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Intellectual Property Enterprise Court |
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You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra) [2015] EWHC 1772 (IPEC) (02 July 2015) URL: http://www.bailii.org/ew/cases/EWHC/IPEC/2015/1772.html Cite as: [2015] EWHC 1772 (IPEC) |
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CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL |
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B e f o r e :
____________________
| THE UKULELE ORCHESTRA OF GREAT BRITAIN |
Claimant |
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| - and - |
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| (1) ERWIN CLAUSEN (2) YELLOW PROMOTION GmbH & CO. KG t/a THE UNITED KINGDOM UKULELE ORCHESTRA |
Defendants |
____________________
Thomas Elias (instructed by Fladgate LLP) for the Defendants
Hearing dates: 12-14 May and 24 June 2015
____________________
Crown Copyright ©
Judge Hacon :
"Organisation, management, staging and provision of live events, concerts, musical performances, and theatre and stage productions; concert services, orchestra services, production of radio and television programmes; publication of electronic publications relating to music and musical instruments; entertainments services."
The CTM is also registered in respect of various goods in classes 9, 15, 16, 18, 25 and 28, including these in class 9:
"CDs, DVDs, video and audio tapes."
Application to strike out
"There is a joke involved too when the United Kingdom Ukulele Orchestra indicates that George Harrison copied his hit 'My Sweet Lord' from an old motown soul number. There is, in point of fact, the Ukulele Orchestra of Great Britain – and they claim to have started the fun with the ukulele. The colleagues are 'not amused' that the danger of mistaken identity is very high. That does not alter the fact that the United Kingdom Ukulele Orchestra plays felicitous arrangements and shows much wit and skill in music and in presentation."
"Eight [musicians] in number. Two more than the somewhat better known Ukulele Orchestra of Great Britain, with whom the octet is often confused. The more so as the orientation of the programme of entertainment is the same, with comic presentation and in addition metamorphosed pieces of music from the realms of jazz and pop. It went down well in the Aula am Aasee on Sunday."
"The United Kingdom Ukulele Orchestra: that is two hours of musical cabaret during which it becomes clear that Peter Moss's band has been put together in order to have a share in the success of the longer established and rival Ukulele Orchestra of Great Britain. The gags are scripted, the fillers rehearsed. Every minute is worth it nevertheless because it is actually a damn good copy. At times it is clearly more relaxed and enjoyable than the original. And in this way the orchestra makes it clear in a charming way that it doesn't depend on the size of the instrument. Technique alone counts."
Grounds for invalidity of the CTM
1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) where the Community trade mark has been registered contrary to the provisions of Article 7;
(b) …
2. Where the Community trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
3. Where the ground for invalidity exists in respect of only some of the goods or services for which the Community trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.
1. The following shall not be registered:
(a) …
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
…
(g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;
…
2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
Art.7(1) and (c)
The law
"[73] The most recent judgment of the CJEU to which we were referred is Agencja Wydawnicza Technopol sp z oo v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-51/10 P) [2011] ETMR 34. A number of points emerge from that judgment.
[74] The court first identified the underlying interest protected by art.7(1)(c) as:
'…that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services…' ([37]).
[75] Secondly, in order to come within art.7(1)(c) it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes ([38]).
[76] Thirdly, it is irrelevant whether there are other, more usual, signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration. Article 7(1)(c) does not depend for its application on the sign at issue being the usual means of referring to the goods or their characteristics ([39] and [40]).
[77] Fourthly, the context of the list of specific terms in art.7(1)(c) (quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service) shows that those terms are all regarded as 'characteristics' of the goods. The list is not exhaustive, as the reference to 'other characteristics' shows ([49]).
[78] Fifthly, and importantly, the court said this at [50]:
'The fact that the legislature chose to use the word 'characteristic' highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics … " .
[79] Thus it is the presumed perception of the average consumer which is relevant. It is not of course enough if the connection between the signs and a characteristic of the goods does not dawn immediately on the average consumer. If it requires any thought or explanation it is not 'easily recognisable'.
[80] Thus, in Agencja Wydawnicza Technopol [2011] ETMR 34, the applicant was seeking to register the numeral "1000" in relation, for example, to puzzles. The General Court had held:
'26. In that regard, it should be noted that, as is apparent from paragraphs 18 and 19 of the contested decision, there is from the point of view of the relevant public a direct and specific link between the sign '1000' and some of the characteristics of the goods concerned. The sign '1000' alludes to a quantity and will immediately be perceived by the relevant public, without further thought, as a description of the characteristics of the goods in question, in particular the number of pages and works, amount of data, or the number of puzzles in a collection, or the ranking of items referred to in them. That conclusion cannot be invalidated by the fact that the mark applied for is composed only of figures, since … the missing information may be readily identified by the relevant public, the association between the figure and those characteristics of the goods in question being immediate.
