TUESDAY, 30 JUNE 2015
General Court: essence is not distinctive for some cosmetics

In judgment T-448/13, Bora Creations, SL (Spain) had registered Essence for the following goods: ‘Hair colorants and hair tinters, soaps, perfumery, essential oils, cosmetics, hair lotions, preparations for cleaning, care and beautification of the skin, scalp and hair, decorative cosmetics, false eyelashes, nail care products (included in Class 3), varnishes, nail varnish removers, products for modelling and making false fingernails (included in Class 3)

Beauté Prestige International brought an Action for invalidity which was rejected by the Cancellation division. However, the Fifth Board of Appeal partially annulled the decision of the Cancellation Division by declaring the invalidity of the mark for ‘hair colorants and hair tinters, soaps, perfumery, essential oils, cosmetics, hair lotions, preparations for cleaning, care and beautification of the skin, scalp and hair, decorative cosmetics, nail varnishes, nail varnish removers and nail care products’ included in Class 3.

 

By contrast, the Board of Appeal dismissed the appeal and declared the mark valid in respect of ‘false eyelashes’, and ‘products for modelling and making false fingernails’ included in Class 3.

 

The word ‘essence’, which is not rare or unusual, refers to plant extracts which can be used as a scent or perfume and can also refer to a concentrate of such an extract. As such, this word gives a clear and unequivocal message relating to an attribute of cosmetic products.

Next,   many of the goods could in fact be described by the word ‘essence’ so the mark at issue was purely descriptive in respect of the goods concerned, and it was not capable of identifying the origin of those goods. Accordingly, he mark at issue had been registered in breach of Article 7(1)( b) and (c) of CTMR.

The General Court dismissed the appeal.

Posted by: Laetitia Lagarde @ 07.57
Tags: general court, absolute grounds, essence, cosmetis,
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MONDAY, 29 JUNE 2015
Tell us who you are and what you want: a MARQUES survey

MARQUES, the association of trade mark owners, wants to find out more about MARQUES members and other IP professionals. What services do you value, and what else would you like to see offered? Please take a few minutes to answer the 12 questions in the brief survey which MARQUES is running here.

One lucky respondent will win a bottle of Luxembourgish Cremant, kindly donated by Olivier Laidebeur (Office Freylinger SA, and a member of the MARQUES Communication and Membership Team). Note: the survey closes on 27 July 2015 and minors cannot participate.

Posted by: Jeremy Phillips @ 23.30
Tags: survey,
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MONDAY, 29 JUNE 2015
General Court shedding light on priority claims

In case T-186/12, the General Court reviewed the legality of a decision by the Boards of Appeal regarding a claim for priority.

Capella EEOD (replaced by Copernicus-Trademarks before the GC) had filed an opposition against CTM application LUCEA LED on the basis of LUCEO- a CTM filed after the contested mark but with earlier priority date by virtue of an Austrian trade mark application. The OD upheld the opposition finding that the marks were similar for identical goods ‘surgical lights’ in class 10 .

The applicant Maquet SAS filed an appeal during which it submitted a judgment from Manheim Court which ruled that Capella had acted abusively by presenting cease-and-desist requests, on the basis of the same Autrian mark registration of the mark on which the opposition was based, and on which the priority claim was based, which had been applied for several times without payment of the filing fee.

The Fourth Board of Appeal annulled the decision of the OD and rejected the opposition. First, the date on which Maquet's appliction had been filed was 29 July 2009, whereas that on which Cappella's mark on which the opposition was based had been filed was 16 September 2009, which was thus a later date. Next, the right of priority for Cappella's mark on which the opposition was based had not been validly claimed. Capella had not filed the required priority document and the completed application form submitted by it did not bear any stamp or indication that it had in fact been received by the Österreichisches Patentamt. In addition, the BoA was entitled to examine the validity of a priority claim in the context of opposition proceedings.  

