FRIDAY, 25 MAY 2018
General Court: Luxottica secures a glaring win
In Case T-721/16 (available in French and Spanish), Luxottica successfully enforced its rights against a copycat word mark for its famous RAY-BAN brand.
The General Court (GC) annulled the decision of the 5th Board of Appeal (BOA) which had dismissed in part the opposition between the following parties:
The Opposition Division (OD) partially upheld the opposition, on the basis of Article 8 (1) b) of Regulation No o 207/2009 (EUTMR) for all products included in classes 14 and 18 and for some of the goods included in class 9, in particular for sunglasses and spectacle frames.
The BoA considered that there was only a very small degree of similarity between the signs at issue and that sunglasses and spectacle frames - for which the reputation of the mark was found to be proved- did not have sufficient proximity to the goods concerned so that a link between the marks at issue could not be established in the mind of the relevant public, within the meaning of the Article 8 (5) of EUTMR, despite the reputation of the earlier mark.
The GC agreed with the EUIPO regarding : 1) the relevant public is the average Spanish speaking consumer and 2) the evidence presented by Luxottica, namely the figures relating to sales, advertising expenditure and market shares, as well as the various references to the success of the brand, resulted in the the brand enjoying a high level of knowledge among the relevant public for sunglasses and spectacle frames. In addition, the mark Ray-Ban occupies a consolidated position of approximately 25% of the sunglass market share in Spain, which is a fragmented market.
However, the Court disagreed with the BoA's assessment regarding the visual similarity of the mark: due to the similar structure and composition of the marks at issue, the use of a similar handwriting and the resemblance of their initial letters 'r' and 'b', the elements of similarity outweigh the differences and that, consequently, the BoA made errors in the assessment of the visual similarity, which would have had to be qualified as average, instead of verylow.
Thus, in view of the exceptionally high reputation of the earlier mark, even if there is no direct link which can be established between the goods, the association between the marks can not be excluded, in particular in view of the degree of similarity between the marks and the definition of the relevant public as being being the general public with a moderate level of attention (see judgment of 25 January 2012, VIAGUARA, T-332/10).
The Court therefore held that the Board of Appeal infringed Article 8 (5) of EUTMR and annulled the contested decision.
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FRIDAY, 18 MAY 2018
EUIPO Trade Mark and Design Education Programme launched
Class 46 readers might be interested to know that EUIPO is launching an education programme starting in September 2018.
Here’s more information from EUIPO:
The EUIPO Trade Mark and Design Education Programme (ETMD EP) is a new training programme that has been specially designed for intellectual property practitioners.
The ETMD EP will be held annually and will focus on the interaction between the EUIPO and IP practitioners in trade mark and design registration and prosecution. The course will be delivered by EUIPO staff, leading IP professionals and academics.
This first edition will be in English and will run from September 2018 to June 2019. There will be 150 hours of classes combining e-learning with two 3‑day face-to-face sessions at the EUIPO. There will also be an examination at the end of the ETMD EP and successful candidates will be awarded an EUIPO certificate.
The main goals of the Programme are: to enhance IP professionals’ knowledge of EU trade mark and design law and of the Office’s practice and tools; and to improve operational effectiveness by increasing the quality of applications and processes and by generating and sharing knowledge.
Applicants must be either a legal practitioner in the EEA or a professional representative authorised to act before EUIPO. Note that the certificate does not entitle its holder to obtain the status of professional representative before EUIPO nor is it a prerequisite to represent parties before EUIPO.
Registration is limited to 100 persons and is open from 15 May to 30 June 2018, on a first come, first served basis. The course fee is €1,500.
For more information about the programme of studies, the calendar and tuition fees, please visit the ETMD EP website.
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FRIDAY, 18 MAY 2018
WIPO at the INTA Annual Meeting
Readers who are attending the INTA Annual Meeting in Seattle next week may be interested in the following activities in which WIPO representatives are participating:
Madrid System Users’ Meeting (Sunday, May 20, 10:15 – 12:00): Room 616-617 (6th floor).
