Publications > Jacob: the story of a mark with a checkered history

O-066-08. JACOB. Richard Arnold QC, October 2008

Application by Sribhan Jacob Company, based in Thailand, for rectification of Registered Trade Mark no. 2108905, JACOB (figurative), in the name of Checker Leather Limited.

This is a TMA 1994 Section 60 case, implementing Article 6septies of the Paris Convention, the provisions of which apply where an application for registration of a trade mark is made by a person who is an agent or representative of a person who is the proprietor of the mark in a Convention country. In this case, the proprietor was from Thailand, which is not a Convention country. Despite this, the applicant was still successful in seeking redress by virtue of being a signatory to the World Trade Organisation (WTO). This case also clarifies the meaning of ‘agent or representative’, and also determines that the offending mark does not need to be identical to the mark belonging to the applicant for redress.

Background

Checker Leather Limited (‘Checker’) was the assignee of a stylised word mark JACOB with oval shape backdrop registered in respect of class 18 goods: ‘bags, backpacks, cases, travel bags, sports bags, briefcases, handbags, satchels, purses, wallets and key holders’. The assignor was Van Gestel Limited, which was known as Vannoort Limited at the time the application for the contested mark was filed. Sribhan Jacob Company (‘Sribhan’), a company registered in Thailand, applied for rectification of the Register, as per section 60 (1) of the trade Marks Act 1994, asking that its name be substituted as the proprietor of the Mark on the ground that the Mark was applied for by a person who was their agent or representative.

The law

Section 60 of the Act provides in relevant part:

  • (1) The following provisions apply where an application for registration of a trade mark is made by a person who is an agent or representative of a person who is the proprietor of the mark in a Convention country.
  • (2) If the proprietor opposes the application, registration shall be refused.
  • (3) If the application (not being so opposed) is granted, the proprietor may -
    • a. Apply for a declaration of the invalidity of the registration , or
    • b. Apply for the rectification of the register so as to substitute his name as the proprietor of the registered trade mark
  • (5) Subsections (2), (3) ... do not apply if, or to the extent that, the agent or representative justifies his action.
  • (6) An application under subsection 3(3)(a) or (b) must be made within three years of the proprietor becoming aware of the registration...

Section 60 of the Act implements Article 6septies of the Paris Convention. There are corresponding provisions in the CTM Regulation, in articles 8(3), 11, 18 and 52 (1)(b).

Convention country

A peculiarity of this case, although it did not form the subject of appeal despite being contentious at first instance before the hearing officer, was that Sribhan, as a Thai proprietor, was not actually the proprietor of the mark ‘in a Convention’ country in the restricted sense of being a contracting state to the Paris Convention. However, and all importantly, the term ‘Convention’ country legally extends to all members of the WTO, by virtue of the WTO Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). The Patents and Trade Marks (World Trade Organisation) Regulations 1999, SI 1999 No 1899, amended the 1994 Act in order to reflect the Marrakesh Agreement of 15 April 1994. Section 55 of the Act, however, was amended without clarifying sub-section 1(b): a ‘Convention country’ means a country, other than the United Kingdom, which is party to that Convention [i.e. the Paris Convention]. Richard Arnold QC had already commented on this anomaly in a case in November 2004: Le Mans Autoparts Ltd’s Trade Mark application (O/012/05 at [50], where he states that the amendment was ‘poorly drafted’. Now, courtesy of the Intellectual Property (Enforcement, etc) Regulations 2006, SI 2006 No 1028, section 55 (1)(b) now reads: a ‘Convention country’ means a country, other than the United Kingdom, which is party to that Convention or to that Agreement’ [i.e. the WTO Agreement]. Thailand, therefore, is a ‘Convention’ country for purposes of the law.

Meaning of agent or representative

Much of this case centred on the evidence of whether or not the original applicant of the offending mark, Vannoort Limited, was in actual fact an ‘agent or representative’ at all since it was purported that they were the owners of the UK goodwill attached to the Mark. It was submitted that they did not fall under this category and therefore were not caught by the legislation under section 60. Both the hearing officer who originally decided the case - based on written submissions and evidence only - and the Appointed Person determined otherwise, at least with regard to the situation at the date on which the application to register the trade mark was filed.

In the course of the judgment the expression ‘agent or representative’ was interpreted approvingly according to the jurisprudence of OHIM, as Richard Arnold had done previously in BRUTT Trade Marks [2007] RPC 19 at [101]. In Promat Ltd v Pasture BV (Decision 164C/00054844/1, Cancellation Division, 19 December 2002) at [14] it was held:

The terms ‘agent’ or ‘representative’ must be interpreted broadly to cover all kinds of commercial relationships, regardless of the nomen juris of the contractual relationship between the principal-proprietor and the agent-CTM applicant. Thus, it is sufficient for the purposes of Article 8(3) CTMR that there is some kind of agreement of commercial co-operation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the applicant, whether expressly or implicitly, a general duty or trust and loyalty as regards the interests of the TM owner. It follows that Article 8(3) may also extend, for example, to licensees of the owner or to authorised distributors of the goods for which the mark in question is used.

