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THURSDAY, 11 MARCH 2010
DG Trade organises meeting on ACTA
 From OHIM, we learn that DG Trade is
organising a meeting in Brussels on 22 March to inform and consult
interested parties about the negotiation of the Anti-Counterfeiting
Trade Agreement (ACTA). According to the press release, "The goal of ACTA is to provide an improved framework for
countries committed to intellectual property protection, with a view to
effectively address the challenges of IPR infringement. The event,
which requires pre-registration, takes place in the Charlemagne
Building from 10.00am to 12.30pm." As ACTA has attracted criticism for secrecy and lack of transparency in the progress of negotiations (see IPKat's post here), this meeting might just be a pleasant surprise.
Posted by: Nikos Prentoulis @ 16.31
Tags: DG Trade, ACTA, |
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THURSDAY, 11 MARCH 2010
Extra virgin olive oil gets PDO
 Commission Regulation 203/2010 of 10 March 2010 entering a name in the register of protected designations of origin and protected geographical indications (Irpinia — Colline dell’Ufita (PDO)) was published today on the website of the Official Journal of the European Union. Irpinia — Colline dell’Ufita is an extra virgin olive oil from Italy.
Posted by: Jeremy Phillips @ 11.42
Tags: PDOs, |
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THURSDAY, 11 MARCH 2010
The Polish Supreme Court speaks on reputation and criteria for trade mark infringement
Technopol Publishing Agency filed a suit against Phoenix Press and Bauer Publishing House. Technopol requested the court to prohibit both defendants from putting on the market all magazines and periodicals bearing the number "100" or its multiples, and journals bearing the titles composed of three Arabic numerals together with the words "panorama" (in Polish: panorama) or "panoramic" (in Polish: panoramiczny), and to order the withdrawal of such publications from the market, to order the publication of an apology of specific content in the press, to order the defendants to pay the amount of 75000 PLN as compensation and the amount of 99000 PLN as unjustified benefits received by the defendants as a result of the unlawful use of Technopol’s trade marks, and to order defendants to withdraw particular trade mark applications from the Polish Patent Office.
Technopol argued that it has introduced characteristic titles of crosswords magazines, presenting the number "100" or its multiples, with the words "panorama" or "panoramic" since 1994. Bauer Publishing House gave a licence to Phoenix Press to publish crosswords magazine entitled "Chwila na 100 panoramicznych". Later on, Phoenix Press began to publish crosswords magazines with titles composed of the multiple of "100" and the "panoram" word.
Technopol based its claims on articles 3, 10 and 18 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with later amendments.
Article 3
(1) The act of unfair competition shall be the activity contrary to the law or good practices which threatens or infringes the interest of another entrepreneur or customer.
(2) The acts of unfair competition shall be in particular: misleading designation of the company, false or deceitful indication of the geographical origin of products or services, misleading indication of products or services, infringement of the business secrecy, inducing to dissolve or to not execute the agreement, imitating products, slandering or dishonest praise, impeding access to the market and unfair or prohibited advertising and organising a system of pyramid selling.
(…)
Article 10
(1) Such indication of products or services or its lack, which may mislead customers in relation to the origin, quantity, quality, components, manufacturing process, usefulness, possible application, repair, maintenance and another significant features of products or services as well as concealing the risks connected with their use, shall be the act of unfair competition.
(2) Releasing for free circulation products in the packing which may cause effects referred to in section 1 above shall be the act of unfair competition, unless the use of such packing is justified by technical reasons.
(…)
Article 18
(1) Where the act of unfair competition is committed, the entrepreneur whose interest is threatened or infringed may request:
1) relinquishment of prohibited practices,
2) removing effects of prohibited practices,
3) making one or repeated statement of appropriate content and form,
4) repairing the damage, pursuant to general rules;
5) handing over unjustified benefits, pursuant to general rules,
6) adjudication of an adequate amount of money to the determined social goal connected with support for the Polish culture or related to the protection of national heritage – where the act of unfair competition has been deliberate.
2. The court, upon a motion of the entitled party, may also adjudge on products, their packing, advertising materials and another items directly connected with commitment of the act of unfair competition. In particular, the court may order their destruction or include them on account of the indemnity.
and articles 120(2) and 296(1) and (2) 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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments.
