FRIDAY, 2 DECEMBER 2016
General Court rejects marks representing solar panels

In cases T‑578/15 and Case T‑614/15, Azur Space Solar Power GmbH applied for the two marks below

Image not found  and Image not found

for the following goods

–        Class 7: ‘Electronic generators using solar cells’;

–        Class 9: ‘Semiconductors, semiconductor devices, semiconductor devices for solar cells and solar modules, solar cells, solar cells made of III-V material, solar cells having a plurality of band gaps; solar cell modules, solar cell modules with an array of solar cells’.

The EUIPO rejected the marks on the basis that they would be perceived by the relevant specialist public as a very simple schematic representation of the structure or of an array of solar panels. In the Board of Appeal’s view, the fact that that representation is one mere variant of a wider variety of structural possibilities is irrelevant since it will be perceived as no more than an extremely simplified representation of the structure of the solar panel array itself. Thus the applied for marks are devoid of any distinctive character.

The General Court dismissed the appeals and confirmed that the marks which simply consists of six sloping white lines and three rectangular white bricks on a black background or black lines and bricks without any background, do not have any element which is memorable or capable of endowing it with distinctive character. On account of the overall simplicity of the marks, which overall simplicity the applicant itself, moreover, points out in its application, the marks will not make it possible to identify the applied for goods as coming from a particular undertaking and thus to distinguish them from those which come from other undertakings.

Posted by: Laetitia Lagarde @ 20.16
Tags: general court, absolute grounds, solar panels,
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MONDAY, 21 NOVEMBER 2016
Final ETMR for 2016 now published

The December 2016 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, 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.  The second was a challenge launched by Puma against the EUIPO, based on (among other things) an alleged breach of the obligation to state reasons for office decisions, Unusually, this was a challenge that succeeded.

This issue features just two decisions. The first relates to the unsuccessful bid of designer Karen Millen to regain control over the right to make commercial use of her own name

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: Blog Administrator @ 17.40
Tags: ETMR,
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MONDAY, 21 NOVEMBER 2016
Half-price! Likelihood of confusion between two

On 18 October 2016, the Finnish Supreme Administrative Court gave its ruling on the likelihood of confusion between two figurative trade marks both entailing indication of half-price (in Finnish "½ hintaan"). Veljekset Halonen Oy, a Finnish clothing wholesale company, had in 2010 obtained registration (No. 251764) for a figurative trade mark  (text: "½ price days") for clothing, shoes and headgear in class 25.

Faor Oy, also a Finnish clothing wholesale company, known for their Jesper JUNIOR children's clothing and shoe collection, lodged an opposition against the trade mark based on their prior registration  (No. 246488, text: "½ price days") covering in class 25 the same goods as the registration of Veljekset Halonen Oy.

The Finnish Patent and Registration Office found that the marks were not judged as a whole as being confusingly similar. They considered that the textual parts of the marks referred to the same thing, i.e. to a discount campaign offering the products at half price. These parts of the marks were the weak and descriptive parts of the mark. The other parts of the marks and the appearance and the general impression of the marks were thus sufficiently different.

Faor Oy went on to appeal the decision to the Market Court.  The Market Court's view was similar to that of the Finnish Patent and Registration Office as it stated that one should especially take note to the differences between the figurative elements of the marks. In Veljekset Halonen Oy's mark these were the various circles and their disposition and, in Faor Oy's mark, the peculiar expression on the face included in the mark. These distinctive elements resulted in the overall difference between the marks. Faor Oy also claimed that its mark was a trade mark with a reputation but the Market Court considered that the evidence submitted to support this claim was not sufficient.

Still being dissatisfied with the decision, Faor Oy appealed the decision to the Supreme Administrative Court. Faor Oy was of the opinion that the textual part of its mark "1/2 -hintapäivät" was not descriptive and was more of a binding and public price promise. Further they considered that there was a likelihood of confusion as then the dominating text elements of the mark would be similar. They also e.g. stated that the likelihood of confusion would take place due to the phonetic similarities between the marks. Veljekset Halonen Oy on its side leaned e.g. on the fact that the figurative elements of the marks were the most relevant and sufficiently different from each other. Further, even if the text elements of the marks would be compared, Faor Oy would not have a monopoly on such a general price promise.

