The IPKat is somewhat disturbed by the decision of the Lord Chancellor’s Appointed Person, Geoffrey Hobbs QC in a recent opposition case under the Trade Marks Act 1994, s. 5(3) (that provision implements dilution-style protection, based on Article 4(4)(a) of Directive 89/104 in the UK). Direct Wines applied to register LE XV DU PRÉSIDENT as a trade mark for alcoholic beverages, wines, spirits and liqueurs. BSA opposed the application, based on its earlier registration of PRESIDENT for edible lard, cheese and dairy products which had been advertised by reference to the benefits those products conferred on a healthy lifestyle. The Hearing Officer rejected the opposition and BSA appealed unsuccessfully to the Appointed Person.

In reaching his decision, the LCAP used terminology that has no basis in EU-level law. He started off by stating that the “umbra” of protection conferred by a trade mark registration is found within the absolute protection given in s.5(1) in cases and that protection “within the penumbra” contemplated by the Act “radiates” outwardly from and by reference to the mark in question under ss.5(2) and (3) (ss.10(2) and (3) in infringement cases) and the goods or services for which it is registered. However, the concepts of “umbra” and “penumbra” have no basis in ECJ jurisprudence (although they have been mentioned in certain UK cases).

According to the LCAP, s.5(3) tests whether a later mark is “in compliance with the duty to distinguish” by considering whether, having regard to the distinctiveness and reputation of the earlier mark, there are differences between the marks and the goods or services of the two undertakings that would be sufficient in combination to avoid detriment or advantage of the kind prescribed. Protection cannot be granted under either s.5(2) or 5(3) merely because the two parties’ marks call each other to mind. Once again, the idea of a trade mark that is being applied for having “a duty to distinguish” introduces a new term into trade mark jurisprudence (although of course, a trade mark must be capable of distinguishing the goods of one undertaking from those of other undertakings to be registered). Another novelty is that he categorised taking unfair advantage as being a “positive effect” and detriment as a “negative effect”.

In this case, the earlier mark had a significant reputation acquired through use in the UK in relation to cheese and butter products, with particular emphasis on the natural qualities of those products. There was no evidence that Direct Wines adopted its mark with BSA’s mark in mind nor was there any evidence that concurrent use of the two marks would lead to a likelihood of confusion. While there was an affinity between cheese and wines and the two types of products would be of interest to the same types of consumer, the dissimilarities between the marks and goods in issue would combine to make it unlikely that Direct Wine’s use of LE XV DU PRÉSIDENT bring BSA’s PRESIDENT mark to mind or vice versa. The distinctive power of the PRESIDENT mark in relation to BSA’s goods was not strong enough to support any other conclusion and the “necessary element of cross-pollination” was absent “between the two strains of use”. Again, this final requirement of “cross-pollination” is purely domestic and is arguably an analogy that has been taken too far – what on earth are “strains of use”? The IPKat thinks this sounds rather too much like plant varieties.

The IPKat feels that the introduction of a layer of home-grown terminology is unhelpful. What does it add to the principles that have been articulated for the whole of the EU by the ECJ? Even more worryingly, the indigenous jargon could be taken as adding extra requirements to those set out in Directive 89/104 and by the ECJ, at odds with the harmonising principle of EU trade mark law. When formulating and applying such home-grown terminology, domestic trade mark jurists should be careful to ensure that the boundary between analogies that merely clarify EU principles and analogies that illegitimately add extra requirements to registrability and infringement cases is not blurred. The IPKat also feels that the LCAP’s approach is curious in that at para 17 of his decision he states that the test under ss.5(3) and 10(3) is

“Whether, having regard to the distinctiveness and reputation of the mark entitled to protection, there are differences (in terms of marks and goods or services) that would be sufficient in combination to avoid detriment or advantage of the kind proscribed.”

It is curious that the LCAP wants us to look at differences between the marks and goods rather than similarities. This seems to suggest that the default position is that a mark is unregistrable under s.5(3) or is infringed under s.10(3) where an earlier mark has a reputation, this being a position which must subsequently be disproved. This is odd because the burden of proving the requirements of ss.5(3) and 10(3) is on the opponent and mark-owner respectively, rather than on the applicant or defendant.

Help deciphering jargon here and here
Discover the affinity between cheese and wine here, here and here
More than you ever wanted to know about cheese here, here and here
What to do with cheese after you’ve drunk rather a lot of wine here


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