Warna Oosterbaan wrote a wonderful background story in NRC Handelsblad, November 28, 2008 - a story that I couldn't resist to mention here - on the launch as of yesterday in the Netherlands of the new Solex, bearing now the trade mark 'e-Solex'.

Solex, a legendary trade mark for a moped - or should one say a bicycle with a typical gasoline motor device (48 cc) mounted to the front wheel, characterised in that the driver could pedal along while using the motor - originates from the French company Vélosolex (Solex became its trade mark), which was produced in the Netherlands under licence for some twenty years (1948-1969). The ownership of the company - which is also known for its Solex carburetors by the way - changed over the years. Renault, Motobécane and Yamaha for example owned shares.

Although the Solex never really disappeared from the roads the Solex lost its attractiveness the last decades, but it revived again at the end of nineties. In the Netherlands for example some companies specialised in fun tours on Solex, who made good money with it. In the meantime the French businessman Jean Pierre Bansard - who owns a real estate company - reloaded the trade mark: while spotting an old Solex through the streets of Paris he had the clever idea of tracing the trade mark rights (apparently finding them somewhere in Italy - Piaggio?) and bought the rights. With the help of Pininfarina a new star Solex is born: the e-Solex, powered by an electric motor, friendly for the environment. Warna Oosterbaan drove it - speeding up from 25 to 40 km/h - in Amsterdam and is really enthousiastic although the e-Solex needed some pedals on steep bridges (a conserved feature therefore).

Oosterbaan reminds readers that the old Solex was popular among all grades and standings, varying from the famous Monsieur Hulot in the Jacques Tati movies to French farmers, professors in Leiden, housewives from Almelo and maids from Spakenburg. The e-Solex seems to aim at students and the new 'eco-chic' generation ('people who own some money and are conscious with regard to the environment'). The introduction of the e-Solex - as Oosterbaan noticed - fits in a general retro trend due to which we can drive the New Beetle, the New Mini and the New Fiat 500 for example. Makes her mention some other well known moped trade marks that might revival but haven't yet (for example Kreidler Florett and Mobylette, to which I add the famous Puch). Are they waiting for another monsieur Bansard?

The CFI has this week (on 2 December 2008) annulled a decision of the OHIM Board of Appeal by deciding that the word mark BARBARA BECKER was confusingly similar to an earlier Community trade mark BECKER under Article 8(1)(b) Community Trade Mark Regulation (40/94/EC). Both trade marks cover identical and similar "goods of a technical nature" in class 9.

While the CFI confirmed the OHIM Board of Appeal's assessment that both marks shared a certain degree of visual and phonetical similarity through their shared element "Becker", the CFI did not follow the OHIM Board of Appeal's view that both marks were conceptually different because of the importance of the extra element "Barbara" in the composite mark BARBARA BECKER and because of Barbara Becker's celebrity status in Germany (as the former wife of tennis player Boris Becker - see photo on the left), where the name Becker was also generally recognised as a widespread surname. The OHIM Board of Appeal had decided that the surname Becker was not the dominant and distinctive element because the relevant public would perceive the mark BARBARA BECKER as a whole. The OHIM Board had further argued that the relevant public would not dissect the trade mark but would rather perceive it in its entirety as the name of a woman, Barbara Becker, and neither of its components would have an independent distinctive role or would constitute the dominant element. As such, in the view of OHIM Board of Appeal the differences between both marks were significant enough to rule out a likelihood of confusion.

The CFI disagreed with this assessment and held that

"36 ... (the) earlier trade mark BECKER, and the mark Barbara Becker, refer to the same surname Becker. They are thus similar, and all the more so since in a part of the Community the component ‘becker’ of the trade mark applied for is, as a surname, likely to be attributed a stronger distinctive character than the component ‘barbara’, which is simply a first name. In that regard, it should be recalled that the relevant public keeps an imperfect picture of the marks at issue in its mind.

37 In addition, according to the case-law, when a composite mark consists of one component juxtaposed to another trade mark, that latter mark, even where it is not the dominant component in the composite mark, may still have an independent distinctive role in the composite mark. In such a case, the composite mark and the other mark can be regarded as similar (see, to that effect, Case C-120/04 Medion [2005] ECR I-8551, paragraphs 30 and 37). In the present case, it is clear that the component ‘becker’ will be perceived as a surname, which is commonly used to describe a person. It must be held that that component retains an independent distinctive role in the mark Barbara Becker.

38 It follows that, assessing globally the marks at issue and comparing them visually, phonetically and conceptually, the conflicting marks must be held to be similar. 39 Therefore, the Board of Appeal wrongly held that the conflicting marks were clearly distinct ."

