WEDNESDAY, 22 OCTOBER 2014
Spain: Nine Years of infringement do not prevent from action

Leo Pharma A/S, lately famous in other blogs (See the recent IPKat post on obviousness, common general knowledge andxpectation of success) is the happy star in this trademark story about who registered what first and the infinite timing for an infringement to continue to be so.

Leo Pharma A/S initiated its activity in Spain in 1993 through the Spanish company  Farmacusí S.A., which was renamed "Leo Pharma S.A." in 2005. In that year, and in 2006, Leo Pharma S.A. ("First Leo") purchased the Spanish trademarks 365730 (fig.) and 368810 (word) from Altana Pharma S.A. registered in Classes 1 and 5, for the word "Leo" and the representation of a lion, as set out below, with priority date 1960.

 

Leopharma S.L. ("Second Leo") was incorporated in Spain under such name in 2001, and run a business of distribution of pharmaceutical products. Second Leo also registered the domain name <leopharma-sl.com>.

First Leo sued Second Leo in 2010 on the ground of trademark and trade name infringement and requested, inter alia, the cessation of the company activities under the name Leopharma S.L. and its modification by substituting the word "Leo", the cancellation of the domain name <leopharma-sl.com> and the advertising of the decision. Second Leo argued that it was too late to sue on such grounds, given that nine years had passed at least since its incorporation and the commencement of its activities. Second Leo further argued that neither the previous owner or First Leo had opposed to the use of the name leopharma-sl.com during that time. In addition, in a rather creative attack, Second Leo counterclaimed the nullity of the trademarks purchased by First Leo in 2005 based on the fact that its  rights were prior to First Leo... since it only acquired trademark rights on 2005 whereas Second Leo was in play since 2001.

The Juzgado de lo Mercantil núm. 1 de Burgos (sitting as Commercial Court no. 1 of Burgos) ruled in 19 September 2011 against Second Leo and ordered this company to change its company name (as otherwise the incorporation of the whole company would be cancelled pursuant to the Additional Disposition no. 17 of the Spanish TM Law), to cancel the domain name <leopharma-sl.com>, and to cease using Leopharma in commerce. Notwithstanding, Second Leo appealed and won. The Appellate Court of Burgos sustained in 5 March 2012 that the statute of limitations was applicable against First Leo. A very interesting argument was used by the Appellate Court, by which the likelihood of confusion with First Leo's source of origin could only be established as of 2006, that is, by the time First Leo purchased the infringed marks. Therefore it was not for First Leo to pursue the actions that belonged to the assignor (Altana Pharma S.A.) of the infringed trademarks. And this assignor did not sue Second Leo, who had then used for years the name in the market.

First Leo appealed, and the Supreme Court (Decision of 15 April 2014 Leo Pharma S.A. c. Leopharma S.L.) ruled  in its favor, reversing the Appellate Court's decision and confirming the first instance decision. In Spain while it is true that the statute of limitations is five years from the date the right holder is able to sue (article 45 Spanish TM Law 17/2001), it is largely accepted by the Supreme Court [decisions of 20 January 2010 (RJ 2010 159) Fransa Clothing Company, A/S c. Dña Ramona and others, of 16 November 2010 (RJ 2010 8877) J. García Carrión, SA c. Bodegas Antaño, SA] that every single act of infringement triggers a new action, and therefore a continued infringement has a continued right to sue. There is an exception, which is the unjust delay in instituting actions, which mislead the defendant into thinking that he has acquired a legitimate right . This, unde rthe analysis of the facts, was not the case. 

Posted by: Fidel Porcuna @ 12.21
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MONDAY, 20 OCTOBER 2014
Lambretta in General Court (Part 2)

Following up on the case reported last Friday on Lambretta and "IP translator", the case T-132/12 Scooters India v OHMI was about a cancellation action for revocation for non-use of  CTM LAMBRETA for goods in Classes 6, 7 and 28, and the interpretation on the assessment of evidence before OHIM.

The applicant appealed to the GC  because the Board of Appeal examined the evidence submitted to it in isolation and not in conjunction with the evidence already provided to the Cancellation Division, inter alia the statement of Mr W., the President of the Lambretta Club of Great Britain.

In its brief to the BoA, the applicant submitted that the documents provided had been assessed in an overly harsh way, ‘given that the previous evidence was filed under an explanatory witness statement of [Mr W.]’. That submission clearly showed that the applicant continued to rely, before the BoA on the evidence previously provided and, in particular, on Mr W.’s statement.

