FRIDAY, 22 MAY 2015
Madrid Dependency: a survey, and a summary

A little while ago, back on 8 May to be precise, our very good friends at the World Intellectual Property Organization (WIPO) launched a Survey on Madrid System Dependency Principle Issues. Class 46 readers may already know about this and might already have completed it but, to be on the safe side, we are reminding everyone to partipicate if they can: the deadline for completing the survey is 31 May 2015 -- not so far into the future. 

MARQUES has taken a great interest in Madrid System dependency and has been involved in several initiatives in this area. The MARQUES Trade Mark Law & Practice Team, for example, has been in attendance at all Madrid Legal Working Group meetings and, since at least as early as 2011, the organisation has supported the Norwegian Proposal and the adoption of substantive changes to the Madrid system – ultimately the abolition of the basic mark requirement -- in order that Madrid should become more user-driven and user-friendly.

Posted by: Jeremy Phillips @ 09.24
Tags: Madrid Dependency,
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THURSDAY, 21 MAY 2015
The Lisbon System and the Geneva Act: agreement is reached

Readers of this weblog have been treated to a great deal of information from us, via MARQUES's "special correspondent" and GI Team vice-chair Keri Johnston, concerning the past week and a half's discussions, negotiations, anxieties and jubilations relating to the Diplomatic Conference on the revision of the Lisbon Agreement on Appellations of Origin and Geographical Indications. Now you can hear the outcome from WIPO itself, via yesterday evening's press statement:

Negotiators Adopt Geneva Act of Lisbon Agreement at Diplomatic Conference

Geneva, May 20, 2015 document PR/2015/779

Negotiators approved a revision of an international registration system providing protection for names that identify the geographic origin of products such as coffee, tea, fruits, wine, pottery, glass and cloth.

A Diplomatic Conference was held in Geneva from May 11 to 21, 2015 and adopted the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

The Geneva Act allows the international registration of geographical indications (GIs), in addition to appellations of origin, and permits the accession to the Lisbon Agreement by certain intergovernmental organizations.

WIPO Director General Francis Gurry concluded by thanking delegations from all WIPO member states for their very constructive engagement. He said all delegations showed “an openness to discuss different approaches in a very positive spirit.”

The President of the Diplomatic Conference Ambassador Luis Enrique Chávez Basagoitia, Permanent Representative of Peru to the United Nations Office and other international organizations in Geneva expressed satisfaction with the outcome of the diplomatic conference and called the adoption of the Geneva Act a “transcendental moment” for the Lisbon Union and WIPO.

The Geneva Act of the Lisbon Agreement further develops the legal framework of the Lisbon System, which helps promote many globally marketed products such as, for example, Scotch whiskey, Darjeeling tea and Café de Colombia.

Other changes affect fee provisions, scope of protection, protection against becoming generic, and safeguards for respect of prior trademark rights.

An official signing ceremony is scheduled for May 21, 2015, at WIPO’s Geneva headquarters.

The Geneva Act of the Lisbon Agreement will enter into force three months after five eligible parties have deposited their instruments of ratification or accession.

The basic negotiating text for the Diplomatic Conference was developed between 2008 and 2014 by a Lisbon System working group with the goal of attracting a wider membership to the System, while preserving its principles and objectives.

The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration was originally concluded in 1958.

Posted by: Jeremy Phillips @ 08.22
Tags: Lisbon Conference, GIs,
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WEDNESDAY, 20 MAY 2015
MARQUES at the Lisbon Agreement Conference: Meeting in Plenary for the Adoption of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications

Continuing our coverage of the Lisbon Agrement Conference, Keri Johnston, Vice Chair of the MARQUES Geographical Indications has reported:

Chaired by Ambassador Chavez or Peru. The live meeting is currently being webcast on WIPO under the Calendar item relating to the Diplomatic Conference.

Posted by: Jeremy Phillips @ 14.48
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WEDNESDAY, 20 MAY 2015
MARQUES at the Lisbon Agreement Conference: New Act and the Regulations in LI/DC/14 and LI/DC/15 to be recommended to the Plenary

Continuing our coverage of the Lisbon Agrement Conference, Keri Johnston, Vice Chair of the MARQUES Geographical Indications Team has just informed us that Articles 1 to 20 and the Regulations will go to the plenary this afternoon.

