THURSDAY, 21 MAY 2015
The Lisbon System and the Geneva Act: agreement is reached

Readers of this weblog have been treated to a great deal of information from us, via MARQUES's "special correspondent" and GI Team vice-chair Keri Johnston, concerning the past week and a half's discussions, negotiations, anxieties and jubilations relating to the Diplomatic Conference on the revision of the Lisbon Agreement on Appellations of Origin and Geographical Indications. Now you can hear the outcome from WIPO itself, via yesterday evening's press statement:

Negotiators Adopt Geneva Act of Lisbon Agreement at Diplomatic Conference

Geneva, May 20, 2015 document PR/2015/779

Negotiators approved a revision of an international registration system providing protection for names that identify the geographic origin of products such as coffee, tea, fruits, wine, pottery, glass and cloth.

A Diplomatic Conference was held in Geneva from May 11 to 21, 2015 and adopted the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

The Geneva Act allows the international registration of geographical indications (GIs), in addition to appellations of origin, and permits the accession to the Lisbon Agreement by certain intergovernmental organizations.

WIPO Director General Francis Gurry concluded by thanking delegations from all WIPO member states for their very constructive engagement. He said all delegations showed “an openness to discuss different approaches in a very positive spirit.”

The President of the Diplomatic Conference Ambassador Luis Enrique Chávez Basagoitia, Permanent Representative of Peru to the United Nations Office and other international organizations in Geneva expressed satisfaction with the outcome of the diplomatic conference and called the adoption of the Geneva Act a “transcendental moment” for the Lisbon Union and WIPO.

The Geneva Act of the Lisbon Agreement further develops the legal framework of the Lisbon System, which helps promote many globally marketed products such as, for example, Scotch whiskey, Darjeeling tea and Café de Colombia.

Other changes affect fee provisions, scope of protection, protection against becoming generic, and safeguards for respect of prior trademark rights.

An official signing ceremony is scheduled for May 21, 2015, at WIPO’s Geneva headquarters.

The Geneva Act of the Lisbon Agreement will enter into force three months after five eligible parties have deposited their instruments of ratification or accession.

The basic negotiating text for the Diplomatic Conference was developed between 2008 and 2014 by a Lisbon System working group with the goal of attracting a wider membership to the System, while preserving its principles and objectives.

The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration was originally concluded in 1958.

Posted by: Jeremy Phillips @ 08.22
Tags: Lisbon Conference, GIs,
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WEDNESDAY, 20 MAY 2015
MARQUES at the Lisbon Agreement Conference: Meeting in Plenary for the Adoption of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications

Continuing our coverage of the Lisbon Agrement Conference, Keri Johnston, Vice Chair of the MARQUES Geographical Indications has reported:

Chaired by Ambassador Chavez or Peru. The live meeting is currently being webcast on WIPO under the Calendar item relating to the Diplomatic Conference.

Posted by: Jeremy Phillips @ 14.48
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WEDNESDAY, 20 MAY 2015
MARQUES at the Lisbon Agreement Conference: New Act and the Regulations in LI/DC/14 and LI/DC/15 to be recommended to the Plenary

Continuing our coverage of the Lisbon Agrement Conference, Keri Johnston, Vice Chair of the MARQUES Geographical Indications Team has just informed us that Articles 1 to 20 and the Regulations will go to the plenary this afternoon.

"By consensus of the Member Delegations present and voting Articles 1 to 20 and the Regulations will go to the plenary at 3:30 PM today. Articles 21 to 31 remain for Main Committee II to review."

Posted by: Jeremy Phillips @ 12.00
Tags: Lisbon Conference, GIs,
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WEDNESDAY, 20 MAY 2015
Vienna: city of brands, dreams and cake

This year's MARQUES Conference -- the 29th -- takes place on 15 to 18 September in the lovely old city of Vienna, famous for, well, lots of things really.  On the right you can see a slice of Sachertorte from the Hotel Sacher, an indigenous delicacy which, so far as this blogger can tell, has been the subject of considerable legal dispute (for details take a quick look at the cake's Wikipedia entry, under Legal Issues).

The theme of the 29th MARQUES Annual Conference is "Mind the Brand? Mind the Brand! Psychology of Brands". Many of the sessions will address different aspects of this question, focusing on the legal issues and challenges of brand psychology. The conference will include discussions on issues such as advertising on the internet, the implementation of the new EC Customs regulation in 2014, as well as updates on OHIM, WIPO and European CEU Case Law.

