Inherent distinctiveness of figurative marks containing descriptive or non-distinctive words: guidance from ETMDN

MARQUES's good friends at the European Trade Mark and Design Network (ETMDN) have published a communication on the common practice for use when assessing the inherent distinctiveness of figurative trade marks containing descriptive or non-distinctive words.  You can check out the new communication here.

By the way, if you have not encountered it before, the ETMDN is an initiative to reduce differences in practices between the national offices and the Office for Harmonisation in the Internal Market (OHIM). Although it is not immediately legally binding, it does reflect the extent to which a common understanding exists as to what the law is and how in practice it should be applied.

Posted by: Jeremy Phillips @ 08.24
Tags: Common communication, ETMDN,
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Expo Milan GI event: now you can access all the materials

"A common control culture for geographical indications: a multi-level and multidisciplinary approach, best practice, public and private enforcement and the help of science" is the very grand and, if one might add without intending to be rude, very long title of a one day event held on 1 October under the auspices of Expo Milano.

By way of explanation, within the framework of EXPO Milano, the Directorate General for Agriculture and Rural Development of the European Commission (DG AGRI) put together a seminar with the objective "to stimulate a flow of ideas how fraud and infringements are detected and prevented on the ground: at production level, in the market place or at ports of entry into Europe".

If you're interested -- and who isn't! -- you can check out all of the presentations on the event's website here.

Posted by: Jeremy Phillips @ 23.01
Tags: Expo Milan, GIs,
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General Court: IceExpresso + Energycoffee v. Monster Expresso + Energy does not equal confusion

In Case T‑61/14, the General Court upheld  the following opposition

Mr Luis Yus Balaguer (Spain)

Monster Energy Company (USA) -earlier CTM's

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Class 9: ‘Coin-operated vending machines’;

Class 30: ‘Coffee-based beverages; Coffee mixtures for the manufacture of alcoholic beverages or non-alcoholic drinks, ice’;

Class 32: ‘Non alcoholic beverages including refreshing drinks, Energy drinks, Whey drinks, isotonic beverages; Beers, mineral and aerated waters; Syrups and other preparations for making beverages’;

Class 35: ‘Wholesaling, retailing in shops and via global computer networks of beverages based on coffee, tea, etc, wholesaling and sale via global computer networks of vending machines’.

Class 5: ‘Nutritional supplements’;

Class 32: ‘Non-alcoholic beverages, including, energy drinks flavoured with coffee and enhanced with vitamins, minerals, nutrients, amino acids and/or herbs, excluding perishable beverage products that contain fruit juice or soy’

Both the OD and the BoA of OHIM found that there was no likelihood of confusion.

As a preliminary matter, the assessments regarding the earlier mark registered under number 8815748 applied equally to the earlier mark registered under number 8815722 as they had an identical composition to the latter except for the element ‘hammer’ which replaces the element ‘midnight.

Primarily, the relevant public is the average consumer in the EU, who is reasonably well informed and reasonably observant and circumspect, and whose level of attention is neither particularly high nor particularly low.

Secondly, certain word elements of the signs at issue, since they are descriptive of some of the goods and services at issue, have a weak distinctive character, so that they would not attract the attention of the consumer as much as other more distinctive elements, namely the words ‘expresso’, ‘x-presso’, ‘espresso’ and ‘coffee’, which refer to a kind of coffee-based beverage, designated in Classes 30 and 32, and, on the other hand, the expressions ‘espresso energy’ and ‘energy coffee’, which refer to energy beverages and are descriptive of the goods and services falling within Class 9 and Class 35, which concern, in particular, that type of beverage.

As regards the visual comparison between the signs at issue, that there was no visual similarity between the mark applied for and the earlier marks registered under numbers 8815748 and 8815722, and there was a low degree of similarity between the mark applied for and the earlier mark registered under number 8445711.

As regards the phonetic comparison between the signs at issue, there is a low degree of phonetic similarity/

As regards the conceptual comparison, for a part of the relevant public, there is a conceptual similarity in so far as the signs at issue refer to the idea of a coffee-based beverage, of the espresso type, that gives energy, and, on the other hand, for the remainder of the public, who does not perceive any clear semantic meaning from those signs, the conceptual comparison remained neutral.

