INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| DATA MARKETING & SECRETARIAL LIMITED
WINNING DEALS LIMITED
|- and -
|S & S ENTERPRISES LIMITED
SELECTIVE MARKETPLACE LIMITED
Denise McFarland (instructed by Anthony Burrows) for the Defendants
Hearing dates: 8th April 2014
Crown Copyright ©
Judge Hacon :
(1) Art 3(1)(c) of Directive 2008/95/EC ("the Trade Mark Directive"): the Trade Mark consists exclusively of signs or indications which may serve, in trade, to designate a characteristic of the goods in respect of which it is registered;
(2) Art 3(1)(b): the Trade Mark is devoid of distinctive character;
(3) Art 3(2)(d): the application for the Trade Mark was made in bad faith.
In addition the defendants rely on the following defence:
(4) Art 6(1)(b): the JUMPSTAR sign used by them was an indication concerning the kind, intended purpose or other characteristic of batteries, batteries for vehicles, battery packs and/or battery starters in relation to which the sign had been used by the defendants, and that such use had been in accordance with honest practices in industrial or commercial matters.
The three issues raised on validity and the defence under Art 6(1)(b) were thus the issues to be resolved at trial, along with a fifth:
(5) Whether the claimants had made a threat actionable under s.21 Trade Marks Act 1994 ("the Act"). The claimants admitted the threat but denied that the defendants were persons aggrieved within the meaning of that section.
Art 3(1)(c) – whether the Trade Mark designates a characteristic of the goods
"The sign JUMPSTAR, being highly similar both visually and aurally to the word "jump-start", may serve to indicate to the consumer that the product in relation to which it is used is capable of and intended to supply sufficient energy to a vehicle with a flat battery to enable it to be started."
The law in relation to the present case
"(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 or the time of production of the goods or of the rendering of the service, or other characteristics of the goods or service."
" As for art.7(1)(b), Arnold J. cited the relevant principles as summarised in Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v BORCO-Marken-Import Matthiesen GmbH & Co. KG (C-265/09)  E.C.R. I-8265;  E.T.M.R. 4. As for art.7(1)(c) Arnold J. cited the principles to be applied as summarised in Agencja Wydawnicza Technopol sp. z o.o. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-51/10 P)  E.C.R. I-1541;  E.T.M.R. 34 .
 I will not repeat the lengthy passages. The position in short is that a sign which designates a characteristic of the relevant service is devoid of any distinctive character. Such signs are often referred to as descriptive, as they are easily recognised by the relevant class of persons as describing the service in respect of which registration is sought or made.
 As the judge stated at  of his judgment
"[A] sign is caught by the exclusion from registration in Article 7(1) (c) if at least one of its possible meanings designates a characteristic of the goods or services concerned."
 The basic aim of such exclusions from registration is obvious: to prevent an undue monopoly in the course of trade of a designation that may be used descriptively of a service or of any of its characteristics. It is in the general public interest that undertakings should be able to describe freely any characteristic of their own service, irrespective of how commercially significant that characteristic may be."
"Since the perception of identity between the sign and the trade mark is not the result of direct comparison of all the characteristics of the elements compared, insignificant differences between the sign and the trade mark may go unnoticed by the average consumer."
" The fact that the legislature chose to use the word "characteristic" highlights the fact that the signs referred to in art.7(1)(c) of Regulation 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of art.7(1)(c) of Regulation 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see, by analogy, as regards the identical provision laid down in art.3 of Directive 89/104 , Windsurfing Chiemsee  ETMR 585 at , and Koninklijke KPN Nederland  ETMR 57 at )."
" The signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve, in normal usage from the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought (see Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB)  ECR II-2383, paragraph 24, and the case-law cited there).
 It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see PAPERLAB, paragraph 25, and the case-law cited there)."
Art 3(1)(b) – whether the Trade Mark is devoid of distinctive character
"…it was not capable of distinguishing the goods of one undertaking from those of other undertakings, in that the said name or mark JUMPSTAR had already (by then) been used by multiple traders or in relation to goods which were not those of the Claimants or either of them." (Amended Defence and Counterclaim, para. 32)
Article 3(2)(d) – Bad Faith
" I considered the law at some length in Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd  EWHC 3032 (Ch);  RPC 9 at –.
