2012
The Concept of Trade
Mark Series: Origin
and Implications for
the Scope of Protection
Ruchika Sidhwani
Stockholm University
[August 5, 2012]
TABLE OF CONTENTS
ABSTRACT ............................................................................................................................... 3
TABLE OF ABBREVIATIONS ................................................................................................ 4
TABLE OF CASES ................................................................................................................... 5
OBJECTIVE............................................................................................................................. 12
STRUCTURE........................................................................................................................... 12
DELIMITATION ..................................................................................................................... 13
METHODOLOGICAL APPROACH, METHOD AND MATERIAL.................................... 13
THE PROBLEM ...................................................................................................................... 13
1.
SERIES OF MARKS ...................................................................................................... 15
1.1.
What is a series or family of marks? ......................................................................... 15
1.2.
Features or characteristics of a series or family of marks ......................................... 17
1.3.
Advantages of a legally recognized series or family of marks .................................. 21
1.4. Can the common element in the series of marks be translated in different languages
and yet be construed as a series of marks? ........................................................................... 23
2.
3.
THE CONCEPT OF TRADE MARK SERIES AND ASSOCIATED MARKS ........... 24
2.1.
The concept of trade mark series and associated marks in the UK ........................... 25
2.2.
The concept of trade mark series and associated trade marks in India...................... 27
2.3.
The concept of family of marks in US ...................................................................... 30
2.4.
The concept of family of marks in EU ...................................................................... 34
DEVELOPMENTS OF CASE LAW ON TRADE MARK SERIES IN THE COURT
OF JUSTICE ................................................................................................................... 36
3.1.
Case C- 234/06 P, [2007] ECR I-7333- BRIDGE/BAINBRIDGE ........................... 37
3.2.
Case C-552/09 P, unpublished – KINDER/ TiMi KiNDERJOGHURT ................... 40
3.3. Case T-214/04, [2006] ECR II-239- POLO/ ROYAL COUNTRY OF BERKSHIRE
POLO CLUB ........................................................................................................................ 41
3.4.
Case T-287/06, [2008] ECR II-3817 – TORRES/TORRE ALBENIZ ..................... 42
1
3.5. Case T-476/09 to T-483/09, unpublished – BRICO CENTER/BRICOCENTER
ITALIA ................................................................................................................................. 43
3.6.
4.
5.
6.
WHERE DO WE STAND IN THE EUROPEAN UNION? .......................................... 45
4.1.
Germany .................................................................................................................... 47
4.2.
Italy ............................................................................................................................ 50
4.3.
Poland ........................................................................................................................ 50
4.4.
France ........................................................................................................................ 51
4.5.
The UK ...................................................................................................................... 51
IT HAS SURE TAKEN TIME BUT THEY HAVE THE RIGHTS .............................. 52
5.1.
MC DONALD’S FOOD FACT ................................................................................ 52
5.2.
TOY STORY ............................................................................................................. 55
5.3.
CITI GROUPed ......................................................................................................... 55
SECURING THE FUTURE ........................................................................................... 57
6.1.
7.
Cases pending before the Court of Justice and General Court .................................. 44
Use and recognition by public ................................................................................... 57
6.1.1.
Look before you leap − Filing trade mark application...................................... 58
6.1.2.
Use it or Lose it- Trade Marks must be put to use ............................................. 60
6.1.3.
Display and advertise the marks together .......................................................... 61
6.1.4.
Genuine use ........................................................................................................ 62
6.1.5.
Modify in accordance to the fashion trend......................................................... 65
6.2.
Distinctive and dominant common element .............................................................. 66
6.3.
Placement of the common element as a prefix or suffix ........................................... 69
6.4.
Reputation of the earlier mark and common element................................................ 71
6.5.
Try and try until you succeed - A Kind(er) story ...................................................... 74
DON’T MESS WITH MY FAMILY ............................................................................. 76
APPENDIX .............................................................................................................................. 77
BIBLIOGRAPHY .................................................................................................................... 84
2
ABSTRACT
The purpose of the thesis is to discuss the concept of trade mark series, the origin and implication for the scope of protection in United Kingdom, India, United States and European Union.
While the case laws of the other relevant countries clearly state and define the scope of protection, the BRIDGE/BAINBRIDGE decision of the Court of Justice of the European Union
has led to mixed reactions. The concept is seen to be clear in some countries like Poland, Italy
and United Kingdom while the German Courts are unsure of the implications on its national
law. After analyzing the cases, discussions and strategies adopted by companies, the thesis
concluded with some measures to secure the legal recognition of the registration of a series of
marks.
3
TABLE OF ABBREVIATIONS
AIR
All India Reporter
CCPA
Court of Customs and Patent Appeals (United States)
CTMR
Community Trade Mark Regulation (European Union)
EC
European Commission
EIPR
European Intellectual Property Review
EU
European Union
GLR
Gujarat Law Report
IPAB
Intellectual Property Appellate Board (India)
IPO
Intellectual Property Office (United Kingdom)
IR
Implementing Regulation, Commission Regulation (EC) No.
1041/2005 (European Union)
INTA
International Trademark Association
OHIM
Office for Harmonization for the Internal Market (European Union)
PPO
Polish Patent Office
RPC
Reports of Patent, Design and Trade Mark Cases (United Kingdom)
SC
Supreme Court (India)
TTAB
Trademark Trial and Appellate Board (United States)
UK
United Kingdom
US
United States of America
USPQ
United States Patents Quarterly
4
TABLE OF CASES
COURT OF JUSTICE OF THE EUROPEAN UNION
Case C-251/95, SABEL BV v Puma AG, [1997] ECR I-6191
Case C-39/97, Canon Kabushiki Kaisha and Metro-Goldwyn-Mayer Inc., [1998] ECR I-550,
Joined Cases C-108/97 and C-109/97, Windsurfing Chiemsee Produktions- und Vertriebs
GmbH v Boots und Segelzubehör Walter Huber and Franz Attenberger, [1999] ECR I-2779
Case C-342/97, Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV, [1999] ECR I3819
Case C-40/01, Ansul BV v Ajax Brandbeveiliging BV, [2003] ECR I-2439
Case C-259/02, La Mer Technology v Laboratoires Goemar SA, [2004] ECR I-1159
Case C-136/02 P, Mag Instrument Inc. GmbH v OHIM, [2004] ECR I-9165
Case C-192/03 P, Alcon v OHIM, [2004] ECR I-8993
Case C-416/04 P, Sunrider v OHIM, [2006] ECR I-4237
Case C-206/04 P, Mülhens v OHIM, [2006] ECR I- 2717
Case C-171/06 P, T.I.M.E ART v OHIM [2007] ECR I-41
Case C-361/04 P, Ruiz- Picasso and Others v OHIM, [2006] ECR I-643
Case C-108/05, Bovemij Verzekeringen NV v Benelux Merkenbureau, [2006] ECR I-7605
Case C-334/05 P OHIM v Shaker, [2007] ECR I-4529
Case C-234/06 P, Il Ponte Finanziaria v OHIM and F.M.G Textiles, [2007] ECR I-7333
Case C-16/06 P, Les Editions Albert Rene v OHIM and Orange A/S, [2008] ECR I-10053
Case C-488/06 P, L & D SA v OHIM and Julius Samann Limited, [2008] ECR I-5725
Case C-317/10 P, Union Investment Privatfonds v Unicredito Italiano SpA and OHIM, unpublished
GENERAL COURT (OF THE EUROPEAN UNION)
Case T-32/00, Messe Munchen v OHIM, [2000] ETMR 135
Case T-388/00, Institut fur Lernsysteme v OHIM and Educational Services, [2002] ECR II4301
Case T-6/01, Matratzen Concord v OHIM and Hukla Germany, [2002] ECR II-4335
5
Case T-39/01, Kabushiki Kaisha Fernandes v OHIM and Harrison, [2002] ECR II-5233
Case T-156/01, Laboratorios RTB v OHIM and Giorgio Beverly Hills, [2003] ECR-II-2789
Case T-162/01, Laboratorios RTB v OHIM and Giorgio Beverly Hills, [2003] ECR II-2821
Case T-224/01 Durferrit GmbH v OHIM and Kolene Corporation, [2003] ECR 1589
Case T-311/01, Les Editions Albert Rene v OHIM and Trucco sistemi di telecommunicazione
SpA, [2003] ECR II- 4625
Joined Cases T-182/02 and T-183/02, El Corte Ingles v OHIM and Gonzalez Cabelloand
Iberia Líneas Aereas de Espana, [2004] II-965
Case T-126/03 Reckitt Benckiser (España), SL v OHIM and Aladin Gesellschaft für
innovative mikrobiologische Systeme GmbH, [2005] ECR II- 2861
Case T-147/03 Devinlec Development Innovations Leclerc SA v OHIM, [2006] ECR II-11
Case T-194/03, Il Ponte Finanziaria v OHIM and F.M.G Textiles, [2006] ECR II-445
Case T-336/03, Les Editions Albert Rene v OHIM and Orange A/S, [2005] ECR II-4667
Case T-420/03 El Corte Ingles SA v OHIM and Jose Matias Abril Sanchez and Pedro Ricote
Suagar, [2008] ECR II-837
Case T-67/04 Spa Monopole v OHIM and Spa Finders Travel Arrangements, [2005] ECR II1825
Case T-214/04, The Royal Country Of Berkshire Polo Club Limited v OHIM and The Polo/Lauren Co. [2006] ECR II-239
Case T-256/04 Mundipharma v OHIM and Altana Pharma, [2007] ECR II-449
Case T-277/04 Vitakraft-Werke Wührmann v OHIM and Johnson’s Veterinary Products [2006] ECR II-2211
Joined Cases T-333/04 and T-334/04, House of Donuts International v OHIM, [2007] ETMR
52
Case T-137/05 La Perla v OHIM and Worldgem Brands, [2007] ECR II-47
Case T-158/05 Trek Bicycle v OHIM and Audi, [2007] ECR II-49
Case T-181/05, Citigroup, Inc., Citibank, NA v OHIM and Citi SL, [2008) ECR II-669
Case T-364/05 Saint-Gobain Pam SA v OHIM and Propamsa SA, [2007] ECR II-757
Case T-146/06 Sanofi-Aventis v OHIM and GD Searle, [2008] ECR II-17
Case T-254/06 Radio Regenbogen Hörfunk in Baden v OHIM, [2008] ECR II-80
6
Case T-287/06, Miguel Torres SA V OHIM and Bodegas Penalba Lopez SL, [2008] ECR II3817
Joined Cases T-303/06 and T-337/06, Union Investment Privatfonds v OHIM and Unicredito
Italiano, [2010] ECR II-62
Case T-281/07, ecoblue AG v OHIM and Banco Bilbao Vizcaya Argentaria, SA,
[2008] ECR II-00254
Case T-140/08, Ferrero SpA v OHIM and Tirol Milch Reg. Gen.Mbh Innsbruck, [2009] ECR
II-3941
Case T-580/08, PJ Hungary Szolgáltató Kft v OHIM and Pepekillo, SL, unpublished
Case T-581/08, Perusahaan Otomobil Nasional v OHIM and Proton Motor Fuel Cell
Case T-301/09, IG Communications v OHIM and Citigroup and Citibank
Case T- 346/09, Winzer Pharma v. OHIM and Alcon
Case T-476/09 to T-483/09, ATB Norte, SL v OHIM, unpublished
Case T- 238/10, Stephanie Scatizza v OHIM and Manuel Jacinto, unpublished
Case T-562/11, Symbio Gruppe v OHIM
Case T- 648/11, Smart Technologies ULC v OHIM
GERMANY
I ZB 48/05
I ZR 84/09
I ZR 206/10
INDIA
AIR 1960 SC 142, Corn Products Refining Company v Shangrila Food Products Limited
1972 AIR 1359, Parle Products Private Limited v J. P. & Company
[1993]1 GLR 325, Ciba-Geigy v Torrent Laboratories
1996 PTC 704 (Del), Rajeev Malhotra v Amit Home Appliances
FAO (O) No. 138 of 1996 & C.M.No. 842 of 2001, M/s. Amar Singh Chawal Wala v M/S.
Shree Vardhman Rice & General Mills
7
2003(5)BomCR 295, 2004(28) PTC 193(Bom), Pidilite Industries Limited v S.M. Associates
and Others
W.P.(C) 9478/2006 & CM 7072/2006, Glaxo Group Limited v Union of India, Voltas Limited and Others.
CS(OS) No.2176/2007, Modi-Mundipharma Private Limited v Preet International
2008 (2) BomCR 28, 2008 (110) BomLR 307, M/s D.R. Cosmetics Private Limited v J. R.
Industries
FAO(OS) 222/2009, M/s Gufic Ltd. & Another v Clinique Laboratories
POLAND
Case no. Sp. 476/11
Case no. Sp. 479/11
Case no. Sp. 500/11
VI SA/WA 41/11
SINGAPORE
[2004] SGCA 50 (Singapore Court of Appeal) McDonald’s Corporation v Future Enterprises
Private Limited
UNITED KINGDOM
[1942] 59 RPC 127, Coca-Cola v Pepsi-Cola
[1947] 64 RPC 76, Beck Koller & Company Application
[1954] 71 RPC 23, Electrolux Ltd v Electrix Ltd
[1958] RPC 425, British Lead Mills
[1966] RPC 152 Accutron Trade mark
[1968] RPC 66 Flowstacka Trade mark.
[1969] RPC 179 Consarc
[1973] RPC 739, Frigiking Trade mark
[1979] RPC 330 Semigres
[1979] FSR 310, Huggars Trade mark.
8
[1979] RPC 469, Unimax Trade mark
[2003] RPC (25) 477, Anheuser-Busch v Budjeovicky Budvar
BL O/068/03, LOGICA PLC
BL O/190/03, EASE-E: FINANCE
BL O/030/06, NIRVANA
[2007] RPC 15, Special Effects Ltd v. L'oréal SA
UNITED STATES
134 F.2d 429, 56 USPQ. 400 (7th Cir. 1943), Quaker Oats Company v. General Mills, Inc.
288 F.2d 924 (CCPA 1961), U.S. Plywood Corporation v Koveron Korporation
299 F.2d 55, 132 USPQ 381 (9th Cir. 1962), Creamette Company v Merlino
317 F2d 397, 399, 137 USPQ 551, 50 CCPA 1518 (CCPA 1963), Motorola, Inc. v. Griffiths
Electronics, Inc.
(1965) 52 CCPA 978, 341 F2d, Polaroid Corporation v Richard Manufacturing Company
(1968 TTAB) 158 USPQ, Daltronics Inc. v. H.L.Dalis Inc
57 CCPA. 865, 419 F.2d 1332 (CCPA. 1970), Procter & Gamble Company v Conway
(1970 TTAB) 166 USPQ, Polaroid Corporation v American Screen Process Equipment Company
166 USPQ 218, 219 (TTAB 1970), In re Mobay Chemical Company.
166 USPQ. 151 (TTAB 1970), Polaroid Corporation v. American Screen Process Equipment
Company
(1973 TTAB) 177 USPQ, Consolidated Foods Corp v Sherwood Industries Inc.
474 F2d 1403, 1406, 177 USPQ 268, 270 (CCPA 1973), AMF, Inc. v. American Leisure
Products Inc.
(1975 TTAB) 188 USPQ Aloe Creme Laboratories Inc. v Aloe 99 Inc.
(1975 TTAB) 189 USPQ 99, Cambridge Filter Corporation v. Servodyne Corporation
199 USPQ 437 (D. Or. 1978), Dictaphone Corporation v. Dictamatic Corporation.
746 F2d 798, 800, 223 USPQ 977, 978 (Fed. Circuit 1984), International Diagnostics Technology, Inc. v. Miles Laboratories, Inc.
9
649 F. Supp. 1268, 1 USPQ.2d 1761 (SDNY 1986) McDonald's Corporation v. McBagels,
Inc.
695 F. Supp. 198, 8 USPQ.2d 1633 (D. Md. 1988) Quality Inns International v. McDonald's
Corporation
6 USPQ.2d 1215 (TTAB 1988), Marion Laboratories v. Biochemicals Diagnostics.
932 F2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991), J & J Snack Foods Corporation v McDonald’s Corporation
975 F.2d, (7th Cir. 1992), Spraying Systems Company v. Delavan Inc.
24 USPQ2d 1048 (TTAB 1992). Baroid Drilling Fluids Inc. v Sun Drilling Production
235 F.3d 165, 173 (3d Cir. 2000), Rose Art Industries, Inc. v. Swanson
Opposition No. 91154392 (November 23, 2004), Virgin Enterprises Limited v. Kay Guitar
Company
90 USPQ2d 1644, 1645 (TTAB 2009) In re Cynosure, Inc.
2009 WL 959775 (SDNY April 8, 2009), Victoria’s Secret Stores Brand Management Inc. v.
Sexy Hair Concepts LLC
Case No. 10-1369 (Fed. Cir., March 28, 2011), Citigroup Inc. v Capital City Bank Group Inc.
WIPO ARBITRATION AND MEDIATION CENTER
D2011-0612, Geoffrey LLC v The R Us Group Mohiuddin Tops
10
INTRODUCTION
On December 20, 1993, the European Council issued the Council Regulation (EC) No 40/94
on the Community Trade Mark (presently No. 207/2009, hereinafter referred to as the
‘Community Trade Mark Regulation’ or ‘CTMR’) after more than thirty years of discussion and five years after enacting the Council Directive No. 89/104/EEC, to approximate the
laws of the Member States relating to trade marks (presently, No. 2008/95/EC hereinafter
referred to as the ‘Trade Mark Directive’). 1 The Community Trade Mark Regulation was
binding in its entirety and directly applicable in all Member States 2 on March 14, 1994. 3 The
Community Trade mark Regulation has direct effect in all the Member States and influences
the national trade mark law in the Member States. The reason for the latter is that the Regulation has many provisions literally in common with the Directive. In the event of such identical
provisions, these must be interpreted in the same way as confirmed in the ruling from the
Court of Justice of the European Union (hereinafter referred to as the ‘Court of Justice’)
dated October 7, 2004 in Mag Instrument v Office of Harmonization for the Internal Market
(hereinafter referred to as ‘OHIM’). 4
Since the implementation of the Trade Mark Directive across the European Union (hereinafter
referred to as ‘EU’) and the introduction of the Community Trade Mark, there has been a substantial and growing jurisprudence relating to trade mark from the Court of Justice. Much of
this jurisprudence has been concerned with establishing how the terms of the Trade Mark Directive and the Community Trade Mark Regulation should be interpreted and applied. 5
In Il Ponte Finanziaria v OHIM and F.M.G Textiles often referred to as the
BRIDGE/BAINBRIDGE decision, 6 the issue before the Court of Justice was to assess whether the General Court was correct to judge that the existence of a family or series of marks 7
could be taken into account as possibly increasing the likelihood of confusion with it of a
trade mark presented for registration and containing an element common to the marks in the
family or series, only if the latter were actually used on the market – whereas likelihood of
confusion with an individual trade mark which has not yet been put to use on the market may
be assessed in the abstract. 8 The concept and significance of the existence of a family of
marks had not yet been explored in any depth by the EU judicature, other than in the
BRIDGE/BAINBRIDGE decision, but the concept was familiar to trade mark lawyers around
the world. 9 The General Court had also decided cases involving trade mark series, i.e. in Les
1
European Trade mark Litigation Handbook, Isabel Davies, Sweet & Maxwell at page 34.
Article 288 of the Treaty of the Functioning of the European Union.
3
Community Trade mark, OHIM, available at http://europa.eu/legislation_summaries/other/l26022a_en.htm.
Last visited on July 20, 2012.
4
Case C-136/02P, Mag Instrument Inc. GmbH v OHIM, [2004] ECR I-9165.
5
Intellectual Property Law: Text, Cases and Materials, Tanya Aplin and Jennifer Davis, First edition Oxford
University Press at page 227.
6
Case C-234/06P, Il Ponte Finanziaria v OHIM and F.M.G Textiles, [2007] ECR I-7333 at para. 61.
7
For the purpose of this thesis, the word ‘family’ marks are used as synonym to series marks. In United Kingdom, the concept is known as trade mark series and associated marks. In United States, the concept is known as
family marks.
8
Opinion of Advocate General Sharpston delivered on 29 March 2007 in Case C-234/06 P,
BRIDGE/BAINBRIDGE, at para. 95.
9
Opinion of Advocate General Sharpston op. cit., at para. 96.
2
11
Editions Albert Rene v OHIM and Orange A/S 10 and The Royal Country Of Berkshire Polo
Club Limited v OHIM and The Polo/Lauren Co. before the BRIDGE/BAINBRIDGE decision. 11
OBJECTIVE
The purpose of the thesis is to discuss the concept of trade mark series, the origin and implication for the scope of protection. Since the concept is not defined in the Community Trade
Mark Regulation, the thesis will initially give the reader a comprehensive understanding of
the concept of the trade mark series. Further, it discusses the situation in United Kingdom
(hereinafter referred to as ‘UK’), India, United States of America (hereinafter referred to as
‘US’) and the EU. It is followed by the analysis and discussion of the
BRIDGE/BAINBRIDGE decision of the Court of Justice and the effect it has had on the other
Courts. After evaluating the cases and discussions, the thesis concluded with measures to secure the registration of a series of marks.
STRUCTURE
The structure of the thesis is divided into three parts:
(i)
Part One firstly explains the concept, features and advantages of a family or series of
marks. Chapter 2 discusses the concept of serial marks in UK, India, US and EU.
(ii)
Part Two discusses the cases decided by the Court of Justice and General Court. The
landmark BRIDGE/BAINBRIDGE decision laid down the two cumulative conditions
required to assess the likelihood of confusion. Thereafter, there have been several cases which decided by the General Court in view of these cumulative conditions. The
analysis, whenever appropriate, points out the shortcomings for establishing the series
of marks. The following section lists down the pending decisions of the Courts linked
to the ‘series of marks’ argument. It additionally ponders on whether the Courts in Europe have interpreted the conditions or are still unsure of the scope of protection.
(iii)
Part Three changes the perspective and includes the case study of the companies
which have established their family or series of marks and effectively enforced their
rights. It discusses why right holders have been successful or unsuccessful in gaining
legal recognition for their trade mark series and the measures the other right holders
can take to increase the possibility that a Court or OHIM recognize their series of
marks. There are some references to decided cases to establish some general observations and comments on the use and public awareness of the right holders’ series of
marks.
10
Case T-336/03, Les Editions Albert Rene v OHIM and Orange A/S, [2005] ECR II-4667, at para. 85.
Case T-214/04 The Royal Country Of Berkshire Polo Club Limited v OHIM and The Polo/Lauren Co. [2006]
ECR II-239, at para. 44.
11
12
DELIMITATION
Due to limitations in time and space and in order to provide the reader a comprehensive analysis of the specific questions, the following delimitations have been made:
i)
The thesis mainly concentrates on the analysis of the concept of family or series of
marks and cases decided in the European Union. This is supported or assisted by
definitions in the trade mark acts and cases decided by the courts of the UK and
India. The first and third part thus, could be assumed to be general rules which apply to trade mark series whereas; the second part concentrates on the EU.
ii)
The references to the legislation shall emphasis on the Community Trade Mark
Regulation barring some exception to the national legislation in the certain circumstances in order to understand the arguments of the parties.
iii)
The discussions of judgments are limited to those that are published in English.
iv)
The word ‘series’ should not be confused with media series such as book series,
film series, television series and should be only understood as the meaning construed in the thesis.
METHODOLOGICAL APPROACH, METHOD AND MATERIAL
When analyzing the current legal situation, I have used a legal dogmatic method. As a basis
for this analysis I used legal text and comments, case law, books, articles and regulations. I
have supported my analysis based on the research, knowledge and articles. I have concentrated the research to cover EU, US, UK and India. As opposed to the former two, the latter
two define the scope of protection of trade mark series in the Trade Mark Act, 1994 and 1999
respectively. This approach helped me understand the origin and scope of protection of a
trade mark series, emerging from both, legislation and case law.
THE PROBLEM
The main approach to the thesis is to understand and analyze questions which arose in the
course of research:
(i)
What is trade mark series? What are the essential characteristics that constitute a
trade mark series?
(ii)
Should it be perceived as a series of marks by the consumer? What are the tests?
(iii)
When did the concept of trade mark series originate?
(iv)
Do the requirements/standards differ for establishing a series of trade marks from
country to country?
13
(v)
What is the standard for use of a trade mark as a series? Is there a need for each
trade mark of this series to be used individually?
(vi)
What are the test/standards for likelihood of confusion, similarity and the perception of the average consumer?
(vii)
How are the decisions of the Court of Justice interpreted by the General courts or
national courts?
(viii) Can the common element in the series of marks be translated in different languages and yet be construed as a series of marks?
(ix)
Is reputation an essential factor in establishing a series or family of marks?
(x)
What measures does the proprietor of a trade mark series undertake to obtain adequate protection for his trade mark series?
14
PART ONE
The first chapter explains the concept, features and advantages of a series of marks. The
second chapter discusses how the concept originated in UK, India, US and EU.
1.
SERIES OF MARKS
1.1. What is a series or family of marks?
The family or series of mark is not an individual trade mark form but compromises a series of
mark intended to have one specific distinctive element function as a point of recognition for
the relevant public. This way, more extensive protection can be obtained for a certain mark
element by registering and using various marks of which the common element is a part, thus
frequently after acquiring distinctiveness through use. 12
A series application consists of a number of marks which are essentially the same and where
any differences are not significant (for example the same word mark shown in CAPITALS, in
italics and in plain lower case lettering). 13 In Dualit Limited Trade Mark application, 14 the
application was for a series of 6 marks each showing the shape of a toaster in 3 dimensions. It
was considered that the marks showing toasters with rounded ends and the marks showing
toasters with angular ends would not form a series.
Series of marks can be considered as a form of word mark, in which case a specific word element recurs in all marks involved. McDonald’s has established a series of ‘Mc’ word marks.
Examples of the McDonald's family of trade marks include ‘McDONALD'S,’ McDONALD'S
HAMBURGERS,’ ‘EGG McMUFFIN,’ ‘McCHICKEN,’ ‘McDONUTS,’ ‘BIG MAC,’
‘McPIZZA,’ ‘McCAFE,’ ‘CHICKEN McNUGGETS,’ ‘McDOUBLE’ ‘CHICKEN
McBITES’ and many others.
A series trade mark may also occur in device marks, such as, in the event of logos in which
one element is the same. For example, a logo of the parent company is sometimes incorporated in a series of marks of subsidiaries that otherwise all use different logos. A number of
US Trademark Trial and Appeal Board (hereinafter referred to as ‘TTAB’) decisions have
strictly observed corporate formalities and held that both a parent and subsidiary could not
register marks that are likely to be confused. The Court of Appeals for the Federal Circuit
rejected the Patent and Trade mark Office's virtual per se rule In re Wella A.G. The U.S. subsidiary of a German parent owned U.S. trade mark registrations for WELLATONE, WELLA
STREAK, WELLASOL and WELLA with a design. The German parent filed for registration
of the mark WELLASTRATE for similar goods. The examining attorney rejected the application on the basis that the WELLASTRATE mark was likely to be confused with the subsidiary's registrations and the TTAB affirmed the denial of registration. The Court of Appeals
12
European Trademark Law: Community Trademark Law and Harmonized National Trade mark Law, Tobias
Cohen Jehoram, Constant van Nispen, Tony Huydecoper , Wolter Kluwer at pages 82-83.
13
Applications for a series of marks: UK Intellectual Property Office, available at http://www.ipo.gov.uk/protypes/pro-tm/t-law/t-notice/t-notice-feeservice.htm. Last visited on July 20, 2012.
14
[1999] RPC 304, Dualit Limited Trade Mark application.
15
vacated the TTAB's decision. Stating that the TTAB had taken an ‘unduly, unnecessarily and
improperly narrow view’, the Court held that where a family of marks connotes to consumers
only a single source of products, i.e., the Wella organization as a whole, there is no likelihood
of confusion. The Court thus, recognized that the enterprise as a whole was the relevant entity, regardless of its internal structure. 15 In practice, this still generally involves word marks.
