SATURDAY, 25 OCTOBER 2014
November ETMR now available

The November 2014 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.  

This issue contains reports on five recent decisions, which include the following:
* Moroccanoil Israel Ltd v Aldi Stores Ltd, a ruling of the Intellectual Property Enterprise Court, England and Wales, on passing off and initial interest confusion in a situation in which no action could be pressed for trade mark infringement
* Beyond Retro Ltd v OHIM, S&K Garments, a ruling of the Ninth Chamber of the General Court on the comparison of English language marks in both English- and non-English-speaking countries.
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 @ 23.21
Tags: ETMR,
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FRIDAY, 24 OCTOBER 2014
Finns throw the book at cookbook application

The Finnish Trade Mark Office in 5 May 2010 registered the trade mark VALIO KEITTOKIRJA (no. 260942) on behalf of Valio Oy in Classes 35, 38, 41 and 43 but rejected it for goods in Class 16 as far as printed matter was concerned, since the word “keittokirja” means “cookery book” in the Finnish language. The word “valio” in Finnish language means the best individual in a selected group, species or such. The Office stated that this mark lacked distinctiveness in Class 16 as it referred to the type of goods and the quality of the goods concerned. According to the Office, the trade mark VALIO KEITTOKIRJA would merely mean “the best cookery book”. The applicant submitted proof of use in the matter in order to prove that the word VALIO would have become distinctive through use in Class 16 for printed matter. The Office stated however that the proof was insufficient to show distinctiveness for the word VALIO in class 16, adding that the word VALIO was not accepted to the List of Trade Marks with Reputation maintained by the Trade Mark Office.

The Board of Appeal of the Finnish Trade Mark Office dismissed the appeal on 25 March 2013. There was further correspondence between the Office and the applicant, following which the applicant narrowed down the list of goods with regard to Class 16 to cover only “printed matter related to foodstuffs”. Despite this restriction, the Office kept its mind in the matter and held that the trade mark VALIO KEITTOKIRJA described the type and quality of the goods concerned. In addition the Office stated that the average consumer understands the mark as consisting of the adjective “valio” (best of its kind) that defines the product “keittokirja” (cookery book).

The Supreme Administrative Court of Finland has now dismissed the applicant's appeal, affirming the decisions of the Finnish Trade Mark Office. In the proceedings the applicant had submitted to the Supreme Administrative Court copies of its food magazines and brochures starting from year 1991. However, the use of the trade mark VALIO was presented in this material only in connection with combination marks. The material did not thus show that the mark VALIO would have become distinctive through use for printed matter so that the trade mark VALIO KEITTOKIRJA would – on basis of the material – be a distinctive trade mark for these goods.

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

Posted by: Jeremy Phillips @ 12.09
Tags: Finland, registrability,
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FRIDAY, 24 OCTOBER 2014
Mad about Madrid? Here's a seminar to put your mind at rest

MARQUES's friends at the World Intellectual Property Organization (WIPO) have told us the news that there is an upcoming Seminar on the Madrid System for the International Registration of Marks. Such is its importance and prestige that the seminar will will be held at the very headquarters of WIPO, Geneva, Switzerland on 20 and 21 November 2014. If this lovely and historical building could talk, we would learn some fascinating information about the Madrid System and how the Agreement gave way to the Protocol, as well as how many canapés have been served at WIPO receptions since it first opened its doors.

Illustration: WIPO seminars, like canapés, are designed to stimulate the appetite ...

 If you are reading this blogpost, you are probably on your computer or mobile communications device from which you can access the seminar's provisional program,  If so, general Information and the online registration facility for this event are just one small click away, hereRegistration remains open till 14 November 2014 [that's not very far away but, if you don't like deadlines, you probably aren't a trade mark practitioner anyway].

Posted by: Jeremy Phillips @ 11.51
Tags: WIPO seminar, Madrid System,
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FRIDAY, 24 OCTOBER 2014
Goods in transit, equality and a Greek paradox

Readers of this blog may recal that, under its long awaited revision in 2012, Greek trademark law, expressly provides that trademark owners may rely on their trademark rights to stop infringing goods, even when in transit. The introduction of this provision naturally put a smile in a lot of practicioners' faces.

Greek customs have not failed to implement the provision, but an interesting paradox seems to have arisen. This blogger has been informed the Customs will not apply the provision for goods infringing CTMs, as the Regulation has no similar provision. Technically speaking, they look to be right: the two legal orders are autonomous and the principle of equality does not seem to have much room to play. Perhaps an innovative approach supporting the analogous application of the transit provision for Greek national trademarks could succeed.

Either way, this blogger must admit that the situation is one of the rare instances (after ONEL/OMEL) where a Greek national trademark appears more attracive than a CTM.

Posted by: Nikos Prentoulis @ 09.12
Tags: Greece, Customs, transit, equality, humand rights, national trademarks, CTM, ,
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WEDNESDAY, 22 OCTOBER 2014
Spain: Nine Years of infringement do not prevent from action

Leo Pharma A/S, lately famous in other blogs (See the recent IPKat post on obviousness, common general knowledge andxpectation of success) is the happy star in this trademark story about who registered what first and the infinite timing for an infringement to continue to be so.

Leo Pharma A/S initiated its activity in Spain in 1993 through the Spanish company  Farmacusí S.A., which was renamed "Leo Pharma S.A." in 2005. In that year, and in 2006, Leo Pharma S.A. ("First Leo") purchased the Spanish trademarks 365730 (fig.) and 368810 (word) from Altana Pharma S.A. registered in Classes 1 and 5, for the word "Leo" and the representation of a lion, as set out below, with priority date 1960.

