No Particular Dispensation; Prince Charles Inwards Full; Smelly Trees

No special dispensation for SPECIAL FX

On Fri a rare merchandise grade determination of Vice-Chancellor Morritt appeared on the BAILII website, Special Effects Ltd v L’Oreal SA in addition to another [2006] EWHC 481 (Ch). The Vice Chancellor is non i of the IPKat's favourite IP judges on line organisation human relationship of his annoying habit of talking of "breach of copyright" (the Act, in addition to those who carefully study it, verbalise of "infringement", non "breach"). However, he seems to bring got this i right.

Special Effects was the assignee of a discussion grade SPECIAL EFFECTS, which was registered for conditioners in addition to pilus lotions (Class 3) in addition to beauty in addition to cosmetic therapies (Class 40). L'Oreal - who used the build refer SPECIAL FX - had fought molar in addition to hook when opposing the application, raising pretty good every Earth it could mean value of, but without success.

Once it got its grade registered, Special Effects sued L'Oreal in addition to its United Kingdom of Great Britain in addition to Northern Ireland of Britain in addition to Northern Republic of Ireland subsidiary for infringement through the utilisation of SPECIAL FX. Special Effects also argued that L'Oreal was barred from challenging the validity of the grade on grounds of estoppel in addition to abuse of process. L'Oreal denied they were infringing, contention that the registration of the grade was invalid.

Several issues cruel to survive determined at a preliminary hearing: (i) was L'Oreal precluded past times campaign of activity estoppel, number estoppel or abuse of physical care for from challenging the validity of the mark? (ii) was L'Oreal barred past times campaign of activity estoppel, number estoppel or abuse of physical care for from alleging utilisation of its ain marks before Special Effect's application appointment inward a defense of an before local correct nether s.11(3) of the Trade Marks Act 1994 or inward back upwards of their ain counterclaim for passing off?

Vice Chancellor Morritt held, inward favour of Special Effects, that L'Oreal was barred to the hilt in addition to could non re-contest whatever of the issues it wanted to raise. In item he held that

* in that place was no existent departure betwixt the do in addition to physical care for of the Trade Marks Registry inward opposition proceedings in addition to invalidity proceedings. The issues underlying the 2 sets of proceedings were identical.

* campaign of activity estoppel applied where a campaign of activity inward the instant activity was identical to a campaign of activity inward the first.

* L'Oreal could non rely on their ain utilisation of the SPECIAL FX build before the appointment of application for SPECIAL EFFECTS, since that number had been expressly raised, in addition to dealt with, inward the opposition proceedings.

notes that the Vice-Chancellor's ruling is supported past times the before ruling of Richard Arnold QC inward the Spambusters case.


Prince Charles report

The total text of Mr Justice Blackburne's ruling on Fri inward HRH Prince of Wales v Associated Newspapers Ltd [2006] EWHC 522 (Ch) is directly available on BAILII.


Smelly trees build their mark

Meanwhile, Mr Justice Kitchin has non been idle. His Chancery Division ruling inward Julius Samann Ltd in addition to others v Tetrosyl Ltd [2006] EWHC 529 (Ch) was also posted on BAILII on Friday.

Samann were the proprietors in addition to exclusive licensee of registered merchandise marks that consisted of a stylised fir or pino tree on a base. Those marks had been used continuously since the early on 1950s inward relation to cardboard air fresheners that retailed for prices inward the portion of seventy pence to £2. In 2003 Tetrosyl, who made a broad make of products for utilisation inward the auto sector, started selling an air freshener inward the shape of a fir tree, covered inward snowfall in addition to amongst flashing lights. Other suppliers had non used fir tree shapes inward the United Kingdom of Great Britain in addition to Northern Ireland of Britain in addition to Northern Republic of Ireland equally merchandise marks, except on rare occasions on which Samann took activity to forestall such use.

Above: Here's a pic of the IPKat hiding behind an air-freshening Christmas tree

In this illustration Samann sued Tetrosyl for merchandise grade infringement in addition to passing off. Tetrosyl denied infringement in addition to maintained that its utilisation of the Christmas tree was permitted, beingness the utilisation of an indication concerning a character of the product. Tetrosyl also argued that the registrations should survive declared invalid on the grounds that the marks consisted alone of the shape which gave substantial value to the goods or consisted alone of indications served to designate the kind, character or other characteristics of the goods in addition to in that place had been insufficient utilisation of the marks to homecoming them distinctive. Also they said the tree marks had operate out mutual inward the merchandise for the products inward honor of which they were registered.

Kitchin J upheld Samann's claim inward part, inward that Tetrosyl's actions amounted to merchandise grade infringement but non passing off. In particular

* Tetrosyl had used, inward the shape of trade, a sign which, because of its similarity to the tree marks in addition to because of the identity of goods covered past times the marks in addition to the sign, in that place existed a likelihood of confusion on the utilisation of the public.

* Tetrosyl had non shown that the withdraw to utilisation the Christmas tree production was such that Samann's rights had to yield to it. There was no withdraw for Tetrosyl to build an air freshener inward the shape of a fir tree, fifty-fifty at Christmas.

* Since the sale of such an air freshener caused detriment to the distinctive graphic symbol in addition to repute of the tree marks, Samann could justifiably complain of that use, which gave the impression that in that place was a commercial connector betwixt the 2 businesses in addition to was, without due cause, detrimental to the distinctive graphic symbol or the repute of the tree marks.

* There was no bear witness of whatever actual confusion on the utilisation of the public, nor of passing off.

* The tree marks were valid, since they had a substantial reputation.

has oftentimes seen those annoying trivial fresh-air aroma trees dangling from the bring upwards sentiment mirrors of motor cars in addition to it never occurred to him that they mightiness survive merchandise marks. But possibly that's because he's non a relevant consumer: when he wants fresh air, he opens the window.

Smelly trees here
Fir trees here and here
Fur trees here
Furze here