* Commission Implementing Regulation 433/2013 of 7 May 2013 approving non-minor amendments to the specification for a name entered in the register of protected designations of origin and protected geographical indications (Κοπανιστή (Kopanisti) (PDO)).  For those who like something a little different, Kopanisti is a truly salty, spicy cheese which originated from the Greek island of Mykonos. It is said to go particularly well a a meze to accompany a glass or two of ouzo.

* Commission Implementing Regulation 434/2013 of 7 May 2013 approving non-minor amendments to the specification for a name entered in the register of protected designations of origin and protected geographical indications (Mâche nantaise (PGI)). Mâche nantaise, depicted here, is a French salad ingredient which is rich in Omega 3.

* Commission Implementing Regulation 435/2013 of 7 May 2013 approving non-minor amendments to the specification for a name entered in the register of protected designations of origin and protected geographical indications (Βόρειος Μυλοπόταμος Ρεθύμνης Κρήτης (Vorios Mylopotamos Rethymnis Kritis) (PDO)). It might seem a bit of a mouthful to say, but Vorios Mylopotamos Rethymnis Kritis is a Greek mechanically-extracted olive oil. The non-minor amendment to the PDO protection stems from the fact that, in many areas, Hondrolia olive trees are being replaced by Koroneiki trees from which this oil is extracted.

* Commission Implementing Regulation 436/2013 of 7 May 2013 approving non-minor amendments to the specification for a name entered in the register of protected designations of origin and protected geographical indications (Queijo de Cabra Transmontano/Queijo de Cabra Transmontano Velho (PDO)). Queijo de Cabra Transmontano, a Portuguese cheese, is made from the milk of the Serrana goat. It is white and very hard, with a "strong but pleasant" aroma and a slightly spicy aftertaste.

The Opposition Division upheld the opposition on the ground that the goods at issue were identical and that the similarities between the signs under comparison outweighed their dissimilarities. The First Board of Appeal of OHIM dismissed the applicant’s appeal and found that consumers who have been exposed to wines, among other beverages, sold under the MARINA ALTA trade mark and who are offered wines, among other beverages, under the name CA’ MARINA would, in all probability, believe that CA’ MARINA was a new line of wines created by the proprietor of the earlier mark or that there must be a commercial connection between the parties. Even if the two signs must be taken as a whole, the element ‘marina’ has the strongest impact in both of the signs because many EU consumers will associate it with pleasures derived from the sea, whereas the elements which accompany it are either short and meaningless (CA’), or a mere qualifier (ALTA meaning ‘high’).

The applicant submits that, taking into account the fame of the city of Venice, the consumer, in the EU and worldwide,  will immediately understand the semantic origin of ‘ca’’. According to the applicant, the term is recurrent. In that regard, the applicant invokes the university of Ca’ Foscari, the Ca’ Rizzonico, office of the Fondazione Musei Civici di Venezia, and the Venecian palaces, Ca’d’oro, Ca’ Dario, Ca’ Farsetti, Ca’ Cirvan, Ca’ del Duca. However, the Court held that with the exception of consumers who understand the Venetian dialect, for whom the mark applied for means the ‘marine house’, other consumers will understand the mark applied for as relating to a ‘marina’, a term which refers, at the very least for the relevant public who speak French, English, Italian, German or Spanish, to the sea or a place bordering the sea or a marina. The relevant public will thus associate that term with the sea, the beach and with marinas.

The fact that the applicant wishes to use the mark applied for only for high quality alcoholic beverages of a certain price and possibly to distribute its goods by a specific distribution channel is irrelevant for the purposes of assessing the likelihood of confusion. Furthermore, the fact that those goods are of different qualities or are distributed by separate channels does not prevent a finding that there is a likelihood of confusion, since those goods can be perceived as designating product lines from the same producer.

The director of the animated short film "Logorama" (consisting entirely of logos) has published a "Logobook". Blurb:

The monumental archive Houplain amassed is the foundation of this ultimate logo reference guide, featuring approximately 7,000 specimens organized alphabetically, with information about the designers, year of creation, country, brand, and company. Moreover, the book includes an extensive critical essay on brand culture by French philosopher Gilles Lipovetsky, and an introduction by Ludovic Houplain explaining the creation process of the film Logorama, from its inception to its finalization.

