THURSDAY, 28 MAY 2015
Portugal: 2014 Statistical Indicators - All-time High for National Trade Marks

INPI has reported an all-time high for Portuguese Trade Marks applications. According to the Portuguese Industrial Property Office, the previous record for National Trade Mark applications (from 2010) was broken, with the 20,842 filings in 2014 representing a 17% increase compared to the number of applications received in the previous year.

In relation to CTMs with portuguese origin, there was an increase of 17% in the volume of applications (1,294).

As an exception to this trend, there was a decrease in the number of applications made by Portuguese residents using the Madrid System (international trade marks), from 226 in 2013 to 208 in 2014.

For the full context, see here.

Posted by: Pedro Malaquias @ 11.08
Tags: Portugal, INPI, Statistical Indicators,
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THURSDAY, 28 MAY 2015
General Court: Wine in Black v. Noval Black

In case T-420/14, the General Court annulled the decision of the First board of Appeal in the following opposition case

Wine in Black GmbH

Quinta do Noval-Vinhos

Wine in Black

NOVAL BLACK

Class 33 ‘alcoholic beverages, (except beers), in particular: wines, brandy’

Class 33 ‘alcoholic beverages, (except beers)’

OHIM found there was a likelihood of confusion. The relevant public consisted of average European consumers who are English-speaking or who are deemed to have an elementary knowledge of English, with a reasonable level of attention in respect of wines and other alcoholic beverages. The goods are identical. The signs have a certain degree of visual similarity, and a phonetic and conceptual similarity, as they contained the same number of syllables, had a similar structure and coincided in respect of the word ‘black’, which certainly appears at the end of those signs, but which is characterised as non-descriptive in respect of the goods at issue, unlike the word ‘wine’ in the earlier trademark. The earlier trade mark has  average inherent distinctive character. The goods concerned could be ordered in restaurants, bars or cafés, which strengthened the role of the phonetic similarity and reduced the importance of the visual differences.

The GC upheld the appeal on the grounds that the signs are composed of a different number of words and are distinguishable because of their initial parts, are visually and phonetically similar to a low degree only, and therefore are less similar than the Board of Appeal had found.

Further from a conceptual point of view, it found that the BoA did not assess the mark applied for as a whole. It failed to take into account the fact that, even if the word ‘wine’, taken in isolation, is weakly distinctive in respect of the goods covered, the expression ‘wine in black’ has an imaginative and evocative character, as the applicant rightly claims.

Moreover, OHIM admitted that the colour black does not describe the organoleptic characteristics of wines, which strengthens the argument that an expression meaning ‘wine in black’ must be regarded as being capable, as a whole, of surprising the public and conveying to it the idea of a wine of elegance and distinction, like a person dressed in black, rather than suggesting to it the simple concept of a wine that is dark in colour. In that regard, OHIM acknowledged that the colour black in association with wines gives the mark applied for a certain conceptual element of intrigue or surprise.

 

On the other hand, in the earlier mark, the word ‘black’ is not accompanied by a preposition and a word with a clear meaning, but is preceded only the word ‘noval’, which does not have any meaning and which may, at most, be perceived as a company name.  Accordingly, in the earlier mark, the word ‘black’ simply qualifies either an element that is completely fanciful or the name of a company and thus does not give rise to an expression which, considered as a whole, may be associated with the same ideas as those mentioned in the preceding paragraph in relation to the mark applied for.

Accordingly, it must be held that the signs at issue, each examined as a whole, have no conceptual similarity, despite their common element ‘black’.

In conclusion, given the low degree of visual and phonetic similarity of the signs and their conceptual differences, it must be concluded that the identity of the goods is not sufficient to establish a likelihood of confusion.

Posted by: Laetitia Lagarde @ 11.07
Tags: General Court, LOC, Wine in black, noval, black, wines,
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WEDNESDAY, 27 MAY 2015
PUMA vs "POODLE" - German Supreme Court reviews parody rights

Apologies for the temporary quirks of our publishing software. Please email us if the images below should still not be visible in the email you have received on this blog post.

