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, 19 JANUARY 2010 Polish court rules on trade mark use
EMO-FARM Spółka z o.o., the owner of the "A sio !" R-173579 trade mark, filed the opposition to a final decision of the Polish Patent Office on the grant of a right of protection to SI R-184885 trade mark applied for by Przedsiębiorstwo Farmaceutyczne ZIOŁOLEK sp. z o.o. The dispute between these two companies concerned inter alia the issue of trade mark use.The Voivodeship Administrative Court (VAC) in a judgment of 9 October 2009, case act signature VI SA/Wa 1033/09 provided the interpretation of adequate provisions of the Polish Act of 30 June 2000 on Industrial Property Law – IPL.
The Court ruled that, under the conditions set in the IPL, the trade mark use occurs when it is real, which means that the sign is used for goods and it is used in business transactions in a manner that enables the creation and persistence of the association between the sign and the product, it is unambiguous, which means as the trade mark use, at least in its primary function, i.e., to distinguish goods of the entitled person on the basis of their origin and it is used according to specialization. These abovementioned conditions must be met together, irrespectively of the form of the trade mark use. Their sum is beyond the pale of article 154 of the IPL which contains only a list of examples of trade mark use:
The use of a trademark shall, in particular, consist of: (i) affixing the trademark to the goods covered by the right of protection or to the packaging thereof, offering and putting the goods on the market, importing or exporting thereof, or their storing for the purpose of offering and putting on the market, as well as offering or providing services under that trademark, (ii) using the trademark on business documents handled in putting the goods on the market or in rendering services, (iii) using the trademark in advertising.
TUESDAY, 19 JANUARY 2010 Does the ICC Code on Advertising and Marketing lack a sense of humour?
Mars, owner of the Snickers brand, is running an advertising campaign based on the über-macho Mr. T from the A-Team TV series. The campaign is based on a tongue-in-cheek challenge to the male consumers' manhood. The international website for the campaign can be found here http://www.getsomenuts.tv/ . Whether this site is in all details identical with the Swiss site judged below is not entirely clear because the Swiss site is not accessible anymore, for reasons that will become apparent.
The Swiss self governing body of the advertising industry, the Lauterkeitskommission, has ruled in a decision published this January that the campaign violates the International Chamber of Commerce's Code on Advertising and Marketing Communication Practice (ICC Code). Art. 18 of the ICC Code reads, under the heading "social values":
Marketing communication should not suggest that possession or use of the promoted product will give a child or young person physical, psychological or social advantages over other children or young people, or that not possessing the product will have the opposite effect.
The Lauterkeitskommission held that the Snickers campaign was directed at kids and young persons - so much is pretty clear. It then held that the campaign suggested that possession of the goods - we are talking about a chocolate bar here - made the owner more manly and stronger. This was a violation of the above cited provision of the ICC Code and made the campaign unfair under the practice of the Lauterkeitskommission.
Given the very tongue-in-cheek nature of the campaign, this blogger wonders whether the campaign should not have been judged with "humour mode enabled". He also wonders whether not just about any advertising is aimed at creating the impression that one gets a physical, psychological or social advantage from possession of the goods. Isn't that at the heart of any image advertising that goes beyond merely listing the product characteristics?
MONDAY, 18 JANUARY 2010 Greece - The industry organizes seminar on counterfeiting in Thessaloniki
It is always nice to see industry associations addressing counterfeiting issues. This Thursday January 21, 2010, in Thessaloniki, the Federation of Federation of Industries of Northern Greece (FING), together with the Greek Industrial Property Organization (OBI) (namely the Greek Patent Office) host an interesting (and free) seminar on how to tackle counterfeiting. According to a statement of FING’s president, Mr Nikolaos Pentzos, in the Greek daily newspaper Eleftherotypia, the rise of counterfeiting activity that is hitting customs authorities the last two years is alarming. Counterfeiting, says Mr Pentzos mainly involves pharmaceutical products, food and beverage, apparel, cigarettes, software, toys and electronic equipment.
The seminar will not be restricted to patent infringement, but will also address copyright and trade mark infringement issues. As far as trade marks are concerned, this Class46 member is happy to see, among the distinguished speakers of the seminar, Ms Georgopoulou, lawyer at the General Secretariat of Commerce (which includes the Greek Trade Mark Office), because IP politics and public awareness in Greece usually stop at the word copyright.
SUNDAY, 17 JANUARY 2010 BGH rules in the Opel/Autec toy car case
The German Federal Supreme Court (BGH) has now handed down its decision in the Opel replica car decision (case reference I ZR 88/08 – Opel-Blitz II of 14 January 2010). The court of first instance, the Regional Court Nürnberg-Fürth, had referred this matter to the ECJ for a preliminary ruling which led to the ECJ's decision in Adam Opel/Autec (C-48/05).
While the full decision is not yet available, the BGH has published a press release concerning this case (press release No. 9/10 of 15 January 2010). As final court of appeal, the BGH has now decided that a car manufacturer cannot rely on its trade marks rights in order to prevent the distribution of toy model cars that are scale models of the original cars bearing the original car manufacturer's trade mark on the relevant space. The BHG found that such use did not affect the main function of the mark, which is indicating the trade origin of the goods (here: toy cars), nor did this use affect any other functions of the trade mark because the relevant consumer would merely regard the logo device affixed on the defendant's model car as an exact copy of the mark that the original car had affixed on exactly the same space. Consequently, the mark would only be seen as a reproduction of a detail of the original car. The court stressed that the relevant consumers would not regard it as a reference to the trade origin of the toy car.
For the BGH's press release please click here (in German). To read a more detailed summary of this decision on the IPKat blog, please click here.
FRIDAY, 15 JANUARY 2010 Czechs keep cheese GI, to disappointment of Slovakia Commission Regulation 24/2010 of 13 January 2010 entering a name in the register of protected designations of origin and protected geographical indications [Jihočeská Niva (PGI)] was published yesterday on the website of the Official Journal of the European Union. The appellation Jihočeská Niva applies to a blue cheese which has been in dispute between the Czech Republic (which the Commission has ruled to be the rightful custodian of the name) and neighbouring Slovakia.
THURSDAY, 14 JANUARY 2010 OHIM contribution to Commission study on European trade mark system now available
On its website the OHIM has now published its
"... contribution to the European Commission's study on the overall functioning of the trade mark system in Europe is now available on the website. The OHIM paper proposes a number of changes in the basic regulations covering the Community trade mark, in order to take account of the growth in online services and the realities of doing business in the 21st Century.
There are also proposals designed to improve the governance of OHIM, and deal with future fee adjustments and the office's substantial accumulated surplus. In addition, the paper discusses the issues of "genuine use" of trade marks, and coexistence and cooperation with national trade mark offices."
The European Commission study into the working of the European trade mark system follows a request by the Council of Ministers in 2007. The Max Planck Institute in Munich, Germany, was contracted to carry out the study in October last year 2009.
To read the OHIM contributions, please click here (38 pages, PDF). Well worth a read!
THURSDAY, 14 JANUARY 2010 Switzerland: registration in bad faith no argument in opposition proceedings Swiss watch manufacturer Golay Spierer SA sought to register its name Golay Spierer as a trade mark. It faced an opposition based on an older trade mark GOLAY. Golay Spierer argued that this was a "defensive" mark, registered without intent to use merely to block its registration of Golay Spierer.
The Federal Administrative Court ruled that this argument cannot be heard in opposition proceedings. Abuse of right was an absolute ground for refusal. The argument was to be heard only before a civil court, in civil proceedings on the merits.
The opposition was subsequently admitted and the trade mark Golay Spierer revoked.
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