BETTER LATE THAN NEVER - CIFUENTES

A case concerning disclaimers decided last month by IP new-boy Lawrence Collins J.

General Cigars was the proprietor of the mark CIFUENTES WINKS which it applied for in 1991 under the Trade Marks Act 1938. However, General Cigars had to disclaim the CIFUENTES element of the mark since the Registry’s practice at the time was not to grant trade marks in respect of foreign surnames in the absence of proof of acquired distinctiveness (CIFUENTES appeared in a number of instances in the Madrid telephone directory). General Cigar’s mark was finally registered in 1994. Partagas applied to register CIFUENTES as a trade mark for the same goods in 1995. General Cigars opposed Partagas’ application. Partagas countered that the opposition had to be rejected because the only element that the two marks had in common, the term CIFUENTES, had been disclaimed by General Cigars. Under the transitional provisions concerning the introduction of the Trade Marks Act 1994, pre-existing disclaimers had to be treated as if they had been entered on the Register under the 1994 regime. Under the 1938 Act, an infringement action could not succeed where the only similarity between the two marks was based on the disclaimed element of the earlier mark but this was not the case in opposition proceedings. In actions before the Registry, disclaimed elements could not be ignored. The question to be answered in this case was whether the same approach applied under the 1994 Act, or if instead disclaimers had to be taken into account in the context of both oppositions to registration and infringement actions. A further complication arose from the fact that the Registry had altered its policy on foreign surnames, abandoning the rule that such names were automatically to be considered lacking in inherent distinctiveness, and so it was possible that the disclaimer was subject to being removed.

Lawrence Collins J decided that the 1938 approach didn’t apply under the 1994 Act.

* All parties accepted that the disclaimed matter can be relied upon when there is a possible conflict between the later mark and both disclaimed and non-disclaimed elements of the earlier mark. The issue arose over the situation in which the only overlap is between the later mark and a disclaimed element of the earlier mark.

* There was no evidence from Parliamentary materials that the position under the 1938 Act with regard to disclaimers was meant to be retained under the 1994 Act.

* The practice on the Community trade mark was neither helpful to General Cigar nor relevant. The only decision on point was the Board of Appeal’s decision in FURSTENBERG, but this decision on likelihood of confusion under Art.8 of the CTM Regulation could have no bearing on s.13 of the 1994 UK Act.

* It was difficult to imagine that Parliament could have intended for a disclaimer to be taken into account for infringement purposes but not for opposition and invalidity purposes since one of the uses for s.5 is to pre-empt the need for infringement actions by preventing the registration of marks that, if used, would infringe.

* General Cigar’s suggested distinction between the effect of a disclaimer on registration matters and on infringement issues was based upon a false premise since in both types of situations a disclaimer operates to affect the scope of protection by influencing the analysis of the likelihood of confusion. Because this concept was common to both s.10 and s.5, it applied equally to both scenarios.

* It was conceded that any distinction between registration and infringement issues did not apply to territorial limitations. Since both territorial limitations and disclaimers were to be found in the same section, s.13, of the 1994 Act, any argument that sought to make a distinction based on the context of the part of the 1994 Act in which s.13 occurred was flawed.

* As a result of this reasoning, no parallel could be drawn between the 1994 Act and the sections of the 1938 Act that led to the effect of disclaimers being limited to infringement actions. Thus the Hearing Officer in the PACO decision was correct, even if some criticisms could be made of his reasoning.

* There was an element of unfairness in the result because the Registrar had altered his practice with regard to the registration of surnames, and so there was the possibility that the disclaimer of CIFUENTES had only been necessary under an outdated approach to the registration of surnames. It was therefore arguable that the correct approach in this case was to stay the case in order to enable General Cigar to apply to have the disclaimer removed under s.64(5) of 1938 Act, which provides that the Registrar may remove from the register matter that appears to him to have ceased to have effect. This was a matter for further argument if General Cigar wanted to make such an application.

The IPKat notes that while this case concerned the position under the transitional provisions, the same approach to disclaimers should apply to marks applied for and granted under the 1994 Act.