Communications on final texts of EU trade mark legislation now out

Last week our friends at the European Commission issued Communications commenting on the first reading position of the Council of the European Union on the adoption of the recast Trade Marks Directive and the new Community Trade Mark Regulation under what it calls the ordinary legislative procedure.

For those of you who are either still either citing Regulation 40/94 or dreaming of it, please remember that the new Regulation will be amending Regulation 207/2009 -- which repealed and re-enacted it.  -- as well as the Implementing Regulation (2868/95). The Community Trade Mark Fees Regulation will go too. 

The Communications say that a plenary vote of the European Parliament is expected for mid-December 2015, leading to the final adoption of the texts following a formal second reading [how lucky are Europe's Parliamentarians, who only have to read the new law twice.  Some of us will be reading it again and again, for many years to come!] in which no further amendments are likely.

The following documents may be useful if you want to pursue the new law further:

Communication COM (2015) 588

Communication COM (2015) 589

Council's position on the new Regulation (202 pages)

Council's position on the new Directive (70 pages)

Posted by: Blog Administrator @ 17.12
Tags: trade mark reform,
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Moldova trade mark data now in WIPO database

The World Intellectual Property Organization (WIPO) Global Brand Database has been growing again. According to WIPO, the addition of Moldova, together with the Republic of Korea, brings to 26 the number of national offices with available data.

In case you didn't know, the database has

over 24,610,000 records relating to internationally protected trademarks, appellations of origin and armorial bearings, flags and other state emblems as well as the names, abbreviations and emblems of intergovernmental organizations.

The Global Brand database allows free of charge, simultaneous, brand-related searches across multiple collections.

But you knew that, didn't you! And you probably knew that you can search for images there too ...

Posted by: Blog Administrator @ 08.34
Tags: Moldova, WIPO, Global Brands Database,
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General Court: MeetMe rejected on absolute grounds

In Case T-190/15, Intervog  filed for the following CTM

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for the following goods and services in Class 9: 'Computer software and computer programs; application software for mobile phones and the Internet; Software used as an application programming interface (API) for software facilitating online services for social networking, the development of social networking applications; downloadable software in the form of mobile applications for viewing and sharing geographic position of a user and to search and locate other users and sites and interact with them "; Class 38: "Providing access to a global computer network; providing access to databases; Internet communications network; providing access to electronic databases, and online computer, telecommunication services, namely electronic transmission of data, messages and information; providing online communications forums on topics of general interest; facilitating access to third party websites via a universal login; providing discussion forums and electronic bulletin boards online; providing an online network service that enables users to transfer personal identity data and share personal identity data with and on several websites; providing access to computer databases in the fields of social networking "; Class 45: 'Personal and social services assistance to individuals intended to constitute, manage and expand their own social network."

OHIM and the General Court rejected the mark on the grounds that it lacks distinctive character according to 7 (1) b) CTMR.

In this case, the message conveyed by the mark is simple, banal promotional message, so that the relevant public would not be likely to perceive, over and beyond the promotional information that the goods and services in question facilitated the meeting between consumers through IT tools, any indication of the commercial origin of those goods and services.

The other elements of the mark, namely the blue sky, chosen calligraphy, the inversion of the letter "e" in the heart of the sign or lack of space between the word elements were not sufficient to confer distinctive character of the sign. Indeed, those characteristics were not likely to give it an original character or to initiate in the relevant public in a cognitive process or an effort of interpretation or an effort of reflection that would make this brand, in the perception of the relevant public, other than a mere promotional formula highlighting the qualities of products and services in question. 

Posted by: Laetitia Lagarde @ 18.27
Tags: Meet me, General court, absolute grounds,
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December ETMR now published

The December 2015 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.  

The ETMR usually contains reports on several decisions. This issue contains four cases, including the following:
* KitKat 3D shape, a Court of Justice of the European Union ruling on a controversial and much-publicised dispute as to the distinctiveness, functionality and registrability of one of the world's better-known confectionery shapes.
* Champagne Louis Roederer v J Garcia Carrion SA, Asda Stores Ltd and Wm Morrison Supermarkets Plc, a ruling of the Chancery Division of the High Court, England and Wales, in an infringement action brought by the owner of the CRISTAL UK and Community trade marks in respect of the sale of CRISTALINO JAUME SERRA wines.
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: Blog Administrator @ 21.13
Tags: ETMR,
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Meet the Judges, in Munich (Conference Report)

On Friday 20 November, German trade mark enthusiasts gathered for the MARQUES event "Expert Talks with Judges of the German Trade Mark Courts" (Expertengespräch mit Richtern der Deutschen Markengerichte), which took place at the offices of the German Patent and Trade Mark Office (GPTO) in Munich. The event was organised in cooperation with the GPTO as well as the German Brand Association. It started off with warm welcoming speeches by Cornelia Rudloff-Schäffer (of the GPTO), Dr. Alexander Dröge (German Brand Association) and Dr. Uwe Over (Chair, MARQUES).