The members of a trade mark family are commonly owned trade marks that share a prefix,
suffix, word, syllable or other feature that identifies each mark as being a member of the family. The common characteristic is called the ‘surname’ of the family, even though it is not always the last part of each of the trade marks of the family. For example, a brand owner that
uses six different marks that share the prefix “SENSE’ (i.e., SenseGloss, SensePlus, SenseRight, SenseDraft, SenseAll and SenseView) for a line of product, may establish a legally recognized family of marks. 16
Where the different marks vary only in devices which are purely descriptive of the goods for
which registration is sought, they may be considered as a series in one registration. 17 An applicant may seek to register a number of labels, say for fruit jams. While the main feature of
the trade mark remains the same, there may be variations in the description of names and/or
pictures of the respective fruits appearing on the label. In such cases, though the labels are
separate, with a common distinguishing feature, the labels will be registered as a trade mark
of series. The marks in series, while resembling each other in the material particulars, may
differ in respect of the statement of the goods or services, as to the number price, quality or
names of places, conventional design ornamentation etc. for example, ‘No. 1 quality’,
‘seconds’, ‘bleached’. It is an essential condition of registration that the differences in the
‘series marks’ should be only in respect of non-distinctive matters, such as size (8 ½’ size),
description of the goods (bleached), price, quality etc.
Whether a series of marks exists is an issue of fact based on the common formative component’s distinctiveness, the family’s use, advertising, promotion and inclusion in the party’s
other marks. 18 A plaintiff sometimes attempts to establish such a family in order to make it
easier to demonstrate the strength of its mark and show likelihood of confusion — if a family
is established, a plaintiff may rely on evidence concerning any member of the family in proving these elements. 19
The over-riding requirement is that the differences between the marks do not substantially
affect their identity. The test is not simply whether the marks in the series would be regarded
15
Control Of Trade marks By The Intellectual Property Holding Company, Pamela S. Chestek, IDEA: The Journal Of Law And Technology 2001, 41 J.L. & Tech. 1, available at
http://ipmall.org/hosted_resources/IDEA/1.Chestek01.pdf. Last visited on July 20, 2012.
16
Three Easy Steps for Creating a Brand Name Powerhouse Using a Family of Marks, Roger Bora, available at
http://trademarktitan.blogspot.se/2010/07/three-easy-steps-for-creating-brand.html. Last visited on July 20, 2012.
17
Intellectual Property Law, P. Narayanan, Sixth edition, Eastern Law House, at page 278.
18
See 235 F.3d 165, 173 (3d Cir. 2000), Rose Art Industries, Inc. v. Swanson, where the Court required a consistent overall look. Also see On Hummer and Jeep Wrangler Grilles and Recent Case Law, Lewis R. Clayton, New
York Law Journal Volume 225, No. 105 at page 1 available at http://www.law.com/ny. Last visited on July 20,
2012.
19
Lewis Clayton, On Hummer and Jeep Wrangler Grilles and Recent Case Law, ibid.
16
as confusingly similar to each other if used by unrelated undertakings. Any variation in the
non-distinctive features in the marks must leave the visual, aural and conceptual identity of
each of the trade marks substantially the same. Further, it is not enough for marks to share the
same conceptual identity if there are substantial differences in the visual or aural identities of
the marks. The matter must be assessed by reference to the likely reaction to the marks of an
average consumer of the goods/services in question. 20
1.2. Features or characteristics of a series or family of marks
The configuration of the marks should be uniform and the application of the principles relating to series of trade marks presupposes that there should be a series with a uniform structure. 21 The element that is common to the family of marks must be distinctive.
− What is the standard for use of a trade mark as a series? Is there a need for each trade
mark of this series to be used individually?
The proof of the existence of a family of marks requires not only proof of registration for
each mark, but also proof of their use. If the existence of a family of marks is proved, the reproduction in the opposed trade mark application of the common element of the family of
marks can be enough to establish a likelihood of confusion and to offset the visual and phonetic differences of the marks when taken as a whole. In the absence of a family of marks, it is
recognized that the use of sub-brands − that is marks deriving from a common root in order to
identify products belonging to different lines of goods, although with the same trade origin−
is a common practice in business and is particularly widespread in the clothing industry. 22
− Should it be perceived as a series of marks by the consumer? What are the tests?
A sufficient degree of connection for making the consumers believe that the goods come from
the same undertaking or from economically linked undertakings has been assumed, in particular, in cases of series or family trade marks. House marks or product-line identifiers are often
combined with other secondary elements in a series of marks showing common origin. The
systematic use of a basic sign in different combinations and contexts may lead the public to
disregard secondary differences, thinking that they merely indicate a new product in a product-line from the same business entity.
There is no need that some or all the signs forming the family of marks enjoy reputation in
order that the ‘root’ sign is perceived the common element as a business identifier of a certain
20
UK Manual of trade mark practice, Chapter 3: The Examination Guide, available at
http://www.ipo.gov.uk/tmmanual-chap3-exam.pdf, at page 136. Last visited on July 20, 2012.
21
Case T-281/07, ecoblue AG v OHIM and Banco Bilbao Vizcaya Argentaria, SA, [2008] ECR II-00254, at
para. 18.
22
Significant case law from 2004 on the Community trade mark from the Court of First Instance, the European
Court of Justice and OHIM, Arnaud Folliard-Monguiral and David Rogers, EIPR. 2005, 27(4), pages 133-149,
Sweet & Maxwell at page 142.
17
undertaking, although it is clear that such evidence will strongly contribute in favor of such
acknowledgement. 23
An assumption of family marks on the part of the public requires that the common component
of the marks at issue has, by virtue of use, the necessary distinctiveness to be able to serve, in
the eyes of the public, as the principal indicator of a product line. In order to acknowledge
that the different trade marks invoked by the opponent effectively form such a family of
marks, the opponent should demonstrate not only that he is the owner of the marks, but also
that the public concerned recognizes the common part of these marks as originating from one
undertaking. Such recognition by the public can be only inferred through submitting evidence
of use of the family of trade marks. 24
The assumption that a particular mark forms part of a family of marks requires that the common component of the signs is nearly identical. This requirement also applies to its presentation and location in the signs. 25 However, minor graphical differences in the common component may not exclude an assumption of a series of marks, since such differences may be understood by the public as a modern presentation of the same product line. Even a different
order of the letters may be possible. 26 On the contrary, different or additional letters concerning the common component generally do not allow an assumption of a family of marks. 27
Furthermore, the goods and services of the applicant’s mark must be identical or similar to the
common core of the goods or services covered by the earlier marks. The assumption of a family of marks is more likely where there is a close similarity or even an identity of the goods
and services in question. 28
The strength of the family will also depend on the number of trade marks and the extent of the
use. The greater the number of trade marks and the greater the use, the more that the public
are likely to identify the common element with a particular undertaking. The normal rule of
thumb for a family of trade marks is that there is a minimum requirement of use of three trade
marks. 29
The ‘family of mark’ doctrine rests on the theory that the proponent of the family possesses
an exclusive proprietary right in the ‘family name/surname.’ A term which is descriptive and
commonly used in the trade cannot form the basis of a ‘family name’. 30 This doctrine therefore, involves a transfer of goodwill from one product to another. It applies when the group of
23
OHIM Manual Concerning Opposition Part 2 Chapter 2: Likelihood of Confusion D. Global Assessment,
available at
http://oami.europa.eu/ows/rw/resource/documents/CTM/legalReferences/partc_global_assessment.pdf at page
20. Last visited on July 20, 2012.
24
Ibid.
25
OHIM Manual at page 21.
26
Ibid.
27
Ibid.
28
Ibid.
29
BL O/190/03, EASE-E: FINANCE, available at http://www.ipo.gov.uk/tm/t-decisionmaking/t-challenge/tchallenge-decision-results/o19003.pdf, at para 54. Last visited on July 20, 2012.
30
(1975 TTAB) 189 USPQ 99, Cambridge Filter Corporation v. Servodyne Corporation. Also see Trademarks
and Unfair Competition, J Thomas McCarthy, Second edition, Volume 2, Thomson-Reuters-West at pages 102105 and Cumulative Supplementary Issued in December 1985, at page 39.
18
goods for which the element is registered has a recognizable common characteristic that is
associated by the public with the common element and is considered indicative of the common origin of the goods.
A suffix, prefix or syllable will not qualify for ‘family of marks’ status if is, itself, merely
descriptive. 31 A trade mark owner may use a plurality of marks with a common prefix, suffix
or syllable. He says he has a family of marks, all of which have a common surname. He relies
on this to argue that defendant’s mark which incorporates the family surname is confusingly
similar to the total ‘family group’. The family of marks argument may also be relied upon to
establish prior use of a mark on the basis that the family name is older than defendant’s
mark. 32 For example, Eastman Kodak Company has a family of KODA marks which include
KODACOLOR and KODACHROME. General Aniline Company has an ANSCO family
which includes ANSCOCOLOR, ANSCOMATIC AND ANSCOCOPY. If a defendant came
out with a camera marked KODAFIG or ANSCOFIG, these companies might well complain.
While KODAFIG may not be confusingly similar to any one member of the KODA family, it
can be argued that it is confusingly similar to the whole family group in that an ordinary buyer may be likely to think that any photographic supplies marked with a name containing KODA, must come from KODAK. Whether this is in fact a reasonable consumer reaction is a
matter of fact inherent in the determination of likelihood of confusion. 33
The US Court of Customs and Patent Appeals (hereinafter referred to as ‘CCPA’) and the
TTAB have held that the Polaroid Corporation had not established a POLA family in its
marks POLAROID, POLARCOLOR, POLALIME, POLASCOPE etc. It was held that there
was no likelihood of confusion between POLYCOP photographic supplies and Polaroid’s
marks 34 or between POLYVUE projectors and Polaroid’s products. 35 To be effective, the
‘family of marks’ argument must rest in the ultimate analysis on proof by plaintiff that the
designation which constitutes the ‘surname’ of his family is in fact recognized by the public
as a trade mark in and of itself. 36 That is, has the ‘family surname’ been so extensively advertised that buyers would be likely to think that the defendant’s product originates with the
plaintiff? This is a matter of fact, not supposition. The mere fact of registration of many marks
with a common syllable does not in itself prove that a family of marks exists in fact. If the
‘family surname’ is descriptive or highly laudatory, it may be unprotectable or at least
‘weak’. 37 Even if the family ‘surname’ is descriptive, it may become the basis of a family of
marks if secondary meaning is proven. 38
The ownership of many registrations, per se, is manifestly incompetent to establish the extent
of use of the registered marks to prove existence of a family of marks recognized as such by
31
975 F.2d, (7th Cir. 1992), Spraying Systems Company v. Delavan Inc., at page 387.
(1968 TTAB) 158 USPQ, Daltronics Inc. v. H.L.Dalis Inc., argument rejected since party ‘not in a family
way’ by use of only one mark at time opposing party commenced use, at page 475.
33
McCarthy, Trade marks and Unfair Competition, Fn. 31 supra, at page 102-105.
34
(1970 TTAB) 166 USPQ, Polaroid Corporation v American Screen Process Equipment Company at page 151.
35
(1965) 52 CCPA 978, 341 F2d, Polaroid Corporation v Richard Manufacturing Company at page 150.
36
299 F.2d 55, 132 USPQ 381 (9th Cir. 1962), Creamette Company v Merlino, at page 55.
37
(1960 TTAB) 127 USPQ,Fort Howard Paper Company v. Nice-Pak Products Inc., No NAP family of marks
for napkins since NAP is obviously derived from ‘napkins’, at page 431.
38
McCarthy, Trade marks and Unfair Competition, Fn. 31 supra, at page 102-105.
32
19
the purchasing public. Evidence of advertisement of the family is necessary. It was held that
there was no family of SICLE marks even though the opposer owned registrations on POPSICLE, CHOCOSICLE, BY-SICLE, SUNDAE SICLE etc. and an opposition was dismissed
against PREP-SICLE for dissimilar goods. 39
To establish a family of marks, there must be a proof of an association of common ownership
and recognition by the inclusion in each mark of the asserted ‘family’ characteristic. This doctrine is based on a theory similar to the concept of secondary meaning to the extent that the
proponent must show that it has achieved recognition or secondary meaning in the family
characteristic. A generic or merely descriptive term cannot be the basis of a ‘family’ of marks.
A family of ALO marks was found as purchasers recognize that cosmetics and ointments sold
under ALO marks signify only one source and it was sufficient to preclude registration of any
trade mark for cosmetics or ointment containing the term ALO or ALOE unless these family
terms are so assimilated or submerged with other matter as to create a distinguishable composite. 40
Where there is a series of marks registered for similar goods having some characteristic feature in common, the Registrar will in general before the advertisement stage of an application
for registration presume, in the absence of evidence to the contrary that prima facie, some at
least of those marks have been used. In an opposition proceeding, however, where the opponent is in a position to file evidence, no such presumption regarding the surrounding circumstances will be made. Where all the marks in such a series were owned by one proprietor, the
Registrar would presume that the proprietor was using a series of marks and judge the conflict
between the applicant's mark and each of the proprietor's marks with this consideration in
mind. But if the registered marks were owned by different persons, this would be a circumstance which might considerably assist the applicant. The presence of marks on the register
other than the one with which the comparison is being made is regarded as one of the surrounding circumstances to be taken into account. Where any practice of large producers to
register a series: similar marks to denote various grades of their produce exists, it is highly
probable that an inference of identity of origin would be drawn if the mark applied for could
be taken as one of the series. 41
It follows from the aforesaid that the basis for serial marks must be the perception of the public resulting from actual use of a series of marks, not the mere existence of a number of – used
or unused − trade mark registrations. 42
39
(1973 TTAB) 177 USPQ, Consolidated Foods Corp v. Sherwood Industries Inc., at page 279. Also see
McCarthy, Trade marks and Unfair Competition, Fn. 31 supra, at page 102-105, Cumulative Supplementary Fn.
31 supra, at page 39.
40
(1975 TTAB) 188 USPQ Aloe Crème Laboratories Inc. v Aloe 99 Inc. at page 316. Also see McCarthy,Trade
marks and Unfair Competition, Fn. 31 supra,ibid.
41
Narayanan, Intellectual Property Law, Fn. 18 supra, at page 344.
42
ECJ endorses the Concept of Trademark Series, Marc Putz-Poulalion, available at
http://servicemarks.blogspot.se/2007/09/ecj-endorses-concept-of-serial-marks.html. Last visited on July 20,
2012.
20
1.3.
Advantages of a legally recognized series or family of marks
A trade mark owner may well use the same mark on several species of goods or services and
attach an additional mark, number, or name to indicate the species, but this does not eliminate
the quality assurance that the trade mark should provide for each product to which it is attached. Every type of Kellogg's cereal, every type of Ford automobile, every type of Microsoft software, has a separate trade mark to indicate the type of cereal, automobile, or software
at issue. Nevertheless, the presence of the trade mark member of family on each of these varieties provides a reassurance that each such product will share a given level of quality control
and value. 43
A trade mark family can be legally recognized as such if the trade mark family owner has
advertised the family in such a way that the public recognizes the ‘surname of the family’ as
identifying products or services originating with the trade mark family owner.
Trade mark law rewards the trade mark family owner for promoting the trade mark family by
preventing others from using a mark with the surname for related services or goods, even
though the mark may not be confusingly similar to any individual member of the trade mark
family. 44 The right holder of the family of marks can contend that, because the defendant’s
mark contains the asserted family characteristics, purchasers familiar with the plaintiff’s family of marks are likely to believe that defendant’s mark is but another member of that family.
Once established, a family of marks bestows upon its owner a power much greater than the
sum of the individual members of that family. The fundamental benefit of raising a family of
marks is that, once legally recognized, the trade mark owner may successfully enforce its
family of marks against competitors’ marks incorporating the common ‘family term’ (i.e.,
Sense). In effect, the common term appearing in each of the family member marks becomes
recognized by customers as an identifying trade mark – and a particular source indicator -- in
and of itself (i.e., Sense) when it appears in any composite mark. Even though a junior user’s
mark may not be that close to any one member of the family of marks, i.e. ExtremeSense, its
use of the distinguishing family term ‘Sense’ may cause a likelihood of consumer confusion.
Its use may cause confusion because if purchasers have come to associate marks that incorporate the term ‘Sense’ with a single source for a particular product, consumers may reasonably
believe that the competitor’s mark ExtremeSense is a new addition to the ‘Sense’ family –
thus causing consumer confusion and deception as to the source of the ExtremeSense products. 45 Where the opponents have relied on a series of trade marks all having a common element registered by them for similar goods and the applicant's mark contains that common
element but the opponents did not establish user of any particular mark of the series, each
43
Trademark Monopolies, Glynn S. Lunney, Jr., Emory Law Journal, 48 Emory L.J. 367 (1999), at page 83.
Trademark Families, Sheldon Mak Rose & Anderson, available at
http://usip.com/pdf/Article_Trademarks/trademark.pdf . Last visited on July 20, 2012.
45
Roger Bora, Three Easy Steps for Creating a Brand Name Powerhouse Using a Family of Marks, Fn. 17 supra.
44
21
comparison must be made on the assumption that the opponent's mark has been used but
without taking any other registered mark into account. 46
The family of marks doctrine may be regarded as a typical example of likelihood of association. Because of the perception of a particular part of a trade mark as originating from a specific undertaking, people will make associations and believe that if another sign is also composed of that element, it is another trade mark from the same undertaking in question. Normally, the trade marks constituting a family and used as such are all registered marks. However, it cannot be precluded that the ‘family of marks’ doctrine may include non-registered
trade marks as well, if this is compatible with the provisions of the relevant national laws. 47 It
should be taken into account that there will be no assumption of a family of marks where the
common component is quite weak or where the further components of the earlier signs are
predominant in the overall impression of these signs. 48
The key to creating a legally recognized family of marks is to create common exposure of the
marks and recognition of common ownership based upon the common term appearing in each
mark. 49 Thus, simply using a series of marks that share a common term does not establish the
existence of a legally protectable family of marks. There must be recognition among the purchasing public that the common term or characteristic is associated with the same source. 50
Where there are a ‘series’ of marks, registered or unregistered, but in use, having a common
feature or a common syllable and where all the marks in such series belong to an opponent,
these are generally circumstances adverse to an applicant for a mark containing the common
feature, since the public might think that such a mark indicated goods coming from the same
source, 51 the strength of this ‘series’ objection depending on how distinctive the common feature is. 52 If the marks in the series are owned by different persons, this tends to negative any
proprietorial signification of the common feature and so may assist the applicant 53, unless the
common feature is descriptive of a class of goods narrower or different from the goods in respect of which the registration is sought. 54 If the marks in a series are merely on the Register
46
Narayanan, Intellectual Property Law, Fn. 18 supra, at page 344.
OHIM Manual, Fn. 24 supra, at page 20.
48
OHIM Manual, Fn. 24 supra, at page 21.
49
Roger Bora, Three Easy Steps for Creating a Brand Name Powerhouse Using a Family of Marks, Fn. 17 supra.
50
Roger Bora, Three Easy Steps for Creating a Brand Name Powerhouse Using a Family of Marks, Fn. 17 supra.
51
Kerley’s Law of Trade Marks and Trade Names, Sir Duncan M. Kerly, T.A.Blanco White and Robin Jacob,
Twelfth edition, Sweet & Maxwell, at page 145. Also see [1966] RPC 152 Accutron Trade mark and [1968]
RPC 66 Flowstacka Trade mark.
52
Kerley’s Law of Trade Marks and Trade Names ibid. Also see, [1973] RPC 739, Frigiking Trade mark, where
KING not distinctive enough for a series objection to have much weight.
53
Kerley’s Law of Trade Marks and Trade Names ibid. Also see, [1947] 64 RPC 76, Beck Koller & Company
Application, [1958] RPC 425, British Lead Mills.
54
Kerley’s Law of Trade Marks and Trade Names ibid. Also see [1969] RPC 179 Consarc where seven prior
registrations of marks containing ‘arc’ all confined to arc welding apparatus showed that applications would be
deceptive under Section 11 in respect of other types of welding apparatus.
47
22
of Trade marks but are not shown to be in use and so known to the public, the above advantages disappear and such marks must be considered individually only. 55
The well-known McDonald’s ‘Mc’ family has received judicial recognition in several US
cases including McDonald's Corp. v. McBagels, Inc., 56 where the Court held that McDonald's
owned a family of marks using ‘Mc’ in combination with a generic food item and Quality
Inns International v. McDonald's Corporation,57 the Court enjoined the use of ‘McSLEEP’
for lodging because of confusion with the ‘Mc’ family of marks even though the ‘Mc’ family
did not include service marks for lodging.
In conclusion, a trade mark owner is likely to be granted legal recognition of its family of
trade marks if that owner uses a number of trade marks or service marks characterized by a
distinctive feature that is at least ‘suggestive,’ and so advertises or promotes the members of
the trade mark family together or in association with the owner that members of the consuming public are likely to believe that goods or services sold under or used with marks bearing
the common element or surname originate from the same source or are associated with the
trade mark owner. Legal recognition of trade mark family status is important because the issue of substantial similarity of the marks becomes dependent upon the common feature or
surname and not upon a comparison of the mark in question to any individual member of the
family. 58
1.4. Can the common element in the series of marks be translated in different languages and
yet be construed as a series of marks?
The practice in New Zealand does not allow the application to be accepted as a series where
the marks in an application consist of or contain the same word(s) but in different languages.
Visual and aural differences due to the languages used in the application must be given due
weight. In addition, an application for registration in New Zealand must be viewed as if seen
by the ordinary New Zealander. A broad knowledge of languages other than English cannot
be assumed of the ordinary New Zealand consumer. An application to register the five marks
PUMPKIN, CITROUILLE, KÜRBIS, CALABAZA and ZUCCA would not constitute a series. While the word in each of the marks is either ‘pumpkin’ or translates to ‘pumpkin’, the
marks are visually and orally different. The ordinary New Zealander would be very unlikely
to understand the marks as having the same meaning. The same comments apply where the
marks in an application consist of or contain the same word(s) but in different scripts. For
example, an application to register four marks comprising the English word PUMPKIN,
‘pumpkin’ in Arabic script, ‘pumpkin’ in Chinese characters and ‘pumpkin’ in Japanese characters would not constitute a series. 59
55
Kerley’s Law of Trade Marks and Trade Names ibid. Also see [1979] RPC 330 Semigres, where the Registry
refused application for a series of ‘Sem-’ marks
56
649 F. Supp. 1268, 1 USPQ.2d 1761 (SDNY 1986) McDonald's Corporation v. McBagels, Inc.,
57
695 F. Supp. 198, 8 USPQ.2d 1633 (D. Md. 1988) Quality Inns International v. McDonald's Corporation
58
Sheldon, Trademark Families, Fn. 45 supra.
59
Marks that differ due to language, Practice Guidelines, New Zealand Intellectual Property Office, available at
http://www.iponz.govt.nz/cms/trade-marks/practice-guidelines-index/historic-practice-guidelines/13-series-
23
In the UK, applications consisting of English and Welsh translations of the same word(s) have
been accepted as series of marks. However, judgments from the Court of Justice make clear
that trade marks should be considered in relation to the average consumer. As a ‘competent
authority’, the Registrar is required to consider the view of ‘the relevant class of persons’ who
only consist of ‘the trade and ... average consumers of that category of goods 60 in the territory
in respect of which registration is applied for’. This confirms that an application for a national
registration must be viewed as if seen by consumers throughout the UK. 61 Any visual and
aural differences due to the languages used in a series of marks must be given due weight and
where such differences alter the ‘identity’ of the mark; they should not be accepted as a series.
For example the mark ‘Welsh Water’ and ‘Dwr Cymru’ would not be accepted as a series
because of the visual and oral differences between the marks. A broad knowledge of languages other than English cannot be assumed of the average UK consumer. Normally applicants
wishing to protect a mark in more than one language should file separate applications. An
unrestricted application for a series of marks consisting of the same words in English and
Welsh will not therefore be accepted as a series. Alternatively, if English and Welsh versions
of marks are to be used together they may be applied for as a single mark. It may also be
possible to accept applications for English and Welsh series where there is a territorial limitation to the area of Wales under Section 13 of the Trade Mark Act, 1994 which may be applied
only to the Welsh versions of the marks in the proposed registration. 62
2.
THE CONCEPT OF TRADE MARK SERIES AND ASSOCIATED MARKS
This chapter discusses the concept and origin of trade mark series in UK, India, US and EU.
− When did the concept of trade mark series originate?
It has been acknowledged that the concept originated in UK. In 1947 in Beck Koller application, 63 it was held that an objection based on the existence of a family or series of trade marks
must be founded on use of those marks, because the implication is that traders and the public
have gained such a knowledge of the common element or characteristic of the series that
when they meet another mark having the same characteristic they will immediately associate
it with the series of marks with which they are already familiar. Although that case-law dates
back to 1947, it continues to be applied today in the context of the Trade Mark Act 1994,
which transposes the Trade Mark Directive. The 2003 decision of the UK Intellectual Property Office (hereinafter referred to as ‘IPO’) based an opposition based on a family of trade
marks having a common element ‘EASY’ is the proof thereof. 64
mark/4-other-matters-of-a-non-distinctive-character/4-11-marks-that-differ-due-to-language/. Last visited on
July 20, 2012.
60
Joined Cases C-108/97 and C-109/97, Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots und
Segelzubehör Walter Huber and Franz Attenberger, [1999] ECR I-2779, at para. 29.
61
Case C-108/05, Bovemij Verzekeringen NV v Benelux Merkenbureau, [2006] ECR I-7605.
62
UK Manual, Fn. 21 supra, at page 146.
63
Beck Koller & Company Application Fn. 54 supra, where series of opponents' marks beginning with PLIO
and PLYOPHEN held similar to PLIOBOND and PLIOFILM.
64
EASE-E: FINANCE Application, Fn. 30 supra.
24
The real reason for the introduction of trade mark series in the legislation is to be traced to the
fact that traders frequently desire to use, for different goods or different markets, trade marks
which in material respects resemble each other but differ in detail or some part or parts of a
mark which on other goods is used as a whole. This is, of course, a perfectly legitimate course
and it is important in such cases that the protection afforded by registration should be made
available for each of such marks. 65
The relevant sections which provided for the registration of trade marks as a series are Sections 21, 23 and 30 of UK Trade Mark Act 1938 (hereinafter referred to as ‘1938 Act’). Rule
29 of the Trade Mark and Service Mark Rules, 1986 dealt with applications for the registration of a series of marks under Section 21(2) of 1938 Act. Presently, Section 41 of the Trade
Mark Act of 1994 (hereinafter referred to as ‘1994 Act’) and Rule 28 of Trade Mark Rules
2008 has adopted a different definition in order to comply with the provisions of the Trade
Mark Directive. 66
Indian law is largely based on English common law because of the long period of British colonial influence during the period of the British Rule. The Indian Trade Mark Act, 1999 is
thus, a reproduction of the UK Trade Mark Act, 1994 and incorporates similar sections including those related to trade mark series from the UK Trade Mark Act 1938. Section 15 and
16 of Trade Mark Act 1999 (hereinafter referred to as ‘1999 Act’) and Rule 25, 31 and 44 of
Trade Mark Rules 2002 deal with the registration of trade marks as a series. 67
The concept is neither defined in the US Lanham Act nor in the EU Community Trade Mark
Regulation.
2.1. The concept of trade mark series and associated marks in the UK
As one can see from the relevant sections, Section 21(2) of 1938 Act was really directed only
to avoiding necessity for separate application in each case. Under Section 23(4) of 1938 Act,
the marks of such a series must be registered as associated marks. Section 23(1) of 1938 Act
provides that the associated marks cannot be assigned or transmitted separately. 68 This objection allowed the unrestricted registration of resembling marks in the name of one proprietor
viz. that the proprietor might assign one or more than them whilst himself retaining the others,
or assigning them to different parties so that there would be on the Register resembling marks
in the names of different parties for the same description of goods or services, the use of
which might be likely to deceive. Though such an assignment would generally be contrary to
the provisions which permit assignments, in the absence of any record, it may never come to
the notice of the Registrar or of any Tribunal before which proceedings might take place.
Where there is a series of existing marks, they may have a cumulative effect relevant under
65
Kerley’s Law of Trade Marks and Trade Names, Fn. 52 supra, at page 62-64.
