FRIDAY, 23 JANUARY 2015
Switzerland: renewal snatching is unfair competition

A WIPO expert's decision under the SWITCH dispute resolution policy (for .ch and .li domains) is the first case under Swiss law that deals with "renewal snatching", i.e. registering lapsed domain names (also called extension exaggeration, or alert angling).

The facts of the case are such that the Claimant is the owner of a Swiss trademark for SHOP4 covering various advertising and software related services in classes 35 and 42 ("the Trademark") which was registered on January 19, 2010.

A company affiliated with the Claimant (Internet Explorer GmbH which is managed and controlled by the same person and of which the Claimant is a partner – "Gesellschafter") was the owner of the Domain Name until July 21, 2014 until that company lost the Domain Name because of apparent problems of communication with SWITCH which caused the renewal payment to be late.

The Domain Name was registered on August 5, 2014. It resolves to a website on which sport shoes are offered for sale and redirects to another domain name for this purpose (i.e.) which reflects the NIKE trademark, whereby shoes of different brands are offered for sale on this website (i.e. NIKE and BIRKENSTOCK).

The expert held that there was no clear infringement of Claimant's trade mark rights due to the lack of similarity of the products for which the SHOP4 mark claimed protection and the goods offered on Respondent's website.

He held, however, that the snatching of the domain name was unfair competition and ordered the transfer of the name. In the expert's view, the Respondent's conduct violated the Swiss Unfair Competition Act (UCA). The Respondent's action of registering the Domain Name immediately after a company affiliated to the Claimant lost the registration of the Domain Name because of an error during the renewal process, amounted to an unfair and unlawful practice within the meaning of Article 2 UCA.

While the "first come, first served" rule applied for ".ch" domain names as provided by article 2.2 of the General Terms and Conditions (GTC) for the registration and administration of domain names under the domain ".ch" and ".li", this rule did not and cannot prevent from holding that the registration and use of a domain name can constitute a violation of third party rights in certain circumstances.

A company affiliated with the Claimant was the registrant of the Domain Name until July 2014 and the Claimant was the legitimate owner of a trademark for SHOP4 in Switzerland since 2010 (i.e. the Trademark) that is reflected in the Domain Name. Respondent has not participated in these proceedings and it has not conclusively pleaded and proven any relevant grounds for defense. No justifiable reasons have been brought forward by the Respondent in order to justify its conduct, particularly about the choice to register the Domain Name (which corresponds exactly to the Trademark registered by the Claimant in Switzerland) very shortly after it was available for registration. In addition, this Expert noted that the Respondent could not be reached by the Claimant under the registered WhoIs contact information which corroborated further the impression of unfair conduct in this case.

The outcome of the case is correct in my opinion, but the expert carefully avoided addressing the big elephant in the room: under the SWITCH dispute resolution policy, domain names can only be transferred or cancelled in case of a clear infringement of a right in a distinctive sign 

An elegant way of achieving substantially the same outcome might have been to simply point out to the registrar that the WHOIS information was likely false (given that noone could be reached there), which is ground for cancellation of the domain name registration (SWITCH General Terms and Conditions, Sect. 3.3.2)

Case No. DCH2014-0021 of 26 December 2014

Posted by: Mark Schweizer @ 15.21
Tags: Switzerland, domain name, dispute resolution, renewal snatching,
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FRIDAY, 23 JANUARY 2015
New IP blog on pharmaceutical trade marks

I am pleased to bring a newly launched blog to our readers' attention. www.pharmaundmarke.com is an IP blog exclusively dedicated to pharmaceutical trade marks. The blog covers all relevant European and German case law on the topic. In addition to regular posts, case reviews will be included in a monthly newsletter and in an annual journal. The latter will also include exclusive articles. The first edition will feature various articles on the protection of product packaging. While the blog is currently written in German only, the newsletter and the magazine will also feature English abstracts and summaries.

I trust that many readers of Class 46 will appreciate this easy to use platform and its specialised, high quality content.

The blog is intended as an open platform and any Class 46 reader who would like to contribute is welcome to contact the blog's editor, my esteemed colleague David Slopek, at slopek@pharmaundmarke.com.

Posted by: Anthonia Ghalamkarizadeh @ 11.04
Tags: pharmaundmarke.com,
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FRIDAY, 23 JANUARY 2015
New pharma marks blog welcomes contributors

A newly-launched blog may be of interest to Class 46 readers: it's www.pharmaundmarke.com, an IP blog exclusively dedicated to pharmaceutical trade marks. The blog covers all relevant European and German case law on pharmaceutical trade marks. In addition to regular posts, case reviews are promised in a monthly newsletter as well as in an annual journal which will also include exclusive articles on pharmaceutical trade marks. The first edition will feature various articles on the importance and protectability of product packaging.

While the blog is currently in German only, the newsletter and the magazine will also feature English abstracts and summaries.

