FRIDAY, 19 AUGUST 2016
General Court: Kristal (fig) v. Modas Cristal/ Home Cristal (fig)

In Judgment T-345/15, the General Court upheld the following decision to dismiss an opposition:

Zorlu Tekstil Ürünleri Pazarlama Anonim Sirketi

Modas Cristal, SL

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Earlier Spanish marks:

MODAS CRISTAL

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- Class 24: 'Fabrics for textile use; Nonwoven textiles; tissue fiber glass textile use; fabric impervious to gases for aeronautical balloons; fabric of imitation animal skins; lining fabrics; buckram; filtering materials (textiles); curtains; shower curtains of textile or plastic; linens;table mats (not of paper); napkins of textile; bedspreads; sheets; pillowcases ; cushion covers and covers for quilts, furniture coverings of textile, towels (textiles), prayer rugs of textile, paper blankets, quilts, blankets; bath linen (except clothing); towels of textile; wall hangings of textile; handkerchiefs (textile); tissues for removing textile; pennants (not of paper), cloth labels ";

- Class 26: "Lace and embroidery, lace for border, festoons, ribbons; buttons for clothing, hooks and eyes, hoops, zippers; belt buckles and shoe buckles, rivets, bands for sleeves, pins; shoulder pads for clothing; needles, pins, knitting needles, crochet hooks, embroidery needle cases, sewing needles; artificial flowers, artificial garlands, artificial fruits; hair nets, hair bands, barrettes (hair slides), non-electric curlers, hair waving pins; false hair, tresses of hair, false mustaches, false beards; numerals or letters for marking linen ";

- Class 35: 'Retail Services, rally, for others, of a variety of goods, namely fabrics for textile use, non-woven textiles, fabrics for textile use glass fibers, fabrics tight gas for balloons, fabrics of imitation animal skins, linings (textile), buckram, filtering materials (textile), curtains, shower curtains of textile or plastic, household linen, table cloths (not of paper), napkins textile, bed covers, sheets (textile), pillowcases, cushion covers and quilts, textile coatings of furniture, cloth napkins, prayer rugs of textile, paper bedspreads, quilts , blankets, bath linen (except clothing), towels of textile, wall hangings of textile, handkerchiefs of textile, tissues for removing textile, flags (not of paper), labels (cloth) lace and embroidery, lace for border, festoons, ribbons, buttons for clothes, hook and eyes, hoops, zippers, belt buckles and shoes, rivets, bands for holding sleeves, laces, shoulder pads for clothing, needles, pins , knitting needles, crochet hooks, embroidery needle cases, sewing needles, artificial flowers, artificial garlands, artificial fruits, hair nets, hair bands, hair clips, non-electric curlers, pins hair waving, hair hairpieces, hair braids, false mustaches, false beards, numerals or letters for marking linen, enabling customers to view and purchase those goods in shops of wholesale and retail, electronically and in catalogs . "

 

Class 35 and corresponding to the following description: "Award Services franchises on aid to the operation of manufacturing companies of apparel and related accessories, sales representation services, import and export, market research services, service public relations, sales promotion services for third parties, advertising services and retail services in commercial establishments and through global networks of manufacturing apparel and accessories thereto, as well as lingerie items, articles for the home and imitation jewelery ";

Class 24 and designating the fabrics and textile goods not included in other classes; bed linen and table,

 

The EUIPO held that the use of the earlier word mark had not been established. The Opponent produced the following documents to establish genuine use

 

- The sworn statement of Jose Reyes Rivero, director of the applicant;

- 27 bills to suppliers, established on behalf of Modas Cristal SL;

- 16 receipts for taxes levied on economic activities (hereinafter "IAE");

- 10 invoices for advertising services established in the name of the applicant;

- Copies of the Internet page of the applicant.

The products sold in the bills were: shirts, pants and dresses for women, women's groups and blouses, duvets, towels, ironing board covers, cushions, tablecloths and table oilcloth covers -beds and pillows. Nevertheless, the earlier word mark covered services in Class 35 which are not covered by the invoices and, the goods covered only a fraction of products such as clothing, items of lingerie and homeware. Thus, the invoices did not prove that the applicant provided retail sales services under the earlier word mark.

