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FRIDAY, 10 SEPTEMBER 2010
Poland: the average consumers' confusion
 The Polish company AFLOFARM Fabryka Leków Sp. z o.o. applied for the word-figurative trade mark "tabletki na uspokojenie Aflofarm" (in English: Aflofarm tablets for calming down) Z-298475 for goods in classes 03, 05 and 44. The Polish Patent Office refused to grant the right of protection in part of the goods in class 5 covering dietetic substances for medical use, food for babies. The PPO held that the right of protection shall not be granted for a sign that misleads the public as to the nature and properties of the good. Such misleading information is a sign that may cause false image of the average buyer as to the nature of the product, its quality or properties. The assesment of content of a signs is made by him or her from the perspective of the average consumer. The interest of the buyers requires the assumption that the sign is misleading, once a small group of consumers may be misled as to the characteristics of the goods or services, since these characteristics may affect the decision taken, in relation to those goods or services. Under such assumption, the assessment cannot be affected by anything outside the relationship sign - the goods with the reasonable buyer's idea on such relationship. It follows that the sign "tabletki na uspokojenie Aflofarm" on the goods listed in class 5 should be considered as misleading the buyers as to the nature, purpose, or functional characteristics of these goods.
AFLOFARM argued, that it's not true that the buyer/consumer "is left alone" with a sign and a product bearing the questioned trade mark. These products are only available in pharmacies and are issued only by a professional that is a pharmacist. Thus it excludes the confusion of the average consumer as to whether he or she has bought the wrong product.
The Voivodeship Administrative Court in Warsaw in its judgment of 18 March 2010 case file VI SA/Wa 2127/09 agreed with AFLOFARM's arguments and reversed the contested decision. The Court also noticed that "tabletki na uspokojenie Aflofarm" trade mark was applied for dietary agents/means for medical use, rather than dietary substances for medical purposes. For this reason, the Court held that the goods that are marked with a "tabletki na uspokojenie Aflofarm" trade mark will not cause consumers' confusion since products of such indications or effectiveness can be classified differently, depending on their registration or application.
Posted by: Tomasz Rychlicki @ 13.20
Tags: Polish Administrative Proceedings Code, Voivodeship Administrative Court, absolute grounds for refusal, product packaging, trade mark refusal, consumer confusion, average consumer, |
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THURSDAY, 9 SEPTEMBER 2010
Spain: Hints on how to calculate the “reasonable royalty” in trade mark infringement cases.
In a recent resolution dating 8 June 2010 (appeal no. 293/2009), the “Audiencia Provincial de Madrid” (Court of Appeals of Madrid) has explored the concept of “reasonable royalty” and how it can be calculated.
The case involved two Spanish companies acting in the field of alcoholic beverages, more specifically in the trade of “cava” (sparkling wine, but not to be confused with champagne!). The respondent was found liable of infringement as it misused the claimant’s 3D marks over a certain shape of a bottle.
The Court ruled that, failing the claimant of a licensing policy (in fact, it has proven it never granted a license), it was admissible to construe a “reasonable royalty rate” consisting in the sum of three different parameters:
a) an “entrance fee” (calculated by the Court in Euro.- 40.000, whilst the expertise brought by claimant appraised it in Euro.- 150.000). It is interesting to note that respondent (infringer) unsuccessfully alleged that these types of fees are applicable to franchise agreements, but not to trademark licenses.
b) an annual fixed fee (calculated in Euro.- 12.000), plus
c) a variable annual fee over sales.
Posted by: Ignacio Marques @ 10.17
Tags: Spain, damages, reasonable royalty., |
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WEDNESDAY, 8 SEPTEMBER 2010
General Court gives applicant the blues
In a decision of today, the General Court, confirming both the examiner and the 4th Board of Appeal, denied trade mark protection for the depicted image (not a 3D mark) of a guitar head for goods including musical instruments, guitars, loudspeakers and amplifiers.
Applying standard case law, the Court concluded that the sign depicted a common guitar head that was not perceived as an indication of origin by the relevant public (taking as irrelevant the possibility that some guitar fans may be able to recognize the manufacturer of a guitar based on the head's shape). The argument that the sign only depicted a part of a guitar was deemd irrelevant, because it was not a sign wholly distinct from the product (such as a word mark). Amplifiers and loudspeakers were necessary complements to electric guitars and as such encompassed by the absolute ground for refusal.
