Thomas Pink wins PINK trade mark dispute

Alexander Borthwick (Powell Gilbert LLP)

Thomas Pink Limited v Victoria's Secret UK Limited [2014] EWHC 2631 (Ch)

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpu252, First published online: February 11, 2015

Following a trial before the High Court, England and Wales, Mr Justice Birss held that use by Victoria's Secret of the sign PINK infringed trade marks owed by Thomas Pink.

Legal context

The court considered issues of infringement and validity under the Trade Marks Act 1994 and the Community Trade Mark Regulation 207/2009.

Facts Thomas Pink's trade marks

Thomas Pink (TP) asserted two trade marks against Victoria's Secret (VS):

(a) A Community trade mark (CTM) for goods in various classes including class 25 (‘clothing, footwear, headgear’):

(b) A UK trade mark (filed as a series of two marks) for goods in various classes including class 25:

Victoria's Secret's uses of the trade marks

From 2012 onwards, VS made various uses of the sign PINK in the UK, as illustrated below.

Thomas Pink's claims

TP argued that VS's use of PINK as described above infringed the trade marks under ss 10(2) and 10(3) of the Act (the equivalent of Articles 9(1)(b) and 9(1)(c) of the Regulation). Briefly, these provisions prevent use in the course of trade of a sign that is identical, or similar, to a registered trade mark in relation to:

goods and services that are at least similar to those for which the mark is registered where there exists a likelihood of confusion on the part of the public and

goods and services, where the mark has a reputation in the Community/UK and the use of the sign is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.

VS argued by way of defence that the UK mark was invalid as lacking distinctiveness and that the CTM should be revoked for non-use.

Analysis

The case gave rise to the following issues of interest.

Validity of the trade marks

As to distinctiveness of the UK mark, Birss J held that this mark did not have inherent distinctiveness: the mark was predominantly the word ‘pink’, which described a characteristic of clothing. In his view, the rectangular box and the lettering did not add anything visually significant.

VS sought to argue that TP had not acquired distinctiveness in the UK mark because TP had not used it in the forms in which it appeared on the register. Birss J disagreed, holding that TP was entitled to rely on use of a registered mark in a form that differed in elements which did not alter the distinctive character of the registered mark: the differences between the trade marks were minor, and the most important element was the word PINK in a special format. Accordingly, the extensive use made by TP of the CTM resulted in the acquisition of distinctiveness by the UK mark. Consequently, the UK mark was held valid.

Regarding revocation of the CTM for non-use, under Article 51(1)(a) of the Regulation, a trade mark is liable to be revoked unless it has been put into genuine use for a continuous period of five years in the Community.

In CIPA v Registrar of Trade Marks (Case C-307/10, ECLI:EU:C:2012:361, the ‘IP Translator case’), the Court of Justice of the European Union (CJEU) ruled on the scope of protection conferred by a trade mark with a specification that uses ‘class headings’. One of the CJEU's rulings was that the goods and services for which an application is made to register the trade must be identified with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark. Relying on this decision, VS contended that the class heading for class 25, ‘clothing’ was too vague.

Birss J disagreed. He held that ‘clothing’ was a sufficiently clear and precise term. Further, in light of TP's evidence of use in relation to a wide range of garments, ‘clothing’ was a fair description of TP's actual use. Accordingly, there had been genuine use in respect of clothing.

While VS was successful in arguing that a number of other goods should be removed from the specification on the basis of non-use, this outcome did not affect the question of infringement.

Infringement under s 10(2)/Article 9(1)(b)

Following Specsavers v ASDA [2012] EWCA Civ 24, the context in which the defendant's sign appears is relevant to the question of infringement under s 10(2)/Article 9(1)(b). In that case, the Court of Appeal held at paragraph 87 that, ‘[i]n assessing the likelihood of confusion … the sign is not to be considered stripped of its context’.

VS submitted that it was material that each garment had a swing tag or label that featured the words VICTORIA'S SECRET, that the garments were sold in shops which featured numerous prominent references to VICTORIA'S SECRET, and that VS's PINK branded stores were in some instances either part of, or adjacent to, a store branded VICTORIA'S SECRET. However, the judge held that the post-sale context was a realistic and fair context in which to consider the effect of the use of the sign on clothing: where PINK was emblazoned prominently on a garment, the sign was meant to be seen by persons other than the wearer after purchase. The use of VICTORIA'S SECRET on swing tags, on labels and in relation to VS's stores was therefore not part of the assessment for these uses of PINK. In contrast, use of PINK on the swing tags and garment labels was to be considered in the context of VS's stores because that was where the average consumer would encounter them. For the store sign, it was fair to consider the front of the store.

Turning from the context of the allegedly infringing uses to the likelihood of confuson, Birss J held that the use of PINK on VS's clothing gave rise to a likelihood of confusion with TP's trade marks. The goods in question were identical. The sign PINK would not be seen by the average consumer as purely descriptive or decorative; some origin significance would be perceived. Using PINK in a device or slogan slightly reduced the similarity with TP's trade marks—but not enough to avoid a likelihood of confusion. Therefore such use infringed.

Similarly, the store front branding infringed the trade marks: the use of VICTORIA'S SECRET here (not visible in the photograph above) was not sufficiently prominent to dispel the risk of confusion. However, the use of PINK in conjunction with VICTORIA's SECRET on swing tags and labels did not infringe under s 10(2)/Article 9(1)(b). In this instance, the retail context was determinative of confusion. Consumers encountering the sign PINK here knew they were in a VS store and the swing tags, labels and receipts were all clearly marked VICTORIA'S SECRET.

So far as concerns the infringement claim under s 10(3)/Article 9(1)(c), given his findings in relation to s 10(2)/Article 9(1)(b), Birss J considered the use of PINK with VICTORIA'S SECRET only on swing tags and labels in VS stores.

In his judgment, TP's trade marks had sufficient reputation for the purpose of these provisions: TP had established a link between its marks and VS's use since consumers would see a sign reminiscent of them. VS's use was without due cause. In relation to detriment, VS's business was said to aim for ‘sexy, mass market appeal’; as a result of VS's use, TP's trade marks would be associated with a mass market offering, thereby reducing their luxurious reputation.

Practical significance

The finding that a trade mark may acquire distinctiveness through use of a non-identical sign may assist trade mark owners who, as was acknowledged at paragraph 95 of the judgment, ‘do not always and consistently use a mark in precisely the form as registered’. Birss J added that proprietors should not be barred from relying on oral use of prominent parts of a word or device mark to support the acquisition of distinctive character.

In light of Birss J's finding that ‘clothing’ was sufficiently clear, it remains to be determined whether the CJEU's decision in IP Translator has the effect that a lack of clarity in the specification is a basis for revocation of a trade mark (in addition to being a ground for refusal to register the mark). This point is the subject of two conflicting judgments: Total Ltd v YouView TV Ltd [2014] EWHC 1963 (Ch) and Stichting BDO v BDO Unibank, Inc [2013] EWHC 418 (Ch).

Finally, the case illustrates that the applicable context in which the defendant is deemed to use its sign under s 10(2)/Article 9(1)(b) remains a contentious issue and may directly determine infringement. Here, the finding as to likelihood of confusion for the uses of PINK on clothing (where only the post-sale context was held relevant) may be contrasted with that on the swing tags and labels (in which prominent pre-sale use of VICTORIA'S SECRET counteracted the risk of confusion). The rationale for this distinction is expected to receive further consideration when VS's appeal is heard later this year.

