WEDNESDAY, 29 OCTOBER 2014
VASILKA: occasional work by employee not genuine use

On 25 July the Bulgarian Supreme Administrative Court ruled in a case on whether the services rendered by the employee of a cleaning service company, which fell outside the scope of her main duties, amounted to genuine use of her employer’s trade mark.

The dispute involved the genuine use of the cleaning company’s VASILKA trade mark for "office functions" in Class 35. According to the Sofia City Administrative Court, the trade mark had not been sufficiently used by its owner and its registration was thus subject to revocation, as the Bulgarian Patent Office had previously decided. The company appealed, claiming that the services in class 35 had been rendered to a cosmetics company under a contract for office maintenance. According to an annex to the contract and a witness statement, it was established that -- apart from cleaning the offices -- the cleaning lady employed by the cleaning service company also acted as a receptionist, thus performing office functions.

The Supreme Administrative Court was unimpressed: the primary service agreed on by the parties was that of daily office maintenance. Any other services had only a supplementary character and had been provided on a casual basis. This did not amount to the genuine use of the VASILKA trade mark for office functions. Consequently, the Supreme Administrative Court dismissed the appeal and upheld the decision of the lower court.

Source: "Bulgarian Supreme Court Decides On Genuine Use Of ‘Vasilka’ Trademark", by Dimitar Batakliev, PETOSEVIC newsletter, October 2014

Posted by: Jeremy Phillips @ 22.50
Tags: Bulgaria, genuine use, use by employee,
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WEDNESDAY, 29 OCTOBER 2014
Once upon a time, there was a FOX and a FOXy.HUNTER

The German Federal Patent Court has rejected a likelihood of confusion between the following marks:

Mark applied for:

Earlier trade mark:

FOX

Class 9: Data processing equipment and computers.

Class 12: Vehicles.

Class 38: Telecommunications.

Class 39: Transport services.

Class 42: Design and development of computer hardware.

Class 45: Security services for the protection of property and individuals.

 

Class 12: Vehicles for locomotion by land, air and/or water and parts therefor, included in class 12, including motor vehicles and parts therefor, motors and engines for land vehicles.

Class 28: Model vehicles, in particular model cars.

Class 37: Conversion, repair, servicing, stripping, maintenance, care, cleaning and painting of vehicles, motors and engines and parts therefor, including vehicle repair, all the aforesaid services only provided for or in connection with 'FOX' vehicles.

Based on its earlier word mark 'FOX', the German automobile manufacturer Volkswagen AG opposed the mark applied for with regard to the goods in Class 12 and the services in Class 39, claiming that the relevant public would confuse the signs at issue. The German Patent and Trade Mark Office’s decision to dismiss the opposition has now been confirmed by the German Federal Patent Court.

The Court held that the relevant public consisted of the average consumer as well as industry professionals and that the goods under comparison were identical or similar.

According to the Court, it was not necessary to address the question of whether the opponent's mark 'FOX' had acquired an enhanced distinctiveness through use. The overall impression created by the signs was sufficiently different from a visual, aural and conceptual point of view. Consequently, the marks at issue were not likely to be confused in any case.

The element 'FOX' present in both signs was not deemed to be a dominant component of the mark applied for. The letters 'FOX' would not be perceived separately from the letter 'y', due to the underscore that connected them visually. As far as the relevant public was able to comprehend the meaning of the words used in the mark applied for, the sign would be understood as 'smart hunter'.

Further, the component 'FOX' was not found to have an independent distinctive role in the mark applied for (in the sense of the CJEU's Thomson decision, para. 37), in particular because the applicant had not combined the earlier mark with a widely-known mark or commercial name.

The opponent had failed to provide sufficient evidence to suggest that there was, at least, a likelihood of association between the two signs. Consequently, the trade marks were held sufficiently different to be distinguished by the relevant public in the future or, in other words, to coexist (happily) ever after.

Reference: German Federal Patent Court, decision of 30 September 2014, in case 24 W (pat) 29/13.

Posted by: Christian Tenkhoff @ 09.11
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TUESDAY, 28 OCTOBER 2014
Meet the Finnish IP judges!

