MONDAY, 1 SEPTEMBER 2014
Poland: the nature of services
The Regional Court in Szczecin in its decision of 18 June 2014 case file VI Kp 84/14 ruled that the provisions of Article 305 of the Polish Industrial Property Law (IPL) that provides that anyone marking goods with a counterfeit trade mark, registered trade mark for which one does not have the right to use, for the purpose of introducing them on the market or anyone who is making a turnover of goods bearing such trade mark, shall be liable to a fine, limitation of freedom or imprisonment for a period of up to two years, do not apply to services for which a trade mark was registered for. The Court noted that the definition of goods in the IPL also covers services, however, all incriminated actions that are subject to the provisions of Article 305 of the IPL, were defined very narrowly and do not apply to trade mark's use in advertising services. According to the Court, this view is shared by legal commentators who agreed that the protection provided in Article 305 of the IPL only covers the rights to mark the goods by the entitled person. Based on the principle of guarantee in the criminal law, the Court did not agreed for the analogy in order to extend the protection. The principle of the guarantee of law provides that those who do not violate the rules of law will not suffer negative consequences from the state. This function is of particular importance in the system of criminal law. By establishing sanctions for violation of, or for exposure of certain goods (criminalization) the legislator expresses its will to secure respect for such interests (the protective function of law), but also ensures (guarantee function of law) those who did not commit a criminal act, that they will not be held criminally responsible. The Court added that due to the nature of the service, it can not be introduced to the market, or be subject to market turnover.
Posted by: Tomasz Rychlicki @ 18.04
Tags: Poland, criminal law, trade mark infringement, services, Polish Industrial Property Law,
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THURSDAY, 28 AUGUST 2014
General Court: diamonds figurative marks

In Case T-36/13, the General Court dismissed the appeal in the following op position case:

M. Antonio Facchinelli – Contested CTM

Erreà Sport SpA- Opponent

-earlier CTM

-earlier Italian mark

Classes 3,14,18 and 25

Classes 3,14,16,18,25,28,35 and 41

The General Court confirmed the findings of OHIM, namely the lack of confusion between he signs despite the identity of the goods. First, it held that the marks did not contain elements that can be considered negligible. Second, it found that, visually, the marks were significantly different, resulting on the one hand, the presence in the mark applied for an intersection between two diamonds with a contour black, highlighted by small white dots, and secondly, the disparity in verbal elements. Third, it considered that, given the differences between the word elements of the marks, they were different phonetically. Fourth, it found that the conceptual comparison was irrelevant because no concept emanated from the brands. At most, the mark applied for would evoke the name of a person and the earlier CTM would be perceived as the pronunciation of an acronym and would be so different.

With regard to the comparison between the mark applied for and the earlier Italian mark, the differences between the marks were even more intense than in the case of the earlier CTM, due to the absence of verbal element in the aforementioned Italian brand. Finally, as regards the applicant's argument that the mark applied for would take unfair advantage of the reputation of the earlier marks, this argument was dismissed because of the lack of similarity between the marks.

Posted by: Laetitia Lagarde @ 13.56
Tags: general court, likelihood of confusion, diamonds, errea, antonio bacione,
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WEDNESDAY, 27 AUGUST 2014
Portugal: Karting Algarve

MUNDO DO KARTING applied for the registration of the nominative sign “KARTING ALGARVE” for theme parks. PARKALGARVE, the owner of the trade mark “KARTÓDROMO INTERNACIONAL ALGARVE” (sign on the right), covering, amongst others, the operation of sports facilities, opposed such registration on relative grounds.However, INPI did not need to assess the likelihood of confusion between the signs, as it found that the sign was devoid of any distinctive character.

MUNDO DO KARTING appealed such decision to the Intellectual Property Court. In its judgement (see Intellectual Property Bulletin no. 163/2014, of 27 August, available here), the Court affirmed INPI’s decision, despite the appellant claiming that the sign had acquired a distinctive character.