Boop oop a doop—protection for cartoon image of Betty Boop

Authors: Jeremy Blum and Nicholas Round (Bristows LLP)

Hearst Holdings Inc and others v AVELA Inc and others [2014] EWHC 439, Chancery Division, England and Wales, 25 February 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu068, first published online: April 29, 2014

Fresh from deciding in favour of Rihanna in Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another [2013] EWHC 2310 (Ch), Birss J concludes that another (albeit fictional) ‘pin-up’, Betty Boop, is also deserving of protection due to the considerable efforts of trade mark owner Hearst.

Legal context and facts

In their recent article (Jeremy Blum, Nicholas Round and Tom Ohta ‘Personality disorder: strategies for protecting celebrity names and images in the UK’ (2014) 9(2) JIPLP 137), the authors explained that, since umbrella ‘image right’ protection is not provided in the UK, a creative and imaginative approach is required to protect name and image rights. In particular an important strategy is to educate the public that the image or celebrity name at issue actually denotes trade origin. Not all strategies are successful and there are examples of many famous losers, both fictional characters and real celebrities. These include Tarzan (TARZAN [1970] RPC 450 (CA)); the Wombles (Wombles v Womble Skip Hire [1977] FSR 62); and the band Linkin Park (LINKIN PARK LLC's Application [2006] ETMR 74).

In Hearst, the claimant owned several trade marks in relation to the cartoon character Betty Boop (including marks relating to the words ‘BETTY BOOP’ and a device mark for an image of Betty Boop) and contended that it was the only legitimate source of Betty Boop merchandise in the UK. The defendant, AVELA, contended that it was also a legitimate source of Betty Boop ‘imagery’ and that Hearst's trade marks were invalid. Hearst claimed for trade mark infringement and passing off (a further claim, for copyright infringement, is set to be tried separately).

In relation to the trade mark claims, Hearst considered that any unauthorized product bearing an image recognizable as Betty Boop would infringe the device mark regardless of the particular pose adopted by the character. Further, any such product would also infringe the word marks regardless of whether BETTY BOOP, BOOP or a slogan such as ‘Boop oop a doop’ was used. The passing off case related to two acts of deception: (i) deceiving the trade and public that Betty Boop merchandise sold under AVELA's licence is official merchandise (or authorized by Hearst); and (ii) deceiving AVELA's licensees that they had been granted an official licence (ie by Hearst).

AVELA's defence to both trade mark infringement and passing off was that the Betty Boop imagery appearing on the goods in question was purely decorative and made no representation about trade origin. Birss J recognized that this defence introduces a key problem in merchandising:

[W]hen famous names or images are applied to merchandise they are not necessarily being used as indicators of origin of the goods at all … what better way is there to describe a poster depicting the band LINKIN PARK [than] as a ‘LINKIN PARK poster’[?] (para 69).

This problem arguably resulted in the famous losses outlined above and was something which AVELA sought to rely on. As Birss J noted at para 66: ‘[AVELA's] defence can be summed up as follows: “Elvis lost (ELVIS PRESLEY trade marks [1999] FSR 60 CA) and so should Betty Boop”.’

Having considered at length the history of Betty Boop merchandising and efforts made by Hearst to build up a recognizable Betty Boop ‘brand’, Birss J found in favour of the claimants in both the trade mark and passing off claims. At para 110, Birss J stated:

[T]he effect of the claimants' trading has been to imbue the character with trade mark significance in the public mind. They do not need to look at the swing tag to make the assumption that it is official Betty Boop merchandise any more than they need to look at the swing tag on a t-shirt with Calvin Klein written in large letters across the front to assume that it is from Calvin Klein. Not all merchandising works in this way but in my judgment today and at all material times, in the UK (and the rest of Europe), Betty Boop is a sign which can convey that kind of information in the context of the goods in this case.

Analysis

The key to Birss J's finding was the work Hearst had done to develop the brand of Betty Boop and to educate the public that there was a single entity responsible for its origin. Birss J did not consider that Betty Boop's current fame was due to her appearance in 1930s cartoons, and instead attributed it to Hearst. For 20 years Hearst had been the sole source of Betty Boop merchandise in the UK and had controlled what and how her image had been presented to the public in order to achieve her present appeal. The judge also reviewed security tags on merchandise which consistently attributed trade mark significance to the image and name as well as identifying the source of origin. Additionally, Hearst had been very active in promoting Betty Boop licences to the trade and had 20–25 active licensees, which Birss J accepted was a ‘significant network for a character brand’. Notably, the licensees sometimes emphasized that they were ‘official licensees’. Hearst also has ‘substantial’ approval and quality control arrangements in relation to the brand and overall its efforts have resulted in impressive growth in retail figures since 2000.

Birss J pointed to evidence that members of the trade believed that a licence was required to sell Betty Boop merchandise and that Hearst or its agent should be contacted in order to obtain such a licence. Although based on inference, Birss J also considered that the public believed that there was a single official source of Betty Boop merchandise. Crucially, Birss J concluded that it was the character Betty Boop herself who was recognized by the average consumers and who acted as a sign. It did not matter what pose the character appeared in as her head was still ‘instantly recognisable’.

In summary, the judge concluded that Hearst's work had resulted in a Betty Boop brand that was recognized by the public as coming from a particular source and so deserved fairly broad protection. Birss J's comments in para 101 summarize the reasoning and arguably hint at the tacit existence of an image right:

[T]he fact that one cannot register a character or a concept as a trade mark does not mean that the public do not in fact recognise a character as having origin significance.

Practical significance

Hearst's success in this case highlights particular factors that the court will consider in ‘character merchandising’ cases and provides further guidance on the strategy that brand owners should adopt. Hearst was able to educate the public that it was the sole official source of Betty Boop merchandise by actively promoting the brand to licensees using tag labels which gave an impression of official merchandise from Betty Boop, and then controlling the quality of the brand to build the reputation.

The case shows the pre-Fenty reluctance to allow protection for ‘character merchandising’ cases can be overcome where the claimant can establish that the use, even on traditional merchandise, was denoting origin.

The judgment also suggests that such protection may be easier to achieve with fictional characters than with real celebrities. At para 107 Birss J stated:

[I]t seems to me that it is probably easier to educate the public to believe that goods relating to an invented character derive from a single official source than it might be for a real person, not least because copyright law may give the inventor the ability to control the reproduction of the character for a very long time.

However, as demonstrated in Fenty, it is by no means impossible for real celebrities to also benefit from ‘image right’ protection. The authors consider that the overall impression created by both Fenty and Hearst is that the breadth of protection the courts will allow will depend significantly on the efforts made by the brand holder in creating and maintaining the image/celebrity name as a brand denoting origin.

HTC v Nokia: In the United Kingdom will an injunction be granted following a finding of patent infringement?

Author: Gary Moss: EIP Legal

HTC Corporation v Nokia Corporation [2013] EWHC 3778 (Pat), Patents Court, England and Wales, 3 December 2013

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu019, first published online: March 16, 2014

In this action Mr Justice Arnold granted a final injunction restraining HTC from continuing to sell products which he had previously determined infringed Nokia's patent. In doing so, he clarified the test to be applied when considering whether to grant a final injunction in patent cases.

