The price of Banksy’s anonymity
What is the background to Banksy’s copyright dispute with fashion brand, Guess?
On 22 September 2009, Delta Pronatura Dr. Krauss & Dr. Beckmann KG applied to protect a logo comprising the words DR. BECKMANN ORIGINAL COLOUR & DIRT COLLECTOR in respect of cleaning related goods in classes 1, 3 and 5.
The logo took the following form:
The application was opposed under section 5(2)(b) of the UK Trade Marks Act 1994 by Punch Industries on the basis of its earlier UK trade mark registration no. 2537192 COLOR COLLECTOR/COLOUR COLLECTOR (Series of 2) which covered cleaning related goods in classes 3 and 21.
The UK Intellectual Property Office dismissed the opposition on the grounds COLOUR & DIRT COLLECTOR was a descriptive element that did not have an independent, distinctive role in the mark and that the two marks were not therefore similar when viewed as a whole.
Punch Industries appealed the decision first on the basis the examiner had incorrectly found the earlier mark to be of low distinctiveness and the element COLOUR & DIRT COLLECTOR of Dr. Beckmann’s mark to be a “very descriptive element”, and second on the basis the Medion principle (C-120/04, Medion AG v Thomson Multimedia Sales Germany & Austria GmbH, CJEU, 6 October 2005) had been incorrectly applied.
By way of background, the CJEU in Medion held that, where the goods or services are identical, there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein.
The appeal was dismissed on both counts. With regards to the descriptiveness point, the Appointed Person found that it was appropriate for the hearing officer to consider the degree of inherent distinctiveness possessed by the opponent’s mark and that the hearing officer had correctly considered Dr. Beckmann’s mark as a whole. As for the application of Medion, the Appointed Person found that the hearing officer had not made any material error in his approach and that he had applied the correct tests and set out his reasoning.
This latest decision suggests that even if a later trade mark comprises every element of an earlier trade mark, it does not automatically follow that the marks are similar when viewed as a whole.