Please refer to Appendix.
67
Please refer to Appendix.
68
Kerley’s Law of Trade Marks and Trade Names, Fn. 52 supra, at pages 62-64.
66
25
Section 11 of 1938 Act 69 whereas for Section 12 of 1938 Act 70 they are considered separately. 71
Section 30(1) of 1938 Act gave any tribunal the discretion to accept use of any one of associated marks as equivalent to use of any other. This provision implied that associated marks
can be used for a purpose going beyond that suggested above: that of enabling a proprietor of
a mark to register also marks he does not himself intend to use but which so resemble marks
he does use that their use by others could lead to confusion. These he may register as associated marks of the mark he does use; and if the resemblance is sufficient they will be safe
from attack on the ground of non-use. Furthermore, the provision in Section 23(2A) of 1938
Act for associating service marks with trade marks should enable the owner of a service mark
to hold such protective registrations for goods that would be confusing if sold under his
marks, even though he has no trade in goods. 72 It is pertinent to note that where the proprietor
of ‘Electrolux’ (for inter alia, suction cleaners) had registered ‘Electrux’, the Court in proceedings for infringement by the use of “Electrix’, refused to treat use of the associated mark
‘Electrolux’ as equivalent to use of “Electrux’. 73 However, the plaintiffs had made just sufficient use of ‘Electrux’ itself to save the registration. 74
Section 30 of 1938 Act enables yet another use to be made of associated marks. After a lapse
of years, as the fashion changes, traders frequently desire to make slight alterations in the details of a trade mark. The effect of Section 30 of 1938 Act is that a proprietor may register the
new form of his mark as an associated mark and then discontinue the use of the old form with
the reduced risk of any application to remove the latter on the ground of non-user. An alternative and perhaps safer if successful, would be to apply under Section 35 of 1938 Act to alter
the registered mark but since, the latter procedure is somewhat restricted in its application, the
former alternative is often more convenient. 75
As previously mentioned, the 1938 Act was amended in order to implement the provisions of
the Trade Mark Directive and CTMR which are incorporated into the 1994 Act. A series of
trade marks is now defined as ‘a number of trade marks which resemble each other as to their
material details and differ only as to matters of non-distinctive character that does not affect
the identity of the trade mark’. An application for a series of mark can include a maximum of
six marks with the first and second marks being included in the application fee, the additional
marks then attract a fee of £50 each. 76
69
Prohibition of registration of deceptive and contrary to law or morality or any scandalous matter.
Prohibition of registration of identical and resembling trade marks.
71
Kerley’s Law of Trade Marks and Trade Names, Fn. 52 supra, at page 145.
72
Kerley’s Law of Trade Marks and Trade Names, Fn. 52 supra, at page 62-64.
73
[1954] 71 RPC 23, Electrolux Ltd v Electrix Ltd. Also see Kerley’s Law of Trade Marks and Trade Names,
ibid.
74
Kerley’s Law of Trade Marks and Trade Names, ibid.
75
Kerley’s Law of Trade Marks and Trade Names, ibid.
76
Frequently asked questions, UK IPO, available at http://www.ipo.gov.uk/types/tm/t-about/t-faq/t-faqseries1.htm. Last visited on July 20, 2012.
70
26
In the decision regarding Application no 2214271 by Logica PLC to register a series of trade
marks in Classes 9, 16, 35, 36, 37, 38, 41 and 42, 77 Professor Ruth Annand as the Appointed
Person stated that Section 41(2) of 1994 Act contains three conditions:
(i)
The marks in the series must resemble each other in their material particulars;
(ii)
The differences between the trade marks must not comprise matter, which when
considered as a separate element of the trade mark would be regarded as having
distinctive character; and
(iii)
The differences between the trade marks must not comprise matter, which when
considered in the context of the trade mark as a whole, substantially affects the
identity of the trade mark. 78
Under the 1938 Act, the UK Tribunals were keen to prevent the maintenance of ‘ghost marks’
a technique used to provide indirect protection to non-registerable marks. This may occur
where a person discovers that for one reason or another, they cannot register the mark they
wish to trade under. One option in these circumstances is for the trader to trade under the unregistrable mark and at the same time attempt to register a similar mark. Based upon the fact
that the trade mark protection includes marks which are similar, the trader would hope to be
able to use the registered mark indirectly to protect the mark that they are actually trading
under. So in one case where it was impossible to register HUGGERS as a mark for clothing
(the term describing the closeness of fit) the trader registered HUGGARS. In due course, the
question arose as to whether use of HUGGERS could justify maintenance of the HUGGARS
mark. 79 While noting there was no phonetic distinction, Mummery J. observed that as much
of the use of the mark was visual, it should be regarded primarily in such a context. Moreover,
the concept was suggested by the marks differed substantially with HUGGERS easily associated with clothing and HUGGARS less obviously so. Consequently, altering a single letter
of a word was held to have substantially affected its identity and the HUGGARS mark was
revoked. 80 Therefore, it may seem that the second part of Section 41(2) of 1994 Act concerning the criteria of a trade mark series is a tougher test than Section 46(2) of 1994 Act.
2.2. The concept of trade mark series and associated trade marks in India
As mentioned earlier, the sections are identical to the sections of UK Trade Mark Act 1938.
There are however, some practices adopted by the Indian Trade Mark Registry which differ
from the UK practice.
77
BL O/068/03, LOGICA PLC, UK IPO’s Decision available at http://www.ipo.gov.uk/o06803.pdf. Last visited
on July 20, 2012.
78
UK Manual, Fn. 21 supra, at page 135.
79
[1979] FSR 310, Huggars Trade mark.
80
Intellectual Property Law, Lionel Bentley and Brad Sherman, Third edition, Oxford University Press, at page
898.
27
A number of variations of a trade mark can be registered as a series in one registration under
this section. This is an exception to the general rule that a separate application should be made
for each trade mark. 81
The practice in India, parallel to the UK practice, registers trade marks constituted by three
letters or numeral marks consisting of five digits as independent marks and not as series 82 as
the marks are not considered as variation marks for acceptance as series registration.
One of the essential conditions of a trade mark series application is that each of the trade mark
in the series must be in respect of the same goods or description of goods or services. It is
probable that two sets of goods may be goods of the same description, although they may fall
in different classes. Where the goods, though falling in the same class, are not of the same
description, all the marks cannot be registered as a series in one registration. For example, if
some of the marks in the series are claimed for cotton yarn and other for sewing thread, series
registration is not possible as the goods, although falling in the same class, namely Class 23,
are treated by the Trade Mark Registry as goods of difference description. 83
The use of the word ‘or’ at the end of clauses (a), (b), (c) evidently expresses that the differences between the several trade marks should be limited to one of these matters only and not a
combination thereof. Thus, two trade marks which differ in respect of statements of number,
price, quality or names of places in addition to colour may not be admitted as a series of mark
within the scope of the section. This is understandable as too many differences, although of a
non-distinctive character, may substantially affect the identity of the trade mark. This is also
clear from the condition that the trade marks in the series should resemble each other in the
material particulars thereof. 84
All marks registered as series in one registration are deemed to be registered as associated
marks under Section 16(4) of 1999 Act. Associated marks can be assigned or transmitted only
as a whole and not separately by virtue of the provisions of Section 44 of 1999 Act. In general, the use of one associated trade mark is accepted as equivalent to use of the other marks
with which it is associated. 85
Section 15(3)(d) of 1999 Act provides for registration of trade marks in series, where the
mark differs only in respect of colours. 86 Under Section 10 of 1999 Act, a trade mark may be
limited wholly or in part to any combination of colours and any such limitation may be taken
into consideration by the tribunal having to decide on the distinctive character of the trade
mark. Section 10(2) enacts that so far as a trade mark is registered without limitation to colour, it shall be deemed to be registered for all colours. Further, in terms of the definition of
‘trade mark’ under Section 2(2)(zb) of 1999 Act, ‘combination of colours’ could constitute a
81
Section 18(1) of the Trademark Act 1999 where it refers to a ‘trade mark’.
Indian Manual for Trade mark practice and procedure, available at
http://ipindia.nic.in/tmr_new/TMR_Manual/DraftManual_TMR_23January2009.pdf, at page 26. Last visited on
July 20, 2012.
83
Narayanan, Intellectual Property Law, Fn. 18 supra, at page 255.
84
Narayanan, Intellectual Property Law, Fn. 18 supra, at page 278.
85
Narayanan, Intellectual Property Law, Fn. 18 supra, at page 247.
86
Indian Manual, Fn. 83 supra, at page 27.
82
28
trade mark to be eligible for registration. What is, however, envisaged under Section 15(3)(d)
of 1999 Act, is a ‘colour’ as a non-distinctive feature in each of the series labels applied for
registration.
In Corn Products Refining Company v Shangrila Food Products Limited, 87 the Supreme
Court held that the High Court Appellate Judges erred in deciding in favour of the respondent
basing themselves on the series marks, having 'Gluco' or 'Vita' as a prefix or a suffix. 88 The
Supreme Court relied on the well recognized principle, that in considering the possibility of
confusion arising between any two trade marks, account must be taken that, where those two
marks contain a common element which is also contained in a number of other marks in use
in the same market such a common occurrence in the market tends to cause purchasers to pay
more attention to the other features of the respective marks and to distinguish between them
by those features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and use in the market in which the marks under consideration are being or will be used. The series of marks containing the common element or elements therefore only assist the applicant when those marks are in extensive use in the market.
The onus of proving such user is of course on the applicant, who wants to rely on those
marks. 89
In M/s. Amar Singh Chawal Wala v M/S. Shree Vardhman Rice & General Mills 90 the Delhi
High Court observed that the essential feature of the plaintiff’s mark is the word QILLA
(meaning fort in Urdu and Hindi). The Delhi High Court further held that it is not possible to
agree with the reasoning of the Single Judge that the word QILLA is not associated with rice
and therefore no ordinary purchaser of rice would associate the defendant’s mark as that of
the plaintiff’s. The plaintiff has been using the words QILLA consistently in connection with
the rice being sold by them with only the first word indicating the colour viz., GOLDEN,
LAL(red) or NEELA(blue). It must be held that the plaintiff has been able to prima facie
show that it has developed a family of marks and that by merely changing the first word from
GOLDEN, LAL or NEELA to the word HARA (green) there is every possibility of confusion
being caused both in trade and in the mind of any person desiring to purchase rice. Likewise,
the use of the picture or depiction of a fort in the background on the label/packing of the rice
is also likely to cause confusion in the mind of the purchaser and in the trade that the product
being sold by the defendants are in fact those manufactured by the plaintiff. 91
In a writ petition filed by Glaxo Group Limited v Union of India, Voltas Limited and Others 92
against the decision of the Intellectual Property Appellate Board (hereinafter referred to as
‘IPAB’), Glaxo Group filed an application for registration of a trade mark VOLMAX in Class
5 of the Schedule I of the Trade and Merchandise Act, 1958 (also Schedule I of the present
1999 Act). The Respondent Voltas Limited established that it was using a series of marks hav87
AIR 1960 SC 142, Corn Products Refining Company v Shangrila Food Products Limited.
AIR op. cit. at para. 17.
89
AIR op. cit. at para. 16.
90
FAO (O) No. 138 of 1996 & C.M.No. 842 of 2001, M/s. Amar Singh Chawal Wala v M/S. Shree Vardhman
Rice & General Mills.
91
FAO op. cit., at para 18.
92
W.P.(C) 9478/2006 & CM 7072/2006, Glaxo Group Limited v Union of India, Voltas Limited and Others.
88
29
ing the common element VOL namely, VOLTAS, VOLFRUIT, VOLFARM, VOLPUMP,
VOLDRILL, VOLITA, VOLTRION, VOLDRUM, VOLLAM, VOLRAM, VOLBIT, VOLSEAFOOD, VOLFAN and VOLPHOR. 93 The Assistant Registrar observed that all the trade
marks of the Voltas have to be kept in mind in determining whether the mark applied for, i.e.,
VOLMAX was deceptively similar to the series of marks of the Voltas. He concluded that
keeping in view of the series of trade marks owned by the opponents having the common prefix VOL, the similarity between the trade mark applied for and the opponents registered trade
mark VOLTAS become so near as to likely to deceive or cause confusion in the minds of a
purchaser who already know the opponents trade marks with the prefix VOL. 94 The Delhi
High Court observed that on the basis of structural similarities, the IPAB did not appear to
have considered whether the comparison could be made of the two marks as a whole or on the
basis that VOLTAS belonged to a series or family of marks with a similar prefix in which
event the marks would have to be split to determine which is the generic portion and which
the distinctive portion. The impugned order of the IPAB does not reflect any such detailed
examination of the two competing marks at all. 95 The Delhi High Court thus held that the impugned order of IPAB was set aside and the IPAB was to decide the matter afresh. 96
In M/S Gufic Ltd. & Another v Clinique Laboratories 97, the Delhi High Court found that the
word CLINIQUE is the most important constituent of the respondents’ family of trade marks.
The Delhi High Court allowed the appeal and set aside the impugned order of the Single
Judge and held that CLINIQUE and SKINCLINIQ are not identical marks 98 and that the price
differential between the two products is so vast that no consumer of products of either the
appellant or the respondent would confuse one for the other. 99
2.3. The concept of family of marks in US
In US, this concept is not defined in the Lanham Act but is assessed under the provisions of
§1052 (Section 2 of the Lanham Act). 100 By all indications, this family of marks doctrine was
recognized for the first time in U.S. Plywood Corporation v Koveron Korporation, 101 and first
applied, albeit not by name, in Procter & Gamble Company v Conway. 102
In U.S. Plywood Corp. v. Koveron Korporation, the opposer urged that its registration of the
marks KALITEX, KALIGRAIN, TAPISTRON and WELDRON and the use by one of its
divisions of the mark KOVERITE make this case a proper one in which to consider and apply
what it refers to as the ‘family of trade marks’ doctrine. The opposer however, did not cite
any authority to support this proposition. The Court scrutinized the names to find a common
family characteristic but could not find any factual support. Three of the names begin with the
93
W.P.(C) op. cit., at para. 3.
W.P.(C) op. cit., at para. 4.
95
W.P.(C) op. cit., at para. 16.
96
W.P.(C) op. cit., at para. 20.
97
FAO(OS) 222/2009, M/s Gufic Ltd. & Another v Clinique Laboratories
98
FAO(OS) op. cit., at para. 23.
99
FAO(OS) op. cit., at para. 24.
100
Please refer to Appendix.
101
288 F.2d 924 (CCPA 1961), U.S. Plywood Corporation v Koveron Korporation.
102
57 CCPA. 865, 419 F.2d 1332 (CCPA 1970), Procter & Gamble Company v Conway.
94
30
letter ‘K’, two other names end with the suffix ‘ron.’ The opposer had established a right to
the family of names comprising three syllable words beginning with the letter ‘K’ and ending
with the suffix ‘ron’. While the mark KALISTRON may be said to possess family characteristics which relate it to some other marks of opposer, the opposed mark KOVERON clearly
does not. The Federal Court did not think that an average purchaser would relate the mark
KOVERON to this alleged family of marks in which opposer includes its mark KALISTRON. 103 Considering the other facts, the Court affirmed the TTAB’s decision in holding
that the difference in the names made it seems unlikely that the mark when applied by applicant to the goods specified in the application would cause confusion, mistake or deceive purchasers. 104
The US Courts often refer to the definition of family of marks derived from the case of J & J
Snack Foods Corporation v. McDonald’s Corporation 105 wherein it is said to be ‘a group of
marks having a recognizable common characteristic, wherein the marks are composed and
used in such a way that the public associates not only the individual marks, but the common
characteristic of the family, with the trade mark owner.’
In Procter & Gamble Company v. Conway, 106 in finding the MISTER STAIN was likely to be
confused with MR. CLEAN, the Court emphasized the similarity in meaning as the basis for
its decision that a designation may well be likely to cause purchaser confusion as to the origin
of goods because it conveys, as used, the same idea or stimulates the same mental reaction, or
in the ultimate has the same meaning.
In Baroid Drilling Fluids Inc. v. Sun Drilling Production, 107 it was held that the family of
marks doctrine may be invoked by a plaintiff in inter-parties proceedings relating to likelihood of confusion, but is not available to a defendant as a defense against an opposer’s or applicant’s intervening rights. Moreover, In re Cynosure, Inc., 108 it was held that a family of
marks argument is not available to an applicant seeking to overcome a likelihood of confusion
refusal in an ex parte proceeding; instead, the focus of the likelihood of confusion analysis
must be on the mark applicant seeks to register, not other marks applicant may have used or
registered. It has also been noted In re Mobay Chemical Company 109 that, in ex parte proceedings, examining attorneys do not have access to the evidence and information needed to establish whether a family of marks exists. Therefore, examining attorneys should refrain from
103
288 F.2d 924 (CCPA 1961), Fn. 102 at para. 3.
288 F.2d 924 op. cit. at para 12. Also see McBummer: Thoughts on the McFamily of Trademarks McConcept, Ron Coleman, available at http://www.likelihoodofconfusion.com/mcbummer/. Last visited on July 20,
2012.
105
932 F2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir.1991), J & J Snack Foods Corporation v. McDonald’s
Corporation.
106
57 CCPA 865, 419 F.2d 1332 (CCPA 1970), Fn. 103 supra, at para. 18.
107
24 USPQ2d 1048 (TTAB 1992). Baroid Drilling Fluids Inc. V. Sun Drilling Production.
108
90 USPQ2d 1644, 1645 (TTAB 2009) In re Cynosure, Inc.
109
166 USPQ 218, 219 (TTAB 1970), In re Mobay Chemical Company.
104
31
invoking the family of marks doctrine or from referring to a family of marks in a likelihood of
confusion analysis. 110
A well-known trade mark family received judicial recognition in the case of McDonald's
Corporation v. McBagels, Inc., 111 in which the Court preliminarily enjoined the defendant,
McBagels, Inc., from using the word ‘McBAGELS’ in connection with a bagel bakery and
restaurant. McDonald's Corporation argued that it owned a family of trade marks characterized by the use of the formatives or surnames ‘Mc’ or ‘MAC,’ usually in combination with
the generic name of a food item. Examples of the McDonald's family of trade marks include
McDONALD'S, McDONALD'S HAMBURGERS, EGG McMUFFIN, McCHICKEN,
McDONUTS, McPIZZA, MAC FRIES, CHICKEN McNUGGETS. The Court noted that the
existence of a family of marks is a question of fact based on the distinctiveness of the common formative component and other factors, including the extent of the family's use, advertising, promotion and its inclusion in a number of registered and unregistered marks owned by a
single party. 112 The Court was impressed by the extent of the advertising devoted by McDonald's to create recognition for various members of the family, independent and substantial
news media use of the ‘Mc’ formative in independently created articles about McDonald's and
McDonald's efforts in policing the use of the ‘Mc’ formative. The Court had no hesitation in
finding that McDonald's owned a family of marks using ‘Mc’ or ‘MAC’. 113
In the case of Marion Laboratories v. Biochemicals Diagnostics, 114 the TTAB denied registration of the mark ‘TOXI- PREP’ over the opposer's ‘TOXI-’ family of marks consisting of
members including ‘TOXI-DISCS,’ ‘TOXI-GRAMS,’ ‘TOXI-TUBES,’ ‘TOXI-LAB,’ ‘TOXI-KIT,’ ‘TOXI-TIPS,’ and others, used for various laboratory diagnostic kits ‘very similar’ to
the TOXI-PREP clinical screening kit. The TTAB stated the two elements needed to establish
ownership of a family of marks: it must be shown by competent evidence first, that prior to
the entry into the field of the opponents mark, the marks containing the claimed 'family' feature or at least a substantial number of them, were used and promoted together by the proponent in such a manner as to create public recognition coupled with an association of common
origin predicated on the 'family' feature; and second, that the 'family' feature is distinctive
(i.e., not descriptive or highly suggestive or so commonly used in the trade that it cannot function as the distinguishing feature of any party's mark). 115
The Courts have recognized other families of trade marks when the trade mark family owner
appears to satisfy the elements of prior promotion of the surname and distinctiveness of the
surname. In AMF, Inc. v. American Leisure Products Inc., 116 the Court held that AMF Inc.
had established a family of marks of ‘fish’ names for sailboats, based on advertising, use and
110
US Trademark Manual of Examining Procedure, Chapter 1200, Substantive Examination of Applications,
Family of Marks, available at http://tess2.uspto.gov/tmdb/tmep/1200.htm#_T120701dxi. Last visited on July 20,
2012.
111
649 F. Supp. 1268, 1 USPQ.2d (SDNY 1986), McDonald's Corporation v. McBagels, Inc. at page 1761.
112
649 F. Supp. 1268, op. cit. at 1763.
113
Sheldon, Trademark Families, Fn. 45 supra.
114
6 USPQ.2d 1215 (TTAB 1988), Marion Laboratories v. Biochemicals Diagnostics.
115
Sheldon, Trademark Families, Fn. 45 supra.
116
474 F2d 1403, 1406, 177 USPQ 268, 270 (CCPA 1973), AMF, Inc. v. American Leisure Products Inc.
32
distinctiveness of the names. 117 In Motorola, Inc. v. Griffiths Electronics, Inc., 118 it was held
that the use and advertisement of the marks GOLDEN VOICE, GOLDEN BEAM, GOLDEN
VIEW and several other ‘golden’ marks, together with the primary mark MOTOROLA, established a pattern of use and recognition of a family of marks in which ‘golden’ is a dominant feature. In International Diagnostics Technology, Inc. v. Miles Laboratories, Inc., 119 this
court observed that millions of dollars in advertising contributed to recognition of the family
of STIX marks. The District Court for the District of Oregon recognized a DICT family of
trade marks for dictating machines in Dictaphone Corporation v. Dictamatic Corporation. 120
On the other hand, the US Courts have denied family status when the putative surname did
not appear to be distinctive or was not recognized by the public as originating from a single
source. 121 If the goods or services with which the mark in question is used are very similar to
the goods or services with which the family of marks is used, use of the common family characteristic or surname usually decides the question of confusion. The trade mark of another
generally will infringe the trade mark family if the family's surname is found in the other's
trade mark and the goods or services are related to those with which the trade mark family
members are used. Thus, a mark could infringe the family even though the mark is not as similar to any single one of the marks in the trade mark family as to be likely to cause confusion,
to cause mistake or to deceive, even when that mark is used on similar goods and services. 122
In Virgin Enterprises Limited v. Kay Guitar Company, 123 the opposer Virgin Enterprises
proved use and registration of dozens of VIRGIN marks in various forms, but the Board
turned a deaf ear to its claim to a family of VIRGIN marks. As usual, the Board cited J & J
Snack Foods Corporation v. McDonald's Corporation, for the proposition that ‘simply using a
series of similar marks, or the mere fact of registration of many marks with a common surname does not of itself establish the existence of a family.’ 124
117
Likelihood of confusion was found between the opposer’s ‘fish’ family (SAILFISH, SUNFISH, CATFISH,
FLYING FISH) for sailboats and applicant’s GOLDFISH for sailboats. Evidence showed that the opposer had
advertised its products as a family of ‘fish’ marks. Evidence that third parties had registrations and trade mark
journal uses of fish marks for sailboats was held of little weight and the opposition was sustained.
118
317 F2d 397, 399, 137 USPQ 551, 50 CCPA 1518 (CCPA 1963), Motorola, Inc. v. Griffiths Electronics, Inc.
119
746 F2d 798, 800, 223 USPQ 977, 978 (Fed. Circuit 1984), International Diagnostics Technology, Inc. v.
Miles Laboratories, Inc.
120
199 USPQ 437 (D. Or. 1978), Dictaphone Corporation v. Dictamatic Corporation.
121
299 F.2d 55, 132 USPQ 381 (9th Cir. 1962), Creamette Company v Merlino, where ‘-ETTE’ trade marks for
macaroni products, such as CREAMETTES, DUMPLINGETTES and SPAGHETTES, were not recognized as a
family because the ‘-ETTE’ suffix was in such widespread use that it was not distinctive. Also see 134 F.2d 429,
56 USPQ 400 (7th Cir. 1943), Quaker Oats Company v. General Mills, Inc., where ‘-IES’ trade marks for breakfast cereals, such as WHEATIES, KORNIES and MAIZIES were denied family status because of lack of public
recognition that General Mills owned a family of marks; 166 USPQ 151 (TTAB. 1970), Polaroid Corporation v.
American Screen Process Equipment Company, where Polaroid Corporation held not to have established a family of POLA trade marks for photographic products because of failure to show that the public ascribes ownership
of all POLA trade marks in the field to Polaroid Corporation.
122
Sheldon, Trademark Families, Fn. 45 supra.
123
Opposition No. 91154392 (November 23, 2004), Virgin Enterprises Limited v. Kay Guitar Company.
124
The TTAB’s dysfunctional ‘family of marks’ doctrine, John Welch, available at
http://thettablog.blogspot.com/2005/01/ttabs-dysfunctional-family-of-marks.html. Last visited on July 20, 2012.
33
2.4. The concept of family of marks in EU
The concept of trade mark series is not defined in the Community Trade Mark Regulation,
however conditions to assess the likelihood of confusion under provisions of Article 8(1)(b)
CTMR 125 was laid down by the Court of Justice in the BRIDGE/BAINBRIDGE decision.126
The fact that an opposition is based on several earlier marks which could be regarded as forming part of a single series or family is relevant for assessment of a likelihood of confusion.
Such a likelihood could arise where the trade mark applied for displayed such similarities to
those marks as might lead the consumer to believe that it formed part of the same series and
therefore that the goods covered by both had the same or a related commercial origin. That
could be true even where comparison of the trade mark applied for with the earlier marks taken individually did not establish a likelihood of direct confusion. 127
In light thereof, two cumulative conditions were laid down by the General Court affirmed by
the Court of Justice in the BRIDGE/BAINBRIDGE judgment:
(i)
The proprietor of a series of earlier registrations must furnish proof of use of all
the marks belonging to the series or, at the very least, of a number of marks capable of constituting a series. For there to be a likelihood of the public being mistaken as to whether the trade mark applied for belongs to the series, the earlier marks
forming part of that series must necessarily be present on the market. Since taking
into account the serial nature of the earlier marks would entail widening the scope
of protection of the trade marks forming part of the series, considered individually,
any assessment in the abstract of the likelihood of confusion, based solely on the
existence of several registrations covering marks reproducing, the same distinctive
element and in the absence of any actual use of the marks, must be regarded as excluded. Consequently, failing proof of such use, any likelihood of confusion entailed by the appearance on the market of the trade mark applied for will have to
be assessed by comparing each of the earlier marks, taken individually, with the
trade mark applied for and
(ii)
The trade mark applied for must not only be similar to the marks belonging to the
series, but also display characteristics capable of associating it with the series. That
could not be the case where, for example, the element common to the earlier serial
marks is used in the trade mark applied for either in a different position from that
in which it usually appears in the marks belonging to the series or with a different
semantic content. 128
The Court of Justice’s judgment in OBELIX/MOBILIX case 129 confirmed that the mere association that the public might make between two trade marks as a result of their analogous se125
Please refer to Appendix.
Case C-234/06P, BRIDGE/BAINBRIDGE.
127
Opinion of Advocate General Sharpston, Fn. 8 supra, at para. 42
128
Case T-194/03, Il Ponte Finanziaria v OHIM and F.M.G Textiles, [2006] ECR II-445, at para. 126-127.
129
Case C-16/06 P, Les Editions Albert Rene v OHIM and Orange A/S, [2008] ECR I-10053.
126
34
mantic content is not in itself a sufficient ground for concluding that there is a likelihood of
confusion.
− Do the requirements/standards differ for establishing a series of trade marks from country
to country?
Pursuant to the above discussions, it is evident that the basic requirements do not differ in
UK, India, EU and US. Each of the countries requires the proof of use of the marks in a series
and that the public has knowledge of the series or family of marks. Amongst the relevant
countries taken into consideration for the purpose of the thesis, it is observed that only in India, it is defined and emphasized that the application for series of marks should be in the same
or similar goods/services or description of goods/services.