Secondly, there is no likelihood of confusion in the mind of public between the earlier figurative mark and the contested mark. Although the verbal elements constitute an important aspect of these marks, the representation of various shapes and colors certainly played a key role in the visual perception of those marks. The earlier figurative mark is composed ​​ prominently (due to its large size and its red color) by the English word "home" in lowercase and in a standard typography, where the letter "o" stands out particularly in the form of a large red circle containing the silhouette of a house, followed by a small circle of size much smaller. The term "crystal" in capital letters in green, appears second, under the letter "e" in a stylized typography. The mark consists of the word "kristal" written in capital letters in a standard typography with white characters. A small white star is shown above the capital letter "I". Everything is included in an oval on a dark pink background, to which is added in its top and bottom, a line of light pink color giving relief to the oval. Furthermore, according to the Board of Appeal, even assuming that the Spanish public understands the term "home" ( "casa" in Spanish, or "house" in French), the latter being considered a basic word and one in English common usage, it is indisputable that despite its weak distinctive character it captures the visual attention of the consumer who observes the earlier mark.

 Moreover, as rightly emphasized by the EUIPO, products included in class 24 include, in general, fabrics and textile products and these are products sold in stores where consumers choose the products visually, since their purchase requires a preliminary visual examination more or less detailed product and brand to assess closely the quality of the material, texture, cutting, patterns, etc. Therefore, when purchasing the relevant public perceives the mark visually which means products, so that the visual aspect is more important than the phonetic aspect in the overall assessment of likelihood of confusion. Thus the Board of Appeal concluded correctly that there was no likelihood of confusion within the meaning of Article 8 paragraph 1 b) of CTMR.

Posted by: Laetitia Lagarde @ 13.07
Tags: General court, likelihood of confusion, kristal,
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WEDNESDAY, 17 AUGUST 2016
Karen Millen fends off Karen Millen in own-name battle

Drapers Online has reported today that a High Court for England and Wales has rejected the legal claim of designer Karen Millen to be allowed to use her own name on homeware products in China and the United States.  The decision did not turn on trade mark law as such, but rather on the terms of a commercial agreement under which Millen sold the use of her name to the eponymous company that was set up to exploit it.  

The full judgment, delivered by intellectual property specialist, Deputy Judge Richard Meade QC, runs to over 360 paragraphs. You can read it here.

Posted by: Blog Administrator @ 11.15
Tags: own-name,
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TUESDAY, 16 AUGUST 2016
"Should've" receives approval in the UK

The BBC website reports this morning that UK-based optician chain Specsavers -- well known to readers of this weblog following its pursuit through the courts of infringing supermarket chain Asda (which required a ruling from the Court of Justice of the European Union, noted here on Class 46) -- has secured a UK registration of the word(s) "should've".  "Should've" is a colloquial contraction of the subjective form of the verb "have" (= "should have'). While the term is prima facie not particularly promising territory for trade mark registration, the expression "should've gone to Specsavers" is widely known by consumers in the UK.

Posted by: Blog Administrator @ 11.20
Tags: registrability,
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THURSDAY, 11 AUGUST 2016
General Court: ConnectedWork fails on absolute grounds

For Class 46 readers wishing to catch up on EU case-law during summer holidays, keep reading about Case T-491/15 where Volkswagen AG filed a EU trademark application for ConnectedWork for the following  goods/services:

-Class 9: 'recorded content; audiovisual equipment and information technology; remote control apparatus, remote controls; antennas, vehicle navigation apparatus; mobile phones ; telephone apparatus; televisions; videophones; radios; compasses, navigation devices, navigation next generation connexted car platforms in the near future?instruments; telematic devices; telematic terminals; videophones, photo telegraphy apparatus; electronic translation devices (computers), electronic pocket translators; calculating machines, data processing equipment, computers, PDAs, fax machines, monitors (computer hardware and computer programs), devices adapted for use with computers, computer programs and software recorded and downloadable, in particular electronic data connections; pocket calculators; downloadable electronic publications; downloadable video files ";

