Happy Saint Patrick's Day.

Some brands like to highlight their Irish roots around this time of year. But the use of the harp and the shamrock in a trade mark might not be allowed.  Article 6ter of the Paris Convention for the Protection of Industrial Property (1883) prohibits the use armorial bearings, flags, and other State emblems of the countries of the Union either as trademarks or as elements of trademarks. The Irish Free State became a member of the Paris Convention Union in its own right in 1925.  Countries in the Union add their emblems to a database maintained by the WIPO.  This a selection of some of those filed by Ireland. Using the harp of the shamrock in your trade mark (pretty much) anywhere in the world requires the permission of the Irish government.

Kerry: where Freihaltebedürfnis goes to die

My paper entitled Kerry: where Freihaltebedürfnis goes to die is published this month in the European Intellectual Property Review.

E.I.P.R. 2021, 43(12), 800-808

Heraldic Conventions for Representing Colour

Detail from Jean Baptiste Zangre, Representation de l’Ancienne et Souveraine Duche de Brabant. Louvain, 1600. 

 The problem of representing colour in black ink was first addressed in heraldry. Various hatching patterns were understood by convention to represent specific colours. Flemish engraver Jan Baptist Zangrius is credited with the first use of such a scheme, but that proposed by Silvestro de Petra Sancta in 1638 became the most widely adopted.

Dotted ground Yellow or Gold (Or) 

 The scheme was also employed to represent colours on the monochrome trade mark register. A 1927 Saorstát Eireann Statutory Instrument provided illustrated descriptions and heraldic names for black (sable), "chestnut or deep orange (tenne)", blue (azure), purple (purpure), "dark brown (murrey or sanguine), red (gules), green (vert), white (argent), and "yellow or gold (or)". The scheme, including illustrations, was also included in a 1963 Statutory Instrument. The specification of "Intermediate colours ... by increasing or diminishing the intensity of the lines" provided for in 1927 appears of have been a lost art by 1963.

IE TM 90374

When a figurative mark shaded with vertical lines was registered in 1975, the shared area would have been understood to be red. A heraldic convention colour specification scheme formed part of the practice for the UK trade marks as recently as 1992. The 2005 edition of Kerly's Law of Trade Marks & Trade Names included a appendix on heraldic colour conventions. A trade mark application by Calor Gas (Northern Ireland) Limited was almost spared refusal in 2006 by the appointed person's recognition of the heraldic dotted ground pattern for yellow in the applicant's representation of the sign. It is clear from his comments, however, that the practice was considered archaic by then. That some ancient heraldic colour names, such as tenne, had no ready modern equivalents, hence chestnut or deep orange, demonstrates not just that colour names vary across time and cultures, but that the set of hues to which a colour label might be applied also varies. The inclusion of colour names such as red, green, blue, and yellow in the legislation suggests that such broad categories of colour were once considered sufficiently precise to be applied to trade marks.

• S.I. No. 78/1927 - Industrial Property Rules, 1927, Fifth Schedule
• S.I. No. 268/1963 - Trade Marks Rules, 1963. Rule 34
• Calor Gas (Northern Ireland) Ltd's Application No 2154261, O-340-06, 8 November 2006, para 4
• Kerly, 14th Edition 2005, Appendix 30. 

Destination Paris

The Paris Convention 1883 is an international treaty that facilitates the registration of trade marks outside an applicants's home country.  Chief among its provisions is the right of foreigners to be teated the same as nationals.  As a general rule it provides that a trade mark registered in one country should be registrable in other countries.  Because countries modified their domestic trade mark legislation to accommodate accession to the treaty, trade mark laws around the world are very similar.  The Convention has been frequently revised.  At the 1911 Conference of Revision Article 6 was modified such that Article 6 2º read:

Les marques dépourvues de tout caractère distinctif, ou bien composées exclusivement de signes ou d'indications pouvant servir, dans le commerce, pour designer l'espèce, la qualité, la quantité, la destination, la valeur, Ie lieu d'origine des produits ou l'époque de production, ou devenus usuels dans le langage courant où les habitudes loyales et constantes du commerce du pays où protection est réclamée;

Through various revisions this became Article 6quinquies (B)(ii) which now reads:

lorsqu’elles sont dépourvues de tout caractère distinctif, ou bien composées exclusivement de signes ou d’indications pouvant servir, dans le commerce, pour désigner l’espèce, la qualité, la quantité, la destination, la valeur, le lieu d’origine des produits ou l’époque de production, ou devenus usuels dans le langage courant ou les habitudes loyales et constantes du commerce du pays où la protection est réclamée;

The official English translation of this provision states that trade marks cannot be refused unless (among other exceptions) :

when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed;

Similar provisions found their way into EU Trade Mark Directives and Regulations.  Article 7 (1) of the EU Trade Mark Regulation includes prohibitions on the registration of:

(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;

The provision for refusal of signs that designate the intended purpose of the goods is interesting.  It is not clear why la destination in the original French text came to be translated as intended purpose in the official English translation, rather than the more prosaic destination.  The plain meaning of la destination is the destination.  While it may seem unusual now that goods might be marked with their destination, it is not unusual at all in the context of early 20th Century revisions of a treaty governing the international trade.  The raison d'être of the Paris Convention was to ensure that exporters could use the same mark for their goods abroad as they did in their home markets.  It is not unreasonable to imagine that the provision was intended to ensure that words designating the destination of exports could not be registered as trade marks.  That la destination appears so close to place of origin in the list also suggests that the plain meaning may be the correct one.  

