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FRIDAY, 16 JULY 2010
Spain - Where is the distinctivity in mixed trade marks? The Spanish CTM Court no. 1 has an answer to that.
One of the recurrent topics in trade mark litigation (specially in cancellation actions on the grounds of lack of use and infringement cases) is where resides the distinctivity in mixed marks. Those type of registrations were defined by the Court of Justice of the European Communities in the case C-488/06 P as those "comprising both graphic and word elements".
It is not uncommon that trade mark owners vary the representation of their registered mixed marks in trade but, what are the acceptable limits to that?
A recent Judgment of the Spanish CTM Court no. 1 tackles this issue. In that specific case, the respondent based its defence (amongst other arguments) in the fact that the claimant's mixed marks were not used in trade "as registered", as it used in trade another chromatic variation different to the one it registered.
The CTM as stake (no. 001823608) had this specific appearance:
The Court ruled that in that specific case, the "strength" (literal) of the claimant's mixed mark resided in its word element, that was "nuclear" to its distintinctive aptitude. The defence based on the lack of use was therefore dismissed as the claimant met its burden of proof when it provided documents that demonstrated that the word element of the mark ("Areas" was used in a "constant and real" way by the claimant.
Posted by: Ignacio Marques @ 13.37
Tags: Spain, mixed marks, infringement., |
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FRIDAY, 16 JULY 2010
E-justice website launched
The Council of the European Union announced the launching of e-Justice, a new web portal devoted to legal information. This web site includes for instance links to European countries jurisprudence databases, companies registers and other resources that IP professionals can take advantage of in their daily work.
From the press release:
European e-Justice internet portal offers quick answers to citizens’ legal questions
(...)
The web site benefits citizens, businesses, lawyers and judges with cross-border legal questions and boosts mutual understanding of different legal systems by contributing to the creation of a single area of justice. With more than 12,000 pages of content, the first version provides information and links on laws and practices in all Member States. For example, the portal offers information on legal aid, judicial training, and videoconferencing, as well as links to legal databases, online insolvency and land registers.
(...)
Lawyers, notaries and judges can have access to legal databases, contact colleagues through judicial networks and find information on judicial training.
They also find information on arranging cross-border videoconferences;
(...)
Work is already underway to ensure that by 2013 there will be a tool
allowing citizens to narrow their searches for lawyers. For example, the portal will allow a
citizen to look for a German-speaking lawyer who specialises in family or divorce law in Hungary.
Homepage of the e-Justice Portal: https://e-justice.europa.eu
Posted by: Frédéric Glaize @ 13.30
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FRIDAY, 16 JULY 2010
Octopus Paul trade marks
Paul, the psychic octopus, who was (allegedly...) born in England but resides in a German zoo, became a global sensation when he correctly predicted the outcome of all Germany games in the recent football World Cup as well as the result of the World Cup final. Now a bidding war appears to have started and a Spanish zoo has already sent a negotiator to effect Paul's transfer from Germany to Spain.
Now, how long would it take for the first Paul trade marks to appear? You got it, it did not take very long. Please see the first offerings below taken from the OHIM and German trade mark registers respectively.
Polpo is the Italian word for octopus by the way, most likely inspired by the latest rumours that Paul is not English born but actually from Italy. Das Orakel is German for the oracle... Why do I have to think of polar bear Knut all of a sudden?
 
Posted by: Birgit Clark @ 07.09
Tags: Paul, |
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WEDNESDAY, 14 JULY 2010
Poland: dissimilarity of 3D trade marks
 Polish company Przedsiębiorstwo POLMOS Białystok Spółka Akcyjna, the owner of word-figurative and 3D trade mark "POLMOS ŻUBRÓWKA BISON BRAND VODKA" R-62081 and 3D trade mark R-85811, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection to word-figurative and 3D trade mark "VODKA Herbe de Pologne" R-155144, registered for BELVEDERE S.A.
POLMOS argued, inter alia, that there is a significant visual similarity between trade marks at issue. Its bottle has a blade of grass, which is very dominant and attracts the attention of the average consumer. Such assessment cannot be undermined by the fact that there are few blades of grass in the bottle representing the questioned trade mark. POLMOS argued that the registration of "VODKA Herbe de Pologne" threatens the reputation of its trade marks, and emphasized the role of grass in the bottle as a motif indicating the origin of the product. POLMOS added that the purpose of BELVEDERE’s actions was the parasitic use of the reputation of earlier trade marks owned by POLMOS.
 In the opinion of the Polish Patent Office (PPO) these trade marks were visually dissimilar because of different bottle shape, color, the presence of a label in the contested mark and the lack of labels in the opposed one, number and appearance of components in liquid. These signs were incomparable in the phonetic/aural aspect, so they were also dissimilar, as the opposed trade mark lacks lettering. In the conceptual aspect the questioned trade mark contains a bunch of herbs inside the bottle and the word "herbe" which indicates that the vodka is herbal, and the opposed sign, contains a longitudinal component, but this element in general is not like weed-grass. Consequently, due to lack of similarity the PPO held that the opposition is unfounded. POLMOS filed a complaint.
The Voivodeship Administrative Court in Warsaw in its judgment of 27 April 2010 case file VI SA/Wa 2038/09 held that in the case of trade mark reputation, a sign has to be examined as a whole, as the right of protection was granted for such a designation. It can not be allowed to examine every element of the sign separately, in isolation from the whole trade mark.
