ip news
Trade marks update 1
Databases: update on BHB -v- 3
William Hill
New direct marketing rules 4
EU expansion - impact on trade 6 mark and design registrations
Data Protection update 7
In the news 8
Who to contact 8
This edition focuses on exciting developments in the law of trade marks, data protection and the protection of databases. We comment on developments coming out of Europe including the registrability of 3D shapes and descriptive words, and how the expansion of the EU affects trade mark and design registrations.
This edition also comments on the new direct marketing rules that came into force in December 2003 and developments in data protection law, including the
Durant case which gave a narrow interpretation to what constitutes
'personal data'.
There has been a flurry of activity in the trade mark world since the last edition of IP News. The main hot topics have been the registrability of
3D shapes and descriptive words as trade marks. Both of these issues illustrate the importance of consumer attitudes in determining the registrability of trade marks. v OHIM the ECJ considered an application to register the appearance of washing machine and dishwasher tablets as Community trade marks.
That application failed.
The ECJ held that:
J there is no reason in principle why
3 dimensional shapes should not be registered as trade marks; but
Traditionally, trade marks have been confined to 2 dimensional marks, i.e.
words, graphics and combinations of the two. However, a number of recent cases have considered whether 3 dimensional shapes can be registered as trade marks. Cases have considered applications as diverse as tablet shapes for washing powder to cigar shapes for confectionary. In Procter & Gamble Co
J applications for trade marks which are devoid of distinctive character will be refused;
J whether a mark has distinctive character is assessed through the eyes of the average consumer and with reference to the goods concerned;

ip news
J consumers of washing machine and dishwasher tablets are unlikely to see the shape of those goods as indicators of origin (i.e. as trade marks) and accordingly the shapes in question were devoid of distinctive character and not registrable as trade marks.
Since the much talked about BABY-
DRY case in 2001, the ECJ has undergone a fairly remarkable reversal of policy in relation to the registrability of descriptive marks.
the ECJ upheld a refusal to register
POSTKANTOOR (which translates as Post Office) in relation to numerous goods and services including stamps and other stationery, insurance, and educational information and advice; and
The Procter & Gamble decision does not mean that 3 dimensional shapes cannot be registered as trade marks; it is simply more difficult to show that 3 dimensional shapes are distinctive enough to be recognised as trade marks and satisfy the criteria for registration. The attitude of consumers will vary depending on the market in question. If an applicant can show that consumers have been 'educated' into seeing the shapes of particular goods as indicators of trade origin, and that the shape of the applicant's goods is distinctive, the applicant may well be able to register the shape of their goods as a trade mark in respect of those particular goods.
This is demonstrated by Nestle Waters
France v OHIM where the European
Court of First Instance held that
Nestle's application to register the appearance of a bottle for mineral waters and non-alcoholic drinks should not fail for being devoid of distinctive character. In the soft drinks market, consumers are used to recognising the shape of goods as indicators of origin the classic example is the distinctive
Coca Cola bottle. In this case, the particular features of Nestle's bottle
(which were said to resemble "the upper part of a woman's body draped in a light veil") were individual enough to be distinctive and therefore registrable.
Applications for trade marks will be refused if they are descriptive of any aspect of the goods or services for which the application is made.
Although "BABY-DRY" is arguably descriptive of the function of nappies, that application was successful on the basis that the words "BABY" and
"DRY" were in a "syntactically unusual juxtaposition" and that the mark was therefore a "lexical invention". There was a feeling at the time that the BABY-DRY decision had opened the floodgates for descriptive marks. However, since 2001, the ECJ has taken steps to close those floodgates and to explain BABY-DRY as an exception to the general rule.
The current position is as set out in the ECJ's judgement on Wrigley's application to register DOUBLEMINT as a Community trade mark. A trade mark application will be refused if it consists entirely of a mark which is capable of being used to describe a characteristic of the goods and services to which it relates. It does not matter that the mark may have a number of meanings; if any one or more of the possible meanings is descriptive, the application will fail.
This new approach has been adopted as standard practice by the UK Trade
Marks Registry and is evident in a number of European cases, including:
J
Koninklijke KPN Nederland NV v
Benelux-Merkenbureau in which
J
Campina Melkunie BV v Benelux-
Merkenbureau where the ECJ considered an application to register BIOMILD in relation to mild-flavoured bio-yoghurt. When considering neologisms
(combinations of existing words which make up a new word) the
Court held that the mark should be considered as a whole.
Supporting the view of the
Benelux trade mark office which rejected the application to register
BIOMILD, the Court held that where the component parts of the mark are descriptive of the relevant goods or services, the mark will only be registrable if it creates an impression which is distinct from a mere description of the relevant good or services; it must be more than "the sum of its parts".
