Switzerland: don't wait for 8 years to enforce your rights in a domain name

The German JK-Holding GmbH markets tanning beds under the trade mark ERGOLINE, protected also in Switzerland. Back in 2005, it terminated the distributorship agreement with the respondent, who had registered the domain name in its own name already in 1998. In March 2013, JK-Holding demanded that the respondent cease the use of ERGOLINE in its domain name, and when the respondent frailed to comply, filed a request for transfer under the dispute resolution rules of the Swiss NIC (SWITCH) in April 2014.

The sole expert of the WIPO Arbitration and Mediation Center held that JK Holding GmbH had forfeited its rights, if any, by waiting for about 8 years after having become aware of the allegedly infringing use (up to 2005, the use was justified by the agreement). The respondent, who had been servicing ERGOLINE tanning beds since 1992, had built up valuable goodwill ("wertvoller Besitzstand") and could rely, in good faith, that the trade mark owner would not enforce its rights any more.

The expert therefore dismissed the request without entering the (difficult) question whether such use would be infringing at all (or whether respondent could rely on the doctrine of exhaustion to use ERGOLINE to advertise its after-market services).

DCH2014-008 of 9 July 2014

Posted by: Mark Schweizer @ 10.43
Tags: Switzerland, estoppel, forfeiture, domain name, dispute resolution, WIPO, SWITCH,
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August ETMR now published

The August 2014 issue of the European Trade Mark Reports (ETMR), a series of law reports published monthly by Sweet & Maxwell, is now available,  The ETMR contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

This issue contains reports on six recent decisions, which include the following:
* Martin Blomqvist v Rolex SA, Manufacture de Montres Rolex SA, in which the Danish Supreme Court gave its final decision on the importation of a single counterfeit watch from outside the EU and the application of relevant customs regulations.
* Hearst Holdings plc and Fleischer Studios Inc v AVELA Inc, ~Poeticgem Ltd and others, a decision of the High Court, England and Wales, on (inter alia) whether proceedings for trade mark and copyright infringement in the UK should be stayed on the ground that parallel proceedings had already been instituted in Italy.
MARQUES members are again reminded that, if they have been involved in European trade mark litigation which is of significant interest, and if they can provide an English-language text of the full decision of the court, the ETMR will be delighted to consider it for publication.
Posted by: Jeremy Phillips @ 09.13
Tags: ETMR,
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MONDAY, 28 JULY 2014
General Court: La Nana v Nana

In Case T-196/13, Lina M.Stal-Florez Botero filed for application of the above mark for goods in Classes 16, 20 and 24. Nanu-Nana Joachim Hoepp GmbH & Co. KG filed an invalidity application on the basis of earlier German right NANA registered among others for goods in Classes 16, 20 and 24.

OHIM and the General Court rejected the application for a declaration of invalidity in its entirety on the ground that genuine use of the earlier mark, for the purposes of Article57(2) and (3) of CTMR, had not been proved.

The affidavits and photos submitted by the applicant could not prove the time and extent of use of the mark in respect of the goods depicted.

Furthermore, the affidavits, drawn by an employee of the company, with therefore less evidentiary value, did not constitute conclusive evidence as they did not allow to draw, with certainty, any conclusions as to the duration and extent of use of the earlier mark in relation to the specific categories of goods within the classes concerned. For example, in 2007, it is stated in the affidavits, in respect of Class 16, that the applicant sold 287 types of goods and around 9 million products, with a total turnover of approximately EUR17 million. Apart from quantitative indications, the affidavits did not contain any additional details as regards the goods or types of goods sold.

Furthermore, the photos that were provided depicting certain goods in the three classes in question do not allow any conclusions to be drawn as to the extent and duration of use in relation to the goods depicted in those photos. In that regard, the photos are not dated and, in response to a question posed at the hearing, the applicant’s representative was not able to give the date on which the photos in question had been taken. Consequently, even if the goods depicted in the photos were marketed, there is nothing which makes it possible to establish, from those photos, the date on which or the period for which those goods were marketed.

As regards the nature of use, although the photos submitted showed that the term ‘NANA’ featured on product labels and stickers attached to the products, it was not certain that that could constitute an affixing of the sign to the goods for the purpose of proving use ‘in relation to goods’ within the meaning of the case-law. More specifically, it was not totally certain that the relevant public confronted with the product labels and stickers in a Nanu-Nana shop would actually perceive them as a trade mark designating a specific product, rather than as a company or shop name.

Posted by: Laetitia Lagarde @ 14.06
Tags: General court, genuine use, la nana, nanu nana,
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Survey evidence in England & Wales: not dead after all?

