THREE LITTLE TRADE MARK CASES THAT NEARLY GOT AWAY …

* Sir Robert McAlpine v Alfred McAlpine [2004] EWHC 630 (Ch). Sir Robert McAlpine established his construction business back in 1869. In 1935 the business was split in two: his son Alfred ran his business in North West England, the Midlands and North Wales, while his other sons operated elsewhere. In 1983 the two businesses agreed to end this geographical partition of the market. The two businesses traded as “Sir Robert McAlpine Ltd” and “Sir Alfred McAlpine & Son Ltd”. In 2003, following a rebranding exercise, Alfred’s business dropped the name “Alfred” and called itself “McAlpine Capital Projects Ltd”. Sir Robert’s business sued for passing off, seeking an injunction. Mr Justice Mann held for Sir Robert’s company, on the basis that, in relation to such areas of activity in which the companies’ interests overlapped, the use of the name McAlpine, unqualified by “Alfred”, would be a misrepresentation. It was found by the court that there was a very real risk that the claimant might suffer loss if such misrepresentation were allowed to continue.

* Interquell v OHIM, SCA Nutrition, Court of First Instance, Case T-20/02. Interquell applied to register a figurative mark containing the words HAPPY DOG as a Community trade mark for goods in Class 31 (dog food). An opposition was lodged based on two earlier UK marks that contained the word HAPPIDOG, also for goods in Class 31. The OHIM Opposition Division allowed the opposition and refused the application. The applicant’s appeal was dismissed on the basis that there was a likelihood of confusion. Aurally the words were identical. Conceptually, both HAPPY DOG and HAPPIDOG suggested to consumers that dogs, on eating the relevant goods, would become happy. The fact that the parties’ respective marks looked different could not overcome the aural and conceptual similiarities.


* Fieldturf v OHIM, Court of First Instance, Case T-216/02. Fieldturf applied to register the slogan LOOKS LIKE GRASS... FEELS LIKE GRASS... PLAYS LIKE GRASS as a Community trade mark for goods in Class 27 (synthetic surfaces). The application was refused on the ground that the mark was devoid of distinctive character under Article 7(1)(b) of the Community Trade Mark Regulation. The applicant’s appeal was dismissed. According to the CFI the applied-for mark suggested that the goods for which it was to be registered looked like grass, felt like grass and were as suitable for playing on as grass. Apart from being a generic description of Fieldturf’s product, the words would be perceived by consumers as a promotional slogan rather than as a trade mark.

The IPKat says: "Happy reading".

McAlpine -- the slippery slope here
Happy dogs here and here; happy dog ownershere . Happy dog lyrics here.
Turn grass into cash here. High grass yield here