WEDNESDAY, 25 MARCH 2015
The protection of luxury: not a luxury but a necessity

MARQUES is conducting a Luxury Brands Symposium, "The Protection of Luxury Brands in a Fast Moving World", on Thursday 25 and Friday 26 June 2015. The venue is the Hotel Baur au Lac, Talstrasse 1, 8022 Zurich, Switzerland. Zurich is an appropriate venue, since the city is said to be one of the richest of the world. Its wealth can be best seen in the famous Bahnhofstrasse, the home of many Swiss banks and many shops with jewellery, watches and other luxury goods. 

As MARQUES members know, luxury brands are a phenomenon with particular issues -- its profit margins tempt some of the most enterprising and determined infringers, while brand loyalty among consumers is a value asset that demands passion and determination in terms of brand protection. This symposium provides brand owners, marketing experts, lawyers and others dealing with luxury goods with the chance to exchange their experience and views on the main issues of luxury brands.

The registration fee for this meeting is €750.

You can check out the full day's programme here and register for it here.

Posted by: Jeremy Phillips @ 20.29
Tags: Luxury Brands Symposium,
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TUESDAY, 24 MARCH 2015
Meet the Irish Judges: another MARQUES attraction

"Meet the Irish Judges on Trade Mark Litigation", on Friday 5 June 2015, is another in the popular series of MARQUES events that bring together trade mark owners, practitioners and members of the judiciary for a chance to share news and views on a subject that is of concern to them all -- trade mark litigation.

The venue, somewhat inauspiciously, is the Criminal Courts of Justice, but this blogger is sure that all the participants will 'acquit' themselves admirably. These good souls are Uwe Over (Chair, MARQUES) plus Mr Justice Sean Ryan (President of the Court of Appeal), Patricia McGovern (DFMG Solicitors, MARQUES Anti Counterfeiting and Parallel Trade Team), Mr Justice Frank Clarke (Supreme Court), the legendary Ms Justice Fidelma Macken (formerly Judge of the Court of Justice of the European Union and of the Supreme Court), Mr Justice Peter Charleton (Supreme Court) and Maureen Daly (Beauchamps Solicitors).

But that's only the star attractions before lunch.  After lunch, it all starts over again with the following participants: Mr Justice John Cooke (formerly Judge of the Court of First Instance of the European Communities and of the High Court), Mr Justice Peter Kelly (Court of Appeal), Ms Justice Mary Finlay Geoghegan (Court of Appeal), Ms Justice Caroline Costello (High Court), Anne Bateman (Philip Lee Solicitors) and Shane Smyth (FR Kelly, MARQUES Council and member of the MARQUES Education Team). 

This blogger can't recall ever seeing so many judges offering their time and their support to a national Meet the Judges event. This is a real tribute to the importance of trade mark law in the Irish economy and to the efforts of the organisers to put together such an attractive panel.

Full details of this programme are available here.  To register, click here.

Posted by: Jeremy Phillips @ 10.02
Tags: Meet the Judges, Ireland,
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MONDAY, 23 MARCH 2015
OHIM's IP Mediation Day: now you can register!

Class 46 is delighted to tell readers that the IP Mediation Open Day, organised by our friends at the Office for Harmonisation in the Internal Market (OHIM), is now open for registration.  The date is 15 June and the venue is OHIM’s very own headquarters in Alicante, facing the sparkling Mediterranean sea. Just click here and you will be instantly transported to the registration page, where you will find a programme for the day and as many details as you could possibly need.

It is even half as much fun as last year's outstanding IP Mediation Conference (if you want a flavour of this event, click here, here, here and here for reports of some of the sessions), this promises to be an interesting event, with a wide range of experienced activity leaders and activities focused on IP mediation and its uses, with hands-on sessions featuring experienced mediators, mock mediations and detailed information about the mediation process.

OHIM looks forward to seeing you there. If you have any further questions about the event, please email on the somewhat ungainly but definitely functional address of ohimipmediationopenday@oami.europa.eu.

Posted by: Jeremy Phillips @ 00.01
Tags: OHIM IP Mediation Open Day,
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FRIDAY, 20 MARCH 2015
Poland: proper arguments for reopening a trade mark case

The Polish Patent Office dismissed the request to invalidate the right of protection for the word trade mark PHYTOLYZIN R-195394. The request was filed by Dr. med. Matthias Rath, the owner of the earlier International trade mark registration LyCin IR-813677. The Voivodeship Administrative Court in its judgment of 15 November 2012 case file VI SA/Wa 790/12 dismissed a complaint filed against this decision, and the Supreme Administrative Court in its judgment of 3 July 2014 case file II GSK 492/13 dismissed a cassation complaint filed by Dr. med. Matthias Rath.

