FRIDAY, 19 SEPTEMBER 2014
Battle of the Polo players in General Court (Part 1)

In Cases T-90/13 The Polo/Lauren Company LP successfully opposed a CTM application on the basis of its earlier TM’s representing a polo player.

Contested CTM - Herdade de S. Tiago II — Sociedade Agrícola, SA (Portugal)

Earlier marks

 

 

 

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 CTM/Benelux

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UK

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Classes 3, 18, 25, 28, 41 and 43 

 Classes 9, 18, 20, 21, 24 and 25

 

The Opposition Division partially upheld the opposition and rejected, on the basis of Article 8(1)(b) of Regulation No 207/2009, the CTM application in respect of the ‘games and playthings’ in Class 28 and all of the goods in Classes 18 and 25, with the exception of ‘whips, harness and saddlery’ in Class 18. It also rejected, on the basis of Article 8(5) of CTMR, the contested CTM in respect of the ‘soaps, perfumery, essential oils, cosmetics and hair lotions’ in Class 3, the ‘gymnastic and sporting articles not included in other classes’ in Class 28 and the ‘sporting activities, organisation of exhibitions for sporting purposes; sporting activities, including organisation of sports competitions’ in Class 41. By contrast, the opposition was rejected in respect of the other goods and services.

The second Board of Appeal of OHIM found, in essence, that the OD had not erred in finding that there was a likelihood of confusion between the signs at issue, within the meaning of Article 8(1)(b) and 8(5) of CTMR, in the light of the identity of the goods concerned and the similarities between the signs at issue and the enhanced distinctive character acquired through use of the earlier marks in respect of certain goods in Classes 18 and 25.

The General Court confirmed the findings of OHIM regarding the similarity of the goods and the signs. At the visual level, the signs at issue have the figurative representation of a polo player in common. In particular, the horse seems to be in motion and the polo player is holding a mallet in his hand. Although the figurative representations contain differences, those differences do not make it possible to come to the conclusion that there is no similarity between the figurative elements in the signs at issue. In all the cases, the relevant consumer will distinctly identify, and remember, a polo player (see, to that effect, judgment of 18 May 2011 in Case T‑376/09 Glenton España v OHIM — Polo/Lauren (POLO SANTA MARIA), paragraph 33).  Furthermore, although the letter ‘v’, which is used in the mark applied for, also plays a non-negligible role in that mark, in view of its position and size, it is not, however, the dominant element. Therefore the marks are visually similar to a medium degree and identical from a conceptual point of view. The GC dismissed the appeal.

 

Posted by: Laetitia Lagarde @ 17.41
Tags: General court, likelihodo of confusion, polo player, Polo/Lauren,
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FRIDAY, 19 SEPTEMBER 2014
Germany's Supreme court on the colour yellow

The German Federal Supreme Court (BGH) yesterday gave its ruling in an infringement case involving competing shades of yellow. The claimant, the German dictionary publisher Langenscheidt, sought to enjoin the respondent Rosetta Stone from using the colour yellow for its products and advertising. Since 2010, Rosetta Stone has been using yellow packaging and yellow dominated advertising for its language learning software. Striking back, Rosetta Stone filed a cancellation action against Langenscheidt's German trademark registration for the colour yellow. So far, Rosetta Stone has lost in all instances, both in the infringement and the cancellation proceedings, which are currently also pending before the German Federal Supreme Court (file no. I ZB 61/13, with an oral hearing scheduled for 23 October).

The BGH, confirming the decisions of the lower instances, held that Rosetta Stone is using the colour yellow as a trademark on packaging and in its advertising. While consumers typically view colours as mere design or ornamental features, the German market for dictionaries is strongly influenced by colour schemes. Consumers have therefore grown to recognize the predominant use of a colour as a denominator of origin. This usage also affects neighboring market segments, including language learning software as it is marketed by Rosetta Stone.

The BGH continued by maintaining that Langenscheidt's yellow colour, which it has been using since 1956, has acquired an average degree of distinctiveness through its intensive use. Rosetta Stone's yellow colour is a highly similar shade, leading to a danger of confusing the two. Confusion is not ruled out by the parties' differing word and device marks, either. The court held that under the particular circumstances in which the colours have been used, the relevant public recognizes them as individually distinctive signs. Hence, a comparison must be made between the two shades of yellow only, excluding any other marks the parties also use on their packaging and in their advertising.

Stay tuned for the publication of the BGH's full written reasoning in this interesting colour battle.

