THURSDAY, 8 DECEMBER 2016
From Antiquity to the Middle Ages

The History of Marks from Antiquity to the Middle Ages is the title of a fascinating book by Salvatore Di Palma, who worked for 35 years as an international expert at WIPO but who still found the time and the energy to devote some thoughts to the deep and distant past.

According to the publishers (Société des écrivains, France),

The act of inscribing the first distinctive signs on manufactured products and recipients of merchandise constituted the earliest example of what we call today intellectual property. More than 8000 years B.C., long before the Sumerians, the artisans and merchants of Catal Hüyük in Turkey, Jericho in Palestine, Harappa, Mehrgarh, Mohenjo-Daro and Lothal in the Indus valley already used signs, verbal or figurative marks in the course of trading with others... This study, spanning the years from the sacred, collective property of Antiquity to the Guilds and Corporations of the Middle Ages, seeks to discover marks throughout their historical context.

Fortis: organic yoghurt or else a pottery mark from Antiquity? So as to be sure to avoid errors, Salvatore Di Palma offers us a veritable lesson which would cause the producers of the French TV programme "Culture Pub" to die of envy. "Confining" himself to the fluvial civilizations of the ancient world that grew in the Indus valley, on the plains of the Tigris and Euphrates and in the Nile valley, as well to the thalassocratic civilizations situated around the Mediterranean coastline and in Northern Europe, his historical and archeological research, liberally illustrated throughout the text, enlightens us on the long road to intellectual property and the consumer society of today. This colossal undertaking has led to the creation of a fascinating study.

If you are looking for a riveting read over the holiday period, or simply seeking a pretty present for a loved one, this book might be just what you need.

Further details of the book and how to buy it can be found on the publisher's website here.

Posted by: Blog Administrator @ 10.40
Tags: book notice,
0 Comments    Post a comment
SATURDAY, 3 DECEMBER 2016
General Court: "Romeo has a gun, by Romano Ricci" loses against Nina Ricci

For all of us strill trying to cacth up on 2016's important case law, here is a report on joined cases T-359 and T-358/15 issued in September, whereby the EU General Court dismissed the appeals in the following oppositions:

Arrom Conseil - contested  application

Nina Ricci SARL, and Puig France SAS - earlier EUTM's

Image not found

 

 

 

NINA RICCI

 

 

RICCI

 

Class 3: ‘Soaps; Perfumes; Ethereal oils; Cosmetics; Hair lotions; Dentifrices; Depilatories; make-up removing preparations; Lipsticks; Beauty masks; Preparations for shaving; Leather preservatives (polishes); Waxes for leather’.

 Class 25: ‘Clothing; Footwear; Headgear for wear; Shirts; Clothing made from leather or imitation leather; Belts (clothing); Furs (clothing); Gloves (clothing); Scarfs; Neckties; Hosiery; Socks; Slippers; Beach shoes; Ski boots or sports shoes; Underwear’.

Class 35: ‘Presentation of goods on communication media, for retail purposes of soap, perfumery, fragrances, essential oils, cosmetics, hair and body lotions, make-up and beauty preparations, shaving preparations, footwear and clothing; Dissemination of advertising matter; Publicity columns preparation; Commercial information and advice for consumers [consumer advice shop]; Shop window dressing; Distribution of samples; Demonstration of goods; Organization of exhibitions for commercial or advertising purposes; Management (Computerized file -); Modelling and models for advertising or sales promotion; Opinion polling; Public relations; Auctioning’.

 

 

 

 

 

 (among others)

 

Class 3: ‘Perfumery, in particular perfumes, eau de parfum and eau de toilette not containing alcohol, perfume extracts; essential oils for personal use for skin and hair care; toilet soaps; powders and talcs, for toilet use; hair lotions; deodorants for personal use; cosmetics, namely milks lotions and creams for cosmetic use for the face and body, face cleansing gels and oils; aftershave lotions and creams, aftershave sticks

 

Class 25: ‘Clothing, footwear, headgear’

The First Board of Appeal of EUIPO partly upheld the opposition. The relevant public consists of average consumers except for ‘auctioning services’, in respect of which the relevant public comprised businesses and companies, which had a higher degree of attention.

