In other news

The Appointed Person has upheld a decision of the UK IP Office that Lindt had not proved genuine use of its TEDDY (word only) mark for chocolate confectionary in the UK (see examples of use below). The issue arose in the context of an opposition by Lindt to the registration of the mark TEDDYLICIOUS (stylised) for cakes and desserts in which Lindt had to show proof of use of its word only mark. 

The Appointed Person agreed with the hearing officer that the TEDDY (word only) mark had not been used as a trade mark but as a descriptor ie "…in a context and manner which simply and directly exploited its natural capacity to function descriptively as a sign or indication concerning the kind or characteristics…" of the products concerned. 

This is an important reminder that use must be use as a trade mark to constitute genuine use – and this applies even if the mark is well-known. 

UK and EU trade mark law provide that a trade mark owner can – in certain circumstances – lose the right to invalidate or object to the use of a later registered trade mark. This occurs if the owner of the earlier mark has knowingly acquiesced to the use of the later registered mark for five continuous years (see our guide here). 

One aspect of acquiescence that has been unclear is whether the owner of the earlier mark must be aware of the use and registration of the later mark for the five-year period to start running or whether awareness of the use of a later mark - which is, in fact, registered - suffices. In this case - Industrial Cleaning Equipment v Intelligent Cleaning Equipment & Ors - Clarke J, held that knowledge of both use and registration is required. Whether the same would be true at EU level is unclear – there are conflicting indications.  

The case is another in a growing list reminding brand owners of the importance of taking decisive action against potential infringers where the allegedly infringing mark is registered (see eg our article here). Failure to do so within the required five-year period, may result in loss of the right to object.

The case also contains a useful summary and application of the law relating to joint tortfeasorship.

In GTX v XTG and XTG logo, the EU General Court has upheld rulings of the EUIPO that there is no likelihood of confusion between an EUTM application for the mark XTG (word and figurative) and an earlier EUTM registration for GTX, both covering retail of motor vehicles. The case is a good example of the principle that consumers are more likely to perceive the differences between two marks when they are short. 

The Court rejected arguments that the marks GTX and XTG are visually and aurally similar because they share the same letters but in reverse order. On the latter, it commented that the presence of the same letters in reverse order does not necessarily create a significant phonetic similarity because the order of the letters in the signs is of crucial importance in determining the sound that those signs produce. 

It further commented that marks consisting of abbreviations are widespread in the motor vehicle sector, with the result that the relevant public is generally used to paying particular attention to the differences between such abbreviations.

In Margiela v EUIPO, an EUIPO Board of Appeal has held that a figurative sign made up of the numbers 0 to 23, presented in a plain font, positioned on three separate lines one above the other, lacks distinctive character and therefore cannot be registered as an EUTM. 

The EUIPO examiner had held that the average consumer would perceive the sign as a product listing or article number, such as a bar code, and not as an indicator of commercial origin. The applicant appealed. 

While the Board accepted that numerals may be registered as trade marks, it held that there must be something more for distinctiveness ie aspects to the sign which are easily and instantly memorised by the relevant public. The applicant's sign had no such characteristic element or any memorable eye-catching features. 

The Board concurred with the examiner that the public would instead perceive the sign as a long series of numbers denoting a pre-printed tag or label, especially as this is how the public is accustomed to seeing long numbers.

In Lännen MCE, the ECJ has ruled the use of a third party's trade mark in paid-for referencing on a search engine that uses a national TLD of an EU member state constitutes use of the trade mark in that member state (for the purposes of infringement). 

It does not matter that the advertiser does not unambiguously list that specific member state on its website amongst the territories where it might sell its goods or services. Conversely, the mere fact that a website is accessible from the member state covered by the trade mark is not a sufficient basis for concluding that goods or services displayed there are actually targeting consumers in that member state. 

Instead, active conduct, like paying a national member state search engine to display a link to the advertiser's website, amounts to targeting consumers in that member state.  

Hayman-Joyce Property v Hayman-Joyce Broadway & Ahr concerns a dispute between two firms of Cotswolds estate agents about the use of the name "Hayman-Joyce." Having previously worked together, the firms had fallen out, and the claimant alleged passing off. 

The court held that the firms each had some geographical areas where they exclusively owned the goodwill in the Hayman-Joyce name for estate agency services, and other areas in which they both owned goodwill. The name might therefore identify either firm or - in some cases - both firms. It is possible for several businesses using the same name to acquire their own goodwill in the name, or to share that goodwill. Such goodwill may have evolved independently or emanated from a common ancestor.  

As a result, the defendant firm's continuing use of the name in the areas in which it had goodwill in the way it had done previously would not amount to a misrepresentation. However, by advertising houses for sale on its website in an area in which the claimant had exclusive goodwill, the first defendant had committed a misrepresentation. Nonetheless, it was unclear whether this had caused any damage to the claimant. 

The claimant's trade mark registration for HAYMAN-JOYCE (word) was invalid for the same reasons. The application to register the mark was geographically unlimited and therefore a notional expansion into the first defendant's area of exclusive goodwill. 

In Kaminski v EUIPO, the EU general Court has ruled an earlier decision of the Board of Appeal revoking a trade mark registration for all goods (cars) except racing cars. The registrant had argued that it had proper reasons for non-use for other types of car on the basis that there were significant technical, financial and legal obstacles to launching a car in the EU. The General Court agreed with the Board of Appeal that these difficulties did not constitute proper reasons for non-use. 

The Court held that while an approval or certification process may constitute a proper reason for non-use, the many obstacles relied on by the applicant as being necessary to "bring the car into life" were all under its control. Furthermore, it was the applicant's choice to apply for registration of the mark at a time when there was still considerable uncertainty as to both the date and the possibility of marketing the car. 
In any event, it was possible and reasonable for the applicant to market its car even before the end of the legal approval process. Genuine use of the mark was not impossible.

In Hecht Pharma v EUIPO, the EU General Court has held that an EUTM registration for medicines had been put to genuine use in the EU by the sale to pharmacies in Germany of ayurvedic medicines. 

This was despite the fact that the import of the products into Germany had been unlawful under German law. Marketing that is unlawful under national law does not rule out genuine use – they are different issues.