[Guest post] Retromark Volume VII: the last six months in trade marks

It’s time for the seventh volume of Retromark, Darren Meale (Simmons & Simmons)’s rundown of notable trade mark cases over the past six months.

Over to Darren:

Retromark Volume VII: the last six months in trade marks

It’s now three years since I began Retromark, and we are on to a seventh volume. I write this in an extraordinary and frankly terrible time for many of us. I hope I can offer you a minor distraction as I round up 10 cases from the past six months which have caught my eye.

1. Bad faith Bonzo band name and mulla Doo-Dah brouhaha

The Bonzo Dog Doo-Dah Band saga O-664/19, O-042-20 UKIPO (October 2019 and January 2020) and [2020] EWHC 710 High Court (April 2020)

The case name might suggest some light relief, but this dispute featured at least three actions, two decisions across 59 pages, 17 witness statements (including one from Stephen Fry), two CMCs, two disclosure requests, a request for cross-examination, a request for security for costs, a crowd funding and (no joke) the death of two out of six of the applicant band members.

To vastly simplify, a company linked to a former promoter of a band registered the band’s name. Then all hell broke loose. The band is The Bonzo Dog Doo-Dah Band, a sort of jazz/pop ensemble formed in the 1960s with a membership so complex it has its own diagram on Wikipedia. Anglo Atlantic registered a UKTM for the band’s logo in 2015, the band members then attacked it while filing their own word mark, which was then opposed by Anglo Atlantic. What followed was a massive bun fight which concluded with the band winning its invalidity action on the basis of both passing-off and bad faith and Anglo Atlantic’s opposition failing. The band was also awarded costs of £2,784.

The crowd funding, which raised £17,432, was in part set up to close the “legal loophole” which the band members claim allows anyone to file for a trade mark without proving their entitlement to it, but the band reports it was all spent on legal fees fighting the dispute. Just as I finished writing this, a decision in a related High Court claim brought by Anglo Atlantic was handed down in which Anglo Atlantic’s claims were roundly struck out along with some pretty damning words from the judge. Perhaps some more costs are coming the band’s way.

2. Invalidity Bones and the Cancellation of the Crystal Skull

Skullduggery Rum Ltd v Globefill Incorporated [2020] ETMR 9 EUIPO Cancellation Division (October 2019)

Ignore my misleading title – this is nothing to do with Indiana Jones and, in a rare positive decision for a non-traditional mark, did not lead to the cancellation of Globefill’s EUTM for the 3D shape illustrated below. The proprietors use these bottles to sell the rather cool looking Crystal Head Vodka (available here for about £40 a bottle), something the applicant for invalidity obviously liked the idea of and sought to invalidate the registration on the basis that it was devoid of distinct character and that the shape gives substantial value to the alcoholic goods decanted therein.

The EUIPO’s Cancellation Division refused the application, upholding the registration. It repeated the oft cited mantra that although shape marks are not treated differently from other categories of marks, they are in fact treated differently because they are only distinctive if they “depart significantly from the norm or customs of the sector”. Fortunately, the Cancellation Division felt that it “stands out immediately that the EUTM is not a typical bottle shape” and having reviewed the limited evidence of other skull-like bottle shapes in the market, concluded the mark was not devoid of distinctive character.

Interestingly, in response to an argument that by failing to put forward acquired distinctiveness evidence, the proprietor was acknowledging that its mark was not distinctive, the Cancellation Division disagreed and remarked that “not doing so could be seen as confirmation of its conviction that its mark is inherently distinctive”. That might suggest that in general acquired distinctiveness is best left as a back-up argument to be raised only after arguments based on inherent distinctiveness fail (at least in the first instance – see the EUIPO’s Guidelines at Section 4 Chapter 14 paragraph 2 to make sure you do this at the right time).

On the substantial value ground – a ground which has always been somewhat mysterious and challenging to frame – the Cancellation Division followed the guidance provided by Loudspeaker Case T-508/08 EU General Court (2011). That guidance suggests certain questions, including “Is the design of the EUTM a very important element in the consumers’ choice?” which in my view could readily be answered affirmatively in reference to the crystal skull. The Cancellation Division did not do so, ultimately concluding that this was not a mark which fell foul of this ground.

A correct decision in my view – if as outlandish a shape as this cannot qualify as a shape mark, then what can? IPKat here.