With regards to the series trade mark application, in UK, an application for a series of mark
can include a maximum of six marks with the first and second marks being included in the
application fee, the additional marks then attract a fee of £50 each. In India, a separate application should be made for each trade mark of the series. In EU and US, the marks are registered individually and obtain the status of being a ‘family mark’ when the conditions are fulfilled.
− Is reputation an essential factor in establishing a series or family of marks?
The above discussions answer the question of reputation being an essential factor for establishing series of marks in the negative. The circumstances that the earlier mark or common
element is reputed will not be a factor to assess establishment of a series but shall be a feature
in favour of the proprietor once a series of marks is established. This implies that the reputation of the earlier mark or common element has the capacity to exclusively benefit once the
series or family of marks is established and not otherwise. It is further confirmed by the decision in Les Editions Albert Rene v OHIM and Trucco sistemi di telecommunicazione SpA,130
where the General Court specifically held that the signs in dispute can not in any way be regarded as identical or similar from the visual, phonetic or conceptual points of view, the fact
that the earlier mark is widely known or enjoys an extensive reputation in the EU can not alter
the overall assessment of the risk of confusion. It was additionally observed that no amount of
fame and reputation can make two marks similar when they are not, in the KINDER/TiMi
KiNDERJOGHURT judgment. 131
In the thesis, however, the reference is made to reputed common elements or earlier marks in
order that the reader can relate to these well-known companies and follow the discussion.
130
Case T-311/01, Les Editions Albert Rene v OHIM and Trucco sistemi di telecommunicazione SpA, [2003]
ECR II- 4625, at para. 61.
131
Being cruel to be KINDER: COURT OF JUSTICE says ‘yes’ to TiMi, Jeremy Philips, available at
http://ipkitten.blogspot.se/2011/03/being-cruel-to-be-kinder-ecj-says-yes.html. Last visited on July 20, 2012.
35
PART TWO
To understand the European concept of series of marks in the light of the conditions laid
down, the next chapters discuss the cases decided by the Court of Justice and General Court
and the development of law in this regard. The first case to discuss the concept and conditions
with regard to the Community Trade Mark Regulation was the BRIDGE/BAINBRIDGE case.
The following section lists down the pending decisions of the Courts linked to the ‘series of
marks’ argument. It additionally concentrates on how the Courts in Europe have interpreted
the conditions.
3. DEVELOPMENTS OF CASE LAW ON TRADE MARK SERIES IN THE COURT OF
JUSTICE
Before the cases are discussed, what are the test/standards for likelihood of confusion, similarity and the perception of the average consumer?
The legal concept in determining the scope of protection of a registered trade mark is likelihood of confusion. This is the most common ground invoked in opposition, cancellation and
infringement proceedings. 132 According to settled case-law, 133 the risk that the public might
believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same
line of authority, the likelihood of confusion must be assessed globally, in accordance with
the perception which the relevant public has of the signs and goods or services at issue, taking
into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset
by a higher degree of similarity between the marks and vice versa. 134 In assessing the similarity of the goods or services concerned, all the relevant factors pertaining to the relationship
between those goods or services are to be taken into account. Those factors include, inter alia,
their nature, their end users and their method of use and whether they are in competition with
one another or are complementary. 135
Even though it is conceivable that aural similarity alone could create a likelihood of confusion, it must be noted that the existence of such likelihood must be established as part of a
global assessment as regards the conceptual, visual and aural similarities between the signs at
issue. 136 Such a global assessment of the likelihood of confusion must be based on the overall
impression created by those marks, bearing in mind, in particular, their distinctive and domi132
Ensuring greater legal certainty in OHIM decision-taking abandoning legal formalism, Rhys Morgan, Journal
of Intellectual Property Law & Practice (2012) Volume 7, Issue 6: pages 408-429 at page 416.
133
Case T- 238/10, Stephanie Scatizza v OHIM and Manuel Jacinto, unpublished at para. 17, Case T-162/01,
Laboratorios RTB v OHIM and Giorgio Beverly Hills, [2003] ECR II-2821, at para. 30 to 33.
134
Case T-238/10, op. cit., at para. 18, Case C-234/06P, BRIDGE/BAINBRIDGE at para. 48, Case T-6/01, Matratzen Concord v OHIM and Hukla Germany, [2002] ECR II-4335, at para. 25.
135
Case T-388/00 Institut fur Lernsysteme v OHIM and Educational Services, [2002] ECR II-4301, at para. 51.
136
Case C-206/04, P Mulhens v OHIM, [2006] ECR I-2717, at para. 21, Case C-334/05 P OHIM v Shaker,
[2007] ECR I-4529, at para. 34 and 35.
36
nant components. 137 That global assessment means that conceptual and visual differences
between two signs may counteract aural similarities between them, provided that at least one
of those signs has, from the point of view of the relevant public, a clear and specific meaning,
so that the public is capable of grasping it immediately. 138 The assessment of any aural similarity is but one of the relevant factors for the purpose of the global assessment. Therefore,
one cannot deduce that there is necessarily a likelihood of confusion where mere phonetic
similarity between two signs is established. 139
The present case puts the emphasis on another similarity that should be avoided, the conceptual one and implicitly invites trade marks registrants to take into account the importance of
the concept borne by the sign that they propose for registration. However, the conceptual differences between their signs and the earlier trade marks will offset the other similarities, i.e.
visual and aural, only if at least one of the signs at issue has, from the point of view of the
relevant public, a clear and specific meaning so that the public is capable of grasping it immediately. This balanced appreciation is the cornerstone, both at the European and national
level, of the courts’ reasoning regarding the assessment of the likelihood of confusion between two word signs. 140 The same reasoning holds good while dealing with series of marks.
3.1. Case C- 234/06 P, [2007] ECR I-7333- BRIDGE/BAINBRIDGE
The appellant, Il Ponte Finanziaria SpA gave a notice of opposition to F M G Textiles Srl
against the registration of their Community trade marks BAINBRIDGE in Class 18 and 25.
The opposition was based on the existence of the opponent’s eleven earlier marks registered
in Italy in respect of Class 18 and/or 25, all having the common element ‘bridge’. These are
the figurative signs ‘Bridge’ (No 370836), ‘Bridge’ (No 704338), ‘Old Bridge’ (No 606709),
‘The Bridge Basket’ (No 593651), the word sign ‘THE BRIDGE’ (No 642952), the threedimensional signs ‘The Bridge’ (No 704372) and ‘The Bridge’ (No 633349), the word sign
‘FOOTBRIDGE’ (No 710102), the figurative sign ‘The Bridge Wayfarer’ (No 721569) and
lastly, the word signs ‘OVER THE BRIDGE’ (No 630763) and ‘THE BRIDGE’ (No
642953). 141
In paragraph 11 of its decision, the Board of Appeal took the view only six of the eleven earlier marks, namely the three-dimensional marks including the word element 'the bridge' (registrations Nos 704372 and 633349), the word mark FOOTBRIDGE (registration No 710102),
the figurative mark including the word element 'the bridge wayfarer' (registration No 721579),
the word mark OVER THE BRIDGE (registration No 630763) and the word mark THE
137
Case C-206/04 P Mülhens v OHIM, [2006] ECR I- 2717, at para. 19, Case C-251/95, SABEL BV v Puma
AG, [1997] ECR I-6191, at para. 23, Case C-342/97, Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel
BV, [1999] ECR I-3819, at para.25.
138
Case C-361/04 P Ruiz- Picasso and Others v OHIM, [2006] ECR I-643, at para. 20, Case C-206/04 P, op. cit.,
at para. 35, Case C-171/06 P, T.I.M.E ART v OHIM [2007] ECR I-41, at para. 49.
139
Case C-206/04 P, Mülhens v OHIM, at para. 21-22.
140
Mobilix smashes Obelix, Vivien Terrien and David Reingewirtz, Trademark World #184, February 2006,
http://www.wilmerhale.com/files/Publication/05384b72-b1bf-4b1a-9d0c1fff1454d7fb/Presentation/PublicationAttachment/e66b7c22-b425-421d-b6662414149980bb/Mobilix_smashes_Obelix.pdf, at page 13-15. Last visited on July 2012.
141
Case C- 234/06 P, BRIDGE/BAINBRIDGE, at para. 6.
37
BRIDGE (registration No 642953), could be taken into consideration in the assessment of the
existence of a likelihood of confusion. 142 On appeal to the General Court, this reasoning was
upheld. Il Ponte thus, appealed to the Court of Justice.
The Court of Justice’s guidance
− Infringement of Article 43(2) and 43(3) CTMR 143 in so far as exclusion from assessment of
the earlier mark THE BRIDGE (No. 642952)
Genuine use implies real use of the mark on the market concerned for the purpose of identifying the goods or services. Genuine use is therefore to be regarded as excluding minimal or
insufficient use for the purpose of determining that a mark is being put to real, effective use
on the market. 144 The Court of Justice found that the evidence is very limited with regard to
1994 and non-existent for the period from 1996 to 1999. 145 Further, it observed that the General Court had correctly concluded that there was no genuine use of the trade mark THE
BRIDGE (No. 642952) between June 14, 1994 and June 14, 1999, the date of the publication
of the Community trade mark application, solely on the basis of the evidence adduced by the
appellant concerning the use of that mark (a 1994-1995 autumn-winter catalogue and advertisements produced in 1995). The General Court established that the other catalogues were not
dated and therefore, the Court of Justice held that General Court was entitled to find as it did
that Il Ponte had not used the mark BRIDGE and that it should therefore, be excluded from
the comparison. 146
− Infringement of Article 15(1)(a) CTMR 147 in so far as the General Court excluded from its
assessment the earlier mark BRIDGE (No. 37836)
The Court of Justice held that the General Court did not commit any error of law in disregarding the appellant’s argument that use of the trade mark Bridge (No 370836) during the reference period was established by evidence adduced for the purpose of demonstrating use of the
trade mark THE BRIDGE (No 642952). 148 Without it being necessary to examine whether the
trade mark THE BRIDGE (No 642952) may be regarded as being different solely by reason
of elements which do not alter the distinctive character of the trade mark Bridge (No 370836),
the Court of Justice clarified that use of the former mark has not been established and cannot
therefore in any way serve as evidence of use of the latter. It was further clarified that to consider a registered trade mark as used where proof is provided of use of that mark in a slightly
different form from that in which it was registered, it is not possible to extend, by means of
proof of use, the protection enjoyed by a registered trade mark to another registered mark, the
142
Case T-194/03, Il Ponte Finanziaria v OHIM and F.M.G Textiles at para. 83.
Please refer to Appendix.
144
Case T-39/01, Kabushiki Kaisha Fernandes v OHIM and Harrison, [2002] ECR II-5233, at para. 36, Case T156/01, Laboratorios RTB v OHIM and Giorgio Beverly Hills, [2003] ECR-II-2789, at para. 35.
145
Case C-234/06 P, BRIDGE/BAINBRIDGE, at para. 74.
146
Case C-234/06 P, BRIDGE/BAINBRIDGE, at para. 76-77.
147
Please refer to Appendix.
148
Case C-234/06 P, BRIDGE/BAINBRIDGE, at para. 84.
143
38
use of which has not been established, on the ground that the latter is merely a slight variation
on the former. 149
− Infringement of Article 8(1)(b) CTMR in the assessment of likelihood of confusion with the
earlier marks considered individually
The Court of Justice dismissed the plea since the General Court was able to conclude, without
erring in law, that the conflicting marks, considered individually, did not display the minimum degree of similarity required for it to be possible to establish a likelihood of confusion
solely on the basis of the highly distinctive character of the earlier marks or of the fact alone
that the goods covered by the earlier marks and those covered by the trade mark applied for
are identical. 150 In the absence of minimum degree of similarity, the General Court can not be
criticized for having failed to apply the principle of interdependence in its overall assessment
of the likelihood of confusion. 151
− Infringement of Article 43(2) and 43(3) CTMR in so far as ‘defensive’ earlier trade marks
Il Ponte argued before the General Court that as defensive registrations were allowed under
Italian law, there was a proper reason for their non-use. Both the General Court and Advocate
General rejected this view, arguing that there was no support for such a practice under the
CTMR. 152 The Court of Justice agreed with these views and dismissed the plea.
− Infringement of Article 8(1)(b) CTMR in the assessment of likelihood of confusion in relation to the earlier marks as marks belonging to a ‘family’ or ‘series’ of marks
The Court of Justice held that under Articles 4 to 6 CTMR, a trade mark may be registered
only individually and the minimum five-year protection afforded by such registration is conferred on it only as an individual trade mark, even where several trade marks having one or
more common and distinctive elements are registered at the same time. 153
Further the Court of Justice clarified that while it is true that, in the case of opposition to an
application for registration of a Community trade mark based on the existence of only one
earlier trade mark that is not yet subject to an obligation of use, the assessment of the likelihood of confusion is to be carried by comparing the two marks as they were registered, the
same does not apply where the opposition is based on the existence of several trade marks
possessing common characteristics which make it possible for them to be regarded as part of a
‘family’ or ‘series’ of marks. 154
149
Case C-234/06 P, BRIDGE/BAINBRIDGE, at para. 85.
Case C-234/06 P, BRIDGE/BAINBRIDGE, at para. 50.
151
Case C-234/06 P, BRIDGE/BAINBRIDGE, at para. 51.
152
Keeping it in the family: Defensive marks & Genuine use, CMS Brand Review June 2009, available at
http://www.cms-cmck.com/Hubbard.FileSystem/files/Publication/523b2e48-5cc9-4a4e-a52c05cc2ec774ed/Presentation/PublicationAttachment/834757c0-c1aa-449d-ac1f-069582c406db/cmsbrandreviewjune09.pdf,at pages 22-23. Last visited on July 20, 2012.
153
Case C-234/06 P, BRIDGE/BAINBRIDGE, at para. 61.
154
Case C-234/06 P, BRIDGE/BAINBRIDGE, at para. 62.
150
39
The risk that the public might believe that the goods or services in question come from the
same undertaking or, as the case may be, from economically-linked undertakings, constitutes
a likelihood of confusion within the meaning of Article 8(1)(b) CTMR. 155 Where there is a
‘family’ or ‘series’ of trade marks, the likelihood of confusion results more specifically from
the possibility that the consumer may be mistaken as to the provenance or origin of goods or
services covered by the trade mark applied for or considers erroneously that that trade mark is
part of that family or series of marks. 156
The Court of Justice relied on the conditions laid down by the General Court and held that the
first of the abovementioned conditions is not satisfied. The only evidence produced by the
appellant during the opposition proceedings concerned the trade mark ‘THE BRIDGE’ and to
a lesser extent, of ‘THE BRIDGE WAYFARER’. Since those were the only earlier marks
whose presence on the market the appellant had proved, the Board of Appeal was right to disregard the arguments claiming protection due to ‘marks in a series’. 157
By the present judgment, the Court of Justice clarified that the simply citing Article 15(1)(a)
CTMR and defensive national registrations will not enable the right holders to rely on unused
marks and this circumvent the requirements of genuine use under the Community Trade Mark
Regulation. There is a strong indication that it is not open to the national registries to allow
defensive registrations resulting in number of marks on domestic registers in Europe which
are likely to be invalid. 158
Subsequent to the BRIDGE/BAINBRIDGE decision, the Court of Justice and the General
Court decided similar cases by assessing the likelihood of confusion with regards to a series
or family of marks in light of the two cumulative conditions laid down. Some of them are
discussed below.
3.2. Case C-552/09 P, unpublished – KINDER/ TiMi KiNDERJOGHURT
The Court of Justice referred to the established law in BRIDGE/BAINBRIDGE case that the
existence of a family or series of trade marks is an element which must be taken into account
for the purposes of assessing the likelihood of confusion. In those circumstances, the likelihood of confusion results from the possibility that the consumer may be mistaken as to the
provenance or origin of goods or services covered by the trade mark applied for and may consider, erroneously, that that trade mark is part of that family or series of marks. 159 However, it
is apparent that element is irrelevant for the purposes of assessing the existence of a similarity
between the earlier mark and the challenged mark. 160 Consequently, it is evident that it is,
only if there is some similarity between the marks at issue that the court must take into ac155
Case C-192/03 P, Alcon v OHIM, [2004] ECR I-8993, at para. 55, Case C-39/97, Canon Kabushiki Kaisha
and Metro-Goldwyn-Mayer Inc., [1998] ECR I-550, at para.29, Case C-342/97, Lloyd Schuhfabrik Meyer & Co.
GmbH v Klijsen Handel BV, at para. 17.
156
Case C-234/06 P, BRIDGE/BAINBRIDGE, at para. 63.
157
Opinion of Advocate General Sharpston, Fn. 8 supra, at para. 44.
158
Keeping it in the family: Defensive marks & Genuine use, Fn. 152 supra.
159
Case C-552/09, Ferrero SpA v OHIM and Tirol Milch Reg. Gen.Mbh Innsbruck, unpublished, at para. 97,
Case C-234/06 P, BRIDGE/BAINBRIDGE, at para. 63.
160
Case C-552/09, KINDER/TiMi KiNDERJOGHURT, at para. 98.
40
count, in the global assessment of likelihood of confusion or of a link being made between
those marks, the existence of a family or series of trade marks. 161 In so far as the General
Court found 162 that a certain number of visual and phonetic features of the signs at issue precluded them from being perceived as similar, the Court of Justice held that it could, without
erring in law, hold 163 that that finding is not called into question by the existence of a family
or series of trade marks. 164
On the contrary, the application to register the mark ULClBAN for medicinal preparations
was held to be similar to ClBA, which formed part of the series of marks registered and used
by the opponents. 165
3.3. Case T-214/04, [2006] ECR II-239- POLO/ ROYAL COUNTRY OF BERKSHIRE
POLO CLUB
Polo/Lauren Company LP filed an opposition against figurative mark applied ROYAL
COUNTRY OF BERKSHIRE POLO CLUB on the basis of its family of POLO marks. 166 The
General Court referred to the MATRATZEN case, 167 which held that a complex trade mark
cannot be regarded as being similar to another trade mark which is identical or similar to one
of the components of the complex mark unless that component forms the dominant element
within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps
in mind, with the result that all the other components of the mark are negligible within the
overall impression created by it. 168 In view thereof, the General Court noted that by taking the
figurative element as the dominant element of the trade mark sought, the Board of Appeal did
not ignore, in the comparison of the two signs from the visual point of view, the verbal element of that mark. In making the comparison, the Board of Appeal expressly took into account the way in which the words were written. The applicant’s allegation that the Board of
Appeal did not consider the trade mark sought as a whole is therefore manifestly unfounded. 169
Further, the General Court noted that the Board of Appeal correctly took the figurative element as the dominant element of the trade mark sought. The Court observed that it is the certainly the polo player, that is the figurative element, which gives the mark its distinctiveness
and which will be the most easily remembered by the consumers. By contrast, the verbal element of the mark sought, consisting of the six words written in relatively small characters
which are, because of their position in the roundel, particularly difficult to read, is negligible
in the overall impression produced by that mark. In addition, the General Court found that the
161
Case C-552/09,.KINDER/TiMi KiNDERJOGHURT, at para. 99.
Case T-140/08, Ferrero SpA v OHIM and Tirol Milch Reg. Gen.Mbh Innsbruck, [2009] ECR II-3941, at para.
55-59.
163
Case T-140/08, op. cit., at para. 63-66.
164
Case C-552/09, KINDER/TiMi KiNDERJOGHURT, at para. 100.
165
[1993]1 GLR 325, Ciba-Geigy v Torrent Laboratories, at para. 15.
166
Case T-214/04, POLO/The Royal Country Of Berkshire Polo Club, at para. 1-5.
167
Case T-6/01, Matratzen Concord v OHIM, at para. 33.
168
Case T-214/04, POLO/The Royal Country Of Berkshire Polo Club, at para. 39.
169
Case T-214/04, op. cit., at para. 41.
162
41
presence of the verbal element in the form of a roundel only emphasizes the figurative element of the mark, with the result that the figurative element’s dominance is strengthened. 170
The Court found the question whether the contested decision took account of the fact that it
was a mark of origin was irrelevant to resolution of the dispute. 171
The third argument of the applicant was that the effect of the Board of Appeal’s decision
would have the effect of conferring on the intervener, an unfair and unjustifiable monopoly
over the polo player device and would enable it to prevent any later application containing a
similar logo. The Court observed that the Board of Appeal was correct in maintaining that the
device of a polo player is intrinsically highly distinctive in relation to Class 3 goods for which
the registration is sought and which are currently covered by the earlier UK registration because in relation to those products, the device of a polo player is an image with high imaginative content. The Court regarded the device to be arbitrary for the goods in question and held
that it deserved to be protected against subsequent applications depicting confusingly similar
devices. The Court took into account that the advantage of the legal regime of the Community
trade mark lies precisely in the fact that it enables holder of earlier marks to oppose the registration of later marks which take unfair advantage of the distinctiveness or repute of the earlier trade mark. The Court however dismissed this plea holding that the regime does not confer
an unfair and unjustifiable monopoly to the proprietors of an earlier mark but protect and exploits the substantial investment made to promote the proprietor’s earlier mark. 172
The final argument of the applicant that the Board of Appeal substituted the test of likelihood
of confusion between the marks in question for a test based on the assumed degree of similarity between the marks was rejected. The General Court ruled that the existence of a likelihood
of confusion between the marks in question was correctly established by the Board of Appeal
since it took into account, in its analysis, all the factors relevant to the circumstances of the
case: partial identity or similarity of the goods, visual and conceptual similarities between the
signs, enhanced distinctiveness, both inherent and through use, of the polo player device in
the intervener’s trade mark and the existence of a family of trade marks belonging to the intervener linked to the concept of polo for goods in Class 3. 173
3.4. Case T-287/06, [2008] ECR II-3817 – TORRES/TORRE ALBENIZ
Miguel Torres SA, the applicant herein, filed a notice of opposition against Bodegas Peñalba
López SL to oppose the registration of the Community figurative mark TORRE ALBENIZ in
Class 33, pursuant to Article 8(1)(b) CTMR. 174 The earlier mark consists of the word
‘TORRES’ (meaning towers in Spanish and Portuguese) written in capital letters and positioned above a coat of arms on which are represented three towers, whereas the mark applied
170
Case T-214/04, ibid.
Case T-214/04, op. cit., at para. 42.
172
Case T-214/04, POLO/The Royal Country Of Berkshire Polo Club, at para. 43.
173
Case T-214/04, POLO/The Royal Country Of Berkshire Polo Club, at para. 44.
174
Case T-287/06, Miguel Torres SA V OHIM and Bodegas Penalba Lopez SL, [2008] ECR II-3817, at para. 6
171
42
for consists of representation of one tower under which appears the phrase ‘TORRE ALBENIZ’ written in italics and in a particular letter font. 175 The goods were identical.
The General Court found that the constant element in the earlier marks, both in word form
and figuratively, is the presence of a number of towers. 176 Apart from the word TORRE in the
plural and/or the representation of three towers, the earlier marks do not have, in a particular
and unvarying form, any characteristics capable of leading the relevant consumer to associate
the mark applied for with all of the earlier marks, conceived as a family or series of marks and
therefore, to be mistaken as to the provenance or origin of the goods covered by that mark. In
fact, both in its word form and figuratively, the TORRE ALBENIZ sign can be distinguished
from the earlier marks by its individuality and in particular by the distinctive addition of the
element ‘ALBENIZ’. 177 The word TORRE is not the dominant element in the impression
produced by the mark applied for. 178 Consequently, since the second condition referred to in
the BRIDGE/BAINBRIDGE case was not satisfied, the General Court held that the applicant’s argument based on the existence of a family of earlier marks must be rejected. Since
the conditions are cumulative, it is unnecessary to determine whether the earlier marks are
present on the market. 179
Where two marks contain a common element which is also contained in a number of other
marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish
between them by those other features. This principle, however, clearly requires that the marks
comprising the common element shall be in fairly extensive use in the markets in which the
marks under consideration are being or will be used. 180
3.5. Case T-476/09 to T-483/09, unpublished – BRICO CENTER/BRICOCENTER ITALIA
In ATB Norte SL v OHIM, 181 the General Court overturned the decisions of the Board of Appeal and found there was likelihood of confusion for similar services in Class 35 between the
conflicting marks. In 2006, Bricocenter Italia Srl applied for a series of trade marks all comprising the expression ‘BRICO CENTER’, with some figurative elements and/or additional
elements such as ‘garden’, ‘citta’, ‘affiliato’, which were opposed by the Spanish company,
ATB Norte Srl on the grounds of Article 8 (1)(b) CTMR. The General Court found the trademarks visually and phonetically similar given the common dominant element BRICO and the
words CENTER and CENTROS. From a conceptual point of view, it censored the Board of
Appeal’s findings that BRICO will be understood by most of the relevant European public as
an abbreviation for ‘bricolage’ (Do-it-yourself or hardware shops in English). It pointed out
175
Case T-287/06, op. cit., at para. 50.
Case T-287/06, op. cit., at para. 82.
177
Case T-287/06, op. cit., at para. 83.
178
Case T-287/06, op. cit., at para. 52-60.
179
Case T-287/06, , op. cit., at para. 84.
180
1996 PTC 704 (Del), Rajeev Malhotra v Amit Home Appliances where the plaintiffs’ mark SURYA FLAME
claimed to have been used in relation to LPG stoves and parts and defendants are using SURYA LAXMI for the
same goods. SURYA forms the prefix of many trade marks. No prima facie case made. Interim injunction was
refused. Also see Narayanan, Intellectual Property Law, Fn. 18 supra, at page 343.
181
Case T-476/09 to T-483/09, ATB Norte, SL v OHIM, unpublished.
176
43
that in many European languages, like Slovak (i.e. kutil) the equivalent word is very different.
Therefore, for some of the consumers, the signs cannot be compared conceptually and the
term ‘BRICO’ will not lack absolute distinctiveness for the services related to DIY. Consequently, the trade marks are overall similar and likelihood of confusion cannot be excluded
for similar services. 182
3.6. Cases pending before the Court of Justice and General Court
There are several cases pending before the Court of Justice and General Court seeking for
annulment of the decision/judgment on several grounds, including failure to consider the family or series of marks owned by the appellant.
In Union Investment Privatfonds v Unicredito Italiano SpA and OHIM, 183 it was evident that
while the Court of Justice is reluctant to interfere with the General Court’s findings of fact, it
will intervene when the General Court’s findings amount to an error of law. 184 Union Investment Privatfonds GmbH (hereinafter referred to as ‘Union Investment’) filed an appeal to
the Court of Justice seeking to set aside the General Court’s decision and to uphold the oppositions. 185 Union Investment gave a notice, pursuant to Article 8(1)(b) CTMR, of opposition
to the registration of marks applied for ‘UNIWEB’ and ‘UniCredito Wealth Management’ in
Class 36. The oppositions were based on three German registered marks; word marks ‘UNIFONDS’ and ‘UNIRAK’ and figurative mark UNIZINS registered for services in Class 36
covering ‘fund investments’. Union Investment is the proprietor of about 90 trade marks that
contain the prefix UNI associated with various elements and that the prefix which is itself of
those trade marks, constitutes a distinctive element. The Court of Justice, after hearing the
parties, was of the view that the General Court had distorted the content of the decisions and
failed to state sufficient grounds for its judgment. 186 There was no analysis of the structure of
the trade marks to be compared or of the influence of the position of their common element,
that is, the prefix ‘UNI’, on the perception that the relevant public may have of those trade
marks. 187 The Court found that the General Court could not validly conclude 188 that notwithstanding the actual use of the earlier trade marks and the presence of the prefix UNI common
to all those trade marks and to the trade marks applied for, the evidence submitted to OHIM
does not demonstrate the capacity of that prefix, by itself or in combination with other factors,
to associate the trade marks applied for with the earlier series and that the Board of Appeal
was wrong to consider that the signs at issue presented a likelihood of confusion within the
meaning of Article 8(1)(b) CTMR. 189 The Court of Justice set aside the judgment 190 and in
accordance to the second sentence of the first paragraph of Article 61 of the Statute of the
182
Do it yourself: likelihood of confusion for Brico centers, Laetitia Lagarde, available at
http://www.marques.org/class46/default.asp?D_A=20110701. Last visited on July 20, 2012.
183
Case C-317/10, Union Investment Privatfonds v Unicredito Italiano SpA and OHIM, unpublished.
