Use of financial services sector mark in City of London of 'more than local significance;

The Fortress Participations BV logo

The extent to which the scope of use of an earlier mark which is cited in aid of a Community trade mark opposition or cancellation is becoming an increasingly lively topic.  It was no surprise to tytoc collie, therefore, when his friend Roland Mallinson (Taylor Wessing) just happened to wonder whether the readers of this weblog might be interested in a recent decision of the OHIM Board of Appeal in Case R 355/2009-2 Fortress Investment Group LLC and Fortress Investment Group (UK) Ltd v Fortress Participations BV, a decision of 8 March 2011 which, at the time of checking, was not yet available online -- but you can read it here.  Let Roland (who acted for the two applicants/appellants, 'FIG') take up the story:

"FIG had sought to cancel FP's two Community trade marks for the mark FORTRESS (one a word and the other a device) on the basis of an earlier UK passing off right. The OHIM Cancellation Division rejected the applications for cancellation but the OHIM Board of Appeal has reversed these decisions.  Since the two mirror each other, I'll just deal with one of them here. In each case the Board accepted the evidence of the prior passing off right that had previously been rejected at first instance.

In terms of interesting law: 

• Use of a mark on financial services in the City of London was held to be use of "more than mere local significance" and so could give rise to a prior right to be relied upon in an objection under Article 8(4) of the Community Trade Mark Regulation (CTMR). The test is not just geographic but also economic. London is the seat of all government institutions and bodies and the City is one of the leading financial centres of the world (para 46). The same could presumably be true in other sectors which may have limited or very focused geographic markets (perhaps diamonds and Amsterdam?). 

• The Board held that its discretion to admit additional evidence at appeal stage is broader than in oppositions due to public policy considerations; unlike an opposition, a cancellation action is a final process. It also helped in this case that the new evidence merely corroborated and confirmed the previous evidence (para 33). 

• Contrary to the decision of the Cancellation Division, there is no obligation under Article 8(4) to show use of the brand relied upon during the five year period prior to filing the cancellation action. The Board distinguished reliance on a prior (unregistered) passing off right to reliance on a prior CTM or national mark. However, the Board nevertheless still ruled that use of the prior mark had to be shown not only for the period prior to the CTM filing date (in order to establish the earlier unregistered right) but also that the use had to be continuous right up the date of filing the cancellation action (para 44). This requirement was stated to be independent of national law. It seems to derive from the CTMR, perhaps from Article 8(4) itself, but the Board does not make this clear. Article 8(4) requires the prior mark relied upon to be "used in the course of trade". Does the passive past participle "used" mean the use has to be right up to the date of filing the opposition/cancellation action or just previously used in the past? The Board referred also to Rule 19(2)(d) CTM Implementing Regulations. However, this just requires the submission of evidence of the "acquisition, continued existence and scope of protection" of the prior right. Under English law, the "continued existence" today of a prior passing off right doesn't require use today. It is possible to sue in reliance on historic or residual goodwill in a brand that has not been used for some years (cf Ad-Lib Club v Granville [1972] RPC 673). In fact, in this case, it didn't matter since it was accepted that FIG was still using the brand".

If anyone fancies answering these questions, this weblog makes itself available for that very purpose.

Flying fortress here
Fortress Europe here

Walking fingers in Azerbaijan irrelevant to British action, rules judge

Sometimes, if you listen carefully, you can almost hear the sound of inflated expectations being deflated. Here is one such case.  There was only going to be one winner in the proceedings mentioned here, and it wasn't going to be any of the defendants: by name, Yell Ltd v Louis Giboin and others [2011] EWPCC 009, 4 April 2011, a decision of Judge Birss QC in the Patents County Court (PCC), England and Wales.

This logo was still accessible on
Sunday 10 April, here

In short, Yell was the registered proprietor of the YELLOW PAGES trade marks, one of which was a word mark and the other a device mark containing the words YELLOW PAGES.  These marks are well-known, both by the public and by unsuccessful litigants of various descriptions. The defendants' websites -- www.zagg.eu and www.transport-yellow-pages.com -- used the words "transport yellow pages" and a "walking fingers" device in a truck motif (right) in respect of an online directory of transport business and other services.

The defendants agreed that they had used Yell's trade marks but, they said, this was no problem: after all, their websites were not UK-based. Didn't the judge know that they were outside outside the court's jurisdiction?

Now that the PCC has its smart new set of teeth, Yell obviously hoped there would be someone, or something, to bite.  The company was not disappointed.  Even without its new cutting-edge rules, the PCC was well equipped to deal with this claim.  Judge Birss QC found that the average consumer of the defendants' services within the UK would regard their websites as being directed at them for (among other things) services which could be bought in the UK and which were being supplied in the UK.  Not only was there trade mark infringement under the Trade Marks Act 1994, sections 10(2) [similar marks and services plus a likelihood of confusion] and 10(3) [taking unfair advantage, without due cause of the reputation of YELLOW PAGES], but there was passing off too: while Yell's marks were undoubtedly associated with a paper directory service, the British public associated them with UK directory services in whatever form they were delivered --including online.

