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WEDNESDAY, 30 SEPTEMBER 2009
Belgium: a stroke did not make the Smiley happy
 In its decision of 29 September the CFI considered the issue of the absolute grounds for refusal in relation to The Smiley Company SPRL's mark (T 139/08). The applicant claimed that the sign, registered for the rather interesting variety of classes (14- jewelery, 18- trunks and suitcases and 25- clothes and footwear), was not devoid of distinctive meaning and was recognisable by the relevant public. The applicant submitted that the the little vertical stroke on the half smile sign was not intentional, but rather the result of poor print quality. Interestingly enough, having made a formal note of the claim, the Court proceeded to ruling upon the above issue thus making it of primary importance. Otherwise the subject matter before the Court would be changed. An undesirable situation, of course.
The CFI chose to criticise the artistic creativity and imaginativeness of the sign's creator whilst assessing the mark's distinctiveness. Eventually, a “small stroke in the middle of the curve, towards the bottom” was held to be a very simple and banal design, which can not identify the commercial origin of the goods. Apparently, a stroke could not be instantly memorised by an “even relatively attentive member of the public”, that can recognise signs such as simple stripes. Indeed, a small stroke does not create an overall impression of a surface area to the extent that a stripe does...
In the end the Court did pay attention to the applicant's actual argument that the stroke is not of paramount importance and the sign is in fact part of the Registered Community Trade Mark (smiley). However, even in this scenario the average consumer is unlikely to find resemblance between, and subsequently, to put trust in, the registered smiley mark, the half smile and the imperfect picture of the sign he may have in mind.
Posted by: Sasha Yelnik @ 15.42
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WEDNESDAY, 30 SEPTEMBER 2009
Does OHIM need a fresh name?
Here's a little bit of fun for the end of the summer. The IPKat is conducting an opinion poll as to whether the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) could do with a fresh name or not. Although there are still eleven days to go, early indications are that the body's existing name has quite a few supporters. If you'd like to take a peek at the nominations and even cast a vote, here's the article about the name. The 'ballot box' is in the side bar on the left side of the page. Posted by: Jeremy Phillips @ 11.42
Tags: New name for OHIM, |
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MONDAY, 28 SEPTEMBER 2009
Spain – the CTM Court cancels the Spanish trade mark for “TUPPERSEX”.
In a recent Judgment, the CTM Court of Spain (seated – guess where- in Alicante) has partially awarded a trade mark infringement action based in the CTM no. 334,599 and 1,438,670 "TUPPERWARE" and has cancelled the respondent's Spanish registrations for “TUPPERSEX” (and device) in class 35. The cancelled trademark (well, one of them) consists in the following device (with excuses):
No wonder that the respondent is an undertaking dedicated to the doorstep selling of erotic paraphernalia.
After dismissing the defences raised by the respondent on (i) the lack of use of the claimant’s rights (who succeeded in demonstrating that has 6,000 contractors in Spain that organised 90,000 sale meetings for the sale of "TUPPERWARE" branded products) and (ii) the vulgarisation of the term “TUPPERWARE” (the Court found that there was no “inactivity or passivity” on the claimant’s side when enforcing its trade mark rights), the Court found that the junior trade mark “TUPPERSEX” (and its derivatives) did enter in conflict with the “TUPPERWARE” priorities. The main trigger of such decision was the identity of the first syllable in the conflicting trade marks (which according to the Court becomes the most critical factor), plus the identity in the services covered by the said marks (class 35).
However, the Court did not grant damages in favour of the claimant. The Court found that there was not any evidence in the record that demonstrated that the respondent had acted in bad faith when applying for the cancelled trade marks. This has become a sine qua non requirement in Spain for trade mark infringement actions where respondent is covered by trade mark registrations.
Full text of this Judgment (that tackles quite a few other issues) can be read here (in Spanish).
Posted by: Ignacio Marques @ 18.16
Tags: Spain, cancellation action, damages., |
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SUNDAY, 27 SEPTEMBER 2009
LANOXIN, FAMOXIN... Can you tell the difference?