"By consensus of the Member Delegations present and voting Articles 1 to 20 and the Regulations will go to the plenary at 3:30 PM today. Articles 21 to 31 remain for Main Committee II to review."

Posted by: Jeremy Phillips @ 12.00
Tags: Lisbon Conference, GIs,
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WEDNESDAY, 20 MAY 2015
Vienna: city of brands, dreams and cake

This year's MARQUES Conference -- the 29th -- takes place on 15 to 18 September in the lovely old city of Vienna, famous for, well, lots of things really.  On the right you can see a slice of Sachertorte from the Hotel Sacher, an indigenous delicacy which, so far as this blogger can tell, has been the subject of considerable legal dispute (for details take a quick look at the cake's Wikipedia entry, under Legal Issues).

The theme of the 29th MARQUES Annual Conference is "Mind the Brand? Mind the Brand! Psychology of Brands". Many of the sessions will address different aspects of this question, focusing on the legal issues and challenges of brand psychology. The conference will include discussions on issues such as advertising on the internet, the implementation of the new EC Customs regulation in 2014, as well as updates on OHIM, WIPO and European CEU Case Law.

Vienna is the capital city of Austria with a population of approximately 1,800,000. The city is host to many major international organizations, including the United Nations and OPEC and in 2001, the city centre was designated a UNESCO World Heritage Site. The city lies in the east of Austria and is close to the borders of the Czech Republic, Slovakia, and Hungary. These regions work together in a European Centrope border region. Apart from being regarded as the "City of Music" because of its musical legacy, Vienna is also said to be “The City of Dreams” because it was home to the world’s first psycho-analyst – Sigmund Freud (left). 

Book before 3 July 2015 and you can take advantage of the Members Early Bird offer (if you are not a member you can apply for membership at the same time as registering and take advantage of this offer).  Just click here for registration and other details.

Posted by: Jeremy Phillips @ 09.10
Tags: MARQUES Conference 2015,
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WEDNESDAY, 20 MAY 2015
General Court: SWATCHBALL v. SWATCH

In case T-71/14, the General Court dismissed the appeal brought by Swatch AG  against CTM application SWATCHBALL by Panvision Europe Ltd. for specialized goods and services in  Classes 9, 35, 41 and 42 such as “services in connection with goods for use in the production of films, television programmes, videos, and in other visual and performing arts; retail services in connection with goods for the creation and selection of lighting, optical or other visual effects in the cinematographic, television, video, and other visual and performing arts; (…) none of the aforesaid services relating to timekeeping, computer game software, computer game programs or interactive multimedia computer game programs’”.

The opposition was based on earlier marks (CTM and IR) for SWATCH or Image not found on the basis of Class 14 goods‘movements for clocks and watches and parts thereof’ and ‘precious metals and their alloys and goods in precious metals or coated therewith (excluding cutlery, forks and spoons); jewellery, precious stones, horological and chronometric instruments’.

With regard to the alleged infringement of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found that there is no likelihood of confusion as the goods and services at issue are dissimilar. With regard to the alleged infringement of Article 8(5) of CTMR, the Board of Appeal acknowledged that the earlier marks have a reputation in the French, German and Spanish markets with respect to goods in Class 14. However  the applicant failed to prove that use of the mark applied for in relation to the goods and services covered by it could cause a dilution of the earlier marks through the dispersion of their identity and their hold upon the public mind or take unfair advantage of the reputation or distinctive character of the earlier marks.

The appellant raised a single plea in law alleging infringement of Article 8(5) of CTMR

Article 8(5) requires the following conditions: (i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 25 May 2005 in Spa Monopole v OHIM).

In the present case, the similarity between the signs at issue is indisputable but this is not sufficient to establish that there is a link between those marks.

Indeed, the following factors weigh against a finding that such a link exists: (i) the differing nature of the goods and services covered by the marks at issue, given that they have different distribution channels, that they are neither interchangeable nor in competition with each other, that they serve very different purposes and that they do not belong to adjacent market segments, all of which results in a very limited degree of closeness between those goods and between those services; and (ii) the existence of two separate relevant publics.

