FRIDAY, 31 JULY 2015
It's a hard rock life in the General Court

In Case T-436/12, the General Court upheld OHIM’S decision which rejected an action for invalidity between the following trade marks:

Ceramicas del Foix, SA

Deutsche Rockwool Mineralwoll GmbH & Co. OHG – earlier German rights

Image not foundImage not found

MASTERROCK

FIXROCK

COVERROCK

COVERROCK

Class 2: ‘Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; dyestuffs; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists

Class 19: ‘Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal. All the afore-mentioned goods with the exception of all kinds of mineral wool goods and damping materials for use in the building industry’;

Class 27: ‘Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile)

 

Classes 6, 17 and 19 covered by the earlier trade marks are building materials manufactured, for the most part, from mineral wool. In addition, the trade mark MASTERROCK also covers ‘civil engineering’ and ‘installation works’ services in Class 37.

The Cancellation Division (CD) and the Board of Appel (BoA) rejected the application for a declaration of invalidity holding that there was an average degree of similarity between some of the goods covered by the signs at issue, while others were either dissimilar or remotely similar.

In addition, there was a low degree of visual, aural and conceptual similarity between the signs at issue, emphasising the descriptive nature of the shared element ‘rock’. Indeed, English is a global language which is also used in the building industry. Even if the average German consumer does not have a thorough knowledge of English, the word ‘rock’ is a basic English word, and professionals and consumers alike will associate that word with the word ‘stone’ with the result that that word is largely descriptive of those materials.  Furthermore, in the present case, the word ‘rock’ also conveys a laudatory message concerning the characteristics of the goods and services covered which relate to building materials and building activity, in so far as it can be understood as alluding to the solidity and stability of rocks or rock formations. Further, in all the earlier trade marks, the element ‘rock’ alludes to a ‘stone’, a ‘rock’, or to mineral wool, with the elements ‘fix’, ‘flexi’ and ‘cover’ giving details of the physical characteristics or their intended use. In addition, the element ‘master’ has a laudatory meaning which will be connected by the relevant public to the meaning of the word ‘rock’. Accordingly, the Boa’s finding that the earlier trade marks FLEXIROCK, FIXROCK, MASTERROCK and COVERROCK are only weakly distinctive must be upheld.

Furthermore, since the relevant public will not attribute any particular meaning to the element ‘ceil’, the word combination CEILROCK is fanciful, with the result that it is averagely distinctive. The earlier trade mark CEILROCK was found to be dissimilar altogether to the contested trade mark.

The Court finally upheld the reasoning that a family of marks with the serial element "rock" would specifically lead to the monopolization of the element "rock", which is largely descriptive and laudatory with regard to the products and services covered by the earlier marks. Such a restriction on free competition that would result from reserving a basic term of the English language to a single economic operator, cannot be justified by the need to reward creative and advertising efforts of the holder of the earlier marks. In view of the relevant public’s high level of attention, and the fact that the broader protection granted to a family of trade marks was not applicable in the circumstances, the CD and BoA rightly concluded that there was no likelihood of confusion.

***

Deutsche Rockwool Mineralwoll GmbH & Co. OHG lost a similar action for invalidity against Image not foundImage not foundon the basis of earlier marks KEPROCK, FLEXIROCK, FORMROCK, FLOOR-ROCK, TERMAROCK, KLIMAROCK, SPEEDROCK, DUROCK, SPLITROCK, PLANAROCK, TOPROCK, KLEMMROCK, FIXROCK, SONOROCK PLUS, VARIROCK, SONOROCK et MASTERROCK in Judgment T-548/12 rendered on the same day, please see here.

Posted by: Laetitia Lagarde @ 03.44
Tags: General Court, likelihood of confusion, rock, family of marks,
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WEDNESDAY, 29 JULY 2015
Oh to be young again! OHIM launches Ideas Powered

Last week saw the official launch of OHIM's Ideas Powered website, this being the result of an EU-wide initiative  to bring young people more closely together with IP.

Ideas Powered (the acronym is 'IP', for 'Intellectual Property') will feature contributions from young designers, composers, entrepreneurs and artists from all across the EU to show how IP supports innovation and creativity. Right now Ideas Powered is running a video competition which invites young people to submit their views on how IP matters to them. Do check it out, especially if you are aged 15 to 24.

You can also enjoy Ideas Powered on Facebook and Twitter.

Posted by: Jeremy Phillips @ 14.50
Tags: Ideas Powered,
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TUESDAY, 28 JULY 2015
Question the Trade Mark Judges: a popular London event returns

On Wednesday 14 October 2015, from 18:00 to 19:30 in the lovely venue of University College London, UCL's Institute of Brand and Innovation Law (IBIL) together with MARQUES, invite you to put your questions to some of the judges that are – or were until recently – deciding our trade mark disputes. Chaired by The Rt Hon. Professor Sir Robin Jacob, the panellists will answer a set of pre-selected questions from the audience. Who are they?

