UK government consults on copycat packaging injunctions

In its latest open consultation the British government's Department of Business, Innovation and Skills (BIS) has called for evidence on whether to give to businesses a new civil injunctive power to stop copycat packaging, under the Consumer Protection from Unfair Trading Regulations 2008 (SI 2008/1277). These Regulations, which implemented Unfair Commercial Practices Directive 2005/29 in the United Kingdom, prohibit misleading commercial practices that can cause an average consumer to take a different transactional decision. Both civil and criminal enforcement are provided for.

When the Regulations were implemented, businesses were not given the power to take civil injunctive action to stop "copycat packaging" or "lookalike products". However, after ome vigorous lobbying, BIS now decided to evaluate whether there could be real benefits in introducing such a power. These might include the transfer of some of the cost of enforcement from the public to the private sector. The deadline for submissions in response to the call for evidence is 19 May 2014. An interim report will be discussed with stakeholders during the summer and publication of the final report is expected for September 2014.

MARQUES members who are likely to be interested in or affected by civil injunctive relief are encouraged to respond to the call for evidence.

Posted by: Jeremy Phillips @ 03.55
Tags: copycat packaging, lookalikes, injunctive relief,
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May ETMR now available

The May 2014 issue of the European Trade Mark Reports (ETMR), a series of law reports published monthly by Sweet & Maxwell, is now available,  The ETMR contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

This issue contains reports on five recent decisions, which include the following:
*Leidesplein Beheer BV, Hendrikus De Vries v Red Bull GmbH, Red Bull Nederland BV, this being the Court of Justice of the European Union ruling on the extent to which the extension of earlier use of a mark similar to a subsequently-registered well-known mark constituted "due cause".
* Lifestyle Supplies VoF v Ultimate Nutrition  Inc, in which the Grand Board of Appeal, OHIM, had to consider the assessment of likelihood of confusion of marks in each of which the dominant element was descriptive.
MARQUES members are again reminded 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.
Posted by: Jeremy Phillips @ 22.42
Tags: ETMR,
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European Trade Mark and Design Network: in black, white and colour

The European Trade Mark and Design Network -- an initiative designed to reduce the differences in practices between the EU national offices and OHIM -- issued a common communication earlier this month on the scope of protection of trade marks registered in black and white.  This 20-page guidance comes into effect on 15 July 2014. Addressing the current divergence in national offices' approaches (some offices give such marks protection for all colours and colour combinations, while other offices only protect them in black and white), the communication sets out the practice for marks registered in black and white and/or greyscale and how to determine whether the same mark in colour is to be considered identical with regard to priority claims and relative grounds for refusal.

The communication does not deal with how to determine whether a black and white mark is considered identical to a trade mark registered in colour, with regard to priority claims and relative grounds for refusal. Nor does it deal with the assessment of similarities between colours, acquired distinctiveness, infringement or colour marks per se

Posted by: Jeremy Phillips @ 12.11
Tags: colour trade marks, black and white trade marks,
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Now WIPO Roves to Portugal

Our friends at the Portuguese Institute of Industrial Property (INPI) and the World Intellectual Property Organization (WIPO) have fixed the next round of WIPO Roving Seminars for Lisbon on 6 May and Porto on 8 May.

MARQUES members will need little reminding that these Roving Seminars present a comprehensive view of the useful functions WIPO can provide to companies, academia, research institutions, lawyers, public administrations and every imaginable species of entrepreneur, creator and innovator. Topics on offer include the Madrid System for the International Registration of Marks, the Global Brand Database and platforms and tools for the connected knowledge economy, such as WIPO Case for Global Dossier, the Digital Access Service. WIPO Lex  and WIPO GREEN. Some seminars are backed by private sessions so that registrants can engage freely with speakers in more specific technical discussions. Programmes and presentations for the Roving Seminars held so far can be accessed by clicking here.