Meeting highlights include: Updates on the Madrid System for the International Registration of Marks and the Hague System for the International Registration of Industrial Designs by Registry directors Marcus Höpperger and Grégoire Bisson; and a panel discussion on the impacts of recent and upcoming Madrid System accessions, with representatives from:
You can also watch a live webcast of Madrid System Updates presented by Madrid Registry Director Marcus Höpperger on Sunday, May 20 (10:00-10:30 Seattle time).
The WIPO booth (No. 102) is in the main exhibition hall. You can meet WIPO experts and representatives of members’ IP offices, and get answers to your questions about the Madrid and Hague Systems. Learn more about the upcoming International Conference “Respect for IP – Growing from the Tip of Africa” from the Building Respect for IP Division, and get the latest on IP dispute resolution from the WIPO Arbitration and Mediation Center.
E-services demo sessions: Take advantage of our live demo sessions on Madrid System e-services, presented daily (Monday May 21 to Wednesday May 23) at the WIPO booth. Register to attend one or more sessions and find out how you can benefit from the full suite of e-services throughout the international trade mark registration and management process. Demos at this year’s booth include:
Table Topic sessions
Table Topic sessions and Workshops chaired by WIPO:
Thanks to WIPO for sharing this information. Find out more about the INTA Annual Meeting on INTA's website.
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THURSDAY, 17 MAY 2018
General Court reminds trade mark proprietors of the importance of meeting genuine use deadlines
The General Court found that the EU IPO and the Board of Appeal were correct to uphold a revocation of an EU Trade mark registration for SKYLEADER, on the basis that no evidence had been filed within the prescribed time limit.
The EU IPO had set a deadline of 13 October 2015 for Skyleader A.S. to submit evidence of genuine use in response to a revocation application filed by Sky International AG (“Sky”). Whilst the EU IPO received a fax containing a cover letter listing the evidence of use by 12 October 2015, it only received the evidence by post on 15 October 2015. The EU IPO, and the Board of Appeal both found that they could not take this late filed evidence into account, as under Rule 40(5) Implementing Regulation 2868/95, where evidence of use is not received during the time limit set, then the trade mark registration should be revoked.
Skyleader appealed the BOA’s decision to the General Court, on the basis of two arguments, which the General Court assessed as follows:
Misinterpretation of Rule 40(5) in light of Art 76(2) CTMR 207/2009
Skyleader argued that Rule 40(5), had been misinsterpreted in light of Art 76(2) CTMR 207/2009, which states that the EU IPO on may disregard facts/evidence filed out of time, and therefore that the EU IPO had discretion to take the evidence into account. However, the General Court, agreeing with the BOA, found that if there is no evidence whatsoever filed within the time limit, then the EU IPO cannot exercise such discretion. As such, the EU IPO were correct to automatically reject the evidence. The EU IPO only has a discretion where a party has submitted evidence of use that is not completely irrelevant. The cover letter faxed to the EU IPO on 12 October 2015 contained no evidence of proof of use. Therefore, Rule 40(5) had been applied correctly.
The General Court found that the reasons for the lateness of the postal evidence could not call that finding into question. Even if the proprietor had wanted to invoke unforeseeable circumstances such as force majeure, or excusable error, they had not shown that they had acted in good faith. They had not exercised all the care and diligence required of a normally well-informed operator to monitor the course of the procedure set in motion and to comply with the time limits. Skyleader hadn’t tried to send proof of use via fax during the time limit, or sought any other relief (restitution in integrum, continuation of proceedings or an extension of the deadline). Therefore, the General Court found that they could not argue that the EU IPO didn’t take into account the reasons for the lateness of the evidence.
Further, the burden to prove that a mark has been put to genuine use is on the trade mark proprietor. Skyleader had sought to alternatively argue that the letter itself constituted evidence, as it contained Skyleader’s company name and its website address, and therefore the EU IPO could exercise its discretion and take the late filed evidence into account. The General Court found that To show genuine use, a proprietor has to show time, place, extent and nature of use of the mark. Merely identifying the identity of the proprietor and a website does not do this, and was merely to prove information about the proprietor. Further, it is not for the EU IPO to investigate whether proof of use is contained within a letter. Here, it was apparent from the letter that proof of use was going to be sent separately in the further annexes. As such, the letter clearly wasn’t evidence of use.