Vienna is the capital city of Austria with a population of approximately 1,800,000. The city is host to many major international organizations, including the United Nations and OPEC and in 2001, the city centre was designated a UNESCO World Heritage Site. The city lies in the east of Austria and is close to the borders of the Czech Republic, Slovakia, and Hungary. These regions work together in a European Centrope border region. Apart from being regarded as the "City of Music" because of its musical legacy, Vienna is also said to be “The City of Dreams” because it was home to the world’s first psycho-analyst – Sigmund Freud (left). 

Book before 3 July 2015 and you can take advantage of the Members Early Bird offer (if you are not a member you can apply for membership at the same time as registering and take advantage of this offer).  Just click here for registration and other details.

Posted by: Jeremy Phillips @ 09.10
Tags: MARQUES Conference 2015,
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WEDNESDAY, 20 MAY 2015
General Court: SWATCHBALL v. SWATCH

In case T-71/14, the General Court dismissed the appeal brought by Swatch AG  against CTM application SWATCHBALL by Panvision Europe Ltd. for specialized goods and services in  Classes 9, 35, 41 and 42 such as “services in connection with goods for use in the production of films, television programmes, videos, and in other visual and performing arts; retail services in connection with goods for the creation and selection of lighting, optical or other visual effects in the cinematographic, television, video, and other visual and performing arts; (…) none of the aforesaid services relating to timekeeping, computer game software, computer game programs or interactive multimedia computer game programs’”.

The opposition was based on earlier marks (CTM and IR) for SWATCH or Image not found on the basis of Class 14 goods‘movements for clocks and watches and parts thereof’ and ‘precious metals and their alloys and goods in precious metals or coated therewith (excluding cutlery, forks and spoons); jewellery, precious stones, horological and chronometric instruments’.

With regard to the alleged infringement of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found that there is no likelihood of confusion as the goods and services at issue are dissimilar. With regard to the alleged infringement of Article 8(5) of CTMR, the Board of Appeal acknowledged that the earlier marks have a reputation in the French, German and Spanish markets with respect to goods in Class 14. However  the applicant failed to prove that use of the mark applied for in relation to the goods and services covered by it could cause a dilution of the earlier marks through the dispersion of their identity and their hold upon the public mind or take unfair advantage of the reputation or distinctive character of the earlier marks.

The appellant raised a single plea in law alleging infringement of Article 8(5) of CTMR

Article 8(5) requires the following conditions: (i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 25 May 2005 in Spa Monopole v OHIM).

In the present case, the similarity between the signs at issue is indisputable but this is not sufficient to establish that there is a link between those marks.

Indeed, the following factors weigh against a finding that such a link exists: (i) the differing nature of the goods and services covered by the marks at issue, given that they have different distribution channels, that they are neither interchangeable nor in competition with each other, that they serve very different purposes and that they do not belong to adjacent market segments, all of which results in a very limited degree of closeness between those goods and between those services; and (ii) the existence of two separate relevant publics.

With regard to the latter, far from being addressed to the average consumer, the goods and services marketed by Panavision Europe target a specialist public, whereas the goods covered by the earlier marks target the general public.

Overall, notwithstanding the undeniable reputation of the earlier marks and the fact that there is some similarity between the marks at issue, and  while it is indeed possible that the specialist public may also be aware of the earlier marks, it can nevertheless be concluded that the relevant public will not establish a link between the marks at issue, since it is highly unlikely the goods covered by those marks will be found in the same shops or that the relevant public will establish  a link between the marks at issue.

That conclusion cannot be called into question by the applicant’s argument that the relevant public is liable to establish a link between the marks at issue because software and other equipment used for film editing may include a timekeeping mechanism. That argument is inoperative inasmuch as the application for registration at issue explicitly excluded goods and services relating to timekeeping.

Posted by: Laetitia Lagarde @ 08.47
Tags: General Court, swatch, watch, reputation, swatchball,
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WEDNESDAY, 20 MAY 2015
General Court: 42 below v. 42 Vodka

In case T-607/13, the General Court confirmed there is a likelihood of confusion between the following signs for vodka products.

