THURSDAY, 11 FEBRUARY 2016
Observatory publishes fresh updates on counterfeit bags, cases, jewellery and watches

Our friends in the European Observatory on Infringements of intellectual property rights, accommodated by the Office for Harmonisation in the Internal Market (OHIM), have been busy again, The result of this is the launch this morning of the fifth and sixth sectorial reports on the economic cost of IPR infringement, covering (i) handbags and luggage and (ii) jewellery and watches.

Right: Mary Poppins' bag. the design is iconic, but that doesn't mean the product is genuine ...

We are reliably informed as follows:

In line with its mandate, the Observatory is continuing to evaluate the negative impact of counterfeiting and its consequences for legitimate businesses, governments and consumers, and ultimately society as a whole. Results of these fifth and sixth studies, to be followed by some other sectorial studies, pave the way towards quantification of the scope, scale and impact of IPR infringements in the European Union.

With a little bit of luck, a decent supply of electricity and an obliging internet browser, you should be able to read these two important and current studies right now, by clicking the Observatory website here.

Posted by: Blog Administrator @ 08.00
Tags: Observatory, Sectorial Reports, Counterfeiting,
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TUESDAY, 9 FEBRUARY 2016
G?zze Frottierweberei reference on heads for the CJEU

Here's a new Court of Justice of the European Union (CJEU) reference. It's Case C-689/15 W.F. Gözze Frottierweberei et Gözze. This is a request for a preliminary ruling from the Oberlandesgericht Düsseldorf in a case which concerns whether the use of an individual mark as a certification mark can constitute use as a trade mark. The questions are as follows:

  1. Can the use of an individual mark as a certification mark constitute, in relation to the goods for which it is used, use as a trade mark for the purposes of Articles 9(1) and 15(1) of Council Regulation 207/2009 on the Community trade mark?
  1. If Question 1 is to be answered in the affirmative: is such a mark to be declared invalid, in accordance with Article 52(1)(a) in conjunction with Article 7(1)(g) of Council Regulation 207/2009 on the Community trade mark, or to be revoked, in accordance with a mutatis mutandis application of Article 73(c) of that regulation, if the proprietor of the mark fails to ensure that expectations in trade relating to the quality associated with the sign are being met by carrying out periodic quality controls at its licensees?

If you would like to tell the UK Intellectual Property Office what you think about these questions please email policy@ipo.gov.uk by 17 February 2016.

Posted by: Blog Administrator @ 01.57
Tags: CJEU reference, certification mark,
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MONDAY, 8 FEBRUARY 2016
Faroe Islands to form part of the territory of Madrid

The Faroe Islands will effectively be part of the Madrid System for international registration of trade marks with effect from 13 April. Here's the text of the WIPO notice to that effect:

Madrid (Marks) Notification No. 211
Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks: 
Declaration by the Kingdom of Denmark

The Director General of the World Intellectual Property Organization (WIPO) presents his compliments and has the honor to refer to the deposit by the Kingdom of Denmark, on November 10, 1995, of its instrument of ratification of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989 ("Madrid Protocol (1989)"), as amended on October 3, 2006, and on November 12, 2007.  The said instrument contained a declaration that "until later decision, the Protocol will not be applied to the Faroe Islands or to Greenland".

The Director General has the honor to notify the deposit by the Government of the Kingdom of Denmark, on January 13, 2016, of a declaration according to which it withdraws the one made upon ratification of the Protocol "to the effect that until further notice the Protocol should not apply to the Faroe Islands".

The said declaration will enter into force on April 13, 2016.

Posted by: Blog Administrator @ 18.16
Tags: Madrid Protocol, Faroe Islands,
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FRIDAY, 5 FEBRUARY 2016
ZARA: Inditex appeal heads for CJEU.

There's a new Court of Justice of the European Union (CJEU) case ahead: it's a Community trade mark appeal, Case C-575/15 P: Industria de Diseño Textil, S.A. (Inditex) v OHIM. The appeal involves an opposition: in Case T-584/14 the General Court dismissed an action against the revocation of a Community trade mark.

The General Court decision is available so far only in French and Spanish, but the mark at stake appears to be ZARA.

Posted by: Blog Administrator @ 22.17
Tags: CJEU appeal, Community trade mark, opposition,
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FRIDAY, 5 FEBRUARY 2016
EDB Forum 2016: save the date!

Our friends at the Office for Harmonisation in the Internal Market (OHIM) are dellighted to announce that their next Enforcement Database (EDB) Forum will take place in their lovely premises in Alicante on 28 and 29 June.  

This year’s Forum is specially dedicated to looking at counterfeiting from the enforcement perspective. Customs and Police officers of the 28 EU Member States, DG Taxud, Europol, OLAF [no, Disney fans, it's sadly not THE Olaf] and WCO will be in attendance to give right holders an insight into their work and what information they need to identify fake products.

The exhibition of counterfeit products will be running again this year, where rights holders can show counterfeit copies of their goods to enforcers, and show where this information can be found in the EDB.

Further details will available in due course. Meanwhile, save the date!