This approach is also reflected in the
European Court's approach to applications for the registration of advertising slogans as trade marks. In the recent case of Fieldturf Inc v
OHIM, the Court of First Instance upheld OHIM's refusal to register the slogan "LOOKS LIKE GRASS…FEELS
LIKE GRASS… PLAYS LIKE GRASS" in respect of synthetic surfaces and their installation. The Court confirmed that, where a mark is also used as an advertising slogan, that mark will only be considered sufficiently distinctive to be registered if it may be perceived
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Autumn 2004 immediately as an indication of the commercial origin of the relevant goods or services, rather than a mere promotional slogan. Although argued on the basis of distinctiveness, rather than descriptiveness, the Court's judgement is consistent with the general restrictive stance towards marks which may be descriptive of the goods and services to which they relate.
As these decisions show, when considering applications for registration, the Trade Marks Registry and the Courts will look at the perceptions of consumers in the relevant market. Of particular importance is how readily those consumers will recognise a mark as a trade mark, i.e. as a guarantee of origin, rather than, for example, as decoration or as a description of the goods and services to which it relates.
In this way, the current practice reflects the essential function of a trade mark which is to act as an indication of origin to consumers.
The Advocate-General recently delivered her Opinions in four cases before the European Court of Justice
("ECJ") on the scope of the protection given to databases. These cases are the first to reach the ECJ since the
Database Directive (Directive 96/9/EC) introduced EU-wide database protection in 1996. As such, they are being followed with great interest by lawyers and businesses alike throughout Europe. The cases deal with the core issues of what constitutes a database, how broad the protection is and what constitutes infringement.
J
The Directive protects databases or their contents, but not the information they contain as such. It is the investment in creating the database that is protected indirectly.
J
The Directive states that the investment protected is that in
"either the obtaining, verification or presentation of the contents".
Although the protection of the
Directive does not extend to the act of creating the data, it does kick in where creation of the data takes place at the same time as its processing and is inseparable from it. The case referred by the English Court of Appeal - British Horseracing Board v William Hill - concerns a dispute over William Hill's use of BHB's database of horseracing data to provide online betting services on
William Hill's website. The other three cases, referred from Finland, Greece and Sweden, concern databases of
English league football fixtures owned by Fixtures Marketing.
J
J
Database protection does not depend on the data being obtained for the purpose of inclusion in a database - the purpose of obtaining the data is irrelevant.
Verification activities that qualify a database for protection are not limited to ensuring from time to time that the information in the database is correct.
The Advocate-General's Opinions in all
4 cases indicate that databases should benefit from wide protection.
Although the questions referred to the
ECJ were complex and technical, various key points can be distilled from the Advocate-General's
Opinions:
J
Substantial changes to the contents of a database which amount to a 'substantial new investment' effectively create a
'new' database which is entitled to its own, separate protection as a database. Although the Directive
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Continued from page 3 provides that the term of protection given by database right only lasts for 15 years, this analysis means that databases that are continually revised and updated will effectively benefit from perpetual protection. This is a result of the 'rolling' refresh of the database rights attaching to them.
This analysis reflects the generally dynamic nature of databases and recognises that their economic value lies in the total investment made in them, not just the incremental investment of keeping them up-to-date.
J
'Extraction' covers only the transfer of the contents of the database directly to another data medium whereas 're-utilisation' covers the making available of contents directly and indirectly from the database (i.e. not from the database itself). The protection given to database owners by the
Directive is the right to prevent
"extraction or re-utilisation" of all or a substantial part of the contents of their databases.
The Advocate-General's Opinions will be welcomed by lawyers and database owners alike as it supports a broad interpretation of the protection given to databases by the Directive.
If the Advocate-General's Opinions are followed by the ECJ (the ECJ's judgment is expected sometime next year), it will be a resounding affirmation of the need to protect the economic investment that goes into creating and maintaining databases.
Where databases are continually revised and updated, database owners will effectively benefit from perpetual protection as a result of the 'rolling' refresh of their database rights. The impact of such a broad interpretation of database rights will particularly be noticed in the sports industry where the commercial value of data is enhanced by the mass appeal of sport and the variety of ways that database content can be utilised (for example, in fixture lists, fantasy football, betting and gaming, videogames based on real-life sporting events).
In December last year the Privacy and
Electronic Communications
Regulations ("PEC Regulations") came into force in the UK. Those
Regulations supplement existing data protection legislation and impose restrictions on unsolicited direct marketing communications sent by telephone, fax, email, SMS or multimedia messaging. necessary (for example to perform a contract with the individual), before personal data can be collected, stored or used in any way, the individual must give his or her consent.
