On your trademarks

Trademark law is in a constant state of flux, and many cases end up in the House of Lords or even the ECJ. Andrew Norris reports on the year's most significant rulings

There seems to have been more recent developments in trademarks and passing off than in other areas of intellectual property law. In particular, a number of points have been referred to the European Court of Justice (ECJ) that reflect areas of uncertainty in trademark law. No doubt intellectual property practitioners hope that the forthcoming decision of the ECJ is not as Delphic as the opinion of the Advocate General in respect of the question jointly referred following the Tesco and Davidoff cases. Furthermore, the issue of whether there needs to be “trademark use” for there to be infringement remains unresolved, and the Arsenal case has given the ECJ another opportunity to answer that question.
There are soon to be substantive changes to the legislation in many areas of intellectual property law. A number of directives have recently come into force or are soon to come into force, such as the Copyright Directive, the Designs Directive and the revisions to the European Patent Convention.
What follows is a selection of some major recent decisions.
Scandecor Development Scandecor Marketing & ors (2001) HL 4/4/2001
Two Scandecor trademarks had been used by two enterprises that had been members of the same group of companies but had subsequently come into separate ownership. The central issue before the House of Lords was whether they had become liable to mislead the public and should therefore be revoked pursuant to Section 46(1)(d) Trade Marks Act 1994. For years the proprietor of the mark had not been the origin of some of the goods and had not exercised quality control over them.
The defendants argued that there was a golden thread running through trademark law that unless the trademark proprietor exercised quality control over the goods put out under that trademark, it was rendered invalid.
In Lord Nicholls' view this was no longer the position under the Trade Marks Act 1994, even if it had been under the previous law. He warned that practitioners needed to move with the times.
The House of Lords referred to the ECJ the question of whether a trademark is liable to mislead the public within the meaning of Article 12 (2) (b) Council Directive 89/104/EEC, if the origin of the goods denoted by the mark is a bare exclusive licensee. Although Lord Nicholls developed his line of reasoning from a historical review of the development of trademark law and practice in the UK, his conclusions are very European and may well find favour with the ECJ. Lord Nicholls has cut the golden thread and it seems unlikely that the ECJ will feel the need to re-tie what, in effect, had become a ligature.
Other questions referred included: did the “own name defence” apply to companies?; was deceptiveness as to trade origin a ground of revocation of a trade mark?; and was there discretion not to revoke if the grounds were made out?
Shirin Guild Eskander & anor (2001) LTL 7/2/2001
The claimant, a fashion designer, claimed infringement of her copyright and design right subsisting in three garments: a shirt, a sweater and a cardigan. The garments were characterised by having an unusually wide and square shape. A main issue in this case was whether the prototype garments were works of artistic craftsmanship. This is a point that is often raised but seldom reaches trial. Creators of designs for garments frequently claim that their prototypes are works of artistic craftsmanship in order to get copyright protection for their designs as an attempt to escape the roadblock of Section 51 of the Copyright, Designs and Patents Act 1988, which otherwise has the effect of restricting protection to the more limited design right.
Mr Justice Rimer held that the prototypes were not works of craftsmanship: this was not a natural way to describe them and there had been no evidence of any special element of craftsmanship in their manufacture. They were not works of art either: the claimant had not regarded herself as making works of art and did not regard herself as an artist. Neither was there acceptable evidence that the garments satisfied the aesthetic emotions of a substantial section of the public. The copyright claim therefore failed. Although the alternative claim in design right succeeded, by the date of the judgment there were less than two years of the 10-year term of protection left.
Arsenal Football Club Matthew Reed (2001) LTL 6/4/2001
Matthew Reed had been selling Arsenal memorabilia outside the ground of Arsenal Football Club for more than 30 years. Arsenal, known as the Gunners, is associated with two logos, a shield and a cannon, and had registered these and the words 'Gunners' and 'Arsenal' as trademarks. Most of the goods Reed sold came from unofficial sources and Arsenal sued him for passing off and trademark infringement. Mr Justice Laddie dismissed both claims.
On passing off, he held that Arsenal had failed to produce evidence of noticeable damage, which ought to have arisen had there been confusion, as the defendant had been trading on Arsenal's doorstep for 30 years. Arsenal failed to produce any evidence of complaints made by customers of the defendant's products.
On trademark infringement, Judge Laddie held that the use of Arsenal logos on Reed's products would be perceived as a badge of allegiance and not as indicating trade origin. The question as to whether use of a mark had to be “trademark use” to infringe was both difficult and unclear. The reference to the ECJ in Philips Remington (1999) RPC 809 had posed the question, but as yet no answer has been given. Judge Laddie decided to refer the question to the ECJ himself.
Amersham Pharmacia Biotech Amicon & ors (2001) LTL 5/7/2001
Mr Justice Laddie held that Amersham's patent was valid but not infringed, as the variant used by the defendant was not covered by the patent. On appeal Lord Justice Aldous held, in giving the only judgment and dismissing the appeal, that it was clear in forming a view on interpretation that the court must take account not only of the words of the claim, but also the description in the specification, although it did not follow that equivalent means having the same function would necessarily infringe. This case is important in the area of patent claim construction. Lord Justice Aldous approves his statement in his dissenting judgment in Wheatley Drillsafe (2001) RPC 133 that the Catnic/Improver approach (as decided under the 1949 act) was consistent with the protocol on interpretation as provided for under European law (see Article 69 of the European Patent Convention). He also held that this three-stage test was to be applied in order to ascertain the via media demanded by the protocol. Until the House of Lords says otherwise, the protocol questions reign supreme.
The patentability of software
On 22 March 2001, the Government published the conclusions of its consultation exercise on the patentability of computer software and business methods. On the patenting of software, it held that there should be no significant change in practice or, subject perhaps to EU developments, in the current legal provisions. This is unfortunate because software patentability is the subject of much misinformation, in essence because while the law clearly purports to exclude it, in practice software can be patented. The report found that there was little support for the patenting of business methods and the continuing divergence of European and US law in this area will be examined with interest by those in the field.
EU Council approves Copyright Directive
The Directive on Copyright and Related Rights in the Information Society is now in force and it has to be implemented into UK law by 22 December 2002. This directive seeks to harmonise the core rights relevant to uses of copyright material while recognising the need to adopt copyright protection to strike an appropriate balance between rights holders and users in the internet environment.
Andrew Norris is a barrister at Hogarth Chambers and produced this report in conjunction with Lawtel