CHANCERY DIVISION
Strand, London, WC2A 2LL |
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B e f o r e :
sitting as a Deputy High Court Judge
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DIGIPOS STORE SOLUTIONS GROUP LIMITED |
Appellant/ Applicant for Registration |
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- and - |
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DIGI INTERNATIONAL INC. |
Respondent/ Opponent |
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James Mellor QC and Fiona Clark (instructed by Burges Salmon LLP) for the Respondent/Opponent
Hearing date: 4th December 2007
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Crown Copyright ©
DANIEL ALEXANDER QC
A. INTRODUCTION
The marks in question
Key Opponent's/Respondent's marks
(i) UK registration 1577042
registered in class 9 in respect of "Microcomputer hardware and microcomputer software programs for use in communications between digital electronic devices; all included in class 9." and
(ii) UK registration 1577044
registered in class 9 in respect of "Microcomputer hardware and software for data communications".
Key Applicant's/Appellant's mark
applied for in class 9 in respect of "Computer hardware, computers, servers, point-of-sale terminals, communications and networking systems, keyboards, display terminals, printers, proofing and encoding apparatus, document scanners, bar code scanners, computer software for use in the retail industry."
B. APPROACH TO THIS APPEAL
"…an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance to interfere in the absence of a distinct and material error of principle" (Reef, para. 28)
C. OUTLINE OF THE MAIN ARGUMENTS
Appellant's arguments
(1) Failure to take into account the Respondent's admissions against interest. It is said that the Hearing Officer ought to have had regard to points made in correspondence on behalf of the Respondent during prosecution of the marks relied on, concerning the limited scope of protection which marks of this kind should be afforded. This point is related to point (3) below in that, if the Hearing Officer was wrong not to assess the degree of distinctiveness of the mark and should have done so, it is contended that the material from the prosecution file is relevant to the assessment.(2) Taking into account an expired trade mark. This point has fallen away because the challenge to registration founded on the expired mark is not said to add anything of substance to the overall argument.
(3) Failing to consider the degree of distinctiveness of the Respondent's trade mark. It is said that the Hearing Officer failed adequately (or at all) to consider the degree of distinctiveness of the Respondent's prior marks and, in particular, the descriptive nature of the term DIGI. The Appellant contends that the Hearing Officer should have held that the Respondent's marks relied on were only entitled to a narrow scope of protection.
(4) Failing to construe the Respondent's specification of goods. It is said that the Hearing Officer construed the specification of UK registration 1577042 too widely.
(5) Wrongly holding that the Appellant's services were for the same specialised purpose as the Respondent's goods. The nub of the complaint here is that the Appellant's goods are specialised goods for use in retailing and services associated with them but the Respondent's goods are different, being network connectivity products and that the Hearing Officer should not have held that their purposes were the same.
(6) Wrongly holding that neither mark had a conceptual meaning. This point is related to point (3) above in that it is said that the Hearing Officer should have concluded that DIGI would be understood as an abbreviation of DIGITAL both in the Appellant's and in the Respondent's marks and accordingly held that it was a mark of low distinctiveness. The Hearing Officer's assessment in this respect is said to be plainly wrong.
(7) Wrongly ignoring the evidence of third party use of DIGI- marks. Here, the central argument is that the Hearing Officer should not have dismissed the numerous other registered marks which have DIGI- as a prefix as mere "state of the register" material entitled to no weight. He should have held that this was evidence that other traders did consider the prefix DIGI- to be appropriate for use for digital apparatus of various kinds and actually intended to use such marks. This point is also related to point (3) in that it is said that the Hearing Officer should have analysed this material more carefully had he properly assessed the "weakness" of the mark.
(8) Wrongly disregarding previous decisions. It is alleged that the Hearing Officer ought to have paid greater attention to the decisions particularly of OHIM and the CFI both for reasons of consistency and because they supported the contentions as to the weak distinctiveness of DIGI. Again, this point is also related to point (3) for the same reasons as point (7).
(9) Wrongly assessing the degree of care. The nub of the argument here is that it is said that the Hearing Officer was inconsistent in the standard of care which would be applied in selecting goods of the relevant kind.