 On
23 September The CFI made known its decision on the joint appeal of
GlaxoSmithKline SpA (Italy), Laboratórios Wellcome de Portugal, Lda(Portugal),
The Wellcome Foundation Ltd (United Kingdom) (cases T 493/07, T 26/08
and T 27/08) for the invalidation of the allegedly infringing LANOXIN's
rights by the word sign FAMOXIN (by Serono Genetics Institute SA (France)).
The Court first examined
whether the sign was put in genuine use in relation to the goods or services
for which it was registered including those which are sufficiently distinct to
constitute coherent categories or sub-categories. Indeed, the category of
pharmaceutical preparations was sufficiently broad to allow for identification
of independent sub-categories, different in relation to their intended purpose,
end consumers etc. Additionally, the applicants' submission that it would be
difficult even for medical and pharmaceutical specialists clearly to determine
between the “therapeutic areas” such as cardiovascular problems and metabolic
disorders was rejected.
The applicants' success on the
points of similarity of the goods and signs was modest to say the least. The
goods' only common characteristic found by the Court was their primary aim of
healing the patients, whilst the signs' endings were found to be not as
important as their first two “distinguishing” syllables. Moreover, the CFI
'turned the knife' once more by emphasising that since no similarity was found
and since the relevant public was either a highly attentive patient under the
supervision of a professional (as both LANOXIN and FAMOXIN are over-the-counter
products) or the professional himself, no likelihood of confusion could be
found.
Written for Class 46 by Alexandra Yelnik
Posted by: Jeremy Phillips @ 14.54
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FRIDAY, 25 SEPTEMBER 2009
Napoleon's image is allowed as a trade mark for... very personal products
A rather embarrassing judgment of the Greek Council of State, which may irritate French readers of this blog, recently saw the light of day.  A Greek entity involved in the production of tissues, kitchen and toilet paper had filed for the registration (in connection with these products) of a compound mark consisting of an image of Napoleon with one hand in his coat and the other holding a toilet paper roll and the word indication "Napoleon" in Greek. The application was rejected on the basis of art. 3 para 2 (a) of the Greek Trade Marks Act (No. 2239/1994) and 6tris of the Paris Convention, as depicting a national symbol of France. Both the First Instance Administrative Court and the Court of Appeal shared the Office's view. However, on final appeal, the Council of State held that historical figures cannot be regarded as national or state symbols, under the meaning of the above provisions. Accordingly, it accepted the appeal and remanded the case to the Court of Appeal for final judgment. The Council of State did state its objections as to the aesthetics of the said mark, but ruled that it did not find it to violate public order or established morals.
Posted by: Nikos Prentoulis @ 11.41
Tags: Greece, Napoleon, national symbol, state symbol, France, public order, established morals, |
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FRIDAY, 25 SEPTEMBER 2009
Rectification: The ECJ's President sounds the alarm on workload: a separate ECJ court for trade mark cases?
 To err is human: not the ECJ's President sounds the alarm, but the CFI's - Marc Jaeger - does. Marc Jaeger's full opinion on the workload of the CFI will be published on www.curia.europa.eu/20.htm tomorrow. Maybe my previous post might provoke an opinion of the ECJ's President Vassilios Skouris (see picture) on the same subject. Of course Class46 will keep you posted on such opinion.
Posted by: Gino Van Roeyen @ 10.13
Tags: ECJ, CFI, workload, trade marks, |
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FRIDAY, 25 SEPTEMBER 2009
Genuine use of COPAT not established, says CFI
In Case T-409/07 Cohausz v OHIM, decided on Wednesday, the CFI rejected an opposition to an application to register the figurative mark 'acopat', agreeing with the Board of Appeal that there had not been genuine use of the earlier German word marks COPAT on which the opposition was based. Cohausz, opposing the 'acopat' application, had filed a statement that its marks had been used during the preceding five-year period, through their being licensed to a specialist IP firm in Germany which used the mark in relation to its services on handouts, press folders, brochures, in its e-mail address and in its domain name. The CFI however considered that this statement was not supported by the various exhibits filed in support of it. As is often the case, the supporting evidence consisted of documents that were undated, of invoices which could not be shown to be related to the brochures in question.
Posted by: Jeremy Phillips @ 08.12
Tags: Genuine use, proof of use, |
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