After evaluating the matter, the Supreme Administrative Court, without giving any written analysis on its reasoning, rejected the appeal. Thus these the marks will now co-exist on the market. It is quite interesting to note that the words indicating "half price days" were actually considered descriptive for the goods themselves, namely clothing, shoes and headgear.

The decision (in Finnish) can be read here.

This item has been kindly prepared for Class 46 by Tiina Komppa (Roschier, Finland)

Posted by: Blog Administrator @ 01.32
Tags: Finland, likelihood of confusion,
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FRIDAY, 18 NOVEMBER 2016
A fortunate opposition? GC decides in FORTUNE HOTELS vs fortune opposition matter

Please see below for a summary of the Jugdment issued by the General Court of the European Union, For Tune v EUIPO, Case T-579/15, 8 November 2016, kindly prepared by Craig Kelly (Legal Assistant at MARQUES' member Baker & McKenzie).

In its recent decision in For Tune v EUIPO (Case T-579/15, 8 November 2016) the EU General Court agreed with the EUIPO's Board of Appeal that there was a likelihood of confusion between the EUTM device mark application 'fortune' and the earlier German mark 'FORTUNE-HOTELS', both covering various services including in Classes 35 and 41 under Article 8 (1) (b)  EU Trade Mark Regulation (207/2009/EC).

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On the point of relevant consumer, the EU General Court agreed with the Board of Appeal that services in Classes 35 and 41 were directed both at the general public and professionals in that sector and as the earlier trade mark was a German trade mark, it was necessary to assess the likelihood of confusion with regard to the German public.

In its appeal to the General Court the applicant had argued that the signs were visually distinguishable as they were spelt differently and were also different in their design.  Unlike the earlier mark, the accent in the application was placed on the element 'for', which was stylised and held in a different colour.  Furthermore, consumers would notice the difference in the length of the signs "FORTUNE" (one word) vs "for tune" (two words). 

The judges  found that the shared dominate element in both signs was the element 'fortune' and this would be noticed in the overall impression of the proposed mark. This was supported by the fact that the English and French word 'fortune' (in the sense of "chance") had entered the German language and so would be understood by the relevant consumer. This finding was inter alia confirmed by the German online dictionary "Duden".  

The court agreed with the Board of Appeal that there was a average degree of phonetic similarity between the marks in question, when taking into the account the absence of the word element 'hotels' in the application. unlike the earlier mark, the accent is placed on the element 'for', which is stylised and in a different colour to that of the mark applied for. The judges also noted that the symbol ®, present only in application and indicating the legal status of that mark, was not pronounced.

Conclusion:

The Court agreed with the Board and held that there was an average degree of visual and phonetic similarity, a certain degree of conceptual similarity and since the similarity of the services had not been challenged, overall a likelihood of confusion between the marks in question under Article 8(1)(b).

On reflection, the two marks are very similar, even with the 'hotel' element included. The application mark 'fortune' although stylised and held in two different colours, does give the impression of just one word .

Posted by: Laetitia Lagarde @ 19.05
Tags: General Court, likelihood of confusion, Fortune, hotels,
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WEDNESDAY, 16 NOVEMBER 2016
Switzerland: if there is a plus in your mark, it's a negative

Kaufland Warenhandel GmbH & Co. KG sought to extend the protection of its international mark CONCEPT+ to Switzerland. The mark sought protection for a number of goods in classes 3, 5, 10, 16, 29, 30, 32. It's mainly used for over-the-counter medicine.

Just pronounce CONCEPT+ in your head. Did you read CONCEPT PLUS? So did the applicant. But the Swiss IPO and on appeal the Federal Administrative Court disagreed. When used in red, the + is a red cross, and as such protected under the Red Cross Act. When used in white on a red background, the cross is confusingly similar to the Swiss flag, which may not be registered as a trade mark according to the National Emblem Act ("Wappenschutzgesetz"). The applicant argued in vain that the thickness of the bars of the "plus sign" was not the same as the thickness of the bars of the Swiss cross. It also pointed in vain to older registrations that contained a plus.

Note that under the revised Wappenschutzgesetz coming into force 1 January 2017, it will be permissible to register marks containing the Swiss cross (but not the Swiss emblem), if the designated goods originate from Switzerland. In the case at hand, the Federal Administrative Court held that the use of the mark would be deceptive, as the goods did not necessarily originate from Switzerland.