(10) Wrongly dismissing the evidence of honest concurrent use. Here is it said that the Hearing Officer should not have treated the evidence of side by side trading without confusion so shortly.
Assessment of distinctiveness of the mark
The Appellant's main argument on distinctiveness
The Respondent's main argument on distinctiveness
D. LAW
Statutory provisions
"(2) A trade mark shall not be registered if because –(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark."
"3(1) The following shall not be registered-(a) signs which do not satisfy the requirements of section 1(1),(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
(d) trade marks which consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it"
Authorities
Canon
"18. Furthermore, according to the case-law of the Court, the more distinctive the earlier mark, the greater the risk of confusion (SABEL, paragraph 24). Since protection of a trade mark depends, in accordance with Article 4(1)(b) of the Directive, on there being a likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character.….
24. In the light of the foregoing, the answer to be given to the first part of the question must be that, on a proper construction of Article 4(1)(b) of the Directive, the distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to the likelihood of confusion."
Lloyd
"22. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 4 May 1999 in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee v Huber and Attenberger [1999] ECR I-0000, paragraph 49).23. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing 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 (see Windsurfing Chiemsee, paragraph 51).
….
28. In the light of the foregoing, the answer to the questions referred to the Court must be that it is possible that mere aural similarity between trade marks may create a likelihood of confusion within the meaning of Article 5(1)(b) of the Directive. The more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken of all relevant factors and, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered. 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, when a mark has a strong distinctive character. "
Reed
"83. Finally, although I agree with the Judge's questioning of the Court's proposition of fact that "there is a greater likelihood of confusion with very distinctive marks" there is some truth with the opposite proposition. The Court in Lloyd said:"In determining the distinctive character of a mark, and accordingly in assessing whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment account should be taken of all relevant factors and in particular of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered"
84. The last sentence is an acknowledgement of a fact that has long been recognised: where a mark is largely descriptive "small differences may suffice" to avoid confusion (per Lord Simonds in Office Cleaning Services v Westminster Window and General Cleaning (1946) 63 RPC 30 at p.43). This is not a proposition of law but one of fact and is inherent in the nature of the public perception of trade marks.
85. It is worth examining why that factual proposition is so – it is because where you have something largely descriptive the average consumer will recognise that to be so, expect others to use similar descriptive marks and thus be alert for detail which would differentiate one provider from another. Thus in the cited case "Office Cleaning Association" was sufficiently different from "Office Cleaning Services" to avoid passing off."
"It must be noted in that regard, first, that the relevant public will not generally consider a descriptive element forming part of a compound mark as the distinctive and dominant element of the overall impression conveyed by that mark (see, to that effect, Case T-129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 53, and CHUFAFIT, cited in paragraph 72 above, paragraph 51)".
L'Oreal
"38. In the present case, having held that the earlier mark was only of weak distinctive character and that the products concerned were identical or similar, the Court of First Instance compared the signs in question in order to determine whether they were similar. At paragraph 83 of the contested judgment, it held that, notwithstanding the weak distinctive character of the earlier mark, there was a likelihood of confusion between the signs and, accordingly, between the marks covered by them.39. In that regard, the Court of First Instance cannot be criticised for not having disregarded, in its examination of the similarity of the signs in question, the element 'FLEX', which is common to the marks, on the ground that the earlier mark is only of weak distinctive character.
40. In the first place, it is settled case-law that in order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to determine the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed (see Lloyd Schuhfabrik Meyer, paragraph 27).
41. In addition, the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion (see SABEL, paragraph 23, Lloyd Schuhfabrik Meyer, paragraph 25, and the order in Case C-3/03 P Matratzen Concord v OHIM, paragraph 29).
42. It follows that the distinctive character of the earlier mark cannot have the significance which the applicant argues it should be given in the comparison of the signs in question, as it is not a factor which influences the perception which the consumer has of the similarity of the signs.
