FRIDAY, 19 DECEMBER 2014
General Court: Biocert v Biocef

In case T-605/11, the General Court dealt with the following opposition

Dr Organic Ltd

Novartis

BIOCERT

BIOCEF

Dietary substances and preparations; medicinal health care products; food supplements for dietetic use; nutritional supplements for human beings; vitamins; minerals (nutritional supplements); amino acids (nutritional supplements); plants and herbs for medical or veterinary purposes; herbal preparations for medicinal use; animal and plant extracts, including oils, for medical or veterinary purposes; chemical preparations for medical or veterinary use; naturopathic and homeopathic preparations; tonics; mineral food additives; mineral drinks; vitamin drinks; nutrients and nutriments; medical sprays, patches and other topical formulations; medicated skin care preparations; pharmaceutical preparations and substances; anti-rheumatism belts; bandages, plasters, dressings and wraps; massage and body wraps; oxygen baths; mud for baths; medicinal mud; medicinal oils; thermal water; mineral water salts; eye washes; medicated mouthwashes; slimming preparations; antiseptics; disinfectants; detergents for medical purposes; sanitary preparations; liquid food supplements’ in Class 5

‘pharmaceutical preparations’ in Class 5

OHIM, as confirmed by the GC, found that the goods covered by the marks are either identical or similar; the relevant public is made up of professionals from the medical and pharmaceutical fields and general end consumers in Austria, who demonstrate a heightened degree of attentiveness as regards pharmaceuticals;  the two marks contain the word ‘bio’, a common abbreviation in German of the word ‘biological’ and thus having a descriptive meaning. Consumers’ attention accordingly focuses on the elements ‘cert’ and ‘cef’. Being a descriptive element, ‘bio’ is insufficient for establishing a conceptual similarity between the marks at issue; in view of the average distinctiveness of the BIOCEF mark, the low visual and phonetic similarities between the signs at issue and the heightened degree of attentiveness of the relevant public, there is no likelihood of confusion, even in respect of identical goods.

The General Court annulled the decision of the 4th BoA, recalling first that the assessment of the similarity between two marks cannot be confined to taking one sole component of a complex mark and comparing it with another mark, but that a comparison must be carried out wherein each of the marks in question is examined as a whole. Furthermore, finding of a likelihood of confusion in the present case would not grant the applicant a monopoly on the element ‘bio’, given that the existence of a likelihood of confusion leads solely to the protection of a certain combination of elements without, however, protecting as such a descriptive element forming part of that combination (see Industrias Alen v The Clorox Company)

the visual and phonetic similarities between the marks at issue do not arise only from the presence of the element ‘bio’ in the marks at issue, but also from the almost identical length of the signs and the fact that their first five letters match. In addition, the same letters appear in the initial part of each of those marks.

Thus, given the identical or similar nature of the products, the average degree of distinctiveness of the earlier mark as a whole, it is must be held that there is a likelihood of confusion between the marks at issue, even if the public has an heightened level of attention.

Posted by: Laetitia Lagarde @ 16.34
Tags: General Court, biocert, biocef, pharmaceutical ,
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THURSDAY, 18 DECEMBER 2014
EU trade mark reform: Trilogue takes a break

MARQUES has learned that a Joint Statement has been released by the European Parliament negotiating team and the Italian Presidency of the Council with regard to the keenly-anticipated trade marks package, to inform us of the decision of the co-legislators to postpone the holding of the final Trilogue which was supposed to have taken place on Tuesday 16 December. The full text of the official communication, which was released by the Italian Presidency’s representative Peronaci and the European Parliament MEP Cecilia Wikström, can be accessed here.

MARQUES has been heavily involved in the process of reshaping Europe's trade mark law,as you can see visiting the mini-website of the MARQUES EU Trade Mark Law Reform Task Force, spearheaded by Tove Graulund, here.

Work on improving Europe's trade mark system will resume in January.