It's all happening in Finland these days: one of the European Union's coolest countries -- quite literally -- Finland is famed for its unisex saunas, impenetrable forests, ice cream consumption (the Finns are the highest per-capita consumers in Europe) and trade mark tussles (check out our Finnish contributions to Class 46, thanks to Tiina Komppa). Now you can meet the Finnish intellectual property judges too, thanks to MARQUES. Here's the story:

MEET THE JUDGES - NEW IPR-COURT: EXPERIENCES AND LEGAL PRAXIS

Thursday 13 November 2014
Kansallissali, Aleksanterinkatu 44 A, 2.krs, Helsinki

 

MARQUES, the European Association of Trade Mark Owners invites you to the meet with the Finnish judges that regularly render judgments in trade mark and other related IP matters.

MARQUES is proud to bring to its members a continuing programme of meetings with the European Judges which were established to promote knowledge and understanding of trade mark law and practice in individual jurisdictions throughout Europe.  

The judges will give lectures on the main substantive and procedural aspects of intellectual property law and unfair competition. There will also be an opportunity to put your questions to the judges.

The registration fee for this meeting is €350.
The seminar will be conducted in Finnish.

You can reserve your place via the MARQUES website here

Posted by: Jeremy Phillips @ 18.55
Tags: Finland, Meet the Judges,
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TUESDAY, 28 OCTOBER 2014
Belgium, Flanders domain names: closing date for priority approaches

The priority period for holders of trade mark and trade names in Belgium and Flanders closes on Monday 3 November 2014 at 10:00 CEST.

 DNS Belgium, the registry behind the .be country code TLD for Belgium, is now launching two new TLDs: they are

These TLDs are two of the 66 new geographical TLD strings featuring in ICANN's new gTLD program. ICANN requires registries of all such new TLDs to run, at minimum, a priority period for trade marks registered in the Trademark Clearinghouse.

The nature of the Trademark Clearinghouse may be more suited to larger rather than smaller companies. Because of this, DNS Belgium have elected to run an extra, special launch phase for local businesses and government institutions. During this phase, holders of Benelux and Community Trade Marks, registered company names, trading names, names of official institutions and geographical indications can register their names before the domain launches move into their next phase (during which there is no priority for names and brands).

With the recognised success of the .be ccTLD (1.5 million domains registered) and with the very successful take up of second level domains in geographical TLDs, .vlaanderen and .brussels are going to be very popular and will soon become well-recognised. This is an important heads-up to all businesses and other organisations (and their representatives) who qualify and who may be interested in these names to act now to claim their last opportunity for priority..

Class 46 thanks Ingrid Mennens (trade mark attorney with MARQUES member Novagraaf) for preparing this item.

Posted by: Jeremy Phillips @ 16.09
Tags: domain names, .be, .vlaanderen,
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TUESDAY, 28 OCTOBER 2014
OHIM initiatives: no pay, no examination -- and here comes the Fast Track

The following information has been received today by Class 46 from our friends at the Office for Harmonisation in the internal Market, OHIM.  Since it is of obvious importance, this blogger is reproducing it in full, adding a few personal comments of his own ...

Community trade mark applications will now only be examined after they are paid for

We are changing our examination workflow to increase efficiency

From November 24, OHIM will only examine trade mark applications and process any mail related to them after they are paid for [how many of us only wish that we would only have to do our work after we've been paid for it!]. This means we can be more efficient as an Office, as we will no longer examine applications that ultimately will never be paid for.

OHIM is a European Union agency that serves businesses across the EU. We have a duty to all those who use our services to be as efficient as possible – and to pass those efficiency gains back to our users. Historically 4% of the Community trade mark applications we receive are examined but not paid for – and this figure is increasing. That means we lose time and we lose efficiency. By linking the examination of an application to its payment, we will be making sure that files that are paid for are treated in a timely manner and we will avoid examining files that will never be paid for [this raises interesting questions about the meaning of the word 'efficiency'. Presumably it does not refer to the examination process itself, since it should take the same amount of time to examine an application regardless of whether it has been paid for. As for efficiency in recovering monies owed, that might be a different matter ...].