Says tytoc collie, an interesting diversion in this actions was caused by an attempt to raise the defence that the "walking fingers" had become generic, at least when used online. This brave attempt was based on US case law as well as on evidence submitted in respect of Australia and Azerbaijan. Thus

"Mr Giboin relied on a judgment of the United States' Court of Appeals for the Federal Circuit (the CAFC) dated 26th July 1995 in BellSouth Corporation v DataNational Corporation and others case 91-1461. The case was heard by Chief Judge Archer and Circuit Judges Rich and Mayer. BellSouth appealed from the decision of the Trade Mark Trial and Appeal Board of the United States PTO sustaining an opposition against their application to register a walking fingers logo as a design mark for classified telephone directories. The CAFC held that the "walking fingers" logo was a generic identifier of classified telephone directories in a (large) part of the USA.".

Alas for the defendants, both this submission and evidence that "walking fingers" online directories existed in Australia and Azerbaijan was fatally flawed by the fact that this dispute had to be determined in the UK, under British law and in relation to the mindset of the British consumer.

Merpel notes with interest that the word "numpty" appears in the judgment. As the judge explained:

"Yell also relied on the evidence of Luke Humble. He is a specialist in online marketing and website design. He is independent of Yell. He drew Yell's attention to the defendants' websites in the first place. The purpose of this evidence from Yell's point of view is that it submits Mr Humble was misled by the defendants' websites into associating them with Yell. ... Mr Giboin described him as a numpty. For those without the benefit of a Scottish education, a numpty is a derogatory expression referring to an ignorant stupid person. ...".

This is not actually the first time the n-word has been used in British litigation. It can be found, in the plural ("numpties") in Sheffield Wednesday Football Club Ltd and others v Hargreaves [2007] EWHC 2375 (QB), a Queen's Bench ruling of Richard Parkes QC, sitting as an additional High Court judge. Merpel observes that it is only necessary to explain the meaning of this word in County Court proceedings, since those engaged in High Court litigation, being better informed and probably able to converse with one another in Latin, are probably familiar with this term of art. Curiously, since the word is said to be Scottish, a search of the Scottish Courts database reveals no use of the n-word, either in its singular or plural form.

Irish paper folds, but it's no O'Rigami ...

In "'Mail' sued over 'Tribune' cover" the Irish Times reports that the Irish Mail on Sunday is being sued for passing off over its alleged “brazen and outrageous” publication last month of a fake copy of the Sunday Tribune, only days after the latter went into receivership.  Lawyers for the receiver say the newspaper is to seek damages, including “exemplary damages” over this “direct attack” on the goodwill of the Sunday Tribune.

The Irish Mail on Sunday however described the Sunday Tribune as “a dead man walking, if it was even walking” at the time of the disputed publication in early February, claiming that the goodwill of the Sunday Tribune was not even worth the €40,000 cost of the libel insurance which would have been necessary to publish it.

Mr Justice Peter Kelly has said that he would transfer the proceedings to the Commercial Court since the action was admissible within the rules relating to passing off cases, there no longer being a monetary threshold for passing off actions.  The trial has been listed for 21 March.

tytoc collie, aided by legions of amicable Irish IP enthusiasts, of which Gemma O'Farrell is not the least to be reckoned with, suspects that he will have more to report to readers of this weblog in due course.

Origami here
Irish origami, or what to do with your newspaper when it folds, here

Passing off and the CTM - three questions from Japan

tytoc collie has been contacted by his learned friend Japanese attorney Masahiro Tomabechi with three detailed questions concerning "passing off" and Community trade marks.

Masahiro has spent the last few weeks on secondment in London to 'carefully and sincerely' study European and UK trade mark laws and he has clearly made good use of his time as his three questions below serve to prove. This Kat, herself originally coming from a non-Common Law jurisdiction, has given Masahiro answers to his questions but thought it would be so much more fun to see what our readers think the answers should be -- somewhat reminiscent of the old German saying that 'if you ask two lawyers the same question, you will at least get three different answers' ('yes', 'no', 'perhaps, but I have never seen it...'). Merpel, however, wonders whether the German Kat might perhaps not trust her own answers....

Please post your responses in the comment field below.

[Question 1]
In a case where a French company (hereinafter called “the proprietor”) owns a Community Trade Mark right, if the Community Trade Mark is threatened by infringement activities of a British company in the UK and then the proprietor sues before a CTM court in the UK, is it possible to claim the “Passing-Off” right together with the CTM’s right in order to prohibit the British company from using its mark in the UK?

[Question 2]
If the Community Trade Mark is threatened by the infringement activities of the British company not only in the UK but also in France and then the proprietor sues before the CTM court in the UK, is it possible to claim the “Passing-Off” right together with the CTM’s right in order to prohibit the British company from using its mark in France and the UK? That is, when the “Passing-Off” right is claimed together with the CTM right, is the “Passing-Off” right applicable in France as well as the UK, although France is not a common-law country?

[Question 3]
If the Community Trade Mark is threatened by infringement activities of a German company in the UK and then the proprietor sues before a CTM court in Germany, is it possible to claim the “passing-off” right together with the CTM’s right in order to prohibit the German company from using its mark in the UK? That is, does the German court have ability to examine the existence of the “Passing Off” right, although the “Passing Off” right is a right derived from the UK Common Law?