WEDNESDAY, 6 MAY 2015
The Joy of June: WIPO roves to Finland

After a recent excursion to that exotic and far-off place we Europeans like to call "The Rest of the World", the World Intellectual Property Organization (WIPO) Roving Seminars are returning to our beloved Europe. Our roving friends will be flying in to Finland in time to deliver their message about WIPO's services and initiatives on Monday, 8 June 2015.

As is customary, additional information can be found on WIPO website. It's a big website with a vast quantity of data on it, but if you click this little bit just here you should be able to locate it.

 Despite their many and varied talents, even WIPO can't do everything themselves, which is where a bit of local assistance comes in handy. That assistance is provided by the Finnish Patent and Registration Office, from whose website you can extract information concerning registration, the address of the venue and, since this is the Roving Seminar's unique selling point, the programme itself. Click here for all of this.

Here's a warning if you are (i) a slow reader, (ii) a slow writer, (iii) a person who is easily distracted or (iv) someone who likes to get up from their workdesk and make themself a fresh, strong cup of coffee -- the registration form will time out after 20 minutes if you don't give it your complete and undivided attention ...

Happily for all, the event is free to attend.  Do take this opportunity to sample it, since it requires three ingredients if it is to succeed: input from WIPO, local knowledge from the Finnish Office -- and you!

Posted by: Jeremy Phillips @ 09.32
Tags: WIPO Roving seminar, Finland,
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TUESDAY, 5 MAY 2015
'Smart' move!? General Court rejects Volkswagen's 'extra' word mark

Volkswagen AG failed to register the word "EXTRA" as a Community trade mark for several goods and services relating to vehicles in Classes 12, 28, 35 and 37 (see Case T-216/14).

Upholding OHIM's previous decisions, the General Court found that the mark was devoid of distinctive character. The term "extra" existed in several languages of the EU (meaning "additional" or "extraordinary") and would immediately be understood as indicating that the goods in question were of high quality. In addition, the Court mentioned its BigXtra decision confirming that the term "extra" was commonly used in everyday language and in trade as a generic laudatory term. Therefore, the term could not be regarded as appropriate for the purpose of distinguishing the concerned goods.

In an unsuccessful attempt to convince the Court otherwise, the applicant made reference to an allegedly comparable word sign for automobiles (which had been registered as a Community trade mark without proof of acquired distinctiveness). In this regard, the General Court confirmed once more that the registrability of a sign had to be assessed solely on the basis of the facts of each individual case (see also the Greenworld decision - reported on Class 46 here and on the IPKat here). Since the thorough assessment of the mark "EXTRA" could not result in any other decision, the Court did not deem it necessary to consider the implications of the previous registration at all.

As readers will have guessed, the mark that the applicant referred to was no other than (the quite popular car brand) "SMART". This blogger would have enjoyed reading the Court's view on the potential differences between the words "extra" and "smart" as regards their inherent capacity to fulfil the essential function of a trade mark in connection to automobiles.

Posted by: Christian Tenkhoff @ 08.41
Tags: Absolute ground, distinctiveness, laudatory formula, slogan, extra,
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SATURDAY, 2 MAY 2015
OHIM, Europol publish situation report on counterfeits

Our friends at the Office for Harmonisation in the Internal Market (OHIM) have just published the 2015 Situation Report on Counterfeiting in the European Union. This is OHIM's first report of this nature and it is the first fruit of a joint project with the EU crime agency Europol.

The report addresses the current situation regarding organised criminal groups involved in producing and distributing counterfeit goods within the EU, covering on routes, entry points, the way criminals actually operate and the current activities of law enforcement and the private sector. The report also explores links between counterfeiting and other areas of criminal activity. As well as presenting details on the scale and scope of product counterfeiting within the EU, the report highlights opportunities to detect, prevent and reduce the impact of counterfeiting.

The report covers the activities of foreign organised criminal groups including those emanating from China and Italy. It also highlights India as a significant source of counterfeit pharmaceutical products, Turkey and Egypt for foodstuffs, Indonesia for weak legislation and the Philippines for low enforcement rates. The report adds that Morocco could present a significant new source of counterfeit products.

The report states there is evidence to show that an increasing spectrum of everyday goods are being counterfeited. It also considers that the new generic top-level domains might serve to deceive consumers into buying counterfeit goods online.

