WEDNESDAY, 29 JULY 2015
Oh to be young again! OHIM launches Ideas Powered

Last week saw the official launch of OHIM's Ideas Powered website, this being the result of an EU-wide initiative  to bring young people more closely together with IP.

Ideas Powered (the acronym is 'IP', for 'Intellectual Property') will feature contributions from young designers, composers, entrepreneurs and artists from all across the EU to show how IP supports innovation and creativity. Right now Ideas Powered is running a video competition which invites young people to submit their views on how IP matters to them. Do check it out, especially if you are aged 15 to 24.

You can also enjoy Ideas Powered on Facebook and Twitter.

Posted by: Jeremy Phillips @ 14.50
Tags: Ideas Powered,
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TUESDAY, 28 JULY 2015
Question the Trade Mark Judges: a popular London event returns

On Wednesday 14 October 2015, from 18:00 to 19:30 in the lovely venue of University College London, UCL's Institute of Brand and Innovation Law (IBIL) together with MARQUES, invite you to put your questions to some of the judges that are – or were until recently – deciding our trade mark disputes. Chaired by The Rt Hon. Professor Sir Robin Jacob, the panellists will answer a set of pre-selected questions from the audience. Who are they?

* Nicholas Forwood QC (Judge of the General Court of the Court of Justice of the European Union)

* Marianne Grabrucker (former Presiding Judge in the Trade Mark Boards of the Bundespatentgericht (German Federal Patents Court))

* Geoffrey Hobbs QC (barrister, One Essex Court, and senior “Appointed Person” hearing Appeals from the UK Registrar of Trade Marks)

* Oliver Morris (UK Intellectual Property Office Senior Hearing Officer)

To book your place, just click here.

Posted by: Jeremy Phillips @ 17.42
Tags: Question the Trade Mark Judges,
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FRIDAY, 24 JULY 2015
Now another Danish medicine repackaging trade mark case heads for the CJEU

Yesterday Class 46 posted a note on a reference to the Court of Justice of the European Union (CJEU) for a preliminary ruling -- and now here's another one. It's Case C-297/15 Ferring Laegemidler, a request from a Danish Court, the Sø- og Handelsretten, in a case which concerns parallel imports of a medicinal product where the importer has repackaged the product in a new outer packaging and reaffixed the trade mark in a situation where the trade mark proprietor has marketed the product in a the same volume and packet sizes.

 The CJEU has been asked to answer the following questions:

  1. Must Article 7(2) of Directive 2008/95 to approximate the laws of the Member States relating to trade marks and the related case-law be interpreted as meaning that a trade mark proprietor may lawfully object to the continued marketing of a medicinal product by a parallel importer, where the importer has repackaged the medicinal product in a new, outer packaging and reaffixed the trade mark in a situation where the trade mark proprietor has marketed the medicinal product in the same volume and packet sizes in all EEA countries where the medicinal product is sold?
     
  2. Will the answer to the first question be different if the trade mark proprietor in both the country of export and the country of import has marketed the medicinal product in two different packet sizes (10-piece packets and 1-piece packets) and the importer has purchased 10-piece packets in the country of export and repackaged them in 1-piece packets, on which the trade mark has been reaffixed before the products are marketed in the country of import?

If you would like to comment on this case to the UK Intellectual Property Office please email policy@ipo.gov.uk by 5 August 2015.

Posted by: Jeremy Phillips @ 11.18
Tags: CJEU reference, Denmark, repackaginh,
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FRIDAY, 24 JULY 2015
General Court:Happy time v Happy hours

In Case T-352/14, the General Court dismissed the appeal in the following decision:

The Smiley Company SPRL

The Swatch Group Management Services AG

HAPPY TIME

HAPPY HOURS

Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;

Class 35: ‘Advertising; business management; business administration; office functions’.

Class 35: ‘Retailing of timepieces and jewellery; retailing of timepieces and jewellery via global computer networks (Internet)’;

Class 37: ‘Repair and maintenance of timepieces and jewellery’.

The Opposition Division partially upheld the opposition with respect to the following goods and services:  Class 14: ‘Goods in precious metals or coated therewith, not included in other classes; jewellery; horological and chronometric instruments’; Class 35 : ‘Auctioneering’.

The applicant brought an appeal against the OD decision.

The First Board of Appeal of OHIM dismissed the appeal. Firstly, for the purposes of assessing the likelihood of confusion, the BoA considered ‘the natural meaning of the goods and services specified in the application’ for registration. Thus it did not rule on the likelihood of confusion concerning, in particular, auctioneering services and neither party had presented any arguments in that respect.

On the other hand, regarding Class 14, the contested goods are identical to the goods which the opponent’s retail services relate to; those goods therefore displayed similarities with those services, which, moreover, were generally offered in the same places as those in which those goods were offered for sale.

