Mermeren Kombinat AD v Fox Marble Holdings Plc
| Jurisdiction | England & Wales |
| Judge | Judge Hacon |
| Judgment Date | 14 June 2017 |
| Neutral Citation | [2017] EWHC 1408 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Case No: IP-2015-000146 |
| Date | 14 June 2017 |
[2017] EWHC 1408 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
EUROPEAN UNION TRADE MARK COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
His Honour Judge Hacon
Case No: IP-2015-000146
Emma Himsworth QC (instructed by Clyde & Co LLP) and David Wilkinson (of Clyde & Co LLP, solicitor advocate) for the Claimant
Michael Hicks (instructed by CMS Cameron McKenna Nabarro Olswang LLP) for the Defendant
Hearing dates: 2–3 May 2017
Introduction
Since the time of the Roman empire marble has been extracted from quarries near the city now called Prilep, in the Balkan peninsula. The marble was and is famed for its white colour and homogenous appearance which have made it a marble suitable for statuary, for use in the Emperor Diocletian's palace and more recently in the Grand Mosque in Abu Dhabi and in upmarket bathrooms.
Prilep and its nearby quarries are now in the Republic of Macedonia, formerly part of Yugoslavia. Due to a dispute with Greece over its name, that state is has become a member of organisations such as the United Nations and the Council of Europe using a longer title: 'The Former Yugoslav Republic of Macedonia'. Solely for brevity and meaning no offence to Greece, I will call it Macedonia.
The claimant ("Mermeren") is a Macedonian company which has been extracting marble from near Prilep since 1950. A decision of the People's Republic of Macedonia dated 1950 records the transfer to Mermeren of "the plants for the extraction of marble in s. Chaska, Debreshite, Skrka and Sivec within Prilep region" (in translation from the Macedonian). Of the places mentioned Chaska and Debreshite are villages, and Skrka is a mountain, all of them near Prilep.
That leaves Sivec, pronounced Sivets locally. I was shown maps dating from the 1970s in which Sivec is identified as a mountain pass in the same region. Sivec is also named as a location in a geological map dated 1969 showing, among other things, areas of marble deposits north of Prilep.
Mermeren is the proprietor of EU Trade Mark No. 012057915 ("the Trade Mark"), which takes the form of the word SIVEC, registered in respect of 'Marble of all types' among other related goods. It was granted as of 9 August 2013.
The defendant ("Fox") is a UK company incorporated in October 2011 which extracts and sells marble. One of its quarries is in the Prilep region in Macedonia. It sells that marble under the sign 'Sivec'.
Mermeren has brought the present proceedings against Fox for infringement of the Trade Mark. Fox has admitted using a sign identical to the Trade Mark for goods identical to those in respect of which the Trade Mark is registered. A defence to infringement was pleaded pursuant to art.12 of Council Regulation (EC) No. 207/2009 ("the Regulation"), namely that the Trade Mark indicated the geographical origin of the marble in respect of which the mark was used by Fox. Fox's main defence and principal contention, however, was that the Trade Mark was invalidly registered and/or should be revoked. Fox counterclaimed accordingly.
Emma Himsworth QC and David Wilkinson appeared for Mermeren, Michael Hicks for Fox.
The issues
Fox's counterclaim alleging invalidity of the Trade Mark relied on art.7(1)(b), (c) and (d) of the Regulation; in support of the allegation that the Trade Mark should be revoked Fox relied on art.51(1)(b). Fox also pleaded an allegation that the Trade Mark was registered in bad faith, contrary to art.52(1)(b) of the Regulation.
All allegations were denied by Mermeren. In addition it relied on acquired distinctiveness. Mermeren's Defence to Counterclaim pleaded only art.7(3) in this regard. The list of issues at the end of the Order made at the case management conference on 25 July 2016 left the matter vague. At trial the parties behaved as if Mermeren had also relied on art.52(2). I will do likewise.
Mr Hicks submitted in opening that the dispute in its various guises boiled down to essentially one point: whether at the relevant dates 'Sivec' served in trade to designate the geographical origin of a type of marble, within the meaning of art.7(1)(c) of the Regulation. He accepted that Fox's argument for invalidity under art.7(1)(b) and (d) and for revocation of the Trade Mark under art.51(1)(b) would not succeed if its case under art.7(1)(c) failed, taking into account Mermeren's argument of acquired distinctiveness through use.