Maybe something for the trade mark fanatic? The one who also knows which one of the three logos below is the real PEPSI logo?

 E-mediat AG sought to register GALDAT INSIDE for various goods in class 9, among them computer software and data carriers (but not hardware), services of a data base adminstrator in class 35, services of an access provider in class 38 and development of computer hardware and software in class 42. Unsurprisingly, Intel opposed based on the registration of both the word mark INTEL INSIDE and the figurative mark "Intel inside", both registered for all the goods of class 9, among them computer chips and software. 

The Federal Administrative Court, on appeal from the IPO, which had partially granted the opposition, held that it was "notorious" that the figurative mark "Intel inside" was well known for processors and chip sets. For these goods, and goods and services similar to them, "Intel inside" therefore enjoyed a large scope of protection. Hence, a likelihood of confusion was found between the older Intel marks and the data carriers in class 9 and the services of the devedlopment of computer hardware in class 42 of the younger mark, but not for other goods and services covered by the younger mark, notably software in class 9, the telecommunication services in class 38, the database administration services in class 35 and the software development services in class 42.

It appears the decision of 17 April 2013 is a truly Solomonic decision - one that no party is happy with... 

Three months ago, we have blogged on the highly reported (on the Portuguese newspapers) dispute over the exclusive right to use the sign “O LICOR DE PORTUGAL” / “O LICOR NACIONAL” (“The Portuguese Liquor” / “The National Liquor”).

On a preliminary injunction decision, the Intellectual Property Court heldthat the phrase "O LICOR DE PORTUGAL” (“The Portuguese Liqueur”) cannot be exclusively owned by one party and that, therefore, nothing hindered other party from using the same or similar sign. It is added that the ruling considered that there is no graphical, aural or another similarity that creates likelihood of confusion on the part of the public between the two signs, as their overall composition is in fact different.

J. CARRANCA REDONDO appealed of such decision to the Tribunal da Relação de Lisboa (Lisbon Court of Appeal), which has now (the decision is dated 30 April 2013) issued its judgement, holding the decision of the first instance court.

Although we have not had access to the full court decision (hopefully, the same will be published in the near future), the following parts of the judgement were disclosed in the Portuguese press:

“Placed side by side on the supermarkets’ shelves, the bottles are easily distinguishable by costumers with at least a minimum attention and that are familiar with Licor Beirão” (one might argue that this argument is dubious, but I won’t criticize it without having prior access to the full decision and the context from which this quotation results)

“It is unquestionable that there is a competition relation. However, as noted, nothing was found in this injunction to support its unfairness, i.e., nothing was found that contradict the rules and honest practices of the economic activity developed by these two companies”.

This decision will now become final. However, several related to procedures are still pending:

• An action for the annulment of Portuguese Trade Mark no. 486675 “LICOR NACIONAL” (owned by CAVES DA MONTANHA - A.HENRIQUES, LDA.) – the main action related with the above referred to preliminary injunction procedure – is currently pending on the Intellectual Property Court.
• INPI is currently analysing the application for the registration of Portuguese Trade Mark no. 500024 “LICOR NACIONAL”, on behalf of CAVES DA MONTANHA - A.HENRIQUES, LDA., that has been subject of opposition of J. CARRANCA REDONDO, but also from CEREALIS – PRODUTOS ALIMENTARES, S.A. (a third party company who owns several Portuguese Trade Marks and Logotypes composted by / containing the word “NACIONAL”).
• At the same time, on 6 February 2013, J. CARRANCA REDONDO, LDA. applied for the registration of Portuguese Trade Mark no. 509685 “O LICOR DE PORTUGAL” (word mark) for “liqueurs”. However, on 12 April 2013, XARÃO – COMPANHIA PORTUGUESA DE LICORES, LDA. – a third party to this prior procedures – has filed an opposition against such registration. We are not aware of the grounds of the opposition, but we wonder if the same is based on part of the company’s business name – “COMPANHIA PORTUGUESA DE LICORES” – and/or on absolute grounds of refusal (considering that XARÃO does not seem to own any similar trade mark).

