MONDAY, 23 MAY 2016
Switzerland: red sole decorative, not distinctive

In a decision of 27 April 2016, the Swiss Federal Adminstrative Court confirmed the IPO's refusal to grant Louboutin's "red sole" application protection for high heels in Switzerland. IR 1,031,242 was filed as positional mark with the depiction shown above.

The court held that the color red, also in the specific shade claimed, was decorative for women's high heels. The combination with the other elements, namely the position on the underside of the sole and the shape of the red part, did not make the mark distinctice in the eyes of the relevant consumers, which were defined as somewhat fashion interested women of any age. Whether the form of the red part was a "shape" was not a relevant issue (see pending referral from the Rechtbank den Haag to the CJEU). 

The IPO submitted evidence in the form of screenshots of various websites, also from Top Level Domains other than .ch, that showed that red soles were common for high heels not originating from applicant. The applicant contested the relevance of foreign website for the perception of Swiss customers. Here, the court made some interesting remarks: i) if the mark in question is a word mark, evidence from foreign websites is prima facie relevant if those websites are in one of Switzerland's official languages. The use of words did not generally vary so much by country that such websites were irrelevant for the perception of Swiss customers. However, ii) for signs that are an inseparable part of the good for which protection is claimed, the situation is different. Many goods sold abroad cannot be sold in the same form in Switzerland. Conclusions based on specific characteristics of goods shown on foreign websites are only relevant for the Swiss market if it cn be assumed that the goods are sold in the same form in Switzerland. For women's high heels, this is the case - no specific laws or customs prevent the import of high heels into Switzerland. Evidence showing widespread use of red soles abroad is therefore suitable to demonstrate that red soles on women's high heels are widely used in Switzerland, too.

Interestingly, while Louboutin claimed acquired distinctiveness before the IPO, which was refused - partly because the IPO defined the class of relevant consumers broader than Louboutin whished, namely both men and women of all ages rather than just younger women - Louboutin did not claim acquired distinctiveness on appeal. The Federal Administrative Court hence did not address any issues of acquired distinctiveness; it only held that the red sole is not distinctive ab initio.

Decision B-6219/2013 of 27 April 2016 (German summary). The decision is not final, but an appeal can only be based on legal grounds.

Posted by: Mark Schweizer @ 16.24
Tags: Switzerland, absolute grounds of refusal, positional mark,
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SUNDAY, 22 MAY 2016
General Court: Mark1 for tobacco rejected as EU trade mark

In Cases T-32/15 and T- 844/14, GRE Grand River Enterprises Deutschland GmbH applied for the word mark MARK1 and the figurative mark Image not foundfor tobacco related goods and eletcronic cigarettes in classes 9 and 34.

 

The EUIPO rejected both marks on the ground that the marks were devoid of any distinctive character within the meaning of Article 7(1)(b)  CTMR.

The relevant public consists of both the average consumer in the general public and the average consumer in a specialist public. The number 1 refers in general to first or highest in rank and that the word 'mark' is an English word which is synonymous with 'trademark'. Thus, according to the Board of Appeal, the signs applied for are a reference to the fact that the goods at issue are placed first in the ranking of cigarette brands. In the figurative mark, the configuration of the graphic elements and colours, namely, black for the word 'mark' and red for the number 1, were not sufficient to confer distinctive character on the sign applied for. In fact, the red colour suggested that the product was 'number 1'. Furthermore, the font of the letters was not unusual. The signs applied for fulfilled an advertising function only and did not enable the origin of the goods to be identified. 

The Applicant appealed to the General Court claiming that the word 'mark' is not descriptive. In its meaning as a mark or as a synonym of the English word 'trademark', it is very imaginative not to give the name of a product, but to call it simply a mark. Moreover, the word could be understood equally in the sense of marking or scratching in German or as the abbreviation of the former German currency. Furthermore, the word 'mark' refers to a well known first name in English, for which the applicant cites a certain number of famous examples. Also, in spite of the fact that the advertising slogan for cigarettes under the mark Mark Adams No1 is 'The No1 brandï', the applicant maintained that the consumer would not perceive this slogan in the sense of a ranking, in as much as it refers to the bestselling brand. On the contrary, the average consumer knows that cigarettes of this brand are not the bestselling on the market.

