SATURDAY, 28 MARCH 2015
May the force be with you in General Court

In case T-558/13, the General Court annulled OHIM's decision regarding the following invalidity action :

FSA - applicant

Motokit Veículos e Acessório

FSA K-FORCE

FORCE-X

Class 9: ‘Cycle helmets’;

Class 12: ‘Bicycle and bicycle parts and accessories thereof, namely: bicycle frames and their parts, bicycle head tubes, bicycle front forks; bicycle wheels, bicycle hubs, bicycle spokes, bicycle rims; bicycle brake assemblies; bicycle cranks; bicycle chains, chain rings for bicycles; seat posts for bicycles, bicycle saddles; quick release devices for bicycle wheels; bottle cage; handlebars for bicycles, bicycle handlebar stem, headset bearings for bicycles; bicycle gears, derailleurs, sprockets for bicycles, bottom brackets for bicycles, axles for bicycles, bearing journals’.

 

Class 9: ‘Goggles, lenses for goggles; protective face masks; helmets; protective optical goods, headgear and clothing’;

Class 12: ‘Bicycles, parts and fittings for bicycles, including handlebars, handlebar tape, handlebar grips, bar ends, handlebar stems, seats, crank sets, pedals, hubs and rims, air pumps for bicycles, except valve keys and pliers, tyres and inner tubes’.

 


The Second Board of Appeal of OHIM upheld the CD's decision and found there was a likelihood of confusion between the marks at issue in the mind of the relevant public, within the meaning of Article 8(1)(b) of Regulation No 207/2009. Specifically, it found that the goods in question were identical and that the signs were similar to a low degree visually, to a certain degree phonetically and, for the part of the public understanding the meaning of the word ‘force’, conceptually. In addition, the word ‘force’, which alludes to the durability of the goods in question, was not totally devoid of distinctive character and that the evidence provided by the applicant on the banal nature of the word ‘force’ in relation to the goods concerned on the European market did not cause that word to be totally devoid of any distinctive character. The Board of Appeal also held that the ‘k-force’ part of the contested mark, similar to the earlier mark FORCE-X, still had an independent distinctive role in the contested mark, even though that mark also incorporated the company name of its proprietor, namely ‘fsa’.

In the appeal before the GC, the applicant submitted that the word ‘force’, synonymous with strength, energy and power, is descriptive of a characteristic of the goods concerned and that it has weak distinctive character, due to its banality, on the European market. It relied on several documents, such as printouts of web pages referring to marks for bicycle parts marketed in Europe or for online bicycle shops, which include several marks using the word ‘force’ to describe the characteristics of their products. Furthermore, the applicant criticised the Board of Appeal for not taking those documents into account.

 In the present case, it must be pointed out that the word ‘force’, synonymous with strength and power, can describe one of the characteristics of the goods concerned. Furthermore, for some goods in Class 12, it must be held that that word can also designate one of their purposes. For example, the purpose of the brakes is to offer increased power compared to the power of an ordinary component. Consequently, it must be considered to be descriptive for those goods.

Furthermore, as is apparent from the evidence adduced by the applicant, the word ‘force’ is commonly used, on the European market, in trade marks in the domain of cycling, thus rendering it banal. The Board of Appeal was therefore wrong to find that the documents produced by the applicant were not relevant for the purpose of demonstrating the banality of the use of that word on the European market.

As regards the element ‘fsa’, included in the contested mark, the applicant claims that it occupies, owing to its reputation, a dominant position in the contested mark, precluding a likelihood of confusion between the marks at issue.

In that regard, it must be noted that the evidence adduced by the applicant demonstrates the use and not the reputation of the element ‘fsa’ and in no way enables the relevant public to interpret it as meaning ‘Full Speed Ahead’. Even if it is not inconceivable that the element ‘fsa’ is known in certain professional cycling circles, it is not apparent from the file that it is well known to all the relevant public, composed also of the general public. The Board of Appeal was therefore correct to find, that the reputation of the element ‘fsa’ had not been demonstrated and, therefore, to reject the applicant’s argument.

It follows that all of the elements of the signs at issue must be taken into account. Even though the word ‘force’ has a weak distinctive character, it cannot be disregarded completely for the purposes of the comparison of the signs at issue.

The GC therefore annulled the contested decision on the grounds that the Board of Appeal did not take into account the fact that, due to the specific technical characteristics of the goods in Class 12 and the protective objective of the cycle helmets in Class 9, the relevant public’s level of attention, in respect of those goods, is higher than average. Similarly, it must be noted that the word ‘force’, due to its descriptive character and its banality on the European market, has a weak distinctive character in respect of the goods concerned. Consequently, the marks at issue, taken as a whole, have only a low degree of similarity.

Thus, despite the identity of the goods covered by the marks at issue, there is no likelihood of confusion between those marks.