You can read the report by clicking through to the EU Observatory website here.

Posted by: Jeremy Phillips @ 22.50
Tags: OHIM, Europol, report on counterfeiting,
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SATURDAY, 2 MAY 2015
Spain: Unfair Competition and Trademark Rights

It has been largely discussed the relationship between the unfair competition laws and the specific trademark laws when it comes to infringement of a mark. In general terms, the latter laws prevail over the former where the enforced right is a trademark registration. And normally the discussion ends here. But this case brings a new angle of this relationship, the Court declaring that the unfair business practice ends when the infringer obtains a trademark registration for the mark he has been illicitly using.  Here are the facts:

The Italian companies Master SPA and Eurotronic SRL (“claimants”) sued the Spanish companies Eurotronic SL and Distribuciones Segipack SL (“defendants”) in Spain on grounds of unfair business practices, these consisting of, among other things, distributing and selling devices under a mark identical to the one the claimants had been using in the market, to wit “Eurotronic”; and therefore causing likelihood of confusion with the claimant’s products among consumers (article 6 Unfair Competition Act 3/1991). It is remarkable that the defendants were former distributors of the claimants’ products in Spain and that such products bore the mark “Eurotronic”. The Juzgado de lo Mercantil de Barcelona (sitting as Commercial Court of Barcelona, First Instance) dismissed the claim because it considered there was not confusion in the sense described in the article 6 of the Unfair Competition Act 3/1991 given that the defendants were using a Community Trademark registration owned by one of them. It also considered that the well-known character of the claimants’ products was not demonstrated, nor a singular advantage therein that would deserve a protection. Claimants then appealed. The Appellate Court of Barcelona reversed the decision in its judgment of 5 March 2013 and considered that that there was indeed a likelihood of confusion, but only during the time the Community Trademark was not registered. It reminded that the facts relevant to the judgment were those occurring at the time the claimants instituted actions, and so the later facts –say the registration of the Community Trademark that occurred after the lawsuit was lodged- could not affect the reality ex ante.  So while that was true that the defendants obtained a registration of the conflicted mark and with this a legitimate, and unchallenged, title to use, the use of said mark before its registration amounted to unfair competition.  There wasn’t any longer a legal reason to order cessation, although the Court declared that such previous illicit use had caused damages, and claimants were entitled to them in an amount of 130,189.80 EUR.

The Supreme Court has now confirmed such decision (judgment of 3 March 2015 ROJ: STS 1089/2015), and dismissed the arguments of the defendants to revoke it. If anyone has any doubt that the right to a mark is only obtained through registration, then this case constitutes a good example. But the question that now remains is, how legitimate is a registered trademark right that has its roots in an unfair competition act?

PS. Safe travels to San Diego!

Posted by: Fidel Porcuna @ 04.41
Tags: unfair competition,
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THURSDAY, 30 APRIL 2015
General Court: Iglotex(fig) v. Iglo

In Case T282/13, the General Court reviewed the following opposition

Iglotex SA

Iglo Foods Group Ltd –Earlier CTM 

 Image not found

 IGLO

Class 29: ‘Meat; meat preserves; tinned meat; meat products; charcuterie; fish; frozen fish products; frozen fish; seafood; poultry; game; meat extract; preserved, frozen, dried and cooked, fruits and vegetables; [etc] all the aforesaid goods in frozen and refrigerated form’;

        Class 30: ‘Coffee, tea, cocoa, sugar, artificial coffee; flour; confectionery; sugar confectionery; ice-cream; frozen yoghurts; edible ices; ice; powders for ice cream; water ices; chilled desserts; baking powder; spices; meat pies; frozen confections; gnocchi; perogies; dumplings; pyzy (potato dumplings stuffed with meat); kopytko (potato dumplings); gnocchi; tortellini; cream puddings; pizzas; pizza dough; pizza bases; toasts; fruit pastries; dough; prepared pie crust mixes; flavourings, other than essential oils, for cakes; cakes; fruit cakes; pancakes; pasta; sushi; groats for human food; all the aforesaid goods in frozen and refrigerated form’.

Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; frozen prepared meals; instant meals and snack products’;

 

        Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice’.

 Both OHIM and the General Court upheld the opposition on the basis of Article 8(1)(b) CTMR.

