General Court: Generia v Generalia (fig)

In Case T-176/13, (Judgment 9 December 2014) the General Court had to review the following opposition:

 DTL Corporación

Vallejo Rosell


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classes 9, 35, 37 y 40 a 42 for goods and services related among others to pholtovoltaic systems and solar cells

classes 7, 35 y 40 for renewable Energy goods and services

OHIM, as confirmed by the General Court, found that there was  a likelihood of confusion existed for all the products and services, with the exception of "opinion polls; information and business advice to consumers; support, consulting and management consulting and business organization and business; business information; business management; business administration; business research; commercial information agencies; expertise in commercial business; trade estimates; commercial administration of the products and services of third parties licenses; efficiency experts services; office functions; provision of business products and services; accounting; Analysis of cost; economic forecasts; compilation of statistics; compilation of information into computer databases "in Class 35.

In particular, it found that the products and services, with the exception of those services above, covered by the trade mark had at least a small degree of similarity to the goods and services covered by the earlier mark. In addition, the contested CTM had a similarity with  the earlier trade mark the general impression was dominated by the element 'generalia ". Thus, there was a likelihood of confusion between the conflicting signs, on the basis of Article 8 paragraph 1 b) CTMR.

Posted by: Laetitia Lagarde @ 16.03
Tags: General Court: Generia v. Generalia,
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OMINTAKEINEN MAKEINEN: overcoming trouble with word play registration in the confectionery field

As Christmas is approaching, there is always room for another candy themed trade mark registration case. The Finnish Trade Mark Office originally rejected an application by Oy Panda Ab for the trade mark OMINTAKEINEN MAKEINEN for the class headings in class 30 based on the fact that the mark lacked distinctiveness. The word “omintakeinen” in Finnish refers to something that is unique or original and “makeinen” in Finnish refers to confectionery. The words rhyme together quite nicely and thus create a wordplay or slogan that Oy Panda Ab wished to register.

The Office found that the trade mark OMINTAKEINEN MAKEINEN referred to an original, individual and peculiar product of sugar, cocoa or other such ingredient molded into a firm form and was therefore descriptive for sweets and sweet-like products such as pastries, sweets and ice cream. The Office also considered that the mark lacked distinctiveness for other products included in the application as they may also include sweetness of sweet things that can be regarded as unique. All in all the Office stated that the trade mark indicated the type, quality and purpose of use for the goods in question.

The Board of Appeal of the Finnish Trade Mark Office dismissed Oy Panda Ab’s appeal and stated that the material the applicant provided did not prove that the mark would have been used widely enough and for long enough to have acquired distinctiveness.

The Supreme Administrative Court, however, took a different stand in this issue and reversed both the decisions below, remitting the trade mark OMINTAKEINEN MAKEINEN to the Office for registration.

The Court stated that class 30 contains different kinds of groceries out of which for sweets the generic word “makeinen” is clearly not distinctive. However the word “omintakeinen” is different. It does not describe any sweets or any other goods in class 30 and is merely suggestive. Additionally it is used creatively in the marketing and it is not common to use the word for the marketing of such products. The applicant had referred to similar accepted registrations such as VIISASTEN TEE (in Finnish “tea of the wise”) and MAINIO MAKEINEN (in Finnish “splendid candy”). The court stated that the trade mark OMINTAKEINEN MAKEINEN takes the role of wordplay and is thus more than just a describer and advertising phrase for the goods in question. Based on these views, and on the report of the use of the mark as a slogan submitted by the applicant, the trade mark OMINTAKEINEN MAKEINEN (registration number 259789) was considered to be distinctive and thus registrable.

This item has been kindly prepared for Class 46 by Tiina Komppa (Roschier, Finland)

Posted by: Jeremy Phillips @ 01.07
Tags: Finland, registrability, descriptiveness, wordplay,
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General Court does not 'rehabilitate' Monster's CTM application

The Monster Energy Company sought to register the word sign 'REHABILITATE' as a CTM for the following goods:

  • 'Nutritional supplement' in Class 5
  • 'Ready to drink tea, iced tea and tea-based beverages; ready to drink flavoured tea, iced tea and tea-based beverages' in Class 30
  • 'Non-alcoholic beverages' in Class 32

The examiner rejected the CTM application on the grounds that the sign was descriptive of the goods at issue and devoid of any distinctive character. A decision that has been upheld first by the Board of Appeal and now by the General Court.

