December ETMR now published

The December 2015 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.  

The ETMR usually contains reports on several decisions. This issue contains four cases, including the following:
* KitKat 3D shape, a Court of Justice of the European Union ruling on a controversial and much-publicised dispute as to the distinctiveness, functionality and registrability of one of the world's better-known confectionery shapes.
* Champagne Louis Roederer v J Garcia Carrion SA, Asda Stores Ltd and Wm Morrison Supermarkets Plc, a ruling of the Chancery Division of the High Court, England and Wales, in an infringement action brought by the owner of the CRISTAL UK and Community trade marks in respect of the sale of CRISTALINO JAUME SERRA wines.
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 @ 21.13
Tags: ETMR,
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Meet the Judges, in Munich (Conference Report)

On Friday 20 November, German trade mark enthusiasts gathered for the MARQUES event "Expert Talks with Judges of the German Trade Mark Courts" (Expertengespräch mit Richtern der Deutschen Markengerichte), which took place at the offices of the German Patent and Trade Mark Office (GPTO) in Munich. The event was organised in cooperation with the GPTO as well as the German Brand Association. It started off with warm welcoming speeches by Cornelia Rudloff-Schäffer (of the GPTO), Dr. Alexander Dröge (German Brand Association) and Dr. Uwe Over (Chair, MARQUES).

In this Blogger’s view, the highlight of the day followed shortly afterwards: Dr. Andreas Lubberger (Lubberger Lehment) grabbed everyone’s attention with a thought-provoking presentation. He analysed some of the ways in which recent insights gained from behavioural science and other fields of research could challenge the ‘general principles derived from common experience’ that trade mark judges frequently rely upon. Dr. Lubberger astonished the audience with several findings that were more than just slightly counter-intuitive. For instance, the audience learned that the visual sense accounts for 60 – 90 % of the overall perception of our surroundings. Nonetheless, humans are generally not very well equipped when it comes to visual perception, said Dr. Lubberger. We are, by way of example, only able to see completely focussed within a two-degree angle of our field of view. In addition, shapes are much easier to be recognised by humans than colours, which in turn are easier to be recognised than writing. Subsequently, Dr. Lubberger gave impressive examples that showed how the human mind automatically supplements missing pieces of visual information in order to create a more meaningful picture.

In light of these and other findings, Dr. Lubberger then looked at the above-mentioned principles derived from so-called common experience. He asked the audience whether or not they (still) agreed with some of the principles that are generally accepted in trade mark law. One of the principles under scrutiny was that consumers allegedly pay more attention to the beginning of a word (mark) than to its ending. Dr. Lubberger showed evidence suggesting that human beings do not focus on the beginning of words but rather recognise words by their beginning and ending. It appeared that the letters in the middle of a word can be switched or altered without lowering the word’s recognisability. As with many other principles, the audience’s vote on the soundness of this principle was split.

Next up was Prof. Dr. Dr. Joachim Bornkamm (Former Presiding Judge of the German Federal Supreme Court), who stressed that the ‘general principles derived from common experience’ had a normative side to them. He explained that German judges understand the perception of a trade mark by the average consumer as a question in law and that the general principles are one of the means judges use to make a prognostic assessment. Prof. Bornkamm then discussed the key points that parties can challenge if a judge relies upon a general principle.

The third presentation was given by Mr. Christoph Bartos (OHIM), who explained the prerequisites for the substantiation of a non-registered trade mark within the meaning of Art. 8(4) CTM Regulation. Afterwards, Prof. Dr. Olaf Sosnitza (University of Würzburg) examined whether or not a particular type of trade mark (e.g., a word mark) could give rise to a likelihood of confusion with a completely different type of trade mark (e.g., a 3D mark). The talk also provided an in-depth analysis of the Goldbear decision of the German Federal Supreme Court (reported here).

Next up was Mr. Lars Meinhard (Presiding Judge of the District Court of Munich), who presented and critically analysed recent decisions of the German Federal Supreme Court on 3D marks and colour marks (such as the decision Yellow Dictionaries, reported here). And finally, Ms. Johanna Brückner-Hoffmann (Presiding Judge at the District Court of Düsseldorf) gave an interesting talk on the potential conflicts between copyright, trade mark, design and unfair competition law.

Throughout the day, several open floor discussions were led by Dr. Uwe Over (Chair, MARQUES), Dr. Karsten Fischer (Tui) and Dr. Gregor Versondert (Vice-Chairperson MARQUES) respectively. Moreover, Till Lampel (Harmsen Utescher) and Dr. Martin Viefhues (Jonas) also introduced some of the speakers and co-chaired the discussions. Unfortunately, Prof. Dr. Franz Hacker (Presiding Judge of the German Federal Patent Court), who was supposed to talk on the current differences between German and European case law, was unable to attend the event.

