The Madrid Court of Appeals (“Audiencia Provincial de Madrid”) has recently issued an interesting judgment on trade mark cancellation involving an unregistered artistic name.

Amongst other petitions to the Court, the claimant sought the cancellation of the Spanish trade mark no. 1588500 “ALCATRAZ” (word mark) in class 41 (musical services). According to the judgment, the claimant alleged that there was a music band named “Alcatraz” performing in Spain before the mentioned trade mark was applied for. The claim further elaborated that the “Alcatraz” name of the senior music band was protectable under the Spanish Copyright Act, according to which any “original creation” is copyright and deserves protection under the intellectual property legislation (in Spanish: “derechos de autor” or “propiedad intelectual”).

The name "Alcatraz" and its derivations seems to have some strange appeal to musicians. From his teenager years, this Class 46 member still recalls a third "Alcatrazz" band (featuring guitarist Yngwie Malmsteen, replaced years after by the even more gifted Steve Vai).

Based on this construction, the claimant sustained the trade mark cancellation action in section 9 of the Spanish Trade Mark Law that states:

“Without due authorization, the following may not be registered as trade marks:
(…)

(c) signs which reproduce, imitate or transform creations protected by copyright or by another industrial property right”

The Court found that an unregistered artistic name is unsuitable for copyright protection (as claimant aimed). Accordingly, the trade mark cancellation action was dismissed as the claimant erred in the alleged ground for refusal.

However, the Court affirmed that an unregistered artistic name does deserve legal coverage as it is analogous in nature to a person’s civil name (in Spanish, “derecho de la personalidad”, vested in the Constitution), and is therefore capable of legal protection in both its moral and economic spheres.

On June 2006, the Polish Patent Office refused to grant the right of protection for a 3D trade mark Z-255004 (form of a bottle - depicted on the right), that was applied for in September 2002 by Polish company "BARTEX - Bartol" Spólka jawna from Paproc. The reason was that the applied sign was similar to 3D trade mark IR-676508, registered under the Madrid Agreement with a priority of April 1997 for Bacardi & Company Limited for goods in class 33, such as alcoholic beverages (depicted on the left).

In October 2007, after re-hearing the case, the PPO upheld its decision of June 2006 on the grounds that the assessment of similarity between both signs should be based on the overall impression both marks have on the consumer.

According to the PPO the distinguishing strength of the disputed signs should be taken into account, including its distinctive and dominant components. As usual, both trade marks should be compared in three aspects: visual, aural and conceptual. The PPO deemed both marks as "weak trade marks". However, the PPO also noted that the 3D trade mark owned by Baccardi posses some features that are not common and are not reproduced in other 3D forms of bottles. The most distinctive element is the characteristic cut on both sides of the bottle. Along with all the rest it gives a unique shape to the bottle. Thus, in the assessment made by the PPO, the earlier trade mark as a whole had the distinctive character which allowed the PPO to issue a positive decision on the recognition on the territory of the Republic of Poland of the protection for the international trademark.

While deciding on the application made by the Polish Company, the PPO came to the conclusion that the differences between disputed trade marks are not so noticeable and the risk of confusion by the average consumer of such goods is significant.

As regards the Polish company's argument that it should be taken into account the fact that alcohol is almost always sold in the bottle that has a label, the PPO said that it is possible to imagine a situation that the applied trade mark will have in the future a label which is an imitation of an earlier trade mark. The Polish Patent Ooffice pointed out that, if looked at the specific conditions of trade it should take into account the way in which the applicant puts its goods on the market. Some information regarding this issue were presented in the observations filed by Bacardi on 26 August 2003 as to the existence of grounds that may cause a right of protection to be denied in connection with the application Z-255004. These materials proved that the Polish company markets products that are the imitation of alcohol produced Baccardi.

