Germany: BMW stays ahead of competition

A recent decision of the German Federal Court of Justice (Bundesgerichtshof - BGH) concerned not one, but two contentious aspects of trade mark law: 'double identity of black & white vs. colour marks' and the 'limitation of the effects of a trade mark regarding spare parts'.

The defendant marketed spare parts for cars. Among these parts were BMW plaques as depicted on the right, which closely resembled the plaques sold by the claimant, the known German car producer Bayerische Motoren Werke AG (or, for short, BMW). These plaques can be attached to the bonnet or tailgate of the cars produced by BMW. The claimant successfully argued before the BGH that the defendant's plaques infringed BMW's trade mark rights. So far, so good.

Interestingly however, according to the Court, this finding could not be based on Sec. 14(2) No. 1 German Trade Mark Act (implementing Art. 5(1)(a) of the CTM Directive). Luckily for trade mark enthusiasts, the claimant had only brought forward the registered black and white trade mark on the left (covering, inter alia, plaques), without relying on a coloured version of the mark. Consequently, the Court took only the black and white mark in its registered form into account.

Making reference to LTJ Diffusion (see Case C-291/00, para. 54) the BGH pointed out that a sign is identical with an earlier mark where it contains only insignificant differences. Insignificant is a difference that a consumer will only perceive upon a side by side examination of the signs. On this basis, the BGH held that a sign which is registered in black and white is not identical with a coloured version of the same sign, unless the difference in colour is insignificant. Using the colour blue instead of black was, in the present case, held to be 'significant' (i.e., the signs were not identical).

This result, as the BGH stated, was in line with the controversial "Common Communication on the Common Practice of the Scope of Protection of Black and White ('B&W') Marks" of 15 April 2014, presented by OHIM and national trade mark offices (click here). Going one step further, the Court even compared the present case expressly to the below example for a 'significant difference' taken from the Common Communication:

It goes without saying that OHIM's Common Communication did not determine the issue of 'identical signs' for infringement cases (but rather as regards relative grounds for refusal, among other things). Moreover, the strict approach of the Common Communication raised some concerns (as reported by the IPKat here). However, the present decision clearly took the same approach for infringement cases, too. On the bright side, in doing so, the BGH made sure that the question of 'identity' is to be assessed according to the same principles for relative grounds for refusal and infringement issues.

Subsequently, the Court held that the marks at issue were likely to be confused within the meaning of Sec. 14(2) No. 2 German Trade Mark Act (implementing Art. 5(1)(b) of the CTM Directive). No surprises here: The goods under comparison were held to be identical and the earlier mark enjoyed a high level of distinctiveness. In addition, the differences in colour between the marks were not enough to prevent the finding of a high similarity of the signs.

Turning to the issue of the 'limitation of the effects of a trade mark' under Sec. 23 No. 3 German Trade Mark Act (or Art. 6(1)(c) CTM Directive), the BGH found that use of the mark did not indicate the intended purpose of the defendant's plaques. Rather, the mark at issue was seen as the essential and dominant aspect of the plaques' appearance. According to the BGH, affixing a sign (highly similar to the claimant's mark) to a true replica of the claimant's plaques was not intended to indicate any characteristic of those plaques, but was merely an element in the faithful reproduction of the original plaque. Thus, the BGH adopted the CJEU's doctrine established in Adam Opel, which dealt with identical marks on toy cars (see Case C-48/05, para. 44), and extended it [quite elegantly] to highly similar marks on spare parts.

In the Court's view, this result did not fail to adequately balance the conflicting interests of both parties. It was acknowledged that spare parts can only be sold if they include or can be equipped with the BMW badge. Nonetheless, the production of plaques consisting merely of the car producer's trade mark itself fell within the monopoly granted by the exclusivity right of the trade mark proprietor.