Once again, we can say that this dispute is far from over…

The first issue, which is 46 pages long (46 being a number that this blog is very fond of), is glossy and handsomely illustrated.  It contains a quantity of Europe-related material, covering jurisdictions as diverse as Guernsey, Poland, Russia, Turkey and the United Kingdom. Class 46 has ascertained from publisher Chris Dooley that the frequency of this new title has yet to be determined. Much will no doubt depend on the enthusiasm with which this new title is greeted by readers, contributors and advertisers.

You can check out The Trademark Lawyer for yourself here. 

In case T-109/11, Apollo Tyres AG (Switzerland) applied for the word sign ENDURACE for the following goods in Class 12: ‘tyres, tubes and flaps for automobiles’; Class 35: ‘advertising, business management, business administration, office functions, retail and online retail services connected with tyres, tubes and flaps for automobiles’; Class 37: ‘building construction, repair, installation services, fitting services for tyres, repair and replacement of tyres’.

Endurance Technologies Pvt Limited(India) brought an opposition based on the figurative mark ENDURANCE (represented left) registers for goods in Class 12 and covering among others ‘parts, fittings and accessories for land vehicles; automobiles and automobile components;[…] transmission chains and shafts for land vehicles; turbines for land vehicle; castings for [tyres], casting cars, casting carriages”.

The Opposition Division upheld the opposition in part on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of CTMR in particular, as regards the non-English-speaking section of the relevant consumers, who would not understand the meaning of the word ‘endurance’, as regards the goods covered by the trade mark application in Class 12, and as regards some of the services covered by that application in Class 35, in respect of inter alia ‘retail and online retail services connected with tyres, tubes and flaps for automobiles’. The Board of appeal also rejected the applied for mark for all of the goods covered by that application in Class 12, and for the ‘retail and online retail services connected with tyres, tubes and flaps for automobiles’ in Class 35 and the services of ‘repair’, ‘installation’, ‘fitting services for tyres’ and ‘repair and replacement of tyres’ in Class 37.

As regards the meaning of the signs, itis reasonable to consider that at least some non-English- or non-French-speaking consumers might not understand the word ‘endurance’. First, that word has no resemblance to or common root with its equivalents in languages such as, inter alia, German, in which a comparable meaning is expressed using words like ‘Dauerhaftigkeit’, ‘Durchhaltevermögen’, ‘Ausdauer’, ‘Haltbarkeit’ or ‘Dauerhaltbarkeit’, Polish (‘Wytrzymałość’) or Greek (‘αντοχή’). It is the same in, for example, Slovak (‘Vytrvalosť’, ‘Výdrž’ or‘Životnosť’), Czech (‘Vytrvalost’, ‘Výdrž’ or ‘Životnost’) or Hungarian (‘állóképesség’, ‘élettartam’,‘ellenállóképesség’, ‘szívósság’ or ‘ellenállás’).Nor, moreover, can the word ‘endurance’ be automatically considered to be a basic English word whose meaning would be understood by any European Union consumer (which differs from the precedent T‑461/09CheapFlights InternationalvOHIM’) . The signs are highly similar from a phonetic and visual point of view and therefore overall similar. Thus, the General Court dismissed the appeal.

In Case T-61/12, the General Court upheld the findings of the OHIM that SLIM BELLY cannot be registered by ABC-One Produktions- und Vertriebs GmbH (Austria) for the following goods and services in Classes 28, 41 and 44:  "Exercise apparatus, fitness equipment in the form of belts and collars, stress training equipment, treadmills, running type exercises, body-training apparatus, all the aforesaid goods not included in other classes. Providing of training and further training; education; entertainment; sporting and cultural activities; Fitness studios. Medical services;solarium services; massage services; beauty-salon services; sanitoriums; renting of sanitary facilities".

The relevant English-speaking public is composed of the average consumer as well as gym managers or professional athletes who have a higher degree of attention due to the health impact, higher cost and long use or requires trust for these goods and services.

The applied for sign will be understood regarding SLIM as “to make slender” and BELLY as the “stomach” and in relation with the applied for goods and services, it will be perceived as a reference to get more healthy and have a better physical appearance through diet or physical activity. Indeed, a person who is in good shape and in a healthy body will ideally also have a flat slim stomach.