As regards the comparison of the marks at issue,  there is a certain visual and phonetic similarity between the marks since the earlier mark RICCI was entirely reproduced in the mark applied for. Conceptually,  consumers with an understanding of English would perceive the mark applied for as containing a reference to the person Romano Ricci, who was responsible for the creative work ‘Roméo has a Gun’. That meaning was given by the preposition ‘by’, which is commonly used in English to designate the ownership of a creative work. Furthermore, the title of a work was presented before the name of the person and given prominence, as in the present case, with larger letters and a decoration surrounding the title. In view of those considerations, the marks at issue are conceptually similar for consumers who would perceive the earlier mark RICCI as a name. Thus,  the marks at issue were similar overall.

As regards the goods within Class 3, they are in part identical and in part similar to those covered by the earlier mark RICCI. There is also a very low degree of similarity between the goods of the earlier mark RICCI contained within Class 3, and the goods of the mark applied for included in Class 25, because fashion houses had diversified into perfumery and launched perfumes bearing the same names as their clothing or footwear. Finally, there is a certain degree of similarity, albeit low, between the services of ‘presentation of goods on communication media, for retail purposes of soap, perfumery, fragrances, essential oils, cosmetics, hair and body lotions, make up and beauty preparations, shaving preparations’ in Class 35 and the earlier mark RICCI which protected the same goods included in Class 3.

On the other hand, there is no similarity between the services of ‘presentation of goods on communication media for retail purposes of footwear and clothing’ and the goods of the intervener included in Class 3 that are different from the goods related to those services. The other services included in Class 35 re different from the goods covered by the earlier mark RICCI. 

Therefore the Board of Appeal considered that there was a likelihood of confusion in respect of identical and similar goods and services due to the overall similarities between the marks at issue.

As regards Article 8(5) of Regulation No 207/2009, the application for goods within Class 3 and services of ‘Presentation of goods on communication media, for retail purposes of soap, perfumery, fragrances, essential oils, cosmetics, hair and body lotions, make-up and beauty preparations, shaving preparations, footwear and clothing’ included in Class 35 must be rejected on the basis of the opposition based on the earlier mark NINA RICCI enjoyed a reputation in the European Union for clothing and perfumes.

The reputation of the earlier mark NINA RICCI for ‘clothing’  and 'perfumes' is such that the EU public would establish a link between the marks at issue, despite the presence of additional elements in the mark applied for.  According to the Board of Appeal, there is a romantic connection between the marks at issue and it was not inconceivable that the mark applied for could take unfair advantage of the repute of the earlier mark NINA RICCI. Furthermore, the message conveyed by ‘a man with a gun’ would clearly be incompatible with the classical image and notions of femininity, sweetness, nature and happiness of the earlier mark NINA RICCI. The mark applied for would therefore be likely to be detrimental to the repute of the earlier mark NINA RICCI. Finally, the applicant had not demonstrated that there was due cause for the use of the mark applied for, and the documents produced to that effect (namely it was the applicant's name who is a descendant of Nina Ricci) for the first time before the Court had to be rejected.

The General Court upheld all the findings of the Boards of Appeal.

 

Posted by: Laetitia Lagarde @ 12.57
Tags: General Court, likelihood of confusion, reputation, nina ricci, romani ricci,
0 Comments    Post a comment
FRIDAY, 2 DECEMBER 2016
General Court rejects marks representing solar panels

In cases T‑578/15 and Case T‑614/15, Azur Space Solar Power GmbH applied for the two marks below

Image not found  and Image not found

for the following goods

–        Class 7: ‘Electronic generators using solar cells’;

–        Class 9: ‘Semiconductors, semiconductor devices, semiconductor devices for solar cells and solar modules, solar cells, solar cells made of III-V material, solar cells having a plurality of band gaps; solar cell modules, solar cell modules with an array of solar cells’.

The EUIPO rejected the marks on the basis that they would be perceived by the relevant specialist public as a very simple schematic representation of the structure or of an array of solar panels. In the Board of Appeal’s view, the fact that that representation is one mere variant of a wider variety of structural possibilities is irrelevant since it will be perceived as no more than an extremely simplified representation of the structure of the solar panel array itself. Thus the applied for marks are devoid of any distinctive character.

The General Court dismissed the appeals and confirmed that the marks which simply consists of six sloping white lines and three rectangular white bricks on a black background or black lines and bricks without any background, do not have any element which is memorable or capable of endowing it with distinctive character. On account of the overall simplicity of the marks, which overall simplicity the applicant itself, moreover, points out in its application, the marks will not make it possible to identify the applied for goods as coming from a particular undertaking and thus to distinguish them from those which come from other undertakings.

