Once upon a time in General Court: tale of an heraldic fight

In the not so far away kingdom of OHIM, two brave German knights were fighting the (lost) battle of the likelihood of confusion on the battle ground known as Case T-193/12:

 MIP Metro Group Intellectual Property GmbH & Co. KG - Düsseldorf applicant

Holsten-Brauerei AG - Hamburg Opponent

 Image not found

 Image not found

Class 33 ‘beers’

Class 33 ’beers’

The General Court confirmed the findings of the Board of Appeal : there is a risk of confusion for identical goods, the signs are visually similar, phonetically identical for consumers (-tavern clients without a doubt-) mentioning only the letter "h". The signs also had  a conceptual similarity: despite the  differences  (a crown in the contested CTM and a knight on a horse for the earlier mark) they both referred to “heraldic symbols”.

 The court dismissed the applicant’s argument  alleging that the relevant consumer is in the habit of seeing heraldic motifs  to describe beers in Germany. This habit tends rather to enhance the likelihood of confusion:  an even greater attention to the figure attached to the blazon,  and in this case, the same letter "h". The BoA did not attach more importance to any "dominant element", it is sufficient to say that the overall impression of the signs is  very similar to find a likelihood of confusion according to Article 8(1) b) CTMR.

Posted by: Laetitia Lagarde @ 14.28
Tags: General Court, H, heraldic symbols, beer,
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Greek TM Office: Consistency and "CARE"

The English word "CARE" is known to and understood by Greek consumers of Class 3 and 5 products. This has been the, correct in this blogger's view, position of the Greek TM Office when addressing absolute or relative grounds of refusal issues for trademark applications incorporating the word. Under this prism, marks such as the one below for classic Class 5 and 10 products have been rejected.




In other circumstances, the Greek TM Office seemed less stict (and perhaps less consistent), probably thinking that rather trivila device elements, or greek words in latin characters (hygeia=health) will do the distincitveness trick.


However, for word marks, there appeared to be no compromise. So "DIABETES CARE DIAGNOSTICS" was rejected in Class 10. Again this looks correct and, again, a recent example to the contrary:CAREΑΛΟΙΦΗ (=care ointment) was accepted for "non pharmaceutical ointments" in Class 3. This blogger sees nothing unusual in the presentation of this word mark and, no offense to its owner, is a bit puzzled by its acceptance. Then again, he may just over-care about consistency. 

Posted by: Nikos Prentoulis @ 21.09
Tags: Greece, trademark office, absolute grounds, care, consistency, equality,
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Rihanna victory in Topshop t-shirt claim

On January 22, the Court of Appeal for England and Wales issued its much-anticipated decision in Fenty v Arcadia, confirming the law on image rights, merchandising, and endorsement in the UK.

The case arose from a Topshop t-shirt bearing an image of Rihanna taken during filming of the video for her 2011 smash hit single ‘We Found Love’ (featuring Calvin Harris).  Topshop had lawfully acquired the image; but the shirt was produced without Rihanna’s consent.  The singer claimed that use of the image created a misrepresentation that the shirt was endorsed or authorised by her; this amounted to false endorsement, a type of ‘extended passing off’. 

In 2013, the High Court found in favour of Rihanna, deciding that a substantial number of consumers would buy the shirt due to the false belief that it was officially endorsed.  This was damaging to Rihanna’s goodwill, causing loss of sales in her official merchandise and representing loss of control over her reputation “in the fashion sphere".

The appeal by Topshop, and resulting judgment, focused on four points:

1. Merchandising and endorsement are different

Character merchandising involves exploiting the name or likeness of famous characters (real or fictional).  Endorsement involves approval of goods (explicitly or impliedly), by association. 

A celebrity’s name or image on an item, will not necessarily cause the public to assume it has been endorsed (e.g. Princess Diana’s image on a porcelain plate, or Elvis Presley’s name on toiletries).  Each case will be decided on its facts.

