General Court rules on belated evidence in EUIPO invalidity proceedings

In Case T‑476/15, European Food SA brought an invalidity action against the EUTM word mark FITNESS registered by Société des produits Nestlé SA for the following goods:

  • Class 29: ‘Milk, cream, butter, cheese, yoghurts and other milk-based food preparations, substitutes for dairy products, eggs, jellies, fruit, vegetables, protein preparations for human consumption’;
  • Class 30: ‘Cereals and cereal preparations; ready-to-eat cereals; breakfast cereals; foodstuffs based on rice or flour’;
  • Class 32: ‘Still water, aerated or carbonated water, spring water, mineral water, flavoured water, fruit drinks, fruit juices, nectars, lemonades, sodas and other non-alcoholic drinks, syrups and other preparations for making syrups and other preparations for making beverages’.                                       As regards the alleged descriptiveness,  the BOA found that most of the evidence produced before the CD post-dated the relevant point in time or concerned the territory of Romania before its accession to the EU. As regards the copies from dictionaries concerning the term ‘fitness’, that term did not designate an inherent characteristic of the goods concerned in the eyes of consumers in 2001 and therefore it was not sufficient to prove the descriptiveness of the contested mark. Moreover, the BOA rejected as being belated some further evidence submitted for the first time before it. It applied by analogy the third subparagraph of Rule 50(1) EUTMIR read in conjunction with Rule 37(b)(iv) of that regulation. Therefore, it found that the term ‘fitness’ had an evocative and ambiguous content, and was distinctive for the goods above.


European Food SA appealed. The Court held that Article 76 of EUTMR, read in conjunction with Rule 37(b)(iv) of the IR, does not imply that evidence submitted for the first time before the Boards must be regarded as belated by the BOA in invalidity proceedings based on an absolute ground for refusal.

Therefore, the BOA erred in law rejecting the evidence because of its late submission (contrary to opposition proceedings which is based only on the facts and evidence presented before the OD). Indeed, it is not inconceivable that the evidence may be relevant so as to modify the substance of the contested decision since it was related to the relevant point in time, namely the date on which the application for registration was filed. Since the Court cannot  replace EUIPO in assessing the evidence in question, it annulled the decision and remanded to the BOA.. [stay tuned for decision on whether Fitness is distinctive...].

Posted by: Laetitia Lagarde @ 17.41
Tags: General court, nestle, fitness,
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Final reminder: our IR-USPTO seminars start next week!

Here's a final reminder that there is a truly excellent series of MARQUES seminars ahead in the very near future -- specially conceived for any readers [and we know there are many!] who have been frustrated in their attempts to secure International Trademark protection in the US.  Details of this seminar, which takes place in Amsterdam, Munich and London, are reproduced again below, for your comfort and convenience.


"MARQUES and the USPTO: IRs and Designating the US": that's the title of a seminar that MARQUES is running, masterminded by the experienced Tove Graulund (Graulund Consulting, Denmark). For the uninitiated, Tove is a Life Member of MARQUES and a member of the MARQUES International Trade Mark Law & Practice Team (details of this team can be found here). 

According to impeccable sources:

The seminar will cover both legal and procedural issues, as well as explaining the tools available, and is designed to help applicants overcome objections when filing International Registrations based on the home application or registration. The seminar has been planned for the benefit of in-house counsel, trade mark lawyers and paralegals who work with the Madrid System on a daily basis.

Details of these seminars can be accessed via the MARQUES website if you click here. It comes in three versions:

  • Amsterdam, The Netherlands, Monday, 24 October 2016
  • Munich, Germany, Wednesday, 26 October 2016
  • London, UK, Friday, 28 October 2016
Posted by: Blog Administrator @ 08.05
Tags: USPTO, seminars,
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General Court: Gucci v Guess- the European episode

In Judgments T-461/15 and T-753/15 issued on 11 October 2016, the General Court dismissed two appeals in the latest Gucci v. Guess saga - see here for the Italian episode and here for the French episode as reported on this blog.

Guccio Gucci SpA brought invalidity and opposition proceedings both relating to the same mark which represent four interlocking capital letter ‘G’s Image not foundon the basis of earlier European and international "G" trade mark rights as represented below, registered for Classes  3, 9, 14, 16, 18 and 25 .


