THURSDAY, 27 NOVEMBER 2014
FOOD IS NOT GORGEOUS

DISTINCTIVE CHARACTER OF ENGLISH WORDS IN ITALY -

Some guidance from the Italian Courts on the distinctiveness of English terms in Italy.

In its ruling of 16 October 2014, the Milan Business Court held that the use and registration of later trademark STREETFOODONTHEROAD was not in violation of the earlier trademark FOOD ON THE ROAD for identical services since, in the view of the Court, in light of the only at most minimal distinctiveness attributable to the terms FOOD ON THE ROAD per se, the different elements were enough to avoid a likelihood of confusion. At the same time, the Rome Court held that the mark GORGEOUS is confusingly similar to GORGEOUS IBIZA in light of the distinctiveness in Italy of the term GORGEOUS.

                          

 

Background

The Milan Business Court in its recent decision held that the use and registration of later trademark STREETFOODONTHEROAD (fig.) for, amongst others, food and drink services, was not in violation of the earlier trademark FOOD ON THE ROAD (fig.) for restaurant services in class 43 since, in the view of the court, in light of the very weak (if any) distinctiveness attributable to the terms ON THE ROAD (also being the title of a famous American novel) and FOOD ON THE ROAD, the differences between the signs at stake (i.e. the figurative elements and the term STREET) were sufficient to avoid a likelihood of confusion on the market.

             

On the other hand, in its decision handed down on 21 February earlier this year, the Rome Court had held the mark GORGEOUS (word) confusingly similar to GORGEOUS IBIZA (word) for a variety of products and services (in particular all goods and services in classes 3, 9, 14, 16, 18, 25 and 41 were claimed), given the distinctiveness of the term GORGEOUS in Italy. 

          

In particular, the case was lodged by the owner of, amongst others, a prior Italian mark consisting exclusively of the term GORGEOUS who had used them as of 1999 - and applied for trademark registrations for the same with the Italian PTO in 2001-, for night-time entertainment for a gay-public.

However, the defendant, owner of the later CTM for GORGEOUS IBIZA, effectively proved in court that the claimant had been employed by her in 1997 as PR agent, to promote a night-time gay event in Rome under the name GORGEOUS IBIZA. Due to the success of the event, the use of the GORGEOUS IBIZA sign had been subsequently continued on a more than local level in the Italian territory, and had even acquired a reputation for a significant part of the relevant public.

According to the Rome Court, the term GORGEOUS is distinctive, and not descriptive, nor of common use, for the services at hand. In addition, in the view of the Court, even a term that has become of common use (which according to the Court, was however not the case in the dispute at hand), can constitute a valid trademark where its meaning does not have any relation to the generic name of the products/services claimed and/or with the descriptive indications that may serve to designate a characteristic of the goods and services in question.

As a consequence, the Court upheld the prior de-facto (unregistered) trademark rights in the GORGEOUS IBIZA sign of the defendant as well as the defendant’s counterclaim for a declaration of nullity of the claimant’s mark for lack of novelty, thereby ordering the cancellation of the claimant’s Italian trademark registration No 986703 GORGEOUS in its entirety from the Italian Register.

Comment

While in the past English words, even if descriptive in their language of origin, were quite easily held to have distinctiveness in Italy given the rather limited knowledge of the English language of the average Italian public, nowadays they will no longer always be held sufficient to be inherently adapted to distinguish goods from those of a competitor, in the Italian territory. Therefore, English words will not necessarily pass the trademark distinctiveness test in Italy.

