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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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THURSDAY, 2 SEPTEMBER 2010
Poland: act carefully when requesting preliminary injunction
 Polish company Technopol sp. z o.o. succeed to register in the Polish Patent Office over a hundred word and word-figurative trade marks in the form of Arabic numeral "100" and its multiples (200, 300, etc.) together with the word "Panoramicznych" or "Panoram". Technopol was sued by another Polish entrepreneur, Roman Oraczewski who publishes crossword magazines under such titles as "222 Panoramiczne", "333 Panoramiczne", "500 Krzyżówek", "300 Krzyżówek z Uśmiechem", "300 Krzyżówek Panorama Rozrywki". Mr Oraczewski claimed protection to its press titled and Technopol filed counter claims based on Article 10 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments.
Article 10.1. Such indication of products or services or its lack, which may mislead customers in relation to the origin, quantity, quality, components, manufacturing process, usefulness, possible application, repair, maintenance and another significant features of products or services as well as concealing the risks connected with their use, shall be the act of unfair competition.
2. Releasing for free circulation products in the packing which may cause effects referred to in section 1 above shall be the act of unfair competition, unless the use of such packing is justified by technical reasons.
Technopol requested the court to issue preliminary injuction ordering Mr Oraczewski to cease the sale and introduction to the market of all his magazines bearing titles that are identical or similar to Technopol's trade marks. The Court granted the injunctive relief. Mr. Oraczewski did not agree with such order and after couple of years this case ended in a final dismissal of the application for preliminary injunction. Mr. Oraczewski sued Technopol for the compensation for the loss incurred due to the enforcement of the injunction. He claimed over 67.000.000 PLN loss. According to Article 746 §1 of the Civil Proceedings Code – CPC (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, Journal of Laws (Dziennik Ustaw) No. 43, item 296, with subsequent amendments, when a preliminary injunction has been granted and the plaintiff fails to file the principal claim, withdraws it, the claim fails for procedural reasons, or is dismissed as unfounded, the defendant may demand compensation for the loss incurred due to the enforcement of the injunction. The claim expires if it is not pursued within one year from the moment the loss occured. This provision makes a plaintiff who obtained a preliminary injunction but ultimately failed with its principal claim liable towards the defendant for the loss caused by the injunction.
The Supreme Court in its judgment of 25 February 2010 case file V CSK 293/09 held that the liability provided under Article 746 § 1 of the CPC is independent of plaintiff's fault. However, the Court dismissed Mr Oraczewski complaint because he did not follow the preliminary injunction order.
See also "The Polish Supreme Court speaks on reputation and criteria for trade mark infringement" and "Poland: press titles and trade marks".
Posted by: Tomasz Rychlicki @ 14.14
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THURSDAY, 2 SEPTEMBER 2010
Octopus Paul (trade marks) - alive and kicking
Quite some time has passed since the end of the football World Cup, so surely Paul the psychic octopus (see our earlier reports here) should by now be out of the headlines for good and any searches for Paul octopus trade marks should not reveal any new results?
While the internet was flooded with rumous that Paul had passed away and fans already feared the worst, we now learn from an article in The Telegraph that Paul is alive and kicking and the latest celebrity to support England's bid to host the World Cup in 2018. Interested readers may recall that Paul, who currently resides in a German sea life zoo, was "born" in England, so that his latest move could be seen as a return to his English roots. Almost as if to dispel any rumours, there also three new Paul trade mark applications to be found on the Community trade mark register, all in the name of Sea Life Deutschland GmbH which owns Paul's zoo.
Posted by: Birgit Clark @ 12.24
Tags: Paul, |
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THURSDAY, 2 SEPTEMBER 2010
No confusion without similarity of marks, as CK appeal fails again
The Court of Justice of the European Union gave its ruling this morning in Case C‑254/09 P, Calvin Klein Trademark Trust v Office for Harmonisation in the Internal Market; Zafra Marroquineros SL, an appeal by Calvin Klein against the General Court's refusal to allow it's appeal against the Board of Appeal's refusal to allow its appeal agains the OHIM Opposition Division's decision to dismiss its opposition.
 Zafra had applied to register the word mark CK CREACIONES KENNYA for goods in Classes 18 and 25, in which Calvin Klein had earlier registrations, for identical goods, of the two figurative marks illustrated here. The Court of Justice affirmed that, notwithstanding the identity of the goods, there was no visual, aural or conceptual similarity between the marks and thus no basis upon which to establish the existence of a likelihood of confusion.
Posted by: Jeremy Phillips @ 12.08
Tags: ecj appeal, similarity of marks, |
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TUESDAY, 31 AUGUST 2010
Facebook.me transferred to rightful owner
 A WIPO mediator ordered last month that the domain name Facebook.me, obtained during Montenegro’s country code top-level domain (ccTLD) .me auction period in 2008, be transferred from the United Arab Emirates resident Amjad Abbas to Facebook, Inc. This order followed a successful complaint filed in May 2010. Facebook Inc argued that it owned numerous Facebook trade marks around the world and that its online social networking services were internationally renowned. The disputed domain name was one of a number of domain names offered for sale at a minimum price of US$ 2,000 (EUR 1,575) on Abbas's website at www.batfind.com. According to Abbas, he bought and registered Facebook.me for around US$ 5,115 (EUR 4,029); he also claimed to hold Oracle.me, Trump.me and other domains, saying he collected domain names as a hobby and as a means of impressing his friends, with possible future plans of creating non-profit personal blogs.
The WIPO mediator dismissed both these and a number of other explanations for registering the domain name, saying that were not persuasive and concluding that it was registered and used in bad faith.
Source: Petosevic newsletter here
Posted by: Jeremy Phillips @ 05.49
Tags: Montenegro, domain names, cyberquatter, |
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MONDAY, 30 AUGUST 2010
Preparing for the new gTLDs: a survey
 World Trademark Review (WTR) magazine is conducting a survey into how industry is preparing for new generic top-level domains. This survey will be live until at least 15 September. According to WTR: "It is now almost certain that new gTLDs will launch. So the trademark community is best advised to stop trying to improve the policy and focus instead on strategy. External counsel must work out how to build business models around new gTLDs. Meanwhile, brands must answer much more than the question of whether or not to apply to run a new gTLD registry; they must plan how to react to new spaces on the internet, how to restructure their internal teams accordingly and how to continue building and protecting their brand online". If you would like to contribute to this survey, you can access it here.
Posted by: Jeremy Phillips @ 15.34
Tags: domain name survey, |
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