THURSDAY, 31 JULY 2014
Spain: A Recapitulation

Hidden in the mountains, lost at sea, vanished in the plains or disappeared in a forest, this blogger will find it difficult to cover trademark news from Spain during his annual leave. But just before that happens, and because you might have deliberately deleted or involuntarily missed them, here you will find—for your pleasure—a recapitulation of the posts that focused on trademark issues in Spain from January 2014 up to now:

January saw the advent of the 2013 Best Spanish Brands as listed by the international brand consultancy Interbrand. Among the top 5 were Santander, BBVA and La Caixa, which is interesting given that we are amidst the still resounding financial crisis. The top winners were Movistar (telecommunications) and Zara (fashion). This was followed by another post on the widely covered Jazz Telecom v. Orange Personal Communication Services Limited Supreme Court decision, the Orange case, concerning the trademark protection of shaped color marks, which adopted a strict posture regarding the registration of these kinds of signs when consisting merely of banal, trivial or elemental geometric figures. 

 

Although not yet an ideal time of the year to drink sangria, the third post in January dealt with new rules approved by the EU Parliament on aromatized wines, which provided guidance for the conditioned use of the word "Sangría" in connection with aromatized wine-based drinks not coming from Spain or Portugal, making sure that Iberian Sangría would remain the only true sangria.

The post in February turned to a water-related case: a comment on the decision of the Supreme Court of 20 December 2013 Vichy Catalan S.A. v. Spanish PTO / Hijos de Rivera S.A. regarding a dispute of mineral water and beer brands. Was it possible for the lower court to decide contradictorily on successive, identical cases? "Yes", the Supreme Court responded, provided it is done under a justified reason which was absent in the case at hand. The importance of pre-existing rights was discussed too, because the applicant owned a trademark registration with priority over the opponent's trademark which, however, differed from the mark of the disputed trademark application.

 

"I think people should be allowed to tell the truth", said Sir Robin Jacobs regarding the L'Oreal SA v Bellure NV CJEU judgment on selling smell-alike perfumes by reference to leading brands. The second post in February dealt with the battle between Puig SL and Equivalenza Retail SA before the Alicante Community Trademark Court which ended in a prohibition for Equivalenza Retail SA to use the concerned marks as reference to sell smell-alike perfumes (Carolina Herrera, Nina Ricci, Paco Rabanne, etc.), and a declaration of unfair business practice. A new post followed regarding the "traditional terms" of Council Regulation (EC) No. 479/2008 and its exclusive application to a light and sour wine called Txacolí made in the Basque Country, Cantabria and Chile. Producing an identical product, with the same chemical composition, was not a reason for a foreign producer to name it Txacolí and, consequently, a fine was imposed.

 

In March, it was the turn of the DEXEUS case, a precious jewel from the Appellate Court of Barcelona handed down on 4 December 2013 (Consultorio Dexeus and Fundació Santiago Dexeus Font v. Instituto Santiago Deseus S.L.P, Mr. Teodoro Miguel and Fundación Escuela Dexeus) that discussed a bunch of important trademark issues including, among others, the well-known character of the mark, generated by efforts both from the claimant and defendant, as well as the own name defence.

April's first post was titled "The Honorability of Trademarks" and covered the converging path in the protection of personality rights and trademarks when it comes to discrediting [decision of the Supreme Court (Civil Chamber) handed down on 24 February 2014, Real Madrid Club de Fútbol and Mr. Evelio; v. Le Monde and Mr. Luis Enrique]. April's second post described the method used by the Commercial Court no. 1 of San Sebastian in its decision of 11 April 2014 to ascertain the value of a bunch of well-known trademarks, in particular, FAGOR, and the specific value that resulted from applying that method.

 

After a silent May, June's first post told about the upcoming revision of the Commercial Code, which amends and corrects current trademark law, and also revisits general principles of intellectual property law. The second post, "Philip VI and his domains", told the story about an abdication and registration of the domain name <felipesexto.es> and its mischievous use in the World Wide Web. June's last post commenced with an interesting piece of news entitled "Schweppes v. Schweppes: no more British tonic water in Spain" referring to an order issued by the Commercial Court no. 1 of La Coruña against a distributor of genuine Schweppes tonic water in Spain. The story behind this example of enforcement of trademark rights in the context of the principle of exhaustion traces back to old failed attempts from The Coca-Cola Company to buy Schweppes' business in Spain.      