184
A family affair, Sharon Daboul, available at http://www.mwtrademarks.com/wpcontent/uploads/2011/03/27_ITMA4_Uni.pdf. Last visited on July 20, 2012.
185
Case C-317/10, UNZINS/UNIWEB, at para. 23-25.
186
Case C-317/10, UNZINS/UNIWEB, at para. 44-52.
187
Case C-317/10, UNZINS/UNIWEB, at para. 57
188
Joined Cases T-303/06 and T-337/06, Union Investment Privatfonds v OHIM and Unicredito Italiano, [2010]
ECR II-62, at para. 48-49.
189
C 317/10 P, Union Investment Privatfonds v OHIM and Unicredito Italiano, at para. 61
190
C 317/10 P, , op. cit., at para. 62
44
Court of Justice of the European Union, the Court of Justice, refer the case back to the General Court for its judgment. 191 The Court of Justice emphasized that the opposition was based
on series of marks and the risk that consumers might consider later marks to be part of an earlier family should be sufficient to establish a likelihood of confusion. 192 With an identical
series of UNI marks in question, the UK Court in Unimax Trade mark, 193 held that UNIMAX
similar to UNIVAC since the marks and goods were similar.
The other cases pending before the General Court relate to series of marks having the common prefix SMART, 194 SYMBIO, 195 PROTON 196 CITI 197 and suffix OPHTAL. 198
4.
WHERE DO WE STAND IN THE EUROPEAN UNION?
The significant feature of the BRIDGE/BAINBRIDGE case is how the courts should treat an
opposition based on a family of marks, rather than on a single mark, particularly where not all
of the members of the opponent's family might yet have been used. 199 Indeed, a number of
questions surrounding the requirement of genuine use of trade marks under harmonized EU
trade mark law remain unanswered. These include, for example, the question of whether and
to what extent the owner of a registered trade mark can successfully claim that use of the
mark in an amended form or only in combination with another mark suffices to keep the mark
enforceable. If the answer to this question were negative, it would mean that the trade mark
owner would have to fear, once the five-year grace period for non-use has passed, that third
parties could file for cancellation of the mark at OHIM or the respective domestic trade mark
office of a member state.
− How are the decisions of the Court of Justice interpreted by the General courts or national
courts?
The issue of genuine use usually arises in the context of trade mark infringement, opposition
or revocation proceedings. In short, if a mark is not put to genuine use during the first five
years of registration, or for any uninterrupted period of five years, then it may become susceptible to revocation. If a trade mark applicant is threatened with opposition or infringement
proceedings by the proprietor of an earlier registration, then the applicant will, as a matter of
course, require the opponent to provide evidence of the genuine use of the earlier mark. This
serves to identify both the strength of the threat and whether or not the applicant could turn
the tables and seek revocation of the earlier registration for non-use. This would be done ei-
191
C 317/10 P, , op. cit., at para. 63
Sharon Daboul, A family affair, Fn. 184 supra.
193
[1979] RPC 469, Unimax Trade mark.
194
Case T- 648/11, Smart Technologies ULC v OHIM.
195
Case T-562/11, Symbio Gruppe v OHIM.
196
Case T-581/08, Perusahaan Otomobil Nasional v OHIM and Proton Motor Fuel Cell.
197
Case T-301/09, IG Communications v OHIM and Citigroup and Citibank.
198
Case T- 346/09, Winzer Pharma v. OHIM and Alcon.
199
Keeping it in the family, Jeremy Philips, available at http://ipkitten.blogspot.com/2007/04/keeping-it-infamily.html. Last visited on July 20, 2012.
192
45
ther to clear the way for its own registration/use or to provide some leverage in negotiating a
settlement. If a mark has not been genuinely used, then it may be effectively unenforceable. 200
There is an abundance of case law on what constitutes genuine use, some of them discussing
the degree of market penetration required and whether mere advertising will suffice in the
absence of actual sales. A particularly rich and convoluted thread has concerned whether the
use of a registered trade mark, either in combination with other elements as a composite mark,
or in slightly altered form, will constitute genuine use of the mark as registered. 201
The essential question as to whether a mark is put to genuine use in composite or altered form
is whether the addition or change of the elements concerned has altered the distinctive character of the mark in the form in which it was registered. If the additional element is descriptive
rather than distinctive, then use of a composite mark is likely to constitute genuine use of the
component mark. 202 So, for example, in the NIRVANA case 203, the UK Appointed Person
had to consider whether NIRVANA NATURAL was use of NIRVANA (the registered mark)
for cosmetic products. The mark NIRVANA (alone) had not been used. He found that NIRVANA NATURAL did not differ materially from NIRVANA (NATURAL describing the
product) and therefore this use was use of NIRVANA. 204
Where matters become more complicated is when the altered form of the registered mark is
itself a distinct registered trade mark. The Court of Justice has held in the
BRIDGE/BAINBRIDGE decision that the use of a variant form of a trade mark, where it has
been registered, did not constitute genuine use of other registered variants. The Court of Justice’s underlying concern was that the protection enjoyed by one registration should not
automatically extend to other similar registrations whose use has not been established, as this
would allow trade mark owners to swamp the register with families of marks which they did
not actively use but for which they could claim genuine use by extension (commonly referred
to as defensive registrations). 205 The CTMR does give the right holder a window of five
years within which the trade mark must be put to genuine use. In order to achieve the aim of
protection of the trade mark owner’s rights who actually use the mark, there is no logical explanation to protect marks which are never intended to be used. Article 8 and 9 CTMR empowers registered right holders to prevent registration and use by third parties of marks identical or similar to their marks for identical or similar goods or services. A right holder is not
thus allowed to crowd the register with marks they do not intend to use.
The next section would give an overview of the clarifications required and the practical consequences of the principle of genuine use established by BRIDGE/BAINBRIDGE decision.
200
Genuine trade mark use, Gavin Stenton and Rachael Parman, available at
http://www.lexology.com/library/detail.aspx?g=30001bf2-9a22-4f5f-a260-edb72a8c6644. Last visited on July
20, 2012.
201
Gavin Stenton and Rachael Parman, Genuine trade mark use, ibid.
202
Ibid.
203
BL O/030/06, NIRVANA, available at http://www.ipo.gov.uk/types/tm/t-os/t-find/t-challenge-decisionresults/o03006.pdf. Last visited on July 20, 2012.
204
Gavin Stenton and Rachael Parman, Genuine trade mark use, Fn. 200 supra.
205
Ibid.
46
4.1. Germany
Up until the Court of Justice’s decision in the BRIDGE/BAINBRIDGE case, it was the common understanding, at least in German trade mark circles, that use of a registered trade mark
in a slightly altered form was genuine use, even if this amended form was also registered as a
separate mark, since it is specifically says so in Section 26(3) of the German Trade Mark Act.
The German Federal Court had repeatedly found in favour of indirect likelihood of confusion
under the aspect of a series of marks where the trade mark owner had simply provided proof
of a number of registrations containing the same element, without however, requiring proof of
actual use of those registrations and where effectively only one of them had been used - as in
the BULL CAP case 206 in 2005, where Red Bull had opposed the registration of the BULL
CAP mark on the basis of its earlier registrations of not only RED BULL and BULL, but of a
total of 36 marks containing the element BULL (though none of these appeared to be used).
The decision was later confirmed by the German Federal Court. Generally, the existence of a
trade mark series is rather difficult to establish in court, as it marks an exception from the
generally accepted principle that two specific marks have to be compared and the younger
mark has to be confusingly similar to the older mark in order to confirm likelihood of confusion. If there is no such direct likelihood of confusion, courts are generally reluctant to base
claims on marks in respect of which there is no such likelihood of confusion - that is, unless
there is actual proof on the existence of a true trade mark series. 207
The principle apparently established by the BRIDGE/BAINBRIDGE decision, that the use of
a slightly altered form of a registered trade mark will constitute genuine use if the altered
form is unregistered but will not if it has been registered, is rather counter-intuitive and there
is some confusion as to how far the principle may extend. Furthermore, the decision appears
to specifically contradict German national law, as the German Trade mark Act expressly
states that use of a registered altered form will constitute genuine use of the original mark. 208
This led the German Federal Supreme Court to refer several questions regarding the interpretation of EU trade mark law to the Court of Justice in PROTI 209 and Levi Strauss Flag Design
II case. 210 The Court of Justice has yet to give their ruling on these cases.
The claimant in the first case owned the registered mark PROTI and claimed that the defendant’s use of PROTIFIT was infringing. The defendant responded by alleging that there was
no genuine use of the mark PROTI and therefore, should be revoked. The claimant had only
used PROTI POWER and PROTIPLUS, which were registered separately. The German Court
of Appeal decided in favour of the defendant taking into account BRIDGE/BAINBRIDGE
decision. The case was further appealed to the German Supreme Court.
206
I ZB 48/05, available at http://juris.bundesgerichtshof.de/cgibin/rechtsprechung/document.py?Gericht=bgh&Art=en&sid=acf53a52ae4cd7338b1f6ce433026913&client=%5
B%2713%27%2C+%2713%27%5D&client=%5B%2713%27%2C+%2713%27%5D&nr=34815&pos=1&anz=2
&Blank=1.pdf. Last visited on July 20, 2012.
207
Marc Putz-Poulalin, ECJ endorses the Concept of Trademark Series, Fn. 43 supra.
208
Gavin Stenton and Rachael Parman, Genuine trade mark use, Fn. 200 supra.
209
I ZR 84/09
210
I ZR 206/10
47
The German Supreme Court observed that the restriction of genuine use envisaged by the
BRIDGE/BAINBRIDGE decision was unsatisfactory and not in keeping with the Trade Mark
Directive. It could deter trade mark owners from legitimate revision of their marks. There was
no obvious reason why a trade mark registrant should lose the priority and economic value of
an existing registration simply because it wished to refresh its branding in keeping with the
times. 211
The German Supreme Court took the view that restriction on what constitutes genuine use can
not apply to marks that the owner legitimately wants to adapt (eg. by modernising a mark and
amending it to respond to a perceived change in consumers’ taste). If the use of such a modernised and registered form of the mark could not constitute genuine use of the former version
at the same time, the trade mark owner would lose the priority of the older mark. The older
mark also could have significant economic value and this value would be destroyed once the
older mark loses protection because of the alleged non-use. This result could be avoided only
by not filing the modernised version of the mark for separate registration. Such a strategy
would be risky as well, as a court might find that the modernised version of the mark is outside the boundaries of Article 10(2)(a) of the Trade Mark Directive (or Article 15(1)(a)
CTMR) and that the (older) registered version is subject to cancellation for non-use. A narrow
interpretation of this provision thus, would potentially damage the economic value in a wellestablished mark and deter the trade mark owner from modernising valuable marks. In the
Supreme Court’s opinion, this cannot have been the intent of the authors of the Trade Mark
Directive. 212
The German Supreme Court also observed that a narrow interpretation of genuine use would
also lead to a higher threshold when establishing a family of marks with a common element.
Especially in the launch period, it is very important for the trade mark owner to have the
common element protected – even if that element is not used on its own (but only in other
variants, with additional elements). This is because in the launch period the separate marks
may have limited presence in the marks and therefore may not yet fulfil the requirements for
supporting a family of marks with a common element argument. 213
Moreover, the German Supreme Court noted, a narrow interpretation of the requirement of
genuine use would seem to be inconsistent with the Court of Justice’s case law concerning
distinctiveness. In its decision in AIRE LIMPIO/ARBRE MAGIQUE 214, the Court of Justice
ruled that a trade mark can acquire distinctiveness through use of another registered trade
mark of which it constitutes an element. It would be contradictory if the Court of Justice allowed registration of such a mark and later withdrew protection for lack of genuine use based
on the argument that there was no use of the mark in question, but only use of another regis211
Gavin Stenton and Rachael Parman, Genuine trade mark use, Fn. 200 supra.
Genuine use of trade marks in the EU: New referrals to the Court of Justice by the German Federal Supreme
Court, Alexander R Keltt and Kathrin Schuleter, INTA Bulletin March 1, 2012 Volume 67 No. 5, at page 4-5,
available at
http://www.inta.org/INTABulletin/Pages/GenuineUseofTrademarksintheEUNewReferralstotheCourtofJusticebyt
heGermanFederalSupremeCourt.aspx. Last visited on July 20, 2012.
213
Ibid.
214
Case C-488/06 P L & D SA v OHIM and Julius Samann Limited, [2008] ECR I-5725, at para 49
212
48
tered mark that contained the mark in question. 215 A referral has therefore been made to the
Court of Justice.
The second case concerns the jeans manufacturer Levi Strauss & Company, or Levi’s. Levi’s
owns a ‘position mark’ comprising a blank red tag affixed to the back pocket of Levi’s jeans.
This is a concept born in Germany – essentially covering marks which are not in themselves
sufficiently distinctive to be registered but which when placed on a specific part of the product in a specific size, proportion or contrast may be capable of registration. 216 Levi’s claimed
that a retailer’s use of a similar tag infringed its registration to which the retailer response was
that Levi’s were not genuinely using the blank ‘red tag’ mark as registered, but only using it
in a different, registered form – a combination mark comprising the red tag with the word
‘Levi’s’ on it. 217 The German Supreme Court considered that Levi’s ‘blank’ registration was
not merely defensive – Levi’s had a genuine interest in protecting the individual elements of
its combined mark separately, where neither part was obviously dominant, in order to prevent
infringement by parties using only part of the combined mark. However, this ran contrary to
the BRIDGE/BAINBRIDGE interpretation of genuine use, so the German Supreme Court has
again, referred the question to the Court of Justice. 218
The German Court made it clear in its referral decision, that the trade mark owner has a legitimate interest in separately registering parts of a mark that are perceived by the relevant
consumers as independent marks, As a consequence, it took the view that the combined use of
marks must also comply with Article 10(2)(a) of the Trade Mark Directive (or Article
15(1)(a) CTMR). The Supreme Court pointed out that the trade mark owner’s interest in effective enforcement of its marks needs to be taken into account. If the trade mark owner obtains registration of the combination mark only, he may not be able to show infringement by a
third party using only a part of the combination mark if such part is not dominant in the combination mark. If the trade mark owner enjoys separate protection for elements of the combined mark, there will be a greater likelihood of confusion can be found if one of these elements is contained in the designation used by the infringer. 219
The German view is that the BRIDGE/BAINBRIDGE interpretation of genuine use is fairly
narrow and could affect the validity or enforceability of swathes of trade mark registrations
throughout the European Union. The general view is that the approach to genuine use in Germany has historically been much broader and therefore, friendlier to trade mark owners. Thus,
the endorsement of the German approach by the Court of Justice would certainly have significant Europe-wide ramifications. 220
Another example where the German courts have not interpreted the cases in accordance to the
ruling of the Court of Justice. The German Court ruled in favour of the Les Editions Rene
Albert due to the likelihood of confusion prompted by the visual and aural similarities be215
Alexander R Keltt and Kathrin Schuleter, Genuine use of trade marks in the EU, Fn. 212 supra.
Gavin Stenton and Rachael Parman, Genuine trade mark use, Fn. 200 supra.
217
Ibid.
218
Ibid.
219
Alexander R Keltt and Kathrin Schuleter, Genuine use of trade marks in the EU, Fn. 212 supra.
220
Gavin Stenton and Rachael Parman, Genuine trade mark use, Fn. 200 supra.
216
49
tween the two signs MOBILIX and OBELIX, This decision runs contrary to the OBELIX/MOBILIX judgment. 221 Both, the German Lower Court and the Appeal Court, found
these trade marks as highly similar. The judges of the Lower District Court ruled that the conceptual idea of mobility attached to the sign MOBILIX counteracted the visual and aural similarities justifying that, before any risk of confusion would occur, the average consumer would
understand the differences between both signs. The Munich Court of Appeal, which also recognized the existence of the concept of mobility associated with MOBILIX, considered that
the ‘ix’ suffix in MOBILIX had emptied the word of its mobility concept. Therefore, it prevented the conceptual differences to counteract the aural and visual similarities, since only
one concept, the one attached to OBELIX, remained. 222
4.2. Italy
The BRIDGE/BAINBRIDGE decision rejected the idea of defensive trade mark to justify its
non-use, a very common practice in Italy regulated by Article 24 of the Italian Industrial
Property Code. The result of the ruling indicates difficulties for the trade mark owners who
have relied on the national provision of defensive registration over the years and not used the
marks.
4.3. Poland
According to a Polish Supreme Court Administrative ruling of June 11, 2008, directly referring to the BRIDGE/BAINBRIDGE decision, the existence of a family of marks may increase
distinctiveness and result in greater protection of the whole series of marks. The Polish Court
decided that the word graphic mark ‘1000 crosswords’ (being part of a family of marks) was
an obstacle to registering the word graphic mark ‘100 crosswords with a smile’. The proprietor of the registered trade mark had a family of similar marks in which only the number element differed. The use of a similar number element in a similar way might have therefore led
to a risk of confusion. 223
On 29 October 2009, the Polish Patent Office (hereinafter referred to as ‘PPO’) registered the
word-figurative trade mark RED PUMA ENERGY DRINK for goods in Class 32 such as
energy drinks. Red Bull GmbH filed a notice of opposition against the decision of the PPO.
Red Bull claimed that RED PUMA ENERGY DRINK is similar to series of its trade marks
and infringes on the Red Bull’s reputation. On 8 September 2009, the PPO granted the right
of protection for the word-figurative trade mark ICE COOL ENERGY DRINK for goods in
Class 32, such as non-alcoholic beverages and energy drinks, to which Red Bull yet again
opposed. The Adjudicative Board of the PPO in its decision of 11 July 2012 224 dismissed the
opposition against RED PUMA ENERGY DRINK and in its decision of 13 July 2012; 225 the
221
Case C-16/06 P, Les Editions Albert Rene v OHIM and Orange A/S.
Vivien Terrien and David Reingewirtz, Mobilix smashes Obelix, Fn. 140 supra.
223
Keeping it in the family: Defensive marks & Genuine use, Fn. 152 supra.
224
Case no. Sp. 476/11.
225
Case no. Sp. 479/11.
222
50
PPO dismissed the opposition against the trade mark ICE COOL ENERGY DRINK. Both
decisions are not final yet. 226
4.4. France
The main issues at stake in the Court of Justice ruling regarding the family of marks or justification of non-use because of defensive marks are irrelevant arguments before the French
Courts. In fact, the main effect of the decision was a turnaround in the French case law regarding the issue of revocation of a trade mark for non-use when another similar trade mark is
being used and that mark is registered. Initially, the French Supreme Court decided that the
use of a registered mark is similar to another registered mark can not be opposed to challenge
a claim in revocation for non-use. In 2006, the French Supreme Court changed its position
and ruled that the fact that the used trade mark is also a registered mark is irrelevant to decide
if the non-used trade mark should be revoked or not revoked for non-use. Pursuant to the
BRIDGE/BAINBRIDGE case, the French Courts tend to decide that the proprietor cannot
prove the use of a registered trade mark by giving evidence of the use of another similar registered mark. 227
4.5. The UK
Whilst the Community Trade Mark regime does not have the same explicit requirement for a
bona fide intention to use the mark being registered, the Court of Justice is in keeping with the
stricter approach taken by the IPO on the subject of defensive registrations and intention to
use the mark. The ruling means that the trade mark proprietors holding older registrations that
have never been used, will find that they are not only likely to be vulnerable to revocation, but
also of limited or no value in supporting an opposition. The same requirement to show use of
a registration more than five years old applies to oppositions under the UK national system. 228
226
Red Bull fights, Tomasz Rychlicki, available at
http://www.marques.org/class46/default.asp?D_A=20120719#2905. Last visited on July 20, 2012.
227
Keeping it in the family: Defensive marks & Genuine use, Fn. 152 supra.
228
Ibid.
51
PART THREE
Since the previous chapters have been theoretical and arouse several practical questions, the
following section will study the series in a more realistic environment. This part studies how
the companies have created their family of marks. After scrutinizing the strategies adopted by
companies which have established a recognizable family or series of marks and relevant case
law, the thesis concludes by emphasizing the importance of use of series of mark and measures to be adopted by a proprietor of a series of marks in order to secure its future.
5.
IT HAS SURE TAKEN TIME BUT THEY HAVE THE RIGHTS
It is obvious that the right holder has to invest a huge amount of time and effort in order to
strategize and create a Court-approved family or series of marks. The following chapter explores how three companies have achieved it.
5.1. MC DONALD’S FOOD FACT
One of the best examples of registration and enforcing its rights of trade mark series is to look
at the strategy of McDonald’s Corporation and how the company created its family of trade
marks. Initially, it sought an injunction against a bagel bakery and restaurant that began using
‘McBagel’ as its name in 1984. The US Courts recognized that McDonald’s Corporation had
registered over 20 ‘Mc’ trade marks including EGG McMUFFIN and McMUFFIN and spent
hundreds of millions of dollars in advertising annually including a series of ‘Mc’ language TV
ads in 1976, which described the restaurant as the McFrendliest and McGreatest. The Court
also noted that roughly one-third of consumers surveyed in New York State thought McBagel
was sponsored or promoted by McDonald’s. The US Court granted the injunction noting that
McDonald’s did not claim rights to all ‘Mc’ trade marks but only those where ‘Mc’ was
coupled with a generic food name. 229
However, less than a year after this decision, Quality Inns announced a new chain of economy
hotels to be called ‘McSleep Inns’. Quality Inns took the initiative to seek a declaratory judgment that its new name neither infringed nor diluted McDonald’s trade marks, but it lost and
was permanently enjoined from using the name ‘McSleep Inns’. 230 It seems clear that the US
Court was influenced by its perception that this was a deliberate effort to free ride on the
McDonald’s brand and its brand values of convenience, consistency, service and value. This
court recognized that the McDonald’s brand spread beyond fast food with such registered
trade marks as McKids (clothing), McStop (travel service plazas), Mcjobs (job programs),
McClass (computer software) and McShuttle (ground transportation). It even calls its headquarters hotel McLodge. The Court also carefully considered unlicensed third-party uses of
similar trade marks including McQuick for oil change operations; McPrint for print shops was
coupled with a generic food name, McHappy for baked goods and McMaid for maid services.
All of these examples operated at multiple locations. It further noted popular press uses from
McPaper (for USA Today) to McGod (TV evangelism). The US Court concluded that allow229
Naming names: Part three-Safeguarding brand equity in the United States by developing a family of trademarks, Ross D Petty, Journal of Brand Management (2010) Volume 17 No. 8 at page 561–567.
230
649 F. Supp. 1268, Quality Inns International v. McDonald’s Corporation, Fn. 58 supra.
52
ing some unlicensed commercial uses did not weaken the family of marks nor prohibit
McDonald’s from enforcing its rights in this case. The many references in the popular press
all were comparisons to marks of McDonald’s Corporation and did not render its trade marks
generic. Lastly, it noted that hotels were a related industry to restaurants and therefore it enjoined any use of ‘McSleep Inns’ regardless of how distinctively it might be presented. 231
Five years later, McDonald’s won an injunction in a completely unrelated industry. A dental
practice had been using the name ‘McDental’ since 1981, but McDonald’s did not learn of
this usage until 1987 after a second location had opened in 1985. After unsuccessful negotiations, McDonald’s sued. A finding of a strong family of marks was straightforward as McDonald’s Corporation had won all of its prior lawsuits including an appellate court decision affirming denial of trade mark registration for ‘McSnack’. Despite evidence that McDonald’s
Corporation sometimes promoted dental cleaning and gave away toothbrushes in its Happy
Meals, the Court found the two industries to be completely unrelated. Nevertheless, based on
the strength of the McDonald’s trade marks, survey evidence that showed 30 per cent of respondents associated with the two businesses and the denial by the founding dentists that they
intended to capitalize on the McDonald’ s name, which the court held lacked credibility, the
court enjoined use of the name ‘McDental’.
By 1995, according to records in a case in which TTAB refused to register McClaim’s Legal
Services with a slogan ‘Fast Food Justice’, McDonald’s Corporation had expanded its licensing program to include the formerly unlicensed uses of McClass, McJobs and McShuttle. It
also now licensed similar ‘Mc’ trade marks in a many disparate industries including:
‘McClip’ for haircutting services; ‘McCash’ for financial services; ‘McD’ for cleaning products; ‘McBucks’ for redeemable certificates; ‘McBunny’ for toys; ‘McMatch’ for games;
‘McShirt’ for clothing; ‘McGift Shop’ for retail store services; ‘McHat’ for hats; ‘McLots of
Fun’ for stage productions; ‘McMasters’ for recruiting elderly employees; and ‘McBear’ for
stuffed toys. ‘McKids’ was now licensed for children’s clothing sold at Sears’s retail stores.
McDonald’s has undoubtedly quietly challenged and settled with numerous other ‘Mc’ trade
mark users such as ‘McCoffee’ , ‘ McSushi’ and ‘McDharma’ in California as well as
‘McMunchies’ in England. 232
McDonald’s Corporation has had only mixed success in other countries. Over the years,
McDonald’s has vigilantly sought protection worldwide for its ‘McLanguage’ brand naming
system. 233 In that effort, McDonald’s has been successful in some proceedings opposing third
parties’ applications to register marks involving the “Mac/Mc’ prefix, but it has failed in others.
A recent illustrative decision in Singapore denied McDonald’s exclusive rights over the use
and registration of its “Mac/ Mc’ prefix marks. The legal battle between McDonald’s and a
small Singapore company, Future Enterprises Private Limited lasted almost a decade, finally
231
Ross D Petty, Naming names, Fn. 229 supra.
Ibid.
233
See the entire list of cases filed by McDonald’s Corporation, available at
http://en.wikipedia.org/wiki/McDonald's_legal_cases. Last visited on July 20, 2012.
232
53
coming to an end in November 2004. Ironically, while the court acknowledged the ubiquitous
nature of McDonald’s brand, marketers should note that McDonald’s widespread reputation
was also the very reason the Singapore Court found that confusion or deception is unlikely to
arise. 234
The Canadian Federal Court held that despite McDonald’s reputation in the fast-food business, there was nothing inherently distinctive about the McDonald’s marks once they were
viewed outside of the McDonald’s business model or area. Hence, McDonald’s was not allowed to claim exclusivity over the use of the ‘Mac/Mc’ prefix.
In the UK, McDonald’s succeeded in preventing registration of the mark ‘McIndians’, where
the third party registrant sold not only Indian food but also fried chicken, French fries and
burgers—items typically sold in McDonald’s fast-food restaurants. By contrast, in a 2001
case involving the mark McChina, McDonald’s failed in its effort to exert exclusivity. It is of
relevance that the McChina restaurant sold only Chinese food, which McDonald’s does not
offer.
The Australian Trade Mark Office has held that the marks ‘McSalad’ and ‘McFresh’ were
deceptively similar to McDonald’s family of ‘Mc’ prefixes. It ruled contrary when it came to
‘McMint’ for confectionary and ‘McVeg’ for vegetable-based burgers. 235
As one can see, there are three factors which appear to be the fundamental considerations in
the various McDonald’s decisions: (a) common fields of business activities, (b) the degree of
similarity of the rival marks taken as a whole instead of just the naming system per se and
finally, (c) any evidence of confusion or deception of the public. When viewed in total, the
McDonald’s international trade mark protection experience holds a number of important implications for international marketing. First, right holders who face naming decisions for new
products, sub-brands and brand extensions should diligently consider selecting prefixes
commonly found across diverse types of businesses and in different countries, for example,
the potential exclusivity of terms like ‘bio-,’ ‘micro-,’ and ‘best-,’ as well as alphabet prefixes
such as ‘A-’ and ‘X-.’ Second, while there is no denying the advantages of family productnaming systems in terms of transfer of brand associations, right holders need to be well aware
that the naming system can also act as an Achilles’ heel in that it is open to imitators from
other types of businesses. Third, the fact that the courts have looked to core businesses to base
their decisions in the McDonald’s trade mark cases implies the need for right holders to concentrate on creating a high level of product name awareness in their promotional strategies. 236
McDonald’s Corporation has not only protected its brand equity and indeed its brand personality of convenience, consistency, service and value from infringement by competitors, but
has also turned its family of trade marks into a profit center by licensing ‘Mc’ trade marks to
234
Marketing and the Law: Seeking Exclusivity over a Brand Naming System? The McDonald’s Experience,
Ann Morales Olazabal, Anita Cava and Rene Sacasas, Journal of the Academy of Marketing Science January
2006 Volume 34 at page 184-185. Also see [2004] SGCA 50 (Singapore Court of Appeal) McDonald’s Corporation v Future Enterprises Private Limited.
