TUESDAY, 4 AUGUST 2015
General Court: Alex v Alex

In Case T-657/13, the General Court dismissed the appeal in the following decision:

Panline U.S.A. Inc.

Arcandor Akt – earlier German marks

ALEX

Image not found

ALEX

Class 16: ‘Rubber stamps and stamp pads; stencil boxes; rulers; pop-up birthday cards; felt tip markers; children’s paint sets containing finger paint, poster paint, water colours, paint brushes, paint cups, and kids’ aprons; board erasers; chalk; wax and plastic crayons; glues for stationary or household use; kids’ scissors; coloured pencils; origami paper; drawing pads; colour and cut books; colouring books; and children’s activity books’;

–        Class 20: ‘Children’s furniture’;

–        Class 28: ‘Children’s arts and crafts kits for making jewellery, string beads, cards, jungle dioramas, key chains, clothes accessories, origami and kirigami, stickers, glitter art, sand art, animal sculptures, models, collages, potions, personal fragrances, bath gels, personal diary and holiday keepsake books, photo albums, patterns on silk, fashion accessories (including lanyard, love-beads and glow beads); children’s arts and crafts kits for use in painting, drawing, stencilling, colouring, clay modelling, dinosaur making and drawing and teaching alphabet and numbers (using flashcards, magnetic plastic numbers and letters); paper craft hobby kits; masquerade party kits; watch and watch band making kits; kids’ aprons sold as part of arts and crafts kits; children’s bath toys; and children’s educational and developmental activity toys, none of the aforementioned goods including sporting article ’ (as amended)

-towels, namely hand towels, bath towels, washcloths, guest towels’ in Class 24 and ‘sporting articles’ in Class 28;

 

-‘bicycles’ in Class 12, ‘bags, rucksacks, travelling bags and suitcases’ in Class 18

The Second Board of Appeal of OHIM confirmed the decision of the Opposition Division. The BoA stated that it was confining its review to the ground of opposition under Article 8(1)(b) of Regulation No 207/2009, as the applicant no longer argued on the basis of Article 8(5) of that regulation. It also stated that the applicant did not dispute that the earlier trade marks had only been put to use on ‘sporting articles’, and that the opposition was restricted to ‘children’s bath toys’ and to ‘children’s educational and developmental activity toys’ in Class 28.

The relevant public comprises members of the general public in Germany. There was no dispute that, with respect to the earlier word marks, the marks at issue were identical, and that with respect to the earlier figurative mark, the marks at issue were similar. The Board of Appeal held, by reference to the judgment of 4 June 2013 in i-content v OHIM — Decathlon (BETWIN), T‑514/11, that ‘sporting articles’ and ‘children’s bath toys; and children’s educational and developmental activity toys’ were dissimilar goods and, accordingly, there could be no likelihood of confusion since an indispensable condition for the application of Article 8(1)(b) of CTMR, namely identity or similarity of the goods, was not met.

Posted by: Laetitia Lagarde @ 04.39
Tags: General Court, likelihood of confusion, alex,
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MONDAY, 3 AUGUST 2015
Switzerland: a win for skinny love

Yves Saint Laurent opposed the registration "SL Skinny Love" based on its older "YSL" (fig., see above) monogram. Both marks claim protection for apparel in class 25. Both the Swiss IPO and the Federal Adminstrative Court on appeal dismissed the opposition.

Yves Saint Laurent failed to prove that "YSL" was a well-known mark for fashion goods. While Yves Saint Laurent the person was well-known, this did not extend to his monogram for apparel.

The court then noted that the case law was reluctant to admit a likelihood of confusion between acronyms and short (three letters or less) marks (this is true. The "official" reason given is that consumers are very perceptive of the differences in short signs. The true reason is that the courts fear a "monopolization" of short signs if they are awarded a wide scope of protection). The addition of "Skinny Love" in the younger mark led the consumer to believe that "SL" was an abbreviation for "Skinny Love" suppressing any likelihood of confusion.

While the decision may be correct from a strictly trade mark law perspective, I am not sure whether Yves Saint Laurent does not have an unfair competition claim. It can hardly be denied that the "SL Skinny Love" sign is a riff on the (well known, in my opinion) YSL monogram. Anybody remotely interested in fashion will recognize the allusion, in particular because Hedi Slimane is the creative director for Yves Saint Laurent since 2012, and Hedi Slimane is well known for his slim-cut (skinny) men's suits.

Decision B-2296/2014 of 29 June 2015.

