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  Poland: whose treasure is it?...      Berlin Appeals Court backs ‘Parmesan’ label as purely Italian and upholds case against German Parmesan copycats. ...      Poland: act carefully when requesting preliminary injunction...      Octopus Paul (trade marks) - alive and kicking...      No confusion without similarity of marks, as CK appeal fails again...      Facebook.me transferred to rightful owner...      Preparing for the new gTLDs: a survey...      Poland: membership in capital group is not enough...      The weird case of the ZAHIA trade marks applications...      Dismissal of dishonest franchisee: protecting a brand and interests in it...     
 
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Class 46 - for your European trade mark news
 

Now in its third year, Class 46  is dedicated to European trade mark law and practice.  This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.
 
  MONDAY, 22 FEBRUARY 2010
Reader's Digest European Trusted Brands 2010

Reader's Digest magazine published the results of its annual "European Trusted Brands" survey. The winners for Germany are (for some of the 30+ product categories surveyed):

  • Cars: Volkswagen (in brackets the corresponding winner for Switzerland: Volkswagen)
  • Banks: Sparkasse (Raiffeisen)
  • Clothing: C&A (Charles Vögele)
  • Computer: Fujitsu Siemens (Dell)
  • Cosmetics: Yves Rocher (Nivea)
  • Perfumes: Yves Rocher ( )
  • Soft drinks: Coca-Cola ( )
  • Household appliances: Miele (Miele)
  • Skin care: Nivea (Nivea)
  • Internet: T-Online ( )
  • Coffee: Tchibo (Nespresso)
  • Mobile communication: Vodafone (Swisscom)
  • Mobile phones: Nokia (Nokia)
  • Food: Maggi ( )
  • Insurance: Allianz ( )
  • Dental care: Odol (Elmex)

NIVEA is the only brand that topped its category in all 16 countries surveyed. Here are the other brands that were successful in several countries:

  • Canon, Nokia, Visa: 14 countries
  • Kellogg’s: 10 countries
  • Ariel, Hewlett Packard bzw. HP Compaq: 7 countries
  • Miele: 6 countries
  • Nestlé, Dell: 4 countries
  • Aspirin, Avon, Bosch, Centrum, L’Oréal (hair care), Opel, Orange, Pantene, Persil, Toyota, Volkswagen: 3 countries
  • I find it actually quite interesting that the results are so different even for (relatively) similar countries such as Germany and Switzerland. Even in the age of Globalization, many brands are national.

    Further results will be published beginning of March on www.rdtrustedbrands.com.

    Posted by: Mark Schweizer @ 13.45 
    Tags:

     

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      MONDAY, 22 FEBRUARY 2010
    "Easter bunnies' case" back at the Austrian court of first instance

    Our readers will recall the ECJ's judgment in Case C529/07 (see our report here), Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, also known as the "Easter bunnies' case", which was a reference for a preliminary ruling from Austria on the question of how to establish bad faith in trade mark invalidity proceedings. By way of reminder, in case C529/07  the ECJ had held the following:

    "In order to determine whether the applicant is acting in bad faith within the meaning of Article 51(1)(b) of Council Regulation ... 40/94 ..., the national court must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark, in particular:

     

    – the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought;

     

    – the applicant’s intention to prevent that third party from continuing to use such a sign; and

     

    – the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought".

    The Austrian Broadcasting Corporation (ORF) has recently reported on the progress of this case, now that is back at the court of first instance, the Handelsgericht.  Harald Schmidt, one of the lawyers acting for Hauswirth, is cited by the ORF as having said that the Austrian first instance court has now requested that Lindt provide evidence showing how well known the Lindt bunnies were in Germany in the year 2000 (this appears to relate to point three above: "degree of legal protection enjoyed").  Unfortunately the report does not provide any information as to how Lindt might be able to provide this information, so this member of Class 46 expects that an old survey (if conveniently available) will have to be used, which either dates from 2000 or at least allows to draw conclusions as to how well the bunnies were known to the relevant consumers in 2000.  It is somehow not much of a surprise that Mr Schmidt does not expect a decision in this case before 2012 - this would be 12 years (!) after this dispute started. 

     

    Reading the readers comments left on the ORF website, this Class 46 member noticed that one cynical reader wondered whether this whole case was nothing more than a joint marketing plot by Lindt and Hauswirth to keep their little bunnies in the news.  Nice idea, but would they really do that for 12 years….?

