FRIDAY, 24 FEBRUARY 2017
Saved by the (R)? General Court decides on the 'LIMBIC(R) SALES' trade mark

In Case T-517/15, the General Court decided on the registrability of the word mark "Limbic® Sales".

The applicant had applied to register the sign as a European Union Trade Mark (EUTM) for goods and services including "printed matter", "business consultancy" and "providing of training and training courses on the subjects of brand development" in Classes 16, 35 and 41. Both the Examination Division and the Board of Appeal rejected the application, finding that the mark consisted exclusively of indications which may serve, in trade, to designate characteristics of the goods and services in question, contrary to Article 7(1)(c) of the European Union Trade Mark Regulation (EUTMR).

The Board of Appeal summarised that the mark consisted of three elements: (1) the word "limbic" referring to the limbic system, a region of the brain that is, among other things, responsible for automatic and emotional responses to external stimuli, (2) the symbol "®" indicating a registered trade mark and (3) the word "sales". According to the Board, the expression "limbic sales" would be understood by the relevant public, which included managers, to indicate that the products in question had a connection with the limbic system. More specifically, the Board reasoned that the goods and services could provide information on how to influence consumer behaviour via the limbic system in order to improve advertising and sales strategies.

The General Court disagreed and set the Board's decision aside. In the Court's view, there was no evidence that the relevant public would immediately and without further reflection establish a direct link between the sign "Limbic® Sales" and the goods and services applied for. Referring to Case T-208/10 TRUEWHITE, the Court held that "Limbic® Sales" created an impression that surpassed the mere sum of its parts. First, the word "limbic" on its own did not have any clear meaning, because it was normally used only in connection with the term "system". Second, by combining "limbic" with the symbol "®" and the word "sales", the applicant had created a structure that was not common or usual in English.

The Court additionally noted that the word "limbic" was a medical term used in neurobiology. Consequently, the relevant public, which did not include medical professionals, would not immediately perceive "Limbic® Sales" as a reference to goods and services with a connection to the limbic system. Even if the products were targeted at influencing consumer behaviour via the limbic system, such a finding would not suffice to consider "Limbic® Sales" descriptive. The relevant public would in any event require some time to reflect on the meaning of the mark and, in particular, about the element "limbic". This would preclude a finding of descriptiveness, said the Court.

"But what about the distinctive character of the mark?" attentive readers may ask. Given that the Board had failed to assess the mark's distinctiveness within the meaning of Article 7(1)(b) EUTMR, the Court found that it was barred from examining this aspect of the case. It will now be for the EUIPO to decide whether "Limbic® Sales" lacks distinctive character nonetheless, taking into account the reasoning of the Court.

As an enthusiast for behavioural economics, this blogger finds many factual aspects of the case interesting. From a legal point of view, however, a particularly striking observation is the way in which the Court emphasised the fact that the mark applied for contained the symbol "®". In this regard, it is worth noting that the applicant already owned an EUTM for the word sign "limbic", which may explain the presence of the "®" within the mark applied for.

According to EU case law, the symbol "®" is not capable of fulfilling the essential function of a trade mark. In case C-37/03 P BioID, the CJEU held with regard to the distinctive character of a trade mark that the symbol "®" does "nothing to enable the relevant public to distinguish […] the products or services covered by the trade mark application from others which have another origin." Considering that the symbol "®" seems essentially irrelevant for determining the distinctive character of a trade mark under Article 7(1)(b) EUTMR, one might have expected the same to be true for the purposes of Article 7(1)(c) EUTMR.

Somewhat surprisingly, a few passages of the General Court's current decision arguably imply that the symbol "®" helped create the unusual structure of "Limbic® Sales". This blogger cannot help but wonder whether the Court would have been as quick to find the structure of the mark to be unusual and uncommon, if the applicant had decided to file the mark without the "®"-Symbol (see also Case T-513/15 regarding the sign "Limbic® Map" and Case T-516/15 regarding the sign "Limbic® Types").

