Issues of the Registrability and Infringement of Trademark

This question would be regarding to the issues of the registrability and infringement of trademark. Trademarks are the indicators of the origin of the products and services to which it attaches[1] which could bring a great economic value. Trademark is defined as any sign that is capable of being graphically representable which is distinguishable from one good to another under in s.1(1) of Trade Marks Act(TMA) 1994[2]. Generally, a trademark could last for 10 years initially but it could be renewed every ten year if it is used in the appropriate class.

Trademarks in United Kingdom (UK) is currently governed by TMA 1994 which implemented the European Union(EU) Directive 89/104/EEC.[3] There are three requirements to be fulfilled to register a trademark. Firstly, a mark must be a ‘sign’ where it is very broad as it includes words, devices, images, colours, shapes, music, sounds, and smells. On the facts, the plastic seashell base would be the sign.

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Next, the mark must be graphically representable. However, some ‘unusual marks’ such as colour, shape, smell and sound marks would be difficult to fulfil this requirement. Therefore, some guidelines have been laid down in Sieckmann v Deutsches Patent-und Markenamt[4] where it states that the sign must be clear, precise, self-contained, easily accessible, intelligible, and have a durable objective for a mark to be graphically representable. On the facts, De Rijk & Kluyv intended to register the seashell shape which fall under the category of ‘unusual mark’. However, it is challenging for a 3-dimensional shape to be represented 2-dimensional graphical form. This could be seen in Swizzels Matlow Ltd’s 3-Dimensional Trade Mark Application[5] where the shape mark failed to be registered as there was no indication of thickness, size and more. Moreover, there were also many unsuccessful attempts for Re Coca-Cola Co[6] to register the shape of their bottle. However, the case of Smith Kline and French v Winthrop[7]allowed a registration of a 3-dimensional shape in distinctive colour combination. On the facts, unless the company could fulfil the ‘Sieckmann citeria’, the mark is not registrable.

Furthermore, the mark must also be capable of distinguishing under s.3(1) of TMA 1994. In Scandecor Development AB v Scandecor Marketing AV[8], it was held that the importance of trademark is that the goods could be distinctive from others. Hence, if a mark would not be registrable if is not capable of distinguishing as this was agreed by Canon Kabushiki Kaisha v MGM[9] on the importance of distinctiveness.

However, it would be too wide to look at what could be registered as trade mark. Hence, it is better to focus on what could not be registered by looking at the absolute grounds of refusal under s.3 of TMA 1994 where it sets out 10 categories of signs that could not be registered. However, there are three categories where it could be registered if a secondary meaning could be provided. They are s.3(1)(b), s.3(1)(c) and s.3(1)(d) of TMA 1994.

Firstly, under s.3(1)(b) of TMA 1994, it stated that the trademarks which devoid of any distinctive character. However, there are 2 different views in this area from UK and European Court of Justice(ECJ). For example, the shape of a torch was refused to be registered as a trademark in Mag Instrument v OHIM[10]. It stated that only marks which are significantly from the norm or customs of the sector that can indicate the origin and not lack of the purpose of distinctive character.

However, the opinion of UK was different in British Sugar Plc v James Robertson and Son Ltd[11] where Laddie J held that a mark would fall under s.3(1)(b) of TMA 1994 if it could not be distinguished without the public have the knowledge that it is a trademark. On the facts, the term “OUR WORLD IS YOUR OYSTER!” could arguably to be considered as significant from the norm and distinctive. Moreover, the term could also be distinguished without having the public knowing it as a trademark. Hence, it would not fall under s.3(1)(b) of TMA 1994.

Moreover, on the facts, the slogan of “OUR WORLD IS YOUR OYSTER!” should not fall under the category under s.3(1)(c) where it is exclusively descriptive of the goods or services to be registrable. The general rule is that the whole of a mark must be descriptive and not merely part of the mark. However, the law in this area was uncertain. In Besnier SA’s Trade Mark Application[12] the registration was refused as the term ‘Day by Day’ would naturally to be used by other traders. However, in Procter & Gamble Co. v OHIM[13], it was held that in appeal that ‘baby dry’ is not the whole descriptive of nappies and the overall effect of the mark is important instead of the components that make it up. This was supported by Griffiths where he stated that it offers greater certainty to trademark applicants.[14]

Furthermore, in Windsurfing Chiemsee v Attenberger Cases[15], the European Court of Justice(ECJ) held that ‘geographic descriptive’ marks could be registered as trademark if the public associates that mark is with the owner but not the geographic place. In that case, the trademark was used 2 years before it was registered and its application was allowed by the European Court of Justice(ECJ). On the facts, the slogan had only been used just under 2 years. It could be argued that it did not meet the ‘requirement’ of the length of use laid down in Windsurfing‘s case.