On November 2014, Mr Rath filed before the Supreme Administrative Court a request for the annulment of previous proceedings, and a motion to reopen the proceedings and to issue an award of costs in accordance with prescribed procedure and also submitted as a supplement to the cassation complaint the decision of the Office for Harmonisation in the Internal Market of March 2013 on invalidity of the trade mark PHYTOLIZIN along with its certified translation into Polish. Mr Rath argued that the proceeding should be deemed by the Court as invalid because as the representative of the trademark owner appeared an attorney who submitted at the hearing a substitution of PoA as signed of July 2014. However, the power of attorney was invalid, because it was issued on behalf of another company, which was not a party to the proceedings.

The Supreme Administrative Court in its judgment of 9 January 2015 case file II GSK 2803/14 rejected the request and held that such motion is allowed if a party does not have the capacity and standing to bring proceedings or was not properly represented or if as a result of violations of the law was deprived of possible actions. However, the reopening cannot be requested if, before the judgment becomes final the inability to act ceased, the lack of proper representation was raised by way of objection, or a party has confirmed all procedural actions. These pleas and arguments for reopening, however, did not apply to Mr Rath. The argument for reopening of the proceedings was based on lack of adequate representation refered to the representation of the trade mark owner, not Mr Rath, and such a request may only be raised by a party that was not properly represented.

Posted by: Tomasz Rychlicki @ 13.13
Tags: Polish Act on Proceedings Before Administrative Courts, Polish courts, Polish law, Polish Supreme Administrative Court,
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TUESDAY, 17 MARCH 2015
General Court: L'Wren Scott v Loren Scott

In Case T-41/12, the General Court dismissed the appeal in the following opposition :

LS Fashion, LLC (USA)

Opponent : Gestión de Activos Isorana, SL (Spain)

L’Wren Scott

Loren Scott

Class 25 : Clothing, namely shirts, sweaters, pants, trousers, t-shirts, dresses, skirts, coats, jackets, pullovers, swimsuits, underwear, belts, gloves and scarves; headgear, namely hats, caps and visors; footwear; blouses, blousons, bath slippers, slipper; body linen, corsets, ties, breeches, fur stoles, bras suspenders, garters, petticoats, leotards, pyjamas, panties and underpants, sports shoes, scarves, bandanas, peignoirs, dressing gowns, nightdresses, shorts, jerseys, ski suits, foulards

 

Class 25 : Clothes for ladies, men and children, included boots, shoes and slippers

The Opposition Division found that evidence of genuine use of the earlier mark had been adduced as regards clothes for ladies, men and children, but that the documents made no reference to boots, shoes and slippers.  The Court confirmed that the evidence demonstrated that the sales effected, even though they were not considerable, constitute use which objectively is such as to create or preserve an outlet for the goods concerned.

Furthermore, the goods in question are identical or similar  and the signs at issue have an average degree of visual and phonetic similarity ; the signs did not convey any concept. That conclusion cannot be invalidated by the applicant’s argument as to the fame of the designer who is behind the mark applied for and which, it claimed, the Board of Appeal failed to take into consideration. It is evident that the documents submitted in the course of the administrative proceedings, with the exception of one press article published in El Mundo and dated 7 March 2006, are all subsequent to the date of the application for registration, namely 11 July 2006, and their content does not in any way refer to notoriety acquired before that date, with the result that those documents cannot be taken into consideration for the purposes of establishing the notoriety claimed.  Further, as OHIM correctly observes, even if, in any event, the documents produced by the applicant were capable of establishing that Ms L’Wren Scott was known to certain celebrities, it is clear that those documents do not show that Ms L’Wren Scott herself had celebrity status in Spain for the relevant public, with the consequence that the relevant public would perceive the mark applied for as forming an autonomous conceptual unit, rather than as the mere association of two elements, namely ‘l’wren’ and ‘scott’.

Consequently, having regard to the average distinctiveness of the earlier mark, there is a likelihood of confusion between the signs at issue according to Article 8(1) b CTMR.

Posted by: Laetitia Lagarde @ 17.35
Tags: General court, L'Wren Scott;Loren Scott,
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TUESDAY, 17 MARCH 2015
Switzerland: Do I need to put an email address on my e-commerce site?

According to art. 3 lit. s of the Act Against Unfair Competition, websites that offer goods or services must contain clear and complete information about the identity and contact address of the offeror, including its electronic mail (in German "elektronische Post"). The provision does not apply to websites that advertise goods or services, but rely on voice telephony or email to conclude an agreement (art. 3(2) Act Against Unfair Competition).

Art. 3 lit. s was introduced a while ago, but so far, there have - to my knowledge - not been any court decisions on the meaning of "electronic mail". Taken literally, it seems to indicate that the website must list at least one email address. But many e-commerce websites instead use contact forms, which make handling large volumes of enquiries easier and are less susceptible to spam (when using appropriate measures).