Therefore, the sign is directly descriptive of the type of goods and services as well as lacks distinctive character according to Article 7 (1) b) and c) CTMR.

The Manual of Trade Mark Practice

The following has been amended:

MANUAL UPDATE

Part C: Opposition. Part 6: Proof of Use

The Manual of Trade Mark Practice on Proof of Use has been modified to align it with the judgment of the Court of Justice in C-149/11 ‘Leno Merken’. The revision only affects Section II.4.1- Use on the “domestic” market and Section II.4.2 - CTMs: use in the European Union. The changes will enter into force immediately after publication.

The amendments to Section II.4-1 look like this:

4. Place of use

4.1. Use on the “domestic” market

Trade marks must be used in the territory where they are protected (European Union for CTMs, the territory of the Member State in the case of for national marks or Benelux in the case of for Benelux marks and the territories of the relevant countries for international registrations).

The General Court has held that genuine use means that the mark must be present in a “substantial part” of the territory where it is protected (judgment of 12/12/2002, T-39/01, ‘Hiwatt’, para. 37). However, even use in a quite limited area of the relevant territory might prove to be sufficient, provided it is to be considered as genuine, taking into account all the relevant factors of the specific case. As the Court held in ‘Leno Merken’ ‘Vitafruit’; ‘the territorial scope of the use is only one of several factors to be taken into account in the determination of whether it is genuine or not’ (judgment of 19/12/2012, C-149/11 ‘Leno Merken’, para. 30). The Court further indicated that use of the mark in non-EU territories cannot be taken into account (para. 3811/05/2006, C-416/04, ‘Vitafruit’, para. 76).

In view of the globalisation of trade, an indication of the registered seat of the owner of the mark may not be regarded as sufficient indication that the use has taken place in that particular country. Even though Article 15(1)(b) CTMR stipulates that the affixing of the trade mark to goods or to the packaging thereof in the European Union solely for export purposes is considered as use of the mark, mere indication of the opponent’s seat as such does not constitute evidence of such acts. On the other hand, the fact that clients having their seats outside the relevant territory are listed in the documents to prove use of the earlier mark is in itself not sufficient to exclude that services (e.g. promotion services) may actually have been rendered in the relevant territory for the benefit of these companies located in other territories (decision of 09/06/2010, R 0952/2009-1, ‘Global Tabacos’, para. 16).

The amendments to Section II.4-2, which are more extensive, run as follows:

4.2. CTMs: use in the European Union

If the earlier mark is a Community mark, it must be used ‘in the Community’ (Articles 15(1) and Article 42(2) CTMR). Following ‘Leno Merken’, Article 15(1) CTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether a CTM has been put to “genuine use” in the Community (para. 44).

Genuine use within the meaning of Article 15 CTMR may be found also when the criteria of that article have been complied with in only one part of the EU, such as in a single Member State or in a part thereof. In territorial terms and in light view of the unitary character of the CTM, the appropriate approach is not that of political boundaries but of market(s). Any other rule would discriminate between large and small and big enterprises, and thus be contrary to the aim pursued by the CTM system, which should be open to businesses of all kinds and sizes.

As the Court indicated in ‘Leno Merken’, it is impossible to determine a priori, and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (para. 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use as well as its frequency and regularity (para. 58). 

The Office must determine on a case-by-case basis whether the various indications and evidence, taken as a whole, can be added up for the purpose of assessing the genuine character of use, the geographical dimension of which is only one of the aspects to be considered.

The sufficiency of use in only a part of the European Union is reflected in the Joint Statements by the Council and the Commission entered in the minutes of the Council meeting at which the CTMR was adopted (Joint Statements by the Council and the Commission of 20/10/1995, No B. 10 to 15, OJ OHIM 1996, 615). According to these statements, “the Council and the Commission consider that use which is genuine within the meaning of Article 15 in one country constitutes genuine use in the Community”. While these statements have only an interpretative value and are not legally binding, they have been applied by the Office.

It must iIn any event, it must be underlined that it is the European requirements or standards for genuine use which apply (i.e. the conditions of Article 15 CTMR) and not the national standards or practices applied to CTMs.