3. Bash the Bentley in brand bust-up

Bentley 1962 v Bentley Motors [2019] EWHC 2925 (November 2019)

This case featured in the first ever volume of Retromark, when Bentley Motors failed to invalidate a UKTM owned by clothing company Bentley Clothing. Roll forward a couple of years to a High Court judgment in which Bentley Clothing has succeeded in a claim for trade mark infringement against Motors. Bentley Clothing objected to Motors’ use of the word BENTLEY on clothing (being essentially brand extension merchandise as Motors is still very much in the automobile business as part of the Volkswagen group). Motors did not resist a finding of infringement (subject to two argued defences) where it used the word BENTLEY alone but claimed that there was no infringement where it used the word as part of the below combination, which it argued was a single sign:

HHJ Hacon, sitting as a Deputy High Court Judge, concluded that the average consumer would perceive this to be two distinct signs used simultaneously – spelling doom for Motors.

An interesting (but somewhat academic) point arose as to the application of transitional provisions relating to the “new” trade mark law that came into force in the UK in 1994, the upshot of which was that Motors retained a right to sell jackets, silk ties, caps and scarves under the BENTLEY sign but not to use that sign on the goods themselves or swing tags – something of a very minor consolation prize. A defence based on honest concurrent use also failed.

After a long and hard-fought battle started back in 2015, it is Bentley Clothing that prevails – it got there first, and there was nothing Bentley Motors could do about it. IPKat here.

4. Cannabis caper causes Conte’s court collapse

Sante Conte v EUIPO Case T-683/18 EU General Court (December 2019)

Worryingly, type “legality of cann” into Google and the autocomplete returns “cannibalism”. While I am quite confident that dining on one’s fellow humans remains illegal even at a time like this, cannabis consumption has become increasingly accepted in the developed word in recent years, with Canada (for example) making it legal in late 2018.

The Netherlands has long been a location where consumption is common and largely legal, but Italy is the source of the trade mark that was in dispute in this case. Sante Conte, resident in Napoli, filed for the largely banal figurative mark depicted below for various food and beverage goods and services.

The EUIPO refused it on the basis that it was devoid of distinctive character. The EUIPO Board of Appeal refused it, but on the basis that the mark was “contrary to public policy or to accepted principles of morality”. The General Court upheld that decision: the stylised cannabis leaf is the media symbol for marijuana; AMSTERDAM refers to the sale of narcotics in that city; and STORE would indicate to consumers that goods sold under the mark would be narcotics.

The General Court was not completely blind to the changing times, but it did conclude that products derived from cannabis remain regarded as illegal narcotics including in the UK, Sweden, France and others.

Perhaps in time (and following the hardships of Coronavirus), these sorts of products, and in turn these sorts of marks, may become more widely accepted. IPKat here. Conte’s EUTMs, including some variations on the above, here.

5. Ba ba ba, bye Babybel

Fromageries Bel v J Sainsbury Plc [2019] EWHC 3454 (December 2019)

Fact of the day: I don’t like cheese (you could say I’m not fondue it). I know that will shock many of you fromage-aficionados, but look at this way – that’s more cheese for you.

This case is about cheese wrapped in red wax, and a 3D UK trade mark registration filed back in 1996 with the above image accompanied by a description/limitation which included “the mark is limited to the colour red… [it] consists of a three dimensional shape and is limited to the dimensions shown above”.

Shape marks don’t usually fare grate and brie-lieve it not, this one failed to do any feta. The UKIPO found that the mark was invalidly registered after an attack by supermarket Sainsbury’s. Fromageries Bel, owner of the MINI BABYBEL brand under which this shaped cheese is sold, appealed to the UK High Court. But it didn’t do them any gouda – the Court upheld the UKIPO’s finding and the mark is no more.

Despite an attack on several bases, the mark was only lost in the UKIPO because of the lack clarity caused by the reference to “the colour red” in the description of the mark. The UKIPO Hearing Officer was persuaded that without better particularisation (such as a Pantone number) the mark must be held invalid under the general Sieckmann principles. That was the case even though the mark was not a colour per se mark.

The Court, in a judgment by HHJ Hacon sitting as Deputy High Court Judge, reached the same conclusion as the Hearing Officer but with slightly different reasoning. In a subtle conclusion, the judge did not decide that a mark lacking a Pantone number or other precise description of its colours would always be invalid, but that a precise description would be more important for marks where they have elements other than colour which are less distinctive. To put another way, if your mark isn’t very distinctive overall, you better be sure to specify the colour (see paragraph 67 for the judge’s exact words, which include the remark that it “will always be a question of fact and degree).