Fast Track processing of trade mark applications

From November 24, and coinciding with this change, our users will have the option of having their applications published more quickly with our new "Fast Track" procedure. The Fast Track means that the trade mark will be published in half the time or less, as compared to regular applications. The Fast Track also means no classification deficiencies – our users have to select their goods and services from a database of terms already accepted by OHIM and by almost all national intellectual property offices of the European Union.

For an application to qualify for, and remain in, Fast Track applicants need to, among other conditions:

  • Select the goods and services from OHIM’s harmonised database, which contains pre-validated and pre-translated terms.

  • Pay at the end of the application process or immediately after submission.

Additionally, the application should not trigger any deficiency finding at the time of submission or during its examination by OHIM staff [the fast-tracking of applications may prove popular, especially if it costs the same as slow-tracking. The information here doesn't say that it will cost more].

More details will be available soon. Check the news section of OHIM website or your User Area's news tab.

[There then follow what look like a sequence of FAQs]

1. I would like my application to be examined as soon as I submit it, what can I do?

To have your application examined immediately, you need to pay at the payment step of the application process or, if you are paying by bank transfer, your need to pay immediately after submitting your application.

You can pay via:

  • Credit card: The payment will be deemed as paid immediately and we will process your trade mark application as soon as we get it.

  • Bank transfer: You will need to transfer the fee immediately after applying. Please also bear in mind that we do not issue a request for payment. It is up to you to take the appropriate steps to order the transfer. Please also ensure that you indicate the code provided in the online form in order to ensure the identification of your payment.

  • OHIM current account: Current account users are generally debited all fees and charges automatically on the very last day of the payment period. If you are a current account user and you would like your application to be examined as soon as you file it, you need to ensure that the 'Debit now' box is ticked in the payment step.

2. I am a current account user, how can I pay before the end of the one-month period?

If you are a current account user and you would like to be debited before the end of the one-month period, you should indicate this by leaving the 'Debit now' box ticked. If you have already submitted your application, you can contact the Office by fax, indicating the application number and requesting the immediate debiting of your current account. Do not forget to leave the 'Debit now' box ticked for future applications.

3. Do I still have one month to pay for my application?

Yes, you do. Trade mark applicants can wait until this one-month period elapses. However, our examiners will deal with the applications and their related communications only when they have been paid.

4. If a deficiency is raised regarding my application, can I get my money back? [without looking below, many readers will already be guessing the answer to this question correctly]

No, once the fee is paid it will not be refunded.

5. How can my application be Fast Tracked?

To have your application processed as Fast Track, you will need to pay at the moment of filing or immediately afterwards in case of payment by bank transfer. You will also need to use OHIM's database of accepted terms for classification purposes.

This service will be available from November 24.

6. How do I know that my application has been put on the Fast Track?

The Five-step form has been designed for the Fast Track, so it presents you with mandatory fields and default options that ensure your application can be processed as swiftly as possible.

Our Advanced form has been designed to alert you when your application is a Fast Track one and when it is not. If your application does not fulfil any of the Fast Track conditions, the form will flag this up [this looks like a good idea, and will also jog the memory of applicants and their representatives who may initially have not seriously considered the Fast Track option]. You can then decide whether to make the corrections indicated in the form or just proceed with a regular application. Regular applications are normally published 8 to 11 weeks after payment.

7. Can an application drop out of the Fast Track?

Although some applications may comply with the conditions of Fast Track at the time of filing, they may lose their Fast Track status later on. This can result from a deficiency found during the absolute grounds examination, for example, like the fact that the trade mark you would like to register is not distinctive enough.

Other reasons can be, for example:

  • Late payment

  • A request of limitation of goods and services

  • Other deficiencies (like missing priority or seniority attachments) 

Says Class 46, this all looks very promising; we look forward to seeing the further details when they are published. Since the new regime comes into effect in less than a month, these details should be coming any day now.

