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.
FRIDAY, 5 FEBRUARY 2010 The Transformers take over the General Court: ENERCON confusingly similar to TRANSFORMERS ENERGON
In its judgment delivered on February
3, 2010, in case T-472/07, the General Court upheld OHIM’s Opposition Division
and Board of Appeal decisions refusing the registration as a CTM of the word
ENERCON. The mark was filed in 2003 by Enercon Gmbh, in connection with goods
in, inter alia, Classes 16, 18, 24, 25, 28 and 32, but was rejected following an
opposition by Hasbro Inc. Hasbro claimed likelihood of confusion with its
earlier word CTM “TRANSFORMERS ENERGON” in connection with identical products
in the very same classes. The juicy bit of the General Court’s judgment reads:
28 In the context of
consideration of the likelihood of confusion, assessment of the similarity
between two marks means more than taking just one component of a composite
trade mark and comparing it with another mark. On the contrary, the comparison
must be made by examining each of the marks in question as a whole, which does
not mean that the overall impression conveyed to the relevant public by a
composite trade mark may not, in certain circumstances, be dominated by one or
more of its components (Case C-334/05 P OHIM v Shaker [2007] ECR
I‑4529, paragraph 41).
……………..
32 In this connection,
whilst it is true that the ‘transformers’ element is the first part of the sign
and is longer than the ‘energon’ element, the word ‘energon’ cannot be regarded
as playing only a marginal part in the overall impression produced by the
earlier mark. To the contrary, that element plays a significant part in the
overall impression produced by the earlier trade mark and consequently cannot
be ignored. As the Board of Appeal pointed out in paragraph 19 of the contested
decision, both of the elements of which the earlier mark consists are
distinctive in character, neither being more dominant or distinctive than the
other in the overall impression created by the earlier mark.
34 Furthermore, the
applicant cannot argue that the word ‘transformers’ is the dominant element of
the earlier trade mark because of the font and its larger size compared to that
of the ‘energon’ element in the way in which that trade mark is used. It must
be pointed out that the consideration of the similarity of the trade marks at
issue takes into account those marks as a whole, as they are registered or
applied for [something we tend to forget all too often]. A word mark is a mark consisting entirely of letters, of words or
of associations of words, written in printed characters in normal font, without
any specific graphic element. The protection which results from registration of
a word mark concerns the word mentioned in the application for registration and
not the specific graphic or stylistic elements accompanying that mark (see, to
that effect, Case T-211/03 Faber Chimica v OHIM – Nabersa (Faber)
[2005] ECR II-1297, paragraphs 33 and 37; judgment of 13 February 2007 in Case
T-353/04 Ontex v OHIM – Curon Medical (CURON), not published in
the ECR, paragraph 74; and judgment of 22 May 2008 in Case T-254/06 Radio
Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the
ECR, paragraph 43). It is therefore not appropriate to take into account, for
the purposes of the consideration of the similarity between the trade marks at
issue, the font and size in which the ‘transformers’ element of the earlier
word sign may be presented.
With Greek case law in mind, this Class46 member thinks the outcome of the opposition might have been different in the aforementioned southern part of the Union.
FRIDAY, 5 FEBRUARY 2010 The "ONEL case" - more rumours
More rumours surrounding the ONEL case (see our earlier posts here and here). World Trademark Review yesterday reported that the "Onel mystery grows as complainant speaks out on controversial ruling" (citing MARQUES statement on the case "... BOIP opposition decision in question contradicts the uniform interpretation of the concept of genuine use in the EU") and today things seem appear to become even more intriguing with rumours circulating that BOIP director may have known undisclosed Onel facts (again reported in World Trademark Review).
What are our readers' views on this case? Is the ONEL case just a test of the CTM laws , as some suspect, or should such rumours prudently be ignored?
FRIDAY, 5 FEBRUARY 2010 Poland: information on licensing for Euro 2012 trade marks
Information for entrepreneurs interested in obtaining licenses for the official trade marks and industrial designs related to the Euro 2012 football tournament has been published at the website of PL.2012 - the coordinator and overseer of preparation undertakings for Euro 2012 in Poland. Unfortunately, the post is available only in Polish and there is a problem with dead links to PDF files with the licensing guidance. However, all inquiring persons may find other interesting media quide, prepared in a PDF file that was published by the UEFA.
THURSDAY, 4 FEBRUARY 2010 Worst UDRP decision of 2009?
The UDRP Wall of Shame has made it its mission to publicly criticize what they perceive to be the worst decisions by dispute resolution providers under the ICANN's Uniform Dispute Resolution Policy (UDRP). They shortlisted 10 nominees, out of which the attendees of the T.R.A.F.F.I.C. conference in Las Vegas - a conference for people trafficking in domain names - chose the "winner".