The venue for the Lisbon seminar (click here for the programme and registration details) is the Instituto Nacional da Propriedade Industrial (INPI) located at Rua do Instituto Virgílio Machado, n.º 14, Lisbon. The Porto Seminar (click here for details) will take place at AIMMAP Rua Plátanos 197, 4100 Porto.

The seminar is free of charge but registration with INPI is requested by means of a simple email sent to the following address:

Posted by: Jeremy Phillips @ 10.03
Tags: WIPO Roving Seminars,
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General Court: think you are family of marks?

In case T-356/12, Debonair Trading Internacional Ldª filed an opposition against CTM application in Class 3 :UNIC (Ibercosmetica, SA de CV) on the basis of a series of earlier trade marks registered for Clas3 on the grounds of Article 8 (1) b) CTMR, namely

- SO… ? (CTM)

- SO… ? ONE (UK)

- SO… ? CHIC (CTM)

The opposition was also based on the grounds of Art 8 (4) CTMR on a number of other earlier signs, defined by the applicant in the notice of opposition as being non-registered word marks, protected in the European Union, designating the goods ‘perfumery, cosmetics, deodorants’ and containing the word element ‘so’, most often in the context of the expression ‘so… ?’.

The Opposition Division and Board of Appeal rejected the opposition on the basis of Art 8(1) b) CTMR because the second condition to find a likelihood of confusion with a family of earlier marks was not met, namely it did not have the characteristics capable of associating with the series: the element ‘unic’ in the mark applied for was not an English expression, unlike the expressions following the element ‘so… ?’ in the family of marks relied on. Therefore, the trade mark applied for did not fit into the pattern of those earlier marks, but would be understood as a fanciful expression. The General Court confirmed this conclusion.

However, the GC annulled the Board of Appeal’s decision on the grounds that it infringed Rule 15(2)(b)(iii) of Regulation of CTIMR because the fact that the Opponent had ticked both the ‘non-registered TM’ box with ‘ EM’ box did not render the opposition on ground 8(4) CTMR inadmissible because of a material error (since non-registered TM protection is a national right, the opponent cannot claim a EU wide protection for non registered trade marks). Indeed, the letter accompanying the letter of opposition made it possible to understand the nature and representation of the other earlier signs at issue, and what right those signs were supposed to confer on the applicant in the United Kingdom and in Ireland under the rules on passing off. The GC sent the case back to the Board of Appeal to assess the opposition on the basis of art 8(4) CTMR.

Posted by: Laetitia Lagarde @ 18.39
Tags: general court, likelihood of confusion, so UNIC, so ONE, so CHIC,
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No protection of the mark 'HOT' in Germany

The German Federal Supreme Court (BGH) has recently ruled on the protectability of the figurative sign 'HOT'. Acknowledging the importance of this case, the BGH issued the following guiding principle (loosely translated into English by this member of Class 46):

If a word (here: 'HOT') has various meanings (here: 'heated' as well as 'spicy or piquant' regarding taste and in a figurative sense 'sexy, terrific or great'), which are all descriptive in relation to the goods for which it is registered (here: goods including cleaning preparations, cosmetics, food supplements, printing products and clothing), the measure of interpretation that is required on the part of the relevant public merely due to these different meanings is not enough to confer distinctiveness on that word.

Initially, the trade mark proprietor had successfully extended the protection for the international registration of the mark at issue to Germany. The figurative mark, which consisted principally of the word 'hot' written in capital letters within a rectangular box, was registered in Classes 3, 5, 16 and 25 for the goods mentioned above, amongst other things. However, the German Federal Patent Court (BPatG) subsequently withdrew the protection for the German part of the registration finding that the sign was devoid of any distinctive character, contrary to Section 8(2) No. 1 of the German Trade Mark Act. The Court held that the average German consumer is able to understand both the literal and the figurative meaning of the word 'hot', which is part of the standard English vocabulary. Therefore, the average consumer would be likely to perceive the term as being purely descriptive of the goods covered by the mark or as a general promotional description.