Posted by: Edith Van den Eede @ 18.41
Tags: Italy, distinctiveness, distinctive character; english terms in Italy, unregistered trade mark, de facto trade mark,
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THURSDAY, 27 NOVEMBER 2014
Alicante court keeps an eye out for binocular infringers

On 7 November the 8th Chamber of the Alicante Court of Appeal, acting in its capacity as the Spanish Community Trade Mark Court (being the second instance for all Spanish CTM cases), confirmed the decision of the Alicante Community Trade Mark Court in a case concerning alleged infringement by a formerly-authorized distributor of goods bearing the plaintiff's CTM. The case was a little unusual since it required considerable technical debate on the functionality of the disputed goods (high-tech optical devices for military use), including the deposition of a technical expert at the trial -- a most infrequent event in Spanish trade mark litigation.

Right: monoculars have a long and distinguished tradition in European culture

The claimant, a US corporation, owned several CTMs for "military optical apparatus" and "vision devices" in Class 9. Among other night vision products, the claimant made and marketed night vision binoculars and monoculars. The defendants were two Spanish companies which marketed and distributed equipment for military and security use and which, until 2007 were authorized distributors of the claimant's products. 

After the termination of the distribution agreement, the claimant discovered that the defendants were offering infringing goods to the Spanish Army and that they were also advertising online night vision "binoculars" bearing the claimant’s registered trade mark. These so-called binoculars were actually two monoculars (which were intended for independent use) that had been joined together.

On visiting the defendants' website, consumers were without notice redirected to the claimant's website in order to see the picture of the original binoculars and to check out their technical details. However, in order to purchase them, consumers were then required to return to the defendants' website to arrange the purchase.

This being so, the claimant (and its licensee) sued the Spanish ex-distributors, alleging CTM infringement and unfair competition through misleading conducts  This claim was entirely upheld by the CTM Court, whereupon the defendants appealed.

Upholding the trial court's decision, the Court of Appeal affirmed that it was correct to declare that the claimant's rights had been infringed, and that the damages caused by that infringement had to be compensated.

As shown by the technical expert witnessing at the trial, monoculars and binoculars each serve a different technical purpose. Accordingly the fact that the monoculars had been manipulated by the defendants into “binoculars” affected the functionality and original quality of the contested products. Under Article 13(2) of the CTM Regulation, the court therefore concluded that the exhaustion of rights principle would not apply: even if the monoculars were proved to be authentic, which wasn’t the case, there would be legitimate reasons for the claimant to oppose the commercialization  under its trade mark of the artificially-made “binoculars”.

The court agreed that a trade mark owner cannot prohibit a third party from using its trade mark for merely informative purposes. Even so, said the court, citing Portakabin (C-558/08), there were no limitations imposed on the trade mark right since the mark was being used in a way which created a false impression of a commercial connection between the two undertakings.

 In light of the above and with accordance to the documentation provided by the claimant during the proceedings, the Spanish CTM Court of Appeal upheld the permanent injunction issued by the trial court, the finding of unfair competition (through misleading conduct), the recall of infringing products, publication of the judgment and the damages award based on a fair market royalty rate over infringing sales.

 Source: Ignacio Marques with assistance from Revital Cohen (Baker & McKenzie, Barcelona)

 

Posted by: Jeremy Phillips @ 16.48
Tags: Spain, technical evidence, exhaustion of rights, alteration of goods, unfair competition,
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THURSDAY, 27 NOVEMBER 2014
Hungary: marketing authorisation “not an imminent threat of trade mark infringement”

The Metropolitan Appeal Court (Budapest) recently ruled, in a trade mark infringement action between two pharmaceutical manufacturers, that the mere existence of a marketing authorisation (MA) for a pharmaceutical product, without any further evidence in relation to an actual launch, cannot be considered as an imminent threat of trade mark infringement. While case law to the same effect exists in relation to patents, this ruling was keenly hoped for by the Hungarian pharmaceutical industry, because the first instance court ruled to the contrary in holding that applying for and/or holding an MA is an imminent threat of trade mark infringement.

