WEDNESDAY, 22 MARCH 2017
April ETMR now published

The April 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 April issue contains three cases. Two are High Court rulings from England and Wales. One of these was an application by Jaguar Land Rover for summary judgment in an infringement action relating to the DEFENDER trade mark, in which alleged infringer unsuccessfully sought partial revocation on the basis of bad faith. The second was a passing off and trade mark action involving the once inauspicious word "Titanic".

The third case, from the Fifth Chamber of the General Court, has a familiar taste to it, being yet another stage in the battle over the Kit-Kat four-finger chocolate bar shape mark,

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 @ 10.24
Tags: ETMR,
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MONDAY, 20 MARCH 2017
Spreading the word: EUIPO reaches out to OAPI

The information we have received below will probably not affect the immediate workload of our practitioner readers, but it does relate to the general betterment of the intellectual property environment on a global basis for years to come. It relates to the highly successful TMview online search and availability service and it reads like this:

OAPI TMview development visit at EUIPO

Under the framework of the International Cooperation Service, a delegation of IT experts of the African Intellectual Property Organization (OAPI) visited the EUIPO from 13 to 24 February 2017. This visit aimed at planning its integration into TMview in the coming months. TMclass was already implemented and went live on 15 January 2015.

Posted by: Blog Administrator @ 10.04
Tags: TMview, OAPI,
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FRIDAY, 17 MARCH 2017
Surge in WIPO gTLD complaints

We have received word from our friends at the World Intellectual Property Organization (WIPO) that there has been a substantial increase in the number of anti-cybersquatting actions launched before that agency during the past year. This depressing news is hardly surprising, since such an increase has been regularly predicted ever since the new range of generic Top-Level Domains become registrable.  Notable European names among the leading filers are AB Electrolux, Hugo Boss, LEGO and Michelin.

Right: a member of the LEGO litigation team?

The WIPO media release reads like this:

WIPO Cybersquatting Cases Hit Record in 2016, Driven by New Top-Level Domain Names

GENEVA – Trademark owners filed an all-time record 3,036 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) with WIPO in 2016, an increase of 10% over the previous year, with over 1,200 new generic Top-Level Domains (gTLDs) now operational.

Read full press release

Posted by: Blog Administrator @ 09.46
Tags: WIPO, gTLDs,
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FRIDAY, 17 MARCH 2017
There's nothing like training to keep yourself fit -- with the EUIPO

Are you fit to work with one of the best teams in intellectual property -- or do you need to go into training?  

Right: trainees at the EUIPO Observatory can expect to have their hands full ...

The EUIPO is happy to help you get into the right shape for tackling infringements on the big stage by offering some traineeships, including some in the Observatory.  As our friends at the EUIPO tell us:

Every year the EUIPO offers young graduates and professionals the opportunity to carry out a traineeship at EUIPO. The deadline for application this year is Friday 31 March [that's only two weeks from today, so you've no time to lose!], and all the information can be found on the Office’s website: https://euipo.europa.eu/ohimportal/en/traineeships

As a number of trainees will be selected to work in the Observatory [ie the European Observatory on Infringements of Intellectual Property Rights], we would like to ask for your help to spread the word amongst any contacts you may have who may be interested in these programmes. The requirements for the various placements within the Observatory include a university diploma in economics, statistics or a related quantitative social science; in law; or in communication, political or human sciences, or public relations.

This is a great opportunity to work with and learn from some of the keenest minds on the analytical side of IP in Europe, to acquire an (optional) superb tan while boosting your fitness by absorbing lots of health-giving Vitamin D.  Don't miss it!

Posted by: Blog Administrator @ 09.30
Tags: EUIPO Observatory,
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TUESDAY, 28 FEBRUARY 2017
March 2017 ETMR now published

The March 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 March issue contains just two cases. One, from England and Wales, relates to a challenge to the UK's Standardised Packaging of Tobacco Products Regulations 2015. The other, from the Court of Justice of the European Union, relates to the extent of the proprietor's exclusive rights in the fiv-year period following registration.

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 @ 02.37
Tags: ETMR,
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MONDAY, 27 FEBRUARY 2017
Calling the Madrid Registry? Now you can be streamlined!

No, it's the streamlined WIPO Madrid Registry customer query service, flashing into action!

MARQUES has received some encouraging news from our friends at WIPO. According to the communique below:

Madrid Registry Streamlines Customer Queries

As part of ongoing efforts to improve customer service and user experience, we introduced a new Automatic Call Distribution system this morning, Monday, February 27.

Based on the nature of your inquiry, the call will be directed to the appropriate WIPO professional, who will ensure your question is promptly and effectively addressed.

As always, our English, Spanish and French-speaking experts are available Monday to Friday, from 9.00am to 6.00pm (Geneva time) to assist with your requests, including general inquiries and questions about the status of an international application or registration. Find out how to reach us.

More improvements to come! Implementation of the Automatic Call Distribution system is just one part of a broader Madrid Registry initiative focused on delivering better customer service for trade mark owners and representatives.

Over the coming months, we will also deploy new online contact forms and reduce the number of contact points to further streamline customer queries. New and improved e-services and web content are also coming soon to help you access information and manage your trade mark portfolio faster and more effectively.

Posted by: Blog Administrator @ 12.40
Tags: Madrid Registry, Customer services,
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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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