Posted by: Jeremy Phillips @ 15.21
Tags: OHIM Fast Track processing, examination procedure,
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MONDAY, 27 OCTOBER 2014
General Court case over the ownership of the trademark LAGUIOLE

In Case T-453/11, the General Court had to brush up its knowledge of French trademark law opposing two competitors for knives and related goods over the use of the sign LAGUIOLE.

 Mr. Gilbert Szajner  registered the CTM LAGUIOLE in 2005 for goods and services in classes 8, 14, 16, 18, 20, 21, 28, 34 and 38.

The company Forge de Laguiole SARL brought a partial cancellation action on the basis of articles 52 (1) c) and 8 (4) CTMR on the grounds that there was a risk of confusion with earlier trade name FORGE DE LAGUIOLE used in France for "manufacturing and sales of knives, scissors, souvenirs, gifts -and all articles related to the art of the table".

Article 8 (4) CTMR contains 4 cumulative conditions: 1)the sign must be used in trade and 2) has more than mere local use, 3) the right must have been acquired before the contested CTM and 4) the owner must be able to oppose a junior mark according to the local law.

The Board of appeal had applied the French case-law, regarding condition 4),  which was  in force at the time of its decision on 1 June 2011 according to which a company name is protected for all the activities listed under the section "company's objects " in its Memorandum of Association.

Before the Judgment of the GC was issued, the French Supreme Court reversed this controversial trend (object of critic by the French doctrine) in a Judgment dated 10 July 2012 which ruled that the "company name would be protected solely for the activities effectively in use and not for those listed in the MofA".

Thus the GC examined what was the actual use of the sign LAGUIOLE and found that it was protected for "knives and cutlery, gifts and souvenirs as related to the above mentioned goods only".

In spite of the evidence submitted by the cancellation applicant (foreign awards for best design, press article, etc) and contrary to the findings of the BoA,  the Court found that it had not established any reputation prior to 2001, the date of application of the contested CTM. Thus, an average distinctive character must be taken into account (although its descriptive character had been recognized by French case-law because Laguiole refers to the place of origin).

The GC confirmed there was a likelihood of confusion between the signs for all similar goods, including "spoons, rasors and all affiliated goods, manicure necessaire" in Class 8, "letter openers" in Class 16, "bottle-openers; shaving instruments" in Class 21 and "cigar-cutters; pipe cleaners" in Class 34.

Posted by: Laetitia Lagarde @ 09.15
Tags: Laguiole, knives, trade name, reputation, French trademarks ,
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MONDAY, 27 OCTOBER 2014
.PT Domains - registration of domains with two characters

As reported here, the rules governing the registration of Portuguese domain names have been amended earlier this year.

One of the novelties was the possibility of registering domain names with a minimum of two characters (instead of three). However, the entry into force of this rule was postponed until 1 November. In the beginning of October, DNS.PT published the conditions applicable to the registration of domains with two characters (the English version is available here).

According to the same, not every domain with two characters will be subject to the same rules. First, there is a set of combinations whose registration is a priori forbidden, as is the case of the names coinciding with existing top-level domains.

Second, as especially appealing names might be at stake, DNS.PT decided to plan an auction, between 4-11 December, on the platform www.sedo.com for the following domains: or, xs, 99,11, 22, 55,88, ex, ok, hw, ko, pc, sw, 00, 01, 07, 09, 10, 20, 21, 30, 33, 3g, 40, 44, 4g, 50, 5g, 60, 66, 69, 70, 77, 80, 90, b2, b4, kk, oo, qi, t0, t1, t2, t3, t4, t5, xx, ya, hj, pq, ou. A starting price for bidding of €499 is applicable.

Finally, as for the remaining available two-characters domains, their registration can be carried out as from 9am on the first working day after the expiry of the previous limitation (ie, the registration will be possible on 3 November). However, their registration will be more expensive than the traditional .pt Domains: the first year's fee will be €100. Still, this price increase only applies to the initial registration, with renewal conditions in force for domains with more than two characters being applicable.

Posted by: Pedro Malaquias @ 09.06
Tags: Portugal, Domain Names. pt domains, ,
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