27. In particular, as the Board of Appeal stated in paragraphs 18 and 19 of the contested decision, brochures, periodicals and magazines frequently publish ranking lists and collections, with the preference then being for round numbers in order to indicate content, the Board of Appeal referring in particular in that regard to the example of the publication '1000 Fragen und Antworten' ('1000 Questions and Answers'). This strengthens the descriptive relationship that exists from the point of view of the average consumer between the goods in question and the [sign '1000']. The court considered that, in that context, the average consumer would perceive 1000 as an indication of the number of puzzles, and for that reason it was unregistrable."
[81] Other cases make it clear that it is enough if at least one of the possible meanings designates a characteristic of the goods: see, e.g. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Wm Wrigley Jr Co ("DOUBLEMINT") (C-191/01 P) [[2003] ECR I-12447; [2004] RPC 18 at [32].
[82] It is nevertheless the case that signs which are candidate trade marks lie on a continuum between the entirely generic, through the descriptive to the inherently distinctive. Not every word which alludes to or is suggestive of some aspect of the goods or services is necessarily unregistrable. It is of course trite that it is not an objection to registration that the word has a dictionary meaning, or is an ordinary English word. The objection bites on relationships between the word and the characteristics of the goods or services for which it is sought to be registered which the average consumer will immediately perceive.
[83] I have found helpful and agree with the analysis of the Advocate General in his opinion in DOUBLEMINT [2003] ECR I-12447 at [61]–[64]. He draws attention to the fact that that there is no clear-cut distinction between indications which designate a characteristic and those which merely allude suggestively to it and suggests three considerations which may determine on which side of the line the indication lies. Although the entire passage repays reading, I will summarise his three points as: (i) how factual and objective is the relationship between an indication and the product or one of its characteristics? (ii) how readily is the message of the indication conveyed? and (iii) how significant or central to the product is the characteristic? Asking these questions will assist a fact-finding tribunal to determine whether it is likely that a particular indication may be used in trade to designate a characteristic of goods."
"[62] The name of a performer, like the name of an author of a literary or musical work, undoubtedly indicates the origin of the performance or the work, as the case may be. Accordingly performers and authors may in appropriate circumstances have a remedy in passing off if performances or works of others are marketed under their names or confusingly similar names (see, e.g. Sutherland v V2 Music Ltd [2002] EWHC 14; [2002] E.M.L.R. 28). As Lord Nicholls and Lord Walker say, however, it does not necessarily follow that the name of a performer or author acts as an indication of the trade origin of a product (a CD or a book or even an MP3 file) which embodies the performance or work."
"[66] The applicant's attorney argued that the relevant consumers in the present case, being mainly fans of the Group, would be knowledgeable about intellectual property rights and would expect merchandise relating to the Group, including posters, to be licensed by the Group or its vehicle the applicant. I am not satisfied that this is correct. As the hearing officer held and the Registrar's representative submitted, consideration of the copyright position suggests the opposite. The first owner of copyright in a photograph of the Group will be the photographer or the photographer's employer. Accordingly, exploitation of photographs of the Group will not necessarily require the Group's licence. Accordingly, even if performers' or authors' names may be registered in respect of compact discs and books on the basis that members of the public would expect such items to be authorised by the performer or author (contrary to what is suggested above), that would not mean that such marks were registrable for posters.
[67] Furthermore, this seems to me to be a matter for evidence. If the applicant wishes to secure registration on the basis that consumers would expect posters depicting the Group to be licensed by the Group, then in my judgment it is incumbent on the applicant to adduce evidence to show that the perception of the average consumer is as it contends. It has not done so."
"[69] The essential problem in all these cases is one of fact. The question is always concerned with what the relevant sign signifies to the average consumer (or equivalent in a passing off case). When famous names or images are applied to merchandise they are not necessarily being used as indicators of origin of the goods at all. As Richard Arnold QC (as he then was) noted in LINKIN PARK, referring back to TARZAN, what better way is there to describe a poster depicting the band LINKIN PARK as a "LINKIN PARK poster". So if one imagines a consumer asking in a shop for a LINKIN PARK poster, in that context the mark is being used descriptively and it would be difficult if not impossible for a trader to sell such a poster without calling it a LINKIN PARK poster."
This case
Art.7(1)(d)
The law
Acquired distinctiveness under art.7(3)/art.52(2)
The law
"[144] I reviewed the law on this subject in Société des Produits Nestlé SA v Cadbury UK Ltd [2014] EWHC 16 (Ch); [2014] E.T.M.R. 17 at [39]–[48]. As I explained there, the following propositions of law are settled. First, for a trade mark to possess distinctive character, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish the goods or services from those of other undertakings.
