MONDAY, 15 SEPTEMBER 2014
General Court: Galileo (European Space Agency) v Galileo
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In case T-450/11, the European Commission filed on behalf ofthe European Space Agency (ESA) applied for the CTM (see left) for Class f42  services ‘Research and development in the field of satellite radionavigation’.


Galileo International Technology LLC, filed a notice of opposition
on the basis of two earlier CTM’s GALILEO registered for classes 9, 16, 35, 38, 39, 41 and 42 , among others  modems and telecommunication apparatus and instruments; computer software and programmes for business expense reporting’  in Class 9 and in Class 38: ‘Telecommunication services in the nature of transmission of data, electronic data transfer services, network services, all relating to computerised information retrieval systems; communication services relating to the provision of on-line electronic data transmission facilities for the communication and distribution of information, images and electronic messages by computerised databases; data communications and bulletin board service’ etc.

Both the Opposition Division and Board of Appeal rejected the opposition because they found that all the goods and services covered by those earlier marks to be dissimilar to the services covered by the mark applied for and, consequently, one of the conditions provided for by Article 8(1)(b) was not satisfied.

The General Court dismissed the appeal on the grounds explained here after.

The relevant public is a specialist public of undertakings engaged in R&D in the field of satellites and highly sophisticated localisation software and, thus, those services are  not aimed at the general public — even though the product resulting from that research could, in the long run, be used by the general public — since what was involved was not an industrial activity or a service aimed at the production of goods, but an activity focused on scientific innovation.

 Regarding the  comparison of the goods, as regards the extremely wide definition of research and development proposed by the applicant, the Court has indeed already held that the Commission’s Galileo project is limited to the launching of a satellite radio navigation project as the European response to the American GPS and Russian Glonass systems, to providing financial support for the project’s research, development and deployment phases, as well as to establishing the appropriate framework for the subsequent economic operational phase. In doing so, the Commission is not undertaking an economic activity since it is not offering goods or services on the market (see, to that effect, Case T‑279/03 Galileo International Technology and Others v Commission [2006] ECR II‑1291, paragraphs 116 and 117).

Consequently, the Board of Appeal did not make any error of assessment in finding that the activity of research and development in the field of satellite radio navigation is not an industrial activity or a service aimed at the production of goods, but is focused on scientific innovation.

It follows that there can be no complementary connection between, on the one hand, the goods and services which are necessary for the running of a commercial undertaking and, on the other, the goods and services produced or supplied by that undertaking.

The goods in Class 9 registered for GALILEO 9 may be used or be necessary for research purposes, but they do not constitute the actual purpose of that research. Furthermore, a specialist public knows that undertakings and institutions engaged in research and development do not themselves manufacture any end products. Moreover, as the ESA correctly states, the purpose of R&D services in the field of satellite radio navigation is not to develop or improve a computer, a piece of software or an electronic apparatus as such but to accumulate knowledge on the basis of which independent undertakings could perform their own research and development in order to develop devices that allow a person’s exact position to be determined and to develop associated services that make use of such positioning capabilities. 

In addition, the BoA did not err either in finding that the data-collection, conversion and circulation services in relation to schedules, availability and pricing in the field of tourism and travel are fundamentally different from R&D in the field of satellite radio navigation. Likewise, the business management activities were different from research and development activities and are  not complementary to them. It is hard to imagine that business management activities are indispensable for the use or performance of research and development in the field of satellite radio navigation, and vice versa. Therefore, the BoA rightly fond that the goods and services at issue are different.

 

Posted by: Laetitia Lagarde @ 17.05
Tags: general court, galileo, R&D, comparison of goods & services, ESA,
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MONDAY, 15 SEPTEMBER 2014
OHIM BoA: AIR (or ALR) and cable transport

OHIM’s Fourth Board of Appeal delved in the world of cable vehicles and the effect of uppercase / lowercase characters combination  in Case R 450/2014-4. The applicant filed the following figurative (yes figurative) mark, which OHIM in its database and the Applicant in the proceedings name “AIRTRAM”.

 

 

The mark was filed in connection with “Vehicles for locomotion by land or rail; cable transport apparatus and installations; cars for cable transport installations; telpher railways [cable cars]; sleighs [vehicles]” in Class 12 and met the Examiner’s refusal on the grounds that it is an easily comprehensible combination of AIR and TRAM “that complies with English grammar rules, and does not amount to an unusual juxtaposition. It immediately informs the relevant public, comprising of both average consumers and professionals, that the goods applied-for are electric vehicles for transporting people that run on metal tracks, which are placed above the ground.” and that the mark’s figurative elements “are so minimal in nature that they do not endow the sign applied-for as a whole any distinctive character. Moreover, there are no additional elements that could be regarded as fanciful or imaginative, and therefore the combination of words applied-for is not able to distinguish the goods of the applicant from those of others.