At last year's MARQUES "Meet the Judges" session in London, kindly hosted by our friends at IBIL and noted on Class 46 here, the consensus of judicial opinion was that prospects for introducing survey evidence in trade mark litigation were "dead" or at least "pining for the Fjords". However, in Enterprise Holdings Inc v Europcar Group Ltd and another [2014] EWHC 2498 (Ch), Mr Justice Morgan surprised everyone by permitting reliance on survey evidence which Enterprise Holdings sought to be introduce in order to show that its marks had acquired enhanced distinctiveness and were thus so strongly identified with the goodwill in its business to support its trade mark infringement and passing-off action against Europcar.

This case will undoubtedly be the subject of considerable discussion over the coming months and will be subjected to a fuller treatment on this weblog in due course.

Posted by: Jeremy Phillips @ 16.30
Tags: survey evidence, England & Wales,
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HEATSTRIP in General Court: unauthorized registration by agent

In Case T-184/12, Moonich Produktkonzepte & Realisierung GmbH (Germany) applied for word mark HEATSTRIP for various goods and services related to heating devices, requesting the priority date of an earlier German mark.

Thermofilm Australia Pty Ltd brought an opposition on the basis of earlier non registered rights for the verbal expression HEATSTRIP used in Australia, Canada, USA and UK for various “heating apparatus” among others. It raised the grounds of Article 8 (3) and 8 (4) CTMR, the latter in relation to the earlier UK right only.

The Board of Appeal upheld in part the opposition on the grounds of article 8 (3) finding that the opponent had duly proved that exclusive rights were used for HEATSTRIP in Australia; the existence of a fiduciary relationship between the parties and the lack of consent by the opponent when Moonich filed for application of the CTM.

Moonich appealed before the General Court which rejected the appeal. As regards the alleged violation of Article 76 (1) CTMR and lack of evidence regarding the applicable Australian law for demonstrating use of the earlier mark, the GC confirmed the reasoning of the Board which applied common law principles. In an action for “passing off”, the” reputation” generally refers to the “goodwill” of a mark, and not the level of “reputation” required according to Article 8(5) CTMR. The opponent filed evidence that according to Australian law, “goodwill” means the mark “ has come to the attention of the relevant public and has attained a level of significance in the public mind”. In the present case, the opponent had demonstrated substantial period of sales and promotional activity -just a few weeks’ duration has been held sufficient in some cases where the magnitude of the promotion was quite substantial. Thus, the Board correctly found that the opponent had proved the existence of earlier Australian right according to the common law definition of “goodwill” , without the need to prove its “reputation” in accordance with 8 (5) CTMR.

Further, the Court rejected the alleged violation of Article 8(3) of the CTMR which reads “Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor's consent, unless the agent or representative justifies his action.” The GC reminded that this article is meant to cover any contractual relationship when one party acts on behalf of the others, independently of its legal qualification.

Moreover, the evidence produced by the Thermonfilm (strict collaboration regarding the successful implementation of the products under HEATSTRIP mark on the German market) sufficiently demonstrated the existence of a fiduciary and principal-agent relationship, It does not matter whether there was no actual agency agreement or exclusivity clause. Finally, the GC rejected the applicant’s arguments according to which the Board had failed to examine whether there were any “justification for the applicant’s actions”. It recalled that the analysis of relative grounds claims is limited to the arguments presented by the parties: in the present case, Moonich raised this claim for the first time before the Court.

Posted by: Laetitia Lagarde @ 16.22
Tags: General Court, relative grounds, heatstrip, agency agreement, agent,
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Coexistence Agreement Workshop comes to Bucharest

The latest in the series of MARQUES workshops on Coexistence Agreements is to be held in the lovely and historical city of Bucharest, Romania, on Wednesday 10 September.

This workshop will be conducted in what our friends in the Secretariat refer to as "the local language": while Romanian is the official language, the county boasts a good selection of minority languages (not including English, which is understood by 29% of the population, and Textese, which seems to be understood by almost everyone under age of 20).

Details of the event and how to register for it can be accessed by cllicking here.

Posted by: Jeremy Phillips @ 15.57
Tags: coexistence agreements, workshops,
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Albania's IP (and trade mark) laws get an overhaul

On 10 July a new law, Law 55/2014, came into force in Albania, amending Law 9947 of 7 July 2008 on Industrial Property, entered into force. The changes cover trade marks as well as almost all other IP rights.

As to trade marks, the new law provides for collective and certification marks and specifies the substantive examination rules that address absolute grounds for refusal. 

Source: "Amendments to Law on Industrial Property enter into force", by Renata Leka,(Boga & Associates, Tirana, Albania), published in World Trademark Review, 21 July 2014, which goes into some detail concerning these provisions.

Posted by: Jeremy Phillips @ 23.07
Tags: Albania, new law,
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