FRIDAY, 17 OCTOBER 2014
"IP Translator" application in General Court

In case T-51/12 Scooters India v OHMI , Brandconcern BV, filed an application for partial revocation of the mark LAMBRETTA on the basis of Article 50(1)(a) and 50(2) of CTMR in respect of the goods in Classes 3, 12 and 18 claiming that there had been no genuine use of that mark within a continuous period of five years.

The Cancellation Division partially revoked the mark LAMBRETTA, with effect from 19 November 2007, in respect of the goods in Classes 3, 12 and 18, with the exception of ‘perfumery, essential oils, cosmetics, hair lotions’ in Class 3. The BoA dismissed the appeal except for in so far as the mark LAMBRETTA had been revoked in respect of ‘soaps’ in Class 3.

The applicant appealed claiming that, at the time it filed its application for registration of the mark LAMBRETTA, on 7 February 2000, it was OHIM’s practice to understand a reference to a complete class heading in an application for registration as covering all the goods listed in that class and not only the goods corresponding to the literal meaning of that heading. The applicant maintains that it had to be able to rely on its application being interpreted in the same way, notwithstanding the judgment of the Court of Justice in Case C‑307/10 Chartered Institute of Patent Attorneys [2012], and the altered practice of OHIM as a result. Further,  the Board of Appeal found that genuine use of the mark LAMBRETTA had been proven in respect of spare parts for scooters (part of Class 12).

The BoA took to apply the IP translator judgment, meaning whether the indications in the specification of the goods meet the requirements of clarity and precision, and as the competent authority, was entitled to interpret the application for registration as covering only the heading of Class 12 taken in its literal meaning.

The GC confirmed that since that judgment was delivered after the facts at issue in the present case, the question that arises is that of its bearing on the present case.

OHIM took the view that, as regards Community trade marks registered before 21 June 2012, the use of all the general indications listed in the class heading of a particular class reflected the applicant’s intention to cover, by his demand, all the goods or services included in the alphabetical list relating to that class. In those circumstances, the approach set out by the President of OHIM in Communication No 2/12 applies the principles of the protection of legitimate expectations and of legal certainty. The court disagreed finding that “ the latter protects the interest of the public — and not only that of trade mark proprietors (with subjective conditions)”

Accordingly, the words ‘vehicles; apparatus for locomotion by land, air or water’ in the Community trade mark application that the applicant filed with OHIM on 7 February 2000 must be interpreted as intended to protect the mark LAMBRETTA in respect of all the goods in the alphabetical list in Class 12. The applicant moreover confirms, in its written pleadings, that that was indeed its intention when it filed its application for registration.

Even though ‘spare parts for scooters’ do not actually appear in the alphabetical list of goods in Class 12, it must be stated that, as the applicant submits, that list contains many fittings and parts for vehicles, such as, inter alia, ‘vehicle wheels’ (No 120053), ‘pneumatic tires [tyres] / tires, solid, for vehicle wheels / tyres, solid, for vehicle wheels’ (No 120158) and crankcases for land vehicle components, other than for engines (No 120058). It must be pointed out that that finding does not prejudge the question whether the spare parts that the applicant claims to have marketed actually fall within Class 12 or, as Brandconcern claims, in Classes 6 and 7.

 Consequently, at the very least some spare parts for scooters were included in the list of goods covered by the mark LAMBRETTA, with the result that the Board of Appeal was required to examine the genuine use of that mark in relation to those spare parts.

Given that the Board of Appeal did not carry out such an examination, the first complaint put forward by the applicant must be upheld and the contested decision must be annulled on the basis of infringement of Article 51(2) of Regulation No 207/2009.

Posted by: Laetitia Lagarde @ 16.55
Tags: lambretta, recovation for non-use, Ip translator,
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FRIDAY, 17 OCTOBER 2014
Germany: (No) Lust for Colour!

The German Federal Patent Court (BPatG) has recently dismissed an appeal against the German Patent and Trade Mark Office's (DPMA) decision not to register the figurative mark depicted below. The German words 'Lust auf Farbe' can be translated loosely as 'desire for colour' or 'lust for colour'. The applicant sought to register the sign for various services in Classes 35, 37 and 40, mainly connected to 'advertising', 'accounting', 'maintenance work', 'wood processing', 'varnishing' and 'applying window tint.'

The DPMA rejected the application, finding that the sign was devoid of distinctive character as it merely suggested that the services on offer could trigger a 'lust for colour'. Putting forward an unconventional line of argument, the applicant admitted that this was indeed the intended purpose of the mark, which was why it ought to be perceived as a reference to the provider of the services and not as a mere slogan. In its appeal, the applicant also raised concerns that advertising slogans of multinational corporations were being treated differently from the application of a 'craftsman operating on a regional basis, who had been using the slogan for several years.'