In this Blogger’s view, the highlight of the day followed shortly afterwards: Dr. Andreas Lubberger (Lubberger Lehment) grabbed everyone’s attention with a thought-provoking presentation. He analysed some of the ways in which recent insights gained from behavioural science and other fields of research could challenge the ‘general principles derived from common experience’ that trade mark judges frequently rely upon. Dr. Lubberger astonished the audience with several findings that were more than just slightly counter-intuitive. For instance, the audience learned that the visual sense accounts for 60 – 90 % of the overall perception of our surroundings. Nonetheless, humans are generally not very well equipped when it comes to visual perception, said Dr. Lubberger. We are, by way of example, only able to see completely focussed within a two-degree angle of our field of view. In addition, shapes are much easier to be recognised by humans than colours, which in turn are easier to be recognised than writing. Subsequently, Dr. Lubberger gave impressive examples that showed how the human mind automatically supplements missing pieces of visual information in order to create a more meaningful picture.

In light of these and other findings, Dr. Lubberger then looked at the above-mentioned principles derived from so-called common experience. He asked the audience whether or not they (still) agreed with some of the principles that are generally accepted in trade mark law. One of the principles under scrutiny was that consumers allegedly pay more attention to the beginning of a word (mark) than to its ending. Dr. Lubberger showed evidence suggesting that human beings do not focus on the beginning of words but rather recognise words by their beginning and ending. It appeared that the letters in the middle of a word can be switched or altered without lowering the word’s recognisability. As with many other principles, the audience’s vote on the soundness of this principle was split.

Next up was Prof. Dr. Dr. Joachim Bornkamm (Former Presiding Judge of the German Federal Supreme Court), who stressed that the ‘general principles derived from common experience’ had a normative side to them. He explained that German judges understand the perception of a trade mark by the average consumer as a question in law and that the general principles are one of the means judges use to make a prognostic assessment. Prof. Bornkamm then discussed the key points that parties can challenge if a judge relies upon a general principle.

The third presentation was given by Mr. Christoph Bartos (OHIM), who explained the prerequisites for the substantiation of a non-registered trade mark within the meaning of Art. 8(4) CTM Regulation. Afterwards, Prof. Dr. Olaf Sosnitza (University of Würzburg) examined whether or not a particular type of trade mark (e.g., a word mark) could give rise to a likelihood of confusion with a completely different type of trade mark (e.g., a 3D mark). The talk also provided an in-depth analysis of the Goldbear decision of the German Federal Supreme Court (reported here).

Next up was Mr. Lars Meinhard (Presiding Judge of the District Court of Munich), who presented and critically analysed recent decisions of the German Federal Supreme Court on 3D marks and colour marks (such as the decision Yellow Dictionaries, reported here). And finally, Ms. Johanna Brückner-Hoffmann (Presiding Judge at the District Court of Düsseldorf) gave an interesting talk on the potential conflicts between copyright, trade mark, design and unfair competition law.

Throughout the day, several open floor discussions were led by Dr. Uwe Over (Chair, MARQUES), Dr. Karsten Fischer (Tui) and Dr. Gregor Versondert (Vice-Chairperson MARQUES) respectively. Moreover, Till Lampel (Harmsen Utescher) and Dr. Martin Viefhues (Jonas) also introduced some of the speakers and co-chaired the discussions. Unfortunately, Prof. Dr. Franz Hacker (Presiding Judge of the German Federal Patent Court), who was supposed to talk on the current differences between German and European case law, was unable to attend the event.

Late in the afternoon, the event came to a close with the farewell speech of Barbara Preißner (GPTO), who eloquently summed up what surely was the general consensus among the audience, namely that the well-rounded presentations and lively discussions had been truly inspiring and will give all participants plenty to reflect upon for some time to come.

Posted by: Christian Tenkhoff @ 21.04
Tags: Meet the Judges, Germany, Munich, behavioural science, conference report, GPTO,
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General Court: Mustang (tobacco) v Mustang (clothing)

In Case T- 606/13, the General Court dismissed the appeal against the following opposition brought on the basis of Article 8(5) CTMR.

Dubek Ltd. (Israel) - Contested CTM

Mustang – Bekleidungswerke GmbH & Co. KG- earlier German trade marks

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'cigarettes, raw and manufactured tobacco, smoking accessories, lighters and matches; all the aforesaid goods included in class 34' in Class 34

classes 9, 14, 18 et 25 including among others,  'clothing, leather bags, jewellery, sunglasses' etc


The Board of Appeal rejected the opposition holding that the opponent had not provided evidence that the negative image of the tobacco industry would undermine the reputation of the clothes sold under the earlier word mark; the evidence submitted did not permit to demonstrate the knowledge of the earlier figurative mark. The General Court confirmed those findings.