235
Ann Morales Olazabal, Anita Cava and Rene Sacasas, Market and the Law, ibid.
236
Ibid.
54
firms in noncompeting industries. While some firms may approach McDonald’s for a license,
it also seeks out firms using unlicensed ‘Mc’ brand names and offers to register the trade
mark they are using and license it back to them on reasonable terms. 237 TOYS ‘R’ US and
Citigroup seems to be following a similar strategy.
5.2. TOY STORY
In the early 1980s, toy retailer TOYS ‘R’ US successfully sued a clothing retailer doing business as KIDS ‘R’ US. The Court enjoined the use of this name finding both, likelihood of
confusion for infringement and dilution under the New York statute. TOYS ‘R’ US then, began using the KIDS ‘R’ US mark for both children’s apparel and retail stores that same year
and sought registration for apparel in 1983 and stores in 1989. Since then, it has registered
numerous similar marks such as SPORTS ‘R’ US, PETS ‘R’ US, BABIES ‘R’ US and even
GOODIES ‘R’ US, the latter being used for toy vending machines in the TOYS ‘R’ US
stores.
It also has successfully litigated against companies using ‘Guns Are Us, Phones-R-US and
Adults ‘R’ US’ as trade names and opposed registration of similar marks ‘Loans ‘R’ US and
Flowers ‘R’ US’ before TTAB. Many others ‘R’ US marks that have been filed have simply
been abandoned including Beds, Pets, Dollars, Loans, Feets and Homes ‘R’ Us. Lastly, the
company obtained a court order transferring the domain names ‘toysareus.com and kidsareus.com’.
5.3. CITI GROUPed
Although the majority of the relevant likelihood of confusion favoured an opposer, the US
Courts affirmed TTAB’s denial of an opposition filed by opposer, Citigroup Inc. against four
service mark application filed by Capital City Bank in Citigroup Inc. v Capital City Bank
Group Inc. 238 Citigroup began using the mark CITIBANK in 1897 and adopted ‘Citibank’ as
its official company name in 1967. Citigroup owns multiple federally registered trade marks
for financial services containing the CITI prefix, including CITI, CITICORP and CITIBANK.
Many of Citigroup’s registrations have become incontestable and the CITIBANK brand has
been recognized as one of the most valuable brands in the world. Capital City Bank Group
applied to register four marks, including CAPITAL CITY BANK, CAPITAL CITY BANK
INVESTMENTS, CAPITAL CITY BANK GROWING BUSINESS and CAPITAL CITY
BANC INVESTMENTS. As standard character marks, the applications were not limited to a
particular font style, size, color or design element. Citigroup filed a notice of opposition with
the TTAB against each of Capital City’s applications, alleging likelihood of confusion with
and likelihood of dilution of its CITIBANK marks. The TTAB treated all four applications as
one for evaluating likelihood of confusion under the DuPont factors. 239 The TTAB found that
four of the six relevant factors favored Citigroup, namely, the fame of the CITIBANK marks,
237
Ross D Petty, Naming names, Fn. 229 supra.
Case No. 10-1369 (Fed. Cir., March 28, 2011), Citigroup Inc. v. Capital City Bank Group Inc.
239
The DuPont Factors: The Trademark Infringement Test Explained, Clifford D. Hyra, available at
http://documents.jdsupra.com/a3a17e09-01de-4ead-b820-e75373997560.pdf. Last visited on July 20, 2012.
238
55
the similarity of the parties’ financial products and services, the similarity of the parties’ trade
channels and the similarity of the parties’ target customers. However, the TTAB determined
that no likelihood of confusion or dilution would result from registration of Capital City’s
marks because the two remaining DuPont factors, i.e., the nature and extent of any actual confusion and the similarity of the marks, favored applicant Capital City. 240
The US Court thus, allowed the co-existence of Citigroup’s family of marks and City Holding’s series of composite marks. Although the first part of each set of marks sounds the same,
they had co-existed for a long time and were well differentiated in presentation. The unusual
spelling of the ‘CITI-’ prefix caused the public to recognize all of these marks as identifying a
common source or single brand and therefore the Court found that Citigroup enjoyed a family of brands. However, the public did not recognize that the various ‘CITY’ trade marks all
came from a single source and formed a common brand because ‘city’ is a common word. It
is pertinent to note that City Holdings did not enjoy a family of brands but was still successful
in this litigation. 241
In Europe, Citigroup has been more successful. Citibank Group Inc. and Citibank NA filed an
opposition against figurative mark ‘CITI’ applied for by Citi SL for services in Class 36. 242
The General Court reflected the three perquisites of Article 8(5) CTMR 243 were cumulative
and failure to satisfy one of them is sufficient to render the remaining provisions inapplicable. 244 The General Court found that the reputation of the mark CITIBANK satisfied the
second condition, without it being necessary to ascertain whether that is also the case for the
other marks. 245 The General Court further noted that the similarity found to exist between the
marks at issue is sufficient for the public to be able to establish a link between them, as is required for the application of Article 8(5) CTMR, bearing in mind, in that regard, that a likelihood of confusion is not required for that purpose. 246 In those circumstances, the General
Court held that there is a high probability that the use of the trade mark applied for, CITI, by
customs agencies and therefore for financial agency activities in the management of money
and real estate for clients, may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark CITIBANK and the considerable
investments undertaken by the applicants to achieve that reputation. That use of the trade
mark applied for, CITI, could also lead to the perception that the intervener is associated with
or belongs to the applicants and therefore, could facilitate the marketing of services covered
by the trade mark applied for. That risk is further increased because the applicants are the
holders of several trade marks containing the component ‘citi’. 247 Finally, the General Court
240
No likelihood of confusion or dilution between CITIBANK and CAPITAL CITY BANK, Paul Devinsky,
available at http://www.mwe.com/index.cfm/fuseaction/publications.nldetail/object_id/e7c6fe2d-33d2-469a91ff-b7c8c52a1717.cfm#12. Last visited on July 20, 2012.
241
Ross D Petty, Naming names, Fn. 229 supra.
242
Case T-181/05, Citigroup, Inc., Citibank, NA v OHIM and Citi SL, [2008) ECR II-669.
243
Please refer to Appendix.
244
Case T-181/05, Citigroup, Inc., Citibank, NA v OHIM and Citi SL at para. 60-61. Also see Case T-67/04 Spa
Monopole v OHIM and Spa Finders Travel Arrangements, [2005] ECR II-1825, at para. 30, Case T-137/05 La
Perla v OHIM and Worldgem Brands, [2007] ECR II-47, at para. 26.
245
Case T-181/05, Citigroup, Inc., Citibank, NA v OHIM and Citi SL, at para 62-63.
246
Case T-181/05, Citigroup, Inc., Citibank, NA v OHIM and Citi SL, at para. 67-74.
247
Case T-181/05, Citigroup, Inc., Citibank, NA v OHIM and Citi SL, at para 83.
56
took the view that the intervener has failed to produce evidence that the use of the trade mark
applied for complies with the due cause rule. 248 By the same token, the fact that the intervener
is the owner of domain names ‘citi.es’ is irrelevant. 249 The General Court annulled the Board
of Appeal’s decision. 250
6.
SECURING THE FUTURE
Although some brand owners believe they own a legally protectable family of marks, the truth
is that they have not taken the proper steps required under trade mark law to establish a family of marks. Reviewing the success and shortcoming of the litigating parties, evaluating articles and discussions by eminent authors and practitioners, guidelines and manuals published
by the Trade Mark Offices and International Trade Mark Association, the subsequent section
reflects on circumstances where trade mark owners have been successful or unsuccessful in
gaining legal recognition for their trade mark series and some of the measures the owners can
take to increase the probability that a Court or Trade Mark Office recognize their series of
marks. The measures are additional precautions to the measures taken for the individual trade
mark registration.
− What measures does the proprietor of a trade mark series undertake to obtain adequate
protection for his trade mark series?
As outlined in the above discussion, a party seeking to establish a family of marks should
submit evidence demonstrating that the marks that are asserted to creating the family have
been used and advertised in such a manner that consumers have come to recognize that the
family characteristic is indicative of a common origin of the goods. Further, the evidence
should establish that the family feature is distinctive, whether inherently or through the acquisition of secondary meaning in relation to the goods. A family of marks generally will not be
found to exist, where the asserted family element is descriptive or common term that does not
function as a distinguishing feature of the marks in question. 251
6.1. Use and recognition by public
In deciding questions of likelihood of confusion, courts must often place themselves ‘in the
position of an average purchaser or prospective purchaser in an attempt to understand what
the normal reaction would be to the marks as they are encountered in the marketplace or in
promotional and advertising material.’ Thus, the proponent must show by competent evidence: (1) that prior to the entry into the field of the opponent’s mark, all or many of the
marks in the alleged family were used and promoted together in such a way as to create a public perception of the common element as an indication of common source; and (2) that the
common element is distinctive. Because the proponent must prove use and promotion, evi-
248
Case T-181/05, Citigroup, Inc., Citibank, NA v OHIM and Citi SL, at para. 84.
Case T-181/05, Citigroup, Inc., Citibank, NA v OHIM and Citi SL, at para. 85.
250
Case T-181/05, Citigroup, Inc., Citibank, NA v OHIM and Citi SL at para. 86.
251
Sheldon, Trademark Families, Fn. 45 supra.
249
57
dence in the nature of sales and advertising expenditures is often crucial to the court’s determination of whether a family of marks exists. 252
6.1.1. Look before you leap − Filing trade mark application
The Court of Justice’s judgment clearly recognized the explicit existence of the two respective concepts included in MOBILIX and OBELIX. Moreover, it found that OBELIX had such
a clear and specific meaning that it was capable of being immediately grasped by the average
consumer. As a result, the Court of Justice found that the conceptual differences did counteract the aural and visual similarities and therefore concluded that there was no risk of confusion within the meaning defined as being the risk that the public might believe that the goods
or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings. 253 This decision follows the trend observed in the Court’s case law
towards the acknowledgement of the better awareness of the European consumer with regard
to the signification of marks. If, in an always more consumption-oriented society, the risk of
confusion is increased, it is counterbalanced by the faculty of the consumer to be more alert.
Lastly, the OBELIX/MOBILIX judgment offers more legal certainty to prospective right
holders since, by its decision, the Court of Justice implies that the clearer and more tailormade the concept of a brand will be, the easier it will be to justify and defend the absence of
confusion with an existing trade mark. 254
The KINDER/ TiMi KiNDERJOGHURT decision illustrate a problem that frequently arises
with word-and-device marks. The scope of trade mark protection in such cases will always be
limited by the fact that it is the visual image of the device that is registered rather than the
word element itself, while the word element is the usual means by which the consumer refers
to the product. 255 It is thus, very difficult to compare similarity between the signs when it
comes to one being a figurative mark and the other being a word mark. 256 The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the graphic or stylistic characteristics which that mark might possess.257
Although it is always advisable that if the trade mark incorporates a logo and wording which
are separable, file individual trade mark applications for the word mark and logo. The advantage of this approach is that the scope of protection offered by the two registrations would be
broader than a single registration of the words and logo in combination thus giving the right
holder a stronger position in opposing the use and registration of marks which are similar either to its logo or to the words. However, there shall be an increase in the costs and greater
likelihood of confusion to the registration.
252
Choosing Fame over Family, Peter Mack, Geoff Mcnutt, John Vasuta and Michael Song, [2004] 37 Akron
Law Review, at page 204.
253
Case C-251/95, SABEL BV v Puma AG, at para. 26.
254
Vivien Terrien and David Reingewirtz, Mobilix smashes Obelix, Fn. 140 supra.
255
German Federal Supreme Court: no exclusive rights in the descriptive word ‘Kinder’, Birgit Clark, Journal of
Intellectual Property Law & Practice, (2008), Volume 3, No. 3 at page 154-156.
256
“You mark my words” – Choosing your brand and trade mark registration, Max Windich and Rachael Parman, available at http://www.lexology.com/library/detail.aspx?g=621b4dc7-8dea-492c-910b-1a86dfdec017.
Last visited on July 20, 2012.
257
Case T-254/06 Radio Regenbogen Hörfunk in Baden v OHIM, [2008] ECR II-80, at para. 43.
58
Alternatively, filing a single application for the registration of a combination of the logo and
the word is cheaper and the risk of successful opposition proceedings from earlier registrants
is reduced since the combination mark is more distinctive than individual word and logo. A
combination mark, however, offers a narrower scope of protection than separate registration
of the word mark and logo – it is only suitable if the right holder anticipate that the words and
logo will always be shown together and not used separately. Additionally, if the right holder
decides to change the logo after sometime, then the combination mark will be rendered more
or less obsolete, however an individual word mark would still be of value. 258
The mere filing of a series of marks that have one element in common is, in itself, insufficient
to successfully argue that protection must be granted only for the common element in a series
of marks prohibiting use of this element by a third party, usually in combination with some
other added element. 259 In practice, the special distinctive character of a fixed element in the
serial mark is frequently taken into account, not only where this concerns the distinctive character that results from the use of series of marks, but also where the public may construe the
use of a specific indication as use of a mark that comprises part of a series of the trade mark
proprietor. While applying for registering a serial mark, the emphasis should not be only filing the serial marks but also apply for registering the common element of these marks. The
common element is only used in combination with other elements and thus, in a manner, in
which the distinctive character is changed, the proprietor may be blamed for not using this
mark. To prevent being blamed for not normally using this mark, the recommendation is to
specify, in the text of the explanation to the filing that this is a serial mark and how this is
used in practice. The latter can also be expressed in the illustration of the mark itself, for example, by filing ‘McXXX’ where XXX can be replaced by any word. 260 In ModiMundipharma Private Limited v Preet International, 261 the Plaintiff is the registered proprietor of the trade mark CONTIN and other trade marks in the series having CONTIN as a common feature including CONTINUS, DILCONTIN, NITROCONTIN, INDICONTIN, ARCONTIN, BUCONTIN, CORBUCONTIN, DIUCONTIN-K, FECONTIN-F etc.
The right holder must ensure that he registers all the members of the family. The existence of
a large number of registrations is, in itself, insufficient to establish ownership of a family of
trade marks. The registrations do, however, evidence ownership and use of the marks in question and will establish senior and preclusive rights against subsequent users of the marks. 262
If the marks in the series differ due to language, it is an established fact that a broad knowledge of languages other than the national language cannot be assumed of the average consumer. In view thereof, the proprietor should register the marks in a series in the original form
with the translation as a part of the mark. For example, if the common element is SUN and the
proprietor wishes to register the common element in different languages to maintain the series
of marks, it is suggested that the marks may be registered – SUN, SUN (SOL), SUN
258
Max Windich and Rachael Parman, You mark my words, Fn. 257 supra.
Case C-234/06P, BRIDGE/BAINBRIDGE.
260
Tobias Cohen Jehoram, Constant van Nispen, Tony Huydecoper, European Trademark Law, Fn. 12 supra, at
page 82 to 83.
261
CS(OS) No.2176/2007, Modi-Mundipharma Private Limited v Preet International at para. 2.
262
Sheldon, Trademark Families, Fn. 45 supra.
259
59
(SUNCE), SUN (SOLEIL). The proprietor can argue that by adding the original common element SUN in each of the translated mark, it maintains a family of SUN marks. This way the
average consumer relates to the product and the proprietor still preserves his family of marks.
Protection of the surname of the family can also be achieved by preventing registration of
others' marks using the surname and eliminating potential infringement. A diligent watch service is particularly valuable for protecting a family of marks by identifying attempted registrations of marks using the surname. 263
6.1.2. Use it or Lose it- Trade Marks must be put to use
The requirement of use and recognition by the public are two sides of the same coin. Recognition of the family of marks is achieved when the pattern of usage of the common element is
sufficient to be indicative of the origin of the family. It is thus, necessary to consider the use,
advertisement and distinctiveness of the marks, including assessment of the contribution of
the common feature to the recognition of the marks as of common origin. 264 In its publication
of ‘Guidelines for Trade mark Examination’, International Trade mark Association suggests
that the examiner must recognize a family of marks when the pattern of usage of the common
element is sufficient to be indicative of the origin of the family. In order to claim a family of
marks, an owner must demonstrate that the marks asserted to comprise the family has been
used and advertised in promotional material or used in everyday sales activities in such a
manner as to create common exposure and thereafter recognition of common ownership based
upon a feature common to each mark. 265 If the common element is registered in the name of
different proprietors, it negates the notion of common ownership. The exception to this rule,
as seen above, are circumstances similar to Wella A.G., where a family of marks was created
from marks registered by all companies under the Wella Group as a single source of origin.
The existence of a word in various registered trade marks of different proprietors is a fact to
which weight can be attributed as showing that the word had been adopted as an item in the
naming of different goods of a similar nature. The proper comparison must be made with that
fact in mind. 266
Further, it suggests that one of the factors to be included in an evaluation of likelihood of confusion, the owner of a family of marks, used on goods sold and advertised together, may be
considered as having more latitude to exclude second comers from the registration of similar
marks than the owner of an ordinary mark which is not well known. This is especially true if
263
Ibid.
932 F2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991), J & J Snack Foods Corporation v. McDonald’s
Corporation, at para 16. Also see Ron Coleman, McBummer: Thoughts on the McFamily of Trademarks
McConcept Fn. 105 supra.
265
Guidelines for Trade mark Examination, International Trademark Association (INTA), at page 29.
266
[1942] 59 RPC 127, Coca-Cola v Pepsi-Cola at page 133. There were a number of marks containing the word
‘Cola' as part thereof registered for beverages. Also see Narayanan, Intellectual Property Law, Fn. 18 supra, at
page 344.
264
60
the mark applied for, has not already become well known through use at the time of the application. 267
In the situation where the proprietor has not registered the new version of the mark he presently uses (contrary to the situation in the BAINBRIDGE BRIDGE/BAINBRIDGE judgment),
he can rely on the old registration, in which case he claims that he is using it in accordance
with Article 15(2)(b) CTMR, i.e. in a form differing in elements which do not alter the distinctive character of the mark. This way, the protection of the original mark will be upheld.
The proprietor however, needs to accept the risk that a court may later find that the modifications alter the distinctive character of the mark. Alternatively, as seen in the
BRIDGE/BAINBRIDGE case, the proprietor may choose to file for a new registration covering the version of the mark as one uses it now, which will inevitably lead to the effective loss
of the old mark's priority within five years' time, since he will then effectively be barred from
enforcing it, be it still in force or not. 268
The Corn Products judgment required the defendant to prove that the mark must be not merely in use but in ‘extensive use’. Thus, even in interim proceedings, it is not sufficient merely
that the defendant to show prima facie that there is some use of marks. There must be prima
facie evidence to show extensive use. At the final hearing of the suit, the level of proof required is higher – the matter requiring to be provided viz. ‘extensive or substantial use’ remaining the same. 269
The trade mark mantra − Register what you use and use what you register.
6.1.3. Display and advertise the marks together
In order to prevent other businesses from using an otherwise dissimilar mark having the same
component, it is extremely essential that the marks belonging to the family or series of marks
are jointly advertised in such a manner that associates each of the marks as belonging to the
same owner. For example, Apple Inc. makes a conscious effort to use, display and advertise
its ‘i’ series or family of marks together on their website. At one glimpse of the website, the
public acquires information of the marks creating the series, namely iPod, iPhone, iTunes,
iPad and thus, will associate them to the same owner. 270
In Victoria’s Secret Stores Brand Management Inc. v. Sexy Hair Concepts LLC, 271 the plaintiff filed an appeal with the Southern District of New York seeking to overturn defendant’s
successful opposition before the TTAB. In this case, one of the key issues was whether defendant owned a family of marks, thus entitling it to a broader scope of protection under the
267
INTA Guidelines for Trade mark Examination, Fn. 266 at page 36.
Marc Putz-Poulalin, ECJ endorses the Concept of Trademark Series, Fn. 43 supra.
269
AIR 1960 SC 142, Corn Products Refining Co. v Shangrila Food Products Limited at para. 16-17. Also see
2003(5)BomCR 295, 2004(28) PTC 193(Bom), Pidilite Industries Limited v S.M. Associates and Others at para.
58 and 2008 (2) BomCR 28, 2008 (110) BomLR 307, M/s D.R. Cosmetics Private Limited v J. R. Industries at
para. 21.
270
Apple Inc. website available at http://store.apple.com/us. Last visited on July 20, 2012.
271
2009 WL 959775 (SDNY April 8, 2009), Victoria’s Secret Stores Brand Management Inc. v. Sexy Hair Concepts LLC.
268
61
likelihood–of–confusion test. In reviewing the TTAB’s record, however, the Court noted
some ambiguity in the evidence as to how often the defendant advertised multiple products in
its family together and whether marketing expenditures were directed to specifically promoting the family of products rather than its individual products. The Court found that the plaintiff had established material issues of fact regarding the issue of likelihood of confusion. Accordingly, the court denied the defendant’s motion for summary judgment. 272
Promote the marks as a family thus, creating an association between the marks in the minds of
the consumer. One way of promoting the association of the marks would be to persuade the
press to include articles wherein the proprietor’s family or series of marks are mentioned. The
articles should mention as many of the trade marks of the family as possible. 273
Another aspect would be the use of the family of marks in every day sales activities which
enhances the possibility of increased association of marks. 274 The proprietor, alongside the
registered mark, adds a statement that this mark is part of the [registered common element]
series of marks. In this way, the public is informed of not only the mark on the product they
purchasing but also of the other marks in the proprietor’s series. For example, DUXHONEY™ is another product in the DUX family of marks. Advertising in this manner continuously and if possible, extensively will benefit the proprietor.
6.1.4. Genuine use
Case-law from Court of Justice is clear that the genuine use of a trade mark where the mark is
used in accordance with the essential function, which is top guarantee of the identity of the
origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not mean token use for the sole purpose of
preserving the rights conferred by the registration. When assessing whether use of a trade
mark is genuine, regard must be had to all the facts and circumstances relevant to establishing
whether the commercial exploitation of the mark in the course of trade is real, including, inter
alia, the scale and frequency of use of the mark. 275 The volume and frequency of the transactions leading to the use of the mark will be evaluated in light of the structure of the relevant
market. 276 The question whether use is sufficient to maintain or create market share for the
goods or services protected by the mark thus depends on several factors and on a case-by-case
assessment. The frequency or regularity of the use of the trade mark is one of the factors
which may be taken into account. 277
272
Civil cases, May 2009, B. Brett Heavner, available at
http://www.finnegan.com/files/upload/Incontestable_May09_4.html. Last visited on July 20, 2012.
273
Sheldon, Trademark Families, Fn. 45 supra.
274
Roger Bora, Three Easy Steps for Creating a Brand Name Powerhouse Using a Family of Marks, Fn. 17 supra.
275
Case C-416/04 P, Sunrider v OHIM, [2006] ECR I-4237, at para. 70. Also see to that effect, regarding Article
10(1) of Trade mark Directive, a provision which is identical to Article 15(1) of CTMR, the judgment in Case C40/01, Ansul BV v Ajax Brandbeveiliging BV, [2003] ECR I-2439, at para. 43 and the order in Case C-259/02
La Mer Technology v Laboratoires Goemar SA, [2004] ECR I-1159, at para. 27.
276
Trade Mark Use, Chapter 4 – Distinctive character acquired through use, page 49-70, Jeremy Philips and
Ilanah Simon, First Edition, Oxford University Press at pages 68-69.
277
Case C-416/04 P, Sunrider v OHIM, at para. 71, Case C-40/01, La Mer Technology, at para. 22.
62
The need to strictly implement the provisions of genuine use is often questioned by the trade
mark proprietors. One of the greatest impacts of a slack or relaxed standard of genuine use
would be a crowded trade mark register and obstruction to new trade marks which will be put
to actual use. 278 The presence of a mark on the register is not evidence that it has been used.
An applicant for registration relying on a series of marks having common feature should
prove their extensive use in the market. 279
The proprietor, as a means of evidence of use, may submit supporting documents and items
such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, market surveys, materials published by associations in the relevant field and sworn or
affirmed statements in writing. 280 Although the Trade Mark Offices including OHIM are not
bound by findings of the other national offices and courts in parallel proceedings, these decisions can influence the decision of the Trade Mark Office. However, in order for this to be so,
it is necessary, at the very least, for the Trade Mark Office to have the possibility of considering the evidence that led to the relevant decision at the national level. 281 Therefore, an official
translation submitted at the opposition stage can be beneficial. The lesson to be learnt from El
Corte Ingles SA v OHIM and Jose Matias Abril Sanchez and Pedro Ricote Suagar 282is to
submit all relevant documents and translations of the evidence of the earlier rights in the official language of the opposition proceedings in the prescribed time limit at the opposition
stage. 283 The shortcoming of not furnishing evidence at the opposition stage would result in
denial of admitting the documents at the later stage, failure to substantiate a series or family
of marks, use or presence in the market and reputation.
It is evident that the concept of defensive marks is not recognized by the CTMR, therefore it
is suggested that until the Court of Justice clarifies the situation, despite there being a national
provision safeguarding use of one mark amounting to use of another mark, the proprietor
should use all the marks comprising the series for the goods and/or services it is registered
for.
According to Article 43(2) CTMR and 43(3) CTMR, the opponent has to furnish proof that
the earlier trade mark has been put to genuine use. The necessary scope of evidence, the
means of evidence to be submitted and the applicable language regime are laid down in Rule
22(2) to 22(4) of the Commission Regulation (EC) No. 1041/2005 284 (hereinafter referred to
as ‘Implementing Regulation’ or ‘IR’). Rule 22(2) IR stipulates the specific indications
which have to be given and proved as regards the use of the earlier trade mark. These are indications about the place, the time, the extent and the nature of the use. It should be firmly
278
A Crowded CTM Register, Shane Smyth, available at
http://www.ecta.org/IMG/pdf/full_textsmyth_letterhead.pdf . Last visited on July 20, 2012.
279
AIR 1960 SC 142, Corn Products Refining Co. v Shangrila Food Products Limited.
280
Article 22(3) IR and Article 76(1)(f) CTMR list some of these means of evidence.
281
Proof of use: commentary on the practice of the Opposition Division of the OHIM, Jorg Weberndorfer, European Intellectual Property Review, Sweet & Maxwell and its Contributors, EIPR 2001, 23(3), at page 149.
282
Case T-420/03 El Corte Ingles SA v OHIM and Jose Matias Abril Sanchez and Pedro Ricote Suagar, [2008]
ECR II-837.
283
Rule 22(6) Implementing Regulation. Please refer to Appendix.
284
Please refer to Appendix.
63
pointed out that all these indications have to be cumulatively given and proved. 285 It is recommended that the opponent should submit a combination of different means of evidence. It
may further be advisable to add to each of these means of evidence a clarification as regards
the indications mentioned in Rule 22(2) IR, which are not apparent from the respective means
of evidence themselves. Documents which directly refer to the relevant goods and services are
preferable, since a mere declaration of the opponent in this regard, might not be regarded as
sufficient. 286
The submitted means of evidence may constitute indirect evidence of the indications mentioned in Rule 22(2) IR. Such indirect evidence, for example, may be proof of a continuous
high market share, proof of the import of the relevant goods or proof of the reception of packaging for the goods involved. However, the OHIM has been sometimes quite strict in its consideration of such indirect evidence. In particular, it should be noted that, in view of the internationalization of trade, the seat of the opponent may not be regarded as sufficient indication
that the use has taken place in that particular country. 287
To establish a family of marks, it is necessary to prove that the marks asserted to comprise the
family or a number of them have been used and advertised in promotional material or used in
everyday sales activities in such a manner as to create common exposure so as to result in
customer recognition of the common family feature as the distinguishing feature of each
mark. It is not necessary that all members of the family be in the existence prior to entry into
the field of another party with a portion. If a family is proven, the cloak of the family will
extend to and cover other members that are born and come into existence at a future date,
even though there may be an intervening use. 288
In Europe, the registration as a series itself is not provided and therefore, cannot enjoy protection as such. However, the existence of such a series of marks may well, if they are in sufficiently widespread use, affect the average consumer’s perception to the extent that he will be
likely to associate any mark containing the common element with the marks in the series (assuming that they cover similar goods or services) and thus to assume a common origin for the
various products in question. By contrast, no consumer can be expected to detect a common
element in a series of marks which has never been used on the market, or to associate with
that series another trade mark containing the same element. 289 Likelihood of confusion within
the meaning of Article 8(1)(b) CTMR may therefore be assessed having regard to the existence of a family of similar trade marks, but only if actual use can be established of a sufficient number of marks to be perceived by the average consumer as forming a series. 290
Opponents of Community trade mark applications know that the protection they rely on may
be deemed narrower if they can only prove use for limited goods or services. The impact on a
right-holder’s muscle may be substantial; broad specifications are the norm before OHIM and
285
Jorg Weberndorfer, Proof of use, Fn. 282 supra at page 149.