With regard to the latter, far from being addressed to the average consumer, the goods and services marketed by Panavision Europe target a specialist public, whereas the goods covered by the earlier marks target the general public.

Overall, notwithstanding the undeniable reputation of the earlier marks and the fact that there is some similarity between the marks at issue, and  while it is indeed possible that the specialist public may also be aware of the earlier marks, it can nevertheless be concluded that the relevant public will not establish a link between the marks at issue, since it is highly unlikely the goods covered by those marks will be found in the same shops or that the relevant public will establish  a link between the marks at issue.

That conclusion cannot be called into question by the applicant’s argument that the relevant public is liable to establish a link between the marks at issue because software and other equipment used for film editing may include a timekeeping mechanism. That argument is inoperative inasmuch as the application for registration at issue explicitly excluded goods and services relating to timekeeping.

Posted by: Laetitia Lagarde @ 08.47
Tags: General Court, swatch, watch, reputation, swatchball,
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WEDNESDAY, 20 MAY 2015
General Court: 42 below v. 42 Vodka

In case T-607/13, the General Court confirmed there is a likelihood of confusion between the following signs for vodka products.

Granette & Starorežná Distilleries a.s. (Czech Republic) Contested CTM

Bacardi Co. Ltd (Liechtenstein) -Earlier marks

Image not found

Image not found(IR)

42 BELOW (UK)

Class 33: "Alcoholic beverages (except beers); wines; spirits; liqueurs; distilled beverages; aperitifs; cocktails; alcohol species; alcoholic extracts ";

 

- Class 35: 'Marketing, sales promotion; assistance in business management; business administration; office work; intermediary services for the sale or purchase of products in the field of alcoholic beverages

Class33 ‘Alcoholic beverages; distilled spirits, including vodka’

Class 35 including “promotional services for alcoholic products”

 

 

The relevant public is composed of both the average consumer and the specialized consumer with a higher degree of attention for Class 35 services.

The goods and services are similar or identical.

As regards the signs, they have visual, phonetic and conceptual similarity because they are dominated by the number 42.  Indeed in the contested CTM, the elements "Jemna vodka vyráběná jedinečnou technologií" , “VODKA” and "42% vol. "are negligible in the overall impression created by the mark. Further, the number ‘42’ plays a central role in the earlier trade mark. In contrast, the term "below" is located below the number 42 and is written in significantly lower character size. It cannot be ruled out that part of the relevant public might associate the number 42 as the degree of strength of alcoholic beverages covered by the earlier mark, despite the fact that the number 42 is not followed by the words "% vol. ", the word  "alcohol "or" alc." Even if one assumes that ‘42’ has a weak disti

nctive character,  because of its place, its size and its particular style in the sign, it is the element of the marks which dominates the public perception.

The graphic differences noted by the applicant are quite marginal and almost imperceptible even for an attentive audience, whether professional or not. Indeed, it can not be totally excluded that the effect of "crushed ice", used in the mark applied for is perceived by the relevant public as the result of poor print quality. It should also be noted that the general public might perceive the effect of "crushed ice" as the result of condensation formed on the bottle when served cold in restaurants, bars or nightclubs.

Conceptually wise, the Court rejected the applicant’s arguments that in the earlier international mark, the number 42 would indicate that the products contain less than 42% alcohol [actually it used to be 84proof but was reduced to 42 for international markets see here ], whereas, in the contested mark, the number 42 exactly reflects the percentage of alcohol contained in the products concerned (42%) . So was his claim that he would be the only producer of vodka to use an alcoholic strength of 42% and that this percentage would be distinctive with respect to vodka whereas in the earlier mark, the number 42 would refer to the place of manufacture of the products concerned by the former owner of the brand, which was located below the 42nd parallel (namely Baccardi's New Zealand subsisdiary).

Furthermore, the earlier international mark  enjoys reputation  in the UK for vodka and should therefore be considered as being a highly distinctive character because of its use in that country. Accordingly, there is a likelihood of confusion between the conflicting marks within the meaning of Article 8 paragraph 1 b) of Regulation No 207/2009.

Click here for more creative 42Below ads (better than MadMen)

Other popular vodka advertisement here

 

 

Posted by: Laetitia Lagarde @ 07.14
Tags: general court, 42 below, 42 vodka, confusion, new zealand,
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