Moreover, there is a low degree of visual and phonetic similarity, but also a conceptual identity, or, at least, a very strong conceptual similarity, between the two signs at issue. The applicant’s argument that the distinctive character of the earlier mark is weak  was rejected.

Therefore, there is a likelihood of confusion between the two marks at issue with respect to the goods in Class 14.

Posted by: Laetitia Lagarde @ 10.20
Tags: General court, confusion, happy time, happy hours, ,
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THURSDAY, 23 JULY 2015
Estonia refers questions on injunction and compensation to CJEU

Readers may not yet be aware of C-280/15 Nikolayeva, a reference to the Court of Justice of the European Union from Estonian Court which relates to Community trade mark infringement and a claim for damages for unjust enrichment. 

The questions referred for a preliminary ruling are as follows:

  1. Is a Community trade mark court required to issue the order provided for in Article 102(1) [of Regulation 207/2009 on the Community trade mark, which requires the court to issue an injunction unless there are special reasons for not doing so] if the applicant does not seek such an order in his claims and the parties do not allege that the defendant has infringed or threatened to infringe a Community trade mark after a specific date in the past, or does failure to make an application to that effect and to refer to this fact represent a ‘special reason’ within the meaning of the first sentence of this provision?
     
  2. Is Article 9(3) [reasonable compensation possible in respect of acts committed after publication of a CTM application] to be interpreted as meaning that the proprietor of a Community trade mark may demand only reasonable compensation from a third party on the basis of the second sentence of Article 9(3) for use of a sign identical with the trade mark in the period from the publication of the application for registration of the trade mark until the publication of the registration of the trade mark, but not compensation for the fair market value of what has been gained as a result of the infringement and for damage, and that there is also no right to reasonable compensation for the period prior to publication of the application for registration of the trade mark?
     
  3. What type of costs and other forms of compensation are included in reasonable compensation under Article 9(3), second sentence, and can this also encompass in certain circumstances (and if so, in which circumstances) compensation for non-material harm caused to the proprietor of the trade mark?

If you would like to comment on this case and advise the UK Intellectual Property Office, just email policy@ipo.gov.uk by 4 August 2015.

Posted by: Jeremy Phillips @ 23.05
Tags: CJEU reference,Estonia, injunction, compensation unjust enrichment after date of publication of application,
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THURSDAY, 23 JULY 2015
Appealing an OHIM decision? Check out the new General Court procedural rules

From Clara Cabecerans (Baker & McKenzie Barcelona) comes some very good news for anyone appealing an OHIM Board of Appeal Community trade mark or design decision to the General Court of the European Union. Clara reports:

The General Court of the European Union adopted new Rules of Procedure which came into force on 1 July 2015. The New Rules replace the 1991 Rules of Procedure.

The court’s rules have been essentially simplified in order to speed up its procedure and to improve its efficiency. Additionally, some new rules have been enacted to regulate matters where no regulation existed before, such as confidentiality of the information and material produced before the Court and the creation of a Vice-President who will assist the President and take the President’s place when the latter is unable to act.

With regard to intellectual property matters the following changes should be particularly noted:

* Delegation to a single Judge: IP cases will be heard and determined by the Judge-Rapporteur sitting as a single judge where the questions of law or fact to be heard are essentially straightforward or the case is considered of limited importance. No doubt, this is one of the main changes in the New Rules.

* A simpler procedure to determine the language of the case: the applicant will be able to choose the language, which will be the language of the case if no objection is received in due course. In case of an objection, the language of the proceedings will be the language of the decision of the OHIM Board of Appeal that is being contested before the General Court. This appears to be a significant improvement with respect to the previous system.

* Rules on replacement of a party and submission of a cross-claim are now regulated: where an IP right affected by the proceedings has been transferred to a third party, that third party may apply to the General Court to step into the shoes of the original party. Further, Chapter 3 regulates the content, time-limit and response to a cross-claim.

* Written part of the procedure: the written part of the procedure will be closed after the submission of the response of the defendant and intervener or after the last response to a cross-claim, if applicable. This means that, contrary to the 1991 Rules, only one single round of pleadings will be allowed.

* Restriction on the length of pleadings: the New Rules specifically establish that the Court will set the maximum length of the written pleadings. A maximum length was already provided for in the Practice Directions. However, such provision has now been established in the New Rules and its importance thus appears to have been reinforced.

Even if not specifically provided for in the Title of the New Rules devoted to Intellectual Property  matters, the following changes should also be taken into account:

*  Shorter legal time-limits for the submission of applications to intervene and requests for hearing: an application to intervene may no longer be submitted before the decision to open the oral part of the procedure. Now, the application may only be submitted within six weeks of the publication of the notice of the action in the Official Journal of the European Union. As with hearing requests, the time limit is now three weeks (instead of 1 month) from the notification to the parties of the closure of the written part of the procedure.

* Oral hearing: the General Court can now rule without a hearing if none of the main parties has requested a hearing and if it considers that it has sufficient information available from the material in the file.

