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Wella v Alberto-Culver

SHAPER v FUNKY SHAPER

In   Wella Corporation v Alberto-Culver Company  [2011] EWHC 3558 (Ch), the UK High Court upheld the decision of a UK Intellectual Property Office Hearing Officer who rejected the application by Wella Corporation to invalidate the Alberto-Culver Company UK Trade Mark Registration No. 2491161 FUNKY SHAPER.

Judge Birss QC held that the Hearing Officer correctly decided that Wella’s earlier registered Community Trade Mark No. 55608 for SHAPER lacked all distinctive character as the evidence submitted failed to show that the mark had acquired distinctiveness through use at the date the opposed mark was filed. As this was not a finding of invalidity, the Hearing Officer had jurisdiction to rule on the matter.

The evidence of use indicated that the mark SHAPER was effectively a sub-brand for the well-known hair care brand Sebastian. Accordingly, the Hearing Officer held that the consumer would see the mark SHAPER as describing a particular type of shaping product originating from the Sebastian brand, a conclusion that the court also supported.

Alberto presented evidence to demonstrate that other traders were using the word “shaper” descriptively. This fact, which was not disputed by Wella, is what led to the finding that Wella’s mark had low or very low distinctiveness. On this basis, Judge Birss QC held that it was open to the Hearing Officer to rule that the mark lacked all distinctiveness. Accordingly, the first ground of Wella’s appeal, that a finding that SHAPER was not distinctive was analogous to the suggestion that its mark was invalid, and that invalidity was not open to the Hearing Officer as a matter of law, was dismissed.

Since neither SHAPER nor FUNKY were distinctive, Wella’s second ground of appeal that a finding that FUNKY was descriptive and laudatory invalidated FUNKY SHAPER was also dismissed. The Court judged that the Hearing Officer had rightly concluded that neither mark could be considered an indication of origin and, therefore, there was no likelihood of confusion.

Although the case illustrates the difficulties in proving acquired distinctiveness, an interesting aspect of the decision is that a mark containing the whole of an earlier registered mark was held to be registrable. Wella was unable to successfully challenge Alberto’s mark on the grounds that the subsequent mark was non-distinctive or descriptive because it would be equivalent to Wella admitting that its registration for SHAPER had the same deficiencies. As a result, Wella was forced to rely on the acquired distinctiveness of its own mark. However, if the distinctiveness of an earlier mark is found lacking at the time of the opposed mark’s application, the likelihood of confusion is far less, thereby increasing the likelihood that the challenge will be unsuccessful, as it turned out here.

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Changes to US Patent Law

US patent law has recently received a major overhaul with the signing of the “America Invents” Act by President Obama on 16 September 2011. These changes will be phased in in the next eighteen months and include the following:

  • A move from “First to Invent” to “ First Inventor to File” moving the US to a middle ground between the “First to File” system used in most territories around the world, including the UK and Europe, and the previous position of the US.
  • Major changes to what disclosures are taken into account when assessing novelty, moving away from the previous position where certain disclosures outside the US were not considered (such as offer for sale or use, for example) to a more equitable position for foreign applicants where use or sale, for example, anywhere can currently deprive patent claims of novelty.
  • A “Post-Grant Review” system is to be introduced implementing an effective opposition procedure for the first nine months from grant a US patent, similar to the opposition procedure for European patent applications.
  • The introduction of “Micro-entity status”, for higher education institutions, individuals and small businesses who fulfil the new criteria, for whom the official fees will be halved again from those of small entities for a 75% overall reduction.
  • The lack of a best method of implementing an invention is now only grounds for rejection at the examination stage, rather than throughout the patent’s life.
  • It is now possible to accelerate an application using “Prioritised Examination” and the payment of a fee (proposed to be approximately $4800).

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