In Sotorock Holding Ltd v Gordon (Case R336/2001-2, Board of Appeal, 7 July 2003) at [17] it was held that :

Article 8(3) CTMR has its origins in Article 6septies of the Paris Convention for the protection of Industrial Property (OJ OHIM 9/97, p.805). In the spirit of the original provision, Article 8(3) CTMR aims at providing a safeguard for trade mark proprietors against attempts at misappropriation of the trade marks by persons who are in a close business relationship with the proprietors. Such persons may have the capacity of a proprietor’s agent or representative, as is mentioned in the wording of Article 8(3) CTMR. The term ‘representative’ is a broad concept and may include a distributor or an importer of the proprietor’s goods or any party who acts for the proprietor in any trade connection. Both agent and representative, by virtue of the close commercial relationship they have with the trade mark proprietor, may be able to take advantage of the proprietor’s intellectual property. This provision sets down the limits of this relationship and offers protection to the trade mark proprietor where there is proof that the relationship exists and that the trade mark proprietor never consented to the agent’s or representative’s registering the proprietor’s trade mark in its own name.

A lot of contradictory evidence was submitted regarding the status of the proprietor of the contested mark at the time of application for rectification. After carefully sifting through this evidence, the Hearing Officer, and subsequently the Appointed Person, concluded that indeed Checker was to be considered in law the agent or representative in the UK of Sribhan at the relevant time and therefore the latter were entitled to seek a rectification action. This was in spite of the fact that Checker had had no notice of any claim by Sribhan at the time that they had acquired the mark from the assignor, i.e. it was a ‘bona fide purchaser for value without notice’. However, this was not a defence, and neither was rectification a mere discretionary remedy which in the circumstances should not be exercised (as had been argued by counsel for Checker) and the only remedy available to Checker was that of an assignee against an assignor, namely Van Gestel

Do the marks have to be the same?

One of the grounds of appeal in this case was that Sribhan’s home mark was different from that of Checker whereas the law implied at s.60(1) that the marks be the same:

“The following provisions apply where an application for registration of a trade mark is made by a person who is an agent or representative of a person who is the proprietor of the mark in a Convention country” (emphasis added).

The marks in questions were:

GB No. 2108705 (the mark subject to rectification) filed 19 September 1997.

Thai registered trade mark Kor 50549 registered in respect of bags in class 18 with effect from 3 October 1956.

Counsel for Checker submitted for Sribhan was not the proprietor ‘of the Mark’ (the subject of rectification) but only of the mark which is its registration in Thailand.

Richard Arnold’s response to this argument was to refer to previous case law. In TRAVELPRO Trade Mark [1997] RPC 864 the applicant for rectification was the proprietor of a US registration for the word TRAVELPRO for goods in class 18. The respondent had registered a trade mark consisting of the word Travelpro in a particular typeface together with a small device of a piece of luggage. The hearing officer held at 868-9:

”... thus the two marks are not the same. However, I do not believe it necessary for the respective marks to be the same before a party may seek redress under this provision... In my view if the agent or representative, without the permission of the owner, registers a trade mark which is not identical but only similar to the foreign trade mark then it would be unjust to deny the owner the opportunity of seeking redress under this provision.”

Although Counsel for Checker accepted that section 60(1) was not restricted to an application to register a mark identical to that owned by the principal, it submitted that a strict test of similarity should be applied. This meant, in Arnold’s judgment, using the wording of s. 46(2) (which deals with use requirements) “an application by an agent or representative to register a mark which differs in elements which do not affect the distinctive character of the principal’s mark is within section 60(1).” He notes that this is also in line with the test applied under Article 8(3) of the CTM Regulation, in the Opposition Guidelines, March 2004, at page 15. This states:

”...applying Article 8(3) exclusively to identical marks for identical goods or services would render this provision largely ineffective, as it would allow the applicant to escape its consequences by merely importing slight modifications either to the earlier mark or to the specification of goods and services. In such a case, the interests of the owner would be seriously prejudiced, especially if the earlier mark is already in use and the variations made by the applicant are not significant enough to rule out confusion. What is more, if the application is allowed to proceed to registration despite its similarity to the earlier mark, the applicant will be in a position to prevent any subsequent registration and/or use of the earlier mark by the original proprietor within the EU, by relying on Articles 8(1) or 9(1) of the CTMR, or the equivalent provisions of national law.

Thus, in view of the necessity to effectively protect the legitimate proprietor against unfair practices by his representatives, a restrictive interpretation of Article 8(3) must be avoided. Article 8(3) CTMR must therefore be applied not only where the respective signs are identical, but also where the sign applied for by the representative or agent essentially reproduces the earlier mark with slight modifications, additions or deletions, which do not substantially affect its distinctiveness..”

Arnold’s conclusion: “In my view the distinctive character of the Thai registration lies primarily in the word JACOB and secondarily in the particular script. I consider that the device adds relatively little to its distinctive character. I think that the average consumer would regard the Mark as essentially the same trade mark. Accordingly, in my judgment the Mark differs from the Thai registration in elements which do not alter its distinctive character and is therefore sufficiently similar for the purposes of section 60(1)”.

Finally, the Appointed Person notes, in this matter of mark similarity, that unregistered trade marks arguably fall under this provision of section 60 of the TMA, this also being in line with OHIM guidelines (Part 3 of the Opposition Guidelines at p. 6.)

The Appeal failed and costs were awarded against Checker.

Comment

This case, among other things, shows the usefulness of OHIM guidelines and case law in providing guidance of how issues that fall within the UK Trade Mark Act might be determined. Practitioners should be encouraged to periodically look at OHIM’s guidelines as found on the recently re-vamped website.

This article first appeared in the October 2008 issue of the ITMA Review