THURSDAY, 14 DECEMBER 2017
Switzerland: top ten trade mark agents over the last ten years
For the last ten years, I have annually posted the trade mark agents from Switzerland with the most new national filings (without renewals or change of ownership), see for example here the post for 2016 (latest available data). The data is from the Swiss national registry Swissreg; for a brief explanation of the methodology, see the post linked.
The above chart shows the relative position of the top ten ranked firms from 2016 over the last ten years, since 2007. E. Blum & Co is the undisputed champion, holding on to the number 1 position for the entire time. Notable is the rise of FMP Fuhrer Marbach & Partner from number 7 to number 3. Wild Schnyder really put itself on the map in the last three years, coming from outside the top ten to number 5. A.W. Metz & Co AG has seen a steady decline from number 2 to number 7.
Note that this ranking is based purely on quantitative data and says nothing about the quality of the services provided.
This will be my last post on Class 46. Having been elected President of the Swiss Federal Patent Court in June 2017, I will take office on 1 January 2018 and cease all blogging activity. It was a blast while it lasted!
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SUNDAY, 10 DECEMBER 2017
Master: On fizzy drinks, trade marks, behavioural economics and the principle of territoriality
In Case T-61/16 Coca-Cola v EUIPO and Mitico, the General Court ("GC") had a second opportunity to make its opinion on the "Master" mark heard. The first time around, the GC was not impressed by the EUIPO's reasoning. In this regard, nothing has changed. But the GC's present judgment raises new questions concerning behavioural economics and the principle of territoriality.
Background of the case
In 2010, Modern Industrial & Trading Investment Co. Ltd ("Mitico") sought to register the below figurative sign ("Contested Mark") for various goods in Classes 29, 30 and 32, such as "non-alcoholic aerated waters of all kinds and flavours, particularly with cola taste" and "baking-powder; salt; mustard":
The Coca-Cola Company ("Coca-Cola") opposed the application on the basis of five earlier marks depicted below covering, as one would expect, "mineral and aerated waters and other non-alcoholic drinks" as well as other products in Classes 30, 32, 33 and 43:
Coca-Cola argued, among other things, that use of the Contested Mark would take unfair advantage of the earlier marks within the meaning of Article 8(5) EUTM Regulation ("EUTMR"). According to that provision, as our readers will know, the mark applied for shall not be registered where it is at least similar to an earlier reputed mark, irrespective of whether the goods/services are similar, provided that the use without due cause of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier trade mark. In support of its claim, Coca-Cola submitted evidence, such as the below screenshots of Mitico’s website (www.mastercola.com), allegedly showing commercial use of the Contested Mark:
Nonetheless, the Opposition Division rejected the opposition, and the Board of Appeal ("BoA") dismissed Coca-Cola's appeal. The BoA found the signs to be dissimilar, preventing any unfair advantage to be taken. Further, it disregarded the screenshots on the ground that only the mark applied for ought to be taken into consideration.
Upon Coca-Cola's first action before the GC (see Case T-480/12, reported here), the BoA's decision was annulled. The GC found that the earlier EUTMs and the Contested Mark were sufficiently similar for the relevant public to establish a link between them for the purpose of Article 8(5) EUTMR. The marks were allegedly similar as regards the shared use of Spenserian script and the 'tail' flowing from their first letters. Moreover, the GC held that the BoA erred in disregarding the presented screenshots. In the Court's view, account had to be taken of any evidence intended to facilitate an analysis of the probabilities as regards the intentions of the trade mark applicant.
In 2015, back in Alicante, the BoA dismissed Coca-Cola's appeal again. The reputation of the earlier EUTMs for 'non-alcoholic drinks' was not disputed, but the BoA saw no serious risk that use of the Contested Mark would take unfair advantage of that reputation. The examination of the evidence did neither show that Mitico had used the presentation displayed on its website in the EU, nor that Mitico intended to promote its goods here in the same way as it did in Syria and the Middle East. In addition, the BoA found that Coca-Cola had failed to show what its earlier marks stood for (i.e., a specific image).
