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.
SATURDAY, 6 MARCH 2010 Russia: Euroset in a battle for a free-ride
The application proceedings brought by Euroset (internet shop) were stayed by the Russian Arbitrage Court on 3 March due to the failure of the applicant to comply with some formalities. Euroset are attempting to apply against the refusal of ROSPatent to register a word mark HALYAVA ("халява") in Classes 18, 25, 32 and 33, which include leather products, clothing and beverages containing varying percentage of alcohol.
The actual word is a slang commonly used among young people and meaning "freebie" or "free ride". Getting something "na halyavu" (as a freebie) is seen as a great achievement by teenagers (mostly) because no effort was made and no money was paid to receive the benefit in question, be it a free cake at a canteen or a free cinema screening thanks to the inattentive ticket collector.
The ground for refusal was the negative meaning of the word and its contradiction to "the society's interests" as it promotes "satisfying one's needs on others' accounts". Euroset disputed this finding, saying that the word should be regarded as a "joke". Furthermore, they already own the mark in relation to products (such as fishing and publishing equipment) and services (such as insurance, telecommunication and scientific research).
Nevertheless, Euroset's arguments were rejected because of the immoral character of the word and its negative effects on the society as a whole. Interestingly enough, ROSPatent seems to consider it immoral to imply receiving drinks and shoes on another's account whilst advertising insurance and financial services under the same mark is acceptable.
SATURDAY, 6 MARCH 2010 Daimler gets a nastygram from Ferrari
In a commercial for its Smart car, Daimler shows a number of two-seater sport cars, among them a Lamborghini Gallardo, Porsche GT and a Ferrari Enzo. In the end, the Smart Four-Two is shown with the commentary: "Isn't it suprising that dream cars are always two-seaters?".
If the embedded video doesn't work, here is the link to Youtube.
Pretty harmless, you may think, but Ferrari - well known for aggressively enforcing its intellectual property rights - sent Daimler a letter demanding that Daimler stop showing the commercial. Daimler complied, noting that the campaign had ended anyway. And Marc Langenbrinck of Smart wrote to Ferrari announcing that he would produce another version of the commercial, replacing the Ferrari Enzo with a Mercedes SLS. In red. Yes, he really said that.
SATURDAY, 6 MARCH 2010 OHIM - latest updates to its Manual of Trade Mark Practice
Just before we all go home for the weekend, OHIM informed us of the latest changes in the Manual of Trade Mark Practice. In summary, the changes revolve around (a) the interruption of opposition proceedings in case of legal incapacity or decease of a party to the proceedings or its representative, and (b) the interpretation of the (rather long) notion of "real and effective industrial or commercial establishment" , with regard to international registrations.
FRIDAY, 5 MARCH 2010 Danes side with Benelux and the Hungarians on ONEL
A statement issued by the Danish Patent and Trademark Office a few minutes ago reads as follows:
"When assessing the functioning of the present European trademark system, one should look at the reasons why this system was created, and the considerations behind its establishment. The Council regulation on the Community trademark mentions that one of the purposes of the CTM is to promote throughout the Community a harmonious development of economic activities and a continuous and balanced expansion by completing an internal market which functions properly and offers conditions which are similar to those obtaining in a national market. This also shows that the EU Council has made a distinctly political decision that we should uphold two parallel trademark systems in Europe; one national and one regional access to trademark registration.
One could question of course to what extend a European trademark should be used and in how many countries such a use should be required. This is not an easy question to answer. However, it is the DKPTO’s point of view that use in a very limited part of the Community seems not to fulfill the purpose and the intentions of the European trademark regulation. On the other hand, it seems too restrictive to demand that the European trademark is used in all 27 member states. The answer must lie somewhere in the middle.
Furthermore, we should be aware that the rules and regulations must not create unfavorable market conditions, and they should certainly not lead to a distortion of competition. It is essential that a fine line is drawn between the grant of exclusive rights and the importance of having markets open to competition – on this point the DPKTO shares the view of the Benelux and Hungary.
Another aspect which could be mentioned in this context is that we see a tendency towards an increase in the number of registered trademarks, and it should of course be examined whether and if this poses a problem for the continued functioning of the European trademark system.
The DKPTO is therefore pleased that an extensive study conducted by the Max Planck Institute is in progress, and at this point we believe new initiatives should await the results of this scrutiny".