Granette & Starorežná Distilleries a.s. (Czech Republic) Contested CTM

Bacardi Co. Ltd (Liechtenstein) -Earlier marks

Image not found

Image not found(IR)

42 BELOW (UK)

Class 33: "Alcoholic beverages (except beers); wines; spirits; liqueurs; distilled beverages; aperitifs; cocktails; alcohol species; alcoholic extracts ";

 

- Class 35: 'Marketing, sales promotion; assistance in business management; business administration; office work; intermediary services for the sale or purchase of products in the field of alcoholic beverages

Class33 ‘Alcoholic beverages; distilled spirits, including vodka’

Class 35 including “promotional services for alcoholic products”

 

 

The relevant public is composed of both the average consumer and the specialized consumer with a higher degree of attention for Class 35 services.

The goods and services are similar or identical.

As regards the signs, they have visual, phonetic and conceptual similarity because they are dominated by the number 42.  Indeed in the contested CTM, the elements "Jemna vodka vyráběná jedinečnou technologií" , “VODKA” and "42% vol. "are negligible in the overall impression created by the mark. Further, the number ‘42’ plays a central role in the earlier trade mark. In contrast, the term "below" is located below the number 42 and is written in significantly lower character size. It cannot be ruled out that part of the relevant public might associate the number 42 as the degree of strength of alcoholic beverages covered by the earlier mark, despite the fact that the number 42 is not followed by the words "% vol. ", the word  "alcohol "or" alc." Even if one assumes that ‘42’ has a weak disti

nctive character,  because of its place, its size and its particular style in the sign, it is the element of the marks which dominates the public perception.

The graphic differences noted by the applicant are quite marginal and almost imperceptible even for an attentive audience, whether professional or not. Indeed, it can not be totally excluded that the effect of "crushed ice", used in the mark applied for is perceived by the relevant public as the result of poor print quality. It should also be noted that the general public might perceive the effect of "crushed ice" as the result of condensation formed on the bottle when served cold in restaurants, bars or nightclubs.

Conceptually wise, the Court rejected the applicant’s arguments that in the earlier international mark, the number 42 would indicate that the products contain less than 42% alcohol [actually it used to be 84proof but was reduced to 42 for international markets see here ], whereas, in the contested mark, the number 42 exactly reflects the percentage of alcohol contained in the products concerned (42%) . So was his claim that he would be the only producer of vodka to use an alcoholic strength of 42% and that this percentage would be distinctive with respect to vodka whereas in the earlier mark, the number 42 would refer to the place of manufacture of the products concerned by the former owner of the brand, which was located below the 42nd parallel (namely Baccardi's New Zealand subsisdiary).

Furthermore, the earlier international mark  enjoys reputation  in the UK for vodka and should therefore be considered as being a highly distinctive character because of its use in that country. Accordingly, there is a likelihood of confusion between the conflicting marks within the meaning of Article 8 paragraph 1 b) of Regulation No 207/2009.

Click here for more creative 42Below ads (better than MadMen)

Other popular vodka advertisement here

 

 

Posted by: Laetitia Lagarde @ 07.14
Tags: general court, 42 below, 42 vodka, confusion, new zealand,
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TUESDAY, 19 MAY 2015
MARQUES at the Lisbon Agreement Conference: Day 8

Continuing coverage of the Lisbon Agreement Conference, Keri Johnston, Vice Chair of the MARQUES Geographical Indications Team reports on day 8.

Day 8 began at 10 AM with Main Committee II (MCII) resuming their work in the large main hall, recently finished and built at WIPO to accommodate all Member States of the General Assembly.  Since Day 1 of this Diplomatic Conference it has been somewhat sparsely populated despite the fact that the New Act is the closest the international community has gotten in 15 years to the possibility of enacting a multi-lateral agreement on the registration of GIs.  Despite the numerous empty seats before them, members of the MARQUES GI Team have taken up their posts in the second row of the back section (along with other Observers) every day that the Diplomatic Conference has been scheduled to meet.  Indeed, the MARQUES GI Team, primarily self-funded and running on volunteer hours, has not missed a single day of the 10 Working Group meetings or the Preparatory Committee Meeting that preceded this Diplomatic Conference.

This bears mentioning, in that the expertise and contributions of the Observers in attendance, (some of whom have participated fully in the process from the first day of the first Working Group Meetings) are sidelined from the Informal sessions that have now been held on three days of the scheduled Diplomatic Conference.

Indeed at noon on Day 8, the Secretariat announced that Main Committee I (MCI) which had been scheduled to follow MCII in the Main Hall was moving to Informal Sessions.  As no further announcements were forthcoming, several Observers remained behind in the afternoon to analyze the proposals among themselves, and to be available in the event that the evening session resumed in the Main Hall.  It did not, and the Informal Meeting of MCI continued following another dinner of sandwiches and apples for the beleaguered Member and Observer and Special Delegations.

