|Lets look at it this way....|
Wednesday, 8 February 2017
The post below follows on from Part 1 of this post regarding Ms Mulhern, owner of the mark The Willow Tea Rooms opposing the Willow Tea Rooms Trust attempt to register the mark “The Willow Tea Rooms” in classes 35, 41, 42 and 43. The matter came before Mrs J Pike on the 27 January 2017 and the UK Intellectual Property Office (IPO) published the full 73 page decision here, in which two interesting points arose:
Use of a modified / part of a trademark registered in a series
Firstly, Ms Mulhern opposed the registration under sections 5(2)(b) of the Trade Mark Act 1994 (TMA) [similar to an earlier mark and is registered for identical or similar goods or services] and 5(3) TMA [is identical with or similar to an earlier trade mark, and the earlier trade mark has a reputation, and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark]. She based these claims on her registered trade marks for Willow (1276805, series of two marks in Class 42: Restaurant, tea room, catering and cafe services; all included in Class 42; but not including any of the aforesaid services relating to the provision of alcoholic drinks) and The Willow Team Rooms (2251332A, series of 8 marks, goods and services in classes 9, 11, 16, 20, 21, 24, 30 and 43).
In their counterstatement, the Trust denied all of the grounds and relied on 6A of the TMA requiring Mulhern to demonstrate genuine use of her marks. In particular, it questions whether there had been use of any or all of the stylised forms of the mark and argued that no use had been made of the trade mark “Willow,” since it is only used in conjunction with the overall words “The Willow Tea Rooms” (which is a separate trade mark).
Pike noted [at 34] that there was no evidence of use of the “Willow” mark by itself. The difference in the second series of marks is the additional of the words ‘tea’ and ‘rooms’. She also noted [at 50] that in Comic Enterprises Ltd v. Twentieth Century Fox Film Corporation, Kitchin LJ stated [at 66]: “An application for the registration of a series of trade marks is an application to register a bundle of trade marks under a single reference number. Each of the marks in the series must satisfy the requirements of the 1994 Act…namely a bundle of different marks, albeit now registered under the same reference number” (emphasis added).
With that in mind, Pike set out [at 51] to assess whether there was use in respect of any or all of the marks registered as a series of eight. To do this, she considered [at 52] the test to be: what sign was presented as the trade mark on the goods and whether that sign differs from the registered trade mark in elements which do not alter the latter’s distinctive character (referring to Nirvana Trade Mark, BL O/262/06 at 33 and 34). For example in Hypen GmbH v EU IPO, Case T-146/15 the General Court held that, taking into account the intrinsic qualities and the greater or lesser degree of distinctive character of the mark, a circle around the mark in question was not sufficient to alter the distinctive character of the mark.
As such, the relative distinctiveness of the registered mark and the components added to (or omitted from) it in use are relevant factors to take into account. Pike stated [at 57] that the distinctive character of the "Willow Tea Rooms" mark lies firstly in the words, and secondly in their stylisation. As the goods are sold within the tea rooms as merchandise, it is a reasonable assumption that the way in which the mark appears on the goods replicates the form of use in relation to the services. Therefore, even if the mark used was only “Willow Tea Rooms”, the stylisation of the words in the marks registered is not sufficiently distinctive that its absence from the used mark alters its distinctive character, since in this case the distinctive character of the mark is overwhelmingly concentrated in the words.
[So it seems to me that Pike went around the problem of the non-use of “Willow” by establishing use of “The Willow Tea Rooms” and then extracted the word “Willow” from the second series to justify the registration of the first? Interesting.]
Good will of the building or the business within the building?
So on to the second point of interest: As explained in Part 1, the building on Sauchiehall Street, was designed by Scottish architect Charles Rennie Mackintosh in 1903 with Kate Cranston as a tea room, which Anne Mulhern restored to its original purpose in 1983.
Ms Mulhern also opposed the Trust’s mark under 5(4)(a) TMA 1994 arguing that its use would constitute passing off by misrepresentation and damage to her goodwill. The Trust, however, argued that the goodwill was theirs as the owners of the building, since the name The Willow Tea Rooms was associated with the historical development of the building itself and not the business carried on within it. Pike recalled [at 86] the concept of goodwill in Inland Revenue Commissioners v Muller & Co’s Margarine Ltd  AC 217, where Lord Lindley said: “Goodwill regarded as property has no meaning except in connection with some trade, business, or calling… In this wide sense, goodwill is inseparable from the business to which it adds value.” It therefore concluded [at 87] that goodwill is generated by trade or custom, and is capable of being owned. She believed that whilst the building might have a reputation amongst those who know of its heritage, that is different to goodwill. [note to self and legal dictionaries (e.g. here, here, here, here), goodwill is not reputation.]
Pike turns to Professor Christopher Wadlow, in The Law of Passing-Off: Unfair Competition by Misrepresentation, 5th Edition, to explain the difference between goodwill and reputation: “Goodwill as a form of legal property is also to be distinguished from mere reputation, which is primarily a matter of fact. In so far as reputation may be a legally protected interest, it is a non-proprietary one. It is true that the two are very closely related, and a business with goodwill (at least in the sense in which the term is used in passing-off) can hardly fail to have a reputation in some sense. The converse, however, is not true, and the existence of a reputation associated with a person, product, name or mark does not necessarily imply the existence of goodwill.”
So, reputation can exist without a supporting business, but goodwill can only exist via business or trade. Thus, Pike states [at 89] that a building per se cannot have goodwill because goodwill can only exist if there is something to buy in order to generate custom. As such, the Trust could not establish goodwill on the basis of the architectural reputation of the building . Consequently, the Trust was prevented from registering the mark under the law of passing-off.
Ms Mulhern successfully opposed approximately two-thirds of the application and was entitled to a contribution towards her costs. The Willow Tea Rooms Trust has 28 days to appeal against the ruling but as mentioned in Part 1, a spokesman for the Trust reportedly said that it accepts the decision.
Photo: Beryl McMillan