General Court: Rauschbrille or drunk spectacles lack distinctiveness

In Case T-319/14, Drogenhilfe Projekt Köln gGmbH applied for the word CTM Rauschbrille for the following goods and services : Class 9: "Glasses";  Class 41: 'Education; training; entertainment; sporting and cultural activities "; Class 44: 'Medical services; services of a psychologist; clinical services; Medical clinic service; sanatoriums services; detoxification for drug addicts; health advice; therapeutic services”.

ang_rausch_03.jpg (300~209)Both OHIM and the General Court rejected the CTM application on the basis of Article 7, paragraph 1, b) and c) of Regulation No 207/2009 on the grounds that the mark was descriptive for those goods and services nor distinctive.

The relevant public consists of the German average consumers with a medium-high degree of attention. The applied for sign is composed of two terms of the German language, ie, on one hand, "Rausch" meaning drunkenness or intoxication or delirium and, on the other hand, "brille" meaning a frame with branches and two polished or colored glasses, such as ski goggles, diving or night vision. Thus, as to the "glasses" in Class 9, the German term "Rauschbrille" could be understood as "spectacles making one drunk" or " glasses protecting from drunkenness." It is apparent from the website of the applicant that this term actually refers to goggles that simulate approximately a high blood alcohol level.

Further, the German neologism "Rauschbrille" is not a fancy term, but is composed of exactly two words forming its elements. The word as a whole would not have a meaning beyond the sum of such terms, so it would be limited to describe the products and services concerned. Therefore, the mark is descriptive of the "glasses" in class 9 within the meaning of Article 7, paragraph 1 c) of CTMR.

As regards the absolute grounds for refusal under Article 7, paragraph 1 b) of CTMR,  the "glasses" in Class 9 are glasses recreating the intoxication state or placing the wearer in an artificial intoxication state. As regards the services in Class 41, the German term "Rauschbrille" could easily describe or refer to cultural events based on the theme of drugs. As for the services in Class 44, this term would convey the idea that as part of a medical and psychological treatment, the product sold under this name, is used to simulate intoxication and therefore part of an "aversion therapy". Moreover, those glasses are used as tool in courses in school or driving school on the theme of prevention of alcoholism and drug addiction, or as more complex tool as part of sports games and games of skill, so that sign could easily designate cultural events based on the theme of drugs or be construed as a reference to them. Thus the sign also lacks distinctive character.


Posted by: Laetitia Lagarde @ 09.52
Tags: general court, absolute grounds, Rauschbrille ,
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April's ETMR is now out

The April 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 contains the following three cases:
* Mars Inc and others v Joseph Deters, Gedon Pet NV, a decision of the Commercial Court of Brussels, relating to infringement proceedings and a counterclaim for cancellation of a three-dimensional Community trade mark for an edible chew stick for dogs.
* Simba Toys Gmbh v OHIM, Seven Towns Ltd intervening, a difficult decision of the General Court of the European Union relating to the dismissal of an application for a declaration of invalidity for a three-dimensional sign for products including the Rubik's Cube.
* Enterprise Holdings Inc v Europcar Group, in which the High Court, England and Wales, had to resolve the competing claims and interests of two large litigants, both of whom used signs which principally featured the letter "e". 
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 @ 09.20
Tags: ETMR,
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Portugal: Kit Kat shape trade mark limitations

Imperial – Produtos Alimentares, S.A. (IMPERIAL), a Portuguese chocolate manufacturer, sought to register as a three-dimensional Portuguese trade mark the sign displayed bellow covering various chocolate goods in Class 30:

(Unsurprisingly) Société des Produits Nestlé S.A. (NESTLÉ), the producer of the chocolate-covered wafer biscuit bar Kit Kat and owner of the International Trade Mark 804396 (picture bellow) opposed the application. Despite the opposition, INPI, the Portuguese Industrial Property office, granted the trade mark registration, as it did not find a likelihood of confusion between the signs.

NESTLÉ appealed the decision to the Intellectual Property Court (File no. 2/13.7YHLSB).  The first instance court upheld INPI’s decision. In its analysis, the court found that the common element between the signs was the fact that both consist of two chocolate bars. However, following an analysis of the specific market, the court found that the number of chocolate bars bears little importance. The distinctive character of a chocolate bar three dimensional trade mark can only be achieved by the shape of the product, not by a particular number of chocolate bars. Otherwise, the creativity and freedom to compete of companies would be unfairly restricted.

The average consumer is well aware of that and will easily distinguish between products that have different shapes, even when they consist of double chocolate bars. The differences in this case would allow that differentiation. First, in the earlier trade mark, the bars are centrally separated by a “V”; in the trade mark application, the bars are instead divided by a “U”. Second, the shapes of the corners are distinct: sharp in NESTLE’s trade mark, rounded in the trade mark application. Finally, the chocolate bars are different: a trapezoid shape in the earlier trade mark and a parallelepiped in the trade mark application. As such, the court found that the signs were dissimilar and there was not a likelihood of confusion between them and held that the right should be granted.

