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  Christian Louboutin: there is no business like (fake) shoe business...      Butter: not that unique...      Pigs and protection: Old Spots get the TSG treatment...      Poland: observations, oppositions, invalidations - who's the party?...      A brief update on Paul ...      German Federal Patent Court: ALLFAcolor v ALPHA...      Spain reduces penal sanctions in the hope of more condemnatory orders...      Finland: Conflict between trademark and name of a rock band...      Spain - Fighting the pirates. Year 2009 in numbers....      Buffalo by-product goes all the 'whey' to protection...     
 
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Class 46 - for your European trade mark news
 

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.
 
  MONDAY, 21 DECEMBER 2009
Latest ETMR now published
The January 2010 issue of Sweet & Maxwell's monthly European Trade Mark Reports is already published. Cases reported in this issue include the decision of the Brussels, Belgium Court of Appeal in eBay International, eBay Europe Sarl and eBay Belgium v The Polo/Lauren Company (a decision on whether the use of the RALPH LAUREN and POLO SPORT trade marks as search engine terms was a use affecting the essential function of those marks) and the fascinating decision of the Court of First Instance in Case T-140/08 Ferrero SpA v OHIM, Tirol Milch, on the extent of applicability of the doctrine of res judicata in Community trade mark law.

Posted by: Jeremy Phillips @ 19.02 
Tags: ETMR,

 

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  MONDAY, 21 DECEMBER 2009
Christmas magic from the German Federal Patent Court: "Weihnachts-Zauber“

Christmas magic from the German Federal Patent Court:  the court recently had to decide on the registrability of the mark "Weihnachts-Zauber“ (in English: Christmas Magic) covering chocolate confectionary in class 30.  The German Patent and Trademark Office (DPMA) had refused to register the mark due to a lack of distinctiveness.  The applicant appealed to the Federal Patent Court.

 

In its court order of 29 October 2009 (case reference: 25 W (pat) 72/09) the Federal judges agreed with the DPMA's view and found the term "Weihnachts-Zauber“ was first and foremost descriptive of the specific atmosphere and vibrancy of Christmas markets and other Christmas related events.  Even though the term was not included in any dictionary and not directly descriptive of goods made of chocolate, it was nonetheless lacking the necessary distinctiveness.  The court found that the term had at least a close descriptiveness connection to goods made of chocolate which were attached to the topic of Christmas through specific products.  As such, the the mark "Weihnachts-Zauber“ could not be regarded as an unusual or uncommon word creation.  The consumer would not see the mark as a designation of trade origin but regard it as a common laudatory term which relates to characteristics which are typical of Christmas, such as specific flavours or packaging of the chocolate.

 

The court order can be retrieved by clicking here.

Posted by: Birgit Clark @ 13.30 
Tags:

 

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  SUNDAY, 20 DECEMBER 2009
Can counterfeits enhance brand loyalty?

 

A vigilant friend of Class 46 and IP scholar, Nikos Volanis, sent him an interesting read, published here and here. According to unpublished research by Renee Richardson Gosline, assistant professor of marketing at MIT’s Sloan School of Management, buying counterfeits may be valuable to brand loyalty! Gosline interviewed 100 consumers that had knowingly bought counterfeit prestigious label bags and found that almost half of them (46%) bought the real thing within two and a half  years.  Interviewed by Bloomberg, Gosline said “The counterfeit actually served as a placebo for brand attachment. People were becoming increasingly attached to the real brand even though they never possessed it at all.”    


Posted by: Nikos Prentoulis @ 22.51 
Tags: counterfeit, brand loyalty, research, bags,

 

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  FRIDAY, 18 DECEMBER 2009
The battle of TSGs
The Polish newspaper Rzeczpospolita reports on a possible conflict between Poland and Czech with regard to protection of smoked sausages.

Polish meat producers seek to protect two types of sausages as the Traditional Speciality Guaranteed (TSG) - Kabanosy and Kiełbasa myśliwska, and as we learn from Europa’s website this designation does not refer to an origin, but highlights the traditional composition or means of production of the product.

(image of Kabanos courtesy of Wikipedia - licensed under the Creative Commons Attribution ShareAlike 3.0


Rzeczpospolita is almost certain and shares this opinion in its article that the Czech Government have lodged objections in Brussels to the Polish applications. The Czech Ministry of Agriculture was called for such action by the Czech meat industry. As Rzeczpospolita informs Czech daily newspaper "Lidove Noviny" accused Poland of lie, arguing that Kabanosy and Kiełbasa Myśliwska products are not only from Poland, but they were also produced in the area of former Czechoslovakia. Journalists of "Lidove Noviny" were afraid that the registration will prevent the Czechs in the production of these sausages.