Many readers of Class 46 will no doubt appreciate the easy to use platform and specialised high quality content. The blog is intended to be an open platform and any Class 46 reader who would like to contribute is welcome to contact the blog's editor David Slopek (slopek@pharmaundmarke.com).

Posted by: Jeremy Phillips @ 11.03
Tags: blogs, pharmaundmarke,
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THURSDAY, 22 JANUARY 2015
General Court: Cat&Clean v. Clean Cat

The General Court just issued a Judgment in  Case T-587/13 (cat&clean) where our dear colleagues at IPKat make the relevant consumer per excellence.

Image not foundMrs  Schwerdt filed for the CTM (here left) for class 31 “cat litter”. Iberamigo SA filed an opposition on the basis of earlier Spanish word mark CLEAN CAT (a pleonasm in itself) for “litter soil” in Class 31.

Both the Opposition Division and Board of Appeal granted the opposition: visually, the conflicting signs coincide with the words "cat" and "clean", although they are not placed in the same order, and differed in their figurative elements. Aurally, the signs at issue were similar to a medium level and, conceptually, those signs convey the same concept, except for part of the Spanish public who doesn’t understand English.  The earlier mark has a distinctive character. Thus there is a likelihood of confusion between the signs for identical goods.

The General Court rejected the first plea in law brought by the CTM applicant and confirmed the risk of confusion on the grounds of Article 8 (1) b)CTMR.

The appellant saw its two other pleas in law rejected as well:

1)      the claim that the possible to register a descriptive sign such as “Clean cat” for ‘cat litter’ in Spain would constitute a disguised restriction on trade contrary to Article 34 TFEU. The Court dismissed this argument reminding the applicant that the distinctive character of the earlier mark cannot be disputed in the context of an opposition  procedure (see Judgment of  24 may 2012, Formula One Licensing/OHMI).

2)      As regards an alleged violation of articles 16 and 20 of the Fundamental Rights convention, article 17 provides for the “peaceful enjoyment of property rights” including IP rights, therefore the opponent has an intellectual property right that has not been challenged, and which effects which cannot be challenged in these proceeding.

 The GC dismissed the appeal.

Posted by: Laetitia Lagarde @ 14.11
Tags: General court, cat, clean, litter,
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THURSDAY, 22 JANUARY 2015
WIPO Roving Seminars head for Brussels

Since the Benelux Office for Intellectual Property (BOIP) is such a distinguished and highprofile institution in the world of intellectual property, and since "Benelux" is such a famous brand for a group of countries, it should not be forgotten that Belgium is a country in its own right, with its own beers, chocolates and IP office. Indeed, it is the Belgian Office for Intellectual Property (OPRI), together with the World Intellectual Property Organization (WIPO) and BOIP, which is hosting an upcoming half-day WIPO Roving Seminar next month in Brussels.

The seminar, descriptively entitled “WIPO Services and Initiatives”, takes place on 23 February 2014 from 9:00 till 13:00. At this event, senior WIPO representatives will lead an interactive programme of discussions that will be of interest to anyone involved in the international protection of IP rights.

Participation is free of charge but registration is obligatory. More information and the registration form can be accessed by clicking here.

There's no need to bring your own beer or chocolates, since refreshments and indeed lunch are provided.

Posted by: Jeremy Phillips @ 10.13
Tags: WIPO, Roving Seminars, Belgium,
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WEDNESDAY, 21 JANUARY 2015
"Intellectual Property: Use it or Lose it?",

The CIPIL Annual Spring Conference 2015, "Intellectual Property: Use it or Lose it?", takes place in the Faculty of Law, University of Cambridge, on Saturday, 7 March 2015, from 10.00 am-5.00 pm.  According to the organisers:

This one day conference seeks to explore the apparently increased place of the obligation of use within intellectual property law. We begin with a review of recent developments in case-law and legislation across the three fields (trade marks, patents, copyright). We conclude by reflecting on the relationship between obligations to use and property rights, the harms caused by those holding but not using IPRs, and various ways in which use might be incentivised (including pricing mechanisms imposing penalties for non-use), and issues of territoriality.

Different fields of intellectual property law operate with different expectations as to whether an intellectual property right owner will exploit their intellectual property, and how the law should respond if the rightholder decides not to do so.

Trade mark protection was (in Britain, at least), for some time, premised on the idea that the trade mark owner was using the mark, and, even when registration came to be permitted prior to use, provisions were introduced limiting the effects of marks that had not been used and making possible their revocation. In passing off, if a trader who has built up goodwill ceases to trade (or ceases simply to use the sign with which the goodwill has become associated), the goodwill is presumed gradually to dissipate.

