MONDAY, 13 FEBRUARY 2017
EUIPO “smart-seals”(?) equality

The 5th Board of Appeal’s decision (Case R 1488/2016-5) on the registrability of EUTM No. 14430276 “SMART-SEAL” in Classes 16, 17, 20 (essentially packaging goods) includes, a more detailed than usual, analysis of why EUIPO is not bound by its own previous decisions and perhaps merits commentary.

The mark was refused over Article 7(1) (b) and (c), both in conjunction with Article 7(2) EUTMR, for all goods covered by the application. In addressing the Examiner’s letter of provisional refusal and also in support of its appeal before the Board of Appeal, the applicant had argued that the earlier EUTM No. 5543616, ‘SMARTSEAL’ was registered by the EUIPO in Classes 16 and 17 and the combination of ‘smart’ and ‘seal’ has also been registered in the UK, US and Canada in Classes 16, 17 and 20.

This may be the most interesting factual element of this case. For those joining me in wondering whether the applicant would have a legitimate interest or demonstrate plain sense in relying on an earlier identical mark in the same classes (save Class 20) to succeed, one should know that the applicant had actually filed a cancellation action against the said mark over non- use (there could also be some discussion about the similarity of the goods involved). 

The Board of Appealendorsed the Examiner’s call on descriptiveness and lack of distinctiveness of the EUTM Application, but also addressed in detail the argument that other EUTM registrations, including SMARTSEAL No.  5543616 in Classes 16, 17, would mean that EUTM Application No. 14430276S MART-SEAL is not descriptive. The Board of Appeal did not restrict itself to the ‘classic’ reply that “decisions concerning the registration of a sign as a European Union trade mark which the Office or the Boards of Appeal are called on to take under the EUTMR are adopted in the exercise of circumscribed powers and are not a matter of discretion”.

Making its second reference to the need for EUIPO to strive for consistency, the Board cited para. 65 of T-554/12, § 65, (27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158) to base the more technical finding that the Board of Appeal cannot be bound by decisions from first-instance departments, in particular when these have not been appealed.

Further, it ruled that “[i]t is a fact that the Office should endeavour to apply a consistent practice in examining trade marks in relation to absolute grounds for refusal. However, it is unfortunately inevitable that doubtful trade marks are sometimes registered.Notwithstanding this, the observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of its claim, on unlawful acts committed in favour of another (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 67)”.

The Board added another, generally sound, argument: That “market practices, languages and registration practices evolve over time and some of the marks cited may, therefore, have been accepted as they were considered to be registrable at the time of application, which however may not be the case nowadays”.

However, in this case, it does not look like English-speaking consumers of packaging goods understand SMART SEAL any differentthan they did 10 years ago, when EUTM No. 5543616 was filed.

The Board also invoked cancellation proceedings as a rectifying mechanism; again, in principle a sound argument: “Moreover, where marks are in fact registered contra legem, a mechanism is in place to deal with such cases, namely that of cancellation proceedings. In that connection, the Board notes that the mark ‘SMART-SEAL’ has been revoked by decision of the Cancellation Division of 26 July 2016 (C 11 301).”

But this would not be relevant, this blogger thinks, because revocation was actually the result of non-use, not descriptiveness or lack of distinctive character. So, the rectifying mechanism did not really work, in the way the Board of Appeal presented it.

To be clear, this blogger would find it hard to refute that SMARTSEAL is descriptive and non distinctive for packaging goods. Plus, from a practicioner’s standpoint this is a ‘go to’ example to water down clients’ aspirations to secure rights in marks, which are more or less descriptive. TM practicionersoften face the arguments of (well- or mis-) informed business executives on how “the same mark has been registered in Class X” or that “competitor Y uses an equally descriptive mark, so why not us?” In this type of situations, the EUIPO’s decision is an insurance policy.

But if we turn our heads away from simply being on the safe side with clients, this decision is not a good case for legal safety and foreseeability. When the EU’s IP Office says “don’t rely on our past practice” or, worse yet, “the Z mark, same as yours, that was registered when you filed has now been cancelled, though not irrevocably”, does it pass a business-friendly message? This blogger thinks not. Sure, TMs are not calculus; and that is one of the many reasons people like MARQUES members enjoy living in theTM universe. But, TMs serve business purposes and the Single Market’s IP Office is not just a custodian of TM registrations; it is a facilitator for economic growth and a(n integral for me) component of the European Union’s competitive assets in the global markets.

This blogger has no difficulty conceding that filing for a word mark in the likes of “SMART-SEAL” more or less invites an absolute grounds refusal. But, when the EUIPO registry and the Member States registries are gold mines of similar marks, it does not seem entirely fair to scold an applicant for thinking that the invitation is actually one promising registration. The EUIPO is not wrong in disassociating itself from past, potentially wrong practice; but it may need to put much more work in minimizing such problems in the future.

