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Intellectual Property Matters – July 2015

Intellectual Property Matters – July 2015

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Can a property development be trade marked?

The High Court has rejected an appeal against the refusal of an application for registration […]

The High Court has rejected an appeal against the refusal of an application for registration of the name CANARY WHARF as a trade mark. The application was made by Canary Wharf Group plc (the Group) in respect of a variety of goods and services, including property development and maintenance services, car parking services, building and landscape design services and security services.

Place names, designating the geographical origins or other characteristics of goods and services, are generally not capable of registration as trade marks in the UK unless the name becomes distinctive through use. In this case, the Group argued that CANARY WHARF was the name of a private building development, rather than a place name, and was analogous to other landmark buildings whose names had been registered as trade marks, such as The Shard.

The Hearing Officer disagreed, finding that there were currently 35 buildings in the Canary Wharf area and that the Group was not the freehold owner of all of them. More interestingly, the Hearing Officer also noted that the Group had delayed filing the application for nearly 30 years from the date that development started on the Canary Wharf site, which had (in the Hearing Officer’s words) “allowed some thirty years of uncontrolled media coverage to, at the very least, render the factual basis of ownership/control obscure as far as the relevant consumer or wider public is concerned”.

On appeal [1], the Group argued that the approach of the Hearing Officer was flawed and also that the mark had acquired distinctiveness. The High Court disagreed, finding that the Hearing Officer had been correct to conclude that the sign CANARY WHARF was likely to be taken by consumers as indicating the geographical origin of the services in question, or to at least as being capable of doing so. On acquired distinctiveness, the High Court found that the Group’s use of the mark in the course of running the estate was limited to services provided within the confines of the estate and the only use outside of that area was for the promotion of the Canary Wharf shopping centre. Since “retail services” was not among the classes of services in respect of which registration was sought, this was found to be irrelevant.

This case is a clear reminder of the need for property developers to file trade mark applications at the time of development (or as soon as possible thereafter). It is fair to suggest that once a Tube stop has been named after your development, it is probably too late to get the trade mark registered!

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[1] Canary Wharf Group Plc v The Comptroller General of Patents, Designs and Trade Marks [2015] EWHC 1588 (Ch), 8 June 2015.

Controversy in the dentist’s waiting room

The German Federal Court has delivered a judgment on whether the playing of background music in […]

The German Federal Court has delivered a judgment on whether the playing of background music in the dentist’s waiting room was a “communication to the public” for the purposes of the German legislation implementing the Copyright Directive [1]. Article 3(1) of the Copyright Directive states: “Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.”

In the case, the dentist had cancelled his licence agreement with the relevant collecting society for music rights, which had previously granted him the right to play background music to customers in his waiting room. The collecting society maintained that he needed a licence to continue playing music in this way, and subsequently brought proceedings. The German Court gave judgment for the dentist, applying a 2012 decision of the Court of Justice of the European Union (CJEU) in doing so [1]. The case before the CJEU concerned an essentially identical question to that before the German Court and it was found that there was no communication to the public for the purposes of Article 3(1) of the Copyright Directive.

The CJEU came to this conclusion on the basis that: (1) patients in a dentist’s waiting room were a very specific group of persons and not “persons in general”; (2) their number was insignificant; (3) the broadcast would not affect the number of patients visiting that dentist – the quality/value for money of the dental treatment rather than the background music is, after all, the key driver here – and (4) the broadcasting was not a part of the dental treatment.

Whilst the German decision is consistent with EU law, EU law can be difficult to follow in this area. The “Italian dentist” case is often contrasted with the “Irish hotel” case [2], where, put very simply, the broadcasting of music in a hotel bedroom was held to be a communication to the public. The CJEU was able to distinguish the two cases, but given the fine margins, it is not surprising that cases concerning the meaning of ‘communication to the public’ continue to come before the courts.