Shortly after appealing, the Applicant, in an apparently wise move, limited the goods designated by the mark to “Cable transport apparatus and installations, namely, ropeways, cableways, chairlifts, gondola lifts, ski lifts; cars for cable transport installations; cable telpher.”

The limitation entailed, as the BoA, correctly noted that the goods no longer include ‘vehicles for locomotion on land or rail’, and accordingly do not cover tramways.

In assessing the mark, the BoA held hat it consists of seven letters written in a standard typeface. The first letter ‘A’ is written in uppercase. The third letter ‘r’ is written in lowercase. The second letter may represent an uppercase ‘I’ or a lowercase ‘l’. The fourth letter of the mark, ‘T’, also written in uppercase typeface, is the first letter of the meaningful word ‘Tram’ and, as a result, visually separates the mark into two components, ‘AIr’/‘Alr’ and ‘Tram’.

The BoA held it were “more natural” to separate the mark into two parts out of which only the first letter is in uppercase, namely as ‘ALR TRAM’, and not as one single word ‘Airtram’, in particular as that word as such does not even exist. Under this prism, the sign applied-for has a clear and non-equivocal meaning. In the BoA’s view, even assuming that  the first two letters are perceived as ‘A’ and ‘I’, the fact that they are written in uppercase typeface may lead to impression that ‘AI’ is in fact an abbreviation. As far as the word “tram” is concerned, the BoA held that the good applied for, even though serving to transport people, cannot be described as ‘trams’, since the essential feature of a tram is the fact that it is a vehicle which operates on rails.

In view of the above, the BoA accepted the appeal and let the mark proceed.

This blogger is a bit puzzled: Is it not more natural (and isn’t there also relevant case law) for the relent public to “break down marks into meaningful words”? Why would anyone think “ALR” and not “AIR” – what does ALR mean? The question is how much direct is “air tram” for “cable transport apparatus and installations”? It is not an easy question, though this blogger would, respectfully, tend to think direct enough.

Posted by: Nikos Prentoulis @ 15.28
Tags: OHIM, Board of Appeal, BoA, absolute grounds, descriptiveness, air, tram, ropeways, cables, suggestive, allusive, direct,
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SUNDAY, 14 SEPTEMBER 2014
Ladas Memorial Awards: let's have a European winner!

Our transatlantic cousins in the Internatonal Trademark Association (INTA) are now advertising that the competition is open for the 2015 Ladas Memorial Award. This is a prestigious and valuable award for the best papers on trade mark law or on matters that aren't actually trade mark law as such but which do have some bearing on trade marks. The competition is named in honour of the memory of Stephen P. Ladas, a pioneering expert in US trade mark law but in point of fact a European by birth, being a native of Greece.

Details of the competition, the awards, the rules and the deadline for submissions (6 February 2015, if you're interested) can be found on the INTA's website here.

INTA is conscious of its duty to reach out and appeal to entrants from all over the world.  Class 46 thinks that it would be lovely if a European or two were named as prize winners -- particularly if they were members of MARQUES.  

Posted by: Jeremy Phillips @ 23.20
Tags: Ladas Memorial Award,
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FRIDAY, 12 SEPTEMBER 2014
General Court: Delta v Delta (Portugal)

In Case T-218/12, the General Court dismissed the appeal against the following opposition

Micrus Endovascular LLC – contested CTM

Laboratórios Delta Lda

DELTA

IR designating Benelux, Germany, France, Italy, Hungary, Romania and Austria and Portuguese mark

Company name Laboratórios Delta used in trade in Portugal

Class 10: Medical and surgical devices, namely, microcoils used for endovascular surgery for the treatment of aneurysms

Class 5: Pharmaceutical, veterinary and hygienic products and dietetic products for children and patients

 

The Opponent demonstrated genuine use of that trade mark — admittedly in a slightly different form, but with the same distinctive character — in respect of ‘pharmaceutical and dietetic products (for children and patients)’ in Class 5. (see left) The inclusion of the word ‘portugal’ in the earlier trade marks was simply a response to a legal requirement under the Portuguese law in force at the time when the application for registration of those trade marks was filed and, accordingly, that word was not to be taken into consideration ( Código da Propriedade Industrial de 1940 — Decreto-Lei No 30679, de 24 de Agosto de 1940’ (Portuguese Industrial Property Code of 1940 — Decree-Law No 30679 of 24 August 1940).

The purpose of that word element was to indicate that the opponent was domiciled in Portugal and consequently it was a descriptive term, the sole distinctive element of the earlier Portuguese trade mark being the word ‘delta’. Regarding the other figurative and word elements in that mark, although they were independent elements, they remained secondary to the word ‘delta’ owing to their stylisation, size and informative meaning.

