SUNDAY, 26 APRIL 2015
May ETMR now available

The May 2015 issue of the European Trade Mark Reports (ETMR), a series of law reports published monthly by Sweet & Maxwell, is now available -- hot on the heels of the April issue, on which this weblog commented less than a fortnight ago. The ETMR contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

The ETMR usually contains reports on several decisions. This issue contains four cases:
* MIP Metro Group IP v Metro International SA, a ruling by the Controller of the Irish Patents Office in a keenly-fought opposition where both parties had an interest in word-and-device marks containing the word "Metro".
* Red Bull GmbH v OHIM, Sun Mark Ltd, a decision of the General Court of the European Union which addressed Red Bull's use of the BULL and RED BULL marks as a means of blocking the subsequent registration as a Community trade mark of the word BULLDOG.
 
* Speciality European Pharma v Doncaster Pharmaceuticals, in which the Court of Appeal, England and Wales, reversed the decision of the trial judge who had not permitted a restickering and repackaging of an imported product in which the manufacturer's UK mark was substituted for its French or German one.
 
* Supreme Petfoods, a High Court, England and Wales, decision in which the laudatory trade mark SUPREME was held both invalid and not infringed by a long-term non-confusing use in the hands of a competitor . 
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: Jeremy Phillips @ 14.44
Tags: ETMR,
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THURSDAY, 23 APRIL 2015
Meet the Judges in Dublin, City of Dracula and Stakeholders ...

Exactly one calendar month ago, Class 46 told readers about the excellent and very full programme that was on offer in the lovely, romantic city of Dublin on Friday 5 June. It's going to be one of the most complete MARQUES "Meet the Judges" events that has ever been held, with not only a good selection of judges taking part but also some seasoned trade mark practitioners.

Do take the chance to attend this excellent event which, if you have nothing to do when it ends, you may want to consider combining with a weekend in the magical city of James Joyce, Samuel Beckett, George Bernard Shaw, W. B. Yeats, Oscar Wilde and Bram Stoker -- creator of the notorious Count Dracula (this character gives a gory nuance to the meaning of the word "stakeholder" ...).

Posted by: Jeremy Phillips @ 22.59
Tags: Meet the Judges, Ireland,
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WEDNESDAY, 22 APRIL 2015
The new EU trade mark package: a chance to air your thoughts and ideas

Last night's Clas 46 blogpost briefly announced that the "trilogue" of major European Union institutions -- the Council, the Commission and the Parliament -- had reached agreement on the direction of the next round of EU trade mark law reforms.  Despite this agreement, there is still some way to go before the law changes, since there remains the leap from policy to practice, a leap which must be made through attention to legislative detail and a large amount of careful draftsmanship.

The voice of MARQUES has been heard throughout the reform process, since the organisation has taken an active part in the consultations and discussions that have helped shape the current package of legislative reform.

The MARQUES LinkedIn Discussion Group has just opened a discussion in which members are invited to make their comments on the current state of play and to identify any fresh issues, or new dimensions to old issues, about which we should be thinking when we look at the process of implementing the newly-agreed package.  Please feel welcome to contribute to it!

Posted by: Jeremy Phillips @ 18.48
Tags: trilogue, EU trade mark reform,
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TUESDAY, 21 APRIL 2015
Trilogue brings EU trade mark reform a little closer

The European Parliament, the Council of Ministers and the European Commission each issued statements today to the effect that they are in agreement regarding the direction of the policy for reform of the trade mark system in the European Union.  The proposed reforms are designed to reduce official fees, make the system more efficient and accessible, to facilitate action against counterfeit goods while they are in transit across the territory of the European Union and to rename the Office for Hamonisation in the Internal Market (OHIM) as the European Union Intellectual Property Office.

The Commission's statement is here

The European Parliament's statement is here

The Council's statement is here

Posted by: Jeremy Phillips @ 21.39
Tags: EU trade mark reform,
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FRIDAY, 17 APRIL 2015
General Court: Rauschbrille or drunk spectacles lack distinctiveness

In Case T-319/14, Drogenhilfe Projekt Köln gGmbH applied for the word CTM Rauschbrille for the following goods and services : Class 9: "Glasses";  Class 41: 'Education; training; entertainment; sporting and cultural activities "; Class 44: 'Medical services; services of a psychologist; clinical services; Medical clinic service; sanatoriums services; detoxification for drug addicts; health advice; therapeutic services”.

ang_rausch_03.jpg (300~209)Both OHIM and the General Court rejected the CTM application on the basis of Article 7, paragraph 1, b) and c) of Regulation No 207/2009 on the grounds that the mark was descriptive for those goods and services nor distinctive.

The relevant public consists of the German average consumers with a medium-high degree of attention. The applied for sign is composed of two terms of the German language, ie, on one hand, "Rausch" meaning drunkenness or intoxication or delirium and, on the other hand, "brille" meaning a frame with branches and two polished or colored glasses, such as ski goggles, diving or night vision. Thus, as to the "glasses" in Class 9, the German term "Rauschbrille" could be understood as "spectacles making one drunk" or " glasses protecting from drunkenness." It is apparent from the website of the applicant that this term actually refers to goggles that simulate approximately a high blood alcohol level.