- Class 38: 'Telecommunications; telecommunications; compilation and communication of information (news agency), news agencies, telecommunication via platforms and portals on the Internet, providing access to information on the Internet, electronic exchange of messages using lines discussion forums and chat rooms on the internet, electronic mail, rental of telecommunication devices, radio and television programs, electronic mail; telecommunications information; providing access to users to global computer networks; providing telecommunications connections to services to global computer networks; providing access to users with computer programs on data networks; provision of discussion forums on the Internet; provision of video conferencing services; communication services via mobile phones; transmission of messages and images assisted by computer; call services (radio, telephone or other means of electronic communication); satellite transmission; telephony services and mobile telephony; telephone; Sending messages (telecommunications); rental of telecommunications equipment; rental of apparatus for transmitting messages; leasing access time to global computer networks; providing access to databases; Telematic Services; telematics communication services; sending data and document transfer via telematics;advice and information relating to all the aforesaid services included in this class ";

- Class 42: 'Services of information technology, namely development, programming and software implementation, hardware development, hosting, software as a service and software, rental of equipment and facilities IT consulting services, advice and information relating to information technology, security, protection and restoration of information technology, conversion and data copying, data encoding services, analysis and computer diagnosis, research and development and qu'implémentation of computers and computer systems, computerized project management, data mining, digital tattoos, iT services, technology services concerning computers, computer networks services, services updating of computer systems memory banks, data migration services, updating of websites for third parties, control computer systems by remote access; creating web pages on the internet for others; advice and information relating to all the aforesaid services included in this class. "

The General Court dismissed the appeal. The sign ConnectedWork can be understood by the relevant public as indicating that the goods and services concerned may be connected together or connected to a network and allow you to perform work while connected. This meaning does not require the relevant public "a certain amount of personal creativity" as the applicant suggests.  The sign in question is a direct understandable slogan by the relevant public and it conveys a broader message about all products and services in question. Considering that none of its elements allow the relevant public to perceive the ConnectedWork sign as an indication of the origin of the goods and services concerned, the Board of Appeal correctly concluded that it is devoid of distinctive character within the meaning of Article 7, paragraph 1 b) of CTMR and therefore could not be registered.

Posted by: Laetitia Lagarde @ 19.34
Tags: ConnectedWor, General court, absolute grounds,
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TUESDAY, 9 AUGUST 2016
Home of the Espadrille!

It may be a little known fact that the “espadrille”, that popular summer shoe worn the world over, originated, not from Spain, but from the Basque country on the French side of the border.  A region aptly named "Soule" of which the main capital is Mauléon-Licharre. Global recognition of this fact, however, may be just around the corner as the Soule Espadrille Association of sandle-makers, created in 2000, has applied to the French Intellectual Property Office for protection of the geographical indication "ESPADRILLE DE MAULEON – MAULEKO ESPARTINA" (“Espadrille from Mauléon” in French and Basque) in relation to the manufacture of espadrilles.  Any interested parties have until 6 September 2016 to file observations with the French IP Office.

Geogaphical indications are signs used on products with a specific geographical origin and possess qualities or a reputation due to that origin. The place of origin of the product is essential to the indication operating as a sign. Additionally, the qualities, characteristics or reputation of the product should essentially be due to the place of origin. As a result there exists a clear link between the product and the original place of production. The right to use a protected geographical indication belongs to the manufacturers of the product situated in the geographical area defined, who comply with the specific conditions of production of the item. Espadrille manufacturers in Soule may therefore use “ESPADRILLE DE MAULEON – MAULEKO ESPARTINA" on their shoes provided the manufacturing process complies with the ancient tradition described in the application for protection, which dates back to the early 1800s but which has been adapted over the years.  

This is potentially a savvy move from this association of sandal-makers to refine the production of espadrilles, which take their name from the process of making the jute sole of the shoe.  Not all shoes referred to as espadrilles actually have the traditional jute sole.  As consumers are paying more and more attention to the geographical origin of products and increasingly care more about specific characteristics of products, the geographical origin "ESPADRILLE DE MAULEON – MAULEKO ESPARTINA" will likely differentiate espadrilles made in this region from other shoes manufactured elsewhere, whether or not they are manufactured in accordance with the traditional process. Use of this Geographical Indication will no doubt give its users a competitive advantage in the market as it will likely add more value to their shoes and increase the shoes' export value, particularly as 90% of complete espadrilles, as well as other shoes with jute soles, are currently manufactured in Bangladesh. 