Posted by: Christian Tenkhoff @ 08.56
Tags: EUTM; General Court; absolute grounds; descriptiveness; limbic system; behavioural economics,
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TUESDAY, 21 FEBRUARY 2017
Here comes our second Luxury Brands Symposium 

The second MARQUES Luxury Brands Symposium is on its way. Be sure to mark your diary for Thursday 16 and Friday 17 March, in the splendid surroundings of the Grand Hyatt, 1 Harbour Road, Hong Kong.

Topics covered over the two days will include

  • the Asian approach to luxury;
  • e-commerce and online shops – potential challenges and pitfalls;
  • defence of luxury brands in Asia;
  • brand building in Asia – from the very beginning; and
  • luxury brands in a digital world in Asia.

The Symposium will feature a wide range of speakers including expert IP lawyers, professors and representatives of luxury brands such as Coty, Louis Vuitton, Daimler and Shiseido. There will also be a special keynote presentation by Gübelin Raphael, Board Member of Gübelin Gem Lab, Switzerland.

For further information or to book your place, visit http://www.marques.org/conferences

 

 

 
Posted by: Blog Administrator @ 09.44
Tags: Luxury Brand Symposium 2017,
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MONDAY, 13 FEBRUARY 2017
EUIPO “smart-seals”(?) equality

The 5th Board of Appeal’s decision (Case R 1488/2016-5) on the registrability of EUTM No. 14430276 “SMART-SEAL” in Classes 16, 17, 20 (essentially packaging goods) includes, a more detailed than usual, analysis of why EUIPO is not bound by its own previous decisions and perhaps merits commentary.

The mark was refused over Article 7(1) (b) and (c), both in conjunction with Article 7(2) EUTMR, for all goods covered by the application. In addressing the Examiner’s letter of provisional refusal and also in support of its appeal before the Board of Appeal, the applicant had argued that the earlier EUTM No. 5543616, ‘SMARTSEAL’ was registered by the EUIPO in Classes 16 and 17 and the combination of ‘smart’ and ‘seal’ has also been registered in the UK, US and Canada in Classes 16, 17 and 20.

This may be the most interesting factual element of this case. For those joining me in wondering whether the applicant would have a legitimate interest or demonstrate plain sense in relying on an earlier identical mark in the same classes (save Class 20) to succeed, one should know that the applicant had actually filed a cancellation action against the said mark over non- use (there could also be some discussion about the similarity of the goods involved). 

The Board of Appealendorsed the Examiner’s call on descriptiveness and lack of distinctiveness of the EUTM Application, but also addressed in detail the argument that other EUTM registrations, including SMARTSEAL No.  5543616 in Classes 16, 17, would mean that EUTM Application No. 14430276S MART-SEAL is not descriptive. The Board of Appeal did not restrict itself to the ‘classic’ reply that “decisions concerning the registration of a sign as a European Union trade mark which the Office or the Boards of Appeal are called on to take under the EUTMR are adopted in the exercise of circumscribed powers and are not a matter of discretion”.

Making its second reference to the need for EUIPO to strive for consistency, the Board cited para. 65 of T-554/12, § 65, (27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158) to base the more technical finding that the Board of Appeal cannot be bound by decisions from first-instance departments, in particular when these have not been appealed.

Further, it ruled that “[i]t is a fact that the Office should endeavour to apply a consistent practice in examining trade marks in relation to absolute grounds for refusal. However, it is unfortunately inevitable that doubtful trade marks are sometimes registered.Notwithstanding this, the observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of its claim, on unlawful acts committed in favour of another (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 67)”.

The Board added another, generally sound, argument: That “market practices, languages and registration practices evolve over time and some of the marks cited may, therefore, have been accepted as they were considered to be registrable at the time of application, which however may not be the case nowadays”.

However, in this case, it does not look like English-speaking consumers of packaging goods understand SMART SEAL any differentthan they did 10 years ago, when EUTM No. 5543616 was filed.

