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,
0 Comments    Post a comment
FRIDAY, 13 JANUARY 2017
New Turkish IP Code now in force: here's how it affects marks

The New Turkish Industrial Property Code (“the IP Code”) entered into force on January 10, 2017.

The IP Code replaces the Decree-laws pertaining to the protection of trade marks, patents, geographical indications and designs, all of which date back to 1995, by bringing all those rights together within the ambit of a single Code.

Among other reforms, the trademark chapter includes changes which achieve greater compliance with the relevant European Union directives. The major changes relate to the trade marks are as follows:

  • The graphical representation criteria for signs to be registered as a trade mark has changed to

    “signs capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.

    So the terminology has been aligned to that of the EU Trade Mark Directive.
  • The terminology for distinctiveness criteria has been changed to resemble EU trade mark legislation.
  • The “co-existence principle” has been introduced into Turkish Trade Mark Law. Accordingly, co-existence agreements and letters of consent will be accepted in overcoming senior identical or indistinguishably similar trade marks from being an absolute ground of refusal by the Turkish Patent and Trade Mark Institute ex-officio.
  • The opposition term has been shortened to 2 months (from 3 months).
  • During the opposition proceedings before the TPI, opponents have to prove genuine use or provide justified reasons for non-use of their trade marks that are the basis for opposition and registered at least for duration of five years, if requested by the applicant.
  • The opposition shall be rejected if such use or justified reason for non-use cannot be proven. This request can also be used as a defence in an infringement action.
  • Bad faith has been added into the code as a separate ground for opposition and cancellation.
  • Signs that contain geographical indications cannot be registered as a trade mark.
  • The cancellation actions due to non-use will be dealt by Turkish Patent and Trade Mark Institute. However, the enforcement date of this provision has been postponed for 7 years with an additional provision. So until 2023, the cancellation actions need to be filed before the IP Courts.

The new IP Code entered into force on January 10, 2017 except some of the provisions of which the enforcement has been delayed, for the trade mark applications which were filed before the enforcement date of the new IP Code, the earlier legislation, the Decree-Laws pertaining to the protection of Trade Marks, will still apply until their registration process will be completed.

Written for Class 46 by Mutlu Yıldırım Köse, Gün + Partners

Posted by: Blog Administrator @ 13.09
Tags: Turkey, IP Code,
0 Comments    Post a comment
WEDNESDAY, 11 JANUARY 2017
General Court: E-Miglia v. Mille Miglia

In Case T‑458/15, The General Court dismissed the action in the following opposition:

Rebel Media Ltd (UK) Applicant

Automobile Club di Brescia (Italy) Opponent

Image not found

Earlier EUTM's registered for the following goods/services below

 

MILLE MIGLIA

 

–        Class 12: ‘Vehicles; apparatus for locomotion by land, air or water’;

–        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 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; travel trunks and suitcases; umbrellas, parasols and walking sticks; whips and saddlery’;

–        Class 25: ‘Clothing, footwear, headgear’;

–        Class 35: ‘Advertising, in particular for competitions with electrical vehicles; organisation and arranging of advertising events; commercial sponsoring, also on the internet; business management; business administration; office functions’;

–        Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.

 

Class 41-Entertainment; services inherent in entertainment; entertainment services in the form of games, interactive games, video games, provided online by databases or sites on the World Wide Web; publication of books and other publications’;

 

Some goods in Classes 12, 18 and 25

 

goods in Class 14, services in Class 35 and corresponding to the following description: ‘Organisation and conducting of trade fairs, exhibitions, for commercial or advertising purposes, retail services, also provided online, relating to the following goods: soaps, perfumes and cosmetics, helmets, glasses, lenses, cases and chains, ground vehicles, their accessories and parts, bicycles, jewellery, precious stones, horological and chronometric instruments and their accessories, brooches, key rings, books, magazines, newspapers, brochures and flyers in general, diaries, leather goods, bags, sports bags, backpacks, wallets, purses, furniture, fabrics and textile products, bed covers and blankets, clothing, headgear, footwear, games, toys, playing cards, wines and alcoholic beverages, tobacco, smokers’ articles, matches

The Fifth Board of Appeal of EUIPO first found that given that the earlier rights are EU trade marks, and that goods and services at issue are directed both at the public at large (for example, ‘clothing’ in Class 25) and at the professional public (for example, ‘business management’ in Class 35) therefore, the level of attention of the relevant public could vary from average to high.

