FRIDAY, 3 JULY 2015
British court interprets ONEL: 'single state' Community trade mark ripe for revocation

In The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), 29 June 2015, the Intellectual Property Enterprise Court, England and Wales, ruled that two word Community trade marks for the word mark SOFA WORKSHOP were invalidly registered and liable to be revoked for non-use. Invalidity was on the basis that the words were descriptive of their proprietor's goods and services, but revocation was based on a finding that maintenance of a Community trade mark required evidence that it had been used in order to create or maintain a share in the market at least beyond the boundaries of one EU Member State. In this case the mark had only been used in the United Kingdom and it was apparent from the proprietor's website and promotional material that it had only been targeting consumers in the United Kingdom.

As it turned out, the loss of both of its Community trade marks was not fatal to the plaintiff's action since, together with claims of trade mark infringement by the defendant, through use of the "Sofaworks" sign, Sofa Workshop also sued for passing off and won, since the court found that there had been misrepresentation to a sufficiently significant section of the relevant public to cause material damage to Sofa Workshop's goodwill.

Posted by: Jeremy Phillips @ 10.10
Tags: Community trade mark, invalidity, revocation, genuine use,
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THURSDAY, 2 JULY 2015
EDB Forum 2015 -- a new deadline for registration

On 11 June Class 46 posted this information:

MARQUES has learned that its friends at the Office for Harmonisation in the Internal Market (OHIM) are organising their first EDB Forum for companies and enforcement authorities, on 8 and 9 September at the OHIM headquarters in Alicante. What? You don't know what EDB stands for! Nor did this blogger till he did a little rooting around online and discovered that it stands for "Enforcement Database". Ah, now everything makes sense ...

The EDB Forum provides a unique opportunity for companies to

  • Meet enforcers from the 28 Member States of the EU

  • Share experiences with other companies in the same commercial or industrial sector

  • Discuss the latest enforcement trends with enforcers and companies alike

What else does the conference offer?

  • Parallel workshops by economic sector for right holders to present enforcers of the 28 Member States with the problems they face

  • An exhibition for companies to show enforcers how their genuine products should be identified with the help of EDB

  • Meeting areas for one-to-one discussions between right holders and enforcers

  • Training sessions on EDB to help with keying-in of data

Take a look at the outline of the attached agenda here. The working language of the event is English.

Participation is free for enforcement authorities and right holders -- so long as the latter have an account in the EDB and at least one product created in their portfolio.  A final selection of participants will be made on a quota basis by type of company and industry sector.

To register, click here.

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For more information on the EDB and to request an account in this free tool, click here

 For any questions, do not hesitate to contact the organisers at observatory.edb@oami.europa.eu

The original deadline for registration was 30 June -- but since that was so very soon after the date of our post, the organisers have kindly extended it to 15 July. Participation will be on a first-come first-served basis and a selection will be made according to the quotas by type of companies and industry sectors.

Posted by: Jeremy Phillips @ 22.32
Tags: EDB Forum,
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TUESDAY, 30 JUNE 2015
General Court: essence is not distinctive for some cosmetics

In judgment T-448/13, Bora Creations, SL (Spain) had registered Essence for the following goods: ‘Hair colorants and hair tinters, soaps, perfumery, essential oils, cosmetics, hair lotions, preparations for cleaning, care and beautification of the skin, scalp and hair, decorative cosmetics, false eyelashes, nail care products (included in Class 3), varnishes, nail varnish removers, products for modelling and making false fingernails (included in Class 3)

Beauté Prestige International brought an Action for invalidity which was rejected by the Cancellation division. However, the Fifth Board of Appeal partially annulled the decision of the Cancellation Division by declaring the invalidity of the mark for ‘hair colorants and hair tinters, soaps, perfumery, essential oils, cosmetics, hair lotions, preparations for cleaning, care and beautification of the skin, scalp and hair, decorative cosmetics, nail varnishes, nail varnish removers and nail care products’ included in Class 3.

 

By contrast, the Board of Appeal dismissed the appeal and declared the mark valid in respect of ‘false eyelashes’, and ‘products for modelling and making false fingernails’ included in Class 3.

 

The word ‘essence’, which is not rare or unusual, refers to plant extracts which can be used as a scent or perfume and can also refer to a concentrate of such an extract. As such, this word gives a clear and unequivocal message relating to an attribute of cosmetic products.

Next,   many of the goods could in fact be described by the word ‘essence’ so the mark at issue was purely descriptive in respect of the goods concerned, and it was not capable of identifying the origin of those goods. Accordingly, he mark at issue had been registered in breach of Article 7(1)( b) and (c) of CTMR.

The General Court dismissed the appeal.

Posted by: Laetitia Lagarde @ 07.57
Tags: general court, absolute grounds, essence, cosmetis,
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MONDAY, 29 JUNE 2015
Tell us who you are and what you want: a MARQUES survey

MARQUES, the association of trade mark owners, wants to find out more about MARQUES members and other IP professionals. What services do you value, and what else would you like to see offered? Please take a few minutes to answer the 12 questions in the brief survey which MARQUES is running here.

