General Court: KAATSU rejected for descriptive character

In Case T-567/12, Kaatsu Japan Co. Ltd filed the CTM application KAATSU for various goods and services in Classes 9, 10, 16, 28, 41 and 44 of the Nice Agreement.

The examiner considered that the relevant public was the general public in Europe and that the sign KAATSU could be understood in most European languages and the word was used to describe a method of physical exercise. Therefore it rejected it for Class 9: ‘Scientific, measuring and teaching apparatus and instruments; pre-recorded videotapes, compact disks (CDs), laser disks (LDs), digital versatile disks (DVDs) and computer software; parts and fittings for all the aforesaid goods’;    Class 10: ‘Surgical, medical and veterinary apparatus and instruments, orthopaedic articles; apparatus for physical training for medical use; parts and fittings for all the aforesaid goods’; Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; instructional and teaching material (except apparatus); parts and fittings for all the aforesaid goods’;  Class 28: ‘Gymnastic and sporting articles not included in other classes; training and exercise equipment for fitness purposes; parts and fittings for all the aforesaid goods’;  Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; educational services; providing seminars and workshops; training instructors in the field of physical training; qualification of instructors in the field of physical training; provision of information, advisory and consultancy services in relation to all of the aforesaid services’; Class 44: ‘Medical services; veterinary services; hygienic and beauty care for human beings or animals; providing medical information; physical therapy services; kinesitherapy services; provision of information, advisory and consultancy services in relation to all of the aforesaid services’.

The Second Board of Appeal and the General Court dismissed the appeals. The mark applied for related to an exercise method or technique which induces muscle hypertrophy and increases muscle strength, essentially by applying a controlled reduction of blood flow to the muscles exercised by means of compressing the proximal vasculature and related areas, and the term ‘kaatsu’ referred to that method and informed the consumer directly and without the need for further reflection on his part about the goods and services in question. The mark applied for was neither merely suggestive nor allusive, but directly descriptive of certain characteristics of the goods and services offered by the applicant. Therefore the mark applied for is descriptive in character, within the meaning of Article 7(1)(c) of Regulation No 207/2009. Furthermore, the applicant had failed to show that the mark applied for had acquired distinctiveness through use.

Posted by: Laetitia Lagarde @ 20.24
Tags: General court, absolute grounds, kaatsu, ,
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World Customs Organization adds tracekey to its IPM facility

The World Customs Organization has just issued a media release welcoming tracekey solutions GmbH within its global network of track & trace and authentication solutions interfaced with the WCO's IPM public user interface. This announcement comes just a few days after the IPM was enhanced through the addition of CERTILOGO (noted on Class 46 here).

More information about tracekey solutions can be found from its website here.

Posted by: Jeremy Phillips @ 06.46
Tags: World Customs Organization,
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When converted CTMs have to coexist: Slovenia's latest ruling

In a recent decision the Slovenian Intellectual Property Office (SIPO) held that the opposition against the registration of the trade mark DIPLOMAT, this being a Community trade mark that had been converted into a Slovenian trade mark was deemed not to have been filed, because the trade mark on which the opposition was based (DIPLOMATICO -- which was also a CTM converted into a Slovenian trade mark) was not an earlier trade mark within the meaning of Article 44(2)(a) of the Slovenian Industrial Property Act.

Both converted trade marks had the same application date of 1 May 2004 (the day on which Slovenia joined the European Union and the CTM system). Accordingly neither of them was deemed to predate the other.

This case demonstrates that CTMs which were applied for before 1 May 2004 and which are subsequently converted into Slovenian trade marks will have to coexist in Slovenia -- even if they are similar or even identical -- since they are deemed to have the same application date (this does not however affect converted CTMs which were filed with OHIM after 1 May 2004, which will keep their original application dates. 

Source: "Earlier CTM loses priority date after being converted into national trademark" by Katja Kovacic (ITEM doo, Ljubljana), posted to World Trademark Review, 5 November 2014, which goes into substantial factual detail concerning this case.

Posted by: Jeremy Phillips @ 03.27
Tags: Slovenia, converted CTMs, coexistence,
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OHIM Fast Track webinar -- coming speedily to your computer!

It's not much more than a week to go, so you'll have to be quick if you want to catch the 30-minute webinar on the Fast Track processing of trade mark applications which our good friends at OHIM have devised for you. The event takes place at 13.00 (local Alicante time) on Monday 24 November. 

By sheer coincidence this webinar is due to take place on the very same day as the launch of the Fast Track itself -- so it will be the perfect opportunity to ask all those questions you've always wanted to know the answers to ...

For more information, just click here.