Legal context

In May 2013 the author co-authored a paper (R Lundie-Smith and G Moss ‘Bard v Gore: to injunct, or not to injunct, what is the question? Is it right to reward an infringer for successfully exploiting a patent?’ (2013) 8(5) JIPLP 359) analysing the differences in approaches of the courts in the United States and the United Kingdom as to the grant of final injunctions in patent infringement cases. In particular, we drew attention to the fact that, following the decision of the US Supreme Court in eBay Inc v MercExchange, LLC, 547 US 388 (2006), the US courts had adopted a ‘balance of harm’ approach, whereas in the UK the approach still appeared to be that the claimant was entitled to an injunction unless the harm inflicted on the defendant by the grant of the injunction would be ‘grossly disproportionate’ to the continuing damage likely to be suffered by the patentee.

Further opportunity to assess the approach of the UK courts to this issue arose in HTC v Nokia. This followed the decision by Arnold J in October 2013 that HTC had infringed Nokia's European Patent (UK) No. 0,998,024 (the ‘024 patent) and that the patent was valid. The question which arose in the subsequent hearing was as to the consequences which flowed from this decision and, in particular, whether Nokia could secure an injunction?

Facts

An important aspect of the ‘024 patent was that it had not been declared essential to any telecoms standard. This meant that there had not been the usual fair, reasonable, and non-discriminatory (FRAND) undertaking in respect of this patent, and HTC could not avail itself of the defence that Nokia would have been obliged to grant it a licence under the patent had HTC been a willing licensee.

HTC nevertheless argued that, even though it had been found to be infringing Nokia's valid patent, Nokia's remedy should lie in damages alone. HTC relied inter alia on the following factors which, it said were present:

* the patented element formed only a small part of the overall commercial device;

* the royalties were likely to be small;

* Nokia was ‘only interested in money’ since it had licensed its patents to others and was on the verge of selling its handset business to Microsoft;

* Nokia had already granted licences to Apple and RIM and, according to HTC, Google, Samsung and LG were also infringing, but Nokia had not taken action to restrain their activities; and

* the grant of an injunction would have a disproportionately adverse impact on HTC given that the injunction would apply to its best-selling HTC One telephone.

All of which cut very little ice with the Arnold J. One matter which exercised him in particular was that it appeared that alternative, non-infringing solutions were available to HTC, but that HTC had not taken contingency steps to ensure that such alternatives could be implemented immediately, notwithstanding the fact that it had known since 2011 that Nokia was of the view that HTC's chips infringed a number of Nokia's non-standard essential patents.

Analysis

The UK law on whether an injunction will be granted following a successful finding of infringement derives from the decision in Shelfer v City of London Electric Lighting Co (1895) 1 Ch 287. In that case, A L Smith LJ stated that ‘it was a good working rule’ that damages could be given in substitution for an injunction:

* if the injury to the plaintiff's legal rights is small,

* it is one which is capable of being estimated in money,

* it is one which can be adequately compensated by a small money payment, and

* the case is one in which it would be oppressive to the defendant to grant an injunction.

Absent such factors, the claimant was entitled to the injunction.

In Navitaire Inc v EasyJet Airline Co Ltd (No 2) [2004] EWHC 2271 (Ch) Pumfrey J said that he understood the use of the word ‘oppressive’ in A L Smith LJ's formulation to mean that the grant of the injunction had to be ‘grossly disproportionate’ to the right protected. Pumfrey J's interpretation was cited with approval by Jacob LJ in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2011] EWCA Civ 163.

However, commentators have queried how this sits with Article 3(2) of Directive 2004/48 on the enforcement of intellectual property rights which provides that remedies shall be:

… effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.

The question raised was, how does one square the circle between something which is not ‘grossly disproportionate’ and something which is ‘proportionate’? Theoretically, each should be the mirror image of the other, but in that case what does the word ‘grossly’ add?

Arnold J stated that in his view the time had come to recognize that, in cases concerning infringement of intellectual property rights, the criteria to be applied when deciding whether or not to grant an injunction are those laid down by Article 3(2) of the Enforcement Directive. However, he also pointed out that the provisions of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) dealing with compulsory licences were of relevance in this context, since the effect of refusing an injunction following a finding of infringement was de facto the grant of a compulsory licence to the infringer. Article 30 of TRIPS provides that although Member States can provide limited exceptions to the exclusive rights conferred by a patent, such exceptions should not unreasonably conflict with the normal exploitation of the patent or unreasonably prejudice the legitimate rights of the patent owner. Arnold J concluded thus: I consider that Article 3(2) of the Enforcement Directive permits and requires the court to refuse to grant an injunction where it would be disproportionate to grant one even having regard to the requirements of efficacy and dissuasiveness. Where the right sought to be enforced by the injunction is a patent, however, the court must be very cautious before making an order which is tantamount to a compulsory licence in circumstances where no compulsory licence would be available. It follows that, where no other countervailing right is in play, the burden on the party seeking to show that the injunction would be disproportionate is a heavy one. Arnold J ended by commenting that he suspected that the practical effect of his conclusion was little different from the ‘grossly disproportionate’ test of Pumfrey J.

Applying these conclusions to the case before him, he decided that an injunction should be granted. Nevertheless, there was some relief for HTC in that, although he granted the injunction, he also stayed its implementation in respect of HTC's main product, the One, pending its appeal against his substantive findings on validity and infringement.

Practical significance

This case highlights that in the UK it is still the ‘norm’ that, following a finding of patent infringement, the presumption is in favour of the grant of an injunction. This is primarily due to the very nature of the right granted, ie a right to exclude all others from working the invention, and the fact that the injunction is the primary way of enforcing that right. That is not to say that injunctions follow automatically; each case will turn on its own facts. But, as Arnold J said, the burden on the party seeking to show that the grant of the injunction would be disproportionate is a heavy one.

Contrast this with the position in the USA where, following eBay, the question of whether or not a final injunction will be granted now appears to turn on the balance of equities. Moreover, as highlighted in our earlier paper, the US courts have not shied away from granting what is tantamount to compulsory licences and awarding ongoing royalties.

In the discussions regarding the Rules of Procedure for the Unified Patents Court, some commentators have suggested that when dealing with the power to grant injunctions there should be included so called ‘eBay’ provisions. By that is meant rules specifically providing that the court can only grant an injunction if the case satisfies the proportionality test. However, as this case graphically demonstrates, the European law on ‘proportionality’ in this area is significantly different from the test laid down by the US Supreme Court in eBay. To conflate the two approaches risks weakening the current protections enjoyed by patent owners in Europe and would be tantamount to enacting a change in the substantive law via the back door.

Premier League 1, Internet pirates 0: sports streaming website the latest to be blocked

Author: Darren Meale (Dentons UKMEA LLP)

The Football Association Premier League Ltd v British Sky Broadcasting Ltd and others [2013] EWHC 2058 (Ch), Chancery Division, England and Wales, 16 July 2013

Journal of Intellectual Property Law & Practice (2013), doi: 10.1093/jiplp/jpt165, first published online: September 26, 2013

Section 97A blocking injunctions are fast becoming an established weapon in the previously ineffective arsenal of rightsholders seeking to curb online piracy. For the first time the jurisdiction has been relied upon by the sports industry, to protect the lucrative rights to broadcast Premier League football and other major sporting events against streaming website firstRow1.eu.