Further, the German neologism "Rauschbrille" is not a fancy term, but is composed of exactly two words forming its elements. The word as a whole would not have a meaning beyond the sum of such terms, so it would be limited to describe the products and services concerned. Therefore, the mark is descriptive of the "glasses" in class 9 within the meaning of Article 7, paragraph 1 c) of CTMR.

As regards the absolute grounds for refusal under Article 7, paragraph 1 b) of CTMR,  the "glasses" in Class 9 are glasses recreating the intoxication state or placing the wearer in an artificial intoxication state. As regards the services in Class 41, the German term "Rauschbrille" could easily describe or refer to cultural events based on the theme of drugs. As for the services in Class 44, this term would convey the idea that as part of a medical and psychological treatment, the product sold under this name, is used to simulate intoxication and therefore part of an "aversion therapy". Moreover, those glasses are used as tool in courses in school or driving school on the theme of prevention of alcoholism and drug addiction, or as more complex tool as part of sports games and games of skill, so that sign could easily designate cultural events based on the theme of drugs or be construed as a reference to them. Thus the sign also lacks distinctive character.

 

Posted by: Laetitia Lagarde @ 09.52
Tags: general court, absolute grounds, Rauschbrille ,
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THURSDAY, 16 APRIL 2015
April's ETMR is now out

The April 2015 issue of the European Trade Mark Reports (ETMR), 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 ETMR usually contains reports on several decisions. This issue contains the following three cases:
* Mars Inc and others v Joseph Deters, Gedon Pet NV, a decision of the Commercial Court of Brussels, relating to infringement proceedings and a counterclaim for cancellation of a three-dimensional Community trade mark for an edible chew stick for dogs.
* Simba Toys Gmbh v OHIM, Seven Towns Ltd intervening, a difficult decision of the General Court of the European Union relating to the dismissal of an application for a declaration of invalidity for a three-dimensional sign for products including the Rubik's Cube.
 
* Enterprise Holdings Inc v Europcar Group, in which the High Court, England and Wales, had to resolve the competing claims and interests of two large litigants, both of whom used signs which principally featured the letter "e". 
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: Jeremy Phillips @ 09.20
Tags: ETMR,
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TUESDAY, 14 APRIL 2015
Portugal: Kit Kat shape trade mark limitations

Imperial – Produtos Alimentares, S.A. (IMPERIAL), a Portuguese chocolate manufacturer, sought to register as a three-dimensional Portuguese trade mark the sign displayed bellow covering various chocolate goods in Class 30:

(Unsurprisingly) Société des Produits Nestlé S.A. (NESTLÉ), the producer of the chocolate-covered wafer biscuit bar Kit Kat and owner of the International Trade Mark 804396 (picture bellow) opposed the application. Despite the opposition, INPI, the Portuguese Industrial Property office, granted the trade mark registration, as it did not find a likelihood of confusion between the signs.

NESTLÉ appealed the decision to the Intellectual Property Court (File no. 2/13.7YHLSB).  The first instance court upheld INPI’s decision. In its analysis, the court found that the common element between the signs was the fact that both consist of two chocolate bars. However, following an analysis of the specific market, the court found that the number of chocolate bars bears little importance. The distinctive character of a chocolate bar three dimensional trade mark can only be achieved by the shape of the product, not by a particular number of chocolate bars. Otherwise, the creativity and freedom to compete of companies would be unfairly restricted.

The average consumer is well aware of that and will easily distinguish between products that have different shapes, even when they consist of double chocolate bars. The differences in this case would allow that differentiation. First, in the earlier trade mark, the bars are centrally separated by a “V”; in the trade mark application, the bars are instead divided by a “U”. Second, the shapes of the corners are distinct: sharp in NESTLE’s trade mark, rounded in the trade mark application. Finally, the chocolate bars are different: a trapezoid shape in the earlier trade mark and a parallelepiped in the trade mark application. As such, the court found that the signs were dissimilar and there was not a likelihood of confusion between them and held that the right should be granted.

NESTLÉ appealed this decision to the Lisbon Court of Appeal. However, the Court of Appeal did not side with its arguments and upheld the first instance decision. In a short verdict, the judges found that the common element between the signs was the fact that both are composed by two aligned and joined bars in a rectangular base with a central partition, allowing their separation. However, and referring to the first instance decision, the court held that that did not lead to a likelihood of confusion between the trade marks.

In the field of chocolate bars, imagination is necessarily limited by the very notion of "bar" and there is not a significant degree of innovation and design. Hence, there is a need to centre attentions in the small details that distinguish the products, which, in any case, can be perceived by average consumers of the products. A different decision would result in granting the earlier trade mark holder an exclusive over the productions and commercialisation of “two joined bars”, something that would be inadmissible according to the Court of Appeal.

The courts’ judgements were published in the Intellectual Property Bulletin no. 072/2015, of 14 April. On a side note, readers should remember that this will not be the last time they hear about the Kit Kat shape trade mark, as the Court of Justice of the European Union will issue its judgement in Case C-215/14 Nestlé in the course of 2015 (predictably).

Posted by: Pedro Malaquias @ 18.23
Tags: Portugal, relative grounds, INPI, Intellectual Property Court, Shapes, Three-dimensional, Court of Appeal,
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