The General Court dismissed Cappella’s appeal. Regarding the first and fourth pleas in law and alleged infringement of Article 76(2) CTMR, the Court reminded the parties that even in proceedings relating to relative grounds for refusal, Article 76(2) does not preclude the BoA from examining certain matters of its own motion. Issues of law which require to be resolved in order to ensure a correct application of CTMR having regard to the facts, evidence and arguments presented by the parties must be ruled on by OHIM, even when they have not been raised by the parties. Thus the BoA had the right to call into question the priority date entered in the register.

As regard the third plea in law, Cappella claimed that it has satisfied the requirements of proving priority by submitting documents complying with Decision No EX‑05‑5 adopted by President of OHIM. However the Court confirmed that even if the copy of the priority document need not be certified by the authority with which the application was filed, it must none the less be a document from which the examiner must be able to determine whether and when the application for the trade mark was received by the office concerned. The copy of the application form for registration submitted by Capella did not, however, record that it had been received by the Österreichisches Patentamt. Moreover, if the required information is not available on the Office’s website, the onus of proof still lies on the priority claimant; it is not for OHIM’s examiner to contact the office directly.

As to the second plea of law, the BoA was not obliged to inform Capella that it was not going to confirm the examiner’s conclusion as to the soundness of the priority claim, so it did not violate the right to be heard within the meaning of the second sentence of Article 75 CTMR. Finally, there was no violation of principle of legitimate expectations resulting from the error committed by the examiner because the applicant Maquet had raised that issue in its pleadings before the BoA, giving Capella the opportunity to reply specifically on this issue, which it failed to do.

Posted by: Laetitia Lagarde @ 06.09
Tags: general court, priority claim, capella, ,
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FRIDAY, 26 JUNE 2015
Combit Software heads to the CJEU: do you want to comment?
Case C-223/15 Combit Software is another trade mark law reference to the Court of Justice of the European Union.  The referring court is the Oberlandesgericht Düsseldorf (a German Court which is often called upon in computer program copyright cases) and this case regards Community trade marks (CTMs) and the perception of the average consumer when it comes to likelihood of confusion.

The Oberlandesgericht Düsseldorf asks the Court of Justice of the European Union for a preliminary ruling on the following questions:

 In determining the likelihood of confusion of a Community word mark, what is the significance of a situation in which, from the perspective of the average consumer in some Member States, the aural similarity of the Community trade mark with another sign claimed to infringe that trade mark is eliminated by a difference in meaning, whereas from the perspective of the average consumer in other Member States it is not:

 (a) In determining the likelihood of confusion is the perspective of some Member States, of the other Member States, or that of a fictive EU average consumer decisive?

 (b) If there is a likelihood of confusion only in some Member States, has the Community trade mark been infringed across the European Union, or must the Member States be differentiated individually?

The UK government invites comments from the public that will enable it to determine whether it should intervene in these proceedings or make a submission to the Court.  If you would like to comment on this case just email policy@ipo.gov.uk by 10 July 2015.

Class 46 does not have any background information concerning this reference for a preliminary ruling and will be pleased to hear from any reader who can supply some detail of the context in which these questions are asked.

Posted by: Jeremy Phillips @ 16.30
Tags: CJEU reference, CTM, perception of average consumer,
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THURSDAY, 25 JUNE 2015
SUOMEN PAKASTETUIN JÄÄTELÖ is A-OK for ice cream

In the summertime, while enjoying an ice cream in the moderately warm sunshine of the Finnish summer, before it becomes a distant dream, now’s the time to review this quite recent (30 April 2015) decision of the Market Court in Finland that the slogan trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" (registered trade mark number 254065) of Société des Produits Nestlé S.A. may be registered for "ice cream" in class 30. The phrase "SUOMEN PAKASTETUIN JÄÄTELÖ" is a word play fusion of the words "pakastaa" (in English, "to freeze") and "rakastaa" (in English, "to love"). Thus the whole phrase "SUOMEN PAKASTETUIN JÄÄTELÖ" means "the most frozen ice cream in Finland" but has a punning allusion to the meaning of the most loved ice cream in Finland ("Suomen rakastetuin jäätelö").

