THURSDAY, 5 MARCH 2015
General Court: INTERFACE v INTERFOG

In Case T-227/13, both OHIM and the General Court upheld the following oppostion:

Bayer Intellectual Property GmbH – contested CTM

Interhygiene GmbH -earlier CTM

INTERFACE

INTERFOG

Class5 ‘Preparations for destroying plants and vermin, insecticides, herbicides, fungicides

Class 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides

The relevant public consists of both general end consumers and of horticultural and agricultural specialists in the European Union, and that public has a high level of attention.

The Board of Appeal found that the goods covered by the marks at issue were identical, for example the ‘fungicides’ and ‘herbicides’ covered by the earlier mark fall into the broader category of ‘preparations for destroying plants’ covered by the mark applied for.

The marks have an average degree of visual and phonetic similarity. However, from a conceptual point of view, the Court held that the Board erred in finding a neutral assessment. Even if the word ‘interfog’ does not have any conceptual content, the part of the relevant public that has a sufficient knowledge of English is liable to understand the word element ‘fog’ as signifying low-lying water droplets suspended in the air. However, this word element, when combined with the word element ‘inter’, is not such as to endow the earlier mark with a clear and determinate meaning. By contrast, the mark applied for is composed of the English word ‘interface’, which is a technical term used particularly in the field of information technology and has a semantic content not only in English but also in other EU languages, a fact which OHIM indeed acknowledged at the hearing.

It follows that the Board of Appeal ought to have concluded that there is a certain conceptual difference between the marks at issue.

Further, the distinctiveness of the earlier mark is average and the opponent had not claimed any enhanced distinctive character acquired through use.

Moreover, OHIM and the Court rejected the applicant’s arguments based on the supposed coexistence of earlier marks sharing the prefix ‘inter’. In the light of those various factors, and taking account of the presence of that prefix at the beginning of each of the marks at issue, there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

Posted by: Laetitia Lagarde @ 19.04
Tags: General court, interface, interfog, likelihood of confusion,
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THURSDAY, 5 MARCH 2015
Game, Set and Match.com!

The French Supreme Court rejected the appeal by Hachette Filipacchi Presse (Hachette), owners of the popular French celebrity news magazine ‘Paris Match’, against the Paris Court of Appeal’s decision which held that they could not claim infringement of their marks on the grounds of acquiescence.

In 2006 Hachette issued proceedings for trade mark infringement against Match.Com LLC (formerly Match.Com International).  Hachette claimed that Match.Com LLC, the company behind the well-known dating website of the same name, were infringing their various French registrations, inter alia, for ‘MATCH’ and ‘PARIS MATCH’ by using on French territory their CTM registration MATCH.COM and the websites ‘match.com’ and ‘fr.match.com'.  The Tribunal de Grande Instance de Paris agreed and upheld Hachette’s claim for trade mark infringement. Match.Com LLC claimed that as their CTM registration was filed in 1996 and Hachette had filed an unsuccessful opposition against this application, which resulted in the CTM being registered in 2004, Hachette were aware that the sign MATCH.COM was being used on French territory.  Hachette should therefore be prevented from claiming infringement due to acquiescence as Hachette had tolerated use of MATCH.COM for more than 5 years. The TGI Paris dismissed Match.Com LLC’s arguments and awarded costs to Hachette for infringement.

Match.Com LLC appealed to the Paris Court of Appeal on the basis that the TGI Paris had erred in its findings that there was no acquiescence on the part of Hachette. The Appeal Court overturned the TGI’s judgement citing Article 54 of the CTMR which states: “Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith.

Hachette had been aware that Match.Com LLC had been using their mark in France since 1998 as evidenced by an article in Libération (a mainstream French newspaper) dated 17 April 1998, which stated that “match.com was one of the most used meeting sites” and that despite the website being in English there were French subscribers to the site.  Hachette were nevertheless aware of this use from at least 2000 as a result of their opposition the same year filed against Match.Com LLC’s CTM registration. During the opposition Match.Com LLC provided evidence that in 2000 they had 1,978 French subscribers to their site, albeit in English, which changed to French in 2002. As this use was for more than 5 consecutive years, Hachette could no longer claim infringement.

