- Was the goodwill that the opponent claimed to have in the mark substantiated before the time limit for material to be submitted?
- Would the use of the mark by the applicant amount to passing off?
Saturday, 14 May 2016
Purple seems to be a popular colour in the world of trade marks. Recently, this Kat reported on Cadbury’s ill-fated attempt to preserve an existing colour mark. Thanks to Katfriend Plamen Ivanov, this Kat has learned of another purple trade mark dispute, this time concerning the word mark ‘Deep Purple’. Deep Purple is the name of a British rock band, formed in 1968. A former member of the band, Richard Blackmore, applied to register ‘Deep Purple’ as a word mark for certain goods and services in class 9, class 25, and class 41. As this Kat will explain, the attempt to register the mark was largely unsuccessful.
Ian Paice, one of the members of Deep Purple, opposed Blackmore’s application, based on Article 8(4) of the Community Trade Mark Regulation (now EU Trade Mark Regulation). This article provides for a relative ground of refusal for registration where an earlier proprietor of a non-registered mark has a right to prohibit use of the mark under the law of the member state. In the case of the opponent, the relevant law was the English tort of passing off.
On 17 February 2015, the Opposition Division accepted registration of the sign for class 25, partially accepted it for class 9, but refused registration for class 41. The Opposition Division found that there was goodwill in ‘Deep Purple’ for certain services related to live performances and recordings, hence the rejection of class 41, which concerns entertainment services. Class 9 was refused as far as it concerned music content, but it was allowed for other specified goods in the class which were mainly computer accessories. Class 25, which concerns clothing and footwear, was allowed in its entirety. The reason for allowing registration (partial in the case of Class 9) was that the Cancellation Division found it unlikely that passing off would occur where the applicant’s and opponent’s respective goods and services were dissimilar.
Both the opponent and the applicant appealed the decision. In ruling on the appeal, the Fifth Board of Appeal considered a number of issues, the main ones being as follows:
Was the goodwill that the opponent claimed to have in the mark substantiated before the time limit for material to be submitted?
The opponent had submitted evidence to substantiate his earlier right to the mark on 9 September 2013, well before the 2 February 2014 deadline. After the applicant questioned whether the opponent had substantiated his right, the opponent responded that the material provided was sufficient to substantiate his existing rights in the ‘Deep Purple’ mark. Three months later, however, the opponent requested more time to submit material. This additional material was included in the opponent’s response to the applicant’s observations. The applicant contested this evidence, arguing that it could not be considered in deciding the appeal since it had been submitted after the substantiation period.
The Board found that the material submitted before the deadline was enough to substantiate the right, but, in any event, the Board had discretion to consider whether to accept additional evidence that had not been submitted within the time limit stipulated by the Cancellation Division. This discretion was derived from Rule 50(1) CTMR and Article 76(2) CTMR. Based on the evidence, which included ticket sales, articles, album covers, concert sales and press releases, the Board found that the opponent did indeed have goodwill in the mark ‘Deep Purple’.
Would the use of the mark by the applicant amount to passing off?
"Yes", it was decided, use would amount to passing off if with respect to some of the contested goods in class 9 and all goods in class 25. The opponent had goodwill in the mark and its use of the mark would deceive consumers into thinking the goods were authorised by the opponent. The damage caused would be a diversion of future sales.
In particular, the Board rule that audio recordings, mouse mats and pads, computer and mobile phone accessories and sunglasses (all in Class 9) and clothing (in Class 25) are likely to be sold as merchandise by the band, so use of the mark ‘Dark Purple’ on these items would likely amount to passing off. The items in class 9 that the Board did not consider as being part of the opponent’s scope of product merchandising and thus would be unlikely to result in passing off are ‘computer hardware; computer chips and discs, interactive software as well as computer firmware; computer games; software for interactive games for computer; mobile phones and handheld devices; digital games; mobile phone games; DVD games; computer software and computer programs’. The applicant was allowed to register the mark for these specified Class 9 goods.
The Fifth Board of Appeal refused registration for class 25 and partially for class 9. Only a very limited number of goods in class 9 were allowed registration.