‘Toys & Trade Marks, Shops and Signs – News from Europe’

TIPLO’s first dinner meeting of 2008 at Gray’s Inn was very well attended – the topic, speaker and panel all acting as a major draw.

On a more sad note, and most importantly, at the outset of the meeting Sir Robin Jacob as a close friend and colleague of Sir Nicholas Pumfrey announced that TIPLO were in his memory making a one-time donation to the London Beekeeper’s Association and a per annum payment for a five year period to the Scholarship Fund of the Middle Temple. Sir Nicholas was a keen bee keeper himself and a Bencher of Middle Temple. This was followed by a one minute silence in memory of Sir Nicholas who was a great supporter and regular attendee of TIPLO meetings and will be deeply missed.

After this and a wonderful dinner Stephen James, Partner at Jenkins (and former Chairman of ITMA) in the Chair introduced Paul Bullock, an Examiner at OHIM and European Advocate as our main speaker. Allan James as head of inter-parte proceedings at UKIP assisted on the panel taking questions after the talk.

Paul Bullock took the floor and spoke on two of the most controversial recent trade mark decisions of the ECJ in recent times. The first was the Adam Opel case dealing with the use of trade mark Opel logo on a replica scale model car and second the Celine case, dealing with the mark Celine used as a company and shop name in connection with the marketing of clothing which was the category in which the mark was registered.

Paul was generally supportive of the ECJ decision in the Opel case. He highlighted that it was important to note that the scale models had been sold under the trade mark CARTRONIC. In addition the court clearly took into account the very specific nature of the market concerned which was Germany where Paul made the point evidently Judges are well-accustomed to playing with remote controlled toy cars in their spare time! Apparently in Germany the average consumer is accustomed to scale models being based on real examples. German consumers would understand that the appearance of the Opel logo on the third party’s products indicate that it is a reduced scale reproduction of an Opel car and would not be confused and associate it with Opel. The ECJ decided in these circumstances that where a trade mark is registered both for motor vehicles - in respect of which it is well known - and for toys the trade mark owner is entitled to prevent its use on scale models only if that use affects or is liable to affect the essential origin indicating function of a trade mark.

Paul’s view was that the ruling in general terms followed the basic rules of common sense, albeit it does clearly limit the possibility for real car manufacturers to prevent the toy industry from producing and marketing toy cars bearing signs which coincide with the car manufacturers registered trade mark. Thus if the way in which the logo is used does not attempt to indicate the commercial origin but is merely used as an essential element of a true and precise scale replica then such use cannot be prevented.

Paul made the point that it would seem unfair to grant a monopoly on scale models of their grown up products as this would prevent competition and restrict the market especially in respect of the more desirable brands. One of the practical implications of the ruling is that manufacturers of scale models will not necessarily need to seek consent to use registered trade marks for their replicas. This is because the court suggested that if because of the way the sign is used and the circumstances surrounding such use, the public did not perceive the sign as an indication that the models come from Opel or a linked undertaking, there was no confusion as to origin. Paul noted too that the court acknowledged the manufacturers’ concern that poor quality replicas might severely affect the image and reputation attached to its well known trade mark by stating that the trade mark owner would be able to prevent use that without due cause to unfair advantage of or was detrimental to the distinctive character or repute of the trade mark etc. Paul’s view was that all in all the decision was the correct one.

Celine

In the Celine case the ECJ decided that where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which has been carried out such use cannot be considered as being in relation to goods or services and cannot be prevented. This case was all about the clothing market. Although Paul was at pains to point out he is no expert on fashion(!) (but was complementary about the tastes of some of the members of the TIPLO audience) he understood enough about the nature of that market to know that the public tend to associate the names of the outlets and trade names with the trade marks. The Court also appeared to be aware of this and that given the specific nature and structure of that market and the way clothing items are sold the distinction between trade marks on the one hand and other business identifiers such as company names, trade names etc, shop names, tends to fade away. Consumers are likely to perceive all the signs as indicating a common origin. The court therefore went on to consider the honest practices defence. In that exercise it decided that account had to be taken both of the extent to which the use of the third party’s name is understood as a link between the third party’s goods and services and the trade mark proprietor and the extent to which the third party ought to have been aware of that perception. Another factor is the possible reputation of the registered trade mark from which the third party might profit.

Paul highlighted the contrast between the approach of the ECJ where the trade mark owner must tolerate the honest use of an identical mark in the same field of activity as against the relative ease with which the owner of a prior company name, trade mark or shop may successfully oppose a later CTM application for an identical mark etc. Essentially Paul indicated that it might all come down to at the end of the day whether there is a likelihood of confusion in the mind of the relevant public and there would still be much work to be done by the national courts in assessing things on a case by case basis.

There followed a lively debate mainly on the Opel decision with interesting contributions from inter alia Catriona Smith of Allen & Overy and Anna Carboni. Sir Robin Jacob as ever added his unique thoughts to the debate and Stephen James and Allan James also gave their take on some of the issues raised. Overall it was more than clear that these decisions have created significant controversy in UK IP circles and there is no agreed right way to go. No doubt, like a well tuned Opel motor car, and this one will run and run !

Our thanks go to Gill Grassie, TIPLO committee member & Partner in the firm of MMM for the report & to Denise Mcfarland for additional input.