Unfortunately for the applicant, the BPatG was not swayed by these arguments but agreed with the DPMA's point of view. The mark consisted of a grammatically correct sentence and did not contain any figurative features that departed significantly from the layout commonly used in the market. The sign had to be refused registration since at least one of its possible meanings was considered to be descriptive of or, at least, to contain a 'close descriptive link' with the services concerned. Moreover, the Court held that it was not bound by previous registrations in allegedly similar cases. As far as the appeal hinted at an acquired distinctiveness, the applicant's submission was not sufficiently substantiated.

Posted by: Christian Tenkhoff @ 10.56
Tags: BPatG; Absolute Grounds; Distinctive Character; Lust for Colour,
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TUESDAY, 14 OCTOBER 2014
Battle of the stars in a circle in General Court

In case T-342/12 Fuchs v OHMI - Les Complices, the General Court reviewed the following opposition

 Mr Fuchs – contested CTM

Earlier CTM and French mark

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Contested goods after applicant’s limitation

Class 18: ‘Leisure articles, namely bags, shoulder bags, rucksacks, except sports bags’;

  Class 24: ‘Textiles and textile goods, namely labels of the aforesaid goods’;

 Class 25: ‘Military clothing and outdoor clothing, manufactured from technical fabrics and other technical components, including trousers, jackets, shirts, T-shirts, waistcoats, anoraks, pullovers, sweatshirts, coats, socks, underwear, scarves, collar protectors and gloves; headgear for wear; belts’.

Class 18: ‘Leather and imitations of leather, handbags, evening bags, sports bags, travelling bags, briefcases, pouches, pocket wallets, credit card holders, cheque book holders, purses, school bags; trunks and travelling bags; umbrellas, parasols, leather leashes’;

Class 24: ‘Fabrics for textile use; curtains and wall hangings; bath linen, bath towels, washing mitts and face towels; bed linen, blankets, sheets, pillowcases, eiderdowns, travelling rugs, duvets; table linen, table cloths, sets of table mats and table napkins’.

Class 25 ‘clothing, shoes, helmets’

 

The Opposition Division rejected the opposition in respect of the goods in Class 24 and allowed the opposition in respect of all of the other goods. The Fifth Board of Appeal of OHIM dismissed the appeal. In particular, after finding that the relevant public consisted of the average consumer in all of the Member States of the European Union, in respect of the goods included in Class 18, and of the average French consumer, in respect of the goods included in Class 25, the Board of Appeal took the view that there was a likelihood of confusion between the signs at issue in respect of the goods in Classes 18 and 25, on the ground that the goods were identical or similar, and the signs were visually similar and conceptually identical and that, even if a comparison were impossible from a phonetic perspective, in principle, consumers could refer to the signs at issue by the term ‘star’. With regard to the distinctiveness of the earlier marks, the BoA found that a star with five points was indeed the sign most commonly used to represent a star. However, it found that the minor visual differences between the signs and their conceptual identity continued to be a source of a likelihood of confusion for a public whose level of attention was average.

The GC confirmed that the BoA did not fail correctly to apply Article 8(1)(b) of CTMR in finding that there was a likelihood of confusion between the signs at issue.

Posted by: Laetitia Lagarde @ 16.10
Tags: general court, likelihood of confusion, star, les complices,
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MONDAY, 13 OCTOBER 2014
General Court: DODIE v DODOT

In Cases T-77/13, T-122/13 and T-123/13, Laboratoires Polive v OHMI - Arbora & Ausonia (DODIE), the General Court annulled the contested decisions of the Board of Appeal.

Laboratoires Polive (France)- Contested CTM’s

Arbora & Ausonia, SLU (Spain)- earlier marks

DODIE

 

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Earlier Spanish, Portuguese marks and CTM DODOT

Word CTM applied for goods in classes 3, 5 and 10 including “Toiletries for babies, shampoos and hair lotions, etc”

Fig CTM’s applied for goods in classes 3, 5, 8, 10, 11, 16, 18, 21, 25 and 28 including “‘Baby bottles, bottle grips, feeding bottle teats, physiological dummies; teething rings; breast pumps, milk collectors, nipple shields’ etc “

Registered for goods & services in Classes 3, 5, 10, 12, 16, 18, 20, 21, 24, 25, 28 and 44, including “‘Babies’ nappies, ‘Vehicle safety seats for children, prams for babies’; Baby bath tubs, non-electric heaters for feeding bottles, brushes, chamber pots, plates and glass plastics; pliers for suspending sheets, toothbrushes, soap dispensers, money boxes not of metal, combs for babies, utensils for toilet (brushes, sponges, cases), etc”

