PUMA vs "POODLE" - German Supreme Court reviews parody rights

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Earlier this month, the German Federal Supreme Court (BGH) decided that the constitutional rights of free speech and artistic expression only go so far. The judges ordered the defendant to consent to the cancellation of his trademark registration "PUDEL". "Pudel" means "poodle" in German and the registered word-device mark clearly parodied the claimant's well-known "PUMA" mark:


PUMA is a well-known German manufacturer of sportswear, and the defendant had also registered and used his PUDEL mark for clothing. The German Federal Supreme Court held that while there was no danger of confusing the two marks, the PUDEL mark infringed on the broader protection the PUMA mark enjoyed by virtue of its reputation. The judges furthermore gave precedence to the claimant's intellectual property rights over the freedom of expression and artistic freedom invoked by the defendant. The court held that these fundamental rights do not justify the grant of a property right if that right interferes with an older property right.

Your author welcomes this decision. Freedom of artistic expression and freedom of speech enjoy constitutional protection to the extent that they further public debate and the open expression of thoughts, opnions and creativity. The court rightly drew the line where a parody is used primarily for commercial aims, such as obtaining a trademark registration and using it in commerce. We are awaiting the publication of the full reasons with great interest. It remains to be seen if the German Supreme Court used the opportunity of this rather unusual dispute to hand down general considerations on the scope of parody where it intersects with trademark rights.

German Federal Supreme Court, decision of 2 April 2015, file no. I ZR 59/13 (not yet published).

Posted by: Anthonia Ghalamkarizadeh @ 09.14
Tags: PUMA, Pudel, Poodle, parody, BGH, German Supreme Court,
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TUESDAY, 26 MAY 2015
Splendid rejected in General Court

In case T-203/14 Mo Industries  applied for the following sign for Class 18: ‘Backpacks; book bags; sports bags; wallets; handbags; purses; tote bags; umbrellas; brief-case type portfolios; toiletry bags sold empty; cosmetic bags sold empty; shaving kit bags, sold empty; attaché cases; briefcases; satchels; duffel bags; luggage; garment bags for travel; billfolds; tie cases; key cases; diaper bags; shoulder belts; covers for electronic devices’ and  Class 25: ‘Belts’ Image not found

OHIM and the General Court held that the trade mark applied for was descriptive and devoid of any distinctive character for the purposes of Article 7(1)(b) and (c) of Regulation No 207/2009.、

First, the goods in question are aimed at the general public and the distinctiveness of the trade mark applied for had to be assessed by reference to the English-speaking public in the EU.

Secondly, the figurative sign containing the word element ‘splendid’ is an indication descriptive of the goods concerned for the purposes of Article 7(1)(c) of CTMR. The applied for sign is composed of an ordinary word in English which means, inter alia, ‘grand’, ‘spectacular’, ‘superb’ or ‘gorgeous’. Accordingly, ‘splendid’ refers clearly to goods the appearance of which presents such qualities. That word element is therefore laudatory for the sake of advertising, the purpose being to highlight the positive qualities of the goods for the presentation of which that element is used.

Moreover, by contrast with everyday consumer products in respect of which aesthetic qualities are not essential, the products covered by the mark applied for in the present case are clearly among those the appearance of which could be described as ‘splendid’.Thus, the word element of the mark applied for will be perceived immediately by the relevant public as a promotional formula which indicates to consumers that the goods covered by the mark are aesthetically superior to competing products (see  Best Buy Concepts v OHIM (BEST BUY), T‑122/01).

 Thirdly, for the goods in question, that sign is devoid of any distinctive character within the meaning of Article 7(1)(b) of the regulation. The fact that the mark applied for contains, in place of the dot over the letter ‘i’, a figurative element which is a registered Community trade mark is not conclusive for the purposes of assessing the distinctive character of that mark as a whole. Even misspellings are not generally conducive to overcoming refusal of registration stemming from the fact that the content of the sign is immediately comprehensible as eulogistic or laudatory (see FTI Touristik v OHIM (BigXtra), T‑81/13).

Fourthly, the applicant had not shown that the trade mark applied for had acquired distinctive character through use. Thus the exception provided for in Article 7(3) of Regulation No 207/2009 was not applicable.

Finally, the Court rejected the alleged infringement of the principles of equal treatment and of sound administration claimed by the applicant on the ground that mark applied for has not received the same treatment as CTM’s of which it is already the proprietor for goods in Class 25, which contain the word element ‘splendid’ or the term ‘splendid’. .

The Court held there are certain differences between the goods covered by the applicant’s earlier marks and those covered by the mark applied for which were pointed out by the Board of Appeal. Furthermore, in the application, the applicant acknowledges that those goods are not identical and claims solely that they are closely related. In addition, it must be pointed out that the trade marks of which the applicant is already the proprietor are not strictly identical to the mark applied for in the present case. Indeed it is well-established case-law that CTM examination must be undertaken in each individual case. 

Posted by: Laetitia Lagarde @ 10.41
Tags: General Court, absolute grounds, splendid, ,
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FRIDAY, 22 MAY 2015
Madrid Dependency: a survey, and a summary

A little while ago, back on 8 May to be precise, our very good friends at the World Intellectual Property Organization (WIPO) launched a Survey on Madrid System Dependency Principle Issues. Class 46 readers may already know about this and might already have completed it but, to be on the safe side, we are reminding everyone to partipicate if they can: the deadline for completing the survey is 31 May 2015 -- not so far into the future. 