In conclusion,  since the common elements between the signs at issue are descriptive and therefore of low distinctiveness, those signs have a low degree of similarity, and even assuming the goods and services at issue are identical, there is no likelihood of confusion.

Posted by: Laetitia Lagarde @ 18.12
Tags: General court, expresso, monster,
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Vienna resource pack now available

If you had the good fortune to attend this year's Vienna Conference of MARQUES, you will be delighted to know that the resource pack, containing all the relevant and necessary materials, is now available from MARQUES if you click here. You have to have registered, though, since there's a login procedure ...

Apart from all the serious stuff, there are plenty of photos for you to browse, plus a sneak preview of next year's conference venue, in lovely sunny Alicante.

Posted by: Jeremy Phillips @ 14.17
Tags: Vienna Conference resource pack,
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WIPO roves to Spain: here come three special seminars

Don't be all at sea! Come to a Roving Seminar and sail away with gems of IP information

We have recently heard from our goods friends at the World Intellectual Property Organization (WIPO) that the next batch of Roving Seminars on WIPO services will soon be taking place. This time round, the WIPO team is heading to Valencia, Barcelona, and Zaragoza on 20, 21 and 22 October respectively.  

In accordance with WIPO's time-honoured practice, there is no charge for registering or attending; indeed, even the coffee and lunch are absolutely free. to facilitate opportunities for networking -- which are also free.

In putting on this instructive and enjoyable event WIPO will be aided and abetted by the Spanish Patent and Trade Mark Office (OEPM), as well as the Spanish Group of the International Association for the Protection of Intellectual Property (AIPPI) and local business representatives.

This event will be in Spanish only, but you can practise other languages on the multilingual WIPO presenters during the networking breaks.

Details of the seminar’s programme and registration can be found on the WIPO website here, so the best advice we can give you is:

Don't hesitate

Posted by: Jeremy Phillips @ 14.13
Tags: WIPO Roving Seminar, Spain,
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General Court: Darjeeling (lingerie) held to take unfair advantage of the reputation of Darjeeling tea

Today the General Court issued 4 judgments related to the rights over "Darjeeling"  (see here cases T-624/13, T 625/13, T-626/13  and T-627/13)

Applicant - Delta Lingerie (France)

The Tea Board (India)- earlier CTM's

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Classes 25, 35 and 38 including Women’s undergarments and day and night lingerie and related retail services"

Class 30 tea

The Opposition Division and the BoA rejected the opposition on the ground that, first, regarding the application of Article 8(1) CTMR, the goods and services covered by the signs at issue were dissimilar and, second, regarding the application of Article 8(5) of that regulation, the evidence provided by the applicant was insufficient to establish that the earlier Community collective marks had a reputation with the relevant public.

The Tea Board successfully appealed to the Court.

The GC firstly dismissed the appellant's claim that the Board of Appeal had failed, in its global assessment of the likelihood of confusion to take into account the actual or potential geographical origin of the goods or services covered by the signs at issue.

However, the GC upheld the claim regarding Article 8(5) CTMR : in light  of the fact that the hypothetical premiss on which the contested decision is based refers to a reputation of exceptional strength,  sothe positive qualities evoked by the word element ‘darjeeling’ shared by the signs at issue are capable of being transferred to some of the goods and services covered by the mark applied for and, as a result, of strengthening the power of attraction of that mark.

So far as the goods in Class 25, the mark applied for is capable of benefiting from the positive qualities conveyed by the earlier trade marks and, more specifically, the image of sophistication or exotic sensuality conveyed by the word element ‘darjeeling’. A risk of an unfair advantage cannot therefore be ruled out in the present case in respect of the goods in Class 25 covered by the mark applied for.

Therefore the Court annulled the contested decision in that regard and  Class 35  services‘[r]etailing of women’s underwear and lingerie, perfumes, toilet water and cosmetic lotions, household and bath linen’.

