Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch)

“Supreme’s branding is so successful that the company is known more for its characters than for its name. When people ask me who I work for and I say Supreme, they say ‘Who’ … If I say Russell Rabbit, then its ‘Oh yes, I know’. It’s instant recognition.”

“SUPREME QUALITY At Supreme Petfoods, we greatly value our customers’ feedback. We take very care to ensure the product reaches you in perfect condition. However, if you or your rabbit are not entirely satisfied with this product, please contact our customer care department quoting the batch code and best before date.” iv) There are two panels at the bottom of the rear of the packaging (or in the case of smaller packs the two are combined into one). One panel bears a statement of the weight of the product together with Supreme Petfoods’ websites address www.supremepetfoods.com. The other bears a shortened version of the ribbon device with the word “petfoods” superimposed on the black part together with Supreme Petfoods’s full name and address and the following statement: “Russel Rabbit [or Gerty Guinea Pig etc] and the Supreme logo are registered trade marks of Supreme Petfoods Ltd.”

“ … our concern is that there is likely to be some confusion in the minds of the public who may believe that your SUPREME RABBIT MIX is in some way associated with this company. The principal element of our Corporate Identity is the SUPREME PETFOODS Trademark which positions the word SUPREME within a stylised banner. … I gather that both your bulk packaging and your bag leaflets similarly portray your product name within a banner, so giving the impression of a brand rather than a descriptive title. We would obviously not wish you to suffer unnecessary financial loss over this matter, so would merely seek your assurance that at the next production run of any print elements communicating your SUPREME RABBIT MIX, and in any event no later than 31/12/94, you will delete either the banner or the word SUPREME. It is the combination of these two elements which we believe infringes our established mark.”

“A higher protein deluxe version of Special rabbit, making it particularly suitable for growing as well as mature rabbits and lactating does. Mr Johnson’s top of the range market leader. Available in 20kg and 1.5kg bags.”

“The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed….”

“The protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, should be absolute in the case of identity between the mark and the sign and the goods or services. The protection should apply also in the case of similarity between the mark and the sign and the goods or services. It is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion. The likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection. The ways in which likelihood of confusion may be established, and in particular the onus of proof, should be a matter for national procedural rules which should not be prejudiced by this Directive.”

“Article 3 Grounds for refusal or invalidity 1. The following shall not be registered or, if registered, shall be liable to be declared invalid: .. (b) trade marks which are devoid of any distinctive character; (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 of the service, or other characteristics of the goods or services; … 3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration. Article 5 52. Rights conferred by a trade mark 1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark. 2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. 5. Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purpose of distinguishing goods or services, where use of that sign without due cause take unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. 3. The following, inter alia, may be prohibited under paragraphs 1 and 2: (a) affixing the sign to the goods or to the packaging thereof; (b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; (c) importing or exporting the goods under the sign; (d) using the sign on business papers and in advertising. … 5. Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. Article 6 57. Limitation of the effects of a trade mark 1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade: … (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; … provided he uses them in accordance with honest practices in industrial or commercial matters.”

“23. If the function of the trade mark as an indication of origin is of primary importance to the consumer or end user, it is also relevant to intermediaries who deal with the product commercially. As with consumers or end users, it will tend to influence their conduct in the market. 24. In general, the perception of consumers or end users will play a decisive role. The whole aim of the commercialisation process is the purchase of the product by those persons and the role of the intermediary consists as much in detecting and anticipating the demand for that product as in increasing or directing it. 25. Accordingly, the relevant classes of persons comprise principally consumers and end users. However, depending on the features of the product market concerned, the influence of intermediaries on decisions to purchase, and thus their perception of the trade mark, must also be taken into consideration.”

“… as the Court pointed out in paragraph 24 of the judgment in Björnekulla Fruktindustrier, in general, the perception of consumers or end users will play a decisive role. It must be held, in line with what the Advocate General stated at points 58 and 59 of his Opinion, that in a case such as that at issue in the main proceedings, which is, subject to verification by the referring court, characterised by the loss of distinctive character of the trade mark concerned from the point of view of the end users, that loss may result in the revocation of that trade mark. The fact that the sellers are aware of the existence of that trade mark and of the origin which it indicates cannot, on its own, preclude such revocation.”