However, it remains to be seen if designer espadrilles e.g. made by the likes of Chloé, Dolce & Gabbana, Kenzo, and Saint Laurent will be produced in the Soule region to give their shoes that added level of authenticity, if indeed protection of the Geographical Indication is secured. As for the Spanish fashion brand, Castañer, who has been making espadrilles since 1927 and was the first to manufacture the wedged-sole espadrilles for YSL, the granting of such a geographical indication could adversely affect the appeal of their distinctly Spanish shoes predominantly aimed at the luxury end of the market.

Authorised users of the indication "ESPADRILLE DE MAULEON – MAULEKO ESPARTINA" will also be able to take action against other parties who use it without permission and benefit from its reputation i.e. free-riders. The Association will therefore have to police use of the indication’s reputation - a valuable, collective and intangible asset.  Policing use of the geographical indication in practice is by no means straightforward or an easy task but if not protected, the Geographical Indication could be used without restriction and its value will be diminished and eventually lost.  The fun will therefore begin if and when the Geographical Indication is granted. Watch this space!

Posted by: Yvonne Onomor @ 14.08
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FRIDAY, 5 AUGUST 2016
General Court: Suedtirol must be kept free for all

In case T- 11/15, Internet Consulting GmbH successfully registered in 2002 the EUTM suedtirol for

- Class 35: 'Business management, business administration, office functions';

- Class 39: 'Packaging and storage of goods ";

- Class 42: 'Scientific and technological services and research and design services relating thereto; analytical services and industrial research; design and development of computer hardware and software; legal services ".

In 2012, the Provincia Autonoma di Bolzano-Alto Adige (Autonomous Province of Bolzano-Alto Adige, Italy) filed for a declaration of invalidity of the mark for all the services. It based its request on Article 52, paragraph 1 a) of Regulation No 207/2009, read together with Article 7, paragraph 1 c) of that regulation, in that the disputed mark constituted a geographical indication (GI) of origin, designating the autonomous region Trentino-Alto Adige / South Tyrol (hereinafter the "South Tyrol region"), located in northern Italy.

The Cancellation Division initially rejected the application for invalidity of the contested mark. However, the First Board of Appeal referred the case to the Grand Board of Appeal., which by decision of 10 October 2014, upheld the appeal and annulled the mark.

The General Court dismissed the appeals and confirmed the following  findings:

- The relevant consumer is made up ​​by the Italian and German-speaking public of the EU and the Italian-speaking public of Italy with a higher level of attention.

- The word "Südtirol" is the common name in German of the northernmost, and one of the richest in Italy, whose independence was recognized by the Italian Constitution: this constitutes a well-known fact

- The existence of such a region is known to the relevant public  who is aware of the existence of the South Tyrol region, the contested mark would be considered to indicate to said public the geographical origin of the services;

- The geographical origin is a characteristic of the services within the meaning of Article 7 1 c) of EUTMR, the term "suedtirol" is a GI, which must be protected in the public interest;

- The designated services do not have other characteristics that could prevent the relevant consumer from associating with the indication "Südtirol" to their geographical origin;

- Management and business administration services, office work, packaging services and storage of goods, scientific and technological services, industrial analysis and research services, development services computers and software, and legal services: when those services are offered under the contested mark, they will be perceived by the relevant consumer as being from the South Tyrol region, as provided in this region or as offered to companies operating in this region ;

- The fact that a considerable number of companies active in the South Tyrol region had the words "Südtirol" or "suedtirol" in their commercial names confirmed that this term was an indication of geographical origin.

Moreover, Internet Consulting had argued in appeal that the geographical name is not likely to describe the characteristics of the services concerned.  The Court found that while it is true that the [Grand] Board of Appeal is in principle bound to consider the relevance of the GI by examining the competitive relationship between the source and the services, the intensity of this obligation is likely to vary several factors, such as the extent, the fame or the nature of the geographical indication of origin in question. Indeed, the probability that a GI may influence the competitive relationship is high when it comes to a large region famous for the quality of a wide range of products and services, and it is low when it comes to a definite place whose reputation is limited to a small number of products or services (see judgment of 15 December 2011, PASSIONATELY SWISS T-377/09).

In this case it is undisputed that this probability should be considered high, given the positive feelings that can arise with reference to South Tyrol during the marketing of the services in question. The requirement for EUIPO to examine the link where the GI's already known or deemed known, is therefore limited  to the presumption of existence of such a link, rather than conducting an examination of the existence of this link.

Last but not least, the Court dismissed the Applicant's argument that the dispositions of article 12 b) of the EUTMR were sufficient to protect the availability of GI's.

