Williams Powell

British and European Patent and Trade Mark Attorneys

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Williams Powell

11 Staple Inn
London
WC1V 7QH
United Kingdom

T: +44 207 242 7005

F: +44 207 242 7115

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Recent News:

Delays to Opening of Unified Patent Court?
It was understood that UK Government had planned to ratify the UPC agreement in May 2017 so that the Unified Patents Court could open by the end of the year.  However, that timetable now looks li...
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UK Government Preparing to Ratify Unified Patent Court Agreement
On 28 November 2016 the UK government confirmed that it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA), which is part of the process required to establish the Unit...
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EPO Added Subject Matter Test is Relaxed
Over the past few years, the assessment by the European Patent Office of any amendments made to an application or patent in connection with the issue of added subject matter has been extremely strict....
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UK Procedures Assist German Patent Litigation
There are two primary schools of thought in patent litigation proceedings in Europe: 1) the unitary trial system followed for example by the UK Courts, where the issues of validity and infringement of...
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Practical tips for UK and EU design registrations in view of the UK Trunki decision
In the wake of the UK Supreme Court's Trunki decision, designers may now be questioning the value of registered designs to protect their products in the UK.  However, during a panel discussion at...
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UK Patent Box to be Revised

The UK Patent Box has enjoyed a good level of success.  According to the UK Government, by mid 2015 over 639 companies had used it and received a benefit totaling £335,000,000.  

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A recent decision of the General Court of the European Union sheds lights on the scope of protection for trade marks consisting of words and pictorial devices.  

A trade mark may consist of or include both word and design elements.  The benefit of a non-verbal mark is that may have more immediate visual appeal to the consumer and (especially for the multi-national company) help to overcome language barriers.  The graphic device known as the Nike “Swoosh, for example, is probably recognised around the world, including in countries where the word “Nike” might be considered unpronounceable.  It makes sense, then, that when developing a new product, businesses may wish to base the brand image on both verbal and non-verbal graphic elements.  

What is the most cost-effective way of achieving optimum registered trade mark protection for the verbal and non-verbal elements of the brand? Should you register (i) the word mark, (ii) the graphic device (or stylised word mark, as the case be), (iii) the word and device elements together, or perhaps all three of these options?  Comprehensive protection is achieved by registering the word and graphic elements both separately and together, but budgetary constraints may dictate that just one application is filed, so that the word and graphic marks are registered together, as a single, composite mark. All of these alternatives are subject to the overriding requirement to register any mark as it is used.

In a case recently decided by the General Court, Rocket Dog Brands LLC (“Rocket Dog”) had registered its mark K9 & Device for clothing, footwear and headgear in class 25.  The mark consisted of the alpha-numeric term “K9”, together with a highly stylised representation of a dog’s head and crossed bones.  Rocket Dog’s intention was that the term “K9” would be recognised by consumers as equivalent to the word “canine”, and that the graphic element of the mark would reinforce this dog-related theme.  

The applicant, Julius K9 Bt, applied to register the mark JULIUS K9, covering a range of identical goods.  Rocket Dog opposed, on the grounds of likelihood of confusion. In the context of this appeal the General Court considered whether the marks K9 & Device and JULIUS K9 were sufficiently similar to lead to consumer confusion. As the two marks covered identical goods, Rocket Dog should have been off to a flying start.

Despite the fact that the term “K9” formed the only verbal element of Rocket Dog’s mark, and its goods would therefore be referred to orally as “K9” shoes, shirts or socks, the General Court found the two marks to be visually dissimilar, because the only common element was the alphanumeric term “K9”, which was not visually dominant within Rocket Dog’s mark.  

In parallel proceedings the applicant (opposing, in those proceedings) had argued that the alpha-numeric term “K9” was recognised by consumers as having a meaning in relation to dogs.  Despite this, the court found that there was no conceptual similarity between the two marks, refusing to accept (a) the opponent’s submissions on this point, (b) the applicant’s admission, or (c) to take judicial notice of the association between “K9” and the word “canine”.  The court agreed that there was a phonetic similarity “to a below average degree”, but this, in itself, was not sufficient to give rise to a likelihood of confusion.  

This is a drastically abbreviated account of a complex dispute, but illustrates the risks involved in reliance on a composite mark to protect the distinct individual elements within the mark.  Rocket Dog might have reasonably assumed, at the outset, that registration for the distinctive alpha-numeric term K9 combined with graphics which merely illustrated the canine theme of the brand, would confer rights in the verbal element of the mark.  Case law of the Court of Justice (THOMSON LIFE trade mark [case C-120/04]) states that, as part of the global appreciation of similarity, an element of the earlier mark which plays an independent distinctive role within the mark (in this case, the term “K9”) should be afforded protection, regardless of whether the element in question is dominant. Notwithstanding that in spoken use or in written orders the opponent’s goods could only be identified as “K9” clothing or shoes, the court found that the term “K9” did not occupy an independent and distinctive role within either of the two marks.  The decision must necessarily have been otherwise if Rocket Dog had registered the mark K9 rather than K9 and Device.  

Unfortunately for trade mark owners it seems that when protecting marks comprising verbal and non-verbal elements a belt-and-braces approach is the only safe course.