Judgment of the GC
Now, the GC has also annulled the second decision of the BoA. In the GC's view, the BoA was wrong to reject the evidence of commercial use (i.e., the screenshots). In essence, the GC gave the following reasons:
The GC was not swayed by the counter-argument that the presentational features which were used outside the EU but were not part of the mark applied for might not be used in the EU (i.e., the red label on which the term ‘Master Cola’ was written in white, the characteristic shape of the container and the red cap). Although the "possible use of such presentational features in the Union is likely to reinforce the logical inference that there is a risk of free-riding, it does not constitute the necessary condition for such an inference", said the GC.
By way of obiter dictum, the GC also ruled on the BoA's assessment that Coca-Cola had not shown the specific image that could be transferred to the mark applied for. The GC recalled that Coca-Cola had "quoted excerpts from a book and a study by independent body Superbrands", according to which "the brand values of Coca-Cola have stood the test of time and aim to convey optimism, togetherness and authenticity[;] Coca-Cola is not political but aims to bring people together with an inspiring promise of better time and opportunities[;] those values make Coca-Cola as relevant and appealing today as yesterday and underpin the loyalty, affection and love that generations have experienced for the brand[;] the reputation of The Coca-Cola Company for strong marketing ensures that that connection remains as powerful as ever". In view of these statements, reasoned the GC, the BoA was wrong to find that the evidence submitted by Coca-Cola did not make it possible "to establish clearly what Coca-Cola stood for".
Finally, the GC pointed to the "non-decisive nature" of the BoA finding that none of the goods in Classes 29 and 30 are refreshments for which the earlier marks are well-known. In this context, the GC considered it necessary to reiterate that the Superbrands study submitted by Coca-Cola indicated that "since Coca-Cola remains at the peak of world brand recognition, the company is able to use its relationship to consumers in order to have an impact beyond the non-alcoholic beverage market".
Coca-Cola's case has a lot going for it. Within the food and drink industry, lookalike products are a real concern. The packaging of this type of products is designed in an attempt to come as close as possible to the get-up of the products sold under established brands without causing infringement. Some might argue that such products legitimately inform consumers of the fact that they serve similar purposes as the branded original products but at a lower price. However, others will recall instances where they rushed through a supermarket and ended up (consciously or not) buying a product / brand that they had initially not set out to buy.
The reason behind this effect can to some extent be explained by current research in behavioural economics. Within this field, it is largely accepted that consumers (and humans more generally) dispose of two modes of thinking, which are often referred to as System 1 and System 2. As Daniel Kahneman explains in his book "Thinking, Fast and Slow", System 1 is concerned with effortless and automatic cognitive processes (e.g., reading words on large billboards, driving a car on an empty road), while System 2 is responsible for deliberate and effortful mental activities (e.g., filling out a tax form, computing the product of 17 x 24). Most of what we would typically refer to as "thinking" is done by System 2, but the (unconscious) intuitive operations of System 1 are at the heart of many choices we make in everyday life. Doing grocery shopping after work (while 'thinking' of the itinerary for the next day), may be much less of a deliberate process than you would expect.
Having said that, if there is one thing that this Blogger learned during his studies under Paul Dolan, Professor of Behavioural Science at the LSE, it is that, when trying to understand human behaviour, "context matters". While a specific colour or a particular fond may prime people towards a specific behaviour in one context, it does not necessarily follow that the same result would be achieved in a different scenario. What does that mean for the "Master" mark? The products presented in the above screenshots may very well call Coca-Cola instantly to mind and benefit from the repute of that brand. But the question is whether this would also be the case if the trade mark "Master" were used for the other goods applied for, say, on a yellow label "Master Mustard", on a green packaging for "Master Salt", or an orange "Master Baking-Powder". This is not to say that an image transfer is not possible in such cases. However, it does seem questionable whether an abstract statement by Superbrands on Coca-Cola's impact beyond the non-alcoholic beverage market can serve as evidence.
Of course, this last point ties back to the assessment of the screenshots and, ultimately, to the principle of territoriality. It is not entirely clear what the GC meant by stating that the possible use of the presentational features (e.g., the colour red) in the EU does not constitute the necessary condition for inferring that the mark applied for would take unfair advantage. From reading the judgment one gets the impression that these presentational features on Mitico's website were precisely the decisive element of the case.