    Posted by: Birgit Clark @ 12.23 
    Tags: ecj, austria, bunnies, bad faith,

     

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      MONDAY, 22 FEBRUARY 2010
    Spanish Patents and Trade marks Office (SPTO) goes totally online.

    In an attempt to reduce the bureocratic burden on users, the SPTO has recently enforced the Spanish Act no. 11/2007 on "online access for citizens to public services", providing alternatives to the use of paper.

    The SPTO has made available online procedures not only referred for the e-filing of applications (in those cases a reduction of 15% in the official tax is applied) but also for the most frequent steps before the Office: oppositions, answers to the oppositions, renewals, appeals, assignment and licence recordations, issuance of certifications or amendments in the entered owner's name or direction.

    If these measures help to reduce terms and save some trees, this Class 46 member will be happy.

    Posted by: Ignacio Marques @ 09.37 
    Tags: Spain, Spanish Patents and Trade Marks Office.,

     

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      MONDAY, 22 FEBRUARY 2010
    Don't say "pure" for pasturized milk, says Greek Communication Review Board
    The Greek Communication Review Board recently dealt with a tv and radio advertisement regarding milk. The company involved, a milk producer from Rodopi in northeastern Greece, used in their communication for their milk the phrase "... includes the purity of nature and nothing else". As the milk was pasterized, the GCRB asked them to amend the advertisement ruling that it created the false impression that the milk was fresh. The GCRB also asked the company not to use the phrase "from the finest milk producers in Rodopi", as it found no evidence that the company uses a particular system or method of evaluating the producers with which it cooperates. The decision is in Greek here. And a Google search for pics of the beautiful Rodopi is here.

     

    Posted by: Nikos Prentoulis @ 06.35 
    Tags: Greece, Greek Communication Review Board, advertisement, communication, milk, Rodopi,

     

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      FRIDAY, 19 FEBRUARY 2010
    Just what is MARQUES doing? Part II
    Continuing the reports by MARQUES Teams (on which please see the previous post):

    • Next to report was the Programming Team, which described its role in composing programmes and identifying speakers for the organisation's many events. The theme for MARQUES' September meeting, Berlin is to be "MARQUES Reloaded", which sounds quite mysterious! The 2011 September Meeting is scheduled for Baveno, Italy -- where the theme is "Future Shock".

    • The Protocol in South America (PISA) Team then gave a vivid account of legislative progress towards adoption of the Madrid Protocol in one of the world's most promising areas for further economic growth.

    • Good news emerged from the Promotion and Membership Team: last year the organisation's membership stood at 609, despite the recession.  Plans are afoot for attracting more corporate members, as well as for making a compelling case for getting more corporate members involved. 

    • The Publications and Website Team announced a wide array of technical facilities currently offered or being monitored by the organisation, include WAP push, streaming, webinars, webcasts, polling and blogging as well as teleconferencing: just ask MARQUES and see what it can do for you.

    • The Regulatory Team -- one of MARQUES' smallest and youngest -- was pleased to say that it has gained some fresh recruits (all the teams need volunteers: if you'd like to participate in one, do let MARQUES know). Product placement is the team's next big project, taking a multi-jurisdictional approach and looking beyond Europe to Brazil, India and other leading film-making countries.

    • The Trade Mark Law and Practice Team watches the activities of the relevant WIPO Standing Committees, OHIM (on Class Headings and relations with national offices). The team applauds OHIM's efforts to accelerate opposition proceedings, as do we all. 

    • At the tail of the alphabetical list, the Unfair Competition Team spoke of its 113-page report on the Protection and Infringement of Look-Alikes, the results of its survey (currently available to members only). There are also plans to produce a second annex to it  "Who's Behind the Mask?", discussing latest Court of Appeal for the European Union and General Court decisions with relevance to lookalikes.  A panel at the Berlin Conference, "The Good, the Bad and the Ugly", will foster further discussion of the topic.

    Remember: MARQUES can only achieve what its members, and in particular its Team members, can do for it.  Your involvement is vital!

