General Court: Spin Bingo (fig) v. ZITRO SPIN BINGO

In Judgment T-665/13, the General Court dismissed the appeal regarding the following opposition:

Contested CTM-Gamepoint BV

Earlier CTM-Zitro IP Sàrl

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Classes 9, 41 and 42

Classes 9, 28 and 41


The Opposition Division partially upheld the opposition except for the following goods, which were considered to be different from the goods of the earlier trade mark:

Class 9: ‘scientific, nautical, surveying, weighing, measuring, checking (supervision), regulation and management of electricity apparatus and instruments’ ; Class 42: ‘scientific and technological services and research and design relating thereto; industrial analysis and research services’.

The Fourth Board of Appeal of OHIM annulled that decision of the OD and rejected the opposition in its entirety. It found the goods and services covered by the trade mark applied for were either similar or identical to those designated by the earlier trade mark, except the ‘life-saving apparatus and instruments’, which were different.

However, regaring the signs, it found there was a low degree of visual, aural and conceptual similarity despite the fact that they contain the expression ‘spin bingo’. That expression is descriptive of an essential characteristic of the relevant goods and services. On a visual level, regarding the earlier sign, the public would pay attention to the more distinctive element ‘zitro’, which is devoid of any meaning in the relevant languages and is at the beginning of the sign. Concerning the contested sign, in the light of the descriptive meaning of the expression ‘spin bingo’, consumers will pay as much attention to the different colour elements of the device which are the circles and the reel on which there is a representation of a smiling face. On the aural level, the similarity is weak as well, in the light of the descriptive meaning of the expression ‘spin bingo’, and the fact that the public will pay attention to the more distinctive element ‘zitro’. On the conceptual level, the word ‘zitro’ is dominant and it's not conceptually similar to the contested sign.

Finally, concerning the global assessment of the likelihood of confusion, the distinctive character of the earlier trade mark ZITRO SPIN BINGO is average.

Further, the similarity between the signs was limited to the expression ‘spin bingo’, which has a purely descriptive meaning, and which cannot constitute the dominant element of the overall impression produced by the sign of a complex trade mark, and, therefore, which also cannot, in itself, form the basis of a likelihood of confusion.

The Board of Appeal held in that regard that, although some of the goods and services are identical and assuming that the public’s level of attention is only average, the low degree of visual, aural and conceptual similarity between the signs excluded any likelihood of confusion, including a likelihood of association, which could not be based on elements which are not distinctive.

Posted by: Laetitia Lagarde @ 17.35
Tags: General court, spin bingo, zitro zpin bingo,
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China IP survey: responses urgently needed

The UK Intellectual Property Office is seeking feedback on experiences of the intellectual property system in China, knowing that bad-faith trade mark applications are a common problem faced by UK businesses operating in China and that they and can have a serious impact. The IPO has therefore prepared a short survey, which will take no longer than 10 minutes to complete. The survey is being run by an independent market research agency, SPA Future Thinking, and all responses will be treated confidentially.  

Please click here to access this survey (if you are not the right person to complete it, do feel free to forward it to a company or client which would be better able to complete it).

Time is short as the survey needs to be completed by 3 March -- that's tomorrow.

Posted by: Jeremy Phillips @ 00.01
Tags: China, bad faith survey,
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Morocco and the EU and have concluded negotiations on an agreement to mutually protect their Geographical Indications for agricultural products and foodstuffs.

Morocco is the first amongst the Southern neighbours of the EU to take this important step forward in promoting and protecting the quality of agricultural production. The aim of this agreement is to better protect consumers in terms of not being misled on the true origin and quality of the product.

The Agreement will now be passed for its approval to the Council and the European Parliament as well as to the Moroccan legislative authorities. More information in the European Commission�s press release here.

Posted by: Edith Van den Eede @ 14.47
Tags: EU, Morocco, Geographical indications, GIs, foodstuffs, agricultural products,
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WET DUST CAN'T FLY in General Court

In Case T-133/13, Rexair LLC had obtained a CTM for goods and services in Classes 3, 7 and 37 for the sign "WET DUST CAN'T FLY".

