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England and Wales High Court (Chancery Division) Decisions |
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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Julius Sämann Ltd & Ors v Tetrosyl Ltd [2006] EWHC 529 (Ch) (17 March 2006) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2006/529.html Cite as: [2006] FSR 42, [2006] EWHC 529 (Ch) |
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CHANCERY DIVISION
INTELLECTUAL PROPERTY
Strand, London, WC2A 2LL |
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B e f o r e :
____________________
| (1) JULIUS SÄMANN LTD (2) JULIUS SÄMANN LTD (3) H YOUNG (OPERATIONS) LIMITED |
Claimants |
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- and - |
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| TETROSYL LIMITED |
Defendant |
____________________
Mr Roger Wyand QC and Mr Simon Malynicz (instructed by Eversheds) for the Defendant
Hearing dates: 22-24 February, 27 February-1 March 2006
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Crown Copyright ©
Mr Justice Kitchin:
Introduction
a) United Kingdom trade mark number 833,966 ("966") registered in class 5 in respect of deodorants as of 1 May 1962;
b) Community trade mark number 91,991 ("991") registered in class 5 in respect of air fresheners as of 1 April 1996.
The third claimant ("Saxon") is the exclusive licensee or the exclusive sub-licensee under each of those trade marks.
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The issues
i) First, the claimants contend there has been infringement of the 966 mark under s.10(2) of the Trade Marks Act 1994 ("the Act"), corresponding to Art.5(1)(b) of Council Directive 89/104 ("the Directive"), and of the 991 mark under Art.9(1)(b) of Council Regulation 40/94 ("the Regulation").ii) Second, the claimants contend there has been infringement of the 966 mark under s.10(3) of the Act, corresponding to Art.5(2) of the Directive, and of the 991 mark under Art.9(1)(c) of the Regulation.
i) The Tree marks consist exclusively of the shape which gives substantial value to the goods (s.3(2)(c) of the Act, corresponding to Art.3(1)(e) of the Directive; Art. 7(1)(e)(iii) of the Regulation);ii) The Tree marks consist exclusively of indications which may serve to designate the kind, quality or other characteristics of the goods and there has been no sufficient use of the marks to render them distinctive (s.3(1)(c) of the Act, corresponding to Art. 3(1)(c) of the Directive; Art.7(1)(c) of the Regulation);
iii) In consequence of the acts or inactivity of the claimants, the Tree marks have become the common name in the trade for the products in respect of which they are registered (s.46(1)(c) of the Act, corresponding to Art.12(2)(a) of the Directive; Art.50(1)(b) of the Regulation).
Background
Magic Tree
The Tree product
Other products in the Magic Tree range
Advertising, promotion and sales of Magic Tree
Tetrosyl
Other products on the market
i) Mighty Oak: This is a product to which Tetrosyl attaches particular importance. It is a carded air freshener for the car or home and is made in the shape of an oak tree. It is sold in a variety of fragrances and colours. The brand name "Mighty Oak" appears prominently on the packaging and the product itself. The claimants began legal proceedings in respect of this product but discontinued them for reasons which were not disclosed. They accept that they are now unable to complain about it. It has been sold for a number of years in large supermarkets such as Asda, Safeway, Budgens, Sainsbury and Homebase. In my judgment this product has a rather different appearance to the Tree and Christmas Tree products. Although immediately recognisable as having a tree shape, it does not have the distinctive shape of a fir tree.ii) Lucky Clover: This is a carded air freshener in the shape of a clover leaf. It is sold in a variety of fragrances and colours. It has been sold through Halfords since January 2005. To my eye it has a quite different appearance to the Tree and Christmas Tree products.
iii) Classic Pine Forest: This is a carded air freshener in the shape of a pine cone. It bears upon it a mountain scene with pine trees. It is recognisably distinct in appearance to the Tree and Christmas Tree products. There is no evidence as to the extent of its sales although it was available through Morrisons in April 2005.
iv) Areon: This is a carded air freshener in the shape of a pine tree. Enquiries revealed it was made in Bulgaria and there is no evidence of anything other than isolated sales in the United Kingdom.
v) Ultra Norsk: This is a carded air freshener in the shape of a maple leaf. It is sold in a variety of colours and fragrances. This is a similar product to Lucky Clover and, to my eye, has a quite different appearance to the Tree and Christmas Tree products.