[145] Secondly, the distinctive character of a trade mark must be assessed by reference to (i) the goods or services in respect of which registration has been applied for and (ii) the perception of the average consumer of those goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect.
[146] Thirdly, the criteria for assessment of distinctive character are the same for all categories of trade marks, but nevertheless the perception of the relevant public is not the same for all categories of trade marks and it may therefore be more difficult to establish distinctive character in relation to some categories (such as shapes, colours, personal names, advertising slogans and surface treatments) than others.
[147] Fourthly, in assessing whether a trade mark has acquired a distinctive character the competent authority must make an overall assessment of the relevant evidence, which in addition to the nature of the mark may include (i) the market share held by goods bearing the mark, (ii) how intensive, geographically widespread and long-standing the use of the mark has been, (iii) the amount invested by the proprietor in promoting the mark, (iv) the proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor, (v) evidence from trade and professional associations and (vi) (where the competent authority has particular difficulty in assessing the distinctive character) an opinion poll. If the relevant class of persons, or at least a significant proportion of them, identifies goods or services as originating from a particular undertaking because of the trade mark, it has acquired a distinctive character.
[148] Fifthly, with regard to the acquisition of distinctive character through use, the identification by the relevant class of persons of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark. The expression "use of the mark as a trade mark" refers solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product as originating from a given undertaking.
[149] Sixthly, a trade mark may acquire a distinctive character in consequence of the use of that mark as part of, or in conjunction with, another trade mark (which may itself be a registered trade mark).
[150] Nevertheless, there are two issues which require consideration with regard to acquired distinctive character. First, in Nestlé v Cadbury I noted that the English courts have thus far held that it was not enough to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant for registration's goods in the sense that, if they were to consider who marketed goods bearing that mark, they would identify the applicant. Rather, the applicant must prove that a significant proportion of the relevant class of persons rely upon the mark (as opposed to any other trademarks which may also be present) as indicating the origin of the goods. Since it is not clear that this is a correct statement of the law, however, I referred the following question to the CJEU (question 1 in C-215/14):
"In order to establish that a trade mark has acquired distinctive character following the use that had been made of it within the meaning of Article 3(3) of Directive 200S/951EC, is it sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant's goods in the sense that, if they were to consider who marketed goods bearing that mark, they would identify the applicant; or must the applicant prove that a significant proportion of the relevant class of persons rely upon the mark (as opposed to any other trademarks which may also be present) as indicating the origin of the goods?"
I do not understand it to be in dispute that, pending the Court of Justice's answer to this question, I should continue to apply the law as stated in Nestlé v Cadbury.
[151] Secondly, counsel for Europcar drew attention to the following passage in the recent judgment of the Court of Justice in Oberbank AG v Deutscher Sparkassen- und Giroverband eV (Joined Cases C-217/13 and C-218/13) [EU:C:2014:2012] :
"43. It should also be stated that Union law does not preclude the competent authority, where it has particular difficulty in assessing the distinctive character acquired though use of the mark in respect of which registration or a declaration of invalidity is sought, from having recourse, under the conditions laid down by its own national law, to an opinion poll as guidance for its judgment (see, to that effect, Windsurfing Chiemsee EU:C:1999:230, paragraph 53 and the case-law cited). If the competent authority finds it necessary to resort to such a survey, it must determine the percentage of consumers that would be sufficiently significant (see, by analogy, Case C-478/07 Budĕjovický Budvar EU:C:2009:521, paragraph 89).
44. However, the circumstances in which the requirement concerning the acquisition of a distinctive character through use, under Article 3(3) of Directive 2008/95 , may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages (Windsurfing Chiemsee EU:C:1999:230, paragraph 52, and Philips EU:C:2002:377, paragraph 62).
…
48. It follows from the foregoing that it is not possible to state in general terms, for example by referring to predetermined percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has acquired a distinctive character through use and that, even with regard to contourless colour marks, such as the mark at issue in the main proceedings, and even if a consumer survey may be one of the factors to be taken into account when assessing whether such a mark has acquired a distinctive character through use, the results of a consumer survey cannot be the only decisive criterion to support the conclusion that a distinctive character has been acquired through use."
