Art works as trade marks, public policy -- and a reference to the EFTA Court

A trade mark dispute is heading to the EFTA Court for an advisory opinion. It's Case E-05/16 Norwegian Board of Appeal for Industrial Property Rights, appeal from the Municipality of Oslo. We haven't received any specific information concerning the background, but this reference may concern attempts to register as trade marks the works of artist Edvard Munch and sculptor Gustav Vigeland (one of whose best-known works appears on the right). If any reader has direct information concerning this case, do please let us know.

The questions referred to the EFTA are:

1.       May trade mark registration of copyright works, for which the protection period has expired, under certain circumstances, conflict with the prohibition in Article 3(1)(f) of the Trade Marks Directive on registering trademarks that are contrary to 'public policy or … accepted principles of morality'?

2.       If question 1 is answered in the affirmative, will it have an impact on the assessment that the copyright work is well-known and of great cultural value?

3.       If question 1 is answered in the affirmative, may factors or criteria other than those mentioned in question 2 have a bearing on the assessment, and, if so, which ones?

4.       Is Article 3(1)(e)(iii) of Directive 2008/95/EC applicable to two-dimensional representations of sculptures?

5.       Is Article 3(1)(c) of Directive 2008/95/EC applicable as legal authority for refusing trademarks that are two or three-dimensional representations of the shape or appearance of the goods?

6.       If question 5 is answered in the affirmative, is Article 3(1)(b) and (c) of Directive 2008/95/EC to be understood to mean that the national registration authority, in assessing trade marks that consist of two or three-dimensional representations of the shape or appearance of the goods, must apply the assessment criterion of whether the design in question departs significantly from the norm or customs of the business sector, or may the grounds for refusal be that such a mark is descriptive of the shape or appearance of the goods?

If you would like to comment on this case so that the UK government can decide if it wishes to make representations, please email by 6 May 2016.

Posted by: Blog Administrator @ 03.11
Tags: EFTA Court, trade marks and public policy,
0 Comments    Post a comment
Infringement of GIs for wines, spirits and other edible goodies in the EU: a report

Infringement of Protected Geographical Indications for Wine, Spirits, Agricultural Products and Foodstuffs in the European Union is a 40-page report published this month. Despite all the references to alcohol, it makes for sobering reading.

The report concludes:

This is the first study attempting to assess the dimension of GI infringements in the EU as a whole. It clearly indicates that the issue has a relevant dimension in terms of negative impact, corresponding to 9% of the total GI product market and valued at € 4.3 billion. EU consumers lose € 2.3 billion annually by paying a premium price for what they believe to be a genuine GI product while in fact they are victims of deception.

Given the very low number of GI-infringing products recorded by EU customs referred to above, it may be assumed that most of the infringements of GIs identified in this study originate primarily within the EU. There is, however, no concrete evidence or reliable data allowing one to identify precisely the origin of these infringing products. Compiling and analysing such data would shed further light on this issue.

The focus of this study was infringements of GIs (for wine, spirits, agricultural products and foodstuffs) protected as sui generis intellectual property rights in the EU marketplace. In the future, the study could to be extended to include the international aspect of EU GIs infringements in third countries. As the protection of GIs is expanded through, inter alia, bilateral trade agreements, it should become possible to expand the scope of this research by studying infringements at a more global level.

To read the report in full, click here.  For details of MARQUES's Geographical Indications Team and its activities, click here.

Posted by: Blog Administrator @ 07.52
Tags: GIs, GI infringement,
0 Comments    Post a comment
Happy dinos in General Court

In Case T‑21/15, the General Court dismissed the appeal in the following opposition case

Franmax UAB- EU TM applicant

Ehrmann AG Oberschönegg im Allgäu - Opponent

Image not found

Image not found

    -Class 29: ‘Preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and other milk products’;

–        Class 30 ‘Coffee, cocoa and artificial coffee; rice, tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; spices; ice’.


  Class 29: ‘Milk and milk products, especially sour milk products, yoghurt products, butter milk products, cream products, whey products for nutrition purposes, non-alcoholic milk drinks with a predominant milk fraction, curd products, half-fat milk products, desserts consisting essentially of milk and/or cream, also using binding agents based on starch; soya products as foodstuffs, especially substitute products for milk, cheese, butter, yoghurt, curd, pudding, desserts and similar food based on soya (as far as included in this Class); all above goods also containing fruits, vegetables, herbs, spices, cereals, juices or extracts from the above ingredients and flavours, all above-mentioned goods as fresh or cured finished products’;

–        Class 30: ‘Ice-cream’.



The Opposition Division partially upheld the opposition and rejected the application for ‘preserved fruits’, ‘compotes’ and ‘milk and other milk products’ in Class 29, and ‘coffee’, ‘cocoa’, ‘artificial coffee’, ‘pastry’, ‘confectionery’, ‘preparations made from cereals’, ‘spices’ and ‘ices’ in Class 30.