Upholding the Appeal Court’s judgement, the French Supreme Court found that based on the facts of the case and in the absence of bad faith, the Appeal Court was entitled to deduce that Hachette were, at the latest in 2000, aware of the use, in France, of the sign in question, so that on the day they filed their action for infringement, Hachette had knowingly acquiesced in the use of the sign for more than five consecutive years.

This decision makes it clear that it’s not the date of the later-filed CTM registration that is important: acquiescence runs from the date of use of the sign forming the CTM registration.

Posted by: Yvonne Onomor @ 16.20
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TUESDAY, 3 MARCH 2015
General Court: Spin Bingo (fig) v. ZITRO SPIN BINGO

In Judgment T-665/13, the General Court dismissed the appeal regarding the following opposition:

Contested CTM-Gamepoint BV

Earlier CTM-Zitro IP Sàrl

Image not found

ZITRO SPIN BINGO

Classes 9, 41 and 42

Classes 9, 28 and 41


 

The Opposition Division partially upheld the opposition except for the following goods, which were considered to be different from the goods of the earlier trade mark:

Class 9: ‘scientific, nautical, surveying, weighing, measuring, checking (supervision), regulation and management of electricity apparatus and instruments’ ; Class 42: ‘scientific and technological services and research and design relating thereto; industrial analysis and research services’.

The Fourth Board of Appeal of OHIM annulled that decision of the OD and rejected the opposition in its entirety. It found the goods and services covered by the trade mark applied for were either similar or identical to those designated by the earlier trade mark, except the ‘life-saving apparatus and instruments’, which were different.

However, regaring the signs, it found there was a low degree of visual, aural and conceptual similarity despite the fact that they contain the expression ‘spin bingo’. That expression is descriptive of an essential characteristic of the relevant goods and services. On a visual level, regarding the earlier sign, the public would pay attention to the more distinctive element ‘zitro’, which is devoid of any meaning in the relevant languages and is at the beginning of the sign. Concerning the contested sign, in the light of the descriptive meaning of the expression ‘spin bingo’, consumers will pay as much attention to the different colour elements of the device which are the circles and the reel on which there is a representation of a smiling face. On the aural level, the similarity is weak as well, in the light of the descriptive meaning of the expression ‘spin bingo’, and the fact that the public will pay attention to the more distinctive element ‘zitro’. On the conceptual level, the word ‘zitro’ is dominant and it's not conceptually similar to the contested sign.

Finally, concerning the global assessment of the likelihood of confusion, the distinctive character of the earlier trade mark ZITRO SPIN BINGO is average.

Further, the similarity between the signs was limited to the expression ‘spin bingo’, which has a purely descriptive meaning, and which cannot constitute the dominant element of the overall impression produced by the sign of a complex trade mark, and, therefore, which also cannot, in itself, form the basis of a likelihood of confusion.

The Board of Appeal held in that regard that, although some of the goods and services are identical and assuming that the public’s level of attention is only average, the low degree of visual, aural and conceptual similarity between the signs excluded any likelihood of confusion, including a likelihood of association, which could not be based on elements which are not distinctive.

Posted by: Laetitia Lagarde @ 17.35
Tags: General court, spin bingo, zitro zpin bingo,
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MONDAY, 2 MARCH 2015
China IP survey: responses urgently needed

The UK Intellectual Property Office is seeking feedback on experiences of the intellectual property system in China, knowing that bad-faith trade mark applications are a common problem faced by UK businesses operating in China and that they and can have a serious impact. The IPO has therefore prepared a short survey, which will take no longer than 10 minutes to complete. The survey is being run by an independent market research agency, SPA Future Thinking, and all responses will be treated confidentially.  

Please click here to access this survey (if you are not the right person to complete it, do feel free to forward it to a company or client which would be better able to complete it).

Time is short as the survey needs to be completed by 3 March -- that's tomorrow.