FRIDAY, 5 MARCH 2010 The second lap in race for Dakar
This is a sequel to a story that was reported by Class46 in a post entitled "Race for Dakar". In July 2009, the Polish Patent Office invalidated the right of protection for DAKAR R-174205 trade mark (registered for goods in classes 3, 27, 37), after considering the case on the basis of rich evidence supplied by both parties.
The PPO recognized inter alia the special nature of the opposed trade mark DAKAR IR-606861 (registered for goods in classes 4, 9, 12, 14, 16, 18, 21, 22, 24, 25, 26, 28, 30, 32, 34 and 41), which in addition to its traditional function of determining the origin of goods, is also the name of the famous rally raid. In explaining its position, the PPO used arguments on a function of a trade mark known as the "merchandising function" and cited D. Keeling, Intellectual Property Rights in EU Law: Free movement and competition law, Oxford, 2003. When examining the circumstances of the case, the PPO concluded that DAKAR IR-606861 trade mark is a reputed one. The PPO pointed to the existing methods for assessing the reputation - the absolute and relative. The first method takes primarily into account the percentage of a certain degree of knowledge of the trade mark on the market (as established by the Voivodeship Administrative Court in Warsaw in a judgment of 8 August 2007, case file VI SA/Wa 757/07). The relative method, in addition to knowledge of the trade mark, emphasizes other criteria, including market share in terms of quantity and value of goods sold, the scope and length of the advertising of the product marked with the sign, territorial and temporal scope of the use of the trade mark, licenses granted, the quality of the goods, the value of a sign in the assessment of independent financial institutions, the size of the expenditure incurred in connection with the promotion of the trade mark and the relationship to the price of substitute goods. Public opinion polls, prizes and awards, publications, press releases, rankings, reports, invoices and other business records, and various promotional materials can serve as evidence. The PPO cited the judgment of the COJ of 14 September 1999 in C 375/97, General Motors Corporation, the judgment of Supreme Administrative Court of 21 November 2006, case file II GSK 181/06 and the decision of OHIM of 25 April 2001 in case R 283/1999-3. See also Class46 post entitled "Poland: proving the fame of a trade mark".
When referring to the transfrontier nature of the reputation of a trade mark as adopted in the judgment of the VAC in Warsaw of 8 November 2005 case file VI SA/Wa 845/05 (VALENTINO) or in the judgment of the VAC of 13 March 2006, case file VI SA/Wa 1626/05 (LEXUS), the PPO found that the Paris-Dakar rally, although it takes place outside the Polish borders, has many fans, as evidenced by the data on viewing TV programs on the rally - from 550000 to over 1200000 people, which according to the PPO, proved a high popularity. When deciding on the unfair advantage, the Polish Patent Office found that in this case, the Polish company will be able to count on the positive reaction of customers without spending too much money on the promotions, because they will buy the goods by associating them with the sign of the French company and consequently with the rally organized by this company.
The Polish company DAKAR from Krasne filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in a jugment of 29 December 2009, case file VI SA/Wa 1938/09, ruled that the word Dakar also means the capital city of Senegal, and such argument escaped PPO's attention during the analysis of all the facts and evidence gathered. In this aspect this sign also fulfills political and economic role. Therefore, the name of Dakar has long been known as an exotic name of the city and it should not be attributed exclusively to one company.
The VAC anulled the Polish Patent Office’s decision and decided that the decision was not subject to execution. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.
FRIDAY, 5 MARCH 2010 Slovenia gets TSG protection for Belokranjska pogača The online Official Journal of the European Union carries the news of Commission Regulation 182/2010 of 3 March 2010 entering a name in the register of traditional specialities guaranteed (Belokranjska pogača (TSG)). This Regulation confers protection, in the class for "confectionery, bread, pastry, cakes, biscuits and other baker’s wares", against the improper use the name Belokranjska pogača, from Slovenia.
The TSG delicacy in question is a salted cake, for which you can find a recipe here.
THURSDAY, 4 MARCH 2010 Seizure of goods bearing the EURO 2012 logo AFP reports that Polish custom officers of the city of Gdynia (an important seaport of the Noth of Poland) found what appears to be the first trade mark infringement of the Euro 2012 logo.
10.656 pairs of football shoes bearing this logo were seized. The estimated value of these goods was said to be of 430.000
zlotys
(110.000 EUR).
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