The first official English translation was provided at Stockholm in 1967.  This used intended purpose.  A guide published by the BIRPI in the same year also used intended purpose. [1]  But prior to this, legislators and commentators were required to translate under their own initiative.  Many favoured destination.

Earlier translations of the Paris Convention and of national legislation that implemented its provisions suggests that there was a significant period of time for which la destination was translated simply as destination.  A US text detailing Trade Mark Laws of the World translated the provision in the Convention using the plain meaning.[2]  The same text translated provisions of the German Law of 12 May 1894 as Amended 31 March 1913 (presumably to incorporate the 1911 revisions to the Convention) as preventing registration of signs:

That consist exclusively of figures, letters, or of such words as contain information as to the manner, time and place of manufacture, as to the quality, as to the destination, or as to the price, quantity or weights of the goods. 

In 1943 an Austrian author, Heinrich Reif, writing from the United Kingdom noted that the: 

German Law for the Protection of Trade-Marks, as amended by the decree of June 14, 1932, in section 4, that the following are unregistrable: 

a. Free symbols ("Freizeichen").


b. Marks that consist exclusively in figures, letters, or such words, as contain statements about the kind, time or place of production, the quality, destination, price, quantity, or weight of the article.
 [3]

As a trade mark attorney with some twenty years experience, "Former Member of the Vienna Bar", and a native speaker of German there is no reason to suspect that he did not fully understand the meaning of the  German law.  Since this law clearly gave effect to the relevant provisions of the Paris Convention and was presumably translated directly from the French, it suggests that the German translators understood la destination to have its plain meaning.

North American translators routinely translated the provision using its pain meaning.  Destination appears in discussions in 1952, 1953, 1955 & 1956. [4,5,6,7] A 2005 discussion of the legislation of Venezuela in English translates the Spanish using the plain meaning.[8]

Although these translations of translations of the Paris Convention French text demonstrate how it might have been understood, Canadian law provides some first-hand insights.  As one of the countries with both English and French as official languages Canadian translations of the Paris Convention are instructive.  Canadian Law has always used the plain meaning of destination and still does.  It could be argued that in this respect Canada is not meeting its Paris Convention treaty obligations, since it has deviated from the English language text.  Although it is a brave commentator that would tell Canadian legislators that their translations from the French are inaccurate.

So it is not at all clear the language used in European legislation is an accurate translation of the provisions in the Paris Convention.  However, it cannot be argued at this stage that the legislature did not know what it was doing.

[1] G.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property, BIRPI, Geneva, 1967 

[2]  John H. Ruege & W.B. Graham, Trade Marks Laws of the World, Trade Mark Law Publich Co., New York, 1922

[3] Heinrich Reif, Some Thoughts on the Selection of Trade-Marks, 33(6) The TradeMark Reporter 77 [1943], 98

[4] John Dashiell Myers, Recent Proposals for Revision of the International Trade-Mark Convention, 42 Trademark Reporter 516 (1952)

[5] John Dashiell Myers, Recent Activities of the International Association for the Protection of Industrial Property , 43 Trademark Reporter 557 (1953), 560

[6] Ex Parte Societe Fromageries Bel Commissioner of Patents-May 27, 1955, 45 Trademark Reporter 846 (1955), 850

[7] L. A. Ellwood, The Industrial Property Convention and the Telle Quelle Clause, 46 Trademark reporter 36 (1956)

[8] Venezuela, 95 Trademark Reporter 573 (2005), 473

Functional Colours

My article Shining a Light on Functional Colours appears in the January 2021 issue of the European Intellectual Property Review.  It discusses how some colours are not merely decorative and may be serving a function.  This can make them unregistrable as trade marks.

Book Review

My review of The Scientist and the Spy by Mara Hvistendahl appear in the December edition of the  European Intellectual Property Review. The book is a great read.

Raggett v Findlater Revisited

Raggett v Findlater

[1871 R. 146.]

(1873-74) L.R. 17 Eq. 29 

Although the judge in Raggett v Findlater stated the case involved "considerations of very considerable public importance" it is not a well known case.  But the November 1873 judgment marked a turning point in the way the English courts dealt with protection for trade marks that were made up of descriptive terms.  Following a series of cases in which the courts were prepared to protect property rights in marks that were merely descriptive terms or used terms that were common in the trade, the Court of Chancery questioned, for the first time, whether such marks should be protected.

The Facts

In 1855 the plaintiff acquired the brewing and distribution business of Blockley.  The plaintiff argued that by 1860 its product was known to the public as "Nourishing Stout".  In 1860 it began using  a round label with "Nourishing London Stout" around the circumference and the words "Raggett , late Blockey. Analyzed and reported on by Dr. Hassall." in the centre.  In 1872 the defendants, Findlater, Mackie, & Co., began selling beer labelled as "Nourishing Stout, bottled by Findlater, Mackie, & Co., 16, Prince Albert Street Brighton".  The plaintiff sought an injunction preventing the defendant from selling is beer using "Nourishing Stout".