43. It must therefore be held that the applicant has misconstrued the concepts which govern the determination of whether a likelihood of confusion between two marks exists, by failing to distinguish between the notion of the distinctive character of the earlier mark, which determines the protection afforded to that mark, and the notion of the distinctive character which an element of a complex mark possesses, which is concerned with its ability to dominate the overall impression created by the mark.
44. In the second place, as was pointed out at paragraphs 35 and 36 of this judgment, the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case.
45. The applicant's approach would have the effect of disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance. The result would be that where the earlier mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question. If that were the case, it would be possible to register a complex mark, one of the elements of which was identical with or similar to those of an earlier mark with a weak distinctive character, even where the other elements of that complex mark were still less distinctive than the common element and notwithstanding a likelihood that consumers would believe that the slight difference between the signs reflected a variation in the nature of the products or stemmed from marketing considerations and not that that difference denoted goods from different traders.
46. In addition, it should be noted that the assessment of the similarity between two marks does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark, but that such a comparison must, on the contrary, be made by examining the marks in question, each considered as a whole (see order in Case C-3/03 P Matratzen Concord v OHIM, paragraph 32).
47. In those circumstances, it must be held that the Court of First Instance did not commit an error of law in its assessment of the similarity of the signs in question by not ascribing to the weak distinctive character of the earlier mark the significance which the applicant wrongly gives to it.
48. Furthermore, in arguing that, by wrongly applying Article 8(1)(b) of Regulation No 40/94, the Court of First Instance reached the view that the word 'FLEX' constitutes the dominant element of the mark applied for, the applicant in fact confines itself to challenging the assessment of the facts made by the Court of First Instance without alleging any distortion of the evidence in the case-file put before that Court. That appraisal thus does not constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 22; order of 5 February 2004 in Case C-326/01 P Telefon & Buch v OHIM [2004] ECR I-1371, paragraph 35; and order in Case C-3/03 P Matratzen Concord v OHIM, paragraph 34).
49. The first plea put forward by the applicant in support of its appeal must accordingly be rejected as being manifestly unfounded.
…
52. In the first place, as is clear from paragraph 59 of the contested judgment and as to which there is no dispute between the parties, the Court of First Instance held that the earlier mark was of weak distinctive character.
53. In the second place, having held at paragraph 61 of the contested judgment that, even in a case involving an earlier mark of weak distinctive character and a mark applied for which is not a complete reproduction of it, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered, the Court of First Instance undertook, at paragraphs 62 to 80 of the contested judgment, a comparison of those signs and those goods. It noted that the assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of those signs, be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components. Thus, the Court of First Instance did indeed carry out such an assessment, by setting out, at various points in its analysis, the reasons why it took the view that the signs in question are similar.
54 In the third place, having held at paragraphs 81 to 83 of the contested judgment that the signs in question are similar on the visual, phonetic and conceptual level and that the goods are in part identical and in part very similar, the Court of First Instance held that, notwithstanding the weak distinctive character of the earlier mark, there was a likelihood of confusion between it and the mark applied for."
Summary of the applicable principles
E. THE HEARING OFFICER'S APPROACH
"The word DIGI is not defined in any dictionary else the applicant would have certainly filed evidence on the point. The best that could be found was a reference in an acronym website where the word DIGI was defined as meaning "Digital". To my mind although the average consumer may wonder whether this is the inference that is being alluded to they would not be sure and would see it as a made up term. In my opinion, the opponent's mark DIGI is inherently distinctive for the goods and services for which they are registered. However, I do not accept that the opponent has provided evidence to support its contention that it should benefit from an enhanced reputation."
"46. I do not believe that either mark has any conceptual meaning other than attributable to the letters POS.
47. The applicant referred me to what can best be described as "state of the register" evidence. It was contended that the word DIGI was commonplace and was clearly a term which would be seen a meaning DIGITAL. I was also referred to a number of decisions by the Registry and also OHIM but none of these was on all fours with the instant case and were determined upon their individual circumstances."
F. THE MEANING OF DIGI IN THE APPELLANT'S AND RESPONDENT'S MARKS
(i) Dictionary and other definitions of "DIGI" as digital
(ii) Use of "DIGI-" prefix by third parties to denote "digital"
(a) Digibox sells equipment for satellite television.(b) Digicard sells (or sold) card readers for "cashless payment solutions". The web-site had ceased to be accessible.
