Now in its second year, Class 46 is dedicated to European trade mark
law and practice. This weblog is written by a team of enthusiasts who
want to spread the word and share their thoughts with others.
MONDAY, 8 FEBRUARY 2010 Polish Sejm wants new logo
Chancellery of the Sejm (the lower house of the Polish parliament) announced an open competition for the official logo of the Sejm. The main prize in this competition is 5000 PLN. The winning logo will be used in publications and information materials of the Sejm.
Posted by: Tomasz Rychlicki @ 15.22 Tags: Poland, logo, Sejm,
MONDAY, 8 FEBRUARY 2010 Changes to OHIM's Manual of Trade Mark Practice: usually no similarity between restaurant services and drinks
OHIM's Manual of Trade Mark Practice has been amended in January 2010. The changes concern the assessment of similarity of signs and similarity of products.
The knowledge of foreign languages by the relevant public has been "improved", so to speak (i.e. you cannot simply assume that people do not speak foreign languages and do not understand them, depending on the relevant public). The pronounciation (or lack thereof) of symbols has also been "clarified", although clarification may be the wrong word:
In other words, whether or not a given symbol is pronounceable depends of the type of symbol in question, how the symbol is featured, and the manner in which it is combined with other elements of the sign.
To be fair, that's the case law, so what's OHIM to do?
Further, the similarity of restaurant services and drinks was re-stated:
In certain countries producers of certain drinks (such as breweries in Spain and Germany) traditionally have their own restaurants. Whenever this occurs, be it in respect of beer or any other drink, an average degree of similarity is to be found.
In the rest of the cases only a very remote similarity is to found. Apart from being obviously different in nature serve different purposes, they are usually provided by different undertakings, and are not in competition with, nor complementary to each other. Drinks may be consumed at restaurants, but consumers, more than merely purchasing a drink, are asking to be served one. There is a considerable difference between the two situations; a difference that is furthermore reflected in the respective price.
Therefore, notwithstanding the existence of certain links, on balance, it is that there are not enough similarities between drinks, on one hand, and restaurant services, on the other, to give rise confusion unless exceptional circumstances concur, such as when the signs are identical or almost so, and there is at least a certain level of recognition of the trade mark in question among the relevant public.
SUNDAY, 7 FEBRUARY 2010 Genuine use in one Member State: the HPO speaks out
Dr Ákos Süle (attorney at Law, Bogsch & Partners) informs Class 46 that the Hungarian Patent Office (HPO) published a statement on 5 February 2010 (full English version available here) on the geographical scope of the use requirement of CTMs. The HPO essentially seems to support the standpoint of BOIP regarding the decision in ONEL/OMEL and suggests that use in a single Member State cannot serve as a basis for genuine use of a Community Trade Mark. Part of the statement may be also understood as a polite and diplomatic response to what has been regarded by some as a somewhat intrusive and lecturing statement on the part of OHIM.
Dr Süle comments that it would be reasonable to expect that this HPO statement also indicates a change of practice of the HPO, to require CTM holders to prove that their marks have been used in several Member States. The geographical use requirement of CTMs stands under increasing challenge since the enlargement of the EU from 15 to 25 Members in 2004 (the figure now stands at 27). The statement of the HPO is a very serious step towards change in the current system and one should not be surprised if more national offices adopt the new approach.
FRIDAY, 5 FEBRUARY 2010 The Transformers take over the General Court: ENERCON confusingly similar to TRANSFORMERS ENERGON
In its judgment delivered on February
3, 2010, in case T-472/07, the General Court upheld OHIM’s Opposition Division
and Board of Appeal decisions refusing the registration as a CTM of the word
ENERCON. The mark was filed in 2003 by Enercon Gmbh, in connection with goods
in, inter alia, Classes 16, 18, 24, 25, 28 and 32, but was rejected following an
opposition by Hasbro Inc. Hasbro claimed likelihood of confusion with its
earlier word CTM “TRANSFORMERS ENERGON” in connection with identical products
in the very same classes. The juicy bit of the General Court’s judgment reads:
28 In the context of
consideration of the likelihood of confusion, assessment of the similarity
between two marks means more than taking just one component of a composite
trade mark and comparing it with another mark. On the contrary, the comparison
must be made by examining each of the marks in question as a whole, which does
not mean that the overall impression conveyed to the relevant public by a
composite trade mark may not, in certain circumstances, be dominated by one or
more of its components (Case C-334/05 P OHIM v Shaker [2007] ECR
I‑4529, paragraph 41).
……………..
32 In this connection,
whilst it is true that the ‘transformers’ element is the first part of the sign
and is longer than the ‘energon’ element, the word ‘energon’ cannot be regarded
as playing only a marginal part in the overall impression produced by the
earlier mark. To the contrary, that element plays a significant part in the
overall impression produced by the earlier trade mark and consequently cannot
be ignored. As the Board of Appeal pointed out in paragraph 19 of the contested
decision, both of the elements of which the earlier mark consists are
distinctive in character, neither being more dominant or distinctive than the
other in the overall impression created by the earlier mark.
