In a decision dated 11 December 2009, the Swiss Federal Administrative Court held that SNOWSPORT cannot be protected as trade mark for tires (applicant was Pirelli), because the sign indicated the potential use of tires - tires suitable for sporty driving on snow. The applicant argued in vain that SNOWSPORT is usually understood as skiing, snowboarding, sledding, snow-show walking and the like, but not driving a car on snow - particulary since there are no rallies in Switzerland. The decision, which comes as no surprise in view of the Swiss case law, can be found here (in German).

However, the real reason for this post was not this (fairly unremarkable) decision. Rather, it serves as a hook to wish all the readers of Class46 a Merry Christmas and a Happy New Year, and hopefully, some SNOWSPORT over the holidays - of the kind the term usually indicates (although, I wouldn't mind racing a souped up Mitsubishi across finish woods, either).

Very beautiful image of the Matterhorn and Venus by Problemkind, Creative Commons licensed, link leads to higher resolution image.

Burger King have launched a legal action over the registration of the domain name burgerking.ru against Talco Aktiengesellschaft (Netherlands) and Elvis-Telecom. The former has been the right holder of the domain name since 2000, when it was registered by Elvis-Telecom. Burger King, who had planned to open their first restaurant in Moscow in December 2009, are suing for unlawful use of the trade mark and claiming for a relief under the category of a “protection of patented rights”.

Although cyber squatters are frequently successful in obtaining large sums of money for the sale of a registered domain name to the owner of the relevant trade mark, they may deeply regret the registration of burgerking.ru in the year 2000.  Part 4 of the Russian Civil Code (in force as of 1 January 2008) provides that a right holder has an exclusive right to use a web address corresponding with the trade name. According to the database of Rospatent, Burger King registered their first trade mark in Russia in 1994 and have, therefore, become able to benefit from the above right. Moreover, they may obtain compensation up to 5 million roubles (€1177452/ $1688345).

Text of the original article can be found here (in Russian)

“…, actions premised on secondary liability are rapidly becoming the favored route for efficient enforcement. These actions permit rights holders to focus their attention on “deep pockets,” save them the trouble of suing individual end-users (who may also happen to be their customers), and can provide a simple mechanism for obtaining world wide injunctive relief. Examples include cases that attempt to impose liability on manufacturers of copying technologies for infringements caused by those who use their equipment; on purveyors of peer-to-peer file sharing software for the activities of those who download material without rightholders’ permissions; on internet service providers for subscribers’s infringing postings; and on other intermediaries, such as auction sites”

Of course, the variety of legal regimes and doctrines in the neighbourhood of secondary liability around the world do not facilitate research (that’s why it’s so interesting). The authors correctly point out that  

“Addressing questions of choice of law in cases of secondary liability runs headlong into what conflicts scholars would call the challenge of characterization (or, in some countries, “qualification”): when does a case involve "secondary liability"? This is an ever-present dilemma for private international law. But it is particularly acute in this context. Different countries use a variety of labels to denominate the different forms of secondary liability that exist. Indeed, courts in some countries do not characterize potential liability as "secondary," but rather talk of liability flowing directly from a failure to do certain acts (such as implement measures or engage in monitoring or supervision). See, e.g., LVMH v. eBay, Tribunal de commerce [T.C.P.] [court of trade] Paris, June 30, 2008…”

A very interesting read no doubt (perhaps not for Christmas, though!).