FRIDAY, 29 JULY 2016
Fancy a bit of legislative consolidation? Well, here it is!

It has been a summer of distractions, ranging from the terrible to the trivial, and many of us have been glued to the traditional and social media in search of the latest news.

Accordingly not all readers of this weblog will have spotted the existence of a consolidated version of Community Trade Mark Regulation 207/2009 as amended (now the European Union Trade Mark Regulation) which is available in online if you click the link here.

Thanks go to Jan Zecher (Principal of MARQUES member Fish & Richardson PC, Munich) for prodding us into posting this notice.

Posted by: Blog Administrator @ 04.09
Tags: Legislation, Consolidated Regulation,
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THURSDAY, 28 JULY 2016
Wines and Spirits: sectorial report reveals scale of estimated loss to Europe

The European Observatory's eighth sectorial report on the economic cost of IPR infringement, covering the economic cost of IPR infringement in the spirits and wine sector was launched earlier this week, on 26 July 2016.

In line with its mandate, the Observatory is continuing to evaluate the negative impact of counterfeiting and piracy and its consequences for legitimate businesses, governments and consumers, and ultimately society as a whole. The idea is that the results of this study, which will be followed by some other sectorial studies, pave the way towards quantification of the scope, scale and impact of infringements of intellectual property rights in the European Union. 

The bottom line is that that 4.4% of legitimate sales of spirits and 2.3% of legitimate sales of wine are lost each year due to the counterfeiting of alcoholic drinks. Those lost sales are estimated to translate into 4,800 jobs directly lost across the spirits and wine sectors in the EU, as legitimate manufacturers employ fewer people than they would have done in the absence of counterfeiting.

The link to the study is now available on the Observatory website here.

The Observatory's reports are also available in French, Italian, Spanish, German and Polish.

Posted by: Blog Administrator @ 21.59
Tags: Observatory Report, Wines and Spirits,
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WEDNESDAY, 20 JULY 2016
General Court: Mad Catz v. Monster

The following summary about this "cat fight" was kindly prepared by Vlotina Liakatou, Trade Mark associate at MARQUES member Baker & McKenzie.

In Cases T‑567/15 and T-429/15 (Monster Energy Company v EUIPO & Mad Catz Interactive, Inc.), handed down on 14 July 2016, the General Court ("GC") found no likelihood of confusion between the following parties' marks:

 Mad Catz Interactive, Inc. - EUTM Applicant

Monster Energy Company - Opponent

EUTM Application No. 011390853011390853

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EUTM Application No. 011390846

 

EUTM registration No 6433817

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EUTM registration No 7444243

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EUTM registration No 7451552

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IR (designating the EU) No 1048069

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In 2012, Mad Catz Interactive, Inc. filed EUTM applications for the figurative marks shown above for "clothing footwear and headgear". Monster Energy Company opposed both applications on the basis of its earlier registrations (also shown above) covering inter alia goods in the same Class.

The Opposition Division refused the oppositions and the Board of Appeal ("BoA") upheld its decisions. Monster Energy filed further appeals, but they were also dismissed by the General Court.

In Case T-567/15, where the EUTM Application No. 011390853 was opposed, Monster Energy claimed that the BoA had wrongly assessed the similarities between the mark applied for and its earlier mark No. 6433817, which are figurative and not composite marks (the opposition was eventually restricted to this earlier mark only). It also argued that the BoA wrongly assessed the overall impression created by these marks by stating that the mark applied for might be perceived by the relevant public as scratches, whereas the earlier mark might resemble claws. Lastly, Monster Energy criticised the BoA for finding that there was no likelihood of confusion and for failing to take into account the distinctiveness acquired by the earlier mark through its extensive use for energy drinks and clothing for extreme sports.

The GC did not concur with Monster Energy's allegations and found no likelihood of confusion in this case. After establishing that Class 25 goods were everyday goods intended for the EU average consumer and that the goods covered by the marks were either identical or similar, it went on to compare the marks at issue.

The Court agreed with the BoA's assessment of a low degree of visual similarity between the marks: although the marks were visually similar in so far as they both depicted a number of stylised lines, they differed in other respects such as the shape, colour, number and position of these lines. Contrary to what was suggested by Monster Energy, i.e. that the only perception of the marks at issue would be scratches and claws, it was held that "the mark applied for depicts a black square on which four diagonal parallel white lines are placed which might be perceived by the public as "scratches", white brush strokes or a purely abstract device, whereas the earlier mark shows three vertical parallel black shaky lines of different lengths whose upper part is broader and which, from the perspective of the relevant public, might resemble three "fingers" or "claws" or a very abstract depiction to which no specific and clear meaning can be attributed".

