Archive for August 2009

Trade Mark Law Update: Virgin suffers trade mark / brand setback

Tuesday August 18th 2009, by Piers Strickland

As picked up by the Daily Telegraph, the UK’s Intellectual Property Office, more commonly known as the Patent Office or the Trade Mark Registry, has recently rejected a trade mark application filed by a South African company for the phrase “You can’t be a virgin all your life, it’s time“, for use in respect of telecommunications, cafes, restaurants and bars.

Richard Branson’s Virgin Group lodged an opposition against this trade mark application on several grounds:

Section 5(2) (b) of the Trade Marks Act 1994:“(2) A trade mark shall not be registered if because –
(b) it is similar to an earlier trade mark and is to be registered for
goods or services identical with or similar to those for which the
earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which
includes the likelihood of association with the earlier trade mark.”
Section 5(4)(a) of the Trade Marks Act 1994 states that a trade mark shall not be registered:“…if, or to the extent that, its use in the United Kingdom is liable to be prevented by
virtue of any rule of law (in particular, the law of passing off) protecting an
unregistered trade mark or other sign used in the course of trade”
Section 5(3) of the Trade Marks Act 1994 states that a trade mark application which is
(a) is identical with or similar to an earlier trade mark, shall not be
registered if, or to the extent that, the earlier trade mark has a
reputation in the United Kingdom (or, in the case of a Community
trade mark, in the European Community) and the use of the later mark
without due cause would take unfair advantage of, or be detrimental to,
the distinctive character or the repute of the earlier trade mark.”

On the s.5(2)b ground, the UK Intellectual Property Office held that the various prior trade mark registrations cited by Virgin were not similar enough to the applicant’s mark. Furthermore, the UK Intellectual Property Office did not consider the word VIRGIN to be the dominant part of the applicant’s trade mark. Therefore, Virgin’s opposition to the trade mark application was rejected on this ground.

On the s.5(4) ground, Virgin was essentially relying on the English common law of passing off. In order for a party to claim rights under the law of passing off various element must be satisfied. There are various formulations of the law of passing. The formulation used by the UK Intellectual Property Office in these trade mark opposition proceedings was broadly as follows:

that the claimant’s goods or services have acquired a goodwill or reputation in the market in respect of some identifying get-up;
that there has been a misrepresentation by the defendant which leads is or likely to lead the public to believe that goods or services offered by the claimant are goods or services of the defendant; and
that the claimant has suffered or is likely to suffer damage as a result of the defendant’s misrepresentation.

The UK Intellectual Property Office held that the use by the applicant of the word VIRGIN in a ten work trade mark did not amount to a misrepresentation under the law of passing off. Accordingly, Virgin’s opposition failed under this head as well.

In respect of the final ground of trade mark opposition put forward by Virgin, s.5(3) of the Trade Marks Act 1994, the UK Intellectual Property Office held that while Virgin did have a sufficient “reputation” for the purposes of the Trade Marks Act 1994, the UK Intellectual Property Office rejected the argument that there would be any likely detriment to the Virgin brand by the use of the applicant’s trade mark, such as: (a) disturbing the “visual uniqueness” of the Virgin brand or (b) tarnishing the Virgin brand. The UK Intellectual Property Office also rejected the allegation that this trade mark registration would allow the trade mark applicant to “ride on the coat-tails of Virgin“. The UK Intellectual Property Office rejected this argument on this basis that:

“The differences between the marks and the nature and context of the use
of the word Virgin in the applicant’s mark make it difficult to see how the reputation of
the earlier mark could possibly be projected onto the applicant’s mark”

COMMENT: this case shows the limits to which even the most closely cultivated brands and registered trade mark portfolios can be protected. The fact that VIRGIN is a commonly used word in the English language means that it is harder to protect than a more unusual word / trade mark, such as perhaps KODAK. That is not to say that the Virgin Group has not had great success in developing a highly successful brand and have in most instances in the past no doubt prevented other traders from using the word VIRGIN in a wide range of goods and services.

However, when another trader wants to use the word VIRGIN in a non-dominant fashion, merely using the word in its plain English descriptive sense, in way which is unlikely to confuse, misrepresent or cause detriment to the Virgin brand, then the Virgin Group may again struggle to restrain such use. Of course, this still gives the Virgin Group plenty of potential arguments to claim that use of the VIRGIN by another trader should not be allowed. Furthermore, this case was unique to the facts and does not mean that many other traders will be free to use the word VIRGIN. Instead each situation will be judged on its own unique set of facts.