In this Blogger's view, there are important exceptions to the general principle according to which the EUIPO should focus its assessment on the marks and the goods applied for / registered. For instance, where the possible technical function of a 3D mark has to be examined for the purposes of Article 7(1)(e) EUTMR, it is indeed necessary to rely not only on the representation of the mark itself but on other sources, such as patents rights associated with the products in question (see, for instance, Case C-48/09 P Lego Juris). One might even go so far as to say that in such cases, it is not of particular relevance whether the patent protection existed within the EU or beyond. If the shape of the product was necessary to achieve a technical result outside the EU, there are good reasons to assume that the same is true in the EU.
However, there are doubts whether the same logic applies in the present case. Even assuming that the actual use of the mark applied for has to be considered for an opposition invoking Article 8(5) EUTMR, it does seem problematic to rely on the commercial behaviour of a trade mark applicant outside the EU in order to make assumptions about its intentions within the EU. Due to the applicability of different laws and the territorial scope of the intellectual property rights, companies will often not market their products in the same way throughout the world. While marketing a product in a specific colour shade may be perfectly fine in one state, a competitor may own an abstract colour mark for that particular shade in another country. Simply assuming that a company will not pay attention to such national differences appears to be an oversimplification. While the Court of Justice of the European Union accepted that a serious risk of free-riding may be established on the basis of logical deductions, it has also made clear that such deductions must not be the result of mere suppositions (see Case C-383/12 P Environmental Manufacturing, para. 42-43).
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FRIDAY, 8 DECEMBER 2017
Moldovan National IP Office to take over police powers
We are pleased to share with readers the following news from Moldova, provided by Ion Tiganas of Tiganas & Partners IP Law Firm:
Recently, the Ministry of Justice of the Republic of Moldova proposed for public debate a draft law, which also covers the intellectual property field. The draft law was designed to improve the business climate. In this respect, adjustments are proposed to the Criminal Code, the Criminal Procedure Code, the Contravention Code and a number of other normative acts.
For the intellectual property field, the draft provides for the following changes:
Our firm is directly involved in the public debates on this draft law. According to our first statement and given the magnitude and complexity of the proposed changes, a profound analysis of these changes is required to identify both the benefits and the risks they entail.
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THURSDAY, 7 DECEMBER 2017
Representation of new types of trade marks
Robert Guthrie, Chair of the MARQUES European Trade Mark Law and Practice Team, brings news of a Common Communication on the representation of new types of trade marks:
A Common Communication on the representation of new types of marks was published by the European Trade Mark & Design Network on 4 December.
The Common Communication sets out how each national office, the Benelux Office and the EUIPO plan to implement the removal of the graphic representation requirement from EU trade mark law and in particular what new types of marks and what electronic file formats they plan to accept.
As most Member States have not yet finalised their national legislation through which the new Trade Mark Directive will be implemented the Communication itself points out that it:
serves merely as a compilation to inform about the understanding reached among the Member States IPOs and has no legally binding effect on the national legislative procedure of the Member States. Nor shall it be read and interpreted as containing specific undertakings by Member States that would limit their freedom to make their own choices within the framework of the provisions of the new Trade Mark Directive.
MARQUES understands that one of the key drivers behind the preparation and adoption of the Common Communication is to try and ensure that the implementation of the removal of the graphic representation requirement is harmonised, as much as possible, with the approach already adopted in the EUTM Implementing Regulation and by the EUIPO.
MARQUES is supportive of this aim, so that brand owners can apply and register the same types of marks using the same electronic file formats across the EU.
MARQUES members and other interested readers might like to note the following aspects of the Common Communication:
Robert Guthrie is a partner of Osborne Clarke in London and chairs the MARQUES ETMLP Team.
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WEDNESDAY, 6 DECEMBER 2017
MARQUES disappointed by Red Bull decision
The EU General Court last week published its judgment in the joined cases T-101/15 and T-102/15, Red Bull v EUIPO. The case involves two EU trade mark applications for a blue/silver colour combination for “energy drinks” in class 32.
MARQUES was granted leave to intervene in support of Red Bull and was represented before the Court by Roland Mallinson, partner of Taylor Wessing and member of the MARQUES Council and Executive Team.
Mere juxtaposition of two colours
The two marks were filed in 2002 and 2010 and registered on the basis of acquired distinctiveness. However, they were challenged by Polish company Optimum Mark, and the cancellation division found that the graphic representation of the marks constituted the “mere juxtaposition of two or more colours, designated in the abstract and without contours”, and therefore did not exhibit the qualities of precision and uniformity required by Article 4 of Regulation No 207/2009. This finding was upheld by the Board of Appeal.