For some of the Member Delegations who have financed their expert Delegations during the 10 Working Group Meetings and the 11 days of the Diplomatic Conference, mumbling could be heard over their dinner sandwiches that the apparent lack of progress is proving frustrating.  The thought that Observer Delegations are possibly seeking to run down the clock, could be heard.  Which begs the question of whether or not the tail has begun to wag the dog at this Diplomatic Conference.

An alternatively view was that it may be possible to reschedule the Diplomatic Conference in order to further contemplate the text of the New Act and Regulations for possible amendments.  For example, the MARQUES GI Team notes that the current draft text of the New Act does not contain a force majeur clause.  Should this have been contemplated and included, or will the Drafting Committee also note its absence?

If the supposition becomes that a New Act will NOT be signed at this Diplomatic Conference in the allotted time, one asks where does that leave brand owners who might benefit from the greater legal certainty a multi-lateral agreement might provide in a better legal position.  In particular, one might ask if there may be benefits for those brand owners whose companies register trademark globally including in those countries where a GI can be protected under a suis generis GI system (currently 15 such suis generis GI registration systems are in force in the EU).  In addition there are companies who may have gained market share and perceived quality benefits in the eyes of consumers from their brands association with a GI, and who are not adverse to an international registration system that protects their economic interest in that association with their brand.

The fact is, that despite the proliferation of bilateral, and plurilateral GI agreements since TRIPS, there has been virtually no progress on an international multilateral agreement dealing with the evolution of the legal landscape on the GI issue, which continues to evolve in the EU and elsewhere around the globe.  In a sense, a GI registration system has become the elephant in the room, and it is impinging on related issues such as domain names among others.

In this regard, brand owners are virtual pawns of the opposing views primarily espoused by the EU (protection and extension of GIs to include non-agricultural products) and the US (GIs can be protected under existing trademark regimes as certification or collective marks).  Arguably,  a New Act of the Lisbon Agreement might have offered a further opportunity, 15 years down the road from TRIPS, to move this international stalemate forward.  In addition, it creates an opportunity for the standardization at an international level of the requirement for specifications and other regulations that are absent in certain jurisdictions as the quid pro quo of the benefits offered to beneficiaries of an international GI registration system.

But we digress, and on Day 8 MCII worked from 10 AM to 12 PM in plenary, obtaining agreement with respect to two outstanding provisions under the Article dealing with the Assembly of the Special Union [Articles 22(3)(b) and 22(4)(ii) as revised].  The numerous contentious Articles referencing Article 24 (financing of the New Act) and parts of Article 24 remain open [Articles 22(2)(a)(ii); 24(2) - (5); 26(2); 27(1)].  In addition, Article 29(4) dealing with international registrations effected prior to Accession is awaiting proposed wording from the Secretariat on proposed wording relating to intergovernmental organizations; and the MCII is awaiting a written proposal from the Member Delegation of Italy with respect to relations between States party to both the New Act and the Lisbon Agreement OR the 1967 Act [Article 31(1)].

During the afternoon Informals the MARQUES GI Team Members present, namely the Chair Alessandro Sciarra and Vice-Chair Keri Johnston, took the opportunity (together with other Observers) to review all of the President's Non-Papers from No. 3 Revision 2 (released May 18, 2015) up to and including President Non-Paper 11.  In addition, the French Delegations proposal with respect to the content of protection of a registration was released for review (Article 11).

It is actually quite difficult to assimilate the proposed revisions while concurrently listening to the submissions of Member and Observer Delegations, Special Delegations and Observers, so the MARQUES GI Team was glad to have had the chance to reflect and discuss the provisions with the other Observers similarly excluded from the Informals.

It is unclear to the MARQUES GI Team at this point if the Informals have been fruitful with respect to the remaining outstanding issues contained in the proposed text of the New Act and draft Regulations.

In the interim, the afternoon review of the Presidential Non-Papers 3 (Revision 2); and 4 -10 Rev. inclusive, raised drafting issues for the MARQUES GI Team and other issues that will come before the Drafting Committee.

Day 9 is scheduled to commence at 10 AM with the MARQUES GI Team in attendance in the event that the work of Main Committees I and II continues in plenary.

Posted by: Jeremy Phillips @ 10.58
Tags: Lisbon Conference, GIs,
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