 

In Case T-77/13, the 2nd  Board of Appeal of OHIM upheld the opposition in part, on the basis that there was a likelihood of confusion between the marks at issue as regards the goods above, other than the ‘thermometers for medical purposes, medical apparatus for babies, orthopaedic articles for babies’ in Class 10. The GC agreed with the following findings of the BoA: “ the relevant public is the general public in Spain, except in the case of certain goods related to health in Classes 5 and 10, which were aimed at a more attentive public;  the Spanish mark had a normal degree of inherent distinctiveness and could enjoy enhanced distinctiveness through the use made of it in relation to ‘nappies and nappy pants’ only; the goods covered by the marks at issue were either identical or similar to varying degrees: high, average or low;

However, the Court disagreed with the conclusions regarding the comparison of signs: as regards the visual similarity, it must be observed that the final part of the mark applied for, where the diphthong ‘ie’ appears, is very unusual in Spanish and will attract more attention from the relevant public. Similar considerations apply to the final part ‘ot’ of the Spanish mark, which is likewise not common in that language. Those factors support the conclusion that, contrary to what the Board BoA found, the marks at issue, considered as a whole, display a relatively low degree of visual similarity.

 Regarding the phonetic similarity between the signs notwithstanding the same initial sequence of letters ‘d’, ‘o’ and ‘d’ in the marks at issue, the rhythm of pronunciation of each of the marks is different, or at least, the intonation falls on the parts of the marks at issue that are different. Those factors reduce very significantly the similarity created by the initial sequence of letters. Moreover, when pronouncing the word ‘dodie’, the Spanish consumer will have particular difficulty with the, very unusual, presence of a diphthong at the end of the word, whereas that is not the case with the word ‘dodot’. Consequently, contrary to what BoA found, it must be held that the marks at issue are similar to a low degree, if not to a very low degree, phonetically.

The Court upheld the finding that the signs at issue are not conceptually similar since they are devoid of meaning from the perspective of the relevant public.

In the global assessment, it must be held that the low degree of similarity of the signs does not support the conclusion that there is a likelihood of confusion in the present case, notwithstanding the similarity, if not the identity of the goods, which the BoA rightly found, and even having regard to the public, which does not display a particularly high degree of attention.

In cases T-122/13 and T-123/13, the Court reached the same conclusion for the Spanish and Portuguese consumers, highlighting the fact that the figurative element of the marks applied for depicting a rabbit is not negligible, so that it must be taken into account in the visual comparison, which further weakens the similarity of the marks at issue from that point of view .

 

Posted by: Laetitia Lagarde @ 17.14
Tags: General Court, likelihood of confusion, dodie, dodot, babies goods, nappies, Spain, Portugal,
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MONDAY, 13 OCTOBER 2014
The latest Common Communication: impact of non-distinctive/weak components when assessing likelihood of confusion
OHIM’s Convergence Programme has produced another Common Communication, published on 2 October 2014, with the less than snappy title of Common Communication on the Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (Impact of non-distinctive/weak components).
 
The Common Communication aims to converge the approach of OHIM and the national offices when considering relative grounds of refusal, but limits itself to developing a common practice on “the impact of non-distinctive/weak components of the marks at issue”. The Common Communication expressly states that the common practice does not deal with what other factors should be considered when assessing likelihood of confusion nor the interdependence between those factors and the assessment of distinctiveness.
 
The common practice is set out in detail in an Annex to the Common Communication, with the equally long title of CP5. Relative Grounds - Likelihood of Confusion (Impact of non-distinctive/weak components): Principles of the common practice.  The main emphasis of the common practice is that undue weight should not be given to the coincidence of components that are non-distinctive or which have low degrees of distinctiveness. In particular, the common practice states that:
  • A coincidence only in non-distinctive components does not lead to likelihood of confusion.
  • A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion.
  • However, there may be likelihood of confusion if:
    • The other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar OR
    • The overall impression of the marks is highly similar or identical.
 The aim of converging practice across the offices is an admirable one and most practitioners will probably be pleased if this common practice makes it less likely that later marks are blocked on the basis of earlier marks that coincide only in respect non-distinctive/weak components. Whether this common practice can be adopted uniformly and survive review by the Court of Justice and national courts remains to be seen. 

National offices have been given three months to implement the common practice. Further details about the Common Communication will be included in the next edition of HouseMARQUES.
 