Although this decision comes as bad news for the spare part industry, there might be a silver lining for competition yet: The Court mentioned that producers of spare parts that prominently feature the BMW badge may, under certain circumstances, be in a position to request from the claimant to be provided with original BMW plaques, based on competition law. The case at hand, however, did not give reason to assess this aspect further, said the BGH.

Posted by: Christian Tenkhoff @ 09.01
Tags: BMW, identity of signs, limitation, infringement, BGH, common communication,
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Ukraine drops charges for searching trade mark application database

The Ukrainian Institute of Intellectual Property -- that country's IP Office -- has now finally granted free access to its online database of trade mark applications.

Free access, which has been available since 21 August, will be hugely welcome since, until recently, trade mark owners missed out on filing oppositions and preventing registrations of similar or identical trade marks because each trade mark availability search cost them at least UAH 720 (EUR 30; US$ 35) depending on the type of search and urgency.

You can check the trade mark application database here, though it's in Ukrainian only.

Source: news item by Viktoriia Smyrnova (Petosevic News)

Posted by: Jeremy Phillips @ 23.20
Tags: Ukraine, database,
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Finnish double meanings: a headache for examiners and judges?

It is again time to celebrate the magical Finnish language as the Market Court in Finland has rendered a decision regarding the distinctiveness of the trade mark "Liikkeessä". This word has two meanings in the Finnish language, namely "on the move" and "in the store".

In April 2013 Lidl applied to register as a trade mark the word "Liikkeessä" (application number T201350027) for the following goods and services:

Class 16: "Printed matter, especially prospectuses, brochures, advertising material, periodicals."

Class 35: "Advertising; publishing of printed matter, especially prospectuses, brochures, advertising material, periodicals also in electronic form, for advertising purposes; presentation of products in communications apparatus for wholesale and retail sale purposes"

Class 41: "Publishing of printed matter, especially prospectuses, brochures, advertising material, periodicals, also in electronic form and on the Internet, except for advertising purposes; electronic computer-based folding; provision of electronic, non-downloadable publications online".

The Finnish Trade Mark Office decided in November 2013 that the word "Liikkeessä" lacked distinctiveness for the goods and services in question since it indicated the origin, kind, quality and purpose of use for the goods and services in question. The Office stated that the trade mark "Liikkeessä" means either that the goods and services are offered "Liikkeessä" i.e. in the shop or store or "Liikkeessä" i.e. while you are on the move to somewhere. It accordingly depicts goods and services that are available in a certain place of business, i.e. in the store in relation to the goods and services that are available e.g. only through the internet. Thus the word could not distinguish the goods and services of the Applicant from those of others.

The Office added that the fact that the word "Liikkeessä" has several meanings was irrelevant since it also had meanings describing the goods and services. Further, the cases presented by Lidl to support the application were not analogous to its application. The Office also referred to the word “Liikuntalounas” (in English "exercise lunch") which had been considered non-distinctive in for services in Class 43.

Lidl appealed the decision to the Market Court, submitting that the word was distinctive for goods and services in Classes 16, 35 and 41. Lidl stated that the applied-for mark covered printed matter and advertising related services but did not directly describe them. The average Finnish consumer would link the word "liikkeessä" to things other than printed matter and advertising. Also there was no public interest demanding to keep the word "liikkeessä" free and there were several corresponding marks in the register.

After one round of further arguments, the Market Court evaluated the matter, then based its evaluation on Section 13 of the Finnish Trade Marks Act, which specifies the requirements for registration of a trade mark.

In its decision the Market Court stressed that the goods and services for which the trade mark were sought in Classes 35 and 41 covered also publishing in electronic format and on the internet. Thus, unlike the decision of the Trade Mark Office, the word "Liikkeessä" did not-- at least for these services -- express the fact that the goods or services were offered "Liikkeessä" i.e. in the store or in the shop or that the goods and services would be used while you are on the move to somewhere.

Taking this into consideration, the Market Court stated that the Trade Mark Office should not have rejected the application, at least for services in Classes 35 and 41. Due to this, the Market Court reversed the decision of the Trade Mark Office and remitted the application to it.