Posted by: Laetitia Lagarde @ 20.16
Tags: general court, absolute grounds, solar panels,
0 Comments    Post a comment
MONDAY, 21 NOVEMBER 2016
Final ETMR for 2016 now published

The December 2016 issue of the European Trade Mark Reports (ETMR) has now been published.

To remind readers, the ETMR is 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 second was a challenge launched by Puma against the EUIPO, based on (among other things) an alleged breach of the obligation to state reasons for office decisions, Unusually, this was a challenge that succeeded.

This issue features just two decisions. The first relates to the unsuccessful bid of designer Karen Millen to regain control over the right to make commercial use of her own name

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: Blog Administrator @ 17.40
Tags: ETMR,
0 Comments    Post a comment
MONDAY, 21 NOVEMBER 2016
Half-price! Likelihood of confusion between two

On 18 October 2016, the Finnish Supreme Administrative Court gave its ruling on the likelihood of confusion between two figurative trade marks both entailing indication of half-price (in Finnish "½ hintaan"). Veljekset Halonen Oy, a Finnish clothing wholesale company, had in 2010 obtained registration (No. 251764) for a figurative trade mark  (text: "½ price days") for clothing, shoes and headgear in class 25.

Faor Oy, also a Finnish clothing wholesale company, known for their Jesper JUNIOR children's clothing and shoe collection, lodged an opposition against the trade mark based on their prior registration  (No. 246488, text: "½ price days") covering in class 25 the same goods as the registration of Veljekset Halonen Oy.

The Finnish Patent and Registration Office found that the marks were not judged as a whole as being confusingly similar. They considered that the textual parts of the marks referred to the same thing, i.e. to a discount campaign offering the products at half price. These parts of the marks were the weak and descriptive parts of the mark. The other parts of the marks and the appearance and the general impression of the marks were thus sufficiently different.

Faor Oy went on to appeal the decision to the Market Court.  The Market Court's view was similar to that of the Finnish Patent and Registration Office as it stated that one should especially take note to the differences between the figurative elements of the marks. In Veljekset Halonen Oy's mark these were the various circles and their disposition and, in Faor Oy's mark, the peculiar expression on the face included in the mark. These distinctive elements resulted in the overall difference between the marks. Faor Oy also claimed that its mark was a trade mark with a reputation but the Market Court considered that the evidence submitted to support this claim was not sufficient.

Still being dissatisfied with the decision, Faor Oy appealed the decision to the Supreme Administrative Court. Faor Oy was of the opinion that the textual part of its mark "1/2 -hintapäivät" was not descriptive and was more of a binding and public price promise. Further they considered that there was a likelihood of confusion as then the dominating text elements of the mark would be similar. They also e.g. stated that the likelihood of confusion would take place due to the phonetic similarities between the marks. Veljekset Halonen Oy on its side leaned e.g. on the fact that the figurative elements of the marks were the most relevant and sufficiently different from each other. Further, even if the text elements of the marks would be compared, Faor Oy would not have a monopoly on such a general price promise.

After evaluating the matter, the Supreme Administrative Court, without giving any written analysis on its reasoning, rejected the appeal. Thus these the marks will now co-exist on the market. It is quite interesting to note that the words indicating "half price days" were actually considered descriptive for the goods themselves, namely clothing, shoes and headgear.

The decision (in Finnish) can be read here.

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

Posted by: Blog Administrator @ 01.32
Tags: Finland, likelihood of confusion,
0 Comments    Post a comment
FRIDAY, 18 NOVEMBER 2016
A fortunate opposition? GC decides in FORTUNE HOTELS vs fortune opposition matter

Please see below for a summary of the Jugdment issued by the General Court of the European Union, For Tune v EUIPO, Case T-579/15, 8 November 2016, kindly prepared by Craig Kelly (Legal Assistant at MARQUES' member Baker & McKenzie).

In its recent decision in For Tune v EUIPO (Case T-579/15, 8 November 2016) the EU General Court agreed with the EUIPO's Board of Appeal that there was a likelihood of confusion between the EUTM device mark application 'fortune' and the earlier German mark 'FORTUNE-HOTELS', both covering various services including in Classes 35 and 41 under Article 8 (1) (b)  EU Trade Mark Regulation (207/2009/EC).