The court spent considerable time investigating the nourishing properties of both beers and "several medical gentlemen" were among the witnesses.

The plaintiffs argued that Findlater's label were designed to deceive the public into believing they were purchasing Ragget's beer.  The defendants pointed out that their label was oval rather than circular and was merely a variation of the labels they had been using for a long time for other beers.

Precedents

Prior to this case it was settled law that any word could become the property of the first proprietor to use it as a trade mark, even if it were descriptive or commonly used in the trade.  A number of earlier cases were cited by Raggett in support of his case.  These cases outline the state of the law up to that point.  They are not identical, however, and some are more complex than they first appear.   Modern trade mark lawyers would recognise many of their elements, but would perhaps cast them in a very different light now.

In 1864 in M'Andrew v Bassett [46 E.R. 965] the court was happy to prevent the use of "Anatolia" for liquorice by anyone other than the plaintiffs notwithstanding that the word "is in fact a geographical designation of a whole tract of country, where the raw material is grown whence a manufactured article is produced".  The court noted that "property in the word, as applied by way of stamp upon a particular vendible article, does exist the moment the article goes into the market so stamped, and there obtains acceptance and reputation, whereby the stamp gets currency as an indication of superior quality or of some other circumstance which renders the article so stamped acceptable to the public."  As the first liquorice vendor to use the word as a trade mark the plaintiff had gained a property right in it.

A similar case, Wotherspoon v Currie [(1871-72) L.R. 5 H.L. 508] addressed the issue of whether a starch manufacturer in the Scottish town of Glenfield was entitled to use "Glenfield" for his starch even though the appellant had been using it for his starch for some time.  The court found for the appellant.  The court seemed to be persuaded that Currie acquired some property in Glenfield fo the sole purpose of being able to describe his product with that name.  Interestingly, his addition of "Royal Palace" to his label suggested a deliberate imitation of Wotherspoon's "Exclusively Used in the Royal Laundry".


In Seixo v Provezende [(1865-66) L.R. 1 Ch. App. 192 ], "Seixo" was variously argued to be a descriptive term for a type of wine (stoney) and a geographical location.  The defendant argued that his wine was of that type and from that region.  But the court was not impressed and found that the plaintiff alone had the right to use it to sell wine.

In 1872 in Broadhurst v Barlow the trade mark at issue was the words "Exactly twelve yards" written on cloth in Turkish, Armenian, and modern Greek, in a particular order.  The court was prepared to protect this as a trade mark.

The plaintiff in Raggett v Findlater also cited the 1856 case of Lawson v Bank of London [139 E.R. 1296] in support of his case, but noted that it had failed on a technicality.  The technicality was that Lawson didn't actually conduct any business as a banker.  There was not evidence of a single customer.  As such, this was a passing-off case in which the plaintiff failed to establish that he had any reputation.   But by citing the case, the suggestion was that the lack of distinctive character of Bank of London was itself no impediment.

Knott v Morgan [48 E.R. 610] was also a dispute over the right to use descriptive terms.  In 1836, the court found that the plaintiffs "have no right to appropriate to themselves the title of “London Conveyance Company;” still less can they claim a monopoly in the use of the words “Conveyance Company”.  In this respect the court appeared to presage the future development of the law.  However, a closer reading of this case reveals it to be a classic case of passing-off.  The court noted that "it is scarcely attempted to be denied that the Defendant has pirated the title, liveries and decorations of the Plaintiffs; and the variation which the Defendant made in some of these particulars, after the notice with which he was served, strengthens instead of altering the case of fraud which is made by the Plaintiffs."  This case hung not so much on the words used by the defendants but rather the get-up of their omnibuses.

Around 1849 Richard Ford began selling a new style of shirt which he called "The Eureka".  He marked the inside of his shirts with "R. Ford's Eureka Shirt, London".  Ford sought to prevent   Foster from selling shirts described as "Foster, Porter, & Company's Improved Eureka".  Ford v Foster [(1871-72) L.R. 7 Ch. App. 611] eventually came before the Court of Appeal in Chancery in 1872.  Evidence was introduced that the term "Eureka" had become widely used in the trade to describe a particular style of shirt.  The defendants argued that the term "was originally a fancy name applied to a particular shape of shirt, not shirts made or sold by a particular trader; and as such it has become publici juris, and is used both by the trade and the public to designate that shape without distinction of the seller. Every one, therefore, has a right to use it".  In his judgment James LJ stated that it was "utterly impossible to distinguish this case" from straightforward cases of infringement.  He was unimpressed by the argument that the use of the term had become widespread within the trade.  He stated that "It has been said that one murder makes a villain and millions a hero; but I think it would hardly do to act on that principle in such matters as this, and to say that the extent of a man's piratical invasions of his neighbour's rights is to convert his piracy into a lawful trade. That ground of defence, therefore, in my judgment, fails."