Therefore, no evidence of use had been filed in time, and the General Court rejected Skyleader’s arguments.
The EU IPO violated the principle of sound administration in not informing the applicant of the means for rectifying the late submission of proof of use
Skyleader argued that the EU IPO should have advised them of the routes that were available to them to rectify the late filing of evidence.
The General Court explained that there is no provision requiring the EU IPO to inform a party of the procedures available to it under Art 81 and 82 of the Regulation. It is not incumbent on the EU IPO to advise a particular party to pursue a particular legal remedy. There is information contained within the Guidelines for Examination, particularly in respect of the expiry of deadlines. As such, the General Court rejected this argument as unfounded.
As such, the General Court dismissed Skyleader’s appeal and ordered it to pay the costs of Sky and the EU IPO.
This case is a good reminder of the importance of exercising due care and diligence, particularly for genuine use evidence deadlines.
Thanks to my colleague, Amanda McDowall, an associate at CMS Cameron McKenna Nabarro Olswang LLP, for contributing this post!
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TUESDAY, 15 MAY 2018
Finnish Court rules on women’s name trade marks
In a guest post, Suvi Haavisto discusses the recent judgment of the Finnish Market Court on trade mark infringement in Laulumaa Huonekalut Oy v Pohjanmaan Kaluste Oy (MAO:154/18), concerning the use of the women's names SARA, OLIVIA and SOFIA for furniture.
The Market Court of Finland (MAO) gave its judgment on 16 March 2018 in the trade mark infringement case of Laulumaa Huonekalut Oy v Pohjanmaan Kaluste Oy (MAO:154/18).
Furniture seller Laulumaa Huonekalut Oy had filed a trade mark infringement claim with the Market Court against a furniture manufacturer Pohjanmaan Kaluste Oy. The case concerned Finnish trade marks SARA (number 236024), OLIVIA (number 248620) and SOFIA (number 236285) registered for furniture in class 20:
The parties' arguments
Laulumaa claimed that Pohjanmaan had infringed Laulumaa’s trade mark rights by using the names "Sara Bar table", "Olivia Dining table" and "Sara Seatable sofa" in the sales and marketing of its products.
Laulumaa asked the Market Court to confirm the infringement and order Pohjanmaan to cease the infringement. In addition, Laulumaa claimed reasonable compensation for the unauthorised use of the trade marks of €100,000, compensation for the damage caused by the infringement of €100,000, legal fees of €35,804.50 and costs for publishing the judgment of €2,470.
Pohjanmaan claimed that the trade marks had not been distinctive at the date of filing and had not acquired distinctiveness through use either. The names Sara, Sofia and Olivia have been among the most popular names in Finland in recent decades – these names and corresponding forenames have been used for furniture by various entities and it has become established practice to use the names like product numbers, not to indicate their origin.
Based on the evidence provided by Pohjanmaan, the Market Court acknowledged that different furniture traders had identified their products using women’s forenames, such as Sara, Olivia and Sofia, even before Laulumaa's trade mark applications were filed. Thus, the Market Court considered that the trade marks may possess distinctiveness only in respect of their figurative elements. Thus, the injunctive scope of the trade mark remains very restricted.
The Market Court considered that Pohjanmaan had used the names in marketing but not the parts that would be even slightly distinctive, ie the figurative elements other than standard font style. The Market Court came to the conclusion that the use of the names did not constitute use of the protected trade marks, and thus there was no trade mark infringement.
Consequently, the Market Court dismissed Laulumaa's claim in its entirety and ordered Laulumaa to cover Pohjanmaan's legal fees in the amount of €29,883.60.
Suvi Haavisto is a brand protection lawyer with Roschier in Helsinki
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MONDAY, 14 MAY 2018
EDB Forum registration is now open
The EUIPO EDB team has sent the following information about the EDB Forum, which we reproduce with their permission:
The EDB Forum is a unique opportunity for rights holders to meet face-to-face with enforcement authorities who daily deal with counterfeiting in the different EU countries.
We have planned a number of technical meetings that will focus on specific topics such as:
The exhibition on counterfeits will be running this year.
The participation is free of charge for EDB users and the registration can be done in parallel to the account creation.