 Please update your records -- and your practices  -- accordingly.

Space for discussion of this decision will be found on the MARQUES Linked In Group pages.

The case returned from Luxembourg to the United Kingdom where, in January of this year, a further hearing was held before Mr Geoffrey Hobbs QC, acting as an Appointed Person to hear appeals against decisions of the UK Intellectual Property Office.  His ruling is keenly awaited, not least because it is believed that he has been urged to consider a further reference of questions for a preliminary ruling by the Court of Justice by way of clarification of its earlier decision.

Naturally Class 46 will do its best to keep readers informed.   

In Case T-640/11, the applicant Boehringer Ingelheim International GmbH, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) an international registration designating the European Community for the word sign RELY-ABLE for services in Class 38: ‘Provision of access via the Internet to medical and pharmaceutical information concerning pharmaceutical preparations’; Class 41: ‘Publication of printed matter (except for promotion purposes) with the results of clinical trials for pharmaceutical preparations (also in electronic form)’ and Class 42: ‘Conducting clinical trials for pharmaceutical products’.

The OHIM, as affirmed by the General Court, rejected the registration and considered that the word mark RELY-ABLE was not distinctive, on the ground that it could not be perceived and memorized by the relevant consumer as a trade mark and that the sign as a whole would be perceived as nothing more than a promotional message whose aim is to highlight an important positive aspect of the services, namely that they are reliable.

In particular, the Board of Appeal expressed a view on how two characteristics of the sign would be perceived by the relevant public: the misspelling and the promotional message. Firstly, the relevant public would directly and unambiguously perceive the sign RELY-ABLE as a deliberate misspelling of the English word ‘reliable’ to make it more ‘catchy’, but would not perceive that spelling as particularly fanciful or arbitrary. Secondly, the relevant public would directly perceive the message communicated by the sign RELY-ABLE as a whole, as a banal laudatory message relating to an important characteristic of clinical trial services for pharmaceutical products, namely their reliability. The obvious promotional meaning of the sign RELY-ABLE eclipses any impression that the sign could indicate commercial origin. According to the Board of Appeal, misspellings have in fact become a frequent feature of promotional messsages.

In Case T‑145/12, Bayerische Motoren Werke AG applied to register the word mark ECO PRO for the following goods in Class 9: ‘Electric and electronic apparatus for controlling, indicating, accumulating and regulating, data processing apparatus and computers’ and Class 12: ‘Motor vehicles and parts thereof included in this class.’

The General Court upheld the findings of OHIM which held firstly that the relevant public consisted of English-speaking end consumers, and English-speaking specialist trade circles, in the European Union.

Further, the word element ‘eco’ was the shortened form of the English words ‘ecological’ and ‘ecology’ and, secondly, that the word element ‘pro’ was the common English abbreviation of ‘professional’ and could also be perceived as meaning ‘supporting’ or ‘favouring’.

The sign ECO PRO, considered as a whole, would therefore mean, for the relevant public, ‘ecological professional’ or ‘ecological supporting’. Lastly, that sign does not admit any other interpretation than that the goods concerned are environmentally friendly, support ecology and cause minimal damage to the environment, that they can be used by professionals or that their quality reaches a professional level. In conclusion, the sign ECO PRO may describe a variety of goods, environmentally friendly and designed for professional use, the relevant consumer not perceiving it as an indicator of commercial origin. Where the word element ‘eco’ is, in addition, perceived as an abbreviation of ‘economic’, it would also describe the goods at issue, by indicating that, being environmentally friendly, they consume less energy and therefore enable the consumer to save money. The sign ECO PRO is therefore devoid of any distinctive character within the meaning of Article 7(1)(b) CTMR.

As you may remember from earlier posts, i.e. here, here and here the Bayerische Brauerbund e.V. (Bavarian Brewers Federation) fought a quite long battle to prevent a use of the mark "Bavaria" of a Dutch brewery in connection with beer.