The appellant claimed that it had been using the sign for the past 20 years. However, the provided evidence (company’s communications and e-mails, the domain name www.kartingalgarve.com and divulgation in press, television and internet) was considered insufficient by the IPC. The Court further stated that the evidence had to show that the sign was recognised by a significant part of the public of the national territory. It would not be enough to demonstrate that the trade mark was recognised as such by the population of Algarve.

Still, the Court decided to the address the relative grounds issue. While doing so, it found that even if it had decided that the applied trade mark had acquired a distinctive character, the registration had to be refused as the opposing signs were graphically and conceptually similar and there was similarity between the covered services, which would result in a likelihood of confusion between the signs.

Posted by: Pedro Malaquias @ 17.13
Tags: Portugal, Absolute Grounds, Relative Grounds, Intellectual Property Court,
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WEDNESDAY, 27 AUGUST 2014
General Court: FEMIVIA v FEMIBION

In Case T-324/13, the General Court reviewed the following opposition

Endoceutics, Inc. – CTM applicant

Merck KGaA - Opponent

FEMIVIA

FEMIBION

Class 5 Pharmaceutical preparations for the prevention and treatment of medical conditions related to the menopause

Classes 29, 30 and 5, namely ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants; dietetic preparations on the basis of vitamins, minerals, trace elements, oils and fats, either apart or combinations thereof’;

the Opposition Division rejected the opposition in its entirety due to the lack of likelihood of confusion between the marks at issue inasmuch as the similarity of the signs at issue is primarily based on the prefix ‘femi’ which has a weak distinctive character for the goods covered by those marks.

The 4th Board of Appeal of OHIM upheld the appeal, annulled the decision of the OD and rejected the CTM application. In essence, there is a likelihood of confusion between the marks at issue on the part of the relevant Spanish-speaking public because of the identity of the goods, the average visual similarity and high degree of phonetic similarity of the signs, and the average degree of distinctiveness of the earlier figurative mark. As regards the prefix ‘fem’, it took the view that it would not be perceived as being descriptive for the goods in question.

The GC dismissed the action. Although it found that the prefix ‘fem’ will clearly be understood by the relevant Spanish-speaking public as being an abbreviation of the Spanish word ‘femenino’(meaning ‘feminine’), which describes the intended purpose of the goods in question, the Court held that does not mean that the prefix ‘fem’ cannot be taken into account when comparing the signs at issue. Thus, it confirmed the overall assessment of similarity of the marks and the risk of likelihood of confusion for identical goods .

Posted by: Laetitia Lagarde @ 15.01
Tags: General court, likelihood of confusion, femivia, femibion,
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TUESDAY, 26 AUGUST 2014
September ETMR now available

The September 2014 issue of the European Trade Mark Reports (ETMR), a series of law reports published monthly by Sweet & Maxwell, is now available,  The ETMR contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

This issue contains reports on four recent decisions, which include the following:
* Trade marks with VOLKS- prefix: a Bundesgerichtshof (Germany) decision relating to the unauthorised use by the defendant of a number of terms starting with the prefix "VOLKS-"  and their relation to the entitlement of the German motor manufacturer Volkswagen to protect the integrity of its own marks.
 
* McCambridge Ltd v Joseph Brennan Bakeries, an Irish High Court (Commercial Division) ruling on the calculation of an account of profits where the use of misleading packaging by the defendant enhanced the pre-existing profitability of its own product.
 
* Comic Enterprise Ltd v Twentieth Century Fox Film Corporation, a controversial decision of the High Court, England and Wales, now under appeal, as to the liability of a US programme producer for launching "glee", a TV series, in the face of a UK trade mark registration of "The Glee Club" for clothing and for entertainment services.
MARQUES members are again reminded that, if they have been involved in European trade mark litigation which is of significant interest, and if they can provide an English-language text of the full decision of the court, the ETMR will be delighted to consider it for publication.
Posted by: Jeremy Phillips @ 16.14
Tags: ETMR,
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MONDAY, 25 AUGUST 2014
Greece: Localism and a new breed of absolute ground

The almost 2-year old revision of the Greek law on trademarks has, among others, seen the introduction of the Hellenic Trademark, an ‘optional’ quality trademark that businesses may register to use for products and/or services of Greek origin. While this localism project is gradually taking off with the finalization of the selection of the logo for the Hellenic Trademark and some progress on the detailed requirements for its use per category of goods/services, another aspect of the project has required the attention of the Greek TM Office.