Concerning the comparison of the marks at issue, first, there is visual similarity between those marks, given that they had a common element ‘miglia’ and, to a certain extent, also due to the fact that they had in common the letter ‘e’ preceding the element ‘miglia’. Secondly,  there are obvious differences: 1) the relevant public will notice that the earlier marks begin with the word ‘mille’ whereas the mark applied for begins with the prefix ‘e-’ ; 2) differences linked to the stylised letters represented in white, a colour that contrasts with the black background in the shape of a parallelogram, in the mark applied for. Although those figurative elements are  essentially decorative, they could not be regarded as completely negligible in the overall impression given by that sign. So the marks are therefore visually similar to a low degree.

Concerning the phonetic aspect, in spite of the differences linked to the rules of pronunciation applicable to the relevant languages, the pronunciation of the marks at issue would be seen as similar to the extent that the final sound ‘miglia’ was identical. So the marks at issue are therefore phonetically similar, although that similarity was below average.

Concerning the conceptual aspect, the combination of words ‘mille miglia’ means ‘thousand miles’ in Italian. At least the Italian-speaking part of the public will spontaneously establish a link between the earlier marks and the (endurance) motorcar race which was held in Italy from 1927 to 1957 and which was subsequently transformed, as from 1977, into an event reserved for vintage cars. The earlier marks will thus convey a concept that is clearly distinguishable from that of the word ‘miglia’ alone or, even more so, from the combination ‘e-miglia’. For this reason, there is even a conceptual difference between the signs at issue on the part of the Italian public.  For the rest of the EU public, Rebel Media had argued that the expression ‘miglia’, in the sense of unit of measure and length, will be understood not only in Italy and in Italian, but also in most of the countries of the European Union. By way of example, the applicant cites ‘milje’ (Albanian), ‘meilen’ (German), ‘miles’ (English), ‘millas’ (Spanish), ‘miili’ (Estonian), ‘miles’ (French) and ‘milhas’ (Portuguese). However, as EUIPO has rightly observed, this claim is unfounded. The degree of similarity between these words and ‘miglia’ is not sufficiently high to find that consumers would think that they possess the same meaning. The applicant had not, moreover, provided any evidence in support of its argument. The same conclusion applies concerning the argument that, taking account of the reputation of the motorcar race, a large part of the consumers in the EU will make a connection between the marks at issue and that race.

Therefore, for a considerable part of the consumers in the relevant territory outside of Italy (for example in Germany, Holland, Poland, Sweden and the United Kingdom), the expression ‘mille miglia’ is meaningless. For that part of the public, there is a certain conceptual difference to the extent that the initial part ‘e-’ of the intervener’s sign evokes a concept relating to electronics. The BOA held, however, that it was not likely that those consumers would attach a lot of importance to that feature, given the widespread use of that prefix and the fact that that part of the public will more easily recall the more distinctive element ‘mille’ in the earlier marks.

The intrinsic distinctive character of the earlier marks is normal, because the combination of words ‘mille miglia’ would be perceived as a fanciful element by a substantial part of the relevant public outside of Italy.

Consequently, there is likelihood of confusion or the public that would understand neither the combination of words ‘mille miglia’ nor the element ‘miglia’, but only with regard to the goods and services deemed identical. Therefore, the opposition was upheld for the goods in Classes 12, 14, 18 and 25 and the services ‘organisation and arranging of advertising events’ in Class 35 and ‘entertainment’ in Class 41 covered by the mark applied for. On the other hand,  the opposition was rejected concerning the remaining services included in Classes 35 and 41.

***

For more info on this historical car race, click here.

For another famous MILLE MIGLIA in Italy, see here.