The goods covered by the mark applied for are either identical or highly similar to the goods covered by the earlier mark.

Concerning the comparison of the signs, as regards the visual aspect, the figurative elements are not negligible in the mark applied for. As a matter of fact, the partial depiction of a snowflake and the depiction of a standing penguin re not particularly distinctive elements in relation to goods in frozen and refrigerated form, although those elements, in particular the penguin, none the less stood out in size and position within the mark in question. In addition, the word element is clearly legible and is not small in size. Having regard to the case-law according to which word elements are, as a rule, more distinctive than figurative elements, the word element in question was certainly not negligible and played at least an independent distinctive role in the mark applied for.

However, due to the fact that the earlier mark coincided with the first letters of the word element in the mark applied for, and since consumers generally tend to focus on the first part of a word element, the signs are visually similar.

As regards the phonetic aspect, although the ending of the mark applied for differs from that of the earlier mark and there is a possible difference in where the stress is placed for part of the relevant public, at least as regards the remainder of that public, the signs are phonetically similar.

Thirdly, concerning the conceptual aspect, there is a conceptual similarity for the part of the relevant public capable of identifying the common concept conveyed by the word ‘iglo’ in both the mark applied for and the earlier word mark.

Lastly, taking into account the normal inherent distinctiveness of the earlier mark, there is a likelihood of confusion within the meaning of Article 8(1)(b) of CTMR.

Posted by: Laetitia Lagarde @ 07.53
Tags: General court, likelihood of confusion, Iglotex, Iglo,
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WEDNESDAY, 29 APRIL 2015
User-Friendly Goods and Services Builder is on the way

During last week's meeting of the Office for Harmonisation in the Internal Marke (OHIM) Users Group, our friends at OHIM presented two new tools which are in the pipeline. The first, a Community design registration online filing tool, is explained on the MARQUES Class 99 design blog, here.  The second is a Goods and Services Builder. 

When TMView was created and discussed during Convergence Programme Project CP1 and CP2, MARQUES asked if this tool could be made more user-friendly in order to allow the users to build up their own lists of goods and services before filing. Such a tool is now under construction, being based on TMClass. An entire list of goods and services can be thrown into the tool, e.g. the list of a priority application, and the tool will automatically classify all terms which coincide with a term of the harmonised data base to be found in TMClass. For all other terms, the tool makes a proposal for alternative terms taken from the harmonised database, when this is possible. Where the tool does not find any alternative, no proposal will be made.

Instead of throwing in an entire list of goods and services, the goods and services may alternatively be selected manually from TMClass. Once a list has been created, it can be stored in another tool, the Goods and Services Administrator, for later retrieval and possible amendments.

As many readers may know, if the list in a CTM application contains solely terms from the harmonised database, the application will be treated "fast track". At present, fast track applications are examined within 6.5 days in average, OHIM said.

Posted by: Jeremy Phillips @ 09.12
Tags: OHIM, Goods and Services Builder,
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MONDAY, 27 APRIL 2015
Louis Vuitton in General Court: fashion faux pas?

In Cases T-359/12  and T-360/12 , on 28 September 2009 Nanu-Nana& Co. KG – not unknown to GC cases (see here)- challenged not one, but two CTM registrations of Louis Vuitton Malletier (LV) registered for Class18 goods, including “boxes of leather or imitations of leather, trunks and travelling bags, travelling sets (leather goods), travel bags, vanity cases (not fitted), shoulder bags, briefcases (leather goods), etc” reproduced here

Image not found           Image not found


370445 registered in 1998                  6587851 registered in 2008

OHIM background

The invalidity action was based on the entire range of absolute grounds : Nanu-Nana claimed that, in accordance with Article 52(1)(a) and Article 7(1)(b), (c), (d), (e)(iii) and (f) of Regulation No 207/2009, the contested CTM’s were descriptive and devoid of any distinctive character, had become customary in the current language or in the bona fide and established practices of the trade, consisted exclusively of the shape which gives substantial value to the goods and were contrary to public policy or to accepted principles of morality. It also claimed that LV had acted in bad faith when filing the application for the trade mark, within the meaning of Article 52(1)(b) of CTMR.

Both the Cancellation Division and the First Board of Appeal upheld the application for a declaration of invalidity on the basis of Article 7(1)(b) and Article 7(3) of CTMR.

