MONDAY, 6 JULY 2015
Greece: Insurance, kilometers and distictiveness

http://www.motorcycleclassics.com/~/media/Images/MCC/Editorial/Articles/Magazine%20Articles/2012/07-01/Destinations%20The%20Extraterrestrial%20Highway/Extra%20Terrestrial%20Highway.jpg "Insurance by the kilometer" (Asfaleia me to chiliometro) is a recent word TM application in Greece in Classes 35,36,38, which met the refusal of the Greek TM Office. The designated services revolve around advertising in Cl. 35, insurance services in Cl. 36 and telecommunications in Cl. 38.

The Examiner rejected the mark as lacking distinctiveness and being descriptive, on the grounds that it designates insurance services. however, the rejection extended to all 3 classes. In this blogger's mind the threshold of lexical innovation that the Greek TM Office requires for registration was consistently applied (in comparison with the Office's practice). /class46/image.asp?id=4287

The rejection of the mark for "advertising" and for "telecommunications" is the apparent consequence of the Examiner considering that such services are auxiliary or secondary to the rather obvious business focus of the applicant. Still, it would be better if that was actaully spelled out in the decision (in Greek here).

An appeal before the Trademarks Administrative Committe is available to the applicant.

Posted by: Nikos Prentoulis @ 09.21
Tags: Greece, absolute grounds, distinctive character, car insurance services, kilometer,
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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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