The Board also invoked cancellation proceedings as a rectifying mechanism; again, in principle a sound argument: “Moreover, where marks are in fact registered contra legem, a mechanism is in place to deal with such cases, namely that of cancellation proceedings. In that connection, the Board notes that the mark ‘SMART-SEAL’ has been revoked by decision of the Cancellation Division of 26 July 2016 (C 11 301).”

But this would not be relevant, this blogger thinks, because revocation was actually the result of non-use, not descriptiveness or lack of distinctive character. So, the rectifying mechanism did not really work, in the way the Board of Appeal presented it.

To be clear, this blogger would find it hard to refute that SMARTSEAL is descriptive and non distinctive for packaging goods. Plus, from a practicioner’s standpoint this is a ‘go to’ example to water down clients’ aspirations to secure rights in marks, which are more or less descriptive. TM practicionersoften face the arguments of (well- or mis-) informed business executives on how “the same mark has been registered in Class X” or that “competitor Y uses an equally descriptive mark, so why not us?” In this type of situations, the EUIPO’s decision is an insurance policy.

But if we turn our heads away from simply being on the safe side with clients, this decision is not a good case for legal safety and foreseeability. When the EU’s IP Office says “don’t rely on our past practice” or, worse yet, “the Z mark, same as yours, that was registered when you filed has now been cancelled, though not irrevocably”, does it pass a business-friendly message? This blogger thinks not. Sure, TMs are not calculus; and that is one of the many reasons people like MARQUES members enjoy living in theTM universe. But, TMs serve business purposes and the Single Market’s IP Office is not just a custodian of TM registrations; it is a facilitator for economic growth and a(n integral for me) component of the European Union’s competitive assets in the global markets.

This blogger has no difficulty conceding that filing for a word mark in the likes of “SMART-SEAL” more or less invites an absolute grounds refusal. But, when the EUIPO registry and the Member States registries are gold mines of similar marks, it does not seem entirely fair to scold an applicant for thinking that the invitation is actually one promising registration. The EUIPO is not wrong in disassociating itself from past, potentially wrong practice; but it may need to put much more work in minimizing such problems in the future.

Posted by: Nikos Prentoulis @ 08.38
Tags: EUIPO, Board of Appeal, absolute grounds for refusal, descriptiveness, lack of distinctive character, smart, seal, equality, legality, sound administration, past practice,
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MONDAY, 30 JANUARY 2017
February ETMR now published

The February 2017 issue of the European Trade Mark Reports (ETMR) has now been published.

To remind readers, the ETMR is a series of law reports published monthly by Sweet & Maxwell. It contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

This issue contains three decisions: a trade mark ruling from each of the Court of Justice and the General Court, as well as one decision from the High Court (Chancery Division) for England and Wales -- this being a keenly-fought battle between Victoria Plum and Victorian Plumbing.

MARQUES members are reminded as usual 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. Communications should be sent to the Editor, Dr Stavroula Karapapa at s.karapapa@reading.ac.uk.

Posted by: Blog Administrator @ 19.01
Tags: ETMR,
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FRIDAY, 27 JANUARY 2017
General Court: A decision to drink to!

In Case T-250/15, Speciality Drinks Ltd v EUIPO (24 November 2016), the EU General Court upheld the decision of the Board of Appeal which found that there was a likelihood of confusion between the word mark CLAN and the earlier mark CLAN MACGREGOR under Article 8 (1) (b) of the EU Trade Mark Regulation (207/2009/EC). Both of them covering Good and services in Class 33:

'Alcoholic beverages ( excluding beers and wines); but insofar as whisky and whisky based liqueurs are concerned only Scotch whisky and Scotch whisky based liqueurs produced in Scotland'

Relevant public

The applicant argued that Scotch whisky is a drink that is a 'class apart' which is strongly associated with the idea of masculinity, which inspires a devoted following among its connoisseurs and inspires a near cult like devotion in some drinking circles'. The Court found that even if these certain subcategories of Scotch whisky exist, the applicant could not prove that his goods belonged to such a subcategory. Therefore, the Court confirmed that the relevant public would only have an average degree of attention when assessing the likelihood of confusion.

