Nexus: #trademark

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image source: Etsy, @TerryWolffCustomArts

Happy Year of the Rat! According to Chinese mythology, the Jade Emperor invited the entire animal kingdom for a race, and awarded each of the first 12 animals to finish a year of the Chinese zodiac system. The Kat came in 13th because the rat, the Kat's best friend, did not wake him from a lovely Kat nap. Rats!!

As a result, the Kat vowed to keep readers who sleep through IPKat posts informed. Here is this week's effort.

Copyright

Back in 2018, The IPKat reported that the Swedish Supreme Court had asked the Court of Justice of the European Union (CJEU) to clarify the scope of the right of communication to the public in Article 3(1) of Directive 2001/29 (InfoSoc Directive) and Article 8(2) of the Directive 2006/115 (Rental and Lending Rights Directive). In brief, the question before the CJEU is whether a car leasing company – by leasing cars equipped with radio receivers – can be considered a ‘user’ that performs a communication to the public. Last week, Advocate General (AG) Szpunar delivered his Opinion, and GuestKat Nedim Malovic summarizes it in English.

In the world of music licensing, a cautionary tale was recently told by the French Cour de Cassation involving background music, a carpet store and collective management societies. GuestKat Peter Ling reports on this decisions and provides valuable background information.

Trade Marks

Asia Correspondent Tian Lu reviews "The Innovation Society and Intellectual Property", a book that looks into the relations between innovation, IP and society. Innovation has been generally considered as a main condition for modern societies to prosper economically; yet, the realisation of such prosperity depends on multiple factors, including IP legislation. All this said, as the editors point out: It would be wrong to equate IPRs, or their subject matter of protection, with innovation, because the relationship between the two is more complex.

Patents

Kat friend Hans Eriksson discusses a recent decision from Sweden on the timely issue of blocking injunctions. Over the past few years, blocking injunction jurisprudence has become one of the more interesting issues of copyright law. Currently, there is no consensus on if and how to apply them across the EU

Other IP topics: Education, Confidentiality, Eastern Europe

In a new instalment of the IP education series, Katfriend Professor Dinusha Mendis discuses a successful program at Bournemouth University that brings together IP law and engineering students to learn from each other.

The CJEU delivered two rulings recently, in PTC Therapeutics International v EMA (C-175/18 P) and MSD Animal Health Innovation and Intervet International v EMA case (C-178/18 P). These two rulings are of particular interest since the CJEU was for the first time asked to consider the right of access to EU documents that had been submitted in connection with an MA application. GuestKat Frantzeska Papadopoulou has the full story.

InternKat yours truly reviewed an anthology of essays on intellectual property rights in Central and Eastern Europe.

Willow Tea Rooms: A tale of tea and trade marks (Part 2)

By 0x000216

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The post below follows on from Part 1 of this post regarding Ms Mulhern, owner of the mark The Willow Tea Rooms opposing the Willow Tea Rooms Trust attempt to register the mark “The Willow Tea Rooms” in classes 35, 41, 42 and 43. The matter came before Mrs J Pike on the 27 January 2017 and the UK Intellectual Property Office (IPO) published the full 73 page decision here, in which two interesting points arose:

Use of a modified / part of a trademark registered in a series

Firstly, Ms Mulhern opposed the registration under sections 5(2)(b) of the Trade Mark Act 1994 (TMA) [similar to an earlier mark and is registered for identical or similar goods or services] and 5(3) TMA [is identical with or similar to an earlier trade mark, and the earlier trade mark has a reputation, and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark]. She based these claims on her registered trade marks for Willow (1276805, series of two marks in Class 42: Restaurant, tea room, catering and cafe services; all included in Class 42; but not including any of the aforesaid services relating to the provision of alcoholic drinks) and The Willow Team Rooms (2251332A, series of 8 marks, goods and services in classes 9, 11, 16, 20, 21, 24, 30 and 43).

In their counterstatement, the Trust denied all of the grounds and relied on 6A of the TMA requiring Mulhern to demonstrate genuine use of her marks. In particular, it questions whether there had been use of any or all of the stylised forms of the mark and argued that no use had been made of the trade mark “Willow,” since it is only used in conjunction with the overall words “The Willow Tea Rooms” (which is a separate trade mark).

Pike noted [at 34] that there was no evidence of use of the “Willow” mark by itself. The difference in the second series of marks is the additional of the words ‘tea’ and ‘rooms’. She also noted [at 50] that in Comic Enterprises Ltd v. Twentieth Century Fox Film Corporation, Kitchin LJ stated [at 66]: “An application for the registration of a series of trade marks is an application to register a bundle of trade marks under a single reference number. Each of the marks in the series must satisfy the requirements of the 1994 Act…namely a bundle of different marks, albeit now registered under the same reference number” (emphasis added).

With that in mind, Pike set out [at 51] to assess whether there was use in respect of any or all of the marks registered as a series of eight. To do this, she considered [at 52] the test to be: what sign was presented as the trade mark on the goods and whether that sign differs from the registered trade mark in elements which do not alter the latter’s distinctive character (referring to Nirvana Trade Mark, BL O/262/06 at 33 and 34). For example in Hypen GmbH v EU IPO, Case T-146/15 the General Court held that, taking into account the intrinsic qualities and the greater or lesser degree of distinctive character of the mark, a circle around the mark in question was not sufficient to alter the distinctive character of the mark.

Lets look at it this way....