Legal context

Internet piracy is tough to fight. There are too many individual infringers to sue. The pirate websites themselves set up out of the jurisdiction; cloak themselves in anonymity; refuse to engage with legal processes and generally make themselves very unattractive targets for litigation. Fortunately, s 97A of the United Kingdom's Copyright, Designs and Patents Act 1988 (CDPA) allows rightsholders to request that the High Court order the UK's ISPs—of which there are only a handful serving most of the country—to block their subscribers from accessing an infringing site in the first place. No access, no infringement.

Facts

Section 97A of the CDPA provides that ‘[t]he High Court … shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.’ This provision was implemented to comply with the Information Society Directive (2001/29). This author has covered previous uses of this power in articles such as ‘A triple strike against piracy as the music industry secures three more blocking injunctions’, to which readers are referred for background [Darren Meale ‘A triple strike against piracy as the music industry secures three more blocking injunctions’ (2012) 8(8) JIPLP, 591–594].

FirstRow is a very simple website: it provides links to live streams of sporting events. It does not host the streams itself, which are uploaded by third parties (some likely well known to FirstRow) to video streaming websites like 04stream.com. FirstRow's moderators then vet and index these streams. Many of the events available on FirstRow are premium events, only lawfully available with Sky Sports or other paid-for subscriptions, like UK Premier League football matches. The broadcast rights for those matches exceeded £3 billion in value last time they were auctioned, an asset which it is clearly in the interest of the rightsholders—in this case, the Football Association Premier League (FAPL)—to protect.

FirstRow's exploits have led to it becoming the 268th most popular website in the UK, ahead of such household names as lastminute.com and ft.com. Despite claiming that its service honourably allows impecunious fans to enjoy sport, FirstRow was estimated by FAPL to be making between £5 million and £10 million a year in advertising revenues from adverts shown before and alongside streams.

Analysis

Like the most recent rounds of s 97A applications, this was a one-sided piece of litigation. FirstRow was not involved. The UK ISPs did not appear and were not represented. The terms of the orders sought had been agreed with the ISPs beforehand, and so it fell to Mr Justice Arnold to determine whether the orders sought were justified. He did so on paper, without a hearing.

Four matters needed to be established if a block was to be ordered. Each was carefully considered by Arnold J. As the law and circumstances in this case were very similar to the previous s 97A applications (see the references to earlier articles above), three of the four matters will be covered only very briefly:

Were the ISPs ‘service providers’?

Yes there were, as the ISPs accepted. See r 2 of the Electronic Commerce (EC Directive) Regulations 2002, implementing the E-Commerce Directive (2000/31).

Do the users and/or the operators of FirstRow infringe copyright?

Unlike in the earlier cases, FirstRow was not a site involved in peer-to-peer file-sharing using BitTorrent or similar technology, but the infringement issues were highly similar. The court found that FirstRow's operators infringed. Users who were publicans who used FirstRow to show matches in their pubs infringed as well. The court's reasoning is considered below.

Do the users and/or the operators of FirstRow use the ISPs' services to infringe?

Arnold J answered this question in the affirmative following his reasoning in the earlier blocking cases.

Did the ISPs have actual knowledge of this?

Yes, following receipt of letters before action sent to them on 7 June 2013.

Infringements of copyright by FirstRow and its users

The majority of the judgment was taken up by consideration of this question. The court addressed the following: the infringing acts that might be relevant, including communication to the public within s 20 of the CDPA; whether the prerequisites for a communication to the public were met; and whether there was a communication to the public in the UK.

Infringing acts

The key act of alleged infringement of copyright in most internet-concerned cases, as in this one, is that of communication to the public. No allegation of straightforward copying was raised in light of the UK Supreme Court's decision—or in the referral to the Court of Justice of the European Union (CJEU)—in Meltwater [2013] UKSC 18. In this case the Supreme Court concluded that users who merely browse the internet do not infringe copyright in the material they browse by reason of the exemption under Article 5(1) of the Information Society Directive. That exemption covers temporary acts of copying which are, amongst other things, transient or incidental. The Supreme Court's conclusion might well extend to users who view streams, if the CJEU agrees with it.

Prerequisites for communication to the public

Case law (much of it from the CJEU) imposes a number of prerequisites before a finding of communication to the public can be made, including that there needs to be a ‘communication’ and a ‘public’. Consideration of these points took into account the CJEU's recent decision in Case C–607/11 ITV v TVCatchup, 7 March 2013, where that court interpreted ‘communication’ broadly, adding that ‘public’ referred to an indeterminate number of persons and implied a fairly large number of persons. In cases such as Case C–306/05 SGAE [2006] ECR I–11519, the CJEU had previously established that such public also had to be ‘new’. In TVCatchup, the CJEU performed a classic side-step, holding that this was not required where a television broadcast is re-transmitted via the internet. The reason given for this (which is a half reason at best) is that this was because such re-transmission is a separate communication to the public by a different technical means to the original broadcast.

Arnold J quickly concluded that these prerequisites were fulfilled in the present case. He additionally considered whether FirstRow was actually responsible for the communication of the streams, given that it merely linked to other streaming sites. It was, taking into account the interventions of FirstRow in aggregating, indexing and linking to streams for the convenience of users. He also concluded that FirstRow was jointly liable for the communication by the other streaming sites.

Communication to the public in the UK

Earlier decisions established that FirstRow must be shown to be targeting the UK public if there was to be a communication to the public in the UK. The judge concluded it was, on the basis of a number of factors including that the site is in English (not an overwhelming factor, given the ubiquity of the language online and in the real world); that FirstRow's advertising was by UK companies (which, this author notes, might actually be the responsibility of an independent adserving company, rather than FirstRow); that Premier League matches are popular in the UK (as they are in many other countries); and that FirstRow is very popular with UK users (even though nearly 8.5 million of its 10 million or so users were from outside of the UK). No doubt FirstRow targeted the UK (it probably targets everyone everywhere in its quest for ad revenue), but these factors essentially indicate that FirstRow's content is popular in the UK. That is not the same as saying that FirstRow is doing anything consciously to target it.

Having come to decisions on all four ingredients for a block, Arnold J determined that it was proportionate to order a block in this case on much the same basis as the blocks he had previously ordered. The parties had included wording in the draft order permitting the operators of FirstRow to apply to vary or discharge the order if they could show grounds to do so. He felt it beneficial to include this wording in future blocking orders.

Practical significance

With this victory, there have now been six reported victims of the music, film and sports industry: Newzbin2, The Pirate Bay, KAT, H33T, Fenopy and FirstRow. Arnold J's judgment also refers to an order against a seventh, torrent site EZTV, an order of Mann J (which does not yet appear to have been reported). The BBC reported in July that websites YIFY, Movie2K and download for all have also been blocked, bringing the total to 10. Another 25 or so websites are reportedly on a music and film industry hit-list, some of which have recently received cease and desist letters from the British Recorded Music Industry.