Invalidity proceedings filed against goods and services in Classes 3, 9, 14, 16, 18, 25 and 35

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Opposition proceedings  filed against Class 9 goods 'decorative and protective covers and cases for portable electronic devices, namely, personal electronic devices, cell phones, mobile phones, telephones, computers, laptop computers, tablet computers, notebook computers, mp3 players, portable music players, personal digital assistants, electronic reading devices, digital cameras, and cameras; eyewear’

Action based on the same marks as above and two additional marks

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Both actions were brought on the basis of Article 8(1) (b) and 8(5) of the EUTMR. At first instance, the Cancellation Division and the Opposition Division reached different results, respectively rejecting and upholding the actions.

The Fourth Board of Appeal concluded that there was no likelihood of confusion ruling that the signs were not similar in both actions.

Gucci appealed claiming that the signs are highly similar, inasmuch as each of them consists of a combination of capital ‘G’ letters, with the result that they will convey the same overall impression to the relevant public, the attention of which will be attracted more by the element ‘g’, which they have in common, than by their minor differences. Furthermore, the earlier marks have an exceptionally high level of distinctiveness and an indisputable reputation. In addition, the likelihood of confusion is further increased by the fact that the opposition was based on the earlier marks’ membership of a family of marks, which all consist of a combination of capital ‘G’ letters.

The Court rejected those arguments and upheld the findings of the BOA. Visually, for the Guess mark, the relevant public will not it break down into its various elements, and by retaining the image of the sign as a whole, it will not perceive in that mark the capital letter ‘G’, represented by the earlier marks, but rather an abstract ornamental motif. Moreover, having regard to the stylisation of the sign and to the fact that its elements are interlocking or joined together, it could be perceived both as reproducing stylised letters, such as the capital letter ‘X’ or the letter ‘e’, and as a combination of figures and letters, such as the figure ‘3’ and the letter ‘e’. From an aural and conceptual perspective, the marks will be perceived as a purely figurative sign without word elements, or, at the very most, as referring to  the capital letter ‘G’, which does not have any semantic content of its own.

Therefore the GC confirmed the marks are overly different. Having regard to the representation, positioning and stylisation of their components and to their completely different structure, the signs at issue gave a completely different overall impression. Since one of the necessary conditions for the application of 8(1) (b) provision was not satisfied, it was not necessary to examine whether the goods and services covered by the marks at issue were similar,  As regards the ground set out in Article 8(5) of EUTMR since the signs at issue were dissimilar, the first condition necessary for the application of that provision was not satisfied and the actions were also rejected on that ground.

Posted by: Laetitia Lagarde @ 15.15
Tags: General Court, Gucci, Guess, G,
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WIPO seminar on the Madrid System: two days that could change your world

MARQUES has received from its good friends at WIPO the good news that another Practical Seminar on international trade mark protection under the Madrid System will soon be upon us.  According to WIPO:

You are invited to register now to attend the upcoming Practical Seminar on the Madrid System at WIPO HQ in Geneva, Switzerland [it's necessary to add this, since there are more Genevas in the United States than there are in the rest of the world put together], on November 24 and 25, 2016.  The Seminar will be conducted in English and offers in-depth training on the Madrid System for new and existing users.
The Seminar is a highly practical “masterclass”, focusing on Madrid System procedures, including filing, examination and registration. Topics will be presented by WIPO experts, representatives from IP Offices and a private sector practitioner.
On average, 98% of previous attendees found that the event fully met their overall expectations, in terms of the expertise and guidance required to efficiently use the System. Who should attend? The Seminar is a must for users of the Madrid System looking to improve their knowledge and practical skills, and stay up-to-date on the System’s recent developments and trends. Hands-on sessions featuring real-life examples and discussion opportunities are planned [if there are "hands-on" sessions in seminars on registration, shouldn't there be "hands-off" sessions in seminars on enforcement?].

Topics to be covered during the Seminar will include

  • a detailed look at how to file an international application, with practical tips on how to complete the official Form MM2, and a live demonstration of the Madrid e-Filing interface; 
  • presentation and explanation of the certification process in a Contracting Party Office; 
  • in-depth overviews of the examination and refusal procedures of several Designated Contracting Parties, including Q&A sessions and advice on how to avoid or overcome possible irregularities and refusals; 
  • a presentation on operational and legal issues linked to managing an International Registration at the post-registration stage; 
  • an in-depth review and demonstration of Madrid E-Services; and 
  • one-on-one discussions with WIPO examiners, upon request.