First, regarding the reputation, even if the earlier word mark MUSTANG is known to the German public for clothes, the evidence submitted did not allow to conclude that the knowledge of this brand in Germany was "excellent" or highly exceptional. It is clear from the documents provided that, for a period of 17 years, said mark had enjoyed awaraness constantly above 80%. Further, the investigation spring "Outfit" 2007 showed that out of about 250 brands of clothing, only 7 had a higher degree of awareness to his. However, the lack of data on the opponent's market share in a market which, by the admission of the latter, has a large number of operators, contributes, in this case, to the insufficiency of the evidence to demonstrate 'excellent' fame in the earlier word mark.  Moreover, it is undisputed that the "Outfit" investigations relate to marks containing the word element 'mustang' without the galloping horse of the earlier figurative mark. If the galloping horse is not negligible in the composition of the earlier figurative mark, this circumstance does not exempt the opponent from its obligation to demonstrate the repute of that mark with the relevant public. Studies and advertisements in magazines produced as evidence during the proceedings before OHIM did not refer to the earlier figurative mark as such. References to the similar earlier figurative mark Image not foundin some ads produced during the proceedings before OHIM are not sufficient to prove its reputation.

Second, regarding the similarity of the marks in question, despite the differences present in the overall visual impression, the similarity of the signs was generally above average because of the visual similarities and phonetic identity as well as the conceptual identity.

Third, the opponent had not proved that its mark had a reputation so exceptionally high that the probability of a link with any other product is so obvious that no further evidence would be necessary. Mustang claimed that there would be 'Brand-Stretching' or some Image transfer, which is a common indirect form of advertising used by tobacco manufacturers like Marlboro and Camel to circumvent advertising restrictions which cigarettes are subject to. For example, Marlboro and Camel have used their cigarette brand image to promote garments, which then benefit the brand of cigarettes. The opponent further stated that the relevant public is aware that companies with well-known brands granting licenses for a wide variety of products, such as Davidoff and Dunhill brands. In that respect, the Board of Appeal had considered that, because of the restrictions on tobacco advertising, in the perception of the target consumer, tobacco use is no longer tied to a certain dress style or a life attitude expressed through some clothes, so there would be no "image transfer" between the two relevant product groups.Back in the days when cigarettes was synonym of cowboy attitude

Moreover, the Court held that even if it were to be considered well known that the holders of Marlboro and Camel cigarette brands have been selling clothes under these brands, that would not suffice to establish that the general consumer sees it a general practice. In addition, the opponent acknowledges in its brief that it is not common for clothing manufacturers to grant licenses for cigarettes. Therefore, contrary to what the opponent claimed, the Board of Appeal correctly considered there was no specific link between the goods in question.

In addition, Mustang GmbH has not provided evidence of its claim regarding the negative image of the tobacco industry and its impact among clothing buyers. The evidence filed by the opponent consisting, among others, of a study by "Reader's Digest Europe Health 2005" was not indicative of the perception of brands of cigarettes and tobacco to clothing buyers. While it is scientifically proven that smoking is injurious to health and it is known that, in Germany, tobacco is now associated with something bad for health, it does not result automatically in weakening the fame for goods from clothing sector products that are associated with a tobacco brand.

Lastly, the opponent quoted the example of the Davidoff brand, which, although originally a tobacco brand would now perhaps be more associated with the perfume.  In that regard, the Court held that the fact that a brand like Davidoff, which is a trademark for tobacco-based products, has been used for other products, such as perfume, and it can also be associated with these other products by consumers is an indication that the harmfulness of tobacco does not automatically lead to the loss of attraction for consumers of a brand associated with tobacco products when used for other products.

Consequently, the opponent has not put forward sufficient evidence to conclude a serious risk that damages the reputation of its earlier word mark will occur in the future due to the registration of the contested CTM.



For cases where cigarette brands tried to enforce their rigths and were the opponents, see Japan Tobacco / Torrefaccao Camela (30.1.2008 / T-128/06 and 30.4.2009 – C-136/08) and Davidoff / Gofkid (DURFFEE) (ECJ 9.1.2003 – C-292/00)

Posted by: Laetitia Lagarde @ 14.21
Tags: General court, mustang, tobacco, reputation, clothes,
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Trade marks and social media: a new book

Trademarks and Social Media: Towards Algorithmic Justice is a new book by Danny Friedmann (Faculty of Law, The Chinese University of Hong Kong).  What is this book about?  The website explains:

Legal conflicts between trade mark holders, social media providers and internet users have become manifest in light of wide scale, unauthorised use of the trade mark logo on social media in recent decades. Arguing for the protection of the trade mark logo against unauthorised use in a commercial environment, this book explores why protection enforcement should be made automatic. A number of issues are discussed including the scalability of litigation on a case-by-case basis, and whether safe harbour provisions for online service providers should be substituted for strict liability.

Although it is not immediately apparent, this fascinating and enjoyable book draws on a good deal of European Community and national material. You can check out this book's details on the Edward Elgar website here.

Posted by: Blog Administrator @ 09.58
Tags: book notice,
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