Vienna resource pack now available

If you had the good fortune to attend this year's Vienna Conference of MARQUES, you will be delighted to know that the resource pack, containing all the relevant and necessary materials, is now available from MARQUES if you click here. You have to have registered, though, since there's a login procedure ...

Apart from all the serious stuff, there are plenty of photos for you to browse, plus a sneak preview of next year's conference venue, in lovely sunny Alicante.

Posted by: Jeremy Phillips @ 14.17
Tags: Vienna Conference resource pack,
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WIPO roves to Spain: here come three special seminars

Don't be all at sea! Come to a Roving Seminar and sail away with gems of IP information

We have recently heard from our goods friends at the World Intellectual Property Organization (WIPO) that the next batch of Roving Seminars on WIPO services will soon be taking place. This time round, the WIPO team is heading to Valencia, Barcelona, and Zaragoza on 20, 21 and 22 October respectively.  

In accordance with WIPO's time-honoured practice, there is no charge for registering or attending; indeed, even the coffee and lunch are absolutely free. to facilitate opportunities for networking -- which are also free.

In putting on this instructive and enjoyable event WIPO will be aided and abetted by the Spanish Patent and Trade Mark Office (OEPM), as well as the Spanish Group of the International Association for the Protection of Intellectual Property (AIPPI) and local business representatives.

This event will be in Spanish only, but you can practise other languages on the multilingual WIPO presenters during the networking breaks.

Details of the seminar’s programme and registration can be found on the WIPO website here, so the best advice we can give you is:

Don't hesitate

Posted by: Jeremy Phillips @ 14.13
Tags: WIPO Roving Seminar, Spain,
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General Court: Darjeeling (lingerie) held to take unfair advantage of the reputation of Darjeeling tea

Today the General Court issued 4 judgments related to the rights over "Darjeeling"  (see here cases T-624/13, T 625/13, T-626/13  and T-627/13)

Applicant - Delta Lingerie (France)

The Tea Board (India)- earlier CTM's

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Classes 25, 35 and 38 including Women’s undergarments and day and night lingerie and related retail services"

Class 30 tea

The Opposition Division and the BoA rejected the opposition on the ground that, first, regarding the application of Article 8(1) CTMR, the goods and services covered by the signs at issue were dissimilar and, second, regarding the application of Article 8(5) of that regulation, the evidence provided by the applicant was insufficient to establish that the earlier Community collective marks had a reputation with the relevant public.

The Tea Board successfully appealed to the Court.

The GC firstly dismissed the appellant's claim that the Board of Appeal had failed, in its global assessment of the likelihood of confusion to take into account the actual or potential geographical origin of the goods or services covered by the signs at issue.

However, the GC upheld the claim regarding Article 8(5) CTMR : in light  of the fact that the hypothetical premiss on which the contested decision is based refers to a reputation of exceptional strength,  sothe positive qualities evoked by the word element ‘darjeeling’ shared by the signs at issue are capable of being transferred to some of the goods and services covered by the mark applied for and, as a result, of strengthening the power of attraction of that mark.

So far as the goods in Class 25, the mark applied for is capable of benefiting from the positive qualities conveyed by the earlier trade marks and, more specifically, the image of sophistication or exotic sensuality conveyed by the word element ‘darjeeling’. A risk of an unfair advantage cannot therefore be ruled out in the present case in respect of the goods in Class 25 covered by the mark applied for.

Therefore the Court annulled the contested decision in that regard and  Class 35  services‘[r]etailing of women’s underwear and lingerie, perfumes, toilet water and cosmetic lotions, household and bath linen’.

Posted by: Laetitia Lagarde @ 13.37
Tags: general court, darjeeling, tea, lingerie, opposition,
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General Court: LEXDELL v. DELL

In Case T‑641/14, the General court had to review the following opposition:

Ms Alexandra Dellmeier  - CTM applicant

Dell, Inc.- Opponent


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Class 16: ‘Paper, cardboard and goods made from these materials; printed matter; instructional and teaching material (included in class 16); printed goods, pamphlets, newspapers and periodicals (included in this class)’

Class 25: ‘Clothing, footwear, headgear, in particular men’s and women’s outer clothing, children’s outer clothing; hiking, trekking, outdoor and climbing clothing; men and women’s city and leisure shoes, etc

Class 41: ‘Providing of training, education and instruction, in particular organising, arranging and conducting of seminars, training courses and lectures, in particular on legal topics; etc;

Class 45: ‘Licensing of trademarks and hallmarks (legal services); licensing of patents, utility models, registered designs, copyright and artistic copyright, trademark rights, general personal rights, rights to a name and rights to a company name (legal services);etc’.

Class 9: ‘Computers; computer hardware; computer peripherals; etc;

Class 16: ‘Printed matter; handbooks, publications and information manuals for computers and for software; etc;

Class 25: ‘Clothing and headgear’;

Class 35: ‘Retail services in the field of computers, computer peripherals and software and printed publications; services of the operation (administrative service) and compilation of a data bank including the electronic information’;

Class 36: ‘Financial services relating to the purchase, re-purchase, sale and leasing of computers/information technology equipment and apparatus’;

Class 37: ‘Installation, maintenance and repair of computer hardware, computer peripherals and advisory and consulting services relating thereto’;

Class 38: ‘On-line document delivery via a global computer network; reception and delivery of data by means of electronic transmission; network for transmission of data and messages’;

Class 40: ‘Custom manufacture for others of computers, etc;

Class 41: ‘Providing of education and training in the field of computer hardware and computer software’


OHIM and the General Court upheld the opposition on the basis of Article 8(5) CTMR in respect of the services in Classes 41 and 45 covered by the mark applied for, with the exception of the services ‘cultural activities; book rental; film production; film rental; arranging film showings, performances of music and theatre productions; artist management; radio and television entertainment, arranging sporting competitions; rental of periodicals; language interpretation; translations; planning, arranging and conducting of press conferences and other public relations events’ in Class 41. The opposition was upheld on the basis of Article 8(1)(b) of CTMR in respect of the rental of books and periodicals in Class 41 and the goods in Classes 16 and 25 covered by the mark applied for.

