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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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!


Posted by: Nikos Prentoulis @ 13.03
Tags: Greece, absolute grounds, distinctive character, Acropolis, spirits,
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General Court: AquaPerfect v WaterPerfect

In case T-123/14, the General Court annulled the decision of the 4th Board of Appeal concerning the following opposition proceedings

Arçelik A.Ş. (Turkey) Contested CTM

BSH Bosch und Siemens Hausgeräte GmbH (Germany)-  eARLIER ctm



 Class 7 ‘Electric motors (other than those for land transportation vehicles); pressured air producers, compressors; pumps other than machine or motor parts, namely hydrophores, water pumps (electro pumps, motor pumps), pumps for heating installations; pumps as machine or motor parts (liquid and gas pumps); electric apparatus used in the kitchen for chopping, grinding, crushing, mixing and crumbling, namely mixers, blenders, kitchen robots, electric knives, meat-grinding machines, garbage disposal machines; dishwashers, washing machines and dryers, electrical or motor-operated floor polishing machines; electric vacuum cleaners and electric carpet washing machines and their bags, pipes and parts thereof

Class7 – ‘Electrical household and kitchen machines and apparatus (included in Class 7), in particular electrical kitchen machines and apparatus including grinders/crushers, mixing and kneading devices, fruit pressing machines, de-juicers, juice centrifuges, grinding machines, cutting devices, electrically powered tools, tin openers, knife sharpening devices and appliances and devices for making beverages and/or food, pumps for dispensing chilled beverages for use in combination with devices for chilling beverages; electrical waste disposers, namely waste grinders and waste compacting machines; dishwashers; electric machines and devices for cleaning laundry and clothing (included in Class 7), including washing machines, spin dryers; ironing presses, ironing machines, included in Class 7; electric household cleaning equipment, including electric window cleaning equipment, electric shoe polishers and vacuum cleaners, wet and dry vacuuming apparatus; parts for all the aforesaid goods included in Class 7, in particular flexible tubes, pipes, dust filters, dust filter bags, all for vacuum cleaners

The BoA had rejected the opposition : even though the goods in question are partly similar and partly identical, there is no likelihood of confusion between the signs at issue, owing to the low distinctive character of the earlier mark,  and the fact that the only element the signs had in common was the weakly distinctive part of the earlier mark, namely the laudatory element ‘perfect’, as well as due to the low degree of visual and phonetic similarity of the signs.

While endorsing the assessment of the comparison of the goods, the General Court found that contrary to what the Board of Appeal held, the signs at issue do have some conceptual similarity.

That finding was not affected by OHIM’s argument that the element ‘perfect’, is devoid of distinctive character or has, at most, a weak distinctive character.

While that element may indeed be considered to have a weak distinctive character, owing to the laudatory character it will be attributed by the relevant public, the fact remains that none of the other elements making up the same signs can be considered to have a greater distinctive character or be dominant. The elements ‘aqua’ and ‘water’ also have a weak distinctive character owing to the fact that they will be perceived by the relevant public as meaning ‘water’ and that the goods covered all involve, in one way or another, water. Accordingly, the fact that the element ‘perfect’ of the signs in question has a weak distinctive character, and that it is positioned at the end of the signs while their dissimilar elements are at the beginning, has no consequence on the overall impression of the signs at issue.

Therefore, based on an overall impression, the signs at issue are similar to an average degree.

Consequently, in the light of the identity or the similarity of the goods, the average similarity, particularly at the visual and phonetic level of the signs, and the normal level of attention of a part of the relevant public, the Board of Appeal was incorrect to find that there was no likelihood of confusion between the mark applied for and the earlier mark.

Posted by: Laetitia Lagarde @ 18.20
Tags: General court, likelihood of confusion, aquaperfect, waterperfect,
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National costume distinctive as folklore though not as trade mark for local sweets

In opposition proceedings before the Benelux Office for Intellectual Property (BOIP), Inter-Noba B.V. (Inter-Noba) opposes the registration of JB Diesch B.V.’s (JB Diesch) Benelux trade mark in class 30, to be used particularly for well-known local sweets from the province of Zeeland in the Netherlands called ‘boterbabbelaars’ (tasting somewhere between butterscotch and toffee). These sweets are typically sold in packaging bearing pictures of Zeelandic folklore such as girls wearing national costume. Inter-Noba B.V. is the holder of a Benelux trade mark registered in class 30 and used for botterbabbelaars. The marks in issue are pictured below.







    Inter-Noba’s trade mark                                   Opposed trade mark

The BOIP had to determine whether there exists a risk of confusion on the part of the average consumer between both marks. The BOIP points out the differences between the two trade marks, such as a diamond shaped background frame as opposed to a round one, the flowers pictured in the blue, circular frame of the opposed mark, the red emblem and the rectangular banner of blue crosses and white diamonds not included in Inter-Noba’s mark and the differences between the word elements.