The Court dismissed the appeals: the fact that the word 'mark' is capable of having several meanings is not decisive. When assessing the mark applied for as a whole, that it has, clearly and essentially, a laudatory and promotional meaning for the goods concerned. In fact, it suggests to the relevant public essentially the idea of a 'number 1 brand' for the goods. Therefore the marks lack any distinctive character.

Posted by: Laetitia Lagarde @ 14.00
Tags: General court, absolute grounds, Mark1,
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THURSDAY, 19 MAY 2016
It's maņana for the new Madrid IT system

Everyone is keen to see the new Madrid IT platform in full operation. However, we learn from our friends at WIPO that things are taking a little longer than had initially been hoped.  WIPO's Madrid News accordingly contains the following update (which you can read online here):

Update on Implementation of the New Madrid IT System

On March 23, 2016, the International Bureau (IB) deployed the Madrid International Registrations Information System (MIRIS) - a modern IT platform, designed to support the ongoing operational needs of the Madrid System and to reinforce online services for users. Initially, it was anticipated that the transition to the new system would only impact the Madrid Registry’s operational performance for a few weeks and have minimal impact on users. However, it is now clear that the transition period will take longer than expected. Users may be affected during this extended transition period.
 
Users can be assured that all possible measures are being taken to ensure that the Madrid Registry returns to full operational mode as soon as possible.
 
Guidance on the most important issues affecting the system, how these issues are likely to impact users, and the measures the Madrid Registry has taken to safeguard user interests, is provided below.
 
Examination pendency 
 
The Madrid Registry’s examination output is currently reduced, while further work is undertaken to solve outstanding MIRIS deployment issues.  It is expected that improvements will be made for the bulk of the workload within a matter of weeks.  However, some of the issues affecting more complex transactions will take longer to fix.
 
The status of any pending request can be monitored through Madrid Real-Time Status.
 
Transmittals of provisional refusals
 
Transmittals of provisional refusals were suspended for several weeks following migration, while special quality control processes were applied.  However, all known issues have now been resolved and most transmittals of refusals are once again being made normally. 
 
The Madrid Registry has taken special care to ensure that transmittal of provisional refusals to holders were dispatched with the fewest possible delays, taking into account deadlines for responses set by designated Contracting Parties.  Users who have received late notifications of provisional refusals, and whose ability to meet the deadlines set for responses by designated Contracting Parties is compromised, are invited to contact the Madrid Registry at their earliest convenience. 
 
Irregularity letters concerning international applications, subsequent designations, changes of international registrations and renewals 
 
Quality control processes were also applied to irregularity letters recently, following the initial focus on notifications.  As a consequence, no irregularity letters have been sent since March 17, 2016.  As issues are being addressed, it is expected that irregularity letters will gradually start being sent over the next few weeks. 
 
Deadlines for responding to irregularity letters are calculated as of the date of communication of the letters in question.  Their late communication therefore has no bearing on the time available to respond.
 
E-Services
 
Although the E-Services supporting the Madrid System have remained available throughout the transition to MIRIS, some service instability has been experienced by users. The E-Services are progressively returning to a stable state, and are expected to operate normally within the next few weeks.
 
Strategy to restore full operational performance 
 
Returning operational performance to a normal level is receiving urgent attention at the highest level within WIPO.  The strategy to seek the quickest possible resolution of the issues is two-fold.  First, the plan involves reducing the time required to fix outstanding MIRIS issues by rapidly increasing the level of technical development resources.  And second, examination resources will be reinforced, with a view to reducing the backlog as soon as MIRIS has been stabilized.
 
Similar communications will be issued on a regular basis to provide updates on progress.
 
Customer support
 
Waiting times for responses by phone or mail may be longer than usual, following an increase in queries.  To the extent possible, the Madrid Registry will increase the resource levels devoted to customer support services.
 