Pro-Acqua international GmbH filed a cancellation action against part of the registered G/S, namely  in Class 3: ‘Substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps; cleaners and fragrances for carpet, flooring, upholstery and window treatments’;  Class 7: ‘Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines, power-operated water extractors, and parts and attachments thereof’; Class 37: ‘Repair; installation services; repair and maintenance of vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines and power-operated water extractors; consultation services in the field of repair and maintenance of vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines and power-operated water extractors’,  claiming that that mark had been registered contrary to the provisions of Article 7(1)(b) and (c) of Regulation No 207/2009.

The Board of Appeal fully approved and endorsed the Cancellation Division’s reasoning that the mark WET DUST CAN’T FLY possessed both originality and resonance, and also had the effect of setting off a cognitive process in the mind of the relevant consumer. The expression ‘wet dust can’t fly’ was fanciful and distinctive and was not descriptive of the goods and services concerned.

The General Court rejected the appeal and agreed with OHIM that the expression ‘wet dust can’t fly’ does not consist of the terms ‘dust moistener’ or ‘dust dampener’, which might have been perceived as descriptive of the intended purpose of such goods. Furthermore, it is clear that that expression cannot be understood as a conventional way of describing the functionalities of cleaning appliances and cleaning tools. Consequently, it is not necessary to ensure that that expression is made available to competitors. Thus the Court confirmed there was no violation of Article 7 (1) c) CTMR.

As regards the argument of breach of article 7 (1) b) CTMR,  the cancellation applicant did not produce any document to establish that the combination of the words ‘dust’ and ‘wet’ is commonly used in the context of filters and cleaning systems.

Furthermore, the concept of ‘wet dust’ is literally inaccurate, since dust is no longer dust when it is wet. Consequently, the juxtaposition of those two words gives that concept a fanciful and distinctive character.  Finally, with regard to the applicant’s argument that that expression is an advertising slogan which indicates that the performance of the designated products is better than the performance of other products, although the slogan is slightly suggestive, there is no evidence to support the specific assumption that those goods and services are superior.

Posted by: Laetitia Lagarde @ 15.39
Tags: General court, wet dust can't fly, absolute grounds,
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Greece: Acropolis lacks distinctive character for Class 33 products

In decisions issued today, the Greek TM Office rejected two compound marks, consisting of the word indication ACROPOLIS and a representation thereof over lack of distinctiveness for goods in Class 33. This blogger has no objections and feels that the result should probably not impress or surprise readers of this blog. However, it appears that "ACROPOLIS rent a car" for, yes, Class 39 services, was distinctive enough back in 2002. This may raise an eyebrow (or two). Anyway, just an excuse to post a pic of this beautiful monument!


Posted by: Nikos Prentoulis @ 13.03
Tags: Greece, absolute grounds, distinctive character, Acropolis, spirits,
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General Court: AquaPerfect v WaterPerfect

In case T-123/14, the General Court annulled the decision of the 4th Board of Appeal concerning the following opposition proceedings

Arçelik A.Ş. (Turkey) Contested CTM

BSH Bosch und Siemens Hausgeräte GmbH (Germany)-  eARLIER ctm



 Class 7 ‘Electric motors (other than those for land transportation vehicles); pressured air producers, compressors; pumps other than machine or motor parts, namely hydrophores, water pumps (electro pumps, motor pumps), pumps for heating installations; pumps as machine or motor parts (liquid and gas pumps); electric apparatus used in the kitchen for chopping, grinding, crushing, mixing and crumbling, namely mixers, blenders, kitchen robots, electric knives, meat-grinding machines, garbage disposal machines; dishwashers, washing machines and dryers, electrical or motor-operated floor polishing machines; electric vacuum cleaners and electric carpet washing machines and their bags, pipes and parts thereof

Class7 – ‘Electrical household and kitchen machines and apparatus (included in Class 7), in particular electrical kitchen machines and apparatus including grinders/crushers, mixing and kneading devices, fruit pressing machines, de-juicers, juice centrifuges, grinding machines, cutting devices, electrically powered tools, tin openers, knife sharpening devices and appliances and devices for making beverages and/or food, pumps for dispensing chilled beverages for use in combination with devices for chilling beverages; electrical waste disposers, namely waste grinders and waste compacting machines; dishwashers; electric machines and devices for cleaning laundry and clothing (included in Class 7), including washing machines, spin dryers; ironing presses, ironing machines, included in Class 7; electric household cleaning equipment, including electric window cleaning equipment, electric shoe polishers and vacuum cleaners, wet and dry vacuuming apparatus; parts for all the aforesaid goods included in Class 7, in particular flexible tubes, pipes, dust filters, dust filter bags, all for vacuum cleaners

The BoA had rejected the opposition : even though the goods in question are partly similar and partly identical, there is no likelihood of confusion between the signs at issue, owing to the low distinctive character of the earlier mark,  and the fact that the only element the signs had in common was the weakly distinctive part of the earlier mark, namely the laudatory element ‘perfect’, as well as due to the low degree of visual and phonetic similarity of the signs.