Despite the (notable) differences, the BOIP holds there exists no risk of confusion between the two marks. Both the word and figurative elements of the marks are descriptive for the products for which they are used. The average consumer is aware that Zeelandic boterbabbelaars are typically marketed using pictures of girls in Zeelandic national costume. While Zeelandic national costume, which is held by the BIOP to be very well-known, can be distinctive as folklore, it cannot distinguish boterbabbelaars as the national costume clearly indicates that these goods are originating from Zeeland. Despite the average consumer knowing that Zeelandic national costume is an indication of origin of the products on which it is pictured, the consumer shall not consider these products to originate from the same undertakings. In case of trade marks constituting of both word and figurative elements, the descriptive elements of the marks shall not be considered by the average consumer to be the distinctive parts of the trade marks. Knowing that Zeelandic boterbabbelaars originate from Zeeland, the consumer shall pay more attention to the non-descriptive elements of the trade mark, such as the geometric shapes, the red emblem and the particular differing details of the national costume pictured in both marks. Hence, despite both trade marks bearing similar descriptive elements, the marks contain a sufficient number of differences for the average consumer to be able to distinguish between both marks. The BOIP therefore rejects the opposition.   

Written by Denise Verdoold                

Posted by: Gino Van Roeyen @ 07.58
Tags: Benelux, BOIP, opposition, confusion, distinctiveness, sweets,
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'Ius' held to be descriptive for legal services - No ius?

On 3 February 2015, the Brussels Court of Appeal held that the word ‘ius’, which is Latin for ‘law’, is descriptive for legal services and can therefore not be registered as a trade mark.

A Mr De Smet had applied at the Benelux Office of Intellectual Property (BOIP) for the word ‘ius’ to be registered as a Benelux word mark in class 35 (advertising services) and 42 (scientific and technological services). Please note that at the time of the application, legal services were still contained in class 42 under the eighth edition of the Nice Classification. Since the entering into force of the ninth edition in January 2007, legal services are contained in class 45. This should be kept in mind when reading the decision of the Court of Appeal, which focuses on the distinctiveness of the mark for legal services in - then - class 42.

After the word mark had been registered following the BOIP’s accelerated registration procedure, the BOIP ordered the surrender of the mark on the basis that it is descriptive for legal services.

The arguments submitted to the BOIP by Mr De Smet arguing that ‘ius’ constitutes a valid trade mark were rejected. On appeal before the Brussels Court of Appeal, however, the claims of Mr De Smet were upheld and the BOIP was ordered to register the word mark in class 35 and 42. In proceedings before the Court of Cassation, the decision of the Court of Appeal was reversed, so that now, the Brussels Court of Appeal (in a different composition) again had to consider the matter.

The Brussels Court of Appeal held that as the word ‘ius’ is Latin for ‘law’ it cannot be registered as a trade mark for, inter alia, legal services for lack of distinctiveness.

Despite the services offered under the mark being aimed at both consumers and professionals, the Court held the relevant public in this matter constitutes the average consumer. The average consumer looking for legal services has a high level of attention as a result of, inter alia, the high cost of these services.

The argument of Mr De Smet that the average consumer will not be familiar with the meaning of the Latin word ‘law’ so that ‘ius’ cannot be held to be descriptive is rejected by the Court. The average consumer looking for legal services will perceive the word ‘ius’ as an indication of the nature or characteristics of these services. The following considerations are decisive for this ruling. Apart from the Latin language having had a great influence on the languages of the Benelux, Latin words are often used for legal services. The average consumer is aware of this. The names of many law firms contain the word ‘ius’, the word is defined in Dutch dictionaries, it generates many law-related hits on Google and many legal terms such as justice and jurisdiction are derived from the word ‘ius’. Hence, ‘ius’ is held to be descriptive for legal services as it is capable of describing the nature or characteristics of these services.

Mr De Smet also argued that the BOIP had failed to distinguish between the classes for which registration was pursued. The refusal to register the mark had instead only been based on just one type of services contained in the trade mark application, i.e. legal services. In this light, Mr De Smet requested the Court of Appeal to order the BOIP to register the word mark ‘ius’, if necessary only for part of the designated services. This argument was also rejected by the Court of Appeal. According to established case law, the Court of Appeal can only order the BOIP to register trade marks in certain classes or for certain services contained in a class in case the investigation on absolute grounds carried out by the BOIP also distinguished between classes or categories of goods or services. Mr De Smet had not requested the BOIP to, in case this would be necessary, limit the registration to only part of the services for which the trade mark had been applied for. Therefore, the BOIP could refuse the registration of the mark for all classes involved on the basis of the argument that the mark lacked distinctiveness.   

Written by Denise Verdoold

Posted by: Gino Van Roeyen @ 07.48
Tags: BOIP, legal services, Belgium, Benelux, descriptive,
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The Market Court in Finland gave a decision in September 2014 (MAO: 646/14) in a trade mark dispute between Paramount Pictures Corporation and a Finnish company Rautakesko Oy, which ran a building, renovation and home improvement products and services business. The dispute proceeded from the Board of Appeal of the Finnish Trade Mark Office to the Market Court after the Trade Mark Office rejected Paramount’s challenge to the registration of the trade mark MISSION POSSIBLE.