(c) Digicare supplies servicing and repair facilities for faxes and printers.
(d) Digidesign/Digidrive are the marks of an American company which manufactures digital audio production equipment.
(e) Digiadapter is the mark of an American company used on a flash memory reader. DigiDrive is also the mark of a storage product.
(f) Digiface is a mark used by a German company which supplies audio equipment to the music industry.
(g) DigiFlex is an expansion module to allow mobile computers to receive digital television and radio.
(h) Digilink is a company that supplies knowledge management software.
(i) Digilog UK Limited is a security software company.
(j) Digimail is or was a voicemail product. The web-site had ceased to be accessible.
(k) Digimaster is a product for digital recording and editing of audio and duplicating to cassette tape.
(l) Digipass supplies security software and hardware.
(m) Digipath supplies security hardware and software.
(n) Digipay supplies financial processing services.
(o) Digiplug supplies mobile multimedia application solutions.
(p) Digipro UK supplies digital photocopiers.
(q) Digiscan is a portable, battery operated PC-based digital ultrasonic scan imaging system.
(r) Digitools is an application suite of utility software for Apple Mac computers.
(s) Digiview is a logic analyser for programmers.
(t) Digivision specialises in the implementation of digital CCTV systems.
(u) Digiwave Technologies Limited supplies family gamer and budget PCs.
(v) Digiwave and Digimatic products are supplied by Mitutoyo for testing and measuring solutions in the automotive industry.
(iii) The Register
"It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] RPC 541 and the same must be true under the 1994Act."
(iv) OHIM decisions
(a) DigiFilm/DigiFilmMaker
"…the Board of Appeal correctly concluded that "digi" is an abbreviation of the word "digital" which is commonly used, notably in the English language to describe the digital technique"
and that the terms "DigiFilm" and "DigiFilmMaker"
"…would be perceived by the relevant public immediately and without any particular effort of analysis, as referring to the recording, stocking and processing of digital data, and images in particular…"
"…the message expressed by the marks sought is clear, direct and immediate"
(b) DIGICOM/DigitOne
"It has to be considered that the prefix DIGI(T) is of a weak character for the goods in question…The prefix "DIGI" is automatically associated with the word "digital"…The meaning of the prefix "DIGI" is the same in all the languages of the European Union….Considering the described meaning(s) of DIGI(T), it can be considered that this prefix does not have a high degree of distinctiveness for goods in class 9 which can be digital.Such a consideration does not mean that the common prefix "DIGI(T)" must not be taken into account in the comparative analysis of the marks, and should only focus on their respective endings "COM" and "One". It only means that the marks "DIGICOM" and DigitOne" considered as a whole are composed of elements having a low degree of distinctiveness."
(c) DIGIFLAT/digipad
(v) The statements on behalf of the Respondent on the prosecution file
Letter from Respondent's agents 6 August 1996
"The Registry will note from the search that the DIGI- prefix is extremely common and, in so far as class 9 registrations are concerned relative to the subject applications, those marks which appear in the following list would appear to be most relevant [and a list of marks with DIGI- as a prefix are set out]…
It is apparent from the above that the public are well able to distinguish between DIGI- marks in Class 9 and that refusing registration of the two subject applications on the basis of other DIGI- marks would appear to be inappropriate."
Letter from Respondent's agent 27 May 1997
"…the prefix DIGI is a weak one and…no one company can claim to have a monopoly in it.…
The fact that there are 116 registrations in Class 9 with the prefix DIGI, none of which comprises the word DIGITAL and the fact that the marks DIGICARD and DIGILINK are already coexisting on the Register with one another and with our client's own registration of DIGIBOARD indicates not only that the prefix DIGI is an extremely weak one in which no one company can have a monopoly but also that the Registrar has on numerous previous occasions taken the view that the addition of a further component to the prefix DIGI, even a non-distinctive component, is sufficient to distinguish it from the other marks on the Register. The prefix DIGI is therefore extremely diluted in class 9 and there can therefore be no question of consumers associating trade mark including the component DIGI with any one particular company and thus no question of the trade marks DIGI INTERNATIONAL and DIGI + Device being confusable with the trade marks DIGICARD and DIGILINK in that they are no more similar to those two marks than they are to our client's own prior Registration No. 1460708 DIGIBOARD.
