FRIDAY, 30 JANUARY 2015
Greece:Counterfeit...paints!

A rather uncommon case of counterfeiting came under the radar of the Greek Financial Police. The on line portal of financial newspaper naftemporiki reports (in Greek) that approximately 7 tons of counterfeit paint were confiscated by the police together with more than 250 empty paint canisters (buckets) bearing the trademarks of well known paint producers at the premises of a paintshop in Greece. Based on the report, the owner of the shop mixed genuine paint products with other materials (this blogger simply does not want to know what and dreads on the possibility of health risks) and then filled empty canisters bearing the trademarks of producers of genuine goods.

The potential profit from this activity is estimated at 19.000 EUR, which may not be the size of organized counterfeit crime but makes it worth someone's while. Moreover, there is the issue of unaccounted for VAT to the detriment of Greek State proceeds.  

Posted by: Nikos Prentoulis @ 16.41
Tags: Greece, counterfeits, paints, colours, financial police, seizure, confiscation ,
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FRIDAY, 30 JANUARY 2015
Poland: troubles with old trade marks
Transformation and economic changes in Poland after 1990 left a lot of problems in the case of trademarks that belong to the state-owned enterprises. The case described below is one of many examples.

PPHU HERBAPOL spółka z ograniczoną odpowiedzialnością requested the Polish Patent Office to invalidate the word-figurative trade mark Herbapol Wrocław R-179901 that was registered for Wrocławskie Zakłady Zielarskie HERBAPOL Spółka Akcyjna for goods in Classes 3, 5, 30, 31 and 32. PPHU HERBAPOL argued that the questioned registration was applied for in bad faith and this sign is similar or identical to registration owned by PPHU HERBAPOL such as the word trade mark HERBAPOL R-00312 or the word-figurative trade mark HERBAPOL R-00356. PPHU HERBAPOL stressed that the goods are identical, are intended for the same consumers, on the same territory. The Company argued that according to the provisions of the Polish Industrial Property Law and regulations governing the use of Herbapol collective trade marks, the right to use this sign should be entitled only to PPHU HERBAPOL, and all affiliated entities, which also include HERBAPOL S.A., and the registration of an individual trade mark identical or similar to a collective trade mark Herbapol may only be made for the benefit of the PPHU HERBAPOL. Therefore, HERBAPOL S.A. obtained the right of protection "illegally". It was emphasized that the right for the protection of the collective trade mark does not grant exclusivity to use the sign to one entity, because it is reserved for the organization with the right to its use by the organization and all of its affiliated entities. HERBAPOL S.A. is both a shareholder of PPHU HERBAPOL and the entity authorized to use the collective trade mark. Therefore, HERBAPOL S.A. was fully aware that its trade mark application was made without the knowledge and consent of PPHU HERBAPOL, which infringed PPHU HERBAPOL's right of protection for the collective trade marks.

HERBAPOL S.A. requested the PPO to dismiss the case. The Company presented a genealogy of the transformation of the state owned company that was originally the sole owner of the Herbapol trade mark, and argued that PPHU HERBAPOL derives its priority to Herbapol sign "secondarily". In this context, and bearing in mind that PPHU HERBAPOL does use the sign and not produce any goods under the name Herbapol, PPHU HERBAPOL is not the legal successor of the state enterprise. Consequently, HERBAPOL S.A. argued that PPHU HERBAPOL lacks of legal interest in seeking the invalidation of the disputed right of protection, and PPHU HERBAPOL did not object to the use of questioned sign in five years.