The General Court has now confirmed that decision, saying that the Board of Appeal was right to find that the graphic representation of the marks “allowed several different combinations of the two colours” and that the accompanying descriptions “did not provide additional precision with regard to the systematic arrangement associating the colours in a predetermined and uniform way”.
It added that “it is neither impossible nor disproportionate to require that an application for registration relating to a trade mark consisting of a combination of colours per se be represented graphically or accompanied by a description containing the systematic spatial arrangement of the colours in such a way as to enable the subject matter of the protection afforded by that mark to be grasped clearly and precisely”.
In its intervention, MARQUES said the Board of Appeal decision “has the effect of unfairly discriminating against owners of trade marks that are a combination of two or more colours per se in the abstract … It seeks to impose a requirement that such marks, and only such types of marks, must include an ‘explicit description’ of how the colours are applied to the product or in marketing materials … MARQUES considers this extra requirement is not needed for a mark to meet the registration requirements set out in Article 4 CTMR or Article 2 of the Trade Marks Directive”
Following the judgment, Roland Mallinson said: “MARQUES is disappointed by the decision. We had supported Red Bull's case as we believed the original decisions wrongly set the bar too high for registering these types of marks once proven to be distinctive from extensive use. Today's decision likewise makes it effectively impossible to protect the combination of two particular colours when, in practice, everyone knows how strong such marks can be at identifying trade source. I tried to reinforce that point in court by wearing the famous (to cricketers) red and yellow colours of the MCC. Illogically, it remains easier to secure a broad monopoly right for a single colour than it is for colour combinations. MARQUES is keen to see an interpretation of the law to allow such registrations, both in this case and under the new rules. The latter do away with the obligation to represent marks graphically and acknowledge the ‘what you see is what you get’ principle.”
Although the Court did not agree with MARQUES’ submissions in this case, the judgment does make several references to the arguments put forward by MARQUES (“the intervening association”).
MARQUES will continue to support Red Bull in the event of an appeal to the CJEU.
The MARQUES Amicus Curiae Team considers intervening in writing and/or at a hearing in any case that is likely to have a significant impact on brand owners. To find out more about its work, see previous submissions and contact the Team members, visit its dedicated page. The Chair of the Team is Michael Treis of Baker McKenzie and Vice Chair is Martin Viefhues of Jonas Rechtsanwaltsgesellschaft.
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MONDAY, 4 DECEMBER 2017
A canter through UK trade mark cases
In a guest post, Adrian Dykes of Allen & Overy reports on the recent CITMA lecture “A Canter through the cases” in London, part of CITMA's evening talk series (more details on CITMA's website here).
On 28 November Jade MacIntyre (Allen & Overy), took a packed audience of CITMA members on a canter through the UK trade mark cases of 2017. Jade’s canter turned out to be a comprehensive gallop through all the major UK decisions relating to absolute grounds, relative grounds and passing off, proof of use and parallel imports.
For those that missed it, here’s a summary of some of what was covered. In perhaps a sign of things to come, decisions of the EU Court of Justice were not mentioned.
• Oldfields Applesecco O/437/17: the opponent, the legal person under Italian law to protect the protected designation of origin Prosecco, successfully opposed an application for APPELSECCO under s3(4) of the Act on the basis that the mark could not be allowed in the United Kingdom because the applicant’s product did not comply with the product specifications for Prosecco.
• Apple Inc v Arcadia Trading Ltd (IWATCH)  EWHC 440: Arnold J dismissed Apple’s appeal to the High Court, following an adverse decision by the UKIPO that concluded that IWATCH was descriptive for some class 9 goods. The net effect being that a multipurpose product may be classified properly in more than one class. Apple’s attempts to argue distinctiveness acquired through the use of its i- family marks also failed.
• Société des Produits Nestlé SA v Cadbury UK Ltd  EWCA Civ 358: in the ongoing dispute between Cadbury and Nestlé pertaining to the KIT-KAT shape mark, the Court of Appeal dismissed Nestlé’s appeal, upholding Arnold J’s decision that the KIT-KAT shape could not be registered as a trade mark. The decision confirmed that it is not enough for the shape to be well-known or for a significant proportion of the relevant class of consumers to recognise and associate the shape with the applicant’s goods for the requirements of acquired distinctiveness to be satisfied. Consumers must perceive the shape as an exclusive indicator of origin.