While endorsing the assessment of the comparison of the goods, the General Court found that contrary to what the Board of Appeal held, the signs at issue do have some conceptual similarity.

That finding was not affected by OHIM’s argument that the element ‘perfect’, is devoid of distinctive character or has, at most, a weak distinctive character.

While that element may indeed be considered to have a weak distinctive character, owing to the laudatory character it will be attributed by the relevant public, the fact remains that none of the other elements making up the same signs can be considered to have a greater distinctive character or be dominant. The elements ‘aqua’ and ‘water’ also have a weak distinctive character owing to the fact that they will be perceived by the relevant public as meaning ‘water’ and that the goods covered all involve, in one way or another, water. Accordingly, the fact that the element ‘perfect’ of the signs in question has a weak distinctive character, and that it is positioned at the end of the signs while their dissimilar elements are at the beginning, has no consequence on the overall impression of the signs at issue.

Therefore, based on an overall impression, the signs at issue are similar to an average degree.

Consequently, in the light of the identity or the similarity of the goods, the average similarity, particularly at the visual and phonetic level of the signs, and the normal level of attention of a part of the relevant public, the Board of Appeal was incorrect to find that there was no likelihood of confusion between the mark applied for and the earlier mark.

Posted by: Laetitia Lagarde @ 18.20
Tags: General court, likelihood of confusion, aquaperfect, waterperfect,
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National costume distinctive as folklore though not as trade mark for local sweets

In opposition proceedings before the Benelux Office for Intellectual Property (BOIP), Inter-Noba B.V. (Inter-Noba) opposes the registration of JB Diesch B.V.’s (JB Diesch) Benelux trade mark in class 30, to be used particularly for well-known local sweets from the province of Zeeland in the Netherlands called ‘boterbabbelaars’ (tasting somewhere between butterscotch and toffee). These sweets are typically sold in packaging bearing pictures of Zeelandic folklore such as girls wearing national costume. Inter-Noba B.V. is the holder of a Benelux trade mark registered in class 30 and used for botterbabbelaars. The marks in issue are pictured below.








    Inter-Noba’s trade mark                                   Opposed trade mark

The BOIP had to determine whether there exists a risk of confusion on the part of the average consumer between both marks. The BOIP points out the differences between the two trade marks, such as a diamond shaped background frame as opposed to a round one, the flowers pictured in the blue, circular frame of the opposed mark, the red emblem and the rectangular banner of blue crosses and white diamonds not included in Inter-Noba’s mark and the differences between the word elements.

Despite the (notable) differences, the BOIP holds there exists no risk of confusion between the two marks. Both the word and figurative elements of the marks are descriptive for the products for which they are used. The average consumer is aware that Zeelandic boterbabbelaars are typically marketed using pictures of girls in Zeelandic national costume. While Zeelandic national costume, which is held by the BIOP to be very well-known, can be distinctive as folklore, it cannot distinguish boterbabbelaars as the national costume clearly indicates that these goods are originating from Zeeland. Despite the average consumer knowing that Zeelandic national costume is an indication of origin of the products on which it is pictured, the consumer shall not consider these products to originate from the same undertakings. In case of trade marks constituting of both word and figurative elements, the descriptive elements of the marks shall not be considered by the average consumer to be the distinctive parts of the trade marks. Knowing that Zeelandic boterbabbelaars originate from Zeeland, the consumer shall pay more attention to the non-descriptive elements of the trade mark, such as the geometric shapes, the red emblem and the particular differing details of the national costume pictured in both marks. Hence, despite both trade marks bearing similar descriptive elements, the marks contain a sufficient number of differences for the average consumer to be able to distinguish between both marks. The BOIP therefore rejects the opposition.   

Written by Denise Verdoold                

Posted by: Gino Van Roeyen @ 07.58
Tags: Benelux, BOIP, opposition, confusion, distinctiveness, sweets,
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