[152] Counsel for Europcar pointed out that, in the last sentence of [43], the Court of Justice had held that the competent authority "must determine the percentage of consumers that would be sufficiently significant". In my judgment it is necessary to read this sentence in context. It is clear that the Court was not saying that, where an opinion poll is relied on, it has to be shown that the sign has become distinctive to any particular percentage of consumers. Rather, as I read this passage, what the Court is saying is that what percentage will suffice depends on the circumstances of the case, which it is for the competent authority to assess. This reading is supported by the Court's reference to Budĕjovický Budvar np v Rudolf Ammersin GmbH (C-478/07) [2009] E.C.R. I-7721, which in turn refers back to Gut Springenheide GmbH v Oberkreisdirektor des Kreises Steinfurt - Amt für Lebensmittelüberwachung (C-210/96) [1998] ECR I-4657."
"… only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it initially had descriptive character for the purposes of Article 7(1)(c) (see, to that effect, Case C-25/05 P Storck v OHIM, paragraph 83)."
"[49] It is clear from the case law that, in order to have the registration of a trade mark accepted under art.7(3) of Regulation 207/2009, the distinctive character acquired through the use of that trade mark must be demonstrated in the substantial part of the European Union where it was devoid of any such character under art.7(1)(b) of the Regulation (Ford Motor Co v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (OPTIONS) (T-91/99) [2000] ECR II-1925; [2000] ETMR 554 at [27]). The part of the Community referred to in art.7(2) may be comprised of a single Member State (Storck KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-25/05 P) [2006] ECR I-5719 at [83]). Consequently, distinctiveness acquired through use must be demonstrated in all the Member States in which the existence of the ground for refusal had been established (see, to that effect, Bovemij Verzekeringen NV v Benelux-Merkenbureau (C-108/05) [2006] ECR I-7605; [2007] ETMR 29 at [28]).
[50] In the present case, the Board of Appeal found, in para.18 of the contested decision, that the relevant consumers were European English-speakers. Next, it considers, in para.33 of the contested decision, that the applicant ought to have demonstrated that the word sign at issue had acquired distinctiveness not only in the English-speaking countries of the European Union, but also in all the other countries where basic English words could be understood, that it is to say in all the countries of the European Union.
[51] The applicant challenges only that last assertion and claims that the public consisting of European English-speakers cannot include persons with a very rudimentary knowledge of English.
[52] Even if the Board of Appeal construed the concept of "European English-speakers" too broadly, it is clear, and the applicant has, moreover, never claimed the contrary, that the relevant public does not only consist of nationals of the United Kingdom and Ireland whose mother tongue is English.
[53] It is settled case law that a word sign consisting of English words the combination of which is grammatically correct may have a meaning not only for a public who are native English speakers, but also for a public which has sufficient knowledge of the English language (see NEW LOOK (T-435/07) at [20] and the case law cited). As noted in [26] above, the General Court has previously confirmed that a basic understanding of the English language by the general public, in any event, in the Scandinavian countries, the Netherlands and Finland is a well-known fact (NEW LOOK (T-435/07) at [23]). As pointed out in the same paragraph, this also applies to Malta, where English is one of the official languages, and to Cyprus.
[54] With regard to all of those countries, the applicant never furnished the slightest proof that the mark applied for had become distinctive through use. In particular, the letters and statements mentioned in [46] above, and the evidence of use submitted to OHIM concern only the United Kingdom, Ireland and Germany.
[55] Consequently the applicant's second plea must be dismissed."
(1) Member States in which English is either spoken as a mother tongue or is an official language, namely the UK (English is not an official language of the UK), the Republic of Ireland and Malta.
(2) Members States in which English is sufficiently well spoken by the average consumer for the descriptive character of the word mark to be perceived. This is likely to mean the Netherlands, Sweden, Denmark, Finland and Cyprus, see Liz Earle and the passage quoted above.
(3) Further Member States in which another relevant language is spoken. Another relevant language in this context means one in which the English word or words of the CTM are sufficiently similar to their equivalents in that language for the average consumer who speaks that language to perceive the descriptive character of the word mark, see Matratzen and Junited Autoglas, cited above.
"[98] As the Court of Justice held in Storck v OHIM (paragraph 17 above, paragraph 83), the part of the European Union referred to in Article 7(2) of Regulation No 207/2009 may be comprised of a single Member State (see also judgment of 17 May 2011 in Case 7/10 Diagnostiko kai Therapeftiko Kentro Athinon 'Ygeia' v OHIM (υγεία), not published in the ECR, paragraph 40). PAGO International, paragraph 93 above, which is relied on by the applicant in support of its line of argument, supports that finding, in so far as it confirms, also as regards whether a Community trade mark has a reputation, that the territory of a single Member State may be considered to constitute a substantial part of the European Union.
[99] It follows that the absence of distinctive character of a mark (be it a word, figurative or three-dimensional mark) on the territory of a single Member State is sufficient to justify that that mark be refused registration or declared invalid if it has been registered, unless Article 7(3) or Article 52(2) of Regulation No 207/2009 applies. The application of those two provisions presupposes the production of evidence of distinctive character acquired through the use of that mark in the part of the European Union where it was devoid ab intitio of any such character, namely in the Member State concerned.
