September ETMR now available

The September 2014 issue of the European Trade Mark Reports (ETMR), a series of law reports published monthly by Sweet & Maxwell, is now available,  The ETMR contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

This issue contains reports on four recent decisions, which include the following:
* Trade marks with VOLKS- prefix: a Bundesgerichtshof (Germany) decision relating to the unauthorised use by the defendant of a number of terms starting with the prefix "VOLKS-"  and their relation to the entitlement of the German motor manufacturer Volkswagen to protect the integrity of its own marks.
* McCambridge Ltd v Joseph Brennan Bakeries, an Irish High Court (Commercial Division) ruling on the calculation of an account of profits where the use of misleading packaging by the defendant enhanced the pre-existing profitability of its own product.
* Comic Enterprise Ltd v Twentieth Century Fox Film Corporation, a controversial decision of the High Court, England and Wales, now under appeal, as to the liability of a US programme producer for launching "glee", a TV series, in the face of a UK trade mark registration of "The Glee Club" for clothing and for entertainment services.
MARQUES members are again reminded that, if they have been involved in European trade mark litigation which is of significant interest, and if they can provide an English-language text of the full decision of the court, the ETMR will be delighted to consider it for publication.
Posted by: Jeremy Phillips @ 16.14
Tags: ETMR,
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Greece: Localism and a new breed of absolute ground

The almost 2-year old revision of the Greek law on trademarks has, among others, seen the introduction of the Hellenic Trademark, an ‘optional’ quality trademark that businesses may register to use for products and/or services of Greek origin. While this localism project is gradually taking off with the finalization of the selection of the logo for the Hellenic Trademark and some progress on the detailed requirements for its use per category of goods/services, another aspect of the project has required the attention of the Greek TM Office.

It appears that, whether intentionally or not, certain businesses may try to register marks that could be associated with the Hellenic Trademark. Under a recent decision, one of the Examiners  rejected the mark MY GREEK PRODUCT & device for Class 35 services relating to advertsing and organization of exhibitions on the ground that it may mislead consumers into thinking its owner is affiliated with the Greek State or is somehow endorsed in the context of the Hellenic Trademark project.

So it seems that the Hellenic Trademark forms a hybrid absolute ground for refusal, incrorporated in the classic "misleading" ground of refusal. There is a lesson to be drawn for businesses seeking to legitimately capitalize on the localism trend the financialis crisis has ignited in Greece: There is a fine line, or even a bit of quick and, between marketing the Greek origin of one's products / services and being associated with the relevant state - public initiative.

Posted by: Nikos Prentoulis @ 21.01
Tags: Greece, localism, Hellenic Trademark, absolute grounds, deceptive, misleading,
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Portugal: Porto loses to Silmoda in overtime

Although this blogger (who supports Benfica) is not glad to acknowledge it, Futebol Clube do Porto has been the most successful Portuguese football club for the past 30 years, having won most of the national titles during this period and achieving international success, with 2 UEFA Champions League, 2 UEFA Cups / Europa Leagues, 1 UEFA Super Cup and 2 Intercontinental Cups. However, this success was not sufficient to secure the club a victory in a trade mark opposition procedure which has recently been decided by the Lisbon Court of Appeal (Intellectual Property Bulletin no. 159/2014, of 21 August)

The issue revolved around the registration of the nominative sign ‘SUPER PORTO’ for ‘shirts’ by SILMODA. Although INPI initially granted this trade mark registration, it subsequently modified its decision ex officio, refusing the trade mark registration due to the likelihood of confusion of the TM application with the following earlier trade marks:



SILMODA appealed the decision to the Intellectual Property Court, who confirmed INPI’s decision. The first instance court held that the word ‘PORTO’ is the dominant element in all of the conflicting signs and that the use of this word in relation to clothing will lead the average consumer to associate it with Futebol Clube do Porto. Further, it held that the element ‘SUPER’ will increase the likelihood of association of the sign with the club (and the earlier trade marks) as the team is commonly associated by the public with triumphs.