Image not found


On the point of relevant consumer, the EU General Court agreed with the Board of Appeal that services in Classes 35 and 41 were directed both at the general public and professionals in that sector and as the earlier trade mark was a German trade mark, it was necessary to assess the likelihood of confusion with regard to the German public.

In its appeal to the General Court the applicant had argued that the signs were visually distinguishable as they were spelt differently and were also different in their design.  Unlike the earlier mark, the accent in the application was placed on the element 'for', which was stylised and held in a different colour.  Furthermore, consumers would notice the difference in the length of the signs "FORTUNE" (one word) vs "for tune" (two words). 

The judges  found that the shared dominate element in both signs was the element 'fortune' and this would be noticed in the overall impression of the proposed mark. This was supported by the fact that the English and French word 'fortune' (in the sense of "chance") had entered the German language and so would be understood by the relevant consumer. This finding was inter alia confirmed by the German online dictionary "Duden".  

The court agreed with the Board of Appeal that there was a average degree of phonetic similarity between the marks in question, when taking into the account the absence of the word element 'hotels' in the application. unlike the earlier mark, the accent is placed on the element 'for', which is stylised and in a different colour to that of the mark applied for. The judges also noted that the symbol ®, present only in application and indicating the legal status of that mark, was not pronounced.

Conclusion:

The Court agreed with the Board and held that there was an average degree of visual and phonetic similarity, a certain degree of conceptual similarity and since the similarity of the services had not been challenged, overall a likelihood of confusion between the marks in question under Article 8(1)(b).

On reflection, the two marks are very similar, even with the 'hotel' element included. The application mark 'fortune' although stylised and held in two different colours, does give the impression of just one word .

Posted by: Laetitia Lagarde @ 19.05
Tags: General Court, likelihood of confusion, Fortune, hotels,
0 Comments    Post a comment
WEDNESDAY, 16 NOVEMBER 2016
Switzerland: if there is a plus in your mark, it's a negative

Kaufland Warenhandel GmbH & Co. KG sought to extend the protection of its international mark CONCEPT+ to Switzerland. The mark sought protection for a number of goods in classes 3, 5, 10, 16, 29, 30, 32. It's mainly used for over-the-counter medicine.

Just pronounce CONCEPT+ in your head. Did you read CONCEPT PLUS? So did the applicant. But the Swiss IPO and on appeal the Federal Administrative Court disagreed. When used in red, the + is a red cross, and as such protected under the Red Cross Act. When used in white on a red background, the cross is confusingly similar to the Swiss flag, which may not be registered as a trade mark according to the National Emblem Act ("Wappenschutzgesetz"). The applicant argued in vain that the thickness of the bars of the "plus sign" was not the same as the thickness of the bars of the Swiss cross. It also pointed in vain to older registrations that contained a plus.

Note that under the revised Wappenschutzgesetz coming into force 1 January 2017, it will be permissible to register marks containing the Swiss cross (but not the Swiss emblem), if the designated goods originate from Switzerland. In the case at hand, the Federal Administrative Court held that the use of the mark would be deceptive, as the goods did not necessarily originate from Switzerland.

The take away for trade mark owners is that under this new practice, the Swiss IPO will in principle not register any word marks containing a plus sign unless you disclaim use in red and use in white on a red background. If you do not disclaim use in white on a red background, you must limit the list of goods to goods originating from Switzerland. Or you positively claim a colour other than red, for example green, which is fine, too.

The only other exception is if in the context of the sign, the "+" is clearly only understood as a plus sign. You could register, e.g., the sign "2+2=4", as in the context, the + is clearly not seen as a cross, but as a mathematical operator. In view of the CONCEPT+ decision, expect this exception to be handled rather narrowly.

On a total side note, a long time ago I used to work for the International Committee of the Red Cross (ICRC). The ICRC is strictly religiously neutral. As you can imagine, driving around in a car with a cross on the side is not unproblematic in certain countries. The ICRC's position is that the Red Cross is not a Christian cross, it is rather a plus sign. I guess the Swiss IPO and the Federal Administrative Court would agree.

Decision B-2781/2014 of 27 October 2016 (PDF, not final).

 

Posted by: Mark Schweizer @ 09.12
Tags: Switzerland, absolute grounds of refusal, geographical indications,
1 Comments    Post a comment