“29. … the fact that a sign is, in general, capable of constituting a trade mark does not mean that the sign necessarily has distinctive character for the purposes of Article 7(1)(b) of the regulation in relation to a specific product or service (Joined Cases C-456/01 P and C-457/01 P Henkel v. OHIM [2004] ECR I-5089, paragraph 32). 30. Under that provision, marks which are devoid of any distinctive character are not to be registered. 31. According to settled case-law, for a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (Henkel v. OHIM, paragraph 34; Case C-304/06 PEurohypo v. OHIM [2008] ECR I-3297, paragraph 66; and Case C-398/08 P Audi v. OHIM [2010] ECR I0000, paragraph 33). 32. It is settled case-law that that distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of them by the relevant public (Storck v. OHIM, paragraph 25; Henkel v. OHIM, paragraph 35; and Eurohypo v. OHIM, paragraph 67). Furthermore, the Court has held, as OHIM points out in its appeal, that that method of assessment is also applicable to an analysis of the distinctive character of signs consisting solely of a colour per se, three-dimensional marks and slogans (see, to that effect, respectively, Case C-447/02 P KWS Saat v. OHIM [2004] ECR I10107, paragraph 78; Storck v. OHIM, paragraph 26; and Audi v. OHIM, paragraphs 35 and 36). 33. However, while the criteria for the assessment of distinctive character are the same for different categories of marks, it may be that, for the purposes of applying those criteria, the relevant public’s perception is not necessarily the same in relation to each of those categories and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see Joined Cases C-473/01 P and C-474/01 P and C474/01 P Procter & Gamble v. OHIM [2004] ECR I-5173, paragraph 36; Case C-64/02 P OHIM v. Erpo Möbelwerk [2004] ECR I-10031, paragraph 34; Henkel v. OHIM, paragraphs 36 and 38; and Audi v. OHIM, paragraph 37). 34. In that regard, the Court has already stated that difficulties in establishing distinctiveness which may be associated with certain categories of marks because of their very nature – difficulties which it is legitimate to take into account – do not justify laying down specific criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law (see OHIM v. Erpo Möbelwerk, paragraph 36, and Audi v. OHIM, paragraph 38). … 37. … it should be pointed out that, even though it is apparent from the case-law cited that the Court has recognised that there are certain categories of signs which are less likely prima facie to have distinctive character initially, the Court, nevertheless, has not exempted the trade mark authorities from having to carry out an examination of their distinctive character based on the facts. ... 45. As is clear from the case-law of the Court, the examination of trade mark applications must not be minimal, but must be stringent and full, in order to prevent trade marks from being improperly registered and, for reasons of legal certainty and good administration, to ensure that trade marks whose use could be successfully challenged before the courts are not registered (see, to that effect, Libertel, paragraph 59, and OHIM v. Erpo Möbelwerk, paragraph 45).”

“41. Nor is it significant in my view that Article 5(1)(a) … contains no reference to the likelihood of confusion. On the contrary, its absence is consistent with the view that the paragraph concerns only use for the purpose of indicating origin. Where a signused to indicate the origin of goods is identical to a registeredtrade mark and the goods are identical to those in respect ofwhich the mark is registered, confusion as to origin is bydefinition not only likely but practically inevitable. Where there is only similarity, however, there may not always be a danger of confusion - all the circumstances must be taken into account - and it was thus necessary to include the proviso in Article 5(1)(b). 42. On the other hand, where use of a sign does not indicate origin,there can by definition be no confusion as to the origin of twosets of goods, regardless of whether they are identical ormerely similar, and also of whether the sign is identical ormerely similar to the protected mark. It would in my view introduce unnecessary inconsistency into the scheme of the provision if a right to prevent use other than for the purpose of indicating origin were to depend on likelihood of confusion in some cases and not in others.”

“Article 5(1) … is to be interpreted as meaning that the proprietor of a trade mark cannot rely on his exclusive right where a third party, in the course of commercial negotiations, reveals the origin of goods which he has produced himself and uses the sign in question solely to denote the particular characteristics of the goods he is offering for sale so that there can be no question of the trade mark used being perceived as a sign indicative of the undertaking of origin”

“50. To put it in the negative and more restrictive terms in which the High Court has framed its question, anyone who usesanother's trade mark may claim in defence to the proprietor'sobjection that his use of it does not indicate the origin of thegoods or of the services or give rise to confusion over theirquality and reputation. 51. As against the maximalist arguments advanced by Arsenal and the Commission, for which, in a case such as that in point in the main proceedings, and in the absence of the conditions laid down in Article 6(1) …, the proprietor of a trade mark is entitled to prevent anyone from using it, I share the more qualified view of the Surveillance Authority of the European Free Trade Association. My position is thus based on the considerations I have set out in the preceding paragraphs and, furthermore, on the reasoning which the European Free Trade Association Surveillance Authority sets out at paragraph 19 of its observations; namely that when the Directive says thatprotection is absolute in the case of identity 39 it must beunderstood as meaning that, in light of the aim and the purposeof trade mark law, ‘absolute’ means that protection is affordedto the proprietor, irrespective of whether there is a likelihood ofconfusion, because in such situations there is a presumptionthat there is such a likelihood,40 and not, on the contrary, that protection is accorded to the proprietor erga omnes and in all circumstances.”