The Court also ruled that the similarity of signs is a prerequisite for examining whether in a particular situation there was infringement of the reputation of an earlier mark. The VAC held that the absence of the similarity of signs, which also includes the possibility of their association, is the argument that the presence on the market of goods bearing the sign at issue will not affect in any way the alleged reputation and distinctive character of POLMOS’ trade marks.
Posted by: Tomasz Rychlicki @ 12.55
Tags: Poland, Voivodeship Administrative Court, 3D trade marks, dissimilarity of signs, reputed trade marks, żubrówka, vodka, Polish Patent Office, |
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TUESDAY, 13 JULY 2010
(Non-) British brands
 Some light reading on a Tuesday afternoon with your 5 o'clock tea: Boots, Jaguar, Kitkat, Tetley’s tea and Wedgwood - very British brands you may think. But no, think again... lovemoney.com has published an entertaining piece on "10 great British brands (that are) no longer 'British'" but have been bought by "foreigners".
Being a "foreigner" myself, I found this quite an amusing read. Please click here to read "10 great British brands no longer 'British'".
Posted by: Birgit Clark @ 17.12
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TUESDAY, 13 JULY 2010
Use of PARMETTA for a Seasoning Infringes PDO PARMIGIANO REGGIANO
On 8 June 2010, the Cologne Court upheld the preliminary injunction granted inaudita altera parte on 26 January 2010 against the German Fuchs Gewürze Group, preventing the latter producer of seasoning products from marketing seasonings and cheese mixes under the name ‘Parmetta’.
 
Background
The case concerns the Parmigiano Reggiano PDO, registered in 1996 under Regulation No 2081/92 (now Regulation No 510/06) on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.
The defendant marketed a seasoning – consisting of 54 percent grated hard cheese, 17 percent cheese preparations and 29 percent spices – under the denomination ‘PARMETTA’, distributed under the trade mark ‘FUCHS’. The seasoning packaging showed the image of a hard cheese.
Decision
In its ruling, referring to the case law in Gorgonzola (Case C-87/97) and Parmesan II (C-132/05), the Court explicitly recognized that use of the term ‘PARMETTA’ for a seasoning containing cheese, which therefore has to be deemed as a product comparable to cheese, clearly evokes the PDO ‘PARMIGIANO REGGIANO’, irrespective of the existence of a risk of confusion which is not a necessary condition for protection of names registered as a PDO.
According to the Court the suffix –ETTA was not sufficient to exclude evocation; on the contrary, due to its Italian sound, it even strengthened a link with the Italian territory. In addition, the image of a hard cheese (all too similar to Parmigiano Reggiano) as well as the suggestion on the packaging to use the seasoning on pizza and pasta, further enhanced this link.
The Court dismissed all of the defendant’s arguments, according to which there was no evocation at all and that at the most the term PARMETTA evoked PARMESAN which, on its turn, evoked “PARMIGIANO REGGIANO”.
In conclusion, the Court agreed with the Parmigiano Reggiano Cheese Consortium that the use of the name ‘Parmetta' constituted violation of Article 13 (1)(b) PDO/PGI Regulation (EC) No 510/06 by evoking the Protected Designation of Origin Parmigiano Reggiano.
In addition, the Court ordered Fuchs to pay the costs of the proceedings.
Fuchs’ lawyers have informed the Consortium of the defendant’s decision not to lodge any further appeal against the decision.
Posted by: Edith Van den Eede @ 16.48
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TUESDAY, 13 JULY 2010
Use of PARMETTA for a Seasoning Infringes PDO PARMIGIANO REGGIANO
On 8 June 2010, the Cologne Court upheld the preliminary injunction granted inaudita altera parte on 26 January 2010 against the German Fuchs Gewürze Group, preventing the latter producer of seasoning products from marketing seasonings and cheese mixes under the name ‘Parmetta’.
Background
The case concerns the Parmigiano Reggiano PDO, registered in 1996 under Regulation No 2081/92 (now Regulation No 510/06) on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.
The defendant marketed a seasoning – consisting of 54 percent grated hard cheese, 17 percent cheese preparations and 29 percent spices – under the denomination ‘PARMETTA’, distributed under the trade mark ‘FUCHS’. The seasoning packaging showed the image of a hard cheese.
Decision
In its ruling, referring to the case law in Gorgonzola (Case C-87/97) and Parmesan II (C-132/05), the Court explicitly recognized that use of the term ‘PARMETTA’ for a seasoning containing cheese, which therefore has to be deemed as a product comparable to cheese, clearly evokes the PDO ‘PARMIGIANO REGGIANO’, irrespective of the existence of a risk of confusion which is not a necessary condition for protection of names registered as a PDO.
According to the Court the suffix –ETTA was not sufficient to exclude evocation; on the contrary, due to its Italian sound, it even strengthened a link with the Italian territory. In addition, the image of a hard cheese (all too similar to Parmigiano Reggiano) as well as the suggestion on the packaging to use the seasoning on pizza and pasta, further enhanced this link.
The Court dismissed all of the defendant’s arguments, according to which there was no evocation at all and that at the most the term PARMETTA evoked PARMESAN which, on its turn, evoked “PARMIGIANO REGGIANO”.
In conclusion, the Court agreed with the Parmigiano Reggiano Cheese Consortium that the use of the name ‘Parmetta' constituted violation of Article 13 (1)(b) PDO/PGI Regulation (EC) No 510/06 by evoking the Protected Designation of Origin Parmigiano Reggiano.
In addition, the Court ordered Fuchs to pay the costs of the proceedings.
Fuchs’ lawyers have informed the Consortium of the defendant’s decision not to lodge any further appeal against the decision.
Posted by: Edith Van den Eede @ 16.12
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