Therefore the GC confirmed that the contested mark will be understood by the relevant public as not only a reference to a geographical area, which creates positive feelings, but also in view of the prosperity and the dynamic development of the economy of that region, as an indication of origin of the services emanating from this region. The sign was registered contrary to Article 7 (1) c) of the EUTMR.

Posted by: Laetitia Lagarde @ 18.12
Tags: Suedtirol, general court, absolute grounds, geographical indication,
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THURSDAY, 4 AUGUST 2016
Germany: The colour RED

Each year, the German Federal Supreme Court (BGH) seems to be addressing a new colour. In the preceding years, your blogger already reported on Langenscheidt's yellow colour mark, and on Nivea blue. In 2016, red is the colour in the judges' palette. On 21 July, the BGH gave its verdict in a line of decisions, including an ECJ referral, on the validity of an abstract red colour mark of the umbrella organization of German savings banks ("Sparkassen"). The Sparkassen use the red colour in various forms for their business, e.g. on signs outside their branches, for their red savings books and in marketing material.

The trademark had been filed in Germany as early as in 2002, but was at first rejected. In the ensuing appeal proceedings, the Sparkassen restricted the specification to certain financial services in class 36 and submitted survey evidence on the acquired distinctiveness of the red colour for these services. The mark was then registered in 2007. The PTO found that the survey showed 67,9 % public awareness of the red colour being associated with the Sparkassen.

In 2008 and 2009, several other banks applied for cancellation of the mark for lack of inherent and acquired distinctiveness. Upon appeal, the German Federal Patent Court (BPatG) thought that at least 70 % recognition among the relevant public were necessary for acquired distinctiveness, given that the mark was an abstract colour mark and given that the Sparkassen's marketing evidence was not conclusive on the question whether the colour per se had been used as a trademark and had become recognized as such by the public. Before taking its decision, the BPatG referred several questions to the ECJ. On 19 June 2014, the ECJ (C-217/13 and C-218/13) held that:

  • It is not in line with the interpretation of the Trademark Directive 2008/95/EC if national law requires certain fixed minimum degrees of recognition for acquired distinctiveness of abstract colour marks; 

  • If a member state has not made use of the option provided in Art. 3 III s.2 of the Trademark Directive, then a mark must have acquired distinctiveness before the application is filed. It is not sufficient if distinctiveness is acquired subsequent to the application, even if prior to registration. Art. 3 III s.2 reads:

    "A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration."

  • The burden of proof is on the applicant to show acquired distinctiveness at the relevant point in time of the application.

    On this basis, the German Federal Patent Court ordered the cancellation of the red colour mark, inter alia finding fault with the standard wording for surveys recommended in the guidelines of the German PTO. The BPatG thought that this wording was inappropriately suggestive of qualifying the sign in question as a trademark and thus resulted in overly favorable recognition values.

    The Sparkassen appealed the cancellation to the German Supreme Court. The BGH has now ordered the reversal of the BPatG decision. So far, only a press release is available and the full reasons have not yet been published. Apparently the BGH concluded that the trademark had not acquired distinctiveness at the first relevant date, the application date back then in 2002. However, the invalidation claim was dismissed because in the opinion of the BGH the mark had acquired distinctiveness 13 years later at the date of the last oral hearing before the Federal Patent Court. This second date follows from § 50 II s.1 of the German Trademark Act, which provides that if a trademark has been registered contrary to the rules on absolute grounds of refusal, it may only be cancelled if the ground of refusal is still in existence at the time of the cancellation decision.

    The BGH decision came as quite a surprise – the standard procedure under German law would have been for the court to provide guidance to the previous instance, here the BPatG, and to refer the case back to that court for a decision. The full decision, once published, will be an interesting read.

    Case Reference: BGH, I ZB 52/15 – Sparkassen Rot, decision of 21 July 2016

    Previous instances: BPatG, 33 W (pat) 33/12, decision of 19 March 2013; ECJ, C-217 and 218/13, judgment of 19 June 2014; BPatG, 25 W (pat) 13/14, decision nof 8 July 2015).

    The BGH's German language press release is available here.

Posted by: Anthonia Ghalamkarizadeh @ 11.40
Tags: BGH, German Federal Supreme Court, Sparkassen, Santander, rot, red, colour mark,
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