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FRIDAY, 30 OCTOBER 2009
Poland: what are serious reasons for non use of a trade mark?
The Polish entrepreneur Elżbieta Nawrot, trading as Przedsiębiorstwo Produkcyjno Handlowo Usługowe AMW from Pyrzowice, asked the Polish Patent Office to take a decision declaring the right of protection for the PARADIES R-73392 trade mark lapsed because of the failure of its owner to put to genuine use the registered trade mark. AMW claimed it had a legitimate interest to start the proceedings because the PPO refused the registration for PARADISE Z-160021 and because Paradies GmbH, the owner of PARADIES R-73392, had approached AMW with a cease and desist letter.
During the proceedings, Paradies GmbH submitted to the PPO materials which, in its opinion, proved that the company complied with all requirements in order to sell their products in Poland, as evidenced by invoices, price lists, business correspondence, exporters' statements and promotional materials. In particular, the German company provided evidence regarding the discussions and negotiations undertaken, whose goal was to sell goods bearing PARADIES trade mark.
However, the Polish Patent Office by its decision of 8 July 2008 decided on the lapse the right of protection for PARADIES R-73392 trade mark (starting on 31 August 1998). PARADIES GmbH filed a complaint to the District Administrative Court in Warsaw.
The Court in its judgment of 27 May 2009, case act signature VI SA/Wa 463/09 ruled that the circumstances that would justify the failure to fulfill the obligation to use the trade mark have not been closely characterized in the Polish Act on Trade Marks. The legal doctrine established a theory that initially these circumstances have the characteristics of force majeure (exceptional event, independent one, which is impossible to prevent - vis humana infirmitas resistere cui non potest). In other cases, the circumstances of serious reasons for the failure to perform the obligation to use a trade mark are based on the possibility of accusing the holder of the registration of reprehensible behaviour. Therefore all subjective factors affecting the business/entrepreneur behaviour are take into the account. Also all objective circumstances affecting the situation are taken into the consideration (as provided in article 5C(1) of the Paris Convention and article 19 of the TRIPS).
In the opinion of the Court, the Polish Patent Office took the correct decision in which it held that the German company had not properly proved that in its case - in relation to a relevant period of time - there were no circumstances that would justify the failure to fulfill its obligation to use the mark PARADIES R-72392. The court shared the views presented in the Polish legal doctrine that the set of reasons justifying non-use of a trade mark includes aside from legal and factual obstacles that are independent of the will of the proprietor of a trade mark registration, also these reasons that were a result of the behavior of the proprietor but did not indicate its guilt (including the negligence). The justified reasons for non-use of a trade mark can only be the so-called "serious reasons" - the serious obstacles of factual or legal nature, that occured independently of the will of the trade mark holder.
Posted by: Tomasz Rychlicki @ 18.21
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FRIDAY, 30 OCTOBER 2009
Board of Appeal wrong again: Aygill's and Agile ARE sufficiently similar
On 29 October the CFI considered an appeal against the Board of Appeal decision concerning an issue under Article 8(1)(b) of Regulation 40/94 brought in front of it by German Peek & Cloppenburg. The matter related to an alleged infringement (which was ruled out by the Board) by Redfil (Spain) and its mark “Agile” of the appelant's earlier sign “Aygill's”, both registered in Classes 18 (rucksacks), 25 (sportswear) and 28 (golfing equipment).
Since it was not disputed that the goods in question were identical, the CFI concentrated on assessing the possible similarity between the marks and confusion caused in case of such similarity. With regard to the visual element the Court held that at least an average degree of similarity was required in this case. Although the earlier mark was 2 letters longer than the later, neither this argument nor the one emphasising the existence of letter “y” in “Aygill's” convinced the Court that there was significant difference between the signs. Additionally, having applied the rules of English and French pronunciation of the marks the CFI confirmed the finding of the Board of Appeal in that it was right to deduce the existence of phonetic similarity.
On the other hand, due to a clear meaning of the later mark in several Community languages and lack of such meaning causing mere possible associations with a family name or a place name in relation to the earlier one, conceptual difference was established. However, the difference was not sufficiently strong to neutralise the previously established similarities.
Even though the signs were globally similar only to a low degree, the likelihood of confusion within the relevant Article should not have been excluded. Appeal upheld.
Posted by: Sasha Yelnik @ 00.26
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THURSDAY, 29 OCTOBER 2009
Spain - Gathering of specialized IP Judges in Barcelona.
Within the framework of the European Judicial Training Network, the Spanish Judicial School ("Escuela Judicial") has recently organised a seminar called “Community case law relating to trade marks”.
Starting October 21, 2009, the three-day course (specifically addressed to Judges) covered general aspects of Community mrade mark Law like “The concept and functions of the trade mark”, “The risk of confusion/association”, “Well-known trade marks”, “The exhaustion of trade mark rights”, “Real and effective use”, “The limits of trade mark rights” and “Other distinctive signs”.
Such a distinguished event deserved distinguished speakers. And it had them, indeed. There goes the list:
- from OHIM: Mr. Théophile M. Margellos (Chairperson of First and Third Board of Appeal) and Mr. Tomás de las Heras (Chairperson of the Second Board of Appeal),
- from the Bench: Mr. Markus Schneider (President judge of the First Instance Court of Hamburg) and Ms. Marta Cervera (Judge of the Commercial Court number no. 8 of Barcelona), and
- from private practice: Ms. Cristina Duch (senior associate with Baker & McKenzie Barcelona and External Relations Officer of MARQUES), Mr. Manuel Lobato (partner at Bird & Bird), Mr. Montiano Monteagudo (partner at URÍA MENÉNDEZ) and Ms. Inmaculada González (attorney).