Article 120
1. Any sign capable of being represented graphically may be considered as trademark, provided that such signs are capable of distinguishing the goods of one undertaking from those of other undertakings.
2. The following, in particular, may be considered as trademarks within the meaning of paragraph (1): words, designs, ornaments, combinations of colours, the three-dimensional shape of goods or of their packaging, as well as melodies or other acoustic signals.
(…)
Article 296
1. Any person whose right of protection for a trademark has been infringed or any person who is permitted by law to do so, may demand the infringing party to cease the infringement, to surrender the unlawfully obtained profits and in case of infringement caused by fault also to redress the damage:
i) in accordance with the general principles of law,
ii) by the payment of a sum of money at the amount corresponding to the license fee or of other reasonable compensation, which while being vindicated would have been due on account of consent given by the holder to exploit his trademark.
1a. To the claims referred to in paragraph (1) the provisions of Article 287(2) and (3) shall apply accordingly.
2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(i) a trademark identical to a trademark registered in respect of identical goods,
(ii) a trademark identical or similar to a trademark registered in respect of identical or similar goods, if a likelihood of misleading the public, including in particular a risk of associating the trademark with a registered trademark, exists;
(iii) a trademark identical or similar to a renown trademark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trademark.
Phoenix Press and Bauer Publishing House requested the court to dismiss the suit. They argued that all trade marks in question have only informational character, and they refer to the title of the magazine "Chwila dla Ciebie", and substantially differ from plaintiff’s trade marks, which excludes the risk of confusion.
The judgments of the District Court and the Court of Appeal did not satisfy any of the parties and as a consequence, both appealed.
The Supreme Court in a judgment of 24 November 2009, case file V CSK 71/09, ruled that the admissibility of a cassation complaint in matters of property rights is dependent on the minimum value of the subject matter of litigation, which in economic cases, cannot be less than 75000 PLN. The legal doctrine and the case law of the Supreme Court has expressed the view that the claims under article 18(1) points 1, 3 and 4, of the CUC have non-financial nature. See judgment of the Supreme Court of 9 March 2006, case file l CZ 12/06, and a judgment of the SC of 9 January 2008, case file II CSK 363/07. But this view has no legal justification which was the most widely expressed by the Supreme Court in the opinion of 8 March 2007, case file III CZ 12/07, published in OSNC 2008/2/26. The Court held that the claims set out in the CUC, though - according to the prevailing view - are not based on the absolute rights (enforceable against anybody infringing that right, an erga omnes right can be distinguished from a right based on a contract, which is only enforceable against the contracting party), they are directly contingent upon economic interests of persons who have the absolute right, and thus have the financial character. This view is justified by the general objective of the unfair competition law as defined in article 1 of the CUC, which is to prevent and combat unfair competition, and by provisions of article 20 of the CUC which set the same term of terminations of actions as for claims ensuing from property rights. For this reason, the Supreme Court dismissed the cassation complaint brought by Phoenix Press.
Technopol based its cassation complaint inter alia on the reputation of its trade marks. The Supreme Court ruled that according to the legal doctrine and the case law established by the SC, the distinction made between well-known and reputed trade marks is based on a different criterion. The reputation of a trade mark means its attractiveness, the value of advertising it creates and the ability to stimulate sales of goods marked with it. It is therefore a criterion referring rather to the special quality of a sign than to the degree of its knowledge. Such opinion was issued by the Supreme Court in a judgment of 7 March 2007, case file III CSK 428/06. The Supreme Court in a judgment of 12 October 2005, case file III CK 160/05, published in OSNC 2006/7-8/132, ruled that, the reputed or renowned trade mark serves as a carrier of information and ideas/opinions about high quality and high prestige. The last word is synonymous with "reputation" in Polish. However, the concept of a reputed/renown trade mark does not indicate an association with the exclusive services or goods of significant value. A renowned trade mark is a carrier of information on a specific, expected and tested quality of a sign. It includes a settled belief about the expected values of the goods, in the minds of buyers. The Supreme Court pointed out that the reputed trade mark in relation to other signs is characterized by ever stronger distinctive characteristic. Numerical trade marks owned by Technopol and registered for crosswords periodicals do not have the distinctive character. Trade marks intended to use for such periodicals have informational nature and are descriptive. They demonstrate direct and specific relationship with goods at stake which could allow its buyers to see them as a description of quantity of goods or one of their essential characteristics. In any case, a numerical trade mark placed on the cover of the magazine informs about the amount of crosswords that are appearing in the magazine and it is seen by buyers as a description of the characteristics of the goods, in particular the number of crosswords appearing in the magazine. Similarly, the word signs "panorama" or "panoramas" are used to describe the features of crosswords printed in a journal. The weak distinctive characteristic of Technopol’s trade marks that were registered for crosswords periodicals proves that these are not reputed trade marks, and there is no risk of confusion as referred to in article 296(2)(ii) of the IPL.