For questions, do not hesitate to contact the EDB team at email@example.com
More information is available on the 2018 EDB Forum website.
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SUNDAY, 13 MAY 2018
Inversion of letters: Confusing ro nto?
In Case T-241/16, the EU General Court ("GC") had to consider whether or not consumers will be confused where a later mark consisting of two letters is an anagram of an earlier mark.
The applicant, El Corte Inglés, SA, sought to register the figurative sign on the right as an EU trade mark. The goods in respect of which registration was sought were in Classes 3, 18 and 25 and included "clothing, footwear, headgear". In 2014, the intervener, WE Brand Sàrl, filed an opposition in respect of all goods applied for. The opposition was based on the earlier EU word mark "WE" covering, inter alia, goods in Classes 3, 18 and 25, including "clothing, footwear, headgear".
WE Brand argued that there was a likelihood of confusion within the meaning of Article 8(1)(b) EU Trade Mark Regulation ("EUTMR"). The European Union Intellectual Property Office ("EUIPO") upheld the opposition for most of the contested goods.
The Second Board of Appeal of EUIPO ("BoA") dismissed the applicant's appeal. It found that the signs at issue exhibited significant visual and phonetic similarities. Consequently, there was a likelihood of confusion in respect of all the goods that had been found to be identical, similar or similar to a low degree.
The GC upheld the action filed by El Corte Inglés and annulled the decision of the BoA.
In the Court's view, the BoA was correct to compare the signs, for reasons of procedural economy, only from the standpoint of the Italian- and Spanish-speaking public. According to established case law, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) EUTMR exists in part of the European Union (see, for instance, Case T-390/15, para. 38).
However, the GC held that the BoA erred in finding that the signs exhibited significant visual and phonetic similarities. While both signs consisted of the letters "w" and "e", the mere presence of those two letters could not be sufficient to conclude that there was an average degree of visual similarity. The GC observed that there were differences between the signs inasmuch as, first, the letters were not arranged in the same order and, second, "the interconnection in the upper part of the letters ‘e’ and ‘w’ which, though barely visible, nevertheless strengthens the impression that the mark applied for forms a single syllable and an indivisible whole."
As regards the phonetic comparison, the Court pointed out that the relevant public would pronounce the earlier mark as ‘ve’ or ‘güe’, or even, regarding the part of that public which had a knowledge of English, as ‘wi’. The mark applied for, by comparison, would be pronounced as ‘ev’. Moreover, the fact that the mark applied for started with a vowel whereas the earlier mark with a consonant created a difference in the pronunciation of the signs at issue.
Finally, when faced with the combination of letters ‘we’, consumers would, in the view of the GC, be capable of associating it with the personal pronoun in the first person plural in English, whereas, when faced with the combination of letters ‘ew’, they would not recognise any term or concept capable of having a meaning.
As a result, said the Court, the overall impression made on the relevant public by the signs did not give rise to a likelihood of confusion, even though the goods were identical or similar
The Court's decision is well-reasoned. It seems plausible that consumers can distinguish between the signs "WE" and "EW", in particular due to their phonetic differences and because one of the signs has a specific meaning that is missing in the other. One could argue, moreover, that the scope of protection granted to two-letter marks should, in principle, not cover later marks constituting an anagram of these letters, except under special circumstance (e.g., high distinctive character of the earlier mark).
This outcome is in line with established EU case law, according to which consumers, when faced with very short signs, will be able to perceive the differences between them more clearly (see, for instance, T‑272/13, para. 47). The EUIPO considers signs consisting of three or fewer letters/numbers as such "very short signs" (EUIPO Guidelines, Part C, Section 2, Chapter 4, p. 75).
Nonetheless, the EUIPO has occasionally confirmed a likelihood of confusion between two-letter marks containing an inversion of letters (see, for instance, Case R895/2013-1 "DM" v "MD" and Case B1001652 "BP" v "PB", both partially upholding the opposition). As regards three-letter marks, oppositions in such cases appear to be successful more often than not (see, for instance, Case R3074/2014-2 "MTG" v "MGT" and Case R2508/2014-5 "HDP" v "DHP"). In view of the General Court's reasoning in the present case, it will be interesting to see whether a change in the EUIPO's approach will take place.
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