[100] The unitary character of the Community trade mark, to which the applicant refers, does not cast doubt on that finding but, on the contrary, confirms it, since it is apparent therefrom that, in order to be accepted for registration, a sign must possess distinctive character, inherent or acquired through use, throughout the European Union (υγεία, paragraph 98 above, paragraph 40). It would be paradoxical to accept, on the one hand, pursuant to Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), that a Member State has to refuse to register as a national mark a sign that is devoid of any distinctive character in its territory and, on the other, that that same Member State has to respect a Community trade mark relating to that sign for the sole reason that it has acquired distinctive character in the territory of another Member State (see, by analogy, υγεία, paragraph 98 above, paragraph 53)."
This case
United Kingdom
(1) Over a thousand concert performances in the UK since 1985, including those given in The Royal Albert Hall, The Royal Festival Hall, Glastonbury, Hyde Park and The Barbican. Some performances have been alongside well known stars: Robbie Williams, Cat Stevens, Madness and the Kaiser Chiefs.
(2) The release of 13 CDs and DVDs between 1988 and 2012.
(3) A programme presented on BBC Radio 4 on 24 June 2008 by Phill Jupitus about UOGB.
(4) A broadcast on BBC Radio 1 in 2008.
(5) A broadcast performance on BBC Radio 3 in 2009 as part of the BBC proms of that year, which led to some controversy.
(6) UOGB was the focus of several questions on University Challenge, in a show broadcast in 2013.
(7) UOGB was the solution to a crossword puzzle clue in the music newspaper New Musical Express.
Elsewhere in the EU
(8) Before 28 November 2014, the performances were given elsewhere in the EU in the following numbers:
117 in Germany
27 in Sweden
12 in the Republic of Ireland
7 in Belgium
5 in each of Austria, Finland, France and the Netherlands
2 in each of Italy and Luxembourg
1 in each of Denmark, Estonia, Poland and Spain.
(9) More than one broadcast on German television, including a live show on the German television channel 3SAT on 29 December 2007. According to Mr Hinchliffe one German television programme on which UOGB appeared was repeated about 15 times.
(10) The redacted passages from the reviews of UKUO's performances in Germany which I have quoted above.
Generally
(11) The posting of film clips of its live performances on video-sharing websites such as YouTube.
(12) The turnover of UOGB's business conducted under the CTM in the years 2010 to 2014 has been between about £790,000 and £920,000 per annum.
Art.7(1)(g)
Infringement generally
Infringement pursuant to art.9(1)(b)
The law
"[33] There is much CJEU learning on the interpretation and application of art.9(1)(b) . In Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] ETMR 17; [2012] FSR 19 at [52] Kitchin LJ approved the following summary of the principles to be derived from the court's jurisprudence:
a. the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
b. the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who 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, and whose attention varies according to the category of goods or services in question;
c. the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
d. the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
e. nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
f. and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
g. a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
h. there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
i. mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
j. the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
k. if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.
[34] In making the global comparison the sign is to be considered in the context in which it is used. Kitchin LJ made this point in Specsavers [2012] FSR 19 at [87]:
"In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context."
[35] The reference in sub-para.(d) of the citation from Specsavers [2012] FSR 19 in [33] above to the assessment by the average consumer of the "visual, aural and conceptual similarities" derives from, amongst other places, the judgment of the CJEU in Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (C-342/97) [1999] ECR I-3819; [2000] FSR 77 at [27]:
'In order to assess the degree of similarity between the marks concerned, the national 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 account of the category of goods or services in question and the circumstances in which they are marketed.'
[36] Mr Silverleaf also referred us to the discussion of the attributes of the average consumer in Interflora Inc v Marks & Spencer Plc ("Interflora III") [2014] EWCA Civ 1403; [2015] FSR 10 at [107]–[130]. In that case it was argued on behalf of the defendant that the judge had been wrong to ask himself whether a "significant proportion of members of the public" would be confused. The average consumer, it was suggested, was either confused or he was not. In the course of dealing with that question the court approved the following propositions of materiality here:
(i) the average consumer in any context is a hypothetical person or "legal construct": a person who has been created to strike the right balance between various competing interests including, on the one hand, the need to protect consumers and, on the other hand, the promotion of free trade in an openly competitive market, and also to provide a standard, defined in EU law, which national courts may then apply.
(ii) the average consumer test is not a statistical test. The national court must exercise its own judgment, in accordance with the principle of proportionality and the principles explained by the Court of Justice, to determine the perceptions of the average consumer in any given case in light of all the relevant circumstances.