The Fifth Board of Appeal of EUIPO annulled the decision of the OD in so far as it had rejected the application for ‘preserved fruits’ and ‘spices’, and dismissed the appeal as to the remainder. It did not endorse the OD's conclusion that ‘spices’ and ‘soya products’, were similar, nor that 'preserved fruits' were similar to '‘milk products’ and ‘ice-cream’.

The comparison of goods by the BOA is laid out in the table below:


EU TM application

Earlier mark


'preserved fruits’ and ‘spices’

‘milk and milk products’

no similarity

'coffee’, ‘cocoa’, ‘artificial coffee’ and ‘preparations made from cereals’

milk products’

low similarity

relevant consumer could think that the same undertaking had responsibility for their manufacture

Moreover, they are often consumed together as coffee, cocoa and artificial coffee are generally mixed with milk 

Also, cereal milk, which falls within the category of ‘preparations made from cereals’, is often consumed as a substitute for cow’s milk by persons who are lactose intolerant.

‘compotes’, ‘pastry’ and ‘confectionery’

milk products’


in so far as those goods had an identical purpose, the same method of use, the same distribution channels and target public, and that they were in competition or complementary

'compotes’ could be consumed as desserts or sweet snacks, just as ‘milk products’ could. Moreover, dual-pot yoghurts often have compotes in one pot and yoghurt in the other coming from the same undertaking.

'pastry’ and ‘confectionery’ can be consumed as desserts or sweet snacks, just as ‘milk products’ such as yoghurt or milk pudding can.


 ‘milk and milk products’ and ‘ices’

milk and milk products’



According to the BoA, the ‘preserved fruits’ and ‘spices’ covered by the mark applied for and the ‘milk and milk products’ covered by the earlier mark did not bear any similarity.

As regards the comparison of the signs at issue, the representation of dinosaurs in the two marks at issue displayed, despite some differences, a medium degree of visual similarity. Each of those marks resembles a ‘cartoon-like image’ and gives an ‘impression of a friendly and happy creature’ -which is not disputed by the applicant. In addition, the shapes of the body of the dinosaur are nearly identical in the marks and in each of them, the dinosaur is standing, in profile, at fairly similar angles, walking, with one foot on the ground, one leg raised and a slightly raised tail.

The phonetic comparison of the signs at issue is irrelevant, since a figurative mark without verbal elements could not be pronounced. Finally,  the marks both evoked a happy dinosaur and were therefore ‘highly similar’ conceptually.

The Board of Appeal concluded from this that the marks at issue must be considered similar overall. As regards the global assessment of the likelihood of confusion, the BoA observed that the verbal element ‘dino’ in the mark applied for only strengthens the concept derived from the figurative element. Consequently, taking account of the similarity of the marks at issue, of some of the goods covered by them, and of the average level of attentiveness of the relevant public, it was likely that that public would believe that those goods came from the same undertaking or from an economically-linked undertaking, so that the mark applied for could not be registered for those same goods.

Posted by: Laetitia Lagarde @ 20.53
Tags: General Court, likelihood of confusion, dino, milk, coffee, pastry, ,
0 Comments    Post a comment
Graphical representation of a Design: we now have a Common Communication

Class 46 has learned that the Common Communication for the CP6 project on Graphical representation of a Design --- the first Common Communication in the area of designs -- is now coming to fruition. According to information received:

The Common Communication on CP6 has been simultaneously published on the website of all implementing offices on 15 April 2016. It offers users and interested IP Offices access to the Common Practice in its entirety and complementary information, such as the precise implementation dates for each implementing EU IP Office and a compilation of Frequently Asked Questions (FAQs).

The project’s Working Group is composed of twenty-three participating IP Offices, five observers, two User Associations and the EUIPO.

These efforts support transparency, legal certainty and predictability in how to use, appropriate disclaimers, types of views and how to represent designs on a neutral background. As additional information for users, the Common Communication also includes an overview of the Offices’ quality standards for design applications received by electronic means and by paper. 

This Common Practice is the first milestone in the harmonisation of designs practices and is most certainly the beginning of a continuous collaboration between the IP Offices in the field of designs.

EUIPO’s Academy will announce a webinar on the CP6 common practice in due course (expected in the month of May).

This information is also being posted on the Class 99 design law blog but, givren its importance and also recognising the extent to which design and trade mark law interface or overlap with one another, it was felt necessary to post it here too.

Posted by: Blog Administrator @ 17.34
Tags: Graphical representation of a Design,
0 Comments    Post a comment
Moreno Marin reference seeks to clarify GI/TM interface

A potentially important Spanish case is heading for Luxembourg, for a preliminary ruling from the Court of Justice of the European Union (CJEU). It's Case C-139/16 Moreno Marin and others. The referring court -- the Audiencia Provincial de Burgos -- wants clarification of the criteria for determining whether a sign constitutes an indication of geographic origin (and hence what signs are incapable of registration or liable to be declared invalid) under Article 3(1)(c) of Directive 2008/95.