The claimant's arguments

The case covered several issues, but the claimant's key argument was that the defendant applied for an MA for an over-the-counter painkiller and anti-inflammatory drug, which the Hungarian pharmaceutical regulator granted. The claimant argued that, based on this MA, the defendant had sole discretion to launch the product, while the claimant has no legal instruments to gather evidence on further preparatory actions just on the launch of the product, which is to be considered as infringement rather than a threat. The claimant cited Article 27(2)(b) of the Hungarian Trade Mark Act, which implemented Article 9(1)(a) of the IP Enforcement Directive, according to which a trade mark owner can ask the court to issue an injunction to prevent any imminent infringement of an intellectual property right.

The defendant's arguments

The defendant asserted inter alia that an MA is just an administrative requirement for an eventual future launch, but does not mean that the launch will necessarily occur in the near future as an MA is valid for five years and can also be extended. Therefore, according to the defendant, there was no imminent threat of launch. The defendant further referred to previous decisions in patent infringement cases in which the court found that holding an MA alone did not constitute an imminent threat of patent infringement.

No preliminary injunction

The claimant applied for a preliminary injunction (PI) before commencing the main action, but the Metropolitan Court, which has exclusive jurisdiction in relation to first instance trade mark matters in Hungary, rejected to grant the PI. In its decision the Metropolitan Court agreed with the defendant and accepted that holding an MA alone cannot be considered as an imminent threat of infringement.

This is a ground-breaking decision for another reason too. For several years, Hungarian courts had dismissed trade mark infringement actions where the defendant had its own identical or similar trade mark. Trade mark owners thus had to file a cancelation action against the later trade mark before launching an infringement suit. As there is bifurcation in Hungary, this meant that it took several years to obtain a final ruling on the cancellation, during which the trade mark owner was unable to proceed against the infringement. However, in this matter the Metropolitan Court decided to ignore previous Hungarian case law and applied the approach of the Court of Justice of the European Union (CJEU) in FCI (C-561/11), i.e. that there is no need to first obtain a declaration of invalidity in relation to a later identical or similar national trade mark before bringing an infringement action as the exclusive right of a trade mark proprietor to prohibit third parties from using an identical or confusingly similar sign in the course of trade extends to circumstances where the defendant has its own later registered identical or similar national trade mark. This provisional injunction decision and the likely consequences were reported on 6 August 2013 on the MARQUES Class 46 blog here.

Infringement on first instance

In the main infringement action the claimant relied on the same factual background and legal provisions and argued inter alia that after obtaining the MA, the defendant has sole discretion to launch the product, and the claimant cannot gather any evidence before an actual launch. The Metropolitan Court accepted these arguments and ruled that, contrary to the PI decision, there is an imminent threat of trade mark infringement, prohibiting the use of the designation in question. Said the court, there is no intermediate action or step between obtaining an MA and an actual launch which would precede the actual sale of the defendant's product and could also be discovered by the claimant.

No infringement on second instance

The Metropolitan Appeal Court, acting as a second instance court, reversed the first instance ruling and rejected the claimant's request. The court agreed that it is relevant that Article 27(2)(b) of the Trade Mark Act contains the stipulation 'imminent': the existence of an MA cannot be considered as an imminent threat of infringement as it does not mean the threat of necessarily launching the defendant's product in question. According to the appeal court, only the actual use of the MA, i.e. any further steps towards a launch, can be considered as imminent threat of infringement. This also means that the appeal court disagreed with the lower court's approach, according to which an actual launch was solely at the defendant's discretion, and this triggered threat of infringement even if launch could have only occurred in the distant future.

The second instance ruling is final and enforceable. While there is an option to file an extraordinary appeal with the Curia it is rather unlikely that this will be happen, or this will be successful, as the Curia can overrule the final ruling only if it is contrary to the law.

Summary

The final ruling confirming that the mere existence of an MA cannot be considered an imminent threat of trade mark infringement is in line with previous case law in patent matters. Backed by this decision, generic pharmaceutical companies now have confirmation from both the trade mark and patent law perspective that holding an MA alone will not be considered as an imminent threat of infringement in Hungary.