It therefore looks as if the High Court judiciary in England and Wales will be kept fairly busy entertaining s 97A injunction applications for the foreseeable future. Compared with other court business, the process for obtaining these injunctions now appears fine-tuned. Obtaining a block is also likely to be reasonably low-cost, certainly compared to obtaining other forms of relief against infringers. It is also quick: letters before action were sent out on 7 June 2013; judgment was given less than six weeks later.

A principle of general application?

Author: Darren Smyth (EIP, London)

Regeneron Pharmaceuticals Inc v Genentech Inc [2012] EWHC 657 (Pat), Patents Court, England and Wales, 22 March 2012

Journal of Intellectual Property Law & Practice (2012) doi: 10.1093/jiplp/jps087, first published online: June 19, 2012

The Patents Court, England and Wales, has upheld the validity of a claim expressed in broad functional terms and, in relation to sufficiency, has, unusually, considered that the invention relates to a ‘principle of general application’ as set out by the House of Lords in Biogen Inc v Medeva plc [1997] RPC 49.

Legal context

In European patent law, there is no specific prohibition on claiming an invention in broad terms. The closest legal provision, that the claims must be ‘supported by the description’ (Article 84 of the European Patent Convention, EPC) is not a ground of invalidity of a patent. However, a claim that is expressed in broad terms will frequently be found either to lack inventive step (because it encompasses obvious subject matter) or to be insufficient.

The requirement for sufficiency is expressed in Article 83 EPC: ‘The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.’ Within this broad requirement, UK jurisprudence has established three ways in which insufficiency can arise: classical insufficiency, ‘Biogen insufficiency’ or insufficiency by excessive claim breadth, and insufficiency by ambiguity.

In Biogen the leading judgment stated: ‘If the invention discloses a principle capable of general application, the claims may be in correspondingly general terms’. Therefore, the criterion to be satisfied for a claim which is framed in broad terms to be found sufficient according to Biogen is that it involves ‘a principle capable of general application’.

Accordingly, patentees frequently argue that their invention discloses a principle capable of general application, but cases where this has been accepted are rare. It was recently acknowledged in H. Lundbeck A/S v Norpharma SpA [2011] EWHC 907 (Pat), where the following claim was held not to be insufficient (although the patent was held invalid on other grounds): A process for the synthesis of citalopram, in which a process for the synthesis of [intermediate] according to claim 1 is contained. However, in that case, the part of the claim that was expressed broadly was that part that was peripheral to the actual invention.

Facts

The Genentech patent at issue is EP 1238986 and relates to VEGF. VEGF was known at the priority date as one of a number of angiogenic growth factors (others included FGF, PD-ECGF, EGF, TGF-ß, TNF-α, angiogenin and angiotropin). Because angiogenesis (or neo-vascularisation—the process of new blood vessel growth by outgrowth from pre-existing vessels) is implicated in a large number of diseases, including cancer, rheumatoid arthritis, macular degeneration, and atherosclerosis, a growth factor whose activity could be targeted to control angiogenesis would have been therapeutically highly desirable. However, it was not known that VEGF was such a growth factor.

The main claim of the patent was in the following terms:

Use of a hVEGF antagonist in the preparation of a medicament for the treatment of a non-neoplastic disease or disorder characterised by undesirable excessive neovascularisation, wherein the hVEGF antagonist is:

(a) an anti-VEGF antibody or antibody fragment;

(b) an anti-VEGF receptor antibody or antibody fragment; or

(c) an isolated hVEGF receptor.

Regeneron and Bayer sought revocation of the patent, and also a declaration that a product to be marketed by Regeneron under licence from Bayer called VEGF Trap Eye (VTE) did not infringe.

VTE was found to infringe the patent on the basis that it satisfied the definition of (c) in the claim, even though it did not include the whole of the hVEGF receptor sequence.

The claim was found to involve an inventive step over the pleaded closest prior art, a paper entitled ‘The vascular endothelial growth factor proteins: identification of biologically relevant regions by neutralizing monoclonal antibodies’, which disclosed an anti-VEGF antibody (ie an antibody satisfying the definition of (a) of the claim). The judge accepted that, although the paper stated that the antibody ‘may have therapeutic potential’, it did not render it obvious to use anti-VEGF antibodies in therapy, because of ‘the fact that VEGF was only one of many factors and other agents which could be investigated, the commonly accepted view that there was no single factor responsible, the confusing picture presented by the common general knowledge and the view that achieving anti-angiogenesis therapy would be difficult’.

The judge acknowledged secondary indicia of non-obviousness, including a prestigious award given to one of the inventors, and other accolades in the literature.

A number of insufficiency attacks were made on the patent, and the judge rejected them all. On the matter of Biogen insufficiency, the judgment states:

I consider that the patent discloses a principle of general application within the meaning of the authorities insofar as it claims anti-VEGF antagonism as a treatment for all non-neoplastic diseases. The tumour data in the patent establish that VEGF blockade is likely to be a successful strategy for treatment in cancer. The skilled reader would appreciate that the reason it is likely to be successful is because blocking VEGF is a sufficient intervention to prevent angiogenesis, at least in models of cancer. It is common ground that it is possible to extrapolate that reasoning to at least some non-neoplastic diseases.

Thus the judge placed the invention squarely within the situation where, according to Biogen, it can be claimed in broad terms.

The judge rejected sufficiency attacks based on the time and effort that would be necessary to develop treatments according to the claims, in particular the definition in (c) of the claim, not least VTE itself which was accepted to be ‘very clever’. In this regard, the judgment states:

The fact that a claim may extend to further inventions which make use of the principle disclosed in a patent does not necessarily render the patent insufficient. I do not consider that the fact that the claim extends to VTE makes the present patent insufficient, even in the light of the evidence which I have accepted. Finally, therefore, the judge concluded: ‘The patent is not invalid on any ground alleged. The patent is infringed by VEGF Trap Eye.’

Analysis

Biogen insufficiency in UK jurisprudence relating to broad claims is mirrored by EPO jurisprudence which, however, generally considers the matter as an issue of inventive step. The leading case is AGREVO/T 939/92 according to which, if the technical problem is not solved across the breadth of the claim, the claim lacks inventive step. Lack of inventive step according to AGREVO was separately pleaded, but the judge understandably stated that ‘in the present case this argument traverses the identical ground to that raised by insufficiency’, and so dealt with it accordingly under the insufficiency heading.

Whether expressed as a matter of inventive step or insufficiency, both approaches are intended, in their way, to ensure that the monopoly granted by the patent is commensurate with the contribution to the art. This is still a precept of patent law in Europe.

‘Fair basis’ (that the claims must be fairly based on the description) was a requirement of the Patents Act 1949 in the UK, and is still a requirement in, for example, Australia, but does not survive in that form in current European patent law. Moreover, ‘support’ (that the claims be supported by the description) is not a ground of opposition or revocation. Nevertheless, jurisprudence has been developed in Europe under the current law in relation to inventive step and sufficiency to maintain the balance between contribution to the art and the scope of allowable claim.