Posted by: Nikos Prentoulis @ 08.38
Tags: EUIPO, Board of Appeal, absolute grounds for refusal, descriptiveness, lack of distinctive character, smart, seal, equality, legality, sound administration, past practice,
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MONDAY, 30 JANUARY 2017
February ETMR now published

The February 2017 issue of the European Trade Mark Reports (ETMR) has now been published.

To remind readers, the ETMR is a series of law reports published monthly by Sweet & Maxwell. It contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

This issue contains three decisions: a trade mark ruling from each of the Court of Justice and the General Court, as well as one decision from the High Court (Chancery Division) for England and Wales -- this being a keenly-fought battle between Victoria Plum and Victorian Plumbing.

MARQUES members are reminded as usual 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. Communications should be sent to the Editor, Dr Stavroula Karapapa at s.karapapa@reading.ac.uk.

Posted by: Blog Administrator @ 19.01
Tags: ETMR,
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FRIDAY, 27 JANUARY 2017
General Court: A decision to drink to!

In Case T-250/15, Speciality Drinks Ltd v EUIPO (24 November 2016), the EU General Court upheld the decision of the Board of Appeal which found that there was a likelihood of confusion between the word mark CLAN and the earlier mark CLAN MACGREGOR under Article 8 (1) (b) of the EU Trade Mark Regulation (207/2009/EC). Both of them covering Good and services in Class 33:

'Alcoholic beverages ( excluding beers and wines); but insofar as whisky and whisky based liqueurs are concerned only Scotch whisky and Scotch whisky based liqueurs produced in Scotland'

Relevant public

The applicant argued that Scotch whisky is a drink that is a 'class apart' which is strongly associated with the idea of masculinity, which inspires a devoted following among its connoisseurs and inspires a near cult like devotion in some drinking circles'. The Court found that even if these certain subcategories of Scotch whisky exist, the applicant could not prove that his goods belonged to such a subcategory. Therefore, the Court confirmed that the relevant public would only have an average degree of attention when assessing the likelihood of confusion.

The visual and phonetic comparison

The Board of Appeal held that the signs were visually and phonetically similar to an average degree. However the Court disagreed, stating that the signs at issue only have a low degree of visual and phonetic similarity due to the presence of the element MACGREGOR within the earlier mark- which the Board of Appeal had classified as 'secondary or 'marginal'- and as the applicant pointed out, contains more letters and syllables than the element CLAN.

The Conceptual comparison

The applicant argued that the Board of Appeal did not take into account that the element CLAN is a word that is sometimes used by a large number of people within the EU- including Non English speaker to describe a group of people or a family. The applicant further claimed that when the word CLAN is used in conjunction with MACGREGOR, the element CLAN 'is acting as a qualifying word which helps reinforce the concept of the MACGREGOR family/clan/tribe, rather than a word carrying an independent distinctive meaning'. However the Court again agreed with the Board of Appeal and held that there was a conceptual similarity between the signs, given that in the earlier mark, the element CLAN referred to 'a group of people having a family bond' corresponding to the Macgregors, whilst the mark applied for invoked the concept of such a group in general.

Image result for clan scottishThe Court held that the assessment of the signs must be considered as a whole. The applicant argued that the dominant element of the earlier mark was MACGREGOR and not the element CLAN which is 'descriptive' when used in conjunction with the word element MACGREGOR. The Board of Appeals decided not to categorise the element CLAN as the dominant element in the earlier mark and also found that MACGREGOR was neither secondary nor marginal. Therefore, when carrying out a comparison of the signs at issue, the Court confirmed that there was an average degree of conceptual similarity between the signs at issue.

Finally the Court rejected the applicant’s argument that ‘the number of different traders using the mark ‘clan’ in conjunction with a family name also shows that consumers in this sector would be used to seeing the name ‘clan’ used in conjunction with a family name to designate alcoholic products, and particularly Scotch whisky’, as being of no relevance in the present case. By contrast, and contrary to the applicant’s submission, the absence of the ‘family name’ in the mark applied for means that it is not possible to exclude the possibility of a likelihood of confusion. More specifically, while the element ‘macgregor’ enables the earlier mark to be distinguished from those of other traders in the sector, that does not mean that it also excludes the likelihood of confusion between the signs at issue, in particular since the mark applied for comprises the element ‘clan’ only, which is the element wholly reproduced in the earlier mark.