However, in OHIM v Wm. Wrigley Jr.Co[16], it was held that the mark ‘Doublemint’ was descriptive even if it was merely partly represented the characteristics of mint flavoured or mint-scented products. It could be submitted that the courts were trying to prevent a floodgate of litigations for marks that consisted descriptive words as this was allowed in Procter‘s case as mentioned above. This decision had departed from the general rule and held that it would be considered descriptive even though it only consists part of the mark. It also did not overrule Procter’s case and created a confusion in law in this area. Hence, on the facts, by following the recent decision in Wrigley‘s case, the company would fail in the registration of the term as a trademark as it consists a word that is descriptive to the goods themselves which is the word ‘OYSTER’ where it is a type of seafood.

Other than that, the mark should not consist exclusively signs or indications where it became the generic terms in general language or the specific market sector under s.3(1)(d) of TMA 1994. On the facts, it could be argued that the slogan “OUR WORLD IS YOUR OYSTER!” fall under the generic terms in general language as it is an edited version of the idiom “the world is your oyster”. Hence, it could be argued that the slogan could not be registered as a trademark.

However, a mark that acquired a distinctive character through its use would be registrable. It is required that the mark must have been used and has in fact acquired a distinctive character. In Société des Produits Nestlé SA v Mars UK Ltd[17], it was held that the slogan of “Have a Break…Have a Kit Kat” had become distinctive through its use even though the High Court on appeal held that “Have a Break” itself is not distinctive, the Court of Appeal held that the mark need not be distinctive individually. On the facts, unless the company could proof distinctiveness by showing that a portion of customers that could identify the goods are originate from this company because of the slogan, the slogan “OUR WORLD IS YOUR OYSTER” would not be registrable.

Next, in determining whether there is an infringement of “DUTCHY BEACH” mark, s.10 of TMA 1994 would be discuss. A typical infringement would involve a sign used by a trader which is similar to another registered trademark owned by another trader which indicate the source of the goods or services. On the facts, the activity that constitutes an infringement would be affixing a sign to goods or packaging as the mark “DUTCHY BEACH” was used in a range of beverages by Beechy Beverages Ltd under s.10(4) of TMA 1994.

There are three types of use which are regarded as infringements under s.10(1), s.10(2) and s.10(3) of TMA 1994. On the facts, the type of use would be the similar sign for dissimilar goods which has a reputation and it was used without due cause, takes unfair advantages or detriments under s.10(3) of TMA 1994.[18] The mark “DUTCHY BEECH” sign is similar to “DUTCH BEECH” mark where one sells beverages but the other one sells processed seafood products. On the facts, it is clear that the mark “DUTCHY BEECH” is visual, phonetic and conceptual similar with “DUTCH BEACH” as per Muelhens v OHIM[19]. The company would need to show that there is a likelihood of confusion but this was held to be unnecessary to do so by ECJ in Sabel BV v Puma AG, Rudolf Dassler Sport[20]. Moreover, on the facts, it is clear that the goods sold by the parties are dissimilar as per the case of Daimler Chrysler AG v Javid Alavi[21]where the classes of the goods are not the same. On the facts, the class of goods under De Rijk and Kluyv’s company are class 29 and 31 while the class of goods under Beechy Beverages are class 32 and 33.

Furthermore, De Rijk and Kluyv would need to prove that the trademark has a reputation. However, it is not necessary for the mark to be ‘famous’. The ‘reputation’ would only need to be existed in part of the geographical area by determining the degree of knowledge of the public. It was held by the ECJ in General Motors(GM) v Yplon SA[22] that the size of the investment for the promotion of the mark must be considered when determining the degree of knowledge of public on the two marks. On the facts, they had recently invested in a new seafood platter for the supermarkets. Hence, it could be argued that there is a sufficient ‘reputation’ for the mark on the public as there was an investment on the mark and it was also used on the goods which distributed to the supermarkets and restaurants locally. It could be argued that the public had a sufficient knowledge on the mark as it can be seen in supermarkets and restaurants.