Earlier this month, the German Federal Supreme Court (BGH) decided that the constitutional rights of free speech and artistic expression only go so far. The judges ordered the defendant to consent to the cancellation of his trademark registration "PUDEL". "Pudel" means "poodle" in German and the registered word-device mark clearly parodied the claimant's well-known "PUMA" mark:

            

PUMA is a well-known German manufacturer of sportswear, and the defendant had also registered and used his PUDEL mark for clothing. The German Federal Supreme Court held that while there was no danger of confusing the two marks, the PUDEL mark infringed on the broader protection the PUMA mark enjoyed by virtue of its reputation. The judges furthermore gave precedence to the claimant's intellectual property rights over the freedom of expression and artistic freedom invoked by the defendant. The court held that these fundamental rights do not justify the grant of a property right if that right interferes with an older property right.

Your author welcomes this decision. Freedom of artistic expression and freedom of speech enjoy constitutional protection to the extent that they further public debate and the open expression of thoughts, opnions and creativity. The court rightly drew the line where a parody is used primarily for commercial aims, such as obtaining a trademark registration and using it in commerce. We are awaiting the publication of the full reasons with great interest. It remains to be seen if the German Supreme Court used the opportunity of this rather unusual dispute to hand down general considerations on the scope of parody where it intersects with trademark rights.

German Federal Supreme Court, decision of 2 April 2015, file no. I ZR 59/13 (not yet published).

Posted by: Anthonia Ghalamkarizadeh @ 09.14
Tags: PUMA, Pudel, Poodle, parody, BGH, German Supreme Court,
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TUESDAY, 26 MAY 2015
Splendid rejected in General Court

In case T-203/14 Mo Industries  applied for the following sign for Class 18: ‘Backpacks; book bags; sports bags; wallets; handbags; purses; tote bags; umbrellas; brief-case type portfolios; toiletry bags sold empty; cosmetic bags sold empty; shaving kit bags, sold empty; attaché cases; briefcases; satchels; duffel bags; luggage; garment bags for travel; billfolds; tie cases; key cases; diaper bags; shoulder belts; covers for electronic devices’ and  Class 25: ‘Belts’ Image not found

OHIM and the General Court held that the trade mark applied for was descriptive and devoid of any distinctive character for the purposes of Article 7(1)(b) and (c) of Regulation No 207/2009.、

First, the goods in question are aimed at the general public and the distinctiveness of the trade mark applied for had to be assessed by reference to the English-speaking public in the EU.

Secondly, the figurative sign containing the word element ‘splendid’ is an indication descriptive of the goods concerned for the purposes of Article 7(1)(c) of CTMR. The applied for sign is composed of an ordinary word in English which means, inter alia, ‘grand’, ‘spectacular’, ‘superb’ or ‘gorgeous’. Accordingly, ‘splendid’ refers clearly to goods the appearance of which presents such qualities. That word element is therefore laudatory for the sake of advertising, the purpose being to highlight the positive qualities of the goods for the presentation of which that element is used.

Moreover, by contrast with everyday consumer products in respect of which aesthetic qualities are not essential, the products covered by the mark applied for in the present case are clearly among those the appearance of which could be described as ‘splendid’.Thus, the word element of the mark applied for will be perceived immediately by the relevant public as a promotional formula which indicates to consumers that the goods covered by the mark are aesthetically superior to competing products (see  Best Buy Concepts v OHIM (BEST BUY), T‑122/01).

 Thirdly, for the goods in question, that sign is devoid of any distinctive character within the meaning of Article 7(1)(b) of the regulation. The fact that the mark applied for contains, in place of the dot over the letter ‘i’, a figurative element which is a registered Community trade mark is not conclusive for the purposes of assessing the distinctive character of that mark as a whole. Even misspellings are not generally conducive to overcoming refusal of registration stemming from the fact that the content of the sign is immediately comprehensible as eulogistic or laudatory (see FTI Touristik v OHIM (BigXtra), T‑81/13).

Fourthly, the applicant had not shown that the trade mark applied for had acquired distinctive character through use. Thus the exception provided for in Article 7(3) of Regulation No 207/2009 was not applicable.

Finally, the Court rejected the alleged infringement of the principles of equal treatment and of sound administration claimed by the applicant on the ground that mark applied for has not received the same treatment as CTM’s of which it is already the proprietor for goods in Class 25, which contain the word element ‘splendid’ or the term ‘splendid’. .