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[1] Case C-135/10, Società Consortile Fonografica v Marco del Corso
[2] Case C-162/10, Phonographic Performance (Ireland) Ltd v Ireland and another

Copyright and the right of distribution

The Court of Justice of the European Union has delivered a ruling [1] in respect […]

The Court of Justice of the European Union has delivered a ruling [1] in respect of the distribution right set out in Article 4(1) of the Copyright Directive [2]. Article 4(1) states: “Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise.”

The claimant owned the copyright in various chair designs. The first defendant advertised furniture similar to the designs on its website, in various German newspapers and magazines and in an advertising brochure. They offered to sell the furniture from Italy. The claimant instituted copyright infringement proceedings (in Germany, the furniture constituted works of art and, as such, was protected by copyright) and the case worked its way up to the Court of Justice.

The European Court ruled that Article 4(1) allowed the copyright holder to prevent an offer for sale or a targeted advertisement of an original or copy of a copyright work, even if the advertisement did not give rise to the purchase of the protected work by an EU buyer, in so far as the advertisement invited consumers in the Member State in which the work was protected to buy it.

The Court reasoned that a distribution to the public was characterised by a series of acts, of which the offer for sale of the copyright-protected work formed part. The distribution right in Article 4(1) would be infringed where a trader, through its website, offered copyright-protected goods for sale to consumers in the Member State where the works were protected. It was immaterial that there might not later be a sale.

Note that no jurisdictional issues were raised. The fact of manufacture in Italy did not preclude action being taken in Germany, since the advertising was aimed at the German market and the designs were protected in Germany.

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[1] Case C-516/13 Dimensione Direct Sales Srl and another v Knoll International SpA
[2] Directive 2001/29/EC

Have you registered a .sucks domain?

The number of generic Top-Level Domains (gTLDs) is growing all the time. Most come into […]

The number of generic Top-Level Domains (gTLDs) is growing all the time. Most come into being without much of a fanfare, however the same cannot be said of the .sucks domain name which entered the general availability stage in June.

The sunrise period opened on 30 March 2015, giving brand owners who had registered their trade mark with the Trademark Clearinghouse the first opportunity to purchase the domain name before it was made available to the public. This would be a defensive purchase, with the aim of preventing hostile third parties from using the brand name followed by the word “sucks”. Notwithstanding this, reports suggest that many UK big brand owners did not purchase the domain name during the sunrise period. Possibly they were deterred by the cost – €2,499 per domain; possibly they were unaware of the new gTLD. Also, possibly, they considered the work “sucks” to be an Americanism, not much used in the UK – which is probably misguided, not least as the bigger brands may have a resonance among US consumers. A further possibility for the lack of uptake might be that what attention there has been on gTLDs this year has been on the new .porn domain, with reports of female celebrities – including the perennially savvy Taylor Swift – busily buying up the domains, leaving .sucks a little in the shadows.

A more likely reason may be that brand owners believe that protest sites have become a fact of life – and moreover that consumers have grown used to them and aren’t that interested, preferring instead to air their views on social media platforms or review sites. There is no real likelihood of confusion arising between the brand owner’s site and a protest site.

A refusal or failure to register does not leave the brand owner without redress. The Uniform Dispute Resolution Policy (UDRP) and the Uniform Rapid Suspension System (URS) offer expedited administrative proceedings for brand owners affected by an abusive registration of a domain name.

Illegal downloads – a novel approach from Ireland

In a ground-breaking ruling [1], the Irish Commercial Court has granted an injunction against an […]

In a ground-breaking ruling [1], the Irish Commercial Court has granted an injunction against an Internet Service Provider (ISP), UPC Communications, requiring it to take measures against its subscribers. The Court has ordered a “graduated-response system” (GRS) to tackle illegal downloads. This is believed to be the first time a court anywhere in the world has ordered a common law GRS.

GRS is an anti-piracy enforcement mechanism by which an ISP agrees, or is obliged, to monitor internet traffic or users to detect copyright-infringing downloads. Typically, a first infringement will result in a warning, a second will result in a sterner warning and a third may result in the household’s Internet access being switched off. Under a GRS order the ISP is obliged to write letters to subscribers following complaints notified to it by the rights holder.