Posted by: Jeremy Phillips @ 00.01
Tags: China, bad faith survey,
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SUNDAY, 1 MARCH 2015
EU - MOROCCO GI AGREEMENT

Morocco and the EU and have concluded negotiations on an agreement to mutually protect their Geographical Indications for agricultural products and foodstuffs.

Morocco is the first amongst the Southern neighbours of the EU to take this important step forward in promoting and protecting the quality of agricultural production. The aim of this agreement is to better protect consumers in terms of not being misled on the true origin and quality of the product.


The Agreement will now be passed for its approval to the Council and the European Parliament as well as to the Moroccan legislative authorities. More information in the European Commission�s press release here.

Posted by: Edith Van den Eede @ 14.47
Tags: EU, Morocco, Geographical indications, GIs, foodstuffs, agricultural products,
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FRIDAY, 27 FEBRUARY 2015
WET DUST CAN'T FLY in General Court

In Case T-133/13, Rexair LLC had obtained a CTM for goods and services in Classes 3, 7 and 37 for the sign "WET DUST CAN'T FLY".

Pro-Acqua international GmbH filed a cancellation action against part of the registered G/S, namely  in Class 3: ‘Substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps; cleaners and fragrances for carpet, flooring, upholstery and window treatments’;  Class 7: ‘Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines, power-operated water extractors, and parts and attachments thereof’; Class 37: ‘Repair; installation services; repair and maintenance of vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines and power-operated water extractors; consultation services in the field of repair and maintenance of vacuum cleaners, power-operated floor scrubbers, power-operated carpet and upholstery cleaning machines and power-operated water extractors’,  claiming that that mark had been registered contrary to the provisions of Article 7(1)(b) and (c) of Regulation No 207/2009.

The Board of Appeal fully approved and endorsed the Cancellation Division’s reasoning that the mark WET DUST CAN’T FLY possessed both originality and resonance, and also had the effect of setting off a cognitive process in the mind of the relevant consumer. The expression ‘wet dust can’t fly’ was fanciful and distinctive and was not descriptive of the goods and services concerned.

The General Court rejected the appeal and agreed with OHIM that the expression ‘wet dust can’t fly’ does not consist of the terms ‘dust moistener’ or ‘dust dampener’, which might have been perceived as descriptive of the intended purpose of such goods. Furthermore, it is clear that that expression cannot be understood as a conventional way of describing the functionalities of cleaning appliances and cleaning tools. Consequently, it is not necessary to ensure that that expression is made available to competitors. Thus the Court confirmed there was no violation of Article 7 (1) c) CTMR.

As regards the argument of breach of article 7 (1) b) CTMR,  the cancellation applicant did not produce any document to establish that the combination of the words ‘dust’ and ‘wet’ is commonly used in the context of filters and cleaning systems.

Furthermore, the concept of ‘wet dust’ is literally inaccurate, since dust is no longer dust when it is wet. Consequently, the juxtaposition of those two words gives that concept a fanciful and distinctive character.  Finally, with regard to the applicant’s argument that that expression is an advertising slogan which indicates that the performance of the designated products is better than the performance of other products, although the slogan is slightly suggestive, there is no evidence to support the specific assumption that those goods and services are superior.

Posted by: Laetitia Lagarde @ 15.39
Tags: General court, wet dust can't fly, absolute grounds,
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THURSDAY, 26 FEBRUARY 2015
Greece: Acropolis lacks distinctive character for Class 33 products

In decisions issued today, the Greek TM Office rejected two compound marks, consisting of the word indication ACROPOLIS and a representation thereof over lack of distinctiveness for goods in Class 33. This blogger has no objections and feels that the result should probably not impress or surprise readers of this blog. However, it appears that "ACROPOLIS rent a car" for, yes, Class 39 services, was distinctive enough back in 2002. This may raise an eyebrow (or two). Anyway, just an excuse to post a pic of this beautiful monument!

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Posted by: Nikos Prentoulis @ 13.03
Tags: Greece, absolute grounds, distinctive character, Acropolis, spirits,
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