Case Reference: BGH, I ZR 228/12, decision of 18 September 2014.

The BGH's German language press release is available here.

The decision of the Higher Regional Court of Cologne in the previous appeal instance has been published in GRUR-RR 2013, 213 (decision of 9 November 2012, file no. 6 U 38/12).

Posted by: Anthonia Ghalamkarizadeh @ 10.41
Tags: BGH, OLG Köln, Langenscheidt, Rosetta Stone, yellow, gelb, Anthonia Ghalamkarizadeh,
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THURSDAY, 18 SEPTEMBER 2014
Meet the Bloggers Wed 24 Sept @ 6 pm, Tivoli Bar & Lounge, Tivoli Hotel, Copenhagen

Next week the 28th Annual Conference of MARQUES will take place in Copenhagen. As has become a tradition, the bloggers of the Class 46 blog would be delighted to meet their readers.

We have arranged for a meet-up at 6 pm on Wednesday, 24th September, at the Tivoli Bar & Lounge at the conference hotel. The buses for the evening's social event will depart at 7 pm from the same hotel, so this is the perfect opportunity for a pre-dinner drink and some networking.

We are looking forward to seeing many of you in Copenhagen!

Posted by: Mark Schweizer @ 18.31
Tags: Annual Conference, meet the bloggers,
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THURSDAY, 18 SEPTEMBER 2014
Scottish referendum and its implications for trade marks and domains...

The day of the Scottish referendum, reason enough to have a quick look at what some commentators believe to be the possible implactions on trade marks and domain names should Scotland indeed vote "yes"....  

While the website Domain Incite believes that a "Yes" vote would be good for the .scot domain, Chris McLeod, president of the UK Institue of Trade Mark Attorneys, points out that “the Scottish government would need to establish its own laws to prevent infringement. Otherwise we could find ourselves unwittingly wearing Paris Tweed and drinking Famous Mouse.”  Finally, UK trade mark attorney Aaron Wood considers Scotland's role within the EU and the implications for the CTM regime. He is cited by the Independent as follows: "If Scotland ends up not staying in the EU it would mean European trademark protection would not be in place either."

 

 

 

Posted by: Birgit Clark @ 11.25
Tags: scotland,
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WEDNESDAY, 17 SEPTEMBER 2014
Battle of the stars in General Court

 In Case T-199/13, the General Court reviewed the following opposition brought on the grounds of Article (8) (1) b) and 8 (4) CTMR:

 

DTM Ricambi srl -

 contested CTM


Società trasporti automobilistici regionali SpA (STAR)-

International and Italian marks

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Classes 7, 9  and 12 including “ Vehicles; Apparatus for locomotion by land, air or water.” and “Machine coupling and transmission components (except for land vehicles)”

Classes 12, 38, 49 and 42  including “various motor vehicles; Apparatus for locomotion by land, air or water ”

 

Both the Opposition Division and 1st BoA upheld the opposition on the basis of Article 8 (1) b) CTMR.

The relevant public is composed essentially of specialist professionals.

The products covered by the marks at issue, in so far as Class 12, are substantially identical. The goods in Classes 7 and 9, as indicated in the contested CTM, are very similar to some of the goods listed in Class 12 covered by the earlier marks. The General Court found that the BoA had erred where it qualified as identical, and not as strikingly similar, engines for aircraft and watercraft, couplings and transmission components, and the "constituent parts for ships and aircraft”.

Regarding the similarity between the marks at issue, visually, they have a weak degree of similarity (different font and figurative elements), while they were are phonetically similar and identical from the conceptual point of view -for the public who may understand “lodi” (praise), it would perceive the star element as a metaphor for the identical positive attribute.

Further, the alleged weak distinctive character of the earlier international trade mark, relied on by the applicant, was not sufficiently demonstrated by the latter for the territories concerned; in any case, the weak distinctive character of the earlier international trade mark was one of the factors but not the only one, to be taken into account for the purposes of assessing the likelihood of confusion.

Finally, in the global assessment of the likelihood of confusion, that high degree of similarity, if not identity, of the products concerned compensate, in accordance with the principle of interdependence of the factors taken into account in assessing the likelihood of confusion, the low degree of similarity between the marks, and even a professional who would confuse the marks at issue.

Last but not least, it is irrelevant the argument that the earlier international trade mark is used by the opponent in a commercial sector completely different from that of the applicant. In the context of opposition proceedings, OHIM may only consider the list of products required as stated in the application of the mark in question.