Patents and copyright are also addressed in light of the same theme. Mr Justice Arnold is in the chair and speakers include Hazel Carty (University of Manchester, on Dissipation of goodwill), Emma Himsworth QC (One Essex Court, on genuine use), Professor Robert Burrell (University of Sheffield, on proper reasons for non-use), Professor Robert Bone (University of Texas, on what is wrong with not using IP?), Henning Grosse-Ruse Khan (University of Cambridge, on the idea of use in the global marketplace) and Professor Georg von Graevenitz (UEA London, on empirical evidence and incentives to use).

MARQUES Council Member Roland Mallinson has asked Class 46 to bring this unusual and highly-focused event to the attention of our readers, which we are happy to do.

There is also a drinks reception kindly, sponsored by Cambridge University Press

Cost: £90 (full rate), £65 (academic rate), £45 (student rate). To book a place via the electronic booking system here, or email Sophie Eastwood here.

Posted by: Jeremy Phillips @ 22.50
Tags: CIPIL spring conference 2015,
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TUESDAY, 20 JANUARY 2015
Zubrowska in General Court: of bisons, grass and vodka

The following opposition was filed in case T-235/12 where the opponent had issues demonstrating genuine use of its earlier marks:

 

Underberg (Switzerland)

CEDC International (Poland) – earlier French, German, Polish rights etc

 
(A greeny-brown blade of grass in a bottle, the length of the blade of grass is approximately three-quarters the height of the bottle)

 Image not found

 

 (bottle as represented above inside which a blade of grass is placed almost diagonally in the body of the bottle)

Class 33 ‘spirits and liquors’

Class 33

 

Both the Opposition Division and the Board of appeal found that the evidence provided was insufficient to establish genuine use of the earlier 3D French mark and that the presence of a label containing the term ‘żubrówka’ and the representation of a bison on the bottle marketed altered the distinctive character of that mark in the form in which it was registered. Further, as a result of the presence of the label, it was impossible to see what was behind it on or in the bottles.

In particular, the Board of Appeal began by observing: the two affidavits produced - one from the Image not foundFinancial Director and the President of [the applicant] and one from the CEO of Pernod SA, the exclusive distributor of [the applicant’s] ‘Żubrówka’ vodka for the territory of France - state that during the period 2000 to 2004 “every bottle of ZUBROWKA vodka that was sold in France was packaged in a bottle that contained a blade of bison grass that is the same as the design depicted in French registration No 95 588 457”. Attached to both affidavits is the following presentation of the ZUBROWKA branded vodka as it was declared to be sold in France during the relevant period [23 June 1998 to 22 June 2003]:

 

The evidence further comprises a certain number of leaflets aimed at French distributors concerning the years 1999 to 2002, showing the following presentations of ‘Żubrówka’ vodka and the evidence included a certain number of leaflets from the years 2003 to 2006 distributed by French supermarkets showing the following presentations of ‘Żubrówka’ vodka

Image not found 

However, it emerged from the contested decision that the BoA only took into account the evidence produced before the Opposition Division and did not exercise its discretion to take into account evidence of use produced for the first time before it, in particular Mr K.’s statement and the photographs appended, as well as the articles from the French press and the extracts from French websites.

The Court found that first, Mr K.’s statement and the appended presentations of the bottle, seen from the front, two opposite sides and the back (see below), were, prima facie, likely to be truly relevant to the outcome of the opposition brought before OHIM since, had they been taken into account, they would have been likely to call into question the Board of Appeal’s assessment: first, that ‘the diagonal line was not affixed to the outside surface and did not appear on the label itself’; second, that ‘as a result of the presence of the label, it was impossible to see what was behind it on or in the bottles’; and, third, that ‘in those circumstances, the applicant had not proven the nature of use of its earlier three-dimensional French mark’

 Image not found

Indeed, presentations from the side and the back of a three-dimensional mark are, as a rule, likely to be truly relevant for the purposes of assessing the genuine use of that mark and cannot be rejected solely on the ground that they are not reproductions from the front.

Similarly, the articles from the French press and the extracts from French websites stating, in essence, that Żubrówka vodka with the ‘famous bison grass’ ‘is easily identified thanks to the aromatic blade of grass present in the bottle’ were, prima facie, likely to be relevant to the outcome of the opposition brought before OHIM, since taking them into account would have facilitated proof of genuine use of the earlier French mark on French territory during the relevant period.

 Accordingly, in failing to exercise its discretion in an objective, reasoned manner, to decide whether or not to take into account the evidence of use of the earlier 3D French mark produced for the first time before it, the Board of Appeal infringed Article 76(2) of CTMR and also Article 75 of the same regulation by failing to give reasons for its decision on the matter.

Thus the General Court annulled the contested decision sending it back to the BoA to assess, in keeping with the guidance from the case-law and the present judgment, taking due account of all the relevant circumstances and providing reasons for its decision on the matter, whether or not account must be taken of the additional evidence submitted by the applicant for the first time before it, in order to make the decision in this opposition.


Posted by: Laetitia Lagarde @ 14.28
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