Posted by: Laetitia Lagarde @ 13.37
Tags: general court, darjeeling, tea, lingerie, opposition,
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General Court: LEXDELL v. DELL

In Case T‑641/14, the General court had to review the following opposition:

Ms Alexandra Dellmeier  - CTM applicant

Dell, Inc.- Opponent


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Class 16: ‘Paper, cardboard and goods made from these materials; printed matter; instructional and teaching material (included in class 16); printed goods, pamphlets, newspapers and periodicals (included in this class)’

Class 25: ‘Clothing, footwear, headgear, in particular men’s and women’s outer clothing, children’s outer clothing; hiking, trekking, outdoor and climbing clothing; men and women’s city and leisure shoes, etc

Class 41: ‘Providing of training, education and instruction, in particular organising, arranging and conducting of seminars, training courses and lectures, in particular on legal topics; etc;

Class 45: ‘Licensing of trademarks and hallmarks (legal services); licensing of patents, utility models, registered designs, copyright and artistic copyright, trademark rights, general personal rights, rights to a name and rights to a company name (legal services);etc’.

Class 9: ‘Computers; computer hardware; computer peripherals; etc;

Class 16: ‘Printed matter; handbooks, publications and information manuals for computers and for software; etc;

Class 25: ‘Clothing and headgear’;

Class 35: ‘Retail services in the field of computers, computer peripherals and software and printed publications; services of the operation (administrative service) and compilation of a data bank including the electronic information’;

Class 36: ‘Financial services relating to the purchase, re-purchase, sale and leasing of computers/information technology equipment and apparatus’;

Class 37: ‘Installation, maintenance and repair of computer hardware, computer peripherals and advisory and consulting services relating thereto’;

Class 38: ‘On-line document delivery via a global computer network; reception and delivery of data by means of electronic transmission; network for transmission of data and messages’;

Class 40: ‘Custom manufacture for others of computers, etc;

Class 41: ‘Providing of education and training in the field of computer hardware and computer software’


OHIM and the General Court upheld the opposition on the basis of Article 8(5) CTMR in respect of the services in Classes 41 and 45 covered by the mark applied for, with the exception of the services ‘cultural activities; book rental; film production; film rental; arranging film showings, performances of music and theatre productions; artist management; radio and television entertainment, arranging sporting competitions; rental of periodicals; language interpretation; translations; planning, arranging and conducting of press conferences and other public relations events’ in Class 41. The opposition was upheld on the basis of Article 8(1)(b) of CTMR in respect of the rental of books and periodicals in Class 41 and the goods in Classes 16 and 25 covered by the mark applied for.

First of all, there is a certain degree of visual similarity between the marks at issue in spite of the stylisation of the letter ‘e’ in the earlier mark and in spite of the element ‘lex’ in the mark applied for. Moreover, there is a low degree of phonetic similarity between the marks at issue in view of the presence of that element in the mark applied for and a partial conceptual similarity between them in so far as they contained the word ‘dell’, which means ‘small, wooded hollow’ in English.  Further, the word ‘lex’ would generally be understood as meaning ‘law’ or ‘legal’, so that each of the two elements in the mark applied for has a meaning. Therefore, there is a certain degree of similarity between the marks at issue. Next, the earlier mark has a reputation in relation to the goods and services in Classes 9, 37, 40 and 42.

Moreover, the Court also rejected the additional arguments invoked by the applicant. Regarding due cause, Ms. Dellmeier  claimed that she had obtained registration of that mark in Germany in 2001 for legal services and, secondly, that the mark is a combination of her name and that of her father. However, even though the applicant obtained registration of the mark applied for in a Member State, that fact cannot allow her to circumvent Article 8(5) of CTMR in respect of the whole of the territory of the EU.

Lastly,  the judgment of the Hanseatisches Oberlandesgericht Hamburg (Higher Regional Court, Hamburg) of 30 May 2012, on which the applicant relied, actually prohibits the applicant from using the mark LexDell in such a way as to make the distinction between the first and second elements of that mark obvious, with the result that that judgment cannot, in any event, be used as a basis for any argument to dispute the merits of OHIM's decision.

Posted by: Laetitia Lagarde @ 11.19
Tags: General Court, lexdell, dell, reputation, likelihood of confusion, legal services, computers,
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