FRIDAY, 27 MAY 2016
June ETMR now published

The June 2016 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.  

Six cases are reported in the June issue -- three from the Court of Justice of the European Union, and another three from the General Court. 

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 @ 16.52
Tags: ETMR,
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THURSDAY, 26 MAY 2016
The battle of two online shops: Verkkokauppa.com v Veneilij?n verkkokauppa

The Finnish Supreme Court on 11 March 2016 gave its ruling (KKO:2016:16) in an action between a popular Finnish (online) retail store Verkkokauppa.com Oyj ("Verkkokauppa.com") and Oy Waltic Ab ("Waltic"), a company concerned with retail sale in the boating field. Verkkokauppa.com succeeded in registering Verkkokauppa.com as a Finnish trade mark back in 2004 for goods and services indicated under class headings 9, 35, 38 and 42. Waltic since 2009 used the domain names "veneilijänverkkokauppa.com" and "veneilijanverkkokauppa.com" as well as the mark depicted on the right.

For non-Finnish speakers it is crucial to know that "verkkokauppa" is Finnish for "online store "or "web store". Interestingly, as Verkkokauppa.com's trade mark is for class headings, it also covers retail sales and web sales. The mark "Veneilijän verkkokauppa.com" on the other hand means "Boaters' online store". 

The case began in 2010 when Verkkokauppa.com filed a lawsuit against Waltic in the District Court , seeking cessation of the use of Waltic's marks and payment of the reasonable remuneration of 100,000 Euros for the use of the marks plus Verkkokauppa.com's legal costs. The lawsuit was not favourable to Verkkokauppa.com in the District Court; nor did it go their way in the Court of Appeal -- but finally the Supreme Court took a different stand in the matter.

Once the lower courts had found that there was no likelihood of confusion between the marks due to the descriptive nature of Verkkokauppa.com's mark, Verkkokauppa.com no longer based its claims in the Supreme Court on the likelihood of confusion as described in Article 6, Subsection 1 of the Finnish Trade Marks Act. 

Thus, the nut that the Court had to crack was:

(i) whether Verkkokauppa.com had a reputation as meant by the Article 6, Subsection 2 of the Finnish Trade Marks Act; and 

(ii) should this be the case, if Waltic's marks were similar to the trade mark Verkkokauppa.com; and, finally, 

(iii) if this is the case, if Waltic's use of its marks infringed Verkkokauppa.com's trade mark rights. 

First, regarding reputation, Verkkokauppa.com stated that it was the second largest retail seller of home entertainment electronics in Finland and that its services were mainly targeted at internet users - even though it also had traditional stores. The Supreme Court found that the target group of the Verkkokauppa.com services was consumers living in Finland who used the internet for purchasing goods. 

According to the Supreme Court, the three surveys (showing e.g. that 37 % of the target group interviewed recognized the mark "Verkkokauppa.com" at least by name) submitted in evidence by Verkkokauppa.com strongly supported the fact that the trade mark had a reputation. Also Verkkokauppa.com's reports on the high volume of visitors on their websites and stores plus its high marketing expenses supported the reputation argument. The fact that Verkkokauppa.com had been registered only for six years before filing the lawsuit did not diminish its reputation. The Court considered the mark to have reputation since at least 2009, when Waltic started using its marks. 

Secondly, regarding the similarity of the signs, the court stated that Verkkokauppa.com was included in Waltic's marks as a whole and that the marks were similar both visually and phonetically. Also, the companies offered similar services and even their products are partially similar - save for the fact that Waltic's products were only boat-related. The Court considered that the prefix "Veneilijän" could mislead the public to think that "Veneilijän verkkokauppa.com" was a specific part of Verkkokauppa.com's product offering. Thus the target group of Waltic's services (boaters) was also part of the very wide service scope of Verkkokauppa.com. In addition, Verkkokauppa.com's trade mark was also known to Waltic's customers using online stores. Despite the fact that Verkkokauppa.com's trade mark was not especially inherently distinctive, there was still clearly a link between the trade marks required for the trade mark with a reputation.

Thirdly, the Court considered whether Waltic was free-riding or harming Verkkokauppa's trade mark's distinctiveness and reputation. The Court found that it was clear that Waltic has benefited from Verkkokauppa.com's trade mark as it was entailed in Waltic's marks and it ws already known to the public. As the parties operated in the internet environment, Waltic had likely benefited when consumers made searches based on Verkkokauppa.com's trade mark. 