Further Questions?
 
Madrid Customer Service is on hand to answer questions during this period.

Posted by: Blog Administrator @ 08.38
Tags: Madrid System,
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TUESDAY, 17 MAY 2016
EU TM Reform Package: a report

Here is a report on the recent AIPPI UK meeting on EU trade mark reforms, prepared by Alex Woolgar (an Associate in the IP Litigation Department of Allen & Overy LLP).  This event, which was supported by the participation or attendance of a number of MARQUES friends and members, is part of an extensive ongoing process of spreading the word concerning the new EU Trade Mark package -- a process in which all major national and international organisations are engaged.  The report reads as follows:

Removal of the requirement for graphic representation (from 1 October 2017 in relation to EUTMs; deadline for implementation of new Trade Marks Directive into national law is 23 March 2019):  Currently 3D shape marks and colour marks account for less than 0.5% and 0.05% of applications, respectively.  However, with this change, it is presumed that these figures are set to increase.  The new Article 4(b) essentially codifies the Sieckmann criteria.  Prof. Dinwoodie’s view was that the trade mark application in Sieckmann (and those in the subsequent Libertel andShield Mark decisions) failed not because the representations in question were not graphic, but because they did not meet the Sieckmann criteria.   Will Article 4(b), therefore, really represent a liberalisation in the previous graphic representation requirement?  Disposing of the requirement for graphic representation will open up registration of some new subject matter, such as sound marks which are not musical (e.g. the roar of Leo the Lion, of MGM fame – a perfect Kat-friendly example).  It will also provide greater certainty as to what is protected – there are some marks which can and should be represented more precisely by non-graphic means (e.g. sound and video recordings).  This does not, however, address the issue raised by the 2011 Max Planck Institute study of the inconsistency between national trade mark offices in examination of non-traditional marks.  Arguably, as a technical matter, the requirements for examination of national marks by national trade mark offices should in fact be fully harmonised.  David Stone noted that the EUIPO is expected to produce guidance as to the technical requirements for new forms of representation; presumably national trade mark offices will glance through this guidance before the floodgates open.  Thinking ahead, Mr Justice Arnold noted that these guidelines will need to kept updated to account for the eventual obsolescence of technological forms, such as the entire electronic medium.  Yikes.  

Restrictions on expanded functionality (from 23 March 2016):  The amendment of Article 7(1)(e) addresses the concern raised in the Max Planck study that the expansion of registrable subject matter may enable trade mark applicants to gain a larger monopoly than would be intended, or fair.  Examples (from the United States) included the colour black for outboard engines for boats (it makes engines look more slimline, and is apparently easy to match with a wide range of boat colours), and peach and white for prescription medicines (used to denote dosage, such that a monopoly over this colour combination would pose a risk to patient safety).  The solution is to bar registrations for “another characteristic” (aside from shape) which results from the nature of the relevant goods, is necessary to achieve a technical result, and/or which gives substantial value to the goods.  Prof. Dinwoodie’s view was that this change will affect little in practice.  The needs of competitors are already taken into account under Articles 7(1)(b) and (c): for non-conventional marks, it is harder to show inherent distinctiveness in order to get them on the register in the first place.  For example, the EUIPO already expects that, to not fall foul of 7(1)(b) and (c), a 3D shape mark must depart significantly for the norm or customs of the relevant sector.  On the other hand, the new Article 7(1)(e) could have unintended negative consequences.  For example, the Coach “C” pattern is not a shape, but it is “another characteristic” and it does give substantial value to the luggage produced by Coach.  Is it possible that this type of mark would now be vulnerable?  Simon Malynicz QC and David Stone agreed that over recent years, shape marks have had a tough time, both during examination and in the courts.  If this theme continues in relation to other non-conventional marks, this could be quite restrictive, especially as in the case of Article 7(1)(e) there is no opportunity to save a mark through use.  It appears the amended Article 7(1)(e) will apply immediately, including to existing marks (there are no transitional provisions).  This was the view of Mr Justice Arnold, although Prof. Dinwoodie argued that German courts are likely to  be more receptive to Article 1 of the ECHR Protocol (protection or property) arguments and may take a different view. The new Trade Marks Directive is likely to be sufficiently clear and certain to be directly effective if not implemented by Member States by 23 March 2019.    