Late in the afternoon, the event came to a close with the farewell speech of Barbara Preißner (GPTO), who eloquently summed up what surely was the general consensus among the audience, namely that the well-rounded presentations and lively discussions had been truly inspiring and will give all participants plenty to reflect upon for some time to come.

Posted by: Christian Tenkhoff @ 21.04
Tags: Meet the Judges, Germany, Munich, behavioural science, conference report, GPTO,
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General Court: Mustang (tobacco) v Mustang (clothing)

In Case T- 606/13, the General Court dismissed the appeal against the following opposition brought on the basis of Article 8(5) CTMR.

Dubek Ltd. (Israel) - Contested CTM

Mustang – Bekleidungswerke GmbH & Co. KG- earlier German trade marks

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'cigarettes, raw and manufactured tobacco, smoking accessories, lighters and matches; all the aforesaid goods included in class 34' in Class 34

classes 9, 14, 18 et 25 including among others,  'clothing, leather bags, jewellery, sunglasses' etc


The Board of Appeal rejected the opposition holding that the opponent had not provided evidence that the negative image of the tobacco industry would undermine the reputation of the clothes sold under the earlier word mark; the evidence submitted did not permit to demonstrate the knowledge of the earlier figurative mark. The General Court confirmed those findings.

First, regarding the reputation, even if the earlier word mark MUSTANG is known to the German public for clothes, the evidence submitted did not allow to conclude that the knowledge of this brand in Germany was "excellent" or highly exceptional. It is clear from the documents provided that, for a period of 17 years, said mark had enjoyed awaraness constantly above 80%. Further, the investigation spring "Outfit" 2007 showed that out of about 250 brands of clothing, only 7 had a higher degree of awareness to his. However, the lack of data on the opponent's market share in a market which, by the admission of the latter, has a large number of operators, contributes, in this case, to the insufficiency of the evidence to demonstrate 'excellent' fame in the earlier word mark.  Moreover, it is undisputed that the "Outfit" investigations relate to marks containing the word element 'mustang' without the galloping horse of the earlier figurative mark. If the galloping horse is not negligible in the composition of the earlier figurative mark, this circumstance does not exempt the opponent from its obligation to demonstrate the repute of that mark with the relevant public. Studies and advertisements in magazines produced as evidence during the proceedings before OHIM did not refer to the earlier figurative mark as such. References to the similar earlier figurative mark Image not foundin some ads produced during the proceedings before OHIM are not sufficient to prove its reputation.

Second, regarding the similarity of the marks in question, despite the differences present in the overall visual impression, the similarity of the signs was generally above average because of the visual similarities and phonetic identity as well as the conceptual identity.

Third, the opponent had not proved that its mark had a reputation so exceptionally high that the probability of a link with any other product is so obvious that no further evidence would be necessary. Mustang claimed that there would be 'Brand-Stretching' or some Image transfer, which is a common indirect form of advertising used by tobacco manufacturers like Marlboro and Camel to circumvent advertising restrictions which cigarettes are subject to. For example, Marlboro and Camel have used their cigarette brand image to promote garments, which then benefit the brand of cigarettes. The opponent further stated that the relevant public is aware that companies with well-known brands granting licenses for a wide variety of products, such as Davidoff and Dunhill brands. In that respect, the Board of Appeal had considered that, because of the restrictions on tobacco advertising, in the perception of the target consumer, tobacco use is no longer tied to a certain dress style or a life attitude expressed through some clothes, so there would be no "image transfer" between the two relevant product groups.Back in the days when cigarettes was synonym of cowboy attitude

Moreover, the Court held that even if it were to be considered well known that the holders of Marlboro and Camel cigarette brands have been selling clothes under these brands, that would not suffice to establish that the general consumer sees it a general practice. In addition, the opponent acknowledges in its brief that it is not common for clothing manufacturers to grant licenses for cigarettes. Therefore, contrary to what the opponent claimed, the Board of Appeal correctly considered there was no specific link between the goods in question.

In addition, Mustang GmbH has not provided evidence of its claim regarding the negative image of the tobacco industry and its impact among clothing buyers. The evidence filed by the opponent consisting, among others, of a study by "Reader's Digest Europe Health 2005" was not indicative of the perception of brands of cigarettes and tobacco to clothing buyers. While it is scientifically proven that smoking is injurious to health and it is known that, in Germany, tobacco is now associated with something bad for health, it does not result automatically in weakening the fame for goods from clothing sector products that are associated with a tobacco brand.

Lastly, the opponent quoted the example of the Davidoff brand, which, although originally a tobacco brand would now perhaps be more associated with the perfume.  In that regard, the Court held that the fact that a brand like Davidoff, which is a trademark for tobacco-based products, has been used for other products, such as perfume, and it can also be associated with these other products by consumers is an indication that the harmfulness of tobacco does not automatically lead to the loss of attraction for consumers of a brand associated with tobacco products when used for other products.