Posted by: Mark Schweizer @ 08.29
Tags: Switzerland, relative grounds of refusal,
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FRIDAY, 31 JULY 2015
It's a hard rock life in the General Court

In Case T-436/12, the General Court upheld OHIM’S decision which rejected an action for invalidity between the following trade marks:

Ceramicas del Foix, SA

Deutsche Rockwool Mineralwoll GmbH & Co. OHG – earlier German rights

Image not foundImage not found

MASTERROCK

FIXROCK

COVERROCK

COVERROCK

Class 2: ‘Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; dyestuffs; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists

Class 19: ‘Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal. All the afore-mentioned goods with the exception of all kinds of mineral wool goods and damping materials for use in the building industry’;

Class 27: ‘Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile)

 

Classes 6, 17 and 19 covered by the earlier trade marks are building materials manufactured, for the most part, from mineral wool. In addition, the trade mark MASTERROCK also covers ‘civil engineering’ and ‘installation works’ services in Class 37.

The Cancellation Division (CD) and the Board of Appel (BoA) rejected the application for a declaration of invalidity holding that there was an average degree of similarity between some of the goods covered by the signs at issue, while others were either dissimilar or remotely similar.

In addition, there was a low degree of visual, aural and conceptual similarity between the signs at issue, emphasising the descriptive nature of the shared element ‘rock’. Indeed, English is a global language which is also used in the building industry. Even if the average German consumer does not have a thorough knowledge of English, the word ‘rock’ is a basic English word, and professionals and consumers alike will associate that word with the word ‘stone’ with the result that that word is largely descriptive of those materials.  Furthermore, in the present case, the word ‘rock’ also conveys a laudatory message concerning the characteristics of the goods and services covered which relate to building materials and building activity, in so far as it can be understood as alluding to the solidity and stability of rocks or rock formations. Further, in all the earlier trade marks, the element ‘rock’ alludes to a ‘stone’, a ‘rock’, or to mineral wool, with the elements ‘fix’, ‘flexi’ and ‘cover’ giving details of the physical characteristics or their intended use. In addition, the element ‘master’ has a laudatory meaning which will be connected by the relevant public to the meaning of the word ‘rock’. Accordingly, the Boa’s finding that the earlier trade marks FLEXIROCK, FIXROCK, MASTERROCK and COVERROCK are only weakly distinctive must be upheld.

Furthermore, since the relevant public will not attribute any particular meaning to the element ‘ceil’, the word combination CEILROCK is fanciful, with the result that it is averagely distinctive. The earlier trade mark CEILROCK was found to be dissimilar altogether to the contested trade mark.

The Court finally upheld the reasoning that a family of marks with the serial element "rock" would specifically lead to the monopolization of the element "rock", which is largely descriptive and laudatory with regard to the products and services covered by the earlier marks. Such a restriction on free competition that would result from reserving a basic term of the English language to a single economic operator, cannot be justified by the need to reward creative and advertising efforts of the holder of the earlier marks. In view of the relevant public’s high level of attention, and the fact that the broader protection granted to a family of trade marks was not applicable in the circumstances, the CD and BoA rightly concluded that there was no likelihood of confusion.

***

Deutsche Rockwool Mineralwoll GmbH & Co. OHG lost a similar action for invalidity against Image not foundImage not foundon the basis of earlier marks KEPROCK, FLEXIROCK, FORMROCK, FLOOR-ROCK, TERMAROCK, KLIMAROCK, SPEEDROCK, DUROCK, SPLITROCK, PLANAROCK, TOPROCK, KLEMMROCK, FIXROCK, SONOROCK PLUS, VARIROCK, SONOROCK et MASTERROCK in Judgment T-548/12 rendered on the same day, please see here.

Posted by: Laetitia Lagarde @ 03.44
Tags: General Court, likelihood of confusion, rock, family of marks,
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WEDNESDAY, 29 JULY 2015
Oh to be young again! OHIM launches Ideas Powered

Last week saw the official launch of OHIM's Ideas Powered website, this being the result of an EU-wide initiative  to bring young people more closely together with IP.

Ideas Powered (the acronym is 'IP', for 'Intellectual Property') will feature contributions from young designers, composers, entrepreneurs and artists from all across the EU to show how IP supports innovation and creativity. Right now Ideas Powered is running a video competition which invites young people to submit their views on how IP matters to them. Do check it out, especially if you are aged 15 to 24.

You can also enjoy Ideas Powered on Facebook and Twitter.

