General Court: Shape of a games box rejected as 3D trade mark

In Case T‑547/13, the General Court upheld the OHIM's decision rejecting the following 3D trade mark application by  Rosian Express SRL for Class 28: ‘Games, toys;' and allowing it on the register for 'gymnastic and sporting articles not found in other classes; decorations for Christmas trees’ and Class 35: ‘Advertising; business management; business administration; clerical services’.

Image not found

The Board of Appeal rightly found that the relevant public consisted of average, reasonably well-informed and reasonably observant and circumspect consumers and that, having regard to the nature and the price of the goods at issue, the degree of knowledge of the relevant public could vary from average to high.. The goods at issue, having regard to their description, fall within the category of games and toys. They are intended for general consumption and not only for professionals or enthusiasts since anyone is likely, at some time or another, to acquire such goods either regularly or occasionally.

Having regard to that description, the Board of Appeal was fully entitled to find, that the mark applied for ‘does not depart significantly from the norms or customs of the sector’ and that ‘it is common for parlour games and toys (for example the toy version of the game rummy for children) to be packaged and sold in packaging made from different types of material including wooden boxes’.

Similarly, the way of unfolding and assembling the box the shape of which constitutes the mark in question, namely by a system of sliding racks allowing the game to be put away or to be assembled, does not depart significantly from the norms or customs of the sector. It is well-known that similar sliding systems exist to enable the goods at issue to be put away and to be assembled.

 Seen as a whole the different characteristics of the mark applied for, likewise do not enable the mark applied for to be considered as differing significantly from the norms and customs of the sector.

Within the meaning of Article 7(1)(b) of Regulation No 207/2009, the mark applied for is not distinctive allowing the relevant public to identify the goods at issue as originating from a specific undertaking and, therefore, to distinguish those goods from those coming from other undertakings. 

Posted by: Laetitia Lagarde @ 18.27
Tags: General court, toy, 3D trademark,
0 Comments    Post a comment
Inherent distinctiveness of figurative marks containing descriptive or non-distinctive words: guidance from ETMDN

MARQUES's good friends at the European Trade Mark and Design Network (ETMDN) have published a communication on the common practice for use when assessing the inherent distinctiveness of figurative trade marks containing descriptive or non-distinctive words.  You can check out the new communication here.

By the way, if you have not encountered it before, the ETMDN is an initiative to reduce differences in practices between the national offices and the Office for Harmonisation in the Internal Market (OHIM). Although it is not immediately legally binding, it does reflect the extent to which a common understanding exists as to what the law is and how in practice it should be applied.

Posted by: Jeremy Phillips @ 08.24
Tags: Common communication, ETMDN,
0 Comments    Post a comment
Expo Milan GI event: now you can access all the materials

"A common control culture for geographical indications: a multi-level and multidisciplinary approach, best practice, public and private enforcement and the help of science" is the very grand and, if one might add without intending to be rude, very long title of a one day event held on 1 October under the auspices of Expo Milano.

By way of explanation, within the framework of EXPO Milano, the Directorate General for Agriculture and Rural Development of the European Commission (DG AGRI) put together a seminar with the objective "to stimulate a flow of ideas how fraud and infringements are detected and prevented on the ground: at production level, in the market place or at ports of entry into Europe".

If you're interested -- and who isn't! -- you can check out all of the presentations on the event's website here.

Posted by: Jeremy Phillips @ 23.01
Tags: Expo Milan, GIs,
0 Comments    Post a comment
General Court: IceExpresso + Energycoffee v. Monster Expresso + Energy does not equal confusion

In Case T‑61/14, the General Court upheld  the following opposition

Mr Luis Yus Balaguer (Spain)

Monster Energy Company (USA) -earlier CTM's

Image not found




Class 9: ‘Coin-operated vending machines’;

Class 30: ‘Coffee-based beverages; Coffee mixtures for the manufacture of alcoholic beverages or non-alcoholic drinks, ice’;

Class 32: ‘Non alcoholic beverages including refreshing drinks, Energy drinks, Whey drinks, isotonic beverages; Beers, mineral and aerated waters; Syrups and other preparations for making beverages’;

Class 35: ‘Wholesaling, retailing in shops and via global computer networks of beverages based on coffee, tea, etc, wholesaling and sale via global computer networks of vending machines’.

Class 5: ‘Nutritional supplements’;

Class 32: ‘Non-alcoholic beverages, including, energy drinks flavoured with coffee and enhanced with vitamins, minerals, nutrients, amino acids and/or herbs, excluding perishable beverage products that contain fruit juice or soy’

Both the OD and the BoA of OHIM found that there was no likelihood of confusion.

As a preliminary matter, the assessments regarding the earlier mark registered under number 8815748 applied equally to the earlier mark registered under number 8815722 as they had an identical composition to the latter except for the element ‘hammer’ which replaces the element ‘midnight.

Primarily, the relevant public is the average consumer in the EU, who is reasonably well informed and reasonably observant and circumspect, and whose level of attention is neither particularly high nor particularly low.