IP Translator:  The new Article 28 codifies the IP Translator decision.  The transitional period for amendment of specifications will last until 23 September this year.  This offers an opportunity for the owner of a trade mark with a deficient specification to gain extra protection by amending the specification to claim the full range of goods/services within the relevant class(es).  There is a risk, however, that some “orphan”  goods/services will be vulnerable to revocation for non-use.  The process of checking a specification against various editions of the Nice Classification, and then updating, is laborious.  It is questionable whether this will be worth the effort unless a specification is materially deficient.  As Simon Malynicz QC noted, it may also be problematic for trade mark owners to certify that they always intended to claim protection under the relevant orphan headings. 

Certification EUTMs (from 1 October 2017):  Simon Malynicz QC lamented the missed opportunity to fully harmonise overlapping EUTM and national trade mark laws. Although Article 74a of the Regulation will provide for certification marks, marks indicating geographical origin are excluded.  This contrasts with section 50 of the Trade Marks Act 1994 (which permits the registration of marks which certify origin), which should remain unchanged by the new Directive.  In theory, a holder of a national certification mark for geographical origin will be able to block registration of an EUTM, which seems unfair.  It is debatable whether the new Article 74a will save Simon’s favourite Halloumi cheese, direct from Cyprus (and Cyprus alone…)

Infringement (from 23 March 2016):  Simon Malynicz QC commented that (with a couple of exceptions) the changes to infringement provisions do not, in practice, significantly benefit trade mark owners.  In particular:

  • The wording of new Article 9(f) is unclear – like Simon, this author had previously thought of comparative advertising as a defence if a prima facie infringement case is established, not an infringing act per se.  On balance, Article 9(f) is probably a victim of poor drafting and there was no intention to shift the role of comparative advertising.  Instead, the better view is that it merely codifies the decisions in O2 v Hutchinson 3G,L’Oréal v Bellure and Google France
  • Most seemed to agree that new Article 9(4) is overdue, and that it represents a significant win for brand owners.  Even if imported goods are labelled for on-export, if they bear a mark which is identical to an EUTM or indistinguishable in its essential aspects (note the test for similarity differs from Article 9(2)), the importer will be required to prove that the trade mark holder would not be able to stop the goods being placed on the market in their final destination.  It was noted that this new provision will probably just result in counterfeit goods being labelled for on-export to countries which do not provide for protection of trade marks   There is also some confusion as to whether this Article will catch parallel imports (which often enter the EU via similar channels) – Prof. Dinwoodie agreed that this is possible.  There is interplay here with the Customs Regulation, and the question of intent will be important.  
  • New Article 9a on preparatory acts will tighten the net around those who assist infringement.  Simon recalled a case for Coca-Cola before Mr Justice Henderson (unreported) in which a counterfeiter produced fake Coca-Cola syrup and used a stock of existing, genuine Coca-Cola packaging boxes to wrap the counterfeit product.  There was a debate on whether just wrapping the fake syrup with real packaging constituted an infringement.  Article 9a now deals with that question by prohibiting (in the course of trade) the affixing of signs to packaging and other materials, or offering or placing on the market such packaging or other materials, where such materials could be used in relation to such goods and services and such use would constitute trade mark infringement.  Mere filling of infringing cans by a bottler would now be caught.  David Stone commented that even if the Red Bull case was decided correctly on the words of the Regulation, it was a poor policy decision – rights holders need to be able to get relief against whoever is in front of them in the relevant jurisdiction.  Simon Malynicz QC noted that the drafting of this Article is extremely broad, and could prohibit legitimate activities that should not be infringing.   
  • The removal of the own-name defence for non-natural persons is a significant change, especially in the UK where there have been several successful own-name defences by companies.  This change also runs contrary to two CJEU Grand Chamber judgments (Anheuser-Busch and Celine) and is not supported by the Max Planck study.  Simon Malynicz QC was therefore expecting a good explanation from the Council addressing the reasoning behind this change, but none has been forthcoming.  Simon stated that he supports the current position in the UK, where the availability of the defence hinges on honest practices.  In cases of double-identity, this may well be the only defence available.  Simon referred to one of his cases (which settled before trial) in which Kindle Entertainment, a production company, relied on this defence against the marks for Amazon’s “Kindle” e-reader.  Kindle Entertainment chose its name before launch of the Amazon Kindle, and had run an clearance search on the Internet, but no trade mark search.  There was lively debate as to whether failure to run a trade mark search can still be “honest practices”.  This author suggests that it would be quite unfair to small companies, with limited resources for trade mark attorneys and clearance searches, if an “honest” failure to pursue every search avenue could be deemed as “dishonest”.  It was also suggested that if the court is sympathetic to a defendant, it will make efforts to find another defence (e.g. honest concurrent use), even though this isn’t meant to be a defence (but, as Mr Justice Arnold pointed out, it was upheld as such inSupreme Petfoods).
  • The non-distinctive signs element of Article 12(1)(b) appears to be an attempt to deal with signs which are not non-descriptive as such but still non-distinctive.  Examples might include Kit-Kat bars and the “figurative figleaf” problem identified by Mr Justice Arnold in Starbucks v BskyB. This defence will be particularly important for composite marks: it should not be possible to base an infringement action on an otherwise non-protectable component of a composite mark.
  • To complement Article 9(f), the wording of the revisions to Article 12(1)(c) is unclear.  Does this represent a third stage to the comparative advertising analysis (see above) i.e. the use of the mark also has to be in accordance with honest practices for a comparative advertising defence to apply, or is this defence a trump card which circumvents the Comparative Advertising Directive?  This question was not resolved.  Mr Justice Arnold suggested it could be that if the defendant has a comparative advertising defence, then the use of the trade mark must by default be honest; if not, the use must not be honest. This seems attractive, and refreshingly simple, but no doubt there will be plenty of arguments about this in practice in due course.  

* There was some confusion as to why the Regulation is devoid of transitional provisions.  The panel was in the dark about this, as was the audience.  Simon Malynicz QC suggested that in the case of the “declaratory” aspects of the Regulation and Directive (those which arguably just codify what the law already is e.g. the amendments regarding graphic representation and comparative advertising) it is possible that the courts of Member States should already be giving effect to these provisions in their judgments.  This author watched Mr Justice Arnold carefully for a reaction to this suggestion but, alas, any reaction was imperceptible.   

Posted by: Blog Administrator @ 12.17
Tags: EU Trade Mark Reform Package,
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SUNDAY, 15 MAY 2016
General Court: chocolate packaging lacks distinctive character

August Storck KG filed an application for international registration designating the EU in 2013 for the following goods 'Confectionery, chocolate, chocolate products, pastries, ice-creams, preparations for making the aforementioned products, included in class 30 for the following figurative sign

Image not found

The General Court recently confirmed (see Judgment T-806/14) the EUIPO's decision rejecting the EU mark on the ground that the mark applied for was devoid of any distinctive character in relation to the goods concerned within the meaning of Article 7(1)(b) of Regulation No 207/2009.

The relevant public is the average EU consumer with a low level of attentiveness.  The mark applied for consists merely of a combination of presentational features that are typical of the packaging of the goods concerned. Furthermore, the applicant did not demonstrate that the colours or other decorative patterns included in the mark applied for would indicate the origin of the goods concerned.

Second, the applicant’s reference to the importance of colour-codes used by other manufacturers is irrelevant. Third, the results concerning a public survey carried out by Ipsos GmbH in Germany in April 2014 on the level of distinctiveness of the mark applied for, did not make it possible to establish such distinctiveness across the entire European Union. Fourth, as regards three-dimensional marks, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the goods in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of CTMR. Therefore, the sign is insufficiently distinguishable from other shapes present on the market for it to be regarded, in the absence of other fanciful elements, as having the minimum distinctive character required.

