Ian Wood,a partner in London-based solicitors and MARQUES members Charles Russell LLP explains the ruling thus: 

"In essence the judgment says that M&S infringed Interflora's registered trade marks for Interflora - because M&S used the Interflora trade mark as a keyword on a Google search to bring up ads for M&S flower delivery service. The ads did not enable internet users to ascertain whether or not the goods in the ads came from the owners of the Interflora trade marks - and indeed in many cases when they clicked on the ads they thought the M&S flower delivery service was part of the Interflora network.

Unlike other search engines, such as Microsoft's Bing and Yahoo!, Google do not operate a trade mark complaints procedure in the UK by which trade mark owners can apply to block their trade marks being chosen as keywords. In the absence of such a complaints procedure, trade mark owners may well wish to notify Google of offending ads - and consider including Google in any formal legal proceedings if they continue to allow trade marks to be used as keywords in such circumstances. All in all, a helpful judgment for those wishing to protect their trade marks."

 Vanessa Barnett, a technology and media partner at Charles Russell LLP says: 

"Marketing departments will now be scratching their heads and wondering if their keyword purchasing strategies are dead in the water.  In my view, there is the odd lifeline depending on the nature of the (perceived) connection between the brand which is the trade mark used in the keyword purchase and the purchasing brand.  For example, if Coca Cola were to purchase Pepsi keywords, it would be a much harder argument to run that those searching thought they were somehow connected (tens of years of very effective global advertising tells us they are not!)  And there are many other well known brands which are obviously opposed to each other and this is well known. 

In addition, marketeers can also now consider what they can place in the text of their ads triggered by the keyword which makes it very obvious that no connection.  I wonder if things would have gone differently if M&S had shouted out "An independent flower delivery network" in the ads?  In my view, these are two important threads which still need exploring."

In Case T-530/10, Wolgang Klusmeier applied for the registration of Wolfgang Amadeus Mozart PREMIUM in 2005 for goods in Class 30 which was opposed by Reber Holding GmbH & Co. KG, against in particular the following goods “tea, cacao, cereal preparations, eatable bread and ices”. The opposition was brought on the basis of Article 8(1) b) CTMR on the basis of earlier German marks registered for goods and services in Classes 39 and 42 , among others “pastry and bakery shops, chocolate and confectionery, tea room, etc”.

The CTM Applicant requested for proof of genuine use of the earlier marks. Reber provided Affidavits from Reber’s administrator certifying use of the marks on packaging of Mozartkugeln (or Mozart balls, which are chocolates filled with praline and marzipan) for approximatively 20 years in Germany including during the relevant period from 2001 to 2005; a colour copy of Mozartkugeln box; extracts from Internet website showing different kinds of chocolates sold by this company from 2007 and a copy of a recipe book called Webers bildlicher Fachunterricht zu Höchstleistungen in moderner Konditorei(Weber training with pictures for the best results in modern confectionery).

The OD rejected the opposition for lack of genuine use. The BoA rejected the evidence presented for the first time because it confirmed that it did not constitute additional evidence to the first evidence filed by the Opponent, which was not sufficient to demonstrate genuine use of the earlier German marks. The General Court upheld the contested decision, finding that the Affidavit refers to the use of the word mark W. AMADEUS. MOZART but not the figurative marks; the writing on the sample box is in small characters and the style and color are perfectly matching the golden and baroque look of the frame so it will only be perceived as an ornamental element for the indication of the portrait which represents Wolgang Amaadeus Mozart. Finally, it is well established CTM case-law that the term “Mozartkugeln” is generic and descriptive for confectionery and chocolates in Germany (see case T-304/06 “Mozart”). Thus it is the term “Reber” which will be perceived as in indication of origin.

For the story of MozartKugeln, see here

Famous Mozart quotes here and the unknown fun fact of Mozart's prodigy sister here

In case T- 231/12, Julius-K9 (Hungary) applied for registration of the word mark JULIUS K9 for goods in Classes 18 and 25, including ‘Clothing for animals; harness for animals; dog collars; muzzles, etc’

Rocket Dog Brands LLC (US) brought an opposition based on the two following CTM’s 'K9 dog (fig) also registered in Classes 18 and 25.  

The OHIM, as confirmed by the GC, found that the goods at issue in Classes 18 and 25 were identical. Next, the word ‘julius’ in the trade mark applied for was dominant and that the alphanumeric combination ‘K9’ in it was secondary. Further, the marks were visually dissimilar given the lack of correspondence between their dominant and eye-catching elements and given that their respective structures were completely different. In addition, the marks were phonetically similar to a below average degree since the word ‘julius’ was present in the mark applied for and since the earlier marks contained graphic elements which were not pronounced. Further, the marks were not conceptually similar because there were no features related to dogs in the mark applied for.

Finally, the applicant’s argument that the word ‘K9’ will be understood in the sense of the English word ‘canine’, even if it were proven, cannot lead to the conclusion that the inherently distinctive character of the earlier marks in relation to the products that they referred to would be increased.

Thus, when assessing overall the likelihood of confusion, despite the identical nature of the goods concerned, there was no likelihood of confusion given the visual dissimilarity of the marks at issue, the below average degree of their phonetic similarity, the average distinctiveness of the earlier marks and the normal level of attentiveness of the relevant public.

* 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”.