* Nicholas Forwood QC (Judge of the General Court of the Court of Justice of the European Union)

* Marianne Grabrucker (former Presiding Judge in the Trade Mark Boards of the Bundespatentgericht (German Federal Patents Court))

* Geoffrey Hobbs QC (barrister, One Essex Court, and senior “Appointed Person” hearing Appeals from the UK Registrar of Trade Marks)

* Oliver Morris (UK Intellectual Property Office Senior Hearing Officer)

To book your place, just click here.

Posted by: Jeremy Phillips @ 17.42
Tags: Question the Trade Mark Judges,
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FRIDAY, 24 JULY 2015
Now another Danish medicine repackaging trade mark case heads for the CJEU

Yesterday Class 46 posted a note on a reference to the Court of Justice of the European Union (CJEU) for a preliminary ruling -- and now here's another one. It's Case C-297/15 Ferring Laegemidler, a request from a Danish Court, the Sø- og Handelsretten, in a case which concerns parallel imports of a medicinal product where the importer has repackaged the product in a new outer packaging and reaffixed the trade mark in a situation where the trade mark proprietor has marketed the product in a the same volume and packet sizes.

 The CJEU has been asked to answer the following questions:

  1. Must Article 7(2) of Directive 2008/95 to approximate the laws of the Member States relating to trade marks and the related case-law be interpreted as meaning that a trade mark proprietor may lawfully object to the continued marketing of a medicinal product by a parallel importer, where the importer has repackaged the medicinal product in a new, outer packaging and reaffixed the trade mark in a situation where the trade mark proprietor has marketed the medicinal product in the same volume and packet sizes in all EEA countries where the medicinal product is sold?
     
  2. Will the answer to the first question be different if the trade mark proprietor in both the country of export and the country of import has marketed the medicinal product in two different packet sizes (10-piece packets and 1-piece packets) and the importer has purchased 10-piece packets in the country of export and repackaged them in 1-piece packets, on which the trade mark has been reaffixed before the products are marketed in the country of import?

If you would like to comment on this case to the UK Intellectual Property Office please email policy@ipo.gov.uk by 5 August 2015.

Posted by: Jeremy Phillips @ 11.18
Tags: CJEU reference, Denmark, repackaginh,
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FRIDAY, 24 JULY 2015
General Court:Happy time v Happy hours

In Case T-352/14, the General Court dismissed the appeal in the following decision:

The Smiley Company SPRL

The Swatch Group Management Services AG

HAPPY TIME

HAPPY HOURS

Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;

Class 35: ‘Advertising; business management; business administration; office functions’.

Class 35: ‘Retailing of timepieces and jewellery; retailing of timepieces and jewellery via global computer networks (Internet)’;

Class 37: ‘Repair and maintenance of timepieces and jewellery’.

The Opposition Division partially upheld the opposition with respect to the following goods and services:  Class 14: ‘Goods in precious metals or coated therewith, not included in other classes; jewellery; horological and chronometric instruments’; Class 35 : ‘Auctioneering’.

The applicant brought an appeal against the OD decision.

The First Board of Appeal of OHIM dismissed the appeal. Firstly, for the purposes of assessing the likelihood of confusion, the BoA considered ‘the natural meaning of the goods and services specified in the application’ for registration. Thus it did not rule on the likelihood of confusion concerning, in particular, auctioneering services and neither party had presented any arguments in that respect.

On the other hand, regarding Class 14, the contested goods are identical to the goods which the opponent’s retail services relate to; those goods therefore displayed similarities with those services, which, moreover, were generally offered in the same places as those in which those goods were offered for sale.

Moreover, there is a low degree of visual and phonetic similarity, but also a conceptual identity, or, at least, a very strong conceptual similarity, between the two signs at issue. The applicant’s argument that the distinctive character of the earlier mark is weak  was rejected.

Therefore, there is a likelihood of confusion between the two marks at issue with respect to the goods in Class 14.

Posted by: Laetitia Lagarde @ 10.20
Tags: General court, confusion, happy time, happy hours, ,
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THURSDAY, 23 JULY 2015
Estonia refers questions on injunction and compensation to CJEU

Readers may not yet be aware of C-280/15 Nikolayeva, a reference to the Court of Justice of the European Union from Estonian Court which relates to Community trade mark infringement and a claim for damages for unjust enrichment. 