The course was organised by Mr. Ignacio Sancho (Chairman of the Section no. 15 of the Provincial Court of Barcelona – first IP specialized tribunal in Spain) and Mr. Enrique García-Chamón (Chairman of the Community Trade Mark and Design Court in Alicante).
The “Judicial School” (seated in Barcelona) is an institute depending of the" Counsel of the Spanish Judiciary” (my very free translation of “Consejo General del Poder Judicial”) that organises continuous trainings and specialised courses expressly addressed to judges. Since its foundation in 1997, more that 2,000 Spanish judges have attended its training events.
Posted by: Ignacio Marques @ 16.17
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THURSDAY, 29 OCTOBER 2009
Latest ETMR now published
The November 2009 issue of the European Trade Mark Reports, published monthly by Sweet & Maxwell, has now been published. Cases included in this issue include
* Coty Prestige Lancaster Group GmbH v Markpl aats Brand Kijiji GmbH (a German decision from Frankfurt am Main on whether sellers of goods online can be compelled to provide information as to their identity)
* Nokia Corp v Revenue & Customs Commissioners (a High Court for England and Wales ruling on the meaning of 'counterfeit' and suspension of free movement of goods in transit)
* Bavaria NV v Bayerischer Brauerbund eV (European Court of Justice pronouncement relating to the validity of trade marks conflicting with protected geographical indications)
* Home Depot Trade Mark (a German Bundesgerichtshof ruling on the unitary nature of the Community trade mark)
Posted by: Jeremy Phillips @ 08.47
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THURSDAY, 29 OCTOBER 2009
RNAiFect and RNActive: who would get confused?
The latest appeal by CureVac GmbH to remove the registration of the allegedly infringing sign RNAiFect (belonging to Qiagen GmbH) in reliance on the Article 8(1)(b) of Regulation No 40/94 was dismissed earlier today on a number of grounds.
The CFI found that the goods were in fact partly identical and partly similar as both products related to chemicals used in science (Class 1) and chemicals used for medical usage (Class 5). However, when looking at the issue of similarity between the signs the Court found in favour of the defendant. The visual similarity which followed from the identical letters at the beginning of the signs was mitigated by the last five thus creating difference in visual perception of the marks and the required overall impression. The allegation of phonetic similarity failed too as the endings of the signs were clearly different and could not be pronounced in a confusingly similar manner. With regard to conceptual similarity the Court held that it was a common practice amongst producers of pharmaceuticals to incorporate the chemical compounds into the product's name in order to emphasise the alleged effectiveness of the product. Additionally, since “iFect” could only be related to “active” by a long chain of associations, it was concluded that the signs' endings were sufficiently dissimilar to offset the “RNA” at the beginning.
The CFI held that although the common component (“RNA”) appears first, it does not have a distinctive character thus directing the consumers to look at the signs' endings which are sufficiently dissimilar in the context of an overall assessment. Therefore the great similarity between the goods was “offset by the weak degree of similarity of the signs and the weak distinctive, even descriptive, character of the abbreviation ‘RNA’” thus ruling out the claim of the likelihood of confusion on the part of the relevant public.
Posted by: Sasha Yelnik @ 00.40
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WEDNESDAY, 28 OCTOBER 2009
John Deere prevails before CFI with colour combination mark
  John Deere had registered the colour combination green-yellow for agricultural machines as a CTM based on acquired distinctiveness. The image on the right, submitted with the application, shows how the colours are used. An Italian competitor, BCS Spa, filed for nullity based on several grounds, most importantly that the colours had not been used "as a trade mark" and that the evidence submitted did not show that distinctiveness had been acquired in all member states of the EU, as required by the case law.
The nullity claim was dismissed by all instances. In the case at hand, trade associations had issued statements that the colour combination was perceived as an indication of source, and John Deere had used the same colours consistently for a long time. This indicated that the coulours were indeed used "as a trade mark", notwithstanding the fact that they were used in combination with other (word) marks.
While it was correct that the acquired distinctiveness had to be shown in the entire territory of the EU (para. 39), this did not mean that survey evidence had to be submitted for each and every member state. It is permissible to deduce acquired distinctiveness from secondary evidence such as market share, revenue and advertising expenditure (para. 41). John Deere had submitted such data for all member states. In case of relatively expensive, long lasting investment goods such as tractors etc. offered by John Deere, a comparatively lower market share may be sufficient to establish acquired distinctiveness if the trade mark has been used for a long time and consistently - here, at least 50 years in some of the member states (para. 43-44).
Decision T‑137/08 of 28 October 2009 here (in German)
Posted by: Mark Schweizer @ 10.26
Tags: CFI, color mark, CTM, absolute grounds for refusal, acquired distinctiveness, |
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WEDNESDAY, 28 OCTOBER 2009
Jack Wolfskin relents
 Jack Wolfskin, having come under pressure for its aggressive enforcement of its "paw" trade mark against people offering handicrafts with paw designs in Germany (see Class46 post here), has issued a press statement indicating that it will not pursue its claims for attorney's costs against the infringers.
Apparently, the reaction of Jack Wolfskin customers to the campaign has been quite negative and strong enough to bring about a change of mind within Jack Wolfskin. JW still insists, however, that the (allegeldy) infringing designs are not offered commercially.
News article (in German) here
Posted by: Mark Schweizer @ 10.09
Tags: Germany, enforcement, legal fees, public relations, |
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