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SATURDAY, 30 JANUARY 2010
Apple in trade mark troubles over iPAD name?
  As the New York Times somewhat breathlessly reports, there are older IPAD trade marks! In class 9!
Yes there are - both the images here show "IPADs". The US trade mark owned by Fujitsu (US 76497338) was filed in 2003. It is registered for "HAND-HELD COMPUTING DEVICE FOR WIRELESS NETWORKING IN A RETAIL ENVIRONMENT" with first use claimed in 2002. The first part of the description certainly also fits Apples iPAD, but "in a retail environment"? Apples iPAD could be used in a retail environment, but certainly is not primarily aimed at that market I don't know enough about US trade mark law to judge whether that will be enough to argue similarity of goods - if any readers have opinions, please post them in the comments.
In Europe, CTM 1843937 is owned by the French (not Swiss, as the NYT reports) company STMicroelectronics for "integrated circuits, monolithic circuits assembly, filters against electromagnetic interferences, protections against electrostatic discharges, line terminations, termination resistors, all these products applied in particular to cellular telephones, computers and computer peripherals". According to STMicroelectronics's website, IPAD stands for "integrated passive and active devices" for signal processing. Applying the ECJ's Canon factors, I would say good luck with claiming that these goods are similar to the tablet computing device sold by Apple under the iPAD brand.
Posted by: Mark Schweizer @ 16.11
Tags: similarity of goods, canon,, |
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FRIDAY, 29 JANUARY 2010
'Genuine use': MARQUES speaks out
Since not all readers of Class 46 are MARQUES members, they may not yet know of that organisation's clear articulation of its criticism of the recent and controversial decision of the Benelux Office for Intellectual Property in ONEL/OMEL (transcript in English, here; discussed here and here on Class 46) that the use of a Community trade mark in a single EU Member State only was insufficient to constitute 'genuine use' upon which the proprietor of an earlier mark could rely in opposition proceedings.
MARQUES's statement is not yet posted on MARQUES website, but you can read the salient parts of it here.
Posted by: Jeremy Phillips @ 14.51
Tags: Genuine use, proof of use, |
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FRIDAY, 29 JANUARY 2010
Italian Data Protection Authority establishes illegality of publication of photographs taken in violation of privacy of actor, George Clooney
Newsletter No 333 of the Italian Data Protection Authority (“so-called Garante Privacy”) reports that on 22 December 2009 a decision was issued in favour of actor, George Clooney, stating that the actor’s privacy had been violated by the publication of pictures of the actor and his guests in the garden of his villa near Como lake.
The photographs, taken of people in the garden which is well protected by hedges and walls so as to intentionally obstruct visibility, were held to be taken through additional activity by the photographers concerned namely by pushing away part of a hedge. This, for obvious reasons, violated the reasonable expectation of intimacy and privacy, notwithstanding the fame of the people involved.
Other photographs taken from places normally providing some visibility onto the villa from the outside, e.g. the stairway accessing the villa or from a balcony nearby, including pictures of windows of the villa, were considered lawful since they were taken in places visible to the public or at least open to the public or, in any event, in places that, because of their position, can be seen by third parties.
As a result, the Authority established the unlawfulness of the photographs of the guests in the garden, and prohibited the further use or distribution of the same. The newspapers and magazines involved were also ordered to communicate the decision to any third party to whom the rights to the photographs had meanwhile been transferred and to inform the Authority of such communications by 30 January 2010.
Posted by: Edith Van den Eede @ 11.26
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THURSDAY, 28 JANUARY 2010
Spain - On well-known marks: size does matter.
So says the Spanish Supreme Court (Judgment no. 761/2009, of December 1), that has just confirmed a prior Judgment from the Barcelona Court of Appeals (IP Section) on the protection of well-known marks.
On the basis on its reputedly well-known mark, and invoking section 6 bis of the Paris Convention, the claimant sought the invalidity of a later Spanish trade mark consisting on the same sign.
While the Court of First Instance awarded the claim, the Court of Appeals found that the evidence on the alleged notoriety filed by the claimant was, to say the least, far of being impressive. It could be established that the reputedly well-known mark generated a total turnover of Euro 28,015 from years 1992 to 1996. Sales where only made to three hospitals, all seated in the province of Barcelona (the challenged mark covered class 5, basically pharmaceutical and medical devices).