 

Leopharma S.L. ("Second Leo") was incorporated in Spain under such name in 2001, and run a business of distribution of pharmaceutical products. Second Leo also registered the domain name <leopharma-sl.com>.

First Leo sued Second Leo in 2010 on the ground of trademark and trade name infringement and requested, inter alia, the cessation of the company activities under the name Leopharma S.L. and its modification by substituting the word "Leo", the cancellation of the domain name <leopharma-sl.com> and the advertising of the decision. Second Leo argued that it was too late to sue on such grounds, given that nine years had passed at least since its incorporation and the commencement of its activities. Second Leo further argued that neither the previous owner or First Leo had opposed to the use of the name leopharma-sl.com during that time. In addition, in a rather creative attack, Second Leo counterclaimed the nullity of the trademarks purchased by First Leo in 2005 based on the fact that its  rights were prior to First Leo... since it only acquired trademark rights on 2005 whereas Second Leo was in play since 2001.

The Juzgado de lo Mercantil núm. 1 de Burgos (sitting as Commercial Court no. 1 of Burgos) ruled in 19 September 2011 against Second Leo and ordered this company to change its company name (as otherwise the incorporation of the whole company would be cancelled pursuant to the Additional Disposition no. 17 of the Spanish TM Law), to cancel the domain name <leopharma-sl.com>, and to cease using Leopharma in commerce. Notwithstanding, Second Leo appealed and won. The Appellate Court of Burgos sustained in 5 March 2012 that the statute of limitations was applicable against First Leo. A very interesting argument was used by the Appellate Court, by which the likelihood of confusion with First Leo's source of origin could only be established as of 2006, that is, by the time First Leo purchased the infringed marks. Therefore it was not for First Leo to pursue the actions that belonged to the assignor (Altana Pharma S.A.) of the infringed trademarks. And this assignor did not sue Second Leo, who had then used for years the name in the market.

First Leo appealed, and the Supreme Court (Decision of 15 April 2014 Leo Pharma S.A. c. Leopharma S.L.) ruled  in its favor, reversing the Appellate Court's decision and confirming the first instance decision. In Spain while it is true that the statute of limitations is five years from the date the right holder is able to sue (article 45 Spanish TM Law 17/2001), it is largely accepted by the Supreme Court [decisions of 20 January 2010 (RJ 2010 159) Fransa Clothing Company, A/S c. Dña Ramona and others, of 16 November 2010 (RJ 2010 8877) J. García Carrión, SA c. Bodegas Antaño, SA] that every single act of infringement triggers a new action, and therefore a continued infringement has a continued right to sue. There is an exception, which is the unjust delay in instituting actions, which mislead the defendant into thinking that he has acquired a legitimate right . This, unde rthe analysis of the facts, was not the case. 

Posted by: Fidel Porcuna @ 12.21
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MONDAY, 20 OCTOBER 2014
Lambretta in General Court (Part 2)

Following up on the case reported last Friday on Lambretta and "IP translator", the case T-132/12 Scooters India v OHMI was about a cancellation action for revocation for non-use of  CTM LAMBRETA for goods in Classes 6, 7 and 28, and the interpretation on the assessment of evidence before OHIM.

The applicant appealed to the GC  because the Board of Appeal examined the evidence submitted to it in isolation and not in conjunction with the evidence already provided to the Cancellation Division, inter alia the statement of Mr W., the President of the Lambretta Club of Great Britain.

In its brief to the BoA, the applicant submitted that the documents provided had been assessed in an overly harsh way, ‘given that the previous evidence was filed under an explanatory witness statement of [Mr W.]’. That submission clearly showed that the applicant continued to rely, before the BoA on the evidence previously provided and, in particular, on Mr W.’s statement.

After examining the admissibility of the new evidence submitted by the two parties before it, the Board of Appeal exclusively set out and assessed that new evidence. By contrast, it did not even mention the evidence previously submitted to the Cancellation Division. Furthermore, the Board of Appeal did not, in general terms, adopt the assessment made by the Cancellation Division.

Thus the General Court upheld the first complaint put forward by the applicant and held that the Board of Appeal infringed its obligation to carry out a global assessment which took into account all the relevant factors of the particular case. Consequently, contrary to what OHIM and Brandconcern maintained, the applicant was entitled to put forward before the Court that evidence, as well as the complaint alleging that the Board of Appeal failed to take it into account. The GC annulled the contested decision of the BoA.

Posted by: Laetitia Lagarde @ 18.22
Tags: General Court, Lambretta, revocation for non-use, assessment evidence, OHIM,
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MONDAY, 20 OCTOBER 2014
Tripp Trapp ruling on 3D product marks

The Court of Justice of the European Union (CJEU) recently gave a ruling in Case C-205/13 Hauck v Stokke and others that went into some detail concerning the manner in which the three exclusionary indents to Article 3(1)(e) of the Trade Mark Directive must be applied when asking whether a sign consisting of the three-dimensional shape of a product is excluded from registrability or, if registered, has been invalidly registered. The three-dimensional mark in this case was the popular and commercially successful Tripp Trapp children's feeding chair, illustrated on the right.

Considerable guidance on this ruling can be found in a special report written by MARQUES member Henning Hartwig (Bardehle Pagenberg), which you can read here.

Posted by: Jeremy Phillips @ 17.08
Tags: CJEU ruling, 3D marks,
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