The Commission on Fairness in Commercial Communication ("Lauterkeitskommission"), a self governing body, had to decide on the interpretation of "electronic mail" when a consumer complained that an e-commerce website contained a contact form, but no email address. It held that the provision of a contact form was sufficient, and the operator of the website had not run afoul of art. 3 lit. s Act Against Unfair Competition. The Lauterkeitskommission is no court, but this decision should at least give some guidance that an email address is not required if there are other, equally convenient, means of contacting the website's operator provided.

Link to the decision (PDF, see page 4).

Posted by: Mark Schweizer @ 15.43
Tags: Switzerland, e-commerce, impressum, contact form,
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TUESDAY, 17 MARCH 2015
GREEN SMOKE: not another GREENWORLD

Only a couple of days ago our colleague Laetitia posted this item on the fate of the application to register the word GREENWORLD as a Community trade mark for fossil fuel and energy goods and services. In the light of that decision of the General Court, it is good to compare the following decision of the Finnish Market Court when dealing with a not dissimilar mark and some highly similar legal issues:

The Market Court in Finland, in a slightly older but very interesting decision of 16 December 2013, made a statement on the distinctiveness of the trade mark GREEN SMOKE, an international trade mark application in the name of Green Smoke, Inc. and designating Finland, for “electronic cigarettes” in class 34.

The Finnish Trade Mark Office, in 14 May 2013, held that the trade mark GREEN SMOKE lacked distinctiveness as it expressed the kind, quality and purpose of use of the goods in question. The Office explained that the mark consisted of two words that lacked distinctiveness: “green” meaning green as a colour or as an ecological concept and “smoke”, meaning a cigarette or tobacco. The Office added that the mark GREEN SMOKE was not distinctive either, when considered as a whole. It could not therefore distinguish the goods of the applicant from the corresponding goods of other parties.

On account of the transitional provisions relating to the Market Court which came about in the autumn of 2013, the applicant’s appeal proceeded directly to the Market Court. In its appeal the applicant stated that GREEN SMOKE was distinctive since the word “green” had a variety of meanings that differed depending on the situation in which the word is used and that, accordingly, the interpretation of the Trade Mark Office was not correct, there being neither green cigarettes nor green smoke. Further, the applicant stated that there was no indication that the word green suggest that the goods were ecological or that it would even refer to them as such. Regarding the word “smoke”, the applicant stated that there were also multiple interpretations. Finally, the trade mark had been accepted in several other countries – especially in English-speaking ones. The Trade Mark Office maintained its view and stated that the grounds submitted by the applicant did not bring about any issues that would change its decision.

The applicant further stated that, even though the average Finnish person would understand the English words “green” and “smoke” in the way described by the Trade Mark Office, that would not result in their understanding the mark to refer to an ecological electrical cigarette or a green cigarette.

The Market Court based its evaluation on Section 13 of the Trade Marks Act which lists the requirements for registration of a trade mark. By Section 13, to be eligible for registration, a mark must be capable of distinguishing the proprietor's goods from those of others. Additionally a mark that denotes either alone or with only few alterations or additions, the kind, quality, quantity, use, price or place or time of manufacture of the goods shall not, as such, be regarded as distinctive. Also when assessing whether a mark possesses distinguishing power, all the factual circumstances must be borne in mind, particularly the length of time and extent to which the mark has been used.

The Market Court stated in its judgment that the word “green” in GREEN SMOKE was primarily referring to the colour green. Even though this meaning can refer to the quality of the goods, the goods in question are electronic cigarettes that are not green in colour. As to the other meanings of the word “green”, they refer to for example environmentally friendly products and to nature, which can to some extent refer to the quality of the goods in question. The link is however so unclear that the target group cannot, without putting some thought into the matter, figure out what the word is meant to mean in this context. Thus the word GREEN is distinctive in this connection.

The Market Court was of the opinion that the Finnish average consumer would connect word “smoke” to smoke, smoking of cigarettes and cigarettes and that this was thus the non-distinctive part of the trade mark GREEN SMOKE.

In conclusion, the Market Court stated that the mark GREEN SMOKE had no specific meaning as a whole that would directly and immediately describe a characteristic of electronic cigarettes. Thus the trade mark was able to distinguish the goods of the applicant from the goods of other parties and could be registered in Finland, satisfying the requirements of Section 13 of the Trade Marks Act. The Market Court therefore reversed the decision of the Trade Mark Office and returned the mark to the Office to be registered (it is now registered with the national registration number 1083399 in Finland).

The decision of the Market Court (Decision MAO: 516/13 GREEN SMOKE) can be found here (in Finnish).

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

Posted by: Jeremy Phillips @ 11.39
Tags: Finland, international application, descriptiveness, distinctive character,
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