 Subsequently, the Court of Justice of the European Union (as it now is) ruled in Chocoladenfabriken Lindt & Sprüngli AG v Franz Haüswirth GmbH (C-529/07)  ECR I-4893;  ETMR 56 as follows:
"In order to determine whether the applicant is acting in bad faith …, the national court must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark, in particular:
- – the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought;
- – the applicant's intention to prevent that third party from continuing to use such a sign; and
- – the degree of legal protection enjoyed by the third party's sign and by the sign for which registration is sought."
 In Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd  EWCA 110 Civ,  RPC 16 at  Lloyd L.J., with whom Jacob and Stanley Burnton L.JJ. agreed, summarised the guidance of the Court of Justice in Lindt as follows:
"Attention is to be focused on the position at the time of the application for registration, and the intention and state of mind of the applicant at that time, although they are subjective factors, are to be determined by reference to the objective circumstances of the particular case. … The court regarded it as relevant that a third party had long used a sign for an identical or similar product capable of being confused with the mark applied for, and that that sign enjoyed some degree of legal protection. In such a case the applicant's aim in obtaining registration might be to compete unfairly with a competitor who is using a sign which had gained some degree of legal protection. The court also regarded it as relevant that the registered mark consisted of the entire shape and presentation of the product, that being restricted for technical or commercial reasons (in respect of which it no doubt had in mind, for example, the essential shape of a rabbit or a hare), so that the registration, if valid, would prevent competitors not only from using a particular sign but also from marketing similar products at all."
 Counsel for Och-Ziff submitted that neither the judgment of the Court of Justice in Lindt nor that of the Court of Appeal in Cipriani had affected the validity of what I had said in Cipriani in the following paragraphs, in particular in the passages emphasised:
"189. In my judgment it follows from the foregoing considerations that it does not constitute bad faith for a party to apply to register a Community trade mark merely because he knows that third parties are using the same mark in relation to identical goods or services, let alone where the third parties are using similar marks and/or are using them in relation to similar goods or services. The applicant may believe that he has a superior right to registration and use of the mark. For example, it is not uncommon for prospective claimants who intend to sue a prospective defendant for passing off first to file an application for registration to strengthen their position. Even if the applicant does not believe that he has a superior right to registration and use of the mark, he may still believe that he is entitled to registration. The applicant may not intend to seek to enforce the trade mark against the third parties and/or may know or believe that the third parties would have a defence to a claim for infringement on one of the bases discussed above. In particular, the applicant may wish to secure exclusivity in the bulk of the Community while knowing that third parties have local rights in certain areas. An applicant who proceeds on the basis explicitly provided for in Article 107 can hardly be said to be abusing the Community trade mark system.
190. Nor in my judgment does it amount to bad faith if what the applicant seeks to register is not the actual trade mark he himself uses but merely the distinctive part of his trade mark, the other part of which is descriptive or otherwise non-distinctive, and third parties are also using the distinctive part with different non-distinctive elements. It is commonplace for applicants to apply to register the distinctive elements of their trade marks, and with good reason. Moreover, in such a case the applicant would be unlikely to have an Article 9(1)(a) claim against the third parties, yet as noted above counsel for the defendants accepted that the ability to make an Article 9(1)(b) claim was not enough to constitute bad faith."
Counsel for the defendants did not argue to the contrary."
The defendants' case on bad faith
"…the Applicant [for the Trade Mark] must have known or ought to have known of the prior use by unconnected third parties of the said name or mark in connection with goods similar or identical to those goods for which registration was sought, and the Applicant did not seek or gain permission from any such third parties prior to making the said Application."
The uses of JUMPSTAR by other parties relied on are those referred to above in connection with Art 3(1)(b) together with (i) the fact that Media Brands supplied the claimants with the JUMPSTAR product, which the claimants imported into the UK from June 2011 and (ii) the fact that Media Brands had told the claimants that Media Brands were the co-owners of the rights to the product and to the name JUMPSTAR.
Defence under Art 6(1)(b)