Consequently, the opponent has not put forward sufficient evidence to conclude a serious risk that damages the reputation of its earlier word mark will occur in the future due to the registration of the contested CTM.



For cases where cigarette brands tried to enforce their rigths and were the opponents, see Japan Tobacco / Torrefaccao Camela (30.1.2008 / T-128/06 and 30.4.2009 – C-136/08) and Davidoff / Gofkid (DURFFEE) (ECJ 9.1.2003 – C-292/00)

Posted by: Laetitia Lagarde @ 14.21
Tags: General court, mustang, tobacco, reputation, clothes,
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Trade marks and social media: a new book

Trademarks and Social Media: Towards Algorithmic Justice is a new book by Danny Friedmann (Faculty of Law, The Chinese University of Hong Kong).  What is this book about?  The website explains:

Legal conflicts between trade mark holders, social media providers and internet users have become manifest in light of wide scale, unauthorised use of the trade mark logo on social media in recent decades. Arguing for the protection of the trade mark logo against unauthorised use in a commercial environment, this book explores why protection enforcement should be made automatic. A number of issues are discussed including the scalability of litigation on a case-by-case basis, and whether safe harbour provisions for online service providers should be substituted for strict liability.

Although it is not immediately apparent, this fascinating and enjoyable book draws on a good deal of European Community and national material. You can check out this book's details on the Edward Elgar website here.

Posted by: Jeremy Phillips @ 09.58
Tags: book notice,
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Observatory survey on the cost of infringement: please help!

Our good friends in the European Observatory on Infringements of Intellectual Property have let it be known that they are undertaking a project that is designed to assess the cost of infringement of intellectual property rights to business and government.

The Observatory has contracted GfK (could that be a rebranded version of Gesellschaft für Konsumforschung, we wonder) to carry out a survey on its behalf for this purpose -- and the information that they want to gather cannot be obtained without YOUR participation. What's more, this information is crucial to providing the evidence for policy makers to take the proper decisions.

The survey itself is a simple questionnaire which is largely comprised of multiple choice questions. It can be accessed here.  It is addressed to a sample comprising the following Member States, in their own language(s): Belgium, Denmark, Germany, Spain, France, Italy, Lithuania, Hungary, Netherlands, Austria, Poland, Portugal, Sweden and the United Kingdom.

The closing date for responding is 4 December 2015, which is not very long away.  Do please participate!

Posted by: Jeremy Phillips @ 21.51
Tags: Observatory, survey, cost of infringement,
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General Court: who is the 'wisent' bison of them all?

The General Court annulled OHIM's contested decisions in the following cases and found that there was confusion between the applicant's CTMs (Fabryka Wódek Polmos Łańcut SA) and earlier rights owned by CEDC International sp. z o.o. for its żubrówka vodka brand.

T‑449/13- Cancellation Division (case No 1)

T‑450/13 - Opposition Division (case No 2)


Image not foundContested CTM registered in Classes 32,33

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Contested CTM application - 'vodka' Class 33

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3D Polish TM No 189866 registered for 'alcoholic beverages’ in Class 33

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CTM No 6215719, registered for ‘alcoholic beverages (except beers); vodka and mixed drinks containing vodka’, in Class 33

Other earlier mark,  among others, invoked in both actions

Image not foundCTM No 5585138


Image not foundPolish 3D mark No208090


In case No 1, the Cancellation Division declared the contested mark invalid on the ground that there was a likelihood of confusion between that mark and the earlier Polish mark No 189866  according to Article 8(1) b) CTMR. The goods in question are similar or identical and the contested mark and that earlier Polish mark are, at the very least, similar to a low degree and, finally, it took into account that the earlier mark enjoys very high consumer awareness in Poland. With regard to the similarity of the marks, it considered that the marks were visually similar to a low degree and were conceptually similar as a result of the representation of a bison and the vertical display of a blade of grass inside the bottles.

In case No2, the Opposition Division held that the opposition was well founded under Article 8(5) of CTMR. The OD took into consideration, among the earlier marks, the 3D Community mark, No 6215719, and the earlier Polish mark, No 189866. Visually, the marks had minor similarities, phonetically, they had no similarities, and, conceptually, they were similar because they evoked the concept of a bison and represented a bottle containing a blade of grass. In the second place, as a result of their longstanding and intensive use, the blade of grass in the bottle and the representation of the bison had become highly distinctive elements and were connected to the applicant from the perspective of the relevant Polish public. In the third place, the mark applied for is associated with the highly distinctive elements of those earlier marks, which would allow the intervener to benefit unduly from the investments made by the applicant in its marks.