Waltic started using its trade mark after Verkkokauppa.com's trade mark had gained reputation and significantly chose the .com ending instead of the .fi ending. Additionally there were clear similarities in the way the marks were used (the "Veneilijän" part used clearly separately with verkkokauppa.com in Waltic's mark). The Court concluded that, due to the scope of reputation of the Verkkokauppa.com trade mark, the level of similarity between the trade marks and the quality and similarity of the goods concerned, Waltic was free-riding on the distinctiveness and reputation of Verkkokauppa.com. 

Additionally, the Court considered whether Waltic had any due cause to use the trade mark. Waltic was of the opinion that the word "verkkokauppa", which described the service, should not be exclusive and that there existed a compelling reason to use the trade mark together with the generic domain .com. The Court stated that there was no due cause for Waltec's use and that Waltec could have used the .fi domain ending that it also had.   

Finally, the Court considered that Waltic infringed Verkkokauppa's trade mark rights and ordered the injunction as requested. Verkkokauppa.com presented no evidence of the usual licence or valid reasoning based on which the remuneration could have been calculated. The Court thus ordered a remuneration of 10.000 Euros for the use of Verkkokauppa.com. This was based on Waltec's internet sales during the years 2009-2010. 

The Decision can be found here (in Finnish).

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

Posted by: Blog Administrator @ 10.13
Tags: Finland, infringement, internet, distinctiveness,
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TUESDAY, 24 MAY 2016
General Court: B'lue (figurative) v. BLU DE SAN MIGUEL

In Judgment T‑803/14, the General Court dismissed the applicant’s appeal and confirmed the rejection of its EU trade mark application. The following marks were in conflict in this case:

Compagnie Gervais Danone - EU TM applicant

San Miguel, Fabricas de Cerveza y Malta, SA- Opponent

Image not found

BLU DE SAN MIGUEL

Class 32 -‘isotonic beverages [not for medical purposes]; high energy drinks’

Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’;

–        Classes 38 and 43

 

First,  the relevant public consisted of all consumers within the EU and the goods concerned are directed at the general public with an average level of attention.

Next, the goods covered by the contested mark, namely isotonic beverages (not for medical purposes) and high energy drinks, fall within the category of non-alcoholic drinks covered by the earlier mark.

Furthermore, the signs are visually similar to a low degree, but are, by contrast, phonetically similar to a certain degree, and, in addition, they refer to the same concept, namely the colour blue. In addition, contrary to what the applicant maintains, the weak distinctive character of the element ‘blu’, taken in isolation, does not have the effect of automatically conferring on the other element of the earlier mark, ‘san miguel’, a distinctive and dominant character. Whether that other element has such a distinctive and dominant character must be assessed in the light of its inherent qualities and of the weight that it has in that mark in relation to the element ‘blu’.

Therefore, in the light of the average distinctiveness of the earlier mark — inter alia since the element ‘de san miguel’ is not descriptive  — and of the particular importance of the element ‘blu’ at the beginning of the mark, which part of the relevant public would tend to use  to distinguish it from other signs including the element "san miguel",  or even abbreviate the mark to "blu", likelihood of confusion between the marks could not be excluded.

For blue painted in the blue listen here

Posted by: Laetitia Lagarde @ 18.12
Tags: General Court, Blue, blu de san miguel, beers, drinks, ,
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MONDAY, 23 MAY 2016
Switzerland: red sole decorative, not distinctive

In a decision of 27 April 2016, the Swiss Federal Adminstrative Court confirmed the IPO's refusal to grant Louboutin's "red sole" application protection for high heels in Switzerland. IR 1,031,242 was filed as positional mark with the depiction shown above.

The court held that the color red, also in the specific shade claimed, was decorative for women's high heels. The combination with the other elements, namely the position on the underside of the sole and the shape of the red part, did not make the mark distinctice in the eyes of the relevant consumers, which were defined as somewhat fashion interested women of any age. Whether the form of the red part was a "shape" was not a relevant issue (see pending referral from the Rechtbank den Haag to the CJEU). 