After examining the admissibility of the new evidence submitted by the two parties before it, the Board of Appeal exclusively set out and assessed that new evidence. By contrast, it did not even mention the evidence previously submitted to the Cancellation Division. Furthermore, the Board of Appeal did not, in general terms, adopt the assessment made by the Cancellation Division.

Thus the General Court upheld the first complaint put forward by the applicant and held that the Board of Appeal infringed its obligation to carry out a global assessment which took into account all the relevant factors of the particular case. Consequently, contrary to what OHIM and Brandconcern maintained, the applicant was entitled to put forward before the Court that evidence, as well as the complaint alleging that the Board of Appeal failed to take it into account. The GC annulled the contested decision of the BoA.

Posted by: Laetitia Lagarde @ 18.22
Tags: General Court, Lambretta, revocation for non-use, assessment evidence, OHIM,
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MONDAY, 20 OCTOBER 2014
Tripp Trapp ruling on 3D product marks

The Court of Justice of the European Union (CJEU) recently gave a ruling in Case C-205/13 Hauck v Stokke and others that went into some detail concerning the manner in which the three exclusionary indents to Article 3(1)(e) of the Trade Mark Directive must be applied when asking whether a sign consisting of the three-dimensional shape of a product is excluded from registrability or, if registered, has been invalidly registered. The three-dimensional mark in this case was the popular and commercially successful Tripp Trapp children's feeding chair, illustrated on the right.

Considerable guidance on this ruling can be found in a special report written by MARQUES member Henning Hartwig (Bardehle Pagenberg), which you can read here.

Posted by: Jeremy Phillips @ 17.08
Tags: CJEU ruling, 3D marks,
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MONDAY, 20 OCTOBER 2014
OHIM users: are you satisfied?

MARQUES is delighted to learn from its friends in the Office for Harmonisation in the Internal Market (OHIM) that they have launched their User Satisfaction Survey for 2014.  The survey covers a wide range of issues and topics, and can be completed in any one of the five official languages: English, French, German, Italian and Spanish.  Naturally the results will be published on the OHIM website and we expect that we will hear all about them -- particularly in the event that they are positive!

Illustration, right: the Rolling Stones couldn't get any satisfaction -- but that was before Community trade marks were invented

Users of OHIM's services who have done business with that organisation during 2014 will receive an email with a link to their own personal web-based questionnaire [Goodness! Does this mean that individual responses can be identified? We think not, since the survey is said to be both confidential and compliant with EU data protection legislation ...].  However, you have to be quick: the deadline for the receipt of responses is 31 October 2014, which is only eleven days away.  Go for it!

Posted by: Jeremy Phillips @ 14.18
Tags: OHIM user survey,
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MONDAY, 20 OCTOBER 2014
ITALY: ENOUGH NOW! Prior unregistered sign as valid basis for opposition

First decisions of the Italian Opposition Division and Appeals Board holding that the partial renown of a prior, unregistered, sign is sufficient to successfully oppose Italian trademark applications - Some guidance from the Italian PTO and Appeals Board on the concept of “well-known signs” as a valid basis for opposition in Italy.

                              

 

With its decision of 23 June 2014, the Italian PTO rejected the Italian trademark application MO BAST! (fig.) (meaning ENOUGH NOW!) on the basis of an earlier well-known name: contrary to the first Opposition Division decision issued on the notion of “well-known” sign (reversed in appeal) it was now held to be sufficient that the prior sign is only “relatively” well-known, i.e. amongst a specific consumer range only.

Background

Contrary to the system that is followed by the OHIM and many EU countries, an opposition in Italy can be based, besides on earlier trademarks in force in Italy, also on certain non-registered rights failing prior consent to register them as trademarks, namely:

  • § image rights,
  • § personal name other than the applicant’s name if its use in the trademark may harm the reputation of the person entitled to bear the name,
  • § well-known personal names,
  • § well-known signs used in the artistic, literary, scientific, political or sporting fields, and
  • § well-known names or initials or characteristic emblems of events and of non-profit entities.

(see Article 8 of the Italian IP Code, and Article 8 (3) with reference to well-known names and signs).

In the past, the Italian case law has clarified that the above list is a non-exhaustive list and has adopted a rather broad interpretation of the concept of a “well-known” sign under Article 8 (3). By way of example, the Italian Courts have recognised the title of a well-known movie, the Italian translation of a series, “James Bond agent 007” and the emblem of a political party as being well-known signs used in the field of art, literature and politics, respectively.

Recently, the Italian PTO and the Appeals Board have had the opportunity to pronounce themselves in opposition proceedings based on Article 8(3) and on the extent of renown necessary to qualify a sign as “well-known”.