In the present case, the claim was unusually broadly defined in that both of the key features were defined in broad functional terms—the medical indication (any disease other than cancer in which undesirable excessive blood vessel growth occurs) and the treatment agent (any antibody or fragment against VEGF or a VEGF receptor, or a VEGF receptor [or, as construed by the judge, part thereof]). Further, VEGF was, as such, already known as an angiogenic growth factor at the priority date of the patent: what was unknown was that VEGF is necessary for pathological angiogenesis, and therefore it was not known what would be the therapeutic effect, if any, of a VEGF antagonist. This might therefore have seemed an unpromising case to successfully argue sufficiency under the Biogen jurisprudence.

The decision rests on a number of findings, key among which are the following: that the patent disclosed a principle of general application; that it was reasonable at the time to predict that anti-VEGF therapy would be effective in relation to non-neoplastic diseases generally; and that allegations of classical insufficiency that specific diseases could not be treated as claimed were not made out. In relation to the ability to make the claimed antagonists, there was no real attack in relation to the antibodies defined in (a) and (b) of the claim, and the objection in relation to the receptor defined in (c) of the claim was only in relation to an antagonist with less than the full extracellular domain of the VEGF receptor. This objection was rejected on the basis that in this industry ‘careful experimentation with a degree of trial and error, sometimes extending over months and years, is entirely normal’, and because:

A patent is not insufficient because it may take much work to develop the most elegant or refined embodiment of its inventive concept. If one were to carry on with the refinement, one would still be making use of the principle disclosed in the patent, working towards an improved embodiment of it.

Practical significance

Because the UK courts since Biogen have so rarely acknowledged that an invention involves a principle of general application, practitioners may have come to believe that such cases would be purely theoretical. This decision should give assurance that in appropriate cases broad protection can be validly obtained.

The Pirate Bay: sunk without a say?

Darren Meale (SNR Denton UK LLP) is a regular contributor to JIPLP. Here he writes a Current Intelligence note on Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others [2012] EWHC 268 (Ch) (20 February 2012) -- a case which has attracted considerable attention in its approach to the blocking of The Pirate Bay's BitTorrent-driven file-sharing site.

This action will be before the court again in June. Since publication of this Current Intelligence note by conventional means would mean that it would be available readers only very shortly before the further hearing, JIPLP has decided to make it available online now via this weblog.  Following the second hearing, Darren will produce a further, ideally final, piece on this action.

"The Pirate Bay: sunk without a say? 

Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others [2012] EWHC 268 (Ch) (20 February 2012) 

The world's most famous online pirates have, unsurprisingly, been held to infringe UK copyright in an application brought not against the notorious The Pirate Bay bittorrent tracker itself but against the UK's six leading ISPs, in a bid to have each of them block their users from accessing it.

Online copyright infringement remains rampant and a significant threat to the growing legal business models providing consumers with access to music, film and other content online. The major film and music studios have shown willingness to enforce their rights in the courts, but many of their victories have been hollow: the infringers just pop up again with a different name, in a different form or in a jurisdiction in which enforcement is difficult. Rightsholders have therefore changed tack, seeking to force internet service providers to prevent their subscribers from accessing the infringing services in the first place. 

Facts 

Last year a group of film studios scored a significant victory in the Internet piracy battle when they succeeded in forcing BT, one of the UK's most popular internet service providers, to block access to an online service called NewzBin2. NewzBin2 was a sequel service to NewzBin, a site which greatly facilitated its paid users' attempts to download copyright-infringing films and other media. The Studios beat the first NewzBin in a 2010 High Court action, forcing its shutdown. But the sequel service quickly rose in its place. In 2011, in a test case against BT (for more details see my earlier CI, "NewzBin2: the first section 97A injunction against an ISP" here), the Studios changed tactics. Rather than attack the infringing service direct, they targeted one of the ISPs through which individuals accessed it. In doing so they sought, successfully, to rely on section 97A of the Copyright, Designs and Patents Act 1988 (“CDPA”), a previously unused provision which provides that “The High Court…shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.” 

With BT ordered to block Newzbin2, the Studios obtained similar blocks against ISPs Sky and TalkTalk. 

No doubt buoyed by these successes, a group of record companies are now seeking an order that six of the UK's largest ISPs block a different – and far more high profile – service: The Pirate Bay (TPB). Like most services of its type, TPB does not host infringing content. It provides links to torrent files, which allow users to download content using the BitTorrent peer-to-peer file sharing protocol. Most of the content available on TPB is unlawful copies of films, music and software. TPB is probably fairly described as the celebrity poster-boy of piracy. It has been the subject of countless court actions around the world, and its four founding Swedish members have been criminally prosecuted for their part in the service, receiving custodial sentences and large fines (although as far as this author knows, these penalties have yet to be served or paid). Yet the site still operates, defiantly describing itself as "The galaxy's most resilient BitTorrent site". As at the end of last year, it was the 43rd most popular website in the UK (according to Alexa) and generating millions of dollars of advertising revenue a month. 

With the agreement of both sides, the record companies' application has been split in two: a preliminary hearing to decide whether the users and operators of TPB infringe the record companies' copyright; followed by a hearing on whether a block should be ordered and what form it would take (although the court held that it was not necessary to split such applications in this way – they could well be heard all at once). Mr Justice Arnold has now ruled on the first issue, finding overwhelmingly in the record companies' favour. 

Analysis 

It is worth noting that, unusually, none of the affected parties defended this part of the record companies' application. The question to be answered was "does TPB or its users infringe copyright?", yet neither were parties to the claim (nor had it been served on them). Ultimately, the record companies are seeking an order against ISPs, but none of the six targeted chose to defend the application either. Perhaps this is unsurprising – the ISPs rightly point out that it is not for them to decide whether TPB's activities are unlawful. Further, had the ISPs sought to defend a service which so openly revels in its misdeeds, they may have suffered negative costs consequences when that defence inevitably failed. Declining to resist this part of the application may mitigate any liability to those costs the ISPs may ultimate have. 

Given its notoriety, it was a fairly safe bet to assume the High Court would find that both TPB and its users infringed the record companies' copyright, but Mr Justice Arnold nevertheless gave thorough consideration to the legal issues, not least because there was no party present to defend the alleged perpetrators. 

Arnold J focused his attention on the following three issues: 

1 Was it appropriate to consider the liability of TPB and its users in their absence? 

Yes, held Arnold J, for three reasons. First, section 97A of the CDPA (which has its origins in Article 8(3) of the Information Society Directive 2001/29) is directed at service providers, not the directly infringing services or their directly infringing users. There was no jurisdictional requirement for the latter to be involved. Second, courts in the UK and Europe applying Article 8(3) have proceeded on the basis that direct infringers need not be joined. Third, it would be impractical to join or serve TPB's users and the whereabouts of its operators (including the four founding members referred to above – they appear to have fled Sweden to escape custody) are unknown. The judge also took into account that TPB's website contains a clear statement of the operators' attitude to the law – they do not respect it and have no intention of engaging with the legal process. 

2 Were TPB's users infringing the record companies' copyright? 

Yes, held the judge – users were committing the restricted acts of "copying" and "communication to the public". Copying was fairly straightforward – when a user selects a torrent file, he or she then downloads a copy of the film or music track in question. The judge was satisfied that doing so without consent of the rightsholder amounted to an infringement of copyright. 