The opponent in this case opposed the registration of the trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" for "ice cream" in class 30 based on the fact that the trade mark lacked distinctiveness for ice cream. The opponent stated that the trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" was a slogan which was both a claim or statement in the standard language which as a whole gave the consumer an idea of the kind, quality and purpose of use of the goods. The opponent backed its arguments by introducing other slogan-like trade marks, all of which were figurative trade marks. This, according to the opponent, showed that slogan-like trade marks could be only registered as figurative marks.

The Finnish Trade Mark Office dismissed the opposition and stated that the trade mark was distinctive for "ice cream" in class 30.  The fact that the trade mark is a slogan and contains a claim does not automatically mean that such a mark would not be distinctive. The Office emphasized that slogans are also evaluated as a whole and that the goods applied for, as well as the target consumers, are taken into consideration in order to determine whether the slogan is a trade mark or phrase describing the goods themselves. As ice cream is a consumer product meant to be eaten, being frozen is not a specific characteristic of the product but merely a means to preserve the product. Thus the consumer sees the phrase "SUOMEN PAKASTETUIN JÄÄTELÖ" mainly as a word-play referring to "Suomen rakastetuin jäätelö" which the Office considered to be distinctive.

The opponent further appealed this decision to the Market Court, arguing that accepting the trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" for registration would give an unfair position to the trade mark holder in relation to other similar trade mark owners. The opponent further maintained that the word "pakastetuin" (in English, “the most frozen”) clearly refers to ice creams and is an action directly linked to ice creams as being necessary for the purpose of use of ice creams -- and is thus descriptive of the product in question.

Nestlé responded by pointing out the commercial insignificance of the slogan "Suomen pakastetuin jäätelö" and that the phrase merely suggests "Suomen rakastetuin jäätelö". Nor was there any point in keeping the slogan available as there was no competition in the market for the most frozen ice cream and the trade mark was clearly unique and distinctive.

The opponent further stated its firm opinion that the trade mark was not distinctive and that ice cream stops being ice cream once it is no longer frozen. What’s more, this trade mark might also refer to the most frequently purchased ice cream. Finally, said the opponent, the slogan plainly obeyed to Finnish grammar rules and there was no word play.

The Market Court based its evaluation on Section 13 of the Finnish Trade Marks Act, which indicates the requirements for registration of a trade mark, and also took account of Trade Mark Directive 2008/95 and Council Regulation 207/2009 on the Community trade mark as well as legal practice in relation to it.

The Market Court explained that the trade mark would be considered non-distinctive should even one of its possible meanings express the qualities of the product. The reference to freezing might in itself be seen to refer to the qualities of the ice cream. However, the phrase in the form "pakastetuin" (in English, “the most frozen”) is not in use in the marketing of the relevant industry and the average consumer is not accustomed to comparing ice creams on the basis of which one of them is the most frozen. This leads to the fact that the average consumer does not recognize the word "pakastetuin" to refer to the characteristics of the product.  Further, the phrase does not directly or specifically describe ice cream or their qualities and the word-play element is present. The Market Court added that there was no proof that the phrase "SUOMEN PAKASTETUIN JÄÄTELÖ" would be a commonly used phrase in the industry.

In conclusion, the Market Court held that the trade mark "SUOMEN PAKASTETUIN JÄÄTELÖ" distinguished the goods of Nestlé from those of others and that the trade mark was thus distinctive.

It should be mentioned that this great ice cream battle was not a straightforward case as the decision of the Market Court was not unanimous. Thus we are interested to see whether this goes further to the Supreme Administrative Court.

Market Court Decision MAO: 304/15 can be found here (in Finnish).

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

Posted by: Jeremy Phillips @ 23.14
Tags: Finland, ice cream slogans,
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THURSDAY, 25 JUNE 2015
General Court: Two 'D' or not two 'D'

In Case T-662/13, Diseños Mireia, SL, sought to register the figurative sign on the left as a CTM, claiming protection for goods in Class 14, such as "jewellery".