“Advocate General Jacobs, in the Opinion which he delivered in LTJ Diffusion, cited above, argues that, in cases of identity, alikelihood of confusion is to be presumed (see paragraphs 35 et seq.). According to Article 16(1) of the Agreement on TradeRelated Aspects of Intellectual Property Rights, annexed to the Agreement establishing the World Trade Organisation, made in Marrakesh on 15 April 1994 (OJ 1994 L 336, p. 1), where athird party uses a sign identical to that registered as a trademark by the proprietor, for identical goods or services, alikelihood of confusion is to be presumed.”

“I have just observed that, in cases of identity, likelihood ofconfusion may be presumed. The same reason as that whichjustifies that presumption allows the conclusion that, wherethere is such identity, the use a third party makes of a trademark is use of it as such. That presumption, which is iuristantum, may be rebutted by proof to the contrary. Accordingly, there is a possibility, however remote it may be, that in a specific case use of a sign identical with another registered as a trade mark may not be prevented by the proprietor on the basis of Article 5(1)(a) of the Directive.”

“To answer the High Court's questions, it must be determined whether Article 5(1)(a) … entitles the trade mark proprietor to prohibit any use by a third party in the course of trade of a sign identical to the trade mark for goods identical to those for which the mark is registered, or whether that right of prohibition presupposes the existence of a specific interest of the proprietor as trade mark proprietor, in that use of the sign in question by a third party must affect or be liable to affect one of the functions of the mark.”

“51. It follows that the exclusive right under Article 5(1)(a) … was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions. The exercise of that right must therefore be reserved to cases in which a third party's use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods. … 54. The proprietor may not prohibit the use of a sign identical to the trade mark for goods identical to those for which the mark is registered if that use cannot affect his own interests as proprietor of the mark, having regard to its functions. Thus certain uses for purely descriptive purposes are excluded from the scope of Article 5(1) … because they do not affect any of the interests which that provision aims to protect, and do not therefore fall within the concept of use within the meaning of that provision (see, with respect to a use for purely descriptive purposes relating to the characteristics of the product offered, Case C-2/00 Hölterhoff [2002] ECR I-4187, paragraph 16).”

“… a trade name may be considered to incorporate the essential features of a ‘sign’ that conflicts with a registered trade mark, use of which may be prevented by the owner of that trade mark, pursuant to Article 16(1) of the TRIPs Agreement and Article 5(1) of Directive 89/104, if that trade name is being used to perform the function of a trade mark, that is to say, to establish a link between the goods and the undertaking which manufactures (or distributes) them, and if it may cause confusion in the mind of consumers, preventing them from easily understanding whether specific products come from the owner of the trade name or the owner of the registered trade mark. There is presumed to be a likelihood of confusion incircumstances in which signs and goods are identical; if they are not identical, the national court must make a global assessment of the specific situation to ascertain whether that likelihood of confusion exists.”

“24. The Arsenal Football Club case is of paramount importance in this context. In my Opinion in that case, I pointed out that, when the Directive says that protection is absolute in the case of identity, it must be understood as meaning that, in light of the aim and the purpose of trade mark law, ‘absolute’ means that protection is afforded to the proprietor, irrespective of whether there is a likelihood of confusion, because in suchsituations there is a presumption that there is such a likelihood,and not, on the contrary, that protection is accorded to theproprietor erga omnes and in all circumstances. Article 5(1)(a)therefore creates a presumption iuris tantum, where there isidentity between the products. 25. Similarly, the judgments of the Court of Justice, taking a teleological approach to the provisions at issue, have held that the exclusive right under Article 5(1)(a) … was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions, in particular the function of guaranteeing to consumers the origin of the goods. … 28. … the judgment in [Arsenal] indicated the limits of the exercise of the powers conferred by Article 5(1) … on the proprietor of a sign, denying him the right to prohibit the use of an identical sign if that use cannot affect his own interests as proprietor of the mark in the terms set out. Thus certain uses for purely descriptive purposes are excluded from the scope of the provision. 29. The judgment in Anheuser-Busch indicated the means ofestablishing possible damage, indicating that this is the case when the use of that sign allegedly made by the third party is such as to create the impression that there is a material link in trade between the third party’s goods and the proprietor of the trade mark. It must be established whether the consumers targeted interpret the sign, as it is used by the third party, as designating the undertaking which is the proprietor of the trade mark. …”

