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WEDNESDAY, 3 FEBRUARY 2010
The mother of all UDRP complaints?
 Inter-Continental Hotels Corporation and Six Continents Hotels, Inc. requested the transfer of no less than 1,542 domain names in a single UDRP complaint brought against respondent Daniel Kirchhof. They alleged infringement of their HOLIDAY INN, HOLIDAY EXPRESS, INTERCONTINTAL, CROWNE PLAZA, STAYBRIDGE SUITES, HOTEL INDIGO, and CANDLEWOOD SUITES brands. The defendant had registered numerous - now that's an understatement - domain names with the pattern "BRAND-PLACE NAME"; e.g. "holiday-inn-london-stansted.com".
The respondent's domain names pointed to the booking engine www.hotelreservation.com, and the respondent collected affiliate fees for referrals. As the panelist noted, "When arriving at the Respondent’s websites, Internet users were likely to believe that they had arrived at the official website for one of the Complainant’s hotels, as that is the clear impression given by the website content. As the websites provide a mechanism for booking at the hotel (albeit through another provider), the Complainant is likely to suffer commercial loss when an Internet user books through the Respondent’s website when compared with a booking directly on one of the Complainant’s websites." Unsurprisingly, the panelist was convinced that Daniel Kirchhoff had both registered and used these domain names in bad faith.
The case is legally interesting because the complaint was brought in the name of two complainants, and the UDRP does not specifically provide for multiple-complainant complaints. The panelist held that a complaint could be brought by multiple complainants if the complainants "have a common legal interest and/or have been the target of common conduct by the Respondent":
The Complainants submit that this is an appropriate case for multiple complainants, because both Parties have a common legal interest and/or have been the target of common conduct by the Respondent. Although they are strictly separate entities, both Complainants are members of the same corporate group (InterContinental Hotels Group, “IHG”) and therefore have a common legal interest.
Further, the large number of disputed domain names are all very similar in structure and format, and the websites to which they resolve appear to be derived from the same template, meaning that each Complainant’s case against the Respondent is almost identical in nature. The Respondent’s conduct in relation to the majority of the disputed domain names has been consistent regardless of the Complainant involved. Additionally, there is only one registrar for all the disputed domain names.
The Panel therefore concludes that the inclusion of multiple complainants in this case is acceptable. There is clearly a common grievance on the part of both Complainants, and despite the extremely large and unprecedented number of disputed domain names, it would be procedurally efficient to deal with all matters in the one proceeding given the almost identical facts among them.
In the end, 1,519 of the concerned domain names were transferred, in 10 cases, the transfer was denied and 13 domain names had been cancelled before the decision.
Posted by: Mark Schweizer @ 08.11
Tags: udrp, |
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TUESDAY, 2 FEBRUARY 2010
Poland: GESTROL is not always similar to GESTROLTEX
On 4 February 2004, the Polish company Przedsiębiorstwo Farmaceutyczne LEK-AM Sp. z o.o. from Zakroczym filed to the Polish Patent Office (PPO) a trademark application for word sign GESTROL Z-275787 for the goods in class 5, cancer drugs. In a decision of 11 April 2008 the PPO refused to grant the right of protection. The PPO found that GESTROL is similar to the earlier registered trade mark (with priority date of 6 February 2003) - GESTROLTEX R-192945 registered for BIOTON S.A. from Warsaw, for goods in class 5, pharmaceutical preparations. Article 132(2)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law - IPL - (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, served as the basis for the decision to refuse to grant a right of protection.
2. A right of protection for a trademark shall not be granted, if the trademark:
(...)
(ii) is identical or similar to a trademark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark,
LEK-AM filed a request for re-examination of the matter. The company argued that the sign applied for is intended to mark the anticancer drug. The active substance in this preparation is a chemical compound of the generic name (INN) megestrol. Under the decision of the Polish Minister of Health, GESTROL as a medicinal product received authorization for marketing. The Minister of Health has not found confusing similarity between GESTROL and GESTROLTEX. LEK-AM pointed out that both trade marks will be identified in the course of the highly specialized medical personnel. The PPO rejected the request and LEK-AM filed a complaint before the Voivodeship Administrative Court (VAC) in Warsaw.