This is a case of what modern trade mark lawyers might call "genericide".  It is clear that as a "fanciful" term "Eureka" was capable of functioning as a source of origin when it was first applied to the shirts.  It is not entirely clear from the evidence presented to the court whether the term was used in this way however.  But even if it were used as a badge of origin, it is clear that by the time the issue came before the courts the term had become customary in the trade.  Such a mark would be unregistrable today and any such mark that was registered would risk being cancelled.  "Signs ... which have become customary in the current language or in the bona fide and established practices of the trade" [TMD Art 61)(d)] may not be registered.


In Cocks v Chandler [(1870-71) L.R. 11 Eq. 446] it was common ground that Reading Sauce had become a widely term in the trade for describing the type of sauce that was first produced by a business to which the plaintiff was the successor.  It was also accepted that "the labels thereon being in all other respects distinguishable from the Plaintiff's, and those used on the bottles being entirely unobjectionable."  However, the plaintiff argued that he alone had the right to use the words "The Original".  The court noted that by this time the original inventor had died 50 years hence.  He had not sought to protect Reading Sauce as a trademark.  "If he had thought fit to interfere when persons sold Reading sauce, he might probably hare obtained an injunction from this Court to prevent them from selling Reading sauce; but, when he has acquiesced in that for a considerable length of time" protection for "Reading" was no longer available.  The court found that the word "original" did have meaning and dismissed the defendant's argument that it "could and would deceive nobody".

Rommoly M.R. stated that:
If I, wishing to have the Reading sauce, which has acquired a great reputation in the market, went into a shop and asked for Reading sauce, and was told that there were several Reading sauces, I should say: “Which is the Original Reading Sauce?” or if there was a bottle given to me with the word “original” upon it, I should assume that to be correct, and I should not assume it to be made by anybody but the original inventor. I do not think I should be inclined to purchase a bottle with the word “original” upon it if I did not believe that the person putting that word on the label was the original inventor.   ...  But the importance of it is, when from the reputation obtained by the sauce in the market an abundance of manufacturers spring up, then the person who has become the owner of the original recipe is entitled to say he is the original inventor.

He granted an injunction preventing the use of "original" by all except by Cocks.  However, he was at pains to point out that:
I do not treat this as a case of imitation. I treat it simply as a device to induce the public to believe that the person who sells this sauce has the recipe from which, originally, this peculiar sauce for fish and culinary purposes was made, and which was sold originally under the name of Reading sauce, and has acquired such great reputation.

In this respect the case is not so much about trade mark infringement as it is consumer deception.

Judgment & Commentary

Prior to Raggett v Findlater the law was quite clear based on the many precedents were cited.  Mallins VC found these precedents unhelpful:
Now, it is ... think most reasonably settled, by the rules of this Court, that a man ... is at liberty to adopt a trade-mark which shall distinguish it from the articles of all other people, which will become a mark of his own; and if it be sufficient to distinguish it, then he has a right to restrain all other persons from using that mark.  The case has been very carefully and elaborately argued; and although I have only heard one side, it has occupied two days and a half.  There is a great mass of evidence, which has been all gone into, although the great bulk of it is utterly useless.  The cases which have been referred to go to this: If a man adopts a particular mark, he has a right to restrain all other persons from using that mark.

Mallins distinguished for the first time between descriptive and non-descriptive words and questioned whether descriptive terms were eligible for protection.
If I am right in saying that the particular quality of the stout is this nourishing quality, must not every man be at liberty to describe his stout, whether brewed by himself or brewed by another and sold by him, as being a nourishing beverage?  Why are not Messrs. Findlater & Co. at liberty to say theirs is a nourishing stout as well as the Plaintiff's. Upon principle it appears to me there must be something to go beyond a mere English adjective describing the quality of the material. If you use a foreign word, or a word in a dead language not known to people in general, that word itself, because it is not understood, may very reasonably become a trade-mark.


Here Mallins VC presaged developments in the law that eventually precluded descriptive terms from being registered as trade marks.  Interestingly, however, he also identified consumer perceptions as the benchmark by which such terms are measured, rather than any kind of absolute test.  This allowed him to distinguish this case from M'Andrew v Bassett because "Anatolia" was "so utterly unknown to the great bulk of the community that it was not unreasonable to say that those who first used the word ... made it a trade-mark thereby acquired the exclusive right to use it."  He rejected the logic of Lord Westbrury's judgment in M'Andrew v Bassett that stated "property in that word, as applied by way of stamp upon a particular vendible article ... does exist the moment the article goes into the market so stamped, and there obtains acceptance and reputation whereby the stamp gets currency as an indication of superior quality, or of some other circumstance which renders the article so stamped acceptable to the public."   He stated "I find nothing in his judgment in that case, or in what has fallen from him, or any other Judge in any other case, that would warrant the principle that a mere description of the quality of the article by an English word can become a trade-mark."

Mallins VC disguished this case from the other precedents in turn.  He again identified the public perception of the mark as the relevant test and noted that in Wotherspoon v Currie "Glenfield" "might have been a name, or anything else, but whether it was the one or the other, it was utterly unknown to the public."