    Posted by: Jeremy Phillips @ 12.08 
    Tags: MARQUES activities,

     

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      FRIDAY, 19 FEBRUARY 2010
    Just what is MARQUES doing?
    Today's the day that the various MARQUES teams reported to each other on their achievements, current activities and prospects for the future.It would take  forever to list everything, but here are some of the highlights:

    •  The Amicus Curiae Team is involved in interventions in actions in which it is not a party. One such case concerns the detention of goods which are known to infringe IP rights but which are merely in transit. The Team has tried a new way of intervening, by preparing materials for governments to use in European Court of Justice proceedings. Getting involved in proceedings a national level is a good way of ensuring that the Team has a chance to influence the ECJ in references from the national court.  Interestingly, the Amicus team could not reach consensus on the position to take regarding the ONEL/OMEL case (see earlier Class 46 posts here, here, here and here), in which the Benelux Intellectual Property Office considered that use in just one EU member state did not constitute 'genuine use'.

    • The Anticounterfeiting and Parallel Trade Team reported that work was still needed on the problems that arise when goods are seized by Customs as fakes but turn out to be parallel imports. The need to involve not just MARQUES members but others in this Team's activities was emphasised. The Team has been asked for its input on proposals to reform Customs provisions and is investigating what precisely this entails.

    • Next to report was the Brands and Marketing Team, which announced its Advertising Portal, the availability of its collection of branding blunders, its work on the cultural significance of flowers, numbers, animals and colours (thus in Italy chrysanthemums are associated with sadness, which the number 4 in China sounds the same as "death"). The team's remit includes regulatory, cultural and environmental issues involving advertising and marketing, particularly with regard to health, children and ethnic minorities.

    • The CyberSpace Team has had a busy year, attending and speaking in conferences, dealing with journalists' inquiries and delving into the ramifications of the new ICANN gTLD Process -- the Team suggests that there should be no new gTLDs unless the requisite provisions for protecting trade marks are in place.  Following a recommendation from Council, this team is working together with ECTA on these matters.

    • The Design Team explained its work regarding rejected Community design applications. There are currently problems in accessing data from OHIM, the resolution of which is under discussion. Modernisation of the Locarno Classification system is also within the team's current objectives, as well as discussion of whether a Singapore Treaty-style provision should be made for design registrations too.

    • The Education Team informed MARQUES that it was proposing to reform the rules for Lewis Gaze Essay and that its ongoing work on compiling booklists was continuing apace. The team is working on a booket for marketing personnel, a basic document which can educate people who work with brands so that they can avoid basic errors, etc.  The booklet will also deal with issues like policing and staff training for the purpose of handling queries from the public.Cooperation with other bodies, such as ELSA (the European Law Students Association) is also contemplated.

    •  The Geographical Indications Team looked forward to cooperating with Class 46 since this weblog covers the grant of EU GIs as part of its news service. The Team's GeoNews newsletter continues to provide news and analysis on the subject and work continues on tables and databases covering treaties, decisions and other relevant data from courts and national administrative bodies.  Its members view their contribution in terms of the thoughts and ideas they generate, not just in terms of attending meetings or achieving immediate results.

    • The Intellectual Asset Management Team seeks to help raise the profile of brand value for MARQUES members.  as ammunition for people who find their brand management budgets getting cut or falling under threat of cuts.  The Team plans a regular series of articles for the MARQUES newsletter, to raise general awareness of IAM issues. It is also examining the extent to which brands can be bought or auctioned in the open market, as well as classic in-house problems such as budgeting for trade mark portfolio management.  A further project relates to participation in the plan for an ISO certification for trade marks.

    • Despite its rather strange name, the IP Outer Borders Team is currently dealing with a fairly conventional topic, though one which is causing a lot of anxiety in IP-owning circles: on the liability/responsibility of intermediaries in respect of internet-related IP uses and trade. There is now a growing body of case law, which will be supplemented by a questionnaire for MARQUES members.

    • From outer borders to inner borders, the next presentation came from the OHIM Team, which has been liaising with the Office on matters regarding fees, application of the Cooperation Fund to various good uses, electronic tools, development of TMView, online filing in all offices and the provision of information services for users of the trade mark system.  The Max Planck Institute review of the operation of the Community trade mark system was flagged for future attention.

    N

    otes

    1.  This post covers part 1 of the Team Report session.  A further post will cover the rest of the team reports.

    2. The entire session of the MARQUES Meeting which was devoted to these reports has been filmed and will be made available from the MARQUES website in due course.