Some jurisdictions, including the UK, provide for GRS in their national legislation. In this case, the Court order was based on EU law, specifically the Copyright Directive [2], which is transposed into Ireland’s national law by the Copyright and Related Rights Act 2000. The approach of the Irish Court could be replicated in any of the EU Member States, which could see more applications by copyright owners, particularly in the media and entertainment industry (in this case Sony, Universal and Warner) for a GRS order against ISPs, as opposed to more straightforward blocking orders.

Final details of the order are not currently known but the costs of implementing it are almost certain to be substantial and, although this will be shared between the rights owners and the IPS, the bulk of it is likely to be borne by the ISP. Ultimately of course, the ISP will have to look to recoup this outlay and no doubt the subscriber can expect to bear the brunt of this. Also to be elaborated in the final order is the cap on the number of complaints that rights holders may bring on a monthly basis to the ISP – in the discussions before the Court, a figure of 2,500 notifications per month was discussed, reduced from an initial suggestion of 5,000. Whilst this is still a lot of notifications, it is, according to the evidence, substantially less than the number of illegal Internet downloads taking place in Ireland on a monthly basis.

Another aspect of the order that needs to be addressed is how the respective rights of copyright owners, ISPs and Internet users are to be balanced – in today’s world, disconnection from the Internet is a very draconian sanction and not one that should be ordered lightly.

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[1] Sony Music Entertainment (Ireland) Ltd and others v UPC Communications Ireland Limited No 1 [2015] IEHC 317.
[2] 2001/29/EC

Likelihood of confusion in Arabic

The Court of Justice of the European Union (CJEU) has delivered a ruling on whether […]

The Court of Justice of the European Union (CJEU) has delivered a ruling on whether the meaning and pronunciation of words in non-Latin alphabets should be taken into consideration when assessing similarity between marks.

The case in question [1] concerned an opposition brought against the registration of a figurative Community trade mark (CTM) containing the Arabic word “el baina”, meaning “sight”. The opposition was brought on the basis of two earlier CTM registrations, one containing the Arabic word “el benna” (“taste”) and the other “el bnina” (“softness”). All the marks were in respect of various foodstuffs and beverages. Whilst “el benna” and “el bnina” are pronounced very differently from “el baina”, visually they are similar.

The Belgian court considered that the relevant public for the purposes of determining a likelihood of confusion was Muslim consumers of Arab origin in the EU, who ate halal food products and who possessed a basic knowledge of Arabic.

The CJEU ruled that where the relevant public had a basic knowledge of Arabic, the meaning and pronunciation of the different words, in Arabic, should be taken into account, as otherwise the court would be unable to fully take into account the overall impression of the competing marks on the relevant public.

This should be a very non-controversial decision but does demonstrate the application of established principles in a slightly unusual context.

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[1] Case C-147/14, Loutfi Management Propriété intellectuelle SARL v AMJ Meat Products and another

Morally questionable trade marks

National and regional trade mark laws will invariably stipulate that a trade mark cannot be […]

National and regional trade mark laws will invariably stipulate that a trade mark cannot be registered if its registration would upset accepted standards of morality. This may be phrased in different ways and is often linked to a broader “public policy” exception. Article 3(1)(f) of the Trade Marks Directive [1], for example, prohibits registration of a trade mark which is contrary to public policy or to accepted principles of morality.

It is reported that an application in Australia for registration of the mark MH370 – the Malaysian Airlines flight that disappeared last year – has recently been refused on grounds of morality. At the same time applications for registration of the mark JE SUIS CHARLIE as a Community trade mark have been withdrawn, no doubt on the basis that moral objections would be raised.

A quick online search will reveal numerous instances of marks that have been refused registration on moral grounds. A leading case in this area is the decision of the Grand Board of Appeal for the Office for Harmonisation in the Internal Market (OHIM) concerning the application for registration of the mark SCREW YOU [2]. In an interesting judgment which considered among other things, the history of sexual expletives in swearing and the distinction between the meanings of the expletives “screw you” and “fuck you”, the Board’s opinion was that the mark was unquestionably a profanity. However, whilst its registration would not be permitted in respect of run of the mill goods it was acceptable in respect of sex toys and goods sold in sex shops.