The Polish Patent Office invalidated the right of protection. The PPO decided inter alia that compared signs are similar in all three aspects, and the goods are identical or similar. HERBAPOL S.A. filed a complaint against this decision and argued that currently, between all companies included in PPHU HERBAPOL, there are no capital ties, on the contrary, they are in the classic competitive relationship, therefore as of the 1993/1994 they all began to use geographical designation like Wrocław, Poznań or Lublin alongside the sign Herbapol. Since then, HERBAPOL S.A. incurred large spending on advertising of its products thus the recipients of its products were able to distinguish the mark from other manufacturers that used the sign Herbapol. For these reasons, the HERBAPOL S.A. believed that its designation obtained independent and individual market position. HERBAPOL S.A. also argued that it has acquried the right to use Herbapol sign before PPHU HERBAPOL, because since 1959, it has used the word Herbapol in the company name. The state owned company Zjednoczenie Przemysłu Zielarskiego "Herbapol" in Warsaw applied for the right of protection for Herbapol trade mark in 1974, however in 1982 the company was dissolved and in its place another entity was created. Therefore, the right of protection has expired in 1984. PPHU HERBAPOL was founded in 1989 and in the same year the Company requested the Polish Patent Office to change the owner of all Herbapol trade marks in the Register kept by the PPO. From the foregoing, HERBAPOL S.A. brought the conclusion that the right to Herbapol sign should not derived by PPHU HERBAPOL from the "material priority", but its right has kind of secondary nature.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 June 2014 case file VI SA/Wa 101/13 dimissed the complaint and ruled that because this case involved a collective trade mark, the Court had to indicate the nature of this type of sign. The main conclusion is that the right to collective trade mark belongs to the organization, but the organization's affiliated entities are entitled to use the sign. The VAC cited recent judgment of the Supreme Administrative Court of 27 June 2007 case file II GSK 83/07 in which the SAC held that a collective trade mark serves many entities, although the right of protection is granted for a specific organization. The right to a trade and the right to use it separated. This institution should be distinguished from the joint right of protection, which is related to an individual trade mark, where such sign is intended for concurrent use by several undertakings who have jointly applied for the protection. In other words, the right of protection for a collective trademark does not grant exclusive rights to the use the sign by a single entity, but it's owned by one organization, and it can be used by many entities associated in this organization. However, only the organization may be awarded the right, sell it, waive this right or request a change in the Register. Therefore, HERBAPOL S.A. infringed on registrations owned by PPHU HERBAPOL. With regard to the argument that PPHU HERBAPOL was not genuinely using the Herbapol collective trade mark, the Court noted that the organization may independently use the collective trade mark, however, the use of such sign only by entities affiliated also fulfills the conditions of trade mark use.

HERBAPOL S.A. filed a cassation complaint. The Supreme Administrative Court in its judgment of 9 January 2015 case file II GSK 2062/13 dismissed it.
Posted by: Tomasz Rychlicki @ 10.18
Tags: Polish law, trade mark co-ownership, collective trade mark, Supreme Administrative Court,
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WEDNESDAY, 28 JANUARY 2015
Once upon a time in General Court: tale of an heraldic fight

In the not so far away kingdom of OHIM, two brave German knights were fighting the (lost) battle of the likelihood of confusion on the battle ground known as Case T-193/12:

 MIP Metro Group Intellectual Property GmbH & Co. KG - Düsseldorf applicant

Holsten-Brauerei AG - Hamburg Opponent

 Image not found

 Image not found

Class 33 ‘beers’

Class 33 ’beers’

The General Court confirmed the findings of the Board of Appeal : there is a risk of confusion for identical goods, the signs are visually similar, phonetically identical for consumers (-tavern clients without a doubt-) mentioning only the letter "h". The signs also had  a conceptual similarity: despite the  differences  (a crown in the contested CTM and a knight on a horse for the earlier mark) they both referred to “heraldic symbols”.

 The court dismissed the applicant’s argument  alleging that the relevant consumer is in the habit of seeing heraldic motifs  to describe beers in Germany. This habit tends rather to enhance the likelihood of confusion:  an even greater attention to the figure attached to the blazon,  and in this case, the same letter "h". The BoA did not attach more importance to any "dominant element", it is sufficient to say that the overall impression of the signs is  very similar to find a likelihood of confusion according to Article 8(1) b) CTMR.

Posted by: Laetitia Lagarde @ 14.28
Tags: General Court, H, heraldic symbols, beer,
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TUESDAY, 27 JANUARY 2015
Greek TM Office: Consistency and "CARE"

The English word "CARE" is known to and understood by Greek consumers of Class 3 and 5 products. This has been the, correct in this blogger's view, position of the Greek TM Office when addressing absolute or relative grounds of refusal issues for trademark applications incorporating the word. Under this prism, marks such as the one below for classic Class 5 and 10 products have been rejected.

 

 

 

In other circumstances, the Greek TM Office seemed less stict (and perhaps less consistent), probably thinking that rather trivila device elements, or greek words in latin characters (hygeia=health) will do the distincitveness trick.

  

However, for word marks, there appeared to be no compromise. So "DIABETES CARE DIAGNOSTICS" was rejected in Class 10. Again this looks correct and, again, a recent example to the contrary:CAREΑΛΟΙΦΗ (=care ointment) was accepted for "non pharmaceutical ointments" in Class 3. This blogger sees nothing unusual in the presentation of this word mark and, no offense to its owner, is a bit puzzled by its acceptance. Then again, he may just over-care about consistency. 

Posted by: Nikos Prentoulis @ 21.09
Tags: Greece, trademark office, absolute grounds, care, consistency, equality,
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TUESDAY, 27 JANUARY 2015
Rihanna victory in Topshop t-shirt claim

On January 22, the Court of Appeal for England and Wales issued its much-anticipated decision in Fenty v Arcadia, confirming the law on image rights, merchandising, and endorsement in the UK.