The Board of Appeal annulled both the OD and  CD's decisions and found the marks to be overall dissimilar. With regard to the relevant public, since the earlier marks were registered in Poland, France, Spain, Italy, Ireland and the UK, the relevant territory comprised the relevant public in those States. In the second place, it observed that a thin straight, slightly inclining or diagonal line in the marks compared could not be perceived as a blade of grass. In the third place, the verbal element ‘wisent’, which in English, German and Dutch denotes the European bison, is the most distinctive and dominant element of the mark and its figurative element, consisting of a representation of a bovine animal, is less dominant and distinctive than the verbal element. In addition, the other elements of that mark are either decorative or less striking and they are therefore secondary.

Thus, the earlier Polish mark is a complex mark, and visually the marks concerned have in common a thin line, but they differ with regard to the other, more distinctive, verbal and figurative elements. Phonetically, the marks at issue are not similar. Conceptually, despite the representation of a bovine animal in the contested mark, the verbal element ‘wisent’ of that mark would not be associated by Polish consumers with the idea of a bison, evoked by the element ‘żubrówka’ which forms part of the earlier Polish mark, in so far as it is perceived by those consumers. The other earlier marks overall differ from the contested mark, in particular due to the differences, first, between the verbal elements of those marks, which would be perceived as the most distinctive and dominant elements, and secondly, between the representations of the bovine animals, both in the contested mark and in some of the earlier marks.

Since no similarity between the marks at issue was found, despite the fact that the goods in question were identical or similar, and despite the claim of enhanced distinctiveness and renown in respect of the earlier marks, one of the conditions needed in order to assess whether there was a likelihood of confusion and to benefit from the protection of reputation was absent.


Although its grounds for annulation differ slightly in the two cases, the Court found that the 4th BoA had erred in both decisions. It recalled the case-law regarding complex marks and held that the assessment of the similarity can be carried out solely on the basis of the dominant element only if all the other components of the mark are negligible .

Here, contrary to what OHIM maintains, the  'bison' element is just as distinctive as the verbal element ‘wisent’. Therefore it contributes to the same extent as that verbal element, to the overall impression created by those marks, and thus it is that concept which will be evoked above all by the marks at issue. (For case T-450/13, the same considerations apply to the figurative element consisting of a coat of arms occupying the central part of that bottle and of a larger size than the verbal element ‘wisent').

In the second case, the Court specified that those schematic representations of what might be a blade of grass cannot, however, be perceived, contrary to what the opponent claims, as an actual blade of grass, as opposed a more realistic representation of a blade of grass, or an actual image of a blade of grass placed inside a bottle. Thus, given its perception of that figurative element as a simple straight, slightly inclining or diagonal line traversing a bottle, the Board of Appeal was correct in finding that, as there were other figurative elements, that element was less distinctive and played a secondary role in the assessment of the similarity of the marks at issue.

In any event, the secondary elements, which are also conceptually concordant, consisting of the representation of a bottle and a straight, slightly inclining or diagonal line, may harmoniously incorporate the semantic content conveyed by the marks at issue.

Therefore the contested decisions are vitiated by errors in the assessment of the visual similarity and of the conceptual similarity of the marks at issue and the BoA ought to have carried out an overall assessment of the likelihood of confusion and examined whether the other conditions of Article 8(5) CTMR were met. The GC remanded to the Boards.

Posted by: Laetitia Lagarde @ 18.39
Tags: General Court: vodka, żubrówka, bison, wisent,
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Coming soon -- a splendid WIPO Madrid System seminar!

Our good friends at the World Intellectual Property Organization (WIPO) have been busily organising more instructive and educational fun for the trade mark fraternity: this time they are inviting everyone to a seminar on the Madrid System for the International Registration of Marks.

This seminar will take place on 26 and 27 November 2015 in WIPO's stylish Headquarters in Geneva, Switzerland. Our WIPO colleagues tell us as follows:

This seminar is a must for current and potential users of the Madrid System who would like to improve their practical skills in filing applications and managing registrations. Hands-on sessions featuring, where possible, real-life case examples are planned for trade mark holders, agents, paralegals and IP professionals. One to one discussion opportunities with WIPO examiners and experts are also available during coffee breaks and lunches [the breaks and lunches are the real hands-on sessions: when you see the tasty fare that is made available for trade mark experts at high-class events like this, it's not easy to keep your hands off!].

The provisional programme and online registration are available on the WIPO website's Madrid Seminar page (but note: the deadline for registration is 20 November 2015). Participants include leading European trade mark attorney Jonathan Clegg (Cleveland IP).

Although the seminar is open to all interested parties, Class 46 has been assured that MARQUES members and Class 46 readers will be made particularly welcome.

Posted by: Jeremy Phillips @ 18.53
Tags: WIPO Seminar, Madrid System,
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