MARQUES has taken a great interest in Madrid System dependency and has been involved in several initiatives in this area. The MARQUES Trade Mark Law & Practice Team, for example, has been in attendance at all Madrid Legal Working Group meetings and, since at least as early as 2011, the organisation has supported the Norwegian Proposal and the adoption of substantive changes to the Madrid system – ultimately the abolition of the basic mark requirement -- in order that Madrid should become more user-driven and user-friendly.

Posted by: Jeremy Phillips @ 09.24
Tags: Madrid Dependency,
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The Lisbon System and the Geneva Act: agreement is reached

Readers of this weblog have been treated to a great deal of information from us, via MARQUES's "special correspondent" and GI Team vice-chair Keri Johnston, concerning the past week and a half's discussions, negotiations, anxieties and jubilations relating to the Diplomatic Conference on the revision of the Lisbon Agreement on Appellations of Origin and Geographical Indications. Now you can hear the outcome from WIPO itself, via yesterday evening's press statement:

Negotiators Adopt Geneva Act of Lisbon Agreement at Diplomatic Conference

Geneva, May 20, 2015 document PR/2015/779

Negotiators approved a revision of an international registration system providing protection for names that identify the geographic origin of products such as coffee, tea, fruits, wine, pottery, glass and cloth.

A Diplomatic Conference was held in Geneva from May 11 to 21, 2015 and adopted the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

The Geneva Act allows the international registration of geographical indications (GIs), in addition to appellations of origin, and permits the accession to the Lisbon Agreement by certain intergovernmental organizations.

WIPO Director General Francis Gurry concluded by thanking delegations from all WIPO member states for their very constructive engagement. He said all delegations showed “an openness to discuss different approaches in a very positive spirit.”

The President of the Diplomatic Conference Ambassador Luis Enrique Chávez Basagoitia, Permanent Representative of Peru to the United Nations Office and other international organizations in Geneva expressed satisfaction with the outcome of the diplomatic conference and called the adoption of the Geneva Act a “transcendental moment” for the Lisbon Union and WIPO.

The Geneva Act of the Lisbon Agreement further develops the legal framework of the Lisbon System, which helps promote many globally marketed products such as, for example, Scotch whiskey, Darjeeling tea and Café de Colombia.

Other changes affect fee provisions, scope of protection, protection against becoming generic, and safeguards for respect of prior trademark rights.

An official signing ceremony is scheduled for May 21, 2015, at WIPO’s Geneva headquarters.

The Geneva Act of the Lisbon Agreement will enter into force three months after five eligible parties have deposited their instruments of ratification or accession.

The basic negotiating text for the Diplomatic Conference was developed between 2008 and 2014 by a Lisbon System working group with the goal of attracting a wider membership to the System, while preserving its principles and objectives.

The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration was originally concluded in 1958.

Posted by: Jeremy Phillips @ 08.22
Tags: Lisbon Conference, GIs,
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MARQUES at the Lisbon Agreement Conference: Meeting in Plenary for the Adoption of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications

Continuing our coverage of the Lisbon Agrement Conference, Keri Johnston, Vice Chair of the MARQUES Geographical Indications has reported:

Chaired by Ambassador Chavez or Peru. The live meeting is currently being webcast on WIPO under the Calendar item relating to the Diplomatic Conference.

Posted by: Jeremy Phillips @ 14.48
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MARQUES at the Lisbon Agreement Conference: New Act and the Regulations in LI/DC/14 and LI/DC/15 to be recommended to the Plenary

Continuing our coverage of the Lisbon Agrement Conference, Keri Johnston, Vice Chair of the MARQUES Geographical Indications Team has just informed us that Articles 1 to 20 and the Regulations will go to the plenary this afternoon.

"By consensus of the Member Delegations present and voting Articles 1 to 20 and the Regulations will go to the plenary at 3:30 PM today. Articles 21 to 31 remain for Main Committee II to review."

Posted by: Jeremy Phillips @ 12.00
Tags: Lisbon Conference, GIs,
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Vienna: city of brands, dreams and cake

This year's MARQUES Conference -- the 29th -- takes place on 15 to 18 September in the lovely old city of Vienna, famous for, well, lots of things really.  On the right you can see a slice of Sachertorte from the Hotel Sacher, an indigenous delicacy which, so far as this blogger can tell, has been the subject of considerable legal dispute (for details take a quick look at the cake's Wikipedia entry, under Legal Issues).

The theme of the 29th MARQUES Annual Conference is "Mind the Brand? Mind the Brand! Psychology of Brands". Many of the sessions will address different aspects of this question, focusing on the legal issues and challenges of brand psychology. The conference will include discussions on issues such as advertising on the internet, the implementation of the new EC Customs regulation in 2014, as well as updates on OHIM, WIPO and European CEU Case Law.

Vienna is the capital city of Austria with a population of approximately 1,800,000. The city is host to many major international organizations, including the United Nations and OPEC and in 2001, the city centre was designated a UNESCO World Heritage Site. The city lies in the east of Austria and is close to the borders of the Czech Republic, Slovakia, and Hungary. These regions work together in a European Centrope border region. Apart from being regarded as the "City of Music" because of its musical legacy, Vienna is also said to be “The City of Dreams” because it was home to the world’s first psycho-analyst – Sigmund Freud (left). 

Book before 3 July 2015 and you can take advantage of the Members Early Bird offer (if you are not a member you can apply for membership at the same time as registering and take advantage of this offer).  Just click here for registration and other details.

Posted by: Jeremy Phillips @ 09.10
Tags: MARQUES Conference 2015,
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