First of all, there is a certain degree of visual similarity between the marks at issue in spite of the stylisation of the letter ‘e’ in the earlier mark and in spite of the element ‘lex’ in the mark applied for. Moreover, there is a low degree of phonetic similarity between the marks at issue in view of the presence of that element in the mark applied for and a partial conceptual similarity between them in so far as they contained the word ‘dell’, which means ‘small, wooded hollow’ in English.  Further, the word ‘lex’ would generally be understood as meaning ‘law’ or ‘legal’, so that each of the two elements in the mark applied for has a meaning. Therefore, there is a certain degree of similarity between the marks at issue. Next, the earlier mark has a reputation in relation to the goods and services in Classes 9, 37, 40 and 42.

Moreover, the Court also rejected the additional arguments invoked by the applicant. Regarding due cause, Ms. Dellmeier  claimed that she had obtained registration of that mark in Germany in 2001 for legal services and, secondly, that the mark is a combination of her name and that of her father. However, even though the applicant obtained registration of the mark applied for in a Member State, that fact cannot allow her to circumvent Article 8(5) of CTMR in respect of the whole of the territory of the EU.

Lastly,  the judgment of the Hanseatisches Oberlandesgericht Hamburg (Higher Regional Court, Hamburg) of 30 May 2012, on which the applicant relied, actually prohibits the applicant from using the mark LexDell in such a way as to make the distinction between the first and second elements of that mark obvious, with the result that that judgment cannot, in any event, be used as a basis for any argument to dispute the merits of OHIM's decision.

Posted by: Laetitia Lagarde @ 11.19
Tags: General Court, lexdell, dell, reputation, likelihood of confusion, legal services, computers,
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Novemberfest: German judges, experts and officials gather to celebrate trade marks

"Trade Expert Talks From the German Trade Mark Office" is the title of an event that is specially being laid on by MARQUES, the European Association of Trade Mark Owners, for the edification, education and enjoyment of its German-speaking members. The event takes place on Friday 20 November, at the offices of the German Patent and Trade Mark Office, Zweibrückenstrasse 12, 80331 Munich.

This event is the fruit of cooperation (left) between the German Patent and Trade Mark Office and the German Brand Association. Among the judges taking part are Professors-Doctors Joachim Bornkamm (Former Presiding Judge of the German Federal Supreme Court) and Franz Hacker (Presiding Judge of the German Federal Patent Court), Olaf Sosnitza (Former Judge of the Court of Appeal of Nuremeberg), Lars Meinhardt (Presiding Judge of the District Court of Munich), Johanna Brückner-Hofmann (Presiding Judge of the District Court of Duesseldorf) and Christoph Bartos (Member of one of the OHIM Boards of Appeal).

MARQUES will be represented by Doctors Uwe Over and Gregor Versondert, the German PTO by its president Cornelia Rudloff-Schaeffer and Barbara Preißner, Head of the Trade Mark Department of the German PTO and the German Brand Association by Dr Alexander Dröge, Head of Legal Department of the German Brand Association.

The attendance fee is 350 EUR. For further details just click here.

Posted by: Jeremy Phillips @ 04.27
Tags: Meet the Judges, Germany,
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Dutch justice! Trade mark judges invite you to say

Above: traditional Dutch refreshments are being provided

MARQUES, being the caring, sharing European Association of Trade Mark Owners that it is, welcomes all Class 46 readers to its forthcoming meeting with the Dutch judges who regularly render judgments in trade mark matters in that busy, industrious, bicycle-dominated jurisdiction.

This particular meeting draws on MARQUES's long experience of bringing together trade mark owners, their representatives and the judiciary. It has been organized in cooperation with the Benelux Organisation for Intellectual Property (BOIP) and the Benelux Association for Trade Mark and Design Law (BMM).

MARQUES promises that the judges will give lectures on the main substantive and procedural aspects of Community and national trade marks -- but that's only the beginning: there will also be an opportunity to put your questions to the judges. The attendance fee is 300 EUR. The seminar will be held in Dutch. Click here for further details.

Posted by: Jeremy Phillips @ 01.04
Tags: Meet the Judges, The Netherlands,
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Hitting the high notes! OHIM Top (Work)Shop starts in Milan

MARQUES's very good friends at the Office for Harmonisation in the Internal Market (OHIM) have been telling us all about a Workshop for Top-Users on online OHIM tools that will be held in Italy on 6 October, in Milan at the seat of Milan’s Chamber of Commerce. Following the highly successful policy of the WIPO, OHIM's Top-Users Workshop [it's so easy to call a Workshop for Top Users a "Top Shop"] is to be part of a series of roving workshops. This means that others are already planned for attractive venues in

  • Germany (4 November 2015, in collaboration with GRUR) and
  • Spain (18 November 2015, in collaboration with the Spanish patent and trade mark office).

To register for the event in Italy just click here. If you'd rather enjoy it from the tranquility of your own desk and miss out on all the fun, refreshments and networking, you can follow the workshop via streaming here.

Posted by: Jeremy Phillips @ 14.03
Tags: OHIM, workshop, OHIM online tools,
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