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.
FRIDAY, 4 DECEMBER 2009 On Little Black Horse in Shield on Red Background – Ferrari Successful as Milan Court Upholds Infringement Claims.
The Italian newspaper Il Sole 24 Ore reports that last week Ferrari obtained a preliminary injunction from the IP Chamber of the Court of Milan, preventing the Italian company Promotive Sporting Collection from importing and marketing dolls, key rings, t-shirts and hats characterized by colours and symbols similar to those characterizing the Ferrari mark, in particular the colour red tout court in combination with the shield emblem or the prancing horse.
As a result, very broad protection seems to have been granted to the “Ferrari red” colour regardless of the shade or tone of red used by the competitor. The Court, indeed, did not limit the protection to a specific shade of red but instead established that the use of the red colour in conjunction with the emblem and little horse constitutes infringement of Ferrari’s registered and unregistered (so-called “marchio di fatto”) trade marks as well as an act of unfair competition pursuant to Article 2598 of Italian Civil Code, in particular for slavish imitation causing confusion for consumers, for misappropriation as well as for taking unfair advantage of and being detrimental to the third parties’ reputation, since the defendant’s products were of low quality and sold for a lower price.
Apart from the seizure of the goods and marketing materials as well as of accounting documentation required to calculate estimated loss of profits, the famous Modena based Italian sports car manufacturer obtained a measly € 100 fine for each future violation. The defendant was further ordered to pay a € 2,000 fine for each delay in implementing the decision.
The registrability of colours per se has not yet been considered by Italian case law. Since the ECJ teaching in Libertel (C-104/01) and Heidelberger (C-49/02), the Italian PTO has granted registration for a colour mark consisting exclusively of a single colour blue, designated by means of a colour sample and the international Pantone colour code, on 11 February 2008. It concerns Italian TM Reg. No 1093526, relating to “printing press equipment including jacket coverings for printing press transfer and delivery cylinders”, in class 7. A year before, the corresponding CTM application No 3370921 had been, on the other hand, held devoid of distinctiveness and consequently refused by the OHIM.
FRIDAY, 4 DECEMBER 2009 Spain - Court cancels a Spanish trade mark for "D10R".
The newspaper Eleconomista informs that the Court of Appeals of Barcelona has upheld a prior ruling by the Commercial Court no. 2 cancelling the Spanish trade mark for "D10R" due to its "obvious resemblance" with Christian Dior Couture Societe's registrations for "Christian Dior" in Spain.
The Court also found that the "D10R" registration was capable of creating confusion in the market, and that took undue advantage of the claimant's trade marks.
THURSDAY, 3 DECEMBER 2009 Poland: bad faith in trade mark applications
In a decision of 20 June 2008, the Polish Patent Office invalidated the right of protection for "Logos Travel Mark Śliwka” R-169277 trade mark owned by LOGOS TRAVEL MAREK ŚLIWKA SPÓŁKA JAWNA Magdalena Śliwka, Marek Śliwka. A request for invalidation of the right of protection was filed by Biuro Turystyki Związku Nauczycielstwa Polskiego LOGOSTOUR Sp. z o.o. from Warszawa - the holder of "LogosTour LT” R-74232 trade mark that was registered with priority from 15 July 1991. LOGOSTOUR company claimed that Mr Marek Śliwka cooperated with it since 1994 as a local representative and under a contract, which came into force on 1 January 1995 and the Agreement of 9 April 2002 he was allowed to use the "LogosTour LT” trade mark. The PPO found that "Logos Travel Mark Śliwka” was applied in bad faith. Mr Śliwka filed a complaint to the Voivodeiship Administrative Court in Warsaw arguing that there was no bad faith on his side and there is no likelihood of confusion with regard to disputed trade marks.
The VAC in a judgment of 23 June 2009, case act signature VI SA/Wa 274/09, ruled that the application for the right of protection for a trade mark is made in bad faith, despite the knowledge or ignorance, resulting from an absence of diligence, about the existence of another's right or interest that is worth of protection, which can be threatened, and with the intention of harming these interests. The overall assessment of the likelihood of confusion as it concerns the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, taking account in particular, their distinctive and dominant components.
This judgment is not yet final. The parties may file a cassation complaint to the Supreme Administrative Court.
