MONDAY, 29 SEPTEMBER 2014
Guess who? If it's not Gucci, it's a parasite

Earlier this month Guccio Gucci S.p.A.,issued a press release to tell the world how very pleased it was with a positive decision from the Court of Appeal of Milan in its bitter dispute with US corporation Guess, which partially reversed the first instance decision of May 2013.

In June 2013 Gucci appealed against an unexpected decision of the Court of Milan to dismiss its action against Guess, in which Gucci claimed, inter alia, that Guess was deliberately indulging in broadly parasitic imitation of its products and distinctive signs in order to take free advantage of Gucci’s worldwide reputation.

In its decision the Court of Appeal pointed out that Guess’s constant imitative attitude towards Gucci’s motifs was clear and that Guess’s initiative in many cases was aimed at a systematic and massive exploitation of Gucci’s initiative and creativity. Consequently, the Court held Guess liable for unfair competition through parasitism.

The Court of Appeal also found that Guess’s imitative conduct was intentional and caused Gucci detriment, ruling that Guess was liable for damages, based on the fact that the U.S. company adopt[ed] signs resembling Gucci’s commercial products, but at a lower price.

While this decision is subject to a further appeal to the Supreme Court, the appellate proceedings will now establish the amount of damages to be awarded to Gucci.

By correcting the first instance’s mistakes on the unfair competition issue, this decision is in line with decisions handed down in both the U.S. and China, which also held Guess responsible for similar wrongdoings.

Posted by: Jeremy Phillips @ 19.57
Tags: Italy, parasitism,
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MONDAY, 29 SEPTEMBER 2014
"Question the Judges": book now!

"Question the Trade Mark Judges". on Wednesday 15 October 2014, 6 - 7.30pm, is a joint presentation by UCL IBIL and MARQUES. As in previous years, Professor Sir Robin Jacob will pose a set of pre-selected questions from the audience to

  • Fidelma Macken (formerly a judge of the European Court of Justice and of the Supreme Court of Ireland)
  • Sylvie Mandel (formerly a judge of the Cour de Cassation, France and formerly a chair of the First Board of Appeal, OHIM)
  • Oliver Morris (Principal Hearing Officer in Trade Marks and Designs Tribunals, UK IPO)
  • Judge Richard Hacon (Intellectual Property Enterprise Court Judge)

Last year's event saw a capacity crowd enjoy a wonderful Q&A session, noted on the Class 46 blog here.  This year's session should be equally exciting. Click here to book now, or prepare to be disappointed!

Posted by: Jeremy Phillips @ 01.58
Tags: Meet the Judges,
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MONDAY, 29 SEPTEMBER 2014
DOGGY a dodgy mark for animal food in Finland

The Finnish Trade Mark Office decided in 28 April 2009 that the international registration DOGGY (registration number 951129) applied for by Lantmännen Doggy AB in class 31 for “animal foodstuffs” would not cover Finland. The reasoning behind this was that the trade mark lacked distinctiveness as it described the purpose of use for the goods it covered. The trade mark consisted of the word DOGG,Y which means “dog” -- a spoken word pet name for a dog. The Office stated that the accepted registrations in other countries that the applicant provided did not disclose whether the marks were accepted to the register based on proof of use. Additionally, the Office stated that the previous registration referred to by the applicant -- HAMPURILAINEN (‘hamburger’ in Finnish) was is not directly comparable to this registration as the descriptiveness of the signs was on a completely different level. The Office reasoned that the registration did not distinguish the goods of the applicant from those of another as far as animal foods were concerned.

The Board of Appeal of the Finnish Trade Mark Office dismissed the appeal in this case and affirmed the decision of the Trade Mark Office, including its reasons.

The case proceeded to the Supreme Administrative Court of Finland, which dismissed the appeal in 9 July 2013 and upheld the decision of the Trade Mark Office. It stated that the registrations which the applicant had presented as being comparable with the applied mark or the fact that the trade mark DOGGY was considered distinctive in other countries did not prove that the mark would be a distinctive trade mark in Finland. Further, the fact that the applicant presented evidence proving that DOGGY products were broadly marketed in Finland at least from year 2003 and that there had been extensive sales of the product in stores belonging to different chain of stores did not produce an outcome that the trade mark would have been used for so long and extensively that it would have become so distinctive that the international registration for the trade mark DOGGY would cover Finland as well. Based on the above, the Court decided that there were no grounds for revising the decision of the Trade Mark Office.      