• Mermeren Kombinat AD v Fox Marble Holdings plc  EWHC 1408: in a case dealing with marble quarries dating back to the Roman Empire, HHJ Hacon had to consider the use of the SIVIEC mark in connection with marble quarried from the Sivec mountain pass in FYR Macedonia. The upshot was that if consumers have not heard of the geographical location because it is obscure, they will likely not perceive a mark as indicating geographic origin.
• COME TO THE DARK SIDE O/106/17: this opposition case serves as a useful reminder of the high bar that those alleging bad faith have to satisfy.
• Glaxo Wellcome UK Ltd v Sandoz Ltd  EWCA Civ 335: the Court of Appeal considered the validity of GSK’s purple colour scheme as applied to an inhaler. Both the visual representation and written description were considered, and ultimately these did not conform to the Sieckmann criteria. HHJ Hacon’s summary judgment was upheld and the mark declared invalid. A referral to the CJEU was refused.
• London Taxi Corp Ltd (t/a the London Taxi Company) v Frazer-Nash Research Ltd  EWCA Civ 1729: the London taxi marks remain invalid on the basis of a lack of distinctive character. Interestingly, Floyd LJ expanded the category of consumers from purchasers of taxis (ie, taxi drivers) to include users of taxi services, as such consumers may be concerned with the origin function of a vehicle mark at the time of hiring.
Relative grounds and passing off
• Jadebay Ltd and others v Clarke-Coles Ltd (t/a Feel Good UK)  EWHC 1400: in a case concerning the re-use of a unique Amazon product listing which includes a trade mark, there is use of that trade mark when the listing is re-used, and trade mark infringement is possible.
• ELECTRIC BALLROOM O/240/17: in invalidity proceedings relating to the use of the ELECTRIC BALLROOM mark for clothing, the UKIPO went out of its way to find a compromise position meaning that both parties could use the mark for their clothing lines. The registrant would limit its registration to clothing specifically for ballroom dancing, which kept the mark far enough away from the applicant for invalidity’s use.
• LUXURY HOTELS OF THE WORLD O/150/17: LUXURY HOTELS OF THE WORLD was found to be confusingly similar to SMALL LUXURY HOTELS OF THE WORLD, showing that there can be a likelihood of confusion, even for marks with very low distinctive character.
• UNI BAGGAGE O/164/17: this opposition case demonstrates that the proviso to s3 of the Act is not as onerous as proving goodwill for the purposes of a passing off action. The hearing officer found that under the proviso it needed only to be shown that the mark is no longer purely descriptive, rather than that the acquired secondary meaning has displaced the original descriptive meaning.
• COCO’S LIBERTY O/223/17: Chanel opposed an application for COCO’S LIBERTY in class 14 for jewellery, based on its COCO family of marks. Adopting the EUIPO’s approach, the Office focussed on Chanel’s best case, COCO, also in class 14, on grounds of procedural economy. Chanel was successful.
• VISII O/263: This opposition case related to an application for software in class 9 and “software as a service” in class 42 – no doubt an area that is ripe for future trade mark disputes of this nature. The hearing officer reminded the parties of the breadth of the term “software”, and concluded that it should be difficult to obtain a monopoly for all software. The hearing officer referred to Tribunal Practice Notice 1/2012 to conclude that it was within her remit to reword the specification to allow the application to proceed for “search engine software” in class 9. Unfortunately for the Applicant, the class 42 services did not lend themselves to a suitable limitation that would avoid a likelihood of confusion.
• Bayerische Motoren Werke Aktiengesellschaft v Technosport London Ltd  EWCA Civ 779: in the complex area of spare parts, BMW succeeded in its claim against Technosport, a specialist repairer of BMWs, but with no formal connection to the car manufacturer, but which used a range of BMW’s marks liberally to extol its credentials. The court drew a distinction between informative use (ie, I repair BMWs or I use genuine BMW parts), and misleading use (eg my repair service is connected to BMW). This case reminds users of third party marks that care must be taken to make it clear that related goods or services are not authorised or connected commercially to the brand owner.
• Sky plc and another v Skykick UK Ltd  EWHC 1769 (Ch): the High Court rejected an application for a reference to the CJEU on the compatibility of the abolition of the own name defence in Regulation 2015/2424 with certain EU rights. The application was unsuccessful.