The fact that the perception of the earlier mark as "scratches" was not the most obvious and that the relevant public could perceive the marks at issue as abstract devices without associating them with any meaning, made them conceptually dissimilar. On this basis, Monster Energy's argument that there was at least a degree of conceptual similarity between the marks because they were liable to convey "the message of something aggressive and that something is being ripped open" could not be accepted. Regarding phonetic similarity, no phonetic comparison was possible because the marks were purely figurative.

Regarding the enhanced distinctiveness claimed by Monster Energy, the GC held that the BoA was right to find that Monster Energy's mark did not enjoy enhanced distinctiveness, since the use of the earlier mark on clothing and headgear was essentially for the purposes of sponsorship or promotion of Monster Energy's non-alcoholic beverages and energy drinks. The fact that its mark enjoyed a reputation for drinks had no relevance in relation to the reputation claim because Monster Energy had claimed reputation in relation to Class 25 goods only. 

Given the low level of visual similarity between the marks, the fact that the relevant public could perceive the marks at issue as abstract devices without associating them with any meaning (and not only as scratches) and the normal (and not enhanced) distinctive character of the earlier mark, there was no risk of a likelihood of confusion.

In Case T-429/15 where the EUTM Application No. 011390846 was opposed, the GC also found no likelihood of confusion on the basis of similar reasoning. In this case, the marks were even less visually and phonetically similar given the additional elements "MAD CATZ" included in the mark applied for.

Posted by: Laetitia Lagarde @ 17.20
Tags: General court, likelihood of confusion, monster, mad catz,
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MONDAY, 18 JULY 2016
Class 46 needs YOU

A long-established European trade mark weblog, Class 46 has brought a regular supply of information concerning legal rulings and legislative developments, as well as reporting on the activities of the EUIPO and national and regional trade mark granting offices, plus news of MARQUES and its forthcoming events.  

The vast majority of these contributions are submitted by MARQUES members and blog readers, and you don't have to be a member of the Class 46 blog team in order to have information about an interesting case published on the blog.  If you'd like to send anything in for publication, feel free to forward it to one of the blog team members or email it to MARQUES at info@marques.org and we will get back to you! 

Posted by: Blog Administrator @ 00.01
Tags: contributions,
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FRIDAY, 15 JULY 2016
Online Business Models Infringing Intellectual Property Rights: here's the report

The EUIPO Report, Online Business Models Infringing Intellectual Property Rights, was released on 12 July 2016. What was this all about? According to the European Observatory: 

"The aim of this independent research is to provide an overview of different infringing business models, assessing how they function, how they are financed, how they generate profits for their operators, what kinds of content they disseminate and how large their user bases are.

The study will provide enhanced understanding to policymakers, civil society and private businesses. At the same time, it will help to identify and better understand the range of responses necessary to tackle the challenge of large scale online IPR infringements".

You can access the full report by clicking here.

Posted by: Blog Administrator @ 16.59
Tags: Online Business Models Infringing IP Rights,
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THURSDAY, 14 JULY 2016
General Court: Piccolomini v Piccolo

In Case T-20/15(Henkell & Co Sektkellerei v EUIPO (PICCOLOMINI), the  General Court of the EU rendered a Judgment regarding the sign PICCOLO, which highlighted that the importance of proof of use in EUIPO cases is not so "small". The following summary was kindly prepared by Andy Cornforth, Trainee Solicitor at MARQUES member Baker & McKenzie.

The GC held that the BoA was correct to find that evidence submitted pursuant to Art 42(2) of the Regulation did not show genuine use of an earlier mark as a trade mark.  The case concerned the registration of the mark PICCOLOMINI by Ciacci Piccolomini di Bianchini Societa Agricola ("Ciacci") which was opposed by Henkell & Co ("Henkell") on the basis of a likelihood of confusion with its earlier mark PICCOLO.

Henkell, at Ciacci's request, had provided evidence of genuine use of the PICCOLO mark, and on the basis of this its opposition was upheld. However, Ciacci appealed, and this appeal was upheld by the BoA. The BoA's reasoning was that:

  • "Piccolo" formed part of internationally used wine terminology, and that an average consumer would be familiar with the term, which referred to the size of the bottle. Consumers unfamiliar with the term wouldn't assume it was a trade mark in the context of marketing sparkling wine
  • PICCOLO was used either in a descriptive manner or in an abbreviated form, and was featured with other descriptive terms like "trocken" or "dry", or with the applicant's name, "henkell".
  • In terms of both positioning and size, "Henkell" was always the most dominant element, and, because it had no apparent meaning, it would be regarded as being distinctive

The GC examined the evidence Henkell had submitted, and agreed with the BoA. Henkell had relied upon (amongst other things) a statutory declaration by its marketing director that the PICCOLO mark had been used in 20 Member States. The GC said that such a declaration could not be given the evidential weight accorded to a statement made by a third party, and that its particulars required confirmation by other evidence. The other evidence here did not provide such confirmation.