It is interesting to note that the applicant has this summer, on 15 July 2014, obtained a registration for the figurative trade mark depicted here for animal foodstuffs and dog treats in class 31.

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

Posted by: Jeremy Phillips @ 01.37
Tags: Finland, international trade mark registration,
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SUNDAY, 28 SEPTEMBER 2014
'TEXT-TO-SCREEN' or how to call a tool that converts text to on-screen graphics?

The German Federal Patent Court has confirmed that the word mark 'TEXT-TO-SCREEN' can be registered for goods and services related to the automated creation of cinematographic films and animations.

The company Wonderlamp Industries GmbH had initially sought to register the above-mentioned sign for a broad range of goods and services, including 'computer software' in Class 9, 'printed matter' in Class 16 and 'maintenance and rental of computer software' in Class 42. The German Patent und Trade Mark Office rejected the application on the basis that the mark was purely descriptive and lacked distinctive character. The phrase 'text-to-screen' was held to be a technical term, which described the transfer of text messages to screens, on which the content of the messages was made visible to a larger number of spectators.

The applicant appealed the decision to the German Federal Patent Court, disputing the existence of such a technical term. Further, Wonderlamp Industries argued that the sign was not descriptive of the goods and services at issue, since their purpose was to create pictures as a final result - and not text. At the hearing before the German Federal Patent Court, the applicant restricted the specification in all of the three Classes and added the phrase 'without text elements' in each Class. For instance, the new specification in Class 16 read 'printed matter, namely handbooks for software for the automated creation of moving-image animations without text elements'.

The applicant’s strategy proved to be successful, as the Court annulled the decision of the Office, finding that the sign 'TEXT-TO-SCREEN' did not lack distinctive character and was not descriptive of the remaining goods and services in relation to which the registration was sought.

The Court held that the Office was right to assume that the exclusively addressed specialised public would understand the sign applied for as pointing towards the process of transferring 'a text to a (large) screen'. Further, such a technology was already being used, for instance, in discotheques in order to open up a way of communication between the audience and the organisers of an event. However, by adding the phrase 'without text elements' to the specification of the goods and services, the applicant had ensured that his products would not be related to this technology.

According to the German Federal Patent Court, the sign's registrability was not called into question by the fact that the applicant owned the European Patent EP 2174299 B1 with the title 'Method and System for Producing a Sequence of Views'. In short, the patent referred to a process that could transform the text of a screenplay into 'computer language' and create automated views (i.e., for the positioning of the camera or lighting). Figuring out that the products marked with the sign 'TEXT-TO-SCREEN' could provide this new process would require further contemplation even with regard to those parts of the public which were aware of the patented technology. In this regard, the Court made the – rather vague – statement that such a detailed contemplation would contradict the assumption that the consumer usually perceives a mark the way he encounters it.

Reference: German Federal Patent Court, decision of 20 March 2014, in case 30 W (pat) 529/12 (published on 25 September 2014).

Posted by: Christian Tenkhoff @ 23.50
Tags: German Federal Patent Court; Registrability; Distinctiveness; Descriptiveness; Absolute Grounds ,
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THURSDAY, 25 SEPTEMBER 2014
HAVAIANAS anything but a (flip-)flop

Turin Court orders destruction of counterfeit flip-flops and invalidates HAV@NA CUBA trademark for class 25 goods.

With its decision of 11 July 2014, the Turin Business Court invalidated the Italian trademark HAV@NA CUBA (fig.) filed under application No TO2011C001761 for all goods in class 25 and established, amongst other things, that the use of marks containing the terms HAVANA (or HAV@NA) and HAVANA CUBA violated the exclusive rights in the well-known HAVAIANAS trademarks belonging to their Brazilian owner. The decision further held the defendant liable for unfair competition, ordered the destruction of the counterfeit goods, the publication of the ruling in 2 national Italian newspapers, the payment of a penalty for each future infringement and the payment to the claimant of 100.000 Euros in compensation for damages as well as the legal costs.

                             

 

Background

The case relates to the well-known HAVAIANAS marks for flip flops and other class 25 goods owned by the São Paulo-based company, ALPARGATAS s.a., the claimant.

 

The defendant, ASIAN TRADE S.r.l., that had filed, amongst others, Italian trademark application No TO2011C001761 for the HAV@NA CUBA (fig.) application below, was importing and marketing flip flops in Italy under marks containing the words HAVANA and CUBA for goods that imitated exactly all the aesthetic characteristics of the claimant’s goods.