The Court in a judgment of 12 October 2009, case act signature VI SA/Wa 844/09, ruled that the recipient, to whom the association between the marks GESTROL and GESTROLTEX may arise, is not only a person who is reasonably well informed and reasonably observant and circumspect, but it is also a person with high qualifications. Anticancer drugs are not bought and ordained without the intermediary of a doctor. For this reason, evaluation of other state administrative body, namely the Office for Registration of Medicinal Products, Medical Devices and Biocides and it is the ORMP who sets procedures and requirements for registration of signs for medicinal products, must be considered not only as a medical evaluation of the effects of the medication but also as the situation where the ORMP does not allow for the existence of two medicinal products with the same or similar name, which would prevent the identification of the product and the source of its origin at the medicinal products market. Of course, the court agreed with the PPO's argument that the registration of the name of the medicinal product in the Office for Registration of Medicinal Products, Medical Devices and Biocidal Products at the Ministry of Health does not create an individual right to a specific drug name. Such a right exists from the time the right of protection for trademark is granted the IPL. It was obvious that the trade mark examination/registration proceedings before the PPO are independent of the proceedings before the ORMP, but it must be borne in mind that the earlier findings of one of the official bodies of Polish state cannot be neglected by another official body.
The VAC came to the conclusion that the contested decision of the PPO did not comply with the requirements of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments. According to article 107 §3 of the APC, the reasons for the administrative decision should include in particular: facts that the PPO considered proven, the evidence on which it relied and the reasons why the credibility of other evidence were denied the probative value, and the legal justification for the decision should be explain the legal basis for the decision, quoting the law. The VAC held the Polish Patent Office has not give sufficient reasons for, why it has refused to grant protection for a GESTROL trade mark.
The VAC annulled both contested decisions, and ruled them unenforceable. This judgment is not yet final. The parties may file a cassation complaint to the Supreme Administrative Court.
Posted by: Tomasz Rychlicki @ 11.58
Tags: Polish Minister of Health, Polish Patent Office, medicinal product, pharmaceutical trade marks, Voivodeship Administrative Court, Office for Registration of Medicinal Products, Medical Devices and Biocides, similarity of signs, average consumer, |
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SUNDAY, 31 JANUARY 2010
Du Pareil au même fails to ensure trade mark protection against Zara France
 The well-known French company Du Pareil au même (DPAM) failed to ensure protection for its trade mark “86” in a case pending before the French Supreme Court against Zara France.
This latter company had been sued by DPAM for having sold tank tops bearing the “86” trade mark.
In a previous phase of the civil proceedings, the Paris Court of Appeal had established that Zara France was not liable of infringement and parasitism, since DPMA’s “86” trade mark had expired because of lack of “serious” use by the owner for more than five years.
DPAM challenged this decision before the French Supreme Court, arguing that the sign “86” was actually used on clothes in the relevant period. DPAM conceded that the sign “86” was embellished with different designs, or deconstructed in its representation, or accompanied by designations such as “Baby”, Motocross”, “RW86”, “DP 86”, “Lucky”.
In DPAM’s view such use qualified as a use in a modified form suitable to keep the trade mark alive. The French Supreme Court, however, noted that in its opinion the different versions of the sign “86” operated by DPAM could not qualify as “a modified form of the sign which does not alter its distinctive character”, and that the relevant public – by perceiving such forms only as decorative patterns – would not establish a connection with the registered trade mark.
For these reasons the Supreme Court, dismissing DPAM’s petition, established that DPAM’s “86” trade mark should be removed (Arrêt 15 December 2009).
Note kindly supplied by Cristiano Cori (GE). Full text of the decision here.
Posted by: Jeremy Phillips @ 23.35
Tags: France, validity, use in form other than that of registration, |
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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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