Trade Mark Law Update: Lastminute.com in trade mark victory

Friday August 14th 2009, by Piers Strickland

The European Court of First Instance (CFI) has recently overturned a decision of the European Trade Mark Registry (OHIM) concerning rights to the trade mark LASTMINUTE.

In February 2000, Last Minute Network Ltd applied to register a Community Trade Mark for the sign LASTMINUTE.COM. UK readers will be familiar with Lastminute.com, which is one of the pioneers of e-commerce. However, OHIM refused this trade mark application, ruling that the trade mark application LASTMINUTE.COM was “devoid of distinctive character”. Last Minute Network Ltd appealed to OHIM’s Board of Appeal, but this appeal was dismissed with respect to travel services in class 39.

In March 2002, Last Minute Tour SpA applied to register a Community Trade Mark for the figurative sign for LAST MINUTE TOUR for a range of goods and services, including class 39. Inevitably, Last Minute Network Ltd opposed this Community Trade Mark application. Presumably because of not owning registered trade mark rights (for the reasons mentioned above), Last Minute Network Ltd were forced to rely on their “unregistered trade mark rights”. As a result, they cited article 8(4) of Council Regulation (EC) No. 40/94:

Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

In effect, Last Minute Network Ltd were relying on the English law of passing off. This law protects goodwill built up in the course of trade in certain circumstances. Last Minute Network Ltd’s position was that it had sufficient goodwill to entitle it to protect its unregistered trade mark (LASTMINUTE.COM) and that this goodwill existed before the LAST MINUTE TOUR application was filed and that the LASTMINUTE.COM goodwill was of more than local significance.

This dispute made its way through OHIM and to the CFI, with Last Minute Network Ltd claiming that OHIM’s Board of Appeal had not effectively taken into account the provisions of article 8(4) of Council Regulation (EC) No. 40/94.

The CFI judgment held that:

merely making a formal comparison of the two signs at issue, without taking account of the possible existence of an independent reputation for the expression ‘last minute’ in the minds of [Last Minute Network Ltd's] customers..might believe that the goods and services offered by the proprietor of the trade mark LAST MINUTE TOUR emanate from the proprietor of the earlier non-registered national mark LASTIMINUTE.COM, the Board of Appeal disregarded the reference in Article 8(4) of Regulation No 40/94 to the law of the United Kingdom, applicable to that mark, which was used by the applicant in the course of trade on the date on which the application for a Community trade mark was filed.

COMMENT: This case goes to show that a registered trade mark is not a pre-requisite to making a successful opposition to an overlapping trade mark application. Last Minute Network Ltd’s case was undoubtedly strengthened by the substantial level of goodwill which it had generated. However, the threshold for protectable goodwill is not necessarily so high and other owners of unregistered trade mark rights, such as goodwill in the UK, should bear this in mind when considering whether to try and enforce their trade mark rights, whether in trade mark opposition proceedings or in other trade mark / brand disputes.

Copyright litigation update: musician succeeds in copyright claim dating back to the 60’s

Wednesday August 12th 2009, by Piers Strickland

The House of Lords has just handed down its judgment in the case of Fisher v Brooker & Others. This case concerned whether Matthew Fisher was entitled to claim ownership to any of the copyright in the iconic song “A Whiter Shade of Pale“.

In the first instance proceedings, the Honourable Mr Justice Blackburne made the following three declarations:

Mr Fisher was the co-author of the song.
Mr Fisher was a joint owner of the musical copyright in the song, his share being assessed at 40%.
The defendants’ licence to exploit the Work was revoked on 31 May 2005, the date when the action was started, 38 years after the initial release of the record.

This was, in effect, a strong victory for the claimant, despite the fact that the song dated back to the 1960s.

The case was appealed to the Court of Appeal, who upheld the decision that Fisher was a joint owner of the copyright in the song. However, the Court of Appeal upheld the defendants’ appeal that given Fisher’s “excessive and inexcusable delay” before bringing a claim, i.e. from the 1960’s to 2005, it was unjust that Fisher should succeed in his claims to a joint interest in the song (i.e. whether he was entitled to the commercial spoils deriving from the song) or to have the implied licence to the respondents revoked.

The case was further appealed to the House of Lords (the highest court in the land for such cases of copyright infringement), which held that the Court of Appeal was wrong to hold that Fisher could on the one hand own the copyright in question, but then be barred from any chance of obtaining an injunction for copyright infringement. The House of Lords noted that there was nothing under English law which set a time deadline for laying claim to ownership of copyright. (The position in Scotland is apparently potentially different.) The House of Lords also noted the crucial distinction which exists between “the exercise of rights (i.e. exploiting copyright) and the obtaining of discretionary remedies (i.e. getting an injunction)”.