vi) Highland Fresh: This is another important product upon which Tetrosyl places particular reliance. It is a carded air freshener of triangular shape which bears upon it a highland scene with fir trees. It has been on sale in the United Kingdom since about 1990 through outlets such as Halfords, Asda, Maccess and Motorworld. In my judgment this looks very different to the Tree and Christmas Tree products.
vii) Happy Tree: This is a carded air freshener in the shape of a fir tree which carries the name "Happy Tree". It was found by the claimants' solicitors in a leased car but they have been unable to track down its source. It appears to have been an isolated sale.
viii) Pina Colada: This is arguably a fir tree shaped carded air freshener. It was found by the claimants' solicitors at an un-named car wash operation but has not been seen since. An application to register this shape as a trade mark in the United Kingdom was opposed by the claimants and the application was treated as withdrawn.
ix) Air Nature: This carded air freshener is in the shape of a fir tree. It was found at a trade fair in Germany. There is no evidence of any sales in the United Kingdom.
x) Natural : This carded product has a general tree shape. It formed part of a valet kit sold as a "Fathers Day Special" by Tesco but there is no evidence it is still sold. It has also been seen at a trade fair in Germany.
xi) Diamond Fresh: This is a small gel type product in the shape of a fir tree. A sample was bought in Taiwan and there is some suggestion that it may be available on a web site although the claimants have been unable to find it.
xii) Forest Fresh: This is a carded freshener having a tree shape. It was found at a trade fair in Germany. There is no evidence of any sales in the United Kingdom.
xiii) Nature and Four Seasons: These two carded air fresheners were found in Italy. They have leaf shapes. There is no evidence of any sales in the United Kingdom.
xiv) Pine and Poundland: These two products are of some interest. They were described, rightly in my view, as counterfeit. The claimants commenced proceedings and Poundland submitted to a consent order including an undertaking not to sell the product.
xv) Car-Torx: This is another product of some interest. It is a carded air freshener in the shape of a fir tree which was found on the market in December 2005. The claimants complained and an undertaking to cease distribution was recently obtained.
xvi) Holts Fruits and Forest: This is a rather unusual product, looking like a cross between a mushroom and a tree. In my judgment it is very different in appearance to the Tree and Christmas Tree products.
xvii) Pinaroma and Generatio 3: These are tree shaped products but there is no evidence they are available in the United Kingdom.
xviii) Tropics: This carded product is in the shape of a palm tree and carries the mark "Tropics". It is no longer available in the United Kingdom.
xix) Outdoor and Air Flower: This product is available through Tesco. It is a carded product having a pine shape and the claimants are currently in negotiations with Tesco with a view to having it withdrawn.
Distinctiveness of the Tree marks
i) There is a public interest in ensuring that descriptive terms may be freely used by all (see, for example, Case C -191/01, OHIM v Wrigley (Doublemint) [2004] RPC 18 at [31]; Case C-53/01, Linde AG v Deutsches Patent- und Markenamt [2001] RPC 45 at [73]);ii) A sign must be considered to be descriptive if at least one of its possible meanings designates a characteristic of the goods (see, for example, Doublemint at [32]);
iii) It is not necessary that the descriptive term is in use; it is sufficient if the term could be used to designate a characteristic of the goods ... see, for example, Doublemint at [32]);
iv) Where use is relied upon to establish distinctive character then that use must be use of the mark as a trade mark: Case C-299/99 Philips Electronics v Remington Consumer Products [2003] RPC 2 at [64];
v) Finally, consumers are not in the habit of making assumptions about the origins of products on the basis of their shape or the shape of their packaging (see, for example, Case C-136/02 Mag Instrument Inc v OHIM [2005] ETMR 46 at [29] to [32]).
Infringement
Art 5(1)(b)
(1) The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) ….
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.
"59 First, with respect to Directive 89/104, it follows from the Court's case law on the definition of use by a third party, for which provision is made in Art.5(1) of that directive, that the exclusive right conferred by a trade mark was intended to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions and that, therefore, the exercise of that right must be reserved to cases in which a third party's use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods (see Case C-206/01 Arsenal Football Club [2002] ECR I-10273, [51] and [54]).
