2014 has been a topsy-turvy year so far in the retail and FMCG spaces in terms of trade mark decisions in Australia, New Zealand and the UK and EU.
It is worth looking at a few recent decisions to help guide big and not-so-big names with their brand protection strategies.
You win some …
- In the “battle of the bird brands”, Jack Wills successfully enforced its rights in the “Mr Wills” logo (below left) against House of Fraser’s use of a pigeon logo (below right) on clothing. While there were other “bird brands” in the UK (eg. used by Lyle & Scott, American Eagle and Hollister), the key point here in finding that they would be confused with one another was that each bird was adorned with the accessories associated with an English gentleman. See our detailed note here.
Pepsi came up trumps in a “battle of the bottles” in New Zealand, successfully defending claims that its “Carolina” bottle infringed various device marks owned by Coca-Cola (see our note here). The decision in Australia (based on different earlier rights) is expected soon.
- Thomas Pink successfully sued for trade mark infringement in respect of the PINK brand of Victoria’s Secret. A podcast from our London team on the PINK stoush can be heard here.
- Can you bring together services for the benefit of others? Of course you can, provided you can describe them sufficiently precisely and clearly, according to the European Court of Justice. This is good news for brand owners in various fields, such as comparison sites. Our detailed note on the case relating to the discount retailer Netto can be seen here.
- Speaking of comparison sites, BGL Group had a big win in the UK, convincing the Registry that COMPARE THE MARKET had become distinctive of its services in the UK (in the face of an opposition by Gocompare.com Limited). Simples. Aleksandr Orlov will be very happy indeed.
- Big box retailer Masters successfully fended off an opposition by Bunnings in New Zealand. Among other things, the MASTERS mark was sufficiently distinctive in respect of the goods and services applied for, notwithstanding that Masters has surnominal significance. The Assistant-Commissioner took note of the “Euro-view” on surnames in Nichols, and noted that the opponent did not plead the issue specifically or direct any evidence (apart from incidental search results). The decision can be contrasted with the prevailing practice in Australia as regards the treatment of surname marks.
You lose some …
- McDonald’s attempts to prevent the registration of HAPPY QUICHE and HAPPY SANDWICHES based on its HAPPY MEAL mark ended … unhappily. Our detailed note is here, but in short it was held by Appointed Person Mr Purvis QC that the respective marks were sufficiently dissimilar (overturning the first instance decision). This took into account the use of “HAPPY-formative” marks by other traders, such that Mr Purvis QC took the view that HAPPY is a common word, “which the public would not be surprised to see being used by unrelated enterprises in the field of food or catering as part of a trade mark”.
- Cadbury’s opposition against Whittaker’s BERRY FOREST application failed on appeal in New Zealand (our detailed note is here). While Cadbury could show that it had a reputation in the New Zealand market as at the filing date in its BLACK FOREST mark, the respective brands were visually, aurally and conceptually dissimilar.
- Tesco had a brace of losses:
(a) Its application to register its “five line” logo –
– was rejected on the basis that it lacked inherent distinctiveness, and that evidence of use was unlikely to show that the mark on its own distinguished Tesco’s goods and services (see our recent note relating to the requirements for proving distinctiveness, in the context of the Kit Kat shape mark, here). The Hearing Officer held as follows.
“The burden of showing that the relevant public regard the sign as presented as a trade mark in its own right would be huge in this case. In certain cases, the Nike ‘swoosh’ comes to mind, an especially distinctive form of ‘underlining’ may assume its own identity; it may be used on its own, for example, and though education, be capable of individual identity. In this case, the sign is used simply as a form of ‘underlining’ in relation to the word Tesco; the equivalent, almost, of simple punctuation and wholly ancillary, and subservient to the word ‘Tesco’. In trade mark terms, it would not be exaggerating to say that this sign not just ‘limps’ (by comparison with the word, Tesco), but is dependent for its very existence on that word.”
The Hearing Officer went as far as saying that this was a “hopeless case”.
(b) The “five line” decision followed on the footsteps of the rejection of Tesco’s UK applications for CLUBCARD and the stylised version of that mark (shown below) in December of 2013. Again, these marks were not sufficiently distinctive through nature or nurture. Tesco has appealed to the Appointed Person.
- Donuts created more trouble for everyone but Panrico SA in Europe. The CJEU upheld Panrico’s opposition to Bimbo SA’s trade mark application for BIMBO DOUGHNUTS based onPanrico’s earlier registrations (including a Spanish registration for DOUGHNUTS covering pastry and bakery products, specially donuts). Bimbo unsurprisingly argued that “DOUGHNUTS” in its mark was descriptive of its goods (and therefore that its mark did not conflict with Panrico’s earlier registrations). However, the CJEU agreed with the General Court’s decision which found that the term “doughnut” had an independent distinctive role in Bimbo’s mark, as it did not combine with the “BIMBO” element to form a “unitary whole” or “logical unit”. See our more detailed note here.
- Fortnum & Mason’s opposition against FITZROY & MASON in the UK was rejected at first instance, including on the basis that the respective marks were sufficiently different such that consumers would not be confused. FITZROY and FORTNUM “are both surnames that share little resemblance to each other except for the initial letter” and “the surname MASON is reasonably common”. An appeal to the Appointed Person Emma Himmsworth QC was rejected.
- June brought yet another loss for BP in its crusade to register the colour green as a trade mark in Australia. Our detailed note is here, but “the skinny” is that BP – while green is recognizable as an element of its branding – could not demonstrate that its mark in fact distinguished its goods and services as at the filing date.
Can we call it a draw?
- Australia’s High Court has been called in to settle a dispute between coffee brands in (our note here). The legal test for determining inherent distinctiveness is under the microscope, in the context of appeal from a ruling from the Full Federal Court that trade mark registrations for CINQUE STELLE (“five stars”) and ORO (“gold”) in respect of coffee are invalid. How are foreign equivalents to be treated under Australian law? We are watching this space for the outcome.
- There has been a spate of recent decisions relating to the global battle between Swiss cycling clothing specialist ASSOS and discount fashion retailer ASOS (“As Seen On Screen”). The most recent of these was in Australia, in which the Swiss company partly succeeded in its opposition against ASOS, albeit that ASOS would be accepted on amendment of its class 25 and 35 specifications to exclude certain goods used by cyclists. A note from our London team on the UK stoush is here.
The lessons?
- Trade mark law is territorial, and one country will commonly have a number of idiosyncratic local practices (eg. around the treatment of surname marks) that might not obtain elsewhere.
- Always ensure that you clear the way before launching a mark, and always factor in the fame of the earlier mark when assessing the risk of confusion.
- In assessing whether your logo is too close to that of another trader, it is important to consider what it is about the earlier right that makes it distinctive.
- Even if you are a huge presence on the high street, if you choose a descriptive or non-distinctive mark or a mark that is too close to one that is already on the market, then you run the risk that you will not be able to register it as a trade mark. This applies not only to words, but to “non-verbal” marks too.
- What is more, just adding a flourish or an element of colour is no longer enough (if it ever was) to get you past issues relating to distinctiveness. See our recent note on a spate of rejections of stylised marks in Europe on absolute grounds.