First the chequerboard pattern is a basic and banal feature composed of very simple elements and it is well-known that that feature has been commonly used with a decorative purpose in relation to various goods, including those falling within Class 18. In the absence of features capable of distinguishing it from other representations of chequerboards, the contested CTM’s are not capable of fulfilling the essential ‘identification’ or ‘origin’ function of a trade mark. Furthermore, the weft and warp structure of the contested trade marks do not constitute a substantial feature and do not give it a distinctive character. Moreover, the fact that the weft and warp structure of those trade marks have been copied do not demonstrate that it acted as an indication of commercial origin for the relevant public. Therefore the contested trade marks are very simple and contained no element capable of individualising it in such a way that it would not appear as a common and basic chequerboard pattern. Moreover signs such as the contested trade marks are typically used as supplementary signs which coexisted beside the manufacturer’s house mark and, therefore, the trade marks are devoid of any distinctive character.

In addition the BoA considered that the documents produced by LV did not demonstrate that the relevant public would be in the habit of making an assumption on the commercial origin of the goods at hand based on patterns. Lastly, on the basis of the evidence provided by LV, it had not been established that the contested trade marks had acquired distinctive character through the use which had been made of it in a substantial part of the relevant territory, namely in Bulgaria, Denmark, Estonia, Latvia, Lithuania, Malta, Poland, Portugal, Slovenia, the Slovak Republic, Finland and Sweden, either at its filing date or after its registration (CTM 6587851) and in at least a substantial part of the European Union, namely Denmark, Portugal, Finland and Sweden ( for CTM nº370445).

LVs claims before the GC

  1. On the inherent distinctive character of the contested marks

LV did not contest the definition of the relevant public being the average consumer. Indeed it is not apparent from the description of the goods that they are luxury goods or so sophisticated or expensive that the relevant public would be likely to be particularly attentive with regard to them.

The Court then found that the Board rightly held held that the contested CTM’s coincided with the appearance of the products in question. Consequently, the BoA was fully entitled to base its assessment of the distinctive character of the contested marks on the principles regarding 3D marks applicable for a figurative mark consisting of a part of the shape of the product that it represents, inasmuch as the relevant public will immediately and without further thought perceive it as a representation of a particularly interesting or attractive detail of the product in question, rather than as an indication of its commercial origin (quoting this case-law as reported on Class 46).

The Court also found that it is clear from information contained in OHIM’s case-file that such a pattern has been commonly used in the decorative sector (in particular, clothes and floor tiles) and also appears in the Bayeux tapestry. On the other hand, the weft and warp pattern that appears on the inside of each of the chequerboard squares corresponds with the desired visual effect of interlacing two different fabrics, of whatever type they may be (wool, silk, leather, etc.), which is thus customary as regards goods such as those within Class 18.

Applied to the goods within Class 18 at issue, the presentation of a chequerboard in the alternating colours of light and dark grey and the impression of interlacing threads do not, from a graphic point of view, contain any notable variation in relation to the conventional presentation of such goods, so that the relevant public will in fact perceive only a commonplace and everyday pattern.

The juxtaposition of a chequerboard and of a weft and warp pattern does not give rise to any element that diverges from the norm or customs of the sector concerned; accordingly, LV’s submission that the contested mark is complex, particular and original cannot succeed.

  1. alleged breach by the BoA of the rules on the burden of proof

LV claimed that the burden rested on Nanu-Nana and the BoA cannot make up for the shortcomings of the applicant for a declaration of invalidity by relying on its own ‘general experience’ in order to rebut the presumption of validity of the registration of the contested marks.

However the Court also rejected this argument: the BoA had found that the chequerboard pattern was a basic and banal figurative feature composed of very simple elements was a well-known fact and also considered whether that finding was substantiated by the evidence relied on Nanu-Nana such as the use of the chequerboard pattern had been used in the decorative arts sector.

  1. On the alleged infringement of Article 7(3) CTMR

LV claimed it had demonstrated acquired distinctive character through use in at least 11 Member States, that number was, in LV's view, more than sufficient to meet the ‘substantial portion threshold’ which was different according to the CTM's: as of 2008, the UE had 27 Member States, and as of 1998 , the UE had 15 Member states.