Once it was clear that the mark would fail for lack of a precise description, Fromageries Bel was left to fall back on two additional arguments. First, that the description should be read to refer to the red shown in the image. The judge did not think that was right, concluding that when the applicant went to the trouble of saying “red” in the description without adding a limitation, it meant red without any limitation. Secondly, that it should be entitled to limit down “red” to “Pantone 193C”, the colour referenced in the French priority application for the mark. The Court held this was not permissible – as many will know it is not possible to amend a mark post-filing (in contrast to the ability to narrow the list of goods and services).

So another example of the importance of getting the words of any description right – Volume V has an earlier illustration from a Cadbury case in 2018. You cheddar think about them carefully if you want to avoid feeling bleu. IPKat here.

(As you will have seen, although I am nacho expert on cheese, I have tried very caerphilly to insert as many terribly bad cheese puns as I can. I hope you enjoyed them).

6. Proof of use: sales of your goods second-hand won’t cut it

Aiwa Co. Ltd v Aiwa Corporation [2019] EWHC 3468 (December 2019)

The once mighty AIWA hi-fi brand was big back when hi-fis were a thing. After 2008 and despite the brand being sold on to several big players, the only sales of AIWA branded products in the UK were the sale of second-hand goods made by third parties on places like eBay.

On appeal from the UKIPO which revoked the mark for non-use, Mr Justice Mann in the High Court adopted different reasoning but still revoked the mark. At a simple level, this case might be seen to establish a general principle that a third party’s resale of your products does not amount to genuine use, but the judge was careful to make a decision on the facts and so expressly did not establish such a principle, although he did remark that while other cases may vary, this case was likely to be typical of most. The judge also noted that leaving aside this legal point, the evidence of even second-hand sales was “rather thin”. So perhaps this case was never going to be the best candidate for the argument that, while you hang on to a historical brand but others continue to sell your old goods to new customers, that is enough for your trade mark registration to persevere. It probably isn’t. IPKat here.

7. Skykick: oh we hoped for so much more

Sky v SkyKick Case C-371/18 CJEU (January 2020)

I can’t do this case justice in a few paragraphs, and I’ve just written an editorial and a Current Intelligence piece for JIPLP so please do read those when they come out. There are also at least three pieces on the IPKat one, two and three (none written by me).

Leaving aside the merits of Sky’s own approach to its trade mark portfolio, this case presented the CJEU with the opportunity to deal with at least two real problems in EU trade mark law: (1) the use of extremely long lists of goods and services (Sky has one registration running to 8,255 words) which include things for which the applicant has no genuine intention to use; and (2) the use of very broad terms like “computer software”, which in my view have little place in a world where almost literally everything is provided using software. While providing a gentle warning to those who might seek to abuse the system, the CJEU otherwise largely endorsed a business as usual approach – and did so with little in the way of clear (or any) reasoning, as illustrated by its now infamous paragraph 66.

How about we take computer software out of class 9, and have applicants stick it in the class to which the type of software relates? Class 36 for “software for insurance”, for example. Anyone see any difficulties with that?

8. easyGroup full and frank fiasco forces flight fight failure

Easygroup v Easyfly [2020] EWHC 40 (January 2020)

You’ll all know easyGroup (the “easy” brand holding vehicle of Sir Stelios Haji-Ioannou) and its reputation for suing anyone who tries to use the word “easy”. In this latest spat, Mr Justice Nugee in the English High Court was not interested in hearing about easyGroup’s litigation strategy. But he did conclude that when it sought permission to serve Easyfly, a domestic airline in Colombia, out of the jurisdiction in February 2018, it failed to give full and frank disclosure of the circumstances of the case. In the judge’s own words: “I have been particularly struck by the fact that nowhere did [easyGroup] really set out that what easyGroup were seeking to do in this action was to bring a claim in England against a domestic Colombian airline that only offered internal flights in Colombia”.

The judge accordingly decided to set aside the order granting permission to serve out of the jurisdiction, with the effect that easyGroup would have to sue Easyfly afresh, two years after its first attempt. easyGroup promptly did so on 22 January, so this one isn’t over.

The judgment has a lot more in it, including some limited discussion of the underlying merits of easyGroup’s claim, as well as its attempts to bring a third defendant, ATR – an aircraft manufacturer, into the case for acts done in France and Spain (which would also have failed had the case not been dismissed in its entirety). IPKat here.

Full and frank disclosure of my own: Simmons & Simmons is currently representing an entirely unrelated defendant in another High Court claim brought by easyGroup.