The Court agreed with the applicant that one of the meanings of 'rehabilitate' was that of 'a recovery process requiring human intervention, which occurs through training and therapy, and not by means of food or drink'. However, the term 'rehabilitate' could also mean 'to bring a person back to a good state of health or to enable him to return to a good physical condition', which was something that the goods at issue were supposed to do. In this regard, it was confirmed that a sign had to be refused registration if at least one of its possible meanings designated a characteristic of the goods concerned.

Further, the sign applied for was held to contain obvious and direct information on the purpose of the relevant goods. The relevant public would, consequently, understand without further reflection that the goods at issue could help them to return to a good or healthy condition.

Referring to the Wrigley decision, the Court did not find it necessary that the word 'rehabilitate' actually was in use at the time of the application in a way that was descriptive of the goods applied for. It was deemed sufficient that the term could be used for such purposes.

A well-reasoned decision, which illustrates the difficulties that companies are likely to face when seeking trade mark protection for a suggestive brand name, irrespective of the obvious benefits such a designation may have from a marketing perspective.

Reference: General Court, Decision of 11 December 2014 in Case T-712/13.

Posted by: Christian Tenkhoff @ 20.18
Tags: CTM; Absolute Grounds; Descriptiveness; Rehabilitate,
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Life in General Court is like a box of chocolates

In case T-440/13 "Millano" Krzysztof Kotas had applied for the following 3D mark  for Class 30 “box of chocolates”

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OHIM and the General Court rejected the mark because it does not significantly diverge from the norms of the sector.
As the Board of Appeal noted, it is common knowledge that the simplified geometric forms are generally used as forms for chocolate products and, therefore, the cubes/squares that are a feature of the mark do not diverge significantly from the norm or customs of the sector. Regarding the element which represents a mould or a tin,  the Board of Appeal rightly found that it is a usual mode of presentation of a set number of chocolate squares and the presentation of chocolates in a medium with extruded hollow to accommodate them, in three parallel rows of six chocolates, was mundane and ordinary. In its overall assessment of the mark, the Board of Appeal correctly concluded the lack of distinctiveness.

Therefore, the applied for CTM lacks distinctive character according to Article 7 (1) b) CTMR and the applicant did not bring forward any evidence to the contrary, for example that no other chocolates producers make boxes with such shape for their goods. 

Posted by: Laetitia Lagarde @ 11.01
Tags: general court, absolute grounds, box, chocolates,
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General Court: Valdasaar v. Val d'azur

In Case T-519/13, the General Court reviewed the following op position:

Leder & Schuh International AG (Austria)- contested CTM

Valerie Epple (Germany) –earlier CTM



Classes 25 and 35 including various types of footwear and retail services for footwear, jewelry, purses, etc

Class 25 ‘clothing, footwear, headwear”

 The Opposition Division upheld the opposition for all the goods in Class 25 and most of the services in Class 35.



The Board of Appeal annulled the OD’s decision as far as the services are concerned in Class 35.However the BoA confirmed there was a risk of confusion for the goods in Class 25 finding  them identical. 

As to the similarity of the signs, those signs have a certain similarity visually and a degree of similarity using phonetics. It is impossible to make a comparison conceptually  in the EU or it will be different for the French public: the contested CTM is an arbitrary word and the earlier mark will evoke the French Riviera (“côte d’azur”) or "blue azure valley" only to the French-speaking consumer. As regards the distinctive character, the Board of Appeal held that the distinctive character of the earlier mark was average, since the term "val d’azur ‘ was devoid of descriptive meaning in relation to the products concerned.

Given the identical nature of the goods in question and the degree of similarity between the conflicting signs, there was a risk of confusion.

