision, over 15 months since the case was heard. 

The case concerns whether there is bad faith where an applicant files a trade mark for a broad category of goods/services but does not intend to use the mark on all items within that category. There had been a difference of opinion between the High Court and Court of Appeal on the issue, with the Court of Appeal coming down in favour of brand owners. Broadly, the Court of Appeal held that an applicant is not required to have an intention to use its mark on every conceivable sub-division of a broad category - an intention to use on some (and potentially even one) item within a broad category can justify inclusion of the broad term. That was good news for many brand owners since it would discourage invalidity counterattacks for bad faith when enforcing their rights.

Where a case settles after it has been fully argued in court, the court has a discretion whether or not to hand down its judgment. It is a question of weighing the public interest for and against giving judgment. Relevant considerations include whether the case raises novel points or serious accusations, the parties' views and whether settlement is conditional upon judgment not being given. So, it's possible that the Supreme Court will still rule (even if there is a settlement) given the importance of the issue - if there is a public interest in the Supreme Court hearing the case, there is arguably a public interest in it handing down judgment.

Assuming the case has settled and no Supreme Court ruling follows, the Court of Appeal decision won't be a bad one for most brand owners to end on... but a Supreme Court decision providing concrete guidance would be preferable. Watch this space for further updates!

Court of Appeal overturns High Court ruling: PETSURE is confusingly similar to VETSURE after all!

The Court of Appeal has overturned a decision of the High Court and held that the use of the sign PETSURE for pet insurance services infringes UK trade mark registrations for VETSURE for the same services. Key aspects of the Court of Appeal's ruling include:

• Contrary to what the trial judge said, the earlier VETSURE mark had a moderate level of distinctiveness. Where two descriptive elements are combined, the combination is not necessarily descriptive. VETSURE alludes to - but does not describe - pet insurance. The fact that there is only one other VET- prefixed name and no other -SURE suffixed name on the market is relevant to the distinctiveness of VETSURE. 

• The trial judge was wrong to overly dissect the marks to determine conceptual similarity. Whether or not the words "pet" and "vet" mean different things, the words "VETSURE" and " PETSURE" have "considerable conceptual similarity", both connoting insurance for pets / to cover veterinary bills. 

• In any event, only in "exceptional" cases - where at least one of the signs at issue has, from the perspective of the relevant public, a clear and specific meaning which can be grasped immediately by that public - will conceptual dissimilarity be sufficient to counteract visual and aural similarities (EUIPO v Equivalenza Manufactory). 

• The trial judge had not correctly assessed the evidence of actual confusion. The Court should look at the probable causes of the mix ups by consumers. The evidence confirms that some consumers do not notice the difference between the PETSURE and VETSURE names. 

The decision is not completely surprising – in our article on the earlier High Court ruling, we commented that it was hard to think of another case in which the marks were so close yet there was a finding of no likelihood of confusion. More on this next time. 

High Court agrees with EU General Court: GRILLOUMI/GRILLOUMAKI not confusingly similar to HALLOUMI

The High Court has held that UK trade mark applications for the marks GRILLOUMI and GRILLOUMAKI for restaurants and coffee shop services can proceed to registration despite an earlier collective trade mark registration for the mark HALLOUMI for cheese. The prior collective mark is owned by a Foundation representing some – but not all – of the producers of the traditional Halloumi cheese from Cyprus.

The result accords with the outcome of a similar case before the EU trade mark institutions (more here). As with the corresponding EU case, the Court considered that cheese and restaurant services shared only a low degree of similarity and that the HALLOUMI mark had a low degree of distinctiveness since it can be used descriptively. There was no likelihood of direct or indirect confusion – the average consumer would not think that the services supplied under the GRILLOUMI and GRILLOUMAKI marks come from - or are connected with - a member of the Foundation. The reputation-based claim also failed as the HALLOUMI collective mark did not have sufficient reputation in the UK.

Cyprus has now obtained a protected designation of origin (PDO) for HALLOUMI (registered in 2021) in the EU but that does not extend to the UK. The outcome of the UK and EU cases might have been different had they been founded on a HALLOUMI PDO. 

Who decides cases that are "remitted back": fairness at the UKIPO?

A recent decision highlights the issue of who should decide a case when it is remitted back by an appellate body to the first instance court or tribunal. In this particular action, a UKIPO hearing officer had mistakenly omitted to consider one ground of objection in an opposition action, holding overall that the opposition failed. When the case had been remitted back to the UKIPO by the Appointed Person (the appellate body) for the additional ground to be considered, the UKIPO had assigned the same hearing officer to decide the case – a decision which was then also appealed to (a different) Appointed Person.

After considering the law on recusal, the Appointed Person held that it was acceptable in this particular case for the same hearing officer to reconsider the action. The law provides that remission can be made to the same decision-maker unless it would cause reasonable perceived unfairness (of the type that contravenes the public law duty of fairness) or damage public confidence. This could arise where there was actual, apparent or confirmation bias. The appellant in this case had not been able to identify any bias and there was no suggestion of unfairness.

The decision illustrates that, largely, cases will be remitted back to the same decision-maker at the UKIPO. It also illustrates the importance of raising unfairness early on, when an appeal on the substance is first lodged, so that the appellate body can consider directing the UKIPO to appoint a different decision-maker if the case is remitted back. The position is different at the EUIPO where cases are often remitted back to a different Board of Appeal.

A reminder about bogus invoices

This is a reminder to ignore any unsolicited correspondence about trade mark renewals and the like if they do not come from your trade mark representative. Many businesses send renewal notices (of the type publicised by the Institute of Trade Mark Attorneys here), without being the formal representative for the marks in question, using publicly available information on the trade marks register. They then charge inflated prices for any resulting work. The Advertising Standards Authority has already ruled against one such business, holding that its letter was misleading. Clients should ignore any requests for actions or payment that do not come from Taylor Wessing.