9. Gleissner’s PARASITE – another bad faith application

Square Enix v Fashion One O/146/20 UKIPO (March 2020)

Michael Gleissner, surely deserving of a dedicated Lifetime Achievement Award at the next Retromark Awards, has lost another two registrations after the UKIPO found he filed them in bad faith.

This time it was the turn of PARASITE and PARASITE EVE, two registrations filed by Gleissner’s Fashion One company shortly after he succeeded in a non-use revocation action against Square Enix’s EUTM registration for the same name – Parasite Eve being a 1998 survival horror video game.

Gleissner surrendered his registrations four days before the hearing, hoping that would be the end of the matter. But the UKIPO Hearing Officer decided to press on on the basis that surrender causes a registration to end on the date of surrender whereas a finding of bad faith would extinguish the registration from the get go (for Latin aficionados and Roman time travellers the terms are ex nunc and ex tunc). Square Enix also sought to press on with its invalidity actions, framed not just in bad faith but also in passing-off.

In finding bad faith, the Hearing Officer became the first I am aware to cite SkyKick as providing a basis to enhance a bad faith claim, while also drawing on all of Gleissner’s past history along with a Latvian court’s findings on Latvian versions of the marks in dispute. On passing-off, the Hearing Officer found that PARASITE EVE would be seen as a title of a computer game, but also as a badge of origin, meaning Square Enix enjoyed goodwill in the name. The Hearing Officer decided to find invalidity on the basis of passing-off too, a claim which was held to be bolstered by the bad faith finding.

IPKat here.

10. Amazon not liable for stocking sellers’ infringing goods, but a very narrow analysis from the CJEU

Coty v Amazon Case C-567/18 CJEU (April 2020)

Under EU trade mark law, stocking goods for the purposes of offering them or putting them on the market is an act of infringement. Amazon, the retail and marketplace goliath, sells its own products but also those of others. It also offers sellers other services that sit in the middle, such as “Fulfilment by Amazon”. In Amazon’s words, the seller sends its products to Amazon which takes care (for a fee) “of storage, delivery to customers, customer service and returns handling”. Can the provision of those services put Amazon in the frame for trade mark infringement where its sellers sell Coty’s non-trade mark exhausted perfumes using Amazon’s services?

The CJEU, taking a characteristically narrow approach to addressing the issue before it, did not really answer this and was not really asked it. The German Bundesgerichtshof (BGH) put a rather self-fulfilling question to the Court, one which assumed no knowledge of infringing goods on the part of Amazon and that the third-party seller was the only one intending to put the goods on the market:

Does a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stock those goods for the purpose of offering them or putting them on the market, if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market?

The CJEU was clear that to be liable, Amazon would itself need to “pursue the aim… [of] offering the goods or putting them on the market”. As you can see from the above, the CJEU quickly concluded that the BGH’s own question “unequivocally” stated that Amazon was not doing this. Unsurprisingly, it therefore answered the BGH’s question with a ‘no’.

Perhaps recognising that the BGH’s question had left it doomed, Coty urged the CJEU to consider the applicability in these circumstances of Article 14 of the E-Commerce Directive (the hosting safe harbour) and Article 11 of the Enforcement Directive (injunctions against intermediaries whose services are used to infringe), but the Court declined to do so.

The judgment is very different to the opinion given by AG Campos Sánchez-Bordona (still not available in English, French version here), which took a much closer look at the realities of the Fulfilment by Amazon programme from the perspective of the end consumer, noting Amazon’s statement that it does “the heavy lifting” and the difficulty that consumers may face in working out who they are really buying a product from on Amazon. The AG concluded that Amazon was not a neutral party but played an active role in the activities of its sellers, meaning it could be held liable for stocking the infringing goods. The IPKat’s review of the AG’s Opinion is here. Exciting as this judgment might have been, we will need some rather different questions put the CJEU if we are really to get to into these issues.

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If that’s not enough Retromark for you, we are still planning to return with our delayed half-day conference with the IPKat, as soon as in-person conferences begin again. There’s also our once a weekly Retromark: Live podcast – recap here and sign-up for Episode 5 this Thursday here. Thanks for reading!

Thanks to my colleague Sarah Turner for helping compile the Volume’s featured cases. Sarah thought I might have come across a little glum in this write up, and perhaps that’s a fair assessment given the current world order. However, I reacted to that by inserting about 50 cheese puns above so here’s hoping that will balance things out.

• Volume I – April 2016 to March 2017
• Volume II – March 2017 to September 2017
• Volume III – November 2017 to April 2018
• Volume IV – May 2018 to October 2018
• Volume V – November 2018 to March 2019
• Volume VI – April 2019 to October 2019