Posted by: Laetitia Lagarde @ 14.43
Tags: General court, absolute grounds, confectionery,
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FRIDAY, 13 MAY 2016
General Court: Aroma is evocative, not descriptive for cooking ustensils

In case T‑749/14, Mr Peter Chung-Yuan Chang  registered the word mark AROMA for goods in Class 7: ‘Electrical cooking utensils, namely juicer, juice extractors, pasta makers for domestic use, food processors and blenders’; and Class 11: ‘Electrical cooking utensils, namely convention cooking ovens for domestic use, automatic bread makers for domestic use, food steamers for domestic use, grills, deep fryers, sandwich makers, waffle makers, soup warmers, rice cookers and warmers, food dehydrators, skillets, pressure cookers, hot plates, toaster ovens and roaster ovens, ice cream makers, and slow cookers’.

BSH Hausgeräte GmbH applied for a declaration of invalidity under Article 52(1)(a) of EUTMR read in conjunction with Article 7(1)(b) and (c) of that regulation.

The Fourth Board of Appeal of EUIPO overturned the Cancellation Division holding that the sign AROMA, which meaning, especially in English, German, Spanish and Italian, is synonymous with ‘flavour’, ‘smell’, ‘scent’, ‘perfume’, ‘bouquet’ and ‘fragrance’, could due to a direct and unequivocal conceptual link between the goods and the term ‘aroma’, be immediately perceived by the relevant public as referring to an essential characteristic or intended use of the goods.

Since the mark at issue was a purely descriptive indication of the goods covered, it was also devoid of distinctive character.  Finally, the mark had not in any way acquired distinctive character under Article 7(3) of that CTMR, as the applicant had failed to show the use which had been made of it in Germany, for example, where the sign AROMA is descriptive.

The applicant appealed to the General Court submitting that the Board of Appeal carried out an elaborate and complex form of reasoning, which an average consumer would not undertake, and accordingly assigned an indirect meaning to the sign AROMA. In addition, the meaning of the term ‘aroma’ never refers directly to the appliance itself, but to the food which is cooked in it, with the result that the word sign AROMA cannot be associated with either a characteristic or an intended use of the goods covered by that sign.

The General Court annulled the BoA's decision finding that the mark AROMA requires a certain degree of interpretation on the part of consumers, who will be unable to associate the mark directly with the goods  because the intended use of the goods at issue is not to preserve or accentuate the taste of foodstuffs and beverages, as EUIPO claims, but to prepare, cook, transform, process, heat, mix, blend, toast or roast foodstuffs and beverages.

That mark can even be regarded as demonstrating a certain degree of originality, since the term ‘aroma’ is not normally used in such a context and requires interpretation by the relevant public or a cognitive process to be set off in their minds to enable them to arrive at a conclusion as to the relationship, which is only remotely evocative, between the mark applied for and the goods covered.

Posted by: Laetitia Lagarde @ 19.25
Tags: general court, aroma, absolute grounds, cooking,,
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FRIDAY, 13 MAY 2016
ICC launches new report on specialist IP tribunals

The International Chamber of Commerce (ICC) has just released a report with the gloriously long title Adjudicating intellectual property disputes: an ICC report on specialised IP jurisdictions worldwide -- at a time when a growing number of countries are establishing specialized courts or divisions dedicated to resolving IP cases. According to the ICC:

Based on contributions from IP litigation experts in Europe, Asia, North and Latin America, the report aims to provide a better understanding of the current landscape of specialised IP jurisdictions (SIPJs) and the way they function, thereby contributing to the pool of knowledge that countries can draw upon when considering how to establish or improve their systems for resolving IP disputes. 

In case you were wondering, you can download this report here.

Posted by: Blog Administrator @ 15.52
Tags: ICC, International Chamber of Commerce,
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