A recent Judgment of the Spanish Supreme Court (Civil Chamber) of December 17, 2009 (no. 817/2009) explores the requirements imposed by the Spanish judiciary on the applicability of section 8 of the Paris Convention, that states:

“A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”.

The claimant, a US company, sought the cancellation of the Spanish trade mark and trade name” COYOTE UGLY” and “CHICAS COYOTE” ("Coyote Girls").

On the basis of an US trade name, and citing article 8 of the Paris Convention, the claimant alleged that the respondent's Spanish registrations were registered in bad faith. The claimant also requested the Court to order the cease in the use of the said marks plus an award of damages. Both the Court of First Instance plus the Court of Appeals dismissed the claim as both instances understood that the claimant did not provide evidence on the use of the foreign trade name in Spain, and neither on the use in the US.
 
In a short and straight-to-the-point decision, the Spanish Supreme Court reminded that in cases construed on article 8 of the Paris Convention it is required for the claimant to demonstrate use or wellknowness in "a substantial part of the Spanish territory". Due to the fact that Spanish procedural rules do not (normally) allow the Supreme Court to review factual issues that have been already judged by the lower instances (i.e. the use of a foreign trade name), the appeal was dismissed.

The German Federal Patent Court (BPatG) recently had to decide on the registrability of labels as trade marks.

In its headnotes concerning “labels” the BPatG held that (1) with regard to the registrability of three dimensional product-related shape marks (2) there was “no state of emergency” concerning designations in the product field of labels.  (3) Registrability of common shapes of labels, sales-slip rolls, boards and comparable goods, such a rectangular, concave, convex form varieties (of labels) may only be considered under the prerequisites of acquired distinctiveness under Article 8(3) German Trade Marks Act (Change to  BGH I ZB 012/96 and I ZB 013/96 – “Etikettenartige Umrahmungen”, (in Egnlish: label-type frames).

Case reference: German Federal Patent Court (BPatG): “Etikett” (in English: label), case reference 28 W (pat) 27/09 of 04 February 2010 (case references of the parallel decisions: 28 W (pat) 28/09; 28 W (pat) 29/09; 28 W (pat) 30/09; 28 W (pat) 31/09; 28 W (pat) 32/09; 28 W (pat) 33/09).

Our readers may recall our report of last November on McDonald's going "green" in Germany - literally.  In an interview with the Financial Times Germany Holger Beeck, Vice-President of McDonald's Germany, had announced that the fast food chain would turn green in Germany and that its Golden Arch would be used on a green background in German McDonald's restaurants. The move was meant to signal McDonald's commitment to ecological principles.

Now German media cites McDonald's Bane Knezevic, head of McDonald’s Germany, who reportedly said at the company’s annual press conference that it had never been part of the company’s strategy to show a stronger commitment to ecological principles.  “We aren’t a green company”, the Sueddeutsche Zeitung quotes Mr Knezevic. On the other hand, he is also quoted as having said that the company wanted to reduce its CO2 emissions and reduce its energy consumption.

While this is in clear contrast to Mr Beeck’s statements last year, Mr Knezevic said that the change of colour used in McDonald’s branding was meant to attract attention and to start a discussion and so the company intentionally did not clarify that this had been a misunderstanding.  What ever the McDonald’s intention was, at least it got them some attention in the form of slightly confused consumers…

The notice says that where, the parties have legal representation, it's for the legal representatives to submit that documents should be excluded as being "without prejudice"; the adjudicator will not act on his own motion. If an application is defended and one or both parties lack legal representation, an adjudicator will consider whether material should be excluded as being "without prejudice" if he considers that the matter becomes material to the proceedings. The parties will be advised of the adjudicator's view; they can write to challenge it and, if that doesn't succeed, they can ask for an interlocutory hearing. If an adjudicator has considered "without prejudice" material, he must disqualify himself from making the substantive decision.