The main issues were first, whether Rautakesko’s national trade mark registration MISSION POSSIBLE (no 252379 of 31 December 2010) was confusingly to Paramount’s Community trade mark registration MISSION IMPOSSIBLE (no. 9472515 of 25 October 2010). According to the Finnish Trade Marks Act (Chapter 1, Section 14(1), Point 9) a trade mark shall not be registered if it is liable to be confused with a Community trade mark that has been registered on the basis of an earlier application.  Additionally, trade symbols shall be regarded under the Act as liable to cause confusion only if they apply to goods of identical or similar type (stated in Chapter 1, Section 6(1) of the same Act; the same principle applies to services, as stated in Chapter 1, Section 1(3)).

The Market Court secondly had to consider whether the trade mark MISSION IMPOSSIBLE was considered a trade mark with a reputation against the goods and services covered by Rautakesko’s MISSION POSSIBLE. According to the Finnish Act (Chapter 1, Section 6(2)) confusion of trade symbols may be judged in favour of a symbol that has a reputation in Finland where the use of another's trade symbol without due cause would constitute unfair exploitation of, or action detrimental to, the distinctive character or fame of the earlier trade symbol.

Comparing the similarity of the goods and services in question, the Market Court noted that MISSION IMPOSSIBLE was registered for specific goods and services in classes 9, 14, 16, 18, 25, 28, 35 and 41, while MISSION POSSIBLE was registered for specified goods and services in classes 1, 2, 4, 5, 6, 7, 8, 11, 17, 19, 20, 21, 22, 24, 27, 34, 35, 36, 37, 39, 45. Market Court did not disagree with the view of the Board of Appeal of the Finnish Trade Mark Office that metal foils” in class 6 for MISSION POSSIBLE was similar to “plastic foils” in class 16 for MISSION IMPOSSIBLE. In other respects the goods and services were very different. Regarding class 35, the Market Court found the parties’ services to be completely different from each other as the goods of the prior registration concerned sales promotion of various occasions and events whereas the services of the later mark covered mainly office functions and retail sale of different goods to be sold in hardware stores.

The Market Court stated that, when evaluating the trade marks’ appearance, they were visually very similar: both marks included the two words “mission” and “possible”, the later mark MISSION POSSIBLE is included in its entirety in the earlier trade mark MISSION IMPOSSIBLE, the only difference being the prefix “im” which did not eliminate the similarity of appearance. The trade marks were also pronounced in a similar way. As regards to the meaning of the trade marks, there was certain wordplay in the trade marks, the meanings of the trade marks being opposite to one other. 

On this basis the Market Court stated that, when assessing the trade marks as a whole, they were not confusingly similar. Taking note of the similarity evaluation as a whole (as in the decision of the Board of Appeal of the Finnish Trade Mark Office), there was also no confusing similarity as regards to the “plastic foils” and “metal foils” mentioned above.

There being no confusing similarity between the trade marks, the Market Court then assessed whether the trade mark MISSION IMPOSSIBLE was a trade mark with a reputation. This requires that a significant part of the target group for the goods and services of the earlier mark know the mark in question. All the matters that are considered significant are evaluated, such as market share, the intensity with which the trade mark is used, the geographical extent and time of the use and the efforts that the company has invested in making the trade mark known.

Paramount had submitted material to the Market Court including newspaper clips, ratings in Finland and worldwide, publication information on DVD and VHS in certain countries and clips from a movie database showing the awards that the Mission Impossible movies have won. Some of the material was regarding the Mission Impossible movies and some of the material on Mission Impossible TV series. The Market Court stated that the material shows that both the movie and the TV series are -- at least to some extent -- known worldwide and in Europe. However, regarding Finland, the material is scant and was insufficient to show that the target group knew the trade mark MISSION IMPOSSIBLE before the filing date of the MISSION POSSIBLE trade mark. Accordingly the trade mark MISSION IMPOSSIBLE is not a trade mark with a reputation in Finland.

Based on all of the above, the Market Court dismissed the claim made by Paramount. The case is a good basic example on the evaluation of both likelihood of confusion and the elements in evaluating trade mark with a reputation -- naturally with the delicious flavour of the movie industry.

 The decision can be found here (in Finnish).

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

Posted by: Jeremy Phillips @ 08.42
Tags: Finland, infringement, comparison of goods and services, mark with a reputation,
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March ETMR now out

The March 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 however contains no fewer than seven cases, including the following:
* Unilever plc v Société des Produits Nestlé S.A, a decision of the Controller of the Irish Patents Office in which the owner of the RANDOMS and LET YOUR RANDOM SIDE OUT trade marks for ice creams and frozen confections sought to block a later application to register RANDOM ACTS OF HAPPINESS for the same goods.
* Wilko Retail Ld v Buyology Ltd, a difficult decision of the Intellectual Property Enterprise Court, England and Wales, in which a trade mark was held infringed but a order to disclose the identity of the suppliers of infringing goods was refused.
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: Jeremy Phillips @ 04.49
Tags: ETMR,
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