One lucky respondent will win a bottle of Luxembourgish Cremant, kindly donated by Olivier Laidebeur (Office Freylinger SA, and a member of the MARQUES Communication and Membership Team). Note: the survey closes on 27 July 2015 and minors cannot participate.

Posted by: Jeremy Phillips @ 23.30
Tags: survey,
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MONDAY, 29 JUNE 2015
General Court shedding light on priority claims

In case T-186/12, the General Court reviewed the legality of a decision by the Boards of Appeal regarding a claim for priority.

Capella EEOD (replaced by Copernicus-Trademarks before the GC) had filed an opposition against CTM application LUCEA LED on the basis of LUCEO- a CTM filed after the contested mark but with earlier priority date by virtue of an Austrian trade mark application. The OD upheld the opposition finding that the marks were similar for identical goods ‘surgical lights’ in class 10 .

The applicant Maquet SAS filed an appeal during which it submitted a judgment from Manheim Court which ruled that Capella had acted abusively by presenting cease-and-desist requests, on the basis of the same Autrian mark registration of the mark on which the opposition was based, and on which the priority claim was based, which had been applied for several times without payment of the filing fee.

The Fourth Board of Appeal annulled the decision of the OD and rejected the opposition. First, the date on which Maquet's appliction had been filed was 29 July 2009, whereas that on which Cappella's mark on which the opposition was based had been filed was 16 September 2009, which was thus a later date. Next, the right of priority for Cappella's mark on which the opposition was based had not been validly claimed. Capella had not filed the required priority document and the completed application form submitted by it did not bear any stamp or indication that it had in fact been received by the Österreichisches Patentamt. In addition, the BoA was entitled to examine the validity of a priority claim in the context of opposition proceedings.  

The General Court dismissed Cappella’s appeal. Regarding the first and fourth pleas in law and alleged infringement of Article 76(2) CTMR, the Court reminded the parties that even in proceedings relating to relative grounds for refusal, Article 76(2) does not preclude the BoA from examining certain matters of its own motion. Issues of law which require to be resolved in order to ensure a correct application of CTMR having regard to the facts, evidence and arguments presented by the parties must be ruled on by OHIM, even when they have not been raised by the parties. Thus the BoA had the right to call into question the priority date entered in the register.

As regard the third plea in law, Cappella claimed that it has satisfied the requirements of proving priority by submitting documents complying with Decision No EX‑05‑5 adopted by President of OHIM. However the Court confirmed that even if the copy of the priority document need not be certified by the authority with which the application was filed, it must none the less be a document from which the examiner must be able to determine whether and when the application for the trade mark was received by the office concerned. The copy of the application form for registration submitted by Capella did not, however, record that it had been received by the Österreichisches Patentamt. Moreover, if the required information is not available on the Office’s website, the onus of proof still lies on the priority claimant; it is not for OHIM’s examiner to contact the office directly.

As to the second plea of law, the BoA was not obliged to inform Capella that it was not going to confirm the examiner’s conclusion as to the soundness of the priority claim, so it did not violate the right to be heard within the meaning of the second sentence of Article 75 CTMR. Finally, there was no violation of principle of legitimate expectations resulting from the error committed by the examiner because the applicant Maquet had raised that issue in its pleadings before the BoA, giving Capella the opportunity to reply specifically on this issue, which it failed to do.

Posted by: Laetitia Lagarde @ 06.09
Tags: general court, priority claim, capella, ,
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FRIDAY, 26 JUNE 2015
Combit Software heads to the CJEU: do you want to comment?
Case C-223/15 Combit Software is another trade mark law reference to the Court of Justice of the European Union.  The referring court is the Oberlandesgericht Düsseldorf (a German Court which is often called upon in computer program copyright cases) and this case regards Community trade marks (CTMs) and the perception of the average consumer when it comes to likelihood of confusion.

The Oberlandesgericht Düsseldorf asks the Court of Justice of the European Union for a preliminary ruling on the following questions:

 In determining the likelihood of confusion of a Community word mark, what is the significance of a situation in which, from the perspective of the average consumer in some Member States, the aural similarity of the Community trade mark with another sign claimed to infringe that trade mark is eliminated by a difference in meaning, whereas from the perspective of the average consumer in other Member States it is not:

 (a) In determining the likelihood of confusion is the perspective of some Member States, of the other Member States, or that of a fictive EU average consumer decisive?

 (b) If there is a likelihood of confusion only in some Member States, has the Community trade mark been infringed across the European Union, or must the Member States be differentiated individually?

The UK government invites comments from the public that will enable it to determine whether it should intervene in these proceedings or make a submission to the Court.  If you would like to comment on this case just email policy@ipo.gov.uk by 10 July 2015.