To make things ever worse for the claimant, the defendant made its homework and brought to the case:
(i) a survey that revealed that just 2,4% of the inquired doctors acknowledged that they used products branded with the claimant’s mark,
(ii) an affidavit from the Spanish Surgical Association certifying that the claimant’s mark was not well-known and
(iii) certifications of different regional Chambers of Commerce stating the claimant’s mark could not be reputed as well-known.
With all these materials on the Judge's desk, it is difficult not to wonder how the Court of First Instance happened to render the claimant's mark well-known. Luckily enough for the defendant (and for the common sense, too) the decision of the First Instance was overturned by the Appeal Court, whose ruling has been recently confirmed by the Supreme Court.
Posted by: Ignacio Marques @ 16.59
Tags: Spain, well-known marks., |
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THURSDAY, 28 JANUARY 2010
Don't forget the Business and Consumer Regs
Speaking at the CLT Annual Intellectual Property conference this morning, Joel Smith (Herbert Smith) drew attention to the Consumer Protection from Unfair Trading Regulations and the Business Protection from Misleading Marketing Regulations of 2008. These UK provisions, which respectively implement Directive 2005/29 on Unfair Commercial Practices and Directive 2006/114 concerning misleading and comparative advertising, constitute the biggest change in consumer protection in the UK in 40 years and cover all forms of marketing and advertising, both on- and offline. Carrying substantial criminal sanctions, they address issues such as comparative advertising -- which generally involves the use of another's trade mark -- and should therefore be borne in mind when constructing an advertising and marketing policy.
Posted by: Jeremy Phillips @ 11.05
Tags: unfair competition, |
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WEDNESDAY, 27 JANUARY 2010
New IP laws for Bosnia?
 On 31 December 2009 the Council of Ministers of Bosnia and Herzegovina adopted seven draft laws in the field of intellectual property, proposed by the Institute for Intellectual Property of Bosnia and Herzegovina.
These include Draft Laws on Industrial Property, Trade Marks and on the Protection of Geographical Indications and Designations of Origin.
Bosnia currently has only one law on IP rights, the Law on Industrial Property, which entered into force on August 27, 2002. This law covers patents, trade marks, designs and geographical indications and designations of origin. The new proposal aims to make separate laws for each IP area, as part of Bosnia’s accession into the European Union and the harmonization of its legislation with the European Union.
The new draft laws are expected to be submitted to the Parliamentary Assembly of Bosnia and Herzegovina for further consideration in the near future.
Source: IP Newsletter of PETOSEVIC, from whom further information may be obtained
here
Posted by: Jeremy Phillips @ 22.14
Tags: Bosnia-Herzegovina, |
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WEDNESDAY, 27 JANUARY 2010
Onel vs Omel - OHIM strikes back and BOIP publishes English and French translations
 OHIM published an official statement on the Onel vs Omel decision on its website today (have a look here): 'A recent ruling by the Benelux Office for Intellectual Property (BOIP) has attracted controversy in IP discussion groups on the web. The Opposition Decision of 15 January 2010 (Leno Merken B.V./Hagelkruis Beheer bv) states that use of a CTM in one EU Member State (in the specific case, the Netherlands) is insufficient to constitute genuine use in the EU. This contradicts the Joint Statement of the Commission and the Council, which establishes that use of a Community trade mark within the meaning of Article 15 of the CTM Regulation in one EU Member State is sufficient to constitute genuine use in the EU.'
Pending any possible appeal of the BOIP Decision, OHIM - applying the principle of the unitary character of the CTM - continues to consider that boundaries of Member States should not play a part in assessing “genuine use” within the EU Single Market, as recently outlined in its contrbution to the European Commission study on the overall functioning of the trade mark system in Europe.'
In the meantime BOIP published non-official translations in English and French of the decision at its website (have a look here).
Time for some shuttle diplomacy?
Posted by: Gino Van Roeyen @ 15.42
Tags: CTM, Benelux, normal use, |
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