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.
MONDAY, 30 AUGUST 2010 Preparing for the new gTLDs: a survey World Trademark Review (WTR) magazine is conducting a survey into how industry is preparing for new generic top-level domains. This survey will be live until at least 15 September. According to WTR:
"It is now almost certain that new gTLDs will launch. So the trademark community is best advised to stop trying to improve the policy and focus instead on strategy. External counsel must work out how to build business models around new gTLDs. Meanwhile, brands must answer much more than the question of whether or not to apply to run a new gTLD registry; they must plan how to react to new spaces on the internet, how to restructure their internal teams accordingly and how to continue building and protecting their brand online".
If you would like to contribute to this survey, you can access it here.
MONDAY, 30 AUGUST 2010 Poland: membership in capital group is not enough On 25 July 2005, DOMAIN MENADA Sp. z o.o. from Warsaw applied for the right of protection for FILIPETTI MONTENERO SPUMANTE DEMI SEC dalla tradizione italiana trade mark in class 33.
The Polish Patent Office informed DOMAIN MENADA that there exist earlier trade marks owned by Belvedere S.A. and refused to grant the right of protection for the applied sign. DOMAIN MENADA filed a complaint in which the company argued that it is a member of Belvedere Group and provided a proper letter of consent.
The Voivodeship Administrative Court in Warsaw in its judgment of 21 June 2010 case file VI SA/Wa 710/10 held that in any case, the mere existence of links (relationships) between entities belonging to the same capital group cannot be regarded as a guarantee of quality of product bearing the disputed trademark. It should be noted that the capital group is a specific form of business, where corporate governance is exercised at several levels - both across the group and in individual companies. The mere membership in a capital group cannot be used as an argument that the signs from affiliated companies will not mislead consumers.
MONDAY, 30 AUGUST 2010 The weird case of the ZAHIA trade marks applications In April 2010, the name of four members of the French soccer team were mentioned in a sex scandal. Franck Ribéry, Sydney Govou, Hatem Ben Arfa and Karim Benzema were mentioned as potential clients of Zahia Dehar, a young prostitute who might have been under eighteen at the time of the facts.
The forename Zahia rapidly became a buzz word. In June 2010, Ms Dehar applied for several trade marks including her forename and covering a wide range of products and services of various nature (as one can imagine). However prior trade mark applications for ZAHIA and the phonetic equivalent ZAYA had just been filed some time before in the name of ... another French sportsman, Frederic Michalak (scrum half and fly-half in the national rugby team).
After this was mentioned in the press, Michalak's agent denied that the rugbyman actually filed the applications; it appears that a yet-unknown individual used Michalak's name and address when filing the INPI online forms. I can only wonder how anyone could benefit from such identity theft?
MONDAY, 30 AUGUST 2010 Dismissal of dishonest franchisee: protecting a brand and interests in it
In November 2009 the Frankfurt am Main Higher Regional Court became the first German higher court to rule on the validity of termination of a business format franchise without notice based on the suspicion of a crime. The court ultimately affirmed the termination.
In short, the franchisee had the opportunity to place charity donation boxes in its restaurant in order to collect donations for children with serious illnesses. The suspicion arose that customer donations were not being passed on to the foundation, but rather had been deposited in the franchisee's private account. Under the franchise agreement, termination without notice was permitted if "a justified suspicion existed that the franchisee ... had committed or participated in a serious crime, in particular a property or tax offence with major consequences".
The court found that this termination provision was valid since the clause did not unreasonably prejudice the franchisee contrary to the principle of good faith and did not place the franchisee in a worse position than article 314 of the Civil Code, which provided for termination of a recurring contractual relationship without notice.
According to the higher court, an important factor in the success of any franchise system is the need to protect the high regard and reputation of the franchise system's brand in the interests of all participants in the system, particularly those of the other franchisees.
Source: article by Karsten Metzlaff or Karl Rauser (Noerr LLP) for International Law Office (here).
MONDAY, 30 AUGUST 2010 Greece - penalty clauses and trade mark agreements
The Athens Court of Appeal has given litigants in Greece a
good precedent to enforce penalty clauses in trade mark related agreements,
which have taken a wrong turn (or two). The story is not particularly original,
though it takes place in the realm of hairdressing! As it so often happens, a
group of people joined forces to open a hairdressing business, in the form of a
general partnership company. The trade marks were registered in the name of one
of the partners who licensed them to the company.When they all decided they’ve had enough of
each other, they signed an agreement whereby the license was revoked and the
remaining partners were given a grace period to remove the trade marks from
signs, printed matter etc. A penalty clause of 1.000 euro/day was set in case
of infringement.
And as it, also, so often happens, the agreement
was breached for a period of just over a hundred days. The injured party went
on to enforce its rights and the case reached the Court of Appeal of Athens.
The Court, after carefully setting out the legal requirements for enforcement
of a penalty clause, upheld the particular penalty clause, rejecting the
defendants’ arguments claiming that the penalty was disproportionate. So, for
Greece, 1.000 euro per day for penalty clauses seems safe enough. The judgment
received number 873/2010 and is available only in Greek. If any of the readers
of this blog is interested, I’d be happy to forward it with a summary translation.
FRIDAY, 27 AUGUST 2010 "Absurd trade mark disputes"
Further to our earlier post on the trade mark dispute concerning eiPott and iPod (see our post here), German newspaper "Die Wirtschaftswoche - wiwo.de" has published a lovely little gallery of "absurd trade mark disputes" from Apple v eiPott (unfair advantage) to the Pudel v Puma and Purple postcard cases (trade mark satire). The article is in German but some of the images ("Pudel v Puma", see left) are self explanatory and may also amuse non German speakers.
THURSDAY, 26 AUGUST 2010 iPod sees off eiPott threat
The German-made eiPott crafted by Erbach-based novelty houseware manufacturer Koziol, has been the subject of an injunction, which Apple Germany sought from the Hanseatic Higher Regional Court. The eiPott, a rather attractive plastic egg holder, now needs a new name -- and possibly a new shape too.
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