The questions referred for a preliminary ruling are as follows:

  1. Is a Community trade mark court required to issue the order provided for in Article 102(1) [of Regulation 207/2009 on the Community trade mark, which requires the court to issue an injunction unless there are special reasons for not doing so] if the applicant does not seek such an order in his claims and the parties do not allege that the defendant has infringed or threatened to infringe a Community trade mark after a specific date in the past, or does failure to make an application to that effect and to refer to this fact represent a ‘special reason’ within the meaning of the first sentence of this provision?
     
  2. Is Article 9(3) [reasonable compensation possible in respect of acts committed after publication of a CTM application] to be interpreted as meaning that the proprietor of a Community trade mark may demand only reasonable compensation from a third party on the basis of the second sentence of Article 9(3) for use of a sign identical with the trade mark in the period from the publication of the application for registration of the trade mark until the publication of the registration of the trade mark, but not compensation for the fair market value of what has been gained as a result of the infringement and for damage, and that there is also no right to reasonable compensation for the period prior to publication of the application for registration of the trade mark?
     
  3. What type of costs and other forms of compensation are included in reasonable compensation under Article 9(3), second sentence, and can this also encompass in certain circumstances (and if so, in which circumstances) compensation for non-material harm caused to the proprietor of the trade mark?

If you would like to comment on this case and advise the UK Intellectual Property Office, just email policy@ipo.gov.uk by 4 August 2015.

Posted by: Jeremy Phillips @ 23.05
Tags: CJEU reference,Estonia, injunction, compensation unjust enrichment after date of publication of application,
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THURSDAY, 23 JULY 2015
Appealing an OHIM decision? Check out the new General Court procedural rules

From Clara Cabecerans (Baker & McKenzie Barcelona) comes some very good news for anyone appealing an OHIM Board of Appeal Community trade mark or design decision to the General Court of the European Union. Clara reports:

The General Court of the European Union adopted new Rules of Procedure which came into force on 1 July 2015. The New Rules replace the 1991 Rules of Procedure.

The court’s rules have been essentially simplified in order to speed up its procedure and to improve its efficiency. Additionally, some new rules have been enacted to regulate matters where no regulation existed before, such as confidentiality of the information and material produced before the Court and the creation of a Vice-President who will assist the President and take the President’s place when the latter is unable to act.

With regard to intellectual property matters the following changes should be particularly noted:

* Delegation to a single Judge: IP cases will be heard and determined by the Judge-Rapporteur sitting as a single judge where the questions of law or fact to be heard are essentially straightforward or the case is considered of limited importance. No doubt, this is one of the main changes in the New Rules.

* A simpler procedure to determine the language of the case: the applicant will be able to choose the language, which will be the language of the case if no objection is received in due course. In case of an objection, the language of the proceedings will be the language of the decision of the OHIM Board of Appeal that is being contested before the General Court. This appears to be a significant improvement with respect to the previous system.

* Rules on replacement of a party and submission of a cross-claim are now regulated: where an IP right affected by the proceedings has been transferred to a third party, that third party may apply to the General Court to step into the shoes of the original party. Further, Chapter 3 regulates the content, time-limit and response to a cross-claim.

* Written part of the procedure: the written part of the procedure will be closed after the submission of the response of the defendant and intervener or after the last response to a cross-claim, if applicable. This means that, contrary to the 1991 Rules, only one single round of pleadings will be allowed.

* Restriction on the length of pleadings: the New Rules specifically establish that the Court will set the maximum length of the written pleadings. A maximum length was already provided for in the Practice Directions. However, such provision has now been established in the New Rules and its importance thus appears to have been reinforced.

Even if not specifically provided for in the Title of the New Rules devoted to Intellectual Property  matters, the following changes should also be taken into account:

*  Shorter legal time-limits for the submission of applications to intervene and requests for hearing: an application to intervene may no longer be submitted before the decision to open the oral part of the procedure. Now, the application may only be submitted within six weeks of the publication of the notice of the action in the Official Journal of the European Union. As with hearing requests, the time limit is now three weeks (instead of 1 month) from the notification to the parties of the closure of the written part of the procedure.

* Oral hearing: the General Court can now rule without a hearing if none of the main parties has requested a hearing and if it considers that it has sufficient information available from the material in the file.

* Transitional period: some provisions of the 1991 Rules still apply to proceedings brought before the entry into force of the New Rules. By way of example, the provisions regarding the application to intervene (Articles 115(1) and 116(6)); the language of the procedure (Article 131); and the second round of pleadings (Article 135(2)) will continue to apply to actions brought before the General Court before 1 July 2015. Likewise, Article 135(a)), which relates to the oral hearings in IP cases, will continue to apply to actions pending before the General Court in which the written part of the procedure was closed before 1 July 2015.

All in all, we see a good number of changes, most of them welcome, which should help streamline litigation in IP matters before the General Court.

Posted by: Jeremy Phillips @ 11.19
Tags: General Court, rules of procedure,
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