…
…given the state of the Register and the astonishing number of marks on the Register in Class 9 with the prefix DIGI, each such mark must be considered as a whole and that the clearly well established practice of accepting that the addition of a further component to the letters DIGI, even a non-distinctive component is sufficient to distinguish a trade mark from all the other marks on the Register should be followed in the present case whereby the above two trade marks are confusable with neither DIGICARD nor DIGILINK"
"…DIGI is not a known abbreviation of the word digital.""there is no automatic connection between the invented mark DIGI and the word digital…"
"…it is unlikely that one would in practice attempt to shorten the word digit or digital to DIGI in commercial shorthand or, vice versa, that one would automatically consider that goods branded with the mark, the subject of the present application, would be connected with digits or digital goods."
Reliance on the file - trade marks and patents compared
"27. …Mr Floyd argues that file wrapper estoppel is not part of our law. It is illegitimate to refer to the prosecution history as an aid to construction.28. Mr Howe and Mr Floyd agree that there is no binding authority on this issue in English jurisprudence. In Bristol Myers Squibb v Baker Norton [1999] RPC 253 at 274-275, Jacob J pointed out the problems which would arise were file wrapper estoppel part of our law. Mr Howe argues that in Rohm & Haas v Collag [2002] FSR 445 at 456-8 the Court of Appeal appears to have expressed support for file wrapper estoppel. He accepts that, even if it did, its views were obiter…
…
29. File wrapper estoppel is a highly contentious issue at the moment. There are current discussions as to whether it should be allowed in this country and whether there should be legislation expressly to that effect. If it is, there is a real prospect that we will experience all the difficulties which the USA has experienced in trying to implement it. In many cases it is likely that allowing such a doctrine here will add considerably to the cost and complexity of litigation while producing little in the way of benefit to the parties. In some cases file wrapper estoppel would add obscurity to the meaning of the patent.
30. In the absence of binding authority or legislation, I would be reluctant to accept that this doctrine has any part to play in construing a patent and its claims. Patents and their claims are meant to be statement made by the patentee to the relevant public. Their meaning and effect should be discernible from the face of the document. However, for reasons set out below, I do not think it necessary to resolve this issue in this case. The meaning of the claim appears to me to be clear enough without resort to this material. In the result I have not looked at any of the prosecution history of the patent. I will treat the claims as if they had always been in their current form. I have paid no attention to what Mr Howe says is the reason for the amendments made. I have not read any of the documents relating to this issue."
"The courts of the United Kingdom, the Netherlands and Germany certainly discourage, if they do not actually prohibit, use of the patent office file in aid of construction. There are good reasons: the meaning of a patent should not change according to whether or not the person skilled in the art has access to the file and in any case life is to short for the limited assistance which it can provide."
Admissions and submissions
Reliance on the prosecution file in the present case
(1) the DIGI- prefix was extremely common;(2) the public were well able to distinguish between DIGI- marks in class 9;
(3) the prefix DIGI- was an extremely weak one in which no one company could have a monopoly;
(4) the addition of a further component to the letters DIGI, even a non- distinctive component, was sufficient to distinguish a trade mark from all the other DIGI- marks on the Register.
Error of principle?
"…whatever the views of the Registry or the opponent during this exchange of correspondence I do not believe that such matters should be taken into account in the instant case."
Conclusion on the meaning of DIGI- prefix
Plainly wrong?
G. THE SECTION 5(2)(b) ASSESSMENT
The average consumer
Level of discrimination
Perception of DIGI- prefix and alertness for differences of detail
H. OTHER MATTERS
The comparison of specifications
Parallel trade without confusion
Miscellaneous – other alleged errors and the Respondent's notice
I. OTHER MARKS
J. OVERALL CONCLUSION