In opening Mr Hicks maintained the allegation of bad faith but it was not pursued in his closing submissions. In closing Mr Hicks also conceded that art.12 provided Fox with no defence if I found, in the context of the arguments on validity, that the Trade Mark did not designate the geographic origin of marble. I am therefore concerned only with arts.7(1)(c), 7(3) and 52(2).
The law
The inherent character of a trade mark – designation of geographical origin
Art.7(1)(c) provides:
" 7(1) The following shall not be registered:
…
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering the service, or other characteristics of the goods or service."
Mr Hicks referred primarily to Windsurfing Chiemsee Productions—und Vertriebs GmbH v Boots—und Segelzubehör Walter Huber, Joined Cases C-108/97 and C-109/97, EU:C:1999:230, in which the European Court of Justice ("ECJ") considered whether a trade mark consisting of the name of a lake in Bavaria was subject to exclusion from registration under art.3(1)(c) of Council Directive 89/104/EEC, the trade mark directive then in force. Art 3(1)(c) is identical in terms to art.7(1)(c) of the Regulation. It is sufficient for me to quote the first operative answer of the ECJ to the question referred (the answer is in the same terms as paragraph 37 of the judgment):
"1. Article 3(1)(c) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that:
(i) it does not prohibit the registration of geographical names as trade marks solely where the names designate places which are, in the mind of the relevant class of persons, currently associated with the category of goods in question; it also applies to geographical names which are liable to be used in future by the undertakings concerned as an indication of the geographical origin of that category of goods;
(ii) where there is currently no association in the mind of the relevant class of persons between the geographical name and the category of goods in question, the competent authority must assess whether it is reasonable to assume that such a name is, in the mind of the relevant class of persons, capable of designating the geographical origin of that category of goods;
(iii) in making that assessment, particular consideration should be given to the degree of familiarity amongst the relevant class of persons with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods concerned;
(iv) it is not necessary for the goods to be manufactured in the geographical location in order for them to be associated with it."
Mr Hicks also referred to the judgment of the Court of First Instance, Nordmilch eG v OHIM ("OLDENBURGER"), T-295/01, EU:T:2003:267. The Court said (at [43]) that the actual geographical origin of the goods in question does not matter. It is enough that the average consumer perceives the sign in question as an indication of geographical origin. This is consistent with paragraph 1(iv) of the ruling in Windsurfing.
Miss Himsworth referred to Peek & Cloppenburg KG v OHIM, T-379/03, EU:T:2005:373; [2006] ETMR 33. In that case the word mark was CLOPPENBURG for retail services. Cloppenburg is a town in Lower Saxony where the applicant, a supplier of retail services, was based. The Court of First Instance cited Windsurfing and Oldenburger and considered how OHIM should assess a mark alleged to designate a geographical origin within the meaning of art.7(1)(c):
"[38] In making that assessment the Office is bound to establish that the geographical name is known to the relevant class of persons as the designation of a place. What is more, the name in question must suggest a current association, in the mind of the relevant class of persons, with the category of goods or services in question, or else it must be reasonable to assume that such a name may, in the view of those persons, designate the geographical origin of that category of goods or services. In making that assessment, particular consideration should be given to the relevant class of persons' degree of familiarity with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods or services concerned (see, by analogy, Windsurfing Chiemsee, paragraph 37 and paragraph 1 of the operative part)."
Miss Himsworth also relied on the judgment of the Court of Appeal in JW Spear & Sons Ltd v Zynga Inc [2015] EWCA Civ 290; [2015] FSR 19, drawing attention to the passage of that judgment in which Floyd LJ, with whom Patten and Tomlinson LJJ agreed, considered (at [73] to [83]) the judgments of the CJEU in Agencja Wydawnicza Technopol sp zoo v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), C-51/10 P, EU:C2011:139; [2011] ETMR 34 and OHIM v Wm Wrigley Jr Co ("DOUBLEMINT"), C-191/01 P, EU:C:1999:230; [2004] RPC 18. Floyd LJ said that the issue under art.7(1)(c) is whether the average consumer would have...
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Decision Nº O/765/18 from Intellectual Property Office - (Trade market), 28 November 2018
...mark that may result from the way it is used. In particular Ms Himsworth referred to Mermeren Kombinat AD v Fox Marble Holdings Plc, [2017] EWHC 1408 (IPEC), paras 24 and 25. Here Hacon J. found that Article 7(1)(b) of the European Trade Mark Regulation (equivalent to section 3(1)(b) of the......