Secondly, certain word elements of the signs at issue, since they are descriptive of some of the goods and services at issue, have a weak distinctive character, so that they would not attract the attention of the consumer as much as other more distinctive elements, namely the words ‘expresso’, ‘x-presso’, ‘espresso’ and ‘coffee’, which refer to a kind of coffee-based beverage, designated in Classes 30 and 32, and, on the other hand, the expressions ‘espresso energy’ and ‘energy coffee’, which refer to energy beverages and are descriptive of the goods and services falling within Class 9 and Class 35, which concern, in particular, that type of beverage.

As regards the visual comparison between the signs at issue, that there was no visual similarity between the mark applied for and the earlier marks registered under numbers 8815748 and 8815722, and there was a low degree of similarity between the mark applied for and the earlier mark registered under number 8445711.

As regards the phonetic comparison between the signs at issue, there is a low degree of phonetic similarity/

As regards the conceptual comparison, for a part of the relevant public, there is a conceptual similarity in so far as the signs at issue refer to the idea of a coffee-based beverage, of the espresso type, that gives energy, and, on the other hand, for the remainder of the public, who does not perceive any clear semantic meaning from those signs, the conceptual comparison remained neutral.

In conclusion,  since the common elements between the signs at issue are descriptive and therefore of low distinctiveness, those signs have a low degree of similarity, and even assuming the goods and services at issue are identical, there is no likelihood of confusion.

Posted by: Laetitia Lagarde @ 18.12
Tags: General court, expresso, monster,
0 Comments    Post a comment
Vienna resource pack now available

If you had the good fortune to attend this year's Vienna Conference of MARQUES, you will be delighted to know that the resource pack, containing all the relevant and necessary materials, is now available from MARQUES if you click here. You have to have registered, though, since there's a login procedure ...

Apart from all the serious stuff, there are plenty of photos for you to browse, plus a sneak preview of next year's conference venue, in lovely sunny Alicante.

Posted by: Jeremy Phillips @ 14.17
Tags: Vienna Conference resource pack,
0 Comments    Post a comment
WIPO roves to Spain: here come three special seminars

Don't be all at sea! Come to a Roving Seminar and sail away with gems of IP information

We have recently heard from our goods friends at the World Intellectual Property Organization (WIPO) that the next batch of Roving Seminars on WIPO services will soon be taking place. This time round, the WIPO team is heading to Valencia, Barcelona, and Zaragoza on 20, 21 and 22 October respectively.  

In accordance with WIPO's time-honoured practice, there is no charge for registering or attending; indeed, even the coffee and lunch are absolutely free. to facilitate opportunities for networking -- which are also free.

In putting on this instructive and enjoyable event WIPO will be aided and abetted by the Spanish Patent and Trade Mark Office (OEPM), as well as the Spanish Group of the International Association for the Protection of Intellectual Property (AIPPI) and local business representatives.

This event will be in Spanish only, but you can practise other languages on the multilingual WIPO presenters during the networking breaks.

Details of the seminar’s programme and registration can be found on the WIPO website here, so the best advice we can give you is:

Don't hesitate

Posted by: Jeremy Phillips @ 14.13
Tags: WIPO Roving Seminar, Spain,
0 Comments    Post a comment
General Court: Darjeeling (lingerie) held to take unfair advantage of the reputation of Darjeeling tea

Today the General Court issued 4 judgments related to the rights over "Darjeeling"  (see here cases T-624/13, T 625/13, T-626/13  and T-627/13)

Applicant - Delta Lingerie (France)

The Tea Board (India)- earlier CTM's

1) Image not found



Image not found

3)Image not found


4)Image not found






2)Image not found

Classes 25, 35 and 38 including Women’s undergarments and day and night lingerie and related retail services"

Class 30 tea

The Opposition Division and the BoA rejected the opposition on the ground that, first, regarding the application of Article 8(1) CTMR, the goods and services covered by the signs at issue were dissimilar and, second, regarding the application of Article 8(5) of that regulation, the evidence provided by the applicant was insufficient to establish that the earlier Community collective marks had a reputation with the relevant public.

The Tea Board successfully appealed to the Court.

The GC firstly dismissed the appellant's claim that the Board of Appeal had failed, in its global assessment of the likelihood of confusion to take into account the actual or potential geographical origin of the goods or services covered by the signs at issue.

However, the GC upheld the claim regarding Article 8(5) CTMR : in light  of the fact that the hypothetical premiss on which the contested decision is based refers to a reputation of exceptional strength,  sothe positive qualities evoked by the word element ‘darjeeling’ shared by the signs at issue are capable of being transferred to some of the goods and services covered by the mark applied for and, as a result, of strengthening the power of attraction of that mark.

So far as the goods in Class 25, the mark applied for is capable of benefiting from the positive qualities conveyed by the earlier trade marks and, more specifically, the image of sophistication or exotic sensuality conveyed by the word element ‘darjeeling’. A risk of an unfair advantage cannot therefore be ruled out in the present case in respect of the goods in Class 25 covered by the mark applied for.

Therefore the Court annulled the contested decision in that regard and  Class 35  services‘[r]etailing of women’s underwear and lingerie, perfumes, toilet water and cosmetic lotions, household and bath linen’.

Posted by: Laetitia Lagarde @ 13.37
Tags: general court, darjeeling, tea, lingerie, opposition,
0 Comments    Post a comment