“As is clear from the Court’s case-law (Arsenal Football Club; Case C-245/02 Anheuser-Busch [2004] ECR I-10989; and Adam Opel), the proprietor of a registered mark may prevent the use of a sign by a third party which is identical to his mark under Article 5(1)(a) … only if the following four conditions are satisfied: – that use must be in the course of trade; – it must be without the consent of the proprietor of the mark; – it must be in respect of goods or services which are identical to those for which the mark is registered, and – it must affect or be liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services.”

“25. Lastly, Celine SARL claims that there could be no confusion on the part of the public as to the origin of the goods in question. 26. As was noted at paragraph 16 of this judgment, the unauthorised use by a third party of a sign which is identical to a registered mark in relation to goods or services which are identical to those for which that mark is registered cannot be prevented under Article 5(1)(a) … unless it affects or is liable to affect the functions of the mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services. 27. That is the situation where the sign is used by the third party in relation to his goods or services in such a way that consumers are liable to interpret it as designating the origin of the goods or services in question. In such a case, the use of the sign is liable to imperil the essential function of the mark, since, for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EC Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality (see, to that effect, Arsenal Football Club, paragraph 48 and the case-law cited, and paragraphs 56 to 59). 28. In the main proceedings, it is for the national court to determine whether the use by Céline SARL of the Céline sign affects or is liable to affect the functions of the ‘Céline’ sign, particularly its essential function.”

“47. In addition, it is clear that the use at issue in the main proceedings is in relation to goods since, even though it is not a case of affixing to a third party’s goods a sign which is identical with a registered mark, there is use ‘in relation to goods or services’ within the meaning of Article 9(1)(a) … where the third party uses that sign in such a way that a link is established between the sign and the goods marketed or the services provided by the third party, in the main proceedings in the form of the use of the sign at issue in business papers (see, to that effect, Arsenal Football Club, paragraph 41, and Céline, paragraphs 22 and 23). 48. Since such a link is established, it is, besides, irrelevant that the third party uses a sign which is identical with a registered mark for the marketing of goods which are not its own goods in the sense that it does not acquire title to those goods in the course of the transaction in which it acts. 49. It cannot, furthermore, be disputed that the use of that sign by the third party, in a situation such as that at issue in the main proceedings, is likely to be interpreted by the public targeted as designating or tending to designate the third party as the undertaking from which the goods originate and is therefore such as to create the impression that there is a material link in trade between those goods and the undertaking from which they originate (see, to that effect, Anheuser-Busch, paragraph 60). 50. Indeed, by such use, the third party assumes de facto the essential prerogative that is granted to the proprietor of a mark, namely the exclusive power to use the sign at issue so as to distinguish goods. 51. In such a case, this is clearly a question of use of the mark as a mark. In that regard, it is, moreover, irrelevant that the use is by the third party in the context of the marketing of goods on behalf of another operator having sole title to those goods.”

“58. The Court has already held that the exclusive right under Article 5(1)(a) … was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions and that, therefore, the exercise of that right must be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark (Case C-206/01 Arsenal Football Club [2002] ECR I-10273, paragraph 51; Case C-245/02 Anheuser-Busch [2004] ECR I-10989, paragraph 59; and Case C-48/05 Adam Opel [2007] ECR I1017, paragraph 21). These functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising. 59. The protection conferred by Article 5(1)(a) … is thus broader than that provided by Article 5(1)(b), the application of which requires that there be a likelihood of confusion and accordingly the possibility that the essential function of the mark may be affected (see, to that effect, Davidoff, paragraph 28, and O2 Holdings and O2 (UK), paragraph 57). By virtue of the 10th recital in the preamble to Directive 89/104, the protection afforded by the registered trade mark is absolute in the case of identity between the mark and the sign and also between the goods or services, whereas, in case of similarity between the mark and the sign and between the goods or services, the likelihood of confusion constitutes the specific condition for such protection. 60. It is apparent from the case-law cited in paragraph 58 of this judgment that the proprietor of the mark cannot oppose the use of a sign identical with the mark on the basis of Article 5(1)(a) … if that use is not liable to cause detriment to any of the functions of that mark (see also Arsenal Football Club, paragraph 54, and Adam Opel, paragraph 22). 61. Thus, the Court has already held that certain uses for purely descriptive purposes are excluded from the scope of application of Article 5(1) …, because they do not affect any of the interests which that provision is intended to protect and accordingly do not constitute ‘use’ within the meaning of that provision (see, to that effect, Case C-2/00 Hölterhoff [2002] ECR I-4187, paragraph 16). 62. It must, however, be made clear that the situation described in the main proceedings is fundamentally different from that which gave rise to the judgment in Hölterhoff, in that the word marks belonging to L’Oréal and Others are used in the comparison lists distributed by Malaika and Starion not for purely descriptive purposes, but for the purpose of advertising. 63. It is for the referring court to determine whether, in a situation such as that which arises in the main proceedings, the use which is made of the marks belonging to L’Oréal and Others is liable to affect one of the functions of those marks, such as, in particular, their functions of communication, investment or advertising.”