42 .. (the) argument that the case-law on composite marks is not applicable in the present case because the trade mark applied for consists of a first name and a surname also cannot be accepted. The criteria for assessment of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, where trade marks constituted by a personal name are at issue, are the same as those applicable to the other categories of trade marks. Thus, a sign containing the first name and surname of a natural person may not be registered as a Community trade mark where this is precluded by a relative ground for refusal of registration following a notice of opposition lodged by the proprietor of an earlier trade mark (Case T-40/03 Murúa Entrena v OHIM – Bodegas Murúa (Julián Murúa Entrena) [2005] ECR II-2831, paragraphs 49 and 50)."

While the rest of Europe is discussing the impact of the Intel ruling of the European Court of Justice, the multi-membered first instance court of Thiva (or Thebes for the friends of ancient greek literature) decided to disregard the fundamental rules in judging confusing similarity (decision no. 10/2008, unfortunately unavailable electronically). The complainant, owner of the trade marks “POSEIDON” and “??S???O?” (POSEIDON, in greek characters) sued the defendant for trade mark and unfair competition (passing off) infringement over the use of the mark “??S???O?” (notice the latin S in the middle?). All marks were used for the trade of sea boats. Following its scrutiny (?) of the case, the court held that the latin S in the defendant’s mark suffices to rule out risk of confusion between the conficting marks. For those worried, please note that this is indeed a peculiar judgment and that under decision 335/1994 of the Supreme Court of Greece (Areios Pagos) the transliteration of a registered or unregistered word mark from latin characters to greek would amount to trade mark /unfair competition infringement.

For information on the mighty - unaware of all this - Poseidon click here.

The OHIM today informs subscribers of its e-mail alert services of changes and amendments to "The Manual of Trade Mark Practice". The following chapters are affected; please click on the respective links for more details:

By Nairobi Notification No. 53 the World Intellectual Property Organization confirms the deposit by the Government of the Republic of Hungary of its instrument of ratification of the Nairobi Treaty on the Protection of the Olympic Symbol. This teaty will enter into force, with respect to the Republic of Hungary, on 28 December 2008.

As from 1 January 2009, Croatia's customs authority is simplifying the process for renewing customs watch applications. For applications filed and granted after that date, the IPR holder or his legal representative can apply for the renewal of the watch every year thereafter, indefinitely, without having to file a new application. Renewal requests must be made in writing each year, before the expiration date of the original granted application. Existing rights holders have to await the termination of their current granted term, and then file a new application, before they can take advantage of the simplified renewal procedures.

Source: SD Petosevic

German and international media report that polar bear Knut has become the latest victim of the credit crunch or should we say "credit freeze". Class 46 readers will recall Knut's rise to global fame and the trade mark issues surrounding the marketing of Knut and other high profile (polar) bears. To refresh your memory, please click here to read "Knut, Flocke & Co: the bear facts revealed" published by Oxford University Press in the December 2008 issue of the Journal of Intellectual Property Law and Practice, (JIPLP). The tongue-in-cheek article discusses many legal and commercial aspects surrounding the registration of the names of polar bear cubs as trade marks.

The Independent reports that conservative estimates now put the revenue earned through the marketing of the polar at €10m (£8.5m). Nevertheless, Berlin zoo, where Knut was born and has so far been living, has recently announced that Knut will leave the Berlin zoo as early as 2010. The zoo has cited financial difficulties as the main reason. Knut currently shares the zoo's polar bear enclosure with four other bears and to keep Knut in Berlin, the zoo would have to raise 9m Euro to build a more spacious home for the bear and a potential mate. Unfortunately, and to the dismay of many (Berlin) polar bear fans, the city of Berlin appears to be close to bankruptcy. A Berlin zoo spokesperson is cited as having said: "We cannot afford it in such times of economic strain". To make things worse, after Sigmar Gabriel, Germany's Environment Minister, has withdrawn his official patronage of Knut, the free supply of fodder that came with the patronage, has also come to an end.


However, things have never been straight forward with Knut and it is not much of a surprise that third party rights are involved. Under a "breeding agreement" with the Neumuenster zoo, which owns Knut's father Lars, it is Neumuenster zoo who has the right to Knut. Neumuenster zoo manager Peter Druewa is quoted by The Associated Press as having said that "... if Berlin doesn't want to build a new enclosure — or expand one of the existing ones — we'll need to find a new place for him." Still, superstar Knut still has massive pulling power and it appears that zoos from across Europe are keen to take him on. German media has already mentioned several potential new homes for Knut: Tierpark Neumuenster, where Knut's father Lars lives, Zoom Erlebniswelt in Germany and Hanover Zoo. There also appears to be interest from other European zoos in Denmark, Norway, Sweden, Finland, Estonia and even Spain. At the moment, the favourite candidate appears to be Gelsenkirchen Zoo, which not only appears to have ample space but is also the home of the young female polar bear Lara. In the meantime, thousands of Berliners have started lobbying to keep cuddly Knut - who will celebrate his second birthday tomorrow - in the German capital.


Class46 will keep on checking the German trade mark register to see whether this latest installment in the Knut saga has any trade mark implications.