60. That is the case, in particular, where the use of that sign allegedly made by the third party is such as to create the impression that there is a material link in trade between the third party's goods and the undertaking from which those goods originate. It must be established whether the consumers targeted, including those who are confronted with the goods after they have left the third party's point of sale, are likely to interpret the sign, as it is used by the third party, as designating or tending to designate the undertaking from which the third party's goods originate (see, to that effect, Arsenal Football Club, cited above, [56] and [57]).
61. The national court must establish whether that is the case in the light of the specific circumstances of the use of the sign allegedly made by the third party in the main case, namely, in the present case, the labelling used by Budvar in Finland.
62. The national court must also confirm whether the use made in the present case is one "in the course of trade" and "in relation to goods" within the meaning of Art.5(1) of Directive 89/104 (see, inter alia, Arsenal Football Club, [40] and [41]).
63. Where those conditions are satisfied, it follows from the case law of the Court that, in the event of identity of the sign and the trade mark and of the goods or services, the protection conferred by Art.5(1)(a) of Directive 89/104 is absolute, whereas, in the situation provided for in Art.5(1)(b), the proprietor, in order to enjoy protection, must also prove that there is a likelihood of confusion on the part of the public because the signs and trade marks and the designated goods or services are identical or similar (see, to that effect, Case C-292/00 Davidoff [2003] ECR I-389, [28], and Case C-291/00 LTJ Diffusion [2003] ECR I-2799, [48] and [49]).
64. However, where the examinations to be carried out by the national court, referred to in [60] of this judgment, show that the sign in question in the main case is used for purposes other than to distinguish the goods concerned-- for example, as a trade or company name--reference must, pursuant to Art.5(5) of Directive 89/104, be made to the legal order of the Member State concerned to determine the extent and nature, if any, of the protection afforded to the trade mark proprietor who claims to be suffering damage as a result of use of that sign as a trade name or company name (see Case C-23/01 Robelco [2002] E.C.R. I-10913, [31] and [34])."
i) The likelihood of confusion must be appreciated globally, taking account of all the relevant factors: Sabel BV v Puma AG [1997] ECR I-6191; [1998] RPC 199 at [22] to [24];ii) The matter must be judged through the eyes of the average consumer of the goods in issue, who is deemed to be reasonably well informed and reasonably observant and circumspect: Sabel at [22] to [24]; Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-3819; [2000] FSR 77 at [26] to [27];
iii) In order to asses the degree of similarity between the marks concerned the court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements taking into account the nature of the goods in question and the circumstances in which they are marketed: Lloyd at [27] to [28];
iv) The visual, aural and conceptual similarities of the marks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components. The perception of the marks in the mind of the average consumer plays a decisive role in the overall appreciation of the likelihood of confusion: Sabel at [22] to [24];
v) The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details: Sabel at [22] to [24];
vi) There is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it: Sabel at [22] to [24];
vii) The average consumer rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind; further the average consumer's level of attention is likely to vary according to the category of goods in question: Lloyd at [26] to [27];
viii) Appreciation of the likelihood of confusion depends upon the degree of similarity between the goods. A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa: Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc [1999] RPC 117 at [17] to [28];
ix) Mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient for the purposes of the assessment: Sabel at [26];
x) But the risk that the public might believe that the goods come from the same or economically linked undertakings does constitute a likelihood of confusion within the meaning of the section: Canon at [29] to [30].
i) The Tree marks have rounded branches and would probably be perceived by the average consumer as being some sort of pine or fir, whereas the Christmas Tree product is clearly identifiable as a "Christmas tree";ii) The Tree marks have more branches and are asymmetrical, whereas the Christmas Tree product has few branches that all point downwards and are symmetrical;
iii) The base of the Christmas Tree product is coloured red and contains trade mark material, CarPlan;
iv) There are no baubles on the Tree marks whereas there clearly are baubles (of different colours) on the Christmas Tree product;
v) There is "snow" on the branches of the Christmas Tree product whereas there is none on the Tree marks.
Q.1 "Have you seen this product before?
Q.2: "Can you tell me where you have seen it?"
They were then shown a board carrying a Tree product (Product B) and asked to indicate when they were ready to continue. They were then asked:
Q.3: "Have you seen this product before?
If the respondents gave any answers indicating confusion these were recorded. If not, those that said yes to Q.3 were asked:
Q.4: "Can you tell me where you have seen it?