The IPO submitted evidence in the form of screenshots of various websites, also from Top Level Domains other than .ch, that showed that red soles were common for high heels not originating from applicant. The applicant contested the relevance of foreign website for the perception of Swiss customers. Here, the court made some interesting remarks: i) if the mark in question is a word mark, evidence from foreign websites is prima facie relevant if those websites are in one of Switzerland's official languages. The use of words did not generally vary so much by country that such websites were irrelevant for the perception of Swiss customers. However, ii) for signs that are an inseparable part of the good for which protection is claimed, the situation is different. Many goods sold abroad cannot be sold in the same form in Switzerland. Conclusions based on specific characteristics of goods shown on foreign websites are only relevant for the Swiss market if it cn be assumed that the goods are sold in the same form in Switzerland. For women's high heels, this is the case - no specific laws or customs prevent the import of high heels into Switzerland. Evidence showing widespread use of red soles abroad is therefore suitable to demonstrate that red soles on women's high heels are widely used in Switzerland, too.

Interestingly, while Louboutin claimed acquired distinctiveness before the IPO, which was refused - partly because the IPO defined the class of relevant consumers broader than Louboutin whished, namely both men and women of all ages rather than just younger women - Louboutin did not claim acquired distinctiveness on appeal. The Federal Administrative Court hence did not address any issues of acquired distinctiveness; it only held that the red sole is not distinctive ab initio.

Decision B-6219/2013 of 27 April 2016 (German summary). The decision is not final, but an appeal can only be based on legal grounds.

Posted by: Mark Schweizer @ 16.24
Tags: Switzerland, absolute grounds of refusal, positional mark,
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SUNDAY, 22 MAY 2016
General Court: Mark1 for tobacco rejected as EU trade mark

In Cases T-32/15 and T- 844/14, GRE Grand River Enterprises Deutschland GmbH applied for the word mark MARK1 and the figurative mark Image not foundfor tobacco related goods and eletcronic cigarettes in classes 9 and 34.

 

The EUIPO rejected both marks on the ground that the marks were devoid of any distinctive character within the meaning of Article 7(1)(b)  CTMR.

The relevant public consists of both the average consumer in the general public and the average consumer in a specialist public. The number 1 refers in general to first or highest in rank and that the word 'mark' is an English word which is synonymous with 'trademark'. Thus, according to the Board of Appeal, the signs applied for are a reference to the fact that the goods at issue are placed first in the ranking of cigarette brands. In the figurative mark, the configuration of the graphic elements and colours, namely, black for the word 'mark' and red for the number 1, were not sufficient to confer distinctive character on the sign applied for. In fact, the red colour suggested that the product was 'number 1'. Furthermore, the font of the letters was not unusual. The signs applied for fulfilled an advertising function only and did not enable the origin of the goods to be identified. 

The Applicant appealed to the General Court claiming that the word 'mark' is not descriptive. In its meaning as a mark or as a synonym of the English word 'trademark', it is very imaginative not to give the name of a product, but to call it simply a mark. Moreover, the word could be understood equally in the sense of marking or scratching in German or as the abbreviation of the former German currency. Furthermore, the word 'mark' refers to a well known first name in English, for which the applicant cites a certain number of famous examples. Also, in spite of the fact that the advertising slogan for cigarettes under the mark Mark Adams No1 is 'The No1 brandï', the applicant maintained that the consumer would not perceive this slogan in the sense of a ranking, in as much as it refers to the bestselling brand. On the contrary, the average consumer knows that cigarettes of this brand are not the bestselling on the market.

The Court dismissed the appeals: the fact that the word 'mark' is capable of having several meanings is not decisive. When assessing the mark applied for as a whole, that it has, clearly and essentially, a laudatory and promotional meaning for the goods concerned. In fact, it suggests to the relevant public essentially the idea of a 'number 1 brand' for the goods. Therefore the marks lack any distinctive character.

Posted by: Laetitia Lagarde @ 14.00
Tags: General court, absolute grounds, Mark1,
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THURSDAY, 19 MAY 2016
It's maņana for the new Madrid IT system

Everyone is keen to see the new Madrid IT platform in full operation. However, we learn from our friends at WIPO that things are taking a little longer than had initially been hoped.  WIPO's Madrid News accordingly contains the following update (which you can read online here):

Update on Implementation of the New Madrid IT System

On March 23, 2016, the International Bureau (IB) deployed the Madrid International Registrations Information System (MIRIS) - a modern IT platform, designed to support the ongoing operational needs of the Madrid System and to reinforce online services for users. Initially, it was anticipated that the transition to the new system would only impact the Madrid Registry’s operational performance for a few weeks and have minimal impact on users. However, it is now clear that the transition period will take longer than expected. Users may be affected during this extended transition period.
 