2.  A garment bearing a celebrity’s image is not automatically passing off

The sale of garments bearing images of Rihanna does not, of itself, amount to passing off. However, use of a particular image may give rise to a mistaken belief that those goods have been authorised; this is what the law seeks to prohibit.

3.  Assessment from the consumers’ perspective

There must be the likelihood of confusion of a substantial number of consumers (but not all of them).  It was relevant to look at potential customers who were Rihanna fans, prepared to shop in Topshop, and take into account Topshop’s publicity of its previous connection with Rihanna.

4.  Procedural / evidential issues in Rihanna’s case (this was effectively dismissed)

The court upheld the finding of false endorsement, but this was based on specific circumstances: past public association between the parties, and features of the image itself.  In addition, one judge stated that this case itself was ‘borderline’.

Further, the judgment confirms that there continues to be no ‘personality / image right’, in the UK.  A celebrity seeking to control their image must therefore rely upon some other cause of action, such as contract, breach of confidence, copyright or, as here, passing off.

Nevertheless, brands may now be more cautious about using famous faces to sell their products.  Retailers using celebrity images need to be aware that anything wrongly suggesting official endorsement could lead to legal action.  This point may be driven home when damages, claimed at $5 million (£3.3m), are finally decided.

This blogpost was kindly prepared for Class 46 by Dorothea Thompson (Bray & Krais solicitors, London)

Posted by: Jeremy Phillips @ 17.48
Tags: Passing off, Rihanna,
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Spain: Community Manager is a Spanish trademark

A curious ruling of 10 December 2014 by the Tribunal Superior de Justicia de Madrid (sitting as the Court dealing with appeals against decisions from the Spanish Patent and Trademark Office "Spanish PTO") has been recently published regarding the trademark enforcement and registration of English terms in the Spanish jurisdiction. On 5 August 2011, Todo Espacio Publicidad S.L. filed the Spanish trademark application no. 2994650 for INSTITUTO COMMUNITY MANAGER (fig.) for "education; providing of training; entertainment; sporting and cultural activities" in Nice class 41. After its advertising on the official gazette, Mr. Larrea filed an opposition grounded on likelihood of confusion with 2 prior registrations: a trade name no. 294866 and a trademark no. 2908055 for COMMUNITY MANAGERS 2009.


Following the opposition, the trademark application for INSTITUTO COMMUNITY MANAGER (fig.) was refused. The applicant appealed to no avail and, upon receiving a confirmation of the appeal by the Spanish PTO in 01 February 2012, the applicant persisted and filed a new appeal before the Tribunal Superior de Justicia de Madrid. Among its arguments, Todo Espacio Publicidad S.L. defended that "community manager" was generic for certain services included in the application and could not be monopolized by the opponent. The trademark application included the term "instituto", so it could not be considered absolutely devoid of distinctive character. That was the B-side of its argumentation.

Following the opposition, the trademark application for INSTITUTO COMMUNITY MANAGER (fig.) was refused. The applicant appealed to no avail and, upon receiving a confirmation of the appeal by the Spanish PTO in 01 February 2012, the applicant persisted and filed a new appeal before the Tribunal Superior de Justicia de Madrid. Among its arguments, Todo Espacio Publicidad S.L. defended that "community manager" was generic for certain services included in the application and could not be monopolized by the opponent. The trademark application included the term "instituto", so it could not be considered absolutely devoid of distinctive character. That was the B-side of its argumentation.

Under the Spanish procedural law, certain facts do not need to be evidenced. In particular, those considered notorious or well-known by the society. Pursuant to this rule, the Judge may decide (in non-specialized products) as if she were a consumer. The application of this rule to the instant case led to the Judge to declare that "community manager" has not been adopted by the Spanish language, and that the Spanish consumer is not versed in the English language. Therefore the argument by which the expression "community manager" was generic or descriptive of the services "education; providing of training; entertainment; sporting and cultural activities" failed. The refusal of the trademark application no. 2994650 for INSTITUTO COMMUNITY MANAGER (fig.) was in consequence confirmed by the Court.  