The Court held there are certain differences between the goods covered by the applicant’s earlier marks and those covered by the mark applied for which were pointed out by the Board of Appeal. Furthermore, in the application, the applicant acknowledges that those goods are not identical and claims solely that they are closely related. In addition, it must be pointed out that the trade marks of which the applicant is already the proprietor are not strictly identical to the mark applied for in the present case. Indeed it is well-established case-law that CTM examination must be undertaken in each individual case. 

Posted by: Laetitia Lagarde @ 10.41
Tags: General Court, absolute grounds, splendid, ,
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FRIDAY, 22 MAY 2015
Madrid Dependency: a survey, and a summary

A little while ago, back on 8 May to be precise, our very good friends at the World Intellectual Property Organization (WIPO) launched a Survey on Madrid System Dependency Principle Issues. Class 46 readers may already know about this and might already have completed it but, to be on the safe side, we are reminding everyone to partipicate if they can: the deadline for completing the survey is 31 May 2015 -- not so far into the future. 

MARQUES has taken a great interest in Madrid System dependency and has been involved in several initiatives in this area. The MARQUES Trade Mark Law & Practice Team, for example, has been in attendance at all Madrid Legal Working Group meetings and, since at least as early as 2011, the organisation has supported the Norwegian Proposal and the adoption of substantive changes to the Madrid system – ultimately the abolition of the basic mark requirement -- in order that Madrid should become more user-driven and user-friendly.

Posted by: Jeremy Phillips @ 09.24
Tags: Madrid Dependency,
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THURSDAY, 21 MAY 2015
The Lisbon System and the Geneva Act: agreement is reached

Readers of this weblog have been treated to a great deal of information from us, via MARQUES's "special correspondent" and GI Team vice-chair Keri Johnston, concerning the past week and a half's discussions, negotiations, anxieties and jubilations relating to the Diplomatic Conference on the revision of the Lisbon Agreement on Appellations of Origin and Geographical Indications. Now you can hear the outcome from WIPO itself, via yesterday evening's press statement:

Negotiators Adopt Geneva Act of Lisbon Agreement at Diplomatic Conference

Geneva, May 20, 2015 document PR/2015/779

Negotiators approved a revision of an international registration system providing protection for names that identify the geographic origin of products such as coffee, tea, fruits, wine, pottery, glass and cloth.

A Diplomatic Conference was held in Geneva from May 11 to 21, 2015 and adopted the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

The Geneva Act allows the international registration of geographical indications (GIs), in addition to appellations of origin, and permits the accession to the Lisbon Agreement by certain intergovernmental organizations.

WIPO Director General Francis Gurry concluded by thanking delegations from all WIPO member states for their very constructive engagement. He said all delegations showed “an openness to discuss different approaches in a very positive spirit.”

The President of the Diplomatic Conference Ambassador Luis Enrique Chávez Basagoitia, Permanent Representative of Peru to the United Nations Office and other international organizations in Geneva expressed satisfaction with the outcome of the diplomatic conference and called the adoption of the Geneva Act a “transcendental moment” for the Lisbon Union and WIPO.

The Geneva Act of the Lisbon Agreement further develops the legal framework of the Lisbon System, which helps promote many globally marketed products such as, for example, Scotch whiskey, Darjeeling tea and Café de Colombia.

Other changes affect fee provisions, scope of protection, protection against becoming generic, and safeguards for respect of prior trademark rights.

An official signing ceremony is scheduled for May 21, 2015, at WIPO’s Geneva headquarters.

The Geneva Act of the Lisbon Agreement will enter into force three months after five eligible parties have deposited their instruments of ratification or accession.

The basic negotiating text for the Diplomatic Conference was developed between 2008 and 2014 by a Lisbon System working group with the goal of attracting a wider membership to the System, while preserving its principles and objectives.

The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration was originally concluded in 1958.

Posted by: Jeremy Phillips @ 08.22
Tags: Lisbon Conference, GIs,
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WEDNESDAY, 20 MAY 2015
MARQUES at the Lisbon Agreement Conference: Meeting in Plenary for the Adoption of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications

Continuing our coverage of the Lisbon Agrement Conference, Keri Johnston, Vice Chair of the MARQUES Geographical Indications has reported:

Chaired by Ambassador Chavez or Peru. The live meeting is currently being webcast on WIPO under the Calendar item relating to the Diplomatic Conference.

Posted by: Jeremy Phillips @ 14.48
Tags:
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