“In the light of the foregoing, the answer to the third question is that Article 4(1)(a) … must be interpreted as meaning that the proprietor of an earlier trade mark cannot obtain the cancellation of an identical later trade mark designating identical goods where there has been a long period of honest concurrent use of those two trade marks where, in circumstances such as those in the main proceedings, that use neither has nor is liable to have an adverse effect on the essential function of the trade mark which is to guarantee to consumers the origin of the goods or services.”

“46. However, the territorial scope of the prohibition may, in certain circumstances, be restricted. The exclusive right of a Community trade mark proprietor, as provided for under Article 9(1) of Regulation No 40/94, is conferred in order to enable that proprietor to protect his specific interests as such, that is, to ensure that the trade mark is able to fulfil its functions. The exercise of that right must therefore be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark (see, to that effect, Joined Cases C-236/08 to C-238/08 Google France and Google [2010] ECR I-0000, paragraph 75 and the case-law cited). 47. It follows, as the European Commission has pointed out, that the exclusive right of a Community trade mark proprietor and, hence, the territorial scope of that right, may not extend beyond what that right allows its proprietor to do in order to protect his trade mark, that is, to prohibit only uses which are liable to affect the functions of the trade mark. The acts or future acts of a defendant (namely the person whose use of the Community trade mark is complained of) which do not affect the functions of the Community trade mark, cannot therefore be prohibited. 48. Accordingly, if a Community trade mark court hearing a case in circumstances such as those of the main proceedings finds that the acts of infringement or threatened infringement of a Community trade mark are limited to a single Member State or to part of the territory of the European Union, in particular because the applicant for a prohibition order has restricted the territorial scope of its action in exercising its freedom to determine the extent of that action or because the defendant proves that the use of the sign at issue does not affect or is not liable to affect the functions of the trade mark, for example on linguistic grounds, that court must limit the territorial scope of the prohibition which it issues.”

“The function of indicating the origin of the mark is adversely affected if the ad does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party (see, to that effect, Céline, paragraph 27 and the case-law cited).”

“The protection conferred by Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94 is, in this regard, more extensive than that provided for in the respective paragraphs (1)(b) of those articles, the application of which requires that there be a likelihood of confusion (see, to that effect, Davidoff, paragraph 28, and L’Oréal and Others, paragraph 59). ”

“Specifically, and notwithstanding Article 16(1) of TRIPS, the Court has now held in a long line of decisions that the right under Article 5(1)(a) (and Article 9(1)(a)), though ‘absolute’, is conferred to enable the trade mark proprietor to protect his interests as proprietor, that is to ensure the trade mark can fulfil its functions. The exercise of the right must therefore be reserved to cases in which a third party's use of the sign adversely affects, or is liable adversely to affect, one of those functions.”

“Me – Hello this is Penny from Supreme Pet Foods, I wonder do you stock any of our products? Lady – Yes! Me – Do you stock any of the Selective range? Lady – Yes! I stock the tropical fruit mix. Me – Oh, I think you are referring to the Mr Johnsons range? Lady – Hang on im on the wrong thing!!!”

“Me – Hello its Penny again from Supreme! Debbie – Oh great really glad you called back, I was about to submit my order today to Vital. What was the offer on the 12.5kg (Buy 5 Get 1 free). OK I would like to take that one up! I want Hamster and Gerbil Mix and special rabbit mix…… Me – Oh I think you may have confused our Russel and Gerty with Mr Johnsons??......(this is exactly how the previous conversation went) Debbie – Oh I am completely confused….. then placed her order.”