It appears that, whether intentionally or not, certain businesses may try to register marks that could be associated with the Hellenic Trademark. Under a recent decision, one of the Examiners  rejected the mark MY GREEK PRODUCT & device for Class 35 services relating to advertsing and organization of exhibitions on the ground that it may mislead consumers into thinking its owner is affiliated with the Greek State or is somehow endorsed in the context of the Hellenic Trademark project.

So it seems that the Hellenic Trademark forms a hybrid absolute ground for refusal, incrorporated in the classic "misleading" ground of refusal. There is a lesson to be drawn for businesses seeking to legitimately capitalize on the localism trend the financialis crisis has ignited in Greece: There is a fine line, or even a bit of quick and, between marketing the Greek origin of one's products / services and being associated with the relevant state - public initiative.

Posted by: Nikos Prentoulis @ 21.01
Tags: Greece, localism, Hellenic Trademark, absolute grounds, deceptive, misleading,
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SUNDAY, 24 AUGUST 2014
Portugal: Porto loses to Silmoda in overtime

Although this blogger (who supports Benfica) is not glad to acknowledge it, Futebol Clube do Porto has been the most successful Portuguese football club for the past 30 years, having won most of the national titles during this period and achieving international success, with 2 UEFA Champions League, 2 UEFA Cups / Europa Leagues, 1 UEFA Super Cup and 2 Intercontinental Cups. However, this success was not sufficient to secure the club a victory in a trade mark opposition procedure which has recently been decided by the Lisbon Court of Appeal (Intellectual Property Bulletin no. 159/2014, of 21 August)

The issue revolved around the registration of the nominative sign ‘SUPER PORTO’ for ‘shirts’ by SILMODA. Although INPI initially granted this trade mark registration, it subsequently modified its decision ex officio, refusing the trade mark registration due to the likelihood of confusion of the TM application with the following earlier trade marks:

      

      

SILMODA appealed the decision to the Intellectual Property Court, who confirmed INPI’s decision. The first instance court held that the word ‘PORTO’ is the dominant element in all of the conflicting signs and that the use of this word in relation to clothing will lead the average consumer to associate it with Futebol Clube do Porto. Further, it held that the element ‘SUPER’ will increase the likelihood of association of the sign with the club (and the earlier trade marks) as the team is commonly associated by the public with triumphs.

The decision was appealed to the Lisbon Court of Appeal, which overturned the prior decisions and granted the trade mark registration. The Court held that in an objective comparison, in which all elements of the signs are to be taken into account, it could not find similarity between the opposing signs. That was so as the Earlier Trade Marks were comprised not only of the word element ‘PORTO’, but also of other nominative and figurative elements and only together could these elements identify the origin of the products. Further, the court accepted that the word ‘PORTO’ could also refer to a city (Porto is the second-largest city in Portugal) or to a place where ships can dock and transfer people or cargo to or from land and, hence, was not necessarily connected to the football team. Finally, it held that the opposing trade marks were targeted to different publics, with the Earlier Trade Marks’ average consumers being limited to supporters of the football team, who would not be likely to associate the opposing trade marks.

In summary, SILMODA obtained the registration of the trade mark ‘SUPER PORTO’ for shirts. Perusing the Appeal’s Court decision, this blogger wonders if this decision is the final chapter of the conflicts between these companies. In fact, although the supplied evidence was not considered enough to demonstrate it, it has been argued that the trade mark ‘SUPER PORTO’ was being used in shirts containing the crests and registered trade marks of the club. Would the same result occur in a procedure not limited to documentary evidence?

Posted by: Pedro Malaquias @ 22.43
Tags: Portugal, relative grounds, Court of Appeal, Football,
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