NESTLÉ appealed this decision to the Lisbon Court of Appeal. However, the Court of Appeal did not side with its arguments and upheld the first instance decision. In a short verdict, the judges found that the common element between the signs was the fact that both are composed by two aligned and joined bars in a rectangular base with a central partition, allowing their separation. However, and referring to the first instance decision, the court held that that did not lead to a likelihood of confusion between the trade marks.

In the field of chocolate bars, imagination is necessarily limited by the very notion of "bar" and there is not a significant degree of innovation and design. Hence, there is a need to centre attentions in the small details that distinguish the products, which, in any case, can be perceived by average consumers of the products. A different decision would result in granting the earlier trade mark holder an exclusive over the productions and commercialisation of “two joined bars”, something that would be inadmissible according to the Court of Appeal.

The courts’ judgements were published in the Intellectual Property Bulletin no. 072/2015, of 14 April. On a side note, readers should remember that this will not be the last time they hear about the Kit Kat shape trade mark, as the Court of Justice of the European Union will issue its judgement in Case C-215/14 Nestlé in the course of 2015 (predictably).

Posted by: Pedro Malaquias @ 18.23
Tags: Portugal, relative grounds, INPI, Intellectual Property Court, Shapes, Three-dimensional, Court of Appeal,
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Calling all IP paralegals: OHIM has a course just for you!

Our friends at the Office for Harmonisation in the Internal Market (OHIM) have been busily hatching up new schemes for spreading the word when it comes to things you can do with trade marks and designs. The latest is OHIM's IP Course for Paralegals. This course is designed exclusively for paralegals -- who are part of the rank and file army of users of OHIM's services and who are involved in many different activities regarding the administration of Community trade mark and registered Community design filings, not to mention day-to-day interaction with OHIM staff. 

The objective of the course is to increase not just paralegals' operational efficiency but that of OHIM itself, since OHIM´s own daily experiences in dealing with paralegals have been used as a means of identifying hotspots in the filing processes which this course will address.

So, if you are a paralegal who craves tailor-made in-depth knowledge of all aspects of CTM prosecution, as well as practical information and tips on using OHIM's online tools and enjoying straightforward, single action communication with OHIM, this is the course for you.

The course spans two-and-a-half days in Alicante's OHIM Auditorium, from 27 to 29 April 2015. It covers basic requirements for obtaining and protecting a CTM, from filing the application to the issuance of the registration. It also includes perspectives on inter partes matters, and lots more besides.

For further information and registration, just click here.

Posted by: Jeremy Phillips @ 09.26
Tags: paralegal course, OHIM,
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The curse of the "fly boats" in General Court

In case T-72/14, the General Court issued the latest Judgment in the BATEAUX MOUCHES saga.

OHIM rejected the CTM application for Class 37 'shipbuilding services and especially tourist boats and components of these boats.' The General Court upheld the contested decision finding that the mark applied for was descriptive and devoid of distinctive character for all the services under Article 7, paragraph 1, b) and c) of the Regulation No 207/2009 and that it had not acquired distinctive character through use within the meaning of Article 7, paragraph 3 of CTMR.

Due to the nature of the services, the relevant public is composed of French speaking professionals dealing with shipbuilding who are well informed, observant and circumspect.

Currently, the term "bateaux mouches" is the common name, in French, of a type of vessel, ie a vessel intended for passenger transportation by river for tourist purposes. The Board of Appeal also noted that in the dictionary Le Grand Robert , which is mentioned in the letter of the French Academy produced by the applicant before the Board of Appeal, the term "bateaux mouche" is defined as "motorboat service in Paris and used to carry passengers." The Board of Appeal further noted that the dictionary defines "bateaux mouche" as meaning "boat that was once used for passenger traffic on the Seine and today is used for tourist rides." The Board of Appeal also stated that, as is clear from the letter of the French Academy produced by the applicant, the latter did not intend to change that definition.

As the Court has already ruled in judgment of 10 December 2008, (T-365/06), the fact that the applicant was the first company to adopt in 1950 the term bateaux mouche ("fly-boats") as a mark to designate river tourism activities do not rule out that the mark in question has become, thereafter, the common name of vessels intended for passenger transport by river for tourist purposes. Indeed, without the need to check whether the sign enjoyed a distinctive character in 1950, it should be noted that a sign that was capable, at one time, to constitute a trade mark, due to its use by third parties as a customary designation of a product or service, may become generic and lose the ability to exercise the functions of a trade mark

As far as the argument of the applicant that the use it has made ​​over the years of "BATEAUX MOUCHES” as a trade mark for its river tourism activities and various other activities has given to this term a distinctive character, it can not succeed. The applicant submitted no evidence that the term was protected as a trademark and everything seemed to lead that it was, rather, an expression of everyday language to describe a type of craft for transporting tourists by river and this function does not appear to be limited to the Seine in the mind of the relevant public.