Posted by: Laetitia Lagarde @ 16.24
Tags: General Court, likelihood of confusion, Valdasaar ,
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Switzerland: proof of genuine use - Pretty Complicated

Peek & Cloppenburg KG, Düsseldorf, opposed the registration of the mark PD&C by Paper Denim and Cloth, LLC, New York, based on its older trade mark P&C (depicted above). Both marks were registered for clothing. Paper Denim disputed the genuine use of the older mark. Both the IPO and the Federal Administrative Court on appeal held that Peek & Cloppenburg had failed to prove genuine use in the relevant timeframe between April 2007 and April 2012.

Under the Swiss-German treaty of 1892, it is sufficient if genuine use was proven for Germany. Peek & Cloppenburg submitted an affidavit by its inhouse counsel that the mark had been used in Germany, supported by photographs of clothing labels; some showing the mark as registered, some use in a different form (see above). The labels were in German. The date was added on handwritten notes to the photographs. Peek & Cloppenburg further showed that the item numbers visible on some of the labels were the same as the ones in its internal data base ("Warenbewirtschaftungssystem"), and that considerable numbers of each item had been shipped.

The Administrative Court held that the use in the different form depicted above did not amount to genuine use of the mark as registered, as the overall impression of the script was very different.

For the labels that did show the mark as registered, it confirmed its case law that affidavits ("eidesstattliche Versicherungen") had no special probative value in Switzerland.

This left Peek & Cloppenburg in a difficult spot: according to the Court, all its evidence were "mere party allegations", originating from its own sphere of influence. While the German text on the labels made it probable that the items were destined for the German market, Peek & Cloppenburg failed to prove that they had actually been put on the German market. It also had failed to prove that they had been put on the market in the relevant time window. The excerpts from the internal database were not probative, either, as again the content of the database was in the sole control of Peek & Cloppenburg.

Like the "Koala" decision earlier this year (see Class 46 post here), the decision shows that it is increasingly hard to prove genuine use. Most evidence concerning genuine use will "originate from the sphere of the proprietor". If this evidence is given no weight, the trade mark owner will often be unable to prove genuine use. German owners of Swiss trade mark must be aware that Swiss courts will largely ignore affidavits that would be perfectly suitable to prove genuine use in Germany.

Decision B-6251 of 9 September 2014 (German summary, link to full text)

Posted by: Mark Schweizer @ 15.43
Tags: Switzerland, genuine use,
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Switzerland: TegoPort deceptive for goods not originating from Switzerland

Tegometall International AG sought to register the sign TegoPort as a mark for, essentially, dividing walls in Switzerland. The Swiss IPO refused on the grounds that Port was a community near Biel/Bienne, and consumers would assume the goods bearing the sign would come from Port. Hence, the sign was deceptive for goods not originating from Switzerland (yes, Switzerland, they don't have to be from Port. Don't question the logic).

The Federal Administrative Court upheld on appeal. It reasoned that the community of Port  - 3,400 inhabitants - was not completely unknown, as it was in the vicinity of Biel (70,000 inhabitants, counting the 'burbs), had its own highway exit, and was near a recreational area. The court also found it important that Port had an industrial zone, amenable to production of the sort of goods for which the sign TegoPort was to be protected.

The decision comes as a bit of a surprise, since the Administrive Court had lately shown a willingness to correct the overly strict practice of the IPO regarding marks containing geographic indications. If you wonder, Port is really unkown in most of Switzerland - of the 20 or so attendants at our bi-weekly trademark practice group meeting, noone had ever heard of Port. It is also evident that other meanings, i.e., Port as "Port wine" or "place where ships harbour" are much more easily understood. It is exactly in these circumstances that the Administrative Court has corrected the IPO in the past (e.g., KALMAR, SAVANNAH, WINSTON and VICTORIA CUP decisions).

Decision B-1646/2013 of 4 November 2014 (summary, link to full text)

Posted by: Mark Schweizer @ 13.29
Tags: Switzerland, absolute grounds of refusal,
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