Class 46 does not have any background information concerning this reference for a preliminary ruling and will be pleased to hear from any reader who can supply some detail of the context in which these questions are asked.

Posted by: Jeremy Phillips @ 16.30
Tags: CJEU reference, CTM, perception of average consumer,
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THURSDAY, 25 JUNE 2015
SUOMEN PAKASTETUIN JÄÄTELÖ is A-OK for ice cream

In the summertime, while enjoying an ice cream in the moderately warm sunshine of the Finnish summer, before it becomes a distant dream, now’s the time to review this quite recent (30 April 2015) decision of the Market Court in Finland that the slogan trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" (registered trade mark number 254065) of Société des Produits Nestlé S.A. may be registered for "ice cream" in class 30. The phrase "SUOMEN PAKASTETUIN JÄÄTELÖ" is a word play fusion of the words "pakastaa" (in English, "to freeze") and "rakastaa" (in English, "to love"). Thus the whole phrase "SUOMEN PAKASTETUIN JÄÄTELÖ" means "the most frozen ice cream in Finland" but has a punning allusion to the meaning of the most loved ice cream in Finland ("Suomen rakastetuin jäätelö").

The opponent in this case opposed the registration of the trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" for "ice cream" in class 30 based on the fact that the trade mark lacked distinctiveness for ice cream. The opponent stated that the trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" was a slogan which was both a claim or statement in the standard language which as a whole gave the consumer an idea of the kind, quality and purpose of use of the goods. The opponent backed its arguments by introducing other slogan-like trade marks, all of which were figurative trade marks. This, according to the opponent, showed that slogan-like trade marks could be only registered as figurative marks.

The Finnish Trade Mark Office dismissed the opposition and stated that the trade mark was distinctive for "ice cream" in class 30.  The fact that the trade mark is a slogan and contains a claim does not automatically mean that such a mark would not be distinctive. The Office emphasized that slogans are also evaluated as a whole and that the goods applied for, as well as the target consumers, are taken into consideration in order to determine whether the slogan is a trade mark or phrase describing the goods themselves. As ice cream is a consumer product meant to be eaten, being frozen is not a specific characteristic of the product but merely a means to preserve the product. Thus the consumer sees the phrase "SUOMEN PAKASTETUIN JÄÄTELÖ" mainly as a word-play referring to "Suomen rakastetuin jäätelö" which the Office considered to be distinctive.

The opponent further appealed this decision to the Market Court, arguing that accepting the trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" for registration would give an unfair position to the trade mark holder in relation to other similar trade mark owners. The opponent further maintained that the word "pakastetuin" (in English, “the most frozen”) clearly refers to ice creams and is an action directly linked to ice creams as being necessary for the purpose of use of ice creams -- and is thus descriptive of the product in question.

Nestlé responded by pointing out the commercial insignificance of the slogan "Suomen pakastetuin jäätelö" and that the phrase merely suggests "Suomen rakastetuin jäätelö". Nor was there any point in keeping the slogan available as there was no competition in the market for the most frozen ice cream and the trade mark was clearly unique and distinctive.

The opponent further stated its firm opinion that the trade mark was not distinctive and that ice cream stops being ice cream once it is no longer frozen. What’s more, this trade mark might also refer to the most frequently purchased ice cream. Finally, said the opponent, the slogan plainly obeyed to Finnish grammar rules and there was no word play.

The Market Court based its evaluation on Section 13 of the Finnish Trade Marks Act, which indicates the requirements for registration of a trade mark, and also took account of Trade Mark Directive 2008/95 and Council Regulation 207/2009 on the Community trade mark as well as legal practice in relation to it.

The Market Court explained that the trade mark would be considered non-distinctive should even one of its possible meanings express the qualities of the product. The reference to freezing might in itself be seen to refer to the qualities of the ice cream. However, the phrase in the form "pakastetuin" (in English, “the most frozen”) is not in use in the marketing of the relevant industry and the average consumer is not accustomed to comparing ice creams on the basis of which one of them is the most frozen. This leads to the fact that the average consumer does not recognize the word "pakastetuin" to refer to the characteristics of the product.  Further, the phrase does not directly or specifically describe ice cream or their qualities and the word-play element is present. The Market Court added that there was no proof that the phrase "SUOMEN PAKASTETUIN JÄÄTELÖ" would be a commonly used phrase in the industry.

In conclusion, the Market Court held that the trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" distinguished the goods of Nestlé from those of others and that the trade mark was thus distinctive.

It should be mentioned that this great ice cream battle was not a straightforward case as the decision of the Market Court was not unanimous. Thus we are interested to see whether this goes further to the Supreme Administrative Court.

Market Court Decision MAO: 304/15 can be found here (in Finnish).

This item has been kindly prepared for Class 46 by Tiina Komppa (Roschier, Finland)

Posted by: Jeremy Phillips @ 23.14
Tags: Finland, ice cream slogans,
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