After the German Federal Court of Justice ("Bundesgerichtshof") had annulled the judgement of the second instance court (OLG München) in view of the decision of the Court of Justice with respect to the referred questions, the OLG München now had to analyse whether the claim which had been made by the Brauereibund to revoke the German part of the International registration of the Dutch brewery may be based on the regulations concerning geographical indications according to German trade mark law. Although claims according to national law have to stand back behind protection awarded by European law, such national claims continue to exist until the term "Bayerisches Beer" has in fact been registered by the commission.

As most likely was to be expected, the OLG Munich indeed came to the conclusion that for the period before the registration of the term "Bayerisches Bier" by the commission, a protection of the term may be based on national German law, i.e. §§ 126 I, 127 III MarkenG. The term is thus regarded as a geographic indication without being a generic term. Further, the term has a very good reputation in the sense of § 127 III MarkenG, which is exploited by use of the International registration.

By the way, although the OLG Munich did not allow any further appeal to the Bundesgerichtshof, the Dutch brewery seems not to have said their final word and filed an appeal against the denial of leave to appeal ("Nichtzulassungsbeschwerde"), about which the Bundesgerichtshof will now have to decide ...

Case V-85-10 Prelatura Del Opus Dei Region de España v Dema Games ApS was a somewhat unusual trade mark infringement action which came before the Maritime and Commercial Court, Copenhagen, last month, where the questions before the court were (i) whether Dema's use of the designation Opus-Dei: Existence After Religion as the name of a game implied an infringement of Prelatura Del Opus Dei Region de España’s right to the designation OPUS DEI and (ii) whether the Prelatura's Community trade mark (CTM) registration was either invalid or subject to revocation for non-use.

The Prelatura owned a CTM, registered since 1998, for the word marks OPUS DEI for goods and services in Classes 16, 38, 41 and 42. Danish company Dema had registered a Danish trade mark in Classes 16 and 28 for a logo mark which featured the words “Opus-Dei: Existence After Religion”. Said the Prelature, Dema should delete this registration and should be prohibited from using that designation. Moreover the Prelature asked that Dema transfer the domain names opus-dei.co.uk and opus-dei.dk to it. Dema responded with claims that the Prelature’s CTM registration was invalid or that it should be invalidated for those goods and services where the Prelature could not prove to have used the trade mark within the EU.

The Court found that the trade mark OPUS DEI had sufficient distinctive character for the goods and services covered by the registration. The Court did not find that Dema had sufficient cause of action concerning whether the Prelature had made sufficient use of its mark in Classes 38 and 42. Added the court, it was unthinkable that there could be any identity between Demas’s goods in Class 28 and those services which fell within Classes 38 and 42.

The Court found that the Prelature had used its trade mark for religious education and organization and leadership of religious meetings in Class 41. Since the Prelature had not produced evidence that it had published educational material under the trade mark, use was not proven in relation to educational material. The same applied with regard to other goods and services in Classes 16 and 41. On this basis the Court ascertained that the CTM registration must be revoked for Class 16 and, in Class 41, the registration should be limited to “religious education” and “organization and leadership of religious meetings”. The Court did not find that it had been proven that OPUS DEI could be considered a well-known trade mark in Denmark.

While, in the court's view, the trade marks of the Prelature and of Dema were confusingly similar, the Court found that there was no similarity of goods: Dema offered games which could not be described as confusingly similar to those services which the Prelature’s trade mark registration, as limited, now covered. The validity of Dema's Danish trade mark was thus upheld and its use permitted. The designation OPUS DEI had for a number of years been used as a name for the organization of the Prelature but, despite this, the Court did not find that this prevented the registration of Dema’s trade marks according to The Act on Trade Marks § 14 no. 4 as there was no similarity of goods.

Further the Court did not find that The Act on Marketing § 18 “gives the trade mark and name of The Prelature a separate protection which reaches beyond that which already follows from The Act on Trade Marks”. § 18 states:

“Businesses are not permitted to use distinctive marks etc. which do not belong to them in a way which is suited to cause confusion with that of others”.

Asteris Industrial and Commercial Company SA (‘Asteris’) (Greece) brought an invalidity action on the basis of earlier Greek mark registered in 2000 for goods in Class 29 and the grounds of articles 8 (1) b) and (5) CTMR . The reputation of the earlier mark was relied on for part of the goods covered by its registration, namely ‘Tomato paste and tomato products’ in Class 29.