There was no evidence for the Court, that Technopol’s trade marks acquired the secondary meaning. On the contrary, such arguments were denied by the Court because of the use of these trade marks in such a way that they became a carrier of information about the origin of the goods. The Court confirmed that, as a general rule, it is possible for a trade mark that also serves as a press title, to acquire secondary meaning and distinctive character while performing informational function, but only taking into account all the circumstances the of use of such sign for designation of the goods.
The Court also ruled that the risk of consumers confusion as to the origin of goods, which creates the infringement of the right of protection for a trade mark, has many factors that require a comprehensive examination. The degree of knowledge of the registered trade mark, the degree of similarity between trade marks and the goods, and the circumstances in which the marked goods are sold, but also its distinctiveness should be taken into account while determining the risk of consumers confusion. According to the Court, the risk of consumers confusion was excluded because of the weak distinctive characteristic of the descriptive numerical signs, and the allegations of violation of article 296(2)(ii) of the IPL were unfounded, irrespective of any similarity between Phoenix Press and Technopol’s trade marks. Article 296(2)(ii) of the IPL applies to the infringement performed in the form of imitation, which may involve the use of an identical or similar trade mark to a trade mark registered, for the same or similar goods to these listed in the registry. The premise of violation is not only the unlawful use of a sign, but also the risk of confusion as to the origin of goods. The common knowledge of Technopol’s trade marks has not been proved and such knowledge cannot be equated with the popularity, especially as these trade mark serve for the designation of crosswords magazines that are targeted to specific audiences.
The Supreme Court also ruled that there was no violations of the provisions of the CUC related to the likelihood of consumers confusion as to the origin of the goods. The condition for the application of article. 10(1) of the CUC is decided on the factual basis. As it was noted by the Supreme Court in a judgment of 23 April 2008, case file III CSK 377/07, published in OSNC 2009/6/88, the difficulties in establishing such datum stem from the situation that it’s a fact of a legal nature and which may arise, as well as the fact that the likelihood of confusion must relate to a specific model of the consumer. According to article 10(1) of the CUC, the indication of the goods or services must have such a distinctive character so it’s illegal use would cause the likelihood of consumers confusion as to the origin of the goods. Only the use of words and numbers in a specific composition could cause such a risk. A similar opinion was issued by the Supreme Court in a judgment of 21 February 2008, recognizing that the numerical designation placed on the cover of the crosswords magazine can make the average consumer confused as to the origin of the goods, only if it is put in the place usually reserved for the title of a periodical. There was also the need for an appropriate balance between the rights and interests of different market participants, so giving due protection would not allowed to abuse their position.
The Supreme Court also noted that Technopol wrongly raised the plea of faulty decision of a case where it argued that the lower court did not take into account its claim against the defendants to withdraw given trade mark applications from the Polish Patent Office and the claim to abandon of their trademarks rights. The Court ruled that these claims relate to the rights on the existence of which decides an independent body – the Polish Patent Office. It is the PPO’s jurisdiction to decide on the invalidation of the right of protection for a trade mark at the request of any person who has a legitimate interest if it's shown that the statutory conditions for obtaining this right have not been met.
For all these reasons, the Supreme Court dismissed the cassation complaint brought by Technopol.