Then, they would need to show that there are detriments suffered or Beechy Beverages had taken unfair advantage of the repute or distinctive character of “DUTCH BEACH” mark. It is unnecessary for them to show detriments if there is an unfair advantage taken by Beechy Beverages. On the facts, it could be argued that Beechy Beverages had taken an unfair advantage by using a similar to the mark with repute which is “DUTCH BEACH” to market their goods as per L’Oreal v Bellure[23]. However, if Beechy Beverages could show that the use was with due cause as per Premier Brands UK v Typhoon Europe Ltd[24], there would not be an infringement. On the facts, it could be argued that there is no due cause for the use of the mark. However, Beechy Beverages would argue that the use was for comparing advertisement as per TMA 1994 in light of Directive 97/55/EC[25].

There would be an infringement if the sign was used in a course of trade under s.10(3) of TMA 1994 even if the sign did not used as a trade mark. It could be regarded to be used in a course of trade if it is used for business purposes to indicate the origin of the goods and services as per Reed Executive Plc v Reed Business Information[26]. Moreover, the case Adam Opel AG v Autec AG[27] held that any use of a similar mark including decoration purpose would amount to an infringement. On the facts, the Beechy Beverages company did not intend to register it as a trademark as there is no application made. However, according to the case stated above, it would still be an infringement as the sign was used to indicate the beverages are from Dutch as the word ‘DUTCHY’ was used and it is similar to a registered mark.

However, Beechy Beverages could seek for a defence under s.11(2)(b) as the use could be argued as indications for the geographical origin of its goods if there is an infringement. Beechy Beverages would argue that the use of the mark was indicating the goods are from Dutch as the name, “DUTCHY BEECH” consists partly of the geographical name. This defence would be accepted if the use of the mark may be expected by the public.

In conclusion, the shape of the seashell base would be difficult to be registered and the slogan “OUR WORLD IS YOUR OYSTER” would not be able to be registered as it failed to meet requirement stated above. Moreover, De Rijk and Kluyv will success in their infringement claim but Beechy Beverages would have a defence to it as stated above. De Rijk and Kluyv could seek for injunction and damages from Beechy Beverages for the losses.

[1] Davis, Jennifer, ‘Intellectual Property Law Core Text’, (4th edn, OUP 2012) 200

[2] Trade Marks Act 1994, s.1(1)

[3] First Council Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks [1988]

[4] Sieckmann v Deutsches Patentund Markenamt (C273/00) [2003] 3 WLR 424

[5] Swizzels Matlow Ltd’s 3-Dimensional Trade Mark Application [1999] RPC 879

[6] Re Coca-Cola Co [1986] 2 All ER 274

[7] Smith Kline & French Laboratories Ltd v Sterling-Winthrop Group Ltd [1976] RPC 511

[8] Scandecor Development AB v Scandecor Marketing AV and Others [2002] FSR 122

[9] Canon Kabushiki Kaisha v MGM [1999] ETMR 1

[10] Mag Instrument v OHIM (C-136/02) [2005] ETMR 46

[11] British Sugar Plc v James Robertson and Son Ltd [1996] RPC 281

[12] Besnier SA’s Trade Mark Application [2002] RPC 60

[13] Procter & Gamble Co. v OHIM (C-383/99) [2001] ECR I-6251

[14] Griffiths, ‘Modernising Trade Mark Law and Promoting Economic Efficiency: an evaluation of the Baby-Dry judgment and its aftermath’ [2003] 1 IPQ 1-37

[15] Windsurfing Chiemsee v Attenberger Cases C-108/97, C-109/97 [1999] ECR I-2779

[16] OHIM v Wm. Wrigley Jr. Co. (C-191/01) [2003] ECR I-12447

[17] Société des Produits Nestlé SA v Mars UK Ltd [C-353/03] [2006] FSR 2

[18] Trade Marks Act 1994, s.10(3)

[19] Muelhens v OHIM [2006] ECR I-0000

[20] Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199

[21] Daimler Chrysler AG v Javid Alavi (t/a Merc) [2001] RPC 42

[22] General Motors (GM) v Yplon SA (C-375/97) [1999] ECR I-5421

[23] L’Oreal SA v Bellure N.V. and Others [2010] EWCA Civ 535

[24] Premier Brands UK v Typhoon Europe Ltd [2000] FSR 767

[25] Directive 97/55/EC of European Parliament and of the Council of 6 October 1997 amending Directive 84/450/EEC concerning misleading advertising so as to include comparative advertising [1997]

[26] Reed Executive Plc v Reed Business Information Ltd [2004] RPC 767

[27] Adam Opel AG v Autec AG C-48/05