Posted by: Jeremy Phillips @ 18.02
Tags: Trilogue, EU trade mark reform,
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TUESDAY, 16 DECEMBER 2014
General Court: Generia v Generalia (fig)

In Case T-176/13, (Judgment 9 December 2014) the General Court had to review the following opposition:

 DTL Corporación

Vallejo Rosell

Generia

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classes 9, 35, 37 y 40 a 42 for goods and services related among others to pholtovoltaic systems and solar cells

classes 7, 35 y 40 for renewable Energy goods and services

OHIM, as confirmed by the General Court, found that there was  a likelihood of confusion existed for all the products and services, with the exception of "opinion polls; information and business advice to consumers; support, consulting and management consulting and business organization and business; business information; business management; business administration; business research; commercial information agencies; expertise in commercial business; trade estimates; commercial administration of the products and services of third parties licenses; efficiency experts services; office functions; provision of business products and services; accounting; Analysis of cost; economic forecasts; compilation of statistics; compilation of information into computer databases "in Class 35.

In particular, it found that the products and services, with the exception of those services above, covered by the trade mark had at least a small degree of similarity to the goods and services covered by the earlier mark. In addition, the contested CTM had a similarity with  the earlier trade mark the general impression was dominated by the element 'generalia ". Thus, there was a likelihood of confusion between the conflicting signs, on the basis of Article 8 paragraph 1 b) CTMR.

Posted by: Laetitia Lagarde @ 16.03
Tags: General Court: Generia v. Generalia,
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MONDAY, 15 DECEMBER 2014
OMINTAKEINEN MAKEINEN: overcoming trouble with word play registration in the confectionery field

As Christmas is approaching, there is always room for another candy themed trade mark registration case. The Finnish Trade Mark Office originally rejected an application by Oy Panda Ab for the trade mark OMINTAKEINEN MAKEINEN for the class headings in class 30 based on the fact that the mark lacked distinctiveness. The word “omintakeinen” in Finnish refers to something that is unique or original and “makeinen” in Finnish refers to confectionery. The words rhyme together quite nicely and thus create a wordplay or slogan that Oy Panda Ab wished to register.

The Office found that the trade mark OMINTAKEINEN MAKEINEN referred to an original, individual and peculiar product of sugar, cocoa or other such ingredient molded into a firm form and was therefore descriptive for sweets and sweet-like products such as pastries, sweets and ice cream. The Office also considered that the mark lacked distinctiveness for other products included in the application as they may also include sweetness of sweet things that can be regarded as unique. All in all the Office stated that the trade mark indicated the type, quality and purpose of use for the goods in question.

The Board of Appeal of the Finnish Trade Mark Office dismissed Oy Panda Ab’s appeal and stated that the material the applicant provided did not prove that the mark would have been used widely enough and for long enough to have acquired distinctiveness.

The Supreme Administrative Court, however, took a different stand in this issue and reversed both the decisions below, remitting the trade mark OMINTAKEINEN MAKEINEN to the Office for registration.

The Court stated that class 30 contains different kinds of groceries out of which for sweets the generic word “makeinen” is clearly not distinctive. However the word “omintakeinen” is different. It does not describe any sweets or any other goods in class 30 and is merely suggestive. Additionally it is used creatively in the marketing and it is not common to use the word for the marketing of such products. The applicant had referred to similar accepted registrations such as VIISASTEN TEE (in Finnish “tea of the wise”) and MAINIO MAKEINEN (in Finnish “splendid candy”). The court stated that the trade mark OMINTAKEINEN MAKEINEN takes the role of wordplay and is thus more than just a describer and advertising phrase for the goods in question. Based on these views, and on the report of the use of the mark as a slogan submitted by the applicant, the trade mark OMINTAKEINEN MAKEINEN (registration number 259789) was considered to be distinctive and thus registrable.

This item has been kindly prepared for Class 46 by Tiina Komppa (Roschier, Finland)

Posted by: Jeremy Phillips @ 01.07
Tags: Finland, registrability, descriptiveness, wordplay,
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SUNDAY, 14 DECEMBER 2014
General Court does not 'rehabilitate' Monster's CTM application

The Monster Energy Company sought to register the word sign 'REHABILITATE' as a CTM for the following goods:

  • 'Nutritional supplement' in Class 5
  • 'Ready to drink tea, iced tea and tea-based beverages; ready to drink flavoured tea, iced tea and tea-based beverages' in Class 30
  • 'Non-alcoholic beverages' in Class 32

The examiner rejected the CTM application on the grounds that the sign was descriptive of the goods at issue and devoid of any distinctive character. A decision that has been upheld first by the Board of Appeal and now by the General Court.