Jorg Weberndorfer, Proof of use, Fn. 282 supra at page 151.
287
Ibid.
288
McCarthy, Trade marks and Unfair Competition, Fn. 31 supra, at page 102-105.
289
Opinion of Advocate General Sharpston, Fn. 8 supra, at para. 101.
290
Opinion of Advocate General Sharpston, Fn. 8 supra, at para. 102.
286
64
many national offices and rare is the owner who can sustain an entire class heading with proof
of use. 291 Earlier rights may be trimmed to the bone in opposition, invalidation and infringement proceedings and it is therefore essential that right-holders be able to evaluate their sustainable scope of protection with a reasonable degree of certainty. 292 If the mark has been
used on some goods within the specification, only those goods for which use is proven will be
taken into account. If the description of the goods falls within a general category which cannot itself be subdivided then the specification of the category will be that upon which the
comparison of goods is made. 293
The earlier mark must have been used during the period of five years preceding the date of
publication of the Community trade mark application. Only use within this period of five
years is relevant for the proof of use requirement. On the other hand, it is sufficient if the use
commenced at the very end of that period, provided that the use was genuine. 294 Opponents
frequently make mistakes in this regard, submitting voluminous documents which refer to a
use of the earlier mark before or after this period of time.295 As seen in the
BRIDGE/BAINBRIDGE decision, material submitted without any indication as regards the
date of its use cannot be taken into account. 296
To summarize, the proof of use requirement is a useful procedure for the owner of an opposed
Community trade mark application to invoke in opposition proceedings and the time and effort spent reviewing the evidence of use submitted for any shortcomings is generally time
well spent. 297
6.1.5. Modify in accordance to the fashion trend
Trade mark owners might wish to modify their trade mark in accordance with changing fashions and styles. As long as the changes do not alter the distinctive character of the mark, the
use of the modified mark will be recognized as use of the registered mark, unless the modified
version is registered in its own right. 298 According to Lord Walker in UK judgment of Anheuser-Busch v Budjeovicky Budvar, 299 it is for the tribunal first to ascertain the points of difference between the mark as used and the mark as registered. Having done this, the tribunal
should ask whether the differences alter the distinctive character of the mark as registered.
The distinctive character in issue is what marks the mark ‘in some degree striking and me-
291
Cutting to the Bone: When Proof of Use Narrows Protection, Make your mark, Trade mark newsletter of
Jenkins, available at http://www.jenkins.eu/mym-spring-2007/cutting-to-the-bone.asp. Last visited on July 20.
2012.
292
Jenkins, Cutting to the Bone, ibid.
293
Proof of Use in CTM Opposition Proceedings, Ann E Roome, available at http://www.avidityip.com/assets/pdf/pagestop_20070329160901.pdf. Last visited on July 20, 2012. Also see Case T-126/03 Reckitt
Benckiser (España), SL v OHIM and Aladin Gesellschaft für innovative mikrobiologische Systeme GmbH,
[2005] ECR II- 2861.
294
Jorg Weberndorfer, Proof of use, Fn. 282 supra at page 147.
295
Ibid.
296
Ibid..
297
Ann E Roome, Proof of Use in CTM Opposition Proceedings, Fn. 294 supra.
298
Case C-234/06 P, BRIDGE/BAINBRIDGE,at para. 86.
299
[2003] RPC (25) 477, Anheuser-Busch v Budjeovicky Budvar at para. 41.
65
morable’. This is judged from the point of view of the Registrar (rather than the average consumer) who is concerned with ‘the mark’s likely impact on the average consumer’. 300
The question whether a change to a mark alters the distinctive character of that mark is one of
‘first impression’. This will depend upon the type of mark (whether a word or device mark)
the way the mark is typically used and understood (whether visually, aurally or conceptually)
and the way the mark is varied. To change the distinctive character of the mark, it is necessary
to alter the identity or individuality of the mark. The Court of Justice in the
BRIDGE/BAINBRIDGE case talks about a ‘slightly different form’ in paragraph 86 of its
judgment. In the case of short or simple marks or marks with very little distinctive character, a
slight modification may mean that use will not sustain the registration. So, for example, the
General Court held that the mark J. GIORGI was not used on invoices which bore the terms
‘GIORGI, MISS GIORGI or GIORGI LINE’ because the distinctive character of the ‘J.
GIORGI’ mark was affected by such uses. 301 GIORGI was viewed as a common name and so
of low inherent distinctiveness. In contrast, in the case of a word and a device mark, substantial alteration to the device may have little impact if the average consumer sees the word as
the dominating the mark. This was the case in the UK Budweiser decision 302 where a registered of ‘BUDWEISER BUDBRAU’ in a stylized form was successfully maintained by relying on use of the words in block capitals as a circular surround to a device consisting of a castle and shield. The Registrar accepted that the use of the words in this way was use of the
mark in a form which did not alter its distinctive character because the average consumer
would view the graphic as use of the words (the underlining and different fonts not detracting
from or adding anything to the central message) In the Court of Appeal, Sir Martin Nourse
observed that the Registrar had legitimately found that the words have a dominance which
reduce to insignificance the other recognizable elements. Similar reasoning almost certainly
explains the General Court’s decision 303 that variations in the style of ‘QUANTIEME’ (capitalization, modifying and underlining the ‘Q’) did not alter the distinctive character of the
mark for watches. 304
6.2. Distinctive and dominant common element
A trade mark owner, relying upon the family of marks doctrine, must establish that the purchasing public associates the common element, as well as the whole trade mark, with the
owner of the family of marks; this common element must be distinctive. Hence, a common
element which is merely descriptive, highly suggestive, or is commonly used in the industry
or on a variety of products, usually cannot establish a family of marks. 305
The existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, without its necessarily having to have repute within the mean300
Bentley and Sherman, Intellectual Property Law, Fn. 81 supra at page 897.
Case T-156/01 Laboratories RTB SL v OHIM, at para. 44.
302
[2003] RPC (25) 477, Anheuser-Busch v Budjeovicky Budvar.
303
Case T-147/03 Devinlec Development Innovations Leclerc SA v OHIM, [2006] ECR II-11.
304
Bentley and Sherman, Intellectual Property Law, Fn. 81 supra at page 897.
305
Peter Mack, Geoff Mcnutt, John Vasuta and Michael Song, Choosing Fame Over Family at page 207.
301
66
ing of Article 8(5) CTMR. It is not possible to state in general terms, for example by referring
to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must
be acknowledged that there is certain interdependence between the public’s recognition of a
mark and its distinctive character in that the more the mark is recognized by the target public
the more the distinctive character of that mark is strengthened. In order to assess whether a
mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by
the mark; how intensive, geographically widespread and long-standing the use of the mark
has been; the amount invested by the undertaking in promoting the mark; the proportion of
the relevant section of the public which, because of the mark, identifies the goods or services
as originating from a particular undertaking; and statements from chambers of commerce and
industry or other trade and professional associations. 306 None of these factors is per se conclusive, but they should be assessed in an interdependent manner, each corroborating the others. 307
The existence of national registrations is likely to be non-persuasive, save where the registration was granted in a territory where a finding of non-distinctiveness has to be overcome. As
the Community trade mark is a separate and independent property right, a separate assessment
must be therefore, be carried out in each case with regard to absolute grounds for refusal and
the findings of national tribunals cannot be simply be adopted without proper consideration. 308
The General Court in Avon Products v OHIM 309 held that the mark ANEW ALTERNATIVE
is devoid of any distinctive character and therefore, it cannot be registered by reason of the
absolute ground for refusal laid down in Article 7(1)(b) CTMR, despite the existence of family of ANEW marks. The OHIM Manual specifically provides that there will be no assumption
of a family of marks where the common component is quite weak or where the further components of the earlier signs are predominant in the overall impression of these signs. 310
The US Courts take the view that some family surnames may be so non-distinctive as to be
almost incapable of ever achieving any family significance, for example, the suffixes – ETTE
and IES. The family of marks argument does not exempt a mark from the standard tests of
trade mark protection. In most cases, use of the family argument appears to add little, if anything, to a straight argument of a likelihood of confusion between plaintiff’s marks and defendant’s mark. The family of marks argument is often raised but infrequently bears fruit.
Many US Courts view the argument with suspicion because it appears that the plaintiff is
306
Case T-580/08, PJ Hungary Szolgaltato Kft v OHIM and Pepekillo SL, unpublished, at para. 87. Also see
Case T-277/04 Vitakraft-Werke Wührmann v OHIM and Johnson’s Veterinary Products [2006] ECR II-2211, at
para. 34-35.
307
Jeremy Philips and Ilanah Simon, Trade Mark Use, Fn. 277 supra, at page 68.
308
Jeremy Philips and Ilanah Simon, Trade Mark Use, Fn. 277 supra, at pages 69-70. Also see Case T-32/00,
Messe Munchen v OHIM, [2000] ETMR 135, at para. 47.
309
Case T-184/07, Avon Products v OHIM, at para. 32.
310
OHIM Manual, Fn. 24 supra at page 21.
67
seeking protection of an ordinary and undistinguished syllable. 311 It has been noticed that the
‘family of marks’ doctrine is often invoked by hopeful §1052 (Section 2(d) of the Lanham
Act) opposers, but its applicability is almost always rejected by the TTAB. 312
In view thereof, adopt a highly arbitrary component capable of being used, recognized and
protected on its own accord. The proprietor must adopt a dominant common element which is
short, easily memorized; beginning of the word sought and has no particular meaning especially in the language of the country in which the mark is used or registered. 313
It is common practice however, that right holders have marks with a descriptive common
element. Such right holders with marks containing a descriptive term (eg. in English) will
need to do their homework before seeking Community trade mark protection. Obviously the
best thing to do is conduct searches of the Community trade mark and national registers. This
may be an expensive option. A cheaper alternative is to simply file for a Community trade
mark but ensure that OHIM’s search report, subject to significant limitations, is reviewed. The
search report may provide some indication of the potential oppositions the Community trade
mark will face, albeit post-filing. If it appears likely that there will be an opposition from a
prior brand owner and where validity issues are material in relation to the earlier right, the
applicant should consider a pre-emptive strike – filing a cancellation action before the opposition. The opposition proceedings will then take a back-seat while validity of the mark is explored. Otherwise, if the applicant is content to deal with oppositions as and when, it should
ensure that evidence as to the descriptive/non-distinctive/customary nature of the English
word in the territory in question is compiled (including a survey if appropriate) and filed within the relevant time frames, so that the descriptive term is discounted as part of the global assessment. 314
In Durferrit GmbH v OHIM and Kolene Corporation, 315 the General Court observed that the
applicant herein, Durferrit GmbH does not use a series of marks containing the element
TRIDE. The General Court however, pointed out that even on the supposition that an element
which lends itself to being perceived as forming the core element of a potential series of
marks is sufficient to give rise to a likelihood of association, the same does not apply in the
present case since the suffix TRIDE is merely descriptive. 316
As seen in chapter 3, the word element TORRE in the earlier mark and the mark applied for
was found to be commonly used to designate the goods concerned. Further, apart from the
word and representation of the towers, the earlier marks did not have characteristics capable
of leading the relevant consumer to associated the mark applied for with the earlier marks,
311
McCarthy, Trade marks and Unfair Competition, Fn. 31 supra, at page 102-105. Also see 299 F.2d 55, 132
USPQ 381 (9th Cir. 1962), Creamette Company v Merlino where the Court says the courts have ‘squinted’ at this
argument and found it wanting more often than not.
312
John Welch, The TTAB’s dysfunctional ‘family of marks’ doctrine, Fn. 125 supra.
313
Case T-364/05 Saint-Gobain Pam SA v OHIM and Propamsa SA, [2007] ECR II-757, at para.100.
314
Mmmmmmmmm, Donuts... the difficulties of successful brand translation in a global market, Bill Ladas,
available at http://www.davenportlyons.com/legal-services/articles/531/#foot. Last visited on July 20, 2012.
315
Case T-224/01 Durferrit GmbH v OHIM and Kolene Corporation, [2003] ECR 1589.
316
Case T-224/01 Durferrit GmbH v OHIM and Kolene Corporation, at para. 61.
68
conceived as a series of mark and therefore to be mistaken as to the origin of the goods covered by that mark. 317
On the contrary, some companies have built their family of marks on a descriptive element
and furnished sufficient evidence to maintain that the element is distinctive and not common
to the trade. Panrico SA, a Spanish company, has established a family of DONUT, DONUTS,
DOGHNUTS marks. 318 DONUT would be considered as non-distinctive and/or descriptive of
pastry/confectionery goods in UK, the word DONUT is sufficiently fanciful in Spain for these
goods and enjoys monopoly rights as a trade mark. 319 Panrico SA has been successful in the
opposition proceedings since it ensures that the word DONUT is not generic. It submits
overwhelming evidence of their reputation in Spain, including market surveys and statements
from Chamber of Commerce in Spain. Taking in account the high consumer recognition of
DONUT marks in Spain and that the registration of mark applied for would benefit from the
selling power of the earlier DONUT registrations, Panrico SA is often victorious in opposing
several trade mark applications. 320
The element ‘citi’ in the Citigroup’s family of mark is also held to be distinctive. The word
element ‘citi’ suggests the English word ‘city’. Although, they are aurally identically and visually similar, Citigroup has proven secondary meaning of the word ‘citi’. The name of Citibank was originally City Bank of New York and Citigroup often make frequent use of the
trade mark THE CITI NEVER SLEEPS. The bank was renamed CitiBank as a result of its
evolution and expansion. 321
6.3. Placement of the common element as a prefix or suffix
It is very essential to meticulously consider the placement of the common element in a family
or series of marks.
It should be pointed out as a preliminary point that, although the average consumer normally
perceives a mark as a whole and does not proceed to analyze its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him,
suggest a concrete meaning or which resemble words known to him.322 After all, an ordinary
purchaser is not gifted with the powers of observation of a Sherlock Homes. 323 The general
rule is that the public attaches more importance to the beginning of a word than to its ending,
317
Case T-287/06, TORRES/TORRE ALBENIZ at para. 83.
Spanish trade mark registration No 399563 of the word mark DONUT for goods in class 30; Spanish trade
mark registration No 643273 of the figurative mark ‘donuts’ for goods in class 30; Spanish trade mark registration No 1288926 of the word mark DOGHNUTS for goods in class 30; Spanish trade mark registration No
2518530 of the figurative mark ‘donuts’ for goods in class 30; Portuguese trade mark registration No 316988 of
the word mark DONUTS for goods in class 30; International trade mark registration No 355753 of the word
mark DONUT for goods in class 30; International trade mark registration No 814272 of the figurative trade mark
‘donuts’ for goods in class 30.
319
No Holes in Donut Monopoly, Trade mark newsletter of D Young & Co., available at
http://www.dyoung.com/trademarknewsletter-jul08. Last visited on July 20, 2012.
320
Joined Cases T-333/04 and T-334/04, House of Donuts International v OHIM, [2007] ETMR 52.
321
Case T-181/05, Citigroup, Inc., Citibank, NA v OHIM and Citi SL, at para 70-72.
322
See, to that effect, Case T-256/04 Mundipharma v OHIM and Altana Pharma, [2007] ECR II-449, at para. 57
and Case T-146/06 Sanofi-Aventis v OHIM and GD Searle, [2008] ECR II-17, at para. 58.
323
1972 AIR 1359, Parle Products Private Limited v J. P. & Company.
318
69
especially where, in cases where, the ending of the earlier trade mark is descriptive of the services in respect of which it is protected. 324 In Trek Bicycle v OHIM and Audi, the General
Court held that consideration cannot apply in every case. 325 Bearing in mind the victorious
litigation of McDonald’s with ‘Mc’ series of marks and the struggle of Les Editions Albert
Rene SARL with ‘ix’ series of marks 326 and Zynga with its suffix ‘ville’ series of marks; 327 it
seems that the placement of the common element as prefix is more effective than suffix.
In either case, the proprietor should focus on creating the common term so distinctive and
reputed that any word combined with this element creates a likelihood of confusion. The
common element should also be in the dominant position of the mark. McDonald’s Corporation is an excellent role model for proprietors. It has created a prefix so distinctive, dominant
and reputed that any word coupled with prefix ‘Mc’ creates a likelihood of confusion.
The proprietor should deter from using words which common to the sector of trade or services
in which the goods/services are registered. Where an applicant for registration however, relies
on his series of marks having a common feature, the onus of proving their extensive use in the
market lies on him. 328 In opposition proceedings, if the applicant alleges that any feature of
the earlier mark applied for is common to the trade; the onus is on him to establish that fact, 329
since the presence on the Register of Trade Marks is not proof of use.
It is not preferred that the right holder creates series of marks based on a single letter as the
common and dominant element, for example, Apple Inc. with its ‘I’ series of marks. Today,
Apple has claimed trade mark rights not just in iPod, but also iTunes, iPhoto, iSight, iWork
and iWeb. Additionally, it is challenging other firms with similar trade marks starting with the
lower case ‘i’ or containing the word ‘Pod’. However, with the advent of the Internet, trade
marks starting with ‘i’ has become common and over 1000 applications and registrations exist
for trade marks containing ‘pod’. Apple Inc. has faced difficulties convincing trade mark authorities that consumers associate all ‘i-’ or ‘pod’ marks with it.330 Therefore, for established
brands that are already naming products as extensions of a common prefix, the primary strategy in all international markets should be to guard the brand’s system of naming and its family of product names at least in the brand’s core business area. 331
324
Joined Cases T-182/02 and T-183/02, El Corte Ingles v OHIM and Gonzalez Cabelloand Iberia Líneas Aereas
de Espana, [2004] II-965 at para. 83.
325
Case T-158/05 Trek Bicycle v OHIM and Audi, [2007] ECR II-49, at para. 70.
326
Case C-16/06 P, Les Editions Albert Rene v OHIM and Orange A/S and Case T-311/01, Les Editions Albert
Rene v OHIM and Trucco sistemi di telecomunicazione SpA.
327
Zynga is a social networking game developer who has created a series of marks with the suffix ‘ville’CityVille, Farmville, FishVille, FrontierVille, PetVille, YoVille and RewardVille.
328
AIR 1960 SC 142, Corn Products Refining Company v Shangrila Food Products Limited, at pages 145-146.
See also, Beck Koller's Application, Fn. 54 supra.
329
Narayanan, Intellectual Property Law, Fn. 18 supra, at page 223.
330
Diluting Brand Beliefs: When Do Brand Extensions Have a Negative Impact?, Barbara Loken and Deborah
Roedder John, Journal of Marketing, July 1993, Volume 57, No. 3, at pages 71-84, available at
http://www.jstor.org/stable/1251855. Last visited on July 20, 2012.
331
Ann Morales Olazabal, Anita Cava and Rene Sacasas, Marketing and the Law: Seeking Exclusivity over a
Brand Naming System, Fn. 234 supra at pages 184-185.
70
6.4. Reputation of the earlier mark and common element
The ground that the earlier mark and common element is reputed can be pleaded as a sole
ground of opposing a trade mark application or can be combined with plea of likelihood of
confusion since the marks and goods are identical or similar to the earlier marks.
Under jurisprudence of Uniform Domain-Name Dispute-Resolution Policy, the classification
of the mark (descriptive or arbitrary) and the composition of its added element (dictionary
words, common phrases) are critical as to whether complainant can prevent legitimate use of
the mark by others. The more well-known the surname of the family of marks, the less credibility a respondent will have in explaining its choice and succeeding on a good faith defense.
In Geoffrey LLC v The R Us Group Mohiuddin Tops 332, the Panel noted at paragraph 6 of its
decision that Complainant is recognized as the owner of a family of ‘R US’ marks under the
United States’ trade mark law. Therefore, the Panel held that the disputed domain names
<bestcreditcardsrus.info>,
<carinsurancequoterus.info>,
<cheaptermlifeinsuranceratesrus.info>, <childrensbed roomfurniturerus.com>, <dentalinsuranceplansrus.com>, <digitalproductsrus.com>, <healthinsurancerus.info>, <injuryattorneyrus.info>, <insurancerus.info>,
<makingmoney onlinerus.com> and <wholelifeinsurancerus.info> were found to be taking
advantage of the reputation of the family of R US marks. 333 However, the General Court in
Citigroup, Inc., Citibank, NA v OHIM and Citi SL held that fact that the intervener is the
owner of domain names ‘citi.es’ is irrelevant. 334
The PPO cancelled the trade mark BIKINI CHRISTIAN DIOR PARIS in the name of Parfums Christian Dior, Paris due to likelihood of confusion with the earlier mark BIKINI for
similar personal care goods in the name of Barbara Hildman. 335 The Polish Court noted that
the failure to correctly examine the perquisite of likelihood of confusion would mean that the
company that applied for the mark, as well as any other company with reputation or well
known status, would because of the recognized brand, be able to add with impunity a recognizable company designation or surname to any earlier mark and then present the resulting
mark as its own, To allow the owner of a trade mark with a reputation to expand its family of
marks by adding a well known name or surname to any existing mark would make protection
of the earlier mark illusory. 336
It seems very essential that the right holder pleads at the opposition stage that the mark is a
part of a family of marks and the fact that the earlier mark is reputed under the provisions of
8(5) CTMR. At the opposition stage, the opponent must plead that the opposition is based on
all earlier marks, (as opposed to being based on one earlier mark which forms the series as
seen in the OBELIX/MOBILIX case 337) these marks constitute a family of marks and the earlier marks and/or common element is reputed. In addition, it must be emphasized that the like332
D2011-0612, Geoffrey LLC v The R Us Group Mohiuddin Tops.
D2011-0612, Geoffrey LLC v The R Us Group Mohiuddin Tops at para. 7.
334
Case T-181/05, Citigroup, Inc., Citibank, NA v OHIM and Citi SL, at para. 85.
335
Case no. Sp. 500/11. This decision followed a judgment of the District Administrative Court (VI SA/WA
41/11).
336
BIKINI CHRISTIAN DIOR PARIS confusing with BIKINI, Beata Wojtkowska, INTA Bulletin, March 1,
2012 Volume 67 No. 5 at page 10.
337
Case C-16/06 P, Les Editions Albert Rene v OHIM and Orange A/S, at para 100.
333
71
lihood of confusion should therefore be assessed with regards to the opponent’s series of earlier marks under provisions of Article 8(1)(b) CTMR. The argument that there is a family of
marks does not need to be brought into the proceedings as a ground of opposition, but can be
considered as additional facts, evidence and arguments. Therefore, if the opponent, having
based his opposition on a single earlier mark (registered or not) could bring into the proceedings the argument and supporting evidence that this earlier mark has been used together with
other trade marks, forming a family of marks under the aforementioned substantive conditions. 338
In Les Editions Albert Rene v OHIM and Trucco sistemi di telecommunicazione SpA, 339 where
the General Court held that although Les Editions had invoked the repute of its earlier mark in
its opposition to the trade mark application and before the Board of Appeal of OHIM, this
was exclusively within the context of Article 8(1)(b) CTMR, that is, for the purpose of substantiating the risk of confusion in the mind of the relevant public. 340 It was further noted that
there was no evidence submitted in that regard before the Board of Appeal. 341 Although the
earlier mark was well known and protected in 50 countries, the General Court rejected the
plea in view of Articles 63 and 74 CTMR and Article 134(4) of the Rules of Procedure of the
General Court. 342 Therefore, the proprietor must claim reputation of all earlier marks, especially the ones that form the series of marks under the provisions of Article 8(5) CTMR. Further, it is of vital importance that he provides sufficient evidence to substantiate reputation.
Citigroup has been very diligent in ensuring that it pleads reputation of the earlier marks under the provisions of Article 8(5) CTMR in addition to likelihood of confusion between the
conflicting marks under provisions of Article 8(1)(b) CTMR. 343 Relying on an overlap in customer groups in order to found a persuasive argument for unfair advantage is a potentially
useful tool while arguing a case under the provisions of Article 8(5) CTMR. With some ordinary consumer products, such an argument may not hold much water since the average consumer is interested in such a broad range of goods and services. However, where products or
services are specialized or less commonplace, the argument is more likely to succeed since the
number of potential market players is smaller. Related transactions are, however, likely to be
needed. Identical or similar goods and services are not needed, but proving some consanguinity in the transactions involved can make it easier to infer that the average consumer is likely
338
OHIM Manual, Fn. 24 supra at page 21.
Case T-311/01, Les Editions Albert Rene v OHIM and Trucco sistemi di telecommunicazione SpA.
340
Case T-311/01, op. cit., at para. 68.
341
Case T-311/01, op. cit., at para. 12.
342
Article 74 CTMR points out that OHIM is restricted to examination of facts, evidence and arguments provided by the parties in an opposition proceeding. Article 135(4) of the Rules of Procedure of the General Court
states that the parties pleadings may not change the subject matter of the proceedings before the Board of Appeal.
343
Case T-181/05, Citigroup, Inc., Citibank, NA v OHIM and Citi SL and Case T-301/09, IG Communications v
OHIM, Citicorp and Citibank.
339
72
to connect two marks and that a later mark may derive unfair advantage from an earlier
mark's reputation. 344
As seen in the previous section, Apple Inc. has been successful in preventing third parties
from using ‘i’ in their marks. It is however, difficult to segregate whether the series of marks
is reputed or the protection is given on the basis of the reputation of the other registered trade
marks and/or the company. Some commentators have argued that the fame of a trade mark or
the common elements of a family of marks is more important toward trade mark protection
than the mere existence of a family of marks. Indeed, it was the fame of the HARLEYDAIVDSON, HARLEY and HOG marks themselves rather than the issue of whether they
formed a family that protected the brand from a firm using ‘Harley-Hog’ in the unrelated industry of pork products. It seems likely that both fame of the company and a family of marks
are important considerations in determining the scope of trade mark protection. A family of
trade marks, based on a single famous trade mark seems to make a bigger impression on consumers per advertising exposure than an exposure containing a less famous mark. With some
creative effort, brand marketers can better safeguard their brand equity by developing a family
of trade marks for brand extensions rather than simply falling back on generic descriptions of
each different brand extension. 345 A new brand extension with the same family brand name
introduces yet another set of attributes or beliefs that can be either consistent or inconsistent
with the image already projected by the family brand name. 346
The proprietor may plead only reputation of the marks under provisions of Article 8(5)
CTMR since there is no requirement of likelihood of confusion. Although, reputation of the
mark/common element in series of marks is not the essential factor in assessing likelihood of
confusion between the conflicting marks, it does speak further in favour of the series of marks
and corresponds to a higher success rate of opposing or cancelling the trade mark. For example, KODA (Kodak), KINDER (Ferrero), Citi (Citigroup), R US (Toys R US), Mc (McDonald’s), it is seen that these elements have favoured the series of marks argument.
In PJ Hungary Szolgáltató Kft v OHIM and Pepekillo SL, 347 the General Court held that although the applicant has proved use of the PEPE and PEPE JEANS marks, it has not succeeded in proving use of the other earlier marks belonging to the alleged family of marks,
such as PEPE F4, PEPE 2XL and PEPE M99. 348 The General Court observed that the existence of the PEPE family of marks did not cause a doubt on the finding that the PEPE and
PEPE JEANS marks have a distinctive character and that the similarity between the opposing
signs and the identity of the goods and services in question are sufficient to create a likelihood
of confusion. 349 Further it held that the PEPEQUILLO mark is likely to take unfair advantage
344
Banking on Tactics from the CITIBANK Cases, Make your mark, Trade mark newsletter of Jenkins, available at http://www.jenkins.eu/mym-autumn-2008/banking-on-tactics-from-the-citibank-cases.asp. Last visited on
July 20, 2012.