Accordingly, Fisher is now at liberty to enjoy his share deriving from the copyrights in the song and also has the theoretical right to obtain an injunction. However, this theoretical right to an injunction would have to be determined by the trial judge in a claim for copyright infringement and be decided on the merits. Although it was Fisher’s position that the proceedings were not about getting an injunction, such a claim was part of the originating copyright infringement proceedings. In any event, it may well be that any further attempt to enforce an injunction against the defendants might be refused on equitable grounds relating to delay etc, but the point is that Fisher is not prevented from trying.

Hopefully for all parties, further proceedings will not be needed after this judgment from the House of Lords.

COMMENT: This case is bad news for the music industry. One of main issues was on the subject of delay and related legal concepts, such as laches and estoppel. The court rejected a defence on these grounds in respect of a claim to ownership of copyright. This claim might therefore result in other aged musicians thinking about the possibility of launching their own copyright claims on the basis that they have not got their fair share of the historical spoils from a song.

Each case will have to be assessed on its merits. But the case of Fisher v Brooker does offer considerable encouragement for potential claimants for musical copyright infringement (and for their lawyers). Music companies are bound to be less impressed and may be talking to their insurers about this increased risk of a claim in respect of poorly drafted historic music agreements.

Piers Strickland is a “Master of Laws”. Partner awarded LLM in Intellectual Property Litigation

Monday August 10th 2009, by Piers Strickland

Piers Strickland, Lead Partner of Strickland LLP, has just been awarded the degree of “Master of Laws” in Intellectual Property Litigation (with commendation). This award is more commonly known as an LLM, but Piers prefers the title Master of Laws…

Patent Law Update: Patentee found liable for making unjustified threat of patent infringement against Boots

Monday August 10th 2009, by Piers Strickland

When patentees think they have spotted a patent infringement they have to be very careful about approaching the alleged infringer of the patent. If the approach is misjudged, then the approach can result in a claim being made against the patentee for unjustified / groundless threats of patent infringement proceedings.

The relevant provision in UK patents law is s.70 of the Patents Act 1977, which states that:

70 Remedy for groundless threats of infringement proceedings

(1)Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4) below, bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3) below.

(2)In any such proceedings the plaintiff or pursuer shall, if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them, be entitled to the relief claimed unless-

(a)the defendant or defender proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent; and

(b)the patent alleged to be infringed is not shown by the plaintiff or pursuer to be invalid in a relevant respect.

(3)The said relief is-

(a)a declaration or declarator to the effect that the threats are unjustifiable;

(b)an injunction or interdict against the continuance of the threats; and

(c)damages in respect of any loss which the plaintiff or pursuer has sustained by the threats.

(4)Proceedings may not be brought under this section for a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process.

(5)It is hereby declared that a mere notification of the existence of a patent does not constitute a threat of proceedings within the meaning of this section.

This case started when a letter was sent to a large number of Boots stores who were stocking the patented “Zeno” device (the invention claimed in the patent is a hand-held unit for the treatment of insect stings and insect bites) and to other retailers in Europe. The letter set out the patent and continued:

“Our client has now found out that your company offers in the United Kingdom under the trademark Zeno a medical device for the treatment of acne which is also based on the principle of the application of heat over a specific period of time …

Up to this point we cannot see any difference to the technical solution for which our client was granted protection, all the more so since the temperature range is also within the limits of the range that is protected by the patent, and the patent discloses a lower limit in respect of the period of time.”

The Judge had to decide whether the sole purpose of this letter was to: “make enquiries of the other person for the sole purpose of discovering whether, or by whom, the patent has been infringed”. This is because is it permitted to make such enquiries without incurring liability for unjustified threats pursuant to s.70 of the UK’s Patents Act 1977.

In this case, the Judge held that the letter was not designed just to find out if the patent had been infringed. In effect the Judge held that the letter amounted to a “veiled” threat of infringement. Case law has long-established that a threat can be made in a “veiled or covert, conditional or future” manner.

It will be interesting to find out the level of damages, which will have to be paid out as a result of these unjustified threats. Even if the damages are not great, the level of legal fees incurred by the losing party before the High Court will no doubt be significant and act as a large deterrent to others. All of which goes to emphasise that companies must consider carefully how to approach the issue of a potential patent infringement claim. A well thought out letter before action for patent infringement may ensure that the matter does not spiral disastrously in the wrong direction from the outset.

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