Compliance with data protection legislation is essential for anyone processing personal data.
Anyone who collects, stores or uses personal data in any way must comply with the Data Protection Act 1998.
Personal data is any information from which a living individual may be identified and includes names and contact details. Data protection regulation is complex. However, the general rule is that unless the processing of personal data is
Those looking to carry out unsolicited direct marketing must also comply with the new PEC Regulations (see box on p.5). The requirements of those Regulations differ depending on whether the intended recipient of the marketing communication is an individual or a company and on the form of marketing communication used.
Ensuring compliance with data protection legislation and the PEC
Regulations is not difficult, provided that a suitable procedure is worked out and followed. The simplest way of ensuring compliance is to ask for consent to processing and further contact when individual contact details are first obtained. This can be done in a number of ways, for example, by ticking a box on paper or clicking on an icon on screen. Failure to comply with the PEC Regulations or existing data protection legislation leaves businesses exposed to the risk of enforcement action (including fines) from the Information Commissioner and the risk of being compelled to erase a valuable marketing database.
These risks can be minimised by considering the legislation and taking appropriate steps before personal data is gathered and any processing of that data takes place.

Autumn 2004
Marketers may contact an individual by telephone unless they have previously indicated that they do not want to be contacted or they have registered with the Telephone Preference Service ("TPS"). From 25 June this year, the same will apply to companies who will, for the first time, be able to register with the TPS. Copies of the TPS register are available from www.corporate.tpsonline.org.uk.
Marketers may only contact an individual by fax if their consent has been obtained and they are not registered with the
Fax Preference Service ("FPS"). Marketers may contact companies by fax unless they have previously indicated that they do not wish to receive fax communications or they have registered with the FPS. Copies of the FPS register are available from www.corporate.fpsonline.org.uk.
Marketers may only contact an individual by email, SMS or multi-media messaging, with their prior consent, unless their details have been obtained as a result of a sale of or negotiations for a product or service and the marketer is contacting them about a similar product or service. This exception will only apply if, when their details were collected the first time, the individual was given an opportunity to refuse further contact (an opt-out) and if the individual is given a similar optout when contacted again. The PEC Regulations contain no restrictions on contacting companies by email, SMS or multimedia messaging.
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ip news
On 1 May 2004, ten new Member
States joined the European Union
(Cyprus, the Czech Republic, Estonia,
Hungary, Latvia, Lithuania, Malta,
Poland, Slovakia and Slovenia). This expansion of the EU has commercial and legal implications for businesses that own intellectual property rights.
In addition to national legislative protection regimes, trade marks and designs can be protected by
Community-wide registration and enforcement procedures. Although there is currently no centralised
Community-wide scheme for registering patents, there are proposals to introduce one in the next two or three years. Copyright, which is not registrable under Community law, is unaffected by the accession of the new Member states.
Owners of trade marks and designs are affected by the EU expansion in various ways:
The accession of the new Member
States also affects businesses with
Community-wide licences of intellectual property. Any such licensee should check whether the licence extends automatically to cover the acceding states. If it does not, the licensor can negotiate additional fees for extension of the licence.
On 1 May 2004, existing Community trade mark registrations and pending applications were automatically extended to cover the acceding tates.
Special procedures have been put in place to ensure continued protection for national trade marks in the acceding states, whilst giving effect to existing Community trade marks whose protection has been extended to cover those accesing states..
In the event of conflict between national trade marks in the acceding states and extended Community trade marks, holders of prior national rights may rely on "relative grounds" to (i) oppose Community trade mark applications made after
31 October 2003; or (ii) prevent exploitation in the acceding states of conflicting existing Community trade mark registrations (and pending applications once they are registered), provided their prior rights have been acquired in good faith.
On 1 May 2004, existing unregistered Community designs, registered Community designs and pending applications for registration were automatically extended to cover the acceding states.
Businesses seeking to exploit
Community trade marks in an acceding state should carry out searches for conflicting prior rights in that state and monitor national registers for "blocking" applications by third parties.
A Community design must not be contrary to morality or public policy.
Pending applications for registration, and existing registered and unregistered Community designs as at 1 May 2004 will not be refused/invalidated if these grounds for refusal apply only in relation to an acceding Member State. Design applications made and unregistered designs published after 1 May 2004 will be subject to attack on moral or public policy grounds from all
Member States.