* Transitional period: some provisions of the 1991 Rules still apply to proceedings brought before the entry into force of the New Rules. By way of example, the provisions regarding the application to intervene (Articles 115(1) and 116(6)); the language of the procedure (Article 131); and the second round of pleadings (Article 135(2)) will continue to apply to actions brought before the General Court before 1 July 2015. Likewise, Article 135(a)), which relates to the oral hearings in IP cases, will continue to apply to actions pending before the General Court in which the written part of the procedure was closed before 1 July 2015.

All in all, we see a good number of changes, most of them welcome, which should help streamline litigation in IP matters before the General Court.

Posted by: Jeremy Phillips @ 11.19
Tags: General Court, rules of procedure,
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THURSDAY, 23 JULY 2015
'HOT': The fate of laudatory signs before the General Court

The General Court (GC) recently handed down its judgment in Case T-611/13 Australian Gold LLC v OHIM and Effect Management & Holding GmbH, deciding on whether the figurative sign 'HOT' on the right could be protected, in particular, for cosmetics and sanitary products. The decision deals, among other things, with the question of how to distinguish (non-registrable) laudatory terms which exclusively describe certain characteristics of the relevant products, on the one hand, from sufficiently ambiguous (and, thus, registrable) words on the other hand (see, on this point, OHIM Examination Guidelines, Part B, Section 4, p. 40).

Initially, OHIM had granted protection to the above International Registration 'HOT' naming the EU, filed by Effect Management & Holding GmbH. Subsequently, however, the European part of the mark was challenged by Australian Gold LLC based on Article 52(1)(a) of the CTM Regulation (CTMR), claiming that the mark was purely descriptive and lacked distinctive character. As regards these issues, the GC came to the following conclusion:

The mark was held to be purely descriptive of, in particular, "massage oils, gels" in Class 3 and "lubricant for pharmaceutical use" in Class 5 within the meaning of Article 7(1)(c) CTMR, because these goods were intended to be applied to the skin "through more or less repetitive motions, which create the sensation of 'heat'". On the same basis, the mark was also considered descriptive of "perfumes, essential oils, cosmetics", because "massage oils, gels" were mere examples of that broader category of goods, which was indicated by the word "including" within the list of goods.

With regard to "washing and bleaching preparations; soaps" in Class 3 and "food supplements for medicinal purposes" in Class 5, however, the GC found that the term 'hot' did not indicate the high temperature of these goods themselves, nor the adequate temperature for their use. Positive connotations of the word 'hot', such as 'attractive' or 'sexy', were too vague to create a direct link with these goods.  More interestingly, the GC considered the mark also sufficiently distinctive under Article 7(1)(b) CTMR in respect of these goods. According to the Court, Austrian Gold had not proven that the word 'hot' was exclusively a laudatory term, since it also portrayed meanings, such as 'spicy', which lacked a laudatory character.

The decision is particularly interesting for three reasons:

First, by finding, in essence, that a word with a laudatory connotation can be registered as a trade mark if not all of its meanings are exclusively laudatory, the GC has arguably interpreted the CJEU's guidelines in Vorsprung durch Technik very generously (see Case C-398/08 P, reported here). In that decision, the CJEU held that a mark is likely to have distinctive character if it can be considered to "have a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered" (emphasis added). That being said, the GC's interpretation appears, at least, to create a tension with the generally accepted doctrine established by the CJEU in Doublemint, namely that it suffices for a refusal of a trade mark if at least one of its possible meanings is descriptive in relation to the relevant goods and services (see Case C-191/01).

Second, as readers of Class 46 may recall, the German Federal Court of Justice (FCJ) held in 2014 that the concerned figurative mark 'HOT' was devoid of any distinctiveness in respect of all the covered goods (reported here). Contrary to the GC, the German FCJ concluded (loosely translated into English):

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.

Expressly referring to the judgment of the German FCJ, the GC noted that it was not bound by previous decisions adopted in any Member State.

Third, in the view of this blogger, the GC's decision does not necessarily make it easier for trade mark practitioners to predict whether a more or less laudatory term will pass the relevant test of distinctiveness. A brief look at the Court's recent 'track record', reveals an – unfortunately, but fittingly - ambiguous result:

  • registrable for "washing and bleaching preparations; soaps" and "food supplements for medicinal purposes" (see above)
  • devoid of distinctive character for several goods in Class 18 (see Case T-203/14, reported here)
EXTRA (w)
  • devoid of distinctive character for several goods and services in Classes 12, 28, 35 and 37 (see Case T-216/14, reported here)
  • devoid of distinctive character for several goods in Classes 5, 29, 30, 31, 32 and 33 (see Case T-344/14, reported here)
FUN (w)
  • registrable for "land motor vehicles" in Class 12 (see Case T-67/07)

 

Posted by: Christian Tenkhoff @ 08.59
Tags: absolute grounds, hot, descriptive, laudatory, distinctive character, General Court,
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