BARTEX - Bartol filed a complaint to the District Administrative Court in Warsaw. The DAC in its judgment of of 28 April 2008, act signature VI SA/Wa 126/08 ruled that while deciding whether the right of protection may be granted it must be determined whether a sign may serve as a trade mark at all. Only after having determined that a sign may be a trade mark it shall be examined whether such sign has sufficiently distinctive characteristics, to check out whether a sign is capable to distinguish on the market the specific goods for which it was applied for.

The DAC ruled that based on article 129(1)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law - IPL - (in Polish: ustawa Prawo wlasnosci przemyslowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later amendments.

Article 129
1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

The European Commission has enacted two provisions that will affect the use of designations of origin by wine growers and the labelling of their products. They are

According to the Spanish Patents and Trade Marks Office (SPTO) website, during year 2008 the Spanish police (national, regional and local) seized counterfeited goods the face value of which was estimated to be Euro 385 million.

The total number of police actions in 2008 was of of 4,801 (increase of 190% compared with 2007), in which a rough figure of 7,500,000 goods were seized (increase of 277% compared with 2007).

Would counterfeiters accept fake money? If so, this Homer Simpson Euro could do the job ...

Watches and leather goods top the list of the most counterfeited products. Madrid, Andalucía and Valencia are highlighted as hotspots when it comes to piracy. The report also reveals that the internet is replacing the traditional distribution channels (flea markets, street sale or retail shops). The quite detailed report is to be read here (in Spanish).

The story of Hejnal Mariacki as a sound trade mark goes further. According to Gazeta Wyborcza's article imprecisely entitled "Hejnal is being patented".

If The Hejnal will be used in advertisement spots of our city, presenting it as a cultural and tourist centre, there is no problem, because it will only work for the benefit of Krakow City. If, by contrast, it will be used for example in mayonnaise ads, we will demand the enforcement of our rights - explains Filip Szatanik from the press office of the municipal authorities. The city would grant a permission to use the Hejnal, and for the unlawful use of it would demand a compensation.

The Polish Patent Office registers sound marks, if they are displayed as musical notes. Such trade mark applications can also additionally be accompanied by a sound recording - on a cassette tape which is available for any third party to listen to at the Office. Currently, the Polish Patent Office has around 50 sound marks registered according to unofficial statistics, as they are not searchable in the database of the Office.

Allergan is the proprietor of the trade mark BOTOX for a nerve poison ("Botulinumtoxin") that is used to treat muscle contractions and excessive sweating. It is also subcutaneously injected to smooth wrinkles; however, for regulatory reasons, the trade mark used for the drug with this indication in both Switzerland and Austria is VISTABEL.

According to the IPKat-Blog, Allergen has sued a company that markets an anti-wrinkle cream under the trade mark BOTOINA in more than 75 countries. The cream is not injected and does not contain any Botulinumtoxin, but the advertising for it promintenly displays an "applicator" that looks suspiciously like a syringe (see right).

After the Irish High Court ruled in favour of Allergan, both the Swiss as well as the Austrian Supreme Courts have also ruled in favour of Allergan. Both courts relied not on trade mark law, but on unfair competition law to find the use of BOTOINA unfair and likely to lead to confusion. The Austrian court ruled that the display of BOTOINA together with the syringe-like applicator leads to a likelihood of confusion, not the use of BOTOINA alone. The Swiss Supreme Court upheld an injunction that prohibits the defendant from using BOTOINA with or without a "syringe"; for procedural reasons, the coginition was limited (so we do not know how the Supreme Court would have decided the case on the merits had it had full coginition). Both proceedings were preliminary injunction proceedings.

Note: the two decisions are from 2008, but I have only just now learnt of the Austrian decision. Swiss decision (German) here.

Commission Regulation 667/2009 of 22 July 2009 entering a name in the register of protected designations of origin and protected geographical indications (Nocciola Romana (PDO)). Nocciola Romana is a hazel nut which originates from Italy. According to the application for protection which was made last December,

"The particular characteristic which makes ‘Nocciola Romana’ a unique product of this kind is its crunchiness and solidity, lacking in cavities. When chewed, the crunchy nuts crack at the first bite and have no softness; they also retain this characteristic both when fresh and when preserved".