Next, the Board of Appeal found that the use of the earlier Portuguese trade mark covered such a wide range of ‘pharmaceutical’ products in various fields of therapy that it was impossible to describe that range as being limited exclusively to certain sub-categories of pharmaceutical product. Nor, according to the BoA, did the form in which the goods were administered call for the establishment of sub-categories. Accordingly, taking into consideration the amount of evidence and the characteristics of that evidence, it found that genuine use of that mark had been established in respect of pharmaceutical products.

Given the goods in question, the level of attention of a public composed of both professionals and end consumers would be higher than usual, owing to the fact that the goods involved have an impact on consumers’ health.

Since it had been established that the earlier Portuguese trade mark had genuinely been used in respect of ‘pharmaceutical products’, that term encompassed the goods in Class 10. In addition, some of the products in respect of which genuine use had been established were specifically recommended in the treatment of cardiac or vascular diseases, that is, in areas connected with the field of endovascular surgery, for which the goods referred to in the trade mark application are used.Thus the goods are— at least to a certain extent — similar, given that they coincided with regard to their relevant public, distribution channels and commercial origin, and that they were complementary in terms of their use.

Regarding the comparison of the signs in question, the Board of Appeal stated that it was aware of the fact that the obligation which existed on 14 March 1945 (the date of filing of the earlier Portuguese trade mark) to include the word element ‘portugal’ in marks filed by trade mark applicants having their seat in Portugal had subsequently been abolished. It also stressed that it was aware of the fact that that additional element was later deleted from all the marks concerned by the Instituto Nacional da Propriedade Industrial (National Institute of Industrial Property), formerly the Repartição da Propriedade Industrial, Direcção Geral do Comércio, Ministério da Economia, Portugal (Portuguese Industrial Property Agency, Directorate-General for Trade, Ministry of the Economy). Accordingly, the opponent’s trade mark right related only to the word ‘delta’, the element which made the marks at issue identical.

Taking into account the identity of the marks at issue and the fact that the goods in question were — at least to a certain extent — similar, the BoA did not err in concluding that the possibility of a likelihood of confusion between the marks at issue could not be excluded, notwithstanding the high level of attention of the particularly specialised relevant public concerned.

Posted by: Laetitia Lagarde @ 17.56
Tags: General Court, likelihood of confusion, genuine use, Delta, Portugal,
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FRIDAY, 12 SEPTEMBER 2014
Trademark Lawyer magazine: August-September issue now out

The most recent issue of The Trademark Lawyer magazine, published monthly by CTC Legal Media, is now been published. It contains much of interest to the European trade mark community, as one might expect.

European features in this issue have a distinctly Eastern flavour to them, including

  • Marina Tsareva (ARS-Patent & Trademark) on the effect of impending changes to trade mark law in Russia
  • A "Find and Share the Knowledge" feature on Poland (Izabella Dudeck-Urbanowicz (Patpol) on litigation and management topics

Patpol and ARS-Patent & Trademark are both firms that are members of MARQUES.

Posted by: Jeremy Phillips @ 16.45
Tags: Trademark Lawyer Magazine,
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THURSDAY, 11 SEPTEMBER 2014
Initial interest confusion: a new article

"Staying well away from initial interest confusion", by Singapore lawyer Tan Tee Jim (a partner in MARQUES member law firm Lee & Lee), has just been published online in the Journal of Intellectual Property Law & Practice (JIPLP) and the print version will be available within the next few weeks. 

This article is of particular interest in that it takes a critical view of the position taken by Mr Justice Arnold in litigation in England and Wales, that the US doctrine of "initial interest confusion" is not only part of English law but is embedded in trade mark rulings of the Court of Justice of the European Union (see the Och-Ziff case, here).  The Singapore courts have rejected "initial interest confusion".

Posted by: Jeremy Phillips @ 15.05
Tags: initial interest confusion,
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WEDNESDAY, 10 SEPTEMBER 2014
Green Paper on non-agricultural GIs: any responses or reactions?

A Green Paper on Non-Agricultural Geographical Indications was published on the European Commission website on 15 July 2014, following on from a study published in March 2013.  As you may know, the issue at stake is whether to extend the EU level unitary protection afforded to agricultural geographical indication (GI) products to include non-agricultural products, such as ceramics, marble and textiles. Currently, non-agricultural products are only secured by various national laws that provide different levels of protection.

The Green Paper consists of two parts and seeks information and opinion from stakeholders on potential improvements to GI protection in the EU and on possible options for EU level GI protection for non-agricultural products.

We have been asked by a reader if we know of any official responses or reactions to the Green Paper, whether from governments, representative bodies or trade groups.  If any readers have information in answer to this which they can share by posting it as a comment below, our reader will be most grateful.

Posted by: Jeremy Phillips @ 22.54
Tags: GIs, non-agricultural GIs, Green Paper,
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