As such, the relative distinctiveness of the registered mark and the components added to (or omitted from) it in use are relevant factors to take into account. Pike stated [at 57] that the distinctive character of the "Willow Tea Rooms" mark lies firstly in the words, and secondly in their stylisation. As the goods are sold within the tea rooms as merchandise, it is a reasonable assumption that the way in which the mark appears on the goods replicates the form of use in relation to the services. Therefore, even if the mark used was only “Willow Tea Rooms”, the stylisation of the words in the marks registered is not sufficiently distinctive that its absence from the used mark alters its distinctive character, since in this case the distinctive character of the mark is overwhelmingly concentrated in the words.

[So it seems to me that Pike went around the problem of the non-use of “Willow” by establishing use of “The Willow Tea Rooms” and then extracted the word “Willow” from the second series to justify the registration of the first? Interesting.]

Good will of the building or the business within the building?

So on to the second point of interest: As explained in Part 1, the building on Sauchiehall Street, was designed by Scottish architect Charles Rennie Mackintosh in 1903 with Kate Cranston as a tea room, which Anne Mulhern restored to its original purpose in 1983.

Ms Mulhern also opposed the Trust’s mark under 5(4)(a) TMA 1994 arguing that its use would constitute passing off by misrepresentation and damage to her goodwill. The Trust, however, argued that the goodwill was theirs as the owners of the building, since the name The Willow Tea Rooms was associated with the historical development of the building itself and not the business carried on within it. Pike recalled [at 86] the concept of goodwill in Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217, where Lord Lindley said: “Goodwill regarded as property has no meaning except in connection with some trade, business, or calling… In this wide sense, goodwill is inseparable from the business to which it adds value.” It therefore concluded [at 87] that goodwill is generated by trade or custom, and is capable of being owned. She believed that whilst the building might have a reputation amongst those who know of its heritage, that is different to goodwill. [note to self and legal dictionaries (e.g. here, here, here, here), goodwill is not reputation.]

Pike turns to Professor Christopher Wadlow, in The Law of Passing-Off: Unfair Competition by Misrepresentation, 5th Edition, to explain the difference between goodwill and reputation: “Goodwill as a form of legal property is also to be distinguished from mere reputation, which is primarily a matter of fact. In so far as reputation may be a legally protected interest, it is a non-proprietary one. It is true that the two are very closely related, and a business with goodwill (at least in the sense in which the term is used in passing-off) can hardly fail to have a reputation in some sense. The converse, however, is not true, and the existence of a reputation associated with a person, product, name or mark does not necessarily imply the existence of goodwill.”

So, reputation can exist without a supporting business, but goodwill can only exist via business or trade. Thus, Pike states [at 89] that a building per se cannot have goodwill because goodwill can only exist if there is something to buy in order to generate custom. As such, the Trust could not establish goodwill on the basis of the architectural reputation of the building [92]. Consequently, the Trust was prevented from registering the mark under the law of passing-off.

Ms Mulhern successfully opposed approximately two-thirds of the application and was entitled to a contribution towards her costs. The Willow Tea Rooms Trust has 28 days to appeal against the ruling but as mentioned in Part 1, a spokesman for the Trust reportedlysaid that it accepts the decision.

Photo: Beryl McMillan

Willow Tea Rooms: A tale of tea and trade marks Part 1

By 0x000216

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"It's always time for tea"

This kitten writes from the Netherlands, a land of many things from bitterballan to bicycles but one thing she is yet to find here is a decent cup of tea! As a tea fanatic she was intrigued by the case of the Willow Tea Rooms.

Anne Mulhern ran the Willow Tea Rooms since 1983 at 119-121 Sauchiehall Street, Glasgow, Scotland. The building was designed by Scottish architect Charles Rennie Mackintosh in 1903 with Kate Cranston, famous for her tea rooms. Ms Mulhern restored the unit as a Tea Room in 1983 which quickly became one of the most famous tearooms in Glasgow. Mulhern filed trade marks for Willowand The Willow Team Rooms.

The building was acquired by the Willow Tea Rooms Trust in 2014 who closed it for a £10m two-year refurbishment. In the meantime Ms Mulhern temporarily moved her business to the third floor of the Watt Bros department store.

However, the Willow Tea Rooms Trust then attempted to register a trade mark “The Willow Tea Rooms” for a new business at the building based on the historic significance of Miss Cranston’s Willow Tea Rooms. Sauchiehall Street is significant in the development of the name since "Sauchiehall" is derived from "saugh", the Scottish word for a willow tree.

The Willow Tea Rooms

Mulhern opposed the mark on the basis that she had a similar existing trade mark and a reputation among a known class of people. As she told the Herald Scotland: “there is no reason whatsoever for the trust to be allowed to hijack my trademark The Willow Tea Rooms to give the building a name, nor for it to allege that my trademark, which I have worked long and hard to develop, is somehow associated with the building that houses one branch of my Willow Tea Rooms and not my tea room business.”

Yesterday, the UK Intellectual Property Office (IPO) found in favour of Ms Mulhern and a 73-page ruling on the dispute will be published next week. [Part 2 to follow].

In the meantime, the Willow Tea Rooms Trust has 28 days to appeal against the ruling but a spokesman for the trust reportedlysaid that they accept the decision.

Nexus

Never Too Late: if you missed the IPKat last week

Willow Tea Rooms: A tale of tea and trade marks (Part 2)

Willow Tea Rooms: A tale of tea and trade marks Part 1

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