Evidence submitted by LV consisted of the following (the Court's arguments with respect to most documents are below in blue)

‘Exhibit 1: a document called “Damier Canvas Trademark Portfolio”, which is a list of the CTM proprietor’s trade marks registered in different countries of the world.

– Exhibit 2: undated pictures of goods bearing the chequerboard design;

– Exhibit 3: print-outs of articles concerning famous pattern marks (Lady Dior Cannage, Gucci flora pattern, Burberry pattern);

– Exhibit4: a table with figures for the CTM proprietor’s products sold between 1996 and 2010, their turnover in euros and the total product quantity sold for the CTM in question, for the following countries: Belgium, Luxembourg, the Netherlands, Austria, the Czech Republic, Hungary, Romania, Cyprus, France, Germany, Greece, Italy, Denmark, Finland, Sweden, Portugal, Spain, Ireland and the United Kingdom; there was no other evidence to substantiate the information contained in that document, in particular other accounting documents certified by a firm qualified to certify those accounts, which could corroborate the figures set out in it.

– Exhibit 5: compilation of articles and advertisements from different magazines, showing products bearing the CTM proprietor’s chequerboard design. The magazines are from the following countries: France, Belgium, Luxembourg, Austria, the United Kingdom, Germany, Switzerland, the Netherlands, Spain, Sweden, Italy, the Czech Republic, Greece, Turkey, Norway, Hungary and Romania. Exhibit 5 further contains a Wikipedia entry about Louis Vuitton; AND Exhibit 7: list of Louis Vuitton stores. As regards the Member States of the European Union, the CTM proprietor’s stores in the following countries are listed: France, Austria, Belgium, Cyprus, the Czech Republic, Denmark, Finland, Germany, Greece, Hungary, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Romania, Spain, Sweden and the United Kingdom; those docs do not provide any indication as to the perception of the contested mark by the public concerned.

– Exhibit 6: catalogues and brochures for Louis Vuitton products; The catalogues and brochures are provided only in French and English, so that, unless the applicant establishes that there are different versions of the catalogue, those catalogues and brochures cannot prove the acquisition of distinctive character through use at the very least for the Member States concerned. Furthermore, there is no evidence to show that those catalogues are distributed amongst the relevant public and are not an internal tool

– Exhibit 8: photographs of products with chequerboard designs not originating from the CTM proprietor, which are claimed to be imitations of the CTM proprietor’s products.’ photographs of various personalities carrying goods bearing the contested mark or advertisements of goods bearing that mark prove only that the applicant has used the brown and beige chequerboard pattern and do not demonstrate that the target public for the goods in question perceives that mark as an indication of commercial origin

  • Survey (see para. 18 and 54 of contested decision) did not cover the average consumer but only consumers of luxury goods in 5 Member States of the European Union, it does not in any way concern the perception of the contested mark but rather the Louis Vuitton mark itself, so that it gives no indication as regards the perception of the contested mark alone even by that limited public amongst whom the survey was carried out.

Furthermore,in the proceedings before OHIM, as the Board of Appeal correctly observed in paragraph 62 of the contested decision, LV never claimed that the items referred to above were intended to show that the contested mark had acquired distinctive character through use. In addition , in its statement dated 23 September 2010 before the Cancellation Division, in response to an argument made by Nanu-Nana which considered that LV claimed the acquisition of distinctive character through use, the applicant stated that ‘the proprietor never claimed that the contested mark [had] acquired distinctiveness through use’ and that ‘[it had] always maintained that the DAMIER [was] inherently distinctive, and [had] only [drawn] attention to the fact that such inherent distinctiveness was further increased through almost 15 years of extensive use’.

Finally, the material submitted by the CTM proprietor on appeal (see CD-ROM and letter of 9 November 2011) did not contains any element which completes the evidence submitted before the Cancellation Division as regards these Member States, in particular no elements which could be relevant in establishing the relevant public’s perception of the contested CTM in the above mentioned countries.

The General Court rejected LV's arguments and consequently dismissed the appeal.

For another fashion law "flop” in GC see Bottega Veneta's fate here

This case was also covered by our dear friends from IPKAT , see here 

Posted by: Laetitia Lagarde @ 12.13
Tags: General Court, Louis Vuitton,damier, chequerboard pattern, absolute grounds,
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