 

                                                   

Decision

The Turin Court agreed with the claimant that the HAVAIANAS flip flops enjoy a widespread reputation in Italy and that the defendant was clearly liable for acts of unfair competition and infringement of the HAVAIANAS trademarks.

 

As a consequence, the Court declared the Italian trademark HAV@NA CUBA (fig.) null and void for all goods in class 25. In addition, the Court established that the use by ASIAN TRADE of marks containing the terms HAVANA (or HAV@NA) and HAVANA CUBA violated the claimant’s prior trademark rights in HAVAIANAS. The decision also held the defendant liable under Article 2598 of the Italian Civil Code for having slavishly imitated its competitor’s products and thus creating confusion on the market, and ordered the destruction of the counterfeit goods. In addition, the Court ordered the defendant to abstain from all further production and commercialization of class 25 products bearing the words HAVANA (or HAV@NA) or HAVANA CUBA and established a penalty for each future infringement. Furthermore, the Court ordered the plaintiff to pay 100.000 Euros to the Brazilian company in compensation for damages as well as to pay the latter’s legal costs and the publication of its ruling, in a double-sized character, in the national Italian newspapers la Repubblica and Il Corriere della Sera.

Posted by: Edith Van den Eede @ 19.15
Tags: Italy, trade mark infringement, counterfeit, unfair competion, slavish imitation, turin business court, damages,
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THURSDAY, 25 SEPTEMBER 2014
Copenhagen conference: traditional brands in a digital market (Part 2)

After the coffee break, the cleverly-named "wild wild web" session examined issues surrounding websites that sell counterfeit goods, especially tackling the China jurisdiction. Loke Khoon Tan (Baker &Mc Kenzie, Hong Kong) explained that in case of unknown offline presence in China, it can be requested to revoke the ICP licence-keep in mind that only the local regulatory agency can file directly such complaint (after being prompted by private parties). Comparing it with the European practice, in case the physical location of the infringer cannot be found, domain names can be seized upon filing a criminal action (works with worldwide domain names). 

Then the speakers covered issues about specific online platforms in China (Tao bao, We chat and Tmall are the equivalents of Ebay, Twitter and Whatsapp). Again, if possible take the battle offline because all these transactions are not recorded (difficulties in investigation and no easy way to search and identify) because there is no precedent for holding a social media liable (as compared to ECJ's case-law). Take away points are 1):come up with effective enforcement strategy, 2)take down system at online trading platforms may be effective but private investigations or sample purchase may be required to collect evidece, 3)taking the battle offline allow the use of conventional enforcement methods. The final piece of advice is Chinese case-law is continuing evolving so like climbing up the great wall, keep on persevering and the view will be amazing. 

 For members who would like to know in detail about the TM law Made in China which came into effect in May 2014, MARQUES China team organizes a workshop dedicated to it in the afternoon.

Posted by: Laetitia Lagarde @ 14.04
Tags: annual conference, copenhagen, 2014, chinese trademark law,
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THURSDAY, 25 SEPTEMBER 2014
Copenhagen Conference: Traditional brands in a digital market

After an introduction of the role of the Obsevatory by Paul Maier (info available here https://oami.europa.eu/ohimportal/en/web/observatory/home), Dimitris Botis covered the OHIM Update.

 Besides celebrating in Alicante for OHIM's 20 years birthday, the Office has been very busy with the number of CTM applications growing exponentially (114, 427 in 2013). Opposition have decreased in 18% whereas 400 appeals are expected to be filed before the General Court (due to more AG rejections and resulting appeals). For AG rejections, a new policy provides for simpler formalities since 2013, examiners will follow up by phone with applicants rather than by letter (more user-friendly and efficient). 

 

On 1 August 2014, new guidelines have entered into force and are being translated in all EU languages (aiming for publication by end of the year). Some of the main changes include must anticipated changes regarding descriptive elements, inclusion of protected GI's as AB/RG ( applying 'Cognac' Judgment). In fall 2014, all incoming IR will be examined for terms considered too broad or vague, contents of national law shall be examined by OD/CD (implementing National lottery CJEU Judgment). Ongoing projects include covergence design program, EU cooperation fund and joint international exchanges such as implementing "best practices" with China and modernizing the IPR system with the Russian federation (easier to search Russian TM's trough OHIM's system and harmonizing guidelines).

 

 Alicante will be the host city to MARQUES ' winter meeting in 2015; make sure to check out OHIM's beautiful headquarters if you 're in town.

 

Posted by: Laetitia Lagarde @ 13.24
Tags: annual conference, Copenhagen, 2014,
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