"Communication to the public" was more challenging and involved a thorough examination of a number of recent and current ECJ references on the meaning of this restricted act. These included SGAE v Rafeal Hoteles Case C-306/55; ITV v TVCatchup C-607/11 (reference pending); FA v QC Leisure C-403/08 and C-429/08; Airfield v SABAM C-431/09 and C-432/09; and Football Dataco v Sportradar C-173/11 (reference pending). This act restricts, among other things, "the making available to the public of the work by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them" (section 20(2)(b) CDPA). One of the key points debated in these cases is the principle that the "public" to whom the communication is made must be a "new public", one that is different to the public which the rightsholder took into account when it authorised the original communication to the public of the work. 

The judge was satisfied that participation in file sharing using torrent files acquired through TPB satisfied the basic requirements of the restricted act. As regards the "new public" question, he was satisfied that this requirement was also met, as copies of sound recordings where being made available to users who had not purchased them from an authorised source. Accordingly, he concluded that TPB's users were infringing the record companies' copyright in this way as well. 

3 Were TPB's operators infringing the record companies' copyright? 

The record companies did not contend that TPB was a direct infringer of their rights, rather that they were liable as accessories to the acts of their users. First, as it authorised the acts of their users; second, as it participated in a "common design" with its users to infringe. 

To authorise means "to grant or purport to grant to a third person the right to do the act complained of" (see CBS v Amstrad [1988] 1 AC 1013). In the first Newzbin case, Kitchin J considered a number of factors to determine whether the operators of Newzbin were liable for their users' acts. These were also considered by Arnold J as follows: the nature of the relationship between them (TPB "goes to great lengths to facilitate and promote the download of torrent files by its users"); how inevitable infringement was (infringement was TPB's objective and intention); and the degree of control and steps taken to prevent infringement (TPB could remove infringing torrents, but did not and did not want to do so). On this basis, he concluded that TPB did authorise its users' infringements, noting that "I consider the present case to be indistinguishable from [Newzbin] in this respect. If anything, it is a stronger case." 

On the basis of the matters considered for authorisation, the judge also concluded that the operators of TPB induced, incited or persuaded its users to commit infringement of copyright and that they and the users acted pursuant to a common design to infringe. This made TPB jointly liable for the users' infringements. 

Practical Significance 

With that the record companies scored something of a slam dunk against TPB, which comes as no surprise given TPB's notoriety and the lack of any one present in court to attempt to spin any clever arguments in their defence. Experience learned from the Newzbin cases, combined with the facts that the claim was undefended and brought by a large representative group of record companies, means that the industry has probably obtained this judgment for a fairly modest cost, as compared to the usual expense of a fully-fought copyright dispute. This will not make it cost effective to bring similar claims in respect of every infringing service on the Internet, but it may make it feasible to repeat the endeavour against some of the other main offenders. 

This was only stage one – the next stage is to have the Court order a block. But everything looks good on that front. The hard part in the Newzbin cases was probably obtaining the original infringement judgment, the follow-up application under section 97A of the CDPA, although making new ground, was relatively straightforward and it came as no surprise when the block against BT was ordered. The hearing on the block is set for June, but it is hard to see what outcome there will be other than an order against all six ISPs to block access to TPB. BT put forward all the arguments it could against the block in Newzbin2; they all failed. There is very little to distinguish the Newzbin service from TPB's. In fact, as Arnold J noted, TPB is arguably the stronger case of infringement. 

Following the first block against BT in Newzbin2, section 97A appeared to be a fairly powerful weapon for rightsholders, and they are well on the way to deploying it successfully here. The record companies approach appears cleverly engineered: the ISPs will not oppose the claim of infringement, and once that unopposed (and likely therefore quicker and cheaper) claim succeeds it is almost inevitable that the court will order a block. The efficiency of this process, and the way in which ISPs are likely to react to future applications by rightsholders, may well depend on how the Court decides the matter of costs. In Newzbin2, BT had to pay the costs of the film studios' application because it resisted it, as well as the costs of implementing the order. Declining to oppose the copyright infringement claim here may save the ISPs some costs, but we have yet to see what position they will take on the block and whether, if it is granted, the court will again require them to pay for its implementation. 

To conclude on a more practical point: will the block work? Already, and with its usual defiance, TPB has vowed to fight on and adapt so as to become harder to block. It will now switch completely from using torrent files to using "magnet" files on the basis that the latter are harder to block. Further, many of the mechanisms available to ISPs for blocking websites (eg, IP address blocking and re-routing, URL blocking) can be circumvented using fairly straightforward methods such as by using proxy servers. There are also countless websites and YouTube videos purporting to explain how to get round blocks – although websites devoted to circumvention may be covered by the terms of any blocking order too. 

The author will revisit this case once its second part is heard in the summer".

Chocs away for registration of Cadbury's purple

Author: Ilanah Simon Fhima (Faculty of Laws, University College London)

Application by Cadbury Ltd to Register a Shade of the Colour Purple for Goods in Class 30; Opposition by Société des Produits Nestlé SA, United Kingdom Trade Marks Registry, O-358-11, 20 October 2011

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jpr210, first published online: February 10, 2012

A senior hearing officer in the IPO rules on the registrability of a single colour mark.

Legal context

Following the decision of the Court of Justice of the European Union (ECJ) in Libertel Groep BV v Benelux-Merkenbureau (C-104/01) [2003] ECR I-3793, it is clear that single undelimited colours can be registered as trade marks. However, it is equally clear that colour marks face many challenges, including how they can be adequately graphically represented and whether consumers will view them as distinguishing the origin of the goods or services on which they are used. In practice, there have been few decisions on the registrability of single colours since Libertel. In this decision, Hearing Officer Allan James provides much needed guidance on the correct approach to registering a colour mark that will be familiar to many UK consumers.

Facts

In October 2004, Cadbury applied to register ‘The colour purple (Pantone 2685C), as shown in the form of application, applied to the whole visible surface or being the predominant colour applied to the whole visible surface, of the packaging of the goods’, accompanied by a colour sample, for ‘chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes’. After the examiner objected to the application for want of distinctive character, Cadbury produced evidence of acquired distinctiveness and the application was accepted and published. However, Nestlé opposed the application, arguing that it was not adequately graphically represented, was not a sign, and was incapable of distinguishing. Nestlé also claimed the mark fell foul of sections 3(1)(b), (c), and (d) of the Trade Marks Act 1994, had not acquired distinctive character, and had been applied for in bad faith because Cadbury had no intention to use the mark for the ‘whole visible surface’ of goods, or for the wide range of goods specified.

Analysis

Section 3(1)(a) grounds

All three section 3(1)(a) grounds were rejected by the Hearing Officer. Following Libertel, colours clearly can be signs, but they cannot be presumed to be signs. A colour might be a simple property of the goods, eg brown is the natural colour of chocolate, or may be incidental, eg the colour of the shoes of a child shown eating a bar of chocolate on the packaging of the chocolate. Neither type of use would send any information to consumers. However, there was nothing suggesting that the applied-for colour was a property of chocolate.