Considering the alleged acquired distinctive character through use acquired by the mark, the applicant had the onus to demonstrate that the "bateaux mouches" sign had acquired distinctive character through use throughout the French territory of the Union where it was devoid of it, namely France, Belgium and Luxembourg. In this regard, the documents produced by the applicant did not constitute direct evidence of the acquisition of distinctive character by the trade mark, which depends on the perception of the sign by the relevant public. Even if these documents establish that the sign for which registration was sought had gained some public recognition in France, for tourism services of the applicant, there was no evidence of the acquisition by the sign of a distinctive character for shipbuilding services for which registration was sought. 

For example contrary to what the applicant submits, nor the extract the website of Upper Seine sites nor  the news articles on the boat "Jean Bruel" are capable of proving that francophone industry professionals shipbuilding perceive the term "Bateaux Mouches" as an indication that the applicant provides shipbuilding services under this brand. It appears instead from these documents that it was the Haute Seine shipyards that provided services of shipbuilding to the applicant by building the boat "Jean Bruel." Moreover, the evidence was particularly deficient for Belgium and Luxembourg. 

Posted by: Laetitia Lagarde @ 05.56
Tags: GeneralCourt, absolute grounds, shipbuilding services,
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Poland: single color as trade mark

On 5 May 2010, PLAY Brand Management Limited applied to the Polish Patent Office for the right of protection for a single color trade mark Z-369967 defined in PANTONE scale as 2627C, for goods and services in Classes 9, 35 and 38.

The Polish Patent Office refused to grant the right of protection and decided that the applied sign was not inherently distinctive in relation to communications services for mobile phones, and the applicant has not demonstrated sufficiently that the mark has acquired distinctivenes through use. PLAY submitted request for re-examination of the matter. The PPO ruled that the sign in question may serve as a trade mark, since it was applied graphically and identified using the code recognized at international level, i.e. Pantone number. Such a figurative representation of a single color is in line with the requirements set for a designation that in order to fulfill its function as a trade mark must be clear, precise, complete in itself, easily accessible, understandable, fixed and objective. However, while analyzing the distinctiveness of the applied trade mark in concreto, the PPO stressed that, according to settled case-law, the essential function of a trade mark is to guarantee to the consumer or end user the identity of the origin of the designated goods or designated services, by allwowing him to distinguish the goods or services from the goods or services of different origin. The goal of distinctiveness of a trade mark is to provide a given sign with such features that in the minds of market players they will clearly indicate that the product (or service) marked in this way is derived from the specific entity. Therefore, the attention sould be paid to the customary use of the trade mark, as a designation of origin in the specific sectors, as well as the perception of relevant consumers. In the opinion of the PPO when it comes to color per se, the existence of distinctiveness (without any prior use) is possible only in exceptional circumstances, in particular, when the number of goods or services for which the trade mark was applied for is very limited and the relevant market is very specific. Those conditions must be interpreted in the light of the public interest, which is based on the fact that the availability of colors cannot be unduly limited for all other entrepreneurs. The PPO noted that the modern technology allows to generate an almost infinite number of shades of each color, but in assessing whether they differ from each other, one should take into the perception of a relevant group, and therefore the average consumer. The number of colors that people are able to actually identify, is small, therefore the number of colors available as potential trade marks that would allow for distinguishing the goods had to be regarded as very limited. Moreover, the market for mobile services is not narrow and specific. Such market does not only cover telecom operators, but it is a collection of current and potential buyers of a product or service, respectively, its size depends on the number of buyers that express interest in all products, with an adequate income and availability of products for purchase. Market size is a characteristic that describes the quantitative state of the market at a given time in number of consumers (users) of a given type of goods or services. The PPO stated that the scale of Pantone, as the RAL or CMYK scales, is a very precise tool used to describe the color, but little practical from the standpoint of conditions of a normal trade and market turnover. The description of the Pantone color will not be a sufficient indication for the average consumer. The PPO also decided that less than four years (the company started its operation in 2007, and market survey evidence was conducted in 2011) could not be considered as a sufficient period to establish that the sign was in long-term use. In the context of proving that the sign has acquired secondary meaning, such time was certainly too short. PLAY Brand Management filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 9 October 2013 case file VI SA/Wa 1378/13 dismissed it. The Court ruled that the PPO properly examined all the evidence material and properly justified its decision. The VAC as the PPO relied on the opinion of legal commentators and the so-called "color depletion/exhaustion" theory. According to this concept, the number of colors that the human eye is able to recognize is small and limited. Therefore, none of the colors should be subject to anyone's "ownership", or generally speaking - the exclusive right, and these colors should be keept in the public domain, and therefore freely available for all entrepreneurs. The theory of shades' confusion support the first one. The second provides that human perception is so limited that the average consumer is not able to distinguish between a large number of shades of different colors. Applying both theories to present commercial realities it should be borne in mind that the majority of trade marks exists in a environment where decisions on the purchase of goods or use of services are made hastily, without much hesitation on the part of consumers. It is difficult to expect that consumer will conduct an analysis and comparison of similar shades of color, and on this basis, they will be associating the product with its origin. The Court also agreed that the acquired distinctiveness has not been proven. Surveys were conducted in a group consisting of 1000 respondents who use mobile phones and thus who should have knowledge about the market and mobile network operators. However, these people differently responded to the two questions: i) with which mobile operators' brands do they associate the color, and ii) with which brands do they associate the color. For the first question, 59% of respondents indicated PLAY as the operator, and only 11% respondents of the same group associated the color with PLAY while answering the second question, although the results should be concurrent, because the second question has not been addressed to random group of people, but a group of people who use mobile services. PLAY Brand Management filed a cassation complaint.