Users can be assured that all possible measures are being taken to ensure that the Madrid Registry returns to full operational mode as soon as possible.
 
Guidance on the most important issues affecting the system, how these issues are likely to impact users, and the measures the Madrid Registry has taken to safeguard user interests, is provided below.
 
Examination pendency 
 
The Madrid Registry’s examination output is currently reduced, while further work is undertaken to solve outstanding MIRIS deployment issues.  It is expected that improvements will be made for the bulk of the workload within a matter of weeks.  However, some of the issues affecting more complex transactions will take longer to fix.
 
The status of any pending request can be monitored through Madrid Real-Time Status.
 
Transmittals of provisional refusals
 
Transmittals of provisional refusals were suspended for several weeks following migration, while special quality control processes were applied.  However, all known issues have now been resolved and most transmittals of refusals are once again being made normally. 
 
The Madrid Registry has taken special care to ensure that transmittal of provisional refusals to holders were dispatched with the fewest possible delays, taking into account deadlines for responses set by designated Contracting Parties.  Users who have received late notifications of provisional refusals, and whose ability to meet the deadlines set for responses by designated Contracting Parties is compromised, are invited to contact the Madrid Registry at their earliest convenience. 
 
Irregularity letters concerning international applications, subsequent designations, changes of international registrations and renewals 
 
Quality control processes were also applied to irregularity letters recently, following the initial focus on notifications.  As a consequence, no irregularity letters have been sent since March 17, 2016.  As issues are being addressed, it is expected that irregularity letters will gradually start being sent over the next few weeks. 
 
Deadlines for responding to irregularity letters are calculated as of the date of communication of the letters in question.  Their late communication therefore has no bearing on the time available to respond.
 
E-Services
 
Although the E-Services supporting the Madrid System have remained available throughout the transition to MIRIS, some service instability has been experienced by users. The E-Services are progressively returning to a stable state, and are expected to operate normally within the next few weeks.
 
Strategy to restore full operational performance 
 
Returning operational performance to a normal level is receiving urgent attention at the highest level within WIPO.  The strategy to seek the quickest possible resolution of the issues is two-fold.  First, the plan involves reducing the time required to fix outstanding MIRIS issues by rapidly increasing the level of technical development resources.  And second, examination resources will be reinforced, with a view to reducing the backlog as soon as MIRIS has been stabilized.
 
Similar communications will be issued on a regular basis to provide updates on progress.
 
Customer support
 
Waiting times for responses by phone or mail may be longer than usual, following an increase in queries.  To the extent possible, the Madrid Registry will increase the resource levels devoted to customer support services.
 
Further Questions?
 
Madrid Customer Service is on hand to answer questions during this period.

Posted by: Blog Administrator @ 08.38
Tags: Madrid System,
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TUESDAY, 17 MAY 2016
EU TM Reform Package: a report

Here is a report on the recent AIPPI UK meeting on EU trade mark reforms, prepared by Alex Woolgar (an Associate in the IP Litigation Department of Allen & Overy LLP).  This event, which was supported by the participation or attendance of a number of MARQUES friends and members, is part of an extensive ongoing process of spreading the word concerning the new EU Trade Mark package -- a process in which all major national and international organisations are engaged.  The report reads as follows:

Removal of the requirement for graphic representation (from 1 October 2017 in relation to EUTMs; deadline for implementation of new Trade Marks Directive into national law is 23 March 2019):  Currently 3D shape marks and colour marks account for less than 0.5% and 0.05% of applications, respectively.  However, with this change, it is presumed that these figures are set to increase.  The new Article 4(b) essentially codifies the Sieckmann criteria.  Prof. Dinwoodie’s view was that the trade mark application in Sieckmann (and those in the subsequent Libertel andShield Mark decisions) failed not because the representations in question were not graphic, but because they did not meet the Sieckmann criteria.   Will Article 4(b), therefore, really represent a liberalisation in the previous graphic representation requirement?  Disposing of the requirement for graphic representation will open up registration of some new subject matter, such as sound marks which are not musical (e.g. the roar of Leo the Lion, of MGM fame – a perfect Kat-friendly example).  It will also provide greater certainty as to what is protected – there are some marks which can and should be represented more precisely by non-graphic means (e.g. sound and video recordings).  This does not, however, address the issue raised by the 2011 Max Planck Institute study of the inconsistency between national trade mark offices in examination of non-traditional marks.  Arguably, as a technical matter, the requirements for examination of national marks by national trade mark offices should in fact be fully harmonised.  David Stone noted that the EUIPO is expected to produce guidance as to the technical requirements for new forms of representation; presumably national trade mark offices will glance through this guidance before the floodgates open.  Thinking ahead, Mr Justice Arnold noted that these guidelines will need to kept updated to account for the eventual obsolescence of technological forms, such as the entire electronic medium.  Yikes.  

