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, 11 DECEMBER 2009 General Court: opposition and revocation proceedings are independent of each other
In case T-27/09Stella Kunststofftechnik GmbH appealed against the earlier decision of the Board of Appeal. The latter allowed the revocation of the applicant's wordmark “Stella” in a number of classes (6, 8, 16 and 20) in the proceedings brought by Polish Stella Pack S.A.
The applicant claimed that the Board of Appeal erred in law wrongfully rejecting the submissions which aimed to prove the genuine use of the mark in question. The General Court, however, dismissed the plea as there was a failure to set out the essential elements of the legal argument in the application itself.
The applicant also argued that it was unlawful to accept the application for revocation as the opposition proceedings started by the applicant against the intervener's mark have been brought before the OHIM and are still pending. The applicant relied in a number of Regulations including Regulation No 2868/95 and the OHIM’s Internal Guidelines. Nevertheless, the General Court held that none of the cited regulations referred to a mutual connection between the revocation and opposition proceedings. Additionally, these proceedings are governed by two different titles of the Directive 40/94 (Title IV for the opposition proceedings and Title VI for revocation), each having their own purpose and effects. Therefore different rules (eg., time limits etc) apply to each type of the proceedings.
The General Court upheld the decision of the Board of Appeal. “Opposition proceedings and revocation proceedings are two distinct and autonomous types of proceedings, each with their own effects, and that it is possible to entertain revocation proceedings irrespective of whether opposition proceedings based on the mark to which the application for revocation relates have been brought and are still pending.” (para. 32)
THURSDAY, 10 DECEMBER 2009 New practice notice on evidential value of UK correspondence
A new Tribunal Practice Notice (TPN 5/2009), "Correspondence solicited for proceedings" has been issued by the United Kingdom's Intellectual Property Office. The notice concerns evidence filed in the form of letters from third parties, where these letters have been solicited by the parties to the proceedings. Typically, it is the Registrar’s experience that such letters are headed "To whom it may concern", or even addressed to the Registrar, whilst others are less obvious in format. Such evidence is hearsay.
The practice note summarises the relevant rules relating to civil evidence and adds:
In DUCCIO Trade Mark BL O343-09, Professor Ruth Annand, sitting as the Appointed Person observed:
"There are two ways in which "to whom it may concern letters" can be introduced in Registry proceedings. First, the writer of the letter can provide a verifying affidavit, statutory declaration or witness statement to which his or her letter is exhibited. Second, the party seeking to rely on the letter can provide an affidavit, statutory declaration or witness statement to which the third party letter is exhibited. In the first case, the letter is part of the writer’s own evidence. In the second case, the letter is hearsay evidence admissible by virtue of section 1 of the 1995 Act."
Hearing Officers will give hearsay evidence of this kind such weight as it deserves, assessing each case on its own merits. Accordingly, hearsay evidence will not be discounted simply because it is hearsay. So, for example, substantial weight may be given to a hearsay statement made in letters or documents created around the time of the issue or event to which it relates. On the other hand, a Hearing Officer may decide to afford less weight to a hearsay statement made in a letter solicited by a party some time after an event, for the purpose of the proceedings, than he or she would have given to the same statement if had been made in a witness statement and accompanied by a statement of truth.
If the person making such a hearsay statement had any motive to conceal or misrepresent matters, and the Hearing Officer decides that the circumstances in which the evidence is adduced as hearsay are such as to suggest an attempt to prevent proper evaluation of its weight, he or she may give the statement no weight at all.
A party filing a hearsay statement therefore runs the risk that the tribunal may assess its weight at a lower level than that which the party considers it should carry. Accordingly, unless it is impractical to do so, the best course of action is to file statements made specifically for the purposes of the proceedings in the form of a witness statement.
THURSDAY, 10 DECEMBER 2009 Consumer error need not be proved in criminal proceedings for online sales, says Barcelona appeal court
Writing for International Law Office (30 November 2009), Spanish law firm Grau & Angulo describe a decision of the Barcelona Court of Appeal on 31 July 2009 to uphold a conviction for
online marketing of counterfeit products. The article states that this is
"... the latest in a
series of decisions which clearly establish that consumer error (ie, the belief
of those who buy fake products that they are buying genuine products) is not a
requirement for the existence of a criminal offence, as Article 274 of the
Criminal Code protects trade mark holders' rights, but not consumers' rights,
which are adequately protected by other articles of the code".
A similar conclusion has been reached by the courts in Madrid.