The opponent, dm-drogerie markt GmbH & Co. KG, filed a notice of opposition based on the Community word mark 'dm' covering "jewellery, horological instruments; key fobs" also in Class 14, arguing that the applicant's mark gave rise to a likelihood of confusion under Article 8(1)(b) CTMR.

Both the Opposition Division and the First Board of Appeal of OHIM rejected the opposition in its entirety: The mark applied for would most probably be perceived as representing a highly stylised capital letter 'M' whereas the earlier mark consisted of the letters 'd' and 'm'. According to OHIM, there were no visual, phonetic or conceptual similarities between the signs and, thus, no likelihood of confusion.

The General Court (GC) shared this view and dismissed the opponent's appeal. In essence, the case turned on the question of whether or not the relevant public saw a representation of the interlinked capital letter 'D' in addition to a representation of the capital letter 'M' in the mark applied for. 'No', said the GC (and this blogger admits that, when seeing the figurative mark for the first time, he was not sure to be looking at a letter at all).

More precisely, the Court eloquently described that

"the line which extends the upper serif of the left vertical line of the mark applied for towards the centre of that mark, curves markedly towards the left, crosses the baseline, turns back towards that vertical line and ends placed under the lower serif will not be perceived by the relevant public as also having the function of forming the bowl of the capital letter 'D'."

The opponent was unable to convince the Court of the contrary on the grounds that the letters 'D' and 'M' represented the initials of the applicant's trade name 'Diseños Mireia'. It was considered to be insufficient that the applicant allegedly used the mark applied for together with a reference to its trade name. The GC confirmed that the comparison must be made between the signs as they were registered or as they appear in the application, regardless of whether they are used alone or together with other marks or particulars.

The picture on the right, from the applicant's website, implies that the mark applied for is indeed used in connection with the trade name 'Diseños Mireia', which, somehow, makes seeing the interlinked letter 'D' that much easier. That being said, the Court's approach to limit the comparison of the signs to their registered form (or the form applied for) is generally understood as common practice, and it is in line with previous EU case law (see, for instance, Case T-29/04, para. 57; later confirmed by the CJEU in Case C-131/06 P, para. 56).

Posted by: Christian Tenkhoff @ 21.43
Tags: Likelihood of confusion, word mark, CTM, registration,
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FRIDAY, 19 JUNE 2015
Portugal: INPI - New fees for trade marks

INPI Deliberation no. 1140/2015 updated the fees related to trade marks. As of 1 July 2015, the fees bellow will start being charged:

 

ACT

Online fee Paper fee

Trade mark application, covering one class of goods / services:

123.18€ 246.35€
Fee for each additional class: 31.22€ 62.45€
Application to register a logotype, award, AO or GI: 123.18€ 246.35€
REPLIES TO INPI NOTIFICATIONS OR PROVISIONAL REFUSALS:
Reply with amendments to the sign, products, services or class (per each class): 31.22€ 62.45€
Reply without amendments: 5.20€ 10.41€
AMENDMENTS MADE BY THE APPLICANT:    

Amendments to the sign, products, services or class (per each class):

31.22€

62.45€

Declaration of consentn: 10.41€ 20.82€
Request for cancellation (national or international trade marks): 10.41€ 20.82€
Defence in cancellation proceedings(national or international trade marks): 5.20€ 10.41€
RENEWALS:
Trade mark (one class) or logotype renewal: 123.18€ 246.35€
Fee for each additional class: 31.22€ 62.45€
OPPOSITIONS:
Oppositions, Replies to Oppositions: 52.04€ 104,08€
Request for a cooling off period and extensions: 26.03€ 52.04€
Request for decision change: 156.12€ 312.25€
Re-establishment of rights: 156.12€ 312.25€
TRANSACTIONS:
Transmission: 105.08€ 130.11€
Licence: 88.46€ 104.08€
 

 

Posted by: Pedro Malaquias @ 19.12
Tags: Portugal, INPI, Fees,
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