The judgment made some attempt to establish where the line should be drawn – mild sexual innuendo and mildly pejorative terms might be registered, but obvious racial and cultural slurs will not be permissible. Marks glorifying terrorism or which would offend the religious sensitivities of a substantial group of the population should not be registered.

Our man on the Clapham omnibus for these purposes is a reasonable person with normal levels of sensitivity and tolerance.

Moral offensiveness as an absolute ground for refusal of registration raises the obvious difficulty that different societies (and different people within the same society) may not share the same view as to what is moral – and that perceptions change over time. Comments (including from the judiciary) made in the 1950s about homosexuality, for example, read as extremely shocking when seen today. With fewer people (at least in the UK) professing allegiance to a faith, it is harder for a moral code to be imposed from above – consumers make their own decisions.

Levels of sensitivity also change. Many UK and EU “consumers” seem quite happy to disparage one another on social media, suggesting a certain robustness among the population, while at the same time more conservative commentators note with dismay the increasing frequency with which complainants allege that their sensibilities have been outraged by something they have read in the paper or seen on the television, which suggests the opposite.

Set against moral questionability, familiar problems like “likelihood of confusion” may seem much easier to determine!

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[1] Directive 2008/95/EC
[2] Case R 495/2005-G

Trade marks as metadata

A Canadian court has ruled [1] on the use of trade marks in metadata and […]

A Canadian court has ruled [1] on the use of trade marks in metadata and also considered whether the use of hashtags – familiar to any user of social media – may constitute trade mark infringement.

Metadata is data that describes other data. Web pages use metadata to allow browsers to enhance the user’s experience. Clever use of metadata can draw traffic to a website, critical in today’s world for any business with an online presence.

The claimant, Red Label, is a travel business offering online travel information and services via its website. It has three registered trade marks: redtag.ca; redtag.ca Vacations & Design; and Shop.Compare.Payless!! Guaranteed & Design. The defendant, 411 Travel Buys, is an online travel agency offering information to customers online and arranging bookings for customers by agents over the telephone.

The metadata for 411 Travel Buys’ website included the terms “red tag vacations” and “shop, compare & pay less”. Customers visiting the website could not see this data. Nonetheless Red Label became aware of it and instituted proceedings for copyright and trade mark infringement.

The claim was unsuccessful. The Federal Court ruled that the use of a competitor’s trade mark or trade name as metadata did not, of itself, create a likelihood of confusion. The consumer was still free to choose among the search results and purchase goods and services from either of them. The use of metadata could affect search rankings but it did not affect the consumer’s choice. In order for trade mark infringement to exist there needs to be a confusion as to the source of the person or entity providing the goods or services in question – which there was not in this case.

Key to the Court’s conclusion was that the metadata was not visible. A different result might have been reached, the Court said, if Red Label’s marks had been visibly hashtagged – e.g. #RedLabel. The use of such a hashtag would be visible to consumers, thereby creating at least the possibility of a likelihood of confusion.

Hashtags are most readily associated with Twitter. Twitter’s policy on trade marks is that “using a company or business name, logo, or other trademark-protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation may be considered a trademark policy violation”. Whilst a useful warning to Twitter users, this does not really add anything to the state of the law. The test, at least in the UK and EU, is whether the use of a hashtag creates a likelihood of confusion.

No doubt it is only a matter of time before we see a case on whether the use of a hashtag is trade mark infringement. In the meantime, businesses should, if resources permit, monitor social media platforms like Twitter to see if their hashtags are being used by unwelcome third parties. They might also consider registering hashtags as trade marks.

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[1] Red Label Vacations Inc (redtag.ca) v 411 Travel Buys Limited (411travelbuys.ca) 1015 FC 19

Contacts

Alan Harper, Senior Associate, Intellectual Property & Trade Marks at Walker Morris LLP

Alan Harper
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