Posted by: Laetitia Lagarde @ 19.51
Tags: General Court, likelihood of confusion, Mille miglia, car,
0 Comments    Post a comment
MONDAY, 9 JANUARY 2017
Coexistence agreements: the MARQUES workshop comes to Sofia
The celebrated MARQUES Coexistence Agreement Workshop is on the move again!  This time it's heading for the lovely city of Sofia, Bulgaria, on Wednesday 1 February 2017. According to the MARQUES website:
 

The objective of this workshop will be to sensitise participants to the commercial and legal issues that arise when the potential conflict of two or more businesses with similar brands and trade marks may be avoided by negotiating a prior rights agreement ('coexistence agreement'). 

Further details are available from the MARQUES website here.  Everyone is welcome, but you had better practise your Bulgarian if you want to make the most of the event since that's the language of the Workshop.

 

 

Posted by: Blog Administrator @ 20.00
Tags: Workshop, coexistence agreement,
0 Comments    Post a comment
MONDAY, 2 JANUARY 2017
Welcome to 2017!

On behalf of all the members of the MARQUES Class 46 blog team, here's a reminder that, when dating documents and transactions, we have made the annual transition from the old date to the new.  Don't forget (as if you would!) -- it's now 2017.

Let's hope that the new year will be a year of peace and prosperity both within our little world of trade marks and brands and well beyond it

Posted by: Blog Administrator @ 13.02
Tags:
0 Comments    Post a comment
FRIDAY, 23 DECEMBER 2016
Madrid at 125: the Year in Review

Class 46 has been going for a while now and it's quite old by blog standards, but it's still a baby compared with the Madrid System for international protection of trade marks, which this year commemorated the 125th anniversary of its founding treaty, the Madrid Agreement [some cynics might say that this isn't much to celebrate, since the original Agreement was little better than useless for the vast majority of countries on this planet -- but things really changed once the Protocol kick-started the real, modern processes that we nowadays are in danger of taking for granted]. During this landmark year, the Madrid System experienced its seventh consecutive year of growth, and a record number of international applications filed. Other notable achievements included:

  • growing membership and commitment to accession by key trading markets including Brazil and Canada [and about time too!];
  • the registration of mark number 1.3 million (a figurative representation of the word skinstudio);
  • suspension of Articles 14(1) and (2)(a) of the Madrid Agreement, effectively creating a one-treaty system with a single set of rules under the Madrid Protocol; and
  • redesigned e-services and new web content to support users throughout the lifecycle of their marks. 

Looking ahead to 2017, members and users can expect continued evolution in WIPO's online resources, including the launch of a new Member Profiles Database (Member Procedures), as well as additional information on how to use the Madrid System and Madrid e-services.

Posted by: Blog Administrator @ 03.23
Tags: Madrid System,
0 Comments    Post a comment
WEDNESDAY, 21 DECEMBER 2016
Be guided and expect miracles! Important message from EUIPO

Apologies for the cross-posting, but this news item is of as much significance to the trade mark fraternity as it is to our cousins in the design sector, so we are posting this on Class 46 as well as on Class 99 -- our international design law blog on which this item first appeared.

If you are a creature of habit, you probably don't like changing things much, However, the New Year is a great time for resolving to change one's practices, and this may well be why the EUIPO Examination Guidelines are up for amendment at precisely this moment. Change in line with the Guidelines and your success rate before the Office may miraculously improve!

Decision of the Executive Director adopting the Guidelines for Examination of EU Trade Marks and Registered Community Designs

On 12 December 2016, the Executive Director of the EUIPO signed the Decision adopting the first part of the revised Office Guidelines, which received a favourable opinion from the EUIPO’s Management Board in November. The Guidelines will enter into force on 01 February 2017.

The new Guidelines will be published on the EUIPO website on the Current trade mark practice and Current design practice pages.

The Guidelines have been fully updated with case law from the Court of Justice of the European Union and from the EUIPO’s Boards of Appeal. The revised Guidelines will increase consistency and predictability for users, and are aligned with the goals of the EUIPO’s Strategic Plan.

In the January edition of Alicante News (to be published on 03/01/2017), there will be an article that will highlight the main changes in the Guidelines. These changes will also be discussed during a webinar, available to all our internal and external users, which will take place on 10 January 2017.

Posted by: Blog Administrator @ 13.55
Tags: EUIPO, Examination Guidelines,
0 Comments    Post a comment