Henkell had argued that the BoA's examination of the distinctive character of the earlier mark in the context of assessing proof of genuine use was ultra vires, and that it was wrong in finding that the mark was devoid of distinctive character. The GC disagreed, saying that the BoA’s examination complied with all applicable rules and case-law. It had not ruled on whether there were absolute grounds for refusal, but confined itself to a genuine use assessment. Furthermore, it had not examined the distinctive character of the earlier mark per se, but the perception of the sign in the context of its actual conditions of use as a trade mark within 42(2)

Comment

It seems relatively clear here that the use of PICCOLO could very easily be considered to be descriptive, and that its validity as a mark might at best be regarded as borderline. Though the evidence Henkell submitted as proof of genuine use may have demonstrated that the term had genuinely been in use, given its size and position in relation to "Henkell" and its comparable status in relation to other clearly descriptive terms, it did not show that the term had genuinely been in use as a trade mark.

Posted by: Laetitia Lagarde @ 17.02
Tags: General Court, genuine use, piccolo, bottle, small, Henkell,
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THURSDAY, 7 JULY 2016
Repute of McDonald's family of marks allows it to prevent "Mac--" prefixed marks for food/drink

The General Court of the EU held that the repute of fast food chain McDonald’s trade marks makes it possible to prevent the registration, for foods or beverages, of trade marks combining the prefix ‘Mac’ or ‘Mc’ with the name of a foodstuff or beverage; (case T-518/13; Future Enterprises v EUIPO of 5 July 2016). This case is likely to strengthen the concept of a family of trade marks and includes a helpful summary of case law in this field.

A Singaporean company registered the mark for foodstuffs and beverages at OHIM (now EUIPO).  American fast food company McDonald’s applied to have the trade mark declared invalid on the basis of its earlier EU trade mark McDONALD’S as well as 12 other trade marks it owned for fast food restaurant services; all of which included the word elements ‘Mc’ or ‘Mac’ as prefixes. These include McFISH, McTOAST, McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN, EGG McMUFFIN, McFEAST, BIG MAC, PITAMAC and McDonald’s.

The GC now held in McDonald's favour and invalidated the MACCOFFEE mark finding inter alia that:

  • because of the combination of the element 'mac' with the name of a drink in the MACCOFFEE trade mark, in particular, the relevant public can associate that trade mark with the McDonald’s ‘Mc’ family of trade marks and mentally establish a link between the trade marks at issue.

  • despite the difference of the goods and services covered by the trade marks at issue (namely the foodstuffs and beverages for MACCOFFEE and the fast food restaurant services for McDonald’s), there is nevertheless a certain similarity owing to the close links existing between them: foodstuffs may be used and offered in the context of the fast food restaurant services; foodstuffs, such as ice cream, muffins, filled sandwiches and toasted sandwiches correspond to the goods offered  on the menu of fast food restaurants the foodstuffs and restaurant services at issue are directed at the same consumers.

  • the use of MACCOFFEE without due cause takes unfair advantage of the repute of McDonald's trade marks.

  • upon seeing the MACCOFFEE trade mark affixed to goods closely linked to those of McDonald’s, the relevant public could mentally establish a link between the trade marks at issue and could transfer the image of the McDonald’s trade marks to the goods covered by MACCOFFEE.

  • the protection provided by Article 8(5) of Regulation No 207/2009 is not conditional on there being a degree of similarity between the marks at issue, such that there exists, on the part of the relevant public, a likelihood of confusion between them. It is sufficient for the degree of similarity between those marks to have the effect that the relevant public establishes a link between them.

  • "… the marks McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN and EGG McMUFFIN, derived from the McDONALD’S trade mark, fulfil all the conditions to form a ‘family’ of trade marks, …, in so far as they are sufficient in number and reproduce in full the same distinctive element, namely the element ‘mc’, with the addition of a word element that differentiates them from each other and that they are characterised by the repetition of the same prefix, ‘mc’, taken from the McDONALD’S trade mark. … the McDONALD’S trade mark, with a reputation for fast-food restaurant services, is the original trade mark of the family, to which all the derived marks are connected by a common feature, namely the prefix ‘mc’, and from which they are all separated by the same type of final element, which refers to one of the foodstuffs on the menu of the intervener’s fast-food restaurants".

The judgement can be found here.

The court's press release can be found here:

Posted by: Birgit Clark @ 10.32
Tags: GC, family of trade marks,
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