This ruling provides a few teachings. First, Spanish Courts might not be the most knowledgeable institutions regarding new business models in the social media and the information society. Second, and more importantly, claimant may always want to support its arguments with documented evidence if there is room for that, and don’t let the decision to be taken by the Court on its (always mysterious) consumer's feet.      

Posted by: Fidel Porcuna @ 17.00
Tags: English terms ,
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General Court: Kenzo v. Kenzo

In Cases T-322/13 and T-393/12, CTM applicant Mr Kenzo Tsujimoto (resident of Japan) applied for the word mark KENZO for the following goods and services:

Class 33: Wine; alcoholic beverages of fruit; western liquors (in general)

Class 35: ‘Marketing research on wine; providing information on wine sales; wine advertising and publicity services; import-export agencies for wine; retail services or wholesale services for wine’;

Class 41: ‘Providing electronic publications on wine; providing electronic publications on sommelier certification; publication of books on wine; publication of books on sommelier certification; providing facilities for educational training on wine; providing facilities for educational training on sommelier certification’;

Class 43: ‘Providing foods and beverages; providing temporary accommodation

KENZO (France) filed an opposition on the basis of earlier CTM KENZO registered for goods Classes 3, 18 and 25 on the grounds of article 8(5) CTMR.

According to the Board, the 3 cumulative conditions for the application of Article 8(5) were met:

-      The marks at issue were identical.

-      The opponent filed sufficient amount of evidence to demonstrate the reputation of the earlier mark

-      It seemed highly likely that the mark applied for, for the use of which no due cause had been demonstrated, would ride on the coat-tails of the earlier trade mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image.

In particular, regarding the nature of and degree of closeness between the goods concerned, it was clear from the evidence filed  that the opponent largely placed its products at the high end of the market, where the targeted consumer has a more sophisticated taste than the average consumer, and that the goods covered by the mark applied for included high-quality wines and cognac intended for equally sophisticated consumers. Thus, the BoA rightly inferred from those circumstances that it was  highly possible to establish a link between those goods, since they all projected images of luxury, glamour, good taste, success, and social .

      In addition, the opponent produced evidence before the Board of Appeal that advertisements for goods covered by the earlier trade mark had been published in prestigious magazines (such as Vogue and Vanity Fair) and that goods had been sold under the earlier trade mark in prestigious shops (such as Harrods). Therefore, the BoA rightly found that the trade mark in question had an ‘undisputable allure’, which could be transferred to other luxury goods and, by extension, to the goods covered by the mark applied for, such as cognac, champagne or wine, which can be of high quality.

The Court therefore upheld the assessment that the consumer would establish a link: services falling within the wine sector may, like clothing, perfumes and cosmetics, be part of the luxury sector. In addition, it is possible that proprietors of trade marks for cosmetics may also be active in the alcoholic drinks sector. That is so, for example, in the case of the proprietor of the trade mark DAVIDOFF, which uses that trade mark to distribute not only gentlemen’s cosmetics but also cognac

The GC, like the BoA, therefore concluded that there was a risk that the use of the mark applied for would take unfair advantage of the reputation of the earlier trade mark for the purposes of Article 8(5).


The applicant claimed before the Court to have argued before OHIM that he merely wished to use his forename — Kenzo — for a certain range of goods and that this constituted due cause. However the CTMR does not provide any unconditional right to register a surname as a CTM (see judgment of 25 May 2011 in Case T‑397/09 Prinz von Hannover v OHIM (Representation of a coat of arms) let alone to register a forename as a trade mark. Consequently, the fact that the applicant’s forename is Kenzo is not enough to constitute due cause for the use of the mark applied for, for the purpose of article 8(5) CTMR.


Posted by: Laetitia Lagarde @ 12.32
Tags: General Court, kenzo, right to name, spirits, cosmetics, reputation, article 8(5),
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February ETMR now published

The February 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.  