This piece has been kindly prepared for Class 46 by Robert Guthrie (King & Wood Mallesons LLP). Robert is a member of the MARQUES Trade Mark Law and Practice Team,
Posted by: Jeremy Phillips @ 01.48
Tags: OHIM Common Communication, impact of weak and non-distinctive components on confusion,
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FRIDAY, 10 OCTOBER 2014
General Court: T (fig.) v T(fig)

In Case T-531/12 Tifosi Optics v OHMI - Tom Tailor, the General Court dismissed the appeal in the following T-opposition:

 

Tifosi Optics Inc (USA)- contested CTM

Tom Tailor (Germany) –earlier CTM

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Class 9: ‘Optical apparatus and instruments; spectacles; sunglasses; frames; cases; hinges; arms and lenses for spectacles and sunglasses, parts and fittings therefor; visors; binoculars; ski masks; protective helmets and goggles, parts and fittings therefor; contact lenses and containers therefor’;

 Class 25: ‘Clothing, footwear, headgear’

 

Class 9: ‘Optical apparatus and instruments; eyewear; eyeglasses; sunglasses; lenses; eyeglass cases and sunglass cases; parts and fittings for all the aforesaid goods’;

 Class 25: ‘Men’s and women’s clothing; t-shirts, shirts, jeans, pants, shorts, leather pants, chaps, sweaters, jackets, vests, skirts, dresses and footwear; articles of outerclothing

 

 

The Board of Appeal annulled the Opposition Division’s decision, upholding the opposition:  the identity and similarity of the goods concerned and the degree of similarity between the marks, considered cumulatively, were sufficiently high to justify the conclusion that there was a likelihood of confusion, even in a case involving an earlier trade mark of weak distinctive character.

The General Court firstly confirmed that the relevant public consists of both professionals and the general public, with the professionals having a higher level of attention than the average consumer. As acknowledged by all the parties, although the relevant public’s degree of attention is average as regards most of the goods involved, it is higher than average for some of the goods in Class 9: the sophisticated or technical nature of some of those goods, such as optical apparatus, requires more in-depth consideration on the part of consumers.

As regards the comparison of good, the GC confirmed most of the findings of the BoA that they are either identical or similar , such as that  visors; ... ski masks; protective helmets ..., parts and fittings therefor’ in Class 9 covered by the mark applied for are similar to the ‘articles of outerclothing’ in Class 25 covered by the earlier mark.

Regarding the comparison of the signs, the GC also found that the trade marks are visually similar and aurally identical. However, it held that the the BOA was wrong in finding the letters T conceptually identical. There is well-established case-law that  the letters of the alphabet have no semantic meaning and that it is thus impossible to compare them conceptually.

Even if it is accepted that the earlier trade mark has a weak distinctive character, taking the imperfect recollection which the relevant consumer will have of the marks at issue, the decision of the BoA must be approved in so far as it found that there was a likelihood of confusion between the marks at issue in respect of all the goods.

 

Posted by: Laetitia Lagarde @ 18.40
Tags: general court, likelihood of confusion, T, similar, identical goods,
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FRIDAY, 10 OCTOBER 2014
Germany: Energy & Vodkať not a nutrition claim

Yesterday, the German Federal Court of Justice (Bundesgerichtshof –BGH) pronounced the sentence in the case of “ENERGY & VODKA”.

The claimant, the trade protection association of the German liquor industry (Schutzverband Deutscher Spirituosenindustrie e.V.) went to court against a distributor of an alcohol-mix drink consisting of 26,7 % vodka and 73,3 % of an energy drink with a total alcohol content of 10 %.
After the claim was rejected in first instance, the court of appeal decided that the designation “ENERGY & VODKA” suggested certain beneficial, stimulating nutritional properties and therefore violated article 4 (3) Regulation 1924/2006 (Regulation on nutrition and health claims).
According to the BGH’s press release, it does not consider “ENERGY & VODKA” as a claim in the meaning of article 2 of the Regulation. It states that "ENERGY & VODKA" is only a name which does not suggest or imply any specific property other than properties which are typical for this type of product.
In the case at hand, the list of ingredients as well as further information on the product itself informs the customer that the product is a premixed alcoholic beverage containing vodka and an energy drink.

Moreover, the BGH decided, that the designation of the premixed alcoholic beverage with an alcohol content of 10 % as “ENERGY & VODKA” was not a violation of Regulation 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks. Although the alcoholic strength by volume has to be at least 37,5 % in order for a beverage to be called vodka, it is not prohibited that an energy drink mixed with vodka contains the term“vodka” in its name.

For our German-speaking readers, the BGH press release is available here .

This guest post was drafted by Caroline von Nussbaum who is also the author of the picture featured in this article- thank you Caroline!

Posted by: Laetitia Lagarde @ 14.36
Tags: Germany, Energy&vodka, nutrition claim, BGH,
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