Registration of any sign that indicates the geographical origin of goods might be challenged today since "signs ... which ... serve ... to designate the ... geographical origin" [TMD Art 6(1)(c)] of goods may not be registered as trade marks. However, Mallins correctly identified that this objection is dependent on the perceptions of the public and it is a reasonable objection only if the public understand the word to be a place name.  This is the approach used today.  In 2019 the "Kerry" in "Kerry Gold" was held to be distinctive because few people in the EU actually understand Kerry to be a place. [EUIPO Board of Appeal R 2473/2013-5]

Mallins distinguished his case from Broadhurst v Barlow by clarifying that  "The trade-mark there consisted of the particular order in which those foreign words were used. ... If the Plaintiffs had used the words “Exactly twelve yards” in the English language, nobody would have said that any other manufacturer could not have done the same ...  It would be trade-mark running mad to say that such a thing as that could be.  Therefore the fact of its being put in three languages, all foreign languages, constituted the trade-mark in that case."

Distinguishing the case from Seixo v Provezende he noted that although "Seixo" was a region of Portugal it was also the name of the Baron who derived his title from there.  He also found that the defendants had a clear intention to deceive in that case.

Similarly, he found that the defendants claim in Cocks v Chandler to be the "Original" Reading sauce was not true.

Ford v Foster did not apply because "Eureka" was a fanciful term.


Malians compared Findlater's labels to Raggett's and concluded that there was no attempt to deceive.  He stated "I have never seen a case in which there was so singular a failure in imitation, or in which I should have more readily come to the conclusion that it could not have been their intention to imitate or deceive."

Malins VC was sceptical of Raggett's claim to a trade mark.  In the opening line of his judgment he referred to "that which he calls his trade-mark" and later asked "if he has a trade-mark at all?"  He rejected the plaintiff's claim that "Nourishing".

I have pressed the learned counsel with the difficulties that weighed on my mind as to whether it is possible for a person using an English adjective describing the quality of the material he sells, to make that a trade-mark.  In this case it is the word “Nourishing,” which is in common use and thoroughly understood by all Her Majesty's subjects—“Nourishing Stout.”  Upon principle, ought this to be a trade-mark?  What is the quality of stout?  I suppose, if any one was called upon to describe the most distinguishing quality stout possesses in the opinion of the world, it would be that it is a nourishing beverage. 

The judge noted that proprietors can choose distinctive marks in preference to descriptive ones.  "If the Plaintiff was desirous of possessing the advantage of his trade-mark he had the matter completely in his own hands, because in order to distinguish it from all others he might have associated his name with it, or the name of his predecessor, or something which would distinguish it from merely nourishing stout".

He ruled that descriptive terms should be kept free for all to use, a principle that is now codified in trade mark legislation.  He stated that "for the protection of the public, it is necessary a trade-mark should be something beyond a mere English word denoting quality".  In this case specifically he ruled that "The word “Nourishing” therefore of itself will not do....  If he has only rested his case on the word “Nourishing,” I am clearly of opinion that is no trade-mark, and on that ground I think his case wholly fails."

Notwithstanding the Victorian language, the decision in Raggett v Findlater was very modern and presaged many welcome developments in trade mark law.  Malins VC identified the tension that lies at the heart of trade mark law.  He acknowledged the  trade off between the property right in signs and free trade stating that "it is of the highest importance that, on the one hand, every protection should be given to trade-marks when fairly and properly used, and when used within just limits, and, on the other hand, it is of equal importance that, by the use of a particular word or anything which may be called a trade-mark, the right should not be unduly extended so as to infringe on the right of traders to call their articles by a quality they possess, or to give an undue protection to any man who happens to use a particular word."  Such a statement would not look out of place in a judgement, text book, or manual of practice written today.  Jacob LJ noted in 2010 that "trade mark law does not prevent owners from making honest statements about their products". [L’Oréal SA & others v Bellure NV & others, [2010] EWVA Civ 535, para 8].

Thus Raggett v Findlater marked a departure from the law's clear position that any word could become a valid trade mark, to one where descriptive terms were required to be kept free for use by all.   Mallins' approach eventually became codified in law.  The Trade Mark Registration Act of 1875 referred to "Any special and distinctive word or words" [Sec. 10].  The 1938 Trade Marks Act specified "a word or words having no direct reference to the character or quality of the goods".

A close reading of the decision M'Andrew v Bassett reveals hints of other developments that were to come, and also that Lord Westbrury and Mallins were not so far apart.  Although Westbury argued that the property right in any word "applied by way of stamp upon a particular vendible article" existed "the moment the article goes into the market" this is further qualified by the presumption that it "there obtains acceptance and reputation".  Modern trade mark lawyers might see in this the beginnings of distinctiveness acquired through use.  Westbury appeared to argue that any word could be a trade mark provided that it is accepted as trade mark by the public.  This approach differs from modern trade mark law only in the presumption that the acceptance and reputation occurs at first use.  Applicants seeking to register a descriptive term as a trade mark nowadays must demonstrate that the relevant public does indeed perceive that sign as a badge of origin.  This necessarily cannot occur at the time of first use, but may well be possible later.