Nestlé had argued that the colour was not a sign because it encompassed an infinite number of signs. This too was rejected by the Hearing Officer. The fact that the mark envisaged the use of variable quantities of the mark did not matter as the mark itself, the colour purple Pantone 2685C, was fixed and stable. Any other answer would undermine the ECJ's previous findings that colours in the abstract can be registered. The applied-for mark was not analogous to the mark applied for in Dyson Ltd v Registrar of Trade Marks (C-321/03) [2007] ECR I-687 because the colour was not a mere property of the goods. Nor was it excluded under Heidelberger Bauchemie GmbH's Trade Mark Application (C49/02) [2004] ECR I-6129. While colour combinations must be presented in a predetermined and uniform way, this does not mean that contours or other methods of spatial definition must be utilized for either colour combinations or single colours. That the specification mentioned the use of purple as a ‘predominant’ colour did not render the applied-for mark a colour combination. While it envisaged the use of the purple with other material, this other material did not constitute part of the mark. Likewise, Nestlé's argument that the representation of Cadbury's mark would permit a variation in the use of the colour ranging from an uncertain percentage to 100 per cent was also flawed. It is not normally necessary to specify how a trade mark will actually be used as part of the graphic representation. Libertel made no mention of such a requirement, which was particularly significant because that case, like this one, involved a single colour. The requirement in Heidelberger Bauchemie was for a ‘fixed relationship’, not a spatial definition demonstrating actual use. Indeed, the cases suggested that it would have been acceptable for Cadbury to have requested registration merely by reference to the Pantone number, without mentioning the actual use.

Nestlé argued that the inclusion of the words ‘being the predominant colour’ was too vague and meant that the sign was not adequately graphically represented. This too was rejected. The mere provision of a colour sample, accompanied by a Pantone number, would have satisfied the Libertel requirements for the graphic representation of the colour. The added wording made the sign no less clear, precise, self-contained, easily accessible, and intelligible, but arguably made the representation clearer. Although the wording required a decision-taker to judge whether the colour was the ‘predominant’ one used, this was no more complicated than any of the other judgments that would be made during infringement proceedings.

In relation to whether the mark was capable of distinguishing, it was clear from Libertel that a single colour is not incapable of distinguishing. In any event, this aspect was contingent on the outcome of any objections under sections 3(1)(b), (c), and (d), and could not apply if acquired distinctiveness was shown.

Bad faith

Nestlé claimed that Cadbury had demonstrated bad faith as, at the time of registration, it had no intention to use the colour mark ‘applied to the whole visible surface … of the packaging of the goods’. The Hearing Officer accepted that a lack of intention to use a mark may constitute bad faith. However, there was no lack of an intention to use here. The Cadbury mark was not a bundle of marks, consisting of varying percentages of purple rolled into one. Instead, the use of the colour purple on the entirety of the packaging was just the ultimate example of the colour being predominant on the packaging of the goods. Moreover, there was evidence that one Cadbury product had been sold in a wrapper that was completely the relevant shade of purple. Nestlé's argument that the colour had not been applied to the ‘whole visible surface’ because the brand name was also present in a different colour was dismissed as ‘absurd’ and Cadbury's use of the words in such circumstances could not constitute activity which fell short of the standard of commercial behaviour observed by reasonable businessmen in the area.

Lack of distinctiveness

Cadbury accepted that the colour mark was not inherently distinctive. Consequently, there was no need to examine the mark under sections 3(1)(b), (c), or (d). Instead, the question was whether the mark had acquired distinctiveness by the application date. The Hearing Officer was guided by the ECJ's decisions in Libertel, and Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehor Walter Huber (C108/97) [1999] ECR I-2779. These required him to remember that colours would not necessarily be perceived by consumers in the same way as word marks, but that the method of, and factors to be taken into account for, assessing acquired distinctiveness remained the same. Additionally, the general interest in not unreasonably restricting access to colours had to be considered, although this had to be done by ‘critically assessing’ acquired distinctiveness for every item specified, rather than through refusing registration where a mark was shown to have acquired distinctiveness.

Clearly, there was an association of some sort in the public's mind between the purple colour and Cadbury, but the relevant question was whether the mark was distinctive of the goods, rather than just the company. On the evidence, the mark was distinctive for chocolate in bar and tablet form. A shade of the colour purple had been used for the Dairy Milk chocolate bar, which was the best-selling confectionery product in the UK, for nearly 20 years. Cadbury spent £35m on advertising including the colour in 2004 alone and the colour had been used in promotional contexts, including sponsorship of the Commonwealth Games and a popular television soap. Evidence from trade associations pointed to acquired distinctiveness, as did a survey showing 44 per cent unprompted association between the colour and Cadbury. Furthermore, third party use of purple on chocolate bars was limited to use on an ‘imitation’ own brand product, use which started a mere four months before Cadbury's application and which was limited in scale. The Hearing Officer also noted that exclusivity is not required for acquired distinctiveness. In order to show acquired distinctiveness, it was necessary to show that consumer association went beyond merely being ‘reminded’ of Cadbury. However, evidence of detrimental reliance such as confusion was not required as such evidence was unlikely to come to light in relation to a low cost item. Instead, reasonable inferences could be drawn from the use of the mark.

Purple had also acquired distinctiveness for chocolate confectionery products consisting just of chocolate since Cadbury had used the mark for over a decade for popular products fitting that description. Moreover, because these products were pure chocolate, there would have been a spill-over effect from Dairy Milk. However, there was insufficient evidence to show acquired distinctiveness for other forms of chocolate confectionery. Likewise, the mark had acquired distinctiveness for drinking chocolate and preparations for making drinking chocolate. Again the goods had been on sale in purple packaging since the early 1990s; Cadbury had 55 per cent of the drinking chocolate market in 2007 and survey evidence showed 69 per cent recognition from the same year. While this was three years after the application date, the Hearing Officer judged it unlikely that such a strong position could have been built up from nothing. The distinctiveness for chocolate bars was once again helpful, as drinking chocolate would be perceived as chocolate in liquid form.

However, the mark lacked acquired distinctiveness for chocolate assortments and chocolate cakes. In the former case, the evidence suggested that such products were less associated with Cadbury than with chocolate per se. Moreover, its best-selling assortment had been sold in a blue, rather than a purple box. In relation to the latter, there was insufficient evidence of how purple had actually been used for cakes.

Practical significance

This is a decision where less, arguably, would have been more. Cadbury's presumably well-meaning, but unnecessary attempts to clarify the scope of its use of the shade of purple applied for led directly to the challenges based on whether the mark was a sign, whether it was adequately graphically represented, and whether it was applied for in bad faith. However, the Hearing Officer took a common-sense approach to these challenges, true to the spirit of Libertel, which makes it clear that single undelimited colours are registrable.

In relation to acquired distinctiveness, the Hearing Officer viewed a detailed consideration of acquired distinctiveness in relation to each of the products applied for as the way to ensure that concerns about monopolizing colours could be taken into account. Yet, one would expect this form of analysis to take place in relation to judging acquired distinctiveness of every form of mark. Also of interest is how the very strong acquired distinctiveness in relation to chocolate bars and tablets had a ‘trickle-down’ effect to other products viewed essentially as chocolate, even though the evidence of acquired distinctiveness in relation to those products was not as strong. Finally, the Hearing Officer raised, but did not solve, an enduring problem: how to distinguish between mere association between a mark and a company, as opposed to acquired distinctiveness as to origin—an issue which is particularly acute where a mark is as familiar as Cadbury's purple is.