    Posted by: Jeremy Phillips @ 09.20 
    Tags: MARQUES activities,

     

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      THURSDAY, 18 FEBRUARY 2010
    Greece - Book titles not registrable as a trade mark says the Supreme Civil Court

    In a (well hidden from the eyes of this blogger) 2009 judgment, Areios Pagos, the Greek Supreme Civil and Criminal Court, held that book titles are cannot be registered as trade marks, because they do not serve to identify the publisher, but only the book as an intellectual work. The particular dictum came from the “sidelines” of a rather complex infringement action, almost 20 years old, where the validity of the marks was not a real issue. The ruling, however, acknowledges case law instances where book titles have been registered as trade marks (collective works and cases when the mark was filed to designate the book – product as originating from the publisher), but, sadly, offers no more guidance on the topic. Class 46 friend, Greek IP lawyer, Michalis Kosmopoulos, had an interesting comment: Under Greek law, civil courts have competence over trade mark infringement disputes (as was this case), but the competence to rule on the registrability of trade marks lies with the administrative courts. So, Areios Pagos may have overstepped its authority on this one. The judgment was issued under No. 1309/2009 and is available only in Greek.   

    Posted by: Nikos Prentoulis @ 12.26 
    Tags: Greece, Areios Pagos, Suprem Court, book titles,

     

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    The Class 46 archive


    - 2010
         + September (5)
         + August (30)
         + July (55)
         + June (40)
         + May (33)
         + April (42)
         + March (62)
         - February (44)
    Spain - Do not mess with golden Oscar.
    Malta in the CTM limelight
    Keepin' up with the Joneses
    Slovak Republic signs up for Singapore Treaty
    GI news: Pementos protected, Parma packaging changes
    No strange aroma, but will LONGKOU FEN SI pass the test?
    CEIPI response on the Lisbon Agreement now published
    Reader's Digest European Trusted Brands 2010
    "Easter bunnies' case" back at the Austrian court of first instance
    Spanish Patents and Trade marks Office (SPTO) goes totally online.
    Don't say "pure" for pasturized milk, says Greek Communication Review Board
    Just what is MARQUES doing? Part II
    Just what is MARQUES doing?
    Greece - Book titles not registrable as a trade mark says the Supreme Civil Court
    Social networking: threats, promises or opportunities?
    Dealing with unofficial sites and blogs: the Nestlé strategy
    IDNs: a Nice subject, but not necessarily for TM owners
    European Commission approves OTTO's acquisition of the Quelle trade mark "subject to conditions"
    German Federal Patent Court: VOLKSFLAT
    Italian Supreme Court tackles Rubik’s Cube CTM and establishes that Protection under the Italian Criminal Code for a CTM runs from Application Date.
    Poland: differences in pharmaceutical trade marks
    Switzerland: health claims regulation fully in force after 31 March 2010
    Historic Greek beer brand to resurface
    Spain: the Supreme Court settles a (coyote) fight on the protection of foreign trade names.
    Comparative advertising in Turkey: the Radio Fenomen case
    German Federal Patent Court: registrability of labels (“Etikett”)
    Poland: football fans play with lawyers
    Germany: McDonald's going "green" - but not in an ecological sense..
    UK Company Names Tribunal issues guidance on "without prejudice"
    If this cheese says "Monaco", it's Italian
    New name for the MARQUES Newsletter: have you voted yet?
    More TSG and GI terms gain Euro-protection
    New logo for all EU organic products
    JAVA MONSTER vulnerable and unprotected in Switzerland
    Polish Sejm wants new logo
    Changes to OHIM's Manual of Trade Mark Practice: usually no similarity between restaurant services and drinks
    Genuine use in one Member State: the HPO speaks out
    The Transformers take over the General Court: ENERCON confusingly similar to TRANSFORMERS ENERGON
    The "ONEL case" - more rumours
    Poland: information on licensing for Euro 2012 trade marks
    Worst UDRP decision of 2009?
    G-Star successful in Italy as Milan Court upholds protection for 'Elwood' and ‘Limit Regular’ jeans.
    The mother of all UDRP complaints?
    Poland: GESTROL is not always similar to GESTROLTEX
         + January (36)
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    + 2007

     
     

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