• Azumi Ltd v Zuma’s Choice Pet Products Ltd and Zoe Vanderbilt, 2017] EWHC 609: a disappointing case for dogs (and presumably cats), which held that the own name defence does not extend to our canine friends.
• Coreix Ltd v Coretx Holdings plc  EWHC 1695: in infringement proceedings before the IPEC, the court held that the defendants were unable to rely on acquiescence or estoppel as defences. This follows the decision last year in Marussia Communications Ireland Ltd v Manor Grand Prix Racing Ltd which concluded that estoppel is not available as a defence to infringement of an EUTM. Despite trading with each other for three years, the defendant's registration of the CORETX mark was invalid on the basis of the claimant's registration and passing off. Finally, the defendants' use of the domain names "cortex.com" and "coretxnetwork.com" also amounted to infringement of the claimant's mark and passing off.
• Argos Ltd v Argos Systems Inc  EWHC 231: in what must be the hardest fought case of the year, the court confirmed that the simple registration of a domain name containing the trade mark of a third party would not of itself support a claim of trade mark infringement or passing off. The court also ruled that the mere display of Google-generated adverts for the claimant’s goods and services on the defendant’s website would not be sufficient to support such claims. The court declined to intervene in a situation where one entity has happily traded as Argos in the UK and Ireland for many years, and one has happily traded as Argos in the United States for many years. Coexistence and lack of confusion can be fatal to an infringement claim.
• ABSURD BIRD O/264/17: This case concerned an application for invalidity against the mark ABSURD BIRD based on Dirtybird’s earlier UK trade mark registration for the mark BIRD and its related goodwill in the brand. The marks involved were held to be highly similar for identical services, and the registration was invalidated on relative grounds. The hearing officer declined to consider passing off.
• Champagne Louis Roederer v J Garcia Carrion  EWHC 289: the defendants sold Spanish sparkling wine under the name CRISTALINO, infringing the claimant’s rights in its CRISTAL brand of champagne. The defendants took a risky approach to this case by not defending the account of profits. They neither supplied Island Records disclosure nor turned up at the hearing, perhaps taking comfort from the fact that reported decisions on accounts of profits for trade mark cases have tended to show the recovery of only modest sums. That left the claimant having to put together its own evidence to prove the defendants’ lawful profits (which it had chosen over proving its own loss), which it by providing evidence from disputes at the Commercial Court in Brussels, the UK IPO and the US District Court of Minnesota, as well as information from supermarket retailers that had supplied the infringing product in the UK. The evidence stood without challenge, as there was nobody at court to mount a challenge. The Master accepted the evidence and it propelled the claimant to an award in excess of €1.3 million.
Proof of use
• Sherlock Systems CV and others v Apple Inc O/015/17: in what will be no doubt one of many decisions relating to the activities of Michael Gleissner, Mr Gleissner’s 68 applications for revocation against many of Apple’s well-known marks, including APPLE, iPHONE and iTUNEs, were thrown out as an abuse of process.
• MARQUEE O/488/17: a useful reminder that failing to file evidence of use on time can be fatal to a mark, even if there is genuine use.
• Flynn Pharma Ltd v Drugsrus Ltd and another  EWCA Civ 226: the Court of Appeal dismissed an appeal by a parallel importer against a High Court ruling that the imported goods infringed the claimant's trade mark. This was the case even though the parallel importer had to apply the claimant’s mark in order to compete in the UK. The main question was whether there was a disguised restriction of trade contrary to Article 36 of the Treaty on the Functioning of the European Union, which sets out exceptions to the free movement of goods within the EU. The Court of Appeal found that the claimant had no control over the goods the defendants wished to import, which were under the control of a third party, Pfizer, and that Pfizer had no control over the claimant's use of its mark. Therefore, the claimant had a legitimate interest in the enforcement of its mark against goods that it had not placed on the market under that mark and over which it had no control.
• R v C and others  UKSC 58: in this well-publicised case, the Supreme Court decided that the offence of unauthorised use of trade marks, contrary to section 92(1) of the Act, was made out in relation to "grey market" goods as well as "true counterfeits". Grey market goods are goods that are manufactured and the trade mark applied with the permission of the trade mark owner, but which are then sold without the owner's consent.
So what to make of this? Clearly shape marks and colour marks continue to be difficult to register and difficult to enforce, and bad faith remains a difficult ground to succeed on in opposition/invalidity proceedings.