This issue usually contains reports on several decisions. This issue however contains just two cases, but they are unusually long ones:
* Interflora Inc and Interflora British Unit v Marks & Spencer Plc, in which the Court of Appeal for England and Wales -- in national litigation following the Court of Justice ruling -- allows the defendant's appeal and remits the case for a fresh trial before a different trial judge;
* Intra-Presse SAS v OHIM, Golden Balls Ltd, where the Court of Justice of the European Union hears an appeal in a fierce Community trade mark opposition battle between the owners of the earlier Community trade mark BALLON D'OR and the applicant's mark GOLDEN BALLS.
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 @ 10.31
Tags: ETMR,
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Switzerland: renewal snatching is unfair competition

A WIPO expert's decision under the SWITCH dispute resolution policy (for .ch and .li domains) is the first case under Swiss law that deals with "renewal snatching", i.e. registering lapsed domain names (also called extension exaggeration, or alert angling).

The facts of the case are such that the Claimant is the owner of a Swiss trademark for SHOP4 covering various advertising and software related services in classes 35 and 42 ("the Trademark") which was registered on January 19, 2010.

A company affiliated with the Claimant (Internet Explorer GmbH which is managed and controlled by the same person and of which the Claimant is a partner – "Gesellschafter") was the owner of the Domain Name until July 21, 2014 until that company lost the Domain Name because of apparent problems of communication with SWITCH which caused the renewal payment to be late.

The Domain Name was registered on August 5, 2014. It resolves to a website on which sport shoes are offered for sale and redirects to another domain name for this purpose (i.e.) which reflects the NIKE trademark, whereby shoes of different brands are offered for sale on this website (i.e. NIKE and BIRKENSTOCK).

The expert held that there was no clear infringement of Claimant's trade mark rights due to the lack of similarity of the products for which the SHOP4 mark claimed protection and the goods offered on Respondent's website.

He held, however, that the snatching of the domain name was unfair competition and ordered the transfer of the name. In the expert's view, the Respondent's conduct violated the Swiss Unfair Competition Act (UCA). The Respondent's action of registering the Domain Name immediately after a company affiliated to the Claimant lost the registration of the Domain Name because of an error during the renewal process, amounted to an unfair and unlawful practice within the meaning of Article 2 UCA.

While the "first come, first served" rule applied for ".ch" domain names as provided by article 2.2 of the General Terms and Conditions (GTC) for the registration and administration of domain names under the domain ".ch" and ".li", this rule did not and cannot prevent from holding that the registration and use of a domain name can constitute a violation of third party rights in certain circumstances.

A company affiliated with the Claimant was the registrant of the Domain Name until July 2014 and the Claimant was the legitimate owner of a trademark for SHOP4 in Switzerland since 2010 (i.e. the Trademark) that is reflected in the Domain Name. Respondent has not participated in these proceedings and it has not conclusively pleaded and proven any relevant grounds for defense. No justifiable reasons have been brought forward by the Respondent in order to justify its conduct, particularly about the choice to register the Domain Name (which corresponds exactly to the Trademark registered by the Claimant in Switzerland) very shortly after it was available for registration. In addition, this Expert noted that the Respondent could not be reached by the Claimant under the registered WhoIs contact information which corroborated further the impression of unfair conduct in this case.

The outcome of the case is correct in my opinion, but the expert carefully avoided addressing the big elephant in the room: under the SWITCH dispute resolution policy, domain names can only be transferred or cancelled in case of a clear infringement of a right in a distinctive sign 

An elegant way of achieving substantially the same outcome might have been to simply point out to the registrar that the WHOIS information was likely false (given that noone could be reached there), which is ground for cancellation of the domain name registration (SWITCH General Terms and Conditions, Sect. 3.3.2)

Case No. DCH2014-0021 of 26 December 2014

Posted by: Mark Schweizer @ 15.21
Tags: Switzerland, domain name, dispute resolution, renewal snatching,
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