The decision was appealed to the Lisbon Court of Appeal, which overturned the prior decisions and granted the trade mark registration. The Court held that in an objective comparison, in which all elements of the signs are to be taken into account, it could not find similarity between the opposing signs. That was so as the Earlier Trade Marks were comprised not only of the word element ‘PORTO’, but also of other nominative and figurative elements and only together could these elements identify the origin of the products. Further, the court accepted that the word ‘PORTO’ could also refer to a city (Porto is the second-largest city in Portugal) or to a place where ships can dock and transfer people or cargo to or from land and, hence, was not necessarily connected to the football team. Finally, it held that the opposing trade marks were targeted to different publics, with the Earlier Trade Marks’ average consumers being limited to supporters of the football team, who would not be likely to associate the opposing trade marks.

In summary, SILMODA obtained the registration of the trade mark ‘SUPER PORTO’ for shirts. Perusing the Appeal’s Court decision, this blogger wonders if this decision is the final chapter of the conflicts between these companies. In fact, although the supplied evidence was not considered enough to demonstrate it, it has been argued that the trade mark ‘SUPER PORTO’ was being used in shirts containing the crests and registered trade marks of the club. Would the same result occur in a procedure not limited to documentary evidence?

Posted by: Pedro Malaquias @ 22.43
Tags: Portugal, relative grounds, Court of Appeal, Football,
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UKIPO succeeds against fake patent and trade mark office organisers

The UK Intellectual Property Office announced yesterday that it has successfully sued the operators of two scam operations involving the confusingly named ‘Patent and Trademark Office’ and ‘Patent and Trade Mark Organisation’. In proceedings before the Intellectual Property Enterprise Court, England and Wales, the operators, Aleksandrs Radcuks and Igors Villers, have agreed to be bound by an order prohibiting them from further acts of passing off. They are also to pay a substantial payment to the IPO which will cover some of our legal costs.

Further proceedings are pending against another organisation that is engaged in similar practices.

Posted by: Jeremy Phillips @ 08.52
Tags: scams, passing off,
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Switzerland: LAND ROVER defeats LAND GLIDER

Land Rover, the British manufacturer of off-road vehicles, finally wins its opposition against Nissan Motor's LAND GLIDER mark in Switzerland. Both marks claim protection for vehicles in Nice class 12. The Swiss Intellectual Property Office dismissed the opposition, essentially arguing that despite the well-knowness of the older mark LAND ROVER, Land Rover could not be granted exclusive rights in the term LAND for vehicles.

On appeal, the Federal Administrative Court reversed. It held that the high recognition of the older mark LAND ROVER was notorious (i.e., needed no further proof). The recognition extended to the whole mark, LAND ROVER, and not only to ROVER, even though LAND was arguably descriptive for (land) vehicles. The fact that Land Rover had also registered the mark ROVER and RANGE ROVER did not change this assessment. Given the similarities of the signs, the essentially identical goods and LAND ROVER's status as well-known mark, there was a risk that the public would assume that LAND GLIDER was a variant of a LAND ROVER, creating a likelihood of confusion (well...).

Nissan Motors argued in vain that there were other marks for vehicles that contained LAND. As is long standing practice, it is not enough to demonstrate dilution to point to registrations containing the same term. What is required is actual use of other marks containing the same term, and this had not been shown.

Decision B-4829/2012 of 28 July 2014 (German summary with link to full text). The decision is final.

PS: picture shows the author (in the tasteful shirt) checking whether a LAND ROVER, which wasn't roving anymore through the Masai Mara of Kenya, still had an engine.

Posted by: Mark Schweizer @ 21.10
Tags: Switzerland, relative grounds of refusal,
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Bucharest Coexistence Agreement Workshop: have you booked yet?

Wednesday 10 September is the date of the next MARQUES Coexistence Workshop. The country is Romania, the city is beautiful Bucharest (just take a look at the Old Town, right) and the venue is the Double Tree by Hilton -- Bucharest Unirii Square Hotel [yes, it is a strange sort of name for a hotel: apart from the fact that it is rather long, do consumers worry about whether the hotel is square or any other shape ...?].   

Anyway, the event will be held in Romanian, for the benefit of anyone who speaks that lovely language or who is thinking about learning it, and it is remarkably cheap to attend since registration is just 25 euro.  Full details of this Coexistence Workshop can be found here.

This blogger knows of some excellent trade mark and IP practitioners in Romania, but has always been surprised at how relatively few MARQUES members can be found there.  If you're based in Romania and want to see the best of MARQUES in action, this workshop is just the place to be!