For more information on this topic, please contact Dr Bálint Halász (Bird & Bird, Budapest)

Posted by: Jeremy Phillips @ 15.38
Tags: Hungary, marketing authorisation as trade mark infringement,
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WEDNESDAY, 26 NOVEMBER 2014
Youth experts in General Court
In case T-484-13, Finnish company Lumene Oy extended its international registration for the mark YOUTH EXPERTS for various goods in Classes 3 and 5, namely: Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’; Class 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’. OHIM's examiner rejected the trademark for most, but not all, goods. 
 
The applicant filed an appeal before the Boads which held that the trade mark applied for was unsuitable as an indication of the commercial origin of all the goods in Classes 3 and 5.  

The General Court agreed with the substantive reasoning which can be summarized as follows. 
First of all, as regards the relevant public, as the trade mark applied for consisted of elements from the English language, the relevant public was the English-speaking public or even a public that is not English-speaking but which has a sufficient grasp of basic English. Thus the target public included, in addition to the relevant public of the United Kingdom, Ireland and Malta, at least that of Cyprus, Sweden, Denmark, Finland and the Netherlands. In addition, all the goods covered by the trade mark applied for were directed at both the public at large and professionals in the medical field. However, referring to the case-law of the General Court, the Board of Appeal noted that the level of attention of the relevant public was relatively low with regard to promotional indications (see, to that effect, judgments of 9 July 2008 in BYK-Chemie v OHIM (Substance for Success), T‑58/07). Next, as regards the perception of the sign at issue by the relevant public, the sign consisted of the English words ‘youth’ and ‘experts’ and represented, conceptually, a promotional indication or slogan. It consists of an expression that is not grammatically correct, that is not imaginative, surprising or unexpected, that does not constitute a play on words and that does not have a certain originality and resonance making it easy to remember. On the contrary, the sign will be understood as a self-explanatory laudatory message that the applicant’s goods were designed, produced or made by young experts with an extensive knowledge in the relevant field, which would reassure the consumer as to the quality of the goods in question, those goods being based on an improved formula or recently developed, for example. Thus the trade mark applied for is a banal slogan with a clear and unambiguous laudatory meaning that would not be perceived by the relevant public as an indication of the commercial origin of the goods concerned, but as purely promotional information. In addition, the Board of Appeal stated that the relevant public was accustomed to seeing advertisements vaunting the improved effectiveness of the contested goods and that it was therefore not surprising that slogans using terms such as ‘youth’ and ‘experts’ were commonly used for marketing purposes, whether in the cosmetics and beauty care sector, in the pharmaceutical industry and healthcare.

 However, the GC annulled the decision because the Board of Appeal was legitimately seised of the appeal only to the extent that the lower authority had rejected the applicant’s claims (see judgment in NEO, EU:T:2013:343, paragraph 25). It follows that the Board of Appeal exceeded the limits of its powers in so far as it re-opened of its own motion the examination, in the light of the absolute grounds for refusal set out in Article 7 of Regulation No 207/2009, of the application for registration of a CTM in respect of the non-contested goods covered by that application and in so far as it found that the trade mark applied for was, for the purposes of Article 7(1)(b) of that regulation, devoid of any distinctive character such as to enable those non-contested goods to be distinguished. The contested decision was therefore be annulled to the extent that the trade mark for which registration was sought was declared devoid of any distinctive character, for the purposes of Article 7(1)(b) of CTM, in relation to the non-contested goods, in respect of which the examiner had allowed registration.