 

Decisions of the Italian PTO and the Appeals Board on the notion of “well-known” names /signs

- Opposition Division decision of the Italian PTO of 23 June 2014

In its decision of 23 June this year, the Italian PTO entirely upheld Opposition No 380/2012 that was lodged against the Italian trademark application No NA2011C001388 MO BAST! (fig.) covering education, training, entertainment, cultural and sports activities” in class 41 on the basis of Article 8 (3) of the Italian IP Code.

In particular, the Opponent argued that MO BAST! is the well-known name of a non-profit association founded in the city of Naples in July 2011, with the aim of safeguarding the citizens of Naples and southern-Italy in general against increases in insurance prices. From that date, the sign in question had also been used at demonstrations and public events, as well as on the Internet in order to collect signatures of people supporting a petition addressed to the European Parliament against territorial discrimination by insurance companies in the Campania Region and in order to to increase social awareness on the issue that in southern-Italy car insurance is much more expensive than in the north of Italy.

The mark applied for, filed on 18 October 2011, was identical to the sign on which the opposition was based.

The Opposition Division held that the evidence filed by the opponent (including the registration of the domain name <mobast.org> and a video published on the Internet on 4 October 2011 showing the use of the sign MO BAST! - in a figurative representation identical to the mark applied for - during the collection of 73,000 signatures in Naples, in addition to the petition and documents filed with the European Parliament in December 2011) was sufficient to show that the Opponent’s sign had become well-known, prior to the contested application, amongst a specific range of consumers, in particular in southern Italy, so as to enjoy “relative renown” (“notorietà relativa”).

The Applicant, in its defence, had only filed some Internet links of which the only one still operative showed use of the mark as filed during a meeting in Naples between citizens and various consumer associations but did not give any indications about the ownership of the MO BAST logo.

As a consequence, the Opposition Division held that the Opponent had sufficiently shown that the sign on which the Opposition was based was prior to the identical trademark application, that the sign was well-known and that therefore, in the absence of the Opponent’s prior consent to the registration, the application had to be refused.

- Appeals Board decision of 17 March 2014 (handed down on 12 May 2014)

Previously, the Italian PTO had rejected another Opposition filed on the basis of the claimed existence of a prior well-known sign used in the field of art, holding that “relative renown” was not enough for a sign to qualify as a “well-known sign” under Article 8(3) of the Italian IP Code.

In particular, application No. RM2011C004182 IL MONDO DEI DOPPIATORI (word) (meaning THE WORLD OF DUBBERS) filed in June 2011, had faced an opposition on the basis of an identical sign that had been used since 2002 for the same services and that was held by the Opponent to be a well-known sign used in the artistic field.

However, in its decision of 4 October 2013, the PTO had rejected the opposition on the basis that the prior sign was only relatively well known, i.e. only amongst a specific range of consumers operative in the particular sector, namely of voiceovers, and that “relative renown” was not sufficient to qualify the mark as “well-known” pursuant to Article 8 (3) IP Code.

The appeal (which was upheld) that was lodged against this decision before the Appeals Board stated that it is sufficient that the sign is well-known in a specific and territorially limited field, and not the entire national territory, and this despite the fact that nowadays Internet provides universal diffusion and knowledge. Consequently, the “relative renown” of the sign was held sufficient to qualify the sign as “well-known” pursuant to Article 8 (3) IP Code so that the Appeals Board allowed the opposition, rejected the application and ordered the Applicant to reimburse 1000 Euros legal costs to the Opponent.

As a consequence, the Italian PTO appears to have now adopted a broad interpretation of the notion of “well-known” sign, in line with Italian case law, which will make it easier to win oppositions in Italy on the basis of unregistered signs.

Posted by: Edith Van den Eede @ 13.37
Tags: italy, Italian PTO, Appeals Board, opposition division, unregistered signs, well-known, partial renown, relative renown ,
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FRIDAY, 17 OCTOBER 2014
"IP Translator" application in General Court

In case T-51/12 Scooters India v OHMI , Brandconcern BV, filed an application for partial revocation of the mark LAMBRETTA on the basis of Article 50(1)(a) and 50(2) of CTMR in respect of the goods in Classes 3, 12 and 18 claiming that there had been no genuine use of that mark within a continuous period of five years.

The Cancellation Division partially revoked the mark LAMBRETTA, with effect from 19 November 2007, in respect of the goods in Classes 3, 12 and 18, with the exception of ‘perfumery, essential oils, cosmetics, hair lotions’ in Class 3. The BoA dismissed the appeal except for in so far as the mark LAMBRETTA had been revoked in respect of ‘soaps’ in Class 3.