The questions referred to the CJEU read like this:

1.       May the prohibitions in Article 3(1)(c) of Directive 2008/95 include the use of a sign referring to the characteristic of a product or service which is that it can be found in abundance in a single place with a high degree of value and quality?

2.       May a sign with these characteristics be regarded as a sign of geographical origin in so far as the product or service will always be concentrated in a specific physical area?

If you would like to comment on this case to the UK IPO, please email by this coming Monday, 25 April 2016.

Posted by: Blog Administrator @ 06.23
Tags: CJEU reference,
0 Comments    Post a comment
Due Diligence and Supply Chain Integrity: a call for your help

The European Commission is frequently criticised for failing to do enough to tackle intellectual property infringements and systemic weaknesses that work against the interests of lawful IP rights-based traders.  It is however reasonable to ask: "If we expect the Commission to help us, are we doing enough to help the Commission?".

Class 46 has received the following missive, extending still further -- to the end of this month -- the deadline for receipt of information that will enable the Commission to formulate its position with greater clarity.  Do please respond!

We wish to inform you that the consultation "Due diligence and supply chain integrity for intellectual property protection" which we launched on the 17 December last year and which was due to run until 6 April had by that date received very few replies. As a consequence we have decided to extend the deadline for responses.  This consultation is seeking to evaluate the efforts made by rightsholders and views of other stakeholders on what rightsholders could do to secure their respective supply chains against IPR infringing activity. It is an integral and important part of the Commission's intention this year to evaluate and if need be revise the EU's IP  enforcement framework.

... We hope that the low response to date simply reflects a lack of awareness although we have made best efforts over the past months to draw attention to this consultation at meetings held in the Member States and conferences etc. where the issue of IP enforcement has been discussed. It goes without saying that a low response to this consultation would have direct implications on how the Commission would proceed with its policy in this field.

I would also wish to encourage companies providing  services to also respond to this questionnaire. Too often we hear from trade associations that this issue only deals with counterfeiting of physical products. ... Today all businesses focus on their core activities and sub-contract for reasons of efficiency to tens if not hundreds of suppliers non-core activities or inputs. This is as true for a record label, film studios as it is for car ,aircraft and fashion  manufacturers. Weaknesses in the supply chain can increase the risk of piracy, trade secret theft, patent infringement, design infringement and counterfeiting.

Any business that has a trade mark and believes that it should make all efforts to preserve its brand equity ought to be concerned. Likewise any hi-tech or copyright dependent company whose IP is core to its business model success should also be interested and have a view on this issue (small and large). ..

This consultation is  a key action of the "Follow the Money" package which aims at promoting constructive dialogues between right holders and intermediaries in view of identifying effective best practices to tackle IP infringements at the source. As the actions proposed are all interconnected, a limited participation in this survey by rightsholders would not only prejudice the action on supply chains but more generally would have direct implications  for  all the other EU, and dare I say national, initiatives on IP enforcement.

The survey can be found on any of these pages:


Posted by: Blog Administrator @ 19.14
Tags: European Commission, consultations,
0 Comments    Post a comment
France and her extensions: latest Madrid news

We have received the following information concerning France and her overseas territories. This information comes from our friends at WIPO and it runs liked this:

The National Industrial Property Institute of France (INPI) has provided information to the International Bureau of the World Intellectual Property Organization (WIPO) on the French Overseas Territories which are covered by a designation of France or a designation of the European Union in an application for international registration or in a designation subsequent to the international registration.

Naturally our curiosity was piqued, so we clicked through to WIPO's Information Notice 18/2016.  By that notice, we discovered this:

1. The National Industrial Property Institute of France (INPI) has provided information to the International Bureau of the World Intellectual Property Organization (WIPO) on the coverage of a designation of France through the Madrid Protocol and a designation of the European Union through the Madrid Protocol with regard to the French Overseas Territories.

Designation of France through the Madrid Protocol

2. A designation of France in international applications and in subsequent designations through the Madrid Protocol extends to French Guiana, French Polynesia, French Southern and Antarctic Lands, Guadeloupe, Martinique, Mayotte, New Caledonia, Réunion, Saint Barthélemy, Saint Martin (French part), Saint Pierre and Miquelon, as well as Wallis and Futuna.

Designation of the European Union through the Madrid Protocol

3. In regard to France and its overseas territories, a designation of the European Union in international applications and in subsequent designations through the Madrid Protocol extends to France, French Guiana, French Polynesia (since July 29, 2001), French Southern and Antarctic Lands (since July 29, 2001), Guadeloupe, Martinique, Mayotte (since July 29, 2001), New Caledonia (since July 29, 2001), Réunion, Saint Martin (French part), Saint Pierre and Miquelon, as well as Wallis and Futuna (since July 29, 2001).

4. Since January 1, 2012, this designation no longer extends to Saint Barthélemy [why has this Saint been singled out for this treatment when other Saints have not, we wonder ...].

Posted by: Blog Administrator @ 18.59
Tags: France, French extensions, Madrid System,
0 Comments    Post a comment