[Not about] European Shapes Marks & EUIPO CP9

I watched an excellent webinar from the EUIPO this morning about shape marks.  The webinar was about Common Practice 9 (CP9) which outlines guidelines for national offices when dealing with applications for shape marks.  Although the Trade Mark Regulation and the Trade Mark Directive set out the law, and the CJEU sometimes provides guidance on how they should be interpreted, the details are left vague.  The EU operates parallel EU-wide and national trade mark regimes.  Divergence in the practice between national offices can undermine the single market by failing to provide uniform proportion for trade marks throughout the Union.  The Common Practice project seeks to get a consensus amongst the national offices and document the agreed approach.  Robert MULAC gave an excellent presentation on shape marks and CP9.

CP9 provides guidance to trade mark offices when dealing with a shape mark containing other elements when the shape itself is not distinctive.  In summary, a non-dinctinctive shape will be a distinctive shape mark when combined with a distinctive element (e.g text, logo).  If a mark (M) comprises a is a non-distinctive shape N and several other elements (A, B, C) then the mark M = N + A + B + C will be distinctive if any of A, B, or C is distinctive.  This logic is quite useful for trade mark registries attempting to determine whether a non-distinctive shape has been supplemented sufficiently to render the whole distinctive.

CP9 provides some instructive examples.  This non-distinctive wide bottle may be registered as a shape mark provided that it is accompanied by a distinctive word mark.  Similarly this non-distinctive memory chip may be rendered distinctive overall by the addition of a distinctive element.  Such elements may be logos, colours, or position marks.  (However, establishing that a colour mark or position mark is distinctive can be difficult in practice.)

So this solves a problem that trade mark registrars have in trying to determine if a shape mark is distinctive.  But it creates some uncertainty for other users of the trade mark register.  Trade mark applicants use the register to claim and validate their property rights and to make protection of those rights easier.  Trade mark owners may rely on a registration when asserting claims before a court or when seeking enforcement.  But they are not the only users of the register.  Competitors may consult the register to determine their freedom to use certain signs.  The trade mark register also serves society at large by allowing the free market to function more efficiently.  This is its primary purpose, but is also the one furthest removed from policy makers.

When enforcing intellectual property rights or avoiding infringement of them knowing the precise scope of the property right is essential.  The way in which shape marks may currently be registered serves the needs of the registrar and the trade mark applicant very well.  But in muddying the waters it makes life difficult for competitors who cannot readily identify the precise scope of the trade mark right that is registered.

The EUIPO information page that explains the different kinds of marks provides three instructive examples.  It is arguable that only one of these should be considered a shape mark.  Ask anyone for examples of a product that can be identified by a shape alone and many will immediately identify the shape of a Coca-Cola bottle as signifying the origin of the contents.  Coca-Cola could arguably be sold in bottles of any size and colour, without any text and consumers would be able to identify it as Coca-Cola.  It is the quintessential shape mark.  The scope of this trade mark is also very clear.  It is clear that no one other than the owner can sell drinks in bottles of this shape.  The shape alone is the trade mark.  Another example is the shape of Toblerone boxes.  Kraft Foods has secured a trade mark on the triangular shape alone, independently of any colours or text.  This too is quite reasonable, and the scope of the trade mark is clear.


The other two examples provided by the EUIPO are somewhat confusing, and it is telling that from all of the shape marks on the EUIPO register, no better ones could be found.


Duracell has secured a trade mark registration for a black battery "with a copper coloured top", as the advertising slogan went.  However anyone examining the register might be confused.  Clearly no one can sell batteries of this shape with this colour.  But does the registration preclude sale of batteries with this shape?  Clearly it should not.  The shape is a standard shape for all such batteries.  A disclaimer in the registration excludes "The shape of the three-dimensional mark" from the scope of the registration.  But this gives rise to the somewhat confusing paradox of a shape mark that explicitly disclaims the shape.  Whatever the appropriate type of mark is for this registration, clearly shape isn't it.  This is, of course, a colour mark.  It is nothing more and, importantly, nothing less.  The colour combination in the appropriate ratio is sufficient to identify the origin of the goods.  Duracell should not have to file the obviously redundant registrations for other shapes of battery with the same colours.

It is not clear from the registration of the orange and red bottle which of the elements of the trade mark are being claimed by PVG Holding B.V.  If I am selling similar goods can I sell them in a similar shaped bottle?  If this is a shape mark then perhaps I cannot.  Can I sell my goods in a differently shaped bottle, with identical colours, but without the happy couple?  Of course, one could retort that for infringement (and indeed unfair competition / passing off) the overall impression will be considered by the yardstick of consumer confusion.  But in most cases the right being claimed is a fixed point and the test is how close the competitor comes to it.  Registering shape marks without making clear which elements comprise its essence means that the position of the reference point by which confusion can be measured is unclear.

The Duracell battery is, of course, an extreme example.  Even in the absence of the disclaimer no reasonable person would expect that the scope of the trade mark included the shape.  But what about shapes that inhabit the grey area between distinctive and not.  CP9 provides trade mark offices that have determined that the shape alone is not distinctive a readily accessible mechanism for determining that the combination of the shape and word mark (for example) is distinctive.  But once the mark has been registered there is no way for someone inspecting the register to know that the scope of the protection does not include the shape alone.  The fact that the trade mark office considered the shape alone to be non-distinctive is not recorded.  While it is easy to conclude that a standard wine bottle or battery is a non-distinctive element, the cases file of the EUIPO are awash with failed attempts to register shapes that applicants believed distinctive.  The thin red line between distinctive shapes and non-distinctive shapes is in fact blurry, faint, and swiggly.