Michael Gleissner’s strategy must have taken a knock this year – it will be interesting to see what the future has in store for him. Some of the UKIPO’s decisions suggest some movement towards the EUIPO’s approach of considering the best case on grounds of procedural economy. Users of the trade mark system must be careful not to become the authors of their own misfortune – missed deadlines can be a disaster, and an account of profits should be defended!
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FRIDAY, 1 DECEMBER 2017
Update on the fate of laudatory signs before the General Court
The General Court (GC) recently handed down its judgment in Case T-31/16 adp Gauselmann v EUIPO, deciding on whether the word sign "Juwel" could be registered as a trade mark for goods and services in Classes 9, 28 and 41, including "games", "computer games", "coin-operated slot machines" and "games for amusement arcades". As will be explained below, this is a good opportunity to provide readers with an update on the fate of laudatory signs before the General Court (see the initial post on Case T-611/13 regarding the figurative mark "HOT").
In 2014, the examiner rejected the application for the mark "Juwel" on the basis that it lacked distinctive character and was purely descriptive, contrary to Article 7(1)(b) and (c) EUTM Regulation. "Juwel" (which is the German word for "jewel") would allegedly be perceived by the average consumer as a laudatory term. In 2015, the First Board of Appeal (BoA) dismissed the applicant's appeal.
The GC agreed with the BoA's view that "Juwel" was devoid of distinctive character for the goods and services in question. According to the GC, the BoA was correct in finding that the goods and services were targeted at a specialised public consisting of producers of coin operated machines and providers of online / video games. While this finding might surprise some of our readers who thought that "games" and "computer games" were targeted mainly at children or adolescents, it was not contested by the applicant.
Referring to the Duden dictionary, the Court stated that the German word "Juwel" could have two different meanings, depending on the gender and the article used. The term "der Juwel" (masculine noun) referred to a "precious stone" or an "ornament", whereas "das Juwel" (neuter noun) referred to a "thing that is highly valued by someone". After giving the matter some thought, this Blogger has decided to resist the temptation of making a joke at the expense of the German language and its (lacking) reputation for being enjoyable to learn.
However that may be, the Court held that the relevant German speaking public would immediately understand the term "Juwel" as a laudatory message indicating that the goods and services in question were of particular value (i.e., a "thing that is highly valued by someone"). In this context, the Court made reference to the doctrine established by the CJEU in Doublemint, namely that it suffices for a refusal of a trade mark if at least one of its possible meanings is descriptive of the relevant goods and services (see Case C-191/01 P).
Going one step
The GC did not consider in detail the applicant's argument that there were comparable trade marks already on the register of the EUIPO. For good reasons, this broad approach has repeatedly been subject to criticism on Class 46 (see here and here), but it is in line with the established case law of the CJEU (see, for instance, Case C-51/10 P, para.75-77).
The BoA had additionally invoked Article 7(1)(c) EUTM Regulation, claiming that consumers might also understand "Juwel" as a reference to "jewel games", which were a popular type of computer game. In accordance with the wording of the EUTM Regulation and the leading case law, the GC briefly stated that it was not necessary to examine whether the mark also fell foul of the requirements laid down in that provision, since it had already been found to be devoid of distinctive character.
As mentioned in the introduction of this post, the present judgment can be viewed as continuing a string of decisions concerning the registrability of more or less laudatory terms. In these decisions, the General Court has faced the difficult, yet necessary task of drawing the line between (non-distinctive) purely laudatory terms and sufficiently ambiguous (distinctive) marks. The problem for trade mark practitioners is that it can be challenging to predict in advance where this line will be drawn by the EUIPO and the courts.
In the words of the EUIPO, it is important "to distinguish laudatory terms that describe — although in general terms — desirable characteristics of goods and services as being cheap, convenient, of high quality, etc. and which are excluded from registration, from those terms that are laudatory in a broader sense, that is to say, they refer to vague positive connotations or to the person of the purchaser or producer of the goods without specifically referring to the goods and services themselves" (Examination Guidelines, Part B, Section 4, Chapter 4, p. 7).
The following collection is an updated version of the list included in the initial Class 46 post on this topic two years ago. Readers who have meanwhile been able to spot a reliable pattern within these decisions are invited to leave their comments below:
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