34 Furthermore, the
applicant cannot argue that the word ‘transformers’ is the dominant element of
the earlier trade mark because of the font and its larger size compared to that
of the ‘energon’ element in the way in which that trade mark is used. It must
be pointed out that the consideration of the similarity of the trade marks at
issue takes into account those marks as a whole, as they are registered or
applied for [something we tend to forget all too often]. A word mark is a mark consisting entirely of letters, of words or
of associations of words, written in printed characters in normal font, without
any specific graphic element. The protection which results from registration of
a word mark concerns the word mentioned in the application for registration and
not the specific graphic or stylistic elements accompanying that mark (see, to
that effect, Case T-211/03 Faber Chimica v OHIM – Nabersa (Faber)
[2005] ECR II-1297, paragraphs 33 and 37; judgment of 13 February 2007 in Case
T-353/04 Ontex v OHIM – Curon Medical (CURON), not published in
the ECR, paragraph 74; and judgment of 22 May 2008 in Case T-254/06 Radio
Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the
ECR, paragraph 43). It is therefore not appropriate to take into account, for
the purposes of the consideration of the similarity between the trade marks at
issue, the font and size in which the ‘transformers’ element of the earlier
word sign may be presented.
With Greek case law in mind, this Class46 member thinks the outcome of the opposition might have been different in the aforementioned southern part of the Union.
FRIDAY, 5 FEBRUARY 2010 The "ONEL case" - more rumours
More rumours surrounding the ONEL case (see our earlier posts here and here). World Trademark Review yesterday reported that the "Onel mystery grows as complainant speaks out on controversial ruling" (citing MARQUES statement on the case "... BOIP opposition decision in question contradicts the uniform interpretation of the concept of genuine use in the EU") and today things seem appear to become even more intriguing with rumours circulating that BOIP director may have known undisclosed Onel facts (again reported in World Trademark Review).
What are our readers' views on this case? Is the ONEL case just a test of the CTM laws , as some suspect, or should such rumours prudently be ignored?
FRIDAY, 5 FEBRUARY 2010 Poland: information on licensing for Euro 2012 trade marks
Information for entrepreneurs interested in obtaining licenses for the official trade marks and industrial designs related to the Euro 2012 football tournament has been published at the website of PL.2012 - the coordinator and overseer of preparation undertakings for Euro 2012 in Poland. Unfortunately, the post is available only in Polish and there is a problem with dead links to PDF files with the licensing guidance. However, all inquiring persons may find other interesting media quide, prepared in a PDF file that was published by the UEFA.
THURSDAY, 4 FEBRUARY 2010 Worst UDRP decision of 2009?
The UDRP Wall of Shame has made it its mission to publicly criticize what they perceive to be the worst decisions by dispute resolution providers under the ICANN's Uniform Dispute Resolution Policy (UDRP). They shortlisted 10 nominees, out of which the attendees of the T.R.A.F.F.I.C. conference in Las Vegas - a conference for people trafficking in domain names - chose the "winner".
They chose WIPO's D2009-0036 - lomalinda.org/net as the worst UDRP decision in 2009. The panelist had transferred the domain name to a local hospital, although it is a geographical name, and, in the respondent's view, no trade mark rights can be established in a geographical name. The panelist argued that in this case, things were different, because
the city of Loma Linda derived its name from the hospital, not vice
versa:
Depending on the goods and services offered, as a general rule
geographic names may not be a proper basis for asserting trademark
rights. However, the current situation is highly unusual. The city of
Loma Linda was named after the long standing medical and educational
institutions which are the predecessors and affiliates of Complainants.
Therefore, the Panel finds that for purposes of this proceeding
secondary meaning does exist and is a viable basis for asserting
protectable common law rights in the LOMA LINDA Mark.
The facts were apparently as follows:
The city that is now called Loma Linda was first called Mound City.
Complainants trace their origin to 1905 when the Southern California
Conference of Seventh-Day Adventists opened the “Loma Linda
Sanitarium”. After 1908, the sanitarium included a post office in its
main building, indicating “Loma Linda” as the postal address for the
sanitarium’s community.
Loma Linda University began in 1906, originally called the Loma
Linda College of Evangelists. The Loma Linda Sanitarium and the college
were consolidated in 1910. The Seventh-Day Adventists also opened the
Loma Linda Hospital in 1913.
The City of Loma Linda was incorporated in 1970, sixty-five (65) years
after the predecessors of Complainants began using the name. In short,
the city was named after Complainants.
Now, whether the panelist's reasoning is convincing is a question I leave up to the reader. The more fundamental point is this: in 2009, WIPO and NAF, the dominant dispute resolution service providers under the UDRP, decided roughly 3,700 cases under the UDRP (about 9% less than 2008, btw). Now, when any dispute resolution provider, including a state court, decides this many cases, some errors will be made. You cannot successfully criticize the dispute resolution provider by pointing out a few wrongly decided cases. You need to show a pattern, which UDRP Wall of Shame fails to do.
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