Perhaps the problem is that the shape trade mark has become a catch all category for marks comprising many elements.  Packaging may include a word mark in a particular font and colour, packaging colour, and various graphical elements.  It is reasonable for manufacturers to want to protect the sum of their branding elements, in addition to the individual parts.  And it is possible that a combination of non-distinctive elements many be more than the sum of its parts and be distinctive.  But classifying such compound marks and shapes, even when the shape is demonstrably not distinctive is far from ideal. Perhaps the solution is to provide a category of compound trade mark that allows various elements to be combined.  The non-distinctive elements could be identified.

But there is a need for a distinct category of shape-only trade marks, just as there is for colours only.  The current regime for shape marks is fudge.  It serves trade mark registrars and applicants, but undermines the principle objective of the register and thus it's value.  When the EUIPO's prime  example of a shape mark has a disclaimer saying it is not a shape mark, something is wrong.

Billions Served! But No Receipts: Supermacs v McDonald's

My paper on the battle between Irish fast-food chain Supermac's and McDonald's is published in the current issue of Commercial Law Practitioner.  The was a lot of sloppy reporting about this case in the press.  In the paper I outline how McDonald's failed to provide suitable evidence of use for its BigMac trademark.

'Billions Served! But No Receipts: Take Aways from SUPERMAC'S and BIG MAC Trade Mark Battles' (2019) 26(8) Commercial Law Practitioner 147

Lessons from Spanish Dinosaur Biscuits.

Galletas Artiach S.A.U. v La Flor Burgalesa S.L. SJM B 184/2019  ECLI: ES:JMB:2019:184
(also known as Artiach v Florbú)
Roj: SJM B 184/2019 - ECLI: ES:JMB:2019:184
Juzgado de lo Mercantil no 08 de Barcelona

A decision of the Commercial Court (Juzgado de lo Mercantil) of Barcelona raised some interesting questions about the scope of a two-dimensional figurative mark to include to the three-dimensional shape of the goods themselves.  The case exposed the gap between what a trade mark owner may think is covered by a trade mark registration and the reluctance of society to grant broad monopolies that may harm competition.

The plaintiff Galletas Artiach S.A.U. sued La Flor Burgalesa S.L. for infringement of several of figurative trademarks.  Some of these were various dinosaur line drawings first registered in 1990.  Others registered in 2015, though figurative marks, clearly depict three-dimensional dinosaurs in relief.

Articach also claimed that the respondents use of "GALLEGASUROS" constituted infringement of its international trademark (designating Spain, Portugal, and Morocco) "DINOSAURUS", a Spanish trade mark comprising a stylised version of the same word, and combined marks ('112, '114) which describe the packaging.  Articach further claimed that the respondent's sale of its biscuits in packaging that contained depictions of them constituted unfair competition (competencia desleal) because it caused consumer confusion.  Artiach sought a finding of infringement and unfair competition, and orders preventing further manufacture of the offending biscuits, their withdrawal from the market, and destruction of stock.


The court noted that the plaintiff was relying exclusively on figurative marks and no three-dimensional marks.  It noted this situation was "extreme" (extremo) and "very relevant" (muy relevante) to the decision in the case.  The court noted that the plaintiff seemed to be claiming the scope of its trademarks extended to cookies in the shape of dinosaurs.  The court found that although the plaintiff had successfully registered dinosaur silhouettes as trade marks, these were two-dimensional and their scope did not extend to the three-dimensional shapes of cookies.  Furthermore, it noted that the shapes of certain species of dinosaurs "belong to the general public, that is: they are in the public domain."  It also noted that even if the registration had been for a three-dimensional mark, such a trade mark for cookies would have "scant distinctive value".

The court applied the now classic examination of the similarities between the signs by considering the aural, visual, and conceptual similarities.  Interestingly, the comparison of the visual similarity was conducted using the stylised text figurative DINOSAUROS mark as it appears on the packaging and the GALLE SAUROS packaging.  Thus the different colours were considered.   The packaging was also compared and it was noted that the plaintiff’s biscuits were sold in a cardboard box, but the respondent's were in a plastic bag.   On the conceptual similarity the court noted that the plaintiff's trade marks "evoke the extinct species of dinosaurs, which as a species belonging to the natural world is not, in itself and in principle, appropriable nor registrable" in the absence of some "singular" element that transforms it qualitatively.  Again the decision made much of the fact that no three-dimensional trade marks were being relied upon.

The plaintiff had produced, at earlier hearings, the results of a survey it had commissioned from Ipsos Iberica.The court ruled that this survey was insufficient to demonstrate a likelihood of confusion.  The court noted that the survey had not been conducted specifically for the trial.  The court took issue with the methodology of the survey which was conducted online.  It noted that 22% of Spanish households did not have a computer, and therefore a significant portion of the population was excluded from the survey.  It raised concerns that the survey was targeted at children under sixteen years who completed the survey without the assistance of their parents.  It was not be demonstrated that the children understood the questions.  The court also raised concerns about the small size of the sample (300 children) and the fact that it was the parents, not the children, who made the purchases.  It ruled the survey too unreliable to be useful evidence.