Posted by: Jeremy Phillips @ 14.50
Tags: Ideas Powered,
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TUESDAY, 28 JULY 2015
Question the Trade Mark Judges: a popular London event returns

On Wednesday 14 October 2015, from 18:00 to 19:30 in the lovely venue of University College London, UCL's Institute of Brand and Innovation Law (IBIL) together with MARQUES, invite you to put your questions to some of the judges that are – or were until recently – deciding our trade mark disputes. Chaired by The Rt Hon. Professor Sir Robin Jacob, the panellists will answer a set of pre-selected questions from the audience. Who are they?

* Nicholas Forwood QC (Judge of the General Court of the Court of Justice of the European Union)

* Marianne Grabrucker (former Presiding Judge in the Trade Mark Boards of the Bundespatentgericht (German Federal Patents Court))

* Geoffrey Hobbs QC (barrister, One Essex Court, and senior “Appointed Person” hearing Appeals from the UK Registrar of Trade Marks)

* Oliver Morris (UK Intellectual Property Office Senior Hearing Officer)

To book your place, just click here.

Posted by: Jeremy Phillips @ 17.42
Tags: Question the Trade Mark Judges,
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FRIDAY, 24 JULY 2015
Now another Danish medicine repackaging trade mark case heads for the CJEU

Yesterday Class 46 posted a note on a reference to the Court of Justice of the European Union (CJEU) for a preliminary ruling -- and now here's another one. It's Case C-297/15 Ferring Laegemidler, a request from a Danish Court, the Sø- og Handelsretten, in a case which concerns parallel imports of a medicinal product where the importer has repackaged the product in a new outer packaging and reaffixed the trade mark in a situation where the trade mark proprietor has marketed the product in a the same volume and packet sizes.

 The CJEU has been asked to answer the following questions:

  1. Must Article 7(2) of Directive 2008/95 to approximate the laws of the Member States relating to trade marks and the related case-law be interpreted as meaning that a trade mark proprietor may lawfully object to the continued marketing of a medicinal product by a parallel importer, where the importer has repackaged the medicinal product in a new, outer packaging and reaffixed the trade mark in a situation where the trade mark proprietor has marketed the medicinal product in the same volume and packet sizes in all EEA countries where the medicinal product is sold?
     
  2. Will the answer to the first question be different if the trade mark proprietor in both the country of export and the country of import has marketed the medicinal product in two different packet sizes (10-piece packets and 1-piece packets) and the importer has purchased 10-piece packets in the country of export and repackaged them in 1-piece packets, on which the trade mark has been reaffixed before the products are marketed in the country of import?

If you would like to comment on this case to the UK Intellectual Property Office please email policy@ipo.gov.uk by 5 August 2015.

Posted by: Jeremy Phillips @ 11.18
Tags: CJEU reference, Denmark, repackaginh,
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FRIDAY, 24 JULY 2015
General Court:Happy time v Happy hours

In Case T-352/14, the General Court dismissed the appeal in the following decision:

The Smiley Company SPRL

The Swatch Group Management Services AG

HAPPY TIME

HAPPY HOURS

Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;

Class 35: ‘Advertising; business management; business administration; office functions’.

Class 35: ‘Retailing of timepieces and jewellery; retailing of timepieces and jewellery via global computer networks (Internet)’;

Class 37: ‘Repair and maintenance of timepieces and jewellery’.

The Opposition Division partially upheld the opposition with respect to the following goods and services:  Class 14: ‘Goods in precious metals or coated therewith, not included in other classes; jewellery; horological and chronometric instruments’; Class 35 : ‘Auctioneering’.

The applicant brought an appeal against the OD decision.

The First Board of Appeal of OHIM dismissed the appeal. Firstly, for the purposes of assessing the likelihood of confusion, the BoA considered ‘the natural meaning of the goods and services specified in the application’ for registration. Thus it did not rule on the likelihood of confusion concerning, in particular, auctioneering services and neither party had presented any arguments in that respect.

On the other hand, regarding Class 14, the contested goods are identical to the goods which the opponent’s retail services relate to; those goods therefore displayed similarities with those services, which, moreover, were generally offered in the same places as those in which those goods were offered for sale.

Moreover, there is a low degree of visual and phonetic similarity, but also a conceptual identity, or, at least, a very strong conceptual similarity, between the two signs at issue. The applicant’s argument that the distinctive character of the earlier mark is weak  was rejected.

Therefore, there is a likelihood of confusion between the two marks at issue with respect to the goods in Class 14.

Posted by: Laetitia Lagarde @ 10.20
Tags: General court, confusion, happy time, happy hours, ,
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