Posted by: Tomasz Rychlicki @ 14.28 
Tags: TSGs, Kabanos, Kiełbasa Mysliwska,

 

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  FRIDAY, 18 DECEMBER 2009
Greece - Careful with health claims for children food products, says the Greek Communication Review Board

 

In two recent decisions, the Greek Communication Review Board (SEE), the self-regulatory authority set up by the advertising industry, reminded us all of the caution that needs to be exercised in the use of health and nutrition claims when  advertising food products , particularly when such products are addressed to children.

 

SEE reviewed a series of promotional activities of CRETA FARM, a well known Greek manufacturer of packaged deli meat products, including health claims as to children obesity, on the main basis that animal fat is being replaced by olive oil in the preparation of the products. SEE held that certain references to a recommendation by the Greek Pediatric Association and its direct link to the products advertised was likely to mislead consumers into thinking that consumption of the company’s products could help prevent children obesity.  The Board stressed that since, a) children obesity is a medical disease, b) the said products and advertising campaign were addressed to children, and c) no scientific proof of the effectiveness of such products to the prevention of children obesity existed, the advertising campaign should be revised.

 

The decisions in Greek are here and here. A relevant CNN story on Creta Farm products here. Creta Farm’s tv spots (not including the said health claims) here

 

Posted by: Nikos Prentoulis @ 12.19 
Tags: Greece, SEE, Communication Review Board, advertisement, deli meat products, creta farm, health, children ,

 

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  FRIDAY, 18 DECEMBER 2009
Italy scores three more PDOs

Italy has just received confirmation of the protection of three more geographical appellations as Protected Designations of Origin.   They are:

* Marrone di Caprese Michelangelo: Commission Regulation (EU) No 1237/2009 of 11 December 2009 (this chestnut is depicted on the right);

* Pomodorino del Piennolo del Vesuvio: Commission Regulation (EU) No 1238/2009 of 11 December 2009 (the products so designated are fascinating little cherry tomatoes);

* Crudo di Cuneo: Commission Regulation (EU) No 1239/2009 of 15 December 2009, this being a cured ham product.

Posted by: Jeremy Phillips @ 08.24 
Tags: PDOs,

 

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  THURSDAY, 17 DECEMBER 2009
OHIM, WIPO sign Understanding on Classification Synergies
MARQUES members might want to consider a document signed earlier this month by OHIM and WIPO, "Common Understanding on Synergies between WIPO and OHIM in trade mark classification". This document reads as follows:

"Introduction

In the context of the administration of the Madrid System, WIPO is aiming to increase the contents of its Madrid System goods and services database in various languages to a minimum of 30,000 indications and make it available online by October 2010.

OHIM has databases in 22 languages which will contain around 100.000 indications per language.

WIPO is taking an active part in the Euroclass project run by OHIM. Euroclass is an online tool which contains official and approved lists of goods and services. This tool allows users to search for goods or services and their correct classification in the databases of the participating offices.

OHIM and the UK IP Office have established a single common list of goods and services. Other offices, such as those of Sweden and Germany, have joined the project.

Common goals

In an effort to provide global users with easy and standardised access to trade mark procedures, and in view of the daily importance of classification issues in this respect, both organisations wish to consider the possibility of agreeing on a list of indications of goods and services acceptable to both organisations, in as many languages as feasible and required.

Both organisations believe that other offices around the world may take an interest in participating in an effort towards establishing a global database of acceptable indications.

Commitments and time-frame

Both organizations are willing to undertake the following steps:

Short Term (2010)

1. The International Bureau of WIPO will actively support the efforts undertaken by OHIM to establish and implement a new vision on EU harmonisation of classification of goods and services in the form of a common database shared by OHIM, the UK, Sweden, Germany and other offices that wish to join in.

2. WIPO, in its capacity as administrator of the International “Nice” Classification of Goods and Services, will be available to play the role of arbiter in case of a disagreement as regards the correct classification of a new term during the implementation of the EU harmonised database project.