The Supreme Administrative Court in its judgment of 23 March 2015 II GSK 371/14 dismissed it.

Posted by: Tomasz Rychlicki @ 10.49
Tags: non-traditional trade marks, Polish Act on Industrial Property Law, Polish law, Polish Patent Office, Polish Supreme Administrative Court, single colour, trade mark refusal, Voivodeship Administrative Court,
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AdBlock Plus - German media houses want it stopped

While this is not an immediate trademark issue, the increasingly wide-spread phenomenon of adblocking has a huge impact on all brand owners engaging in online advertising. Your author therefore wants to share an update with you on how adblocking is currently debated in several German courts. The best known and by far most popular adblocking tool is AdBlock Plus, marketed by the German company Eyeo GmbH. AdBlock Plus is among the most frequently downloaded browser add-ons worldwide, with over 144 million active users reported in 2014 (Source: Page Fair and Adobe 2014 report). AdBlock Plus allows Internet users to decide which advertising content they want to have appear on their screens. The software comes with a pre-selection of blacklisted and whitelisted websites and, by default, users of AdBlock Plus only see advertising content that has been whitelisted by Eyeo. Users are free, in theory, to set their own preferences, but most will probably stick with the default setting.

The decision whether a website goes on the whitelist is taken, so Eyeo contends, by a volunteer community who decide on criteria that must be met for an ad to be acceptable. Whitelisting requires in particular that ads:

  • must be static
  • should preferably contain only text, and no attention-seeking images
  • and must not cover website content or otherwise interfere with the user’s perusal of the website content.

It is easy to see that the first of these criteria creates a serious challenge to media houses that provide free video content from their TV programs online. Such content is often accompanied by short video ads, which lead to an automatic blacklisting under Eyeo’s criteria. Several large German media companies have recently filed lawsuits against Eyeo. These are currently pending at first instance before several German District Courts. They contend that Eyeo engages in unfair competition through its white- and blacklisting selection process. In particular, they maintain that Eyeo is striking individual deals with some companies to pay for whitelisting, in some cases collecting million dollar amounts. That whitelisting is thus allegedly negotiable is said to run counter to Eyeo’s professed aim: To create a better user experience on the Internet.

Further claims brought by some of the media houses are based on copyright infringement and antitrust law. It is disputed between the parties whether or not Eyeo holds, and abuses, a dominant market position. Depending on how one counts, AdBlock Plus has a market share of more than 30% (say the plaintiffs) or 3% (as Eyeo says). Finally, one of the media houses has also brought copyright claims. It argues that the blacklisted websites are being modified in their structure as well as in their content by the adblocking.

In the first oral hearings that have already taken place, the German District Courts took a cautious approach that tends to favor Eyeo’s position. In particular, the courts seemed to be critical of the plaintiffs’ strongest arguments (those based on unfair competition law) at a very early stage in the legal assessment. Several judges said they doubted that Eyeo even is a competitor of the plaintiffs within the meaning of the German Unfair Competition Act. Should this preliminary assessment hold up, it would rule out unfair competition under any of the available heads of claim under the statute.

We will keep you in the loop for the further developments in this series of litigation. Either way it goes, the decisions of the German courts in Eyeo's home jurisidiction will have a significant impact on the world of online advertising.

You can also access the article here

Posted by: Anthonia Ghalamkarizadeh @ 09.42
Tags: Adblocking, AdBlock Plus, Eyeo, advertising, media,
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