345
Ross D Petty, Naming names, Fn. 229 supra.
346
Barbara Loken and Deborah Roedder John, Diluting Brand Beliefs: When Do Brand Extensions Have a Negative Impact?, Fn. 331 supra.
347
Case T-580/08, PJ Hungary Szolgáltató Kft v OHIM and Pepekillo, SL.
348
Case T-580/08, op. cit., at para. 95.
349
Case T-580/08, op. cit., at para. 96.
73
of the repute of the earlier marks by attracting consumers who seek to purchase goods bearing
a trade mark similar to the earlier PEPE marks of repute. 350 It is thus, advantageous to plead
likelihood of confusion and reputation of all earlier marks including marks that form the series so that in case the evidence does not sustain the presence of family of marks, the proprietor can rely on the distinctive character and reputation of the individual marks.
Even if the trade mark series have been established, the Courts have held that there is no likelihood of confusion found between the earlier mark and the mark applied for, since the goods
or conflicting marks are different (not satisfying the conditions of Article 8(1)(b)CTMR). In
which case, the reputation of a family of marks having a common element may make it easier
to prove ground for refusal of registration of the mark applied for.
6.5. Try and try until you succeed - A Kind(er) story
Although Ferrero SpA’s limited success 351 in the case of KINDER/TiMi KiNDERJOGHURT
was somewhat less than sweet, it will nonetheless satisfy the cravings of others for legal certainty on the status of OHIM opposition decisions when subsequent invalidity proceedings are
brought. The decision makes clear that failure in a Community trade mark opposition does not
block a challenger from re-asserting its case as invalidation proceedings. It brings OHIM into
line with the practice in the UK, where a challenger is not estopped from re-running a failed
opposition as a new invalidity proceeding. 352 It is important to note that this principle does not
necessarily apply to the re-running of invalidity proceedings, though. Under Article 53(4)
CTMR, an unsuccessful applicant for invalidity on relative grounds cannot re-apply for invalidity later on the basis of another right that he could have raised the first time but did not. So,
while a botched opposition might perhaps be put right, a failed invalidation is final. 353
The ruling in KINDER/TiMi KiNDERJOGHURT will benefit opponents who need to rethink their strategy following a disappointing opposition outcome and shows that it is not necessary to throw good money in appeal proceedings with poor prospects, simply to keep the
issues alive. It would be better instead to wait for a stronger and tighter invalidation case, if
the facts support it. This judgment is a useful reminder of OHIM’s administrative rather than
judicial nature and of the absence of a system of precedent in its own decisions. 354
Before the General Court, Ferrero forced a re-examination of the rules on res judicata in
Community trade mark opposition and invalidity proceedings. The resulting clarification is
350
Case T-580/08, PJ Hungary Szolgáltató Kft v OHIM and Pepekillo, SL, at para. 120.
The registered mark TiMi KINDERJOGHURT was surrendered.
352
[2007] RPC 15, Special Effects Ltd v. L'oreal SA.
353
Ferrero’s Kinder Surprise party spoiled by CFI finding , Geoff Weller, Journal of The Institute of Trade Mark
Attorneys, December 2009, Issue no. 371, available at http://assets.itma.org.uk/December_2009.pdf at page 24.
Last visited on July 20, 2012.
354
Geoff Weller, Ferrero’s Kinder Surprise party spoiled by CFI finding ibid. Also see Rhys Morgan, Ensuring
greater legal certainty in OHIM decision-taking by abandoning legal formalism, Fn. 132 supra.
351
74
extremely useful to brand owners when revisiting strategy in Community trade mark opposition and invalidation cases. 355
The declaration of surrender has the effect that, following the registration of the surrender in
the Register of Community Trade Marks, the rights of the proprietor of the registered Community trade mark, as well as of his licensees and any other holders of rights in the mark,
lapse. 356 The effect of a declaration of surrender − as distinct from a declaration of invalidity,
which takes effect as from the date of filing of a community trade mark application − commences only at the date the surrender is registered in the Register of Community Trade Marks
and thus has no retroactive effect. 357 The surrender has procedural and substantive effects. In
procedural terms, upon entry of the surrender into the Register, the Community trade mark is
removed from the Register and the proceedings before the OHIM terminate. However, where
an admissible request for declaration of invalidity has been filed with the OHIM prior to the
entry of the surrender into the Register, such proceedings will not per se terminate, as it
should not be possible for the proprietor of the Community trade mark to avoid the declaration that the Community trade mark has been invalid as from the outset by surrendering it
only with an ex nunc effect. 358 Rather, the invalidity procedure will continue for the purposes
of obtaining a declaratory statement on the ex tunc effect 359 of the invalidity of the Community trade mark if and when the requesting party can demonstrate a sufficient legal interest in
obtaining such a statement in spite of the removal of the Community trade mark from the
Register and the costs will be charged on the losing party and not in application of Article
81(3) CTMR. 360 The substantive effects of surrender vis-à-vis third parties comprise that the
proprietor of the Community trade mark renounces invoking, in the future, any rights out of
his mark.
However, as far as procedures before the OHIM are concerned, the proprietor of the Community trade mark who has surrendered it and who later files the same, or a similar, trade mark
again with the OHIM will not be faced with an objection by the examiner that his mark for
which he applies is a repetition of a mark that has already been surrendered. In other words,
the examiner, on examination of a new community trade mark application, will not check
whether an identical mark has already been subject to a surrender entered into the Register. 361
It may seem that the effect of both surrender and invalidity of a trade mark sum up to a trade
mark which at present is not in existence. However, the effect differs when one looks closer,
when a trade mark is surrendered; the end result is a trade mark which was in existence but at
355
KINDER Surprised: No Res Judicata in OHIM Disputes, Make your mark, Trade mark newsletter of Jenkins,
available at http://www.jenkins.eu/mym-spring-2010/kinder-surprised--no-res-judicata-in-ohim-disputes.asp.
Last visited on July 20, 2012.
356
Changes that can be made to the Trade Mark Register, OHIM, available at
http://oami.europa.eu/ows/rw/pages/CTM/regProcess/changesRegister2.en.do. Last visited on July 20, 2012.
357
OHIM Manual, Part E, Section 3: Changes in an application or registration, available at
http://oami.europa.eu/ows/rw/resource/documents/CTM/guidelines/changes_en.pdf at page 5. Last visited on
July 20, 2012.
358
Latin term meaning ‘from now on’.
359
Latin term meaning ‘at the outset’.
360
OHIM Manual, Changes in an application or registration, Fn. 360 supra.
361
Ibid.
75
present is not in existence and when a trade mark is invalidated; the end result is that the trade
mark never came into existence. Additionally, when the trade mark is surrendered, the applicant for the trade mark can re-file the application whereas if it considered invalid, the applicant is barred from re-filing the application for the same trade mark as the invalidated one.
Ferrero SpA therefore, made a smart choice by opting to proceed in the appeal in order to
invalidate the registered mark TiMi KiNDERJOGHURT.
7.
DON’T MESS WITH MY FAMILY
Among the acts that may result in the loss of trade mark protection are the improper use of the
mark by its owner, whether on the product itself or in advertising the product; the failure of
the owner to prevent infringements and generic usage; and the failure of the owner to educate
the public as to the mark's significance as an indication of source of manufacture or to discourage the misuse of the mark as a generic name for the product. To avoid such a circumstance,
ensure that a mark is entitled to strong protection and send out a clear message ‘Don’t mess
with my family (of marks)’ the mark should been long used, fought for, sought after and
made stronger by being one of a family of marks. 362
362
199 USPQ 437 (D. Or. 1978), Dictaphone Corporation v. Dictamatic Corporation.
76
APPENDIX
LEGAL CONTEXT
[Footnote 66] Section 21 of Trade Mark Act 1938
Registration of parts of trade marks and of trade marks as a series
(1)…
(2)Where a person claiming to be the proprietor of several trade marks in respect of the same
or similar goods or services or description of goods or description of services which, while
resembling each other in the material particulars thereof, yet differ in respect of--(a) Statement of the goods or services in relation to which they are respectively used or proposed to be used; or
(b) Statement of number, price, quality or names of places; or
(c) Other matter of a non-distinctive character which does not substantially affect the identity
of the trade mark; or
(d) Colour,
Seeks to register those trade marks, they may be registered as a series in one registration.
[Footnote 66] Section 23 of Trade Mark Act 1938
Certain trade marks to be associated so as to be assignable and transmissible as a whole
only
(1) Trade marks that are registered as, or that are deemed by virtue of this Act to be, associated trade marks shall be assignable and transmissible only as a whole and not separately,
but they shall for all other purposes be deemed to have been registered as separate trade
marks.
(2) to (3) …
(4)All trade marks that are, by virtue of sub-section (2) of section twenty-one of this Act, registered as a series in one registration shall be deemed to be and shall be registered as, associated trade marks.
(5) …
[Footnote 66] Section 30 of Trade Mark Act 1938
Use of one of associated or substantially identical trade marks equivalent to use of
another
(1) Where under the provision of this Act, use of a registered trade mark is required to be
proved for any purpose, the tribunal may, if and so far as it shall think right, accept use of an
77
associated registered trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for the use require to be proved.
(2) …
[Footnote 66] Rule 29 of the Trade Mark and Service Mark Rules, 1986
Series of marks
Where an application is made for the registration of a series of trade marks or service marks
under Section 21(2) of the 1938 Act or the modified 1938 act, a representation of each mark
of the series shall, in accordance with Rule 24 to 26 and subject to Rule 27, be included in the
application form, in the duplicate thereof (if any) and in each of the accompanying forms TM
– 4 or (as the case may be) sheets of paper complying with Rule 25(5).
[Footnote 66] Section 41 of Trade Mark Act 1994
Registration: supplementary provisions
(1) Provision may be made by rules as to(a)….;
(b)….;
(c) the registration of a series of trade marks.
(2) A series of trade marks means a number of trade marks which resemble each other as to
their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.
(3) Rules under this section may include provision as to(a) the circumstances in which and conditions subject to which, division, merger or registration of a series is permitted and
(b) the purposes for which an application to which the rules apply is to be treated as a single
application and those for which it is to be treated as a number of separate applications.
[Footnote 66] Rule 28 of Trade Mark Rules 2008
Registration of a series of trade marks; section 41
(1) An application may be made in accordance with rule 5 for the registration of a series of
trade marks in a single registration provided that the series comprises of no more than six
trade marks.
(1A) Where an application for registration of a series of trade marks comprises three or more
trade marks, the application shall be subject to the payment of the prescribed fee for each
trade mark in excess of two trade marks.
(2) Following an application under paragraph (1) the registrar shall, if satisfied that the marks
constitute a series, accept the application.
78
(3) to (4) Deleted
(5) At any time the applicant for registration of a series of trade marks or the proprietor of a
registered series of trade marks may request the deletion of a mark in that series and following
such request, the registrar shall delete the mark accordingly.
(6) Where under paragraph (5) the registrar deletes a trade mark from an application for registration, the application, in so far as it relates to the deleted mark, shall be treated as withdrawn.
(7) Deleted
2. Existing registered marks
(1) ….
(2) Existing registered marks registered as a series under section 21(2) of the 1938 Act shall
be similarly registered in the new register. Provision may be made by rules for putting such
entries in the same form as is required for entries under this Act.
(3) …...
[Footnote 67] Section 15 of Trade Mark Act 1999
Registration of parts of trade marks and of trade marks as a series
(1) to (2) …
(3) Where a person claiming to be the proprietor of several trade marks in respect of the same
or similar goods or services or description of goods or description of services which, while
resembling each other in the material particulars thereof, yet differ in respect of(a) statement of the goods or services in relation to which they are respectively used or proposed to be used; or
(b) statement of number, price, quality or names of places; or
(c) other matter of a non-distinctive character which does not substantially affect the identity
of the trade mark; or
(d) colour,
seeks to register those trade marks, they may be registered as a series in one registration.
[Footnote 67] Section 16 of Trade Mark Act 1999
Registration of trade mark as associated trade marks
(1) to (3)...
(4) All trade marks registered in accordance with the provisions of sub-section (3) of section
15 as a series in one registration shall be deemed to be and shall be registered as, associated
trade marks.
79
(5)….
[Footnote 67] Rule 25 of Trade Mark Rules 2002
Form and signing of application
(1) to (9)…..
(10) An application to register a series trade marks under section 15 for a specification of
goods or services included in a class or for different classes shall be made in form TM-8.
(11) An application to register a series trade mark under section 15 for a specification of
goods or services included in a class or different classes from a convention country under subsection (2) of section 154 shall be made in Form TM-37.
[Footnote 67] Rule 31 of Trade Mark Rules 2002
Series trade marks
Where an application is made for the registration of series trade marks under sub-section (3)
of section 15, copies of representation of each trade mark of the series shall accompany the
application in the manner set forth in rules 28 and 29.
An applicant claiming to be the proprietor of a series trade mark under subsection (3) of section 15 may apply to the Registrar in Form TM-8 or TM-37, as the case may be, for its registration as a series for one registration and there shall be included in each such application a
representation of the trade marks in a class or in each class claimed to be in the series. The
Registrar shall, if satisfied that the marks constitutes a series proceed further with the applications.
At any time before the publication of the application in the journal, the applicant applying
under sub-rule (2) may request in Form TM-53 for the division of the application into separate application or applications, as the case may be, in respect of one or more marks in that
series and the Registrar shall, if he is satisfied with the division requested conforms with subsection (3) of section 15, divide the application or applications accordingly.
The division of an application into one or more applications under sub-rule (3) shall be on the
payment of a divisional fee and such class fees as are appropriate.
[Footnote 67] Rule 44 of Trade Mark Rules 2002
Advertisement of series
Where an application relates to a series trade marks differing from one another in respect of
the particulars mentioned in sub-section (3) of section 15, the Registrar may, if he thinks fit,
80
insert with the advertisement of the application a statement of the manner in which the several
trade marks differ from one another
[Footnote 100] §1052 (Section 2 of the Lanham Act)
Trade marks registerable on the principal register; concurrent registration
No trade mark by which the goods of the applicant may be distinguished from the goods of
others shall be refused registration on the principal register on account of its nature unless it-(a) to (c) ….
(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and
Trade mark Office, or a mark or trade name previously used in the United States by another
and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director
determines that confusion, mistake, or deception is not likely to result from the continued use
by more than one person of the same or similar marks under conditions and limitations as to
the mode or place of use of the marks or the goods on or in connection with which such marks
are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the
earliest of the filing dates of the applications pending or of any registration issued under this
Act; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3,
1881, or February 20, 1905 and continuing in full force and effect on that date; or (3) July 5,
1947, in the case of applications filed under the Act of February 20, 1905 and registered after
July 5, 1947. Use prior to the filing date of any pending application or a registration shall not
be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is
entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the
Director shall prescribe conditions and limitations as to the mode or place of use of the mark
or the goods on or in connection with which such mark is registered to the respective persons.
(e) to (f) …
[Footnote 125] Article 8(1)(b)CTMR
Relative grounds for refusal
(1) Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall
not be registered:
(a) …
(b) if because of its identity with or similarity to the earlier trade mark and the identity or
similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the
likelihood of confusion includes the likelihood of association with the earlier trade mark.
81
(2) to (5)….
[Footnote 143] Article 43(2) and 43(3) CTMR
Examination of opposition
(1) ..
(2) If the applicant so requests, the proprietor of an earlier Community trade mark who has
given notice of opposition shall furnish proof that, during the period of five years preceding
the date of publication of the Community trade mark application, the earlier Community trade
mark has been put to genuine use in the Community in connection with the goods or services
in respect of which it is registered and which he cites as justification for his opposition, or that
there are proper reasons for non-use, provided the earlier Community trade mark has at that
date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to
part only of the goods or services for which it is registered it shall, for the purposes of the
examination of the opposition, be deemed to be registered in respect only of that part of the
goods or services.
(3) Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by
substituting use in the Member State in which the earlier national trade mark is protected for
use in the Community.
(4) to (6) ….
[Footnote 147] Article 15(1)(a) CTMR
Use of Community trade marks
(1) If, within a period of five years following registration, the proprietor has not put the
Community trade mark to genuine use in the Community in connection with the goods or
services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions
provided for in this Regulation, unless there are proper reasons for nonuse.
The following shall also constitute use within the meaning of the first subparagraph:
(a)Use of the Community trade mark in a form differing in elements which do not alter the
distinctive character of the mark in the form in which it was registered;
(b)Affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes.
82
[Footnote 243] Article 8(5) CTMR
Relative grounds for refusal
(1) to (4) …..
(5) Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with,
or similar to, the earlier trade mark and is to be registered for goods or services which are not
similar to those for which the earlier trade mark is registered, where, in the case of an earlier
Community trade mark, the trade mark has a reputation in the Community and in the case of
an earlier national trade mark, the trade mark has a reputation in the Member State concerned
and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
[Footnote 283, 284] Rule 22 of Implementing Regulation
Proof of use
(1) A request for proof of use pursuant to Article 43 (2) or (3) (now Article 42 (2) or 42(3)) of
the Regulation shall be admissible only if the applicant submits such a request within the period specified by the Office pursuant to Rule 20 (2).
(2) Where the opposing party has to furnish proof of use or show that there are proper reasons
for non-use, the Office shall invite him to provide the proof required within such period as it
shall specify. If the opposing party does not provide such proof before the time limit expires,
the Office shall reject the opposition.
(3) The indications and evidence for the furnishing of proof of use shall consist of indications
concerning the place, time, extent and nature of use of the opposing trade mark for the goods
and services in respect of which it is registered and on which the opposition is based and evidence in support of these indications in accordance with paragraph 4.
(4) The evidence shall be filed in accordance with Rules 79 and 79a and shall, in principle, be
confined to the submission of supporting documents and items such as packages, labels, price
lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing
as referred to in Article 76 (1)(f) (now Article 78 (1)(f)) of the Regulation.
(5) A request for proof of use may be made with or without submitting at the same time observations on the grounds on which the opposition is based. Such observations may be filed
together with the observations in reply to the proof of use.
(6) Where the evidence supplied by the opposing party is not in the language of the opposition
proceedings, the Office may require the opposing party to submit a translation of that evidence in that language, within a period specified by the Office.
83
BIBLIOGRAPHY
BOOKS
European Trade mark Litigation Handbook, Isabel Davies, Sweet & Maxwell
European Trademark Law: Community Trademark Law and Harmonized National Trade
mark Law, Tobias Cohen Jehoram, Constant van Nispen, Tony Huydecoper, Kluwer Law
International
Intellectual Property Law, P. Narayanan, Sixth edition, Eastern Law House
Intellectual Property Law: Text, Cases and Materials, Tanya Aplin and Jennifer Davis, First
edition, Oxford University Press
Intellectual Property Law, Lionel Bentley and Brad Sherman, Third edition, Oxford University Press
Kerley’s Law of Trade Marks and Trade Names, Sir Duncan M. Kerly, T.A.Blanco White and
Robin Jacob, Twelfth edition, Sweet & Maxwell
Trademarks and Unfair Competition, J Thomas McCarthy, Cumulative Supplementary Issued
in December 1985, Second edition, Volume 2, Thomson-Reuters-West
Trade Mark Use, Chapter 4 – Distinctive character acquired through use, Jeremy Philips and
Ilanah Simon, First Edition, Oxford University Press
ARTICLES
BIKINI CHRISTIAN DIOR PARIS confusing with BIKINI, Beata Wojtkowska, INTA Bulletin, March 1, 2012 Volume 67 No. 5
Choosing Fame over Family, Peter Mack, Geoff Mcnutt, John Vasuta and Michael Song,
[2004] 37 Akron Law Review
Control Of Trade marks By The Intellectual Property Holding Company, Pamela S. Chestek,
IDEA: The Journal Of Law And Technology 2001, 41 J.L. & Tech. 1
Diluting Brand Beliefs: When Do Brand Extensions Have a Negative Impact?, Barbara Loken
and Deborah Roedder John, Journal of Marketing, July 1993, Volume 57, No. 3
Ensuring greater legal certainty in OHIM decision-taking abandoning legal formalism, Rhys
Morgan, Journal of Intellectual Property Law & Practice (2012) Volume 7, Issue 6
Ferrero’s Kinder Surprise party spoiled by CFI finding , Geoff Weller, Journal of The Institute of Trade Mark Attorneys, December 2009, Issue no. 371
84
Genuine use of trade marks in the EU: New referrals to the Court of Justice by the German
Federal Supreme Court, Alexander R Keltt and Kathrin Schuleter, INTA Bulletin March 1,
2012 Volume 67 No. 5
German Federal Supreme Court: no exclusive rights in the descriptive word ‘Kinder’, Birgit
Clark, Journal of Intellectual Property Law & Practice, (2008), Volume 3, No. 3
Keeping it in the family: Defensive marks & Genuine use, CMS Brand Review June 2009
Marketing and the Law: Seeking Exclusivity over a Brand Naming System? The McDonald’s
Experience, Ann Morales Olazabal, Anita Cava and Rene Sacasas, Journal of the Academy
of Marketing Science January 2006 Volume 34
Mobilix smashes Obelix, Vivien Terrien and David Reingewirtz, Trademark World #184,
February 2006
Naming names: Part three-Safeguarding brand equity in the United States by developing a
family of trademarks, Ross D Petty, Journal of Brand Management (2010) Volume 17 No. 8
On Hummer and Jeep Wrangler Grilles and Recent Case Law, Lewis R. Clayton, New York
Law Journal Volume 225, No. 105
Proof of use: commentary on the practice of the Opposition Division of the OHIM, Jorg Weberndorfer, European Intellectual Property Review, Sweet & Maxwell and its Contributors,
EIPR 2001, 23(3)
Significant case law from 2004 on the Community trade mark from the Court of First Instance, the European Court of Justice and OHIM, Arnaud Folliard-Monguiral and David Rogers, EIPR 2005, 27(4)
Trademark Monopolies, Glynn S. Lunney, Jr., Emory Law Journal, 48 Emory L.J. 367 (1999)
INTERNET SOURCES
A Crowded CTM Register, Shane Smyth, available at
http://www.ecta.org/IMG/pdf/full_textsmyth_letterhead.pdf
A family affair, Sharon Daboul, available at http://www.mwtrademarks.com/wpcontent/uploads/2011/03/27_ITMA4_Uni.pdf
Apple Inc. website available at http://store.apple.com/us
Applications for a series of marks: UK Intellectual Property Office, available at
http://www.ipo.gov.uk/pro-types/pro-tm/t-law/t-notice/t-notice-feeservice.htm
Banking on Tactics from the CITIBANK Cases, Make your mark, Trade mark newsletter of
Jenkins, available at http://www.jenkins.eu/mym-autumn-2008/banking-on-tactics-from-thecitibank-cases.asp
85
Being cruel to be KINDER : COURT OF JUSTICE says ‘yes’ to TiMi, Jeremy Philips, available at http://ipkitten.blogspot.se/2011/03/being-cruel-to-be-kinder-ecj-says-yes.html
Changes that can be made to the Trade Mark Register, OHIM, available at
http://oami.europa.eu/ows/rw/pages/CTM/regProcess/changesRegister2.en.do
Civil cases, May 2009, B. Brett Heavner, available at
http://www.finnegan.com/files/upload/Incontestable_May09_4.html
Community Trade mark, OHIM available at
http://europa.eu/legislation_summaries/other/l26022a_en.htm
Cutting to the Bone: When Proof of Use Narrows Protection, Make your mark, Trade mark
newsletter of Jenkins, available at http://www.jenkins.eu/mym-spring-2007/cutting-to-thebone.asp
Do it yourself: likelihood of confusion for Brico centers, Laetitia Lagarde, available at
http://www.marques.org/class46/default.asp?D_A=20110701
ECJ endorses the Concept of Trademark Series, Marc Putz-Poulalion, available at
http://servicemarks.blogspot.se/2007/09/ecj-endorses-concept-of-serial-marks.html
Frequently asked questions, UK IPO, available at http://www.ipo.gov.uk/types/tm/t-about/tfaq/t-faq-series1.htm
Genuine trade mark use, Gavin Stenton and Rachael Parman, available at
http://www.lexology.com/library/detail.aspx?g=30001bf2-9a22-4f5f-a260-edb72a8c6644,
Keeping it in the family, Jeremy Philips, available at
http://ipkitten.blogspot.com/2007/04/keeping-it-in-family.html
KINDER Surprised: No Res Judicata in OHIM Disputes, Make your mark, Trade mark newsletter of Jenkins, available at http://www.jenkins.eu/mym-spring-2010/kinder-surprised--nores-judicata-in-ohim-disputes.asp
List of cases filed by McDonald’s Corporation, available at
http://en.wikipedia.org/wiki/McDonald's_legal_cases
McBummer: Thoughts on the McFamily of Trademarks McConcept, Ron Coleman, available
at http://www.likelihoodofconfusion.com/mcbummer/
Mmmmmmmmm, Donuts... the difficulties of successful brand translation in a global market,
Bill Ladas, available at http://www.davenportlyons.com/legal-services/articles/531/#foot
No Holes in Donut Monopoly, Trade mark newsletter of D Young & Co., available at
http://www.dyoung.com/trademarknewsletter-jul08
No likelihood of confusion or dilution between CITIBANK and CAPITAL CITY BANK,
Paul Devinsky, available at
86
http://www.mwe.com/index.cfm/fuseaction/publications.nldetail/object_id/e7c6fe2d-33d2469a-91ff-b7c8c52a1717.cfm#12
Proof of Use in CTM Opposition Proceedings, Ann E Roome, available at
http://www.avidity-ip.com/assets/pdf/pagestop_20070329160901.pdf
Red Bull fights, Tomasz Rychlicki, available at
http://www.marques.org/class46/default.asp?D_A=20120719#2905
Three Easy Steps for Creating a Brand Name Powerhouse Using a Family of Marks, Roger
Bora, available at http://trademarktitan.blogspot.se/2010/07/three-easy-steps-for-creatingbrand.html
Trademark Families, Sheldon Mak Rose & Anderson, available at
http://usip.com/pdf/Article_Trademarks/trademark.pdf
The TTAB’s dysfunctional ‘family of marks’ doctrine, John L. Welch, available at
http://thettablog.blogspot.com/2005/01/ttabs-dysfunctional-family-of-marks.html
The DuPont Factors: The Trademark Infringement Test Explained, Clifford D. Hyra, available at http://documents.jdsupra.com/a3a17e09-01de-4ead-b820-e75373997560.pdf
“You mark my words” – Choosing your brand and trade mark registration, Max Windich and
Rachael Parman, available at http://www.lexology.com/library/detail.aspx?g=621b4dc7-8dea492c-910b-1a86dfdec017
GUIDELINES/MANUALS
Guidelines for Trade mark Examination (International Trademark Association)
Practice Guidelines, Marks that differ due to Language, Intellectual Property Office (New
Zealand)
Manual Concerning Opposition Part 2, Chapter 2: Likelihood of Confusion D. Global Assessment and Part E, Section 3: Changes in an application or registration (European Union)
Manual for Trade mark practice and procedure (India)
Manual of trade mark practice, Chapter 3: The Examination Guide (United Kingdom)
Trademark Manual of Examining Procedure, Chapter 1200, Substantive Examination of Applications, Family of Marks (United States)
87
LEGISLATION
EUROPE
Commission Regulation (EC) No. 1041/2005
Council Regulation (EC) No 207/2009 on the Community Trade Mark
Council Directive No. 2008/95/EC, to approximate the laws of the Member States relating to
trade marks
Rule of Procedure of the General Court
Treaty of the Functioning of the European Union
INDIA
Trademark Act 1999
Trade Mark Rules 2002
UNITED KINGDOM
Trade Mark Act 1938
Trade Mark and Service Mark Rules, 1986
Trade Mark Act 1994
Trade Mark Rules 2008
UNITED STATES
Lanham Act, 1946
88