Posted by: Tomasz Rychlicki @ 10.36
Tags: Polish Patent Office, Polish courts, Polish law, Polish Supreme Court, famous trade marks, reputed trade marks, trade mark infringement, |
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WEDNESDAY, 10 MARCH 2010
Italy publishes new decree, but no timetable for implementation
Class 46 has just received this newsflash from MARQUES External Relations Officer Alessandra Romeo:
By Decree of January 13, 2010, No. 33, the Implementing Regulation of the Italian Industrial Property Code, as adopted by Law Decree of 10 February 2005, No. 30, has been published on the Official Gazette No. 56, Ordinary Supplement No. 48/L on March 9, 2010.
The new Industrial Property Law Code actually entered in force in Italy nearly five years ago. This new Code, the result of an extensive revision and upgrade of earlier industrial property rights laws, also introduced some significant changes and simplifications in trade marks procedures before the Office (e.g. in respect of the formalities and requirements for recording a transfer in ownership of IP rights) and also enacted administrative opposition proceedings.
The publication of the Implementing Regulation will eventually make it possible to protect trade mark rights by means of administrative opposition proceedings in Italy. However, the timetable for the implementation of all required tools, including the publication of applications in the Official Bulletin of Trade Marks for opposition purposes, remains unknown. Further developments will be reported as soon as we have them.
Posted by: Jeremy Phillips @ 17.01
Tags: Italy, Implementing Regulation, |
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WEDNESDAY, 10 MARCH 2010
Spain - "Look who's dancing" ... in the Courtroom.
By reading the on-line version of the El Mundo, this blogger has learned of an interesting trade mark case on the title famous TV programm in Spain.
According to the news, the Commercial Court no. 1 of Madrid has awarded an interim injunction against a TV channel which is currently broadcasting a quite a successfull TV programm called "¡Mira quién baila!" ("Look who's dancing!"). This programm, devotedly followed by this blogger's grandmother, consists in training a number of celebrities in the fine art of dancing. Each gala ends (my grandmother has told me) with a dancing contest in which the participants are graded.
The article reports the claimant (another TV Channel which broadcasted the same format years before) filed an application for interim relief on the basis of the registered Spanish trade mark no. 2649632 "Mira quién baila" . Legal actions were initiated on February 8, 2010, and the hearing took place on February 25. The decision was issued shortly after (date unknown) .
After visiting the respondent's website, it seems that respondent is moving to the acronym "MQB" ("Más que baile").
Posted by: Ignacio Marques @ 13.02
Tags: Spain, interim relief., |
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TUESDAY, 9 MARCH 2010
Text-book - or rather: porn-film - case of tarnishment
UBS threatens to sue the Swiss distributor of a porn film with the title "USB - Our Swiss Bank" (or possibly already sued, the news article is not entirely clear). If you look at the image above I'd say that they have a pretty good case (btw, the original cover does not have the two white strips over the strategically important places; I've added them for the benefit of our American readers, where one apparently can get fired for looking at a nipple at work).
The producer notes that he is not using the trade mark UBS, but rather USB, and that the three keys, which look suspiciously like the UBS keys, are also part of the crest of his home town. Well.... these have to be the worst excuses ever. On the other hand, he got the publicity he wanted, and UBS will have great difficulty proving financial damages.
Source (with uncensored image)
Posted by: Mark Schweizer @ 19.09
Tags: tarnishment, famous mark, reputation, Switzerland, |
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TUESDAY, 9 MARCH 2010
Brands talk to mark World IP Day
 Monday 26 April is the World Intellectual Property Organization's World Intellectual Property Day and, to mark it, the IP Finance weblog has organised a mid-day seminar on "Brands and the Cost of Corporate Conscience". The speaker, who is known to MARQUES members following her dynamic presentation at last year's Brighton Conference, is Marjolijn Vencken (Trouble in Paradise).
The venue is the London office of law firm Olswang. Admission is free. Author, barrister and member of the trade mark judiciary Amanda Michaels (Hogarth Chambers) is in the chair. MARQUES members are particularly welcome! If you'd like to attend, the full details can be found here.
Posted by: Jeremy Phillips @ 10.08
Tags: World IP Day, |
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