The take away for trade mark owners is that under this new practice, the Swiss IPO will in principle not register any word marks containing a plus sign unless you disclaim use in red and use in white on a red background. If you do not disclaim use in white on a red background, you must limit the list of goods to goods originating from Switzerland. Or you positively claim a colour other than red, for example green, which is fine, too.

The only other exception is if in the context of the sign, the "+" is clearly only understood as a plus sign. You could register, e.g., the sign "2+2=4", as in the context, the + is clearly not seen as a cross, but as a mathematical operator. In view of the CONCEPT+ decision, expect this exception to be handled rather narrowly.

On a total side note, a long time ago I used to work for the International Committee of the Red Cross (ICRC). The ICRC is strictly religiously neutral. As you can imagine, driving around in a car with a cross on the side is not unproblematic in certain countries. The ICRC's position is that the Red Cross is not a Christian cross, it is rather a plus sign. I guess the Swiss IPO and the Federal Administrative Court would agree.

Decision B-2781/2014 of 27 October 2016 (PDF, not final).

 

Posted by: Mark Schweizer @ 09.12
Tags: Switzerland, absolute grounds of refusal, geographical indications,
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TUESDAY, 15 NOVEMBER 2016
May I have a CAFFE NERO in General Court?

In cases T-37/10 and T-29/16 the applicant Caffe Nero Group Ltd filed the following EUTM's for goods in Class 30 including 'tea, coffee, cocoa; biscuits; cookies; bread, pastry and confectionery, chocolate bars, chocolate covered coffee beans, etc' and related retails services in Class 35:

Image not found and CAFFE NERO

OHIM held that the Italian-speaking public will understand the expression "caffe nero" as meaning 'black coffee' that is to say, coffee served as a beverage without cream, milk or sugar. Therefore the marks applied for will be perceived as a direct and obvious reference to the nature of the goods and of the services relating to the goods, meaning as an indication that they are or contain black coffee or taste like black coffee.

The applicant appealed alleging that the expression "caffe nero" has no meaning either in Italian or in the Italian coffee culture. Rather, coffee is referred to by using a specific name, not by reference to its colour. It submitted that the Board of Appeal's finding is not supported by any evidence.

The Court rejected the argument as none of the evidence showed that the marks applied for were unusual or might have its own meaning. In this respect, there is no dispute that coffee culture in Italy is rich and varied, with many rules, nuances and idiosyncrasies. Nevertheless, even if it were true that the expression 'caffe nero' were not a part of that culture, it would be incapable of altering the fact that, when faced with that expression, the Italian-speaking public will understand that it refers to coffee served as a beverage without any additions. Therefore, it was irrelevant that there are other terms which might be used more frequently than 'caffe nero' to refer to coffee-based beverages.

So the Court confirmed the refusal to register the marks on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009.

In addition, for some of the goods at issue (namely those corresponding to the following description: 'tea, cocoa, coffee substitutes; herb tea; tea beverages; cocoa and cocoa-based preparations; cocoa beverages; preparations and mixes for making the aforesaid goods; powdered chocolate'), consumers were likely to believe that those goods were or contained black coffee, even if, in actual fact, this was not the case. So the marks were also rejected on the basis of Article 7(1)(g) of EUTMR as they could mislead the public.

**This blogger has never ordered a "caffe nero" in Italy and is unsure what the barrista would bring upon that request (see here for coffee nuances).  Readers of this blog -and coffee aficionados- are welcome to try this experience during their next trip to Italy!

 

Posted by: Laetitia Lagarde @ 21.57
Tags: caffe nero, general court, absolute grounds, descriptive, italy, coffee,
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SUNDAY, 13 NOVEMBER 2016
Latest ETMR now available

The November 2016 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, 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 two reports: one is a fascinating case that has come before the Court of Justice of the European Union in Case C-280/15 Irina Nikolajeva v Multi Project OU on the nature of "special reasons" for a national court not ordering an injunction to prevent use of an infringed EU trade mark and the scope of "reasonable compensation" in respect of use of an EU trade mark after publication of the application but before publication of its registration. The other, a Court of Appeal decision from England and Wales, deals with (among other things) the proportionality of the cost of implementing a blocking order in respect of website advertising and online sales of counterfeit products.

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: Blog Administrator @ 11.42
Tags: ETMR,
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