Posted by: Blog Administrator @ 14.56
Tags: EDB Forum 2016,
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THURSDAY, 4 FEBRUARY 2016
Germany: BGH confirms work title protection for smartphone-apps

In “wetter.de” (I ZR 202/14) the German Federal Court of Justice (BGH) on 28 January 2016 held that the names of websites and smartphone-apps may per se be protectable as “work titles under  Section 5 of the German Trade Mark Act (MarkenG), which concerns the protection of “commercial designations” and provides as follows:

(1) Company symbols and titles of works shall enjoy protection as commercial designations.

(2) Company symbols are signs used in the course of trade as a name, company name or special designation of a business operation or an enterprise. Business symbols and other signs intended to distinguish the business operation from other business operations which are regarded as symbols of the business operation within involved trade circles shall be deemed equivalent to the special designation of a business operation.

(3) Titles of works are the names or special designations of printed publications, cinematic works, music works, stage works or other comparable works.

In the context of infringement proceedings relating to the smartphone-app “wetter.de”, the BGH recently held that domain names relating to internet services and apps for mobile devices, such as smart phones, can - in principle - be protected as work titles (Werktitel) under Section 5(3) MarkenG.

However, the sign “wetter.de” (comment: the German word "Wetter" translates into weather) was however not found distinctive enough to fall within the ambit of this protection  since it was found to be directly descriptive (“glatt beschreibend “)  of the content of the "work", with the website and app “wetter.de” providing weather forecast information.

The court acknowledged that the level of distinctiveness required under Section 5(3) MarkenG may in certain circumstances be low, this notably where consumers have been educated to regard descriptive titles and where consumers would thus pay heightened attention and notice even small differences, e.g. in the field of newspapers and magazines, which tend to have less distinctive “colourless” generic titles, which are specified by their geographical origin or content.These principles could however not be directly applied to the names of websites and smartphone-apps, where a market recognition of at least 50% percent was required to achieve acquired distinctiveness and protection under Section 5(3) MarkenG.

The court’s press release No. 26/2016 can be found here.

Posted by: Birgit Clark @ 13.46
Tags: work title, German trade marks, BGH, acquired distinctiveness,
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FRIDAY, 29 JANUARY 2016
General Court: can Simba have the monopoly over "playthings"?

In Case T-687/14, the General Court confirmed OHIM's decision that Simba might stay "king of the jungle" for toys and playthings, albeit not exclusively for a lion…

The following opposition was upheld by both OHIM and the General Court:

Novomatic AG - Applicant

Simba Toys GmbH & Co. KG -earlier German mark

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Class 28'vending machines and gambling machines, exclusively for commercial use in casinos and amusement arcades, or games of chance, with or without payment of winnings via the Internet or telecommunications networks , gambling with or without payment of winnings for use in telecommunications apparatus; slot machines, housings for slot machines, vending machines and gaming machines, with the exception of children's play.

Class 28- Playthings, except stuffed animals

 

First,  the request for proof of genuine use of the earlier mark was admissible and the evidence submitted by the opponent permitted to establish such use during the relevant period, ie from April 2006 to April 2011 for products covered by the earlier mark. 

Second, OHIM had found that all the applied for goods were identical to the earlier goods in Class 28. The General Court disagreed, finding that the BoA had used an overly broad definition of th" playthings" and held that the gaming machines and games of chance via telecommunications means were not identical to the "toys except stuffed animals" but had some similarity (par. 47-70)

Third, the marks in question contained the distinctive element 'Simba', which has no meaning for the relevant German consumer;  the element 'african' of the mark applied for had a weak distinctive character as the item "Simba" as it would be understood by the German public as an indication of African descent and, thirdly, on the one hand the figurative element of the earlier mark consisting of a representation of an elephant, is secondary and, secondly, that the figurative elements of the mark consisting of the representation of a head lion, a configuration of the background and stylized word elements, failed to divert the attention of the consumer from the identical word element 'Simba', since they were not striking or by their size or by their positioning at the point of being able to dominate the overall impression of the mark, or they were not distinctive. 

Thus, visually, even if the marks were distinguished by their length and their figurative elements, there was an average similarity between them. Regarding the comparison of the marks on the phonetic level, the similarity was more important, since the graphics were not considered. Regarding the comparison of the marks conceptually, the BoA had found that the signs in question have no meaning in German, a conceptual comparison of the marks was not possible. However, the Court held that the consumer would understand the meaning of African close to the German equivalent word. Nevertheless overall¸ the GCconsidered that the difference in concept between the conflicting marks does not neutralize the similarity between them visually and phonetically.

Fourth, gaming items consumers would show a normal degree of attention, while the level of attention of consumers in the field of professional gambling was high. Thus, given the low degree of attention of consumers of gaming items, it was appropriate to consider the level of attention of these when assessing the likelihood of confusion. 

Fifth, the relevant public would perceive the word 'Simba', which is identical to the marks, as an autonomous and distinctive element believe that the goods in question come from economically linked undertakings. 

Posted by: Laetitia Lagarde @ 13.01
Tags: General court, likelihood of confusion, simba, toys, gambling,,
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