Posted by: Laetitia Lagarde @ 12.10
Tags: General court, youth experts, absolute grounds, boards of appeal , review powers,
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TUESDAY, 25 NOVEMBER 2014
Latest ETMR now published

The December 2014 issue of the European Trade Mark Reports (ETMR), a series of law reports published monthly by Sweet & Maxwell, is now available. The ETMR contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

This issue contains reports on four recent decisions:
* Alison J. Hendrick v Tony Knight, a decision in a nightmare case in which a serial infringer and apiring applicant to register others' marks causes major problems for the UK Appointed Person
 
* Hauck GmbH v Stokke - the Court of Justice's ruling on the registrability of the TRIPP TRAPP children's feeding chair as a three-dimensional mark
 
* AGuna Designs Ltd's application, an Irish Patents Office ruling on a variety of issues relating to the QUIN AND DONNELLY mark and the use of an unregistered mark of the same names.
* Galileo International Technology LLC v OHIM, a ruling of the General Court on the proper basis for comparing goods and services in a dispute relating to marks containing the word GALILEO.
MARQUES members are again reminded that, if they have been involved in European trade mark litigation which is of significant interest, and if they can provide an English-language text of the full decision of the court, the ETMR will be delighted to consider it for publication.
Posted by: Jeremy Phillips @ 00.45
Tags: ETMR,
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MONDAY, 24 NOVEMBER 2014
OHIM webinar on latest decisions: all welcome!

MARQUES's friends at OHIM have the pleasure of announcing a webinar with the curious title "Decisions of the Trimester" which will take place this coming Tuesday, 25 November 2014, from 10:00 to 13:30 (local Alicante time).  Don't worry: the Trimester isn't a new court of tribunal that is making any decisions: it's a somewhat quaint term for a period of three months -- most commonly associated with the three phases of pregnancy.  The object of this exercise is to keep experts from OHIM, National IP Offices and user associations updated on new developments in the relevant case-law, including the latest and the most important decisions of the OHIM Boards of Appeals (BoA), the Court of Justice of the European Union and the General Court.

The webinar will be broadcast live through the following link: http://directo.avanzo.com/OAMI_20141125/. The website contains a test page on which participants can check the system beforehand to see if it works for them. Accompanying the webinar will be a set of PowerPoints.

To join in, all you need are (i) a computer, tablet or internet-enabled smartphone, (ii) an internet connection with a minimum of 300 Kbps (the optimal bandwidth is 500kbps), (iii) an internet browser and (iv) headphones.

If you can't plug in switch on and sit back to enjoy this service, feel free to share the link with friends, clients, relatives and anyone else you can think of!

If you have any questions, please do not hesitate to contact the OHIM Academy though its conveniently memorable email address at academy@oami.europa.eu with the subject line "Webinar 25/11/2014".

Posted by: Jeremy Phillips @ 02.25
Tags: Webinar, Decisions of the Trimester,
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MONDAY, 24 NOVEMBER 2014
Bans and restrictions on trade mark use and consumers' health: a new article

Knowing the importance of plain packaging as an issue faced by MARQUES members, currently within the tobacco industry and potentially in a number of other sectors, readers of this weblog should note "Bans and Restrictions on the Use of Trademarks and Consumers' Health", a new article by Enrico Bonadio (City University London - The City Law School), which is being published in the final issue for 2014 of the Intellectual Property Quarterly. According to the abstract:

The article analyses to what extent the use of brands on packaging in the field of tobacco, alcohol and food can be prohibited or restricted by governments to protect consumers’ health. After introducing the most important packaging-related measures adopted or proposed in the industries in question and highlighting the differences between the concepts of "registration" and "use" of brands, the paper will make the point that the TRIPS Agreement and the Paris Convention do not offer trademark owners a positive right to use brands, but just a negative right (i.e. the right to prevent third parties from exploiting the sign), which makes the measures analysed in the paper lawful and compliant with those international treaties. In light of the evidence gathered thus far, the measures in question seem also to be capable of meeting the desired target, namely consumers’ health.

The text of this article is available in full in pdf format via SSRN, here.

MARQUES's involvement in this field is reflected in the activities and publications of the MARQUES Regulatory Team, which you can read about here.

Posted by: Jeremy Phillips @ 00.11
Tags: plain packaging,
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