(iii) in a case concerning ordinary goods or services, the court may be able to put itself in the position of the average consumer without requiring evidence from consumers, still less expert evidence or a consumer survey. In such a case, the judge can make up his or her own mind about the particular issue he or she has to decide in the absence of evidence and using his or her own common sense and experience of the world.
[37] In relation to what the court described as the crucial question, namely whether the average consumer, as a hypothetical person, necessarily has a single reaction and so precludes a consideration of the perceptions of a proportion of the relevant public the court in Interflora [2014] EWCA Civ 1403 identified the following propositions:
(i) the average consumer test provides the court with a perspective from which to assess the particular question it has to decide, for example whether a statement is liable to mislead purchasers.
(ii) a national court may be able to assess this question without the benefit of a survey or expert evidence.
(iii) a national court may nevertheless decide, in accordance with its own national law, that it is necessary to have recourse to an expert's opinion or a survey for the purpose of assisting it to decide whether the statement is misleading or not.
(iv) absent any provision of EU law dealing with the issue, it is then for the national court to determine, in accordance with its own national law, the percentage of consumers misled by the statement that, in its view, is sufficiently significant in order to justify banning its use.
[38] The court went on to emphasise (at [128]) that the average consumer was not 'some form of mathematical average'.
[39] The average consumer is of course reasonably well informed, reasonably observant and reasonably circumspect. The case law of the CJEU rejects reliance on the casual or superficial consumer: see Gut Springenheide GmbH v Oberkreisdirektor des Kreises Steinfurt - Amt fur Lebensmittelüberwachung (C-210/96) [1998] ECR I-4657; [1999] 1 CMLR 1383."
Visual, aural and conceptual similarity
(1) Two individuals separately sent messages intended for UKUO to UOGB's 'contact us' web page.
(2) A ticket website in Germany wrongly indicated that UOGB was giving a concert in Berlin on 18 March 2014, although elsewhere it correctly identified UKUO as the performers.
(3) The social secretary of the British Ambassador in Luxembourg heard from a colleague that UKUO was playing in Luxembourg on 24 April 2013 and mistakenly emailed UOGB to play at the Ambassador's residence to entertain guests at a tea party.
(4) A disappointed fan contacted UOGB to complain that a concert in Germany had been cancelled, when the cancelled performance was to have been by UKUO.
(5) A woman in Dresden contacted UOGB about a concert in Berlin which in fact was to be given by UKUO.
(6) A man attended a concert in May 2012 in Göttingen, Germany, given by UKUO and the next day emailed UOGB, referring to his enjoyment of the concert by 'The Ukulele Orchestra of Great Britain' and asking for further information.
(7) Five emails from fans indicating confusion between UOGB and UKUO.
(8) Thirty instances of a picture or video of UOGB used by the press in articles about UKUO.
(9) Eight instances of ticket websites using text about UOGB for the promotion of UKUO concerts.
(10) One use of 'UOGB' in an article about UKUO.
(11) Three instances of internet searches finding the wrong group.
Infringement pursuant to art.9(1)(c)
The law
[141] In my judgment these cases do reveal a development by the Court of Justice of its jurisprudence on the scope of art.9(1)(c) of the Regulation. They establish that a proprietor of a trade mark with a reputation is not necessarily entitled to prohibit the use by a competitor of his mark in relation to goods for which it is registered even though the mark has been adopted with the intention and for the purpose of taking advantage of its distinctive character and repute, the competitor will derive a real advantage from his use of the mark, and the competitor will not pay any compensation in respect of that use. Consideration must be given to whether the use is without due cause. Specifically, the use of a trade mark as a keyword in order to advertise goods which are an alternative to but not mere imitations of the goods of the proprietor and in a way which does not cause dilution or tarnishment and which does not adversely affect the functions of the trade mark must be regarded as fair competition and cannot be prohibited."
This case
(i) the CTM has a reputation in the UK and Germany in relation to concert services for the reasons given with regard to acquired distinctiveness;
(ii) the accused sign is similar to the CTM for the reasons given in relation to art.9(1)(b);
(iii) on the assumption that there is no likelihood of confusion in the mind of the average consumer within the meaning of art.9(1)(b), to my mind the similarity between the CTM and the accused sign, the use of both mark and sign for concert services and the evidence which relates to confusion under art.9(1)(b) is collectively sufficient to establish that there would be a link between the sign and the CTM in the mind of the average consumer;
(iv) use by UKUO of the sign is liable to give rise to at least one of (a) detriment to the repute of the CTM due to concert services from UKUO which, as suggested by numerous examples in the evidence, some concert-goers find to be of low quality when compared to the services of UOGB, (b) unfair advantage being taken of the distinctive character or repute of the CTM by way of enhancement of UKUO's reputation generated by the link and therefore association with the reputation of UOGB, or (c) detriment to the distinctive character of the CTM caused by the dilution in consumers' perception that there is one musical group trading in concert services under the CTM;
(v) such use is without due cause; UKUO argued that there were sound descriptive reasons for adopting the name and it was used for over a year before the CTM was registered in May 2011; these do not to my mind constitute the sort of fair competition contemplated by Kitchin LJ in Specsavers.