The BGH has now followed this reasoning and dismissed the trade mark owner's appeal. The average consumer would understand 'hot' either as describing the appropriate temperature for the use of the relevant goods (in the case of cleaning products) or as denoting that the products were generally attractive (in the case of the remaining goods). According to the judges, a word may be purely descriptive, even if it is vague or does not "exhaustively" characterise the goods for which it is registered. The Court did not deem the word 'hot' to evoke sufficient ambiguity to grant it protection. In addition, the relevant public would be likely to understand 'hot' - a term frequently used in advertising - as a mere promotional statement. The graphical elements of the mark were not significant enough as to justify a different conclusion.

The BGH's decision should be viewed in conjunction with 'Vorsprung durch Technik' (see case C-398/08 P, reported here). In this case, the CJEU established that marks that are not purely descriptive can express an objective message and still serve to indicate the commercial origin of goods or services, if those marks require at least some interpretation by the relevant public. It could be argued that the English term 'hot' fulfilled these criteria, since the average German consumer had to consider and interpret the various meanings of the term. However, the BGH has now clarified that the effort, which is required merely to interpret different literal and figurative meanings of a single word, is not sufficient for the word to be held distinctive.

It is, at best, difficult to reconcile this result with case T-67/07, in which the General Court granted protection for the word mark 'FUN' claiming that the link between the word 'fun' and the goods applied for (here: land motor vehicles) was too vague, uncertain and subjective to confer descriptive character on that word.

Moreover, the BGH's decision is significant, since the trade mark owner successfully registered the mark 'HOT' in the United States and as a CTM. The judges noted that these previous registrations did not have a binding effect on the Court. This statement falls in line with the General Court's view that neither the OHIM nor the EU Courts are bound by decisions adopted in any Member State, or a third country, finding a sign to be registrable as a national trade mark. The General Court has recently reaffirmed this position in case T-291/12 (reported here and here).

Reference: BGH, decision of 19 February 2014, in case I ZB 3/13.

Posted by: Christian Tenkhoff @ 15.03
Tags: Bundesgerichtshof, BGH, HOT, distinctiveness, interpretation, I ZB 3/13,
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Michelangelo and Botticelli combined are distinctive says German Patent Court

The German Federal Patent Court (BPatG) recently gave a welcome liberal ruling on the distinctiveness of a device mark. The applicant, a private individual, had applied for a device mark showing images of two world famous works of art, Michelangelo's David and Botticelli's Venus. Their heads are joined next to each other and it seems they are gazing into each other's eyes. The application was filed for body and beauty care products in class 3, pharmaceutical preparations in class 5 and for related services.

The court overturned the decision of the PTO, which had rejected the application for lack of distinctiveness. The court thought that the PTO had been correct in finding that both images of Michelangelo's David and of Botticelli's Venus were frequently used in advertising to allude to beauty and health. However, the court disagreed with the PTO's conclusion that therefore, the combination of the two images lacked distinctiveness. Leaving it open whether or not each of the images by itself might be capable of trademark protection, the court said that this was at least true for their combination. It thought that the particular composition, where it seems as if David were looking up to Venus, is unusual and sufficient to lend the mark distinctive character.

This author agrees. The court has accorded due weight to the fact that the trademark applicant has not merely used some commonplace imagery but has creatively combined two well-known metaphors for beauty and health to form an ensemble which reinforces their meaning and equips them with a fresh, almost cheeky, look. It would be welcome if the PTO also took greater care in noticing such nuances. As it is, the PTO is often rather quick in applying a blanket approach when rejecting trademark applications with descriptive tendencies.

Case Reference: 30 W (pat) 14/12 of 6 February 2014.

The decision - in German - is available here.

Posted by: Anthonia Ghalamkarizadeh @ 14.24
Tags: Michelangelo, David, Venus, Botticelli, BPatG, Bundespatengericht, 30 W (pat) 14/12,
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