Furniture Village brought a Nominet complaint about furnitureland.co.uk. The respondent claimed that, although he knew about Furnitureland, he thought they had stopped trading, and so his registration of the domain name was in good faith.

Both the first instance Expert and Appeal Panel agreed, so the respondent gets to keep the domain furnitureland.co.uk, which it is using as a click through website.

The case shows that the Nominet DRS is not suitable unless the complainant can clearly show the registrant knew of the complainant’s rights.

Faced with similar facts, brand owners should consider a passing off or trade mark action, which may have a better chance of succeeding.

It is also worth noting that the panel maintained the DRS’s reputation for speed by refusing to stay the appeal because of a pending trade mark revocation.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

The design was previously ruled invalid because it did not create a different overall impression on the informed user than an earlier Promer design. A key facet of Pepsi’s appeal was that the General Court had incorrectly defined the “informed user” and his level of attentiveness.

The ECJ disagreed with Pepsi and stated that informed user lies “somewhere between … the average consumer… who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise”.

Although this is a welcome clarification, this case concerned a very simple design, and it seems likely that the courts will continue to grapple with this concept in less straightforward design fields.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

The ECJ ruled (amongst other points):

• a trade mark proprietor can prevent a competitor from using a keyword identical to their own trade mark to advertise goods or services identical to those covered by their trade mark where such use is liable to have an adverse effect on the functions of the trade mark: the ‘indicating origin’ function of a trade mark will be adversely affected if the advertising displayed as a result of the keyword does not enable an internet user to ascertain whether the goods or services advertised originate from the trade mark proprietor or a third party.
• the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark where the competitor takes unfair advantage of the distinctive character or reputation of the trade mark or where the advertising is detrimental to that distinctive character.

The first point is unsurprising – its what we’ve been seeing in the national court rulings. However, it will be interesting to see how broadly the second point is interpreted by the English courts.

Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.

Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

Miffy, a small white female rabbit, was created in 1955 by Dick Bruna. Cathy, also a small white female rabbit, was created by Sanrio in 1976.

In 2010 Mercis Media BV (Mr Bruna’s copyright management firm) brought trademark and copyright infringement proceedings against Sanrio. Why it took Mr Bruna 34 years to bring proceedings is unclear…

Sanrio was ordered to stop production, sale and marketing of Cathy character goods in the Netherlands, Belgium and Luxembourg and to pay €25,000 per day if it did not comply, up to a maximum of €2m.

Sanrio appealed and filed a counter claim seeking the Miffy trade mark be removed from the register.

The matter has now been resolved, with Sanrio agreeing to no longer use the Cathy character. Both parties have also agreed to donate €150,000 jointly to the victims of the Japan earthquake. A very commendable settlement indeed.

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

The Advocate General has now provided an opinion in the case of Interflora v Marks & Spencer stating that a trade mark owner can forbid the use of a trade mark in such circumstances where the advertising link:

• is liable to lead some members of the public to believe that the competitor is a member of the trade mark owner’s commercial network; and/or
• displays or mentions the trade mark and the advertiser thereby attempts to benefit from its power of attraction, reputation or prestige

Surprisingly the Advocate General believes that the advertisement may confuse searchers in to believing that M&S is part of the Interflora network. If the court’s hypothetical searchers are so easily confused then adword purchasers will need to select their adverts very carefully.

Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com

L’Oreal argued that in using L’Oreal’s trade marks, eBay (in some cases) directed its customers to infringing goods and that it was involved in the infringements of sellers using its online marketplace.

The AG’s opinion is that on the face of it eBay is not liable for acts of trade mark infringement committed by its customers (since the function of the trade mark should not be affected). However, eBay could become liable, if it was notified of the advertisement or sale of infringing goods, and such infringement by that seller continues or is likely to continue in relation to the same or similar goods.

eBay are said to be pleased with the opinion, though trade mark owners will take comfort from the fact that eBay will have to remove listings for goods of questionable origin and could be liable for future infringement by the same person.

Posted by Emma Tuck, who specialises in Intellectual property disputes relating to patents, trade marks, designs and copyright; non-contentious intellectual property matters including advising on licensing, assignment, confidentiality and collaboration agreements

Emma Tuck
0121 237 3908
etuck@brownejacobson.com

In this case Daniel Stubbs registered a number of spread betting related domain names including worldspreads.co.uk for the purposes of making money through affiliate marketing. The website at the domain initially contained links to generic shopping websites.