The visual and phonetic comparison

The Board of Appeal held that the signs were visually and phonetically similar to an average degree. However the Court disagreed, stating that the signs at issue only have a low degree of visual and phonetic similarity due to the presence of the element MACGREGOR within the earlier mark- which the Board of Appeal had classified as 'secondary or 'marginal'- and as the applicant pointed out, contains more letters and syllables than the element CLAN.

The Conceptual comparison

The applicant argued that the Board of Appeal did not take into account that the element CLAN is a word that is sometimes used by a large number of people within the EU- including Non English speaker to describe a group of people or a family. The applicant further claimed that when the word CLAN is used in conjunction with MACGREGOR, the element CLAN 'is acting as a qualifying word which helps reinforce the concept of the MACGREGOR family/clan/tribe, rather than a word carrying an independent distinctive meaning'. However the Court again agreed with the Board of Appeal and held that there was a conceptual similarity between the signs, given that in the earlier mark, the element CLAN referred to 'a group of people having a family bond' corresponding to the Macgregors, whilst the mark applied for invoked the concept of such a group in general.

Image result for clan scottishThe Court held that the assessment of the signs must be considered as a whole. The applicant argued that the dominant element of the earlier mark was MACGREGOR and not the element CLAN which is 'descriptive' when used in conjunction with the word element MACGREGOR. The Board of Appeals decided not to categorise the element CLAN as the dominant element in the earlier mark and also found that MACGREGOR was neither secondary nor marginal. Therefore, when carrying out a comparison of the signs at issue, the Court confirmed that there was an average degree of conceptual similarity between the signs at issue.

Finally the Court rejected the applicant’s argument that ‘the number of different traders using the mark ‘clan’ in conjunction with a family name also shows that consumers in this sector would be used to seeing the name ‘clan’ used in conjunction with a family name to designate alcoholic products, and particularly Scotch whisky’, as being of no relevance in the present case. By contrast, and contrary to the applicant’s submission, the absence of the ‘family name’ in the mark applied for means that it is not possible to exclude the possibility of a likelihood of confusion. More specifically, while the element ‘macgregor’ enables the earlier mark to be distinguished from those of other traders in the sector, that does not mean that it also excludes the likelihood of confusion between the signs at issue, in particular since the mark applied for comprises the element ‘clan’ only, which is the element wholly reproduced in the earlier mark.

This summary was prepared by Craig Kelly (Legal Assistant at MARQUES' member Baker & McKenzie)

Posted by: Laetitia Lagarde @ 18.02
Tags: general court, likelihood of confusion, clan, clan mcgregor,
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THURSDAY, 19 JANUARY 2017
Looking for case law? Easier search with eSearch ...

More than 700 key enforcement judgments from 16 EU Member States are now available online in EUIPO’s eSearch Case Law database. The decisions collected, which have set new trends in case-law, include all types of IP rights -- including trade mark rights -- and cover both civil and criminal proceedings.

For further information, just click https://euipo.europa.eu/ohimportal/en/news

Posted by: Blog Administrator @ 03.38
Tags: eSearch Case Law,
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MONDAY, 16 JANUARY 2017
First ETMR of 2017 now out

The January 2017 issue of the European Trade Mark Reports (ETMR) has now been published.

To remind readers, the ETMR is a series of law reports published monthly by Sweet & Maxwell. It contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

The most recent issue contains trade mark cases from the Court of Justice and the General Court, as well as one decision from the Intellectual Property Enterprise Court for England and Wales.

MARQUES members are reminded as usual 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. Communications should be sent to the Editor, Dr Stavroula Karapapa at s.karapapa@reading.ac.uk.

Posted by: Blog Administrator @ 15.25
Tags: ETMR,
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