Posted by: Jeremy Phillips @ 02.48
Tags: OHIM Fast Track processing webinar,
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WCO announces that CERTILOGO is now IPM-connected

The World Customs Organization announced last week that Certilogo had been added to its global network of track & trace and authentication solutions within its public members' interface (IPM). To recap, IPM is the WCO’s online tool to combat counterfeiting, enabling them to exchange information in real-time with field Customs officers.  The idea is that, by using a mobile device, field Customs officers can instantly verify a product’s authenticity simply by scanning the barcode or any track and trace solution and IPM will automatically launch the authentication application.

Posted by: Jeremy Phillips @ 00.29
Tags: Customs, World Customs Organ,
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General Court: wavy line not distinctive for Vans

In Case T-53/13, Vans Inc. applied for the Community trademark application for the figurative sign of a "wavy line" in Classes 18: ‘Leather and imitations of leather, and goods made of these materials; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; wallets; bags; rucksacks; belt bags; briefcases; (school)bags for school; (school)bags for sport; beachbags; key rings; card holders; hip bags’; and 25: ‘Clothing, footwear, headgear; belts; gloves’.

 Both OHIM and the General Court rejected its registrability. In the first place, the mark applied for is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. In that regard, first, the goods covered by the mark applied for were aimed at the general public, which would pay an average degree of attention to them at the time of purchase. Secondly, that public would not meticulously analyse the characteristics of the mark applied for, but would recall only the concept of a wavy line, which is too vague to identify the goods as coming from a certain producer. Thirdly, graphic lines and stripes are commonly used on clothing, footwear and goods in Classes 18 and 25 for decorative purposes and therefore the relevant public would perceive the mark applied for as an element with an exclusively ornamental function. The General Court confirmed that the goods at issue constitute a homogenous category and that the examination of the distinctive character of the mark applied for which the Board of Appeal carried out makes it possible to explain its reasoning with regard to those goods and cannot lead to conclusions which differ depending upon the goods in question. In fact, the applicant itself implicitly admited, in its written pleadings, that there is a link between the goods in question, which gives rise to a homogenous category of goods, when it submits that the evidence of use provided in respect of footwear, in order to prove that the mark applied for has acquired distinctive character through use, may also be used in respect of the other goods in question, in so far as they are similar to footwear.

 In the second place, the existence of other earlier national or Community registrations is irrelevant in assessing the distinctive character of the mark at issue inasmuch as, first, the CTM system is autonomous and, secondly, the BoA is not bound by previous or erroneous decisions made by OHIM, since each case must be assessed on its own merits.

Lastly, in the third place, the applicant had not provided appropriate evidence to prove that a part of the relevant public would, because of the mark applied for, identify the goods covered by that mark and that it had thus acquired distinctive character through use in the European Union as a whole for the purposes of Article 7(3) of CTMR.  

In the present case, the applicant submitted as evidence intended to prove the distinctiveness acquired through use of the mark applied for an affidavit of its Vice President of Events, Promotions which shows that the sign applied for has been used since 1977 and states, inter alia, the turnover for 2011 in the Europe, Middle East and Africa region (EMEA); catalogues; advertising material; a copy of the cover of a book edited by the applicant, entitled Birth of Icons, which describes the sign at issue as one of the applicant’s most iconic emblems; a printout of its page on the website Facebook and a document containing the sales figures relating to 2010 and 2011 as well as a sales forecast for 2012. By contrast, the applicant had not provided any declaration from the relevant class of persons which makes it possible to establish that the sign in question was perceived by the relevant public as an indication of the commercial origin of the goods in question throughout the European Union.

Posted by: Laetitia Lagarde @ 06.14
Tags: General Court, wavy line, general court,
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MARQUES Coexistence Workshop heads for Peru

Next Thursday, 20 November 2014, another of the series of MARQUES Coexistence Agreement Workshops is taking place, this time in Lima, Peru (home of the highly popular fictional character Paddington Bear, right). The exercise, which enables participants to build up their negotiation experience while relating it to their trade mark knowledge, is both instructive and enjoyable. The hosts this time around are MARQUES members Barreda Moller (Av. Angamos Oeste 1200, Miraflores, Lima 18, Peru).

If you're not sure if the Workshop is really for you, let's remind you what it's all about:

The objective of this workshop will be to sensitise participants to the commercial and legal issues that arise when the potential conflict of two or more businesses with similar brands and trade marks may be avoided by negotiating a prior rights agreement (‘coexistence agreement’).

The registration fee for this meeting is €25. The seminar will be conducted in Spanish. For further details and registration, click here.

Posted by: Jeremy Phillips @ 02.48
Tags: Coexistence agreements, workshops, Peru,
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