The case arose from a Topshop t-shirt bearing an image of Rihanna taken during filming of the video for her 2011 smash hit single ‘We Found Love’ (featuring Calvin Harris).  Topshop had lawfully acquired the image; but the shirt was produced without Rihanna’s consent.  The singer claimed that use of the image created a misrepresentation that the shirt was endorsed or authorised by her; this amounted to false endorsement, a type of ‘extended passing off’. 

In 2013, the High Court found in favour of Rihanna, deciding that a substantial number of consumers would buy the shirt due to the false belief that it was officially endorsed.  This was damaging to Rihanna’s goodwill, causing loss of sales in her official merchandise and representing loss of control over her reputation “in the fashion sphere".

The appeal by Topshop, and resulting judgment, focused on four points:

1. Merchandising and endorsement are different

Character merchandising involves exploiting the name or likeness of famous characters (real or fictional).  Endorsement involves approval of goods (explicitly or impliedly), by association. 

A celebrity’s name or image on an item, will not necessarily cause the public to assume it has been endorsed (e.g. Princess Diana’s image on a porcelain plate, or Elvis Presley’s name on toiletries).  Each case will be decided on its facts.

2.  A garment bearing a celebrity’s image is not automatically passing off

The sale of garments bearing images of Rihanna does not, of itself, amount to passing off. However, use of a particular image may give rise to a mistaken belief that those goods have been authorised; this is what the law seeks to prohibit.

3.  Assessment from the consumers’ perspective

There must be the likelihood of confusion of a substantial number of consumers (but not all of them).  It was relevant to look at potential customers who were Rihanna fans, prepared to shop in Topshop, and take into account Topshop’s publicity of its previous connection with Rihanna.

4.  Procedural / evidential issues in Rihanna’s case (this was effectively dismissed)

The court upheld the finding of false endorsement, but this was based on specific circumstances: past public association between the parties, and features of the image itself.  In addition, one judge stated that this case itself was ‘borderline’.

Further, the judgment confirms that there continues to be no ‘personality / image right’, in the UK.  A celebrity seeking to control their image must therefore rely upon some other cause of action, such as contract, breach of confidence, copyright or, as here, passing off.

Nevertheless, brands may now be more cautious about using famous faces to sell their products.  Retailers using celebrity images need to be aware that anything wrongly suggesting official endorsement could lead to legal action.  This point may be driven home when damages, claimed at $5 million (£3.3m), are finally decided.

This blogpost was kindly prepared for Class 46 by Dorothea Thompson (Bray & Krais solicitors, London)

Posted by: Jeremy Phillips @ 17.48
Tags: Passing off, Rihanna,
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TUESDAY, 27 JANUARY 2015
Spain: Community Manager is a Spanish trademark

A curious ruling of 10 December 2014 by the Tribunal Superior de Justicia de Madrid (sitting as the Court dealing with appeals against decisions from the Spanish Patent and Trademark Office "Spanish PTO") has been recently published regarding the trademark enforcement and registration of English terms in the Spanish jurisdiction. On 5 August 2011, Todo Espacio Publicidad S.L. filed the Spanish trademark application no. 2994650 for INSTITUTO COMMUNITY MANAGER (fig.) for "education; providing of training; entertainment; sporting and cultural activities" in Nice class 41. After its advertising on the official gazette, Mr. Larrea filed an opposition grounded on likelihood of confusion with 2 prior registrations: a trade name no. 294866 and a trademark no. 2908055 for COMMUNITY MANAGERS 2009.

   
   
 

Following the opposition, the trademark application for INSTITUTO COMMUNITY MANAGER (fig.) was refused. The applicant appealed to no avail and, upon receiving a confirmation of the appeal by the Spanish PTO in 01 February 2012, the applicant persisted and filed a new appeal before the Tribunal Superior de Justicia de Madrid. Among its arguments, Todo Espacio Publicidad S.L. defended that "community manager" was generic for certain services included in the application and could not be monopolized by the opponent. The trademark application included the term "instituto", so it could not be considered absolutely devoid of distinctive character. That was the B-side of its argumentation.

Following the opposition, the trademark application for INSTITUTO COMMUNITY MANAGER (fig.) was refused. The applicant appealed to no avail and, upon receiving a confirmation of the appeal by the Spanish PTO in 01 February 2012, the applicant persisted and filed a new appeal before the Tribunal Superior de Justicia de Madrid. Among its arguments, Todo Espacio Publicidad S.L. defended that "community manager" was generic for certain services included in the application and could not be monopolized by the opponent. The trademark application included the term "instituto", so it could not be considered absolutely devoid of distinctive character. That was the B-side of its argumentation.