The applicant appealed claiming that, at the time it filed its application for registration of the mark LAMBRETTA, on 7 February 2000, it was OHIM’s practice to understand a reference to a complete class heading in an application for registration as covering all the goods listed in that class and not only the goods corresponding to the literal meaning of that heading. The applicant maintains that it had to be able to rely on its application being interpreted in the same way, notwithstanding the judgment of the Court of Justice in Case C‑307/10 Chartered Institute of Patent Attorneys [2012], and the altered practice of OHIM as a result. Further,  the Board of Appeal found that genuine use of the mark LAMBRETTA had been proven in respect of spare parts for scooters (part of Class 12).

The BoA took to apply the IP translator judgment, meaning whether the indications in the specification of the goods meet the requirements of clarity and precision, and as the competent authority, was entitled to interpret the application for registration as covering only the heading of Class 12 taken in its literal meaning.

The GC confirmed that since that judgment was delivered after the facts at issue in the present case, the question that arises is that of its bearing on the present case.

OHIM took the view that, as regards Community trade marks registered before 21 June 2012, the use of all the general indications listed in the class heading of a particular class reflected the applicant’s intention to cover, by his demand, all the goods or services included in the alphabetical list relating to that class. In those circumstances, the approach set out by the President of OHIM in Communication No 2/12 applies the principles of the protection of legitimate expectations and of legal certainty. The court disagreed finding that “ the latter protects the interest of the public — and not only that of trade mark proprietors (with subjective conditions)”

Accordingly, the words ‘vehicles; apparatus for locomotion by land, air or water’ in the Community trade mark application that the applicant filed with OHIM on 7 February 2000 must be interpreted as intended to protect the mark LAMBRETTA in respect of all the goods in the alphabetical list in Class 12. The applicant moreover confirms, in its written pleadings, that that was indeed its intention when it filed its application for registration.

Even though ‘spare parts for scooters’ do not actually appear in the alphabetical list of goods in Class 12, it must be stated that, as the applicant submits, that list contains many fittings and parts for vehicles, such as, inter alia, ‘vehicle wheels’ (No 120053), ‘pneumatic tires [tyres] / tires, solid, for vehicle wheels / tyres, solid, for vehicle wheels’ (No 120158) and crankcases for land vehicle components, other than for engines (No 120058). It must be pointed out that that finding does not prejudge the question whether the spare parts that the applicant claims to have marketed actually fall within Class 12 or, as Brandconcern claims, in Classes 6 and 7.

 Consequently, at the very least some spare parts for scooters were included in the list of goods covered by the mark LAMBRETTA, with the result that the Board of Appeal was required to examine the genuine use of that mark in relation to those spare parts.

Given that the Board of Appeal did not carry out such an examination, the first complaint put forward by the applicant must be upheld and the contested decision must be annulled on the basis of infringement of Article 51(2) of Regulation No 207/2009.

Posted by: Laetitia Lagarde @ 16.55
Tags: lambretta, recovation for non-use, Ip translator,
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FRIDAY, 17 OCTOBER 2014
Germany: (No) Lust for Colour!

The German Federal Patent Court (BPatG) has recently dismissed an appeal against the German Patent and Trade Mark Office's (DPMA) decision not to register the figurative mark depicted below. The German words 'Lust auf Farbe' can be translated loosely as 'desire for colour' or 'lust for colour'. The applicant sought to register the sign for various services in Classes 35, 37 and 40, mainly connected to 'advertising', 'accounting', 'maintenance work', 'wood processing', 'varnishing' and 'applying window tint.'

The DPMA rejected the application, finding that the sign was devoid of distinctive character as it merely suggested that the services on offer could trigger a 'lust for colour'. Putting forward an unconventional line of argument, the applicant admitted that this was indeed the intended purpose of the mark, which was why it ought to be perceived as a reference to the provider of the services and not as a mere slogan. In its appeal, the applicant also raised concerns that advertising slogans of multinational corporations were being treated differently from the application of a 'craftsman operating on a regional basis, who had been using the slogan for several years.'

Unfortunately for the applicant, the BPatG was not swayed by these arguments but agreed with the DPMA's point of view. The mark consisted of a grammatically correct sentence and did not contain any figurative features that departed significantly from the layout commonly used in the market. The sign had to be refused registration since at least one of its possible meanings was considered to be descriptive of or, at least, to contain a 'close descriptive link' with the services concerned. Moreover, the Court held that it was not bound by previous registrations in allegedly similar cases. As far as the appeal hinted at an acquired distinctiveness, the applicant's submission was not sufficiently substantiated.

Posted by: Christian Tenkhoff @ 10.56
Tags: BPatG; Absolute Grounds; Distinctive Character; Lust for Colour,
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