ICANN has announced that a revision of its UDRP will take effect as of 1 March 2010. From the official statement:
On 30 October 2009, the ICANN Board approved a modification to the Implementation Rules for the Uniform Domain Name Dispute Resolution Policy (“Rules”). The modified Rules now require UDRP claimants and respondents to provide documents to UDRP Providers in electronic form. The modified Rules also change UDRP Provider obligations in forwarding hard copy notice to respondents in UDRP proceedings: the original Rules required Providers to forward a hard copy of the UDRP complaint; under the new Rules, Providers do not have to forward a hard copy of the entire complaint. Providers are now only required to forward a hard copy notice that a UDRP complaint has been filed.
The modified Rules will become mandatory for all UDRP proceedings filed on or after 1 March 2010
More here. According to the WIPO, this move will save at least a million pages of paper per year for the complaints filed with the WIPO Arbitration and Mediation Center alone, equivalent to about 1,000 trees (see CORRIGENDUM). Good news!
CORRIGENDUM: According to WIPO, some ten million pages of paper were filed over the lifespan of the UDRP (the last nine years) with WIPO, equivalent to about 1,000 trees. Some research on the Internet puts this number into doubt: apparently, one pine tree of the kind typically used for paper production produces about 80,000 pages of paper. Dividing ten million by 80,000 gets you a 125, not a 1,000 trees. WIPO may be slightly overstating its case.
Image from H. Koppdelaney, Creative Commons licensed.
Posted by: Mark Schweizer @ 14.23 Tags: WIPO, ICANN, UDRP,
WEDNESDAY, 9 DECEMBER 2009 Spain – Leo Messi, from world player number one to brand.
No surprise that sport icons have become the golden dream of every marketeer.
This has also been the case for FC Barcelona striker Leo Messi – recently awarded with the “Ballon d'Or 2009” as the best Europe-based footballer of the year (and most likely the next "FIFA World Player 2009").
According to La Vanguardia, the advertisement agency “Espluga Asociados” has generated a brand for the little but courageous Barça player. The Messi brand will be used in merchandising associated with the footballer.
WEDNESDAY, 9 DECEMBER 2009 Switzerland: iPhone is descriptive, no trade mark
The Swiss trade mark authorities have, in their continued quest to make themselves the laughing stock of trade mark law, ruled that the word mark IPHONE is not protectable in Switzerland. The relevant consumer would understand the "I" as abbreviation for "Internet" or "information". As a simple letter, the "I" is not protectable unless it has acquired distinctiveness.
In connection with "PHONE", the "I" therefore signifies a telephone that has Internet and/or information technology related features. The sign was descriptive not only for telephones, but also for computers, mp3-players, and software, because all these goods could process sound and have Internet-related features.
To persons familiar with the Swiss practice, the decision comes as no surprise. Just last week, the Federal Administrative Court has denied protection for i-Option for printers and scanners, using essentially the same reasoning. Also unsurprising is that Apple failed with its arguments that it should be treated equally, as there are many trade marks that are composed according to the pattern "i + generic English term" on the Swiss register, among them IDOCUMENT, IPROJECT, IDIARY, IFAST and I-SIGHT. However, the practice has changed, and the IPO is not barred from changing its practice.
Note that Apple has not, so far, claimed acquired distinctiveness.
Decision of 24 November 2009 (in German; not final - an appeal to the Federal Supreme Court is possible. Statistically, the Supreme Court has not once in the last ten years overruled the lower instances when they refused protection for a word mark).
MONDAY, 7 DECEMBER 2009 Use of SKODA as a keyword: infringement issue "unclear", says Danish Court
On 13 October 2009 the Danish Supreme Court rendered a decision concerning keyword advertising. After the question had been admitted to the Supreme Court by the Danish Board of Appeal Permission, the court refused to issue an injunction on the use of third party registered trade marks as adwords (in this case SKODA). Hanne Weywardt, partner in the Copenhagen office of MAQS Law Firm, reports that the appellant, HE-House A/S and HE-Biler, succeeded in having the High Court’s decision to issue an injunction overruled by the Supreme Court, which doubted whether the registration of a keyword was a “commercial use” of the trade mark belonging to Skandinavisk Motor Co. A/S (SMC).
The judges considered the meaning of Article 6 of the EU Trade Mark Directive unclear with regard to the use of third party trade marks as adwords – an issue which is currently pending before the Court of Justice of the European Union. Consequently the Court found that it was not shown to be likely that HE-House infringed SMC’s trade marks. Thus the conditions of the Danish Code of Civil Procedure section 642, no.1, were not met and the injunction previously affirmed by the High Court could not be upheld.
Terms of Use:
The material included on this site is provided for information purposes only, and we make no representations or warranties as to its accuracy. It
does not represent legal advice. Before relying on this material, you should take care to verify its accuracy, taking professional advice as appropriate.
[Please click here for the full Terms and Conditions of Use]
0 comments: 
Subscribe in a reader