This summary was prepared by Craig Kelly (Legal Assistant at MARQUES' member Baker & McKenzie)

Posted by: Laetitia Lagarde @ 18.02
Tags: general court, likelihood of confusion, clan, clan mcgregor,
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THURSDAY, 19 JANUARY 2017
Looking for case law? Easier search with eSearch ...

More than 700 key enforcement judgments from 16 EU Member States are now available online in EUIPO’s eSearch Case Law database. The decisions collected, which have set new trends in case-law, include all types of IP rights -- including trade mark rights -- and cover both civil and criminal proceedings.

For further information, just click https://euipo.europa.eu/ohimportal/en/news

Posted by: Blog Administrator @ 03.38
Tags: eSearch Case Law,
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MONDAY, 16 JANUARY 2017
First ETMR of 2017 now out

The January 2017 issue of the European Trade Mark Reports (ETMR) has now been published.

To remind readers, the ETMR is a series of law reports published monthly by Sweet & Maxwell. It contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

The most recent issue contains trade mark cases from the Court of Justice and the General Court, as well as one decision from the Intellectual Property Enterprise Court for England and Wales.

MARQUES members are reminded as usual 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. Communications should be sent to the Editor, Dr Stavroula Karapapa at s.karapapa@reading.ac.uk.

Posted by: Blog Administrator @ 15.25
Tags: ETMR,
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FRIDAY, 13 JANUARY 2017
New Turkish IP Code now in force: here's how it affects marks

The New Turkish Industrial Property Code (“the IP Code”) entered into force on January 10, 2017.

The IP Code replaces the Decree-laws pertaining to the protection of trade marks, patents, geographical indications and designs, all of which date back to 1995, by bringing all those rights together within the ambit of a single Code.

Among other reforms, the trademark chapter includes changes which achieve greater compliance with the relevant European Union directives. The major changes relate to the trade marks are as follows:

  • The graphical representation criteria for signs to be registered as a trade mark has changed to

    “signs capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.

    So the terminology has been aligned to that of the EU Trade Mark Directive.
  • The terminology for distinctiveness criteria has been changed to resemble EU trade mark legislation.
  • The “co-existence principle” has been introduced into Turkish Trade Mark Law. Accordingly, co-existence agreements and letters of consent will be accepted in overcoming senior identical or indistinguishably similar trade marks from being an absolute ground of refusal by the Turkish Patent and Trade Mark Institute ex-officio.
  • The opposition term has been shortened to 2 months (from 3 months).
  • During the opposition proceedings before the TPI, opponents have to prove genuine use or provide justified reasons for non-use of their trade marks that are the basis for opposition and registered at least for duration of five years, if requested by the applicant.
  • The opposition shall be rejected if such use or justified reason for non-use cannot be proven. This request can also be used as a defence in an infringement action.
  • Bad faith has been added into the code as a separate ground for opposition and cancellation.
  • Signs that contain geographical indications cannot be registered as a trade mark.
  • The cancellation actions due to non-use will be dealt by Turkish Patent and Trade Mark Institute. However, the enforcement date of this provision has been postponed for 7 years with an additional provision. So until 2023, the cancellation actions need to be filed before the IP Courts.

The new IP Code entered into force on January 10, 2017 except some of the provisions of which the enforcement has been delayed, for the trade mark applications which were filed before the enforcement date of the new IP Code, the earlier legislation, the Decree-Laws pertaining to the protection of Trade Marks, will still apply until their registration process will be completed.

Written for Class 46 by Mutlu Yıldırım Köse, Gün + Partners

Posted by: Blog Administrator @ 13.09
Tags: Turkey, IP Code,
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WEDNESDAY, 11 JANUARY 2017
General Court: E-Miglia v. Mille Miglia

In Case T‑458/15, The General Court dismissed the action in the following opposition:

Rebel Media Ltd (UK) Applicant

Automobile Club di Brescia (Italy) Opponent

Image not found

Earlier EUTM's registered for the following goods/services below

 

MILLE MIGLIA

 

–        Class 12: ‘Vehicles; apparatus for locomotion by land, air or water’;

–        Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;

–        Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; travel trunks and suitcases; umbrellas, parasols and walking sticks; whips and saddlery’;

–        Class 25: ‘Clothing, footwear, headgear’;

–        Class 35: ‘Advertising, in particular for competitions with electrical vehicles; organisation and arranging of advertising events; commercial sponsoring, also on the internet; business management; business administration; office functions’;

–        Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.