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Autumn 2004
The Information Commissioner and the Courts are getting tougher on companies, and their directors, that break data protection laws. A businessman in Yorkshire was recently found personally liable for data protection offences committed by his company. Mark Hoy's company, HRH
Legal and Financial Services, offered debt collection services and was charged with 16 offences under the
Data Protection Act 1998 over telephone calls made by its employees to seek access to personal data under false pretences. Mr Hoy, a director of the company, faced the same charges personally. After pleading guilty, Mr
Hoy was fined £50 per offence and the company was fined £100 per offence and £500 costs. Although the fines are low, they demonstrate the willingness of the authorities and the
Courts to actively pursue those who unlawfully use personal data.
The Court of Appeal decision in Durant v Financial Services Authority (December
2003) has fundamentally changed the rights of individuals to have access to information that is collected about them. The case considered 2 key issues: what is "personal data" and what is a
"relevant filing system".
data stored in paper form will only take effect where the information is structured so that the data controller either:
J knows there is a system in place for retrieval of file/s in the individual's name and knows that the file/s contain the category of personal data requested; or
Prior to this decision, the Information
Commissioner's guidance adopted a wide definition of "personal data" - in essence, any document referring to an individual was the personal data of that individual. This was of particular concern to many in the legal profession, as savvy litigants sought to use this right to get around the limitations of pre-action disclosure.
In the Durant case, the Court held that to be personal data, the data must have its focus on the data subject, not another individual or event in which the data subject may have simply had an interest. Revised guidance from the
Information Commissioner now indicates that "mere reference to a person's name where the name is not associated with any other personal information" is not enough to qualify as personal data.
The question of what is a "relevant filing system" is relevant when dealing with access to personal data stored as paper records. The Court's decision, reflected in the revised guidance from the Information Commissioner, is that an individual's right to access personal
J knows there is a system in place for retrieval of file/s covering topics about individuals and that that system is indexed/structured to allow retrieval of information about the specific individual.
The content also has to be structured/indexed to allow the searcher to access the relevant information quickly without conducting a manual search.
The answer to this question depends on which way you look at it. Critics of the decision see it as an erosion of the rights of individuals to access their personal information and monitor the way this information is processed by businesses. The decision also seems to benefit businesses with poorly arranged manual filing systems. On the other hand, the business community has generally welcomed the decision as an attempt to balance the interests of individuals against the cost implications for business in having to disclose large quantities of information that may have only peripheral relevance to an individual in a personal sense.
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easyJet has successfully defended a copyright infringement claim in the
High Court brought by Navitaire, the developer of its former passenger reservation software system. easyJet replaced Navitaire's "OpenRes" system with its own system, "eRes", which was developed for it by US company, BulletProof Technologies.
Navitaire claimed that the eRes system infringed its copyright in the OpenRes system in terms of the internet booking program, agent interfaces in the call centre and airport, its database structure, and its "business logic" (essentially, the sequence in which users queried airline schedule and price information and then entered booking information). Justice
Pumfrey ruled that copyright protection did not extend to cover
"business logic" or the command codes used by agent interfaces in the call centre and airport. The eRes database was also found not to infringe the data structures in
Navitaire's OpenRes system.
J
Acting for I-Desk Solutions Limited in their High Court victory against
Time Computers for design right infringement and passing off - an enquiry into damages will take place later this year.
(www.i-desksolutions.co.uk)
J
Advising Williams Lea on document and print management outsourcing deals with various high profile financial institutions and a large city law firm.
(www.williamslea.com)
J
Acting for T-Mobile (UK) Limited in connection with their sponsorship of the England Football team at
Euro 2004.
(www.t-mobile.co.uk)
J
Acted for on-line CD retailer
CDWOW! defending the copyright action brought by the BPI, negotiating a settlement shortly before trial was due to start in
February this year.
(www.cdwow.com)
J
Attended ELSPA's Annual Games
Summit on interactive entertainment and chaired a focus group on IP issues to be considered when exploiting a videogame in different mediums eg., TV programs, movies, books.
(www.elspa.co.uk)
J
Working with advertising industry association MCCA to create innovative 'Pitch Protection' scheme for member agencies which launched in May. Legal advice line to follow shortly.
(www.mcca.com)
For further information contact
Peter McBride, Dominic Bray, or Rachel Boothroyd peter.mcbride@ngj.co.uk
dominic.bray@ngj.co.uk
rachel.boothroyd@ngj.co.uk
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Nicholson Graham & Jones
110 Cannon Street, London EC4N 6AR
020 7648 9000
Internationally a member of GlobaLex
The contents of these notes have been gathered from various sources. You should take advice before acting on any material covered in ip news.
© Nicholson Graham & Jones 2004