Posted by: Laetitia Lagarde @ 17.14
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WEDNESDAY, 25 MARCH 2015
The protection of luxury: not a luxury but a necessity

MARQUES is conducting a Luxury Brands Symposium, "The Protection of Luxury Brands in a Fast Moving World", on Thursday 25 and Friday 26 June 2015. The venue is the Hotel Baur au Lac, Talstrasse 1, 8022 Zurich, Switzerland. Zurich is an appropriate venue, since the city is said to be one of the richest of the world. Its wealth can be best seen in the famous Bahnhofstrasse, the home of many Swiss banks and many shops with jewellery, watches and other luxury goods. 

As MARQUES members know, luxury brands are a phenomenon with particular issues -- its profit margins tempt some of the most enterprising and determined infringers, while brand loyalty among consumers is a value asset that demands passion and determination in terms of brand protection. This symposium provides brand owners, marketing experts, lawyers and others dealing with luxury goods with the chance to exchange their experience and views on the main issues of luxury brands.

The registration fee for this meeting is €750.

You can check out the full day's programme here and register for it here.

Posted by: Jeremy Phillips @ 20.29
Tags: Luxury Brands Symposium,
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TUESDAY, 24 MARCH 2015
Meet the Irish Judges: another MARQUES attraction

"Meet the Irish Judges on Trade Mark Litigation", on Friday 5 June 2015, is another in the popular series of MARQUES events that bring together trade mark owners, practitioners and members of the judiciary for a chance to share news and views on a subject that is of concern to them all -- trade mark litigation.

The venue, somewhat inauspiciously, is the Criminal Courts of Justice, but this blogger is sure that all the participants will 'acquit' themselves admirably. These good souls are Uwe Over (Chair, MARQUES) plus Mr Justice Sean Ryan (President of the Court of Appeal), Patricia McGovern (DFMG Solicitors, MARQUES Anti Counterfeiting and Parallel Trade Team), Mr Justice Frank Clarke (Supreme Court), the legendary Ms Justice Fidelma Macken (formerly Judge of the Court of Justice of the European Union and of the Supreme Court), Mr Justice Peter Charleton (Supreme Court) and Maureen Daly (Beauchamps Solicitors).

But that's only the star attractions before lunch.  After lunch, it all starts over again with the following participants: Mr Justice John Cooke (formerly Judge of the Court of First Instance of the European Communities and of the High Court), Mr Justice Peter Kelly (Court of Appeal), Ms Justice Mary Finlay Geoghegan (Court of Appeal), Ms Justice Caroline Costello (High Court), Anne Bateman (Philip Lee Solicitors) and Shane Smyth (FR Kelly, MARQUES Council and member of the MARQUES Education Team). 

This blogger can't recall ever seeing so many judges offering their time and their support to a national Meet the Judges event. This is a real tribute to the importance of trade mark law in the Irish economy and to the efforts of the organisers to put together such an attractive panel.

Full details of this programme are available here.  To register, click here.

Posted by: Jeremy Phillips @ 10.02
Tags: Meet the Judges, Ireland,
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MONDAY, 23 MARCH 2015
OHIM's IP Mediation Day: now you can register!

Class 46 is delighted to tell readers that the IP Mediation Open Day, organised by our friends at the Office for Harmonisation in the Internal Market (OHIM), is now open for registration.  The date is 15 June and the venue is OHIM’s very own headquarters in Alicante, facing the sparkling Mediterranean sea. Just click here and you will be instantly transported to the registration page, where you will find a programme for the day and as many details as you could possibly need.

It is even half as much fun as last year's outstanding IP Mediation Conference (if you want a flavour of this event, click here, here, here and here for reports of some of the sessions), this promises to be an interesting event, with a wide range of experienced activity leaders and activities focused on IP mediation and its uses, with hands-on sessions featuring experienced mediators, mock mediations and detailed information about the mediation process.

OHIM looks forward to seeing you there. If you have any further questions about the event, please email on the somewhat ungainly but definitely functional address of ohimipmediationopenday@oami.europa.eu.

Posted by: Jeremy Phillips @ 00.01
Tags: OHIM IP Mediation Open Day,
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FRIDAY, 20 MARCH 2015
Poland: proper arguments for reopening a trade mark case

The Polish Patent Office dismissed the request to invalidate the right of protection for the word trade mark PHYTOLYZIN R-195394. The request was filed by Dr. med. Matthias Rath, the owner of the earlier International trade mark registration LyCin IR-813677. The Voivodeship Administrative Court in its judgment of 15 November 2012 case file VI SA/Wa 790/12 dismissed a complaint filed against this decision, and the Supreme Administrative Court in its judgment of 3 July 2014 case file II GSK 492/13 dismissed a cassation complaint filed by Dr. med. Matthias Rath.

On November 2014, Mr Rath filed before the Supreme Administrative Court a request for the annulment of previous proceedings, and a motion to reopen the proceedings and to issue an award of costs in accordance with prescribed procedure and also submitted as a supplement to the cassation complaint the decision of the Office for Harmonisation in the Internal Market of March 2013 on invalidity of the trade mark PHYTOLIZIN along with its certified translation into Polish. Mr Rath argued that the proceeding should be deemed by the Court as invalid because as the representative of the trademark owner appeared an attorney who submitted at the hearing a substitution of PoA as signed of July 2014. However, the power of attorney was invalid, because it was issued on behalf of another company, which was not a party to the proceedings.

