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.
TUESDAY, 15 DECEMBER 2009 Lavazza to Nespresso: we were in heaven first
In the latest advertising campaign for Nespresso, George Clooney sits in heaven drinking coffee with John Malkovich as Saint Peter and two angels. Lavazza does not feel heavenly peace, however: the Italian coffee manufacturer claims the campaign is a blatant rip-off of its long-running campaign featuring a well-known Italian TV-host talking with Saint Peter about coffee. In heaven. It demands that Nestlé stop the campaign, "or else". Nestlé points out that heaven is not the exclusive realm of Lavazza.
TUESDAY, 15 DECEMBER 2009 Liechtenstein signs up for Singapore It's not often that Class 46 gets news of the tiny Principality of Liechtenstein, but we learn from the World Intellectual Property Organization, through Singapore Notification No. 20, that Liechtenstein has acceeded to the Singapore Treaty on the Law of Trademarks with effect from 3 March 2010.
TUESDAY, 15 DECEMBER 2009 Not yet effortless, but at least a bit more paperless
If you are fighting to retrieve or cancel a domain name on behalf of a client whose trade mark has been "captured" by it, here's a little good news. With effect from yesterday, the WIPO Arbitration and Mediation Center now provides what it calls "essentially paperless UDRP procedures". The new procedure removes the requirement for mandatory filing and notification of paper pleadings in WIPO cases filed under the Uniform Domain Name Dispute Resolution Policy (UDRP).
TUESDAY, 15 DECEMBER 2009 New logo for Euro 2012
Yesterday, football (and I do not want to be accused of "blasphemy" by WHITE SOX supporters so I have to add that it's "soccer" for our US readers) fans were given a chance to become brands' critics.
The official logo, visual identity and slogan for UEFA EURO 2012™ have been unveiled at a special event in Kyiv's Mykhailivska Square with co-hosts Ukraine and Poland looking forward to "Creating History Together".
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.
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