Posted by: Laetitia Lagarde @ 12.38
Tags: General Court, likelihood of confusion, Star, star lodi,Societ trasporti automobilistici regionali ,
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TUESDAY, 16 SEPTEMBER 2014
October ETMR now published

The October 2014 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 contains reports on five recent decisions, which include the following:
* Coty Germany GmbH v First Note Perfumes NV, a ruling of the Court of Justice of the European Union on whether actions for trade mark infringement and unfair competition can be brought in Germany in respect of acts committed in Belgium but which have their effect in Germany.
 
* Enterprise Holdings Inc v EuropCar Group UK Ltd & Europcar International SaSU. This is a High Court, England and Wales, decision on the admissibility of survey evidence and the different ways of assessing whether it should be allowed.
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 @ 14.59
Tags: ETMR,
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MONDAY, 15 SEPTEMBER 2014
General Court: Galileo (European Space Agency) v Galileo
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In case T-450/11, the European Commission filed on behalf ofthe European Space Agency (ESA) applied for the CTM (see left) for Class f42  services ‘Research and development in the field of satellite radionavigation’.


Galileo International Technology LLC, filed a notice of opposition
on the basis of two earlier CTM’s GALILEO registered for classes 9, 16, 35, 38, 39, 41 and 42 , among others  modems and telecommunication apparatus and instruments; computer software and programmes for business expense reporting’  in Class 9 and in Class 38: ‘Telecommunication services in the nature of transmission of data, electronic data transfer services, network services, all relating to computerised information retrieval systems; communication services relating to the provision of on-line electronic data transmission facilities for the communication and distribution of information, images and electronic messages by computerised databases; data communications and bulletin board service’ etc.

Both the Opposition Division and Board of Appeal rejected the opposition because they found that all the goods and services covered by those earlier marks to be dissimilar to the services covered by the mark applied for and, consequently, one of the conditions provided for by Article 8(1)(b) was not satisfied.

The General Court dismissed the appeal on the grounds explained here after.

The relevant public is a specialist public of undertakings engaged in R&D in the field of satellites and highly sophisticated localisation software and, thus, those services are  not aimed at the general public — even though the product resulting from that research could, in the long run, be used by the general public — since what was involved was not an industrial activity or a service aimed at the production of goods, but an activity focused on scientific innovation.

 Regarding the  comparison of the goods, as regards the extremely wide definition of research and development proposed by the applicant, the Court has indeed already held that the Commission’s Galileo project is limited to the launching of a satellite radio navigation project as the European response to the American GPS and Russian Glonass systems, to providing financial support for the project’s research, development and deployment phases, as well as to establishing the appropriate framework for the subsequent economic operational phase. In doing so, the Commission is not undertaking an economic activity since it is not offering goods or services on the market (see, to that effect, Case T‑279/03 Galileo International Technology and Others v Commission [2006] ECR II‑1291, paragraphs 116 and 117).

Consequently, the Board of Appeal did not make any error of assessment in finding that the activity of research and development in the field of satellite radio navigation is not an industrial activity or a service aimed at the production of goods, but is focused on scientific innovation.

It follows that there can be no complementary connection between, on the one hand, the goods and services which are necessary for the running of a commercial undertaking and, on the other, the goods and services produced or supplied by that undertaking.

The goods in Class 9 registered for GALILEO 9 may be used or be necessary for research purposes, but they do not constitute the actual purpose of that research. Furthermore, a specialist public knows that undertakings and institutions engaged in research and development do not themselves manufacture any end products. Moreover, as the ESA correctly states, the purpose of R&D services in the field of satellite radio navigation is not to develop or improve a computer, a piece of software or an electronic apparatus as such but to accumulate knowledge on the basis of which independent undertakings could perform their own research and development in order to develop devices that allow a person’s exact position to be determined and to develop associated services that make use of such positioning capabilities. 

In addition, the BoA did not err either in finding that the data-collection, conversion and circulation services in relation to schedules, availability and pricing in the field of tourism and travel are fundamentally different from R&D in the field of satellite radio navigation. Likewise, the business management activities were different from research and development activities and are  not complementary to them. It is hard to imagine that business management activities are indispensable for the use or performance of research and development in the field of satellite radio navigation, and vice versa. Therefore, the BoA rightly fond that the goods and services at issue are different.

 

Posted by: Laetitia Lagarde @ 17.05
Tags: general court, galileo, R&D, comparison of goods & services, ESA,
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