Posted by: Jeremy Phillips @ 06.20
Tags: coexistence agreements, workshops, Romania,
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ATTENTION: "new version" of indicative rates (procedural costs) in IP (infringement) proceedings (first instance) in the Netherlands as of September 1, 2014

It is quite a long time (July 17, 2008 to be precise) since I wrote on this blog (here) about the so called indicative rates (procedural costs) for IP (infringement) proceedings (first instance), applicable since August 1, 2008, in the Netherlands.

With a letter of July 11, 2014 from the Chair (Ulbe van Houten, Judge in the District Court of Overijssel) of the ‘Landelijk vakinhoud overleg civiel en kanton’ (National Consultations on Civil-Law and Subdistrict Matters of the District Courts) the Netherlands Bar Association (NBA) received the new version of the so called Indicative Rates in IP-matters. These Indicate Rates can be applied as from September 1, 2014 and are applicable to proceedings in first instance.

The Indicative Rates have apparently been evaluated by the IP Expert Group (N.N. as far as I know) of the National Consultations. As part of the evaluation the National Consultations have requested the advice of the DBA’s Advisory Committee on Intellectual Property (chair: Willem Hoyng; members: Tobias Cohen Jehoram, Simon Dack, Marleen van den Horst, Niels Mulder, Otto Swens, Carreen Shannon, Dirk Visser and Hemke de Weijs). The Advisory Committee’s advice to raise the Indicative Rates with 10% is not followed by the National Consultations: the experience that the procedural costs claimed exceed the Indicative Rates is only recognised by one District Court (which one is not disclosed in the Chair’s letter). According to the IP Expert Group this is not enough for a raise of the Indicative Rates which apply throughout the Netherlands.

However the evaluation has according to the Chair been seized to revise the explanation to the Indicative Rates on certain points taking into account the advice of the Advisory Committee to a large extent.

It would have been easy for practice and users if the revisions would have been indicated (by marking for example) in the text of the explanation, which unfortunetaly has not been done, so that it is necessary to have both texts available to see what exactly is revised. As far as I can see the revisions are minimalistic. I discovered the following changes:

1. The reference to the advice of Advocate General Verkade at the Dutch Supreme Court (the Endstra Tapes case), dated January 18, 2008 (LJN BC2153) was deleted as a note from the preface of the explanation to the Indicative Rates. The reference was made to sunbstantiate that the case law with regard to article 1019h Dutch Civil Procedure Act  (implementation of article 14 of the Enforcement Directive) is developing. That being said I do not understand why the reference needed to be deleted, since case law with regard to article 1019h Dutch Civil Procedure Act is still developing.   

2. In the new version’s preface the text refers to September 1, 2014 (instead of October 11, 2010), being the date on which the Indicative Rates version will change.

3. Whereas the earlier version of the Indicative Rates mentioned as a starting point that the Indicative Rates also applied in proceedings only concerning the validity of an IP right or only a declaratory decision for (non-)infringement, the new Indicative Rates do not mention this as a starting point. Such matters are therefore as a starting point not covered by the new Indicative Rates. Please note that the Indicative Rates are not applicable to patent cases.

4. Decisions with regard to costs orders concerning procedural issues shall in principle be adjourned until the decision in the main action. This is new and formed not part of the explanation to the earlier version of the Indicative Rates.

5. That the Indicative Rates are exclusive disbursements is not underlined in the new explanation (but they remain exclusive, those disbursements).

6. The wording ‘except if’ is changed into ‘unless’ in the sentence ‘Unless the parties have reached an agreement with regard to the amount of the procedural costs’; an a, b and c have been added with regard to the points of the detailed statement concerning the procedural costs which has to be filed at the Court. When do we need to file this statement? New: ‘Unless the Judge has decided otherwise, the statement regarding procedural costs has to be filed within the same term which applies for the filing of the last exhibits. Until at the latest 24 hours before the hearing this statement can be supplemented with an overview of the costs made since then.’

7.  It is not stressed any longer by underling that the Indicative Rates give an indication of the maximum amount of procedural costs which as a general rule can be regarded as reasonable and proportionate.

The new version of the Indicative Rates can be found here (in Dutch) and in my 2008 post (see above).

Posted by: Gino Van Roeyen @ 15.02
Tags: indicative rates, Netherlands, proceedings first instance, intellectual property,
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