In Short Intellectual Property

By Charters Macdonald-Brown, Simon Chalkley and John Reddington

GossIP

NEW APPEAL COURT JUDGE FOR PATENTS COURT

High Court judge Mr Justice Jacob will take up the position of appeal court judge for the patents court on 17 October 2003, following the retirement of Lord Justice Aldous.

PATENTS COUNTY COURT MOVE

The Patents County Court with its Judge, His Honour Judge Michael Fysh Q.C., has moved to: Field House, 15-25 Breams Buildings, London, EC4A 1DZ (Clerk: Miss Sarah Cox: Tel. 020 7073 4251).

HEARING ON A PRELIMINARY ISSUE

Inter Lotto Limited -v- Camelot Group plc

A claim for trade mark infringement and passing off by Inter Lotto, a lottery operator, against Camelot Group plc, the operator of the National Lottery, has given rise to a controversial decision, following a hearing on a preliminary issue concerning the assessment of competing registered and unregistered trade mark rights.

Camelot Group plc offers a National Lottery game under the HOTPICKS trade mark. It applied to register the mark on 17 October 2001, and launched the game in April 2002. Inter Lotto Limited, also a lottery operator, claimed to have commenced use of the trade mark HOT PICK in August 2001, and that Camelot's use of the HOTPICKS trade mark from April 2002 onwards constituted an act of passing off. The preliminary issue was whether Inter Lotto was entitled to rely on all use of its trade mark from August 2001 to April 2002 to establish its claim in passing off, or whether its rights should be assessed as at the date of Camelot's application to register its mark, i.e. 17 October 2001.

It was not disputed that in general, whether or not the claimant enjoys passing off rights is a matter to be assessed as at the date when the defendant's alleged act of passing off began. Inter Lotto claimed that this general rule applied, and that Camelot's application to register its trade mark had no bearing on Inter Lotto's right to sue for passing off, relying on Section 2(2) Trade Marks Act 1994 ("nothing in this Act affects the law relating to passing off") as authority for this assertion.

Camelot's position was that unless Inter Lotto could establish that, as at the time of Camelot's trade mark application, Inter Lotto enjoyed passing off rights in its trade mark sufficient to prevent the use of Camelot's mark, and hence its registration, pursuant to section 5(4) Trade Marks Act, all Inter Lotto's use after that date was infringing and could not be used to support its passing off claim.

Mr Justice Laddie described Camelot's position as either (a) the assertion that registration of a trade mark carried a right to use the mark which could not be restrained under the law of passing off or (b) the defence that, because Inter Lotto's use of its mark after 17 October 2001 was unlawful, it was incapable of giving rise to any goodwill and reputation. The latter was pleaded by Camelot.

It seems that the Judge's view was that this defence must rely on the ex turpi causa principle: Inter Lotto could only be prevented from relying on its use of HOT PICK subsequent to Camelot's application to register HOTPICKS if its behaviour had been so "heinous" that the court would refuse to assist. For example, where rights had been built up fraudulently; in the present case, that trade mark infringement without more, did not amount to "wrongdoing of such a level of depravity as to engage the doctrine". Accordingly, the judge decided that Inter Lotto's passing off right should be assessed at the date when Camelot started using its mark.

This decision does not seem to take account of the role of the Trade Marks Harmonisation Directive and Trade Marks Act 1994 in regulating the coexistence of common law and registered rights in the EU. Passing off rights come into existence as a question of fact. Section 5(4) Trade Marks Act recognises the priority of a passing off right which predates an application to register a conflicting mark. Under this provision the owner of an earlier passing off right can oppose and prevent the registration of a conflicting mark. Post registration, section 47(2)(b) provides for the removal of the trade mark from the register on the same ground.

With opposition and invalidity proceedings, passing off rights must be assessed at the date of the application to register the conflicting mark. This is not stated so clearly in the case of an earlier passing off right (in the Act labelled an "earlier right") as in the case of "earlier trade marks" (mainly registered marks) which are defined in section 6. However, section 40(3) states that "a trade mark when registered shall be registered as of the date of filing the application for registration" and section 9(3) states that the rights of the proprietor have effect from the date of registration. It follows, therefore, that any third party use which is incapable of serving as a ground for opposition under section 5(4) or for invalidity under section 47(2) must, after the date of application, constitute infringing use, unless it is saved by the section 11(3) defence of "use in the course of trade in a particular locality of an earlier right which applies only in that locality". Interestingly, for the purpose of section 11(3), the "earlier right" defence is expressly stated to be...