 

Class 41-Entertainment; services inherent in entertainment; entertainment services in the form of games, interactive games, video games, provided online by databases or sites on the World Wide Web; publication of books and other publications’;

 

Some goods in Classes 12, 18 and 25

 

goods in Class 14, services in Class 35 and corresponding to the following description: ‘Organisation and conducting of trade fairs, exhibitions, for commercial or advertising purposes, retail services, also provided online, relating to the following goods: soaps, perfumes and cosmetics, helmets, glasses, lenses, cases and chains, ground vehicles, their accessories and parts, bicycles, jewellery, precious stones, horological and chronometric instruments and their accessories, brooches, key rings, books, magazines, newspapers, brochures and flyers in general, diaries, leather goods, bags, sports bags, backpacks, wallets, purses, furniture, fabrics and textile products, bed covers and blankets, clothing, headgear, footwear, games, toys, playing cards, wines and alcoholic beverages, tobacco, smokers’ articles, matches

The Fifth Board of Appeal of EUIPO first found that given that the earlier rights are EU trade marks, and that goods and services at issue are directed both at the public at large (for example, ‘clothing’ in Class 25) and at the professional public (for example, ‘business management’ in Class 35) therefore, the level of attention of the relevant public could vary from average to high.

Concerning the comparison of the marks at issue, first, there is visual similarity between those marks, given that they had a common element ‘miglia’ and, to a certain extent, also due to the fact that they had in common the letter ‘e’ preceding the element ‘miglia’. Secondly,  there are obvious differences: 1) the relevant public will notice that the earlier marks begin with the word ‘mille’ whereas the mark applied for begins with the prefix ‘e-’ ; 2) differences linked to the stylised letters represented in white, a colour that contrasts with the black background in the shape of a parallelogram, in the mark applied for. Although those figurative elements are  essentially decorative, they could not be regarded as completely negligible in the overall impression given by that sign. So the marks are therefore visually similar to a low degree.

Concerning the phonetic aspect, in spite of the differences linked to the rules of pronunciation applicable to the relevant languages, the pronunciation of the marks at issue would be seen as similar to the extent that the final sound ‘miglia’ was identical. So the marks at issue are therefore phonetically similar, although that similarity was below average.

Concerning the conceptual aspect, the combination of words ‘mille miglia’ means ‘thousand miles’ in Italian. At least the Italian-speaking part of the public will spontaneously establish a link between the earlier marks and the (endurance) motorcar race which was held in Italy from 1927 to 1957 and which was subsequently transformed, as from 1977, into an event reserved for vintage cars. The earlier marks will thus convey a concept that is clearly distinguishable from that of the word ‘miglia’ alone or, even more so, from the combination ‘e-miglia’. For this reason, there is even a conceptual difference between the signs at issue on the part of the Italian public.  For the rest of the EU public, Rebel Media had argued that the expression ‘miglia’, in the sense of unit of measure and length, will be understood not only in Italy and in Italian, but also in most of the countries of the European Union. By way of example, the applicant cites ‘milje’ (Albanian), ‘meilen’ (German), ‘miles’ (English), ‘millas’ (Spanish), ‘miili’ (Estonian), ‘miles’ (French) and ‘milhas’ (Portuguese). However, as EUIPO has rightly observed, this claim is unfounded. The degree of similarity between these words and ‘miglia’ is not sufficiently high to find that consumers would think that they possess the same meaning. The applicant had not, moreover, provided any evidence in support of its argument. The same conclusion applies concerning the argument that, taking account of the reputation of the motorcar race, a large part of the consumers in the EU will make a connection between the marks at issue and that race.

Therefore, for a considerable part of the consumers in the relevant territory outside of Italy (for example in Germany, Holland, Poland, Sweden and the United Kingdom), the expression ‘mille miglia’ is meaningless. For that part of the public, there is a certain conceptual difference to the extent that the initial part ‘e-’ of the intervener’s sign evokes a concept relating to electronics. The BOA held, however, that it was not likely that those consumers would attach a lot of importance to that feature, given the widespread use of that prefix and the fact that that part of the public will more easily recall the more distinctive element ‘mille’ in the earlier marks.

The intrinsic distinctive character of the earlier marks is normal, because the combination of words ‘mille miglia’ would be perceived as a fanciful element by a substantial part of the relevant public outside of Italy.

Consequently, there is likelihood of confusion or the public that would understand neither the combination of words ‘mille miglia’ nor the element ‘miglia’, but only with regard to the goods and services deemed identical. Therefore, the opposition was upheld for the goods in Classes 12, 14, 18 and 25 and the services ‘organisation and arranging of advertising events’ in Class 35 and ‘entertainment’ in Class 41 covered by the mark applied for. On the other hand,  the opposition was rejected concerning the remaining services included in Classes 35 and 41.

***

For more info on this historical car race, click here.

For another famous MILLE MIGLIA in Italy, see here.

Posted by: Laetitia Lagarde @ 19.51
Tags: General Court, likelihood of confusion, Mille miglia, car,
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