Lastly, the post in July dealt with the recent decision of the Supreme Court (Civil Chamber) of 11 June 2014 following appeal before the Appellate Court of Valencia which is illustrative of the principles of trademark vulgarization in Spain. Who has not indulged oneself with an Oropesina pastry?

Posted by: Fidel Porcuna @ 15.35
Tags: spain recapitulation ,
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THURSDAY, 31 JULY 2014
Switzerland: lack a bear, lose a case

ThoCon AG filed the Swiss trademark ARTIC VELVET for inter alia beverages in Nice classes 32 and 33. ILLVA SARONNO SPA filed opposition against this trademark based on an older international figurative trade mark (see above), which is registered in Switzerland for beverages (Nice classes 32 and 33).

The trade mark have been used in Switzerland for spirits (vodka) in a slightly different graphic form (without the graphic element of the polar bear, depicted above).The Federal Institute of Intellectual Property held that the use in the different form did not amount to genuine use of the registered marks and dismissed the opposition.

On appeal the Federal Administrative Court confirmed that the older trade mark had only been used in a significantly different form than registered, leading to the conclusion that the registered mark had not been genuinely used and was unenforceable.

The court considered that the term ARTIC was weakly distinctive for the goods in question. While not identical with the Italian word "artico", which means "arctic", the Italian speaking consumers would still associate "ice cold" or the "North Pole" with the term when seeing the term ARTIC in connection with (alcoholic) beverages, and "ice cold" was descriptive for the state beverages such as vodka are best served. Such understanding in just one language of Switzerland is sufficient to weaken the distinctive character of a trademark. Additionally, German and French speaking customers in Switzerland might understand the allusion. The allusion to "cold" is further supported by the stylized polar bear. At the same time the court holds that the graphical element of the polar bear complements the comparative lack of distinctiveness of the word element, which means that the word element and the graphical element together establish the trademark's distinctiveness. Consequently, the court stated that the use of a sign without one of these elements leads to a different overall impression.

The owner of the older mark could demonstrate use of the word element "ARTIC", but this did not amount to genuine use of the trade mark. The owner of the older mark could further demonstrate that on bottles that have been sold in Switzerland, a drawing of a polar bear had been placed next the word element ARTIC. According to the court, this was still insufficient to amount to genuine use of the mark as registered.

The decision is, frankly, worrisome. Firstly, the reasoning that ARTIC is weak for (alcoholic) beverages is strained. Nobody in his right mind thinks, when reading ARTIC on a bottle of vodka, "oh, that's the description on how to serve it" (hint to the judges: the serving instructions are printed in small letters and usually read "Best served ice cold."). Secondly, the missing bear element hardly leads to a different overall impression given that the script is clearly the same. The registered mark is easily recognizable in the used sign. Lastly, the result of this decision is that a party unconnected to the trade mark owner can (potentially) market vodka under the brand ARTIC VELVET in Switzerland, which clearly leads to a risk of confusion with the older brand ARTIC. Trade mark law was designed to prevent exactly this sort of situation.

Decision B-3056/2012 of 4 June 2014

Posted by: Mark Schweizer @ 15.14
Tags: Switzerland, genuine use,
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THURSDAY, 31 JULY 2014
OHIM: Use of re-filed trade marks – from Pathfinder to CANAL PLUS

Re-filings of existing trade mark registrations are frequently used as a strategy to evade the use requirement. Pursuant to Article 15 (1) of the Community Trade Mark Regulation (CTMR), a mark must be put to genuine use within five years after its registration in the relevant territory in which it enjoys protection. This use requirement is circumvented where a trade mark owner simply files a new trade mark registration for the same mark shortly before the older mark becomes subject to the use requirement. The trade mark owner can then use the newer mark as basis for oppositions and can shelve the sign for future use without needing to fear revocation actions.

So far, no explicit provisions on Community level prohibit such strategic use of re-filings. Article 52 (1) (b) CTMR merely provides, in broad terms, for declaring invalid a Community trade mark that has been filed in bad faith. In section 4.3.3. of OHIM's procedural guidelines for cancellation proceedings, the practice of evasive re-filings is deemed to be in bad faith. However, not every re-filing will automatically constitute bad faith, in particular where the second application differs to some degree from the first – either in its graphic representation or in the scope of its specification. Such deviations may well indicate a legitimate interest of the owner in modernizing the mark. And the concept of bad faith as provided in Article 52 (1) (b) CTMR will not help an applicant to defend against an opposition based on a re-filed trademark. Rather, the applicant would need to launch a separate counter-attack against the opposition mark, seeking to have it declared invalid and applying for a suspension of the opposition proceedings for the duration of the invalidity proceedings.