The Supreme Administrative Court in its judgment of 9 January 2015 case file II GSK 2803/14 rejected the request and held that such motion is allowed if a party does not have the capacity and standing to bring proceedings or was not properly represented or if as a result of violations of the law was deprived of possible actions. However, the reopening cannot be requested if, before the judgment becomes final the inability to act ceased, the lack of proper representation was raised by way of objection, or a party has confirmed all procedural actions. These pleas and arguments for reopening, however, did not apply to Mr Rath. The argument for reopening of the proceedings was based on lack of adequate representation refered to the representation of the trade mark owner, not Mr Rath, and such a request may only be raised by a party that was not properly represented.

Posted by: Tomasz Rychlicki @ 13.13
Tags: Polish Act on Proceedings Before Administrative Courts, Polish courts, Polish law, Polish Supreme Administrative Court,
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TUESDAY, 17 MARCH 2015
General Court: L'Wren Scott v Loren Scott

In Case T-41/12, the General Court dismissed the appeal in the following opposition :

LS Fashion, LLC (USA)

Opponent : Gestión de Activos Isorana, SL (Spain)

L’Wren Scott

Loren Scott

Class 25 : Clothing, namely shirts, sweaters, pants, trousers, t-shirts, dresses, skirts, coats, jackets, pullovers, swimsuits, underwear, belts, gloves and scarves; headgear, namely hats, caps and visors; footwear; blouses, blousons, bath slippers, slipper; body linen, corsets, ties, breeches, fur stoles, bras suspenders, garters, petticoats, leotards, pyjamas, panties and underpants, sports shoes, scarves, bandanas, peignoirs, dressing gowns, nightdresses, shorts, jerseys, ski suits, foulards

 

Class 25 : Clothes for ladies, men and children, included boots, shoes and slippers

The Opposition Division found that evidence of genuine use of the earlier mark had been adduced as regards clothes for ladies, men and children, but that the documents made no reference to boots, shoes and slippers.  The Court confirmed that the evidence demonstrated that the sales effected, even though they were not considerable, constitute use which objectively is such as to create or preserve an outlet for the goods concerned.

Furthermore, the goods in question are identical or similar  and the signs at issue have an average degree of visual and phonetic similarity ; the signs did not convey any concept. That conclusion cannot be invalidated by the applicant’s argument as to the fame of the designer who is behind the mark applied for and which, it claimed, the Board of Appeal failed to take into consideration. It is evident that the documents submitted in the course of the administrative proceedings, with the exception of one press article published in El Mundo and dated 7 March 2006, are all subsequent to the date of the application for registration, namely 11 July 2006, and their content does not in any way refer to notoriety acquired before that date, with the result that those documents cannot be taken into consideration for the purposes of establishing the notoriety claimed.  Further, as OHIM correctly observes, even if, in any event, the documents produced by the applicant were capable of establishing that Ms L’Wren Scott was known to certain celebrities, it is clear that those documents do not show that Ms L’Wren Scott herself had celebrity status in Spain for the relevant public, with the consequence that the relevant public would perceive the mark applied for as forming an autonomous conceptual unit, rather than as the mere association of two elements, namely ‘l’wren’ and ‘scott’.

Consequently, having regard to the average distinctiveness of the earlier mark, there is a likelihood of confusion between the signs at issue according to Article 8(1) b CTMR.

Posted by: Laetitia Lagarde @ 17.35
Tags: General court, L'Wren Scott;Loren Scott,
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TUESDAY, 17 MARCH 2015
Switzerland: Do I need to put an email address on my e-commerce site?

According to art. 3 lit. s of the Act Against Unfair Competition, websites that offer goods or services must contain clear and complete information about the identity and contact address of the offeror, including its electronic mail (in German "elektronische Post"). The provision does not apply to websites that advertise goods or services, but rely on voice telephony or email to conclude an agreement (art. 3(2) Act Against Unfair Competition).

Art. 3 lit. s was introduced a while ago, but so far, there have - to my knowledge - not been any court decisions on the meaning of "electronic mail". Taken literally, it seems to indicate that the website must list at least one email address. But many e-commerce websites instead use contact forms, which make handling large volumes of enquiries easier and are less susceptible to spam (when using appropriate measures).

The Commission on Fairness in Commercial Communication ("Lauterkeitskommission"), a self governing body, had to decide on the interpretation of "electronic mail" when a consumer complained that an e-commerce website contained a contact form, but no email address. It held that the provision of a contact form was sufficient, and the operator of the website had not run afoul of art. 3 lit. s Act Against Unfair Competition. The Lauterkeitskommission is no court, but this decision should at least give some guidance that an email address is not required if there are other, equally convenient, means of contacting the website's operator provided.

Link to the decision (PDF, see page 4).

Posted by: Mark Schweizer @ 15.43
Tags: Switzerland, e-commerce, impressum, contact form,
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