For more details, please access the Provisional Program .
The registration fee of 600 CHF covers operational costs including materials, lunches, and morning and afternoon teas.  All participants should register online by November 18, 2016.  Places are limited and will be attributed on a first-come, first-served basis. 

Posted by: Blog Administrator @ 17.09
Tags: Madrid System, WIPO seminars,
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Answering the call: a new strategy from EUIPO

MARQUES has learned from its friends at EUIPO that the organisation has a brand new strategy for dealing with incoming phone calls.  According to the information we have received:

When information centre staff is contacted, the EUIPO always tries to answer queries straight away. However, sometimes, there is a need to discuss particular aspects of their file with an examiner.

This new strategy aims at extending the contact hours of examiners and putting into place a call back system in case the examiner is not available at a particular time. The purpose of this initiative is to increase the examiners’ accessibility and subsequently the user satisfaction.

For any enquiries please contact

Presumably, you can also phone ...

Posted by: Blog Administrator @ 13.00
Tags: EUIPO user services,
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Don't duck the issues! Get wise with EUIPO

You may not be aware of EUIPO’s Academy Tuesday webinars.  Starting tomorrow, they look like this:

11 October: Time: 11:30-12:00 Similarity (in Spanish), Intermediate level

18 October: Time:10:00-11:00 Convergence Programme 7 - Phase II, Advanced level; Time:11:30-12:00 Come trovare il miglior termine HDB per il vostro marchio dell'Unione Europea (in Italian), Intermediate level

25 October: Time: 10:00-11:00 The economic cost of IPR infringement in the EU, Intermediate level; Time: 11:15-12:15 Updates on eFilings and the User Area, Intermediate level; Time: 12:00-12:30 Designview (in Spanish), Intermediate level.

If you can't log on to enjoy the webinar in real time, all is not lost.  Three days after the broadcast, the recorded webinars will be available online.

To access the webinars and check next month’s programme, just consult the Academy's event calendar. Times are approximate and subject to change. Open to all, each webinar lasts approximately 30 to 60 minutes and a live chat with the speakers will be made available.

Please visit the Academy´s Learning portal for more information on EUIPO courses. Or you can email the Academy at

Posted by: Blog Administrator @ 07.48
Tags: EUIPO Academy, webinars,
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Switzerland: limited use of earlier mark

Havana Club Holding opposed the registration of the younger Cana Club (fig., see above) mark based on its registration HAVANA CLUB, claiming protection - like the younger mark - for alcoholic beverages. Both the Swiss IPO and the Federal Administrative Court on appeal found that the mark HAVANA CLUB was intially very weak so that there was no legally relevant likelihood of confusion with the younger mark.

Havana Club then argued that its mark had acquired a reputation ("gesteigerte Bekanntheit" - not the same as acquired distinctiveness, because the mark was inherently distinctive, but weak), and submitted survey evidence in support.

The Federal Administrative Court's decision is interesting  because of the critique of the survey evidence, which stemmed from an online "brand tracker" survey of 2,012 persons, but excluded persons above the age of 55. This alone disqualified the survey in the opinion of the court, because persons above the age of 55 are part of the relevant consumers (judges may have been butt-hurt that they are considered irrelevant...).

The survey further limited the surveyed persons to those consuming rum (711 of the 2,012), which is another no-no, because the relevant goods are alcoholic beverages. Among those, 11% mentioned HAVANA CLUB when asked "when you think of trade marks for rum, which mark first comes to mind?" and another 17% mentioned HAVANA CLUB when asked "which other marks for rum do you know?". The problem with these questions was, as the court pointed out, that they presumed that the sign was a mark. This was not suitable to demonstrate the distinctiveness of the sign.

The survey report further indicated that 47% of the rum drinkers said they recognized the HAVANA CLUB mark when shown the logo, but it remained unclear which logo exactly was shown, which made the evidence useless.

The decision shows that it is difficult to use "brand tracker" surveys and similar instruments not specifically designed to prove acquired distinctiveness in a court of law, although I do believe the Federal Administrative Court erred in strictly applying the criteria for proof of acquired distinctiveness - that was not the issue, the mark was distinctive. The question was whether it had become so well-known that it became a strong(er) mark.

Decision B-5653/2015 of 14 September 2016

Posted by: Mark Schweizer @ 13.20
Tags: Switzerland, survey evidence,
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