Restrictions on expanded functionality (from 23 March 2016):  The amendment of Article 7(1)(e) addresses the concern raised in the Max Planck study that the expansion of registrable subject matter may enable trade mark applicants to gain a larger monopoly than would be intended, or fair.  Examples (from the United States) included the colour black for outboard engines for boats (it makes engines look more slimline, and is apparently easy to match with a wide range of boat colours), and peach and white for prescription medicines (used to denote dosage, such that a monopoly over this colour combination would pose a risk to patient safety).  The solution is to bar registrations for “another characteristic” (aside from shape) which results from the nature of the relevant goods, is necessary to achieve a technical result, and/or which gives substantial value to the goods.  Prof. Dinwoodie’s view was that this change will affect little in practice.  The needs of competitors are already taken into account under Articles 7(1)(b) and (c): for non-conventional marks, it is harder to show inherent distinctiveness in order to get them on the register in the first place.  For example, the EUIPO already expects that, to not fall foul of 7(1)(b) and (c), a 3D shape mark must depart significantly for the norm or customs of the relevant sector.  On the other hand, the new Article 7(1)(e) could have unintended negative consequences.  For example, the Coach “C” pattern is not a shape, but it is “another characteristic” and it does give substantial value to the luggage produced by Coach.  Is it possible that this type of mark would now be vulnerable?  Simon Malynicz QC and David Stone agreed that over recent years, shape marks have had a tough time, both during examination and in the courts.  If this theme continues in relation to other non-conventional marks, this could be quite restrictive, especially as in the case of Article 7(1)(e) there is no opportunity to save a mark through use.  It appears the amended Article 7(1)(e) will apply immediately, including to existing marks (there are no transitional provisions).  This was the view of Mr Justice Arnold, although Prof. Dinwoodie argued that German courts are likely to  be more receptive to Article 1 of the ECHR Protocol (protection or property) arguments and may take a different view. The new Trade Marks Directive is likely to be sufficiently clear and certain to be directly effective if not implemented by Member States by 23 March 2019.    

IP Translator:  The new Article 28 codifies the IP Translator decision.  The transitional period for amendment of specifications will last until 23 September this year.  This offers an opportunity for the owner of a trade mark with a deficient specification to gain extra protection by amending the specification to claim the full range of goods/services within the relevant class(es).  There is a risk, however, that some “orphan”  goods/services will be vulnerable to revocation for non-use.  The process of checking a specification against various editions of the Nice Classification, and then updating, is laborious.  It is questionable whether this will be worth the effort unless a specification is materially deficient.  As Simon Malynicz QC noted, it may also be problematic for trade mark owners to certify that they always intended to claim protection under the relevant orphan headings. 

Certification EUTMs (from 1 October 2017):  Simon Malynicz QC lamented the missed opportunity to fully harmonise overlapping EUTM and national trade mark laws. Although Article 74a of the Regulation will provide for certification marks, marks indicating geographical origin are excluded.  This contrasts with section 50 of the Trade Marks Act 1994 (which permits the registration of marks which certify origin), which should remain unchanged by the new Directive.  In theory, a holder of a national certification mark for geographical origin will be able to block registration of an EUTM, which seems unfair.  It is debatable whether the new Article 74a will save Simon’s favourite Halloumi cheese, direct from Cyprus (and Cyprus alone…)

Infringement (from 23 March 2016):  Simon Malynicz QC commented that (with a couple of exceptions) the changes to infringement provisions do not, in practice, significantly benefit trade mark owners.  In particular:

  • The wording of new Article 9(f) is unclear – like Simon, this author had previously thought of comparative advertising as a defence if a prima facie infringement case is established, not an infringing act per se.  On balance, Article 9(f) is probably a victim of poor drafting and there was no intention to shift the role of comparative advertising.  Instead, the better view is that it merely codifies the decisions in O2 v Hutchinson 3G,L’Oréal v Bellure and Google France
  • Most seemed to agree that new Article 9(4) is overdue, and that it represents a significant win for brand owners.  Even if imported goods are labelled for on-export, if they bear a mark which is identical to an EUTM or indistinguishable in its essential aspects (note the test for similarity differs from Article 9(2)), the importer will be required to prove that the trade mark holder would not be able to stop the goods being placed on the market in their final destination.  It was noted that this new provision will probably just result in counterfeit goods being labelled for on-export to countries which do not provide for protection of trade marks   There is also some confusion as to whether this Article will catch parallel imports (which often enter the EU via similar channels) – Prof. Dinwoodie agreed that this is possible.  There is interplay here with the Customs Regulation, and the question of intent will be important.  
  • New Article 9a on preparatory acts will tighten the net around those who assist infringement.  Simon recalled a case for Coca-Cola before Mr Justice Henderson (unreported) in which a counterfeiter produced fake Coca-Cola syrup and used a stock of existing, genuine Coca-Cola packaging boxes to wrap the counterfeit product.  There was a debate on whether just wrapping the fake syrup with real packaging constituted an infringement.  Article 9a now deals with that question by prohibiting (in the course of trade) the affixing of signs to packaging and other materials, or offering or placing on the market such packaging or other materials, where such materials could be used in relation to such goods and services and such use would constitute trade mark infringement.  Mere filling of infringing cans by a bottler would now be caught.  David Stone commented that even if the Red Bull case was decided correctly on the words of the Regulation, it was a poor policy decision – rights holders need to be able to get relief against whoever is in front of them in the relevant jurisdiction.  Simon Malynicz QC noted that the drafting of this Article is extremely broad, and could prohibit legitimate activities that should not be infringing.   
  • The removal of the own-name defence for non-natural persons is a significant change, especially in the UK where there have been several successful own-name defences by companies.  This change also runs contrary to two CJEU Grand Chamber judgments (Anheuser-Busch and Celine) and is not supported by the Max Planck study.  Simon Malynicz QC was therefore expecting a good explanation from the Council addressing the reasoning behind this change, but none has been forthcoming.  Simon stated that he supports the current position in the UK, where the availability of the defence hinges on honest practices.  In cases of double-identity, this may well be the only defence available.  Simon referred to one of his cases (which settled before trial) in which Kindle Entertainment, a production company, relied on this defence against the marks for Amazon’s “Kindle” e-reader.  Kindle Entertainment chose its name before launch of the Amazon Kindle, and had run an clearance search on the Internet, but no trade mark search.  There was lively debate as to whether failure to run a trade mark search can still be “honest practices”.  This author suggests that it would be quite unfair to small companies, with limited resources for trade mark attorneys and clearance searches, if an “honest” failure to pursue every search avenue could be deemed as “dishonest”.  It was also suggested that if the court is sympathetic to a defendant, it will make efforts to find another defence (e.g. honest concurrent use), even though this isn’t meant to be a defence (but, as Mr Justice Arnold pointed out, it was upheld as such inSupreme Petfoods).
  • The non-distinctive signs element of Article 12(1)(b) appears to be an attempt to deal with signs which are not non-descriptive as such but still non-distinctive.  Examples might include Kit-Kat bars and the “figurative figleaf” problem identified by Mr Justice Arnold in Starbucks v BskyB. This defence will be particularly important for composite marks: it should not be possible to base an infringement action on an otherwise non-protectable component of a composite mark.
  • To complement Article 9(f), the wording of the revisions to Article 12(1)(c) is unclear.  Does this represent a third stage to the comparative advertising analysis (see above) i.e. the use of the mark also has to be in accordance with honest practices for a comparative advertising defence to apply, or is this defence a trump card which circumvents the Comparative Advertising Directive?  This question was not resolved.  Mr Justice Arnold suggested it could be that if the defendant has a comparative advertising defence, then the use of the trade mark must by default be honest; if not, the use must not be honest. This seems attractive, and refreshingly simple, but no doubt there will be plenty of arguments about this in practice in due course.  

* There was some confusion as to why the Regulation is devoid of transitional provisions.  The panel was in the dark about this, as was the audience.  Simon Malynicz QC suggested that in the case of the “declaratory” aspects of the Regulation and Directive (those which arguably just codify what the law already is e.g. the amendments regarding graphic representation and comparative advertising) it is possible that the courts of Member States should already be giving effect to these provisions in their judgments.  This author watched Mr Justice Arnold carefully for a reaction to this suggestion but, alas, any reaction was imperceptible.   

Posted by: Blog Administrator @ 12.17
Tags: EU Trade Mark Reform Package,
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