Q.3: "Do you have any comments about any of these products?" If they gave any answer indicating confusion, this was recorded. If not, they were asked:
Q.4: "Have you seen any of these products before?" They were probed, if necessary: "which other ones?" Again, if they gave any answer indicating confusion, this was recorded. If not, those that said yes to product B at Q.4 were asked:
Q.5: "I'd now like you to think about product B. Can you tell me where you have seen it?" Again, if they gave any answer indicating confusion this was recorded. If not they were asked:
Q.6: "Do you think that any of the air fresheners on this board come from the same company that made this air freshener (point to product X)?"
Q.7 "Why do you say that?"
"Q. You thought at that stage you had seen both of them?
A. No, actually. I was just saying that this sentence is like a little bit ambiguous. I have only looked at this again recently. When I am saying it is the same as the other, what I mean is that is what I thought it was, I thought it was Magic Tree. When it says, "I have seen them in the same place", because she said, "Where have you seen this product?", I said, "Well, in the same place as what I thought I had seen the other one", but I had not seen the two together.
Q. Yes. You had not seen the two together and in fact you had not seen the first one at all?
A. No, obviously not. No, I presumed it was Magic Tree.
Q. As soon as you saw the second one you realised that the first one was not the one you thought it was?
A. Yes. "
"Q. You did not actually think it was the Christmas edition?
A. Well, I did actually, or a Christmas edition of the first product -- the second product. I thought it was a Christmas edition of the second product. To me it looks like a Christmas edition of that product."
"Q. What were you thinking, what were the options?
A. Is it a new product? Has it has been made by someone who is looking to bring something out for Christmas as a novelty Christmas item? I think it was October time, but I had been out Christmas shopping early, and it just looked like a Christmassy version of what was already available.
Q. "A Christmassy version of what was already available"?
A. Yes.
Q. Who did you have in mind as to what was already available?
A. The Magic Tree option that was -- that I knew from years ago."
"A. Yes, actually, because thinking back to this, this was in like October, but it is just because they are so -- they are so similar. It is a shape of a tree. I would have thought that they would have to have got like permission or something, or they would have been -- as I said to you before, they look like they are from the same company. You know, it might be like, I do not know, a side-line product or, you know, a similar, like I said before, really, seasonal product.
"Q. You said at the time you thought it was a Magic Tree or Forest Fresh product?
A. That is correct.
Q. But you were not certain?
A. I saw it. I was asked what my first thoughts were. I believe what I said was it is Magic Tree and I believe it is a Forest Fresh scent.
Q. What about the CarPlan at the bottom?
A. I did not take no notice of that at first. I just sort of saw it and sort of assumed it was something in partnership with CarPlan maybe or some kind of promotion or something. That was my initial thoughts."
"Q. In the questionnaire, you were shown, first of all, the single air freshener, the CarPlan one.
A. Yes.
Q. You were asked whether you seen that and you said: "Yes, on mirrors and in petrol stations." Then, in your witness statement, you say: "When I was taken to question 1" – this is by the solicitor afterwards -- "I said that I did not know whether I had got confused at the time." Were you asked some question? Were you asked whether you were confused when you said "yes"?
A. No, I was not asked if I was confused. I just thought that it was important to point out that, at the time I said I had seen the first image before, I had not seen the other images and when I saw the other images I realised that I had not and that I had been confusing it with the other images.
Q. I see. As soon as you saw the second lot, you realised that you had not seen the first one?
A. Exactly."
Art. 5(1)(c)
Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
"A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services, a sign which --
(a) is identical with or similar to the trade mark, and
(b) ....
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."
Art. 6(1)(b)
"The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade,
a. ….
b. indications concerning the kind, quality ….or other characteristics of goods …;
c. …..
provided he uses them in accordance with honest practices in industrial or commercial matters."
Validity
i) The Tree marks consist exclusively of the shape which gives substantial value to the goods;ii) The Tree marks consist exclusively of indications which may serve to designate the kind, quality or other characteristics of the goods and there has been no sufficient use of the marks to render them distinctive;
iii) In consequence of the acts or inactivity of the claimants, the Tree marks have become the common name in the trade for the products in respect of which they are registered.