Under the Spanish procedural law, certain facts do not need to be evidenced. In particular, those considered notorious or well-known by the society. Pursuant to this rule, the Judge may decide (in non-specialized products) as if she were a consumer. The application of this rule to the instant case led to the Judge to declare that "community manager" has not been adopted by the Spanish language, and that the Spanish consumer is not versed in the English language. Therefore the argument by which the expression "community manager" was generic or descriptive of the services "education; providing of training; entertainment; sporting and cultural activities" failed. The refusal of the trademark application no. 2994650 for INSTITUTO COMMUNITY MANAGER (fig.) was in consequence confirmed by the Court.  

This ruling provides a few teachings. First, Spanish Courts might not be the most knowledgeable institutions regarding new business models in the social media and the information society. Second, and more importantly, claimant may always want to support its arguments with documented evidence if there is room for that, and don’t let the decision to be taken by the Court on its (always mysterious) consumer's feet.      

Posted by: Fidel Porcuna @ 17.00
Tags: English terms ,
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TUESDAY, 27 JANUARY 2015
General Court: Kenzo v. Kenzo

In Cases T-322/13 and T-393/12, CTM applicant Mr Kenzo Tsujimoto (resident of Japan) applied for the word mark KENZO for the following goods and services:

Class 33: Wine; alcoholic beverages of fruit; western liquors (in general)

Class 35: ‘Marketing research on wine; providing information on wine sales; wine advertising and publicity services; import-export agencies for wine; retail services or wholesale services for wine’;

Class 41: ‘Providing electronic publications on wine; providing electronic publications on sommelier certification; publication of books on wine; publication of books on sommelier certification; providing facilities for educational training on wine; providing facilities for educational training on sommelier certification’;

Class 43: ‘Providing foods and beverages; providing temporary accommodation

KENZO (France) filed an opposition on the basis of earlier CTM KENZO registered for goods Classes 3, 18 and 25 on the grounds of article 8(5) CTMR.

According to the Board, the 3 cumulative conditions for the application of Article 8(5) were met:

-      The marks at issue were identical.

-      The opponent filed sufficient amount of evidence to demonstrate the reputation of the earlier mark

-      It seemed highly likely that the mark applied for, for the use of which no due cause had been demonstrated, would ride on the coat-tails of the earlier trade mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image.

In particular, regarding the nature of and degree of closeness between the goods concerned, it was clear from the evidence filed  that the opponent largely placed its products at the high end of the market, where the targeted consumer has a more sophisticated taste than the average consumer, and that the goods covered by the mark applied for included high-quality wines and cognac intended for equally sophisticated consumers. Thus, the BoA rightly inferred from those circumstances that it was  highly possible to establish a link between those goods, since they all projected images of luxury, glamour, good taste, success, and social .

      In addition, the opponent produced evidence before the Board of Appeal that advertisements for goods covered by the earlier trade mark had been published in prestigious magazines (such as Vogue and Vanity Fair) and that goods had been sold under the earlier trade mark in prestigious shops (such as Harrods). Therefore, the BoA rightly found that the trade mark in question had an ‘undisputable allure’, which could be transferred to other luxury goods and, by extension, to the goods covered by the mark applied for, such as cognac, champagne or wine, which can be of high quality.

The Court therefore upheld the assessment that the consumer would establish a link: services falling within the wine sector may, like clothing, perfumes and cosmetics, be part of the luxury sector. In addition, it is possible that proprietors of trade marks for cosmetics may also be active in the alcoholic drinks sector. That is so, for example, in the case of the proprietor of the trade mark DAVIDOFF, which uses that trade mark to distribute not only gentlemen’s cosmetics but also cognac

The GC, like the BoA, therefore concluded that there was a risk that the use of the mark applied for would take unfair advantage of the reputation of the earlier trade mark for the purposes of Article 8(5).

  

The applicant claimed before the Court to have argued before OHIM that he merely wished to use his forename — Kenzo — for a certain range of goods and that this constituted due cause. However the CTMR does not provide any unconditional right to register a surname as a CTM (see judgment of 25 May 2011 in Case T‑397/09 Prinz von Hannover v OHIM (Representation of a coat of arms) let alone to register a forename as a trade mark. Consequently, the fact that the applicant’s forename is Kenzo is not enough to constitute due cause for the use of the mark applied for, for the purpose of article 8(5) CTMR.

 

Posted by: Laetitia Lagarde @ 12.32
Tags: General Court, kenzo, right to name, spirits, cosmetics, reputation, article 8(5),
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