OHIM in its case-law has opened up another option for applicants to ward off oppositions based on re-filings. In the decision "Pathfinder" (R 1785/2008-4 of 15 November 2011), the Fourth Board of Appeal held that proof of use extends to an opposition mark which itself is not yet subject to the use requirement, but is an identical re-filing of an older mark under the use requirement. In that case, the circumstances indicating bad faith of the opponent were particularly strong. Not only had the opponent admitted freely that he had re-filed the opposition trade mark in identical form to avoid attacks based on lack of use. He had also offered the mark to the applicant for sale. These circumstances differentiated the case from the "Pelikan" case (General Court, T-136/11 of 13 December 2012). In that case, the General Court acknowledged the legitimate interest of Pelikan to re-file its house mark with slight graphic alterations and with a narrower specification of services, in the context of modernizations announced for its 125th anniversary.

After "Pathfinder", it has generally been thought that proof of use might only be requested for a re-filed trademark in opposition proceedings if the re-filing is an identical copy of the earlier trade mark – in terms of territorial scope, graphic representation and specification of goods and services. This has recently been put to question in the "CANAL PLUS" decision (R 1260/2013-2 of 13 February 2014). Here, OHIM's Second Board of Appeal held that several opposition marks of GROUPE CANAL+, SA and of CANAL+ FRANCE had to be considered re-filings for which proof of use must be presented. OHIM applied a liberal interpretation of "the earlier mark" in Article 42 (2) and (3) CTMR, for which proof of use is required. The "earlier mark" was said to mean not a specific trade mark registration but rather, more broadly, one and the same graphic representation of a mark for the same goods and services and in the same territory. Consequently, OHIM considered it sufficient that some of the services of the re-filed mark were identical to those protected by older marks. OHIM also thought it sufficient that an older French mark corresponded with a younger Community trade mark re-filing, and vice versa, since both covered (also) the same territory, France. Finally, OHIM even thought it possible that the following French trade mark constitutes a re-filing of the following older Community trade mark, even though they differed in their graphical representation:

                                        

The Board of Appeal concluded that proof of use must be adduced for those services and for that territory which overlapped with the respective older marks of the opponent. The Board then referred the case back to the Opposition Division to determine whether those trade marks with differing graphical features could be considered essentially identical to the extent that the younger Community trade mark must be deemed a re-filing of the older national mark.

We will await with interest whether this decision will broaden the path commenced with "Pathfinder" towards a wider interpretation of the use requirement in opposition proceedings. Right owners should in any case carefully review their trade mark portfolio and assess whether a potential opposition mark might be subject to proof of use because of earlier, (partly) identical registrations. More generally, the practice of re-filings should also be assessed strategically. Right owners will stand a better chance of asserting a re-filing if it contains graphical alterations, justifying a need for modernization. Mere changes in the specification of goods and services, on the other hand, can no longer be considered a safe re-filing strategy.

Posted by: Anthonia Ghalamkarizadeh @ 08.09
Tags: Pathfinder, CANAL PLUS, KABELPLUS, CANAL+, OHIM, use requirement, re-filing, T-136/11, R 1785/2008-4, R 1260/2013-2,
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WEDNESDAY, 30 JULY 2014
Switzerland: don't wait for 8 years to enforce your rights in a domain name

The German JK-Holding GmbH markets tanning beds under the trade mark ERGOLINE, protected also in Switzerland. Back in 2005, it terminated the distributorship agreement with the respondent, who had registered the domain name ergoline-service.ch in its own name already in 1998. In March 2013, JK-Holding demanded that the respondent cease the use of ERGOLINE in its domain name, and when the respondent frailed to comply, filed a request for transfer under the dispute resolution rules of the Swiss NIC (SWITCH) in April 2014.

The sole expert of the WIPO Arbitration and Mediation Center held that JK Holding GmbH had forfeited its rights, if any, by waiting for about 8 years after having become aware of the allegedly infringing use (up to 2005, the use was justified by the agreement). The respondent, who had been servicing ERGOLINE tanning beds since 1992, had built up valuable goodwill ("wertvoller Besitzstand") and could rely, in good faith, that the trade mark owner would not enforce its rights any more.