The decision of the Market Court (Decision MAO: 458/15, 29 June 2015) can be found here (in Finnish).

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

Posted by: Jeremy Phillips @ 18.45
Tags: Finland, registrability, ambiguous words,
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Seizure of counterfeit apparel in Serbia

Serbian customs and police authorities appear to have had their share of summer anti-counterfeiting action: Some 5,500 pieces of apparel (mainly socks and sweat suits) were seized in the course of an inspection of a passenger bus in Bogutovac, west-central Serbia.

The brands involved appear to include adidas, Hummel, Puma, and Converse.

This blogger wonders whether use of a passenger bus is a risky innovation or proof that crime does not pay (or at least only refunds bus tickets) either way.


Source: Petosevic IP News, Jelena Jankovic

Posted by: Nikos Prentoulis @ 08.25
Tags: Serbia, customs, police, seizure, counterfeit, Bogutovac,
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Calling all Brits: there's an IP Open Day for you!

MARQUES' friends at the UK Intellectual Property Office and the Office for Harmonisation in the Internal Market (OHIM) are organising a British IP Day, to be held on Thursday 10 September 2015 from 9.00 - 13.00, at 10-11 Carlton House Terrace, London, SW1Y 5AH. This year's event is a single morning session, combining an overview of OHIM's activities and latest developments, followed by discussion sessions in relation to practice and procedures. A full agenda will be sent upon confirmation of attendance. 

Above: Carlton House Terrace -- a bit like Alicante but without the beach ...

There will be an opportunity for attendees to discuss their own proposed topics; if you would like to contribute, please send your suggestions to in good time before the event. Further details can be found by gently clicking here.

Posted by: Jeremy Phillips @ 22.45
Tags: IP Open Day,
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Cluttering of the trade mark register: is it really a problem?

Cluttering and Non-Use of Trade Marks in Europe is the title of a report published yesterday by the United Kingdom's Intellectual Property Office. It's 118 pages in length and is likely to be not a little controversial.  For one thing, it reflects the fact that not everyone agrees that there is a problem with the trade mark register being cluttered up with unused and unworthy marks. 

You can read the report in full by clicking here. If you want a sample, the following taster comes from the Conclusion on page 71:

Our quantitative research shows that CTM registrations have overall a significantly broader goods/services scope than US registrations, notably at the level of priority pairs. It also shows a similar but less pronounced situation pertaining to UK and US registrations. This points strongly to an existing and growing pattern of EU trade mark filing producing growing proportions of registration scope unlikely to be used. It further points to the distinct prospect that direct evidence of unused registration scope might be obtainable, and how. Notably though it provides strong pointers to the need for wider consideration of the reasons for all these indications of likely growth of unused registration scope.

Our research indicates the likely beneficial effects to trade mark users of proof of use in focusing trade mark goods/services scope onto the owner’s market place use of a registered mark. The trade-off for that benefit is lesser scope for the owner to sue for third party infringement and additional costs for follow up applications to protect the mark concerned for market-place line extensions. The balance though seems likely to be tipped by Recital 9 of the Trade Marks Directive and its concerns to take unused registration scope, seen as “deadwood”, out of the EU system.

Posted by: Jeremy Phillips @ 22.35
Tags: Cluttering, proof of use,
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TMView continues to grow, as Macedonian marks are added

Almost 30,000 trade mark applications and registrations from the State Office of Industrial Property of the former Yugoslav Republic of Macedonia have recently become available through TMview. If you're not yet familiar with TMView, you should be: it's an online platform run by the Office for Harmonisation in the Internal Market of the European Union (OHIM) which facilitates access to trade mark data of all participating trade mark offices. Remarkably, there are now no fewer than 40 national offices contributing trade mark data through the TMview system.

Source: Jelena Jankovic (Petosevic newsletter).

Posted by: Jeremy Phillips @ 05.05
Tags: TMView, Macedonia,
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