The Cancellation Division granted partly the action, namely for ‘preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; edible oils and fats’ in Class 29; ‘salt, mustard; vinegars, sauces (condiments); spices’ in Class 30; ‘fresh fruits and vegetables’ in Class 31; and ‘fruit drinks and fruit juices’ in Class 32.

Luna Int’l Ltd lodged an appeal with OHIM against the decision of the Cancellation Division, disputing the proof of use of the earlier mark and the similarity of the trade marks at issue. On OHIM’s request, Asteris produced further evidence of use.

As regards proof of genuine use of the earlier mark, the Board of Appeal observed that Asteris had failed to furnish proof that the earlier mark had been used as actually registered (i.e.: the documents only reproduced the ALBUSTAN or AL BUSTAN brand without the figurative elements). However, it concluded that the form of use of the earlier trade mark did not alter the distinctive character of the mark registered. As regards the time of use, taking into account the dates appearing on the invoices and other documents showing the earlier mark, together with the undated images of the earlier mark, Asteris had proved that the earlier mark had been used in a form which did not alter its distinctive character during the relevant period. With regard to the place of use, the earlier mark had been used in connection with ‘tomato paste’, which had been mainly exported from Greece to Arabic countries, and, as affixing the earlier mark to the goods or their packaging constitutes use of this mark, the mark had been put to genuine use in the relevant territory. As regards the extent of use the evidence of use, containing figures relating to the quantity of goods showed genuine use of the earlier mark for ‘tomato paste’. The BoA concluded that genuine use of the earlier mark had been proven for ‘tomato paste of various concentrations and packages, in cans; peeled tomatoes, in cans; various tomato products (tomato juice, concasse, pumarro, etc.) in cans; fruit juices, in cans’, but not for ‘preserved fruits, in cans’, in Class 29.

As regards the likelihood of confusion, considering that: (i) the fruits and vegetables in various forms, jellies, jams, compotes and sauces (condiments) covered by the mark at issue and the various tomato products in cans covered by the earlier mark were identical or similar; (ii) the other goods covered by the mark at issue, namely, edible oils and fats, salt, mustard, vinegars, spices, and the goods covered by the earlier mark were similar to a low degree; and (iii) the trade marks at issue were similar to a medium degree, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of CTMR for all the goods in respect of which the Cancellation Division had granted the application for a declaration of invalidity.

32Red Plc v WHG (International) Ltd& Others

* there are limits to the extent to which a court would have regard to the parties' actual attributes when assessing damages on the "user" principle -- that the amount awarded would represent the sum that the infringer would be reasonably expected to pay the trade mark owner for the wrongful use, had there been a relationship between them of willing licensor and willing licensee.

* it would be assumed that both parties would have been willing to make a deal and would have acted reasonably -- even if, in reality, that was not the case.

* in an IP context, the "actual licensor" and "actual licensee" are assumed to bargain "as they are, with their strengths and weaknesses".

* the fact that a non-infringing alternative to using the plaintiff's mark existed was a relevant factor in calculating a reasonable royalty.

In Case T-347/10, Adelholzener Alpenquellen GmbH applied for the following 3-D CTM for goods in Class 32 “ beers; mineral waters and other non alcoholic beverages; fruit juices and drinks; syrups and other beverages preparations”.

The OHIM rejected the CTM application because it lacks distinctive character in the meaning of Article 7(1) (b) CTMR. In essence, it emerges from the examiners’ experience that the overall shape (consisting of a basic shape, ribbed surface and relief design on the neck) does not diverge significantly from the norms of the sector, so the relevant average consumer will not identify it as a source of origin.

As regards the shape of the bottle, it is a geometrical shape commonly used for this type of bottle and the notch at the bottom is also a usual characteristic for this kind of beverages’ bottle, from the product manufacturing. As regards the surface of the bottle, many beverages manufacturers are ribbed or have similar lines on their bottles. As for the “mountain” figurative element –which the Applicant claimed to be its logo- the consumer will not perceive it as an independent sign but merely as a decorative element.