The expert therefore dismissed the request without entering the (difficult) question whether such use would be infringing at all (or whether respondent could rely on the doctrine of exhaustion to use ERGOLINE to advertise its after-market services).

DCH2014-008 of 9 July 2014

Posted by: Mark Schweizer @ 10.43
Tags: Switzerland, estoppel, forfeiture, domain name, dispute resolution, WIPO, SWITCH,
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TUESDAY, 29 JULY 2014
August ETMR now published

The August 2014 issue of the European Trade Mark Reports (ETMR), 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.  

This issue contains reports on six recent decisions, which include the following:
* Martin Blomqvist v Rolex SA, Manufacture de Montres Rolex SA, in which the Danish Supreme Court gave its final decision on the importation of a single counterfeit watch from outside the EU and the application of relevant customs regulations.
 
* Hearst Holdings plc and Fleischer Studios Inc v AVELA Inc, ~Poeticgem Ltd and others, a decision of the High Court, England and Wales, on (inter alia) whether proceedings for trade mark and copyright infringement in the UK should be stayed on the ground that parallel proceedings had already been instituted in Italy.
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: Jeremy Phillips @ 09.13
Tags: ETMR,
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MONDAY, 28 JULY 2014
General Court: La Nana v Nana

In Case T-196/13, Lina M.Stal-Florez Botero filed for application of the above mark for goods in Classes 16, 20 and 24. Nanu-Nana Joachim Hoepp GmbH & Co. KG filed an invalidity application on the basis of earlier German right NANA registered among others for goods in Classes 16, 20 and 24.

OHIM and the General Court rejected the application for a declaration of invalidity in its entirety on the ground that genuine use of the earlier mark, for the purposes of Article57(2) and (3) of CTMR, had not been proved.

The affidavits and photos submitted by the applicant could not prove the time and extent of use of the mark in respect of the goods depicted.

Furthermore, the affidavits, drawn by an employee of the company, with therefore less evidentiary value, did not constitute conclusive evidence as they did not allow to draw, with certainty, any conclusions as to the duration and extent of use of the earlier mark in relation to the specific categories of goods within the classes concerned. For example, in 2007, it is stated in the affidavits, in respect of Class 16, that the applicant sold 287 types of goods and around 9 million products, with a total turnover of approximately EUR17 million. Apart from quantitative indications, the affidavits did not contain any additional details as regards the goods or types of goods sold.

Furthermore, the photos that were provided depicting certain goods in the three classes in question do not allow any conclusions to be drawn as to the extent and duration of use in relation to the goods depicted in those photos. In that regard, the photos are not dated and, in response to a question posed at the hearing, the applicant’s representative was not able to give the date on which the photos in question had been taken. Consequently, even if the goods depicted in the photos were marketed, there is nothing which makes it possible to establish, from those photos, the date on which or the period for which those goods were marketed.

As regards the nature of use, although the photos submitted showed that the term ‘NANA’ featured on product labels and stickers attached to the products, it was not certain that that could constitute an affixing of the sign to the goods for the purpose of proving use ‘in relation to goods’ within the meaning of the case-law. More specifically, it was not totally certain that the relevant public confronted with the product labels and stickers in a Nanu-Nana shop would actually perceive them as a trade mark designating a specific product, rather than as a company or shop name.

Posted by: Laetitia Lagarde @ 14.06
Tags: General court, genuine use, la nana, nanu nana,
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THURSDAY, 24 JULY 2014
Survey evidence in England & Wales: not dead after all?

At last year's MARQUES "Meet the Judges" session in London, kindly hosted by our friends at IBIL and noted on Class 46 here, the consensus of judicial opinion was that prospects for introducing survey evidence in trade mark litigation were "dead" or at least "pining for the Fjords". However, in Enterprise Holdings Inc v Europcar Group Ltd and another [2014] EWHC 2498 (Ch), Mr Justice Morgan surprised everyone by permitting reliance on survey evidence which Enterprise Holdings sought to be introduce in order to show that its marks had acquired enhanced distinctiveness and were thus so strongly identified with the goodwill in its business to support its trade mark infringement and passing-off action against Europcar.

This case will undoubtedly be the subject of considerable discussion over the coming months and will be subjected to a fuller treatment on this weblog in due course.

Posted by: Jeremy Phillips @ 16.30
Tags: survey evidence, England & Wales,
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