Volvo Trademark Holding AB prevails in its appeal against the OHIM's dismissal of its opposition against the registration of the figurative mark "solvo" (depicted above) in Classes 9, 39 and 42 of the Nice Agreement. Both OHIM and the Board of Appeal had dismissed the opposition because the trade marks VOLVO and "solvo" (fig.) were not similar.
The CFI - sorry, General Court - disagreed. The two trade marks were at least phonetically similar. The Board of Appeal was therefore required to carry out a global assessment of the likelihood of confusion, which it failed to do.
Volvo also prevailed with its second plea, claiming a violation of art. 8(5) of Regulation No 40/94 (protection of marks with a reputation). The Court notes that no likelihood of confusion is necessary to prevail under art. 8(5), a mere link between the younger mark and the mark with a reputation suffices. Since the Board of Appeal's incorrect assessment of lack of similarity between the two marks led it to conclude that no link was established, it misapplied art. 8(5).
WEDNESDAY, 2 DECEMBER 2009 DPMA: IP Awareness and Enforcement conference - downloadable speakers' notes
As part of the EU project "IP Awareness and Enforcement: Modular Based Action for SMEs" a conference on the topic of "the enforcement of IP rights ("Durchsetzung von geistigen Eigentumsrechten") was held on 9 November 2009 in Stuttgart, Germany.
On its website, the German Patent and Trade Mark Office (DPMA) has now published the speakers' presentations which are definitely worth a look - … if you can read German that is.
Recommended are, for example, Claudia Mayr's notes on "ZGR-Online" applications under Council Regulation (EC) No 1383/2003 concerning customs action against suspected infringing goods and Vera Dalichau entertaining presentation on how to enforce trade mark rights in the German courts.
Please click here for a list of all presentations (in German).
WEDNESDAY, 2 DECEMBER 2009 Switzerland: not discriminating against MINARETT trade marks
Switzerland is currently getting some heat for its decision - approved by 57% of the population - to ban the building of new minarets (a ban that may violate international law). This Class46 member is glad to report, however, that Switzerland is not discriminating against MINARETT trade marks: the Swiss trade mark MINARETT, registered for coffee, and owned by REWE Beteiligungs Holding AG (CH 349 562), is still alive and kicking (I couldn't find any evidence for use online, but really, the use of this mark in Switzerland is perfectly legal!).
In this regard, Switzerland is even more tolerant than the European Union, because the only CTM application with the term MINARET, for cleaning products and candles, has been withdrawn (CTM 003548831).
WIPO, being the international organization that it is, beats both the EU and Switzerland with the registration IR 359 342 (depicted above left), also registered for coffee and owned by CM Logistique Sud Est. But wait - this trade mark enjoys protection in Switzerland. That makes two minaret marks, and four actual minarets, in Switzerland. Hope the SVP - the right-wing party behind the anti-minaret referendum - doesn't find out about this.
TUESDAY, 1 DECEMBER 2009 Poland: reclaim the windows – the saga continues
A year ago, this Clas46 team member has published a short post entitled "Reclaim the windows" and the life, being a constant state of change, has written the rest of this story, which he feels obliged to report on.
On 27 November 2009, Cezary Grabarczyk, the Polish Minister of Infrastructure signed the amendment to the Regulation on technical conditions of use of residential buildings, (in Polish: Rozporządzenie zmieniające rozporządzenie w sprawie warunków technicznych użytkowania budynków mieszkalnych) of 27 November 2009, published in Journal of Laws (Dziennik Ustaw) of 1999 No. 74, item. 836. The provisions of this amendments govern the possibility of installing big media advertising boards and vinyl's mesh on which different advertisements are displayed and other devices not related to the use of housing in the multi-family residential buildings.
A multi-family residential building should be used in such a way that its rooms have no restrictions to daytime lighting. The provisions allow only for the installation of equipment and advertising space on the walls without windows, the windows of the staircases or commercial premises. However, the prohibition does not apply in the case of construction works on the building’s facade. The amendments will eliminate the negative impact that big media advertisings placed one housing buildings have on their occupants.
The Regulation enters into force after 14 days from the date of promulgation. All kind of advertising devices and media and other devices not related to the use of the building or apartment that were installed on residential flats before the entry into force of the aforementioned provisions will stay, but not longer than 18 months from the date of entry into force.
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