3. The International Bureau of WIPO and OHIM will mutually exchange their respective English-version databases of goods and services no later than January 2010. Upon request, they will also facilitate each others efforts to supplement the contents of those databases in other OHIM and Madrid System working languages, when available,

4. Three months later, the International Bureau of WIPO and OHIM will initiate work towards agreeing on a list of classified indications of goods and services that are accepted by both organizations under the Madrid system and the CTM procedures, respectively.

5. In the course of 2010, the International Bureau of WIPO and OHIM will cooperate in order to plan and execute a project that would make available to interested applicants an electronic filing facility for the filing of international applications based on Community Trade Mark applications or registrations.

Long Term (2011 – 2012)

6. OHIM supports WIPO piloting a “global database” initiative among its members to establish a database of classified indications of goods and services that can be accepted by as many offices as possible. This database will have a workflow to handle the integration of goods and services terms not yet included in the database. OHIM would contribute to this initiative through the EU harmonised database. The added value of such an initiative would constitute a major contribution to the establishment of global IP infrastructure.

7. OHIM and WIPO would support the idea that trademark offices exploit such global database as a basis for current and future e-filing systems, in order to mininise formal classification problems during the transfer of trademark application data from the front office to the back office systems of participating IP offices.

Transparency

Both organisations will inform their respective members and partners about this understanding. For this purpose, both organisations will explain this in their respective fora".

Class 46 welcomes the constructive and cooperative approach taken by the two organisations and expresses the hope that the good intentions expressed in this Understanding will bear fruit that will benefit the trade mark community.

Posted by: Jeremy Phillips @ 18.57 
Tags: classification, WIPO-OHIM cooperation,

 

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Birgit Clark
Edith Van den Eede
Frédéric Glaize
Gino Van Roeyen
Ignacio Marques
Jeremy Phillips
Johanna Kauhanen
Mark Schweizer
Nikos Prentoulis
Tomasz Rychlicki

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The Class 46 archive


+ 2010
- 2009
     - December (44)
Spain - Court donates fakes to an NGO.
Greece - "skodo" creates a link with SKODA and not in a nice manners says the Greek Communication Review Board
SNOWSPORT
Russia: burgerking.RU does not belong to the famous burger chain
Spain – Want to recover your domain name? Do not go to Court.
An interesting article on IP, private international law and contributory infringmement cases
Latest ETMR now published
Christmas magic from the German Federal Patent Court: "Weihnachts-Zauber“
Can counterfeits enhance brand loyalty?
The battle of TSGs
Greece - Careful with health claims for children food products, says the Greek Communication Review Board
Italy scores three more PDOs
OHIM, WIPO sign Understanding on Classification Synergies
Latest batch of geographical indications approved
Russia: pledging stars
Advert for a “Christmassy deal”? Only if you pay 300,000 roubles first...
Ukrainian Higher Economic Court denies Ferrero’s claim on Raffaello trade mark infringement
PDO inspection costs "too high" for HÖLLEN SPRUDEL
The beer name no-one wants to protect
Spain - A branding miracle: from bullring to shop windows.
Lavazza to Nespresso: we were in heaven first
Liechtenstein signs up for Singapore
Not yet effortless, but at least a bit more paperless
New logo for Euro 2012
General Court: opposition and revocation proceedings are independent of each other
New practice notice on evidential value of UK correspondence
Consumer error need not be proved in criminal proceedings for online sales, says Barcelona appeal court
ICANN saves some trees
Spain – Leo Messi, from world player number one to brand.
Switzerland: iPhone is descriptive, no trade mark
Use of SKODA as a keyword: infringement issue "unclear", says Danish Court
"Global" infringer sent to jail
Switzerland: SINO is for China
(Almost) anyone v Iranian Tobacco Co was possible
On Little Black Horse in Shield on Red Background – Ferrari Successful as Milan Court Upholds Infringement Claims.
Spain - Court cancels a Spanish trade mark for "D10R".
Poland: bad faith in trade mark applications
VOLVO dissolves SOLVO
DPMA: IP Awareness and Enforcement conference - downloadable speakers' notes
Switzerland: not discriminating against MINARETT trade marks
Poland: reclaim the windows – the saga continues
Finland: The City of Turnip
Cheap, cheaper, Czech: CAC to offer UDRP proceedings for EUR 500
Genuine use of the earlier mark: COLORIS of 2003 v COLORIS of 1998
     + November (55)
     + October (49)
     + September (48)
     + August (39)
     + July (54)
     + June (54)
     + May (55)
     + April (54)
     + March (57)
     + February (48)
     + January (61)
+ 2008
+ 2007

 
 

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