The Court agreed with the applicant that one of the meanings of 'rehabilitate' was that of 'a recovery process requiring human intervention, which occurs through training and therapy, and not by means of food or drink'. However, the term 'rehabilitate' could also mean 'to bring a person back to a good state of health or to enable him to return to a good physical condition', which was something that the goods at issue were supposed to do. In this regard, it was confirmed that a sign had to be refused registration if at least one of its possible meanings designated a characteristic of the goods concerned.

Further, the sign applied for was held to contain obvious and direct information on the purpose of the relevant goods. The relevant public would, consequently, understand without further reflection that the goods at issue could help them to return to a good or healthy condition.

Referring to the Wrigley decision, the Court did not find it necessary that the word 'rehabilitate' actually was in use at the time of the application in a way that was descriptive of the goods applied for. It was deemed sufficient that the term could be used for such purposes.

A well-reasoned decision, which illustrates the difficulties that companies are likely to face when seeking trade mark protection for a suggestive brand name, irrespective of the obvious benefits such a designation may have from a marketing perspective.

Reference: General Court, Decision of 11 December 2014 in Case T-712/13.

Posted by: Christian Tenkhoff @ 20.18
Tags: CTM; Absolute Grounds; Descriptiveness; Rehabilitate,
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THURSDAY, 11 DECEMBER 2014
Life in General Court is like a box of chocolates

In case T-440/13 "Millano" Krzysztof Kotas had applied for the following 3D mark  for Class 30 “box of chocolates”

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OHIM and the General Court rejected the mark because it does not significantly diverge from the norms of the sector.
As the Board of Appeal noted, it is common knowledge that the simplified geometric forms are generally used as forms for chocolate products and, therefore, the cubes/squares that are a feature of the mark do not diverge significantly from the norm or customs of the sector. Regarding the element which represents a mould or a tin,  the Board of Appeal rightly found that it is a usual mode of presentation of a set number of chocolate squares and the presentation of chocolates in a medium with extruded hollow to accommodate them, in three parallel rows of six chocolates, was mundane and ordinary. In its overall assessment of the mark, the Board of Appeal correctly concluded the lack of distinctiveness.

Therefore, the applied for CTM lacks distinctive character according to Article 7 (1) b) CTMR and the applicant did not bring forward any evidence to the contrary, for example that no other chocolates producers make boxes with such shape for their goods. 

Posted by: Laetitia Lagarde @ 11.01
Tags: general court, absolute grounds, box, chocolates,
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TUESDAY, 9 DECEMBER 2014
General Court: Valdasaar v. Val d'azur

In Case T-519/13, the General Court reviewed the following op position:

Leder & Schuh International AG (Austria)- contested CTM

Valerie Epple (Germany) –earlier CTM

VALDASAAR

VAL D’AZUR

Classes 25 and 35 including various types of footwear and retail services for footwear, jewelry, purses, etc

Class 25 ‘clothing, footwear, headwear”

 The Opposition Division upheld the opposition for all the goods in Class 25 and most of the services in Class 35.

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The Board of Appeal annulled the OD’s decision as far as the services are concerned in Class 35.However the BoA confirmed there was a risk of confusion for the goods in Class 25 finding  them identical. 

As to the similarity of the signs, those signs have a certain similarity visually and a degree of similarity using phonetics. It is impossible to make a comparison conceptually  in the EU or it will be different for the French public: the contested CTM is an arbitrary word and the earlier mark will evoke the French Riviera (“côte d’azur”) or "blue azure valley" only to the French-speaking consumer. As regards the distinctive character, the Board of Appeal held that the distinctive character of the earlier mark was average, since the term "val d’azur ‘ was devoid of descriptive meaning in relation to the products concerned.

Given the identical nature of the goods in question and the degree of similarity between the conflicting signs, there was a risk of confusion.

Posted by: Laetitia Lagarde @ 16.24
Tags: General Court, likelihood of confusion, Valdasaar ,
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