EU

EU General Court holds that colours red, yellow and black not registrable as a position mark for agricultural vehicles

The EU General Court has held that EUTM applications for various position marks (all consisting of specific shades of red, yellow and black as applied to a piece of agricultural machinery) are not registrable for agricultural apparatus etc in Class 7 and tractors etc in Class 12. 

The mark was a variation of colour combinations typically used in the agricultural sector for functional and safety purposes. The mark would not therefore be perceived as indicating trade origin and was devoid of distinctiveness. This was despite the existence of some evidence that there was an established practice of using colours as position marks on agricultural equipment and that farmers were aware of this practice. Had the case involved different colours or had the applicant submitted evidence of acquired distinctiveness through use, there might have been a better chance of securing a registration. 

EU General Court says Hinterland not descriptive of geographical origin of goods

A trade mark will be refused registration if it designates a place which is – or can reasonably be expected in future to be – associated with the goods/services in question. In a recent decision, the EU General Court has held that a trade mark registration for HINTERLAND (registered for various spirits) is valid and does not breach this provision. 

The court noted that the word HINTERLAND means a part of land situated around a central place or behind an important frontier line. Since "Hinterland" does not refer to a specific place and is not known for or associated with spirits, the mark is not descriptive. This is in keeping with other rulings on geographical place names, including a recent ruling that ATLANTIC is registrable for wine, it being too large and diverse an area to be descriptive of wine producing regions. These rulings should be contrasted with others that have gone the opposite way, including rulings that Sophienwald is descriptive for glassware and that AMAZONIAN GIN COMPANY is descriptive for gin (more here). 

EU General Court accepts exports from EU as proof of use in the EU

According to both UK and EU trade mark legislation, genuine use includes affixing the trade mark to goods or to the packaging of goods in the UK or EU (as appropriate) solely for export purposes. However, very few cases involve such use. In the recent W.B. Studio Sas di Wivian Bodini & C case, an EUTM owner was able to successfully rely on this provision to defend a revocation attack. Goods had been manufactured and branded in Italy and exported to China. That was sufficient to prove use. Proof that the goods were subsequently marketed in the country of destination was not required. In any event, some of the goods had been sold to another Italian company which then exported them to China, which also constituted use.

EU General Court confirms that Class 35 business services do not cover running the trade mark owner's own business

An EUTM owner has been unable to prove use of its registration as it ran its own care homes rather than helping third parties to manage their care homes. The EUTM was registered for "Business and commercial management of establishments… in particular… retirement homes" in Class 35. The General Court noted that Class 35 services are business services provided to others; not services in connection with the operation of the trade mark owner's own business. Running a care home is proper to Class 43, not Class 35. In the same way, advertising one's own goods/services does not constitute advertising in Class 35. Only advertising for others suffices. 

L'Oréal fails in attempt to prevent registration of combined word + rose logo mark… 

L'Oréal has failed in its attempt to prevent the registration of an EUTM for the word ARTISCARE plus a rose logo for various cosmetic products based on its earlier EUTM registrations for a rose only logo and a combined LANCOME + rose logo, also registered for cosmetics. 

The EUIPO Board of Appeal considered L'Oréal's rose logo to be inherently weakly distinctive since it would be perceived as referring to the smell, colour or composition of cosmetics. L'Oréal was not able to prove that its rose logo alone had a reputation or enhanced distinctiveness through use for cosmetics since almost all of the evidence submitted either actually referred to Lancome or (if it included the rose logo) the word Lancome appeared alongside it. Where the rose logo did appear in evidence on its own, it was often in a different form to that registered. 

There was no likelihood of confusion given the weak overall distinctive character of L'Oréal's rose logo, the dissimilarities between the two rose logos (including in their orientations) and the presence of the word ARTISCARE in the mark opposed. The Board pointed out the need not to overly protect weakly distinctive marks. While the combined LANCOME + rose logo mark might have had a low degree of reputation, the public would not have made a link between it and the mark opposed. Even if there was a link, there was no unfair advantage or detriment. 

The case demonstrates the difficulty of enforcing marks with a relatively low degree of inherent distinctiveness. Had L'Oréal been able to submit evidence - perhaps in the form of a survey - that its rose logo alone was well-known, the outcome of the case might have been different. 

…But Louis Vuitton successfully opposes VILLA ZAMER VZ EUTM application

Louis Vuitton has successfully opposed an EUTM application for the mark VILLA ZAMER VZ (where the VZ are overlayed) for various alcoholic beverages in Class 33 based on various earlier EUTM registrations for an LV figurative mark covering bags etc in Class 18 and clothing etc in Class 25. 

Louis Vuitton was able to successfully establish that the earlier marks had a reputation in relation to at least bags and women's clothing despite the fact that some of the evidence submitted showed the use of the earlier marks together with the words Louis Vuitton. This ruling is perhaps difficult to reconcile with the opposite finding in the L'Oréal case mentioned above (that use of the rose logo in combination with the word Lancombe was not sufficient to establish a reputation/enhanced distinctiveness for the rose logo alone). However, importantly, not all of the evidence showed use of the LV figurative mark together with the words Louis Vuitton and the LV figurative mark was always dominant and clearly noticeable when it was combined with the words Louis Vuitton. 

The signs were visually similar to a low degree, aurally similar to a very low degree and conceptually dissimilar. While the goods in question were dissimilar, the EUIPO noted there is a closeness in that both belong to the luxury sector and there are often strategic partnership between fashion houses and alcohol producers (including some involving Louis Vuitton). There was therefore a link between the marks and the use of the sign opposed was likely to take unfair advantage of the distinctive character and repute of the earlier marks.