Acquired distinctiveness was not claimed.
So far, T-458/08 is only available in French and German.
For a similar decision by the Swiss authorities (concerning, however, a true 3D mark), see here (German summary).
Posted by: Mark Schweizer @ 17.57
Tags: general court, absolute grounds for refusal, |
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WEDNESDAY, 8 SEPTEMBER 2010
ICEBERG sinks ICEBREAKER: conceptual similarity "not decisive" whether visual and aural similarity exist
 In Case T-112/09 Icebreaker Ltd v OHIM, Gilmar Ltd, the General Court ruled this morning that the average Italian consumer was likely to be confused between the word ICEBREAKER, for which the applicant sought registration as a Community trade mark, and the earlier Italian word trade mark ICEBERG. Since the goods relating to each mark -- clothing, headgear and footwear -- were identical, and the marks were similar, the Board of Appeal did not err in concluding that such a likelihood of confusion existed.
Some visual and aura; similarity was easy to find. As to conceptual similarity, the General Court observed with regard to the Board of Appeal's findings that
"... with regard to the part of the relevant public who do not understand English even at a basic level, it was impossible to make a conceptual comparison between the signs. ... the part of the relevant public able to understand the word ICEBERG in its proper sense in English would also probably understand the word ICEBREAKER. [The Board of Appeal] indicated that, to a certain extent, those words differ in that one refers to ice and the other to a boat designed to break ice. It adds that it could also be claimed that the signs are similar on a conceptual level because an icebreaker is necessary during extreme weather, if there is a lot of ice, from which icebergs are formed. In that case, there is a connection between the word ‘iceberg’ in so far as it relates to drift ice from the North Atlantic waters in winter and the word ‘icebreaker’, which refers to a vessel designed to protect commercial boats from icebergs and other dangers. It considers that the question as to whether there is a common or different concept will thus vary in accordance with the people’s perception. It considers that it is thus safer to conclude that the conceptual comparison is not decisive and does not affect the visual and phonetic similarities or differences of the signs".
Posted by: Jeremy Phillips @ 14.54
Tags: similarity of marks, |
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WEDNESDAY, 8 SEPTEMBER 2010
Poland: similarity of signs, homogenity of goods
 The Polish company Atlantic sp. z o.o. applied for the word-figurative trade mark ATL ATLANTIC Z-313731 in classes 03, 18 and 25. The Polish Patent Office refused to grant the right of protection in part of the goods covering deodorants for personal use, soaps, perfumery, cosmetics, cosmetic kits, portable suitcases for cosmetics, travel bags for clothing, shopping bags, beach bags, handbags and women handbags. The PPO held that there are similar and conflicting trade marks such as Atlantic R-141375 for goods in class 18, Atlantic IR-631190 and ATLANTIC IR-787876 for goods in class 03.
The Voivodeship Administrative Court in Warsaw in its judgment of 7 April 2010 case file VI SA/Wa 21/10 dissmissed Atlantic's complaint and upheld the contested decision. The Court ruled that in all cases where the problem of the similarity of the opposed trade marks arises, it is the result of two closely related issues, i.e. the similarity of signs and the similarity (homogeneity) of goods/services for which the signs are applied for, registered or used. Both these factors determine the scope of trademark protection (citing M. Kępiński [in:] Niebezpieczeństwo wprowadzania w błąd odbiorców co do źródła pochodzenia towarów w prawie znaków towarowych, ZNUJ PWOWI zeszyt no 28 of 1982, p. 10). The VAC held that the convergent elements of disputed signs have crucial meaning for the buyers and such conclusion is justified from a psychological point of view, since the purchaser keeps in mind only a general representation of the sign for which is he or she looking for. Therefore the buyer chooses a sign based only on dominant elements while ignoring differences.
Posted by: Tomasz Rychlicki @ 00.13
Tags: Voivodeship Administrative Court, similarity of signs or goods, likelihood of confusion, trade mark refusal, homogenity of goods, |
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MONDAY, 6 SEPTEMBER 2010
Poland: whose treasure is it?
The Swiss company Marquard Media, current publisher of the magazine "Przegląd Sportowy", which since 1974 always includes a supplement entitled "Skarb Kibica" (in English: Fan's Treasure), succeeded in registering SKARB KIBICA R-134960 at the Polish Patent Office.