The court addressed the issue of extra protection for well known marks that was in force during the relevant period.  It noted that these provisions were not relevant because the goods in question were the same as those for which the trade marks were registered and so the tests applied would be the same.  The court chose to rule on the plaintiff's claim nonetheless.  It found that that it relied too heavily on the previously dismissed survey evidence and so ruled that the well known status was not demonstrated.

The court also sought to clarify the distinction between an expert (perito) and an expert-witness (testigo-perito).  It noted that experts were interchangeable because one "is substitutable for another who possesses the same specialised knowledge, while the expert-witness is irreplaceable because he had personal knowledge of the controversial facts".  An expert-witness has "a historical relationship with the facts" whereas an expert is a stranger (ajeno) that is required to assess certain aspects of the litigation.  The distinction was important because the procedural rules required that an expert-witness be "limited to giving an oral statement … about what he has seen or heard and adds his specialised knowledge without it being challenged".  Nor can they challenge expert opinions.  Thus the court rejected the plaintiff’s use of an expert-witness to "introduce into evidence a faulty, undercover or extemporaneous expert opinion".  Evidence presented by an expert-witness based on data from Google Trends was ruled inconclusive (no ... concluyentes).  A statement from Asociación para la Defensa de la Marca, a trade body, that the mark was a well known was dismissed since the plaintiff belonged to the trade body.

The court elaborated in the interaction between trade mark law and the law of unfair competition, and pointed out that the provisions prohibiting unfair competitor are only applied when the trade mark law does not.  All of the actions complained of fell within the scope of trade mark law.  Thus the law of unfair competition was not applicable in to this case.

Costs were awarded again the plaintiff.

Commentary

It is not clear why the court did not use the plaintiff's word mark DINOSAURUS  as the reference point for the measure of similarity.  Although similarities in the packaging were clearly relevant to the issues of unfair competition,  it could be argued that comparing just the words alone would have been more appropriate to the question of trade mark infringement.  This would have removed the colour and font from the considerations.  While the court might have found that GALLEGASUROS was indeed very different from DINOSAURUS, the difference between the figurative mark in coloured lettering and the defendant's packaging was significantly greater.  The scope of a word mark includes the word in all colours and typefaces.  Perhaps the most appropriate test would have compared the words alone in the absence of any colours.

The chief difficulty in this case is that the plaintiff asserted that its two-dimensional trade marks gave it a monopoly on the production of biscuits with their shape.  This is what made the court uncomfortable.  Were this a case about the use of a dinosaur logo on the packaging of rectangular biscuits, it might have been a very different case.  A monopoly on the attachment of dinosaurs to boxes of biscuits and a monopoly on the sale of dinosaur-shaped biscuits are very different things.  The question the court faced was did the scope of Artiach's trade mark registrations include both.  This is the central question in this case, and it went largely unanswered.

It is clear that the plaintiff was granted registration of several line drawings of dinosaurs as trade marks for biscuits.  These drawings were distinctive and entirely capable of indicating the origin of goods.  The courts decision that they "evoke the extinct species of dinosaurs, which as a species belonging to the natural world is not, in itself and in principle, appropriable nor registrable" was highly unusual.  While the language used would be familiar to anyone who has read decisions on the distinctiveness of trade marks, the idea that something from the natural world cannot be distinctive is very wide of the mark.  Apple functions perfectly well as a distinctive sign for computers.  A crocodile functions very well as indicators of origin for goods sold by Lacoste.  Why dinosaurs cannot function as trade marks for biscuits is not at all clear.

Assuming, for the moment,  that the registration was valid, the relevant issue is the extent to which the scope of this trade mark includes the shape of the biscuits themselves.  Did the registration grant a monopoly on the sale of dinosaur-shaped biscuits?  The court's reluctance to grant a monopoly on dinosaur-shaped biscuits is reasonable and its assertion that the plaintiff's trade mark registrations did not give it one seems sound.  But the reasoning is somewhat unsatisfactory.  The court focused very much on the older registrations which were line drawings and the fact that no three-dimensional marks were relied upon.  But it is arguable that the 2015 registrations (ES M3565248, M3565255, M3565267) are clearly two-dimensional renderings of three-dimensional objects.  These registrations make the court's reasoning appear less sound.

The difficulty remains, however, that for most of trade marks' history they have been signs attached to goods and not the goods themselves.   This is a relative new development and neither the registration process nor the courts are well equipped to address it.  The trademark registration process does not make it easy to distinguish between a sign attached to goods and a sign that is the goods.  There is currently no good mechanism for a manufacturer such as Articach to apply for a monopoly on the on the production of biscuits of a particular shape.  It may be useful to develop a shape-of-the-goods category of trade mark.  Such applications could still be assessed using the same criteria for distinctiveness as other types of mark.  But it would be clear what monopoly the applicant is seeking and what has been granted.

There is a somewhat convoluted argument that might have provided the court with a solution.  Drawings of dinosaurs are perfectly good badges of origin for any kinds of biscuits, expect biscuits shaped like dinosaurs.  For such biscuits they are merely descriptive.  But such an argument would hardly resolve the difficult question the court was asked to address.