Defence to infringement under art.12(b)
The law
A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:
(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
…
provided he uses them in accordance with honest practices in industrial or commercial matters.
"[147] … The crucial question, therefore, is whether the use that Asos has made of the sign ASOS has been in accordance with honest practices in industrial or commercial matters. This condition qualifies all of the defences in art.12 of the Regulation and has been interpreted by the Court of Justice on numerous occasions as importing a duty to act fairly in relation to the legitimate interests of a trade mark proprietor. It also involves the balancing or reconciliation of potentially conflicting fundamental interests. The Court put it this way in Bayerische Motorenwerke AG v Deenik (C-63/97) [1999] ECR I-905; [1999] ETMR 339 at [61]–[62] (in connection with what is now art.6 of the Directive):
"61. Lastly, the condition requiring use of the trade mark to be made in accordance with honest practices in industrial or commercial matters must be regarded as constituting in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner, similar to that imposed on the reseller where he uses another's trade mark to advertise the resale of products covered by that mark.
62. Just like Article 7, Article 6 seeks to reconcile the fundamental interests of trade-mark protection with those of free movement of goods and freedom to provide services in the common market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the Treaty seeks to establish and maintain (see, in particular, HAG II, paragraph 13)."
[148] In considering whether a defendant is acting fairly in relation to the legitimate interests of the trade mark proprietor it will be relevant to consider, among other things, whether there exists a likelihood of confusion; whether the trade mark has a reputation; whether use of the sign complained of takes advantage of or is detrimental to the distinctive character or repute of the trade mark; and whether the possibility of conflict was something of which the defendant was or ought to have been aware. The national court must carry out an overall assessment of all the circumstances and determine whether the defendant is competing unfairly. This emerges from the guidance given by the Court of Justice in Anheuser-Busch Inc v Budejovicky Budvar Národní Podnik (C-245/02) [2004] ECR I-10989; [2005] ETMR 27 and reiterated in Céline Sarl v Céline SA (C-17/06) [2007] ECR I-7041; [2007] ETMR 80 at [34]–[35]:
"34. In that regard, it must be noted that, in assessing whether the condition of honest practice is satisfied, account must be taken first of the extent to which the use of the third party's name is understood by the relevant public, or at least a significant section of that public, as indicating a link between the third party's goods or services and the trade mark proprietor or a person authorised to use the trade mark, and secondly of the extent to which the third party ought to have been aware of that. Another factor to be taken into account when making the assessment is whether the trade mark concerned enjoys a certain reputation in the Member State in which it is registered and its protection is sought, from which the third party might profit in marketing his goods or services (Anheuser-Busch at [83]).
35. It is for the national court to carry out an overall assessment of all the relevant circumstances in order to assess, more specifically, whether Céline Sàrl can be regarded as unfairly competing with Céline SA (see, to that effect, Anheuser-Busch at [84])."
[149] The possibility of a limited degree of confusion does not preclude the application of the defence, however. It all depends upon the reason for that confusion and all the other circumstances of the case. So for example in Gerolsteiner Brunnen GmbH & Co v Putsch GmbH (C-100/02) [2004] ECR I-691; [2004] ETMR 40; [2004] R.P.C. 39 the Court of Justice said at [25]–[26]:
"25. The mere fact that there exists a likelihood of aural confusion between a word mark registered in one Member State and an indication of geographical origin from another Member State is therefore insufficient to conclude that the use of that indication in the course of trade is not in accordance with honest practices. In a Community of 15 Member States, with great linguistic diversity, the chance that there exists some phonetic similarity between a trade mark registered in one Member State and an indication of geographical origin from another Member State is already substantial and will be even greater after the impending enlargement.
26. It follows that, in a case such as that in the main proceedings, it is for the national court to carry out an overall assessment of all the relevant circumstances. Since the case concerns bottled drinks, the circumstances to be taken into account by that court would include in particular the shape and labelling of the bottle in order to assess, more particularly, whether the producer of the drink bearing the indication of geographical origin might be regarded as unfairly competing with the proprietor of the trade mark."
This case
Scope of relief had the CTM been validly registered
The scheme of the CTM Regulation for jurisdiction of national courts
1. Subject to the provisions of this Regulation as well as to any provisions of Regulation (EC) No 44/2001 applicable by virtue of Article 94, proceedings in respect of the actions and claims referred to in Article 96 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.
2. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.
3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Member State where the Office has its seat.
4. Notwithstanding the provisions of paragraphs 1, 2 and 3:
(a) Article 23 of Regulation (EC) No 44/2001 shall apply if the parties agree that a different Community trade mark court shall have jurisdiction;
(b) Article 24 of Regulation (EC) No 44/2001 shall apply if the defendant enters an appearance before a different Community trade mark court.
5. Proceedings in respect of the actions and claims referred to in Article 96, with the exception of actions for a declaration of non-infringement of a Community trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act within the meaning of Article 9(3), second sentence, has been committed.
1. Apart from jurisdiction derived from other provisions of this Regulation, a court of a Member State before which a defendant enters an appearance shall have jurisdiction. This rule shall not apply where appearance was entered to contest the jurisdiction, or where another court has exclusive jurisdiction by virtue of Article 24.
1. A Community trade mark court whose jurisdiction is based on Article 97(1) to (4) shall have jurisdiction in respect of:
(a) acts of infringement committed or threatened within the territory of any of the Member States;
(b) acts within the meaning of Article 9(3), second sentence, committed within the territory of any of the Member States.
2. A Community trade mark court whose jurisdiction is based on Article 97(5) shall have jurisdiction only in respect of acts committed or threatened within the territory of the Member State in which that court is situated.
This case
Passing Off
The law
This case
Copyright in dramatic works
(1) a group of musicians the majority of which play ukuleles, one of which plays a bass instrument;
(2) those instruments being of differing musical registers;
(3) all of the musicians are formally attired;
(4) all of the musicians (other than the double bass player) play their respective instruments in seated positions on chairs;
(5) all of the musicians read music from music stands positioned in front of those musicians;
(6) all of the musicians play music which is not originally recorded for the ukulele;
(7) the musicians also sing as well as play in one other of the musical pieces they play;
(8) the musicians all speak scripted or improvised humorous monologues;
(9) the musicians introduce themselves as "We are the Ukulele Orchestra of Great Britain".
(1) the double bass was replaced by a bass ukulele;
(2) the formal attire of the male musicians became black tie and of the female musicians black and white formal evening wear gowns.
The elements as amended are said to constitute "the Second Dramatic Work".
(2) Copyright does not subsist in a literary, dramatic or musical work until it is recorded, in writing or otherwise; and references in this Part to the time at which such a work is made are to the time at which it is so recorded.
Section 3(2) implies that it is possible for a dramatic or other type of work to exist before it is recorded but until that happens copyright will not subsist in the work, though for the purposes of the 1988 Act the work is deemed to have been made at the time of its recording. Thus, a copyright work is not the medium on which the recording was made, it is the expression of the author's intellectual creation. Here, for instance, the work is not the photograph, tape or other medium used for visual or sound recording, it is the performance itself by UOGB. By contrast art.2(b) of Directive 2001/29/EC, on the harmonisation of certain aspects of copyright and related rights in the information society, requires Member States to provide for the protection of fixations of performances. The 1988 Act must now be construed in accordance with the Directive but for present purposes it makes no difference. And because it is easier and clearer to talk about copyright in a performance, rather than in the fixation of a performance, that is what I will do.
"The protection which copyright gives creates a monopoly and 'there must be certainty in the subject matter of such monopoly in order to avoid injustice to the rest of the world:' Tate v. Fulbrook [1908] 1 KB 821, per Farwell J. at page 832."
"It is stretching the original use of the word "format" a long way to use it metaphorically to describe the features of a television series such as a talent, quiz or game show which is presented in a particular way, with repeated but unconnected use of set phrases and with the aid of particular accessories. Alternative terms suggested in the course of argument were "structure" or "package". This difficulty in finding an appropriate term to describe the nature of the "work" in which the copyright subsists reflects the difficulty of the concept that a number of allegedly distinctive features of a television series can be isolated from the changing material presented in each separate performance (the acts of the performers in the talent show, the questions and answers in the quiz show etc.) and identified as an "original dramatic work". No case was cited to their Lordships in which copyright of the kind claimed had been established."
Lord Bridge went on the emphasise the importance of certainty in the subject matter of a copyright work in the passage I have quoted above and held that certainty was conspicuously lacking in the format of 'Opportunity Knocks'. He then said this:
"Moreover, it seems to their Lordships that a dramatic work must have sufficient unity to be capable of performance and that the features claimed as constituting the "format" of a television show, being unrelated to each other except as accessories to be used in the presentation of some other dramatic or musical performance, lack that essential characteristic."
Joint liability of Mr Clausen and the claim for additional damages
Conclusion