The GC upheld the Board of Appeal’s decision and further held that the absence of a clear representation of pictures of bottles representing the norms of the sector in the examiner’s refusal decision, is not material since the it is common knowledge that many bottles manufacturers affix lines or make ribbed bottles. Finally, the OHIM did not have to take into account for its distinctive character analysis the Applicant’s claim that the figurative element and the creases on the bottle did not have a functional use because the material used was not part of the CTM application’s description.

For its defense Van Haren first of all relied on the strict registration rules as set forth by the ECJ in the Libertel-case. The Presiding Judge rejected this: Louboutin’s red sole trade mark is not an abstract colour mark. The trade mark is (for the present in the current proceedings) considered to be a hybrid colour mark, since it bears not only the characteristics of an abstract colour mark, but also of a three dimensional trade mark for a specific red colour as set forth in the registration and as further defined in said registration.

With reference to the ECJ’s decisions in Maglite (case C-136/02) and Henkel (case C-144/06) and the General Court’s decision in X Technology Swiss (case T-547/08) the Presiding Judge holds that the distinctiveness of a trade mark as Louboutin’s sole mark has the ability to distinguish goods for which the mark is registered from goods originating from other companies. A trade mark which lacks distinctiveness can not be registered, or, if registered contrary to this rule of law, be nullified. The distinctiveness should be assessed in view of the goods and services for which the registration has been filed/granted, based on the perception thereof by the relevant public. This perception can be influenced by the nature of the trade mark for which protection is claimed. Because the average consumer is not used to derive the commercial origin of goods from signs which do not match with the goods themselves, such trade marks have only distinctiveness in so far as they deviate significantly from the standard or what is accepted in the industry concerned.

The Presiding Judge establishes that the Louboutin trade mark is provoked for high heeled ladies shoes. In this perspective the Presiding Judge provisionally finds that the sole trade mark coïncides with (a part of) these goods, since it concerns the colour of the sole. Accordingly the trade mark can not be considered apart from the goods. However the Presiding Judge sees no ground to review the question wether the sole mark deviates significantly from the standard or what is accepted in the industry concernec, since the Presiding Judge provisionally finds that the sole mark has obtained secondary meaning through use and is therefore distinctive.

It appears from the decision that Louboutin filed convincing materials from several media from which the Presiding Judge derives that the relevant public in the Benelux conceives the sole trade mark as a trade mark. The Presiding Judge rejects the defense from Van Haren that Louboutin uses the red sole only ornamental. Use by third party shoe makers like Yves Saint Laurent is not considered to be relevant. The Presiding Judge finds the difference in the consequent use of a red coloured sole on a similar way on all high heeled shoes, whereby these shoes can be recognized as shoes from a certain designer versus the use by a designer who uses different coloured soles and incidentally red coloured soles for shoes, dependent on the rest of the design.

The Presiding Judge holds that Louboutin’s trade mark infringement claim can be granted on the basis of article 2.20 par 1 sub b BCIP: the visual similarity between Louboutin’s sole mark and the red coloured sole used by Van Haren is ‘situated’ in the use of an almost identical red colour on an identical location (the sole) of identical goods (high heeled ladies shoes) for which the trade mark is registered. The statement by Van Haren that it uses a black coloured frame around the sole, does not convince the Presiding Judge: the overall impression is still the same. The black coloured frame does not become an independent visual feature, whilst the eye-catching red within the frame matches with the form and colour of the sole mark.

The visual effect which Louboutin achieves with the application of its trade mark is also shown in the shoes of Van Haren. According to the Presiding Judge one should also take into account that the average consumer has seldom a possibility to compare the sole mark and the soles used by Van Haren directly. The average consumer relies on an imperfect image. Therefore the Presiding Judge holds that there is a sufficient degree of similarity as required by article 2.20 par. 1 sub b BCIP.

Veteran trade mark expert and ever-congenial Canadian attorney Dan Bereskin tells us that he has edited a new book, International Trademark Dilution, which has just this week been published in Canada by Thomson Reuters.  

The book, details of which you can obtain here, has chapters on dilution in theory and practice in numerous jurisdictions.  From a European perspective, the European Union is treated as a single jurisdiction and there is a separate chapter on Switzerland.