WorldSpreads, a well-known provider of financial spread betting services, began trading in the UK two months after the date of Mr Stubbs’ registration and was unable to adduce evidence of prior rights in the UK. The registration was, at that point, legitimate.

Following several approaches by WorldSpreads to purchase the domain, Mr Stubbs changed the content of his website to include links to the websites of WorldSpreads’ competitors.

It was held that, although the initial registration was legitimate, Mr Stubbs’ later use of the domain amounted to abusive use.

This decision will be welcome news to brand owners, and private individuals seeking to profit out of speculative domain name registrations will need to tread more carefully.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

From 1 December 2010 until 17 January 2011, owners of registered trade marks which match their desired “short” domain name will have the first option to apply, upon providing evidence that they have used their trade mark in the UK before 1 January 2008.

Following this will be a second sunrise period for owners of relevant unregistered marks and then a landrush period before a general release (dates to be confirmed).

Rights holders might be tempted to apply immediately on 1 December. Nominet expects fierce competition for the domain names, but beware! Applications will be published, and rival applications will proceed to an auction. Applicants should consider the potential commercial advantages of filing closer to 17 January, since Nominet has confirmed that where there are rival applications, no priority will be given to the earliest application.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.

Peter Ellis
0115 976 6269
pellis@brownejacobson.com

So where does that leave products whose shapes are dictated by technical functions? Design protection may be available for some features of shapes, but again there is an exclusion applying to features of a design which are solely dictated by technical function, so community registered and unregistered design rights may be of little assistance. If the product is novel and inventive, it may qualify for patent protection.

The ECJ gives little guidance as to when any non-technical features are sufficiently relevant so as to bring the shape within trade mark protection. Those seeking such protection will have to place a great emphasis on any non-technical features, to get over the hurdle of registrability – something which the Lego brick failed to do.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

The Office of Harmonization for the Internal Market (OHIM) says not – an application for a community trade mark by Borco to register the Greek letter alpha – α – for wines was held to lack distinctive character, being a simple reproduction of the letter and also a mark that Greek consumers would not see as an indicator of origin.

Advocate General Bot thinks otherwise and contends the OHIM’s practice of automatically rejecting applications to register single letters as trademarks without a full assessment is wrong.

This decision follows swiftly on from recent decisions on colour marks and confirms that all marks must be examined on their capability of distinguishing their particular goods from those of others.

It is hard to see how the ECJ could fail to follow the Advocate General’s opinion. Clearly there are no short cuts to examining distinctiveness no matter how short the mark!

Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.

Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com

Applications for a European Community Trade Mark, and (since October 2007) for a UK trade mark, are not subject to examination on relative grounds. Instead, existing trade mark owners are notified of applications that may conflict with their registered, and given the opportunity to object – meaning that UK and Community trade mark owners must police applications. 

The UKIPO changed the system of registration to make it more similar to the CTM system – but it is clear that the system in Ireland is easier both for smaller businesses that cannot afford to invest heavily in policing their portfolio, and for consumers, who have a better guarantee of the origin of their goods.

Posted by Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

Omega Engineering argued that Omega SA had no right to oppose its application to register OMEGA in respect of certain goods since it had expressly agreed not to do so under a co-existence agreement between the two parties. Omega SA argued, amongst other things, that the co-existence agreement was irrelevant to an objection made on relative grounds. Mr Justice Arnold disagreed stating that it would be unjust if a party who had consented to the registration of a trade mark could successfully oppose the application to register it.

This has to be the right decision otherwise the usefulness of co-existence agreements would be severely threatened.

Posted by Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

Heated rows between pop artists are often as frequent and as transient as their hits. The ownership of the groups’ names and the right to perform under a particular trade mark often provide the backdrop to disharmony. Just ask Liberty X, The Nolan Sisters or The Rubettes among others.

And so the ever changing face of the pop group Sugababes has perhaps unsurprisingly led to potential disputes about the right to use the brand SUGABABES. The word on the street is that former band member Keisha Buchanan, who was a founder member of the group, appears to be on the verge of suing the current line up of the ‘babes to prevent their use of the brand going forwards. Meanwhile another founder (and former) member Mutya Buena has filed a Community Trade Mark application for the SUGABABES trade mark.

Does this mean we are about to see a reunion of the founder members of one of the UK’s most successful girl bands?

The potential disputes which may follow between the current line up and the original group members demonstrate the clear advantages of having a single consistent entity owning the registered and unregistered rights to a brand, particularly where, as in the case of a pop group, the nature and personnel of the external face of the entity changes frequently. Question is though, which girl will be first to push the button?

Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com