In 2004, Profus Management requested the invalidation of the right of protection for the SKARB KIBICA trade mark. Profus claimed that this sign has informational nature rather than distinctive character. It provided an opinion written by Professor Urszula Promińska to support its arguments with this regard. In 1992 Profus Management bought the weekly football magazine "Piłka Nożna" with "Skarb Kibica" column. Marquard Media filed a trade mark infringement suit.
In 2006, the PPO has decided on the invalidation of the right of protection. The Voivodeship Administrative Court in Warsaw in its judgment of 2 October 2006 case file VI SA/WA 791/06 reversed this decision, but only because of deficiencies in the proceedings and send it back to the PPO for reconsideration.
When examining the case after the judgment, the PPO in its decision of 25 February 2008 case file Sp. 213/07 dismissed Profus Management request. The PPO held that the mere use of the sign in question by different entities cannot deprive its distinctiveness. When the case went again in 2009 to the VAC, the owner of "Przegląd Sportowy" and "Skarb Kibica" was Axel Springer Poland. The Voivodeship Administrative Court in Warsaw in its judgment of 27 February 2009 case file VI SA/Wa 2219/08 dismissed Profus complaint. The Supreme Administrative Court in its judgment of 31 August 2010 case file II GSK 626/09 upheld this decision. The SAC held that the mere use of this sign by different publishers at the date of its registration cannot deprive its distinctiveness. The distinctive character of such a sign is examined, of how it was perceived by readers interested in football and sport activities.
Posted by: Tomasz Rychlicki @ 18.46
Tags: Polish Act on Trade marks, Polish Administrative Proceedings Code, Polish Supreme Administrative Court, distinctive character, trade mark infringement, trade mark invalidation, |
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FRIDAY, 3 SEPTEMBER 2010
Berlin Appeals Court backs ‘Parmesan’ label as purely Italian and upholds case against German Parmesan copycats.
On 15 June 2010, the Berlin Court of Appeal (Kammergericht Berlin) upheld the first instance decision of the Berlin Court issued on 22 April 2008 against Allgäuland-kasereien GMBH, i.e. one of the German companies which by their behaviour triggered a decision by the Court of Justice in Case C-132/05 (the Parmesan II case) brought by the European Commission against Germany.
Immediately after the ECJ ruling (issued on 26 February 2008), indeed, the association of Parmesan producers (Consorzio del Formaggio Parmigiano Reggiano) had obtained a positive decision of the Landsgericht Berlin, enjoining the German manufacturer from marketing, under the names ‘PARMESAN’, ‘BIO-PARMESAN’ or ‘PARMIGIANO’, cheeses that do not comply with the specifications of the PDO ‘Parmigiano Reggiano’. The decision also established fines up to Euro 250,000 for marketing German cheeses under the ‘Parmesan’ label.
The defendant Allgäuland-kasereien appealed, persisting in its view that ‘Parmesan’ was generic in Germany for hard cheese.
The Decision
The Court rejected the appeal by the German company and agreed with the Landsgericht Berlin that use of the name ‘PARMESAN’ and ‘BIO-PARMESAN’, let alone ‘PARMIGIANO’, for cheeses not complying with the strict Parmigiano Reggiano PDO specification, constitutes a violation of Article 13(1)(b) PDO Regulation and Article 135 Markengesetz, insofar as these terms evoke the ‘Parmigiano Reggiano’ PDO, as well as an act of Unfair Competition under Article 8(3)(2) of the German Unfair Competition Act.
The argument of the appellant that it had been marketing its products since as far back as 1987 under the term ‘PARMESAN’, i.e. before the first PDO Regulation of 1992, so as to be unable to evoke the “later” term Parmigiano Reggiano, was held irrelevant. Accordingly, the injunction preventing the defendant from selling and marketing grated cheese under the infringing names was confirmed.
Allgäuland-kasereien GMBH did not appeal the decision before the German Supreme Court, the Bundesgerichtshof, so that the above decision has now become res judicata.
Posted by: Edith Van den Eede @ 14.20
Tags: Italy, PDO, PGI, Geographical Indication, Parmigiano Reggiano, Parmesan, trade mark Germany, |
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