Art. 3(1)(e)
"3. (1) The following shall not be registered or if registered shall be liable to be declared invalid:
(e) signs which consist exclusively of:
- the shape which results from the nature of the goods themselves, or
- the shape of goods which is necessary to obtain a technical result, or
- the shape which gives substantial value to the goods;"
"If any one of the criteria listed in Art.3(1)(e) is satisfied, a sign consisting exclusively of the shape of the product or of a graphic representation of that shape cannot be registered as a trade mark".
"Even though it is only a picture which is formally the subject of the registration, both sides, in my judgment rightly, treated it as a registration covering also a three-dimensional shape. It would be quite artificial to regard a straight picture of a thing, and the thing itself, as significantly different under a law of trade marks which permits shapes to be registered"
"78. The rationale of the grounds for refusal of registration laid down in Art.3(1)(e) of the Directive is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors. Art.3(1)(e) is thus intended to prevent the protection conferred by the trade mark right from being extended, beyond signs which serve to distinguish a product or service from those offered by competitors, so as to form an obstacle preventing competitors from freely offering for sale products incorporating such technical solutions or functional characteristics in competition with the proprietor of the trade mark.
79. As regards, in particular, signs consisting exclusively of the shape of the product necessary to obtain a technical result, listed in Art.3(1)(e), second indent, of the Directive, that provision is intended to preclude the registration of shapes whose essential characteristics perform a technical function, with the result that the exclusivity inherent in the trade mark right would limit the possibility of competitors supplying a product incorporating such a function or at least limit their freedom of choice in regard to the technical solution they wish to adopt in order to incorporate such a function in their product.
80. As Art.3(1)(e) of the Directive pursues an aim which is in the public interest, namely that a shape whose essential characteristics perform a technical function and were chosen to fulfil that function may be freely used by all, that provision prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see, to that effect, Windsurfing Chiemsee, paragraph 25)"
"30. The immediate purpose in barring registration of merely functional shapes or shapes which give substantial value to the goods is to prevent the exclusive and permanent right which a trade mark confers from serving to extend the life of other rights which the legislature has sought to make subject to limited periods. I refer, specifically, to the legislation on industrial patents and designs."
"The subsection is only concerned with shapes having 'substantial value'. That requires a conclusion as to whether the value is substantial, which in my view requires that a comparison has to be made between the shape sought to be registered and the shapes of equivalent articles. It is only if the shape sought to be registered has, in relative terms, substantial value that it will be excluded from registration.
In the present case, the shape registered by Philips has a substantial reputation built up by advertising and reliability and the like. That in my view is not relevant. What has to be considered is the shape as a shape. If that is done I do not believe that the evidence established that the registered shape has any more value than other shapes which were established to be as good as and as cheap as that which is registered… "
Art. 3(1)(c)
"1. The following shall not be registered or if registered shall be liable to be declared invalid:
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality ……………..……or other characteristics of goods…"
"A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1 (b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration".
Art 12(2)(a)
"2 A trade mark shall also be liable to revocation if, after the date on which it was registered,
(a) in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered;"
i) First, the fact that the language refers to "the" common name in the trade does not mean that it must be the only name, taking a purposive construction: Hormel Foods Corp v Antilles Landscape Investments NV [2005] RPC 28;ii) Secondly, the words "in the trade" do not confine the inquiry to professional traders. The perception of the public plays a decisive role: Case C371/02 Bjornekulla Fruktindustrier AB v Procordia Food AB [2004] R.P.C. 45;
iii) The language of Art. 12(2)(a) cannot have been intended to cover word marks only, notwithstanding reference to the "common name in the trade".
iv) A tree shape in the form sold by the claimants and variations thereof (i.e. the concept of a tree shape about two or three inches in height, that hangs from a rear view mirror) is generic. Such items are not seen as having trade mark significance but are seen in the same way as other ornaments that commonly hang from a rear view mirror, such as boxing gloves, furry dice, religious symbols and so on;
v) They are generic for the goods in issue, namely car deodorants and car air fresheners;
vi) The reason for this is in large part due to the inactivity of the claimants. While they have occasionally taken action against some third parties, they have allowed many others to remain unchecked over many years.
Passing Off
"First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identify as the manufacturer or supplier or the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff" (at pg. 406, lines 25-42)
Conclusion