They chose WIPO's D2009-0036 - lomalinda.org/net as the worst UDRP decision in 2009. The panelist had transferred the domain name to a local hospital, although it is a geographical name, and, in the respondent's view, no trade mark rights can be established in a geographical name. The panelist argued that in this case, things were different, because
the city of Loma Linda derived its name from the hospital, not vice
versa:
Depending on the goods and services offered, as a general rule
geographic names may not be a proper basis for asserting trademark
rights. However, the current situation is highly unusual. The city of
Loma Linda was named after the long standing medical and educational
institutions which are the predecessors and affiliates of Complainants.
Therefore, the Panel finds that for purposes of this proceeding
secondary meaning does exist and is a viable basis for asserting
protectable common law rights in the LOMA LINDA Mark.
The facts were apparently as follows:
The city that is now called Loma Linda was first called Mound City.
Complainants trace their origin to 1905 when the Southern California
Conference of Seventh-Day Adventists opened the “Loma Linda
Sanitarium”. After 1908, the sanitarium included a post office in its
main building, indicating “Loma Linda” as the postal address for the
sanitarium’s community.
Loma Linda University began in 1906, originally called the Loma
Linda College of Evangelists. The Loma Linda Sanitarium and the college
were consolidated in 1910. The Seventh-Day Adventists also opened the
Loma Linda Hospital in 1913.
The City of Loma Linda was incorporated in 1970, sixty-five (65) years
after the predecessors of Complainants began using the name. In short,
the city was named after Complainants.
Now, whether the panelist's reasoning is convincing is a question I leave up to the reader. The more fundamental point is this: in 2009, WIPO and NAF, the dominant dispute resolution service providers under the UDRP, decided roughly 3,700 cases under the UDRP (about 9% less than 2008, btw). Now, when any dispute resolution provider, including a state court, decides this many cases, some errors will be made. You cannot successfully criticize the dispute resolution provider by pointing out a few wrongly decided cases. You need to show a pattern, which UDRP Wall of Shame fails to do.
THURSDAY, 4 FEBRUARY 2010 G-Star successful in Italy as Milan Court upholds protection for 'Elwood' and ‘Limit Regular’ jeans.
Legal Battles over Jeans Designs.
On 15 January 2010, the IP Chamber of the District Court of Milan issued a key decision, upholding G-Star’s claims for unfair competition in relation to G-Star’s ‘Elwood’ jeans model and finding infringement of registered Community Design of the ‘Limit Regular’ jeans model.
Background While the case brings to mind the Benetton/G- Star decision (ECJ C-371/06, in a case reference received from the Netherlands) which also related to the stitching and kneepads on the Elwood jeans, in Italy G-Star could not rely on any shape trade marks nor, for that matter, designs, for the Elwood jeans.
G-Star requested that the Court hold the defendants, trading under the Kruder trade mark, liable for unfair competition and for slavish imitation of the famous Elwood jeans as well as for parasitic activity based on the copying of a high number of G-Star items. In addition, G-Star also claimed infringement of its registered and unregistered community designs.
The Italian importer and retailer argued that the Elwood jeans did not have original character and that the addition of the defendants’ trade mark on the copycat jeans was in any event sufficient to avoid consumer confusion. The defendants further challenged the validity of G-Star registered - as well as unregistered - Community Designs.
Decision
The Milan Court held that the ‘Elwood’ model possessed the relevant, individualising characteristics such as the knee pieces, in addition to the stitching, and has original character. The Milan Court therefore made a finding of unfair competition for the slavish imitation of the distinctive shapes of the Elwood jeans but dismissed the claim for parasitic behaviour as well as unregistered designs infringement with reference to the other clothing, which, in the view of the Court lacked original features. In addition, the Court found that there was infringement in relation to the registered Community Design rights for the ‘Limit Regular’ jeans range.
This landmark decision condemns the copying of a fashion product, in particular the Elwood jeans, even though there are no registered trade marks or designs upon which to rely on. It recognizes that an act of unfair competition may result from imitation of an article of clothing, having original characteristics, and that such original characteristics may be found not only in haute couture products, but also in an item which is as simple as a pair of jeans.
In addition, with regard to the assessment of the compensation for damages, this case is of particular significance as, in its ruling, the Court adopted precise criteria for calculating damages, based on the infringer’s profits and G-Star was awarded damages in the region of approximately Euro 120,000. The Court also issued an injunction against further acts of infringement as well as a penalty of Euro 100 for each and every case of further infringement found on the market place and also ordered the publication of order in the mainstream Italian daily newspaper “Il Corriere della Sera” at the expense of the defendants. The defendant was further ordered to pay the costs of the proceedings.
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.
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.
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